DynamicLogic, LLC

Patent Trials and Appeals Board

May 14, 2020

2018003785 (P.T.A.B. May. 14, 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.
14/244,491 04/03/2014 Ronit Aviv 280665 9162
23460 7590 05/14/2020
LEYDIG VOIT & MAYER, LTD
TWO PRUDENTIAL PLAZA, SUITE 4900
180 NORTH STETSON AVENUE
CHICAGO, IL 60601-6731
EXAMINER
BRADY, MARIE P.
ART UNIT PAPER NUMBER
3681
NOTIFICATION DATE DELIVERY MODE
05/14/2020 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):
Chgpatent@leydig.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RONIT AVIV, PETER DIETRICH, and SHIMON SCHWARTZ
Appeal 2018-003785
Application 14/244,491
Technology Center 3600
Before JOSEPH L. DIXON, ST. JOHN COURTENAY III, and
LARRY J. HUME, Administrative Patent Judges.
HUME, Administrative Patent Judge.
DECISION ON REQUEST FOR REHEARING
This is a decision on Appellant’s Request for Rehearing of our
Decision on Appeal mailed February 13, 2020.
We reconsider but do not modify our Decision in light of Appellant’s
Request, and therefore decline to reverse the Examiner’s rejection of
claims 1–21 for the reasons provided, infra.
BACKGROUND1
Appellant has filed a paper under 37 C.F.R. § 41.52 requesting we
reconsider our Decision affirming the Examiner’s rejection of claims 1–21

1 Our decision relies upon Appellant’s Appeal Brief (“Appeal Br.,” filed
Nov. 13, 2017); Reply Brief (“Reply Br.,” filed Feb. 22, 2018); Request for
Rehearing (“Request,” filed Apr. 13, 2020); Examiner’s Answer (“Ans.,”
mailed Dec. 22, 2017); Final Office Action (“Final Act.,” mailed
May 10, 2017); the original Specification (“Spec.,” filed Apr. 3, 2014)
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Application 14/244,491

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under 35 U.S.C. § 101 as directed to patent ineligible subject matter,
allegedly because “the Decision erroneously concludes that Appellant’s
claimed invention is directed to ‘a mental process, and thus is an abstract
idea.’” Request 1 (quoting Decision 20).
APPELLANT’S ARGUMENTS
We have only considered those timely arguments actually made by
Appellant in deciding this Request. See 37 C.F.R. § 41.52(a)(1)
(“Arguments not raised, and Evidence not previously relied upon, pursuant
to §§ 41.37, 41.41, or 41.47 are not permitted in the request for rehearing
except as permitted by paragraphs (a)(2) through (a)(4) of this section.”).
Appellant argues:
First, Appellant requests rehearing to reconsider the legal
guidance provided by Thales (as opposed to merely comparing
the claims). Appellant submits that the Decision misapplies the
legal guidance of Thales (i.e., directing the decision-maker to
look to the disclosure of the application as whole to identify a
technological problem solved by a claimed invention). Instead
of observing the general legal guidance provided by the
Federal Circuit in Thales, the Decision compares the claimed
subject-matter of Thales and Appellant’s claims. . . .
Second, Appellant requests rehearing, in the context of
Thales’ legal guidance, to reconsider the Decision’s
characterization of Appellant’s claimed invention as a “mental
process.” See Decision, at page 20. Appellant’s invention, as
demonstrated by BOTH the specification/disclosure and
claims is directed to a particular technological
implementation that addresses particularly disclosed problems
encountered by prior art networked systems when attempting
to effectively manage user data. Appellant’s solution is

(claiming benefit of US 61/807,953 filed Apr. 3, 2013); and Transcript of
Oral Hearing (“Tr.,” made of record on Jan. 6, 2020).
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directed to a particular way/implementation of administering
“on-line advertisement campaigns on a network including a
user device having a unique identification (UID), a survey
participant server and an advertisement server.” See Appellant’s
Claim 1 (preamble). . . .
Lastly, even if found to be directed to a “mental process,”
Appellant’s claims recite particular additional “non-
conventional” implementation of the recited method that are (as
demonstrated by the finding of non-obviousness over the prior
art to be non-conventional in nature. It is the network node-
specific nature of particular recited steps that both: (1) solved a
technological problem and (2) distinguished Appellant’s claims
over the teachings of the prior art of record on appeal.
Request 1–2.
In particular, Appellant contends, “instead of a ‘mental process,’
Appellant’s invention is directed to a particular network arrangement of
particularly recited functional elements that addresses the particular
technological problems relating to carrying out such campaigns on a
network.” Request 2.2 “Appellant notes that the request for rehearing is
limited, to promote efficiency, to the Decision’s analysis provided at pages
17–20.” Request 6.

