INTERNATIONAL BUSINESS MACHINES CORPORATION

Patent Trials and Appeals Board

Aug 25, 2020

2020001041 (P.T.A.B. Aug. 25, 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.
14/933,153 11/05/2015 Rick A. HAMILTON II END920070268US2 7185
46583 7590 08/25/2020
Roberts Calderon Safran & Cole, P.C.
Intellectual Property Department
P.O. Box 10064
MCLEAN, VA 22102-8064
EXAMINER
ROJAS, HAJIME S
ART UNIT PAPER NUMBER
3681
NOTIFICATION DATE DELIVERY MODE
08/25/2020 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):
docketing@rcsc-ip.com
lgallaugher@rcsc-ip.com
secretaries@rcsc-ip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte RICK A. HAMILTON II, BRIAN M. O’CONNELL,
CLIFFORD A. PICKOVER, ANNE R. SAND, and KEITH R. WALKER

____________

Appeal 2020-001041
Application 14/933,153
Technology Center 3600

____________

Before BIBHU R. MOHANTY, ROBERT L. KINDER, and
BRUCE T. WIEDER, Administrative Patent Judges.

WIEDER, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 seeks review under 35 U.S.C. § 134 from the Examiner’s
final rejection of claims 1–16. 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. Appellant identifies the real party in interest as
International Business Machines Corporation. (Appeal Br. 2.)
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CLAIMED SUBJECT MATTER
Appellant’s “invention generally relates to systems and methods for
advertising, and, more particularly, to systems and methods for triggering
immersive advertising in a virtual universe.” (Spec. ¶ 1.)
Claims 1 and 5 are the independent claims on appeal. Claim 1 is
illustrative. It recites:
1. A computer implemented method for providing
customized advertising in a virtual universe, comprising:
providing, by a host server, a virtual universe (VU)
accessible by a first client device of a first user and a second
client device of a second user via a network;
determining, by the host server, that an action of a first
avatar of the first user has triggered a virtual universe
advertisement (VU-ad) in the VU;
determining, by the host server, that an action of a second
avatar of the second user has triggered the VU-ad in the VU;
obtaining, by the host server, tolerance data about the first
user in response to the first avatar triggering the VU-ad,
including a measure of tolerance for advertising and preferred
type of advertising selected from the group consisting of:
a pop-up graphic, a pop-up text message, a pop-up
window displaying an animation, a pop-up window
displaying a video, a graphic on a billboard in the VU, a
text message on a billboard in the VU, an animation on a
billboard in the VU, a video on a billboard in the VU, a
machinima on a billboard in the VU, an ad object in the
VU configured to be interacted with, an ad avatar in the
VU configured to be interacted with, an ephemeral
location to which the user avatar is teleported, human
operator communication via text message, and human
operator communication via voice over internet protocol;
obtaining, by the host server, tolerance data about the
second user in response to the second avatar triggering the VU-
ad, including a measure of tolerance for advertising and preferred
type of advertising selected from the group consisting of:
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a pop-up graphic, a pop-up text message, a pop-up
window displaying an animation, a pop-up window
displaying a video, a graphic on a billboard in the VU, a
text message on a billboard in the VU, an animation on a
billboard in the VU, a video on a billboard in the VU, a
machinima on a billboard in the VU, an ad object in the
VU configured to be interacted with, an ad avatar in the
VU configured to be interacted with, an ephemeral
location to which the user avatar is teleported, human
operator communication via text message, and human
operator communication via voice over internet protocol;
automatically selecting, by the host server, a first variation
of the VU-ad to be presented to the first user from a plurality of
possible VU-ad variations in a look-up table based on the
tolerance data about the first user and in response to the first
avatar triggering the VU-ad;
automatically selecting, by the host server, a second
variation of the VU-ad to be presented to the second user from
the plurality of possible VU-ad variations in the look-up table
based on the tolerance data about the second user and in response
to the second avatar triggering the VU-ad;
automatically presenting the first variation of the VU-ad
to the first client device of the first user based on the selecting
the first variation; and
automatically presenting the second variation of the VU-
ad to the second client device of the second user based on the
selecting the first variation,
wherein the first and second variations of the VU-ad are
advertisements from a VU-ad provider, and the second variation
is different from the first variation.

REJECTION
Claims 1–16 are rejected under 35 U.S.C. § 101 as directed to a
judicial exception without significantly more.
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ANALYSIS
Claims 1 and 5
“Whoever 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. Section 101, however,
“contains an important implicit exception: Laws of nature, natural
phenomena, and abstract ideas are not patentable.” Alice Corp. Pty. Ltd. 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)).
Alice applies a two-step framework, earlier set out 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 patent-eligible
applications of those concepts.” Alice, 573 U.S. at 217.
Under the two-step framework, it must first be determined if “the
claims at issue are directed to a patent-ineligible concept.” Id. at 218. If the
claims are determined to be directed to a patent-ineligible concept, e.g., an
abstract idea, then the second step of the framework is applied to determine
if “the elements of the claim . . . contain[] an ‘ “inventive concept” ’
sufficient to ‘transform’ the claimed abstract idea into a patent-eligible
application.” Id. at 221 (citing Mayo, 566 U.S. at 72–73, 79).
With regard to step one of the Alice framework, we apply a “directed
to” two-prong test to: 1) evaluate whether the claim recites a judicial
exception, and 2) if the claim recites a judicial exception, evaluate whether
the claim “appl[ies], rel[ies] on, or use[s] the judicial exception in a manner
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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.” See USPTO, 2019 Revised Patent Subject Matter Eligibility
Guidance, 84 Fed. Reg. 50, 54 (Jan. 7, 2019) (hereinafter “2019 Guidance”).
In this case, the Examiner determines “that claim 1 is directed to a
generic computer implemented method for selecting an advertisement in a
virtual world, not tied to any specific technology.” (Answer 4.)
Appellant argues “that claim 1 is directed to dynamic customization of
advertisements within a virtual universe based on user tolerance data and the
triggering of advertisements by an avatar in a virtual universe.” (Appeal
Br. 7.)
Under step one of the Alice framework, we “look at the ‘focus of the
claimed advance over the prior art’ to determine if the claim’s ‘character as a
whole’ is directed to excluded subject matter.” Affinity Labs of Texas, LLC
v. DIRECTV, LLC, 838 F.3d 1253, 1257 (Fed. Cir. 2016) (quoting Elec.
Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016)).
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
. . . . 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.” Internet Patents Corp. v. Active Network, Inc.,
790 F.3d 1343, 1346 (Fed. Cir. 2015).

Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016). In
other words, the first step of the Alice framework “asks whether the focus of
the claims is on the specific asserted improvement in [the relevant
technology] or, instead, on a process that qualifies as an ‘abstract idea’ for
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which computers are invoked merely as a tool.” Id. at 1335–36; see also
2019 Guidance at 54–55.
The Specification provides an explanation as to the scope of the
claimed invention. In this case, the Specification discloses that the
“invention generally relates to systems and methods for advertising, and,
more particularly, to systems and methods for triggering immersive
advertising in a virtual universe.” (Spec. ¶ 1.) Claim 1 provides further
details as to the scope of the claim. Claim 1 recites a “method for providing
customized advertising in a virtual universe, comprising: providing . . . a
virtual universe (VU),” “determining . . . that an action of a first avatar of the
first user has triggered a virtual universe advertisement (VU-ad),”
“determining . . . that an action of a second avatar of the second user has
triggered the VU-ad,” “obtaining . . . tolerance data about the first user,”
“obtaining . . . tolerance data about the second user,” “selecting . . . a first
variation of the VU-ad to be presented to the first user,” “selecting . . . a
second variation of the VU-ad to be presented to the second user,”
“presenting the first variation of the VU-ad to the first client device of the
first user,” and “presenting the second variation of the VU-ad to the second
client device of the second user.”
In short, claim 1 recites determining that users have triggered an event
(analyzing input data), obtaining user data, and using the data to present a
targeted advertisement. Analyzing input data, obtaining user data, and
presenting customized data have been determined to be directed to an
abstract idea. See Bridge and Post, Inc. v. Verizon Commc’ns, Inc., 778 F.
App’x 882, 886–87 (Fed. Cir. 2019) (obtaining user information, analyzing
the user information, and presenting customized information to the user
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based on the analyzed information determined to be directed to an abstract
idea), Customedia Techs., LLC v. Dish Network Corp., 951 F.3d 1359 (Fed.
Cir. 2020) (“improv[ing] the abstract idea of delivering targeted advertising
using a computer only as a tool . . . is not what the Supreme Court meant by
improving the functioning of the computer itself nor is it consistent with
[Federal Circuit] precedent applying this concept), Intellectual Ventures I
LLC v. Capital One Bank (USA), 792 F.3d 1363, 1369 (Fed. Cir. 2015)
(determining that claims providing web pages customized to a user were
directed to an abstract idea), Content Extraction and Transmission LLC v.
Well Fargo Bank, Nat’l Ass’n, 776 F.3d 1343, 1347 (Fed. Cir. 2014)
(treating as an abstract idea “1) collecting data, 2) recognizing certain data
within the collected data set, and 3) storing that recognized data”).
Appellant argues that “[t]he present invention constitutes an
improvement in the technical field of dynamic advertising in virtual
environments, and results in the dynamic presentation of ads customized for
a user’s tolerance level within a virtual universe.” (Appeal Br. 8.) We do
not find this argument persuasive.
The recited steps of claim 1 do not recite technological
implementation details for any of the steps. Nor does claim 1 recite “a
particular way of programming or designing the software . . . , but instead
merely claim[s] the resulting system.” Apple, Inc. v. Ameranth, Inc., 842
F.3d 1229, 1241 (Fed. Cir. 2016). Claim 1 does not recite how the computer
provides a virtual universe, how it determines that an action of an avatar
triggers a VU-ad, how tolerance data about a user is obtained, how a
variation of the VU-ad is selected, or how the VU-ad is presented to the user.
Claim 1 merely recites functional results to be achieved by any means.
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Additionally, it is clear from Appellant’s Specification that the host server,
client devices, and computing network were well known. (See, e.g., Spec.
¶¶ 20–23.) Nor is there any suggestion that Appellant invented virtual
universes. (See id. ¶ 2.)
In cases involving software innovations, such as we have here, the
inquiry as to whether the claims are directed to an abstract idea “often turns
on whether the claims focus on ‘the specific asserted improvement in
computer capabilities ... or, instead, on a process that qualifies as an
“abstract idea” for which computers are invoked merely as a tool.’” Finjan,
Inc. v. Blue Coat Sys., Inc., 879 F.3d 1299, 1303 (Fed. Cir. 2018) (quoting
Enfish, LLC, 822 F.3d at 1335–36). Here, the asserted improvement is to the
information provided, i.e., the customized variation of the VU-ad. The host
server, client devices, and computing network are invoked merely as tools.
Claim 1 does not recite a specific asserted improvement in computer
capabilities.
Appellant argues that “the tolerance data of claim 1 is a new type of
information” and that “there is no evidence that automatically presenting
different variations of an ad to different users of the same virtual universe
based on their individual measure of tolerance for advertising and the
triggering of the ad by avatars within the virtual universe, is a long-standing
human activity or practice.” (Appeal Br. 10.) This is an argument that the
improvement is to the information itself. We do not find this argument
persuasive. See, e.g., BSG Tech LLC v. BuySeasons, Inc., 899 F.3d 1281,
1288 (Fed. Cir. 2018) (“[A[n] improvement to the information stored by a
database is not equivalent to an improvement in the database’s
functionality.”). And “[a]s many cases make clear, even if a process of
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collecting and analyzing information is ‘limited to particular content’ or a
particular ‘source,’ that limitation does not make the collection and analysis
other than abstract.” SAP Am., Inc. v. InvestPic, LLC, 898 F.3d 1161, 1168
(Fed. Cir. 2018). The “character of [the] information simply invokes a
separate category of abstract ideas.” Id. In other words, Appellant’s
asserted improvement “lies entirely in the realm of abstract ideas, with no
plausibly alleged innovation in the non-abstract application realm.” Id.
at 1163.
In view of the above, we determine that claim 1 sets forth a method
for presenting targeted advertising. Under the 2019 Guidance, “advertising,
marketing or sales activities or behaviors” are identified as certain methods
of organizing human activity, and thus, an abstract idea. (2019 Guidance
at 52.) This is in accord with the Examiner’s determination. (See
Answer 5.)
Moreover, we do not see how the recitation of a generic host server,
client devices, and a computing network, even in conjunction with the
recited functions, “ensure[s] ‘that the [claim] is more than a drafting effort
designed to monopolize the [abstract idea].’” See Alice, 573 U.S. at 221
(second and third brackets in original) (quoting Mayo, 566 U.S. at 77.)
Nor do we find any indication in the Specification that the claimed
invention effects a transformation or reduction of a particular article to a
different state or thing. Nor do we find anything of record that attributes an
improvement in computer technology or functionality to the claimed
invention or that otherwise indicates that the claimed invention “appl[ies],
rel[ies] on, or use[s] the judicial exception in a manner that imposes a
meaningful limit on the judicial exception, such that the claim is more than a
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drafting effort designed to monopolize the judicial exception.” (See 2019
Guidance at 54–55.)
Thus, under prong one of the two prong test in the 2019 Guidance,
claim 1 recites an abstract idea; and, under prong two, additional elements in
claim 1 do not “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.”
(See 2019 Guidance at 54.) As such, under step one of the Alice framework,
the claim is directed to an abstract idea, and we move to step two.
Step two of the Alice framework has been described “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.’” Alice, 573 U.S.
at 217–18 (brackets in original) (quoting Mayo, 566 U.S. at 72–73). Under
step two, we examine, inter alia, whether a claim element or combination of
elements “[a]dds a specific limitation or combination of limitations that are
not well-understood, routine, conventional activity in the field, which is
indicative that an inventive concept may be present.” (2019 Guidance
at 56.)
In our analysis under step two of the Alice framework, we examine
“[t]he question of whether a claim element or combination of elements is
well-understood, routine and conventional to a skilled artisan in the relevant
field [which] is a question of fact.” Berkheimer v. HP Inc., 881 F.3d 1360,
1368 (Fed. Cir. 2018).
Taking the claim elements separately, the functions performed in
claim 1 by the host server, client devices, and computing network are purely
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routine and conventional. (See, e.g., Spec. ¶¶ 20–23.) Analyzing input data,
obtaining additional data, and presenting results based on the data are
routine and conventional functions for a computer and were previously
known to the industry. See Elec. Power Grp., 830 F.3d at 1356 (The claims
“do not include any requirement for performing the claimed functions of
gathering, analyzing, and displaying in real time by use of anything but
entirely conventional, generic technology. The claims therefore do not state
an arguably inventive concept.”); see also In re Katz Interactive Call
Processing Patent Litig., 639 F.3d 1303, 1316 (Fed. Cir. 2011) (“Absent a
possible narrower construction of the terms ‘processing,’ ‘receiving,’ and
‘storing,’ . . . those functions can be achieved by any general purpose
computer without special programming.”).
Considered as an ordered combination, the generic computer
components of Appellant’s claimed invention add nothing that is not already
present when the limitations are considered separately. For example,
claim 1 does not, as discussed above, purport to improve the functioning of
the server, client devices, or network themselves. Nor does it effect an
improvement in any other technology or technical field. Instead, claim 1
amounts to nothing significantly more than an instruction to apply the
abstract idea using generic computer components performing routine
computer functions. That is not enough to transform an abstract idea into a
patent-eligible invention. See Alice, 573 U.S. at 225–26.
Nonetheless, Appellant seeks to analogize claim 1 to the claims in
DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014).
Appellant argues that “[c]laim 1 can be understood to address problems of
retaining visitors in virtual universes while also presenting those visitors
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with customized advertisements.” (Appeal Br. 8.) We do not find this
argument persuasive. The claims in DDR Holdings “specify how
interactions with the Internet are manipulated to yield a desired result –– a
result that overrides the routine and conventional sequence of events
ordinarily triggered by the click of a hyperlink.” DDR Holdings, 773 F.3d
at 1258. Appellant does not persuasively argue that the claim steps override
or vary some routine and conventional sequence of events ordinarily
triggered by the click of a hyperlink.
Moreover, the Federal Circuit has cautioned
that not all claims purporting to address Internet-centric
challenges are eligible for patent. For example, in our recently-
decided Ultramercial opinion, the patentee argued that its claims
were “directed to a specific method of advertising and content
distribution that was previously unknown and never employed
on the Internet before.” [Ultramercial, Inc. v. Hulu, LLC, 772
F.3d 709, 714 (Fed.Cir.2014).] But this alone could not render
its claims patent-eligible. In particular, we found the claims to
merely recite the abstract idea of “offering media content in
exchange for viewing an advertisement,” along with “routine
additional steps such as updating an activity log, requiring a
request from the consumer to view the ad, restrictions on public
access, and use of the Internet.” Id. at 715-16.

Id.
Appellant argues that the claim recites patent-eligible subject matter
because it “clearly does not monopolize providing ‘location based offers.’”
(Appeal Br. 9.) We do not find this argument persuasive. Preemption is not
a separate test. “Where a patent’s claims are deemed only to disclose patent
ineligible subject matter under the Mayo framework, as they are in this case,
preemption concerns are fully addressed and made moot.” Ariosa
Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015).
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In other words, “preemption may signal patent ineligible subject matter,
[but] the absence of complete preemption does not demonstrate patent
eligibility.” Id.
Appellant argues that “claim 1 includes limitations that are not well-
understood, routine and conventional activity in the field.” (Appeal Br. 11.)
For example, Appellant notes the claim limitation “obtaining, by the host
server, tolerance data about the first user . . . including a measure of
tolerance for advertising and preferred type of advertising selected from the
group consisting of: a pop-up graphic, a pop-up text message . . . .” (Id.
at 11–12.) We do not find this argument persuasive. Obtaining data is
routine and conventional activity. See, e.g., Ultramercial, Inc., 772 F.3d
at 715. And Appellant does not argue that Appellant invented pop-up
graphics or text messages. (See, e.g., Spec. ¶¶ 28, 38.) Moreover, 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.” BSG Tech LLC, 899 F.3d at 1290.
In view of the above, we are not persuaded that the Examiner erred in
rejecting claim 1. Independent claim 5 contains similar language and
Appellant presents similar arguments. (See Appeal Br. 20–26.) For similar
reasons, we are not persuaded that the Examiner erred in rejecting claim 5.

