CAMERON, Kirk Robert.

Patent Trials and Appeals Board

Dec 17, 2019

14286651 - (D) (P.T.A.B. Dec. 17, 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.
14/286,651 05/23/2014 Kirk Robert CAMERON KRC/0002US 9623
26290 7590 12/17/2019
PATTERSON & SHERIDAN, L.L.P.
24 Greenway Plaza, Suite 1600
Houston, TX 77046
EXAMINER
PACK, CONRAD R
ART UNIT PAPER NUMBER
2174
NOTIFICATION DATE DELIVERY MODE
12/17/2019 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):
PSDocketing@pattersonsheridan.com
jcardenas@pattersonsheridan.com
pair_eofficeaction@pattersonsheridan.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte KIRK ROBERT CAMERON

Appeal 2019-001278
Application 14/286,651
Technology Center 2100
____________

Before DONALD E. ADAMS, RICHARD M. LEBOVITZ, and
MICHAEL A. VALEK, Administrative Patent Judges.

LEBOVITZ, Administrative Patent Judge.

DECISION ON APPEAL
The Examiner rejected the claims under 35 U.S.C. § 101 as reciting
patent ineligible subject matter and under 35 U.S.C. § 103 as obvious.
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s
decision to reject the claims. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant did not identify the real party in interest in the
Appeal Brief (“Br.”).
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STATEMENT OF THE CASE
The claims stand finally rejected by the Examiner as follows:
1. Claims 1–4, 6–11, 13–18, and 20 under 35 U.S.C. § 101 because
the claimed invention is directed to a judicial exception to patent eligibility.
Final Act. 2.
2. Claims 1–3, 7–10, and 14–17 under 35 U.S.C. § 103 as obvious in
view of Rogatinsky (US 2002/0069119 A1, published Jun. 6, 2002)
(“Rogatinsky”), Hennum et al., US 2007/0277097 A1, published Nov. 29,
2007) (“Hennum”), and Ott et al. (US 2007/0078832 A1, published Apr. 5,
2007) (“Ott”). Final Act. 4.
3. Claims 4, 11, and 18 under 35 U.S.C. § 103 as obvious in view of
Rogatinsky, Hennum, and Ott, and in further view of Amell et al. (US
2007/0298404 A1, published Dec. 27, 2007) (“Amell”). Final Act. 17.
4. Claims 6, 13, and 20 under 35 U.S.C. § 103 as obvious in view of
Rogatinsky, Hennum, and Ott, and in further view of Halliday et al., (US
2007/0250791 A1, published Oct. 25, 2007) (“Halliday”). Final Act. 19.
Independent claim 1 is representative and is reproduced below
(bracketed numbering is added for reference to the limitations in the claims;
the numbered limitations are referenced throughout this decision):
1. A method for generating media based on input received from
a client device, comprising:
[1] receiving user profile information and a selection of a
performance mode from a client device;
[2] generating one or more prompts based on the selected
performance mode and on the user profile information, [2a]
wherein each of the one or more prompts corresponds to one of
a plurality of media items stored in a data store, and [2b]
wherein each media item is one of an image, a sound, a video,
or text stored in a first data store, and [2c] wherein each media
item is associated with at least one of a plurality of tags
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describing properties and moods for the respective media item,
[2d] wherein the tags are stored in a second data store;
[3] sending the one or more prompts to the client device;
[4] receiving responses to each of the one or more
prompts from the client device, wherein each of the responses
correspond to one or more of the media items stored in the first
data store;
[5] retrieving the plurality of tags from the second data
store;
[6] determining a user state metric from the received
responses, wherein the user state metric indicates a degree
associated with each of a plurality of user psychological-state
traits;
[7] identifying a correlation between the user state
metric, the plurality of tags, and the plurality of media items;
[8] determining, based on the identified correlation, a
technique for generating a collage of multimedia including at
least one of the media items; and
[9] generating the collage of multimedia based on the
determined technique.

§ 101 REJECTION
The Examiner rejected the claims as being directed to a judicially-
created exception to patent eligibility under 35 U.S.C. § 101.

Principles of Law
Under 35 U.S.C. § 101, an invention is patent-eligible if it claims a
“new and useful process, machine, manufacture, or composition of matter.”
However, not every discovery is eligible for patent protection. Diamond v.
Diehr, 450 U.S. 175, 185 (1981). “Excluded from such patent protection are
laws of nature, natural phenomena, and abstract ideas.” Id. The Supreme
Court articulated a two-step analysis to determine whether a claim falls
within an excluded category of invention. Alice Corp. Pty. Ltd. v. CLS Bank
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Int’l, 573 U.S. 208, 216 (2014); Mayo Collaborative Servs. v. Prometheus
Labs, Inc., 566 U.S. 66, 75–77 (2012).
In the first step, it is determined “whether the claims at issue are
directed to one of those patent-ineligible concepts.” Alice, 573 U.S. at 217.
If it is determined that the claims are directed to an ineligible concept, then
the second step of the two-part analysis is applied in which it is asked
“[w]hat else is there in the claims before us?” Id. The Court explained that
this step involves
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.’
Alice, 573 U.S. at 217–18 (citing from Mayo, 566 U.S. at 75–77).
Alice, relying on the analysis in Mayo of a claim directed to a law of
nature, stated that in the second part of the analysis, “the elements of each
claim both individually and ‘as an ordered combination’” must be
considered “to determine whether the additional elements ‘transform the
nature of the claim’ into a patent-eligible application.” Alice, 573 U.S. at
217.
The PTO has published revised guidance on the application of
35 U.S.C. § 101. USPTO’s January 7, 2019 Memorandum, 2019 Revised
Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50, 51–57 (2019)
(“Eligibility Guidance”). This guidance provides additional direction on
how to implement the two-part analysis of Mayo and Alice.
Step 2A, Prong One, of the Eligibility Guidance, looks at the specific
limitations in the claim to determine whether the claim recites a judicial
exception to patent eligibility. In Step 2A, Prong Two, the claims are
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examined to identify whether there are additional elements in the claims that
integrate the exception in a practical application, namely, is there a
“meaningful limit on the judicial exception, such that the claim is more than
a drafting effort designed to monopolize the judicial exception.” 84 Fed.
Reg. 54 (2. Prong Two).
If the claim recites a judicial exception that is not integrated into a
practical application, then as in the Mayo/Alice framework, Step 2B of the
Eligibility Guidance instructs us to determine whether there is a claimed
inventive concept to ensure that the claims define an invention that is
significantly more than the ineligible concept, itself. 84 Fed. Reg. 56. In
making this determination, we must consider whether there are specific
limitations or elements recited in the claim “that are not well-understood,
routine, conventional activity in the field, which is indicative that an
inventive concept may be present” or whether the claim “simply appends
well-understood, routine, conventional activities previously known to the
industry, specified at a high level of generality, to the judicial exception,
indicative that an inventive concept may not be present.” 84 Fed. Reg. 56
(footnote omitted).
With these guiding principles in mind, we proceed to determine
whether the claimed subject matter in this appeal is eligible for patent
protection under 35 U.S.C. § 101.

Discussion
Claim 11 recites that it is a “method.” Following the first step of the
Mayo analysis, we find that the claim therefore falls into one of the broad
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statutory categories of patent-eligible subject matter under 35 U.S.C. § 101.
We thus proceed to Step 2A, Prong One, of the 2019 Guidelines.

Step 2A, Prong One
In Step 2A, Prong One, of the Eligibility Guidance, the specific
limitations in the claim are examined to determine whether the claim recites
a judicial exception to patent eligibility, namely whether the claim recites an
abstract idea, law of nature, or natural phenomenon.
The Examiner found that the claims are directed to an abstract idea.
Final Act. 2. The Examiner found that the claims are similar to the concept
of “customizing media based on user feedback or characteristics in contexts
in which the activity may be viewed as performed by ‘head and hand’
(Gottschalk v. Benson, 409 U.S. 63 [1972], at 65).” Final Act 3. “Head and
hand” indicates that the claim recite a mental process, namely, “concepts
performed in the human mind,” which the 2019 Eligibility Guidance lists as
one of three groupings of abstract ideas. 84 Fed. Reg. 52.
Step [1] of the claim comprises a “receiving user profile information
and a selection of a performance mode from a client device.” A
“performance mode” is not expressly defined in the Specification. However,
the Specification describes “platform modes,” such as game, private,
companion, global, and replay modes which involve different objectives and
asking the user different types of questions. Spec. ¶¶ 33, 34, 44. For
example, the “game mode 301 foregoes the accuracy and integrity of the
data collected and required by modes that aid in personal growth or peer
communication to emphasize amusement and enjoyment of a given user
experience.” Spec. ¶ 34. The Appeal Brief referenced paragraphs 33 and 44
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of the Specification as support for the term “performance mode.” Appeal
Br. 4.
In step [2] of claim 1, “prompts” are generated “based on the selected
performance mode and on the user profile information.” The prompts are
defined in the claim as [2a] media items, such as [2b] an image, a sound, a
video, or text stored in a first data store. For example, the prompts can be
questions asked the user and tailored to a specific performance mode. Spec.
¶¶ 26, 44. The Specification discloses that the questions “may be
determined by the platform engine 106 or manually specified (e.g., by a
platform administrator, guest authors invited by platform administrators,
individual platform users, etc.).” Spec. ¶ 27. The media item is [2c] tagged
with a description of “properties and moods for the respective media item.”
The Specification discloses that the tags can be assigned by users. Spec.
¶ 48 (“One example of such a form may be a game embedded in the
platform in which the user is challenged to organize or tag groups of media
as rapidly as possible.”); Spec. ¶ 49 (“The interface 400 allows the item 405
to be tagged (e.g., by a platform administrator or outside service) with
metadata 410.”). Step [2] is therefore a mental process because it can be
“performed in the human mind” by a user. 84 Fed. Reg. 52.
The prompts are subsequently sent to a client device (step [3]),
received (step [4]), and the tags associated with the media item retrieved
from a database (step [5]). Although these steps are performed on a
computer and using a “client device,” asking questions, receiving responses,
and looking up the tags associated with each question are also mental
processes because they could be performed manually and in the human
mind.
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Step [6] of the claim comprises “determining a user state metric from
the received responses, wherein the user state metric indicates a degree
associated with each of a plurality of user psychological-state traits.” The
Appeal Brief references paragraph 49 as support for this step. Appeal Br. 4.
Paragraph 49 describes a configuration interface 401 shown in Figure 4
which provides “a sliding scale for each image attribute 415 (or state-trait),
where the each extreme of the scale represents an opposing characteristic
(e.g., ‘attractive’ with respect to ‘repulsive,[’] or ‘happy’ with respect to
‘sad.’” The example provided is of a banana. Spec. ¶ 49. The Specification
also discloses “psychological state-traits, such as mood polarities (e.g., anger
and peace).” Spec ¶ 19 (referenced as support for step [6] on page 4 of the
Appeal Brief). Thus, an image is presented to a user and the user can
respond to the image by indicating that the image is attractive, repulsive,
happy, or sad, or represents anger or peace, allowing the user’s “user state
metric” to be determined. We find that this step is a mental process that can
be performed in the mind because a human can evaluate the user’s response
to the image and determine the user’s psychological state from it. 84 Fed.
Reg. 52 (a mental process can be “an observation, evaluation, judgment,
opinion”).
Step [7] comprises “identifying a correlation between the user state
metric, the plurality of tags, and the plurality of media items.” The
Specification discloses that the correlations can be performed “for example,
through mathematical algorithms, artificial intelligence, heuristics, and other
data processing techniques or licensed (in part or in whole) from other
sources.” Spec. ¶ 28.
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Step [8] comprises “determining, based on the identified correlation, a
technique for generating a collage of multimedia including at least one of the
media items.” The Appeal Brief indicates that this step is described in
paragraphs 29–30 of the Specification. Appeal Br. 4. These passages of the
Specification describe a “collage generator” which makes the collage, and
describe attributes of the collage (e.g., Spec. ¶ 30: “the collage generator
component 215 also uses image blending techniques, such as additive,
subtractive, multiply, divide, soft light, hard light, pin light, lighten, darken,
hue, saturation and difference mixing and layering.”). However, no specific
technique is described for generating the collage. Instead, the disclosure
cited by Appellant as supporting step [8] is about processing the images to
be used in the collage. Because the images chosen for the collage can be
determined based on the judgement and evaluation of a human (a mental
process can be “an observation, evaluation, judgement, opinion” (84 Fed.
Reg. 52)), we consider this step of generating the collage to be a mental
process.
In the last step [9] of claim 1, a collage is generated. The step does
not require that the collage is displayed to the user, but, based the disclosure
in the Specification, we interpret the step broadly to include the display of
the collage (Spec. ¶ 31: “One example of an output result is a presentation
of a visible graphic display, an audible event, or both visible and audible
event.”).
We therefore conclude that the claim recites “Mental processes”
(steps [2]–[6], and [8]), which is grouping (c) of the three categories of
abstract ideas set forth in the Eligibility Guidelines. We therefore proceed to
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Step 2A, Prong 2 of the analysis to determine whether the abstract ideas are
integrated into a practical application.

Step 2A, Prong Two
Prong Two of Step 2A under the Eligibility Guidelines asks whether
there are additional elements that integrate the exception into a practical
application. As in the Mayo/Alice framework, we must look at the claim
elements individually and “as an ordered combination” to determine whether
the additional elements integrate the recited abstract idea into a practical
application. As discussed in the Eligibility Guidelines, “[a] claim that
integrates a judicial exception in a practical application will apply, rely on,
or use the judicial exception in a manner that places a meaningful limit on
the judicial exception, such that the claim is more than a drafting effort
designed to monopolize the judicial exception. 84 Fed. Reg. 54.
Integration into a practical application is evaluated by identifying
whether there are additional element individually, and in combination, which
go beyond the judicial exception. Id. at 54–55. As explained in the October
2019 Update to Subject Matter Eligibility2 “first the specification should be
evaluated to determine if the disclosure provides sufficient details such that
one of ordinary skill in the art would recognize the claimed invention as
providing an improvement.” Eligibility Update 12. According to the
Eligibility Update, the “specification need not explicitly set forth the

2 Available at
https://www.uspto.gov/sites/default/files/documents/peg_oct_2019_update.p
df (last accessed Nov. 15, 2019) (“Eligibility Update.”)
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improvement, but it must describe the invention such that the improvement
would be apparent to one of ordinary skill in the art.” Id.
The Specification in the “Background” section describes the “need for
personal self-expression.” Spec. ¶ 1. The Specification identifies
technologies exist which “allow individuals to find new avenues to express
themselves with friends and strangers,” but explains such technologies “have
yet to fully exploit other potential means of self-expression.” Spec. ¶ 2. The
“Summary” describes methods for generating collages based on prompts,
correlated responses, profile information, and media items, the same steps
performed in claim 1. Spec. ¶ 3. The steps are performed on a computer
(Spec. ¶¶ 4, 15, 20), but as explained above, the Specification does not
describe specifically how the steps are implemented or an improvement in
the way the steps are implemented. A judicial exception is not integrated
into a practical application when the additional element “merely uses a
computer as a tool to perform an abstract idea.” 84 Fed. Reg. 55. “Steps
that do nothing more than spell out what it means to ‘apply it on a computer’
cannot confer patent-eligibility. Alice, 134 S. Ct. at 2359.” Intellectual
Ventures I LLC v. Capital One Bank (USA), 792 F.3d 1363, 1370–71 (Fed.
Cir. 2015).
Appellant states that the method is “directed to non-abstract
techniques in the field of communication, specifically using a computer-
implemented system to generate multimedia collages using mood or emotion
based information of users of the system” which “generates multimedia
collages based on psychological states of the user at specific moment in
time, the determination of the psychological states in tum based on
responses of the user to provided prompts.” Appeal Br. 10. Appellant
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identifies steps [6]–[9] as the alleged improvement. Appeal Br. 11. Based
on these steps, Appellant analogizes the claims to McRO, Inc. v. Bandai
Namco Games Am. Inc., 837 F.3d 1299 (Fed. Cir. 2016). Appeal Br. 8, 12.
This argument does not persuade us that the Examiner erred in
rejecting the claims. In McRO, the court found that, while the McRO claims
involved the manipulation of data, e.g., generating morph weight sets to
animate lip and facial expressions of three dimensional characters, the
claimed “automation goes beyond merely ‘organizing [existing] information
into a new form’ or carrying out a fundamental economic practice.” McRO,
837 F.3d at 1315 (citation omitted). Instead, the court found that the
“claimed process uses a combined order of specific rules that renders
information into a specific format that is then used and applied to create
desired results: a sequence of synchronized, animated characters.” Id.
McRO found that the recited rules “are limiting in that they define morph
weight sets as a function of the timing of phoneme sub-sequences.” McRO,
837 F.3d at 1313. The claims were found to be directed to a “technological
improvement over the existing, manual 3-D animation techniques,” McRO,
837 F.3d at 1316.
In finding the claim patent-eligible, McRO noted that the “abstract
idea exception has been applied to prevent patenting of claims that abstractly
cover results where ‘it matters not by what process or machinery the result is
accomplished.’ [O’Reilly v. Morse, 56 U.S. (15 How.) 62, 113,]; see also
Mayo, 132 S.Ct. at 1301.” McRO, 837 F.3d at 1314. McRO stated that
therefore, a court must “look to whether the claims in these patents focus on
a specific means or method that improves the relevant technology or are
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instead directed to a result or effect that itself is the abstract idea and merely
invoke generic processes and machinery.” McRO, 837 F.3d at 1314.
Here, the claimed steps [6]–[8] for generating the collage are not
limited to a specific rules of implementation as they were in McRO, but
rather are stated in terms of the result or effect which is desired. For
example, step [6] in which the user metric is determined, does not recite with
any specificity how the result is achieved. Steps [7] and [8] of identifying
the correlation and determining the collage, respectively, also only state the
desired result and not the implementation of it, as did the claim in McRO.
The collage generated in step [9] is a display of existing information
(text, pictures, audio) in a new form, e.g., a new arrangement of existing
images. The computer simply automates the process of creating the collage.
In contrast, in McRO, the improvement was not just automating a process
that had previously been done manually, but, as explained in SAP Am., Inc.
v. Investpic, LLC, 898 F.3d 1161, 1167 (Fed. Cir. 2018), an improvement in
“how the physical display operated (to produce better quality images).”
Preemption is another issue that must be considered. In McRO, the
court held that the “limitations in claim 1 prevent preemption of all
processes for achieving automated lip-synchronization of 3–D characters.”
McRO, 837 F.3d at 1315. Furthermore, the court found that “[t]he specific
structure of the claimed rules would prevent broad preemption of all rules-
based means of automating lip synchronization.” Id. Steps [6]–[8] are
recited in such general terms – [6] determining a user metric from the
received responses, [7] identifying a correlation between the metric, tags,
and media item, and [8] determining the collage – that making a collage
based on such steps poses a risk that the abstract idea embodied in at least
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steps [6] and [8] would be preempted. The technological improvement
asserted by Appellant, comprising the steps of determining the user’s
psychological state based on responses to a media item which has been
tagged with properties and moods, is recited in such broad terms that it is
“itself is the abstract idea,” differing only in being accomplished on a
computer. The correlation of step [7] is not described by Appellant nor the
Specification (at ¶ 28) as a technological improvement.
As a result of carrying out steps [6]–[8], a collage is generated. As
discussed in Step 2A, Prong One, the claim is not limited to displaying the
collage. Nonetheless, even if it were, Appellant has not established that this
additional element is anything more than insignificant extra-solution
activity. 84 Fed. Reg. 55. Unlike in McRO where a specific “technical
effect” was achieved by carrying out the specific rules (Solutran, Inc. v.
Elavon, Inc., 931 F.3d 1161, 1167 (Fed. Cir. 2019)), as explained above, the
collaged generated by the steps is just an output of media from an existing
media library that is not limited by any particular rules or to any particular
format. Spec. ¶ 31.
Appellant also asserts that the “challenge of creating multimedia
collages is addressed by providing specific technical components” which it
lists as steps [1]–[7] of claim 1. We have already addressed steps [6] and
[7]. Given their broadest reasonable interpretation, steps [2]–[5] comprise
[2] creating questions, [3] asking them, and [4] receiving the responses and
[5] associated tags. These steps, like the others noted above, recite a
processes that can be performed mentally. The improvement asserted by
Appellant is therefore to the abstract idea, itself. “The Court in Alice made
clear that a claim directed to an abstract idea does not move into section 101
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eligibility territory by “merely requir[ing] generic computer
implementation.” Alice, 134 S. Ct. at 2357.” buySAFE, Inc. v. Google, Inc.,
765 F.3d 1350. 1354 (Fed. Cir. 2014).
Moreover, these steps do not describe an improvement in a specific
technology as they did in McRO, Enfish, LLC v. Microsoft Corporation, 822
F.3d 1327 (Fed. Cir. 2016) (a specific type of data structure designed to
improve the way a computer stores and retrieves data in memory), Core
Wireless Licensing S.A.R.L v. LG Electronics, 880 F.3d 1356, 1362–63 (Fed.
Cir. 2018) (“an improved interface for computing devices” requiring a
“specific manner of displaying a limited set of information to the user, rather
than using conventional user interface methods to display a generic index on
a computer”), and Finjan, Inc. v. Blue Coat Sys., 879 F.3d 1299, 1305 (Fed.
Cir. 2018) (“behavior-based” approach to computer virus scanning was
found eligible for a patent under 35 U.S.C. 101 because the claimed method
employed “a new kind of file that enables a computer security system to do
things it could not do before.” The steps do not improve how a computer
functions, do not describe an improved computer interface, and do enable
something on a computer that improved the computer function.
Finjan specifically distinguished claims found to be patent ineligible
when “there was nothing in the claim ‘directed to how to implement [the
idea]’” nor to “‘a particular way of programming or designing the
software.’” Finjan, 879 F.3d at 1305 (Fed. Cir. 2018). The rejected claims
are deficient for the same reason because the steps in rejected claim 1 are
claimed generically as a series of desired results without reciting any
particular programming or implementation to achieve those results.
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Appellant further argues that the claims are eligible for a patent for the
same reason as in Bascom Global Internet Services, Inc. v. AT&T Mobility
LLC, 827 F.3d 1341, 1350–51 (Fed. Cir. 2016). In Bascom, the court held
the claims eligible for a patent because:
The claims do not merely recite the abstract idea of
filtering content along with the requirement to perform it on the
Internet, or to perform it on a set of generic computer
components. Such claims would not contain an inventive
concept. . . . [Rather] the patent describes how its particular
arrangement of elements is a technical improvement over prior
art ways of filtering such content.”
Id.
The rejected claims, as explained above, do not recite how the abstract
ideas are accomplished. For example, step [6] determines a “user state
metric” based “user psychological-state traits,” but does not recite the
programming as to how such step is accomplished. Likewise, step [7]
recites “identifying a correlation,” but does not describe how to perform the
correlation. Thus, a technological improvement – as in Bascom – is not
claimed.
The claim does not require a specialized machine or manufacture, and
does not transform an article to a different state. 84 Fed. Reg. 55; BASCOM
Glob. Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341, 1348
(Fed. Cir. 2016) (“An abstract idea on ‘an Internet computer network’ or on
a generic computer is still an abstract idea”). The claim, as a whole,
describes how to generally apply or execute the recited abstract ideas as a
“computer-implemented method.” In other words, the claim merely links
the recited abstract idea generally to a computer environment, and thus does
no more than represent a drafting effort to monopolize the abstract idea in a
computer implementation. 84 Fed Reg. 55.
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For the foregoing reason, we conclude that the identified judicial
exceptions of claim 9 are not integrated into a practical application.
Step 2B
Because we determined that the judicial exception is not integrated
into a practical application, we proceed to Step 2B of the 2019 Guidelines,
which asks whether there is an inventive concept. In making this Step 2B
determination, we must consider whether there are specific limitations or
elements recited in the claim “that are not well-understood, routine,
conventional activity in the field, which is indicative that an inventive
concept may be present” or whether the claim “simply appends well-
understood, routine, conventional activities previously known to the
industry, specified at a high level of generality, to the judicial exception,
indicative that an inventive concept may not be present.” 84 Fed. Reg. 56
(footnote omitted). We must also consider whether the combination of steps
perform “in an unconventional way and therefore include an ‘inventive
step,’ rendering the claim eligible at Step 2B.” Id.
Appellant states that the “claims recite technical elements including a
client device, prompts, a data store of media items, a data store of media
tags, responses to prompts, a user state metric and a correlation arranged in a
particular manner to generate a collage of multimedia. The client device and
the two data stores may represent physical computing devices or computing
appliances connected via a network.” Appeal Br. 14. Appellant argues that,
like in Bascom, the claims “present components in a non-conventional and
non-generic arrangement.” Appeal Br. 15. Appellant contends:
For example, receiving a response to a prompt associated with a
tag taken from a data store from a client device and using that
response to determine a user state metric and identifying a
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correlation between the user state metric and a media item from
a second data store is a non-conventional and non-generic
arrangement of a user device, prompts, responses, data stores
and user state metrics, despite the asserted generic nature of
those pieces.
Id.
Appellant has not, however, identified how the data stores (limitations
[2] and [4]) and the client device (limitations [1] and [3]) are arranged in
such a way that they constitute a technical improvement in generating a
collage. The claims do not recite a specific arrangement or connectivity of
these elements that accomplish the step of [9] generating a collage.
The computer elements are described generically. Spec. ¶ 4. The
Specification discloses that a device “may include mobile phones, tablets,
wearable devices, desktop computers, laptop computers, and the like,” which
appear to be conventional and known device. Spec. ¶ 15. Appellant has not
guided us to anything in the Specification that describes unconventional
devices, architecture, or software programming that are employed in the
claim to achieve the recited results. Automation of mental processes does
not reflect “an improvement to other technology or technical field.” 84 Fed
Reg. 55; see also Credit Acceptance Corp. v. Westlake Servs., 859 F.3d
1044, 1055 (Fed. Cir. 2017) (indicating “that mere automation of manual
processes using generic computers does not constitute a patentable
improvement in computer technology”).
Consequently, we with the Examiner that the claims do not recite an
inventive concept.
Summary
For the foregoing reasons, the rejection of claims 1–4, 6–11, 13–18,
and 20 as ineligible for a patent under 35 U.S.C. § 101 is affirmed.
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§ 103 REJECTIONS BASED ON ROGATINSKY, HENNUN, AND OTT
The Examiner found that Rogatinsky describes substantially all the
steps of the claimed method, but not the performance mode recited in steps
[1] and [2]. Final Act. 4–12. The Examiner found that Hennum describes a
performance mode in the same field of endeavor as Rogatinsky and the
claims, and that it would have been obvious to one of ordinary skill in the art
to use Hennum’s performance mode in Rogatinsky’s method. Final Act. 12–
13. The Examiner further cited Ott for teaching retrieving tags from a
second data store as in step [5] of claim 1. Final Act. 15.
Appellant contends that Rogatinsky “does not teach, show, or suggest
‘[6] determining a user state metric from the received responses, wherein the
user state metric indicates a degree associated with each of a plurality of user
psychological-state traits,’ as recited in independent claim 1.” Appeal Br.
19. Appellant argues that Rogatinsky discloses “consumer information”
which “constitutes consumer traits that are immutable, or at least highly
resistant to change, e.g., a ‘type of personality,’ demographic data, lifestyles,
color preferences, etc.” Appeal Br. 20. Appellant states that the “consumer
information” of Rogatinsky “is distinct in comparison to the ‘user
psychological-state traits’ of the claims.” Id. Appellant argues that
Rogatinsky “is limited to certain unchanging characteristics of a person,
such as interest in activities” and does not disclose the claimed “user
psychological-state traits.” Id.

Discussion
Rogatinsky discloses receiving information from a consumer, such as
responses to questions, and then analyzing the information to determine
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what marketing information appeals to that individual. Rogatinsky ¶¶ 24–
27. These steps generally correspond to steps [2]–[6] of claim 1. Final Act.
8. The “collage” generated in Rogatinsky (step [9] of claim 1) is marketing
media. As explained by Rogatinsky:
As a computer system, an embodiment of the invention
generally includes a database of statistical consumer marketing
data and a processor unit. The processor unit operates to
receive information from a consumer interacting with the
system (preferably through a series of questions and
answers [compare steps [2]–[4] of claim 1] via a global
communication network/Internet application or through
analysis of the consumer's online activity, such as purchase
transactions, click-stream history, and the like) and to analyze
the received information in conjunction with the statistical
information (e.g., consumer habits, marketing trends,
predictions, styles, preferences) to generate marketing media
with a customized “look and feel” which appeals to that
individual [compare steps [6]–[9] of claim 1]. This customized
“look and feel” is found in the chosen design elements, physical
characteristics and manner of presentation of text and images of
the media, including but not limited to fonts, colors,
text/image/graphics and ratio thereof, paper type, illustrations,
layout, and other visual/tactile characteristics of the media. The
marketing media may include print or electronic media.
Rogatinsky ¶ 11 (emphasis added).
The Examiner cited paragraphs 27–32 of Rogatinsky as teaching “user
psychological-traits” as recited in step [6] of claim 1. The following
disclosure from Rogatinsky is pertinent:
This raw data (consumer information) is analyzed and
correlated with stored statistical information stored (e.g., in
separate databases). The system preferably utilizes various
algorithms, real-time learning and inference technology,
behavioral and personality profiling, pattern recognition

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learning algorithms, neural networks, and the like in order to
correlate statistical information with user responses.
Rogatinsky ¶ 27 (emphasis added).

In addition to applying the information about the specifications
that will be most effective for media, based on the answered
questions, the present invention will analyze and predict in
real-time the behavior and what type of personality the
consumer has and, based on its conclusion, will recommend
the type of images and above criteria to be utilized for the look
and feel of the media.
Rogatinsky ¶ 30 (emphasis added).

For example, for a financial or investment company, its web
site(s) will gather information about its users. A certain user's
answers will indicate that the user is, for example, willing to
assume greater risk. Based on this information, the present
invention determine’s [sic, determines] the user's lifestyle by
analyzing answers to specifically directed queries and online
activity and processing this information in conjunction with
stored statistical information based on predetermined
algorithms. In this example, the invention determines that this
type of user should receive a brochure which reflects his fast-
paced, risk taking, lifestyle, i.e., the style, format and
presentation of the brochure (images, font, colors, and the like)
are manipulated to best appeal to that user's lifestyle. To
achieve this, for example, the images used in the brochure
will be daring and exciting as opposed to being boring and
conservative.
Rogatinsky ¶ 32 (emphasis added).

In a preferred embodiment, the image bank for a certain
industry will have categories for its photos, for example,
exciting, conservative, undecided, inexperienced investor.
Rogatinsky ¶ 33 (emphasis added).
Thus, Rogatinsky teaches performing “behavioral and personality
profiling” on the received information (Rogatinsky ¶ 27), analyzing behavior
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and personality type (Rogatinsky ¶ 30), and identifying “fast-paced, risk
taking, lifestyle,” and using images that are “daring and exciting as opposed
to being boring and conservative” (Rogatinsky ¶¶ 32, 33). The issue raised
by Appellant is whether this disclosure of behavioral and personality
profiling to determine images to present to a user is a [6] “user state metric
. . . associated with . . . user psychological-state traits.”
We begin with claim interpretation. The Specification does not
provide a definition of “user psychological-traits” as recited in step [6] of
claim 1. During patent examination proceedings, claim terms are given “the
broadest reasonable meaning . . . in their ordinary usage as they would be
understood by one of ordinary skill in the art, taking into account whatever
enlightenment by way of definitions or otherwise that may be afforded by
the written description contained in the applicant’s specification.” In re
Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997). Because there is no
definition in the Specification, we turn to a general purpose dictionary for
guidance. The term “psychological” is derived from “psychology” which
means “the mental or behavioral characteristics of an individual.”3 Thus,
we understand “user psychological-traits” to mean traits associated with
the mental or behavioral characteristics of the user. This interpretation is
consistent with the Examiner’s finding that a psychological state or trait of
a user “encompasses any aspect of a user related to a user’s mind such as in
the form of user’s awareness, feeling, or motivation” and that such traits
may be of any level of mutability/changeability and still be considered ‘user
psychological-state traits’ under the present claim language.” Ans. 13–14.

3 https://www.merriam-webster.com/dictionary/psychology (last accessed
Dec. 6, 2019).
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This interpretation is also consistent with the only example in the
Specification of user state trait being a feeling of anger or peace (Spec. ¶ 19:
“mood polarities (e.g., anger and peace)”).
Because Rogatinsky utilizes the responses received from a user to
perform “behavioral and personality profiling” and analyzes behavior and
personality type (Rogatinsky ¶¶ 27, 30), which would result in discerning
“the mental or behavioral characteristics of an individual,” we find that the
Examiner had a factual basis to determine that step [6] of the claim is met by
Rogatinsky. Specifically, Rogatinsky’s determinations of a user’s
preference for “risk taking,” “exciting,” “daring,” “boring,” and
“conservative” (Rogatinsky ¶¶ 32, 33) are mental and behavioral
characteristics and therefore correspond to the claimed user psychological-
state traits. In other words, a user can have the psychological trait of looking
for excitement or risks, or being a daring or conservative person.
Appellant’s attempt to distinguish Rogatinsky is based on the
argument that Rogatinsky’s profiling is “limited to certain unchanging
characteristics of a person.” Appeal Br. 20. However, Appellant has not
provided a definition of “user psychological-state traits” that would limit it
to unchanging characteristics, rather than relating to mental or behavioral
characteristics as the term “psychological-state traits” would be reasonably
interpreted by one of ordinary skill in the art.
Appellant’s reference to “unchanging” is apparently based on the
disclosure in step [2] of tags for “moods,” where mood would be understood
to mean “a state or quality of feeling at a particular time.”4 However, the
“mood” is tag for an item and while it may be categorized as “user

4 https://www.dictionary.com/browse/mood (last accessed Nov. 29, 2019).
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psychological-state traits,” the traits are not limited to a mood at a specific
time. As the Examiner explained, “Appellant is improperly attempting to
read limitations into the claim language.” Ans. 13.
Moreover, Appellant has not provided a persuasive reason as to why
characteristics such as being exciting, daring, boring, or conservative
(Rogatinsky ¶¶ 32, 33) cannot be considered indicative of the user’s mood at
the time Rogatinsky elicited responses from the user (Rogatinsky ¶ 11) (i.e.,
the user is in a daring mood today).
With respect to the additionally cited publications – Hennum, Ott,
Amell, Halliday – Appellant argues that they these publications do not
describe the term “psychological-state traits” and remedy the deficiencies of
Rogatinsky. Appeal Br. 20, 21, 23, and 25. However, the Examiner did not
cite these publications to meet this limitation of the claims. Final Act. 14,
17–18, 20. Thus, we find this argument unavailing.
In sum, for the foregoing reasons, we affirm the obviousness rejection
of claim 1. Dependent claims 2–4, 6–11, 13–18, and 20 were not separately
argued and therefore fall with claim 1. 37 C.F.R. § 41.37(c)(1)(iv). Thus,
all of the obviousness rejections are affirmed.

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CONCLUSION
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–4, 6–11,
13–18, 20
101 Eligibility 1–4, 6–11,
13–18, 20

1–3, 7–10,
14–17
103 Rogatinsky,
Hennum, Ott
1–3, 7–10,
14–17

4, 11, 18 103 Rogatinsky,
Hennum, Ott,
Amell
4, 11, 18
6, 13, 20 103 Rogatinsky,
Hennum, Ott,
Halliday
6, 13, 20
Overall
Outcome
1–4, 6–11,
13–18, 20

TIME PERIOD
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