iHeartCommunications, Inc.

Patent Trials and Appeals Board

Oct 28, 2021

2021000489 (P.T.A.B. Oct. 28, 2021)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
15/210,137 07/14/2016 Marcel Henry Walden 382-OMR-12-2015 7611
86548 7590 10/28/2021
Garlick & Markison (IH)
100 Congress Avenue, Suite 2000
Austin, TX 78701
EXAMINER
RETTA, YEHDEGA
ART UNIT PAPER NUMBER
3688
NOTIFICATION DATE DELIVERY MODE
10/28/2021 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
MMurdock@TEXASPATENTS.COM
bpierotti@texaspatents.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte MARCEL HENRY WALDEN and RYAN R. SULT

Appeal 2021-000489
Application 15/210,137
Technology Center 3600
____________

Before CYNTHIA L. MURPHY, KENNETH G. SCHOPFER, and
TARA L. HUTCHINGS, Administrative Patent Judges.

MURPHY, Administrative Patent Judge.

DECISION ON APPEAL
The Appellant1 appeals from the Examiner’s rejections of claims 1, 2,
4–13, and 15–20 under 35 U.S.C. § 101 (Rejection I) and 35 U.S.C. § 103
(Rejections II and III). We sustain at least one rejection for each claim on
appeal, therefore, we AFFIRM.2

1 The Appellant is the “applicant” (e.g., “the inventor or all of the joint
inventors” as defined in 37 C.F.R. § 1.42. “The real party in interest is
iHeartCommunications, Inc.” (Appeal Br. 1.)
2 We have jurisdiction over this appeal under 35 U.S.C. § 134 and
35 U.S.C. § 6(b).
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THE APPELLANT’S INVENTION
The Appellant’s invention “relates to systems and methods of
inserting provider identifier announcements in a media stream.” (Spec. ¶ 1.)
A user, and more particularly, a user’s “client device,” can “receive a
media stream corresponding to an internet radio station from [a] media
provider.” (Spec. ¶ 2.) For example, “[t]he media provider may provide a
media stream including content items (e.g., music tracks) associated with the
selected station to the client device.” (Id.)
The media provider “may insert a provider identifier announcement
[(PIA)] that identifies the media provider in the media stream.” (Spec. ¶ 3.)
This insertion is done so that the user “associate[s] a positive media
streaming experience with the media provider.” (Id.) And, due to the
insertion of the PIA, the user may “choose to listen to another media stream
from the same media provider because of the positive association with the
media provider.” (Id.) Thus, a PIA is an advertisement for the media
provider.
The Appellant’s invention involves the selection of a commercially
valuable PIA for insertion into the media stream. To this end, the PIA is
selected to “closely correspond to the tastes and preferences of the user.”
(Spec. ¶ 24.) For example, “a PIA included in a media stream associated
with a specific artist may include a voice recording of the artist.” (Id. ¶ 21.)
“The user may be less likely to perceive the PIA as an unwelcome
interruption” when it corresponds to this artist, “resulting in an improved
user experience.” (Id. ¶ 24.) Put another way, “[t]he user may be more
receptive to the PIA because the PIA is targeted to the tastes and preferences
of the user.” (Id.) Thus, a selected PIA is a targeted advertisement.
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With the Appellant’s invention there is “a plurality of PIAs that are
available for inclusion” in a media stream. (Spec. ¶ 22.) One of the PIAs is
selected “for inclusion in a particular media stream to be delivered to a
particular user during a particular session at a particular time.” (Id.)
“[S]election criterion may indicate conditions when the PIA is to be included
in the media stream.” (Id.)
In the claims on appeal, the selection criterion corresponds to a “two-
to-start mode.” (Spec. ¶ 22.) “The two-to-start mode may indicate that the
PIA is to be included in the media in response to determining that the media
stream includes at least two consecutive content items associated with the
same artist as the PIA.” (Id.)
ILLUSTRATIVE CLAIM
1. A system comprising:
a memory configured to store provider identifier
announcements based on a connection to a playlist
manager processing device; and
a playlist manager coupled to the memory and configured to:
generate, during a media streaming session between a
device associated with a provider and a client
device, a media stream at the device, the media
stream including multiple content items;
determine a weight for each of a plurality of provider
identifier announcements, each weight
representing a value associated with a placement
order of a corresponding provider identifier
announcement in the plurality of provider
identifier announcements with respect to the media
stream, wherein each of the plurality of provider
identifier announcements identifies the provider;
and
during the media streaming session, insert a particular
provider identifier announcement of the plurality
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of provider identifier announcement in the media
stream based on a particular weight, the particular
weight based on selection criterion associated with
the particular provider identifier announcement,
and the selection criterion corresponding to a two-
to-start mode.
SUMMARY OF CLAIMED SUBJECT MATTER
Claims 1, 12, and 18 are the independent claims on appeal, with the
rest of the claims on appeal depending therefrom. (See Appeal Br., Claims
App.)3 Independent claim 1 recites a “system,” and independent claim 12
recites a “method,” that inserts “a particular provider identifier
announcement” in a media stream. (Id.) Independent claim 18 recites
instructions that, when executed by a processor, cause the processor to
perform such an insertion. (See id.)
According to the Appellant, “the pending claims are directed to
improvements of media generating systems and methods for inserting
provider identifier announcements in media streams to provide a better
experience for a listener.” (Appeal Br. 10.)
REJECTION I — 35 U.S.C. § 101
The Examiner rejects claims 1, 2, 4–13, and 15–20 under 35 U.S.C.
§ 101 as directed to a judicial exception without significantly more. (Final
Act. 2.)

3 The Appellant does not argue the dependent claims separately. (See
Appeal Br. 4–28, Reply Br. 1–9.)
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Analysis
The 2019 Revised Patent Subject Matter Eligibility Guidance (“2019
Guidance”) provides us with specific steps for discerning whether a claim
passes the Alice framework for patent eligibility. (See Federal Register Vol.
84, No. 4, 50–57.)4 These steps are “[i]n accordance with judicial
precedent” and consist of a two-pronged Step 2A and a Step 2B. (Id. at 52.)
In the first prong of Step 2A (Prong One), we evaluate whether the
claim “recites” a judicial exception, such as an abstract idea. (2019
Guidance, Federal Register Vol. 84, No. 4, 54.) The 2019 Guidance
“extracts and synthesizes key concepts identified by the courts as abstract
ideas,” and these concepts include “[c]ertain methods of organizing human
activity,” and, more particularly “commercial” interactions, and, even more
particularly, “advertising.” (Id. at 52.) For example, in Intellectual Ventures
I LLC v. Capital One Bank (USA), 792 F.3d 1363 (Fed. Cir. 2015), the
Federal Circuit held that “tailoring information” presented in an
advertisement (i.e., targeted advertising) is “an abstract, overly broad
concept long-practiced in our society.” (Id. at 1370.) Likewise, in
Customedia Technologies, LLC v. Dish Network Corporation, 951 F.3d
1359 (Fed. Cir. 2020), the Federal Circuit has held that “using a computer to
deliver targeted advertising to a user” is an abstract idea. (Id. at 1362.)

4 In Alice Corp. v. CLS Bank Int’l, 573 U.S. 208 (2014), the Supreme Court
provided a two-step framework to guard against an attempt to patent purely
an abstract idea. (Id. at 217–18.) In the first step of the Alice framework, a
determination is made as to whether the claim at issue is “directed to” an
abstract idea. (Id. at 218.) In the second step of the Alice framework, a
determination is made as to whether additional elements transform the claim
into something “significantly more” than the abstract idea. (Id. at 218–19.)
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Independent claims 1, 12, and 18 set forth the generation of a “media
stream including multiple content items,” “a plurality of provider identifier
announcements,”5 and the insertion of “a particular provider identifier
announcement” in the media stream. (Appeal Br., Claims App.) Thus,
claims 1, 12, and 18 set forth content into which an advertisement can be
inserted, possible advertisements for insertion into this content, and the
insertion of one of these possible advertisements into the content. These
features are traditional hallmarks of targeted advertising.
Independent claims 1, 12, and 18 set forth the determination of “a
weight for each of [the] plurality of provider identifier announcements” in
which each weight represents “a value associated with a placement order of
a corresponding provider identifier announcement in the plurality of
provider identifier announcements with respect to the media stream.”
(Appeal Br., Claims App.) Thus, claims 1, 12, and 18 set forth that all of the
possible advertisements are ranked in accordance with their targeting
potential. This is also a hallmark of targeted advertising.
Independent claims 1, 12, and 18 set forth that the “particular weight”
for each of the plurality of provider identifier announcements is “based on
selection criterion associated with the particular provider identifier
announcement.” (Appeal Br., Claims App.) Thus, claims 1, 12, and 18 set
forth that the ranking of the advertisements according to their targeting
potential takes into consideration the commercial strategy of each
advertisement. This is also a hallmark of targeted advertising.

5 As it is the provider that is being advertised, “each of the plurality of
provider identifier announcements identifies the provider.” (Appeal Br.,
Claims App.)
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Independent claims 1, 12, and 18 set forth that the insertion of the
particular provider identifier announcement in the media stream is “based on
[the] particular weight” determined for this announcement. In the
Appellant’s words, “[t]he systems and methods determine a weight for each
of a plurality of provider identifier announcements for insertion into the
media stream based on the weight.” (Appeal Br. 7.) Thus, claims 1, 12,
and 18 set forth that the advertisement with the best targeting potential is
selected for insertion. This is also a hallmark of targeted advertising.
Independent claims 1, 12, and 18 set forth the selection criterion
corresponds to “a two-to-start mode.” (Appeal Br., Claims App.) Per the
Specification, “[t]he two-to-start mode may indicate that the PIA is to be
included in the media in response to determining that the media stream
includes at least two consecutive content items associated with the same
artist as the PIA.” (Spec. ¶ 22.) Insofar as such a two-to-start mode is not
commonplace in targeted advertising, “[t]his kind of narrowing” does “not
make the idea non-abstract for section 101 purposes.” (buySAFE, Inc. v.
Google, Inc., 765 F.3d 1350, 1355 (Fed. Cir. 2014).)
Consequently, under Prong One of Step 2A, the independent claims
recite targeted advertising, which is an abstract idea; and we proceed to the
second prong of Step 2A (Prong Two).
In the second prong of Step 2A (Prong Two), we evaluate whether the
claim contains additional elements that “integrate” the abstract idea “into a
practical application.” (2019 Guidance, Federal Register Vol. 84,
No. 4, 54.) “[A]dditional elements” are “claim features, limitations, and/or
steps that are recited in the claim beyond the identified judicial exception.”
(Id. at 55, n.24.)
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Independent claim 1 recites a “memory,” a “playlist manager
processing device,” and a “playlist manager.” (Appeal Br., Claims App.)
The memory is “configured to store provider identifier announcements based
on a connection to [the] playlist manager processing device.” (Id.) The
playlist manager is “coupled to the memory” and “configured to” perform
the above-discussed operations, which are embedded in the abstract idea of
targeted advertising. (Id.) Independent claims 12 and 18 likewise recite a
“memory” and a “playlist manager processing device.” (Id.) We agree with
the Examiner that these computer components are “generic” and “recited at a
high level of generality.” (Final Act. 2, see also Spec. ¶¶ 130–135, Fig. 10.)
Thus, these computer-related limitations do nothing more than “use[] a
computer as a tool to perform [this] abstract idea.” (2019 Guidance, Federal
Register Vol. 84, No. 4, 55.)
Consequently, under Prong Two of Step 2A, the claims’ additional
elements do not integrate the abstract idea into a practical application, and
we proceed to Step 2B.
In Step 2B, we evaluate whether “additional elements recited in the
claim[] provide[] ‘significantly more’ than the recited judicial exception.”
(2019 Guidance, Federal Register Vol. 84, No. 4, 56.) More particularly, we
evaluate whether these additional elements “[a]dd[] a specific limitation or
combination of limitations that are not well-understood, routine,
conventional activity,” or whether they instead “simply append[] well-
understood, routine, conventional activities previously known to the
industry, specified at a high level of generality, to the judicial exception.”
(Id.) Here, the Specification conveys that the claims’ additional elements
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(i.e., computer components), and the arrangement thereof, are well-
understood, routine, and conventional. (See Spec. ¶¶ 130–135, Fig. 10.)
Consequently, under Step 2B, the claims’ additional elements do not
provide significantly more than the recited abstract idea. We therefore agree
with the Examiner that the claims on appeal fail the Alice framework for
patent eligibility.
The Appellant’s Arguments
The Appellant advances arguments premised upon the claims reciting
computer components. (See, e.g., Appeal Br. 7, 12, Reply Br. 5.) We are
not persuaded by these arguments because when an additional element in a
claim is a “computer,” the relevant question is not whether the claim
requires the computer to accomplish a recited function. (Alice, 573 U.S.
at 223.) Rather, “the relevant question” is whether the claim does more than
simply “instruct the practitioner to implement the abstract idea” on a
computer. (Id. at 225.) The mere recitation of a computer in the claim,
and/or words simply saying “apply” the abstract idea “with a computer,”
will not transform the abstract idea into a patent-eligible invention.” (Id.
at 223.) In short, the sheer introduction of a computer into a claim is not
enough to “impart patent eligibility.” (Id.)6 In particular, “using a computer
to deliver targeted advertising to a user” is an abstract idea. (Customedia,
951 F.3d at 1362.)

6 “Given the ubiquity of computers, wholly generic computer
implementation is not generally the sort of ‘additional featur[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 (alterations in original) (citation omitted).)
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The Appellant advances arguments premised upon the claims being
directed to improvements and/or inventive concepts because they “provide a
better experience for a listener than in well-known, routine, and
conventional systems.” (Appeal Br. 15, see also id. at 10, 17, 20, Reply
Br. 4.) We are not persuaded by these arguments because, as pointed out by
the Examiner, this is not “a technological solution to a technical problem.”
(Ans. 4.) A “better experience for a listener” is a commercial objective of a
media provider who provides content items to a user. As acknowledged by
the Appellant, the result is “the user may associate a positive media
streaming experience with the media provider and choose to listen to another
media stream from the same media provider because of the positive
association with the media provider.” (Appeal Br. 10–11.)
The Appellant advances arguments premised upon the pending claims
being novel and non-obvious over the prior art. (See Appeal Br. 18, 19, 23,
Reply Br. 8.) We are not persuaded by these arguments because neither a
finding of novelty nor a non-obviousness determination automatically leads
to the conclusion that the claimed subject matter is patent eligible. A novel
and non-obvious claim that attempts to cover a purely abstract idea is
nonetheless patent ineligible. (See Mayo Collaborative Services v.
Prometheus Laboratories, Inc., 566 U.S. 66, 90 (2012).) And “using a
computer to deliver targeted advertising to a user” is an abstract idea.
(Customedia, 951 F.3d at 1362.) This is true even if the claimed targeted
advertising is novel and non-obvious over previously-known targeted
advertising.
The Appellant advances arguments premised upon the claims not
preempting all other systems and methods from practicing the concept of
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selecting announcements for insertion into media streams. (See Appeal
Br. 13, 14.) We are not persuaded by these arguments because although
“preemption may signal patent ineligible subject matter, the absence of
complete preemption does not demonstrate patent eligibility.” (Ariosa
Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015).)
Where, as here, the claims are deemed only to disclose patent ineligible
subject matter under the Alice framework, “preemption concerns are fully
addressed and made moot.” (Id.)
Thus, we sustain the Examiner’s rejections of claims 1, 2, 4–13, and
15–20 under 35 U.S.C. § 101.
REJECTIONS II and III — 35 U.S.C. § 103
The Examiner rejects claims 1, 2, 4–10, 12, 13, and 15–20 under
35 U.S.C. § 103 as unpatentable over Richman,7 DiLorenzo,8 and
Venkataraman.9 (Final Act. 4.) The Examiner rejects claim 11 under
35 U.S.C. § 103 as unpatentable over Richman, DiLorenzo, Venkataraman,
and Jain.10 (Id. at 5.)
Analysis
As indicated above, the independent claims on appeal require the
insertion of the particular provider identifier announcement to be based on
“selection criterion” corresponding to “a two-to-start mode.” (Appeal Br.,
Claims App.) The Specification defines a “two-to-start mode” as indicating

7 US 2016/0189222 A1, published June 30, 2016.
8 US 7,882,140 B1, issued February 1, 2011.
9 US 2010/0211442 A1, published August 19, 2010.
10 US 2010/0070876 A1, published March 18, 2010.
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that “the PIA is to be included in the media in response to determining that
the media stream includes at least two consecutive content items associated
with the same artist as the PIA.” (Spec. ¶ 22, see also id. ¶ 42.)
The Examiner’s obviousness rejections are premised upon DiLorenzo
teaching the two-to-start mode required by the claims. (See Final Act. 4–5.)
DiLorenzo discloses a system for inserting “secondary content,” such as
“advertisement []or promotional material,” into “primary content” such as
“music.” (DiLorenzo c1:7–10.) DiLorenzo’s system “may begin to play the
primary content of a primary play list and periodically pause primary content
playing in order to play a piece of secondary content.” (Id. at c5:22–25.)
For example, “integration rules” could “require the insertion of a piece of
secondary content” (i.e., an advertisement) “after every fifth piece of
primary content” (i.e., musical content items). (Id. at c5:25–27.)
With DiLorenzo’s insertion technique, a “counter” increments “one
value for each piece of primary content played.” (DiLorenzo c5:29–32.)
“Once the prescribed counter value is met, primary content play would
pause, the piece of secondary content would be played and the counter
would be reset to zero.” (Id. at c5:30–32.) Thus, if the counter value is set
at two, there would be a pause after two musical content items and the
advertisement would be played.
According to the Examiner, “a two-to-start mode could also mean
inserting ad or announcement every two consecutive media (any two
consecutive songs).” (Ans. 5.) However, we agree with the Appellant that
the Examiner “has improperly attempted to broaden the definition beyond
the scope of the [S]pecification in order to support the claim rejections.”
(Reply Br. 9.) As indicated above, the Specification defines a “two-to-start
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mode” as indicating that “the PIA is to be included in the media in response
to determining that the media stream includes at least two consecutive
content items associated with the same artist as the PIA.” (Spec. ¶ 22.) And
the Examiner has failed to establish that this defined mode is shown or
suggested in the prior art.
Thus, we do not sustain the Examiner’s rejections of claims 1, 2,
4–13, and 15–20 under 35 U.S.C. § 103.
CONCLUSION
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 2, 4–13,
15–20
101 Eligibility 1, 2, 4–13,
15–20

1, 2, 4–10,
12, 13, 15–20
103 Richman,
DiLorenzo,
Venkataraman
1, 2, 4–10,
12, 13,
15–20
11 103 Richman,
DiLorenzo,
Venkataraman,
Jain
11
Overall
Outcome
1, 2, 4–13,
15–20

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED