Muench, Theresa et al.

Patent Trials and Appeals Board

Jan 23, 2020

14706055 - (D) (P.T.A.B. Jan. 23, 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.
14/706,055 05/07/2015 Theresa Muench 13839 5903
27752 7590 01/23/2020
THE PROCTER & GAMBLE COMPANY
GLOBAL IP SERVICES
CENTRAL BUILDING, C9
ONE PROCTER AND GAMBLE PLAZA
CINCINNATI, OH 45202
EXAMINER
BROWN, LUIS A
ART UNIT PAPER NUMBER
3682
NOTIFICATION DATE DELIVERY MODE
01/23/2020 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):
centraldocket.im@pg.com
mayer.jk@pg.com
pair_pg@firsttofile.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte THERESA MUENCH, ANDREA NOLTING, and
SUNDAR G. RAMAN
____________________

Appeal 2019-000629
Application 14/706,055
Technology Center 3600
____________________

Before ALLEN R. MacDONALD, BRADLEY W. BAUMEISTER and
NABEEL U. KHAN, Administrative Patent Judges.

Opinion for the Board filed by Administrative Patent Judge MacDONALD.

Opinion Concurring filed by Administrative Patent Judge BAUMEISTER.

MacDONALD, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–7. Appellant has cancelled claims 8–
14. Final Act. 2. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 Appellant identifies the real parties in interest as The Procter & Gamble
Company of Cincinnati, Ohio. Appeal Br. 1.
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CLAIMED SUBJECT MATTER
Claim 1 is illustrative of the claimed subject matter (emphasis,
formatting, and bracketed material added):
1. A method for structuring the content of an advertisement for
a product or service, the method comprising steps of:
[A.] providing a first advertisement associated with a
primary product or service, and comprising message
copy and a message copy timeline;
[B.] providing a second advertisement comprising a
message track;
[C.] inserting the secondary advertisement into the first
advertisement;
[D.] presenting the combined first and second
advertisement;
[E.] wherein the second advertisement is inserted into the
first advertisement message copy time line as2 or
after the expression of a portion of the first
advertisement message copy relevant to the second
advertisement message track.
REFERENCES3
The Examiner relies upon the following prior art:
Name Reference Date
Billmaier US 2004/0003406 A1 Jan. 1, 2004
Briggs US 8,312,486 B1 Nov. 13, 2012

2 For purposes of this appeal, we read this “as” as –at–.
3 All citations herein to patent and pre-grant publication references are by
reference to the first named inventor only.
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REJECTIONS
A.
The Examiner rejects claims 1–7 under 35 U.S.C. § 101 “because the
claimed invention is directed to non-statutory subject matter.” (Final Act. 4),
i.e., the claimed invention is directed to patent-ineligible subject matter.
Final Act. 4–7.
We select claim 1 as the representative claim for this rejection.
Appellant does not argue separate patentability for claims 2–7. Appeal
Br. 3–4. Except for our ultimate decision, we do not address the § 101
rejection of claims 2–7 further herein.
B.
The Examiner rejects claims 1 and 2 under 35 U.S.C. § 112(a) as
failing to comply with the written description requirement. Final Act. 2–4.
We select claim 1 as the representative claim for this rejection.
Appellant does not argue separate patentability for claim 2. Appeal Br. 2–3.
Except for our ultimate decision, we do not address the § 112(a) rejection of
claim 2 further herein.
C.
The Examiner rejects claims 1–3 under 35 U.S.C. § 103 as being
unpatentable over the combination of Billmaier and Briggs. Final Act. 7–9.
We select claim 1 as the representative claim for this rejection. Appellant
does not argue separate patentability for claims 2 and 3. Appeal Br. 4–5.
The Examiner rejects claims 4–7 under 35 U.S.C. § 103 as being
unpatentable over various combinations of Billmaier, Briggs, and numerous
other references. Final Act. 9–13. To the extent that Appellant discusses the
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§ 103 rejections of claims 4–7, Appellant merely repeats the arguments
directed to claim 1. Appeal Br. 5–8. Such a repeated argument is not an
argument for “separate patentability.” Thus, Appellant does not present
separate arguments for claims 4–7. Thus, the rejections of these claims turn
on our decision as to claim 1.
Therefore, except for our ultimate decision, we do not address the
§ 103 rejections of claims 2–7 further herein.

OPINION
We have reviewed the Examiner’s rejections in light of Appellant’s
Appeal Brief and Reply Brief arguments.
A. Section 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 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. 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 Court’s two-part 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 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
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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” (Diamond v. Diehr, 450 U.S. 175, 191
(1981)); “tanning, dyeing, making waterproof 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
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. (citation omitted)
(citing Benson and Flook); see, e.g., id. at 187 (“It is now commonplace that
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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 (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 § 101 Guidance
The U. S. Patent and Trademark Office (USPTO) published revised
guidance on the application of § 101. USPTO’s January 7, 2019
Memorandum, 2019 Revised Patent Subject Matter Eligibility Guidance, 84
Fed. Reg. 50 (“2019 Memorandum”).4 Under that guidance, we first look to
whether the claim recites:

4 The Office issued a further memorandum on October 17, 2019 (the
“October 2019 Memorandum”) clarifying guidance of the January 2019
Memorandum in response to received public comments. See https://
www.uspto.gov/sites/default/files/documents/peg_oct_2019_update.pdf.
Moreover, “[a]ll USPTO personnel are, as a matter of internal agency
management, expected to follow the guidance.” January 2019 Memorandum
at 51; see also October 2019 Memorandum at 1.
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(1) (see 2019 Memorandum Step 2A – Prong One) 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) (see 2019 Memorandum Step 2A – Prong Two) additional
elements that integrate the judicial exception into a practical
application (see MPEP § 2106.05(a)–(c), (e)–(h)).5
2019 Memorandum Steps 2A, B, 84 Fed. Reg. 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, conventional” in the field (see MPEP
§ 2106.05(d)); or
(4) simply appends well-understood, routine, conventional activities
previously known to the industry, specified at a high level of
generality, to the judicial exception.
See 2019 Memorandum Step 2B, 84 Fed. Reg. 56.

