International Business Machines Corporation

Patent Trials and Appeals Board

Aug 10, 2020

2019003444 (P.T.A.B. Aug. 10, 2020)

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.
14/278,719 05/15/2014 Subil M. Abraham END920140021US1_8134-0079 8774
73109 7590 08/10/2020
Cuenot, Forsythe & Kim, LLC
20283 State Road 7
Ste. 300
Boca Raton, FL 33498
EXAMINER
ABDI, KAMBIZ
ART UNIT PAPER NUMBER
3688
NOTIFICATION DATE DELIVERY MODE
08/10/2020 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):
ibmptomail@iplawpro.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte SUBIL M. ABRAHAM, PRAVEEN B. DHARMAVARAM,
KIRTANA RAJA, and MATHEWS THOMAS
____________________

Appeal 2019-003444
Application 14/278,719
Technology Center 3600
____________________

Before ALLEN R. MacDONALD, JEREMY J. CURCURI, and
AMBER L. HAGY, Administrative Patent Judges.

MacDONALD, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 21–35. Appeal Br. 1. Appellant has
cancelled claims 1–20. Final Act. 2. We have jurisdiction under 35 U.S.C.
§ 6(b). We AFFIRM.

1 Appellant identifies the real party in interest in the present appeal is IBM
Corporation. Appeal Br. 1.
Appeal 2019-003444
Application 14/278,719

2
CLAIMED SUBJECT MATTER
Claims 21–23 are illustrative of the claimed subject matter:
21. A computer-implemented method, comprising:
[A.] presenting, to a first user, a single video stream that
includes a plurality of video portions and presents a
particular subject;
[B.] receiving, from the first user and while the single
video stream is being presented, a first user feedback
that indicates one of the plurality of video portions;
[C.] automatically storing, by a computer device and
responsive to the first user feedback being received, an
association between the first user and the first user
feedback;
[D.] receiving, from the first user, a second user feedback
that indicates a modification, preferred by the first
user, to a characteristic of the particular subject; and
[E.] presenting, to the first user and based upon the
association and the second user feedback, video
content other than the single video stream that
includes the modification to a characteristic of a
different particular subject.
22. The method of claim 21, wherein
the video content other than the single video stream is
presented to a second user and includes the modification
to the characteristic of the particular subject.
23. The method of claim 21, wherein
the first user feedback includes first user content,
generated by the first user, and recorded in a content
format selected from a group consisting of a video
format, an audio format and a multimedia format;
the first user content is embedded in the one of the
plurality of video portions; and
the first user content is presented to the second user.
Appeal 2019-003444
Application 14/278,719

3
Appeal Br. 20–21 (emphasis, formatting, and bracketed material
added).

REFERENCES
The Examiner relies on the following reference:
Name Reference Date
Gentile US 2010/0027961 A1 Feb. 4, 2010
Fama US 2010/0153847 A1 June 17, 2010
Senftner US 2010/0202750 A1 Aug. 12, 2010
Levi US 2012/0004971 A1 Jan. 5, 2012
Amento US 2012/0089437 A1 Apr. 12, 2012

REJECTION2
A.
The Examiner rejects claims 21–35 under 35 U.S.C. § 101 because
“the claimed invention is directed to a judicial exception (i.e., a law of
nature, a natural phenomenon, or an abstract idea) without significantly
more” (Final Act. 3), i.e., the claimed invention is directed to patent-
ineligible subject matter. Final Act. 3–4.
We select claim 21 as representative. See 37 C.F.R. § 41.37(c)(1)(iv).
Appellant does not separately argue claims 22–35. Except for our ultimate
decision, we do not discuss the merits of the § 101 rejection of claims 22–35
further herein.
B.
The Examiner rejects claims 23–25, 28–30, and 33–35 under
35 U.S.C. § 112(b) as being indefinite. Final Act. 6.

