Ex Parte HYMAN et al

Patent Trials and Appeals Board

May 9, 2019

12104466 - (D) (P.T.A.B. May. 9, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/104,466 04/17/2008
77970 7590
Polsinelli -- Apple Inc.
c/o Polsinelli PC
1661 Page Mill Road
Suite A
Palo Alto, CA 94304
05/13/2019
FIRST NAMED INVENTOR
DAVID HYMAN
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
522110 - P25205US1 3925
EXAMINER
SHAIKH, MOHAMMAD Z
ART UNIT PAPER NUMBER
3694
NOTIFICATION DATE DELIVERY MODE
05/13/2019 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):
Apple@Polsinelli.com
patentdocketing@polsinelli.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DAVID HYMAN and ANDREI M. MARINESCU
Appeal2018-000452
Application 12/104,466 1
Technology Center 3600
Before JOHNNY A. KUMAR, JOHN A. EVANS, and LARRY J. HUME,
Administrative Patent Judges.
HUME, Administrative Patent Judge.
DECISION ON APPEAL
This is a Decision on Appeal under 35 U.S.C. § 134(a) from the Final
Rejection of claims 21-29, 31-3 6, and 3 8--41, which are all claims pending
in the Application. Appellants have canceled claims 1-20, 30, and 37. We
have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM.
1 According to Appellants, the real party in interest is Beats Music, LLC. App.
Br. 3.
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Application 12/104,466
STATEMENT OF THE CASE2
The Invention
Appellants' disclosed embodiments and claimed invention "relate[]
generally to the technical field of communications and, in one example
embodiment, to a method, apparatus, and system of advertising in a
streaming media environment." Spec. ,r 1.
Exemplary Claim
Claim 21, reproduced below, is representative of the subject matter on
appeal:
21. A method of altering an advertisement based on a media
content comprising:
receiving, at a central server, a request from a client
device for access to media content, the media content and at
least one characteristic of the media content being stored at a
content database;
determining, by waveform analysis of the media content,
a waveform characteristic, where the waveform characteristic is
at least one of a tempo, a harmony, a rhythm, and a melody of
the media content;
streaming, the media content from the central server to
the client device by a network;
selecting, at least one of a good or a service that matches
the at least one characteristic of the media content;
generating, an advertisement marketing the selected at
least one good or service in accordance with the match between
2 Our Decision relies upon Appellants' Appeal Brief ("App. Br.," filed
Apr. 27, 2017); Reply Brief ("Reply Br.," filed Oct. 16, 2017); Examiner's
Answer ("Ans.," mailed Aug. 16, 2017); Final Office Action ("Final Act.,"
mailed Sept. 28, 2016); Advisory Acton ("Adv. Act.," mailed
Dec. 21, 2016); and the original Specification ("Spec.," filed Apr. 17, 2008).
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the at least one good or service and the at least one
characteristic of the media content;
altering, a visual motion and a color scheme of the
advertisement based on the at least one waveform characteristic
of the media content;
determining a placement of the advertisement at a
specific location of the media content; and
additionally streaming, to the client device, the altered
advertisement at the specific location of the media content
being streamed.
Rejection on Appeal3
Claims 21-29, 31-36, and 38--41 stand rejected under 35 U.S.C. § 101
as being directed to patent-ineligible subject matter. Final Act. 15.
CLAIM GROUPING
Based on Appellants' arguments (App. Br. 9-19) and our discretion
under 37 C.F.R. § 4I.37(c)(l)(iv), we decide the Appeal of the patent-
ineligible subject matter of claims 21-29, 31-36, and 38--41 on the basis of
representative claim 21. 4
3 In response to an amendment after final rejection, the Examiner withdrew
the indefiniteness rejection of claim 31 under 35 U.S.C. § 112(b ). See Adv.
Act. Responsive to Appellants' further arguments, the Examiner withdrew
the obviousness rejections of claims 21-29, 31-36, and 38--41 under 35
U.S.C. § 103(a). Ans. 3.
4 "Notwithstanding any other provision of this paragraph, the failure of
appellant to separately argue claims which appellant has grouped together
shall constitute a waiver of any argument that the Board must consider the
patentability of any grouped claim separately." 37 C.F.R. § 4I.37(c)(l)(iv).
In addition, when Appellants do not separately argue the patentability of
dependent claims, the claims stand or fall with the claims from which they
depend. In re King, 801 F.2d 1324, 1325 (Fed. Cir. 1986).
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ISSUE
Appellants argue (App. Br. 12-19; Reply Br. 1-7) the Examiner's
rejection of claim 21 under 35 U.S.C. § 101 as being directed to patent-
ineligible subject matter is in error. These contentions present us with the
following issue:
Under the US PTO' s Revised Guidance, informed by our governing
case law concerning 35 U.S.C. § 101, is claim 21 patent-ineligible under
§ 101?
PRINCIPLES OF LAW
A. 35 U.S.C. § 101
"Whether a claim is drawn to patent-eligible subject matter is an issue
of law that we review de novo." SiRF Tech., Inc. v. Int'! Trade Comm 'n,
601 F.3d 1319, 1331 (Fed. Cir. 2010).
An invention is patent-eligible if it claims a "new and useful process,
machine, manufacture, or composition of matter." 35 U.S.C. § 101.5
However, the Supreme Court has long interpreted 35 U.S.C. § 101 to include
implicit exceptions: "' [l]aws of nature, natural phenomena, and abstract
ideas"' are not patentable. Mayo Collaborative Servs. v. Prometheus Labs.,
Inc., 566 U.S. 66, 70 (2012) (brackets in original) (citing Diamond v. Diehr,
450 U.S. 175, 185 (1981)).
5 This threshold analysis of whether a claim is directed to one of the four
statutory categories of invention, i.e., a process, machine, manufacture, or
composition of matter, is referred to as "Step l" in the patent-eligibility
inquiry under § 101.
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In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court's two-step framework, described in Mayo
and Alice. Alice Corp. v. CLS Banklnt'l, 573 U.S. 208, 217-18 (2014)
(citing Mayo, 566 U.S. at 75-77). In accordance with that framework, we
first determine what concept the claim is "directed to." See Alice, 573 U.S.
at 219 ("On their face, the claims before us are drawn to the concept of
intermediated settlement, i.e., the use of a third party to mitigate settlement
risk."); see also Bilski v. Kappas, 561 U.S. 593, 611 (2010) ("Claims 1 and 4
in petitioners' application explain the basic concept of hedging, or protecting
against risk .... ").
Concepts determined to be abstract ideas, and thus patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219-20; Bilski, 561 U.S. at 611 );
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594--95 (1978)); and
mental processes (Gottschalkv. Benson, 409 U.S. 63, 69 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as "molding rubber products" (Diehr, 450 U.S. at 191 ); "tanning,
dyeing, making water-proof cloth, vulcanizing India rubber, smelting ores"
(id. at 183 n.7 (quoting Corning v. Burden, 56 U.S. 252, 267---68 (1853)));
and manufacturing flour (Benson, 409 U.S. at 69 ( citing Cochrane v.
Deener, 94 U.S. 780, 785 (1876))).
In Diehr, the claim at issue recited a mathematical formula, but the
Supreme Court held "[a] claim drawn to subject matter otherwise statutory
does not become nonstatutory simply because it uses a mathematical
formula." Diehr, 450 U.S. at 187; see also id. at 191 ("We view
respondents' claims as nothing more than a process for molding rubber
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products and not as an attempt to patent a mathematical formula."). Having
said that, the Supreme Court also indicated that a claim "seeking patent
protection for that formula in the abstract ... is not accorded the protection
of our patent laws, ... and this principle cannot be circumvented by
attempting to limit the use of the formula to a particular technological
environment." Id. (citation omitted) (citing Benson and Flook); see, e.g., id.
at 187 ("It is now commonplace that an application of a law of nature or
mathematical formula to a known structure or process may well be deserving
of patent protection.").
Abstract ideas may include, but are not limited to, fundamental
economic practices, methods of organizing human activities, and
mathematical formulas or relationships. Alice, 573 U.S. at 217-21. Under
this guidance, we must, therefore, ensure at step one that we articulate what
the claims are directed to with enough specificity to ensure the step one
inquiry is meaningful. Id. at 217 ("[W]e tread carefully in construing this
exclusionary principle lest it swallow all of patent law.").
If the claim is "directed to" an abstract idea, we tum to the second
step of the Alice and Mayo framework, where "we must examine the
elements of the claim to determine whether it contains an "'inventive
concept'" sufficient to 'transform' the claimed abstract idea into a patent-
eligible application." Alice, 573 U.S. at 221 ( citation omitted). "A claim
that recites an abstract idea must include 'additional features' to ensure 'that
the [claim] is more than a drafting effort designed to monopolize the
[abstract idea]."' Id. (alterations in original) (quoting Mayo, 566 U.S. at 77).
"[M]erely requir[ing] generic computer implementation[] fail[ s] to transform
that abstract idea into a patent-eligible invention." Id.
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B. USPTO Revised Guidance
The PTO recently published revised guidance in the Federal Register
concerning the application of§ 101. 2019 Revised Patent Subject Matter
Eligibility Guidance, 84 Fed. Reg. 50 (January 7, 2019) (hereinafter
"Revised Guidance") (https://www.govinfo.gov/content/pkg/FR-2019-01-
07/pdf/2018-28282.pdf).
Under the Revised Guidance, we first look to whether the claim
recites:
(1) any judicial exceptions, including certain groupings
of abstract ideas (i.e., mathematical concepts, certain methods
of organizing human activity such as a fundamental economic
practice, or mental processes); 6 and
(2) additional elements that integrate the judicial
exception into a practical application (see Manual for Patent
Examining Procedure ("MPEP") §§ 2106.0S(a}-(c), (e}-(h)). 7
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 are not "well-understood, routine, conventional"
in the field (see MPEP § 2106.0S(d)); or
6 Referred to as "Revised Step 2A, Prong l" in the Revised Guidance
(hereinafter "Step 2A(i)").
7 Referred to as "Revised Step 2A, Prong 2" in the Revised Guidance
(hereinafter "Step 2A(ii)").
