Tapjoy, Inc.

Patent Trials and Appeals Board

Feb 28, 2020

13802027 - (D) (P.T.A.B. Feb. 28, 2020)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/802,027 03/13/2013 Hans-Frederick Brown 60291-0045 2122
29989 7590 02/28/2020
HICKMAN PALERMO BECKER BINGHAM LLP
1 ALMADEN BOULEVARD
FLOOR 12
SAN JOSE, CA 95113
EXAMINER
BAGGOT, BREFFNI
ART UNIT PAPER NUMBER
3622
NOTIFICATION DATE DELIVERY MODE
02/28/2020 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):
usdocket@h35g.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte HANS-FREDERICK BROWN and SHANE MIHELIC-BOOTH
__________________
Appeal 2019-004751
Application 13/802,027
Technology Center 3600
_________________

Before ALLEN R. MacDONALD, JAMES B. ARPIN, and
ADAM J. PYONIN, Administrative Patent Judges.

ARPIN, Administrative Patent Judge.
DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
non-final rejection of claims 1–9, 11–24, and 26–30, all of the pending
claims. Non-Final Act. 2; see Appeal Br. 2.2 Claims 10 and 25 are
cancelled. Non-Final Act. 2. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.

1 “Appellant” here refers to “applicant” as defined in 37 C.F.R. § 1.42.
Appellant identifies the real party-in-interest as Tapjoy, Inc. Appeal Br. 1.
2 In this Decision, we refer to Appellant’s Appeal Brief (“Appeal Br.,” filed
December 5, 2018) and Reply Brief (“Reply Br.,” filed October 10, 2018);
the Final Office Action (“Non-Final Act.,” mailed April 5, 2018); the
Examiner’s Answer (“Ans.,” mailed March 27, 2019); and the originally-
filed Specification (“Spec.,” filed March 13, 2013). Rather than repeat the
Examiner’s findings and determinations and Appellant’s contentions in their
entirety, we refer to these documents.
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STATEMENT OF THE CASE
Appellant’s claimed methods and computer-readable media “relate[]
to the field of delivering online advertisements to computing devices such as
mobile computing devices. More particularly, the present disclosure relates
to delivering online advertisements in response to mobile application events
and techniques for providing rewards in computer games.” Spec. ¶ 1.
As noted above, claims 1–9, 11–24, and 26–30 are pending.
Claims 1, 11, 15, 16, 26, and 30 are independent. Appeal Br. 23 (claim 1),
25–28 (claims 11, 15, and 16), 30–32 (claims 26 and 30) (Claims App.).
Claims 16, 26, and 30 recite “non-transitory computer-readable medi[a]
storing one or more sequences of instructions, which when executed by one
or more processors, cause the one or more processors to carry out the steps
of” the methods as recited in claims 1, 11, and 15, respectively. Id.
Claims 2–9 depend directly or indirectly from claim 1, claims 12–14 depend
directly from claim 11, claims 17–24 depend directly or indirectly from
claim 16, and claims 27–29 depend directly from claim 26. Id. at 23–32.
Claim 1, with disputed limitations emphasized, is representative.
1. A data processing method comprising:
using a programmed digital electronic mobile computing
device requesting, by a mobile app executing on the mobile
device, incentive data from an app server and receiving the
incentive data;
wherein the incentive data comprises first incentive data
associating a first app event type with a first incentive frequency
value and a first reward type and second incentive data
associating a second app event type with a second incentive
frequency value and a second reward type, wherein the first app
event type is different from the second app event type, and
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wherein the first reward type is different from the second reward
type;
wherein the first incentive frequency value and the second
incentive frequency value each indicates a ratio of scaffolding
events to a number of occurrences of app events of the
associated app event type;
wherein rewards of the first reward type and rewards of
the second reward type are related to app events of the
associated app event type;
detecting, by an app event logic of the mobile device, an
occurrence of an app event of the mobile app, wherein the app
event is associated with the first event type;
determining, by the mobile device based on the incentive
data, that the particular app event is an incentivized app event;
determining, by the mobile device based on the first incentive
frequency value, whether to generate a scaffolding event,
wherein the scaffolding event comprises displaying an
advertisement using a display of the mobile device and providing
a reward of the first reward type, and wherein the scaffolding
event is an event that occurs within the mobile app during
execution using the mobile device;
in response to determining that the scaffolding event should
be generated, using the mobile device displaying, on the mobile
device, the advertisement and providing the reward.
Id. at 23 (emphases added).
REFERENCES AND REJECTIONS
The Examiner relies upon the following references in rejecting the
pending claims: 3

3 All reference citations are to the first named inventor only.
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Name Number Published Filed
Anderson US 2010/0228613 A1 Sept. 9, 2010 Mar. 3, 2009
Prince US 2011/0258026 A1 Oct. 20, 2011 Apr. 13, 2011
The Examiner rejects claims 1–9, 11–24, and 26–30 under 35 U.S.C.
§ 101 as directed to patent ineligible subject matter. Non-Final Act. 2–9, 32;
see Ans. 4–7. The Examiner rejects claims 1–9, 11–24, and 26–30 under 35
U.S.C. § 103(a) as obvious over the combined teachings of Prince and
Anderson. Non-Final Act. 9–31, 32–33; see Ans. 7–9.
We review the appealed rejections for error based upon the issues
identified by Appellant, and in light of the arguments and evidence produced
thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential).
Arguments not made are waived. See 37 C.F.R. § 41.37(c)(1)(iv). For the
reasons given below, we reverse the rejections of the pending claims.
ANALYSIS
I. Patent Eligible Claims
A. Section 101
An invention is patent-eligible if it claims a “new and useful process,
machine, manufacture, or composition of matter.” 35 U.S.C. § 101.
However, the U.S. 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).
In determining whether a claim falls within an excluded category, we
are guided by the Court’s two-part framework, described in Mayo and Alice.
Alice, 573 U.S. at 217–18 (citing Mayo Collaborative Servs. v. Prometheus
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Labs., Inc., 566 U.S. 66, 75–77 (2012)). In accordance with that framework,
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.”). According to the Court, 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)).
In Diamond v. Diehr, the claim at issue recited a mathematical
formula, but the Court held that “a claim drawn to subject matter otherwise
statutory does not become nonstatutory simply because it uses a
mathematical formula.” Diamond v. Diehr, 450 U.S. 175, 187 (1981).
Having said that, the 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 attempting
to limit the use of the formula to a particular technological environment.”
Id. at 191 (citing Benson and Flook). Nevertheless, the Court noted that “[i]t
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.” Id. at 187; see also BASCOM Global Internet Services, Inc. v.
AT&T Mobility LLC, 827 F.3d 1341, 1352 (Fed. Cir. 2016) (Even if the
individual components were known, “an inventive concept can be found in
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the ordered combination of claim limitations that transform the abstract idea
of filtering content into a particular, practical application of that abstract
idea.” (emphasis added)).
If the claim is “directed to” an abstract idea, we next “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 (quotation marks 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. (alterations in original) (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.
B. Office Patent Eligibility Guidance
In an effort to achieve clarity and consistency in how the Office
applies the Court’s two-part framework, the Office published revised
guidance on the application of § 101. 2019 Revised Patent Subject Matter
Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019).4 In Step One of our
analysis, we look to see whether the claims, as written, fall within one of the
four statutory categories identified in § 101. Id. at 53 (“Examiners should
determine whether a claim satisfies the criteria for subject matter eligibility

4 “All USPTO personnel are, as a matter of internal agency management,
expected to follow the guidance.” 2019 Revised Patent Subject Matter
Eligibility Guidance, 84 Fed. Reg. at 51; see also October 2019 Update:
Subject Matter Eligibility, 2 (Oct. 17, 2019) (“Note, the feedback received
was primarily directed to examination procedures and, accordingly, this
update focuses on clarifying practice for patent examiners. However, all
USPTO personnel are expected to follow the guidance.”).
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by evaluating the claim in accordance with the criteria discussed in
MPEP5 § 2106, i.e., whether the claim is to a statutory category (Step 1) and
the Alice/Mayo test for judicial exceptions (Steps 2A and 2B)”).
Under the guidance, we then look to whether the claim recites:
(1) Step 2A – Prong One: 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); and
(2) Step 2A – Prong Two: additional elements that integrate the
judicial exception into a practical application (see MPEP
§§ 2106.05(a)–(c), (e)–(h)).
See 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg.
at 54–55 (“Revised Step 2A”).
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.
See id. at 56 (“Step 2B: If the Claim Is Directed to a Judicial Exception,
Evaluate Whether the Claim Provides an Inventive Concept.”).

5 All Manual of Patent Examining Procedure (“MPEP”) citations herein are
to MPEP, Rev. 08.2017, January 2018.
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C. Step One – Claims Directed to Statutory Categories
Appellant’s independent claims 1, 11, and 15 and their associated
dependent claims are directed to methods (i.e., a “process”), and claims 16,
26, and 30 and their associated dependent claims are directed to non-
transitory, computer-readable media (i.e., a “manufacture”). Non-Final Act.
2. We agree with the Examiner that the claims recite recognized statutory
categories.
D. Two-Part Alice/Mayo Analysis
1. Independent Claims 1, 11, 15, 16, 26, and 30
a. Step 2A, Prong One – Claims Recite Abstract Idea
Applying the first part of the Alice/Mayo analysis (Step 2A), the
Examiner determines representative claim 1 is “directed to scaffolding based
on incentive frequency which is advertising.” Ans. 4; see Non-Final Act. 3–
4. Thus, the Examiner concludes, “Applicant’s claims are directed to
organizing human activity.” Non-Final Act. 32. For the reasons given
below, we agree.
The method of claim 1 broadly recites the steps of: (1) detecting the
occurrence of an application event on a mobile application (“detecting . . . an
occurrence of an app event of the mobile app, wherein the app event is
associated with the first event type”); (2) determining that the occurred
application event is an incentivized application event (“the message server
having a message provider interface logic stored in a memory and operating
in a CPU of the message server, wherein the interface logic being used by a
message provider for entering commercial messages and for selecting
demographic data applicable for each of the entered commercial messages,
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and the message server receiving and storing the commercial messages with
their associated demographics data in a message database of the database
server”); (3) determining whether to generate a scaffolding event, which
includes displaying an advertisement and providing a reward in the mobile
application (“determining . . . based on the first incentive frequency value,
whether to generate a scaffolding event, wherein the scaffolding event
comprises displaying an advertisement using a display of the mobile device
and providing a reward of the first reward type, and wherein the scaffolding
event is an event that occurs within the mobile app during execution using
the mobile device”); and (4) displaying the advertisement and providing the
reward (“in response to determining that the scaffolding event should be
generated . . . displaying . . . the advertisement and providing the reward”).
Appeal Br. 23 (Claims App.); see Non-Final Act. 3. Independent claims 11,
15, 16, 26, and 30 recite substantially similar limitations. Appeal Br. 25–28,
30–32 (Claims App.). As noted above, the Specification explains the
claimed inventions relate to “delivering online advertisements to computing
devices such as mobile computing devices,” and, in particular, “to delivering
online advertisements in response to mobile application events and
techniques for providing rewards in computer games.” Spec. ¶ 1; see
Affinity Labs of Texas, LLC v. Amazon.com Inc., 838 F.3d 1266, 1272 (Fed.
Cir. 2016) (“[The patent] claims the general concept of streaming user-
selected content to a portable device. The addition of basic user
customization features to the interface does not alter the abstract nature of
the claims and does not add an inventive component that renders the claims
patentable.”); Electric Power Grp., LLC v. Alstrom S.A., 830 F.3d 1350,
1353 (Fed. Cir. 2016) (“[C]ollecting information, analyzing it, and
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displaying certain results of the collection and analysis” is not patent
eligible.); see also Cellspin Soft, Inc. v. Fitbit, Inc., 927 F.3d 1306, 1319
(Fed. Cir. 2019) (citing Electric Power Grp. with approval).
Appellant contends that the Examiner’s characterization of the
claimed inventions “is far too abstract in light of Enfish[, LLC v. Microsoft
Corp., 822 F.3d 1327 (2016),] and does not reflect the inventors’
improvement.” Appeal Br. 7. Nevertheless, in Enfish, the Federal Circuit
cautioned, “describing the claims at . . . a high level of abstraction and
untethered from the language of the claims all but ensures that the
exceptions to [section] 101 swallow the rule.” Enfish, 822 F.3d at 1337,
(emphasis added). Here, the Examiner analyzes the claim limitations to
identify the recited abstract idea. Non-Final Act. 3.
Further Appellant contends the Examiner fails “to explain how the
asserted abstract idea qualifies as a judicially recognized abstract idea.”
Appeal Br. 9. In particular, Appellant contends “[t]he current claims do not
share the same characteristic that caused the judicially invalidated claims of
the cited cases to qualify as an abstract idea.” Id. at 9–10. Nevertheless,
neither the precedential decisions of the U.S. Supreme Court nor those of
our reviewing court nor the Office’s guidelines limit patent ineligible
abstract ideas only to those previously identified by the courts. See 2019
Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. at 51–53
(“I. Groupings of Abstract Ideas”).
Claim 1’s limitations, under their broadest reasonable interpretation,
recite providing customized or targeted advertisements, such that a mobile
device user can see the advertisements, which are fundamental economic
practices and “commercial . . . interactions (including . . . sales activities or
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behaviors . . .); [and] manag[e] personal behavior or relationships or
interactions between people[, e.g., advertisements providers and mobile
device users,] (including . . . following rules or instructions).” See Spec.
¶¶ 1, 16, 17; see also 2019 Revised Patent Subject Matter Eligibility
Guidance, 84 Fed. Reg. at 52. Such practices and interactions fall within the
broader category of “[c]ertain methods of organizing human activity.” 2019
Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. at 52.
Thus, we determine that the rejected claims recite an abstract idea, namely
“[c]ertain methods of organizing human activity.” Non-Final Act. 32;
Ans. 4.
b. Step 2A, Prong Two – Abstract Ideas Integrated Into
Practical Application
The Examiner finds:
The advertiser behavior claimed occurs via app events, “any
processing event, step, or programmatic action that may occur
during execution of app 202. For example, if app 202 is a game
app, an app event may represent a processing event that occurs
during execution of app 202 such as a user opening an in-game
menu, the user beginning a particular level of the game, or the
user ending a current game session.” App event does not impose
a meaningful limit on the judicial exception, such that the claim
is more than a drafting effort designed to monopolize the
exception (here there is merely ‘app implemented’ like merely
saying an idea is ‘computer implemented’). [The Prong 2
question, i.e., whether there is an integrated practical
application,] is answered “NO”.
Ans. 5.
Appellant contends, “[t]he Examiner’s Answer fails to consider
whether the claim as a whole integrates the judicial exception into a
practical application. Instead, the Examiner merely alleges that ‘the
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advertiser behavior claimed occurs via app events,’ and summarily
concludes that this does not impose a meaningful limit on the judicial
exception.” Reply Br. 3–4. In particular, Appellant contends, “[t]he claims
recite more than merely advertisement via app events. The claims describe
detecting occurrence of specific types of app events and determining
whether to generate a scaffolding event based on data received from an app
server.” Id. at 4. Moreover, Appellant contends:
The practical application includes, for example: requesting, by a
mobile app, incentive data from an app server, where the
incentive data includes data associating app event types with an
incentive frequency value and a reward type, detecting an app
event in the mobile app, and in response to a determination that
the app event is an incentivized event based on the incentive data
and a determination that a scaffolding event should be generated
based on the incentive data, displaying an advertisement and
providing a reward of a reward type indicated by the incentive
data. The claim as a whole therefore integrates the method of
organizing human activity into a practical application. Such a
specific implementation provides precisely the level of detail that
constitutes a “practical application” of the concept at issue.
Id. We agree.
As the Office has explained,
the Prong Two analysis considers the claim as a whole. That is,
the limitations containing the judicial exception as well as the
additional elements in the claim besides the judicial exception
need to be evaluated together to determine whether the claim
integrates the judicial exception into a practical application. The
additional limitations should not be evaluated in a vacuum,
completely separate from the recited judicial exception. Instead,
the analysis should take into consideration all the claim
limitations and how those limitations interact and impact each
other when evaluating whether the exception is integrated into a
practical application.
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October 2019 Update: Subject Matter Eligibility at 12 (emphasis added); see
Subject Matter Eligibility Examples: Abstract Ideas, 11 (Jan. 7, 2019)
(Example 40).6 The Examiner, however, focusses almost exclusively on the
limitations relating to the “advertiser behavior” and fails to consider all of
the claim limitations and how they interact and impact each other. See
Ans. 5. Thus, we are not persuaded that the Examiner demonstrates that the
rejected claims do not integrate the recited judicial exception into a practical
application and that the claims are directed to an abstract idea.
Because we are not persuaded that claim 1 or the other independent
claims fail to integrate the recited abstract idea into a practical application,
we need not consider whether these claims amount to significantly more
than the abstract idea. Consequently, we are persuaded that the Examiner
erred in determining that these claims are patent ineligible, and we do not
sustain that rejection.
2. Dependent Claims 2–9, 12–14, 17–24, and 27–29
The Examiner determines that dependent claims 2–9, 12–14, 17–24,
and 27–29 also are directed to an abstract idea and fail to recite significantly
more than the identified abstract idea. See Non-Final Act. 9 (“Claims
dependent from the independent claims do not cure the deficiencies and are
rejected.”). Appellant does not challenge the patent ineligibility rejection of
the dependent claims separately from their base claims, independent claims
1, 11, 16, and 26. Appeal Br. 18; see Reply Br. 6. Therefore, on this record

