Navar, Murgesh et al.

Patent Trials and Appeals Board

May 4, 2020

2019005295 (P.T.A.B. May. 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.
13/550,563 07/16/2012 Murgesh Navar TE2-016 1015
138557 7590 05/04/2020
Polsinelli LLP - TE2
3 Embarcadero Center
Suite 2400
San Francisco, CA 94111
EXAMINER
WINTER, JOHN M
ART UNIT PAPER NUMBER
3685
NOTIFICATION DATE DELIVERY MODE
05/04/2020 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):
sfpatent@polsinelli.com
uspt@polsinelli.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte MURGESH NAVAR and GEORGE MCMULLEN

Appeal 2019-005295
Application 13/550,563
Technology Center 3600

Before CARL W. WHITEHEAD JR., DAVID M. KOHUT, and
IRVIN E. BRANCH, Administrative Patent Judges.

BRANCH, Administrative Patent Judge.

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–22. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.

1 We use “Appellant” to reference the applicant as defined in
37 C.F.R. § 1.42. Appellant identifies the real party in interest as “Blazer
and Flip Flops, Inc. dba The Experience Engine.” Appeal Br. 3.
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APPELLANT’S INVENTION
According to Appellant: “The present invention generally concerns
social marketing . . . [and] particularly relates to a customer loyalty and
gifting application.” Spec. ¶ 2. Claim 1, reproduced below with added
emphases, is illustrative of the claimed subject matter.
1. A method for tailored messaging, the method
comprising:
receiving, from a first mobile computing device, a location of
the first mobile computing device as identified via a
positioning receiver of the first mobile computing device;
storing a business location associated with a business;
receiving a preference indicator associated with a first user of
the first mobile computing device, the preference indicator
indicative of a preference of the first user;
executing instructions stored in memory, wherein execution
of the instructions by a processor causes the processor to:
identify that the location of the first mobile computing
device is within a specified distance of the business
location associated with the business, and
generate an offer associated with the business that is
tailored to the first user by selecting a particular product
of a plurality of products associated with the business
based on the preference indicator and by selecting a
discount for the particular product;
transmitting the offer to the first mobile computing device
automatically in response to identifying that the location of the
first mobile computing device is within the specified distance
from the business location;
receiving an acceptance of the offer via a network interface,
wherein the acceptance of the offer indicates completion of a
purchase of the particular product from the business in
accordance with the offer; and
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transmitting a reward to the first mobile computing device in
response to receipt of the acceptance of the offer via the
network interface.
Appeal Br., Claims Appendix.
REJECTIONS
Claims 1–22 stand rejected under 35 U.S.C. § 101 as being directed to
a judicial exception. Ans. 3–5; Final Act. 2–4.
Claims 1–22 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Allos (US 7,912,751 B1; Mar. 22, 2011), Flake
(US 2008/0005104 A1; Jan. 3, 2008), and Scofield (US 9,516,470 B1;
Dec. 6, 2016). Ans. 5–6; Final Act. 5–11.
35 U.S.C. § 101 REJECTION OF
CLAIMS 1–22
For the § 101 rejection, Appellant argues claims 1–22 as a group.
Appeal Br. 9. We select claim 1 as representative. 37 C.F.R.
§ 41.37(c)(1)(iv). For the following reasons, we are unpersuaded of error in
this rejection of claim 1 and accordingly sustain this rejection of claims 1–
22.
Principles of Law
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” 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 Supreme Court’s two-step framework, described in Mayo
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and Alice. Alice, 573 U.S. 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 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 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 (1876))).
In Diehr, the claim at issue recited a mathematical formula, but the
Supreme 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 Supreme Court also indicated that a claim “seeking patent
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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 an application of a law of nature or mathematical
formula to a known structure or process may well be deserving of patent
protection.”).
If the claim is “directed to” an abstract idea, we turn to the second
step of the Alice and Mayo framework, where “we must examine the
elements of the claim to determine whether it contains an ‘inventive
concept’ sufficient to ‘transform’ the claimed abstract idea into a
patent-eligible application.” Alice, 573 U.S. at 221 (internal 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.
PTO Guidance
The PTO provides guidance for 35 U.S.C. § 101. USPTO’s 2019
Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7,
2019) (“Guidance”).2 Under the Guidance, we first look to whether the
claim recites:

2 The Answer was mailed after the Guidance’s publication. Because the
Guidance revises examination for patent-eligibility (84 Fed. Reg. at 50), we
take the Answer as incorporating only the Final Action’s statements that are
material under the Guidance. See also 37 C.F.R. § 41.39(a)(1) (“An
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(1) any judicial exceptions, including certain groupings of
abstract ideas (i.e., mathematical concepts, certain methods of
organizing human activity such as a fundamental economic
practice, and mental processes); and
(2) additional elements that integrate the judicial exception into
a practical application (see Manual of Patent Examining
Procedure (MPEP) §§ 2106.05(a)−(c), (e)−(h) (9th ed. 2018)).
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
conclude the claim is directed to a judicial exception (id. at 54) and 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.
Id. at 56.
Step 1: Does Claim 1 Fall within a Statutory Category?
There is no dispute that the claimed subject matter falls within a
35 U.S.C. § 101 category of patentable subject matter. See Guidance,
84 Fed. Reg. at 53−54 (“Step 1”).

examiner’s answer is deemed to incorporate all of the grounds of rejection
set forth in the Office action from which the appeal is taken.”).
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Step 2A(1):3 Does Claim 1 Recite Any Judicial Exceptions?
We agree with the Examiner that claim 1 recites judicial exceptions.
See October 2019 Patent Eligibility Guidance Update at 1 (meaning of
“describe”), available at https://www.uspto.gov/sites/default/files/
documents/peg_oct_2019_update.pdf; see also 84 Fed. Reg. 55942 (Oct. 18,
2019) (notifying the public of the Guidance Update). Specifically, we agree
the unemphasized limitations of reproduced claim 1 (supra 2–3) recite a
process of “providing a referral for a good or service” (Final Act. 4) that
includes “generating an offer based on a preference and a location . . . [and
constitutes] a certain method of organizing human activity” (Ans. 3). See
also Guidance 84 Fed. Reg. at 52 (“[c]ertain methods of organizing human
activity” including “commercial . . . interactions” such as “advertising,
marketing or sales activities”). We also agree the unemphasized limitations

3 The Guidance separates the enumerated issues (1) to (4) (see supra 6–7)
into the following Steps 2A(1), 2A(2), and 2B:
The [revised] procedure . . . focuses on two aspects [of whether
a claim is “directed to” a judicial exception under the first step
of the Alice/Mayo test (USPTO Step 2A)]: (1) [w]hether the
claim recites a judicial exception; and (2) whether a recited
judicial exception is integrated into a practical application.
[W]hen a claim recites a judicial exception and fails to integrate
the exception into a practical application, . . . further analysis
pursuant to the second step of the Alice/Mayo test (USPTO
Step 2B) . . . is needed . . . in accordance with existing USPTO
guidance as modified in April 2018.
84 Fed. Reg. at 51 (referencing, via the omitted footnote, “USPTO
Memorandum of April 19, 2018, ‘Changes in Examination Procedure
Pertaining to Subject Matter Eligibility, Recent Subject Matter Eligibility
Decision (Berkheimer v. HP, Inc.)’ (Apr. 19, 2018), available at https://
www.uspto.gov/sites/default/files/documents/memo-berkheimer-
20180419.PDF [ . . . ‛USPTO Berkheimer Memorandum’]”).
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require “nothing [that] precludes the step[s] from practically being
performed in the mind.” Ans. 3; see also Guidance 84 Fed. Reg. at 52
(“[m]ental processes” including “observation [and] evaluation”).
We add that the unemphasized limitations also encompass the
long-standing activity of a broker. See Final Act. 4 (“providing a referral”).
For example, claim 1 reads on activities such as (claim language in
parentheses): a prospective customer (“first user”) contacts a professional
services broker having a record (“storing”), e.g., a Rolodex® or mental
recollection, of pertinent professionals and their respective specialties; the
customer states their location (“receiving . . . a location”) and needs
(“receiving a preference indicator”); the broker determines a professional of
suited location (“identify that the location . . . is within a specified distance
of the business location”), price (“selecting a discount for the particular
product”), and qualities (“selecting a particular product of . . . the business
based on the preference indicator”); the broker offers a contract for services
by the determined professional and in accordance with the customer’s needs
(“generate an offer associated with the business that is tailored to the first
user . . . [and] in response to identifying that the location . . . is within the
specified distance from the business location”); the customer accepts the
offer by making or promising payment (“receiving an acceptance of the offer
. . . indicat[ing] . . . purchase of the particular product . . . in accordance with
the offer”); and the broker thanks the customer (“transmitting a reward . . . in
response to receipt of the acceptance”).
For the foregoing reasons, claim 1 recites judicial exceptions.
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Step 2A(2): Are the Recited Judicial Exceptions
Integrated Into a Practical Application?
We agree with the Examiner that claim 1’s additional elements do not
integrate the recited judicial exceptions into a practical application. See
Guidance, 84 Fed. Reg. at 53 (describing a “practical application” as a
“meaningful limit on the [recited judicial exceptions], such that the claim is
more than a drafting effort designed to monopolize the [exceptions]”).
Specifically, we agree the emphasized limitations of reproduced claim 1
(supra 2–3) constitute additional elements of a mobile computing device,
processor, memory, and network interface. Ans. 3; Final Act. 4. We also
agree claim 1 recites both the mobile computing device’s providing of the
device’s location and first user’s preference indicator at a high-level of
generality. Ans. 3. We further agree claim 1 recites the processor, memory,
and network interface as performing functions routinely used in computer
applications. Final Act. 4.
We add the additional elements provide an ordered combination of
activities. All the claimed activities are performed by the mobile computing
device, processor, memory, network interface, and an unspecified entity
(e.g., performs the claimed storing). To simplify our analysis, we review
claim 1 as though the processor, memory, and unspecified entity are part
of a same server. See Spec. ¶16, Fig. 1. By this simplification (which is
encompassed by the claim scope), the mobile computing device identifies its
position via its positioning receiver and provides the server both the location
and preference indicator. The server stores a location of a business (e.g., of
many businesses), receives both the device’s location and preference
indicator, determines the device’s location is within a specified distance of
the business location, and generates an offer (for the first user) by selecting
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both a product of the business based on the preference indicator and a
discount for the product. The server then automatically transmits the offer to
the mobile computing device in response to determining the device is within
the specified distance of the business location, receives an acceptance of the
offer indicating a completed purchase of the product in accordance with the
offer, and transmits a reward to the mobile computing device in response to
the acceptance. The network interface passes the acceptance to the server
and passes the reward from the server to the mobile computing device.
We further add that claim 1’s labeling of the mobile computing device
as a “computing” device and the server as “executing instructions stored in
memory” is inconsequential because a mere instruction to implement a
process on a computer cannot impart patent-eligibility. Mortg. Grader,
Inc. v. First Choice Loan Servs. Inc., 811 F.3d 1314, 1322 (Fed. Cir. 2016)
(“[A]n abstract idea does not move into § 101 eligibility territory by merely
requiring generic computer implementation.”). Similarly, claim 1’s labeling
of the offer’s transmission as “automatic” is inconsequential because a mere
instruction to automate cannot impart patent-eligibility. See Amdocs (Isr.)
Ltd. v. Openet Telecom, Inc., 841 F.3d 1288, 1311 (Fed. Cir. 2016) (“[A]
claim cannot become eligible by reciting that physical automation is
accomplished by a machine or that logical automation is accomplished by a
computer.” (internal quotation marks omitted)). The claimed use of the
network interface is also inconsequential because it merely connects the
mobile computing device and server. See Mortg. Grader, 811 F.3d at 1324–
25 (“[T]he claims add only generic computer components such as an
interface, network, and database[, which] . . . do not satisfy the inventive
concept requirement.” (internal quotation marks omitted)). The remaining
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additional elements constitute an allocation of computer activities to a
client-server architecture, which is also inconsequential. See In re TLI
Commc’ns LLC Patent Litig., 823 F.3d 607, 612 (Fed. Cir. 2016) (stating the
combination of a generic telephone and connected server does not alone add
an inventive concept).
Of course, the particular allocations must be considered. We consider
them in view of MPEP §§ 2106.05(a)–(c) and (e)–(h). See Guidance
84 Fed. Reg. at 55, nn.25, 27–32 (citing each of these MPEP sections “for
more information concerning” the Guidance’s “exemplary considerations
. . . indicative [of] a practical application” (id. at 55)).4 For the below
reasons, parts (a)–(c) and (e)–(h) show the ordered combination of activities
does not integrate the identified judicial exceptions (supra 8–9) into a
practical application. We start with parts (f) and (g)—and (g) first—because
of their greater pertinence to claim 1.
MPEP § 2106.05(g) concerns “Insignificant Extra-Solution Activity.”
MPEP at 2100-67–69. Specifically, it concerns whether “the additional
elements add more than . . . activities incidental to the primary process or
product.” Id. at 2100-67. Having reviewed Appellant’s claim 1,
Specification, and arguments, we find no indication that claim 1’s additional
elements are more than incidental to the invention’s primary aim of
providing a “customer loyalty and gifting application that allows . . . users to
discover, purchase, and share offers from vendors and earn and redeem
rewards” (Spec. ¶ 2 (“field of the invention”)). And rather, we find the

4 Appellant should bear in mind that the parts (a)–(c) and (e)–(h) are not
intended to be separately dispositive. MPEP § 2106.05.I.A at 2100 46.
They are collectively considered.
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claimed allocation of activities to a client device and server is merely a
natural consequence of utilizing a client-server architecture—e.g., naturally
using the client device to enter a customer’s location and preferences and
using a server and database to access voluminous information (a database
describing businesses). See, e.g., Intellectual Ventures I LLC v. Erie
Indem. Co., 850 F.3d 1315, 1328–29 (Fed. Cir. 2017) (“particular data
source” example MPEP § 2106.05(g) at 2100-68)) (holding database is
“token post solution components” if a “natural consequence of carrying out
the abstract idea in a computing environment”). We also find the claimed
client-server architecture is analogous to MPEP § 2106.05(g)’s examples of
insignificant extra-solution activity inasmuch that the client device is used
only as a data gathering element (inputting the customer location and
preferences) and output element (implicitly displaying the offer and reward).
See MPEP § 2106.05(g) at 2100-68–69 (analogous examples include “obtain
input for an equation” (id. at 2100-68) and “printing or downloading
generated menus”).
MPEP § 2106.05(f) concerns “Mere Instructions To Apply An
Exception.” MPEP at 2100-63. Specifically, it concerns the “particularity
or generality of the application of the judicial exception.” Id. at 2100-66–67.
We address this consideration with reference to McRO, Inc. v. Bandai
Namco Games Am. Inc., 837 F.3d 1299 (Fed. Cir. 2016), which is twice
cited by MPEP § 2106.05(f) andthat addresses a patent-eligible software
implementation of an abstract idea (McRO, 837 F.3d at 1307, 1316).
Equating an abstract idea to a “result,” McRO held the claim patent-eligible
because it recites a “means” sufficiently specific to prevent preemption.
Id. at 1314. McRO explains:
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The preemption concern arises when the claims are not
directed to a specific invention and instead . . . abstractly cover
results where it matters not by what process or machinery the
result is accomplished. . . . We therefore look to whether the
claims in these patents focus on a specific means or method that
improves the relevant technology.
Id. (internal quotation marks and citations omitted). In holding the
claim overcame this concern, McRO identified a claimed means (“first set of
rules”) that applied unconventional data (“a keyframe at a point that no
phoneme is being pronounced,” i.e., at a “phoneme sub-sequence”) to the
abstract idea (use of “morph weights” to lip-synchronize animation) and
thereby prevented preemption of the abstract idea. Id. at 1306–07, 1309
(comparison of morph-weighting and invention’s specific morph-weighting),
1311 (claim interpretation emphasizing phoneme sub-sequences), 1314–15
(analysis emphasizing appointment of keyframes to phoneme
sub-sequences). Whereas the above “means” of McRO’s claim prevents
preemption of the recited abstract idea, we find no indication that claim 1’s
additional elements prevent preemption of the recited judicial exceptions.
And rather, there is a plain risk that claim 1 would preempt use of ubiquitous
client-server architectures to perform the judicially-excepted combination of
activities (i.e., to determine a prospective customer’s location and
preferences, find a proximate business, generate a discounted product offer
based on the preferences, provide the offer if/while the customer is
proximate to the business location, and then receive and reward purchase of
the product).
MPEP § 2106.05(a) concerns “Improvements to the Functioning of a
Computer or To Any Other Technology or Technical Field.” MPEP at
2100-50. Specifically, it concerns “whether the claim purports to improve
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computer capabilities or, instead, invokes computers merely as a tool.”
Id. at 2100-51–52. We find no indication that the invention improves
computer capabilities. And rather, we find the invention’s computer
technology merely allocates the recited judicial exceptions to a client device
and server.
MPEP § 2106.05(b) and (c) respectively concern use of a “Particular
Machine” and “Particular Transformation.” MPEP at 2100-54, 56
(transformation must be “of an article”). We find no indication that the
invention uses a particular machine or performs a particular transformation.
MPEP § 2106.05(e) concerns “Other Meaningful Limitations.”
MPEP at 2100-62. Specifically, it concerns whether the claim “limitations
[go] beyond generally linking the use of the judicial exception to a particular
technological environment.” Id. It also describes, as an example of
limitations falling short of this threshold, a “data processing system and
communications controllers . . . [that] merely linked the use of the abstract
idea to a particular technological environment[,] i.e., ‛implementation via
computers’.” Id. (citing Alice, 573 U.S. at 226). We find the claimed
additional elements likewise merely link the recited judicial exceptions to
data processing and communication, because the additional elements merely
allocate the judicially-excepted activities to a client device and server.
MPEP § 2106.05(h) concerns “Field of Use and Technological
Environment.” MPEP at 2100-69. Specifically, it concerns whether an
industry-specific claim limitation is “integrated into the claim” or rather
does “not alter or affect how the process steps . . . were performed.” Id. at
2100-70; see also Amdocs, 841 F.3d at 1311 (“The Pythagorean Theorem
cannot be made eligible by confining its use to existing surveying techniques
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[because] . . . such field-of-use limitations . . . describe only the context[,]
rather than the manner[,] of achieving a result.”). We find no indication that
claim 1’s industry-specific limitations alter how the invention performs the
claimed steps. For example, we find no difference between the claimed
storing of a business location, determining of a product accordant to
preferences, communicating of an acceptance and reward, etc., and how a
server would generally store, correlate, and communicate information.
For the foregoing reasons, claim 1 is directed to judicial exceptions—
not to a practical application.
Step 2B: Does Claim 1 Recite Anything That Is
Beyond the Recited Judicial Exceptions and Not a Well-Understood,
Routine, Conventional (“WURC”) Activity?
We agree Appellant’s Specification indicates the claimed uses of the
processor and network were well known in the art. Ans. 5 (citing
Spec. ¶ 19); see also Final Act. 3 (citing Spec. ¶¶ 19–20). We further agree
with the Examiner’s consideration of the other additional elements in view
of SiRF Tech., Inc. v. Int’l Trade Comm’n, 601 F.3d 1319 (Fed. Cir. 2010).
Ans. 4.
We add SiRF distinguished the at-issue claim’s specific GPS
determination—using a “pseudorange” (Ans. 4)—from conventional GPS
technology by describing conventional and unconventional aspects of GPS.
SiRF, 601 F.3d at 1322–23. By those descriptions, SiRF plainly shows
Appellant’s claim 1 recites a conventional use of the “position . . . receiver”
to report a position.
We further add, for the reasons expressed at Step 2A(2), the ordered
combination of judicial exceptions and additional elements adds
inconsequential features such as the client-server architecture and natural
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allocation of the claimed activities to the client device used by a customer
and server used by the business serving the customer. See supra 9–12; see
also In re TLI, 823 F.3d at 613 (mere combination of a telephone unit and
server was WURC); Bascom Glob. Internet Servs., Inc. v. AT&T Mobility
LLC, 827 F.3d 1341, 1349 (Fed. Cir. 2016) (mere combination of client
device, server, and Internet network is WURC). We find no indication, for
example, the claimed invention adds more than the ubiquitous client-server
functions of: entering and displaying customer-specific data at a client
device; and performing needed processing of voluminous information at a
server and its database.
For the foregoing reasons, the claimed combination of judicial
exceptions and additional elements consists of judicial exceptions and
merely appended WURC features.
Appellant’s Arguments
Appellant’s arguments are unpersuasive and do not show the
Examiner erred. See In re Piasecki, 745 F.2d 1468, 1472 (Fed. Cir. 1984)
(“[T]he burden of . . . [r]ebuttal is . . . a showing of facts supporting the
opposite conclusion.” (internal quotation marks omitted)). For example, the
arguments do not present evidence or reasoning that indicates: a
claim feature was wrongly identified as a judicial exception or WURC
activity; or a combination of claim features prevents preemption of the
recited judicial exceptions. Our above determinations address each of the
arguments. We address the principal arguments, below, for emphasis.
Appellant contends:
[Claim 1] employ[s] a new type of file—the generated offer—
that enables a messaging system to do things that it could not
do before, such as providing an offer tailored to a specific user
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through selection of a product based on preferences associated
with the user. In providing such tailored offers for different
users, messaging is tailored for different users much like the
claims in Finjan[, Inc. v. Blue Coat Sys., Inc., 879 F.3d 1299
(Fed. Cir. 2018)]. Finally, the Appellant’s claims recite specific
steps that accomplish this desired result like the claims in
Finjan.
Appeal Br. 9 (original emphases omitted); see also id. at 10 (“[Claim 1]
generate[s] new content—an offer tailored to a user.” (emphasis omitted)).
We are unpersuaded for each of two reasons.
First, tailoring information to a person’s preferences is an abstract
idea. See, e.g., Intellectual Ventures I LLC v. Capital One Bank (USA), 792
F.3d 1363, 1370 (Fed. Cir. 2015) (Tailoring an advertisement based on
demographics is a “fundamental … practice long prevalent in our system.”
(alteration in original)). Second, unlike Finjan’s patent-eligible claim,
Appellant’s argued claim features do not focus on “computer functionality
itself.” Finjan, 879 F.3d at 1304–05; see, e.g., id. at 1304 (“[A]
‘behavior-based’ virus scan . . . is distinguished from traditional,
‘code-matching’ virus scans . . . . The question, then, is whether this
behavior-based virus scan . . . constitutes an improvement in computer
functionality.”); see also supra 11–15 (discussion of MPEP §§ 2106.05(a)–
(c) and (e)–(h)).
Appellant contends: “SiRF concluded . . . a positioning receiver
imposes a ‘meaningful feature’ on the claims’ mathematical operations
. . . [and ‘]improve[s] an existing technology (global positioning) . . . to
extend the usefulness of the technology.’” Appeal Br. 9–10 (citing SiRF,
601 F.3d at 1332). Appellant further contends: “[T]he Examiner is
excluding the claimed mobile computing device from consideration in
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contravention of the 2019 Revised Guidance.” Reply Br. 8 (emphasis
omitted).
We are unpersuaded because, contrary to Appellant’s argument, SiRF
held the claimed invention included an unconventional GPS device and
thereby tied the abstract idea to a machine sufficiently specific to impose a
meaningful restriction. SiRF, 601 F.3d at 1332. Appellant’s claim 1 rather
recites a generic “positioning receiver” performing its WURC function of
merely identifying a location. Thus, in addressing SiRF, the Examiner
shows the claimed mobile computing device adds only WURC activity.
Appellant contends:
With regard to the second step of the 35 U.S.C. § 101
analysis, the Office Action states that “Official Notice is taken
that a processor, a network interface are well known in
transaction processes” and thus purportedly amount to
“[g]eneric computer components recited as performing generic
computer functions that are well-understood, routine and
conventional activities.” . . . Appellant now again respectfully
challenges the citation to Official Notice[.]
Appeal Br. 11 (citing Final Act. 4); 12 (emphasis omitted). We are
unpersuaded because the Examiner has twice provided support for the above
official notice. Final Act. 3 (citing Spec. ¶¶ 19–20); Ans. 5 (citing
Spec. ¶ 20).
Appellant contends: “Although the Examiner’s Answer characterizes
the claims as purportedly ‘cover[ing] an advertising process,’ no evidence
whatsoever is provided to support such contention. Reply Br. 7 (emphasis
omitted, alteration in original) (citing Ans. 3). We are unpersuaded because,
as discussed, claim 1 encompasses commercial interactions falling under the
Guidance’s judicial-exception categories—namely under “certain method[s]
of organizing human activity.” Supra 7–8. Further, there are plainly
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advertising aspects of the claimed invention and, more particularly, targeted
marketing aspects such as offering a product discount to the mobile
computing device’s user based on their location and rewarding a consequent
purchase.
Appellant contends: “Although the Examiner’s Answer . . . [states
‘]nothing in the claim element precludes the [mobile computing device’s]
step[s] from practically being performed in the mind,’ the human mind is
physically incapable of communicating with mobile devices.” Reply Br. 7
