Dana S. Robbins et al.

Patent Trials and Appeals Board

Dec 26, 2019

14478994 - (D) (P.T.A.B. Dec. 26, 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.
14/478,994 09/05/2014 Dana S. Robbins RAMP-01001-US-1 9140
140608 7590 12/26/2019
Wright, Lindsey & Jennings LLP - LiveRamp
200 W. Capitol Ave.
Ste. 2300
Little Rock, AR 72201
EXAMINER
DURAN, ARTHUR D
ART UNIT PAPER NUMBER
3622
NOTIFICATION DATE DELIVERY MODE
12/26/2019 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):
aelliott@wlj.com
jdougherty@wlj.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte DANA S. ROBBINS, VIVEK PALAN,
LIK MUI, and GABRIELLE TAO
____________

Appeal 2018–007148
Application 14/478,994
Technology Center 3600
____________

Before ANTON W. FETTING, KENNETH G. SCHOPFER, and
TARA L. HUTCHINGS, Administrative Patent Judges.

FETTING, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE1
Dana S. Robbins, Vivek Palan, Lik Mui, and Gabrielle Tao
(Appellant2) seek review under 35 U.S.C. § 134 of a final rejection of claims
1, 4–10, and 13–20, the only claims pending in the application on appeal.
We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b).
The Appellant invented a way of enabling a marketer to provide a
next best offer to a consumer without the use of personally identifiable
information (PII). Spec. para. 5.
An understanding of the invention can be derived from a reading of
exemplary claim 13, which is reproduced below (bracketed matter and some
paragraphing added).
13. A computer-implemented method for determining a next
best offer, comprising the steps of:
a. receiving at a decision engine at a marketing services provider
(MSP) server a request to construct a next best offer comprising
a marketing message;
b. determining at the MSP server whether the request comprises
personally identifiable information (PII);
c.
[c.1] accessing a known consumer data hub comprising a
plurality of records pertaining to known consumers from

1 Our decision will make reference to the Appellant’s Appeal Brief (“App.
Br.,” filed December 11, 2017) and Reply Brief (“Reply Br.,” filed July 2,
2018), and the Examiner’s Answer (“Ans.,” mailed May 3, 2018), and Final
Action (“Final Act.,” mailed July 14, 2017).
2 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies the real party in interest as Acxiom
Corporation (Appeal Br. 2).

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the decision engine if PII is used in the next best offer
request,
or
[c.2] accessing an anonymous consumer data hub
comprising a plurality of records pertaining to anonymous
consumers from the decision engine if PII is not used in
the next best offer request,
wherein the anonymous consumer data hub
comprises only records that contain no personally
identifiable information (PII);
and
d. delivering the marketing message to a marketing channel in
communication with a consumer device that is connected to the MSP
server by a network.
The Examiner relies upon the following prior art:
Name Reference Date
Daigle US 2011/0178863 A1 July 21, 2011
Claims 1, 4–10, and 13–20 stand rejected under 35 U.S.C. § 101 as
directed to a judicial exception without significantly more.
Claims 1, 4–10, and 13–20 stand rejected under 35 U.S.C. § 102(a)(1)
as anticipated by Daigle.
ISSUES
The issues of eligible subject matter turn primarily on whether the
claims recite more than abstract conceptual advice of results desired.
The issues of novelty turn primarily on whether the art describes the
limitations.
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FACTS PERTINENT TO THE ISSUES
The following enumerated Findings of Fact (FF) are believed to be
supported by a preponderance of the evidence.
Facts Related to the Prior Art
Daigle
01. Daigle is directed to interfacing with a consumer in a retail
environment. Daigle para. 2.
ANALYSIS
Claims 1, 4–10, and 13–20 rejected under 35 U.S.C. § 101 as directed to a
judicial exception without significantly more
STEP 13
Claim 13, as a method claim, nominally recites one of the enumerated
categories of eligible subject matter in 35 U.S.C. § 101. The issue before us
is whether it is directed to a judicial exception without significantly more.
STEP 2
The Supreme Court
set forth a framework for distinguishing patents that claim laws
of nature, natural phenomena, and abstract ideas from those that
claim patent-eligible applications of those concepts. First, . . .
determine whether the claims at issue are directed to one of those
patent-ineligible concepts. If so, we then ask, “[w]hat else is
there in the claims before us? To answer that question, . . .
consider the elements of each claim both individually and “as an
ordered combination” to determine whether the additional
elements “transform the nature of the claim” into a patent-
eligible application. [The Court] described step two of this

3 For continuity of analysis, we adopt the steps nomenclature from 2019
Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7,
2019) (“Revised Guidance”).
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analysis as a search for an “‘inventive concept’”—i.e., an
element or combination of elements that is “sufficient to ensure
that the patent in practice amounts to significantly more than a
patent upon the [ineligible concept] itself.”
Alice Corp., Pty. Ltd. v CLS Bank Intl, 573 U.S. 208, 217–18 (2014)
(citations omitted) (citing Mayo Collaborative Services v. Prometheus
Laboratories, Inc., 566 U.S. 66 (2012)). To perform this test, we must first
determine what the claims are directed to. This begins by determining
whether the claims recite one of the judicial exceptions (a law of nature, a
natural phenomenon, or an abstract idea). Then, if claims recite a judicial
exception, determining whether the claims at issue are directed to the recited
judicial exception, or whether the recited judicial exception is integrated into
a practical application of that exception, i.e., that the claims “apply, rely on,
or use the judicial exception in a manner that imposes a meaningful limit on
the judicial exception, such that the claim is more than a drafting effort
designed to monopolize the judicial exception.” Revised Guidance at 54. If
the claims are directed to a judicial exception, then finally determining
whether the claims provide an inventive concept because the additional
elements recited in the claims provide significantly more than the recited
judicial exception.
STEP 2A Prong 1
At a high level, and for our preliminary analysis, we note that method
claim 13 recites receiving request data, determining whether the request data
has data meeting criteria, accessing one of two data hubs depending on that
determination, and delivering message data. Determining whether criteria
are met is rudimentary data analysis. Accessing data hubs is data reception,
and delivering data is data transmission. Thus, claim 13 recites receiving,
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analyzing, and transmitting data. None of the limitations recite
technological implementation details for any of these steps, but instead recite
only results desired by any and all possible means.
From this we see that claim 13 does not recite the judicial exceptions
of either natural phenomena or laws of nature.
Under Supreme Court precedent, claims directed purely to an abstract
idea are patent in-eligible. As set forth in the Revised Guidance, which
extracts and synthesizes key concepts identified by the courts, abstract ideas
include (1) mathematical concepts,4 (2) certain methods of organizing
human activity,5 and (3) mental processes6. Among those certain methods
of organizing human activity listed in the Revised Guidance are commercial
or legal interactions. Like those concepts, claim 13 recites the concept of
managing a marketing promotion. Specifically, claim 13 recites operations
that would ordinarily take place in advising one to deliver a marketing
message after accessing one of two data hub sources depending on the
nature of data received in a request. The advice to deliver a marketing
message after accessing one of two data hub sources depending on the

4 See, e.g., Gottschalk v. Benson, 409 U.S. 63, 71–72 (1972); Bilski v.
Kappos, 561 U.S. 593, 611 (2010); Mackay Radio & Telegraph Co. v. Radio
Corp. of Am., 306 U.S. 86, 94 (1939); SAP Am., Inc. v. InvestPic, LLC, 898
F.3d 1161, 1163 (Fed. Cir. 2018).
5 See, e.g., Bilski, 561 U.S. at 628; Alice, 573 U.S. at 219-20; Ultramercial,
Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed Cir. 2014); Smart Sys.
Innovations, LLC v. Chicago Transit Auth., 873 F.3d 1364, 1383 (Fed. Cir.
2017); In re Marco Guldenaar Holding B.V., 911 F.3d 1157, 1160–61 (Fed.
Cir. 2018).
6 See, e.g., Benson, 409 U.S. at 67; CyberSource Corp. v. Retail Decisions,
Inc., 654 F.3d 1366, 1371–72 (Fed. Cir. 2011); Intellectual Ventures I LLC
v. Symantec Corp., 838 F.3d 1307, 1318 (Fed. Cir. 2016).
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nature of data received in a request involves delivering the marketing
message, which is an economic act, and a request to construct a next best
offer comprising a marketing message, which is an act ordinarily performed
in the stream of commerce. For example, claim 13 recites “delivering the
marketing message,” which is an activity that would take place whenever
one is promoting commerce through marketing. Similarly, claim 1 recites “a
request to construct a next best offer comprising a marketing message,”
which is also characteristic of managing such promotion.
The Examiner determines the claims to be directed to providing an
offer based on non-personally identifiable customer information. Final
Act. 3.
The preamble to claim 13 recites that it is a method for determining a
next best offer. The steps in claim 13 result in delivering the marketing
message absent any technological mechanism other than a conventional
computer for doing so.
As to the specific limitations, limitations a and c recite receiving data.
Limitations b and d recite generic and conventional receiving, analyzing,
and transmitting of marketing offer data, which advise one to apply generic
functions to get to these results. The limitations thus recite advice for
delivering a marketing message after accessing one of two data hub sources
depending on the nature of data received in a request. To advocate
delivering a marketing message after accessing one of two data hub sources
depending on the nature of data received in a request is conceptual advice
for results desired and not technological operations.
The Specification at paragraph 5 describes the invention as relating to
enabling a marketer to provide a next best offer to a consumer without the
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use of personally identifiable information (PII). Thus, all this intrinsic
evidence shows that claim 13 recites managing a marketing promotion. This
is consistent with the Examiner’s determination.
This in turn is an example of commercial or legal interactions that are
method of organizing human activity because managing marketing
promotions is a conventional practice in organizing commercial activity to
induce sales. The concept of managing a marketing promotion by delivering
a marketing message after accessing one of two data hub sources depending
on the nature of data received in a request is one idea for translating
customer information into a communication for marketing. The steps recited
in claim 13 are part of how this might conceptually be premised.
Our reviewing court has found claims to be directed to abstract ideas
when they recited similar subject matter. Ultramercial, Inc. v. Hulu, LLC,
772 F.3d 709, 715 (Fed. Cir. 2014) (advertising).
From this we conclude that at least to this degree, claim 13 recites
managing a marketing promotion by delivering a marketing message after
accessing one of two data hub sources depending on the nature of data
received in a request. This is a commercial and legal interaction, which is
one of certain methods of organizing human activity identified in the
Revised Guidance, and, thus, is an abstract idea.
STEP 2A Prong 2
The next issue is whether claim 13 not only recites, but is more
precisely directed to this concept itself or whether it is instead directed to
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some technological implementation or application of, or improvement to,
this concept, i.e., integrated into a practical application.7
At the same time, we tread carefully in construing this
exclusionary principle lest it swallow all of patent law. At some
level, “all inventions ... embody, use, reflect, rest upon, or apply
laws of nature, natural phenomena, or abstract ideas.” Thus, an
invention is not rendered ineligible for patent simply because it
involves an abstract concept. “[A]pplication[s]” of such
concepts “ ‘to a new and useful end,’ ” we have said, remain
eligible for patent protection. Accordingly, in applying the § 101
exception, we must distinguish between patents that claim the “
‘buildin[g] block[s]’ ” of human ingenuity and those that
integrate the building blocks into something more.
Alice, 573 U.S. at 217 (citations omitted).
Taking the claim elements separately, the operation performed by the
computer at each step of the process is expressed purely in terms of results,
devoid of implementation details. Steps a and c are pure data gathering
steps. Limitations describing the nature of the data do not alter this. Step d
is insignificant post-solution activity, such as storing, transmitting, or
displaying the results. Step b recites generic computer processing expressed
in terms of results desired by any and all possible means and so present no
more than conceptual advice. All purported inventive aspects reside in how
the data is interpreted and the results desired, and not in how the process
physically enforces such a data interpretation or in how the processing
technologically achieves those results.
Viewed as a whole, Appellant’s claim 13 simply recites the concept of
managing a marketing promotion by delivering a marketing message after

7 See, e.g., Alice, 573 U.S. at 223, discussing Diamond v. Diehr, 450 U.S.
175 (1981).
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accessing one of two data hub sources depending on the nature of data
received in a request as performed by a generic computer. This is no more
than conceptual advice on the parameters for this concept and the generic
computer processes necessary to process those parameters, and do not recite
any particular implementation.
Claim 13 does not, for example, purport to improve the functioning of
the computer itself. Nor does it affect an improvement in any other
technology or technical field. The 17 pages of the Specification only spell
out different generic equipment8 and parameters that might be applied using
this concept and the particular steps such conventional processing would
entail based on the concept of managing a marketing promotion by
delivering a marketing message after accessing one of two data hub sources
depending on the nature of data received in a request under different
scenarios. They do not describe any particular improvement in the manner a
computer functions. Instead, claim 13, at issue, amounts to nothing
significantly more than an instruction to apply managing a marketing
promotion by delivering a marketing message after accessing one of two
data hub sources depending on the nature of data received in a request using
some unspecified, generic computer. Under our precedents, that is not
enough to transform an abstract idea into a patent-eligible invention. See
Alice, 573 U.S. at 225–26.
None of the limitations reflect an improvement in the functioning of a
computer, or an improvement to other technology or technical field; applies

8 The Specification describes specially programmed computer servers and
desktop computers, laptop computers, tablets, and smartphones. Spec. para.
13.
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or uses a judicial exception to effect a particular treatment or prophylaxis for
a disease or medical condition; implements a judicial exception with, or uses
a judicial exception in conjunction with, a particular machine or manufacture
that is integral to the claim; effects a transformation or reduction of a
particular article to a different state or thing; or applies or uses the judicial
exception in some other meaningful way beyond generally linking the use of
the judicial exception to a particular technological environment, such that
the claim as a whole is more than a drafting effort designed to monopolize
the exception.
We conclude that claim 13 is directed to achieving the result of
managing a marketing promotion by advising one to deliver a marketing
message after accessing one of two data hub sources depending on the
nature of data received in a request, as distinguished from a technological
improvement for achieving or applying that result. This amounts to
commercial or legal interactions, which fall within certain methods of
organizing human activity that constitute abstract ideas. The claim does not
integrate the judicial exception into a practical application.
STEP 2B
The next issue is whether claim 13 provides an inventive concept
because the additional elements recited in the claim provide significantly
more than the recited judicial exception.
The introduction of a computer into the claims does not generally alter
the analysis at Mayo step two.
[T]he mere recitation of a generic computer cannot transform a
patent-ineligible abstract idea into a patent-eligible invention.
Stating an abstract idea “while adding the words ‘apply it’” is not
enough for patent eligibility. Nor is limiting the use of an
abstract idea “‘to a particular technological environment.’”
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Stating an abstract idea while adding the words “apply it with a
computer” simply combines those two steps, with the same
deficient result. Thus, if a patent’s recitation of a computer
amounts to a mere instruction to “implement[t]” an abstract idea
“on . . . a computer,” that addition cannot impart patent
eligibility. This conclusion accords with the preemption concern
that undergirds our § 101 jurisprudence. Given the ubiquity of
computers, wholly generic computer implementation is not
generally the sort of “additional feature[e]” that provides any
“practical assurance that the process is more than a drafting effort
designed to monopolize the [abstract idea] itself.”
Alice, 573 U.S. at 223–24 (citations omitted).
“[T]he relevant question is whether the claims here do more than
simply instruct the practitioner to implement the abstract idea . . . on a
generic computer.” Alice, 573 U.S. at 225. They do not.
Taking the claim elements separately, the function performed by the
computer at each step of the process is purely conventional. Using a
computer for receiving, analyzing, and transmitting data amounts to
electronic data query and retrieval—one of the most basic functions of a
computer. All of these computer functions are generic, routine, conventional
computer activities that are performed only for their conventional uses. See
Elec. Power Grp. v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016). See
also In re Katz Interactive Call Processing Patent Litigation, 639 F.3d 1303,
1316 (Fed. Cir. 2011) (“Absent a possible narrower construction of the terms
‘processing,’ ‘receiving,’ and ‘storing,’ . . . those functions can be achieved
by any general purpose computer without special programming”). None of
these activities are used in some unconventional manner nor do any produce
some unexpected result. Appellant does not contend they invented any of
these activities. In short, each step does no more than require a generic
computer to perform generic computer functions. As to the data operated
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upon, “even if a process of collecting and analyzing information is ‘limited
to particular content’ or a particular ‘source,’ that limitation does not make
the collection and analysis other than abstract.” SAP America, Inc. v.
InvestPic LLC, 898 F.3d 1161, 1168 (Fed. Cir. 2018).
Considered as an ordered combination, the computer components of
Appellant’s claim 13 add nothing that is not already present when the steps
are considered separately. The sequence of data reception-analysis-
transmission is equally generic and conventional. See Ultramercial, 772
F.3d at 715 (sequence of receiving, selecting, offering for exchange, display,
allowing access, and receiving payment recited an abstraction), Inventor
Holdings, LLC v. Bed Bath & Beyond, Inc., 876 F.3d 1372, 1378 (Fed. Cir.
2017) (sequence of data retrieval, analysis, modification, generation, display,
and transmission), Two-Way Media Ltd. v. Comcast Cable Communications,
LLC, 874 F.3d 1329, 1339 (Fed. Cir. 2017) (sequence of processing, routing,
controlling, and monitoring). The ordering of the steps is therefore ordinary
and conventional.
We conclude that claim 13 does not provide an inventive concept
because the additional elements recited in the claim do not provide
significantly more than the recited judicial exception.
REMAINING CLAIMS
Claim 13 is representative. The remaining method claims merely
describe process parameters. We conclude that the method claims at issue
are directed to a patent-ineligible concept itself, and not to the practical
application of that concept.
As to the structural claims, they
are no different from the method claims in substance. The
method claims recite the abstract idea implemented on a generic
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computer; the system claims recite a handful of generic computer
components configured to implement the same idea. This Court
has long “warn[ed] ... against” interpreting § 101“in ways that
make patent eligibility ‘depend simply on the draftsman’s art.’
Alice, 573 U.S. at 226. We note that structural claim 1 lists several
component limitations, viz, a data layer, two data hubs, a decision engine,
and an MSP routine on a server. The data layer is just that, data. A data hub
is a generic data repository, and a decision engine and MSP routine are
program instruction data in the form of some unrecited algorithm. Such
generic components cannot confer eligibility.
The use and arrangement of conventional and generic computer
components recited in the claims—such as a database, user
terminal, and server— do not transform the claim, as a whole,
into “significantly more” than a claim to the abstract idea itself.
“We have repeatedly held that such invocations of computers and
networks that are not even arguably inventive are ‘insufficient to
pass the test of an inventive concept in the application’ of an
abstract idea.”
Credit Acceptance Corp. v. Westlake Services, 859 F.3d 1044, 1056 (Fed.
Cir. 2017) (citations omitted).
As a corollary, the claims are not directed to any particular machine.
LEGAL CONCLUSION
From these determinations, we further determine that the claims do
not recite an improvement to the functioning of the computer itself or to any
other technology or technical field, a particular machine, a particular
transformation, or other meaningful limitations. From this we conclude the
claims are directed to the judicial exception of the abstract idea of certain
methods of organizing human activity as exemplified by the commercial and
legal interaction of managing a marketing promotion by delivering a
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marketing message after accessing one of two data hub sources depending
on the nature of data received in a request, without significantly more.
APPELLANT’S ARGUMENTS
As to Appellant’s Appeal Brief arguments, we adopt the Examiner’s
determinations and analysis from Final Action 2–5 and Answer 3–5 and
reach similar legal conclusions. We now turn to the Reply Brief.
We are not persuaded by Appellant’s argument that
the Examiner has alleged in a merely conclusory fashion that all
of the claim elements are well-understood, routine, and
conventional. With respect to Item #1 in the Guidance, the
Examiner has not identified any express statement in the
specification or during prosecution that the elements are well-
understood, routine, and conventional.
Reply Br. 3. Such determinations are supported under Step 2B supra.
Claims 1, 4–10, and 13–20 rejected under 35 U.S.C. § 102(a)(1) as
anticipated by Daigle
We are persuaded by Appellant’s argument that Daigle fails to
describe accessing an anonymous consumer data hub. App. Br. 24–25.
Although Daigle describes acquiring data anonymously, it does not describe
accessing it as claimed.
CONCLUSIONS OF LAW
The rejection of claims 1, 4–10, and 13–20 under 35 U.S.C. § 101 as
directed to a judicial exception without significantly more is proper.
The rejection of claims 1, 4–10, and 13–20 under 35 U.S.C.
§ 102(a)(1) as anticipated by Daigle is improper.
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CONCLUSION
The rejection of claims 1, 4–10, and 13–20 is affirmed.
In summary:
Claims
Rejected
35 U.S.C. § Basis Affirmed Reversed
1, 4–10, 13–20 101 Eligibility 1, 4–10, 13–20
1, 4–10, 13–20 102(a)(1) Daigle 1, 4–10, 13–20
Overall Outcome 1, 4–10, 13–20

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2011).

AFFIRMED