6 “The Board decides cases in accordance with the law, not in accordance
with hypothetical ‘examples [] intended to be illustrative only.’” Ex Parte
Blythe, Appeal No. 2017–003176, 2018 WL 3047568, at *8 (PTAB May 31,
2018) (nonprecedential).
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and for the reasons given above, we also do not sustain the patent
ineligibility rejection of the dependent claims.
II. Non-Obviousness Over Prince and Anderson
A. Independent Claims 1, 11, 15, 16, 26, and 30
As noted above, the Examiner rejects representative claim 1 under 35
U.S.C. § 103(a) as obvious over the combined teachings of Prince and
Anderson. Non-Final Act. 10–14. With respect to claim 1, the Examiner
makes conflicting findings regarding the description of the “incentive data.”
Claim 1 recites
the incentive data comprises first incentive data
associating a first app event type with a first incentive frequency
value and a first reward type and second incentive data
associating a second app event type with a second incentive
frequency value and a second reward type, wherein the first app
event type is different from the second app event type, and
wherein the first reward type is different from the second reward
type;
wherein the first incentive frequency value and the
second incentive frequency value each indicates a ratio of
scaffolding events to a number of occurrences of app
events of the associated app event type.
Appeal Br. 23 (Claims App.). Initially, the Examiner finds “the claim is to a
mobile device receiving data and stops; the rest is descriptive material
descriptive of the incentive data, non-functional language.” Non-Final
Act. 10. Later, however, the Examiner finds:
Prince shows determining advertising based on a measure
of efficiency (CTR ¶ 68, 101, 110) which is what thus incentive
frequency is. Incentive frequency is for doing something based
on efficiency. A ratio of app event to scaffolding is a click-thru
rate; the app event is the click and the ‘through’ of click-through
is the scaffolding. Prince at least [59, 86] shows providing
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selected content to viewer device, displaying the advertisement
and providing the reward (para. [0071], [0072][)]. Prince Fig 1,
method is performed by one or more computing devices (para.
[0061]).
Non-Final Act. 11 (emphasis added); see Ans. 7 (citing Prince ¶ 99 (as
teaching the incentive frequency)). We disagree with both findings.
Regarding whether incentive data comprising incentive frequency
values is non-functional descriptive material, claim 1 recites, “first incentive
data associate[es] a first app event type with a first incentive frequency value
and a first reward type” and the “first incentive frequency value . . . indicates
a ratio of scaffolding events to a number of occurrences of app events of the
[first] app event type.” Appeal Br. 23 (Claims App.). Thus, in response to
“detecting . . . an occurrence of an app event of the mobile app, wherein the
app event is associated with the first event type,” the method proceeds to
“determin[e], by the mobile device based on the first incentive frequency
value, whether to generate a scaffolding event.” Id. (emphasis added). We
determine that claim 1 recites a functional relationship between
determination of the incentive frequency value and the determination to
generate a scaffolding event, i.e., “displaying an advertisement using a
display of the mobile device and providing a reward of the first reward
type.” Id.; see MPEP § 2111.05(I)(A). Accordingly, we are not persuaded
that the incentive data comprising the incentive frequency values is non-
functional descriptive material.
Further, contrary to the Examiner’s finding, Appellant contends that
the incentive frequency value is not merely for ‘doing something
based on efficiency.’ The incentive frequency value for a
particular app event type is a ratio and is used to determine
whether to display an ad and provide a reward when app
events of the particular app event type are detected. This is
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clearly not described by a ‘click-thru rate,’ which tracks the ratio
of user clicks on an ad after it is displayed to the number of times
the ad was displayed.
Appeal Br. 19–20. Prince discloses an advertisement referral incentive
system, in which users receive incentives for referring other users or
performing other tasks. Id. at 20. “Prince describes users being encouraged
to view more ads or make referrals (alleged ‘incentive frequency value’),
different types of rewards (coupons, promo codes, jackpot entries, etc.), and
different types of user actions. However, Prince does not describe data that
associates these disparate items.” Id. (emphasis added). Referring to
Prince’s Paragraph 99, Prince discloses:
The advertiser may select further options 890, such as creating
incentives 900 or limiting dates and/or times 910 and/or the
frequency of the ad display. The advertiser may create further
incentives for paying attention to the advertisements or further
interaction with the user. This may include website links, special
offers, bonus money or jackpot entries for further participation,
or other offers or interaction beyond the advertisement.
Prince ¶ 99 (emphases added). However, per Appellant’s contentions,
Prince does not teach or suggest that the “frequency” value is a ratio of
scaffolding events, i.e., displaying advertisements and providing rewards, to
the number of application event types, as recited in claim 1. Appeal Br. 19–
20; see Reply Br. 6–9.
The Examiner also finds that “Scaffolding as reward and ad display is
shown in Anderson ¶ 49–51, display of content plus provide ad and reward
[Anderson] ¶ 49 and a rate or ratio [of Anderson] ¶ 17, 67.” Non-Final
Act. 13. However, Anderson discloses, “[a]n entertainment system operator
may offer a user of the entertainment system rewards for viewing
advertisements. The rewards may be an incentive to the user to proactively
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view an advertisement, and may be effective to increase a number of
consumers who actually view paid advertisements.” Anderson ¶ 17.
Further, Anderson discloses:
In some embodiments, advertisements may be uniformly valued
such that a user earns a same number of credit tokens as a
reward for viewing each advertisement (i.e., credit tokens
earning rate), either on an advertisement by advertisement basis
or on a per unit time of viewing an advertisement basis. In other
embodiments, each advertisement may be assigned a unique
value or credit tokens earning rate based on a variety of factors.
The factors may include digital content such as entertainment
programs associated with or viewed in proximity to the
advertisement, popularity of the advertisement, payments made
by the provider of the advertisement to the entertainment system
operator, promotions associated with the advertisement, and
other factors as may be known to those skilled in the art of
advertising. The credit tokens earnings ratio of a given
advertisement may be fixed to be within a range of approximately
one to six percent of legal tender revenue (e.g., gross or net of
costs associated with transmitting the advertisement) collected
by the entertainment system operator associated with
distributing or transmitting the advertisement. The earnings
ratio may be adjusted by the entertainment system operator
and/or the advertiser periodically or dynamically.
Id. ¶ 67 (emphases added). Although Anderson discloses a “credit token
earnings ratio,” this is the ratio of “rewards” per advertisement viewings, not
the incentive frequency ratio, that is “a ratio of scaffolding events[, i.e.,
displaying an advertisement and providing a reward,] to a number of
occurrences of app events of the associated app event type,” as recited in
claim 1. Appeal Br. 20–21; see id. at 23 (Claims App.).
For the reasons given above, Appellant persuades us that neither
Prince nor Anderson teaches or suggests this limitation. Appeal Br. 18–22;
see Reply Br. 6–9. Moreover, the Examiner does not find that the combined
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teachings of Prince and Anderson teach or suggest this limitation. See Non-
Final Act. 14. Consequently, we are persuaded that the Examiner erred in
rejecting independent claim 1, as well as independent claims 11, 15, 16, 26,
and 30, as rendered obvious over the combined teachings of Prince and
Anderson; and we do not sustain the rejection of those claims.
B. Dependent Claims 2–9, 12–14, 17–24, and 27–29
The Examiner determines that dependent claims 2–9, 12–14, 17–24,
and 27–29 are rendered obvious over the combined teachings of Prince and
Anderson. See Non-Final Act. 14–31. Appellant does not challenge the
obviousness rejection of the dependent claims separately from their base
claims, independent claims 1, 11, 16, and 26. Appeal Br. 22; see Reply
Br. 9. Therefore, on this record and for the reasons given above, we also do
not sustain the obviousness rejection of the dependent claims.
DECISIONS
1. The Examiner erred in rejecting:
a. claims 1–9, 11–24, and 26–30 under 35 U.S.C. § 101, as directed
to patent ineligible subject matter;
b. claims 1–9, 11–24, and 26–30 under 35 U.S.C. § 103, as obvious
over the combined teachings of Prince and Anderson.
2. Thus, on this record, claims 1–9, 11–24, and 26–30 are not
unpatentable.
CONCLUSION
We reverse the Examiner’s rejections of claims 1–9, 11–24, and 26–
30.
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In summary:
Claims
Rejected
35 U.S.C. § Basis/References Affirmed Reversed
1–9, 11–24,
26–30
101 Eligibility 1–9, 11–24,
26–30
1–9, 11–24,
26–30
103(a) Prince, Anderson 1–9, 11–24,
26–30
Overall
Outcome
1–9, 11–24,
26–30

REVERSED