Claims 2, 4, 7, and 11
Appellant argues claims 2, 4, 7, and 11 together. We select claim 4 as
representative. Claims 2, 7, and 11 will stand or fall with claim 4. See
37 C.F.R. § 41.37(c)(1)(iv).
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Claim 4 recites:
4. The method of claim 1 comprising: providing a first
incentive to the first user; and providing a second incentive,
different from the first incentive, to the second user.

Appellant argues that the Examiner failed to present a prima facie
case for ineligibility because “the Examiner failed to address the limitations”
of the claims. (Appeal Br. 13.)
The Examiner answers that the claims merely “narrow the abstract
idea” and do not disclose a technological improvement. (Answer 7.)
Appellant replies “that such general statements do not properly
address the limitations of the claims” and “that claim limitations which
constitute improvements to a business process are not precluded from also
constituting an improvement to the field of virtual universe (VU) systems
under the step 2B analysis. For example, improvements to a computer in
DDR Holdings addressed the business problem of retaining visitor traffic.”
(Reply Br. 7.) We do not find this argument persuasive.
As discussed above, the claims in DDR Holdings “specify how
interactions with the Internet are manipulated to yield a desired result” and
override the conventional sequence of events ordinarily triggered by clicking
on a hyperlink. DDR Holdings, 773 F.3d at 1258. Appellant does not
persuasively argue that the claim steps override or vary some routine and
conventional sequence of events ordinarily triggered by the click of a
hyperlink. Nor does Appellant argue why the Examiner erred in
determining that the claims merely “narrow the abstract idea.” (See
Answer 7.) We are not persuaded of error.

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Claim 3
Claim 3 recites:
3. The method of claim 1, further comprising providing an
incentive to at least one of the first user and the second user,
wherein providing the incentive changes the measure of
tolerance for advertising of the at least one of the first user and
the second user to a higher measure of tolerance.

Appellant argues that the Examiner failed to present a prima facie
case for ineligibility because “the Examiner failed to address the limitations”
of the claim. (Appeal Br. 14.) Appellant further argues that the claim
“includes limitations that are significantly more than the abstract idea” and
that what the claim recites “is other than what is well-understood, routine
and conventional activity in the field.” (Id.)
The Examiner answers that the claim merely “narrow[s] the abstract
idea” and does not disclose a technological improvement. (Answer 7.)
Claim 3 simply recites providing an incentive to a user. Claim 3 does
not recite how the incentive is provided or what constitutes an incentive.
The Specification, however, discloses that the incentive may be in the form
of, e.g., “promotional codes.” (Spec. ¶ 49.) In other words, the incentive
may simply be in the form of information transmitted to the user.
Transmitting information to a computer user is routine and conventional
activity. See, e.g., Ultramercial, Inc., 772 F.3d at 715. To the extent
Appellant’s argument relates to the content of the information, “even if a
process of collecting and analyzing information is ‘limited to particular
content’ or a particular ‘source,’ that limitation does not make the collection
and analysis other than abstract.” SAP Am., Inc., 898 F.3d at 1168. We are
not persuaded of error.
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Claim 8
Claim 8 recites:
8. The method of claim 1, wherein the tolerance data is
obtained from the first user and the second user after the VU-ad
is triggered.

Appellant argues that the Examiner failed to present a prima facie
case for ineligibility because “the Examiner failed to address the limitations”
of the claim. (Appeal Br. 14.) Appellant further argues that “the claim does
more than merely apply an abstract idea using a generic computer” because
“there is no real-world equivalent to obtaining tolerance data ‘from the first
user and the second user after the VU-ad is triggered’” and that this “is other
than what is well-understood, routine and conventional activity in the field.”
(Id. at 15.)
The Examiner answers that the claim merely “narrow[s] the abstract
idea” and does not disclose a technological improvement. (Answer 7.)
Claim 8 recites the source and timing for obtaining information.
Claim 8 does not recite how the information is obtained. As discussed
above, obtaining data is routine and conventional activity. See, e.g.,
Ultramercial, Inc., 772 F.3d at 715. To the extent Appellant’s argument
relates to the content of the data obtained, “even if a process of collecting
and analyzing information is ‘limited to particular content’ or a particular
‘source,’ that limitation does not make the collection and analysis other than
abstract.” SAP Am., Inc., 898 F.3d at 1168.
With regard to Appellant’s argument that “there is no real-world
equivalent” to the recited limitation, we note, as discussed above, that in
DDR Holdings “the patentee argued that its claims were ‘directed to a
specific method of advertising and content distribution that was previously
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unknown and never employed on the Internet before.’” DDR Holdings, 773
F.3d at 1258. But the Federal Circuit did not find that argument persuasive.
There, as here, the claim merely recites the abstract idea without reciting “a
particular way of programming or designing the software . . . , but instead
merely claim[ing] the resulting system.” Apple, Inc., 842 F.3d at 1241. We
are not persuaded of error.

Claim 9
Claim 9 recites:
9. The method of claim 1, further comprising teleporting the
second avatar to an ephemeral location within the VU, wherein:
the first variation of the VU-ad comprises a virtual
billboard displaying the VU-ad to the first user; and
the second variation of the VU-ad comprises displaying
the VU-ad to the second user at the ephemeral location within
the VU.

Appellant argues that the Examiner failed to present a prima facie
case for ineligibility because “the Examiner failed to address the limitations”
of the claim. (Appeal Br. 15.) Appellant further argues that “the claim does
more than merely apply an abstract idea using a generic computer” because
“there is no real-world equivalent to ‘teleporting the second avatar to an
ephemeral location within the VU’” and that the “limitations of claim 9 are
directed to improvements in computer functionality.” (Id. at 15–16.)
The Examiner answers that the claim merely “narrow[s] the abstract
idea” and does not disclose a technological improvement. (Answer 7.)
Claim 9 does not recite how the second avatar is teleported. Claim 9
recites the type of ad presented to the first user and that the ad for the second
user will be displayed at the location of the second user’s avatar. Claim 9
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does not recite how any of the steps are performed. It does not recite “a
particular way of programming or designing the software . . . , but instead
merely claim[s] the resulting system.” Apple, Inc., 842 F.3d at 1241.
Claim 9 simply recites functional results to be achieved by any means.
Thus, we do not agree that claim 9 is “directed to improvements in computer
functionality.” (See Appeal Br. 16.) And for the reasons discussed above,
we do not find persuasive Appellant’s argument that there is no real-world
equivalent to the recited limitations. See DDR Holdings, 773 F.3d at 1258.
We are not persuaded of error.

Claim 10
Claim 10 recites:
10. The method of claim 1, wherein:
the first variation of the VU-ad comprises a pop-up
message; and
the second variation of the VU-ad comprises a VU-ad
avatar interacting with the second avatar.

Appellant argues that the Examiner failed to present a prima facie
case for ineligibility because “the Examiner failed to address the limitations”
of the claim. (Appeal Br. 16.) Appellant further argues that
similar to the patent-eligible claims in DDR Holdings, there is no
real-world equivalent outside of computer networks to
automatically selecting first and second variations of a VU-ad to
be presented to respective first and second users from a plurality
of possible VU-ad variations based on tolerance data of the users.

(Id.)
The Examiner answers that the claim merely “narrow[s] the abstract
idea” and does not disclose a technological improvement. (Answer 7.)
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As discussed above, the claims in DDR Holdings “specify how
interactions with the Internet are manipulated to yield a desired result” and
override the conventional sequence of events ordinarily triggered by clicking
on a hyperlink. DDR Holdings, 773 F.3d at 1258. Appellant does not
persuasively argue that the claim steps override or vary some routine and
conventional sequence of events ordinarily triggered by the click of a
hyperlink. Nor does Appellant argue why the Examiner erred in
determining that the claims merely “narrow the abstract idea.” (See
Answer 7.) And for the reasons discussed above, we do not find persuasive
Appellant’s argument that there is no real-world equivalent to the recited
limitations. See DDR Holdings, 773 F.3d at 1258. We are not persuaded of
error.

Claim 12
Claim 12 recites:
12. The method of claim 1, wherein:
the determining that an action of the first avatar of the first
user has triggered the VU-ad in the VU comprises determining
that the first avatar has interacted with an object in the VU; and
the determining that an action of the second avatar of the
second user has triggered the VU-ad in the VU comprises
determining that the second avatar has interacted with the object
in the VU.

Appellant argues that the Examiner failed to present a prima facie
case for ineligibility because “the Examiner failed to address the limitations”
of the claim. (Appeal Br. 17.) Appellant further argues that
similar to the patent-eligible claims in DDR Holdings, there is no
real-world equivalent outside of computer networks to
“determining that the first avatar has interacted with an object in
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the VU” or “determining that the second avatar has interacted
with the object in the VU”, and the claim does more than merely
apply an abstract idea using a generic computer.

(Id.)
The Examiner answers that the claim merely “narrow[s] the abstract
idea” and does not disclose a technological improvement. (Answer 7.)
Claim 12 does not recite how it is determined that an avatar has
interacted with an object. It does not recite “a particular way of
programming or designing the software . . . , but instead merely claim[s] the
resulting system.” Apple, Inc., 842 F.3d at 1241. Claim 12 merely recites
functional results to be achieved by any means. Thus, we do not agree that
claim 12 is “directed to improvements in computer functionality.” (See
Appeal Br. 17.) And for the reasons discussed above, we do not find
persuasive Appellant’s argument that there is no real-world equivalent to the
recited limitations. See DDR Holdings, 773 F.3d at 1258. We are not
persuaded of error.

Claim 13
Claim 13 recites:
13. The method of claim 4, wherein at least one of the first and
second incentives comprises a virtual reality object placed in a
VU inventory of the first or second user.

Appellant argues that the Examiner failed to present a prima facie
case for ineligibility because “the Examiner failed to address the limitations”
of the claim. (Appeal Br. 18.) Appellant further argues that
similar to the patent-eligible claims in DDR Holdings, there is no
real-world equivalent outside of computer networks to providing
different incentives to first and second users wherein “at least
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one of the first and second incentives comprises a virtual reality
object placed in a VU inventory of the first or second user.”

(Id.)
The Examiner answers that the claim merely “narrow[s] the abstract
idea” and does not disclose a technological improvement. (Answer 7.)
As discussed above, the claims in DDR Holdings “specify how
interactions with the Internet are manipulated to yield a desired result” and
override the conventional sequence of events ordinarily triggered by clicking
on a hyperlink. DDR Holdings, 773 F.3d at 1258. Appellant does not
persuasively argue that the claim steps override or vary some routine and
conventional sequence of events ordinarily triggered by the click of a
hyperlink. Nor does Appellant argue why the Examiner erred in
determining that the claims merely “narrow the abstract idea.” (See
Answer 7.) And for the reasons discussed above, we do not find persuasive
Appellant’s argument that there is no real-world equivalent to the recited
limitations. See DDR Holdings, 773 F.3d at 1258. We are not persuaded of
error.

Claim 14
Claim 14 recites:
14. The method of claim 1, further comprising:
offering, by the host server, an incentive to the first user;
and
adjusting, by the host server, the measure of tolerance for
advertising of the first user to a higher measure of tolerance
based on the first user accepting the incentive;
wherein the automatically selecting the first variation of
the VU-ad to be presented to the first user is based on the higher
measure of tolerance.

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Appellant argues that the Examiner failed to present a prima facie case
for ineligibility because “the Examiner failed to address the limitations” of
the claim. (Appeal Br. 18.) Appellant further argues that the adjusting
limitation in claim 14 recites “other than what is well-understood, routine
and conventional activity in the field.” (Id. at 18.)
The Examiner answers that the claim merely “narrow[s] the abstract
idea” and does not disclose a technological improvement. (Answer 7.)
Claim 14 recites sending information to a user (offering an incentive)
and modifying information based on received information (adjusting the
measure of tolerance based on user action). Claim 14 does not recite how
the information is sent, modified, or received. Sending, modifying, and
receiving data are routine and conventional activities. See, e.g.,
Ultramercial, Inc., 772 F.3d at 714–15, Intellectual Ventures I LLC, 792
F.3d at 1369, Bridge and Post, Inc., 778 F. App’x at 886–87. We are not
persuaded of error.

Claim 15
Claim 15 recites:
15. The method of claim 14, wherein the higher measure of
tolerance indicates an authorization to teleport the first avatar to
another location in the VU where the first variation of the VU-ad
is staged, and the automatically presenting the first variation of
the VU-ad to the first client device of the first user comprises
teleporting the first avatar to the other location where the first
variation of the VU-ad is staged.

Appellant argues that the Examiner failed to present a prima facie
case for ineligibility because “the Examiner failed to address the limitations”
of the claim. (Appeal Br. 19.) Appellant further argues that claim 15 recites
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“other than what is well-understood, routine and conventional activity in the
field.” (Id. at 19.) And Appellant argues that “similar to the patent-eligible
claims in DDR Holdings, there is no real-world equivalent to ‘teleporting the
first avatar to the other location where the first variation of the VU-ad is
staged.’” (Id.)
The Examiner answers that the claim merely “narrow[s] the abstract
idea” and does not disclose a technological improvement. (Answer 7.)
Claim 15 provides an explanation as to what is construed as an
authorization, i.e., “the higher measure of tolerance indicates an
authorization,” and narrows the scope of what constitutes “presenting the
first variation of the VU-ad to the first client device of the first user.”
Claim 15 does not recite how any step is performed. It does not recite “a
particular way of programming or designing the software . . . , but instead
merely claim[s] the resulting system.” Apple, Inc., 842 F.3d at 1241.
Claim 15 simply recites functional results to be achieved by any means.
As discussed above, the claims in DDR Holdings “specify how
interactions with the Internet are manipulated to yield a desired result” and
override the conventional sequence of events ordinarily triggered by clicking
on a hyperlink. DDR Holdings, 773 F.3d at 1258. Appellant does not
persuasively argue that the claim steps override or vary some routine and
conventional sequence of events ordinarily triggered by the click of a
hyperlink. Nor does Appellant argue why the Examiner erred in
determining that the claims merely “narrow the abstract idea.” (See
Answer 7.) And for the reasons discussed above, we do not find persuasive
Appellant’s argument that there is no real-world equivalent to the recited
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limitations. See DDR Holdings, 773 F.3d at 1258. We are not persuaded of
error.

Claim 6 and 16
Claims 6 and 16 depend from independent claim 5. Appellant argues
claims 6 and 16 together. (Appeal Br. 26.) We select claim 16 as
representative. Claim 6 will stand or fall with claim 16. See 37 C.F.R.
§ 41.37(c)(1)(iv).
Claim 16 recites:
16. The method of claim 5, wherein the tolerance data of the
first user includes a numeric value indicating a level of interest
the first user has with respect to a subject of the VU-ad, and
wherein the automatically altering the VU-ad based on the
tolerance data of the first user comprises determining a level of
tolerance for the subject VU-ad of the first user based on the
numeric value, wherein the VU-ad is altered based on the level
of tolerance for the subject of the VU-ad.

Appellant argues that the Examiner failed to present a prima facie
case for ineligibility because “the Examiner failed to address the limitations”
of the claims. (Appeal Br. 26.) Appellant further argues that claim 16
recites “other than what is well-understood, routine and conventional
activity in the field.” (Id. at 27.) And Appellant argues that “similar to the
patent-eligible claims in DDR Holdings, there is no real-world equivalent” to
the limitation recited in claim 16. (Id.)
The Examiner answers that the claim merely “narrow[s] the abstract
idea” and does not disclose a technological improvement. (Answer 7.)
Claim 16 narrows the scope of claim 5, i.e., “the tolerance data of the
first user includes a numeric value,” and “automatically altering the VU-ad
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based on the tolerance data . . . comprises determining a level of tolerance.”
Claim 16 does not recite how any step is performed. It does not recite “a
particular way of programming or designing the software . . . , but instead
merely claim[s] the resulting system.” Apple, Inc., 842 F.3d at 1241.
Claim 16 recites functional results to be achieved by any means.
As discussed above, the claims in DDR Holdings “specify how
interactions with the Internet are manipulated to yield a desired result” and
override the conventional sequence of events ordinarily triggered by clicking
on a hyperlink. DDR Holdings, 773 F.3d at 1258. Appellant does not
persuasively argue that the claim steps override or vary some routine and
conventional sequence of events ordinarily triggered by the click of a
hyperlink. Nor does Appellant argue why the Examiner erred in
determining that the claims merely “narrow the abstract idea.” (See
Answer 7.) And for the reasons discussed above, we do not find persuasive
Appellant’s argument that there is no real-world equivalent to the recited
limitations. See DDR Holdings, 773 F.3d at 1258. We are not persuaded of
error.

Summary
In view of the above, we are not persuaded that the Examiner erred in
rejecting claims 1–16.
Appellant’s other arguments have been considered but are not
persuasive.

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CONCLUSION
The Examiner’s rejection of claims 1–16 under 35 U.S.C. § 101 is
affirmed.
Specifically:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–16 101 Eligibility 1–16

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