Philip Scott. Lyren

Patent Trials and Appeals Board

Apr 10, 2020

13868108 - (D) (P.T.A.B. Apr. 10, 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.
13/868,108 04/23/2013 Philip Scott Lyren PSL-022 9465
64021 7590 04/10/2020
PHILIP S. LYREN, PC
289 Woodland Avenue
Wadsworth, OH 44281
EXAMINER
BOYCE, ANDRE D
ART UNIT PAPER NUMBER
3623
MAIL DATE DELIVERY MODE
04/10/2020 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PHILIP SCOTT LYREN
Appeal 2018-006977
Application 13/868,108
Technology Center 3600
Before ST. JOHN COURTENAY III, JENNIFER L. McKEOWN, and
SCOTT E. BAIN, Administrative Patent Judges.

BAIN, Administrative Patent Judge.
DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision to reject claims 1–20, which constitute all claims pending in the
application. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies the real party in interest as Four Mile Bay,
LLC. Appeal Br. 2.
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BACKGROUND
The Claimed Invention
The invention relates to targeted advertising while preserving privacy,
and specifically, to analyzing a user’s private information “to predict a
product that the user desires to purchase . . . without disclosing any of the
private information to a third party[,] including the advertiser.” Spec. 3.
Claims 1, 8, and 15 are independent. Claim 1 is illustrative of the invention
and the subject matter in dispute, and reads as follows:
1. A method executed by a user agent that executes on a
handheld portable electronic device to determine a product that
a user desires based on private information about the user
without disclosing the private information to any party except
the user and the user agent, the method comprising:
receiving, by the user agent that executes on the handheld
portable electronic device and from the user, authorization for
the user agent to collect the private information about the user
and instructions to maintain a secrecy of the private information
and not disclose the private information to any third party since
the private information is prohibited from being disclosed to
any third party except the user and the user agent;
obtaining, by the user agent that executes on the
handheld portable electronic device, the private information
about the user;
determining, by the user agent that executes on the
handheld portable electronic device, that the private information
is restricted from being disclosed to any party except the user
and the user agent;
analyzing, by the user agent that executes on the
handheld portable electronic device, the private information in
order to predict the product that the user desires to purchase
without disclosing any of the private information to a third
party including an advertiser;
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providing, by the user agent that executes on the
handheld portable electronic device, an identity of the user and
an identity of the product to an advertiser without disclosing
any of the private information to the third party including the
advertiser; and
displaying, on the handheld portable electronic device,
an advertisement for the product received from the advertiser
without disclosing any of the private information to the third
party including the advertiser, wherein the user agent is an
intelligent personal assistant of the user.
Appeal Br. 29–30 (Claims Appendix) (emphases added).
References
The references relied upon by the Examiner are:
Name Reference Date
Zaika et al. (“Zaika”) US 2011/0314375 A1 Dec. 22, 2011
Adams US 2013/0159132 A1 Jun. 20, 2013
Le Jouan US 2013/0318199 A1 Nov. 28, 2013
Brown US 8,150,791 B2 Apr. 3, 2012
Moissinac et al.
(“Moissinac”)
US 8,301,499 B2 Oct. 30, 2012