2 All citations to the “Final Act.” are to the Final Action mailed on March 2,
2018.
Appeal 2019-003444
Application 14/278,719

4
We select claim 23 as the representative claim for this rejection.
Appellant does not argue separate patentability for claim 24, 25, 28–30, and
33–35. Appeal Br. 10–11 (“[C]laims 24–25, 28–30, and 33–35 stand or fall
together with dependent claim 23”). Except for our ultimate decision, we do
not address the merits of the § 112(b) rejection of claim 24, 25, 28–30, and
33–35 further herein.
C.
The Examiner rejects claims 21, 26, and 31 under 35 U.S.C. § 103 as
being unpatentable over the combination of Amento and Senftner. Final
Act. 8–10. We select claim 21 as the representative claim for this rejection.
Appellant does not argue separate patentability for claims 26 and 31.
The Examiner rejects claims 22, 27, and 32 under 35 U.S.C. § 103 as
being unpatentable over the combination of Amento, Senftner, and Fama.
Final Act. 11. We select claim 22 as the representative claim for this
rejection. Appellant does not argue separate patentability for claims 27 and
32.
The Examiner rejects claims 23, 24, 28, 29, 33 and 34 under
35 U.S.C. § 103 as being unpatentable over the combination of Amento,
Senftner, and Levi; and the Examiner rejects claims 25, 30, and 35 under
35 U.S.C. § 103 as being unpatentable over the combination of Amento,
Senftner, and Gentile. Final Act. 12–15. To the extent that Appellant
discusses the § 103 rejections of claims 23–25, 28–30, and 33–35, Appellant
merely references the arguments directed to claim 21. Appeal Br. 17–18.
Such a referenced argument is not an argument for “separate patentability.”
Thus, Appellant does not present separate § 103 arguments for claims 23–
Appeal 2019-003444
Application 14/278,719

5
25, 28–30, and 33–35. Thus, the § 103 rejections of these claims turn on our
decision as to claim 21.
Therefore, except for our ultimate decision, we do not address the
merits of the § 103 rejections of claims 23–25, 28–30, and 33–35 further
herein.

OPINION
We have reviewed the Examiner’s rejections in light of Appellant’s
arguments that the Examiner has erred. We concur with the conclusions
reached by the Examiner. We highlight the following points.
A. Section 101
An invention is patent-eligible if it claims a “new and useful process,
machine, manufacture, or composition of matter.” 35 U.S.C. § 101.
However, the U.S. Supreme Court has long interpreted 35 U.S.C. § 101 to
include implicit exceptions: “[l]aws of nature, natural phenomena, and
abstract ideas” are not patentable. E.g., Alice Corp. v. CLS Bank Int’l, 573
U.S. 208, 216 (2014).
In determining whether a claim falls within an excluded category, we
are guided by the Court’s two-part framework, described in Mayo and Alice.
Id. at 217–18 (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc.,
566 U.S. 66, 75–77 (2012)). In accordance with that framework, we first
determine what concept the claim is “directed to.” See Alice, 573 U.S. at
219 (“On their face, the claims before us are drawn to the concept of
intermediated settlement, i.e., the use of a third party to mitigate settlement
risk.”); see also Bilski v. Kappos, 561 U.S. 593, 611 (2010) (“Claims 1 and 4
Appeal 2019-003444
Application 14/278,719

6
in petitioners’ application explain the basic concept of hedging, or protecting
against risk.”).
Concepts determined to be abstract ideas, and thus patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219–20; Bilski, 561 U.S. at 611);
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594–95 (1978)); and
mental processes (Gottschalk v. Benson, 409 U.S. 63, 67 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as “molding rubber products” (Diamond v. Diehr, 450 U.S. 175, 191
(1981)); “tanning, dyeing, making waterproof cloth, vulcanizing India
rubber, smelting ores” (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S.
252, 267–68 (1853))); and manufacturing flour (Benson, 409 U.S. at 69
(citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
In Diehr, the claim at issue recited a mathematical formula, but the
Court held that “a claim drawn to subject matter otherwise statutory does not
become nonstatutory simply because it uses a mathematical formula.”
Diehr, 450 U.S. at 187; see also id. at 191 (“We view respondents’ claims as
nothing more than a process for molding rubber products and not as an
attempt to patent a mathematical formula.”). Having said that, the Court
also indicated that a claim “seeking patent protection for that formula in the
abstract . . . is not accorded the protection of our patent laws, and this
principle cannot be circumvented by attempting to limit the use of the
formula to a particular technological environment.” Id. (citation omitted)
(citing Benson and Flook); see, e.g., id. at 187 (“It is now commonplace that
an application of a law of nature or mathematical formula to a known
structure or process may well be deserving of patent protection.”).
Appeal 2019-003444
Application 14/278,719

