Adobe Inc.

Patent Trials and Appeals Board

Nov 6, 2020

14526250 - (D) (P.T.A.B. Nov. 6, 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.
14/526,250 10/28/2014 Moumita Sinha 4455US01 8265
108982 7590 11/06/2020
SBMC
116 W. Pacific Avenue
Suite 200
Spokane, WA 99201
EXAMINER
PATEL, DIPEN M
ART UNIT PAPER NUMBER
3688
NOTIFICATION DATE DELIVERY MODE
11/06/2020 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 MOUMITA SINHA, RISHIRAJ SAHA ROY,
and RITWIK SINHA
Appeal 2020-001431
Application 14/526,250
Technology Center 3600
Before ERIC S. FRAHM, JOHNNY A. KUMAR, and BETH Z. SHAW,
Administrative Patent Judges.
SHAW, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 7, 9, 11, 13–16, 18, and 20–31. See
Final Act. 1. 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. Appellant identifies the real party in interest as Adobe Inc. Appeal
Br. 2.
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CLAIMED SUBJECT MATTER
The claims are directed to a preference mapping for automated
attribute-selection in campaign design. Claim 22, reproduced below, is
illustrative of the claimed subject matter:
22. A computer-implemented method, comprising:
automatically generating, by one or more computing
devices, a displayable representation as part of automated
attribute selection for a marketing campaign in response to
receiving an input that identifies a product or service and at
least one other product or service, the automatically
generating including;
locating, by the one or more computing devices, review
data from one or more review sites that includes consumer
preference data corresponding to the product or service and the
at least one other product or service;
identifying, by the one or more computing devices, a
plurality of attributes from the located review data, the plurality
of attributes corresponding to the product or service and the at
least one other product or service;
extracting, by the one or more computing devices, user
sentiments associated with the plurality of attributes by
analyzing the consumer preference data;
assigning, by the one or more computing devices, scores
to the plurality of attributes based on the user sentiments;
comparing, by the one or more computing device, the
scores corresponding to the product or service to the scores
corresponding to the at least one other product or service; and
generating, by the one or more computing devices, the
displayable representation that identifies an attribute of the
plurality of attributes to be used in the marketing campaign
based on the comparing.

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REFERENCE
The prior art relied upon by the Examiner is:
Name Reference Date
Corston US 2006/0200341 A1 Sep. 7, 2006
Parnaby US 2013/0018957 A1 Jan. 17, 2013

REJECTIONS
The Examiner withdrew the rejection of claims 13–16, 18, and 20–27
under 35 U.S.C. § 112 in the Answer. Ans. 4.
Claims 7, 9, 11, 13–16, 18, and 20–31 are rejected under 35 U.S.C.
§ 101. Final Act. 9.
Claims 7, 9, 11, 13–16, 18, and 20–31 are rejected under 35 U.S.C.
§ 103 as being unpatentable over Parnaby and Corston. Final Act. 19–31.

OPINION
PRINCIPLES OF LAW
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. Pty. Ltd. 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.,
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566 U.S. 66, 75–77 (2012)). In accordance with that framework, we first
determine what concept the claim is “directed to.” See Alice, 573 U.S. at 219
(“On their face, the claims before us are drawn to the concept of
intermediated settlement, i.e., the use of a third party to mitigate settlement
risk.”); see also Bilski v. Kappos, 561 U.S. 593, 611 (2010) (“Claims 1 and 4
in petitioners’ application explain the basic concept of hedging, or protecting
against risk.”).
Concepts determined to be abstract ideas, and thus patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219–20; Bilski, 561 U.S. at 611);
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
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principle cannot be circumvented by attempting to limit the use of the
formula to a particular technological environment.” Id. (citation omitted)
(citing Benson and Flook); see, e.g., id. at 187 (“It is now commonplace that
an application of a law of nature or mathematical formula to a known
structure or process may well be deserving of patent protection.”).
If the claim is “directed to” an abstract idea, we turn to the second
step of the Alice and Mayo framework, where “we must examine the
elements of the claim to determine whether it contains an ‘inventive
concept’ sufficient to ‘transform’ the claimed abstract idea into a patent-
eligible application.” Alice, 573 U.S. at 221 (quotation marks omitted).
“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 Section 101 Guidance
In January 2019, the U.S. Patent and Trademark Office (USPTO)
published revised guidance on the application of § 101. 2019 Revised Patent
Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019)
(“2019 Revised Guidance”).2 “All USPTO personnel are, as a matter of

2 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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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:
(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 Manual of Patent Examining Procedure
(MPEP) § 2106.05(a)–(c), (e)–(h) (9th ed. Rev. 08.2017, Jan. 2018))
(“Step 2A, Prong Two”).3
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

3 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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(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.

