Kamar, Semiha Ece. et al.

Patent Trials and Appeals Board

Feb 11, 2020

12492861 - (D) (P.T.A.B. Feb. 11, 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.
12/492,861 06/26/2009 Semiha Ece Kamar 14917.3770US01/327476USNP 8114
27488 7590 02/11/2020
MERCHANT & GOULD (MICROSOFT)
P.O. BOX 2903
MINNEAPOLIS, MN 55402-0903
EXAMINER
OSMAN BILAL AHME, AFAF
ART UNIT PAPER NUMBER
3682
NOTIFICATION DATE DELIVERY MODE
02/11/2020 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):
USPTO27488@merchantgould.com
usdocket@microsoft.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte SEMIHA ECE KAMRA, ERIC HORVITZ,
CHRISTOPHER A. MEEK,
and STEPHEN LOMBARDI
____________

Appeal 2018–001113
Application 12/492,8611
Technology Center 3600
____________

Before MURRIEL E. CRAWFORD, ANTON W. FETTING, and
JOSEPH A. FISCHETTI, Administrative Patent Judges.

FETTING, Administrative Patent Judge.

DECISION ON APPEAL

1 Oral arguments were presented February 3, 2020.
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STATEMENT OF THE CASE2
Semiha Ece Kamra, Eric Horvitz, Christopher A. Meek, and Stephen
Lombardi (Appellant3) seeks review under 35 U.S.C. § 134 of a non–final
rejection of claims 1–18 and 20, the only claims pending in the application
on appeal. We have jurisdiction over the appeal pursuant to
35 U.S.C. § 6(b).
The Appellant invented a way of improving the selection and
presentation of advertisements in mobile contexts with variable routes.
Specification para. 4.
An understanding of the invention can be derived from a reading of
exemplary claim 1, which is reproduced below (bracketed matter and some
paragraphing added).
1. A method of generating an advertisement plan for a user of a
computer having a processor and having access to an
advertisement set comprising advertisements provided by
respective advertisers, the method comprising:
executing upon the processor instructions configured to:
[1] predict at least one potential predicted route of the user;

2 Our decision will make reference to the Appellant’s Appeal Brief (“App.
Br.,” filed December 21, 2016) and Reply Brief (“Reply Br.,” filed
November 8, 2017), and the Examiner’s Answer (“Ans.,” mailed September
8, 2017), and Non-Final Action (“Non-Final Act.,” mailed July 21, 2016).
3 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 Microsoft,
Inc. (Appeal Br. 3).

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[2] for respective predicted routes, predict along the predicted
route at least one position presenting an advertisement
opportunity where the user may have at least partial attention
availability;
and
[3] for respective advertisement opportunities, select at least
one advertisement from the advertisement set to be presented at
the advertisement opportunity.
Claims 1–18 and 20 stand rejected under 35 U.S.C. § 101 as directed
to a judicial exception without significantly more.
Claims 1–18 and 20 stand rejected under 35 U.S.C. § 112(a) as
lacking a supporting written description within the original disclosure.
Claims 1, 12, 17 and 20 stand rejected under 35 U.S.C. § 112(b) as
failing to particularly point out and distinctly claim the invention.
ISSUES
The issues of eligible subject matter turn primarily on whether the
claims recite more than abstract conceptual advice of results desired.
The issues of written description matter turn primarily on whether the
originally filed disclosure supports the claims.
The issues of indefiniteness matter turn primarily on whether one of
ordinary skill would understand the metes and bounds of the claims.
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ANALYSIS
Claims 1–18 and 20 rejected under 35 U.S.C. § 101 as directed to a judicial
exception without significantly more
STEP 14
Claim 1, as a method claim, nominally recites one of the enumerated
categories of eligible subject matter in 35 U.S.C. § 101. The issue before us
is whether it is directed to a judicial exception without significantly more.
STEP 2
The Supreme Court
set forth a framework for distinguishing patents that claim laws
of nature, natural phenomena, and abstract ideas from those that
claim patent-eligible applications of those concepts. First, . . .
determine whether the claims at issue are directed to one of
those patent-ineligible concepts. If so, we then ask, “[w]hat
else is there in the claims before us? To answer that question, .
. . consider the elements of each claim both individually and “as
an ordered combination” to determine whether the additional
elements “transform the nature of the claim” into a patent-
eligible application. [The Court] described step two of this
analysis as a search for an “‘inventive concept’”—i.e., an
element or combination of elements that is “sufficient to ensure
that the patent in practice amounts to significantly more than a
patent upon the [ineligible concept] itself.”
Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 217–18 (2014) (citations
omitted) (citing Mayo Collaborative Servs. v. Prometheus Labs, Inc.,
566 U.S. 66 (2012)). To perform this test, we must first determine what the
claims are directed to. This begins by determining whether the claims recite