7
If the claim is “directed to” an abstract idea, we turn to the second part
of the Alice and Mayo framework, where “we must examine the elements of
the claim to determine whether it contains an ‘inventive concept’ sufficient
to ‘transform’ the claimed abstract idea into a patent-eligible application.”
Alice, 573 U.S. at 221 (quotation marks omitted). “A claim that recites an
abstract idea must include ‘additional features’ to ensure ‘that the [claim] is
more than a drafting effort designed to monopolize the [abstract idea].’” Id.
(alterations in original) (quoting Mayo, 566 U.S. at 77). “[M]erely
requir[ing] generic computer implementation[] fail[s] to transform that
abstract idea into a patent-eligible invention.” Id.
B. USPTO § 101 Guidance
In January 2019, the U.S. Patent and Trademark Office (USPTO)
published revised guidance on the application of § 101. 2019 Revised Patent
Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019)
(“2019 Revised Guidance”).3 “All USPTO personnel are, as a matter of
internal agency management, expected to follow the guidance.” Id. at 51;
see also October 2019 Update at 1.
Under the 2019 Revised Guidance and the October 2019 Update, we
first look to whether the claim recites:
(1) any judicial exceptions, including certain groupings of abstract
ideas (i.e., mathematical concepts, certain methods of organizing

3 In response to received public comments, the Office issued further
guidance on October 17, 2019, clarifying the 2019 Revised Guidance.
USPTO, October 2019 Update: Subject Matter Eligibility (the “October
2019 Update”) (available at https://www.uspto.gov/sites/default/files/
documents/peg_oct_2019_update.pdf).
Appeal 2019-003444
Application 14/278,719

8
human activity such as a fundamental economic practice, or mental
processes) (“Step 2A, Prong One”); and
(2) additional elements that integrate the judicial exception into a
practical application (see MPEP § 2106.05(a)–(c), (e)–(h) (9th ed.
Rev. 08.2017, Jan. 2018)) (“Step 2A, Prong Two”).4
2019 Revised Guidance, 84 Fed. Reg. at 52–55.
Only if a claim (1) recites a judicial exception and (2) does not
integrate that exception into a practical application, do we then look, under
Step 2B, to whether the claim:
(3) adds a specific limitation beyond the judicial exception that is not
“well-understood, routine, conventional” in the field (see MPEP
§ 2106.05(d)); or
(4) simply appends well-understood, routine, conventional activities
previously known to the industry, specified at a high level of
generality, to the judicial exception.
2019 Revised Guidance, 84 Fed. Reg. at 52–56.
C. Examiner’s § 101 Rejection - Alice/Mayo - Parts 1 and 2
C.1. 2019 Revised Guidance Step 2A – Prong One
Applying the Alice/Mayo analysis, the Examiner determines:
Claim 21 is directed to the abstract idea presenting video
content tailored to a user’s received preferences. The courts have
noted that “tailoring content based on information about the

4 This evaluation is performed by (a) identifying whether there are any
additional elements recited in the claim beyond the judicial exception, and
(b) evaluating those additional elements individually and in combination to
determine whether the claim as a whole integrates the exception into a
practical application. See 2019 Revised Guidance - Section III(A)(2), 84
Fed. Reg. 54–55.
Appeal 2019-003444
Application 14/278,719

9
user” (Int. Ventures v. Cap One Bank ’382 patent); “delivering
user-selected media content to portable devices[“] (Affinity Labs
v. Amazon.com); and “collecting information, analyzing it, and
displaying certain results of the collection and analysis” (Electric
Power Group) are examples of judicial exceptions or abstract
ideas. The claims disclose a comparable judicial exception - that
is – collecting user feedback, analyzing the feedback and
displaying modified content based on the user feedback.
Examiner notes that the process of
[A.] presenting, to a first user, a single video stream
that includes a plurality of video portions and
presents a particular subject;
[B.] receiving, from the first user and while the
single video stream is being presented, a first
user feedback that indicates one of the plurality
of video portions;
[C.] automatically storing responsive to the first
user feedback being received, an association
between the first user and the first user
feedback;
[D.] receiving, from the first user, a second user
feedback that indicates a modification,
preferred by the first user, to a characteristic of
the particular subject; and
[E.] presenting, to the first user and based upon the
association and the second user feedback, video
content other than the single video stream that
includes the modification to a characteristic of a
different particular subject
are all limitations that describe the abstract idea.
Final Act. 3 (emphasis, formatting, and bracketed material added).
More particularly, applying the Alice/Mayo analysis and the
2019 Revised Guidance, the Examiner determines that claim 21 recites an
abstract idea:
Appeal 2019-003444
Application 14/278,719

10
Claim 21 recites
[A.] presenting, to a first user, a single video stream
that includes a plurality of video portions and
presents a particular subject and
[E.] presenting, to the first user and based upon the
association and the second user feedback, video
content other than the single video stream that
includes the modification to a characteristic of a
different particular subject
Presenting video content tailored to a user’s received preferences
is a method of organizing human activity. Thus, the claim recites
an abstract idea.
Ans. 4 (emphasis, formatting, and bracketed material added).
C.2. 2019 Revised Guidance Step 2A – Prong Two
Further applying the Alice/Mayo analysis, the Examiner determines
claim 21 is directed to an abstract idea.
Additionally, Examiner notes that the step of automatically
storing, by a computer device and responsive to the first user
feedback being received, an association between the first user
and the first user feedback is recited at a high level of generality
and its broadest reasonable interpretation comprises only the
generic storing of data. The use of generic computers to store
data does not impose any meaningful limit on the computer
implementation of the abstract idea. Therefore, it is clear from
Applicant’s specification that the elements in the claims require
no more than a generic processor to perform generic computer
functions (e.g., displaying data, receiving data, associating data,
and storing data). . . . There is no indication that the combination
of elements improves the functioning of a computer or improves
any other technology.
Final Act. 4.
This judicial exception is not integrated into a practical
application. The claim recites the additional elements of
Appeal 2019-003444
Application 14/278,719

11
[B.] receiving, from the first user and while the single
video stream is being presented, a first user feedback that
indicates one of the plurality of video portions;
[C.] automatically storing, by a computer device and
responsive to the first user feedback being received, an
association between the first user and the first user feedback;
[D.] receiving, from the first user, a second user feedback
that indicates a modification, preferred by the first user, to a
characteristic of the particular subject.
Each of the receiving steps are recited at a high level of generality
(i.e., as a general means of receiving preferences of a user), and
amount to mere data gathering, which is a form of insignificant
extra solution activity. Further, storing an association between a
user and received user feedback is also recited at a high level of
generality and simply storing received data in generic memory is
insignificant extra solution activity that does not add a
meaningful limitation. Therefore, the claim is directed to an
abstract idea.
Ans. 4 (emphasis, formatting, and bracketed material added).
Further, as noted above, each of the receiving steps are recited at
a high level of generality (i.e., as a general means of receiving
preferences of a user), and amounts to mere data gathering,
which is a form of insignificant extra solution activity.
Ans. 5.
C.3. 2019 Revised Guidance Step 2B
Applying the Alice/Mayo analysis, the Examiner determines:
The claims do not include additional elements that are
sufficient to amount to significantly more than the judicial
exception because the additional elements when considered both
individually and as an ordered combination do not amount to
significantly more than the abstract idea. The claims recite the
additional elements of a “computer device” and “automatically
storing, by a computer device and responsive to the first user
feedback being received, an association between the first user
and the first user feedback.” Applicant’s published specification
Appeal 2019-003444
Application 14/278,719

12
paragraph [0017] teaches “the term ‘processor’ means at least
one hardware circuit (e.g., an integrated circuit) configured to
carry out instructions contained in program code. Examples of a
processor include, but are not limited to, a central processing unit
(CPU), an array processor, a vector processor, a digital signal
processor (DSP), a field-programmable gate array (FPGA), an
application specific integrated circuit (ASIC) and a controller.”
And, paragraph [0072] teaches “processor of a general purpose
computer.” . . . Thus, taken alone, the additional elements do not
amount to significantly more than the above-identified judicial
exception (the abstract idea). Looking at the limitations as an
ordered combination adds nothing that is not already present
when looking at the elements taken individually. . . . Their
collective functions merely provide conventional computer
implementation.
Final Act. 3–4.
The claims do not include additional elements that are
sufficient to amount to significantly more than the judicial
exception because the additional elements when considered both
individually and as an ordered combination do not amount to
significantly more than the abstract idea. The claim recites the
additional elements of receiving, from the first user and while the
single video stream is being presented, a first user feedback that
indicates one of the plurality of video portions; automatically
storing, by a computer device and responsive to the first user
feedback being received, an association between the first user
and the first user feedback; receiving, from the first user, a
second user feedback that indicates a modification, preferred by
the first user, to a characteristic of the particular subject. . . .
Therefore, it is clear from Appellant’s specification that the
elements in the claims require no more than a generic processor
to perform generic computer functions (e.g., displaying data,
receiving data, associating data, and storing data). Thus, taken
alone, the additional elements do not amount to significantly
more than the above-identified judicial exception (the abstract
idea). Looking at the limitations as an ordered combination adds
nothing that is not already present when looking at the elements
taken individually.
Appeal 2019-003444
Application 14/278,719

13
Ans. 4–5.
D. Appellant’s § 101 Arguments & Panel’s Analysis
D.1. 2019 Revised Guidance Step 2A, Prong 1
Examiner notes that the process of
[A.] presenting, to a first user, a single video stream
that includes a plurality of video portions and
presents a particular subject;
[B.] receiving, from the first user and while the
single video stream is being presented, a first
user feedback that indicates one of the plurality
of video portions;
[C.] automatically storing responsive to the first
user feedback being received, an association
between the first user and the first user
feedback;
[D.] receiving, from the first user, a second user
feedback that indicates a modification,
preferred by the first user, to a characteristic of
the particular subject; and
[E.] presenting, to the first user and based upon the
association and the second user feedback, video
content other than the single video stream that
includes the modification to a characteristic of a
different particular subject
are all limitations that describe the abstract idea.
Final Act. 3 (emphasis, formatting, and bracketed material added).
Appellant does not dispute the Examiner’s determination. We
determine that claim 21 recites a method of presenting video content tailored
to a user’s received preferences (i.e., collecting feedback, analyzing the
feedback, and displaying results based on the collection and analysis); and
“collecting information, analyzing it, and displaying certain results of the
collection and analysis” is a mental process as identified in the 2019
Appeal 2019-003444
Application 14/278,719

14
Memorandum, and thus an abstract idea. 84 Fed. Reg. at 52. We conclude
the Examiner correctly determines that claim 14 recites an abstract idea.5
D.2. 2019 Revised Guidance Step 2A, Prong 2
Having determined that claim 21 recites an abstract idea, we now turn
to whether claim 21 is directed to that abstract idea, or instead integrates the
judicial exception into a practical application.
The Examiner determines:
[I]t is clear from Applicant’s specification that the elements in
the claims require no more than a generic processor to perform
generic computer functions (e.g., displaying data, receiving data,
associating data, and storing data). . . . There is no indication that
the combination of elements improves the functioning of a
computer or improves any other technology.
Final Act. 4.
Appellant contends:
The claimed invention, at the very least is directed to technology
that makes modification to video streams, which is necessarily a
technological process that involves specialized machines to
accomplish. Additionally, the claimed invention improves upon
this technology by providing a mechanism that increases the
positive reaction a viewer will have to a particular video stream
by making certain changes to a video stream as dictated by the
rules described in the claims.
Appeal Br. 8.
Also, Appellant contends:
[T]he Examiner has not argued (nor established) that the claimed
invention preempts all applications of the exception.

5 Although the Examiner later (Ans. 4) determines that claim 21 recites a
presenting video content tailored to a user’s received preferences is a method
of organizing human activity and thus an abstract idea, we determine that
claim 21 recites a mental process.
Appeal 2019-003444
Application 14/278,719

15
Appeal Br. 9 (emphasis added).
The Examiner further determines:
[W]hile the claim [2]1 receives user feedback (e.g., preferences)
about video content and presents modified video content the user,
the actual step of modifying the video content based on the
feedback is not claimed. The video modifications could be
performed manually by a human being and subsequently
displayed to a user on a generic display device. There is simply
no claimed improvement to a technology as the claims amount
to nothing more than presenting video to users and receiving
and storing feedback provided by users.
Ans. 7–8 (emphasis added).
Appellant further contends:
The Examiner asserts that the “claims amount to nothing more
than presenting video to users and receiving and storing feedback
provided by users.” This is an overgeneralization of the claimed
invention that fails to appreciate (or characterize) the claimed
invention, as a whole. This point aside, “presenting video” is a
technological process. Moreover, contrary to the Examiner’s
assertion, the claimed invention as a whole also contemplates
modifying the video since the claims require “presenting . . .
video content other than the single video stream that includes the
modification.”
Reply Br. 3 (emphasis added).
Appellant’s arguments are not persuasive. First, Appellant’s
“preemption” argument is not persuasive 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). We are instructed
that “[w]here a patent’s claims are deemed only to disclose patent ineligible
Appeal 2019-003444
Application 14/278,719

16
subject matter under the [Alice/Mayo] framework . . . , preemption concerns
are fully addressed and made moot.” Id.
Second, we agree with the Examiner that as to claim 21, “[t]here is no
indication that the combination of elements improves the functioning of a
computer or improves any other technology.” Final Act. 4. Also, we agree
with the Examiner that “the actual step of modifying the video content based
on the feedback is not claimed.” Ans. 7. Rather, the term “modification” in
claim 21 is recited as a descriptive of a preferred characteristic of a second
particular subject of a second video content as opposed to the characteristic
of a first particular subject in a first “single video stream.” Contrary to
Appellant’s argument, nothing in claim 21 requires that the method modify
(in the sense of changing) a video. Claim 21 only requires that the second
particular subject includes the preferred characteristic. For example, an
Internet search for “shoes” in a video provides a video containing red shoes,
then user feedback is given as preferring the characteristic of the color being
blue, and a second different video is then provided containing blue shoes.
Although a color characteristic may be modified between the two videos, no
video is changed. Contrast to the first video itself is modified to change the
shoe color from red to blue without a second video other than the first video.
In view of Appellant’s Specification, and consistent with the
Examiner’s determinations, we conclude that claim 21 does not integrate the
judicial exception into a practical application. We determine claim 21 does
not recite:
(i) an improvement to the functioning of a computer;
(ii) an improvement to another technology or technical field;
Appeal 2019-003444
Application 14/278,719

17
(iii) an application of the abstract idea with, or by use of, a
particular machine;
(iv) a transformation or reduction of a particular article to a
different state or thing; or
(v) other meaningful limitations beyond generally linking the
use of the abstract idea to a particular technological
environment.
See MPEP §§ 2106.05(a)–(c), (e)–(h). We agree with the Examiner that
claim 21 is directed to a judicial exception, and does not integrate the
judicial exception into a practical application.
D.3. 2019 Revised Guidance Step 2B
The Examiner determines:
[T]aken alone, the additional elements do not amount to
significantly more than the above-identified judicial exception
(the abstract idea). Looking at the limitations as an ordered
combination adds nothing that is not already present when
looking at the elements taken individually. . . . Their collective
functions merely provide conventional computer
implementation.
Final Act. 4.
The claims do not include additional elements that are
sufficient to amount to significantly more than the judicial
exception because the additional elements when considered both
individually and as an ordered combination do not amount to
significantly more than the abstract idea. . . . [I]t is clear from
Appellant’s specification that the elements in the claims require
no more than a generic processor to perform generic computer
functions (e.g., displaying data, receiving data, associating data,
and storing data). Thus, taken alone, the additional elements do
not amount to significantly more than the above-identified
judicial exception (the abstract idea). Looking at the limitations
Appeal 2019-003444
Application 14/278,719

18
as an ordered combination adds nothing that is not already
present when looking at the elements taken individually.
Ans. 4–5.
Appellant does not dispute the Examiner’s determination. We agree
that the Examiner correctly determines that in addition to the abstract idea,
claim 21 recites only well-understood, routine, conventional elements/
combination of elements previously known in the industry. In view of
Appellant’s Specification, and consistent with the Examiner’s
determinations, we determine that beyond the abstract idea, the claims do
not recite:
(vi) a specific limitation other than what is well-understood,
routine, conventional activity in the field or
unconventional steps that confine the claim to a particular
useful application.
See MPEP § 2106.05(d).
E. § 112(b)
E.1.
The Examiner rejects claim 23 under 35 U.S.C. § 112(b) as being
indefinite.
Claim[] 23 . . . recite[s] the limitation “the second user” in
the final element. There is insufficient antecedent basis for this
limitation in the claim.
Final Act. 6.
E.2.
Appellant raises the following argument in contending that the
Examiner erred in rejecting claim 23 under 35 U.S.C. § 112(b).
Applicants respectfully submit that the lack of antecedent
basis for the term “the second user” does not render claim 23
indefinite. See In re Skvorecz, 580 F.3d 1262, 1268-69 (Fed. Cir.
Appeal 2019-003444
Application 14/278,719

19
2009) (indicating that a lack in explicit antecedent basis does not
render a claim indefinite if one of ordinary skill in the art would
understand the claim when viewed in the context of the
specification). In this instance and viewed consistently with the
specification, the term “the second user” clearly refers to a
second user different from the first user. Accordingly, one
having ordinary skill in the art would have reasonable certainty
in determining what is meant by “the second user.”
Appeal Br. 11.
Appellant’s argument is not persuasive. Essentially, Appellant argues
that Skvorecz stands for the proposition that antecedent basis is never
required in the claim. We disagree. Rather, Skvorecz holds that Skvorecz’s
claim 5 “does not require further antecedent basis in claim 1” (580 F.3d at
1269), i.e., the structure recited in Skvorecz’s claim 1 is sufficient to provide
antecedent basis for the limitation in Skvorecz’s claim 5. Here, we find no
basis whatsoever for “a second user” in Appellant’s claim 21 from which
claim 23 depends.
F. § 103
F.1. Claim 21
The Examiner rejects claim 21 under 35 U.S.C. § 103 as being
unpatentable over the combination of Amento and Senftner. Final Act. 8–
10.
F.1.a.
The Examiner finds:
Senftner teaches:
receiving, from the first user, a second user feedback that
indicates a modification, preferred by the first user, to a
characteristic of the particular subject ([0010] “a request from a
user for personalizing a user ... digital video file by replacing a
target in a ... video file with a user target replacement identified
Appeal 2019-003444
Application 14/278,719

20
by the user.” And, [0046] “one or more instances of “ordinary”
video receiving one or more modifications; these modifications
may include object replacements.” And, [0009] “electing a target
in original digital video to be replaced by a target replacement,
wherein the target is a portion or an entirety of an actor or an
object other than an actor in the original digital video.” And,
[0035] “a video advertisement for a pizza restaurant could
receive personalization such that the video advertisement
appears to take place at the specific local neighborhood franchise
of the video's viewer.” And, [0033] “For example, by replacing
a muscular, heroic male in a video with that of a petite female.”).
Final Act. 9.
Appellant raises the following argument in contending that the
Examiner erred in rejecting claim 21 under 35 U.S.C. § 103.
Nothing within the Examiner’s cited passages refers to
“feedback,” which is defined as “information about reactions to
a product, a person’s performance of a task, etc. which is used as
a basis for improvement.” [See https://en.oxforddictionaries.com
/definition/feedback.] The Examiner’s cited passages describe
how a user can personalize a video. However, requesting
personalization is not necessarily feedback because it is not
necessarily a reaction to the original video. Accordingly,
Senftner fails to teach the limitations for which Senftner alone is
being relied upon to teach.
Appeal Br. 4–5 (emphasis added).
Appellant’s argument is not persuasive. At paragraph 25 of the
Specification, Appellant states “As defined herein, the term ‘user feedback’
means a response of a user to information, such as video content, presented
to the user.” Emphasis added. Appellant does not point to any portion of
the Specification that further limits this paragraph 25 definition. Rather,
Appellant now simply argues that the definition of “feedback” is more
limited. We are unpersuaded. We determine that nothing more is required
by “feedback” in claim 21 than what is taught by Senftner.
Appeal 2019-003444
Application 14/278,719

21
F.1.b.
Also, Appellant raises the following argument in contending that the
Examiner erred in rejecting claim 21 under 35 U.S.C. § 103.
[Examiner’s rejection] does not support a finding that Senftner
teaches that 33 the modification (identified in feedback) to the
subject in one video is used to modify another subject in another
video. Rather, it simply teaches that the modification (i.e., the
actor model 435) once created, can be stored in an actor library
435 and be subsequently selected as a modification for another
video. The concept of receiving feedback about one subject and
applying that feedback to another subject is entirely missing
from Senftner.
Appeal Br. 13–14 (emphasis added).
Appellant’s argument is not persuasive. As more fully discussed
above in section D.2., we agree with the Examiner that “the actual step of
modifying the video content based on the feedback is not claimed.” Ans. 7.
Rather, the term “modification” in claim 21 is recited as a descriptive of a
preferred characteristic of a second particular subject of a second video
content as opposed to the characteristic of a first particular subject in a first
“single video stream.” Contrary to Appellant’s argument, nothing in claim
21 requires that the method modify (in the sense of changing) a video.
Claim 21 only requires that the second particular subject includes the
preferred characteristic.
Therefore, we disagree with Appellant’s premise that claim 21
requires “applying the feedback to another subject.”
Appeal 2019-003444
Application 14/278,719

22
F.1.c.
Further, Appellant raises the following argument in contending that
the Examiner erred in rejecting claim 21 under 35 U.S.C. § 103.
In the last full paragraph on page 10 of the Third Office
Action, the Examiner articulated the following reasoning to
support the Examiner’s obviousness conclusion:
Therefore, it would have been obvious to one
of ordinary skill in the art at the time of the
invention to modify Amento to include receiving,
from the first user, a second user feedback that
indicates a modification, preferred by the first user,
to a characteristic of the particular subject and
presenting, to the first user and based upon the
association and the second user feedback, video
content other than the single video stream that
includes the modification to a characteristic of a
different particular subject as taught by Senftner
because “by basing product placement selection
upon demographic, similar or other information
about the reguestor or intended viewer of a
personalized video, a desirable advertising medium
can be realized” (Senftner [0046]) increasing the
likelihood the intended viewer will be interested
and engaged with the displayed advertising content.
(emphasis added)
Appellants respectfully submit that the Examiner articulated
reasoning for the combination is not based upon a rational
underpinning.
The Examiner’s proposed benefit for the combination is
found in the underlined portion of the above-reproduced passage,
and merely describes the benefit of video personalization
technology. However, it says nothing about the particular
combination of elements being claimed. . . . Senftner alone
provides the ability to personalize content. Nothing about the
Examiner articulated reasoning describes why one having
ordinary skill in the art would consider it obvious to combine
Appeal 2019-003444
Application 14/278,719

23
Senftner and Amento when the proposed benefit for the
combination has already been achieved by Senftner.
Appeal Br. 14 (emphasis added).
Appellant’s argument is not persuasive. We determine that the
Examiner’s articulated reasoning is sufficient.6 Essentially, Appellant’s
argument is premised on an artisan being an automaton incapable of
applying the teaching of Senftner in combination with analogous art. We
conclude this premise is contrary to our reviewing courts guidance. “A
person of ordinary skill is also a person of ordinary creativity, not an
automaton.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007).
F.2. Claim 22
Appellant raises the following argument in contending that the
Examiner erred in rejecting claim 22 under 35 U.S.C. § 103.
Claim 22 depends upon claim 21. Accordingly, when read
together these claims recite “includes the modification to a
characteristic of a different particular subject” and “includes the
modification to the characteristic of the particular subject.” As
such, what is presented to the first user (as recited in claim 21)
and what is presented to the second user (as recited in claim 22)
is the same modification but to different subjects.
Appeal Br. 16.
Appellant’s arguments are not persuasive. Claim 22 only requires
“the video content other than the single video stream is presented to a second
user and includes the modification to the characteristic of the particular
subject.” We determine the sharing that is taught by Fama at paragraph 34

6 To the extent that Appellant argues Ex parte Rinkevich, Appeal 2007-1317
(non-precedential) is binding on this panel (Appeal Br. 15), we find no merit
to that argument.
Appeal 2019-003444
Application 14/278,719

24
(“share those deformations with a friend by transferring the deformation data
with or without the video to a friend”) renders obvious the “the video
content . . . is presented to a second user” that is required by claim 22.

CONCLUSION
The Examiner has not erred in rejecting claims 21–35 under 35 U.S.C.
§ 101, as being directed to patent-ineligible subject matter.
The Examiner has not erred in rejecting claims 23–25, 28–30, and 33–
35 under 35 U.S.C. § 112(b) as being indefinite.
The Examiner has not erred in rejecting claims 21–35 as being
unpatentable under 35 U.S.C. § 103.
The Examiner’s rejection of claims 21–35 under 35 U.S.C. § 101, as
being directed to patent-ineligible subject matter, is affirmed.
The Examiner’s rejections of claims 23–25, 28–30, and 33–35 as
being unpatentable under 35 U.S.C. § 112(b) is affirmed.
The Examiner’s rejections of claims 21–35 as being unpatentable
under 35 U.S.C. § 103 is affirmed.
Appeal 2019-003444
Application 14/278,719

25
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § References/Basis  Affirmed Reversed
21–35 101 Eligibility 21–35
23–25, 28–
30, 33–35
112(b) Indefiniteness 23–25, 28–
30, 33–35

21, 26, 31 103 Amento, Senftner 21, 26, 31
22, 27, 32 103 Amento, Senftner,
Fama
22, 27, 32
23, 24, 28,
29, 33, 34
103 Amento, Senftner,
Levi
23, 24, 28,
29, 33, 34

25, 30, 35 103 Amento, Senftner,
Gentile
25, 30, 35
Overall
Outcome

21–35
TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED