Ex Parte Ruffini

Patent Trial and Appeal Board

Sep 24, 2018

12916504 (P.T.A.B. Sep. 24, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/916,504 10/30/2010
25537 7590 09/26/2018
VERIZON
PA TENT MANAGEMENT GROUP
1320 North Court House Road
9th Floor
ARLINGTON, VA 22201-2909
UNITED ST A TES OF AMERICA
FIRST NAMED INVENTOR
Michael P. Ruffini
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
20100403 9722
EXAMINER
SCHMUCKER, MICHAEL W
ART UNIT PAPER NUMBER
3681
NOTIFICATION DATE DELIVERY MODE
09/26/2018 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):
patents@verizon.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MICHAEL P. RUFFINI
Appeal2017-002977
Application 12/916,504
Technology Center 3600
Before JOHNNY A. KUMAR, HUNG H. BUI, and
CARLL. SILVERMAN, Administrative Patent Judges.
KUMAR, Administrative Patent Judge.
DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner's
Final Rejection of claims 1, 2, 4---6, 8, 9, 13-18, 21, and 22, which are all the
claims pending in this application. We have jurisdiction over the pending
claims under 35 U.S.C. § 6(b ).
We AFFIRM.
1 Appellant identifies Verizon Communications Inc. as the real party in
interest. App. Br. 3.
Appeal2017-002977
Application 12/916,504
STATEMENT OF THE CASE
Claim 1 is exemplary and illustrative of the invention and reads as
follows:
1. A method comprising:
generating, by a service provider subsystem, an on-
demand asset by recording data representative of a media content
instance during a transmission of the media content instance by
a media content provider subsystem to the service provider
subsystem by way of a network;
detecting, by the service provider subsystem during the
recording, a trigger that is included in the transmission and that
includes data indicative of a start time and an end time of an
advertisement break included in the on-demand asset;
creating, by the service provider subsystem in response to
the detecting of the trigger and during the transmission of the
media content instance by the media content provider subsystem
to the service provider subsystem, an index file that includes data
representative of the start time and the end time of the
advertisement break;
transmitting, by the service provider subsystem, the on-
demand asset to a media content access subsystem associated
with a user for presentation by the media content access
subsystem to the user;
using, by the service provider subsystem, the index file
created during the transmission of the media content instance by
the media content provider subsystem to the service provider
subsystem to identify the start time and the end time of the
advertisement break included in the on-demand asset;
detecting, by the service provider subsystem, a user input
associated with a trick play mode that results in playback of the
on-demand asset at a specific temporal position of the on-
demand asset, the trick play mode comprising one of a fast
forward operation and a rewind operation;
determining, by the service provider subsystem, that the
specific temporal position is between the start time and the end
time of the advertisement break included in the on-demand asset;
and
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providing, by the service provider subsystem, an
advertisement for presentation to the user by way of the media
content access subsystem in place of the on-demand asset during
a remaining time period of the advertisement break that begins at
the specific temporal position,
the providing of the advertisement compnsmg
dynamically varying a time period associated with the
advertisement break such that the advertisement begins at the
specific temporal position and ends at the end time of the
advertisement break in response to the user input associated with
the trick play mode.
App. Br. 37 (Claims App'x).
EXAMINER'S REJECTION
Claims 1, 2, 4---6, 8, 9, 13-18, 21, and 22 stand rejected under
35 U.S.C. § 101 because the claimed invention is directed to patent-
ineligible subject matter (abstract idea). Final Act. 2-5.
ANALYSIS
In Alice Corp. Pty. Ltd. v. CLS Bank International, 134 S. Ct. 2347
(2014), the Supreme Court reiterates an analytical two-step framework
previously set forth in Mayo Collaborative Services v. Prometheus
Laboratories, Inc., 566 U.S. 66, 79 (2012), "for distinguishing patents that
claim laws of nature, natural phenomena, and abstract ideas from those that
claim patent-eligible applications of those concepts." Alice, 134 S. Ct. at
2355. The first step in the analysis is to "determine whether the claims at
issue are directed to one of those patent-ineligible concepts," such as an
abstract idea. Id. If the claims are directed to eligible subject matter, the
inquiry ends. Thales Visionix Inc. v. United States, 850 F.3d 1343, 1349
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Application 12/916,504
(Fed. Cir. 2017); Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1339 (Fed.
Cir. 2016).
