Jens Kjelsbak et al.

Patent Trials and Appeals Board

Aug 26, 2020

13585228 - (D) (P.T.A.B. Aug. 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.
13/585,228 08/14/2012 Jens Kjelsbak 2043.995US1 5091
49845 7590 08/26/2020
SCHWEGMAN LUNDBERG & WOESSNER/EBAY
P.O. BOX 2938
MINNEAPOLIS, MN 55402
EXAMINER
SNIDER, SCOTT
ART UNIT PAPER NUMBER
3621
NOTIFICATION DATE DELIVERY MODE
08/26/2020 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):
SLW@blackhillsip.com
USPTO@SLWIP.COM
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte JENS KJELBAK, JESPER HART-HANSEN, and
JOHN MCELLIGOTT
____________________

Appeal 2018-008796
Application 13/585,2281
Technology Center 3600
____________________

Before MARC S. HOFF, ERIC S. FRAHM, and SCOTT B. HOWARD,
Administrative Patent Judges.

HOFF, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from a Final Rejection of
claims 1–8, 10–15, and 17–20.2 We have jurisdiction under 35 U.S.C.
§ 6(b).
We affirm.
Appellant’s invention is a system and method to create, distribute, and
redeem offers on a mobile platform. A first set of information describing
terms of an offer for a product or service, and a second set of information

1 Appellant states that the real party in interest is eBay Inc. Appeal Br. 4.
2 Claims 9 and 16 have been cancelled.
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identifying a first zone and a second zone, may be received from a
computing device corresponding to a merchant. An exclusion zone and an
inclusion zone may be generated based, at least in part, on the information
identifying the first zone and the second zone. The offer may be selectively
distributed to a first plurality of mobile devices located outside the exclusion
zone and within the inclusion zone. Abstract.
Claim 1 is reproduced below:

1. A system comprising:
one or more processors and executable instructions accessible on a
computer-readable medium that, when executed, cause the one or more
processors to perform operations comprising:
receiving, over a network from a computing device corresponding to a
merchant, a first set of information describing terms of an offer for a product
or service provided by the merchant and a second set of information
identifying a first zone and a second zone;
generating the offer for the product or service based, at least in part,
on the first set of information;
generating an exclusion zone and an inclusion zone based, at least in
part, on the information identifying the first zone and the second zone,
respectively, the exclusion zone overlapping at least a portion of the
inclusion zone;
assigning the exclusion zone a first color and the inclusion zone a
second color for display on the computing device;
selectively distributing the offer to a first plurality of mobile devices
located outside the exclusion zone and within the inclusion zone, the
selectively distributing to the first plurality including transmitting, over the
network, instructions to cause each of the first plurality of mobile devices to
generate a user interface that is configured to display the offer;
selectively distributing the offer to a second plurality of mobile
devices, the selectively distributing to the second plurality including
transmitting, over the network, instructions to cause each of the second
plurality of mobile devices to generate a user interface that is configured to
display the offer, such that the offer remains deactivated and invisible to the
second plurality of mobile devices at least for a period of time;
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monitoring a number of the mobile devices from which the offer is
purchased; and
adjusting a boundary of at least one of the exclusion zone or the
inclusion zone based on at least the number of mobile devices from which
the offer is purchased.

The prior art relied upon by the Examiner as evidence is:

Name Reference Date
Linlor US 2005/0199709 A1 Sept. 15, 2005
Bucher US 2007/0281692 A1 Dec. 6, 2007
Madhavan US 2007/0255935 A1 Oct. 16, 2008
Jetha US 2011/0137735 A1 June 9, 2011
Jain US 2012/0066066 A1 Mar. 15, 2012

Claims 1, 8, 11, and 20 stand rejected under 35 U.S.C. § 112(a) as
failing to comply with the written description requirement. Final Act. 5.
Claims 1–15 and 17–20 stand rejected under 35 U.S.C. § 101 as being
directed to non-statutory subject matter. Final Act. 7.
Claims 1–8, 11–15, 17, and 20 stand rejected under 35 U.S.C. § 103
as being unpatentable over Jain, Jetha, and Bucher. Final Act. 9.
Claim 10 stands rejected under 35 U.S.C. § 103 as being unpatentable
over Jain, Jetha, Bucher, and Madhavan. Final Act. 24.
Claim 19 stands rejected under 35 U.S.C. § 103 as being unpatentable
over Jain, Jetha, Bucher, and Linlor. Final Act. 24.
Throughout this decision, we make reference to the Appeal Brief
(“Appeal Br.,” filed Jan. 29, 2018) and the Examiner’s Answer (“Ans.,”
mailed July 13, 2018) for their respective details.
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ISSUES
1. Does the claimed invention recite an abstract idea?
2. Is the recited abstract idea integrated into a practical application?
3. Does the specification provide written description support for
adjusting a boundary of at least one of the exclusion zone and the inclusion
zone?
4. Does the combination of Jain, Jetha, and Bucher teach monitoring a
number of the mobile devices from which the offer is purchased, and
adjusting a boundary of at least the exclusion zone or the inclusion zone
based on that number?
PRINCIPLES OF LAW
An invention is patent-eligible if it claims a “new and useful process,
machine, manufacture, or composition of matter.” 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. See, e.g., Alice Corp. v. CLS Bank Int’l,
573 U.S. 208, 216 (2014).
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.
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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, 69 (1972)).
Concepts determined to be patent eligible include physical and chemical
processes, such as “molding rubber products” (Diamond v. Diehr, 450
U.S. 175, 192 (1981)); “tanning, dyeing, making waterproof cloth,
vulcanizing India rubber, smelting ores” (id. at 184 n.7 (quoting Corning
v. Burden, 56 U.S. 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
mathematical formula.” Diehr, 450 at 176; see also id. at 192 (“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
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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 (quotation marks 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 PTO recently published revised guidance on the application of
§ 101. USPTO’s January 7, 2019 Memorandum, 2019 Revised Patent
Subject Matter Eligibility Guidance (“Memorandum”). 84 Fed. Reg. 50.
Under that 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); and
(2) additional elements that integrate the judicial exception into a
practical application (see MPEP § 2106.05(a)–(c), (e)–(h)).
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:
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(3) adds a specific limitation beyond the judicial exception that
are 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.
See Memorandum.
Under the written description requirement of 35 U.S.C. § 112, the
disclosure of the application relied upon must reasonably convey to one of
ordinary skill in the art that, as of the filing date of the application, the
inventor had possession of the later-claimed subject matter. Vas-Cath Inc. v.
Mahurkar, 935 F.2d 1555, 1563 (Fed. Cir. 1991). “One shows that one is
‘in possession’ of the invention by describing the invention, with all its
claimed limitations, not that which makes it obvious.” Lockwood v.
American Airlines, Inc., 107 F.3d 1565, 1572 (Fed. Cir. 1997) (emphasis in
original).
Although “the meaning of terms, phrases, or diagrams in a disclosure
is to be explained or interpreted from the vantage point of one skilled in the
art, all the limitations must appear in the specification.” Id. The
Specification need not describe the claimed subject matter in exactly the
same terms as used in the claims, but it must contain an equivalent
description of the claimed subject matter. Id.
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ANALYSIS
SECTION 101 REJECTION
Representative claim 1 recites the following limitations. Aspects of
the claimed abstract idea are indicated in italics. Additional non-abstract
limitations are noted in bold:
1. A system comprising:
one or more processors and executable instructions accessible on a
computer-readable medium that, when executed, cause the one or more
processors to perform operations comprising:
(a) receiving, over a network from a computing device
corresponding to a merchant, a first set of information describing terms of
an offer for a product or service provided by the merchant and a second set
of information identifying a first zone and a second zone;
(b) generating the offer for the product or service based, at least in
part, on the first set of information;
(c) generating an exclusion zone and an inclusion zone based, at least
in part, on the information identifying the first zone and the second zone,
respectively, the exclusion zone overlapping at least a portion of the
inclusion zone;
(d) assigning the exclusion zone a first color and the inclusion zone a
second color for display on the computing device;
(e) selectively distributing the offer to a first plurality of mobile
devices located outside the exclusion zone and within the inclusion zone, the
selectively distributing to the first plurality including transmitting, over the
network, instructions to cause each of the first plurality of mobile devices to
generate a user interface that is configured to display the offer;
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(f) selectively distributing the offer to a second plurality of mobile
devices, the selectively distributing to the second plurality including
transmitting, over the network, instructions to cause each of the second
plurality of mobile devices to generate a user interface that is configured to
display the offer, such that the offer remains deactivated and invisible to the
second plurality of mobile devices at least for a period of time;
(g) monitoring a number of the mobile devices from which the offer is
purchased; and
(h) adjusting a boundary of at least one of the exclusion zone or the
inclusion zone based on at least the number of mobile devices from which
the offer is purchased.
These limitations, under the broadest reasonable interpretation,
constitute steps to receive an offer for a product or service, receive
information concerning where geographically that offer is to be distributed,
and selectively distribute that offer to a plurality of mobile devices within
the preferred geographical area. The method steps further comprise
distributing the offer to a second plurality of mobile devices in a deactivated
state, monitoring the number of mobile devices from which the offer is
purchased, and adjusting the geographical boundary of the offer depending
on the number of purchases made.
We determine that limitation (a), receiving information describing
terms of an offer and describing a first and second zone, constitutes data
gathering steps. We determine that limitation (d), assigning display colors to
geographic zones, constitutes extra-solution activity.
The Memorandum recognizes that certain groupings of subject matter
have been found by the courts to constitute judicially excepted abstract
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ideas: (a) mathematical concepts, (b) certain methods of organizing human
activity, and (c) mental processes. Memorandum, 84 FR at 52. We determine
that the claim steps beyond those directed to extra-solution activity (i.e., data
gathering or data storage) – limitation (b), generating the offer; limitation (c)
generating the geographic zones; limitation (e), distributing the offer to
mobile devices appropriately located; limitation (f), distributing the
deactivated offer to further mobile devices; limitation (g) monitoring the
number of purchasing mobile devices; and limitation (h), adjusting the
geographic area within which the offer is made – constitute certain methods
of organizing human activity, to wit, advertising. Specifically, in the
invention under appeal, the limitations constitute determining which
potential customers are to receive an advertisement conveying an offer to
purchase particular goods or services.3

3 See, e.g., Alice, 573 U.S. at 219–20 (concluding that use of a third party to
mediate settlement risk is a ‘‘fundamental economic practice’’ and thus an
abstract idea); id. (describing the concept of risk hedging identified as an
abstract idea in Bilski as “a method of organizing human activity’’); Bilski,
561 U.S. at 611–612 (concluding that hedging is a “fundamental economic
practice” and therefore an abstract idea); Bancorp, 687 F.3d at 1280
(concluding that “managing a stable value protected life insurance policy by
performing calculations and manipulating the results’’ is an abstract idea);
Inventor Holdings, LLC v. Bed Bath & Beyond, Inc., 876 F.3d 1372, 1378–
79 (Fed. Cir. 2017) (holding that concept of “local processing of payments
for remotely purchased goods” is a “fundamental economic practice, which
Alice made clear is, without more, outside the patent system.’’); OIP Techs.,
Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1362–63 (Fed. Cir. 2015)
(concluding that claimed concept of “offer-based price optimization” is an
abstract idea “similar to other ‘fundamental economic concepts’ found to be
abstract ideas by the Supreme Court and this court”).
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We regard the claimed concept of distributing advertisements to be a
method of organizing human activity found by the courts to constitute
patent–ineligible subject matter. Advertising in published materials has been
taking place for centuries, and for nearly as long, advertisers have been
attempting to target their materials to the audience most likely to purchase
their offerings. We determine that the claimed generation of an offer to
purchase a good or service, followed by the distribution of that offer to
mobile devices within certain boundaries, and the potential future
adjustment of those boundaries, is analogous to commercial or legal
interactions, including advertising, marketing or sales activities or behaviors,
that the courts have found to be patent–ineligible. See, e.g., Ultramercial,
Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed Cir. 2014) (holding that claim
“describe[ing] only the abstract idea of showing an advertisement before
delivering free content” is patent ineligible); In re Ferguson, 558 F.3d 1359,
1364 (Fed. Cir. 2009) (holding methods “directed to organizing business or
legal relationships in the structuring of a sales force (or marketing
company)“ to be ineligible); Credit Acceptance, 859 F.3d 1044 at 1054
(“The Board determined that the claims are directed to the abstract idea of
‘processing an application for financing a purchase.’ . . . We agree.”).
Appellant argues that the Examiner has not articulated to what the
claims are directed with enough specificity to ensure the Step One inquiry is
meaningful. Appeal Br. 13. We are unpersuaded that the Examiner’s
articulation is insufficient. We agree with the Examiner that
Claim 1 is directed to the abstract idea of presenting
advertisements to users based upon geometric inclusion and
exclusion zones that vary over time. The processes of
generating offers based on received sets of information,
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generating zones based on the received information,
distributing offers to mobile devices outside the exclusion zone
and within the inclusion zone, distributing the offers with a
delayed availability period, monitoring the time left for the
offers to remain active, and adjusting the boundary of the zones
based on the period of time left all describe the abstract idea.

