Blue Calypso, LLC

Patent Trials and Appeals Board

May 26, 2020

2018005054 (P.T.A.B. May. 26, 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.
13/902,256 05/24/2013 Andrew E. Levi 17593.0127 8512
101839 7590 05/26/2020
SCHULTZ & ASSOCIATES, P.C.
5400 LBJ FREEWAY
SUITE 1200
DALLAS, TX 75240
EXAMINER
DAGNEW, SABA
ART UNIT PAPER NUMBER
3682
NOTIFICATION DATE DELIVERY MODE
05/26/2020 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
docket@grspc.com
kneedham@grspc.com
patents@grspc.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte ANDREW E. LEVI and BRADLEY W. BAUER
____________

Appeal 2018-005054
Application 13/902,256
Technology Center 3600
____________

Before PHILIP J. HOFFMANN, CYNTHIA L. MURPHY, and
TARA L. HUTCHINGS, Administrative Patent Judges.

MURPHY, Administrative Patent Judge.

DECISION ON APPEAL
The Appellant1 appeals from the Examiner’s rejections of
claims 1–22. We sustain at least one rejection for each of the claims on
appeal, and, thus, we AFFIRM.2

1 The Appellant is the “applicant” (e.g., “the inventor or all of the joint
inventors”) as defined in 37 C.F.R. § 1.42. “The real party in interest is Blue
Calypso, LLC.” (Appeal Br. 2.)
2 We have jurisdiction over this appeal under 35 U.S.C. § 134(a) and
35 U.S.C. § 6(b).
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BACKGROUND
The Appellant discloses a method “for distribution of advertisements
and electronic offers between communication devices.” (Spec., Abstract.)
According to the Appellant, “[t]oday, consumers can control which
advertisements reach them more effectively than in the past.” (Spec. ¶ 3.)
Thus, when an advertiser distributes an advertisement directly to a person’s
communication device (e.g., cell phone), there is a possibility that the person
will immediately assume it is an “undesirable advertisement” and “skip”
over it. (Id. ¶ 3.) And, needless to say, advertisers are “highly motivated” to
solve this advertisement-distribution problem. (Id. ¶ 2.)
The Appellant’s invention solves this problem by providing an
advertising method in which a recipient receives a “personally endorsed”
advertisement in a communication from an “existing personal contact[].”
(Spec. ¶ 5.)
More particularly, with the Appellant’s advertising method, a person
subscribes to endorse an advertiser’s advertisement when he/she is
communicating with a known contact (e.g., a friend). (See Spec. ¶ 109.) Put
another way, there is an agreement, between a subscriber and an advertiser,
that the subscriber will endorse the advertiser’s advertisement in a
communication session between the subscriber and the subscriber’s friend.
(See id. ¶¶ 57, 110.) In this manner, the recipient of the advertiser’s offer is
receiving an advertisement that is personally endorsed by his/her friend.
Apparently, a recipient is less likely to skip an advertisement endorsed
by a friend, and, therefore, the Appellant’s advertising method “increase[s]
the acceptance of the advertisement.” (Spec. ¶ 5.)
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ILLUSTRATIVE CLAIM
1. A method of providing access to an electronic offer from
an advertiser to a source communication device possessed by a
subscriber and distributing the access to the electronic offer from
the source communication device to a destination
communication device possessed by a recipient, the method
executed by a server of an intermediary and comprising the steps
of:
establishing, by a server of the intermediary, a bi-lateral
agreement between the subscriber, via the source communication
device, and the advertiser, via a server of the advertiser, to
distribute the electronic offer;
creating, by the server of the intermediary, an endorsement
token related to the electronic offer;
providing, by the server of the intermediary, information,
related to the electronic offer, to the source communication
device that can be referenced in a communication session
between the source communication device and the destination
communication device;
wherein the endorsement token is transmitted
contemporaneously with the communication session from the
source communication device to the destination communication
device;
receiving, by the server of the intermediary, a signal
related to the endorsement token from the destination
communication device; and,
transmitting, by the server of the intermediary, the
electronic offer in response to the signal to the destination
communication device.
REJECTIONS
I. The Examiner rejects claims 1–22 under 35 U.S.C. § 101 as
directed to a judicial exception (i.e., an abstract idea), without significantly
more. (Final Action 8.)
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II. The Examiner rejects claims 1–3, 6, 7, and 9–17 under
35 U.S.C. § 103 as unpatentable over Korte3 and Yi.4 (Final Action 12.)
III. The Examiner rejects claims 4, 5, 8, and 18–20 under 35 U.S.C.
§ 103 as unpatentable over Korte, Yi, and Bandera.5 (Final Action 26.)
IV. The Examiner rejects claims 21 and 22 under 35 U.S.C. § 103
as unpatentable over Korte, Yi, Bandera, and Barnett.6 (Final Action 34.)
V. The Examiner provisionally rejects claims 1–20 under the
judicially created doctrine of obviousness-type double patenting as being
unpatentable over claims 1–23 of Levi.7 (Final Action 5.)
DISCUSSION
Independent claims 1, 12, and 18 recite three computer components,
namely a “communication device” (possessed by and/or associated with a
“subscriber”), another “communication device” (possessed by and/or
associated with a “recipient”), and an “intermediary” (having a “server” or a
“processor). (Appeal Br., Claims App.)8

3 US 2006/0004713 A1, published January 5, 2006.
4 US 2002/0082908 A1, published June 27, 2002.
5 US 6,332,127 B1, issued December 18, 2001.
6 US 6,336,099 B1, issued January 1, 2002.
7 US Application No. 13/888,270, filed on May 6, 2013. We note that
USPTO records reflect that this application has been abandoned. (See
Notices of Abandonment mailed on October 18, 2017 and June 7, 2018.)
8 Claims 1 and 18 recite “a source communication device” that is “possessed
by a subscriber,” “a destination communication device” that is “possessed by
a subscriber,” and “a server of an intermediary” that “execute[s]” certain
data-conveyance steps. (Appeal Br., Claims App.) Claim 12 recites “a
source communication device” that is “associated with a subscriber,” “a
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Independent claims 1, 12, and 18 also recite steps in which
commercial data is conveyed among these three computer components.
Specifically, they recite a step in which commercial data is conveyed “from”
the intermediary “to” the subscriber’s communication device (Appeal Br.,
Claim App.);9 a step in which commercial data is conveyed “from” the
subscriber’s communication device “to” the recipient’s communication
device (id.);10 and a step in which commercial data is conveyed “from” the
intermediary “to” the recipient’s communication device in response to a
signal (id.).11

destination communication device” that is “associated with a recipient,” and
“an intermediary” (having a “processor”) “programmed to carry out” similar
data-conveyance steps. (Id.)
9 Claim 1 recites “providing, by the server of the intermediary, information,
related to the electronic offer, to the source communication device.”
(Appeal Br., Claims App.) Claim 12 recites “sending an endorsement tag,
related to the first advertisement, to the source communication device.” (Id.)
Claim 18 recites “sending an endorsement token related to the electronic
offer to the source communication device.” (Id.)
10 Claim 1 recites that “[an] endorsement token” (“related to [an] electronic
offer”) is “transmitted contemporaneously with [a] communication session”
(“between the source communication device and the destination
communication device”) “from the source communication device to the
destination communication device.” (Appeal Br., Claims App.) Claim 12
recites that “the endorsement tag” (“related to” the advertisement) is
“transmitted from the source communication device to the destination
communication device.” (Id.) Claim 18 recites that “[a]n endorsement
token is transmitted with [a] communication session” (“between the source
communication device and the destination communication device”) “from
the source communication device to the destination communication device.”
(Id.)
11 Claim 1 recites a step of “transmitting, by the server of the intermediary,
the electronic offer in response to [a] signal to the destination
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REJECTION I
The Examiner rejects claims 1–22 under 35 U.S.C. § 101 as directed
to a judicial exception (i.e., an abstract idea), without significantly more.
(Final Action 8.) We sustain this rejection.
Judicial Exceptions
The Patent Act defines subject matter eligible for patent protection as
“any new and useful process, machine, manufacture, or composition of
matter, or any new and useful improvement thereof.” (35 U.S.C. § 101.)
Yet the Supreme Court has “long held” that this provision contains an
important implicit exception: “[l]aws of nature, natural phenomena, and
abstract ideas are not patentable.” (Ass’n for Molecular Pathology v. Myriad
Genetics, Inc., 569 U. S. 576, 589 (2013).) These three concerns are
“judicially created exceptions to § 101,” or more concisely, “judicial
exceptions.” (McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299,
1311 (Fed. Cir. 2016).) Thus, an “abstract idea” is a judicial exception to
subject matter that seemingly falls within one of the statutory classifications
listed in 35 U.S.C. § 101 (e.g., a method).
In Alice Corp. v. CLS Bank Int’l, 573 U.S. 208 (2014), the Supreme
Court provided a two-step test to detect when an attempt is being made to
patent an abstract idea in isolation. (Id. at 217–18.) In the first step of the

