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Patent Trials and Appeals Board

Nov 29, 2019

14479022 - (D) (P.T.A.B. Nov. 29, 2019)

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.
14/479,022 09/05/2014 Vivek Palan RAMP-01002-US-1 1760
140608 7590 11/29/2019
Wright, Lindsey & Jennings LLP - LiveRamp
200 W. Capitol Ave.
Ste. 2300
Little Rock, AR 72201
EXAMINER
FEACHER, LORENA R
ART UNIT PAPER NUMBER
3683
NOTIFICATION DATE DELIVERY MODE
11/29/2019 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
aelliott@wlj.com
jdougherty@wlj.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte VIVEK PALAN, BRIAN FREDERICK KILLEN,
NOEL BRADLEY McMICHAEL, FRANK LEDO, and PAUL OWEN

Appeal 2019-000788
Application 14/479,022
Technology Center 3600
Before KARL D. EASTHOM, JEREMY J. CURCURI, and
AMBER L. HAGY, Administrative Patent Judges.
HAGY, 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 1–5 and 7–21, which are all of the
pending claims.2 Final Act. 2. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

1 We use the word “Appellant” to refer to “Applicant” as defined in 37
C.F.R. § 1.42(a). Although the original applicant was identified as
LiveRamp, Inc., Appellant identifies the real party in interest as Acxiom
Corporation. Appeal Br. 2.
2 Claim 6 was canceled by way of amendment dated October 10, 2017.
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CLAIMED SUBJECT MATTER
By way of background, Appellant’s Specification describes marketing
products over the “World Wide Web,” in which website owners may receive
advertising income by showing advertisements to their websites’ visitors.
Spec. ¶ 3. For example, a website owner may be compensated by an
advertiser based on “impressions” delivered to users viewing the website
and/or by “click throughs” by users who actually click on an advertisement
displayed on the website. Id. Appellant’s Specification also notes that
gathering certain information about a website’s visitors would benefit the
website owner as well as the advertiser, such as “data that indicates or tends
to indicate whether the visitor is more likely to actually purchase the goods
and services offered by the marketer” who advertises on the website. Id.
Appellant’s Specification also notes that, although gathering such
information may be of benefit to the advertisers and website owners, a
“critical concern” exists about protecting privacy of website visitors, further
noting that many jurisdictions in fact restrict the use of “personal identifying
information (PII)” of website visitors such as names, addresses, telephone
numbers, etc. Id. ¶ 4.
Appellant’s Specification purports to describe and claim a method and
system in which “important traits” of website visitors are determined and
tracked, “while also maintaining the privacy” of those visitors. Id. ¶ 5. In
particular, Appellant’s Specification describes redirecting a website’s
visitors to a “marketing services provider (MSP)” server, which gathers and
records information about consumers by using an “anonymous link”
associated with each consumer. Id. ¶ 6. The MSP also produces periodic
reports to the website owner based on the information gathered regarding the
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website visitors, but the reports protect the privacy of individual consumers
by excluding PII. Id. ¶ 6.
Claims 1 and 17 are independent. Claim 17 recites materially similar
limitations to those of claim 1 for purposes of this appeal. Claim 1,
reproduced below, illustrates the claimed subject matter:
1. A computer-implemented method for anonymously
analyzing a website visitor, comprising the steps of:
a. at a marketing services provider (MSP) server, receiving
a request for information from a web browser executing
at a consumer device, wherein the web browser had been
directed by the website visitor to a website, wherein the
website comprises a web beacon, wherein the website is
hosted by a web server, and wherein the web beacon
operates to redirect the web browser to the MSP server;
b. redirecting from the web browser to the MSP server, and
then reading an identifier stored at the consumer device
to determine an anonymous link uniquely associated with
a particular consumer, wherein the anonymous link is
created in such a manner that no personally identifiable
information (PII) can be derived from the anonymous
link by a website owner at the web server;
c. at the MSP server, searching a secure area comprising a
plurality of consumer records for at least one record from
the plurality of consumer records associated with the
anonymous link, wherein the plurality of consumer
records in the secure area each comprise data about a
particular consumer but exclude PII about any particular
consumer, and wherein the anonymous link is not stored
in any record containing PII at the MSP server;
d. recording in an activity database in communication with
the MSP server a browsing activity record for a consumer
associated with the anonymous link, wherein the
browsing activity record does not contain PII;
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e. redirecting the web browser from the MSP server back to
the web server, wherein this redirecting step is performed
in real time and transparently to the website visitor; and
f. sending the browsing activity record from the MSP server
to the website owner at the web server.
REFERENCES
The prior art relied upon by the Examiner is:
Mazzei et al. (“Mazzei”)
Dobbs et al. (“Dobbs”)
Goodwin et al. (“Goodwin”)
US 2010/0169803 A1
US 2012/0150641 A1
US 2013/0276136 A1
July 1, 2010
June 14, 2012
Oct. 17, 2013

REJECTIONS3
Claims 1–5 and 7–21 stand rejected under 35 U.S.C. § 101 as being
directed to patent-ineligible subject matter (abstract idea). Final Act. 6–8.
Claims 1–5, 7–16, and 18–21 stand rejected under 35 U.S.C. § 112,
second paragraph, as being indefinite on the ground that certain terms in
claim 1 lack antecedent basis. Final Act 8; Ans. 7.
Claims 1–5, 7, 9, and 13–204 stand rejected under 35 U.S.C.
§ 102(a)(1) as anticipated by Dobbs. Final Act. 9–19.

3 All rejections are under the provisions of Title 35 of the United States
Code in effect after the effective date of the Leahy-Smith America Invents
Act of 2011. See Final Act. 2.
4 The summary statement of the § 102 rejection in the Final Action refers to
“claim(s) 1–7, 9, and 13–15.” Final Act. 9 (bold omitted). We treat as
inadvertent error the inclusion of claim 6, as claim 6 has been canceled. The
body of the rejection does not discuss claim 6. See Final Act. 13. The body
of the rejection also states that claims 16–20 are rejected under § 102 over
Dobbs. Id. at 15–19. Appellant argues all of claims 1–7, 9, and 13–20 as
rejected under § 102 over Dobbs. Appeal Br. 14. Therefore, we also treat as
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Claims 8 and 10–12 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Dobbs and Goodwin. Final Act. 20–24.
Claim 21 stands rejected under 35 U.S.C. § 103 as being unpatentable
over Dobbs and Mazzei. Final Act. 24.

OPINION
I. § 101 Rejection5
The Examiner rejects all pending claims under 35 U.S.C. § 101 on the
basis that the claimed invention is patent-ineligible because it is directed to a
judicial exception without significantly more. Final Act. 6–8. Appellant
argues that the claims are not directed to an abstract idea, are directed to
patent-eligible subject matter, and the Examiner’s rejection should be
reversed. Appeal Br. 8–13. For the reasons explained below, we determine
that the Examiner has not established that the claims are directed to patent-
ineligible subject matter. Thus, we reverse.
A. Principles of Law
Under 35 U.S.C. § 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. The Supreme Court, however, has long interpreted § 101
to include an implicit exception: “[l]aws of nature, natural phenomena, and

inadvertent error the omission of claims 16–20 from the rejection summary
statement at page 9 of the Final Action.
5 The Examiner and Appellant discuss all claims collectively with claim 1 in
connection with the § 101 rejection. See Final Act. 6–8; Appeal Br. 8–13.
We deem claim 1 to be representative of the claims on appeal for purposes
of the § 101 analysis. See 37 C.F.R. § 41.37(c)(1)(iv).
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abstract ideas” are not patentable. Alice Corp. v. CLS Bank Int’l, 573 U.S.
208, 216 (2014) (citation omitted).
The Supreme Court, in Alice, reiterated the two-step framework
previously set forth in Mayo Collaborative Services v. Prometheus
Laboratories, Inc., 566 U.S. 66, 75–77 (2012), “for distinguishing patents
that claim laws of nature, natural phenomena, and abstract ideas from those
that claim patent-eligible applications of those concepts.” Alice, 573 U.S. at
217. The first step in the analysis is to “determine whether the claims at
issue are directed to one of those patent-ineligible concepts.” Id. For
example, abstract ideas include, but are not limited to, fundamental
economic practices, methods of organizing human activities, an idea of
itself, and mathematical formulas or relationships. Id. at 218–20. The
“directed to” inquiry asks not whether “the claims involve a patent-ineligible
concept,” but instead whether, “considered in light of the specification, . . .
‘their character as a whole is directed to excluded subject matter.’” Enfish,
LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016) (internal
citations omitted). In that regard, we determine whether the claims “focus
on a specific means or method that improves the relevant technology” or are
“directed to a result or effect that itself is the abstract idea and merely invoke
generic processes and machinery.” McRO, Inc. v. Bandai Namco Games
Am. Inc., 837 F.3d 1299, 1314 (Fed. Cir. 2016).
If, at the first stage of the Alice analysis, we conclude that the claims
are not directed to a patent-ineligible concept, they are considered patent
eligible under § 101 and the inquiry ends. Rapid Litig. Mgmt. Ltd. v.
CellzDirect, Inc., 827 F.3d 1042, 1047 (Fed. Cir. 2016).
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If the claims are directed to a patent-ineligible concept, the second
step in the analysis is to consider the elements of the claims “individually
and ‘as an ordered combination’” to determine whether the additional
elements “‘transform the nature of the claim’ into a patent-eligible
application.” Alice, 573 U.S. at 217 (quoting Mayo, 566 U.S. at 79, 78). In
other words, the second step is to “search for an “‘inventive concept’”—i.e.,
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.’” Id. at 217–18 (brackets in original) (quoting
Mayo, 566 U.S. at 72–73). The prohibition against patenting an abstract
idea “‘cannot be circumvented by attempting to limit the use of the formula
to a particular technological environment’ or adding ‘insignificant
postsolution activity.’” Bilski v. Kappos, 561 U.S. 593, 610–11 (2010)
(internal citation omitted).
The Patent and Trademark Office (the “Office”) has published revised
guidance on the application of 35 U.S.C. § 101. 2019 Revised Patent
Subject Matter Eligibility Guidance, 84 Fed. Reg. 50–57 (Jan. 7, 2019)
(“2019 Guidance”). Under the 2019 Guidance, 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 2019 Guidance at 52, 54–55; see
also MPEP § 2106.05(a)–(c), (e)–(h).6

6 All references to the MPEP are to Rev. 08.2017 (Jan. 2018).
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Only if a claim (1) recites a judicial exception, and (2) does not
integrate that exception into a practical application, does the Office then
look to whether the claim (3) adds a specific limitation beyond the judicial
exception that are 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 Guidance at 56. We
follow this framework in our analysis herein.
B. Application of Legal Principles
Alice Step 2A, Prong 1: Whether the Claims Recite an Abstract Idea
Applying the framework of Alice, the Examiner concludes claim 1
recites an abstract idea. Final Act. 6–8. In particular, the Examiner
determines claim 1
is directed to analyzing website visitors using anonymized
behavior. The process of receiving a request for information
from a web browser, reading an identifier stored at the
consumer devices to determine an anonymous link, searching a
plurality of consumer records for records associated with the
anonymous link, recording the browsing activity for the
consumer associated with the anonymous link, redirecting the
web browser and sending the browsing activity record to the
website owner describe the abstract idea.
Id. at 6–7. In so doing, the Examiner analogizes the present claims to the
claims in Electric Power Group, which the Examiner characterizes as
directed to the abstract idea of data being collected and analyzed to produce
a result. Id. at 7 (citing Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350
(Fed. Cir. 2016)). The Examiner further finds
[t]he steps of receiving a request for information reading an
identifier stored at a consumer device and recording browsing
activity is data gathering activity. Searching a plurality of
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consumer records for records associated with the anonymous
link is analyzing data and providing the browsing activity
record is providing a result similar to [Electric Power Group].
Final Act. 7.
Appellant disputes that the claims are directed to an abstract idea. See
Appeal Br. 8–13. Appellant takes issue with the Examiner’s
characterization of the claims, arguing that the invention recited in the
claims is “not simply a recitation of purely functional limitations, as in
Electric Power Group.” Id. at 9. Instead, according to Appellant, the claims
“include a number of limitations about the particular data structures that are
used to implement the invention and the interaction of software and
hardware components that are required in order to achieve the function of
the invention transparently to the user and in real time.” Id. Appellant
argues that “[t]he most analogous case to the applicant’s claims is not
Electric Power Group, but rather is DDR Holdings, LLC v. Hotels.com, L.P.,
773 F.3d 1245 (2014).” Id. at 10.
As we note above, the 2019 Guidance provides, as a first step,
reviewing the claims to determine whether they recite 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). 2019 Guidance at 52.
The 2019 Guidance identifies the following as mathematical concepts:
“mathematical relationships, mathematical formulas or equations,
mathematical calculations.” Id. at 52. The 2019 Guidance identifies the
following as methods of organizing human activity: (1) “fundamental
economic principles or practices”; (2) “commercial or legal interactions,”
such as “agreements in the form of contracts,” “marketing or sales activities
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or behaviors,” and “business relations”; and (3) “managing personal
behavior or relationships or interactions between people,” such as “social
activities, teaching, and following rules or instructions.” Id. The 2019
Guidance identifies the following as mental processes: “concepts performed
in the human mind,” such as “an observation, evaluation, judgment, [or]
opinion.” Id. (footnote omitted).
We determine that the claims here do not recite limitations falling
within any of the three groupings of abstract ideas specified in the 2019
Guidance, nor has the Examiner made findings that support characterizing
the claims as falling within any of those groupings. Rather, the Examiner
simply characterizes the claims as reciting an abstract idea in terms of
collecting and analyzing information to produce a result. See Final Act. 7.
We disagree that the claims are properly characterized as such. Claim 1 is
unlike the claims at issue in Electric Power Group, where the claims were
found ineligibly directed to merely collecting, analyzing, and presenting data
within limited fields of use. See 830 F.3d at 1351–54. As noted in the
October 2019 Update: Subject Matter Eligibility (“October 2019 Update”)7
at 7, the claims in Electric Power Group are examples of claims that recite
mental processes because the “data analysis steps are recited at a high level
of generality such that they could practically be performed in the human
mind.”
Here, in contrast, the Examiner does not make any findings that the
steps recited in the claims could be performed in the human mind, nor do we
agree that the claims could properly be characterized as such. Rather, we

7 Available at https://www.uspto.gov/sites/default/files/documents/
peg_oct_2019_update.pdf (October 17, 2019).
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agree with Appellant that the claims before us are more similar to those at
issue in DDR Holdings, where claims for automating creation of a composite
web page were held patent-eligible under § 101 because they recited a
specific way to solve a specific problem related to a specific technology (i.e.,
the Internet). See 773 F.3d at 1258–59. Similarly to the claims in DDR
Holdings, the present claims are “Internet-centric” because they involve web
beacons that perform redirection of users from a website to a different server
(the MSP server), and then return users to the desired website in a manner
transparent to the users. See Appeal Br. 10. As Appellant aptly notes,
[t]his is not merely the application of some standard retail
practice to the Internet; this solution would make no sense in
the absence of Internet technology. In fact, the very problem
that [Appellant’s] invention exists to solve—maintaining
anonymity for on-line users while also providing reports about
their activities for advertisers—could not have possibly existed
prior to the rise of the Internet as a commercial tool.
Id. Appellant also persuasively argues
[t]he DDR Holdings court stressed that the invention in that
case was not merely an abstract idea because the claims
“specify how interactions with the Internet are manipulated to
yield a desired result—a result that overrides the routine and
conventional sequence of events ordinarily triggered by the
click of a hyperlink.” That is analogous to what [Appellant’s]
invention does: the user expects to be directed to a desired
website when clicking the corresponding hyperlink, but in fact
the user is transparently (and only momentarily) redirected to a
different site maintained by the MSP server in order to perform
the tracking function.
Id. at 10–11.
In short, we determine that the invention recited in Appellant’s claims
does not fall within any of the three groupings of abstract ideas specified in
the 2019 Guidance. In particular, we determine that the invention recited in
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Appellant’s claims is more than merely a field of use for gathering data and
reporting results that could be characterized as mental processes and, hence,
as an abstract idea. We also determine that Appellant’s claims are not
properly characterized as reciting abstract ideas in the form of mathematical
algorithms or certain methods of organizing human activities. Thus, on the
record before us, we determine that are the claims do not recite an ineligible
abstract idea.
Nevertheless, we further consider prong 2 of the analysis under the
2019 Guidance, which we consider, on the present record, to be dispositive,
even if the claims were deemed to recite an abstract idea.
Alice Step 2A, Prong 2: Whether the Claims Integrate the Abstract Idea
into a Practical Application
In accordance with prong 2 of Step 2A of the 2019 Guidance, the
claims are evaluated to determine whether they recite additional elements
beyond an abstract idea, and, if so, the additional elements are evaluated to
determine whether they integrate the abstract idea into a practical
application. 2019 Guidance at 54. The 2019 Guidance at page 55 provides
several exemplary considerations, including whether an additional element
“reflects an improvement in the functioning of a computer, or an
improvement to other technology or technical field.” The 2019 Guidance
also highlights certain examples in which courts have held that “a judicial
exception has [not] been integrated into a practical application,” such as
where the claims “merely use[] a computer as a tool to perform an abstract
idea” or the additional element adds “insignificant extra-solution activity” to
the abstract idea. Id. at 55.
Here, in addition to reciting recording and searching browsing activity
records for consumers, claim 1 recites, inter alia, the elements of a website
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comprising “a web beacon” that “operates to redirect the web browser to the
MSP server,” as well as the steps of “redirecting from the web browser to
the MSP server” and “redirecting the web browser from the MSP server
back to the web server, wherein this redirecting step is performed in real
time and transparently to the website visitor.” Thus, the claim requires steps
that fundamentally change a user’s interaction with a website, albeit in a
manner transparent to the user.
We find the claimed invention reflects an Internet-based technological
improvement. See 2019 Guidance at 55. As Appellant asserts, and we
agree, the claims “are ‘Internet-centric’ because they involve web beacons
that perform redirection to a different website, and then return . . . the user to
the desired website in a manner transparent to the user.” Appeal Br. 10.
Although the underlying machines (the consumer device, the web servers,
and the MSP server) may not themselves be novel computing devices, the
claimed solution is necessarily rooted in computer technology in order to
overcome a problem specifically arising in the realm of the Internet—
gathering information about a user’s online activity and reporting
information to website owners while maintaining the anonymity of the user.
This problem is integral to the claim, beyond generally linking use of an
abstract idea to a particular technological environment, such that the claim
as a whole is more than a drafting effort designed to monopolize the
exception. See 2019 Guidance at 55. As such, to the extent claim 1 recites
an abstract idea (assuming, for example, the claimed consumer record
gathering and reporting could be performed in the human mind so as to
qualify as an abstract idea of a mental process), it integrates the abstract idea
into a practical application and, therefore, is directed to patent-eligible
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subject matter. Similar reasoning applies as to independent claim 17, as well
as to the dependent claims.
Because we have determined that the claims do not recite a judicial
exception without integrating that exception into a practical application, we
do not reach the remaining step (Step 2B) of the Alice analysis. See 2019
Guidance at 56.
For all of the foregoing reasons, under the 2019 Guidance, we are
persuaded that the Examiner erred in concluding that the pending claims are
judicially-excepted from patentability.
Accordingly, we do not sustain the Examiner’s § 101 rejection of
independent claims 1 and 17, or the Examiner’s rejection of dependent
claims 2–5, 7–16, and 18–21, which stand with the claims from which they
depend.
II. Section 112(2) Rejection
In the Final Action, the Examiner rejects independent claim 1 (as well
as claims 2–5, 7–16, and 18–21, which depend from claim 1) under 35
U.S.C. § 112, second paragraph, as being indefinite on several grounds.
Final Act. 8–9. Subsequent to the Final Action, Appellant submitted an
amendment to the claims, which the Examiner entered. See Amendment
dated June 13, 2018; Advisory Action dated June 25, 2018. The amended
claims are reflected in the Claims Appendix submitted on July 9, 2018. In
the Answer, the Examiner determines the amendments overcome the
Examiner’s § 112 rejection on all but one ground. Ans. 7. In particular, the
Examiner maintains the determination that claim 1 is indefinite because it
contains “numerous recitations of PII without ‘the’ or ‘said’ in front of
them.” Id.; see also Final Act. 8.
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In the Appeal Brief, Appellant does not substantively address the
Examiner’s § 112 rejection of claim 1, but notes that Appellant “has
submitted, prior to submission of this Appeal Brief, an Amendment after
Appeal under 37 CFR 41.33 containing amendments to the relevant claims
to address this issue.” Appeal Br. 13–14.
The test for indefiniteness is whether “those skilled in the art would
understand what is claimed when the claim is read in light of the
specification.” Orthokinetics, Inc. v. Safety Travel Chairs, Inc., 806 F.2d
1565, 1576 (Fed. Cir. 1986). Language in a claim is unclear if, when given
its broadest reasonable interpretation consistent with the Specification, it is
“ambiguous, vague, incoherent, opaque, or otherwise unclear in describing
and defining the claimed invention,” In re Packard, 751 F.3d 1307, 1311
(Fed. Cir. 2014), or if it is “is amenable to two or more plausible claim
constructions,” Ex parte Miyazaki, 89 USPQ2d 1207, 1211 (BPAI 2008)
(precedential); see also Ex parte McAward, Appeal No. 2015-006416, 2017
WL 3669566 (PTAB 2017) (precedential) (discussing the test for
indefiniteness during prosecution and affirming Miyazaki’s continued
precedential status (at *2, n.3)).
We first determine Appellant has sufficiently raised issues related to
the Examiner’s § 112 rejection for review on appeal, because Appellant
argues in the Appeal Brief that the claims, as amended, overcome the
Examiner’s § 112 rejection. Appeal Br. 13–14. We also determine, for the
reasons stated below, that the Examiner errs in the rejection.
Claim 1 refers to “personally identifiable information (PII)” in stating
that “the anonymous link is created in such a manner that no personally
identifiable information (PII) can be derived from the anonymous link . . . .”
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Claim 1 further states that consumer records “each comprise data about a
particular consumer but exclude PII about any particular consumer and . . .
the anonymous link is not stored in any record containing PII at the MSP
server.”
The Examiner’s remaining § 112 rejection of claim 1 is premised on
the determination that claim 1 is indefinite in not referring to “the PII” or
“said PII.” See Ans. 7 (emphasis added); Final Act. 8. We disagree.
Appellant’s Specification uses the term “personally identifiable information
(PII)” generically to describe a class of information that may be used to
identify a particular individual, which includes “name, address, telephone
number, and email address information.” Spec. ¶ 4. Appellant’s
Specification also consistently describes the information stored about
website visitors according to Appellant’s invention as “not contain[ing] any
PII” and “avoiding the exposure of the website visitor’s PII to the marketer.”
E.g., Spec. ¶ 5. Thus, when claim 1 is read in light of the Specification, the
recitation of “personally identifiable information” (and its abbreviation
“PII”) refers generically to a class of information, and not to any particular
piece of information. Reference to excluding a generic class of information
from consumer records, as recited in claim 1, does not require “the” or
“said” in front of a generic identifier for clarity. To the contrary, including
“the” or “said” in front of a generic identifier like “PII” could add confusion
by suggesting that only a particular (but unidentified) piece of information is
excluded, instead of the entire class of information.
For the foregoing reasons, we disagree with the Examiner’s
determination that those skilled in the art would not understand what is
claimed when claim 1 is read in light of the Specification, and we, therefore,
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do not sustain the Examiner’s 35 U.S.C. § 112, second paragraph, rejection
of claim 1, or of the claims dependent thereon.
III. § 102(a)(1) Rejection
The Examiner finds Dobbs discloses all of the limitations of claims 1–
5, 7, 9, and 13–20 and, thus, anticipates those claims. Final Act. 9–19.
Appellant argues persuasively that the Examiner’s findings as to
independent claims 1 and 17 are in error, as address below.8 In particular,
Appellant argues the claims require the MSP server to interact directly with
the consumer device. Appeal Br. 16. For example, as Appellant aptly notes,
claim 1 recites “redirecting from the web browser to the MSP server” and
then “at the MSP server, searching a secure area comprising a plurality of
consumer records” and “recording in an activity database in communication
with the MSP server a browsing activity record for a consumer associated
with the anonymous link, wherein the browsing activity record does not
contain PII.” See Claims App’x 2. Appellant contrasts Dobbs’ disclosure
by noting that Dobbs discloses a computer system that “acts as an
intermediary between the advertiser [which the Examiner maps to the
website] and the ad server [which the Examiner maps to the MSP server].”
Appeal Br. 15. Appellant further asserts Dobbs’ computer system “simply
performs the function of matching a particular customer (known to the
advertiser) with a particular browser (known to the ad server).” Id.
In finding Dobbs discloses the limitations of claim 1, the Examiner
mixes together Dobbs’ disclosure of prior art systems with Dobbs’

8 Appellant’s contentions present additional issues. Because the identified
issues are dispositive of Appellant’s arguments on appeal, we do not reach
the additional issues.
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disclosure of its system that purportedly distinguishes over the prior art
systems. See Final Act. 11–12. For example, in finding Dobbs discloses
searching a “secure area” at the MSP server for “at least one record from the
plurality of consumer records associated with the anonymous link,” as
recited in claim 1, the Examiner cites to paragraphs of Dobbs that describe
Dobbs’ invention (as depicted in Figure 4). See id. at 11 (citing Dobbs ¶¶ 5,
8, 28, 29). The Examiner finds Dobbs discloses in those paragraphs that
“the computer can provide anonymized lists of identifiers associated with
customers with the event level data containing the association of the
anonymous identifier unique to a particular browser with the unique
identifier used by an advertiser to identify a particular customer.” Id. But in
finding Dobbs discloses “redirecting the web browser from the MSP server
back to the web server,” the Examiner relies on Dobbs’ disclosure of a prior
art system (depicted in Figure 1) in which “the web server sends instructions
for displaying a web page which may include an ad tag to appear at a
designated position (e.g. a banner).” Id. at 12 (citing Dobbs ¶¶ 17–18).
In the Answer, responding to Appellant’s assertion that Dobbs’
computer system 100 (as depicted in Figure 4) “acts as a clearinghouse
between the ad server and the advertiser” in which the user’s web browser
does not interact directly with an MSP server, as recited in claim 1 (see
Appeal Br. 16), the Examiner disavows reliance on Dobbs’ embodiment as
depicted in Figure 4, stating as follows:
Applicant’s argument is directed to a specific embodiment
within Dobbs (see Figure 4), whereas Examiner is referencing
embodiments found in Figures 1–3. Dobbs discloses in Figure
1 a user directing his browser to a website of a publisher with
the web server downloading markup instructions that inform
the user’s browser how to render a webpage and the markup
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instructions may contain an ad tag (e.g. web beacon, web bug
or pixel tag) (see ¶0017–¶0018). The ad tag instructs the user’s
browser to go to an ad server (e.g. redirecting to MSP server) in
order to obtain markup code and graphics to render the ad and
after receiving instructions from the publisher’s website the
user browser calls the designated ad server and passes
information such as the computer’s IP address, type of browser
program and other information (see ¶0018), similar to the
communication between the MSP server and user browser in
the instant application (Specification see ¶0018–¶0019).
Cookies are utilized to collect event level data where the data is
transmitted to the ad server (see ¶0018). This clearly
demonstrates that the ad server of Dobbs [is] in direct
communication with the user’s browser.
Ans. 7–8.
In Reply, Appellant points out that the Examiner’s reliance on
Figures 1–3 of Dobbs is inadequate because those figures (and the
accompanying description) describe a system that lacks protection for a
user’s personally identifiable information—the very problem Appellant
purports to solve with its claimed invention and which Dobbs purported to
solve with the embodiment disclosed in Figure 4:
In the embodiment of Fig. 1 (see paragraphs [0015] -
[0020] of Dobbs), the web page accessed by the user contains
“ad tags,” which instruct the user’s browser to go to a separate
ad server in order to retrieve the particular advertisement for
inclusion on the web page. Cookies are used to track
advertising to the customer by storing them on the user’s web
browser. Unlike the present invention, there are no separate
anonymous link constructed, nor is there a secure area that
contains no PII. . . . The embodiment of Fig. 1 of Dobbs is the
ordinary way of handling these matters on the Internet, and the
inherent lack of privacy in this approach is the problem that the
applicant solved with the present claimed invention.
In the embodiment of Fig. 2 (see paragraph [0021]),
event-level data (such as a purchase or completing a survey) are
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added to the mix, and this is tracked by using personally-
identifiable information collected from the customer. This
personally-identifiable information is stored in a customer
records management (CRM) system along with a customer ID.
By definition, this CRM system contains PII, and thus is the
opposite of the secure area of the claimed invention, which is
purposefully devoid of PII because it contains only de-
identified data and anonymous links, the latter of which are
constructed in such a manner than no PII can be gleaned from
them. Thus the embodiment of Fig. 2 of Dobbs also does not
anticipate [Appellant’s] claimed invention for at least these
reasons.
Finally, in the embodiment of Fig. 3 (see paragraphs
[0022] to [0023]), Dobbs teaches that advertisers can obtain the
event-level data associated with ads. This allows advertisers to
actually track on-line activity of customers, including, for
example, the browsing history of a customer to whom an ad
was delivered. As Dobbs notes at the end of paragraph [0022],
this would allow online behavior of a customer to be tracked
back to an individual’s offline identity, which would be a
dramatic failure to protect the consumer’s privacy.
Reply Br. 5–6 (emphases added).
Thus, although the Examiner finds Dobbs discloses prior art systems
in which a user’s web browser is redirected to an ad server (which the
Examiner maps to the claimed MSP server) (Ans. 7–8), Dobbs itself
discloses that those systems do not use anonymous links created “in such a
manner that no personally identifiable information (PII) can be derived from
the anonymous link by a website owner,” as also required by claim 1. See
Dobbs ¶ 21 (describing a problem with the prior art in that “event-level data
stored by an ad server . . . can become associated with the personally-
identifiable information of a user”). The embodiment of Dobbs in which
personally-identifiable information of a user is shielded from the advertiser
is the embodiment depicted in Figure 4. But the Examiner makes no
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findings that such embodiment satisfies the other limitations of claim 1,
including “redirecting from the web browser to the MSP server”; to the
contrary, as noted above, the Examiner’s Answer indicates that the
Examiner disavows reliance on that embodiment. Ans. 7.
This gap in the Examiner’s findings is fatal to the Examiner’s 35
U.S.C. § 102(a)(1) rejection of each of independent claims 1 and 17 over
Dobbs, and we, therefore, do not sustain that rejection. Dependent claims 2–
5, 7, 9, 13–16, and 18–21 stand with their respective independent claims.
In addition, although dependent claims 8 and 10–12 are each rejected
under § 103 over the combination of Dobbs an additional reference
(Goodwin or Mazzei), the Examiner does not make findings regarding the
teachings of Goodwin or Mazzei that remedy the deficiencies we have noted
above in the Examiner’s findings regarding Dobbs. Therefore, claims 8 and
10–12 also stand with independent claim 1, and we do not sustain the
Examiner’s 35 U.S.C. § 103 rejection of claims 8 and 10–12.
DECISION
The Examiner’s decision to reject claims 1–5 and 7–21 is
REVERSED.

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DECISION SUMMARY

Claims
Rejected
35 U.S.C. § Basis Affirmed Reversed
1–5 and 7–21 101 Eligibility 1–5 and 7–
21
1–5, 7, 9, and
13–20
102(a)(1) Dobbs 1–5, 7, 9,
and 13–20
8 and 10–12 103 Dobbs,
Goodwin
8 and 10–
12
21 103 Dobbs, Mazzei 21
1–5, 7–16, and
18–21
112(2) Indefiniteness 1–5, 7–16,
and 18–21
OVERALL OUTCOME 1–5 and 7–
21