Donian, Philip M. et al.

Patent Trials and Appeals Board

Aug 12, 2020

10606729 - (D) (P.T.A.B. Aug. 12, 2020)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
10/606,729 06/26/2003 Philip M. Donian 42327-501001US 5831
64046 7590 08/12/2020
Mintz Levin/San Diego Office
One Financial Center
Boston, MA 02111
EXAMINER
RETTA, YEHDEGA
ART UNIT PAPER NUMBER
3688
NOTIFICATION DATE DELIVERY MODE
08/12/2020 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
IPDocketingBOS@mintz.com
IPFileroombos@mintz.com
mintzdocketing@cpaglobal.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte PHILIP M. DONIAN, LARRY E. HENNEMAN JR.,
and MICHAEL M. MALIONE

Appeal 2019-001632
Application 10/606,729
Technology Center 3600
____________

Before ANTON W. FETTING, BRUCE T. WIEDER, and
AMEE A. SHAH, Administrative Patent Judges.

SHAH, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), the Appellant1 appeals from the
Examiner’s decision to reject claims 212, 214–223, and 225–273, which are
all of the pending claims. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. The Appellant identifies the real party in interest as
Piranha Media Distribution, Inc. Appeal Br. 3.
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CLAIMED SUBJECT MATTER
The Appellant’s “invention relates generally to the distribution of
audio, video, and print media content, copyrighted or otherwise, via digital
replication and delivery channels,” and more specifically,
to an apparatus and method for the wide digital
distribution of media content in a way that allows the free use of
media properties, on demand, with direct consumer exchange
capabilities, while at the same time offering equitable return to
the copyright holder, and providing for a strict level of control
over the enforcement of license agreements on the part of the
distributor.
Spec. 1, ll. 14–20.
Claims 212, 238, 243, 267, 268, and 271 are the independent claims
on appeal. Claim 212, reproduced below, with bracketed notations and
added paragraphing, is illustrative of the claimed subject matter.
212. A method comprising:
[(a)] receiving, on a client system, data comprising digital
media content and digital advertising content;
[(b)] sequencing the digital media content and the digital
advertising content,
the sequencing comprising ordering at least some of
the digital media content and at least some of the digital
advertising content into a user-perceptible content stream,
the user-perceptible content stream comprising one
or more initially sequenced insertion points at which the
digital advertising content is scheduled to be presented
relative to the digital media content;
[(c)] adaptively modifying, using pre-defined rules and in
response to a user input detected by the client system, a
presentation position of the digital advertising content from at
least one of the one or more initially sequenced insertion points
to one or more alternatively sequenced insertion points,
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at least one of the one or more alternatively
sequenced insertion points being different than the one or
more initially sequenced insertion points relative to the
digital media content within the user-perceptible content
stream;
[(d)] causing presentation of the user-perceptible content
stream at the client system after the adaptively modifying;
[(e)] keeping a setting in a first memory to indicate a
current state of play,
the setting including a value to indicate whether
presentation of a required part of the digital advertising
content is in progress during presentation of the user-
perceptible content stream;
[(f)] disallowing a navigation choice that alters a course of
playback of the user-perceptible content stream while
presentation of the required part of the digital advertising content
is in progress; and
[(g)] storing, in a second memory, presentation data
comprising an indication of the digital advertising content that
has been presented;
wherein the receiving, the sequencing, the
adaptively modifying, the causing, the keeping, the
disallowing, and the storing are performed by one or more
programmable processors.

REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Knepper et al. (“Knepper”) US 2001/0042249 A1 Nov. 15, 2001
Oh US 2002/0161739 A1 Oct. 31, 2002
Wang US 2002/0191950 A1 Dec. 19, 2002
Hannah et al. (“Hannah”) US 7,761,327 B1 July 20, 2010

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REJECTIONS
Claims 212, 214–223, and 225–273 stand rejected under 35 U.S.C.
§ 101 as being directed to a judicial exception without significantly more.
Claims 212, 214–223, and 225–273 stand rejected under 35 U.S.C.
§ 112 (pre-AIA), first paragraph, as failing to comply with the written
description requirement.
Claims 212, 214–223, 225–232, 234–249, 251–255, and 257–273
stand rejected under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over
Knepper, Hannah, and Wang.
Claims 233 and 256 stand rejected under pre-AIA 35 U.S.C. § 103(a)
as being unpatentable over Knepper, Hannah, Wang, and Official Notice.
Claim 250 stands rejected under pre-AIA 35 U.S.C. § 103(a) as being
unpatentable over Knepper, Hannah, Wang, and Oh.

OPINION
35 U.S.C. § 101 – Statutory Subject Matter2
The Appellant presents arguments for the independent claims together
and relies on those arguments for the dependent claims. See Appeal
Br. 39–40. We thus group all the claims together and select claim 212 as
representative of the group, with the rejection of the remaining claims
standing or falling therewith. See 37 C.F.R. § 41.37(c)(1)(iv).

2 The rejections are addressed in the order presented by the Examiner in the
Final Action.
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35 U.S.C. § 101 Framework
Section 101
An invention is patent-eligible if it claims a “new and useful process,
machine, manufacture, or composition of matter.” 35 U.S.C. § 101.
However, the U.S. Supreme Court has long interpreted 35 U.S.C. § 101 to
include implicit exceptions: “[l]aws of nature, natural phenomena, and
abstract ideas” are not patentable. E.g., Alice Corp. v. CLS Bank Int’l,
573 U.S. 208, 216 (2014).
In determining whether a claim falls within an excluded category, we
are guided by the Court’s two-part framework, described in Mayo and Alice.
Id. at 217–18 (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc.,
566 U.S. 66, 75–77 (2012)). In accordance with that framework, we first
determine what concept the claim is “directed to.” See Alice, 573 U.S.
at 219 (“On their face, the claims before us are drawn to the concept of
intermediated settlement, i.e., the use of a third party to mitigate settlement
risk.”); see also Bilski v. Kappos, 561 U.S. 593, 611 (2010) (“Claims 1 and 4
in petitioners’ application explain the basic concept of hedging, or protecting
against risk.”).
Concepts determined to be abstract ideas, and thus patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219–20; Bilski, 561 U.S. at 611);
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594–95 (1978)); and
mental processes (Gottschalk v. Benson, 409 U.S. 63, 67 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as “molding rubber products” (Diamond v. Diehr, 450 U.S. 175, 191
(1981)); “tanning, dyeing, making waterproof cloth, vulcanizing India
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rubber, smelting ores” (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S.
252, 267–68 (1853))); and manufacturing flour (Benson, 409 U.S. at 69
(citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
In Diehr, the claim at issue recited a mathematical formula, but the
Court held that “a claim drawn to subject matter otherwise statutory does not
become nonstatutory simply because it uses a mathematical formula.”
Diehr, 450 U.S. at 187; see also id. at 191 (“We view respondents’ claims as
nothing more than a process for molding rubber products and not as an
attempt to patent a mathematical formula.”). Having said that, the Court
also indicated that a claim “seeking patent protection for that formula in the
abstract . . . is not accorded the protection of our patent laws, and this
principle cannot be circumvented by attempting to limit the use of the
formula to a particular technological environment.” Id. (citation omitted)
(citing Benson and Flook); see, e.g., id. at 187 (“It is now commonplace that
an application of a law of nature or mathematical formula to a known
structure or process may well be deserving of patent protection.”).
If the claim is “directed to” an abstract idea, we turn to the second
step of the Alice and Mayo framework, where “we must examine the
elements of the claim to determine whether it contains an ‘inventive
concept’ sufficient to ‘transform’ the claimed abstract idea into a patent-
eligible application.” Alice, 573 U.S. at 221 (quotation marks omitted).
“A claim that recites an abstract idea must include ‘additional features’ to
ensure ‘that the [claim] is more than a drafting effort designed to
monopolize the [abstract idea].’” Id. (alterations in original) (quoting Mayo,
566 U.S. at 77). “[M]erely requir[ing] generic computer implementation[]
fail[s] to transform that abstract idea into a patent-eligible invention.” Id.
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USPTO Section 101 Guidance
In January 2019, after the Final Action and Answer were mailed and
the Appeal Brief and Reply Brief entered, the U.S. Patent and Trademark
Office (USPTO) published revised guidance on the application of § 101.
2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50
(Jan. 7, 2019) (“Revised Guidance”) (incorporated into the MANUAL OF
PATENT EXAMINING PROCEDURE, Rev. 10.2019 (“MPEP”) in June 2010).
“The guidance sets out agency policy with respect to the USPTO’s
interpretation of the subject matter eligibility requirements of 35 U.S.C.
§ 101 in view of decisions by the Supreme Court and the Federal Circuit.”
Revised Guidance, 84 Fed. Reg. at 51. Although “[a]ll USPTO personnel
are, as a matter of internal agency management, expected to follow the
guidance,” the guidance “does not create any right or benefit, substantive or
procedural, enforceable by any party against the USPTO.” Id. The Revised
Guidance, by its terms, applies to all applications, and to all patents resulting
from applications, filed before, on, or after January 7, 2019. Id. at 50.3
Under the Revised Guidance, we first look to whether the claim
recites: (1) any judicial exceptions, including certain groupings of abstract
ideas (i.e., mathematical concepts, certain methods of organizing human

3 The Revised Guidance supersedes MPEP § 2106.04(II) and also
supersedes all versions of the USPTO’s “Eligibility Quick Reference Sheet
Identifying Abstract Ideas.” See Revised Guidance, 84 Fed. Reg. at 51
(“Eligibility-related guidance issued prior to the Ninth Edition, R-08.2017,
of the MPEP (published Jan. 2018) should not be relied upon.”). Thus, the
Appellant’s arguments related to prior guidance (see, e.g., Appeal Br. 30–31
(presenting arguments related to the particular judicial decisions the
Examiner cited)) will not be considered.
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activity such as a fundamental economic practice, or mental processes) (see
MPEP § 2106.04(a)) (“Step 2A, Prong One”); and (2) additional elements
that integrate the judicial exception into a practical application (see MPEP
§ 2106.04(d)) (“Step 2A, Prong Two”).4 Revised Guidance, 84 Fed. Reg.
at 52–55.
Only if a claim (1) recites a judicial exception and (2) does not
integrate that exception into a practical application, do we then look, under
Step 2B, to whether the additional elements, individually or in combination,
provide an inventive concept. Id. Among the considerations in determining
whether the additional elements, individually or in combination, amount to
significantly more than the exception itself, we look to whether they add a
specific limitation beyond the judicial exception that is not “well-
understood, routine, conventional” in the field or simply append well-
understood, routine, conventional activities previously known to the
industry, specified at a high level of generality, to the judicial exception. Id.
at 56.
Step One of the Mayo/Alice Framework
Under the first step of the Mayo/Alice framework and Step 2A of
USPTO guidance, the Examiner determines that independent claim 212 is
“directed to re-sequencing or modifying (changing) the presentational

4 This evaluation is performed by (a) identifying whether there are any
additional elements recited in the claim beyond the judicial exception, and
(b) evaluating those additional elements individually and in combination to
determine whether the claim as a whole integrates the exception into a
practical application. See Revised Guidance - Section III(A)(2), 84 Fed.
Reg. at 54–55, MPEP § 2106.04(d).
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position of advertisement in response to a user input” (Final Act. 2) and to
“preventing of commercial skipping by using a well-known device” (id.
at 3). The Examiner characterizes the claimed concept as reciting “steps that
can be performed mentally, thus an abstract idea.” Id. at 2. When viewed
through the lens of the Revised Guidance Step 2A, Prong One, the
Examiner’s determinations indicate that the claim’s limitations recite
“[m]ental processes—concepts performed in the human mind (including an
observation, evaluation, judgment, opinion).” 84 Fed. Reg. at 52; MPEP
§ 2106.04(a)(III).
The Examiner also determines that “the claim[] simply convey[s] the
abstract idea itself applied on some generic computer system. The claim[] at
issue amount[s] to nothing significantly more than an instruction to apply the
abstract idea using some unspecified, generic computer.” Final Act. 4.
When viewed through the lens of the Revised Guidance Step 2A,
Prong Two, the Examiner’s determinations indicate that “a judicial
exception has not been integrated into a practical application” because “[a]n
additional element merely recites the words ‘apply it’ (or an equivalent) with
the judicial exception, or merely includes instructions to implement an
abstract idea on a computer, or merely uses a computer as a tool to perform
an abstract idea.” 84 Fed. Reg. at 55; MPEP § 2106.04(d)(I).
The Appellant disagrees that claim 212 is “directed to ‘the abstract
idea of ‘preventing of commercial skipping by using a well-known device’’
as alleged by the Examiner.” Appeal Br. 31. Rather, the claim “recites an
improved computer-implemented way to adaptively re-sequence ad block
positions in response to user input.” Id. When viewed through the lens of
the Revised Guidance, Step 2A, the Appellant’s arguments indicate that the
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Appellant contends that claim 212 does not recite a mental process under
Prong One and “integrates a judicial exception into a practical application”
under Prong Two because it includes an additional element or combination
of elements that “reflects an improvement in the functioning of a computer,
or an improvement to other technology or technical field.” 84 Fed. Reg.
at 54–55; MPEP § 2104(d)(1).
Under the first step of the Mayo/Alice framework and Step 2A
USPTO guidance, we first determine to what claim 212 is directed, i.e.,
whether claim 1 recites an abstract idea and if so, whether claim 1 is directed
to that abstract idea. The Federal Circuit has explained that “the ‘directed
to’ inquiry applies a stage-one filter to claims, considered in light of the
specification, based on whether ‘their character as a whole is directed to
excluded subject matter.’” Enfish, LLC v. Microsoft Corp., 822 F.3d 1327,
1335 (Fed. Cir. 2016) (quoting Internet Patents Corp. v. Active Network,
Inc., 790 F.3d 1343, 1346 (Fed. Cir. 2015)). It asks whether the focus of the
claim is on a specific improvement in relevant technology or on a process
that itself qualifies as an “abstract idea” for which computers are invoked
merely as a tool. See id. at 1335–36. Here, it is clear from the Specification,
including the claim language, that claim 212 focuses on an abstract idea, and
not on any improvement to technology and/or a technical field.
Reciting a Judicial Exception
The Specification provides for a “METHOD AND APPARATUS
FOR THE FREE LICENSING OF DIGITAL MEDIA CONTENT.”
Spec., Title. In the “Field of the Invention” section, the Specification states
the “invention relates generally to the distribution of audio, video, and print
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media content, copyrighted or otherwise, via digital replication and delivery
channels,” and more specifically,
to an apparatus and method for the wide digital
distribution of media content in a way that allows the free use of
media properties, on demand, with direct consumer exchange
capabilities, while at the same time offering equitable return to
the copyright holder, and providing for a strict level of control
over the enforcement of license agreements on the part of the
distributor.
Spec. 1, ll. 14–20. In the “Description of Background Art” section, the
Specification discusses “[t]he problem of widespread consumer-directed
copying and redistribution of licensed material.” Id. at 1, ll. 23–24. “New
technologies to restrict consumer copying and unencumbered use of content
have met with opposition and a determination on the part of some consumers
to defeat them.” Id. at 1, ll. 30–31. “Given the nature of modern networked
digital devices, the consumers’ power to redistribute media files illicitly is
formidable.” Id. at 2, ll. 5–6. “[C]onventional methods and apparatus have
inherent drawbacks that make it difficult for them to maintain their
limitations to consumer access in the presence of modern digital technology
and a consumer culture driven to defeat them in open defiance of the rights
of copyright holders.” Id. at 2, ll. 8–11. Distribution of copyrighted
material can be accomplished either for free via broadcast television and
radio by “mixing licensed content with advertisements and other paid
announcements in a pre-configured time sequence, then transmitting this
sequence asymmetrically over the airwaves to a large number of consumer
receivers capable of showing the content in real-time as it is [sic] comes in”
(id. at 2, ll. 14–19) or for a subscription fee via cable and satellite television
and radio and Video On Demand (“VOD”) with “[p]re-configured analog or
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digital media content, with or without commercial advertisement, . . .
conveyed asymmetrically to the consuming population via coaxial cable”
using encryption methods to prevent theft (id. at 2, l. 27–3, l. 9; see also id.
at 3, ll. 11–26). “To the inventor’s knowledge, there is currently no
conventional digital media distribution method in practice that incorporates
the free consumer-directed access and exchange of content with the
distributor-directed control of media sequencing after all such exchanges.”
Id. at 9, ll. 3–5. Thus, the invention aims
to provide a revenue generating market for the free
consumer redistribution of media content, sponsored through
paid advertising that a consumer may be required to experience
during the course of media playback, provided by means of a
system and/or method that offers the benefits of content
restriction and controlled playback, working in conjunction with
customized, addressable advertising on an individual consumer
basis, with monitoring of content use and ad penetration to track
audience viewership.
Id. at 9, ll. 8–13. Specifically, the “software functions primarily as a media
presentation ‘player/viewer’, capable of running audio, video, and print
media content” that “allows for a ‘general license’, whereby a consumer can
obtain free use of a media property, with strict controls enforced during
media playback,” the controls “amount[ing] to the intermittent insertion of
paid commercial advertisements and other promotional material into the
time sequence of the media content during its course of presentation, along
with the temporary disabling of certain user controls to ensure that this
material is presented in its entirety.” Id. at 9, l. 21–10, l. 1. Thus, “[t]he
consumer gains free use of content in exchange for exposure to these paid
advertisements.” Id. at 10, ll. 1–2.
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Consistent with this disclosure, claim 212 recites a method. We
consider claim 212 as a whole5 giving it the broadest reasonable
construction6 as one of ordinary skill in the art would have interpreted it in
light of the Specification7 at the time of filing. The method of claim 212
comprises the steps of: (a) receiving data “comprising digital media content
and digital advertising content”; (b) “sequencing the digital media content
and the digital advertising content” by “ordering at least some of the digital
media content and at least some of the digital advertising content into a user-
perceptible content stream” having “one or more initially sequenced
insertion points”; (c) “adaptively modifying, using pre-defined rules and in
response to a user input detected by the client system, a presentation position
of the digital advertising content from at least one of the one or more
initially sequenced insertion points to one or more alternatively sequenced
insertion points”; (d) displaying, i.e., “causing presentation” of information
“of the user-perceptible content stream at the client system after the
adaptively modifying”; (e) “keeping a setting in a first memory to indicate a
current state of play, the setting including a value to indicate whether

5 “In determining the eligibility of respondents’ claimed process for patent
protection under § 101, their claims must be considered as a whole.” Diehr,
450 U.S. at 188.
6 Revised Guidance, 84 Fed. Reg. at 52 n.14 (“If a claim, under its broadest
reasonable interpretation . . . .”) (emphasis added).
7 “First, it is always important to look at the actual language of the
claims. . . . Second, in considering the roles played by individual limitations,
it is important to read the claims ‘in light of the specification.’” Smart Sys.
Innovations, LLC v. Chicago Transit Authority, 873 F.3d 1364, 1378 (Fed.
Cir. 2017) (J. Linn, dissenting in part and concurring in part) (citing Enfish,
822 F.3d at 1335, among others).
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presentation of a required part of the digital advertising content is in
progress during presentation of the user-perceptible content stream”;
(f) “disallowing a navigation choice that alters a course of playback of the
user-perceptible content stream while presentation of the required part of the
digital advertising content is in progress”; and (g) “storing, in a second
memory, presentation data comprising an indication of the digital
advertising content that has been presented.” Appeal Br. 42–43 (Claims
App.). The steps of claim 212 “are performed by one or more
programmable processors” (id. at 43), i.e., conventional computer
components (see Spec. 17, ll. 20–26, Fig. 2 (describing and depicting a
computer system with “conventional architecture”)).
Receiving data is an extra-solution activity. See In re Bilski, 545 F.3d
943, 963 (Fed. Cir. 2008) (en banc), aff’d sub nom Bilski v. Kappos, 561
U.S. 593 (2010) (characterizing data gathering steps as insignificant extra-
solution activity). Sequencing content by ordering content into a stream at
insertion points is a way of organizing content, which is a mental process.
See Versata Dev. Grp., Inc. v. SAP Am., Inc., 793 F.3d 1306, 1333–34 (Fed.
Cir. 2015) (using hierarchies “is a building block, a basic conceptual
framework for organizing information”). Similarly, adaptively modifying,
using rules and user input, a position of the content from one insertion point
to another is a way of organizing content based on an analysis of criteria, a
mental process. See Electric Power Grp., LLC v. Alstom S.A., 830 F.3d
1350, 1354 (Fed. Cir. 2016) (citing cases) (“we have treated analyzing
information by steps people go through in their minds, or by mathematical
algorithms, without more, as essentially mental processes”). Causing
presentation of the stream, i.e., displaying data, is an extra-solution activity.
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See id.; Bilski, 561 U.S. at 610–11 (“Flook stands for the proposition that the
prohibition against patenting abstract ideas ‘cannot be circumvented by
attempting to limit the use of the formula to a particular technological
environment’ or adding ‘insignificant post-solution activity.”’). Keeping a
setting in a memory and storing presentation data are ways of storing data,
which is a mental process. See Content Extraction & Transmission LLC v.
Wells Fargo Bank, Nat. Ass’n, 776 F.3d 1343, 1347 (Fed. Cir. 2014) (“The
concept of data collection, recognition, and storage is undisputedly well-
known. Indeed, humans have always performed these functions.”). The
limitation of disallowing a choice is recited functionally without details on
how, technologically or by what algorithm, a disallowance is achieved, and
as such is a way of controlling access to resources or data, which is a mental
process. See Ericsson Inc. v. TCL Commc’n Tech. Holdings Ltd., 955 F.3d
1317, 1327 (Fed. Cir. 2020) (holding that controlling access to resources is a
process that “can be performed in the human mind, or by a human using a
pen and paper” that long predates the claimed invention and “is pervasive in
human activity”).
When considered collectively and under the broadest reasonable
interpretation, the limitations of claim 212 recite a method for sequencing
digital media and advertising content to prevent commercial skipping by
receiving, organizing, re-organizing, displaying, and storing data and
controlling access based on the stored data.8 This is an abstract idea

8 We note that “[a]n abstract idea can generally be described at different
levels of abstraction.” Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1240
(Fed. Cir. 2016). The Board’s “slight revision of its abstract idea analysis
does not impact the patentability analysis.” Id. at 1241.
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comprising “[m]ental processes—concepts performed in the human mind
(including an observation, evaluation, judgment, opinion)” and a “[c]ertain
method[] of organizing human activity— . . . commercial or legal
interactions (including agreements in the form of contracts; legal
obligations; advertising, marketing or sales activities or behaviors; business
relations).” Revised Guidance, 84 Fed. Reg. at 52; MPEP
§ 2106.04(a)(2)(II)(B). As such, we disagree with the Appellant’s assertion
that the Examiner generalizes the claim. See Appeal Br. 33; Reply Br. 14.
Our reviewing court has held similar concepts to be abstract. For
example, the Federal Circuit has held abstract the concepts of “organizing,
displaying, and manipulating data of particular documents” in Intellectual
Ventures I LLC v. Capital One Fin. Corp., 850 F.3d 1332, 1340–41 (Fed.
Cir. 2017) (“Capital One Fin.”), collecting, analyzing, and displaying the
results in Electric Power, 830 F.3d at 1354, tailoring advertising in
Intellectual Ventures I LLC v. Capital One Bank (USA), 792 F.3d 1363,
1370 (Fed. Cir. 2015) (“Capital One Bank”), “displaying an advertisement
in exchange for access to copyrighted media” in Ultramercial, Inc. v. Hulu
LLC, 772 F.3d 709, 714–15 (Fed. Cir. 2014), collecting, organizing,
grouping, and storing data in In re Jobin, 811 F. App’x 633, 637 (Fed. Cir.
2020), and “receiving or collecting data queries, analyzing the data query,
retrieving and processing the information constituting a response to the
initial data query, and generating a visual or audio response to the initial data
query” in W. View Research, LLC v. Audi AG, 685 F. App’x 923, 926 (Fed.
Cir. 2017).
Having concluded that claim 212 recites a judicial exception under the
Revised Guidance, Step 2A, Prong One, we next consider whether the claim
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recites additional elements that integrate the judicial exception into a
practical application.
Integration into a Practical Application
We look to whether the claim “appl[ies], rel[ies] on, or use[s] the
judicial exception in a manner that imposes a meaningful limit on the
judicial exception, such that the claim is more than a drafting effort designed
to monopolize the judicial exception,” i.e., “integrates a judicial exception
into a practical application.” Revised Guidance, 84 Fed. Reg. at 54; MPEP
§ 2106.04(d). Here, the only additional elements recited in claim 212
beyond the abstract idea are the “client system,” “first memory,” “second
memory,” and “programmable processors” — elements that, as the
Examiner observes (see Final Act. 3; Ans. 8), are described in the
Specification as generic computer and off-the shelf components (see, e.g.,
Spec. 14, ll. 2–23, 15, l. 13–18, l. 26; Figs. 1, 2).
We find no indication in the Specification, nor does the Appellant
direct us to any indication, that the operations recited in claim 212 require
any specialized computer hardware or other inventive computer components,
i.e., a particular machine, invoke any asserted inventive programming, or
that the claimed invention is implemented using other than generic computer
components to perform generic computer functions. See DDR Holdings,
LLC v. Hotels.com, L.P., 773 F.3d 1245, 1256 (Fed. Cir. 2014) (“[A]fter
Alice, there can remain no doubt: recitation of generic computer limitations
does not make an otherwise ineligible claim patent-eligible.”). We also find
no indication in the Specification that the claimed invention as recited in
claim 212 effects a transformation or reduction of a particular article to a
different state or thing.
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The Appellant contends that “[c]laim 212 recites an improved
computer-implemented way to adaptively re-sequence ad block positions in
response to user input which is clearly different than the alleged abstract
idea of ‘preventing of commercial skipping by using a well-known device.’”
Appeal Br. 31. The Appellant argues that the claim is “directed to
improvements in the function of computers, specifically to increase
flexibility in the way digital advertisements may be delivered.” Id. at 32.
The Appellant contends that “[t]his improvement is similar to those the
courts recognized in Core Wireless [Licensing, S.A.R.L. v. LG Electronics,
Inc., 880 F.3d 1356 (Fed. Cir. 2018)], Enfish, and McRO[, Inc. v. Bandai
Namco Games Am. Inc., 837 F.3d 1299 (Fed. Cir. 2016)].” Id. at 31; see
also id. at 32–33; Reply Br. 17–19.
In Core Wireless, the court found that the claims recited a specific
improvement in computer technology – “an improved user interface for
electronic devices, particularly those with small screens.” 880 F.3d at 1363.
In Enfish, the court held that the focus of the claims was to “a specific
improvement to the way computers operate, embodied in the self-referential
table.” 822 F.3d at 1336. Specifically, “the claims [were] not simply
directed to any form of storing tabular data, but instead [were] specifically
directed to a self-referential table for a computer database.” Id. at 1337.
The Specification provided that “the self-referential table function[ed]
differently than conventional database structures” (id.) and improved “the
way a computer stores and retrieves data in memory” (id. at 1339). In
McRO, the claims were directed to computer animation and used rules to
automate a subjective task of humans to create a sequence of synchronized,
animated characters. See McRO, 837 F.3d at 1314–15. Unlike Flook, Bilski,
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and Alice, it was not the use of the computer, but the incorporation of the
rules that improved an existing technological process. Id. at 1314. In
finding the claims patent-eligible, McRO noted that the “abstract idea
exception has been applied to prevent patenting of claims that abstractly
cover results where ‘it matters not by what process or machinery the result is
accomplished.’ [O’Reilly v. Morse, 56 U.S. (15 How.) 62, 113 (1853)]; see
also Mayo, [566 U.S. at 85].” Id.
However, the improvements to which the Appellant refers are not
technological improvements to computer technology, but rather
improvements to the process, i.e., the abstract idea itself. The Appellant
does not provide reasoning or evidence, and we do not see from the claim,
how the computer itself is improved by adaptively re-sequencing ad block
positions or by providing flexibility in the way advertisements are delivered.
At best, this is an improvement in the organization and analysis of data, i.e.,
the abstract idea.
The Appellant argues that the claim “is directed to non-abstract
improvements to computer technology because it contains precise language
delimiting the type of data to be sequenced and how to sequence and
adaptively modify the sequence, thus improving upon conventional
delivery, presentation, and user interaction of/with media content and
advertising content” (Appeal Br. 32) and because “the capability to
adaptively regroup and re-sequence insertion of ad blocks on the fly can
provide important benefits over conventional distribution systems by
improving security, optimizing bandwidth, performance, and user
interaction, etc. See [Spec.] at ¶0054, FIG. 3A, ¶0110-0111, ¶0117, ¶0186,
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and ¶202-204” (id. at 32–33; Reply Br. 16–17).9 However, the Appellant
does not explain, and we do not see from the claim, how the specific type of
data to be sequenced and the modification of the sequence of data to be
presented provide a technological improvement to the claimed client system
and/or processors. At best, the type of data and sequence modification
provide more relevant information and ensure advertisements are presented.
This is not an improvement to technology. See Capital One Bank, 792 F.3d
at 1369–71 (determining that tailoring advertisements has been long
prevalent, is not a problem unique to the Internet, and is not an
improvement). The claim does not recite a specific technological way of
delivering, presenting, and interacting that improves the technology of the
client system, a user interface as in Core Wireless, a database as in Enfish, or
an existing technological process as in McRO.
Further, the Specification does not discuss how the claimed
limitations “improve[] security, optimize[] bandwidth, and improve[]
performance” of a computer. See Appeal Br. 33; Reply Br. 16–17. Rather,
portions of the Specification cited by the Appellant (see id.) merely state that
“one particular method of the invention provides for unlimited redistribution
and free use under general license, enforced by the player/viewer software,”
that “is a new use of digital rights management practices, and . . . provides
improved security by diminishing incentive on the part of the consumer to
breach the system, since the desired content is already available free-of-

9 We note that the Specification as filed on February 14, 2014, does not
contain paragraph numbers. We correlate the cited portions to the
Specification as filed to the best of our ability.
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charge from within it” (Spec. 10, ll. 12–16), and “there is much less
incentive on the part of the consumer to engage in piracy and other attempts
to circumvent the digital rights security put in place according to the
invention” (id. at 25, ll. 23–25). Any improvement to “security” is in
preventing copyright infringement, which is not a problem rooted in
technology, and the Specification does not discuss how, technologically, the
security is improved. Although the Specification discusses encryption “to
enforce security” (id. at 32, l. 30–33, l. 3), the claim recites no such
limitation, and the Specification indicates that generic, conventional
encryption techniques are used (id.). Regarding bandwidth, the
Specification provides that “[t]his embodiment employs ordinary and new
practices to optimize bandwidth utilization throughout its media delivery
system, which is the apparatus providing media service 568 to player/viewer
560” (Spec. 36, ll. 28–30), without discussing how, technologically or by
what algorithm, the new practices (as opposed to the ordinary ones) achieve
an optimized bandwidth.
The Appellant also argues
the subject matter of Claim 212 gives the “ability to
adaptively regroup and re-sequence the insertion of ad blocks
extemporaneously (i.e. ‘on the fly’), in response to the
consumer’s arbitrary direction of the playback within the
requested content.” Specification, ¶0117. Because these
processes are inextricably related to a computing system, the
claimed subject matter cannot be abstract nor directed to a
judicial exception (Step 2A).
Appeal Br. 32. That the claim is “inextricably related to a computing
system” (Appeal Br. 32) at best limits the invention to a computer
environment and does not make the claim less abstract. See Affinity Labs of
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Tex., LLC v. DIRECTV, LLC, 838 F.3d 1253, 1259 (Fed. Cir. 2016) (“The
Supreme Court and [the Federal Circuit] have repeatedly made clear that
merely limiting the field of use of the abstract idea to a particular existing
technological environment does not render the claims any less abstract.”).
Any improvement to re-sequencing ads lies in the process itself, an
improvement in the abstract idea itself, not to any technological
improvement. Having the “ability to adaptively regroup and re-sequence the
insertion of ad blocks extemporaneously” (Appeal Br. 32) is “not an
improvement in networking or computer functionality” as it does not
“enable[] a computer . . . to do things it could not do before.” Finjan, Inc. v.
Blue Coat Sys., Inc., 879 F.3d 1299, 1305 (Fed. Cir. 2018). Rather, the
claim’s focus is “not a physical-realm improvement but an improvement in a
wholly abstract idea,” that is not eligible for patenting. SAP Am. Inc. v.
InvestPic, LLC, 898 F.3d 1161, 1168 (Fed. Cir. 2018); see also Bridge &
Post, Inc. v. Verizon Commc’ns, Inc., 778 F. App’x 882, 893 (Fed. Cir.
2019) (“The ability to run a more efficient advertising campaign, even if
novel, and even if aided by conventional computers, is an advance ‘entirely
in the realm of abstract ideas,’ which we have repeatedly held to be
ineligible.”) (citation omitted).
The Appellant further argues that the limitations of claims 212 “more
closely resemble the combination of elements present in the claims at issue
in DDR Holdings or in Bascom v. AT&T.” Appeal Br. 3710 (citing BASCOM

10 We acknowledge that the Appellant presented this argument under Step 2
of the Mayo/Alice (Step 2B of Revised Guidance) and may be properly
evaluated there. Solely for purposes of maintaining consistent treatment
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Glob. Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341 (Fed. Cir.
2016)). Specifically, the Appellant argues that “in Bascom, the Federal
Circuit has explicitly acknowledged that the mere ability of a claimed
invention to be used in enhancing the execution of a commercial
transaction” and that similar to DDR Holdings, claim 212 “involves a
technical way to solve the existing (at the time of the current invention)
problem of providing internet-supplied media content with advertising in a
manner that allows for arbitrary user-controlled navigation/re-ordering of the
content to combat piracy of content while still generating revenue from the
advertising.” Appeal Br. 37–38.
However, the Appellant does not provide adequate reasoning or
evidence, and we do not see from the claim, how the limitations claim a
technological solution to a computer-based problem, i.e., a solution
“necessarily rooted in computer technology in order to overcome a problem
specifically arising in the realm of computer networks.” DDR Holdings, 773
F.3d at 1257. To the extent the Appellant argues that “providing internet-
supplied media content with advertising in a manner that allows for arbitrary
user-controlled navigation/re-ordering of the content” is a problem, the
Appellant does not provide adequate reasoning or support that this was an
existing technology problem or that the claim addresses this problem.
Similarly, the Appellant’s argument that “[t]he ability to ‘adaptively regroup
and re-sequence the insertion of ad blocks extemporaneously (i.e. ‘on the
fly’), in response to the consumer’s arbitrary direction of the playback

within the Office, we evaluate these arguments under Step 1 of Alice/Mayo
(Step 2A of Revised Guidance). See Revised Guidance, 84 Fed. Reg. at 55.
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within the requested content’ was not technologically achievable for media
presentation in the past” (Appeal Br. 39; see also Reply Br. 16) is
unsupported attorney argument. The Specification does not discuss why or
that this was technologically unachievable, and claim 212 does not recite
how, technologically, the adaptive modification of presentation placement is
performed such that it would be a technical or technological improvement.
As discussed above, that the content is internet-supplied simply limits
the invention to a technological field, but does not make it any less abstract.
To the extent the Appellant argues that the claim addresses the problem of
combatting piracy of content, this problem existed prior to the Internet, as
the Appellant acknowledges. See, e.g., Spec. 1, ll. 23–31 (discussing
existing problems with unauthorized copying and distribution of licensed
material); see also Uniloc USA, Inc. v. Amazon.com, Inc., 243 F. Supp. 3d
797, 804 (E.D. Tex. 2017) (“licensing is a fundamental economic practice
and because licenses are abstract exchanges of intangible contractual
obligations”), aff’d, 733 F. App’x 1026 (Fed. Cir. 2018).
Further, the purported solution comprises a generic computer system
and processors operating in their ordinary and conventional capacities. See
supra; see also Alice, 573 U.S. at 224–26. As discussed above, the
Appellant does not, and cannot, claim that they invented any of the claimed
client system or processors, their basic functions, or that those components,
claimed generally, were unknown in the art as of time of the invention. See
Affinity Labs, 838 F.3d at 1270. The “focus” of the claim is not “on the
specific asserted improvement in computer capabilities” (Enfish, 822 F.3d
at 1336), but rather on using the computer device as a tool to implement the
abstract idea in the particular field of digital content and advertising.
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Regarding the Appellant’s argument that the claim is similar to those
of BASCOM (see Appeal Br. 37–38), the Appellant does not show how the
claim here is similar to BASCOM’s “particular arrangement of elements
[that] is a technical improvement over prior art ways of filtering such
content” (827 F.3d at 1350). The patent at issue in BASCOM “claim[ed] a
technology-based solution (not an abstract-idea-based solution implemented
with generic technical components in a conventional way) to filter content
on the Internet that overcomes existing problems with other Internet filtering
systems.” Id. at 1351. The court determined that “[b]y taking a prior art
filter solution (one-size-fits-all filter at the ISP server) and making it more
dynamic and efficient (providing individualized filtering at the ISP server),
the claimed invention represents a ‘software-based invention[ ] that
improve[s] the performance of the computer system itself.’” Id. Here, there
is no such improvement. Although the claim recites the structural element
of a client computer with memory and processors, there is no claimed
technological improvement to these structures or arrangement of these
structures. Any improvement in the invention lies in the abstract idea itself,
i.e., sequencing digital media and advertising content.
We also disagree that “Claim 212 is directed to an approach that
improves the technical field of distributing media content by
dynamically integrating targeted advertising content into the digital
media content that are presented to users.” Appeal Br. 39. Claim 212
provides no details as to how the content is distributed such that there would
be a technical improvement to the field of distributing media content.
Rather, the claim here organizes the content based on some generic analysis,
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disallows a choice by some unrecited method, and presents the content using
a conventional system with processors.
The Appellant further argues that claim 212 is similar to the claims
held patent-eligible in Finjan and Ancora Techs., Inc. v. HTC Am., Inc., 908
F.3d 1343 (Fed. Cir. 2018). Reply Br. 16–18.11 However, in both of those
cases, as the Appellant acknowledges (id.), the court found that the claims
recited a specific improvement in computer technology — by “employ[ing]
a new kind of file that enables a computer security system to do things it
could not do before” in Finjan (879 F.3d at 1305), and “by a specific
technique that departs from earlier approaches to solve a specific computer
problem,” the “functionality improvement . . . effectuated in an assertedly
unexpected way” of moving a software-verification structure to a location
not previously used for this purpose, thereby altering how the security
verification function is performed in Ancora (908 F.3d at 1348–50). Here,
as discussed above, there is nothing that the claimed system and processor
could not have done before, technologically, nor is there a technologically
unconventional solution to solve a problem rooted in computers; rather,
claim 212 merely uses a computer as a tool to sequence digital media and
advertising content into a stream and modify the position of content (Reply
Br. 16–18).
Thus, we are not persuaded of error in the Examiner’s determination
that claim 212 is directed to an abstract idea.

11 The Finjan decision was issued prior to the filing of the Appeal Brief, but
was not raised until the Reply Brief and good cause has not been shown as to
why it was not. However, to expedite prosecution, we will consider it.
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Step Two of the Mayo/Alice Framework
Under the second step in the Alice framework and USTPO guidance
Step 2B, we “[e]valuat[e] additional elements to determine whether they
amount to an inventive concept [which] requires considering them both
individually and in combination to ensure that they amount to significantly
more than the judicial exception itself.” MPEP § 2106.05(I). Here, the
Examiner finds that “[t]aking the claim elements individually, the functions
performed by the computer at each step of the process are purely
conventional.” Final Act. 3 (citing Office guidance and judicial decisions).
The Examiner further finds that “[e]ven when considered as an ordered
combination, the computer components add nothing that is not already
present when the steps are considered separately” because “the claim[]
simply convey[s] the abstract idea itself applied on some generic computer
system.” Id. at 4. Thus, the Examiner concludes that claim 212 “amount[s]
to nothing significantly more than an instruction to apply the abstract idea
using some unspecified, generic computer.” Id. We find supported the
Examiner’s determination that claim 212’s additional elements beyond the
abstract idea, taken individually or as an ordered combination, do not
amount to significantly more than the judicial exception.
The Appellant contends that “[c]laim 212 recites significantly more
than the alleged abstract idea of preventing of commercial skipping.”
Appeal Br. 33. Specifically, the Appellant argues that “as in Bascom, the
claim elements of Claim 212 cannot properly be rejected by the mere
assertion that they are drawn to well-known, routine, and conventional
practices as alleged on p. 4 of the Office Action.” Id. at 34. The Appellant
cites to the USPTO Memorandum on Changes in Examination Procedure
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Pertaining to Subject Matter Eligibility, Recent Subject Matter Eligibility
Decision (Berkheimer v. HP, Inc.) (April 19, 2018) (“Berkheimer Memo”)
and contends that “the Examiner has not provided any of the above support
for the assertion that the elements of Claim 212 are well-understood, routine
or conventional and has therefore failed to meet the Office’s burden under
Step 2B and MPEP § 2106.” Id. at 35 (referring to paraphrased portions of
the Berkheimer Memo 3–4 and citing Final Act. 4); see also Reply
Br. 15–16. The Appellant argues that the “ordered combinations of elements
(implemented by operation of one or more processors) that include”
receiving data, sequencing content, adaptively modifying a position of the
content, causing presentation of the content, keeping a setting, disallowing a
navigation choice, and storing data “cannot be reasonably construed as well-
known, conventional, or routine,” that the “rejection makes no such
assertion,” and that “[t]hese features, whether taken alone or in combination,
do not resemble claim limitations that the courts have previously found to be
well-understood, routine, or conventional.” Appeal Br. 35–37. We
disagree.
As discussed above, under Step 2B we look to whether the additional
elements beyond the abstract idea, individually or in combination, provide
an inventive concept. 84 Fed. Reg. at 55. Alice is clear, as described above,
that under step two of the Mayo/Alice framework, the elements of each claim
are considered both individually and “as an ordered combination” to
determine whether the additional elements, i.e., the elements other than the
abstract idea itself, “transform the nature of the claim” into a patent-eligible
application. Alice, 573 U.S. at 217; see also Mayo, 566 U.S. at 72–73
(requiring that “a process that focuses upon the use of a natural law also
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contain other elements or a combination of elements, sometimes referred to
as an ‘inventive concept,’ sufficient to ensure that the patent in practice
amounts to significantly more than a patent upon the natural law itself”). In
other words, the inventive concept under step two of the Mayo/Alice
framework cannot be the abstract idea itself: “It is clear from Mayo that the
‘inventive concept’ cannot be the abstract idea itself, and Berkheimer . . .
leave[s] untouched the numerous cases from this court which have held
claims ineligible because the only alleged ‘inventive concept’ is the abstract
idea.” Berkheimer v. HP, Inc., 890 F.3d 1369, 1374 (Fed. Cir. 2018)
(Moore, J., concurring) (Berkheimer II); see also BSG Tech LLC v.
BuySeasons, Inc., 899 F.3d 1281, 1290 (Fed. Cir. 2018) (“It has been clear
since Alice that a claimed invention’s use of the ineligible concept to which
it is directed cannot supply the inventive concept that renders the invention
‘significantly more’ than that ineligible concept.”) (citation omitted).
To the extent the Appellant argues that claim 212 recites elements that
amount to significantly more than the abstract idea because the claim
“recite[s] a novel and inventive method” (Appeal Br. 33), an abstract idea
does not transform into an inventive concept just because the prior art does
not disclose or suggest it. See Mayo, 566 U.S. at 78. “Groundbreaking,
innovative, or even brilliant discovery does not by itself satisfy the § 101
inquiry.” Ass’n for Molecular Pathology v. Myriad Genetics, Inc., 569 U.S.
576, 591 (2013). Indeed, “[t]he ‘novelty’ of any element or steps in a
process, or even of the process itself, is of no relevance in determining
whether the subject matter of a claim falls within the § 101 categories of
possibly patentable subject matter.” Diehr, 450 U.S. at 188–89; see also
Mayo, 566 U.S. at 91 (rejecting “the Government’s invitation to substitute
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§§ 102, 103, and 112 inquiries for the better established inquiry under
§ 101”).
Here, the only additional elements beyond the abstract idea are the
client and remote devices, i.e., computers with memory and processors
programmed to perform all of the limitations of claim 212. See Final Act. 4;
Ans. 7; supra. We note the claim simply recites the functional results to be
achieved by the devices. The claim “provides only a result-oriented
solution[] with insufficient detail for how a computer accomplishes it. Our
law demands more.” Capital One Fin., 850 F.3d at 1342. The claimed
functions of receiving, sequencing, adaptively modifying, causing
presentation, keeping a setting, disallowing a choice, and storing data are
part of the abstract idea itself; they are not additional elements to be
considered when determining whether claim 212 includes additional
elements or a combination of elements that is sufficient to amount to
significantly more than the judicial exception.
As discussed above, the only claim elements beyond the abstract idea
are the client system with memory and processor programmed to perform
the steps, recited generally, that the Specification indisputably shows were
conventional at the time of filing. See supra; Spec. 14, ll. 2–23, 15, l. 13–18,
l. 26; Figs. 1, 2. The Appellant does not provide any supported reasoning or
explanation that the functions of receiving data, sequencing and adaptively
modifying, i.e., organizing content, presenting content, keeping a setting,
disallowing a choice, i.e., preventing access to data, and storing data are not
well-understood, routine, and conventional. And, in compliance with the
Berkheimer Memo, the Examiner provides support for the claimed functions
being “purely conventional” and “well-understood, routine, and
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conventional . . . when they are claimed in a merely generic manner” by
providing “citation[s] to one or more of the court decisions discussed in
MPEP § 2106.05(d)(II) as noting the well-understood, routine, conventional
nature of the additional element(s).” Final Act. 3; Berkheimer Memo 4.
The Appellant cannot reasonably maintain that there is a genuine issue
of material fact regarding whether operation of the claimed device or
processor is well-understood, routine, or conventional, where, as here, there
is nothing in the Specification to indicate that the operations recited in
claim 212 require any specialized hardware or inventive computer
components, or that the claimed invention is implemented using other than
generic hardware or computer components to perform the generic computer
functions as discussed above. Indeed, the Federal Circuit, in accordance
with Alice, has “repeatedly recognized the absence of a genuine dispute as to
eligibility” where claims have been defended as involving an inventive
concept based “merely on the idea of using existing computers or the
Internet to carry out conventional processes, with no alteration of computer
functionality.” Berkheimer II, 890 F.3d at 1373 (Moore, J., concurring)
(citations omitted).
Here, as discussed above, the elements other than the abstract idea are
recited at a high level of generality and are used in their ordinary and
conventional capacities to receive, organize, display, store, and generate,
store, receive, analyze, and prevent access to data. See Capital One Fin.,
850 F.3d at 1341 (holding that collecting, organizing, identifying, mapping,
organizing, defining, and detecting was abstract); Capital One Bank, 792
F.3d at 1369–71 (holding that “the entry of data into a computer database,
the breakdown and organization of that entered data according to some
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criteria, . . . and the transmission of information derived from that entered
data to a computer user, all through the use of conventional computer
components, such as a database and processors, operating in a conventional
manner” did not transform a patent-ineligible process into something more);
Elec. Power, 830 F.3d at 1355 (gathering, sending, monitoring, analyzing,
selecting, and presenting information does not transform the abstract process
into a patent-eligible invention); FairWarning IP, LLC v. Iatric Sys., Inc.,
839 F.3d 1089, 1095 (Fed. Cir. 2016) (generating a rule related to accessing
information, applying the rule, and storing and announcing the result did not
transform the abstract idea into a patent-eligible invention); Inventor
Holdings, LLC v. Bed Bath & Beyond, Inc., 876 F.3d 1372, 1378 (Fed. Cir.
2017) (holding that sequence of data retrieval, analysis, modification,
generation, display, and transmission was abstract).
The Appellant’s argument that the combination of elements are
similar to those of DDR Holdings and BASCOM (Appeal Br. 37–38) are
unpersuasive of error for the reasons discussed above with respect to Step 1
of the Mayo/Alice framework.12 Thus, we are not persuaded of error in the
Examiner’s determination that the limitations of claim 212 do not transform
the claim into significantly more than the abstract idea.

12 We note the Appellant’s argument regarding Ex parte Relyea, Appeal No.
2017-001443 (April 18, 2018). Appeal Br. 38. First, we note that the
Specification and claim limitations in Relyea are different than those at issue
here. See id. Second, we are not bound by a decision of another panel in a
non-precedential Board opinion. We similarly do not consider the
Appellant’s comparisons to “PTAB ‘084 Decision.” Reply Br. 15.
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Therefore, we are not persuaded of error in the Examiner’s
determination that the limitations of claim 212 do not transform the claim
into significantly more than the abstract idea.
We sustain the Examiner’s rejection under 35 U.S.C. § 101 of
independent claim 212 and of claims 214–223, and 225–273, the rejection of
which stands with claim 212.

35 U.S.C. § 112(a) – Written Description
The Examiner rejects claims 212, 214–223, and 225–273 as failing to
comply with the written description requirement of 35 U.S.C. § 112, first
paragraph, because the Specification does not describe, in a way to
reasonably convey to one of ordinary skill in the art at the time the
application was filed, that the Appellant had possession of the claimed
invention, i.e., that the Specification as filed had written description support
for
adaptively modifying, . . . a presentation position of the
digital advertising content from at least one of the one or more
initially sequenced insertion points to one or more alternatively
sequenced insertion points, at least one of the one or more
alternatively sequenced insertion points being different than the
one or more initially sequenced insertion points relative to the
digital media content within the user-perceptible content stream.
Final Act. 5. The Examiner finds that although the Specification discusses
“that the intersplicer has the ability to adaptively regroup and re-sequence
the insertion of ad blocks extemporaneously (i.e. ‘on the fly’), in response to
the consumer’s arbitrary direction of the playback within the requested
content, by means of playback controls” and “that the method has the power
to require and enforce the presentation of paid advertisements inserted at
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regular intervals within the requested media content . . . , the advertisement
sequencing that may occur in combination over a playback sequence of
requested audio or video media content,” the Specification does not discuss
at least one of the alternatively sequenced insertion point being different
than the initially sequenced insertion points relative to the content. Id.
Specifically, the Examiner finds that “the insertion point of the ads remain in
the same sequence, i.e. next to the media segment” and that “[e]ven if a user
skips from one segment to another, the ad location remains the same, which
is after a pre-defined number of media segments.” Ans. 3.
The Appellant contends that “the claim feature at issue in this
rejection is well-supported at least by ¶0149-¶0150, and also at
¶0154-¶0156, referring to FIG. 4A.” Appeal Br. 19 (citing Spec. 28,
l. 27–29, l. 4, 28, l. 23–29, l. 16). Specifically, the Appellant contends that
In the scenario described in ¶0150, ad block 410 is played
at a point immediately preceding “the middle of segment 434,”
which is an “alternate insertion point” that is clearly “different
than the one or more initially sequenced insertion points relative
to the digital media content within the user-perceptible content
stream,” which would, in this example, be those insertion points
originally scheduled to occur between the segments.
Id. The Appellant also contends that the Specification provides additional
support in that
ad blocks 414 and 416 are initially sequenced after tracks
448 and 456, respectively, but in response to the user “skipping
around or other navigation,” ad block insertions wind up at
different positions relative to those tracks to comply with pre-
defined placement rules (which in this example are track count
rules).
Id. at 20. The Appellant argues that
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the Examiner seems to be misconstruing the claim
language as requiring the modification of the initial ad “insertion
points” in the media stream, whereas the claim recites modifying
“a presentation position” of the ad content regardless of the point
the ad was scheduled to be inserted in the stream initially. In
other words, in a media stream, an ad segment may be initially
scheduled to be inserted following a media segment. However,
the point of initial insertion in the stream is not the same as the
recited “presentation position” of the ad content during play. . . .
[I]t is the “presentation position” of the ad in the stream that may
be adaptively modified (e.g., due to user input), as claimed and
as clearly supported in the Specification.
Reply Br. 4.13
We agree with the Appellant that the Examiner appears to equate the
claimed presentation position with the sequenced insertion point. The
claims require modifying the presentation position from one initial insertion
point to a different insertion point. See, e.g., Appeal Br. 42 (Claims App.,
claim 212). That the sequence of the content, i.e., an ad next to media
content, remains the same does not indicate that the position of the ad in the
presentation content stream is unchanged, for example, not playing an ad
block after a track 456 when a previous track is skipped, but inserting the ad

13 The Appellant’s contention that the Examiner’s Answer contains new
grounds of rejection is not considered. See Reply Br. 4. If the Appellant
sought to contest the failure of the Examiner to designate the rejections as
containing new grounds, the proper recourse was to request review of the
Examiner’s Answer “by way of a petition to the Director under § 1.181 of
this title within two months from the entry of the examiner’s answer and
before the filing of any reply brief.” 37 C.F.R. § 41.40(a) (2019). The
Appellant has not filed such a petition. Rather, the Appellant maintained the
appeal by filing a reply brief addressing the alleged new grounds. Id.
§ 41.39(b)(2).
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after the played track 458. See Reply Br. 5–6. And, we agree with the
Appellant that the cited portions of the Specification adequately support the
claim language “because the noted portions of the [Specification]
particularly disclose that an ad block’s presentation position in sequences
402 and 404, for example, may be modified to a new point in the sequence,
depending on user input (i.e., user interaction).” Id. at 8.
Therefore, based on the record before us, we do not sustain the written
description rejection of claims 212, 214–223, and 225–273.

35 U.S.C. § 103 - Obviousness
The Appellant contends that the Examiner’s rejection of independent
claims 212, 238, 243, 267, 268, and 271 is in error because “Knepper does
not describe or suggest ‘at least one of the one or more alternatively
sequenced insertion points being different than the one or more initially
sequenced insertion points relative to the digital media content of’
independent Claim 212 or the corresponding features of Claims 238, 243,
267, 268, and 271.” Appeal Br. 21 (bolding omitted). After careful review
of the record before us, we agree.
The Examiner relies on Knepper for teaching this limitation finding,
in relevant part, that Knepper teaches “receiving, a user input representing
one or more navigational choices associated with a presentation of the
content stream (play forwarding, skipping), modifying (re-sequencing),
[and] using a pre-defined rules presentation position of an advertisement
from initial sequenced position to alternative sequenced insertion point
(position).” Final Act. 7 (citing Knepper ¶¶ 34–42, 59). The Examiner
further finds
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Same as applicant’s disclosure, the advertisement and the
media of Knepper which were sequenced to be played in a
predefined order, when the user skips or forwards to a different
music (e.g. to a third media in the sequence after playing the first
media in the sequence), the ad appended to the media (third
media) would also be played as a second in the sequence (the
media and ad combination) instead of the ad appended to the
second media in the sequence (play list) (see applicant’s
specification [0144]-[0149]).
Id. at 8 (italics omitted); see also id. at 16 (“similar to Applicant’s
disclosure, Knepper teaches the ads plays with the content as the user skips
back and forth”). The Examiner finds that Knepper teaches by using tags
that are “specific instructions regarding treatment of the advertising media
files,” “the server can direct the client to place an ad before, during or after a
media file during playback of media files in the magazine page.” Ans. 4
(citing Knepper ¶ 52). “[W]hen the sequence of media segment changes
(from a 1st in the sequence to a 3rd in the sequence, the ad position also
changes adaptively with the media file.” Id. The Examiner finds
Knepper also show a first sequencing of media files and
ad files (a playlist of media files with ad files). However, when
a user does not follow the pre-set order of the playlist, by
skipping media files in the sequence, the order of the play list
changes (e.g. instead of a media file being the 3nd [sic] in order,
it would be a 2nd in the order), the position of the ad file also
changes within the playlist.
Id. at 5.
Knepper discloses a “system and method for transferring
entertainment media files and advertisement media files.” Knepper
Abstract. Three components of “entertainment rich media files,
advertisement rich media files, and an instruction set, or text file, that
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describes the assembly and playback order of the media files” are used. Id.
¶ 25. The entertainment media files from storage, that are pre-cached on the
client side and ready for playback, may be downloaded from a server to a
client at any time. Id. ¶ 27; see also id. ¶ 35. “The instruction set may be an
HTML file or a text file that includes tags or other specific instructions to
the client,” “is a listing of the order of the entertainment and advertisement
media files that will make up the show that was requested by the user,” “is
created on the server side, in some instances at the time of the user’s request,
and may be specific to each user.” Id. ¶ 34. Playback may begin before all
files are cached. Id. ¶ 35. “After all of the necessary media files are resident
at the client side . . . , the client application assembles the entertainment and
advertisement media files and begins playback of the various media files
(and static images received by the client application) in the order specified
by the instruction set . . . .” Id. ¶ 37. The instruction set can be modified to
insert random ads and create a play list. Id. ¶ 37; Fig. 3 (block 294). The
media files appear as a single file played in a continuous show clip. Id.
¶¶ 37, 38. The instruction set is analyzed by the client-side application;
then, a show is built by pulling media files from storage as listed on the
instruction set, and if “not already resident at the client side, then the
appropriate advertisement media files 409 are retrieved from a server side
advertisement file storage 105.” Id. ¶ 40. “The sequence of multiple media
files, including combinations of entertainment files and advertisement files,
is retrieved from storage in response to a single request or action from the
client side, whether the request is direct or derived from a user subscription.”
Id.
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Knepper further discloses that “[i]n one embodiment, the media files
play together sequentially, similar to a television show with commercials
inserted at various points,” whereby the entertainment media files are
blended with the advertisement media files, and “[t]he entertainment media
files include indications within the files, or possibly in an external file,
pointing to where, if at all, the entertainment media files may have
advertisement media files inserted therein.” Id. ¶ 41. “When a client-side
user selects a particular entertainment file . . . , the server sends the
entertainment file to the user, or the portion of the entertainment file that had
not been previously pre-cached at the client side.” Id. “The server also
sends a text file containing a set of instructions indicating which
advertisement media files from among the pre-cached advertisement media
files to insert into the entertainment media file at run time, how many
advertisement media files to insert, and where to insert them.” Id. The
instruction file does not need to specify “exactly which advertisement media
files to insert,” but can “allow the client application to make its own random
or pseudo-random selection, subject to any positive and negative
associations, for playing back with the entertainment media file.” Id.
Knepper uses “[t]wo new tags, not standard to HTML programming,”
specifically and tags, to “give the server
complete control over the content and placement of the ads within a show,
even though this is eventually carried out on the client side.” Id. ¶ 52.
“Using these tags, the server can direct the client to place an ad before,
during, or after a media file during playback of media files in the magazine
page.” Id. “The placement of the tags within the ClipTag
section dictates the sequence of advertisement and entertainment media
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files.” Id. ¶ 55. In one example, “all of the content designated inside of the
tags is downloaded and then all of the content designated inside
of the tags is downloaded.” After receipt of the all of the
content, “the client begins to display the content in the application,” so that
the art and the advertisement media file are displayed by the client before the
static image and the entertainment media file “because of the placement of
these files within the instruction set as defined.” Id. ¶ 55. In another
example, “the client displays the entertainment media file and associated
graphic panel content before it plays the advertisement media file with its
associated graphic panel content.” Id. ¶ 59. “According to this instruction
set, once the user directs the client application to begin playing the show, the
client begins to play the entertainment media files in the first panel within
the magazine.” Id. “When the entertainment media file is finished playing,
the advertisement media file immediately proceeds, without the appearance
of a page turn.” Id.
We agree with the Appellant that Knepper does not describe “the
claim features in which an alternate insertion point (that differs from any
initial insertion point) relative to digital media is used in response to user
input that causes the adaptively modifying as claimed.” Appeal Br. 22.
Knepper teaches two examples where (1) the art and advertising files can
precede the static entertainment file or (2) the entertainment file precedes the
advertisement file. However, we do not see, and the Examiner does not
direct attention to, where Knepper teaches “when a user does not follow the
pre-set order of the playlist, by skipping media files in the sequence, the
order of the play list changes (e.g. instead of a media file being the 3nd [sic]
in order, it would be a 2nd in the order), the position of the ad file also
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changes within the playlist.” Ans. 5. Rather, we agree with the Appellant
that “[e]ven assuming, arguendo, that a user could navigate between
Knepper pages and that would somehow change the order at which specific
advertisement content is presented, the advertising insertion points as
described in Knepper would still be at the exact same positions,” whereas
the claims require adaptively modifying or re-sequencing with an alternate
insertion point different from the initial insertion point. Appeal Br. 22–23.
We further agree with the Appellant that Knepper does not teach
adaptively modifying or re-sequencing the presentation position in response
to user input, because Knepper’s server determines the order of the media,
sends that order to the client-side device, and even if the user skips pages,
the order as provided by the instruction set, remains the same. See id.
at 23–24. Although Knepper provides that the instruction set can be
modified to insert random ads and create a play list (see Knepper ¶ 37; Fig. 3
(block 294)), we do not see, and the Examiner does not explain, where
Knepper teaches that the order of the presentation, as contained in the
instruction set, changes in response to user input.
Thus, based on the record before us, we do not sustain the
obviousness rejection of claims independent claims 212, 238, 243, 267, 268,
and 271. We also do not sustain the rejection of dependent claims 214–223,
225–232, 234–237, 239–242, 244–249, 251–255, 257–266, 269, 270, 272,
and 273 under the same ground of rejection. The rejections of dependent
claims 233, 250, and 256 as further obvious over Official Notice or Oh are
also not sustained, as they fail to include additional findings and/or
reasoning that cures the deficiency in the rejections of the independent
claims, from which they depend.
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CONCLUSION
The Examiner’s decision to reject claims 212, 214–223, and 225–273
is sustained.

In summary:
Claims
Rejected
35 U.S.C. § References/
Basis
Affirmed Reversed
212, 214–223,
225–273
101 Eligibility 212, 214–223,
225–273

212, 214–223,
225–273
112, first Written
Description
212, 214–223,
225–273
212, 214–223,
225–232, 234–
249, 251–255,
257–273
103(a) Knepper,
Hannah,
Wang
212, 214–223,
225–232, 234–
249, 251–255,
257–273
233, 256 103(a) Knepper,
Hannah,
Wang,
Official
Notice
233, 256
250 103(a) Knepper,
Hannah,
Wang, Oh
250
Overall
Outcome
212, 214–223,
225–273

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED