Vohra, Lalit et al.

Patent Trials and Appeals Board

May 4, 2020

2018008071 (P.T.A.B. May. 4, 2020)

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.
13/946,255 07/19/2013 Lalit Vohra 20030.600 7512
119741 7590 05/04/2020
Keller Jolley Preece / Adobe
1010 North 500 East, Suite 210
North Salt Lake, UT 84054
EXAMINER
MACASIANO, MARILYN G
ART UNIT PAPER NUMBER
3688
NOTIFICATION DATE DELIVERY MODE
05/04/2020 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):
docketing@kjpip.com
gjolley@kjpip.com
ljohnson@kjpip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte LALIT VOHRA, ABHISHEK MODI,
RAJEEV SHARMA, and RANDY LEE SWINEFORD
____________

Appeal 2018-008071
Application 13/946,2551
Technology Center 3600
____________

Before JOSEPH A. FISCHETTI, BRUCE T. WIEDER, and
KENNETH G. SCHOPFER, Administrative Patent Judges.

FISCHETTI, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 of the Examiner’s
final rejection of claims 1–20. We have jurisdiction under 35 U.S.C. § 6(b).

SUMMARY OF DECISION
We AFFIRM.

1 Appellants identify Adobe Systems Incorporated as the real party in
interest. App. Br. 2.
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THE INVENTION
Appellant states “[e]mbodiments of the present invention generally
relate to marketing and, more particularly, to a method and apparatus for
testing in-product marketing content.” Spec. ¶ 1.

Claim 1, reproduced below, is representative of the subject matter on
appeal.
1. A computer implemented method for managing delivery
of in-product test messages by one or more software
applications on a client device, comprising:
generating, at a server device, an in-product message
package for a software application, the in-product message
package comprising a plurality of in-product messages and
associated ranges of population identifiers, wherein the
associated ranges of population identifiers identify subsets of
the plurality of in-product messages; and
providing, to a plurality of client devices, the in-product
message package, wherein providing the in-product message
package causes each of the plurality of client devices to
selectively deliver a subset of the plurality of in-product
messages via the software application based on a comparison of
the associated ranges of population identifiers and a locally
assigned identifier for each of the plurality of client devices
without affecting one or more client devices of the plurality of
client devices having locally assigned identifiers outside the
associated ranges of population identifiers.

THE REJECTION
The Examiner relies upon the following as evidence of
unpatentability:
Name Reference Date
Vives US 7,689,451 B2 Issued March 30, 2010
Kelly et al. US 2013/0325745 A1 Published Dec. 5, 2013
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The following rejections are before us for review.
Claims 1–20 are rejected under 35 U.S.C. § 101.
Claims 1–9, 11–13, 15, 18, and 19 are rejected under 35 U.S.C.
§ 102(a)(1) as being anticipated by Kelly.
Claims 10, 14, 16, 17, and 20 are rejected under 35 U.S.C. § 103 as
being unpatentable over Kelly in view of Vives.

FINDINGS OF FACT
We adopt the Examiner’s findings as set forth on pages 2–8 in the
Final Office Action2 and on pages 9–13 in the Examiner’s Answer,
concerning only the 35 U.S.C. § 101 rejection.

ANALYSIS

35 U.S.C. § 101 REJECTION
We will affirm the rejection of claims 1–20 under 35 U.S.C. § 101.
The Appellant argues independent claims 1, 9, and 15 as a group.
(App. Br. 36). We select claim 1 as the representative claim for this group
and so the remaining claims stand or fall with claim 1. See 37 C.F.R.
§ 41.37(c)(1)(iv) (2015).
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 phenomena, and abstract

2 All references to the Final Office Action refer to the Final Office Action
mailed on August 25, 2017.
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ideas” are not patentable. E.g., Alice Corp. Pty. Ltd. 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. 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 id. 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 water-proof 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. (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.
In January 2019, the U.S. Patent and Trademark Office (USPTO)
published revised guidance on the application of § 101. 2019 Revised Patent
Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019)
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(“Guidance”).3 “All USPTO personnel are, as a matter of internal agency
management, expected to follow the guidance.” Id. at 51; see also October
2019 Update at 1.
Under the 2019 Revised Guidance and the October 2019 Update, 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) (“Step 2A, Prong One”); and
(2) additional elements that integrate the judicial exception into
a practical application (see MPEP § 2106.05(a)–(c), (e)–(h) (9th
ed. Rev. 08.2017, Jan. 2018)) (“Step 2A, Prong Two”).4
Guidance, 84 Fed. Reg. at 52–55.
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 claim:
(3) adds a specific limitation beyond the judicial exception that
is not “well-understood, routine, conventional” in the field (see
MPEP § 2106.05(d)); or

3 In response to received public comments, the Office issued further
guidance on October 17, 2019, clarifying the 2019 Revised Guidance.
USPTO, October 2019 Update: Subject Matter Eligibility (the “October
2019 Update”) (available at
https://www.uspto.gov/sites/default/files/documents/peg_oct_2019_update.p
df).
4 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. See Guidance - Section III(A)(2), 84 Fed. Reg. at 54–
55.
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(4) simply appends well-understood, routine, conventional
activities previously known to the industry, specified at a high
level of generality, to the judicial exception.
Guidance, 84 Fed. Reg. at 52–56. The U.S. Court of Appeals for the Federal
Circuit has explained that “the ‘directed to’ inquiry applies a stage-one filter
to claims, considered in light of the [S]pecification, 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 claims 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 Enfish,
822 F.3d at 1335–36.
In so doing, as indicated above, we apply a “directed to” two prong
test: 1) evaluate whether the claim recites a judicial exception, and 2) if the
claim recites a judicial exception, 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.” Guidance, 84
Fed. Reg. at 53; see also MPEP § 2106.05(a)–(c), (e)–(h).
Paragarph 2 of the Specification states:
Advertising research is a specialized form of marketing
research conducted to improve the efficiency of advertising.
Advertising testing allows marketers to test the effectiveness of
their marketing content and its display. With the ubiquity of
software applications, such as ADOBE® READER® or
ACROBAT®, advertising within these software applications is a
key marketing opportunity. In-Product Messaging (IPM)
involves creating IPM messages and pushing the IPM messages
to client machines running software applications that
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subsequently display the IPM messages in the software
applications according to conditions under which the IPM
message should be displayed. Before launching an advertising
campaign, marketers would like to test the effectiveness of their
marketing content and its display within these software
applications. However, effective solutions are not available for
determining such effectiveness.

The preamble states claim 1 is “for managing delivery of in-product
test messages.” Claim 1 recites in pertinent part,
generating, … an in-product message package for a
software application, the in-product message package
comprising a plurality of in-product messages and associated
ranges of population identifiers, wherein the associated ranges
of population identifiers identify subsets of the plurality of in-
product messages; and providing, … the in-product message
package, wherein providing the in-product message package
causes each of the plurality of client devices to selectively
deliver a subset of the plurality of in-product messages…based
on a comparison of the associated ranges of population
identifiers and a locally assigned identifier for each of the
plurality of client devices without affecting one or more … of
the plurality of client devices having locally assigned identifiers
outside the associated ranges of population identifiers.

The Examiner found “[t]hese steps describe the concept of testing in-
product marketing content to a plurality of populations, which corresponds
to concepts identified as abstract ideas by the courts. These concepts relate
to an ‘idea’ as well as ‘certain methods of organizing human activity.’”
(Final Act. 4–5).
Accordingly, we find that claim 1 recites managing delivery of in-
product test messages which includes delivery of a subset of the plurality of
in-product messages based on a comparison of certain criteria. We agree
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with the Examiner that claim 1 recites a mental process, and that it also
recites a certain method of organizing human activity. As to the former,
claim 1 recites a comparison step, i.e., “selectively deliver[ing] a subset of
the plurality of in-product messages…based on a comparison of associated
ranges of population identifiers and a locally assigned identifier for each of
the plurality of client devices.” As such, claim 1 recites a mental process,
i.e., a concept that can be performed in the human mind, including an
evaluation or judgment, and therefore, an abstract idea. See 2019 Revised
Guidance, 84 Fed. Reg. at 52. See also CyberSource Corp. v. Retail
Decisions, Inc., 654 F.3d 1366, 1373 (Fed. Cir. 2011) (holding that method
steps that can be performed in the human mind, or by a human using a pen
and paper, are unpatentable mental processes).
Since claim 1 also selectively delivers marketing content of a subset
of the plurality of in-product messages over other messages based on certain
criteria (“associated ranges of population identifiers and a locally assigned
identifier for each of the plurality of client[s]”), it also constitutes a
commercial interaction. This is because claim 1 recites targeted marketing
that is a form of commercial interaction, considered a method of organizing
human activity which is a judicial exception. See 2019 Revised Guidance,
84 Fed. Reg. at 52.
Turning to the second prong of the “directed to” test, claim 1 only
generically requires “a server device,” and “a plurality of client devices.”
These components are described in the specification at a high level of
generality. See Spec. ¶¶ 15–19 and Fig. 1. We fail to see how the generic
recitations of these most basic computer components and/or of a system so
integrates the judicial exception as to “impose[] a meaningful limit on the
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judicial exception, such that the claim is more than a drafting effort designed
to monopolize the judicial exception.” 2019 Revised Guidance, 84 Fed.
Reg. at 53.
Thus, we find that the claims recite the judicial exceptions of a mental
process and a certain method of organizing human activity.
That the claims do not preempt all forms of the abstraction or may be
limited to an in-product message package, does not make them any less
abstract. See OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1362–63
(Fed. Cir. 2015) (“And that the claims do not preempt all price optimization
or may be limited to price optimization in the e-commerce setting do not
make them any less abstract.”).
Turning to the second step of the Alice analysis, because we find that
the claims are directed to abstract ideas/judicial exceptions, the claims must
include an “inventive concept” in order to be patent-eligible, i.e., there must
be an element or combination of elements sufficient to ensure that the claim
in practice amounts to significantly more than the abstract idea itself. See
Alice, 573 U.S. at 217–18 (quoting Mayo Collaborative Servs., 566 U.S. at
72–73).
Concerning this step, the Examiner found the following:
The claim(s) do not include additional elements that are
sufficient to amount to significantly more than the judicial
exception because the additional computer elements, which are
recited at a high level of generality, provide conventional
computer functions that do not add meaningful limits to
practicing the abstract idea.
Final Act. 3.
We agree with the Examiner. “[T]he relevant question is whether the
claims here do more than simply instruct the practitioner to implement the
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abstract idea . . . on a generic computer.” Alice, 573 U.S. at 225. They do
not.
Taking the claim elements separately, the function performed by the
computer at each step of the process is purely conventional. Using a
computer to generate, provide and apply decision criteria to data amounts to
electronic data query and retrieval—one of the most basic functions of a
computer. All of these computer functions are well-understood, routine,
conventional activities previously known to the industry. See Elec. Power
Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1354 (Fed. Cir. 2016); see also In
re Katz Interactive Call Processing Patent Litig., 639 F.3d 1303, 1316 (Fed.
Cir. 2011) (“Absent a possible narrower construction of the terms
‘processing,’ ‘receiving,’ and ‘storing,’ . . . those functions can be achieved
by any general purpose computer without special programming”). In short,
each step does no more than require a generic computer to perform generic
computer functions. The claims do not, for example, purport to improve the
functioning of the computer itself. In addition, as we stated above, the
claims do not affect an improvement in any other technology or technical
field. The Specification spells out different generic equipment and
parameters that might be applied using this concept and the particular steps
such conventional processing would entail based on the concept of
information access under different scenarios (see, e.g., Spec. ¶¶ 15–19,
Fig. 1). Thus, the claims at issue amount to nothing significantly more than
instructions to apply the abstract idea using some unspecified, generic
computer. Under our precedents, that is not enough to transform an abstract
idea into a patent-eligible invention. See Alice, 573 U.S. at 225–226.
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Considered as an ordered combination, the computer components of
Appellant’s claims add nothing that is not already present when the steps are
considered separately. The sequence of data reception-analysis (generate,
provide and apply decision criteria to data) and storing is equally generic
and conventional or otherwise held to be abstract. See Ultramercial, Inc. v.
Hulu, LLC, 772 F.3d 709, 715 (Fed. Cir. 2014) (sequence of receiving,
selecting, offering for exchange, display, allowing access, and receiving
payment recited an abstraction), 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), Two-Way Media Ltd. v. Comcast Cable
Commc’ns, LLC, 874 F.3d 1329, 1339 (Fed. Cir. 2017) (holding sequence of
processing, routing, controlling, and monitoring was abstract). The ordering
of the steps is, therefore, ordinary and conventional.
We have reviewed all the arguments Appellant has submitted
concerning the patent eligibility of the claims before us that stand rejected
under 35 U.S.C. § 101. (App. Br. 36–43, Reply Br. 5–7). We find that our
analysis above substantially covers the substance of all the arguments, which
have been made. But, for purposes of completeness, we will address various
arguments in order to make individual rebuttals of same.
Appellant argues:
The Examiner has not provided any specific analysis of the
claim limitations, or provided any explanation as to how the
claims at issue are similar to the claims identified as abstract in
Digitech. Further, the Examiner’s characterization of the claims
relating to ‘certain methods of organizing human activity’ is
untethered from the actual language of the claims and the Office
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Action provides no analysis that connects the alleged abstract
idea of Digitech to the claim language or the claims as a whole.
(Appeal Br. 37).
First, although we agree with Appellant that the claims must be read,
as a whole, we nevertheless find, that claim 1 is directed to managing
delivery of in-product test messages which includes delivery of a subset of
the plurality of in-product messages based on a comparison of certain
criteria for the reasons specified above with respect to our “directed to”
findings. As found supra, claim 1 only includes the following generically
recited device limitations: “a server device,” and “a plurality of client
devices.” What remains in the claim after disregarding these device
limitations, are abstractions, e.g.,“selectively deliver[ing] a subset of the
plurality of in-product messages via the software application based on a
comparison of the associated ranges of population identifiers and a locally
assigned identifier for each of the plurality of client devices.” In sum,
“[c]laim 1 is aspirational in nature and devoid of any implementation details
or technical description that would permit us to conclude that the claim as a
whole is directed to something other than the abstract idea….” Move, Inc. v.
Real Estate Alliance Ltd., 721 Fed. App’x 950, 954 (Fed. Cir. 2018)
(Nonprecedential).
Second, there is no requirement that Examiners must provide
evidentiary support in every case before a conclusion can be made that a
claim is directed to an abstract idea. See, e.g., Manual of Patent Examining
Procedure § 2106.07(a)(III) (2018) (“The courts consider the determination
of whether a claim is eligible (which involves identifying whether an
exception such as an abstract idea is being claimed) to be a question of law.
Thus, the court does not require ‘evidence’ that a claimed concept is a
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judicial exception, and generally decides the legal conclusion of eligibility
without resolving any factual issues.” (Citations omitted.))
All that is required of the USPTO to meet its prima facie burden is
that the Examiner set forth the statutory basis of the rejection and the
reference or references relied upon in a sufficiently articulate and
informative manner as to meet the notice requirement of 35 U.S.C. § 132.
As the statute itself instructs, the Examiner must “notify the applicant,”
“stating the reasons for such rejection,” “together with such information and
references as may be useful in judging the propriety of continuing the
prosecution of his application.” 35 U.S.C. § 132; see also In re Jung, 637
F.3d 1356, 1363 (Fed. Cir. 2011) (declining “to impose a heightened burden
on examiners beyond the notice requirement of § 132”). Here, as we found
above, the Examiner has made these findings as required by the statute. See
Final Act. 3.
As to Appellant’s argument that claims were described by the
Examiner “at a high level of abstraction,” (Appeal Br. 37), it is well settled
that “[a]n abstract idea can generally be described at different levels of
abstraction.” See Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1240 (Fed.
Cir. 2016).
Appellant argues:

While Digitech is directed very broadly to gathering and
combining data, the claim at issue in Digitech relates to a
fundamentally different process than claims 1–20 in the present
case. For example, the present claims include generating and
providing (see e.g., Claim 1) or receiving (see e.g., Claims 9
and 15) an in-product message package including a plurality of
in-product messages and associated ranges of population
identifiers. For instance, the in-product message package is
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provided to one or more client devices. The in-product
messages from the package are selectively delivered (Claim 1)
or filtered (Claims 9 and 15) by the recipient client device(s)
based on a comparison between the ranges of population
identifiers and a locally assigned identifier (e.g., a locally
assigned random number).
(Appeal Br. 37–38).
We disagree with Appellant. The Federal Circuit has “recognized that
merely presenting the results of abstract processes of collecting and
analyzing information, without more (such as identifying a particular tool for
presentation), is abstract as an ancillary part of such collection and analysis.”
Electric Power Grp., 830 F.3d at 1354. Thus, a method, like the claimed
method, “that employs mathematical algorithms to manipulate existing
information to generate additional information is not patent eligible.” See
Digitech Image Techs, LLC v. Elecs. for Imaging, Inc., 758 F.3d 1344, 1351
(Fed. Cir. 2014). Similarly, claim 1 manipulates data from the in-product
messaging package and selectively delivers certain ones of the in-product
messages to the user. Thus, we find no error with the Examiner’s citation to
Digitech on page 5 of the Final Action.
Appellant also seeks to distinguish Digitech by asserting that the
claimed “in-product messages from the package are selectively delivered
(Claim 1) or filtered (Claims 9 and 15) by the recipient client device(s),” but
it is well settled that filtering in an Alice step one analysis still renders the
patent ineligible. BASCOM Glob. Internet Servs., Inc. v. AT&T Mobility
LLC, 827 F.3d 1341, 1348 (Fed. Cir. 2016)(“filtering content is an abstract
idea because it is a longstanding, well-known method of organizing human
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behavior, similar to concepts previously found to be abstract.)5
Appellant argues:
Like Enfish, the claimed invention is directed toward a
specific improvement to computer technology. Just as Enfish
improved computer technology by obviating the need for a
programmer to ‘predefine a data structure,’ and thus provided a
more efficient database structure, the current claims recite an
invention that leverages capabilities of recipient client devices
and provides flexibility in selectively delivering in-product
messages under various network conditions.
(Appeal Br. 39).

We disagree with Appellants that under the holding in Enfish our
decision would be different. See Enfish, LLC v. Microsoft Corp., 822 F.3d
1327 (Fed. Cir. 2016). In Enfish, the invention at issue was directed at a
new type of logical model for a computer database: a self-referential table
that allowed the computer to store many different types of data in a single
table and index that data by column and row information. Id. at 1330–32.
In finding the claims “not directed to an abstract idea,” but “to a specific
improvement to the way computers operate,” the Federal Circuit noted that
“the claims are not simply directed to any form of storing tabular data, but
instead are specifically directed to a self-referential table for a computer
database.” Id. at 1336–37 (emphasis in original).
We find nothing in the claims before us arising to this level of
technical improvement in the claimed “a server device,” and “a plurality of
client devices” as found in Enfish. Instead, we find the claims are focused

5 Appellant likewise cites to BASCOM which holds that for purposes of an
Alice Step 1 analysis, the “abstract idea of ‘filtering content’” is a well-
known method of human activity. (Appeal Br. 41).

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on the mental process of managing delivery of in-product test messages
which includes delivery of a subset of the plurality of in-product messages
based on a comparison of certain criteria. We find no indication in the
Specification, nor do Appellants direct us to any indication, that the
operations recited in claim 1 invoke any assertedly inventive programming,
require any specialized computer hardware or other inventive computer
components, i.e., a particular machine, or that the claimed invention is
implemented using other than generic computer components to perform
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.”).
Citing to BASCOM, Appellant asserts, “the claims at issue in this case
recite an ordered combination of steps that, when performed together, recite
a non-conventional and non-generic implementation of selectively delivering
or filtering a subset of in-product messages from an in–product message
package.” (Appeal Br. 41).
We fail again to see how the instant claims are similar to those in
BASCOM. There, an intermediary is inserted between two otherwise
conventional computer nodes to move the location where a process is
otherwise ordinarily executed. In BASCOM, “the patent describe[d] how its
particular arrangement of elements is a technical improvement over prior art
ways of filtering . . . content.” BASCOM, 827 F.3d at 1350.
To the extent that Appellant argues that the use of “population
identifiers” makes the claims analogous to the claims at issue in BASCOM
(see Appeal Br. 41), we disagree with Appellant because the claims in
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BASCOM are again distinguishable from those before us here. That is, in
BASCOM the technology at issue was a
filtering system [] located on a remote ISP server that associates
each network account with (1) one or more filtering schemes
and (2) at least one set of filtering elements from a plurality of
sets of filtering elements, thereby allowing individual network
accounts to customize the filtering of Internet traffic associated
with the account.
BASCOM, 827 F.3d at 1346. Appellant’s argument is simply that the claim
provides an improvement to the abstract idea.
Similarly, Appellant argues that, “associating population ranges with
in-product messages that identify subsets of the plurality of in-product
messages provides great flexibility to a distributor to specify message
distribution for the plurality of messages from the in-product message
package previously delivered to the client devices.” (Appeal Br. 42)
We are not persuaded by the Appellant’s arguments because “these
benefits, however, are not improvements to database [/computer]
functionality. Instead, they are benefits that flow from performing an
abstract idea in conjunction with a well-known database structure.” BSG
Tech. LLC v. BuySeasons, Inc., 899 F.3d 1281, 1288 (Fed. Cir. 2018).
We disagree with Appellant that similar to the claims in McRO6 , “the
claims include an ordered combination of steps that recite a non-
conventional and nongeneric communication systems and methods.”
(Appeal Br. 43). In McRO, the claimed rules were very specific,7 and the

6 McRO, Inc. v. Bandai Namco Games Am., Inc., 837 F.3d 1299 (Fed. Cir.
2016).
7 Claim 1 in the McRO decision states “obtaining a first set of rules that
define output morph weight set stream as a function of phoneme sequence
and time of said phoneme sequence; ….”
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court determined that
the claimed improvement here is allowing computers to
produce “accurate and realistic lip synchronization and facial
expressions in animated characters” that previously could only
be produced by human animators. As the district court
correctly recognized, this computer automation is realized by
improving the prior art through “the use of rules, rather than
artists, to set the morph weights and transitions between
phonemes.” The rules are limiting in that they define morph
weight sets as a function of the timing of phoneme sub-
sequences.

McRO, 837 F.3d at 1313 (citations omitted). Here, the asserted
improvement is to the abstract idea of a certain method of organizing human
activity, i.e., delivery of in-product test messages. See DDR Holdings, LLC
v. Hotels.com, L.P., 773 F.3d 1245, 1256 (Fed. Cir. 2014) (“These claims in
substance [are] directed to nothing more than the performance of an abstract
business practice . . . using a conventional computer. Such claims are not
patent-eligible.”).
Appellant argues that “the Examiner has provided insufficient basis
for why the claims fail to recite significantly more than the identified
abstract idea(s).” (Appeal Br. 43).
We disagree with Appellant. First, as found above, the Examiner
made the requisite finding on page 3 of the Final Action for why the claims
do not include additional elements sufficient to amount to significantly
more, and then on page 5 of the same action, the Examiner goes on to
explain why this is so. But even still, the Federal Circuit made clear that
“not every § 101 determination contains genuine disputes over the
underlying facts material to the § 101 inquiry.” Berkheimer v. HP Inc., 881

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F.3d 1360, 1368 (Fed. Cir. 2018). In fact, the Federal Circuit in Berkheimer
did not require evidentiary support for independent claim 1 because “[t]he
limitations [of claim 1] amount to no more than performing the abstract idea
of parsing and comparing data with conventional computer components.”
Id. at 1370.
Appellant’s other arguments, including those directed to now-
superseded USPTO guidance, have been considered but are not persuasive
of error. (See 2019 Revised Guidance, 84 Fed. Reg. at 51 (“Eligibility-
related guidance issued prior to the Ninth Edition, R–08.2017, of the MPEP
(published Jan. 2018) should not be relied upon.”)).
We also sustain the rejections of all the dependent claims because
Appellant has not challenged such with any reasonable specificity (see In re
Nielson, 816 F.2d 1567, 1572 (Fed. Cir. 1987)).
For the reasons identified above, we determine there are no
deficiencies in the Examiner’s finding of patent ineligibility of the rejected
claims. Therefore, we will sustain the Examiner’s § 101 rejection of claims
1–20.
35 U.S.C. § 102(a) REJECTION
Each of independent claims 1, 9, and 15 recites, in one form or
another: “product message package comprising a plurality of in-product
messages and associated ranges of population identifiers, wherein the
associated ranges of population identifiers identify subsets of the plurality of
in-product messages.”
The Examiner found, concerning this limitation that Kelly discloses,
the following:
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generating, at a server-device, an in-product message
package for a software application, the in-product message
package comprising a plurality of in-product messages and
associated ranges of population identifiers, Kelly teaches
generating a pre-filled social network message that includes an
identifier of the media product (see at least Abstract and
paragraphs 0013 and 0020 and see figure 2), wherein the
associated ranges of population identifiers identify subsets
of the plurality of in-product messages, Kelly teaches even
though multiple identifiers may uniquely identify a particular
media product, each may provide additional information (see at
least paragraphs 0023, 0025, 0035 and 0036).
(Final Act. 9).
Appellants argue the following:
In addition to describing an in-product message package
including multiple messages, Kelly further fails to disclose
providing an in-product message package including ‘associated
ranges of population identifiers, wherein the associated ranges
of population identifiers identify subsets of the plurality of in-
product messages,’ as recited by independent claim 1. Indeed,
as mentioned above, and as will be discussed in further detail
below, assigning ranges of population identifiers to the plurality
of in-product messages enables a content distributor to easily
redefined populations and distribute content by simply
modifying ranges of population identifiers. See Specification,
¶ [0012]. In asserting that Kelly discloses this subject matter,
the Examiner has asserted that Kelly’s description of a media
product identifier (e.g., an identifier of a media product
purchased by a sender) is equivalent to the claimed ‘ranges of
population identifiers [that] identify subsets of the plurality of
in-product messages.’ See Office Action, pages 9 and 27-28.
An identifier of a product referenced within a message,
however, is fundamentally different than ‘associated ranges of
population identifiers [that] identify subsets of the plurality of
in-product messages,’ as recited by claim 1. Indeed, the media
product identifier described in Kelly has no relation to the
particular pre-filled message that is delivered to the intended
recipient(s). As such, the Examiner erroneously concludes that
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the media product identifier (and associated product
information) is equivalent to (or even related to) the ranges of
population identifiers associated with the plurality of in-product
messages. Further, Kelly provides no additional description in
which subsets of a plurality of messages are associated with
corresponding ranges of population identifiers, as required by
claim 1.
(App. Br. 16–17).
We agree with Appellants. Kelly at paragraph 23 discloses:
even though multiple identifiers may uniquely identify a
particular media product, each may provide additional
information. For example, like the text of the pre-filled
message, an identifier may indicate a rating that a user assigned
to a media product. Likewise, the identifier may indicate that a
user actually purchased or otherwise retrieved the media
product.
Thus, at best, Kelly discloses that an identifier may provide additional
information, such as, whether a user actually purchased or otherwise
retrieved the media product. But, this additional information does not equate
to the claimed identified “subsets of the plurality of in-product messages.”
The claim language here has function in that it requires the selection of
subsets “based on a comparison of associated ranges of population
identifiers and a locally assigned identifier for each of the plurality of client
devices.” The general purchase history information in Kelly does not
function to identify subsets of a plurality of in-product messages based on a
comparison of criteria as the independent claims require. “A claim is
anticipated only if each and every element as set forth in the claim is found,
either expressly or inherently described, in a single prior art reference.”
Verdegaal Bros. v. Union Oil Co. of California, 814 F.2d 628, 631 (Fed. Cir.
1987), cert. denied, 484 U.S. 827 (1987). Thus, we will not sustain the
anticipation rejection of independent claims 1, 9, and 15 based on Kelly.
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Since claims 2–8, 10–14, and 16–20 depend from claims 1, 9 and 15,
respectively, and since we cannot sustain the rejection of claim 1, 9, and 15,
the rejection of claims 2–8, 10–14, and 16–20 likewise cannot be sustained.

35 U.S.C. § 103(a) REJECTION

The additional reference to Vives combined with Kelly in the 35
U.S.C. § 103(a) rejection as applied to claims 10, 14, 16, 17, and 20, does
not remedy the shortfalls in the anticipation rejection as discussed above
based on an obvious standard.

CONCLUSIONS OF LAW
We conclude the Examiner did not err in rejecting claims 1–20 under
35 U.S.C. § 101.
We conclude the Examiner erred in rejecting claims 1–9, 11–13, 15,
18, and 19 under 35 U.S.C. § 102(a).
We conclude the Examiner erred in rejecting claims 10, 14, 16, 17,
and 20 under 35 U.S.C. § 103(a).

DECISION
Claims
Rejected
35 U.S.C.
§
Basis Affirmed Reversed
1–20 101 Eligibility 1–20
1–9, 11–13,
15, 18, 19
102(a) Kelly 1–9, 11–13,
15, 18, 19
10, 14, 16,
17, 20
103(a) Kelly, Vives 10, 14, 16,
17, 20
Overall
Outcome
1–20
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Because we have affirmed at least one ground of rejection with
respect to each claim on appeal, the Examiner’s decision is affirmed.
See 37 C.F.R. § 41.50(a)(1).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED