Robert S. Jewell JR.

Patent Trials and Appeals Board

Feb 11, 2020

12549732 - (D) (P.T.A.B. Feb. 11, 2020)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
12/549,732 08/28/2009 Robert S. Jewell JR. LifeStreet-P006 9584
7590 02/11/2020
WEBAMG HOLDINGS LIMITED
981 INDUSTRIAL ROAD, SUITE F
SAN CARLOS, CA 94070
EXAMINER
ALVAREZ, RAQUEL
ART UNIT PAPER NUMBER
3688
MAIL DATE DELIVERY MODE
02/11/2020 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 ROBERT S. JEWELL JR.
____________________

Appeal 2018-001866
Application 12/549,732
Technology Center 3600
____________________

Before STEFAN STAICOVICI, BENJAMIN D.M. WOOD, and
BRADLEY B. BAYAT, Administrative Patent Judges.

BAYAT, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Robert S. Jewell Jr. (Appellant)1 appeals under 35 U.S.C. § 134(a)
from the decision to reject claims 1–8, 10, 11, and 13–23, which are all the
claims pending in the application. Appellant’s representative failed to
appear for oral hearing scheduled on January 29, 2020. We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Our Decision references Appellant’s corrected Appeal Brief (“Br.,”
filed May 18, 2017), the Examiner’s Answer (“Ans.,” mailed Oct. 13, 2017),
and the Non-Final Office Action (“Non-Final Act.,” mailed July 14, 2016).
Appellant identifies the real party in interest as “Lifestreet Corporation.” Br.
4.
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CLAIMED SUBJECT MATTER
Appellant’s claimed invention relates generally to electronic
advertisements, and more particularly to methods for the creation and
display of personalized Internet based advertisements. Spec. ¶ 1002.
Claims 1, 11, and 19 are the only independent claims on appeal. Claim 1 is
illustrative of the subject matter on appeal and recites:
1. A method for creation and display of a personalized
Internet-based advertisement, the method comprising:

[(a)] sending an Internet-based advertisement template to a
device, the Internet-based advertisement template
including at least one predefined field configured to be
populated with data associated with the predefined field;
and

[(b)] sending to the device a first instruction configured to
define the personalized Internet-based advertisement, the
personalized Internet-based advertisement being defined
based at least in part on the Internet-based advertisement
template and the data associated with the predefined
field; and

[(c)] wherein the Internet-based advertisement template is
formatted such that the personalized Internet-based
advertisement is configured to be displayed within a
portion of a third-party webpage populated by a social
network application defined by a third party.

Br. 67, Claims Appendix (with added bracketed notations).

REFERENCES & REJECTIONS
The following rejections are before us for review:
I. Claims 1–8, 10, 11, and 13–23 are rejected under 35 U.S.C. § 101.
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II. Claims 1–6 and 8, 10, and 11 are rejected under 35 U.S.C. § 102(e) as
anticipated by Quan et al. (US 8,468,049 B2, iss. June 18, 2013)
(“Quan”).
III. Claims 19–23 are rejected under 35 U.S.C. § 102(a) as anticipated by
Rohan et al. (US 2008/0162260 A1, pub. July 3, 2008) (“Rohan”).
IV. Claims 7 and 13–18 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Quan and Gang et al. (US 2008/0027909 A1, pub.
Jan. 31, 2008) (“Gang”).

ANALYSIS
Rejection under 35 U.S.C. § 101
On February 19, 2016, in a prior Decision on Appeal (Appeal 2013-
009029), the Board affirmed the Examiner’s decision to reject then-pending
claims 1–10 and 19–23 under 35 U.S.C. § 101, and entered a new ground of
rejection under § 101 as to claims 11–18. On April 18, 2016, Appellant
amended claims 1, 2, 5, 6, 8, 10, 11, and 13–19, and canceled claims 9 and
12. Claims 1–8, 10, 11, and 13–23 are now pending.
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.”
35 U.S.C. § 101. The Supreme Court, however, has long interpreted § 101
to include an implicit exception: “[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).
The Supreme Court, in Alice, reiterated the two-step framework
previously set forth in Mayo Collaborative Services v. Prometheus
Laboratories, Inc., 566 U.S. 66 (2012), “for distinguishing patents that claim
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laws of nature, natural phenomena, and abstract ideas from those that claim
patent-eligible applications of those concepts.” Alice Corp., 573 U.S. at 217.
The first step in that analysis is to “determine whether the claims at issue are
directed to one of those patent-ineligible concepts.” Id. If the claims are not
directed to a patent-ineligible concept, e.g., an abstract idea, the inquiry
ends. Otherwise, the inquiry proceeds to the second step where the elements
of the claims are considered “individually and ‘as an ordered combination’”
to determine whether the additional elements that ‘transform the nature of
the claim’ into a patent-eligible application.” Id. (quoting Mayo, 566 U.S.
at 78, 79). This is “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.’” Id. at 217–18 (alteration in original).
After Appellant’s brief was filed, and the Examiner’s Answer mailed,
the U.S. Patent and Trademark Office (the “USPTO”) published revised
guidance for use by USPTO personnel in evaluating subject matter
eligibility under 35 U.S.C. § 101. 2019 REVISED PATENT SUBJECT MATTER
ELIGIBILITY GUIDANCE, 84 Fed. Reg. 50, 57 (Jan. 7, 2019) (the “2019
Revised Guidance”). That guidance revised the USPTO’s examination
procedure with respect to the first step of the Mayo/Alice framework by
(1) “[p]roviding groupings of subject matter that [are] considered an abstract
idea”; and (2) “clarifying that a claim is not ‘directed to’ a judicial exception
if the judicial exception is integrated into a practical application of that
exception.” Id. at 50. The 2019 Revised Guidance, by its terms, applies to
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all applications, and to all patents resulting from applications, filed before,
on, or after January 7, 2019. Id.2 3
We have reviewed the eligibility of the pending claims through the
lens of the 2019 Revised Guidance, but we are not persuaded the Examiner
erred in concluding that the pending claims are directed to a judicial
exception without significantly more.

