Bryan Schwab

Patent Trials and Appeals Board

Sep 30, 2019

13540523 - (D) (P.T.A.B. Sep. 30, 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.
13/540,523 07/02/2012 Bryan Schwab 45MP-214040 7326
159291 7590 09/30/2019
Esplin & Associates, PC
5411 Avenida Encinas
Suite 100
Carlsbad, CA 92008
EXAMINER
CROSS, MICHAEL J
ART UNIT PAPER NUMBER
3621
NOTIFICATION DATE DELIVERY MODE
09/30/2019 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):
Docketing@esplin.legal
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte BRYAN SCHWAB
____________

Appeal 2017-0109931
Application 13/540,5232
Technology Center 3600
____________

Before BRADLEY B. BAYAT, TARA L. HUTCHINGS, and
ROBERT J. SILVERMAN, Administrative Patent Judges.

HUTCHINGS, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1, 3–12, and 14–24, which constitute all the claims
pending in this application. Claims 2 and 13 have been cancelled. An oral
hearing was held on July 12, 2019. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM.

1 Our decision references Appellant’s Appeal Brief (“App. Br.,” filed Mar.
24, 2017) and Reply Brief (“Reply Br.,” filed Aug. 22, 2017), and the
Examiner’s Answer (“Ans.,” mailed July 3, 2017) and Final Office Action
(“Final Act.,” mailed Oct. 17, 2016).
2 Appellant identifies Kabam, Inc. as the real party in interest. App. Br. 2.
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CLAIMED INVENTION
Appellant’s claimed invention “relates to providing dynamic offers for
virtual goods based on static parameters.” Spec. ¶ 1.
Claims 1 and 12 are the independent claims on appeal. Claim 1,
reproduced below with bracketed notations added, is illustrative of the
claimed subject matter:
1. A system configured to provide dynamic offers for virtual
goods based on static parameters, the system comprising:
[(a)] one or more processors configured by machine-
readable instructions to:
[(b)] execute an instance of an online game that takes
place in a virtual space, and use the instance of the online game
to generate game state information that is transmitted to client
computing platforms over a network, the game state information
facilitating presentation of views of the virtual space to the users
via the client computing platforms, wherein execution of the
instance further enables interaction of users with the online game
by performing operations in the instance in response to
commands received over the network from the client computing
platforms, wherein the users include a first user and a second
user;
[(c)] determine one or more parameter values of a static
parameter associated with one or both of individual ones of the
users or individual ones of the client computing platforms
associated with the users, the static parameter including one or
both of a date on which individual ones of the users engaged in
the virtual space or a date on which the application was installed
on individual ones of the client computing platforms, such that a
first parameter value for the first user is determined, the first
parameter value indicating a date on which the first user engaged
in the virtual space and/or a date on which the application was
installed on a first client computing platform associated with the
first user, and a second parameter value for the second user is
determined, the second parameter value indicating a date on
which the second user engaged in the virtual space and/or a date
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on which the application was installed on a second client
computing platform associated with the second user;
[(d)] determine one or more offers to sell virtual goods
for use in the online game available to individual ones of the
users, wherein the virtual goods provide a functional benefit
during play in the online game, a given offer being determined
based on the one or more parameter values and having a user cost
being an amount of virtual currency, such that a first offer is
determined for the first user based on the first parameter value,
and a second offer is determined for the second user based on the
second parameter value; and
[(e)] provide an offer interface for presentation to the
individual ones of the users, the offer interface including one or
more of (1) an offer field conveying information associated with
individual ones of the one or more offers to sell virtual goods
available to the individual ones of the users, (2) a price field
conveying information associated with a purchase price
associated with individual ones of the one or more offers
available to the individual ones of the users, or (3) a payment
field conveying information associated with a payment method
associated with individual ones of the one or more offers
available to the individual ones of the users, wherein the first
offer determined for the first user based on the first parameter
value is different than the second offer determined for the second
user based on the second parameter value.

REJECTIONS
Claims 1, 3–12, and 14–24 are rejected under 35 U.S.C. § 101 as
directed to a judicial exception without significantly more.
Claims 1, 3–12, and 14–24 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Roeding (US 2011/0029364 A1, pub. Feb. 3, 2011),
Lutnick (US 2011/0065490 A1, pub. Mar. 17, 2011), and Hirson
(US 2011/0082772 A1, pub. Apr. 7, 2011).
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ANALYSIS
Patent-Ineligible Subject Matter
Appellant argues the pending claims as a group. App. Br. 7–20; see
also Reply Br. 3–9. We select independent claim 1 as representative. The
remaining claims stand or fall with claim 1. See 37 C.F.R. § 41.37(c)(1)(iv).
Under 35 U.S.C. § 101, an invention is patent-eligible if it claims a
“new and useful process, machine, manufacture, or composition of matter.”
35 U.S.C. § 101. The Supreme Court, however, has long interpreted § 101
to include an implicit exception: “[l]aws of nature, natural phenomena, and
abstract ideas” are not patentable. Alice Corp. v. CLS Bank Int’l, 573 U.S.
208, 216 (2014).
The Supreme Court, in Alice, reiterated the two-step framework
previously set forth in Mayo Collaborative Services v. Prometheus
Laboratories, Inc., 566 U.S. 66 (2012), “for distinguishing patents that claim
laws of nature, natural phenomena, and abstract ideas from those that claim
patent-eligible applications of those concepts.” Alice Corp., 573 U.S. at 217.
The first step in that analysis is to “determine whether the claims at issue are
directed to one of those patent-ineligible concepts.” Id. (citation omitted). If
the claims are not directed to a patent-ineligible concept, e.g., an abstract
idea, the inquiry ends. Otherwise, the inquiry proceeds to the second step
where the elements of the claims are considered “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.”
Id. (quoting Mayo, 566 U.S. at 79, 78). This is “a search for an ‘inventive
concept’ — i.e., an element or combination of elements that is ‘sufficient to
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ensure that the patent in practice amounts to significantly more than a patent
upon the [ineligible concept] itself.’” Id. at 217–18 (alteration in original).
The USPTO recently published revised guidance on the application of
§ 101. 2019 REVISED PATENT SUBJECT MATTER ELIGIBILITY GUIDANCE,
84 Fed. Reg. 50 (Jan. 7, 2019) (“Revised Guidance”).3 That guidance
revised the USPTO’s examination procedure with respect to the first step of
the Mayo/Alice framework such that a claim will generally be considered
directed to an abstract idea if (1) the claim recites subject matter falling
within one of the following groupings of abstract ideas: (a) mathematical
concepts; (b) certain methods of organizing human activity, e.g., a
fundamental economic principle or practice, a commercial or legal
interaction; and (c) mental processes (“Step 2A, Prong One”), and (2) the
claim does not integrate the abstract idea into a practical application, i.e.,
apply, rely on, or use the judicial exception in a manner that imposes a
meaningful limit on the judicial exception, such that the clam is more than a
drafting effort designed to monopolize the judicial exception (“Step 2A,
Prong Two”). See Revised Guidance 54–55. The Revised Guidance
references MANUAL OF PATENT EXAMINING PROCEDURE (“MPEP”)
§§ 2106.05(a)–(c) and (e)–(h) in describing the considerations that are
indicative that an additional element or combination of elements integrates
the judicial exception, e.g., the abstract idea, into a practical application. Id.
at 55. If the recited judicial exception is integrated into a practical

3 The Revised Guidance is effective as of January 7, 2019, and applies to all
applications, and to all patents resulting from applications, filed before, on,
or after January 7, 2019.
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application, as determined under one or more of these MPEP sections, the
claim is not “directed to” the judicial exception.
