BlackBerry Limited

Patent Trials and Appeals Board

May 22, 2020

2019006642 (P.T.A.B. May. 22, 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.
14/527,265 10/29/2014 Jason Tyler GRIFFIN 1679-2026/JLW 8167
136869 7590 05/22/2020
Wilson Lue LLP/BlackBerry Files
250 University Avenue, 5th Floor
Toronto, ONTARIO M5H 3E5
CANADA
EXAMINER
HOAR, COLLEEN A
ART UNIT PAPER NUMBER
3621
NOTIFICATION DATE DELIVERY MODE
05/22/2020 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):
docketing@wilsonlue.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte JASON TYLER GRIFFIN,
GERHARD DIETRICH KLASSEN, SCOTT DAVID REEVE,
and SHERRYL LEE LORRAINE SCOTT
____________

Appeal 2019-006642
Application 14/527,265
Technology Center 3600
____________

Before KALYAN K. DESHPANDE, CHARLES J. BOUDREAU,
and SHARON FENICK, Administrative Patent Judges.

BOUDREAU, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–3, 5–12, 14–16, and 18–20, which
are all of the pending claims. 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 BlackBerry Limited as the real party
in interest. Appeal Br. 3.
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CLAIMED SUBJECT MATTER
Appellant’s invention relates to targeting advertisements to mobile
devices. See Spec. ¶¶ 3, 10.
Claims 1, 10, 14, and 18 are independent. Claim 1, reproduced below,
is illustrative of the subject matter on appeal:
1. A communications system comprising:
at least one mobile wireless communications device; and
an advertising server communicating with said at least one
mobile wireless communications device via a wireless
communications network and configured to
generate an activity history for said at least one
wireless communications device including geographical
positions at corresponding times of day based upon
activity within a first geographical region,
determine whether the at least one mobile wireless
communications device is within the first geographical
region or at a different location outside of the first
geographical region,
selectively send advertisements to said at least one
mobile wireless communications device based upon the
activity history and a given time of day when the at least
one mobile wireless communications device is within the
first geographical region, and
selectively send advertisements to said at least one
mobile wireless communications device based upon the
activity history within the first geographical region, a
given time of day, the different location, and a
determination that a user of the at least one mobile
wireless communications device is accompanied by at
least one other person, the determination being based on
receipt of an indication from the user that the user is
accompanied by the at least one other person, when the at
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least one mobile wireless communications device is at the
different location outside of the first geographical region.
Appeal Br. 12 (Claims App.).
REJECTIONS
Claims 1–3, 5–12, 14–16, and 18–20 stand rejected under 35 U.S.C.
§ 101 as being directed to non-statutory subject matter. Non-Final Act. 2–8;
Ans. 3–7.
Claims 1–3, 5–12, 14–16, and 18–20 stand rejected under pre-AIA
35 U.S.C. § 103(a) as being unpatentable over Ramer2 in view of Eisenson.3
Non-Final Act. 8–14.
OPINION
Rejection 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, or [a] new and useful
improvement thereof.” 35 U.S.C. § 101. However, the U.S. Supreme Court
has long interpreted § 101 to “contain[] an important implicit exception:
Laws of nature, natural phenomena, and abstract ideas are not patentable.”
Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 216 (2014) (quoting Ass’n for
Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 589 (2013)).
In Alice, the Supreme Court reiterated the two-step framework
previously set forth in Mayo Collaborative Services v. Prometheus
Laboratories, Inc., 566 U.S. 66, 75–77 (2012) “for distinguishing patents

2 Ramer et al., US 2007/0100650 A1 (pub. May 3, 2007).
3 Eisenson et al., US 2008/0091518 A1 (pub. Apr. 17, 2008).
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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 step in this analysis is to “determine whether the claims at
issue are directed to one of those patent-ineligible concepts,” e.g., to an
abstract idea. Id. Concepts determined to be abstract ideas include certain
methods of organizing human activity, such as fundamental economic
practices or commercial interactions (id. at 219–20; Bilski v. Kappos, 561
U.S. 593, 611 (2010); Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715
(Fed. Cir. 2014)); mathematical formulas (Parker v. Flook, 437 U.S. 584,
594–95 (1978)); and mental processes (Gottschalk v. Benson, 409 U.S. 63,
67 (1972)). If it is determined that the claims are directed to a patent-
ineligible concept, the second step of the analysis requires consideration of
the elements of the claims “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 78, 79). “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. at 221
(alterations in original) (quoting Mayo, 566 U.S. at 77). In other words, the
claims must contain an “inventive concept,” or some element or combination
of elements “sufficient to ensure that the patent in practice amounts to
significantly more than a patent upon the [abstract idea] itself.” Id. at 217–
18 (quoting Mayo, 566 U.S. at 72–73). “[M]erely requir[ing] generic
computer implementation[] fail[s] to transform that abstract idea into a
patent-eligible invention.” Id. at 221.
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In January 2019, the PTO published revised guidance on the
application of § 101. 2019 Revised Patent Subject Matter Eligibility
Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (“Revised Guidance”).4 “All
USPTO personnel are, as a matter of internal agency management, expected
to follow the guidance.” Id. at 51; see also October 2019 Update at 1.
Under that guidance, we first look to whether the claim recites:
(1) any judicial exceptions, including certain groupings of
abstract ideas (i.e., mathematical concepts, certain methods of
organizing human activity such as fundamental economic
practices, or mental processes) (“Step 2A, Prong 1”); and
(2) additional elements that integrate the judicial exception into
a practical application (see MPEP §§ 2106.05(a)–(c), (e)–(h)
(9th ed. Rev. 08.2017, Jan. 2018)) (“Step 2A, Prong 2”).5
See 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 (under
“Step 2B”) look to whether the claim:
(3) adds a specific limitation beyond the judicial exception that
is not “well-understood, routine, and conventional” in the field
(see MPEP § 2106.05(d)); or

4 In October 2019, in response to received public comments, the PTO issued
a further memorandum clarifying the Revised Guidance. USPTO
Memorandum, October 2019 Update: Subject Matter Eligibility (Oct. 17,
2019), available at https://www.uspto.gov/sites/default/files/documents/
peg_oct_2019_update.pdf (“October 2019 Update”).
5 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 Revised Guidance, 84 Fed. Reg. at 54–55
(Section III.A.2).
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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.
See Revised Guidance, 84 Fed. Reg. at 56.
The Examiner finds that the claims recite “selecting and sending
advertisements based on collected data.” Ans. 4 (emphasis omitted).6 The
Examiner thus determines that the claims recite advertising, marketing, or
sales activities or behaviors and/or managing personal behavior or
relationships or interactions between people, which fall under certain
methods of organizing human activity identified in the Revised Guidance as
a judicial exception, i.e., an abstract idea. Id. The Examiner further
determines that the abstract idea is not integrated into a practical application,
and that the claims do not contain an inventive concept or include additional
elements that are sufficient to amount to significantly more than the abstract
idea. Id. at 5–7. For example, the Examiner finds that the claims do not
reflect “improvements to the functioning of a computer or other technology
or technical field,” but rather “implement[] the abstract idea on a generic
computer” and “merely use[] a computer as a tool to perform the abstract
idea.” Id. at 5 (citing MPEP §§ 2106.05(a), (h)).
Appellant argues that even if the claims recite a judicial exception, it
is integrated into a practical application because the claims provide a
“practical result” of “content . . . transmitted to the communication device.”
Appeal Br. 8. In particular, Appellant argues that the claims “provide a

6 The Examiner’s Answer provides an “updated” § 101 rejection in view of
the Revised Guidance, which was issued after the Examiner’s Non-Final
Rejection. See Ans. 3.
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system in which content is chosen for transmission to the communication
device based on a combination of passive and active user input.” Id.
Step 2A, Prong 1
We agree with the Examiner that the claims recite a judicial
exception, i.e., an abstract idea. See Ans. 3. Specifically, we agree that the
claims recite commercial interactions, one of the certain methods of
organizing human activity identified in the Revised Guidance as a judicial
exception, in the form of advertising activities. See id.
For example, independent claim 1 recites:
selectively send advertisements to said at least one mobile
wireless communications device based upon the activity history
and a given time of day when the at least one mobile wireless
communications device is within the first geographical region,
and
selectively send advertisements to said at least one mobile
wireless communications device based upon the activity history
within the first geographical region, a given time of day, the
different location, and a determination that a user of the at least
one mobile wireless communications device is accompanied by
at least one other person, the determination being based on
receipt of an indication from the user that the user is
accompanied by the at least one other person, when the at least
one mobile wireless communications device is at the different
location outside of the first geographical region.
In reciting “selectively send[ing] advertisements” based upon certain
criteria, these limitations (as do corresponding limitations in independent
claims 10, 14, and 18) recite advertising activities. Indeed, independent
claims 1, 10, 14, and 18 generally recite commercial interactions in the form
of advertising activities in that the claimed invention relates to targeting
advertisements. See Spec. ¶¶ 3, 10.
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Accordingly, the claims recite one of the certain methods of
organizing human activity identified in the Revised Guidance and, thus, an
abstract idea.
Step 2A, Prong 2
Because the claims recite an abstract idea, we next look to whether the
claims recite additional elements that integrate the abstract idea into a
practical application. Revised Guidance, 84 Fed. Reg. at 54. Claim
limitations that indicate integration into a practical application include
additional elements that reflect an improvement in the functioning of a
computer, or an improvement to other technology or technical field. Id. at
55. When a claim recites a judicial exception and fails to integrate the
judicial exception into a practical application, the claim is “directed to” the
judicial exception. Id. at 51.
We determine that the additional limitations recited in the claims do
not integrate the recited judicial exception into a practical application. For
example, claim 1 additionally recites “generat[ing] an activity history for
said at least one wireless communications device including geographical
positions at corresponding times of day based upon activity within a first
geographical region” and “determin[ing] whether the at least one mobile
wireless communications device is within the first geographical region or at
a different location outside of the first geographical region.” These
limitations are recited at a high level of generality (i.e., as general steps of
gathering the information or data used to selectively send advertisements)
and amount to insignificant pre-solution activity. See Revised Guidance,
84 Fed. Reg. at 55; MPEP § 2106.05(g).
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We agree with the Examiner that the claims otherwise merely recite
generic computer components that similarly fail to integrate the recited
abstract idea into a practical application. See Ans. 5, 8; Non-Final Act. 7–8.
For example, claim 1 recites a “mobile wireless communications device,”
“advertising server,” and “wireless communications network.” These
limitations are recited at a high level of generality, i.e., as generic
components performing generic computer functions of computer processing,
storage, and communication. As the Examiner points out, the claims merely
apply the abstract idea using generic computer components and indicate a
field of use or technological environment (i.e., mobile wireless
communications systems) for advertising activity. See Ans. 5; Spec. ¶ 1;
Revised Guidance, 84 Fed. Reg. at 55; MPEP § 2106.05(f), (h). The claim
limitations do not include any particular machine that is integral to the claim.
See Revised Guidance, 84 Fed. Reg. at 55; MPEP § 2106.05(b).
Appellant argues that the abstract idea is integrated into a practical
application because the claims “provide a system in which content is chosen
for transmission to the communication device based on a combination of
passive and active user input” and a “practical result” of “content . . .
transmitted to the communication device.” Appeal Br. 8. We are
unpersuaded by Appellant’s argument and agree with the Examiner that the
claims do not recite a technological improvement in addition to the abstract
idea. See Ans. 5; Non-Final Act. 8. As discussed above, the recited “mobile
wireless communications device,” “advertising server,” and “wireless
communications network” are merely generic computer components
performing generic functions of computer processing, storage, and
communication. Although Appellant argues that advertisements are selected
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“based on a combination of passive and active user input” (Appeal Br. 8),
the claims “do not require an arguably inventive set of components or
methods, such as measurement devices or techniques, that would generate
new data. They do not invoke any assertedly inventive programming.”
Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1355 (Fed. Cir.
2016). Rather, the claims simply recite an existing business practice—
targeted advertising—with the benefit of generic computer technology.
Thus, the claims do not reflect an improvement in computer functionality or
to any other technology or technical field. See Revised Guidance, 84 Fed.
Reg. at 55; MPEP § 2106.05(a).
Even in combination, the additional limitations do not integrate the
abstract idea into a practical application because they do not impose any
meaningful limits on practicing the abstract idea. Accordingly, we agree
with the Examiner that the claims are directed to an abstract idea.
Step 2B
Turning to Step 2B of the Revised Guidance, we determine that there
are no specific limitations beyond the judicial exception, i.e., the abstract
idea, that are not well-understood, routine, and conventional in the field. See
Alice, 573 U.S. at 225. For example, the additionally recited “mobile
wireless communications device,” “advertising server,” and “wireless
communications network” are not described as anything other than generic
computer components performing generic computer functions that are
well-understood, routine, and conventional, and thus do not amount to
significantly more than the abstract idea. See Spec. ¶¶ 3 (referring to “early
cellular phones”), 17 (listing several types of wireless communications
network protocols “as will be appreciated by those skilled in the art” and
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“[v]arious types of mobile wireless communications devices”), 30 (generally
describing server devices “as will be appreciated by those skilled in the art”).
Those additional elements relate to no more than implementation of the
abstract idea using generic computer components and do not provide an
inventive concept to transform the abstract idea into a patent-eligible
invention. See Alice, 573 U.S. at 223–24.
Reevaluating the extra-solution activities of “generat[ing] an activity
history for said at least one wireless communications device including
geographical positions at corresponding times of day based upon activity
within a first geographical region” and “determin[ing] whether the at least
one mobile wireless communications device is within the first geographical
region or at a different location outside of the first geographical region” (see
Revised Guidance, 84 Fed. Reg. at 56 (stating that a conclusion under Step
2A that an additional element is insignificant extra-solution activity should
be reevaluated in Step 2B)), we find nothing unconventional in these steps of
gathering the information or data (i.e., activity history and geographical
location of the mobile wireless communications device) used to selectively
send advertisements. See Spec. ¶¶ 22 (describing “one of many exemplary
events or activity patterns that can be included in the activity history for use
in determining appropriate advertising content to send to the device 31, as
will be appreciated by those skilled in the art”), 25 (“The activity history
module 36 may further recognize a location as a business geographical
location because it is located in an office park, an industrial area, etc., as will
be appreciated by those skilled in the art.”).
Appellant has not shown that the claims on appeal add any specific
limitation beyond the judicial exception that is not well-understood, routine,
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and conventional in the field. Appellant also provides no evidence of how
the ordered combination is unconventional or amounts to significantly more
than the abstract idea to which the claims are otherwise directed.
Accordingly, considering the claim elements individually and as an
ordered combination, we agree with the Examiner that there are no
meaningful claim limitations that represent sufficiently inventive concepts to
transform the nature of the claims into a patent-eligible application of the
abstract idea. See Ans. 6.
For the foregoing reasons, we sustain the Examiner’s rejection of
claims 1–3, 5–12, 14–16, and 18–20 under 35 U.S.C. § 101.
Rejection Under 35 U.S.C. § 103
Appellant argues that the combination of Ramer and Eisenson fails to
teach or suggest the following limitation of independent claims 1, 10, 14,
and 18:
selectively send[ing] advertisements . . . based upon . . . a
determination that a user of the at least one mobile wireless
communications device is accompanied by at least one other
person, the determination being based on receipt of an indication
from the user that the user is accompanied by the at least one
other person . . . .
Appeal Br. 9–10. We agree with Appellant that the portions of Ramer and
Eisenson cited by the Examiner do not teach or suggest selectively sending
advertisements based on “an indication from the user that the user is
accompanied by the at least one other person.”
For example, the Examiner cites, inter alia, Ramer’s disclosure of
identifying a wireless device’s geographical location, “proximity to other
users,” or “position relative to other users (e.g., in a line).” Non-Final
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Act. 10–11 (citing Ramer ¶ 153). Ramer’s identification of proximity or
position relative to other users is a location determination performed by a
“locator facility” rather than an indication by the user that the user is
accompanied by at least one other person. See Ramer ¶ 153.
The Examiner further cites Ramer’s disclosure of a “search
function . . . adapted based on number of children” in a family (Ans. 10
(emphasis omitted) (citing Ramer ¶¶ 219, 236, 390)) and a “form or active
control (such as a button) for making [restaurant] reservations” (id. at 12
(emphasis omitted) (citing Ramer ¶ 381)). A user’s family information,
such as number of children, does not indicate that the user is accompanied
by at least one other person at a particular time (e.g., “when the at least one
mobile wireless communications device is at the different location outside of
the first geographical region”). And although the Examiner finds that a
restaurant reservation “generally includes . . . number of people in the party”
(id. at 13 (emphasis omitted)), we determine that Ramer’s general disclosure
of a restaurant reservation form presented to the user resulting from the user
activating the restaurant’s sponsored link is insufficient to teach or suggest
targeted advertisements based on an indication from the user that the user is
accompanied by at least one other person. See Ramer ¶ 381.
The Examiner additionally cites Ramer for “direct ‘explicit’ input or
indications by user” (Ans. 12 (citing Ramer ¶ 50)) and Eisenson for “real
time entry by the user of new or immediate interests” (id. at 14 (citing
Eisenson ¶¶ 65–66)). These general disclosures of user input also do not
teach or suggest an indication from the user that the user is accompanied by
at least one other person.
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For the foregoing reasons, we do not sustain the Examiner’s rejection
under 35 U.S.C. § 103(a) of independent claims 1, 10, 14, and 18 and their
dependent claims.
CONCLUSION
We affirm the Examiner’s rejection of claims 1–3, 5–12, 14–16, and
18–20 under 35 U.S.C. § 101.
We reverse the Examiner’s rejection of claims 1–3, 5–12, 14–16, and
18–20 under 35 U.S.C. § 103.
Because we have affirmed at least one ground of rejection with
respect to each claim on appeal, the Examiner’s rejection of claims 1–3,
5–12, 14–16, and 18–20 is affirmed. See 37 C.F.R. § 41.50(a)(1).
DECISION SUMMARY
In summary:

TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).
AFFIRMED
Claims
Rejected 35 U.S.C. §
Reference(s)/
Basis Affirmed Reversed
1–3, 5–12,
14–16, 18–20
101 Eligibility 1–3, 5–12,
14–16, 18–20

1–3, 5–12,
14–16, 18–20
103(a) Ramer,
Eisenson
1–3, 5–12,
14–16, 18–20
Overall
Outcome
1–3, 5–12,
14–16, 18–20