UNISON HOLDINGS LLC

Patent Trials and Appeals Board

May 3, 2021

2020005015 (P.T.A.B. May. 3, 2021)

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.
14/649,639 06/04/2015 Brian D. Silvernail UNI038 P300A 9270
277 7590 05/03/2021
PRICE HENEVELD LLP
695 KENMOOR SE
P O BOX 2567
GRAND RAPIDS, MI 49501
EXAMINER
CRANDALL, RICHARD W.
ART UNIT PAPER NUMBER
3689
NOTIFICATION DATE DELIVERY MODE
05/03/2021 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):
ptomail@priceheneveld.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte BRIAN D. SILVERNAIL

Appeal 2020-005015
Application 14/649,639
Technology Center 3600
____________

Before NINA L. MEDLOCK, KENNETH G. SCHOPFER, and
MATTHEW S. MEYERS, Administrative Patent Judges.

MEYERS, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), the Appellant1 appeals from the
Examiner’s final decision to reject claims 1–6, 8–10, 15–17, and 19–22,
which are all of the pending claims. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM IN PART.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies the real party in interest as UNISON
HOLDINGS LLC. Appeal Br. 2.
Appeal 2020-005015
Application 14/649,639

2

CLAIMED INVENTION
Appellant’s claimed invention generally relates to a system for
uploading video files. Spec. ¶ 2.
Claims 1, 10, and 19 are the independent claims on appeal. Claims 1
and 10, reproduced below, with modified formatting and bracketed
notations, are illustrative of the claimed subject matter.
1. A property video listing system comprising:
[a] an Internet–connected property listing server having a
processor configured to:
[b] provide a website for receiving a plurality of video files
from a remote user device through the Internet to upload in
association with a property listing viewable on the website;
[c] upload all of the received video files as separate video
files to a video hosting server through the Internet while
providing identifying data pertaining to the property listing with
each uploaded video file; and
[d] display the property listing on the website and provide
thumbnail photos with links to each of the uploaded video files
stored on the video hosting server whereby a visitor having a
visitor device remote from the property listing server may visit
the website through the Internet and view the video files stored
on the video hosting server within the property listing using the
visitor device,
[e] wherein, after uploading all of the received video files
to the video hosting server, said property listing server is further
configured to receive a response from the video hosting server
including a unique URL for each uploaded video file identifying
the storage location on the video hosting server of the video file,
store the unique URL in a database associated with that video
file, and create links from the thumbnail photos to the video files
associated with the unique URLs.

10. A property video listing system comprising:
[a] an Internet-connected property listing server having a
processor configured to:
Appeal 2020-005015
Application 14/649,639

3

[b] provide a website displaying property listings and
providing thumbnail photos for the property listings where each
of the thumbnail photos having a link to a corresponding one of
a plurality of video files for each property listing wherein the
plurality of video files are stored on a video hosting server in
communication with the property listing server through the
Internet, where each thumbnail photo is identified by one of a
plurality of different feature designations, wherein one of the
thumbnail photos for each property listing is identified by a
summary feature designation and the other thumbnail photos are
identified by at least one of: kitchen, bedroom, bathroom, living
room, and family room;
[c] only allow access to a visitor of a video file linked by
the one of the thumbnail photos for the property listing identified
with the summary feature designation;
[d] prompt the visitor to register by creating a user profile
including contact information;
[e] when the visitor registers by creating a user profile,
allow access to all other video files linked by the other thumbnail
photos for the property listing;
[f] track access by visitors of each of the video files;
[g] generate interest reports of relative interest in each
property listing by the visitors as a function of an extent of
viewing by the visitors of the video files associated with each
property listing;
[h] identify a visitor as a lead relative to a property listing
if the visitor has viewed a predetermined number of the video
files for the property listing in addition to the video file that has
the summary feature designation, and generate a lead report
identifying the lead including contact information for the lead;
and
[i] provide through the Internet the interest reports and the
lead report to an owner/agent device of an owner/agent
associated with the property listing,
[j] wherein said property listing server is configured to
require that a registered visitor view the video file that has the
summary feature designation before allowing the visitor to view
any of the other video files for a property listing.
Appeal 2020-005015
Application 14/649,639

4

Claims App. 1, 3–4.
REJECTIONS2
1. Claims 10, 15–17, 19, and 20 stand rejected under 35 U.S.C.
§ 101 as being directed to a judicial exception without significantly more.3
2. Claims 1–5 and 9 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Sterner (US 2007/0294622 A1, pub. Dec. 20, 2007)
and Wohlstadter (US 2012/0265633 A1, pub. Oct. 18, 2012).
3. Claim 6 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Sterner, Wohlstadter, and Rhoads (US 2011/0194730 A1,
pub. Aug. 11, 2011).
4. Claim 8 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Sterner, Wohlstadter, and Puttick (US 8,095,434 B1, iss.
Jan. 10, 2012).
5. Claims 10, 15–17, 19, and 20 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Sterner and McCarthy (US
2009/0048859 A1, pub. Feb. 19, 2009).4

2 In an After-Final Amendment filed June 4, 2015, Appellant amended
claim 15 to depend from claim 10 in response to a rejection of claim 15
under 35 U.S.C. § 112(d). See Final Act. 2 (“Claim 15 is dependent upon
claim 13, which has been canceled.”). In a correspondence, mailed March
31, 2020, the Examiner entered Appellant’s amendment to claim 15, and as
such, appears to have withdrawn the rejection under 35 U.S.C. § 112(d). See
generally Ans. 3–8; cf. Appeal Br. 10.
3 The Examiner withdrew claims 1–9, 21, and 22 from this ground of
rejection. Ans. 3.
4 The Examiner improperly identifies cancelled claim 13 as being rejected
on this basis. Final Act. 26.
Appeal 2020-005015
Application 14/649,639

5

6. Claims 21 and 22 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Sterner, McCarthy, and Wohlstadter.

ANALYSIS
Patent-Ineligible Subject Matter
35 U.S.C. § 101 Framework
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. 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
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.”).
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);
Appeal 2020-005015
Application 14/649,639

6

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
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 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. (citation omitted)
(citing Benson and Flook); see, e.g., id. at 187 (“It is now commonplace that
an application of a law of nature or mathematical formula to a known
structure or process may well be deserving of patent protection.”).
If the claim is “directed to” an abstract idea, we turn to the second
step of the Alice and Mayo framework, where “we must examine the
elements of the claim to determine whether it contains an ‘inventive
concept’ sufficient to ‘transform’ the claimed abstract idea into a patent-
eligible application.” Alice, 573 U.S. at 221 (quotation marks omitted).
Appeal 2020-005015
Application 14/649,639

7

“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.
USPTO Section 101 Guidance
We are also guided by U.S. Patent and Trademark Office (“USPTO”)
Guidance, as set forth in the 2019 Revised Patent Subject Matter Eligibility
Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (“Guidance”), incorporated into
the MANUAL OF PATENT EXAMINING PROCEDURE §§ 2104–06, Rev. 10.2019
(“MPEP”) in June 2020. “The guidance sets out agency policy with respect
to the USPTO’s interpretation of the subject matter eligibility requirements
of 35 U.S.C. [§] 101 in view of decisions by the Supreme Court and the
Federal Circuit.” Guidance, 84 Fed. Reg. at 51.5 Although “[a]ll USPTO
personnel are, as a matter of internal agency management, expected to
follow the guidance,” the Guidance “does not create any right or benefit,
substantive or procedural, enforceable by any party against the USPTO.” Id.
The Guidance, by its terms, applies to all applications, and to all patents
resulting from applications, filed before, on, or after January 7, 2019. Id.
at 50.

5 In response to received public comments, the Office issued further
guidance on October 17, 2019, clarifying the 2019 Revised Guidance,
84 Fed. Reg. USPTO, October 2019 Update: Subject Matter Eligibility (the
“October 2019 Update”) (available at https://www.uspto.gov/sites/default/
files/documents/peg_oct_update.pdf).
Appeal 2020-005015
Application 14/649,639

8

Under USPTO Guidance and October 2019 Update, we first look to
whether the claim recites: (1) any judicial exceptions, including laws of
nature, natural phenomena, and products of nature (see MPEP
§§ 2106.04(II)(A)(1), 2106.04(b)) (“Step 2A, Prong One”); and
(2) additional elements that integrate the judicial exception into a practical
application (see id. §§ 2106.04(II)(A)(2), 2106.04(d)) (“Step 2A, Prong
Two”).6
Only if a claim (1) recites a judicial exception and (2) does not
integrate that exception into a practical application, do we then look, under
Step 2B, to whether the additional elements, individually or in combination,
provide an inventive concept. See MPEP §§ 2106(III), 2106.05. “An
inventive concept ‘cannot be furnished by the unpatentable law of nature (or
natural phenomenon or abstract idea) itself.’” Id. § 2106.05 (quoting
Genetic Techs. v. Merial LLC, 818 F.3d 1369, 1376 (Fed. Cir. 2016)).
Among the considerations in determining whether the additional elements,
individually or in combination, amount to significantly more than the
exception itself, we look to whether they add a specific limitation beyond the
judicial exception that is not “well-understood, routine, conventional” in the
field or simply append well-understood, routine, conventional activities

6 This evaluation is performed by (a) identifying whether there are any
additional elements recited in the claim beyond the judicial exception, and
(b) evaluating those additional elements individually and in combination to
determine whether the claim as a whole integrates the exception into a
practical application. See Guidance - Section III(A)(2), 84 Fed. Reg.
at 54–55; MPEP § 2106.04(d).
Appeal 2020-005015
Application 14/649,639

