Google Inc.

Patent Trials and Appeals Board

Oct 21, 2020

15236968 - (D) (P.T.A.B. Oct. 21, 2020)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
15/236,968 08/15/2016 Kavita Kannan 098981-4636 2317
10575 7590 10/21/2020
FOLEY & LARDNER LLP
3000 K STREET N.W.
SUITE 600
WASHINGTON, DC 20007-5109
EXAMINER
ALLEN, WILLIAM J
ART UNIT PAPER NUMBER
3619
NOTIFICATION DATE DELIVERY MODE
10/21/2020 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
ipdocketing@foley.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte KAVITA KANNAN, CHARLIE GUO,
CHRISTOPHER KENNETH HARRIS, XI MAO,
THOMAS MATTHEW JAMES HENNIGAN, SISSIE LING-IE HSIAO,
RICCARDO GOVONI, and KOTWANI SACHIN
____________

Appeal 2020-001528
Application 15/236,968
Technology Center 3600
____________

Before BIBHU R. MOHANTY, NINA L. MEDLOCK, and
MATTHEW J. McNEILL, Administrative Patent Judges.

MEDLOCK, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
final rejection of claims 1–20. An oral hearing was held in this appeal on
October 6, 2020. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
CLAIMED INVENTION
Appellant describes that the disclosed implementations “relate to
filtering out content items from a set of eligible content items for an auction
based on a device filter” (Spec. ¶ 3).
Claims 1, 10, and 18 are the independent claims on appeal. Claim 1,
reproduced below with bracketed notations added, is illustrative of the
claimed subject matter:
1. A method comprising:
[(a)] accessing a set of required features for a mobile
application;
[(b)] accessing a data structure identifying a plurality of
known mobile devices each associated with a set of features;
[(c)] generating a device filter based on a comparison of
the set of required features to the associated set of features of the
data structure for each of the plurality of known mobile devices
of the data structure, the device filter comprising a set of
identifiers for one or more of the plurality of known mobile
devices that are incompatible with the mobile application based
on the comparison;

1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Our decision references Appellant’s Appeal Brief (“Appeal Br.,”
filed September 10, 2019) and Reply Brief (“Reply Br.,” filed December 20,
2019), and the Examiner’s Answer (“Ans.,” mailed October 22, 2019) and
Final Office Action (“Final Act.,” mailed May 3, 2019). Appellant identifies
Google LLC as the real party in interest (Appeal Br. 2).
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[(d)] receiving a request for a content item from a mobile
device, the request comprising data identifying a set of device
features or an identifier for the mobile device;
[(e)] filtering out a first content item associated with the
mobile application from a set of eligible content items for a
content item auction based on the generated device filter and at
least one of: (i) the data identifying the set of device features or
(ii) the identifier for the mobile device of the request;
[(f)] selecting a second content item from the filtered set
of eligible content items via the content item auction; and
[(g)] serving the selected second content item to the
mobile device responsive to the received request.
REJECTION
Claims 1–20 are rejected under 35 U.S.C. § 101 as directed to a
judicial exception without significantly more.
ANALYSIS
Appellant argues the pending claims as a group (Appeal Br. 5–11).
We select independent claim 1 as representative. The remaining claims
stand or fall with claim 1. See 37 C.F.R. §41.37(c)(1)(iv).
Under 35 U.S.C. § 101, a claim is patent eligible if it claims a “new
and useful process, machine, manufacture, or composition of matter.”
35 U.S.C. § 101. The Supreme Court, however, has long interpreted § 101
to include an implicit exception: “[l]aws of nature, natural phenomena, and
abstract ideas” are not patentable. Alice Corp. v. CLS Bank Int’l, 573 U.S.
208, 216 (2014).
The Supreme Court, in Alice, reiterated the two-step framework
previously set forth in Mayo Collaborative Services v. Prometheus
Laboratories, Inc., 566 U.S. 66 (2012), “for distinguishing patents that claim
laws of nature, natural phenomena, and abstract ideas from those that claim
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patent-eligible applications of those concepts.” Alice Corp., 573 U.S. at 217.
The first step in that analysis is to “determine whether the claims at issue are
directed to one of those patent-ineligible concepts.” Id. If the claims are not
directed to a patent-ineligible concept, e.g., an abstract idea, the inquiry
ends. Otherwise, the inquiry proceeds to the second step where the elements
of the claims are considered “individually and ‘as an ordered combination’”
to determine whether there are additional elements that “‘transform the
nature of the claim’ into a patent-eligible application.” Id. (quoting Mayo,
566 U.S. at 79, 78). This is “a search for an ‘inventive concept’ — i.e., an
element or combination of elements that is ‘sufficient to ensure that the
patent in practice amounts to significantly more than a patent upon the
[ineligible concept] itself.’” Id. at 217–18 (alteration in original).
The U.S. Patent and Trademark Office (the “USPTO”) published
revised guidance on January 7, 2019 for use by USPTO personnel in
evaluating subject matter eligibility under 35 U.S.C. § 101. 2019 REVISED
PATENT SUBJECT MATTER ELIGIBILITY GUIDANCE, 84 Fed. Reg. 50, 57
(Jan. 7, 2019) (the “2019 Revised Guidance”). 2 That guidance revised the
USPTO’s examination procedure with respect to the first step of the
Mayo/Alice framework by (1) “[p]roviding groupings of subject matter that
[are] considered an abstract idea”; and (2) clarifying that a claim is not
“directed to” a judicial exception if the judicial exception is integrated into a
practical application of that exception. Id. at 50.

2 The USPTO issued an update on October 17, 2019 (the “October 2019
Update: Subject Matter Eligibility,” available at https://www.uspto.gov/sites/
default/files/documents/peg_oct_2019_update.pdf) clarifying the
2019 Revised Guidance in response to public comments.
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The first step, as set forth in the 2019 Revised Guidance (i.e.,
Step 2A), is, thus, a two-prong test. In Step 2A, Prong One, we look to
whether the claim recites a judicial exception, e.g., one of the following
three groupings of abstract ideas: (1) mathematical concepts; (2) certain
methods of organizing human activity, e.g., fundamental economic
principles or practices, commercial or legal interactions; and (3) mental
processes. 2019 Revised Guidance, 84 Fed. Reg. at 54. If so, we next
determine, in Step 2A, Prong Two, whether the claim as a whole integrates
the recited judicial exception into a practical application, i.e., whether the
additional elements recited in the claim beyond the judicial exception, apply,
rely on, or use the judicial exception in a manner that imposes a meaningful
limit on the judicial exception, such that the claim is more than a drafting
effort designed to monopolize the judicial exception. Id. at 54–55. Only if
the claim (1) recites a judicial exception and (2) does not integrate that
exception into a practical application do we conclude that the claim is
“directed to” the judicial exception, e.g., an abstract idea. Id.
If the claim is determined to be directed to a judicial exception under
revised Step 2A, we next evaluate the additional elements, individually and
in combination, in Step 2B, to determine whether they provide an inventive
concept, i.e., whether the additional elements or combination of elements
amounts to significantly more than the judicial exception itself; only then, is
the claim patent eligible. 2019 Revised Guidance, 84 Fed. Reg. at 56.
Here, in rejecting the pending claims under § 101, the Examiner
determined that claim 1 recites a method of organizing human activity (i.e.,
“a series of steps undertaken as part of performing a commercial interaction
for selecting and serving content items responsive to a user request for a
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content item”) and, therefore, an abstract idea, and that the claim does not
include additional elements that integrate the recited abstract idea into a
practical application (Final Act. 5–7). The Examiner also determined that
claim 1 does not include additional elements sufficient to amount to
significantly more than the abstract idea itself (id. at 7–8). And the
Examiner determined that the remaining claims are patent ineligible for
substantially similar reasons (id. at 8–9).
Step One of the Mayo/Alice Framework (2019 Revised Guidance, Step 2A)
We are not persuaded by Appellant’s argument that the Examiner
erred in determining that claim 1 is directed to an abstract idea (Appeal
Br. 5–11). The Federal Circuit has explained that “the ‘directed to’ inquiry
applies a stage-one filter to claims, considered in light of the specification,
based on whether ‘their character as a whole is directed to excluded subject
matter.’” Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir.
2016) (quoting Internet Patents Corp. v. Active Network, Inc., 790 F.3d
1343, 1346 (Fed. Cir. 2015)). It asks whether the focus of the claims is on a
specific improvement in relevant technology or on a process that itself
qualifies as an “abstract idea” for which computers are invoked merely as a
tool. See id. at 1335–36. Here, it is clear from the Specification (including
the claim language) that claim 1 focuses on an abstract idea, and not on any
improvement to technology and/or a technical field.
The Specification is titled “DEVICE-BASED FILTERING OF
CONTENT ITEMS ASSOCIATED WITH MOBILE APPLICATIONS,”
and describes, in the Background section, that in a networked environment,
e.g., the Internet, first-party content providers can provide information for
public presentation on resources; the first-party content can include text,
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video, and/or audio information provided by a first-party content provider,
and may be a webpage requested by a client device or a stand-alone
application (e.g., a video game, a chat program, etc.) running on the client
device (Spec. ¶ 2). Additional third-party content also can be provided by
third-party content providers for presentation on the client device together
with the first-party content provided by the first-party content provider, and
may be “a public service announcement or advertisement that appears in
conjunction with a requested resource, such as a webpage . . . or with an
application (e.g., an advertisement within a game)” (id.).
The Specification discloses that in one implementation, a webpage
server and/or a client device, responsive to receiving a request to access a
webpage, communicates with a data processing system, e.g., a content item
selection system, to request that a content item be presented with the
requested webpage (Spec. ¶ 16). In some instances, the content item may be
associated with a mobile application for a client device; yet, with the wide
variety of available client devices, certain mobile applications may be
incompatible with one or more client devices based, for example, on an
operating system, an operating system version, or hardware configurations
of the one or more client devices (id. ¶ 28). The Specification describes that
to remove content items based on the incompatibility of a corresponding
mobile application with a client device, a device filter is generated by
comparing a set of required features for the mobile application (e.g., a
minimum operating system version, one or more eligible countries, and/or
one or more features of a mobile device) with data identifying several
known mobile devices and their associated features (id. ¶ 29). Based on the
comparison, the device filter can include a set of identifiers for those mobile
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devices that are incompatible with the mobile application, and can be used to
filter out content items based on “data identifying a set of device features for
a requesting mobile device or an identifier for the mobile device” (id.).
Consistent with this disclosure, claim 1 recites a method comprising:
(1) accessing a set of required features for a mobile application and a data
structure identifying a set of known mobile devices, each associated with a
set of features, i.e., “accessing a set of required features for a mobile
application” and “accessing a data structure identifying a plurality of known
mobile devices each associated with a set of features” (steps (a) and (b));
(2) generating a device filter based on a comparison of the set of required
features to the associated set of features for each of the mobile devices, i.e.,
generating a device filter based on a comparison of the set of
required features to the associated set of features of the data
structure for each of the plurality of known mobile devices of the
data structure, the device filter comprising a set of identifiers for
one or more of the plurality of known mobile devices that are
incompatible with the mobile application based on the
comparison
(step (c)); (3) “receiving a request for a content item from a mobile device,
the request comprising data identifying a set of device features or an
identifier for the mobile device” (step (d)); (4) filtering out a first content
item from a set of eligible content items associated with the mobile
application based on the set of mobile device features or the mobile device
identifier, i.e.,
filtering out a first content item associated with the mobile
application from a set of eligible content items for a content item
auction based on the generated device filter and at least one of:
(i) the data identifying the set of device features or (ii) the
identifier for the mobile device of the request
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(step (e)); and (5) selecting a second content item from the filtered set of
eligible content items and serving the second content item to the mobile
device, i.e., “selecting a second content item from the filtered set of eligible
content items via the content item auction; and serving the selected second
content item to the mobile device responsive to the received request”
(steps (f) and (g)).
Applying the 2019 Revised Guidance, Appellant argues, without
conceding, that even if claim 1 recites an abstract idea, claim 1 is not
“directed to” an abstract idea because the claim includes additional elements
that integrate any recited abstract idea into a practical application, i.e., that
claim 1, as a whole, is directed to a technological improvement (Appeal
Br. 5–11).3
Appellant characterizes the practical application as “device-based
filtering of content for a content selection, thereby reducing bandwidth and
processing requirements and avoiding the transfer and storage of
incompatible content items, to improve operation of the computing systems

3 The 2019 Revised Guidance references MANUAL OF PATENT EXAMINING
PROCEDURE, Ninth Edition (rev. Jan 2018) (available at
https://mpep.uspto.gov/RDMS/MPEP/E9_R-08.2017.) § 2106.05(a)–(c) and
(e) in non-exhaustively listing considerations indicative that an additional
element or combination of elements may have integrated the recited judicial
exception into a practical application. 2019 Revised Guidance, 84 Fed. Reg.
at 55. For example, an additional element may have integrated the judicial
exception into a practical application if the additional element (1) reflects an
improvement in the functioning of a computer or an improvement to other
technology or technical field; (2) implements the judicial exception with, or
uses the judicial exception with, a particular machine or manufacture
integral to the claim; or (3) effects a transformation or reduction of an article
to a different state or thing. Id.
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and network” (Appeal Br. 9). Appellant also maintains that by proactively
identifying mobile devices that are incapable of utilizing specific content
items and removing the corresponding content items from the set of eligible
content items, the claimed invention reduces latency, increases the speed at
which a content item selection system may select and serve a content item
responsive to a request from a client device, and improves the speed of
machine learning models based on eliminating the additional data that would
have been generated by serving a content item to an incompatible device (id.
at 7 (citing Spec. ¶¶ 28, 30)).
Appellant argues that claim 1, as such, is directed to an improvement
in technology (Appeal Br. 7). But we are not persuaded that filtering out
incompatible content items, as called for in claim 1, is a technological
improvement as opposed to an improvement to the abstract idea of selecting
and serving content items to a mobile device, which is not enough for patent
eligibility. See SAP Am., Inc. v. InvestPic, LLC, 898 F.3d 1161, 1170 (Fed.
Cir. 2018) (“[P]atent law does not protect such claims [i.e., claims to an
asserted advance in the realm of abstract ideas], without more, no matter
how groundbreaking the advance.”). This is particularly true where, as here,
there is no indication that the operations recited in claim 1 require any
specialized computer hardware or other inventive computer components,
invoke any allegedly inventive programming, or that the claimed invention
is implemented using other than generic computer components as tools
operating in their normal, routine, and ordinary capacity.
The removal of content items based on incompatibility may well
manifest some reduction in latency and in bandwidth, processing, and
transfer and storage requirements, and may also increase the speed at which
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content items are selected and served to a client device. We, however, agree
with the Examiner that these alleged improvements result “not from any
underlying technical procedure (such as compressing or formatting data
to enable more expedient transmission), but instead from the mere
removal of data to be utilized in the content auction” (Ans. 9). In other
words, this is a relative improvement based on the amount of data being
processed and stored, and does not reflect a technological improvement to
the underlying processes themselves. Indeed, as the Examiner observes, the
Specification “provides no detail with respect to any technical procedures
for how this [i.e., the alleged improvements] may be accomplished (for
example, by compressing or formatting data in a particular way, or a
procedure of similar nature)” (Final Act. 4). “Instead, the [S]pecification
relies solely on filtering out certain data such that less data is [sic] sent over
the network” (id.).
Attempting to draw an analogy between claim 1 and hypothetical
claim 1 of Example 40 of the USPTO’s “Subject Matter Eligibility
Examples: Abstract Ideas,”4 Appellant argues that “avoiding unnecessary
data flow over a network is a technical improvement to the system” (Appeal
Br. 8). Yet, the USPTO did not conclude that hypothetical claim 1 in
Example 40 is patent eligible because the claimed method avoids excess
traffic volume on the network. Instead, the Office concluded that
hypothetical claim 1 is patent eligible because the combination of additional
elements integrates the judicial exception (i.e., the mental process of
comparing collected traffic data to a predetermined threshold) into a

4 Available at https://www.uspto.gov/sites/default/files/documents/
101_examples_37to42_20190107.pdf
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practical application — improved network monitoring. No comparable
situation is present here.
We also are not persuaded of Examiner error by Appellant’s argument
that “the Examiner has swept every limitation in the claims into the alleged
abstract idea under Step 2A, Prong One, in order to avoid considering these
limitations under Step 2A, Prong Two” (Appeal Br. 9). Appellant maintains
that the additional elements that must be considered include “at least
accessing required features and data structures, generating device filters,
receiving requests for content items, and filtering content items from a set of
eligible content items” (id. at 11). But, we agree with the Examiner that
these are not additional elements; instead, they are part of the abstract idea
itself. The Examiner determined, and we agree, that the additional elements
recited in claim 1 beyond the abstract idea include “a mobile application”
and “a data structure” — elements that, as the Examiner observes, are
recited at a high level of generality, i.e., as generic computer components
(Final Act. 6–7; see also Spec. ¶ 24 (generally describing an application as a
webpage or other resource); id. ¶ 53 (describing that the data structure “may
be a table or other data structure that includes a unique identifier for each of
the known mobile devices . . . and data indicative of a set of features or other
data for the known mobile devices”); id. ¶ 86 (describing that “[a] computer
program (also known as a program, software, software application, script, or
code) can be written in any form of programming language, including
compiled or interpreted languages, declarative or procedural languages, and
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it can be deployed in any form . . . suitable for use in a computing
environment.”)).5
We conclude, for the reasons outlined above, that claim 1 recites a
method of organizing human activity, i.e., an abstract idea, and that the
additional elements recited in the claim beyond the abstract idea are no more
than generic computer components used as tools to perform the recited
abstract idea. As such, they do not integrate the abstract idea into a practical
application. See Alice Corp., 573 U.S. at 223–24 (“[W]holly generic
computer implementation is not generally the sort of ‘additional featur[e]’
that provides any ‘practical assurance that the process is more than a drafting
effort designed to monopolize the [abstract idea] itself.’” (quoting Mayo,
566 U.S. at 77)). Accordingly, we agree with the Examiner that claim 1 is
directed to an abstract idea.
Step Two of the Mayo/Alice Framework (2019 Revised Guidance, Step 2B)
Having determined under step one of the Mayo/Alice framework that
claim 1 is directed to an abstract idea, we next consider under Step 2B of the
2019 Revised Guidance, the second step of the Mayo/Alice framework,
whether claim 1 includes additional elements or a combination of elements
that provides an “inventive concept,” i.e., whether an additional element or
combination of elements adds specific limitations beyond the judicial
exception that are not “well-understood, routine, conventional activity” in
the field (which is indicative that an inventive concept is present) or simply
appends well-understood, routine, conventional activities previously known

5 The additional elements also include a “mobile device,” which the
Specification describes “may be any form of portable electronic device that
includes a data processor and a memory” (Spec. ¶ 33).
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to the industry to the judicial exception. 2019 Revised Guidance,
84 Fed. Reg. at 56.
Appellant maintains here, as described, that the additional elements
that must be considered include “at least accessing required features and data
structures, generating device filters, receiving requests for content items, and
filtering content items from a set of eligible content items” (Appeal Br. 11).
But these features are part of the abstract idea; they are not additional
elements to be considered when determining whether claim 1 includes
additional elements or a combination of elements sufficient to amount to
significantly more than the judicial exception.
It could not be clearer from Alice, that under step two of the
Mayo/Alice framework, the elements of each claim are considered both
individually and “as an ordered combination” to determine whether the
additional elements, i.e., the elements other than the abstract idea itself,
“transform the nature of the claim” into a patent-eligible application. Alice
Corp., 573 U.S. at 217 (citation omitted); see Mayo, 566 U.S. at 72–73
(requiring that “a process that focuses upon the use of a natural law also
contain other elements or a combination of elements, sometimes referred to
as an ‘inventive concept,’ sufficient to ensure that the patent in practice
amounts to significantly more than a patent upon the natural law itself”
(emphasis added) (citation omitted)). In other words, the inventive concept
under step two of the Mayo/Alice test cannot be the abstract idea itself:
It is clear from Mayo that the “inventive concept” cannot be the
abstract idea itself, and Berkheimer . . . leave[s] untouched the
numerous cases from this court which have held claims ineligible
because the only alleged “inventive concept” is the abstract idea.
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Berkheimer v. HP Inc., 890 F.3d 1369, 1374 (Fed. Cir. 2018) (Moore, J.,
concurring); see also BSG Tech LLC v. BuySeasons, Inc., 899 F.3d 1281,
1290 (Fed. Cir. 2018) (“It has been clear since Alice that a claimed
invention’s use of the ineligible concept to which it is directed cannot supply
the inventive concept that renders the invention ‘significantly more’ than
that ineligible concept.”).
Here, the only claim elements recited in claim 1 beyond the abstract
idea are “a mobile application”; “a data structure”; and “a mobile device,”
i.e., generic computer components. Appellant cannot reasonably maintain
that there is insufficient factual support for a determination that the operation
of these components is well-understood, routine, or conventional, where, as
here, there is nothing in the Specification to indicate that the operations
recited in claim 1 require any specialized hardware or inventive computer
components or that the claimed invention is implemented using other than a
generic computer component to perform generic computer functions, e.g.,
receiving, transmitting, and processing information. Indeed, the Federal
Circuit, in accordance with Alice, has “repeatedly recognized the absence of
a genuine dispute as to eligibility” where claims have been defended as
involving an inventive concept based “merely on the idea of using existing
computers or the Internet to carry out conventional processes, with no
alteration of computer functionality.” Berkheimer, 890 F.3d at 1373
(Moore, J., concurring) (internal citations omitted); see also BSG Tech,
899 F.3d at 1291 (“BSG Tech does not argue that other, non-abstract
features of the claimed inventions, alone or in combination, are not well-
understood, routine and conventional database structures and activities.
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Accordingly, the district court did not err in determining that the asserted
claims lack an inventive concept.”).
We are not persuaded, on the present record, that the Examiner erred
in rejecting independent claim 1 under 35 U.S.C. § 101. Therefore, we
sustain the Examiner’s rejection of claim 1, and claims 2–20, which fall with
claim 1.
CONCLUSION
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–20 101 Eligibility 1–20
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED