Tara Chand. Singhal

Patent Trials and Appeals Board

Oct 21, 2019

13769515 - (D) (P.T.A.B. Oct. 21, 2019)

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.
13/769,515 02/18/2013 Tara Chand Singhal 11195.269F 7007
103550 7590 10/21/2019
Tara Chand Singhal
P.O. Box 5075
Torrance, CA 90510
EXAMINER
PATEL, DIPEN M
ART UNIT PAPER NUMBER
3688
NOTIFICATION DATE DELIVERY MODE
10/21/2019 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):
chand@internetpromise.com
singhal@att.net
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte TARA CHAND SINGHAL
____________

Appeal 2018–005494
Application 13/769,515
Technology Center 3600
____________

Before ANTON W. FETTING, PHILIP J. HOFFMANN, and
BRUCE T. WIEDER, Administrative Patent Judges.

FETTING, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE1
Tara Chand Singhal (Appellant2) seeks review under 35 U.S.C. § 134
of a final rejection of claims 1–20, the only claims pending in the application
on appeal. We have jurisdiction over the appeal pursuant to
35 U.S.C. § 6(b).

1 Our decision will make reference to the Appellant’s Appeal Brief (“App.
Br.,” filed October 26, 2017) and Reply Brief (“Reply Br.,” filed May 7,
2018), and the Examiner’s Answer (“Ans.,” mailed March 7, 2018) and
Final Action (“Final Act.,” mailed May 31, 2017).
2 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42.

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The Appellant invented a way of brand advertising on digital media,
where the ad image substantially obscures delivered digital content for a
limited period of time before being automatically removed.
Specification 1:27–29.
An understanding of the invention can be derived from a reading of
exemplary claim 14, which is reproduced below (some paragraphing added).
14. A method of brand advertising on a global network of
computers, comprising the steps of:
a. storing a digital content in a server,
programming in the digital content an advertising image
and programming the digital content in a manner that the
advertisement image is a first display seen by a receiver
client when the digital content is received from a server
on the global network and viewed on the client;
b. programming
substantially obscuring
by the advertising image
the digital content from being viewed
and
removing the advertising image from the first display
after a time threshold,
enabling the digital content to be viewed;
c. programming
the time threshold equal to a minimum time period
that is equal to or greater than 0.7 seconds for
cognitive perception of the displayed ad image
and
a maximum time period equal to or less than 3.5
seconds for avoidance of viewer irritability
and
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the viewing of the image cannot be bypassed until
the expiry of the time threshold,
enabling in the client the display of the ad image
and the digital content with the time threshold
and
thereby the method generating customer goodwill
for the brand to a viewer and delivering value to a
brand advertiser.
The Examiner relies upon the following prior art:
Name Reference Date
Wu US 2009/0177528 A1 July 9, 2009
Braun US 2010/0175079 A1 July 8, 2010
Dugonjic US 2010/0269030 A1 Oct. 21, 2010
Mei US 2011/0075992 A1 Mar. 31, 2011
Heath US 2013/0073374 A1 Mar. 21, 2013
Claims 1–20 stand rejected under 35 U.S.C. § 101 as directed to a
judicial exception without significantly more.
Claims 1, 2, 6, 7, 9–18, and 20 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Dugonjic, Braun, and Wu.
Claims 3–5 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over Dugonjic, Braun, Wu, and Heath.
Claims 8 and 19 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Dugonjic, Braun, Wu, and Mei.
ISSUES
The issues of eligible subject matter turn primarily on whether the
claims recite more than abstract conceptual advice of results desired.
The issues of obviousness turn primarily on whether the Appellant
argues more than a general allegation that the art fails to describe the claims.
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FACTS PERTINENT TO THE ISSUES
The following enumerated Findings of Fact (FF) are believed to be
supported by a preponderance of the evidence.
Facts Related to the Prior Art
Dugonjic
01. Dugonjic is directed to displaying an Internet advertisement
over a webpage. Dugonjic para. 1.
02. Dugonjic describes hiding all but a certain area of the
underlying webpage with the advertisement, and over time, fading
out the advertisement to reveal other areas of the underlying
webpage. Dugonjic para. 6.
03. Dugonjic describes temporally displaying advertising content
on a webpage. The webpage on which the advertising content is
displayed may have a plurality of graphical, textual and
audio/visual components. The advertising content is displayed
around a first area of the webpage, for example, around a video
player, such that it hides the original content of the webpage
around the first area (e.g., hides the original content of the
webpage around the video player). The transparency of the
advertising content is increased over a defined time interval so
that over the time interval, the underlying original content of the
webpage around the first area (e.g., around the video player)
becomes increasingly visible. At the end of the time interval, the
advertising content disappears entirely. No user input is required
to trigger the fade out of the advertising content. The fade out
occurs automatically. Dugonjic para. 7.
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Braun
04. Braun is directed to video ad delivery using configurable video
ad policies. Braun para. 3.
05. Braun describes an ad being presented adjacent or overlaid on
the content, according to metadata. The selection of ads, timing
and placement is determined according to the manifest instance,
which has been generated based on the content provider’s
specified video ad policy. Braun para. 12.
Wu
06. Wu is directed to advertising to present advertising media to an
audience. Wu para. 1.
07. Wu describes a computer programmed to: present advertising
media, including projecting advertising images or video on the
display; survey the audience; use body and face analysis of the
audience to detect one or more viewers in the audience who are
paying attention to the display; for one or more viewers and in real
time, analyze their head orientation or eye gaze, or both; and then
to identify part of the projected advertisement that the viewer is
paying attention to; and based on the viewer analysis and in real
time, adjust the presentation of advertising media to help retain the
attention of the viewer. Wu paras. 8–13.
08. Wu describes a slide show being projected on the display until
a viewer faces the display. Then the advertising projected is
changed to a short (e.g. 2–3 seconds) motion picture sequence
from beginning to end, which is called the attraction mode, aiming
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at attracting the viewer’s attention and providing key messages up
front. Wu para. 90.
ANALYSIS
Claims 1–20 rejected under 35 U.S.C. § 101 as directed to a judicial
exception without significantly more
STEP 13
Independent claim 14, as a method claim, nominally recites one of the
enumerated categories of eligible subject matter in 35 U.S.C. § 101. The
issue before us is whether it is directed to a judicial exception without
significantly more.
STEP 2
The Supreme Court
set forth a framework for distinguishing patents that claim laws
of nature, natural phenomena, and abstract ideas from those that
claim patent-eligible applications of those concepts. First, . . .
determine whether the claims at issue are directed to one of
those patent-ineligible concepts. If so, we then ask, “[w]hat
else is there in the claims before us? To answer that question,
. . . consider the elements of each claim both individually and
“as an ordered combination” to determine whether the
additional elements “transform the nature of the claim” into a
patent-eligible application. [The Court] described step two of
this analysis as a search for an “‘inventive concept’”—i.e., an
element or combination of elements that is “sufficient to ensure
that the patent in practice amounts to significantly more than a
patent upon the [ineligible concept] itself.”
Alice Corp. v CLS Bank Int’l, 573 U.S. 208, 217–18 (2014) (citations
omitted) (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc.,

3 For continuity of analysis, we adopt the steps nomenclature from 2019
Revised Patent Subject Matter Eligibility Guidance, 84 FR 50 (Jan. 7, 2019)
(“Revised Guidance”).
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566 U.S. 66 (2012)). To perform this test, we must first determine what the
claims are directed to. This begins by determining whether the claims recite
one of the judicial exceptions (a law of nature, a natural phenomenon, or an
abstract idea). Then, if the claims recite a judicial exception, determining
whether the claims at issue are directed to the recited judicial exception, or
whether the recited judicial exception is integrated into a practical
application of that exception, i.e., that the claims “apply, rely on, or use the
judicial exception in a manner that imposes a meaningful limit on the
judicial exception, such that the claim is more than a drafting effort designed
to monopolize the judicial exception.” Revised Guidance at 54. If the
claims are directed to a judicial exception, then finally determining whether
the claims provide an inventive concept because the additional elements
recited in the claims provide significantly more than the recited judicial
exception.
STEP 2A Prong 1
At a high level, and for our preliminary analysis, we note that method
claim 14 recites storing data, programming an image to obscure content and
remove the image after a period of time, programming time period
parameters, and programming the inability to bypass viewing the image.
Programming is just that—writing computer instructions implicit in all
computer operations. The programmed operations are displaying an image
for a period of time set by parameters. The image is displayed so as to
obscure other content. Thus, claim 14 recites storing and displaying data.
None of the limitations recites technological implementation details for any
of these steps, but instead recite only results desired by any and all possible
means.
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From this we see that claim 14 does not recite the judicial exceptions
of either natural phenomena or laws of nature.
Under Supreme Court precedent, claims directed purely to an abstract
idea are patent-ineligible. As set forth in the Revised Guidance, which
extracts and synthesizes key concepts identified by the courts, abstract ideas
include (1) mathematical concepts4, (2) certain methods of organizing
human activity5, and (3) mental processes6. Among those certain methods
of organizing human activity listed in the Revised Guidance are commercial
or legal interactions. Like those concepts, claim 14 recites the concept of
advertising management. Specifically, claim 14 recites operations that
would ordinarily take place in advising one to display an ad over other
content for some finite period of time. The advice to display an ad over
other content for some finite period of time involves displaying an ad, which
is an economic act, and managing ad time and placement, which is an act
ordinarily performed in the stream of commercial advertising. For example,
claim 14 recites “obscuring by the advertising image,” which is an activity
that would take place whenever one is displaying an ad, as the ad obscures
whatever would otherwise occupy that space. Similarly, claim 14 recites

4 See, e.g., Gottschalk v. Benson, 409 U.S. 63, 71–72 (1972); Bilski v.
Kappos, 561 U.S. 593, 611 (2010); Mackay Radio & Tel. Co. v. Radio Corp.
of Am., 306 U.S. 86, 94 (1939); SAP Am., Inc. v. InvestPic, LLC, 898 F.3d
1161, 1163 (Fed. Cir. 2018).
5 See, e.g., Bilski, 561 U.S. at 628; Alice, 573 U.S. at 219–20; Ultramercial,
Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed. Cir. 2014); Smart Sys.
Innovations, LLC v. Chicago Transit Auth., 873 F.3d 1364, 1383 (Fed. Cir.
2017); In re Marco Guldenaar Holding B.V., 911 F.3d 1157, 1160–61 (Fed.
Cir. 2018).
6 See, e.g., Benson, 409 U.S. at 67; CyberSource Corp. v. Retail Decisions,
Inc., 654 F.3d 1366, 1371–72 (Fed. Cir. 2011); Intellectual Ventures I LLC
v. Symantec Corp., 838 F.3d 1307, 1318 (Fed. Cir. 2016).
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“programming the time threshold” and “obscuring,” which are also
characteristics of ad time and placement management.
The Examiner determines the claims to be directed to brand
advertising on a global network of computers. Final Act. 3.
The preamble to claim 14 recites that it is a method of brand
advertising on a global network of computers. The steps in claim 14 result
in displaying an ad absent any technological mechanism other than a
conventional computer for doing so.
As to the specific limitations, limitations (a) and (c) recite storing
data, viz. programming instructions and program parameters. Limitation (b)
recites conventional displaying of advertising data, which advises one to
apply generic functions to get to these results. The limitations as to ad
placement and period of display are generic parameters for ads. The
limitations thus recite advice for displaying an ad over other content for
some finite period of time. To advocate displaying an ad over other content
for some finite period of time is conceptual advice for results desired and not
technological operations.
The Specification at page 1, lines 27–29 describes the invention as
relating to brand advertising on digital media, where the ad image
substantially obscures delivered digital content for a limited period of time
before being automatically removed. Thus, all this intrinsic evidence shows
that claim 14 is directed to displaying an ad for some period of time, i.e.
advertising management. This is consistent with the Examiner’s
determination.
This in turn is an example of commercial or legal interactions as a
certain method of organizing human activity because advertising
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management is a fundamental commercial interaction. The concept of
advertising management by displaying an ad over other content for some
finite period of time is one idea for advertising time and placement. The
steps recited in claim 14 are part of how this might conceptually be
premised.
Our reviewing court has found claims to be directed to abstract ideas
when they recited similar subject matter. Our reviewing court has found
claims to be directed to abstract ideas when they recited similar subject
matter. See Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed. Cir.
2014) (using advertising).
From this we conclude that at least to this degree, claim 14 is directed
to advertising management by displaying an ad over other content for some
finite period of time, which is a commercial and legal interaction, one of
certain methods of organizing human activity identified in the Revised
Guidance, and, thus, an abstract idea.
STEP 2A Prong 2
The next issue is whether claim 14 not only recites, but is more
precisely directed to, this concept itself, or whether the claim is instead
directed to some technological implementation or application of, or
improvement to, this concept; i.e. integrated into a practical application.7
At the same time, we tread carefully in construing this
exclusionary principle lest it swallow all of patent law. At
some level, “all inventions . . . embody, use, reflect, rest upon,
or apply laws of nature, natural phenomena, or abstract ideas.”
Thus, an invention is not rendered ineligible for patent simply
because it involves an abstract concept. “[A]pplication[s]” of

7 See, e.g., Alice, 573 U.S. at 223, discussing Diamond v. Diehr, 450 U.S.
175 (1981).
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such concepts “ ‘to a new and useful end,’ ” we have said,
remain eligible for patent protection. Accordingly, in applying
the § 101 exception, we must distinguish between patents that
claim the “ ‘buildin[g] block[s]’ ” of human ingenuity and those
that integrate the building blocks into something more.
Alice, 573 U.S. at 217 (citations omitted).
Taking the claim elements separately, the operation performed by the
computer at each step of the process is expressed purely in terms of results,
devoid of implementation details. Steps (a) and (c) are pure data storage
steps. Limitations describing the nature of the data do not alter this. Step
(b) is generic displaying of the results. All steps recite generic computer
processing expressed in terms of results desired by any and all possible
means and so present no more than conceptual advice. All purported
inventive aspects reside in how the data is interpreted and the results desired,
and not in how the process physically enforces such a data interpretation or
in how the processing technologically achieves those results.
Viewed as a whole, Appellant’s claim 14 simply recites the concept of
advertising management by displaying an ad over other content for some
finite period of time as performed by a generic computer. This is no more
than conceptual advice on the parameters for this concept and the generic
computer processes necessary to process those parameters, and do not recite
any particular implementation.
Claim 14 does not, for example, purport to improve the functioning of
the computer itself. Nor does it effect an improvement in any other
technology or technical field. The 25 pages of specification spell out
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different generic equipment8 and parameters that might be applied using this
concept and the particular steps such conventional processing would entail
based on the concept of advertising management by displaying an ad over
other content for some finite period of time under different scenarios. They
do not describe any particular improvement in the manner a computer
functions. Instead, claim 14 at issue amounts to nothing significantly more
than an instruction to apply advertising management by displaying an ad
over other content for some finite period of time using some unspecified,
generic computer. Under our precedents, that is not enough to transform an
abstract idea into a patent-eligible invention. See Alice, 573 U.S. at 225–26.
None of the limitations reflects an improvement in the functioning of
a computer, or an improvement to other technology or technical field,
applies or uses a judicial exception to effect a particular treatment or
prophylaxis for a disease or medical condition, implements a judicial
exception with, or uses a judicial exception in conjunction with, a particular
machine or manufacture that is integral to the claim, effects a transformation
or reduction of a particular article to a different state or thing, or applies or
uses the judicial exception in some other meaningful way beyond generally
linking the use of the judicial exception to a particular technological
environment, such that the claim as a whole is more than a drafting effort
designed to monopolize the exception.
We conclude that claim 14 is directed to achieving the result of
advertising management by advising one to display an ad over other content
for some finite period of time, as distinguished from a technological

8 The Specification describes using a server and client as generic terms, e.g.,
Spec. 10:6–28.
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improvement for achieving or applying that result. This amounts to
commercial or legal interactions, which fall within certain methods of
organizing human activity that constitute abstract ideas. The claim does not
integrate the judicial exception into a practical application.
STEP 2B
The next issue is whether claim 14 provides an inventive concept
because the additional elements recited in the claim provide significantly
more than the recited judicial exception.
The introduction of a computer into the claims does not generally alter
the analysis at Mayo step two,
the mere recitation of a generic computer cannot transform a
patent-ineligible abstract idea into a patent-eligible invention.
Stating an abstract idea “while adding the words ‘apply it’” is
not enough for patent eligibility. Nor is limiting the use of an
abstract idea “‘to a particular technological environment.’”
Stating an abstract idea while adding the words “apply it with a
computer” simply combines those two steps, with the same
deficient result. Thus, if a patent’s recitation of a computer
amounts to a mere instruction to “implemen[t]” an abstract idea
“on . . . a computer,” that addition cannot impart patent
eligibility. This conclusion accords with the preemption
concern that undergirds our § 101 jurisprudence. Given the
ubiquity of computers, wholly generic computer
implementation is not generally the sort of “additional
featur[e]” that provides any “practical assurance that the
process is more than a drafting effort designed to monopolize
the [abstract idea] itself.”
Alice, 573 U.S. at 223–24 (citations omitted, alterations in original).
“[T]he relevant question is whether the claims here do more than
simply instruct the practitioner to implement the abstract idea . . . on a
generic computer.” Alice, 573 U.S. at 225. They do not.
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Taking the claim elements separately, the function performed by the
computer at each step of the process is purely conventional. Using a
computer for storing and displaying data amounts to electronic data query
and retrieval—one of the most basic functions of a computer. All of these
computer functions are generic, routine, conventional computer activities
that are performed only for their conventional uses. See Elec. Power Grp.,
LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016). See also In re
Katz Interactive Call Processing Patent Litig., 639 F.3d 1303, 1316 (Fed.
Cir. 2011) (“Absent a possible narrower construction of the terms
‘processing,’ ‘receiving,’ and ‘storing,’ . . . those functions can be achieved
by any general purpose computer without special programming”). None of
these activities is used in some unconventional manner nor does any produce
some unexpected result. Appellant does not contend to have invented any of
these activities. In short, each step does no more than require a generic
computer to perform generic computer functions. As to the data operated
upon, “even if a process of collecting and analyzing information is ‘limited
to particular content’ or a particular ‘source,’ that limitation does not make
the collection and analysis other than abstract.” SAP Am., Inc., 898 F.3d at
1168.
Considered as an ordered combination, the computer components of
Appellant’s claim 14 add nothing that is not already present when the steps
are considered separately. The sequence of data storage-display is equally
generic and conventional. See Ultramercial, Inc., 772 F.3d at 715 (sequence
of receiving, selecting, offering for exchange, display, allowing access, and
receiving payment recited an abstraction), Inventor Holdings, LLC v. Bed
Bath & Beyond, Inc., 876 F.3d 1372, 1378 (Fed. Cir. 2017) (sequence of
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data retrieval, analysis, modification, generation, display, and transmission),
Two-Way Media Ltd. v. Comcast Cable Commc’ns, LLC, 874 F.3d 1329,
1339 (Fed. Cir. 2017) (sequence of processing, routing, controlling, and
monitoring). The ordering of the steps is therefore ordinary and
conventional.
We conclude that claim 14 does not provide an inventive concept
because the additional elements recited in the claim do not provide
