Haumont, Serge Rene. et al.

Patent Trials and Appeals Board

Mar 16, 2020

12732506 - (D) (P.T.A.B. Mar. 16, 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.
12/732,506 03/26/2010 Serge Rene Haumont P3890US00 3287
11764 7590 03/16/2020
Ditthavong & Steiner, P.C.
44 Canal Center Plaza
Suite 305
Alexandria, VA 22314
EXAMINER
TOKARCZYK, CHRISTOPHER B
ART UNIT PAPER NUMBER
3622
NOTIFICATION DATE DELIVERY MODE
03/16/2020 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):
Nokia.IPR@nokia.com
docket@dcpatent.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SERGE RENE HAUMONT, KIMMO A. KANGAS, and
KEVIN FALLIS
Appeal 2019-002637
Application 12/732,506
Technology Center 3600
Before JEFFREY S. SMITH, HUNG H. BUI, and
PHILLIP A. BENNETT, Administrative Patent Judges.
BENNETT, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1, 5, 6, and 66. Claims 11–62, 64 and
65 have been canceled. The rejection of claims 2–4, 7–10, 63, 67, and 68
has been withdrawn in the Examiner’s Answer. We have jurisdiction under
35 U.S.C. § 6(b).

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42(a). Appellant identifies the real party in interest as HERE
Global International B.V. Appeal Br. 1.
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We affirm.
CLAIMED SUBJECT MATTER
The claims are directed the use of soft limits for advertisement
serving.
Claims 1–10, 63, and 66–68 are pending. Claims 1, 6, and 66 are
independent. Claim 1, reproduced below, is illustrative of the claimed
subject matter:
1. A method for caching advertisements at a mobile device
based on a soft limit, the method comprising:
receiving, utilizing at least one interface, an advertisement
at the mobile device via a communication network-from an
external source;
caching the received advertisement at a cache of the
mobile device;
determining a hard limit associated with the cached
advertisement, wherein the hard limit includes a validity time
period, a maximum number of impressions utilizing the cached
advertisement or a combination thereof after which the
advertisement expires and is cleared from the cache of the mobile
device,
determining a soft limit associated with the cached
advertisement, wherein the soft limit includes a soft time period,
a soft number of impressions utilizing the cached advertisement
or a combination thereof, wherein the soft time period is less than
the validity time period, wherein the soft number of impressions
is less than the maximum number of impressions,
determining, by a processor of the mobile device, that the
soft limit associated with the cached advertisement has been met
before the hard limit associated with the cached advertisement is
met;
initiating, in response to determining that the soft limit has
been met, a process for requesting and caching one or more other
advertisements at the mobile device prior to determining the hard
limit associated with the cached advertisement is met;
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transmitting, utilizing the at least one interface, an
advertisement request for the one or more other advertisements
based on the initiating; and
presenting the cached advertisement at a display of the
mobile device when or after the soft limit has been met and
before the hard limit is met.
Appeal Br. 15–16 (Claims Appendix).
REJECTION2
Claims 1, 5, 6, and 66 stand rejected under 35 U.S.C. § 101 as being
directed to ineligible subject matter. Final Act. 2; Ans. 3.
ANALYSIS
Standard for Patent Eligibility
In issues involving subject matter eligibility, our inquiry focuses on
whether the claims satisfy the two-step test set forth by the Supreme Court in
Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 573 U.S. 208 (2014). The Court
instructs us to “first determine whether the claims at issue are directed to a
patent-ineligible concept,” id. at 218 , and, in this case, the inquiry centers
on whether the claims are directed to an abstract idea. If the initial threshold
is met, we then move to the second step, in which we “consider the elements
of each claim both individually and ‘as an ordered combination’ to
determine whether the additional elements ‘transform the nature of the
claim’ into a patent-eligible application.” Id. at 217–18 (quoting Mayo

2 Claims 1–10, 63, and 66–68 were rejected under pre-AIA 35 U.S.C. §
102(e) as being anticipated by Macaluso (U.S. 2013/0232008 A1; published
Sep. 5, 2013). Final Act. 7–16. However, the Examiner has withdrawn (1)
the § 102(e) rejection of claims 1–10, 63, and 66–68, and the § 101 rejection
of dependent claims 2–4, 7–10, 63, 67, and 68. Ans. 3. As such, these
rejections are no longer on appeal.
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Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 79, 78 (2012)).
The Court describes the second step as a search for “an ‘inventive
concept’—i.e., an element or combination of elements that is ‘sufficient to
ensure that the patent in practice amounts to significantly more than a patent
upon the [ineligible concept] itself.’” Id. (quoting Mayo, 566 U.S. at 72–
73).
The USPTO has published revised guidance on the application of
§ 101 consistent with Alice and subsequent Federal Circuit decisions.
USPTO, 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed.
Reg. 50 (Jan. 7, 2019) (“Guidance”). Under the 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) (referred to Step 2A, prong 1 in
the Guidance); and
(2) additional elements that integrate the judicial exception into
a practical application (see MPEP § 2106.05(a)–(c), (e)–(h))
(referred to Step 2A, prong 2 in the Guidance).
See Guidance, 84 Fed. Reg. at 52–55. Only if a claim (1) recites a judicial
exception and (2) does not integrate that exception into a practical
application, do we then move to Step 2B of the Guidance. There, we look to
whether the claim:
(3) adds a specific limitation beyond the judicial exception that
is not “well-understood, routine, conventional” in the field (see
MPEP § 2106.05(d)); or
(4) simply appends well-understood, routine, conventional
activities previously known to the industry, specified at a high
level of generality, to the judicial exception.
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See Guidance, 84 Fed. Reg. at 56.
Examiner’s Findings and Conclusion
The Examiner rejects claim 1 as being directed to a judicial exception
without significantly more under Alice. Final Act. 2–7. In the first step of
the Alice inquiry, the Examiner determines:
[T]he concepts set forth in claims 1, 6, and 66 relate to an “idea”
of itself, “certain methods of organizing human activity,” and
“mathematical relationships/formulas” and are not meaningfully
different than those “ideas,” “certain methods of organizing
human activity,” and “mathematical relationships/formulas”
found by the courts to be abstract ideas.
Final Act. 5.
Under Alice step 2, the Examiner determines that the claim does “not
include additional elements that are sufficient to amount to ‘significantly’
more than the judicial exception” because:
Evaluated individually, the additional elements do not amount to
significantly more than a judicial exception. The additional
computer elements identified above—the mobile device having
a cache, a processor, one or more sensors, and a display on which
advertisements are presented, the communication network over
which advertisements and requests are sent and received, the
external source, the memory, the non-transitory computer-
readable storage medium, and the apparatus—are recited at a
high level of generality. Inclusion of these additional computer
elements in the claims amounts to mere instructions to
implement the identified abstract ideas on a computer. Further,
these additional computer elements provide conventional
computer functions that do not add meaningful limits to
practicing the abstract idea. Generic computer components
recited as performing generic computer functions that are well-
understood, routine and conventional activities amount to no
more than implementing the abstract idea with a computerized
system. The use of generic computer components to send and
receive advertisements and information over a communication
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network is likewise the well-understood, routine, and
conventional computer functions of receiving or transmitting
data over a network and does not impose any meaningful limit
on the computer implementation of the identified abstract ideas.
Similarly, the use of conventional computer components to
display advertisements merely adds insignificant, extrasolution
activities to the identified abstract ideas that does not impose any
meaningful limit on the computer implementation of the abstract
idea. And rotating the display of the advertisements or using
sensors to monitor common characteristics of a mobile device
simply appends well-understood, routine and conventional
activities previously known to the industry, specified at a high
level of generality, to the identified judicial exceptions. Thus,
taken alone, the additional elements do not amount to
significantly more than a judicial exception.
Final Act. 6.
Appellant’s Contentions
Appellant’s Reply Brief was filed subsequent to the issuance of the
Guidance. Appellant’s argument focuses on Step 2A, prong 2 of the
guidance. Reply Br. 2–4. Appellant argues the “initiating,” “transmitting,”
and “presenting” limitations of claim 1 integrate any recited abstract idea
into a practical application because
The claimed manipulative steps provide a technological advance
by improving communication technology, i.e., by efficiently
controlling the presentation of advertisements to a user utilizing
soft limits, i.e., a parameter set, e.g., validity time, number of
impressions, etc., to initiate fetching of additional advertisements
and storing them in the cache. Consequently, the additional
element integrates the judicial exception into a practical
application.
Reply Br. 4. Appellant further argues that the claims as a whole reflect a
technological improvement because “the claimed invention is directed to
improve communication technology by efficiently controlling the
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presentation of advertisements to a user utilizing soft limits” (Reply Br 4),
and that the Specification describes in detail the technological problems
addressed by the invention. Reply Br. 5–6 (citing Spec. ¶¶ 30–33).
Appellant also challenges the Examiner’s determination under the
second step of the Alice inquiry. Appeal Br. 18–22. Appellant argues the
Examiner has failed to provide sufficient evidentiary support under
Berkheimer v. HP Inc., 890 F.3d 1369 (Fed. Cir. 2018). Appellant further
asserts the claims include an inventive concept as an ordered combination,
because “these claim elements, considered individually and in combination
with the other claim elements, particularly limit the application of any
asserted abstract idea to a controlled presentation of advertisements to a user
utilizing soft limits, and make claims 1, 5, and 66 as a whole significantly
more than any abstract idea itself.” Reply Br. 7.
Revised Guidance, Step 2A, Prong One 3
The Judicial Exception
Applying the Guidance, we are not persuaded the Examiner has erred
in rejecting claim 1 as being directed to patent-ineligible subject matter. The
Guidance instructs us first to determine whether any judicial exception to
patent eligibility is recited in the claim. The Guidance identifies three
judicially-excepted groupings: (1) mathematical concepts, (2) certain
methods of organizing human activity such as fundamental economic
practices and commercial interactions (including advertising, marketing or
sales activities or behaviors; business relations), and (3) mental processes.

3 Throughout this opinion, we give the claim limitations the broadest
reasonable interpretation consistent with the Specification. See In re Morris,
127 F.3d 1048, 1054 (Fed. Cir. 1997).
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We focus our analysis on the second grouping—certain methods of
organizing human activity, and in particular, advertising.4
Claim 1 recites the following limitations: (1) “receiving . . . an
advertisement . . . from an external source,” (2) “caching the received
advertisement,” (3) “determining a hard limit associated with the . . .
advertisement wherein the hard limit includes a validity time period, a
maximum number of impressions utilizing the . . . advertisement or a
combination thereof after which the advertisement expires,”
(4) “determining a soft limit associated with the . . . advertisement, wherein
the soft limit includes a soft time period, a soft number of impressions
utilizing the . . . advertisement or a combination thereof, wherein the soft
time period is less than the validity time period, wherein the soft number of
impressions is less than the maximum number of impressions,”
(5) “determining . . . that the soft limit associated with the cached
advertisement has been met before the hard limit associated with the cached
advertisement is met,” and (6) “initiating in response to determining that the
soft limit has been met, a process for requesting and caching one or more
other advertisements at the mobile device prior to determining the hard limit
associated with the cached advertisement is met.” Appeal Br. 15 (Claims
Appendix). These limitations recite a process for engaging in advertising,

4 Appellant’s arguments against the § 101 rejection are made to the claims
generally. We treat claim 1 as representative. 37 C.F.R. § 41.37(c)(1)(iv)
(2018) (“When multiple claims subject to the same ground of rejection are
argued as a group or subgroup by Appellant, the Board may select a single
claim from the group or subgroup and may decide the appeal as to the
ground of rejection with respect to the group or subgroup on the basis of the
selected claim alone.”).
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which is a fundamental economic practice as a certain method of organizing
human activity under the Guidance.
For example, limitations (1) and (2), which generally recite receiving
and storing an advertisement, are activities that would be typical of most
advertisement selection processes, as the advertisements must be gathered in
order to be evaluated and selected for placement. Limitations (3) and (4),
which generally recite determining a hard and soft limit for the
advertisement, reflect the familiar practice of specifying how often and/or
for how long a particular advertisement should run. Similarly, limitations
(5) and (6), which recite evaluating whether the advertisement has reached
the limits defined in the prior steps and initiating the selection of new
advertisements, also reflect steps often performed in the course of
implementing advertising practices.
Accordingly, we conclude the claimed process for caching
advertisements set forth in claim 1 recites a judicial exception of advertising,
which is a fundamental economic practice as a certain method of organizing
human activity under the Guidance.
Revised Guidance, Step 2A, Prong Two
Integration of the Judicial Exception into a Practical Application
Having determined that the claim 1 recites a judicial exception, our
analysis under the Guidance turns now to determining whether there are
additional elements that integrate the judicial exception into a practical
application. See Guidance, 84 Fed. Reg. at 54–55 (citing MPEP
§ 2106.05(a)–(c), (e)–(h)).
Under the Guidance, limitations that are indicative of “integration into
a practical application” include:
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1. Improvements to the functioning of a computer, or to any other
technology or technical field — see MPEP § 2106.05(a);
2. Applying the judicial exception with, or by use of, a particular
machine — see MPEP § 2106.05(b);
3. Effecting a transformation or reduction of a particular article to
a different state or thing — see MPEP § 2106.05(c); and
4. Applying or using the judicial exception in some other
meaningful way beyond generally linking the use of the judicial
exception to a particular technological environment, such that the
claim as a whole is more than a drafting effort designed to
monopolize the exception — see MPEP § 2106.05(e).

In contrast, limitations that are not indicative of “integration into a
practical application” include:
1. Adding the words “apply it” (or an equivalent) with the judicial
exception, or merely include instructions to implement an
abstract idea on a computer, or merely uses a computer as a tool
to perform an abstract idea — see MPEP § 2106.05(f);
2. Adding insignificant extra-solution activity to the judicial
exception — see MPEP § 2106.05(g); and
3. Generally linking the use of the judicial exception to a particular
technological environment or field of use — see MPEP
§ 2106.05(h).

See Guidance, 84 Fed. Reg. at 54–55 (“Prong Two”).
Additional to the abstract limitations identified above, claim 1 recites
that (a) various process steps are performed on or by “a mobile device,” (b)
data is received and transmitted “using at least one interface” and “via a
communication network,” (c) certain operations are performed by “a
processor of the mobile device,” and (d) the advertisements are presented on
“a display of the mobile device.” We conclude that these limitations are
insufficient to integrate the recited judicial exception into a practical
application. Each of these limitations merely recite the use of conventional
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computer technology to implement the otherwise abstract process using a
mobile phone connected to a computer network. It is well-established,
however, that the use of generic technology to implement an abstract idea is
insufficient to integrate it into a practical application. See MPEP 2106.05(f)
(explaining that it is not indicative of integration into a practical application
where the claims “merely include instructions to implement an abstract idea
on a computer, or merely uses a computer as a tool to perform an abstract
idea”).
Claim 1 also recites limitations additional to the generic computer
components identified above. Specifically, claim 1 recites:
(e) “transmitting, utilizing the at least one interface, an advertisement
request for the one or more other advertisements based on the initiating,”
and (f) “presenting the cached advertisement at a display of the mobile
device when or after the soft limit has been met and before the hard limit is
met.” Appeal Br. 15–16 (Claims Appendix).
Appellant argues these limitations integrate the abstract advertising
process into a practical application because they reflect an improvement to
communication technology “by efficiently controlling the presentation of
advertisements to a user utilizing soft limits” and that the “claims recite
features that carve out an improved specific way of caching advertisements
that provides a specific technological advance in the art.” Reply Br. 4. We
disagree.
Limitations (e) and (f), which recite transmitting an advertisement
request over a network for additional advertisements and displaying the
cached advertisement, do not improve the functioning of a computer or
reflect a technological improvement. Rather, they merely reflect the use of a
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computer as a tool to perform an abstract idea (see MPEP § 2106.05(f)), and
are better understood as insignificant post-solution activity because they
amount only to data gathering and outputting of information performed in
conjunction with the abstract advertising process recited in the claim. Cf.
MPEP § 2106.05(g) (“An example of pre-solution activity is a step of
gathering data for use in a claimed process.”). Accordingly, we conclude
claim 1 is directed to a judicial exception.
The Inventive Concept – Step 2B
Having determined the claim is directed to a judicial exception, we
proceed to evaluating whether the claim adds a specific limitation beyond
the judicial exception that is not “well-understood, routine, conventional” in
the field (see MPEP § 2106.05(d)) or simply appends well-understood,
routine, conventional activities previously known to the industry, specified
at a high level of generality, to the judicial exception. See Guidance, 84 Fed.
Reg. at 56.
Our review of the Examiner’s rejection under Step 2B is guided by the
revised examination procedure published online by the USPTO on April 19,
2018, entitled “Changes in Examination Procedure Pertaining to Subject
Matter Eligibility, Recent Subject Matter Eligibility Decision (Berkheimer v.
HP, Inc.)” (“Berkheimer Memorandum”), which imposed a new fact finding
requirement for Examiners applicable to rejections under § 101. Consistent
with the Berkheimer Memorandum, we agree with the Examiner that the
claim does not add specific limitations beyond what is well-understood,
routine, and conventional.
Appellant argues the Examiner has failed to satisfy the Berkheimer
requirements by failing to provide evidence that several limitations are not
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well-understood, routine, and conventional under § 101. Reply Br. 7. We
are not persuaded of Examiner error. Appellant asserts that three limitations
are not well-understood, routine, and conventional. The first limitation
relied upon by Appellant, “initiating . . . a process for requesting and caching
. . .” forms part of the abstract idea itself. In Step 2B, however, our analysis
focuses on the additional elements—those beyond what is abstract. SAP
Am. Inc. v. InvestPic, LLC, 898 F.3d 1161, 1168 (Fed. Cir. 2018) (“What is
needed is an inventive concept in the non-abstract application realm.”). The
second and third limitations relied upon by Appellant, the “transmitting” and
“presenting” limitations addressed in Step 2A, prong 2, fail to supply the
requisite inventive concept under Step 2B because Appellant’s Specification
provides the requisite evidence that the “transmitting” and “presenting”
limitations are well-understood, routine, and conventional.
For example, the Specification indicates that network communication
between system components is performed “using well known, new or still
developing protocols.” Spec. ¶ 40 (italics added). Thus, the Specification
acknowledges the conventional nature of transmitting data requests. The
Specification similarly describes the presenting of content as being
implemented on a conventional computing device. Spec. ¶ 39 (“The UE 101
is any type of mobile terminal, fixed terminal, or portable terminal including
a mobile handset, station, unit, device, multimedia computer, multimedia
tablet, Internet node, communicator, desktop computer, laptop computer,
Personal Digital Assistants (PDAs), audio/video player, digital
camera/camcorder, positioning device, television receiver, radio broadcast
receiver, electronic book device, game device, or any combination
thereof.”). As such, we are not persuaded the Examiner erred in finding the
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additional claim elements are well-understood, routine, and convention
under Step 2B of the Guidance.

CONCLUSION
Because the Examiner correctly concluded claim 1 is directed to a
judicial exception, and because Appellant does not identify any error in the
Examiner’s determination under step 2B of the Guidance, we sustain the
rejection of representative claim 1 under 35 U.S.C. § 101, as well as of the
remaining claims.
We affirm Examiner’s rejection.
DECISION SUMMARY
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1, 5, 6, 66 101 patent eligibility 1, 5, 6, 66

TIME PERIOD FOR RESPONSE
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