Only if the 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 “[a]dds a specific limitation or combination of
limitations” that is not “well-understood, routine, conventional activity in the
field” or simply “appends well-understood, routine, conventional activities
previously known to the industry, specified at a high level of generality, to
the judicial exception” (“Step 2B”). Id. at 56. With the legal principles
outlined above, and the 2019 Revised Guidance in mind, we turn to the
Examiner’s § 101 rejection.
In rejecting the pending claims under 35 U.S.C. § 101, the Examiner
determined that the claims are directed to “collect[ing], stor[ing],
display[ing], and compar[ing] data to optimize a firm’s marketing objective
on a generic computer,” which the Examiner characterized as a method of
organizing human activity and, thus, an abstract idea. Final Act. 4, 7. The
Examiner further determined that the claims do not recite additional
elements that are sufficient to amount to significantly more than the judicial
exception. Id. at 4–5, 8.
In so doing, the Examiner notified Appellant of the reasons for the
rejection under 35 U.S.C. § 101 in a sufficiently articulate and informative
manner as to meet the notice requirement of 35 U.S.C. § 132, thereby
establishing a prima facie case of patent ineligibility. See In re Jung, 637
F.3d 1356, 1363 (Fed. Cir. 2011) (holding that the USPTO carries its
procedural burden of establishing a prima facie case when its rejection
satisfies the notice requirements of 35 U.S.C. § 132 by notifying the
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applicant of the reasons for the rejection, “together with such information
and references as may be useful in judging the propriety of continuing
prosecution”). Therefore, we are unpersuaded by Appellant’s argument
(App. Br. 11–12, 16–17) that the Examiner has not met the burden of
establishing a rejection under 35 U.S.C. § 101.
Judicial Exception: Step One of the Mayo/Alice Framework; Step 2A,
Prong 1 of the 2019 Revised Guidance
Appellant’s Specification describes that known approaches for
providing offers for virtual goods within virtual spaces typically present the
same prices and offer packages to every user (i.e., static offers). Spec. ¶ 2.
To overcome this shortcoming, the present invention provides dynamic
offers for virtual goods based on static parameters. Id. ¶¶ 1, 3. “[O]ffers for
virtual goods may be dynamic in that the offers themselves, offer prices,
and/or payment methods for offers may be different for different users
and/or at different times.” Id. ¶ 14. “By making offers dynamic, slow
spenders may be enticed to make more frequent purchases.” Id. ¶¶ 3, 14.
Appellant’s claim 1 recites a system “configured to provide dynamic
offers for virtual goods based on static parameters.” App. Br. 50, Claims
Appendix. Limitation (c) recites “determin[ing] one or more parameter
values,” limitation (d) recites “determin[ing] one or more offers,” and
limitation (e) recites
provid[ing] . . . for presentation to the individual ones of the
users . . . one or more of (1) an offer field conveying information
associated with individual ones of the one or more offers to sell
virtual goods available to the individual ones of the users, (2) a
price field conveying information associated with a purchase
price associated with individual ones of the one or more offers
available to the individual ones of the users, or (3) a payment
field conveying information associated with a payment method
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associated with individual ones of the one or more offers
available to the individual ones of the users, wherein the first
offer determined for the first user based on the first parameter
value is different than the second offer determined for the second
user based on the second parameter value.
Id. at 50–51. These limitations recite the desired results without detailing
how, technologically or by what algorithm, the results are achieved.
Appellant cites to paragraph 22 of the Specification in support of
limitation (c), paragraphs 14 and 23–26 for limitation (d), and paragraphs
14, 30, and 31 for limitation (e). App. Br. 3–4. Paragraph 22 of the
Specification describes exemplary static parameters, such as
a geo-location of the user, a geoIP of a client computing
platform, a language spoken by the user, a virtual space engaged
in by the user, a current date, a date on which the user first
engaged in the virtual space, [and] a date on which an application
was installed on a client computing platform associated with the
user.
But paragraph 22 provides no further detail regarding how a parameter value
is determined.
Paragraph 23 of the Specification describes that an offer
determination module is configured to determine one or more offers for
virtual goods available to a user, and provides exemplary offers.
