Kohn, Jeffrey

Patent Trials and Appeals Board

Oct 25, 2019

13952572 - (D) (P.T.A.B. Oct. 25, 2019)

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.
13/952,572 07/26/2013 Jeffrey Kohn 1215-002 4253
88360 7590 10/25/2019
Richards Patent Law P.C.
20 N Clark Street
Suite 3300
Chicago, IL 60602
EXAMINER
SUMMERS, KIERSTEN V
ART UNIT PAPER NUMBER
3688
NOTIFICATION DATE DELIVERY MODE
10/25/2019 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@richardspatentlaw.com
eofficeaction@appcoll.com
robin@richardspatentlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte JEFFREY KOHN
____________

Appeal 2018-0007451
Application 13/952,572
Technology Center 3600
____________

Before NINA L. MEDLOCK, TARA L. HUTCHINGS, and
MATTHEW S. MEYERS, Administrative Patent Judges.

MEYERS, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant2 appeals under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 14, 16–20, 23, and 24, which constitute all the
claims pending in this Application. We have jurisdiction under 35 U.S.C.
§ 6(b). An oral hearing was held on October 15, 2019.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Our Decision references Appellant’s Appeal Brief
(“Appeal Br.,” filed May 8, 2017), the Examiner’s Answer (“Ans.,” mailed
August 25, 2017), and Final Office Action (“Final Act.,” mailed July 7,
2016).
2 Appellant identifies “TopFan, Inc.” as the real party in interest (Appeal
Br. 3).
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We AFFIRM.
CLAIMED INVENTION
Appellant’s claimed invention “relates generally to systems and
methods for validating the completion of an interactive marketing task
(challenge) using a mobile device” (Spec. ¶ 8).
Claim 14 is the sole independent claim on appeal. Claim 14,
reproduced below with bracketed notations added, is illustrative of the
claimed subject matter:
14. A challenge validation method comprising:
[a] provide a challenge setup screen through a user
interface to a target brand, wherein the challenge setup screen
includes inputs for the target brand to provide a challenge
defined by a challenge name, at least one validation
requirement as part of an interactive marketing task, and a
selection of parameters defining eligible users, wherein the
selection of parameters defining eligible users includes one or
more of age, sex, residential location, current location and
occupation, the challenge setup screen further including an
input for requesting a connecting brand to accept the challenge
to be provided through a mobile application branded by the
connecting brand;
[b] receiving the challenge and the connecting brand
request from the target brand;
[c] receiving an acceptance or declination from the at
least one connecting brand for displaying the challenge through
the mobile application branded by the connecting brand;
[d] selecting at least one selected user associated with the
connecting brand wherein the at least one selected user meets
the parameters defining eligible users;
[e] displaying the challenge related to the at least one
target brand on a user interface of a mobile device associated
with the at least one selected user;
[f] receiving validation data related to the at least one
target brand from the at least one selected user;
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[g] determining whether the validation data is within the
validation requirement associated with completion of the
challenge by the at least one selected user; and
[h] triggering an automatic transmission of a digital
reward related to the connecting brand to the at least one
selected user if the validation data is within the validation
requirement,
[i] wherein the connecting brand and the at least one
target brand are different and the connecting brand is an
entertainment celebrity or sports celebrity.

REJECTIONS
1. Claims 14, 16–20, 23, and 24 are rejected under 35 U.S.C.
§ 101 as directed to a judicial exception without significantly more.
2. Claims 14, 16–20, 23, and 24 are rejected under 35 U.S.C.
§ 112(b) or 35 U.S.C. § 112 second paragraph (pre-AIA), as indefinite.
3. Claims 14, 16–20, 23, and 24 are rejected under 35 U.S.C.
§ 103 as unpatentable over Ladd et al. (US 2011/0208572 A1, pub. Aug. 25,
2011), Wu et al. (US 2009/0157559 A1, pub. June 18, 2009), and Roeding
(US 2011/0028160 A1, pub. Feb. 3, 2011).

ANALYSIS
Patent-Ineligible Subject Matter
Appellant argues claims 14, 16–20, 23, and 24 as a group (see Appeal
Br. 5–11). We select independent claim 14 as representative. Claims 16–
20, 23, and 24 stand or fall with independent claim 14. See 37 C.F.R.
§ 41.37(c)(1)(iv).
Under 35 U.S.C. § 101, 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
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35 U.S.C. § 101 to include implicit exceptions: “[l]aws of nature, natural
phenomena, and abstract ideas” are not patentable. E.g., Alice Corp. 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. Alice, 573 U.S. 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 id. at 219 (“On their face, the claims before us are drawn to the concept
of intermediated settlement, i.e., the use of a third party to mitigate
settlement risk.”); see also Bilski v. Kappos, 561 U.S. 593, 611 (2010)
(“Claims 1 and 4 in petitioners’ application explain the basic concept of
hedging, or protecting against risk.”).
Concepts determined to be abstract ideas, and thus patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 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, 191
(1981)); “tanning, dyeing, making water-proof cloth, vulcanizing India
rubber, smelting ores” (id. at 183 n.7 (quoting Corning v. Burden, 56 U.S.
252, 267–68 (1853))); and manufacturing flour (Gottschalk, 409 U.S. at 69
(citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
If the claim is “directed to” an abstract idea, we turn to the second
step of the Mayo/Alice framework, where “we must examine the elements of
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the claim to determine whether it contains an ‘inventive concept’ sufficient
to ‘transform’ the claimed abstract idea into a patent-eligible application.”
Alice, 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.
(alterations in original) (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, 2019 Revised Patent Subject Matter Eligibility Guidance,
84 Fed. Reg. 50 (Jan. 7, 2019) (“2019 Revised Guidance”). 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, i.e., that “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 Revised Guidance,
84 Fed. Reg. at 53; see also 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
is not “well-understood, routine, conventional” in the field (see MPEP
§ 2106.05(d)); or
(4) simply appends well-understood, routine, conventional
activities previously known to the industry, specified at a high level of
generality, to the judicial exception.
See 2019 Revised Guidance, 84 Fed. Reg. at 56.
With regard to the first step of the Mayo/Alice framework, the
Examiner states that the claims broadly recite
the idea of celebrity product endorsement and providing an
award based on a completion of a desired step(s)/task(s) (for
example a rebate/discount/coupon, a referral fee, loyalty
points). Celebrity product endorsement and providing an award
based on a completion of a desired step(s)/task(s) (for example
a rebate/discount/coupon, a referral fee, loyalty points), is a
fundamental economic practice.
(Final Act. 8–9.) The Examiner considers this to be an abstract idea,
inasmuch as it is similar to abstract ideas identified by the Federal Circuit,
including the abstract idea of using advertising as currency in Ultramercial,
Inc. v. Hulu, LLC, 772 F.3d 709, 714–15 (Fed. Cir. 2014), the abstract idea
of comparing new and stored information and using rules to identify options
in SmartGene Inc. v. Advanced Biological Labs., SA, 555 F. App’x 950, 955
(Fed. Cir. 2014), and the abstract idea of processing information through a
clearinghouse in Dealertrack, Inc. v. Huber, 674 F.3d 1315, 1333 (Fed. Cir.
2012) (see Final Act 9–10).
In response, Appellant first argues that the Examiner’s “rejection is
erroneous and cannot be sustained, and that this rejection should be
withdrawn” (Appeal Br. 5). We cannot agree.
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Under the first prong of step 2A of the 2019 Revised Guidance, we
first determine if the claims recite an abstract idea. In this regard, the
Specification is titled “SYSTEM AND METHOD FOR VALIDATING
THE COMPLETION OF AN INTERACTIVE MARKETING TASK
USING A MOBILE DEVICE,” and “relates generally to systems and
methods for validating the completion of an interactive marketing task
(challenge) using a mobile device” (Spec. ¶ 8).
The Specification describes that “[t]raditional brand advertising is
inefficient” and “[b]rands only want to pay for measurable advertising
performance (i.e., the completion of a specific outcome)” (id. ¶ 2).
According to the Specification, “[e]xisting systems and methods that are
adapted to incentivize customers face difficulty in validating that the
customers have in fact performed the activity the brand manager wants to
incentivize” and “[w]ithout appropriate validation, the incentive systems and
methods have decreased value” (id. ¶ 4).
The Specification identifies known pay-per-click/performance
models, e.g., “Google AdWords” (id. ¶¶ 2, 5), but discloses that these known
models are unable to determine whether the performance being validated is
“the performance the brand manager would ultimately like to [sic] the
consumer to do” (id. ¶ 5). The Specification also discloses that “[c]ertain
categories of ‘brands’ naturally attract a more interactive customer base” and
“it would be beneficial for brands with less interactive customers to be able
to cooperate with brands with more interactive brands to reach a target
audience and it would be beneficial for the brands with more interactive
customers to be able to monetize that relationship” (id. ¶ 6).
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To address this need, the present invention provides “a system and
method of interactive marketing that takes advantage of a fan base
associated with a popular brand for the purpose of marketing a lesser known
brand” along with “an interactive marking system that validates the
completion of an interactive marketing task using a mobile device, wherein
the system effectively incentivizes users to complete the marketing tasks”
(id. ¶ 7). In this regard, the Specification describes using “novel validation
techniques and technologies to prove that the consumer did what the target
brand wanted them to do” (id. ¶ 13). More particularly, the Specification
discloses that that these validation techniques “may be based on the use of a
mobile device’s camera, GPS, microphone, internet connection, Bluetooth,
application programming interface (API), near field communication (NFC),
etc.” (id.).
Taking independent claim 14 as representative, the claim recites “[a]
challenge validation method” including providing “a challenge setup screen
through a user interface to a target brand,” which includes “inputs for the
target brand to provide a challenge defined by a challenge name,” “at least
one validation requirement,” “a selection of parameters defining eligible
users,” and “an input for requesting a connecting brand to accept the
challenge.” The claimed method also includes steps for “receiving the
challenge . . . request,” “receiving an acceptance or declination,” “selecting
at least one selected user . . . [that] meets the parameters defining eligible
users,” “displaying the challenge,” “receiving validation data . . . from the at
least one selected user,” “determining whether the validation data” meets the
validation requirement, and if the validation data meets the validation
requirement, “triggering an automatic transmission of a digital reward.”
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Understood in light of the Specification, we agree with the Examiner
that independent claim 14 broadly recites the “the idea of celebrity product
endorsement and providing an award based on a completion of a desired
step(s)/task(s) (for example a rebate/discount/coupon, a referral fee, loyalty
points)” (Ans. 34; Final Act. 8–10). We also agree with the Examiner that
“product endorsement and providing an award based on” the completion of a
series of steps “is a fundamental economic practice” (Ans. 34; Final Act. 9).
Therefore, when viewed through the lens of the 2019 Revised Guidance, the
Examiner’s analysis depicts claim 14 as reciting one of the “certain methods
of organizing human activity” that include “fundamental economic
principles or practices (including hedging, insurance, mitigating risk)” and
“commercial or legal interactions (including agreements in the form of
contracts; legal obligations; advertising, marketing or sales activities or
behaviors; business relations),” and thus, an abstract idea. See 2019 Revised
Guidance, 84 Fed. Reg. at 52.
Having concluded that claim 14 recites a judicial exception, i.e., an
abstract idea, we turn to the second prong of step 2A of the 2019 Revised
Guidance and determine whether the claim integrates the recited judicial
exception into a practical application of the judicial exception. Here we look
to see if, for example, any additional elements of the claim (i) reflect an
improvement in the functioning of a computer or to another technological
field, (ii) implement the judicial exception with, or by use of, a particular
machine, (iii) effect a transformation or reduction of a particular article to a
different state or thing, or (iv) use the judicial exception in some other
meaningful way beyond generally linking the use of the judicial exception to
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a particular technological environment. See 2019 Revised Guidance, 84
Fed. Reg. at 55; see also MPEP §§ 2106.05(a)–(c), (e)–(h).
Appellant argues that independent claim 14 recites patent-eligible
subject matter because it “addresses the technology-centric limitations of
current advertising methods that fail to enable brand partners to collaborate
and engage fans with each brand individually,” and as such, provides a
solution rooted in computer technology (Appeal Br. 11; see also id. (stating
independent claim 14 recites an “interface that enables one of the brands to
approve the co-marketing from the other brand within the platform and then
automatically provide the challenge and reward to its users”)). We are not
persuaded by Appellant’s argument.
At the outset, we note that the claimed invention does not address a
problem unique to the Internet or computer networks. Cf. Intellectual
Ventures I LLC v. Capital One Bank (USA), 792 F.3d 1363, 1371 (Fed. Cir.
2015) (explaining that the claims there “do not address problems unique to
the Internet, so DDR has no applicability”). Here, the Specification purports
that independent claim 14 addresses the technical problem of “prov[ing] the
fan actually did what the target wanted the fan to do” in order to “create a
true pay-per-completion business model” (Spec. ¶ 12). And, the
Specification proposes that
[t]he solution to this problem is the use of novel validation
techniques and technologies to prove that the consumer did
what the target brand wanted them to do. Mobile technologies
are an ideal medium for these validation techniques that may be
based on the use of a mobile device's camera, GPS,
microphone, internet connection, Bluetooth, application
programming interface (API), near field communication (NFC),
etc. The power of the mobile device is that can be leveraged to
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assist in the verification of the action completion in real-time
and at any place the consumer is located.
(Id.) However, the Specification describes that the “validation requirement”
may simply include “a digital text, digital image, digital video, digital sound,
API data, or combinations thereof from a mobile electronic device
associated with the selected user” or the “location information of a mobile
device associated with the selected user” (id. ¶ 18; see also id. ¶ 19 (“the
validation data may include optical code data”); ¶ 20 (“the validation data
may include a product digital photograph”)). Thus, the focus of independent
claim 14 is not on any technological advancement, but rather on the
implementation of the abstract idea, “for which computers are invoked
merely as a tool.” See Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1336
(Fed. Cir. 2016).
Independent claim 14, unlike the claims found non-abstract in prior
cases, uses generic computer technology to set up an advertising campaign
(i.e., input “challenge name,” “validation requirement,” “eligible users,”
“connecting brand”), and then receive information (i.e., challenge request,
acceptance/declination, validation information), display information, process
information (i.e., select eligible user, determine whether user meets
validation requirement), and send information (i.e., transmission of digital
reward), and does not recite an improvement to a particular computer
technology. See McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d
1299, 1314–15 (Fed. Cir. 2016) (finding claims not abstract because they
“focused on a specific asserted improvement in computer animation”).
Appellant also argues that independent claim 14 is patent eligible
because it provides a “physical manipulation” that “occurs when the
validation data is within the validation requirement specified by the
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challenge, thereby triggering the automatic transmission of a digital reward
related to the connecting brand to the at least one selected user” (Appeal
Br. 10). However, we find no indication in the Specification, nor does
Appellant direct us to any indication, that the steps recited in independent
claim 14 invoke any assertedly inventive programming, require any
specialized computer hardware or other inventive computer components,
i.e., a particular machine, or that the claimed invention is implemented using
other than generic computer components to perform generic computer
functions. See DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245,
1256 (Fed. Cir. 2014) (“[A]fter Alice, there can remain no doubt: recitation
of generic computer limitations does not make an otherwise ineligible claim
patent-eligible.”). Here, independent claim 14 simply recites the functional
results to be achieved of receiving, displaying, processing, and transmitting
data, and as such, “provides only a result-oriented solution[] with
insufficient detail for how a computer accomplishes it.” Intellectual
Ventures I LLC v. Capital One Fin. Corp., 850 F.3d 1332, 1342 (Fed. Cir.
2017).
We also find no 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, short of attorney
argument, that attributes any improvement in computer technology and/or
functionality to the claimed invention or that otherwise indicates that the
claimed invention “appl[ies], rel[ies] on, or us[es] 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
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exception.” See 2019 Revised Guidance, 84 Fed. Reg. at 53. Therefore, we
agree with the Examiner that claim 14 is directed to an abstract idea.
Turning to Step 2B of the of the 2019 Revised Guidance, we
determine whether the additional elements (1) add a specific limitation or
combination of limitations that is not well-understood, routine, and
conventional activity in the field, which is indicative that an inventive
concept may be present or (2) simply append well-understood, routine,
conventional activities previously known to the industry, specified at a high
level of generality, to the judicial exception, which is indicative that an
inventive concept may not be present. See 2019 Revised Guidance, 84 Fed.
Reg. at 56.
The Examiner determined that “[t]he claims do not include additional
elements that are sufficient to amount to significantly more than the judicial
exception” (Final Act. 10). According to the Examiner, the only additional
elements of independent claim 14 are “a user interface for inputting and
displaying data and triggering an automatic transmission of a digital reward”
(Ans. 38). The Examiner also notes that independent claim 14 simply
“link[s] the use of the abstract idea to a particular technological environment
or field of use (e.g. linking to the cell phone/computing environment)” and
“requir[es] no more than a generic computer to perform generic computer
functions that are well-understood, routine, and conventional activities
previously known to the industry” (id.).
We agree with the Examiner that the additional limitations of a “user
interface” and “user interface of a mobile device” simply allow a generic
computer to perform the claimed operations using generic computer
functions (see, e.g., Spec. ¶ 44). And, taking the claim elements separately,
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the function performed by the user interface at each step of the process is
purely conventional. The claimed computer system operates in its ordinary
and conventional capacity to perform the well-understood, routine, and
conventional functions of receiving information related to setting up an
advertising campaign, receiving information required by the advertising
campaign, displaying and processing information, and then sending
information (i.e., transmission of digital reward) (see, e.g., Spec. ¶¶ 44, 47,
49–50, 53, 58 (“[u]pon receiving confirmation from the API, the mobile
application 18 rewards the user points associated with the first subject matter
22”)). See also Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1354–
55 (Fed. Cir. 2016) (gathering, sending, monitoring, analyzing, selecting,
and presenting information does not transform the abstract process into a
patent-eligible invention); Alice, 573 U.S. at 226 (“Nearly every computer
. . . [is] capable of performing the basic calculation, storage, and
transmission functions required by the method claims.”); In re TLI
Commc’ns LLC Pat. Litig., 823 F.3d 607, 612 (Fed. Cir. 2016) (“[S]toring,
receiving, and extracting data” are generic computer functions.); buySAFE,
Inc. v. Google, Inc., 765 F.3d 1350, 1355 (Fed. Cir. 2014) (“That a computer
receives and sends the information over a network—with no further
specification—is not even arguably inventive.”).
Considered as an ordered combination, the computer components of
exemplary independent claim 14 add nothing that is not already present
when the steps are considered separately. The sequence of receiving,
displaying, processing, and sending information is equally generic and
conventional or otherwise held to be abstract. See Ultramercial, 772 F.3d
at 715 (sequence of receiving, selecting, offering for exchange, display,
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allowing access, and receiving payment recited an abstraction); Inventor
Holdings, LLC v. Bed Bath & Beyond, Inc., 876 F.3d 1372, 1378 (Fed. Cir.
2017) (holding that sequence of data retrieval, analysis, modification,
generation, display, and transmission was abstract); Two-Way Media Ltd. v.
Comcast Cable Commc’ns, LLC, 874 F.3d 1329, 1339 (Fed. Cir. 2017)
(holding sequence of processing, routing, controlling, and monitoring was
abstract). The ordering of the steps is, therefore, ordinary and conventional.
Appellant also argues that the present claims are similar to claims 2
and 3 of Example 35 in the “Subject Matter Eligibility Examples: Business
Methods” published by the USPTO on December 15, 2016 (hereinafter
“2016 Guidance”) because “the claims recite non-conventional and non-
generic advertising methodologies to cross fan bases of multiple brands and
deliver rewards based on the completion of challenges” (Appeal Br. 5–8).
We cannot agree.
At the outset, we note that claim 2 of Example 35 operates in a non-
conventional and non-generic way to ensure that the customer’s identity is
verified in a secure manner that is more than the conventional verification
process employed by an ATM alone. See 2016 Guidance. That is, the
unconventional process includes the ATM’s provision of a random code, the
mobile communication device’s generation of the image having encrypted
code data in response to the random code, the ATM’s decryption and
analysis of the code data, and the subsequent determination of whether the
transaction should proceed based on the analysis of the code data. Id.
Similarly, we note that claim 3 of Example 35 operates in a non-
conventional and non-generic way to ensure that the customer’s identity is
verified in a secure manner that is more than the conventional verification
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process employed by an ATM alone. Id. More particularly, the
unconventional process includes the ATM’s provision of a random code, the
mobile communication device’s generation of the customer confirmation
code in response to the random code, the ATM’s analysis of the customer
confirmation code, and the ATM’s subsequent transmission of a control
signal to provide or prevent access to the keypad of the ATM and, thus,
allow or prevent a transaction based on the analysis of the code data sets. Id.
In contrast, exemplary independent claim 14 does not operate in a
non-conventional and non-generic way. Instead, exemplary independent
claim 14 is directed broadly to receiving information related to setting up an
advertising campaign, receiving information required by the advertising
campaign, displaying and processing information, and then sending
information (i.e., transmission of digital reward). As discussed above,
independent claim 14 recites an abstract idea that merely uses computers as
tools.
Appellant further argues that independent claim 14 is analogous to
claim 2 of Example 21 published by USPTO in the July 2015 Update
(hereinafter “2015 Update”) (Appeal Br. 8–11). We cannot agree.
Claim 1 of Example 21 was considered ineligible and claim 2, which
addressed “the Internet‐centric challenge of alerting a subscriber with time
sensitive information when the subscriber’s computer is offline” by a
transmission of an alert to an application that “cause[d] the alert to display
and enable[d] the connection of the remote subscriber computer to the data
source over the Internet when the remote subscriber computer comes
online,” was considered eligible. See 2015 Update, Appendix 4. Thus,
claim 2 was similar to DDR Holdings in solving an Internet-centric problem
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with a solution necessarily rooted in computer technology. Id. Here,
independent claim 14 contains no comparable limitation, and, as discussed
above, the claim does not solve a problem specifically arising in the realm of
computer networks with a solution necessarily rooted in computer
technology.
We are not persuaded, on the present record, that the Examiner erred
in rejecting independent claim 14 under 35 U.S.C. § 101. Therefore, we
sustain the Examiner’s rejection of independent claim 14, and claims 16–20,
23, and 24, which fall with independent claim 14.

Indefiniteness
Appellant does not challenge the Examiner’s rejection under
35 U.S.C. § 112, second paragraph (see Appeal Br. 11–12). Instead,
Appellant states that “[s]hould the application move forward to issuance,
claim 1 will be amended to correct this typographical error” (id. at 12).
Therefore, the rejection is summarily sustained.

Obviousness
Appellant again argues claims 14, 16–20, 23, and 24 as a group (see
Appeal Br. 12–14). We select independent claim 14 as representative.
Claims 16–20, 23, and 24 stand or fall with independent claim 14. See
37 C.F.R. § 41.37(c)(1)(iv).
We are not persuaded by Appellant’s argument that the Examiner
erred in rejecting independent claim 14 under 35 U.S.C. § 103(a) because
the combination of Ladd, Wu, and Roeding fails to disclose or suggest the
subject matter of that claim (see Appeal Br. 12–14). Instead, we agree with,
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and adopt, the Examiner’s findings and rationales as our own (see Final Act.
12–26 (citing Ladd ¶¶ 9, 25–28, 35, 36, 45, 48–53, 62, 63, 68, 70, 72, 74;
Wu ¶¶ 22–23; Roeding ¶¶ 22, 62, 74, 109); see Ans. 47–50). We add the
following discussion for emphasis.
Appellant argues that the combination of Ladd, Wu, and Roeding fails
to disclose or suggest “a system wherein a connecting brand introduces a
challenge associated with a target brand to a user or fan, and the user earns a
digital reward associated with the connecting brand by submitting validation
data associated with the target brand” because in Ladd “the party
recommending the product is rewarded, whereas in the claimed method, the
party completing the challenge is rewarded” (Appeal Br. 13–14). We cannot
agree.
At the outset, we note that the Examiner does not rely on Ladd alone
to address the argued limitation, but rather on the combined teachings of
Ladd, Wu, and Roeding (Final Act. 24–26; Ans. 47–48). See In re Merck &
Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986) (“Non-obviousness cannot be
established by attacking [the] references individually where the rejection is
based upon the teachings of a combination of references”) (citation omitted).
In contrast to Appellant’s argument, the Examiner relies on Roeding to
address the argued limitation (see Final Act. 24). More particularly, the
Examiner finds that Roeding is directed to
the idea of providing rewards to users for completing specific
tasks (see abstract and Tables 1-2), where the user can be a
connecting brand by providing information to other users (see
Table 2) or receive information through a connecting brand (see
paragraph 0062, note: “100 points to win for someone who
walks into Store A today-presented by brand X!”)
(Ans. 47–48). The Examiner concludes that
Appeal 2018-000745
Application 13/952,572

19
it would have been obvious for one of ordinary skill in the art to
have modified Ladd et al. in view of Wu et al. with the
aforementioned teachings from Roeding et al. with the
motivation of providing a way to incentivize a user to purchase
a product or service or complete a desired action through use of
an incentive like a discount or reward points (e.g. reward) (see
Roeding et al. paragraphs 0022, 0062, 0109, and 0074), when
providing incentives to for a user to complete a desired action
(see Ladd et al. paragraphs 0025-0028) is known.
(Final Act. 26.) Appellant has presented no persuasive argument or
technical reasoning to demonstrate that the Examiner’s finding is
unreasonable or unsupported.
Appellant further argues that the combination of Ladd, Wu, and
Roeding fails to disclose or suggest limitations [a] and [d] of independent
claim 14 because “the endorsements and advertisements [in Wu] are not
made available to only users meeting specific criteria as required under the
present claims” (Appeal Br. 14). However, Appellant’s argument is
unpersuasive at least because the Examiner does not rely solely on “the
endorsements and . . . advertis[ements]” in Wu to address the argued
limitations (see Final Act. 16–18, 22–24); but instead, on the combined
teachings of Ladd and Wu (Ans. 49). See Merck, 800 F.2d at 1097.
In this regard, the Examiner finds that
Ladd et al. teaches that a target brand can set up a challenge
through an interface and define eligible users (see paragraphs
0048, 0051, 0052, and 0053). In these paragraphs as cited in
the Final Office Action dated 7/7/2016 on pages 14-15 Ladd et
al. teaches the vendor (e.g. target brand) can define eligible
subscribers (e.g. connecting brand) to receive the possible
referral challenge. The eligible subscribers are defined through
parameters including purchasing history, referral history,
recommendation histories, and the like.
Appeal 2018-000745
Application 13/952,572

20
(Ans. 49.) The Examiner acknowledges that Ladd does not explicitly
disclose “targeting ads based on certain user information or more
specifically the recited limitations of wherein the selection of parameters
defining eligible users includes one or more of age, sex, residential location,
current location and occupation” (id.), but relies on Wu to address the
particular parameters required by the argued limitations (id.). Appellant has
presented no persuasive argument or technical reasoning to demonstrate that
the Examiner’s finding is unreasonable or unsupported.
In view of the foregoing, we sustain the Examiner’s rejection of
independent claim 14 under 35 U.S.C. § 103(a). For the same reasons, we
also sustain the Examiner’s rejection of claims 16–20, 23, and 24, which are
not argued separately, and as such, fall with independent claim 14.

CONCLUSION
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
14, 16–20,
23, 24
101

14, 16–20,
23, 24

14, 16–20,
23, 24
112

14, 16–20,
23, 24

14, 16–20,
23, 24
103(a) Ladd, Wu,
Roeding
14, 16–20,
23, 24

Overall
Outcome
14, 16–20,
23, 24

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).

AFFIRMED