Disney Enterprises, Inc.

Patent Trials and Appeals Board

May 15, 2020

14322024 - (D) (P.T.A.B. May. 15, 2020)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
14/322,024 07/02/2014 Brian Leake 0260277C1 6287
63649 7590 05/15/2020
DISNEY ENTERPRISES, INC.
C/O FARJAMI & FARJAMI LLP
26522 LA ALAMEDA AVENUE, SUITE 360
MISSION VIEJO, CA 92691
EXAMINER
NIGH, JAMES D
ART UNIT PAPER NUMBER
3685
NOTIFICATION DATE DELIVERY MODE
05/15/2020 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
docketing@farjami.com
farjamidocketing@yahoo.com
ffarjami@farjami.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte BRIAN LEAKE
____________

Appeal 2019-006308
Application 14/322,024
Technology Center 3600
____________

Before ST. JOHN COURTENAY III, CATHERINE SHIANG, and
JAMES W. DEJMEK, Administrative Patent Judges.

COURTENAY, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from a Final rejection of
claims 21–25, 27–32, and 34–36. Claims 1–20, 26, and 33 are canceled.
We have jurisdiction over the pending claims under 35 U.S.C. § 6(b).
We affirm.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42(a) (2018). According to Appellant, the real party in interest
is Disney Enterprises, Inc. See Appeal Br. 2.

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STATEMENT OF THE CASE2
Introduction
Appellant’s claimed invention relates generally to “a system and
method for gated unlock codes for videogame features and content.” (Spec.
page 5, lines 2–3).

References
The prior art relied upon by the Examiner as evidence is:
Name Reference Date
Alabraba et al. US 7,702,536 B1 Apr. 20, 2010
Begeja et al. US 2010/0122285 A1 May 13, 2010
Magnussen et al. US 2006/0150212 A1 July 6, 2006

Rejections A, B, and C
Rej Claims
Rejected
35 U.S.C. § Reference(s)/Basis
A 21–25,
27–32,
34–36
101 Eligibility (Judicial Exception)
B 21–25,
27–32,
34
103(a) Alabraba et al. (“Alabraba”),
Magnussen et al. (“Magnussen”)
C 35–36 103(a) Alabraba, Magnussen, Begeja et al.
(“Begeja”)

2 We herein refer to the Final Office Action, mailed Dec. 31, 2018 (“Final
Act.”); Appeal Brief, filed Apr. 23, 2019 (“Appeal Br.”); the Examiner’s
Answer, mailed June 25, 2019 (“Ans.”), and the Reply Brief, filed Aug. 23,
2019 (“Reply Br.”).
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Issues on Appeal
Did the Examiner err in rejecting claims 21–25, 27–32 and 34–36
under 35 U.S.C. § 101, as being directed to a judicial exception, without
significantly more?
Did the Examiner err in rejecting claims 21–25, 27–32 and 34–36
under pre-AIA 35 U.S.C. § 103(a), as being obvious over the combined
teachings and suggestions of the cited references?

ANALYSIS
We reproduce infra independent claim 21 in Table One. We have
considered all of Appellant’s arguments and any evidence presented.

Rejection A of Claims 21–25, 27–32 and 34–36 under § 101
USPTO § 101 Guidance
On January 7, 2019, the U.S. Patent and Trademark Office (USPTO)
published revised guidance on the application of 35 U.S.C. § 101. See
USPTO, 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed.
Reg. 50 (“2019 Memorandum”).3 Under that guidance, we first look to
whether the claim recites:

3 The Office issued a further memorandum on October 17, 2019 (the
“October 2019 Memorandum”) clarifying guidance of the January 2019
Memorandum in response to received public comments. See https://
www.uspto.gov/sites/default/files/documents/peg_oct_2019_update.pdf.
Moreover, “[a]ll USPTO personnel are, as a matter of internal agency
management, expected to follow the guidance.” January 2019 Memorandum
at 51; see also October 2019 Memorandum at 1.
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(1) (see 2019 Memorandum Step 2A – Prong One) any judicial
exceptions, including certain groupings of abstract ideas
(i.e., mathematical concepts, certain methods of organizing
human activity such as a fundamental economic practice, or
mental processes); and

(2) (see 2019 Memorandum Step 2A – Prong Two) additional
elements that integrate the judicial exception into a practical
application (see MPEP § 2106.05(a)–(c), (e)–(h)).4

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, conventional” in the field
(see MPEP § 2106.05(d)); or

(4) simply appends well-understood, routine, conventional
activities previously known to the industry, specified at a
high level of generality, to the judicial exception.
See 2019 Memorandum Step 2B.
Because there is no single definition of an “abstract idea” under Alice
step 1, the 2019 Memorandum synthesizes, for purposes of clarity,
predictability, and consistency, key concepts identified by the courts as
abstract ideas to explain that the “abstract idea” exception includes the
following three groupings:

4 This evaluation is performed by (a) identifying whether there are any
additional elements recited in the claim beyond the judicial exception, and
(b) evaluating those additional elements individually and in combination to
determine whether the claim as a whole integrates the exception into a
practical application. See 2019 Memorandum - Section III(A)(2).
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1. Mathematical concepts—mathematical relationships,
mathematical formulas or equations, mathematical
calculations;

2. Mental processes—concepts performed in the human mind
(including an observation, evaluation, judgment, opinion);
and

3. Certain methods of organizing human activity—fundamental
economic principles or practices (including hedging,
insurance, mitigating risk); commercial or legal interactions
(including agreements in the form of contracts; legal
obligations; advertising, marketing or sales activities or
behaviors; business relations); managing personal behavior
or relationships or interactions between people (including
social activities, teaching, and following rules or
instructions).
See 2019 Memorandum, 84 Fed. Reg. at 52.
According to the 2019 Memorandum, “[c]laims that do not recite
[subject] matter that falls within these enumerated groupings of abstract
ideas should not be treated as reciting abstract ideas,” except in rare
circumstances. Even if the claims recite any one of these three groupings of
abstract ideas, these claims are still not “directed to” a judicial exception
(abstract idea), and thus are patent eligible, if “the claim as a whole
integrates the recited judicial exception into a practical application of that
exception.” See 2019 Memorandum, 84 Fed. Reg. at 53.
For example, limitations that are indicative of integration into a
practical application include:
1. Improvements to the functioning of a computer, or to any
other technology or technical field — see MPEP
§ 2106.05(a);
2. Applying the judicial exception with, or by use of, a
particular machine — see MPEP § 2106.05(b);
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3. Effecting a transformation or reduction of a particular
article to a different state or thing — see MPEP
§ 2106.05(c); and
4. Applying or using 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
— see MPEP § 2106.05(e).
In contrast, limitations that are not indicative of integration into a
practical application include:
1. Adding the words “apply it” (or an equivalent) with the
judicial exception, or merely include instructions to
implement an abstract idea on a computer, or merely uses a
computer as a tool to perform an abstract idea — see MPEP
§ 2106.05(f);
2. Adding insignificant extra-solution activity to the judicial
exception — see MPEP § 2106.05(g); and
3. Generally linking the use of the judicial exception to a
particular technological environment or field of use — see
MPEP § 2106.05(h).
See 2019 Memorandum, 84 Fed. Reg. at 54–55 (“Prong Two”).
2019 Memorandum, Step 2A, Prong One
The Judicial Exception
Under the 2019 Memorandum, we begin our analysis by first
considering whether the claims recite any judicial exceptions, including
certain groupings of abstract ideas, in particular: (a) mathematical concepts,
(b) mental steps, and (c) certain methods of organizing human activities.
The Examiner concludes the claims recite an abstract idea, because:
“[c]ollecting data, storing data, organizing data, manipulating data and
displaying data has [] been held as being directed towards an abstract idea in
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several decisions from the Court of Appeals for the Federal Circuit.” Final
Act. 9.
In support, the Examiner (id.) cites to several case authorities: Smart
Sys. Innovations, LLC v. Chi. Transit Auth., 873 F.3d 1364 (Fed. Cir. 2017);
Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350 (Fed. Cir. 2016);
Content Extraction & Transmission v. Wells Fargo Bank, N.A., 776 F.3d
1343 (Fed. Cir. 2014), and Intellectual Ventures I LLC v. Capital One Fin.
Corp., 850 F.3d 1332 (Fed. Cir. 2017).
The Examiner thus concludes “the claims merely recite collecting
codes, manipulating codes by verification, retrieving stored data
corresponding to the list of features, displaying the features[,] and collecting
requests for features.” Final Act. 9.

Independent Claim 21
We apply the Director’s 2019 Memorandum de novo. In Table One
below, we identify in italics the specific claim limitations that we conclude
recite an abstract idea. We also identify in bold the additional (non-abstract)
claim elements that we find are generic computer components:

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TABLE ONE
Independent Claim 21 2019 Memorandum
[a]A gaming device
comprising: 5

[b] a memory configured to
store a program code;

[c] a processor configured
to:

[d] execute the program code
from the memory to provide
an interactive videogame on a
display;
Executing program code is
insignificant extra-solution activity.
See 2019 Memorandum, 84 Fed.
Reg. at 55 n.31; see also MPEP §
2106.05(g).

[e] display a user interface
having a first query on the
display requesting one of a
plurality of master unlock
codes associated with the
interactive videogame,
wherein each of the plurality
of master unlock codes
corresponds to a specific
retailer of a plurality of
retailers each assigned a
unique master unlock code
Displaying a user interface having a
first query on the display requesting
one of a plurality of master unlock
codes associated with the interactive
videogame is insignificant extra-
solution activity (i.e., data
gathering). See 2019 Memorandum,
84 Fed. Reg. at 55 n.31; see also
MPEP § 2106.05(g).

5 A gaming device falls under the statutory subject matter class of a
machine. See 35 U.S.C. § 101 (“Whoever invents or discovers any new and
useful process, machine, manufacture, or composition of matter, or any new
and useful improvement thereof, may obtain a patent therefor, subject to the
conditions and requirements of this title.”).

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Independent Claim 21 2019 Memorandum
from the plurality of master
unlock codes;
[f] receive, using the user
interface, a first master
unlock code of the plurality
of master unlock codes in
response to the first query;

Receiving a first master unlock code
of the plurality of master unlock
codes in response to the first query is
insignificant extra-solution activity
(i.e., data gathering). See 2019
Memorandum, 84 Fed. Reg. at 55
n.31; see also MPEP § 2106.05(g).

[g] verify the first master
unlock code;
Abstract Idea: verifying the first
master unlock code can be
performed alternatively by a person
as a mental process. See 2019
Memorandum, 84 Fed. Reg. at 52.

[h] customize sound effects
of the user interface of the
interactive videogame for the
specific retailer in response to
verifying the first master
unlock code;

APPELLANT CONTENDS THE
CUSTOMIZATION OF THE SOUND
EFFECTS OF THE USER INTERFACE OF
THE INTERACTIVE VIDEOGAME FOR
THE SPECIFIC RETAILER IN RESPONSE
TO VERIFYING THE FIRST MASTER
UNLOCK CODE IS AN ADDITIONAL
LIMITATION THAT PROVIDES AN
IMPROVEMENT, AT STEP 2A, PRONG 2,
UNDER THE 2019 MEMORANDUM.
SEE OUR DISCUSSION BELOW.
[i] provide access to a list of a
plurality of features
corresponding to the specific
retailer in response to
verifying the first master
unlock code, wherein each of
the plurality of features
having a corresponding
feature unlock code of a
Providing access to a list of a
plurality of features corresponding to
the specific retailer in response to
verifying the first master unlock
code is insignificant extra-solution
activity (i.e., data presentation). See
2019 Memorandum, 84 Fed. Reg. at
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Independent Claim 21 2019 Memorandum
plurality of feature unlock
codes;
55 n.31; see also MPEP §
2106.05(g).

[j] receive, using the user
interface, a request for a first
feature of the plurality of
features corresponding to the
specific retailer;
Receiving a request for a first feature
of the plurality of features
corresponding to the specific retailer
is insignificant extra-solution activity
(i.e., data gathering). See 2019
Memorandum, 84 Fed. Reg. at 55
n.31; see also MPEP § 2106.05(g).

[k] display the user interface
having a second query on the
display requesting the feature
unlock code of the plurality
of feature unlock codes
corresponding to the first
feature;
Displaying the user interface having
a second query on the display
requesting the feature unlock code of
the plurality of feature unlock codes
corresponding to the first feature is
insignificant extra-solution activity
(i.e., data gathering). See 2019
Memorandum, 84 Fed. Reg. at 55
n.31; see also MPEP § 2106.05(g).

[l] receive the feature unlock
code in response to the
second query;
Receiving the feature unlock code is
insignificant extra-solution activity
(i.e., data gathering). See 2019
Memorandum, 84 Fed. Reg. at 55
n.31; see also MPEP § 2106.05(g).

[m] verify the feature unlock
code; and
Abstract Idea: Verifying the feature
unlock code can be performed
alternatively by a person as a mental
process. See 2019 Memorandum, 84
Fed. Reg. at 52.