(quoting Ans. 3). We are unpersuaded because Appellant mischaracterizes
the Examiner’s finding. The Examiner’s contested statement is referencing
the Guidance’s instruction that, “[i]f a claim . . . 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.” 84 Fed. Reg. at 52 n.14 (citing Intellectual
Ventures I LLC v. Symantec Corp., 838 F.3d 1307, 1318 (Fed. Cir. 2016)).
The Examiner’s point is plainly that, but for claim 1 reciting some steps as
being performed by a mobile computing device and its position receiver, the
mobile device’s steps are mentally performable. We agree because, as an
example, people routinely determine and communicate their location and
preferences.
Appellant contends the Examiner has not shown the claimed
additional elements add only generic functions and WURC activity to the
invention. Reply Br. 8–12. We are unpersuaded because the Examiner has
provided SiRF and the Specification’s paragraphs 19 and 20 as evidence that
the claimed invention can be achieved by generic devices performing their
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generic functions and WURC activity. Final Act. 3; Ans. 4–5. Appellant
does not provide sufficient rebuttal evidence.
Appellant contends: “[The] mobile computing device, the positioning
receiver, the memory, the processor, and the network interface . . . are part
of an ordered arrangement used to perform the specifically claimed method
for geolocation-based tailoring of automated messages.” Reply Br. 10
(emphasis omitted). We are unpersuaded because the “ordered
arrangement” of these elements is simply the generic structure of
client-server architecture, whereby a client device connects through a
network interface to a server having a processor and memory (just as any
computer has). We find there is no indication that this ubiquitous
arrangement performs non-WURC computer activity in performing
“geolocation-based tailoring of automated messages.” Id.
35 U.S.C. § 103(a) REJECTION
OF CLAIMS 1–22
For the § 103(a) rejection, Appellant argues claims 1–22 as a group.
Appeal Br. 12–14. We select claim 1 as representative. 37 C.F.R.
§ 41.37(c)(1)(iv). For the following reasons, we are unpersuaded of error in
this rejection of claim 1 and accordingly sustain this rejection of claims 1–
22.
Claim 1 stands rejected as obvious over Allos, Flake, and Scofield.
Claim 1 recites in disputed part:
generate an offer associated with the business that is tailored to
the first user by selecting a particular product of a plurality of
products associated with the business based on the preference
indicator and by selecting a discount for the particular product;
Appeal Br. 13.
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Appellant contends the Examiner erred by finding Scofield teaches or
suggests the above feature. Id.; Reply Br. 13. Specifically, Appellant
acknowledges that Scofield tailors advertisements according to demographic
information, but contends the advertisements do not present a particular
product that is selected based on a preference indicator nor present a
discount for a particular product. Id.
We are unpersuaded of error. As the Examiner finds, Scofield’s
Fig. 4 embodiment teaches an advertisement that is displayed on a cellphone
and tailored to the cellphone’s user. Final Act. 6–7; Ans. 5. Contrary to
Appellant’s argument, Scofield teaches the advertisement’s presented
products and discount can be directed to a particular product of a store.
Scofield, col. 13, ll. 58–66. Scofield also teaches an advertised product and
discount can be selected based on the user’s demographic information and
past purchases, which show what products the user is likely to purchase, e.g.,
high-end clothing. Id. at col. 13, l. 60–col. 14, l. 10. We accordingly agree
with the Examiner that Scofield teaches or suggests, as claimed, generating
an offer associated with a business (advertised coupon) that is tailored to a
user by selecting a particular product associated with the business (particular
clothing of a store) based on the preference indicator (demographic
information and/or past purchases) and by selecting a discount for the
particular product (discount amount, e.g., 10%).
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CONCLUSION
For the foregoing reasons, we affirm the Examiner’s decision to reject
claims 1–22.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–22 101 Eligibility 1–22
1–22 103(a) Allos, Flake, Scofield 1–22
Overall
Outcome
1–22

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