communication device.” (Appeal Br., Claims App.) Claim 12 recites a step
(which the intermediary processor is “programmed to carry out”) of
“transmitting the advertisement to the designation device upon receipt of [a]
first signal.” (Id.) Claim 18 recites a step (“executed by” the intermediary
server) of “transmitting the electronic offer to the destination communication
device upon receipt of [a] signal.” (Id.)
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Alice test for patent eligibility, a determination is made as to whether the
claim at issue is “directed to” an abstract idea. (Id. at 218.) If the claim at
issue is “directed to” an abstract idea under Alice step one, the second step of
the Alice test must be performed. (See Alice, 573 U.S. at 217–18.) In Alice
step two, a determination is made as to whether “additional elements” in the
claim, both individually and as an ordered combination, contribute
“significantly more” than the abstract idea. (Id.) If a claim is directed to an
abstract idea, and its additional elements do not add significantly more to
this abstract idea, the claim fails the Alice test for patent eligibility.
The 2019 Revised Patent Subject Matter Eligibility Guidance (“2019
§ 101 Guidance”) provides us with specific steps for discerning whether a
claim passes the Alice test for patent eligibility. (See 2019 Revised Patent
Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019).) These
steps are “[i]n accordance with judicial precedent” and consist of a
two-pronged Step 2A and a Step 2B. (Id. at 52.)
Analysis
The Examiner concludes that independent claim 1 fails the Alice test
for patent eligibility because it is directed to an abstract idea (i.e.,
advertising) and its additional elements do not contribute significantly more
than the abstract idea.12 We agree with the Examiner’s conclusion.

12 The Examiner characterizes independent claim 1 as reciting “a series of
acts for providing trackable advertising impressions and brand awareness by
directly displaying advertisements and testimonials to potential customers
via advertising system.” (Final Action 8.) The Examiner also determines
that independent claim 1 recites “[g]eneric computers performing generic
functions” which do not add “significantly more than the abstract idea.” (Id.
at 9.)
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Per the 2019 § 101 Guidance, we begin our analysis with the first
prong of Step 2A (Prong One) in which we determine whether independent
claim 1 recites an abstract idea. (See 2019 § 101 Guidance, Federal Register
Vol. 84, No. 4, at 52.) The Guidance “extracts and synthesizes key concepts
identified by the courts as abstract ideas,” and these concepts include
“[c]ertain methods of organizing human activity,” and, more particularly,
“commercial” interactions, and, even more particularly, “advertising.” (Id.
at 52.) For example, the Federal Circuit has held that advertising is “an
abstract overly broad concept long practiced in our society.” (Intellectual
Ventures I LLC v. Capital One Bank (USA), 792 F.3d 1363, 1371 (Fed. Cir.
2015).)
Independent claim 1 sets forth a “method of providing access to an
electronic offer from an advertiser,” and the claimed method involves an
“advertiser,” a “subscriber,” and a “recipient.” (Appeal Br., Claims App.)
These three parties would necessarily be involved in an advertising method
in which a person (the subscriber) agrees to endorse an advertiser’s
advertisement when he/she communicates with a friend (the recipient).
Independent claim 1 recites the step of “establishing” a bilateral
agreement between the subscriber and the advertiser “to distribute the
electronic offer.” (Appeal Br., Claims App.) In an advertising method in
which a person agrees to endorse an advertiser’s advertisement, there would,
of course, be an agreement to do so.
Independent claim 1 recites a “communication session” between the
subscriber’s “communication device and the recipient’s “communication
device.” (Appeal Br., Claims App.) In an advertising method in which a
person agrees to endorse an advertisement when he/she communicates with
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a friend, it follows that there would need to be a communication session
between these two friends.
Independent claim 1 recites the step of providing “information, related
to the electronic offer” (which “can be referenced in [the] communication
session”) to the subscriber’s communication device. (Appeal Br., Claims
App.) In an advertising method in which a person agrees to endorse an
advertiser’s offer in a communication session with a friend, the endorsing
person would need to be provided with commercial data about this offer.
Otherwise, there would be nothing to endorse.
Independent claim 1 recites the step of creating “an endorsement
token related to the electronic offer” which is “transmitted
contemporaneously with the communication session.” (Appeal Br., Claims
App.) In an advertising method in which a subscriber endorses an
advertisement in a communication session with a friend, there would need to
be creation of data representing the subscriber’s endorsement, and this
endorsement data would be transmitted to the subscriber’s friend in the
communication session. Otherwise, the subscriber’s friend would have no
way of knowing that the subscriber endorses the advertiser’s offer.
Independent claim 1 recites the steps of receiving a “signal related to
the endorsement token” from the recipient’s communication device, and
transmitting the advertiser’s offer “in response to the signal” to the
recipient’s communication device. (Appeal Br., Claims App.) In an
advertising method in which a person agrees to endorse an advertiser’s offer
in a communication session with a friend, the prevailing objective is for the
friend to accept the advertiser’s offer. As such, the advertising method
would be for naught if this acceptance could not transpire.
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Thus, independent claim 1 sets forth an advertising method
comprising commercial-interaction steps that occur when a person agrees to
endorse an advertiser’s offer when he/she is communicating with a friend.
As indicated above, commercial interaction (e.g., advertising) is a method of
organizing human activity that constitutes an abstract idea. (2019 § 101
Guidance, Federal Register Vol. 84, No. 4, 52.)
Consequently, independent claim 1 recites an abstract idea under
Prong One of Step 2A, and so we proceed to the second prong of Step 2A
(Prong Two).
In Prong Two of Step 2A, we determine “whether the claim as a
whole integrates the recited judicial exception into a practical application of
the exception.” (2019 § 101 Guidance, Federal Register Vol. 84, No. 4, 54.)
In doing this determination, we identify “whether there are any additional
elements in the claim beyond the abstract idea,” and we evaluate “those
additional elements individually and in combination to determine whether
they integrate the exception into a practical application.” (Id. at 54–55.)
Independent claim 1 requires the subscriber and the recipient to
possess “communication device[s],” and commercial-interaction steps to be
“executed by a server of an intermediary.” (Appeal Br., Claims App.) As
for the arrangement of the intermediary server relative to the communication
devices, claim 1 only requires the intermediary to convey commercial data
to the two communication devices and to receive a signal from the
recipient’s communication device. As for the interaction between the two
communication devices, claim 1 only requires the subscriber’s
communication device to communicate with, and convey commercial data
to, the recipient’s communication device. Thus, claim 1’s additional
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elements are generic computer components arranged to perform generic
computer functions, namely conveying data, receiving a signal, and
communicating with each other.
Consequently, under Prong Two of Step 2A, additional elements in
independent claim 1 do not integrate the abstract idea into a practical
application, and we proceed to Step 2B.
In Step 2B, we evaluate whether “additional elements recited in the
claim[] provide ‘significantly more’ than the recited judicial exception.”
(See 2019 § 101 Guidance, 84 Fed. Reg. at 56.) More particularly, we
evaluate whether these additional elements “add[] a specific limitation or
combination of limitations that are not well-understood, routine,
conventional activity,” or whether they instead “simply append[] well-
understood, routine, conventional activities previously known to the
industry, specified at a high level of generality, to the judicial exception.”
(Id.) Thus, if a claim’s additional elements consist of a conventional
arrangement of conventional computer components, they will not amount to
significantly more, and the claim fails the Alice test for patent eligibility.
(Id.)
Here, the Specification defines independent claim 1’s additional
elements as conventional computer components. Specifically, the source
communication device (i.e., the subscriber’s communication device) is
defined as “a computer, cell phone, smart phone or other device capable of
sending a communication message and an endorsement tag” (Spec. ¶ 36);
the destination communication device (i.e., the recipient’s communication
device) is defined as “a computer, cell phone, smart phone or other device
capable of receiving a communication message” (id. ¶ 24); and the
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“intermediary” is defined as “one or more computer servers and memory
executing computer applications and communications to implement the
advertising endorsement system” (id. ¶ 32).
As for the ordered combination of independent claim 1’s additional
elements, the Specification depicts them as communicating through a network
(see Spec. Fig. 1) and describes this network as “the Internet, a private
network, a cellular phone network, or other server provider networks (id.
¶ 59). The Specification also describes the “communication protocol” as
including “Transmission Control Protocol/ Internet Protocol (TCP/IP); Global
System for Mobile Communications (GSM) including Short Messaging
Service (SMS), multimedia messaging service (MMS), Code Division
Multiple Access (CDMA), Wireless Application Protocol (WAP), 3G and 4G
communication services including SMS, MMS protocols and WIFI.” (Id.
¶ 61.)
Consequently, under Step 2B of the 2019 § 101 Guidance, independent
claim 1’s additional elements do not provide significantly more than the
recited abstract idea, and claim 1 fails the Alice test for patent eligibility.13
The Appellant’s Arguments
The Appellant argues that independent claim 1 passes the Alice test
for patent eligibility when it is properly compared to the claims at issue in
DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014),
Enfish, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016), BASCOM

