Adobe Inc.

Patent Trials and Appeals Board

Jul 1, 2020

14630377 - (D) (P.T.A.B. Jul. 1, 2020)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
14/630,377 02/24/2015 Michael A. Marth P5240-US-ORG2 2896
108982 7590 07/01/2020
SBMC
116 W. Pacific Avenue
Suite 200
Spokane, WA 99201
EXAMINER
ANDREI, RADU
ART UNIT PAPER NUMBER
3682
NOTIFICATION DATE DELIVERY MODE
07/01/2020 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
docket@sbmc-law.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MICHAEL A. MARTH and KEN BEATON
Appeal 2019-004003
Application 14/630,377
Technology Center 3600
Before JOHNNY A. KUMAR, JENNIFER S. BISK, and JOYCE CRAIG,
Administrative Patent Judges.
BISK, Administrative Patent Judge.
DECISION ON APPEAL1

1 Throughout this Decision we have considered the Specification filed
February 24, 2015 (“Spec.”), the Final Rejection mailed October 18, 2018
(“Final Act.”), the Appeal Brief filed March 6, 2019 (“Appeal Br.”), the
Examiner’s Answer mailed April 15, 2019 (“Ans.”), and the Reply Brief
filed April 25, 2019 (“Reply Br.”).
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STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the
Examiner’s decision to reject claims 1–16 and 21–24. See Final Act. 1. We
have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
CLAIMED SUBJECT MATTER
The claims are directed to managing content for marketing, including
content creation, deployment collaboration, activity stream, and task
management. Spec. ¶ 4. Claims 1, 11, and 21 are independent. Claim 1,
reproduced below, is illustrative of the claimed subject matter (bracketed
numbers added):
1. In a digital medium environment for creating a marketing
activity, where the marketing activity involves creation of
content as part of the marketing activity, a computing device
comprising:
[1] a processing system; and
[2] a computer-readable storage medium having
instructions stored thereon that, responsive to execution by the
processing system, causes the processing system to perform
operations including:
[3] receiving a search input describing a characteristic of
the content to be included as part of the marketing activity;
[4] locating content by performing a search based on the
search input by comparing metadata of the content that describes
an image editing operation used to create the content as initiated
by a content creator with the characteristic of the content;
[5] finding a content creator that has created the located
content based on the metadata; and

2 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies the real party in interest as Adobe, Inc. Appeal
Br. 3.
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[6] causing output of an identifier of the found content
creator for inclusion in a user interface to cause communication
of an offer to the content creator to create content based on the
characteristic of the content.
Appeal Br. 38 (Claims App.).
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Dudas WO 2008/033840 A2 March 20, 2008
O’Donnell U.S. 9,396,279 B1 July 19, 2016
Pattan U.S. 9,524,077 B1 Dec. 20, 2016
Sohma U.S. 2002/0040360 A1 Apr. 4, 2002
Walker U.S. 2004/0174434 A1 Sep. 9, 2004
REJECTIONS
Claims 1–16 and 21–24 are rejected under 35 U.S.C. § 101 because
the claimed invention is not directed to patent eligible subject matter. Final
Act. 4–7.
Claims 1, 9–11, and 21 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Dudas, Sohma, and O’Donnell. Final Act. 8–15.
Claims 2, 3, 12, 22, and 23 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Dudas, Sohma, O’Donnell, and Pattan. Final Act.
15–17.
Claims 4–8, 13–16, and 24 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Dudas, Sohma, O’Donnell, and Walker. Final Act.
18–24.
OPINION
We review the appealed rejections for error based upon the issues
identified by Appellant, and in light of the arguments and evidence produced
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thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential).
To the extent Appellant has not advanced separate, substantive arguments
for particular claims, or other issues, such arguments are waived. 37 C.F.R.
§ 41.37(c)(1)(iv).
We have considered all of Appellant’s arguments and any evidence
presented. We highlight and address specific findings and arguments for
emphasis in our analysis below.
Rejection of Claims 1–16 and 21–24 under 35 U.S.C. § 101
Section 101 of the Patent Act provides that “any new and useful
process, machine, manufacture, or composition of matter, or any new and
useful improvement thereof” is patent eligible. 35 U.S.C. § 101. But the
Supreme Court has long recognized an implicit exception to this section:
“‘Laws of nature, natural phenomena, and abstract ideas are not
patentable.’” Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 216 (2014)
(quoting Ass’n for Molecular Pathology v. Myriad Genetics, Inc., 569 U.S.
576, 589 (2013)). To determine whether a claim falls within one of these
excluded categories, the Court has set out a two-part framework. The
framework requires us first to consider whether the claim is “directed to one
of those patent-ineligible concepts.” Alice, 573 U.S. at 217. If so, we then
examine “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.” Alice, 573 U.S.
at 217 (quoting Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566
U.S. 66, 78, 79 (2012)). That is, we examine the claims for an “inventive
concept,” “an element or combination of elements that is ‘sufficient to
ensure that the patent in practice amounts to significantly more than a patent
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upon the [ineligible concept] itself.’” Alice, 573 U.S. at 217–18 (alteration
in original) (quoting Mayo, 566 U.S. at 72–73).
The Patent Office recently issued guidance regarding this framework.
See USPTO, 2019 Revised Patent Subject Matter Eligibility Guidance, 84
Fed. Reg. 50 (Jan. 7, 2019) (“Revised Guidance”). Under the Revised
Guidance, to decide whether a claim is “directed to” an abstract idea, we
evaluate whether the claim (1) recites subject matter falling within an
abstract idea grouping listed in the Revised Guidance and (2) fails to
integrate the recited abstract idea into a practical application. See Revised
Guidance, 84 Fed. Reg. at 51. If the claim is “directed to” an abstract idea,
as noted above, we then determine whether the claim recites an inventive
concept. The Revised Guidance explains that when making this
determination, we should consider whether the additional claim elements
add “a specific limitation or combination of limitations that are not well-
understood, routine, conventional activity in the field” or “simply append[]
well-understood, routine, conventional activities previously known to the
industry.” Revised Guidance, 84 Fed. Reg. at 56.
For the § 101 rejections, Appellant argues claims 1–16 and 21–24
together. See Appeal Br. 8–14. As permitted by 37 C.F.R. § 41.37, we
decide the appeal for this rejection based on claim 1. See 37 C.F.R.
§41.37(c)(1)(iv). Noting claims 1 and 21 recite systems and claim 13 recites
a method and, therefore, fall within the process category of § 101, we turn to
the Examiner’s § 101 rejection.
The Judicial Exception—Abstract Idea
The Examiner determined that the claims “are directed to receiving
market activity and content data, locating metadata, finding content creators
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that correspond to the located metadata and displaying the content creators
on a user interface” similar to “collecting information, analyzing it, and
displaying certain results of the collection and analysis” found to be an
abstract idea in Electric Power. Final Act. 4 (citing Elec. Power Grp., LLC
v. Alstom, S.A., 830 F.3d 1350 (Fed. Cir. 2016). The Examiner also states
that “each of the foregoing activities” of claims 1, 13, and 21 can “be
performed by a human being, or by a ‘human analog’ mentally or manually,
i.e. with pen and paper.” Id. at 5.
Between the mailing of the Final Action and the Answer, the Office
issued the Revised Guidance. In response to this guidance, the Examiner
added that claim 1 “recites receiving a search input, locating content, finding
a content creator and outputting/displaying a content creator identifier,”
which “is comparable to . . . marketing, sales activities or behaviors.” Ans.
4. The Examiner, therefore, explains that claim 1 falls within the category
of “Certain Methods of Organizing Human Activity—Commercial or Legal
Interactions” and, therefore, recites an abstract idea. Id.; see Revised
Guidance, 84 Fed. Reg. at 53. For the reasons explained below, we agree
that the claims recite an abstract idea.
According to the Specification, the invention overcomes problems
related to having to select content for inclusion in marketing activities “from
scratch.” Spec. ¶ 3. This often requires marketing professionals to create
new marketing material by guessing why other marketing activities have
been successful, “which could be complicated, time consuming, and may not
be accurate.” Id. The Specification describes “[c]ontent and deployment
collaboration techniques,” which use a “content creation service” and a
“content deployment service,” so that deployment data may be tracked and
reused in future marketing activities. Id. ¶ 4–5. Presenting a health
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insurance plan to a user seeking such a plan falls within “advertising,
marketing, or sales activities.” Revised Guidance, 84 Fed. Reg. at 52.
As quoted and enumerated above, claim 1 includes six main
limitations. These limitations recite, in part, the following steps: receiving a
search input describing content (limitation [3]), locating content by
searching based on the search input by comparing metadata of the content
with the characteristic of the content (limitation [4]), and finding the content
creator of the located content (limitation [5]). Appeal Br. 38 (Claims App.).
Under their broadest reasonable interpretation, all these limitations ([3]–[5])
contribute to a method of searching for and displaying marketing content,
which is advertising, marketing or sales activity. Such activity has been
found to be an abstract idea. See, e.g., Ultramercial, Inc. v. Hulu, LLC, 772
F.3d 709, 715 (Fed Cir. 2014) (holding that claim “describ[ing] only the
abstract idea of showing an advertisement before delivering free content” is
patent ineligible); In re Ferguson, 558 F.3d 1359, 1364 (Fed Cir. 2009)
(holding methods “directed to organizing business or legal relationships in
the structuring of a sales force (or marketing company)” to be ineligible).
In addition, we agree with the Examiner that at least limitations [3]–
[5] could be performed in the mind or with pencil and paper. For example
limitations [3]–[5] encompass a process that could occur in a person’s
mind—receiving a characteristic of content to be included as part of
marketing activity, searching for content with that characteristic, and
figuring out the creator of that content. Similar claims have been found
ineligible by the Federal Circuit. For example, the Federal Circuit continues
to “‘treat[ ] analyzing information by steps people go through in their minds,
. . . without more, as essentially mental processes within the abstract-idea
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category.’” Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1146–
47 (Fed. Cir. 2016) (quoting Electric Power Group, 830 F.3d at 1354).
Moreover, when claimed in a manner similar to the claims here,
gathering and analyzing information using conventional techniques has been
determined to be an abstract idea. In re TLI Commc’ns LLC Patent Litig.,
823 F.3d 607, 612–13 (Fed. Cir. 2016). Also, more recently, our reviewing
court has also concluded that some acts of collecting, analyzing,
manipulating, and displaying data are patent ineligible. Univ. of Fl.
Research Found., Inc. v. General Electric Co., 916 F.3d 1363, 1367 (Fed.
Cir. 2019) (citing Intellectual Ventures I LLC v. Capital One Fin. Corp., 850
F.3d 1332, 1340 (Fed. Cir. 2017); Electric Power Group, 830 F.3d at 1353–
54).
Accordingly, we conclude claim 1 recites a certain method of
organizing human activity or concepts performed in the human mind
identified in the Revised Guidance, and thus, an abstract idea.3 Revised
Guidance, 84 Fed. Reg. at 53.

3 Our reviewing court recognizes 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). That need not and, in this case does
not, “impact the patentability analysis.” Id. at 1241. Further, “[a]n abstract
idea can generally be described at different levels of abstraction. . . . The
Board’s slight revision of its abstract idea analysis does not impact the
patentability analysis.” Id. Moreover, merely combining several abstract
ideas does not render the combination any less abstract. RecogniCorp, LLC
v. Nintendo Co., 855 F.3d 1322, 1327 (Fed. Cir. 2017) (“Adding one
abstract idea (math) 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) (determining the pending claims were
directed to a combination of abstract ideas).
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Integration of the Judicial Exception into a Practical Application
If a claim recites a judicial exception, we determine whether the
recited judicial exception is integrated into a practical application of that
exception by: (a) identifying whether there are any additional elements
recited in the claim beyond the judicial exception(s); and (b) evaluating
those additional elements individually and in combination to determine
whether they integrate the exception into a practical application. If the
recited judicial exception is integrated into a practical application, the claim
is not directed to the judicial exception.
Here, claim 1 recites the additional elements of “a processing system”
(limitation [1]), “a computer readable storage medium having instructions
stored thereon that, responsive to execution by the processing system, causes
the processing system to perform operations” (limitation [2]), and displaying
an identifier of the located content with an offer to the content creator
(limitation [6]). Appeal Br. 38 (Claims App.). Considering claim 1 as a
whole, the additional elements do not apply or use the abstract idea in a
meaningful way such that the claim as a whole is more than a drafting effort
designed to monopolize the exception. The Supreme Court guides that the
“prohibition against patenting abstract ideas ‘cannot be circumvented by
attempting to limit the use of the formula to a particular technological
environment’ or [by] adding ‘insignificant postsolution activity.’” Bilski v.
Kappos, 561 U.S. 593, 610–11 (2010) (quoting Diamond v. Diehr, 450 U.S.
175, 191–92 (1981)).
The Specification describes each of these elements as generic
components. For example, the Specification states that “[c]omputing
devices that are used to implement the content creation service 102, content
deployment service 104, and the client device 106 are configurable in a
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variety of ways,” ranging from “full resource devices with substantial
memory and processor resources (e.g., personal computers, game consoles)
to a low-resource device with limited memory and/or processing resources
(e.g., mobile devices).” Spec. ¶ 48; see also ¶¶ 153–166 (describing the
system in terms of conventional computer hardware and software). The
recited “processing system” is described in the Specification as “including
hardware element 3510 that may be configured as processors, functional
blocks, and so forth” and “are not limited by the materials from which they
are formed or the processing mechanisms employed therein. Id. ¶ 155. The
Specification also describes the recited “computer readable storage medium”
as “including memory/storage 3512,” which “may include volatile media
(such as random access memory (RAM)) and/or nonvolatile media (such as
read only memory (ROM), Flash memory, optical disks, magnetic disks, and
so forth),” “as well as fixed media (e.g., RAM, ROM, a fixed hard drive, and
so on) as well as removable media (e.g., Flash memory, a removable hard
drive, an optical disc, and so forth).” Id. ¶ 156. Moreover, we determine
limitation [6] (“causing output of an identifier of the found content creator
for inclusion in a user interface to cause communication of an offer to the
content creator to create content based on the characteristic of the content”)
constitutes insignificant post-solution activity. See MPEP 2106.05(g).
Appellant’s arguments have not persuaded us claim 1 is “directed to”
a patent-eligible concept. Appellant argues that the claims “improve content
creation technology by identifying content creators to therefore increase a
likelihood of the content being successful relative to conventional content
creation technology,” and, therefore, are not directed to an abstract idea.
Appeal Br. 15, 22. To support this argument Appellant cites to language in
the Specification stating that “[i]dentifiers of these content creators may then
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be output automatically and without user intervention such that the marketer
may make offers to these content creators to create desired content and thus
improve the likelihood that the content will be successful as part of the
marketing activity.” Id. at 16 (quoting Spec. ¶ 131).
Appellant supports this argument by citing to Ancora Techs., Inc. v.
HTC America, Inc., 908 F.3d 1343 (Fed. Cir. 2018). Appeal Br. 19–21.
Specifically, Appellant argues that “the claimed advance is a concrete
assignment of specified functions among a computer’s components to
improve content creation technology, and this claimed improvement in
computer functionality is eligible for patenting.” Appeal Br. 20–21. We
disagree. Unlike Appellant’s claims, “[t]he claimed method [in Ancora]
specifically identifies how that functionality improvement is effectuated in
an assertedly unexpected way: a structure containing a license record is
stored in a particular, modifiable, non-volatile portion of the computer’s
BIOS.” See Ancora, 908 F.3d at 1348. In other words, in Ancora, “[t]he
asserted innovation of the patent relates to where the license record is stored
. . . The inventive method uses a modifiable part of the BIOS memory—not
other computer memory—to store the information that can be used.” Id. at
1345.
Here, to the contrary, identifying content creators so as to determine
what content to show the user does not describe an improvement to a user
interface for displaying that data. The fact that users may find data
displayed on a user interface to be useful has no bearing on whether there
has been a technological improvement to the user interface itself. Appellant
does not point to, and we do not see, any disclosure in the Specification that
describes improving the user interface itself, but instead describes
determining what data should be displayed by a conventional user interface.
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See Spec. ¶ 44 (“Content creators, in one such instance, receive this data to
determine which of their content has been successfully employed as part of
marketing activities and use this information in the creation of future
content.”). We, therefore, disagree that the claims here are similar to those
at issue in Ancora because they do not claim an improvement to computer
functionality.
Appellant also argues that the claims “identify a particular tool for
presentation,” “limit the technical means for performing functions,” and
“require performance of the claimed function,” and, thus, are not similar to
the claims found ineligible in Electric Power Group. Appeal Br. 17–18
(citing Electric Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1351 (Fed.
Cir. 2016)).
We disagree with Appellant’s attempted differentiation of the claims
of Electric Power Group from the claims in this case. In Electric Power
Group, the Court held ineligible a recited method of detecting events on an
interconnected power grid from plural data streams in real time and
analyzing those events, where the method included, among other things,
displaying event analysis results and diagnoses, metrics, and concurrent
visualization of measurements from the data streams, and deriving a
composite reliability indicator. Elec. Power Grp., 830 F.3d at 1351–56.
Notably, in Electric Power Group, the claimed invention was ineligible
because it merely gathered and analyzed information, and then displayed
results—an abstract idea that is strikingly similar to the one at issue here.
Merely displaying the results of such abstract ideas does not integrate them
into a practical application as illustrated in Electric Power Group. In
addition to receiving and analyzing data using mathematical calculations,
claim 12 in Electric Power Group also displayed the results of that analysis
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“in visuals, tables, charts, or combinations thereof, the data comprising at
least one of monitoring data, tracking data, historical data, prediction data,
and summary data.” Elec. Power Grp., 830 F.3d at 1352. It also displayed
“concurrent visualization of measurements from the data streams and the
dynamic stability metrics.” Id. The Court held that displaying information
that results from collection and organizing is “abstract as an ancillary part of
such collection and analysis.” Id. at 1354.
We do not agree with Appellant’s argument that “[c]ausing an output
of an identifier a found content creator for inclusion in a user interface to
cause communication of an offer to the content creator to create content
based on a characteristic of the content” qualifies as “a particular tool for
presentation of the offer to the content creator.” See Appeal Br. 17. Instead,
this limitation simply determines what data will be presented by generic
display devices using commonly available tools. Similarly, we do not agree
with Appellant’s argument that the claims here “limit the technical means
for performing functions” of locating content such that they are
distinguishable from the claims at issue in Electric Power Group. We do
not agree that by requiring presented content based on the result of
“performing a search based on a search input by comparing metadata of the
content that describes an image editing operation used to create the content
as initiated by a content creator with a characteristic of the content” is
“significantly limiting the technical means for performing functions.” See
id. at 18. Instead, this restriction simply limits the data that is presented to a
content creator in an analogous manner to that recited in the claims at issue
in Electric Power Group (reciting displaying data after analysis). Elec.
Power Grp., 830 F.3d 1352. Finally, we do not agree that requiring a search
input be received, a search performed based on that input by comparing
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metadata, and finding a content creator, in any way distinguishes the claims
at issue with those in Electric Power Group. See Appeal Br. 18.
In contrast to the claims at issue, in Core Wireless, the claims recited
an improved interface for a mobile device that displayed a summary of
applications in unlaunched states so that users could quickly navigate to
desired applications from the start up menu to find data of interest unlike
known devices that required a user to switch views many times and drill
through many layers to find the right data or functionality. Core Wireless
Licensing S.A.R.L. v. LG Electronics, Inc., 880 F.3d 1356, 1362–63 (Fed.
Cir. 2018). The interface displayed “a limited list of common functions and
commonly accessed stored data” that were accessible directly from the main
menu “rather than using conventional user interface methods to display a
generic index on a computer.” Id. at 1363.
Here, claim 1 recites collecting comments and markups and
displaying that data together based on contributor type depending on
whether a supervisor need approve the display. In other words, the display
functions generically; it displays data. What data is displayed and how it is
arranged is described by the claims at issue, but not the mechanism of how
that data is displayed.
Appellant also argues that the claims recite significantly more than an
abstract idea because they “recite how interactions are manipulated to
achieve a desirable result.” Appeal Br. 21 (citing DDR Holdings, LLC v.
Hotels.com, 773 F.3d 1245, 1258 (Fed. Cir. 2014)). We do not agree with
Appellant’s reading of DDR Holdings as holding that “[c]laims that recite
how interactions are manipulated to achieve a desirable result recite
significantly more than an abstract idea.” Id.
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In DDR Holdings, the Court evaluated the eligibility of claims
“address[ing] the problem of retaining website visitors that, if adhering to
the routine, conventional functioning of Internet hyperlink protocol, would
be instantly transported away from a host's website after ‘clicking’ on an
advertisement and activating a hyperlink.” Id. at 1257. There, the Court
found that the claims were patent eligible because they transformed the
manner in which a hyperlink typically functions to resolve a problem that
had no “pre-Internet analog.” Id. at 1258. The Court cautioned, however,
“that not all claims purporting to address Internet-centric challenges are
eligible for patent.” Id. For example, in DDR Holdings the Court
distinguished the patent-eligible claims at issue from claims found patent-
ineligible in Ultramercial. See id. at 1258–59 (citing Ultramercial, Inc. v.
Hulu, LLC, 772 F.3d 709, 715–16 (Fed. Cir. 2014)). As noted there, the
Ultramercial claims were “directed to a specific method of advertising and
content distribution that was previously unknown and never employed on
the Internet before.” Id. at 1258 (quoting Ultramercial, 772 F.3d at 715–16).
Nevertheless, those claims were patent ineligible because they “merely
recite[d] the abstract idea of ‘offering media content in exchange for viewing
an advertisement,’ along with ‘routine additional steps such as updating an
activity log, requiring a request from the consumer to view the ad,
restrictions on public access, and use of the Internet.”’ Id.
Appellant’s asserted claims are analogous to claims found ineligible
in Ultramercial and distinct from claims found eligible in DDR Holdings.
The ineligible claims in Ultramercial recited “providing [a] media product
for sale at an Internet website;” “restricting general public access to said
media product;” “receiving from the consumer a request to view [a] sponsor
message;” and “if the sponsor message is an interactive message, presenting
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at least one query to the consumer and allowing said consumer access to said
media product after receiving a response to said at least one query.” 772
F.3d at 712. Similarly, Appellant’s asserted claims recite collecting data and
outputting certain of that data depending on content. This is the type of
activity found ineligible in Ultramercial. The invention as a whole does not
solve problems specifically arising in some aspect of computer technology,
nor is it solving an Internet centric problem, but rather the computer in the
instant claims is used as a mechanism to improve efficiency of the claimed
abstract idea. See FairWarning, 839 F.3d at 1095 (citing Bancorp Services,
LLC v. Sun Life Assurance Co., 687 F.3d 1266, 1278 (Fed. Cir. 2012)
(“[T]he fact that the required calculations could be performed more
efficiently via a computer does not materially alter the patent eligibility of
the claimed subject matter.”)); see also Intellectual Ventures I LLC v. Erie
Indemnity Co., 711 F. App’x 1012, 1017 (Fed. Cir. 2017) (unpublished)
(“Though the claims purport to accelerate the process of finding errant files
and to reduce error, we have held that speed and accuracy increases
stemming from the ordinary capabilities of a general-purpose computer ‘do[]
not materially alter the patent eligibility of the claimed subject matter.’”
(alteration in original) (citation omitted)).
Accordingly, even in combination with all the other recited elements,
the addition of “a processing system” and “a computer readable storage
medium having instructions stored thereon that, responsive to execution by
the processing system, causes the processing system to perform operations”
does not integrate the abstract idea into a practical application because it
does not impose any meaningful limits on practicing the abstract idea. For
these reasons, we determine that claim 1 does not integrate the recited
abstract idea into a practical application.
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Inventive Concept
Because we agree with the Examiner that claim 1 is “directed to” an
abstract idea, we consider whether an additional element (or combination of
elements) adds a limitation that is not well-understood, routine, conventional
(“WURC”) activity in the field or whether the additional elements simply
append WURC activities previously known to the industry, specified at a
high level of generality, to the judicial exception. Revised Guidance, 84
Fed. Reg. at 23. The Examiner’s finding that an additional element (or
combination of elements) is WURC activity must be supported with a
factual determination. Id. (citing MPEP § 2106.05(d), as modified by the
Berkheimer Memorandum4).
Whether the additional elements “a processing system,” “a computer
readable storage medium having instructions stored thereon that, responsive
to execution by the processing system, causes the processing system to
perform operations,” and displaying an identifier of the located content with
an offer to the content creator are WURC activity is a question of fact. See
Berkheimer v. HP Inc., 881 F.3d 1360, 1369 (Fed. Cir. 2018) (“Whether
something is well-understood, routine, and conventional to a skilled artisan .
. . is a factual determination.”).
On the record before us, Appellant has not shown that the claims on
appeal add a specific limitation beyond the judicial exception that is not
“well-understood, routine, and conventional” in the field, whether the
limitations are considered individually or as an ordered combination (see

4 Robert W. Bahr, Changes in Examination Procedure Pertaining to Subject
Matter Eligibility, Recent Subject Matter Eligibility Decision (Berkheimer v.
HP, Inc.) (2018) (hereinafter “Berkheimer Memorandum”).
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MPEP § 2106.05(d)). Appellant does not point to any particular claimed
element, or combination of elements, that does not qualify as WURC. See
Appeal Br. 14–23.
In fact, Appellant’s Specification demonstrates the WURC nature of
“a processing system” and “a computer readable storage medium having
instructions stored thereon that, responsive to execution by the processing
system, causes the processing system to perform operations” because it
indicates they may be implemented with generic devices. Spec. ¶¶ 153–166.
For these reasons, we conclude that claim 1, considered as a whole,
does not include an inventive concept.
Therefore, we sustain the Examiner’s § 101 rejection of independent
claim 1. For the reasons discussed above, we also sustain the Examiner’s
§ 101 rejection of dependent claims 2–10. We also sustain the Examiner’s
§ 101 rejection of independent claims 11 and 21 and dependent claims 12–
16 and 22–24 for which Appellant relies on the same arguments made with
respect to claim 1. See Appeal Br. 22–23.
Rejection of Claims 1–16 and 21–24 under 35 U.S.C. § 103
The Examiner rejects independent claims 1, 11, and 21 as obvious
over the combination of Dudas, Sohma, and O’Donnell. Final Act. 8–15.
Specifically, the Examiner cites to Dudas as teaching the majority of
limitations of the claims, but relies on Sohma “to illustrate the functionality
of comparing inputted and stored metadata for searches in the same or
similar context” (Final Act. 10) and on O’Donnell “to illustrate the
functionality of the nature of the metadata in the same or similar context”
(id. at 11).
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Appellant argues that the combined references fail to teach or suggest
“finding a content creator that has created the located content based on the
metadata” (the “finding limitation”). Appeal Br. 23–26; Reply Br. 7–9.
According to Appellant, Dudas does not teach or suggest the finding
limitation because, although it “maintains metadata pertaining to users,”
“Dudas does not have any reason to find a user based on metadata because
Dudas has the mix, the user information, and the user contribution already.”
Id. at 24. Appellant adds that “‘filtering’ of Dudas is not the same” as the
finding limitation. Id. at 25. In addition, Appellant contents that Sohma
does not teach or suggest the finding limitation. Id.
This argument does not persuade us of error in the rejection.
Nonobviousness cannot be established by attacking references individually
when the rejection is based on the teachings of a combination of prior art
references. See In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986).
By arguing that Dudas and Sohma each individually fail to teach all aspects
of the finding limitation, Appellant does not address the rejection as
articulated, in which the Examiner relies on certain combined teachings of
Dudas and Sohma. See Final Act. 9–10 (relying on Dudas as teaching
storing metadata related to the author (content creator) and on Sohma
searching based on metadata); Reply 7–9 (same); see also In re Keller, 642
F.2d 413, 425 (CCPA 1981) (“[T]he test [for obviousness] is what the
combined teachings of the references would have suggested to those of
ordinary skill in the art.”). In addition, although Appellant contends no
reference discloses all aspects of the disputed limitations, Appellant does not
identify any alleged error in the Examiner’s individual factual findings
regarding each reference.
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Further, Appellant does not explain why the references do not satisfy
the limitation at issue, and Appellant’s summary conclusions do not show
error. See 37 C.F.R. § 41.37(c)(1)(iv) (“The arguments shall explain why
the examiner erred as to each ground of rejection contested by appellant.”).
The Board interprets Rule 41.37 “to require more substantive arguments in
an appeal brief than a mere recitation of the claim elements and a naked
assertion that the corresponding elements were not found in the prior art.”
In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011); In re Geisler, 116 F.3d
1465, 1470 (Fed. Cir. 1997); In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir.
1984). Here, Appellant merely summarizes Dudas’s and Sohma’s purported
teachings and concludes that these teachings do not correspond to the
finding limitation. Appeal Br. 24–25; Reply Br. 7–9. This is not enough to
qualify as a substantive argument. Moreover, in looking at the rejection, we
find Examiner’s explanations reasonable. We are, therefore, not persuaded
of error in the rejection by Appellant’s conclusory assertions.
Appellant also argues that the combined references fail to teach or
suggest “cause communication of an offer to the content creator” (the “offer
limitation”). Appeal Br. 26–33. In response, the Examiner explains that
“Dudas implicitly discloses / suggests” the offer limitation by describing
making recommendations to users. Ans. 9 (quoting Dudas ¶¶ 26, 53, 86,
106, 116, 141, 185). In the Reply Brief, Appellant “respectfully disagrees,”
without further elaboration, with this explanation. Reply Br. 10. As
discussed above, this contention does not qualify as substantive argument.
See 37 C.F.R. § 41.37(c)(1)(iv). Moreover, in looking at the rejection, we
find Examiner’s explanations reasonable. We are, therefore, not persuaded
of error in the rejection by Appellant’s conclusory assertions.
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Finally, Appellant argues that Dudas and Sohma “may not be
combined without rendering one of the references inoperable.” Appeal Br.
34; Reply Br. 10–11. According to Appellant, “Dudas describes mixes are
available to the online community and can be modified by the online
community” and, therefore, “the main principal described by Sohma of
providing predetermined candidates of metadata may not be combined with
the dynamic metadata of Dudas without rendering one of the references
inoperable.” Id.
We do not find this argument persuasive of error in the rejection.
“The test for obviousness is not whether the features of a secondary
reference may be bodily incorporated into the structure of the primary
reference.” MCM Portfolio LLC v. Hewlett-Packard Co., 812 F.3d 1284,
1294 (Fed. Cir. 2015) (quoting In re Keller, 642 F.2d 413, 425 (CCPA
1981)); In re ICON Health & Fitness, Inc., 496 F.3d 1374, 1382 (Fed. Cir.
2007) (“[W]e do not ignore the modifications that one skilled in the art
would make to a device borrowed from the prior art.”); In re Sneed, 710
F.2d 1544, 1550 (Fed. Cir. 1983) (“[I]t is not necessary that the inventions of
the references be physically combinable to render obvious the invention
under review.”).
Accordingly, we are not persuaded of error in the Examiner’s
rejection of claim 1, 11, and 21 as obvious over the combination of Dudas,
Sohma, and O’Donnell. Appellant does not make any additional arguments
for claims 9 and 10, which depend from claim 1. Appeal Br. 36.
Accordingly, we are not persuaded of error in the Examiner’s rejection of
claims 9 and 10 as obvious over the combination of Dudas, Sohma, and
O’Donnell.
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Claims 2–8, 12–16, and 22–24
The Examiner rejects dependent claims 2, 3, 12, 22, and 23 over
Dudas, Sohma, O’Donnell, and Pattan and dependent claims 4–8, 13–16,
and 24 over Dudas, Sohma, O’Donnell, and Walker. Final Act. 15–24.
Because these claims depend from claims 1, 11, and 21, these rejections
suffer from the same deficiency as that of those claims. Moreover,
Appellant does not make additional arguments for these claims. Appeal Br.
36–37. Accordingly, we do not sustain the Examiner’s rejection of claims
2–8, 12–16, and 22–24.
CONCLUSION
We affirm the Examiner’s rejections.
DECISION SUMMARY
Claims
Rejected
35 U.S.C.
§
Basis/
Reference(s)
Affirmed Reversed
1–16, 21–24 101 Eligibility 1–16, 21–24
1, 9–11, 21 103(a) Dudas, Sohma,
O’Donnell
1, 9–11, 21
2, 3, 12, 22, 23 103(a) Dudas, Sohma,
O’Donnell, Pattan
2, 3, 12, 22,
23

4–8, 13–16, 24 103(a) Dudas, Sohma,
O’Donnell,
Walker
4–8, 13–16,
24

Overall
Outcome
1–16, 21–24
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) (1)(iv). See 37
C.F.R. § 41.50(f).
AFFIRMED