CBS INTERACTIVE INC.

Patent Trials and Appeals Board

Jun 30, 2021

2021000606 (P.T.A.B. Jun. 30, 2021)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
15/864,034 01/08/2018 Cristen Carvis 10-403-US-C 1018
128144 7590 06/30/2021
Rimon PC
420 West Main Street
Suite 101B
Boise, ID 83702-7358
EXAMINER
REINHARDT, RICHARD G
ART UNIT PAPER NUMBER
3682
NOTIFICATION DATE DELIVERY MODE
06/30/2021 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
docketing.rimonlaw@clarivate.com
eofficeaction@appcoll.com
patentdocketing@rimonlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CRISTEN CARVIS and CLIFFORD LYON
Appeal 2021-000606
Application 15/864,034
Technology Center 3600

Before JOHN A. EVANS, JOYCE CRAIG, AND AARON W. MOORE,
Administrative Patent Judges.

CRAIG, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 21–38. See Final Act. 1. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies the real party in interest as CBS Interactive Inc.
Appeal Br. 2.
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CLAIMED SUBJECT MATTER
According to Appellant, the claims are directed to “heuristically
addressing interest in a set of assets by evaluating the assets in turn and
determining a ‘guide’ asset for recommendation.” Spec. ¶ 12. Claim 21,
reproduced below, is illustrative of the claimed subject matter:
21. A method providing recommendations to a user by one or
more recommending computing devices based on user activity in
a distributed network environment, the method comprising:
receiving, from multiple distributed computing devices
connected to the distributed network environment, multiple sets
of user page view information, each set of page view information
including an identification of the user viewing a page and an
identification of the page viewed by the user;
storing sets of user page information for each user in
association with that user;
in response to a request from a user device for information
from a distributed computing device, the information relating to
an asset, determining, by at least one of the one or more
recommending computing devices, a set of recently viewed
assets based on one of the sets of user page information
corresponding to the user;
determining, by at least on[e] of the one or more
recommending computing devices, a set of neighbor assets
associated with the recently viewed assets, wherein each
neighbor asset is an asset which is associated with a
corresponding recently viewed asset;
generating, by at least one of the one or more
recommending computing devices, a plurality of subsets from
the set recently viewed assets, wherein each subset in the
plurality of subsets includes a plurality of recently viewed assets
and has a corresponding neighbor subset comprising a plurality
of neighbor assets associated with the plurality of recently
viewed assets in the subset;
determining, by at least one of the one or more
recommending computing devices, a score for each subset in the
plurality of subsets to generate a plurality of scores, wherein the
score for each subset is based on a strength of the association
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between the plurality of recently viewed assets in that subset and
the plurality of neighbor assets in the corresponding neighbor
subset;
determining, by at least one of the one or more
recommending computing devices, the subset with the highest
score;
generating, by at least one of the one or more
recommending computing devices, one or more asset
recommendations from the plurality of neighbor assets in the
corresponding neighbor subset of the subset with the highest
score; and
transmitting, by at least one of the one or more
recommending computing devices, the one or more asset
recommendations to the user device.
Appeal Br. 20–21 (Claims App.).
REJECTION
Claims 21–38 stand rejected under 35 U.S.C. § 101 because the
claimed invention is directed to a judicial exception without significantly
more. Final Act. 2.
ANALYSIS
Appellant argues the Examiner’s rejection of claim 21 under
35 U.S.C. § 101 as directed to patent-ineligible subject matter is in error. To
the extent Appellant has not advanced separate, substantive arguments for
particular claims, or other issues, such arguments are waived. 37 C.F.R.
§ 41.37(c)(1)(iv) (2020). Appellant argues claims 21–38 as a group. Appeal
Br. 6. Given our discretion under 37 C.F.R. § 41.37(c)(1)(iv), we decide the
§ 101 rejection of claims 21–38 based on representative claim 21.
Principles of Law
An invention is patent-eligible if it claims a “new and useful process,
machine, manufacture, or composition of matter.” 35 U.S.C. § 101.
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However, the U.S. Supreme Court has long interpreted 35 U.S.C. § 101 to
include implicit exceptions: “[l]aws of nature, natural phenomena, and
abstract 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 Court’s two-part 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.”).
If the claim is “directed to” an abstract idea, we turn to the second part
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 (quotation marks 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.
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In January 2019, the U.S. Patent and Trademark Office (“USPTO”)
published revised guidance on the application of § 101.2, 3
Under MPEP § 2106, 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) (“Step 2A, Prong One”); and
(2) additional elements that integrate the judicial exception into a
practical application (“Step 2A, Prong Two”).4
MPEP § 2106.04(a) and (d).

2 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50
(Jan. 7, 2019) (“2019 Revised Guidance”). In response to received public
comments, the Office issued further guidance on October 17, 2019,
clarifying the 2019 Revised Guidance. USPTO, October 2019 Update:
Subject Matter Eligibility (the “October 2019 Update”). “All USPTO
personnel are, as a matter of internal agency management, expected to
follow the guidance.” 84 Fed. Reg. at 51; see also October 2019 Update at 1.
3 The Manual of Patent Examining Procedure (“MPEP”) now incorporates
this revised guidance and subsequent updates at Section 2106 (9th ed., Rev.
10.2019, rev. June 2020). All references to the MPEP are to the Ninth
Edition, Revision 10.2019 (Last Revised June 2020), unless otherwise
indicated.
4 “Examiners evaluate integration into a practical application by: (1)
identifying whether there are any additional elements recited in the claim
beyond the judicial exception(s); and (2) evaluating those additional
elements individually and in combination to determine whether” the claim as
a whole “integrate[s] the exception into a practical application.” MPEP
§ 2106.04(d)(II).
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Only if a claim (1) recites a judicial exception and (2) does not
integrate that exception into a practical application,5 do we then look, under
Step 2B, to whether the claim:
(3) adds a specific limitation beyond the judicial exception that is not
“well-understood, routine, conventional activity” in the field; 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.6
MPEP § 2106.05(d).
Step 1
Claim 21, as a method claim, falls within the process category of
§ 101. See MPEP §§ 2106.03, 2106.06.
Step 2A(i): Does the Claim Recite a Judicial Exception?
The Examiner determined that claim 21 recites abstract mental
processes. Final Act. 3. The Examiner identified all of the recited steps as
part of the recited abstract idea. Id.
Consistent with Appellant’s description of the claims, we find that the
following limitations describe steps that can be performed in the human
mind or practicably with pen and paper, and which are fairly characterized
as mental processes, a category of abstract ideas:

5 This corresponds to Alice part one where it is determined whether the claim
is “directed to” an abstract idea. See Alice, 573 U.S. at 219. If a claim is “not
directed to an abstract idea under step one of the Alice framework, we do not
need to proceed to step two.” Enfish, LLC v. Microsoft Corp., 822 F.3d
1327, 1339 (Fed. Cir. 2016).
6 This corresponds to Alice part two where it is determined whether the
claim contains an “‘inventive concept’ sufficient to ‘transform’ the claimed
abstract idea into a patent-eligible application.” Alice, 573 U.S. at 221.
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in response to a request from a user device for information
from a distributed computing device, the information relating to
an asset, determining . . . a set of recently viewed assets based on
one of the sets of user page information corresponding to the
user;
determining . . . a set of neighbor assets associated with
the recently viewed assets, wherein each neighbor asset is an
asset which is associated with a corresponding recently viewed
asset;
generating . . . a plurality of subsets from the set recently
viewed assets, wherein each subset in the plurality of subsets
includes a plurality of recently viewed assets and has a
corresponding neighbor subset comprising a plurality of
neighbor assets associated with the plurality of recently viewed
assets in the subset;
determining . . . a score for each subset in the plurality of
subsets to generate a plurality of scores, wherein the score for
each subset is based on a strength of the association between the
plurality of recently viewed assets in that subset and the plurality
of neighbor assets in the corresponding neighbor subset;
determining . . . the subset with the highest score;
generating . . . one or more asset recommendations from
the plurality of neighbor assets in the corresponding neighbor
subset of the subset with the highest score.
Each of the above tasks can be performed by the human mind or with pen
and paper. The 2019 Revised Guidance explains that “mental processes”
include acts that people can perform in their minds or using pen and paper,
even if the claim recites that a generic computer component performs the
acts. See MPEP § 2106.04(a)(2)(III)(C); see also Intellectual Ventures I LLC
v. Symantec Corp., 838 F.3d 1307, 1318 (Fed. Cir. 2016) (“[W]ith the
exception of generic computer-implemented steps, there is nothing in the
claims themselves that foreclose them from being performed by a human,
mentally or with pen and paper.”), quoted in MPEP § 2106.04(a)(2)(III).
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Appellant argues7 “the claims require the manipulation of computer
data structures and the output of a modified computer data structure, and
thus are not accomplished in the human mind.” Appeal Br. 7 (citing Apple,
Inc. v. Mirror World Techs., LLC, CBM2016-0019 (PTAB May 26, 2016)
and Research Corp. Techs. v. Microsoft Corp., 627 F.3d 859, 868 (Fed. Cir.
2010)). Appellant further argues in a conclusory manner that “[t]he claims
are performed by a computer processor(s) and are not observations,
evaluation, judgement or opinion.” Id. at 8.
We are not persuaded by Appellant’s arguments. Appellant has not
adequately explained how claim 21 requires “the manipulation of computer
data structures and the output of a modified computer data structure.” See
Appeal Br. 7. Claim 21 recites determining sets and subsets of recently
viewed and neighbor assets, determining a score for each subset,
determining the subset with the highest score, and generating an asset
recommendation based on the subset with the highest score. Neither the
Apple case nor the Microsoft case, relied on by Appellant, was decided
under the 2019 Revised Guidance, which sets forth an approach to
identifying abstract ideas that distills the relevant case law into groupings of
abstract ideas, and no longer requires comparing claims to those in previous
cases. See MPEP § 2106.04(a). With regard to Appellant’s argument that the

7 Appellant also argues that the Examiner erred in determining that the
claims are directed to “certain methods of organizing human activity.” See
Appeal Br. 6–8. The analysis in the Final Office Action, however, pertains
specifically to “mental processes,” and does not address or identify “certain
methods of organizing activity.” See Final Act. 3. Thus, we decline at this
time to address Appellant’s arguments directed to the Examiner’s alleged
analysis regarding “certain methods of organizing human activity,” as that
was not the basis for the Examiner’s rejection of claims 21–38, before us on
appeal.
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identified steps in claim 21 cannot be performed in the human mind (Appeal
Br. 3), the Apple court found that the Patent Owner demonstrated that the
steps of the claims at issue specifically call for operations that must be
performed by a computer. Appellant has made no such showing here.
Moreover, the Apple decision, as well as the other Board decisions
Appellant cites (see Appeal Br. 13–14), are non-precedential decisions of the
Board and, thus, are not binding on the USPTO, including both the PTAB
and examiners. Routine PTAB decisions are fact-specific to the case being
decided and thus are non-precedential. See PTAB Standard Operating
Procedure 2, Rev. 10. Accordingly, the cited Board decisions are not binding
on the Examiner or this panel in this case.
Because we agree with the Examiner that claim 21 recites an abstract
idea, we proceed to Prong Two of Step 2A to determine if the idea is
integrated into a practical application, in which case the claim as a whole
would not be “directed to” merely an abstract idea.
Step 2A(ii): Judicial Exception Integrated into a Practical Application?
We next determine whether the recited judicial exception is integrated
into a practical application of that exception by: (a) identifying whether
there are any additional elements recited in the claim beyond the judicial
exception(s); and (b) evaluating those additional elements individually and
in combination to determine whether they integrate the exception into a
practical application.
We use the term “additional elements” for claim features, limitations,
or steps that the claim recites beyond the identified judicial exception. In
claim 21, the additional elements include the limitations “computing
devices,” “recommending computing devices,” a “distributed network
environment,” and a “user device.” See Final Act. 4. We also identify the
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“receiving,” “storing,” and “transmitting” steps as beyond the abstract
mental processes.
To integrate the exception into a practical application, the additional
claim elements must, for example, improve the functioning of a computer or
any other technology or technical field (see MPEP § 2106.05(a)), apply the
judicial exception with a particular machine (see MPEP § 2106.05(b)), affect
a transformation or reduction of a particular article to a different state or
thing (see MPEP § 2106.05(c)), or apply or use the judicial exception in
some other meaningful way beyond generally linking the use of the judicial
exception to a particular technological environment (see MPEP
§ 2106.05(e)).
The Examiner determined that none of the additional limitations is
sufficient to integrate the judicial exception into a practical application
because the additional computer elements “do no more than just generally
link the user of a judicial exception to a particular technological environment
or field of use.” Final Act. 4. Moreover, the “receiving” and “storing” steps
amount to mere data gathering, which is insignificant extra-solution activity
that is insufficient to integrate the abstract idea into a practical application.
See MPEP § 2106.05(g). Similarly, the “transmitting” step is insignificant
extra-solution activity. See id.
Appellant argues “the claims address a pragmatic and technical issue
and are integrated into the practical application of providing access to
content in a more flexible manner.” Appeal Br. 8. In particular, Appellant
argues that “the rejected claims enhance a database to solve a problem.” Id.
at 10 (citing Amdocs (Israel) Lid. v. Openet Telecom, Inc., 841 F.3d 1288
(Fed. Cir. 2016)). Appellant submits that “[i]n Amdocs, the Federal Circuit
held that claims directed to a series of operations enhancing data in a
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computer database to solve an accounting problem were patent eligible.” Id.
Appellant further argues that claim 21 is like the claims in Amdocs because
the determining and generating steps, as recited in claim 21, “enhance data
in a manner that necessarily requires that these generic components operate
in an unconventional manner to achieve an improvement in computer
functionality.” Id. at 11.
Appellant’s arguments that analogize claim 21 on appeal to the claims
considered by the court in Amdocs are unpersuasive. See Appeal Br. 10.
Appellant does not establish that the current claims recite an improvement to
any technology. Rather, Appellant asserts that the invention solves the
problem of producing the best possible recommendation(s) at any given
time. Appeal Br. 9; Spec. ¶ 12. This is not a technology problem akin to the
problem in Amdocs of “network bottlenecks” and “stored information in one
location, which made it difficult to keep up with massive record flows from
the network devices and which required huge databases.” Amdocs, 841 F.3d
at 1292. Rather, the problem identified by Appellant relates to the analysis
of data to provide a recommendation to a user. Nothing in Appellant’s claim
provides benefits based upon a “distributed, remote enhancement that
produce[s] an unconventional result—reduced data flows and the possibility
of smaller databases,” as was found by the court in Amdocs. Id. at 1302.
Appellant next compares claim 21 to the claims in DDR Holdings,
LLC v. Hotels.com, L.P., 773 F.3d 1245, 1257 (Fed. Cir. 2014). Appeal Br.
11. Appellant argues “[t]he present system is directed to overcoming
inefficiencies associated with making product recommendations based on
user activity on a computer network” and “[t]he claims are necessarily
rooted in computer technology in order to overcome these inefficiencies.”
Id. at 11–12.
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We are not persuaded by Appellant’s arguments. The Federal Circuit
found DDR’s claims are patent-eligible under section 101 because the
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 Holdings, 773 F.3d at 1257. We note that, although the
Federal Circuit in DDR Holdings held claims “necessarily rooted in
computer technology” to be patent eligible, the court issued a relevant
warning:
We caution, however, that not all claims purporting to address
Internet-centric challenges are eligible for patent. For example,
in our recently-decided Ultramercial opinion, the patentee
argued that its claims were “directed to a specific method of
advertising and content distribution that was previously
unknown and never employed on the Internet before.” But this
alone could not render its claims patent-eligible. In particular,
we found the claims to merely recite the abstract idea of
“offering media content in exchange for viewing an
advertisement,” along with “routine additional steps such as
updating an activity log, requiring a request from the consumer
to view the ad, restrictions on public access, and use of the
Internet.”
DDR Holdings, 773 F.3d at 1258 (citations omitted).
The claims here do not recite an improvement for computers or any
other technology. Using generic computer components to determine which
information to recommend to a user, as in claim 21, does not improve the
functioning of the computer or network, make it operate more efficiently, or
solve any technological problem. See Ans. 10. Any improvement is to the
abstract idea itself, as the claim simply includes instructions to implement an
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abstract idea on a computer and does no more than generally link the use of
that abstract idea to a particular technological environment or field of use.
See id. at 10, 12.
Considering claim 21 as a whole, then, Appellant’s invention lacks a
technical solution to a technical problem like the claims in Amdocs and DDR
Holdings. Claim 21 as a whole merely uses instructions to implement the
abstract idea on a computer or, alternatively, merely uses a computer as a
tool to perform the abstract idea. Here, the additional limitation(s) do not
integrate the judicial exception into a practical application. More
particularly, the claims do not recite (i) an improvement to the functionality
of a computer or other technology or technical field; (ii) a “particular
machine” to apply or use the judicial exception; (iii) a particular
transformation of an article to a different thing or state; or (iv) any other
meaningful limitation. See MPEP § 2106.04(d)(I). Rather, claim 21 recites
an abstract idea as identified in Step 2A(i), supra, and none of the additional
limitations integrates the judicial exception into a practical application.
Therefore, because the abstract idea is not integrated into a practical
application, we conclude that the claim is directed to the judicial exception.
Step 2B — “Inventive Concept” or “Significantly More”
If the claims are directed to a patent-ineligible concept, as we
conclude above, we proceed to the “inventive concept” step. In Step 2B we
must “look with more specificity at what the claim elements add, in order to
determine ‘whether they identify an “inventive concept” in the application of
the ineligible subject matter’ to which the claim is directed.” Affinity Labs of
Texas, LLC v. DIRECTV, LLC, 838 F.3d 1253, 1258 (Fed. Cir. 2016)
(quoting Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed.
Cir. 2016)). We look to see whether there are any “additional features” in the
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claims that constitute an “inventive concept,” thereby rendering the claims
eligible for patenting even if they are directed to an abstract idea. Alice, 573
U.S. at 221. Those “additional features” must be more than “well-
understood, routine, conventional activity.” Mayo, 566 U.S. at 79.
The Examiner determined that the additional elements in claim 21 are
insufficient to amount to significantly more than the judicial exception. Ans.
6; Final Act. 8.
Appellant does not present arguments directed to whether claim 21
includes an inventive concept or amounts to significantly more than the
abstract idea. Appellant does not direct our attention to anything in the
Specification that indicates the computer components perform anything
other than well-understood, routine, and conventional functions, such as
receiving data, storing data, processing data, and transmitting data. See
buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355 (Fed. Cir. 2014) (“That
a computer receives and sends the information over a network—with no
further specification—is not even arguably inventive.”); In re TLI Commc’ns
LLC Patent Litig., 823 F.3d 607, 614 (Fed. Cir. 2016) (server that receives
data, extracts classification information from the received data, and stores
the digital images insufficient to add an inventive concept); Alice, 573 U.S.
at 225–26 (receiving, storing, sending information over networks
insufficient to add an inventive concept).
Because the Specification describes the additional elements in general
terms, without describing the particulars, we conclude the claim limitations
may be broadly but reasonably construed as reciting conventional computer
components and techniques. See MPEP § 2106.07(a)(III)(D) (explaining that
a specification that describes additional elements in a manner that indicates
that the additional elements are so well-known that they do not need to be
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described in detail to satisfy 35 U.S.C. § 112(a) can show that the elements
are well-understood, routine, and conventional); Spec. ¶¶ 35–44. We
conclude claim 21 does not have an inventive concept because the claim, in
essence, merely recites various computer-based elements along with no
more than mere instructions to implement the identified abstract idea using
the computer-based elements.
Because the claims are directed to a judicial exception, without
significantly more, we sustain the Examiner’s § 101 rejection of independent
claim 21 and grouped claims 22–38, not argued separately with particularity.

CONCLUSION
The Examiner’s decision rejecting claims 21–38 is affirmed.

DECISION SUMMARY
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
21–38 101 Eligibility 21–38

TIME PERIOD FOR RESPONSE
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