MacNeille, Perry Robinson. et al.

Patent Trials and Appeals Board

Jun 24, 2020

2018007841 (P.T.A.B. Jun. 24, 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.
13/803,215 03/14/2013 Perry Robinson MacNeille 83250718 5907
28395 7590 06/24/2020
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
06/24/2020 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 PERRY ROBINSON MacNEILLE,
OLEG YURIEVITCH GUSIKHIN, YIMIN LIU,
DAVID ALLEN KOWALSKI, and
GARY STEVEN STRUMOLO
________________

Appeal 2018-007841
Application 13/803,215
Technology Center 3600
________________

Before BRADLEY W. BAUMEISTER, ADAM J. PYONIN, and
KARA L. SZPONDOWSKI, Administrative Patent Judges.

BAUMEISTER, Administrative Patent Judge.

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1–7, 11, 12, 18, and 21–27, which constitute all of the
pending claims.1 Appeal Br. 3–10. 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 Brief filed August 2, 2017 (“Appeal
Br.”), 1.
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CLAIMED SUBJECT MATTER
Appellant describes the present invention as follows:
A vehicle computer system comprising a receiver
configured to wirelessly receive an advertisement, the
advertisement including two or more ad components for output
to a user, the receiver further configured to communicate the
advertisement to a processor. The processor is configured to
receive contextual data representative of a vehicle’s environment
from one or more data sources, output the advertisement and a
first set of ad components to the user based on the contextual
data, the first set of ad components including a request to interact
with the user, receive an input from a user corresponding to the
first set of ad components, and output a second set of ad
components based on the input received from the user.
Abstract.

STATEMENT OF THE REJECTIONS
Claims 1–7, 11, 12, 18, and 21–27 stand rejected under 35 U.S.C.
§ 101 as being directed to an exception to patent-eligible subject matter
without reciting significantly more. Final Act. 2–5.2
Claims 18 and 24–27 stand rejected under 35 U.S.C. § 112(b) (or
under pre-AIA § 112, ¶ 2) as failing to particularly point out and distinctly
claim the subject matter that Appellant regards as the invention. Final
Act. 5–6.
Claims 1–7, 11, 12, 18, and 21–27 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable. Final Act. 7–17.

2 Rather than repeat the Examiner’s positions and Appellant’s arguments in
their entirety, we refer to the above-mentioned Appeal Brief, as well as the
following documents, for their respective details: the Final Action mailed
March 3, 2017 (“Final Act.”); the Examiner’s Answer mailed May 24, 2018
(“Ans.”); and the Reply Brief filed July 24, 2018 (“Reply Br.”).
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STANDARD OF REVIEW
The Board conducts a limited de novo review of 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).

THE SECTION 101 REJECTION
The Claimed Invention
Independent claim 1 represents the appealed claims.3 Claim 1 is
reproduced below with paragraph numbering added for ease of reference and
emphasis added to the claim language that recites an abstract idea:
1. A vehicle computer system comprising:
a receiver configured to wirelessly receive at a vehicle a
plurality of ad components identifying portions of an
advertisement for output to a user, the receiver further configured
to communicate the advertisement to a processor, the processor
configured to:
[(a)] receive contextual data representative of a vehicle’s
environment from one or more vehicle sensors;
[(b)] determine a workload value associated with a
driver of a vehicle utilizing the contextual data and the one or
more vehicle sensors;
[(c)] output the advertisement and a first set of ad
components selected from the plurality of ad components
received at the vehicle to a vehicle display based on the
contextual data and the workload value, the first set of ad
components including a request to interact with a user;

3 Appellant argues all of the claims together as a group. Appeal Br. 3–7.
Accordingly, we select independent claim 1 as representative. 37 C.F.R.
§ 41.37(c)(1)(iv).
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[(d)] receive an input using a vehicle interface
corresponding to the first set of ad components; and
[(e)] output to the vehicle display a second set of ad
components responsive to the input and selected from the
plurality of ad components received at the vehicle.
Examiner’s Determinations and Appellant’s Contentions
The Examiner determines, “[independent] claim 1 is just the system
embodiment of the method of claim 18 and nothing significantly more.”
Final Act. 5. According to the Examiner, “[t]he system at best describes an
environment in which to carry out the abstract idea.” Id. The Examiner,
applying the eligibility analysis to claim 18, finds,
[c]laim 18 recites, in part, a method performing the steps of
receiving an advertisement that includes a plurality of ad
components; outputting a first and second set of ad components
responsive to a workload value of a driver using contextual data
received falling below a threshold value, wherein the second set
of ad components is selected from the plurality of ad
components and output responsive to input.
Final Act. 2. The Examiner determines that “[e]ssentially, the claimed
invention is simply collecting data, analyzing/comparing the data to
determine a value, and notifying/displaying to the user the results (i.e., the
selected/outputted advertisement data).” Id. at 3.
The Examiner determines that independent claim 18 is directed to
processes that can be performed in the human mind or by a human using a
pen and paper. Id. at 2–3. The Examiner also determines that claim 18 is
directed to collecting data and outputting advertisements responsive to the
collected data. Id. at 2.
The Examiner additionally determines that Appellant’s Specification
lists the additional elements only as generic computers and components. Id.
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at 4. The Examiner determines that “[t]here is no indication that the
combination of [additional] elements improves the functioning of a
computer or improves any other technology.” Id. The Examiner
determines, then “[t]he claims do not include additional elements that are
sufficient to amount to significantly more than the judicial exception
because the additional computer elements, which are recited at a high level
of generality, provide conventional computer functions that do not add
meaningful limits to practicing the abstract idea.” Id. at 2.
Appellant argues that “the Final Office Action has failed to show the
claims are directed to a judicial exception.” Appeal Br. 4. Appellant further
argues various reasons why the claims are not directed to an abstract idea
and why the claims recite significantly more than an abstract idea. Id. at 3–
7. We address these arguments individually in our analysis below.
Principles of Law
A. SECTION 101:
Inventions for a “new and useful process, machine, manufacture, or
composition of matter” generally constitute patent-eligible subject 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. 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 Court’s two-step framework, described in Mayo
Collaborative Services v. Prometheus Laboratories, Inc., 566 U.S. 66
(2012), and Alice. Alice, 573 U.S. at 217–18 (citing Mayo, 566 U.S. at 75–
77). In accordance with that framework, we first determine what concept
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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.
252, 267–68 (1853))); and manufacturing flour (Benson, 409 U.S. at 69
(citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
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 (citation 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).
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“[M]erely requir[ing] generic computer implementation[] fail[s] to transform
that abstract idea into a patent-eligible invention.” Id.
B. USPTO SECTION 101 GUIDANCE:
In January 2019, the U.S. Patent and Trademark Office (“USPTO”)
published revised guidance on the application of 35 U.S.C. § 101. See
2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50
(Jan. 7, 2019) (“2019 Guidance”), updated by USPTO, October 2019
Update: Subject Matter Eligibility (available at https://www.uspto.gov/sites/
default/files/documents/peg_oct_2019_update.pdf) (“October 2019
Guidance Update”); see also October 2019 Patent Eligibility Guidance
Update, 84 Fed. Reg. 55942 (Oct. 18, 2019) (notifying the public of the
availability of the October 2019 Guidance Update). “All USPTO personnel
are, as a matter of internal agency management, expected to follow the
guidance.” 2019 Guidance, 84 Fed. Reg. at 51; see also October 2019
Guidance Update at 1.
Under the 2019 Guidance, we first look to whether the claim recites
the following:
(1) any judicial exceptions, including certain groupings of abstract
ideas (i.e., mathematical concepts, certain methods of organizing
human activities such as a fundamental economic practice, or mental
processes); and
(2) additional elements that integrate the judicial exception into a
practical application (see MPEP §§ 2106.05(a)–(c), (e)–(h)).
2019 Guidance, 84 Fed. Reg. at 52–55.
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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, conventional activities
previously known to the industry, specified at a high level of
generality, to the judicial exception.
2019 Guidance, 84 Fed. Reg. at 56.
Analysis
STEP 2A, PRONG 1:
Under step 2A, prong 1, of the 2019 Guidance, we first look to
whether the claim recites any judicial exceptions, including certain
groupings of abstract ideas (i.e., mathematical concepts, certain methods of
organizing human activities such as a fundamental economic practice, or
mental processes). 2019 Guidance, 84 Fed. Reg. at 52–54.
Limitation (a) recites “receiv[ing] contextual data representative of a
vehicle’s environment.” Receiving this sort of data or information
constitutes a certain method of organizing human activity. More
specifically, receiving this sort of data constitutes a method of managing
interactions between people because the received data or information
provides parameters that instruct or constrain the workload determination
that subsequently is being performed in step (b), as discussed below. The
2019 Guidance expressly recognizes this certain method of organizing
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human activity as constituting a patent-ineligible abstract idea.
2019 Guidance, 84 Fed. Reg. at 52. Also,
the sub-groupings [within the exception of “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 sub-groupings.
October 2019 Guidance Update at 5.
Receiving the contextual data, as claimed, also constitutes a mental
process that entails making a mental observation. For example, the recited
step of receiving contextual data representative of a vehicle’s environment
reads on a human being observing information on a dashboard or events and
conditions that exist outside of the vehicle. In addition to the category of
“certain methods of organizing human activity,” the 2019 Guidance also
recognizes mental processes, including observations that can be performed
in the human mind, as constituting a patent-ineligible abstract idea.
2019 Guidance, 84 Fed. Reg. at 52. Accordingly, limitation (a) recites a
patent-ineligible abstract idea.
Limitation (b) recites “determine a workload value associated with a
driver of a vehicle utilizing the contextual data and the one or more vehicle
sensors.” Determining a workload value, as claimed, constitutes a mental
process that can be performed in the human mind or with the aid of pencil
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and paper. For example, the step reads on a passenger determining that an
observed driver is occupied or not and assigning a value of “1” or “0,” for
example, to those respective determinations. The 2019 Guidance expressly
recognizes observations, evaluations, and judgements as patent-ineligible
abstract ideas. 2019 Guidance, 84 Fed. Reg. at 52. Accordingly,
limitation (b) recites a patent-ineligible abstract idea.
Limitation (c) recites “output the advertisement and a first set of ad
components selected from the plurality of ad components received at the
vehicle . . . based on the contextual data and the workload value, the first set
of ad components including a request to interact with a user.” Outputting
advertisements and ad components constitutes a certain method of
organizing human activity. More specifically, outputting advertisements
constitutes advertising, marketing, or sales activities or behaviors. The
