3M INNOVATIVE PROPERTIES COMPANY

Patent Trials and Appeals Board

May 10, 2021

2021000188 (P.T.A.B. May. 10, 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.
15/114,443 07/27/2016 Frederick J. Arsenault 75053US004 3712
32692 7590 05/10/2021
3M INNOVATIVE PROPERTIES COMPANY
PO BOX 33427
ST. PAUL, MN 55133-3427
EXAMINER
HOAR, COLLEEN A
ART UNIT PAPER NUMBER
3621
NOTIFICATION DATE DELIVERY MODE
05/10/2021 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):
LegalUSDocketing@mmm.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte FREDERICK J. ARSENAULT and BRIAN E. BROOKS
____________

Appeal 2021-000188
Application 15/114,443
Technology Center 3600
____________

Before NINA L. MEDLOCK, MATTHEW S. MEYERS, and
ROBERT J. SILVERMAN, Administrative Patent Judges.

MEDLOCK, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
final rejection of claims 1–7, 15, 17–22, 24–27, 29, and 30. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Our decision references Appellant’s Appeal Brief (“Appeal Br.,”
filed January 10, 2020) and the Examiner’s Answer (“Ans.,” mailed June 1,
2020) and Final Office Action (“Final Act.,” mailed June 13, 2019).
Appellant identifies 3M Innovative Properties Company as the real party in
interest (Appeal Br. 2).
Appeal 2021-000188
Application 15/114,443

2
CLAIMED INVENTION
The claimed invention relates to “[s]ystems and methods for
performing experiments on content effectiveness using multiple content
distribution channels” (Spec. 2:5–6).
Claims 1 and 18 are the independent claims on appeal. Claim 1,
reproduced below with bracketed notations added, is illustrative of the
claimed subject matter:
1. A computer-implemented method for conducting a
multivariate experiment using a plurality of content delivery
channels, comprising:
[(a)] receiving, for the plurality of content delivery
channels, temporal factor data and spatial factor data;
[(b)] for a particular content delivery channel of the
plurality of content delivery channels, computing a plurality of
experimental units, the experimental units comprising a response
area based on the spatial factor data for the particular content
delivery channel, and a response duration based on the temporal
factor data for the particular content delivery channel;
[(c)] arranging the plurality of experimental units into
hierarchies based on overlap of the response areas of each
experimental unit; and
[(d)] computing a content playlist for each content
delivery channel based on the experimental units to play on the
content delivery channels, wherein the content playlist at least
specifies content to be played on each content delivery channel.
REJECTIONS
Claims 1–7, 15, 17–22, 24–27, 29, and 30 are rejected under
35 U.S.C. § 101 as directed to a judicial exception without significantly
more.
Claims 1–5, 7, 15, 17–22, 24–27, 29, and 30 are rejected under
35 U.S.C. § 102(a)(2) as anticipated by or, in the alternative, under
Appeal 2021-000188
Application 15/114,443

3
35 U.S.C. § 103 as obvious over Graham II et al. (US 2007/0156382 A1,
published July 5, 2007) (“Graham”).
Claim 6 is rejected under 35 U.S.C. § 103 as obvious over Graham
and Louviere et al. (US 2005/0159921 A1, published July 21, 2005)
(“Louviere”).
ANALYSIS
Patent-Ineligible Subject Matter
Under 35 U.S.C. § 101, “[w]hoever invents or discovers any new and
useful process, machine, manufacture, or composition of matter, or any new
and useful improvement thereof, may obtain a patent therefor.” 35 U.S.C.
§ 101. The Supreme Court, however, has long interpreted § 101 to include
an implicit exception: “[l]aws of nature, natural phenomena, and abstract
ideas” are not patentable. Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 216
(2014).
The Supreme Court, in Alice, reiterated the two-step framework
previously set forth in Mayo Collaborative Services v. Prometheus
Laboratories, Inc., 566 U.S. 66 (2012), “for distinguishing patents that claim
laws of nature, natural phenomena, and abstract ideas from those that claim
patent-eligible applications of those concepts.” Alice Corp., 573 U.S. at 217.
The first step in that analysis is to “determine whether the claims at issue are
directed to one of those patent-ineligible concepts.” Id. If the claims are not
directed to a patent-ineligible concept, e.g., an abstract idea, the inquiry
ends. Otherwise, the inquiry proceeds to the second step where the elements
of the claims are considered “individually and ‘as an ordered combination’”
to determine whether there are additional elements that “‘transform the
nature of the claim’ into a patent-eligible application.” Id. (quoting Mayo,
Appeal 2021-000188
Application 15/114,443

