Metcalf, Michael

Patent Trials and Appeals Board

Feb 4, 2020

13355347 - (D) (P.T.A.B. Feb. 4, 2020)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/355,347 01/20/2012 Michael Metcalf YAH1P277/Y07802US00 2515
123510 7590 02/04/2020
Cooper Legal Group LLC
6505 Rockside Road Suite 330
Independence, OH 44131
EXAMINER
SNIDER, SCOTT
ART UNIT PAPER NUMBER
3621
NOTIFICATION DATE DELIVERY MODE
02/04/2020 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
docketing@cooperlegalgroup.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte MICHAEL METCALF
____________

Appeal 2019-001711
Application 13/355,347
Technology Center 3600
____________

Before CAROLYN D. THOMAS, HUNG H. BUI, and
JOHN F. HORVATH, Administrative Patent Judges.

THOMAS, Administrative Patent Judge.

DECISION ON APPEAL

Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1, 3–10, 12–14, 16–24, 26, 27, 29, and
31–35. Claims 2, 11, 15, 25, 28, and 30 are canceled. Claims Appendix.
We have jurisdiction over the appeal under 35 U.S.C. § 6(b).
We AFFIRM.

1 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 Oath Inc.
Appeal Br. 3.
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The present invention relates generally to providing pop-applications,
associated with advertisements, to users based on locations associated with
the applications. See Spec. ¶ 3.
Independent claim 1, reproduced below, is representative of the
appealed claims:
1. A method, comprising:
predicting, by one or more servers, future locations of a
plurality of users such that a predicted number of the plurality of users
for a location is determined, wherein predicting future locations of a
plurality of users is performed based, at least in part, on calendar
entries in electronic calendars of at least a portion of the plurality of
users;
providing, by the one or more servers via a bidding
platform, information indicating the predicted number of users for the
location;
auctioning the location by the one or more servers based,
at least in part, on the predicted number of users for the location such
that a set of one or more applications is mapped to the location based
upon a plurality of bids, each of the plurality of bids pertaining to a
different one of a plurality of applications;
ascertaining by the one or more servers a set of one or
more users that are present at the location based, at least in part, upon
signals received from mobile devices of the set of one or more users;
and
providing by the one or more servers a notification or
image representative of at least one of the set of one or more
applications for presentation in a pop-up window via the mobile
devices of the set of one or more users.

Appellant appeals the following rejection:
Claims 1, 3–10, 12–14, 16–24, 26, 27, 29, and 31–35 are rejected
under 35 U.S.C. § 101 because the claimed invention is directed to patent-
ineligible subject matter. Final Act. 3–4.
We review the appealed rejection for error based upon the issues
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identified by Appellant, and in light of the arguments and evidence produced
thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential).

ANALYSIS
Rejection under § 101
An invention is patent-eligible if it claims a “new and useful process,
machine, manufacture, or composition of matter.” 35 U.S.C. § 101.
However, the Supreme Court has long interpreted 35 U.S.C. § 101 to include
implicit exceptions: “[l]aws of nature, natural phenomena, and abstract
ideas” that are not patentable because these implicit exceptions (1) are “the
basic tools of scientific and technological work” and (2) “are part of the
storehouse of knowledge of all men . . . free to all men and reserved
exclusively to none.” Gottshalk v. Benson, 409 U.S. 63, 67 (1972); e.g.,
Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 216 (2014).
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court’s two-step framework, described in Mayo
and Alice. Id. at 217–18 (citing Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 566 U.S. 66, 75–77 (2012)). In accordance with the framework,
we first determine what concept the claim is “directed to.” See Alice, 573
U.S. at 219 (“On their face, the claims before us are drawn to the concept of
intermediated settlement, i.e., the use of a third party to mitigate settlement
risk.”); see also Bilski v. Kappos, 561 U.S. 593, 611 (2010) (“Claims 1 and 4
in petitioners’ application explain the basic concept of hedging, or protecting
against risk.”). For example, 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,
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561 U.S. at 611); mathematical formulas (Parker v. Flook, 437 U.S. 584,
594–95 (1978)); and mental processes (Gottschalk v. Benson, 409 U.S. 63,
69 (1972)).
The USPTO published revised guidance on the application of 35
U.S.C. § 101. USPTO’s 2019 Revised Patent Subject Matter Eligibility
Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (“Revised Guidance”). Updated
by USPTO, October 2019 Update: Subject Matter Eligibility (available at
https://www.uspto.gov/sites/default/files/documents/peg_oct_2019_update.p
df) (jointly referred to as “Revised Guidance”); see also October 2019 Patent
Eligibility Guidance Update, 84 Fed. Reg. 55942 (Oct. 18, 2019) (notifying
the public of the availability of the October update).
Under the Revised Guidance “Step 2A,” the office first looks to
whether the claim recites:
(1) any judicial exceptions, including certain groupings of abstract
ideas (i.e., mathematical concepts, certain methods of organizing human
activity such as a fundamental economic practice, or mental processes); and
(2) additional elements that integrate the judicial exception into a
practical application (see MPEP § 2106.05(a)-(c), (e)-(h)). 84 Fed. Reg. at
51–52, 55.
Only if a claim (1) recites a judicial exception and (2) does not
integrate that exception into a practical application, does the Office then
(pursuant to the Revised Guidance “Step 2B”) 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
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(4) simply appends well-understood, routine, conventional activities
previously known to the industry, specified at a high level of generality, to
the judicial exception. 84 Fed. Reg. at 56.
Step 2A, Prong 1 (Does the Claim Recite a Judicial Exception?)
With respect to representative independent method claim 1, the
Examiner determines that the claims are directed to “providing application
advertisements based on predicted locations for a plurality of users” (Final
Act. 3), which we conclude are at least mental processes, which is a type of
abstract idea. We also determine that the claims are directed to geo-
targeting, i.e., delivering content to users based upon their locations, which
we conclude are certain methods of organizing human activity, i.e.,
commercial interactions regarding geo-targeting for potentially sending
targeted advertisements. For at least the following reasons, we are
persuaded that representative claim 1 recites plural abstract ideas.
The Specification discloses:
The disclosed embodiments enable pop-applications to be provided to
users. Through pop-up applications, applications or advertisements
associated therewith may be provided to users. This may be
accomplished based, at least in part, upon locations associated with
the applications.

In accordance with one embodiment, a location may be identified,
where the location is associated with a set of one or more applications.
A set of one or more users that are present at the location may be
ascertained. The set of one or more applications or one or more
advertisements may be provided to the set of one or more
users, where each of the advertisements pertains to a corresponding
one of the set of one or more applications.
Spec. ¶¶ 3–4.
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A claim recites a mental process when the claim encompasses acts
people can perform using their minds or pen and paper. See, e.g.,
CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1372-73 (Fed.
Cir. 2011) (determining that a claim whose “steps can be performed in the
human mind, or by a human using a pen and paper” is directed to an
unpatentable mental process). This is true even if the claim recites that a
generic computer component performs the acts. See, e.g., Versata Dev.
Grp., Inc. v. SAP Am., Inc., 793 F.3d 1306, 1335 (Fed. Cir. 2015) (“Courts
have examined claims that required the use of a computer and still found that
the underlying, patent-ineligible invention could be performed via pen and
paper or in a person's mind.”); see also 2019 Eligibility Guidance 84 Fed.
Reg. at 52 n.14 (“If a claim, under its broadest reasonable interpretation,
covers performance in the mind but for the recitation of generic computer
components, then it is still in the mental processes category unless the claim
cannot practically be performed in the mind.”).
Limitations in claim 1, under the broadest reasonable interpretation,
encompass acts people can perform using their minds or pen and paper
because people can perform the “predicting . . . future locations” step by
simply looking at the recited content, i.e., entries in a calendar for various
individuals, and observing future appointments at a particular location.
People can also perform the “providing . . . information/notification” steps
by merely passing a piece of paper with the content to one another.
Additionally, people can perform the “auctioning . . . the location” and
“ascertaining . . . users that are present” steps by respectively using pen and
paper to map applications to locations and simply making observations as to
which users are present at the location.
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Additionally, the aforementioned limitations, under their broadest
reasonable interpretation, recite commercial interactions akin to geo-
targeting because the limitations all recite operations that would ordinarily
take place when selecting, creating, and transmitting content, e.g.,
advertisements. See Spec. ¶ 20. Although representative claim 1 does not
explicitly recite “advertisements,” it is clear from Appellant’s disclosure that
ad targeting is the intended purpose. See Abstract.
Appellant merely contends that “the Examiner has described the
claims at a high level of abstraction that does not consider the specific
language of the claims.” Appeal Br. 16.
It is plainly evident that the Examiner considered the limitations in the
claim and the Examiner’s analysis is indeed tethered to actual claim
language. We find the Examiner properly and reasonably found that claim 1
recites an abstract idea. The Examiner condensed it to “providing
application advertisements based on predicted locations for a plurality of
users” (Final Act. 3), but this is simply a higher level of abstraction. Apple,
Inc. v. Ameranth, Inc., 842 F.3d 1229, 1240–41 (Fed. Cir. 2016) (“An
abstract idea can generally be described at different levels of abstraction. As
the Board has done, the claimed abstract idea could be described as
generating menus on a computer, or generating a second menu from a first
menu and sending the second menu to another location. It could be
described in other ways, including, as indicated in the specification, taking
orders from restaurant customers on a computer.”)
Whichever way the concept is described, we do not see that Appellant
has adequately shown that claim 1 does not recite an abstract idea. The fact
that claim 1 includes more words than the phrase the Examiner uses as an
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articulation of the abstract idea to which he/she found the claim is directed
does not provide sufficient reason to persuasively argue that claim 1 is not
directed to an abstract idea. Further, the identified abstract idea need not
encompass every claim limitation. Otherwise, there would be no need for
step two of the Alice inquiry. Alice, 134 S. Ct. at 2355.
Therefore, for at least the aforementioned reasons, we agree with the
Examiner that claim 1 recites abstract ideas, which we conclude are mental
processes and certain methods of organizing human activity (e.g.,
commercial interactions).
Step 2A—Prong 2 (integration into Practical Application) 2
Under the Revised Guidance, we now must determine if additional
elements in the claims integrate the judicial exception into a practical
application (see MPEP § 2106.05(a)–(c), (e)–(h)). Here, we discern no
additional element (or combination of elements) recited in Appellant’s
claims that integrate(s) the judicial exception into a practical application.
See 84 Fed. Reg. at 54–55.
For example, Appellant’s additional elements (i.e., “one or more
servers” and “mobile devices” recited in claims 1, 8, 14, and 18) do not (1)
improve the functioning of a computer or other technology, (2) are not
applied with any particular machine (except for generic computer
components), (3) do not effect a transformation of a particular article to a
different state, and (4) are not applied in any meaningful way beyond

2 We acknowledge that some of the considerations at Step 2A, Prong 2,
properly may be evaluated under Step 2 of Alice (Step 2B of the Office
revised guidance). For purposes of maintaining consistent treatment within
the Office, we evaluate them under Step 1 of Alice (Step 2A of the Office
revised guidance). See Revised Guidance, 84 Fed. Reg. at 55 n.25, 27–32.

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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). Appellant argues (1) “the claims at issue here
recite technical features that use information and data structures such as
electronic calendars to predict future locations of users and enable
applications to be mapped to locations” and, as such, (2) provide “the
claimed solution [] rooted in Internet technology.” Appeal Br. 16–17. We
do not agree. Although the claimed invention additionally recites one or
more servers, electronic calendars, a bidding platform, and mobile devices
utilizing pop-up windows, we disagree with Appellant that “the claimed
solution is rooted in Internet technology.” See Appeal Br. 17.
At the outset, we note the recited “providing . . . via a bidding
platform” and “providing by the one or more servers a notification . . . for
presentation in a pop-up window” steps of claim 1 are insignificant extra-
solution activity. Additionally, the “tracking” step, i.e., “ascertaining . . .
upon signals received from mobile devices,” is also an insignificant extra-
solution activity. Furthermore, Appellant fails to identify how the tracking
process is improved. Instead, the claimed invention merely limits the
tracking information to signals from mobile devices of the users. While this
limited scope may benefit the vendor in providing more targeted
information, the claimed invention does not describe any technical
improvement in collecting or analyzing the data or in the prior art tracking
process.
These pre- and post-solution steps—even when performed over a
computer network via communications between client and server
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computers—are insufficient to integrate the judicially excepted steps into a
practical application. See Alice, 573 U.S. at 224 (“use of a computer to
create electronic records, track multiple transactions, and issue simultaneous
instructions” is not an inventive concept). Furthermore, courts have found
data gathering steps to be insignificant extra-solution activity. See, e.g., In
re Bilski, 545 F.3d 943, 963 (Fed. Cir. 2008) (en banc), aff'd sub nom Bilski
v. Kappos, 561 U.S. 593 (2010). The Supreme Court guides that the
“prohibition against patenting abstract ideas ‘cannot be circumvented by
attempting to limit the use of the formula to a particular technological
environment’ or [by] adding ‘insignificant postsolution activity.”’ Bilski v.
Kappos, 561 U.S. at 610–11 (quoting Diehr, 450 U.S. at 191-92).
Appellant also contends that (1) “the claims at issue are directed to a
particular manner of generating mappings between applications and
locations so that pop-up applications may be provided via mobile devices,”
and, as such, (2) like the claims in Core Wireless Licensing S.A.R.L. v. LG
Electronics, Inc., 880 F.3d 1356 (Fed. Cir. 2018), “the claims at issue are
directed to specific implementations” of “a pop-up window via the mobile
devices” recited in claims 1, 8, and 18. Appeal Br. 17–19.
We do not agree. As recognized by the Examiner, “the ‘pop-up’
notification is nothing more than an existing technique for displaying
information that is employed to present an advertisement for the mapped
mobile device application indication. Ans. 5. As such, Core Wireless is not
applicable because the claims in Core Wireless are directed to an improved
user interface for computing devices, in which “an application summary that
can be reached directly from the menu,” specify a particular manner by
which the summary window must be accessed and a specific manner of
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displaying a limited set of information to the user, resulting in “an improved
user interface for electronic devices,” whereas Appellant’s claims only use a
generic pop-up window to notify information.
Although Appellant also contends that “the claimed invention is a
technological improvement to mobile technology” (see Appeal Br. 23),
Appellant does not direct our attention to anything in the Specification to
indicate that the invention provides an improvement in the technical
functionality of mobile technology. In contrast, the claims at issue in Enfish
were directed to a specific type of data structure, i.e., a self-referential table
for a computer database, designed to improve the way a computer carries out
its basic functions of storing and retrieving data. See Enfish, LLC v.
Microsoft Corp., 822 F.3d 1327, 1335–36 (Fed. Cir. 2016). There, in
rejecting a § 101 challenge, the court held that “the plain focus of the claims
is on an improvement to computer functionality itself, not on economic or
other tasks for which a computer is used in its ordinary capacity.” Id. at
1336.
The present case is different from Enfish because the focus of the
claims here is not on an improvement in mobile device technology or upon
an innovative way to use mobile devices, but is focused on an abstract idea
that uses generic and routine mobile devices as tools; that abstract idea being
collecting locations associated with calendar entries and processing location
data relating to mobile devices, and mapping applications to said locations.
That is, here the arguably innovative technique of the appealed claims is
inextricably a part of the abstract idea of manipulating data itself to decide
which targeted advertisements to provide. Moreover, nothing in the claims,
understood in light of the Specification, requires anything other than off-the-
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shelf electronic calendars and conventional mobile devices used for
collecting and processing/analyzing various information/data. Therefore, we
agree with the Examiner that, unlike Enfish, the claims are directed not to
improvement in mobile device capabilities, but to the results of applying an
abstract idea. See Ans. 4.
Additionally, in McRO, the Federal Circuit concluded that the claim,
when considered as a whole, was directed to a “technological improvement
over the existing, manual 3-D animation techniques” through the “use of
limited rules specifically designed to achieve an improved technological
result in conventional industry practice.” McRO, Inc. v. Bandai Namco
Games Am. Inc., 837 F.3d 1299, 1316 (Fed. Cir. 2016). Specifically, the
Federal Circuit found that the claimed rules allow computers to produce
accurate and realistic lip synchronization and facial expressions in animated
characters that previously could only be produced by human animators; and
the rules are limiting because they define morph weight sets as a function of
phoneme sub-sequences. Id. at 1313 (citations omitted).
In contrast, here, Appellant has not identified any analogous
improvement attributable to the claimed invention. Although providing
information based at least in part on a determined location of the user may
improve a business process, it does not achieve an improved technological
result. We see no parallel between the limiting rules described in McRO and
the results-based rules recited in Appellant’s claims.
For at least the reason noted supra, we determine that claim 1
(1) recites a judicial exception and (2) does not integrate that exception into
a practical application. Thus, representative claim 1 is directed to the
aforementioned abstract ideas.
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Alice/Mayo—Step 2 (Inventive Concept)
Step 2B identified in the Revised Guidance
Turning to the second step of the Alice inquiry, we now look to
whether claim 1 contains any “inventive concept” or adds anything
“significantly more” to transform the abstract concept into a patent-eligible
application. Alice, 573 U.S. at 216. As recognized by the Revised
Guidance, an “inventive concept” under Alice step 2 can 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; see MPEP § 2106.05(d).
Appellant contends “the Examiner has withdrawn the rejection of the
claims over the prior art . . . Therefore, Appellant submits that the claims
include an inventive concept that is neither routine nor conventional.”
Appeal Br. 23.
We find no element or combination of elements recited in Appellant’s
claim 1 that contains any “inventive concept” or adds anything “significantly
more” to transform the abstract concept into a patent-eligible application.
Appellant has not adequately explained how claim 1 is performed such that
it is not a routine and conventional function of a generic computer. For
example, Appellant’s Specification explicitly indicates that “general purpose
microprocessors” may be utilized. See Spec. ¶ 114. See Berkheimer v. HP
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Inc., 881 F.3d 1360, 1369 (Fed. Cir. 2018) (“Whether something is well-
understood, routine, and conventional to a skilled artisan at the time of the
patent is a factual determination.”).
Furthermore, even if the Examiner has withdrawn any prior art
rejections, a finding of novelty or non-obviousness does not require the
conclusion that the claimed subject matter is patent-eligible. Although the
second step in the Mayo/Alice framework is termed a search for an
“inventive concept,” the analysis is not an evaluation of novelty or
nonobviousness, but, rather, is a search for “an element or combination of
elements that is ‘sufficient to ensure that the patent in practice amounts to
significantly more than a patent upon the [ineligible concept] itself.”’ Alice,
573 U.S. at 216. “Groundbreaking, innovative, or even brilliant discovery
does not by itself satisfy the § 101 inquiry.” Ass’n. for Molecular Pathology
v. Myriad Genetics, Inc., 569 U.S. 576, 591 (2013). A novel and non-
obvious claim directed to a purely abstract idea is, nonetheless, patent-
ineligible. See Mayo, 566 U.S. at 90. See also Diamond v. Diehr, 450 U.S.
175, 188–89 (1981) ( “The ‘novelty’ of any element or steps in a process, or
even of the process itself, is of no relevance in determining whether the
subject matter of a claim falls within the § 101 categories of possibly
patentable subject matter.”).
Because Appellant’s independent claim 1 is directed to a patent-
ineligible abstract concept, does not include additional elements that
integrate the judicial exception into a practical application, and does not add
a specific limitation beyond the judicial exception that is not “well-
understood, routine, and conventional,” we sustain the Examiner’s rejection
of claims 1, 3–10, 12–14, 16–24, 26, 27, 29, and 31–35 under 35 U.S.C.
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§ 101 as being directed to non-statutory subject matter in light of Alice, its’
progeny, and the Revised Guidance.

CONCLUSION
The Examiner’s rejection of claims 1, 3–10, 12–14, 16–24, 26, 27, 29,
and 31–35 under 35 U.S.C. § 101 is affirmed.

In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 3–10, 12–14,
16–24, 26, 27,
29, 31–35
101 Eligibility 1, 3–10, 12–
14, 16–24, 26,
27, 29, 31–35

No period for taking any subsequent action in connection with this
appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED