Larry Kavanagh et al.

Patent Trials and Appeals Board

Aug 22, 2019

15176234 - (D) (P.T.A.B. Aug. 22, 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.
15/176,234 06/08/2016 Larry Kavanagh 0133727.0636407 1057
26874 7590 08/22/2019
FROST BROWN TODD LLC
3300 Great American Tower
301 East Fourth Street
Cincinnati, OH 45202
EXAMINER
NILSSON, ERIC
ART UNIT PAPER NUMBER
2122
NOTIFICATION DATE DELIVERY MODE
08/22/2019 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):
patents@fbtlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte LARRY KAVANAGH, JUDE HOFFNER, and TOM WHITE
____________________

Appeal 2018-008368
Application 15/176,234
Technology Center 2100
____________________

Before JOSEPH L. DIXON, HUNG H. BUI, and JON M. JURGOVAN,
Administrative Patent Judges.

DIXON, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants1 appeal under 35 U.S.C. § 134(a) from a Non-Final
rejection of claims 1–22. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.
The claims are directed to systems and methods for “identifying,
tracking and performing statistical evaluation on non-transactional user
interactions with an online resource in order to create an audience of
identifiable users and a metric indicating the likelihood that a user will
response to a subsequent communication from a party associated with the
online resource,” and “triggering supplemental channel communications

1 Appellants indicate that NaviStone, Inc. is the real party in interest. (App.
Br. 3.)
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based on [the] data from non-transactional communication sessions.” (Spec.
¶ 2; Title (capitalization altered).) Non-transactional user interactions with
the online resource may include “recency of visits [of a user’s device to a
web server of an online retailer], frequency of visits, frequency of views of
products [at the online retailer], frequency of shopping cart creation and
modification, and other factors indicative of the user being engaged with the
online retailer.” (Abstract.)
Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A system comprising:
i) an evaluation server in communication with a database;
ii) a user device having a display;
iii) a content server configured to communicate with the user
device during a non-transactional communication session;
wherein:
a) the content server is configured to provide a set of
response data to the user device in response to a request for
content from the user device, the set of response data comprising
a set of content and a set of data collection instructions;
b) the set of response data is adapted to cause the user device
to display the set of content and execute the set of data collection
instructions;
c) the set of data collection instructions is adapted to cause
the user device to provide a user identifier and a set of interaction
data to the evaluation server during the non-transactional
communication session;
d) the evaluation server is configured to execute instructions
to:
I) receive the user identifier and the set of interaction
data and:
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A) select a user profile based upon one or more
of the user identifier and the set of interaction
data if the user profile is already in the
database; or
B) create the user profile where the user profile
is not in the database;
II) add a subset of the interaction data to the user
profile;
III) perform a statistical evaluation on the user profile
that creates a response score, and associate that
response score with the user profile;
IV) if the response score satisfies a set of contact
criteria, determine a set of contact information
based upon the user profile; and
V) provide a subsequent communication over a second
channel to a recipient based upon the set of contact
information.
(App. Br. 37–44 (Claims Appendix).)
REJECTION
The Examiner made the following rejection:
Claims 1–22 stand rejected under 35 U.S.C. § 101 because the
claimed invention is directed to a judicial exception (i.e., a law of nature, a
natural phenomenon, or an abstract idea) without significantly more.

ANALYSIS
35 U.S.C. § 101 Rejection of Claims 1–20 and 22
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
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ideas” are not patentable. Mayo Collaborative Servs. v. Prometheus Labs.,
Inc., 566 U.S. 66, 70 (2012) (brackets in original) (citing Diamond v. Diehr,
450 U.S. 175, 185 (1981)).
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 Corp. Pty. Ltd. v. CLS Bank Int’l, 573 U.S. 208, 217–18
(2014) (citing Mayo, 566 U.S. at 75–77). In accordance with that
framework, we first determine what concept the claim is “directed to.” See
Alice, 573 U.S. at 218–19 (“On their face, the claims before us are drawn to
the concept of intermediated settlement, i.e., the use of a third party to
mitigate settlement risk.”); see also Bilski v. Kappos, 561 U.S. 593, 611
(2010) (“Claims 1 and 4 in petitioners’ application explain the basic concept
of hedging, or protecting against risk.”).
Concepts determined to be abstract ideas, and, thus, patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219–20; Bilski, 561 U.S. at 611);
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594–95 (1978)); and
mental processes (Gottschalk v. Benson, 409 U.S. 63, 67 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as “molding rubber products” (Diehr, 450 U.S. at 191); “tanning,
dyeing, making water-proof cloth, vulcanizing India rubber, smelting ores”
(id. at 182 n.7 (quoting Corning v. Burden, 56 U.S. 252, 267–68 (1853)));
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
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statutory does not become nonstatutory simply because it uses a
mathematical formula.” Diehr, 450 U.S. at 187; see also id. at 191 (“We
view respondents’ claims as nothing more than a process for molding rubber
products and not as an attempt to patent a mathematical formula.”). Having
said that, the Supreme Court also indicated that a claim “seeking patent
protection for that formula in the abstract . . . is not accorded the protection
of our patent laws, . . . and this principle cannot be circumvented by
attempting to limit the use of the formula to a particular technological
environment.” Id. (citing Benson and Flook); see, e.g., id. at 187 (“It is now
commonplace that an application of a law of nature or mathematical formula
to a known structure or process may well be deserving of patent
protection.”).
If the claim is “directed to” an abstract idea, we turn to the second
step of the Alice and Mayo framework, where “we must examine the
elements of the claim to determine whether it contains an ‘inventive
concept’ sufficient to ‘transform’ the claimed abstract idea into a
patent-eligible application.” Alice, 573 U.S. at 221 (internal citation
omitted). “A claim that recites an abstract idea must include ‘additional
features’ to ensure ‘that the [claim] is more than a drafting effort designed to
monopolize the [abstract idea].’” Id. (quoting Mayo, 566 U.S. at 77).
“[M]erely requir[ing] generic computer implementation[] fail[s] to transform
that abstract idea into a patent-eligible invention.” Id.
The PTO recently published revised guidance on the application of
§ 101. USPTO’s Memorandum, 2019 REVISED PATENT SUBJECT MATTER
ELIGIBILITY GUIDANCE, 84 Fed. Reg. 50 (January 7, 2019) (“Revised
Guidance”). Under that guidance, we first look to whether the claim recites:
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(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 MANUAL OF PATENT EXAMINING PROCEDURE
(MPEP) § 2106.05(a)–(c), (e)–(h) (9th ed., Rev. 08.2017, 2018)).

Only if a claim (1) recites a judicial exception and (2) does not integrate that
exception into a practical application, do we then look to whether the claim:
(3) adds a specific limitation beyond the judicial exception that is not
“well-understood, routine, 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 Revised Guidance.
Appellants argue independent claims 1 and 12 together, providing
arguments for representative claim 1. (See App. Br. 12, 21, 24, 28–29;
Reply Br. 12.) Because we find the limitations to be similar for independent
claims 1 and 12, we will address independent claim 1 as the illustrative
claim and the same line of reasoning applies to independent claim 12, and
the respective dependent claims of claims 1 and 12. We additionally address
independent claim 19, for which Appellants provide separate arguments for
patent eligiblitiy. (See App. Br. 34–36; Reply Br. 16–17.) We separately
address the patent eligiblitiy of independent claim 21.
STEP 1 of the Revised Guidance
Claims 1 and 19, as “system” claims, recite one of the enumerated
categories of statutory subject matter in 35 U.S.C. § 101, namely, a machine.
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The issue before us is whether these claims are directed to a judicial
exception without significantly more.
STEP 2A, Prong 1 of the Revised Guidance
In rejecting claim 1 (and similarly, claim 12) under 35 U.S.C. § 101,
the Examiner finds the claim “us[es] profiles to generate a score using a
statistical analysis and then determin[es] if the user should receive a targeted
message through the use of collecting and analyzing information with an
evaluation server,” which is “similar to the abstract idea of collecting
information, analyzing it and displaying results of the collection and analysis
(Electric Power Group) as well as customizing information and presenting it
to users based on particular characteristics (Int. Ventures v. Cap. One
Bank).” (Non-Final Act. 6 (citing Electric Power Grp, LLC v. Alstom S.A.,
830 F.3d 1350 (Fed. Cir. 2016); Intellectual Ventures I LLC v. Capital One
Bank (USA), 792 F.3d 1363 (Fed. Cir. 2015)).) The Examiner also finds
claim 1 “is directed to a method of organizing human activity” as it
“improves upon methods to serve communications such as advertisements to
users based on a profile and other characteristics.” (Ans. 6, 9–10.) The
Examiner further finds the claim does not recite significantly more than the
abstract idea because the claim recites “[s]ervers and user devices [that] are
generic computers and are performing generic computer functions of
sending and collecting information.” (Ans. 13; Non-Final Act. 6.)
With respect to independent claim 19, the Examiner “rejected [claim
19] under the same reasoning [as claim 1]” because “[c]laim 19 includes
means + function limitations that in light of the specification are also
directed toward an abstract idea” that uses Appellants’ “OneTag software
[that] performs the algorithm as set forth in claim 1.” (Non-Final Act. 6–7.)
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Appellants argue claim 1 is not directed to an abstract idea, but rather
to an improved system for identifying user-specific data from non-
transactional Internet sessions (e.g., browsing an online store without buying
from the store) and “matching the anonymous users . . . of a website’s traffic
with identity data in a privacy preserving way.” (App. Br. 16; Reply Br. 2,
5.) Appellants argue claim 1 (and similarly, claim 19) provides “a technical
solution” that is “rooted in computer technology” and “takes advantage of
the capability of web servers to allow interactions to essentially take place in
multiple locations at once.” (App. Br. 21–22, 35–36 (citing DDR Holdings,
LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014)).) Particularly,
Appellants argue the claimed technical solution uses a content server “that
provides whatever content was requested by a visitor” and further uses an
evaluation server for “a separate communication stream to obtain data from
the user which it could use to maintain a profile,” such that the “web page
visitor is allowed to receive information they requested (i.e., the content
from the content server) while establishing a separate data flow of
information to [the] evaluation server—essentially allowing the user’s
interaction to occur in two places at the same time.” (App. Br. 21–22
(footnotes omitted).)
Having reviewed the evidence, we agree with the Examiner only in
part. Particularly, we agree with the Examiner that independent claim 1 as a
whole (and similarly, claim 19) recites a judicial exception of one of certain
methods of organizing human activity by facilitating advertising based on
users’ interests and actions. (See Spec. ¶¶ 6, 19, 27–28, 53, 62–63, 67–68;
Abstract; Ans. 6.) Thus, claims 1 and 19 recite subject matter that falls
within the three types of abstract ideas identified by the Revised Guidance.
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STEP 2A, Prong 2 of the Revised Guidance
Under the Revised Guidance, however, we agree with Appellants that
claim 1 integrates the judicial exception (abstract idea) into a practical
application. (App. Br. 16, 21–22, 28; Reply Br. 5.) Particularly, claim 1
recites a combination of additional elements including the evaluation server
and the content server, (i) the content server “configured to provide a set of
response data to the user device in response to a request for content from the
user device,” the “set of response data comprising . . . a set of data collection
instructions,” and “the set of response data . . . adapted to cause the user
device to . . . execute the set of data collection instructions” that are “adapted
to cause the user device to provide a user identifier and a set of interaction
data to the evaluation server during the non-transactional communication
session [established between user device and content server],” and (ii) the
evaluation server using the user identifier and interaction data to “select a
user profile based upon one or more of the user identifier and the set of
interaction data if the user profile is already in the database” or “create the
user profile where the user profile is not in the database,” and “add a subset
of the interaction data to the user profile” before “perform[ing] a statistical
evaluation on the user profile that creates a response score.” The claim’s
additional elements integrate the method of organizing human activity into a
practical application.
Specifically, the above-mentioned additional claim elements of claim
1 recite a specific improvement for targeted advertising by determining
users’ interests from users’ non-transactional online communication sessions
(e.g., informational browsing sessions), by using an interactive script or code
(Appellants’ OneTag software) that is triggered by the user device’s
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interaction with the content server (e.g., online retailer). (See Spec. ¶¶ 6,
29–30, 39–40.) Appellants’ improvement for targeted advertising does not
rely on the content server/online retailer reporting users’ online
interactions/browsing; rather, the improvement relies on a secondary
interaction (between the user device and the evaluation server) being
triggered by the user device’s primary interaction (with the content server).
(See App. Br. 37 (Claim 1); see also App. Br. 21–22, 26.)
Particularly, as recited in claim 1, a request for content (e.g., webpage
content from the content server) by the user device provides not only the
requested content but also “a set of data collection instructions,” and triggers
the execution of the “data collection instructions” on the user device. (See
App. Br. 37 (Claim 1); see also Spec. ¶¶ 29–30 (describing Appellants’
OneTag code implementing data collection instructions), 39–40, 42, 44.)
Execution of the “data collection instructions” on the user device then
“cause[s] the user device to provide a user identifier and a set of interaction
data to the evaluation server” which, in turn, uses the identifier and
interaction data to update a user’s profile and generate a response score
indicating the user’s potential responsiveness to future advertisements. (See
App. Br. 37 (Claim 1); see also Spec. ¶¶ 39–40, 42, 52 (describing user’s
interaction data including “products, pages, or features that are used or
visited, reviews, videos or product specifications for particular products that
have been viewed, and how many times a particular product or feature has
been viewed or used” by the user), 55.) Thus, Appellants’ improved system
for targeted advertising “match[es] the anonymous users . . . of a website’s
traffic with identity data in a privacy preserving way,” e.g., without the
content server/online retailer reporting users’ browsing interactions. (App.
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Br. 16; see also Reply Br. 2, 5.) For example, Appellants’ system can
identify users’ browsing interactions at an online storefront without “forcing
users to log in to [the] online storefront or interface. . . . [which would] tend
to alienate and drive away many visitors [from the online storefront].” (See
Spec. ¶¶ 5, 30, 39–40.) Instead, Appellants’ system:
uses a separate communication stream [via the evaluation server]
to obtain data from the user which it could use to maintain a
profile. . . . [Thus] a web page visitor is allowed to receive
information they requested (i.e., the content from the content
server) while establishing a separate data flow of information to
an evaluation server—essentially allowing the user’s interaction
to occur in two places at the same time. This type of solution is
necessarily rooted in computer technology, not only because it
solves problems with serving website visitors which did not exist
in the offline world, but also because it is a technical solution
which takes advantage of the capability of web servers to allow
interactions to essentially take place in multiple locations at once.
(App. Br. 21–22 (footnote omitted).)
We agree with Appellants that claim 1—and claim 19 reciting similar
limitations including “means for obtaining a user identity and a set of
interaction data from a user device during a non-transactional
communication session over a first channel” and “means for determining a
user profile based upon the user identity and a response score based upon the
set of interaction data and the user profile”—integrates targeted advertising
techniques into a process rooted in computer and network technologies.
(App. Br. 21–22; Reply Br. 9; see Spec. ¶¶ 37–47 and 77–79 (describing
claim 19’s “means for obtaining” as the OneTag code); see also DDR
Holdings, 773 F.3d at 1257–58 (holding patent-eligible a claim that
“address[es] a business challenge (retaining website visitors)” by enabling
visitors “to purchase products from the third-party merchant without actually
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entering that merchant’s website,” the claim providing a “solution . . .
necessarily rooted in computer technology in order to overcome a problem
specifically arising in the realm of computer networks”).) Appellants’
system identifies, tracks, and performs statistical evaluations on non-
transactional (e.g., not involving a financial transaction, see Spec. ¶ 80) user
interactions (such as browsing reviews and viewing product videos on a
content server) in a way that is “minimally intrusive to administrators of the
content server,” to determine users’ interests and engagement with particular
products, services, or Internet webpages. (See Spec. ¶¶ 2, 6, 30, 39–40, 42,
44, 52, 66, 80.)
Because claims 1, 12, and 19 contain similar claim limitations and
integrate the judicial exception into a practical application, we find claims 1,
12, and 19, and their dependent claims 2–11, 13–18, 20, and 22 are not
directed to a judicial exception (abstract idea); rather, these claims are
directed to patent-eligible subject matter. Because Alice step 1 is
dispositive, we need not reach Alice step 2 (inventive concept, which is also
Step 2B of the Revised Guidance). As such, we do not sustain the
Examiner’s rejection of claims 1–20 and 22 under 35 U.S.C. § 101. Because
the above-discussed issues are dispositive as to the § 101 rejections of
claims 1–20 and 22, we do not reach additional issues raised by Appellants’
separate arguments as to the § 101 rejections of claims 8, 9, and 10.

35 U.S.C. § 101 Rejection of Claim 21
With respect to independent claim 21, Appellants argue its § 101
rejection “should be reversed for reasons similar to those given in the
context of claim 1” and because claim 21 “recite[s] limitations which allow
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an evaluation server to act as a buffer between the identity and contact
information of a user and a provider of products or services whose website
that user visits.” (App. Br. 28–29; Reply Br. 12.)
Appellants’ arguments are not persuasive. At the outset, we note
claim 21 does not recite the particular features of claim 1 by which a request
for the content server’s content from the user device provides “a set of data
collection instructions” whose execution is triggered at the user device to
cause the user device to provide data to the evaluation server (as discussed
supra with respect to claim 1). Instead, claim 21 merely recites collecting
user profiles and sending marketing content to the users based on available
contact information.
More specifically, claim 21 recites a method for allowing providers of
products or services to target anonymous visitors to those providers’
websites for offline communications (such as marketing communications),
including the following limitations: (1) “maintaining a plurality of profiles
corresponding to individuals who have accessed a website for the provider
of products or services”; (2) “for each of the user profiles corresponding to
individuals who have accessed the website for the provider of products or
services, determining if that user profile satisfies a set of contact criteria for
the provider of products or services”; and (3) “for each of the user profiles
which is determined to satisfy the set of contact criteria for the provider of
products or services, acting as a buffer between the provider of products or
services and the identity and contact information of a user” by “instructing a
separate marketing provider to send content selected by the provider of
products or services to that user using the contact information” that is
“available in a house file of the provider of products or services,” or
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“available in a profile at the evaluation server,” or “available through an
external partner.” (App. Br. 43–44 (Claim 21).) These limitations, under
their broadest reasonable interpretation, recite marketing content to potential
customers using available contact information which recites a judicial
exception of one of certain methods of organizing human activity.
For example, limitation (1) in claim 21 describes collecting
data/profiles on individuals who have accessed an online site (e.g., a retailer
site), which is an activity ordinarily performed by merchants, advertisers,
and other businesses studying consumer interests and market segmentation.
Limitation (2) in claim 21 describes analysis of user profiles to determine
consumers’ contact details—an activity ordinarily performed by market
entities seeking to reach particular consumer groups. Limitation (3) in claim
21 describes sending marketing content, by a separate marketing provider, to
consumers using contact information available for those consumers, which
are activities ordinarily performed by retail entities that delegate advertising
of their products to third parties (such as ad agencies hired to promote a
retailer’s products online and in print).
Thus, limitations (1)–(3) in claim 21 recite marketing content to
potential customers using available contact information, which is a known
business activity and a fundamental economic practice in our system of
commerce, similar to other concepts identified by the courts as abstract
ideas. (Ans. 6, 9–10.) For example, like the risk hedging in Bilski, the
intermediated settlement in Alice, and the delivery of free content in
exchange for viewing ads in Ultramercial, checking availability of
consumers’ contact information and then sending marketing content by a
third party marketing provider is a fundamental business practice long
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prevalent in our system of commerce. See Bilski v. Kappos, 561 U.S. at 599,
611–12 (risk hedging); Alice, 573 U.S. at 215–19 (intermediated settlement
of traded or exchanged financial obligations to mitigate the risk that one
party will not perform); Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715–
16 (Fed. Cir. 2014); Affinity Labs of Texas, LLC v. Amazon.com, 838 F.3d
1266, 1269, 1271 (Fed. Cir. 2016) (“the concept of delivering user-selected
media content to portable devices [(in a method for targeted advertising in
which an advertisement is selected for delivery to the user of a portable
device based on at least one piece of demographic information about the
user)] is an abstract idea”); Morsa v. Facebook, Inc., 77 F. Supp. 3d 1007,
1013 (C.D. Cal. 2014), aff’d, 622 F. App’x 915 (Fed. Cir. 2015) (“[t]he
concept of gathering information about one’s intended market and
attempting to customize the information then provided is as old as the
saying, ‘know your audience.’” (quoting OpenTV, Inc. v. Netflix Inc.,
76 F. Supp. 3d 886, 893 (N.D. Cal. 2014))). Marketing content to potential
customers using available contact information is a building block of a
market economy and, like risk hedging and intermediated settlement, is an
“abstract idea” beyond the scope of § 101. See Alice, 573 U.S. at 219.
Thus, similar to the concept of intermediated settlement in Alice, the concept
of hedging in Bilski, and targeted advertising in Affinity Labs, the concept of
advertising to potential customers using available contact information (as in
Appellants’ claim 21) “[is] a fundamental economic practice long prevalent
in our system of commerce.” See Alice, 573 U.S. at 219; Bilski, 561 U.S. at
611–12 (“Claims 1 and 4 in petitioners’ application explain the basic
concept of hedging, or protecting against risk.”).
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We therefore conclude limitations (1)–(3) in claim 21 recite marketing
content to potential customers using available contact information, which is
a fundamental economic practice and one of the certain methods of
organizing human activity identified in the Revised Guidance, and therefore
an abstract idea. See Revised Guidance (Revised Step 2A, Prong One), 84
Fed. Reg. at 52 (describing an abstract idea category of “[c]ertain methods
of organizing human activity—fundamental economic principles or practices
. . . commercial or legal interactions (including . . . advertising, marketing or
sales activities or behaviors; business relations)”), 54.
Under Revised Step 2A, Prong Two of the Revised Guidance, we
discern no additional element (or combination of elements) recited in
Appellants’ claim 21 that may have integrated the judicial exception into a
practical application. See Revised Guidance, 84 Fed. Reg. at 54–55. For
example, Appellants’ claimed additional elements (e.g., “an evaluation
server” that “act[s] as a buffer between the provider of products or services
and the identity and contact information of a user who corresponds to that
profile,” and “a content server” that is “separate from the evaluation server”
and is used to access a website for a provider of products or services) do not:
(1) improve the functioning of a computer or other technology; (2) are not
applied with any particular machine (except for a generic computer); (3) do
not effect a transformation of a particular article to a different state; and (4)
are not applied in any meaningful way beyond generally linking the use of
the judicial exception to a particular technological environment, such that
the claim as a whole is more than a drafting effort designed to monopolize
the exception. (See MPEP §§ 2106.05(a)–(c), (e)–(h); Ans. 11.)
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For business-centric inventions, such as Appellants’ invention in
claim 21 involving marketing, the “integration into a practical application”
prong of the Revised Guidance further requires consideration of whether the
claim purports to provide “a technical solution to a technical problem” as
required by the Federal Circuit’s precedential decisions in (1) DDR
Holdings, 773 F.3d at 1245, 1257, and (2) Amdocs (Isr.) Ltd. v. Openet
Telecom, Inc., 841 F.3d 1288 (Fed. Cir. 2016). See MPEP § 2106.05(a).
Appellants’ claim 21, however, does not appear to provide any “technical
solution to a technical problem” as contemplated by the Federal Circuit in
DDR and Amdocs. See MPEP § 2106.05(a). Although Appellants argue
claim 21 is patent eligible because it “recite[s] limitations which allow an
evaluation server to act as a buffer between the identity and contact
information of a user and a provider of products or services whose website
that user visits,” the limitations of claim 21 do not require improved
processors or technical improvements to server functions. (See App. Br. 29.)
Appellants’ claim 21 merely requires multiple servers, and the broadly
claimed “[evaluation server] acting as a buffer” merely requires that the
users’ profile data not be present (or stored) on all the servers.
Thus, although Appellants’ claims recite hardware components
(generic servers), the servers are configured to perform numerous real-world
functions and operations (accessing an Internet website, storing particular
data such as user profiles, at a particular location/server, and sending data
such as marketing materials), adding nothing of substance to the underlying
abstract idea. Thus, the limitations of claim 21 are not indicative of
“integration into a practical application.” Rather, the servers are readily
available computing elements using their already available basic functions as
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tools in executing the claimed storage of user profiles and marketing content
to users. (See Spec. ¶ 73; see also SAP Am., Inc. v. InvestPic LLC, 898 F. 3d
1161 (Fed. Cir. 2018).)
For these reasons, we agree with the Examiner’ determination that
claim 21 is directed to an abstract idea that does not integrate a practical
application. (Ans. 11.)
Further, under Step 2B identified in the Revised Guidance (Inventive
Concept), we find no element or combination of elements recited in
Appellants’ claim 21 that contain any “inventive concept” or add anything
“significantly more” to transform the abstract concept into a patent-eligible
application. Alice, 573 U.S. 208 at 221. Under current Federal Circuit
precedent, an “inventive concept” under Alice step 2 can be established by
showing, for example, that the patent claims:
(1) provide a technical solution to a technical problem unique
to the Internet, e.g., a “solution . . . necessarily rooted in
computer technology in order to overcome a problem
specifically arising in the realm of computer networks”
(see DDR Holdings, 773 F.3d at 1257);
(2) transform the abstract idea into “a particular, practical
application of that abstract idea,” e.g., “installation of a
filtering tool at a specific location, remote from the end-
users, with customizable filtering features specific to each
end user” (see Bascom Glob. Internet Servs., Inc. v. AT&T
Mobility LLC, 827 F.3d 1341, 1352, 1350
(Fed. Cir. 2016)); or
(3) “entail[] an unconventional technological solution ([e.g.,]
enhancing data in a distributed fashion) to a technological
problem ([e.g.,] massive record flows [that] previously
required massive databases)” and “improve the
performance of the system itself” (see Amdocs, 841 F.3d
at 1300, 1302).
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Similarly, as recognized by the Revised Guidance, an “inventive
concept” under Alice step 2 can also be evaluated based on whether an
additional element or combination of elements:
(1) “adds 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;” or
(2) “simply appends 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 Revised Guidance, 84 Fed. Reg. at 56.
However, Appellants’ abstract idea of marketing content to potential
customers using available contact information is not rooted in computer
technology, as the claims in DDR Holdings. Nor does it appear to (1)
provide any technical solution to a technical problem unique to the Internet
as required by DDR Holdings; (2) provide any particular practical
application as required by Bascom; or (3) entail an unconventional
technological solution to a technological problem as required by Amdocs.
Instead, Appellants’ claim 21 recites computer-implemented processing,
shown, for example, in steps 1112 and 1114 in Figure 11, to perform the
abstract idea by automating advertising to available contacts (e.g., postal
addresses, phone numbers, emails, and “other forms of contact”). (See Spec.
¶ 63, Fig. 11.) Particularly, Appellants’ claim 21 instructs a marketing
provider to send marketing content to a user using what contact information
may be available, such as “contact information . . . available in a house file
of the provider of products or services,” “contact information from the
profile at the evaluation server” if available, or “contact information from
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the external partner.” Appellants’ claim 21 recites generic computer
functions of selecting data (e.g., contact information) and sending data (e.g.,
content selected by the provider of products or services).
Appellants also have not demonstrated the claimed generic servers in
claim 21 (content server and evaluation server) are able to perform functions
that are not merely generic, as the claims in DDR. See DDR Holdings, 773
F.3d at 1258. Appellants’ claim 21 merely recites that the evaluation server
“act[s] as a buffer between the provider of products or services [accessed
from a content server separate from the evaluation server] and the identity
and contact information of a user who corresponds to that profile,” which
does not specify any technical improvement to the server or its functions.
Rather, claim 21 merely requires multiple servers (provider’s content server,
and evaluation server), and the broadly claimed “acting as a buffer” merely
requires that users’ identity and contact information not be present (or
stored) on all the servers. Thus, Appellants’ invention recited in claim 21
uses generically-claimed computing elements to perform the abstract idea,
without evidencing a technological improvement to the evaluation server or
to the way the server stores data. (See App. Br. 29.) As our reviewing court
has observed, “after Alice, there can remain no doubt: recitation of generic
computer limitations does not make an otherwise ineligible claim patent-
eligible.” DDR Holdings, 773 F.3d at 1256 (citing Alice, 134 S.Ct. at 2358).
Additionally, “the use of generic computer elements like a microprocessor or
user interface” to perform conventional computer functions “do not alone
transform an otherwise abstract idea into patent-eligible subject matter.”
FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1096 (Fed. Cir.
2016) (citing DDR Holdings, 773 F.3d at 1256).
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Because Appellants’ independent claim 21 is directed to a patent-
ineligible abstract concept and does not recite an “inventive concept” by
providing a solution to a technical problem under the second step of the
Alice analysis, we sustain the Examiner’s § 101 rejection of independent
claim 21.

CONCLUSIONS
The Examiner erred in rejecting claims 1–20 and 22 based on a lack
of patent-eligible subject matter under 35 U.S.C. § 101, but the Examiner
did not err in rejecting claim 21 under 35 U.S.C. § 101.

DECISION
For the above reasons, (1) we affirm the Examiner’s subject matter
eligibility rejection of claim 21 under 35 U.S.C. § 101, and (2) we reverse
the Examiner’s subject matter eligibility rejection of claims 1–20 and 22
under 35 U.S.C. § 101.
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) (2016).

AFFIRMED-IN-PART