4
566 U.S. at 79, 78). This is “a search for an ‘inventive concept’ — i.e., an
element or combination of elements that is ‘sufficient to ensure that the
patent in practice amounts to significantly more than a patent upon the
[ineligible concept] itself.’” Id. at 217–18 (alteration in original) (citation
omitted).
The U.S. Patent and Trademark Office (the “USPTO”) published
revised guidance on January 7, 2019, for use by USPTO personnel in
evaluating subject matter eligibility under 35 U.S.C. § 101. 2019 REVISED
PATENT SUBJECT MATTER ELIGIBILITY GUIDANCE, 84 Fed. Reg. 50 (Jan. 7,
2019) (the “2019 Revised Guidance”). 2 That guidance revised the
USPTO’s examination procedure with respect to the first step of the
Mayo/Alice framework by (1) “[p]roviding groupings of subject matter that
[are] considered an abstract idea”; and (2) clarifying that a claim is not
“directed to” a judicial exception if the judicial exception is integrated into a
practical application of that exception. Id. at 50.
The first step, as set forth in the 2019 Revised Guidance (i.e.,
Step 2A), is, thus, a two-prong test. In Step 2A, Prong One, we look to
whether the claim recites a judicial exception, e.g., one of the following
three groupings of abstract ideas: (1) mathematical concepts; (2) certain
methods of organizing human activity, e.g., fundamental economic
principles or practices, commercial or legal interactions; and (3) mental
processes. 2019 Revised Guidance, 84 Fed. Reg. at 54. If so, we next
determine, in Step 2A, Prong Two, whether the claim as a whole integrates

2 The MANUAL OF PATENT EXAMINING PROCEDURE (“MPEP”) incorporates
the revised guidance and subsequent updates at Section 2106 (9th ed.
Rev. 10.2019, rev. June 2020).
Appeal 2021-000188
Application 15/114,443

5
the recited judicial exception into a practical application, i.e., whether the
additional elements recited in the claim beyond the judicial exception, 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. Id. at 54–55. Only if
the claim (1) recites a judicial exception and (2) does not integrate that
exception into a practical application do we conclude that the claim is
“directed to” the judicial exception, e.g., an abstract idea. Id.
If the claim is determined to be directed to a judicial exception under
revised Step 2A, we next evaluate the additional elements, individually and
in combination, in Step 2B, to determine whether they provide an inventive
concept, i.e., whether the additional elements or combination of elements
amounts to significantly more than the judicial exception itself; only then, is
the claim patent eligible. 2019 Revised Guidance, 84 Fed. Reg. at 56.
Here, in rejecting the pending claims under § 101, the Examiner
determined that independent claim 1 recites “collecting and presenting data
to ascertain the behavior and activity of people . . . from content delivered
through different communication channels” or more simply put, “displaying
content and measuring responses to content,” i.e., a method of organizing
human activity and a mental process and, therefore, an abstract idea (Final
Act. 3). The Examiner also determined that claim 1 does not include
additional elements that integrate the recited abstract idea into a practical
application; that the additional elements recited in claim 1 are not sufficient
to amount to significantly more than the abstract idea itself; and that the
remaining claims are patent ineligible for substantially the same reasons (id.
at 4–5).
Appeal 2021-000188
Application 15/114,443

6
Independent Claim 1 and Dependent Claims 2, 4–7, 15, and 17
Step One of the Mayo/Alice Framework (2019 Revised Guidance,
Step 2A)
We are not persuaded by Appellant’s argument that the Examiner
erred in determining that claim 1 is directed to an abstract idea (Appeal
Br. 8–10). 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 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 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 an
improvement to technology and/or a technical field.
The Specification is titled “CONDUCTING MULTIVARIATE
EXPERIMENTS,” and notes, in the Background section, that “[a] variety of
communications channels have emerged in the last few years,” including
social media, mobile devices, IPTV, in-store digital signage, and digital
billboards, among others (Spec. 1:12–14). “These channels are
characterized by a great deal of control over the content that is presented and
the ability to change the content readily”; but, most of these channels cannot
be directly linked to viewer behavior, e.g., purchasing decisions, because
they lack a distinct interactive behavior (analogous to a “click” in internet
advertising) (id. at 1:14–17). Thus, rather than a user being served content
in response to a request for a website, and interacting directly with the
Appeal 2021-000188
Application 15/114,443

7
content through a click, content comes through multiple channels and is
displayed without user input, and the desired user behavior is undertaken
through means that do not require interaction with the content, e.g.,
purchasing a particular item, moving from one region within a location to
another (id. at 3:11–16).
The Specification describes that the “off-line world” demands
capabilities, analogous to the closed loop made possible by the internet, for
testing the effectiveness of content in influencing behavior and for selecting
content to drive particular behaviors and outcomes; and the Specification
concludes, “it is essential for measurement and optimization techniques to be
able to develop understandings of interactions among the various channels
of media presentation, and coordinate the content presented on such multiple
channels” (Spec. 3:20–22).
The claimed invention ostensibly is intended to meet this “off-line
world” demand by providing a system and method for performing
experiments on content effectiveness using multiple content distribution
channels (Spec. 2:5–6). The Specification, thus, discloses a method, with
reference to Figure 1, for conducting an experiment on content effectiveness
across a plurality of channels for content delivery, and describes that the
method includes generating a hierarchical spatial-temporal experimental unit
(“HTSU”) for each channel of content delivery based on the spatial and
temporal reach factors particular to that channel (id. at 7:23–28).
Temporal reach factors are described as the period over which content
delivered by a channel may influence behavior, and may be expressed as a
probability of an action (or the corresponding failure to act) occurring within
a time window following the content exposure (Spec. 7:32–8:3). The
Appeal 2021-000188
Application 15/114,443

8
Specification describes that each HTSU has a response duration (i.e., a
period during which the actors undertaking the observed behaviors could
have been exposed to the content of the current HTSU, but not the content of
a prior HTSU for the same content channel), which is calculated based on
the temporal reach factor (e.g., by receiving the temporal reach factor as a
period of time, such as the period for a store during which 95% of visitors to
the store have completed their final transaction of that visit, and then
doubling that period of time to produce the response duration for the HTSUs
of that channel) (id. at 8:17–25).
Spatial reach factors are “the region in which a content recipient will
likely take action after receiving content” (Spec. 4:14–15), and are
determined based on data (e.g., traffic data, consumer profile data linking
regions to particular store locations) indicative of the regions in which
content recipients will likely act in response to the content with a known or
estimated probability (id. at 8:26–9:1). Each HTSU has a response area
based on the spatial reach factor to ensure that data recorded within the
response area are unlikely to have been influenced by content delivered on
the same channel in adjacent regions; this response area is derived, for
example, by receiving the spatial reach factor as a radius within which
viewers of content are likely to act, such as the 95% confidence interval for
the distance people will travel to act on a piece of content they received on
their mobile device, and doubling that radius to find the radius for the
response area of the HTSU (id. at 9:1–7).
The Specification describes that once the scope of the HTSUs has
been determined, the HTSUs are organized into hierarchies based on the
overlap of their respective response areas (Spec. 9:8–10:22). Explore and
Appeal 2021-000188
Application 15/114,443

9
exploit utility functions then are used to calculate the present value of
displaying certain pieces of content on certain channels at certain times and
locations, and the calculated values are used to select content for display in
each of the HTSUs (id. at 12:20–13:22).
Consistent with this disclosure, claim 1 recites a method for
conducting a multivariate experiment using a plurality of content delivery
channels, comprising: (1) “receiving, for the plurality of content delivery
channels, temporal factor data and spatial factor data” (step (a));
(2) computing a plurality of experiment units for a content delivery channel
comprising a response area based on the spatial factor data for the content
delivery channel and a response duration based on its temporal factor data,
i.e.,
for a particular content delivery channel of the plurality of
content delivery channels, computing a plurality of experimental
units, the experimental units comprising a response area based
on the spatial factor data for the particular content delivery
channel, and a response duration based on the temporal factor
data for the particular content delivery channel
(step (b)); (3) “arranging the plurality of experimental units into hierarchies
based on overlap of the response areas of each experimental unit” (step (c));
and (4) “computing a content playlist for each content delivery channel
based on the experimental units to play on the content delivery channels,
wherein the content playlist at least specifies content to be played on each
content delivery channel” (step (d)).
We agree with the Examiner that these limitations, when given their
broadest reasonable interpretation recite “collecting and presenting data to
ascertain the behavior and activity of people . . . from content delivered
Appeal 2021-000188
Application 15/114,443

