LIFE IMPACT SOLUTIONSDownload PDFPatent Trials and Appeals BoardOct 1, 20212021003407 (P.T.A.B. Oct. 1, 2021) 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. 15/399,541 01/05/2017 Aaron Horvath 103135.0001US2 9285 24392 7590 10/01/2021 FISH IP LAW, LLP 2603 Main Street Suite 1000 Irvine, CA 92614 EXAMINER HOUSTON, CLIFTON L ART UNIT PAPER NUMBER 2453 NOTIFICATION DATE DELIVERY MODE 10/01/2021 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@fishiplaw.com rfish@fishiplaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte AARON HORVATH Appeal 2021-003407 Application 15/399,541 Technology Center 2400 Before MAHSHID D. SAADAT, MICHAEL J. STRAUSS, and MICHAEL J. ENGLE, Administrative Patent Judges. STRAUSS, Administrative Patent Judge. DECISION ON APPEAL1 STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the Examiner’s decision to reject claims 2–5, 7, 10–12, and 16–18. See Final Act. 1. Claim 12 is independent; claims 1, 6, 8, 9, 13–15, and 19 are 1 We refer to the Specification, filed January 5, 2017 (“Spec.”); Final Office Action, mailed March 19, 2020 (“Final Act.”); Appeal Brief, filed December 14, 2020 (“Appeal Br.”); Examiner’s Answer, mailed March 4, 2021 (“Ans.”); and Reply Brief, filed May 3, 2021 (“Reply Br.”). 2 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as Life Impact Solutions, LLC. Appeal Br. 2. Appeal 2021-003407 Application 15/399,541 2 canceled. Appeal Br. 11–12, Claims Appendix. Appellant identifies pending appeal no. 2021-001354 of serial no. 14/804,075 as being related to the current appeal. Id. at 3. We heard oral arguments on September 23, 2021. A transcript of the hearing will be added to the record in due course. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. CLAIMED SUBJECT MATTER The claims are directed to “[a] method for obtaining decision advice from a set of confidants” by providing a user of a mobile communication device with the means to distribute, to selected social media contacts (i.e., confidants), selected advertising material relevant to a pending decision being made by the user (i.e., intermediate) together with a solicitation for responsive feedback. Spec., Abstract; Appeal Br. 12, Claim 12. Claim 12, reproduced below with formatting altered and bracketed labels added, is illustrative of the claimed subject matter: 12. A method of facilitating distribution of advertising information of a business, the method comprising: [(i)] providing software for use on the intermediate’s mobile communication device, the software configured to operate under the exclusive discretion of the intermediate to: [(ii)] select a group of social media contacts of the intermediate, and [(iii)] select content for distribution to individual recipients in the group, [(iv)] where the content is potentially relevant to the recipients because the content (a) was created by the intermediate and (b) pertains to a decision being made by the intermediate; [(v)] select an advertising piece from the set of advertisements that is potentially relevant to the recipients because it is (a) based on a current location of the intermediate, and Appeal 2021-003407 Application 15/399,541 3 (b) pertains to the pending decision; [(vi)] send the advertising piece to the recipients, along with the content and a solicitation for feedback with respect to the decision wherein the advertising piece includes information about a retail store location. Appeal Br. 12 (Claims App.). REFERENCES AND REJECTIONS The Examiner relies upon the following references: Name3 Reference Publ’d Kelly US 2009/0063379 A1 Mar. 5, 2009 Lyren US 2014/0195345 A1 July 10, 2014 Courtney US 2014/0222956 A1 Aug. 7, 2014 REJECTIONS4 The Examiner rejects claims 2–5, 7, 10–12, and 16–18 under 35 U.S.C. § 101 as directed to non-statutory subject matter. Final Act. 8–12. The Examiner rejects claims 3–5, 10–12, 16, and 17 under 35 U.S.C. § 103 as obvious over the combined teachings of Kelly and Courtney. Final Act. 12–16. The Examiner rejects claims 2, 7, and 18 under 35 U.S.C. § 103(a) as being unpatentable over Kelly, Courtney, and Lyren. Final Act. 17–19. We review the appealed rejections for error based upon the issues identified by Appellant, and in light of the contentions and evidence produced thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential). The Examiner and Appellant focus their findings and 3 All reference citations are to the first named inventor only. 4 A rejection of claims 2–5, 7, 10–12, and 16–18 under 35 U.S.C. § 112(a) as failing to comply with the written description requirement (Final Act. 7–8) is withdrawn. Ans. 3. Appeal 2021-003407 Application 15/399,541 4 contentions on claim 12 (see Appeal Br. 6–10; Ans. 5–20); so we do as well. Arguments not made are forfeited.5 Unless otherwise indicated, we adopt the Examiner’s findings in the Final Office Action, and the Answer as our own and add any additional findings of fact for emphasis. We address the rejections below. REJECTION UNDER 35 U.S.C. § 101 The Examiner’s Determinations The Examiner determines claim 12’s steps (ii) through (vi) of selecting confidants and content and sending advertising and a request for feedback recite certain methods of organizing human activity that are considered to be abstract concepts.6 Final Act. 8–9. Addressing each of the limitations, the Examiner determines that, apart from step (i) of providing software for use on the intermediate’s mobile communication device, the software configured to operate under the exclusive discretion of the intermediate (i.e., user of the device) to perform the remaining steps (ii) through (vi) of claim 12, “nothing in the claim elements preclude the steps from practically organizing human activity.” Id. at 9. 5 See In re Google Tech. Holdings LLC, 980 F.3d 858, 863 (Fed. Cir. 2020) (“We interpret the Patent Office to be arguing that Google’s failure to raise its lexicography arguments, inadvertent or not, compels a finding of forfeiture.”); 37 C.F.R. § 41.37(c)(1)(iv) (2019) (“Except as provided for in §§ 41.41, 41.47 and 41.52, any arguments or authorities not included in the appeal brief will be refused consideration by the Board for purposes of the present appeal.”). 6 In response to Appellant’s arguments presented in the Appeal Brief, the Examiner additionally characterizes these steps as mental processes. Ans. 9. Appeal 2021-003407 Application 15/399,541 5 [B]ut for the “providing software for use on the intermediate’s mobile communication device to, the software configured to [perform the subsequently recited steps and] . . . operate under the exclusive discretion of the intermediate” limitation, [the remaining] “selecting and sending steps” in the context of . . . claim [12] encompass[] commercial or legal interactions such as advertising, marketing, or sales activities/behaviors and managing personal behavior, relationship, or interactions between people such as social activities, teaching, and following rules/instructions. Id. (emphasis omitted). In particular, in addition to determining claim elements (ii) through (iv) correspond to abstract concepts, the Examiner identifies “the additional elements of ‘providing software for use on the intermediate’s mobile communication device to, the software configured to work operate under the exclusive discretion of the intermediate’; and ‘wherein the advertising piece includes information about a retail store location’.” Id. The Examiner further determines: The mobile communication device is recited at a high- level of generality (e.g., the mobile device comprising an application (software) for execution of the method by a processor on the mobile device . . . which operates at the commands of a user of the mobile device) such that it amounts no more than mere instructions to apply the exception using a generic computer component of the mobile device. Id. at 10. The Examiner still further determines “[t]he limitation of ‘wherein the advertising piece includes information about a retail store location’ is just data representation and does not provide a technical improvement to the technology therefore it is not significantly more than the judicial exception of an abstract idea.” Id. Appeal 2021-003407 Application 15/399,541 6 Appellant contends the rejection is improper, arguing “1. Step 2A: Claim [12] Is A Practical Application Under The Revised Guidance” (Appeal. Br. 6–7), and “2. Step 2B: Claim [12] Has Added Significantly More Under The Revised Guidance” (id.at 7–9). Appeal Br. 5–16. We address these arguments in the Analysis section, below. Principles of Law A. SECTION 101 Inventions for a “new and useful process, machine, manufacture, or composition of matter” generally constitute patent-eligible subject matter. 35 U.S.C. § 101. However, the U.S. Supreme Court has long interpreted 35 U.S.C. § 101 to include implicit exceptions: “[l]aws of nature, natural phenomena, and abstract ideas” are not patentable. 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 Court’s two-step framework, described in Mayo Collaborative Services v. Prometheus Laboratories, Inc., 566 U.S. 66 (2012), and Alice. Alice, 573 U.S. at 217–18 (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 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 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 Appeal 2021-003407 Application 15/399,541 7 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” (Diamond v. Diehr, 450 U.S. 175, 191 (1981)); “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 (1854))); and manufacturing flour (Benson, 409 U.S. at 69 (citing Cochrane v. Deener, 94 U.S. 780, 785 (1877))). In Diehr, the claim at issue recited a mathematical formula, but the Court held that “a claim drawn to subject matter otherwise 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 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. at 191 (citing Benson and Flook); see also, 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- Appeal 2021-003407 Application 15/399,541 8 eligible application.” Alice, 573 U.S. at 221 (internal 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. B. USPTO SECTION 101 GUIDANCE In January 2019, the U.S. Patent and Trademark Office (“USPTO”) published revised guidance on the application of 35 U.S.C. § 101. See 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (“2019 Guidance”), updated by USPTO, October 2019 Update: Subject Matter Eligibility (available at https://www.uspto.gov/sites/ default/files/documents/peg_oct_2019_update.pdf) (“October 2019 Guidance Update”); see also October 2019 Patent Eligibility Guidance Update, 84 Fed. Reg. 55,942 (Oct. 18, 2019) (notifying the public of the availability of the October 2019 Guidance Update). “All USPTO personnel are, as a matter of internal agency management, expected to follow the guidance.” 2019 Guidance, 84 Fed. Reg. at 51; see also October 2019 Guidance Update at 1. Under the 2019 Guidance, we first look to whether the claim recites the following: (1) any judicial exceptions, including certain groupings of abstract ideas (i.e., mathematical concepts, certain methods of organizing human activities such as a fundamental economic practice, or mental processes); and Appeal 2021-003407 Application 15/399,541 9 (2) additional elements that integrate the judicial exception into a practical application (see MPEP §§ 2106.05(a)–(c), (e)–(h)). 2019 Guidance, 84 Fed. Reg. at 52–55. 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, [and] 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. 2019 Guidance, 84 Fed. Reg. at 56. Analysis STEP 2A, PRONG 1 Under step 2A, prong 1, of the 2019 Guidance, we first look to whether the claim recites any judicial exceptions, including certain groupings of abstract ideas (i.e., mathematical concepts, certain methods of organizing human activities such as a fundamental economic practice, or mental processes). 2019 Guidance, 84 Fed. Reg. at 52–54. Claim 12’s element (ii) recites the step of “select[ing] a group of social media contacts of the intermediate.” The Examiner determines, and we agree, this limitation (together with the limitations of claim 12’s elements (iii) through (vi), discussed below) “covers performance of commercial or legal interaction and/or managing personal behavior, Appeal 2021-003407 Application 15/399,541 10 relationships, or interactions between people.” Final Act. 9. For example, obtaining information about a potential purchase by soliciting the opinions of others about a product or service is reasonably characterized as a marketing or sales activity or behavior. Likewise, as also found by the Examiner, these activities are reasonably characterized as managing personal behavior or relationships or interaction between people as in the Examiner’s example of a user shopping for shoes at a shopping mall. Id.; Ans. 5. Still further, selecting a group of social media contacts is reasonably characterized as an evaluation or judgment performed in the human mind as a mental process as explained by the Examiner. Ans. 6. The 2019 Guidance expressly recognizes (1) certain methods of organizing human activity including (a) commercial interactions involving advertising, marketing, or sales activities or behaviors and (b) managing personal behavior or relationships or interactions such as social activities, teaching, and following rules or instructions; and (2) mental processes, including observations that can be performed in the human mind, as patent- ineligible abstract ideas. 2019 Guidance, 84 Fed. Reg. at 52. Accordingly, the limitation of claim 12’s element (ii) is reasonably characterized as reciting a judicial exception to patent-eligible subject matter, specifically, certain methods of organizing human activity and mental processes recognized as abstract concepts. Claim 12’s element (iii) recites the step of “select[ing] content for distribution to individual recipients in the group.” The Examiner finds, and we agree, the recited activity is reasonably characterized as the “performance of [a] commercial or legal interaction and/or managing personal behavior, relationships, or interactions between people” (Final Act. Appeal 2021-003407 Application 15/399,541 11 9; Ans. 5–6) and as a mental process that can be performed in the human mind and/or with the aid of pen and paper (Ans. 6). Thus, for reasons similar to those discussed above in connection with the group selection step of claim 12’s element (ii), we likewise determine the content selection limitation of claim 12’s element (iii) reasonably can be characterized as reciting a judicial exception to patent-eligible subject matter, specifically, certain methods of organizing human activity and mental processes recognized as abstract concepts. Claim 12’s element (iv) including sub-elements (a) and (b) defines criteria used by the content selection step of claim element (iii). Applying the recited criteria does not alter our analysis of claim element (iii). For example, selecting content based on who created the content and relevance to particular subject matter, such as a decision being made by a user, is reasonably characterized as certain methods of organizing human activity and mental processes (i.e., concepts performed in the mind including observation, evaluation, judgment, and opinion) for the reasons discussed above. Thus, as with claim elements (ii) and (iii), application of selection criteria as recited by claim element (iv) is reasonably characterized as an abstract concept that is a judicial exception to patent-eligible subject matter. Claim 12’s element (v) recites “select an advertising piece from the set of advertisements that is potentially relevant to the recipients because it is (a) based on a current location of the intermediate, and (b) pertains to the pending decision.” As with the selection steps of claim elements (ii) through (iv) and for the same reasons as discussed above, selecting an advertisement based on the recited criteria detailed by claim element (v) is reasonably Appeal 2021-003407 Application 15/399,541 12 characterized as reciting a judicial exception to patent-eligible subject matter. Claim 12’s element (vi) recites “send the advertising piece to the recipients, along with the content and a solicitation for feedback with respect to the decision wherein the advertising piece includes information about a retail store location.” The Examiner determines and we agree that sending advertising as recited by claim 12’s element (vi) also “encompasses commercial or legal interactions such as advertising, marketing, or sales activities/behaviors and managing personal behavior, relationship, or interactions between people such as social activities, teaching, and following rules/instructions.” Final Act. 9. Accordingly, the sending limitation of claim 12’s element (vi) reasonably can be characterized as reciting a judicial exception to patent-eligible subject matter. In addition to determining that each of the claimed limitations recites an abstract idea, we note that our reviewing court has found claims to be abstract ideas when they recited similar subject matter. Netflix, Inc. v. Rovi Corp., 114 F. Supp. 3d 927, 944 (N.D. Cal. 2015), aff’d, 670 F. App’x 704 (Fed. Cir. 2016) (affirming district court ruling that claims for making viewing recommendations based on a user’s viewing history recited an abstract idea); Intellectual Ventures I LLC v. J. Crew Grp., Inc., No. 6:16- CV-196-JRG, 2016 WL 4591794, at *5 (E.D. Tex. Aug. 24, 2016), aff’d sub nom. Intellectual Ventures I LLC v. FTD Companies, Inc., 703 F. App’x 991 (Fed. Cir. 2017) (affirming district court ruling that claims directed to recommending products to customers based on purchase history recited an abstract idea); Personalized Media Commc’ns, LLC v. Amazon.Com, Inc., 161 F. Supp. 3d 325, 338 (D. Del. 2015), aff’d sub nom. Personalized Media Appeal 2021-003407 Application 15/399,541 13 Commc’ns, L.L.C. v. Amazon.com Inc., 671 F. App’x 777 (Fed. Cir. 2016) (affirming district court ruling that claims directed to providing personalized recommendations recited an abstract idea). For the reasons discussed above, each of limitations of claim 12’s elements (ii) through (vi) recites one or more judicial exceptions to patent- eligible subject matter under step 2A, prong 1, of the 2019 Guidance. See RecogniCorp, LLC v. Nintendo Co., 855 F.3d 1322, 1327 (Fed. Cir. 2017) (“Adding one abstract idea . . . to another abstract idea . . . does not render the claim non-abstract.”). STEP 2A, PRONG 2 Under step 2A, prong 2, of the 2019 Guidance, we next analyze whether independent claim 12 recites additional elements that individually or in combination integrate the judicial exception into a practical application. 2019 Guidance, 84 Fed. Reg. at 53–55. The 2019 Guidance identifies considerations indicative of whether an additional element or combination of elements integrates the judicial exception into a practical application, such as an additional element reflecting an improvement in the functioning of a computer or an improvement to other technology or technical field. Id. at 55; MPEP § 2106.05(a). The Examiner finds, in addition to subject matter constituting abstract concepts, claim 12 includes additional elements including “‘providing software for use on the intermediate’s mobile communication device to, the software configured to work operate under the exclusive discretion of the intermediate’ [claim element (i)]; and ‘wherein the advertising piece includes information about a retail store location’ [as recited by claim Appeal 2021-003407 Application 15/399,541 14 element (vi)].” Final Act. 9. The Examiner determines the identified additional elements do not integrate the abstract idea into a practical application, as follows: The mobile communication device is recited at a high-level of generality (e.g., the mobile device comprising an application (software) for execution of the method by a processor on the mobile device in which operates at the commands of a user of the mobile device) such that it amounts no more than mere instructions to apply the exception using a generic computer component of the mobile device. The limitation of “wherein the advertising piece includes information about a retail store location” is just data representation and does not provide a technical improvement to the technology therefore it is not significantly more than the judicial exception of an abstract idea. Id. at 10. We agree with the Examiner in determining the software recited by claim 12’s element (i) is insufficient to integrate the abstract concept into a practical application. Id. That is, simply introducing a computer into a claim does not “supply the necessary inventive concept.” Alice, 573 U.S. at 222. “An inventive concept that transforms the abstract idea into a patent- eligible invention must be significantly more than the abstract idea itself, and cannot simply be an instruction to implement or apply the abstract idea on a computer.” BASCOM Glob. Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341, 1349 (Fed. Cir. 2016) (citing Alice, 573 U.S. at 223– 24); see also FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1098 (Fed. Cir. 2016) (The inability of a human to perform each claim step “does not alone confer patentability.”). Appeal 2021-003407 Application 15/399,541 15 Claim 12’s element (i) recites, in relevant part, “providing software for use on the intermediate’s mobile communication device, the software configured to operate under the exclusive discretion of the intermediate to [perform the following recited steps ii through iv].” Appeal Br. 12, Claim App’x. Concerning the recitation of “providing of software,” Appellant’s Specification describes “[i]n some embodiments, a computer program product comprising a computer readable storage medium having a computer readable program is provided. The computer readable program when executed on a computer causes the computer to perform the functions and operations associated with the above-disclosed methods.” Spec. ¶ 11. The Specification further discloses: These computer program instructions may be provided to a processor of a general purpose computer, a special purpose machinery, or other programmable data processing apparatus to produce a machine, such that the instructions, which execute via the processor of the computer or other programmable data processing apparatus, create means for implementing the functions or acts specified in the flowchart or block diagram block or blocks. Spec. ¶ 37. The recited “for use on the intermediate’s [(i.e., user’s)] mobile communication device” is interpreted as, at most, an implied requirement that the software be suitable for use on such a device. Because Appellant’s Specification does not disclose particular features or characteristics such that the provided software is suitable for the intended use, we interpret any such requirement to be satisfied by software in general such as the types of software described at paragraph 34 of the Specification. Claim 12’s element (i) further recites that “the software [be] configured to operate under the exclusive discretion of the intermediate to Appeal 2021-003407 Application 15/399,541 16 [perform steps of claim elements (ii) through (vi)].” This language was added by the Amendment filed February 21, 2020. However, Appellant’s Specification does not mention much less explain what is meant by the added exclusive discretion language. Accordingly, for purposes of this appeal, we interpret the added language to provide for user (i.e., intermediate) control over the execution of software that supports the performance of the method steps of claim 12’s elements (ii) though (vi). Based on the above analysis, we interpret claim 12’s element (i) to merely require computer performance of the subsequently recited steps of claim 12’s elements (ii) through (vi) and is, therefore, insufficient to transform the otherwise patent-ineligible abstract idea of claim 12 into a patent-eligible invention Although we do not necessarily agree with the Examiner in characterizing or treating as an extra element the requirement that the advertising piece includes information about a retail store location, we nonetheless agree that specifying that advertising content includes store location information does not integrate the abstract concept into a practical application. Final Act. 10. That is, as discussed above, sending information resulting from a selection process, standing alone, is an abstract concept. Furthermore, sending information resulting from the steps of claim 12’s elements (i) though (v) as recited by claim element (vi), is characterized as merely being directed to the insignificant extra-solution activity of transmitting data. In particular, communicating or transmitting information is insignificant post-solution activity. “[M]erely presenting the results of abstract processes of collecting and analyzing information, without more (such as identifying a particular tool for presentation), is abstract as an Appeal 2021-003407 Application 15/399,541 17 ancillary part of such collection and analysis.” FairWarning, 839 F.3d at 1093 (quoting Electric Power Group, LLC, v. Alstom, 830 F.3d 1350, 1353 (Fed. Cir. 2016)). See also 2019 Guidance, 84 Fed. Reg. at 55 n.31; MPEP § 2106.05(g); buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355 (Fed. Cir. 2014) (computer receives and sends information over a network). As such, even if we were to consider it as an additional element under prong 2 rather than as reciting an abstract idea under prong 1, claim element (vi) recites, at most, the insignificant extra-solution activity of transmitting data. Appellant contends: Claim 12 includes several elements that collectively recite a practical application under Step 2A, namely providing an intermediate (i.e., user) with a software application, with which the intermediate selects an advertising piece from a set of advertisements, the intermediate produces a solicitation that includes advertising by combining the advertising piece with the solicitation, and the intermediate shares the combined (ad- branded) solicitation to contacts of the intermediate. Appeal Br. 6. Appellant argues: “One practical application of having an intermediate in charge of all of these steps is that the intermediates can have unfettered control over utilization of business logos or other advertising materials.” Id. The Examiner responds, finding the claims merely require a computer implementation of the underlying abstract concept of “a process that manages personal interactions between people or performing social activities such as seeking an opinion from friends or family members regarding an item that the user is interested in.” Ans. 5–6. According to the Examiner: These steps can also be performed mentally by a human being with the aid of pen and paper. For example, a user maybe looking at a magazine with content and advertisements, and then the user Appeal 2021-003407 Application 15/399,541 18 asks or seeks advice or opinion from another user or family member nearby, regarding an item that the user is interested in purchasing (i.e. old prevalent method of seeking opinions). Id. at 6. We agree with the Examiner in finding Appellant’s contention unpersuasive of reversible error. As discussed above, simply introducing a computer into a claim does not “supply the necessary inventive concept.” Alice, 573 U.S. at 222. We are also unpersuaded by Appellant’s argument that claim 12’s requirement that “the software [be] configured to operate under the exclusive discretion of the intermediate” results in a “practical application of having an intermediate in charge of all of these steps [such] that the intermediates can have unfettered control over utilization of business logos or other advertising materials.” Appeal Br. 6. Appellant’s argument fails to show an improvement to another technology, technical field, or to the functioning of a computer itself or other recognized considerations relevant to the evaluation of whether any claimed additional elements amount to an inventive concept evidencing eligible subject matter under prong 2 of our analysis. Instead, the argued improvement goes to the underlying abstract concept of “manag[ing] personal interactions between people or performing social activities such as seeking an opinion from friends or family members regarding an item that the user is interested in.” See Ans. 5–6. For the reasons discussed above, Appellant does not persuade us that claim 12 is directed to an improvement in the functioning of a computer or to any other technology or technical field. MPEP § 2106.05(a). Nor does Appellant persuasively demonstrate that these claims are directed to a particular machine or transformation, or that the claims add any other Appeal 2021-003407 Application 15/399,541 19 meaningful limitations for the purposes of the analysis under § 101. MPEP §§ 2106.05(b), (c), (e). Accordingly, Appellant does not persuade us that claim 12 integrates the recited abstract ideas into a practical application within the meaning of the 2019 Guidance. See 2019 Guidance, 84 Fed. Reg. at 52–55. STEP 2B Under the 2019 Guidance, 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 adds a specific limitation beyond the judicial exception that is not “well-understood, routine, conventional” in the field (see MPEP § 2106.05(d)); or simply appends well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception. The Examiner determines as follows: The additional elements, taken individually and in combination, do not result in the claim, as a whole, amounting to significantly more than the abstract idea because the claims include additional elements that are well-understood, routine, and conventional activity in a technical field. The ordered combination of well- known limitations, results in well-known practice and is not significantly more than the judicial exception of an abstract idea. Final Act. 10. In support of this, the Examiner cites to prior art patent publications disclosing social network advertising, creating a poll with choices/options in which a user receives advice about making a decision, and using a mobile device to obtain GPS location information to provide targeted advertising. Final Act. 11. Appeal 2021-003407 Application 15/399,541 20 Appellant argues “[t]he Examiner provided no evidence to establish the unique combination of these limitations is a well-understood, routine or conventional, in view of Berkheimer Memo.” Appeal Br. 8. We are unpersuaded of reversible Examiner error. All claim elements, with the exception of the recited software for use on the intermediate’s mobile communication device, correspond to concepts determined to be abstract ideas for the reasons discussed above in connection with prong 1 of our analysis. These abstract concepts need not be shown to be well-understood, routine, and conventional. If otherwise, our analysis would need to include evidence that the entirety of the claimed subject matter was, not merely old and obvious (as required of rejections under 35 U.S.C. §§ 102, 103), but well-understood, routine, and conventional to sustain a rejection under 35 U.S.C. § 101. This is not the case. Thus, our analysis focuses on the additional elements. Appellant provides insufficient evidence that the software required to execute the claimed steps was anything other than well-understood, routine, and conventional. Instead, Appellant’s Specification describes the following: An embodiment of the present invention relates to a computer storage product with a computer-readable medium having computer code thereon for performing various computer- implemented operations. The media and computer code may be those specially designed and constructed for the purposes of the present invention, or they may be of the kind well known and available to those having skill in the computer software arts. Spec. ¶ 34 (emphasis added). Thus, Appellant’s disclosure persuades us that the required software was well-understood, routine, and conventional. See Berkheimer Memorandum at 3 (explaining that a specification that describes Appeal 2021-003407 Application 15/399,541 21 additional elements “in a manner that indicates that the additional elements are sufficiently well-known that the specification does not need to describe the particulars of such additional elements to satisfy 35 U.S.C. § 112(a)” can show that the elements are well understood, routine, and conventional); Intellectual Ventures I LLC v. Erie Indem. Co., 850 F.3d 1315, 1331 (Fed. Cir. 2017) (“The claimed mobile interface is so lacking in implementation details that it amounts to merely a generic component (software, hardware, or firmware) that permits the performance of the abstract idea, i.e., to retrieve the user-specific resources.”). Consistent with the Berkheimer Memorandum, the claims merely recite “software,” i.e., a computer program that “when executed on a computer causes the computer to perform the functions and operations associated with the . . . disclosed methods.” Spec. ¶ 11. Furthermore, even though not positively recited by the claim, the mobile communication device executing the recited software is described at a high level of generality as, “a cellular telephone, a smartphone, a wireless-enabled personal digital assistant, a tablet, a personal computer, a note book, a mobile device and any other device that receives and transmits data from at least one network.” Spec. ¶ 22. Such devices perform generic computing functions that were well-understood, routine, and conventional. See Alice, 573 U.S. at 225 (the “use of a computer to obtain data, adjust account balances, and issue automated instructions; all of these computer functions are ‘well-understood, routine, conventional activit[ies]’ previously known to the industry”) (alteration in original) (quoting Mayo, 566 U.S. at 71–73); see also Benson, 409 U.S. at 65 (“The computer operates then upon both new and previously stored data. The general-purpose computer is designed to perform Appeal 2021-003407 Application 15/399,541 22 operations under many different programs.”); FairWarning, 839 F.3d at 1096 (noting that using generic computing components like a microprocessor or user interface does not transform an otherwise abstract idea into eligible subject matter); Mortg. Grader, Inc. v. First Choice Loan Servs. Inc., 811 F.3d 1314, 1324–25 (Fed. Cir. 2016) (indicating components such as an “interface” are generic computer components that do not satisfy the inventive concept requirement); MPEP § 2106.05(d)(II) (citing Alice and Mayo); accord Berkheimer Memo 3–4. Thus, Appellant’s reliance on Berkheimer is misplaced. Accordingly, for the reasons discussed, we find that the structure and functioning of the additional elements were well-understood, routine, and conventional. ELIGIBILITY CONCLUSION For the reasons discussed above, we determine that claim 12 does not recite additional elements that, either individually or as an ordered combination, amount to significantly more than the judicial exception within the meaning of the 2019 Revised Guidance. 84 Fed. Reg. at 52–55; MPEP § 2106.05(d). Accordingly, we sustain the Examiner’s rejection of independent claim 12 under 35 U.S.C. § 101 together with the rejection of dependent claims 2–5, 7, 10, 11, and 16–18, which are not argued separately with particularity. REJECTION UNDER 35 U.S.C. § 103 The Examiner’s Determinations The Examiner finds that Kelly’s disclosure of automated decision- making based on collaborative user input teaches the majority of the Appeal 2021-003407 Application 15/399,541 23 limitations recited by claim 12 including all or portions of claim elements (i) through (iv). Final Act. 13–14 (citing Kelly ¶¶ 8, 26, 29, 32, 45, 99–100). However, the Examiner finds “Kelly does not explicitly teach [(1)] select[ing] an advertising piece from the set of advertisements that is potentially relevant to the recipients because it is (a) based on a current location of the intermediate; and [(2)] wherein the advertising piece includes information about a retail store location.” Id. at 14. To remedy the noted deficiencies of Kelly, the Examiner applies Courtney’s disclosure of targeting location-based communications for teaching claim elements (v)(a) and sending retail store location information. Id. at 14 (citing Courtney ¶¶ 72, 75,166, 172, 182). The Examiner explains “[a] person of ordinary skilled in the art would have been motivated to make [the asserted] modification because it ensures that a nearby device receives advertisements which may be helpful in increasing sales as explained in ¶ 0175 of Courtney.” Id. at 15. Appellant contends “the combination of Kelly and Courtney fail[s] to teach (1) selecting an advertising piece from a set of advertisements and (2) sending the advertising piece along with content and a solicitation to recipients, where those steps are under the exclusive discretion of the intermediate, as recited in claim 12.” Appeal Br. 9. Appellant further contends the combination of Kelly and Courtney is improper because claim 12 limits a brand owners’ control over images of their advertising materials such that a person having ordinary skill in the art (PHOSITA) “would reject such methods out of hand as being anathema to what a typical business owner wants.” Id. We address Appellant’s arguments as follows. Appeal 2021-003407 Application 15/399,541 24 Analysis Appellant’s contention that the combination of Kelly and Courtney fails to teach certain limitations of claim 12 is unpersuasive because it is facially insufficient. The Examiner finds Kelly’s disclosures at paragraphs 26, 29, 32 and Figure 1 teach or suggest, inter alia, software configured to operate under the exclusive discretion of the intermediate (i.e., user). Final Act. 13. The Examiner further finds the recited selection of an advertising piece from a set of advertisements is taught or suggested by Kelly’s disclosure at paragraph 8, 29, and 100. Final Act. 14. The Examiner also finds Kelly teaches or suggests sending the advertising piece to a recipient at paragraphs 29, 32, and 100 of Kelly. Id. Appellant fails to address these findings and explain why the Examiner’s findings are erroneous. A general denial that fails to address the Examiner’s findings is insufficient. See 37 C.F.R. § 41.37(c)(1)(iv) (“A statement [that] merely points out what a claim recites will not be considered an argument for separate patentability of the claim.”); In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) (“[W]e hold that the Board reasonably interpreted Rule 41.37 to require more substantive arguments in an appeal brief than a mere recitation of the claim elements and a naked assertion that the corresponding elements were not found in the prior art.”). Appellant’s argument that the combination of Kelly and Courtney is improper (Appeal Br. 9) is unpersuasive because it also does not address the Examiner’s findings including the Examiner’s reasoning for modifying the teachings of Kelly to include the teachings of Courtney. Appellant argues one skilled in the art would not make the invention of claim 12, not because they would not combine the references in the manner suggested by the Appeal 2021-003407 Application 15/399,541 25 Examiner, but because aspects of claim 12 taught by Kelly, even without the addition of Courtney, would be contrary to the wants of a typical business owner. Furthermore, even if the asserted business reasons to reject the subject matter of claim were to form a basis for challenging the combination, such argument would be unpersuasive because it fails to address the Examiner’s reasoning for making the combination. Still further and in any case, Appellant’s argument is supported by insufficient evidence to be persuasive of the facts asserted and any related conclusions (e.g., whether the references teach away from their combination). Attorney argument unsupported by evidence has little probative value. See In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997). OBVIOUSNESS CONCLUSION For the reasons discussed above, we sustain the Examiner’s rejection of independent claim 12 as obvious over the combination of Kelly and Courtney under 35 U.S.C. § 103. We further sustain the rejections of dependent claims 2–5, 7, 10, 11, and 16–18, which are not argued separately with particularity. DECISION We affirm the Examiner’s rejection of claims 2–5, 7, 10–12, and 16– 18 under 35 U.S.C. § 101. We affirm the Examiner’s rejection of claims 3–5, 10–12, 16, and 17 under 35 U.S.C. § 103 over Kelly and Courtney. We affirm the Examiner’s rejection of claims 2, 7, and 18 under 35 U.S.C. § 103 over Kelly, Courtney, and Lyren. Appeal 2021-003407 Application 15/399,541 26 DECISION SUMMARY Claims Rejected 35 U.S.C. § References/Basis Affirmed Reversed 2–5, 7, 10–12, 16–18 101 Eligibility 2–5, 7, 10–12, 16–18 3–5, 10–12, 16, 17 103 Kelly, Courtney 3–5, 10–12, 16, 17 2, 7, 18 103 Kelly, Courtney, Lyren 2, 7, 18 Overall Outcome 2–5, 7, 10–12, 16–18 TIME PERIOD FOR RESPONSE No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED Copy with citationCopy as parenthetical citation