9

previously known to the industry, specified at a high level of generality, to
the judicial exception. MPEP § 2106.05(II); Guidance, 84 Fed. Reg. at 56.
Step One of the Mayo/Alice Framework
Under the first step of the Mayo/Alice framework and Step 2A, Prong
One of USPTO Guidance, the Examiner determines that independent
claim 10 recites broadly “a certain method of organizing human activity
because the steps, but for the additional elements, are steps that define
advertising real estate for sale” Final Act. 4. After considering the language
of the claim, the Examiner states the steps, “are a certain method of
organizing human activity because each step and element is a plan, however
precise, to show someone information about real estate.” Id. at 6.
According to the Examiner,
property listings are presented to a user, the user’s access is
restricted only if the user has created a user profile, and the user’s
viewing of the property files is tracked and reports are generated.
The claims therefore define the abstract idea of marketing
property, where the specific limitations define how marketing
information is shown and tracked.
Ans. 3–4; Final Act. 4–5. The Examiner makes similar findings regarding
independent claim 19. Ans. 5–6; see also Final Act. 7 (describing claim 19
as a similar variant of claim 10, i.e., “the steps are merely showing people
files and collecting information, and the files and information [are] explicitly
limited to real estate information.”). Under Prong Two of USPTO
Guidance, the Examiner determines that the identified judicial exception is
not integrated into a practical application because “the additional elements
are merely instructions to apply the abstract idea to a computer and
insignificant extra solution activity.” Final Act. 8.
Appeal 2020-005015
Application 14/649,639

10

In response, Appellant asserts that the subject matter of independent
claims 10 and 19 is not “conventional business practice[s] and involves not
just uploading of separate video files for a property listing, but the
organization of the video files to associate them with a particular property
listing so that a visitor may view the video files associated with that
particular property listing.” Appeal Br. 21–22. More particularly, Appellant
argues that claims 10 and 19 provide a claimed solution that
is necessarily rooted in computer technology in order to
overcome a problem specifically arising in the realm of computer
networks. Specifically, how to provide a property listing server
that can identify leads for a particular property listing based on a
number of video files they have viewed, and report to the
owner/agent the identity of the leads and their contact
information.
Id. at 22, 24.
Under the first step of the Mayo/Alice framework and Step 2A of the
USPTO Guidance, we first determine to what claims 10 and 19 are directed,
i.e., whether claims 10 and 19 recite an abstract idea and if so, whether
claims 10 and 19 are directed to that abstract idea. The Federal Circuit has
explained that “the ‘directed to’ inquiry applies a stage-one filter to claims,
considered in light of the specification, based on whether ‘their character as
a whole is directed to excluded subject matter.’” Enfish, LLC v. Microsoft
Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016) (quoting Internet Patents Corp.
v. Active Network, Inc., 790 F.3d 1343, 1346 (Fed. Cir. 2015)). It asks
whether the focus of the claim is on a specific improvement in relevant
technology or on a process that itself qualifies as an “abstract idea” for
which computers are invoked merely as a tool. See Enfish, 822 F.3d
at 1335–36. Here, it is clear from the Specification, including the claim
Appeal 2020-005015
Application 14/649,639

11

language, that claims 10 and 19 focus on an abstract idea, and not on any
improvement to technology and/or a technical field.
Reciting a Judicial Exception
In making this determination, we note that the Specification is titled
“SYSTEM AND METHOD FOR UPLOADING VIDEO FILES TO A
REAL ESTATE LISTING AND FOR REPORTING INTEREST LEVEL
IN A REAL ESTATE LISTING,” and is related generally “to a system and
method for uploading video files,” and more specifically, “to a property
video listing system.” Spec. ¶ 2. And, consistent with this disclosure,
independent claim 10 recites “[a] property video listing system” comprising
“an Internet-connected property listing server having a processor”
(limitation [a]). The system includes processes to “provide a website
displaying property listings and providing thumbnail photos”
(limitation [b]), restrict access, i.e., “only allow access,” “prompt the visitor
to register,” “when the visitor registers . . . allow access,” “require that a
registered visitor view the video file . . . before allowing the visitor to view
any of the other video files,” (limitations [c], [d], [e], [j]), analyze interest
information i.e., “track access by visitors,” “generate interest reports of
relative interest,” “identify a visitor as a lead,” (limitations [f], [g], [h]), and
“provide through the Internet the interest reports and the lead report to an
owner/agent” (limitation [i]). Claims App. 1. Independent claim 19
includes substantially similar limitations. Id. at 4–5.
When considered collectively and under the broadest reasonable
interpretation, independent claim 10, as summarized above, recites an
abstract idea of “advertising real estate for sale” based on a series of steps
for displaying property listings, providing restricted access, analyzing
Appeal 2020-005015
Application 14/649,639