4 For continuity of analysis, we adopt the steps nomenclature from 2019
Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7,
2019) (“Revised Guidance”).
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one of the judicial exceptions (a law of nature, a natural phenomenon, or an
abstract idea). Then, if the claims recite a judicial exception, determining
whether the claims at issue are directed to the recited judicial exception, or
whether the recited judicial exception is integrated into a practical
application of that exception, i.e., that the claims “apply, rely on, or use the
judicial exception in a manner that imposes a meaningful limit on the
judicial exception, such that the claim is more than a drafting effort designed
to monopolize the judicial exception.” Revised Guidance, 84 Fed. Reg. at
54. If the claims are directed to a judicial exception, then finally
determining whether the claims provide an inventive concept because the
additional elements recited in the claims provide significantly more than the
recited judicial exception.
STEP 2A Prong 1
At a high level, and for our preliminary analysis, we note that method
claim 1 recites predicting route and position data and selecting ad data.
Predicting and selecting data are forms of analyzing data. Thus, claim 1
recites analyzing data. None of the limitations recite technological
implementation details for any of these steps, but instead recite only results
desired by any and all possible means.
From this we see that claim 1 does not recite the judicial exceptions of
either natural phenomena or laws of nature.
Under Supreme Court precedent, claims directed purely to an abstract
idea are patent in-eligible. As set forth in the Revised Guidance, which
extracts and synthesizes key concepts identified by the courts, abstract ideas
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include (1) mathematical concepts5, (2) certain methods of organizing
human activity6, and (3) mental processes7. Among those certain methods
of organizing human activity listed in the Revised Guidance are commercial
or legal interactions. Like those concepts, claim 1 recites the concept of
advertising management. Specifically, claim 1 recites operations that would
ordinarily take place in advising one to select an ad based on predicted route
and position data. The advice to select an ad based on predicted route and
position data involves generating an advertisement plan, which is an
economic act, and selecting an advertisement, which is an act ordinarily
performed in the stream of commerce. For example, claim 1 recites
“generating an advertisement plan,” which is an activity that would take
place whenever one is managing an advertising plan. Similarly, claim 1
recites “select at least one advertisement,” which is also characteristic of
managing advertising.
The Examiner determines the claims to be directed to generating an
advertisement plan for a user and having access to an advertisement set
provided by respective advertisers. Final Act. 2

5 See, e.g., Gottschalk v. Benson, 409 U.S. 63, 71–72 (1972); Bilski v.
Kappos, 561 U.S. 593, 611 (2010); Mackay Radio & Telegraph Co. v. Radio
Corp. of Am., 306 U.S. 86, 94 (1939); SAP America, Inc. v. InvestPic, LLC,
898 F.3d 1161, 1163 (Fed. Cir. 2018).
6 See, e.g., Bilski, 561 U.S. at 628; Alice, 573 U.S. at 219-20; Ultramercial,
Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed Cir. 2014); Smart Sys.
Innovations, LLC v. Chicago Transit Auth., 873 F.3d 1364, 1383 (Fed. Cir.
2017); In re Marco Guldenaar Holding B.V., 911 F.3d 1157, 1160–61 (Fed.
Cir. 2018).
7 See, e.g., Benson, 409 U.S. at 67; CyberSource Corp. v. Retail Decisions,
Inc., 654 F.3d 1366, 1371–72 (Fed. Cir. 2011); Intellectual Ventures I LLC
v. Symantec Corp., 838 F.3d 1307, 1318 (Fed. Cir. 2016).
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The preamble to claim 1 recites that it is a method of generating an
advertisement plan. The steps in claim 1 result in selecting an ad based on
predicted route and position data absent any technological mechanism other
than a conventional computer for doing so.
As to the specific limitations, limitations 1–3 recite generic and
conventional analyzing of route and ad data, which advise one to apply
generic functions to get to these results. The limitations thus recite advice
for selecting an ad based on predicted route and position data. To advocate
selecting an ad based on predicted route and position data is conceptual
advice for results desired and not technological operations.
The Specification at paragraph 4 describes the invention as relating to
improving the selection and presentation of advertisements in mobile
contexts with variable routes. Thus, all this intrinsic evidence shows that
claim 1 recites advertising management. This is consistent with the
Examiner’s determination.
This in turn is an example of commercial or legal interactions as a
certain method of organizing human activity because advertising
management is a commercial interaction for inducing people to make
purchases. The concept of advertising management by selecting an ad based
on predicted route and position data is one idea for inducing based on locale.
The steps recited in claim 1 are part of how this might conceptually be
premised.
Our reviewing court has found claims to be directed to abstract ideas
when they recited similar subject matter. Ultramercial, Inc. v. Hulu, LLC,
772 F.3d 709, 715 (Fed. Cir. 2014)(advertising).
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Alternately, this is an example of concepts performed in the human
mind as mental processes because the steps of analyzing data mimic human
thought processes of observation, evaluation, judgment, and opinion,
perhaps with paper and pencil, where the data interpretation is perceptible
only in the human mind. See In re TLI Commc’ns LLC Patent Litig., 823
F.3d 607, 611 (Fed. Cir. 2016); FairWarning IP, LLC v. Iatric Sys., Inc., 839
F.3d 1089, 1093–94 (Fed. Cir. 2016). Claim 1, unlike the claims found non-
abstract in prior cases, uses generic computer technology to perform data
analysis and does not recite an improvement to a particular computer
technology. See, e.g., McRO, Inc. v. Bandai Namco Games Am. Inc., 837
F.3d 1299, 1314–15 (Fed. Cir. 2016) (finding claims not abstract because
they “focused on a specific asserted improvement in computer animation”).
As such, claim 1 recites analyzing data, and not a technological
implementation or application of that idea.
From this we conclude that at least to this degree, claim 1 recites
advertising management by selecting an ad based on predicted route and
position data, which is a commercial and legal interaction, one of certain
methods of organizing human activity identified in the Revised Guidance,
and, thus, an abstract idea.
STEP 2A Prong 2
The next issue is whether claim 1 not only recites, but is more
precisely directed to this concept itself or whether it is instead directed to
some technological implementation or application of, or improvement to,
this concept i.e. integrated into a practical application.8

8 See, e.g., Alice, 573 U.S. at 223, discussing Diamond v. Diehr, 450 U.S.
175 (1981).
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At the same time, we tread carefully in construing this
exclusionary principle lest it swallow all of patent law. At
some level, “all inventions ... embody, use, reflect, rest upon, or
apply laws of nature, natural phenomena, or abstract ideas.”
Thus, an invention is not rendered ineligible for patent simply
because it involves an abstract concept. “[A]pplication[s]” of
such concepts “ ‘to a new and useful end,’ ” we have said,
remain eligible for patent protection. Accordingly, in applying
the § 101 exception, we must distinguish between patents that
claim the “ ‘buildin[g] block[s]’ ” of human ingenuity and those
that integrate the building blocks into something more.
Alice, 573 U.S. at 217 (citations omitted).
Taking the claim elements separately, the operation performed by the
computer at each step of the process is expressed purely in terms of results,
devoid of implementation details. Steps 1–3 recite generic computer
processing expressed in terms of results desired by any and all possible
means and so present no more than conceptual advice. All purported
inventive aspects reside in how the data is interpreted and the results desired,
and not in how the process physically enforces such a data interpretation or
in how the processing technologically achieves those results.
Viewed as a whole, Appellant’s claim 1 simply recites the concept of
advertising management by selecting an ad based on predicted route and
position data as performed by a generic computer. This is no more than
conceptual advice on the parameters for this concept and the generic
computer processes necessary to process those parameters, and do not recite
any particular implementation.
Claim 1 does not, for example, purport to improve the functioning of
the computer itself. Nor does it effect an improvement in any other
technology or technical field. The Specification only spells out different
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generic equipment9 and parameters that might be applied using this concept
and the particular steps such conventional processing would entail based on
the concept of advertising management by selecting an ad based on
predicted route and position data under different scenarios. It does not
describe any particular improvement in the manner a computer functions.
Instead, claim 1 at issue amounts to nothing significantly more than an
instruction to apply advertising management by selecting an ad based on
predicted route and position data using some unspecified, generic computer.
Under our precedents, that is not enough to transform an abstract idea into a
patent-eligible invention. See Alice, 573 U.S. at 225–26.
None of the limitations reflect an improvement in the functioning of a
computer, or an improvement to other technology or technical field, applies
or uses a judicial exception to effect a particular treatment or prophylaxis for
a disease or medical condition, implements a judicial exception with, or uses
a judicial exception in conjunction with, a particular machine or manufacture
that is integral to the claim, effects a transformation or reduction of a
particular article to a different state or thing, or applies or uses the judicial
exception in some other meaningful way beyond generally linking the use of
the judicial exception to a particular technological environment, such that
the claim as a whole is more than a drafting effort designed to monopolize
the exception.
We conclude that claim 1 is directed to achieving the result of
advertising management by advising one to select an ad based on predicted
route and position data, as distinguished from a technological improvement

9 The Specification describes a workstation or server, a notebook, palmtop,
or cellphone. Spec. para. 34.
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for achieving or applying that result. This amounts to commercial or legal
interactions, which fall within certain methods of organizing human activity
that constitute abstract ideas. The claim does not integrate the judicial
exception into a practical application.
STEP 2B
The next issue is whether claim 1 provides an inventive concept
because the additional elements recited in the claim provide significantly
more than the recited judicial exception.
The introduction of a computer into the claims does not generally alter
the analysis at Mayo step two.
the mere recitation of a generic computer cannot transform a
patent-ineligible abstract idea into a patent-eligible invention.
Stating an abstract idea “while adding the words ‘apply it’” is
not enough for patent eligibility. Nor is limiting the use of an
abstract idea “‘to a particular technological environment.’”
Stating an abstract idea while adding the words “apply it with a
computer” simply combines those two steps, with the same
deficient result. Thus, if a patent’s recitation of a computer
amounts to a mere instruction to “implement[t]” an abstract
idea “on . . . a computer,” that addition cannot impart patent
eligibility. This conclusion accords with the preemption
concern that undergirds our § 101 jurisprudence. Given the
ubiquity of computers, wholly generic computer
implementation is not generally the sort of “additional
feature[e]” that provides any “practical assurance that the
process is more than a drafting effort designed to monopolize
the [abstract idea] itself.”
Alice, 573 U.S. at 223–24 (citations omitted).
“[T]he relevant question is whether the claims here do more than
simply instruct the practitioner to implement the abstract idea [] on a generic
computer.” Alice, 573 U.S. at 225. They do not.
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Taking the claim elements separately, the function performed by the
computer at each step of the process is purely conventional. Using a
computer for analyzing data amounts to electronic data query and retrieval—
one of the most basic functions of a computer. All of these computer
functions are generic, routine, conventional computer activities that are
performed only for their conventional uses. See Elec. Power Grp. LLC v.
Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016). See also In re Katz
Interactive Call Processing Patent Litig., 639 F.3d 1303, 1316 (Fed. Cir.
2011) (“Absent a possible narrower construction of the terms ‘processing,’
‘receiving,’ and ‘storing,’ . . . those functions can be achieved by any
general purpose computer without special programming”). None of these
activities is used in some unconventional manner nor does any produce some
unexpected result. Appellant does not contend it invented any of these
activities. In short, each step does no more than require a generic computer
to perform generic computer functions. As to the data operated upon, “even
if a process of collecting and analyzing information is ‘limited to particular
content’ or a particular ‘source,’ that limitation does not make the collection
and analysis other than abstract.” SAP America, Inc. v. InvestPic LLC, 898
F.3d 1161, 1168 (Fed. Cir. 2018).
Considered as an ordered combination, the computer components of
Appellant’s claim 1 add nothing that is not already present when the steps
are considered separately. The sequence of data analysis is equally generic
and conventional. See Ultramercial, 772 F.3d at 715 (sequence of receiving,
selecting, offering for exchange, display, allowing access, and receiving
payment recited an abstraction), Inventor Holdings, LLC v. Bed Bath &
Beyond, Inc., 876 F.3d 1372, 1378 (Fed. Cir. 2017) (sequence of data
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retrieval, analysis, modification, generation, display, and transmission),
Two-Way Media Ltd. v. Comcast Cable Communications, LLC, 874 F.3d
1329, 1339 (Fed. Cir. 2017) (sequence of processing, routing, controlling,
and monitoring). The ordering of the steps is therefore ordinary and
conventional.
We conclude that claim 1 does not provide an inventive concept
because the additional elements recited in the claim do not provide
significantly more than the recited judicial exception.
REMAINING CLAIMS
Claim 1 is representative. The remaining method claims merely
describe process parameters. We conclude that the method claims at issue
are directed to a patent-ineligible concept itself, and not to the practical
application of that concept.
As to the structural claims, they
are no different from the method claims in substance. The
method claims recite the abstract idea implemented on a generic
computer; the system claims recite a handful of generic
computer components configured to implement the same idea.
This Court has long “warn[ed] ... against” interpreting § 101 “in
ways that make patent eligibility ‘depend simply on the
draftsman’s art.’
Alice, 573 U.S. at 226. Although the sole article of manufacture claim 20 is
more detailed than claim 1, it is similar in substance to claims depending
from claim 1. As a corollary, the claims are not directed to any particular
machine.
A final determination as to computer-readable storage device claim
20. First, although nominally a storage device claim, all of the substantive
limitations are process steps that instructions on the device dictate. Claim
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20 is therefore substantively a process claim though drafted as a device
claim. Although claim 20 contains 14 steps contrasted with the 3 steps of
claim 1, claim 20 recites steps of monitoring, storing, detecting, predicting,
selecting, identifying, predicting, selecting, identifying, detecting,
monitoring, monitoring, computing, and identifying advertising related data.
Detecting, predicting, selecting, identifying, and computing are all
rudimentary forms of data analysis. Monitoring data is receiving data.
Thus, claim 20 recites receiving, analyzing, and storing data. Such a
sequence and the individual operations are shown to be conventional supra.
The analysis supra as applied to claim 20 shows the claim to also be directed
to the commercial and legal interaction of advertising management by
advising one to select an ad based on predicted route and position data,
without significantly more.
LEGAL CONCLUSION
From these determinations we further determine that the claims do not
recite an improvement to the functioning of the computer itself or to any
other technology or technical field, a particular machine, a particular
transformation, or other meaningful limitations. From this we conclude the
claims are directed to the judicial exception of the abstract idea of certain
methods of organizing human activity as exemplified by the commercial and
legal interaction of advertising management by advising one to select an ad
based on predicted route and position data, without significantly more.
APPELLANT’S ARGUMENTS
We are not persuaded by Appellant's argument that
choosing opportunities to interact with the user in a manner that
avoids dangerous interruption, and/or that avoids interrupting
the user in ways that are irritating, is not fairly or even remotely
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captured by the overgeneralized description of “generating an
advertisement plan for a user and having access to an
advertisement set provided by respective advertisers.”
App. Br. 17. At best, claim 1 is directed to the commercial and legal
interaction of advertising management by advising one to select an ad based
on predicted route and position data, without significantly more. See the
analysis supra. Appellant contends that the Specification describes how a
user reacts to such interaction during travel. But this is no more than
speculative behavioral description and not technological implementation or
application details.
Appellant goes on to contend that “the prediction of routes of a user is
not fundamentally an ‘economic practice.’ Route prediction is used in many
contexts.” Id. Perhaps. But, the claims recite no more than performing
prediction, absent any further technological implementation details. The
claims are therefore in no way directed to such predictions. Instead, the
claim are directed to managing advertising along routes, and advertising is a
major economic practice to encourage commercial sales.
We are not persuaded by Appellant's argument that
the entirety of the analysis presented in the Non-Final Office
Action is a characterization of the claimed technique as
“directed toward a fundamental economic practice.” No further
clarification or explanation is provided. No attempt is made to
“explain why” the technique is interpreted as such - it has
simply been summarily characterized as such and therefore
rejected.
App. Br. 19. Again, we support the determination supra that the claims are
directed to the judicial exception of the abstract idea of certain methods of
organizing human activity as exemplified by the commercial and legal
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interaction of advertising management by advising one to select an ad based
on predicted route and position data, without significantly more.
Appellant further argues that the asserted claims are akin to the
claims found patent-eligible in DDR Holdings, LLC v. Hotels.com, L.P.
773 F.3d 1245 (Fed. Cir. 2014). App. Br. 19. In DDR Holdings, the
Court evaluated the eligibility of claims “address[ing] the problem of
retaining website visitors that, if adhering to the routine, conventional
functioning of Internet hyperlink protocol, would be instantly
transported away from a host’s website after ‘clicking’ on an
advertisement and activating a hyperlink.” Id. at 1257. There, the Court
found that the claims were patent eligible because they transformed the
manner in which a hyperlink typically functions to resolve a problem
that had no “pre-Internet analog.” Id. at 1258. The Court cautioned,
however, “that not all claims purporting to address Internet-centric
challenges are eligible for patent.” Id. For example, in DDR Holdings the
Court distinguished the patent-eligible claims at issue from claims found
patent-ineligible in Ultramercial. See id. at 1258–59 (citing Ultramercial,
772 F.3d at 715–16). As noted there, the Ultramercial claims were
“directed to a specific method of advertising and content distribution that
was previously unknown and never employed on the Internet before.” Id.
at 1258 (quoting Ultramercial, 772 F.3d at 715–16). Nevertheless, those
claims were patent ineligible because they “merely recite[d] the abstract
idea of ‘offering media content in exchange for viewing an advertisement,’
along with ‘routine additional steps such as updating an activity log,
requiring a request from the consumer to view the ad, restrictions on public
access, and use of the Internet.’” Id.
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Appellant’s asserted claims are analogous to claims found ineligible
in Ultramercial and distinct from claims found eligible in DDR Holdings.
The ineligible claims in Ultramercial recited “providing [a] media product
for sale at an Internet website;” “restricting general public access to said
media product;” “receiving from the consumer a request to view [a]
sponsor message;” and “if the sponsor message is an interactive message,
presenting at least one query to the consumer and allowing said consumer
access to said media product after receiving a response to said at least one
query.” 772 F.3d at 712. Similarly, Appellant’s asserted claims recite
analyzing data. This is precisely the type of Internet activity found
ineligible in Ultramercial.
We are not persuaded by Appellant’s argument that “[t]he rejection
makes no attempt to correlate the claims with an ‘abstract idea’ that the
courts have recognized.” App. Br. 20. See the court citations supra.
We are not persuaded by Appellant’s argument that “the rejection fails
to identify the additional elements individually and/or in combination.” App.
Br. 21. See the analysis under Steps 2A and 2B supra.
We are not persuaded by Appellant's argument that “[g]eneric
boilerplate, cited without any attempt to tie such blanket statements to the
claims at issue, cannot be interpreted as satisfying the requirements of the
Interim Eligibility Guidance.” App. Br. 22. See the analysis under Steps 2A
and 2B supra.
We are not persuaded by Appellant's argument that “[t]he rejection
fails to evaluate any of the dependent claims, or claim 20.” Id. Appellant
next repeats the Examiner’s determinations of such claims, disproving the
contention. To the extent Appellant is desirous of a more detailed
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explanation, such is not required where summarization is adequate to
meaningful review. Appellant does not offer any claim and limitation
specific arguments to dependent claim particularized limitations, leaving us
with no specific arguments to review.
Appellant’s Reply Brief arguments are almost entirely procedural or
directed to cases the Examiner cites. The analysis supra therefore responds
to such arguments.
As to claim 20, Appellant only recites the claim limitation and
concludes that “examiner's conclusion that all of these claim elements are
‘well-understood, generic, conventional activities... presented at a high level
of generality’ is believed to requires [sic] no further comment.” Reply Br.
11. This is insufficient to act as a separate argument under 37 C.F.R.
§ 41.37. As our reviewing court held,
we hold that the Board reasonably interpreted Rule 41.37 to
require more substantive arguments in an appeal brief than a
mere recitation of the claim elements and a naked assertion that
the corresponding elements were not found in the prior art.
In re Lovin, 652 F.3d 1349, 1357 (Fed Cir 2011).
Claims 1–18 and 20 rejected under 35 U.S.C. § 112(a) as lacking a
supporting written description within the original disclosure
We are persuaded by Appellant’s argument that there are numerous
examples to support the claim limitations. App. Br. 23–31.
Claims 1, 12, 17 and 20 rejected under 35 U.S.C. § 112(b) as failing to
particularly point out and distinctly claim the invention
We are persuaded by Appellant’s argument that the metes and bounds
are sufficiently understood by one of ordinary skill and Appellant clarified
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the portions of the claims that may have been difficult to read. App. Br. 33–
37; Reply Br. 17–20.
CONCLUSIONS OF LAW
The rejection of claims 1–18 and 20 under 35 U.S.C. § 101 as directed
to a judicial exception without significantly more is proper.
The rejection of claims 1–18 and 20 under 35 U.S.C. § 112(a) as
lacking a supporting written description within the original disclosure is
improper.
The rejection of claims 1, 12, 17 and 20 under 35 U.S.C. § 112(b) as
failing to particularly point out and distinctly claim the invention is
improper.
CONCLUSION
The rejection of claims 1–18 and 20 is affirmed.
In summary:
Claims
Rejected
35 U.S.C.
§
Basis Affirmed Reversed
1–18, 20 101 Eligibility 1–18, 20
1–18, 20 112(a) Written
Description
1–18, 20
1, 12, 17, 20 112(b) Indefiniteness 1, 12, 17, 20
Overall Outcome 1–18, 20

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2011).

Appeal 2018-001113
Application 12/492,861

20

AFFIRMED