Final Act. 7.
We find that the Examiner fully considered the limitations of
independent claim 1 and properly characterized the abstract idea recited
therein.
Appellant contends that the Examiner did not identify any additional
elements of the dependent claims and explain why they do not add
significantly more to the alleged judicial exception. Appeal Br. 13. This
argument is not persuasive for two reasons. First, the Examiner included a
discussion of the limitations of the dependent claims in the Final Action.
Final Act. 8. Second, Appellants present no argument directed to any
dependent claim being patent-eligible separately from any independent
claim. There being no separate argument, the Board selects independent
claim 1 as a representative claim, and dependent claims stand or fall under
§ 101 with the independent claim.
Appellant refers to the self-referential table identified in Enfish4 and
argues that the focus of the claims under appeal is on an improvement to
computer functionality itself. Appeal Br. 14. Appellant urges that the claims
at issue are directed to information distribution over a network. Id.
According to Appellant, example systems distribute the information to a
second plurality of mobile devices but keep the offers deactivated and

4 Enfish, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016).
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invisible for a period of time. Id. This approach allows, for example,
distribution of the information to more mobile devices rather than only
selectively deploying to a small subset of mobile devices. Id. Appellant
further points out that the system can automatically adjust the boundaries of
a zone to adjust the distribution of the information. Id.
We are not persuaded by Appellants argument. Appellant argues that
the inventive approach allows distribution “to more mobile devices rather
than only selectively deploying to a small subset of mobile devices.” Appeal
Br. 14. Distribution to more mobile devices, as a practical matter, means
distribution to more potential customers. We determine that the invention is
concerned with solving the business problem of reaching more customers,
rather than improving the functioning of a computer. Appellant has not
explained what “improvement to the functioning of a computer,” analogous
to that identified in Enfish, is recited in the claims under appeal.
Appellants further contend that the invention allows adjustment of the
distribution of the information through adjustment of the inclusion or
exclusion zones. Appeal Br. 14. As stated supra, we determine that
Appellants invention proposes a solution to the business problem of reaching
customers within particular geographic boundaries, rather than proposing an
improvement to the underlying technology.
Appellant asserts that the claimed elements “recite a specific solution
for optimizing the distribution of information over a network to a plurality of
mobile devices based on location.” Appeal Br. 15. Appellant then quotes the
entirety of claim 11 and claims that “[c]learly these limitations are directed
to improvement of a computer – a networked information distribution
server/system.” Appeal Br. 16. Appellants argument is not persuasive.
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Appellant has not cited evidence in support of the contention that there is
improvement to a computer. We determine, rather, that Appellants invention
is concerned with solving the business problem of providing an
advertisement to purchase to an optimal number of customers.
Accordingly, we conclude that the claims recite a method of
organizing human activity (specifically, advertising), which is one of the
categories of abstract ideas recognized in the Memorandum. 84 Fed. Reg. at
52. We conclude that the claims recite an abstract idea.

INTEGRATED INTO A PRACTICAL APPLICATION
We next evaluate whether the claims integrate the identified abstract
idea of the fundamental economic practice of processing a financial
transaction between a user and a payment recipient, and of charging the
appropriate user for the transaction, into a practical application. See
Memorandum, 84 Fed. Reg. at 51. We consider whether there are any
additional elements beyond the abstract ideas that, individually or in
combination, “integrate the [abstract ideas] into a practical application, using
one or more of the considerations laid out by the Supreme Court and the
Federal Circuit.” Id. at 54–55.
The Memorandum provides exemplary considerations that are
indicative that an additional element may have integrated the exception (i.e.,
the abstract idea recited in the claim) into a practical application:
(i) an improvement to the functioning of a computer;
(ii) an improvement to another technology or technical field;
(iii) an application of the abstract idea with, or by use of, a
particular machine;
(iv) a transformation or reduction of a particular article to a
different state or thing; or
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(v) other meaningful limitations beyond generally linking the
use of the abstract idea to a particular technological
environment.
See Memorandum, 84 FR at 55; MPEP §§ 2106.05(a)–(c), (e)–(h).
As noted supra, we note that the claims recite the additional elements
of a “processor,” “computing device,” “computer-readable medium,”
“network,” “merchant,” and “mobile device.”
Appellant states that the methods of the invention “may be performed
by processing logic that may comprise hardware . . . such as at least one
processor.” Spec. ¶ 99. Appellants only define “computing device” as
corresponding to “client machine 106, 108.” The client machines are not
defined but are disclosed as being connected to a network. We determine
that client machines, and therefore computing devices, are generic computer
components.
Appellant defines a “computer system” 700 as including a “processor”
702, which may comprise a central processing unit, graphics processing unit,
or both. Spec. ¶ 104. No further description of “processor” appears in the
Specification. We determine, then, that Appellants’ disclosure of a
“processor” is that of a generic component.
Appellant does not disclose a computer-readable medium but does
disclose a machine-readable medium, “such as a storage device, where the
methods 500 and 600 are adapted to be executed by one or more
processors.” Spec. ¶ 102. Appellant discloses that the term “shall
accordingly be taken to include, but not be limited to, solid-state memories,
optical media, and magnetic media.” Spec. ¶ 106. We do not find disclosure
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in Appellants Specification of a computer-readable medium that is not a
generic component.
Appellants disclose that the method of the invention employs a
network to distribute offer(s) for the product or service, but does not
otherwise specify any details of said network. We determine that Appellants
disclose a network as a generic element.
Appellant does not specifically define the term “merchant.” It is
apparent from context that a “merchant” is an offeror of the product or
service advertised in the offers distributed to mobile devices according to the
invention.
Appellants disclose a “mobile device” only as “e.g., a smart phone.”
We determine that Appellants Specification does not disclose a non-generic
mobile device.
Appellant argues that the claims recite significantly more than an
abstract idea. Appeal Br. 17–18. According to Appellants, the claimed
ordered combination cannot reasonably be characterized as a ‘generic’
computer function or as a ‘well-understood, routine and conventional
technological component’ at least for the reasons provided below with
respect to the 35 U.S.C. § 103(a) rejection. Appeal Br. 18. Appellants
argument is not persuasive. The question of eligibility under § 101 is distinct
from the question of obviousness under § 103. See Intellectual Ventures I
LLC v. Symantec Corp., 838 F.3d 1307, 1315 (Fed. Cir. 2016). The
Examiner’s application of a reference teaching this element in a § 103
rejection is not evidence that the element is not well-understood, routine, and
conventional.
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Appellant contends that “the claims at issue are directed to a technical
improvement to the technological environment of mobile devices and data
centers/cell phone networks by distributing offers on mobile devices but
keeping the offers invisible and deactivated as opposed to conventional
systems that only distributes (sic) active offers.” Appeal Br. 18. According
to Appellants, the invention allows “the distribution of the information to
more mobile devices rather than only selectively deploying to a small subset
of mobile devices.” Id. Appellants, analogizing to DDR Holdings,5 argues
that the claimed invention produces “a result that overrides the routine and
conventional sequence of events ordinarily triggered by a click of a
hyperlink.” Appeal Br. 19.
Appellants argument here is not persuasive. Appellants have not
explained why the claimed “solution” is “necessarily rooted in computer
technology in order to overcome a problem specifically arising in the realm
of computer networks.” DDR Holdings, 773 F.3d at 1257. Appellants
invention seeks to solve a business problem, rather than a technological
problem, of how to get an advertisement presented to an optimum number of
potential customers. Appellants do not explain the relevance of distributing
offers to certain mobile devices but keeping those offers invisible and
deactivated. Appeal Br. 18.
Reviewing the Memorandum’s considerations, we do not find
additional elements in the claims that improve the functioning of a
computer, improve another technology, apply the abstract idea with a
particular machine, or transform a particular article to a different state or

5 DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014).
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thing. By contrast, we determine that Applicant’s invention merely applies
the abstract idea of distributing advertisements to potential customers
through the use of generic computer components.
We conclude that the claimed invention does not integrate the
identified judicial exception into a practical application.

INVENTIVE CONCEPT
Last, we consider whether the claims express an inventive concept,
i.e., whether any additional claim elements “‘transform the nature of the
claim’ into a patent-eligible application.” Alice, 573 U.S. at 217 (quoting
Mayo, 566 U.S. at 78, 79). This requires us to evaluate whether the
additional claim elements add “a specific limitation or combination of
limitations that are not well-understood, routine, and conventional activity in
the field” or “simply append[] well-understood, routine, conventional
activities previously known to the industry, specified at a high level of
generality.” Memorandum, 84 Fed. Reg. at 50, 56.
As noted supra, we note that the claims recite the additional elements
of “processor,” “computing device,” “computer-readable medium,”
“network,” “merchant,” and “mobile device.” We determine, supra, that
these additional elements are disclosed as generic components. We regard
these additional elements, in the absence of further argument, as similarly
well-understood, routine, and conventional.
Regarding the use of the recited generic computer components
identified – i.e., “processor,” “computing device,” “computer-readable
medium,” “network,” and “mobile device” – the Supreme Court has held
that “the mere recitation of a generic computer cannot transform a patent-
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ineligible abstract idea into a patent-eligible invention.” Alice, 573 U.S. at
223. Our reviewing court provides additional guidance: See
FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1096 (Fed. Cir.
2016) (“[T]he use of generic computer elements like a microprocessor or
user interface do not alone transform an otherwise abstract idea into patent-
eligible subject matter.”); OIP Techs, 788 F.3d at 1363 (claims reciting, inter
alia, sending messages over a network, gathering statistics, using a
computerized system to automatically determine an estimated outcome, and
presenting offers to potential customers found to merely recite “‘well-
understood, routine conventional activit[ies],’ either by requiring
conventional computer activities or routine data-gathering steps” (alteration
in original)). We determine from Appellants’ bare disclosure of these
elements that the claimed processor, computing device, computer-readable
medium, network, and mobile device should be considered generic computer
components. As such, they cannot transform the recited patent-ineligible
abstract idea into a patent-eligible invention.
Appellants have presented no argument contesting the Examiner’s
characterization of any additional claim element as well-understood, routine,
and conventional. Appellants have not contended that the Examiner lacked
factual support for any finding that a claim element is well-understood,
routine, and conventional. As a result, we determine that none of the claim
elements, additional to those limitations we determined to constitute a
mental process, recite a limitation or combination of limitations that are not
well-understood, routine, and conventional activity in the field of user
authentication.

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SUBJECT MATTER ELIGIBILITY - CONCLUSION
We conclude that the claims recite a process of generating an offer,
distributing that offer to mobile devices within a certain area, and adjusting
that distribution area based upon the number of purchases, which we
determine to constitute a method of organizing human activity (i.e.,
advertising), one of the categories of invention found by the courts to
constitute an abstract idea.
We further conclude that the claims do not integrate the identified
abstract idea into a practical application.
We further conclude that the claimed invention does not recite
additional claim elements that transform the nature of the claim into a
patent-eligible application of an abstract idea.
Accordingly, we sustain the Examiner’s 35 U.S.C. § 101 rejection of
claims 1–8, 10–15, and 17–20.

35 U.S.C. § 112 rejection
The Examiner rejected claims 1, 11, and 20 as failing to comply with
the written description requirement because the disclosure does not reveal
the manner of performance of the step of “adjusting a boundary of at least
one of the exclusion zone or the inclusion zone based on at least the number
of mobile devices from which the offer is purchased.” Final Act. 5. The
Examiner finds that the claim recites “zones are of arbitrary definition
received from ‘the merchant’ (see claim 1) and are adjusted in an
unspecified manner in an unspecified direction. The specification does not
describe the manner in which the arbitrary boundaries are mathematically
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adjusted according to the ‘number[’] of mobile devices from which the offer
is purchased’ (see claim 1).” Ans. 3.
Appellant argues that the Specification provides support for this claim
language at paragraphs 0044 and 0045. Appeal Br. 11. The Specification
discloses that “[v]arious information may be monitored regarding status of a
given deal, such as the number of mobile devices to which the deal has been
distributed to, the number of mobile devices from which the deal has been
purchased, . . . and so on.” Spec. ¶ 44. Based on the number of redemptions
of the deal, or the ratio of redemptions to purchases of the deal, indicating
either fewer sales than expected or more sales than desired, “at least one of
the boundary line 320 of the exclusion zone or the boundary line 325 of the
inclusion zone may be dynamically adjusted.” Spec. ¶ 45.
We agree with Appellants that the Specification describes adjusting a
boundary of at least one zone “with reasonable clarity.” Appeal Br. 11. The
Specification describes that, just as the claims recite, the number of sales is
compared to a threshold, and based on the results of that comparison, at least
one boundary line may be dynamically adjusted. We find that the
Specification describes the invention, with all its claimed limitations. We
therefore conclude that the inventor had possession of the claimed subject
matter. Vas-Cath Inc., 935 F.2d at 1563; Lockwood, 107 F.3d at 1572.
We conclude that the Examiner erred in rejecting claims 1–8, 10–15,
and 17–20 under 35 U.S.C. § 112, and we do not sustain the rejection.

35 U.S.C. § 103 Rejection
Claims 1–8, 11–15, 17, 18, and 20
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Appellant argues that Jain does not teach “modifying the size of the
exclusion region” because Jain teaches that “[o]ther entities, such as users. . .
and advertisers . . ., can provide usage information to the system.” Appellant
reasons that Jain does not perform any “monitoring a number of the mobile
devices from which the offer is purchased,” itself, relying on other entities to
report usage information. Appeal Br. 20; Jain ¶ 26.
We are not persuaded by Appellants argument. We agree with the
Examiner’s finding that Jain teaches that the usage information provided to
the system, cited by Appellants supra, “can include measured or observed
user behavior related to ads that have been served.” Ans. 7. Jain ¶ 26. Like
the Examiner, we find that “measured or observed user behavior” means that
Jain teaches monitoring the mobile devices from which the offer is
purchased, as the claims require. Ans. 7.
Appellant further argues that Jain does not teach “adjusting a
boundary of at least one of the exclusion zone or the inclusion zone,”
because Jain “merely sends a recommendation to an advertiser to reduce or
increase the size of the exclusion regions” but “does not teach the system
automatically adjusting the boundary, itself.” Appeal Br. 20 (citingJain
¶ 58). We are not persuaded by Appellants argument. Exemplary claim 1
does not recite “automatically” adjusting the boundary of the exclusion zone.
Jain teaches that “a determination is made as to whether a predicted rate of
advertisements sent to users in the target region exceeds or is less than a
threshold rate . . . . If the predicted rate is below a threshold rate, a
recommendation can be sent (e.g., to an advertiser 102) to reduce the size of
the exclusion region (in an effort to increase the rate). If the predicted rate is
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above a threshold rate, a recommendation can be sent to increase the size of
the exclusion region.” Jain ¶ 58; see Ans. 8.
Further, we agree with the Examiner that “[w]hile Jain does not
appear to specify automating this change in zone size, it would have been
obvious to a person of ordinary skill in the art . . . to automate the zone-size
recommendation taught by Jain in order to remove the requirement for an
advertiser to manually agree to a change.” Final Act. 12.
We are not persuaded that the Examiner erred in rejecting claims 1–8,
11–15, 17, 18, and 20 over Jain, Jetha, and Bucher. We sustain the
Examiner’s § 103 rejection.
Claims 10 and 19
Appellant does not present argument directed to the Examiner’s § 103
rejection of claims 10 and 19.
We therefore sustain the Examiner’s rejection of claim 10 over Jain,
Jetha, Bucher, and Madhavan, for the reasons given supra with respect to
independent claim 1.
We therefore sustain the Examiner’s rejection of claim 19 over Jain,
Jetha, Bucher, and Linlor, for the reasons given supra with respect to
independent claim 11.
CONCLUSIONS
1. The claimed invention recites an abstract idea.
2. The recited abstract idea is not integrated into a practical
application.
3. The specification provides written description support for adjusting
a boundary of at least one of the exclusion zone and the inclusion zone.
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4. The combination of Jain, Jetha, and Bucher teaches monitoring a
number of the mobile devices from which the offer is purchased, and
adjusting a boundary of at least the exclusion zone or the inclusion zone
based on that number.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/
Basis 
Affirmed Reversed
1–8, 10–15,
17–20
101 Subject Matter
Eligibility
1–8, 10–
15, 17–20

1–8, 11–15,
17, 18, and
20
103 Jain, Jetha, Bucher 1–8, 11–
15, 17,
18, 20

10 103 Jain, Jetha,
Bucher,
Madhavan
10
19 103 Jain, Jetha,
Bucher, Linlor
19
1–8, 10–15,
17–20
112 Written
description
1–8, 10–15,
17–20
Overall
Outcome

1–8, 10–
15, 17–20

ORDER
The Examiner’s decision to reject claims 1–8, 10–15, and 17–20
under 35 U.S.C. § 101 is affirmed. The Examiner’s decision to reject claims
1–8, 11–15, 17, 18, and 20 under 35 U.S.C. § 103 as being unpatentable over
Jain, Jetha, and Bucher is affirmed. The Examiner’s decision to reject claim
10 as being unpatentable under § 103 over Jain, Jetha, Bucher, and
Madhavan is affirmed. The Examiner’s decision to reject claim 19 as being
unpatentable under § 103 over Jain, Jetha, Bucher, and Linlor is affirmed.
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The Examiner’s decision to reject claims 1–8, 10–15, and 17–20 under
35 U.S.C. § 112, first paragraph, is reversed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). See
37 C.F.R. § 41.50(f).
AFFIRMED