2019 Guidance expressly recognizes these certain methods of organizing
human activity as constituting a patent-ineligible abstract idea.
2019 Guidance, 84 Fed. Reg. at 52.
Outputting advertisements also constitutes a mental process. More
specifically, transmitting advertisements entails expressing or
communicating an opinion to another. The 2019 Guidance’s mental
processes exception additionally sets forth expressing opinions, as
constituting a patent-ineligible abstract idea. 2019 Guidance, 84 Fed. Reg.
at 52. Accordingly, limitation (c) recites a patent-ineligible abstract idea.
Limitation (d) recites “receiv[ing] an input . . . corresponding to the
first set of ad components.” For the reasons discussed above in relation to
limitation (a), the information-receiving step of limitation (d) also recites a
patent-ineligible abstract idea. 2019 Guidance, 84 Fed. Reg. at 52.
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Limitation (e) recites “output . . . a second set of ad components
responsive to the input and selected from the plurality of ad components
received at the vehicle.” For the reasons discussed above in relation to
limitation (c), the outputting step of limitation (e) also recites a patent-
ineligible abstract idea. 2019 Guidance, 84 Fed. Reg. at 52.
For these reasons, each of limitations (a) through (e) recites a judicial
exception to patent-eligible subject matter under step 2A, prong 1, of the
2019 Guidance. See RecogniCorp, LLC v. Nintendo Co., 855 F.3d 1322,
1327 (Fed. Cir. 2017) (“Adding one abstract idea . . . to another abstract idea
. . . does not render the claim non-abstract.”)
STEP 2A, PRONG 2:
Under step 2A, prong 2, of the 2019 Guidance, we next analyze
whether claim 1 recites additional elements that individually or in
combination integrate the judicial exception into a practical application.
2019 Guidance, 84 Fed. Reg. at 53–55. The 2019 Guidance identifies
considerations indicative of whether an additional element or combination of
elements integrate the judicial exception into a practical application, such as
an additional element reflecting an improvement in the functioning of a
computer or an improvement to other technology or technical field. Id. at
55; MPEP § 2106.05(a).
Appellant argues that the PTO guidelines on subject matter eligibility
state that “[c]iting to an appropriate court decision that supports the
identification of subject matter recited in the claim language as an abstract
idea is a best practice that will advance prosecution,” and Appellant argues
that the Examiner errs for citing to non-analogous case law in support of the
determination that the claims are directed to an abstract idea. Appeal Br. 3–
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4 (citing USPTO Memorandum, Formulating a Subject Matter Eligibility
Rejection and Evaluating the Applicant’s Response to a Subject Matter
Eligibility Rejection (May 4, 2016) available at
https://www.uspto.gov/sites/default/files/documents/ieg-may-2016-
memo.pdf (“the 2016 Memorandum”)).
This argument is unpersuasive. The 2019 Guidance supersedes the
2016 Memorandum. See 2019 Guidance, 84 Fed. Reg. 50 (“The 2019
Revised Patent Subject Matter Eligibility Guidance revises the procedures
for determining whether a patent claim or patent application claim is
directed to a judicial exception.”). Regardless, then, of whether the
2016 Memorandum actually required Examiners to cite to case law in
support of their legal determinations or whether it merely found such
citations to be laudable, we find no error in the Examiner’s determination
pursuant to the 2019 Guidance.
Appellant also argues that “the Final Office Action failed to provide
any explanation [of] how the alleged abstract idea of ‘collecting contextual
data to determine a workload value (e.g. driver attention level) and
outputting advertisements based on the workload value and received user
inputs’ corresponds to any established judicial exception.” Id. at 4. This
argument is unpersuasive. The Examiner states that the claim steps
correspond to mental processes. Final Act. 2–3. Furthermore, the preceding
sub-section of this Decision’s Analysis section sets forth explanations of
how the claim steps recite various abstract ideas.
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Appellant argues that the Examiner’s following statement of the
rejection is inaccurate:
[A] human using the mind or pen and paper, can receive
advertisements and ad components, determine a workload value
of a driver using contextual data that was received from a vehicle
sensor, and output first and second set of ad components if the
workload value is below a certain threshold, and output the
second set of ad components in response to receiving input.
Appeal Br. 4 (citing Final Act. 3). According to Appellant, “the claims
specifically state that the processor receives ‘contextual data representative
of a vehicle’s environment from one or more vehicle sensors.’” Id. at 4.
Appellant argues that “[a] human mind or pen and paper cannot mimic
collecting data from vehicle sensors in an effort to represent the vehicle’s
environment.” Id. Appellant asserts, “such data is specific electronic data
that cannot be deciphered by the human brain alone.” Id.
This argument is unpersuasive because the act of “receiv[ing]
contextual data representative of a vehicle’s environment from one or more
vehicle sensors” reads on a human observing the vehicle’s environment and
information displayed on a vehicle’s dashboard.
Appellant argues that because “the claims require that the
advertisement is output to a vehicle display, . . . . a human or pen and paper
cannot output the advertisement to the vehicle display.” Appeal Br. 4. This
argument is not persuasive. While outputting an advertisement specifically
to a vehicle display may not constitute an abstract idea, outputting an
advertisement to a display, more generally, reads on the abstract idea of, for
example, a human printing advertisements on fliers or billboards.
The only portion of this limitation that constitutes an additional
element is the requirement that the display more specifically be a vehicle
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display. As such, Appellant’s argument improperly conflates the underlying
abstract idea with the additional element—a vehicle display. See BSG Tech
LLC v. BuySeasons, Inc., 899 F.3d 1281, 1290 (Fed. Cir. 2018) (“It has been
clear since Alice that a claimed invention’s use of the ineligible concept to
which it is directed cannot supply the inventive concept that renders the
invention ‘significantly more’ than that ineligible concept.” (Citation
omitted)); Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1151
(Fed. Cir. 2016) (“[A] claim for a new abstract idea is still an abstract idea.”)
(emphasis omitted); SAP Am., Inc. v. InvestPic, LLC, 898 F.3d 1161, 1168
(Fed. Cir. 2018) (“What is needed is an inventive concept in the non-abstract
application realm.”).
Appellant argues that “the claims are directed to a specific
environment, a vehicle environment, and do not preclude all technological
innovation of the field of invention.” Appeal Br. 4. We understand
Appellant to be arguing that the claim is not patent-ineligible because the
claim does not pre-empt all technological invention in the relevant field.
This argument is unpersuasive, as merely “linking the use of the judicial
exception to a particular technological environment” does not confer patent
eligibility. 2019 Guidance, 84 Fed. Reg. at 55.
We recognize that the Court has described “the concern that drives
this exclusionary principle [i.e., the exclusion of abstract ideas from patent
eligible subject matter] as one of pre-emption.” Alice, 573 U.S. at 216.
However, characterizing preemption as a driving concern for patent
eligibility is not the same as characterizing preemption as the sole test for
patent eligibility. As our reviewing court has explained: “The Supreme
Court has made clear that the principle of preemption is the basis for the
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judicial exceptions to patentability” and “[f]or this reason, questions on
preemption are inherent in and resolved by the § 101 analysis.” Ariosa
Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015)
(citing Alice, 573 U.S. at 216). Although “preemption may signal patent
ineligible subject matter, the absence of complete preemption does not
demonstrate patent eligibility.” Ariosa, 788 F.3d at 1379.
Appellant argues, “an invention’s ability to run on a general-purpose
computer does not doom the claims if they are directed to an improv[ement]
in the functioning of a computer.” Appeal Br. 4 (citing Enfish, LLC v.
Microsoft Corp., 822 F.3d 1327, 1338 (Fed. Cir. 2016). Appellant argues
