FORD GLOBAL TECHNOLOGIES, LLC

Patent Trials and Appeals Board

Aug 19, 2020

2019004865 (P.T.A.B. Aug. 19, 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.
14/849,768 09/10/2015 Oliver LEI 83552573 9004
28395 7590 08/19/2020
BROOKS KUSHMAN P.C./FGTL
1000 TOWN CENTER
22ND FLOOR
SOUTHFIELD, MI 48075-1238
EXAMINER
REINHARDT, RICHARD G
ART UNIT PAPER NUMBER
3682
NOTIFICATION DATE DELIVERY MODE
08/19/2020 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):
docketing@brookskushman.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte OLIVER LEI, DAVID ALLEN KOWALSKI, DEHUA CUI,
CYNTHIA M. NEUBECKER, ALLEN R. MURRAY, PERRY ROBINSON
MacNEILLE, NOORULLA MOHAMMED, and BRIAN BENNIE
____________

Appeal 2019-004865
Application 14/849,768
Technology Center 3600
____________

Before JOHN A. JEFFERY, BETH Z. SHAW, and NORMAN H.
BEAMER, Administrative Patent Judges.

JEFFERY, Administrative Patent Judge.

DECISION ON APPEAL
Under 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s
decision to reject claims 1–9. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies the real party in interest as Ford Global
Technologies, LLC. Appeal Br. 1.
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STATEMENT OF THE CASE
Appellant’s invention broadcasts messages to vehicles while certain
detected vehicular conditions exist, where the messages are tailored based on
a particular aspect of the vehicle’s state, thus enabling selling or advertising
goods or services to vehicle occupants under certain conditions. See Spec.
¶¶ 2–3, 32–40. Claim 1 is illustrative:
1. A system comprising:

a processor configured to:

receive an indication of a vehicle-detected trigger state
indicating that a message, having a predefined association with
the trigger state, should be broadcast over dedicated short-range
communication (DSRC) from a broadcasting vehicle;

tailor the message, to include variable, predefined text
based on at least one trigger state aspect, for broadcast; and

broadcast the selected message while the trigger state
persists.

THE REJECTIONS
The Examiner rejected claims 1–9 under 35 U.S.C. § 101 as
ineligible. Final Act. 2–5.2

2 Throughout this Opinion, we refer to (1) the Final Office Action mailed
September 24, 2018 (“Final Act.”); (2) the Appeal Brief filed December 14,
2018 (“Appeal Br.”); (3) the Examiner’s Answer mailed April 5, 2019
(“Ans.”); and (4) the Reply Brief filed June 5, 2019 (“Reply Br.”).
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The Examiner rejected claims 1, 2, and 73 under 35 U.S.C. § 102(a)(1)
as anticipated by Lamont (US 2014/0344062 Al; published Nov. 20, 2014).
Final Act. 7.
The Examiner rejected claim 3 under 35 U.S.C. § 103 as unpatentable
over Lamont and Amla (US 2014/0316900 Al; published Oct. 23, 2014).
Final Act. 8.
The Examiner rejected claim 4 under 35 U.S.C. § 103 as unpatentable
over Lamont and Huang (US 2007/0050248 Al; published Mar. 1, 2007).
Final Act. 9.
The Examiner rejected claim 5 under 35 U.S.C. § 103 as unpatentable
over Lamont and Tuukkanen (US 2017/0352273 Al; published Dec. 7,
2017). Final Act. 9–10.
The Examiner rejected claims 6 and 9 under 35 U.S.C. § 103 as
unpatentable over Lamont and Parkes (US 2015/0283939 Al; published Oct.
8, 2015). Final Act. 10–11.
The Examiner rejected claim 8 under 35 U.S.C. § 103 as unpatentable
over Lamont and Frashure (US 2014/0146152 Al; published May 29, 2014).
Final Act. 11.

THE INELIGIBILITY REJECTION
The Examiner determines that the claimed invention is directed to an
abstract idea, namely selecting and broadcasting a message based on a

3 Although the Examiner rejects claims 1, 2, 4, 5, 7, and 8 as anticipated by
Lamont on page 7 of the Final Office Action, the Examiner nonetheless
revises the anticipation rejection’s claim listing to claims 1, 2, and 7 on page
3 of the Answer. Accordingly, we present the Examiner’s corrected claim
listing here and elsewhere in this Opinion.
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received trigger. See Final Act. 2; Ans. 4–7. According to the Examiner,
the recited additional elements, including the recited (1) processor; (2)
dedicated short-range communication (DSRC); (3) broadcasting vehicle; and
(4) vehicle-detected indication perform generic computer functions that do
not add significantly more to the abstract idea. Final Act. 3–4; Ans. 4–7.
Appellant argues that the claims are eligible because, among other
things, they improve vehicle communication by constraining communication
to trigger-relevant messages for the trigger’s duration. Appeal Br. 4–11;
Reply Br. 2–3. According to Appellant, the claimed invention’s “atypical
approach” avoids otherwise missed opportunities for selling or advertising to
certain vehicle occupants, namely by (1) tailoring a message responsive to a
state trigger, and (2) broadcasting that message while the trigger state
persists. Appeal Br. 10; Reply Br. 2.

ISSUE
Under § 101, has the Examiner erred in rejecting claims 1–9 as
directed to ineligible subject matter? This issue turns on whether the claims
are directed to an abstract idea and, if so, whether the recited elements—
considered individually and as an ordered combination—transform the
nature of the claims into a patent-eligible application of that abstract idea.

PRINCIPLES OF LAW
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 Supreme Court has long interpreted 35 U.S.C. § 101 to include
implicit exceptions: “[l]aws of nature, natural phenomena, and abstract
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ideas” are not patentable. See, e.g., Alice Corp. v. CLS Bank Int’l, 573 U.S.
208, 216 (2014).
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court’s two-step framework, described in Mayo
and Alice. Id. at 217–18 (citing Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 566 U.S. 66, 75–77 (2012)). In accordance with that framework,
we first determine what concept the claim is “directed to.” See Alice, 573
U.S. at 219 (“On their face, the claims before us are drawn to the concept of
intermediated settlement, i.e., the use of a third party to mitigate settlement
risk.”); see also Bilski v. Kappos, 561 U.S. 593, 611 (2010) (“Claims 1 and 4
in petitioners’ application explain the basic concept of hedging, or protecting
against risk.”).
Concepts determined to be abstract ideas, and thus patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219–20; Bilski, 561 U.S. at 611);
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594–95 (1978)); and
mental processes (Gottschalk v. Benson, 409 U.S. 63, 67 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as “molding rubber products” (Diamond v. Diehr, 450 U.S. 175, 191
(1981)); “tanning, dyeing, making water-proof cloth, vulcanizing India
rubber, smelting ores” (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S.
(15 How.) 252, 267–68 (1854))); and manufacturing flour (Benson, 409 U.S.
at 69 (citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
In Diehr, the claim at issue recited a mathematical formula, but the
Supreme Court held that “[a] claim drawn to subject matter otherwise
statutory does not become nonstatutory simply because it uses a
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mathematical formula.” Diehr, 450 U.S. at 176; see also id. at 191 (“We
view respondents’ claims as nothing more than a process for molding rubber
products and not as an attempt to patent a mathematical formula.”). That
said, the Supreme 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. (citing Benson and Flook); see, e.g., id. at 187 (“It is now
commonplace that an application of a law of nature or mathematical formula
to a known structure or process may well be deserving of patent
protection.”).
If the claim is “directed to” an abstract idea, we turn to the second
step of the Alice and Mayo framework, where “we must examine the
elements of the claim to determine whether it contains an ‘inventive
concept’ sufficient to ‘transform’ the claimed abstract idea into a patent-
eligible application.” Alice, 573 U.S. at 221 (quotation marks omitted). “A
claim that recites an abstract idea must include ‘additional features’ to
ensure ‘that the [claim] is more than a drafting effort designed to
monopolize the [abstract idea].’” Id. (alterations in original) (quoting Mayo,
566 U.S. at 77). “[M]erely requir[ing] generic computer implementation[]
fail[s] to transform that abstract idea into a patent-eligible invention.” Id.
In January 2019, the United States Patent and Trademark Office
(“USPTO”) published revised guidance on the application of § 101. See
USPTO’s 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed.
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Reg. 50 (Jan. 7, 2019) (“Guidance”).4 Under that guidance, we first look to
whether the claim recites:
(1) any judicial exceptions, including certain groupings of
abstract ideas (i.e., mathematical concepts, certain methods of
organizing human activity such as a fundamental economic
practice, or mental processes); and
(2) additional elements that integrate the judicial exception into
a practical application (see MANUAL OF PATENT EXAMINING
PROCEDURE (“MPEP”) §§ 2106.05(a)–(c), (e)–(h) (9th ed. Rev.
10.2019, June 2020)).
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, and conventional in the field
(see MPEP § 2106.05(d)); or
(4) simply appends well-understood, routine, and conventional
activities previously known to the industry, specified at a high
level of generality, to the judicial exception.
See Guidance, 84 Fed. Reg. at 56.

ANALYSIS
Claims 1–9: Alice/Mayo Step One
Representative independent claim 1 recites:

4 See also October 2019 Update: Subject Matter Eligibility,
https://www.uspto.gov/sites/default/files/documents/peg_oct_2019_update.p
df.
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A system comprising:

a processor configured to:

receive an indication of a vehicle-detected trigger state
indicating that a message, having a predefined association with
the trigger state, should be broadcast over dedicated short-range
communication (DSRC) from a broadcasting vehicle;

tailor the message, to include variable, predefined text
based on at least one trigger state aspect, for broadcast; and

broadcast the selected message while the trigger state
persists.
As the Specification explains, the environment associated with driving
a vehicle can create previously-unfelt needs as conditions change, such as
traffic conditions, and, therefore, present opportunities to satisfy those needs
by selling or advertising goods and services to those vehicle occupants. See
Spec. ¶¶ 2–3, 32. For example, a person trapped in traffic around lunchtime
is an opportunity to sell food to that person. Spec. ¶ 2. Similarly, a person
involved in an accident is an opportunity to sell collision repair services,
insurance, or legal services to that person. Id.
Advertising goods or services under these conditions, however,
requires (1) observing the condition, and (2) delivering materials, such as
business cards, flyers, food, etc., to the vehicle—both of which can be
impractical, and even dangerous, depending on the condition. See id. The
disclosed invention overcomes these drawbacks by broadcasting messages
from a vehicle using DSRC while certain detected vehicular conditions exist,
where the messages are tailored based on a particular aspect of the vehicle’s
state. See Spec. ¶¶ 33–40.
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Turning to claim 1, we first note that the claim recites a system and,
therefore, falls within the machine category of § 101. But despite falling
within this statutory category, we must still determine whether the claim is
directed to a judicial exception, namely an abstract idea. See Alice, 573 U.S.
at 217. To this end, we must determine whether the claim (1) recites a
judicial exception, and (2) fails to integrate the exception into a practical
application. See Guidance, 84 Fed. Reg. at 52–55. If both elements are
satisfied, the claim is directed to a judicial exception under the first step of
the Alice/Mayo test. See id.
The Examiner determines that claim 1 is directed to an abstract idea,
namely selecting and broadcasting a message based on a received trigger.
See Final Act. 2; Ans. 4–7. To determine whether a claim recites an abstract
idea, we (1) identify the claim’s specific limitations that recite an abstract
idea, and (2) determine whether the identified limitations fall within certain
subject matter groupings, namely, (a) mathematical concepts5; (b) certain
methods of organizing human activity6; or (c) mental processes.7

5 Mathematical concepts include mathematical relationships, mathematical
formulas or equations, and mathematical calculations. See Guidance, 84
Fed. Reg. at 52.
6 Certain methods of organizing human activity include fundamental
economic principles or practices (including hedging, insurance, mitigating
risk); commercial or legal interactions (including agreements in the form of
contracts; legal obligations; advertising, marketing or sales activities or
behaviors; business relations); managing personal behavior or relationships
or interactions between people (including social activities, teaching, and
following rules or instructions). See Guidance, 84 Fed. Reg. at 52.
7 Mental processes are concepts performed in the human mind including an
observation, evaluation, judgment, or opinion. See Guidance, 84 Fed. Reg.
at 52.
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Here, apart from the recited (1) processor; (2) vehicle-detected trigger
state; and (3) broadcasting over DSRC, all of claim 1’s recited limitations fit
squarely within at least one of the above categories of the USPTO’s
guidelines. When read as a whole, the recited limitations are directed to
broadcasting messages tailored to a recipient’s condition or environment
while that condition or environment exists.
That is, apart from the recited (1) processor; (2) vehicle-detected
trigger state; and (3) broadcasting over DSRC, the claimed limitations recite
certain methods of organizing human activity including fundamental
economic practices and marketing and sales activities. See Guidance, 84
Fed. Reg. at 52.
First, the limitation calling for “receiv[ing] an indication of a . . .
trigger state indicating that a message, having a predefined association with
the trigger state, should be broadcast . . . from a broadcasting vehicle” can be
done by merely observing the recipient’s “trigger state”—a state that merely
reflects a certain condition or environment associated with an intended
recipient that supports “triggering” communication with that recipient. Cf.
CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1372 (Fed. Cir.
2011) (noting that a person could construct a map of credit card numbers by
merely writing down a list of credit card transactions made from a particular
IP address). The recited indication can also be received from another
person, such as a colleague, by communicating with that person either orally
or in writing. Cf. Interval Licensing LLC v. AOL, Inc., 896 F.3d 1335, 1344
(Fed. Cir. 2018) (noting that a nontechnical human activity of passing a note
to a person who is in a meeting or conversation as illustrating the invention’s
focus, namely providing information to a person without interfering with the
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person’s primary activity). In short, the recited receiving function fits
squarely in the certain methods of organizing human activity category of the
USPTO’s guidelines and, therefore, recites an abstract idea. See Guidance,
84 Fed. Reg. at 52 (listing exemplary mental processes including
observation, evaluation, and judgment); see also id. (listing exemplary
methods of organizing human activity, including advertising, marketing or
sales activities or behaviors, personal interactions, and following rules or
instructions).
In addition, the recited message tailoring and “broadcast[ing] the
selected message while the trigger state persists” fall in the certain methods
of organizing human activity category of the USPTO’s Guidelines because
these limitations recite fundamental economic practices, including marketing
and sales activities, by customizing and targeting advertisements to certain
customers based on certain conditions associated with those customers. See
Guidance, 84 Fed. Reg. at 52. Cf. Intellectual Ventures I LLC v. Capital
One Bank (USA), 792 F.3d 1363, 1369 (Fed. Cir. 2015) (noting that tailoring
content based on certain criteria, such as a viewer’s location or address, is a
fundamental practice prevalent in our system); see also id. at 1370
(“Tailoring information based on the time of day of viewing is also an
abstract, overly broad concept long-practiced in our society.”); EasyWeb
Innovations, LLC v. Twitter, Inc., 689 F. App’x 969, 969–71 (Fed. Cir.
2017) (unpublished) (holding claims reciting message publishing system that
(1) converted part of a received message to a different format, and (2)
published the converted portion only if the sender was identified as
authorized, were directed to the abstract idea of receiving, authenticating,
and publishing data); Affinity Labs of Tex., LLC v. DIRECTV, LLC, 838 F.3d
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1253, 1255–65 (Fed. Cir. 2016) (holding ineligible claim reciting broadcast
system including selecting a regional broadcasting channel from a cellular
telephone located outside the channel’s broadcast region as directed to the
abstract idea of providing out-of-region access to regional broadcast
content).
Therefore, apart from the recited (1) processor; (2) vehicle-detected
trigger state; and (3) broadcasting over DSRC, the recited limitations fall
squarely within the certain methods of organizing human activity category
of the USPTO’s guidelines and, therefore, recite an abstract idea. See
Guidance, 84 Fed. Reg. at 52.
Notably, the three elements enumerated above are the only recited
elements beyond the abstract idea, but these additional elements, considered
individually and in combination, do not integrate the abstract idea into a
practical application when reading claim 1 as a whole.
First, we are not persuaded that the claimed invention improves a
computer or its components’ functionality or efficiency, or otherwise
changes the way those devices function, at least in the sense contemplated
by the Federal Circuit in Enfish LLC v. Microsoft Corporation, 822 F.3d
1327 (Fed. Cir. 2016) despite Appellant’s contentions to the contrary
(Appeal Br. 7). The claimed self-referential table in Enfish was a specific
type of data structure designed to improve the way a computer stores and
retrieves data in memory. Enfish, 822 F.3d at 1339. To the extent Appellant
contends that the claimed invention uses such a data structure to improve a
computer’s functionality or efficiency, or otherwise change the way that
device functions, there is no persuasive evidence on this record to
substantiate such a contention.
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To the extent that Appellant contends that the claimed invention is
rooted in technology because it is ostensibly directed to a technical solution
(see Appeal Br. 4–11; Reply Br. 2–3), we disagree. Even assuming, without
deciding, that the claimed invention can broadcast tailored messages to
recipients’ vehicles faster or more efficiently than doing so manually, any
speed or efficiency increase comes from the capabilities of the generic
computer components—not the recited process itself. See FairWarning IP,
LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1095 (Fed. Cir. 2016) (citing
Bancorp Serv., LLC v. Sun Life Assurance Co., 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.”)); see also Intellectual Ventures I LLC v. Erie
Indemnity Co., 711 F. App’x 1012, 1017 (Fed. Cir. 2017) (“Though the
claims purport to accelerate the process of finding errant files and to reduce
error, we have held that speed and accuracy increases stemming from the
ordinary capabilities of a general-purpose computer do not materially alter
the patent eligibility of the claimed subject matter.”). Like the claims in
FairWarning, the focus of claim 1 is not on an improvement in computer
processors as tools, but on certain independently abstract ideas that use
generic computing components as tools. See FairWarning, 839 F.3d at
1095.
We also find unavailing Appellant’s reliance on Visual Memory LLC
v. NVIDIA Corp., 867 F.3d 1253 (Fed. Cir. 2017) (Appeal Br. 7). There, the
court held eligible claims directed to a computer memory system with a
main memory connected to a bus with a cache connected thereto, where the
system’s programmable operational characteristics determined the type of
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data stored by the cache. Visual Memory, 867 F.3d at 1257–62. Notably,
the court emphasized the recited improvement in computer capabilities in
that case, namely by using programmable operational characteristics that
were configurable based on the processor’s type. Id. at 1259–60.
That is not the case here. To the extent that Appellant contends that
the claimed invention is directed to such improvements in computer
capabilities (see Appeal Br. 7), there is no persuasive evidence on this record
to substantiate such a contention.
Appellant’s reliance on Finjan, Inc. v. Blue Coat Systems, Inc., 879
F.3d 1299 (Fed. Cir. 2018) (Appeal Br. 7) is likewise unavailing. There, the
court held eligible claims directed to a behavior-based virus scanning
system. In reaching this conclusion, the court noted that the claimed
invention employed a new kind of file that enabled a computer security
system to do that which could not be done previously, including
accumulating and using newly-available, behavior-based information about
potential threats. Finjan, 879 F.3d at 1305.
That is not the case here. To the extent that Appellant contends that
the claimed invention is directed to such improvements in computer
capabilities (see Appeal Br. 7), there is no persuasive evidence on this record
to substantiate such a contention.
We reach the same conclusion regarding Appellant’s reliance on Core
Wireless Licensing S.A.R.L. v. LG Electronics, Inc., 880 F.3d 1356 (Fed. Cir.
2018) (Appeal Br. 7). There, the court held eligible claims reciting a
computing device that could display an application summary window that
was not only reachable directly from the main menu, but could also display a
limited list of selectable functions while the application was in an un-
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launched state. Core Wireless, 880 F.3d at 1360–63. Upon selecting a
function, the device would then launch the application and initiate the
selected function. Id. at 1360. In reaching its eligibility conclusion, the
court noted that the claimed invention was directed to an improved user
interface for computing devices that used a particular manner of
summarizing and presenting a limited set of information to the user, unlike
conventional user interface methods that displayed a generic index on a
computer. Id. at 1362–63.
That is not the case here. To the extent that Appellant contends that
the claimed invention is directed to such improvements in computer
capabilities (see Appeal Br. 7), there is no persuasive evidence on this record
to substantiate such a contention.
Appellant’s reliance on BASCOM Global Internet Services, Inc. v.
AT&T Mobility LLC, 827 F.3d 1341 (Fed. Cir. 2016) (Appeal Br. 4, 8–9) is
likewise unavailing. There, the court held eligible claims directed to a
technology-based solution to filter Internet content that overcame existing
problems with other Internet filtering systems by making a known filtering
solution—namely a “one-size-fits-all” filter at an Internet Service Provider
(ISP)—more dynamic and efficient via individualized filtering at the ISP.
BASCOM, 827 F.3d at 1351. Notably, this customizable filtering solution
improved the computer system’s performance and, therefore, was patent-
eligible. See id. But unlike the filtering system improvements in BASCOM
that added significantly more to the abstract idea in that case, the claimed
invention here uses generic computing components to implement an abstract
idea as noted previously.
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Appellant’s reliance on Data Engine Technologies LLC v. Google
LLC, 906 F.3d 999 (Fed. Cir. 2018) (Appeal Br. 7) is likewise unavailing.
There, the court held eligible claims directed to a specific interface and
implementation for navigating complex three-dimensional spreadsheets
using techniques unique to computers. See Data Engine, 906 F.3d at 1005–
11.
That is not the case here. To the extent that Appellant contends that
the claimed invention is directed to such improvements in computer
capabilities (see Appeal Br. 7), there is no persuasive evidence on this record
to substantiate such a contention.
Appellant’s reliance on Ancora Technologies, Inc. v. HTC America,
Inc., 908 F.3d 1343 (Fed. Cir. 2018) (Appeal Br. 7) is likewise unavailing.
There, the court held eligible a method of restricting software operation
within a license for use with a computer including an erasable, non-volatile
memory area of the computer’s BIOS and a volatile memory area, where an
agent was used to set up a verification structure in the erasable, non-volatile
memory of the BIOS, and the program was verified using a verification
structure from the non-volatile memory of the BIOS. See Ancora, 908 F.3d
at 1345–50. In reaching its eligibility conclusion, the court emphasized that
the claimed invention identified the particular way in which the
improvement was realized, namely by storing a structure containing a
license record in a particular, modifiable, non-volatile portion of the
computer’s BIOS, where the structure in that memory location was used for
verification by interacting with the distinct computer memory containing the
program to be verified. See id. at 1348–49. The court added that the recited
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functionality addressed a technological problem with computers, namely
license-authorization software’s vulnerability to hacking. Id.
That is not the case here. To the extent that Appellant contends that
the claimed invention is directed to such improvements in computer
capabilities (see Appeal Br. 7), there is no persuasive evidence on this record
to substantiate such a contention.
On this record, then, the claimed invention does not recite additional
elements that (1) improve a computer itself; (2) improve another technology
or technical field; (3) implement the abstract idea in conjunction with a
particular machine or manufacture that is integral to the claim; (4) transform
or reduce a particular article to a different state or thing; or (5) apply or use
the abstract idea in some other meaningful way beyond generally linking the
abstract idea’s use to a particular technological environment, such that the
claim as a whole is more than a drafting effort designed to monopolize the
exception. See Guidance, 84 Fed. Reg. at 55 (citing MPEP §§ 2106.05(a)–
(c), (e)). In short, the claim’s additional elements do not integrate the
abstract idea into a practical application when reading claim 1 as a whole.
In conclusion, although the recited functions may be beneficial by
broadcasting messages tailored to a recipient’s condition or environment
while that condition or environment exists, a claim for a useful or beneficial
abstract idea is still an abstract idea. See Ariosa Diagnostics, Inc. v.
Sequenom, Inc., 788 F.3d 1371, 1379–80 (Fed. Cir. 2015).
We, therefore, agree with the Examiner that claim 1 is directed to an
abstract idea.

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Claims 1–9: Alice/Mayo Step Two
Turning to Alice/Mayo step two, claim 1’s additional recited elements,
namely the recited (1) processor; (2) vehicle-detected trigger state; and (3)
broadcasting over DSRC—considered individually and as an ordered
combination—do not provide an inventive concept that amounts to
significantly more than the abstract idea when reading claim 1 as a whole.
See Alice, 573 U.S. at 221; see also Guidance, 84 Fed. Reg. at 56. As noted
above, the claimed invention merely uses generic computing components to
implement the recited abstract idea.
To the extent Appellant contends that the recited limitations, including
those detailed above in connection with Alice step one, add significantly
more than the abstract idea to provide an inventive concept under
Alice/Mayo step two (see Appeal Br. 4–11; Reply Br. 2–3), these limitations
are not additional elements beyond the abstract idea, but rather are directed
to the abstract idea as noted previously. See BSG, 899 F.3d at 1290
(explaining that the Supreme Court in Alice “only assessed whether the
claim limitations other than the invention’s use of the ineligible concept to
which it was directed were well-understood, routine and conventional”)
(emphasis added); see also Guidance, 84 Fed. Reg. at 56 (instructing that
additional recited elements should be evaluated in Alice/Mayo step two to
determine whether they (1) add specific limitations that are not well-
understood, routine, and conventional in the field, or (2) simply append
well-understood, routine, and conventional activities previously known to
the industry (citing MPEP § 2106.05(d)).
Rather, the claimed (1) processor; (2) vehicle-detected trigger state;
and (3) broadcasting over DSRC are additional recited elements whose
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generic computing functionality is well-understood, routine, and
conventional. See Mortgage Grader, 811 F.3d at 1324–25 (noting that
components such an “interface,” “network,” and “database” are generic
computer components that do not satisfy the inventive concept requirement);
accord Spec. ¶¶ 17–31, 43, 51, 55, 58; Ans. 4–7 (determining that the
recited generic computer components are additional elements that do not add
significantly more than the abstract idea).
In reaching this conclusion, we emphasize that the above-noted
additional elements (i.e., those elements beyond the abstract idea) are not
considered in isolation as Appellant apparently contends (see Appeal Br. 5,
7–8), but rather considered in light of the other recited elements, namely
those reciting the abstract idea, when reading the claim as a whole. That is,
the additional elements are considered in light of the other recited limitations
to determine whether the additional elements add significantly more to the
abstract idea such that they transform the nature of the claims into a patent-
eligible application of that abstract idea. See Alice, 573 U.S. at 221; see also
Guidance, 84 Fed. Reg. at 56.
Lastly, we find unavailing Appellants’ preemption-based contentions.
See Appeal Br. 7. Where, as here, the claims cover a patent-ineligible
concept, preemption concerns “are fully addressed and made moot” by an
analysis under the Alice framework. See Ariosa Diagnostics, Inc. v.
Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015).
In conclusion, the additional recited elements—considered
individually and as an ordered combination—do not add significantly more
than the abstract idea to provide an inventive concept under Alice/Mayo step
two. See Alice, 573 U.S. at 221; see also Guidance, 84 Fed. Reg. at 56.
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Therefore, we are not persuaded that the Examiner erred in rejecting
claim 1 and claims 2–9 not argued separately with particularity.

THE ANTICIPATION REJECTION
Regarding independent claim 1, the Examiner finds that Lamont
discloses a processor that receives an indication of a vehicle-detected trigger
state indicating that a message should be broadcast over DSRC. Final
Act. 7. According to the Examiner, Lamont’s paragraphs 29, 33, 34, 39–42,
51, 63, 65–68, 71, and 72 disclose tailoring the message to include variable,
pre-defined text based on at least one trigger state aspect. Final Act. 7; Ans.
8–9.
Appellant argues that not only does the Examiner fail to distinguish or
explain what, in Lamont, constitutes the recited trigger, tailoring, and
variable, predefined text, Lamont also does not broadcast a tailored message,
let alone over DSRC as claimed. Appeal Br. 12–13; Reply Br. 3–4.

ISSUE
Under § 102, has the Examiner erred in rejecting claim 1 by finding
that Lamont (1) tailors a message to include variable, pre-defined text based
on at least one trigger state aspect, and (2) broadcasts the selected message
while a vehicle-detected trigger state persists?

ANALYSIS
We begin by noting that independent claim 1 recites, somewhat
inartfully, (1) tailoring a message to include variable, pre-defined text, and
(2) broadcasting the selected message while the trigger state persists.
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Despite this emphasized inconsistency in terminology, and lack of
antecedent basis for the selected message, we nonetheless presume that the
“selected” message that is broadcast in the last clause is the “tailored”
message in the preceding clause.
In addition, although the indication received in claim 1’s second
clause indicates that a message should be broadcast over DSRC from a
broadcasting vehicle, the last clause does not require these particular
broadcasting parameters, namely that the broadcast is (1) over DSRC, and
(2) from a vehicle. Rather, the last clause merely recites, quite broadly, that
the selected message is broadcast while the trigger state persists, but does
not specify further the type or manner of this broadcast. Although the
received indication specifies how the message should be broadcasted, that
does not mean it must be broadcasted in that particular manner, particularly
given the last clause’s high level of generality regarding the actual
broadcast.
Nevertheless, despite the claim’s breadth, we find the Examiner’s
anticipation rejection problematic on this record. In the rejection, the
Examiner finds, without supporting explanation, that Lamont’s paragraphs
29, 33, 34, 39–42, 51, 63, 65–68, 71, and 72 disclose tailoring the message
to include variable, pre-defined text based on at least one trigger state aspect.
Final Act. 7. Notably, these citations—like all other citations in the
rejection—were provided without supporting explanation apart from merely
quoting the claim language. See id.
In response to Appellant’s challenge to the Examiner’s failure to
explain how Lamont anticipates various aspects of the claimed invention,
including the tailoring step (Appeal Br. 12–13), the Examiner cites Lamont’s
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paragraphs 29, 40, 33, 51, 67, 71, and 72 for teaching triggering
advertisements (i.e., messages) based on (1) geography and/or vicinity; (2)
proximity; (3) being within range of a particular vehicle; and (4) when a
driver is near a particular exit. Ans. 8–9. According to the Examiner, the
latter exit-based example illustrates tailoring a message with variable,
predefined text, namely hotels, gas stations, and other facilities near that
exit, based on an exit-dependent “trigger.” Ans. 9.
These findings are problematic on this record. Lamont’s exit-based
functionality on which the Examiner relies is shown in Figure 5A. As
shown in that figure, sign 524a is over a roadway and includes an
advertising module 108 that transmits information, such as restaurants at the
exit, to a device in an approaching vehicle 522a to present that information
to the driver or passenger. See Lamont ¶¶ 69–72; Figs. 1A, 5A. As
explained in Lamont’s paragraph 34, advertising modules or “beacons”
include transmitting and/or receiving components to enable communication
with a user communication device.
Although the vehicle’s proximity to the sign triggers the vehicle’s
occupants receiving the sign’s transmitted information, we cannot say—nor
has the Examiner shown—that Lamont’s processor is necessarily configured
to (1) tailor the message to include variable, predefined text based on a
trigger state aspect, and then (2) broadcast the message while that trigger
state persists as claimed.
Our emphasis underscores a key aspect of the claimed invention,
namely that the processor is configured to tailor the message before
broadcasting it. To be sure, information that the user receives in Lamont can
be based on user preferences and determined dynamically or automatically
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as noted in paragraph 72—a determination that effectively tailors that
information.
Still, that does not mean that this determination is necessarily made
before broadcasting the message. Rather, the determination could be made
after the message is broadcasted by, for example, filtering received
broadcasted content at the user’s device consistent with the user’s
preferences. In this scenario, the message is tailored after its broadcast—not
before. That Lamont’s paragraph 72 states explicitly that the vehicle can set
a filter to allow gas station information when the vehicle has less than a
quarter tank of fuel only underscores this point.
We reach this finding despite the vehicle 523a in Lamont’s Figure 5A
also including an advertising module that provides data to occupants of other
vehicles, including vehicle 521a. See Lamont ¶ 66. Here again, although
the vehicle 522a’s proximity to the advertising vehicle 523a triggers the
vehicle 522a’s occupants receiving the advertising vehicle’s transmitted
information, we cannot say—nor has the Examiner shown—that Lamont’s
processor is necessarily configured to (1) tailor the message to include
variable, predefined text based on a trigger state aspect, and then (2)
broadcast the message while that trigger state persists as claimed.
To be sure, a business can determine criteria related to advertising its
data by, for example, transmitting data within a certain geographical area or
during certain time periods. Lamont ¶ 40. Although the transmitted
message is effectively tailored consistent with these geographical and
temporal criteria,8 we cannot say—nor has the Examiner shown—that the

8 Accord Intellectual Ventures I, 792 F.3d at 1369 (noting that tailoring
content based on certain criteria, such as a viewer’s location or address, is a
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message necessarily includes variable, predefined text based on a trigger
state aspect. That is, despite the transmission being limited to certain times
or geographic areas, the message may nonetheless be the same—not
variable.
We reach this finding even if it was probable that Lamont’s
broadcasted message includes variable, predefined text associated with
different times or geographic locations consistent with these criteria—a
feature that is at least suggested by the court in Intellectual Ventures. See
Intellectual Ventures I, 792 F.3d at 1369 (noting that tailoring content based
on certain criteria, such as a viewer’s location or address, is a fundamental
practice prevalent in our system); see also id. at 1370 (“Tailoring
information based on the time of day of viewing is also an abstract, overly
broad concept long-practiced in our society.”).
Although tailoring content for broadcast consistent with these criteria
may have been probable in Lamont, that alone is insufficient for
anticipation, for it is well settled that “[i]nherency . . . may not be
established by probabilities or possibilities. The mere fact that a certain
thing may result from a given set of circumstances is not sufficient.” In re
Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999) (citations omitted).
Therefore, we are persuaded that the Examiner erred in rejecting (1)
independent claim 1, and (2) dependent claims 2 and 7 for similar reasons.
Because this issue is dispositive regarding our reversing the Examiner’s

fundamental practice prevalent in our system); see also id. at 1370
(“Tailoring information based on the time of day of viewing is also an
abstract, overly broad concept long-practiced in our society.”).
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rejection of these claims, we need not address Appellant’s other associated
arguments.

THE OBVIOUSNESS REJECTIONS
Because the Examiner has not shown that the cited prior art cures the
deficiencies noted above regarding the rejection of independent claim 1, we
will not sustain the obviousness rejections of dependent claims 3–6, 8, and 9
(Final Act. 8–11) for similar reasons.

CONCLUSION
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)
/Basis
Affirmed Reversed
1–9 101 Eligibility 1–9
1, 2, 7 102(a)(1) Lamont 1, 2, 7
3 103 Lamont,
Amla
3
4 103 Lamont,
Huang
4
5 103 Lamont,
Tuukkanen
5
6, 9 103 Lamont,
Parkes
6, 9
8 103 Lamont,
Frashure
8
Overall
Outcome
1–9

TIME PERIOD FOR RESPONSE
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).

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AFFIRMED