12

interest information, and providing results of the analysis.7 This is an
abstract idea which may be characterized as a “[c]ertain method[] of
organizing human activity— . . . commercial or legal interactions (including
. . . advertising, marketing or sales activities or behaviors, business
relations).” Guidance, 84 Fed. Reg. at 52; MPEP § 2106.04(a)(2)(II). This
is consistent with the Examiner’s characterization. Final Act. 6; Ans. 3–4.
The courts have held similar concepts to be abstract. For example, the
Federal Circuit held abstract the concept of using advertising as a currency
on the Internet in Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 716 (Fed.
Cir. 2014), of providing restricted access to resources in Prism Technologies
LLC v. T-Mobile USA, Inc., 696 F. App’x 1014, 1017 (Fed. Cir. 2017), cert.
denied, 138 S. Ct. 689 (2018), and of collecting information, analyzing it,
and displaying certain results in Electric Power Group LLC v. Alstom S.A.,
830 F.3d 1350, 1351–54 (Fed. Cir. 2016) (Claim for detecting events by
receiving, detecting, analyzing, displaying, accumulating, and updating data,
and deriving a composite indicator from that data was directed to the
abstract idea of “collecting information, analyzing it, and displaying certain
results of the collection and analysis.”).
Having concluded that claims 10 and 19 recite a judicial exception,
i.e., an abstract idea, in determining whether claims 10 and 19 are directed to
this abstract idea, we next consider whether claims 10 and 19 recite

7 We note that a similar analysis applies to independent claim 19. We also
note that “[a]n abstract idea can generally be described at different levels of
abstraction.” Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1240 (Fed. Cir.
2016). The Board’s “slight revision of its abstract idea analysis does not
impact the patentability analysis.” Id. at 1241.
Appeal 2020-005015
Application 14/649,639

13

additional elements that integrate the judicial exception into a practical
application.
Integration into a Practical Application
We look to whether the claim “appl[ies], rel[ies] on, or use[s] 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,” i.e., “integrates a judicial exception
into a practical application.” Guidance, 84 Fed. Reg. at 54; MPEP
§ 2106.04(d). Here, the additional elements recited in claims 10 and 19, i.e.,
elements beyond the abstract idea, are the “Internet-connected property
listing server having a processor,” “website,” “link to a corresponding one of
a plurality of video files,” and “plurality of video files are stored on a video
hosting server in communication with the property listing server through the
Internet” –– elements that, as the Examiner observes (see Final Act. 8), are
“common computer elements.” See, e.g., Spec. ¶ 85 (“[S]erver 10 may
include a processor 100, an internet gateway 101, and a . . . medium 102,
such as random access memory accessible by processor 100 or . . . local
memory of a smart phone or tablet.”); see also id. (“These methods may be
implemented by software routines executed by any processor.”). The
Examiner also notes that in addition to the additional elements of an
Internet-connected property listing server, processor, and website, “storing
‘video files . . . on the video hosting server,’ and viewing video files ‘stored
on the video hosting server’ using a ‘visitor device’ is mere [i]nsignificant
[e]xtra-[s]olution [a]ctivity because it merely selects a particular data source
Appeal 2020-005015
Application 14/649,639

14

or type of data to be manipulated.” Final Act. 8. We agree with the
Examiner.
As is clear from the Specification, there is no indication that the
processes recited in claims 10 and 19 require any specialized computer
hardware or other inventive computer components, i.e., a particular machine,
invoke any asserted inventive programming, or that the claimed invention is
implemented using other than generic computer components to perform
generic computer functions. See DDR Holdings, LLC v. Hotels.com, L.P.,
773 F.3d 1245, 1256 (Fed. Cir. 2014) (“[A]fter Alice, there can remain no
doubt: recitation of generic computer limitations does not make an otherwise
ineligible claim patent-eligible.”); see also Spec. ¶¶ 85–88. Independent
claims 10 and 19, unlike the claims found non-abstract in prior cases, uses
generic computer technology to receive and analyze information for the
purpose of “uploading video files” (Spec. ¶ 2), and does not recite an
improvement to a particular computer technology. Cf. McRO, Inc. v. Bandai
Namco Games Am. Inc., 837 F.3d 1299, 1314–15 (Fed. Cir. 2016) (Finding
claims not abstract because they “focused on a specific asserted
improvement in computer animation.”).
Appellant argues that these additional elements provide “organization
of the video files to associate them with a particular property listing”
(Appeal Br. 21), and as such, “overcome a problem specifically arising in
the realm of computer networks” related to “provid[ing] a property listing
server that can identify leads . . . and report to the owner/agent the identity
of the leads.” Id. at 22. Appellant further argues that the present invention
also overcomes the problem of “how to provide a property listing server that
can interact with a video hosting server and a visitor device over the Internet
Appeal 2020-005015
Application 14/649,639

15

such that the property listing server may” perform the subject matter recited
by independent claims 10 and 19. Id. at 21–25. Appellant also argues that
like the claims in DDR, the subject matter of claims 10 and 19 “serves to the
visitor a new, hybrid web page that merges content . . . associated with the
products . . . of the third-party merchant . . . with the stored ‘visually
perceptible elements’ (video files) from the identified host website.” Id.
at 23–24. We disagree.
In DDR Holdings, the Federal Circuit determined that the claims
addressed the problem of retaining website visitors who, if adhering to the
routine, conventional functioning of Internet hyperlink protocol, would be
transported instantly away from a host’s website after clicking on an
advertisement and activating a hyperlink. DDR Holdings, 773 F.3d at 1257.
The Federal Circuit, thus, held that the claims were directed to patent-
eligible subject matter because they claim a solution “necessarily rooted in
computer technology in order to overcome a problem specifically arising in
the realm of computer networks.” Id. The court cautioned that “not all
claims purporting to address Internet-centric challenges are eligible for
patent.” Id. at 1258. And the court contrasted the claims to those at issue in
Ultramercial, Inc., in that, in DDR Holdings, the computer network was not
operating in its “normal, expected manner” and the claims did not “recite an
invention that is . . . merely the routine or conventional use of the Internet.”
Id. at 1258–59.
Appellant’s arguments describe organization of the files and, in
addressing the problem, describe identification and reporting of leads based
on the number of video files a user has viewed, which involves tracking user
activity. However, the Federal Circuit has found organizing and
Appeal 2020-005015
Application 14/649,639

16

manipulating information through mathematical correlations as well as
collecting information, analyzing it, and displaying certain results of the
collection and analysis to be abstract. See Digitech Image Techs., LLC v
Elecs. for Imaging, Inc., 758 F.3d 1344, 1350 (Fed. Cir. 2014) (“[C]laims an
abstract idea because it describes a process of organizing information
through mathematical correlations”); Elec. Power, 830 F.3d at 1353–54
(“[C]ollecting information, analyzing it, and displaying certain results of the
collection and analysis.”); and Intellectual Ventures I LLC v. Captial One
Bank (USA), 792 F.3d 1363, 1367 (Fed. Cir. 2015) (holding that “tracking
financial transactions to determine whether they exceed a pre-set spending
limit (i.e., budgeting)” is an abstract idea that is “not meaningfully different
from the ideas found to be abstract in other cases . . . involving methods of
organizing human activity”). The systems of claims 10 and 11 merely apply
a judicial exception using generic computers to the particular technological
environment of the Internet. “An abstract idea on ‘an Internet computer
network’ or on a generic computer is still an abstract idea.” See BASCOM
Glob. Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341, 1348
(Fed. Cir. 2016) (citing Intellectual Ventures I, 792 F.3d at 1368 n.2
(collecting cases)).
Appellant further argues that claims 10 and 19 are not similar to that
of Ultramercial because they “recite[] a significant amount of interaction
between a property listing server, a video hosting server, and a visitor device
whereas the claims in Ultramercial do not recite any such interaction
between computers.” Appeal Br. 23, 25.
However, we agree with the Examiner that the claims are analogous to
Ultramercial because “both are delivering video content in exchange for an
Appeal 2020-005015
Application 14/649,639

17

act.” Ans. 5. The ineligible claims in Ultramercial recited “distribution of
products over the Internet via a facilitator,” “receiving, from a content
provider, media products,” “providing the media product for sale at an
Internet website,” “restricting general public access to said media product,”
“offering to a consumer access to the media product,” “receiving from the
consumer a request,” and “recording the transaction event to the activity
log.” Ultramercial, 772 F.3d at 712. In a similar manner, claim 10 calls for
distribution of product information over the Internet via a property listing
server (limitations [a]–[b] include receiving information, videos, from sellers
and providing listings at an Internet website), restricting public access and
offering consumer access (limitations [c]–[e], [j] include receiving
information from a person), and recording events to an activity log
(limitations [f]–[i]). Claim 19 calls for substantially similar subject matter.
Consequently, we are not persuaded by Appellant’s argument that claims 10
and 19 are dissimilar to the claims held patent ineligible in Ultramercial.
Thus, we are not persuaded of error in the Examiner’s determination
that the additional elements of claims 10 and 19 do not integrate the judicial
exception into a practical application, as the term is used in USPTO
Guidance, and we are not persuaded of error in the Examiner’s
determination that claims 10 and 19 are directed to an abstract idea.
Step Two of the Mayo/Alice Framework
Under the second step in the Alice framework and USTPO Guidance
Step 2B, we “[e]valuat[e] additional elements to determine whether they
amount to an inventive concept [which] requires considering them both
individually and in combination to ensure that they amount to significantly
more than the judicial exception itself.” MPEP § 2106.05(I). Here, the
Appeal 2020-005015
Application 14/649,639

18

Examiner determines that claims 10 and 19 “do not include additional
elements that are sufficient to amount to significantly more than the judicial
exception because . . . several of the elements are merely instructions to
apply an abstract idea to a computer.” Final Act. 10 (citing MPEP
§ 2106.05(f)). The Examiner further states that the “video files, uploading
‘all’ the video files, and the steps surrounding ‘unique’ URLs to video files”
are insignificant extra solution activity, as well as “well-understood, routine,
and conventional” because Appellant “has referred to You[T]ube as enabling
art and You[T]ube is well-understood, routine, and conventional.” Id.; see
also Spec. ¶ 32 (“[S]erver 10 interacts with video hosting servers 40 such as
those provided by YouTube®. Server 10 may also interact with other third
party components 60 such as third party listing sites (such as the agent’s own
listing site, other listing sites (Zillow.com®, Trulia®, Craigslist®, etc.).”).
Thus, the Examiner concludes that the claimed steps of “storing, providing,
hosting, receiving, and displaying data, in combination with devices and
servers, are well-understood, routine, and conventional.” Final Act. 11.
We agree with the Examiner that the additional elements of claims 10
and 19 “are well-understood, routine, and conventional and are mere
instructions to apply the abstract idea to a computer, and therefore are not
significantly more than the abstract idea.” Final Act. 12. We also agree
with the Examiner’s determination that the limitations of claims 10 and 19,
taken individually, or as an ordered combination, do not amount to
significantly more than the judicial exception. See id. 10–12. We agree
with and adopt the Examiner’s determination. Appellant provides no
argument regarding this determination. See generally Appeal Br. 11–25;
Reply Br. 2–4.
Appeal 2020-005015
Application 14/649,639

19

We are not persuaded, on the present record, that the Examiner erred
in rejecting independent claims 10 and 19 under 35 U.S.C. § 101.
Therefore, we sustain the Examiner’s rejection of independent claims 10 and
19, and claims 15–17, and 20, which were not argued separately.

Obviousness
Independent claims 1, 10, and 19, and dependent claims 2–6, 8, 9,
15–17, and 20–22
Independent claim 1 and dependent claims 2–5 and 9
We are persuaded by Appellant’s argument that the Examiner erred in
rejecting independent claim 1 under 35 U.S.C. § 103(a) because the
combination of Sterner and Wohlstadter fails to disclose or suggest
limitation [e] of claim 1, which recites
after uploading all of the received video files to the video hosting
server, said property listing server is further configured to receive
a response from the video hosting server including a unique URL
for each uploaded video file identifying the storage location on
the video hosting server of the video file.
Appeal Br. 25–28 (emphases omitted).
The Examiner maintains the rejection is proper, and cites Sterner, at
paragraphs 63–65, as disclosing the argued limitation. See Final Act. 18–19;
Ans. 6–7.
Sterner is directed to a system for online video-based property
commerce that includes “a video server in operative communication with
[an] application server and configured to serve a set of video information
indexable by a set of video identifiers.” Sterner ¶ 13. Sterner discloses that
application server 110 may be configured to handle various
applications, including a Video Editing Environment (VEE) 116
Appeal 2020-005015
Application 14/649,639

20

and/or a Video Playback Environment (VPE) 118. These
programs may be stored on the application server 110, runnable
(able to be executed, performed, effectuated, etc.) by the
application server 110, or handled by the application server 110
in some other useful way.
Id. ¶ 74. In Sterner, “[u]sing information from the upload form . . . the
method 340 may then upload the video file 346,” and “during uploading
346, the method 340 may also create one or more video identifiers (e.g. a
unique video identification number).” Id. ¶ 120. To access a video file,
Sterner discloses that “a command may be sent to the video server 112 with
an identifier (e.g. retrieve (‘VID__0001’)), the identifier being a unique file
name or other identifier of a video file or set of video files.” Id. ¶ 64.
Sterner further discloses that
to access a video file 113, a command may be sent to the video
server 112 with a video file identifier. Say the command,
“RETRIEVE (‘VID__0001’)”, is used to retrieve a video file
identified as “VID__0001” from the video server 112. When the
video server 112 receives the “RETRIEVE” command, a
relational database may be queried to find an entry for
“VID__0001”. This entry may be stored in relation to a list of
URL and FTP destinations. The video server 112 may then use
various algorithms to select a download location and download
the file.
Id. ¶ 65.
We have reviewed the cited portions of Sterner and agree with
Appellant that the cited portions of Sterner fail to disclose or suggest
limitation [e] of independent claim 1. The Examiner states that “[b]ecause
the video is communicated (served) from the video server to the application
server, if it has a URL, this is also transmitted along with the video file.
Therefore, Sterner teaches the elements Appellant recites: a response is
Appeal 2020-005015
Application 14/649,639

21

received that includes a unique URL.” Ans. 7. However, we disagree that a
video communicated to the application server in Sterner also includes a
URL.
Instead, we agree with Appellant that the “command as described in
Sterner is not a URL of the video file. The application never needs to have
any URL of the video file. The video server may ‘serve’ the video file to the
application server by retrieving it and sending the file to the application
server.” Reply Br. 4. As disclosed in Sterner, “[t]he video server 112 may
then use various algorithms to select a download location and download the
file.” Sterner ¶ 65. Because the video files are downloaded in response to a
command to access a video file, including a URL in the response is not
needed. Thus, we agree with Appellant that “there is no disclosure that the
property listing server receives a response from the video hosting server
including a unique URL for each uploaded video file identifying the storage
location on the video hosting server of the video file.” Appeal Br. 26.
In view of the foregoing, we do not sustain the Examiner’s rejection
of independent claim 1 under 35 U.S.C. § 103(a). For the same reasons, we
also do not sustain the Examiner’s rejection of claims 2–5 and 9, which
depend therefrom.

Dependent claim 6
Claim 6 ultimately depends from claim 1, and thus, incorporates
limitation [e] recited in independent claim 1. The Examiner’s rejection with
respect to Rhoads, in combination with Sterner and Wohlstadter as applied
to claims 1 and 5, does not cure the above-discussed shortcomings of Sterner
and Wohlstadter identified by Appellant. Thus, we do not sustain the
Appeal 2020-005015
Application 14/649,639

22

Examiner’s rejection of dependent claim 6 under 35 U.S.C. § 103(a) for the
same reasons set forth above with respect to independent claim 1.

Dependent claim 8
Claim 8 depends directly from claim 1, and thus, incorporates
limitation [e] recited in independent claim 1. The Examiner’s rejection with
respect to Puttick, in combination with Sterner and Wohlstadter as applied to
claim 1, does not cure the above-discussed shortcomings of Sterner and
Wohlstadter identified by Appellant. Thus, we do not sustain the
Examiner’s rejection of dependent claim 8 under 35 U.S.C. § 103(a) for the
same reasons set forth above with respect to independent claim 1.

Independent claims 10 and 19, and dependent claims 15–17 and 20
We are not persuaded of error by Appellant’s argument that the
combination of Sterner and McCarthy fails to disclose or suggest
limitation [j], as recited by independent claim 10, and similarly recited by
independent claim 19. Appeal Br. 31–34; Reply Br. 5. Instead, we agree
with the Examiner that the combination of Sterner and McCarthy discloses
the argued limitation. See Final Act. 26–30 (citing Sterner ¶¶ 193–195,
313); Ans. 7.
In addition to the description of Sterner provided above, Sterner
discloses
after providing a login name and password, an authentication
server may check the login information against a database to
determine certain authorization-related attributes associated with
that client. These authorization attributes [m]ay include, for
example, files to which the client has access, whether the client
Appeal 2020-005015
Application 14/649,639

23

has editing (e.g. read, write, modify, delete, etc.) permissions on
those files, or any other attributes useful to determining level or
type of access.
Sterner ¶ 90. More particularly, Sterner discloses that “[i]f the client is
determined to be a viewer 206-2, the method 200 may set certain viewer
permissions 220. These permissions may allow or deny access to certain
applications, files, controls, fields, menus, etc.” Id. ¶ 95. Sterner describes
login information may be requested 202 for various purposes,
and that different types of information may be useful for these
different purposes. In certain embodiments, for example, the
login information may be used to determine which clients are
logging in and how often, or which files or applications are
accessed by those clients most often. In other embodiments, the
information may be used to provide or limit access to all or part
of various environments.
Id. ¶ 91.
Sterner also discloses a “video generator . . . may be able to access
required or desired information from various locations . . . video information
may be accessed . . . from one or more video servers 1330, and cue point
information may be accessed . . . from one or more cue point servers.”
Sterner ¶ 254. Sterner discloses that
the montage video file may be generated 1408 as a video file in
a playable format. For example, the generated montage video
file may comprise a concatenation of video data from other video
files. After (or while) the montage video file is generated 1408,
the method 1400 may transmit the montage video file and any
associated cue point information to a video playback application
or system 1410.
Id. ¶ 263. In this regard, Sterner describes an embodiment in which “after
viewing a portion of a montage video file, a particular client may click
through to the full source video” and “[f]rom this type of activity, the
Appeal 2020-005015
Application 14/649,639

24

method 2000 may infer that the client likes that particular house exterior.”
Id. ¶ 313. Sterner also describes that in some embodiments, “the cue points
may load progressively along with the montage video data. In some cases,
cue points may become active (e.g. available for interaction) only after their
respective video data loads.” Id. ¶ 325. Sterner discloses that “[p]rogressive
loading of video files, for example, allows the video frame to begin playing
the portion of video data which has already loaded while the remainder of
video data continues to load.” Id. ¶ 104. Sterner also discloses that “cue
point buttons may load progressively along with the video data, so that cue
points become visible or active only after all or part of their respective
portion of the video data has loaded.” Id. ¶ 107.
Appellant asserts that the combination of Sterner and McCarthy fails
to disclose or suggest “wherein said property listing server is configured to
require that a registered visitor view the video file that has the summary
feature designation before allowing the visitor to view any of the other video
files for a property listing,” as recited by limitation [j] of independent
claim 10, and similarly recited by independent claim 19. Appeal Br. 31–34.
More particularly, Appellant argues that “[t]here is nothing in [the Examiner
cited] paragraphs that limits access within a particular video file to certain
parts of a video associated with a property listing.” Id. at 33 (emphases
omitted).
However, we disagree with Appellant that “even though a visitor may
choose to conduct a search and then view a montage video, Sterner does not
disclose that the visitor may not directly go to any particular property listing
to view the entire video for that property.” Appeal Br. 33; Reply Br. 5.
Instead, we agree with the Examiner that “a client having to view the
Appeal 2020-005015
Application 14/649,639

25

montage video before being able to click through teaches a requirement to
watch the summary designation video before watching other video files.”
Ans. 7. We note that Sterner describes “the cue point control area 1170 lists
five cue points 1172, three of which are active (1172-1, 1172-2, and 1172-3)
and two of which are inactive (1172-4 and 1172-5).” Sterner ¶ 235. We
also note that Sterner discloses that cue points may load progressively along
with the montage video data and become active (e.g., available for
interaction) only after their respective video data loads as discussed above
(see Sterner ¶ 325). Thus, one of ordinary skill in the art would recognize
that Sterner discloses an embodiment in which, in viewing a montage video,
the client is required to view the montage video before being able to click
through to subsequent videos.
We also are not persuaded by Appellant’s argument that Sterner’s
“[r]eference to ‘files’ in paragraphs [0193]-[0195] does not specifically refer
to video files and even if it did . . . if a client has access to a video file, they
have access to the entire video file with all of its cue points.” Appeal Br. 33.
Sterner describes “it may be desirable to open access to the VPE, but limit
access to certain files.” Sterner ¶ 193. Sterner discloses that “listed video
files 1652 each relate to a cue point with a name which exactly matches the
criteria passed with the build command 1640 (i.e. ‘Exterior’).” Id. ¶ 272.
Sterner describes “different portions of the video may load from different
servers” (id. ¶ 104) and “[v]ideo data may be loaded 812 in any useful way
and from any source where video data may be located.” Id. ¶ 195.
As discussed above, Sterner’s system provides authorizations and
permissions, and as such, one of ordinary skill would recognize that Sterner
describes flexibility with respect to setting permissions, including those for
Appeal 2020-005015
Application 14/649,639

26

accessing files and controls, for various purposes. Thus, we agree with the
Examiner that the combination of Sterner and McCarthy renders
limitation [j] obvious.
In view of the foregoing, we sustain the Examiner’s rejection of
independent claims 10 and 19. We also sustain the rejection of claims 15–
17 and 20, which depend from independent claims 10 and 19, respectively,
because Appellant has not argued the separate patentability of these claims.

Claims 21 and 22
Claim 21 depends from independent claim 19, and recites, inter alia,
that “said property listing server is further configured to receive a response
from the video hosting server including a unique URL for each uploaded
video file identifying the storage location on the video hosting server of the
video file.” Claim 22 depends from independent claim 10 and recites the
same limitation.
Appellant argues that dependent claims 21 and 22 are allowable for
the reasons stated above with respect to claim 1. Appeal Br. 34. We are
persuaded, for the reasons set forth above, that the Examiner erred in
rejecting claim 1 under 35 U.S.C. § 103(a). Therefore, we do not sustain the
Examiner’s rejection of dependent claims 21 and 22.
Appeal 2020-005015
Application 14/649,639

27

CONCLUSION
In summary:
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
10, 15–17,
19, 20
101 Eligibility 10, 15–17,
19, 20

1–5, 9 103 Sterner, Wohlstadter 1–5, 9
6 103 Sterner, Wohlstadter,
Rhoads
6
8 103 Sterner, Wohlstadter,
Puttick
8
10, 15–17,
19, 20
103 Sterner, McCarthy 10, 15–17,
19, 20

21, 22 103 Sterner, McCarthy,
Wohlstadter
21, 22
Overall
Outcome
10, 15–17,
19, 20
1–6, 8, 9, 21,
22

Appeal 2020-005015
Application 14/649,639

28

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

AFFIRMED IN PART