2 Appellant makes arguments alleging patent eligibility of the claims
because there are no art-related rejections in the case. Request 2. We are not
persuaded because “[e]ligibility and novelty are separate inquiries.” Two-
Way Media Ltd. v. Comcast Cable Commc’ns, LLC, 874 F.3d 1329, 1340
(Fed. Cir. 2017); see also Affinity Labs of Tex., LLC v. DIRECTV, LLC, 838
F.3d 1253, 1263 (Fed. Cir. 2016) (holding that “[e]ven assuming” that a
particular claimed feature was novel does not “avoid the problem of
abstractness”).
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RESPONSE TO ARGUMENTS
We are not persuaded of error in our Decision and conclude we have
not misapprehended the Examiner’s rejection in our Decision, nor have we
overlooked any of Appellant’s arguments in the briefs, as discussed below.
We note our Decision does not identify any specific arguments as untimely,
nor did we exclude any of Appellant’s arguments from consideration in
reaching our ultimate Decision and its legal conclusions.
Discussion of Thales3
Appellant alleges our Decision erred by comparing claims of Thales
with the claims on Appeal, instead of applying the legal guidance provided
by Thales. Request 1.
In Thales, the Federal Circuit reversed a decision of the Court of
Federal Claims, 122 Fed. Cl. 245 (2015), that found claims drawn to an
inertial tracking system ineligible. In reversing, the Federal Circuit found
that the claims were not directed to an abstract concept.
Claims 1 and 22, reproduced below, are the only independent claims
that were at issue in the Thales patent, U.S. Patent No. 6,474,159 (“the ‘159
patent”).
1. A system for tracking the motion of an object
relative to a moving reference frame, comprising:
a first inertial sensor mounted on the tracked object;
a second inertial sensor mounted on the moving reference
frame; and
an element adapted to receive signals from said first and
second inertial sensors and configured to determine an

