Selinger, David et al.

Patent Trials and Appeals Board

May 18, 2020

2019002308 (P.T.A.B. May. 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.
12/012,280 02/01/2008 David Selinger 800054.410 2319
157877 7590 05/18/2020
James A. D. White
VLP Law Group
7683 SE 27th Street #145
Mercer Island, WA 98040
EXAMINER
POUNCIL, DARNELL A
ART UNIT PAPER NUMBER
3621
NOTIFICATION DATE DELIVERY MODE
05/18/2020 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):
AWendel@vlplawgroup.com
JWhite@vlplawgroup.com
patents@vlplawgroup.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte DAVID SELINGER, TYLER KOHN, MICHAEL DeCOURCEY,
SUNDEEP AHUJA, JAMES OSIAL, and ALBERT SUNWOO
____________________

Appeal 2019-002308
Application 12/012,280
Technology Center 3600
____________________

Before JUSTIN BUSCH, CATHERINE SHIANG, and
JASON J. CHUNG, Administrative Patent Judges.

Opinion for the Board filed by BUSCH, Administrative Patent Judge.

Opinion Concurring in part and Dissenting in part filed by SHIANG,
Administrative Patent Judge.

BUSCH, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from a Non-Final
Rejection of claims 1–19. We have jurisdiction over the pending claims
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. Appellant identifies RichRelevance, Inc. as the real party in interest.
Appeal Br. 2.
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CLAIMED SUBJECT MATTER
Appellant’s disclosure generally relates to “providing targeted
content, such as advertising, by analyzing the context in which the content is
to be provided in light of known attributes of the content available to be
provided and the one or more recipients of the content.” Spec. ¶ 1, Abstract.
Claims 1, 11, and 16 are independent claims, and claim 1 is reproduced
below:
1. A computer-implemented process comprising:
obtaining, by a configured computer system, a selection
model that includes a plurality of data sets identifying popular
products available from a plurality of retailers and includes a rule
set for identifying non-competitive advertisements;
obtaining, by the configured computer system, a user
model that includes user-specific activity data regarding user
behavior of a specific user;
receiving, by the configured computer system, a request to
provide electronic advertising for the specific user along with
other information from an originating retailer, wherein the other
information is related to one or more products available from the
originating retailer, and wherein the configured computer system
is operated by an operator distinct from the originating retailer;
selecting, by the configured computer system and in
response to the received request, personalized non-competitive
electronic advertising for the specific user from one or more
other retailers of the plurality of retailers who are distinct from
the originating retailer, the selecting including using the selection
model and the user model to determine advertisements that are
relevant to the specific user and including using the rule set of
the selection model to identify at least one of the determined
advertisements that are for products available from the one or
more other retailers and that are non-competitive for the
originating retailer, the products available from the one or more
other retailers being distinct from the one or more products
available from the originating retailer;
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formatting, by the configured computer system, one or
more of the identified advertisements in an electronic format that
appears to be from the originating retailer; and
initiating presentation to the specific user of the formatted
one or more identified advertisements along with the other
information from the originating retailer, the initiating of the
presentation including providing, by the configured computer
system, the formatted one or more identified advertisements in
the electronic format.

REJECTIONS
Claims 1–19 stand rejected under 35 U.S.C. § 112, first paragraph, for
failing to comply with the written description requirement. Non-Final
Act. 2–3.
Claims 1–19 stand rejected under 35 U.S.C. § 101 as being directed to
patent-ineligible subject matter. Non-Final Act. 4–7.
Claims 1–3, 5–8, 10–14, and 16–19 stand rejected under 35 U.S.C.
§ 103 as being obvious in view of Barton (US 2009/0192888 A1; July 30,
2009) and Ross (US 6,629,135 B1; Sept. 30, 2003). Non-Final Act. 8–12.2
Claim 4 stands rejected under 35 U.S.C. § 103 as being obvious in
view of Barton, Ross, and Official Notice. Non-Final Act. 13.
Claims 9 and 15 stand rejected under 35 U.S.C. § 103 as being
obvious in view of Barton, Ross, and Nayfeh (US 7,747,676 B1; June 29,
2010). Non-Final Act. 13–14.

2 The Examiner includes claims 9 and 15 in the heading of this rejection, but
does not substantively reject claims 9 and 15 as obvious in view of Barton
and Ross. Non-Final Act. 8–12. Instead, the Examiner separately rejects
claims 9 and 15 as obvious in view of Barton, Ross, and Nayfeh. Non-Final
Act. 13–14.
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ANALYSIS
REJECTION UNDER 35 U.S.C. § 112, FIRST PARAGRAPH
The Examiner rejects claims 1–19 under 35 U.S.C. § 112, first
paragraph for failing to comply with the written description requirement.
Non-Final Act. 2–3. Specifically, the Examiner finds the Specification does
not provide written description support for three clauses: (1) “formatting, by
the configured computer system, one or more of the identified
advertisements in an electronic format that appears to be from the
originating retailer,” (hereinafter “formatting step”) as recited in claim 1 and
commensurately recited in claims; (2) “generating the selection model using
a feedback model,” as recited in claim 7 and commensurately recited in
claim 133; and (3) “wherein the selecting of the personalized non-
competitive electronic advertising for the specific user includes using a
weighted scoring system identifying correlations in the user-specific activity
data,” as recited in claims 9 and 15. Non-Final Act. 3; Ans. 5–6.
With respect to the formatting step, the Examiner finds that, although
the Specification supports communicating or providing an advertisement so
that it appears to have been sent by the originating retailer, the Specification
does not support formatting an advertisement in a format that appears to be
from the originating retailer. Non-Final Act. 3 (citing Spec. ¶¶ 31, 32, 120,

3 The Examiner rejects claim 12 for failing to support a limitation related to
generating a selection model using a feedback model. Non-Final Act. 3.
However, claim 13, not claim 12, recites a limitation related to generating a
selection model using a feedback model. See Appeal Br. 57–58. Appellant
acknowledges this apparent typographical error and responds to the rejection
as if the Examiner correctly rejected claim 13. Appeal Br. 34–35.
Accordingly, the Examiner’s error was harmless as Appellant was afforded
an opportunity to respond.
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122); Ans. 5–6 (citing Spec. ¶ 32). More specifically, the Examiner finds
the Specification supports, for example, sending an email that appears to be
from one retailer instead of another. Ans. 6.
Appellant argues Figure 9 and the accompanying description, both of
which disclose “communicating the electronic advertising to the users such
that each advertisement appears to have been sent by the respective
originating retailer,” support the recited formatting step. Appeal Br. 32
(quoting ¶ 134, Fig. 9 (item 960) (emphasis omitted)). Appellant also
contends the Specification supports the formatting step because it discloses
formatting an advertisement into an electronic format and providing the
identified advertisements in an electronic format. Appeal Br. 32–33
(quoting Spec. ¶¶ 103, 104, 117,4 121). Finally, Appellant asserts the
originally filed claims support the formatting limitation as currently recited.
Appeal Br. 33; see Spec. 41 (originally filed claim 1 reciting “providing in
an electronic format one or more . . . advertisements . . . wherein the
provided electronic format is affiliated with an originating retailer” and
originally filed claim 2 additionally reciting “providing in an electronic
format includes providing on a website”).
To satisfy the written description requirement, the disclosure must
reasonably convey to ordinarily skilled artisans that Appellant possessed the
claimed invention as of the filing date. See Ariad Pharms., Inc. v. Eli Lilly
& Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc). Specifically, the test
requires “an objective inquiry into the four corners of the specification from

4 Appellant indicates the quoted portion is from paragraph 17, but the
excerpted portion actually is from Specification paragraph 117. See Appeal
Br. 33; Spec. ¶¶ 17, 117.
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the perspective of a person of ordinary skill in the art” to determine whether
the specification describes “an invention understandable to that skilled
artisan and show[s] that the inventor actually invented the invention
claimed.” Ariad Pharms., 598 F.3d at 1351 (quotations and citations
omitted). However, it is not enough to satisfy the written description
requirement that the claimed subject matter would have been obvious to a
person of ordinary skill in view of the written description. See Ariad
Pharms., 598 F.3d at 1352 (citing Lockwood v. Am. Airlines, 107 F.3d 1565,
1571–72 (Fed. Cir. 1997)); ICU Med., Inc. v. Alaris Med. Sys., Inc., 558
F.3d 1368, 1377 (Fed. Cir. 2009); see also Regents of the Univ. of Cal. v. Eli
Lilly & Co., 119 F.3d 1559, 1566–67 (Fed. Cir. 1997) (explaining that “an
applicant complies with the written description requirement by describing
the invention, with all its claimed limitations, not [by describing merely] that
which makes it obvious” (quotations omitted)).
Moreover, when construing claim terminology during prosecution
before the Office, claims are to be given their broadest reasonable
interpretation consistent with the Specification, reading claim language in
light of the Specification as it would be interpreted by one of ordinary skill
in the art. In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir.
2004). We are mindful, however, that limitations are not to be read into the
claims from the Specification. In re Van Geuns, 988 F.2d 1181, 1184 (Fed.
Cir. 1993). Because “applicants may amend claims to narrow their scope, a
broad construction during prosecution creates no unfairness to the applicant
or patentee.” In re ICON Health & Fitness, Inc., 496 F.3d 1374, 1379 (Fed.
Cir. 2007) (citation omitted).
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We agree with Appellant that the Specification supports creating or
formatting an advertisement in an electronic format and providing or
communicating that advertisement to a user. See Appeal Br. 32–33 (quoting
Spec. ¶¶ 103, 104, 117, 121). The Specification describes creating
advertisements. Spec. ¶ 117 (“advertisements may be created as part of the
selection process, wherein a personalized advertisement is created, for
example, using information from the selection model and user model”). The
Specification also describes providing advertisements to a user in an
electronic format. Spec. ¶¶ 103 (“providing . . . advertisements in an
electronic format”), 104 (“advertisement is provided to the user . . . through
networked computers, a mobile device, . . . electronic paper, or any number
of non-electronic formats”), 121 (disclosing that “once an advertisement has
been selected, or created, as described above, the advertisement may be
provided to the user 26 in electronic format”; describing exemplary formats
including HTML, Flash, binary, and XML; and explaining that “any method
of delivering an electronic or personalized electronic advertisement may be
used” and “[a]ny electronic format may be used to provide the
advertisement”).
However, creating and/or formatting advertisements into an electronic
format and sending those electronically formatted advertisements to a user is
not the same as the recited formatting step. Representative claim 1 recites,
in relevant part, “formatting . . . the identified advertisements in an
electronic format that appears to be from the originating retailer.” Appeal
Br. 55 (emphasis added). As the Examiner notes, Ans. 5–6, the
Specification discloses providing or “communicating the electronic
advertising . . . such that each user receives a communication that appears to
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have been sent by the originating retailer” but the Specification’s disclosed
providing and communicating do not include formatting. Spec. ¶ 32
(emphasis added); see Spec. ¶¶ 103, 104, 121. Although the Specification
discloses creating or formatting advertisements in an electronic format, the
Specification merely describes various such formats (e.g., HTML, XML,
and Flash) without disclosing a format that appears to be from the
originating retailer, as recited in representative claim 1. See Spec. ¶¶ 117,
121. In other words, the Specification supports formatting an advertisement
in, for example, HTML, but nothing in the Specification indicates that the
particular HTML formatting “appears to be from the originating retailer.”
Appellant’s original claim language is broader than the formatting
step recited in representative claim 1. The original claim language merely
recites that the format is “affiliated with” the originating retailer, which is
broader than a “format that appears to be from the originating retailer.”
Whereas the original claim language merely requires that the format be
affiliated with the originating retailer, the formatting step recited in
representative claim 1 requires the recited format to convey to a user that the
advertisement came from the originating retailer. Accordingly, we agree
with the Examiner that representative claim 1, and independent claims 11
and 16, which recite similar formatting steps, lack sufficient written
description support for the formatting step.
The Examiner also rejects claims 7 and 13, finding the Specification
lacks written description support for the “selection model [being] generated
using a feedback model.” Non-Final Act. 3. Appellant argues the
Specification supports “generating the selection model using a feedback
model,” as recited in claim 7 and commensurately recited in claim 13.
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Appeal Br. 34–35 (quoting Spec. ¶¶ 101–105, 119, 120). The Examiner
provides no further explanation regarding the rejection. See Non-Final
Act. 3; Ans. 5–6 (addressing only the formatting step).
We have reviewed the Specification, including the portions Appellant
cites, and we disagree with Appellant that the Specification provides
sufficient written description support for “generating the selection model
using a feedback model,” as recited in claim 7 and commensurately recited
in claim 13. We agree with Appellant that the Specification supports “using
a feedback model during the process of generating and using a selecti[on]
model.” Appeal Br. 34 (emphasis added); see Appeal Br. 34–35 (quoting
Spec. ¶¶ 101–105, 119, 120). However, the limitation at issue recites
“generating the selection model using a feedback model.” Appeal Br. 56
(emphasis added).
The cited Specification paragraphs disclose generating selection and
user models and using those models to identify relevant, non-competitive,
targeted advertisements. Spec. ¶¶ 101–104; see also Spec. ¶ 96 (disclosing
“generating a selection model based on product data and user behavior”).
Specifically, a selection model is “used to analyze targeted content to be
provided to a user” and the selection model “may be product graphs,
category graphs, and content/category graphs” or “any other model used to
identify targeted content.” Spec. ¶ 105.
The Specification also describes “application of the selection models
and user models” to determine related, non-competitive products or services
and associated advertisements. Spec. ¶ 119. Applying the model may
include scoring the products, services, websites, and/or advertisements to
select an advertisement to be provided to a user. Spec. ¶ 119. The disclosed
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scoring “may be based on product data and transactional data [and] may be a
feedback model relying on retailers bidding for placement or may be any
other scoring model.” Spec. ¶ 120.
On this record, we find the Specification supports generating and
applying a selection model, wherein applying the model may include scoring
products, services, retailers, websites, and advertisements. See Spec. ¶¶ 96,
101–105, 119. The Specification also supports scoring based on a feedback
model. Spec. ¶ 120. Accordingly, we find the Specification supports
applying a selection model based on a feedback model, but claim 7 recites
“generating the selection model using a feedback model” and claim 13
recites “the selection model is based at least in part on a feedback model.”
Appeal Br. 56, 58 (emphases added). Upon reviewing the Specification,
although we find support for applying the model using a feedback model or
basing scoring on a feedback model, we find no support for generating a
model using a feedback model or a selection model that is based on a
feedback model.
Appellant argues current pending claims 7 and 13 have written
description support because “originally filed claim 7 includes almost
identical language to that of currently pending claim 7.” Appeal Br. 34.
Appellant contends that, because “the objected-to claim language was part of
the specification as filed in original claim 7, the Office has clearly failed to
satisfy the burden of overcoming the strong presumption of showing that
inventors were not in possession of the language in those original claims.”
Appeal Br. 34.
Although we agree with Appellant that original claim 7 includes
similar language to currently pending claims 7 and 13, we disagree that
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merely including similar language in an originally filed claim sufficiently
demonstrates that the inventors were in possession of the claimed subject
matter at the time of the invention. “[W]hile it is true that original claims
are part of the original specification, that truism fails to address the question
of whether original claim language necessarily discloses the subject matter
that it claims.” Ariad Pharms., 598 F.3d at 1349 (citation omitted).
In cases where functional claim language recites merely a desired
result, the claim “may do so without describing species that achieve that
result” and, in such cases, “the specification must demonstrate that the
application has made a generic invention that achieves the claimed result . . .
by showing . . . species sufficient to support a claim to the functionally-
defined genus.” Ariad Pharms., 589 F.3d at 1349; see LizardTech, Inc. v.
Earth Res. Mapping, Inc., 424 F.3d 1336, 1343–46 (Fed. Cir. 2005); see also
Regents of the Univ. of Cal. v. Eli Lilly & Co., 119 F.3d 1559, 1568 (Fed.
Cir. 1997) (“The description requirement of the patent statute requires a
description of an invention, not an indication of a result that one might
achieve if one made that invention.”). As discussed above, the Specification
does not describe a single instance in which the system generates a selection
model using a feedback model, let alone sufficient species to demonstrate
possession of the genus. Accordingly, we agree with the Examiner that
claims 7 and 13 lack sufficient written description support.
Finally, the Examiner rejects claims 9 and 15 for lacking written
description support. The Examiner does not identify any particular portion
of claims 9 and 15 that lack written description support, and the Examiner
provides no further explanation of the rejection. Non-Final Act. 3; Ans. 5–6
(addressing only the formatting step).
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On this record, we agree with Appellant that the Specification
supports the additional limitations recited in claims 9 and 15. The Examiner
fails to explain adequately the particular aspects the Examiner finds
unsupported—the entirety of the rejection of these claims states “the
originally filed claims 9 and 15 do not appear to have any support in the
applicant’s specification.” Non-Final Act. 3; see Ans. 5–6 (addressing only
the formatting step with respect to the rejections under 35 U.S.C. § 112).
Appellant argues the Specification supports the subject matter recited
in claims 9 and 15. Appeal Br. 35–36 (quoting Spec. ¶¶ 64, 74, 75).
Specifically, Appellant identifies disclosures in the Specification that
describe a weighted scoring system using product and category graphs and
filtering out certain graphs based on user behavior feedback. Appeal Br. 36
(quoting Spec. ¶¶ 64, 74, 75). These disclosures appear to support at least a
weighted scoring system in which certain elements used in the scoring
system may be filtered out based on user behavior. Therefore, without
further explanation, the rejection lacks sufficient findings and explanation to
support the rejection under 35 U.S.C. § 112. However, should this matter
undergo further prosecution, we invite the Examiner to provide additional
detail regarding the particular aspects of claims 9 and 15 that the Examiner
finds unsupported by the Specification and the reasons for such findings.
We also invite the Examiner to evaluate the proper construction of “a
weighted scoring system identifying correlations in the user-specific activity
data” and, more particularly, whether this particular aspect of claims 9 and
15 is properly supported and clearly defines the scope of the invention.
For the reasons discussed above, we are not persuaded the Examiner
erred in rejecting independent claims 1, 11, and 16 for failing to provide
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written description support for the formatting steps and dependent claims 7
and 13 for failing to provide written description support for generating a
selection model based on a feedback model. We are, however, persuaded
the Examiner erred in rejecting claims 9 and 15 for lacking written
description support. Because every dependent claim incorporates the
formatting steps recited in the independent claims via their dependency, we
sustain the Examiner’s rejection of claims 1–19 under 35 U.S.C. § 112, first
paragraph.
REJECTIONS UNDER 35 U.S.C. § 103
The Examiner rejects claims 1–3, 5–8, 10–14, and 16–19 as obvious
in view of Barton and Ross; claim 4 as obvious in view of Barton, Ross, and
Official Notice; and claims 9 and 15 as obvious in view of Barton, Ross, and
Nayfeh. Non-Final Act. 8–14. Although Appellant argues claims 11–19
under separate headings, Appellant presents the same arguments for claims
1–9 and 11–19. See Appeal Br. 26 (“Pending dependent claims 2-9 depend
from independent claim 1, and are thus allowable for at least the same
reasons as claim 1.”), 29 (“For at least these reasons, and as discussed above
in an analogous manner with respect to independent claim 1, the Barton and
Ross references fail to disclose or otherwise render obvious the features and
functionality of pending independent claim 16.”), 31 (“For at least these
reasons, and as discussed above in an analogous manner with respect to
independent claim 1, the Barton and Ross references fail to disclose or
otherwise render obvious the features and functionality of pending
independent claim 11.”). Accordingly, we select independent claim 1 as
representative of claims 1–9 and 11–19. See 37 C.F.R. § 41.37(c)(iv). We
address Appellant’s arguments regarding claim 10 separately.
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Claims 1–9 and 11–19
Appellant argues the combination of Barton and Ross fails to teach or
suggest (1) identifying non-competitive products (“using the rule set of the
selection model to identify at least one of the determined advertisements that
are for products available from the one or more other retailers and that are
non-competitive for the originating retailer”), (2) the formatting step, and (3)
identifying and using information about popular products (“a plurality of
data sets identifying popular products available from a plurality of
retailers”). Appeal Br. 16–26; Reply Br. 5–12.
The Examiner finds modifying Barton’s method with Ross’s
disclosures teaches or suggests the formatting step. Non-Final Act. 9–10
(citing Ross 24:40–25:10, Abstract, Fig. 15); Ans. 3–4 (citing same). The
Examiner also finds Barton teaches or suggests using a selection model’s
rule set to identify a relevant advertisement for a non-competitive product
available from another retailer. Non-Final Act. 9 (citing Barton ¶¶ 29, 45,
49); Ans. 4–5 (citing Barton ¶ 29). The Examiner finds Barton teaches or
suggests obtaining a selection model that includes data sets identifying
popular products available from a plurality of retailers and a rule set for
identifying non-competitive advertisements and, moreover, the Examiner
finds the recited term “popular” is non-functional descriptive material. Non-
Final Act. 8 (citing Barton ¶¶ 18, 24, 25, 29); Ans. 4 (citing Barton ¶ 18).
Identifying Non-Competitive Products
The Examiner finds Barton’s disclosure of identifying complementary
and/or related advertisements teaches or suggests the recited identifying non-
competitive advertisements. Non-Final Act. 9 (citing Barton ¶¶ 29, 45, 49);
Ans. 5; see Barton ¶ 29 (“an advertisement for a different type of product or
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service that is related in some way to the product or service purchased may
be selected for display”). The Examiner also notes the Specification does
not clearly define “non-competitive” but discloses that providing “non-
competitive advertisement[s]” is “met by providing cooperative
advertising.” Ans. 4–5 (citing Spec. ¶ 30).5 The Examiner finds Barton’s
disclosure of providing advertisements for related products of a different
type would be considered non-competitive. Ans. 5.
Barton “relates to systems and methods for providing advertisements
on websites.” Barton, Abstract. A retailer may have a website that may
display advertisements to users. Barton ¶ 38. The system selects
advertisements for related and/or complementary products and services.
Barton ¶¶ 17, 29. An ad server may provide the advertisements displayed on
the retailer’s website to a user visiting that website. Barton ¶ 39. When a
user purchases a product or service at the retailer’s website, the retailer sends
information to an analyzer, which analyzes user, product, and other
information to determine an advertisement to deliver to the retailer’s
website. Barton ¶ 45. The retailer’s website then displays the advertisement
with the purchase confirmation. Barton ¶¶ 46, 49.

5 Like the Examiner, we are unable to find a clear description in the
Specification of objective criteria for identifying non-competitive products.
To the extent this matter should undergo further prosecution, we encourage
the Examiner to consider whether the term “non-competitive” is sufficiently
definite under 35 U.S.C. § 112, second paragraph, to clearly define the scope
of the invention to a person of ordinary skill in the art. See Spec. ¶ 10
(appearing to require a subjective determination by defining non-competitive
as “generally accepted to not be competitive as understood by the originating
retailer”).
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Appellant argues Barton teaches away from identifying
advertisements for products that are non-competitive for the originating
retailer because Barton teaches allowing bundling of the advertised product
and the product purchase from the originating retailer, “implying that both
products must be available from the same single retailer.” Appeal Br. 23
(citing Barton ¶ 49) (emphasis omitted). Appellant argues Barton focuses on
complementary products available from the same retailer and does not
consider identifying products from other retailers that are non-competitive.
Appeal Br. 23.
We agree with the Examiner that Barton teaches or suggests selecting
advertising and identifying non-competitive advertisements. Contrary to
Appellant’s arguments, we find Barton at least suggests identifying
advertisements for products from other retailers that are non-competitive to
the originating retailer. As discussed above, Barton teaches providing
advertisements for related and/or complementary advertisements. See, e.g.,
Barton ¶¶ 17, 29. Barton provides an example in which the system identifies
advertisements for flights to, or hotels in, India in response to a user
purchasing a book about traveling to India. Barton ¶¶ 18, 29, 45. A person
of ordinary skill in the art would have understood that providing
advertisements for flights or hotels in response to a user purchasing a book
teaches providing advertisements for products or services that are from a
different retailer than, and non-competitive to, the originating retailer
because hotels and flights are not usually sold by the same retailer as books.
Appellant points to an example regarding tying together a purchase
from the originating retailer and an advertised product or service. Appeal
Br. 23. This example is merely one embodiment in which Barton allows a
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user to pay for both products and/or services through a single payment
transaction. See Barton ¶ 49. In particular, Barton describes a purchase
server that may not be under the retailer’s control. Barton ¶¶ 38, 39–42.
Accordingly, a purchase server that is not under the retailer’s control may
allow a user to purchase products and services from different retailers in a
single transaction.
On this record, we agree with the Examiner that Barton teaches or
suggests identifying advertisements for products from other retailers that are
non-competitive to the originating retailer for the reasons discussed above.
The Formatting Step
The Examiner finds modifying Barton with Ross’s disclosure of
providing a web page featuring a merchant’s products but having the look
and feel of the host’s website teaches or suggests the formatting step. Non-
Final Act. 9–10 (citing Ross 24:40–25:10). The Examiner finds the host’s
web page in Ross and Barton’s advertisements both offer exposure to
another merchant’s or retailer’s products from the host’s website. Ans. 3.
Appellant argues Ross fails to teach formatting advertisements
because Ross relates to generating web pages having a host’s look and feel.
Appeal Br. 16–17; Reply Br. 10. Appellant asserts Ross mentions
advertisements only in the background and Ross does not indicate that any
of the generated web pages include advertisements formatted to appear to be
from a particular entity. Appeal Br. 17; Reply Br. 10.
We are unpersuaded of Examiner error because Appellant’s
arguments are not responsive to the rejection as articulated by the Examiner.
Non-obviousness cannot be established by attacking references individually
where, as here, the ground of unpatentability is based upon the teachings of a
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combination of references. In re Keller, 642 F.2d 413, 426 (CCPA 1981).
Rather, the test for obviousness is whether the combination of references,
taken as a whole, would have suggested the patentee’s invention to a person
having ordinary skill in the art. In re Merck & Co., 800 F.2d 1091, 1097
(Fed. Cir. 1986).
As discussed above, we agree with the Examiner that Barton teaches
or suggests selecting advertising and identifying non-competitive
advertisements. Barton does not explicitly disclose that the advertisements
are formatted so they appear to be from the originating retailer. However, as
discussed above, Barton teaches providing advertisements on the originating
retailer’s website, which arguably at least suggests formatting the
advertisement in a format that appears to be from the originating retailer.
Moreover, as discussed above, the Examiner relies on the combined
teachings of Barton and Ross. See Non-Final Act. 9–10. The Examiner
finds Barton teaches or suggests selecting advertising including identifying
advertisements that are non-competitive. Non-Final Act. 9 (citing Barton
¶¶ 29, 45, 49). The Examiner relies on Ross to modify Barton’s teachings,
finding Ross teaches it was known to format information regarding products
from a merchant or retailer in a way that it appears the information’s source
is not that merchant or retailer, but a host of the website presenting the
information. Non-Final Act. 9–10 (citing Ross 24:40–25:10). Because
Appellant’s argument does not consider the combined teachings, we are not
persuaded the Examiner erred in finding Barton and Ross teach or suggest
the formatting step.
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Popular Products and the Obtaining a Selection Model Step
The Examiner finds Barton teaches, or at least suggests, obtaining and
using a selection model that includes a plurality of data sets of products
available from a plurality of retailers and includes a rule-set for identifying
non-competitive advertisements because Barton teaches using purchase
information to select advertisements. Non-Final Act. 8–9 (citing Barton
¶¶ 18, 24, 25, 29, 45, 49). The Examiner finds the recited “selection model
is based on product data and [user] behavior” and Barton teaches using
information related to products and user behavior to determine a relevant
advertisement. Ans. 4.
The Examiner also explains “that the term popular in the claims is
non-functional descriptive material” because it “has no bearing [on] how the
method/system would be performed.” Ans. 4 (finding “popular,” not the
entire identifying step or the fact that the identifying step uses the user and
selection models, is non-functional descriptive material); see also Non-Final
Act. 10–11 (explaining that the terms identifying the type or content of
advertisements are merely labels that do not patentably distinguish the
claims because the labels do “not explicitly alter or impact the steps of the
method”). The Examiner also notes the Specification does not explain how
to determine what products are “popular.”6 Ans. 4.

6 Like the Examiner, we are unable to find a clear description in the
Specification regarding a subjective way to identify popular products. To
the extent this matter should undergo further prosecution, we encourage the
Examiner to consider whether the term “popular” is sufficiently definite
under 35 U.S.C. § 112, second paragraph, to clearly define the scope of the
invention to a person of ordinary skill in the art. See Spec. ¶¶ 26–28, 96–98,
107, 109 (the only references to popular do not explain how to determine
which products are popular).
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Appellant argues Barton does not use the recited “plurality of data sets
identifying popular products available from a plurality of retailers,” which
are part of the selection model, to determine advertisements. Appeal Br. 20.
Appellant further argues Barton fails to teach or suggest “using information
about popular products for any reason, let alone as part of determining
advertisements for a user” and “Barton does not appear to ever use the term
‘popular.’” Appeal Br. 20 (emphasis omitted).
Appellant asserts the claims recite an active step of selecting
advertisements using the selection model that includes the data sets of
popular products and the Examiner improperly ignores this step. Appeal
Br. 21–22. Appellant argues this step recites a particular automated
operation, not merely a label for data. Appeal Br. 22. Thus, Appellant
contends Barton fails to teach or suggest “a selection model that includes a
plurality of data sets identifying popular products available from a plurality
of retailers and includes a rule set for identifying non-competitive
advertisements.” Appeal Br. 19–22.
Initially, we note the claim does not require using the plurality of data
sets in any particular way, let alone to determine advertisements. Rather, the
claims recite, in relevant part, “selecting . . . advertising . . . from one or
more other retailers of the plurality of retailers . . ., the selecting including
using the selection model and the user model to determine advertisements
that are relevant [and] using the rule set of the selection model to identify” a
non-competitive advertisement. Appeal Br. 55 (claim 1, emphasis added).
Although the selecting step uses (1) the selection model to determine
advertisements from a retailer other than the originating retailer and (2) the
selection model’s rule set to identify some of those advertisements that are
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non-competitive to the originating retailer, the claims do not require using
the recited data set. Therefore, to the extent Appellant’s argument asserts
Barton does not use the recited data sets to determine advertisements and
Barton does not use information about popular products at all, such an
argument is not commensurate with the scope of the claims.
The Examiner finds only the term “popular” is non-functional
descriptive material. See Ans. 4 (“it is the Examiner’s position that the term
popular in the claims is non-functional descriptive material and has no
bearing how the method/system would be performed”). We agree with the
Examiner that the term “popular” acts merely as a label to identify the
content of information in the recited data sets and does not impact the
claimed methods and systems. See Non-Final Act. 10–11; Ans. 4.
Accordingly, the fact that the claims obtain a selection model including data
sets identifying popular products does not distinguish patentably over prior
art that teaches obtaining a selection model including data sets identifying
products generally.
Regarding the obtaining a selection model step, Appellant disputes
only that Barton teaches identifying and using information about popular
products. As discussed above, Barton teaches a system that uses information
about products or services and user behavior to determine relevant
advertisements—i.e., “advertisements for products or services that are
complementary and/or related to the purchased product or service,” rather
than merely a similarly type of product or service. See Barton ¶¶ 18, 29, 45.
Thus, even considering Appellant’s argument as applied to the selecting
step, Barton at least suggests using a set of rules to select a complementary
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or related product or service from a data set of available products and
services.
Therefore, on this record, we agree with the Examiner that Barton at
least suggests obtaining a selection model including data sets identifying
products available from a plurality of retailers and including a rule set for
identifying non-competitive advertisements. Barton does not teach
explicitly or suggest that the products in the data sets are popular products.
Our reviewing court has held that nonfunctional descriptive material
cannot lend patentability to an invention that would have otherwise been
anticipated by the prior art. In re Ngai, 367 F.3d 1336, 1339 (Fed. Cir.
2004); cf. In re Gulack, 703 F.2d 1381, 1385 (Fed. Cir. 1983) (noting that
when descriptive material is not functionally related to the substrate, the
descriptive material will not distinguish the invention from the prior art in
terms of patentability); King Pharms., Inc. v. Eon Labs, Inc., 616 F.3d 1267,
1279 (Fed. Cir. 2010) (“[T]he relevant question is whether ‘there exists any
new and unobvious functional relationship between the printed matter and
the substrate.’”) (citations omitted). In King Pharmaceuticals, the Federal
Circuit held the same analysis applies to methods. King Pharms., 616 F.3d
at 1279 (“Although these ‘printed matter’ cases involved the addition of
printed matter . . . to a known product, we see no principled reason for
limiting their reasoning to that specific factual context”).
In Nehls, in the context of computer-related inventions, this Board
distinguished functional descriptive material from non-functional descriptive
material. Ex parte Nehls, 88 USPQ2d 1883, 1888–1890 (BPAI 2008)
(comparing In re Warmerdam, 33 F.3d 1354 (Fed. Cir. 1994), with In re
Lowry, 32 F.3d 1579 (Fed. Cir. 1994)). The Board determined that the
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sequences recited in the claims were non-functional descriptive material that
could not render nonobvious an otherwise obvious claim. Nehls, 88
USPQ2d at 1888 (“There is no evidence that SEQ ID NOs 9-1008
functionally affect the process of comparing a target sequence to a database
by changing the efficiency or accuracy or any other characteristic of the
comparison. Rather, the SEQ ID NOs are merely information being
manipulated by a computer”).
Appellant’s claims all recite “a plurality of data sets identifying
popular products.” The fact that the products are popular merely serves to
narrow the scope of products included in the data set. In other words, the
term “popular’ merely identifies the type of products included in the data set,
without reciting a functional relationship to the substrate or the recited steps.
The Specification makes clear that narrowing the products in the data set to
“popular products” is merely one way of narrowing the data set. Spec.
¶¶ 107 (providing examples of product information as including genre, title,
categories, artists, brand, popularity, and price), 109 (disclosing that the
“selection model described herein use[s] ‘similarity’ and ‘popularity’ as the
controlling dimensions of the model . . . [but], it is understood that the
context of the targeted content will determine the dimensions most
appropriate for controlling the selection model”). In other words, the term
popular narrows the claim scope only with respect to the content of the data
sets. The data set contents do not affect the recited structure or how the
recited steps are performed—the system does not select advertisements
differently based on what products are included in the data set. Accordingly,
the claims do not distinguish over the cited prior art based on the fact that
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the data sets include popular products—i.e., the informational content of the
data sets.
The recited popular products included in the data sets, therefore, are
similar to other informational content the Board and Federal Circuit
previously have found to be non-functional for failing to affect how the
claimed steps were carried out. Ngai, 367 F.3d at 1338; Nehls, 88 USPQ2d
at 1887–90 (“[T]he nature of the information being manipulated does not
lend patentability to an otherwise unpatentable computer-implemented
product or process.”); Ex parte Mathias, 84 USPQ2d 1276, 1279 (BPAI
2005) (informative) (“[N]onfunctional descriptive material cannot lend
patentability to an invention that would have otherwise been anticipated by
the prior art.”), aff’d, 191 F. App’x 959 (Fed. Cir. 2006) (Rule 36); see also
Manual of Patent Examining Procedure (“MPEP”) § 2111.05 (9th ed.,
August 2017) (“[W]here the claim as a whole is directed to conveying a
message or meaning to a human reader independent of the intended
computer system, and/or the computer-readable medium merely serves as a
support for information or data, no functional relationship exists.”).
To agree with Appellant’s reasoning would mean that each data set
made up of a different subset of products is sufficient to warrant a separate
patent, even if the remainder of the invention is unchanged. In addition to
resulting in Appellant’s data set including the popular products
distinguishing over the prior art, the same data set including different
products (e.g., unpopular products, sporting goods products, or blue
products) also would distinguish over the prior art, as would the inclusion of
every single unique subset of products in the data set. We would need to
ignore our reviewing court’s concerns with repeated patenting to come to
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this result. We decline to do so. Our rationale behind agreeing with the
Examiner’s findings is preventing the repeated patenting of essentially a
known product or process by the mere inclusion of novel non-functional
descriptive material. King Pharms., 616 F.3d at 1279 (“The rationale behind
this line of cases is preventing the indefinite patenting of known products by
the simple inclusion of novel, yet functionally unrelated limitations.”); cf.
Ngai, 367 F.3d at 1339 (“If we were to adopt Ngai’s position, anyone could
continue patenting a product indefinitely provided that they add a new
instruction sheet to the product.”).
We agree with the Examiner that the prior art teaches or suggests the
obtaining a selection model step. We find any argued difference between
the prior art and the recited limitation simply substitutes one piece of non-
functional descriptive material for another, which does not change the
functioning of the computer system, its storage medium, or the recited steps
carried out when executing the claimed instructions. For these reasons, we
do not find Barton’s failure to explicitly disclose data sets identifying
popular products to be fatal to the Examiner’s conclusion of obviousness
because the particular information content does not patentably distinguish
the claims over the prior art.
Summary Regarding Claims 1–9 and 11–19
For the reasons discussed above, we are not persuaded the Examiner
erred in rejecting claims 1–9 and 11–19 as obvious. Accordingly, we sustain
the Examiner’s rejection of independent claims 1, 11, and 16 under
35 U.S.C. § 103. Appellant does not argue dependent claims 2–9, 12–15,
and 17–19 separately with particularity. Therefore, we also sustain the
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Examiner’s rejection of dependent claims 2–9, 12–15, and 17–19 under
35 U.S.C. § 103.
Claim 10
Appellant argues Barton and Ross do not teach or suggest “sending
. . . electronic communications that include information about the formatted
one or more identified advertisements, to cause the formatted one or more
identified advertisements to be displayed to the specific user on the client
device,” as recited in claim 10. Appeal Br. 26–27. Appellant notes the
Examiner’s rejection does not address the limitations recited in claim 10.
Appeal Br. 27.
The Examiner rejects claim 10 as obvious in view of Barton and Ross,
finding “Barton and Ross disclose the process of claim 1, Barton discloses
wherein the step of selecting non-competitive personalized electronic
advertising occurs in real time.” Non-Final Act. 12 (citing Barton ¶ 40).
The Examiner’s rejection does not address the additional limitation recited
in claim 10. The Examiner explains the rejection included “a typographical
error,” but finds Barton’s paragraph 40 “is still relevant.” Ans. 5.
In the Reply Brief, Appellant incorrectly addresses the Examiner’s
response regarding the rejections under 35 U.S.C. § 112 and does not
address the Examiner’s response to the art rejection of claim 10. Reply
Br. 13–14. As noted above, the Examiner’s response regarding Appellant’s
argument that claim 10 is not taught by Barton and Ross simply states that
Barton’s paragraph 40 teaches or suggests the subject matter. See Ans. 5.
Claim 10 recites sending to a client device over a network a
communication that includes information causing the client device to display
the formatted advertisement. Although this sending step appears to require
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no more than transmitting a formatted web page including an advertisement
to a device over a network, we disagree with the Examiner that the cited
paragraph in Barton teaches or suggests this limitation. See Barton ¶ 40
(describing an advertisement source, such as a database or data feed, that
stores advertisements to be displayed on retailer’s websites). Nothing in the
cited paragraph appears to relate to sending a communication over a network
to a client device. Although this limitation appears to be a necessary step in
any system that formats an advertisement for display on a user device (and
arguably is commensurate in scope to the sending limitation in claim 11), we
agree with Appellant that the Examiner has not identified disclosures in
Barton or Ross that teach or suggest the subject matter recited in claim 1.
For the reasons discussed above, we are constrained by the record to
reverse the Examiner’s rejection of claim 10 as obvious under 35 U.S.C.
§ 103. The Patent Trial and Appeal Board is a review body, rather than a
place of initial examination. Our decision not to enter a new ground of
rejection for claim 10 should not be considered as an indication regarding
the appropriateness of further rejection or allowance of the claim. See
MPEP § 1213.02.
REJECTION UNDER 35 U.S.C. § 101
The Examiner determines the claims are patent-ineligible under
35 U.S.C. § 101. Non-Final Act. 4–7. Appellant disputes the Examiner’s
rejection, arguing the claims are not directed to an abstract idea and the
claims recite significantly more than any alleged abstract idea. Appeal
Br. 37–53. Appellant argues the alleged abstract idea (“selecting
personalized non-competitive advertisements”) is not within the identified
categories of abstract ideas and the claimed functionality “is integrated into a
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practical application of improving technological processes and displaying
information more efficiently to enable more efficient subsequent related
activities.” Reply Br. 14–16 (emphasis omitted).
If a claim falls within one of the statutory categories of patent
eligibility, the Supreme Court’s two-step framework guides our analysis of
patent eligibility under 35 U.S.C. § 101—i.e., evaluating whether the claim
is directed to a judicially recognized exception. Alice Corp. v. CLS Bank
Int’l, 573 U.S. 208, 217 (2014). In addition, the United States Patent and
Trademark Office has published revised guidance for evaluating subject
matter eligibility under 35 U.S.C. § 101, specifically with respect to
applying the Alice framework. USPTO, 2019 Revised Patent Subject Matter
Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (“Guidance”); USPTO,
October 2019 Patent Eligibility Guidance Update (Oct. 18, 2019),
https://www.uspto.gov/PatentEligibility (“Guidance Update”).
As part of our inquiry, we “look at the ‘focus of the claimed advance
over the prior art’ to determine if the claim’s ‘character as a whole’ is
directed to excluded subject matter.” Affinity Labs of Tex., LLC v.
DIRECTV, LLC, 838 F.3d 1253, 1257 (Fed. Cir. 2016); see Alice, 573 U.S.
at 217 (“First, we determine whether the claims at issue are directed to one
of those patent-ineligible concepts”). The Guidance breaks this “directed to”
inquiry (“Step 2A”) into two prongs of analysis: (i) does the claim recite a
judicial exception (e.g., an abstract idea) (“Prong 1”), and (ii) if so, is the
judicial exception integrated into a practical application (“Prong 2”).
Guidance, 84 Fed. Reg. at 54.
If we determine the claim is directed to an abstract idea, we then
examine “the elements of each claim both individually and ‘as an ordered
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combination’ to determine whether the additional elements ‘transform the
nature of the claim’ into a patent-eligible application.” Alice, 573 U.S. at
217 (quoting Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S.
66, 78, 79 (2012)). That is, we examine the claims for an “inventive
concept,” “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 (alteration
in original) (quoting Mayo, 566 U.S. at 72–73); see Guidance, 84 Fed.
Reg. at 56 (directing us to consider whether the additional claim elements
add “a specific limitation or combination of limitations that are not well-
understood, routine, conventional activity in the field” or “simply append[]
well-understood, routine, conventional activities previously known to the
industry” (“Step 2B”)).
Guidance Step 2A (The Alice “Directed To” Inquiry)
We conclude the claims are directed to certain methods of organizing
human activity (i.e., advertising, marketing, and sales activities) and,
alternatively, mental processes (i.e., a concept performed in the human mind,
such as, an observation, evaluation, judgment, and opinion), which are
abstract ideas. See Guidance, 84 Fed. Reg. at 52. The Examiner
characterizes the claims as being “directed to[ ]selecting personalized non-
competitive advertisements.” Non-Final Act. 4; see Non-Final Act. 5–6
(concluding the claims are directed to abstract ideas similar to claims the
Federal Circuit has found ineligible). In general, we agree with the
Examiner’s characterization.
More specifically, the claims are directed to receiving a request for an
advertisement to present to a user along with product information from a
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retailer, selecting a relevant, non-competitive advertisement from another
retailer by obtaining and applying selection and user models, formatting the
advertisement, and providing the advertisement and product information
decision to the user (hereinafter, “selecting and presenting a targeted
advertisement”). Although we describe the abstract idea slightly differently
than the Examiner, the Examiner’s characterization of the idea is not
erroneous. “An abstract idea can generally be described at different levels of
abstraction.” Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1240 (Fed. Cir.
2016). The level of abstraction an examiner uses to describe an abstract idea
need not “impact the patentability analysis.” Apple, 842 F.3d at 1241. That
is true here. Regardless of the level of generality used to describe the
abstract idea recited, the claims recite an abstract idea. Cf. Accenture Glob.
Servs., GmbH v. Guidewire Software, Inc., 728 F.3d 1336, 1344–45 (Fed.
Cir. 2013) (“Although not as broad as the district court’s abstract idea of
organizing data, it is nonetheless an abstract concept.”).
This is consistent with how Appellant describes the claimed
embodiments of the invention. See, e.g., Spec. ¶¶ 1 (“The disclosed
embodiments relate generally to a system and method for providing targeted
content” and, more particularly, to “providing targeted content, such as
advertising, by analyzing the context in which the content is to be provided
in light of known attributes of the content available to be provided and the
one or more recipients of the content.”); 4–15 (describing the limitations of
prior art methods for addressing classification problems and identifying a
need for a solution to select targeted content that takes into account user
behavior and evaluates whether a potential advertisement “is competitive to
the originating retailer utilizing a more scalable approach, for example a
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rule-set”), 62 (“The system for providing targeted content 10 uses the
attributes received from the web page 22 and information stored in the data
repositories to select targeted content to be provided to the user 26.”); see
also Appeal Br. 4 (stating the claims relate to controlling “the selection,
transmission and display of information to a user . . . in a manner that is
specific to both that user and to a first entity from which the information
appears to be sent, to enable the user to take improved subsequent actions”).
Consistent with our Office Guidance and case law, we conclude that
selecting and presenting a targeted advertisement is directed to an abstract
idea because it is a certain method of organizing human activity (e.g., a
commercial interaction, such as marketing or sales activity).7 See Guidance,
84 Fed. Reg. at 52; Intellectual Ventures I LLC v. Capital One Bank (USA),
792 F.3d 1363, 1369 (Fed. Cir. 2015) (holding that “tailoring content based
on the viewer’s location” (i.e., a function of the user’s personal
characteristics) is the type of information tailoring that is a fundamental
practice long prevalent in our system and is an abstract idea); Affinity Labs,
838 F.3d at 1271 (concluding “[l]ike the basic concept of tailoring content to
a user, as in Intellectual Ventures I, the basic concept of customizing a user

7 Alternatively, selecting and presenting a targeted advertisement is a mental
process that is applied and performed in a computing environment. See
Non-Final Act. 6 (explaining the claims are similar to ineligible claims that
merely collect and analyze information and display certain results (citing
Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1354 (Fed. Cir. 2016)
(concluding that “analyzing information by steps people go through in their
minds, or by mathematical algorithms, without more, as essentially mental
processes within the abstract-idea category”)); see also Smart Sys.
Innovations, LLC v. Chicago Transit Auth., 873 F.3d 1364, 1372 (Fed. Cir.
2017) (concluding “the collection, storage, and recognition of data” to be
abstract).
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interface is an abstract idea,” emphasis added); cf. Morsa v. Facebook, Inc.,
77 F. Supp. 3d 1007, 1013 (C.D. Cal. 2014), aff’d, 622 F. App’x 915 (Fed.
Cir. 2015) (quoting Tuxis Techs., LLC v. Amazon.com, Inc., No. CV 13-
1771-RGA, 2014 WL 4382446, at *5 (D. Del. Sept. 3, 2014)) (“[T]argeted
advertising is [a well-known] concept, insofar as matching consumers with a
given product or service ‘has been practiced as long as markets have been in
operation.’”); Intellectual Ventures I LLC v. J. Crew Grp., Inc., No. 6:16-
CV-196-JRG, 2016 WL 4591794, at *5 (E.D. Tex. Aug. 24, 2016), aff’d sub
nom. Intellectual Ventures I LLC v. FTD Cos., 703 F. App’x 991 (Fed. Cir.
2017) (affirming district court ruling that claims directed to recommending
products to customers based on purchase history recited an abstract idea);
Personalized Media Commc’ns, LLC v. Amazon.Com, Inc., 161 F. Supp. 3d
325, 338 (D. Del. 2015), aff’d sub nom. Personalized Media Commc’ns,
L.L.C. v. Amazon.com Inc., 671 F. App’x 777 (Fed. Cir. 2016) (affirming
district court ruling that claims directed to providing personalized
recommendations recited an abstract idea). “The concept of gathering
information about one’s intended market and attempting to customize the
information then provided is as old as the saying, ‘know your audience.’”
Morsa, 77 F. Supp. 3d at 1013 (quoting OpenTV, Inc. v. Netflix Inc., 76 F.
Supp. 3d 886, 893 (N.D. Cal. 2014)).
In the Reply Brief, Appellant recognizes the Guidance and argues
“‘selecting personalized non-competitive advertisements’ is not within the
set of enumerated groups” and the Examiner provides no support for
determining that the claims recite certain methods of organizing human
activity. Reply Br. 16 (emphasis omitted). Appellant asserts the “claims
recite[] being performed by a ‘computer system’ . . . with no recitation of
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any claim elements being performed by human users - as such, the pending
claims cannot be directed to merely organizing human activities.” Reply
Br. 16.
It is unclear whether Appellant contends the claims do not recite an
abstract idea or whether the claims are directed to more than just the abstract
ideas recited in the claims. Regardless, Appellant’s arguments are contrary
to both our Guidance and Federal Circuit case law. As discussed further
below, merely reciting generic computer components performing steps that
could otherwise be performed mentally does not change their
characterization as mental steps. Guidance, 84 Fed. Reg. at 52 n.14. To the
extent Appellant argues providing customized advertisements is not an
abstract idea, we disagree. As explained above, the Federal Circuit has
determined repeatedly claims directed to similar concepts were abstract.
See, e.g., Capital One, 792 F.3d at 1369; Affinity Labs, 838 F.3d at 1271;
Morsa, 77 F. Supp. 3d at 1013.
Guidance Step 2A, Prong 1 (Recite an Abstract Idea)
Claim 1 is reproduced below and includes the following claim
limitations that recite aspects of the marketing or sales activity constituting
the abstract idea of selecting and presenting a targeted advertisement,
emphasized in italics:
1. A computer-implemented process comprising:
obtaining, by a configured computer system, a selection
model that includes a plurality of data sets identifying popular
products available from a plurality of retailers and includes a
rule set for identifying non-competitive advertisements;
obtaining, by the configured computer system, a user
model that includes user-specific activity data regarding user
behavior of a specific user;
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receiving, by the configured computer system, a request
to provide electronic advertising for the specific user along with
other information from an originating retailer, wherein the other
information is related to one or more products available from the
originating retailer, and wherein the configured computer
system is operated by an operator distinct from the originating
retailer;
selecting, by the configured computer system and in
response to the received request, personalized non-competitive
electronic advertising for the specific user from one or more
other retailers of the plurality of retailers who are distinct from
the originating retailer, the selecting including using the
selection model and the user model to determine advertisements
that are relevant to the specific user and including using the rule
set of the selection model to identify at least one of the
determined advertisements that are for products available from
the one or more other retailers and that are non-competitive for
the originating retailer, the products available from the one or
more other retailers being distinct from the one or more products
available from the originating retailer;
formatting, by the configured computer system, one or
more of the identified advertisements in an electronic format that
appears to be from the originating retailer; and
initiating presentation to the specific user of the formatted
one or more identified advertisements along with the other
information from the originating retailer, the initiating of the
presentation including providing, by the configured computer
system, the formatted one or more identified advertisements in
the electronic format.
In other words, the abstract sales or marketing idea of selecting and
presenting a targeted advertisement comprises (i) obtaining a selection
model including a data set and rule set; (ii) obtaining a user model;
(iii) receiving a request to provide user-specific advertising; (iv) selecting a
personalized, non-competitive advertisement; (v) formatting the
advertisement; and (vi) initiating presentation. Guidance, 84 Fed. Reg. at 52
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(explaining that certain methods of organizing human activity that constitute
abstract ideas include “commercial or legal interactions (including . . .
advertising, marketing or sales activities or behaviors . . .)”).
Additionally, the two obtaining steps, the receiving step, and the
selecting step recite mental steps comprising aspects of the abstract idea of
selecting and presenting a targeted advertisement. Guidance, 84 Fed. Reg. at
52 (describing the mental process category of abstract ideas as including
concepts performed in the human mind, such as observations, evaluations,
judgments, and opinions).
The obtaining a model steps and the receiving a request step are
considered properly a mental process because each simply is an observation
of information that could be performed in the human mind (i.e., by reading
or being told the information). To the extent one may argue the steps could
not be performed mentally, the steps can be performed with pen and paper.
See Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d 1307, 1318
(Fed. Cir. 2016); accord Guidance, 84 Fed. Reg. at 52 n.14; Guidance
Update 9. For example, the models could simply be handwritten models, the
data sets could be a list of products, and the receiving a request step could
simply be an oral or written request to identify advertising. To the extent
Appellant argues the models involve particular rules, see Appeal Br. 38–39,
the claims merely recite “a rule set for identifying non-competitive
advertisements,” without providing any particular rules or type of rules.
Furthermore, the claims merely recite receiving and using the models and
data sets—the claims do not recite generating the models.
The fact that claims 7 and 13 recite obtaining the selection model
based on generating the model using a feedback model does not alter our
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analysis. Claims 7 and 13 merely recite at a high level that the model is
generated using a feedback model, but the claims do not recite any details
regarding the feedback model, how the feedback model is used to generate
the selection model, or any other details regarding generating the selection
model. Accordingly, at the level recited, these limitations do not change the
character of the claims as reciting certain methods of organizing human
activity and mental processes comprising the abstract idea—selecting and
presenting a targeted advertisement.
The selecting step also is considered properly a mental process
because the selecting targeted non-competitive advertising step merely
involves an evaluation or judgment—i.e., judging or evaluating
advertisements by applying the user model and the selection model,
including its rule set, to identify an advertisement for a product from another
retailer that is relevant to the user and non-competitive for the originating
retailer—that could be performed in the human mind (i.e., by considering
available products and advertisements, then applying the rule set to
determine which advertisements are non-competitive). As with the prior
steps, to the extent one could not perform the selecting step entirely
mentally, one could perform the step using pen and paper (i.e., circling
and/or crossing off advertisements on a list based on the rule set).
Claims 9 and 15 additionally recite that the selecting step uses a
weighted scoring system identifying correlations in the user-specific activity.
Leaving aside questions as to what it means for the “weighted scoring
system” to identify correlations in user-specific activity (e.g., Are the
correlations between different aspects of user activity, between user activity
and some other aspect of the scoring system, or something else? If the
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weighted scoring system identifies correlations in user activity, how does
that affect the selecting step?), selecting using a weighted scoring system
does not change the character of the selecting step as a mental step, but only
requires the selecting to somehow use the recited weighted scoring system.
None of these steps require the recited configured computer system.
That the claim recites “a configured computer system” performing the steps
does not remove the limitations from properly being considered mental
processes. See Symantec, 838 F.3d at 1318 (“[W]ith the exception of
generic computer-implemented steps, there is nothing in the claims
themselves that foreclose them from being performed by a human, mentally
or with pen and paper.”); accord Guidance, 84 Fed. Reg. at 52 n.14.
Accordingly, the claims recite abstract ideas—i.e., mental processes
and certain methods of organizing human activity.
Guidance Step 2A, Prong 2 (Integrate Into a Practical Application)
Because the claims recite an abstract idea, we next determine whether
the claim integrates the abstract idea into a practical application. Guidance,
84 Fed. Reg. at 54. To determine whether the judicial exception is
integrated into a practical application, we identify whether there are “any
additional elements recited in the claim beyond the judicial exception(s)”
and evaluate those elements to determine whether they integrate the judicial
exception into a recognized practical application. Guidance, 84 Fed. Reg. at
54–55 (emphasis added); see also Manual of Patent Examining Procedure
(“MPEP”) § 2106.05(a)–(c), (e)–(h) (9th ed., Rev. 08.2017, Jan. 2018).
Here, we find the additional limitation(s) do not integrate the judicial
exception into a practical application. More particularly, the claims do not
recite (i) an improvement to the functionality of a computer or other
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technology or technical field (see MPEP § 2106.05(a)); (ii) use a “particular
machine” to apply or use the judicial exception (see MPEP § 2106.05(b));
(iii) a particular transformation of an article to a different thing or state (see
MPEP § 2106.05(c)); or (iv) any other meaningful limitation (see MPEP
§ 2106.05(e)). See also Guidance, 84 Fed. Reg. at 55.
The additional limitations (i.e., those limitations not included in the
recited abstract idea) simply recite (1) a configured computer system that
performs the obtaining, receiving, selecting, formatting, and providing (part
of the initiating presentation) steps (2) formatting the advertisement into a
format that appears to be from the originating retailer, and (3) initiating
presentation of the advertisement to the user.8 The generic recitation that the
steps are performed by a “configured computer system” does not integrate
the judicial exception into a practical application. Instead, the claims merely
use computers that operate in their normal, expected manner. See DDR
Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1258–59 (Fed. Cir.
2014). Additionally, as the court in Enfish explained, “the first step in the
Alice inquiry . . . asks whether the focus of the claims is on the specific
asserted improvement in computer capabilities . . . or, instead, on a process
that qualifies as an ‘abstract idea’ for which computers are invoked merely
as a tool.” Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335–36 (Fed.
Cir. 2016). As discussed above, the focus of the pending claims is on

8 Although the initiating presentation step is considered part of the abstract
idea when characterized as a certain method of organizing human activity,
we include the presenting step here to the extent it may not be considered a
mental process. However, the initiating presentation step arguably also
could be considered a mental process because it may involve simply
observing information or, alternatively, providing or receiving information
on paper.
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selecting and presenting a targeted advertisement, and the recited computing
elements are invoked merely as a tool. See Enfish, 822 F.3d at 1335–36.
To the extent the formatting and initiating presentation steps are not
part of the abstract idea, these are merely insignificant post-solution activity
to present the selected targeted advertisement. Guidance, 84 Fed. Reg. at 55
n.31 (explaining that post-solution activity, such as outputting the results of
an abstract idea, are insufficient to integrate the abstract idea into a practical
application). Such post-solution activity does not confer patent eligibility.
See MPEP § 2106.05(g); see also Parker v. Flook, 437 U.S. 584, 590 (1978)
(adjusting an alarm limit based on output of the abstract idea was
insufficient to render the claimed method patent eligible). Even considering
the additional elements in combination with the abstract idea, using the
generic computer system to perform these steps, at most, limits the abstract
idea to a particular technological environment, which is insufficient to
integrate the abstract idea into a practical application. See Guidance, 84 Fed.
Reg. at 55.
Appellant argues the claims are similar to claims the Federal Circuit
held were directed to patent-eligible subject matter by improving
technological processes in ways not shown to be performed previously, such
as by using “defined rules to identify non-competitive information,”
displaying information to a user “in a modified graphical user interface . . .
to allow the user to more efficiently perform related activities via the
modified graphical user interface,” and addressing “problems specific to a
networked environment.” Appeal Br. 37–44 (citing McRO, Inc. v. Bandai
Namco Games Am. Inc., 837 F.3d 1299 (Fed. Cir. 2016); Core Wireless
Licensing S.A.R.L. v. LG Elecs., Inc., 880 F.3d 1356 (Fed. Cir. 2018);
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Trading Techs. Int’l, Inc. v. CQG, Inc., 675 F. App’x 1001 (Fed. Cir. 2017);
DDR Holdings); Reply Br. 14–15 (additionally citing Data Engine Techs.
LLC v. Google LLC, 906 F.3d 999 (Fed. Cir. 2018)).
The claims in McRO recited a “specific . . . improvement in computer
animation” using “unconventional rules” that related “sub-sequences of
phonemes, timings, and morph weight sets” to automatically animate lip
synchronization and facial expressions for three-dimensional characters that
only human animators could previously produce. McRO, 837 F.3d at 1302–
03, 1307–08, 1313–15. In McRO, “the incorporation of the claimed rules”
improved an existing technological process. McRO, 837 F.3d at 1314. In
contrast, Appellant’s claims do not improve an existing technological
process. Contrary to Appellant’s assertions, Appeal Br. 37–39, the claims
do not improve computer technology, but instead use computers and
computer-based devices to perform the claimed business solution. See
Enfish, 822 F.3d at 1335–36 (distinguishing between claims that focus on
improving computer capabilities and those that invoke a computer as a tool).
Notably, Appellant’s claimed rule set does not actually define a
particular set of rules. Even the additional detail recited in claims 9 and 15
merely recites that the selecting is based on using weighted scoring. As
discussed above, this does not change the character of the claims. At most,
this merely requires that the selecting in some way weights scoring relating
to user activity, but this does not define a particular set of rules or clearly
narrow the abstract idea of providing targeted advertisements to a user (i.e.,
advertisements relevant based on the user’s information, such as their
activity). Moreover, applying rules for evaluating information (e.g.,
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relevance to a user and competitiveness to a retailer) is not analogous to
applying rules to improve a technology, such as computer animation.
Appellant’s reliance on Core Wireless, Data Engine, and Trading
Technologies also is unavailing. In Core Wireless, the court concluded the
claims were not directed to an abstract idea, but rather were “directed to an
improved user interface for computing devices.” Core Wireless, 880 F.3d at
1362. More particularly, the court noted it was clear that the “claims are
directed to an improvement in the functioning of computers, particularly
those with small screens.” Core Wireless, 880 F.3d at 1363 (emphasis
added). Similarly in Trading Technologies, the court adopted the district
court’s determination that the patents “solve problems of prior graphical
user interface devices . . . in the context of computerized trading[] relating to
speed, accuracy, and usability.” Trading Techs., 675 F. App’x at 1004
(emphasis added); see also Data Engine, 906 F.3d at 1011–13 (holding a
claim that recited “a specific structure . . . within a particular spreadsheet
display that performs a specific function” eligible because it were not
“directed generally to displaying information on a screen,” but holding other
claims that did not include the feature that allegedly improved the interface
ineligible).
Here, the claims do not provide a solution to a technical limitation of
the computing device, but use the computing device to perform the abstract
idea. Accord Ans. 7. Appellant asserts the claims recite a modified
graphical user interface (GUI) and display information in a more efficient
manner, but Appellant does not persuasively explain, or identify disclosures
in the Specification supporting, the attorney argument that the claims relate
to an improved or modified GUI. Appeal Br. 39–42; accord Ans. 7
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(“merely having information appear to be from a different entity, does not
change the functionality of the interface to make the interface better”).
The claims encompass merely including the formatted advertisement
as part of an email or a web page on the originating retailer’s site. Spec.
¶ 121; see Appeal Br. 56 (claim 2 reciting that the formatted advertisement
is presented “on a Web page from a website of the originating retailer” and
claim 3 reciting that the formatted advertisement is provided “via electronic
mail identified as being from the originating retailer”). Formatting the
advertisement so it appears to come from the originating retailer may merely
involve an advertisement with a particular look and feel—e.g., including a
logo or using a particular color scheme, fonts, or other characteristics
associated with the originating retailer. To the extent the formatting step
improves the ability of a user to recognize the source, that merely
communicates information, but Appellant has not demonstrated persuasively
that the claimed invention improves a computing device or other technology.
Instead, the alleged improvement is directed to information perceived by the
end user. See Trading Techs. Int’l, Inc. v. IBG LLC, 921 F.3d 1084, 1093
(Fed. Cir. 2019) (distinguishing between an alleged improvement to the way
a computer operates versus an improvement to assist the end user).
Nor are we persuaded Appellant’s claims are similar to those held
eligible in DDR Holdings. Appeal Br. 42–44. In DDR Holdings, the
Federal Circuit determined “the claimed solution amount[ed] to an inventive
concept for resolving [a] particular Internet-centric problem,” i.e., a
challenge unique to the Internet. DDR Holdings, 773 F.3d at 1257–59; see
Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1151 (Fed. Cir.
2016) (noting that “[i]n DDR Holdings, we held that claims ‘directed to
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systems and methods of generating a composite web page that combines
certain visual elements of a ‘host’ website with content of a third-party
merchant’ contained the requisite inventive concept”). The Federal Circuit
explained that the patent-eligible claims specified “how interactions with the
Internet are manipulated to yield a desired result . . . that overrides the
routine and conventional sequence of events ordinarily triggered by the click
of a hyperlink.” DDR Holdings, 773 F.3d at 1258. The court reasoned that
those claims recited a technological solution “necessarily rooted in computer
technology” that addressed a “problem specifically arising in the realm of
computer networks.” DDR Holdings, 773 F.3d at 1257.
Rather than reciting a technical solution rooted in computer
technology as in DDR, the pending claims are more similar to those at issue
in Capital One. See Capital One, 792 F.3d at 1369. There, the pending
claims depicted portions of a website visited by a user as a function of
website navigation data and the user’s personal characteristics. Capital One,
792 F.3d at 1369. The court determined that the claims merely provide
tailored information based on a characteristic of a user (e.g., a geographic
location) and website navigation data. Capital One, 792 F.3d at 1369–70.
In addition, the court determined that information tailoring is a “practice
long prevalent in our system.” Capital One, 792 F.3d at 1369 (internal
quotation omitted). The court also explained the addition of a computer
functionality to such a concept does not confer patent eligibility. Capital
One, 792 F.3d at 1370; see also Spec. ¶¶ 2–9 (explaining it was known to
analyze user activity information (e.g., the websites a user visits) to provided
targeted content, including advertisements).
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For at least the foregoing reasons, the claims do not integrate the
judicial exception into a practical application. Accordingly, the claims are
directed to an abstract idea.
Guidance Step 2B (Inventive Concept/Significantly More)
Because we determine the claims are directed to an abstract idea or
combination of abstract ideas, we evaluate whether the claims include an
inventive concept. See Guidance, 84 Fed. Reg. at 56. As stated in the
Guidance, many of the considerations to determine whether the claims
amount to “significantly more” under step two of the Alice framework
already are considered as part of determining whether the judicial exception
has been integrated into a practical application. Guidance, 84 Fed. Reg. at
56. Thus, at this point of the analysis, we determine whether the claims
(1) add a specific limitation, or combination of limitations, that is not well-
understood, routine, conventional activity in the field, or (2) simply append
well-understood, routine, conventional activities at a high level of generality.
Guidance, 84 Fed. Reg. at 56.
As discussed above, the only additional elements recited in the claims,
are the “configured computer system,” the formatting step, and the initiating
presentation step. These steps, considered alone and in combination, fail to
provide an inventive concept. When describing the computer system, the
formatting step, and the initiating presentation step, Appellant describes and
claims the system at a high level of generality.
Specifically, Appellant identifies the computer system as including a
generic controller (e.g., a microcontroller or microprocessor), a data
repository (i.e., “any type of data storage devices, such as, for example, one
or more databases”), and receiver and transmitter modules (i.e., “any type of
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input and output devices for communicating with other arrangements, for
example, through a network communication system”). Spec. ¶¶ 52–56,
Fig. 1. Appellant describes the formatting and initiating presentation steps
merely by explaining that the content is provided in various formats and
through various media or devices. See, e.g., Spec. ¶¶ 103, 104 (“solutions
provided herein may be accomplished through many different media,
including, for example, through networked computers, a mobile device, such
as, for example, a cell phone, a television, a display, an appliance, a print
device, electronic paper, or any number of non-electronic formats, including
printed mailings”), 121 (explaining that exemplary formats in which the
advertisements may be presented to the user include “HTML, Flash, binary
or other format” as well as XML or “[a]ny electronic format,” the
“advertisements may be provided to computers, cell phones, smart phones,
PDAs, or any other electronic device, portable or not,” and the content may
include audio and/or video).
Appellant argues the claims include significantly more than the
abstract idea because they recite “specific operations to implement” the
abstract idea, and the claims improve “computing systems by using rules to
select products . . ., by formatting identified information in a manner so that
its appearance is compatible with other information . . ., and by modifying a
graphical user interface to include the formatted information and to improve
the relevance of information displayed to a user.” Appeal Br. 45.
Appellant asserts the claims are eligible “for the same reasons that the
claims in Bascom were found to recite significantly more than an abstract
idea.” Appeal Br. 44–46 (citing BASCOM Glob. Internet Servs., Inc. v.
AT&T Mobility LLC, 827 F.3d 1341 (Fed. Cir. 2016)); see Reply Br. 15. In
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BASCOM, the court found “the patent describes how its particular
arrangement of elements is a technical improvement,” and, when construed
in favor of BASCOM,9 the claims may be read to improve an existing
technological process. BASCOM, 827 F.3d at 1350. As discussed above,
the claims do not improve an existing technological process, but rather use
the existing components to perform the abstract idea.
Unlike the arrangement of elements (i.e., installation of a filtering tool
at a specific location) in BASCOM, 827 F.3d at 1349–50, and contrary to
Appellant’s assertion, Appellant’s claims do not recite a non-conventional
and non-routine arrangement of known elements. Appellant does not
identify clearly what alleged combination of elements goes beyond what was
a conventional and routine arrangement. Appellant’s claims recite a generic
computer system that receives two models, receives a request, applies the
model to select an advertisement, formats an advertisement in one of various
known electronic formats, and initiates presentation to a user by providing
the formatted advertisement.
We disagree with Appellant’s characterization that the claims
“modify[] a graphical user interface” because the claims merely recite
formatting information and presenting the information; the claims do not
actually recite a GUI, let alone an improved or modified GUI. Moreover, as
discussed above, Appellant’s alleged improved process of selecting
advertisements is part of the abstract idea of using one set of information
(product information, user information, and a “rule set for identifying non-
competitive advertisements”) to identify other information (relevant, non-

9 In BASCOM, BASCOM appealed the district court’s granting of a motion
to dismiss under Fed. R. Civ. P. 12(b)(6). BASCOM, 827 F.3d at 1343.
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competitive advertisements), and the claims merely recite the intended result
of selecting an advertisement using the “rule set,” but do not recite
generating the rule set or even applying a particular set of rules or steps.
Appellant also argues the Examiner has not supported the finding that
the additional elements are well-understood, routine, and conventional.
Appeal Br. 46–47 (citing Berkheimer v. HP Inc., 881 F.3d 1360, 1369 (Fed.
Cir. 2018)). Specifically, Appellant argues that concluding the additional
elements beyond the abstract idea are well-understood and routine is
inappropriate without citing evidence. Appeal Br. 46.
However, as discussed above, even ignoring the high level at which it
is claimed, the recited use of rules to select an advertisement is part of the
abstract idea. Although we evaluate the claims as whole for an inventive
concept by considering how the additional elements interact with the
abstract idea, the inventive concept “cannot be furnished by the unpatentable
law of nature (or natural phenomenon or abstract idea) itself.” Genetic
Techs. Ltd. v. Merial L.L.C., 818 F.3d 1369, 1376 (Fed. Cir. 2016); see
also Guidance, 84 Fed. Reg. at 56; Alice, 573 U.S. at 217 (explaining that,
after determining a claim is directed to a judicial exception, “we then ask,
‘[w]hat else is there in the claims before us?’” (emphasis added, brackets in
original) (quoting Mayo, 566 U.S. at 78)). Instead, an “inventive concept” is
furnished by an element or combination of elements that is recited in the
claim in addition to the judicial exception and sufficient to ensure the claim
as a whole amounts to significantly more than the judicial exception
itself. Alice, 573 U.S. at 218–19 (citing Mayo, 566 U.S. at 72–73); see BSG
Tech LLC v. Buyseasons, Inc., 899 F.3d 1281, 1290 (Fed. Cir. 2018)
(explaining that the Supreme Court in Alice “only assessed whether the
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claim limitations other than the invention’s use of the ineligible concept to
which it was directed were well-understood, routine and conventional,”
(emphasis added)).
With respect to the generic computer system and the fact that the
system receives and processes data and outputs the results, we agree with the
Examiner that the courts have found generic computing devices performing
these types of functions insufficient to provide an inventive concept. Non-
Final Act. 6–7; Ans. 8. As the Examiner finds, our reviewing court has
recognized that receiving, processing, and storing data as well as receiving
or transmitting data over a network are well-understood, routine, and
conventional activities. Non-Final Act. 6–7 (citing Mortgage Grader, Inc. v.
First Choice Loan Servs. Inc., 811 F.3d 1314 (Fed. Cir. 2016); In re TLI
Commc’ns LLC, 823 F.3d 607 (Fed. Cir. 2016)); Ans. 8 (citing Capital One,
792 F.3d 1363; Elec. Power, 830 F.3d 1350). Consistent with the
Berkheimer Memorandum,10 we agree with the Examiner’s findings that the
claims merely recite generic computer components (e.g., a configured
computing system) performing generic computing functions that are well-
understood, routine, and conventional (e.g., obtaining/receiving data,

10 On April 19, 2018, the Deputy Commissioner for Patent Examination
Policy issued a memorandum entitled: Changes in Examination Procedure
Pertaining to Subject Matter Eligibility, Recent Subject Matter Eligibility
Decision (Berkheimer v. HP, Inc.) (i.e., “the Berkheimer Memorandum”)
(discussing the Berkheimer decision) (available at https://www.uspto.gov/
sites/default/files/documents/memo-berkheimer-20180419.PDF). Support
for a finding that an element was well-understood, routine, or conventional
may be shown by citation to one or more court decisions noting the well-
understood, routine, conventional nature of the element(s). See Berkheimer
Memorandum 3–4.
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processing data, and presenting the results of the data processing).
See Mortg. Grader, Inc. v. First Choice Loan Servs. Inc., 811 F.3d 1314,
1324–25 (Fed. Cir. 2016) (generic computer components, such as an
“interface,” “network,” and “database,” fail to satisfy the inventive concept
requirement); Alice, 573 U.S. at 226 (“Nearly every computer will include a
‘communications controller’ and [a] ‘data storage unit’ capable of
performing the basic calculation, storage, and transmission functions
required by the method claims.”); buySAFE, Inc. v. Google, Inc., 765 F.3d
1350, 1355 (Fed. Cir. 2014) (“That a computer receives and sends the
information over a network—with no further specification—is not even
arguably inventive.”).
Additionally, to the extent Appellant contends the claims do not seek
to preempt an abstract idea, see Appeal Br. 47, we are unpersuaded of
Examiner error. “‘[W]hile preemption may signal patent ineligible subject
matter, the absence of complete preemption does not demonstrate patent
eligibility.’” FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1098
(Fed. Cir. 2016) (quoting Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788
F.3d 1371, 1379 (Fed. Cir. 2015)); see also OIP Techs., Inc. v. Amazon.com,
Inc., 788 F.3d 1359, 1362–63 (Fed. Cir. 2015) (“[T]hat the claims do not
preempt all price optimization or may be limited to price optimization in the
e-commerce setting do not make them any less abstract.”). Further,
“[w]here a patent’s claims are deemed only to disclose patent ineligible
subject matter under the Mayo framework, as they are in this case,
preemption concerns are fully addressed and made moot.” Ariosa, 788 F.3d
at 1379.
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For the reasons discussed supra, we sustain the Examiner’s rejection
of claims 1–19 under 35 U.S.C. § 101. See 37 C.F.R. § 41.37(c)(1)(iv).
DECISION SUMMARY
Claims
Rejected
35 U.S.C. § References/Basis Affirmed Reversed
1–19 112, first
paragraph
Written Description 1–19
1–19 101 Eligibility 1–19
1–3, 5–8,
10–14, 16–19
103 Barton, Ross 1–3, 5–8,
11–14, 16–19
10
4 103 Barton, Ross,
Official Notice
4
9, 15 103(a) Barton, Ross, Nayfeh 9, 15
Overall
Outcome
1–19

TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 41.50(f).

AFFIRMED

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SHIANG, Administrative Patent Judge, concurring in part and dissenting in
part.

I join my colleagues in the decision (i) affirming the Examiner’s
rejection of claims 1–19 under pre-AIA 35 U.S.C. § 112, first paragraph as
failing to comply with the written description requirement, and (ii) reversing
the Examiner’s rejection of claim 10 under 35 U.S.C. § 103.
I respectfully concur with the decision affirming the Examiner’s
rejection of claims 1–19 under 35 U.S.C. § 101.
I respectfully dissent from the decision affirming the Examiner’s
rejection of claims 1–9 and 11–19 under 35 U.S.C. § 103.

35 U.S.C. § 101

Section 101 of the Patent Act provides “[w]hoever invents or
discovers any new and useful process, machine, manufacture, or
composition of matter, or any new and useful improvement thereof, may
obtain a patent therefor, subject to the conditions and requirements of this
title.” 35 U.S.C. § 101. However, the Supreme Court has long interpreted
35 U.S.C. § 101 to include implicit exceptions: “[l]aws of nature, natural
phenomena, and abstract ideas” are not patentable. E.g., Alice Corp. Pty.
Ltd. v. CLS Bank Int’l, 573 U.S. 208, 216 (2014) (internal quotation marks
and citation omitted).
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court’s two-step framework, described in Mayo
and Alice. Id. at 217–18 (citing Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 566 U.S. 66, 75–77 (2012)). In accordance with that framework,
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we first determine what concept the claim is “directed to.” See Alice, 573
U.S. at 219 (“On their face, the claims before us are drawn to the concept of
intermediated settlement, i.e., the use of a third party to mitigate settlement
risk.”); see also Bilski v. Kappos, 561 U.S. 593, 611 (2010) (“Claims 1 and 4
in petitioners’ application explain the basic concept of hedging, or protecting
against risk.”).
Concepts determined to be abstract ideas, and, thus, patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219–20; Bilski, 561 U.S. at 611);
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594–95 (1978)); and
mental processes (Gottschalk v. Benson, 409 U.S. 63, 67 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as “molding rubber products” (Diamond v. Diehr, 450 U.S. 175, 191
(1981)); “tanning, dyeing, making water-proof cloth, vulcanizing India
rubber, smelting ores” (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S.
(15 How.) 252, 267–68 (1854))); and manufacturing flour (Benson, 409 U.S.
at 69 (citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
In Diehr, the claim at issue recited a mathematical formula, but the
Supreme Court held that “[a] claim drawn to subject matter otherwise
statutory does not become nonstatutory simply because it uses a
mathematical formula.” Diehr, 450 U.S. at 187; see also id. at 191 (“We
view respondents’ claims as nothing more than a process for molding rubber
products and not as an attempt to patent a mathematical formula.”). Having
said that, the Supreme Court also indicated that a claim “seeking patent
protection for that formula in the abstract . . . is not accorded the protection
of our patent laws, . . . and this principle cannot be circumvented by
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attempting to limit the use of the formula to a particular technological
environment.” Id. (citing Benson and Flook); see, e.g., id. at 187 (“It is now
commonplace that an application of a law of nature or mathematical formula
to a known structure or process may well be deserving of patent
protection.”).
If the claim is “directed to” an abstract idea, we turn to the second
step of the Alice and Mayo framework, where “we must examine the
elements of the claim to determine whether it contains an ‘inventive
concept’ sufficient to ‘transform’ the claimed abstract idea into a
patent-eligible application.” Alice, 573 U.S. at 221 (citation omitted). “A
claim that recites an abstract idea must include ‘additional features’ to
ensure ‘that the [claim] is more than a drafting effort designed to
monopolize the [abstract idea].’” Id. (quoting Mayo, 566 U.S. at 77).
“[M]erely requir[ing] generic computer implementation[] fail[s] to transform
that abstract idea into a patent-eligible invention.” Id.
The United States Patent and Trademark Office published revised
guidance on the application of § 101. USPTO’s 2019 REVISED PATENT
SUBJECT MATTER ELIGIBILITY GUIDANCE, 84 Fed. Reg. 50 (Jan. 7, 2019)
(“Guidance”).11 Under the Guidance, we first look to whether the 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 1); and
(2) additional elements that integrate the judicial exception into
a practical application (see Manual of Patent Examining

11 The Guidance was updated in October 2019.
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Procedure (“MPEP”) § 2106.05(a)–(c), (e)–(h)) (9th ed. rev.
08.2017 2018) (Step 2A, Prong 2).
Only if a claim (1) recites a judicial exception and (2) does not integrate that
exception into a practical application, do we then look to whether the claim:
(3) adds a specific limitation beyond the judicial exception that
is not “well-understood, routine, 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. (Step 2B.)
See Guidance, 84 Fed. Reg. at 54–56.
Turning to Step 2A, Prong 1 of the Guidance (Alice step one), claim 1
(with emphases) recites:
1. A computer-implemented process comprising:
obtaining, by a configured computer system, a selection
model that includes a plurality of data sets identifying popular
products available from a plurality of retailers and includes a
rule set for identifying non-competitive advertisements;
obtaining, by the configured computer system, a user
model that includes user-specific activity data regarding user
behavior of a specific user;
receiving, by the configured computer system, a request
to provide electronic advertising for the specific user along with
other information from an originating retailer, wherein the other
information is related to one or more products available from the
originating retailer, and wherein the configured computer
system is operated by an operator distinct from the originating
retailer;
selecting, by the configured computer system and in
response to the received request, personalized non-competitive
electronic advertising for the specific user from one or more
other retailers of the plurality of retailers who are distinct from
the originating retailer, the selecting including using the
selection model and the user model to determine advertisements
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that are relevant to the specific user and including using the rule
set of the selection model to identify at least one of the
determined advertisements that are for products available from
the one or more other retailers and that are non-competitive for
the originating retailer, the products available from the one or
more other retailers being distinct from the one or more products
available from the originating retailer;
formatting, by the configured computer system, one or
more of the identified advertisements in an electronic format that
appears to be from the originating retailer; and
initiating presentation to the specific user of the formatted
one or more identified advertisements along with the other
information from the originating retailer, the initiating of the
presentation including providing, by the configured computer
system, the formatted one or more identified advertisements in
the electronic format.
All of the italicized limitations are associated with marketing
activities. For example, “obtaining . . . a selection model that includes a
plurality of data sets identifying popular products available from a plurality
of retailers and includes a rule set for identifying non-competitive
advertisements” and “obtaining . . . a user model that includes user-specific
activity data regarding user behavior of a specific user” obtain a selection
model and a user model for targeted advertising, which is a marketing
activity. Further,
receiving . . . a request to provide . . . advertising for the specific
user along with other information from an originating retailer,
wherein the other information is related to one or more products
available from the originating retailer, and wherein . . . is
operated by an operator distinct from the originating retailer
relates to an advertising request, which is a marketing activity. In addition,
selecting . . . in response to the received request, personalized
non-competitive . . . advertising for the specific user from one or
more other retailers of the plurality of retailers who are distinct
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from the originating retailer, the selecting including using the
selection model and the user model to determine advertisements
that are relevant to the specific user and including using the rule
set of the selection model to identify at least one of the
determined advertisements that are for products available from
the one or more other retailers and that are non-competitive for
the originating retailer, the products available from the one or
more other retailers being distinct from the one or more products
available from the originating retailer
personalizes advertisements for the specific user to promote marketing
activities. Finally, “formatting . . . one or more of the identified
advertisements in an . . . format that appears to be from the originating
retailer” and “initiating presentation to the specific user of the formatted one
or more identified advertisements along with the other information from the
originating retailer, the initiating of the presentation including providing . . .
the formatted one or more identified advertisements in the . . . format”
present targeted advertisements in a specific format to the user, which is a
marketing activity.
My determination is supported by the Specification, which describes
the need to provide targeted content advertising that promotes “cooperative
electronic advertising that leverages the economy of scale of aggregating
numerous retailers, creating a single selection model across the one or more
merchants” (Spec. ¶ 18):
The . . . present subject matter relates to a system and method for
providing targeted content, such as advertising, by analyzing the
context in which the content is to be provided in light of known
attributes of the content available to be provided and the one or
more recipients of the content.
Spec. ¶ 1.
it may be beneficial to provide targeted content, such as, for
example, targeted advertisements on a web page, in an e-mail or
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other electronic or nonelectronic formats. However, there are
known problems in scenarios such as these in both acquiring
information about the recipient of the advertisements and
effectively utilizing that information to provide relevant targeted
advertisements.
The problem of acquiring information about a recipient, and
specifically a recipient of advertisements, is known as a
classification problem. A significant portion of this classification
problem is in classifying the current context of the recipient. . . .
.
Spec. ¶ 3–4.
It is also generally beneficial to provide targeted advertisements
for display by a retailer with an internet presence, provided that
these advertisements are not for competitive products. . . . .
Spec. ¶ 10.
additional problems arise when attempting to effectively utilize
targeting information to provide relevant non-competitive
advertisements across retailers. The problem of providing such
targeted, non-competitive advertisements is a type of prediction
problem.
Spec. ¶ 12.
Therefore, a need exists for a solution which takes into account
at least the behavior of users on the originating retailer site, and
at least the behavior of users who are exposed to these products
or services, and further to do so while evaluating whether a
potential advertiser is competitive to the originating retailer
utilizing a more scalabe approach, for example a rule-set.
Further problems arise when retailers join together to provide
cooperative advertising. . . . It may be beneficial for a group of
retailers to use economies of scale to send targeted cooperative
advertisements to selected consumers, such that each consumer
receives an advertisement provided by a retailer through which
the consumer has a preexisting relationship.
A significant challenge with such a solution when retailers join
together to provide cooperative advertising is the creation and
utilization of selection models which would enable an advertiser
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to target the users of one or more retailers. . . . .
Therefore, a need exists for a solution which provides
cooperative electronic advertising that leverages the economy of
scale of aggregating numerous retailers, creating a single
selection model across the one or more merchants.
Spec. ¶ 15–18 (emphasis added).
Because marketing activities are commercial interactions (Guidance,
Step 2A, Prong 1 (Groupings of Abstract Ideas)), I conclude claim 1 recites
commercial interactions, which is one of certain methods of organizing
human activity identified in the Guidance, and thus an abstract idea.
For similar reasons, I conclude each of independent claims 11
and 16 and dependent claims 3–8, 10, 12–14, 18–19 recites
commercial interactions, which is one of certain methods of
organizing human activity identified in the Guidance, and thus an
abstract idea.12
Dependent claim 2 recites “[t]he process of claim 1 wherein the
presentation of the formatted one or more identified advertisements in the
electronic format includes presenting the formatted one or more identified
advertisements to the specific user on a Web page from a website of the
originating retailer” (emphases added). The italicized limitation provides
details of the advertisement presentation, which is associated with marketing
activities.

12 Among other things, claim 11 recites “send one or more communications
over one or more computer networks to a client device of the specific user”
and claim 16 recites “sending, by the configured computer system, one or
more communications over one or more computer networks to a client
device of the specific user . . . .” Those limitations constitute additional
elements of the claims.
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Dependent claim 9 recites “[t]he process of claim 1 wherein the
selecting of the personalized non-competitive electronic advertising for the
specific user includes using a weighted scoring system identifying
correlations in the user-specific activity data” (emphasis added). Dependent
claim 15 recites “[t]he system of claim 11 wherein the selecting of the
personalized non-competitive electronic advertising for the specific user
includes using a weighted scoring system identifying correlations in the
user-specific activity data” (emphases added). Each of the italicized
limitations of claims 9 and 15 provides a specific method of selecting
personalized non-competitive advertising, which is associated with
marketing activities.
Dependent claim 17 recites
[t]he non-transitory computer-readable storage medium of claim
16 wherein the other information from the originating retailer
includes one or more Web pages from the originating retailer,
and wherein the causing of the presentation of the formatted one
or more identified advertisements includes presenting the one or
more advertisements as part of the one or more Web pages.
(emphases added). The italicized limitation provides details of the
advertisement presentation, which is associated with marketing activities.
Therefore, and for similar reasons discussed above, I conclude each of
dependent claims 2, 9, 15, and 17 recites commercial interactions, which is
one of certain methods of organizing human activity identified in the
Guidance, and thus an abstract idea.
I join my colleagues in Step 2A, Prong 2, and Step 2B of the analysis
affirming the Examiner’s rejection of claims 1–19 under 35 U.S.C. § 101.

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35 U.S.C. § 103
I have reviewed the Examiner’s rejection in light of Appellant’s
contentions and the evidence of record. I concur with Appellant’s
contentions that the Examiner erred in finding the cited portions of Barton
teach
obtaining . . . a selection model that includes a plurality of
data sets identifying popular products available from a plurality
of retailers and includes a rule set for identifying non-
competitive advertisements;
. . .
selecting . . . in response to the received request,
personalized non-competitive electronic advertising for the
specific user from one or more other retailers of the plurality of
retailers who are distinct from the originating retailer, the
selecting including using the selection model and . . .

as recited in independent claim 1 (emphasis added). See Appeal Br. 19–22;
Reply Br. 7–9.
The Examiner finds:
obtaining by a configured computer system a selection model,
that includes a plurality of data sets identifying popular products
available from a plurality of retailers and includes a rule set for
identifying non-competitive advertisements;(see for example
[0018, 0024,0025, 0029], discloses using purchase information
to select advertisements)
Final Act. 8 (emphasis omitted).
In response to Appellant’s arguments, the Examiner further asserts:
The appellant argues that the reference of Barton does not
disclose gathering and using information (e.g. an abstract idea)
about popular products for any reason, let alone as part of
determining advertisements for a user, the Examiner respectfully
disagrees the appellant's specification states at [0026] that a
selection model is based on product data and behavior. The
reference of Barton discloses at [0018] purchase information is
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composed of information about the product(s) or service(s), the
cost of the product(s), the amount the user paid, the location of
the user, personal and financial information, the behavior of the
user on the website, products selected and removed before
checkout, or any other information that could be used to
determine a relevant advertisement. Thus the reference of Barton
discloses gathering using information to determine a relevant
advertisement. Furthermore it is the Examiner's position that the
term popular in the claims is non-functional descriptive material
and has no bearing how the method/system would be performed.
Thus no patentable weight should be given to said term. If you
remove the term from the claims, the invention would still
perform the same. The products are being selected based on
product data and behavior.
Ans. 4.
I disagree with the Examiner’s determination that “obtaining . . . a
selection model that includes a plurality of data sets identifying popular
products available from a plurality of retailers and includes a rule set for
identifying non-competitive advertisements” (emphasis added) is non-
functional descriptive material.
First, the Federal Circuit has held printed matter must have a
functional relationship to a substrate in order to have patentable weight,
because printed matter by itself is not patentable subject matter. See In re
Miller, 418 F.2d 1392, 1396 (CCPA 1969) (“printed matter by itself is not
patentable subject matter, because [it is] non-statutory,” but the printed
matter at issue (volumetric indicia and a legend) has patentable weight
because it had a “new and unobvious functional relationship” to the claimed
measuring receptacle).
Consistent with Miller, subsequent cases In re Ngai, 367 F.3d 1336,
1339 (Fed. Cir. 2004) and In re Gulack, 703 F.2d 1381, 1385 (Fed. Cir.
1983) also address printed matter. See King Pharms., Inc. v. Eon Labs, Inc.,
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616 F.3d 1267, 1279 (Fed. Cir. 2010) (“these ‘printed matter’ cases [Miller,
Ngai and Gulack] involved the addition of printed matter, such as written
instructions, to a known product”). In King Pharmaceuticals, the Federal
Circuit extended the printed matter non-functional descriptive material
doctrine to “a method, as opposed to a product” (“Although these ‘printed
matter’ cases involved the addition of printed matter . . . to a known product,
we see no principled reason for limiting their reasoning to that specific
factual context. . . . . Rather, we believe that the rationale underlying these
cases extends to the situation presented in this case, wherein an instructional
limitation is added to a method, as opposed to a product, known in the art.”).
King Pharms., 616 F.3d at 1279.
Here, the Examiner does not establish “obtaining . . . a selection
model that includes a plurality of data sets identifying popular products
available from a plurality of retailers and includes a rule set for identifying
non-competitive advertisements” (emphasis added) is “printed matter” non-
functional descriptive material. Therefore, the Federal Circuit’s printed
matter non-functional descriptive material doctrine does not apply here.
Second, this Board’s Ex parte Nehls, 88 USPQ2d 1883, 1889 (BPAI
2008) (precedential) extends the “printed matter” doctrine to the issue of a
particular sequence data. See Ex parte Nehls, 88 USPQ2d 1883 at *6, *8
(“the particular sequence data recited in claim 13 is nonfunctional
descriptive material and does not distinguish the claimed computer-based
system from the prior art system that is the same except for its sequence
data”) because (“[t]here is no evidence that SEQ ID NOs 9-1008
functionally affect the process of comparing a target sequence to a database
by changing the efficiency or accuracy or any other characteristic of the
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comparison. Rather, the SEQ ID NOs are merely information being
manipulated by a computer”).
Here, the Examiner does not show the term “popular” is like the
particular sequence data in Ex parte Nehls. To the contrary, the term
“popular” is not merely a label for the products, because it means “widely
liked or appreciated” (The American Heritage College Dictionary (1064) (3rd
ed. 2000)—a term that distinguishes those products from other products that
are not “widely liked or appreciated,” such as obsolete products. As a result,
the term “popular” adds functionality in the context of the claim by
specifying only the products that are widely liked or appreciated. Because
the term “popular” performs such a function, it is unlike the particular
sequence data in Ex parte Nehls.
Therefore, “obtaining . . . a selection model that includes a plurality of
data sets identifying popular products available from a plurality of retailers
and includes a rule set for identifying non-competitive advertisements”
(emphasis added) does not constitute non-functional descriptive material.
As a result, the Examiner fails to provide sufficient evidence or
explanation to support the rejection of independent claim 1, and
corresponding dependent claims 2–9.
For similar reasons, the Examiner fails to provide sufficient evidence
or explanation to support the rejection of independent claims 11 and 16, and
corresponding dependent claims 12–15 and 17–19.
Accordingly, I respectfully disagree with the Opinion of the Board
and would reverse the Examiner’s rejection of claims 1–9 and 11–19 under
35 U.S.C. § 103.