Fisher, Michelle

Patent Trials and Appeals Board

Feb 28, 2020

14867328 - (D) (P.T.A.B. Feb. 28, 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.
14/867,328 09/28/2015 Michelle Fisher BLZMP0010C2 7424
12120 7590 02/28/2020
Michelle Fisher
2930 Domingo Ave
Suite 123
Berkeley, CA 94705
EXAMINER
CHAKRAVARTI, ARUNAVA
ART UNIT PAPER NUMBER
3693
NOTIFICATION DATE DELIVERY MODE
02/28/2020 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):
mfisher@blazemobile.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte MICHELLE FISHER
__________________
Appeal 2019-004734
Application 14/867,328
Technology Center 3600
_________________

Before JAMES B. ARPIN, MIRIAM L. QUINN, and ADAM J. PYONIN,
Administrative Patent Judges.

ARPIN, Administrative Patent Judge.
DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
final rejection of claims 1–30, all of the pending claims. Final Act. 2.2 We
have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

1 “Appellant” here refers to “applicant” as defined in 37 C.F.R. § 1.42.
Appellant identifies the real party-in-interest as Michelle Fisher. Appeal
Br. 3.
2 In this Decision, we refer to Appellant’s Supplemental Appeal Brief
(“Appeal Br.,” filed January 21, 2019) and Reply Brief (“Reply Br.,” filed
May 24, 2019); the Final Office Action (“Final Act.,” mailed September 27,
2018), the Advisory Action (“Adv. Act.,” mailed November 26, 2018), and
the Examiner’s Answer (“Ans.,” mailed March 28, 2019); and the originally-
filed Specification (“Spec.,” filed September 28, 2015). Rather than repeat
the Examiner’s findings and determinations and Appellant’s contentions in
their entirety, we refer to these documents.
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STATEMENT OF THE CASE
Appellant’s claimed methods, systems, and computer-readable media
“relate[] to data communications and wireless devices.” Spec. ¶ 2. As noted
above, claims 1–30 are pending. Claims 1, 10, and 19 are independent.
Appeal Br. 63 (claim 1), 64–65 (claim 10), 66 (claim 19) (Claims App.).
Claims 2–9 and 21–25 depend directly or indirectly from claim 1,
claims 11–18 and 26–30 depend directly or indirectly from claim 10, and
claim 20 depends directly from claim 19. Id. at 63–68.
Claim 10 recites “[a] remote management server for sending a digital
artifact, comprising: a remote management server transceiver . . . ; a remote
management server processor . . . ; and a3 remote management server
transceiver,” which perform functions, substantially as recited in claim 1.
Id. at 63, 64–65. Claim 19 recites “[a] non-transitory computer readable
medium for sending a digital artifact, comprising: computer code for”
performing functions, substantially as recited in claim 6. Id. at 64, 66. The
Examiner relies on the same findings and arguments in rejecting claims 2–9,
11–18, and 20–30 (Final Act. 2), and Appellant does not contest the
rejection of any claim separately from the independent claims (see Appeal
Br. 34).
Claim 1, with disputed limitations emphasized, is representative.
1. A method for sending a digital artifact, comprising:
receiving at a remote management server a request for the
digital artifact from a non-browser based mobile application,

3 Claim 10 recites “a remote management server transceiver” twice. Appeal
Br. 64–65 (Claims App.) (emphasis added). It is not clear whether these are
the same or different components. When prosecution resumes, Appellant
should clarify the language of this claim.
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wherein the request is automatically triggered when a user
browses a specific non-browser based mobile application
generated screen, the non-browser based mobile application is
not browser based with a graphical user interface and is
preinstalled or downloaded and installed on a mobile device, the
mobile device comprising a mobile device display, a mobile
device processor, a mobile device radio interface, and a mobile
device wireless fidelity (Wi-Fi) interface, the specific non-
browser based mobile application generated screen corresponds
to a specific screen, scene, or area of the non-browser based
mobile application;
selecting, by the remote management server, the digital
artifact based on one or more targeting parameters stored at the
remote management server, and
sending, by the remote management server, the digital
artifact from the remote management server to the non-browser
based mobile application for a display within the specific non-
browser based mobile application generated screen.
Id. at 63 (emphases added).
REFERENCES AND REJECTIONS
The Examiner relies upon the following references in rejecting the
pending claims:
Name4 Number Publ’d/Issued Filed
Pond US 2004/0030601 A1 Feb. 12, 2004 Aug. 6, 2003
Barnes US 8,423,408 B1 Apr. 16, 2013 Apr. 17, 2006
The Examiner rejects claims 1–30 under 35 U.S.C. § 101 as directed
to patent-ineligible subject matter. Final Act. 2–6, 14–20. The Examiner
rejects claims 1, 2, 4, 6–11, 13, and 15–30 under 35 U.S.C. § 103 as obvious
over the teachings of Barnes (id. at 6–12) and claims 3, 5, 12, and 14 under

