Adobe Inc.

Patent Trials and Appeals Board

Dec 14, 2021

2021002632 (P.T.A.B. Dec. 14, 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. 15/430,066 02/10/2017 Manaswi Saha P6638-US 1020 108982 7590 12/14/2021 FIG. 1 Patents 116 W. Pacific Avenue Suite 200 Spokane, WA 99201 EXAMINER ALVAREZ, RAQUEL ART UNIT PAPER NUMBER 3688 NOTIFICATION DATE DELIVERY MODE 12/14/2021 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): Fig1Docket@fig1patents.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte MANASWI SAHA, THOMAS WILLIAM RANDALL JACOBS, DAVID M. TOMPKINS, and PETER RAYMOND FRANSEN ____________ Appeal 2021-002632 Application 15/430,066 Technology Center 3600 ____________ Before JOSEPH A. FISCHETTI, NINA L. MEDLOCK, and BRUCE T. WIEDER 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 1-8, 11-15, 17-21, 23, and 24. 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 October 27, 2020) and Reply Brief (“Reply Br.,” filed March 8, 2021), and the Examiner’s Answer (“Ans.,” mailed January 11, 2021) and Final Office Action (“Final Act.,” mailed May 26, 2020). Appellant identifies Adobe Inc. as the real party in interest (Appeal Br. 3). Appeal 2021-002632 Application 15/430,066 2 CLAIMED INVENTION The Specification states, “[t]echniques and systems are described to control output of digital content by a service provider system in a physical environment based on a user profile” (Spec. ¶ 3). Claims 1, 13, and 18 are the independent claims on appeal. Claim 1, reproduced below with bracketed notations added, is illustrative of the claimed subject matter: 1. In a digital medium environment to control provision of digital content within a physical environment to a mobile device associated with a user, a method implemented by at least one computing device, the method comprising: [(a)] receiving, by the at least one computing device, user identification data and position data, the position data describing a physical location at which the mobile device is disposed within the physical environment; [(b)] selecting, by the at least one computing device, a user profile based on the user identification data, the user profile describing at least one preference regarding how the digital content is to be consumed using the mobile device; [(c)] verifying, by the at least one computing device, validity of the user data and the position data; [(d)] generating, by the at least one computing device, digital content that is personalized based on the selected user profile and the position data, the generating including restricting the generation of content that is deemed not of interest to the user; and [(e)] controlling, by the at least one computing device, output of the generated digital content to the mobile device. Appeal 2021-002632 Application 15/430,066 3 REJECTIONS Claims 1-8, 11-15, 17-21, 23, and 24 are rejected under 35 U.S.C. § 101 as directed to a judicial exception without significantly more.2 Claims 1-8, 11, 12, 18-20, and 24 are rejected under 35 U.S.C. § 103 as unpatentable over Hurewitz (US 2014/0365334 A1, published Dec. 11, 2014) and Maharajh et al. (US 2008/0195664 A1, published Aug. 14, 2008) (“Maharajh”). Claims 13-15, 17, and 23 are rejected under 35 U.S.C. § 103 as unpatentable over Hurewitz, Maharajh, and Saylor et al. (US 9,027,099 B1, issued May 5, 2015) (“Saylor”). Claim 21 is rejected under 35 U.S.C. § 103 as unpatentable over Hurewitz, Maharajh, and Williams et al. (US 2017/0124625 A1, published May 4, 2017) (“Williams”). ANALYSIS Patent-Ineligible Subject Matter Appellant argues the pending claims as a group (Appeal Br. 13-29). We select independent claim 1 as representative. The remaining claims stand or fall with claim 1. See 37 C.F.R. § 41.37(c)(1)(iv). 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 2 We treat the Examiner’s reference to cancelled claims 9 and 22 as inadvertent error (see Final Act. 2). Appeal 2021-002632 Application 15/430,066 4 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, 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). 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”).3 That guidance revised the USPTO’s 3 The MANUAL OF PATENT EXAMINING PROCEDURE (“MPEP”) incorporates the 2019 Revised Guidance and subsequent updates at Section 2106 (9th ed. Rev. 10.2019, rev. June 2020). Appeal 2021-002632 Application 15/430,066 5 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 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 Appeal 2021-002632 Application 15/430,066 6 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 35 U.S.C. § 101, the Examiner determined that independent claim 1 recites presenting personalized content based on selected user profile and position data, which the Examiner concluded falls within the “certain [m]ethods of organizing human activity” grouping of abstract ideas (Final Act. 2). The Examiner also determined that the recited abstract idea is not integrated into a practical application; that claim 1 does not include additional elements 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 2-4). Step One of the Mayo/Alice Framework (2019 Revised Guidance, Step 2A) We are not persuaded that the Examiner erred in determining that claim 1 is directed to an abstract idea. 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 Appeal 2021-002632 Application 15/430,066 7 abstract idea, and not on an improvement to technology and/or a technical field. The Specification is titled “Digital Content Output Control in a Physical Environment Based on a User Profile,” and describes that “[i]n a digital marketing scenario, . . . digital content may be generated by a service provider system based on a user profile to include advertisements to promote conversion of goods or services within a physical store” (Spec. ¶ 3). The generation of the digital content also may be restricted based on the user profile so as prevent the output of digital content when it is unlikely that the content is of interest to the user (id.). The Specification states, “[a]s a result, the drawbacks of conventional techniques . . . that result from provision of generic digital content that may oversaturate and lack relevancy to the user” are overcome and “computational resource consumption efficiency” increased “by limiting [the] provision of digital content that is not likely relevant to the user” (id.). Consistent with this disclosure, claim 1 recites a method, in a digital medium environment, for controlling provision of digital content within a physical environment to a mobile device associated with a user, comprising: (1) receiving user identification and position data, i.e., “receiving, by the at least one computing device, user identification data and position data, the position data describing a physical location at which the mobile device is disposed within the physical environment” (step (a)); (2) selecting a user profile based on the user identification data, i.e., “selecting, by the at least one computing device, a user profile based on the user identification data, the user profile describing at least one preference regarding how the digital content is to be consumed using the mobile device” (step (b)); (3) “verifying, Appeal 2021-002632 Application 15/430,066 8 by the at least one computing device, validity of the user data and the position data” (step (c)); (4) generating personalized digital content based on the selected user profile and the position data and restricting the generation of content that is not of interest to the user, i.e., “generating, by the at least one computing device, digital content that is personalized based on the selected user profile and the position data, the generating including restricting the generation of content that is deemed not of interest to the user” (step (d)); and (5) “controlling, by the at least one computing device, output of the generated digital content to the mobile device” (step (e)). We agree with the Examiner that these limitations, when given their broadest, reasonable interpretation, recite “presenting personalized content based on selected user profile and position data,” i.e., a method of organizing human activity, and, therefore, an abstract idea (Final Act. 2; see also Ans. 3). Appellant argues that the rejection of claim 1 cannot be sustained because claim 1 does not recite subject matter that falls within any of the three enumerated groupings of abstract ideas (Appeal Br. 15-19). Yet, Appellant cannot reasonably deny that presenting a user with personalized digital content, as recited in claim 1, including “advertisements to promote conversion of goods or services within a physical store” (Spec. ¶ 3; see also, e.g., id. ¶ 36 (explaining that the generation of digital content “may be used in a variety of scenarios, such as to target digital marketing content in order to increase likelihood of conversion of a good or service and restrict output that is likely not of interest to the user”)), is “advertising, marketing or sales activities or behaviors,” i.e., a method of organizing human activity and, therefore, an abstract idea. See 2019 Revised Guidance, 84 Fed. Reg. at 52. Appeal 2021-002632 Application 15/430,066 9 We also are not persuaded by Appellant’s argument that the Examiner has unjustly oversimplified the claims “as being directed to the abstract idea of ‘organizing human activity,’” and failed to address claim 1 “as a set of ‘rules’ under the applicable framework” (Appeal Br. 20; see also id. at 21-22, Reply Br. 7-8). Appellant asserts that “such an oversimplification cannot be made in view of the specific language recited on the face of the independent claims” (Appeal Br. 21). Yet, to the extent Appellant maintains that claim 1 is patent eligible because the claim presents no risk of preemption (see id. at 21-22), we note that preemption is not the sole test for patent eligibility. Appellant ostensibly relies on McRO, Inc. v. Bandai Namco Games America Inc., 837 F.3d 1299 (Fed. Cir. 2016) to support this position (Appeal Br. 20-22). Yet, the Federal Circuit did not premise its determination that the claim in McRO was patent eligible merely on the specificity of the claimed animation scheme. Nor, for that matter, did the court rely solely on the lack of any risk of preemption. See McRO, 837 F.3d at 1315 (“The limitations in claim 1 prevent preemption of all processes for achieving automated lip-synchronization of 3-D characters . . . . Even so, we have recognized that ‘the absence of complete preemption does not demonstrate patent eligibility.’ Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015).”). Instead, the court determined that the claim there at issue was patent eligible because, when considered as a whole, the claim was directed to a technological improvement over existing, manual 3-D animation techniques and used limited rules in a process specifically designed to achieve an improved technological result in conventional industry practice. Id. at 1316. In particular, the Federal Circuit Appeal 2021-002632 Application 15/430,066 10 found that the claimed rules allow computers to produce accurate and realistic lip synchronization and facial expressions in animated characters that previously could only be produced by human animators. Id. at 1313. We are not persuaded that a comparable situation is presented here. Appellant’s further argument, i.e., that claim 1 includes additional elements that integrate any recited abstract idea into a “practical application” (Appeal Br. 22-26), is similarly unavailing. The Revised Guidance references MPEP, Ninth Edition (rev. Jan 2018) (available at https://www.uspto.gov/web/offices/pac/ mpep/old/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, inter alia, the additional element (1) reflects an improvement in the functioning of a computer or an improvement to other technology or technical field. 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 argues here that claim 1 is patent eligible because, like the claims in DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1256 (Fed. Cir. 2014), claim 1 addresses a digitally-rooted challenge that is Appeal 2021-002632 Application 15/430,066 11 particular to the Internet (Appeal Br. 22-25). Appellant maintains that “[t]he fact pattern and claimed subject matter in DDR [are] analogous to the subject matter” of claim 1 (id. at 23). But, we can find no parallel between claim 1 and the claims held patent eligible in DDR Holdings. There, the claims were directed to retaining website visitors, and in particular to a system that modified the conventional web browsing experience by directing a user of a host website, who clicks an advertisement, to a “store within a store” on the host website, rather than to the advertiser’s third-party website. DDR Holdings, 773 F.3d at 1257-1258. The court determined that “the claims address a business challenge (retaining website visitors) [that] is a challenge particular to the Internet.” Id. at 1257. The court also determined that the invention was “necessarily rooted in computer technology in order to overcome a problem specifically arising in the realm of computer networks,” and that the claimed invention did not simply use computers to serve a conventional business purpose. Id. Rather, there was a change to the routine, conventional functioning of Internet hyperlink protocol. Id. Citing paragraph 15 of the Specification, Appellant observes here that beacons are typically employed by a service provider system to provide digital content to a mobile device based on the physical proximity of the mobile device to the beacon, and that these conventional techniques require active execution of a dedicated application that is particular to a service provider system that includes the beacon (Appeal Br. 23). Appellant asserts, as a result, conventional techniques are “fractured and frustrating to users” and also “consume significant amounts of computational resources to Appeal 2021-002632 Application 15/430,066 12 provide generic digital content . . . regardless of whether that digital content is or is not of interest to a user” (id. at 24). Distinguishing these conventional techniques, Appellant argues that the claimed invention, through the use of digital content output control techniques and systems based on a user profile, generates digital content for output that is likely to have increased relevance to a user viewing the content; limits oversaturation in the provision of digital content to the user; and does so with increased efficiency in the consumption of computational resources by both the service provider system and the user’s mobile device (Appeal Br. 24-25). Appellant asserts that, for at least these reasons, claim 1 is “rooted in computer technology in order to overcome a problem specifically arising in the realm of computer networks” (id. at 25). But, we are not persuaded that providing personalized, i.e., targeted, content is a problem rooted in computer technology or one specifically arising in the realm of computer networks. Although the claimed process may be network-centric in the sense that digital content is provided to users’ mobile devices over a network, e.g., the Internet, targeted advertising existed before, and still exists outside of computer technology and computer networks. See Tuxis Technologies, LLC v. Amazon.com, Inc., No. CV 13-1771-RGA, 2014 WL 4382446, at *5 (D. Del. Sept. 3, 2014) (Matching consumers with a given product or service “has been practiced as long as markets have been in operation.”). And the purported solution here of, at best, a generic computer component performing generic computer functions, is not necessarily rooted in computer technology. The Federal Circuit, in DDR Holdings, moreover, expressly cautioned that “not all claims purporting to address Internet-centric challenges are Appeal 2021-002632 Application 15/430,066 13 eligible for patent.” DDR Holdings, 773 F.3d at 1258. And the court distinguished the claims in DDR Holdings from those at issue in Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709 (Fed. Cir. 2014) noting that, in DDR Holdings, the computer network was not operating in its “normal, expected manner” and the claims did not “recite an invention that is . . . merely the routine or conventional use of the Internet.” Id. at 1258-59. Here, we do not find, and Appellant does not identify, any analogous modification to the routine and conventional functioning of computer network technology. At best, the claimed invention appears to use generic computer components to perform an abstract business practice (i.e., providing targeted digital content to a user based on user profile and position information). We also are not persuaded, for much the same reasons, that there is any parallel between hypothetical claim 1 in Example 40 of the USPTO’s “Subject Matter Eligibility Examples: Abstract Ideas” (“Eligibility Examples”)4 and claim 1 here at issue (Appeal Br. 25-26). The USPTO describes in the “Background” section of Example 40 that network visibility tools enable close monitoring of computer network traffic, applications, performance, and resources, and that the data acquired through these network visibility tools are useful in optimizing network performance, resolving network issues, and improving network security. Eligibility Examples 10. One industry standard network visibility protocol is NetFlow. Id. In a typical setup, a NetFlow exporter generates and exports network traffic statistics (in the form of NetFlow records) to at least one 4 Available at https://www.uspto.gov/sites/default/files/documents/ 101_examples_37to42_20190107.pdf. Appeal 2021-002632 Application 15/430,066 14 NetFlow collector that analyzes the statistics. Id. However, because NetFlow records are large, the continual generation and export of NetFlow records substantially increases the traffic volume on the network, which hinders network performance. Id. The hypothetical applicant’s invention addresses this issue by varying the amount of network data collected based on monitored events in the network. The system, thus, collects NetFlow protocol data and exports a NetFlow record only when an abnormal network condition is detected. Eligibility Examples 10. Applying the 2019 Revised Guidance, the Office determines that hypothetical claim 1 recites a mental process and, therefore, an abstract idea, i.e., that, other than the nominal recitation of a generic network appliance, nothing precludes the step of “comparing . . . at least one of the collected traffic data to a predefined threshold” from practically being performed in the mind.5 Eligibility Examples 11. Nonetheless, the Office determines that 5 Claim 1 of Example 40 recites: A method for adaptive monitoring of traffic data through a network appliance connected between computing devices in a network, the method comprising: collecting, by the network appliance, traffic data relating to the network traffic passing through the network appliance, the traffic data comprising at least one of network delay, packet loss, or jitter; comparing, by the network appliance, at least one of the collected traffic data to a predefined threshold; and collecting additional traffic data relating to the network traffic when the collected traffic data is greater than the predefined threshold, the additional traffic data comprising Netflow protocol data. Appeal 2021-002632 Application 15/430,066 15 claim 1 is patent eligible because it integrates the recited abstract idea into a practical application, i.e., the method limits collection of additional Netflow protocol data to when the initially collected data reflects an abnormal condition, which avoids excess traffic volume on the network and hindrance of network performance. The collected data can then be used to analyze the cause of the abnormal condition. This provides a specific improvement over prior systems, resulting in improved network monitoring Id. (emphasis added). Appellant argues here that “[s]imilar to how[,] in the example claim[,] the additional elements limit data collection to avoid hindrance of network performance,” the additional elements in claim 1 recite “a specific manner of restricting the generation of content that is deemed not of interest to the user” (Appeal Br. 26). Appellant asserts, “[i]n this way, the service provider system may protect against oversaturating the user with digital content that is likely not relevant . . . and reduce computation resources that are consumed by the service provider system and mobile device” (id.). Yet, it could not be clearer from the Specification that the focus of the claimed invention is not on reducing resource consumption or otherwise avoiding hindrance of network performance, i.e., on improving technology or a technical field. Instead, the focus of the claim is on employing user profile and position information to generate and present users with digital content, e.g., advertisements, that is more likely to lead to conversion by the user of particular goods or services (see, e.g., Spec. ¶¶ 3, 4, 18-22, 24). We are not persuaded that this amounts to a technological improvement comparable to Eligibility Examples 10. Appeal 2021-002632 Application 15/430,066 16 the one in Example 40, as opposed to an improvement to the abstract idea of targeted advertising, 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 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 maintains, as described above, that by “restricting the generation of content that is deemed not of interest to the user,” the claimed invention reduces the consumption of computational resources. Indeed, it seemingly logically follows that if the volume of digital content being generated is reduced, the consumption of computational resources also will be reduced. Yet, we are not persuaded that this amounts to a technological improvement where, as here, there is no indication that the “generating” operation, i.e., step (d), as recited in claim 1, requires any specialized computer hardware or other inventive computer components, invokes any allegedly inventive programming, or that the operation is implemented using other than a generic computer component as a tool operating in its normal and ordinary capacity. Instead, it clearly appears, to the extent “restricting the generation of content that is deemed not of interest to the user” results in a reduction in the consumption of computational resources and thereby an improvement in network performance at all, that improvement is nothing more than the inevitable consequence of limiting the volume of digital content that is generated for output. 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 Appeal 2021-002632 Application 15/430,066 17 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)). Accordingly, we agree with the Examiner that claim 1 is directed to an abstract idea. 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 asserts here that the rejection of claim 1 cannot be sustained because the recited features include an inventive concept (Appeal Br. 26-29). But, that argument is not persuasive at least because the feature that Appellant identifies, i.e., “generating . . . digital content that is personalized based on the selected user profile and the position data, . . . Appeal 2021-002632 Application 15/430,066 18 including restricting the generation of content that is deemed not of interest to the user,” is part of the abstract idea itself; it is not an additional element to be considered in determining whether claim 1 includes additional elements or a combination of elements sufficient to amount to significantly more than the judicial exception. It could not be clearer from Alice, 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 Corp., 573 U.S. at 217 (citation omitted); see 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” (emphasis added) (citation omitted)). In other words, the inventive concept under step two of the Mayo/Alice test cannot be the abstract idea itself: It is clear from Mayo that the “inventive concept” cannot be the abstract idea itself, and 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) (Moore, J., concurring); 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.”). Appeal 2021-002632 Application 15/430,066 19 Here, the Examiner determined and we agree, that the only additional elements recited in claim 1 beyond the abstract idea are “a mobile device” and “at least one computing device,” i.e., generic computer components (Ans. 3) - a determination amply supported by and fully consistent with the Specification (see, e.g., Spec. ¶¶ 27-29 62-75). Appellant cannot reasonably maintain that there is insufficient factual support for the Examiner’s determination that the operation of these components is 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, processing, and transmitting information. 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, 890 F.3d at 1373 (Moore, J., concurring) (internal citations omitted); see also BSG Tech LLC, 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.”). 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 2021-002632 Application 15/430,066 20 sustain the Examiner’s rejection of claim 1, and claims 2-8, 11-15, 17-21, 23, and 24, which fall with claim 1. Obviousness Independent Claim 13 and Dependent Claims 14, 15, 17, and 23 First, by way of background, Hurewitz is directed to a system and method for tracking customer behavior in a retail store, combining that data with data obtained based on the customer’s behavior in an online environment, and presenting the combined data to a retail store employee in a real-time interaction with the customer (Hurewitz ¶ 2). Hurewitz discloses that, in one embodiment, a beacon, positioned near the entrance of the retail store, emits a Bluetooth signal that is detected and interpreted by the customer’s mobile device, and used to confirm that the device is located within the retail store (id. ¶ 31). Using this Bluetooth technology, a customer app running on the user’s mobile device also can access a store database to determine which physical products are located near the customer’s current location; the app can then present information or discount promotions to the customer for those products (id.). Hurewitz further discloses that, in one embodiment, once the in-store beacon is detected, the app displays a prompt to the customer’s device, including an inquiry as to whether the customer would like assistance from a store clerk (Hurewitz ¶ 98). If the customer indicates that she desires assistance, the app transmits the request for assistance, including a customer identifier, to a customer service request server; the request server then queries a customer information database server to obtain additional information about the customer, e.g., the customer’s on-line shopping history, in-store shopping history, web-browsing history, the contents of her Appeal 2021-002632 Application 15/430,066 21 current shopping cart, and recommended products that have been identified or created for the customer based on her shopping history (id. ¶ 99). Appellant argues that the Examiner erred in rejecting independent claim 13 under 35 U.S.C. § 103 at least because Hurewitz, on which the Examiner relies, does not disclose or suggest “a personalization engine to generate the digital content as personalized based on the filtered position profile and the selected user profile, the generating including restricting the generation of content that is deemed not of interest to the user,” as recited in claim 13 (Appeal Br. 36-38). Appellant acknowledges that Hurewitz discloses presenting information or discounts for physical products that are located close to the customer’s current location, and that Hurewitz also discloses presenting personalized recommendations (id. at 36-37). But, Appellant maintains that “mere ‘personalized product recommendations’” do not amount to “a personalization engine to generate the digital content as personalized based on the filtered position profile and the selected user profile, . . . including restricting the generation of content that is deemed not of interest to the user,” as recited in claim 13 (id. at 37). The Examiner takes the position in the Final Office Action that “in the system of Hurewitz it would have been obvious to restrict content that [is] not of interest to the users, based on their observed behaviors in order to avoid generating content/services that might not be relevant” (Final Act. 6; see also id. at 9-10). But, the Examiner offers no explanation or reasoning to support that conclusory statement - which, without more, is insufficient to sustain the Examiner’s rejection. See In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (“[R]ejections on obviousness grounds [require] some articulated reasoning with some rational underpinning to support the legal conclusion of Appeal 2021-002632 Application 15/430,066 22 obviousness”) (cited with approval in KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007)); cf. In re Vaidyanathan, 381 F. App’x 985, 994 (Fed. Cir. 2010) (“KSR did not free the PTO’s examination process from explaining its reasoning. In making an obviousness rejection, the examiner should not rely on conclusory statements that a particular feature of the invention would have been obvious or was well known. Instead, the examiner should elaborate, discussing the evidence or reasoning that leads the examiner to such a conclusion.”). The Examiner takes a somewhat different position in the Answer. There, the Examiner maintains that Hurewitz teaches restricting contents that are not deemed of interest to the users because “the contents presented to the users in Hurewitz are not only contents that are in close proximity to the users but also personalized product recommendations and offers for products and services based upon the customer’s purchase and browsing history (Ans. 5). However, we agree with Appellant that providing personalized recommendations is not the same as, and does not disclose or suggest, restricting the generation of content that is not of interest to the user, i.e., a personalization engine, as called for in claim 13. In other words, merely presenting personalized recommendations to a user does not, without more, necessarily involve restricting the presentation of content that is not of interest to the user. We are persuaded that the Examiner erred in rejecting claim 13 under 35 U.S.C. § 103. Therefore, we do not sustain the Examiner’s rejection. For the same reasons, we also do not sustain the rejection of dependent claims 14, 15, 17, and 23. Cf. In re Fritch, 972 F.2d 1260, 1266 (Fed. Cir. Appeal 2021-002632 Application 15/430,066 23 1992) (“dependent claims are nonobvious if the independent claims from which they depend are nonobvious”). Independent Claims 1 and 18 Dependent Claims 2-8, 11, 12, 19, 20, and 24 Independent claims 1 and 18 include language substantially similar to the language of independent claim 13 and stand rejected based on the same rationale, with respect to Hurewitz, applied with respect to claim 13 (Final Act. 5-6, 9-10). Therefore we do not sustain the Examiner’s rejection, under 35 U.S.C. § 103, of independent claims 1 and 18, and claims 2-8, 11, 12, 19, 20, and 24, which depend therefrom for the same reasons set forth above with respect to claim 13. Dependent Claim 21 Claim 21 depends from independent claim 1. The rejection of claim 21 does not cure the deficiency in the Examiner’s rejection of claim 1. Therefore, we do not sustain the Examiner’s rejection, under 35 U.S.C. § 103, of dependent claim 21 for the same reasons set forth above with respect to independent claim 1. CONCLUSION In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1-8, 11-15, 17-21, 23, 24 101 Eligibility 1-8, 11-15, 17-21, 23, 24 1-8, 11, 12, 18-20, 24 103 Hurewitz, Maharajh 1-8, 11, 12, 18-20, 24 Appeal 2021-002632 Application 15/430,066 24 Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 13-15, 17, 23 103 Hurewitz, Maharajh, Saylor 13-15, 17, 23 21 103 Hurewitz, Maharajh, Williams 21 Overall Outcome 1-8, 11-15, 17-21, 23, 24 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