Abstract Idea
For the following reasons, we conclude the claims recite a mental
process, which is identified in the Revised Guidance as one of the
enumerated groupings of abstract ideas. See 2019 Revised Guidance, 84 Fed.
Reg. at 52, 53 (listing “[m]ental process” as one of the “enumerated
groupings of abstract ideas”).
Appellant presents most arguments related to § 101 for independent
claim 22. See Appeal Br. 14–32. Although Appellant nominally argues
independent claims 7 and 13 separately, Appellant refers to the same
arguments as for independent claim 22. See Appeal Br. 32–34. We treat
claim 22 as representative of claims 7, 9, 11, 13–16, 18, 20–31.
The steps of claim 22 include, with italics,
automatically generating, by one or more computing
devices, a displayable representation as part of automated
attribute selection for a marketing campaign in response to
receiving an input that identifies a product or service and at
least one other product or service, the automatically generating
including;
locating, by the one or more computing devices, review
data from one or more review sites that includes consumer
preference data corresponding to the product or service and the
at least one other product or service;
identifying, by the one or more computing devices, a
plurality of attributes from the located review data, the
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plurality of attributes corresponding to the product or service
and the at least one other product or service;
extracting, by the one or more computing devices, user
sentiments associated with the plurality of attributes by
analyzing the consumer preference data;
assigning, by the one or more computing devices, scores
to the plurality of attributes based on the user sentiments;
comparing, by the one or more computing device, the
scores corresponding to the product or service to the scores
corresponding to the at least one other product or service; and
generating, by the one or more computing devices, the
displayable representation that identifies an attribute of the
plurality of attributes to be used in the marketing campaign
based on the comparing.

Claim 22 is similar to claims that courts have concluded recite a
mental process. See Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d
1307, 1318 (Fed. Cir. 2016) (“[W]ith the exception of generic computer-
implemented steps, there is nothing in the claims themselves that foreclose
them from being performed by a human, mentally or with pen and paper.”),
quoted in 2019 Revised Guidance, 84 Fed. Reg. at 52 n.14; Mortg. Grader,
Inc. v. First Choice Loan Servs. Inc., 811 F.3d 1314, 1324 (Fed. Cir. 2016)
(holding that computer-implemented method for “anonymous loan
shopping” was an abstract idea because it could be “performed by humans
without a computer”); quoted in 2019 Revised Guidance, 84 Fed. Reg. at 52
n.14.
A person can perform the above-quoted steps of claim 22 by using his
or her mind (or pen and paper) in the claimed manner. For example, a person
can “generate” “ a representation” “for a marketing campaign in response to
receiving an input that identifies a product or service and at least one other
product or service,” using pen and paper. A person can locate “review data
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from one or more review sites that includes consumer preference data
corresponding to the product or service and the at least one other product or
service,” using his or her mind or pen and paper. A person can identify “a
plurality of attributes from the located review data, the plurality of attributes
corresponding to the product or service and the at least one other product or
service,” using his or her mind or pen and paper. A person can extract “user
sentiments associated with the plurality of attributes by analyzing the
consumer preference data,” using his or her mind or pen and paper. A
person can assign “scores to the plurality of attributes based on the user
sentiments,” using his or her mind or pen and paper. A person can compare
the scores corresponding to the product or service to the scores
corresponding to the at least one other product or service,” using his or her
mind or pen and paper. Cf. CyberSource Corp. v. Retail Decisions, Inc., 654
F.3d 1366, 1372–73 (Fed. Cir. 2011) (noting that a recited step that
constructed a map of credit card numbers could be performed by merely
writing down a list of credit card transactions made from a particular IP
address.); see also In re Grams, 888 F.2d 835, 837 n.1 (Fed. Cir. 1989)
(“Words used in a claim operating on data to solve a problem can serve the
same purpose as a formula.”); Elec. Power Grp., LLC v. Alstom S.A., 830
F.3d 1350, 1354 (Fed. Cir. 2016) (noting that analyzing information by steps
people go through in their minds, or by mathematical algorithms, without
more, are essentially mental processes within the abstract idea category);
Digitech Image Tech., LLC v. Elecs. for Imaging, Inc., 758 F.3d 1344, 1351
(Fed. Cir. 2014) (“Without additional limitations, a process that employs
mathematical algorithms to manipulate existing information to generate
additional information is not patent eligible.”); Benson, 409 U.S. 63 (holding
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ineligible claims involving a mathematical algorithm and directed to
converting binary-coded-decimal (BCD) numerals into pure binary numerals
for use with a computer). Accord CyberSource, 654 F.3d at 1375 (“That
purely mental processes can be unpatentable, even when performed by a
computer, was precisely the holding of the Supreme Court in [Benson].”).
Therefore, the limitations fall squarely within the mental processes
category of the agency’s guidelines and, therefore, recite an abstract idea.
See 2019 Revised Guidance, 84 Fed. Reg. at 52.
In accordance with the 2019 Revised Guidance, and looking to MPEP
§§ 2106.05(a)–(c) and (e)–(h), we determine that the additional elements of
claim 22, both individually and as an ordered combination, do not integrate a
judicial exception, in this case the abstract idea of a fundamental economic
practice or a mental process, into a practical application. Claim 22 is
directed to the implementation of the abstract idea on a generic computer
system.
Here, the the recited “one ore more computing devices” is the only
recited element beyond the abstract idea, but this additional element does not
integrate the abstract idea into a practical application when reading claim 22
as a whole. First, to the extent Appellant contends that the claimed invention
is rooted in technology because it is ostensibly directed to a technical
solution, we disagree. Even assuming, without deciding, that claimed
invention can generate a displayable representation as part of attribute
selection for a marketing campaign faster than doing so manually, any speed
increase comes from the capabilities of the generic computer components—
not the recited process itself. See Spec. Fig. 1, ¶ 21 (“The computing
devices, for example, may be configured as a desktop computer, a laptop
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computer, a mobile device (e.g., assuming a handheld configuration such as
a tablet or mobile phone), and so forth.”); see also FairWarning IP, LLC v.
Iatric Sys., Inc., 839 F.3d 1089, 1095 (Fed. Cir. 2016) (citing Bancorp
Servs., LLC v. Sun Life Assurance Co. of Canada (U.S.), 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.’”). Like the claims in FairWarning, the focus of
claim 22 is not on an improvement in computer processors as tools, but on
certain independently abstract ideas that use generic computing components
as tools. See FairWarning, 839 F.3d at 1095 (citations and quotation marks
omitted).
As recognized by the Supreme Court, “the mere recitation of a generic
computer cannot transform a patent ineligible abstract idea into a patent-
eligible invention.” Alice, 573 U.S. at 223; see id. at 225 (concluding claims
“simply instruct[ing] the practitioner to implement the abstract idea of
intermediated settlement on a generic computer” are not patent eligible); see
also Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715–16 (Fed. Cir. 2014)
(claims merely reciting abstract idea of using advertising as currency as
applied to particular technological environment of the Internet are not patent
eligible); Accenture Global Servs., GmbH v. Guidewire Software, Inc., 728
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F.3d 1336, 1344–45 (Fed. Cir. 2013) (claims reciting “generalized software
components arranged to implement an abstract concept [of generating
insurance-policy-related tasks based on rules to be completed upon the
occurrence of an event] on a computer” are not patent eligible); Dealertrack,
Inc. v. Huber, 674 F.3d 1315, 1333–34 (Fed. Cir. 2012) (“Simply adding a
‘computer aided’ limitation to a claim covering an abstract concept, without
more, is insufficient to render [a] claim patent eligible” (internal citation
omitted)).
Nor is this a case involving eligible subject matter as in DDR
Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014). There,
instead of a computer network operating in its normal, expected manner by
sending a website visitor to a third-party website apparently connected with
a clicked advertisement, the claimed invention in DDR generated and
directed the visitor to a hybrid page that presented (1) product information
from the third party, and (2) visual “look and feel” elements from the host
website. DDR, 773 F.3d at 1258–59. Given this particular Internet-based
solution, the court held that the claimed invention did not merely use the
Internet to perform a business practice known from the pre-Internet world,
but rather was necessarily rooted in computer technology to overcome a
problem specifically arising in computer networks. Id. at 1257.
That is not the case here. As noted previously, Appellant’s claimed
invention, in essence, is directed to generating a displayable representation
as part of attribute selection for a marketing campaign —albeit using
computer-based components to achieve that end. The claimed invention here
is not necessarily rooted in computer technology in the sense contemplated
by DDR, where the claimed invention solved a challenge particular to the
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Internet. Although Appellant’s invention uses a computer system, as noted
previously, the claimed invention does not solve a challenge particular to the
computing components used to implement this functionality.
We reach the same conclusion regarding Appellant’s reliance on Core
Wireless Licensing S.A.R.L. v. LG Electronics, Inc., 880 F.3d 1356 (Fed. Cir.
2018). Appeal Br. 20–21. There, the court held eligible claims reciting a
computing device that could display an application summary window that
was not only reachable directly from the main menu, but could also display a
limited list of selectable functions while the application was in an un-
launched state. Core Wireless, 880 F.3d at 1360–63. Upon selecting a
function, the device would then launch the application and initiate the
selected function. Id. at 1360. In reaching its eligibility conclusion, the court
noted that the claimed invention was directed to an improved user interface
for computing devices that used a particular manner of summarizing and
presenting a limited set of information to the user, unlike conventional user
interface methods that displayed a generic index on a computer. Id. at 1362–
63.
That is not the case here. To the extent that Appellant contends that
the claimed invention is directed to such improvements in computer
capabilities (see Appeal Br. 20–21), there is no persuasive evidence on this
record to substantiate such a contention.
Appellant’s reliance on the decision in Amdocs (Israel) Ltd. v. Openet
Telecom, Inc., 841 F.3d 1288 (Fed. Cir. 2016) (Appeal Br. 24) is unavailing.
There, the court held that a claim directed to using accounting information
with which a network accounting record is correlated to enhance the record
was held eligible because the claim involved an unconventional
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technological solution (enhancing data in a distributed fashion) to a
technological problem (massive record flows which previously required
massive databases). Although the court recognized that this solution used
generic components, the recited enhancing function necessarily required
these generic components to operate in an unconventional manner to achieve
an improvement in computer functionality. Id. at 1300–01. Notably, the
recited enhancement in Amdocs depended on not only the network’s
distributed architecture, but also on the network devices and “gatherers”
working together in a distributed environment. Id. at 1301. In reaching its
eligibility conclusion, the court noted the patent’s emphasis on the
drawbacks of previous systems where all network information flowed to one
location making it very difficult to keep up with massive record flows from
network devices and requiring huge databases. Id. at 1300. The court also
noted similar network-based drawbacks that were overcome by similar
unconventional distributed solutions in other patents at issue. See id. at
1305–06.
That is not the case here. Although the claimed invention uses
conventional computing components that store and process data, there is no
persuasive evidence on this record to show that these generic components
operate in an unconventional manner to achieve an improvement in
computer functionality as in Amdocs.
Nor is this invention analogous to that which the court held eligible in
McRO, Inc. v. Bandai Namco Games America, Inc., 837 F.3d 1299 (Fed.
Cir. 2016) despite Appellant’s arguments to the contrary (Reply Br. 4).
There, the claimed process used a combined order of specific rules that
rendered information in a specific format that was applied to create a
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sequence of synchronized, animated characters. McRO, 837 F.3d at 1315.
Notably, the recited process automatically animated characters using
particular information and techniques—an improvement over manual three-
dimensional animation techniques that was not directed to an abstract idea.
Id. at 1316.
But unlike the claimed invention in McRO that improved how the
physical display operated to produce better quality images, the claimed
invention here merely uses generic computing components to generate a
displayable representation as part of attribute selection for a marketing
campaign. This generic computer implementation is not only directed to
mental processes, but also does not improve the quality of animated
characters, as was the case in McRO. See SAP Am. v. InvestPic, LLC, 898
F.3d 1161, 1167 (Fed. Cir. 2018) (distinguishing McRO).
Accordingly, the claim as a whole does not integrate the abstract idea
into a practical application because the claim limitations do not impose any
meaningful limits on practicing the abstract idea. Stated differently, the
claims do not (1) improve the functioning of a computer or other technology,
(2) are not applied with any particular machine (except for generic computer
components), (3) do not effect a transformation of a particular article to a
different state, and (4) are not applied in any 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(a)–(c), (e)–(h).
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Inventive Concept
Because we determine that claim 22 is “directed to” an abstract idea,
we next consider whether claim 22 recites an “inventive concept.” The
Examiner determined that claim 22 does not recite an inventive concept
because the additional elements in the claim do not amount to “significantly
more” than an abstract idea. See Final Act. 9.
We agree with the Examiner’s determination in this regard. Using
generic computer components to perform abstract ideas does not provide the
necessary inventive concept. See Alice, 573 U.S. at 223 (“[T]he mere
recitation of a generic computer cannot transform a patent-ineligible abstract
idea into a patent-eligible invention.”). Thus, the elements of claim 22 do not
amount to “significantly more” than the abstract idea itself.
To the extent Appellant contends that the recited limitations, including
those detailed above in connection with Alice step one, add significantly
more than the abstract idea to provide an inventive concept under
Alice/Mayo step two, these limitations are not additional elements beyond
the abstract idea, but rather are directed to the abstract idea as noted
previously. See 2019 Revised Guidance, 84 Fed. Reg. at 56 (instructing that
additional recited elements should be evaluated in Alice/Mayo step two to
determine whether they (1) add specific limitations that are not well-
understood, routine, and conventional in the field, or (2) simply append
well-understood, routine, and conventional activities previously known to
the industry (citing MPEP § 2106.05(d)). These elements form part of the
recited abstract ideas and thus are not “additional elements” that “‘transform
the nature of the claim’ into a patent-eligible application.” Alice, 573 U.S. at
217 (quoting Mayo, 566 U.S. at 78); see also 2019 Revised Guidance, 84
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Fed. Reg. at 55 n.24 (“USPTO guidance uses the term ‘additional elements’
to refer to claim features, limitations, and/or steps that are recited in the
claim beyond the identified judicial exception.” (Emphasis added)).
To the extent Appellant contends that the claimed invention is rooted
in technology because it is ostensibly directed to a technical solution (see
Reply Br. 5), we disagree. Even assuming, without deciding, that the
claimed invention can generate a displayable representation as part of
attribute selection for a marketing campaign faster than before, any speed
increase comes from the capabilities of the generic computer components—
not the recited process itself. See FairWarning IP, 839 F.3d at 1095 (citing
Bancorp Servs., 687 F.3d at 1278 (“[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 Erie
Indemnity Co., 711 F. App’x at 1017 (“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.’”). Like the claims in
FairWarning, the focus of claim 22 is not on an improvement in computer
processors as tools, but on certain independently abstract ideas that use
generic computing components as tools. See FairWarning, 839 F.3d at 1095
(citations and quotation marks omitted).
Limiting an abstract concept of generate a displayable representation
as part of attribute selection for a marketing campaign, to a general purpose
computer having generic components, such as the “one or more computing
devices” recited in Appellant’s claims, does not make the abstract concept
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patent-eligible under 35 U.S.C. § 101. As recognized by the Supreme Court,
“the mere recitation of a generic computer cannot transform a patent-
ineligible abstract idea into a patent-eligible invention.” Alice, 573 U.S. at
223; see id. at 225 (concluding claims “simply instruct[ing] the practitioner
to implement the abstract idea of intermediated settlement on a generic
computer” are not patent eligible); see also Ultramercial, 772 F.3d at 715–
16 (claims merely reciting abstract idea of using advertising as currency as
applied to particular technological environment of the Internet are not patent
eligible); Accenture, 728 F.3d at 1344–45 (claims reciting “generalized
software components arranged to implement an abstract concept [of
generating insurance-policy-related tasks based on rules to be completed
upon the occurrence of an event] on a computer” are not patent eligible);
Dealertrack, 674 F.3d at 1333–34 (“Simply adding a ‘computer aided’
limitation to a claim covering an abstract concept, without more, is
insufficient to render [a] claim patent eligible” (internal citation omitted)).
Accordingly, we sustain the Examiner’s rejection of the pending
claims under 35 U.S.C. § 101 as directed to patent-ineligible subject matter.

Section 103
Appellant argues “claim 22 recites features that are performed as part
of automatically generating (e.g., without human intervention) a displayable
representation in response to receiving an input that identifies a product or
service and another product or service.” Appeal Br. 36. The Examiner
responds, however, that the Examiner’s position is the same as the district
court in the Collegenet, Inc. vs. Applyyourself, Inc., 418 F.3d 1225 (Fed. Cir.
2005) ruling, i.e., that “automatically” means “once initiated, the function is
Appeal 2020-001431
Application 14/526,250

19
performed by a machine, without the need for manually performing the
function.” Ans. 4–5. Appellant does not dispute this construction in the
Reply Brief. See Reply Br. 7–9.
Appellant argues, however, that Parnaby’s “topic stack” is a group of
topics that are user selected, “which fails to provide a basis for ‘the
automatically generating including’ . . . ‘identifying a plurality of attributes
from the located review data,’ as claimed.” Appeal Br. 38; Reply Br. 7.
Appellant argues this is because Parnaby’s topics are searched for by user
input. Id. Appellant argues “[t]he asserted references describe a process
involving a series of human inputs that do not arrive at the attribute, but
rather, relies on user identification of an attribute, e.g., whether a product’s
appearance is appealing.” Reply Br. 7.
In response to Appellant’s arguments, the Answer provides additional
findings, analysis and explanation in support of the Examiner’s finding that
Parnaby teaches the disputed claim limitations. Compare Ans. 21–22 (citing,
e.g., Parnaby ¶¶ 41, 42, 46, 47, 66, 70–72) with Final Act. 25–26. Appellant
does not respond to each of the Examiner’s findings. For example, paragraph
46 of Parnaby describes how the system can “present related topics that may
be of interest to the user.” See Reply Br. 4. Thus, contrary to Appellant’s
attorney arguments, Parnaby is not limited to only requiring a user
identification of all topics, or to requiring a user to organize all topics. Id. at
6, 7. Rather, Parnaby describes various examples of topic identification,
such as:
If the present invention determines that the user’s activity and jab or
fab behavior exhibits any type of pattern, the system of the
present invention can then intelligently match topics of interest
or related topics to present to the user. In one embodiment,
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Application 14/526,250

20
a pattern of multiple instances of user behavior is not
required, and the system of the present invention can, for
example, present other topics or information to the user based upon a
single interaction with the system.

Parnaby ¶ 46. Consequently, we are not persuaded of error in the Examiner’s
findings.
Appellant also argues that Parnaby fails to teach automatically
generating a “displayable representation that identifies an attribute of the
plurality of attributes to be used in the marketing campaign” in “response to
receiving an input that identifies a product or service and at least one other
product or service” or “based on the comparing.” Appeal Br. 39–42.
However, the Examiner explains how Corston more expressly teaches the
displayable representation. Ans. 21 (citing Corston, Fig. 3, ¶ 71); see also
Final Act. 24–25. The Examiner additionally finds that Parnaby teaches that
an “individual consumer user can pull together related or unrelated topics
into an array or album in order to compare and contrast them and look at the
positive and negative sentiment statistics of the stacked topics.” Ans. 21
(citing Parnaby ¶ 40) (emphasis omitted). Appellant does not persuade us of
error or respond to these findings. See Reply Br. 7–9.
Accordingly, we sustain the § 103 rejection of claim 22. For the same
reasons, and based on the additional findings and conclusions presented in
the Final Office Action and Answer, with which we agree and adopt, we
sustain the § 103 rejection of claims 7, 9, 11, 13–16, 18, 20, 21, and 23–31.

CONCLUSION
The Examiner’s rejections are affirmed.
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Application 14/526,250

21
More specifically, we affirm the rejections of claims 7, 9, 11, 13–16,
18, and 20–31 under 35 U.S.C. §§ 101 and 103.
DECISION SUMMARY
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
7, 9, 11, 13–
16, 18, 20–
31
101 Eligibility 7, 9, 11, 13–
16, 18, 20–
31

7, 9, 11, 13–
16, 18, 20–
31
103 Parnaby, Corston 7, 9, 11, 13–
16, 18, 20–
31

Overall
Outcome
7, 9, 11, 13–
16, 18, 20–
31

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