MUKHOPADHYAY, Aveek et al.

Patent Trials and Appeals Board

Sep 18, 2020

13413226 - (D) (P.T.A.B. Sep. 18, 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.
13/413,226 03/06/2012 Aveek MUKHOPADHYAY 20110704 8433
170055 7590 09/18/2020
VERIZON - HH
VERIZON PATENTING GROUP
1300 I STREET NW
SUITE 500 EAST
WASHINGTON, DC 20005
EXAMINER
NGUYEN, NGA B
ART UNIT PAPER NUMBER
3683
NOTIFICATION DATE DELIVERY MODE
09/18/2020 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):
VZPatent170055@verizon.com
ptomail@harrityllp.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte AVEEK MUKHOPADHYAY,
SUYASH KUMAR SINGH,
JUBISH CHERIYA PARAMBATH,
ANAND SANKARAN,
and MUHAMMED SHAPHY
____________

Appeal 2019-001592
Application 13/413,226
Technology Center 3600
____________

Before MURRIEL E. CRAWFORD, ANTON W. FETTING, and
CYNTHIA L. MURPHY, Administrative Patent Judges.

FETTING, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE1
Aveek Mukhopadhyay, Suyash Kumar Singh, Jubish Cheriya
Parambath, Anand Sankaran, and Muhammed Shaphy (Appellant2) seek
review under 35 U.S.C. § 134 of a final rejection of claims 1, 3–5, 9–14, 16,
and 18–26, 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 providing advertisements to multiple
devices via screens or displays associated with the devices. Specification
Title; para. 10.
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 comprising:
[1] receiving, by a server device and via a network, a first
request from a set-top box of a user, the set-top box being
associated with a set-top box identifier;
[2] selecting, by the server device, a first advertisement based
on the first request;
[3] transmitting, by the server device and via the network, the
first advertisement to the set-top box;
[4] updating, by the server device, an indicator to indicate that
the first advertisement has been transmitted to the set-top box;

1 Our decision will make reference to the Appellant’s Appeal Brief (“App.
Br.,” filed July 5, 2018) and Reply Brief (“Reply Br.,” filed December 10,
2018), and the Examiner’s Answer (“Ans.,” mailed October 23, 2018), and
Final Action (“Final Act.,” mailed March 22, 2018).
2 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 Verizon
Communications Inc (Appeal Br. 3).

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[5] receiving, by the server device and via the network based on
transmitting the first advertisement to the set-top box, a second
request from a user device of the user, the second request
including a user identifier and a user device identifier;
[6] determining, by the server device and based on the user
identifier, the user device identifier, and the set-top box
identifier, that the user device and the set-top box are associated
with the user;
[7] determining, by the server device, profile information
associated with the user based on the user identifier, the user
device identifier, and the set-top box identifier, the profile
information including capabilities information identifying
capabilities of the user device;
[8] determining, by the server device, that the server device
transmitted the first advertisement to the set-top box based on
the indicator;
[9] selecting, by the server device, a second advertisement, for
the user device, based on determining that the server device has
transmitted the first advertisement to the set-top box;
[10] customizing, by the server device, the second
advertisement for the user device based on the profile
information, customizing the second advertisement comprising:
including a video, into the second advertisement, based
on the profile information indicating that the user prefers
advertisements with video,
including a first user interface element, into the second
advertisement, that allows the user to initiate a
transaction associated a particular item,
and
including a second user interface element, into the second
advertisement, that causes dismissal of the second
advertisement;
[11] transmitting, by the server device, via the network, and
after customizing the second advertisement, the second
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advertisement to the user device, the first advertisement and the
second advertisement advertising the particular item;
[12] receiving, by the server device and via the network, a
message regarding a selection of the first user interface element
or the second user interface element;
and
[13] performing, by the server device and based on the message
indicating a selection of the first user interface element, an
action that initiates the transaction associated with the particular
item.
Claims 1, 3–5, 9–14, 16, and 18–26 stand rejected under 35 U.S.C. §
101 as directed to a judicial exception without significantly more.
ISSUES
The issues of eligible subject matter turn primarily on whether the
claims recite more than abstract conceptual advice of results desired.
ANALYSIS
STEP 13
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, . . .

