Zier, Thomas et al.

Patent Trials and Appeals Board

Jul 2, 2020

2019003282 (P.T.A.B. Jul. 2, 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.
13/579,327 08/16/2012 Thomas Zier 536-044.007 1022
4955 7590 07/02/2020
WARE, FRESSOLA, MAGUIRE & BARBER LLP
BRADFORD GREEN, BUILDING 5
755 MAIN STREET
MONROE, CT 06468
EXAMINER
ANDERSON, SCOTT C
ART UNIT PAPER NUMBER
3694
NOTIFICATION DATE DELIVERY MODE
07/02/2020 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):
mail@warefressola.com
uspatents@warefressola.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte THOMAS ZIER and FRANK ROSENGART
Appeal 2019-003282
Application 13/579,327
Technology Center 3600
Before CAROLYN D. THOMAS, BRADLEY W. BAUMEISTER, and
PHILLIP A. BENNETT, Administrative Patent Judges.
BENNETT, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–16. We have jurisdiction under
35 U.S.C. § 6(b).
We affirm.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42(a). Appellant identifies the real party in interest as Funke
Digital TV Guide GmbH. Appeal Br. 3.
Appeal 2019-003282
Application 13/579,327

2
CLAIMED SUBJECT MATTER
The claims are directed to an adaptive placement of auxiliary media in
recommender systems. Spec., Title. Claim 15, reproduced below, is
illustrative of the claimed subject matter:
15. A method of controlling placement of auxiliary media in
form of at least one of audio, video and text information in
relation to at least one content item presented to a user, wherein
the content item is a data stream containing video and/or audio
data, said method comprising:
a) scheduling said at least one content item by a first
scheduler component based on a user profile received by the first
scheduler component from a recommender engine, wherein the
at least one content item is to be played out on a personalized
content channel to be displayed on a screen;
b) outputting by said first scheduler component
information about a scheduled content, wherein the information
about the scheduled content is information in the form of
metadata describing the content item; and
c) determining by a second scheduler component based on
said output information in the form of metadata describing the
content item which auxiliary media to place into a presentation
space, wherein said second scheduler is adapted to check whether
a targeting rule for the auxiliary media matches the content item,
wherein the placement of auxiliary media is controlled in relation
to at least one content item presented to the user via said screen,
and wherein the user profile is personalized to the user and the
user profile is based at least in part on explicit feedback on
content items provided by the user;
d) detecting by the second scheduler a trigger event and
e) inserting by the second scheduler an item of the
auxiliary media to a target object of a content channel in response
to the detected trigger event, said trigger event comprising at
least one of a recording of a content item, a deletion of a content
item, and an arrival of a new object of the auxiliary media for
Appeal 2019-003282
Application 13/579,327

3
placement, and wherein said target object comprises a single
show or event within the content channel,
wherein the output of the recommender engine is
connected to the first scheduler and wherein the first scheduler is
connected to a common storage device; and wherein the first
scheduler is adapted to compute a recording schedule for
scheduling the recording of content items offered by the
recommender engine onto said storage device; and wherein the
second scheduler is also connected to the storage device, so that
auxiliary media that match user profile or targeting requirements
can be pushed by the second scheduler to the storage device even
if a channel is not subscribed.

Appeal Br. 26–27 (Claims Appendix).
REJECTION
Claims 1–16 stand rejected under 35 U.S.C. § 101 as being directed to
patent ineligible subject matter. Final Act. 2–6.
ANALYSIS
We have reviewed the Examiner's rejections in light of Appellant’s
arguments set forth in the Appeal Brief and the Reply Brief. We are not
persuaded by Appellant’s arguments. We adopt as our own: (1) the findings
and reasons set forth by the Examiner in the action from which this appeal is
taken (Final Act. 2–10) and (2) the findings, reasons, and explanations set
forth by the Examiner in the Examiner’s Answer in response to Appellant’s
Brief (Ans. 3–10) and concur with the conclusions reached by the Examiner.
We add the following for emphasis.
Standard for Patent Eligibility
In issues involving subject matter eligibility, our inquiry focuses on
whether the claims satisfy the two-step test set forth by the Supreme Court in
Appeal 2019-003282
Application 13/579,327

4
Alice Corp. v. CLS Bank Int’l, 573 U.S. 208 (2014). The Court instructs us
to “first determine whether the claims at issue are directed to a patent-
ineligible concept,” id. at 218, and, in this case, the inquiry centers on
whether the claims are directed to an abstract idea. If the initial threshold is
met, we then move to the second step, in which we “consider the elements of
each claim both individually and ‘as an ordered combination’ to determine
whether the additional elements ‘transform the nature of the claim’ into a
patent-eligible application.” Id. at 217–18 (quoting Mayo Collaborative
Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 79, 78 (2012)). The Court
describes the second step as a search for “an ‘inventive concept’—i.e., an
element or combination of elements that is ‘sufficient to ensure that the
patent in practice amounts to significantly more than a patent upon the
[ineligible concept] itself.’” Id. (quoting Mayo, 566 U.S. at 72–73).
The USPTO has published revised guidance on the application of
§ 101 consistent with Alice and subsequent Federal Circuit decisions.
USPTO, 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, or mental processes) (referred to Step 2A, prong 1 in
the Guidance); and
(2) additional elements that integrate the judicial exception into
a practical application (see MPEP § 2106.05(a)–(c), (e)–(h))
(referred to Step 2A, prong 2 in the Guidance).
Guidance, 84 Fed. Reg. at 52–55.
Appeal 2019-003282
Application 13/579,327

5
Only if a claim (1) recites a judicial exception and (2) does not
integrate that exception into a practical application, do we then move to
Step 2B of the Guidance. There, we look to whether the claim:
(3) adds a specific limitation beyond the judicial exception that
is not “well-understood, routine, conventional” in the field (see
MPEP § 2106.05(d)); or
(4) simply appends well-understood, routine, conventional
activities previously known to the industry, specified at a high
level of generality, to the judicial exception.
Guidance, 84 Fed. Reg. at 56.
Examiner’s Findings and Conclusions2
The Examiner rejects the claims as being directed to a judicial
exception without significantly more. Final Act. 2–6; Ans. 3–10. Under the
first step of the Alice inquiry, the Examiner determines the claims are
“directed to the abstract idea of providing information to someone based on
what is known about her, which is similar to the concept identified as
abstract in Affinity Labs.” Final Act. 2. The Examiner further finds the
claims abstract because they recite “collecting and analyzing information in
order to provide a desirable information-based result, [which] is similar to
the concept identified as abstract by the court in Electic Power Group.” Id.
Under the second step of the Alice inquiry, the Examiner determines
the additional claim elements are insufficient to amount to significantly
more than the judicial exception. Final Act. 5. The Examiner determines
that the additional elements “include[] ‘hardware component’ and three

2 The Final Office Action was mailed prior to the Guidance. It applied the
case-law based approach from previous eligibility guidance in rejecting the
claims under § 101. The Reply Brief was filed subsequent to the issuance of
the Guidance and presents arguments made in view of the Guidance.
Appeal 2019-003282
Application 13/579,327

6
black-box modules described entirely functionally[—]a ‘first scheduler’,
a ‘second scheduler’, a ‘storage device’ and a ‘user interface’.” Final Act. 5.
The Examiner finds “these elements are recited at an exceedingly high
degree of generality and only perform generic computer functions of
manipulating information and sharing information with persons and/or other
devices.” Final Act. 5.
Appellant’s Contentions
Appellant presents several arguments for eligibility. Because the
Guidance was issued after the Appeal Brief but before the Reply Brief, the
arguments made in the Reply Brief better apply the Guidance to the claims.
We, therefore, primarily address those latter arguments of the Reply Brief.
Appellant first argues the claim does not recite a judicial exception
under Step 2A, prong 1, of the Guidance. Reply Br. 3–5. Appellant asserts
the claim elements “could not be practically performed in the human mind”
and “it is no more practical to perform such actions mentally than it is to
track how much memory has been allocated to a computer application over a
predetermined time period.” Reply Br. 4.
Appellant further argues that even if the claim recites an abstract idea,
the claim integrates the abstract idea into a practical application under
Step 2A, prong 2. Reply Br. 5–7. Appellant asserts the claims are similar to
the eligible claim provided Example 37 provided in the Guidance. Reply
Br. 6.
Appellant additionally argues,
Claim 1 does not recite merely analyzing data and providing an
information-based result as asserted in the Final Office Action
. . ., but recites an apparatus including at least a first scheduler, a
second scheduler, and a user interface, as discussed above. The
Appeal 2019-003282
Application 13/579,327

7
claim also recites receiving a user profile (based on explicit
feedback on content items provided by the user with the user
interface), pushing auxiliary media that meet targeting
requirements or the user profile from the second scheduler to the
storage device, receiving information about scheduled content in
the form of metadata deciding which auxiliary media is placed in
a presentation space based on the information, checking whether
a targeting rule for the auxiliary media matches the content item,
and inserting auxiliary media into a target object of a content
channel in response to detecting a trigger event. Taken
collectively, these features apply any allegedly abstract “analysis
of information” into a practical application by providing for the
insertion of an auxiliary media into a content item in the form of
an audio or video data stream, in the particular manner claimed,
which provides an improvement over prior systems.
Reply Br. 6–7. Appellant further asserts the invention improves the
functioning of a computer (Reply Br. 7; Appeal Br. 12–14, 17) and also
effects a transformation of an article to a different state or thing (Reply
Br. 7, Appeal Br. 17–18).
Appellant also contends the claims are eligible under Step 2B of the
Guidance. Specifically, Appellant argues the Examiner’s analysis is flawed
because “claim 1 recites non-abstract elements in addition to the computer
hardware,” and the Examiner fails to address those limitations. Reply Br. 8.
Revised Guidance, Step 2A, Prong One 3
The Judicial Exception
The Guidance instructs us first to determine whether any judicial
exception to patent eligibility is recited in the claim. The Guidance
identifies three judicially-excepted groupings: (1) mathematical concepts,

3 Throughout this opinion, we give the claim limitations the broadest
reasonable interpretation consistent with the Specification. See In re Morris,
127 F.3d 1048, 1054 (Fed. Cir. 1997).
Appeal 2019-003282
Application 13/579,327

8
(2) certain methods of organizing human activity such as fundamental
economic practices and commercial interactions (including . . . advertising,
marketing or sales activities or behaviors; business relations), and (3) mental
processes. We focus our analysis on the second and third groupings—
certain methods of organizing human activity and mental processes.4
We agree with the Examiner that the limitations of claim 1 recite a
process of delivering advertising content to a person based on what is known
about the person—a form of targeted advertising—which as a whole, recites
a commercial practice of advertising under the Guidance. Guidance, 84 Fed.
Reg. at 52 n.13. Individually, several of the limitations also are mental
processes.5 Id. at 52 n.14.
For example, the Claim 1 recites,
a) scheduling . . . at least one content item6 . . . based on a
user profile . . . wherein the at least one content item is to be
played out on a personalized content channel to be displayed on
a screen;

4 Appellant argues the § 101 rejection of claims 1, 15, and 16 together. We
treat claim 15 as representative of the independent claims. 37 C.F.R.
§ 41.37(c)(1)(iv) (2018) (“When multiple claims subject to the same ground
of rejection are argued as a group or subgroup by Appellant, the Board may
select a single claim from the group or subgroup and may decide the appeal
as to the ground of rejection with respect to the group or subgroup on the
basis of the selected claim alone.”). We address dependent claims separately
infra.
5 RecogniCorp, LLC v. Nintendo Co., 855 F.3d 1322, 1327 (Fed. Cir. 2017)
(“Adding one abstract idea . . . to another abstract idea . . . does not render
the claim non-abstract.”); see also FairWarning IP, LLC v. Iatric Sys., Inc.,
839 F.3d 1089, 1093–94 (Fed. Cir. 2016) (patent-ineligible claims were
directed to a combination of abstract ideas).
6 The Specification describes a “content items” as including “books, songs,
television (TV) programs, movies, etc.”. Spec. 1, ll. 18–19.
Appeal 2019-003282
Application 13/579,327

9
b) outputting . . . information about a scheduled content,
wherein the information about the scheduled content is
information in the form of metadata describing the content item;
c) determining . . . based on said output information in the
form of metadata describing the content item which auxiliary
media7 to place into a presentation space,
[(c.1)] wherein said second scheduler is adapted to
check whether a targeting rule for the auxiliary media
matches the content item,”
[(c.2)] wherein the placement of auxiliary media is
controlled in relation to at least one content item presented
to the user via said screen,
[(c.3)] wherein the user profile is personalized to the
user and the user profile is based at least in part on explicit
feedback on content items provided by the user,
d) detecting . . . a trigger event[,] and
e) inserting . . . an item of the auxiliary media . . . in response
to the detected trigger event,
[(e.1)] said trigger event comprising at least one of a
recording of a content item, a deletion of a content item,
and an arrival of a new object of the auxiliary media for
placement,
[(e.2)] wherein said target object comprises a single
show or event within the content channel,
f) compute a recording schedule for scheduling the recording
of content items . . . so that auxiliary media that match user
profile or targeting requirements can be pushed . . . to the storage
device even if a channel is not subscribed.
Appeal Br. 26–27 (Claims Appendix).

7 The Specification describes “auxiliary media” as including “auxiliary
audio, video or text information related to a personalized channel or content
item and used for user support, advertisement or the like.” Spec. 1, ll. 7–9
(emphasis added).
Appeal 2019-003282
Application 13/579,327

10
These limitations, under their broadest reasonable interpretation,
recite the familiar commercial practice of advertisement placement, and
more specifically recite the commercial practice of receiving advertisements
from advertisers, selecting the intended audience for receiving the
advertisement, and delivering the advertisements to the intended audience.
For example, limitation (a), which recites scheduling the playing a
content item based on a user profile, is analogous to the traditional business
practice of selecting items on behalf of a customer based on a customer
profile. This limitation also can be considered a mental process under the
Guidance because a person could maintain and develop a programming
schedule in their mind with the aid of pen and paper.
Limitation (b), which recites outputting metadata about a scheduled
content item, is analogous to the customary commercial practice of
providing advertisers information about programming and potential audience
reach in order to determine the suitability of running an advertisement in
connection with that programming.
Limitation (c), which recites determining which auxiliary media to
place based on the metadata, also reflect typical activities that occur in
placing advertisements. This limitation also can be reasonably considered as
a mental process as an evaluation or judgment. Guidance, 84 Fed. Reg.
at 52 n.15. Limitations (c.1), (c.2), and (c.3), which further specify how the
auxiliary media is identified for placement using a targeting rule and user
feedback, also recite advertising practices.
Limitations (d) and (e), which recite detecting a trigger event and
inserting the auxiliary media in response, also are typical of television
advertising in that commercials are often placed during breaks in television
Appeal 2019-003282
Application 13/579,327

11
programming, such as, for example, time outs in sporting events. Similarly,
limitations (e.1) and (e.2) recite specific triggering events for media
insertion along with specifying that the insertion is to be made into a specific
item of content. Although the limitations refine the advertising concept,
they nevertheless recite abstract ideas because the language merely limits the
recited commercial practice of advertising to a particular content and
scenario. SAP Am., Inc. v. InvestPic, LLC, 898 F.3d 1161, 1168 (Fed. Cir.
2018) (“As many cases make clear, even if a process of collecting and
analyzing information is ‘limited to particular content’ or a particular
‘source,’ that limitation does not make the collection and analysis other than
abstract.”).
Under the Guidance, these limitations, under their broadest reasonable
interpretation, recite both a commercial interaction of advertising (a certain
method of organizing human activity) and a mental process for identifying
content in which to insert appropriate advertising based on user profiles.
Accordingly, we conclude the claimed process set forth in claim 15 recites
judicial exceptions of both a mental process and of a commercial interaction
(advertising), which is a certain method of organizing human activity under
the Guidance.8

8 As noted above, Appellant argues the claim does not recite a judicial
exception. Reply Br. 3, 4 (“It is no more practical to perform such actions
mentally than it is to track how much memory has been allocated to a
computer application over a predetermined time period.”). Appellant bases
its argument on Example 37 in the Guidance. Reply Br. 3. This argument is
not persuasive, as the issue illustrated by that particular example was
whether a mental process was recited in the claim. Here, as explained by the
Examiner, the main focus of the claim is a commercial interaction of
advertising, and in particular, how to provide appropriate advertisements “to
Appeal 2019-003282
Application 13/579,327

12
Revised Guidance, Step 2A, Prong Two
Integration of the Judicial Exception into a Practical Application
Having determined that the claim 15 recites a judicial exception, our
analysis under the Memorandum turns now to determining whether there are
additional elements that integrate the judicial exception into a practical
application. See Guidance, 84 Fed. Reg. at 54–55 (citing MPEP
§ 2106.05(a)–(c), (e)–(h)).
Under the Guidance, limitations that are indicative of “integration into
a practical application” include:
1. Improvements to the functioning of a computer, or to any other
technology or technical field — see MPEP § 2106.05(a);
2. Applying the judicial exception with, or by use of, a particular
machine — see MPEP § 2106.05(b);
3. Effecting a transformation or reduction of a particular article to
a different state or thing — see MPEP § 2106.05(c); and
4. Applying or using the judicial exception in some other
meaningful way beyond generally linking the use of the judicial
exception to a particular technological environment, such that
the claim as a whole is more than a drafting effort designed to
monopolize the exception — see MPEP § 2106.05(e).
In contrast, limitations that are not indicative of “integration into a
practical application” include:

a person based on what is known about her.” Ans. 5. Thus, even if
Example 37 were pertinent to the mental process analysis, Appellant’s
argument inadequately explains why the claim does not recite a commercial
practice.

Appeal 2019-003282
Application 13/579,327

13
1. Adding the words “apply it” (or an equivalent) with the judicial
exception, or merely include instructions to implement an
abstract idea on a computer, or merely uses a computer as a tool
to perform an abstract idea — see MPEP § 2106.05(f);
2. Adding insignificant extra-solution activity to the judicial
exception — see MPEP § 2106.05(g); and
3. Generally linking the use of the judicial exception to a
particular technological environment or field of use — see
MPEP § 2106.05(h).
Guidance, 84 Fed. Reg. at 54–55 (“Prong Two”).
As shown above, most of the claim limitations in claim 1 recite
abstract ideas. Additional to those abstract limitations, claim 1 recites that
(1) scheduling and other operations are performed by “a first scheduler
component” and “a second scheduler component,” (2) content items are
received “from a recommender engine,” and (3) a “common storage device”
connected to the first and second schedulers. Appeal Br. 25–26 (Claims
Appendix).
We conclude these limitations are insufficient to integrate the recited
abstract idea into a practice application. Each of these limitations merely
recites the use of conventional computer technology to implement the
otherwise abstract process on a computer. Each of these components are
described in functional terms in the Specification, without meaningful detail
regarding their structure or configuration. See, e.g., Spec. 8, ll. 4–35
(describing hardware including storage as “set of hard disk drives”), id. at
10, ll. 6–24 (describing functions performed by scheduler without detail
about how the functions are performed).
Appeal 2019-003282
Application 13/579,327

14
As the Examiner explains:
The claim includes “hardware components” and three black-box
modules described entirely functionally, a “first scheduler”, a
“second scheduler”, a “storage device” and a “user interface”.
The “hardware components” would cover any and all devices,
known and unknown, which can process data. The claims
mention a “screen”, but it is not within the scope of the claim.
Even if it was, all of these elements are recited at an exceedingly
high degree of generality and only perform generic computer
functions of manipulating information and sharing information
with persons and/or other devices.
Ans. 5.
It is well-established that the use of generic technology to implement
an abstract idea is insufficient to integrate it into a practical application. See
MPEP 2106.05(f) (explaining that it is not indicative of integration into a
practical application where the claims “merely include instructions to
implement an abstract idea on a computer, or merely uses a computer as a
tool to perform an abstract idea”).
Claim 15 also recites (4) “wherein the output of the recommender
engine is connected to the first scheduler and wherein the first scheduler is
connected to a common storage device,” (5) “wherein the first scheduler is
adapted to compute a recording schedule for scheduling the recording of
content items offered by the recommender engine onto said storage device,”
and (6) “wherein the second scheduler is also connected to the storage
device, so that auxiliary media that match user profile or targeting
requirements can be pushed by the second scheduler to the storage device
even if a channel is not subscribed.” Appeal Br. 26 (Claims Appendix).
These limitations generally recite the output or result of performing
the abstract process. As such, they constitute post-solution activity
Appeal 2019-003282
Application 13/579,327

15
insufficient to integrate the abstract idea into a practical application. Even
taken together as an ordered combination, the elements merely recite data
gathering, output, and storage operations which are incidental to the
advertising in the claim. MPEP § 2106.05(h).
Appellant argues the claim integrates any abstract idea into a practical
application. Reply Br. 5–7. We address these arguments in turn.
Appellant first argues Example 37 of the Guidance demonstrates that
claim 1 integrates the judicial exception into a practical application. Reply
Br. 6. Specifically, Appellant argues the additional claim elements integrate
the abstract idea into a practical application “by providing for the insertion
of an auxiliary media into a content item in the form of an audio or video
data stream, in the particular manner claims, which provides an
improvement over prior systems.” Reply Br. 7. This argument is not
persuasive. As we explained above, the insertion of auxiliary media into an
audio or video stream is, at its core, an advertising practice and therefore
part of the judicial exception. That the insertion of the auxiliary media is
performed by a computer does not remove it from the abstract realm.
Appellant also argues the claims integrate the invention into a
practical application because they improve the functioning of a computer.
Appeal Br. 14. In support, Appellant cites the Specification, which states
that “[i]t is an abject of the present invention to provide an improved
placement of auxiliary media, by means of which signaling and processing
load as well as storing amount associated with the placement process can be
reduced.” Appeal Br. 14 (quoting Spec. 3, ll.15–17).
We do not agree that this statement, or the others cited by Appellant,
demonstrates a practical application. We agree with the Examiner that the
Appeal 2019-003282
Application 13/579,327

16
alleged reduction in signaling and storage requirements is not explained or
verified in the Specification. In essence, Appellant’s argument is that the
mere act of deleting unused files provides an improvement to technology.
We disagree that such a routine and conventional implementation practice
provides a technological improvement to how a computer operates.
Moreover, as explained by the Examiner, the Specification does not indicate
what the prior processing and storage requirements entailed, nor does the
Specification describe the details of how any alleged reduction would be
achieved. Ans. 6.
In sum, Appellant’s invention is focused on improving the
commercial practice of selecting advertisements to display based on user
profiling. Thus, purported improvement identified by Appellant is to
targeted advertising, and is not an improvement to technology. The
improvement provided by these process steps improves the abstract idea
itself. It is well-established, however, that improvements in the abstract idea
are insufficient to confer eligibility on an otherwise ineligible claim. SAP
Am. Inc. v. InvestPic, LLC, 898 F.3d 1161, 1168 (Fed. Cir. 2018). We
conclude claim 1 is directed to a judicial exception.
The Inventive Concept – Step 2B
Having determined the claim is directed to a judicial exception, we
proceed to evaluating whether the claim adds a specific limitation beyond
the judicial exception that is not “well-understood, routine, conventional” in
the field (see MPEP § 2106.05(d)) or simply appends well-understood,
routine, conventional activities previously known to the industry, specified
at a high level of generality, to the judicial exception. See Guidance, 84 Fed.
Reg. at 56.
Appeal 2019-003282
Application 13/579,327

17
Our review of the Examiner’s rejection under Step 2B is guided by the
revised examination procedure published online by the USPTO on April 19,
2018, entitled “Changes in Examination Procedure Pertaining to Subject
Matter Eligibility, Recent Subject Matter Eligibility Decision (Berkheimer v.
HP, Inc.)” (“Berkheimer Memorandum”), which describes the fact finding
requirement for Examiners applicable to rejections under § 101. Consistent
with the Berkheimer Memorandum, we agree with the Examiner that the
claim does not add specific limitations beyond what is well-understood,
routine, and conventional.
Our analysis focuses largely on the same limitations addressed in
Step 2A, Prong 2, above. We agree with the Examiner that the additional
limitations do not supply an inventive concept under Step 2B because the
additional machine learning algorithms used in the claim are described at a
high level without detail in the Specification. This lack of detailed
description evidences their well-understood, routine, and conventional
nature.
Appellant contends that claim 1’s following limitation amounts to
significantly more than the abstract idea: “wherein said second scheduler is
adapted to detect a trigger event and to insert an item of the auxiliary media
to a target object of a content channel in response to said detected trigger
event, said trigger event comprising at least one of a recording of a content
item, a deletion of a content item, and an arrival of a new object of the
auxiliary media for placement, and wherein said target object comprises a
single show or event within the content channel.” Appeal Br. 18. As noted
above, we select claim 15 as representative, so this specific limitation is not
Appeal 2019-003282
Application 13/579,327

18
recited in claim 15. However, claim 15 recites a substantively similar
limitation—which we consider in light of Appellant’s contention.
We are not persuaded by Appellant’s argument. As we discussed
above, this limitation, which we identified as limitations (d) and (e) above,
recites an abstract idea because detecting a trigger event (a commercial
break) and inserting the auxiliary media (i.e., an advertisement) in response
is typical of television advertising. The specific triggering events recited in
the limitation merely refine the delivery of the advertising to a particular
content and situation. SAP Am., Inc. v. InvestPic, LLC, 898 F.3d 1161, 1168
(Fed. Cir. 2018) (“As many cases make clear, even if a process of collecting
and analyzing information is ‘limited to particular content’ or a particular
‘source,’ that limitation does not make the collection and analysis other than
abstract.”); see also BSG Tech LLC v. Buyseasons, Inc., 899 F.3d 1281, 1290
(Fed. Cir. 2018) (“It has been clear since Alice that a claimed invention's use
of the ineligible concept to which it is directed cannot supply the inventive
concept that renders the invention "significantly more" than that ineligible
concept.”).
Because the Examiner correctly concluded claim 15 is directed to a
judicial exception, and because Appellant does not identify any error in the
Examiner’s determination under step 2B of the Guidance, we sustain the
rejection of representative claim 15 under 35 U.S.C. § 101, as well as of the
remaining independent claims.
Dependent Claims
Appellant proffers arguments for patent eligibility with respect to the
dependent claims. Appeal Br. 20–21; Reply Br. 9–12. Appellant generally
argues the Examiner has failed to properly support the rejection with
Appeal 2019-003282
Application 13/579,327

19
evidence required by the Berkheimer Memorandum. Appeal Br. 20. The
Examiner determines that the dependent claims, but for the recitation of
generic computer elements, recite further refinements to the abstract idea.
Ans. 8 (“Abstract steps, however unconventional, cannot amount to
‘significantly more’ than abstraction because they are not even more than
abstraction.”).
Appellant’s argument does not explain why the Examiner errs in
determining the limitations recited in the dependent claims are themselves
abstract. We agree with the Examiner that the dependent “claims simply
recite the use of common, routine, data processing steps implemented on
generic computers in order to carry out the abstract idea.” Final Act. 6. We
further agree with the Examiner that the Specification, by describing the
recited system components in purely functional terms and at a high level,
provides sufficient evidence of the well-understood, routine, and
conventional nature of the computer elements in the claims. See, e.g.,
Spec. 8, ll. 4–35 (describing hardware including storage as “set of hard disk
drives”), id. at 10, ll. 6–24 (describing functions performed by scheduler
without detail about how the functions are performed).
Appellant also provides a specific argument with respect to claim 2,
which recites “the scheduler is adapted to initiate downloading of auxiliary
media to be placed in relation to a specific content item and to discard
further auxiliary media not to be placed in relation to the specific content
item.” Appeal Br. 24 (Claims Appendix). Appellant asserts the claim
provides a technological improvement because it reduces storage
requirements on the client device. Appeal Br. 20–21 (citing Spec. 4, ll. 17–
23). For the same reasons we explained above, we do not agree that the
Appeal 2019-003282
Application 13/579,327

20
mere removal of unused files is a non-conventional, technological
improvement sufficient to confer patent eligibility.
CONCLUSION
We affirm the Examiner’s rejection under 35 U.S.C. § 101.
DECISION SUMMARY
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–16 101 Eligibility 1–16

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