ROOT, Michael R. et al.

Patent Trials and Appeals Board

Oct 25, 2019

14218255 - (D) (P.T.A.B. Oct. 25, 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.
14/218,255 03/18/2014 Michael R. ROOT 134602.00237 1071
27557 7590 10/25/2019
BLANK ROME LLP
1825 Eye Street NW
WASHINGTON, DC 20006-5403
EXAMINER
CIRNU, ALEXANDRU
ART UNIT PAPER NUMBER
3681
NOTIFICATION DATE DELIVERY MODE
10/25/2019 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):
WashingtonDocketing@blankrome.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte MICHAEL R. ROOT and STEVEN A. ROOT
____________

Appeal 2018-007826
Application 14/218,2551
Technology Center 3600
_______________

Before HUNG H. BUI, ADAM J. PYONIN, and MICHAEL M. BARRY,
Administrative Patent Judges.

BUI, Administrative Patent Judge.

DECISION ON APPEAL
Appellant seeks our review under 35 U.S.C. § 134(a) from the
Examiner’s Final Rejection of claims 1–20, which are all the claims pending
in the application. Claims App. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM.2

1 We use the word “Appellant” to refer to “applicant(s)” as defined in 37
C.F.R. § 1.42. The real party in interest is Location IP, L.P. App. Br. 3.
2 Our Decision refers to Appellant’s Appeal Brief (“App. Br.”) filed March
12, 2018; Examiner’s Answer (“Ans.”) mailed May 29, 2018; Final Office
Action (“Final Act.”) mailed October 10, 2017; and original Specification
(“Spec.”) filed March 18, 2014.
Appeal 2018-007826
Application 14/218,255

2
STATEMENT OF THE CASE
Appellant’s invention relates to “marketing and advertising using
mobile positioning to guide a consumer to the specific location of a product
in a store.” Spec. ¶ 2. According to Appellant, the “method compri[ses] (a)
automatically determining a location of the mobile communication device;
(b) automatically determining interests of the user in accordance with a user
profile; and (c) automatically sending the user promotional information in
accordance with the location and the interests, the promotional information
including a specific location of a specific product.” Spec. ¶ 9; see also
Abstract.
Claims 1 and 11 are independent. Claim 1 is illustrative of
Appellant’s invention on appeal, reproduced below with a disputed
limitation in italics:
1. A method for marketing to a user of a mobile
communication device, the method comprising:
[1] receiving information regarding consumer purchases
from one or more retail vendors;
[2] storing information regarding consumer preferences of
the user in a consumer preferences database, the information
regarding consumer preferences including the information
regarding consumer purchases received from the one or more
retail vendors;
[3] receiving information indicative of a real-time spatial
location of the mobile communication device;
[4] determining, by an analysis unit, whether the mobile
communication device is on and the real-time location of the
mobile communication device is within a spatial range identified
by a spatial range identifier of a retail store or marketing area;
[5] selecting, by the analysis unit, a product or service
available at the retail store or marketing area based on the
consumer preferences of the user; and
Appeal 2018-007826
Application 14/218,255

3
[6] outputting, by the analysis unit, promotional
information for transmittal to the mobile communication device
in response to a determination that the mobile communication
device is on and within the spatial range of the retail store or
marketing area, the promotional information including a
location of the product or service within the retail store or
marketing area.
App. Br. 15 (Claims App.) (bracketed reference numbers added).

EXAMINER’S REJECTIONS3 & REFERENCES
(1) Claims 1–20 stand rejected under 35 U.S.C. § 101 as being
directed to a patent-ineligible abstract idea without significantly more. Final
Act. 4–7.
(2) Claims 1–20 stand rejected under 35 U.S.C. § 103(a) as being
obvious over Bradley et al. (US 2013/0290106 A1; published Oct. 31, 2013;
“Bradley”) and Jiang et al. (US 2014/0258109 A1; published Sept. 11,
2014). Final Act. 7–14.

ANALYSIS
35 U.S.C. § 101
In support of the § 101 rejection of claims 1–20, the Examiner
determines Appellant’s claims are directed to providing “targeted
advertising using mobile positioning [location information]” and include
limitations that are similar or analogous to the claims found by the Federal
Circuit to be an abstract idea in (1) Affinity Labs of Texas, LLC v.

3 Claims 1 and 11 were rejected under 35 U.S.C. § 112(a) or 35 U.S.C. §
112 (pre-AIA) first paragraph, as failing to comply with the written
description requirement. Final Act. 3–4. However, the § 112(a) rejection
was withdrawn and, as such, is no longer on appeal.
Appeal 2018-007826
Application 14/218,255

4
Amazon.com, 838 F.3d 1266 (Fed. Cir. 2016) (holding that “the concept of
delivering user-selected media content to portable devices [(in a method for
targeted advertising in which an advertisement is selected for delivery to the
user of a portable device based on at least one piece of demographic
information about the user)] is an abstract idea”) and (2) Electric Power
Group, LLC, v. Alstom, 830 F.3d 1350 (Fed. Cir. 2016) (holding that the
concept of “collecting information, analyzing it, and displaying certain
results of the collection and analysis” is an abstract idea). Final Act. 4–5;
see also Ans. 4.
The Examiner also determines the additional elements of an analysis
unit (i.e., “processing unit” and “database”), when analyzed individually and
as an ordered combination, do not amount to significantly more than the
abstract idea because these additional elements: (1) are “generic computing
elements”; (2) are “recited at a high level of generality and only perform
generic functions of receiving, manipulating and transmitting information”;
and (3) perform “operations that are generic, routine, and conventional.”
Final Act. 6.
Legal Framework
To determine whether claims are patent eligible under § 101, we apply
the Supreme Court’s two-step framework articulated in Alice Corp. v. CLS
Bank Int’l, 573 U.S. 208 (2014). First, we determine whether the claims are
directed to a patent-ineligible concept: laws of nature, natural phenomena,
and abstract ideas. Id. at 216. If so, we then proceed to the second step to
consider the elements of the claims “individually and ‘as an ordered
combination’” to determine whether there are additional elements that
“‘transform the nature of the claim’ into a patent-eligible application.” Id. at
Appeal 2018-007826
Application 14/218,255

5
217. In other words, the second step is to “search for an ‘inventive
concept’—i.e., an element or combination of elements that is ‘sufficient to
ensure that the patent in practice amounts to significantly more than a patent
upon the [ineligible concept] itself.’” Id. at 218 (alteration in original,
internal quotation marks omitted).
The Federal Circuit has described the Alice step-one inquiry as
looking at the “focus” of the claims, their “character as a whole,” and the
Alice step-two inquiry as looking more precisely at what the claim elements
add—whether they identify an “inventive concept” in the application of the
ineligible matter to which the claim is directed. See Elec. Power Grp., LLC
v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016); Enfish, LLC v.
Microsoft Corp., 822 F.3d 1327, 1335–36 (Fed. Cir. 2016); Internet Patents
Corp. v. Active Network, Inc., 790 F.3d 1343, 1346 (Fed. Cir. 2015).
In an effort to achieve clarity and consistency in how the U.S. Patent
and Trademark Office (the “Office”) applies the Supreme Court’s two-step
framework, the Office has published revised guidance interpreting governing
case law and establishing a prosecution framework for all patent-eligibility
analysis under Alice and § 101 effective as of January 7, 2019. 2019
Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50–57
(Jan. 7, 2019) (“2019 Revised Guidance”).
2019 Revised Guidance
Under the 2019 Revised Guidance, we first look under Alice step 1 or
“Step 2A” to whether the claim recites:
(1) Prong One: any judicial exceptions, including certain
groupings of abstract ideas (i.e., [i] mathematical concepts,
[ii] mental processes—concepts performed in the human
mind (including an observation, evaluation, judgment,
Appeal 2018-007826
Application 14/218,255

6
opinion), or [iii] certain methods of organizing human activity
such as a fundamental economic practice or managing
personal behavior or relationships or interactions between
people); and

(2) Prong Two: additional elements that integrate the judicial
exception into a practical application (see Manual of Patent
Examining Procedure (“MPEP”) §§ 2106.05(a)–(c), (e)–
(h)).4
See 2019 Revised Guidance, 84 Fed. Reg. at 51–52, 55, Revised Step 2A,
Prong One (Abstract Idea) and Prong Two (Integration into A Practical
Application). Only if a claim: (1) recites a judicial exception, and (2) does
not integrate that exception into a practical application, do we then evaluate
whether the claim provides an “inventive concept” under Alice step 2 or
“Step 2B.” See 2019 Revised Guidance at 56; Alice, 573 U.S. at 217–18.
For example, we look to whether the claim:
1) adds a specific limitation beyond the judicial exception that is
not “well-understood, routine, conventional” in the field (see
MPEP § 2106.05(d)); or

2) simply appends well-understood, routine, and conventional
activities previously known to the industry, specified at a high
level of generality, to the judicial exception.
See 2019 Revised Guidance, 84 Fed. Reg. at 56.
In the briefing, Appellant refers to prior USPTO guidance regarding
§ 101, including, for example: Robert W. Bahr, Memorandum to Patent
Examining Corps, dated April 19, 2018. Reply Br. 4. In addition, both
Appellant and Examiner employ the common law, analogy-driven approach
suggested by the Federal Circuit in Amdocs (Israel) Ltd. v. Openet Telecom,

4 All references to the MPEP are to the Ninth Edition, Revision 08.2017
(rev. Jan. 2018).
Appeal 2018-007826
Application 14/218,255

7
Inc., 841 F.3d 1288, 1294 (Fed. Cir. 2016 to determine whether a patent
claim recites an “abstract idea” under Alice — that is, to look at earlier cases
with “a similar or parallel descriptive nature” — i.e., similar fact patterns.
Amdocs, 841 F.3d at 1295. However, the Memorandum as well as other
prior guidance have been superseded by the 2019 Revised Guidance. See
2019 Revised Guidance, 84 Fed. Reg. at 52. Our analysis comports with the
2019 Revised Guidance in reviewing the rejection under § 101, as discussed
below. See October 2019 Update: Subject Matter Eligibility (“It is the
rejection under § 101, and not any alleged failure to comply with the 2019
PEG, that is reviewed by the Patent Trial and Appeal Board.”).
Alice/Mayo—Step 1 (Abstract Idea)
Step 2A–Prongs 1 and 2 identified in the Revised Guidance
Step 2A—Prong 1
Appellant argues independent claims 1 and 11 are not directed to an
abstract idea because (1) these claims are not similar or analogous to the
claims in Affinity Labs, and (2) “the claims [in Affinity Labs] were actually
directed to streaming media rather targeted advertising” whereas Appellant’s
claims “are directed to media systems that deliver content to a handheld
wireless electronic device.” App. Br. 9. Appellant argues claims 1 and 11
are similar to the claims in SimpleAir, Inc. v. Google Inc., 136 F. Supp. 3d
745 (E.D. Tex. 2015), where the district court determined that (1) “using a
central broadcast server to package and transmit data from an online
information source to remote computing devices” is not an abstract idea, and
(2) “the invention of this application is more analogous to ‘using a central
broadcast server to package and transmit data from an online information
source to remote computing devices,’ which [the district] [] court has held is
patentable [].” App. Br. 8–9; see also Reply Br. 2–3.
Appeal 2018-007826
Application 14/218,255

8
Appellant’s arguments are not persuasive. At the outset, we note
Appellant’s reliance on SimpleAir is misplaced, because district court
decisions are not binding legal authority on the Board. Appellant’s
characterization of Affinity Labs is also incorrect. In Affinity Labs, the
claims are directed to “a broadcast system in which a cellular telephone
located outside the range of a regional broadcaster (1) requests and receives
network-based content from the broadcaster via a streaming signal, (2) is
configured to wirelessly download an application for performing those
functions, and (3) contains a display that allows the user to select particular
content.” Affinity Labs, 838 F.3d. at 1256; see also U.S. Patent No.
7,970,379. The Federal Circuit held Affinity’s patent claims are directed to
“the idea itself,” i.e., an abstract idea, because these claims addressed the
function of wirelessly communicating regional broadcast content to an out-
of-region recipient, but did not specify how to perform that function, i.e., it
specified “the general concept of out-of-region delivery of broadcast content
through the use of conventional devices, without offering any technological
means of effecting that concept.” Affinity Labs, 838 F.3d. at 1260.
Regardless, we also review patent eligibility under § 101 de novo
(Dealertrack, Inc. v. Huber, 674 F.3d 1315, 1333 (Fed. Cir. 2012)) in light
of the 2019 Revised Guidance. In doing so, we first observe that
Appellant’s Specification describe the claims as relating to “marketing and
advertising using mobile positioning [location information] to guide a
consumer to the specific location of a product in a store.” Spec. ¶ 2.
According to Appellant, the “method compris[es] (a) automatically
determining a location of the mobile communication device; (b)
automatically determining interests of the user in accordance with a user
Appeal 2018-007826
Application 14/218,255

9
profile; and (c) automatically sending the user promotional information in
accordance with the location and the interests, the promotional information
including a specific location of a specific product.” Spec. ¶ 9; Abstract. The
promotional information “sent to the user’s mobile device can include
specific product information, electronic coupons or other special offers.”
Spec. ¶ 3. The invention address the business problem that,
“[i]f the targeted marketing material concerns a particular
product, such as a product selected in accordance with the user’s
profile, merely directing the user to a store will not allow the user
to locate the product. If the user enters the store and uses a store
directory to determine the aisle in which the product is located,
the user will be at least as likely to find competing products.”

Spec. ¶ 7.
Consistent with Appellant’s Specification, limitations of claim 1’s
recited “method for marketing to a user of a mobile communication device, ”
under their broadest reasonable interpretation, recite (1) collecting
“information regarding consumer preferences” and “information indicative
of [] spatial location of the mobile communication device”; (2) analyzing
such information, i.e., whether “the [] location of the mobile communication
device is within a spatial range [] of a retail store” and then (3) presenting
(outputting) “promotional information [including a location of the product or
service within the retail store] for transmittal to the mobile communication
device” when “the mobile communication device is on and within the spatial
range [] of a retail store,” which are known business activities used to
promote targeted advertisements to end users—a fundamental economic
practice in our system of commerce. See Spec. ¶¶ 2–10.
Appeal 2018-007826
Application 14/218,255

10
Such activities are squarely within the realm of abstract ideas, like
(1) the risk hedging in Bilski v. Kappos, 130 S. Ct. 3218 (2010); (2) the
intermediated settlement in Alice, 573 U.S. at 220; (3) verifying credit card
transactions in CyberSource, 654 F.3d 1366, 1370 (Fed. Cir. 2011);
(4) guaranteeing transactions in buySAFE, Inc. v. Google, Inc., 765 F.3d
1350, 1354 (Fed. Cir. 2014); (5) distributing products over the Internet in
Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709 (Fed. Cir. 2014);
(6) determining a price of a product offered to a purchasing organization in
Versata Dev. Grp., Inc. v. SAP America, Inc., 793 F.3d 1306 (Fed. Cir.
2015); and (7) pricing a product for sale in OIP Techs., Inc. v. Amazon.com,
Inc., 788 F.3d 1359 (Fed. Cir. 2015). Collecting, analyzing, and outputting
promotional information (i.e., specific product information, electronic
coupons or other special offers) to end users is also a building block of a
market economy and, like risk hedging and intermediated settlement, is an
“abstract idea” beyond the scope of § 101. See Alice, 573 U.S. at 220.
As further recognized by the Examiner, collecting, analyzing, and
outputting promotional information (i.e., specific product information,
electronic coupons or other special offers) to end users is also analogous to
the claims identified by the Federal Circuit as directed to an abstract idea in
Affinity Labs (holding that “the concept of delivering user-selected media
content to portable device” is an abstract idea under § 101). Ans. 4; see also
Electric Power Group, 830 F.3d at 1353 (holding that the concept of
“collecting information, analyzing it, and displaying certain results of the
collection and analysis” is an abstract idea under § 101).
We, therefore, conclude limitations (1)–(6) in Appellant’s claim 1
recite collecting, analyzing, and outputting promotional information (i.e.,
Appeal 2018-007826
Application 14/218,255

11
specific product information, electronic coupons or other special offers) to
end users based on location information, which is “a fundamental economic
practice” as identified in the Revised Guidance, and thus, an abstract idea.
See 2019 Revised Guidance (Revised Step 2A, Prong One), 84 Fed. Reg. at
52, 54. According to the Federal Circuit, “collecting information, including
when limited to particular content (which does not change its character as
information), as within the realm of abstract ideas.” Electric Power Group,
830 F.3d at 1353; see also, e.g., Internet Patents Corp. v. Active Network,
Inc., 790 F.3d 1343, 1346 (Fed. Cir. 2015; OIP Techs., Inc. v. Amazon.com,
Inc., 788 F.3d 1359, 1363 (Fed. Cir. 2015); Content Extraction &
Transmission LLC v. Wells Fargo Bank, Nat’l Ass’n, 776 F.3d 1343, 1347
(Fed. Cir. 2014); Digitech Image Techs., LLC v. Elecs. for Imaging, Inc.,
758 F.3d 1344, 1351 (Fed. Cir. 2014); CyberSource Corp. v. Retail
Decisions, Inc., 654 F.3d at 1370. Likewise, “analyzing information by
steps people go through in their minds, or by mathematical algorithms,
without more,” is “essentially mental processes within the abstract-idea
category. See, e.g., TLI Commc’ns, 823 F.3d 607, 613 (Fed. Cir. 2016);
Digitech, 758 F.3d at 1351; SmartGene, Inc. v. Advanced Biological Labs.,
SA, 555 F. App’x 950, 955 (Fed. Cir. 2014); Bancorp Servs., L.L.C. v. Sun
Life Assurance Co. of Canada (U.S.), 687 F.3d 1266, 1278 (Fed. Cir. 2012);
CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1372 (Fed. Cir.
2011); SiRF Tech., Inc. v. Int’l Trade Comm’n, 601 F.3d 1319, 1333 (Fed.
Cir. 2010); see also Mayo, 132 S. Ct. at 1301; Parker v. Flook, 437 U.S.
584, 589–90 (1978); Gottschalk v. Benson, 409 U.S. 63, 67 (1972). And the
Federal Circuit has recognized that merely presenting the results of abstract
processes of collecting and analyzing information, without more (such as
Appeal 2018-007826
Application 14/218,255

12
identifying a particular tool for presentation), is abstract as an ancillary part
of such collection and analysis. See, e.g., Content Extraction, 776 F.3d at
1347; Ultramercial, Inc. v. Hulu, LLC, 772 F.3d at 715.
Step 2A—Prong 2 (Integration into Practical Application)
Under Step 2A, Prong Two of the Revised Guidance, we next
determine if the claims recite additional limitations (i.e., additional
limitations beyond the judicial exception) that integrate the judicial
exception into a practical application. Here, we discern no additional
element (or combination of elements) recited in Appellant’s claims 1 or 11
that integrates the judicial exception into a practical application. See
Revised Guidance, 84 Fed. Reg. at 54–55 (“Prong Two”). For example,
Appellant’s additional elements (i.e., “analysis unit” and “mobile
communication device”) recited in claims 1 and 11 do not (1) improve the
functioning of a computer or other technology, (2) are not applied with any
particular machine (except for generic computer components), (3) do not
effect a transformation of a particular article to a different state, and (4) are
not applied in any meaningful way beyond generally linking the use of the
judicial exception to a particular technological environment, such that the
claim as a whole is more than a drafting effort designed to monopolize the
exception. See MPEP §§ 2106.05(a)–(c), (e)–(h).
For business-centric inventions such as Appellant’s invention
involving collecting, analyzing, and outputting promotional information
(i.e., specific product information, electronic coupons or other special offers)
to end users based on location information, the “integration into a practical
application” prong requires consideration of whether the claims provide “a
technical solution to a technical problem” as required by the Federal
Appeal 2018-007826
Application 14/218,255

13
Circuit’s precedential decisions such as in (1) DDR Holdings, LLC v.
Hotels.com, L.P., 773 F.3d 1245, 1257 (Fed. Cir. 2014) and (2) Amdocs
(Isr.) Ltd. v. Openet Telecom, Inc., 841 F.3d 1288 (Fed. Cir. 2016). See
MPEP § 2106.05(a).
For example, the Federal Circuit found DDR’s claims are patent-
eligible under § 101 because DDR’s claims: (1) do not merely recite “the
performance of some business practice known from the pre-Internet world”
previously disclosed in Bilski and Alice; but instead (2) provide a technical
solution to a technical problem unique to the Internet, i.e., a “solution . . .
necessarily rooted in computer technology in order to overcome a problem
specifically arising in the realm of computer networks.” DDR, 773 F.3d at
1257. Likewise, the Federal Circuit also found Amdocs’ claims patent-
eligible under § 101 because like DDR, Amdocs’ claims “entail[] an
unconventional technological solution (enhancing data in a distributed
fashion) to a technological problem (massive record flows which previously
required massive databases)” and “improve the performance of the system
itself.” Amdocs, 841 F.3d at 1300, 1302.
However, collecting, analyzing, and outputting promotional
information (i.e., specific product information, electronic coupons or other
special offers) to end users based on location information in the manner
recited in Appellant’s claims 1 and 11 does not provide a “technical solution
to a technical problem” as contemplated by the Federal Circuit in DDR and
Amdocs. See MPEP § 2106.05(a). For example, Appellant’s claimed
solution that collects, analyzes, and outputs promotional information to end
users does not provide a technical solution to a technical problem unique to
the Internet, i.e., a “solution . . . necessarily rooted in computer technology
Appeal 2018-007826
Application 14/218,255

14
in order to overcome a problem specifically arising in the realm of computer
networks.” DDR, 773 F.3d at 1257. Nor does Appellant’s invention entail,
like Amdocs, any “unconventional technological solution (enhancing data in
a distributed fashion) to a technological problem (massive record flows
which previously required massive databases)” and “improve the
performance of the system itself.” Amdocs, 841 F.3d at 1300, 1302.
The focus of Appellant’s invention is not to improve the performance
of computers or any underlying technology; instead, the focus is to use
generic computer components as a tool to (1) gather “information regarding
consumer preferences” and “information indicative of [] spatial location of
the mobile communication device”; (2) analyze such information, i.e., the
location of the mobile communication device relative to “a retail store or
marketing area,” and then (3) present (output) “promotional information
[including a location of the product or service within the retail store or
marketing area] for transmittal to the mobile communication device” (see
Spec. ¶¶ 9–11; Abstract). However, utilizing generic computer components
(i.e., “analysis unit” and “mobile communication device”) to output
promotional information is insufficient to show “integration into a practical
application.” See MPEP § 2106.05(f). Instead, these generic computer
components are simply the “automation of the fundamental economic
concept,” OIP Techs., 788 F.3d at 1362–63. “[M]erely requiring generic
computer implementation,” “does not move into [§] 101 eligibility territory.”
buySAFE, 765 F.3d at 1354.
A claim for a new abstract idea is still an abstract idea. See Synopsys,
Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1151 (Fed. Cir. 2016). “No
matter how much of an advance in the finance field the claims recite, the
Appeal 2018-007826
Application 14/218,255

15
advance lies entirely in the realm of abstract ideas, with no plausibly alleged
innovation in the non-abstract application realm.” See SAP America, Inc. v.
InvestPic, LLC, 898 F.3d 1161, 1163 (Fed. Cir. 2018).
For these reasons, we are not persuaded that Appellant’s argument
that “additional elements” recited in claims 1 and 11 integrate the abstract
idea into a practical application.
Alice/Mayo—Step 2 (Inventive Concept)
Step 2B identified in the Revised Guidance
Under the 2019 Revised Guidance, 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 is not “well-understood, routine,
conventional” in the field (see MPEP § 2106.05(d)); or, 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 Revised Guidance, 84 Fed. Reg. at 56. However, we find no
element or combination of elements recited in Appellant’s claims 1 and 11
that contain any “inventive concept” or add anything “significantly more” to
transform the abstract concept into a patent-eligible application. Alice, 573
U.S. 208 at 221.
Appellant argues the Examiner has not provided evidence to show that
“specific technical features” recited in claims 1 and 11 are “well-understood,
routine, conventional” as per Berkheimer v. HP Inc., 881 F.3d 1360, 1366
(Fed. Cir. 2018), including:
 receiving information regarding consumer purchases received
from the one or more retail vendors;
 storing information regarding consumer preferences of the user;
Appeal 2018-007826
Application 14/218,255

16
 determining whether a mobile communication device is on and
the real-time location of the mobile communication device is
within a spatial range (identified by a spatial range identifier) of
a retail store or marketing area;
 storing a location of a product or service within a retail store or
marketing area;
 selecting a product or service available at the retail store or
marketing area based on the consumer preferences of the user;
and
 outputting promotional information for transmittal to the mobile
communication device in response to a determination that the
mobile communication device is on and within the spatial range
of the retail store or marketing area, the promotional information
including the location of the product or service within the retail
store or marketing area.

Reply Br. 4.
Appellant’s argument is not persuasive. In Berkheimer, the Federal
Circuit held “[w]hether something [(i.e., any additional elements beyond the
abstract idea)] is well-understood, routine, and conventional to a skilled
artisan at the time of the patent is a factual determination.” Berkheimer, 881
F.3d 1369. However, Berkheimer is limited to Alice step 2 and is only
applicable after a determination is made that a patent claim is directed to an
abstract idea under Alice step 1. The question of whether a claim is directed
to an abstract idea under Alice step 1 is still a question of law. See, e.g., In
re Wang, 737 Fed. App’x 534, 535 (Fed. Cir. 2018); Intellectual Ventures I
LLC v. Capital One Fin. Corp., 850 F.3d 1332, 1338 (Fed. Cir. 2017);
Versata Dev. Grp., Inc. v. SAP Am., Inc., 793 F.3d 1306, 1331 (Fed. Cir.
2015) (“We review questions concerning compliance with the doctrinal
requirements of § 101 of the Patent Act (and its constructions) as questions
of law, without deference to the trial forum.”). As previously discussed, we
Appeal 2018-007826
Application 14/218,255

17
find the additional elements beyond the abstract idea recited in Appellant’s
claims 1 and 11 (i.e., “analysis unit” and “mobile communication device”)
do not transform the abstract idea into a patent eligible invention. As our
reviewing court has observed, “after Alice, there can remain no doubt:
recitation of generic computer limitations does not make an otherwise
ineligible claim patent-eligible.” DDR, 773 F.3d at 1256 (citing Alice, 573
U.S. at 222).
Here, Appellant refers to limitations recited in claims 1 and 11 that are
part of the abstract idea identified under Alice step 1, and argues the
Examiner has to provide evidence to show these limitations are “well-
understood, routine, and conventional” under Alice step 2. Reply Br. 4. The
law is clear, however, that the claim element(s) to be considered under Alice
step 2 cannot be part of the abstract idea itself. Berkheimer, 890 F.3d at
1374 (Moore, J., concurring) (“Berkheimer . . . leave[s] untouched the
numerous cases from [the Federal Circuit] which have held claims ineligible
because the only alleged ‘inventive concept’ is the abstract idea.”); BSG
Tech LLC v. BuySeasons, Inc., 899 F.3d 1281, 1283 (Fed. Cir. 2018)
(indicating same). “Groundbreaking, innovative, or even brilliant discovery
does not by itself satisfy the § 101 inquiry.” Ass’n for Molecular Pathology
v. Myriad Genetics, Inc., 133 S. Ct. 2107, 2117 (2013).
Because Appellant’s independent claims 1 and 11 are directed to a
patent-ineligible abstract concept and do not recite an “inventive concept” or
provide a solution to a technical problem under the second step of the Alice
analysis, we sustain the Examiner’s § 101 rejection of independent claims 1
and 11, and their dependent claims 2–10 and 12–20 not separately argued.

Appeal 2018-007826
Application 14/218,255

18
35 U.S.C. § 103(a)
Appellant argues Examiner error in the rejection of independent
claims 1 and 11 together as a group, from which we select claim 1 as
representative. App. Br. 10–13; 37 C.F.R. § 41.37(c)(1)(iv). In support of
the § 103(a) rejection of claim 1, the Examiner finds Bradley teaches most
aspects of Appellant’s claimed “method for marketing to a user of a mobile
communication device,” including: “outputting . . . promotional information
[including a location of the product or service within the retail store or
marketing area] for transmittal to the mobile communication device in
response to a determination that the mobile communication device is on and
within the spatial range of the retail store or marketing area.” Final Act. 7–9
(citing Bradley ¶¶ 3, 4, 8, 14, 120, 122, 157, 309, Fig. 15). The Examiner
then relies on Jiang for teaching “information regarding consumer purchases
[is] received from one or more retail vendors” in order to support the
conclusion of obviousness. Final Act. 9 (citing Jiang ¶ 109).
Appellant only disputes the Examiner’s factual finding regarding
Bradley. In particular, Appellant argues Bradley does not teach or suggest
the disputed limitation: “outputting . . . promotional information [including
a location of the product or service within the retail store or marketing area]
for transmittal to the mobile communication device in response to a
determination that the mobile communication device is on and within the
spatial range of the retail store or marketing area,” as recited. App. Br. 10–
13; Reply Br. 1–2. According to Appellant,
Nowhere does Bradley contemplate outputting the promotional
information to the communication device in response to a
determination that the communication device is on and within the
spatial range identified by a spatial range identifier of the retail
Appeal 2018-007826
Application 14/218,255

19
store or marketing area as required by the independent claims.
Instead, the system of Bradley, as discussed above, outputs
promotional information for transmission to the communication
device in response to receiving a request from a user.
Furthermore, nowhere in Bradley is there any contemplation of
determining and outputting data in response to a determination
that the communicator device is on as required by the claims
because the system of Bradley responds to a request signal from
the communicator device. Because Bradley discloses a system
that responds to a request for outputting promotional information
instead of outputting the promotional information in response to
a determination that the communication device is within the
spatial range of a store or marketing area - and because Bradley
never determines whether a communication device is on prior to
outputting promotional information - Bradley fails to teach or
suggest outputting the promotional information to the
communication device in response to a determination the
communication device is on and within the spatial range
identified by a spatial range identifier of the retail store or
marketing area, as required by the independent claims.

App. Br. 12 (emphasis added).
Appellant’s arguments are not persuasive. Further, we find the
Examiner has provided a comprehensive response to Appellant’s arguments
supported by evidence. Ans. 7–8. As such, we adopt the Examiner’s
findings and explanations provided therein, as discussed below. Id. For
additional emphasis, we note Bradley teaches “systems and methods for
product-directed routing of shoppers within a mercantile environment,”
(Bradley ¶ 2) i.e., marketing to a user of a mobile device based on its
location (Bradley ¶¶ 8, 13) and providing directions to items of interest
(product or service) within a retail store (Bradley ¶ 3), including providing
promotions (i.e., coupons or offers) on a user’s mobile device based on the
user’s profile, so that the user can locate the item of interest in the retail
Appeal 2018-007826
Application 14/218,255

20
store relative to the location of the user’s mobile device (Bradley ¶¶ 16–17,
21).
As recognized by the Examiner, Bradley teaches Appellant’s claimed
“outputting . . . promotional information [including a location of the product
or service within the retail store or marketing area] for transmittal to the
mobile communication device in response to a determination that the mobile
communication device is on and within the spatial range of the retail store or
marketing area,” in the context Bradley’s computing system (server) used to
determine (1) whether a mobile device is on (i.e., when the user engages
mobile device) and (2) whether the mobile device location is within a spatial
range of a store, and then generate a “reply message” or a response (e.g.,
promotional information) to a user’s mobile device Ans. 7–8 (citing Bradley
¶¶ 79–80, 127–130).
Nevertheless, Appellant argues Bradley only describes “outputting
promotional information in response to a scan from a user device, rather than
in response to ‘a determination that the mobile communication device is on
and within the spatial range of the retail store or marketing area,’” as recited
in claims 1 and 11. Reply Br. 2 (citing Bradley ¶ 127, Fig. 2A). However,
Appellant’s argument is not persuasive because, according to Bradley, (1)
“these scans are indicative of interest in various subjects, goods, and/or
services . . . serve as a basis for an individual customer tracking system”
(Bradley ¶ 120), (2) “CTIS (code triggered information server) may be
triggered by the user selecting an internet link [], by making decisions within
a virtual world [], and/or the like), or alternatively, (3) any “additional user-
input information” can trigger the scan and determine the location of the
user’s mobile device (Bradley ¶ 122). For example, Bradley describes an
Appeal 2018-007826
Application 14/218,255

21
embodiment providing targeted and contextual directions to the user related
to a store at a shopping mall as follows:
“Here, a user is a frequent shopper at the particular shopping
mall, and is interested in a Ralph Lauren article of clothing (209).
The user engages their digital device to direct them to stores or
outlets where they have the Ralph Lauren product of interest
(206). This engagement could be in a variety of manners, such
as code scanning, selection of a digital icon, etc. The digital
device will determine the time and location of the engagement
by the user (210), here determining that the user is present at a
mall frequented by the user (213). A Scan Message is generated
by the digital device (215), and, in this embodiment, is then sent
to a server (220). The server receives and recognizes the Scan
Message (225). The server then queries the user’s profile (230),
which may be stored on the user’s digital device, may be stored
on the server system, and/or may utilize the combined data stores
consisting of the user’s local data store and the data store
maintained on a server system. Here, the server accesses recent
user activity, which reflects shopping for Ralph Lauren products
(232c) . . . The server, after accessing the user’s profile (which
reflects user preferences, recent shopping history, location
history, etc.) determines the location of the product of interest to
the user (231), which may be a local (within the shopping mall)
store or a store within a particular range specified by the user . . .
Once the server has formulated a Reply Message, which
contains the pertinent Directions data (241), it may send the
Reply Message to the user’s digital device (245). [T]he user’s
digital device . . . may display the response in a map form
depicting the location or locations of the item of interest, here the
Ralph Lauren product, in a tri-level mapping formula (see FIG.
3b), here depicting a shopping mall. The response to the user
may also reflect other locations carrying the product of interest
(such as if a particular size or color of the item of interest is not
available in the shopping mall where the user is presently
located).

Appeal 2018-007826
Application 14/218,255

22
Bradley ¶ 130. Because Bradley’s scan can be any user’s input, Bradley’s
response indicating “promotional information” is generated in response to “a
determination that the mobile communication device is on and within the
spatial range of the retail store or marketing area,” as recited in claims 1 and
11.
For these reasons, we are not persuaded of Examiner error.
Accordingly, we sustain the Examiner’s obviousness rejection of
independent claims 1 and 11 and their respective dependent claims 2–10 and
12–20, which Appellant does not argue separately.

CONCLUSION
On the record before us, we conclude Appellant has not demonstrated
the Examiner erred in rejecting claims 1–20 under 35 U.S.C. § 101 and
under 35 U.S.C. § 103(a).

DECISION
As such, we AFFIRM the Examiner’s rejection of claims 1–20 under
35 U.S.C. § 101 and under 35 U.S.C. § 103(a).

DECISION SUMMARY
Claims
Rejected
35 U.S.C.§  Basis Affirmed Reversed
1–20 101  Non-Statutory 1–20
1–20 103  Obviousness 1–20
Overall Outcome 1–20
Appeal 2018-007826
Application 14/218,255

23

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).

AFFIRMED