Brett Delia et al.

Patent Trials and Appeals Board

Sep 3, 2019

13655254 - (D) (P.T.A.B. Sep. 3, 2019)

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.
13/655,254 10/18/2012 Brett Delia 058407/444858 1009
826 7590 09/03/2019
ALSTON & BIRD LLP
BANK OF AMERICA PLAZA
101 SOUTH TRYON STREET, SUITE 4000
CHARLOTTE, NC 28280-4000
EXAMINER
VANDERHORST, MARIA VICTORIA
ART UNIT PAPER NUMBER
3688
NOTIFICATION DATE DELIVERY MODE
09/03/2019 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):
usptomail@alston.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte BRETT DELIA and PERRY MASON ADAIR
____________

Appeal 2018-006373
Application 13/655,254
Technology Center 3600
____________

Before JOHN A. JEFFERY, DENISE M. POTHIER, and
JUSTIN BUSCH, Administrative Patent Judges.

POTHIER, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants1,2 appeal under 35 U.S.C. § 134(a) from the Examiner’s
decision to reject claims 1–10, 13–15, and 17–23. Appeal Br. 6. Claims 11,
12, and 16 have been canceled. Supp. Br. 4–5 (Claims App’x).
We affirm.

1 Throughout this opinion, we refer to the Final Action (Final Act.) mailed
March 9, 2017; the Appeal Brief (Appeal Br.) filed December 11, 2017; the
Supplemental Appeal Brief (Supp. Br.) filed February 14, 2018, containing
the correct copy of the appealed claims; the Examiner’s Answer (Ans.)
mailed March 29, 2018; and the Reply Brief (Reply Br.) filed May 29, 2018.
2 The real party in interest is listed as Groupon, Inc. Appeal Br. 2.
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Invention
According to the Specification’s Background section, electronic
navigation systems track the user’s physical location, guide the user to the
destination, and have the ability to present an advertisement to the user,
potentially allowing for trip initiation based on the advertisement. Spec.
1:15–17, 1:23–25. Appellants’ invention relates to a navigation system that
implements location-based advertising. Id. at 2:24–25. Business 10 (e.g., a
listing sponsor) provides location-based advertising content to a service
provider. Id. at 3:1–2, Fig. 1. A mobile navigation system (e.g., 403)
presents business or other information when requested by a user. Id. at 3:3–
5, Fig. 1. Responding to the user initiating a trip to a destination associated
with the listing/business, the mobile navigation system (1) directs the user to
a destination and (2) transmits various data to a remote database server (e.g.,
20), including an indication that the user reached the final destination. Id. at
3:5–12. A service provider maintains the remote database server and
generates statistics associated with navigation-based advertising
effectiveness. Id. at 3:13–15.
Independent claim 1 exemplifies the claims at issue and reads as
follows:
1. A method for providing travel progress tracking on a
mobile navigation system having intermittent wireless
communication, comprising:
presenting, via presentation logic, location-based
advertisement listings to a user through a user interface of the
mobile navigation system configured to provide navigation to

3 Figure 1 shows the mobile navigation system as “401.” The Specification
describes the mobile navigation system using “40.” Spec. 3:4–5.
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arrival zones associated with the location-based advertisement
listings, wherein:
the location-based advertising listings include
groups of multiple listings;
each of the groups of the multiple listings is within
a geographical area of a respective location traversed by
the mobile navigation system; and
each of the groups of the multiple listings is
provided to the mobile navigation system when the
mobile navigation system is at the respective location and
connected to facilitate the intermittent wireless
communication;
receiving, via upload logic, a trip initiated indication
from the user interface corresponding to a selected one of the
location-based advertisement listings;
monitoring, via monitoring logic, navigation information
output by the mobile navigation system related to the selected
one of the location-based advertisement listings, wherein the
navigation information includes location data defining travel
progress with respect to an arrival zone of the selected one of
the location-based advertisements;
generating, via analysis logic, at least one effectiveness
advertising metric based on navigation information related to
the selected one of the location-based advertisement listings,
wherein generating at least one effectiveness advertising metric
comprises graphically mapping a trip success rate footprint,
wherein the trip success rate footprint is based at least in part on
a plurality of success rates of completing a trip to a destination
and a distance from the destination when the trip is initiated;
and
generating, via analysis logic, a sponsor-specific report
based on the analysis of the navigation information, wherein the
sponsor-specific report comprises associated with location-
based advertisement listings or placement of conventional
media.

Supp. Br. 2 (Claims App’x).

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THE PATENT-ELIGIBILITY REJECTION
Claims 1–10, 13–15, and 17–23 are rejected under 35 U.S.C. § 101 as
being directed to a judicial exception without significantly more. Final Act.
2–6. The Examiner determined that the claims are directed to various
abstract ideas, including mental processes. See id. at 2–5. The Examiner
added that the claims do not include additional elements or limitations
individually or in combination that are sufficient to amount to significantly
more than the judicial exception. Id. at 4–6. Based on these determinations,
the Examiner concluded that the claims are ineligible under § 101. Id. at
2–6; see Ans. 2–9.4
Appellants argue that the claimed invention should not be viewed
merely as mental processes because the rejection includes no support from
precedential decisions indicating the broad concept of “travel progress
tracking” is abstract. See Appeal Br. 12–13; Reply Br. 2–3. According to
Appellants, the claims recite elements directed to solving technical problems
associated with (1) “data transmission in network environments with
intermittent network connectivity” and (2) a “graphical mapping of a trip
success rate footprint that is based on an aggregation of . . . success rates
over a geographic area.” Appeal Br. 13; Reply Br. 3.

4 Pages 1–28 of the Answer are numbered 1 to 28. Pages 29–44 of the
Answer, however, are renumbered 2 to 17. Thus, the Answer provides two
sets of page numbers. For clarity, we refer to the renumbered pages 2–17 as,
respectively, pages 29–44.
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ISSUE
Under § 101, has the Examiner erred in rejecting the claims by
determining that the claims are directed to judicially excepted, patent
ineligible subject matter?

PRINCIPLES OF LAW
An invention is patent eligible if it claims a “new and useful process,
machine, manufacture, or composition of matter.” 35 U.S.C. § 101.
However, the Supreme Court has long interpreted 35 U.S.C. § 101 to include
implicit exceptions: “[L]aws of nature, natural phenomena, and abstract
ideas” are not patentable. Mayo Collaborative Servs. v. Prometheus Labs.,
Inc., 566 U.S. 66, 70 (2012) (brackets in original) (citing Diamond v. Diehr,
450 U.S. 175, 185 (1981)).
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court’s two-step framework, described in Mayo
and Alice. Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 573 U.S. 208, 217–18
(2014) (citing Mayo, 566 U.S. at 75–77). In accordance with that
framework, we first determine what concept the claim is “directed to.” See
Alice, 573 U.S. at 219 (“On their face, the claims before us are drawn to the
concept of intermediated settlement, i.e., the use of a third party to mitigate
settlement risk.”); see also Bilski v. Kappos, 561 U.S. 593, 611 (2010)
(“Claims 1 and 4 in petitioners’ application explain the basic concept of
hedging, or protecting against risk.”).
Concepts determined to be abstract ideas, and thus patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219–20; Bilski, 561 U.S. at 611);
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mathematical formulas (Parker v. Flook, 437 U.S. 584, 594–95 (1978)); and
mental processes (Gottschalk v. Benson, 409 U.S. 63, 69 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as “molding of rubber products” (Diehr, 450 U.S. at 193); “tanning,
dyeing, making water-proof cloth, vulcanizing India rubber, smelting ores”
(id. at 182 n.7 (quoting Corning v. Burden, 56 U.S. (15 How.) 252, 267–68
(1854))); and manufacturing flour (Benson, 409 U.S. at 69 (citing Cochrane
v. Deener, 94 U.S. 780, 785 (1876))).
In Diehr, the claim at issue recited a mathematical formula, but the
Supreme Court held that “[a] claim drawn to subject matter otherwise
statutory does not become nonstatutory simply because it uses a
mathematical formula.” Diehr, 450 U.S. at 187; see also id. at 191 (“We
view respondents’ claims as nothing more than a process for molding rubber
products and not as an attempt to patent a mathematical formula.”). That
said, the Supreme Court also indicated that a claim “seeking patent
protection for that formula in the abstract . . . is not accorded the protection
of our patent laws, . . . and this principle cannot be circumvented by
attempting to limit the use of the formula to a particular technological
environment.” Id. (citing Benson and Flook); see, e.g., id. at 187 (“It is now
commonplace that an application of a law of nature or mathematical formula
to a known structure or process may well be deserving of patent
protection.”).
If the claim is “directed to” an abstract idea, we turn to the second
step of the Alice and Mayo framework, where “we must examine the
elements of the claim to determine whether it contains an ‘inventive
concept’ sufficient to ‘transform’ the claimed abstract idea into a patent-
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eligible application.” Alice, 573 U.S. at 221 (quotation marks omitted). “A
claim that recites an abstract idea must include ‘additional features’ to
ensure ‘that the [claim] is more than a drafting effort designed to
monopolize the [abstract idea].’” Id. (quoting Mayo, 566 U.S. at 77).
“[M]erely requir[ing] generic computer implementation[] fail[s] to transform
that abstract idea into a patent-eligible invention.” Id.
In January 2019, the USPTO published revised guidance on the
application of § 101. 2019 Revised Patent Subject Matter Eligibility
Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (“Revised Guidance”). 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 activities such as a fundamental economic practice, or mental
processes) (Revised Guidance, 84 Fed. Reg. at 52–54) (“Revised Step
2A - Prong 1”); and
(2) additional elements that integrate the judicial exception into a
practical application (see MANUAL OF PATENT EXAMINING PROCEDURE
(“MPEP”) §§ 2106.05(a)–(c), (e)–(h)) (Revised Guidance, 84 Fed.
Reg. at 53–55) (“Revised Step 2A - Prong 2”).
Only if a claim (1) recites a judicial exception, and (2) does not integrate that
exception into a practical application, do we then 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
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(4) simply appends well-understood, routine, and 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 (“Step 2B”).

ANALYSIS
Appellants argue claims 1–10, 13–15 and 17–23 as a group. See
Appeal Br. 12–16. We select independent claim 1 as representative. See
37 C.F.R. § 41.37(c)(1)(iv). Claim 1’s subject matter falls within one of the
statutory categories of patentable subject matter—a process. See Revised
Guidance, 84 Fed. Reg. at 53–54.
Alice Step One
Despite falling within a statutory category, we determine whether
claim 1 as a whole is directed to a judicial exception, namely an abstract
idea. See Alice, 573 U.S. at 217. To this end, we determine (1) whether
claim 1 recites a judicial exception (Revised Step 2A - Prong 1) and, if so,
(2) whether the identified judicial exception is integrated into a practical
application (Revised Step 2A – Prong 2). See Revised Guidance, 84 Fed.
Reg. at 52–55. If both elements are satisfied, the claim is directed to a
judicial exception under the first step of the Alice/Mayo test. See id.
Revised Step 2A - Prong 1
In Revised Step 2A - Prong 1, we identify claim 1’s specific
limitations that recite a judicial exception, and determine whether the
identified limitations fall within certain subject matter groupings, namely
(a) mathematical concepts (mathematical relationships, formulas, and
calculations); (b) certain methods of organizing human activity (e.g.,
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fundamental economic practices, commercial or legal interactions, and
managing personal behavior or interactions between people); or (c) mental
processes (e.g., concepts performed in the human mind including an
observation, evaluation, judgment, or opinion). See Revised Guidance, 84
Fed. Reg. at 52.
We agree with the Examiner (see Final Act. 5) that claim 1 recites at
least one judicial exception. Claim 1 recites a “method for providing travel
progress tracking . . .,” the method comprising the following steps: (A)
presenting . . . location-based advertisement listings to a user
. . . to provide navigation to arrival zones associated with the
location-based advertisement listings, wherein: the location-
based advertising listings include groups of multiple listings;
each of the groups of the multiple listings is within a
geographical area of a respective location traversed . . . ; and
each of the groups of the multiple listings is provided . . . when
. . . at the respective location,

(B) “receiving . . . a trip initiated indication . . . corresponding to a selected
one of the location-based advertisement listings,” (C) “monitoring . . .
navigation information . . . related to the selected one of the location-based
advertisement listings, wherein the navigation information includes location
data defining travel progress with respect to an arrival zone of the selected
one of the location-based advertisements,” (D)
generating . . . at least one effectiveness advertising metric
based on navigation information related to the selected one of
the location-based advertisement listings, wherein generating at
least one effectiveness advertising metric comprises graphically
mapping a trip success rate footprint, wherein the trip success
rate footprint is based at least in part on a plurality of success
rates of completing a trip to a destination and a distance from
the destination when the trip is initiated,

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and (E) “generating . . . a sponsor-specific report based on the analysis of the
navigation information, wherein the sponsor-specific report comprises
associated with location-based advertisement listings or placement of
conventional media.” Supp. Br. 2 (Claims App’x) (“steps (A)–(E)”).
Steps (A)–(C) and claim 1’s preamble, under their broadest reasonable
interpretation, recite a process of tracking travel progress to a selected
advertisement listing’s location because the following limitations would
ordinarily take place when tracking one’s progress to a selected, advertised
establishment. See id.; see Final Act. 2 (stating claim 1 “is directed to a
method for providing travel progress tracking”); see also Spec. 3:1–12. For
example, “presenting . . . location-based advertisement listings to a user”
based on where the user is located as step (A) recites an ordinary activity
involved in deciding which advertisement listing to select (e.g., viewing
advertisements from a local travel guide) so that the progress to the selected
advertisement listing’s location can be tracked. Supp. Br. 2 (Claims App’x).
Similarly, “receiving . . . a trip initiated indication . . . corresponding to a
selected one of the location-based advertisement listings” in step (B)
involves an activity which would ordinarily take place to determine the path
to take to the selected advertisement listing’s location so that the progress
can be tracked. Also, “monitoring . . . navigation information . . . related to
the selected one of the location-based advertisement listings, wherein the
navigation information includes location data defining travel progress with
respect to an arrival zone of the selected one of the location-based
advertisements” as step (C) recites is an ordinary activity to track the
progress to the selected advertisement listing’s location along the way.
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Tracking travel progress to a selected advertisement listing’s location
as recited in steps (B)–(C) involves mental processes. For example, step (B)
involves a person observing advertisement listings (e.g., looking through a
local travel guide) to select the advertisement listing, evaluating how to get
to the selected listing location (e.g., using a map provided by travel guide),
and then observing that the user started to head toward the selected listing.
Step (C), in turn involves a person observing their current location and the
selected listing’s location (e.g., using a map) to determine the person’s travel
progress to the selected listing’s destination.
Additionally, Steps (A)–(C) involve certain methods of organizing
human activity, including marketing activities that encourage specific
consumer behavior (e.g., encouraging people to go to a location
corresponding to a user’s selected advertisement listing). See Spec. 2:24–
4:2, Fig. 1; see Front Row Techs., LLC v. NBA Media Ventures, LLC, 204 F.
Supp. 3d 1273–74 (D. N.M. 2016), aff’d, 697 F. App’x 701 (Fed. Cir. 2017)
(holding claims directed to restricting content based on a user’s location are
a fundamental practice long prevalent in our system similar to Intellectual
Ventures); cf. Intellectual Ventures I LLC v. Capital One Bank (USA), 792
F.3d 1363, 1369–70 (Fed. Cir. 2015) (holding claims reciting customizing
information, including specific advertisements based on location, based on
(1) information known about the user and (2) navigation history is no
different from a method of organizing human activity). Accordingly, we
conclude claim 1 at least involves marketing activities or a fundamental
economic practice, which are certain methods of organizing human activity
identified in the Revised Guidance. See Revised Guidance, 84 Fed. Reg. at
52.
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Steps (D)–(E) recite further processes that can occur in a human’s
mind (or through pen and paper). Supp. Br. 2 (Claims App’x); see Final
Act. 5; see Ans. 8. For example, “generating . . . at least one effectiveness
advertising metric” that comprises graphically mapping a trip success rate
footprint as step (D) recites can involve a person (1) observing (or recording
with pen and paper) navigation information and success rates of trips
completed to a destination and a distance from the destination when the trip
is initiated, and then (2) recording with pen and paper a trip success rate
footprint based on the observed success rates and the observed distances.
Similarly, “generating . . . a sponsor-specific report” as step (E) recites can
involve a person evaluating the above-observed navigation information and
then mentally (or with pen and paper) associating the navigation information
with location-based advertisement listings or placement of conventional
media related to a specific sponsor so as to generate a report.
Thus, with the exception of generic computer-implementation recited
in claim 1, there is nothing in steps (A)–(E) that forecloses the steps from
being performed mentally or with pen and paper. See Benson, 409 U.S. at
67 (indicating converting BCD numbers to pure binary numbers can be done
mentally and that “mental processes ... are not patentable, as they are the
basics tools of scientific and technological work”). Moreover, steps (D)–(E)
involve a certain method of organizing human activity, such as marketing
activities, including modeling effectiveness through advertising metrics. See
Ans. 2 (discussing analyzing and reporting data associated with advertising);
see also OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1362–63
(Fed. Cir. 2015) (holding claims reciting gathering statistics about how
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potential customers responded to offers in response to receiving input by the
potential customers as being a fundamental economic concept).
For the above reasons, we disagree the Examiner has oversimplified
the claims as argued. See Appeal Br. 14; see Reply Br. 3–6. We thus
conclude claim 1 as a whole recites mental processes and certain methods of
human activity identified in the Revised Guidance. See Revised Guidance,
84 Fed. Reg. at 52. Accordingly, we determine claim 1 recites an abstract
idea.
Revised Step 2A - Prong 2
Because claim 1 recites an abstract idea, we must determine whether
the abstract idea is integrated into a practical application, namely whether
the claim applies, relies on, or uses the abstract idea in a manner that
imposes a meaningful limit on the abstract idea, such that the claim is more
than a drafting effort designed to monopolize the abstract idea. See Revised
Guidance, 84 Fed. Reg. at 53. We (1) identify whether there are any
additional, recited elements beyond the judicial exception, and (2) evaluate
those elements individually and collectively to determine whether they
integrate the exception into a practical application. See id., 84 Fed. Reg. at
54–55.
The additionally recited elements beyond the above-identified judicial
exceptions in claim 1 are “a mobile navigation system having intermittent
wireless communication,” “presentation logic,” “a user interface of the
mobile navigation system,” “upload logic,” “monitoring logic,” and
“analysis logic.” Supp. Br. 2 (Claims App’x); see Final Act. 4–5. When
considering these elements individually or in combination, we determine
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they do not integrate the above-identified judicial exceptions into a practical
application.
Contrary to Appellants’ assertions (see Appeal Br. 13, 15–16), the
identified additional elements beyond the identified judicial exceptions do
not reflect an improvement in a computer’s functioning or an improvement
to other technology or technical field as set forth in MPEP § 2106.05(a) and
the Revised Guidance, 84 Fed. Reg. at 55. See Final Act. 4–6 (citing Spec.
1:15–21, 3:1–3, 5:1–30, 14:1–25, Fig. 1); see Ans. 4–6. Here, consistent
with the disclosure as discussed below, the additionally recited elements
merely automate certain methods of organizing human activity and mental
processes using generic computer elements. These elements are tools that
perform the above-identified abstract idea but do not constitute a patentable
improvement in computer technology. See Credit Acceptance Corp. v.
Westlake Servs., 859 F.3d 1044, 1055 (Fed. Cir. 2017); see also Alice, 573
U.S. at 221, 223, 225.
For example, the claimed “mobile navigation system” is merely a tool
to perform steps (A)–(C). Supp. Br. 2 (Claims App’x). Claim 1, however,
does not recite a technological improvement in the recited “mobile
navigation system.” Id. (Claims App’x); see also Spec. 2:4–5, 8–9, 24–27,
and 13:20–24; Figs. 1, 3 (describing and showing mobile navigation system
40 and 60 generally); Spec. 5:1–30 (describing a navigation system); Spec.
13:20–14:24; Fig. 3 (describing and showing the mobile navigation system
including presentation logic, monitoring logic, and upload logic). At best,
the mobile navigation system is used as tool to implement the “presenting”
step of step (A) and the “monitoring” step of step (B). Similarly, the recited
“user interface” is described generally as a tool to display advertising listings
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and to receive user inputs. Spec. 3:2–6, 6:3–5, and 8:24; Fig. 1. Moreover,
the disclosure describes the “presentation logic,” “upload logic,” the
“monitoring logic,” and the “analysis logic” generally as software or a tool
to implement various recited functions. See Spec. 13:27–14:1, 15:1–2; Fig.
3. Thus, considering these additional elements individually or in
combination, they are no more than tools that perform the above-identified
abstract idea.
To the extent that Appellants contend the recited steps (A)–(E)
somehow “solv[e] technical problems associated with data transmission with
mobile devices operating in network environments with intermittent network
connectivity and the graphical mapping of a trip success rate footprint that is
based on an aggregation of a plurality of success rates over a geographic
area” (Appeal Br. 13, 15; Reply Br. 3), there is no persuasive evidence on
this record to substantiate such a contention.
Appellants’ Specification explains that a navigation system only
capable of intermittent communications must download large portions of a
listing database for local storage when connected to a server. Spec. 5:20–25.
The disclosure also states the navigation system only stores updates and
limits downloads to listings within a specific geographic area defined by a
user, hardware manufacturer, or provider of communication channels to
reduce the amount of data transferred. Id. at 5:22–25. Even so, claim 1 fails
to recite these noted strategies concerning intermittent communications that
arguably solve a technical problem. At best, claim 1 recites at a high level
“[a] method for providing travel progress tracking on a mobile navigation
system having intermittent wireless communication” and the multiple
listings are “provided to the mobile navigation system when the mobile
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navigation system is . . . connected to facilitate the intermittent wireless
communication.” Supp. Br. 2 (Claims App’x).
In addition, although graphically mapping a trip success rate footprint
based on an aggregation of success rates over a geographic area may be an
improvement to modeling an advertisement metric, such improvement is not
one related to technology. See, e.g., DDR Holdings, LLC v. Hotels.Com,
L.P., 773 F.3d 1245, 1257–59 (Fed. Cir. 2014). Instead, this modeling
improves the above-noted mental or marketing activity, which is directed to
an abstract idea.
Given the record, claim 1’s additional elements beyond the identified
judicial exceptions are not shown to improve a computer itself, another
technology, or technical field. See Revised Guidance, 84 Fed. Reg. at 55
(citing MPEP § 2106.05(a)). Nor do claim 1’s additional elements
implement the identified judicial exception with or use the judicial exception
in conjunction with a particular machine or a particular transformation. See
id. (citing MPEP §§ 2106.05(a), § 2106.05(c)).
We add that certain steps in claim 1 may be considered insignificant
extra-solution activity. For example, step (A) can be considered
insignificant pre-solution activity for presenting advertisement information.
See Bilski, 561 U.S. at 610–11. Also, step (E) can be considered
insignificant post-solution activity that generates a sponsor-specific report,
which is merely ancillary to the travel progress tracking focus of the claimed
invention. See Flook, 437 U.S. at 590 (insignificant post-solution activity
held insufficient to impart patentability); see also CyberSource Corp. v.
Retail Decisions, Inc., 654 F.3d 1366, 1371 (Fed. Cir. 2011) (discussing
Flook); accord Revised Guidance, 84 Fed. Reg. at 55 (citing MPEP
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§ 2106.05(g)). Thus, steps (A) and (E) do not integrate the judicial
exceptions into a practical application for these additional reasons. See
Revised Guidance, 84 Fed. Reg. at 55 (citing MPEP § 2106.05(g)).
Accordingly, we determine the additional elements recited in claim 1
beyond the judicial exception, whether considered alone or in combination,
do not integrate the judicial exception into a practical application.
Alice Step Two, Step 2B
Because we determine claim 1 does not integrate the recited judicial
exception into a practical application, we need to consider whether the
additional elements add a specific limitation or combination of limitations
that are not well-understood, routine, or conventional activity in the field.
See Revised Guidance, 84 Fed. Reg. at 56. If so, this indicates that an
inventive concept may be present. If, instead, the additional elements
simply append well-understood, routine, and conventional activities
previously known to the industry, specified at a high level of generality, to
the judicial exceptions, this indicates that an inventive concept may not be
present. Id.
In the Reply Brief, Appellants assert the Examiner failed to provide
“evidence supporting the assertions in the Examiner’s Answer (and in the
Office Action) that the claims do not amount to significantly more than an
abstract idea. The unsupported conclusions set out by the Examiner fail to
carry the Office’s burden of providing invalidity by clear and convincing
evidence.” Reply Br. 6 (citing Berkheimer v. HP Inc., 881 F.3d 1360, 1368
(Fed. Cir. 2018). We are not persuaded.
To be sure, the Examiner must show—with supporting facts—that
certain claim elements are well-understood, routine, and conventional where
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such a finding is made. See Berkheimer, 881 F.3d at 1369 (noting that
“[whether] something is well-understood, routine, and conventional to a
skilled artisan at the time of the patent is a factual determination.”); see also
April 19, 2018, Memorandum from Robert W. Bahr, Deputy Commissioner
for Patent Examination Policy to the Patent Examining Corps, entitled
“Changes in Examination Procedure Pertaining to Subject Matter Eligibility,
Recent Subject Matter Eligibility Decision (Berkheimer v. HP, Inc.)”
(“Berkheimer Memo.”).5 According to the Berkheimer Memorandum,
Examiners must provide specific types of evidence to support a finding that
an additional element of a claim is well-understood, routine, and
conventional. Id. 3–4.
The Examiner satisfied the requirement of the Berkheimer
Memorandum by providing citations to the Specification. See Final Act. 4–5
(citing Spec. 1:15–21, 3:1–3, 5:1–30, and 14:1–25; Fig. 1); see also
Berkheimer Memo. 3–4 (informing examiners to provide one or more of
four specific types of evidence including “a citation to the Specification or
statement made by applicant during prosecution that demonstrates the well-
understood, routine, conventional nature of the additional element.”).
The generic computing functionality of the additional recited
elements, namely the “a mobile navigation system having intermittent
wireless communication,” “presentation logic,” “a user interface of the
mobile navigation system,” “upload logic,” “monitoring logic,” and
“analysis logic,” is well-understood, routine, and conventional. See, e.g.,

5 The Berkheimer Memorandum is available at
https://www.uspto.gov/sites/default/files/documents/memo-berkheimer-
20180419.PDF (last visited August 9, 2019).
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Mortgage Grader, 811 F.3d at 1324–25 (noting that components such as an
“interface,” “network,” and “database” are generic computer components
that do not satisfy the inventive concept requirement); see also Alice, 573
U.S. at 225 (indicating a computer that obtains data and issues automated
instructions is a generic computer performing well-understood, routine, and
conventional activities). The Specification also describes components, such
as a network (e.g., the recited “intermittent wireless communication”), an
interface (e.g., the recited “user interface”), and a computer (e.g., the recited
“logic”), generically. See Final Act. 4–5 (citing Spec. 1:15–21, 3:1–3, 5:1–
5, 16–18, and 14:1–9; Fig. 1 and concluding that the claims do not include
elements that add significantly more than the abstract idea, but merely recite
generic computer components performing generic computer functions that
are well-understood, routine, and conventional activities); see also, e.g.,
Spec. 2:24–27, 8:21, 13:20–14:1, and 15:2–3; Fig. 3 (describing generic
computer components associated with the disclosed invention).
Lastly, we find unavailing Appellants’ contention that the absence of
prior art references addressing multiple elements means that claims recite
significantly more than an abstract idea. Appeal Br. 16. The Ҥ 101 subject-
matter eligibility is a requirement separate from other patentability
inquiries.” See Return Mail, Inc. v. United States Postal Serv., 868 F.3d
1350, 1370 (Fed. Cir. 2017); see also Mayo, 566 U.S. at 90; Diehr, 450 U.S.
at 190 (“The question ... of whether a particular invention is novel is ‘wholly
apart from whether the invention falls into a category of statutory subject
matter.”).
Thus, for the above reasons, the additional recited elements—
considered individually and as an ordered combination—do not add
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significantly more than the abstract idea to provide an inventive concept
under Alice/Mayo step two.
Conclusion
For the foregoing reasons, Appellants have not persuaded us of error
in the rejection of independent claim 1 and claims 2–10, 13–15 and 17–23
under 35 U.S.C. § 101 for similar reasons.

OBVIOUSNESS REJECTION OVER FELLENSTEIN, CHENAULT, AND
MILLINGTON

Claims 1, 3–6, 10, 13, 17–19, 22, and 23 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Fellenstein (US 2004/0203860 A1,
published Oct. 14, 2004), Chenault (US 6,381,537 B1, issued Apr. 30,
2002), and Millington (US 6,360,167 B1, issued Mar. 19, 2002). Final Act.
7–22.6
Regarding independent claim 1, the Examiner finds Fellenstein
teaches many of its limitations, including presenting location-based
advertisement listings to a user and receiving a trip initiated indication
corresponding to a selected one of the presented location-based
advertisement listings. See Final Act. 7–9 (citing Fellenstein ¶¶ 3, 25, 34,
and 38–39; Fig. 7). Although the Examiner acknowledges that Fellenstein

6 The Examiner includes claim 15 with this rejection. However, claim 15
depends from claim 14, which is rejected based on Fellenstein, Chenault,
Millington, and Kakihara. See Final Act. 22–23. Despite this inconsistency,
Appellants do not contest claim 15. See generally Appeal Br. Even so, we
group claim 15 with the rejection of claim 14 for completeness. We treat the
Examiner’s error in this regard as harmless, because the rejection of claim
15 relies on the same references (i.e., Fellenstein, Chenault, and Millington).
See Final Act. 15–17.
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does not teach “generating at least one effectiveness advertising metric
comprises graphically mapping a trip success rate footprint [that] is based at
least in part on a plurality of success rates of completing a trip to a
destination and a distance from the destination when the trip is initiated,” the
Examiner cites Chenault combined with Fellenstein for teaching this feature
in concluding that the claim would have been obvious when modifying
Fellenstein with Chenault’s method. See id. at 10–13 (citing Chenault 5:27–
42, 53–67; 6:1–38, 60–67; 7:1–2, 29–45; 8:31–40, 44–54; and 9:2–9; Fig.
3). The Examiner also acknowledges that the Fellenstein/Chenault method
does not teach, “generating . . . a sponsor-specific report based on the
analysis of the navigation information, wherein the sponsor-specific report
comprises associated7 with location-based advertisement listings or
placement of conventional media.” See id. at 14. The Examiner, however,
cites Millington for teaching this feature in concluding that the claim would
have been obvious when modifying the Fellenstein/Chenault method with
Millington’s method. See id. (citing Millington (5:25–47; 7:60–67; Fig. 3).
Among other arguments, Appellants contend Chenault does not teach
the recited graphically “mapping [] a trip success rate footprint, wherein the
trip success rate footprint is based at least in part on a plurality of success
rates of completing a trip to a destination.” Appeal Br. 9.

7 Notably, Appellants submitted an amendment on June 9, 2017 after the
Final Action to clarify this claim language. This amendment was not
entered. Box of 7(a) of Advisory Action, mailed June 26, 2017.
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ISSUE
Under § 103(a), has the Examiner erred by determining Fellenstein,
Chenault, and Millington collectively would have taught or suggested a
“graphically mapping a trip success rate footprint, wherein the trip success
rate footprint is based at least in part on a plurality of success rates of
completing a trip to a destination” as recited in claim 1 (“the ‘footprint’
step”)?

ANALYSIS
We begin by construing the key disputed limitation of claim 1, which
calls for, in pertinent part, “a trip success rate footprint.” Supp. Br. 2
(Claims App’x). A claim is given its broadest reasonable construction “in
light of the specification as it would be interpreted by one of ordinary skill in
the art.” In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir.
2004) (citation omitted). We presume that claim terms have their ordinary
and customary meaning. See In re Translogic Tech., Inc., 504 F.3d 1249,
1257 (Fed. Cir. 2007) (“The ordinary and customary meaning ‘is the
meaning that the term would have to a person of ordinary skill in the art in
question.”‘ (Citation omitted)).
The Specification describes the term “trip success rate” as a “number
of trips completed / number of trips initiated.” Spec. 7:14. For example, if
one trip is completed among two trips initiated, then the trip success rate is
50%. The Specification, however, does not define the term “trip success rate
footprint.” See generally Spec. At best, the disclosure describes a trip
success rate footprint as “an additional layer of analysis and interpretation”
that accompanies presented summary statistics relating to a listing’s
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effectiveness. Id. at 7:20–24. Notably, “[f]or example, as shown in Fig. 2,
the software may graphically represent [the] trip success rate footprint which
indicates the varying success rates of completing a trip to the destination
based on distance from the destination when the trip is initiated.” Id. at
7:23–25 (emphases added). Our emphases underscores that this illustrated
form of a trip success rate footprint is merely exemplary. We therefore
presume the term “trip success rate footprint” in claim 1 has its plain or
ordinary meaning.
Currently, no such ordinary and customary understanding of “a trip
success rate footprint” is of record. The Merriam-Webster Online
Dictionary defines “footprint” as “a marked effect, impression, or impact.”8
Claim 1 further recites “the trip success rate footprint is based at least in part
on a plurality of success rates of completing a trip to a destination.” Supp.
Br. 2 (Claims App’x) (emphasis added). Accordingly, the phrase “trip
success rate footprint” in claim 1 includes an identifying effect,
characteristic, or feature associated with more than one trip success rate of
completing a trip to a destination.
With this construction in mind, we are persuaded of error. The
Examiner finds Chenault teaches the disputed “graphically mapping a trip
success rate footprint” step in claim 1. Final Act. 10–11; Ans. 14, 31, 33,
and 36. Specifically, the Examiner maps Chenault’s occurrence of a
“condition or event indicating that the vehicle has just completed a trip” to
the recited “trip success rate footprint.” Final Act. 10 (quoting Chenault
7:29–45); id. at 10–12 (quoting Chenault 5:53–6:38 and 8:31–40, 44–54,

8 Footprint, The Merriam-Webster Online Dictionary, available at
https://www.merriam-webster.com/dictionary/footprint (def. 3).
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Fig. 3); Ans. 14, 33, and 36. See also Ans. 31 (the Examiner relying on
Chenault’s “data indicating when a vehicle completed a trip.”). The
Examiner further finds Chenault teaches graphically mapping the “trip
success rate footprint.” Final Act. 13 (citing Chenault 5:27–42 and 6:66–
7:2); Ans. 4.
Chenault teaches displaying a graphical map as a vehicle (e.g., 111)
travels the calculated route. Chenault 6:66–7:2. When a user travels to a
destination, this map suggests indicating where the vehicle is along the
calculated route. See id. Chenault further teaches a signal (e.g., 410) is sent
from the vehicle to an address data collection program (e.g., 400) upon a
condition indicating that the vehicle has completed the trip. Id. 7:29–34,
Fig. 3. As such, Chenault at least suggests that upon sending the signal, the
graphical map displays its final location, which is indicative of, or is a
characteristic of, one completed trip based on one trip initiated (e.g., a trip
success rate of 100%). The Examiner, however, does not specify how
Chenault’s graphical map displays a characteristic associated with more than
one trip required to determine a plurality of success rates of completing a
trip to a destination on which the claimed “trip success rate footprint” is
further based. See Final Act. 10–11; Ans. 14, 31.
The Examiner states Chenault’s address data collection program (e.g.,
400) saves information in a database (e.g., 464), including vehicle position
data (e.g., 450), and teaches “a plurality of success rates of completing a trip
to a destination” as recited. Final Act. 11 (citing Chenault 8:31–40, Fig. 3).
Chenault teaches saving vehicle position as the vehicle position data when
the vehicle completes a trip, and Figure 4 further illustrates that new vehicle
position data 450 is added to the data file 464 already in the database 470
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each time a trip to a destination is completed. Id. 8:39–41, 48–51. But we
are left to speculate how this teaching in Chenault graphically maps or
displays this stored data as the claimed “trip success rate footprint,” which is
based on a plurality of success rates (e.g., from data file 464) of completing
a trip to a destination (e.g., the same destination) as recited in claim 1. The
Examiner further cites to other portions of Chenault to teach “a trip to a
destination” limitation in claim 1. See Final Act. 11 (citing Chenault 5:53–
6:38 and 8:31–40, 44–54). Upon review, these additionally cited portions do
not teach or suggest what we noted above is missing from Chenault.
Accordingly, on the record, the Examiner has not explained
sufficiently how Fellenstein, Chenault, and Millington, alone or collectively,
teach or suggest “graphically mapping a trip success rate footprint, wherein
the trip success rate footprint is based at least in part on a plurality of success
rates of completing a trip to a destination” as claim 1 recites. Supp. Br. 2
(Claims App’x). Accord Appeal Br. 9.
For the foregoing reasons, Appellants have persuaded us of error in
the rejection of (1) independent claim 1, (2) independent claim 13, which
recites commensurate limitations, and (3) dependent claims 3–6, 10, 15,
17–19, 22, and 23 for similar reasons.

THE OTHER OBVIOUSNESS REJECTIONS
Claims 2, 7–9, 14, 15, and 21 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Fellenstein, Chenault, Millington, and Kakihara (US
2003/0189498 Al, published Oct. 9, 2003). Final Act. 15–17, 22–25. Claim
20 is rejected under 35 U.S.C. § 103(a) as being unpatentable over
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Fellenstein, Chenault, Millington, and DeLorme (US 5,948,040, issued Sept.
7, 1999). Final Act. 25–26.
The Examiner has not relied upon Kakihara and DeLorme to cure the
above-noted deficiencies. Final Act. 22–26; see also Appeal Br. 14–15. As
such, these rejections do not address the previously-noted shortcomings
identified with the rejection based on Fellenstein, Chenault, and Millington.
Given the record, Appellants have persuaded us of error.

DECISION
We affirm the Examiner’s rejection of claims 1–10, 13–15, and 17–23
under § 101, but reverse the Examiner’s rejection of claims 1–10, 13–15,
and 17–23 under § 103(a).
Because we have affirmed at least one ground of rejection with
respect to each claim on appeal, the Examiner’s decision is affirmed. See
37 C.F.R. § 41.50(a)(1).
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