Andre B. Black et al.

Patent Trials and Appeals Board

Sep 13, 2019

14010863 - (D) (P.T.A.B. Sep. 13, 2019)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
14/010,863 08/27/2013 Andre B. Black CAM920115011US2_8150-0395 2248
73109 7590 09/13/2019
Cuenot, Forsythe & Kim, LLC
20283 State Road 7
Ste. 300
Boca Raton, FL 33498
EXAMINER
UDDIN, MOHAMMED R
ART UNIT PAPER NUMBER
2167
NOTIFICATION DATE DELIVERY MODE
09/13/2019 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
ibmptomail@iplawpro.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte ANDRE B. BLACK, SUDHAKAR CHALIMADUGU,
DAVID F. CHEUNG, RUBY L. KENNEDY,
YUCHUN LEE, and PATRICK MARTIN
___________

Appeal 2017-010226
Application 14/010,8631
Technology Center 3600
____________

Before JAMES T. MOORE, MEREDITH C. PETRAVICK, and
ALYSSA A. FINAMORE, Administrative Patent Judges.

PETRAVICK, Administrative Patent Judge.

DECISION ON APPEAL

1 The real party in interest is IBM Corporation. App. Br. 1.
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STATEMENT OF THE CASE
The Appellant seeks our review under 35 U.S.C. § 134(a) of the final
rejection of claims 1–9, 14–22, and 27. App. Br. 2.
Appellant canceled claims 10–13 and 23–26. Id.
We have jurisdiction under 35 U.S.C. § 6(b).

SUMMARY OF DECISION2
We AFFIRM.

THE INVENTION
The invention relates to producing a visual representation of a
marketing campaign targeted to certain customers. See Spec. 1:12–2:21.
The visual representation can be a flow chart that is linked to a spreadsheet.
Id. at 2:1–2. Figure 13 is reproduced below.

2 Our decision will make reference to Appellant’s Appeal Brief (“App. Br.,”
filed Jan. 30, 2017), Appellant’s Reply Brief (“Reply Br.” filed July 31,
2017), the Final Office Action (“Final Act.,” mailed Aug. 30, 2016), and the
Examiner’s Answer (“Ans.,” mailed May 31, 2017).

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“F[igure] 13 is a diagram depicting a target group spreadsheet and a
campaign flowchart.” Id. at 3:15–16.
Claim 1, reproduced below, is illustrative of the claimed subject
matter on appeal.
1. A computer-implemented method for target group
management, comprising:
producing a computer data table including one or more
group entries corresponding to one or more defined contact
group entities with each of the entries having a first set of group
attributes; and
producing a visual representation of a marketing
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campaign, wherein the representation including one or more
instances of defined contact group entities, the one or more
instances having a second set of group attributes, and the
representation linked to the table according to the second set of
group attributes.

THE EVIDENCE
The Examiner relies upon the following as evidence of unpatentability:
Good
Pych
US 2002/0120462 A1
US 2004/0093259 A1
Aug. 29, 2002
May 13, 2004

THE REJECTIONS3
The Examiner rejected claims 1–9, 14–22, and 27 under 35 U.S.C.
§ 101 as being directed to non-statutory subject matter and under 35 U.S.C.
§ 103(a) as being unpatentable over Pych and Good.

ANALYSIS
35 U.S.C. § 101
An invention is patent eligible if it is 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

3 The Final Office Action includes a nonstatutory obviousness-type double
patenting rejection of claims 1–9, 14–22, and 27. Final Act. 3–8. Appellant
file a terminal disclaimer on July 31, 2017, which approved and entered the
same day. The rejection is deemed moot.
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ideas” are not patentable. E.g., Alice Corp. v. CLS Bank Int’l, 573 U.S. 208,
216 (2014).
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court’s two-step framework, described in Mayo
and Alice. Id. at 217–18 (citing Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 566 U.S. 66, 75–77 (2012)). In accordance with that framework,
we first determine what concept the claim is “directed to.” See Alice, 573
U.S. at 219 (“On their face, the claims before us are drawn to the concept of
intermediated settlement, i.e., the use of a third party to mitigate settlement
risk.”); see also Bilski v. Kappos, 561 U.S. 593, 611 (2010) (“Claims 1 and 4
in petitioners’ application explain the basic concept of hedging, or protecting
against risk.”).
Concepts determined to be abstract ideas, and thus patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219–20; Bilski, 561 U.S. at 611);
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594–95 (1978)); and
mental processes (Gottschalk v. Benson, 409 U.S. 63, 69 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as “molding rubber products” (Diamond v. Diehr, 450 U.S. 175, 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 176; 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 (citation omitted). “A claim
that recites an abstract idea must include ‘additional features’ to ensure ‘that
the [claim] is more than a drafting effort designed to monopolize the
[abstract idea].’” Id. (alterations in original) (quoting Mayo, 566 U.S. at 77).
“[M]erely requir[ing] generic computer implementation[] fail[s] to transform
that abstract idea into a patent-eligible invention.” Id.
The PTO recently published revised guidance on the application of
§ 101. 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed.
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Reg. 50 (Jan. 7, 2019) (“2019 Guidance”).4 Under the 2019 Guidance, we
first look to whether the claim recites:
(1) any judicial exceptions, including certain groupings of
abstract ideas (i.e., mathematical concepts, certain methods of
organizing human activity, such as a fundamental economic
practice, or mental processes); and
(2) additional elements that integrate the judicial exception into
a practical application (see MPEP §§ 2106.05(a)–(c), (e)–(h)).
Only if a claim (1) recites a judicial exception and (2) does not integrate that
exception into a practical application, do we then look to whether the claim:
(3) adds a specific limitation beyond the judicial exception that
is not “well-understood, routine, conventional” in the field (see
MPEP § 2106.05(d)); or
(4) simply appends well-understood, routine, conventional
activities previously known to the industry, specified at a high
level of generality, to the judicial exception.
See 2019 Guidance.

4 Appellant refers to prior USPTO guidance in its briefs. See, e.g., App. Br.
13. Subsequently, the Office issued the 2019 Guidance. 2019 Guidance, 51
(“Eligibility-related guidance issued prior to the Ninth Edition, R–08.2017,
of the MPEP (published Jan. 2018) should not be relied upon.”).
Accordingly, our analysis will not address the sufficiency of the Examiner’s
rejection against the earlier guidance and will comport with the 2019
Guidance.

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For the reasons discussed below, we determine that the Examiner did
not err in determining that claims 1–9, 14–22, and 27 are patent ineligible
under 35 U.S.C. § 101.
Independent Claims 1, 14, and 27
Appellant argues independent claims 1, 14, and 27 as a group. App.
Br. 9. We take independent claim 1 as representative, and claims 14 and 27
stand or fall with claim 1.
Judicial Exception
The Examiner determined that claim 1 is directed to “producing a
visual representation from a table of defined group[s] of contact[s] for [a]
marketing campaign” and that “[p]roducing a visual representation for a
target contact group without significantly doing nothing more is nothing but
an abstract idea.” Final Act. 2–3; see also Ans. 2–3. The Examiner
determined that this is nothing more than collecting information, analyzing
it, and displaying certain results of the collection and analysis. Ans. 6–7
(citing Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350 (Fed. Cir.
2016)).
Appellant broadly argues that the Examiner overgeneralizes the
claims and broadly asserts that the claims are directed to more than
producing a visual representation from a table of defined groups of contacts
for a marketing campaign. App. Br. 12. Appellant, however, provides no
explanation as to what is the alleged “more.” See id. at 10–12.
Claim 1 recites a method having two steps. The first step is
“producing a . . . data table including one or more group entries
corresponding to one or more defined contact group entities with each of the
entries having a first set of group attributes.” App. Br., Claims App. This
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first step recites nothing more than collecting information — a table having
one or more group entries, defined as corresponding to one or more defined
contact group entities, and having a first set of group attributes. The second
step is “producing a visual representation of a marketing campaign, wherein
the representation including one or more instances of defined contact group
entities, the one or more instances having a second set of group attributes,
and the representation linked to the table according to the second set of
group attributes.” Id. The Specification describes that the second set of
group attributes is linked to the table by correspondence to the first set of
group attributes. See Spec. 1:20–2:2. As for the producing of a visual
representation, the Specification describes a technical marketer (e.g., a user)
producing a flow chart for the market campaign. See id. at 16:3–17. The
second step is nothing more than a user analyzing information in their mind
and creating a display of the information.
Given the above, we agree with the Examiner that claim 1 recites a
method of producing a visual representation of a marketing campaign using
information from a table of defined group entities. We also agree that the
claimed steps reproduced above is a mental process involving nothing more
than the collection, analysis, and display of information. Mental processes,
without more, have been found to be an abstract idea. See 2019 Guidance,
52.
Court have found similar claims that recite information collection,
analysis, and display, including when limited to particular content, without
more, to be ineligible. See, e.g., Internet Patents Corp. v. Active Network,
Inc., 790 F.3d 1343, 1349 (Fed. Cir. 2015); Digitech Image Techs., LLC v.
Elecs. for Imaging, Inc., 758 F.3d 1344, 1351 (Fed. Cir. 2014); and
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CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1370 (Fed. Cir.
2011); see also SAP Am., Inc. v. InvestPic, LLC, 898 F.3d 1161, 1167 (Fed.
Cir. 2018) (“Contrary to InvestPic’s suggestion, it does not matter to this
conclusion whether the information here is information about real
investments. As many cases make clear, even if a process of collecting and
analyzing information is ‘limited to particular content’ or a particular
‘source,’ that limitation does not make the collection and analysis other than
abstract.” (quoting Elec. Power Grp., 830 F.3d at 1353, 1355); Affinity Labs
of Tex., LLC v. Amazon.com Inc., 838 F.3d 1266, 1271 (Fed. Cir. 2016)
(“[T]ailoring of content based on information about the user—such as where
the user lives or what time of day the user views the content—is an abstract
idea that is as old as providing different newspaper inserts for different
neighborhoods.”) (citing Intellectual Ventures I LLC v. Capital One Bank
(USA), 792 F.3d 1363, 1369 (Fed. Cir. 2015)); Morsa v. Facebook, Inc., 77
F.Supp.3d 1007, 1013 (C.D. Cal. 2014), aff'd, 622 F.App’x 915 (Fed. Cir.
2015) (“The concept of gathering information about one’s intended market
and attempting to customize the information then provided is as old as the
saying, ‘know your audience.”’ (quoting OpenTV, Inc. v. Netflix Inc., 76
F.Supp.3d 886, 893 (N.D. Cal. 2014))).
Additional Elements that
Integrate the Judicial Exception into a Practical Application
In addition to the abstract idea, claim 1 recites that the method is
“computer-implemented” and that the data table is a “computer data table.”
App. Br., Claims App. The Specification describes using a general purpose
microprocessor and processors of any kind of digital computer to implement
the invention and does not describe any technological improvement to the
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computers. See Spec. 35:29–31; see also id. at 34:21–35:18 (describing
conventional computing components performing conventional activities).
These additional claim elements do not recite an improvement to the
functioning of a computer or otherwise reflect an integration into a practical
application. See 2019 Guidance, 54–55. Rather, the additional elements
merely recite the use of a computer as a tool to perform the recited method.
The recitation of a result-oriented solution, that lacks any details as to how
the computer performs the recited steps, is the equivalent of the words
“apply it.” Intellectual Ventures I LLC v. Capital One Fin. Corp., 850 F.3d
1332, 1341–42 (Fed. Cir. 2017) (citing Elec. Power Grp., 830 F.3d at 1356
(cautioning against claims “so result focused, so functional, as to effectively
cover any solution to an identified problem”)).
The additional elements do not integrate the judicial exception into a
practical application. See 2019 Guidance, 53.
Well-Understood, Routine, Conventional
Claim 1 fails to add specific elements beyond the judicial exception
that are not well-understood, routine, and conventional in the field. Claim
1’s recitations that the method is “computer-implemented” and that the data
table is a “computer data table” simply append well-understood, routine,
conventional activities previously known to the industry, specified at a high
level of generality, to the judicial exception. See Intellectual Ventures I, 792
F.3d at 1368 (citing Alice, 573 U.S. at 225) (holding that instructing one to
apply an abstract idea while reciting no more than generic computer
elements that perform generic computer tasks does not make the abstract
idea patent eligible); Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 716
(Fed. Cir. 2014) (holding that “each of those eleven steps merely instructs
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the practitioner to implement the abstract idea ‘with routine, conventional
activit[ies],’ which is insufficient to transform the patent-ineligible abstract
idea into patent-eligible subject matter” (alteration in original)).
Appellant does not argue that claim 1 recites additional elements that
add significantly more to the abstract idea. See App. Br. 16–17; Reply Br. 5.
For the reasons discussed above, we determine that the Examiner did
not err in determining claim 1 is patent ineligible under 35 U.S.C. § 101.
We sustain the rejection of claim 1, with claims 14 and 27 falling therewith.
Dependent Claims 2–9 and 15–22
Appellant argues dependent claims 2–9 and 15–22 as a group. App.
Br. 9. We select claim 2 as representative.
Claim 2 depends from claim 6 `and recites, “wherein the second set of
group attributes correspond to the first set of group attributes, and the table
and the flowchart representing promotions assigned to contact group entities
in a marketing campaign.” App. Br., Claims App. Claim 6 depends from
claim 1 and recites, “wherein the table is a spreadsheet, and the visual
representation is flowchart.” Id.
In addition to the argument raised with respect to claim 1, which are
not persuasive for the reasons above, Appellant broadly asserts that “the
dependent claims add additional elements that recite substantially more than
the alleged abstract idea” and argues that “[t]he Examiner’s analysis is silent
with regards to the dependent claims.” App. Br. 16–17; Reply Br. 5.
Appellant, however, does not point out specifically what element or
elements of claim 2 it alleges add significantly more to the abstract idea. As
can be seen from reproduced claims 2 and 6, above, the claims further define
the method and add a degree of particularity to the method, but do not make
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the method any less abstract. Ultramercial, 772 F.3d at 714–15. Claim 2
does not recite any additional elements that add significantly more to the
abstract idea.
We, thus, are not persuaded by Appellant that dependent claim 2 adds
additional elements that recite substantially more than the abstract idea. The
rejection of claims 2–9 and 15–22 under 35 U.S.C. § 101 is affirmed.
For the reasons discussed above, we determine that claims 1–9, 14–
22, and 27 are patent ineligible under 35 U.S.C. § 101.
35 U.S.C. § 103
Appellant argues that the prior art, in particular Pych, does not
disclose the first step of claim 1’s method — “producing a computer data
table including one or more group entries corresponding to one or more
defined contact group entities with each of the entries having a first set of
group attributes.” See App. Br. 17–24; Reply Br. 5–9. Independent claims
14 and 27 recite corresponding limitations.
Initially, we note that the Specification contains a definition of the
claim term “group” — “[a]s used herein, groups refer to collections of
contacts, typically individuals or other entities, whereas target groups refer
to groups of entities that are intended recipients for specific marketing
communications, e.g., promotions.” Spec. 5:6–8. We apply this definition
in our analysis. See In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994) (The
presumption that claim terms are given their ordinary and customary
meaning is overcome where the patentee, acting as its own lexicographer,
has clearly set forth a definition of the term different from its customary and
ordinary meaning.).
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The rejection and the Answer point to multiple tables and databases in
Pych to explain how Pych teaches the claimed first step of producing the
claimed computer data table. See, e.g., Final Act. 9–10 (citing Pych ¶ 129,
Figs. 7A–7L, 8A–8B), Ans. 12–13 (citing Pych ¶¶ 129, 132, Figs. 8A–8B,
9). These explanations, however, do not sufficiently show which of Pych’s
tables or databases teaches the claimed data table. The rejection does not
rely upon Good to teach this limitation. See Final Act. 10–11.
First, the rejection and the Answer seem to equate the database
depicted in Pych’s Figure 8B to the claimed computer data table. See, e.g.,
Ans. 12–13. The Answer points to Pych’s disclosure of a query for a
campaign, which includes selecting two contact groups — (I) people over
the age of 35 and having an income greater than $25,000 and (II) anyone
with an income greater than $45,000 (Pych ¶ 129, Fig. 8A) and states:
That means computer data table 8B is created with three different
group of contact entities, individual with income > 35 (A-E, G
and H), individual with income > 45 (G, H) and individual with
income < 35 (J, K), with different set of attribute, such as age,
income. Therefore, with examiner broadest reasonable
interpretation and it is clearly understood by one of ordinary skill
in the art, that a computer data table is created in claimed
invention is same as computer data table of Pych.
Ans. 12–13.
As Appellant points out, however, the query depicted in Figure 8A
and described in paragraph 129 is not used to create the Figure 8B database,
but is applied to the Figure 8B database. Reply Br. 7. Pych states: “The
query process illustrated in FIG. 8A may be run against the database of FIG.
8B, in order to select individuals.” Pych ¶ 130 (emphasis omitted). The
Figure 8B database contains “possible contacts for a marketing campaign”
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(id.) and is not a database having one or more group entries produced by
Figure 8A query.
Second, the Answer seems to equate the promotion history table
depicted in Pych’s Figure 9 to the claimed computer data table. Ans. 13.
Although the Figure 9 promotion history table is produced by applying the
Figure 8A query to the Figure 8B database, the Figure 9 promotion history
table also does not have group entries. The Figure 9 promotion history table
has an offer cell identification key column 90, a customer name or
identification key column 92, and extract date column 94 (Pych ¶ 133), but
not the claimed group entries. See Reply Br. 8.
Finally, in addressing the second step of the method of claim 1, the
rejection and Answer point to Pych’s behavior group table depicted in
Figure 19. Final Act. 10; Ans. 16–17. The second step includes the
limitation that “the representation linked to the table according to the second
set of group attributes,” and “the table” refer back to the computer data table.
App. Br., Claims App. Figure 19’s behavior group table, however, also does
not have the claimed group entries. See Pych ¶ 190, Fig. 19. We note that
the reliance on Figure 19 is also inconsistent with the reliance on Figures 8A
or 9 for the claimed first step.
“[T]he examiner bears the initial burden, on review of the prior art or
on any other ground, of presenting a prima facie case of unpatentability.” In
re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). To establish a prima facie
case of obviousness, the Examiner must show that each and every limitation
of the claim is described or suggested by the prior art or would have been
obvious based on the knowledge of those of ordinary skill in the art or the
inferences and creative steps a person of ordinary skill in the art would have
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employed. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007); In re
Fine, 837 F.2d 1071, 1074 (Fed. Cir. 1988). Here, the Examiner has not met
the burden of demonstrating how the prior art teaches all of the limitations of
claim 1.
Accordingly, we reverse the rejection of independent claims 1, 14,
and 27, and claims 2–9 and 15–22, dependent thereon, under 35 U.S.C.
§ 103(a) as being unpatentable over Pych and Good. Cf. In re Fritch, 972
F.2d 1260, 1266 (Fed. Cir. 1992) (“[D]ependent claims are nonobvious if the
independent claims from which they depend are nonobvious.”).

DECISION
We sustain the rejection of claims 1–9, 14–22, and 27 under 35 U.S.C.
§ 101 as being directed to non-statutory subject matter. We do not sustain
the rejection of claims 1–9, 14–22, and 27 under 35 U.S.C. § 103(a) over
Pych and Good.
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