RAO, BINDU RAMA.

Patent Trials and Appeals Board

Jan 29, 2020

13869678 - (D) (P.T.A.B. Jan. 29, 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.
13/869,678 04/24/2013 BINDU RAMA RAO 20055.106.1.1.1 4376
151970 7590 01/29/2020
Keller Jolley Preece / Qualtrics
1010 North 500 East
Suite 210
North Salt Lake, UT 84054
EXAMINER
SNIDER, SCOTT
ART UNIT PAPER NUMBER
3621
NOTIFICATION DATE DELIVERY MODE
01/29/2020 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@kjpip.com
kpreece@kjpip.com
ljohnson@kjpip.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte BINDU RAMA RAO

Appeal 2019-003465
Application 13/869,678
Technology Center 3600
____________

Before ERIC B. GRIMES, RICHARD M. LEBOVITZ, and
TAWEN CHANG, Administrative Patent Judges.

LEBOVITZ, Administrative Patent Judge.

DECISION ON APPEAL
The Examiner rejected the claims under 35 U.S.C. § 103 as obvious
and 35 U.S.C. § 101 for lack of patent-eligibility. Pursuant to 35 U.S.C.
§ 134(a), Appellant1 appeals from the Examiner’s decision to reject the
claims. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

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 Qualtrics,
LLC. Appeal Br. 1.
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STATEMENT OF THE CASE
The Examiner rejected the claims as follows:
Claims 9–15, 17, 19, and 21–26 under pre-AIA 35 U.S.C. § 101
because the claimed invention is directed to judicial exception to patent-
eligibility. Non-Final Act. 3.
Claims 9–15, 17, 19, and 21–26 under pre-AIA 35 U.S.C. § 103(a) as
obvious in view of Ramer et al. (US 2008/0009268 A1, published Jan. 10,
2008) (“Ramer”), Maes et al. (US 7,685,252 B1, issued Mar. 23, 2010)
(“Maes”), and Smith et al. (US 7,337,127 B1, Feb. 26, 2008) (“Smith”).
Non-Final Act. 5.
There are three independent claims on appeal, claims 9, 19, and 23.
The claims have similar limitations and therefore we have selected claim 9
as representative. Claim 9 is reproduced below (bracketed numbering has
been added for reference to the claim limitations):
9. A system comprising:
[1] a server comprising at least one processor;
[2] at least one non-transitory computer readable storage
medium storing instructions thereon that, when executed by the
at least one processor, cause the system to:
[3] receive user generated interactive media content;
[4] add system generated content to the user generated
interactive media content to:
[5] create a first version of an interactive media
survey for use with an interactive-media-client component,
wherein the first version of the interactive media survey
comprises:
[6] a first segment of the interactive media
survey that includes a first survey question and a first
navigation element for navigating within the first version of the
interactive media survey; and
[7] a second segment of the interactive
media survey that includes a second survey question and a
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second navigation element for navigating within the first
version of the interactive media survey;
[8] create a second version of the interactive media
survey for use with a web browser and not for use with the
interactive-media-client component, wherein the second version
of the interactive media survey comprises an individual
segment that includes the first question and the second
question;
[9] identify a plurality of recipient devices corresponding
to a plurality of recipient profiles corresponding to a profile
characteristic from metadata within the user generated
interactive media content;
[10] determine that at least one mobile recipient device of
the plurality of recipient devices includes the interactive-media-
client component;
[11] based on determining that the at least one mobile
recipient device includes the interactive-media-client
component, select the first version of the interactive media
survey for delivery to the at least one mobile recipient device;
and
[12] provide the first version of the interactive media
survey to the at least one mobile recipient device, the first
version of the interactive media survey comprising the user
generated interactive media content and the system generated
content for presentation on the at least one mobile recipient
device.

SECTION 101 REJECTION
The Examiner found that claim 9 “is directed to the abstract idea of
creating two versions of content and delivering an interactive version of the
content to a device that supports the interactivity or a non-interactive version
to a device that does not support interactive features.” Non-Final Act. 3.
The Examiner stated that “the focus of the claims is not on such an
improvement in computers as tools, but on certain independently abstract
ideas that use computers as tools.” Ans. 3. The Examiner further explained
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that “[m]ore specifically, the claims in the instant application do not contain
a teaching of a novel data storage structure or algorithm for creating the two
version of the ‘interactive media survey’, but rather claim the idea of
creating two versions of a survey.” Id.

Principles of Law
Under 35 U.S.C. § 101, an invention is patent-eligible if it claims a
“new and useful process, machine, manufacture, or composition of matter.”
However, not every discovery is eligible for patent protection. Diamond v.
Diehr, 450 U.S. 175, 185 (1981). “Excluded from such patent protection are
laws of nature, natural phenomena, and abstract ideas.” Id. The Supreme
Court articulated a two-step analysis to determine whether a claim falls
within an excluded category of invention. Alice Corp. v. CLS Bank Int’l,
573 U.S. 208, 216 (2014); Mayo Collaborative Servs. v. Prometheus Labs,
Inc., 566 U.S. 66, 75–77 (2012).
In the first step, it is determined “whether the claims at issue are
directed to one of those patent-ineligible concepts.” Alice, 573 U.S. at 217.
If it is determined that the claims are directed to an ineligible concept, then
the second step of the two-part analysis is applied in which it is asked
“[w]hat else is there in the claims before us?” Id. The Court explained that
this step involves
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, 573 U.S. at 217–18 (citing Mayo, 566 U.S. at 75–77).
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Alice, relying on the analysis in Mayo of a claim directed to a law of
nature, stated that in the second part of the analysis, “the elements of each
claim both individually and ‘as an ordered combination’” must be
considered “to determine whether the additional elements ‘transform the
nature of the claim’ into a patent-eligible application.” Alice, 573 U.S. at
217.
The PTO has published revised guidance on the application of 35
U.S.C. § 101. USPTO’s January 7, 2019 Memorandum, 2019 Revised
Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50, 51–57 (2019)
(“2019 Eligibility Guidance”). This guidance provides additional direction
on how to implement the two-part analysis of Mayo and Alice.
Step 2A, Prong One, of the 2019 Eligibility Guidance, looks at the
specific limitations in the claim to determine whether the claim recites a
judicial exception to patent eligibility. In Step 2A, Prong Two, the claims
are examined to identify whether there are additional elements in the claims
that integrate the exception in a practical application, namely, is there a
“meaningful limit on the judicial exception, such that the claim is more than
a drafting effort designed to monopolize the judicial exception.” 84 Fed.
Reg. at 54 (2. Prong Two).
If the claim recites a judicial exception that is not integrated into a
practical application, then as in the Mayo/Alice framework, Step 2B of the
Eligibility Guidance instructs us to determine whether there is a claimed
inventive concept to ensure that the claims define an invention that is
significantly more than the ineligible concept, itself. 84 Fed. Reg. at 56.
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With these guiding principles in mind, we proceed to determine
whether the claimed subject matter in this appeal is eligible for patent
protection under 35 U.S.C. § 101.
Discussion
The Examiner stated that claim 9 “is directed to the abstract idea of
creating two versions of content and delivering an interactive version of the
content to a device that supports the interactivity or a non-interactive version
to a device that does not support interactive features.” Non-Final Act. 3.
The Examiner also described the steps in claim 9 and concluded that they
correspond “to concepts identified as abstract ideas by the courts.” Non-
Final Act. 3. However, the Examiner did not specifically explain, under the
first part of the Alice/Mayo test, which of the steps recited an excluded
category of invention, such as a method of organizing human activity, a
mathematical concept, or mental process. The Examiner discussed various
Federal Circuit cases in which the court found the claims to be directed to an
abstract idea, but the Examiner did not explain how the recited steps of
claim 9 are similar to the ineligible claims in the cited cases. Id.
Appellant argues in the Appeal Brief that “the independent claims
cover a concrete improvement to an electronic survey system by creating
different versions of an interactive media survey for improved flexibility and
by providing a device the interactive media survey based on determining
whether the device includes an interactive media client component.” Appeal
Br. 8. We agree with Appellant.
Prong Two of Step 2A asks whether there are additional elements that
integrate the exception into a practical application. As in the Mayo/Alice
framework, we must look at the claim elements individually and “as an
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ordered combination” to determine whether the additional elements integrate
any recited abstract idea into a practical application. As discussed in the
Eligibility Guidance, “[a] claim that integrates a judicial exception into a
practical application will 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.” 84 Fed. Reg. at 54. Integration into a practical application is
evaluated by identifying whether there are additional elements which go
beyond the judicial exception, and evaluating those additional elements
individually, and in combination, to determine whether they integrate the
exception into a practical application. Id. at 54–55.
One indication that a judicial exception may be integrated into a
practical application is an additional element that reflects an improvement to
the functioning of a computer or an improvement in another technology. Id.
at 55. As further explained in the October 2019 Update to Subject Matter
Eligibility2 “first the specification should be evaluated to determine if the
disclosure provides sufficient details such that one of ordinary skill in the art
would recognize the claimed invention as providing an improvement.” PEG
Update 12.
The Specification explains that “[e]lectronic devices, such as mobile
phones and personal digital assistants (PDA’s), often contain small screens
with very limited viewing area. They are constrained in terms of how much
information can be displayed, and in terms of user interaction capabilities.”
Spec. 3:2–4. The Specification discloses that “[i]nformation access from

2 Available at https://www.uspto.gov/sites/default/files/documents/
peg_oct_2019_update.pdf (last accessed Nov. 15, 2019) (“PEG Update.”)
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typical Internet based websites from mobile devices are quite often
unsatisfactory and not useful due to several factors, not least of which is the
multi-media and graphics rich format in which most Internet websites are
designed and made available and the verbosity of text.” Spec. 3:19–21. The
Specification further discloses that “[a] mobile phone with a small screen is
not a good candidate for viewing such complicated and graphics rich (with
graphics, flash screens, video components, etc.) content.” Spec. 3:21–22.
To address these problems, the Specification describes a server that
determines whether a mobile device “can handle interactive media” because
the device comprises “the client component capable of handling the
interactive media, and because the interactive media comprise metadata used
to determine appropriateness for a device.” Spec. 10:16–21. “In order to
play all the components of an interactive media, . . . the recipient devices,
such as the recipient device 111, have a client component that can handle all
the components of an interactive media, audio, textual, graphics and even
video components.” Spec. 11:14–17.
“Some mobile devices . . . may not have the interactive media client.”
Spec. 11:21–22. For such devices, the server “makes it possible for them to
receive and display/play the interactive media by sending them the same
interactive media in an alternate form, such as a simplified set of web
pages.” Spec. 12: 1–3. Thus, the Specification describes an improvement to
presenting content on a mobile device by presenting the content in different
forms, depending on whether the mobile device has a “client component” on
it that enables a user of the device to view interactive media.
Claim 9 reflects this solution to the problem of displaying information
on the small screens of mobile devices by claiming a system that creates two
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versions of an interactive media survey for display on mobile recipient
devices, depending on whether a device includes an “interactive-media-
client component” which enables the display of the interactive media
formatted for the device. The claim creates a first version of an interactive
media survey for use with an “interactive-media-client component” (steps
[5]–[7]) and a second version of the interactive media survey for use with a
“web browser” (step [8]). Based on identifying a mobile recipient device
that includes the interactive-media-client component (steps [9], [10]), the
claimed technology provides the interactive-media-client component version
of the interactive media survey to the mobile recipient device (steps [11],
[12]).
Providing different forms of interactive media content depending on
whether a mobile device includes an “interactive-media-client component”
is therefore an additional element which improves the display of interactive
media content on the mobile device. In DDR Holdings, LLC v. Hotels.com,
L.P., 773 F.3d 1245, 1257 (Fed. Cir. 2014), claims were found to be patent-
eligible because “the claimed solution is necessarily rooted in computer
technology in order to overcome a problem specifically arising in the realm
of computer networks.” Claims “directed to an improvement in the
functioning of computers, particularly those with small screens” were found
to be patent-eligible in Core Wireless Licensing S.A.R.L. v. LG Electronics,
Inc., 880 F.3d 1356, 1363 (Fed. Cir. 2018). Similarly, claim 9 overcomes
the problem of displaying interactive media content on the small screen of a
mobile device by first determining whether the device includes the client
component and then providing the “first version of the interactive media
survey.” We conclude that the additional elements in claim 9 solve a
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technological problem by improving the functioning of a mobile device.
The rejection of claim 9, and claims 10–15, 17, 19, and 21–26, under
35 U.S.C. § 101 is reversed.

SECTION 103 REJECTION
The Examiner found that Ramer describes all the steps of claim 9,
except for the interactive media survey and creating two separate versions of
interactive media content, as recited in steps [5] and [8] of claim 9. Non-
Final Act. 6–7. However, the Examiner found that Maes describes “creating
multiple versions of content from a base input language,” including a web
browser version. Id. at 7. The Examiner determined it would have been
obvious to the skilled worker “to modify Ramer with the use of different
versions of content as taught by Maes in order to produce content that is
‘modality-independent.’” Id. With respect to the “interactive media
survey,” the Examiner found that Smith describes “an advertising system
that presents users with surveys.” Id. The Examiner determined it would
have been obvious to a person of ordinary skill in the art at the time of the
invention “to modify Ramer with the method of presenting surveys as
content as taught by Smith in order to better target advertising.” Id.
Appellant contends that “Maes and Ramer nowhere describe or
suggest creating two different versions of an interactive media survey with
the particular segments recited in the independent claims.” Appeal Br. 20.
We agree with Appellant that the Examiner did not establish by
preponderance of the evidence that the cited publications disclose or suggest
first (step [5]) and second versions (step [7]) of an interactive media survey,
where the first version is “for use with an interactive-media-client
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component” on a mobile recipient device and a second version is “for use
with a web browser.”
Ramer, as found by the Examiner, describes allowing a sponsor “to
select the types of mobile communication facilities on which the sponsor
would like to present the sponsor content.” Ramer ¶ 1039. Ramer discloses
that “the sponsor may wish to select a subset of mobile communication
facility models that are best suited for presentation of the sponsor’s content
due to technological requirements for the content to optimally present.” Id.
However, the Examiner acknowledged that this disclosure was deficient
because it does not “specify creating two separate versions with the first
comprising interactive elements for navigating within the interactive media
survey and the second for use with a web browser and not for use with
interactive-media-client component.” Non-Final Act. 7 (referencing
limitations [5] and [7] of claim 9).
The Examiner cited Maes to make up for this deficiency. Maes
describes “services that are device and modality independent” by designing
a markup language for authoring “information content and interaction logic
that is modality independent.” Maes, col. 6, l. 59–col. 7, l. 2. As Maes
explains that “[e]ither CML pages are served to browsers that can parse and
render CML content (see Case B below) or they are served to legacy
browsers that can only handle legacy languages, e.g., HTML, WML,
VoiceXML, etc. (see Case A below).” Maes, col. 14, ll. 26–30.
In Case A, “[w]hen a page is requested, it is fetched in CML and
transcoded on the fly using the gesture-based XSL transformation rules into
the target ML.” Maes, col. 14, ll. 35–38. In Case B, “[t]he target browser
handles CML. Therefore, it knows exactly what are the modalities that it
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supports (single or multiple) as well as the rules required to optimally render
a given gesture in its supported modalities.” Maes, col. 14, ll. 39–42.
Thus, Maes teaches a single content version which is translated
differently (Case A and B) upon delivery to the device. In contrast, the
claims require first and second versions, where the first version is created
(step [5]) and provided to a mobile recipient device (step [12]) and the
second version is for use with a web browser (step [8]). Maes therefore
solves the problem of presenting content to different devices in a different
manner than the claims, namely by creating one version written in a markup
language that is translated differently depending on the device which
receives it. Therefore, the Examiner’s reliance on Maes to make up for the
deficiency in Ramer is not supported by a preponderance of the evidence in
this record.
The Examiner also did not establish that the cited publications
disclose or suggest the claimed “interactive-media client component” that is
for use with a first version of a media survey, but not for use with a web
browser (“a second version of the interactive media survey for use with a
web browser and not for use with the interactive-media-client component”).
The Examiner cited the disclosure in Ramer of “Java” on a mobile device as
the claimed interactive-media-client component. Non-Final Act. 6; Ans. 6–
7. However, the Examiner did not establish that Java is for use with the
mobile device and not for use with a web browser. Appeal Br. 21; Reply Br.
18. To the contrary, the Examiner inconsistently stated that Java was also
used for web browsers and enabled by a browser. Ans. 7.

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Summary
For the foregoing reasons, the rejection under 35 U.S.C. § 103 of
claims 9–15, 17, 19, and 21–26, is reversed.

CONCLUSION
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
9–15, 17,
19, 21–26
101 Eligibility 9–15, 17,
19, 21–26
9–15, 17,
19, 21–26
103 Ramer, Maes,
Smith
9–15, 17,
19, 21–26
Overall
Outcome
9–15, 17,
19, 21–26

REVERSED