Anjleena Dewan et al.Download PDFPatent Trials and Appeals BoardSep 16, 201912131849 - (D) (P.T.A.B. Sep. 16, 2019) Copy Citation 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. 12/131,849 06/02/2008 Anjleena Dewan 350821-991200 6600 26379 7590 09/16/2019 DLA PIPER LLP (US ) 2000 UNIVERSITY AVENUE EAST PALO ALTO, CA 94303-2248 EXAMINER HOLLY, JOHN H ART UNIT PAPER NUMBER 3696 NOTIFICATION DATE DELIVERY MODE 09/16/2019 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): PatentDocketingUS-PaloAlto@dlapiper.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte ANJLEENA DEWAN and JAYESH SAHASI ____________________ Appeal 2017-011553 Application 12/131,849 Technology Center 3600 ____________________ Before ERIC B. CHEN, HUNG H. BUI, and ADAM J. PYONIN, Administrative Patent Judges. BUI, Administrative Patent Judge. DECISION ON APPEAL Appellant1 seeks our review under 35 U.S.C. § 134(a) from the Examiner’s final rejection of claims 1–9 and 11–18, which are all the claims pending in the application. App. Br. 15–16 (Claims App’x). Claims 10, 19, and 20 have been cancelled. Id. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM.2 1 According to Appellant, On24 Inc. is the real party in interest. App. Br. 1. 2 Our Decision refers to Appellant’s Appeal Brief filed March 13, 2017 (“App. Br.”); Reply Brief filed September 11, 2017 (“Reply Br.”); Examiner’s Answer mailed July 11, 2017 (“Ans.”); Final Office Action mailed July 11, 2016 (“Final Act.”); and original Specification filed June 2, 2008 (“Spec.”). Appeal 2017-011553 Application 12/131,849 2 STATEMENT OF THE CASE According to Appellant, the claimed subject matter relates to “a virtual tradeshow” and “applications offering virtual [trade]show experiences” such as “virtual exhibit halls, auditoriums, and booths, among other design elements” programmed to allow “these virtual spaces to be designed to meet [user experience and promote user efficiency].” Spec. 2:1– 10; Abstract. Claims 1 and 11 are independent. Claim 1 is illustrative of the claimed subject matter, as reproduced below: 1. A system for creating a virtual exhibition, comprising: a first store having one or more pieces of virtual exhibition registration and virtual exhibition usage information about a user; a matching unit that matches the one or more pieces of virtual exhibition registration and virtual exhibition usage information about the user with a set of targeted content, wherein the targeted content is one of a document and a presentation; a content delivery device for delivering the virtual exhibition having a smart booth area that displays the matched targeted content to the user within the smart booth area; and wherein the content delivery device further comprises a feedback connection which delivers a set of information on the user’s interaction with the smart booth area to the matching unit. App. Br. 15 (Claims App’x). EXAMINER’S REJECTIONS & REFERENCES (1) Claims 1–9 and 11–18 stand rejected under 35 U.S.C. § 101 because the claimed invention is directed to an abstract idea without significantly more. Final Act. 2–5. Appeal 2017-011553 Application 12/131,849 3 (2) Claims 1–9 and 11–18 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Franke (US 7,590,688 B2; issued Sept. 15, 2009), Chung (US 6,657,543 B1; issued Dec. 2, 2003), and Young et al. (US 7,873,638 B2; issued Jan. 18, 2011). Final Act. 6–11. DISCUSSION 35 U.S.C. § 101 In rejecting claims 1–9 and 11–18 under 35 U.S.C. § 101, the Examiner determines these claims are directed to “creating a virtual exhibition” by “collecting . . . virtual exhibition registration and virtual exhibition usage information about a user” and “matching . . . virtual exhibition registration and virtual exhibition usage information about a user with a set of a targeted content to select the targeted content” which is considered a “fundamental economic practice” and includes limitations that are analogous or similar to (1) concepts of “comparing new and stored information and using rules to identify options” as discussed in SmartGene (Final Act. 4) and (2) concepts of collecting information, analyzing it, and displaying certain results of the collection and analysis as discussed in Electric Power Group. Ans. 4–5; see SmartGene, Inc. v. Advanced Biological Labs., SA, 852 F. Supp. 2d 42 (D. D.C. 2012), aff’d, 555 F. App’x 950, 955 (Fed. Cir. 2014) (holding that claims directed to “comparing new and stored information and using rules to identify medical options” are not patent-eligible); and Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1354 (Fed. Cir. 2016) (holding that claims directed to “gathering and analyzing information of a specified content, then displaying the results” are patent-ineligible under § 101). Appeal 2017-011553 Application 12/131,849 4 The Examiner also determines the claims fail to amount to “significantly more than the judicial exception” or contain an “inventive concept” because the additional elements recited (1) do not amount to “an improvement to another technology or technical field,” (2) do not “improve the functioning of the computer itself,” (3) are not “necessarily rooted in technology,” and (4) require “no more than a generic computing device (server), a client (generic computer) interface, and a network (connected generic computers) to perform generic functions that are well-understood, routine, and conventional activities previously known in the industry.” Final Act. 5. Appellant argues independent claims 1 and 11 together (App. Br. 9– 10). We select claim 11 as representative. Claims 1–9 and 12–18 fall with claim 11 (see 37 C.F.R. § 41.37(c)(1)(iv)). Legal Framework To determine whether claims are patent eligible under § 101, we apply the Supreme Court’s two-step framework articulated in Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 573 U.S. 208 (2014). First, we determine whether the claims are directed to a patent-ineligible concept: laws of nature, natural phenomena, and abstract ideas. Id. at 217. If so, we then proceed to the second step to consider the elements of the claims “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. In other words, the second step is to “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) Appeal 2017-011553 Application 12/131,849 5 (quoting Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 72–73 (2012)). The Federal Circuit has described the Alice step-one inquiry as looking at the “focus” of the claims, their “character as a whole,” and the Alice step-two inquiry as looking more precisely at what the claim elements add—whether they identify an “inventive concept” in the application of the ineligible matter to which the claim is directed. Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335–36 (Fed. Cir. 2016); Internet Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1346 (Fed. Cir. 2015). In an effort to achieve clarity and consistency in how the U.S. Patent and Trademark Office (the “Office”) applies the Supreme Court’s two-step framework, the Office recently published revised guidance interpreting governing case law and establishing a prosecution framework for all patent- eligibility analysis under Alice and § 101 effective as of January 7, 2019. 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50– 57 (Jan. 7, 2019) (“2019 Revised Guidance”). 2019 Revised Guidance Under the 2019 Revised Guidance, we first look under Alice step 1 or 2019 Revised Guidance “Step 2A” to whether the claim recites: (1) Prong One: any judicial exceptions, including certain groupings of abstract ideas (i.e., [i] mathematical concepts, [ii] mental processes, or [iii] certain methods of organizing human activity such as a fundamental economic practice or managing personal behavior or relationships or interactions between people); and (2) Prong Two: additional elements that integrate the judicial exception into a practical application (see Manual of Patent Appeal 2017-011553 Application 12/131,849 6 Examining Procedure (“MPEP”) §§ 2106.05(a)–(c), (e)– (h)).3 See 2019 Revised Guidance, 84 Fed. Reg. at 51–52, 55, Revised Step 2A, Prong One (Abstract Idea) and Prong Two (Integration into A Practical Application). Only if a claim: (1) recites a judicial exception, and (2) does not integrate that exception into a practical application, do we then evaluate whether the claim provides an “inventive concept” under Alice step 2 or “Step 2B.” See 2019 Revised Guidance at 56; Alice, 573 U.S. at 217–18. For example, we look to whether the claim: 1) adds a specific limitation beyond the judicial exception that is not “well-understood, routine, conventional” in the field (see MPEP § 2106.05(d)); or 2) simply appends well-understood, routine, and conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception. See 2019 Revised Guidance, 84 Fed. Reg. at 56. In their briefs, Appellant refers to prior USPTO guidance (e.g., [1] 2014 Interim Guidance on Patent Subject Matter Eligibility, 79 Fed. Reg. 74,618 (December 16, 2014); [2] July 2015 Update on Subject Matter Eligibility, 80 Fed. Reg. 45,429 (July 30, 2015) (“the 2015 Update”); [3] May 2016 Subject Matter Eligibility Update, 81 Fed. Reg. 27,381 (May 6, 2016); [4] Memorandum on Subject Matter Eligibility Decisions dated Nov. 2, 2016 (App. Br. 4; Reply Br. 3)). Appellant also argues against the Examiner’s reliance on SmartGene because “[t]he facts at issue relates to [a] system for creating a virtual exhibition while the facts . . . of SmartGene are directed to 3 All references to the MPEP are to the Ninth Edition, Revision 08.2017 (rev. Jan. 2018). Appeal 2017-011553 Application 12/131,849 7 guiding the selection of therapeutic treatment regimens” and “thus reliance on the SmartGene case is not persuasive” (App. Br. 9–10). However, those prior guidelines and the application of SmartGene have been superseded by the 2019 Revised Guidance. See 2019 Revised Guidance, 84 Fed. Reg. at 52, n. 11 (“These developments in the caselaw can create complications for the patent-examination process.”). Accordingly, our analysis will not address the sufficiency of the Examiner’s rejection against the cited prior guidance. Rather, our analysis will comport with the 2019 Revised Guidance as discussed below. Alice/Mayo—Step 1 (Abstract Idea) Step 2A–Prongs 1 and 2 identified in the 2019 Revised Guidance Step 2A, Prong One Turning to the first step of the Alice inquiry, Appellant argues the claims are not directed to an abstract idea because (1) “the ideas to which the claims are directed are clearly not abstract and not directed to any fundamental economic practice” and (2) the claim elements (i.e., first store, matching unit, and content delivery device) “represent more than just an abstract idea” and “do not represent a scenario where a fundamental and long prevalent idea that existed before computers is now simply being implemented on a computer, such as in Bilski and Alice.” Reply Br. 2. Appellant’s arguments are not persuasive. Contrary to Appellant’s arguments, Appellant’s Specification and claims describe “a virtual tradeshow” such as “virtual exhibit halls, auditoriums, and booths” which uses user information to present targeted information from exhibitors, sponsors, and others “for the use of businesses and their customers with concrete examples being Virtual Tradeshows, Job Fairs, Product Demonstration, Partner Pavilion, Conferences, etc.” Spec. 1:5–2:5; Appeal 2017-011553 Application 12/131,849 8 Abstract. For example, Figure 3 shows an electronic smart booth 120 in the context of a virtual tradeshow environment 103 for providing targeted content or content recommendations regarding products or information, as reproduced below: Figure 3 shows smart booth 120 for providing targeted content or content recommendations of products, via a virtual tradeshow, based on user’s information. Representative claim 11 recites a method for presenting a virtual exhibition comprising: (1) collecting . . . virtual exhibition registration and virtual exhibition usage information about a user of the virtual exhibition; (2) matching . . . virtual exhibition registration and virtual exhibition usage information about a user with a set of targeted content to select the targeted content; Appeal 2017-011553 Application 12/131,849 9 (3) inserting . . . the set of targeted content [or content recommendations] into a smart booth that is part of the virtual exhibition; (4) delivering the virtual exhibition and the smart booth to the user; and (5) feeding back . . . the user’s interaction with the smart booth area . . . App. Br. 16 (Claims App’x). These limitations, under their broadest reasonable interpretation, recite nothing more than collecting user’s interests regarding a virtual exhibition and then providing targeted content or content recommendations (e.g., presentations, documents or other resources provided by exhibitors or sponsors for showing at the tradeshow) to the user (customer or potential customer) based on matching of the user’s interests. For example, limitations (1)–(3) in claim 11 describe receiving, maintaining, and matching user’s registration and interests, which are activities ordinarily performed by companies and related entities such as businesses and websites (such as online stores) with targeted content for a tradeshow. See Spec. 4:5–22; Abstract. Limitations (4)–(5) in claim 11 describe presenting targeted content to the user, which are activities ordinarily performed by businesses and websites (online stores) that offer targeted content (e.g., presentations, documents or other resources provided by exhibitors or sponsors for showing at the tradeshow) that are most likely to bring in potential revenue. Thus, limitations (1)–(6) in claim 1 recite providing targeted content or content recommendations (e.g., presentations, documents or other resources provided by exhibitors or sponsors for showing at a virtual tradeshow) to the user based on matching of the user’s interests, which is a known business activity and a fundamental economic practice in our system of commerce. Appeal 2017-011553 Application 12/131,849 10 Such activities are squarely within the realm of abstract ideas, like (1) the risk hedging in Bilski v. Kappos, 561 U.S. 593 (2010); (2) the intermediated settlement in Alice, 573 U.S. at 219–22; (3) verifying credit card transactions in CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1370 (Fed. Cir. 2011); (4) guaranteeing transactions in buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1354 (Fed. Cir. 2014); (5) distributing products over the Internet in Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709 (Fed. Cir. 2014); (6) determining a price of a product offered to a purchasing organization in Versata Dev. Grp., Inc. v. SAP Am., Inc., 793 F.3d 1306 (Fed. Cir. 2015); and (7) pricing a product for sale in OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359 (Fed. Cir. 2015). Providing targeted content or content recommendations (e.g., presentations, documents or other resources provided by exhibitors or sponsors for showing at a virtual tradeshow) to the user based on matching of the user’s interests in a virtual tradeshow is also a building block of a market economy and, like risk hedging and intermediated settlement, is an “abstract idea” beyond the scope of § 101. See Alice, 573 U.S. at 219–20. Therefore, we conclude limitations (1)–(6) in claim 1 recite a fundamental economic practice as one of the certain methods of organizing human activity identified in the 2019 Revised Guidance and, thus, an abstract idea. See 2019 Revised Guidance (Revised Step 2A, Prong One), 84 Fed. Reg. at 52 (describing an abstract idea category of “[c]ertain methods of organizing human activity—fundamental economic principles or practices . . . commercial or legal interactions (including . . . advertising, marketing or sales activities or behaviors; business relations)”). Appeal 2017-011553 Application 12/131,849 11 As further recognized by the Examiner, claim 11 recites collecting, analyzing, and displaying information (targeted content), similar to other claims (involving data collection and analysis) identified by the courts as directed to abstract ideas. Ans. 5; see Elec. Power Grp., 830 F.3d at 1353 (holding that “collecting information, analyzing it, and displaying certain results of the collection and analysis” are “a familiar class of claims ‘directed to’ a patent ineligible concept”); Content Extraction & Transmission LLC v. Wells Fargo Bank, Nat’l Ass’n, 776 F.3d 1343, 1347 (Fed. Cir. 2014) (claims were “drawn to the abstract idea of 1) collecting data, 2) recognizing certain data within the collected data set, and 3) storing that recognized data in a memory”). Thus, under Step 2A, Prong One, we agree with the Examiner the claims recite an abstract idea identified in the 2019 Revised Guidance. Step 2A, Prong Two (Integration into a Practical Application) Under Revised Step 2A, Prong Two of the 2019 Revised Guidance, we discern no additional element (or combination of elements) recited in Appellant’s claims 1 and 11 that may integrate the judicial exception into a practical application. See 2019 Revised Guidance, 84 Fed. Reg. at 54–55. For example, Appellant’s claimed additional elements (e.g., “store,” “matching unit” and “content delivery device” as recited in claim 1 and “online presentation system” and “matching unit” as recited in claim 11) do not: (1) improve the functioning of a computer or other technology; (2) are not applied with any particular machine (except for a generic computer); (3) do not effect a transformation of a particular article to a different state; and (4) are not applied in any meaningful way beyond generally linking the use of the judicial exception to a particular technological environment, such that Appeal 2017-011553 Application 12/131,849 12 the claim as a whole is more than a drafting effort designed to monopolize the exception. See MPEP §§ 2106.05(a)–(c), (e)–(h); Ans. 4–5. Appellant argues, like the claims in McRO Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299, 1313 (Fed. Cir. 2016), “the present claims are directed to improving an existing technological process (creating a virtual exhibition) like the lip synchronization and facial expression control of animated characters in McRO.” App. Br. 9–10 (emphasis added). In particular, Appellant argues the claim elements (i.e., first store, matching unit, and content delivery device) “do not represent a scenario where a fundamental and long prevalent idea that existed before computers is now simply being implemented on a computer, such as in Bilski and Alice.” Reply Br. 2. According to Appellant, “these types of operations represent a modern technology that is necessarily dependent on computer systems and an idea that did not exist before the time of computers.” Id. (underlining omitted). We disagree. There is no support from Appellant’s Specification for any feature that would improve any “existing technological process” as Appellant argues. Even if the Specification has support for such feature, Appellant’s claim 11 is focused on compiling user’s interests with items in a virtual tradeshow and then providing targeted content or content recommendations (e.g., presentations, documents or other resources provided by exhibitors or sponsors for showing at the tradeshow) to the user based on matching of the user’s interests, rather than improving any “existing technological process.” We also note Appellant’s reliance on McRO is misplaced. For example, McRO’s ’576 patent (U.S. Patent No. 6,307,576) describes Appeal 2017-011553 Application 12/131,849 13 computer software for matching audio to a 3D animated mouth movement to provide lip-synched animation. McRO’s claims contain (i) specific limitations regarding a set of rules that “define[] a morph weight set stream as a function of phoneme sequence and times associated with said phoneme sequence” to enable computers to produce “accurate and realistic lip synchronization and facial expressions in animated characters” (McRO, 837 F.3d at 1313) and, when viewed as a whole, are directed to (ii) a “technological improvement over the existing, manual 3–D animation techniques” that uses “limited rules in a process specifically designed to achieve an improved technological result in conventional industry practice.” Id. at 1316. In contrast to McRO, Appellant’s Specification and claims do not describe technological improvements or specific improvements to the way computers operate. Rather, Appellant’s Specification and claims describe compiling user’s interests with items in a virtual tradeshow and then providing targeted content or content recommendations (e.g., presentations, documents or other resources provided by exhibitors or sponsors for showing at the tradeshow) to the user based on matching of the user’s interests. Using a generic computer (i.e., “matching unit” or “content delivery device”) as a tool, as shown in Appellant’s Figure 1, to perform an abstract idea are insufficient to show “integration into a practical application.” See MPEP § 2106.05(f). Instead, these generic computing devices are simply the “automation of the fundamental economic concept,” OIP Techs., 788 F.3d at 1362–63, of user’s interests with items in a virtual tradeshow and then providing targeted content or content recommendations (e.g., Appeal 2017-011553 Application 12/131,849 14 presentations, documents or other resources provided by exhibitors or sponsors for showing at the tradeshow) to the user based on matching of the user’s interests. “[M]erely requiring generic computer implementation,” “do[] not move into [§] 101 eligibility territory.” buySAFE, 765 F.3d at 1354. As correctly recognized by the Examiner, “[n]either the independent claims nor the dependent claims recite an improvement in another technology or technical field.” Final Act. 5. Likewise, neither the problem identified is seen as “a technical field” or “improve the functioning of the computer.” Id. Instead, the problems contemplated by the Specification are commercial in nature, i.e., “setting up environments for the use of businesses and their customers, with concrete examples being Virtual Tradeshows, Job Fairs, Product Demonstration, Partner Pavilion, Conferences, etc., and uses in a wider range of areas that can be readily implemented.” Spec. 1:5–10; Abstract. As such, using a generic computing device to process user’s interests and provide targeted content does not improve the technical functioning of the computer or computer networks and, as such, does not integrate the fundamental economic concept of providing “targeted content or content recommendations (e.g., presentations, documents or other resources provided by exhibitors or sponsors for showing at the tradeshow) to the user based on matching of the user’s interests” into a practical application. For business-centric inventions, such as Appellant’s invention involving providing targeted content to a user, the Federal Circuit’s precedential decisions in (1) DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1257 (Fed. Cir. 2014) and (2) Amdocs (Israel) Ltd. v. Openet Appeal 2017-011553 Application 12/131,849 15 Telecom, Inc., 841 F.3d 1288, 1294 (Fed. Cir. 2016) are instructive. For example, the Federal Circuit held DDR’s claims are patent-eligible under § 101 because DDR’s claims (1) do not merely recite “the performance of some business practice known from the pre-Internet world” previously disclosed in Bilski and Alice, but instead (2) provide a technical solution to a technical problem unique to the Internet, i.e., a “solution . . . necessarily rooted in computer technology in order to overcome a problem specifically arising in the realm of computer networks.” DDR, 773 F.3d at 1257. Likewise, the Federal Circuit also held Amdocs’ claims patent-eligible under § 101 because, like DDR, Amdocs’ claims “entail[] an unconventional technological solution (enhancing data in a distributed fashion) to a technological problem (massive record flows which previously required massive databases)” and “improve the performance of the system itself.” Amdocs, 841 F.3d at 1300, 1302. According to MPEP § 2106.05(a), both the Federal Circuit’s precedential decisions in DDR and Amdocs are incorporated into the “integration into a practical application” (Prong Two) of the 2019 Revised Guidance. In contrast to DDR and Amdocs, Appellant’s abstract idea of providing “targeted content or content recommendations (e.g., presentations, documents or other resources provided by exhibitors or sponsors for showing at the tradeshow) to the user based on matching of the user’s interests” does not provide a technical solution to a technical problem, i.e., a “solution . . . necessarily rooted in computer technology in order to overcome a problem specifically arising in the realm of computer networks.” DDR, 773 F.3d at 1257. Nor does Appellant’s invention entail, like Amdocs, any “unconventional technological solution (enhancing data in a distributed Appeal 2017-011553 Application 12/131,849 16 fashion) to a technological problem (massive record flows which previously required massive databases)” and “improve the performance of the system itself.” Amdocs, 841 F.3d at 1300, 1302. Instead, the solution proposed by Appellant is at best to address commercial problems of maximizing potential customers by personalizing user experience with targeted content, and not to improve any technical functioning of any computer or any technological problem. A claim for a new abstract idea is still an abstract idea. See Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1151 (Fed. Cir. 2016). “No matter how much of an advance in the finance field the claims recite, the advance lies entirely in the realm of abstract ideas, with no plausibly alleged innovation in the non-abstract application realm.” SAP Am., Inc. v. InvestPic, LLC, 898 F.3d 1161, 1163 (Fed. Cir. 2018). For these reasons, we discern no additional elements (or combination of elements) recited in Appellant’s claim 11 (similarly, claim 1) that integrate the judicial exceptions into a practical application. See 2019 Revised Guidance, Revised Step 2A, Prong Two. Alice/Mayo—Step 2 (Inventive Concept) Step 2B identified in the 2019 Revised Guidance Under the 2019 Revised Guidance, 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 adds a specific limitation beyond the judicial exception that is not “well-understood, routine, conventional” in the field (see MPEP § 2106.05(d)); or, 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 Revised Guidance, 84 Fed. Reg. at 56. Appeal 2017-011553 Application 12/131,849 17 Appellant does not identify any “specific limitation [of claim 11] beyond the judicial exception that is not ‘well-understood, routine, conventional’ in the field” as per MPEP § 2106.05(d). Instead, Appellant presents several arguments, based on DDR and BASCOM Global Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341 (Fed. Cir. 2016), in support of Appellant’s contention that the claims contain an “inventive concept.” App. Br. 10–11; Reply Br. 2. However, Appellant’s arguments are not persuasive. Appellant’s reliance on BASCOM is also misplaced. For example, BASCOM (U.S. Patent No. 5,987,606 (“BASCOM ’606 patent”)) describes a particular arrangement of filtering software at a specific location, remote from the end- users, with customizable filtering features specific to each end user. The filtering software enables individually customizable filtering at the remote ISP server by taking advantage of the technical ability of the ISP server to identify individual accounts and associate a request for Internet content with a specific individual account. BASCOM ’606 patent, 4:35–38. The Federal Circuit recognized that BASCOM’S installation of an Internet content filter at a particular network location is “a technical improvement over prior art ways of filtering such content” because such an arrangement advantageously allows the Internet content filter to have “both the benefits of a filter on a local computer and the benefits of a filter on the ISP server” and “give[s] users the ability to customize filtering for their individual network accounts.” BASCOM, 827 F.3d at 1350, 1352. According to the Federal Circuit, BASCOM’S claims “do not preempt the use of the abstract idea of filtering content on the Internet or on generic computer components performing conventional activities.” Id. at 1352. Appeal 2017-011553 Application 12/131,849 18 Instead, BASCOM’S claims “carve out a specific location for the filtering system (a remote ISP server) and require the filtering system to give users the ability to customize filtering for their individual network accounts.” Id. As such, “an inventive concept can be found in the non-conventional and non-generic arrangement of known, conventional pieces.” Id. at 1350. In contrast to BASCOM, Appellant’s claims and Specification are directed to a system and method for providing targeted content or content recommendations (e.g., presentations, documents or other resources provided by exhibitors or sponsors for showing at the tradeshow) to the user based on matching of the user’s interests. Spec. 2:1–10; Abstract. There is no evidence in the record to support the contention that Appellant’s claimed system is provided with any non-conventional and non-generic arrangement of known, conventional components similar to BASCOM. Lastly, Appellant argues “[the] present claims are limited to a specific process, do not preempt the general idea of [a fundamental economic practice].” App. Br. 10; Reply Br. 3. We remain unpersuaded, and note that lack of preemption is a necessary clue for patent eligibility, but it is not sufficient for patent eligibility. As the McRO court explicitly recognized, “the absence of complete preemption does not demonstrate patent eligibility.” See McRO, 837 F.3d at 1315 (quoting Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015)). Furthermore, “[w]here a patent’s claims are deemed only to disclose patent ineligible subject matter” under the Alice/Mayo framework, “preemption concerns are fully addressed and made moot.” Ariosa, 788 F.3d at 1379. Because Appellant’s independent claims 1 and 11 are directed to a patent-ineligible abstract concept and do not recite an “inventive concept” or Appeal 2017-011553 Application 12/131,849 19 provide a solution to a technical problem under the second prong of the Alice analysis, we sustain the Examiner’s rejection of claims 1–9 and 11–18 under 35 U.S.C. § 101. 35 U.S.C. § 103(a) Rejection of Claims 1–9 and 11–18 Claims 1 and 11 recite, inter alia: a matching unit that matches the one or more pieces of virtual exhibition registration and virtual exhibition usage information about the user with a set of targeted content, wherein the targeted content is one of a document and a presentation; [and] a content delivery device for delivering the virtual exhibition having a smart booth area that displays the matched targeted content to the user within the smart booth area. In support of the obviousness rejection, the Examiner finds Chung teaches the claimed “matching unit” and “content delivery device.” Final Act. 7 (citing Chung 8:19–39; 10:1–16; 12:39–46; 20:50–57; 21:10–31). Appellant argues the combination of Franke, Chung, and Young do not teach or suggest these disputed limitations of claims 1 and 11. App. Br. 11–13; Reply Br. 3–4. In particular, Appellant argues Chung does not teach the claimed “matching unit” because: (1) Chung only teaches “a tracking method and system for an exhibition in which a tangible record is created for a visitor of the exhibition after the visit” and (2) Chung’s matching relates to application specific data and does not “match[] the one or more pieces of virtual exhibition registration and virtual exhibition usage information about the user with a set of targeted content” as recited in claims 1 and 11. App. Br. 12 (citing Chung 8:19–39; 10:1–16; 12:29–46). Appeal 2017-011553 Application 12/131,849 20 Appellant also argues Chung does not teach the claimed “content delivery device” because Chung’s LEADS-TRAKKER machine only displays “exhibitor products and services and the like” but such information is not “provided to the user based on the virtual exhibition registration and virtual exhibition usage information about a user” as recited in claims 1 and 11. App. Br. 13 (citing Chung 20:50–57; 21:10–30). In response, the Examiner takes the position that Chung’s correlation of relational check numbers corresponds to Appellant’s claimed “matching unit.” Ans. 19 (citing Chung 12:39–46; 16:49–54). We disagree with the Examiner. As correctly recognized by Appellant, Chung’s correlation between “the two check numbers” relates to whether “there is a high degree of certainty that the application specific data has not been changed and does not include errors” but does not relate to “match[ing] the one or more pieces of virtual exhibition registration and virtual exhibition usage information about the user with a set of targeted content, wherein the targeted content is one of a document and a presentation” as recited in claims 1 and 11. Reply Br. 3; see Chung 12:39– 46. Likewise, Chung’s LEADS-TRAKKER machine displays exhibitor products and services, but does not display a “virtual exhibition having a smart booth area that displays the matched targeted content to the user within the smart booth area” as recited in claims 1 and 11. Reply Br. 4 (citing Chung 20:50–57; 21:10–30). For these reasons, we are persuaded the Examiner erred. Accordingly, we do not sustain the Examiner’s obviousness rejections of claims 1 and 11 and their dependent claims 2–9 and 12–18. Appeal 2017-011553 Application 12/131,849 21 CONCLUSION On the record before us, we conclude Appellant has demonstrated the Examiner erred in rejecting claims 1–9 and 11–18 under 35 U.S.C. § 103(a). However, Appellant has not demonstrated the Examiner erred in rejecting claims 1–9 and 11–18 under 35 U.S.C. § 101. DECISION As such, we sustain the Examiner’s rejection of claims 1–9 and 11–18 under 35 U.S.C. § 101, but reverse the Examiner’s rejection of claims 1–9 and 11–18 under 35 U.S.C. § 103(a). Because we have affirmed at least one ground of rejection with respect to each claim on appeal, the Examiner’s decision is affirmed. See 37 C.F.R. § 41.50(a)(1). No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED Copy with citationCopy as parenthetical citation