Ex Parte GrossDownload PDFPatent Trials and Appeals BoardApr 11, 201914103729 - (D) (P.T.A.B. Apr. 11, 2019) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 14/103,729 12/11/2013 23694 7590 04/15/2019 Law Office of J. Nicholas Gross, Prof. Corp. POBOX9489 BERKELEY, CA 94709 FIRST NAMED INVENTOR John Nicholas Gross 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 ATTORNEY DOCKET NO. CONFIRMATION NO. JNG.2004_08D2 1006 EXAMINER DAGNEW, SABA ART UNIT PAPER NUMBER 3682 NOTIFICATION DATE DELIVERY MODE 04/15/2019 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): eofficeaction@appcoll.com j ngross@pac bell. net anthonygreek@gmail.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JOHN NICHOLAS GROSS Appeal2017---006447 Application 14/103,729 Technology Center 3600 Before ANTON W. PETTING, MEREDITH C. PETRA VICK, and TARA L. HUTCHINGS, Administrative Patent Judges. PETTING, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE 1 John Nicholas Gross (Appellant) seeks review under 35 U.S.C. § 134 of a final rejection of claims 26-49, the only claims pending in the application on appeal. We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b). 1 Our decision will make reference to the Appellant's Appeal Brief ("Appeal Br.," filed August 23, 2016) and Reply Brief ("Reply Br.," filed February 13, 2017), and the Examiner's Answer ("Ans.," mailed December 13, 2016), and Final Action ("Final Act.," mailed July 13, 2016). Appeal2017-006447 Application 14/103,729 The Appellant invented a way of testing, evaluating and measuring performance of electronic recommendation systems. Specification 1: 10-12. An understanding of the invention can be derived from a reading of exemplary claim 39, which is reproduced below (some paragraphing added). 39. An automated method of evaluating recommendations made by a recommender system, which recommender includes one or more programs executing on a computing machine and is used for recommending items of interest to online users, the method comprising the steps of: (a) setting up a policy on the recommender system, which policy is a programmed bias to be given to a set of preference items when responding to a user request for items of a first type from the recommender system; (b) with a client computing device reviewing data logs including an actual set of recommendations of items of said first type made by the recommender system in response to a plurality of item requests; ( c) with the client computing device, automatically comparing said actual set of recommendations for items of said first type made in response to said plurality of item requests to determine an overlap with an expected set of recommendations of items of said first type that is based on said policy favoring said set of preference items; and ( d) automatically generating a report with the client computing device measuring a compliance level of the recommender system with said policy for items of said first type based on results of step ( c ). 2 Appeal2017-006447 Application 14/103,729 The Examiner relies upon the following prior art: Shaya US 7,809,601 B2 Oct. 5, 2010 Cho, A Personalized Recommender System Based on Web Usage Mining and Decision Tree Induction, 23 EXPERT SYS. WITH APPLICATIONS 329 (2002) Huang, A Graph-Based Recommender System for Digital Library, ACM/IEEE Joint Conference on Digital Libraries 65-73 (2002).2002. Claims 26-49 stand rejected under the judicially created doctrine of obviousness type double patenting as claiming patentably indistinguishable subject matter as another U.S. Patent. Claims 26-38 stand rejected under 35 U.S.C. § 112(a) as lacking a supporting written description within the original disclosure. Claims 26-49 stand rejected under 35 U.S.C. § 101 as directed to a judicial exception without significantly more. Claims 39 and 43--48 stand rejected under 35 U.S.C. § 102(e) as anticipated by Cho. Claims 26 and 31-37 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Cho and Shaya. Claims 27-30 and 38 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Cho, Shaya, and Huang. Claims 40--42 and 49 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Cho and Huang. 3 Appeal2017-006447 Application 14/103,729 ISSUES The issues of obviousness type double patenting tum primarily on whether the instant claims are patentably distinct from those in an issued patent. The issues of written description matter tum primarily on whether the Specification describes the recited programmed deviation. The issues of eligible subject matter tum primarily on whether the claims recite more than abstract conceptual advice of results desired. The issues of anticipation and obviousness tum primarily on whether Cho describes the recited comparison. FACTS PERTINENT TO THE ISSUES The following enumerated Findings of Fact (FF) are believed to be supported by a preponderance of the evidence. Facts Related to the Prior Art Cho 01. Cho is directed to a personalized recommender system based on web usage mining and decision tree induction. Cho Title. 02. Web usage mining is the process of applying data mining techniques to the discovery of behavior patterns based on web data, for various applications. Cho 330:col.2, first full paragraph. 03. Cho describes its mining policy as a methodology that recommends products based on web usage data as well as product 4 Appeal2017-006447 Application 14/103,729 purchase data and customer- related data. Cho 330:col.2, second full paragraph. 04. Cho describes a problem definition that may result in a top N list. Cho 333 :col. I, second full paragraph. ANALYSIS Claims 26--49 rejected under the judicially created doctrine of obviousness type double patenting as claiming the patentably indistinguishable subject matter as another U.S. Patent We are persuaded by Appellant's argument that "claim 26 here recites comparing actual recommendations given to users to a target set of recommendations, which is not present in claim 1 of the '960 patent." Reply Br. 2. As Appellant contends, the Examiner does not discuss the differences such as this. Claims 26--38 rejected under 35 U.S. C. § l l 2(a) as lacking a supporting written description within the original disclosure The Examiner determined that the limitation "the policy being associated with a programmed deviation to be given to a content neutral recommendation made by the recommender system" was new matter. Final Act. 6. We are persuaded by Appellant's argument that this limitation was supported by Specification 4: 12-14 and 22-26, and 11:2---6. The Examiner responds that he disagrees without further analysis. These portions of the Specification appear to describe the limitation at issue. 5 Appeal2017-006447 Application 14/103,729 Claims 26--49 rejected under 35 U.S.C. § 101 as directed to ajudicial exception without significantly more STEP 1i Claim 39, 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. STEP2 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 2 For continuity of analysis, we adopt the steps nomenclature from 2019 Revised Patent Subject Matter Eligibility Guidance, 84 FR 50 (Jan. 7, 2019). 6 Appeal2017-006447 Application 14/103,729 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." 2019 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 elements recited in the claims provide significantly more than the recited judicial exception. STEP 2A Prong 1 Method claim 39 recites setting up a programmed bias, reviewing data logs, comparing expected and actual recommendation data, and generating a report based on the comparison. Thus, claim 39 recites generating, reading, analyzing, modifying, and displaying 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 39 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 7 Appeal2017-006447 Application 14/103,729 include (1) mathematical concepts3, (2) certain methods of organizing human activity4, and (3) mental processes 5. Among those certain methods of organizing human activity listed in the Revised Guidance are managing personal behavior or relationships or interactions between people. Like those concepts claim 39 recites a way of managing relationships by evaluating them. Specifically, claim 39 recites operations that would ordinarily take place in obtaining recommendations by setting some process bias and then calibrating compliance of recommendations based on actual data and target recommendations. The advice to obtain recommendations by setting some process bias and then calibrate compliance of recommendations based on actual data and target recommendations involves obtaining recommendations, which is a social act, and calibrating the process, which is a practice ordinarily performed in judging the reliability of recommendations. For example, claim 39 recites "setting up a policy," which is an activity that would take place whenever one is deciding how to 3 See, e.g., Gottschalkv. Benson, 409 U.S. 63, 71-72 (1972); Bilski v. Kappas, 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). 4 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. 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). 5 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). 8 Appeal2017-006447 Application 14/103,729 do something generic, such as elicit recommendations. Similarly, claim 1 recites "reviewing data logs including an actual set of recommendations of items" and "comparing said actual set of recommendations," which are also characteristics of judging the reliability of recommendations. The Examiner determines the claims to be directed to testing, evaluating, and measuring performance of recommendation systems. Final Act. 7. The preamble to claim 39 recites that it is a method of evaluating recommendations made by a recommender system. The steps in claim 39 result in generating a report measuring a compliance level of a recommender system with a policy absent any technological mechanism other than a conventional computer for doing so. As to the specific limitations, limitations a, b, and d recite insignificant setting up, analyzing, modifying, and reporting of recommendation data, which advise one to apply generic functions to get to these results. Limitation c is the only step associated with performing what the claim produces and recites comparing a set of recommendations against another set, which is simply data comparison. The limitations thus recite advice for setting some process bias and then calibrating compliance of recommendations based on actual data and target recommendations. To advocate setting some process bias and then calibrating compliance of recommendations based on actual data and target recommendations is conceptual advice for results desired and not technological operations. The Specification at 1: 10-12 recites that the invention relates to testing, evaluating and measuring performance of electronic recommendation systems. Thus, all this intrinsic evidence shows that claim 39 is directed to 9 Appeal2017-006447 Application 14/103,729 testing, evaluating and measuring performance of electronic recommendation systems, i.e. obtaining recommendations by setting some process bias and then calibrating compliance of recommendations based on actual data and target recommendations. This is consistent with the Examiner's determination. This in tum is an example of managing personal behavior or relationships or interactions between people as a certain method of organizing human activity because obtaining recommendations is a significant social activity. The concept of obtaining recommendations by setting some process bias and then calibrating compliance of recommendations based on actual data and target recommendations is a way of evaluating the efficacy of such interactions. The steps recited in claim 39 are part of a way of calibrating the quality of recommendations brought about by such interactions. Our reviewing court has found claims to be directed to abstract ideas when they recited similar subject matter. Content Extraction and Transmission LLC v. Wells Fargo Bank, 776 F.3d 1343, 1347 (2014) (recognizing data within a collection); CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1375 (Fed. Cir. 2011) (claims linked only to a general purpose computer of detecting fraud based on past transactions). Alternately, this is an example of concepts performed in the human mind as mental processes because the steps of generating, reading, analyzing, modifying, and displaying 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 TL! Commc 'ns LLC Patent Litig., 823 F.3d 607, 611 (Fed. Cir. 10 Appeal2017-006447 Application 14/103,729 2016); FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1093-94 (Fed. Cir. 2016). Claim 39, unlike the claims found non-abstract in prior cases, uses generic computer technology to perform data generation, reading, analysis, modification, and display 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 39 is directed to generating, reading, analyzing, modifying, and displaying data, and not a technological implementation or application of that idea. From this we conclude that at least to this degree, claim 39 is directed to obtaining recommendations by setting some process bias and then calibrating compliance of recommendations based on actual data and target recommendations. STEP 2A Prong 2 The next issue is whether claim 39 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. 6 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 6 See, e.g., Alice, 573 U.S. at 223, discussing Diamond v. Diehr, 450 U.S. 175 (1981). 11 Appeal2017-006447 Application 14/103,729 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. Steps a and b are pure data gathering steps. Limitations describing the nature of the data do not alter this. Step d is insignificant post solution activity, such as storing, transmitting, or displaying the results. Step c recites generic computer processing expressed in functional terms to be performed by any and all possible means and so presents 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, Appellants' claim 39 simply recites the concept of obtaining recommendations by setting some process bias and then calibrating compliance of recommendations based on actual data and target recommendations 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. 12 Appeal2017-006447 Application 14/103,729 Claim 39 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 24 pages of specification spell out different generic equipment 7 and parameters that might be applied using this concept and the particular steps such conventional processing would entail based on the concept of obtaining recommendations by setting some process bias and then calibrating compliance of recommendations based on actual data and target recommendations under different scenarios. They do not describe any particular improvement in the manner a computer functions. Instead, claim 39 at issue amounts to nothing significantly more than an instruction to apply obtaining recommendations by setting some process bias and then calibrating compliance of recommendations based on actual data and target recommendations 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 7 The Specification broadly describes using client systems and large scale computing systems. Spec. 24: 19-23. 13 Appeal2017-006447 Application 14/103,729 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 39 is directed to achieving the result of obtaining recommendations by setting some process bias and then calibrating compliance of recommendations based on actual data and target recommendations as distinguished from a technological improvement for achieving or applying that result. The claim does not integrate the judicial exception into a practical application. STEP 2B The next issue is whether claim 39 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 14 Appeal2017-006447 Application 14/103,729 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 generating, reading, analyzing, modifying, and displaying data amounts to electronic data query and retrieval----one of the most basic functions of a 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 Litigation, 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. Appellants do 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 15 Appeal2017-006447 Application 14/103,729 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 Appellants' claim 39 add nothing that is not already present when the steps are considered separately. The sequence of data generation-reading- analysis-modification-display 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, and monitoring). The ordering of the steps is therefore ordinary and conventional. We conclude that claim 39 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 39 is representative. The other independent method claim 26 is substantially similar at least as regards this analysis. 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 16 Appeal2017-006447 Application 14/103,729 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 obtaining recommendations by setting some process bias and then calibrating compliance of recommendations based on actual data and target recommendations, without significantly more. APPELLANTS' ARGUMENTS As to Appellant's Appeal Brief arguments, we adopt the Examiner's determinations and analysis from Final Action 7-8 and Answer 4--7 and reach similar legal conclusions. We now tum to the Reply Brief. We are not persuaded by Appellant's argument that the Examiner presents no hint let alone a rational explanation or argument of how a claim directed to an "automated method of evaluating recommendations made by a recommender system" is any shape or form related to "organizing human activity." 17 Appeal2017-006447 Application 14/103,729 There is no "human" activity described in the claim, except in the context that it is humans who receive the recommendations output by the recommender system being analyzed. Reply Br. 4. The Examiner determines that the claim does no more than automate the known manual activity of evaluating some system parameter, in this case system bias. Systems existed far prior to the advent of computers and their evaluation even then was necessary for proof of concept. Appellant's contention is that because the claim recites doing so in a computer context, it is not a human activity. But simply automating an abstract idea does not make it less abstract. "Relying on a computer to perform routine tasks more quickly or more accurately is insufficient to render a claim patent eligible." OIP Technologies, Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1363 (2015). We are not persuaded by Appellant's argument that "the Office has not and cannot properly identify a judicially impermissible abstract idea in the claims." Reply Br., id. As we determine supra, the claims are directed to testing, evaluating and measuring performance of electronic recommendation systems, i.e. system evaluation. "Without additional limitations, a process that employs mathematical algorithms to manipulate existing information to generate additional information is not patent eligible." Digitech Image Technologies, LLC v. Electronics for Imaging, Inc., 758 F.3d 1344, 1351 (2014). Appellant further argues that the asserted claims are akin to the claims found patent-eligible in DDR Holdings, LLC v. Hotels.com, L.P. 773 F.3d 1245 (Fed. Cir. 2014). Reply Br. 4-5. In DDR Holdings, the Court evaluated the eligibility of claims "address[ing] the problem of 18 Appeal2017-006447 Application 14/103,729 retaining website visitors that, if adhering to the routine, conventional functioning of Internet hyperlink protocol, would be instantly transported away from a host's website after 'clicking' on an advertisement and activating a hyperlink." Id. at 1257. There, the Court found that the claims were patent eligible because they transformed the manner in which a hyperlink typically functions to resolve a problem that had no "pre-Internet analog." Id. at 1258. The Court cautioned, however, "that not all claims purporting to address Internet-centric challenges are eligible for patent." Id. For example, in DDR Holdings the Court distinguished the patent-eligible claims at issue from claims found patent-ineligible in Ultramercial. See id. at 1258-59 (citing Ultramercial, 772 F.3d 709, 715-16 (Fed. Cir. 2014)). As noted there, the Ultramercial claims were "directed to a specific method of advertising and content distribution that was previously unknown and never employed on the Internet before." Id. at 1258 (quoting Ultramercial, 772 F.3d at 715-16). Nevertheless, those claims were patent ineligible because they "merely recite[d] 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."' Id. Appellant's asserted claims are analogous to claims found ineligible in Ultramercial and distinct from claims found eligible in DDR Holdings. The ineligible claims in Ultramercial recited "providing [a] media product for sale at an Internet website;" "restricting general public access to said 19 Appeal2017-006447 Application 14/103,729 media product;" "receiving from the consumer a request to view [a] sponsor message;" and "if the sponsor message is an interactive message, presenting at least one query to the consumer and allowing said consumer access to said media product after receiving a response to said at least one query." 772 F.3d at 712. Similarly, Appellant's asserted claims recite generating, reading, analyzing, modifying, and displaying data. This is precisely the type of activity found ineligible in Ultramercial. We are not persuaded by Appellant's argument 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. 5. 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. 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. Claims 39 and 43--48 rejected under 35 U.S.C. § 102(e) as anticipated by Cho 20 Appeal2017-006447 Application 14/103,729 We are persuaded by Appellant's argument that Cho fails to describe "automatically comparing said actual set of recommendations for items of said first type made in response to said plurality of item requests to determine an overlap with an expected set of recommendations of items." Claim 39; Reply Br. 7-8. The Examiner cites Cho 333 as describing the creation of a top N list and then comparing that to some other list. Ans. 9. The problem for the Examiner is that this portion of Cho describes a process that results in, rather than begins with, such a top N list. What the Examiner refers to as a comparison, Cho describes as defining the very problem itself prior to creating a top N list. Cho 333. Claims 26 and 31-37 rejected under 35 U.S.C. § 103(a) as unpatentable over Cho and Shaya We are persuaded by Appellant's argument that the Examiner makes the same erroneous determination here as in the anticipation rejection. The Examiner applies Shaya only for a programmed deviation, and not for the comparison we discussed in the anticipation rejection that is claimed, but not described by Cho. Claims 27-30 and 38 rejected under 35 U.S.C. § 103(a) as unpatentable over Cho, Shaya, and Huang These are dependent claims, and so the arguments apply here as well. 21 Appeal2017-006447 Application 14/103,729 Claims 40---42 and 49 rejected under 35 U.S.C. § 103(a) as unpatentable over Cho and Huang These are dependent claims, and so the arguments apply here as well. CONCLUSIONS OF LAW The rejection of claims 26-49 under the judicially created doctrine of obviousness type double patenting as claiming the patentably indistinguishable subject matter as another U.S. Patent is improper. The rejection of claims 26-38 under 35 U.S.C. § 112(a) as lacking a supporting written description within the original disclosure is improper. The rejection of claims 26-49 under 35 U.S.C. § 101 as directed to a judicial exception without significantly more is proper. The rejection of claims 39 and 43--48 under 35 U.S.C. § 102(e) as anticipated by Cho is improper. The rejection of claims 26 and 31-37 under 35 U.S.C. § 103(a) as unpatentable over Cho and Shaya is improper. The rejection of claims 27-30 and 38 under 35 U.S.C. § 103(a) as unpatentable over Cho, Shaya, and Huang is improper. The rejection of claims 40--42 and 49 under 35 U.S.C. § 103(a) as unpatentable over Cho and Huang is improper. DECISION The rejection of claims 26-49 is affirmed. 22 Appeal2017-006447 Application 14/103,729 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)(l)(iv) (2011). AFFIRMED 23 Copy with citationCopy as parenthetical citation