4 All reference citations are to the first named inventor only.
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35 U.S.C. § 103 as obvious over the combined teachings of Barnes and Pond
(id. at 13).
We review the appealed rejections for error based upon the issues
identified by Appellant, and in light of the arguments and evidence produced
thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential).
Arguments not made are waived. See 37 C.F.R. § 41.37(c)(1)(iv). Unless
otherwise indicated, we adopt the Examiner’s findings in the Final Action
and the Answer as our own and add any additional findings of fact for
emphasis. For the reasons given below, we affirm the rejection of the
pending claims.
ANALYSIS
I. Patent Ineligible Claims
A. 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. Pty. Ltd. 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.
Alice, 573 U.S. 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
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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.”). According to the Court, 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)).
In Diamond v. 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.” Diamond v. Diehr, 450 U.S. 175, 187 (1981).
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. at 191 (citing Benson and Flook). Nevertheless, the Court noted that “[i]t
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.” Id. at 187; see also BASCOM Glob. Internet Servs., Inc. v.
AT&T Mobility LLC, 827 F.3d 1341, 1352 (Fed. Cir. 2016) (Even if the
individual components were known, “an inventive concept can be found in
the ordered combination of claim limitations that transform the abstract idea
of filtering content into a particular, practical application of that abstract
idea” (emphasis added).).
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If the claim is “directed to” an abstract idea, we next “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.
B. Office Patent Eligibility Guidance
In an effort to achieve clarity and consistency in how the Office
applies the Court’s two-part framework, the Office published revised
guidance on the application of § 101. 2019 Revised Patent Subject Matter
Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019).5 In Step One of our
analysis, we look to see whether the claims, as written, fall within one of the
four statutory categories identified in § 101. Id. at 53 (“Examiners should
determine whether a claim satisfies the criteria for subject matter eligibility
by evaluating the claim in accordance with the criteria discussed in

5 “All USPTO personnel are, as a matter of internal agency management,
expected to follow the guidance.” 2019 Revised Patent Subject Matter
Eligibility Guidance, 84 Fed. Reg. at 51; see also October 2019 Update:
Subject Matter Eligibility, 1 (Oct. 17, 2019) (“Note, the feedback received
was primarily directed to examination procedures and, accordingly, this
update focuses on clarifying practice for patent examiners. However, all
USPTO personnel are expected to follow the guidance.”).
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MPEP6 § 2106, i.e., whether the claim is to a statutory category (Step 1) and
the Alice/Mayo test for judicial exceptions (Steps 2A and 2B)”).
Under the guidance, we then look to whether the claim recites:
(1) Step 2A – Prong One: 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); and
(2) Step 2A – Prong Two: additional elements that integrate the
judicial exception into a practical application (see MPEP
§§ 2106.05(a)–(c), (e)–(h)).
See 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg.
at 54–55 (“Revised Step 2A”).
Only if a claim (1) recites a judicial exception and (2) does not
integrate that exception into a practical application, do we then look to
whether the claim:
(3) adds a specific limitation beyond the judicial exception that
is not “well-understood, routine, conventional” in the field (see
MPEP § 2106.05(d)); or
(4) simply appends well-understood, routine, conventional
activities previously known to the industry, specified at a high
level of generality, to the judicial exception.
See id. at 56 (“Step 2B: If the Claim Is Directed to a Judicial Exception,
Evaluate Whether the Claim Provides an Inventive Concept.”).
C. Step One – Claims Directed to Statutory Categories
Appellant’s independent claim 1 and its associated dependent claims
are directed to methods (i.e., a “process”), Appellant’s independent claim 10

6 All Manual of Patent Examining Procedure (“MPEP”) citations herein are
to MPEP, Rev. 08.2017, January 2018.
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and its associated dependent claims are directed to servers (i.e., a
“machine”), and Appellant’s independent claim 19 and its associated
dependent claims are directed to “non-transitory,” computer-readable media
(i.e., a “manufacture”). Appeal Br. 63–68 (Claims App.); see In re Nuijten,
500 F.3d 1346, 1356–57 (Fed. Cir. 2007) (transitory embodiments are not
directed to statutory subject matter). Thus, the pending claims are directed
to recognized statutory categories.
D. Two-Part Alice/Mayo Analysis
1. Independent Claims 1, 10, and 19
a. Step 2A, Prong One – Claims Recite Abstract Idea
Applying the first part of the Alice/Mayo analysis (Step 2A), the
Examiner determines the independent claims are “directed to fundamental
economic practices and methods of organizing human activities, and are
therefore abstract.” Final Act. 3 (emphases added); Ans. 17.7 For the
reasons given below, we agree.
Claim 1 recites a method employing a mobile device, which
“compris[es] a mobile device display, a mobile device processor, a mobile
device radio interface, and a mobile device wireless fidelity (Wi-Fi)
interface” and upon which a non-browser-based mobile application “with a
graphical user interface” is installed; and a server. Appeal Br. 63; see Spec.

7 The Board previously determined with respect to claims comprising similar
limitations in this application’s parent application that “[s]ending targeted
advertisements to certain mobile device users based on their characteristics
is a method of organizing human activity and/or fundamental economic
practice. As such it is an abstract idea.” Ex parte Michelle Fisher and
Rathin Guha, Appeal No. 2015-004370, 7 (March 6, 2017); see Ans. 31.
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¶ 18, Fig. 1. Claim 1 broadly recites the limitations of (1) receiving a
request from the application for a digital artifact,8 the request automatically
triggered when a user browses a specific screen, scene, or area of the
application (“receiving . . . a request for the digital artifact from a non-
browser based mobile application, wherein the request is automatically
triggered when a user browses a specific non-browser based mobile
application generated screen, the non-browser based mobile application is
not browser based with a graphical user interface and is preinstalled or
downloaded and installed on a mobile device . . . , the specific non-browser
based mobile application generated screen corresponds to a specific screen,
scene, or area of the non-browser based mobile application”); (2) selecting
the artifact based on stored targeting parameters9 (“selecting . . . the digital
artifact based on one or more targeting parameters stored at the remote
management server”); and (3) sending the artifact for display on a specific,
application screen, scene, or area (“sending . . . the digital artifact from the

8 The Specification discloses, “[digital] artifact[s] can comprise one or more
of an advertisement, receipt, ticket, coupon, media, or content.” Spec. ¶ 5
(emphasis added); see Appeal Br. 63 (Claims App.) (Claim 2 depends from
claim 1 and recites, “the digital artifact is an advertisement, receipt, ticket,
coupon, media, or content.”).
9 The Specification discloses, “one or more target parameters are associated
with each artifact - for example, an artifact can have target parameters that
correspond to a pageid, zipcode, area, age, gender, occupation, affiliation,
and so on.” Spec. ¶ 26; see Appeal Br. 64 (Claims App.) (Claim 7 depends
from claim 1 and recites, “targeting parameters comprises personal
information and/or purchase transaction related information.” Claim 8
depends from claim 7 and recites, “personal information comprises location,
gender, age, interest, affiliation, userid, pageid, zip code, area code, and
occupation.”).
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remote management server to the non-browser based mobile application for
a display within the specific non-browser based mobile application
generated screen.”). Appeal Br. 63 (Claims App.); see Final Act. 14–15.
Independent claims 10 and 19 recite substantially similar limitations.
Appeal Br. 64–65, 66 (Claims App.).
Referring to Figure 3, the Specification explains:
The correlation engine 300 can correlate user profile information
(e.g., location, gender, age, interest, affiliations, etc.) stored in
the user profile database 302 with other data (historical payment
transactions, real-time payment transactions, etc.) stored in the
artifacts database 304, and/or location of a user to provide more
relevant targeting parameters for which to target, identify and
distribute relevant artifacts to a user.
Spec. ¶ 21; see id. ¶ 23. Thus, we are persuaded that claim 1 recites methods
of customizing delivery of artifacts, e.g., advertisements or other content, to
a user on a mobile device based on targeting parameters. See Affinity Labs
of Tex., LLC v. Amazon.com Inc., 838 F.3d 1266, 1272 (Fed. Cir. 2016)
(“[The patent] claims the general concept of streaming user-selected content
to a portable device. The addition of basic user customization features to the
interface does not alter the abstract nature of the claims and does not add an
inventive component that renders the claims patentable.”); Elec. Power Grp.,
LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016) (“[C]ollecting
information, analyzing it, and displaying certain results of the collection and
analysis” is not patent eligible); see also Cellspin Soft, Inc. v. Fitbit, Inc.,
927 F.3d 1306, 1319 (Fed. Cir. 2019) (citing Electric Power Grp. with
approval).
Appellant contends that the Examiner’s identification of the abstract
idea “is overly broad and ignores the limitations of the claims.” Appeal
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Br. 35–36 (emphasis omitted). Nevertheless, the analysis of claim 1 focuses
on the language of claim 1 apart from the recited, generic hardware and
software employed in the claimed methods. See Adv. Act. 3. Moreover, the
claim limitations are considered individually and as an ordered combination,
in light of the Specification’s disclosure, to identify the recited, abstract idea.
See Final Act. 14–15. Appellant specifically contends that, like the claims at
issue in Enfish, LLC v. Microsoft Corporation, 822 F.3d 1327 (Fed. Cir.
2016), the claims here are not directed to an abstract idea. In Enfish, the
U.S. district court failed to consider the claims recitation of how the
information was organized using tabular format, as explained in detail in the
specification. 822 F.3d at 1337–38. Unlike Enfish, claim 1 does not recite
in any detail how the artifact request is triggered or how the targeting
parameters are used to select the artifact sent for display. See Ans. 21–23.
Thus, we are persuaded that the Examiner has not characterized the claims
improperly at a high level of abstraction.
Appellant further contends that the decisions cited by the Examiner in
support of the identification of the abstract idea are not analogous to the
pending claims. Reply Br. 36–41. Initially, we note that abstract ideas
falling within the judicial exceptions to patent eligibility are not limited to
those previously identified in Federal Circuit decisions. See 2019 Revised
Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. at 52. Thus, we
view the Examiner’s citation to such earlier decisions as exemplary of
similar types of patent-ineligible subject matter. See Final Act. 3; Adv.
Act. 3; Ans. 17, 23–24. We find these decisions identify sufficiently similar
abstract ideas to support the Examiner’s identification of the abstract idea
recited in the pending claims.
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Appellant also contends that the pending claims do not recite certain
methods of organizing human activities, such as fundamental economic
practices and principles. Appeal Br. 42–43. Because, as noted above,
artifacts may be “an advertisement, receipt, ticket, coupon, media, or
content” (see, e.g., Spec. ¶ 5) targeted to an application user in response to
receipt of a request triggered by the user’s browsing of the application, we
are persuaded that the pending claims recite certain methods of organizing
human activity. See Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715
(Fed. Cir. 2014) (holding that claim “describ[ing] only the abstract idea of
showing an advertisement before delivering free content” is patent
ineligible).
In addition, Applicant contends that
a digital artifact cannot be requested from a mobile device nor
sent to a mobile device without the use of a machine. The
automatic nature of the process performed by the programmed
computer, and the fact that the Claims do not deal with human
decision making or activities negates the alleged “organizing
human activity” assertion.
Appeal Br. 42. However, as the Office has explained,
the sub-groupings [within certain methods of organizing human
activity] encompass both activity of a single person (for example,
a person following a set of instructions or a person signing a
contract online) and activity that involves multiple people (such
as a commercial interaction), and thus, certain activity between
a person and a computer (for example a method of anonymous
loan shopping that a person conducts using a mobile phone) may
fall within the “certain methods of organizing human activity”
grouping. The number of people involved in the activity is not
dispositive as to whether a claim limitation falls within this
grouping. Instead, the determination should be based on whether
the activity itself falls within one of the subgroupings.
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October 2019 Update: Subject Matter Eligibility at 5 (emphasis added).
Thus, the use of a computer does not prevent a claim from reciting certain
methods of organizing human activities.
Claim 1’s limitations, under their broadest reasonable interpretation,
recite providing customized or targeted commercial content (e.g.,
advertisements), such that a mobile device user can see the commercial
content, which are fundamental economic practices and “commercial . . .
interactions (including . . . sales activities or behaviors . . .); [and] manag[e]
personal behavior or relationships or interactions between people[, e.g.,
message providers and mobile device users,] (including . . . following rules
or instructions).” Spec. ¶¶ 21–23; 2019 Revised Patent Subject Matter
Eligibility Guidance, 84 Fed. Reg. at 52. Such practices and interactions fall
within the broader category of “[c]ertain methods of organizing human
activity.” 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed.
Reg. at 52. Thus, we determine that the rejected claims recite an abstract
idea, namely “[c]ertain methods of organizing human activity.” Id.; Final
Act. 3; Ans. 17.
b. Step 2A, Prong Two – Abstract Ideas Not Integrated Into
Practical Application
The Examiner finds that the independent claims do not integrate the
recited abstract idea into a practical application. Ans. 18–19; see Final Act.
4; Adv. Act. 3. In particular, the Examiner finds, and we agree that:
The claims describe neither a problem nor a solution. The
Specification does not identify any business problems that the
invention aims to solve. Nor does the Specification point out
what technical problem in the realm of digital communication
that the invention intends to solve, and why the claimed
invention qualifies as a technical solution to a technical problem.
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The claims do not purport to improve the functioning of a
computer or effect an improvement in any other technology or
technical field. Instead, the claims do not amount to any[thing]
significantly more than an instruction to apply the abstract ideas
of sending digital artifacts to mobile application screens.10 The
claims are directed to marketing and communication and not
solving technical problems. The focus of the claims is not on any
improvement in computers as tools, but on abstract ideas that use
mobile devices as tools. Stating an abstract idea while adding
the words ‘apply it between a remote server and a mobile device’
is not enough for patent eligibility.
Ans. 18; see Final Act. 4; Adv. Act. 3.
Appellant contends that the claims integrate the identified abstract
idea into a practical application for at least three reasons. Reply Br. 23–30.
For the reasons given below, we disagree with Appellant’s contention.
First, Appellant contends that the claims are limited to a “non-browser
based application [that] is a mobile operating system platform non-browser
based application with a graphical user interface that is preinstalled or
downloaded and installed on the mobile communications device, wherein
the graphical user interface includes a graphical icon.” Reply Br. 23. Thus,
Appellant contends that the claims implement or use the identified abstract
idea “in conjunction with, a particular machine or manufacture that is
integral to the claim.” Id. (citing MPEP § 2106.05(b)).

10 We acknowledge that some of the considerations at Step 2A, Prong Two,
properly may be evaluated under the second part of Alice/Mayo analysis
(Step 2B of the Office’s guidance). For purposes of maintaining consistent
treatment within the Office, we evaluate those considerations under first part
of the Alice/Mayo analysis (Step 2A of the Office’s guidance). See 2019
Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. at 55
nn.25, 27–32.
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Initially, we note that the pending claims do not recite, “the graphical
user interface includes a graphical icon.” Appeal Br. 63–68. In the
Rule 131 Affidavit (“131 Aff.”), filed October 19, 2018, Appellant alleges
that the “non-browser based application” recitation is supported in Patent
Application Publication No. US 2008/0052192 A1, which is a publication of
U.S. Patent Application No. 11/933,351. 131 Aff. 8 (citing in Patent
Application Publication No. US 2008/0052192 A1, ¶ 35); see Spec. ¶ 3; see
also MPEP § 608.01(p)(I)(A) (discussing 37 C.F.R. § 1.57(d)).
Nevertheless, the Specification describes the recited methods as applying to
applications broadly and does not differentiate between browser and non-
browser applications in the functioning of the disclosed methods. See Spec.
¶ 28 (“In operation, a user opens an application ([e.g.], a web-browser) on a
computing device (a mobile communication device). The application
queries the management Server for an artifact, providing pageId (scene
identifier) and userId, where the pageId can represent a specific screen,
scene or real-estate property. The query can be initiated/triggered via
following mechanisms, but not limited to: Browsing a particular screen/web-
page that specify unique real-estate; leveraging proximity services
(NFC/Contactless, etc.) that specify unique code or identifier; geographic
location (LBS, Bluetooth, etc.).”); see also id. ¶¶ 4–6 (discussing
“applications” generally). Moreover, Appellant fails to show where the
Specification discloses expressly the use of a “graphical user interface” or a
“graphical icon.” Consequently, we are not persuaded that the cited claim
language demonstrates that the claimed method implements or uses the
recited abstract idea in conjunction with, a particular machine or
manufacture that is integral to the claim.
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Second, Appellant contends that the independent claims recite an
improvement in the functioning of the computer or another technology or
technical field that integrates the identified abstract idea into a practical
application. Reply Br. 24–29. In particular, Appellant contends the claims
recite providing “relevant digital artifacts,” which solves a business problem
thereby improving the computer and the field of sending artifacts (id. at 25
(emphasis added)), and the delivery of the artifacts to a non-browser
application “result[s] in faster processing, less [central processing unit
(CPU)] utilization, less memory utilization, improved reliability, and
security unlike the prior art which teach use of SMS and/or a web browser
which is slow, unreliable, and costly” (id. at 27). Nevertheless, although the
Specification recites that “relevant” digital artifacts may be identified and
distributed, the claims do not recite that only “relevant” digital artifacts are
requested, selected, or sent for display. See Appeal Br. 63–68 (Claims
App.); Spec. ¶¶ 19, 21, 23, 24; cf. Barnes, 6:24–27 (“The analytic engine
124 is the ‘brain’ of the Advertisement Fulfillment System 102. The
analytic engine 124 contains the data and intelligence to enable planning and
execution of campaigns that meet the requirements needed to target highly
relevant advertisements to subscribers.”). Moreover, the claims do not recite
how the method achieves faster processing, less CPU utilization and
memory utilization, improved reliability, and security; and we do not find an
explanation of how these advantages are achieved in the Specification.11 See

11
It is well settled . . . that automating conventional activities using
generic technology does not amount to an inventive concept. See
Alice, 134 S.Ct. at 2358 (explaining that “if a patent’s recitation
of a computer amounts to a mere instruction to implement an
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Final Act. 16 (“Regarding reliability, security and flexibility, Examiner first
notes that none of these features have been recited in the claims and hence
Applicant’s arguments are inapplicable to the current set of claims.”);
Ans. 27 (“[W]ith regard to assertions of reliability, flexibility, performance,
user experience, etc., Examiner notes that none of the above terms have been
recited in the appealed claims and therefore they have no relevance to the
present appeal. In the case of reliability, Appellant merely repeats previous
arguments of online mode and retransmitting tickets - which, as pointed out
above, are inherent properties of digital communication.”); see also Am. Axle
& Mfg., Inc. v. Neapco Holdings LLC, 939 F.3d 1355, 1363 (Fed. Cir. 2019)
(“We have repeatedly held that features that are not claimed are irrelevant as
to step 1 or step 2 of the Mayo/Alice analysis.”). Thus, we are not persuaded
by Appellant’s contentions.
Third, Appellant contends that the claim limitations apply or use the
identified abstract idea “in some other meaningful way beyond generally
linking the use of the judicial exception to a particular technological

abstract idea on ... a computer, that addition cannot impart patent
eligibility”) (internal alteration, citation, and quotations
omitted); Intellectual Ventures [I LLC v. Capital One Bank
(USA)], 792 F.3d [1363,] 1367 [(Fed. Cir. 2015)] (“claiming the
improved speed or efficiency inherent with applying the abstract
idea on a computer [does not] provide a sufficient inventive
concept”); Bancorp Servs., L.L.C. v. Sun Life Assur. Co. of Can.
(U.S.), 687 F.3d 1266, 1278 (Fed. Cir. 2012) (“[T]he fact that the
required calculations could be performed more efficiently via a
computer does not materially alter the patent eligibility of the
claimed subject matter.”).
LendingTree, LLC v. Zillow, Inc., 656 F. App’x 991, 996 (Fed. Cir. 2016)
(emphases added).

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environment, such that the claim as a whole is more than a drafting effort
designed to monopolize the exception.” Reply Br. 29 (emphasis omitted).
Nevertheless, Appellant acknowledges that the “[c]laims are limited to a
specific technical environment.” Appeal Br. 37. Although Appellant
contends that the claims recite “an unconventional ordered combination
unlike the prior art,” the contention conflates the novelty and obviousness
analyses with the eligibility analysis. The claims merely recite generic
hardware and software components performing their known functions in a
logical order, namely, receiving a request for an artifact, selecting the
artifact according to predetermined parameters in response to that request,
and sending the selected artifact for display. See Ans. 22 (“The claimed
features of receiving digital content, selecting digital content and sending
digital content from a server to a client device are focused on using
computers and networks expressly what they were designed for.”).
Consequently, taken individually or as an ordered combination, the claim
limitations recite an abstract idea, and the computer technology recited in the
claims is generic and merely serves to tie the abstract idea to a technological
environment.
Finally, Appellant contends that, in view of the Office’s hypothetical
Example 37 (claim 2); we should find that the claimed methods, servers, and
computer-readable media recite the integration of the identified abstract idea
into a practical application. Appeal Br. 55; Reply Br. 33. Initially, we note,
“[t]he Board decides cases in accordance with the law, not in accordance
with hypothetical ‘examples [] intended to be illustrative only.’” Ex parte
Blythe, Appeal No. 2017-003176, 2018 WL 3047568, at *8 (PTAB May 31,
2018) (nonprecedential); see also 2019 Revised Patent Subject Matter
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Eligibility Guidance, 84 Fed. Reg. at 52, n. 11 (“[T]he finding that the
subject matter claimed in a prior patent was ‘abstract’ as claimed may not
determine whether similar subject matter in another application, claimed
somewhat differently or supported by a different disclosure, is directed to an
abstract idea and therefore patent ineligible.”) (emphasis omitted).
Example 37, like the other examples provided by the Office, is merely a
“hypothetical [that is] only intended to be illustrative of the claim analysis
under the 2019 [Patent Eligibility Guidance].” Subject Matter Eligibility
Examples: Abstract Ideas, 1 (Jan. 7, 2019). Nevertheless, we note that
claim 2 of Example 37 recites how the determination of the amount of use of
each icon is made. Subject Matter Eligibility Examples: Abstract Ideas at 3.
The pending independent claims do not recite how the targeted parameters
are applied to select the sent artifact. See, e.g., Appeal Br. 63 (Claims App.).
Therefore, we do not find Appellant’s contentions based on this example
persuasive.
In view of Appellant’s claim recitations and Specification and
consistent with the Examiner’s determinations, we are persuaded the
rejected claims do not recite:
(i) an improvement to the functioning of a computer;
(ii) an improvement to another technology or technical field;
(iii) an application of the abstract idea with, or by use of, a
particular machine;
(iv) a transformation or reduction of a particular article to a
different state or thing; or
(v) other meaningful limitations beyond generally linking the
use of the abstract idea to a particular technological
environment.
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See MPEP §§ 2106.05(a)–(c), (e)–(h). Thus, we conclude that the rejected
independent claims do not integrate the recited abstract idea into a practical
application and that the claims are directed to an abstract idea.
c. Step 2B – Not Significantly More Than the Abstract Idea
Because we find that the claims are directed to an abstract idea and do
not integrate that abstract idea into a practical application, we now consider
whether the claims include additional limitations, such that the claims
amount to significantly more than the abstract idea. Applying the second
part of the Alice/Mayo analysis, the Examiner finds that, with respect to the
independent claims, the steps of receiving a request for an artifact, selecting
the artifact according to predetermined parameters in response to that
request, and sending the selected artifact for display have been recognized as
well-understood, routine, and conventional computer functions. Ans. 19
(citing MPEP § 2106.05(d)).
Moreover, the Examiner finds the Specification’s Figures disclose that
the hardware and software components of the claimed methods, servers, and
computer-readable media also are well-understood, routine, and
conventional. Ans. 19–20. In particular, the Examiner finds that Figures 1,
3, and 9 disclose generic servers; Figure 1 discloses generic point-of-sale
devices; Figure 2 discloses generic mobile communication devices (see, e.g.,
Spec. ¶ 5 (“The mobile communication device can be a cellular phone or a
wireless personal digital assistant (PDA).”)); Figure 9 discloses generic
computing devices (see, e.g., Spec. ¶ 28 (“In operation, a user opens an
application ([e.g.], a web-browser) on a computing device (a mobile
communication device).”)); and Figures 5 and 6 disclose flowcharts
describing the conventional steps of updating user targeting parameters and
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sending artifacts to users based on target parameters. Ans. 19–20; see Final
Act. 5. Further, the Examiner explains that the Specification describes the
hardware and software components at the highest level of generality.
Ans. 20. The Examiner concludes, and we agree, that these descriptions
satisfy the requirements set forth in Berkheimer v. HP Inc., 881 F.3d 1360
(Fed. Cir. 2018), to show that the components are well-understood, routine,
and conventional. Id. at 21; see Reply Br. 33–34.
Appellant contends that, when considered as an ordered combination,
the recited steps disclose significantly more than the identified abstract idea.
Reply Br. 31–32 (citing BASCOM, 827 F.3d at 1352). Nevertheless,
Appellant fails to explain adequately what about the combination of these
steps renders them more than the identified abstract idea. Id. Thus, we are
not persuaded that the order of the recited steps renders them significantly
more than the identified abstract idea. Adv. Act. 3; see Final Act. 5.
Claims 1, 10, and 19 recite generic computer components performing
generic computer and software functions, which, considered individually or
as an ordered combination, are well-understood, routine, and conventional;
and these claims do not recite “significantly more” than the identified
abstract idea. Final Act. 4–6; Ans. 19–21. On this record, we agree with the
Examiner that independent claims 1, 10, and 19 are directed to an abstract
idea and fail to recite significantly more than the identified abstract idea.
Thus, we are not persuaded that the Examiner erred in determining that these
claims are patent ineligible, and we sustain that rejection.
2. Dependent Claims 2–9, 11–18, and 20–30
The Examiner determines that dependent claims 2–9, 11–18, and 20–
30 also are directed to an abstract idea and fail to recite significantly more
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than the identified abstract idea. See Final Act. 2. Appellant does not
challenge the patent ineligibility rejection of any dependent claim separately
from its base claim. Appeal Br. 34. Therefore, on this record and for the
reasons given above, we also sustain the patent ineligibility rejection of the
dependent claims.
II. Obviousness Over Barnes, Alone or in Combination with
Pond
A. Independent Claims 1, 10, and 19
As noted above, the Examiner rejects independent claims 1, 10, and
19 as obvious over the teachings of Barnes. Final Act. 6–8. With respect to
claim 1, the Examiner determines that Barnes teaches or suggests all of the
limitations, as recited in claim 1. Id. at 7. In addition, the Examiner finds,
“[i]t would have been obvious to send an advertisement graphic when a user
opens a gaming application on his/her mobile device.” Id. at 8; see Barnes,
1:31–36, 12:5–11. The Examiner further finds, “[c]laims 10, 19 are
substantially similar to claim 1 and hence rejected on similar grounds.” Id.
For the reasons given below, we disagree.
In particular, the Examiner finds that Barnes teaches
receiving at a remote management server a request for the
digital artifact from a non-browser based mobile application,
wherein the request is automatically triggered when a user
browses a specific non-browser based mobile application
generated screen, the non-browser based mobile application is
not browser based with a graphical user interface and is a
preinstalled or downloaded and installed on the mobile device,
the mobile device comprising a mobile device display, a mobile
device processor, a mobile device radio interface, and a mobile
device wireless fidelity (Wi-Fi) interface, the specific non-
browser based mobile application generated screen corresponds
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to a specific screen, scene, or area of the non-browser based
mobile application,
as recited in claim 1. Id. at 7 (citing Barnes, Figs. 2–5, 11:50–60, 13:30–40,
13:45–55, 13:60–65, 14:15–30). Barnes’s Figure 3 is reproduced below.

Figure 3 “is a logic flow diagram of a method for adding dynamic
advertising content according to various embodiments of [Barnes’s]
disclosure.” Barnes, 2:32–34. Referring to Figure 3, Barnes’s
Advertisement Management System (AMS) resides on a mobile device and
“from time to time initiates a call to the Advertisement Fulfillment System
[(AFS)] 102.” Id. at 12:49–53 (step 300). Barnes explains, “[i]n response to
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the call, the Advertisement Fulfillment System 102 (and more specifically,
the delivery agent/advertisement server 126) will identify one or more
advertisements to send to the mobile device 104 to store in the
Advertisements Store 202 based on identifying information and currently
executing campaigns (block 304).” Id. at 13:1–6. Thus, referring to step
310 of Figure 3, selected advertisements are sent by the Advertisement
Fulfillment System for storage on the mobile device in the Advertisements
Store. Id. at 13:32–40.
Barnes’s Figure 4 is reproduced below.

Figure 4 “is a logic flow diagram of a method for rotating and placement of
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advertising content according to various embodiments of the present
disclosure.” Id. at 2:35–37. With respect to Figure 4, Barnes explains:
As shown in FIG. 3, at certain times the Advertisement
Management System 204 provides a “getAd( )” Application
Programming Interface (“API”) call for one of the [multimedia
player and downloaded JAVA 2 Micro Edition “J2ME”
applications (J2ME apps)] 206, the [JAVA Virtual Machine
(JVM)] 208, or the Browser 210 on the device to use in order to
obtain an advertisement from the Advertisements Store 202
(block 400). Each application determines when to have the
getAd API call provided based on the logic embedded in the
JAVA code for the particular application.
Id. at 13:47–55 (emphasis added). Thus, the Examiner finds that Barnes’s
Advertisement Fulfillment System teaches the recited “remote management
server,” and Barnes’s Advertisement Management System working with the
J2ME apps or JVM teaches the recited “non-browser based mobile
application.” See Final Act. 7; Adv. Act. 1; Ans. 9.
Further, Barnes discloses, “in an application for a race car game, an
advertisement may be displayed in a road sign graphic in the game or at the
bottom of a game where white space is available next to the score, the timer,
etc.” Barnes, 12:11–14. Thus, the Examiner finds Barnes teaches or
suggests “the request is automatically triggered when a user browses a
specific non-browser based mobile application generated screen, the non-
browser based mobile application is not browser based with a graphical user
interface and is a preinstalled or downloaded and installed on a mobile
device,” as recited in claim 1. Ans. 13–14; Appeal Br. 63 (Claims App.)
(emphasis added).
Appellant contends
because [Barnes’s] requires different steps and many more steps
including the AMS call transmitting the device identifier to the
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server, selecting advertisements at the server based on the device
identifier, downloading advertisements to the mobile store on the
mobile device, the AMS providing the GetAD API to the
game/J2ME/JVM/Browser, and then the
game/J2ME/JVM/Browser selecting an advertisement from the
mobile store on the mobile device, it is not only a different
invention, but it is more time consuming and requires more
CPU processing and memory.
In contrast, Applicant's invention automatically sends the
request for the digital artifact when the user browses the
screen, selects the digital artifact, and then downloads the digital
artifact as reflected by independent claims which recite in part,
“receiving at a remote management server a request for the
digital artifact from a non-browser based mobile application,
wherein the request is automatically triggered when a user
browses a specific non-browser based mobile application
generated screen[.]”
Reply Br. 5. Further, Appellant contends:
To avoid latency problems in column 14, line 10-16 relied upon
by the Examiner that he J2ME/JVM/Browser which is a second
and different applications requests an advertisement from the
mobile store on the mobile device not the Advertisement
Fulfillment System (Examiner alleges is “remote management
server”) using a 3rd application- the get AD( ) call API to
requests the advertisement and AFTER the Advertisement
Fulfillment System (Examiner alleges is “remote management
server”) sends advertisements to the mobile device.
Appeal Br. 10; see Reply Br. 7. Thus, like the method recited in claim 1,
Barnes discloses that a non-browser application may send a request for
advertisements using a getAd( ) API provided by the Advertisement
Management System. See Barnes, 13:47–53. However, unlike the method
recited in claim 1, the advertisements are not “[sent], by the remote
management server, . . . from the remote management server to the non-
browser based mobile application,” instead the advertisements are sent to the
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Advertisements Store. See id. at 13:20–23, 13:32–40, Figs. 2
(Advertisements Store 202), 4 (steps 400, 402, 404); Appeal Br. 63 (Claims
App.).
Barnes explains:
With each successive getAd( ) request, the Advertisement
Management System 204 provides the next advertisement in
succession (in a round robin fashion, randomly or according to
other sequencing approaches known to those of skill in the art)
when multiple advertisements are present in the Advertisements
Store 202. In this fashion, the multiple advertisements are
rotated over time.
In various embodiments, if only one advertisement is
present in the Advertisements Store 202, it is the default
advertisement and is returned for each getAd( ) request until
additional advertisements are stored in the Advertisements Store
202.
Barnes, 14:38–49. Thus, Appellant contends Barnes discloses delivering
advertisements to the Advertisements Store and delivering advertisements to
the non-browser application from the Advertisements Store. Appeal Br. 10;
Reply Br. 5, 7. This is different from what is recited in claim 1.
The Examiner appears to recognize this difference. See Ans. 12.
Nevertheless, the Examiner states:
The reason for the remote server in Barnes is to serve ads
to each individual user based on location, browsing etc. If
Barnes only relied on serving ads from the mobile device then
there would not be any need for the Ad Fulfillment Server and
getAd() request call. But an advertiser cannot reside on each and
every user’s mobile device. Any advertisement will necessarily
have to be delivered from an external server such as the Ad
Fulfillment System of Barnes. The rotating ads merely fill up
time until a new ad is delivered from the Ad Fulfillment Server
in response to the getAd() request.
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Id. at 13. This misunderstands the operation of Barnes’s systems, as depicted
in Figure 2, which is reproduced below.

Figure 2 “is a more detailed block diagram of the mobile device of the
system of FIG. 1A according to various embodiments of the [Barnes’s]
disclosure.” Barnes, 2:29–31. Figure 2 depicts that the Advertisement
Management System sends a request for advertisements from a non-browser
application to the Advertisement Fulfillment Server, and the Advertisement
Fulfillment Server returns advertisements to the Advertisements Store via
the Advertisement Management System. Id. at 14:16–42. Barnes then
discloses that advertisements may be sent to a non-browser application, such
as a game, from the Advertisements Store. Id. Thus, we are not persuaded
that the Examiner has shown that Barnes teaches or suggests all of the
limitations of claim 1, as well as those of claims 10 and 19.
Consequently, we are persuaded that the Examiner erred in rejecting
claims 1, 10, and 19 as rendered obvious over the teachings of Barnes; and
we do not sustain the rejection of those claims.
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B. Dependent Claims 2–9, 11–19, and 20–30
The Examiner determines that dependent claims 2–9, 11–19, and 20–
30 are rendered obvious over the teachings of Barnes, alone or in
combination with the teachings of Pond. See Final Act. 6–13. Appellant
does not challenge the obviousness rejections of any dependent claim
separately from its base claim. Id. Therefore, on this record and for the
reasons given above, we also do not sustain the obviousness rejections of the
dependent claims.
DECISIONS
1. The Examiner did not err in rejecting claims 1–30 under 35 U.S.C.
§ 101, as directed to patent-ineligible subject matter.
2. The Examiner erred in rejecting:
a. claims 1, 2, 4, 6–11, 13, and 15–30 under 35 U.S.C. § 103 as
obvious over the teachings of Barnes and
b. claims 3, 5, 12, and 14 under 35 U.S.C. § 103, as obvious over the
combined teachings of Barnes and Pond.
3. Thus, on this record, claims 1–30 are not patentable.
CONCLUSION
Because we affirm at least one rejection of each claim, we affirm the
rejection of claims 1–30.

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In summary:
Claims
Rejected
35 U.S.C. § Basis/Reference(s) Affirmed Reversed
1–30 101 Eligibility 1–30
1, 2, 4, 6–
11, 13, 15–
30
103 Barnes 1, 2, 4, 6–11,
13, 15–30
3, 5, 12, 14 103 Barnes, Pond 3, 5, 12, 14
Overall
Outcome
1–30
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