that in the present case, “the claims are directed to a specific vehicle
computer system, [and] they improve the vehicle computer system by
utilizing data collected from vehicle sensors to identify when to output
advertisements. Furthermore, the claims utilize various inputs on a vehicle
interface [and] send input that influence[s] other ads.” Appeal Br. 4–5.
This argument is unpersuasive. The limitation of receiving data from
vehicle sensors, as recited in limitation (a), and the limitation of receiving
inputs from a vehicle interface, as recited in limitation (d), do not add
significantly more to the abstract idea because they merely are directed to
insignificant extra-solution activity:
An example of pre-solution activity is a step of gathering data for
use in a claimed process, e.g., a step of obtaining information
about credit card transactions, which is recited as part of a
claimed process of analyzing and manipulating the gathered
information by a series of steps in order to detect whether the
transactions were fraudulent.
MPEP § 2106.05(g).
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Similarly, claim 1’s steps of outputting advertisements and ad
components specifically to a vehicle display, as recited in limitations (c)
and (e), do not add any meaningful limitations to the noted abstract ideas
because they merely constitute the insignificant post-solution activity of
outputting or displaying data. See, e.g., Apple, Inc. v. Ameranth, Inc., 842
F.3d 1229, 1241–42 (Fed. Cir. 2016) (holding that printing or downloading
generated menus constituted insignificant extra-solution activity).
Appellant argues that the Examiner errs in describing the claims at too
high of a level of abstraction, untethered from the language of the claim
when determining the focus of the claimed invention. Appeal Br. 5. This
argument is unpersuasive because the Examiner’s reasoning is not
untethered from the language of the claim. Furthermore, when properly
tethered to the claim language, the level of abstraction at which the
Examiner describes the invention does not change the accuracy of the
Examiner’s determination. Apple v. Ameranth Inc., 842 F.3d 1229, 1240
(Fed. Cir. 2016) (“An abstract idea can generally be described at different
levels of abstraction.”)
Appellant argues that the present claims are directed to an
improvement in computer functionality itself. Appeal Br. 6. This argument
is unpersuasive because Appellant does not sufficiently demonstrate that the
invention entails an improvement to receiver technology, vehicle sensors,
vehicle interfaces, or vehicle displays. Rather, these additional elements
appear to be generic computer components that are used to make more
efficient the abstract ideas of determining driver workloads based upon
contextual data representative of a vehicle’s environment and presenting
certain advertisements based upon what the driver workload is determined to
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be. See Alice, 573 U.S. at 226 (determining that the claim limitations “data
processing system,” “communications controller,” and “data storage unit”
were generic computer components that amounted to mere instructions to
implement the abstract idea on a computer); October 2019 Guidance Update
at 11–12 (recitation of generic computer limitations for implementing the
abstract idea “would not be sufficient to demonstrate integration of a judicial
exception into a practical application”).
For these reasons, Appellant does not persuade us that claim 1 is
directed to an improvement in the function of a computer or to any other
technology or technical field. MPEP § 2106.05(a). Nor does Appellant
persuasively demonstrate that claim 1 is directed to a particular machine or
transformation, or that claim 1 adds any other meaningful limitations for the
purposes of the analysis under Section 101. MPEP §§ 2106.05(b), (c), (e).
Accordingly, Appellant does not persuade us that claim 1 integrates the
recited abstract ideas into a practical application within the meaning of the
2019 Guidance. See 2019 Guidance, 84 Fed. Reg. at 52–55.
STEP 2B:
Under step 2B of the 2019 Guidance, we next analyze whether
claim 1 adds any specific limitations beyond the judicial exception that,
either alone or as an ordered combination, amount to more than “well-
understood, routine, conventional” activity in the field. 2019 Guidance,
84 Fed. Reg. at 56; MPEP § 2106.05(d).
Appellant argues that the Examiner only considered the additional
elements individually, but failed to consider the additional elements in
combination. Appeal Br. 6–7; Reply Br. 2. This argument is unpersuasive.
Appellant’s argument for why the additional elements teach significantly
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more than the abstract idea when considered in combination effectively is
because
[t]he Final Rejection fails to find an anticipatory reference that
discloses each of the limitations. And as further discussed below,
each of the prior art references individually and in combination
fail to disclose the claimed limitations. Thus, the Applicant
confirms that the claims recite aspects that are more than what is
routine or conventional.
Id. at 7.
That is, Appellant is arguing the claim’s patent eligibility based upon
the claim’s novelty. However, “[t]he ‘novelty’ of any element or steps in a
process, or even of the process itself, is of no relevance in determining
whether the subject matter of a claim falls within the § 101 categories of
possibly patentable subject matter.” Diamond v. Diehr, 450 U.S. 175, 188–
89 (1981). A novel and nonobvious claim directed to a purely abstract idea
is, nonetheless, patent ineligible. See Mayo, 566 U.S. at 90.
Appellant argues, “the Examiner’s analysis falls utterly short of
meeting even a reasonable attempt at analyzing the entire combination of
elements as a working series of interoperating parts, by reductively choosing
to refer to the whole claim as mere ‘collecting/receiving data and
comparing/analyzing the data.’” Reply Br. 2 (citing Ans. 8). Appellant
urges, “[a]bsent such a showing, in light of Bascom, Berkheimer[,] and the
two most recent memorandums, Dec 2016 and the April 2018 memorandum
(which instituted new requirements), there is no choice but to conclude that
the claims include the requisite something more and the Examiner must be
reversed.” Id. at 3 (citing Bascom Glob. Internet Servs., Inc. v. AT&T
Mobility LLC, 827 F.3d 1341 (Fed. Cir. 2016), and Berkheimer v. HP Inc.,
881 F.3d 1360, 1368 (Fed. Cir. 2018)).
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This argument is unpersuasive. It is well settled that receiving,
processing, and outputting data are routine and conventional steps. E.g.,
Intellectual Ventures 1 LLC v. Erie Indemnity Co., 850 F.3d 1315, 1329
(Fed. Cir. 2017) (“the remaining limitations recite routine computer
functions, such as the sending and receiving information to execute the
database search”); Electric Power Group, LLC v. Alstom S.A., 830 F.3d
1350, 1355 (Fed. Cir. 2016) (“Nothing in the claims, understood in light of
the specification, requires anything other than off-the-shelf, conventional
computer, network, and display technology for gathering, sending, and
presenting the desired information”); buySAFE, Inc. v. Google, Inc., 765
F.3d 1350, 1355 (Fed. Cir. 2015) (“That a computer receives and sends the
information over a network—with no further specification—is not even
arguably inventive”); Alice, 573 U.S. at 224–26 (basic calculating, receiving,
storing, sending information over networks insufficient to add an inventive
concept).
Furthermore, Appellant’s Specification does not indicate that
consideration of these conventional elements as an ordered combination
adds any significance beyond the additional elements, as considered
individually. Rather, Appellant’s Specification indicates that the invention
is directed to an abstract idea that is made more efficient with generic
computer components—determining when to communicate advertisements
to a driver based on estimates of the driver’s workload and the driver’s
responses. Spec. ¶¶ 4, 17–42, 46.
For these reasons, we determine that claim 1 does not recite additional
elements that, either individually or as an ordered combination, amount to
significantly more than the judicial exception within the meaning of the
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2019 Guidance. 2019 Guidance, 84 Fed. Reg. at 52–55; MPEP
§ 2106.05(d).
Accordingly, we sustain the Examiner’s rejection of claim 1 under
35 U.S.C. § 101 as being directed to an exception to patent-eligible subject
matter without reciting significantly more. We, likewise, sustain the 101
rejection of claims 2–7, 11, 12, 18, and 21–27, which Appellant does not
argue separately. Appeal Br. 7.

THE SECTION 112 REJECTIONS
Claim 18
Independent claim 18 reads as follows, with the disputed term
emphasized:
18. A method, comprising:
receiving an advertisement at vehicle computer system
that includes a plurality of ad components;
outputting a first and second set of ad components to a
vehicle display responsive to a workload value of a driving using
contextual data received from a vehicle sensor falling below a
threshold value, wherein the second set of ad components is
selected from the plurality of ad components and output
responsive to input from a vehicle interface.
The Examiner infers that “a workload of a driving” is not the intended
language, but determines that it is not reasonably clear what term actually is
intended. Final Act. 6. The Examiner acknowledges that it is most probable
that claim language is intended to recite “workload value of a driver.”
Ans. 11. But the Examiner maintains that it also would be reasonable to
interpret the claim alternatively to intend to recite “a workload value of a
drive.” Id. (explaining “as in the vehicle’s drive, or the trip the vehicle is
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currently undertaking, which may include route and driving condition data,
such as how Appellant’s co-pending application 13/873,966 does.”).
Appellant argues
It is apparent to one of skill in the art that when in view of the
other claims and specification, the claims are directed to a
“workload value of a driver.” The Applicant is willing to amend
the claims to recite “a driver” for clarification. The rejection
should nonetheless be reversed, as one of skill in the art can
understand this limitation when read in view of the specification
and corresponding file history.
Appeal Br. 7.
The standard for definiteness under section 112(b) “mandates clarity,
while recognizing that absolute precision is unattainable.” Ex parte
McAward, Appeal No. 2015-006416, 2017 WL 3669566, *4 (PTAB Aug.
25, 2017) (precedential) (internal citations omitted). The standard set forth
in McAward accords with opinions of the Supreme Court stating that “the
certainty [that] the law requires in patents is not greater than is reasonable,
having regard to their subject matter.” Minerals Separation, Ltd. v. Hyde,
242 U.S. 261, 270 (1916).
In the present case, Appellant and the Examiner appear to agree on
what the claim language actually intends to recite, and examination was
even carried out based upon this interpretation. See Final Act. 6 (“For
purposes of examination, [the disputed claim language] is interpreted as ‘. . .
a workload value of a driver using contextual data. . .’”). As such, we
question whether a properly filed after-final claim amendment might have
mooted this indefiniteness rejection and simplified the issues on appeal. See
37 C.F.R. § 1.116(b)(2) (“After a final rejection or other final action . . . in
an application . . . [a]n amendment presenting rejected claims in better form
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for consideration on appeal may be admitted.”). However, no such after-
final amendment was entered into the record, and, instead, we have been
asked to address the propriety of this indefiniteness rejection. We, therefore
turn to the merits.
The Examiner has set forth two plausible interpretations of what the
claim may mean, and these interpretations cover different scopes of claim
protection. The Board has held that language in a claim is not reasonably
clear if it is “is amenable to two or more plausible claim constructions,” Ex
parte Miyazaki, 89 USPQ2d 1207, 1211 (BPAI 2008) (precedential). The
Manual of Patent Examining Procedure also explains, in relation to the
question of indefiniteness,
Although an essential purpose of the examination process is to
determine whether or not the claims define an invention that is
both novel and nonobvious over the prior art, another essential
purpose of patent examination is to determine whether or not the
claims are precise, clear, correct, and unambiguous. The
uncertainties of claim scope should be removed, as much as
possible, during the examination process.
MPEP 2171 (emphasis added).
In order to better ensure that claim 18 timely gets corrected so as to
recite what actually is intended, then, we find it prudent to affirm the
indefiniteness rejection of independent claim 18 and of claims 24–27, which
depend from claim 18.
Claim 26
Dependent claim 26 recites, “[t]he method of claim 18, wherein the
attribute vector data includes an age rating of the advertisement.”
The Examiner finds that neither claim 26, nor claim 18 from which
claim 26 depends, affirmatively sets forth “an attribute vector data.” Final
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Act. 6. The Examiner further finds, “there is no mention in the claims of
ever utilizing this ‘attribute vector data,’ or what its usage is.” Id. Based
upon these findings, the Examiner determines that claim 26 lacks sufficient
antecedent basis for the claim term “the attribute vector data.” Id.
Appellant argues,
As stated in MPEP 2174.05(E), “the mere fact that a term or
phrase used in the claim has no antecedent basis in the
specification disclosure does not mean, necessarily, that the term
or phrase is indefinite.” While the Applicant is willing to amend
the term to “an attribute vector data includes,” the rejection
should nonetheless be reversed, as one of skill in the art can
understand the limitation in view of the specification and
corresponding file history.
Appeal Br. 8.
As with independent claim 18, we find it prudent to affirm the
indefiniteness rejection of claim 26 in order to better ensure that the claim
language timely gets corrected so as to recite what actually is intended.

THE SECTION 103 REJECTIONS
The Rejections
Claims 1–7, 11, 12, 18, 21–25, and 27 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Treyz (US 6,526,335 B1; issued
Feb. 25, 2003), Chapin (US 2002/0069405 A1; published June 6, 2002), and
Kamar (US 2010/0332315 A1; published Dec. 30, 2010). Final Act. 7–17.
Claims 26 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Treyz, Chapin, Kamar, and Official Notices. Final
Act. 17.
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Examiner’s Determinations
The Examiner finds that Treyz teaches a vehicle computer system
comprising a processor configured to “receive contextual data representative
of a vehicle’s environment from one or more vehicle sensors” and “receive
an input using a vehicle interface corresponding to the first set of ad
components.” Final Act. 7. The Examiner finds that Treyz also “teaches a
receiver configured to wirelessly receive at a vehicle a plurality of ad
components for output to a user, the receiver configured to communicate the
advertisement to a processor.” Id. The Examiner further finds that Treyz
teaches “interactive advertisements, but does not specifically teach receiving
a plurality of ad components identifying portions of an advertisement.” Id.
The Examiner finds, “Chapin discloses a computer/set-top box that
performs all of the functional elements of” receiving a plurality of ad
components identifying portions of an advertisement to output to a use, and
communicating the advertisement to a processor, but that Chapin does not
disclose performing this receiving functionality wirelessly in a vehicle. Id.
The Examiner also determines that motivation existed “to simply combine
the functionality of the computer/set-top box disclosed in Chapin with the
computer in a vehicle disclosed in Treyz.” Id. The Examiner additionally
finds that that it would have been obvious to take Chapin’s functionality and
make it portable. Id. at 8 (citing the legal rationale set forth in MPEP
§ 2144.04 (Legal Precedent as Source of Supporting Rationale)).
The Examiner further finds that “Treyz does not specifically teach
determin[ing] a workload value associated with a driver of a vehicle utilizing
the contextual data and the one or more vehicle sensors,” but that “Kamar
teaches determin[ing] a workload value associated with a driver of a vehicle
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utilizing the contextual data and the one or more vehicle sensors.” Id. (citing
Kamar ¶¶ 29, 37–41). The Examiner provides motivation for why it would
have been obvious to include this functionality in the cited prior art. Id.
The Examiner additionally finds that while Treyz teaches outputting
ad components to a vehicle display based on received input, Treyz does not
teach outputting a second set of ad components responsive to the input, as
claimed. Id. Similar as explained above in relation to the output of the first
set of ad components, the Examiner finds that Chapin teaches this
functionality in relation to the second set of ad components, but merely does
not disclose the outputting specifically in the context of a vehicle display.
Id. The Examiner determines that plural motivations, similar to those
discussed above in relation to the first set of ad component, existed for
combining the teachings in relation to claim 1’s last outputting step, as well.
Id. at 9–10.
Appellant’s Contentions and Analysis
Appellant presents multiple arguments in relation to the obviousness
rejection of independent claim 1. We address them seriatim.
Appellant first argues,
the . . . prior art fail to disclose a processor configured to “output
the advertisement and a first set of ad components selected from
the plurality of ad components received at the vehicle to a vehicle
display based on the contextual data and the workload value, the
first set of ad components including a request to interact with a
user” as claim 1 requires.
Appeal Br. 8.
Appellant argues, “Kamara does not disclose that its mobile device
interacts with vehicle sensors and thus does not determine a workload value
utilizing the contextual data and the one or more vehicle sensors as claim 1
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requires.” Id. at 9. According to Appellant, “Kamar[, instead,] utilizes route
variability that a user may travel with their mobile device (see Kamara
paragraph 29).” Id. at 8. Appellant continues, “[i]n fact, paragraph 30
explains the technique utilizes route history from the mobile phone or a
GPS receiver of the mobile phone. Id. at 8–9. To summarize, Appellant
argues that a mobile phone cannot reasonably be interpreted as constituting a
vehicle sensor, as claimed. Id.
This argument is unpersuasive. As the Examiner notes, Appellant’s
Specification expressly defines the claim term “vehicle sensor” as reading
on, inter alia, a mobile phone: “The workload estimator . . . may be in
communication with various vehicle sensors . . . to determine the user’s
attention demand. . . Such sensors may include the windshield wipers, brake
module, headlamps, navigation system, a mobile cell phone, or an off-board
server.” Spec. 41 (emphasis added), cited in Ans. 15.4

4 We note for completeness that this interpretation we adopt today conflicts
with the interpretation of “vehicle sensor” that the Board previously adopted
in another of Appellant’s ex parte appeals. In Ex parte Prakah-Anante,
2016-008398 (PTAB Feb. 14, 2018), this Panel of the Board reversed an
anticipation rejection of a claim over Kamar because we interpreted “vehicle
sensors” to be limited to sensors that were permanent components of the
vehicle, as opposed to reading on, more broadly, cell phones that merely are
within the vehicle. Id. at 10 (“Kamar’s paragraph 39 discusses the use of a
clock, a GPS receiver, and a weather monitoring device, but the passage
does not say that any of these sensors more particularly are vehicle
sensors.”). The Specification associated with the Prakah-Anante appeal,
though, differs from the present Specification. See generally Specification
of Application 13/873,966 (filed April 30, 2013). And unlike the present
Specification, the ’966 Specification does not appear to define a sensor as
reading on a phone. Furthermore, at the time of issuing that Decision, the
Board was unaware that Appellant defines “vehicle sensor” in the broad
manner set forth in the present Specification. Moreover, even if the Board
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Appellant also argues that in contrast to the claims reciting “that a
plurality of ad components are received at the vehicle and then the ad
components are then selected based on contextual data,” . . . “Chapin does
not disclose ‘output the advertisement and a first set of ad components
selected from the plurality of ad components received at the vehicle.’”
Appeal Br. 9. Appellant argues that “Chapin does not disclose receiving any
ad components at the vehicle [or] select[ing] the first or second ad
components from a plurality of ad components received at the vehicle.” Id.
Appellant contends, “Chapin is simply directed to a television system with
advertisements.” Id.
This argument is unpersuasive. As noted above, the Examiner
acknowledges that Chapin does not disclose that that system is
communicating with a vehicle, and the Examiner relies on either Treyz or
Kamar for teaching a communication system for a vehicle. Final Act. 7–10.
One cannot show nonobviousness by attacking references individually
where the rejections are based on combinations of references. See In re
Keller, 642 F.2d 413, 426 (CCPA 1981); In re Merck & Co., Inc., 800 F.2d
1091, 1097 (Fed. Cir. 1986).
Appellant additionally argues that the obviousness rejection is
improper because “the claimed combination would change the principal of
operation of each reference that would require ‘substantial reconstruction’ to
work with a vehicle computer system.” Appeal Br. 9. In support of this
general argument, Appellant argues, “the Rejection utilizes Treyz (a vehicle-
based system), Kamar (a mobile device based system), and Chapin (a

were aware of this difference, it is not clear whether the term “sensor” would
have to be interpreted identically in the respective appeals.
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television based) system to make the claimed combination.” Id. Appellant
asserts, “Kamar’s mobile device is not configured to work with a ‘vehicle
sensor’ to determine contextual data, as it simply utilizes routing data.” Id.
According to Appellant, “[t]o make such a change in a reference’s ‘principle
of operation’ is unlikely to motivate a person of ordinary skill to pursue a
combination with that reference.” Id. (citations omitted).
This argument is unpersuasive. “The test for obviousness is not
whether the features of a secondary reference may be bodily incorporated
into the structure of the primary reference. . . . Rather, the test is what the
combined teachings of the references would have suggested to those of
ordinary skill in the art.” In re Keller, 642 F.2d 413, 425 (CCPA 1981). See
also In re Sneed, 710 F.2d 1544, 1550 (Fed. Cir. 1983) (“[I]t is not necessary
that the inventions of the references be physically combinable to render
obvious the invention under review.”); and In re Nievelt, 482 F.2d 965, 968
(CCPA 1973) (“Combining the teachings of references does not involve an
ability to combine their specific structures.”). Rather, “if a technique has
been used to improve one device, and a person of ordinary skill in the art
would recognize that it would improve similar devices in the same way,
using the technique is obvious unless its actual application is beyond his or
her skill.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007).
For these reasons, we affirm the obviousness rejection of claims 1, as
well as of claims 2–7, 11, 12, 18, 21–25, and 27, which Appellant does not
argue separately. 37 C.F.R. § 41.37(c)(1)(iv).
Appellant also presents separate arguments for dependent claim 26,
which claim reads as follows: “The method of claim 18, wherein the
attribute vector data includes an age rating of the advertisement.”
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The Examiner rejects this claim over the combination of Treyz,
Chapin, and Kamar, as explained above, and further in view of Official
Notice of that which was well known at the time of the invention. Final
Act. 17. Appellant only argues that claim 26 is allowable because the
Examiner takes Official Notice, and “the Examiner has failed to show any
reference or notice of ‘attribute vector data’ that includes an age rating of the
advertisement.” Appeal Br. 10.
This argument is unpersuasive because taking Official Notice, by
definition, entails not providing any reference in support of one or more
particular facts. And here, the Examiner did set forth an explanation of what
facts are being asserted as known. More specifically, the Examiner takes
Official Notice “that it is old and well known in the art for an advertisement
to have an age rating attribute . . . . so the advertisement can be targeted to
the proper demographic.” Final Act. 17. The Examiner determines that it
would have been obvious to include such attribute vector data to “help to
provide more relevant advertisements to the user and provoke more user
interactions with the advertisement.” Id.
Because Appellant does not set forth persuasive evidence or argument
for why the Examiner’s taking of Official Notice is improper, we affirm the
obviousness rejection of claim 26. See MPEP § 2144.03(C) (“To adequately
traverse such a finding, an applicant must specifically point out the supposed
errors in the examiner’s action, which would include stating why the noticed
fact is not considered to be common knowledge or well-known in the art.”).

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DECISION SUMMARY
In summary:

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). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED

Claims
Rejected
35 U.S.C. § References/
Basis
Affirmed Reversed
18, 24–27 112(b) Indefiniteness 18, 24–27
1–7, 11, 12, 18,
21–27
101 Eligibility 1–7, 11, 12,
18,
21–27

1–7, 11, 12, 18,
21–25, 27
103 Treyz, Chapin,
Kamar
1–7, 11, 12,
18, 21–25, 27

26 103 Treyz, Chapin,
Kamar,
Official
Notice
26
Overall
Outcome
1–7, 11, 12,
18,
21–27