5 This evaluation is performed by (a) identifying whether there are any
additional elements recited in the claim beyond the judicial exception, and
(b) evaluating those additional elements individually and in combination to
determine whether the claim as a whole integrates the exception into a
practical application. See 2019 Memorandum - Section III(A)(2).
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C. Examiner’s § 101 Rejection - Alice/Mayo - Steps 1 and 2
C.1. 2019 Memorandum Step 2A – Prong One
Applying the Alice/Mayo analysis, the Examiner determines that
claim 1 recites an abstract idea:
The claims are directed to the abstract idea of inserting a
second advertisement into a first advertisement and providing the
combined advertisement. The claimed concept is similar to that
found to be patent ineligible in the Intellectual Ventures [v.]
Capital One Bank (the ’382 patent) decision, in which content is
tailored to a user based on information about the user. Similarly,
the claimed invention simply combines two advertisements
based on an association between the two advertisements and then
targets them to a user device.
Final Act. 4 (emphasis added).
C.2. 2019 Memorandum Step 2A – Prong Two
Further applying the Alice/Mayo analysis, the Examiner determines
claim 1 is directed to an abstract idea.
The claims are truly directed to an “idea of itself” as there
is no mention of a computer or other device performing
any of the claim steps at all and the applicant’s
specification also recites no structure at all for any aspect
of the invention.
Final Act. 4–5.
When considered as an ordered combination, the examiner
sees only the logical steps necessary to carry out the
abstract idea, namely to provide advertisement data, insert
one data set into the other at a chosen location, and then
deliver and present the combined data to a device.
Final Act. 6.
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C.3. 2019 Memorandum Step 2B
Applying the Alice/Mayo analysis, the Examiner determines:
The claims beyond the abstract idea include providing of
a first and second advertisement that include message
copy, message timeline, and message track data. The
providing step is assumed to be providing of the
advertisement data to editing software for subsequent
editing to insert one ad into the other for subsequent
completion and then delivery to a user device. Such a
providing step is considered conventional “receiving
and/or transmission of data over a network” is listed on
page 7 of the USPTO July 2015 Update for Subject Matter
Eligibility as an example of computer functioning that is
considered “well-understood, routine, and conventional,"
citing Ultramercial and buySAFE v Google. The claims
also include the placement of the second advertisement
being placed at a point relevant to the second
advertisement. However, such an insertion is simply an
editing decision and simply automates a mental task using
software or pen and paper. Such a step does not make the
claims significantly more, as the claim steps still simply
“automates a mental task,” which is also listed on page 7
of the USPTO July 2015 Update for Subject Matter
Eligibility as an example of computer functioning that is
considered “well-understood, routine, and conventional,”
citing Alice and buySAFE v Google.
Final Act. 5–6.
D. Appellant’s § 101 Arguments & Panel’s Analysis
D.1. 2019 Memorandum Step 2A, Prong 1
Appellant does not dispute that the claims recite “the abstract idea of
inserting a second advertisement into a first advertisement and providing the
combined advertisement.” Final Act. 4; see Appeal Br. 3–4.
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We determine that claim 1 recites a “method for structuring the
content of an advertisement for a product or service,” including the
following limitations:
[A.] providing a first advertisement associated with a
primary product or service, and comprising message copy and a
message copy timeline;
[B.] providing a second advertisement comprising a
message track;
[C.] inserting the secondary advertisement into the first
advertisement;
[D.] presenting the combined first and second
advertisement;
[E.] wherein the second advertisement is inserted into the
first advertisement message copy time line as or after the
expression of a portion of the first advertisement message copy
relevant to the second advertisement message track.
Claim 1 (emphasis, formatting, and bracketed material added).
In short, the Examiner correctly determines that claim 1 recites a
method for creating a combined advertisement (i.e., a commercial
interaction); and a commercial interaction is one of certain methods of
organizing human activity identified in the 2019 Memorandum, and, thus, a
recognized abstract idea. 2019 Memorandum, 84 Fed. Reg. at 52.
D.2. 2019 Memorandum Step 2A, Prong 2
Having determined that claim 1 recites a recognized abstract idea, we
now turn to whether claim 1 is directed to that abstract idea, or instead
integrates the judicial exception into a practical application.
Appellant contends:
The Office Action inappropriately trivializes
Appellant’s claimed method by choosing to describe the
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claimed methods while neglecting to include all aspects of
the method in the description.
. . .
The Office Action sets forth simply inserting a
second advertisement into a first advertisement and
providing the combined advertisement. Lost are the
requirements that the first advertisement comprise
message copy and a message copy timeline, that the
second advertisement comprise a message track and that
the second advertisement be inserted into the first
advertisement timeline [at] or after the expression of a
portion of the fi[r]st advertisement message copy relevant
to the second advertisement message track. Each of the
aforementioned items comprises significantly more than
an abstraction and renders the claim patentable as a
tangible method.
Appeal Br. 3–4 (emphasis added).
Appellant’s argument is not persuasive. We disagree with Appellant’s
contention that the aforementioned items are significantly more than an
abstraction.6 Contrary to Appellant’s position, Appellant’s aforementioned
items are instead merely details of the abstraction itself. These items set
forth the informational content and informational relationship of the
advertising. For example, we determine that Appellant’s “wherein” clause
does not set forth an additional element, but rather sets forth a part of the
abstract idea of inserting a first advertisement into a second advertisement.

6 To the extent that the Examiner goes through extra steps to analyze the
aforementioned elements as additional elements beyond the abstract idea,
that analysis is unnecessary.
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The “wherein” clause merely states the abstract informational relationship of
the first and second advertisements.
We determine under prong 2 that claim 1 contains no additional
elements beyond the abstract idea. Therefore, when the claim is evaluated
as a whole, the claim contains nothing that could integrate the judicial
exception into a practical application of that exception.
We conclude that claim 1 does not integrate the judicial exception into
a practical application. We determine claim 1 does not recite:
(i) an improvement to the functioning of a computer;
(ii) an improvement to another technology or technical field;
(iii) an application of the abstract idea with, or by use of, a
particular machine;
(iv) a transformation or reduction of a particular article to a
different state or thing; or
(v) other meaningful limitations beyond generally linking the
use of the abstract idea to a particular technological
environment.
See MPEP §§ 2106.05(a)–(c), (e)–(h). We determine that claim 1 is directed
to a judicial exception, and does not integrate the judicial exception into a
practical application.
D.3. 2019 Memorandum Step 2B
Appellant contends:
The Office Action also fails to provide any reference
supporting the contention that the precise insertion of the
second advertisement into the first based upon a relation
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in content between the first message copy and second
message track is in any way conventional or well known.
Appeal Br. 4 (emphasis added).
Appellant’s argument is not persuasive. The “well-understood,
routine, conventional” analysis is required to evaluate whether the additional
elements beyond the abstract idea are such that individually or in
combination (the claim as a whole) they provide an inventive concept.
As discussed supra, we determine under prong 2 that claim 1 contains no
additional elements beyond the abstract idea. Therefore, as there are no
additional elements, no reference is required to show they are well-
understood, routine, or conventional.
We determine that beyond the abstract idea, the claims do not recite:
(vi) a specific limitation other than what is well-understood,
routine, conventional activity in the field or
unconventional steps that confine the claim to a particular
useful application.
See MPEP § 2106.05(d).
E. § 112(a)
E. 1.
An original claim may lack written description support when
(1) the claim defines the invention in functional language
specifying a desired result but the disclosure fails to sufficiently
identify how the function is performed or the result is achieved
or (2) a broad genus claim is presented but the disclosure only
describes a narrow species with no evidence that the genus is
contemplated. See Ariad Pharms., Inc. v. Eli Lilly & Co., 598
F.3d 1336, 1349-50 (Fed. Cir. 2010) (en banc).
MPEP § 2163.03 V.
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E. 2.
The Examiner rejects claim 1 under 35 U.S.C. § 112(a) as failing to
comply with the written description requirement.
[C]laim[ 1] recite[s] “wherein the second advertisement is
inserted into the first advertisement message copy timeline as or
after the expression of a portion of the first advertisement
message copy relevant to the second message track.” Generic
claim language in the original disclosure does not satisfy the
written description requirement if it fails to support the scope of
the genus claimed. The specification only recited an ipsis verbis
of the claim language, but gives no description of how this would
be carried out.
Final Act. 2–3.
E. 3
Appellant raises the following argument in contending that the
Examiner erred in rejecting claim 1 under 35 U.S.C. § 112(a).
Page 2, line 4, page 5, line 10 [of the Specification]
disclose in detail how the message copy of the first advertisement
and the message track of the second advertisement may each be
characterized such that the second advertisement may be inserted
into the first advertisement at a point as or after a portion of the
first advertisement message copy relevant to the message track
of the second advertisement. The act of inserting one set of
graphic elements into another set of graphic elements is well
known and needs no further disclosure that to provide that
conventional editing software may be used to accomplish the
task. The method relates to determining when to insert the
second advertisement and subsequently doing so, not to a new
editing process.
Appeal Br. 2–3 (emphasis added).
Appellant’s argument is not persuasive because Appellant does not
address the rejection made by the Examiner. Appellant’s argument only
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addresses generic inserting, not the specific inserting, as claimed and
rejected. The Examiner’s rejection highlights concern with the specific
claim requirement of “relevant to the second track” as a precondition for the
inserting. We agree with the Examiner that the Specification “gives no
description of how this would be carried out.” Final Act. 3.
F. § 103
Appellant raises the following argument in contending that the
Examiner erred in rejecting claim 1 under 35 U.S.C. § 103.
A rejection under 35 USC §103 requires that the cited
combination of references disclose each limitation of the
invention as set forth in the claims. In the instant case, the cited
combination of references fails to disclose the claimed limitation
that the second advertisement is inserted into the first
advertisement message copy timeline as or after the expression
of a portion of the first advertisement message copy relevant to
the second advertisement message track.
Appellant defines [Spec. 5] message track as: the theme,
or summary, of the overall message which the advertiser seeks to
convey using the message-copy. None of the portions of the
cited references relates the insertion of the second advertisement
into the first advertisement as or after first advertisement
message copy relevant to the second advertisement message
track. Theme, summary and overall theme of the second
advertisement are not consideration of the methods of the cited
references.
Appeal Br. 4–5 (emphasis added).
Appellant’s arguments are not persuasive because Briggs at column 1,
lines 49–66, and column 4, lines 6–20, teaches that theme is a consideration
of the method of Briggs. Briggs uses a cue point in a first content to request
a specific second content (a specific advertisement) from storage. We deem
the cue point name to be a theme as the message track is defined by
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Appellant. Cue point names include examples such as “soda can” or “pizza
box,” which are part of the request and describe the theme of the ad to be
inserted. Further, the stored advertisement includes its cue point name in its
stored metadata.
We determine that nothing more is required by claim 1 than what is
taught by Briggs.
CONCLUSION
The Examiner has not erred in rejecting claims 1–7 under 35 U.S.C.
§ 101 as being directed to patent ineligible subject matter.
The Examiner has not erred in rejecting claims 1 and 2 under
35 U.S.C. § 112(a) as failing to comply with the written description
requirement.7
The Examiner has not erred in rejecting claims 1–7 as being
unpatentable under 35 U.S.C. § 103.
The Examiner’s rejections of claims 1–7 as being unpatentable under
35 U.S.C. § 101 is affirmed.
The Examiner’s rejections of claims 1 and 2 as being unpatentable
under 35 U.S.C. § 112(a) is affirmed.
The Examiner’s rejections of claims 1–7 as being unpatentable under
35 U.S.C. § 103 is affirmed.

7 Although the Examiner’s 35 U.S.C. § 112(a) rejection of claim 1 is equally
applicable to all its dependent claims, we do not extend the Examiner’s
§ 112(a) rejection to claims 3–7 (in a new ground of rejection) because we
affirm the § 101 and § 103 rejections herein.
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DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–7 101 Eligibility 1–7
1, 2 112(a) Written Description 1, 2
1–7 103 Billmaier, Briggs 1–7
Overall
Outcome

1–7
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

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BAUMEISTER, Administrative Patent Judge, Concurring.

I agree with the Majority’s determinations and reasoning relating to
the affirmances of the rejections under 35 U.S.C. §§ 101 and 103. The
propriety of the Examiner’s written-description rejection under § 112(a),
though, is dubious. If the claims are to be rejected under § 112 at all, it
might be more appropriate to reject the claims under § 112(b) as indefinite
because I question whether it is reasonably clear what it means for the
portions to the first advertisement message copy to be “relevant to the
second advertisement message track.” But I will not reach this further issue
because the examiner did not issue an indefiniteness rejection, and it is
sufficient that the Panel sustains the other two rejections. See Ex Parte Frye,
94 USPQ2d 1072, 1075 (BPAI 2010) (precedential) (explaining that the
Board reviews the appealed rejections for error based upon the issues
identified by Appellant, and in light of the arguments and evidence produced
thereon); see also Beloit Corp. v. Valmet Oy, 742 F.2d 1421, 1423 (Fed. Cir.
1984) (indicating an agency (e.g., the ITC) can decide a single dispositive
issue of numerous issues resolved by the presiding officer and that there is
no need for the Commission to decide all issues decided by the presiding
officer).