Paragraph 24 describes that the offer determination module determines one
or more offer windows that may be based on various factors. Paragraph 25
states that “offers may be determined based on one or more dynamic
parameters” (citing US Patent Application Nos. 13/540,426 and
13/540,531). Paragraph 26 describes that an offer price determination
module is configured to determine a purchase price associated with
individual offers and/or packages of offers available to the user, which may
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be based on static parameters. Paragraph 26 further describes examples of
purchase price, such as “an amount of real-world money, an amount of
virtual currency, one or more actions performed by the user, and/or other
means of exchange” where exemplary “actions” include completing a survey
and engaging in a virtual space for a span of time. Paragraphs 23–26
provide no technological details for how the offers are determined.
Paragraph 14 provides that offers for virtual goods may be dynamic in
that the offers themselves, offer prices and/or payment methods for offers
may be different for different users and/or at different times based on static
parameters. “By making offers dynamic, slow spenders may be enticed to
make more frequent purchases” and regular spenders may be charged
“higher prices for similar offers.” Spec. ¶ 14. Paragraph 14, thus, identifies
desired results, but provides no technological details regarding how a
parameter value is determined, how an offer is determined, or how the offers
are provided for presentation.
Paragraph 30 describes that the information presented to the user (e.g.,
offer field, price field, payment field) is determined by or in conjunction
with various modules (e.g., an offer determination module, a price
determination module, and a payment method determination module).
Paragraph 31 provides examples of the information conveyed changing over
time relative. In one embodiment, the user is presented certain offers in the
first seven days. If an offer in the first seven days is successful, no offer
may be provided in the second seven days; whereas, if it is unsuccessful, the
offer may be altered to entice a purchase during the second seven days. Id.
¶ 31. In another example, a sale is provided based on the current date, such
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as the holidays or end of quarter. Id. These paragraphs identify exemplary
desired results without technological details.
When given their broadest reasonable interpretation, limitations (c)–
(e) recite steps for providing an offer to sell goods, i.e., a commercial
interaction, which is a certain method of organizing human activity, and,
therefore, an abstract idea. See 2019 Revised Guidance 52 (commercial
interactions include “advertising, marketing or sales activities or
behaviors”). The Federal Circuit has held similar concepts, such as tailoring
information presented to a user and targeting advertisements to certain
customers, to be abstract. See, e.g., Intellectual Ventures I LLC v. Capital
One Bank (USA), 792 F.3d 1363, 1370 (Fed. Cir. 2015) (tailoring
information presented to a user based on particular information); Affinity
Labs of Texas, LLC v. Amazon.com, Inc., 838 F.3d 1266, 1271 (Fed. Cir.
2016) (customizing a user interface to have targeted advertising based on
user information); Morsa v. Facebook, Inc., 77 F. Supp. 3d 1007, 1013 (C.D.
Cal. 2014) (concluding that targeting advertisements to certain consumers is
no more than an abstract idea), aff’d, 622 F. App’x 915 (Fed. Cir. 2015).
Accordingly, we are not persuaded of Examiner error at Step 2A,
Prong 1 of the 2019 Revised Guidance. See App. Br. 11–13 (asserting that
the Examiner does not establish that claim 1 is similar to any concept held
by the courts to be abstract, overgeneralizes the claim, and fails to consider
its character as a whole).
Practical Application: Step One of the Mayo/Alice Framework; Step 2A,
Prong 2 of the 2019 Revised Guidance
Having concluded that claim 1 recites a judicial exception, i.e., an
abstract idea, we next consider whether the claim recites additional
elements, considered individually and in combination, that integrate the
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judicial exception into a practical application. See Revised Guidance 54–55.
Here, the additional elements recited in claim 1, beyond the abstract idea,
include the limitations (a) and (b). Limitation (a) recites “one or more
processors configured by machine-readable instructions” for executing
limitations (b) through (e). The Specification describes a “processor” at a
high-level as being “configured to execute computer program modules.”
Spec. ¶ 33. Limitation (a), thus, merely requires using a processor as a tool
to perform the abstract idea.
Limitation (b) recites “execut[ing] an instance of an online game that
takes place in a virtual space, and us[ing] the instance of the online game to
generate game state information that is transmitted to client computer
platforms over a network, the game state information facilitating
presentation of views of the virtual space to the users via the client
computing platforms, wherein execution of the instance further enables
interaction of users with the online game by performing operations in the
instance in response to commands received over the network from the client
computing platforms, wherein the users include a first user and a second
user.” Consequently, limitation (b) links use of the abstract idea to a
particular technological environment or field of use, namely an online game
that takes place in a virtual space and involves a first and second user.
Limitation (b) also recites components such as “client computing
platforms” and a “network.” Limitation (e) additionally recites that an
“offer interface” is used for interface. The Specification, however, describes
these components broadly and at a high level of generality. See, e.g., Spec.
¶¶ 14, 30, 32–39. At best, these elements call for the abstract idea to be
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implemented using generic computers (e.g., client computing platforms4) as
tools, and links the abstract idea to a particular technological environment
via a network and online game. Evaluating claim 1 as a whole, we are not
persuaded that limitations (a), (b), and (e), considered individually and as an
ordered combination, integrate the abstract idea into a practical application.
Appellant argues that the character of the claims as a whole is not
directed to an abstract idea because “the [S]pecification clearly indicates the
claims require computer technology.” App. Br. 13. But the test for patent
eligibility is not whether a claim requires computer technology. See DDR
Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1256 (Fed. Cir. 2014)
(“[A]fter Alice, there can remain no doubt: recitation of generic computer
limitations does not make an otherwise ineligible claim patent-eligible.”).
And, “not every claim that recites concrete, tangible components escapes the
reach of the abstract-idea inquiry.” In re TLI Commc’ns LLC Patent Litig.,
823 F.3d 607, 611 (Fed. Cir. 2016).
Appellant argues that claim 1 is “directed to an improvement in
computer-related technology and address[es] an online gaming challenge via
a novel solution necessarily rooted in computer technology[,]” analogous to
claim 1 of Example 23 of the USPTO’s “July 2015 Update Appendix 1:
Examples.”5 App. Br. 14. Yet, claim 1 of Example 23 is a hypothetical

4 “By way of non-limiting example, the given client computing platform 104
may include one or more of a desktop computer, a laptop computer, a
handheld computer, a NetBook, a Smartphone, a gaming console, and/or
other computing platforms.” Spec. ¶ 33.
5 July 2015 Update Appendix 1: Examples, available at
https://www.uspto.gov/sites/default/files/documents/ieg-july-2015-app1.pdf
(hereinafter “July 2015 Examples”).

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claim that addresses a problem with overlapping windows in a graphical user
interface. See July 2015 Examples, 7–9. Example 23’s claim 1 recites
reformatting and relocating textual information to an unobscured portion of
an underlying window when windows overlap. Id. at 9. When the windows
no longer overlap, the textual information is returned to its original format
and location. Id. In this hypothetical, the claimed solution is rooted in
computer technology to overcome a problem particular to graphical user
interfaces. Id.
In contrast, here, Appellant describes a problem wherein players of a
game are presented static offers, but these offers do not succeed in their
mission to “encourage users to keep playing and/or make purchases.” App.
Br. 14. Appellant elaborates that “early adopters of a game may be likely to
respond to different offers than inexperienced players.” Id. To solve this
problem, claim 1 determines a static parameter based on either the date a
user engaged in the virtual space or a date on which the application was
installed; determines offers based on that parameter; and presents the offers
to the user such that different users are presented with different offers. Id.
By presenting different offers to different users, the claimed solution may
better incentivize users to purchase the users, resulting in increased revenue.
Id.; see also id. at 20 (asserting that the claim 1 “address[es] a problem
typical to online gaming in which static offers that are the same for all users
may not be a successful way to encourage users to keep playing and/or make
purchases”). However, we are not persuaded that successfully encouraging
users to keep playing and/or to make purchases is a technological problem
unique to online gaming, rather than a business challenge. Encouraging
sales, reducing churn, and increasing revenue are business challenges
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common to businesses across various fields. We also are not persuaded that
determining a dynamic offer based on a static parameter (i.e., a particular
date) is an improvement in computer-related technology or a solution
necessarily rooted in computer technology, instead of an improvement to the
abstract idea. Appellant has not persuaded us that claim 1 resembles the
patent-eligible claim of Example 23.
Appellant argues that claim 1 is akin the claims at issue McRO, Inc. v.
Bandai Namco Games Am., Inc., 837 F.3d 1299 (Fed. Cir. 2016) because it
recites “determining a purchase price associated with an offer based on a
user-specific date having specific characteristics that does not preempt other
approaches and/or methods of distinguishing users, determining offers,
distributing advertising, and/or collecting[,] comparing, transmitting, and
displaying data.” App. Br. 15. Appellant contends that claim 1 “allow[s]
computer performance of a function that has not previously been
performed,” thereby improving computer-related technology. Id.
However, McRO does not stand for the proposition that the specificity
of the claim or novelty of a claim renders the claim patent eligible. After all,
an abstract idea may be described in multiple ways that vary in breadth. See
Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1240 (Fed. Cir. 2016) (“An
abstract idea can generally be described at different levels of abstraction.”).
Further, “a claim for a new abstract idea is still an abstract idea.” Synopsys,
Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1151 (Fed. Cir. 2016).
Nor does McRO stand for the proposition that a lack of preemption
renders the claims patent-eligible. There is no dispute that the Supreme
Court has described “the concern that drives [the exclusion of abstract ideas
from patent eligible subject matter] as one of pre-emption.” Alice Corp.,
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134 S. Ct. at 2354. But, characterizing pre-emption as a driving concern for
patent eligibility is not the same as characterizing pre-emption as the sole
test for patent eligibility. “The Supreme Court has made clear that the
principle of preemption is the basis for the judicial exceptions to
patentability” and “[f]or this reason, questions on preemption are inherent in
and resolved by the § 101analysis.” Ariosa Diagnostics, Inc. v. Sequenom,
Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015) (citing Alice, 134 S. Ct. at 2354).
“[P]reemption may signal patent ineligible subject matter, [but] the absence
of complete preemption does not demonstrate patent eligibility.” Id.
Instead, the Federal Circuit in McRO concluded that the claimed
invention was directed to a “technological improvement over the existing,
manual 3-D animation techniques” through the use of “limited rules in a
process specifically designed to achieve an improved technological result in
conventional industry practice.” McRO, 837 F.3d at 1316. Specifically, the
Federal Circuit found that the claimed rules allow computers to produce
accurate and realistic lip synchronization and facial expressions in animated
characters that previously could only be produced by human animators; and
the rules are limiting because they define morph weight sets as a function of
phoneme sub-sequences. Id. at 1313 (citations omitted).
Here, Appellant contends that the step of determining a purchase price
is analogous to the specific set of rules in McRO, because it requires a user-
specific date. Yet, Appellant does not identify, and we do not find, any
technological improvement analogous to the improved 3-D animation
techniques in McRO. We also do not see any parallel between the limiting
rules described in McRO and the result-based functional limitations recited
in Appellant’s claim 1.
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We conclude, for the reasons outlined above, that claim 1 recites a
method of organizing human activity, i.e., an abstract idea, and we are not
persuaded that the additional elements are more than generic computer
components used to implement the abstract idea, and generally link the
abstract idea to a particular technological environment or field of use. For
example, we find no indication that one or more additional elements reflects
an improvement in the functioning of a computer, or an improvement to
other technology or technical field; requires any specialized computer
hardware or other inventive computer components, i.e., a particular machine;
or effects a transformation or reduction of a particular article to a different
state or thing. Therefore, we are not persuaded that the Examiner erred at
Step 2A, Prong 2 in determining that the additional elements do not integrate
the recited abstract idea into a practical application (Step 2A, Prong Two of
the 2019 Revised Guidance).
Inventive Concept: Step Two of the Mayo/Alice Framework (Step 2A,
Prong 1 of the 2019 Revised Guidance)
Having determined under step one of the Mayo/Alice framework that
claim 1 is directed to an abstract idea, we next consider under Step 2B of the
2019 Revised Guidance, the second step of the Mayo/Alice framework —
whether claim 1 recites additional elements that provide an inventive
concept (i.e., whether the additional elements amount to significantly more
than the judicial exception itself).
Appellant asserts that claim 1 is similar to the claims at issue in
BASCOM Global Internet Services, Inc. v. AT&T Mobility LLC, 827 F.3d
1341 (Fed. Cir. 2016) because “the additionally limitations, considered
collectively, describe a specific and discrete implementation of distributing
advertising and/or collecting, comparing, transmitting, and displaying data.”
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App. Br. 18. Appellant acknowledges that the limitations individually may
be routine in the art. Id. However, Appellant contends that the ordered
combination of limitations (c) through (e) of claim 1, i.e.,
(i) determining a static parameter based on the date a user
engaged in the virtual space or a date on which the application
was installed on the user’s client computing platform, (ii)
determining offers per user based on that static parameter, and/or
(iii) providing those user-specific offers via an offer interface to
users such that different users are presented with different offers,
amounts to a technical improvement over priors ways of
distributing advertising and/or collecting, comparing,
transmitting, and displaying data (as further set forth in step 2A).
App. Br. 18. However, the relevant question at step two of the Mayo/Alice
framework is whether the additional elements amount to significantly more
than the abstract idea, not whether they improve upon the abstract idea itself.
Here, the combination of limitations identified by Appellant are part of the
abstract idea (i.e., a commercial interaction) itself.
Similarly, pointing to limitations (c) through (e) of claim 1, Appellant
asserts that the Examiner does not adequately establish that these limitations
would have been recognized by one of ordinary skill in the art as well-
understood or routine. App. Br. 19 (disputing the Examiner’s determination
at page 4 of the Final Office Action that the individual limitations recite
“some of the most basic functions of a computer,” such as “[u]sing a
computer to obtain data, using data to identify other data, and filtering data”)
Yet, as we describe above, the inventive concept under step two of the
Mayo/Alice test cannot be the abstract idea itself:
It is clear from Mayo that the “inventive concept” cannot be the
abstract idea itself, and Berkheimer . . . leave[s] untouched the
numerous cases from this court which have held claims ineligible
because the only alleged “inventive concept” is the abstract idea.
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Berkheimer v. HP Inc., 890 F.3d 1369, 1374 (Fed. Cir. 2018) (Moore, J.,
concurring in denial of petition for rehearing en banc). “It has been clear
since Alice that a claimed invention’s use of the ineligible concept to which
it is directed cannot supply the inventive concept that renders the invention
‘significantly more’ than that ineligible concept.” BSG Tech LLC v.
BuySeasons, Inc., 899 F.3d 1281, 1290 (Fed. Cir. 2018).
We are not persuaded of error in the Examiner’s rejection of claim 1
under 35 U.S.C. § 101. Therefore, we sustain the Examiner’s rejection of
claim 1, and claims 3–12, and 14–24, which fall with claim 1.
Obviousness
We are persuaded by Appellant’s argument that the Examiner erred in
rejecting independent claims 1 and 12 under 35 U.S.C. § 103(a) because the
combination of Roeding, Lutnick, and Hirson fails to teach or suggest
limitations (c) and (d) as recited in claim 1, and similarly recited by claim
12. App. Br. 21–38. In particular, Appellant argues, and we agree, that the
cited art does not disclose “determining an offer for a virtual good such that
the offer is determined based on either the date a user engaged in the virtual
space or a date on which the application was installed on the user's client
computing platform.” Id. at 21.
In rejecting claim 1, the Examiner acknowledges that “Roeding does
not disclose that the system and method uses purchase/install/play date
information.” Final Act. 12. However, the Examiner finds that “Lutnick
discloses a system and method of gaming that provides a virtual gaming
environment and provides offers for use in the gaming environment[,] these
offers being dependent on a variety of metrics that includes monitoring of
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date information for the game’s install/purchase/play (0347, 0701, 0854,
1254).” Id.
Lutnick relates generally to games of chance. Lutnick ¶ 2. Paragraph
347 of Lutnick provides that a sports and event betting system stores data
structures having information relating to betting events and odds, including a
date, time, and location. Paragraph 701 of Lutnick describes that a ticket
printer can be used to print ticket vouchers, which can be used as at the
casino, such as for extra game play. These vouchers may include the date
and time of the voucher’s issuance. Lutnick ¶ 701. Paragraph 854 describes
date-stamping cards dealt at a casino so that the information can be used in
an analytical search tool for security. Paragraph 1254 describes storing data
generated during the game, including the date of the game, for auditing
purposes. None of the cited portions of Lutnick describe or suggest
determining a given offer based on one or both of a date on which individual
ones of the users engaged in the virtual space or a date on which the
application was installed on individual ones of the client computer platform,
as recited in limitations (c) and (d) of claim 1, and similarly recited in
claim 12.
The Examiner takes the position that
the inclusion of a date on which a user engages the virtual space
or a date on which the user installed the application as a static
parameter, with no other specific elements tied to it is inherently
disclosed by the art. It would be impossible to initiate the
sending of offers for goods through an application or virtual
space that an individual has not installed, created, entered, and
interacted with.
Final Act. 13. Yet, that a user would install and interact with a virtual space
or application before providing an offer does not teach or suggest that an
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offer to sell virtual goods would be determined based on the value of one or
both of a user engaged with the virtual space or a date on which the
application was installed.
In seeming contradiction to the earlier acknowledgement that Roeding
does not teach the argued aspects of the claim language, the Examiner (at
page 13 of the Final Action) further finds that Roeding teaches (at paragraph
72) that “the method may take into account dates and times for offer
calculations.” Yet, this paragraph is part of a section of Roeding relating to
incentivizing a customer to visit a physical retail store instead of an online
retail store. See Roeding ¶¶ 61–76; see also id. ¶ 61 (explaining that
“consumers are more likely to make purchases when they walk into a
physical store (typically 20–50 times more likely that when they visit a retail
website online)”). For example, Roeding provides offers at intervals while a
consumer is in a physical retail store to entice the consumer to remain
physically there. See id. ¶ 65. Similarly, Roeding describes offering games,
such as scavenger hunts, to play within in the physical store. Id. ¶ 66. At
paragraph 72, Roeding teaches optimizing the method by reviewing the
rewards and purchases to determine a critical amount of rewards to change
the consumer’s purchasing power. Id. ¶ 72. Roeding discloses that the
times and dates that have the highest rates of changing the user’s purchasing
patterns can be determined. Id. But we fail to see how, and the Examiner
does not adequately explain how, determining the dates in which rewards are
most effective teaches or suggests determining an offer to sell virtual goods
based on at least one of a date that a user engaged with the virtual space and
a date on which the application was installed, as required by limitations (c)
and (d) of claim 1, and similarly required by claim 22, particularly where the
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rewards of Roeding seek to entice a customer away from an online retail
store and into a physical retail store.
In view of the foregoing, we do not sustain the Examiner’s rejection
of independent claims 1 and 12, and their dependent claims under 35 U.S.C.
§ 103(a).
DECISION
The Examiner’s rejection of claims 1, 3–12, and 14–24 under
35 U.S.C. § 101 is affirmed.
The Examiner’s rejection of claims 1, 3–12, and 14–24 under
35 U.S.C. § 103(a) is reversed.
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