13 Thus, under Alice step one, independent claim 1 is “directed to” an
abstract idea; and, under Alice step two, additional elements in claim 1 (both
individually and in combination) do not add “significantly more” to this
abstract idea. (Alice 573 U.S. at 218.)
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Glob. Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341 (Fed.
Cir. 2016), McRO, Inc. v. Bandai Namco Games America Inc., 837 F.3d
1299 (Fed. Cir. 2016), and Amdocs (Israel) Limited v. Openet Telecom, Inc.,
841 F.3d 1288 (Fed. Cir. 2016). (See Appeal Br. 20–27; Reply Br. 5–12.)
Specifically, the Appellant asserts that, per DDR, “[c]laims are not
directed to an abstract idea when they override the routine and conventional
sequence of events ordinarily found in the art.” (Appeal Br. 26.) In DDR,
the claims passed the Alice test for patent eligibility because they
“specif[ied] how interactions with the Internet are manipulated to yield a
desired result—a result that overrides the routine and conventional sequence
of events ordinarily triggered by the click of a hyperlink.” (DDR, 773 F.3d
at 1258.) Here, the Appellant does not describe what would be a routine and
conventional sequence of events, much less distinguish them from a
sequence of events that would occur in the claimed advertising method.14
The Appellant asserts that, per Enfish, “[c]haracterizing the claims at
too high a level of abstraction that leaves out critical elements is improper.”
(Appeal Br. 20.) However, as discussed above, each limitation in
independent claim 1 can be designated as either a limitation embedded in the
abstract idea of advertising, or as an additional element beyond this abstract
idea. And claim 1’s additional elements are addressed, individually and in
combination, under both Prong Two of Step 2A and Step 2B.

14 The Appellant contends that “[h]ere, the steps of the claim incorporate the
features of transmitting first and second links for advertising and
testimonials between three distinct devices.” (Appeal Br. 26.) Yet the
Appellant does not draw our attention to the limitations in independent
claim 1 constituting these first and second links and/or to steps that involve
the clicking of links to trigger a sequence of events.
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The Appellant asserts that, per BASCOM, we must consider the
computer components recited in independent claim 1 not only individually,
but also in combination. (See Appeal Br. 26.) In BASCOM, the Federal
Circuit held that it is possible for “an inventive concept” to reside in “the
non-conventional and non-generic arrangement of known, conventional
pieces,” such as “a set of generic computer components.” (BASCOM, 827
F.3d at 1350.) However, as discussed above, insofar as independent claim 1
requires any specific arrangement of generic computer components, the
Specification describes their arrangement as conventional. (See Spec. ¶¶ 24,
32, 36, 59, 61 Fig. 1.)
The Appellant asserts that, in the claimed advertising method, “[t]he
specific devices along with the communication protocol” are “like” the
claimed rules in McRO. (Appeal Br. 20.) In McRO, the Federal Circuit held
that “the ordered combination of claimed steps, using unconventional rules
that relate sub-sequences of phonemes, timings, and morph weight sets, is
not directed to an abstract idea.” (McRO, 837 F.3d at 1302–1303.) Here,
the Appellant does not specify what unconventional rules are allegedly
recited in independent claim 1. Moreover, the Federal Circuit distinguished
the animation-producing automation in McRO from automation done merely
for “carrying out a fundamental economic practice.” (McRO, 837 F.3d
at 1315.)
The Appellant asserts that, per Amdocs, “[c]laims that include
arguably generic components that operate in an unconventional manner are
patent eligible.” (Appeal Br. 26.) In Amdocs, the Federal Circuit held that
the claim at issue “entail[ed] an unconventional technological solution
(enhancing data in a distributed fashion) to a technological problem
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(massive record flows which previously required massive databases).”
(Amdocs 841 F.3d at 1300.) Here, the problem addressed is a commercial
problem, rooted in an advertiser’s desire for a recipient of an advertisement
to accept, rather than ignore, the advertisement. And the Appellant’s
solution to this problem (i.e., the advertisement being personally endorsed
by a known contact) is a commercial solution aligning itself with the
familiar adage that “word of mouth really is the best advertisement.”
The Appellant argues that “[t]he claims in this case include several
features that are not found in the prior art,” because the cited prior art
references “do[] not disclose the three claimed devices communicating in
accordance with the protocol required by the claims.” (Appeal Br. 24–25.)
Independent claim 1 may, or may not, provide an improved advertising
strategy when compared to prior art advertising strategies. However, even a
“brilliant” abstract idea “does not by itself satisfy the § 101 inquiry.” (Ass’n
for Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 591
(2013)); and “a claim for a new abstract idea is still an abstract idea”
(Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1151 (Fed. Circ.
2016)).
The Appellant argues that “[t]he claimed invention does not preempt
all approaches” for “for accomplishing the abstract idea.” (Appeal Br. 25.)
However, “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, 573 U.S. at 216).) Although
“preemption may signal patent ineligible subject matter, the absence of
complete preemption does not demonstrate patent eligibility.” (Id.)
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Thus, after careful consideration of the Appellant’s arguments, we still
agree with the Examiner that independent claim 1 does not pass the Alice test
for patent eligibility.
Summary
We sustain the Examiner’s rejection of independent claim 1 under
35 U.S.C. § 101. The Appellant argues claims 1–22 as a group (see Appeal
Br. 17–27), and so we likewise sustain the Examiner’s rejection of
claims 2–22 under 35 U.S.C. § 101.15
REJECTIONS II–IV
The Examiner rejects claims 1–20 as unpatentable over Korte in view
of Yi, alone, or further in view of Bandera or Barnett. (See Final Action 12,
26, 34.) We do not sustain these rejections.
Obviousness
“The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results.”
(KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007).) However, when
relying upon a combination of prior art elements to establish obviousness, an
examiner must provide findings, supported by the record, that this
combination possesses “all limitations in [the] claim.” (CFMT, Inc. v.
Yieldup Intl Corp., 349 F.3d 1333, 1342 (Fed. Cir. 2003).) In other words,

15 “When multiple claims subject to the same ground of rejection are argued
as a group or subgroup by appellant, the Board may select a single claim
from the group or subgroup and may decide the appeal as to the ground of
rejection with respect to the group or subgroup on the basis of the selected
claim alone.” (37 CFR § 41.37(c) (1)(iv).)
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the combination of the prior art, “even if supported by a motivation to
combine,” must disclose all limitations of the claim. (Id.) And,
notwithstanding permission from the specification to do so, it is improper to
rely upon a single prior art element to satisfy two distinctly claimed
elements. (See, Lantech, Inc. v. Keip Machine Co., 32 F.3d 542, 547 (Fed.
Cir. 1994); In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999).)
Analysis
The Examiner’s obviousness rejections are all premised upon findings
that Korte discloses the three computer components and the three
commercial-data conveyances required by independent claims 1, 12, and 18.
(See Final Action 12–14, 28–30, 34.) We agree with the Appellant that the
record does not sufficiently support the Examiner’s findings in this regard.
(See Appeal Br. 28–30; Reply Br. 12– 13.)
Korte discloses a system 100 including a client device 102a (e.g., the
personal computer of a user 112a), a client device 102b (e.g., the personal
computer of another user 112b), a search site 150, and a member network
site 160. (See Korte ¶ 9.)
In Korte’s system 100, the search site 150 includes a server
device 152; and the server device 152 includes a search engine 158 for
responding to search queries. (See Korte ¶¶ 23, 26–27, Fig. 1.) The search
device 152 communicates with user 112a’s computer 102a, user 112b’s
computer 102b, and the member network site 160. (See id.) The users 112a
and 112b can “interact” with each other through the member network
site 160 (id. ¶ 29), which implies that there could be communication session
between users 112a and 112b, and, thus, between computers 102a and 102b.
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In Korte’s system 100, when the user 112a submits a search query on
his/her computer 120a, the search engine 158 locates the search-relevant
articles and returns the located articles’ identifiers to user 112a’s
computer 102a. (See Korte ¶¶ 53–54, Fig. 3A.) Each article identifier “is
provided with one or more ‘endorse’ links that enables the user 112a to
endorse or recommend the underlying local article represented by the article
identifier.” (Id. ¶ 55.) “[O]nce the user 112a has endorsed one or more local
articles,” the search engine 158 “communicate[s] with [a] member network
engine 168 to store the endorsements in [user 112a’s] member profile in [a]
member network database 170.” (Id. ¶ 60.)
When the user 112b later submits the same or similar search query on
his/her computer 102b, the search engine 158 does not just locate the
relevant articles and return the located articles’ identifiers to user 112b’s
computer 102b. (See Korte ¶¶ 62–63, Fig. 3B.) Instead, the search
engine 158 also locates user 112a’s endorsements of these articles in his/her
profile stored in the member network database 170. (Id. ¶ 63.) The search
engine 158 then returns both the article identifiers for the located articles,
and user 112a’s endorsements of these articles, to user 112b’s
computer 102b. (Id.)
Consequently, in Korte’s system 100, there is a conveyance of
commercial data between the search server 152 and user 112a’s
computer 102a; and there is a conveyance of commercial data between the
server 152 and user 112b’s computer 102b. However, insofar as user 112a’s
computer 102a and user 112b’s computer 102b communicate with each
other, Korte does not disclose that this user-to-user communication session
involves the conveyance of commercial data.
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With respect to independent claim 1, the Examiner finds that, in
Korte’s system 100, an intermediary server provides “information, related to
[an] electronic offer, to the source communication device” when the search
server 152 sends the article identifiers to user 112a’s computer 102a. (Final
Action 13, citing Korte ¶ 27.) The Examiner also finds that an endorsement
token is transmitted contemporaneously with a “communication session
between the source communication device and [a] destination device” when
the computer 102a conveys user 112a’s endorsements back to the search
server 152. (Id., citing Korte ¶¶ 27, 63, 81, Fig.3A.) But these findings
improperly require Korte’s search server 152 to constitute both the claimed
intermediary server and the claimed destination communication device.16
With respect to independent claim 12, the Examiner finds that, in
Korte’s system 100, an intermediary “send[s] an endorsement tag related to
[a] first advertisement to the source communication source” when the search
server 152 sends the article identifiers to user 112a’s computer 102a. (Final
Action 21, citing Korte ¶ 27.) The Examiner also finds that an intermediary
“transmit[s] the advertisement to the designation device” when the
computer 102a sends the article identifiers (with user 112a’s endorsements)
back to the search server 152. (Id., citing Korte ¶¶ 54, 56.) However, these
findings likewise require the search server 152 to be both as the claimed
intermediary and the claimed destination communication device.

16 The Examiner alternatively finds Korte’s server 152 is a communication
device, and Korte’s search engine 158 is an intermediary server. (See
Answer 8–9.) However, the search engine 158 is part of the search
server 152; and the Examiner does not explain how or why another part of
the server 152 could separately constitute a communication device. (See
Reply Br. 12–13.)
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With respect to independent claim 18, the Examiner finds that, in
Korte’s system 100, the member network site 160 “enable[s] a
communication session between the source communication device and the
destination communication device, related to the electronic order.” (Id.,
citing Korte Fig. 1) The Examiner also finds that an endorsement token is
transmitted “contemporaneously with [this] communication session.” (Id.,
citing Korte ¶¶ 63, 81, Fig. 3A.) However, as discussed above, insofar as
user 112a’s computer 102a and user 112b’s computer 102b communicate
with each other via the member network site 160, such a communication
session is not disclosed as including the transmission of endorsement data.
Thus, the record does not sufficiently support the Examiner’s findings
that Korte discloses the three distinct computer components and/or the
commercial-data conveyances required by independent claims 1, 12, and 18.
(See Appeal Br. 28–30; Reply Br. 12–14.)
Summary
We do not sustain the Examiner’s rejections of independent claims 1,
12, and 18 under 35 U.S.C. § 103. The Examiner’s further findings and
determinations with respect to the dependent claims do not compensate for
the shortcomings in the rejections of the independent claims (see Final
Action 15–20, 24–28, 32–44), and so we likewise do not sustain the
rejections of the dependent claims under 35 U.S.C. § 103.17

17 The Appellant lists CBM2013-0033, CBM2013-0034, CBM2013-0035,
CBM2013-0044, and CBM2013-0046 as trials related to this appeal. (See
Appeal Br. 4–5.) In these CBM proceedings, the Board addressed prior art
challenges based on a prior art reference to Paul (US 2002/0169835 A1,
published November 14, 2002). The Board’s decisions in these CBM trials
were appealed to the Federal Circuit, and the Federal Circuit affirmed “the
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REJECTION V
The Examiner provisionally rejects claims 1–20 under the judicially
created doctrine of obviousness-type double patenting as being unpatentable
over claims 1–23 of Levi. As we have the flexibility to reach, or not reach, a
decision on a provisional obviousness-type double-patenting rejection (see
Ex parte Moncla, 95 USPQ2d 1884 (BPAI 2010) (precedential)), we
exercise this flexibility here, and do not reach a decision.
CONCLUSION
Claims Rejected Basis Affirmed Reversed
1–22 § 101 – subject
matter eligibility
1–22
1–3, 6, 7, 9–17 § 103
Korte, Yi
1–3, 6, 7,
9–17
4, 5, 8, 18–20 § 103
Korte, Yi, Bandera
4, 5, 8, 18–20
21, 22 § 103
Korte, Yi, Bandera,
Barnett
21, 22
1–20 Obvious-type double
patenting
1–20 Not reached
Overall Outcome 1–22

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).

Board’s determination that the disputed claims are anticipated by Paul.”
((Blue Calypso, LLC v. Groupon, Inc., 815 F.3d 1331, 1334 (2016).) The
§ 103 rejections before us in this appeal do not rely upon Paul as a prior art
reference, and, therefore, Paul is in no way factored into our analysis.
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AFFIRMED