The Rejections on Appeal
Claims 1–4, 6, 7, and 15–20 stand rejected under 35 U.S.C. § 101 as
being directed to patent-ineligible subject matter. Final Act. 2–6.
Claims 1, 3, 6, 15, 18, and 19 stand rejected under 35 U.S.C. § 103 as
unpatentable over Le Jouan and Brown. Final Act. 6–14.
Claims 2 and 17 stand rejected under 35 U.S.C. § 103 as unpatentable
over Le Jouan, Brown, and Moissinac. Final Act. 14–16.
Claims 4, 7, and 16 stand rejected under 35 U.S.C. § 103 as
unpatentable over Le Jouan, Brown, and Adams. Final Act. 16–18.
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Claims 5 and 20 stand rejected under 35 U.S.C. § 103 as unpatentable
over Le Jouan, Brown, and Zaika. Final Act. 18–20.
Claims 8–10 and 12–14 stand rejected under 35 U.S.C. § 103 as
unpatentable over Le Jouan, Zaika, and Adams. Final Act. 20–28.
Claim 11 stands rejected under 35 U.S.C. § 103 as unpatentable over
Le Jouan, Zaika, Adams, and Moissinac. Final Act. 28–29.
DISCUSSION
We have reviewed the Examiner’s rejections in light of Appellant’s
arguments presented in this appeal. Arguments which Appellant could have
made but did not make in the Briefs are deemed to be waived. See 37 C.F.R.
§ 41.37(c)(1)(iv). On the record before us, Appellant has not persuaded us
of error in the Examiner’s patent eligibility rejection. To the extent
consistent with our discussion below, we adopt as our own the findings and
reasons set forth in that rejection and in the Examiner’s Answer. We are
persuaded of error, however, as to the obviousness rejections, for the reasons
set forth below.
Rejection Under 35 U.S.C. § 101
The Examiner determined that the claims are directed to targeted
advertising without disclosing a user’s private information to the advertiser,
which the Examiner determined is a method of organizing human activity
and, accordingly, constitutes an abstract idea. Ans. 9–10; Alice Corp. v. CLS
Bank lnt’l, 573 U.S. 208, 217 (2014) (describing two-step framework “for
distinguishing patents that claim laws of nature, natural phenomena, and
abstract ideas from those that claim patent-eligible applications of those
concepts”). Further, the Examiner found that additional elements in the
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claims merely constituted conventional steps performed on a generic
computer, and therefore did not include additional elements sufficient to
amount to significantly more than the abstract idea. Ans. 10–13.
Accordingly, the Examiner concluded that the claims constitute ineligible
subject matter.
Appellant argues that claim 1 is not abstract because it involves
“authorization” and “obtaining . . . private information” about a user, and
therefore is directed to more than advertising. Appeal Br. 9–11. Appellant
contends claim 1 “focus[es] on a user agent.” Id. 10. Additionally, as
discussed further below, Appellant argues the claim 1 includes “significantly
more” than the alleged abstract idea because it solves a technical problem
related to Internet security. Appeal Br. 12.
After the Briefs were filed and Answer mailed in this case, the
USPTO published “Revised Subject Matter Eligibility Guidance”
synthesizing case law and providing agency instruction on the application of
§ 101. See USPTO’s January 7, 2019, 2019 Revised Patent Subject Matter
Eligibility Guidance 84 Fed. Reg. 50 (Jan. 7, 2019) (“Guidance”). Under the
Guidance, we must look to whether a claim recites:
(1) any judicial exceptions, including certain groupings of
abstract ideas (i.e., mathematical concepts, certain methods of
organizing human activity such as a fundamental economic
practice, or mental processes) (“Step 2A, Prong One”); and
(2) additional elements that integrate the judicial exception into
a practical application (see MPEP § 2106.05(a)–(c), (e)–(h))
(“Step 2A, Prong Two”).
See 84 Fed. Reg. at 54–55.
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Only if a claim recites a judicial exception and does not integrate that
exception into a practical application, do we then look to whether the claim:
(3) adds a specific limitation beyond the judicial exception that
is not “well-understood, routine, conventional” in the field (see
MPEP § 2106.05(d)); or
(4) simply appends well-understood, routine, conventional
activities previously known to the industry, specified at a high
level of generality, to the judicial exception.
See id. at 56 (collectively “Step 2B”).
We begin our review with Step 2A, Prong One of the Guidance, as
applied to Appellant’s claim 1.2 As the Examiner determined and the
preamble recites, claim 1 is directed to “determin[ing] a product that a user
desires to purchase based on private information about the user without
disclosing the private information,” i.e., to targeted advertising. Advertising
activity is one of the methods of organizing human activity deemed abstract
under the Guidance. Claim 1 further recites the following steps: (1)
“receiving” authorization to collect information; (2) “obtaining” private
information; (3) “determining” if the “private information is restricted;” (4)
“analyzing” the private information to predict a desirable product for the
user; (5) “providing” the user and targeted product identity to an advertiser;
and (6) “displaying” the product advertisement to the user. Appeal Br. 29–
30 (Claims Appendix). We agree with the Examiner’s determination that

2 The Guidance refers to “Step One” as determining whether the claimed
subject matter falls within the four statutory categories identified by
35 U.S.C. § 101: process, machine, manufacture, or composition of matter.
This step is not at issue in this case.
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the foregoing steps also constitute a method of organizing human activity,
for the following reasons.
Steps (4), (5), and (6), like the preamble, recite targeted advertising,
namely, analyzing information to determine an advertisement appropriate for
a user, providing the information to an advertiser, and displaying the
advertisement. Steps (1), (2), and (3) recite “receiving,” authorization,
“obtaining” data, and “determining” (i.e., analyzing) the data. See supra.
These steps merely constitute data collection and processing for advertising,
and do not “change its character as information,” which is “within the realm
of abstract ideas.” See, e.g., Electric Power Group, LLC, v. Alstom S.A., 830
F.3d 1350, 1353–54 (Fed. Cir. 2016). Moreover, to the extent the data
processing steps in claim 1 are performed by a third-party intermediary,
which keeps the user’s private information from being seen by the
advertiser, the use of an intermediary is still a method of organizing human
activity (i.e., managing relationships, or fundamental economic practice).
Accordingly, we determine that, like the claims to targeted
advertising in Affinity Labs, the claims to hedging in Bilski, and the claims to
mitigating settlement risk in Alice, claim 1 recites a method of organizing
human activity deemed to be an abstract idea under the Guidance. See
Affinity Labs of Texas, LLC v. Amazon.com Inc., 838 F.3d 1266, 1267–69
(Fed. Cir. 2016) (“the patent [is] directed to a ‘method for targeted
advertising’ in which an advertisement is selected for delivery to the user of
a portable device based on at least one piece of demographic information
about the user”); Bilski v. Kappos, 561 U.S. 593 (2010); Alice, 573 U.S. 208.
We next proceed to Step 2A, Prong 2 of the Guidance. Under this
step, if the claim “as a whole” integrates the abstract idea into a “practical
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application,” it is patent eligible. Appellant argues that claim 1 “solves a
“technical” problem of “Internet privacy” by utilizing “security” technology.
Appeal Br. 12–13; see, e.g., DDR Holdings, LLC v. Hotels.com, L.P., 773
F.3d 1245 (Fed. Cir. 2014); Bascom Global Internet Servs., Inc. v. AT&T
Mobility LLC, 827 F.3d 1341 (Fed. Cir. 2016).
Improving the functioning of a computer can reflect integration of an
idea into a “practical application.” Guidance Sect. III. Appellant, however,
does not explain, and we do not discern, any improvement in technology
from the claimed invention. Compare Bascom, 827 F.3d at 1350
(“harness[ing a] technical feature of network technology in a filtering
system” to customize content filtering); DDR, 773 F.3d at 1258 (Fed. Cir.
2014) (“the claims at issue here specify how interactions with the Internet
are manipulated to yield a desired result––a result that overrides the routine
and conventional sequence of events ordinarily triggered by the click of a
hyperlink.”) (emphasis added). The claims in Bascom and DDR, for
example, were “necessarily rooted in computer technology in order to
overcome a problem specifically arising in the realm of computer networks,”
see, e.g., DDR, 773 F.3d at 1257, but Appellant’s claim 1 recites a targeted
advertising method that merely uses generic computing elements to
constitute an agent, or intermediary, for assisting in the advertising. See e.g.,
Spec. 5–6. The Specification describes the invention as being implemented
on a standard “computer system” including a “processor,” “memory,”
“storage,” and “networks.” Id.
Appellant also does not direct us to any evidence that claim 1 recites
any unconventional rules, transforms or reduces an element to a different
state or thing, or otherwise integrates the idea into a practical application.
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Rather, claim 1 recites targeted advertising by collecting user data,
“determining” its privacy, and “analyzing” the data to determine product
recommendations. Appeal Br. 29–30 (Claims Appendix). Reciting a result-
oriented solution that lacks any details as to how the computer performed the
modifications is the equivalent of the words “apply it.” Intellectual Ventures
I LLC v. Capital One Fin. Corp., 850 F.3d 1332, 1341–42 (Fed. Cir. 2015)
(citing Elec. Power Grp., LLC, v. Alstrom S.A., 830 F.3d 1350, 1356 (Fed.
Cir. 2016) (cautioning against claims “so result focused, so functional, as to
effectively cover any solution to an identified problem”)); see also
CyberSource v. Retail Decisions, Inc., 654 F.3d 1366, 1375 (Fed. Cir. 2011)
(mere data gathering does not make a claim patent-eligible). The data
gathering and processing steps in claim 1 do not add meaningfully to the
recited advertising activity.
Finally, under Step 2B of the Guidance, we must look to whether the
claims include any “additional limitation that is not well-understood, routine
[or] conventional.” The “question of whether a claim element or
combination of elements is well-understood, routine and conventional to a
skilled artisan in the relevant field is a question of fact.” Berkheimer v. HP
Inc., 881 F.3d 1360, 1368 (Fed. Cir. 2018); see also Mortg. Grader, Inc. v.
First Choice Loan Servs. Inc., 811 F.3d. 1314, 1325 (Fed. Cir. 2016)
(holding that patent eligibility inquiry may contain underlying issues of
fact).
Appellant argues the use of an agent to keep users’ information
private from advertisers is unconventional. Appeal Br. 10–13. We disagree,
for reasons similar to those discussed above. Claim 1 recites a targeted
advertising method facilitated by various data gathering and data processing
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steps performed by an agent. See supra. We agree with the Examiner’s
finding that simply using standard computer elements (as described in the
Specification, see supra) to implement rules for targeted advertising is well
understood, routine, and conventional. Ans. 10–13. As discussed above, the
Specification explains that the invention is implemented on standard,
conventional computing elements. Spec. ¶¶ 5–7. Although Appellant
asserts that claim 1 recites “meaningful recitations of a user agent that
maintains a user’s information private while being able to predict a product
the user desires and then disclosing this product to a third party,” Appeal Br.
13, Appellant does not rebut the Examiner’s findings or identify any
unconventional elements, and we discern none. See supra. To the extent
Appellant implies that it is a particular algorithm, not the hardware elements,
that constitutes “something significantly more” in claim 1, the algorithm is
not recited in the claim.
Accordingly, we conclude that the Examiner did not err in concluding
that claim 1 constitutes ineligible subject matter. For the same reasons, we
are unpersuaded of error regarding the remaining claims, which Appellant
does not argue separately from claim 1 for purposes of the § 101 rejection.
See 37 C.F.R. § 41.37(c)(1)(iv). We, therefore, sustain the rejection of
claims 1–4, 6, 7, and 15–20 under 35 U.S.C. § 101.

Rejection Under 35 U.S.C. § 103
Appellant argues the Examiner erred in finding the prior art teaches or
suggests “analyzing . . . the [user’s] private information in order to predict
the product that the user desires to purchase without disclosing any of the
private information to a third party including an advertiser,” as recited in
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claim 1. Appeal Br. 15–17. Appellant argues the Examiner relies solely on
Le Jouan as teaching this limitation, but the intermediary in Le Jouan is a
“data sharing server” that “shares private information with user-selected
companies.” Id. 16. We are persuaded of error.
The Examiner cites Le Jouan paragraphs 50, 51, 54, 63, and 139 as
teaching the foregoing disputed limitation. Ans. 17–19. On this record,
however, we do not discern any teaching of the user’s “private information”
being used to “predict the product the user desires” without disclosing “the
private information” to a third party. Le Jouan paragraphs 50 and 51
describe a user restricting promotions to “brands/sites” that the user
approves. Le Jouan ¶¶ 50–51. The user can thereby limit search results to
promotions desired by the user, and can “block” undesired results. Id.
Similarly, paragraph 54 teaches that the user can “agree” to providing
information to certain brands or companies, and although this passage
describes “secured APIs and processes” to “protect” user information, it is
referring to protection of the information in transmission – not to refusing to
disclose private information at all to the advertiser, as claim 1 recites.
Le Jouan paragraph 63 discloses that “it is assumed that the [third
party] entity will collect some personal information about users, but it is
possible that the information is an alias [such as an email alias] and only
anonymous personal information is passed to the entity.” Le Jouan ¶ 63.
The Examiner finds, and we agree, that the description of this embodiment
in Le Jouan teaches withholding private information from a third party.
Ans. 18. We still discern no teaching, however, that the alias or any
“anonymous personal information” (which is not further described in Le
Jouan paragraph 63) is “analyz[ed] . . . to predict the product that the user
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desires to purchase,” as recited in claim 1. Finally, paragraph 139 simply
teaches a search engine using historical data. Le Jouan ¶ 139.
For the foregoing reasons, on this record, we are persuaded of error
regarding the obviousness rejection of claim 1. For the same reasons, we are
persuaded of error regarding the remaining claims, which include
substantially the same disputed limitation and are rejected on the same basis.
We, therefore, do not sustain the obviousness rejections of claims 1–20.
SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–4, 6, 7,
15–20
101 Patent Eligibility 1–4, 6, 7,
15–20

1, 3, 6, 15,
18, 19
103 Le Jouan, Brown 1, 3, 6, 15,
18, 19
2, 17 103 Le Jouan, Brown,
Moissinac
2, 17
4, 7, 16 103 Le Jouan, Brown,
Adams
4, 7, 16
5, 20 103 Le Jouan, Brown,
Zaika
5, 20
8–10, 12–
14
103 Le Jouan, Zaika,
Adams
8–10, 12–
14
11 103 Le Jouan, Zaika,
Adams, Moissinac
11
Overall
Outcome
1–4, 6, 7,
15–20
5, 8–14
DECISION
We affirm the Examiner’s decision rejecting claims 1–4, 6, 7, and 15–
20.
We reverse the Examiner’s decision rejecting claims 5 and 8–14.
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). See
37 C.F.R. § 41.50(f).
AFFIRMED-IN-PART