InsightExpress, Inc.

Patent Trials and Appeals Board

Dec 2, 2020

2020001953 (P.T.A.B. Dec. 2, 2020)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
14/629,261 02/23/2015 Stephen Jepson 50442-0557 9216
29989 7590 12/02/2020
HICKMAN PALERMO BECKER BINGHAM LLP
1 ALMADEN BOULEVARD
FLOOR 12
SAN JOSE, CA 95113
EXAMINER
PRASAD, NANCY N
ART UNIT PAPER NUMBER
3624
NOTIFICATION DATE DELIVERY MODE
12/02/2020 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):
usdocket@h35g.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte STEPHEN JEPSON, JODY FRANCIS POWLETTE, and
MICHAEL QUEENAN
____________

Appeal 2020-001953
Application 14/629,261
Technology Center 3600
____________

Before ROBERT E. NAPPI, JOHNNY A. KUMAR, and
CATHERINE SHIANG, Administrative Patent Judges.

SHIANG, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1–20, which are all the claims pending and rejected in the
application. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.

1 We use “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42.
Appellant identifies DynamicLogic LLC as the real party in interest. App.
Br. 2.

Appeal 2020-001953
Application 14/629,261

2

STATEMENT OF THE CASE
Introduction
The present invention relates to “web survey recruitment systems.”
Spec. ¶ 2. In particular,
[t]echniques are provided for replacing survey-invitation tags,
which previously had to be created and managed on a per-
campaign basis, with a single “redirector” tag. The redirector
tag recruits survey participants, facilitates proper grouping for
each participant, and tracks which surveys have been
completed. A single redirector tag handles these functions for
multiple surveys on a site.
Spec. ¶ 22. Claim 1 is exemplary:
1. A method of administering surveys, the method
comprising:
a redirector receiving cookie information from a client;
wherein the client sent the cookie information in
response to a particular web page being decoded at said client;
wherein the cookie information includes first data for
selecting a survey, wherein the first data includes one or more
items from the following set of items:
an identifier of a particular ad campaign, of a
plurality of ad campaigns, that is associated with one or
more content items that were sent to the client before the
particular web page was decoded at the client,
a URL of the particular web page, and
information identifying one or more particular
advertisements that have been loaded at the client;
the redirector maintaining second data for selecting a
survey, wherein the second data includes one or more items
from the following set of items:
information identifying one or more surveys in
which a user of the client has participated,
survey start times, and
survey expiration times;
Appeal 2020-001953
Application 14/629,261

3
the redirector selecting a particular survey of a plurality
of surveys based, at least in part, on a particular set of data that
comprises:
one or more items from the first data, and
one or more items from the second data; and
causing an invitation to the particular survey to be
displayed on the client;
wherein the method is performed by one or more
computing devices.

Rejections2

Claims
Rejected
35
U.S.C. §
References
1–20 101 Not Applicable
1–20 103 Nyhan (2006/0129457 A1; published
June 15, 2006), Skinner (2007/0162379
A1; published July 12, 2007)

PRINCIPLES OF LAW
Section 101 of the Patent Act provides “[w]hoever invents or
discovers any new and useful process, machine, manufacture, or
composition of matter, or any new and useful improvement thereof, may
obtain a patent therefor, subject to the conditions and requirements of this
title.” 35 U.S.C. § 101. 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. E.g., Alice Corp. Pty.

2 Throughout this opinion, we refer to the (1) Final Office Action dated
November 2, 2017 (“Final Act.”); (2) Appeal Brief dated July 13, 2018
(“Appeal Br.”); (3) Examiner’s Answer dated December 13, 2018 (“Ans.”);
and (4) Reply Brief dated January 28, 2019 (“Reply Br.”).
Appeal 2020-001953
Application 14/629,261

4
Ltd. v. CLS Bank Int’l, 573 U.S. 208, 216 (2014) (internal quotation marks
and citation omitted).
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. Id. at 217–18 (citing Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 566 U.S. 66, 75–77 (2012)). 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. Kappos, 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 (Gottschalk v. Benson, 409 U.S. 63, 67 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as “molding rubber products” (Diamond v. Diehr, 450 U.S. 175, 191
(1981)); “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 that “[a] claim drawn to subject matter otherwise
statutory does not become nonstatutory simply because it uses a
Appeal 2020-001953
Application 14/629,261

