Ex Parte Kannan et al

Patent Trials and Appeals BoardJun 27, 2019

14032964 - (D) (P.T.A.B. Jun. 27, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 14/032,964 09/20/2013 Ashvin Kannan 45839 7590 07/01/2019 Schwegman Lundberg & Woessner/ Linkedln/Microsoft POBOX2938 MINNEAPOLIS, MN 55402 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. 3080.165US1 7104 EXAMINER ALVAREZ, RAQUEL ART UNIT PAPER NUMBER 3688 NOTIFICATION DATE DELIVERY MODE 07/01/2019 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): USPTO@slwip.com slw@blackhillsip.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte ASHVIN KANNAN, GYANDA SACHDEVA, MICHAEL GRISHA VER, and RUINING FENG Appeal2018-001998 Application 14/032,964 Technology Center 3600 Before STEPHEN C. SIU, BETH Z. SHAW, and JASON M. REPKO, Administrative Patent Judges. REPKO, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants 1 appeal under 35 U.S.C. Â§ 134(a) from the Examiner's rejection of claims 1-3, 5-7, and 9-20. App. Br. 2. 2 Claims 4 and 8 are canceled. We have jurisdiction under 35 U.S.C. Â§ 6(b). We affirm. 1 According to Appellants, the real party in interest is Linkedin Inc. App. Br. 2. 2 Throughout this opinion, we refer to the Final Office Action ("Final Act."), mailed December 31, 2017; the Appeal Brief ("App. Br."), filed June 12, 2017; the Examiner's Answer ("Ans."), mailed October 16, 2017; and the Reply Brief ("Reply Br."), filed December 15, 2017. Appeal2018-001998 Application 14/032,964 THE INVENTION Appellants' invention generally relates to online advertising. Spec. ,r 3. According to the Specification, conventional advertising campaigns often involve immediately displaying product advertisements directly to a user. Id. ,r 22. These campaigns, though, display advertisements without considering whether the user has seen any other content describing the company or its products. Id. Before displaying advertisements for specific products, Appellants' advertising method first introduces the user to the company to generate brand recognition, goodwill, and a positive impression. Id. For example, the method may display "content items" that broadly or generally describe the company. Id. Content items include news articles, publications, blog posts, and reviews. Id. After introducing the company, the method then presents the user with advertisements, deals, coupons, promotions, or other sales for specific products. Id. ,r 23. To support this advertising method, the invention includes a user interface for an advertiser to specify when a company's content is displayed. Id. ,r 44. For instance, using the interface, the advertiser may specify that a user trigger action ( e.g., a click) occurs before an advertisement runs. Id. ,r 45. With this invention, advertisers can conduct "highly strategic and sophisticated advertising and marketing campaigns." Id. ,r 22. Claim 1 is reproduced below: 1. A method, comprising: displaying one or more user interfaces identifying a plurality of candidate user trigger actions; receiving from a user via the one or more user interfaces: 2 Appeal2018-001998 Application 14/032,964 a specification of a first set of one or more content items and a second set of one or more content items; a selection of a user trigger action from among the plurality of candidate user trigger actions; a specification of a time range associated with the user trigger action; and an instruction that a second content item is to be displayed to one or more members of an online social network service after the one or more members have performed the user trigger action on a first content item at a time that is within the specified time range, the second content item being in the second set, the first content item being in the first set; at a first time, storing the user specification of the instruction to be accessed in association with the first content item; at a second time after the first time, causing the first content item to be displayed to a member of the online social network service; determining that the member has performed the user trigger action on the displayed first content item; in response to the determination that the member has performed the user trigger action on the displayed first content item at a time that is within the specified time range, accessing the user specification of the instruction; and causing the second content item to be displayed to the member according to the user specification of the instruction. THE EVIDENCE The Examiner relies on the following as evidence: Agarwal et al. Bedi Fontana et al. Faith et al. Thorsander et al. US 2012/0059716 Al US 2012/0272256 Al US 2012/0284108 Al US 2013/0332283 Al US 2013/0227482 Al 3 Mar. 8, 2012 Oct. 25, 2012 Nov. 8, 2012 Dec. 12, 2013 Aug. 29, 2013 Appeal2018-001998 Application 14/032,964 Michael Johnson, How to Sell Display Ads: CPM vs. CPC vs. CPA, MonetizePros, (June 13, 2013),http://monetizepros.com/blog/2013/how-to- sell-disp la y-ads-cpm-vs-cpc-vs-cpa/ ("Johnson"). THE REJECTIONS The Examiner rejects claims 1-3, 5-7, and 9-20 under 35 U.S.C. Â§ 101 as directed to patent-ineligible subject matter. Final Act. 2-5. The Examiner rejects claims 1-3, 5-7, 18, and 20 under 35 U.S.C. Â§ 103 as unpatentable over Thorsander, Faith, Agarwal, and Fontana. Final Act. 6-19. 3 The Examiner rejects claims 9-15 and 19 under 35 U.S.C. Â§ 103 as unpatentable over Thorsander, Faith, Agarwal, Fontana, and Bedi. Final Act. 19-27. The Examiner rejects claims 16 and 17 under 35 U.S.C. Â§ 103 as unpatentable over Thorsander, Faith, Agarwal, Fontana, and Johnson. Final Act. 27-29. 3 The rejection's heading includes claims 9-15 and 19. Final Act. 6. Claims 9-15 and 19, though, are not in the substantive part of the rejection. See id. at 6-19. Instead, claims 9-15 and 19 are rejected under Thorsander, Faith, Agarwal, Fontana, and Bedi. Id. at 19-27. So for the purposes of this appeal, we treat claims 9-15 and 19 as rejected under the combination including Bedi. 4 Appeal2018-001998 Application 14/032,964 THE REJECTION UNDER 35 U.S.C. Â§ 101 I. Principles of Law UnderÂ§ 101, patent-eligible subject matter is defined as "any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof." 35 U.S.C. Â§ 101. But courts have long held that laws of nature, natural phenomena, and abstract ideas are not patentable. Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 70-71 (2012) (citing Diamond v. Diehr, 450 U.S. 175, 185 (1981)). These ineligible concepts are implicit exceptions to the statutory categories. Id. at 71. The Supreme Court articulated a two-step subject-matter eligibility test in Mayo and Alice Corp. v. CLS Bank International, 573 U.S. 208 (2014). Alice/Mayo step one asks whether a claim is "directed to" a judicial exception. Alice, 573 U.S. at 217. In Alice/Mayo step two, we 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." Id. ( quoting Mayo, 566 U.S. at 79, 78). Step two is described as a search for an "inventive concept." Id. The USPTO recently published revised guidance on patent subject matter eligibility. 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (USPTO Jan. 7, 2019) ("Guidance"). Step 1 of the USPTO's eligibility analysis asks whether the claimed subject matter falls within the four statutory categories of invention. Id. at 53-54. Under Step 2A, Prong One of the Guidance, we determine if the claim recites a judicial exception, including particular groupings of abstract ideas (i.e., mathematical concepts, certain methods of organizing human activity, or 5 Appeal2018-001998 Application 14/032,964 mental processes). Id. at 52-53. If so, we then analyze the claim to determine whether the recited judicial exception is integrated into a practical application under Step 2A, Prong Two of the Guidance. Id. at 53-55; MPEP Â§Â§ 2106.05(a}-(c), (e}-(h) (9th ed. Rev. 08.2017, Jan. 2018). Only if the claim fails to integrate the exception and thus is "directed to" the judicial exception, do we then look to whether the claim adds a specific limitation beyond the judicial exception that is not "well- understood, routine, conventional activity in the field" (see MPEP Â§ 2106.05(d)) or whether the claim simply appends well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception. Guidance, 84 Fed. Reg. at 56. II. The Examiner's Rejection The Examiner determines that representative4 claim 1 is directed to an abstract idea. Final Act. 2. According to the Examiner, claim 1 is similar to ineligible claims "relating to advertising, marketing and sales activities or behaviors." Ans. 3. The Examiner determines that "allowing users to specify what actions" trigger content is a "marketing problem," not a technical problem. Id. The Examiner determines that the additional elements do not amount to significantly more than the abstract idea. Id.; Final Act. 3--4. The Examiner also discusses other abstract concepts. See, e.g., Final Act. 2 ( discussing comparing information). 4 Appellants argue claims 1-3, 5-7, and 9-20 as a group. See App. Br. 8- 15. We select claim 1 as representative of claims 1-3, 5-7, and 9-20. See 37 C.F.R. Â§ 4I.37(c)(l)(iv). 6 Appeal2018-001998 Application 14/032,964 III. Does the claim recite ajudicial exception? A. Step 2A, Prong One of the Guidance Viewing the Examiner's rejection through the lens of the Guidance, we first consider whether the claim recites a judicial exception. Guidance, 84 Fed. Reg. at 51. The Guidance synthesizes the key concepts identified by the courts as abstract ideas into three primary subject-matter groupings: mathematical concepts, certain methods of organizing human activities, and mental processes. Id. at 52. For the reasons discussed below, claim 1 recites an abstract idea that falls in the Guidance's subject-matter grouping of certain methods of organizing human activity. See Ans. 3 ( discussing "advertising, marketing and sales activities or behaviors"). Certain methods of organizing human activity include commercial or legal interactions, including advertising, marketing, or sales activities. Guidance, 84 Fed. Reg. at 52. Claim 1 at least recites advertising and marketing activities, which fall within this grouping. In particular, advertisers can use the invention to conduct advertising and marketing campaigns. Spec. ,r 22. The invention includes a user interface for an advertiser to specify instructions for displaying a company's content. Id. ,r 44. Considering claim 1 as a whole, the recited method receives information about the advertising campaign and then carries out the campaign. In the following sections, we discuss each limitation of the abstract idea in detail and explain why the claim recites an abstract idea similar to those in the Guidance's grouping of certain methods of organizing human activity. 7 Appeal2018-001998 Application 14/032,964 B. Creating the Advertising and Marketing Campaign Claim 1 recites several limitations to creating the advertising and marketing campaign. In particular, claim 1 recites, in part, "a specification of a first set of one or more content items and a second set of one or more content items." This limitation relates to the content that the user wants to display. A content item can be an advertisement, among other things. Spec. ,r,r 36, 38. Because this limitation specifies which advertisements to display, it is part of creating the advertising and marketing campaign. Claim 1 further recites, in part, "a selection of a user trigger action from among the plurality of candidate user trigger actions." A user trigger action includes views, comments, shares, clicks, among other things. Id. ,r 39. It can also be a "conversion" ( e.g., the user clicks on an advertisement then completes the associated transaction) or other user responses. Id. That is, the selected user trigger actions are part of the advertising and marketing campaign because they specify when to display the content. Claim 1 further recites, in part, "a specification of a time range associated with the user trigger action." With the user interface, the advertiser may specify that a user trigger action ( e.g., a click) occurs before displaying an advertisement. Id. ,r 45. In this way, the time-range specification is part of the advertising and marketing campaign. Claim 1 further recites, in part, "an instruction that a second content item is to be displayed to one or more members of an online social network service after the one or more members have performed the user trigger action on a first content item at a time that is within the specified time range, 8 Appeal2018-001998 Application 14/032,964 the second content item being in the second set, the first content item being in the first set." This limitation recites an instruction that specifies who will see the advertisement (i.e., certain social-network members) and when they will see it. In sum, the first part of claim 1 recites receiving information to create an advertising and marketing campaign. C. Carrying Out the Advertising and Marketing Campaign The second part of claim 1 recites several limitations about carrying out the advertising campaign. Specifically, claim 1 recites, in part, "at a second time after the first time, causing the first content item to be displayed to a member of the online social network service" and "causing the second content item to be displayed to the member according to the user specification of the instruction." These steps merely display the content according to the defined advertising campaign. Because content items can be advertisements (Spec. ,r,r 36, 38), these steps cover showing advertisements. Claim 1 further recites, in part, "determining that the member has performed the user trigger action on the displayed first content item" and "the determination that the member has performed the user trigger action on the displayed first content item at a time that is within the specified time range." This recited step encompasses following the user-supplied instructions about the advertising campaign. That is, the step recites carrying out the advertising and marketing campaign that was defined by the information received in the first part of the claim. 9 Appeal2018-001998 Application 14/032,964 D. Conclusion To summarize, claim 1 recites an advertising concept that falls within the Guidance's subject-matter grouping of certain methods of organizing human activity. For all the above reasons, claim 1 recites an abstract idea. IV. Is the claim "directed to" the recited judicial exception? A. Step 2A, Prong Two of the Guidance Because claim 1 recites an abstract idea, we now proceed to determine whether the recited judicial exception is integrated into a practical application. Guidance, 84 Fed. Reg. at 51. When a claim recites a judicial exception and fails to integrate the exception into a practical application, the claim is "directed to" the judicial exception. Id. We use the term "additional elements" for claim features, limitations, or steps that the claim recites beyond the identified judicial exception. See id. at 55 n.24. In claim 1, the additional elements include (1) "displaying one or more user interfaces identifying a plurality of candidate user trigger actions," (2) "receiving from a user via the one or more user interfaces" input, (3) "at a first time, storing the user specification of the instruction to be accessed in association with the first content item," and ( 4) "accessing the user specification of the instruction." The Examiner finds that the additional elements amount to mere data gathering and impose a requirement that is no more than implementing the abstract idea on a computer. See Final Act. 3; Ans. 3. For the reasons discussed below, we agree. B. The User Interface Claim 1 recites, in part, "displaying one or more user interfaces identifying a plurality of candidate user trigger actions" and "receiving from 10 Appeal2018-001998 Application 14/032,964 a user via the one or more user interfaces" data about the advertising campaign. Appellants argue that claim 1 recites a specifically arranged user interface that allows the user to specify what user actions trigger the content display. App. Br. 12. The mere presence of a user interface here does not necessarily indicate that the additional elements integrate the judicial exception into a practical application. For example, the Federal Circuit held claims ineligible that recited a generic computer that generated menus in a graphical user interface. Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1234, 1243 (Fed. Cir. 2016), cited in MPEP Â§ 2106.05([) ("Mere Instructions To Apply An Exception"). The recited user interface here is simply used to collect data from the user about the advertising campaign. In this way, the interface amounts to data gathering and imposes a requirement that is no more than implementing the abstract idea on a computer. See Final Act. 3; Ans. 3. Thus, the recited user interface does not indicate that the judicial exception has been integrated into a practical application. We also consider whether the "additional element implements a judicial exception with, or uses a judicial exception in conjunction with, a particular machine or manufacture that is integral to the claim." Guidance, 84 Fed. Reg. at 55. To the extent that a processor is required by claim 1, it can be a general-purpose processor. Spec. ,r 77. For instance, the Specification defines a "machine" as "any collection of machines that individually or jointly execute a set ( or multiple sets) of instructions to perform any one or more of the methodologies discussed herein." Id. ,r 7 6. A general-purpose processor that merely executes the judicial exception is 11 Appeal2018-001998 Application 14/032,964 not a particular machine. Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 716-17 (Fed. Cir. 2014), cited in MPEP Â§ 2106.05(b)(I). Because the computer here merely executes the judicial exception by obtaining data about the advertising campaign, claim 1 does not recite a particular machine. For all the above reasons, the recited user interface does not indicate that the judicial exception has been integrated into a practical application. C. Storing and Accessing Data Claim 1 recites, in part, "at a first time, storing the user specification of the instruction to be accessed in association with the first content item" and "accessing the user specification of the instruction." The additional element may integrate the judicial exception when, for example, it reflects an improvement to technology or a technical field. Guidance, 84 Fed. Reg. at 55. But Appellants have not shown, for example, that the recited storing and accessing improves a computer's operating efficiency or that claim 1 stores the data in a particular way that reduces storage costs. In fact, claim 1 does not use any particular data structure. Instead, claim 1 broadly recites "storing" and accessing without more. Like the claims here, the Federal Circuit found that a server used in its ordinary capacity to store images was not an improvement to computer functionality. In re TL! Commc'ns LLC Patent Litig., 823 F.3d 607, 612-13 (Fed. Cir. 2016), cited in MPEP Â§ 2106.05([). Thus, the recited storing does not indicate that the judicial exception has been integrated into a practical application. D. The Combination Appellants argue that the claims are directed to an improvement to computer functionality. App. Br. 10. In Appellants' view, the Specification 12 Appeal2018-001998 Application 14/032,964 discloses a "technical problem caused by a network mechanism (e.g., direct display of online content without regard to online user actions, e.g., click, share, like)." Id. at 12 (citing Spec. ,r,r 21, 22, 57); see also id. at 14 ( discussing the "Internet-centric problem" and a "specific technical improvement"). Applicants argue that claim 1 is "an improvement to the software arts" (id. at 11) and presents "a technical solution necessarily rooted in computer technology" (id. at 12). It is true that an improvement to technology or a technical field indicates that the claim may have integrated the judicial exception into a practical application. Guidance, 84 Fed. Reg. at 55. But that is not the case here. Unlike the cases cited by Appellants, claim 1 lacks a technical solution to a technical problem. See App. Br. 9-11 (citing Enfzsh, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016)); App. Br. 11-12 (discussing DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014)). In Enfzsh, the Federal Circuit held that a patent-eligible claim was directed to a self-referential table, which improved computer databases. 822 F.3d at 1337. In DDR, the Federal Circuit held that the patent-eligible claim was an improvement to conventional internet protocol. 773 F.3d at 1256. By contrast, claim 1 addresses a "marketing problem." Ans. 3. In particular, the Specification explains that the invention solves problems with conventional advertising and marketing campaigns. Spec. ,r 22. These campaigns immediately display advertisements even if the user has not seen other content from the company. Id. To solve this problem, Appellants' invention includes a user interface for an advertiser to specify when to 13 Appeal2018-001998 Application 14/032,964 display a company's content. Id. ,r 44. In one example, the user can be introduced to the company and its products to generate brand recognition first. Id. ,r 22. The system then displays "content items" that broadly or generally describe the company before it shows specific advertisements. Id. ,r,r 22-23. On this record, we agree with the Examiner that Appellants have not described an improvement to technology. Ans. 3. Rather, the focus here is advertising and marketing. See id. E. Other Indicia of Integration Claim 1 does not recite the other indicia of integration listed in the Guidance. Guidance, 84 Fed. Reg. at 55. For instance, "[t]ransformation and reduction of an article 'to a different state or thing' is the clue to patentability of a process claim that does not include particular machines." Bilski, 561 U.S. at 604 (emphasis added), quoted in MPEP Â§ 2106.05(c). Yet "not all transformations ... infuse an otherwise ineligible claim with an 'inventive concept."' DDR Holdings, 773 F.3d at 1256 (Fed. Cir. 2014). Unlike the transformations found in some eligible claims, claim 1 's method does not transform a physical object or substance. See, e.g., Diehr, 450 U.S. at 184 (a process that transforms rubber). F. Conclusion For all the above reasons, claim 1 is directed to the identified abstract idea. V. Does the claim provide an inventive concept? A. Step 2B of the Guidance To determine whether a claim provides an inventive concept, the additional elements are considered-individually and in combination-to 14 Appeal2018-001998 Application 14/032,964 determine whether (1) they add a specific limitation beyond the judicial exception that is not well-understood, routine, and conventional in the field or (2) they simply append well-understood, routine, and conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception. Guidance, 84 Fed. Reg. at 56. Also, we reevaluate our conclusions about the additional elements that we presented in Step 2A, Prong Two. Id. B. The User Interface Claim 1 recites, in part, "displaying one or more user interfaces identifying a plurality of candidate user trigger actions" and "receiving from a user via the one or more user interfaces." The recited interface is a generic computer that displays information and collects data from the user. Notably, the computer can be "any collection of machines that individually or jointly execute a set ( or multiple sets) of instructions" for performing the method. Spec. ,r 7 6. Similar to the recited steps of receiving data from users and displaying content to social-network members, the Federal Circuit determined that "sending a first set of electronic messages over a network to devices" was well-understood, routine, and conventional activity in the claims at issue in OIP Technologies, Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1363 (Fed. Cir. 2015). Also, the MPEP instructs examiners that courts recognize that receiving or transmitting data over a network may be well-understood, routine, and conventional activity when claimed generically. MPEP Â§ 2106.05( d)(II)(i) ( collecting cases). 15 Appeal2018-001998 Application 14/032,964 For all these reasons, we agree with the Examiner that claim 1 merely recites a computer, in its ordinary capacity, to display an interface and receive data. Ans. 3. We also reevaluate our conclusions about whether the recited user interface integrates the abstract idea into a practical application. See supra Â§ IV.B. Because the recited user interface adds nothing more than well- understood, routine, and conventional activities, those conclusions stand. Considering both our previous conclusions and the findings about well- understood, routine, and conventional activity, we determine that the claimed method does not use the user interface in a way that indicates that the claim provides an inventive concept. C. Storing and Accessing Data Claim 1 recites, in part, "at a first time, storing the user specification of the instruction to be accessed in association with the first content item" and "accessing the user specification of the instruction." These steps merely store and retrieve the recited data. In fact, the Specification states that "instructions may be stored locally at, for example, the database 306 illustrated in FIG. 3, or may be stored remotely at a database, data repository, storage server, etc., that is accessible by the content retargeting system 300 via a network ( e.g., the Internet)." Spec. ,r 48. So at most, claim 1 recites a generic database. Like the recited storing and accessing, the Federal Circuit has recognized that a generic database may not satisfy the inventive-concept requirement. Mortg. Grader, Inc. v. First Choice Loan Servs. Inc., 811 F.3d 1314, 1324--25 (Fed. Cir. 2016). Also, the MPEP instructs examiners that courts recognize that storing and retrieving information in memory may be 16 Appeal2018-001998 Application 14/032,964 well-understood, routine, and conventional when claimed generically. MPEP Â§ 2106.05(d)(II) (citing Versata, 793 F.3d at 1334; OIP Techs., 788 F.3d at 1363). Because the steps of storing and accessing are claimed generically here, we agree with the Examiner that these additional elements are well-understood, routine, and conventional in the field. See Final Act. 3--4. We also reevaluate our conclusions about whether the recited storing and accessing steps integrate the abstract idea into a practical application. See supraÂ§ IV.C. Because the recited storing and accessing steps add nothing more than well-understood, routine, and conventional activities, those conclusions stand. Considering both our previous conclusions and the findings about well-understood, routine, and conventional activity, we determine that the storing and accessing steps do not indicate that the claim provides an inventive concept. D. The Combination Appellants argue that, considering the limitations in combination, claim 1 recites significantly more than the abstract idea. App. Br. 13-15 (discussing BASCOM Glob. Internet Servs, Inc. v. AT&T Mobility LLC, 827 F.3d 1341, 1350-51 (Fed. Cir. 2016)); see also Reply Br. 4. The claims in BASCOM, however, involved an inventive distribution of function between a local computer and a server. See 827 F.3d at 1350- 51. In BASCOM, the Federal Circuit noted "[t]he inventive concept described and claimed in the '606 patent is the installation of a filtering tool at a specific location, remote from the end-users, with customizable filtering features specific to each end user." Id. at 1350. "Because the filtering tool on the ISP server contains each user's customized filtering mechanism, the 17 Appeal2018-001998 Application 14/032,964 filtering tool working in combination with the ISP server can apply a specific user's filtering mechanism to the websites requested by that user." Id. at 1345. Here, Appellants do not identify any inventive concept in the recited combination of steps or any specific arrangement of computing components. See App. Br. 13-15. Nor do we find any. Instead, Appellants argue that the "novel approach allows particular content to be displayed to a user in response to pre-specified user online interactions." Id. at 11. In Appellants' view, "[t]he specification discusses an Internet-centric problem, namely direct display of content without regard to user actions." Id. at 14 ( citing Spec. ,r 22). The improvement that Appellants describe is to advertising, which is part of the abstract idea. In particular, the cited part of the Specification discusses how the invention allows for "highly strategic and sophisticated advertising and marketing campaigns." Spec. ,r 22. Yet"[ w ]hat is needed is an inventive concept in the non-abstract application realm." SAP Am., Inc. v. InvestPic, LLC, 898 F.3d 1161, 1168 (Fed. Cir. 2018). "[A] claim for a new abstract idea is still an abstract idea." Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1151 (Fed. Cir. 2016). On this record, the limitations----considered individually and in combination----do not provide an inventive concept. Final Act. 3-5. E. Conclusion Appellants have not persuaded us of error in the rejection of claim 1 under 35 U.S.C. Â§ 101. Thus, we sustain theÂ§ 101 rejection of representative claim 1 and claims 2, 3, 5-7, and 9-20, which are not argued separately. See supra n.4. 18 Appeal2018-001998 Application 14/032,964 THE OBVIOUSNESS REJECTION OVER THORSANDER, FAITH, AGARWAL, AND FONTANA The Limitation at Issue Claim 1 recites, in part, "receiving from a user via the one or more user interfaces: ... a selection of a user trigger action from among the plurality of candidate user trigger actions." The Examiner's Findings The Examiner finds that claim 1 's subject matter would have been obvious in view of Thorsander, Faith, Agarwal, and Fontana. Final Act. 6- 15. According to the Examiner, Thorsander teaches "displaying one or more user interfaces identifying a plurality of candidate user trigger actions." Id. at 7 (citing Thorsander ,r,r 17, 38, 44). The Examiner, though, determines that Thorsander's interface lacks the recited user-trigger-action selection. Id. at 6-9. For this feature, the Examiner cites Faith. Id. at 9-11. The Examiner finds that Faith teaches selectable trigger actions, which include saving coupons or sharing them. Ans. 5. The Examiner concludes that it would have been obvious to add Faith's actions to Thorsander's user interface. Final Act. 13. Appellants' Contentions Appellants argue that the proposed combination lacks a selection of a trigger action from candidate actions. App. Br. 20-21; Reply Br. 6. According to Appellants, Faith uses different event handlers, but the user does not select those handlers from candidates. App. Br. 20. Analysis For the reasons discussed below, we are persuaded by Appellants' argument. 19 Appeal2018-001998 Application 14/032,964 As to the recited "selection of a user trigger action from among the plurality of candidate user trigger actions," Figure 7, below, shows a user interface for this selection. Fig. 7. Set.User.Trig:9erAction View iâ€¢Click ;:uke Comment â€¢ Share Â· .. Â·Â·.Â·Â·.Follow Â·â€¢ Conversion .Â·Â· Hover Â·â€¢ .. /Hide /" 70.2 ..... , 703 â€¢"""-'""""""'" . . ....../ """"""""' I !\d.iust â€¢ f\dJust content I context â€¢â€¢ display time Â·Â·Â·700 In Figure 7' s interface, an advertiser may select a radio button, which sets the trigger action to a view, click, like, among other actions. Spec. ,r 45. The invention may display a content item (e.g., an advertisement) only after the user has performed the selected trigger action. Id. ,r 36. Although this example is non-limiting, it nevertheless informs our understanding of the 20 Appeal2018-001998 Application 14/032,964 recited "selection of a user trigger action from among the plurality of candidate user trigger actions." The Examiner finds that Thorsander teaches the recited user interface, except for the selection. Final Act. 6-9. In particular, Thorsander teaches a sidebar-menu system. Thorsander ,r 34. The sidebar's icons represent operational shortcuts. Id. For example, Thorsander uses this sidebar in an email application, as shown in Figure 7 below. FIG. 7 744 ' i ~ ,:~ /r, / '-Â·' 1 """"""""'"""""""""'~"""""" ~r:::\o:< --.. Â· .-_..,_ .. -Â· 750 ,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,,. ---Â·"""""""""""""" B M~f-~ (I '::i,$il~'t ,, _, 7 63 ..... Â· Â· Â· Â· Â· Â· Â· Â· Â· Â· Â· Â· j ~ Fl-::n r-~ . ...- '?6.5: ---- ( 7{)2 Figure 7, above, shows sidebar 444 with email actions---e.g., replying ( 461 ), forwarding (462), among others. Id. ,r,r 9, 136, 155. The Examiner has not adequately explained how Thorsander' s email interface would have been modified by Faith's coupon interface. Accord App. Br. 20. For example, the Examiner explains that "merchants desire the widest distribution of content allowing users to share content across social networking services." Final Act. 13. The Examiner, though, does not 21 Appeal2018-001998 Application 14/032,964 adequately explain why this content sharing would lead a skilled artisan to add user-selectable trigger candidates to Thorsander's sidebar-menu system. See id. Unlike Thorsander's email client, Faith's interface relates to coupons. Faith ,r 86. In Faith's interface, the user can select a "Use Coupon" button to access the website of the merchant offering the coupon. Id. Faith has event handlers for clicking, moving, and touching. Id. We agree with Appellants that Faith only teaches event handlers and lacks selecting trigger actions from among candidates. App. Br. 20-21. Nor has the Examiner explained how Thorsander' s interface would have been modified by Faith's teachings to arrive at this limitation. See id. Indeed, Faith's users select coupons, not the candidate triggers. Faith ,r 86. So at best, these user selections are trigger actions themselves, not candidates. See id. On this record, the Examiner has not shown how Faith cures Thorsander's deficiencies. The Examiner does not rely on the additional references for the recited candidate-selection interface. See Final Act. 6-15. Thus, we agree that the Examiner has not shown that the proposed combination teaches or suggests the recited selection. App. Br. 20-21; Reply Br. 6. Appellants present other arguments. See App. Br. 15-21. But we find that the candidate-selection argument is dispositive here. Thus, we do not sustain the obviousness rejection of claim 1 under Â§ 103. We also do not sustain the rejection of claims 18 and 20 underÂ§ 103, which recite "candidate user trigger actions" and are rejected under the same rationale. Final Act. 6-15. 22 Appeal2018-001998 Application 14/032,964 For the same reasons, we do not sustain the rejection of dependent claims 2, 3, and 5-7. THE REMAINING OBVIOUSNESS REJECTIONS Claims 9-17 and 19 directly or indirectly depend from one of claims 1 and 18. The additional references used to reject claims 9-17 and 19 do not cure the deficiency discussed above. Final Act. 19-29. Thus, we do not sustain the Examiner's rejections of claims 9-17 and 19 underÂ§ 103 for the same reasons discussed above concerning claims 1 and 18. CONCLUSIONS We sustain the rejection of claims 1-3, 5-7, and 9-20 under 35 U.S.C. Â§ 101 as directed to patent-ineligible subject matter. We do not sustain the rejection of claims 1-3, 5-7, and 9-20 under 35 U.S.C. Â§ 103. DECISION Because we affirm at least one ground of rejection with respect to each claim on appeal, the Examiner's decision rejecting claims 1-3, 5-7, and 9-20 is affirmed. See 37 C.F.R. Â§ 4I.50(a)(l). No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a)(l )(iv). AFFIRMED 23