3 See Thales Visionix Inc. v. United States, 850 F.3d 1343 (Fed. Cir. 2017).
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orientation of the object relative to the moving reference frame
based on the signals received from the first and second inertial
sensors.
22. A method comprising determining an orientation of
an object relative to a moving reference frame based on signals
from two inertial sensors mounted respectively on the object
and on the moving reference frame.
The ‘159 patent, claims 1, 22.
In contrast, representative claim 1 on Appeal recites:
1. A method for administering on-line advertisement
campaigns on a network including a user device having a
unique identification (UID), a survey participant server and an
advertisement server, the method comprising:
creating, on the survey participant server, a database
element associated with the UID of the user device, the
database element including information corresponding to on-
line advertisements previously executed on the user device;
receiving, by the survey participant server, an on-line
advertisement exposure notification from the user device, the
on-line advertisement exposure notification including the UID
and an on-line advertisement identifier corresponding to an on-
line advertisement provided by the advertisement server,
wherein the on-line advertisement is provided in an on-line
advertisement block downloaded to the user device from the
advertisement server, and wherein the advertisement block
further includes a tracking tag that, when executed by the user
device, causes the user device to issue the on-line advertisement
exposure notification to the survey participant server; and
updating, by the survey participant server, the database
element associated with the UID in accordance with
advertisement exposure on the user device associated with the
on-line advertisement identifier.
Appeal Br. 13 (Claims App.).
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As a threshold matter, we see no reasonable way to analogize the
subject matter of the claims on Appeal (administering on-line advertisement
campaigns) with the subject matter of the claims found patent-eligible in
Thales (system for tracking the motion of an object relative to a moving
reference frame).
Moreover, with respect to applying the general legal holding in
Thales, we are unaware of any pertinent analogy, particularly given the
disparate nature of the claimed subject matter in Thales compared to the
claims on Appeal, nor does Appellant advance applicability of the general
holding of Thales to this Appeal, other than to state that Thales “direct[ed]
the decision-maker to look to the disclosure of the application as whole to
identify a technological problem solved by a claimed invention.” Request 1.
In Thales, the Federal Circuit held “[t]hese claims are not merely
directed to the abstract idea of using ‘mathematical equations for
determining the relative position of a moving object to a moving reference
frame,’ as the Claims Court found. . . . Rather, the claims are directed to
systems and methods that use inertial sensors in a non-conventional manner
to reduce errors in measuring the relative position and orientation of a
moving object on a moving reference frame.” Thales, 850 F.3d at 1348–49
(citation omitted). “The mathematical equations are a consequence of the
arrangement of the sensors and the unconventional choice of reference frame
in order to calculate position and orientation. Far from claiming the
equations themselves, the claims seek to protect only the application of
physics to the unconventional configuration of sensors as disclosed. As
such, these claims are not directed to an abstract idea and thus the claims
survive Alice step one.” Id. at 1349.
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We determine claim 1 on Appeal does not recite any mathematical
equation or concept, nor does it recite application of physics to the
unconventional configuration of claimed elements, i.e., in this case, the
recited “network,” “user device,” “survey participant server,”
“advertisement server,” “database element,” and “tracking tag.”
Accordingly, we are not persuaded that the general legal guidance of
Thales is dispositive in this Appeal.
The Claims are Directed to an Abstract Idea without Significantly More
We incorporate our analysis in the Decision using the Revised
Guidance herein by reference.
Appellant alleges the claimed invention “is directed to a particular
technological implementation that addresses particularly disclosed
problems encountered by prior art networked systems when attempting to
effectively manage user data. Appellant’s solution is directed to a
particular way/implementation of administering ‘on-line advertisement
campaigns on a network including a user device having a unique
identification (UID), a survey participant server and an advertisement
server.’” Request 2.
The claims are directed to a tracking on-line advertisement exposure
via mobile wireless device browsers. In particular:
The invention generally relates to systems and methods
for gauging on-line advertisement campaign effectiveness.
More particularly, the disclosure herein relates to effectively
maintaining a record of user exposure to on-line advertisements
via mobile wireless device browsers. Such information is used
by integrated networked systems to selectively present on-line
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surveys to on-line users (both previously exposed to particular
ads and “control” groups who have no previous exposure to
particular ads relating to a survey).
Spec. ¶ 2. Appellant’s Abstract provides the following description of the
invention:
A system and method are described for tracking on-line
advertisement exposure information for particular user devices.
Alternative approaches are proposed as alternatives to using
cookies on user devices to maintain a summary of previous on-
line advertisement exposure. A survey participant server
maintains a database including elements containing the
summary of previous on-line advertisement exposure, each
element being associated with a unique identifier value assigned
to a particular user device. Such information is subsequently
used to administer on-line surveys presented to users via the
user devices.
Spec. 19 (Abstract).
From this disclosure and the plain language of claim 1 as a whole, we
determine the claimed invention is directed to solving a business problem,
and not a technical problem associated with “a particular network
arrangement of particularly recited functional elements that addresses the
particular technological problems relating to carrying out such campaigns on
a network,” as alleged by Appellant. Request 2.
Under the Revised Guidance, relied upon in our Decision, we first
look to whether the claim recites “any judicial exceptions, including certain
groupings of abstract ideas (i.e., mathematical concepts, certain methods of
organizing human activity such as a fundamental economic practice, or
mental processes).” See Revised Guidance 52. Under the Revised
Guidance, mental processes are identified as “concepts performed in the
human mind (including an observation, evaluation, judgment, opinion).” Id.
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In our Decision (17–19), we determined limitations [L1] “creating . . .
the database element including information corresponding to on-line
advertisements previously executed on the user device,” and [L4] “updating
. . . the database element associated with the UID in accordance with
advertisement exposure on the user device associated with the on-line
advertisement identifier” recite abstract ideas in the form of mental
processes, i.e., creating a database element that includes information, and
updating the database element with new information.4 Alternatively,
without changing the ultimate outcome, we conclude that we could have
characterized these limitations as reciting abstract ideas in the form of
commercial interactions, i.e., marketing or sales behaviors. See Revised
Guidance 52–53.5
Appellant argues:
The claimed invention, by providing an networked messaging
infrastructure that facilitates storing (on a survey participant

4 We made further determinations regarding other limitations of claim 1
with respect to the recitation of data gathering, i.e., extra-solution activity
steps, and the use of well-understood, routine, and conventional computer
components. Decision 17–18.
5 Our reviewing court recognizes 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). That need not and, in this case does
not, “impact the patentability analysis.” Id. at 1241. Further, “[t]he Board’s
slight revision of its abstract idea analysis does not impact the patentability
analysis.” Id. Moreover, merely combining several abstract ideas does not
render the combination any less abstract. RecogniCorp, LLC v. Nintendo
Co., 855 F.3d 1322, 1327 (Fed. Cir. 2017) (“Adding one abstract idea (math)
to another abstract idea . . . does not render the claim non-abstract.”); see
also FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1093–94 (Fed.
Cir. 2016) (determining the pending claims were directed to a combination
of abstract ideas).
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server remote from on-line users) identified on-line
advertisement identifications in database elements
corresponding to uniquely identified users, ensures that a
particular user’s online advertisement exposure is not erased
when the user’s local Internet cache/cookie storage is cleared
on the user’s computer (e.g. user device 10 in FIG. 10). The
capability of persisting user exposure data (previously
maintained on user computers) on a networked “survey
participant server” addresses the technological problem
described in Appellant’s Background at paragraphs [0004-06].
Request 4.
We further note the features relied upon as solving a technical
problem, e.g., “ensur[ing] that a particular user’s online advertisement
exposure is not erased when the user’s local Internet cache/cookie storage is
cleared on the user’s computer” and “a survey participant server remote from
on-line users” (Request 4 (emphasis added)) are not recited in the claims.
Moreover, the recited “survey participant server” is described in
general terms, and identifies the type of data stored, but does not identify an
arrangement of conventional computer network components that would
amount to “significantly more.” See Decision 25–30. “In an exemplary
embodiment, the survey participant server 15 centrally maintains/
administers a database of registered users (user devices), identified by UIDs,
and associated advertisement campaign exposure (including completed
surveys).” Spec. ¶ 26.
[0027] The described functionality of the survey participant
server 15 is implemented, in executable software modules and
hardware, in potentially many different ways in accordance
with alternative embodiments. The survey participant server 15,
while illustrated as a single entity in FIG. 1, can in fact be
implemented as multiple distinct servers at distinct network
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addresses. There is no intention to limit the manner in which
the functionality of the survey participant server 15 is carried
out in server software and hardware. In another illustrative
embodiment, the functionality of the survey participant server
15 is embodied in multiple distinct server applications that
reside at a same network address. In an exemplary embodiment,
the survey participant server 15 centrally maintains/administers
a database of registered users (user devices), identified by
UIDs, and associated advertisement campaign exposure
(including completed surveys).
Spec. ¶ 27.
To summarize, the test of eligibility is not based on whether the
claimed invention could only be carried out with a computer. Rather, when
using a generic computer, the test is whether the claimed invention does
effect an improvement to another technology or technical field; whether the
claimed invention does amount to an improvement to the functioning of a
computer itself; and whether the claimed invention does more, beyond a
general link of the use of an abstract idea to a particular technological
environment. In this case, the claimed invention does not meet any of the
aforementioned criteria. As claimed, the technology implemented in the
instant application is useful to solve a business or marketing problem, but
the additional elements are not a technological solution to a technological
problem, or a solution to a problem introduced by the technology itself.
CONCLUSION
We have considered all of the arguments timely raised by Appellant in
the Request. Accordingly, while we have granted Appellant’s Request to the
extent that we have reconsidered our Decision, the Request is denied with
respect to reversing the Examiner’s rejection of claims 1–21 under 35 U.S.C.
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Application 14/244,491

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§ 101. Our Decision is final for purposes of judicial review. See 37 C.F.R.
§ 41.52(a)(1).
SUMMARY
Outcome of Decision on Rehearing:
Claims
Rejected
35 U.S.C
§
Basis/References Denied Granted
1–21 101 Subject Matter
Eligibility
1–21
Final Outcome of Appeal after Rehearing:
DECISION SUMMARY
Claims
Rejected
35 U.S.C.
§
Basis /
References
Affirmed Reversed
1–21 101 Subject
Matter
Eligibility
1–21
1, 4, 5, 8, 11,
12, 15, 18, 19
103 Obviousness
Aviv, Apple
1, 4, 5, 8, 11,
12, 15, 18, 19
2, 9, 16 103 Obviousness
Aviv, Apple,
Dierks
2, 9, 16
3, 10, 17 103 Obviousness
Aviv, Apple,
Walsh
3, 10, 17
6, 7, 13, 14, 20,
21
103 Obviousness
Aviv, Apple,
Banga
6, 7, 13, 14,
20, 21
Overall
Outcome
1–21
DENIED