Textium LLC

Patent Trials and Appeals Board

Jul 12, 2021

2021000512 (P.T.A.B. Jul. 12, 2021)

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.
16/020,342 06/27/2018 Craig Schmitz 4487/1001 1021
2101 7590 07/12/2021
Sunstein LLP
100 High Street
Boston, MA 02110-2321
EXAMINER
REFAI, SAM M
ART UNIT PAPER NUMBER
3681
NOTIFICATION DATE DELIVERY MODE
07/12/2021 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):
usptomail@sunsteinlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte CRAIG SCHMITZ, WILLIAM HAEGELE, JOHN FRANCO,
ARTHUR DELAURIER, THOMAS CHERNETSKY,
and CHARLES BYRAM
____________

Appeal 2021-000512
Application 16/020,342
Technology Center 3600
____________

Before NINA L. MEDLOCK, TARA L. HUTCHINGS, and
AMEE A. SHAH, Administrative Patent Judges.

SHAH, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), the Appellant1 appeals from the
Examiner’s final decision to reject claims 1–19, which are all of the pending
claims. We have jurisdiction under 35 U.S.C. § 6(b). The Appellant
appeared for oral hearing on June 10, 2021. The record includes a transcript
of the oral hearing (“Tr.”). We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. The Appellant identifies the real party in interest as
Textium LLC. Appeal Br. 3.
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CLAIMED SUBJECT MATTER
The Appellant’s “invention relates to direct mail programs and similar
direct marketing programs, and more particularly to systems and methods
for using direct mail programs and direct marketing programs for
interactions between an individual and an advertiser.” Spec. ¶ 2.
Claims 1 and 12 are the independent claims on appeal. Claim 1 is
illustrative of the subject matter on appeal and is reproduced below (with
added paragraphing and lettered bracketing for reference):
1. A computer-implemented method for transforming a direct
mail interaction between a specific individual and a specific
advertiser, on the basis of a specific direct mail piece, having
written content relating to an offering by the specific advertiser,
the specific piece physically delivered to the specific individual,
the method utilizing computer processes, carried out by an
intermediary server system, comprising:
[(a)] under conditions wherein the specific direct mail
piece is one of a set of direct mail pieces targeted and physically
delivered to identified individuals as part of a direct mail
program by the specific advertiser, each direct mail piece
including in its written content (i) a code identifying a
corresponding one of the identified individuals, (ii) a text-to
phone number configured to receive a text message from the
corresponding individual, and (iii) an instruction to the
corresponding individual to manifest interest in the content by
sending, to the text-to phone number, a text message that
includes the code:
[(b)] responsive to receipt, at a mobile telephone carrier
interface, of the corresponding text message, including the code,
from a mobile telephone of the specific individual, such mobile
telephone having a telephone number:
[(b1)] receiving, by the intermediary server system,
coupled to the mobile telephone carrier interface, mobile
phone data including the code and the telephone number
of the mobile telephone of the specific individual, wherein
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the intermediary server system is coupled to a direct mail
program database system, the program database system
storing record data, for each one of the identified
individuals, including the specific individual, such
individual's name, address, and code;
[(b2)] storing, by the intermediary server system, in
the program database system, in association with the
record data in the direct mail program database system for
the specific individual, the telephone number of the mobile
telephone number of the specific individual;
[(b3)] retrieving, from the program database, by the
intermediary server system, based on the received code, an
advertiser message on behalf of the advertiser pertinent to
the specific individual, and
[(b4)] causing the advertiser message to be
delivered to the mobile telephone of the specific individual
by the mobile telephone carrier interface; and
[(b5)] transmitting, by the intermediate server
system, to a computer system of the specific advertiser, a
sales lead message providing data including the name and
mobile telephone number of the specific individual;
[(b6)] whereupon the direct mail interaction
between the specific individual and the specific advertiser
is transformed into an electronic relationship based
directly on utilization by the specific individual of the code
and the text-to phone number in an environment provided
by the intermediary server system.
Appeal Br. 27–28 (Claims App.). Claim 12 recites a “non-transitory
computer storage medium encoded with instructions, which, when executed
on an intermediary server system coupled to a mobile telephone carrier
interface, establish a computer-implemented method . . . utilizing computer
processes comprising” the limitations as recited in claim 1. Id. at 30–31.
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REFERENCES
The prior art references relied upon by the Examiner are:
Name Reference Date
Davidow et al. (“Davidow”) US 2009/0037253 A1 Feb. 5, 2009
Goldsmith US 2010/0262428 A1 Oct. 14, 2010
REJECTIONS
Claims 1–19 stand rejected under 35 U.S.C. § 101 as being directed to
a judicial exception without significantly more.
Claims 1–4, 6–15, and 17–19 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Goldsmith and Davidow.
Claims 5 and 16 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Goldsmith, Davidow, and Official Notice.

OPINION
35 U.S.C. § 1012
The Appellant presents arguments for all the claims together. See
Appeal Br. 18–25. We thus group all the claims together and select claim 1
as representative of the group, with the rejection of claims 2–19 standing or
falling therewith. See 37 C.F.R. § 41.37(c)(1)(iv).
35 U.S.C. § 101 Framework
Section 101
An invention is patent eligible if it claims a “new and useful process,
machine, manufacture, or composition of matter.” 35 U.S.C. § 101.
However, the U.S. Supreme Court has long interpreted 35 U.S.C. § 101 to

2 The rejections are addressed in the order presented by the Examiner in the
Final Office Action.
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include implicit exceptions: “[l]aws of nature, natural 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 Court’s two-part framework, described in Mayo and Alice.
Alice, 573 U.S. 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, 67 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as “molding rubber products” (Diamond v. Diehr, 450 U.S. 175, 191
(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 (1853))); 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
Court held that “a claim drawn to subject matter otherwise statutory does not
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become nonstatutory simply because it uses a mathematical formula.”
Diehr, 450 U.S. at 187; see also id. at 191 (“We view respondents’ claims as
nothing more than a process for molding rubber products and not as an
attempt to patent a mathematical formula.”). Having said that, the 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. (citations 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.”).
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 (quotation marks 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.
USPTO Section 101 Guidance
We are also guided by U.S. Patent and Trademark Office (“USPTO”)
guidance, as set forth in the 2019 Revised Patent Subject Matter Eligibility
Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (“Guidance”) and the October
2019 Update: Subject Matter Eligibility (“October 2019 Update”),
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incorporated into the MANUAL OF PATENT EXAMINING PROCEDURE
§§ 2104–06, Rev. 10.2019 (“MPEP”) in June 2020. “The guidance sets out
agency policy with respect to the USPTO’s interpretation of the subject
matter eligibility requirements of 35 U.S.C. § 101 in view of decisions by
the Supreme Court and the Federal Circuit.” Guidance, 84 Fed. Reg. at 51.
Although “[a]ll USPTO personnel are, as a matter of internal agency
management, expected to follow the guidance,” the guidance “does not
create any right or benefit, substantive or procedural, enforceable by any
party against the USPTO.” Id. The Guidance, by its terms, applies to all
applications, and to all patents resulting from applications, filed before, on,
or after January 7, 2019. Id. at 50.
Under USPTO guidance, we first look to whether the claim recites:
(1) any judicial exceptions, including laws of nature, natural phenomena,
and products of nature (see MPEP §§ 2106.04(II)(A)(1), 2106.04(b))
(“Step 2A, Prong One”); and (2) additional elements that integrate the
judicial exception into a practical application (see id. §§ 2106.04(II)(A)(2),
2106.04(d)) (“Step 2A, Prong Two”).3

3 This evaluation is performed by (a) identifying whether there are any
additional elements recited in the claim beyond the judicial exception, and
(b) evaluating those additional elements individually and in combination to
determine whether the claim as a whole integrates the exception into a
practical application. “A claim that integrates a judicial exception into a
practical application will apply, rely on, or use 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 - Section III(A)(2), 84 Fed. Reg. at 54–55; MPEP
§ 2106.04(d).
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Only if a claim (1) recites a judicial exception and (2) does not
integrate that exception into a practical application, do we then look, under
Step 2B, to whether the additional elements, individually or in combination,
provide an inventive concept. See MPEP §§ 2106(III), 2106.05. “An
inventive concept ‘cannot be furnished by the unpatentable law of nature (or
natural phenomenon or abstract idea) itself.’” Id. § 2106.05 (quoting
Genetic Techs. v. Merial LLC, 818 F.3d 1369, 1376 (Fed. Cir. 2016)).
Among the considerations in determining whether the additional elements,
individually or in combination, amount to significantly more than the
exception itself, we look to whether they add a specific limitation beyond the
judicial exception that is not “well-understood, routine, conventional” in the
field or simply append well-understood, routine, conventional activities
previously known to the industry, specified at a high level of generality, to
the judicial exception. MPEP § 2106.05(II); Guidance, 84 Fed. Reg. at 56.
Preliminary Matter
We first address the Appellant’s argument that the Examiner’s
“rejection fails to comport with” USPTO Guidance. Appeal Br. 18; see also
id. at 20 (“[t]he Office Action on page 5 blows off the Prong Two analysis
as well”), 23 (“[c]ontrary to the guidance provided by the Memorandum, the
Office Action provides a perfunctory analysis under step two of Alice”). We
disagree.
Here, in rejecting claim 1 under § 101, the Examiner analyzes the
claim using the Mayo/Alice two-step framework. Specifically, the Examiner
looks to the intrinsic evidence of the Specification as a factor in determining
that the claim recites, and is directed to, an abstract idea. See Ans. 12–14;
Final Act. 3–5, 7–8. The Examiner evaluates whether the claim is directed
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to a judicial exception by determining that the claim recites limitations that
are mental processes and certain methods of organizing human activity,
evaluating whether the judicial exception is integrated into a practical
application, and determining it is not. See Final Act. 3, 5–7; Ans. 12–14.
The Examiner then considers the additional elements beyond the abstract
idea in determining that, when considered individually and as an ordered
combination, they do not amount to significantly more than the abstract idea.
See Final Act. 6, 8–9.
Thus, the Examiner has clearly articulated the reasons as to why the
claim is directed to an abstract idea without an inventive concept and has
notified the Appellant of the reasons for the rejection “together with such
information and references as may be useful in judging of the propriety of
continuing the prosecution of [the] application.” 35 U.S.C. § 132. In doing
so, the Examiner set forth a prima facie case of unpatentability. See In re
Jung, 637 F.3d 1356, 1362 (Fed. Cir. 2011); Chester v. Miller, 906 F.2d
1574, 1578 (Fed. Cir. 1990) (Section 132 “is violated when a rejection is so
uninformative that it prevents the applicant from recognizing and seeking to
counter the grounds for rejection”). We further note that the Examiner has
followed the USPTO’s guidelines.
Step One of the Mayo/Alice Framework
Under the first step of the Mayo/Alice framework and Step 2A of
USPTO guidance, we first determine to what claim 1 is directed, i.e.,
whether the claim recites an abstract idea and if so, whether the claim is
directed to that abstract idea.
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Under the first step of the Mayo/Alice framework and Step 2A, Prong
One of USPTO guidance, the Examiner determines that the claim recites
limitations that are similar to
mental processes (e.g., concepts performed in the human mind
(including an observation, evaluation, judgment, or opinion)),
and/or certain methods of organizing human activity (e.g.,
fundamental economic principles or practices . . ., commercial or
legal interactions (including agreements in the form of
contracts[) . . .]; advertising, marketing or sales activities or
behaviors: business relations), or managing personal behavior or
relationships or interactions between people (including social
activities, . . . and following rules or instructions)).
Final Act. 4 (emphases omitted); see also id. at 7, 9, Ans. 13–14. Under
Prong Two of USPTO guidance, the Examiner determines that the additional
elements “are recited at a high level of generality, and under the broadest
reasonable interpretation are generic processor(s) and/or generic computer
component(s) that perform generic computer functions,” that they “are no
more than mere instructions to apply the exception using a generic computer
component,” “are merely used as a tool to perform the abstract idea,” and
“amount to adding the words ‘apply it’ with the judicial exception.” Final
Act. 4; see also id. at 7, 9.
The Appellant argues that the Examiner “fails to consider the claim as
a whole and fails to read the claim limitations in context” (Appeal Br. 18)
and contends that under Prong One, “[t]he claims are directed to very
specific computer processes that are unique to the context of the direct-mail
mobile-telephone-intermediary server interactions. There is nothing abstract
about them” (id. at 20). The Appellant further contends that under Prong
Two, “the claims define subject matter that does define a practical
application, since the claimed processes relate to a new message of
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interacting with a person targeted by a direct mail piece who responds in a
new way [involving] an intermediary server in order ultimately to have an
interaction with the advertiser.” Id.
The Federal Circuit has explained that “the ‘directed to’ inquiry
applies a stage-one filter to claims, considered in light of the specification,
based on whether ‘their character as a whole is directed to excluded subject
matter.’” Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir.
2016) (quoting Internet Patents Corp. v. Active Network, Inc., 790 F.3d
1343, 1346 (Fed. Cir. 2015)). It asks whether the focus of the claim is on a
specific improvement in relevant technology or on a process that itself
qualifies as an “abstract idea” for which computers are invoked merely as a
tool. See id. at 1335–36. Here, it is clear from the Specification, including
the claim language, that claim 1 focuses on an abstract idea, and not on any
improvement to technology and/or a technical field.
Reciting a Judicial Exception
The Title of the Specification is “Computer-Implemented System
and Method for Transforming a Direct Mail Interaction between an
Individual and an Advertiser.” Spec. 1. The “Background Art” section
of the Specification discusses that “[d]irect mail programs (sometimes called
‘direct mail campaigns’), which involve delivery of direct mail pieces to
individuals, are well known in the art. The selection of individuals to be
targeted in a direct mail program is an area of frequent study.” Id. ¶ 3. In
the “Detailed Description of Specific Embodiments” section, the
Specification discusses that the “invention transform[s] the prior art
relationship described in connection with Fig. 1 into a new kind of
relationship in which the individual’s relation to the advertiser is mediated
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by an intermediary’s server system” so that “the advertiser is provided with
information allowing a direct correlation between an individual contacting
the advertiser and the specific direct-mail piece giving rise to the contact.”
Id. ¶ 21.
Consistent with this disclosure, claim 1 recites a “method utilizing
computer processes, carried out by an intermediary server system,
comprising:” under conditions of a targeted direct mail piece with specific
written content included therein, i.e.,
under conditions wherein the specific direct mail piece is one of
a set of direct mail pieces targeted and physically delivered to
identified individuals as part of a direct mail program by the
specific advertiser, each direct mail piece including in its written
content (i) a code identifying a corresponding one of the
identified individuals, (ii) a text-to phone number configured to
receive a text message from the corresponding individual, and
(iii) an instruction to the corresponding individual to manifest
interest in the content by sending, to the text-to phone number, a
text message that includes the code
(limitation (a)), and in response to receipt of a message/data from a specific
individual, i.e., “responsive to receipt, at a mobile telephone carrier
interface, of the corresponding text message, including the code, from a
mobile telephone of the specific individual, such mobile telephone having a
telephone number” (limitation (b)), performing the steps of receiving mobile
phone data of the specific individual, i.e.,
receiving, by the intermediary server system, coupled to the
mobile telephone carrier interface, mobile phone data including
the code and the telephone number of the mobile telephone of
the specific individual, wherein the intermediary server system
is coupled to a direct mail program database system, the program
database system storing record data, for each one of the identified
individuals, including the specific individual, such individual's
name, address, and code
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(limitation (b1)), storing the telephone number of the specific individual
(limitation (b2)), receiving an advertiser message/data pertinent to the
specific individual, i.e., “retrieving, from the program database, by the
intermediary server system, based on the received code, an advertiser
message on behalf of the advertiser pertinent to the specific individual”
(limitation (b3)), causing the message/data to be delivered to the phone of
the specific individual, i.e., “causing the advertiser message to be delivered
to the mobile telephone of the specific individual by the mobile telephone
carrier interface” (limitation (b4)), and transmitting data, including the name
and phone number of the specific individual in a lead message, i.e.,
“transmitting, by the intermediate server system, to a computer system of the
specific advertiser, a sales lead message providing data including the name
and mobile telephone number of the specific individual” (limitation (b5)),
whereupon the performing of the steps leads to a transformation of the mail
interaction into an electronic relationship, i.e., “whereupon the direct mail
interaction between the specific individual and the specific advertiser is
transformed into an electronic relationship based directly on utilization by
the specific individual of the code and the text-to phone number in an
environment provided by the intermediary server system” (limitation (b6)).
Appeal Br. 27–28 (Claims App.).
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We consider claim 1 as a whole4 giving it the broadest reasonable
construction5 as one of ordinary skill in the art would have interpreted it in
light of the Specification6 at the time of filing.
Claim 1 recites “[a] computer-implemented method for transforming a
direct mail interaction between a specific individual and a specific
advertiser, on the basis of a specific direct mail piece . . . physically
delivered to the specific individual.” Limitation (a) describes conditions for
the method, i.e., “wherein the specific mail piece is one of a set of direct
mail pieces targeted and physically delivered to identified individuals by the
specific advertiser,” and also describes the written content of the individual
mail pieces, i.e., each direct mail piece includes a code identifying one of the
identified individuals, a text-to-phone number configured to receive a text
message from the corresponding individual, and an instruction to the
corresponding individual to manifest interest in the content by sending, to
the text-to-phone number, a text message that includes the code. This
limitation does not recite a step of the method.
Limitation (b) recites when the steps of the method are performed,
i.e., responsive to receipt of a text message from the specific individual. We

4 “In determining the eligibility of respondents’ claimed process for patent
protection under § 101, their claims must be considered as a whole.” Diehr,
450 U.S. at 188.
5 Guidance, 84 Fed. Reg. at 52 n.14 (“If a claim, under its broadest
reasonable interpretation . . . .”) (emphasis added).
6 “First, it is always important to look at the actual language of the
claims. . . . Second, in considering the roles played by individual limitations,
it is important to read the claims ‘in light of the specification.’” Smart Sys.
Innovations, LLC v. Chicago Transit Authority, 873 F.3d 1364, 1378 (Fed.
Cir. 2017) (J. Linn, dissenting in part and concurring in part) (citing Enfish,
822 F.3d at 1335, among others).
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note that the limitation refers to “the corresponding text message.”
Although there is no antecedent basis for this term, the Appellant asserts that
a person of ordinary skill in the art would understand that “the
corresponding text message” is the text message that would be sent in
response to the instruction indicated in the mail piece to the corresponding
one of identified individuals and containing a code identifying that
corresponding individual. See Tr. 6. We further note that although
limitation (b) has that text message being received from the specific
individual, the text including the code contained in the specific direct mail,
whereas limitation (a) instructs a corresponding individual to send that text,
the Appellant asserts that, despite the use of two different terms, the specific
individual in limitation (b) is the corresponding individual that is instructed
to send the text message with the code. See Tr. 8, 12, 15–16 (clarifying that
the specific individual is one of the identified individuals and each
individual has a corresponding mail piece). The prosecution history
indicates that the Examiner supports this interpretation. See Final
Act. 12–13. Based on the Appellant’s assertions and the prosecution history,
we interpret limitation (b) to require receipt, from the specific individual, of
data, i.e., a text message that includes the code included in the written
content of the specific direct mail piece physically delivered to the
individual from limitation (a). Cf. CAE Screenplates Inc. v. Heinrich
Feidler GmbH & Co. KG, 224 F.3d 1308, 1317 (Fed. Cir. 2000) (“In the
absence of any evidence to the contrary, we must presume that the use of
these different terms in the claims connotes different meanings.”). Thus,
limitation (b) recites performing steps, i.e., limitations (b1) through (b5),
responsive to receipt of data.
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Limitations (b1) and (b3) recite receiving and retrieving data, which
are extra-solution activities and abstract ideas. See In re Bilski, 545 F.3d
943, 963 (Fed. Cir. 2008) (en banc), aff’d sub nom Bilski v. Kappos,
561 U.S. 593 (2010) (characterizing data gathering steps as insignificant
extra-solution activity); Electric Power Group, LLC v. Alstom S.A., 830 F.3d
1350, 1353 (Fed. Cir. 2016) (collecting information is an abstract idea);
ChargePoint, Inc. v. SemaCONNECT, Inc., 920 F.3d 759, 766 (Fed. Cir.
2019) (identifying communicating requests between servers over a network
as an abstract idea);
Limitation (b2) of storing data is a mental process. See Content
Extraction & Transmission LLC v. Wells Fargo Bank, Nat. Ass’n, 776 F.3d
1343, 1347 (Fed. Cir. 2014) (“The concept of data collection, recognition,
and storage is undisputedly well-known. Indeed, humans have always
performed these functions.”).
Limitation (b4) of causing a message to be delivered is recited
functionally without details on how, technologically or by what algorithm,
the causing is performed. The Specification provides no further detail, but
simply states the intermediary server “causes the advertiser message to be
sent to the mobile phone 211 of the specific individual.” Spec. ¶ 23 (cited in
Appeal Br. 6). As such, causing a message to be delivered comprises
sending or transmitting, which is post-solution activity of transmitting a
result of the retrieval of data. See Electric Power Group, 830 F.3d at 1354.
Similarly, limitation (b5) of transmitting a sales lead message is post-
solution activity of transmitting a result of the previous steps and an abstract
idea of communicating information. See id.; Bilski, 561 U.S. at 610–11
(“Flook stands for the proposition that the prohibition against patenting
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abstract ideas ‘cannot be circumvented by attempting to limit the use of the
formula to a particular technological environment’ or adding ‘insignificant
post-solution activity.”’); ChargePoint, 920 F.3d at 766.
Limitation (b6) does not positively recite a step; rather, it recites a
result of the steps in leading to a transformation of the mail interaction/
relationship into an electronic relationship.
The intermediary server system that performs method steps (b1), (b2),
(b3), and (b5) of receiving, storing, retrieving, and transmitting data
comprises a set of generic servers. See Spec. ¶ 19 (“A ‘server system’
includes a set of servers that may be implemented in physical hardware or
may be virtualized as part of a larger hardware system.”). The interface that
performs step (b4) of causing a message to be delivered comprises an
available and known interface. See Spec. ¶ 22 (“The carrier interface can be
implemented as a direct hardware interface, or, alternatively, can be
implemented via procedural calls to a cloud-based contact center service
such as Bandwidth.com of Raleigh, NC (website at
https://www.bandwidth.com/) or Nexmo of San Francisco, California
(website at https://www.nexmo.com/), or Plivo of San Francisco, California
(website at http://www.plivo.com/).”).
When considered collectively and under the broadest reasonable
interpretation, the limitations of claim 1 recite a way of receiving, storing,
retrieving, and sending data for the purposes of advertising and sales.7 This

7 We note that “[a]n abstract idea can generally be described at different
levels of abstraction.” Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1240
(Fed. Cir. 2016). The Board’s “slight revision of its abstract idea analysis
does not impact the patentability analysis.” Id. at 1241.
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is an abstract idea of “[c]ertain methods of organizing human activity . . .
commercial or legal interactions (including . . . advertising, marketing or
sales activities or behaviors)” comprising “[m]ental processes—concepts
performed in the human mind (including an observation, evaluation,
judgment, opinion).” Guidance, 84 Fed. Reg. at 52; MPEP
§§ 2106.04(a)(2)(II), 2106.04(a)(2)(III).
Our reviewing court has held similar concepts to be abstract. For
example, the Federal Circuit has held abstract the concepts of collecting,
analyzing, and displaying the results in Electric Power Group, 830 F.3d
at 1354, “(1) gathering information about television users’ viewing habits;
(2) matching the information with other content (i.e., targeted
advertisements) based on relevancy to the television viewer; and (3) sending
that content to a second device” in Free Stream Media Corp. v. Alphonso
Inc., No. 2019-1506, 2021 WL 1880931 (Fed. Cir. May 11, 2021),
“customizing a user interface” such as with targeted advertising based on
demographic information in Affinity Laboratories of Texas, LLC v.
Amazon.com, Inc., 838 F.3d 1266, 1271 (Fed. Cir. 2016) (“Amazon”),
“customizing information based on (1) information known about the user
and (2) navigation data” in Intellectual Ventures I LLC v. Capital One Bank
(USA), 792 F.3d 1363, 1369 (Fed. Cir. 2015), “targeted advertising and
bidding to display the advertising, which are both abstract ideas relating to
customizing information based on the user and matching them to the
advertiser” in In re Morsa, 809 F. App’x 913, 917 (Fed. Cir. 2020), cert.
denied sub nom. Morsa v. Iancu, No. 20-32, 2020 WL 5883301 (U.S. Oct. 5,
2020), reh’g denied, No. 20-32, 2020 WL 6551927 (U.S. Nov. 9, 2020), and
“the use of persistent identifiers to implement targeted marketing” and
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“communicating information using a personalized marking” in Bridge &
Post, Inc. v. Verizon Communications, Inc., 778 F. App’x 882, 887, 889
(Fed. Cir. 2019).
As such, we disagree that claim 1 “is clearly directed to the novel
intermediary server system and its improved functions of controlling and
processing communications between individuals’ mobile devices and
advertisers’ computer systems, not to commercial interaction between
people.” Reply Br. 13. We are also unpersuaded of Examiner error by the
Appellant’s argument that the Examiner “fails to consider the claim as a
whole and fails to read the claim limitations in context.” Appeal Br. 18; see
also Reply Br. 14. As discussed above, the Examiner makes the appropriate
findings in determining that claim 1 recites an abstract idea.
The Appellant argues “[a]ccordingly the Alice step one, Prong One,
treatment by the Office Action is improper. The claims are directed to very
specific computer processes that are unique to the context of the direct-mail
mobile-telephone-intermediary server interactions. There is nothing abstract
about them.” Appeal Br. 20. To the extent the Appellant argues that the
claim does not recite an abstract idea because it requires a computer and
“performs technical functions that cannot be performed practically in a
human mind, such as:” receiving mobile phone data, retrieving an advertiser
message, and transmitting data to a computer (Reply Br. 14; see also id.
at 13), we note that “[c]ourts have examined claims that required the use of a
computer and still found that the underlying, patent-ineligible invention
could be performed via pen and paper or in a person’s mind.” Versata Dev.
Grp., Inc. v. SAP Am., Inc., 793 F.3d 1306, 1335 (Fed. Cir. 2015); see also
Content Extraction, 776 F.3d at 1347 (Fed. Cir. 2014) (in response to an
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argument that “human minds are unable to process and recognize the stream
of bits output by a scanner,” the court noted that “the claims in Alice also
required a computer that processed streams of bits, but nonetheless were
found to be abstract.”).
To the extent the Appellant argues that the claim does not recite an
abstract idea because the processes are unique in the context of a
technological area of mail to phone to server interactions, we note, as further
discussed below, that an abstract idea, however unique, is still an abstract
idea, and that the process is limited to a particular technological environment
does not render it any less abstract. See Alice, 573 U.S. at 223 (holding that
attempting to limit the use of an abstract idea to a particular technological
environment does not make a claim patent eligible) (quoting Bilski, 561 U.S.
at 610–11).
Having concluded that claim 1 recites a judicial exception under the
Guidance, Step 2A, Prong One, we next consider whether the claim recites
additional elements that integrate the judicial exception into a practical
application.
Integration into a Practical Application
We look to whether the claims “apply, rely on, or use the judicial
exception in a manner that imposes a meaningful limit on the judicial
exception, such that the claim[s are] more than a drafting effort designed to
monopolize the judicial exception,” i.e., “integrate[] a judicial exception into
a practical application.” Guidance, 84 Fed. Reg. at 54; MPEP § 2106.04(d).
We note that, as stated above, the question is whether the claims as a whole
“focus on a specific means or method that improves the relevant technology”
or are “directed to a result or effect that itself is the abstract idea and merely
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invoke generic processes and machinery.” McRO, Inc. v. Bandai Namco
Games Am. Inc., 837 F.3d 1299, 1314 (Fed. Cir. 2016).
Here, the Examiner finds that the additional elements recited in
claim 1 beyond the abstract idea are “‘computer-implemented,’ ‘utilizing
computer processes,’ ‘an intermediary server system,’ ‘a text message,’ ‘a
mobile telephone carrier interface,’ ‘a mobile telephone,’ ‘a direct mail
program database system,’ ‘a computer system,’ ‘electronic,’ and ‘an
environment provided by the intermediary server system.’” Final Act. 4.
We agree with the Examiner that the elements “are recited at a high level of
generality, and under the broadest reasonable interpretation are generic
processor(s) and/or generic computer component(s) that perform generic
computer functions.” Id. As discussed above and by the Examiner, the
server system that implements the method, i.e., that makes the method
“computer-implemented” and “utilizing computer processes,” the carrier
interface, the telephone, and the database system are comprised of generic
components. See supra; Final Act. 4–5; Spec., Fig. 2, ¶¶ 19 (“A ‘computer
system’ includes a server system, a desktop computer, a laptop computer, a
tablet computer, a smartphone, or other computing device that can be
coupled to the internet.”), 21–22 (describing a system with generic, known,
and available components). The text message is a form of data and the
environment is the area of use.
As is clear from the Specification, there is no indication that the
operations recited in claim 1 require any specialized computer hardware or
other inventive computer components, i.e., a particular machine, invoke any
asserted inventive programming, or that the claimed invention is
implemented using other than generic computer components to perform
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generic computer functions. See DDR Holdings, LLC v. Hotels.com, L.P.,
773 F.3d 1245, 1256 (Fed. Cir. 2014) (“[A]fter Alice, there can remain no
doubt: recitation of generic computer limitations does not make an otherwise
ineligible claim patent-eligible.”). The Appellant does not contend that it
invented any of the claimed components or their basic functions or that those
components, claimed generally, were unknown in the art as of the time of
the invention. See Amazon, 838 F.3d at 1270.
We also find no indication in the Specification that the claimed
invention as recited in claim 1 effects a transformation or reduction of a
particular article to a different state or thing. We disagree with the
Appellant’s contention that “it is readily apparent that the claims define
subject matter that does define a practical application, since the claimed
processes relate to a new message of interacting with a person targeted by a
direct mail piece who responds in a new way [involving] an intermediary
server in order ultimately to have an interaction with the advertiser.” Appeal
Br. 20; see also Reply Br. 15 (“This novel intermediary server system, as
recited explicitly in claim 1, provides ‘an environment’ in which ‘the direct
mail interaction between the specific individual and the specific advertiser is
transformed into an electronic relationship based directly on utilization by
the specific individual of the code and the text-to phone number.’”). To the
extent the Appellant claims and argues that the transformation of the
relationship between the specific individual and the specific advertiser is a
transformation to a different state or thing (see Appeal Br. 20), we disagree.
The abstract relationship remains an abstract relationship; the field of the
relationship changes from being over a mail piece to being over a network.
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We do not find anything of record that attributes an improvement in
technology and/or a technical field to the claimed invention or that otherwise
indicates that the claimed invention integrates the abstract idea into a
“practical application,” as that phrase is used in USPTO guidance. Limiting
the process to a particular technological environment — here, an
environment with an intermediary server between a mobile device and
advertiser computer — does not render it any less abstract. See Alice,
573 U.S. at 223 (holding that attempting to limit the use of an abstract idea
to a particular technological environment does not make a claim patent
eligible) (quoting Bilski, 561 U.S. at 610–11); Affinity Labs of Tex., LLC v.
DIRECTV, LLC, 838 F.3d 1253, 1259 (Fed. Cir. 2016) (“[M]erely limiting
the field of use of the abstract idea to a particular existing technological
environment does not render the claim[] any less abstract”). We further note
that the claim does not recite controlling and processing communications (cf.
Reply Br. 15), but simply receiving communications, storing data, retrieving
data, causing data to be delivered, and transmitting a message.
The Appellant newly argues in the Reply Brief, at page 15, that the
invention provides an “improvement in the functioning of a computer, by
removing the technical burden of processing certain communications from
the advertiser’s computer system.” This statement is unsupported; the
Specification does not discuss any such benefit of the system nor that there
previously existed a problem regarding processing burdens that the invention
aims to address.
We are not persuaded of Examiner error by the Appellant’s argument
that, similar to DDR Holdings,
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the claimed invention here solves a problem of handling mobile
telephone responses to a direct mail pieces by transforming such
responses into a computer environment as electronically
transmitted sales lead messages. The claimed intermediary
server system is necessarily rooted in computer technology, since
it is converting and transforming mobile telephone calls into
electronic sales lead messages and transmitting these messages
electronically to the advertiser's computer system.
Reply Br. 15–16. The Appellant does not provide adequate reasoning or
evidence, and we do not see from the claim, how the limitations claim a
technological solution to a computer-based problem, i.e., a solution
“necessarily rooted in computer technology in order to overcome a problem
specifically arising in the realm of computer networks.” DDR Holdings,
773 F.3d at 1257; see also Ans. 14.
The court in DDR noted that “not all claims purporting to address
Internet-centric challenges are eligible for patent.” DDR Holdings, 773 F.3d
at 1257. The Specification does not discuss any particular problems the
invention aims to address. As best we can tell, the problem addressed is
inefficient marketing. See Spec. ¶¶ 2, 3. This problem existed prior to the
Internet. See, e.g., Capital One Bank, 792 F.3d at 1369–71 (determining that
tailoring advertisements in television commercials and newspaper ads has
been long prevalent and not a problem unique to the Internet). At best, the
problem is technically-based in handling phone responses and
“transforming” them into a computer environment, but is not specifically
arising in the realm of computer networks. See Bridge and Post,
778 F. App’x at 887, 891 (finding that “targeted marketing and market
segmentation were developed to increase the effectiveness of advertisements
placed in traditional media[,] such as radio, television, and printed
newspapers and magazines[,]” and, as such, are not “problems necessarily
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rooted in computer technology,” but “recite the performance of a business
practice known from the pre-internet world.”).
Further, the purported solution of using an intermediary server to
receive, store, retrieve, cause delivery of, and transmit data is not rooted in
computer technology. This purported solution requires the use of a generic
server operating in its ordinary capacity. See supra; see also Alice, 573 U.S.
at 224–26. The Appellant does not, and cannot, claim to have invented the
general use of an intermediary server. The “focus” of the claim is not “on
the specific asserted improvement in computer capabilities” (Enfish,
822 F.3d at 1336), but rather on using the computer as a tool to implement
the abstract idea in the particular field of handling mail advertising in a
computer environment.
Regarding the Appellant’s argument that claim 1 is similar to those of
McRO (see Reply Br. 16), the claims there were directed to a specific
improvement in computer technology. In McRO, the claims were directed to
computer animation and used rules to automate a subjective task of humans
to create a sequence of synchronized, animated characters. See McRO,
837 F.3d at 1314–15. Unlike Flook, Bilski, and Alice, it was not the use of
the computer, but the incorporation of the rules that improved an existing
technological process. Id. at 1314. Here, there is no such incorporation of
rules nor an improvement to existing technology or a technological process.
See Ans. 15–16.
We agree with the Examiner that the additional elements of claim 1 do
not integrate the judicial exception into a practical application, as the term is
used in USPTO guidance, because they “amount [to] no more than [ ] mere
instructions to apply the abstract idea using generic computer components
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. . . [and] do not impose any meaningful limits on practicing the abstract
idea.” Final Act. 8.
Thus, we are not persuaded of error in the Examiner’s determination
that claim 1 is directed to an abstract idea.
Step Two of the Mayo/Alice Framework
Under the second step in the Mayo/Alice framework and USPTO
guidance Step 2B, we “[e]valuat[e] additional elements to determine
whether they amount to an inventive concept [which] requires considering
them both individually and in combination to ensure that they amount to
significantly more than the judicial exception itself.” MPEP § 2106.05(I);
see also Alice, 573 U.S. at 221. Here, we agree with and adopt the
Examiner’s findings and conclusion that,
taken alone, the additional elements do not amount to
significantly more than the above-identified judicial exception
(the abstract idea). Looking at the limitations as an ordered
combination adds nothing that is not already present when
looking at the elements taken individually. There is no indication
that the combination of elements improves the functioning of a
computer or improve any other technology. Their collective
functions merely provide generic computer implementation.
Final Act. 8–9. We add the following for emphasis.
We disagree with the Appellant’s contention that claim 1 recites
elements that amount to significantly more than the abstract idea because
the prior art fails to disclose or suggest the features, defined by
claim 1, of a method that includes, among other things:
(1) an intermediate server system;
(2) a distinct computer of the specific advertiser;
(3) a sales lead message providing data including the name and
mobile telephone number of the specific individual; and
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(4) transmitting of the foregoing sales lead message by the
intermediate server system to the computer system of the specific
advertiser.
Appeal Br. 21; see also id. at 23 (“Specifically, a comparison of Goldstein
with the claim limitations of transmitting . . . a sales lead message . . .
whereupon the direct mail interaction between the specific individual and
the specific advertiser is efficiently transformed into an electronic
relationship . . . in an environment provided by the intermediary server
system[] shows that the claimed subject matter indeed defines activities that
are not routine, conventional or well understood, and in fact add meaningful
limits to practicing the alleged abstract idea.”). The Appellant
misapprehends the controlling precedent. An abstract idea does not
transform into an inventive concept just because the prior art does not
disclose or suggest it. See Mayo, 566 U.S. at 78. “Groundbreaking,
innovative, or even brilliant discovery does not by itself satisfy the § 101
inquiry.” Ass’n for Molecular Pathology v. Myriad Genetics, Inc., 569 U.S.
576, 591 (2013). Indeed, “[t]he ‘novelty’ of any element or steps in a
process, or even of the process itself, is of no relevance in determining
whether the subject matter of a claim falls within the § 101 categories of
possibly patentable subject matter.” Diehr, 450 U.S. at 188–89; see also
Mayo, 566 U.S. at 91 (rejecting “the Government’s invitation to substitute
§§ 102, 103, and 112 inquiries for the better established inquiry under
§ 101”). Indeed, in Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709 (Fed. Cir.
2014), the court ultimately held “[t]hat some of the eleven steps were not
previously employed in this art is not enough—standing alone—to confer
patent eligibility upon the claims at issue.” Id. at 716.
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As discussed above, under Step 2B we look to whether the additional
elements beyond the abstract idea, individually or in combination, provide
an inventive concept. Guidance, 84 Fed. Reg. at 55; MPEP § 2106.05(I).
Alice is clear, as described above, that under step two of the Mayo/Alice
framework, the elements of each claim are considered both individually and
“as an ordered combination” to determine whether the additional elements,
i.e., the elements other than the abstract idea itself, “transform the nature of
the claim” into a patent-eligible application. Alice, 573 U.S. at 217; see also
Mayo, 566 U.S. at 72–73 (requiring that “a process that focuses upon the use
of a natural law also contain other elements or a combination of elements,
sometimes referred to as an ‘inventive concept,’ sufficient to ensure that the
patent in practice amounts to significantly more than a patent upon the
natural law itself”). In other words, the inventive concept under step two of
the Mayo/Alice framework cannot be the abstract idea itself: “It is clear from
Mayo that the ‘inventive concept’ cannot be the abstract idea itself, and
Berkheimer [v. HP Inc., 881 F.3d 1360 (Fed. Cir. 2018) (“Berkheimer”)] . . .
leave[s] untouched the numerous cases from this court which have held
claims ineligible because the only alleged ‘inventive concept’ is the abstract
idea.” Berkheimer v. HP, Inc., 890 F.3d 1369, 1374 (Fed. Cir. 2018) (Order,
On Petition for rehearing en banc, May 31, 2018) (Moore, J., concurring)
(Berkheimer II); see also BSG Tech LLC. v. Buyseasons, Inc., 899 F.3d
1281, 1290 (Fed. Cir. 2018) (“It has been clear since Alice that a claimed
invention’s use of the ineligible concept to which it is directed cannot supply
the inventive concept that renders the invention ‘significantly more’ than
that ineligible concept.”).
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Here, the features of a sales message and transmitting of the message
are not additional elements beyond the abstract idea. The features of the
intermediate server system and advertiser computer are generic computer
elements operating in their ordinary capacities to perform the functions of
receiving, storing, retrieving, and transmitting data.
We also disagree with the Appellant’s contention that the Examiner’s
“analysis of the claims under Step 2B is improper because the Office Action
has not applied the correct legal standard from Berkheimer.” Appeal Br. 23
(referring to USPTO Memorandum, Robert W. Bahr, Deputy Commissioner
for Patent Examination Policy, April 19, 2018). We note that the court in
Berkheimer held that “[t]he patent eligibility inquiry may contain underlying
issues of fact.” 881 F.3d at 1365 (quoting Mortg. Grader, Inc. v. First
Choice Loan Servs. Inc., 811 F.3d 1314, 1325 (Fed. Cir. 2016) (“The § 101
inquiry ‘may contain underlying factual issues.’”)). But, the court also held
that “[w]hen there is no genuine issue of material fact regarding whether the
claim element or claimed combination is well-understood, routine, [and]
conventional to a skilled artisan in the relevant field, this issue can be
decided on summary judgment as a matter of law.” Berkheimer, 881 F.3d
at 1368 (emphasis added). This qualification has been subsequently
reiterated.
If there is a genuine dispute of material fact, Rule 56
requires that summary judgment be denied. In Berkheimer, there
was such a genuine dispute for claims 4–7, but not for claims 1–3
and 9. . . . [I]n accordance with Alice, we have repeatedly
recognized the absence of a genuine dispute as to eligibility for
the many claims that have been defended as involving an
inventive concept based merely on the idea of using existing
computers or the Internet to carry out conventional processes,
with no alteration of computer functionality.
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Berkheimer II, 890 F.3d at 1371–73 (Moore, J., concurring); see also Aatrix
Software, Inc. v. Green Shades Software, Inc., 890 F.3d 1354, 1368 (Fed.
Cir. 2018) (Reyna, J., dissenting) (“A factual allegation or dispute should not
automatically take the determination out of the court’s hands; rather, there
needs to be justification for why additional evidence must be considered—
the default being a legal determination.”).
Here, the Examiner cites to the Specification, patent publications, and
the MPEP to support the Examiner’s conclusion. Final Act. 6; see also
Ans. 16–17. Further, the Specification clearly supports the Examiner’s
conclusion by indisputably showing that the claimed additional elements
were conventional at the time of filing. See supra. We note that the
question is not whether “the recited limitations themselves are not well
understood, routine and conventional activities previously known to the
industry” (Appeal Br. 24), but whether “the claim limitations ‘involve more
than performance of well-understood, routine, [and] conventional activities
previously known to the industry.’” Id. (quoting Berkehimer, 881 F.3d
at 1367). They do not.
Taking the claimed elements separately, the functions performed by
the server system, recited generally, are purely conventional. The claimed
generic server system operates in its ordinary and conventional capacity to
perform the well-understood, routine, and conventional functions of
receiving, storing, retrieving, causing delivery of, and transmitting data. See
Spec., Fig. 2, ¶¶ 19–23; see also, e.g., Electric Power Group, 830 F.3d at
1355 (gathering, sending, monitoring, analyzing, selecting, and presenting
information does not transform the abstract process into a patent-eligible
invention); Alice, 573 U.S. at 226 (“Nearly every computer will include a
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‘communications controller’ and ‘data storage unit’ capable of performing
the basic calculation, storage, and transmission functions required by the
method claims.”).
Considered as an ordered combination, the components of the
Appellant’s claim add nothing that is not already present when the steps are
considered separately. The sequence of receiving, storing, retrieving,
causing delivery of, and transmitting data is equally generic and
conventional or otherwise held to be abstract. See, e.g., Electric Power
Group, 830 F.3d at 1354–56 (holding that the sequence of gathering,
analyzing, and displaying in real-time was abstract); FairWarning IP, LLC v.
Iatric Sys., Inc., 839 F.3d 1089, 1095 (Fed. Cir. 2016) (generating a rule
related to accessing information, applying the rule, and storing and
announcing the result did not transform the abstract idea into a patent-
eligible invention); Inventor Holdings, LLC v. Bed Bath & Beyond, Inc.,
876 F.3d 1372, 1378 (Fed. Cir. 2017) (holding that sequence of data
retrieval, analysis, modification, generation, display, and transmission was
abstract).
To the extent the Appellant contends that claim 1 here is similar to
those in BASCOM Global Internet Services, Inc. v. AT&T Mobility LLC, 827
F.3d 1341 (Fed. Cir. 2016) (see Appeal Br. 25), we disagree. See
Ans. 14–15. The Appellant does not show how the claim here is similar to
BASCOM’s “particular arrangement of elements [that] is a technical
improvement over prior art ways of filtering such content.” 827 F.3d
at 1350. The patent at issue in BASCOM “claim[ed] a technology-based
solution (not an abstract-idea-based solution implemented with generic
technical components in a conventional way) to filter content on the Internet
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that overcomes existing problems with other Internet filtering systems.” Id.
at 1351. The court determined that “[b]y taking a prior art filter solution
(one-size-fits-all filter at the ISP server) and making it more dynamic and
efficient (providing individualized filtering at the ISP server), the claimed
invention represents a ‘software-based invention[ ] that improve[s] the
performance of the computer system itself.’” Id. Here, there is no such
improvement to the claimed server system, carrier interface, database
system, computer system, mobile telephone themselves or an
unconventional arrangement of computer elements in that system that is a
technical improvement. Cf. Reply Br. 16 (“In a manner, similar to
BASCOM, the claims of the application require an unconventional
combination of elements for processing direct mail interactions between an
individual and an advertiser, via the intermediary server system.”).
Although the Appellant contends “[t]his specific application [of creating and
causing delivery of a sales lead message based directly on utilization by the
specific individual of the code and the text-to phone number in an
environment provided by the intermediary server system] is rooted in the
nature of computer technology” (Appeal Br. 25), the Appellant does not
explain, and we do not see, how this application causes a technical
improvement or how the use of an intermediary server is unconventional.
Any improvement lies in the process of receiving phone data, storing
number data, retrieving an advertiser message, causing the message to be
delivered to the telephone, and transmitting a sales lead message to an
advertiser computer, i.e., the abstract idea itself.
Thus, we are not persuaded of error in the Examiner’s determination
that the additional elements of claim 1, considered individually and as an
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ordered combination, do not amount to significantly more than the abstract
idea itself.
We sustain the Examiner’s rejection under 35 U.S.C. § 101 of
independent claim 1 and thus also of claims 2–19.

35 U.S.C. § 103
Failure to Disclose the Intermediate Server System and Sales Lead Message
The Appellant contends that the Examiner’s rejection of claim 1 is in
error because “the rejection fails to account for claim requirements of an
intermediate server system and a sales lead message.” Appeal Br. 7; see
also Reply Br. 3, 6. The Appellant relies on the specific architecture of the
system in the claimed method and the communications between the system
components and argues that Goldsmith does not teach the intermediary
server performing the functions claimed. See Appeal Br. 8–9, 11–13; Reply
Br. 3–6. The Appellant also argues that the combination of the cited art does
not teach the sales lead message as recited in step (b5) that is transmitted in
response to the receipt of a message as recited in limitation (b). See Appeal
Br. 9–11, 14–15; Reply Br. 6–8.
Conversely, the Examiner maintains that the combination of
Goldsmith and Davidow teaches those features of claim 1. See Ans. 4–11;
Final Act. 10–23. Specifically, the Examiner finds that Goldsmith’s market
server meets the claimed intermediary server system. Ans. 4; see also Final
Act. 15–19. The Examiner further finds that although Goldsmith teaches the
server “providing data including the name and mobile telephone number of
the specific individual” (Final Act. 21 (emphases omitted)), Goldsmith does
not explicitly teach the server system transmitting a sales lead message to a
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computer system of the specific advertiser (id. at 22). The Examiner relies
on Davidow to cure this deficiency, determining that one of ordinary skill in
the art would
modify the advertising method as disclosed by Goldsmith by
combining the lead generation that is collected and delivered to
an advertiser as taught by Davidow, because doing so would
enable advertisers to know such information to replicate the
success and being to maximize their return on investment. This
would allow advertisers to focus its marketing efforts on those
most likely to purchase, leading to more cost-effective sales
techniques (Davidow, ¶ 12).
Id. at 23; see also Ans. 4–6.
Goldsmith discloses a system and method “that merge print and/or
direct mailing marketing with mobile marketing to assist marketers to
identify an interested consumer with the desired product/service” whereby
“messages are transmitted between mobile units and at least one market
server to identify and provide specific messages identifying users of the
mobile units and offers related to a desired product and/or service.”
Goldsmith, Abstr. Goldsmith describes how direct mailing can include a
code or keyword; for example, “a mailing could indicate that there is a two
for one pizza deal when you send a text message with a SMS short code and
a keyword (e.g., ‘pizza123@98765’ or ‘text pizza123 to 98765 for a two for
one pizza deal’).” Id. ¶ 20. In this way, “a marketer can introduce and
inform potential customers of particular products associated with the
marketer and subsequently entice the interested consumers to utilize their
mobile unit to contact the marketer.” Id. The system comprises a mobile
unit to transmit electronic data, such as a code with a keyword, that is
received by a service provider and a market server 30 operationally
connected to a market database. Id. ¶¶ 25, 26. The market server correlates
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the received data to a particular marketer record, retrieves the record that
relates a marketer to a particular marketing campaign associated with the
code and that includes an identifier for the mobile unit caller/sender of the
data, and can transmit information, such as a confirming or return electronic
message, to the mobile unit caller/sender. Id. ¶¶ 26, 28.
Davidow discloses a “SYSTEM AND METHOD FOR ONLINE
LEAD GENERATION.” Davidow, Title. “Lead generation is the process
of collecting and delivering to an advertiser the user information that the
user has entered, acknowledging the user’s interest in a product or service of
the advertiser or of the web host itself.” Id. ¶ 12. A user can submit, via a
form, data such as first and last names, address, email address, phone
number, and date of birth, to sign up for an advertised item or to receive
more information from the advertiser. Id. ¶ 25, Fig. 2A. Once verified by
an application server, the application server stores the user’s entered data
and transmits the data to a networked advertiser computing device. Id.
¶¶ 26, 71, 72.
The Appellant contends that “Goldsmith shows only a single
computer [system], which fails to correspond to the intermediate server
system, and otherwise fails to show” the claimed requirements of:
(1) an intermediate server system;
(2) a distinct computer of the specific advertiser;
(3) a sales lead message providing data including the name and
mobile telephone number of the specific individual; and
(4) transmitting of the foregoing sales lead message by the
intermediate server system to the computer system of the specific
advertiser.
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Appeal Br. 7–8; see also id. at 9–13. We disagree for at least the reasons
below.
We find supported the Examiner’s finding that Goldsmith’s market
server 30 meets the claimed intermediary server coupled to a mobile
telephone carrier interface, that receives mobile phone data, stores that data
in a database, retrieves an advertiser message, and causes that message to be
delivered to the specific individual’s telephone. See supra; Goldsmith ¶¶ 12,
25, 26, 71, 72. We note that although the Specification defines particular
terms including “advertiser,” “direct mail piece,” “server system” and
“computer system” (Spec. ¶ 19), the Specification, including the claim, does
not recite a specific definition for “intermediary server system.”
We disagree that “Davidow fails to disclose transmitting a sales lead
message from an intermediary server system to a computer system of the
specific advertiser.” Appeal Br. 14; see also Reply Br. 7–8. Rather, we find
supported the Examiner’s finding that Davidow teaches transmitting a sales
lead message, in the form of transmitting the user’s verified entered data,
including the name and phone number, to the advertiser’s computer. See
supra; Davidow, Title, ¶¶ 26, 72.
We note, in response to the Appellant’s argument that Goldsmith fails
to teach “the architecture of the system required by claim 1” (Appeal Br. 8;
see also id. at 9, 11–12; Reply Br. 3–5), that claim 1 recites a method with
claimed steps of an intermediate server system performing the steps of
receiving, storing, retrieving, and transmitting data (see Appeal Br. 27–28).
Similarly, claim 12 recites a computer medium with instructions for a server
to perform the functions of receiving, storing, retrieving, and transmitting
data. See id. at 30–31. The Examiner finds that Goldsmith’s market server,
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as modified by Davidow’s advertising server, teaches performing the steps
claimed.
To the extent the Appellant argues that Goldsmith’s market server
does not meet the claimed intermediary server system because it “is operated
by a company selling directly to consumers” and “[i]n comparing the market
server 30 of Goldsmith with the subject matter claimed in the present
application, the only computer system disclosed in the present application as
operated by a company selling directly to consumers is the advertiser
computer system 24,” not the intermediary server system” (Appeal Br. 12;
see also Reply Br. 5–6), this argument is unpersuasive because it is not
commensurate with the scope of claim 1. The claim does not require, or
prohibit, a specific entity operating the intermediary server system. The
Specification defines a server system as “a set of servers that may be
implemented in physical hardware or may be virtualized as part of a larger
hardware system” (Spec. ¶ 19), but does not specifically define an
“intermediary server system.” The Specification also defines an advertiser
as “an individual or organization sponsoring an advertising program that
utilizes a direct mail piece that is targeted to a group of individuals” and
provides examples of “a retailer, an organization formed to sponsor a
political candidate or a ballot initiative, or any other organization using a
direct mail piece in an advertising program.” Id. Although Goldsmith
discloses an advertiser, i.e., a marketer such as a pizza retailer, utilizing a
direct mail piece advertising program, the claim does not prohibit the
intermediary server program being utilized by an advertiser. Moreover, the
particular party controlling the intermediary server sets forth an intangible
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property that does not impose a meaningful limitation on the claim and does
not serve as a patentable distinction over Goldsmith.
We are also not persuaded of error because the Appellant is arguing
against Goldsmith and Davidow individually when the Examiner relies on
the combination of both to teach limitation (b5) of an intermediary server
transmitting to an advertiser’s computer system data comprising a sales lead
that includes data of the specific individual, i.e., the data of the individual
who sent the text message. The test for obviousness is not what any one
reference would have suggested, but rather what the combined teachings of
the references would have suggested to those of ordinary skill in the art. See
In re Keller, 642 F.2d 413, 426 (CCPA 1981). “[O]ne cannot show non-
obviousness by attacking references individually where, as here, the
rejections are based on combinations of references.” Id.; see also Ans. 7–8.
Specifically, as discussed above, the Examiner finds that Goldsmith
teaches an intermediary server, i.e., the market server, that can transmit
information and that Davidow teaches an intermediary server, i.e., the
advertising server, that sends to a separate advertiser’s computing device a
sales lead including the data, which include the name and phone number, of
the individual who submitted/sent information. See Ans. 9–10. Thus, the
combination of Goldsmith and Davidow teaches the requirements recited in
limitation (b5) of an intermediary server transmitting to an advertiser’s
computer device a sales lead. And, we agree with the Examiner (see Final
Act. 21, 23; Ans. 10) that there is insufficient evidence on the record
showing a functional relationship between the specific information included
in the sales message transmitted and the method claimed. Claim 1 merely
recites transmitting such information; there is nothing claimed regarding the
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origin of the information nor is there anything regarding the use of such
information.
Lastly, we are not persuaded of error by the Appellant’s argument that
the Examiner fails to explain “why a person of ordinary skill in the art would
be motivated to combine the prior art references in the manner urged by the
examiner, and a satisfactory explanation for the motivation finding that
includes an express and rational connection with evidence.” Appeal Br. 15;
see also Reply Br. 8–9. Specifically, the Appellant argues that
[t]he proffered rationale does not inform us why the reader of the
Goldsmith reference, concerning direct mail advertising, under
conditions in which the mobile user’s information is already
captured and the mobile user (per Goldsmith, paragraph 34) has
already been transmitted a responsive sales message, would be
impelled to consult Davidow, which concerns web-based
advertising.
Appeal Br. 15. However, the Appellant does not explain, with evidence or
reasoning, why the Examiner’s “proffered rationale” that one of ordinary
skill in the art would
modify the advertising method as disclosed by Goldsmith by
combining the lead generation that is collected and delivered to
an advertiser as taught by Davidow, because doing so would
enable advertisers to know such information to replicate the
success and begin to maximize their return on investment. This
would allow advertisers to focus its marketing efforts on those
most likely to purchase, leading to more cost-effective sales
techniques (Davidow, ¶ 12)
(Ans. 11) is in error. The Appellant’s argument that “[t]he delivery to the
advertiser of information the user sends through a website’s advertising
banner renders Goldsmith unsatisfactory for its purpose of enabling a user to
express interest to an advertiser, in a direct-mail-advertised product, with an
associated code, via the user’s mobile unit” (Reply Br. 8–9) is unsupported
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by evidence or technical reasoning why Davidow’s transmitting of a sales
lead to an advertiser computer cannot be combined with Goldsmith’s
method. And we note that the Examiner’s rejection is not based upon a
bodily incorporation of Davidow’s method into Goldsmith’s method. See
Keller, 642 F.2d at 425 (“The test for obviousness is not whether the features
of a secondary reference may be bodily incorporated into the structure of the
primary reference . . . . Rather, the test is what the combined teachings of the
references would have suggested to those of ordinary skill in the art.”).
Secondary Considerations of Commercial Success
The Examiner’s findings and reasoning establish a relatively strong
prima facie case that the claimed subject matter would have been obvious.
Inasmuch as we have concluded that the claimed subject matter would have
been prima facie obvious, and because the Appellant has submitted evidence
in rebuttal of obviousness, we now turn to consider this evidence. We
recognize that evidence of secondary considerations, such as that presented
by the Appellant, must be considered in route to a determination of
obviousness/non-obviousness under 35 U.S.C. § 103. Accordingly, we
consider anew the issue of obviousness under 35 U.S.C. § 103, carefully
evaluating and weighing both the evidence relied upon by the Examiner and
the objective evidence of non-obviousness provided by the Appellant. See,
e.g., In re Eli Lilly & Co., 902 F.2d 943, 945 (Fed. Cir. 1990). We are
mindful that objective evidence of nonobviousness in any given case may be
entitled to more or less weight depending on its nature and its relationship
with the merits of the invention. Stratoflex Inc. v. Aeroquip Corp., 713 F.2d
1530, 1539 (Fed. Cir. 1983).
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Regarding the Appellant’s argument that “[t]he failure of the Office
Action to consider this secondary evidence is improper and grounds for
reversal” (Appeal Br. 17; see also Tr. 21 (“the examiner has ignored the
secondary considerations of record”)), we disagree. The Examiner clearly
considers the evidence in finding it is “insufficient to overcome the
rejection” because the Declaration is biased, “fails to establish a nexus
between the claimed subject matter and the secondary consideration,” and
“contains conclusory statements unsupported by factual evidence,” and the
“[g]ross sales figures do not show commercial success absent evidence as to
market share (see MPEP 716.03(b)(IV)).” Final Act. 2–3; see also Ans. 12.
The Appellant provides evidence of secondary considerations of
commercial success as “evidence of non-obviousness.” Appeal Br. 15–17;
Reply Br. 10–12. The evidence is in the form of the Declaration of co-
inventor Craig Schmitz (“Declaration” or “Decl.”) that includes testimonials
from other parties. Appeal Br. 15, Appendix II. We have considered the
Declaration, including the testimonials attached thereto, provided in support
of secondary considerations and, weighing all evidence of obviousness
against all evidence of non-obviousness, we find the Examiner’s response
well-taken. We add the following.
Evidence of secondary considerations must be relevant to and
reasonably commensurate with the scope of the claim, and, therefore, we
must determine whether there is a nexus between the merits of the claimed
invention and the evidence of secondary considerations. See In re Huai-
Hung Kao, 639 F.3d 1057, 1068 (Fed. Cir. 2011); Ashland Oil, Inc. v. Delta
Resins & Refractories, Inc., 776 F.2d 281, 305 n.42 (Fed. Cir. 1985).
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Where the offered secondary consideration actually results from
something other than what is both claimed and novel in the claim,
there is no nexus to the merits of the claimed invention. Tokai
Corp. v. Easton Enters., Inc., 632 F.3d 1358, 1369
(Fed.Cir.2011) (“If commercial success is due to an element in
the prior art, no nexus exists.”); Ormco Corp.[ v. Align Tech.,
Inc.], 463 F.3d [1299,] at 1312 [(Fed. Cir. 2006)] (“[I]f the
feature that creates the commercial success was known in the
prior art, the success is not pertinent.”).
Huani-Hung Ko, 639 F.3d at 1068.
The party seeking the patent bears the burden to overcome the
prima facie case of obviousness with evidence of secondary
considerations, such as commercial success. [In re Huang, 100
F.3d 135,]. . . 139 [(Fed. Cir. 1996)]. Commercial success is
relevant to obviousness only if there is a “nexus ... between the
sales and the merits of the claimed invention.” Id. at 140. There
must be “proof that the sales were a direct result of the unique
characteristics of the claimed invention—as opposed to other
economic and commercial factors unrelated to the quality of the
patented subject matter.” Id.
In re Applied Materials, Inc., 692 F.3d 1289, 1299–300 (Fed. Cir. 2012)
Here, inventor Craig Schmitz’s Declaration discusses that Textium’s
technology “provides a platform, covered by the claims pending in this
application” (Decl. 1, ¶ 3) and that “[t]he Textium service benefits both the
consumer and the advertiser” in allowing the consumer to more quickly
obtain information, become better informed, and “then choose to engage on
the consumer’s desired terms via text or phone,” and for the advertiser to
“identify immediately an in-market customer and focus on fulfilling
customer needs in an expedient manner” (id. at 2, ¶ 4). The Declaration
further discusses that since launching the Textium service, Textium has
numerous clients, and “the Textium technology is generating thousands of
sales leads for” companies. Id. ¶ 5. “Based on current projections, Textium
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expects to apply its technology” to millions of mail pieces and “from that,”
Textium “expect[s]” to generate many more sales leads for clients and
“forecast[s] that by working Textium sales leads, dealers will sell more than
40,000 new vehicles this year.” Id. ¶ 6. After clients evaluate results of
campaigns where Textium is used, they are moving to have 100% of their
mail pieces include Textium technology, and Textium “believe[s] that this
trend will drive the [previous] estimates” higher. Id. ¶ 7. The Declaration
then attaches testimonials (as Exhibit A at pages 3–5 of the Declaration) that
“confirm the unique value experienced by advertisers in receiving an
actionable sales lead as to which the consumer identified in the sales lead is
known to be motivated to purchase, because this consumer has just
responded to the direct mail piece.” Id. ¶ 8.
The testimonials generally attest to satisfaction with Textium and/or
Textium technology. One testimonial provides that “Textium has changed
the game,” has “modernized” how a client engages with customers,
“changed the way the customers engage the dealership,” and the client
“would not be at revenue standpoint [they are] at if Textium was not a
feature [they] could offer on [their] our direct mail.” Decl. 3. Another
provides that “Textium has added a very robust and comprehensive element
to direct mail,” and that “Textium sales leads give dealerships the ability to
target pre-engaged customers with pin-point accuracy, and in real time.” Id.
at 4. The third testimonial provides that based on the results of other dealers
“enroll[ing] in additional Textium mail campaigns,” a consultant was given
“the confidence to continue to recommend the program to other dealers” and
was “convinced” that they “should have the option to have Textium on all of
our mail pieces but specifically our popcards as I have the most success with
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those mail campaigns.” Id. Another expresses appreciation for partnering
with Textium, praises Textium as “top notch,” and implies, without
expressly stating, that Textium may help them hit quarterly sales goals and
sell more vehicles. Id. The fifth testimonial states that “Textium is pivotal
to the direction epsilon is trying to go as an organization,” “Textium has
allowed us to digitize our mail pieces,” “Textium technology works, people
love to text,” “seeing a live lead and being proactive vs reactive to a 30-day
report after the fact makes night & day difference,” and that Textium
provides confidence to get clients. Id. at 5. Finally, the last testimonial
praises Textium for “opening more doors on the sales side” and states that
“dealers like the idea of a text because it generates a sales lead that can turn
into a sale, many times each month for me” and can “track the progress of
the mailer better.” Id.
However, the Appellant has not adequately shown that the
Declaration, including the testimonials, demonstrates that “the commercial
success was caused by the merits of the invention as distinct from the prior
art.” Huai-Hung Kao, 639 F.3d at 1069. At best, the evidence shows that
the use of Textium and/or its technology has resulted in more clients, sales
leads, and sales, but there is no real data to show that the invention is
commercially successful. Although the Declaration indicates more clients
use Textium, many leads have been generated, and many sales made, it
provides no factual basis to support these assertions. There is no indication
of whether the increases represent substantial quantities in the market. See
Huang, 100 F.3d at 140 (“This court has noted in the past that evidence
related solely to the number of units sold provides a very weak showing of
commercial success, if any.”). The Declaration states opinions as to the
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merits of the invention without providing any sales data whatsoever, any
showing of change in market share, or evidence that the increase in clients is
due to the novel features (as opposed to marketing or other efforts) required
to show a nexus between claimed invention and commercial success.
Rather, the Appellant presents forecasts and expectations, without providing
the bases for these, and testimonials from customers, not affidavits,
explaining why Textium was purchased due to the claimed features. See
Huang, 100 F.3d at 140. For these reasons, the Appellant has failed to show
a nexus between the claimed invention and commercial success.
The Examiner’s strong evidence of obviousness outweighs the
Appellant’s evidence to the contrary. Weighing the evidence anew, we
conclude that the claimed subject matter would have been obvious. Thus,
we sustain the Examiner’s rejection under 35 U.S.C. § 103 as obvious over
Goldsmith and Davidow of independent claim 1 and of claims 2–4, 6–15,
and 17–19, for which the Appellant does not provide separate argument. See
Appeal Br. 7, 14. We also sustain the rejection under 35 U.S.C. § 103 as
obvious over Goldsmith, Davidow, and Official Notice of claims 5 and 16,
against which the Appellant does not provide separate argument. See id.

CONCLUSION
The Examiner’s decision to reject claims 1–19 under 35 U.S.C. § 101
is affirmed.
The Examiner’s decision to reject claims 1–19 under 35 U.S.C. § 103
is affirmed.
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In summary:
Claim(s)
Rejected
35 U.S.C. § Reference(s)/
Basis
Affirmed Reversed
1–19 101 Eligibility 1–19

1–4, 6–15,
17–19
103 Goldsmith,
Davidow
1–4, 6–15,
17–19

5, 16 103 Goldsmith,
Davidow,
Official Notice
5, 16
Overall
Outcome
1–19

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