Audience Partners, LLC

Patent Trials and Appeals Board

May 21, 2020

2019001794 (P.T.A.B. May. 21, 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.
14/706,176 05/07/2015 Michael Ho 2189-P06187US00 2241
110 7590 05/21/2020
DANN, DORFMAN, HERRELL & SKILLMAN
1601 MARKET STREET
SUITE 2400
PHILADELPHIA, PA 19103-2307
EXAMINER
RETTA, YEHDEGA
ART UNIT PAPER NUMBER
3688
NOTIFICATION DATE DELIVERY MODE
05/21/2020 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):
docketclerk@ddhs.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MICHAEL HO and NICOLAS ST-PIERRE
Appeal 2019-001794
Application 14/706,176
Technology Center 3600
Before JEAN R. HOMERE, IRVIN E. BRANCH, and
AMBER L. HAGY, Administrative Patent Judges.
HAGY, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant appeals from the
Examiner’s decision to reject claims 1–20, which are all of the pending
claims.1 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 Audience Partners, LLC, as the real party in
interest. Appeal Br. 3.
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CLAIMED SUBJECT MATTER
According to Appellant, “[t]he embodiments described [in the
Specification] relate to systems and methods for advertising and in particular
to systems and methods for providing advertisements over a network.”
Spec. ¶ 2. By way of background, Appellant’s Specification describes the
delivery of advertisements over the Internet, in which advertisements may be
“dynamically or programmatically embedded within web pages.” Id. ¶ 3.
Also by way of background, Appellant’s Specification describes that the
selection of advertisements may be performed using algorithms that are
based on “information known about the requesting client” (that is, the
Internet user). Id. ¶ 4. Appellant’s Specification also notes that a user’s
device (e.g., computer) may be assigned to an IP address, which may vary
over time. Id. ¶ 5. Appellant’s Specification further explains:
Advertisers who wish to display advertisements in a web page
may have a specific target audience in mind. Often, the target
audience may be characterized by a particular geographic
location. Accordingly, when choosing advertisements to embed
in a web page, web servers may attempt to infer a client’s
physical location from the known IP address used to make a
web browser request. However, because individual subscribers
do not own their IP addresses, but rather are dynamically
assigned IP addresses by a service provider, IP addresses are
only loosely coupled with physical location or postal address.
Generally, such inferences provide only coarse-grained
determinations of location, for example the client’s city, but not
neighborhood or postal address.
Id. ¶ 37. Appellant’s Specification further notes “[n]etwork service
providers may have more accurate information regarding the postal address
associated with an IP address (e.g., subscriber’s billing address),” but also
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acknowledges that dissemination of such information “is typically restricted
due to privacy laws.” Id. ¶ 38.
Claims 1, 14, and 20 are independent. Claim 1, reproduced below,
illustrates the claimed subject matter:
1. A system for dynamically embedding a creative data file
within a web page, the system comprising:
a web server configured to supply a web page, the web
page including a dynamically embedded creative data file;
a service provider arranged to dynamically assign IP
addresses to individual subscribers; and
a delivery system arranged to receive a request for a
creative data file and a subscriber IP address from a web
browser of an Internet subscriber, and to send a creative data
file to the web browser for embedding in the web page,
wherein the system is adapted to determine a network
location associated with a physical location, and wherein the
system further comprises:
a targeting module having a first processor and a first
communication interface and arranged to accept a creative
identifier, the creative identifier identifying a creative data file,
and a targeting criterion associated with the creative data file,
wherein the targeting module is arranged to compute a plurality
of physical location identifiers satisfying the targeting criterion,
and to store the creative identifier, the targeting criterion and
the plurality of physical location identifiers in a first computer
database;
an intermediate module having a second processor and a
second communication interface for receiving the creative
identifier and the plurality of physical location identifiers from
the targeting module, wherein the intermediate module is
arranged to store the creative identifier and the plurality of
physical location identifiers in a second computer database, to
communicate the plurality of physical location identifiers to at
least one service provider, to receive an indication of a plurality
of IP addresses associated with the plurality of physical location
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identifiers from the service provider, and to associate the
creative identifier with the plurality of IP addresses;
an association module operated by the at least one service
provider having a third processor and a third communication
interface, wherein the association module is arranged to receive
the plurality of physical location identifiers, to associate the
plurality of physical location identifiers with the plurality of IP
addresses stored in a third computer database, and to
communicate the indication of the plurality of IP addresses to
the intermediate module, the association module comprising a
location broker arranged to receive IP address to physical
location identifier mappings from the service provider, and to
transfer IP address to physical location identifier mappings into
the third computer database; and
the delivery system is further arranged, on receipt of the
request, to send the subscriber IP address to the intermediate
module, to receive a creative identifier from the intermediate
module, and to send a creative data file referenced by the
creative identifier to the subscriber.
REFERENCES
The prior art relied upon by the Examiner is:
Name2 Reference Date
Yeh
Varian
Chamberlain
Mayernick
US 2005/0050027 A1
US 2005/0251444 A1
US 2009/0129377 A1
US 7,574,494 B1
Mar. 3, 2005
Nov. 10, 2005
May 21, 2009
Aug. 11, 2009

2 All references are identified by the first-named inventor.
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REJECTIONS
Claims 1–20 stand rejected under 35 U.S.C. § 101 as directed to a
judicial exception to patent-eligible subject matter (abstract idea).
Claims 1, 5–10, 13, 14, and 18–20 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over the combination of Chamberlain and
Varian. Final Act. 5–9.
Claims 2–4 and 15–17 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over the combination of Chamberlain, Varian, and
Mayernick. Final Act. 9–10.
Claims 11 and 12 are rejected under pre-AIA 35 U.S.C. 103(a) as
being unpatentable over Chamberlain and Yeh. Final Act. 10.
OPINION
I. Section 101 Rejection
The Examiner rejects all of the pending claims under 35 U.S.C. § 101
as patent-ineligible because they are directed to a judicial exception without
significantly more. Final Act. 2–4, 10–11; see also Ans. 4–5. Appellant
argues that the claims are not directed to an abstract idea, are directed to
patent-eligible subject matter, and the Examiner’s rejection should be
reversed. Appeal Br. 11–22; see also Reply Br. 3–4. For the reasons
explained below, we are not persuaded of Examiner error in the 35 U.S.C.
§ 101 rejection, and we, therefore, sustain that rejection.
A. Principles of Law
Under 35 U.S.C. § 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. The U.S. Supreme Court, however, has interpreted § 101
to include an implicit exception: “[l]aws of nature, natural phenomena, and
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abstract ideas” are not patentable. Alice Corp. Pty. Ltd. v. CLS Bank Int’l,
573 U.S. 208, 216 (2014) (citation omitted).
The Court, in Alice, reiterated the two-part framework previously set
forth in Mayo Collaborative Services v. Prometheus Laboratories, Inc.,
566 U.S. 66, 75–77 (2012), “for distinguishing patents that claim laws of
nature, natural phenomena, and abstract ideas from those that claim patent-
eligible applications of those concepts.” Alice, 573 U.S. at 217. The first
part in the analysis is to “determine whether the claims at issue are directed
to one of those patent-ineligible concepts.” Id. For example, abstract ideas
include, but are not limited to, fundamental economic practices, methods of
organizing human activities, an idea of itself, and mathematical formulas or
relationships. Id. at 218–20. The “directed to” inquiry asks not whether
“the claims involve a patent-ineligible concept,” but instead whether,
“considered in light of the specification, . . . ‘their character as a whole is
directed to excluded subject matter.’” Enfish, LLC v. Microsoft Corp.,
822 F.3d 1327, 1335 (Fed. Cir. 2016). In that regard, we determine whether
the claims “focus on a specific means or method that improves the relevant
technology” or are “directed to a result or effect that itself is the abstract idea
and merely invoke generic processes and machinery.” McRO, Inc. v. Bandai
Namco Games Am. Inc., 837 F.3d 1299, 1314 (Fed. Cir. 2016).
If, in the first part of the Alice/Mayo analysis, we conclude that the
claims are not directed to a patent-ineligible concept, we consider them
patent eligible under § 101 and our inquiry ends. Rapid Litig. Mgmt. Ltd. v.
CellzDirect, Inc., 827 F.3d 1042, 1047 (Fed. Cir. 2016).
If the claims are directed to a patent-ineligible concept, the second
part in the Alice/Mayo analysis is to consider the elements of the claims
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“individually and ‘as an ordered combination’” to determine whether there
are 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 79, 78). In other words, the second part is to “search for an ‘inventive
concept”—i.e., an element or combination of elements that is ‘sufficient to
ensure that the patent in practice amounts to significantly more than a patent
upon the [ineligible concept] itself.’” Id. at 217–18 (quoting Mayo, 566 U.S.
at 72–73). The prohibition against patenting an abstract idea “‘cannot be
circumvented by attempting to limit the use of the formula to a particular
technological environment’ or adding ‘insignificant postsolution activity.’”
Bilski v. Kappos, 561 U.S. 593, 610–11 (2010) (citation omitted).
The U.S. Patent and Trademark Office (the “Office”) has published
revised guidance on the application of 35 U.S.C. § 101. 2019 Revised
Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50–57 (Jan. 7,
2019) (“2019 Guidance”). Under the 2019 Guidance, the Office first looks
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 commercial or legal interactions,
including advertising and marketing, or mental processes); and (2) additional
elements that integrate the judicial exception into a practical application.
See 2019 Guidance, 84 Fed. Reg. at 52, 54–55; see also MPEP
§ 2106.05(a)–(c), (e)–(h).3
Only if a claim (1) recites a judicial exception, and (2) does not
integrate that exception into a practical application, does the Office then

3 Unless otherwise specified herein, all references to the MPEP are to Rev.
08.2017 (Jan. 2018).
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look to whether the claim: (a) adds a specific limitation beyond the judicial
exception that are not “well-understood, routine, conventional” in the field
(see MPEP § 2106.05(d)); or (b) simply appends well-understood, routine,
conventional activities previously known to the industry, specified at a high
level of generality, to the judicial exception. See 2019 Guidance, 84 Fed.
Reg. 56. We follow this guidance here.4
In reviewing the Examiner’s rejection under § 101, we group all
claims together and select claim 1 as representative of the group, as
Appellant has done. See Appeal Br. 9; see also 37 C.F.R. § 31.47(c)(1)(iv).
Accordingly, all claims stand or fall with claim 1. We address the claims
generally where possible, but when it is helpful to refer to explicit claim
language, we refer to claim 1.
B. Application of Legal Principles
1. Step 2A of 2019 Guidance
Prong 1: Claims Recite an Abstract Idea
In applying the framework set out in Alice/Mayo, and as the first part
of that analysis, the Examiner determines the “claimed invention is directed
to associating IP address to physical location identifiers for providing
advertisements.” Final Act. 2. The Examiner further finds the “[t]he

4 “All USPTO personnel are, as a matter of internal agency management,
expected to follow the guidance.” 2019 Guidance, 84 Fed. Reg. t51; see
also October 2019 Update: Subject Matter Eligibility, 2 (Oct. 17, 2019)
(“October 2019 Update”) (“Note, the feedback received was primarily
directed to examination procedures and, accordingly, this update focuses on
clarifying practice for patent examiners. However, all USPTO personnel are
expected to follow the guidance.”), available at https://www.uspto.gov/sites/
default/files/documents/peg_oct_2019_update.pdf.
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independent claims include the steps receiving data (identifier and criterion),
computing physical location identifiers, receiving identifiers (creative id and
physical location id), receiving IP addresses, associating IP addresses with
the location identifiers, supplying web page, receiving a request, sending,
determining and receiving.” Id. The Examiner finds these claim elements
“are considered abstract ideas” because they are similar to elements found to
be abstract ideas in Intellectual Ventures I LLC v. Capital One Financial
Corp., 805 F.3d 1332 (Fed. Cir. 2017). Id. at 3.
Appellant argues the Examiner’s conclusions are in error because they
are directed only to “discrete, disconnected and oversimplified elements of
the claims,” amounting to “a gross oversimplification of the claimed subject
matter.” Appeal Br. 15–16.
As stated herein, we agree generally with the Examiner’s rejection
under § 101. We clarify and expand the Examiner’s reasoning below,
applying the 2019 Guidance.
The 2019 Guidance uses enumerated groupings of abstract ideas that
are rooted in U.S. Supreme Court precedent, as well as Federal Circuit
decisions interpreting that precedent. See 2019 Guidance, 84 Fed. Reg. at
51–52. By grouping the abstract ideas, the 2019 Guidance synthesizes the
holdings of various court decisions to facilitate examination. The 2019
Guidance describes one category of abstract ideas as including “[c]ertain
methods of organizing human activity” such as “commercial or legal
interactions” including “advertising, marketing or sales activities or
behaviors.” Id. at 52. The 2019 Guidance describes another category of
abstract ideas as including “[m]ental processes”; that is, “concepts
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performed in the human mind (including an observation, evaluation,
judgment, opinion).” Id. (footnotes omitted).
Claim 1 recites at least the following limitations: “receive a request
for a creative data file,” “identifying . . . a targeting criterion associated with
the creative data file,” “compute a plurality of physical location identifiers
satisfying the targeting criterion,” “receive IP address to physical location
identifier mappings from the service provider,” and “send a creative data file
referenced by the creative identifier [based on the subscriber IP address] to
the subscriber.” Appeal Br. 29–30 (Claims App.). These limitations, under
their broadest reasonable interpretation, recite associating targeted
advertisements (“creative data files”) with physical locations (“physical
location identifiers”), determining a physical location of a user
(“subscriber”), and then sending the appropriate targeted advertisement
associated with the user’s physical location. In other words, claim 1 recites
a method of choosing and sending a personalized advertisement to a user
based on the user’s location, i.e., a commercial interaction, which is a
method of organizing human activity and, therefore, an abstract idea.
See 2019 Guidance, 84 Fed. Reg. at 52 (describing “[c]ertain methods of
organizing human activity” as including “commercial or legal interactions
(including . . . advertising, marketing or sales activities or behaviors”)). This
abstract concept is further identified in various portions of the Specification.
See, e.g., Spec. ¶ 2 (“The embodiments described herein relate to systems
and methods for advertising and in particular to systems and methods for
providing advertisements over a network.”), 41 (“Accordingly, advertiser 10
may configure advertising campaigns by specifying appropriate target
criteria 22 and providing associated advertisements 18. Targeting criteria 22
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are data that can be linked to or translated into a physical location or
plurality of physical locations, preferably in the form of postal addresses.”).
The Federal Circuit has held that similar concepts amount to abstract
ideas. For example, in Bridge and Post, Inc. v. Verizon Communications,
Inc., 778 F. App’x 882, 888–890 (Fed. Cir. 2019), the Federal Circuit held
that abstract ideas include tracking a user’s computer network activity and
using information gained about the user to deliver targeted media, such as
advertisements. See also, e.g., Affinity Labs of Texas, LLC v. Amazon.com,
Inc., 838 F.3d 1266, 1271 (Fed. Cir. 2016) (customizing a user interface to
have targeted advertising based on user information); see also Intellectual
Ventures I LLC v. Capital One Bank (USA), 792 F.3d 1363, 1370 (Fed. Cir.
2015) (tailoring information presented to a user based on particular
information); Morsa v. Facebook, Inc., 77 F. Supp. 3d 1007, 1013 (C.D. Cal.
2014), aff’d, 622 F. App’x 915 (Fed. Cir. 2015) (targeting advertisements to
certain consumers).
Claim 1 also recites “determine a network location associated with a
physical location,” “compute a plurality of physical location identifiers
satisfying the targeting criterion,” “associate the creative identifier with the
plurality of IP addresses,” and “associate the plurality of physical location
identifiers with the plurality of IP addresses.” These limitations, under their
broadest reasonable interpretation, recite collecting and comparing known
information. We determine, on this record, that they amount to mental
processes in that they could be performed by a human, such as with the aid
of pen and paper or with the aid of a database. For example, the
Specification states that network service providers have information linking
a network location (such as an IP address used by a subscriber) to a physical
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location (such as the subscriber’s billing address). Spec. ¶ 38. Thus,
determining a physical location associated with an IP address could be
accomplished through a simple retrieval of information from a network
service provider’s database. We determine that such a step is a mental
process, even though it involves use of a physical database, because it is the
type of function that a person could practically perform mentally. See, e.g.,
CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1372 (Fed. Cir.
2011) (determining that a claim focused on verifying credit card transaction
information is directed to “unpatentable mental processes” because the
claim’s steps “can be performed in the human mind, or by a human using a
pen and paper”; noting “even if some physical steps are required to obtain
information from the database . . . such data-gathering steps cannot alone
confer patentability”); see also October 2019 Update at 8 (giving as an
example of a claim reciting a “mental process” a “claim to collecting and
comparing known information . . . , which are steps that can be practically
performed in the human mind”). Similarly, the “compute” step referenced
above amounts to selecting physical locations satisfying a targeting criterion,
such as deciding that advertisements for a “neighborhood restaurant” should
be sent to users at “homes within a certain radius of the restaurant”
(Spec. ¶ 40), a process that could be performed by a human mentally. The
“associate” steps referenced above amount to comparing and matching
information (such as associating IP addresses with physical locations and
associating an advertisement with targeted physical locations), a process that
could also be performed by a human mentally.
Thus, under Prong 1 of Step 2A in accordance with the 2019
Guidance, we agree with the Examiner’s determination that the claims recite
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judicial exceptions to patentability. In particular, we determine that the
claims recite certain methods of organizing human activity (specifically,
commercial or legal interactions, including advertising and marketing), as
well as a mental process, and we, therefore, agree with the Examiner’s
conclusion that the claims recite an abstract idea.
Prong 2: Claims Integrate the Abstract
Idea Into a Practical Application5
In accordance with Prong 2 of Step 2A of the 2019 Guidance, we
evaluate the claims to determine whether they recite additional elements
beyond the abstract idea, and, if so, we evaluate the additional elements to
determine whether they integrate the abstract idea into a practical
application. 2019 Guidance, 84 Fed. Reg. at 54. The 2019 Guidance, 84
Fed. Reg. at 55, provides exemplary considerations, including whether an
additional element:
• “reflects an improvement in the functioning of a computer, or
an improvement to other technology or technical field”;
• “implements a judicial exception with, or uses a judicial
exception in conjunction with, a particular machine or
manufacture that is integral to the claim”;
• “effects a transformation or reduction of a particular article [or
thing] to a different state or thing”; or

5 We acknowledge that some of these considerations may be properly
evaluated under the second part of the Alice/Mayo analysis (Step 2B of the
2019 Guidance). For purposes of maintaining consistent treatment within
the Office, we evaluate them under the first part of the Alice/Mayo analysis
(Step 2A of the 2019 Guidance). See 2019 Guidance, 84 Fed. Reg. at 54–55.
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• “applies or uses the judicial exception in some other meaningful
way beyond generally linking the use of the judicial exception
to a particular technological environment.”
The 2019 Guidance also highlights certain examples in which courts
have held that “a judicial exception has not been integrated into a practical
application,” such as where the claimed invention “merely uses a computer
as a tool to perform an abstract idea” or the additional element adds
“insignificant extra-solution activity” to the abstract idea. 2019 Guidance,
84 Fed. Reg. at 55 (emphasis added); see also October 2019 Update at 11–
15.
Beyond the recited abstract ideas discussed above, claim 1 also recites
several additional components, such as “a web server,” “a service provider,”
and “a delivery system,” as well as various processors, communication
interfaces, and databases. The Examiner finds the additional recited
components are “generic computing devices” that “are facilitating the
abstract idea.” Final Act. 3. The Examiner also finds “there is no
improvement to another technology or technical field, no improvements to
the functioning of the computer itself, and no meaningful limitations beyond
generally linking the use of an abstract idea to a particular technical
environment, and the claims require no more than a generic computer to
perform generic computer functions that are well understood, routine and
conventional.” Id. at 4.
We are not persuaded of Examiner error. We conclude that the
additional recited elements, considered individually or in combination, do
not integrate the recited judicial exception into a practical application. The
additional elements are recited without sufficient detail or specific
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implementation structure so as to limit the abstract idea to a specific
technical solution. Indeed, Appellant’s Specification describes a “server” as
used throughout the application as being interchangeable with a “general-
purpose computer.” See Spec. ¶ 47; see also id. ¶¶ 34, 116. Appellant’s
Specification also states that the various “module[s]” recited in the claims
may be implemented on “general-purpose computer,” and may be
“combined into a single computer or server, or implemented across multiple
computers or servers all connected via a communications medium (such as
the Internet).” Id. ¶ 47; see also id. ¶¶ 34, 35, 116. The Specification
similarly refers to a “communication interface” generically as a “network
communication interface,” or a “software communication interface,” without
describing technical details. Id. ¶ 34. The Specification uses the term
“database” generically, without reference to any particular structure, broadly
describing databases as “implemented using a relational database system.”
Id. ¶ 55. The Specification refers to a web browser as any of a number of
known programs (such as “Microsoft Internet Explorer or Mozilla Firefox”).
Id. ¶ 48.
In short, nothing in Appellant’s claims or Specification indicates any
components that represent a technological improvement. Rather, at best, the
recitations of “web server,” “web browser,” “Internet subscriber,” “network
location,” “service provider,” “plurality of IP addresses,” and “subscriber IP
address” limit the invention to a technological environment (displaying
advertisements on an Internet web page to a subscriber) in which the
underlying abstract concept (e.g., targeting the advertisements based on the
user’s physical location) is applied. But, as our reviewing court has
recognized, “such limitations to a technological environment do not make an
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abstract concept any less abstract.” Intellectual Ventures, 792 F.3d at 1366.
The claims do not sufficiently recite how sending and receiving information
(such as creative data files, network locations, physical location identifiers,
and IP addresses) over the Internet leads to an improvement in the
underlying technology. Rather, such limitations recite routine computer
functions, such as sending and receiving information that has been stored
remotely in databases, e.g., receiving a request for information and
delivering records. In other words, these additional elements in the claim do
“no more than generally link the use of a judicial exception to a particular
technological environment or field of use.” See 2019 Guidance, 84 Fed.
Reg. at 55. The mere application of an abstract method of organizing human
activity, or a mental process, in a particular field is not sufficient to integrate
the judicial exception into a practical application. See id.
Neither the Specification nor Appellant describes the operations
recited in claim 1 as invoking any assertedly inventive programming, or
requiring any specialized computer hardware or other inventive computer
components, i.e., a particular machine, or that the claimed invention is
implemented using other than generic computer components to perform
generic computer functions. See DDR Holdings, LLC v. Hotels.com, L.P.,
773 F.3d 1245, 1256 (Fed. Cir. 2014) (“[A]fter Alice, there can remain no
doubt: recitation of generic computer limitations does not make an otherwise
ineligible claim patent-eligible.”). Rather, Appellant’s Specification broadly
describes the programming as being implemented in “a high level object
oriented programming and/or scripting language” or “in assembly or
machine language if desired.” Spec. ¶ 35. Appellant’s Specification also
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notes that the programming may be operated by “a general or a special
purpose programmable computer.” Id. (emphasis added).
We also find no indication in the Specification that the claimed
invention effects a transformation or reduction of a particular article to a
different state or thing. Nor do we find anything of record that attributes an
improvement in computer functionality to the claimed invention or that
otherwise indicates that the claimed invention integrates the abstract idea
into a “practical application,” as that phrase is used in the 2019 Guidance.
Appellant nevertheless argues that “[t]he [S]pecification clearly and
unambiguously sets forth a problem particular to computer networks and/or
the Internet, which the claims overcome.” Appeal Br. 17; see also id. at 19.
Appellant states:
For example, the Examiner has completely failed to account for
specific elements recited in the claims, such as, e.g., the
targeting module, intermediate module and association module,
each of which interact through respective processors and
communication interfaces and, in doing so, (1) do not foreclose
other ways of solving the problem, and (2) recite a specific
series of steps that result in a departure from the routine and
conventional sequence of events after the request of a web
page.
Id. at 16. Appellant also analogizes the claims to those determined to be
patent eligible in DDR Holdings. Id. at 17–19.
Appellant’s contentions do not persuade us of Examiner error. First,
Appellant’s contention that the claimed solution does “not foreclose other
ways of solving the problem” (Appeal Br. 15; see also id. at 21) is
unpersuasive of error because preemption is not the sole test for patent
eligibility. Although the Supreme Court has described “the concern that
drives [the exclusion of abstract ideas from patent-eligible subject matter] as
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one of pre-emption,” Alice Corp., 573 U.S. at 216, characterizing
preemption as a driving concern for patent eligibility is not the same as
characterizing preemption as the sole test for patent eligibility. “The
Supreme Court has made clear that the principle of preemption is the basis
for the judicial exceptions to patentability” and “[f]or this reason, questions
on preemption are inherent in and resolved by the § 101 analysis.” Ariosa
Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015)
(citing Alice Corp., 573 U.S. at 216). “[P]reemption may signal patent
ineligible subject matter, [but] the absence of complete preemption does not
demonstrate patent eligibility.” Id.
Appellant’s contention that the claims depart from the “routine and
conventional sequence of events after the request of a web page” (Appeal
Br. 15; see also id. at 21) is also not persuasive of Examiner error.
Appellant argues only details of the abstract idea as providing any
innovative advances. However, even if Appellant’s claimed invention were
novel (contrary to our affirmance of the Examiner’s prior-art rejection,
infra), a novel and nonobvious claim directed to an abstract idea is,
nonetheless, patent-ineligible. As the Federal Circuit recently explained
when considering eligibility of similar claims, “even a highly specific
method for implementing an abstract idea is, at step 1 of the Alice test, still
directed to that abstract idea.” Bridge and Post, Inc., 778 F. App’x at 889;
see also BSG Tech LLC v. Buyseasons, Inc., 899 F.3d 1281, 1290 (Fed. Cir.
2018) (“It has been clear since Alice that a claimed invention’s use of the
ineligible concept to which it is directed cannot supply the inventive concept
that renders the invention ‘significantly more’ than that ineligible concept.”);
Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1151 (Fed. Cir.
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2016) (“[A] claim for a new abstract idea is still an abstract idea.”)
(emphasis omitted); SAP America, Inc. v. InvestPic, LLC, 898 F.3d 1161,
1168 (Fed. Cir. 2018) (“What is needed is an inventive concept in the non-
abstract application realm.”).
With regard to Appellant’s reliance on DDR Holdings, we are also not
persuaded of Examiner error. In DDR Holdings, the Federal Circuit
determined that, although the patent claims at issue involved conventional
computers and the Internet, the claims nevertheless addressed the problem of
retaining website visitors who, if adhering to the routine, conventional
functioning of the Internet hyperlink protocol, would be transported instantly
away from a host’s website after “clicking” on an advertisement and
activating a hyperlink. DDR Holdings, 773 F.3d at 1257. The court
determined that those claims were directed to patent-eligible subject matter
because they claimed a solution “necessarily rooted in computer technology
in order to overcome a problem specifically arising in the realm of computer
networks.” Id.
No such technological advance is evident in the claimed invention.
Unlike DDR Holdings, Appellant does not identify any problem particular to
computer networks and/or the Internet that claim 1 allegedly overcomes. In
fact, the court in DDR Holdings cautioned “that not all claims purporting to
address Internet-centric challenges are eligible for patent.” DDR Holdings,
773 F.3d at 1258. For example, the court distinguished the patent-eligible
claims at issue from claims held 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
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unknown and never employed on the Internet before.” Id. at 1258 (quoting
Ultramercial, 772 F.3d at 714). 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. (citation omitted).
Here, contrary to Appellant’s argument, displaying a personalized
advertisement within a third-party webpage is not a technical solution akin
to DDR Holdings because it fails to overcome any problem specifically
arising in the realm of computer networks. Although Appellant broadly
asserts that the claims “solve a problem faced by [a] web server system of
providing real-time, dynamically embedded content that is accurately
targeted based on physical location” (Appeal Br. 21), Appellant does not
support this contention by reference to particular claim limitations or
disclosure in the Specification. Rather, in Appellant’s own words,
Appellant’s invention is directed to the “business challenge” of “targeting
web-based advertising.” See Appeal Br. 11. Appellant’s claims are directed
to the business solution of associating advertisements with desired physical
locations, determining which physical location corresponds to a particular
user, and then sending the appropriate targeted advertisement to that user.
As noted above, these are processes in which standard computer technology
is used as a tool in its ordinary capacity to automate targeted marketing, and
also includes steps that could otherwise be carried out in the human mind or
with the aid of pen and paper.
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We conclude, for the reasons outlined above, that claim 1 recites a
method of organizing human activity and a mental process under the 2019
Guidance, i.e., an abstract idea, and that the additional elements recited in
the claim are no more than generic components used as tools to perform the
recited abstract idea. As such, they do not integrate the abstract idea into a
practical application. See Alice, 573 U.S. at 223–24 (“[W]holly generic
computer implementation is not generally the sort of ‘additional featur[e]’
that provides any ‘practical assurance that the process is more than a drafting
effort designed to monopolize the [abstract idea] itself.”’) (quoting Mayo,
566 U.S. at 77). Accordingly, in the first part of the Alice/Mayo analysis, we
conclude the claims are directed to an abstract idea.
2. Step 2B of 2019 Guidance
Regarding the second part of the Alice/Mayo analysis, the Examiner
finds “there is no improvement to another technology or technical field, no
improvements to the functioning of the computer itself, and no meaningful
limitations beyond generally linking the use of an abstract idea to a
particular technical environment, and the claims require no more than a
generic computer to perform generic computer functions that are well
understood, routine and conventional.” Final Act. 4. We agree.
In particular, as also noted above, the claim elements beyond the
abstract idea recite only generic computer functions and components that are
well-understood, routine, and conventional—that is, receiving, storing,
manipulating, and displaying data; such generic computer functions and
components do not convey an inventive concept. See Alice, 573 U.S. at 217.
There is nothing in the Specification to indicate that the operations recited in
claim 1 require any specialized hardware or inventive computer components
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or that the claimed invention is implemented using other than generic
computer components to perform generic computer functions, e.g., sending
and displaying information. Rather, as noted above, the Specification
confirms the opposite is true. See, e.g., Spec. ¶¶ 34, 35, 47, 116. The
Federal Circuit, in accordance with Alice, has “repeatedly recognized the
absence of a genuine dispute as to eligibility” where claims have been
defended as involving an inventive concept based “merely on the idea of
using existing computers or the Internet to carry out conventional processes,
with no alteration of computer functionality.” Berkheimer v. HP Inc., 890
F.3d 1369, 1373 (Fed. Cir. 2018) (Moore, J., concurring) (citations omitted);
see also BSG Tech LLC, 899 F.3d at 1291 (“BSG Tech does not argue that
other, non-abstract features of the claimed inventions, alone or in
combination, are not well-understood, routine and conventional database
structures and activities. Accordingly, the district court did not err in
determining that the asserted claims lack an inventive concept.”) (emphasis
added).
Appellant argues the Examiner’s analysis is in error because “[t]he
Examiner has provided no evidence to support the conclusion that using a
computer to carry out claimed acts, such as, e.g., associating a plurality of IP
addresses (received from a first computer) with a plurality of physical
location identifiers, are well-understood, routine or conventional.” Appeal
Br. 20 (citing Berkheimer v. HP Inc., 881 F.3d 1360, 1369 (Fed. Cir. 2018)).
The Examiner does not, however, find that this associating step was well-
understood, routine, or conventional, but instead finds the claims require a
generic computer to perform generic computer functions (Final Act. 4), a
finding with which we agree for the reasons noted above.
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Moreover, to the extent Appellant relies on this “associating” step as
indicative of an inventive concept, we have determined above that such
functionality is part of the recited abstract idea. Appellant is reminded that
“the ‘inventive concept’ [under the second part of the Mayo/Alice test]
cannot be the abstract idea itself” and “Berkheimer . . . leave[s] untouched
the numerous cases from this court which have held claims ineligible
because the only alleged ‘inventive concept’ is the abstract idea.”
Berkheimer, 890 F.3d at 1374 (Moore, J., concurring). “It has been clear
since Alice that a claimed invention’s use of the ineligible concept to which
it is directed cannot supply the inventive concept that renders the invention
‘significantly more’ than that ineligible concept.” BSG Tech LLC, 899 F.3d
at 1290.
For the reasons discussed above, we determine that the elements of
the claims, when considered individually or as an ordered combination, do
not recite significantly more than the abstract idea beyond generally linking
the abstract idea to a generic technological environment.
Accordingly, we sustain the Examiner’s rejection of claim 1 under 35
U.S.C. § 101 as patent-ineligible. We also sustain the rejection of claims 2–
20 which are not separately argued. See Appeal Br. 9.
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II. Section 103(a) Rejections
We have reviewed the Examiner’s rejections of claims 1–20 in light
of Appellant’s arguments the Examiner has erred. We disagree with
Appellant’s arguments and we adopt as our own the findings and reasons set
forth by the Examiner in the action from which this appeal is taken and the
reasons set forth by the Examiner in the Examiner’s Answer in response to
Appellants’ Appeal Brief. We concur with the conclusions reached by the
Examiner, and we highlight the following for emphasis.
The Examiner finds Chamberlain teaches most of the limitations of
claim 1 (Final Act. 5–7), but finds “Chamberlain fail[s] to explicitly teach a
module arranged to accept a creative identifier, the creative identifier
identifying a creative data file, and a targeting criterion associated with the
creative data file,” for which the Examiner additionally relies on Varian
(id. at 7–8).
Appellant argues the Examiner’s findings are in error for several
reasons, none of which we determine to be persuasive. Appellant first
argues the Examiner errs in pointing to the same disclosure in Chamberlain
as teaching both the “intermediate module” and the “association module.”
Appeal Br. 23–24. Appellant argues that these claimed modules “operate in
different, through complementary fashion and have no immediately apparent
analogs in Chamberlain’s system.” Id. at 24. Appellant then argues
“[w]ithout further explanation as to how Chamberlain’s description
allegedly maps to the claim elements, the Office Action fails to meet the
minimum requirements for providing articulated reasoning with some
rational underpinning to support the legal conclusion of obviousness.” Id.
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Appellant’s argument does not persuade us of Examiner error. To
show error, Appellant must do more than merely aver a failure of the
rejection’s applied prior art to teach a particular claim feature. In re Jung,
637 F.3d 1356, 1365 (Fed. Cir. 2011); see also Frye, 94 USPQ2d 1072, 1075
(BPAI 2010) (precedential) (“[T]he Board reviews the particular finding(s)
contested by an appellant anew in light of all the evidence and argument on
that issue.”). In this contention, Appellant merely states, in conclusory
fashion, that the claimed intermediate module and the association module
cannot be mapped to the same disclosure in Chamberlain as cited by the
Examiner, even though the Examiner’s citation spans several paragraphs
(and does not completely overlap—compare Final Act. 5–6 (citing
Chamberlain ¶¶ 69–72) with id. at 6 (citing Chamberlain ¶¶ 37–38, 69–72)).
In so doing, Appellant does not address the substance of Chamberlain. We
also note that Appellant’s Specification explains that “it should be
understood that various modules and/or the components thereof could be
combined into a single computer or server, or implemented across multiple
computers or servers all connected via a communications medium (such as
the Internet).” Spec. ¶ 47. Thus, Appellant’s vague statement challenging
the Examiner’s mapping of the intermediate module and the association
module to overlapping disclosures in Chamberlain—which span multiple
paragraphs and describe many components of that system—is not persuasive
of Examiner error.
Appellant next argues that Chamberlain does not teach either the
“intermediate module” or the “association module” as recited because
“Chamberlain describes an approach oriented around a single user. That is,
in all cases, Chamberlain only considers forwarding a single IP address, and
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operating on a single IP address to determine the desired ‘segmentations.’”
Appeal Br. 25; see also id. at 26–27 (“Chamberlain at most describes
associating a single IP address with a single ZIP code.”). Appellant then
contrasts the present invention by asserting the claims overcome privacy
concerns by “providing for associating a plurality of IP addresses with a
plurality of physical location identifiers.” Id. at 25.
We are not persuaded of Examiner error, as Appellant’s argument
appears to be premised on an overly narrow reading of Chamberlain. As the
Examiner finds, and we agree, Chamberlain discloses collecting data of
Internet users for use in providing targeted media (e.g., advertisements) to
users. See Final Act. 5–7 (citing Chamberlain ¶¶ 16, 37, 38, 48, 49, 56–59,
69–72); see also Chamberlain ¶¶ 3, 8, 10, 11. In particular, Chamberlain
discloses a “global segmentation database,” which stores “segmentation
data” keyed to IP addresses. Chamberlain ¶¶ 34, 48, 49, Fig. 1.
Chamberlain describes an ISP system associates IP addresses with a specific
subscriber or household, such as by utilizing a “look-up table.” Id. ¶ 44; see
also Final Act. 7. The “segmentation” data may be location-based
segmentation data for the location associated with the IP address.
Chamberlain ¶ 50; see also Final Act. 7. Although Chamberlain describes
the process of serving an advertisement to a particular user, it also describes
using one or more databases to store information used in that process,
including mappings of IP addresses to user account IDs, which includes
information on the users’ physical locations (such as ZIP codes). See Final
Act. 7 (citing Chamberlain ¶¶ 37, 48, 69, 72–74). Thus, as the Examiner
finds, and we agree, Chamberlain teaches
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managed servers determining segmentation based on
information such as demographic information, . . . the
information can be keyed to a location, such as [ZIP] code and
the service provider account information database[] (association
module operated by service provider) may provide account IDs
tied to the subscriber’s ZIP code to be combined with the
“offline data” (stored in a database 234) by a demographic
segmentation processor.
Ans. 3.
Appellant also argues that Chamberlain “teaches away” from
providing “IP to physical location associations” because “Chamberlain
explicitly notes that the system is designed to prevent correlation of an IP
address to a user’s specific subscriber-identifying information.” Appeal
Br. 26. This argument does not persuade us of Examiner error because it
does not align with Chamberlain’s disclosure. Chamberlain describes
gathering two types of information about users—specific, behavior-based
data (e.g., Chamberlain ¶¶ 44–46, 69), and more generic location-based data
(e.g., Chamberlain ¶¶ 50–51, 69). Chamberlain describes that gathering
very personal information, “such as the subscriber’s name, age, address,
credit score, specific sites visited and the like from the ISP account
information database” may be done on an “opt-in” basis. Chamberlain ¶ 73;
see also Ans. 4. Chamberlain further notes, however, that in the case of
subscribers that have not opted-in for gathering such personal information,
the central data system “only receives browsing behavior data from the ISP
system associated with a general location identifier.” Chamberlain ¶ 74.
Thus, Chamberlain does not “teach away” from associating general location
information (such as a ZIP code) with subscriber IP addresses. See Ans. 4
(“Chamberlain teaches due to privacy concerns, report of information such
as name, age, address etc., from the IP account information database is likely
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to be on an opt-in basis. Just because Chamberlain adds[] the feature of opt-
in does not mean it teaches away from linking the subscriber physical
address to the IP address.”).
Finally, Appellant argues “Chamberlain fails to teach or fairly suggest
‘wherein the targeting module is arranged to compute a plurality of physical
location identifiers satisfying the targeting criterion.’” Appeal Br. 27. In
particular, Appellant argues “[i]t is unclear which element of Chamberlain is
alleged to provide the ‘targeting module’.” Appellant’s contention is not
persuasive of Examiner error because it overlooks that, as to the targeting
module, the Examiner’s rejection is premised on a combination of
Chamberlain with Varian. Final Act. 6–8 (citing Chamberlain ¶¶ 37, 48, 49,
69, 72–74; Varian ¶¶ 64–67). The Examiner finds, inter alia, that
Chamberlain discloses “a targeted content provider system receiving a
request for a web page to serve an advertisement on a web page.” Id. at 6.
The Examiner further finds, and we agree:
Varian teaches [a] targeting module for receiving [an]
advertisement campaign including receiving and storing
information including ad identifier, ad type, ad creative, or a
pointer to an ad creative and targeting criteria including a
geolocation information for providing advertisement to a user
(see [0064]-[0067). It would have been obvious to one of
ordinary skill in the art before the effective filing date of the
claimed invention to include Varian’s advertisement table, in
Chamberlain[’s] advertisement system, in order to receive
advertisement criteria from the advertiser, and to link the
advertisement . . . for the intended purpose of selecting an
advertisement based on the advertisement criteria.
Id. at 7–8.
It is well established that one cannot show nonobviousness by
attacking references individually where the rejections are based on
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combinations of references. See In re Keller, 642 F.2d 413, 425 (CCPA
1981); see also In re Merck & Co., 800 F.2d 1091 (Fed. Cir. 1986).
Appellant fails to address the Examiner’s findings regarding the combination
of these references and, therefore, does not persuade us of Examiner error.
We have considered all of Appellant’s arguments challenging the
Examiner’s findings underlying the Examiner’s rejection of claim 1 under
35 U.S.C. § 103(a) over the combination of Chamberlain and Varian, and we
are not persuaded of Examiner error. We, therefore, sustain that rejection,
along with the rejection of claims 2–20, which Appellant does not argue
separately. See Appeal Br. 9.
CONCLUSION
The Examiner’s decision rejecting claims 1–20 under 35 U.S.C. § 101
is affirmed.
The Examiner’s decision rejecting claims 1–20 under 35 U.S.C.
§ 103(a) is affirmed.
DECISION SUMMARY
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–20 101 Eligibility 1–20
1, 5–10, 13,
14, 18–20
103(a) Chamberlain, Varian 1, 5–10,
13, 14, 18–
20

2–4, 15–17 103(a) Chamberlain, Varian,
Mayernick
2–4, 15–17
Overall Outcome 1–20

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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