David Selinger et al.

Patent Trials and Appeals Board

Oct 11, 2019

12012323 - (D) (P.T.A.B. Oct. 11, 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.
12/012,323 02/01/2008 David Selinger 800054.405 3040
157877 7590 10/11/2019
James A. D. White
VLP Law Group
7683 SE 27th Street #145
Mercer Island, WA 98040
EXAMINER
WOODWORTH, II, ALLAN J
ART UNIT PAPER NUMBER
3682
NOTIFICATION DATE DELIVERY MODE
10/11/2019 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):
AWendel@vlplawgroup.com
JWhite@vlplawgroup.com
patents@vlplawgroup.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
___________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
___________

Ex parte DAVID SELINGER,
TYLER KOHN,
MICHAEL DECOURCEY,
SUNDEEP AHUJA,
JAMES OSIAL,
and ALBERT SUNWOO
___________

Appeal 2018-004494
Application 12/012,323
Technology Center 3600
___________

Before HUBERT C. LORIN, ANTON W. FETTING, and
BIBHU R. MOHANTY, Administrative Patent Judges.
FETTING, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE1
David Selinger, Tyler Kohn, Michael DeCourcey, Sundeep Ahuja,
James Osial, and Albert Sunwoo (Appellant2) seeks review under

1 Our decision will make reference to the Appellant’s Appeal Brief (“App.
Br.,” filed October 5, 2017) and Reply Brief (“Reply Br.,” filed March 25,
2018), and the Examiner’s Answer (“Ans.,” mailed January 25, 2018), and
Final Action (“Final Act.,” mailed April 11, 2017).
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35 U.S.C. § 134 of a final rejection of claims 1–9, 11–14, and 21–28, the
only claims pending in the application on appeal. We have jurisdiction over
the appeal pursuant to 35 U.S.C. § 6(b).
The Appellant invented a way of providing targeted content, such as
advertising, by analyzing the context in which the content is to be provided
in light of known attributes of the content available to be provided and the
one or more recipients of the content. Specification para. 1.
An understanding of the invention can be derived from a reading of
exemplary claim 1, which is reproduced below (bracketed matter and some
paragraphing added).
1. A computer-implemented process comprising:
[1] collecting,
by a configured computer system,
user-specific data for a specific user
that indicates a plurality of interactions performed
by the specific user with one or more retailers;
[2] generating,
by the configured computer system,
a user model for the specific user
based on the user-specific data;
and
[3] using,

2 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies the real party in interest as
RichRelevance, Inc. (Appeal Br. 2).

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by the configured computer system,
the generated user model
to determine a personalized electronic advertisement for
presentation to the specific user on a first retail Web site
of a first retailer, including:
[3.1] identifying,
by the configured computer system,
a first product of interest for the specific user;
[3.2] identifying,
by the configured computer system,
multiple other relevant products of possible interest to the
specific user based on the identified first product,
wherein the identified multiple other relevant products
have at least one defined type of inter-product
relationship between the multiple other relevant products
and the identified first product that includes the multiple
other relevant products being similar to the identified
first product,
wherein the identified multiple other relevant products
being available from a second retailer distinct from the
first retailer and not being available from the first retailer,
and
wherein the identifying of the multiple other relevant
products includes applying one or more rules for
identifying similar genres of goods and services;
[3.3] generating,
by the configured computer system,
a score for a second retail Web site of the second retailer
based at least in part on products or services offered on
the second retail Web site and on the at least one defined
type of inter-product relationship;
and
[3.4] selecting,
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by the configured computer system,
an identified advertisement for one of the identified
multiple other relevant products to use as the determined
personalized electronic advertisement
based at least in part on a score generated for the
selected identified advertisement and on the
generated score for the second retail Web site;
and
[4] providing,
by the configured computer system,
information about the selected identified advertisement
for display to the specific user on a client device of the
specific user as part of a display of at least a portion of
the first retail Web site of the first retailer.
Claims 1–9, 11–14, and 21–28 stand rejected under 35 U.S.C. § 101 as
directed to non-statutory subject matter.
ISSUES
The issues of eligible subject matter turn primarily on whether the claims
recite more than abstract conceptual advice of results desired.
ANALYSIS
STEP 13
Claim 1, as a method claim, nominally recites one of the enumerated
categories of eligible subject matter in 35 U.S.C. § 101. The issue before us
is whether it is directed to a judicial exception without significantly more.

