Larry Kavanagh et al.Download PDFPatent Trials and Appeals BoardAug 22, 201915176234 - (D) (P.T.A.B. Aug. 22, 2019) Copy Citation 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.) Appeal 2018-008368 Application 15/176,234 2 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: Appeal 2018-008368 Application 15/176,234 3 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 Appeal 2018-008368 Application 15/176,234 4 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 Appeal 2018-008368 Application 15/176,234 5 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: Appeal 2018-008368 Application 15/176,234 6 (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. Appeal 2018-008368 Application 15/176,234 7 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.) Appeal 2018-008368 Application 15/176,234 8 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. Appeal 2018-008368 Application 15/176,234 9 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 Appeal 2018-008368 Application 15/176,234 10 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. Appeal 2018-008368 Application 15/176,234 11 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 Appeal 2018-008368 Application 15/176,234 12 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 Appeal 2018-008368 Application 15/176,234 13 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 Appeal 2018-008368 Application 15/176,234 14 “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 Appeal 2018-008368 Application 15/176,234 15 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.”). Appeal 2018-008368 Application 15/176,234 16 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.) Appeal 2018-008368 Application 15/176,234 17 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 Appeal 2018-008368 Application 15/176,234 18 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). Appeal 2018-008368 Application 15/176,234 19 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 Appeal 2018-008368 Application 15/176,234 20 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). Appeal 2018-008368 Application 15/176,234 21 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 Copy with citationCopy as parenthetical citation