10
through different communication channels,” i.e., a method of organizing
human activity and, therefore, an abstract idea (Final Act. 3).
Appellant argues that “computing a content playlist of each content
delivery channel based on the experimental units to play on the content
delivery channels” is not a method of organizing human activity because
“[n]o human activity is being organized by computing content playlists to
play on content delivery channels by computing content playlists” and “[n]o
personal behavior or relationships or interactions between people are being
managed by computing content playlists” (Appeal Br. 8). Yet, it is clear
from the Specification that the objective in computing a content playlist is to
influence a content recipient to take certain action after receiving the
content, e.g., make a purchase. For example, the Specification describes that
content delivered by digital signs in a store environment is typically directed
to affecting a visit to the store environment; that content delivered to the
mobile device of a user outside a store environment is typically directed to
pushing the user to travel to a nearby location and undertake an activity, e.g.,
purchasing a searched-for item; and that a digital billboard presents content
directed to suggesting an activity to undertake during trips past that billboard
(Spec. 4:17–22). These are “advertising, marketing or sales activities or
behaviors,” which are one of “[c]ertain methods of organizing human
activity,” and, therefore, an abstract idea. See 2019 Revised Guidance,
84 Fed. Reg. at 52.
We also are not persuaded that claim 1 recites additional elements that
integrate the recited abstract idea into a practical application. The 2019
Revised Guidance references MPEP, Ninth Edition (rev. Jan 2018)
(available at https://www.uspto.gov/web/offices/pac/mpep/old/
Appeal 2021-000188
Application 15/114,443

11
mpep_E9R08-2017.htm) § 2106.05(a)–(c) and (e) in non-exhaustively
listing considerations indicative that an additional element or combination of
elements may have integrated a recited judicial exception into a practical
application. 2019 Revised Guidance, 84 Fed. Reg. at 55. In particular, the
Guidance describes that an additional element may have integrated the
judicial exception into a practical application if the additional element
(1) reflects an improvement in the functioning of a computer or an
improvement to other technology or technical field; (2) applies or uses the
judicial exception to effect a particular treatment or prophylaxis for a disease
or medical condition; (3) implements the judicial exception with, or uses the
judicial exception with, a particular machine or manufacture integral to the
claim; (4) effects a transformation or reduction of an article to a different
state or thing; or (5) applies or uses the judicial exception in some other
meaningful way beyond generally linking the use of the judicial exception to
a particular technological environment, such that the claim as a whole is
more than a drafting effort designed to monopolize the exception. Id. At the
same time, the Guidance makes clear that merely including instructions to
implement an abstract idea on a computer, or merely using a computer as a
tool to perform an abstract idea; adding insignificant extra-solution activity
to the judicial exception; or only generally linking the use of the judicial
exception to a particular technological environment or field are not sufficient
to integrate the judicial exception into a practical application. Id.
Appellant asserts here that the recitations in claim 1 are directed to “a
unique and practical technique of ‘computing a content playlist for each
content delivery channel based on the experimental units to play on the
content delivery channels,’” which Appellant maintains is “an improvement
Appeal 2021-000188
Application 15/114,443

12
to the functioning of a computer or other technology or technical field,
especially in the ‘off-line world’ of content presentation” (Appeal Br. 9).
But, the relevant question under Step 2A, Prong 2 is not whether the claimed
invention itself, i.e., “computing a content playlist for each content delivery
channel based on the experimental units to play on the content delivery
channels,” is a practical application; instead, the question is whether the
claim includes additional elements beyond the judicial exception that
integrate the judicial exception into a practical application. The Examiner
determined here, and we agree, that the only additional elements recited in
claim 1 beyond the abstract idea are a computer3 and “a plurality of content
delivery channels,” i.e., generic computer components (Final Act. 3; see,
e.g., Spec. 25:22–25 (generally referring to the use of processors); 24:19–22
(describing that content delivery channels include mobile and standard
website servers, in-store displays, and digital billboards)). “And after Alice,
there can remain no doubt: recitation of generic computer limitations does
not make an otherwise ineligible claim patent-eligible.” DDR Holdings,
LLC v. Hotels.com, L.P., 773 F.3d 1245, 1256 (Fed. Cir. 2014).
We also are not persuaded, in any event, that computing a content
playlist amounts to a technological improvement or an improvement in
computer functionality, as opposed to an improvement in the abstract idea of
“collecting and presenting data to ascertain the behavior and activity of
people . . . from content delivered through different communication
channels,” which is not enough for patent eligibility. See SAP Am., Inc. v.
InvestPic, LLC, 898 F.3d 1161, 1170 (Fed. Cir. 2018) (“[P]atent law does

3 We infer the inclusion of a computer based on the preamble’s
characterization of the claimed method as “computer-implemented.”
Appeal 2021-000188
Application 15/114,443

13
not protect such claims[, i.e., claims to an asserted advance in the realm of
abstract ideas], without more, no matter how groundbreaking the advance.”).
Appellant further argues that because claim 1 recites “‘computing a
content playlist for each content delivery channel based on the experimental
units to play on the content delivery channels,’ a particular machine is at
least inherently recited to perform such computation” (Appeal Br. 9), and
that claim 1 necessarily transforms data, e.g., spatial factor data and
temporal factor data, in multiple elements, i.e., a plurality of experimental
units (id. at 10). Neither of these arguments is persuasive of Examiner error.
The Federal Circuit has recognized that the machine-or-
transformation test,4 although not the only test, “can provide a ‘useful clue’”
to patent eligibility under the Mayo/Alice framework. Ultramercial, Inc. v.
Hulu, LLC, 772 F.3d 709, 716 (Fed. Cir. 2014). As such, satisfying either
prong of that test may integrate an abstract idea into a practical application.
See 2019 Revised Guidance, 84 Fed. Reg. at 55 nn.27–28 (citing MPEP
§ 2106.05(b), (c)).
At the same time, however, it is well settled that “whether a [recited]
device is ‘a tangible system (in § 101 terms, a ‘machine’)’ is not
dispositive.” ChargePoint, Inc. v. SemaConnect, Inc., 920 F.3d 759, 770
(Fed. Cir. 2019) (quoting Alice Corp., 573 U.S. at 224). For a machine to
impose a meaningful limit on the claimed invention, it must play a
significant part in permitting a claimed method to be performed, rather than

4 Under the machine-or-transformation test, a claimed process is patent
eligible if: (1) it is tied to a particular machine or apparatus, or (2) it
transforms a particular article into a different state or thing. In re Bilski,
545 F.3d 943, 954 (Fed. Cir. 2008), aff’d sub nom. Bilski v. Kappos,
561 U.S. 593 (2010).
Appeal 2021-000188
Application 15/114,443

14
merely providing the generic environment in which to implement the recited
abstract idea. Cf. Versata Dev. Grp. v. SAP Am., Inc., 793 F.3d 1306, 1335
(Fed. Cir. 2015) (explaining that in order for a machine to add significantly
more, “it must play a significant part in permitting the claimed method to be
performed, rather than function solely as an obvious mechanism for
permitting a solution to be achieved more quickly”).
Here, to the extent, a computer processor is used to compute a content
playlist for each content delivery channel based on the experimental units,
that processor performs the latter role. Rather than being tied to a particular
machine, claim 1 merely implements an abstract idea using generic
computer components, which is not enough for patent eligibility. See Alice
Corp., 573 U.S. at 223 (“[T]he mere recitation of a generic computer cannot
transform a patent-ineligible abstract idea into a patent-eligible invention.”);
BASCOM Glob. Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341,
1348 (Fed. Cir. 2016) (“An abstract idea on ‘an Internet computer network’
or on a generic computer is still an abstract idea”) (citation omitted).
We also do not agree with Appellant that computing a plurality of
experimental units based on spatial and temporal factor data involves a
physical transformation, as contemplated in Bilski. Instead, this computation
merely involves the manipulation of data, which the Federal Circuit has held
does not satisfy the transformation prong of the Bilski machine-or-
transformation test. See CyberSource Corp. v. Retail Decisions, Inc.,
654 F.3d 1366, 1375 (Fed. Cir. 2011) (holding that “[t]he mere manipulation
or reorganization of data . . . does not satisfy the transformation prong” of
the machine-or-transformation test).
Appeal 2021-000188
Application 15/114,443

15
Appellant also misapprehends the controlling precedent to the extent
Appellant maintains that claim 1 is patent eligible because it presents no risk
of preemption (Appeal Br. 10). Although the Supreme Court has described
“the concern that drives [the exclusion of abstract ideas from patent-eligible
subject matter] as one of pre-emption,” Alice Corp., 573 U.S. at 216,
characterizing preemption as a driving concern for patent eligibility is not
the same as characterizing preemption as the sole test for patent eligibility.
“The Supreme Court has made clear that the principle of preemption is the
basis for the judicial exceptions to patentability” and “[f]or this reason,
questions on preemption are inherent in and resolved by the § 101 analysis.”
Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir.
2015) (citing Alice Corp., 573 U.S. at 216). “[P]reemption may signal
patent ineligible subject matter, [but] the absence of complete preemption
does not demonstrate patent eligibility.” Id.
We conclude, for the reasons outlined above, that claim 1 recites a
method of organizing human activity, i.e., an abstract idea, and that the
additional elements recited in the claim beyond the abstract idea are no more
than generic computer components used as tools to perform the recited
abstract idea. As such, they do not integrate the abstract idea into a practical
application. See Alice Corp., 573 U.S. at 223–24 (“[W]holly generic
computer implementation is not generally the sort of ‘additional featur[e]’
that provides any ‘practical assurance that the process is more than a drafting
effort designed to monopolize the [abstract idea] itself.’” (quoting Mayo,
566 U.S. at 77) (alterations in original)). Accordingly, we agree with the
Examiner that claim 1 is directed to an abstract idea.
Appeal 2021-000188
Application 15/114,443

16
Step Two of the Mayo/Alice Framework (2019 Revised Guidance,
Step 2B)
Having determined under step one of the Mayo/Alice framework that
claim 1 is directed to an abstract idea, we next consider under Step 2B of the
2019 Revised Guidance, the second step of the Mayo/Alice framework,
whether claim 1 includes additional elements or a combination of elements
that provides an “inventive concept,” i.e., whether an additional element or
combination of elements adds specific limitations beyond the judicial
exception that are not “well-understood, routine, conventional activity” in
the field (which is indicative that an inventive concept is present) or simply
appends well-understood, routine, conventional activities previously known
to the industry to the judicial exception. 2019 Revised Guidance,
84 Fed. Reg. at 56.
Appellant quotes the language of claim 1, and characterizes the
method steps as providing an “inventive concept” (Appeal Br. 10–11). Yet,
the relevant inquiry here is not whether the claimed invention as a whole
supplies an inventive concept. See, e.g., BSG Tech LLC v. BuySeasons, Inc.,
899 F.3d 1281, 1290 (Fed. Cir. 2018) (“[T]he relevant inquiry is not whether
the claimed invention as a whole is unconventional or non-routine.”).
Instead, the question under step two of the Mayo/Alice framework
(i.e., step 2B) is whether the claim includes additional elements, i.e.,
elements other than the abstract idea itself, that “‘transform the nature of the
claim’ into a patent-eligible application.” Alice Corp., 573 U.S. at 217
(quoting Mayo, 566 U.S. at 79, 78). 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
Appeal 2021-000188
Application 15/114,443

17
amounts to significantly more than a patent upon the natural law itself”
(citation omitted) (emphasis added)).
The Examiner determined here, and we agree, that the only additional
elements recited in claim 1, beyond the abstract idea, are generic computer
components (Final Act. 3), i.e., a computer and “a plurality of content
delivery channels” — a determination amply supported by, and fully
consistent with the Specification (see, e.g., Spec. 24:19–22, 25:22–25).
Appellant cannot reasonably maintain that there is insufficient factual
support for the Examiner’s determination that these components are well-
understood, routine, or conventional, where, as here, there is nothing in the
Specification to indicate that the operations recited in claim 1 require any
specialized hardware or inventive computer components or that the claimed
invention is implemented using other than generic computer components to
perform generic computer functions, e.g., receiving and processing. Indeed,
the Federal Circuit, in accordance with Alice, has “repeatedly recognized the
absence of a genuine dispute as to eligibility” where claims 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.” Berkheimer v. HP Inc.,
890 F.3d 1369, 1373 (Fed. Cir. 2018) (Moore, J., concurring) (internal
citations omitted); see also BSG Tech, 899 F.3d at 1291 (“BSG Tech does
not argue that other, non-abstract features of the claimed inventions, alone or
in combination, are not well-understood, routine and conventional database
structures and activities. Accordingly, the district court did not err in
determining that the asserted claims lack an inventive concept.”).
Appeal 2021-000188
Application 15/114,443

18
Appellant also misapprehends the controlling precedent to the extent
Appellant maintains that claim 1 is patent eligible, i.e., that the claim
includes an inventive concept, because it allegedly is novel and/or non-
obvious in view of the cited prior art (Appeal Br. 11 (“[T]he recitations of
claim 1 are not purely conventional, especially based on the grounds
presented in the Office Action. Even the Office Action admits that the
Graham reference does not teach to use ‘experimental units’ as recited in
claim 1.”)). Neither a finding of novelty nor a non-obviousness
determination automatically leads to the conclusion that the claimed subject
matter is patent eligible. Although the second step in the Mayo/Alice
framework is termed a search for an “inventive concept,” the analysis is not
an evaluation of novelty or non-obviousness, but rather, a search for “an
element or combination of elements that is ‘sufficient to ensure that the
patent in practice amounts to significantly more than a patent upon the
[ineligible concept] itself.’” Alice Corp., 573 U.S. at 217–18 (citation
omitted) (alteration in original). “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). A
novel and non-obvious claim directed to a purely abstract idea is,
nonetheless, patent ineligible. See Mayo, 566 U.S. at 90; see also Diamond
v. Diehr, 450 U.S. 175, 188–89 (1981) (“The ‘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.”).
We are not persuaded, on the present record, that the Examiner erred
in rejecting independent claim 1 under 35 U.S.C. § 101. Therefore, we
Appeal 2021-000188
Application 15/114,443

19
sustain the Examiner’s rejection of claim1. We also sustain the Examiner’s
rejection of dependent claims 2, 4–7, 15, and 17, which are not argued
separately.
Independent Claim 18 and Dependent Claims 20–22, 24–27, and 29
Appellant argues that claims 18, 20–22, 24–27, and 29 are patent
eligible for the same reasons set forth with respect to claim 1 (Appeal
Br. 11). We are not persuaded, for the reasons outlined above, that the
Examiner erred in rejecting independent claim 1 under 35 U.S.C. § 101.
Therefore, for the same reasons, we sustain the Examiner’s rejection under
35 U.S.C. § 101 of claims 18, 20–22, 24–27, and 29.
Dependent Claims 3, 19, and 30
Claim 3 depends from claim 2, which depends, in turn, from
independent claim 1. Claim 2 recites that “computing the content play list
additionally comprises the order of the content to be presented and/or the
relative or absolute frequency of play within the experimental unit”; and
claim 3 recites “causing the content delivery channels to play content
consistent with the content playlist.” Claims 19 and 30 depend from
claim 18. Similar to claim 3, claim 19 recites “causing the content pieces to
be displayed on content delivery channels in a manner consistent with the
playlist.” And claim 30 recites that the system of claim 18 further comprises
“a plurality of data collection devices, and wherein the data collection
devices comprise intermediate metric sensors associated with each
channel . . . and overall metric sensors associated with a cross-channel
metric.”
Appellant argues that claims 3, 19, and 30 are patent eligible because
the claims “recite elements that define a particular machine and, as a whole,
Appeal 2021-000188
Application 15/114,443

20
amount to significantly more than any abstract idea of ‘collecting and
presenting data to ascertain the behavior and activity of people’” (Appeal
Br. 12). But, that argument is not persuasive for much the same reasons set
forth above with respect to claim 1. There is no indication here that the
content delivery channels and sensors recited in claims 3, 19, and 30 are
other than generic components, and, therefore, no indication that any of
claims 3, 19, and 30 is tied to a particular machine. Instead, like claim 1,
claims 3, 19, and 30 merely implement an abstract idea using generic
components.
We are not persuaded, on the present record, that the Examiner erred
in rejecting claims 3, 19, and 30 under 35 U.S.C. § 101. Therefore, we
sustain the Examiner’s rejection.
Anticipation
We are persuaded by Appellant’s argument that the Examiner erred in
rejecting independent claims 1 and 18 under 35 U.S.C. § 102(a)(2) as
anticipated by Graham at least because Graham does not disclose “arranging
the plurality of experimental units into hierarchies based on overlap of the
response areas of each experimental unit,” as recited in limitation (c) of
claim 1, and similarly recited in claim 18 (Appeal Br. 12–14).
Graham is directed to a system and method for designing an
experiment using a computer to determine whether the experiment is a true
experiment, and discloses that the computer may automatically form one or
more control groups and/or one or more treatment groups of the experiment
(Graham ¶¶ 9, 10). Graham describes that the computer automatically
randomizes the treatment or control group, and that in some
implementations, “the computer may apply techniques (for example,
Appeal 2021-000188
Application 15/114,443

21
blocking and counterbalancing) to reduce effects of one or more
confounding variables” (id. ¶ 10). Graham discloses an example experiment
with reference to Figures 4A–4C where the objective of the experiment is to
determine the effect of a video advertisement that incorporates Content A on
sales of Product X (id. ¶ 56).
The Examiner equates Graham’s control and treatment groups to the
claimed experimental units (Ans. 9) and, citing Figures 4A and 4B and
paragraph 59 of Graham, the Examiner notes that Graham discloses that data
are collected after display of the advertisement, including the timing of sales
of Product X, “thereby considering Appellant’s ‘temporal reach factor’ as
well as response duration” (id.). The Examiner further cites paragraphs 37,
42, 50, 57, and 66 of Graham as disclosing that the advertisement and
control content are deployed to a number of venues, e.g., restaurants, stores,
shopping malls, and Examiner states that Graham considers attributes of the
viewing environment, e.g., viewing distance, location of content, geographic
location, “thereby considering Appellant’s ‘spatial’ factors or attributes and
response area” (id.).
Appellant argues, inter alia, that Graham does not disclose
“computing a plurality of experimental units, the experimental units
comprising a response area based on the spatial factor data for the particular
content delivery channel, and a response duration based on the temporal
factor data for the particular content delivery channel,” as recited in claim 1
(Appeal Br. 12–14). But, even assuming for the sake of argument, that
Graham discloses this limitation, we find nothing in any of Figure 3 and
paragraphs 32, 36, 60, 66 of Graham, on which the Examiner relies, that
discloses that Graham’s control and treatment groups, which the Examiner
Appeal 2021-000188
Application 15/114,443

22
equates to the claimed experimental units, are arranged into hierarchies
based on overlap of their respective response areas, and, therefore, nothing
that discloses “arranging the plurality of experimental units into hierarchies
based on overlap of the response areas of each experimental unit,” as recited
in limitation (c) of claim 1, and similarly recited in claim 18.
Therefore, we do not sustain the Examiner rejection of independent
claims 1 and 18 under 35 U.S.C. § 102(a)(2). For the same reasons, we also
do not sustain the Examiner’s rejection of dependent claims 2–5, 7, 15, 17,
19–22, 24–27, 29, and 30.
Obviousness
Independent Claims 1 and 18 and Dependent Claims 2–5, 7, 15, 17, 19–22,
24–27, 29, and 30
We are persuaded for much the same reasons outlined above that the
Examiner erred rejecting independent claims 1 and 18, in the alternative,
under 35 U.S.C. § 103. As described above, we find nothing in any of the
cited portions of Graham, on which the Examiner relies, that discloses
“arranging the plurality of experimental units into hierarchies based on
overlap of the response areas of each experimental unit,” as recited in
limitation (c) of claim 1, and similarly recited in claim 18. We also find
nothing there that suggests this feature. Therefore, we do not sustain the
Examiner’s rejection of claims 1–5, 7, 15, 17–22, 24–27, 29, and 30 under
35 U.S.C. § 103.
Dependent Claim 6
Claim 6 depends from claim 1 and recites that “the randomization
constraint is derived using functions comprising an explore utility function
and an exploit utility function.” The rejection of claim 6 does not cure the
Appeal 2021-000188
Application 15/114,443

23
deficiency in the rejection of independent claim 1. Therefore, we do not
sustain the Examiner’s rejection under 35 U.S.C. § 103 of dependent claim 6
for the same reasons set forth with respect to the independent claims.
CONCLUSION
In summary:
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–7, 15,
17–22,
24–27, 29,
30
101 Eligibility 1–7, 15,
17–22,
24–27, 29,
30

1–5, 7, 15,
17–22,
24–27, 29,
30
102(a)(2) Graham 1–5, 7, 15,
17–22,
24–27, 29,
30
1–5, 7, 15,
17–22,
24–27, 29,
30
103 Graham 1–5, 7, 15,
17–22,
24–27, 29,
30
6 103 Graham, Louviere 6
Overall
Outcome
1–7, 15,
17–22,
24–27, 29,
30

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