TELECOM ITALIA S.P.A.

Patent Trials and Appeals Board

Jul 1, 2020

2019002541 (P.T.A.B. Jul. 1, 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.
14/651,163 06/10/2015 Gabriele Elia 007760.00015\US 8818
11435 7590 07/01/2020
BANNER & WITCOFF, LTD.
& attorneys for client 007511
1100 13th Street, N.W.
Suite 1200
WASHINGTON, DC 20005-4051
EXAMINER
ANDERSON, SCOTT C
ART UNIT PAPER NUMBER
3694
NOTIFICATION DATE DELIVERY MODE
07/01/2020 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):
eofficeaction@bannerwitcoff.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte GABRIELE ELIA, MARCO MARCHETTI, and
GIOVANNI MARTINI

Appeal 2019-002541
Application 14/651,163
Technology Center 3600

Before CARL W. WHITEHEAD JR., DAVID M. KOHUT, and
IRVIN E. BRANCH, Administrative Patent Judges.

BRANCH, Administrative Patent Judge.

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–20. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.

1 We use “Appellant” to reference the “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies the real party in interest as “Telecom
Italia S.p.A.” Appeal Br. 3.
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STATEMENT OF THE CASE
Appellant’s Invention
Appellant’s invention “relates to a method and system for providing
advertisement to a user of a communication network.” Spec. ¶ 1. Claim 1,
reproduced below with emphasis, is illustrative of argued subject matter.
1. A method comprising:
storing, at an advertisement database, an association between
an identifier of a first user of a first user device of a
communication network and at least one visual advertisement
associated with the first user;
receiving, from a second user of a second user device of the
communication network, a selection of at least one visual
advertisement associated with the second user;
storing, at the advertisement database, an association between
an identifier of the second user of the second user device of the
communication network and the at least one visual
advertisement associated with the second user, wherein the
advertisement database is located remotely from the first user
device and the second user device;
setting up a communication session in the communication
network between the first user device of the first user and the
second user device of the second user;
using, by an advertisement manager computing device, the
identifier of the second user for retrieving, from the
advertisement database, a visual advertisement selected from
amongst the at least one visual advertisement associated with
the second user, wherein the advertisement manager
computing device is located remotely from the first user device
and the second user device; and
transmitting, from the advertisement manager computing
device and to the first user device of the first user, the selected
visual advertisement, wherein the selected visual
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advertisement is configured to be displayed on a display of the
first user device.
Appeal Br. 19 (Claims Appendix).
Rejections
Claims 1–20 stand rejected under 35 U.S.C. § 101 as being directed to
a judicial exception of § 101 without significantly more. Final Act. 3–6.
Claims 1–20 stand rejected under 35 U.S.C. § 112, second paragraph,
as being indefinite in scope. Final Act. 2.
Claims 1, 2 and 15 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Patwa (US 2012/0054039 A1; Mar. 1, 2012) and Hwang
(US 2012/0232975 A1; Sept. 13, 2012). Final Act. 6–15.
Claims 3 and 11 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Patwa, Hwang, and Lim (US 2010/0088246 A1; Apr. 8,
2010). Final Act. 15–17.
Claims 4–10, and 12 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Patwa, Hwang, Lim, and Purvy (US 2011/0258025 A1;
Oct. 20, 2011). Final Act. 18–23.
Claim 13 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Patwa, Hwang, Lim, Purvy, and Ellis
(US 2002/0042921 A1; Apr. 11, 2002). Final Act. 24–25.
Claim 14 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Patwa, Hwang, and McCollom (US 6,343,274 B1;
Jan. 29, 2002). Final Act. 25–26.
Claims 16–18 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Patwa, Hwang, and Flickinger (US 2002/0083441 A1;
June 27, 2002). Final Act. 26–28.
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Claims 19 and 20 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Patwa, Hwang, and Zakas (US 2011/0016023 A1; Jan. 20,
2011). Final Act. 29–31.
35 U.S.C. § 101
For the rejection of claims 1–20 under § 101, Appellant addresses the
claims as two groups: independent claims 1 and 15; and dependent claims 2–
14 and 16–20. See, e.g., Appeal Br. 6–11 (heading), 11 (heading). We
select claims 1 and 16 as representative claims of their respective groups.
See 37 C.F.R. § 41.37(c)(1)(iv). For the below reasons, we are unpersuaded
of error in the rejections of claims 1 and 16. We accordingly do not sustain
the § 101 rejection of claims 1–20.
Principles of Law
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 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. v. CLS Bank Int’l, 573 U.S. 208,
216 (2014) (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. Alice, 573 U.S. at 217−18 (citing Mayo Collaborative
Servs. v. Prometheus 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
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(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. 252, 267−68 (1853))); 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 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.”).
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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.
PTO Guidance
The PTO provides guidance for 35 U.S.C. § 101. USPTO’s 2019
Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7,
2019) (“Guidance”). 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, and mental
processes); and
(2) additional elements that integrate the judicial exception into a
practical application (see Manual of Patent Examining Procedure
(MPEP) § 2106.05(a)−(c), (e)−(h) (9th ed. 2018)).
84 Fed. Reg. at 52−55. Only if a claim (1) recites a judicial exception and
(2) does not integrate that exception into a practical application, do we then
conclude the claim is directed to a judicial exception (id. at 54) and look to
whether the claim:
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(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.
Id. at 56.
Analysis for Independent Claims: Representative Claim 1
Step 1: Does Claim 1 Fall within a Statutory Category?
There is no dispute that the claimed subject matter falls within a § 101
category of patentable subject matter. See Guidance, 84 Fed. Reg. at 53−54
(“Step 1”).
Step 2A(1): 2 Does Claim 1 Recite Any Judicial Exceptions?
We agree with the Examiner’s determination that claim 1
recitesjudicial exceptions. See October 2019 Patent Eligibility Guidance

2 The Guidance separates the enumerated issues (1) to (4) (see supra 6–7)
into Steps 2A(1), 2A(2), and 2B, as follows:
[T]he revised procedure . . . focuses on two aspects [of whether
a claim is “directed to” a judicial exception under the first step
of the Alice/Mayo test (USPTO Step 2A)]: (1) [w]hether the
claim recites a judicial exception; and (2) whether a recited
judicial exception is integrated into a practical application.
[W]hen a claim recites a judicial exception and fails to integrate
the exception into a practical application, . . . further analysis
pursuant to the second step of the Alice/Mayo test (USPTO
Step 2B) . . . is needed . . . in accordance with existing USPTO
guidance as modified in April 2018. [footnote omitted]
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Update (“Guidance Update”) at 1 (meaning of “describe”), available
at https://www.uspto.gov/sites/default/files/documents/
peg_oct_2019_update.pdf; see also 84 Fed. Reg. 55942 (Oct. 18, 2019)
(notifying the public of the Guidance Update). Specifically, we agree
claim 1 encompasses the “abstract idea of providing information to a person
based on what is known about her, which is similar to the concept identified
as abstract by the court in Affinity Labs of Texas LLC v. Amazon.com, Inc.,
838 F.3d 1266, 1270 . . . (Fed. Cir 2016).” Final Act. 3.
We add the Examiner’s cite to Affinity Labs reflects that claim 1
encompasses targeted “advertising, marketing[, and] sales activities” and
thus “commercial . . . interactions” identified by the Guidance’s
judicial-exception category of “(b) Certain methods of organizing human
activity.”3 Guidance, 84 Fed. Reg. at 52. Affinity Labs holds that “the
concept of delivering user-selected media content to portable devices is an
abstract idea” because “tailoring [] content based on information about the
user . . . [, e.g.,] providing different newspaper inserts for different
neighborhoods” is an abstract idea. 838 F.3d at 1269, 1271 (addressing
Intellectual Ventures I LLC v. Capital One Bank (USA), 792 F.3d 1363
(Fed. Cir. 2015)); see also Capital One Bank, 792 F.3d at 1369–70 (abstract

84 Fed. Reg. at 51 (referencing, via the omitted footnote, “USPTO
Memorandum of April 19, 2018, ‘Changes in Examination Procedure
Pertaining to Subject Matter Eligibility, Recent Subject Matter Eligibility
Decision (Berkheimer v. HP, Inc.)’ (Apr. 19, 2018), available at https://
www.uspto.gov/sites/default/files/documents/memo-berkheimer-
20180419.PDF [ . . . ‛USPTO Berkheimer Memorandum’].”).
3 The Guidance was published on January 7, 2019, and thus unavailable to
the Examiner while preparing the Answer (mailed December 13, 2018).
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idea of tailoring advertisements to a person’s demographics and current
activity).
We also add that claim 1 encompasses a process of facilitating
communication (“communication session”) from a person (“first user”) to a
business (“second user”) and then selectively providing an advertisement of
the business to that person based on the person’s presumed desire (e.g.,
need, preference, etc.) for a product of the business. See, e.g., Spec. ¶¶ 2, 5–
7, 51, 64. This process is encompassed by the claimed activities of:
receiving, from a second user . . . , a selection of at least one
visual advertisement associated with the second user;
storing . . . an association between an identifier of the second
user . . . and the at least one visual advertisement associated
with the second user . . . ;
setting up a communication session . . . between . . . the first
user and . . . the second user;
using … the identifier of the second user for retrieving . . . a
visual advertisement selected from amongst the at least one
visual advertisement associated with the second user . . . ; and
transmitting, . . . to . . . the first user, the selected visual
advertisement[.]
The receiving reads on a marketing service (or the like) receiving
advertisements from respective clients. The storing reads on the service
maintaining a record of the advertisement/s submitted by each client. The
setting up reads on the service directing a communication from a person to a
client. The using reads on the service identifying that client and respective
advertisement/s. The transmitting reads on the service providing the
advertisement/s to the above person.
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We further add that the claimed “storing . . . an association between
an identifier of a first user . . . and at least one visual advertisement
associated with the first user” (not part of above block quote) also
encompasses targeted “advertising, marketing or sales activit[y] or
behavior[]” (Guidance, 84 Fed. Reg. at 52). In regards to the above
exemplary process, the storing reads on the service determining (and thus
storing) demographic information shared by the person and submitted
advertisements—e.g., to further determine, per the person’s accordingly
presumed preferences, a ‘best fit’ of multiple advertisements submitted by
the client. See, e.g., Spec. ¶ 41 (determining a person’s preferences for this
purpose).
Step 2A(2): Are the Recited Judicial Exceptions Integrated Into a
Practical Application?
We agree with the Examiner’s determination that the claimed
additional elements do not integrate the claimed judicial exceptions (i.e.,
claim 1’s judicially-excepted activities identified above) into a practical
application. See Guidance, 84 Fed. Reg. at 53 (describing a “practical
application” as a “meaningful limit on the [recited judicial exceptions], such
that the claim is more than a drafting effort designed to monopolize the
[exceptions]”); id. at 55 (“exemplary considerations . . . indicative [of] a
practical application”). Specifically, we agree the emphasized limitations of
reproduced claim 1 (supra 2–3) are “recited at a high degree of generality”
and “only perform generic computer functions of manipulating information
and sharing information.” Final Act. 4; see also generally id. at 3–5;
Ans. 4–5.
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We also agree with the Examiner’s specific characterizations of the
claimed additional elements. See Final Act. 3–4; Ans. 4–5.
As the Examiner finds, the operations of the additional elements are
nondescriptly recited. The storing of device identifiers, advertisements, and
associations “can be performed . . . by pencil-and-paper means”
(Final Act. 3). Transmitting of something for display on a device, e.g.,
“advertisement is configured to be displayed” thereon, is a generic
transmission and display of information. Final Act. 3; Ans. 4.
As the Examiner further finds, the operations and capabilities of the
additional elements are ubiquitous. “That a database on a server is remote
from a user is a ubiquitous feature of Internet access.” Ans. 5. “[T]he fact
that multiple users can communicate information to each other by employing
servers is . . . ubiquitous.” Final Act. 31. “[A] server communicating with
user devices was . . . ubiquitous.” Id. at 4. “[F]ormatting [transmissions] so
that they can be displayed on user devices was . . . ubiquitous.” Id. at 5.
“Setting up a communication between two . . . devices requires nothing more
than use of long known, ubiquitous computer technologies.” Id.
We add that MPEP § 2106.05(a)–(c) and (e)–(h) support the
Examiner’s determination that the claimed additional elements do not confer
a practical application. See Guidance 84 Fed. Reg. at 55, nn.25, 27–32
(citing these MPEP sections).
MPEP § 2106.05(a) concerns “Improvements to the Functioning of a
Computer or To Any Other Technology or Technical Field.” MPEP
at 2100-50. Specifically, it concerns “whether the claim purports to improve
computer capabilities or, instead, invokes computers merely as a tool.”
Id. at 2100-51–52. There is no indication the claimed invention improves a
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technology. The claimed computer technology merely, and only in a
ubiquitous manner, allocates the judicially-excepted activities (supra 8–9) to
client devices, a server, and database. In the above exemplary process, the
“user devices” are merely client devices of a person and business
that communicate with each other and thereby activate the service of
selectively providing the person an advertisement of the business. The
claimed “advertisement manager computing device” is a server providing
the above service. The claimed “advertisement database” is the server’s
database that stores, organizes, and accesses the needed information.
MPEP § 2106.05(b) and (c) respectively concern use of a “Particular
Machine” and “Particular Transformation.” MPEP at 2100-54, 56
(transformation must be “of an article”). Claim 1 does not recite a particular
machine; the hardware is generic (e.g., “user devices”). Nor does claim 1
recite a particular transformation.
MPEP § 2106.05(e) concerns “Other Meaningful Limitations.”
MPEP at 2100 62. Specifically, it concerns whether the claim “limitations
[go] beyond generally linking the use of the judicial exception to a particular
technological environment.” Id. It also describes, as an example of
limitations falling short of this threshold, a “data processing system and
communications controllers . . . [that] merely linked the use of the abstract
idea to a particular technological environment[,] i.e., ‘implementation via
computers’[.]” Id. (quoting Alice, 573 U.S. at 226). For the reasons
discussed with respect to MPEP § 2106.05(a), the additional elements
merely link the recited judicial exceptions to data processing and
communication.
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MPEP § 2106.05(f) concerns “Mere Instructions To Apply An
Exception.” MPEP at 2100-63. Specifically, it concerns the “particularity
or generality of the application of the judicial exception.” Id. at 2100-66–67.
It explains that “generically recit[ing] an effect of the judicial exception[,] or
claim[ing] every mode of accomplishing that effect, amounts to . . . merely
adding the words ‘apply it’ to the judicial exception.” Id. at 2100-66.
Because claim 1 only recites judicial exceptions (supra 8–10) and generic
computer elements (“user devices,” a “computing device,” and a “database”)
performing their generic functions in a generic architecture (supra 12) to
achieve those activities, claim 1 constitutes a mere instruction to apply
judicial exceptions.
MPEP § 2106.05(g) concerns “Insignificant Extra Solution Activity.”
MPEP at 2100-67–69. Specifically, it concerns whether “the additional
elements add more than . . . activities incidental to the primary process or
product.” Id. at 2100-67. “[L]imitations . . . recite only insignificant
extra-solution activity . . . [if] unrelated to how the solution is achieved.”
Amdocs (Israel) Ltd. v. Openet Telecom, Inc., 841 F.3d 1288, 1311 (Fed.
Cir. 2016). Such limitations include mere “natural consequence[s] of
carrying out the abstract idea in a computing environment.” Intellectual
Ventures I LLC v. Erie Indem. Co., 850 F.3d 1315, 1329 (Fed. Cir. 2017)
(cited by MPEP § 2106.05(g) at 2100-68). Claim 1’s additional elements
are merely incidental, natural consequences of the claimed object and
solution—i.e., of selectively providing an advertisement for someone
(object) based on the their communicating with a second person, business,
etc. (solution). For example, the claimed “visual advertisement . . .
configured to be displayed on a display of the first user device” is an
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incidental, natural consequence of displaying the advertisement. See MPEP
at 2100-67 (insignificant “post-solution activity”), 69 (“printing or
downloading”). Similarly, the claimed receiving and storing data is an
incidental, natural consequence of gathering information from the first and
second users. See id. (insignificant “pre-solution activity”), 68 (“mere data
gathering”).
MPEP § 2106.05(h) concerns “Field of Use and Technological
Environment.” MPEP at 2100-69. Specifically, it concerns whether an
industry-specific claim limitation “simply . . . acquiesce[s] to limiting the
reach of the patent” by reciting a field of use or technological environment.
Id. It identifies, as an example, limitations that do “not alter or affect how
the process steps . . . were performed.” Id. at 2100-70. There is no
indication that claim 1’s industry specific limitations—e.g., a “visual
advertisement” and “advertisement database”—alter how the claim steps are
performed.
For the foregoing reasons, claim 1 is directed to judicial exceptions—
not to a practical application.
Step 2B: Does Claim 1 Recite Anything That Is Beyond the Recited
Judicial Exceptions and Not a Well-Understood, Routine,
Conventional (“WURC”) Activity?
We agree with the Examiner’s determination that all claim features,
i.e., all limitations alone and in combination, constitute either one of the
recited judicial exceptions or WURC activity. 84 Fed. Reg. at 56.
Specifically, we agree the claimed uses of computer technology are
“ubiquitous” and thus WURC activity. See generally Ans. 4–6;
Final Act. 3–5, 31–33; see also supra 11 (listing the “ubiquitous” features).
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We add a claim’s additional elements do not confer “significantly
more” to an invention if merely: (i) adding the words “apply it” or an
equivalent to an abstract idea (Alice, 573 U.S. at 221–23); (ii) instructing to
implement an abstract idea on a computer (id. at 222–23); or (iii) requiring a
generic computer to perform generic computer functions (id. at 225).
Claim 1’s additional elements entirely and squarely fall within these
categories (i) and (iii) of WURC activity. See e.g., Intellectual Ventures I
LLC v. Symantec Corp., 838 F.3d 1307, 1318 (Fed. Cir. 2016) (“The patent
discloses only generic computers performing generic functions” and “thus
confirms that the implementation of the abstract idea is routine and
conventional.”). The claimed storing requires only a generic “database” and
its generic function of storing data elements (identifiers and advertisements)
and associations. The claimed receiving requires only a generic “user
device” communicating over a generic “network.” The claimed “setting up”
requires only a generic “communication session” established over the
generic “network” and between the generic “user devices.” The claimed
“using” requires only a generic “computing device” using one of the data
elements (identifier) to retrieve an associated data element (advertisement).
The claimed transmitting requires only the generic “computing device” and
its generic function of configuring and transmitting a retrieved data element
(the advertisement) for display on a device (user device).
Claim 1 accordingly recites only judicial exceptions and generic
computer components (user devices, a database, and computing device)
performing their generic functions. As further discussed above, the
judicially-excepted activities and generic functions are performed in a
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generic architecture and per a ubiquitous allocation of tasks to the client,
server, and database. See, e.g., supra 12.
Appellant’s Arguments
Our above determinations address most of Appellant’s arguments.
Only the arguments below require further discussion.
Appellant contends “the Office Action fails to provide any evidence
that the features and steps recited in [claim 1] are well-understood, routine,
and conventional as required in Berkheimer.” Appeal Br. 8; see also
supra n.2 (description of Berkheimer and the USPTO Berkheimer
Memorandum). We are unpersuaded for each of two reasons.
First, we are unpersuaded in view of our analysis for Step 2B.
Second, Appellant recognizes the Examiner has taken official notice
on this issue but does not traverse the official notice. Id. at 8–9.
Specifically, Appellant characterizes the Examiner findings of WURC
activity by quoting two findings; each stating that claimed computer
technology was “not only routine and common but ubiquitous.” Id. at 8
(quoting Final Act. 4, 5). Appellant then emphasizes that “[o]fficial notice
‘should be used only when the examiner is certain, based upon his or her
personal knowledge, that the additional element(s) represents WURC
activity.” Id. at 9 (quoting Berkheimer Memorandum at 4). The Examiner’s
use of “ubiquitous” specifies a certainty based upon personal knowledge.
Or, in other words, it specifies “facts . . . of notorious character,” which are
facts appropriate for official notice. MPEP § 2144.03.E, Reliance on
Common Knowledge in the Art or “Well Known” Prior Art, at 2100-240;
see also Berkheimer Memorandum at 4 (“Procedures for taking official
notice . . . are discussed in MPEP § 2144.03.”).
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Appellant also contends:
Similar to [BASCOM Glob. Internet Servs., Inc. v. AT&T
Mobility LLC, 827 F.3d 1341 (Fed. Cir. 2016)], the features
recited in claim 1 allow the system to uniquely customize
advertisements for multiple users/user devices using both an
advertisement manager computing device and an advertisement
database that are located remotely from the user devices. . . .
The selected visual advertisement transmitted to the first user
device of the first user is customized for the first user by, for
example, the selection of at least one visual advertisement
received from the second user.
Appeal Br. 10. We are unpersuaded for each of two reasons.
First, the above-argued advantage—“uniquely customize
advertisements . . . for the first user by . . . selection of at least one visual
advertisement received from the second user” (id.)—arises entirely from
claim 1’s judicially-excepted activities. See SAP Am., Inc. v. InvestPic,
LLC, 898 F.3d 1161, 1163 (Fed. Cir. 2018) (“[An] advance [that] lies
entirely in the realm of abstract ideas . . . is ineligible for patenting.”).
Second, claim 1’s additional elements describe only “generic
computers . . . perform[ing] generic computer functions” and are accordingly
“distinguishable from those in BASCOM . . . describing ‘how a particular
arrangement of elements is a technical improvement[’].” Symantec Corp.,
838 F.3d at 1315–16 (internal brackets omitted).
Appellant also contends:
[T]he examiner states “[t]he step of storing information in a
database . . . requires no computers at all; the card catalogs once
ubiquitously present in public libraries are databases, as is the
telephone directory and a dictionary.” Answer, p. 4. This is an
unreasonable interpretation of the term “advertisement
database” and apparently an attempt to characterize the
claims as mere mental processes.
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Reply Br. 3. We are unpersuaded because the Examiner is not
characterizing claim 1 or its storing steps as mere mental processes. Ans. 4.
The Examiner is rather emphasizing that, but for the recitation of a generic
database, claim 1’s storing steps would not distinguish over even
pre-computer means of recording such information. Id.; see also, e.g.,
Ans. 6 (“not in any way technical”).
Analysis for Dependent Claims—Representative Claim 16
Appellant contends dependent claim 16 results in “a technical
advantage that improve[s] upon prior systems,” such as in McRO
Inc. v. Bandai Namco Games America, 837 F.3d 1299 (Fed. Cir. 2016).
Appeal Br. 12–13. Specifically, Appellant contends:
Similar to McRO, [t]he features recited in claim 16 result in a
technical advantage that improve upon prior systems. . . . For
example . . . , transmitting the selected advertisement “via a
different communication channel from the communication
session” allows more processing resources and communication
bandwidth to be allocated to the communication session in the
communication network between the first user device and the
second user device.
These unique technical advantages are further described
throughout the specification, such as at paragraphs [0066] and
[0067] of the substitute specification filed June 10, 2015.
Id.
We are unpersuaded because Appellant does not show the argued
technical advantage—use of different communication channels for a
communication session and advertisement—is claimed specifically enough
to prevent preemption of the claimed judicial exceptions. As explained in
McRO, a technical feature confers patent-eligibility if specific enough to
prevent preemption of the recited abstract idea. See, e.g., 837 F.3d at 1314
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(“The preemption concern arises when the claims are not directed to a
specific invention[.] . . . We therefore look to whether the claims in these
patents focus on a specific means or method that improves the relevant
technology.”); see also DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d
1245, 1259 (Fed. Cir. 2014) (The claims “do not attempt to preempt
. . . making two web pages look the same,” but “[r]ather . . . recite a specific
way to automate the creation of a composite web page.”); Enfish, LLC
v. Microsoft Corp., 822 F.3d 1327, 1339 (Fed. Cir. 2016) (The
claims “recited . . . a specific type of data structure . . . confirm[ing] . . . the
§ 101 analysis has not been deceived by the ‘draftsman’s art.’” (quoting
Alice, 573 U.S. at 226)); BASCOM, 827 F.3d at 1352 (The claims “do not
preempt . . . filtering content,” but rather “carve out a specific location for
the filtering system (a remote ISP server).”).
Appellant also contends the Examiner unreasonably interprets
claim 16’s features as mental processes. Reply Br. 6–7. We are
unpersuaded because the Examiner is rather emphasizing that claim 16 does
not describe the channels (aside from them respectively carrying an
advertisement and communication session). Ans. 7 (“non-specific use of
communication techniques”).
With regard to all dependent claims, Appellant also contends: “[T]he
Office Action fails to specifically address each feature of the dependent
claims and fails to provide evidence that the features recited in the
dependent claims are ‘well-understood, routine, and conventional to a skilled
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artisan,’ as required by Berkheimer.” Appeal Br. 12. We are unpersuaded
for each of two reasons.
First, we have selected claim 16 as representative and are not
persuaded of error by the foregoing respective arguments.
Second, even assuming each dependent claim is separately argued by
the above contention, the Examiner provides respective findings for the
dependent claims and Appellant does not specify a failure of each finding to
present Berkheimer evidence. For example, Appellant does not contest the
Examiner’s finding that “[c]laims 3, 4, 14 and 20 consist entirely of
nonfunctional printed matter” (Final Act. 5). It is Appellant’s burden to
identify respective errors for separately argued claims. See, e.g., 37 C.F.R.
§ 41.37(c)(1)(iv) (“[A]ny claim(s) argued separately . . . shall be argued
under a separate subheading[.] A statement which merely points out what a
claim recites will not be considered an argument for separate patentability of
the claim.”).
35 U.S.C. § 112, ¶ 2—INDEFINITENESS
We are persuaded of error in the § 112, ¶ 2, rejection of claim 15. We
accordingly do not sustain the rejection.
The at-issue claim limitation recites: “upon setting up of the
communication session, use the identifier of the second user for retrieving
. . . a visual advertisement.” Final Act. 2; Ans. 5. The Examiner finds
“upon setting up of the communication session” renders the limitation
because claim 15 does not first recite the session as having begun. Ans. 3.
Appellant contends the Examiner “fails to cite any authority for this
assertion.” Appeal Br. 5.
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We are persuaded of error because the Examiner does not explain why
a claimed condition (“upon”) has an uncertain scope unless triggered by a
prior recited step. In re Miller, 441 F.2d 689, 693 (CCPA 1971) (describing