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(4) simply appends well-understood, routine,
conventional activities previously known to the industry,
specified at a high level of generality, to the judicial exception. 8
See Revised Guidance.
Step 2A(i) ~ Abstract Idea
Informed by our judicial precedent, the Revised Guidance extracts and
synthesizes key concepts identified by the courts as abstract ideas to explain
that the abstract idea exception includes the following groupings of subject
matter, when recited as such in a claim limitation:
(a) Mathematical concepts-mathematical relationships,
mathematical formulas or equations, mathematical calculations;
(b) 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); and
( c) Mental processes----concepts performed in the human
mind (including an observation, evaluation, judgment, opinion).
Id. at 52.
Under the Revised Guidance, if the claim does not recite a judicial
exception (a law of nature, natural phenomenon, or subject matter within the
enumerated groupings of abstract ideas above), then the claim is patent-
8 Items (3) and (4) continue to be collectively referred to as "Step 2B" of the
Supreme Court's two-step framework, described in Mayo and Alice.
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eligible at Step 2A(i). This determination concludes the eligibility analysis,
except in situations identified in the Revised Guidance. 9
However, if the claim recites a judicial exception (i.e., an abstract idea
enumerated above, a law of nature, or a natural phenomenon), the claim
requires further analysis for a practical application of the judicial exception
in Step 2A(ii).
Step 2A(ii) ~ Practical Application
If a claim recites a judicial exception in Step 2A (i), we determine
whether the recited judicial exception is integrated into a practical
application of that exception in Step 2A(ii) by: (a) identifying whether there
are any additional elements recited in the claim beyond the judicial
exception( s ); and (b) evaluating those additional elements individually and
in combination to determine whether they integrate the exception into a
practical application.
The seven identified "practical application" sections of the MPEP, 10
cited in the Revised Guidance under Step 2A(ii), are:
(1) MPEP § 2106.0S(a) Improvements to the Functioning of
a Computer or To Any Other Technology or Technical
Field
(2) MPEP § 2106.05(b) Particular Machine
9 In the rare circumstance in which an examiner believes a claim limitation
that does not fall within the enumerated groupings of abstract ideas should
nonetheless be treated as reciting an abstract idea, the procedure described in
of the Guidance for analyzing the claim should be followed. See Guidance,
Section III.C.
10 See MPEP § 2106.0S(a}-(c), (e}-(h). Citations to the MPEP herein refer
to revision [R-08.2017].
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(3) MPEP § 2106.05( c) Particular Transformation
(4) MPEP § 2106.05(e) Other Meaningful Limitations
(5) MPEP § 2106.05(±) Mere Instructions To Apply An
Exception
( 6) MPEP § 2106.05(g) Insignificant Extra-Solution Activity
(7) MPEP § 2106.05(h) Field of Use and Technological
Environment 11
If the recited judicial exception is integrated into a practical
application as determined under one or more of the MPEP sections cited
above, then the claim is not directed to the judicial exception, and the patent-
eligibility inquiry ends. If not, then analysis proceeds to Step 2B.
Step 2B ~ "Inventive Concept" or "Significantly More"
Under our precedent, it is possible that a claim that does not
"integrate" a recited judicial exception under Step 2A(ii) is nonetheless
patent eligible. For example, the claim may recite additional elements that
render the claim patent eligible even though a judicial exception is recited in
a separate claim element. 12 The Federal Circuit has held claims eligible at
the second step of the Alice/Mayo test (USPTO Step 2B) because the
additional elements recited in the claims provided "significantly more" than
the recited judicial exception ( e.g., because the additional elements were
unconventional in combination). 13 Therefore, if a claim has been
11 MPEP §§ 2106.05(a), (b), (c), and (e) are indicative of integration into a
practical application, while MPEP §§ 2106.05(±), (g), and (h) relate to
limitations that are not indicative of integration into a practical application.
12 See, e.g., Diehr, 450 U.S. at 187.
13 See, e.g., Amdocs (Israel), Ltd. v. Openet Telecom, Inc., 841 F.3d 1288,
1300, 1304 (Fed. Cir. 2016); Bascom Global Internet Servs., Inc. v. AT&T
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determined to be directed to a judicial exception under Revised Step 2A, we
must evaluate the additional elements individually and in combination under
Step 2B to determine whether they provide an inventive concept (i.e.,
whether the additional elements amount to significantly more than the
exception itself). 14
Under the Revised Guidance, we must consider in Step 2B whether an
additional element or combination of elements: (1) "Adds a specific
limitation or combination of limitations that are not well-understood,
routine, conventional activity in the field, which is indicative that an
inventive concept may be present;" or (2) "simply appends well-understood,
routine, conventional activities previously known to the industry, specified
at a high level of generality, to the judicial exception, which is indicative
that an inventive concept may not be present." See Revised Guidance,
III.B. 15
Mobility LLC, 827 F.3d 1341, 1349-52 (Fed. Cir. 2016); DDR Holdings,
LLC v. Hotels.com, L.P., 773 F.3d 1245, 1257-59 (Fed. Cir. 2014).
14 The patent eligibility inquiry may contain underlying issues of fact.
Mortg. Grader, Inc. v. First Choice Loan Servs. Inc., 811 F.3d 1314, 1325
(Fed. Cir. 2016). In particular, "[t]he question of whether a claim element or
combination of elements is well-understood, routine and conventional to a
skilled artisan in the relevant field is a question of fact." Berkheimer v. HP
Inc., 881 F.3d 1360, 1368 (Fed. Cir. 2018).
15 In accordance with existing Step 2B guidance, an Examiner's finding that
an additional element ( or combination of elements) is well understood,
routine, conventional activity must be supported with at least one of the four
specific types of evidence required by the USPTO Berkheimer
Memorandum, as shown above. For more information concerning evaluation
of well-understood, routine, conventional activity, see MPEP § 2106.05(d),
as modified by the USPTO Berkheimer Memorandum (USPTO
Commissioner for Patents Memorandum dated Apr. 19, 2018, "Changes in
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In the Step 2B analysis, an additional element ( or combination of
elements) is not well-understood, routine or conventional unless the
Examiner finds an evidentiary basis, and expressly supports a rejection in
writing with, one or more of the following:
1. A citation to an express statement in the
specification or to a statement made by an applicant during
prosecution that demonstrates the well-understood, routine,
conventional nature of the additional element( s ) ....
2. A citation to one or more of the court decisions
discussed in MPEP § 2106.0S(d)(II) as noting the well-
understood, routine, conventional nature of the additional
element( s ).
3. A citation to a publication that demonstrates the
well-understood, routine, conventional nature of the additional
element( s ) ....
4. A statement that the examiner is taking official
notice of the well-understood, routine, conventional nature of
the additional element( s) ....
See Berkheimer Memo 3.
The analysis in Step 2B further determines whether an additional
element or combination of elements:
(a) Adds a specific limitation or combination of
limitations that are not well-understood, routine, conventional
activity in the field, which is indicative that an inventive
concept may be present; or
(b) simply appends well-understood, routine,
conventional activities previously known to the industry,
specified at a high level of generality, to the judicial exception,
Examination Procedure Pertaining to Subject Matter Eligibility, Recent
Subject Matter Eligibility Decision (Berkheimer v. HP, Inc.)" (hereinafter
"Berkheimer Memo").
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which is indicative that an inventive concept may not be
present.
Revised Guidance 56; see also Berkheimer Memo.
If the Examiner or the Board determines under Step 2B that the
element ( or combination of elements) amounts to significantly more than the
exception itself, the claim is eligible, thereby concluding the eligibility
analysis.
However, if a determination is made that the element and combination
of elements does not amount to significantly more than the exception itself,
the claim is ineligible under Step 2B, and the claim should be rejected for
lack of subject matter eligibility.
ANALYSIS
Step 1
Claim 21, as a method claim, recites one of the enumerated categories
of eligible subject matter in 35 U.S.C. § 101. Therefore, the issue before us
is whether it is directed to a judicial exception without significantly more.
Step 2A(i): Does the Claim Recite a Judicial Exception?
The Examiner determined that claim 21 "is directed to the abstract
idea of delivering an advertisement from a server to a user based on their
selection of media content" (Ans. 4), i.e., "the focus of the inventive concept
is directed towards certain methods of organizing human activity, and a
mathematical relationships/formulas, which the courts have found to be
directed towards an abstract idea." Id. at 5.
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We conclude claim 21 does not recite the judicial exceptions of either
natural phenomena or laws of nature. We reevaluate, de nova, whether
claim 21 recites an abstract idea based upon the Revised Guidance.
Claim 21 recites, in pertinent part, " [a] method of altering an
advertisement based on a media content," that includes the steps of:
(1) "receiving ... a request from a client device for
access to media content, the media content and at least one
characteristic of the media content being stored at a content
database."
(2) "determining, by waveform analysis of the media
content, a waveform characteristic, where the waveform
characteristic is at least one of a tempo, a harmony, a rhythm,
and a melody of the media content."
(3) "streaming, the media content from the central server
to the client device by a network."
( 4) "selecting, at least one of a good or a service that
matches the at least one characteristic of the media content."
(5) "generating, an advertisement marketing the selected
at least one good or service in accordance with the match
between the at least one good or service and the at least one
characteristic of the media content."
( 6) "altering, a visual motion and a color scheme of the
advertisement based on the at least one waveform characteristic
of the media content."
(7) "determining a placement of the advertisement at a
specific location of the media content."
(8) "additionally streaming, to the client device, the
altered advertisement at the specific location of the media
content being streamed."
Claims App'x.
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The Specification provides context as to what the claimed invention is
directed to. In this case, the Specification discloses that the invention
generally relates "to the technical field of communications and, in one
example embodiment, to a method, apparatus, and system of advertising in a
streaming media environment." Spec. ,r 1. Appellants' Abstract more
particularly describes the invention as providing for "selecting a good and/or
a service being marketed in the advertisement based on an artist, an album, a
track, a genre, a type, and/ or a tempo of the media content and/ or based on
interests defined in a user profile associated with the user." Spec. ,r 7 5
("Abstract").
Appellants argue "[i]n Enfzsh and DDR, the claims were not drawn to
an Abstract idea because they provided a specific improvement to an
existing technology, and were limited to the computing technology those
inventions improved." App. Br. 15. "In McRO, the CAFC utilized
preemption to find that since the claims at issue did not preempt any possible
Abstract idea," and "the present claims fit both criteria." Id.
In Enfzsh, our reviewing court held claims directed to a self-referential
logical model for a computer database patent-eligible under step one of
Alice. Enfzsh, LLC v. Microsoft Corp., 822 F.3d 1327, 1330 (Fed. Cir.
2016). The disclosed technique enabled faster searching and more effective
storage of data than previous methods. Id. at 1333. The court found the
claims directed to "a specific improvement to the way computers operate,
embodied in the self-referential table" (id. at 1336), and explained that the
claims are "not simply directed to any form of storing tabular data, but
instead are specifically directed to a self-referential table for a computer
database" that functions differently than conventional databases. Id. at 1337.
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We find the claims in Enfish are not sufficiently similar to the claims
on Appeal because the present claims are not directed to a specific
improvement to the way computers operate.
Appellants' reliance on DDR (App. Br. 15) is misplaced as the recited
claims do not improve the computer. In DDR, the claims at issue involved,
inter alia, "web pages displays [with] at least one active link associated with
a commerce object associated with a buying opportunity of a selected one of
a plurality of merchants" (claim 1 of US 7,818,399). DDR, 773 F.3d at
1249. The Federal Circuit found the claims in DDR to be patent-eligible
under step two of the Alice test 16 because "the claimed solution is necessarily
rooted in computer technology in order to overcome a problem specifically
arising in the realm of computer networks." Id. at 1257. Specifically, the
Federal Circuit found the claims addressed the "challenge of retaining
control over the attention of the customer in the context of the Internet." Id.
at 1258. We find the rejected claims are dissimilar to DDR's web page with
an active link, and the Specification does not support the view that the
computer related claim elements are unconventional. See Spec. ,r,r 38, 48,
60-62.
Appellants rely upon McRO to allege the claims on Appeal do not
preempt any possible abstract idea. In McRO, the claims were not held to be
abstract because they recited a "specific ... improvement in computer
animation" using "unconventional rules that relate[ d] sub-sequences of
phonemes, timings, and morph weight sets." McRO, Inc. v. Bandai Namco
Games Am. Inc., 837 F.3d 1299, 1302---03, 1307---08, 1314--15 (Fed. Cir.
16 Referred to herein as "Step 2B," addressed infra.
16
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2016). In McRO, "the incorporation of the claimed rules, not the use of the
computer," improved an existing technological process. Id. at 1314. Again,
we find the claims on Appeal are not sufficiently similar to the patent-
eligible claims in McRO.
Regarding preemption, "[w]hile preemption may signal patent
ineligible subject matter, the absence of complete preemption does not
demonstrate patent eligibility .... \iVhere a patent's claims are deemed only
to disclose patent ineligible subject matter under the 1Vfayo framework, as
they are in this case, preernption concerns are fully addressed and made
moot." Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379
(Fed. Cir. 2015); see also OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d
1359, 1362-63 (Fed. Cir. 2015) ("[T]hat the claims do not preempt all price
optimization or may be limited to price optimization in the e-cornmerce
setting do not make then1 any less abstract.").
Similar to the Examiner's conclusions, we determine that claim 21, as
a whole, recites a certain method of organizing human activity in the form of
a commercial interaction, i.e., targeted advertising and marketing activities.
Under the broadest reasonable interpretation standard, 17 we conclude
17 During prosecution, claims must be given their broadest reasonable
interpretation when reading claim language in light of the specification as it
would be interpreted by one of ordinary skill in the art. In re Am. Acad. of
Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). Under this standard,
we interpret claim terms using "the broadest reasonable meaning of the
words in their ordinary usage as they would be understood by one of
ordinary skill in the art, taking into account whatever enlightenment by way
of definitions or otherwise that may be afforded by the written description
contained in the applicant's specification." In re Morris, 127 F.3d 1048,
1054 (Fed. Cir. 1997).
17
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limitations (2) through (7), as identified above, recite steps that would
ordinarily occur when targeting or tailoring advertising to a particular user
based upon the media content. See Final Act. 15; Ans. 4. For example, we
conclude limitations ( 4) "selecting, at least one of a good or a service that
matches the at least one characteristic of the media content;" (5) "generating,
an advertisement marketing the selected at least one good or service in
accordance with the match between the at least one good or service and the
at least one characteristic of the media content;" ( 6) "altering, a visual
motion and a color scheme of the advertisement based on the at least one
waveform characteristic of the media content;" and (7) "determining a
placement of the advertisement at a specific location of the media content"
are operations that generally occur when developing targeted advertising in a
streaming media content environment.
Aside from the "streaming" aspects of the claim, this type of activity,
i.e., determining a targeted or tailored advertisement based upon a type of
client device-selected media (i.e., type of product), as recited in limitations
(2) through (7), for example, includes longstanding conduct that existed well
before the advent of computers and the Internet, and could be carried out by
a human in their mine or with pen and paper. See CyberSource Corp. v.
Retail Decisions, Inc., 654 F.3d 1366, 1375 (Fed. Cir. 2011).
Moreover, in Intellectual Ventures I, similar in key respects to the
claims before us on appeal, tailoring content based on information about the
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user18 has been determined as being directed to an abstract idea and, thus,
patent-ineligible.
At step one of the Alice framework, it is often useful to
determine the breadth of the claims in order to determine
whether the claims extend to cover a "fundamental ... practice
long prevalent in our system .... " Alice, 134 S. Ct. at 2356. As
noted, the claim relates to customizing information based on (1)
information known about the user and (2) navigation data ....
[T]ailoring is "a fundamental ... practice long prevalent in our
system .... " Id. There is no dispute that newspaper inserts had
often been tailored based on information known about the
customer-for example, a newspaper might advertise based on
the customer's location. Providing this minimal tailoring----e.g.,
providing different newspaper inserts based upon the location
of the individual-is an abstract idea.
Intellectual Ventures I LLC v. Capital One Bank (USA), 792 F.3d 1363,
1369 (Fed. Cir. 2015). 19
Thus, under Step 2A(i), we agree with the Examiner that claim 21 's
"method of altering an advertisement based on a media content," as a whole,
18 For example, the type of media content streamed to a client device (user)
can reasonably be construed as representing a user selection.
19 Our reviewing court recognizes that "[a]n abstract idea can generally be
described at different levels of abstraction." Apple, Inc. v. Ameranth, Inc.,
842 F.3d 1229, 1240 (Fed. Cir. 2016). That need not and, in this case does
not, "impact the patentability analysis." Id. at 1241. Further, "[a]n abstract
idea can generally be described at different levels of abstraction. . . . The
Board's slight revision of its abstract idea analysis does not impact the
patentability analysis." Id. at 1240-41. Moreover, merely combining
several abstract ideas does not render the combination any less abstract.
RecogniCorp, LLC v. Nintendo Co., 855 F.3d 1322, 1327 (Fed. Cir. 2017)
("Adding one abstract idea (math) to another abstract idea ... does not
render the claim non-abstract."); see also Fair Warning IP, LLC v. Iatric
Sys., Inc., 839 F.3d 1089, 1093-94 (Fed. Cir. 2016) (Determining the
pending claims were directed to a combination of abstract ideas.).
19
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and under our Revised Guidance, recites a judicial exception of certain
methods of organizing human activity, i.e., a commercial interaction in the
form of advertising and marketing activities, and thus, is an abstract idea.
Step 2A(ii): Judicial Exception Integrated into a Practical Application?
If the claims are directed to a patent-ineligible concept, as we
conclude above, we proceed to the "practical application" Step 2A(ii) in
which we determine whether the recited judicial exception is integrated into
a practical application of that exception by: (a) identifying whether there are
any additional elements recited in the claim beyond the judicial exception( s );
and (b) evaluating those additional elements individually and in combination
to determine whether they integrate the exception into a practical
app li cation.
We conclude limitations (2) through (7) of claim 21 recite abstract
ideas as identified in Step 2A (i), supra, and none of the limitations integrate
the judicial exception of a commercial interaction in the form of advertising
and marketing activities into a practical application as determined under one
or more of the MPEP sections cited above. We further conclude "receiving"
limitation (1) represents insignificant data gathering, and "additionally
streaming" limitation (8) represents post-solution activity.
Appellants argue "[ w ]aveform analysis is performed on the media
content to determine a characteristic ( e.g., a tempo, a harmony, a rhythm, or
a melody) of the streaming media content. The extracted characteristics are
then used to alter another media content ( e.g., the selected advertisement)."
App. Br. 18-19. Appellants further argue, allegedly similar to Diehr, the
claims "merely use the mathematical equation to improve an existing
20
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technology process 'by transforming or reducing an article to a different
state of thing."' Id. at 19. Appellants further allege:
Id.
These features clearly add something more because not
only are they additional (nonobvious) over conventional
delivery of an advertisement from a server to user based on
their selection of media content, but the features actual physical
transform ( e.g., visual motion and color scheme) the
advertisement before it is delivered. Accordingly, the
undersigned submits that the claims are also patentable when
evaluated under step two of the Mayo/ Alice test.
To the extent Appellants rely on the machine-or-transformation test
set forth in Bilski ( 5 61 U.S. at 604---0 5), we are not persuaded that claim 21
satisfies the test. Claim 21 recites a method that merely includes the steps of
"determining ... a waveform characteristic . .. [that is] at least one of a
tempo, a harmony, a rhythm, and a melody of the media content." Claim 21
( emphasis added). The determined waveform characteristic is then used to
alter "a visual motion and a color scheme of the advertisement." Id.
We conclude the transformation or altering of one advertisement into
another advertisement based upon a waveform characteristic is not a
transformation or reduction of an article into a different state or thing
constituting patent-eligible subject matter. 20 "The mere manipulation or
reorganization of data ... does not satisfy the transformation prong."
20 We further note the recited "waveform analysis," "where the waveform
characteristic is at least one of a tempo, a harmony, a rhythm, and a melody
of the media content," can be carried out in the human mind, as a mental
process.
21
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CyberSource, 654 F.3d at 1375. Thus, claim 21 fails to satisfy the
transformation prong of the machine-or-transformation test. 21
Thus, we find the claim as a whole merely uses instructions to
implement the abstract idea on a computer or, alternatively, merely uses a
computer as a tool to perform the abstract idea. Thus, on this record,
Appellants have not shown under the guidance of Manual of Patent
Examining Procedure section 2106.05(a) ("Improvements to the Functioning
of a Computer or to Any Other Technology or Technical Field") or section
2106.05(e) ("Other Meaningful Limitations"). Nor do Appellants advance
persuasive arguments in the Brief(s) that are directed to the Bilski machine-
or-transformation test, which would only be applicable to the method
(process) claims on appeal. See MPEP §§ 2106.05(b) (Particular Machine)
and 2106.05( c) (Particular Transformation).
Therefore, we conclude the abstract idea is not integrated into a
practical application, and thus, the claim is directed to the judicial exception.
Step 2B ~ "Inventive Concept" or "Significantly More"
If the claims are directed to a patent-ineligible concept, as we
conclude above, we proceed to the "inventive concept" step. For Step 2B we
must "look with more specificity at what the claim elements add, in order to
determine 'whether they identify an "inventive concept" in the application of
the ineligible subject matter' to which the claim is directed." Affinity Labs
21 The Supreme Court has made clear that a patent claim's failure to satisfy
the machine-or-transformation test is not dispositive of the § 101 inquiry.
See Bilski, 561 U.S. at 604---05. However, the machine-or-transformation
test is "a useful and important clue, an investigative tool, for determining
whether some claimed inventions are processes under § 101." Id.
22
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of Texas, LLC v. DIRECTV, LLC, 838 F.3d 1253, 1258 (Fed. Cir. 2016)
(quoting Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed.
Cir. 2016)).
In applying step two of the Alice analysis, our reviewing court guides
we must "determine whether the claims do significantly more than simply
describe [the] abstract method" and, thus, transform the abstract idea into
patentable subject matter. Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709,
715 (Fed. Cir. 2014). We look to see whether there are any "additional
features" in the claims that constitute an "inventive concept," thereby
rendering the claims eligible for patenting even if they are directed to an
abstract idea. Alice, 573 U.S. at 221. Those "additional features" must be
more than "well-understood, routine, conventional activity." Mayo, 566
U.S. at 79.
Limitations referenced in Alice that are not enough to qualify as
"significantly more" when recited in a claim with an abstract idea include, as
non-limiting or non-exclusive examples: adding the words "apply it" ( or an
equivalent) with an abstract idea22 ; mere instructions to implement an
abstract idea on a computer23 ; or requiring no more than a generic computer
to perform generic computer functions that are well-understood, routine and
conventional activities previously known to the industry. 24
22 Alice, 573 U.S. at 221-23.
23 Alice, 573 U.S. at 221, e.g., simply implementing a mathematical
principle on a physical machine, namely a computer (citing Mayo, 566 U.S.
at 84--85).
24 Alice, 573 U.S. at 225, e.g., using a computer to obtain data, adjust
account balances, and issue automated instructions.
23
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Evaluating representative claim 21 under step 2 of the Alice analysis,
we conclude it lacks an inventive concept that transforms the abstract idea of
commercial interactions in the form of advertising and marketing activities
into a patent-eligible application of that abstract idea.
The patent eligibility inquiry may contain underlying issues of fact.
Mortg. Grader, 811 F.3d at 1325. In particular, "[t]he question of whether a
claim element or combination of elements is well-understood, routine and
conventional to a skilled artisan in the relevant field is a question of fact."
Berkheimer, 881 F.3d at 1368.
As evidence of the conventional nature of the recited "method of
altering an advertisement based on a media content" in method claim 21, the
Specification discloses the client device may be "e.g., mobile device, a
desktop computer, a telephone, an Internet appliance, and/or an automobile
etc." Spec. ,r 38. The Specification further discloses:
[0060] The diagrammatic system view 500 may indicate a
personal computer and/ or the data processing system in which
one or more operations disclosed herein are performed. The
processor 502 may be a microprocessor, a state machine, an
application specific integrated circuit, a field programmable
gate array, etc. ( e.g., Intel® Pentium® processor). The main
memory 504 may be a dynamic random access memory and/or
a primary memory of a computer system.
[0061] The static memory 506 may be a hard drive, a flash
drive, and/or other memory information associated with the
data processing system. The bus 508 may be an interconnection
between various circuits and/ or structures of the data processing
system. The video display 510 may provide graphical
representation of information on the data processing system.
The alpha-numeric input device 512 may be a keypad, a
24
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keyboard and/or any other input device of text (e.g., a special
device to aid the physically handicapped).
[0062] The cursor control device 514 may be a pointing device
such as a mouse. The drive unit 516 may be the hard drive, a
storage system, and/ or other longer term storage subsystem.
The signal generation device 518 may be a bios and/ or a
functional operating system of the data processing system. The
network interface device 520 may be a device that performs
interface functions such as code conversion, protocol
conversion and/or buffering required for communication to and
from the network 526. The machine readable medium 522 may
provide instructions on which any of the methods disclosed
herein may be performed. The instructions 524 may provide
source code and/or data code to the processor 502 to enable any
one or more operations disclosed herein.
Spec. ,r,r 60-62.
Thus, because the Specification describes the additional elements in
general terms, without describing the particulars, we conclude the claim
limitations may be broadly but reasonably construed as reciting conventional
computer components and techniques, particularly in light of Appellants'
Specification, as quoted above. 25
With respect to this step of the analysis, Appellants argue:
These [waveform analysis] features clearly add something more because not
only are they additional (nonobvious) over conventional delivery of an advertisement
from a server to user based on their selection of media content, but the features actual
physical transform ( e.g., visual motion and color scheme) the advertisement before it is
delivered. Accordingly, the undersigned submits that the claims are also patentable when
evaluated under step two of the Mayo/Alice test.
App. Br. 19.
25 Claim terms are to be given their broadest reasonable interpretation, as
understood by those of ordinary skill in the art and taking into account
whatever enlightenment may be had from the Specification. Morris, 127
F.3d at 1054.
25
Appeal2018-000452
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The Manual of Patent Examining Procedure, based upon our
precedential guidance, provides additional considerations with respect to
analysis of the well-understood, routine, and conventional nature of the
claimed computer-related components.
Another consideration when determining whether a claim
recites significantly more than a judicial exception is whether
the additional elements amount to more than a recitation of the
words "apply it" ( or an equivalent) or are more than mere
instructions to implement an abstract idea or other exception on
a computer. As explained by the Supreme Court, in order to
transform a judicial exception into a patent-eligible application,
the additional element or combination of elements must do
"'more than simply stat[ e] the uudicial exception] while adding
the words 'apply it'". Alice Corp. v. CLS Bank, 573 U.S._,
134 S. Ct. 2347, 2357, 110 USPQ2d 1976, 1982-83 (2014)
( quoting Mayo Collaborative Servs. v. Prometheus Labs., Inc.,
566 U.S. 66, 72, 101 USPQ2d 1961, 1965). Thus, for example,
claims that amount to nothing more than an instruction to apply
the abstract idea using a generic computer do not render an
abstract idea eligible. Alice Corp., 134 S. Ct. at 2358, 110
USPQ2d at 1983. See also 134 S. Ct. at 2389, 110 USPQ2d at
1984 (warning against a§ 101 analysis that turns on "the
draftsman's art") ....
In Alice Corp., the claim recited the concept of
intermediated settlement as performed by a generic computer.
The Court found that the recitation of the computer in the claim
amounted to mere instructions to apply the abstract idea on a
generic computer. 134 S. Ct. at 2359-60, 110 USPQ2d at 1984.
The Supreme Court also discussed this concept in an earlier
case, Gottschalk v. Benson, 409 U.S. 63, 70, 175 USPQ 673,
67 6 (1972), where the claim recited a process for converting
binary-coded decimal (BCD) numerals into pure binary
numbers. The Court found that the claimed process had no
substantial practical application except in connection with a
computer. Benson, 409 U.S. at 71-72, 175 USPQ at 676. The
claim simply stated a judicial exception ( e.g., law of nature or
26
Appeal2018-000452
Application 12/104,466
abstract idea) while effectively adding words that "apply it" in a
computer. Id.
MPEP § 2106.05([) ("Mere Instructions To Apply An Exception").
With respect to the Step 2B analysis, we conclude, similar to Alice, the
recitation of a "method of altering an advertisement based on a ;media
content" that includes a "central server," a "client device," and a "network"
( claim 21) as argued by Appellants, and similarly for claims 31 and 38, is
simply not enough to transform the patent-ineligible abstract idea here into a
patent-eligible invention under Step 2B. See Alice, 573 U.S. at 221
("[C]laims, which merely require generic computer implementation, fail to
transform [an] abstract idea into a patent-eligible invention.").
We conclude the claims fail the Step 2B analysis because claim 21, in
essence, merely recites various computer-based elements along with no
more than mere instructions to implement the identified abstract idea using
the computer-based elements.
Therefore, because the claims fail under both the Step 2A and Step 2B
analyses, we sustain the Examiner's§ 101 rejection of independent
claims 21, and grouped claims 22-29, 31-3 6, and 3 8--41, not argued
separately, and which fall therewith. See Claim Grouping, supra.
REPLY BRIEF
To the extent Appellants may advance new arguments in the Reply
Brief (Reply Br. 1-7) not in response to a shift in the Examiner's position in
the Answer, we note arguments raised in a Reply Brief that were not raised
in the Appeal Brief or are not responsive to arguments raised in the
27
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Examiner's Answer will not be considered except for good cause (see 37
C.F.R. § 4I.41(b)(2)), which Appellants have not shown.
CONCLUSION
Under our Revised Guidance, governed by relevant case law,
claims 21-29, 31-36, and 38--41 are patent-ineligible under 35 U.S.C. § 101,
and we sustain the rejection.
DECISION
We affirm the Examiner's decision rejecting claims 21-29, 31-36,
and 38--41.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv). See 37
C.F.R. § 41.50(±).
AFFIRMED
28