Claims 1–8 and 10
Step One of the Alice Framework (2019 Revised Guidance, Step 2A)
The first step in the Alice framework, as mentioned above, is to
determine whether the claims at issue are “directed to” a patent-ineligible
concept, e.g., an abstract idea. Alice Corp., 573 U.S. at 217. This first step,
as set forth in the 2019 Revised Guidance (i.e., Step 2A), is a two-prong test;
in Step 2A, Prong One, we look to whether the claim recites a judicial
exception, e.g., one of the following three groupings of abstract ideas:
(1) mathematical concepts; (2) certain methods of organizing human
activity, e.g., fundamental economic principles or practices, commercial or

2 The 2019 Revised Guidance supersedes MANUAL OF PATENT EXAMINING
PROCEDURE (“MPEP”) § 2106.04(II) and also supersedes all versions of the
USPTO’s “Eligibility Quick Reference Sheet Identifying Abstract Ideas.”
See 2019 Revised Guidance, 84 Fed. Reg. at 51 (“Eligibility-related
guidance issued prior to the Ninth Edition, R-08.2017, of the MPEP
(published Jan. 2018) should not be relied upon.”). Accordingly,
Appellant’s arguments challenging the sufficiency of the Examiner’s
rejection will not be addressed to the extent those arguments are based on
now superseded USPTO guidance.
3 The USPTO issued an update on October 17, 2019 (the “October 2019
Update: Subject Matter Eligibility,” available at https://www.uspto.gov/sites/
default/files/documents/peg_oct_2019_update.pdf) clarifying the
2019 Revised Guidance in response to comments solicited from the public.
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legal interactions; and (3) mental processes. 2019 Revised Guidance,
84 Fed. Reg. at 54. If so, we next consider whether the claim includes
additional elements, beyond the judicial exception, that “integrate the
[judicial] exception into a practical application,” i.e., that 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 (“Step 2A, Prong Two”). Id. at 54–55.
Only if the claim (1) recites a judicial exception and (2) does not integrate
that exception into a practical application do we conclude that the claim is
“directed to” the judicial exception, e.g., an abstract idea.
We are not persuaded that the Examiner erred in determining that
claims 1–8, 10, 11, and 13–23 are directed to an abstract idea (Br. 28–35).
The Federal Circuit has explained that “the ‘directed to’ inquiry applies a
stage-one filter to claims, considered in light of the specification, based on
whether ‘their character as a whole is directed to excluded subject matter.’”
Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016)
(quoting Internet Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1346
(Fed. Cir. 2015)). It asks whether the focus of the claims is on a specific
improvement in relevant technology or on a process that itself qualifies as an
“abstract idea” for which computers are invoked merely as a tool. See id.
at 1335–36. Here, it is clear from the Specification (including the claim
language) that the focus of the claims is on an abstract idea, and not on any
improvement to technology or a technical field.
Appellant’s Specification is entitled “TARGETED NETWORK
CONTENT,” and describes, in the Background section, that businesses have
turned to the World Wide Web to sell products and services through
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Internet-based advertisements, which typically appear near featured content
of a webpage or Internet application. Spec. ¶ 1003. The Specification
explains that web-based advertisements are “designed to catch the user’s
attention and induce the user to click on the advertisement for redirection to
the advertiser’s site, where further information may be provided or a sale
completed.” Id. ¶ 1004. According to the Specification, an advertisement is
selected for display based on various criteria, including “user behavioral
information gathered through cookies or other tracking mechanisms.” Id.
¶ 1005. For example, “a user’s web activity and browsing history is
analyzed and stored to improve the accuracy of matching algorithms that
determine which advertisement is likely to interest a given user.” Id.
However, targeting advertising based on a user’s IP address or through use
of a browser cookie only allow educated guesses of a user’s preferences and
personal characteristics, and fail to determine a particular user’s identity or
current geographic location with one-hundred percent accuracy. Id.
¶¶ 1006–08. Appellant solved this imprecision problem “through use of a
more trustworthy data set, such as a user’s stated preferences and other self-
reported information . . . that produce more effective Internet advertisements
based on a user’s stated preferences and other self-disclosed information.”
Id. ¶ 1009.
The claimed invention is presumably intended to address this issue by
identifying more effective personalized Internet advertisements based on
data provided by a user, such as a profile. The implementation of this
concept is recited in the limitations of independent claim 1. Claim 1, thus,
recites “[a] method for creation and display of a personalized Internet-based
advertisement,” comprising: (a) “sending an Internet-based advertisement
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template to a device, the Internet-based advertisement template including at
least one predefined field configured to be populated with data associated
with the predefined field”; (b) “sending to the device a first instruction
configured to define the personalized Internet-based advertisement, the
personalized Internet-based advertisement being defined based at least in
part on the Internet-based advertisement template and the data associated
with the predefined field; and” (c) “wherein the Internet-based advertisement
template is formatted such that the personalized Internet-based
advertisement is configured to be displayed within a portion of a third-party
webpage populated by a social network application defined by a third party.”
These limitations, when given their broadest reasonable interpretation,
recite (a) sending an advertisement template with a predefined field to be
populated with data associated with the predefined field, e.g., profile
information; (b) sending an instruction to define the personalized
advertisement based on the advertisement template and data associated with
the predefined field (e.g., user name, location, profile image); and (c)
configuring the personalized advertisement for display. In other words,
claim 1 recites a method of sending and displaying a personalized
advertisement to a user, i.e., a commercial interaction, which is a method of
organizing human activity and, therefore, an abstract idea. See 2019
Revised Guidance, 84 Fed. Reg. at 52 (describing “Certain methods of
organizing human activity” as including “commercial or legal interactions
(including . . . advertising, marketing or sales activities or behaviors”)).
This abstract concept is further supported by various portions of the
Specification. See, e.g., paragraph 1009 (“methods and apparatus that
produce more effective Internet advertisements based on a user’s stated
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preferences and other self-disclosed information.”); paragraph 1016 (“the
advertisement template can include default information fields configured to
be dynamically populated with current news or other information.”);
paragraph 1018 (“the advertisement generation script can be configured to
be executed on a client device to dynamically generate a personalized
advertisement.”). As such, we agree with the Examiner that “[t]he concept
of ‘personalized advertising,’ customizing ads to reflect information
associated with a user to deliver more effective ads, is a long-standing
business marketing practice, and a patent-ineligible abstract idea.” Non-
Final Act. 3.
The Federal Circuit has held similar concepts to be abstract. For
example, in Bridge and Post, Inc. v. Verizon Communications, Inc.,
778 F. App’x 882 (Fed. Cir. 2019), the Federal Circuit held that abstract
ideas include tracking a user’s computer network activity and using
information gained about the user to deliver targeted media, such as
advertisements. See also, e.g., Affinity Labs of Texas, LLC v. Amazon.com,
Inc., 838 F.3d 1266, 1271 (Fed. Cir. 2016) (customizing a user interface to
have targeted advertising based on user information); Intellectual Ventures I
LLC v. Capital One Bank (USA), 792 F.3d 1363, 1370 (Fed. Cir. 2015)
(tailoring information presented to a user based on particular information);
Morsa v. Facebook, Inc., 77 F. Supp. 3d 1007, 1013 (C.D. Cal. 2014), aff’d,
622 F. App’x 915 (Fed. Cir. 2015) (concluding that targeting advertisements
to certain consumers is no more than an abstract idea).
Having concluded that claim 1 recites a judicial exception, i.e., an
abstract idea (Step 2A, Prong One), we next consider whether the claim
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recites additional elements that integrate the judicial exception into a
practical application (Step 2A, Prong Two).
The only additional elements recited in claim 1 beyond the abstract
idea is a “device” in communication over the Internet, which the
Specification describes at a high level of generality. According to the
Specification:
Client device 100 can be, for example, a personal desktop
computer, a laptop, notebook, or netbook computer, a tablet
computing device, a cellular telephone, a portable e-mail
device, a Voice Over Internet Protocol (VoIP) telephone, a
personal digital assistant (PDA), a geographic positioning
satellite (GPS) navigation device, a portable digital audio player
(DAP), or similar electronic device capable of displaying text
and/or media content received via a network. Client device 100
can be configured to include an Internet application module
105, which can be configured to send and receive content via
the World Wide Web. Internet application module 105 can be,
for example, a web browser application, a smart phone
application, or other software and/or hardware module capable
of transmitting and receiving information over a computer
network such as the Internet.

Spec. ¶ 1022. This generic computing device is implemented in its ordinary
capacity to carry out the operations recited in claim 1, which encompass the
abstract idea discussed supra, within an Internet-based technological
environment. For example, “displaying” represents data output, and as such
is considered insignificant extra-solution activity. See Bilski v. Kappos, 561
U.S. 593, 610–11 (2010) (“Flook stands for the proposition that the
prohibition against patenting abstract ideas ‘cannot be circumvented by
attempting to limit the use of the formula to a particular technological
environment’ or adding ‘insignificant post-solution activity.”’) (Quoting
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Diamond v. Diehr, 450 U.S. 175, 191–92 (1981)). See 2019 Revised
Guidance, 84 Fed. Reg. at 55, n 31. In other words, these additional
elements in the claim (i.e., Internet-based advertisement template, third-
party webpage populated by a social network application) do “no more than
generally link the use of a judicial exception to a particular technological
environment or field of use.” See 2019 Revised Guidance, 84 Fed. Reg. at
55. Thus, the mere application of an abstract method of organizing human
activity in a particular field is not sufficient to integrate the judicial
exception into a practical application. See id.
Neither the Specification nor Appellant describes the operations
recited in claim 1 as invoking any assertedly inventive programming, or
requiring any specialized computer hardware or other inventive computer
components, i.e., a particular machine, or that the claimed invention is
implemented using other than generic computer components to perform
generic computer functions. See DDR Holdings, LLC v. Hotels.com, L.P.,
773 F.3d 1245, 1256 (Fed. Cir. 2014) (“[A]fter Alice, there can remain no
doubt: recitation of generic computer limitations does not make an otherwise
ineligible claim patent-eligible.”).
We also find no indication in the Specification that the claimed
invention effects a transformation or reduction of a particular article to a
different state or thing. Nor do we find anything of record that attributes an
improvement in computer functionality to the claimed invention or that
otherwise indicates that the claimed invention integrates the abstract idea
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into a “practical application,” as that phrase is used in the 2019 Revised
Guidance.4
Appellant does not contest the Examiner’s characterization of the
abstract idea, and instead, contends that “similar to DDR Holdings,
Applicant’s claims are Internet-centric and solve the problem of
personalized advertisements and are thus submitted as patent eligible as
were some of the claims in DDR Holdings.” Br. 28 (The “claims provide for
display of a personalized advertisement within a third-party webpage.”)
(emphasis omitted).
We disagree with Appellant’s contention because in DDR Holdings,
the Federal Circuit determined that although the patent claims at issue
involved conventional computers and the Internet, the claims nevertheless
addressed the problem of retaining website visitors who, if adhering to the
routine, conventional functioning of the Internet hyperlink protocol, would
be transported instantly away from a host’s website after “clicking” on an
advertisement and activating a hyperlink. DDR Holdings, 773 F.3d at 1257.
The court determined that those claims were directed to statutory subject
matter because they claim a solution “necessarily rooted in computer
technology in order to overcome a problem specifically arising in the realm
of computer networks.” Id. No such technological advance is evident in the
claimed invention.