3 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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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
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.
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STEP 2A Prong 1
At a high level, and for our preliminary analysis, we note that method
claim 1 recites receiving request data; selecting and transmitting ad data;
updating indicator data; receiving ad data; determining identifier, profile and
transmission data; selecting, customizing, and transmitting ad data; receiving
message data; and performing some action that initiates a transaction.
Selecting and determining data are rudimentary forms of analysis.
Customizing data is modifying data. Performing an action that initiates
something in a computer is generating software instruction data. Thus,
claim 1 recites receiving, analyzing, transmitting, updating, and generating
data. None of the limitations recites 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
include (1) mathematical concepts4, (2) certain methods of organizing
human activity5, and (3) mental processes6. Among those certain methods

4 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).
5 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.
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of organizing human activity listed in the Revised Guidance are commercial
or legal interactions. Like those concepts, claim 1 recites the concept of
managing advertising information. Specifically, claim 1 recites operations
that would ordinarily take place in advising one to generate a customized ad
that induces some transaction based on viewer data and a prior ad. The
advice to generate a customized ad that induces some transaction based on
viewer data and a prior ad involves selecting an ad, which is an economic
act, and transmitting an ad, which is an act ordinarily performed in the
stream of commerce. For example, claim 1 recites “selecting . . . a first
advertisement,” which is an activity that would take place whenever one is
managing advertising information in commerce. Similarly, claim 1 recites
“transmitting . . . the second advertisement,” which is also characteristic of
commercial advertising.
The Examiner determines the claims to be directed to advertising,
marketing, and sales activities or behaviors. Final Act. 4.
The preamble to claim 1 does not recite what it is to achieve, but the
steps in claim 1 result in managing advertising information by generating a
customized ad that induces some transaction based on viewer data and a
prior ad absent any technological mechanism other than a conventional
computer for doing so.
As to the specific limitations, limitations 1 and 5 recite receiving data.
Limitations 2–4 and 6–13 recite generic and conventional analyzing,

2017); In re Marco Guldenaar Holding B.V., 911 F.3d 1157, 1160–61 (Fed.
Cir. 2018).
6 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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transmitting, updating, and generating advertising data, which advise one to
apply generic functions to get to these results. The limitations thus recite
advice for generating a customized ad that induces some transaction based
on viewer data and a prior ad. To advocate generating a customized ad that
induces some transaction based on viewer data and a prior ad is conceptual
advice for results desired and not technological operations.
The Specification Title and paragraph 10 each describes the invention
as relating to providing advertisements to multiple devices via screens or
displays associated with the devices. Thus, all this intrinsic evidence shows
that claim 1 recites managing advertising information. 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 managing advertising
information is a way to induce commercial sales transactions. The concept
of managing advertising information by generating a customized ad that
induces some transaction based on viewer data and a prior ad is one idea for
inducing such behavior. 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).
Alternately, this is an example of concepts performed in the human
mind as mental processes because the steps of receiving, analyzing,
transmitting, updating, and generating 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.
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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 reception, analysis,
transmission, update, and generation 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 receiving, analyzing,
transmitting, updating, and generating data, and not a technological
implementation or application of that idea.
From this we conclude that at least to this degree, claim 1 recites
managing advertising information by generating a customized ad that
induces some transaction based on viewer data and a prior ad, 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.7
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

7 See, e.g., Alice, 573 U.S. at 223, discussing Diamond v. Diehr, 450 U.S.
175 (1981).
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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 and 5 are pure data gathering
steps. Limitations describing the nature of the data do not alter this. Steps
3, 4, and 10–13 recite basic conventional data operations such as generating,
updating, transmitting, and storing data. Steps 2 and 6–9 recite generic
computer processing expressed in terms of results desired by any and all
possible means and so present no more than conceptual advice. The step 13
recital of “performing . . . an action that initiates the transaction” on its face
recites simply initiating rather than performing some action. As such an
action is a computer implemented transaction, initiating such an action, as
with any computer implemented action, is simply generating some program
instruction data for execution. The claim does not even narrow how specific
the initiating action is to the nature of the transaction, and encompasses even
generic instruction register processing that would necessarily begin any
computer code instruction. All purported inventive aspects reside in how the
data is interpreted and the results desired, and not in how the process
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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
managing advertising information by generating a customized ad that
induces some transaction based on viewer data and a prior ad 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 does not recite any particular implementation.
Claim 1 does not, for example, purport to improve the functioning of
the computer itself. Nor does it affect an improvement in any other
technology or technical field. The Specification only spells out different
generic equipment8 and parameters that might be applied using this concept
and the particular steps such conventional processing would entail based on
the concept of managing advertising information by generating a customized
ad that induces some transaction based on viewer data and a prior ad 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 managing advertising
information by generating a customized ad that induces some transaction
based on viewer data and a prior ad 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.

8 The Specification describes a computation or communication device that
is capable of communicating with service provider network. Spec. para.
18.
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None of the limitations reflects 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
managing advertising information by advising one to generate a customized
ad that induces some transaction based on viewer data and a prior ad, as
distinguished from a technological improvement 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.
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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.
Taking the claim elements separately, the function performed by the
computer at each step of the process is purely conventional. (See Spec.,
paragraphs 58–69, 82, Figs. 5, 8E.) Using a computer for receiving,
analyzing, transmitting, updating, and generating data amounts to electronic
data query and retrieval—one of the most basic functions of a computer. As
such an action is a computer implemented transaction, initiating such an
action, as with any computer implemented action, is simply generating some
program instruction data for execution. 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
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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. (See Spec., paragraphs 16–24, Fig. 2.) The
sequence of data reception-analysis-transmission-update-generation 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 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.
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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. As a corollary, the claims are not directed to any
particular machine.
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 managing advertising information by advising one to
generate a customized ad that induces some transaction based on viewer data
and a prior ad, without significantly more.
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APPELLANT’S ARGUMENTS
As to Appellant’s Appeal Brief arguments, we have carefully
reviewed the Examiner’s determinations and analysis from Final Action 2–7
and Answer 3–16, and, per this review, we adopt the same and reach similar
legal conclusions. We now turn to the Reply Brief.
We are not persuaded by Appellant's argument that “the claims are
directed to patent-eligible subject matter because the claims improve the
associated server and device technology.” Reply Br. 2. To support this,
Appellant contends the Specification describes how the invention answers
problems of viewer attention by allowing ads on multiple devices. Reply Br.
3. Appellant concludes “sections of the specification discuss one or more
solutions directed to improving upon conventional ways of advertising via
television technology.” Reply Br. 4. Appellant further concludes that
the claim provides a particular solution to address the
technological limitations of conventional advertising via
television technology that make it difficult to determine
whether a viewer has missed or ignored advertisements that are
displayed on television screens because they are looking at
screens of other devices while the advertisements are displayed.
Reply Br. 5.
Problems of viewer attention are sociological and marketing
management problems, not technological problems. Allowing ads on
multiple devices is a marketing tactic, not a technological result. Improving
upon conventional advertising is an improvement in the marketing arts, not
the technological arts. As we determine supra, claim 1 recites only generic
receiving, analyzing, transmitting, updating, and generating data. The
solution is particular only in the sense it is described with particular words.
Somehow addressing limitations of conventional advertising with television
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technology is not per se providing a technological solution. Instead, it is
conceptually responding to the context in which such advertising occurs.
None of the limitations recites technological implementation details for any
of these steps, but instead recites only results desired by any and all possible
means. No technological solution is recited in the claims to the marketing
problems the Specification describes. The arguments presented on Reply
Brief 5–8 are repetitions of these arguments and are equally unpersuasive.
We are not persuaded by Appellant's argument under the heading
“Response to examiner's argument regarding Affinity Labs, including
claimed features are not similar concepts to the claims at issue in Affinity
Labs.” Reply Br. 8. This argument refers to Affinity Labs of Texas, LLC v.
Amazon.com Inc., 838 F.3d 1266 (Fed. Cir. 2016). The claims in Affinity
Labs were directed to tailoring of a user interface which the court likened to
tailoring of content based on information about the user. Affinity Labs,
838 F.3d at 1271. The instant claim is similar in that the ads are tailored to a
user and the ads are content.
We are not persuaded by Appellant's argument that
the claim goes beyond merely delivering user-selected media
content to portable devices by disclosing, for example,
“performing, by element, an action that initiates the transaction
associated with the particular item,” as recited in claim 1. These
features go above and beyond being “directed to” delivering
user-selected media content to portable devices.
Reply Br. 9. First, executing some generic transaction by computer is
conventional data processing. This is a conceptual idea for doing so rather
than a technological implementation for performing a transaction. Further,
as we determine supra, the claim recites no more than performing some
generic action that only initiates a transaction. Every computer implemented
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process is initiated by generating the computer instruction that is the first
step in the chain of instructions for the process. Thus, this argued step
recites no more than conventional instruction generation.
We are not persuaded by Appellant's argument that the “claimed
features are not similar concepts to the claims at issue in Intellectual
Ventures.” Reply Br. 10 (emphasis omitted). Appellant refers to
Intellectual Ventures I LLC v. Capital One Bank (USA), 792 F.3d 1363 (Fed.
Cir. 2015). This is the case the court in Affinity Labs referred to supra as
determining that tailoring of content based on information about the user
is an abstract idea example. Appellant again argues that the final claim 1
limitation of initiating a transaction adds more to the concept enunciated in
Intellectual Ventures, and this argument is equally unpersuasive here.
Simply adding one ineligible concept to another is insufficient. “Adding one
abstract idea . . . to another abstract idea . . . does not render the claim
nonabstract.” RecogniCorp, LLC v. Nintendo Co., Ltd., 855 F.3d 1322, 1327
(2017).
Appellant argues that the asserted claims are akin to the claims
found patent-eligible in Finjan, Inc. v. Blue Coat System, Inc., 879 F.3d
1299 (Fed. Cir. 2018). Reply Br. 13–17. In Finjan, the Court held that
claims to a “behavior-based virus scan” were a specific improvement in
computer functionality and hence not directed to an abstract idea. 879 F.3d
at 1304. The claimed technique of scanning enabled “more flexible and
nuanced virus filtering” and detection of potentially dangerous code. Id.
This was done by “scanning a downloadable and attaching the results of that
scan to the downloadable itself in the form of a ‘security profile.’” Id. at
1303. The security profile included the information about potentially hostile
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operations produced by a “behavior-based” virus scan, as distinguished from
traditional, “code-matching” virus scans that are limited to recognizing the
presence of previously-identified viruses, typically by comparing the code in
a downloadable to a database of known suspicious code. Id. at 1304. This
behavior-based scan was a new type of file that when attached to a
downloadable allowed the computer to do more to protect itself than in the
past.
The instant claims present no such new type of processing to create a
file that improves computer performance. Instead, the claims are
conventional data processing of advertising data. They may improve
advertising selection, but this is improving advertising management, not an
improvement to the computer or technology.
Appellant further argues that the asserted claims are akin to the
claims found patent-eligible in Core Wireless Licensing S.A.R.L. v. LG
Elecs., Inc., 880 F.3d 1356 (Fed. Cir. 2018). Reply Br. 13–17. But the
Court in Trading Techs. Int’l, Inc. v. IBG LLC addressed Appellant’s Core
Wireless argument.
Relying principally on Core Wireless, TT argues the claimed
invention provides an improvement in the way a computer
operates. We do not agree. The claims of the ’999 patent do not
improve the functioning of the computer, make it operate more
efficiently, or solve any technological problem. Instead, they
recite a purportedly new arrangement of generic information
that assists traders in processing information more quickly.
Trading Techs. Int’l, Inc. v. IBG LLC, 921 F.3d at 1093 (citations omitted).
The instant claims do not improve the functioning of the computer, make it
operate more efficiently, or solve any technological problem. Instead, they
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recite a purportedly new arrangement of generic information that assists
users in processing information more quickly.
We are not persuaded by Appellant’s argument that the claims are
analogous to those in Enfish, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed.
Cir. 2016). Reply Br. 17–18. The claims differ from those found patent
eligible in Enfish, where the claims were “specifically directed to a self-
referential table for a computer database.” 822 F.3d 1327, 1337 (Fed. Cir.
2016). The claims thus were “directed to a specific improvement to the
way computers operate” rather than an abstract idea implemented on a
computer. Id. at 1336. Here, by contrast, the claims are not directed to
an improvement in the way computers operate. Though the claims
purport to accelerate and more accurately perform the process of ad
selection, our reviewing court has 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.” Bancorp Servs., L.L.C. v. Sun Life Assurance Co. of Can. (U.S.),
687 F.3d 1266, 1278 (Fed. Cir. 2012). Instead, the claims are more
analogous to those in FairWarning, supra, wherein claims reciting “a few
possible rules to analyze audit log data” were found directed an abstract
idea because they asked “the same questions (though perhaps phrased
with different words) that humans in analogous situations detecting fraud
have asked for decades.” 839 F.3d at 1094, 1095.
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). Reply Br. 18–19. In DDR Holdings,
the Court evaluated the eligibility of claims “address[ing] the problem of
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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 a t 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.
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,
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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
receiving, analyzing, transmitting, updating, and generating data. This is
precisely the type of Internet activity found ineligible in Ultramercial.
We are not persuaded by Appellant’s argument that the claims contain
an inventive concept that is also found in the specific ordered combination
of the limitations, similar to the Federal Circuit's findings in BASCOM
(BASCOM Global Internet v. AT&T Mobility LLC, 827 F.3d 1341 (Fed. Cir.
2016)). Reply Br. 18–19; 24–26. Initially, we remind Appellant that
BASCOM did not find claims eligible on the substance, but rather that the
Appellees did not provide sufficient evidence to support a 12(b)(6) motion to
dismiss in which facts are presumed in the non-movant’s favor.
The key fact in BASCOM was the presence of a structural change in
“installation of a filtering tool at a specific location, remote from the end-
users, with customizable filtering features specific to each end user. This
design gives the filtering tool both the benefits of a filter on a local computer
and the benefits of a filter on the ISP server.” BASCOM, 827 F.3d at 1350.
The instant claims have no analogous structural benefit.
Appellant also attempts to analogize the claims to those involved in
McRO, Inc. v. Bandai Namco Games America Inc., supra. Reply Br. 21–
24. In McRO, the court held that, although the processes were previously
performed by humans, “the traditional process and newly claimed method .
. . produced . . . results in fundamentally different ways.” FairWarning,
839 F.3d at 1094 (differentiating the claims at issue from those in
McRO). In McRO, “it was the incorporation of the claimed rules not the
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use of the computer, that improved the existing technology process,”
because the prior process performed by humans “was driven by subjective
determinations rather than specific, limited mathematical rules.” 837 F.3d
at 1314 (internal quotation marks, citation, and alterations omitted). In
contrast, the claims of the instant application merely implement an old
practice of using decision criteria in making advertising decisions in a new
environment. Appellant has not argued that the claimed processes of
selecting ads apply rules of selection in a manner technologically different
from those which humans used, albeit with less efficiency, before the
invention was claimed. Merely pigeon holing the objects of decision making
in tiers to aid decision making is both old and itself abstract.
The claims in McRO were not directed to an abstract idea, but
instead were directed to “a specific asserted improvement in
computer animation, i.e., the automatic use of rules of a
particular type.” We explained that “the claimed improvement
[was] allowing computers to produce ‘accurate and realistic lip
synchronization and facial expressions in animated characters’
that previously could only be produced by human animators.”
The claimed rules in McRO transformed a traditionally
subjective process performed by human artists into a
mathematically automated process executed on computers.
FairWarning, 839 F.3d at 1094 (differentiating the claims at issue
from those in McRO).
We are not persuaded by Appellant's argument that
rather than responding to Appellant's specific arguments, the
Examiner responded with generic conclusory statements as
shown above. However, such conclusory statements are non-
responsive to Appellant's specific arguments that claim 1 upon
the technical field of advertising via television technology
because the Examiner's statements fail to rebut as to why the
technical field is not improved.
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Reply Br. 28. Again, advertising is a marketing rather than a technological
field. Advertising in the context of television does not alter this. “The
Supreme Court and this court have repeatedly made clear that merely
limiting the field of use of the abstract idea to a particular existing
technological environment does not render the claims any less abstract.”
Affinity Labs, 838 F.3d at 1258. And again, the absence of technological
implementations in the claims leaves the claims reciting only conceptual
ideas using conventional computer operations.
At that level of generality, the claims do no more than
describe a desired function or outcome, without providing any
limiting detail that confines the claim to a particular solution
to an identified problem. The purely functional nature of the
claim confirms that it is directed to an abstract idea, not to a
concrete embodiment of that idea.
Affinity Labs, 838 F.3d at 1269.
Appellant cites Berkheimer for the proposition that evidence of
something being conventional is necessary. Berkheimer v. HP Inc., 881
F.3d1360 (Fed. Cir. 2018). Reply Br. 29–31. Support for this finding is
provided under Step 2B supra.
CONCLUSIONS OF LAW
The rejection of claims 1, 3–5, 9–14, 16, and 18–26 under 35 U.S.C. §
101 as directed to a judicial exception without significantly more is proper.
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CONCLUSION
The rejection of claims 1, 3–5, 9–14, 16, and 18–26 is affirmed.
In summary:
Claims
Rejected
35 U.S.C. § Basis Affirmed Reversed
1, 3–5, 9–14,
16, 18–26
101 Eligibility 1, 3–5, 9–14,
16, 18–26

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).

AFFIRMED