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Independent Claim 21 2019 Memorandum
[n] grant access to the first
feature in response to
verifying the feature unlock
code;
Abstract Idea: Granting access to the
first feature in response to verifying
the feature unlock code can be
performed alternatively by a person
as a mental process. See 2019
Memorandum, 84 Fed. Reg. at 52.

[o] wherein the plurality of
master unlock codes are each
associated with mutually
exclusive feature unlock
codes.
Abstract Idea: Associating the
mutually exclusive feature unlock
codes with the plurality of master
unlock codes can be performed
alternatively by a person as a mental
process. See 2019 Memorandum, 84
Fed. Reg. at 52.

Abstract Idea
As identified above in Table One, we conclude the following claim 21
functions recite an abstract idea: [g] “verify the first master unlock code;”
[m] “verify the feature unlock code;” [n] “grant access to the first feature in
response to verifying the feature unlock code;” and [o] “wherein the
plurality of master unlock codes are each associated with mutually exclusive
feature unlock codes.” (Emphases added). In particular, we conclude
functions g, m, n, and o could be performed alternatively as mental
processes.6 See 2019 Memorandum, 84 Fed. Reg. at 52.

6 If a method can be performed by human thought alone, or by a human
using pen and paper, it is merely an abstract idea and is not patent eligible
under § 101. See CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d
1366, 1372–73 (Fed. Cir. 2011); “That purely mental processes can be
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Because claim 21 considered as a whole recites an abstract idea, as
identified in Table One, supra, and because remaining independent claim 28
recites similar language of commensurate scope, we conclude all claims
21–25, 27–32 and 34–36 recite an abstract idea, as identified above, under
Step 2A, Prong One. Therefore, we proceed to Step 2A, Prong Two.

2019 Memorandum, Step 2A, Prong Two
Integration of the Judicial Exception into a Practical Application

Pursuant to the 2019 Memorandum, we consider whether there are
additional elements set forth in the claims that integrate the judicial
exception into a practical application. See 2019 Memorandum, 84 Fed. Reg.
at 54–55.
Appellant contends:
Turning to prong (2) of Step 2A, Appellant respectfully
submits that even if, arguendo, independent claim 21 recites
any of the three specific judicial exceptions, any such recited
judicial exception is integrated into a practical application.
This is because independent claim 21 provides a gaming device
that uses master unlock code to customize sound effects of the
user interface of the interactive videogame for the specific

unpatentable, even when performed by a computer, was precisely the
holding of the Supreme Court in Gottschalk v. Benson.” CyberSource, 654
F.3d at 1375. See also Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d
1138, 1146–47 (Fed. Cir. 2016). Moreover, “[u]sing a computer to
accelerate an ineligible mental process does not make that process patent-
eligible.” Bancorp Servs., L.L.C. v. Sun Life Assurance Co. of Can. (U.S.),
687 F.3d 1266, 1279 (Fed. Cir. 2012); see also OIP Techs., Inc. v.
Amazon.com, Inc., 788 F.3d 1359, 1363 (Fed. Cir. 2015) (“[R]elying on a
computer to perform routine tasks more quickly or more accurately is
insufficient to render a claim patent eligible.”).

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retailer in response to verifying that the master unlock code
belongs to the specific retailer. Thus, for these additional
reasons, independent claim 21 is directed to patent-eligible
subject matter, under Step 2A, prong (2).
Appeal Br. 11 (emphases added).
In support, Appellant cites to Core Wireless Licensing S.A.R.L. v. LG
Elecs., Inc., (880 F.3d 1356, 1363 (Fed. Cir. 2018)). Appellant notes the
“claims in Core Wireless Licensing were directed to an improved user
interface for computing devices, not to the abstract idea of an index, as
argued by LG on appeal.” Appeal Br. 13 (emphasis added). Appellant
further notes the Core Wireless court stated that “although the generic idea
of summarizing information certainly existed prior to the invention, these
claims are directed to a particular manner of summarizing and presenting
information in electronic devices.” Id.
We note the Federal Circuit in Core Wireless determined:
The asserted claims in this case are directed to an
improved user interface for computing devices, not to the
abstract idea of an index, as argued by LG on appeal.
Although the generic idea of summarizing information
certainly existed prior to the invention, these claims are
directed to a particular manner of summarizing and
presenting information in electronic devices.
Core Wireless Licensing, 880 F.3d at 1362 (emphasis added).
See also the Federal Circuit’s own summary of the claimed “user
interface” that was considered to be an improvement in Core Wireless:
And in Core Wireless Licensing S.A.R.L. v. LG Electronics,
Inc., we held patent eligible claims directed to an improved
user interface that enabled users to more quickly access stored
data and programs in small-screen electronics. 880 F.3d 1356,
1359–63 (Fed. Cir. 2018). We determined that the claimed
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invention in Core Wireless “improve[d] the efficiency of using
the electronic device by bringing together a limited list of
common functions and commonly accessed stored data, which
can be accessed directly from the main menu.” Id. at 1363. We
therefore held that “the claims [we]re directed to an
improvement in the functioning of computers, particularly those
with small screens.” Id.

Uniloc USA, Inc. v. LG Electronics USA, Inc., 2020 WL 2071951, slip op. at
*3 (Fed. Cir. 2020) (emphasis added).
Here, Appellant urges that the customization of the sound effects of
the user interface of the interactive videogame for the specific retailer (in
response to verifying the first master unlock code) is an improvement under
the 2019 Memorandum, at Step 2A, Prong Two. See Appeal Br. 11.
Appellant specifically argues: “Here, as in Core Wireless Licensing,
independent claim 21 provides an improved user interface, which is
customized using master unlock codes to provide sound effects associated
with each specific retailer.” Appeal Br. 14 (emphasis added).
Appellant restates essentially the same argument in the Reply Brief,
urging that the claims “do not claim a generic user interface,” but rather “an
improvement to that user interface based on customizing an element of the
user interface for each specific retailer, i.e. by customizing sound effects of
the user interface for each specific retailer.” Reply Br. 2–3 (emphasis
added).
As set forth in MPEP § 2106.05(a):
To show that the involvement of a computer assists in
improving the technology, the claims must recite the details
regarding how a computer aids the method, the extent to which
the computer aids the method, or the significance of a computer
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to the performance of the method . . . . Merely adding generic
computer components to perform the method is not sufficient.
Thus, the claim must include more than mere instructions to
perform the method on a generic component or machinery to
qualify as an improvement to an existing technology.
(Emphasis added).
Here, Appellant does not show how the claimed customized sound
effects provide any improvement to the user’s interactive control of the user
interface, as was the case in Core Wireless with the improved user interface
that “enabled users to more quickly access stored data and programs in
small-screen electronics” so as to improve the efficiency of the electronic
device. Uniloc USA, 2020 WL 2071951, slip op. at *3 (citing Core
Wireless, 880 F.3d at 1359-63).
At best, Appellant’s claimed customized sound effects identify a
special version of the video game sold by a particular retailer. But such
customized sound effects are intended for human perception, and are non-
functional descriptive material (NFDM), without more in the claim, such as
claim language that would actually use the customized sound effects in some
specific interaction with the user to improve the user interface in a functional
way. 7
Accordingly, on this record, we conclude independent “gaming
device” claim 21, and independent method claim 28, which recites similar

7 “[W]here the claim as a whole is directed to conveying a message or
meaning to a human reader independent of the intended computer system,
and/or the computer-readable medium merely serves as a support for
information or data, no functional relationship exists.” MPEP § 2111.05
(III.). See also Ex parte Nehls, 88 USPQ2d 1883, 1889 (BPAI 2008)
(precedential).

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limitations of commensurate scope, do not recite an improvement to the
functionality of a computer or other technology or technical field. See
MPEP § 2106.05(a).

MPEP §§ 2106.05(c), 2106.05(e)
Appellant advances no arguments that any of the method claims on
appeal are tied to a particular machine, or transform an article to a different
state or thing. See MPEP § 2106.05(c).

MPEP § 2106.05(e) Meaningful Claim Limitations
Appellant argues that claim 21 recites certain “meaningful” claim
limitations, such as those of the types addressed under MPEP § 2106.05(e),
that impose meaningful limits on the judicial exception.8
However, instead of presenting substantive arguments explaining how
the judicial exceptions are applied or used in some meaningful way,
Appellant merely recites the claim language in support. See Appeal Br. 11–
12. We note we have fully addressed Appellant’s “improvement” argument
supra regarding the claim 21 function “h” limitation: “customize sound
effects of the user interface of the interactive videogame for the specific
retailer in response to verifying the first master unlock code;” (emphasis
added).

8 See 2019 Memorandum, 84 Fed. Reg. at 55, citing MPEP § 2106.05(e):
“[A]pply[ing] or us[ing] 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.” (Emphasis added).
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MPEP § 2106.05(f)
Merely including instructions to implement
an abstract idea on a computer, or
Merely using a computer as a tool
to perform an abstract idea
We conclude Appellant’s claimed invention merely implements the
abstract idea using instructions executed on generic computer components,
as depicted in bold type in Table One (above), and as supported in
Appellant’s Specification: e.g., “Game console 120 may comprise any
device capable of functioning as a gaming device, such as a personal
computer, a mobile phone, a game console, a portable gaming system, or
another device.” Spec. 6, ll. 11–13. (Emphasis added). Therefore, we
conclude Appellant’s claims merely use a generic programmed computer as
a tool to perform an abstract idea.

MPEP § 2106.05(g)
Adding insignificant extra-solution activity
to the judicial exception

As mapped in the right column of Table One, supra, we conclude that
independent claim 21 recites extra or post-solution activities that courts have
determined to be insufficient to transform judicially excepted subject matter
into a patent-eligible application. See MPEP § 2106.05(g); 2019
Memorandum, 84 Fed. Reg. at 55 n.31.
For example, see Claim 21, Table One, supra, “receive” function f:
“receive, using the user interface, a first master unlock code of the plurality
of master unlock codes in response to the first query;” (emphasis added).
See buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355 (Fed. Cir. 2014)
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(“That a computer receives and sends the information over a network—with
no further specification—is not even arguably inventive.”). That is, these
limitations use a generic computer component that performs a generic
computer function as a tool to perform an abstract idea. Thus, these
limitations do not integrate the abstract idea into a practical application. See
Alice Corp. Pty. Ltd. v. CLS Bank Intern, 573 U.S. 208, 223–24 (2014).
Instead, these limitations perform insignificant extra-solution activities. Cf.
Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1242 (Fed. Cir. 2016)
(agreeing with the Board that printing and downloading generated menus are
insignificant post-solution activities). See also Two-Way Media Ltd. v.
Comcast Cable Communications, LLC, 874 F.3d 1329, 1341 (Fed. Cir.
2017) (Streaming audio/visual data over a communications system like the
Internet held patent ineligible.).

MPEP § 2106.05(h)
Generally linking the use of the judicial exception to a particular
technological environment or field of use

The Supreme Court guides: “the prohibition against patenting abstract
ideas ‘cannot be circumvented by attempting to limit the use of the formula
to a particular technological environment’ or [by] adding ‘insignificant
postsolution activity.’” Bilski v. Kappos, 561 U.S. 593, 610-12 (2010)
(quoting Diamond v. Diehr, 450 U.S. 175, 191–92 (1981)).
We note Appellant advances no arguments regarding a lack of
preemption in the Appeal Brief.
Nor do claims 21–25, 27–32, and 34–36 on appeal present any other
issues as set forth in the 2019 Memorandum regarding a determination of
whether the additional generic computer elements integrate the judicial
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exception into a practical application. See 2019 Memorandum, 84 Fed. Reg.
at 55.
Thus, under Step 2A, Prong Two (MPEP §§ 2106.05(a)–(c) and (e)–
(h)), we conclude claims 21–25, 27–32, and 34–36 do not integrate the
judicial exception into a practical application. Therefore, we proceed to Step
2B, The Inventive Concept.
The Inventive Concept – Step 2B
Under the 2019 Memorandum, 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 adds a specific limitation
beyond the judicial exception that is not “well-understood, routine,
conventional” in the field (see MPEP § 2106.05(d)); or, simply appends
well-understood, routine, conventional activities previously known to the
industry, specified at a high level of generality, to the judicial exception.

Berkheimer v. HP Inc., 881 F.3d 1360 (Fed. Cir. 2018)
Berkheimer was decided by the Federal Circuit on February 8, 2018.
On April 19, 2018, the PTO issued the Memorandum titled: “Changes in
Examination Procedure Pertaining to Subject Matter Eligibility, Recent
Subject Matter Eligibility Decision (Berkheimer v. HP, Inc.)” (hereinafter
“Berkheimer Memorandum”).9 The Berkheimer Memorandum provided
specific requirements for an Examiner to support with evidence any finding

9 Available at https://www.uspto.gov/sites/default/files/documents/memo-
berkheimer-20180419.PDF.
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that claim elements (or a combination of elements) are well-understood,
routine, or conventional.
The Examiner, under Step 2B, finds several additional elements
recited in the claims were well understood, routine, and conventional at the
time of Appellant’s invention. See Final Act. 11, 17.
However, Appellant advances no arguments regarding Berkheimer in
the Appeal Brief, which was filed on April 23, 2019, over fourteen months
after Berkheimer was decided by the Federal Circuit. Nor does the
Appellant advance any Berkheimer arguments in the Reply Brief.
The Examiner additionally finds: “The claim does not contain an
inventive concept as no technological improvement of the gaming device is
present in the claim nor is there any ordered combination of elements in the
claim.” Final Act. 7 (emphasis added).
Because Appellant has not argued nor claimed an ordered
combination of the recited conventional computer components, we likewise
see no inventive concept in in any purported ordered combination of these
limitations.10 Cf. BASCOM Glob. Internet Servs., Inc. v. AT&T Mobility
LLC, 827 F.3d 1341, 1350 (Fed. Cir. 2016) (“[A]n inventive concept can be
found in the non-conventional and non-generic arrangement of known,
conventional pieces.”).
Therefore, on the record before us, Appellant has not shown that the
claims on appeal add a specific limitation beyond the judicial exception that
is not well-understood, routine, and conventional, when the claim

10 Arguments not made are waived. See 37 C.F.R. § 41.37(c)(1)(iv).

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limitations are considered both individually and as an ordered combination.
See MPEP § 2106.05(d).
In light of the foregoing, and under the 2019 Memorandum, we
conclude that each of Appellant’s claims 21–25, 27–32, and 34–36,
considered as a whole, is directed to a patent-ineligible abstract idea that is
not integrated into a practical application, and does not include an inventive
concept. Therefore, we sustain the Examiner’s Rejection A under 35 U.S.C.
§ 101 of claims 21–25, 27–32, and 34–36. 11

Rejection B of Claims 21–25, 27–32, and 34 under 35 U.S.C. § 103(a)
Issues: Under pre-AIA 35 U.S.C. § 103(a), we focus our analysis on
the following argued limitation that we find to be dispositive regarding
Rejection B of claims 21–25, 27–32, and 34:
Did the Examiner err by finding that Alabraba and Magnussen
collectively teach or suggest the disputed, dispositive limitation “customize
sound effects of the user interface of the interactive videogame for the
specific retailer in response to verifying the first master unlock code,”
within the meaning of independent claim 21?12 (Emphasis added).

11 For the reasons discussed above, grouped claims 22–25, 27–32, and 34–
36 (not argued separately) fall with representative independent claim 21
under 35 U.S.C. § 101. See 37 C.F.R. § 41.37(c)(1)(iv).

12 We give the contested claim limitations the broadest reasonable
interpretation (“BRI”) consistent with the Specification. See In re Morris,
127 F.3d 1048, 1054 (Fed. Cir. 1997).
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Appellant traverses the Examiner’s reliance on Magnussen’s
descriptions at paragraphs 50, 54, and 70 in the Final Office Action (21) as
found to teach or suggest: “customiz[ing] sound effects of the user interface
. . . for the specific retailer.” In particular, Appellant contends Magnussen
“merely discloses and teaches that sound effects may be used with the
advertisement” in these paragraphs and thus fails to describe the disputed
limitation. Appeal Br. Br. 16–18; see also Reply Br. 3.
The Examiner disagrees, and further explains that the broadest
reasonable interpretation of “customize sound effects,” within the meaning of
claim 21, includes customizing “sound effect data . . . stored . . . on a
medium” with the “customization . . . taken place prior to recording of the
sound effect data.” Ans. 9–10.
Turning to the evidence, Magnussen describes “advertising formats
may be embedded into a media presentation and ‘baked’ in together with an
accompanying voice over . . . or other sound effects” (¶ 50). Paragraph 54
of Magnussen describes a BMW™ media presentation comprising a “black
and white video playing in background of a hand changing gears, and [an]
audio overlay of a car engine.” Magnussen ¶ 54.
But we find no express teaching of “customiz[ing] sound effects of
the user interface . . . for the specific retailer,” as recited in claim 21.
Although Magnussen teaches a customized BMW® automobile
advertisement (¶ 54), we find some degree of speculation is required to
determine whether the described “audio overlay of a car engine” (id.) is
actually a “customized sound effect,” e.g., an identifiable sound overlay of
an actual BMW® car engine. We decline to engage in speculation.
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Nor has the Examiner established that Alabraba provides the
teachings we find are missing in Magnussen. The Examiner has not pointed
to any descriptions in Alabraba or Magnussen that teach or suggest that the
sound effects customization is performed “in response to verifying the first
master unlock code,” as additionally argued by Appellant. See Appeal Br.
16 (see also Final Act. 18–21).
We emphasize that the contested dispositive limitation of claim 21
requires: perform A in response to B — i.e., “[A] customize sound effects of
the user interface of the interactive videogame for the specific retailer” in
response to [B] verifying the first master unlock code.” Claim 21 (emphasis
added).
We note the Examiner has cleanly split the “in response to” chain of
causation between Magnussen (A) and Alabraba (B). Since neither
reference teaches or suggests the complete chain of causation (i.e., perform
A in response to B), we are of the view that an artisan would not have
reasonably combined Alabraba and Magnussen in the manner proffered by
the Examiner without impermissibly relying upon Appellant’s claims as a
guide.
We find the Examiner’s proffered motivation misses the mark,
because the primary Alabraba reference is silent regarding any mention of
video or associated viewing experiences that need to be enhanced:
It would have been obvious to one of ordinary skill in the art at
the time of the invention to combine the method for tracking
referrals and product sell-through of Alabraba with the video-
on-demand embedded advertising method of Magnussen for
the purpose of enhancing the overall viewing experience
(0050).
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Final Act. 21 (emphasis added).13
Alabraba is directed to a method “for using referral data to track
software product sell-through and compensate software product
distributors.” Abstract. Alabraba briefly describes “a payment website may
be customized with the corresponding product distributor logo and
advertisements.” Alabraba, col. 8, ll. 38–40. However, we find no mention
in Alabraba of video or video-on-demand (VOD).
Alabraba teaches the use of product keys included with a CD that are
described as providing “unique codes that unlock varied degrees of
functionality for the software product” (column 3, ll. 35–36). There is no
need in Alabraba to enhance “the overall viewing experience” with a “voice
over” and “sound effects,” as described in the last three lines of paragraph
50 of Magnussen.
The only reference that would benefit from an “enhanced video
experience” is Magnussen. Id. Thus, it is our view that an artisan having
knowledge of Alabraba and Magnussen (but no prior knowledge of
Appellant’s claims and Specification) would have had no need to modify
Alabraba with the teachings of Magnussen.
Accordingly, based upon our review of the record, we find a
preponderance of the evidence supports Appellant’s contention that the cited
combination of Alabraba and Magnussen fails to teach or suggest the
disputed, dispositive limitation: “customize sound effects of the user

13 See Magnussen ¶ 50: “The TIF Video sequence is imported into the
media presentation in which the advertisement is to be embedded, and
‘baked’ in together with an accompanying voice over, if any, and or other
sound effects, if any, to further enhance the overall viewing experience.”
(emphasis added).
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interface of the interactive videogame for the specific retailer in response to
verifying the first master unlock code.” Claim 21 (emphases added).
Therefore, we are constrained on this record to reverse the Examiner’s
obviousness Rejection B of independent claim 21 over the cited combination
of Alabraba and Magnussen. Because remaining independent claim 28
recites the disputed limitation using similar language of commensurate
scope, we also reverse the Examiner’s Rejection B of independent claim 28.
Because we have reversed Rejection B of each independent claim 21
and 28 on appeal, we also reverse the Examiner’s obviousness Rejection B
of each associated dependent claim.
Accordingly, we reverse the Examiner’s obviousness Rejection B of
claims 21–25, 27–32, and 34.

Rejection C of Dependent Claims 35 and 36 under § 103(a)
In light of our reversal of Rejection B of independent claims 21 and
28, supra, we also reverse obviousness Rejection C of claims 35 and 36,
which depend directly from claims 21 and 28, respectively. On this record,
the Examiner has not shown how the additionally cited secondary Begeja
reference overcomes the aforementioned deficiencies discussed above
regarding Rejection B of independent claims 21 and 28.

CONCLUSIONS
The Examiner did not err in rejecting claims 21–25, 27–32 and 34–36
under 35 U.S.C. § 101, as being directed to a judicial exception, without
significantly more.
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The Examiner erred in rejecting claims 21–25, 27–32, and 34–36, as
being obvious under 35 U.S.C. § 103(a), over the cited combinations of
references.
DECISION SUMMARY
Rej Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
A 21–25,
27–32,
34–36
101 Eligibility 21–25,
27–32,
34–36

B 21–25,
27–32,
34
103(a) Alabraba,
Magnussen
21–25,
27–32,
34
C 35, 36 103(a) Alabraba,
Magnussen, Begeja
35, 36
Overall
Outcome
21–25,
27–32,
34–36

FINALITY AND RESPONSE
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). See
37 C.F.R. § 41.50(f).
AFFIRMED