indefiniteness as an issue of whether “those skilled in the art will be . . .
uncertain[ of] what subject matter falls within the scope of the claims”). The
lack of such explanation, e.g., by citation to case law, prevents a meaningful
rebuttal by Appellant. See, e.g., In re Packard, 751 F.3d 1307, 1312
(Fed. Cir. 2014) (A prima facie case for indefiniteness constitutes an
“obligation to explain adequately the shortcomings . . . so that the applicant
is properly notified and able to respond.”).
35 U.S.C. § 103(a)
For the rejections under § 103(a), Appellant contests only the
Examiner’s reliance on Patwa that extends to all claims, i.e., as applied to
each of the independent claims (1 and 15). Appeal Br. 14–18. We select
claim 1 as representative. See 37 C.F.R. § 41.37(c)(1)(iv). We are
unpersuaded of error in the § 103(a) rejection of claim 1 and accordingly
sustain all § 103(a) rejections.
As discussed above, the claimed invention establishes the
communication session between two users and then selects an
advertisement: for the first user (transmitted to the first user); and,
associated with the second user. These features are claimed as follows: “a
first user device[;] receiving, from . . . a second user device . . . , a selection
of at least one visual advertisement associated with the second user;
. . . setting up a communication session . . . between the first user device
. . . and the second user device[;] using . . . the identifier of the second user
for retrieving . . . a visual advertisement selected from amongst the at least
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one visual advertisement associated with the second user[; and] transmitting,
. . . to the first user device . . . , the selected visual advertisement.”
Contesting the Examiner’s reliance on Patwa, Appellant contends:
“[T]he cited portions of Patwa discuss deriving advertising targeting metrics
relevant to a user based on images associated with the [same] user (Patwa
¶ [31]) and causing an advertisement to be displayed to the [same] user
(Patwa ¶ [24]). Appeal Br. 15–16. The Examiner cites Hwang for the above
feature. Final Act. 9–10. Appellant thus fails to identify an error.
We note the reliance on Hwang is reasonable. Hwang teaches a VOIP
session between two users, an advertisement (e.g., coupon) pushed by the
VOIP service to the a display of one user, and then sharing of the
advertisement from that user (per an instruction to the VOIP service) to the
other user (pushed by the VOIP service). Hwang ¶¶ 6, 15.
The combination of Patwa and Hwang is also reasonable. The
Examiner finds Patwa teaches: a database storing user identifiers,
advertisements, and associations therebetween; and pushing advertisements
that are selected for the recipients based on the associations. Final Act. 7–9
(citing Patwa ¶¶ 21, 24–25, 28, 31). The combination of Patwa’s and
Hwang’s above teachings results in a communication session (e.g., VOIP)
that: has a database storing user identifiers, advertisements, and associations
therebetween; uses the associations to select an advertisement for a session
user (claimed “second user”); and, per an instruction of the above user,
selects the same advertisement for the other user (claimed “first user”).
Appellant does not show this combination is erred, e.g., fails to suggest the
claimed “using . . . the identifier of the second user for retrieving . . . a visual
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advertisement selected from amongst the at least one visual advertisement
associated with the second user.”
OVERALL CONCLUSION
We affirm the Examiner’s decision to reject claims 1–20.4
DECISION SUMMARY
Claims
Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–20 101 Eligibility 1–20
1–20 112, ¶ 2 Indefiniteness 1–20
1, 2, 15
103(a) Patwa, Hwang
1, 2, 15

3, 11
103(a) Patwa, Hwang, Lim
3, 11

4, 10, 12
103(a)
Patwa, Hwang,
Lim, Purvy
4, 10, 12

13
103(a)
Patwa, Hwang,
Lim, Purvy, Ellis
13

14
103(a)
Patwa, Hwang,
McCollom
14

16–18
103(a)
Patwa, Hwang,
Flickinger
16–18

19, 20
103(a)
Patwa, Hwang,
Zakas
19, 20

Overall
Outcome 1–20

4 “The affirmance of the rejection of a claim on any of the grounds specified
constitutes a general affirmance of the decision of the examiner on
that claim.” 37 C.F.R. § 41.50.
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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. § 1.136(a)(1)(iv).

AFFIRMED