Robert H. Burcham et al.

Patent Trials and Appeals Board

Sep 3, 2019

14455934 - (D) (P.T.A.B. Sep. 3, 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.
14/455,934 08/10/2014 Robert H. Burcham IDF 10373 (4300-50400) 6413
28003 7590 09/03/2019
SPRINT
6391 SPRINT PARKWAY
KSOPHT0101-Z2100
OVERLAND PARK, KS 66251-2100
EXAMINER
STROUD, CHRISTOPHER
ART UNIT PAPER NUMBER
3688
NOTIFICATION DATE DELIVERY MODE
09/03/2019 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):
6450patdocs@sprint.com
SprintMail@dfw.conleyrose.com
steven.j.funk@sprint.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte ROBERT H. BURCHAM, GEOFFREY A. HOLMES,
and UMESH CHANDRA UPADHYAY
____________________

Appeal 2018-003652
Application 14/455,9341
Technology Center 3600
____________________

Before JENNIFER S. BISK, LARRY J. HUME, and
JULIET MITCHELL DIRBA, Administrative Patent Judges.

HUME, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) of the Final
Rejection of claims 1–11, 13–16, and 18–20, which are all claims pending in
the application. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 According to Appellants, the real party in interest is Sprint Communications
Company L.P. App. Br. 3.
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STATEMENT OF THE CASE2
The Invention
Appellants’ disclosed embodiments and claimed invention relate to 3-
tier data structures for targeting data (see Title) and, in particular, to “[a]
data management platform server that organizes and transforms data in a 3-
tier data structure.” Spec. 34 (Abstract).
Representative Claim
Claim 8, reproduced below, is representative of the subject matter on
appeal:
8. A method of transforming and organizing profile
data using a data management platform server and a plurality of
cache managers in a 3-tier data structure, comprising:
transforming, by a first cache manager stored in a non-
transitory memory and executable by a processor, raw data into
discrete values and storing, by the first cache manager, the
discrete values in a plurality of profiles that are indexed by
identities of individuals, wherein the raw data is stored in a
network data store, and wherein the network data store is
implemented on a first computer and represents a first tier of
data;
storing, by the first cache manager, the plurality of
profiles to a profile data store, wherein the profile data store is
implemented on a second computer that is separate from the
first computer, and wherein the profile data store represents a
second tier of data;
generating, by the first cache manager, a first profile
subset from the plurality of profiles stored in the profiles data

2 Our decision relies upon Appellants’ Appeal Brief (“App. Br.,” filed
Nov. 3, 2017); Reply Brief (“Reply Br.,” filed Feb. 19, 2018); Examiner’s
Answer (“Ans.,” mailed Dec. 21, 2017); Final Office Action (“Final Act.,”
mailed June 15, 2017); and the original Specification (“Spec.,” filed
Aug. 10, 2014).
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store based on a first profile subset selection criterion received
by a first client, wherein the first profile subset comprises
derived profiles that comprise fewer data parameters than the
plurality of profiles stored in the profile data store comprise;
generating, by the first cache manager, a second profile
subset from the plurality of profiles stored in the profiles data
store based on a second profile subset selection criterion
received by a second client, wherein the first profile subset
selection criterion and the second profile subset selection
criterion comprises two or more of age, gender, occupation,
salary, or purchase history, and wherein at least some profiles
in the first profile subset are not in the second profile subset and
at least some profiles in the second profile subset are not in the
first profile subset;
transmitting, by the first cache manager, the first profile
subset and the second profile subset to a second cache manager
stored in a non-transitory memory and executable by a
processor;
storing, by the second cache manager, the first profile
subset and the second profile subset to a profile subset data
store, wherein the profile subset data store is implemented on a
third computer that is separate from the first computer and the
second computer, and wherein the profile subset data store
represents a third tier of data;
subsequently receiving, by the second cache manager, a
request from an ad gateway for the first profile subset based on
an ad request;
in response to the request, searching, by second cache
manager, the third tier of data in the profile subset data store
implemented on the third computer and transmitting, by the
second cache manager, the first profile subset to the ad
gateway; and
sending, by the ad gateway, a targeted advertisement to a
mobile communication device of an individual for display on
the mobile communication device based on the first profile
subset.
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Rejection on Appeal3
Claims 1–11, 13–16, and 18–20 stand rejected under 35 U.S.C. § 101
as being directed to patent-ineligible subject matter. Final Act. 2–4.
CLAIM GROUPING
Based on Appellants’ arguments (App. Br. 16–24) and our discretion
under 37 C.F.R. § 41.37(c)(1)(iv), we decide the appeal of patent-ineligible
subject matter Rejection of claims 1–11, 13–16, and 18–20 on the basis of
representative claim 8.4
ISSUE
Appellants argue (App. Br. 16–24; Reply Br. 4–9) the Examiner’s
rejection of claim 8 under 35 U.S.C. § 101 as being directed to patent-
ineligible subject matter is in error. These contentions present us with the
following issue:
Under the USPTO’s Revised Guidance, informed by our governing
case law concerning 35 U.S.C. § 101, is claim 8 patent-ineligible under
§ 101?

3 We note the Examiner rejects claims 1–16 and 18–20 instead of
claims 1–11, 13–16, and 18–20 (Final Act. 2), which appears to be harmless
error because Appellants previously canceled claim 12.
4 “Notwithstanding any other provision of this paragraph, the failure of
appellant to separately argue claims which appellant has grouped together
shall constitute a waiver of any argument that the Board must consider the
patentability of any grouped claim separately.” 37 C.F.R. § 41.37(c)(1)(iv).
In addition, when Appellants do not separately argue the patentability of
dependent claims, the claims stand or fall with the claims from which they
depend. In re King, 801 F.2d 1324, 1325 (Fed. Cir. 1986).
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PRINCIPLES OF LAW
A. 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. § 101.5
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. Mayo Collaborative Servs. v. Prometheus Labs.,
Inc., 566 U.S. 66, 70 (2012) (brackets in original) (quoting Diamond v.
Diehr, 450 U.S. 175, 185 (1981)).
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court’s two-step framework, described in Mayo
and Alice. Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 573 U.S. 208, 217–18
(2014) (citing Mayo, 566 U.S. at 75–77). In accordance with that
framework, we first determine what concept the claim is “directed to.” See
Alice, 573 U.S. at 219 (“On their face, the claims before us are drawn to the
concept of intermediated settlement, i.e., the use of a third party to mitigate
settlement risk.”); see 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);

5 This threshold analysis of whether a claim is directed to one of the four
statutory categories of invention, i.e., a process, machine, manufacture, or
composition of matter, is referred to as “Step 1” in the USPTO’s patent-
eligibility analysis under § 101. MPEP § 2106.
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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” (Diehr, 450 U.S. at 191); “tanning,
dyeing, making water-proof cloth, vulcanizing India rubber, smelting ores”
(id. at 182 n.7 (quoting Corning v. Burden, 56 U.S. (15 How.) 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 “[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
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.”).
Abstract ideas may include, but are not limited to, fundamental
economic practices, methods of organizing human activities, and
mathematical formulas or relationships. Alice, 573 U.S. at 217–21. Under
this guidance, we must therefore ensure at step one that we articulate what
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the claims are directed to with enough specificity to ensure the step one
inquiry is meaningful. Id. at 217 (“[W]e tread carefully in construing this
exclusionary principle lest it swallow all of patent law.”).
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 (citation 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 Revised Guidance
The PTO recently published revised guidance in the Federal Register
concerning the application of § 101. 2019 Revised Patent Subject Matter
Eligibility Guidance, 84 Fed. Reg. 50 (January 7, 2019) (hereinafter
“Revised Guidance”) (https://www.govinfo.gov/content/pkg/FR-2019-01-
07/pdf/2018-28282.pdf).
Under the Revised Guidance, we first look to whether the claim
recites:
(1) any judicial exceptions, including certain groupings
of abstract ideas (i.e., mathematical concepts, certain methods
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of organizing human activity such as a fundamental economic
practice, or mental processes);6 and
(2) additional elements that integrate the judicial
exception into a practical application (see Manual for Patent
Examining Procedure (“MPEP”) §§ 2106.05(a)–(c), (e)–(h)).7
See Revised Guidance 52–53.
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.8
See Revised Guidance 56.
Step 2A(i) – Abstract Idea
Informed by our judicial precedent, the Revised Guidance extracts and
synthesizes key concepts identified by the courts as abstract ideas to explain
that the abstract idea exception includes the following groupings of subject
matter, when recited as such in a claim limitation:
(a) Mathematical concepts—mathematical relationships,
mathematical formulas or equations, mathematical calculations;

6 Referred to as “Revised Step 2A, Prong 1” in the Revised Guidance
(hereinafter “Step 2A(i)”).
7 Referred to as “Revised Step 2A, Prong 2” in the Revised Guidance
(hereinafter “Step 2A(ii)”).
8 Items (3) and (4) continue to be collectively referred to as “Step 2B” of the
Supreme Court’s two-step framework, described in Mayo and Alice.
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(b) Certain methods of organizing human activity —
fundamental economic principles or practices (including
hedging, insurance, mitigating risk); commercial or legal
interactions (including agreements in the form of contracts;
legal obligations; advertising, marketing or sales activities or
behaviors; business relations); managing personal behavior or
relationships or interactions between people (including social
activities, teaching, and following rules or instructions); and
(c) Mental processes—concepts performed in the human
mind (including an observation, evaluation, judgment,
opinion).Revised Guidance at 52.
Under the Revised Guidance, if the claim does not recite a judicial
exception (a law of nature, natural phenomenon, or subject matter within the
enumerated groupings of abstract ideas above), then the claim is patent-
eligible at Step 2A(i). This determination concludes the eligibility analysis,
except in situations identified in the Revised Guidance.9
However, if the claim recites a judicial exception (i.e., an abstract idea
enumerated above, a law of nature, or a natural phenomenon), the claim
requires further analysis for a practical application of the judicial exception
in Step 2A(ii).
Step 2A(ii) – Practical Application
If a claim recites a judicial exception in Step 2A(i), we determine
whether the recited judicial exception is integrated into a practical
application of that exception in Step 2A(ii) by: (a) identifying whether there

9 In the rare circumstance in which an examiner believes a claim limitation
that does not fall within the enumerated groupings of abstract ideas should
nonetheless be treated as reciting an abstract idea, the procedure described in
the Guidance for analyzing the claim should be followed. See Revised
Guidance, Section III.C.
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are any additional elements recited in the claim beyond the judicial
exception(s); and (b) evaluating those additional elements individually and
in combination to determine whether they integrate the exception into a
practical application.
The seven identified “practical application” sections of the MPEP,10
cited in the Revised Guidance under Step 2A(ii), are:
(1) MPEP § 2106.05(a) Improvements to the Functioning of
a Computer or To Any Other Technology or Technical
Field
(2) MPEP § 2106.05(b) Particular Machine
(3) MPEP § 2106.05(c) Particular Transformation
(4) MPEP § 2106.05(e) Other Meaningful Limitations
(5) MPEP § 2106.05(f) Mere Instructions To Apply An
Exception
(6) MPEP § 2106.05(g) Insignificant Extra-Solution Activity
(7) MPEP § 2106.05(h) Field of Use and Technological
Environment
See Revised Guidance 55.
If the recited judicial exception is integrated into a practical
application as determined under one or more of the MPEP sections cited
above, then the claim is not directed to the judicial exception, and the patent-
eligibility inquiry ends. See Revised Guidance at 54. If not, then analysis
proceeds to Step 2B.

10 See MPEP §§ 2106.05(a)–(c), (e)–(h). Citations to the MPEP herein refer
to revision [R-08.2017]. Sections 2106.05(a), (b), (c), and (e) are indicative
of integration into a practical application, while §§ 2106.05(f), (g), and (h)
relate to limitations that are not indicative of integration into a practical
application.
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Step 2B – “Inventive Concept” or “Significantly More”
Under our reviewing courts’ precedent, it is possible that a claim that
does not “integrate” a recited judicial exception under Step 2A(ii) is
nonetheless patent eligible. For example, the claim may recite additional
elements that render the claim patent eligible even though a judicial
exception is recited in a separate claim element.11 The Federal Circuit has
held claims eligible at the second step of the Alice/Mayo test (USPTO Step
2B) because the additional elements recited in the claims provided
“significantly more” than the recited judicial exception (e.g., because the
additional elements were unconventional in combination).12 Therefore, if a
claim has been determined to be directed to a judicial exception under
Revised Step 2A, we must also evaluate the additional elements individually
and in combination under Step 2B to determine whether they provide an
inventive concept (i.e., whether the additional elements amount to
significantly more than the exception itself).13
Under the Revised Guidance, we must consider in Step 2B whether an
additional element or combination of elements: (1) “Adds a specific

11 See, e.g., Diehr, 450 U.S. at 187.
12 See, e.g., Amdocs (Israel), Ltd. v. Openet Telecom, Inc., 841 F.3d 1288,
1300, 1304 (Fed. Cir. 2016); BASCOM Global Internet Services, Inc. v.
AT&T Mobility LLC, 827 F.3d 1341, 1349–52 (Fed. Cir. 2016); DDR
Holdings v. Hotels.com, L.P., 773 F.3d 1245, 1257–59 (Fed. Cir. 2014).
13 The patent eligibility inquiry may contain underlying issues of fact.
Mortg. Grader, Inc. v. First Choice Loan Servs. Inc., 811 F.3d 1314, 1325
(Fed. Cir. 2016). In particular, “[t]he question of whether a claim element or
combination of elements is well-understood, routine and conventional to a
skilled artisan in the relevant field is a question of fact.” Berkheimer v. HP
Inc., 881 F.3d 1360, 1368 (Fed. Cir. 2018).
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limitation or combination of limitations that are not well-understood,
routine, conventional activity in the field, which is indicative that an
inventive concept may be present;” or (2) “simply appends well-understood,
routine, conventional activities previously known to the industry, specified
at a high level of generality, to the judicial exception, which is indicative
that an inventive concept may not be present.” See Revised Guidance,
III.B.14
In the Step 2B analysis, an additional element (or combination of
elements) is not well-understood, routine or conventional unless the
examiner finds an evidentiary basis, and expressly supports a rejection in
writing with, one or more of the following:
1. A citation to an express statement in the
specification or to a statement made by an applicant during
prosecution that demonstrates the well-understood, routine,
conventional nature of the additional element(s). . . .
2. A citation to one or more of the court decisions
discussed in MPEP § 2106.05(d)(II) as noting the well-
understood, routine, conventional nature of the additional
element(s).

14 In accordance with existing Step 2B guidance, an Examiner’s finding that
an additional element (or combination of elements) is well understood,
routine, conventional activity must be supported with at least one of the four
specific types of evidence required by the USPTO Berkheimer
Memorandum, as shown above. For more information concerning evaluation
of well-understood, routine, conventional activity, see MPEP § 2106.05(d),
as modified by the USPTO Berkheimer Memorandum (USPTO
Commissioner for Patents Memorandum dated Apr. 19, 2018, “Changes in
Examination Procedure Pertaining to Subject Matter Eligibility, Recent
Subject Matter Eligibility Decision (Berkheimer v. HP, Inc.)” (hereinafter
“Berkheimer Memo”).
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3. A citation to a publication that demonstrates the
well-understood, routine, conventional nature of the additional
element(s). . . .
4. A statement that the examiner is taking official
notice of the well-understood, routine, conventional nature of
the additional element(s). . . .
See Berkheimer Memo.
The analysis in Step 2B further determines whether an additional
element or combination of elements:
(a) Adds a specific limitation or combination of
limitations that are not well-understood, routine, conventional
activity in the field, which is indicative that an inventive
concept may be present; or
(b) simply appends well-understood, routine,
conventional activities previously known to the industry,
specified at a high level of generality, to the judicial exception,
which is indicative that an inventive concept may not be
present.
Revised Guidance at 55, and see Berkheimer Memo.
If the Examiner or the Board determines under Step 2B that the
element (or combination of elements) amounts to significantly more than the
exception itself, the claim is eligible, thereby concluding the eligibility
analysis.
However, if a determination is made that the element and combination
of elements does not amount to significantly more than the exception itself,
the claim is ineligible under Step 2B, and the claim should be rejected for
lack of subject matter eligibility.
ANALYSIS
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Step 1 – Statutory Category
Claim 8, as a method (process) claim, recites one of the enumerated
categories of eligible subject matter in 35 U.S.C. § 101. Therefore, the issue
before us is whether it is directed to a judicial exception without
significantly more.
Step 2A(i): Does the Claim Recite a Judicial Exception?
The Examiner determined that claim 8 is directed to “refining profile
data to provide targeted advertising which are similar to concepts that have
been identified as abstract by the courts, such as real-time monitoring of an
electric power grid in Electric Power Group . . . and communicating targeted
information in Affinity Labs v. Amazon.” Final Act. 2.
We conclude claim 8 does not recite the judicial exceptions of either
natural phenomena or laws of nature. We evaluate, de novo, whether
claim 8 recites an abstract idea based upon the Revised Guidance.
Claim 8 recites, in pertinent part, “[a] method of transforming and
organizing profile data using a data management platform server and a
plurality of cache managers in a 3-tier data structure,” that includes the steps
of:
(1) “[T]ransforming . . . raw data into discrete values and
storing . . . the discrete values in a plurality of profiles that are
indexed by identities of individuals, wherein the raw data is
stored in a network data store, and wherein the network data
store . . . represents a first tier of data.”
(2) “[S]toring . . . the plurality of profiles to a profile data
store . . . wherein the profile data store represents a second tier
of data.”
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(3) “[G]enerating . . . a first profile subset from the
plurality of profiles stored in the profiles data store based on a
first profile subset selection criterion received by a first client,
wherein the first profile subset comprises derived profiles that
comprise fewer data parameters than the plurality of profiles
stored in the profile data store comprise.”
(4) “[G]enerating . . . a second profile subset from the
plurality of profiles stored in the profiles data store based on a
second profile subset selection criterion received by a second
client, wherein the first profile subset selection criterion and the
second profile subset selection criterion comprises two or more
of age, gender, occupation, salary, or purchase history, and
wherein at least some profiles in the first profile subset are not
in the second profile subset and at least some profiles in the
second profile subset are not in the first profile subset.”
(5) “[T]ransmitting . . . the first profile subset and the
second profile subset to a second cache manager stored in a
non-transitory memory.”
(6) “[S]toring . . . the first profile subset and the second
profile subset to a profile subset data store . . . wherein the
profile subset data store represents a third tier of data.”
(7) “[S]ubsequently receiving . . . a request from an ad
gateway for the first profile subset based on an ad request.”
(8) “[I]n response to the request, searching . . . the third
tier of data . . . and transmitting . . . the first profile subset to the
ad gateway.”
(9) “[S]ending . . . a targeted advertisement to . . . an
individual for display on the mobile communication device
based on the first profile subset.”
Claims App’x.
The Specification provides context as to what the claimed invention is
directed to. In this case, the Specification discloses that the invention
“organizes and transforms data in a 3-tier data structure” for promoting
targeted advertising. Spec. ¶¶ 6, 17.
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Appellants’ Abstract further describes the invention as:
A data management platform server that organizes and
transforms data in a 3-tier data structure. The server comprises
an application stored in a memory that transforms data into
profiles. The application stores the profiles to a profile data
store. The application selects a first profile subset from the
profiles based on a first criterion. The application selects a
second profile subset form the profiles based on a second
criterion, where at least some of the profiles in the first profile
subset are not in the second profile subset and wherein at least
some of the profiles in the second profile subset are not in the
first profile subset. The application stores the first profile subset
and the second profile subset to a profile data store. The
application receives a request from an ad gateway for the first
profile subset and transmits the first profile subset to the ad
gateway.
Spec. 34 (“Abstract”).
Informed by our Revised Guidance, we determine that claim 8 recites
a certain method of organizing human activity, in the form of commercial
interactions and advertising that may also be performed by a human using
pen and paper. Aside from the computer-related aspects of the claim, this
type of activity, i.e., generating targeted advertisements, as recited in each of
limitations (1) through (8), quoted above, for example, includes
longstanding conduct that existed well before the advent of computers and
the Internet, and could be carried out by a human with pen and paper. See
CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1375 (Fed. Cir.
2011) (“That purely mental processes can be unpatentable, even when
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performed by a computer, was precisely the holding of the Supreme Court in
Gottschalk v. Benson.”).15
Under the broadest reasonable interpretation standard,16 we conclude
limitations (1) through (8) recite steps that would ordinarily occur when
analyzing information known about a user to target communications, such as
providing an advertisement to a user based on known demographics of a
user. See Final Act. 3. For example, transforming raw data into multiple
profiles (limitation 1) is an operation that would generally occur before
storing the multiple profiles (limitation 2). Further, generating multiple
subsets of profiles from the stored profiles based on specific selection

15 Although we determine claim 8 recites a certain method of organizing
human activity, our reviewing court recognizes that “[a]n abstract idea can
generally be described at different levels of abstraction.” Apple, Inc. v.
Ameranth, Inc., 842 F.3d 1229, 1240 (Fed. Cir. 2016). That need not and, in
this case does not, “impact the patentability analysis.” Id. at 1241. Further,
“[t]he Board’s slight revision of its abstract idea analysis does not impact the
patentability analysis.” Id. Moreover, merely combining several abstract
ideas does not render the combination any less abstract. RecogniCorp, LLC
v. Nintendo Co., 855 F.3d 1322, 1327 (Fed. Cir. 2017) (“Adding one
abstract idea (math) to another abstract idea . . . does not render the claim
non-abstract.”); see also FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d
1089, 1093–94 (Fed. Cir. 2016) (determining the pending claims were
directed to a combination of abstract ideas).
16 During prosecution, claims must be given their broadest reasonable
interpretation when reading claim language in light of the specification as it
would be interpreted by one of ordinary skill in the art. In re Am. Acad. of
Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). Under this standard,
we interpret claim terms using “the broadest reasonable meaning of the
words in their ordinary usage as they would be understood by one of
ordinary skill in the art, taking into account whatever enlightenment by way
of definitions or otherwise that may be afforded by the written description
contained in the applicant’s specification.” In re Morris, 127 F.3d 1048,
1054 (Fed. Cir. 1997).
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criterion (limitations 3 and 4), and storing the generated multiple subsets of
profiles (limitation 6), would typically be used in generation of data profiles
for targeted advertisements, whether initiated person-to-person, on paper, or
using a computer.
With respect to this step of the analysis, Appellants argue the
Examiner’s citation to Affinity Labs, in the Advisory Action, quoting
Intellectual Ventures, is irrelevant because “the claim of Intellectual
Ventures is devoid of any discussion of how anything is accomplished, and
particularly of a three-tiered data structure defining an improvement to
computer technology as claimed by Appellant . . . it is clearly and
unquestionably apparent that the deficient claims of Intellectual Ventures are
in no way analogous to, or applicable when considering, Appellant’s present
claims.” App. Br. 19–20.
In response to Appellants’ argument, the Examiner reemphasized the
Federal Circuit’s holdings in Affinity Labs and Intellectual Ventures I.17
Ans. 5. Further, “Affinity Labs was relied on by the examiner merely to
articulate . . . that similar to the findings on this written opinion and
Intellectual Ventures, that the claims are directed, in part, to an abstract idea

17 See Affinity Labs of Texas, LLC v. Amazon.com Inc., 838 F.3d 1266, 1271
(Fed. Cir. 2016) (“This court, however, has held that ‘customizing
information based on . . . information known about the user’ is an abstract
idea . . . . The court in the Intellectual Ventures I case explained that
tailoring of content based on information about the user—such as where the
user lives or what time of day the user views the content—is an abstract idea
that is as old as providing different newspaper inserts for different
neighborhoods.”) (quoting Intellectual Ventures I LLC v. Capital One Bank
(USA), 792 F.3d 1363, 1369 (Fed. Cir. 2015)).
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. . . [of] providing targeted communications to a user based on information
known about the user.” Id.
Appellants take issue with the Examiner’s determination because the
abstractness of “‘providing targeted communications to a user based on
information known about the user’ . . . is not at issue in the instant case
because Appellant’s claims are not directed to ‘providing targeted
communications to a user based on information known about the user.’”
Reply Br. 7. Instead, Appellants argue:
[The] issue in the present case is the ability to take raw data and
transform it into manageable discrete values that are suitable for
inclusion in profiles and determining a storage and distribution
scheme for storing those profiles to promote a more rapid, and
thereby more efficient, response to queries of those profiles.
What a device does with search results provided by Appellant’s
claimed three-tiered data structure is immaterial to the claims at
issue and the present appeal as the improvement is brought
about by Appellant’s claimed three-tiered data structure.
Id.
We disagree with Appellants’ argument that Affinity Labs and
Intellectual Ventures are not analogous or relevant to Appellants’ claimed
invention. For example, the title of Appellants’ application for patent is
“Three Tier Data Structures for Targeting Data.” Spec. 1 (emphasis
added). The “Background” section of the Appellants’ Specification
describes targeted advertisements and matching them with user profiles.
Spec. ¶¶ 5–6. Appellants’ independent claim 8 recites, “transmitting . . .
profile subset to the ad gateway,” and independent claim 1 recites “the ad
gateway sends targeted ads to mobile communication devices of individuals
for display on the mobile communication devices based on the first profile
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subset, whereby rapid response to dynamic advertising targeting criteria
upon the first profile subset is promoted.” Claims App’x.
Therefore, we determine that targeting advertisements is central to the
claimed invention.
Further, we reemphasize the holding in Intellectual Ventures I, similar
in key respects to the claims before us on appeal, wherein tailoring content
based on information about the user was determined as being directed to an
abstract idea and, thus, patent-ineligible.
At step one of the Alice framework, it is often useful to
determine the breadth of the claims in order to determine
whether the claims extend to cover a “fundamental . . . practice
long prevalent in our system . . . .” Alice, 134 S. Ct. at 2356. As
noted, the claim relates to customizing information based on (1)
information known about the user and (2) navigation data . . . .
[T]ailoring is “a fundamental . . . practice long prevalent in our
system . . . .” Id. There is no dispute that newspaper inserts had
often been tailored based on information known about the
customer—for example, a newspaper might advertise based on
the customer’s location. Providing this minimal tailoring—e.g.,
providing different newspaper inserts based upon the location
of the individual—is an abstract idea.
Intellectual Ventures I, 792 F.3d at 1369.
Thus, under Step 2A(i), we agree with the Examiner that claim 8’s
method for transforming and organizing profile data using a data
management platform server and a plurality of cache managers in a 3-tier
data structure recites abstract ideas. We conclude claim 8, as a whole, under
our Revised Guidance, recites a judicial exception of a certain method of
organizing human activity, i.e., a commercial interaction (advertising), and
thus is an abstract idea.
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Step 2A(ii): Judicial Exception Integrated into a Practical Application?
If the claims are directed to a patent-ineligible concept, as we
conclude above, we proceed to the “practical application” Step 2A(ii) in
which we determine whether the recited judicial exception is integrated into
a practical application of that exception by: (a) identifying whether there are
any additional elements recited in the claim beyond the judicial exception(s);
and (b) evaluating those additional elements individually and in combination
to determine whether they integrate the exception into a practical
application.
We find each of the limitations (1) through (8) of claim 8 recite
abstract ideas as identified in Step 2A(i), supra, and none of the limitations
integrate the judicial exception of targeted advertising into a practical
application as determined under one or more of the MPEP sections cited
above. The claim as a whole merely uses instructions to implement the
abstract idea on a computer or, alternatively, merely uses a computer as a
tool to perform the abstract idea.
As to the specific limitations, we find limitation (9) (“sending . . . a
targeted advertisement to . . . an individual for display on the mobile
communication device based on the first profile subset”) recites insignificant
post solution activity.18 The Supreme Court guides that the “prohibition
against patenting abstract ideas ‘cannot be circumvented by attempting to
limit the use of the formula to a particular technological environment’ or
[by] adding ‘insignificant postsolution activity.’” Bilski, 561 U.S. at 610–11

18 We also note the “sending” step can be carried out by a human by use of
pen and paper. See CyberSource, 654 F.3d at 1375.
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(quoting Diehr, 450 U.S. at 191–92). On this record, we are of the view that
Appellants’ claims do not operate the recited generic computer components
in an unconventional manner to achieve an improvement in computer
functionality. See MPEP § 2106.05(a).
Therefore, we determine the claim as a whole merely uses instructions
to implement the abstract idea on a computer or, alternatively, merely uses a
computer as a tool to perform the abstract idea. Thus, on this record,
Appellants have not shown an improvement or practical application under
the guidance of Manual of Patent Examining Procedure section 2106.05(a)
(“Improvements to the Functioning of a Computer or to Any Other
Technology or Technical Field”) or section 2106.05(e)(“Other Meaningful
Limitations”). Nor do Appellants advance any arguments in the Brief(s) that
are directed to the Bilski machine-or-transformation test, which would only
be applicable to the method (process) claims on appeal. See MPEP
§§ 2106.05(b) (Particular Machine) and 2106.05(c) (Particular
Transformation).
With respect to this step of the analysis, Appellants contend:
[L]ike the claims in Enfish that resulted in an
improvement to the computer device itself, the present claims
result in an improvement to the recited devices by enabling the
devices of the claims to transact with each other more rapidly to
provide the first profile subset in response to dynamic
advertising targeting criteria faster than previously achievable.
This improvement over the methods of the prior art that would
otherwise be employed in the absence of the subject matter of
the present claims allows targeted ads to be selected,
transmitted to, and presented by a subject mobile device
communication within about 2 seconds after an initial request
by the device or after a request to push a specific ad to one or
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more mobile devices associated with a profile that satisfies a
targeting criteria is received . . . Such an improvement is
achieved through new database and data management
processes, as in Enfish. As such, an improvement to computer
related technology, namely to computer functionality such as
the ability to more rapidly provide the first profile subset in
response to dynamic advertising targeting criteria, is realized by
the present claims.
App. Br. 20–21.
In response to Appellants’ contentions, the Examiner determined that
storing the three tiers of data on three separate computers is irrelevant
because “[e]ach computer is a generic computer with storage and no
disclosed reason to be stored in three separate computers.” Ans. 7. The
Examiner also points to the Specification as disclosing, “[t]he data stores
112, 114, 118 may be implemented on different computers. Alternatively,
two or more data stores 112, 114, 118 may be implemented on the same
computer.” Id. (quoting Spec. ¶ 24). The Examiner further finds “the
remainder of the specification does not talk about any significance or desired
outcome predicated upon storing the data in multiple computers,” such that
it is clear that “the fact that the data tiers are stored on different computers
provides no substantial improvement or any articulated reason as to why one
might opt to store the data on multiple computers, and is little more than a
design choice.” Id.
Appellants respond that their “claims provide a specific, tailored
approach that creates the claimed three-tiered data structure to cause a more
rapid response to queries posed to the three-tiered data structure than similar
queries to a single-tiered data structure.” Reply Br. 8.
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Even assuming that the three tiers of data being stored on three
separate computers is not completely “irrelevant,” we are not persuaded by
Appellants’ argument that the claimed three-tiered data structure results in
faster response time to queries than a single-tiered data structure, because
Appellants have not explained in either the Appeal Brief or Reply Brief, nor
in the Specification, why this is the case.
Further, in Enfish, our reviewing court held claims directed to a self-
referential logical model for a computer database patent-eligible under step
one of Alice. Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1330 (Fed.
Cir. 2016). The disclosed technique enabled faster searching and more
effective storage of data than previous methods. Id. at 1333. The court
found the claims directed to “a specific improvement to the way computers
operate, embodied in the self-referential table” (id. at 1336), and explained
that the claims are “not simply directed to any form of storing tabular data,
but instead are specifically directed to a self-referential table for a computer
database” that functions differently than conventional databases. Id. at 1337.
In response to Appellants’ reliance upon Enfish, we find no analogy
between Appellants’ claimed 3-tier data structures for storing and targeting
data and a self-referential logical model for a computer database claims as in
Enfish.
Therefore, we conclude claim 8 fails the Step 2A(ii) analysis because
the abstract idea is not integrated into a practical application, and thus
claim 8 is directed to the judicial exception.
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Step 2B – “Inventive Concept” or “Significantly More”
If the claims are directed to a patent-ineligible concept, as we
conclude above, we proceed to the “inventive concept” step. For Step 2B we
must “look with more specificity at what the claim elements add, in order to
determine ‘whether they identify an “inventive concept” in the application of
the ineligible subject matter’ to which the claim is directed.” Affinity Labs
of Texas, LLC v. DIRECTV, LLC, 838 F.3d 1253, 1258 (Fed. Cir. 2016)
(quoting Elec. Power Grp., 830 F.3d at 1353).
In applying step two of the Alice analysis, our reviewing court guides
we must “determine whether the claims do significantly more than simply
describe [the] . . . abstract method” and thus transform the abstract idea into
patentable subject matter. Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709,
715 (Fed. Cir. 2014). We look to see whether there are any “additional
features” in the claims that constitute an “inventive concept,” thereby
rendering the claims eligible for patenting even if they are directed to an
abstract idea. Alice, 573 U.S. at 221 (quotation marks, citation omitted).
Those “additional features” must be more than “well-understood, routine,
conventional activity.” Mayo, 566 U.S. at 79.
Limitations referenced in Alice that are not enough to qualify as
“significantly more” when recited in a claim with an abstract idea include, as
non-limiting or non-exclusive examples: adding the words “apply it” (or an
equivalent) with an abstract idea19; mere instructions to implement an

19 Alice, 573 U.S. at 221–23.
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abstract idea on a computer20; or requiring no more than a generic computer
to perform generic computer functions that are well-understood, routine, and
conventional activities previously known to the industry.21
Evaluating representative claim 8 under step two of the Alice analysis,
we conclude it lacks an inventive concept that transforms the abstract idea of
targeting advertising into a patent-eligible application of that abstract idea.
The patent eligibility inquiry may contain underlying issues of fact.
Mortg. Grader, 811 F.3d at 1325. In particular, “[t]he question of whether a
claim element or combination of elements is well-understood, routine and
conventional to a skilled artisan in the relevant field is a question of fact.”
Berkheimer, 881 F.3d at 1368.
As evidence of the conventional nature of the recited “processor of the
server,” “non-transitory memory,” “network data store,” “profile data store,”
“profile subset data store,” “ad gateway,” and “mobile communication
devices,” in system claim 1, and similarly in method claim 8; and “profile
cache manager ,” “data management platform server,” and “client profile
cache manager,” in method claim 15, the Specification in paragraphs 42
through 48 discloses the well-understood, routine, and conventional nature
of the recited components. As a non-exhaustive example, “computer system
380 includes a processor 382 (which may be referred to as a central
processor unit or CPU) that is in communication with memory devices

20 Alice, 573 U.S. at 221, e.g., simply implementing a mathematical
principle on a physical machine, namely a computer (citing Mayo, 566 U.S.
at 84–85).
21 Alice, 573 U.S. at 225, e.g., using a computer to obtain data, adjust
account balances, and issue automated instructions.
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including secondary storage 384, read only memory (ROM) 386, random
access memory (RAM) 388, input/output (I/O) devices 390, and network
connectivity devices 392. The processor 382 may be implemented as one or
more CPU chips.” Spec. ¶ 42.
Thus, because the Specification describes the additional elements in
general terms, without describing the particulars, we conclude the claim
limitations may be broadly but reasonably construed as reciting conventional
computer components and techniques, particularly in light of Appellants’
Specification, as quoted above.22
With respect to this step of the analysis, Appellants argue:
Even if the additional elements were “well-understood,
routine, and conventional activity” as asserted by the Final
Office Action, which Appellant does not concede, Appellant
respectfully notes that the Federal Circuit recently ruled in
Bascom that “an inventive concept can still be found in the non-
conventional and non-generic arrangement of known,
conventional pieces.” . . . Similar to Bascom, the pending
claims recite an ordered combination of pieces that amount to
significantly more. Specifically . . . the claims provide a
technical solution that includes storing different tiers of data at
different levels of granularity on separate computers, which
increases the speed at which information can be accessed and
used to select advertisements, thereby amounting to
significantly more.
App. Br. 23–24.

22 Claim terms are to be given their broadest reasonable interpretation, as
understood by those of ordinary skill in the art and taking into account
whatever enlightenment may be had from the Specification. Morris, 127
F.3d at 1054.
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We note that in BASCOM, the claims were directed to the inventive
concept of providing customizable Internet-content filtering which, under
Step 2 of the Alice analysis, was found to transform the abstract idea of
filtering content into a patent-eligible invention. Although the underlying
idea of filtering Internet content was deemed to abstract, under step 2 of the
Alice analysis, the claims carved out a specific location for the filtering
system, namely a remote Internet service provider (ISP) server, and required
the filtering system to give users the ability to customize filtering for their
individual network accounts. BASCOM, 827 F.3d at 1349.
We are not persuaded by Appellants’ reliance upon BASCOM, supra,
because there is no evidence of record to substantiate the assertion that the
claims recite non-conventional and non-generic arrangement of known,
conventional elements, as in BASCOM. Moreover, we find no analogy
between Appellants’ claimed 3-tier data structures for targeting data and the
Internet content filtering claims in BASCOM.
The Manual of Patent Examining Procedure, based upon our
precedential guidance, provides additional considerations with respect to
analysis of the well-understood, routine, and conventional nature of the
claimed computer-related components.
Another consideration when determining whether a claim
recites significantly more than a judicial exception is whether
the additional elements amount to more than a recitation of the
words “apply it” (or an equivalent) or are more than mere
instructions to implement an abstract idea or other exception on
a computer. As explained by the Supreme Court, in order to
transform a judicial exception into a patent-eligible application,
the additional element or combination of elements must do
“‘more than simply stat[e] the [judicial exception] while adding
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the words ‘apply it’”. Alice Corp. v. CLS Bank, 573 U.S. __,
134 S. Ct. 2347, 2357, 110 USPQ2d 1976, 1982-83 (2014)
(quoting Mayo Collaborative Servs. v. Prometheus Labs., Inc.,
566 U.S. 66, 72, 101 USPQ2d 1961, 1965). Thus, for example,
claims that amount to nothing more than an instruction to apply
the abstract idea using a generic computer do not render an
abstract idea eligible. Alice Corp., 134 S. Ct. at 2358, 110
USPQ2d at 1983. See also 134 S. Ct. at 2389, 110 USPQ2d at
1984 (warning against a § 101 analysis that turns on “the
draftsman’s art”) . . . .
In Alice Corp., the claim recited the concept of intermediated
settlement as performed by a generic computer. The Court
found that the recitation of the computer in the claim amounted
to mere instructions to apply the abstract idea on a generic
computer. 134 S. Ct. at 2359-60, 110 USPQ2d at 1984. The
Supreme Court also discussed this concept in an earlier case,
Gottschalk v. Benson, 409 U.S. 63, 70, 175 USPQ 673, 676
(1972), where the claim recited a process for converting binary-
coded decimal (BCD) numerals into pure binary numbers. The
Court found that the claimed process had no substantial
practical application except in connection with a computer.
Benson, 409 U.S. at 71-72, 175 USPQ at 676. The claim simply
stated a judicial exception (e.g., law of nature or abstract idea)
while effectively adding words that “apply it” in a computer. Id.
MPEP § 2106.05(f) (“Mere Instructions To Apply An Exception”).
With respect to the Step 2B analysis, we conclude, similar to Alice, the
recitation of a method for transforming and organizing profile data using a
data management platform server and a plurality of cache managers in a 3-
tier data structure that includes a “first cache manager stored in a non-
transitory memory and executable by a processor,” a “network data store . . .
implemented on a first computer,” a “profile data store . . . implemented on a
second computer that is separate from the first computer,” a “second cache
manager stored in a non-transitory memory and executable by a processor,”
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a “profile subset data store . . . implemented on a third computer that is
separate from the first computer and the second computer,” an “ad gateway,”
and a “mobile communication device” (claim 8) as argued by Appellants,
and similarly for claims 1 and 15, is simply not enough to transform the
patent-ineligible abstract idea here into a patent-eligible invention under Step
2B. See Alice, 573 U.S. at 221 (“[C]laims, which merely require generic
computer implementation, fail to transform [an] abstract idea into a patent-
eligible invention.”).
We conclude the claims fail the Step 2B analysis because independent
claim 8 and, similarly, independent claims 1 and 15, in essence, merely
recite various computer-based elements along with no more than mere
instructions to implement the identified abstract idea using the computer-
based elements.
Therefore, in light of the foregoing, we conclude, under the Revised
Guidance, that Appellants’ claim 1, considered as a whole, is directed to a
patent-ineligible abstract idea that is not integrated into a practical
application and does not include an inventive concept. Accordingly, we
sustain the Examiner’s § 101 rejection of independent claim 1, and grouped
claims 2–7, 9–11, 13, 14, 16, and 18–20, not argued separately, and which
fall therewith. See Claim Grouping, supra.
REPLY BRIEF
To the extent Appellants may advance new arguments in the Reply
Brief (Reply Br. 4–9) not in response to a shift in the Examiner’s position in
the Answer, arguments raised in a Reply Brief that were not raised in the
Appeal Brief or are not responsive to arguments raised in the Examiner’s
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Answer will not be considered except for good cause (see 37 C.F.R.
§ 41.41(b)(2)), which Appellants have not shown.
CONCLUSION
Under our Revised Guidance, governed by relevant case law,
claims 1–11, 13–16, and 18–20, rejected under 35 U.S.C. § 101, are directed
to patent-ineligible subject matter, and we sustain the rejection.
DECISION
We affirm the Examiner’s decision rejecting claims 1–11, 13–16,
and 18–20.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). See 37
C.F.R. § 41.50(f).
AFFIRMED