If the claims are directed to a patent-ineligible concept, the second
step in the analysis is to consider the elements of the claims "individually
and 'as an ordered combination'" to determine whether there are additional
elements that "'transform the nature of the claim' into a patent-eligible
application." Alice, 134 S. Ct. at 2355 (citing Mayo, 566 U.S. at 79, 78). In
other words, the second step is to "search for an 'inventive concept'-i.e., an
element or combination of elements that is 'sufficient to ensure that the
patent in practice amounts to significantly more than a patent upon the
[ineligible concept] itself."' Id. (citing Mayo, 566 U.S. at 72-73).
In rejecting claims 1, 2, 4---6, 8, 9, 13-18, 21, and 22 under 35 U.S.C.
§ 101, the Examiner determines (1) these claims are directed to the abstract
idea of "targeted advertising," i.e., presenting one or more advertisements
during an advertisement break included in an on-demand asset, which is "a
fundamental economic practice" similar to fundamental economic and
transactional practices identified in Alice, Bilski, buySAFE, and
Ultramercial; and (2) the steps recited in claim 1, including [i] "generating .
. . an on-demand asset by recording data representative of a media content"
(receiving data), [ii] "detecting ... a trigger" (receiving data), [iii] "creating
... an index file" (setting rules), [iv] "transmitting ... the on-demand asset"
(sending data), [ v] "using ... the index file ... to identify the start time and
the end time of the advertisement break included in the on-demand asset"
(using rules), [vi] "detecting ... a user input associated" (receiving data),
and [ vii] "providing ... an advertisement for presentation ... associated
with the advertisement break" (sending data) are analogous or similar to the
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concept of "'comparing new and stored information and using rules to
identify options'" identified as an abstract idea in SmartGene. Final Act. 3-
4 (citing Alice, 134 S. Ct. at 2347; Bilski v. Kappas, 561 U.S. 593 (2010);
buySAFE, Inc. v. Google, Inc., 765 F.3d 1350 (Fed. Cir. 2014);
Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709 (Fed. Cir. 2014) (holding that
the abstract idea of showing an advertisement before delivering free content
is patent-ineligible under§ 101); SmartGene, Inc. v. Advanced Biological
Labs., SA, 555 F. App'x 950 (Fed. Cir. 2014)); Ans. 3.
The Examiner also finds "[t]he claims do not include additional
elements that are sufficient to amount to significantly more than the judicial
exception" because the claims' additional elements are a generic computing
structure (e.g., a processor or wireless network) performing generic
computer functions that are well-understood, routine, and conventional
activities previously known to the industry. Final Act. 4; Ans. 6-7.
At the outset, Appellant argues the Examiner has not established a
prima facie case of patent ineligibility under 35 U.S.C. § 101 because (1) the
Examiner's characterization of the claim is overly broad, i.e., at an
unreasonably high level of abstract, citing Enfish and a memorandum from
Robert W. Bahr, Deputy Commissioner for Patent Examination Policy, to
Patent Examining Corps, Recent Subject Matter Eligibility Decisions (May
19, 2016), which warn against "describing the claims at such a high level of
abstraction and untethered from the language of the claims" and suggest
such an abstraction will "all but ensure[] that the exceptions to § 101
swallow the rule"; and (2) the Examiner "has not shown how the features
recited in claim 1 of the present invention are similar to the identified
abstract ideas of SmartGene ( a method for selecting a therapeutic regimen
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for a patient), Bilski (risk-hedging), Alice (intermediated settlement),
Ultramercial (advertising as currency), or buySAFE (transaction
performance guaranty)." App. Br. 12-16.
This argument is not persuasive because: (1) patent eligibility is a
question of law that is reviewable de nova (see Dealertrack, Inc. v. Huber,
674 F.3d 1315, 1333 (Fed. Cir. 2012)); and (2) the Examiner is required to
characterize the claims under Alice step 1 and then "to examine earlier cases
in which a similar or parallel descriptive nature can be seen-what prior
cases were about, and which way they were decided" in accordance with the
Federal Circuit's guidance in Amdocs (Israel) Ltd. v. Openet Telecom, Inc.,
841 F.3d 1288, 1294 (Fed. Cir. 2016) and USPTO Memorandum, July 2015
Update: Subject Matter Eligibility 3 (July 30, 2015),
https://www.uspto.gov/sites/default/files/documents/ieg-july-2015-
update.pdf (instructing Examiners that "a claimed concept is not identified
as an abstract idea unless it is similar to at least one concept that the courts
have identified as an abstract idea"). We are aware of no controlling
authority that requires the Office to provide factual evidence to support a
determination that a claim is directed to an abstract idea. 2 Instead, the
Federal Circuit has repeatedly noted that "the prima facie case is merely a
procedural device that enables an appropriate shift of the burden of
production." Hyatt v. Dudas, 492 F.3d 1365, 1369 (Fed. Cir. 2007) (citing
2 Berkheimer v. HP Inc., 881 F.3d 1360, 1366 (Fed. Cir. 2018) holds that the
question of whether certain claim limitations represent well-understood,
routine, conventional activity under Alice step 2 may raise a disputed factual
issue. That question, however, is not at issue in this case. As in Berkheimer,
in determining that the claims are directed to an abstract idea, the Examiner
compared the claims to claims held to be abstract in prior judicial
decisions. Compare Ans. 3 with Berkheimer, 881 F.3d at 1366-67.
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In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992)). The court has held
that the USPTO carries its procedural burden of establishing a prima facie
case when its rejection satisfies the requirements of 35 U.S.C. § 132 by
notifying the applicant of the reasons for rejection, "together with such
information and references as may be useful in judging of the propriety of
continuing the prosecution of [the] application." In re Jung, 637 F.3d 1356,
1362 (Fed. Cir. 2011). Thus, all that is required of the Office is that it set
forth the statutory basis of the rejection in a sufficiently articulate and
informative manner as to meet the notice requirement of 35 U.S.C. § 132.
Id., see also Chester v. Miller, 906 F.2d 1574, 1578 (Fed. Cir. 1990)
(Section 132 "is violated when [the] rejection is so uninformative that it
prevents the applicant from recognizing and seeking to counter the grounds
for rejection.").
Appellant does not contend that the Examiner's rejection under
35 U.S.C. § 101 cannot be understood or that the Examiner's rejection,
otherwise, fails to satisfy the notice requirements of 35 U.S.C. § 132.
Indeed, Appellant's understanding of the rejection is clearly manifested by
their response as set forth in the briefs.
Alice/Mayo--Step 1 (Abstract Idea)
Turning to the first step of the Alice inquiry, Appellant argues "Claim
1 is not directed to an abstract idea" for several reasons, including:
(1) "Claim 1 is not directed to an idea of itself," i.e., "an idea
standing alone such as an uninstantiated concept, plan or
scheme, as well as a mental process ( thinking) that 'can be
performed in the human mind, or by a human using a pen
and paper"' and the Federal Circuit's decision in
SmartGene is not applicable because SmartGene's claims
involve "mental steps of comparing new and stored
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information and using rules to identify medical options,"
whereas Appellant's "Claim 1 cannot be performed
'entirely in the human mind"' (App. Br. 18-20);
(2) "Claim 1 is not directed to a 'fundamental economic
practice"' because [i] "[t ]he phrase 'fundamental
economic practices' is used to describe concepts relating
to the economy and commerce, such as agreements
between people in the form of contracts, legal obligations,
and business relations" and [ii] the "alleged abstract idea
of 'target advertising' is not associated with a 'foundation
or basic' economic practice . . . is not associated with
concepts relating to agreements between people or
performance of financial transactions, such as the hedging
in Bilski, and is not associated with mitigating risks, such
as the hedging in Bilski and the mitigating of settlement
risk in Alice" (App. Br. 20-21) (emphasis added); and
(3) like DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d
1245 (Fed. Cir. 2014), Appellant's invention "solves
problems rooted in computer technology (e.g., distribution
of digital media content over networks) in order to provide
advertisements based on a user entering a trick play mode
(e.g., fast forwarding or rewinding media content), which
trick play mode only arises in, and requires the use of,
computer technology." (App. Br. 21-22; Reply Br. 12-
13).
Appellant's arguments are not persuasive. At the outset, we note
Appellant's characterization of the "fundamental economic practice"
doctrine under Alice is incorrect. The Supreme Court's decision in Alice is
not limited to those "business method" concepts that are "'foundation or
basic' economic practice" or are "associated with concepts relating to
agreements between people or performance of financial transactions" such
as "the risk hedging claims of Bilski and the intermediate settlement concept
at issue in Alice," as Appellant argues. App. Br. 20-21. Rather, the Federal
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Circuit has identified numerous examples of "business method" concepts as
"abstract ideas that are not fundamental, long prevalent, or concepts that
have been in use for an extensive period of time." See PTO' s examples
located at https://www.uspto.gove/sites/default/files/documents/ieg-duly-
2015-qrs.pdf).
Appellant's Specification is directed to "a media content delivery
subsystem" shown in Figure 1 and Figure 3, using a trigger (e.g., data or
signal descriptive of an upcoming advertisement break within a data stream)
to identify an advertisement break reserved for a service provider so that the
service provider may present one or more advertisements ( e.g., targeted
and/or local advertisements) during the advertisement break. Spec. ,r 19;
Abstract. Embodiments of Appellant's Specification, such as depicted in
Figures 6-10 describe "receiving data to detect insertion points in a video
stream and then selecting, modifying, sending, and inserting a targeted
advertisement," as recognized by the Examiner. Ans. 3. Thus, we agree
with the Examiner that the claims are directed to an abstract idea of
"targeted advertising" i.e., presenting one or more advertisements during an
advertisement break included in an on-demand asset, which is "a
'fundamental economic practice"' similar to fundamental economic and
transactional practices identified in Alice, Bilski, buySAFE, and
Ultramercial. Final Act. 3--4; Ans. 3. Such activities are squarely within the
realm of abstract ideas, as correctly recognized by the Examiner (Ans. 9).
Inserting a "targeted advertising" in a video stream during an advertisement
break in response to a user input is a fundamental business practice prevalent
in our system of commerce, like (1) the risk hedging in Bilski, (2) the
intermediated settlement in Alice (see Alice, 134 S. Ct. at 2356-57), (3)
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verifying credit card transactions in CyberSource (see CyberSource Corp. v.
Retail Decisions, Inc., 654 F.3d 1366, 1370 (Fed. Cir. 2011)), (4)
guaranteeing transactions in buySAFE, and ( 5) showing an advertisement
before delivering free content in Ultramercial. Inserting a "targeted
advertising" in a video stream during an advertisement break in response to
a user input is also a building block of a market economy. Thus, targeted
advertising, like risk hedging and intermediated settlement, is an "abstract
idea" beyond the scope of§ 101. See Alice, 134 S. Ct. at 2356.
As also recognized by the Examiner (Ans. 8), detecting insertion
points in a video stream and then inserting a targeted advertisement within
the insertion points can also be done mentally. See Gottschalk v. Benson,
409 U.S. 63, 67 (1972); see also CyberSource, 654 F.3d at 1372-73 ("[A]
method that can be performed by human thought alone is merely an abstract
idea and is not patent-eligible under§ 101."); see also In re Comiskey, 554
F.3d 967, 979 (Fed. Cir. 2009) ("[M]ental processes-or processes of human
thinking-standing alone are not patentable even if they have practical
application."); Benson, 409 U.S. at 67 ("Phenomena of nature ... , mental
processes, and abstract intellectual concepts are not patentable, as they are
the basic tools of scientific and technological work" ( emphasis added)).
These mental processes remain unpatentable even when performed by a
computer. CyberSource, 654 F.3d at 1375 ("That purely mental processes
can be unpatentable, even when performed by a computer, was precisely the
holding of the Supreme Court in Gottschalkv. Benson."). Because
Appellant has not shown that the recited functions of claim 1 could not be
performed without the use of a computer (See SiRF Tech., Inc. v. Int 'l Trade
Comm'n, 601 F.3d 1319, 1331 (Fed. Cir. 2010)), we agree with the
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Examiner that Appellant's claim 1 contain limitations that are analogous to
SmartGene's "mental steps of comparing new and stored information and
using rules to identify medical options." Ans. 8.
Lastly, Appellant's reliance on DDR is misplaced. DDR is not
instructive to the determination of whether a claim is directed to an abstract
idea under Alice step 1. This is because the Federal Circuit recognized that
DDR 's claims could be characterized broadly as an abstract idea in several
ways, including: (1) "'making two web pages look the same,"' (2)
"'syndicated commerce on the computer using the Internet,"' or (3)
"'making two e-commerce web pages look alike by using licensed
trademarks, logos, color schemes and layouts"' (DDR, 773 F.3d at 1257)
and, as such, opted to bypass Alice step 1 in favor of Alice step 2. In Alice
step 2, the Federal Circuit found DDR 's claims contain an "inventive
concept" because DDR 's claims (1) do not merely recite "the performance of
some business practice known from the pre-Internet world" previously
disclosed in Bilski and Alice, but instead (2) provide a technical solution to a
technical problem unique to the Internet, i.e., a "solution [] necessarily
rooted in computer technology in order to overcome a problem specifically
arising in the realm of computer networks." DDR, 773 F.3d at 1257.
In this case, nevertheless, neither the steps recited in Appellant's
claim 1 nor the rest of Appellant's Specification supply any description or
explanation as to how various steps of Appellant's claim 1, including
"receiving data to detect insertion points in a video stream and then
selecting, modifying, sending, and inserting a targeted advertisement" are
intended to provide a "solution ... necessarily rooted in computer
technology in order to overcome a problem specifically arising in the realm
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of computer networks," as explained by the Federal Circuit in DDR, 773
F.3d at 1257.
Accordingly, we agree with the Examiner that claim 1 is directed to
an abstract idea of "targeted advertising" during an advertisement break
included in an on-demand asset, which is "a fundamental economic practice"
similar to fundamental economic and transactional practices identified in
Alice, Bilski, buySAFE, and Ultramercial, as well as "mental steps" under
Benson. As our reviewing court has held, combining several abstract ideas
does not render the combination any less abstract. RecogniCorp, LLC v.
Nintendo Co., Ltd., 855 F.3d 1322, 1327 (Fed. Cir. 2017) ("Adding one
abstract idea ... to another abstract idea ... does not render the claim non-
abstract. "); see also FairWarning IP, LLC v. Iatric Systems, Inc., 839 F.3d
1089, 1093-94 (Fed. Cir. 2016) (Patent-ineligible claims were directed to a
combination of abstract ideas.).
Alice/Mayo--Step 2 (Inventive Concept)
In the second step of the Alice inquiry, Appellant argues "claim 1
recites additional elements that transform the claim into something
significantly more than the asserted abstract idea" (App. Br. 22; Reply Br.
13) because:
( 1) "Claim 1, considered as a whole, includes 'unconventional
steps that confine[ d] the claims to a particular useful
application,'" i.e., the step of "providing [] the
advertisement comprising dynamically varying a time
period associated with the advertisement break such that
the advertisement begins at the specific temporal position
and ends at the end time of the advertisement break in
response to the user input associated with the trick play
mode," recited in claim 1, goes beyond "'generally linking
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the use of [the abstract idea] to a particular technologic
environment'" (App. Br. 24--26; Reply Br. 14); and
(2) "claims 1, 2, 4--6, 8, 9, 13, and 14 are found to be
potentially allowable over the prior art of record" and the
feature of "providing [] the advertisement comprising
dynamically varying a time period associated with the
advertisement break such that the advertisement begins at
the specific temporal position and ends at the end time of
the advertisement break in response to the user input
associated with the trick play mode," recited in claim 1,
"are not well-understood, routine, or conventional
activities previously known to the industry" (App. Br. 25-
27; Reply Br. 14).
Appellant's arguments are not persuasive. Instead, we find the
Examiner has provided a comprehensive response to Appellant's arguments.
Ans. 10-12. As such, we adopt the Examiner's findings and explanations
provided therein. Id. For additional emphasis, we note that (1) "the concept
of inventiveness is distinct from that of novelty" and (2) "[t]he inventiveness
inquiry of§ 101 should therefore not be confused with the separate novelty
inquiry of§ 102 or the obviousness inquiry of§ 103." Amdocs, 841 F.3d at
1311. We may even assume that the techniques claimed are
"[g]roundbreaking, innovative, or even brilliant," but that is not enough for
eligibility. Ass 'n for Molecular Pathology v. Myriad Genetics, Inc., 569
U.S. 576, 591 (2013); accord buySAFE, 765 F.3d at 1352. Nor is it enough
for subject-matter eligibility that claimed techniques be novel and
nonobvious in light of prior art, passing muster under 35 U.S.C. §§ 102 and
103. See Mayo, 566 U.S. at 89-90; Synopsys, Inc. v. Mentor Graphics
Corp., 839 F.3d 1138, 1151 (Fed. Cir. 2016) ("[A] claim for a new abstract
idea is still an abstract idea. The search for a § 101 inventive concept is thus
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distinct from demonstrating§ 102 novelty."); Intellectual Ventures I LLC v.
Symantec Corp., 838 F.3d 1307, 1315 (Fed. Cir. 2016) (same for
obviousness). The claims here are ineligible because their innovation is an
innovation in ineligible subject matter. Their subject is nothing but inserting
"targeted advertising" during an advertisement break included in an on-
demand asset. An advance of that nature is ineligible for patenting.
According to the Supreme Court in Alice, the second step is to "search
for an 'inventive concept'-i.e., an element or combination of elements that
is 'sufficient to ensure that the patent in practice amounts to significantly
more than a patent upon the [ineligible concept] itself."' Alice, 134 S. Ct. at
2355 (quoting Mayo, 566 U.S. at 72-73). The Federal Circuit cases on point
include DDR and Amdocs, both of which involve business-centric
inventions.
In DDR and Amdocs, the Federal Circuit opted to bypass Alice step 1
in favor of step 2. In particular, the Federal Circuit found DDR 's claims
contain an "inventive concept" under Alice step 2 because DDR 's claims
( 1) do not merely recite "the performance of some business practice known
from the pre-Internet world" previously disclosed in Bilski and Alice, but
instead (2) provide a technical solution to a technical problem unique to the
Internet, i.e., a "solution ... necessarily rooted in computer technology in
order to overcome a problem specifically arising in the realm of computer
networks." DDR, 773 F.3d at 1257. Likewise, the Federal Circuit also
found Amdocs' claims contain a sufficient "inventive concept" because like
DDR, Amdocs' claims "entail[] an unconventional technological solution
(enhancing data in a distributed fashion) to a technological problem
(massive record flows which previously required massive databases)" and
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"improve the performance of the system itself." Amdocs, 841 F.3d at 1300,
1302.
Under current Federal Circuit precedent, an "inventive concept" under
Alice step 2 can be established by showing, for example, that the patent
claims:
(1) provide a technical solution to a technical problem
unique to the Internet, e.g., a "solution ... necessarily rooted in
computer technology in order to overcome a problem specifically
arising in the realm of computer networks" (see DDR, 773 F.3d
at 1257);
(2) transform the abstract idea into "a particular,
practical application of that abstract idea," e.g., "installation of a
filtering tool at a specific location, remote from the end-users,
with customizable filtering features specific to each end user"
(see Bascom, 827 F.3d at 1352, 1350); or
(3) "entail[] an unconventional technical solution
([e.g.,] enhancing data in a distributed fashion) to a technological
problem ([e.g.,] massive record flows [that] previously required
massive databases)" and "improve the performance of the system
itself' (see Amdocs, 841 F.3d at 1300, 1302).
In this case, however, we find no element or combination of elements
recited in Appellant's claim 1 that contains any "inventive concept" or adds
anything "significantly more" to transform the abstract concept into a patent-
eligible application. Alice, 134 S. Ct. at 2357. As discussed supra, we are
not persuaded the added computer elements such as a service provider
subsystem can transform the abstract idea into a patent eligible invention.
As our reviewing court has observed, "after Alice, there can remain no
doubt: recitation of generic computer limitations does not make an otherwise
ineligible claim patent-eligible." DDR, 773 F.3d at 1256 (citing Alice, 134
S. Ct. at 2358).
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Additional Argument
Appellant argues that "claim 1 does not preempt all practical
applications of the asserted abstract ideas" of "targeted advertising." App.
Br. 29-34; Reply Br. 18. However, this argument is not persuasive because,
although "preemption may signal patent ineligible subject matter, the
absence of complete preemption does not demonstrate patent eligibility."
Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir.
2015). "Where a patent's claims are deemed only to disclose patent
ineligible subject matter" under the Alice/Mayo framework, "preemption
concerns are fully addressed and made moot." Id.
Because Appellant's claim 1 is directed to a patent-ineligible abstract
concept and does not recite something "significantly more" under the second
prong of the Alice analysis, we sustain the Examiner's rejection of claim 1,
and similarly, claims 15 and 18 and dependent claims 2, 4---6, 8, 9, 13, 14,
16, 17, 21, and 22 for which no separate arguments are provided.
CONCLUSION
The Examiner did not err in rejecting claims 1, 2, 4--6, 8, 9, 13-18, 21,
and 22 under 35 U.S.C. § 101.
DECISION
We affirm the Examiner's decision to reject claims 1, 2, 4---6, 8, 9, 13-
18, 21, and 22.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
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AFFIRMED
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