4 The 2019 Revised Guidance references MPEP § 2106.05(a)–(c) and (e) in
describing the considerations that are indicative that an additional element or
combination of elements integrates the judicial exception, e.g., the abstract
idea, into a practical application. 2019 Revised Guidance, 84 Fed. Reg.
at 55. If the recited judicial exception is integrated into a practical
application, as determined under one or more of these MPEP sections, the
claim is not “directed to” the judicial exception.
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Unlike DDR Holdings, Appellant does not identify any problem
particular to computer networks and/or the Internet that claim 1 allegedly
overcomes. In fact, the court in DDR Holdings cautioned “that not all
claims purporting to address Internet-centric challenges are eligible for
patent.” DDR Holdings, 773 F.3d at 1258. For example, the court
distinguished the patent-eligible claims at issue from claims held patent-
ineligible in Ultramercial. See id. at 1258–59 (citing Ultramercial, Inc. v.
Hulu, LLC, 772 F.3d 709, 715–16 (Fed. Cir. 2014)). 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 714). 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. (citation omitted). Here, contrary to Appellant’s argument,
displaying a personalized advertisement within a third-party webpage is not
a technical solution akin to DDR Holdings because it fails to overcome any
problem specifically arising in the realm of computer networks.
Lastly, Appellant’s no risk of preemption argument (Br. 28) is
unpersuasive of error because preemption is not the sole test for patent
eligibility. Although the Supreme Court has described “the concern that
drives [the exclusion of abstract ideas from patent-eligible subject matter] as
one of pre-emption,” Alice Corp., 573 U.S. at 216, characterizing
preemption as a driving concern for patent eligibility is not the same as
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characterizing preemption as the sole test for patent eligibility. “The
Supreme Court has made clear that the principle of preemption is the basis
for the 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 Corp., 573 U.S. at 216). “[P]reemption may signal patent
ineligible subject matter, [but] the absence of complete preemption does not
demonstrate patent eligibility.” Id.
We conclude, for the reasons outlined above, that claim 1 recites a
method of organizing human activity under the 2019 Revised Guidance, i.e.,
an abstract idea, and that the additional elements recited in the claim are no
more than generic components used as tools to perform the recited abstract
idea. As such, they do not integrate the abstract idea into a practical
application. See Alice, 573 U.S. at 223–24 (“[W]holly generic computer
implementation is not generally the sort of ‘additional featur[e]’ that
provides any ‘practical assurance that the process is more than a drafting
effort designed to monopolize the [abstract idea] itself.’”) (Alterations in
original) (quoting Mayo, 566 U.S. at 77). Accordingly, we agree with the
Examiner that claim 1 is directed to an abstract idea.
Step Two of the Alice Framework (2019 Revised Guidance, Step 2B)
Having determined under step one of the Alice framework that claim 1
is directed to an abstract idea, we next consider under Step 2B of the 2019
Revised Guidance, the second step of the Alice framework, whether claim 1
includes additional elements or a combination of elements that provides an
“inventive concept,” i.e., whether claim 1 adds specific limitations beyond
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the judicial exception that are not “well-understood, routine, conventional”
in the field. 2019 Revised Guidance, 84 Fed. Reg. at 56.
We agree with the Examiner that claim 1 fails to add an inventive
concept sufficient to transform the nature of the claim into a patent-eligible
application of the abstract idea. The Examiner found:
The claim(s) does not include additional elements that
are sufficient to amount to significantly more than the judicial
exception because the additional elements when considered
both individually and as a combination do not amount to
significantly more than the abstract idea. The claim recites the
additional elements of a “sending an advertisement template to
a device”, “sending to the device a first instruction configured
to define a personalized advertisement, “sending an Internet
based advertisement”, “third-party webpage”. The claim steps
do not recite a specialized algorithm that could move the claims
from the abstract to the concrete, and a computer that simply
executes an abstract concept does not render a particular
machine or specialized computer. The use of templates
associated with documents is nothing more than programming
conventional software or hardware to apply rules and
instructions for populating data in predefined fields-a routine,
conventional practice. The introduction of a generic element,
such as device or computer (processor) or storage medium
(database), into a method, apparatus, or article claim, has been
deemed insufficient by the Supreme Court to transform a
patent-ineligible claim into one that is patent-eligible, and it
fails to do so here as well. See Alice, 134 S. Ct. at 2358; see
also Ultramercial, 772 F.3d at 715–716 (holding that the
additional steps of “updating an activity log, requiring a request
from the consumer to view the ad, restrictions on public access,
and the use of the Internet” were all “routine, conventional
activity”). Here, claims 1–8 and 10 at most applies conventional
computer technology to personalize advertisements.
Accordingly, the recited claim limitations, both individually
and as an ordered combination, fail to transform the nature of
the claim into a patent-eligible application.
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Non-Final Act. 4–5. Appellant does not dispute these findings.
Appellant does not contend that there is a genuine issue of material
fact regarding whether the operation of the computing device is well-
understood, routine, or conventional. There is nothing in the Specification
to indicate that the operations recited in claim 1 require any specialized
hardware or inventive computer components or that the claimed invention is
implemented using other than generic computer components to perform
generic computer functions, e.g., sending and displaying information.
Indeed, the Federal Circuit, in accordance with Alice, has “repeatedly
recognized the absence of a genuine dispute as to eligibility” where claims
have been defended as involving an inventive concept based “merely on the
idea of using existing computers or the Internet to carry out conventional
processes, with no alteration of computer functionality.” Berkheimer v. HP
Inc., 890 F.3d 1369, 1373 (Fed. Cir. 2018) (Moore, J., concurring) (internal
citations omitted); see also BSG Tech LLC v. BuySeasons, Inc., 899 F.3d
1281, 1291 (Fed. Cir. 2018) (“BSG Tech does not argue that other, non-
abstract features of the claimed inventions, alone or in combination, are not
well-understood, routine and conventional database structures and activities.
Accordingly, the district court did not err in determining that the asserted
claims lack an inventive concept.”).
For the foregoing reasons, we are not persuaded, on the present
record, that the Examiner erred in rejecting independent claim 1 under
35 U.S.C. § 101. We have considered Appellant’s arguments as to claims 2–
8 and 10, but they also are unpersuasive for the same reasons outlined above.
Therefore, we sustain the Examiner’s rejection of independent claim 1, and
dependent claims 2–8 and 10.
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Claims 11 and 13–18
Independent claim 11 recites:
A non-transitory computer-readable storage medium
comprising code representing instructions to cause a processor
to:
receive over an Internet, a request including information
associated with a user;
send over the Internet, in response to the request, an
Internet-based advertisement template selected based at least in
part on characteristic information of the user; and
send over the Internet, a first instruction configured to
define a personalized Internet-based advertisement, the
personalized advertisement being defined based at least in part
on the Internet-based advertisement template and information
associated with a user friend; and
send over the Internet, a second instruction configured to
trigger a display of the personalized Internet-based
advertisement at a display device in a webpage.

Br. 69, Claims Appendix.
We initially note that a claim directed to a “computer readable storage
medium,” despite its format, should be treated no differently from the
comparable process claims held to be patent ineligible under § 101. As the
Supreme Court has explained, the form of the claims should not trump basic
issues of patentability. See Parker v. Flook, 98 S. Ct. 2522, 2527
(1978) (advising against a rigid reading of § 101 that “would make the
determination of patentable subject matter depend simply on the draftsman’s
art and would ill serve the principles underlying the prohibition against
patents for ‘ideas’ or phenomena of nature.”); see also Internet Patents
Corp. v. Active Network, Inc., 790 F.3d 1343, 1349 (Fed. Cir. 2015).
Independent claim 11, similar to independent claim 1, fails to satisfy
the Alice framework. In claim 11, a computer readable storage medium
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causes a request including information associated with a user to be received
over the Internet, and in response sending an advertisement template
selected based at least in part on characteristic information of the user,
sending a first instruction configured to define a personalized Internet-based
advertisement, and sending a second instruction configured to trigger display
of the personalized advertisement at a display device in a webpage. See Br.
44. The additional limitation in claim 11 apart from claim 1 recites
“receiv[ing] over the Internet, a request including information associated
with a user.” This additional feature merely recites receiving information
associated with a user, which fails to distinguish from the abstract idea of
claim 1, and fails to describe anything beyond “well-understood, routine,
conventional activity.” Nor does it add anything nearing an “inventive
concept.” See Alice Corp., 573 U.S. at 226.
For instance, the specific data structure of the information associated
with a user or user’s friend fails to add meaningful limitations to the abstract
idea. Instead, the user characteristic information or information associated
with a user friend simply uses generic computer data structure to implement
the idea of fetching and populating a template to define a personalized
advertisement. This does not transform an abstract idea into patentable
subject matter. Indeed, the Federal Circuit has recognized that limiting
information to particular content does not change its character as
information and is within the realm of abstract ideas. Electric Power Group,
LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016) (citations omitted)
(“Information as such is an intangible.”).
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Appellant submits similar arguments against the rejection of claim 11
as presented above with respect to claim 1 (see Br. 31–32), but we are
unpersuaded for the same reasons.
Accordingly, we sustain the rejection of independent claim 11
under 35 U.S.C. § 101, and dependent claims 13–18, which add nothing
more than data gathering and display steps or merely reciting generic
computer instructions performing conventional functions that courts have
routinely found insignificant to transform abstract ideas to those into patent-
eligible inventions.
Claims 19–23
Independent claim 19 recites:
A method, comprising:
[(a)] sending, over an Internet, a first request, the first request
including a user identifier associated with a user of a
network;
[(b)] receiving, over the Internet, in response to the first
request, a plurality of friend identifiers;
[(c)] calculating a plurality of relationship strength scores,
each relationship strength score from the plurality of
relationship strength scores being based at least in part on
profile content associated with both a friend identifier
from the plurality of friend identifiers and the user
identifier;
[(d)] selecting a friend identifier from the plurality of friend
identifiers based at least in part on the plurality of
relationship strength scores; and
[(e)] defining an advertisement based at least in part on
information associated with the friend identifier such that
the information associated with the friend identifier is
displayed within the advertisement on a webpage.
Br. 71, Claims Appendix (with added bracketed notations and emphasis).
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Similar to claim 11, claim 19 is directed to personalizing and
displaying an advertisement (steps (a), (b), and (e)), except that in claim 19
the advertisement is personalized based on relationship strength scores (steps
(c) and (d)), which describe a mental process that could be performed by a
human using pen and paper. In essence, claim 19 recites: (a) sending a first
request; (b) in response to the first request receiving a plurality of friend
identifiers; (c) “calculating a plurality of relationship strength scores”; (d)
“selecting a friend identifier from the plurality of friend identifiers based at
least in part on the plurality of relationship strength scores”; and (e) defining
an advertisement based on information associated with the friend identifier
displayed within the advertisement. See Br. 59. Under the broadest
reasonable interpretation, steps (c) and (d) describe actions that can be
practically performed in the human mind by calculating a strength score
(i.e., with pen and paper), and selecting a friend identifier by observing a
plurality of relationship strength scores, which is a mental process, and thus,
an abstract idea. See Revised Guidance 84 Fed. Reg. at 52 (“Mental
processes—concepts performed in the human mind (including an
observation, evaluation, judgment, opinion.”).
Appellant argues that the invention cannot be performed mentally or
by hand because the claim recites “displaying on a webpage.” Br. 34
(“[T]here is no known way of using paper and pencil to perform ‘the
information associated with the friend identifier is displayed within the
advertisement on a webpage.’”). Yet, a substantially similar argument was
expressly rejected by the Court in Alice. See Alice Corp., 573 U.S. at 223
(“[T]he mere recitation of a generic computer cannot transform a patent-
ineligible abstract idea into a patent-eligible invention”). Although “a
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method that can be performed by human thought alone is merely an abstract
idea and is not patent-eligible under § 101,” CyberSource Corp. v. Retail
Decisions, Inc., 654 F.3d 1366, 1373 (Fed. Cir. 2011), it does not logically
follow that methods requiring physical components — i.e., methods that
arguably cannot be performed entirely in the human mind — are, therefore,
not directed to abstract ideas. The additional element Appellant relies on
(italicized in claim 19 supra) “does no more than generally link the use of a
judicial exception to a particular technological environment or field of use.”
See Revised Guidance 84 Fed. Reg. at 55.
In fact, although claim 19 recites that steps (a) and (b) are performed
“over the Internet” and the advertisement is “displayed . . . on a webpage”
(step (e)), the claim is neither “tied to a particular machine or apparatus” nor
transforms “a particular article into a different state or thing.” Non-Final
Act. 8. The steps of claim 19 simply instruct the practitioner to implement
the abstract idea with routine, conventional activity, such as by using a paper
and pencil (step (c)). See Ans. 5. None of the recited steps viewed both
individually and as an ordered combination, transform the nature of the
claim into patent-eligible subject matter.
For these reasons, we sustain the Examiner’s rejection of claim 19
under 35 U.S.C. § 101, and claims 20–23 dependent thereon.

Rejection under 35 U.S.C. § 102(e) as anticipated by Quan
Claims 1–6, 8, 10, and 11
In contesting the anticipation rejection of independent claim 1,
Appellant argues that Quan fails to disclose the claimed limitations because
in Appellant’s
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claim 1, in essence, a template is sent to a device with at least
one predefined field (which gets filled in later). Then a first
instruction is sent to the device where the device then defines
the personalized content based on the template and data
associated with the predefined field. Finally the template is
formatted and configured to be displayed within a portion of a
third-party social network webpage.

Br. 36. Appellant contends that in contrast to the process claimed,
Quan has the user fill out all the information to render and send
the communication to a remote device that then just displays it.
See Quan Figure 4 where the user fills out an image file 110
and enters a caption 112 which go into the template 90 on the
sender’s screen 100. Then the user enters an email address 114,
and can play the ad 106, and then finally sends it 108 to the
remote device to be displayed.

Id. at 36. According to Appellant: “Quan does not disclose the claimed
limitations because there are missing elements (e.g. first instruction).” Id. at
37.
In response to Appellant’s argument, the Examiner states:
The Examiner first wants to point out that the claims 1, and 1[1]
do not exclude the template from being displayed and secondly,
Quan teaches on Figure 3 and col. 6, lines 24-30 there’s “other
embodiments, the templates can also be created by a third
party service provider such as Yahoo.TM.” .. “a template 90
includes provision for displaying a personalized or custom
message and provision for displaying or playing a media file.
The media file may include one of a picture file, a video file, an
audio-video file” as can be seen by Quan above and contrary to
Appellant's arguments above, a first instruction is sent to the
device/sender/advertiser where the device of the
advertiser/sender then defines the personalized content based on
the template data 90 to create the personalized targeted
advertisements by providing necessary information as per the
requirements of the selected template 90 on col. 6. Lines 34-40.
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Ans. 5–6. We are persuaded of Examiner error.
First, the Examiner does not adequately explain where the process
steps recited in claims 1 and 11 are disclosed in Quan. For example, step (b)
in claim 1 is performed in response to step (a) because “the personalized
Internet-based advertisement being defined” in step (b) is based on the
advertisement template sent in step (a). Figure 3 of Quan, on which the
Examiner relies, “illustrates exemplary personalized targeted advertisement
templates 90.” Quan 6:22–23. Figure 3 shows three options to pick a
template: “[c]aption,” “[c]elebrate” or “[t]his just in.” See Quan, Fig. 3.
According to Quan, “[t]he templates 90 are used by the senders to create
personalized targeted advertisements by providing necessary information as
per the requirements of the selected template 90.” Quan 6:34–36. Quan
simply provides a webpage for a sender to select a template based on a
theme (e.g., celebrate), personalize it (e.g., email, upload image, caption),
preview the advertisement, and send it. See Quan Fig. 4.
Quan, however, cannot anticipate the claims because the steps in
claims 1 and 11 are recited as being performed in relation to and in sequence
to each other. The Examiner has not shown that Quan either expressly or
inherently discloses the process in the order recited in claims 1 and 11.
Moreover, in response to Appellant’s argument that Quan does not
disclose “the personalized Internet-based advertisement is configured to be
displayed within a portion of a third-party webpage populated by a social
network application defined by a third party” as recited in claim 1, the
Examiner improperly relies upon a different embodiment of Quan as
disclosing step (c). See Ans. 6 (“Quan teaches on Figure 3 and col. 6, lines
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24-30 there’s “other embodiments, the templates can also be created by a
third party service provider such as Yahoo.”).
It is well-settled that

[s]uch picking and choosing may be entirely proper in the
making of a 103, obviousness rejection, where the applicant
must be afforded an opportunity to rebut with objective
evidence any inference of obviousness which may arise from
the similarity of the subject matter which he claims to the prior
art, but it has no place in the making of a 102, anticipation
rejection.

Application of Arkley, 455 F.2d. 586, 587–88 (CCPA 1972); see also Net
MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008)
(“Thus, it is not enough that the prior art reference . . . includes multiple,
distinct teachings that the artisan might somehow combine to achieve the
claimed invention.”) (Citation to Arkley omitted). As such, Examiner fails
to demonstrate that Quan discloses, in a single embodiment, each and every
element of claims 1 and 11, as set forth in the claims. See Verdegaal Bros.,
Inc. v. Union Oil Co. of Cal., 814 F.2d 631 (Fed. Cir. 1987). The
Examiner’s erroneous reliance on two separate and distinct embodiments in
combination cannot establish anticipation because that would require an
artisan to combine those embodiments to achieve the claimed invention.
Because Examiner has failed to establish that Quan discloses each and every
element of the claims in a single embodiment, we do not sustain the
rejection of independent claims 1 and 11 as anticipated by Quan, including
claims 2–6, 8 and 10 dependent thereon.

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Rejection under 35 U.S.C. § 102(a) as anticipated by Rohan
Claims 19–23
Appellant argues Rohan fails to anticipate independent claim 19
because the links in Rohan, on which the Examiner relies, are not equivalent
to “calculating a plurality of relationship strength scores because a link
simply means that the members share a common interest.” Br. 61 (“Rohan’s
weighted links are precomputed and not done at the request of user as is
done in Applicant’s claims.”). Id.
We are persuaded by Appellant’s argument because claim 19 requires
calculating a strength score “for each network friend associated with the
user, a score that indicates the strength of that network friend’s relationship
with the user.” Spec. ¶ 1057; see also Claim 19 supra. Rohan discloses:
Identifying one or more communities can include grouping
members based on the links established between the members
of the network. The link can connect a first member with one or
more members of the network. Each link can have a weight.
The method can further include identifying one or more
common interests of the plurality of members of a community
based on the content of the profiles of the plurality of members.
The method can further include ranking the plurality of
members belonging to each of the one or more communities
based on the links between the members of the community.

Rohan ¶ 7. For example, Rohan discloses that an influencer can be a
member with the highest rank, such that an advertisement is placed solely on
the profile of the influencer. Id. Although Rohan discloses that “a link
between two members where one member has designated another member
as a friend is associated more weight than a link where one member
occasionally visits another member’s web page” (Rohan ¶ 29), Rohan fails
to disclose calculating a plurality of relationship strength scores, wherein
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each strength score is based on profile content associated with both a friend
identifier (from the plurality of friend identifiers received) and the user
identifier, as required by claim 19.
Accordingly, we do not sustain the rejection of independent claim 19
as anticipated by Rohan, including claims 20–23 dependent thereon.

Rejection under 35 U.S.C. § 103(a) as obvious over Quan and Gang
Claims 7 and 13–18
In rejecting dependent claims 7 and 13–18 as obvious over Quan and
Gang, the Examiner relies on the same flawed finding discussed above with
respect to independent claims 1 and 11. The Examiner’s reliance on Gang
does not remedy this flaw. As such, we do not sustain the rejection of
claims 7 and 13–18, which depend from claims 1 and 11, for the foregoing
reasons.
CONCLUSION
The rejection of claims 1–8, 10, 11, and 13–23 under 35 U.S.C. § 101
is AFFIRMED.
The rejections of claims 1–8, 10, 11, and 13–23 under 35 U.S.C.
§§ 102 and 103 are REVERSED.
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DECISION SUMMARY

Claims
Rejected
35 U.S.C.
§
Reference(s)/
Basis
Affirmed Reversed
1–8, 10, 11,
13–23
101 Eligibility 1–8, 10,
11, 13–23

1–6, 8, 10, 11 102(e) Quan 1–6, 8, 10,
11
19–23 102(a) Rohan 19–23
7, 13–18 103(a) Quan, Gang 7, 13–18
Overall
Outcome:
1–8, 10,
11, 13–23

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).

AFFIRMED