significantly more than the recited judicial exception.
REMAINING CLAIMS
Claim 14 is representative. The remaining method claims merely
describe process parameters. We conclude that the method claims at issue
are directed to a patent-ineligible concept itself, and not to the practical
application of that concept.
As to the structural claims, they
are no different from the method claims in substance. The
method claims recite the abstract idea implemented on a generic
computer; the system claims recite a handful of generic
computer components configured to implement the same idea.
This Court has long “warn[ed] . . . against” interpreting § 101
“in ways that make patent eligibility ‘depend simply on the
draftsman’s art.’”
Alice, 573 U.S. at 226. As a corollary, the claims are not directed to any
particular machine.
LEGAL CONCLUSION
From these determinations we further determine that the claims do not
recite an improvement to the functioning of the computer itself or to any
other technology or technical field, a particular machine, a particular
transformation, or other meaningful limitations. From this we conclude the
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claims are directed to the judicial exception of the abstract idea of certain
methods of organizing human activity as exemplified by the commercial and
legal interaction of advertising management by displaying an ad over other
content for some finite period of time, without significantly more.
APPELLANT’S ARGUMENTS
As to Appellant’s Appeal Brief arguments, we adopt the Examiner’s
determinations and analysis from Final Action pages 2–10 and Answer
pages 7–10, and reach similar legal conclusions. We now turn to the Reply
Brief.
We are not persuaded by Appellant’s argument that
the claimed subject matter is squarely directed to a system of
brand advertising on a global network of computers with unique
and specific server client logic and interface structures, a thus a
[sic] specific digital machine with unique logic operating in the
digital machine and with unique interfaces to other systems.
Reply Br. 9. We agree the invention is directed to advertising management,
which is a form of commercial interaction and hence one of certain methods
of organizing human activity that are abstract. The only logic recited is that
of a conventional timer and content placement. Both are recited as results to
be obtained by any and all means, devoid of implementation details. This is
not a specific digital machine with unique logic operating in the digital
machine and with unique interfaces to other systems, but a general purpose
computer programmed to perform some relatively simple and conventional
operations of display.
At that level of generality, the claims do no more than
describe a desired function or outcome, without providing any
limiting detail that confines the claim to a particular solution
to an identified problem. The purely functional nature of the
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claim confirms that it is directed to an abstract idea, not to a
concrete embodiment of that idea.
Affinity Labs of Tex., LLC v. Amazon.com Inc., 838 F.3d 1266, 1269 (Fed.
Cir. 2016).
We are not persuaded by Appellant’s argument that “the claimed
subject matter in any shape and form does not claim building blocks of
human ingenuity, as had been identified above and is not a ‘method of
organizing human activity.’” Reply Br. 10. This is a conclusory argument
that we have answered in the analysis supra. Advertising is indeed one of
the building blocks of human ingenuity as evidenced by its pervasiveness.
We are not persuaded by Appellant’s argument that “the claimed
subject matter is not a conventional use of computers for organizing human
activity.” Reply Br. 11. Again, this is a conclusory argument, similar to the
prior argument, which we have answered in the analysis supra.
We are not persuaded by Appellant’s argument that “the claimed
subject matter in any shape and form is not ‘an idea in itself’ as that phrase
is defined in Alice.” Reply Br. 12. Again, this is a conclusory argument,
similar to the prior argument, which we have answered in the analysis supra.
Appellant does not indicate where Alice defined the phrase “an idea in itself”
or what the definition is. We show supra that the claims recite no more than
the conceptual idea of displaying an ad for some period of time, albeit
overlaid on content.
We are not persuaded by Appellant’s argument that
the claimed subject matter is not a conventional use of
computers for organizing human activity. Instead the claimed
subject matter is squarely directed to a system of brand
advertising on a global network of computers with unique and
specific server client logic and interface structures, a thus a [sic]
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specific digital machine with unique logic operating in the
digital machine and with unique interfaces to other systems.
Reply Br. 13. This is a repetition of the first argument, now directed to the
issue of whether the equipment is generic. We find the argument equally
unpersuasive here. As we determined in footnote 8 supra, the Specification
describes using a server and client as generic terms. No technological
implementations are recited or described.
Claims 1, 2, 6, 7, 9–18, and 20 rejected under 35 U.S.C. § 103(a) as
unpatentable over Dugonjic, Braun, and Wu
As to Appellant’s Appeal Brief arguments, we adopt the Examiner’s
determinations and analysis from Final Action pages 11–34 and Answer
pages 10–16, and reach similar legal conclusions. We now turn to the Reply
Brief.
The only argument Appellant presents in the Reply Brief does no
more than recite the claim limitations and allege the art fails to describe it.
Reply Br. 15–16. This is insufficient to act as a separate argument under 37
C.F.R. § 41.37. As our reviewing court held,
we hold that the Board reasonably interpreted Rule 41.37 to
require more substantive arguments in an appeal brief than a
mere recitation of the claim elements and a naked assertion that
the corresponding elements were not found in the prior art.
In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011).
The remainder of the argument alleges that the Examiner improperly
construed the limitation at issue, but presents no evidence or analysis to
support this. Appellant also contends the Examiner failed to give weight to
the limitation “for avoidance of viewer irritability.” Reply Br. 15. This
limitation has no functional effect on the claim and is superfluous as it only
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explains the intended purpose of the value maximum time period equal to
or less than 3.5 seconds.
We add that although the Appeal Brief contends that “the specific
structures are driven by the science of human factors based on cognition
and time for action or response based first on that human cognition,” the
Specification provides no evidence to support this assertion, or to
support why the values of 0.7 and 3.5 seconds are recited in the claims.
App. Br. 32. The claims and the Specification only recite that the values
are for cognitive perception of the displayed ad image, and for avoidance
of viewer irritability without evidence to support the criticality, or even
efficacy of these values. In any event, as the Examiner responds, the
range of 2–3 seconds Wu describes is within this range of 0.7–3.5
seconds. Ans. 14.
Claims 3–5 rejected under 35 U.S.C. § 103(a) as unpatentable over
Dugonjic, Braun, Wu, and Heath
Appellant depends on the arguments in support of claim 1.
Claims 8 and 19 rejected under 35 U.S.C. § 103(a) as unpatentable over
Dugonjic, Braun, Wu, and Mei
Appellant depends on the arguments in support of claim 1.
CONCLUSIONS OF LAW
The rejection of claims 1–20 under 35 U.S.C. § 101 as directed to a
judicial exception without significantly more is proper.
The rejection of claims 1, 2, 6, 7, 9–18, and 20 under 35 U.S.C.
§ 103(a) as unpatentable over Dugonjic, Braun, and Wu is proper.
The rejection of claims 3–5 under 35 U.S.C. § 103(a) as unpatentable
over Dugonjic, Braun, Wu, and Heath is proper.
Appeal 2018-005494
Application 13/769,515

20

The rejection of claims 8 and 19 under 35 U.S.C. § 103(a) as
unpatentable over Dugonjic, Braun, Wu, and Mei is proper.
CONCLUSION
The rejection of claims 1–20 is affirmed.
In summary:
Claims
Rejected
35 U.S.C. § Basis Affirmed Reversed
1–20 101 Eligibility 1–20
1, 2, 6, 7, 9 –18,
20
103 Dugonjic, Braun,
Wu
1, 2, 6, 7, 9 –18,
20

3–5 103 Dugonjic, Braun,
Wu, Heath
3–5
8, 9 103 Dugonjic, Braun,
Wu, Mei
8, 9
Overall
Outcome
1–20

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2011).

AFFIRMED