William A. Nazaret

Patent Trials and Appeals Board

Apr 13, 2020

13464408 - (D) (P.T.A.B. Apr. 13, 2020)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/464,408 05/04/2012 William A. NAZARET NAZ2012001US1 5896
62047 7590 04/13/2020
PATENTS ON DEMAND, P.A.-General
4581 WESTON ROAD
SUITE 345
WESTON, FL 33331
EXAMINER
GREGG, MARY M
ART UNIT PAPER NUMBER
3697
NOTIFICATION DATE DELIVERY MODE
04/13/2020 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):
brian.buchheit@patentsondemand.com
docketing1@patentsondemand.com
docketing2@patentsondemand.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte WILLIAM A. NAZARET
____________________

Appeal 2018-007401
Application 13/464,408
Technology Center 3600
____________________

Before ALLEN R. MacDONALD, JASON V. MORGAN, and
ADAM J. PYONIN, Administrative Patent Judges.

MacDONALD, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant appeals from the
Examiner’s decision to reject claims 1, 4, 11–14, 17–23, and 26–34. We
have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM.
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CLAIMED SUBJECT MATTER
Claim 1 is illustrative of the claimed subject matter (emphasis,
formatting, and bracketed material added):
1. A system for providing web content over the Internet
to a user terminal, said system comprising:
[A.] a proxy server, comprising a non-transitory storage
medium storing program instructions of a content tagging
module, wherein the program instructions are executed by
hardware of the proxy server, wherein the proxy server is remote
from and is communicatively linked to the user terminal through
an access network, wherein a network access provider charges
for traffic conveyed over the access network to the user
terminal on a usage basis, wherein the proxy server is remote
from and is communicatively linked to a content server through
an internet; wherein execution of the program instructions of the
content tagging module causes the hardware of the proxy server
to:
[i.] receive, at the proxy server over the access
network, a user request from the user terminal directed to
the content server;
[ii.] convey the user request from the proxy server
over an internet to the content server;
[iii.] receive, at the proxy server over the internet,
contents from the content server in response to the user
request;
[iv.] examine, at the proxy server, the contents
from the content server before the contents are conveyed
from the proxy server to the user terminal;
[v.] create, at the proxy server, at least a new tag
for the contents, wherein the new tag comprises
sufficient information to calculate an amount to be
charged by the access network provider for conveying the
contents over the access network to the user terminal,
wherein the amount varies by specifics of the contents
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including an amount of data corresponding to the
contents;
[vi.] send the new tag to the user terminal
indicating a cost to be incurred for delivering the
contents over the access network; and
[vii.] in response to receiving an acceptance of the
cost from the user terminal, the proxy server conveying at
least an accepted portion of the contents to the user
terminal over the access network, wherein a billing
member that charges fees for usage by the user terminal of
the access network charges a fee consistent with the
indicated cost for delivery of the contents over the access
network from the proxy server to the user terminal,
wherein in absence of receiving the acceptance from the
user terminal, the proxy server does not convey the
accepted portion of the contents to the user terminal over
the access network and the indicated cost is not incurred.
Appeal Br. 51–52 (Claims App.).
REFERENCES1
The Examiner relies on the following references:
Name Reference Date
Doyle US 2002/0099807 A1 July 25, 2002
Blott US 2004/0044622 A1 Mar. 4, 2004
Persson US 2011/0125833 A1 May 26, 2011

1 All citations herein to patent and pre-grant publication references are by
reference to the first named inventor only.
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REJECTION2
A.
The Examiner rejects claims 1, 4, 11–14, 17–23, and 26–34 under
35 U.S.C. § 101 “because the claimed invention is directed to a judicial
exception . . . without significantly more” (Final Act. 25 (emphasis
omitted)), i.e., the claimed invention is directed to patent-ineligible subject
matter. Final Act. 25–47.
Separate patentability, in compliance with 37 C.F.R. § 41.37(c)(iv), is
not argued for claims 4, 11–14, 17–23, and 26–34 (“Under each heading
identifying the ground of rejection being contested, any claim(s) argued
separately or as a subgroup shall be argued under a separate subheading that
identifies the claim(s) by number.”).3 Therefore, we select independent
claim 1 as representative. Except for our ultimate decision, we do not
discuss the merits of the § 101 rejection of claims 4, 11–14, 17–23, and 26–
34 further herein.
B.
The Examiner rejects claims 1, 4, 11–13, 26, and 28 under 35 U.S.C.
§ 103 as being unpatentable over the combination of Persson, Doyle, and
Blott. Final Act. 47–58. We select claim 1 as the representative claim for
this rejection. The contentions discussed herein as to claim 1 are
determinative as to this rejection.

2 All citations to the “Final Act.” are to the Final Action mailed on June 15,
2017.
3 Appellant’s arguments as to claims 4, 12, 17, 21, 22, 27, and 31–34,
(spanning Appeal Brief pages 15 and 21–23) do not comply with the rule
and have not been considered.
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The Examiner rejects claims 14, 17–23, 27, and 29–34 under
35 U.S.C. § 103 as being unpatentable over various combinations of
Persson, Doyle, Blott, and numerous other references. Final Act. 58–82.
The contentions discussed herein as to claim 1 are determinative as to these
rejections.
Therefore, except for our ultimate decision, we do not address the
merits of the § 103 rejection of claims 4, 11–13, 26, and 28 further herein.

OPINION
We have reviewed the Examiner’s rejections in light of Appellant’s
arguments that the Examiner has erred. We concur with the conclusions
reached by the Examiner. We highlight the following points.
A. Section 101
An invention is patent-eligible if it claims a “new and useful process,
machine, manufacture, or composition of matter.” 35 U.S.C. § 101.
However, the U.S. Supreme Court has long interpreted 35 U.S.C. § 101 to
include implicit exceptions: “[l]aws of nature, natural phenomena, and
abstract ideas” are not patentable. E.g., Alice Corp. 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.
Id. 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
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risk.”); see also Bilski v. Kappos, 561 U.S. 593, 611 (2010) (“Claims 1 and 4
in petitioners’ application explain the basic concept of hedging, or protecting
against risk.”).
Concepts determined to be abstract ideas, and thus patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219–20; Bilski, 561 U.S. at 611);
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594–95 (1978)); and
mental processes (Gottschalk v. Benson, 409 U.S. 63, 67 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as “molding rubber products” (Diamond v. Diehr, 450 U.S. 175, 191
(1981)); “tanning, dyeing, making waterproof 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
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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 part
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). “A claim that recites an
abstract idea must include ‘additional features’ to ensure ‘that the [claim] is
more than a drafting effort designed to monopolize the [abstract idea].’” Id.
(alterations in original) (quoting Mayo, 566 U.S. at 77). “[M]erely
requir[ing] generic computer implementation[] fail[s] to transform that
abstract idea into a patent-eligible invention.” Id.
B. USPTO § 101 Guidance
In January 2019, the U.S. Patent and Trademark Office (USPTO)
published revised guidance on the application of § 101. See 2019 Revised
Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019)
(“2019 Revised Guidance”).4 “All USPTO personnel are, as a matter of
internal agency management, expected to follow the guidance.” Id. at 51;
see also October 2019 Update at 1.
Under the 2019 Revised Guidance and the October 2019 Update, we
first look to whether the claim recites:

4 In response to received public comments, the Office issued further
guidance on October 17, 2019, clarifying the 2019 Revised Guidance.
USPTO, October 2019 Update: Subject Matter Eligibility (the “October
2019 Update”) (available at https://www.uspto.gov/sites/default/files/
documents/peg_oct_2019_update.pdf).
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(1) any judicial exceptions, including certain groupings of abstract
ideas (i.e., mathematical concepts, certain methods of organizing
human activity such as a fundamental economic practice, or mental
processes) (“Step 2A, Prong One”); and
(2) additional elements that integrate the judicial exception into a
practical application (see MPEP § 2106.05(a)–(c), (e)–(h) (9th ed.
Rev. 08.2017, Jan. 2018)) (“Step 2A, Prong Two”).5
2019 Revised Guidance, 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 look, under
Step 2B, to whether the claim:
(3) adds a specific limitation beyond the judicial exception that is not
“well-understood, routine, conventional” in the field (see MPEP
§ 2106.05(d)); or
(4) simply appends well-understood, routine, conventional activities
previously known to the industry, specified at a high level of
generality, to the judicial exception.
2019 Revised Guidance, 84 Fed. Reg. at 52–56.

5 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 2019 Revised Guidance – Section III(A)(2), 84
Fed. Reg. 54–55.
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C. Examiner’s § 101 Rejection - Alice/Mayo - Parts 1 and 2
C.1. 2019 Revised Guidance Step 2A – Prong One
Applying the Alice/Mayo analysis, the Examiner determines that
claim 1 recites an abstract idea:
Claim(s) 1 is directed to concepts related performance of
Economic Relationships and Transactions found to be an abstract
idea by the courts (e.g.[,] Sales Transactions (PricePlay[6]);
assigning prices to products and services (Money Suite[7])[)].
Final Act. 25–26.
[T]he abstract elements are directed toward pricing a transaction
based on a user request, where the user is requested to accept the
price and if accepted then the user is billed. The combination of
elements are directed toward the abstract concept of providing
access to content when a user accepts a calculated cost for
content access[,] (i.e[.,] a transaction).
Final Act. 28.
C.2. 2019 Revised Guidance Step 2A – Prong Two
Further applying the Alice/Mayo analysis, the Examiner determines
claim 1 is directed to an abstract idea, i.e., determines whether the claim
evaluated as a whole integrates the judicial exception into a practical
application of that exception.
The addition of limitations that narrow the idea, such as . . . the
proxy server over the access network. . . from the user terminal
directed to the content server . . . ; . . . from the proxy server over
an internet to the content server . . . ; . . . at the proxy server over
the internet . . . from the content server . . . ; . . . at the proxy
server . . . from the content server before the contents are

6 Priceplay.com, Inc. v. AOL Advert., Inc., 83 F. Supp. 3d 577 (D. Del.
2015), aff’d, 627 F. App’x 925 (Fed. Cir. 2016).
7 Money Suite Co. v. 21st Century Ins. & Fin. Servs., Inc., No. CV 13-1747-
GMS, 2015 WL 436160 (D. Del. 2015).
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conveyed from the proxy server to the user terminal . . . ; create,
at the proxy server . . .; . . . to the user terminal . . . ; and . . . from
the user terminal, the proxy server . . . to the user terminal over
the access network, wherein a billing member (40) that charges
fees for usage by the user terminal of the access network . . . over
the access network from the proxy server to the user terminal, . . .
the proxy server . . . to the user terminal over the access network
. . . further describe the abstract idea, but do not make it less
abstract.
Final Act. 26–27 (emphasis omitted).
The additional elements recited in the claims beyond the abstract
content identified above include a proxy server comprising a
non-transitory storage medium storing program instructions of a
content tagging module, wherein the program instructions are
executed by hardware of the proxy server recited at a high level
of generality to simply perform the generic computer functions
of . . . ; the content tagging module recited at a high level of
generality to tag content; a network access provider recited at a
high level of generality to perform simple generic function of
providing access to data via a network; an access network recited
at a high level of generality to perform simple functions of data
transfer; a user terminal recited at a high level of generality to
perform simple function of . . . . The Internet limitation is simply
a field of use and does not add a meaningful limit on the abstract
idea.
Final Act. 28.
Viewing the combination of abstract elements and additional
elements as a combination or ordered combination does not add
anything further than the individual elements. The combination
merely limit an otherwise abstract idea to a particular
technological environment or field of use. While the claims
require a “proxy server and other tangible components, claimed
limitations and the specification makes clear that the recited
physical components merely provide a generic environment in
which to carry out the abstract idea of calculating cost for content
access for a user to accept/deny based on a user request for
content and then billing for cost if accept. . . . Therefore, the
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claimed limitations are not directed to a specific improvement to
computer functionality. . . . This is because the combination or
ordered combination of elements are not sufficient to amount to
significantly more than the judicial exception because the claims
do not provide improvements to another technology or technical
field, improvements to the functioning of the computer itself, and
do not provide meaningful limitations beyond general linking the
use of an abstract idea to a particular technological environment.
. . . The claimed limitations fail to add unconventional steps that
confine the claim to a particular useful application. Otherwise
abstract claims cannot be transformed into patent eligible subject
matter by limiting their applications to fields such as data content
deliver (see also real estate (data distribution[8]); telephony
(Comcast[9]); IT help desks (Hewlett Packard[10]). The claimed
limitations simply generally link the use of the judicial exception
to a particular technological environment.
Final Act. 29–30.
C.3. 2019 Revised Guidance Step 2B
Applying the Alice/Mayo analysis, the Examiner determines:
[The functions] are routine, conventional server activities well
known in the industry. Nothing in the claims or specification
provides any detail about how the proxy server functions are
performed beyond basic conventional functions, therefore one
may presume those functions can be performed by any generic
servers with conventional programming.
Final Act. 28–29.

8 Data Distribution Techs., LLC v. BRER Affiliates, Inc., No. CIV. 12-4878
JBS/KMW, 2014 WL 4162765 (D.N.J. 2014).
9 Comcast IP Holdings I, LLC v. Sprint Commc’ns Co. L.P., 55 F. Supp. 3d
544, 548 (D. Del. 2014).
10 Hewlett Packard Co. v. ServiceNow, Inc., No. 14-CV-00570-BLF, 2015
WL 1133244 (N.D. Cal. 2015).
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The claimed limitations further fail to include limitations other
what is well[-]understood, routine and convention in the field
with respect to the use of proxy server technology.
Final Act. 30.
D. Panel’s § 101 Analysis & Appellant’s Arguments
D.1. 2019 Revised Guidance Step 2A, Prong 1
D.1.a.
The Examiner correctly determines that claim 1 recites “the abstract
concept of providing access to content when a user accepts a calculated cost
for content access” (Final Act. 28) including the following limitations (see
Final Act. 26–27):
A system for providing web content . . . comprising:
[A.] . . . wherein a network access provider charges for
traffic conveyed . . . on a usage basis, wherein
execution of the programing instructions . . . causes the
[system] to:
[i.] receive . . . a user request . . . ;
[ii.] convey the user request . . . ;
[iii.] receive . . . contents . . . in response to the user
request;
[iv.] examine . . . the contents . . . ;
[v.] create . . . at least a new tag for the contents,
wherein the new tag comprises sufficient
information to calculate an amount to be
charged by the access network provider for
conveying the contents . . . , wherein the amount
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varies by specifics of the contents including an
amount of data corresponding to the contents;
[vi.] send the new tag . . . indicating a cost to be
incurred for delivering the contents . . . ; and
[vii.] in response to receiving an acceptance of the
cost . . . conveying at least an accepted portion
of the contents . . . , wherein . . . charges a fee
consistent with the indicated cost for delivery of
the contents . . . , wherein in absence of
receiving the acceptance . . . does not convey the
accepted portion of the contents . . . and the
indicated cost is not incurred.
Claim 1 (formatting and bracketed material added).
D.1.b.
Appellant also contends the abstract idea purported is improperly
vague and broad and does not capture what the claims as pending are
directed to (Appeal Br. 13–14), and the action does not consistently state a
purported abstract idea (Appeal Br. 14–15).
Appellant’s arguments are not persuasive. The foundation of
Appellant’s arguments is that the Examiner’s analysis is structured as plural
asserted abstract ideas. We determine that Appellant’s foundation is
ill-conceived. We conclude that the Examiner reasonably categorizes
Appellant’s claim 1 as performance of an economic relationship and
transaction. Final Act. 25–26. The Examiner then sets forth further analysis
to support that determination. Final Act. 26–28. Contrary to Appellant’s
assertions, the Examiner does not set forth plural, conflicting abstract ideas.
D.1.c.
We conclude the Examiner correctly determines that claim 1 recites
processing directed to the idea of providing access to content when a user
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accepts a calculated cost for content access (i.e., commercial interaction);
and a commercial interaction is one of certain methods of organizing
human activity identified in the 2019 Revised Guidance, and thus an abstract
idea. 2019 Revised Guidance, 84 Fed. Reg. at 52.

D.2. 2019 Revised Guidance Step 2A, Prong 2
D.2.a.
Having determined that claim 1 recites an abstract idea, we now turn
to whether claim 1 is directed to that abstract idea, or instead integrates the
judicial exception into a practical application.
D.2.b.i.
Appellant contends:
[T]he disclosure solves a previously unsolved problem of users
being charged for data conveyances over the internet (per a pay-
per-usage data plan) without these users being informed of the
relevant charges (so as to make a determination of cost verses
benefit), which results in high usage costs for many users.
Appeal Br. 11 (emphasis added).
A conventional proxy server is not known to be used as a
“staging node” before an access network for requested content.
It is generally unfeasible for a content server to access an
individual mobile subscribers’ billing plan, and convening this
information to content servers would represent a breach of
confidential information (of the subscriber). In other words, our
solution balances a user’s privacy concerns with cost concerns
in a novel manner using a novel improvement dependent on a
proxy server to resolve a problem not know to have a solution
outside of our disclosure.
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Thus, the user’s pending claims are rooted in a specific
infrastructure (per Cyberphone[11] [sic]) due to the needed
relationship between the proxy server, the access network, and
the content server. Further, per Enfish[12], the pending claims
focus of the claims is on the specific asserted improvement in
computer and telecommunication capabilities, which require a
proxy server (having access to access network billing) and
having access to a content server (before content is conveyed
over an access network). The specific problem only arises in a
technology setting and the claimed solution is particularized
improvement in this infrastructure to handle a specific problem
(which does not occur outside this technology structure).
Appeal Br. 12 (emphasis added).
This consideration has also been referred to as the search for a
technological solution to a technological problem. See Amdocs (Isr.), Ltd. v.
Openet Telecom, Inc., 841 F.3d 1288, 1300 (Fed. Cir. 2016) (“[T]his claim
entails an unconventional technological solution . . . to a technological
problem . . . .”). As discussed supra, we conclude that Appellant’s claim 1
is solving the problem of “providing access to content when a user accepts a
calculated cost for content access” which is a business problem and not a
technological problem. We do not agree with Appellant that “being charged
for data conveyances,” “without . . . being informed of the relevant charges,”
“high usage costs,” or “balanc[ing] . . . privacy concerns with cost concerns”
are either a “technological field” or a “technological problem” or a
“technological solution.” Rather, we determine that these are directed to the
field of business/commerce and its problems and solutions. Appellant’s
argument is not persuasive.

11 CyberFone Sys., LLC v. Lexmark Int’l, Inc., 137 F. Supp. 3d 648, 659 (D.
Del. 2015).
12 Enfish, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016).
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D.2.b.ii.
Appellant contends:
The Examiner asserts that receiving at a process server a user
request is “insignificant pre-solution activity” In context, this is
simply not true. Claim 1 is “initiated” by a request from a user
terminal to a proxy server. If a content server received the
request directly and responded, the content is conveyed over an
access network (and the user is charged). By using a proxy
positioned as claimed, the request can be handled before
delivery charges are incurred. This is not an “insignificant” pre-
solution activity, but is an initial required step of the claimed
innovation.
Appeal Br. 16 (emphasis added).
Appellant’s argument is not persuasive. Essentially, Appellant’s
argument asserts that requesting content, conveying content, and timing of
delivery charges can result in a non-abstract improvement to technology.
That is, Appellant is wrapping the insignificant activities (e.g., receive,
convey) of the proxy server with the novel business solution of improved
payment of delivery charges. This does not serve to make the insignificant
activities into significant activities.
Like the Examiner, we determine that limitations such as “as receive,
at the proxy server,” “convey . . . from the proxy server over an internet to
the content server,” and “receive, at the proxy server over the internet, . . .
from the content server” are insignificant pre-solution activity (Final Act.
26 (emphasis modified)) or “merely limit an otherwise abstract idea to a
particular technological environment or field of use” (Final Act. 29). The
focus of claim 1 is not on an improvement in computer-functionality, as in
Enfish, but on an abstract idea that uses a computer as a tool for providing
content and processing of a payment from the user. In Trading
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Technologies, the Federal Circuit agreed with the district court explanation
that:
The claims require a specific, structured graphical user interface
paired with a prescribed functionality directly related to the
graphical user interface’s structure that is addressed to and
resolves a specifically identified problem in the prior state of the
art.
Trading Techs. Int’l, Inc. v. CQG, INC., 675 F. App’x 1001, 1004 (Fed. Cir.
2017). In contrast, in Appellant’s claim 1, we find only abstract
improvements to providing content and processing of a payment from the
user. A claim directed to a unique and advantageous method for providing
content and processing of a payment from the user is nonetheless directed to
an abstract idea.13 “[U]nder the Mayo/Alice framework, a claim directed to a
newly discovered law of nature (or natural phenomenon or abstract idea)
cannot rely on the novelty of that discovery for the inventive concept
necessary for patent eligibility.” Genetic Techs. Ltd. v. Merial L.L.C., 818
F.3d 1369, 1376 (Fed. Cir. 2016); see Diehr, 450 U.S. at 188–89.
D.2.b.iii.
Appellant also contends:
Applicants claims directed to a proxy server rec[e]iving a user
request (to a content server) from a user terminal affects the

13 See Ultramercial, Inc. v. Hulu LLC, 772 F.3d. 709 (Fed. Cir. 2014). In
that case, the patentee argued that its financial arrangement (a method of
using advertising as an exchange or currency) was distinguishable from the
“routine,” “long prevalent,” or “conventional” abstract idea in Alice
because it was “directed to a specific method of advertising and content
distribution that was previously unknown.” Id. at 714. The court rejected
the patentee’s position that “abstract ideas remain patent-eligible under
§ 101 as long as they are new ideas, not previously well known, and not
routine activity.” Id.
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problem of pre-emption as it provides a structure not present in
Mayo.
Appeal Br. 16 (emphasis added).
Appellant’s “preemption” argument is not persuasive because
although “preemption may signal patent ineligible subject matter, the
absence of complete preemption does not demonstrate patent eligibility.”
Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir.
2015). We are instructed that “[w]here a patent’s claims are deemed only to
disclose patent ineligible subject matter under the [Alice/Mayo] framework
. . . , preemption concerns are fully addressed and made moot.” Id.
D.2.c.
We agree with the Examiner that claim 1, is directed to “providing
access to content when a user accepts a calculated cost for content access.”
Final Act. 28. In view of Appellant’s Specification, and consistent with the
Examiner’s determinations, we conclude that claim 1 does not integrate the
judicial exception into a practical application. We determine claim 1 does
not recite:
(i) an improvement to the functioning of a computer;
(ii) an improvement to another technology or technical field;
(iii) an application of the abstract idea with, or by use of, a
particular machine;
(iv) a transformation or reduction of a particular article to a
different state or thing; or
(v) other meaningful limitations beyond generally linking the
use of the abstract idea to a particular technological
environment.
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See MPEP §§ 2106.05(a)–(c), (e)–(h). We agree with the Examiner that
claim 1 is directed to a judicial exception, and does not integrate the judicial
exception into a practical application.

D.3. 2019 Revised Guidance Step 2B
D.3.a.
Appellant contends:
[I]t is evident that the claimed limitations are highly specific,
targeted at a specialized problem, require a very specific
infrastructure, and are “significantly more” than just “concepts
related to performance of Economic relationships and
Transactions”.
Appeal Br. 19.
The proxy server is not used conventionally. It intercepts data
requests (to a content server from a user terminal, retrieves
content (held in a data store and not sent over a network to the
requestor, receives delivery of all content from a content server
(whether ultimately delivered to a user terminal per user terminal
request or not), determines a cost by accessing a proprietary
billing system unique to the mobile device (user terminal) from
which a request was made (which isn’t accessible to the content
server), prompts a user with the delivery costs and asks if the user
wants delivery of the content (held at the proxy server) given the
cost (calculated from the access network delivery).
Appeal Br. 21 (emphasis added).
Appellant’s argument is not persuasive. Appellant acknowledges it is
known that:
Typically, a proxy server has a large variety of potential
purposes, including:
To keep customer terminals and other systems
anonymous, mainly for security purposes;
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To speed up access to resources (using caching –
Web proxies are commonly used to “cache” web
pages from a content server);
To apply access policy to network services or
content (e.g., to block undesired sites);
To access sites prohibited or filtered by your ISP or
other institutions to log / audit usage (e,g,; to
provide company employee Internet usage
reporting);
To bypass security / parental controls;
To circumvent Internet filtering to access content
otherwise blocked, by governments;
To scan transmitted content for malware before
delivery;
To scan outbound content, e.g., for data loss
prevention;
To allow a web site to make web requests to
externally hosted resources (e.g., images, music
files, etc.) when cross-domain restrictions prohibit
the web site from linking directly to the outside
domains.
A proxy server that passes requests and responses unmodified is
usually called a “gateway” or, sometimes, a “tunneling” proxy.
A proxy server can be placed in the user’s terminal or at various
points between the user and the destination servers on the
Internet.
Spec. 6–7 (emphasis added).
As above, Appellant is wrapping the conventional functions (e.g.,
receive, convey) of the proxy server with the novel business solution of
improved payment of delivery charges. Again, “under the Mayo/Alice
framework, a claim directed to a newly discovered law of nature (or natural
phenomenon or abstract idea) cannot rely on the novelty of that discovery
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for the inventive concept necessary for patent eligibility.” Genetic Techs.
818 F.3d at 1376; see Diehr, 450 U.S. at 188–89.
D.3.b.
We agree that the Examiner correctly determines that in addition to
the abstract idea, claim 1 recites only well-understood, routine, conventional
elements/combination of elements previously known in the industry. In
view of Appellant’s Specification, and consistent with the Examiner’s
determinations, we determine that beyond the abstract idea, the claims do
not recite:
(vi) a specific limitation other than what is well-understood,
routine, conventional activity in the field or
unconventional steps that confine the claim to a particular
useful application.
See MPEP § 2106.05(d).
E.
Appellant raises the following argument in contending that the
Examiner erred in rejecting claim 1 under 35 U.S.C. § 103.
E.1.
[N]one of the three references relied upon[] uses a proxy server
strategically placed between an access network and a content
server to calculate costs of data delivery before such costs are
incurred. None of the references on evidence (or in the file
wrapper) are related to the problem of data delivery charges by
an access network and the fact that requests from a content server
often provide “larger” amounts of data than an end-user
constrained by delivery costs can appreciate.
Appeal Br. 27–28.
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E.2.
As articulated by the Federal Circuit, the Examiner’s burden of
proving non-patentability is by a preponderance of the evidence. See In re
Caveney, 761 F.2d 671, 674 (Fed. Cir. 1985) (“preponderance of the
evidence is the standard that must be met by the PTO in making rejections”).
“A rejection based on section 103 clearly must rest on a factual basis[.]” In
re Warner, 379 F.2d 1011, 1017 (CCPA 1967). “The Patent Office has the
initial duty of supplying the factual basis for its rejection. It may not . . .
resort to speculation, unfounded assumptions or hindsight reconstruction to
supply deficiencies in its factual basis.” Id.
The Examiner finds that Persson discloses “send the . . . tag to the
user terminal indicating a cost to be incurred for delivering the contents over
the access network” at paragraphs 52–53, and Persson discloses “in response
to receiving an acceptance of the cost from the user terminal, the proxy
server conveying at least an accepted portion of the contents to the user
terminal over the access network” at paragraphs 53–54, 57–59, and 69–71.
Final Act. 49–50.
We are unable to locate support for the Examiner’s findings in the
cited paragraphs of Persson. We note that Blott at paragraph 13, lines 35–
40, may have some relevance to these claim limitations. However, except
for a general reference to paragraph 13 (Final Act. 56), we do not locate
where the Examiner relies on this passage in Blott. We conclude the
Examiner’s analysis fails to meet the required burden standard because the
rejection does not adequately explain the Examiner’s findings of fact.
We conclude, consistent with Appellant’s arguments that there is
insufficient articulated reasoning to support the Examiner’s finding that
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Persson discloses the argued claim limitations. Therefore, we conclude that
there is insufficient articulated reasoning to support the Examiner’s final
conclusion that claim 1 would have been obvious to one of ordinary skill in
the art at the time of Appellant’s invention.

CONCLUSION
The Examiner has not erred in rejecting claims 1, 4, 11–14, 17–23,
and 26–34 under 35 U.S.C. § 101, as being directed to patent-ineligible
subject matter.
Appellant has shown that the Examiner erred in rejecting claims 1, 4,
11–14, 17–23, and 26–34 as being unpatentable under 35 U.S.C. § 103.
The Examiner’s rejection of claims 1, 4, 11–14, 17–23, and 26–34
under 35 U.S.C. § 101, as being directed to patent-ineligible subject matter,
is affirmed.
The Examiner’s rejections of claims 1, 4, 11–14, 17–23, and 26–34 as
being unpatentable under 35 U.S.C. § 103 are reversed.
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DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/
Basis 
Affirmed Reversed
1, 4, 11–14,
17–23, 26–34
101 Eligibility 1, 4, 11–14,
17–23, 26–34

1, 4, 11–14,
17–23, 26–34
103 Persson, Doyle,
Blott
1, 4, 11–
14, 17–23,
26–34
Overall
Outcome

1, 4, 11–14,
17–23, 26–34

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