5
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. (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.”).
If the claim is “directed to” an abstract idea, we turn to the second
step of the Alice and Mayo framework, where “we must examine the
elements of the claim to determine whether it contains an ‘inventive
concept’ sufficient to ‘transform’ the claimed abstract idea into a
patent-eligible application.” Alice, 573 U.S. at 221 (citation omitted). “A
claim that recites an abstract idea must include ‘additional features’ to
ensure ‘that the [claim] is more than a drafting effort designed to
monopolize the [abstract idea].’” Id. (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.
The Federal Circuit has described the Alice step-one inquiry as
looking at the “focus” of the claims, their “character as a whole,” and
the Alice step-two inquiry as looking more precisely at what the claim
elements add—whether they identify an “inventive concept” in the
application of the ineligible matter to which the claim is directed. See
Appeal 2020-001953
Application 14/629,261

6
Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir.
2016); Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335–36 (Fed.
Cir. 2016); Internet Patents Corp. v. Active Network, Inc., 790 F.3d
1343, 1346 (Fed. Cir. 2015).

THE GUIDANCE
In 2019, the United States Patent and Trademark Office published
revised guidance on the application of § 101. USPTO, 2019 REVISED
PATENT SUBJECT MATTER ELIGIBILITY GUIDANCE, 84 Fed. Reg. 50 (Jan. 7,
2019) (“Guidance”).3 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) (Step 2A, Prong 1); and
(2) additional elements that integrate the judicial exception into
a practical application (see Manual of Patent Examining
Procedure (“MPEP”) § 2106.05(a)–(c), (e)–(h)) (9th ed. rev.
08.2017 2018) (Step 2A, Prong 2).
Only if a claim (1) recites a judicial exception and (2) does not integrate that
exception into a practical application, do we then look to whether the claim:
(3) adds a specific limitation beyond the judicial exception that
is not “well-understood, routine, conventional” in the field (see
MPEP § 2106.05(d)); or
(4) simply appends well-understood, routine, conventional
activities previously known to the industry, specified at a high
level of generality, to the judicial exception. (Step 2B.)
See Guidance, 84 Fed. Reg. at 54–56.

3 The Guidance was updated in October 2019.
Appeal 2020-001953
Application 14/629,261

7

ANALYSIS
We have reviewed the Examiner’s rejection in light of Appellant’s
contentions and the evidence of record. We concur with Appellant’s
contentions that the Examiner erred in determining claim 1 is patent
ineligible under 35 U.S.C. § 101. See Appeal Br. 8–22; Reply Br. 2–8. For
the reasons stated below, we proceed directly to Step 2A, Prong 2 of the
Guidance.
Even if claim 1 recites an abstract idea (such as administering survey),
the Federal Circuit explains the “directed to” inquiry is not simply asking
whether the claims involve a patent-ineligible concept:
The “directed to” inquiry . . . cannot simply ask whether the
claims involve a patent-ineligible concept, because essentially
every routinely patent-eligible claim involving physical
products and actions involves a law of nature and/or natural
phenomenon—after all, they take place in the physical world.
See Mayo, 132 S.Ct. at 1293 (“For all inventions at some level
embody, use, reflect, rest upon, or apply laws of nature, natural
phenomena, or abstract ideas.”). Rather, 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, 822 F.3d at 1335; see also Diehr, 450 U.S. at 188 (“In determining
the eligibility of respondents’ claimed process for patent protection under
§ 101, their claims must be considered as a whole.”); McRO, Inc. v. Bandai
Namco Games Am. Inc., 837 F.3d 1299, 1314 (Fed. Cir. 2016) (the question
is whether the claims as a whole “focus on a specific means or method that
improves the relevant technology or are instead directed to a result or effect
that itself is the abstract idea and merely invoke generic processes and
machinery”).
Appeal 2020-001953
Application 14/629,261

8
Therefore, we proceed to Step 2A, Prong 2 of the Guidance to
determine whether additional elements of the claim integrate the abstract
idea into a practical application. Such additional elements may “reflect[] an
improvement in the functioning of a computer, or an improvement to other
technology or technical field.” Guidance, 84 Fed. Reg. at 55. We determine
additional elements of claim 1 integrate the abstract idea into a practical
application, as the additional elements
a redirector receiving cookie information from a client;
wherein the client sent the cookie information in
response to a particular web page being decoded at said client;
wherein the cookie information includes . . . a URL of
the particular web page . . . ;
the redirector maintaining second data for selecting a
survey . . . ;
the redirector selecting a particular survey of a plurality
of surveys based, at least in part, on a particular set of data that
comprises:
one or more items from the first data, and
one or more items from the second data; and
causing an invitation to the particular survey to be
displayed on the client;

reflect improvement of computer technology. See Guidance, 84 Fed. Reg.
at 55; see also Core Wireless Licensing S.A.R.L. v. LG Electronics, Inc., 880
F.3d 1356, 1363 (Fed. Cir. 2018) (claims are patent eligible because “the
limitations disclose a specific manner of displaying a limited set of
information to the user . . . these claims recite a specific improvement . . .
resulting in an improved user interface for electronic devices”); Visual
Memory LLC v. NVIDIA Corporation, 867 F.3d 1253, 1259 (Fed. Cir. 2017)
(claims are patent eligible because they “are directed to a technological
improvement: an enhanced computer memory system”); McRO, 837 F.3d at
Appeal 2020-001953
Application 14/629,261

9
1314 (claim 1 is patent eligible because it “is focused on a specific asserted
improvement in computer animation”); Enfish, 822 F.3d at 1336 (claims are
patent eligible because they “are directed to a specific improvement to the
way computers operate”); DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d
1245, 1257 (Fed. Cir. 2014) (claims are patent eligible because “the claimed
solution is necessarily rooted in computer technology”).
In DDR, the Federal Circuit determines “[a]lthough the claims address
a business challenge (retaining website visitors), it is a challenge particular
to the Internet” and “these claims . . . do not merely recite the performance
of some business practice known from the pre-Internet world along with the
requirement to perform it on the Internet.” DDR Holdings, 773 F.3d at
1257. As a result, the DDR court determines the claims are patent eligible
because “the claimed solution is necessarily rooted in computer technology
in order to overcome a problem specifically arising in the realm of computer
networks.” Id.
Similar to the claims in DDR, although claim 1 addresses a business
challenge (administering Internet surveys), “it is a challenge particular to the
Internet” because the prior art problem of multiple tags associated with
Internet campaigns (Spec. ¶¶ 7–8, 13–16) did not exist in the pre-Internet
world. Nor could the invented single “redirector” technique (claim 1; see
also Spec. ¶¶ 22–24) function in the pre-Internet world. Similar to the DDR
claims, claim 1 does “not merely recite the performance of some business
practice known from the pre-Internet world along with the requirement to
perform it on the Internet.” DDR Holdings, 773 F.3d at 1257. As a result,
similar to the DDR claims, claim 1 is patent eligible because it is
“necessarily rooted in computer technology in order to overcome a problem
Appeal 2020-001953
Application 14/629,261

10
specifically arising in the realm of computer networks.” See claim 1; DDR
Holdings, 773 F.3d at 1257; see also Spec. ¶¶ 7–8, 13–16, 22–24.
In particular, claim 1 addresses the problem of integrating and
managing survey-invitation tags associated with Internet campaigns. See
claim 1; see also Spec. ¶¶ 13–16. To that end, claim 1 provides a single
redirector, which replaces prior art’s multiple survey-invitation tags that
were created and managed for Internet campaigns. See claim 1; see also
Spec. ¶¶ 22–24. Specifically, claim 1 recites a method comprising improved
computer-technology steps: “a redirector receiving cookie information from
a client; wherein the client sent the cookie information in response to a
particular web page being decoded at said client; wherein the cookie
information includes . . . a URL of the particular web page . . . ;” “the
redirector maintaining second data for selecting a survey . . . ;” “the
redirector selecting a particular survey of a plurality of surveys based, at
least in part, on a particular set of data that comprises: one or more items
from the first data, and one or more items from the second data;” and
“causing an invitation to the particular survey to be displayed on the client.”
Claim 1; see also Spec. ¶¶ 22–24. Contrary to the detailed computer-
technology steps discussed above, the Examiner incorrectly asserts claim 1
merely “implement[s] the abstract idea on a computer” (Ans. 8).
Instead of adhering to the existing way of managing multiple survey-
invitation tags that were created and managed for Internet campaigns, claim
1 provides an improved technique of creating a single redirector. See claim
1; DDR Holdings, 773 F.3d at 1258–59. Therefore, similar to the claims of
DDR and contrary to the Examiner’s assertions (Ans. 10–11), “[w]hen the
limitations . . . are taken together as an ordered combination, [claim 1
Appeal 2020-001953
Application 14/629,261

11
recites] an invention that is not merely the routine or conventional use of the
Internet.” See claim 1; DDR Holdings, 773 F.3d at 1259.
Finally, it “is also clear that [claim1 does] not attempt to preempt
every application of the idea of” managing Internet surveys. DDR Holdings,
773 F.3d at 1259. “Rather, [claim 1 recites] a specific way” based on the
detailed receiving, maintaining, selecting, and causing steps discussed
above. Id. As a result, claim 1 includes “additional features” that ensure the
claim is “more than a drafting effort designed to monopolize” the abstract
idea. Id. (citation omitted).
Because the additional elements of claim 1 integrate the abstract
idea into a practical application, we determine claim 1 is not directed to an
abstract idea. See Guidance, Step 2A, Prong 2. For similar reasons, each
of claims 2–20 integrates the abstract idea into a practical application,
and is not directed to an abstract idea.
Accordingly, we reverse the Examiner’s rejection of claims 1–20
under 35 U.S.C. § 101.
35 U.S.C. § 1034
We have reviewed the Examiner’s rejection in light of Appellant’s
contentions and the evidence of record. We concur with Appellant’s
contentions that the Examiner erred in finding the cited portions of Nyhan
teach
the redirector maintaining second data for selecting a survey,
wherein the second data includes one or more items from the
following set of items:

4 Appellant raises additional arguments regarding the prior art rejection.
Because the identified issue is dispositive of the appeal with respect to the
prior art rejection, we do not address the additional arguments.
Appeal 2020-001953
Application 14/629,261

12
information identifying one or more surveys in which a
user of the client has participated,
survey start times, and
survey expiration times;
as recited in independent claim 1 (emphasis added). See App. Br. 23–24.
The Examiner finds Nyhan’s paragraphs teach the above limitation:
information identifying one or more surveys in which a user of
the client has participated ([0061]: where Nyhan shows looking
at whether or not the participant is qualified and can be
admitted to the survey),
survey start times, and
survey expiration times,
survey statistics ([0049]: where Nyhan shows comparative
study being performed on statistically relevant number of
individuals, [0060]: where statistically relevant results are
studied, [0066], [0049]: where Nyhan shows study of 2 groups -
exposed group and control group);
Final Act. 13.
We disagree. Turning to claim construction, the disputed limitation
recites “the second data includes one or more items from the following set of
items . . . [1]information identifying one or more surveys in which a user of
the client has participated, [2]survey start times, and [3]survey expiration
times” (emphasis added). To satisfy the limitation “one or more items from
the following set of items,” the Examiner must demonstrate Nyhan teaches
at least one of the three listed items, but is not required to show Nyhan
teaches all three listed items. As pointed out by Appellant, the cited
Appeal 2020-001953
Application 14/629,261

13
Nyhan’s paragraphs 49, 60, and 615 do not teach any of the three listed
items:
Claim 1 recites redirector-maintained data including
second data, which can include “information identifying one or
more surveys in which a user of the client has participated”.
Para. [0061] of Nyhan cited by the Examiner describes
determining whether a participant has not been exposed to any
advertisement banner and thus would not be qualified to take a
survey. Such determination does not identify any particular
advertisement survey previously taken by the participant.
Therefore, the cited portion of Nyhan does not disclose
redirector-maintained data including second data including
“information identifying one or more surveys in which a user of
the client has participated”, as recited in Claim 1.
Claim 1 recites redirector-maintained data including
second data, which can include “survey start times” or “survey
expiration times”.
Paras. [0049] and [0060] of Nyhan describe data that
includes, for each banner, the beginning and end dates of the
advertisement campaign. A campaign is not the same as a
survey. Therefore, the cited portion of Nyhan does not disclose
redirector-maintained data including second data including
“survey start times” or “survey expiration times”, as recited in
Claim 1.
Appeal Br. 23–24. The Examiner does not respond to Appellant’s above
arguments. As a result, the Examiner has not adequately explained why
Nyhan teaches “the second data includes one or more items from the
following set of items . . . information identifying one or more surveys in
which a user of the client has participated, survey start times, and survey
expiration times,” as required by claim 1. See In re Warner, 379 F.2d 1011,

5 The Examiner cites Nyhan’s paragraph 66 for teaching “study of 2 groups -
exposed group and control group” (Final Act. 13), and that paragraph does
not teach any of the three listed items.
Appeal 2020-001953
Application 14/629,261

14
1017 (CCPA 1967) (we will not resort to speculation or assumptions to cure
deficiencies in the Examiner’s fact finding or reasoning).
Because the Examiner fails to provide sufficient evidence or
explanation to support the rejection, we are constrained by the record to
reverse the Examiner’s rejection of independent claim 1, and independent
claim 11 for similar reasons.
We also reverse the Examiner’s rejection of corresponding dependent
claims 2–10 and 12–20.

CONCLUSION
We reverse the Examiner’s decision rejecting claims 1–20 under 35
U.S.C. § 101.
We reverse the Examiner’s decision rejecting claims 1–20 under 35
U.S.C. § 103.

In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–20 101 Eligibility 1–20
1–20 103 Nyhan, Skinner 1–20
Overall
Outcome
1–20

REVERSED