Roy Shkedi et al.

Patent Trials and Appeals Board

Aug 6, 2019

12536451 - (D) (P.T.A.B. Aug. 6, 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.
12/536,451 08/05/2009 ROY SHKEDI 14-PS 3407
26362 7590 08/06/2019
LOUIS J. HOFFMAN, P.C.
7689 East Paradise Lane
Suite 2
Scottsdale, AZ 85260
EXAMINER
SORKOWITZ, DANIEL M
ART UNIT PAPER NUMBER
3681
NOTIFICATION DATE DELIVERY MODE
08/06/2019 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):
Louis@valuablepatents.com
donald@valuablepatents.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte ROY SHKEDI, ADI PINHASI, DROR BEN-YISHAI, and
MICHAEL BENEDEK 1
____________

Appeal 2018-001037
Application 12/536,451
Technology Center 3600
____________

Before MURRIEL E. CRAWFORD, BIBHU R. MOHANTY, and
BRUCE T. WIEDER, Administrative Patent Judges.

MOHANTY, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE

The Appellants seek our review under 35 U.S.C. § 134 of the final
rejection of claims 1–44 and 76–81 which are all the claims pending in the
application. We have jurisdiction under 35 U.S.C. § 6(b). Oral arguments
were presented through video on July 26, 2019.

SUMMARY OF THE DECISION
We AFFIRM.

1 The real party in interest is Datonics, LLC. (App. Br. 1).
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THE INVENTION
The Appellants’ claimed invention is directed to profile-based
targeting placement services based on types of profile attributes (Spec., para.
2). Claim 1, reproduced below, is representative of the subject matter on
appeal.

1. A method for providing collected profiles using one or
more computers, the method comprising:
(a) responsive to receiving via the Internet current profile
information about a user that electronically visited a profile
supplier, automatically identifying, with at least one of the
computers, a set made up of a plurality of media properties out
of a multitude of media properties based on a comparison of
current or previous profile information received about the user
with previously received individualized requests for specific
profiles, kinds of profiles, or profiles having specific attributes
of interest to each media property of the multitude;
(b) automatically selecting, with at least one of the
computers, a subset of one or more media properties out of
those identified in part (a), wherein each media property of the
subset is selected based on a corresponding media property
selection history; and
(c) automatically providing, with at least one of the
computers, to one or more of the selected media properties one
or more profile attributes from the current or previous profile
information in a manner that enables the selected media
property to electronically associate the provided profile
attribute with the user.

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THE REJECTION
The following rejection is before us for review:
Claims 1–44 and 76–812 are rejected under 35 U.S.C. § 101 as being
directed to non-statutory subject matter.

FINDINGS OF FACT
We have determined that the findings of fact in the Analysis section
below are supported at least by a preponderance of the evidence3.

ANALYSIS
Rejection under 35 U.S.C. § 101
The Appellants argue that the rejection of claim 1 is improper because
the claim is not directed to an abstract idea (App. Br. 11–17; Reply Br. 3–8).
The Appellants argue further that the claim is “significantly more” than the
alleged abstract idea (App. Br. 17–22; Reply Br. 8–10).
In contrast, the Examiner has determined that the rejection of record is
proper (Final Action 2–5; Ans. 2–4).
We agree with the Examiner. An invention is patent eligible if it
claims a “new and useful process, machine, manufacture, or composition of
matter.” 35 U.S.C. § 101. However, the Supreme Court has long interpreted
35 U.S.C. § 101 to include implicit exceptions: “[l]aws of nature, natural

2 The Appellants list claim 81 as pending (App. Br. 8) and include the claim
in the Appeal Brief Claim Appendix. We treat the omission of this claim
from the Examiner’s listing of rejected claims as a typographical error.
3 See Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988)
(explaining the general evidentiary standard for proceedings before the
Patent Office).
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phenomena, and abstract ideas” are not patentable. E.g., Alice Corp. v. CLS
Bank Int’l, 573 U.S. 208, 216 (2014).
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court’s two-step framework, described in Mayo
and Alice. Id. at 217–18 (citing Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 566 U.S. 66, 75–77 (2012)). In accordance with that framework,
we first determine what concept the claim is “directed to.” See Alice,
573 U.S. at 219 (“On their face, the claims before us are drawn to the
concept of intermediated settlement, i.e., the use of a third party to mitigate
settlement risk.”); see also Bilski v. Kappos, 561 U.S. 593, 611 (2010)
(“Claims 1 and 4 in petitioners’ application explain the basic concept of
hedging, or protecting against risk . . . .”).
Concepts determined to be abstract ideas, and thus patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219–20; Bilski, 561 U.S. at 611);
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594–95 (1978)); and
mental processes (Gottschalk v. Benson, 409 U.S. 63, 69 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as “molding rubber products” (Diamond v. Diehr, 450 U.S. 175, 192
(1981)); “tanning, dyeing, making waterproof cloth, vulcanizing India
rubber, smelting ores” (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S.
252, 267–68 (1854))); and manufacturing flour (Benson, 409 U.S. at 69
(citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
In Diehr, the claim at issue recited a mathematical formula, but the
Supreme Court held that “[a] claim drawn to subject matter otherwise
statutory does not become nonstatutory simply because it uses a
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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. (internal 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.”).
The PTO recently published revised guidance on the application of
§ 101. 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed.
Reg. 50 (Jan. 7, 2019) (“Guidance”). Under the 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 of
organizing human activity such as a fundamental economic
practice, or mental processes); and
(2) additional elements that integrate the judicial exception into
a practical application, i.e., evaluate whether the claim
“appl[ies], rel[ies] on, or use[s] the judicial exception in a manner
that imposes a meaningful limit on the judicial exception, such
that the claim is more than a drafting effort designed to
monopolize the judicial exception.” (see Guidance, 84 Fed. Reg.
at 54; see also MPEP § 2106.05(a)–(c), (e)–(h)).
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:
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(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.
See Guidance.

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.
The Specification at paragraph 2 states that the invention generally
relates to “profile-based targeting advertisement services, wherein the
targeting is based on behavioral, demographic, or other types of profile
attributes.” Here, the Examiner has determined that the claim is directed to
improvement in sales and marketing behaviors and advertising and an
abstract idea (Ans. 2). We substantially agree with the Examiner. We
determine that the claim is directed to the concept of user profile-based
targeting based on types of profile attributes which is directed to the concept
of targeted information practices which is a fundamental economic practice
i.e. a judicial exception. See, e.g., Intellectual Ventures I, LLC v. Capital
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One Bank (USA), 792 F.3d 1363, 1369 (Fed. Cir. 2015). Courts have found
claims directed to collecting, recognizing, and storing data in a computer
memory to be directed to an abstract idea. Content Extraction and
Transmission LLC v. Wells Fargo Bank, National Association, 776 F.3d
1343 (Fed. Cir. 2014); See Electric Power Group, LLC v. Alstom S.A., 830
F.3d 1350 (Fed. Cir. 2016) where collecting information, analyzing it, and
displaying results from certain results of the collection and analysis was held
to be an abstract idea.
Thus, we consider the claim to be directed to a judicial exception as
identified above.
The claims do not improve computer functionality, improve another
field of technology, utilize a particular machine, or effect a physical
transformation. Rather, we determine that nothing in the claims imposes a
meaningful limit on the judicial exception, such that the claims are more
than a drafting effort to monopolize the judicial exception.
For example, in claim 1 the steps of [1] “automatically identifying,
with at least one of the computers, a set made up of a plurality of media
properties out of a multitude of media properties”; [2] “automatically
selecting, with at least one of the computers, a subset of one or more media
properties”; and [3] “automatically providing, with at least one of the
computers, to one or more of the selected media properties one or more
profile attributes from the current or previous profile information in a
manner that enables the selected media property to electronically associate
the provided profile attribute with the user” are merely steps performed by a
generic computer that do not improve computer functionality. That is, these
recited steps [1]–[3] “do not purport to improve the functioning of the
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computer itself” but are merely generic functions performed by a
conventional processor. Likewise, these same steps [1]–[3] listed above do
not improve the technology of the technical field and merely use generic
computer components and functions to perform the steps. Also, the recited
method steps [1]–[3] above do not require a “particular machine” and can be
utilized with a general purpose computer, and the steps performed are purely
conventional. In this case the general purpose computer is merely an object
on which the method operates in a conventional manner. Further, the claim
as a whole fails to effect any particular transformation of an article to a
different state. The recited steps [1]–[3] fail to provide meaningful
limitations to limit the judicial exception and rather are mere instructions to
apply the method to a generic computer.
Considering the elements of the claim both individually and as “an
ordered combination” the functions performed by the computer system at
each step of the process are purely conventional. Each step of the claimed
method does no more than require a generic computer to perform a generic
computer function. Thus, the claimed elements have not been been shown
to integrate the judicial exception into a practical application. See Guidance,
84 Fed. Reg. at 54–55. The Revised Guidance references the MANUAL OF
PATENT EXAMINING PROCEDURE (“MPEP”) §§ 2106.05(a)–(c) and (e)–(h).
Turning to the second step of the Alice and Mayo framework, we
determine that the claim does not contain an inventive concept sufficient to
“transform” the abstract nature of the claim into a patent-eligible application.
The claim fails to add a specific limitation beyond the judicial exception that
is not well-understood, routine, and conventional in the field. Rather the
claim uses well-understood, routine, and conventional activities previously
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known in the art and they are recited at a high level of generality. The
Specification at paragraphs 52–54 for example describes using conventional
computer components such as computers, the Internet, smart phones, and
software in a conventional manner. The claim specifically includes
recitations for computers to implement the method but these computer
components are all used in a manner that is well-understood, routine, and
conventional in the field. The Appellants have not shown these claimed
generic computer components which are used to implement the claimed
method are not well understood, routine, or conventional in the field. The
Appellants have not demonstrated that the computers described in the
Specification at paragraphs 52 and 54 for instance are not general purpose
computer components known to perform similar functions in a well-
understood manner. The Specification at paragraph 54 discloses that the
method can be implemented with general purpose computers. Here, the
claim has not been shown to be “significantly more” than the abstract idea.
The Appellants have also cited to Enfish, LLC v. Microsoft Corp., 822
F.3d 1327 (Fed. Cir. 2016) to show that the claim is not abstract but the
claims in that case were not similar in scope to those here and were, in
contrast, directed to a self-referential data table.
For these above reasons the rejection of claim 1 is sustained.
The Appellants argue at page 25 of the Appeal Brief that claims 5–7,
19, and 21 add claim elements directed to “specific elements of the media
property selection history” that provide “significantly more” to the claim but
it has not been shown how the claimed computer systems are not used in a
conventional manner similar to claim 1 addressed above and the rejection of
these claims is sustained.
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The Appellants argue at page 25 of the Appeal Brief that claims 12
and 13 specify limitations drawn to “redirecting the user to a
server……where the redirecting provides information sufficient to enable
the selected media property to electronically associate the one or more
profile attributes with the readable tag” but this argued claim limitation does
not change the abstract nature of these claims which are similar to claim 1
and these rejections are sustained.
The Appellants at page 26 of the Appeal Brief argue limitations of the
claims 31, 32, and 38 but fail to articulate how these limitations specifically
overcome the rejection. Regardless a review of the claims has determined
that the rejection of record is proper.
The Appellants at page 26 of the Appeal Brief argue that in claims 76
and 78 the limitations to websites and tag placement solve a technical
problem but this argument is not taken as the computer elements used are
conventional in the manner used.
The Appellants at pages 26 and 27 argue that claims 77, 79, and 80,
include language that is non-abstract and non-conventional. The Appellants
at page 27 argue that the limitations of claim 81 also solve a second
technical problem. However, the Appellants fail to argue specific rationale
for this. Regardless, a review of these claims has determined that the
rejection of these claims is proper as well.
The remaining claims are directed to similar subject matter and the
rejection of these claims is sustained for the same reasons given above.

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CONCLUSIONS OF LAW
We conclude that Appellants have not shown that the Examiner erred
in rejecting claims 1–44 and 76–81 under 35 U.S.C. § 101.

DECISION
The Examiner’s rejection of claims 1–44 and 76–81 is sustained.
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