2020000367 (P.T.A.B. Jul. 2, 2021)

Alex Holtz et al.

Patent Trials and Appeals BoardJul 2, 2021

2020000367 (P.T.A.B. Jul. 2, 2021)

UNITED STATES PATENT AND TRADEMARK OFFICE UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O. Box 1450 Alexandria, Virginia 22313-1450 www.uspto.gov APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 10/247,783 09/20/2002 Alex Holtz 033163-00528 2370 149625 7590 07/02/2021 Arent Fox, LLP and Grass Valley 555 West Fifth Street 48th Floor Los Angeles, CA 90013 EXAMINER DURAN, ARTHUR D ART UNIT PAPER NUMBER 3688 NOTIFICATION DATE DELIVERY MODE 07/02/2021 ELECTRONIC Please find below and/or attached an Office communication concerning this application or proceeding. The time period for reply, if any, is set in the attached communication. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address(es): patentdocket@arentfox.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte ALEX HOLTZ, MARCEL LAROCQUE, JOHN R. BENSON, WILLIAM H. COUCH, CHARLES M. HOEPPNER, BENJAMIN JAY MCALLISTER, ROBERT J. SNYDER, and KEITH GREGORY TINGLE Appeal 2020-000367 Application 10/247,783 Technology Center 3600 Before MAHSHID D. SAADAT, JAMES W. DEJMEK, and STACY B. MARGOLIES, Administrative Patent Judges. Opinion for the Board filed by Administrative Patent Judge SAADAT. Opinion dissenting in part filed by Administrative Patent Judge DEJMEK. SAADAT, Administrative Patent Judge. Appeal 2020-000367 Application 10/247,783 2 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 1–6, 9–19, 22, 23, 25–27, and 30–96.2 We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. CLAIMED SUBJECT MATTER Appellant describes the disclosed invention as being related to “information management, and more specifically, to pricing and distributing media over a communications network.” Spec. ¶ 3. According to the Specification, as media distribution moves toward multi-format distribution methods and channels, traditional approaches to advertising become ineffective. The Specification notes that, considering television broadcasters “sell advertisements based on ‘linear avails,’ before, during, and after a show typically known as commercial breaks,” “the Internet (or any other ‘digital’ bi-directional communication and distribution method such as multicasting) will require different advertisement management and sales techniques to meet the needs of integrated ‘live,’ ‘as live’ (time shifted) or ‘on-demand’ programming.” Id. ¶ 5. Claim 1, reproduced below, illustrates the claimed subject matter with the disputed claim limitation in italics: 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42(a) (2018). Appellant identifies the real party in interest as GRASS VALLEY CANADA. Appeal Br. 5. 2 Claims 7, 8, 20, 21, 24, 28, and 29 have been canceled and claims 97–111 have been withdrawn from consideration. See App. Br. 5. Appeal 2020-000367 Application 10/247,783 3 1. A system for distributing advertising to multiple viewers not only across a broadcast network of media channels, but also across a non-broadcast, client-server network, comprising: sales means for selecting at least one advertisement in accordance with a predetermined multi-platform advertising campaign for available viewing by a plurality of viewers not only linearly across a broadcast network of media channels having a first communications protocol, but also non-linearly across a non-broadcast, client-server network having a second communications protocol different from the first communications protocol; accounting means for setting a price structure for said at least one selected advertisement in accordance with the predetermined multi-platform advertising campaign for available viewing by the plurality of viewers not only linearly across the broadcast network of media channels, but also non- linearly across the non-broadcast, client-server network; trafficking means for controlling distribution of said at least one selected advertisement for available viewing by the plurality of viewers not only linearly across the broadcast network of media channels, but also non-linearly across the non-broadcast, client-server network; wherein the trafficking means is configured to generate an availabilities list of available time spots for advertisements to be not only linearly integrated with a video media production to form a first video media-advertisement production combination to be broadcast across the broadcast network of media channels, but also non-linearly integrated with the video media production to form a second video media-advertisement production combination to be displayed across the non- broadcast, client-server network; wherein the trafficking means is further configured to populate the availabilities list with said at least one selected advertisement in accordance with the predetermined multi- platform advertising campaign for available viewing by the plurality of viewers not only linearly across a broadcast Appeal 2020-000367 Application 10/247,783 4 network of media channels, but also non-linearly across a non- broadcast, client-server network; wherein the trafficking means is further configured to linearly integrate, encode, and link one or more of said at least one selected advertisement with the video media production to form the first video media-advertisement production combination; wherein the trafficking means is further configured to non-linearly integrate, encode, and link one or more of said at least one selected advertisement with the video media production to form the second video media-advertisement production combination; wherein the first video media-advertisement production combination comprises a same media content of the video media production as the second video media-advertisement production combination; wherein the trafficking means includes means for generating production coded metadata when the video media production is generated and encoding the video media production with the production coded metadata to identify the available time spots of the video media production for advertisements to be not only linearly integrated with the video media production to form the first media-advertisement production combination to be broadcast across the broadcast network of media channels, but also non-linearly integrated within the video media production to form the second video media-advertisement production combination to be displayed across the non-broadcast, client-server network; wherein the production coded metadata comprises a filename identifier, a path to storage location identifier, a path to an auxiliary client-server uniform resource location information storage location identifier, a segment mark identifier that identifies different segments of the video media production, a segment name identifier, a segment content category identifier, and a segment runtime length identifier; wherein the trafficking means is configured to convert, format, compress, packetize and multiplex the video media Appeal 2020-000367 Application 10/247,783 5 production into hypertext markup language so as to form the second video media-advertisement production combination to be displayed across the non-broadcast, client-server network; wherein the second video media-advertisement production combination comprises an enhanced media production that includes the production coded metadata and the auxiliary client-server uniform resource location information, such that the production coded metadata configures a viewing device that receives the second video media-advertisement production combination across the non- broadcast, client-server network to automatically access the integrated, encoded, and linked one or more selected advertisements using the auxiliary client-server uniform resource location information to be displayed non-linearly with the enhanced media production; and wherein the trafficking means is configured to control distribution of the first and second video media-advertisement production combinations across a distributed and hierarchical network of national and local broadcast and non-broadcast media delivery nodes each configured to control distribution of the first and second video media-advertisement production combinations based on not only a national advertisement campaign, but also based on a local advertisement campaign. Appeal Br. 62–64 (Claims App.). REFERENCES The prior art relied upon by the Examiner is: Name Reference Date Gerace US 5,848,396 Dec. 8, 1998 Meyer US 6,289,378 B1 Sept. 11, 2001 Flickinger US 2001/0032333 A1 Oct. 18, 2001 Du Val US 6,832,388 B1 Dec. 14, 2004 Appeal 2020-000367 Application 10/247,783 6 REJECTIONS3 Claims 1–4, 6, 9–19, 22, 23, 25–27, 30–39, 41, 44–49, and 50–96 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Gerace, Flickinger, and Du Val. Final Act. 10–36. Claims 40, 42, and 43 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Gerace, Flickinger, Du Val, and the Examiner’s Official Notice. Final Act. 37–40. Claim 5 stands rejected under 35 U.S.C. § 103(a) as unpatentable over Gerace, Flickinger, Du Val, and Meyer. Final Act. 40–42. ANALYSIS We have reviewed the Examiner’s rejections in light of Appellant’s contentions in the Appeal Brief and the Reply Brief that the Examiner has erred, as well as the Examiner’s response to Appellant’s arguments in the Appeal Brief. As discussed below, we are persuaded by Appellant’s contentions of Examiner error. Contentions Appellant argues that the Examiner’s obviousness rejection is erroneous. App. Br. 39–60. Appellant contends the Examiner erred in finding Gerace or the proposed combination teaches or suggests the claim limitation “wherein the second video media-advertisement production combination comprises an enhanced media production that includes the production coded metadata and the auxiliary client-server uniform resource 3 The Examiner has withdrawn the 35 U.S.C. § 101 rejection of claims 1–6, 9–19, 22, 23, 25–27, and 30–96. See Ans. 3; Final Act. 8–10. Appeal 2020-000367 Application 10/247,783 7 location information, such that the production coded metadata configures a viewing device.” Id. at 40. Starting with the teachings of Gerace, Appellant argues the reference is concerned with determining the behavioral or psychological profile of a user based on agate information and storing such profile, which is used subsequently to generate screen views for displaying advertisements selected based on the user profile. See Appeal Br. 45–46 (citing Gerace, Fig. 2, 2:4– 6, 2:13–15, 3:57–62, 5:15–26). Appellant argues that Gerace’s teaching of “directly transmitting screen views with advertisements to end users via web server 27” is different from the claimed “‘production coded metadata’ that ‘configures a viewing device that receives the second video media- advertisement production combination across the non-broadcast, client- server network to automatically access the integrated, encoded, and linked one or more selected advertisements using the auxiliary client-server uniform resource location information.’” Id. at 47 (emphasis omitted). Next, Appellant asserts that providing a hyperlink in Gerace only results in a user manually selecting different hyperlinks to access other web pages rather than the recited production coded metadata for configuring a viewing device to access the integrated, encoded, and linked advertisement. Id. at 47–48 (citing Gerace 10:30–40). Appellant also argues that the “stock data” example described in Gerace (see Gerace 14:23–36) would be recognized by a skilled artisan as providing “user-controlled navigation between webpages of interest to the user and as decided by the user,” or merely providing hyperlinks that enable “a user to navigate between different webpages of content.” Appeal Br. 49 (emphases omitted). According to Appellant, modifying Gerace to configure end user devices to Appeal 2020-000367 Application 10/247,783 8 automatically access additional content is “the antithesis of what Gerace actually teaches (i.e., user controlled navigation).” Id. at 49–50. In response, with respect to the recited feature of “wherein the second video media-advertisement production comprises an enhanced media production,” the Examiner finds that Appellant’s disclosure in paragraph 73 describes the enhanced media “as having a URL based ad or ad associated with it.” Ans. 9. Based on this finding and the determination that “the second video media-ad production is the non-linear, non-broadcast content or website/Internet content,” the Examiner interprets the “enhanced media production” as “presenting a website content and an associated URL based ad along with it.” Id. at 9–10. With respect to the claim requirement that the enhanced media production “includes the production coded metadata and the auxiliary client- server uniform resource location information,” the Examiner relies on disclosures in Gerace. Id. at 11–12. Specifically, the Examiner points to Figure 3a as disclosing showing content with ad content. Id. at 11. The Examiner also relies on Gerace’s disclosure of displaying stock data with a banner ad that has a hyperlink/URL as “non-linear/website/Internet content that is enhanced with a related URL based ad.” Id. at 11 (citing Gerace 14:25–36). The Examiner “interprets the banner ad that gets its info from the Internet to function as configuring the viewing device to get ad info.” Id. at 11–12. Alternatively, the Examiner finds that “the URL getting further information functions as configuring the user/viewing device to access the linked to ad/content that is presented along with the main content.” Id. at 11–12 (citing Gerace 8:12–20, 14:25–36). Appeal 2020-000367 Application 10/247,783 9 Discussion We are persuaded that the Examiner does not show sufficiently how the combination teaches a second video media-advertisement production combination comprising an enhanced media production that includes production coded metadata such that the metadata configures a viewing device as claimed, as recited in claim 1. According to the claim, the production coded metadata “comprises a filename identifier, a path to storage location identifier, a path to an auxiliary client-server uniform resource location information storage location identifier, a segment mark identifier that identifies different segments of the video media production, a segment name identifier, a segment content category identifier, and a segment runtime length identifier.” Appeal Br. 63–64 (Claims App.). The Examiner finds that Gerace alone discloses an enhanced media production that includes the production coded metadata and the auxiliary client-server uniform resource location information. Ans. 11–12; Final Act. 17–18 (citing Gerace, Fig. 3a, 8:25–33, 10:30–40, 14:25–35). As explained above, the Examiner relies Gerace’s disclosure of displaying stock data with a banner ad that has a hyperlink/URL. Ans. 11–12. The Examiner relies on Gerace’s disclosure of a banner ad appearing at the top of a screen reading “Brought to you by Dean Witter.” Final Act. 17–18 (citing, e.g., Gerace 14:25–35); Ans. 11 (citing same). Gerace discloses that “[t]he user is able to select/click on this banner to effectively request more Dean Witter information.” Gerace, 14:30–32. According to Gerace, “the screen view contains a hyperlink formed of the URL for Dean Witter information on the internet.” Id. at 14:32–36. Appeal 2020-000367 Application 10/247,783 10 The Examiner appears to rely on Gerace’s displayed URL as the recited “auxiliary client-server uniform resource location information.” See Ans. 11–12. However, the Examiner does not map the recited production coded metadata to any feature disclosed in Gerace, nor explain how Gerace’s disclosure of providing a URL that is clicked on by a user, without disclosing additional components or functionalities associated with any metadata, corresponds to the recited “second video media-advertisement production combination comprises an enhanced media production that includes the production coded metadata and the auxiliary client-server uniform resource location information.” Accordingly, the Examiner has failed to set forth sufficient persuasive evidence or reasoning that Gerace (alone or in combination with the other references) teaches or suggests the enhanced media production recited in claim 1—namely, that the enhanced media production “includes the production coded metadata and the auxiliary client-server uniform resource location information, such that the production coded metadata configures a viewing device . . . to automatically access the . . . selected advertisement(s).” The Examiner relies on the same analysis for the similar limitation recited in independent claims 11, 30, and 77 (see Final Act. 10, 17–18; Ans. 9–12), and we therefore conclude that the Examiner’s showing is insufficient for those claims as well. CONCLUSION In view of the above analysis, we are persuaded that the Examiner erred in rejecting claims 1, 11, 30, and 77 as obvious. Accordingly, we do not sustain the obviousness rejection of independent claims 1, 11, 30, and 77, as well as claims 2–4, 6, 9, 10, 12–19, Appeal 2020-000367 Application 10/247,783 11 22, 23, 25–27, 31–39, 41, 44–49, 50–76, and 78–96 dependent therefrom, over Gerace, Flickinger, and Du Val. We also do not sustain the rejection of the remaining claims (claims 5, 40, 42, and 43) because the Examiner did not identify any teachings based on Official Notice or in Meyer to overcome the deficiencies of the prior art discussed above. DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1–4, 6, 9– 19, 22, 23, 25–27, 30– 39, 41, 44– 49, 50–96 103(a) Gerace, Flickinger, Du Val 1–4, 6, 9– 19, 22, 23, 25–27, 30– 39, 41, 44– 49, 50–96 40, 42, 43 103(a) Gerace, Flickinger, Du Val, Official Notice 40, 42, 43 5 103(a) Gerace, Flickinger, Du Val, Meyer 5 Overall Outcome 1–6, 9–19, 22, 23, 25– 27, 30–96 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). REVERSED Appeal 2020-000367 Application 10/247,783 12 DEJMEK, Administrative Patent Judge, dissenting in part. I join the Majority’s decision reversing the Examiner’s decision to reject claims 1–6, 9–19, 22, 23, 25–27, and 30–96 under pre-AIA 35 U.S.C. § 103(a). As noted by the Majority (see Maj. Op. n.3), in the Answer, the Examiner withdrew the rejection under 35 U.S.C. § 101 of the pending claims, but did not present any reasoning to explain the withdrawal. See Ans. 3. I write separately because I would conclude that, at least, claim 11 is directed to patent-ineligible subject matter without significantly more. In addition, I would also find that at least claim 11 is deficient under 35 U.S.C. § 112, second paragraph. The Supreme Court’s two-step framework guides my analysis of patent eligibility under 35 U.S.C. § 101. Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 217 (2014). In addition, the Office has published revised guidance for evaluating subject matter eligibility under 35 U.S.C. § 101, specifically with respect to applying the Alice framework. USPTO, 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (“Office Guidance”).4 If a claim falls within one of the statutory categories of patent eligibility (i.e., a process, machine, manufacture, or composition of matter), then the first inquiry is whether the claim is directed to one of the judicially recognized exceptions (i.e., a law of nature, a natural phenomenon, or an abstract idea). Alice, 573 U.S. at 217. As part of this inquiry, I first “look at the ‘focus of the claimed advance over the prior art’ to determine if the 4 The Office Guidance, as well as guidance set forth in the Berkheimer Memorandum, have been incorporated into the latest revision of the Manual of Patent Examination Procedure (“MPEP”) §§ 2103–2106.07(c) (9th ed., Rev. 10.2019, June 2020). Appeal 2020-000367 Application 10/247,783 13 claim’s ‘character as a whole’ is directed to excluded subject matter.” Affinity Labs of Tex., LLC v. DIRECTV, LLC, 838 F.3d 1253, 1257–58 (Fed. Cir. 2016). Per the Office Guidance, this first inquiry (“Step 2A”) has two prongs of analysis: (i) does the claim recite (i.e., set forth or describe) a judicial exception (e.g., an abstract idea), and (ii) if so, is the judicial exception integrated into a practical application. MPEP § 2106.04(II)(A). Under the Office Guidance, if the judicial exception is integrated into a practical application, the claim is patent eligible under § 101. MPEP § 2106.04(d). If, however, the claim is directed to a judicial exception (i.e., recites a judicial exception and does not integrate the exception into a practical application), the next step (“Step 2B”) is to determine whether any element, or combination of elements, amounts to significantly more than the judicial exception. Alice, 573 U.S. at 217; see also MPEP § 2106.05. Here, under Step 2A, prong 1, I would conclude claim 11 recites an abstract idea. More particularly, the claim generally describes creating and managing an advertising campaign across different distribution networks. This is consistent with how Appellant describes the claimed invention. See Spec. ¶ 7 (describing the invention as a method “to enable the automation and control of the functions necessary to manage advertisement sales, content management, and administrative processes for media production environments”), ¶ 57 (describing the invention as enabling advertisements, in various formats, to be linked and integrated with media content and transmitted over different distribution networks (i.e., broadcast and non- broadcast)), ¶ 69 (explaining the invention “enables advertisements, in various formats, to be linked and integrated with a media production”), ¶ 83 (describing the invention as enabling different applications, such as Appeal 2020-000367 Application 10/247,783 14 broadcast television, Internet broadband, or digital broadcasting, “to manage and automate the distribution of advertisements to a plurality of vertical markets”), ¶ 116 (identifying factors considered as part of an advertising campaign), ¶ 118 (describing the traffic module within an advertising network as managing the distribution of linear and non-linear advertising over different media markets), ¶ 142 (describing the presentation of media production enhanced with linear and non-linear advertising); see also Appeal Br. 25 (describing the invention as being directed to “distributing advertisements not only across a broadcast network of media channels, but also across a non-broadcast client-server network”). Moreover, my characterization of the claim as a whole is consistent with the Examiner’s. Cf. Final Act. 8 (describing the claims as “distributing first and second ad production across networks”).5 Consistent with our Office Guidance and case law, I would conclude that the concept of creating and managing an advertising campaign across different distribution networks is a certain method of organizing human activity (e.g., a commercial interaction, such as advertising, marketing, or sales activities)—i.e., an abstract idea. See MPEP § 2106.04(a)(2)(II)(B). 5 Although I describe the abstract idea slightly differently than the Examiner, the Examiner’s characterization of the idea is not erroneous. “An abstract idea can generally be described at different levels of abstraction.” Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1240 (Fed. Cir. 2016). The level of abstraction an examiner uses to describe an abstract idea need not “impact the patentability analysis.” Apple, 842 F.3d at 1241. That is true here. Regardless of the level of generality used to describe the abstract idea recited, the claim is directed to an abstract idea. Cf. Accenture Glob. Servs., GmbH v. Guidewire Software, Inc., 728 F.3d 1336, 1344–45 (Fed. Cir. 2013) (“Although not as broad as the district court’s abstract idea of organizing data, it is nonetheless an abstract concept.”). Appeal 2020-000367 Application 10/247,783 15 Claim 11 is reproduced below (with bracketed letters added) and includes the following claim limitations that describe (i.e., recite) the concept of creating and managing an advertising campaign across different distribution networks, emphasized in italics: 11. A method of managing and automating advertising within a distributed network, comprising: [A] selecting at a sales module at least one advertisement for available viewing by a plurality of viewers not only across a broadcast network of media channels, but also across a non- broadcast network of client-server websites; [B] setting a price structure for said at least one selected advertisement based on the available viewing by the plurality of viewers not only across the broadcast network of media channels, but also across the non-broadcast network of client-server websites at an accounting module in communication with the sale module; [C] generating an availabilities list of available time spots for advertisements to be not only linearly integrated in a video media production to form a first video media-advertisement production combination to be broadcast across the broadcast network of media channels, but also non-linearly integrated in the video media production to form a second video media- advertisement production combination be displayed on the non- broadcast network of client-server websites; [D] populating the availabilities list with said at least one selected advertisement; [E] linearly integrating, encoding, and linking at least one of the at least one selected advertisement with the video media production to form the first video media-advertisement production combination; [F] non-linearly integrating, encoding, and linking at least one of the at least one selected advertisement with the video media production to form the second video media-advertisement production combination, such that the first video media- advertisement production combination comprises a same media Appeal 2020-000367 Application 10/247,783 16 content of the video media production as the second video media- advertisement production combination; [G] controlling distribution of said at least one selected advertisement, which has been linearly integrated, encoded, and linked with the video media production to form the first video media-advertisement production combination, on the broadcast network of media channels; [H] controlling distribution of the at least one selected advertisement, which has been non-linearly integrated, encoded, and linked with the video media production to form the second video media-advertisement production combination, on the non- broadcast network of client-server websites for available viewing by the plurality of viewers at a traffic module in communication with the sales module, the accounting module, and the reports module; [I] encoding the video media production with the production coded metadata to identify the available time spots of the video media production for advertisements to be not only linearly integrated with the video media production to form the first media-advertisement production combination to be broadcast across the broadcast network of media channels, but also non-linearly integrated within the video media production to form the second video media-advertisement production combination to be displayed across the non-broadcast, client- server network; [J] wherein the production coded metadata comprises a filename identifier, a path to storage location identifier, a path to an auxiliary client-server uniform resource location information storage location identifier, a segment mark identifier that identifies different segments of the video media production, a segment name identifier, a segment content category identifier, and a segment runtime length identifier; [K] converting the video media production into hypertext markup language so as to form the second video media- advertisement production combination to be displayed across the non-broadcast, client-server network; Appeal 2020-000367 Application 10/247,783 17 [L] wherein the second video media-advertisement production combination comprises an enhanced media production that includes the production coded metadata and the auxiliary client-server uniform resource location information, such that the production coded metadata configures a viewing device that receives the second video media-advertisement production combination across the non-broadcast, client-server network to automatically access the non-linearly integrated, encoded, and linked at least one selected advertisements using the auxiliary client-server uniform resource location information to be displayed non-linearly with the enhanced media production; and [M] controlling distribution of the first and second video media-advertisement production combinations across a distributed and hierarchical network of national and local broadcast and non-broadcast media delivery nodes each configured to control distribution of the first and second video media-advertisement production combinations based on not only a national advertisement campaign, but also based on a local advertisement campaign. More specifically, the concept of creating and managing an advertising campaign across different distribution networks comprises (i) selecting advertisements to be used as part of the advertising campaign (i.e., claim limitation [A]); (ii) identifying timeslots for presenting the selected advertisement (i.e., claim limitations [C] and [D]); (iii) determining a price structure for the advertisement (i.e., claim limitation [B]); (iv) combining the advertisement with content for presentation across the different distribution networks (i.e., claim limitations [E], [F], [I], and [K]); and (v) managing the distribution of the advertisement and content- advertisement combination consistent with an overall advertising campaign (i.e., claim limitations [G], [H], and [M]). Appeal 2020-000367 Application 10/247,783 18 Because the claim recites a judicial exception, the next step (Step 2A, prong 2) is to determine whether the claim integrates the judicial exception into a practical application. MPEP § 2106.04(d). To determine whether the judicial exception is integrated into a practical application, I identify whether there are “any additional elements recited in the claim beyond the judicial exception(s)” and evaluate those elements to determine whether they integrate the judicial exception into a recognized practical application. MPEP § 2106.04(d)(II) (emphasis added); see also MPEP § 2106.05(a)–(c), (e)–(h). Here, I would find the additional limitations do not integrate the judicial exception into a practical application. More particularly, claim 11 does not recite (i) an improvement to the functionality of a computer or other technology or technical field (see MPEP § 2106.05(a)); (ii) a “particular machine” to apply or use the judicial exception (see MPEP § 2106.05(b)); (iii) a particular transformation of an article to a different thing or state (see MPEP § 2106.05(c)); or (iv) any other meaningful limitation (see MPEP § 2106.05(e)). More particularly, the additional limitations either provide additional information regarding the content of production coded metadata, or identify a specific target environment (i.e., field of use), such as a broadcast or non- broadcast network, in which the advertisement is to be presented. These limitations are insufficient to confer patent eligibility. See, e.g., MPEP § 2106.05(h). Further, contrary to Appellant’s assertions (see Appeal Br. 32–33), I do not find that the use of an auxiliary client-server uniform resource locator (as part of the production coded metadata) integrates the judicial exception into a practical application. Rather, the inclusion of a Appeal 2020-000367 Application 10/247,783 19 URL (i.e., a uniform resource locator) to access the advertising content is merely an extra-solution activity of accessing data. See MPEP § 2106.05(g); see also Parker v. Flook, 437 U.S. 584, 590 (1978) (explaining “[t]he notion that post-solution activity, no matter how conventional or obvious in itself, can transform an unpatentable principle into a patentable process exalts form over substance”). For at least the foregoing reasons, claim 11 does not integrate the judicial exception into a practical application. Because I determine that claim 11 is directed to an abstract idea, I next analyze the claim under step two of Alice (i.e., step 2B of the Office Guidance) to determine if there are additional limitations that individually, or as an ordered combination, ensure the claim amounts to “significantly more” than the abstract idea. Alice, 573 U.S. at 217–18 (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 777–79 (2012)). As stated in the Office Guidance, many of the considerations to determine whether the claims amount to “significantly more” under step two of the Alice framework are already considered as part of determining whether the judicial exception has been integrated into a practical application. MPEP § 2106.04(d)(I). Thus, at this point of the analysis, I determine if the claim adds a specific limitation, or combination of limitations, that is not well-understood, routine, conventional activity in the field, or simply appends well-understood, routine, conventional activities at a high level of generality. MPEP § 2106.05(II). Here, claim 11 does not recite specific limitations (alone or when considered as an ordered combination) that are not well understood, routine, and conventional. In particular, the additional limitation of a “sales Appeal 2020-000367 Application 10/247,783 20 module”6 may be implemented on a generic computing platform performing generic computing functions. See Spec. ¶¶ 107–117, 191–202, Figs. 3, 44. Thus, for the foregoing reasons, I would find claim 11 is patent ineligible under 35 U.S.C. § 101.7 In addition, I would find claim 11, at least, fails under 35 U.S.C. § 112, second paragraph. The patent statute requires that claims “particularly point[] out and distinctly claim[] the subject matter which the applicant regards as his invention.” 35 U.S.C. § 112, second paragraph. During prosecution, “‘[a] claim is indefinite when it contains words or phrases whose meaning is unclear.’” Ex parte McAward, Appeal 2015-006416, 2017 WL 3669566, at *5 (PTAB Aug. 25, 2017) (precedential) (quoting Packard, 751 F.3d at 1310, 1314); see In re Packard, 751 F.3d 1307, 1313 (Fed. Cir. 2014) (“claims are required to be cast in clear—as opposed to ambiguous, vague, indefinite—terms”) (per curiam). If a claim is amenable to two or more plausible claim constructions, the USPTO is justified in requiring an applicant to more precisely define the metes and bounds of the invention by holding the claim unpatentable under 35 U.S.C. § 112, second paragraph, as indefinite. Ex parte Miyazaki, 89 USPQ2d 1207, 1211–12 (BPAI 2008) (precedential). In the instant application, it is unclear what is required “to form the first video media-advertisement production combination.” Claim 11 recites 6 I would further determine that a “sales module” invokes the provisions of 35 U.S.C. § 112, sixth paragraph. 7 In the event of further prosecution, I would invite the Examiner to conduct a similar analysis of the remaining claims. Appeal 2020-000367 Application 10/247,783 21 that this combination is formed by “linearly integrating, encoding, and linking at least one of the at least one selected advertisement with the video media production.” Claim 11 also recites the first video media- advertisement production combination is formed by “encoding the video media production with the production coded metadata to identify the available time spots of the video media production for advertisements to be not only linearly integrated with the video media production.”8 That is, it is unclear if “linking” is required to form the first video media-advertisement production combination. Forming the second video media-advertisement production combination has a similar deficiency. Moreover, claim 11 also recites that “converting the video media production into hypertext markup language so as to form the second video media-advertisement production combination.” It is again unclear what is required to form the second video media-advertisement production combination. The converting limitation merely converts the video media production—i.e., not at least one of the at least one selected advertisement—into a hypertext markup language format. Notwithstanding the foregoing analysis, I join the Majority’s decision addressing the only currently pending rejection under pre-AIA 35 U.S.C. § 103. Although the Board is authorized to reject claims under 37 C.F.R. § 41.50(b), no inference should be drawn when the Board elects not to do so. See MPEP § 1213.02. 8 I further note that there is no antecedent basis for “the production coded metadata.”