Roddy Mckee. Bullock

Patent Trials and Appeals Board

Oct 11, 2019

14664843 - (D) (P.T.A.B. Oct. 11, 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.
14/664,843 03/21/2015 Roddy McKee Bullock RB123110C4 6020
89123 7590 10/11/2019
Roddy M. Bullock
936 Hidden Ridge
Milford, OH 45150
EXAMINER
YOON, ERIC
ART UNIT PAPER NUMBER
2143
MAIL DATE DELIVERY MODE
10/11/2019 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

Ex parte RODDY MCKEE BULLOCK

Appeal 2018-009156
Application 14/664,843
Technology Center 2100

Before ERIC S. FRAHM, STEVEN M. AMUNDSON, and
MICHAEL T. CYGAN, Administrative Patent Judges.

CYGAN, 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, 2, 4, 5, 7–18, and 20–22. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies the real party in interest as Roddy M.
Bullock. Br. 1.
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CLAIMED SUBJECT MATTER
The claims are directed to a device, system, and method for presenting
supplemental information on a display. Spec. 3:18–25. Claim 1 is
illustrative (underlining omitted):
1. A device comprising:
a display;
one or more processors;
one or more computer-readable media;
a provider interaction module maintained on the one or more
computer-readable media and executed on the one or more
processors to receive, from a computing device of a digital
work provider, a digital work and supplemental information
corresponding to the digital work, the supplemental information
including an index of objects identified in the digital work and
prestored content related to at least one of the objects;
a digital work display module maintained on the one or more
computer-readable media and executed on the one or more
processors to display the digital work on the display; and
a supplemental information display module maintained on the
one or more computer readable media and executed on the one
or more processors to display the supplemental information on
the display in response to a user selection of an object in the
digital work displayed on the display, the supplemental
information including a visual representation of a location of
one or more occurrences of the object in the digital work.
Claim 5 sets forth a method having limitations commensurate to those
in claim 1. Claim 15 sets forth a system having limitations directed towards
generating the supplemental information that is received by the device of
claim 1:
15. A system comprising:
one or more processors;
one or more computer-readable media;
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a supplemental information generation module maintained on
the one or more computer-readable media and executed on the
one or more processors to perform operations that include:
parsing a digital work to identify items in the digital work as
candidates for designation as objects in the digital work; and
generating supplemental information for the digital work, the
supplemental information including an index for the objects
identified in the digital work, the index including locations of
one or more occurrences of the objects in the digital work; and
a delivery module maintained on the one or more computer-
readable media and executed on the one or more processors to
deliver the digital work and the supplemental information for
the digital work to an electronic device.
Dependent claims 2, 4, 7–14, 16–18, and 20–22 each incorporate the
limitations of their respective independent claims. Claims 3, 6, and 19 have
been cancelled during prosecution.

REFERENCES
Name Reference Date
Eberhard et al.
(“Eberhard”)
US 6,331,867 B1 Dec. 18, 2001
Sherman US 2009/0106206 A1 Apr. 23, 2009 (issued);
Sept. 24, 2008 (filed)
Horowitz et al.
(“Horowitz”)
US 6,122,647 Sept. 19, 2000

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REJECTION(S)
A. Claims 1, 2, 4, 5, 7–18, and 20–22 are rejected under 35 U.S.C. § 101
as lacking patent-eligible subject matter.
B. Claims 1, 2, 4, 5, 7–13, 15, 16, 18, and 20–22 are rejected under
35 U.S.C. § 103(a) as being unpatentable over Eberhard and Sherman.
C. Claims 14 and 17 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Eberhard, Sherman, and Horowitz.

OPINION
A. Claim Construction
Claim 1 recites, in addition to a display, processor(s), and computer-
readable media, three “modules” stored on the media and executed on the
processor(s). These are the “provider interaction module,” the “digital work
display module,” and the “supplemental information display module.” The
record does not indicate whether these terms have been construed under
35 U.S.C. § 112 ¶ 6.2 In construing these terms, we are guided by the
Specification, and in particular, the Appellant’s identification of those
portions of the Specification that support those terms.
With respect to the “provider interaction module,” which, as claimed,
performs the function of receiving digital work and supplemental

2 We need not, for purposes of resolving the 35 U.S.C. §§ 101 and 103
inquiries on the facts before us, resolve the issue of whether the claims are in
35 U.S.C. § 112 ¶ 6 form, and the corollary issues of whether the claims
meet the requirements of 35 U.S.C. § 112 ¶ 2 and written description under
35 U.S.C. § 112 ¶ 1. Should further prosecution occur, inquiry into such
issues may be appropriate.
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information, Appellant identifies support at page 11, lines 5–8 of the
Specification. Br. 2. The Specification at this section states, in full:
example, but in an e-book “flipping” is cumbersome. Using
“back” buttons, or a search feature and a mini-keyboard make
the equivalent of “flipping pages” burdensome. In the
enhanced e-book of the present invention, however, the
problem is solved by providing context-specific information
about people and places simply by selecting the
The “provider interaction module” is, thus, equated to an e-book structure
that does not use “back” buttons or a search feature and a mini-keyboard, but
does provide information by selecting. Appellant’s Specification further
explains that the disclosed invention is implemented on an e-book reader,
listing numerous “[c]urrent e-book readers” without limiting the invention to
any of those readers. Spec. 6:11–23. The Specification further states that
the enhanced e-book reader can have a touchscreen and E-ink Vizplex
technology, listing various types of technology from different sources that
are suitable for the present invention. Id. at 6:34–8:7. The Specification
states that current e-books, and traditional books converted to e-books, “can
be modified to be an enhanced e-book of the present invention by making
modification to the source file of the electronic work” or “by the
incorporation in the device memory additional files,” which may be of “any
known format.” Id. at 6:1–7. The Specification further describes the
selection function as being implemented by “[a]ny known method, and any
future-developed methods, of selecting a term, word, phrase or section of a
screen on an electronic device.” Id. at 8:8–10. Appellant has further stated
that the “receiving” function of the “provider interaction module”
can be practiced by a user by, for example, downloading a
digital work from a provider’s web server, such as downloading
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a digital book from Amazon’s website, as is well known in the
field of e-books.
Appellant’s Remarks to Non-Final Rejection, Aug. 31, 2017, at 9.
Based upon the entirety of the record, we construe the structure of the
“provider interaction module” as that of a “current” e-book having structure
so as to download digital information as is well known in the field of e-
books.
With respect to the “digital work display module,” performing the
claimed function of displaying a digital work on a display, Appellant
identifies support at page 5, lines 13–16 of the Specification. Br. 2. The
Specification at this section states, in full:
Detailed Description of the Invention As used herein, the
term “reader” or “e-book reader” is used with reference to
electronic devices used for presenting reading material to a
human reader. Thus, a distinction is intended to be made
throughout between a “reader”, referring to a
The “digital work display module” is thus structurally equated to an
electronic device used for presenting reading material to a human reader. In
view of the entirety of the record, we construe the “digital work display
module” as having a structure of a “current” e-book reader that uses one of
the display structures enumerated in the Specification for displaying a digital
work, such as an e-book, on a display.
With respect to the “supplemental information display module,”
performing the claimed function of displaying supplemental information on
a display in response to a user selection, Appellant identifies support at page
9, lines 1–4 of the Specification. Br. 2. The Specification at this section
states, in full:
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existing formats, and the enhanced e-book reader of the present
invention can employ executable instructions in memory to
display existing source file formats, as well as any compatible
future-developed formats. Current e-books are essentially
converted print books. That is, current e-books are
The “supplemental information display module” is thus structurally equated
to executable instructions on an electronic device used for presenting
existing (or yet-to-be-developed) file formats. As noted, supra, the
Specification equates the structure of displaying to the structure provided by
current e-books, and equates the structure of selecting to the structure of any
known (or yet-to-be-developed) methods of selecting a term, word, phrase,
or section of a screen on an electronic device. In view of the entirety of the
record, we construe the “supplemental information display module” as
having a structure of a “current” e-book reader that uses one of the display
structures enumerated in the Specification for displaying a digital work, such
as an e-book, on a display, using any known method for selecting
information displayed.
Claim 15 recites, in addition to processor(s) and computer-readable
media, a “supplemental information generation module” that performs
operations of parsing a digital work and generating supplemental
information including an index for the objects identified in the digital work,
and a “delivery module” to deliver the digital work and supplemental
information to an electronic device.
With respect to the “supplemental information generation module,”
Appellant identifies support at page 12, lines 17–23 of the Specification.
Br. 3. The Specification at this section states, in full:
or an online blog might, for example, wish to augment a story
with context-specific information generated specifically for the
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context of the online story (as opposed to “canned” or generic
links to people and place names, as is currently utilized in
online journalism). Thus, a political writer may, in a story
about US Presidents and their flaws mention President Clinton
with selectable context-specific information displayable upon
selection stating, “Recall President Clinton was impeached for
his hands-on approach to Oval Office affairs.”
The Specification further indicates that the augmentation is performed
by a journalist, an author, or by a reader; i.e., that a human may generate the
specifically generated information. Spec. 11:17–18, 12:16–20. The parsing
operation is identified as being supported by the Specification at page 14,
lines 7–18, which describes methods of presenting the generated information
(“pop-up” window, widget, speech bubble, audible presentation). However,
the referenced portion of the Specification does not directly disclose how the
digital work is parsed by a processor, only that audible information may be
“in the form of voice-recorded audio files, or computer-generated voice
output of text files.” Spec. 14:9–12. In view of the entirety of the record,
we construe the “supplemental information generation module” as having a
structure in which the processor is instructed to augment identified terms in
a digital work with generated information.
With respect to the “delivery module,” Appellant states, “the system
of processors and computer-readable media of a digital work provider (well
known in the art) “‘facilitat[es] downloading the electronic file to e-book
readers,’ i.e., delivers the digital work and the supplemental information for
the digital work to an electronic device, as claimed in [c]laim 15.”
Appellant’s Remarks to the Non-Final Rejection, Aug. 31, 2017, at 10.
Based upon the entirety of the record, we construe the structure of the
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“delivery module” as that of a “current” e-book having structure so as to
download digital information as is well known in the field of e-books.
B. Rejection Under 35 U.S.C. § 101
We have reviewed the Examiner’s subject-matter eligibility rejection
(Final Act. 3–5) in light of Appellant’s contentions that the Examiner has
erred (Br. 5–14). Further, we have reviewed the Examiner’s response to
Appellant’s arguments (Ans. 22–26). We are not persuaded by Appellant
that the Examiner erred in rejecting the pending claims 1, 2, 4, 5, 7–18, and
20–22 under 35 U.S.C. § 101.
Appellant presents three contentions of error in the Final Action.
Br. 4. First, Appellant contends that the rejection fails to consider the claims
as a whole, overgeneralizing the claims. Id. Second, Appellant contends
that the rejection’s citations to case law are less relevant than the Federal
Circuit’s reasoning in Core Wireless Licensing S.A.R.L. v. LG Electronics,
Inc., 880 F.3d 1356, 1363 (Fed. Cir. 2018). Id. Third, Appellant contends
that the rejection neglects to consider the lack of preemption reflected in
Appellant’s claims. Id.
With respect to Appellant’s third contention of error, we are not
persuaded by Appellant’s preemption argument because preemption
concerns are addressed by the Supreme Court’s eligibility framework as
applied here, infra. Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d
1371, 1379 (Fed. Cir. 2015) (stating “[w]here a patent’s claims are deemed
only to disclose patent ineligible subject matter under the Mayo framework,
. . . preemption concerns are fully addressed and made moot”). A lack of
complete preemption does not make the claims any less abstract. OIP
Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1362–63 (“[T]hat the
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claims do not preempt all price optimization or may be limited to price
optimization in the e-commerce setting do not make them any less
abstract.”).
1. Principles of Law
Patent-eligible subject matter is defined in 35 U.S.C. § 101 of the
Patent Act, which recites:
Whoever invents or discovers any new and useful process,
machine, manufacture, or composition of matter, or any new
and useful improvement thereof, may obtain a patent therefor,
subject to the conditions and requirements of this title.
There is, however, an implicit, longstanding exception to patent-
eligible subject matter in 35 U.S.C. § 101: “[l]aws of nature, natural
phenomena, and abstract ideas are not patentable.” Alice Corp. v. CLS Bank
Int’l, 573 U.S. 208, 216 (2014) (citation omitted). This exception precludes
patenting of “the basic tools of scientific and technological work” from
which all inventions spring. Id. at 216–17 (quotation marks and citation
omitted). Invention or discovery under § 101 is distinguished as being the
application of such tools to an end otherwise satisfying the requirements of
the patent statute. See Gottschalk v. Benson, 409 U.S. 63, 67 (1972).
The Supreme Court has established a framework for this eligibility
determination. Where a claim is directed towards a law of nature, natural
phenomena, or abstract idea, the elements of the claim as a whole must
ensure that the claim, in practice, amounts to significantly more than a patent
on the law of nature, natural phenomena, or abstract idea itself. Alice, 573
U.S. at 217–18. In applying this eligibility analysis, our reviewing court has
stated, “the decisional mechanism courts now apply is to examine earlier
cases in which a similar or parallel descriptive nature can be seen[,] . . . the
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classic common law methodology for creating law when a single governing
definitional context is not available.” Amdocs (Isr.) Ltd. v. Openet Telecom,
Inc., 841 F.3d 1288, 1294 (Fed. Cir. 2016) (citation omitted).
To address the growing body of precedent, the USPTO recently
published revised examination guidance on the application of § 101. 2019
Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50, 50
(Jan. 7, 2019) (hereinafter “2019 Guidance”). The 2019 Guidance seeks to
improve the clarity of the subject-matter-eligibility analysis and improve
consistency of this analysis across the USPTO. Id.
Under the 2019 Guidance, we first look to whether the claim is
directed to a judicial exception because:
(1) the claim recites a law of nature, natural phenomenon, or abstract
idea, the last of which includes certain groupings, identified as
mathematical concepts, certain methods of organizing human activity,
and mental processes; and
(2) the claim as a whole fails to recite additional elements that
integrate the judicial exception into a practical application (see
Manual of Patent Examination Procedure (hereinafter “MPEP”)
§§ 2106.05(a)–(c), (e)–(h) (9th ed. rev. 08.2017 Jan. 2018).
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:
adds a specific limitation beyond the judicial exception that are not
“well-understood, routine, conventional” in the field (see MPEP
§ 2106.05(d)); or instead,
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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, passim.
2. “Recites an Abstract Idea”
In the Final Action, the Examiner described claim 1 as being directed
to a judicial exception, described as “receiving a digital work and
supplemental information; displaying the supplemental information on the
display in response to a user selection of an object in the digital work, the
supplemental information including a visual representation of a location of
one or more occurrences of the object in the digital work.” Final Act. 3.
The Examiner found these limitations similar to those that have been
identified as abstract by the Federal Circuit. Id. (citing, for “collecting,
displaying and manipulating data,” Intellectual Ventures I LLC v. Capital
One Bank (USA), 792 F.3d 1363 (Fed. Cir. 2015); for “collecting
information, analyzing it and displaying certain results of the collection and
analysis,” Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350 (Fed. Cir.
2016); for “generating tasks; storing rules for determining task to be
completed upon an event,” Accenture Glob. Servs., GmbH v. Guideware
Software, Inc., 728 F.3d 1336 (Fed. Cir. 2013); for “generating a rule for
monitoring data; applying the rule to the data to determine if an event
occurred; providing notification of the event,” FairWarning IP, LLC v. Iatric
Sys., Inc., 839 F.3d 1089 (Fed. Cir. 2016)).
Appellant, in their first contention of error, characterizes the
Examiner’s identification of the judicial exception, as being “a particular
visualization of data in an electronic device,” which Appellant alleges to be
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a “gross oversimplification.” Br. 6. Appellant characterizes the abstract
idea in Electric Power as “processes of information collection and analysis”
that were “directed to the problem-to-be-solved rather than the actual and
concretely defined solution to the problem.” Id. Appellant contends that
Appellant’s claims are directed to a particular means for achieving the goals,
and not to those goals themselves. Id. at 7. Appellant argues that claim 1
(as well as the other appealed claims) does not merely collect information
and analyze it. Id. at 8.
In Appellant’s second contention of error, Appellant analogizes the
present claims to Core Wireless in that “the claimed invention was an
improved user interface rather than the abstract idea of an index.” Br. 8.
Appellant contends that, like Core Wireless, Appellant’s claims are like
Core Wireless in that they are directed to “a specific manner of displaying a
limited set of information to the user, rather than using conventional user
interface methods to display a generic index on a computer.” Id. at 10.
Under the 2019 Guidance, we first determine whether the claim
recites one or more limitations corresponding to mathematical concepts,
certain methods of organizing human activity, and mental processes. 2019
Guidance, 84 Fed. Reg. at 52. Although Appellant contends that the claims
are not directed to an abstract idea, Appellant does not contend that the
claims do not recite an abstract idea. Appellant characterizes claim 1 as
similar to the claimed invention in Core Wireless (Br. 8–12). However, the
Federal Circuit did not characterize the claimed invention in Core Wireless
as failing to recite an abstract idea; instead, the court stated that “the generic
idea of summarizing information certainly existed prior to the invention.”
Core Wireless, 880 F.3d at 1362. We determine that, like the invention in
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Core Wireless, the claimed invention recites summarizing information,
which, in the claimed invention, is a type of mental process that can
practically be performed in the human mind. Accordingly, we do not find
error in the Examiner’s determination that the claims recite an abstract idea.
3. “Directed to an Abstract Idea”
Having found the claims to recite an abstract idea, we next determine
whether the claims are directed to that abstract idea. Appellant relies upon
alleged improvements and efficiencies, citing in particular the improved
abilities of enhanced e-book technology in “the type of information available
to the human reader, as well as the manner in which it is accessed.” Br. 11
(citing Spec. 9). Appellant contends that these may be described “exactly as
the Federal Circuit described Core Wireless’ disclosure in which the
‘disclosed invention improves the efficiency of using the electronic device by
bringing together “a limited list of common functions and commonly
accessed stored data,” which can be accessed directly from the main
menu.’” Id. at 11–12.
In Core Wireless, the claimed invention specified particular
technological functionality in the form of “an application summary that can
be reached directly from [a] menu” such that the summary window “is
displayed while the one or more applications are in an un-launched state.”
Core Wireless, 880 F.3d at 1362–63. The court in Data Engine
Technologies characterized the claimed invention in Core Wireless as not
“merely directed to the abstract idea of indexing information,” but instead
providing “an improved user interface for electronic devices” such that the
claim “was directed to ‘an improvement in the functioning of computers.’”
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Data Engine Techs. LLC v. Google LLC, 906 F.3d 999, 1009 (Fed. Cir.
2018).
In Data Engine Technologies, the court addressed a set of claims
directed to a specific method of navigating three-dimensional spreadsheets
through the use of tabs. Id. at 1008–09. The inventive tabs permitted easy
access to spreadsheet workspaces that previously required a user to “search
through complex menu systems” and “memorize frequently needed
commands.” Id. at 1008. Certain claims “require[d] at least one user-
settable identifying character to label the notebook tab and describes
navigating through the various spreadsheet pages . . . that are identified by
their tabs.” Id. The court found the claims to require a “specific interface
and implementation for navigating complex three-dimensional spreadsheets
using techniques unique to computers.” Id. at 1009. The court distinguished
the claimed invention from one that would merely recite “a generic method
of labeling and organizing” spreadsheet data. Id. at 1008–09.
The court in Data Engine further addressed claims that recited
“associating each of the cell matrices with a user-settable page identifier”
without “the specific implementation of a notebook tab interface.” Id. at
1012. The court held that these were claims not limited to the “specific
technical solution and improvement in electronic spreadsheet functionality”
set forth in the eligible tab claims and were, thus, found ineligible. Id.
Appellant here argues improved abilities of enhanced e-book
technology in “the type of information available to the human reader, as well
as the manner in which it is accessed.” Br. 11. However, Appellant has not
shown that the claimed invention is commensurate in scope with the type of
“specific interface and implementation for navigating” as presented in Core
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Wireless. Instead, Appellant’s claimed invention relies upon a “provider
interaction module,” structurally comprising well-known e-book
downloading technology, a “digital work display module,” structurally
comprising currently available e-book display technology, and a
“supplemental information display module,” structurally comprising the
display structures of a “current” e-book reader using any known method for
selecting information displayed. See supra Section A.
Rather than presenting a specific interface and implementation for
navigating, as in Core Wireless, Appellant’s claimed invention is of similar
character to the patent-ineligible claims in Data Engine that associated data
with a certain location, but lacked a specific technical improvement in
functionality. Data Engine, 906 F.3d at 1012. Appellant has not pointed to
any effect of the combination of limitations additional to the identified
abstract idea, characterized by the Specification as known e-book, display,
and selection technology, that provides an improvement in e-book
technology. The additional limitations of Appellant’s claim 1 merely require
that supplemental information, i.e., information not contained within the
displayed e-book, be displayed upon selection. However, Appellant has not
persuasively shown an improvement to e-book technology. Instead,
construing the claims under guidance provided by Appellant and on the
record, Appellant’s claimed invention relates certain data to certain
locations, and uses “current” technology to access that data. Under USPTO
Guidance, and our reviewing court’s precedent, this is not enough to
demonstrate an improvement to e-book technology.
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4. Significantly More Than the Abstract Idea
Where a claim is directed to an abstract idea, the additional limitations
of the claim may provide an inventive concept so as to provide subject-
matter eligibility. An inventive concept may be shown where a limitation or
combination of limitations is more than well-understood, routine,
conventional activity.
As discussed, supra, claim 1 contains the additional limitations of a
generic display, processor(s), and computer-readable media, three
“modules” stored on the media and executed on the processor(s). These are
the “provider interaction module,” the “digital work display module,” and
the “supplemental information display module.” Taken individually, the
limitations of a generic display, processor(s) and computer-readable media
have been found to be conventional computer components for accessing and
displaying data, such that they do not provide eligibility to an otherwise
ineligible abstract idea. Versata Dev. Grp., Inc. v. SAP Am., Inc., 793 F.3d
1306, 1334 (Fed. Cir. 2015); OIP Techs., 788 F.3d at 1363. As discussed,
Appellant’s Specification has defined the “provider interaction module,” the
“digital work display module,” and the “supplemental information display
module” as comprising current or known technology for receiving,
displaying, and selecting data. Supra Section A. Accordingly, none of the
additional limitations, taken individually, provide subject matter eligibility.
When viewed as an ordered combination, claim 1 at most presents a
device for presenting a different type of information on a display, i.e., a
visual representation of a location of occurrence(s) of an object in a digital
work. However, Appellant has not persuaded us that such information
requires more than the conventionally described components performing
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their conventional activities to display information relating to a digital work.
Aside from the informational content of the data being displayed, the
structure of claim 1 contains elements that, viewed as a whole, comprise an
e-book that does not perform operations that are disclosed in the
Specification to be different from the ordinary course of operations in an e-
book. See DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1258
(Fed. Cir. 2014) (finding claims eligible because they “override[] the routine
and conventional sequence of events ordinarily triggered by the click of a
hyperlink”). Accordingly, Appellant has not persuasively shown that any
individual additional limitation, or the ordered combination of additional
limitations, amounts to more than well-understood, routine, conventional
activity. We, therefore, determine that claim 1 is ineligible under 35 U.S.C.
§ 101.
5. Claims 2, 4, 5, and 7–14
Appellant does not argue separately the limitations of dependent
claims 2 and 4; accordingly, they stand or fall with claim 1, and the rejection
of those claims under § 101 is sustained. Claim 5, and its dependent claims
7–14, are directed to a method having similar scope to that of claim 1.
Appellant contends that the rejection under § 101 of claims 5 and 7–14
should be reversed for the same reasons as for claim 1. Br. 8, 12. The
limitations of claim 5 are analogous to those of claim 1, including “storing
. . . a digital work and supplemental information,” “presenting the digital
work on a display,” “receiving a selection of a first object,” and “presenting
. . . supplemental information on the display in response to the selection of
the first object.” These limitations are of sufficiently similar scope to those
of claim 1, and in the absence of argument from Appellant to distinguish the
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subject-matter eligibility of those claims, we determine that those claims
lack subject-matter eligibility for the same reasons as set forth as for claim 1.
6. Claims 15–18 and 20–22
With respect to claim 15, Appellant has not separately argued the
subject matter eligibility of claim 15 or its dependent claims 16–18 and 20–
22. Br. 8, 12. Claim 15 recites, in addition to generically claimed
processor(s) and computer-readable media, a “supplemental information
generation” module the performs operations of parsing a digital work and
generating supplemental information including an index for the objects
identified in the digital work, and a “delivery module” to deliver the digital
work and supplemental information to an electronic device. We determine
that claim 15 recites the same abstract idea as claim 1, for the same reasons
as set forth supra at Section B(2).
As discussed (supra Section A), the “supplemental information
generation module” is a structure in which the processor is instructed to
augment a digital work with context-specific information, and the “delivery
module” is that of a “well-known” system of processors and computer-
readable media. Appellant describes advantages that may be gained by a
reader’s knowledge of the augmented context-specific information,
including being “reminded of the relationship and significance of a place to
a story’s plotline.” Spec. 12:11–12. However, Appellant has not
persuasively explained how this advantage is tied to any specific improved
technology in claim 15, in view of the generically claimed processor(s) and
computer-readable-media, their “well-known” arrangement to deliver digital
work and supplemental information to an electronic device, and the
supplemental information generation module that is disclosed, at best, as
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collecting and indexing human-generated content, as applied to the field of
use of e-book readers.
Much like claim 1, the scope of claim 15 sets forth an arrangement
more similar to that found ineligible in Data Engine, as associating data with
a certain location, than to that found eligible in either Core Wireless or DDR.
We are, therefore, not persuaded by Appellant that claim 15 is directed to an
improvement in e-book technology. Accordingly, we determine that claim
15 is directed to an abstract idea. We further determine that when viewed
individually, the generically claimed processor(s) and computer-readable
media are conventional computer components for accessing and displaying
data, such that they do not provide eligibility to an otherwise ineligible
abstract idea. Versata, 793 F.3d at 1334; OIP Techs., 788 F.3d at 1363.
Appellant has described the “delivery module” as being well known, and the
“supplemental information generation module” to comprise collecting
human-generated content, which, as data gathering, does not provide
eligibility to an otherwise ineligible abstract idea. The indexing function is
not an additional limitation here as it is considered part of the abstract idea.
A “claimed invention’s use of the ineligible concept,” e.g., an abstract idea,
“cannot supply the inventive concept that renders the invention ‘significantly
more’ than that ineligible concept.” BSG Tech LLC v. BuySeasons, Inc.,
899 F.3d 1281, 1290 (Fed. Cir. 2018). Accordingly, the additional
limitations, considered individually, do not provide subject matter eligibility.
When viewed as an ordered combination, Appellant has not persuaded
us that the additional limitations of claim 15 require more than the
conventionally described components performing their conventional
activities to gather and deliver information relating to a digital work.
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Consequently, Appellant has not persuasively shown that any individual
additional limitation, or the ordered combination of additional limitations,
amounts to more than well-understood, routine, conventional activity.
Accordingly, we determine that claim 15, and its dependent claims 16–18
and 20–22, which were not argued separately, are ineligible subject matter
under 35 U.S.C. § 101.
For the above-described reasons, we sustain the Examiner’s rejection
of claims 1, 2, 4, 5, 7–18, and 20–22 under 35 U.S.C. § 101 as lacking
patent-eligible subject matter.
C. Rejections Under 35 U.S.C. § 103
We have reviewed the Examiner’s obviousness rejections (Final Act.
6–23) in light of Appellant’s contentions that the Examiner has erred (Br.
14–20). Further, we have reviewed the Examiner’s response to Appellant’s
arguments (Ans. 26–31). We are not persuaded by Appellant that the
Examiner erred in rejecting the pending claims 1, 2, 4, 5, 7–18, and 20–22
under 35 U.S.C. § 103(a).
Appellant contends error in the Examiner’s obviousness rejection,
alleging that (1) Appellant’s defined use of the term “supplemental
information” was not considered in finding that Eberhard teaches the
features associated with this term, and (2) Appellant’s defined use of the
term “location” was not considered in finding that Sherman teaches the
features associated with this term. Br. 5.
With respect to claims 1, 2, 4, 5, 7–13, 15, 16, 18, and 20–22, the
Examiner has determined that the combination of the teachings and
suggestions of Eberhard and Sherman renders those claims obvious. With
respect to representative claim 1, the Examiner has determined that Eberhard
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teaches or suggests a display, processor(s), computer-readable media, and a
reader device receiving digital works from network sites and supplemental
information that may be combined with the associated digital work, wherein
the digital work is displayed on a display, and wherein the supplemental
information can be displayed when a user selects a term and gets associated
information. Final Act. 6–7. The Examiner has determined that Eberhard
fails to expressly disclose the supplemental information including an index
of objects identified in the digital work and representative of a location of
one or more occurrences of the object in the digital work. Id. at 8. The
Examiner has determined that Sherman provides the missing teachings, in
the form of a lookup table for associating entries of supplemental
information with key entries of terms. Id. (citing Sherman ¶ 25). The
Examiner further has determined that Sherman teaches or suggests the
supplemental information including a visual representation of a location of
one or more occurrences of the object in the digital work, through Sherman’s
use of highlighting previous and later occurrences of a selected term.
Id. (citing Sherman ¶¶ 35–57, 357–359)
Appellant first contends that “supplemental information” should be
read as limited only to context-specific information; i.e., “information
generated or tailored to inform a human reader with respect to a term, word,
or phrase within a specific context in the reading material.” Br. 15; Spec.
19:16–18. Appellant contends that such information must be altered from
standard or general content and is, therefore, not taught by content from a
dictionary such as taught or suggested by Eberhard. Id. at 15–16.
We are not persuaded by Appellant’s argument that the Specification
limits the claim term “supplemental information” only to information that
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must be altered from standard or general content. The Specification defines
context-specific information as including the definition of a term as it is used
in context, which may not differ from the general dictionary definition of a
term where there are not multiple definitions of that term. Spec. 12:35–13:4.
Based upon this explanation, context-specific information may simply be
selected content, rather than altered content. Accordingly, Appellant has not
distinguished a “context-specific” definition from Eberhard’s provision of a
definition from a pre-specified technical field-specific reference, such as a
medical dictionary, or a custom reference. Final Act. 27; Eberhard 9:6–12.
Additionally, the Examiner has relied on features from Sherman to be
incorporated to “obtain more, context-relevant information about particular
terms.” Final Act. 8–10 (citing Sherman ¶¶ 11–12). Sherman teaches a
“Progressive Reference” in which a reader tapping on a word will call up
information appropriate to where the user saw the text in the source material.
Sherman ¶¶ 11–12. Such information is specific to the context of the
position of the word in the text, such that information on a word at page 72
of the second volume in a series will reflect all that has been revealed up to
page 72, and nothing beyond that. Id. To the extent that Appellant argues
solely that Eberhard lacks a teaching of context-relevant information, and
has not addressed the Examiner’s reliance on Sherman, it is well established
that one cannot show nonobviousness by attacking references individually
where the rejections are based on combinations of references. In re Keller,
642 F.2d 413 (CCPA 1981); In re Merck & Co., Inc., 800 F.2d 1091 (Fed.
Cir. 1986).
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Furthermore, the claim term “supplemental information” is not limited
to Appellant’s disclosed, but not claimed, exemplary context-specific
information. Our reviewing court has stated:
Though understanding the claim language may be aided by the
explanations contained in the written description, it is important
not to import into a claim limitations that are not a part of the
claim. For example, a particular embodiment appearing in the
written description may not be read into a claim when the claim
language is broader than the embodiment.
SuperGuide Corp. v. DirecTV Enters., Inc., 358 F.3d 870, 875 (Fed. Cir.
2004).
Appellant’s Specification discusses an embodiment in which context-
relevant information is used as part of an enhanced search feature. Spec.
19:26–20:6. Context-specific information is disclosed as being
“supplemental information created to supplement a base work, and added to
a base work to provide memory-refreshing information.” Id. at 19:29–32.
The Specification presents context-specific information as a type of
supplemental information; i.e., supplemental information that is added for
the specific purpose of providing memory-refreshing information. Other
disclosed embodiments cause additional information, such as dictionary,
rhymes, or thesaurus operations to be performed by touching a word on the
touchscreen. Id. at 8:16–27. Even though “context-specific information” is
the sole embodiment mentioning supplemental information, it is nevertheless
improper to import the narrower type of context-relevant information into
the claims. See Altiris, Inc. v. Symantec Corp., 318 F.3d 1363, 1371 (Fed.
Cir. 2003).
We further agree with the Examiner’s determination that Appellant
has not explicitly defined the term “supplemental information” in the
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Specification. Ans. 27. Where the Specification is ambiguous as to whether
the inventor used claim terms inconsistent with their ordinary meaning, the
ordinary meaning will apply. Merck & Co. v. Teva Pharms. USA, Inc., 395
F.3d 1364, 1370 (Fed. Cir. 2005). We are not persuaded by Appellant that
the term “supplemental information” has been unambiguously limited to
context-specific information, instead of representing an umbrella category of
information of which context-specific information is one type of
supplemental information.
Moreover, claim 1 is a claim to a system, which is defined by its
structural limitations, and not by the operations it performs. Hewlett-
Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469 (Fed. Cir. 1990)
(“[A]pparatus claims cover what a device is, not what a device does.”).
Even if Appellant’s claims were limited to context-specific information,
claim 1 is defined by the structural limitations of the claimed “provider
interaction module” and “supplemental information display module.” These
modules are construed in light of the Specification as comprising “current”
e-book structure that receives digital information and displays digital
information, including visual representation of the occurrences of the object
in the digital work. Supra at 7. Appellant has not explained how, nor do we
determine that, the structures corresponding to the “provider interaction
module” and “supplemental information module” are distinguished by the
informational content that is being received and displayed. Consequently,
even if the “supplemental information” were limited to context-specific
information and not general dictionary-derived information, Appellant has
not structurally distinguished claim 1 from the combined teachings of
Eberhard and Sherman.
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Appellant next contends that Sherman’s teaching of “displaying ‘a
sentence with the last occurrence of the [searched for] text’” is not teaching
of a “visual representation of a location of one or more occurrences of an
object in the digital work” as set forth in claim 1. Br. 17. Specifically,
Appellant argues that the visual representation of a sentence is not a visual
representation of a location, and that Sherman does not teach a showing of
where in a base work that a given term appears. Id. at 18.
We are not persuaded by Appellant’s arguments. The Examiner has
determined that Sherman teaches a lookup table that associates terms with
their locations in a text. Ans. 29 (citing Sherman ¶ 25). We find this
position supported by Sherman, in that the lookup table functions as an
index that associates a “Key Entry,” defined as a word or group of words
representing a person, place, thing, idea, or action from a digital work, with
the page number, line number, or other locational information. Sherman
¶ 25. Sherman further indicates that a user may use a find function that,
upon the user’s selection of a key word, “immediately highlights and travels
to the first appearance of the word or the next appearance.” Id. ¶ 357; Final
Act. 8. Appellant has not explained persuasively how traveling to the
location of a word, and highlighting that word, does not teach or suggest
showing where in a base work that a given term appears. Accordingly, we
are not persuaded of error in the Examiner’s reliance on Sherman for
teaching or suggesting the contested limitations.
We further disagree with Appellant’s contention that the combination
of Eberhard and Sherman does not teach all of the limitations of claim 1.
Br. 30. For the reasons set forth above, we determine that the Examiner has
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shown the combination of Eberhard and Sherman to teach or suggest all of
the limitations of claim 1.
Appellant does not separately argue the limitations of dependent
claims 2 and 4; accordingly, they stand or fall with claim 1, and the rejection
of those claims under § 103(a) is sustained. Claim 5, and its dependent
claims 7–13, are directed to a method having similar scope to that of
claim 1. Appellant contends that the rejection under § 103(a) of claims 5
and 7–13 should be reversed for the same reasons as for claim 1. Br. 19–20.
The limitations of claim 5 are analogous to those of claim 1, including
“storing . . . a digital work and supplemental information,” “presenting the
digital work on a display,” “receiving a selection of a first object,” and
“presenting . . . supplemental information on the display in response to the
selection of the first object.” These limitations are of similar scope to those
of claim 1, with Appellant providing the same arguments as for claim 1,
arguing that Sherman does not teach an “index [that] includes respective
locations of occurrences of a plurality of objects.” For the same reasons as
set forth for claim 1 (excepting the reasons relating to claim 1 as a
“system”), and because we agree with the Examiner’s determination that
Sherman teaches the claimed index in the form of Sherman’s above-
described lookup table (Ans. 29), we determine that those claims are obvious
over the combination of Eberhard and Sherman.
With respect to claim 15, and its dependent claims 16, 18, and 20–22,
Appellant contends that the combination of Eberhard and Sherman suffers
from the same defects as for claim 1, and additionally that Sherman does not
teach supplemental information that includes locations of one or more
occurrences of objects. Br. 17. However, for the same reasons as set forth
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for the rejection of claim 1, supra, and because we agree with the
Examiner’s determination that Sherman teaches the claimed index in the
form of Sherman’s above-described lookup table (Ans. 29), we are not
persuaded by Appellant’s arguments. Furthermore, we determine that the
Examiner has shown the teachings or suggestions of the remaining elements
of claim 15 and its dependent claims, including processor(s) and computer-
readable media, a “supplemental information generation module” that
performs operations of parsing a digital work and generating supplemental
information including an index for the objects identified in the digital work,
and a “delivery module” to deliver the digital work and supplemental
information to an electronic device. Final Act. 14–21. Accordingly, we
determine that Appellant has not shown error in the Examiner’s
determination that claims 15, 16, 18, and 20–22 are obvious over the
combination of Eberhard and Sherman.
With respect to claims 14 and 17, the Examiner relies upon the base
combination of Eberhard and Sherman, in view of Horowitz. Final Act. 21–
22. Appellant contends that the rejection of claims 14 and 17 is in error for
the same reasons as alleged for claims 5 and 15. Br. 20. For the same
reasons set forth in finding no error in the Examiner’s rejection of claims 5
and 15, we find no error in the rejection of claims 14 and 17.
For the above-described reasons, we sustain the Examiner’s rejections
of claims 1, 2, 4, 5, 7–18, and 20–22 as being obvious under 35 U.S.C.
§ 103(a).

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CONCLUSION
In summary:
Claims
Rejected
35 U.S.C. § Basis Affirmed Reversed
1, 2, 4, 5, 7–
18, 20–22
101 Eligibility 1, 2, 4, 5, 7–18,
20–22

1, 2, 4, 5, 7–
13, 15, 16,
18, 20–22
103(a) Eberhard,
Sherman
1, 2, 4, 5, 7–13,
15–16, 18, 20–22

14, 17 103(a) Eberhard,
Sherman,
Horowitz
14, 17
Overall
Outcome
1, 2, 4, 5, 7–18,
20–22

TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED