Ex Parte Latham et alDownload PDFPatent Trials and Appeals BoardMay 23, 201913042319 - (D) (P.T.A.B. May. 23, 2019) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 13/042,319 03/07/2011 70336 7590 05/28/2019 Seed IP Law Group/DISH Technologies (290110) 701 FIFTH A VENUE SUITE 5400 SEATTLE, WA 98104 Corbin R. Latham 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. P2011-0l-05/290110.517 6684 EXAMINER KANERVO, VIRPI H ART UNIT PAPER NUMBER 3691 NOTIFICATION DATE DELIVERY MODE 05/28/2019 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): USPTOeAction@SeedIP.com pairlinkdktg@seedip.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte CORBIN R. LATHAM and STEWARTW. VARDAMAN Appeal 2018-001805 Application 13/042,319 1 Technology Center 3600 Before JENNIFER S. BISK, LARRY J. HUME, and JULIET MITCHELL DIRBA, Administrative Patent Judges. HUME, Administrative Patent Judge. DECISION ON APPEAL This is a decision on appeal under 35 U.S.C. § 134(a) of the Final Rejection of claims 1-7, 10, 11, 14-16, 18-21, and 23-26, which are all claims pending in the application. Appellants have canceled claims 8, 9, 12, 13, 17, and 22. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 According to Appellants, the real party in interest is Echostar Technologies L.L.C. App. Br. 2. Appeal 2018-001805 Application 13/042,319 STATEMENT OF THE CASE2 The Invention Appellants' disclosed embodiments and claimed invention "relate[] generally to financial trading, and more specifically to providing a financial portal that has a context related to content that is being viewed." Spec. ,-J 1. Exemplary Claim Claim 1, reproduced below, is representative of the subject matter on appeal (emphases and formatting added to contested prior-art limitations): 1. A method for providing a financial portal related to received audiovisual content, the method comprising: receiving, at a content receiver, audiovisual content, the content receiver including a processing unit, non-transitory storage, an input component and an output component; sending, by the content receiver, the received audiovisual content to a display device for presentation to a user; storing, in the non-transitory storage of the content receiver, one or more user-defined triggers and items of financial interest to the user, the one or more user-defined triggers being set by the user and defining triggering events for when to present the financial portal to the user on the display device; analyzing, by the content receiver, the received audiovisual content; 2 Our decision relies upon Appellants' Appeal Brief ("App. Br.," filed Dec. 9, 2016); Reply Brief ("Reply Br.," filed Dec. 8, 2017); Examiner's Answer ("Ans.," mailed Oct. 10, 2017); Final Office Action ("Final Act.," mailed May 18, 2016); and the original Specification ("Spec.," filed Mar. 7, 2011). 2 Appeal 2018-001805 Application 13/042,319 in response to analyzing the received audiovisual content, comparing the analyzed audiovisual content to the stored one or more user-defined triggers; detecting, by the content receiver, an occurrence of a triggering event based on a match of the compared audiovisual content to at least one of the one or more user-defined triggers, the triggering event causes the financial portal to be presented to the user on the display device; in response to detecting the triggering event: analyzing the audiovisual content to determine at least one context-specific information based on a comparison of the audiovisual content and the items of financial interest to the user; and sending to the display device a combination of the financial portal and the audiovisual content for simultaneous display, the financial portal including the context-specific information related to the items of financial interest to the user; and permitting the user, using the financial portal, to initiate a financial order. Prior Art The Examiner relies upon the following prior art as evidence in rejecting the claims on appeal: Tyulyaev US 2005/0256797 Al Nov. 17, 2005 Bleahen US 2008/0059380 Al Mar. 6, 2008 Buchanan et al. ("Buchanan") US 2010/0100424 Al Apr. 22, 2010 Sprague et al. ("Sprague") US 7,752,048 B2 July 6, 2010 Sims et al. ("Sims") US 2010/0274714 Al Oct. 28, 2010 Herlein et al. ("Herlein") US 2011/0066480 A 1 Mar. 17, 2011 Lauridsen et al. ("Lauridsen") US 8,615,711 B2 Dec. 24, 2013 3 Appeal 2018-001805 Application 13/042,319 Re} ections on Appeal3 Rl. Claims 1-7, 10, 11, 14-16, 18-21, and 23-26 stand rejected under 35 U.S.C. § 101 as being directed to patent-ineligible subject matter. Ans. 2. R2. Claims 1-4, 7, 10, 11, 14-16, 20, 21, and 23 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over the combination of Buchanan, Herlein, and Lauridsen. Final Act. 6. R3. Claims 5, 19, and 24 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over the combination of Buchanan, Herlein, Lauridsen, and Sims. Final Act. 12. R4. Claims 6 and 18 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over the combination of Buchanan, Herlein, Lauridsen, and Sprague. Final Act. 13. R5. Claim 25 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over the combination of Buchanan, Herlein, Lauridsen, Sims, and Tyulyaev.4 Id. R6. Claim 26 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over the combination of Buchanan, Herlein, Lauridsen, and Bleahen. Final Act. 16. 3 We note the Examiner with drew the original § 101 rejection of claims 1-7, 10, 11, 14-16, 18-21, and 23-26 set forth on pages 4 through 6 of the Final Action, and instituted a new ground of rejection under§ 101 of these claims in the Answer (Ans. 2), to which Appellants have responded. Reply Br. 2 et seq. 4 We view the Examiner's incorrect reference to the Tyulyaev reference as "Trulyaev" as harmless error. Final Act. 13 et seq. 4 Appeal 2018-001805 Application 13/042,319 CLAIM GROUPING Based on Appellants' arguments (App. Br. 22-29; Reply Br. 2-12) and our discretion under 37 C.F.R. § 41.37(c)(l)(iv), we decide the appeal of patent-ineligible subject matter Rejection Rl of claims 1-7, 10, 11, 14-16, 18-21, and 23-26 on the basis of representative claim 1; and we also decide the appeal of obviousness Rejection R2 of claims 1-4, 7, 10, 11, 14-16, 20, 21, and 23 on the basis of representative claim 1. Remaining claims 5, 6, 18, 19, and 24-26 in Rejections R2 through R6, not argued separately, stand or fall with the respective independent claim from which they depend. 5 ISSUES AND ANALYSIS Based upon our de nova review using our Revised Guidance, we conclude claims 1-7, 10, 11, 14-16, 18-21, and 23-26 are directed to patent-eligible subject matter under§ 101. Based upon our review of the record and Appellants' arguments, we are persuaded by particular arguments advanced by Appellants with respect to obviousness Rejections R2 throughR6 of claims 1-7, 10, 11, 14-16, 18-21, and 23-26 for the specific reasons discussed below. 5 "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. § 41.37(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). 5 Appeal 2018-001805 Application 13/042,319 We highlight and address specific findings and arguments regarding claim 1 for emphasis as follows. 1. § 101 Rejection Rl of Claims 1-7, 10, 11, 14-16, 18-21, and 23-26 Issue 1 Appellants argue (Reply Br. 2-15) the Examiner's rejection of claim 1 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 USPTO's Revised Guidance, informed by our governing case law concerning 35 U.S.C. § 101, is claim 1 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. § 101.6 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., 6 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 USPTO's patent- eligibility analysis under§ 101. MPEP § 2106. 6 Appeal 2018-001805 Application 13/042,319 Inc., 566 U.S. 66, 70 (2012) (brackets in original) (citing Diamond v. Diehr, 450 U.S. 175, 185 (1981)). In determining whether a claim falls within an excluded category, we are guided by the Supreme Court's two-step framework, described in Mayo and Alice. Alice Corp. 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 182 n.7 (quoting Corning v. Burden, 56 U.S. (15 How.) 252, 267-68 (1854))); and manufacturing flour (Benson, 409 U.S. at 69 ( citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))). In Diehr, the claim at issue recited a mathematical formula, but the Supreme Court held "[a] claim drawn to subject matter otherwise statutory 7 Appeal 2018-001805 Application 13/042,319 does not become nonstatutory simply because it uses a mathematical formula." Diehr, 450 U.S. at 187; see also id. at 191 ("We view respondents' claims as nothing more than a process for molding rubber products and not as an attempt to patent a mathematical formula."). 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 8 Appeal 2018-001805 Application 13/042,319 [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. 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); 7 and (2) additional elements that integrate the judicial exception into a practical application (see Manual for Patent Examining Procedure ("MPEP") §§ 2106.05(a)-(c), (e)-(h)). 8 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 § 2106.05(d)); or 7 Referred to as "Revised Step 2A, Prong l" in the Revised Guidance (hereinafter "Step 2A(i)"). 8 Referred to as "Revised Step 2A, Prong 2" in the Revised Guidance (hereinafter "Step 2A(ii)"). 9 Appeal 2018-001805 Application 13/042,319 (4) simply appends well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception. 9 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). 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- 9 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. 10 Appeal 2018-001805 Application 13/042,319 eligible at Step 2A(i). This determination concludes the eligibility analysis, except in situations identified in the Revised Guidance. 10 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, 11 cited in the Revised Guidance under Step 2A(ii), are: 10 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 Revised Guidance, Section III.C. 11 See MPEP § 2106.05(a)-(c), (e)-(h). Citations to the MPEP herein refer to revision [R-08.2017]. Sections 2106.05(a), (b), (c), and (e) are indicative of integration into a practical application, while sections 2106.05([), (g), and (h) relate to limitations that are not indicative of integration into a practical application. 11 Appeal 2018-001805 Application 13/042,319 (1) MPEP § 2106.05(a) Improvements to the Functioning of a Computer or To Any Other Technology or Technical Field (2) MPEP § 2106.05(b) Particular Machine (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 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 (US PTO 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 determined 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 Services, Inc. v. 12 Appeal 2018-001805 Application 13/042,319 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 AT&T Mobility LLC, 827 F.3d 1341, 1349-52 (Fed. Cir. 2016); DDR Holdings 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 Examination Procedure Pertaining to Subject Matter Eligibility, Recent 13 Appeal 2018-001805 Application 13/042,319 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. 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, Subject Matter Eligibility Decision (Berkheimer v. HP, Inc.)" (hereinafter "Berkheimer Memo"). 14 Appeal 2018-001805 Application 13/042,319 which is indicative that an inventive concept may not be present. Revised Guidance, and see 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 Based upon our de nova review of the record in light of recent Director Policy Guidance with respect to patent-eligible subject matter rejections under 35 U.S.C. § 101, we reverse the rejection of claims 1-7, 10, 11, 14-16, 18-21, and 23-26 for the specific reasons discussed below. We highlight and address specific findings and conclusions regarding claim 1 for emphasis as follows. Step 1 --Statutory Category Claim 1, as a method (process) claim, recites one of the enumerated categories of eligible subject matter in 35 U.S.C. § 101. Therefore, the issue before us is whether the claim is directed to a judicial exception without significantly more. 15 Appeal 2018-001805 Application 13/042,319 Step 2A(i): Does the Claim Recite a Judicial Exception? The Examiner determined representative claim 1 is "directed to an abstract idea of providing a content-related financial portal," and "[t]he creation of providing a content-related financial portal, as recited in the independent claims ... is similar to an idea of itself found by the courts to be abstract ideas." Ans. 3. We find claim 1 does not recite the judicial exceptions of either natural phenomena or laws of nature. We evaluate, de nova, whether claim 1 recites an abstract idea based upon the Revised Guidance. Claim 1 recites "[a] method for providing a financial portal related to received audiovisual content," wherein the method includes the steps of: (1) "[R]eceiving ... audiovisual content ... [by a] content receiver including a processing unit, non-transitory storage, an input component and an output component." (2) "[S]ending ... the received audiovisual content to a display device for presentation to a user." (3) "[S]toring ... one or more user-defined triggers and items of financial interest to the user, the one or more user- defined triggers being set by the user and defining triggering events for when to present the financial portal to the user on the display device." ( 4) "[ A ]nalyzing, by the content receiver, the received audiovisual content." (5) "[I]n response to analyzing the received audiovisual content, comparing the analyzed audiovisual content to the stored one or more user-defined triggers." ( 6) "[D]etecting ... an occurrence of a triggering event based on a match of the compared audiovisual content to at least one of the one or more user-defined triggers, the triggering 16 Appeal 2018-001805 Application 13/042,319 event causes the financial portal to be presented to the user on the display device." in response to detecting the triggering event: (7) "[ A ]nalyzing the audiovisual content to determine at least one context-specific information based on a comparison of the audiovisual content and the items of financial interest to the user." (8) "[SJ ending to the display device a combination of the financial portal and the audiovisual content for simultaneous display, the financial portal including the context-specific information related to the items of financial interest to the user." (9) "[P]ermitting the user, using the financial portal, to initiate a financial order." Claims App 'x. The Specification provides context as to what the claimed invention is directed to. In this case, the Specification discloses the invention "relates generally to financial trading, and more specifically to providing a financial portal that has a context related to content that is being viewed." Spec. ,i 1. Appellants' Abstract provides additional description of the invention: A content receiver provides content received from a content provider. While providing such content, the content receiver determines to provide a financial portal. The content receiver ascertains context-specific information to include in the financial portal based on the content. Then, the content receiver transmits a combination of the financial portal and the content to a display device. The financial portal may include various menus and/or interfaces that enable performance activities related to financial products and/or financial and/or brokerage accounts. In ascertaining information, the content receiver may evaluate the content to determine information to include, such as by analyzing metadata that corresponds to the content and/or performing content recognition analysis on the 17 Appeal 2018-001805 Application 13/042,319 content. The content receiver may determine to provide the financial portal in response to user input and/ or in response to the occurrence of an event corresponding to an automatic and/or user defined trigger. Spec. 15. Under the broadest reasonable interpretation standard, 16 we conclude, other than the claimed computer-related aspects, the claim as a whole recites steps that would ordinarily occur when analyzing content for context in order to provide content-related services, e.g., access through a financial portal. See Ans. 3. In particular, limitations (2) through (8) recite abstract ideas. For example, we conclude steps (3) through (7) ("storing," analyzing," "comparing," "detecting,", and "analyzing") would be common steps taken in any data analysis operation. We also conclude that step (2), sending content to a display for presentation to a user, is an abstract idea. Thus, under Step 2A(i), we generally agree with the Examiner that claim 1 recites an abstract idea, however we characterize the abstract idea differently in light of our Revised Guidance, We conclude claim 1 as a whole recites mental processes, as concepts that could be performed in the 16 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). 18 Appeal 2018-001805 Application 13/042,319 human mind, including observations, evaluations, judgments, and opinions. This type of activity, i.e., analyzing content for context, includes longstanding conduct that existed well before the advent of computers and the Internet, and could be carried out by a human with pen and paper. See CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1375 (Fed. Cir. 2011). 17 We conclude claim 1, as a whole, under our Revised Guidance, recites a judicial exception of mental processes, i.e., concepts performed in the human mind, including observations, evaluations, judgments, and opinions, and thus is an abstract idea. Step 2A(ii): Judicial Exception Integrated into a Practical Application? If the claims recite 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 17 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, "[t]he Board's slight revision of its abstract idea analysis does not impact the patentability analysis." Id. 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 FairWarning 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 Appeal 2018-001805 Application 13/042,319 (b) evaluating those additional elements individually and in combination to determine whether they integrate the exception into a practical application. In addition to the abstract steps recited in limitations (2) through (7) identified in Step 2A(i), supra, claim 1 further recites (1) "receiving ... content," (8) "sending to the display device a combination of the financial portal and the audiovisual content for simultaneous display," and (9) "permitting the user, using the financial portal, to initiate a financial order." As to the specific limitations, we find limitation ( 1) recites insignificant data gathering. See MPEP § 2106.05(g). Data gathering, as performed by the steps or function in Appellants' claims, is a classic example of insignificant extra-solution activity. See, e.g., In re Bilski, 545 F.3d 943, 963 (Fed. Cir. 2008) (en bane), aff'd sub nom, Bilski v. Kappas, 561 U.S. 593 (2010). However, for the reasons discussed below, we conclude limitations (8) and (9) integrate the abstract idea into a practical application as determined under at least one of the MPEP sections cited above. 18 Appellants' Specification discloses: [0015] The present disclosure discloses systems, methods, and computer program products for providing a financial portal that has a context related to viewed content. A content receiver may provide content that is received from one or more content providers. While providing such content, the content receiver may determine to provide one or more financial portals. Such a 18 See, e.g., MPEP § 2106.05(a) "Improvements to the Functioning of a Computer or To Any Other Technology or Technical Field," and § 2106.05(e) "Other Meaningful Limitations." 20 Appeal 2018-001805 Application 13/042,319 determination may be made in response to user input, occurrence of one or more triggering events, and/or any other event that indicates to the content receiver that the financial portal should be provided. The content receiver may ascertain context-specific information to include in the financial portal based on the content. Such ascertaining of context-specific information may be based on analyzing metadata that corresponds to the content, performing audio and/or image analysis on the content, and other such methods of obtaining context-specific information that relates to the content. Then, the content receiver may combine the financial portal with the content and transmit the combination to one or more display devices. As such, the financial portal that is provided to one or more users along with the content is related to the content that the user is viewing and may enable the user to perform various activities related to the content utilizing the financial portal in a more efficient and less time consuming way than would otherwise be possible. Spec. ,i 15 ( emphasis added). Appellants argue: [T]he claims, when considered as an ordered combination, recite a particular two-part analysis of audiovisual content. For example, the claims recite storing a particular type of data ("user-defined triggers" and "items of financial interest"), performing a particular type of analysis and comparison ("comparing the analyzed audiovisual content to the stored user-defined triggers") to detect an occurrence of a particular event ("a triggering event"), where detection of that particular event causes a particular action (perform additional analysis on the audiovisual content), which includes determining particular information ("context-specific information'') based on another particular type of comparison ("comparison of the audiovisual content and the items of financial interest'') for use in presenting a particular output to a user (simultaneous display of a combination of the context-specific information and the audiovisual content). The ordered combination of at least these claim features provides an inventive concept that amounts to 21 Appeal 2018-001805 Application 13/042,319 significantly more than the alleged abstract idea of providing a content-related financial portal. App. Br. 20 ( emphasis added). We find persuasive at least a portion of Appellants' argument that carrying out step (8) "sending to the display device a combination of the financial portal and the audiovisual content for simultaneous display, the financial portal including the context-specific information related to the items of financial interest to the user," provides improvement to the underlying technology or technical field, namely, financial trading systems, and more specifically to providing an improved financial trading system using a financial portal with a context related to content that is being viewed. See MPEP § 2106.05(a) or, alternatively,§ 2106.05(e) "Other Meaningful Limitations." With respect to these other meaningful limitations, we find guidance in MPEP § 2106.05( e ), which summarizes and relies upon our reviewing court's holdings in Diamond v. Diehr, cited supra, and Classen Immunotherapies, Inc. v. Biogen IDEC, 659 F.3d 1057 (Fed. Cir. 2011) ( decision on remand from the Supreme Court, which had vacated the lower court's prior holding of ineligibility in view of Bilski v. Kappas). In Diehr, the Court evaluated the additional non-abstract limitations, and found them to be meaningful, because they sufficiently limited the use of the (abstract idea) mathematical equation to the practical application of molding rubber products. MPEP § 2106.05(e) (citing Diehr, 450 U.S. at 184, 187). In Classen, the Court held that, although the analysis step was an abstract mental process that collected and compared known information, the 22 Appeal 2018-001805 Application 13/042,319 (practical application) immunization step was meaningful because it integrated the results of the analysis into a specific and tangible method that resulted in the method "moving from abstract scientific principle to specific application." MPEP § 2106.05(e) (citing Classen, 659 F.3d at 1066-68). We find these other meaningful limitations (8) and (9) identified above provide a technological improvement to financial trading systems by providing "a technical solution of a content receiver that performs a two-step analysis of audiovisual content to solve the technical problem of determining specific content to display and when to display it." Reply Br. 5. Accordingly, we conclude, when the claim is considered as a whole, the recited judicial exception is integrated into a practical application as determined under either MPEP sections 2106.06(a) or 2106.05(e) cited above, such that the claim is patent-eligible. Because the claims are directed to a patent-eligible concept, this concludes the patent-eligibility inquiry. Therefore, based upon the findings and legal conclusions above, on this record and in consideration of the Revised Guidance, we are persuaded the claims are directed to patent-eligible subject matter, such that we do not sustain the § 101 rejection of claim 1, and grouped claims 2-7, 10, 11, 14-16, 18-21, and 23-26 which stand therewith. See Claim Grouping, supra. 23 Appeal 2018-001805 Application 13/042,319 2. § 103 Rejection R2 of Claimsl-4, 7, 10, 11, 14-16, 20, 21, and 23 Issue 2 Appellants argue (App. Br. 22-28) the Examiner's rejection of claim 1 under 35 U.S.C. § 103(a) as being obvious over the combination of Buchanan, Herlein, and Lauridsen is in error. These contentions present us with the following issue: Did the Examiner err in finding the cited prior art combination teaches or suggests "[a] method for providing a financial portal related to received audiovisual content," that includes, inter alia, the step of "storing, in the non-transitory storage of the content receiver, one or more user-defined triggers and items of financial interest to the user, the one or more user- defined triggers being set by the user and defining triggering events for when to present the financial portal to the user on the display device," as recited in claim 1? Analysis The Examiner initially finds Buchanan in paragraphs 98 and 112 teaches or suggests the recited "storing" of user-defined triggers. Final Act. 7; Ans. 5. We have read those sections, and disagree with the Examiner's particular pinpoint citation. However, upon further review of the teachings and suggestions of Buchanan, we find paragraph 111, immediately adjacent to paragraph 112, teaches or at least suggests storing user-defined triggers, i.e., Buchanan stores "content based at least partially on the trends and other user preferences gathered from the user's financial data." Buchanan ,-J 111 ( emphasis added). We find that gathering of trends and preferences teaches or at least suggests "storing" the trends and 24 Appeal 2018-001805 Application 13/042,319 preferences. Further, under the broadest reasonable interpretation standard, we interpret the claimed user-defined "trigger" as broadly but reasonably reading on evaluation of trend data as taught or suggested by Buchanan. However, in the Answer, the Examiner shifts the thrust of the obviousness rejection and finds "Lauridsen teaches user defined triggering events." Ans. 18, citing Lauridsen col. 25, 11. 49-53 ("[With reference to Figure 11,] Block 1104 depicts the portal summary controller determining whether a trigger to record portal usage is detected from a user selection to store the portal usage or based on a triggering event in the metadata."). Appellants contend: [T]he cited portions of Buchanan describe a system that determines user preferences based on a user's financial data. Buchanan, paras. [0109]-[0l 12]. These user preferences describe lifestyle preferences of the user to identify the user's interests. Buchanan, para. [1116]. For example, the Buchanan system analyzes financial data to determine that user may be a "homeowner [who] has interests in tools, gardening, and/or other home improvement-type subjects." Buchanan, para. [0109]-[0l 12] and [1116]. These user preferences are then used to determine targeted product offers or advertisements to provide to the user. Buchanan, para. [0111]. However, using financial data to determine the interests or lifestyle preferences of a user and providing that user with targeted product offers or advertisements based on the lifestyle preferences does not disclose or even suggest user-defined triggers that define triggering events for when to present a financial portal to the user, as recited in claim 1. App. Br. 23. The Examiner also concludes the portion of the contested limitation, "one or more user-defined triggers ... defining triggering events for when to 25 Appeal 2018-001805 Application 13/042,319 present the financial portal to the user on the display device" is merely intended use. Ans. 18. With respect to the Examiner's claim interpretation invoking intended use, Appellants argue: When this limitation is considered as a whole, one or more user-defined triggers are stored and these user-defined triggers define triggering events for when to present the financial portal to the user on the display device. Thus, the "for when to present" language in the claim defines the action performed when the triggering event defined by a trigger occurs and thus limits the scope of the type of user-defined trigger being stored. In fact, without this claim language, the triggering events defined by the user-defined triggers would not be properly limited to any particular action. Therefore, the "for when to present" language recited in claim 1 is not merely an intended use, but rather limits the scope of the triggering events being defined by the triggers set by the user. Reply Br. 11. The test for obviousness is what the combined teachings of the prior art would have suggested to the hypothetical person of ordinary skill in the art. In re Keller, 642 F.2d 413,425 (CCPA 1981). Further, "[a]n intended use or purpose usually will not limit the scope of the claim because such statements usually do no more than define a context in which the invention operates." Boehringer Ingelheim Vetmedica, Inc. v. Schering-Plough Corp., 320 F.3d 1339, 1345 (Fed.Cir. 2003). Although "[s]uch statements often ... appear in the claim's preamble," In re Stencel, 828 F.2d 751, 754 (Fed. Cir. 1987), a statement of intended use or purpose can appear elsewhere in a claim. Id. 26 Appeal 2018-001805 Application 13/042,319 While we conclude "one or more user-defined triggers" may broadly but reasonably be construed as identifying trends to determine displayed content as in Buchanan (see ,-i 111 ), we disagree with the Examiner's finding (Ans. 18) that the combination of Buchanan, Herlein, and Lauridsen teaches or suggests "the one or more user-defined triggers ... defining triggering events for when to present the financial portal to the user on the display device," as recited in claim 1 ( emphasis added). We further disagree with the Examiner that the recitation of "for when to present the financial portal to the user" is merely an intended use, for essentially the same reasons articulated by Appellants. See Reply Br. 11. In particular, we find neither the trend analysis in Buchanan (,-J 111) nor the trigger in Lauridsen ( col. 25, 11. 49-53) is used to "cause[] the financial portal to be presented to the user on the display device," as recited in claim 1. In both Buchanan and Lauridsen, the portal is already being presented to the user; it is just the particular content in the portal that is determined in response to the triggering mechanism. In contrast, in both the disclosed and claimed invention, the financial portal is not presented to the user until a triggering event occurs, and when the triggering event does occur, "a combination of the financial portal and the audiovisual content" is sent to the display "for simultaneous display." Claim 1. Although "we do not import limitations into the claims from the Specification" (SuperGuide Corp. v. DirecTV Enters., Inc., 358 F.3d 870, 875 (Fed. Cir. 2004)), we do look to the Specification for context. 19 19 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 27 Appeal 2018-001805 Application 13/042,319 [0023] By way of a first example, the processing unit 106 may receive input from a user via the user interface device 104 specifying to provide a financial portal every time the user views content that discusses a particular stock that the user owns shares in. The processing unit may record a trigger based on the user input in the non-transitory storage medium 108. Subsequently, while providing content, the processing unit may evaluate the user provided trigger that is stored in the non- transitory storage medium. For instance, when the processing unit is providing content that includes a news story regarding the particular stock, the processing unit may determine that that an event related to the user provided trigger has occurred and then determine to provide the financial portal. Spec. ,i 23. Therefore, based upon the findings above, on this record, and in light of the Specification's disclosure, we are persuaded of at least one error in the Examiner's reliance on the cited prior art combination to teach or suggest the disputed limitation of claim 1, such that we find error in the Examiner's resulting legal conclusion of obviousness. Therefore, we do not sustain the Examiner's obviousness rejection of independent claim 1, and independent claims 11 and 20, which recite the disputed limitation in commensurate form. For the same reasons, we also do not sustain the rejection of grouped claims 2-4, 7, 10, 14-16, 21, and 23, which stand therewith. See Claim Grouping, supra. 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). 28 Appeal 2018-001805 Application 13/042,319 3. Rejections R3-R6 of Claims 5, 6, 18, 19, and 24-26 In light of our reversal of Rejection R2 of independent claims 1 and 11, supra, we also reverse obviousness Rejections R3, R4, and R6 of claims 5, 6, 18, 19, 24, and 26, which variously and ultimately depend from claims 1 and 11. On this record, the Examiner has not shown how the additionally cited Sims, Sprague, and Bleahen references overcome the aforementioned deficiencies with Buchanan, Herlein, and Lauridsen, as discussed above regarding claim 1. Furthermore, independent claim 25, rejected under Rejection R5 over the combination of Buchanan, Herlein, Lauridsen, Sims, and Tyulyaev, recites the disputed limitations in commensurate form, and the Examiner relies upon the same teachings of Buchanan, Herlein, and Lauridsen with respect to the argued limitation, as in Rejection R2 of claim 1. On this record, the Examiner has not shown how the additionally cited Sims and Tyulyaev references in Rejection R5 overcome the aforementioned deficiencies with Buchanan, Herlein, and Lauridsen, as discussed above regarding claim 1. CONCLUSIONS (1) Under our Revised Guidance, governed by relevant case law, claims 1-7, 10, 11, 14-16, 18-21, and 23-26 are patent eligible under 35 U.S.C. § 101, and we do not sustain the rejection. (2) The Examiner erred with respect to obviousness Rejections R2 through R6 of claims 1-7, 10, 11, 14-16, 18-21, and 23-26 under 35 U.S.C. § 103(a) over the cited prior art combinations of record, and we do not sustain the rejections. 29 Appeal 2018-001805 Application 13/042,319 DECISION We reverse the Examiner's decision rejecting claims 1-7, 10, 11, 14- 16, 18-21, and 23-26. REVERSED 30 Copy with citationCopy as parenthetical citation