International Business Machines Corporation

Patent Trials and Appeals Board

Oct 26, 2020

2019003597 (P.T.A.B. Oct. 26, 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.
15/336,957 10/28/2016 Lisa Seacat DeLuca END920160512US1 9251
79980 7590 10/26/2020
Keohane & D'Alessandro
1881 Western Avenue Suite 180
Albany, NY 12203
EXAMINER
ELCHANTI, TAREK
ART UNIT PAPER NUMBER
3621
NOTIFICATION DATE DELIVERY MODE
10/26/2020 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):
Docket@Kdiplaw.com
drubbone@kdiplaw.com
lcronk@kdiplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte LISA SEACAT DELUCA, JEREMY A. GREENBERGER, and
NICHOLAS R. SANDONATO
Appeal 2019-003597
Application 15/336,957
Technology Center 3600
Before MAHSHID D. SAADAT, ALLEN R. MacDONALD, and
NABEEL U. KHAN, Administrative Patent Judges.
SAADAT, 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, 7–12, and 14–19. Claims 6, 13,
and 20 are cancelled. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

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 International
Business Machines Corporation. Appeal Br. 1.
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Application 15/336,957
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STATEMENT OF THE CASE
Introduction
Appellant’s invention “relates generally to location-based services
and, more specifically, to creating a dynamic geofence based on an
availability of a product to optimize a flow of customers to a venue.”
Spec. ¶ 1.
Representative Claim
Representative claim 1 under appeal reads as follows;
1. A computer-implemented method for creating a dynamic
geofence related to a venue, the method comprising:
establishing, based on a reference point and an area having
a range, the dynamic geofence;
associating a campaign related to a product with the
dynamic geofence, the campaign promoting the product being
sold at the venue;
monitoring a number of remaining units of the product at
the venue; and
automatically optimizing a flow of customers to the venue
by modifying an aspect of the dynamic geofence based on an
availability of the product, by:
reducing a percentage of mobile devices within the
range that are receiving the promotion in response to a
determination that the number of remaining units at the
venue is below a predefined reduction threshold; and
expanding the range of the area in response to a
determination that the number remaining units at the
venue remains above a predefined expansion threshold for
a predefined period of time.
Appeal Br. 16 (Claims Appendix).
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REJECTION
Claims 1–5, 7–12, and 14–19 stand rejected under 35 U.S.C. § 101 as
being directed to patent-ineligible subject matter. See Final Act. 2–4;
Ans. 3.
ANALYSIS
Appellant argues the pending claims as a group. Appeal Br. 5–14;
Reply Br. 1–6. As permitted by 37 C.F.R. § 41.37, we decide the appeal
based on claim 1. See 37 C.F.R. § 41.37(c)(1)(iv).
Arguments
The Examiner determines that claim 1 is directed to a method of
establishing a geofence and modifying an aspect of the geofence based on
the availability of a product, which the Examiner finds is an abstract idea.
See Final Act. 2; see also Ans. 3. The Examiner further finds claim 1 does
not integrate the abstract idea into a practical application because the claim
does not require more than a computer performing functions that correspond
to acts required to carry out the abstract idea, and does not improve the
functioning of the computer itself or effect an improvement in another
technology or technical field. See Final Act. 3; see also Ans. 3–4. The
Examiner further finds the additional elements of claim 1 do not add an
inventive concept and, thus, claim 1 does not amount to significantly more
than the recited abstract idea. See Final Act. 4; see also Ans. 4–5.
Appellant argues that establishing and modifying a geofence based on
an availability of a product cannot be characterized as a fundamental
economic principle, a commercial or legal transaction, or managing personal
behavior or relationships or interactions between people because geofencing
requires specialized technology in its implementation. See Appeal Br. 6–7;
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Application 15/336,957
4
see also Reply Br. 2. Appellant further argues that, by characterizing claim
1 as establishing and modifying a geofence, the Examiner has over-
generalized and mischaracterized the invention. See Appeal Br. 7–8.
Appellant additionally argues that, even if claim 1 includes an abstract
idea, the abstract idea is integrated into a practical application, because claim
1 recites a solution to a real-world problem (i.e., optimizing the consumption
of computing references by modifying a range of a geofence at a venue).
See Reply Br. 2–4 (citing Spec. ¶¶ 21–24). Appellant further argues claim 1
includes “making adjustments to a geofence” based on collected
information, which has an effect of dynamically filtering outgoing
communications based on a location of potential recipients, where the
dynamically filtering is analogous to the claimed filtering in Bascom Global
Internet Services, Inc. v. AT&T Mobility LLC, 827 F.3d 1341 (Fed.
Cir. 2016), which was held patent-eligible by the Federal Circuit. See
Appeal Br. 8–9. As further argued by Appellant, claim 1 does recite an
improvement to an underlying computer because the optimization of the
consumption of computing resources by dynamically modifying the
geofence necessarily improves the functioning of the underlying computer.
See id. at 9.
Additionally, Appellant argues claim 1 is also similar to the claims at
issue in DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed.
Cir.2014), where the Federal Circuit held that claims directed to computer-
regulated advertising were not abstract. See Appeal Br. 10–11. As argued
by Appellant, claim 1 is similar because the claim is directed to a solution
for improving geofence-based advertising and communications by linking
the geofence to a specific product in a particular location and using the
current availability of the product to re-size the geofence. See id. at 11.
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Appellant also argues that claim 1 is “necessarily rooted in computer
technology in order to overcome a problem specifically arising in the realm
of computer networks,” because claim 1 utilizes technology, achieves a
technological result, achieves a physical change (e.g., the area encompassed
by the geofence) and improves the technology on which it operates. See id.
at 12.
Appellant further argues claim 1 is also similar to the claims at issue
in Enfish, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016), where
the Federal Circuit held the claims were directed to a specific
implementation of a solution to a problem in the software arts, and not
directed to an abstract idea. See Appeal Br. 12–13. As argued by Appellant,
similar to the claims at issue in Enfish, claim 1 is likewise directed to a new
solution to a problem in the arts and not simply a computerization of an old
solution. See id. at 13.
Appellant additionally argues claim 1 amounts to significantly more
than an abstract idea itself. See Appeal Br. 13; see also Reply Br. 4. As
argued by Appellant, in view of the Federal Circuit decision in Berkheimer
v. HP Inc., 881 F.3d 1360 (Fed. Cir. 2018), the conclusion of whether an
element is well-understood, routine, and conventional must be based on a
factual determination. See Appeal Br. 13; see also Reply Br. 4. According
to Appellant, the Examiner failed to provide any citation, or maintain any
prior-art rejection, that would support such a factual determination. See
Appeal Br. 13–14; see also Reply Br. 5–6.
Principles of Law
Section 101 of the Patent Act provides that “any new and useful
process, machine, manufacture, or composition of matter, or any new and
useful improvement thereof” is patent eligible. 35 U.S.C. § 101. But the
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Supreme Court has long recognized an implicit exception to this section:
“Laws of nature, natural phenomena, and abstract ideas are not patentable.”
Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 216 (2014) (quoting Ass’n for
Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 589 (2013)).
To determine whether a claim falls within one of these excluded categories,
the Court has set out a two-part framework. The framework requires us first
to consider whether the claim is “directed to one of those patent-ineligible
concepts.” Alice, 573 U.S. at 217. If so, we then examine “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.” Alice, 573 U.S. at 217 (quoting Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 78, 79 (2012)).
That is, we examine claim 1 for an “inventive concept,” “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.’” Alice, 573 U.S. at 217–18 (alteration in original) (quoting
Mayo, 566 U.S. at 72–73).
In January 2019, the USPTO published revised guidance on the
application of § 101. See 2019 Revised Patent Subject Matter Eligibility
Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (“Guidance”).2 Under that
guidance, we first look to whether the claim recites:

2 In response to received public comments, the Office issued further
guidance on October 17, 2019, clarifying the Guidance. USPTO, October
2019 Update: Subject Matter Eligibility (“October 2019 Update”) (available
at https://www.uspto.gov/sites/default/files/
documents/peg_oct_2019_update.pdf).
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(1) any judicial exceptions, including certain groupings of abstract
ideas (i.e., mathematical concepts, certain methods of organizing
human activities such as a fundamental economic practice, or mental
processes); 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, Jan. 2018)).
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, and conventional in the field (see MPEP
§ 2106.05(d)); or
(4) simply appends well-understood, routine, and 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.
Abstract Idea
To determine whether a claim recites an abstract idea, we (1) identify
the claim’s specific limitations that recite an abstract idea, and (2) determine
whether the identified limitations fall within certain subject matter
groupings, namely (a) mathematical concepts; (b) certain methods of
organizing human activity; or (c) mental processes.
Independent claim 1 is directed to an abstract idea because the claim
recites a method of organizing human activity, one of the abstract idea
groupings listed in the Guidance. See Guidance, 84 Fed. Reg. at 52, 53
(listing “[c]ertain methods of organizing human [activities]” such as
“commercial or legal interactions (including agreements in the form of
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contracts; legal obligations; advertising, marketing or sales activities or
behaviors; business relations)” as one of the “enumerated groupings of
abstract ideas”).
Claim 1 is directed to a method pertaining to “creating a dynamic
geofence based on an availability of a product to optimize a flow of
customers to a venue,” where the dynamic geofence “is established based on
a reference point and an area having a range,” and where “[a] campaign
related to a product (e.g., a sales promotion, etc.) is associated with the
established geofence.” Spec. ¶ 3. The claimed method includes the
following elements:
(1) “establishing, based on a reference point and an area having a
range, the dynamic geofence”;
(2) “associating a campaign related to a product with the dynamic
geofence, the campaign promoting the product being sold at the
venue”;
(3) “monitoring a number of remaining units of the product at the
venue”;
(4) “automatically optimizing a flow of customers to the venue by
modifying an aspect of the dynamic geofence based on an
availability of the product”;
(5) “reducing a percentage of mobile devices within the range that are
receiving the promotion in response to a determination that the
number of remaining units at the venue is below a predefined
reduction threshold”; and
(6) “expanding the range of the area in response to a determination
that the number remaining units at the venue remains above a
predefined expansion threshold for a predefined period of time”.
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Appeal Br. 16.
Here, the claim elements recite a method of establishing a geofence
based on a reference point and an area having a range, where a promotional
campaign is associated with the geofence, and modifying an aspect of the
geofence based on the availability of the product. Such recited subject
matter is part of an overall promotional campaign of a product, which is a
commercial interaction, where commercial interactions fit squarely within
the human activity organization category of the Guidance. See Guidance, 84
Fed. Reg. at 52 (listing exemplary methods of organizing human activity
including commercial or legal interactions (including agreements in the form
of contracts; legal obligations; advertising, marketing, or sales activities or
behaviors; business relations)).
Appellant’s argument that establishing and modifying a geofence
based on an availability of a product cannot be characterized as a
commercial transaction because geofencing requires specialized technology
in its implementation is not persuasive. As described above, claim 1 recites
“creating a dynamic geofence,” “establishing . . . the dynamic geofence,”
and “modifying an aspect of the dynamic geofence based on an availability
of the product.” Claim 1 does not recite any operations that utilize the
geofence to provide an alert or notification to a person or object that enters
or exits the geofence, where such operations may potentially utilize
specialized technology. Instead, claim 1 recites operations that establish and
modify the geofence by either modifying a percentage of mobile devices
within a range of the geofence or modifying the range of the geofence itself,
where a promotional campaign is associated with the geofence. Further,
claim 1 does not recite any specialized technology which may arguably be
utilized to establish and modify the geofence. Instead, claim 1 merely
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recites that the method is implemented on a computer (i.e., “computer-
implemented method”). Further, Appellant’s Specification describes that
any general-purpose computer can be utilized to perform the method of
creating (and modifying) the geofence. See e.g., Spec. ¶¶ 26, 28–29, 55–69.
Thus, we conclude, contrary to Appellant’s argument, that the Examiner
correctly characterized claim 1 as reciting an abstract idea.
Although claim 1 recites an abstract idea based on a certain method of
organizing human activity, we nevertheless must still determine whether the
abstract idea is integrated into a practical application, namely whether the
claim applies, relies on, or uses the abstract idea in a manner that imposes a
meaningful limit on the abstract idea, such that the claim is more than a
drafting effort designed to monopolize the abstract idea. See Guidance, 84
Fed. Reg. at 54–55. We therefore (1) identify whether there are any
additional recited elements beyond the abstract idea, and (2) evaluate those
elements individually and collectively to determine whether they integrate
the exception into a practical application. See id.
Here, as previously discussed, the only recited element beyond the
abstract idea is a “computer-implemented method.”3 Consistent with the
Examiner’s findings, the recitation of a computer does not integrate the
abstract idea into a practical application when reading the claim as a whole
because it requires no more than a computer performing functions that
correspond to acts required to carry out the abstract idea, and, thus, the

3 Independent claim 8 further recites a “computer readable storage device,”
and a “computer device.” See Appeal Br. 17–18. Independent claim 15
further recites “a memory medium,” “a bus,” and “a processor.” Consistent
with the Examiner’s findings, such recitations are similar to the recitation of
a computer (i.e., “computer-implemented method”) in claim 1. See Ans. 4.
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recitation of a computer merely generally links the use of an abstract idea to
a particular technological environment. See Ans. 3–4.
Appellant’s argument that claim 1 solves a real-world problem is not
persuasive. The “real-world problem” that Appellant alleges claim 1 solves
(i.e., having either too many customers or not enough customers visiting a
particular venue) is a business problem rather than a technological problem.
Further, claim 1 merely recites a business solution to the business problem
(i.e., improving the efficiency of a promotional campaign associated with a
venue by either reducing a percentage of mobile devices within a range of
the geofence or expanding the range of the geofence based on an availability
of a product), where the business solution is effectuated via the
implementation of the business solution on a general-purpose computer.
Appellant’s argument that claim 1 recites an improvement to an
underlying computer because the implementation of the operations recited in
claim 1 optimizes the consumption of resources by the underlying computer
is also not persuasive. Any increased efficiency of the underlying computer
(referenced by the claimed “computer-implemented method” of claim 1) is
due to the incorporation of the underlying computer in its ordinary capacity
and not due to the usage of the method of organizing human activity (i.e.,
creating and modifying a geofence) itself.
Further, Appellant’s argument that claim 1 is similar to the claims at
issue in Bascom is also not persuasive. In Bascom, the claims solved an
Internet-centric problem of filtering Internet content, and thus, the claimed
computer components were necessary components of the claims. See
Bascom, 827 F.3d at 1349–51. In contrast, the underlying computer
(referenced by the claimed “computer-implemented method” of claim 1) is
not a necessary component to perform the method of creating and modifying
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the geofence recited in claim 1. Instead, the steps of the method of creating
and modifying the geofence (e.g., creating the geofence via establishing a
reference point and an area having a range; modifying the geofence via
either reducing a percentage of mobile devices within the range or
expanding the range) can be done outside the context of computer
technology, such as with pen and paper. In addition, unlike the claims at
issue in Bascom, claim 1 does not recite a technical improvement. Instead,
as previously described, claim 1 recites an improvement to the underlying
method of organizing human activity itself.
Even further, Appellant’s argument that claim 1 is similar to the
claims at issue in DDR Holdings, is also not persuasive. In DDR Holdings,
the court determined that the claims at issue were necessarily rooted in
computer technology in order to address the Internet-centric problem of how
to provide user access to computer-implemented applications over the
Internet. DDR Holdings, 773 F.3d at 1257. In contrast, the steps recited in
claim 1 previously described above (e.g., creating the geofence via
establishing a reference point and an area having a range; modifying the
geofence via either reducing a percentage of mobile devices within the range
or expanding the range) are not necessarily rooted in computer technology,
as the aforementioned steps could also occur outside the context of computer
technology (e.g., if the aforementioned steps were implemented using pen
and paper).
Further, we disagree with Appellant’s contention that the claims are
directed to a specific improvement in the way computers operate, similar to
the claims at issue in Enfish, rather than an abstract idea. In Enfish, in
holding that the claims were patent-eligible, the court stated that the claims
recited a specific data structure (i.e., a self-referential table for a computer
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database) that allowed the computer database to realize specific operational
improvements (i.e., increased flexibility, faster search times, and smaller
memory requirements). See Enfish, 822 F.3d at 1337. Contrary to the
claims at issue in Enfish, as previously described, claim 1 does not recite an
improvement to the underlying computer, and, instead, recites an
improvement to the underlying method of organizing human activity itself.
Thus, claim 1 does not integrate the judicial exception into a practical
application. Claim 1: (1) does not improve the functioning of a computer or
other technology, (2) is not applied with any particular machine (except for a
generic computer), (3) does not effect a transformation of a particular article
to a different state, and (4) is not applied in any 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(a)–(c), (e)–(h).
Inventive Concept
Because we determine claim 1 is “directed to” an abstract idea, we
consider whether claim 1 recites an “inventive concept.” As previously
discussed, the only recited element beyond the abstract idea is a “computer-
implemented method.” As the Examiner correctly found, using a general-
purpose computer to perform the steps recited in claim 1 is not sufficient to
transform a judicial exception into a patentable invention, as the general-
purpose computer performs the basis function of the computer in
implementing the recited steps. See Ans. 5. Using generic computer
components to perform abstract ideas does not provide the necessary
inventive concept. See Alice, 573 U.S. at 223 (“[T]he mere recitation of a
generic computer cannot transform a patent-ineligible abstract idea into a
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patent-eligible invention.”). Thus, this element, taken individually or
together with the other claim elements, does not amount to “significantly
more” than applying the abstract idea on a general-purpose computer.
We are not persuaded by Appellant’s argument that the Examiner
failed to provide any citation that supported a factual determination that the
recited “computer” was well-understood, routine, and conventional. As
indicated in the Office’s Berkheimer memorandum4, “[a] citation to one or
more of the court decisions discussed in MPEP § 2106.05(d)(II),” can
demonstrate the well-understood, routine, conventional nature of an
additional element (or combination of elements). Berkheimer memorandum
at 3. As the Examiner provided a citation to several court cases discussed in
MPEP § 2106.05(d) to demonstrate the well-understood, routine,
conventional nature of an additional element, Appellant’s argument is not
persuasive. See Ans. 5.
Further, Appellant’s Specification indicates that the computer that
implements the steps recited in claim 1 can be any general-purpose
computer, as shown below.
[0026] In computerized implementation 10, there is a computer
system/server 12, which is operational with numerous other
general purpose or special purpose computing system
environments or configurations.
. . .
[0028] Computer system/server 12 is intended to represent any
type of computer system that may be implemented in
deploying/realizing the teachings recited herein. Computer
system/server 12 may be described in the general context of
computer system executable instructions, such as program

4 USPTO memorandum issued on April 19, 2018, titled “Changes in
Examination Procedure Pertaining to Subject Matter Eligibility, Recent
Subject Matter Eligibility Decision (Berkheimer v. HP, Inc.).”
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modules, being executed by a computer system. Generally,
program modules may include routines, programs, objects,
components, logic, data structures, and so on, that perform
particular tasks or implement particular abstract data types. In this
particular example, computer system/server 12 represents an
illustrative system for creating a dynamic geofence based on an
availability of a product to optimize a flow of customers to a
venue. It should be understood that any other computers
implemented under the present invention may have different
components/software, but can perform similar functions.
[0029] Computer system/server 12 in computerized
implementation 10 is shown in the form of a general-purpose
computing device. The components of computer system/server 12
may include, but are not limited to, one or more processors or
processing units 16, a system memory 28, and a bus 18 that
couples various system components including system memory 28
to processor 16.
Spec. ¶¶ 26, 28–29 (emphasis added); see also Spec. ¶¶ 55–69 (describing
example functional components used to carry out the recited steps of the
claims).
We are also not persuaded by Appellant’s contention that the lack of
any prior-art rejections definitively establishes that claim 1 does not recite
well-understood, routine, and conventional operations. This contention
conflates the novelty test under 35 U.S.C. § 102 and non-obviousness test
under 35 U.S.C. § 103 with the patent-eligibility test under 35 U.S.C. § 101.
Conclusion
For at least the above reasons, we agree with the Examiner that claim
1 is “directed to” an abstract idea, and does not recite an “inventive
concept.” Accordingly, we sustain the Examiner’s rejection of claim 1 and
the remaining claims which fail to include additional elements that add
significantly more to the abstract idea, under 35 U.S.C. § 101.
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CONCLUSION
We affirm the Examiner’s decision to reject claims 1–5, 7–12, and
14–19 under 35 U.S.C. § 101.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–5, 7–12,
14–19
101 Eligibility 1–5, 7–12,
14–19

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