3 For continuity of analysis, we adopt the steps nomenclature from 2019
Revised Patent Subject Matter Eligibility Guidance, 84 FR 50 (Jan. 7, 2019)
(“Revised Guidance”).
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STEP 2
The Supreme Court
set forth a framework for distinguishing patents that claim laws
of nature, natural phenomena, and abstract ideas from those that
claim patent-eligible applications of those concepts. First, . . .
determine whether the claims at issue are directed to one of
those patent-ineligible concepts. If so, we then ask, “[w]hat
else is there in the claims before us? To answer that question, .
. . consider the elements of each claim both individually and “as
an ordered combination” to determine whether the additional
elements “transform the nature of the claim” into a patent-
eligible application. [The Court] described step two of this
analysis as 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 Corp., Pty. Ltd. v. CLS Bank Intl, 573 U.S. 208, 217–18 (2014)
(citations omitted) (citing Mayo Collaborative Services v. Prometheus
Laboratories, Inc., 566 U.S. 66 (2012)). To perform this test, we must first
determine what the claims are directed to. This begins by determining
whether the claims recite one of the judicial exceptions (a law of nature, a
natural phenomenon, or an abstract idea). Then, if claims recite a judicial
exception, determining whether the claims at issue are directed to the recited
judicial exception, or whether the recited judicial exception is integrated into
a practical application of that exception, i.e., that the claims “apply, rely on,
or use the judicial exception in a manner that imposes a meaningful limit on
the judicial exception, such that the claim is more than a drafting effort
designed to monopolize the judicial exception.” Revised Guidance at 54. If
the claims are directed to a judicial exception, then finally determining
whether the claims provide an inventive concept because the additional
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elements recited in the claims provide significantly more than the recited
judicial exception.
STEP 2A Prong 1
At a high level, and for our preliminary analysis, we note that method
claim 1 recites collecting data, generating a model, determining an
advertisement for presentation, identifying a product and other products,
generating a score, and selecting and providing information about an
advertisement. Collecting data is data reception. Generating is rudimentary
data analysis and update. Determining, identifying, and selecting are
rudimentary forms of analysis. Providing data is transmission. Thus, claim
1 recites receiving, analyzing, updating, and transmitting data. None of the
limitations recite technological implementation details for any of these steps,
but instead recite only results desired by any and all possible means.
From this we see that claim 1 does not recite the judicial exceptions of
either natural phenomena or laws of nature.
Under Supreme Court precedent, claims directed purely to an abstract
idea are patent in-eligible. As set forth in the Revised Guidance, which
extracts and synthesizes key concepts identified by the courts, abstract ideas
include (1) mathematical concepts4, (2) certain methods of organizing
human activity5, and (3) mental processes.6 Among those certain methods of

4 See, e.g., Gottschalk v. Benson, 409 U.S. 63, 71–72 (1972); Bilski v.
Kappos, 561 U.S. 593, 611 (2010); Mackay Radio & Telegraph Co. v. Radio
Corp. of Am., 306 U.S. 86, 94 (1939); SAP Am., Inc. v. InvestPic, LLC, 898
F.3d 1161, 1163 (Fed. Cir. 2018).
5 See, e.g., Bilski, 561 U.S. at 628; Alice, 573 U.S. at 219-20; Ultramercial,
Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed Cir. 2014); Smart Sys.
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organizing human activity listed in the Revised Guidance are commercial or
legal interactions. Like those concepts, claim 1 recites the concept of
advertising. Specifically, claim 1 recites operations that would ordinarily
take place in advising one to select and provide information about an ad for
a product based on an inter-product relationship score and website score
generated from a model, user data, and another product. The advice to select
and provide information about an ad for a product based on an inter-product
relationship score and website score generated from a model, user data, and
another product involves choosing an ad to present, which is an economic
act, and evaluating the ad, which is an act ordinarily performed in the stream
of commerce. For example, claim 1 recites “selecting . . . an identified
advertisement,” which is an activity that would take place whenever one is
advertising. Similarly, claim 1 recites “a score generated for the selected
identified advertisement,” which is also characteristic of advertising
management.
The Examiner determines the claims to be directed to identifying
personalized advertisements based on products of interest to a specific user
and other products offered on retailer websites. Final Act. 3.
The preamble to claim 1 does not recite what it is to achieve, but the
steps in claim 1 result in selecting and transmitting data about an

Innovations, LLC v. Chicago Transit Auth., 873 F.3d 1364, 1383 (Fed. Cir.
2017); In re Marco Guldenaar Holding B.V., 911 F.3d 1157, 1160–61 (Fed.
Cir. 2018).
6 See, e.g., Benson, 409 U.S. at 67; CyberSource Corp. v. Retail Decisions,
Inc., 654 F.3d 1366, 1371–72 (Fed. Cir. 2011); Intellectual Ventures I LLC
v. Symantec Corp., 838 F.3d 1307, 1318 (Fed. Cir. 2016).
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advertisement absent any technological mechanism other than a
conventional computer for doing so.
As to the specific limitations, limitation 1 recites data collection.
Limitations 2 and 3.1 recite generating data absent any technological
implementation. Limitation 4 recites insignificant post processing
transmission of data. Limitations 3, 3.1, 3.2, and 3.4 recite conventional
analyzing of advertising data, which advise one to apply generic functions to
get to these results. The limitations thus recite advice for selecting and
providing information about an ad for a product based on an inter-product
relationship score and website score generated from a model, user data, and
another product. To advocate selecting and providing information about an
ad for a product based on an inter-product relationship score and website
score generated from a model, user data, and another product is conceptual
advice for results desired and not technological operations.
The Specification at paragraph 1 describes the invention as relating to
providing targeted content, such as advertising, by analyzing the context in
which the content is to be provided in light of known attributes of the
content available to be provided and the one or more recipients of the
content. Thus, all this intrinsic evidence shows that claim 1 is directed to
selecting advertisements, i.e. advertising. This is consistent with the
Examiner’s determination.
This in turn is an example of commercial or legal interactions as a
certain method of organizing human activity because advertising is a major
component of commercial marketing transactions. The concept of
advertising by selecting and providing information about an ad for a product
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based on an inter-product relationship score and website score generated
from a model, user data, and another product is one idea for selecting such
ads. The steps recited in claim 1 are part of how this might conceptually be
premised.
Our reviewing court has found claims to be directed to abstract ideas
when they recited similar subject matter. See Ultramercial, Inc. v. Hulu,
LLC, 772 F.3d 709, 715 (Fed. Cir. 2014) (using advertising).
This in turn is an example of concepts performed in the human mind as
mental processes because the steps of receiving, analyzing, updating, and
transmitting data mimic human thought processes of observation, evaluation,
judgment, and opinion, perhaps with paper and pencil, where the data
interpretation is perceptible only in the human mind. See In re TLI
Commc’ns LLC Patent Litig., 823 F.3d 607, 611 (Fed. Cir. 2016);
FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1093–94 (Fed. Cir.
2016). Claim 1, unlike the claims found non-abstract in prior cases, uses
generic computer technology to perform data reception, analysis, update,
and transmission and does not recite an improvement to a particular
computer technology. See, e.g., McRO, Inc. v. Bandai Namco Games Am.
Inc., 837 F.3d 1299, 1314–15 (Fed. Cir. 2016) (finding claims not abstract
because they “focused on a specific asserted improvement in computer
animation”). As such, claim 1 is directed to receiving, analyzing, updating,
and transmitting data, and not a technological implementation or application
of that idea.
From this we conclude that at least to this degree, claim 1 is directed to
advertising by selecting and providing information about an ad for a product
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based on an inter-product relationship score and website score generated
from a model, user data, and another product, which is a commercial and
legal interaction, one of certain methods of organizing human activity
identified in the Revised Guidance, and, thus, an abstract idea.
STEP 2A Prong 2
The next issue is whether claim 1 not only recites, but is more precisely
directed to this concept itself or whether it is instead directed to some
technological implementation or application of, or improvement to, this
concept i.e. integrated into a practical application.7
At the same time, we tread carefully in construing this
exclusionary principle lest it swallow all of patent law. At
some level, “all inventions ... embody, use, reflect, rest upon, or
apply laws of nature, natural phenomena, or abstract ideas.”
Thus, an invention is not rendered ineligible for patent simply
because it involves an abstract concept. “[A]pplication[s]” of
such concepts “ ‘to a new and useful end,’ ” we have said,
remain eligible for patent protection. Accordingly, in applying
the § 101 exception, we must distinguish between patents that
claim the “ ‘buildin[g] block[s]’ ” of human ingenuity and those
that integrate the building blocks into something more.
Alice, 573 U.S. at 217 (citations omitted).
Taking the claim elements separately, the operation performed by the
computer at each step of the process is expressed purely in terms of results,
devoid of implementation details. Step1 is a pure data gathering step.
Limitations describing the nature of the data do not alter this. Step 4 is
insignificant post solution activity, such as storing, transmitting, or

7 See, e.g., Alice, 573 U.S. at 223, discussing Diamond v. Diehr, 450 U.S.
175 (1981).
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displaying the results. Steps 2–3.4 recite generic computer processing
expressed in terms of results desired by any and all possible means and so
present no more than conceptual advice. All purported inventive aspects
reside in how the data is interpreted and the results desired, and not in how
the process physically enforces such a data interpretation or in how the
processing technologically achieves those results.
Viewed as a whole, Appellant’s claim 1 simply recites the concept of
advertising by selecting and providing information about an ad for a product
based on an inter-product relationship score and website score generated
from a model, user data, and another product as performed by a generic
computer. This is no more than conceptual advice on the parameters for this
concept and the generic computer processes necessary to process those
parameters, and do not recite any particular implementation.
Claim 1 does not, for example, purport to improve the functioning of the
computer itself. Nor does it effect an improvement in any other technology
or technical field. The Specification spells out different generic equipment8
and parameters that might be applied using this concept and the particular
steps such conventional processing would entail based on the concept of
advertising by selecting and providing information about an ad for a product
based on an inter-product relationship score and website score generated
from a model, user data, and another product under different scenarios. It
does not describe any particular improvement in the manner a computer
functions. Instead, claim 1 at issue amounts to nothing significantly more

8 The Specification describes a PC based implementation of a central
control processing system. Spec. para. 138.
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than an instruction to apply advertising by selecting and providing
information about an ad for a product based on an inter-product relationship
score and website score generated from a model, user data, and another
product using some unspecified, generic computer. Under our precedents,
that is not enough to transform an abstract idea into a patent-eligible
invention. See Alice, 573 U.S. at 225–26.
None of the limitations reflect an improvement in the functioning of a
computer, or an improvement to other technology or technical field, applies
or uses a judicial exception to effect a particular treatment or prophylaxis for
a disease or medical condition, implements a judicial exception with, or uses
a judicial exception in conjunction with, a particular machine or manufacture
that is integral to the claim, effects a transformation or reduction of a
particular article to a different state or thing, or applies or uses the judicial
exception in some other meaningful way beyond generally linking the use of
the judicial exception to a particular technological environment, such that
the claim as a whole is more than a drafting effort designed to monopolize
the exception.
We conclude that claim 1 is directed to achieving the result of
advertising by advising one to select and provide information about an ad for
a product based on an inter-product relationship score and website score
generated from a model, user data, and another product, as distinguished
from a technological improvement for achieving or applying that result.
This amounts to commercial or legal interactions, which fall within certain
methods of organizing human activity that constitute abstract ideas. The
claim does not integrate the judicial exception into a practical application.
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STEP 2B
The next issue is whether claim 1 provides an inventive concept because
the additional elements recited in the claim provide significantly more than
the recited judicial exception.
The introduction of a computer into the claims does not generally alter
the analysis at Mayo step two.
the mere recitation of a generic computer cannot transform a
patent-ineligible abstract idea into a patent-eligible invention.
Stating an abstract idea “while adding the words ‘apply it’” is
not enough for patent eligibility. Nor is limiting the use of an
abstract idea “‘to a particular technological environment.’”
Stating an abstract idea while adding the words “apply it with a
computer” simply combines those two steps, with the same
deficient result. Thus, if a patent’s recitation of a computer
amounts to a mere instruction to “implement[t]” an abstract
idea “on . . . a computer,” that addition cannot impart patent
eligibility. This conclusion accords with the preemption
concern that undergirds our § 101 jurisprudence. Given the
ubiquity of computers, wholly generic computer
implementation is not generally the sort of “additional
feature[e]” that provides any “practical assurance that the
process is more than a drafting effort designed to monopolize
the [abstract idea] itself.”
Alice, 573 U.S. at 223–24 (citations omitted).
“[T]he relevant question is whether the claims here do more than simply
instruct the practitioner to implement the abstract idea [] on a generic
computer.” Alice, 573 U.S. at 225. They do not.
Taking the claim elements separately, the function performed by the
computer at each step of the process is purely conventional. Using a
computer for receiving, analyzing, updating, and transmitting data amounts
to electronic data query and retrieval—one of the most basic functions of a
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computer. All of these computer functions are generic, routine, conventional
computer activities that are performed only for their conventional uses. See
Elec. Power Grp. v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016).
Also see In re Katz Interactive Call Processing Patent Litig., 639 F.3d 1303,
1316 (Fed. Cir. 2011) (“Absent a possible narrower construction of the terms
‘processing,’ ‘receiving,’ and ‘storing,’ . . . those functions can be achieved
by any general purpose computer without special programming”). None of
these activities are used in some unconventional manner nor do any produce
some unexpected result. Appellant does not contend they invented any of
these activities. In short, each step does no more than require a generic
computer to perform generic computer functions. As to the data operated
upon, “even if a process of collecting and analyzing information is ‘limited
to particular content’ or a particular ‘source,’ that limitation does not make
the collection and analysis other than abstract.” SAP America, Inc. v.
InvestPic LLC, 898 F.3d 1161, 1168 (Fed. Cir. 2018).
Considered as an ordered combination, the computer components of
Appellant’s claim 1 add nothing that is not already present when the steps
are considered separately. The sequence of data reception-analysis-update-
transmission is equally generic and conventional. See Ultramercial, Inc. v.
Hulu, LLC, 772 F.3d 709, 715 (Fed. Cir. 2014) (sequence of receiving,
selecting, offering for exchange, display, allowing access, and receiving
payment recited an abstraction), Inventor Holdings, LLC v. Bed Bath &
Beyond, Inc., 876 F.3d 1372, 1378 (Fed. Cir. 2017) (sequence of data
retrieval, analysis, modification, generation, display, and transmission),
Two-Way Media Ltd. v. Comcast Cable Communications, LLC, 874 F.3d
1329, 1339 (Fed. Cir. 2017) (sequence of processing, routing, controlling,
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and monitoring). The ordering of the steps is therefore ordinary and
conventional.
We conclude that claim 1 does not provide an inventive concept because
the additional elements recited in the claim do not provide significantly more
than the recited judicial exception.
REMAINING CLAIMS
Claim 1 is representative. The remaining method claims merely describe
process parameters. We conclude that the method claims at issue are
directed to a patent-ineligible concept itself, and not to the practical
application of that concept.
As to the structural claims, they
are no different from the method claims in substance. The
method claims recite the abstract idea implemented on a generic
computer; the system claims recite a handful of generic
computer components configured to implement the same idea.
This Court has long “warn[ed] ... against” interpreting § 101“in
ways that make patent eligibility ‘depend simply on the
draftsman’s art.’
Alice, 573 U.S. at 226. As a corollary, the claims are not directed to any
particular machine.
LEGAL CONCLUSION
From these determinations we further determine that the claims do not
recite an improvement to the functioning of the computer itself or to any
other technology or technical field, a particular machine, a particular
transformation, or other meaningful limitations. From this we conclude the
claims are directed to the judicial exception of the abstract idea of certain
methods of organizing human activity as exemplified by the commercial and
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legal interaction of advertising by selecting and providing information about
an ad for a product based on an inter-product relationship score and website
score generated from a model, user data, and another product, without
significantly more.
APPELLANT’S ARGUMENTS
As to Appellant’s Appeal Brief arguments, we adopt the Examiner’s
determinations and analysis from Final Action 3–6 and Answer 7–14 and
reach similar legal conclusions. We now turn to the Reply Brief.
We are not persuaded by Appellant’s argument that “the pending claims
are related to performing automated activities to improve technological
processes, including applying defined rules to select and display information
more effectively and in ways that have not been shown to be previously
performed, despite mischaracterizations of the office to the contrary.” Reply
Br. 4.
Appellant argues that the Examiner's Answer repeatedly
mischaracterizes the pending claims in an apparent attempt to hide their
technical nature. Reply Br. 6. As we determined supra, the claim recite no
technological implementation details. All of the recited steps are
conventional computer operations of receiving, updating, analyzing, and
transmitting data. Reception, update, and transmission are among the most
primitive of conventional operations. Analysis per se is what generic
computers do. Absent technological implementation details, analysis per se
is conventional and generic.
At that level of generality, the claims do no more than
describe a desired function or outcome, without providing any
limiting detail that confines the claim to a particular solution
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to an identified problem. The purely functional nature of the
claim confirms that it is directed to an abstract idea, not to a
concrete embodiment of that idea.
Affinity Labs of Texas, LLC v. Amazon.com Inc., 838 F.3d 1266, 1269
(2016).
Appellant also attempts to analogize the claims to those involved in
McRO, 837 F.3d 1299. Reply Br. 6. In McRO, the court held that,
although the processes were previously performed by humans, “the
traditional process and newly claimed method . . . produced . . . results in
fundamentally different ways.” FairWarning, 839 F.3d at 1094
(differentiating the claims at issue from those in McRO). In McRO, “it
was the incorporation of the claimed rules not the use of the computer,
that improved the existing technology process,” because the prior process
performed by humans “was driven by subjective determinations rather
than specific, limited mathematical rules.” 837 F.3d at 1314 (internal
quotation marks, citation, and alterations omitted). In contrast, the claims
of the instant application merely implement an old practice of using
decision criteria in making ad decisions in a new environment. Appellant has
not argued that the claimed processes of selecting ads apply rules of
selection in a manner technologically different from those which humans
used, albeit with less efficiency, before the invention was claimed. Merely
pigeon holing the objects of decision making to aid decision making is both
old and itself abstract.
The claims in McRO were not directed to an abstract idea, but
instead were directed to “a specific asserted improvement in
computer animation, i.e., the automatic use of rules of a
particular type.” We explained that “the claimed improvement
[was] allowing computers to produce ‘accurate and realistic lip
synchronization and facial expressions in animated characters’
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that previously could only be produced by human animators.”
The claimed rules in McRO transformed a traditionally
subjective process performed by human artists into a
mathematically automated process executed on computers.
FairWarning, 839 F.3d at 1094.
We are not persuaded by Appellant’s argument that “the relevant
question is not how previously created rules could be used in other ways, but
the particular ways that the respective claims recite the use of the rules as
part of automated operations being performed.” Reply Br. 8. The relevant
question is what the rules are used for, and whether that use is an abstract
idea.
Using rules per se is generic decision making, a process whose
interpretation is discernable only within the human mind. “While the
Supreme Court has altered the § 101 analysis since CyberSource in cases
like Mayo and Alice, we continue to ‘treat[] analyzing information by steps
people go through in their minds, or by mathematical algorithms, without
more, as essentially mental processes within the abstract-idea category.’”
Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1146 (Fed. Cir.
2016) (citations omitted). Selecting and scoring ads is no more than
conventional business decision making in commercial interactions and
therefore and abstract idea. Using rules to do so simply adds another
abstract idea. “Adding one abstract idea . . . to another abstract idea . . . does
not render the claim non-abstract.” RecogniCorp, LLC v. Nintendo Co.,
Ltd., 855 F.3d 1322, 1327 (2017).
We are not persuaded by Appellant’s argument that
the subject matter of the pending claims relates to improving a
graphical user interface displayed to a user in ways that have
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not been shown to be previously performed, including using
one or more defined rules to identify information to display to a
user as part of a Web site of a first retailer in a specific manner,
and to transmit corresponding information to a client device of
the user for display as part of the first retailer's Web site. As
discussed in the Appeal Brief, the Federal Circuit has clarified
that displaying information to a user in a more efficient or
effective manner, to allow the user to more efficiently perform
related activities, is one type of technological improvement that
is statutory subject matter, with a discussion in the Appeal Brief
of the related case Trading Technologies Intl. v. CQG, Inc.,
Federal Circuit, January 18, 2017, Case Number 2016-1616
[675 Fed. Appx. 1001 (Fed. Cir. 2017)]. In addition, since the
filing of the Appeal Brief, the Federal Circuit has again
affirmed this principle and extended it, including in Core
Wireless Licensing S.A.R.L. v. LG Electronics, Inc. et al.,
Federal Circuit, January 2018, Case Number 2016-2684 / 2017-
1922 [880 F.3d 1356 (Fed. Cir. 2018)].
Reply Br. 8–9. None of the claims recite an interface, graphical or
otherwise. The Trading Techs. case Appellant cites is non-precedential and
distinguishable. The claims in Trading Techs. recited “dynamically
displaying a second indicator in one of a plurality of locations in an ask
display region, each location in the ask display region corresponding to a
price level along the common static price axis.” No such dynamic
positioning of data is recited in the claims at hand. In a related precedential
Trading Techs. case, also reciting a graphical user interface, the Court held
“the claims are focused on providing information to traders in a way that
helps them process information more quickly, not on improving computers
or technology.” Trading Techs. Int’l, Inc. v. IBG LLC, 921 F.3d 1378, 1384
(Fed. Cir. 2019). Similarly, the claims here are focused on providing
information to users in a way that helps them process information more
quickly, not on improving computers or technology.
Appeal 2018-004494
Application 12/012,323

20

This same Trading Techs. Int’l, Inc. v. IBG LLC decision similarly
addresses Appellant’s Core Wireless argument.
Relying principally on Core Wireless Licensing S.A.R.L. v. LG
Electronics, Inc., 880 F.3d 1356 (Fed. Cir. 2018), TT argues the
claimed invention provides an improvement in the way a
computer operates. We do not agree. The claims of the ’999
patent do not improve the functioning of the computer, make it
operate more efficiently, or solve any technological problem.
Instead, they recite a purportedly new arrangement of generic
information that assists traders in processing information more
quickly.
Trading Techs., 921 F.3d at 1093. Again, the instant claims do not improve
the functioning of the computer, make it operate more efficiently, or solve
any technological problem. Instead, they recite a purportedly new
arrangement of generic information that assists users in processing
information more quickly.
We are not persuaded by Appellant’s argument that “the pending claims
are related to substantially more than merely ‘commercial sales’ as alleged
by the office in the examiner's answer.” Reply Br. 10.
Appellant argues that the claims contain an inventive concept that is also
found in the specific ordered combination of the limitations, similar to the
Federal Circuit's findings in BASCOM (BASCOM Global Internet v. AT&T
Mobility LLC, 827 F.3d 1341 (Fed. Cir. 2016)). Reply Br. 12. Initially, we
remind Appellant that BASCOM did not find claims eligible on the
substance, but rather that the Appellees did not provide sufficient evidence
to support a 12(b)(6) motion to dismiss in which facts are presumed in the
non-movant’s favor.
Appeal 2018-004494
Application 12/012,323

21

The key fact in BASCOM was the presence of a structural change in
“installation of a filtering tool at a specific location, remote from the end-
users, with customizable filtering features specific to each end user. This
design gives the filtering tool both the benefits of a filter on a local computer
and the benefits of a filter on the ISP server.” BASCOM, 827 F.3d at 1350.
The instant claims have no analogous structural benefit.
We are not persuaded by Appellant’s argument that “dependent claims 8,
13 and 14 continue to be directed to statutory subject matter.” Reply Br. 11.
The arguments refer back to the independent claim arguments.
CONCLUSIONS OF LAW
The rejection of claims 1–9, 11–14, and 21–28 under 35 U.S.C. § 101 as
directed to non-statutory subject matter is proper.
CONCLUSION
The rejection of claims 1–9, 11–14, and 21–28 is affirmed.
In summary:
Claims
Rejected
35 U.S.C. § Basis  Affirmed Reversed
1–9, 11–14,
21–28
101 Eligibility 1–9, 11–14,
21–28

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) (2011).
AFFIRMED