INTERNATIONAL BUSINESS MACHINES CORPORATION

Patent Trials and Appeals Board

Sep 2, 2020

15291222 - (D) (P.T.A.B. Sep. 2, 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.
15/291,222 10/12/2016 LISA SEACAT DELUCA END920160396US1_IEN107993 3441
26681 7590 09/02/2020
DEPT. IEN
DAUGHERTY & DEL ZOPPO CO., L.P.A.
38500 CHARDON ROAD
WILLOUGHBY HILLS, OH 44094
EXAMINER
ELCHANTI, TAREK
ART UNIT PAPER NUMBER
3621
NOTIFICATION DATE DELIVERY MODE
09/02/2020 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):
adelzoppo@DD-IPLAW.COM
info@DD-IPLAW.COM
pdaugherty@DD-IPLAW.COM
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte LISA SEACAT DELUCA, JEREMY A. GREENBERGER, and
TRUDY L. HEWITT
____________

Appeal 2019-002495
Application 15/291,2221
Technology Center 3600
____________

Before JOSEPH A. FISCHETTI, NINA L. MEDLOCK, and
PHILIP J. HOFFMANN, Administrative Patent Judges.

FISCHETTI, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134 of the Examiner’s
final rejection of claims 1–4, 7–12 and 15–18. We have jurisdiction under
35 U.S.C. § 6(b).

1 We use the word “Appellant” to refer to “Applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies International Business Machines
Corporation as the real party in interest. App. Br. 2.
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SUMMARY OF DECISION
We AFFIRM.
THE INVENTION
Appellant describes a “computerized method for automatic content
generator compensation in response to graphic item selection.” Spec. ¶ 4.
Claim 1, reproduced below, is representative of the subject matter on
appeal.
1. A computer-implemented method for automatic content generator
compensation in response to graphic item selection, comprising
executing on a computer processor:
in response to a selection by a viewing user of a graphic item
that is visible within an image published on an interactive web-based
service, analyzing text content of a comment posted within a comment
application window by the viewing user on the interactive web-based
service in association with the published image to identify a phrase
within the posted comment that comprises a reference by the viewing
user to an identifying indicia of the graphic item;
in response to determining that the selection of the graphic item
is associated with a reference by the viewing user to the graphic item
within the analyzed text content of the posted comment, executing an
item selection action defined for the graphic item, and identifying a
person depicted in the published image in an association with the
graphic item via distinguishing the identified person from another
person visible in the published image as a function of determining that
the another person visible in the published image is not depicted in the
association with the item, wherein the association is selected from the
group consisting of wearing the graphic item and physically engaging
the graphic item; and
in response to the execution of the item selection action defined
for the graphic item, providing a first reward value to the person
depicted in the association with the graphic item, not providing the
first reward value to the another person that is determined to be visible
in the published image and not depicted in the association with the
graphic item, and providing a second reward value to another user that
published the image on the interactive web-based service, wherein the
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another user is different from the viewing user that selected the
graphic item and posted the analyzed text content.

THE REJECTION
The following rejection is before us for review.
1. Claims 1–4, 7–12, and 15–18 are rejected under 35 U.S.C. § 101 as
directed to a judicial exception (i.e., a law of nature, a natural phenomenon,
or an abstract idea) without significantly more.
FINDINGS OF FACT
We adopt the Examiner’s findings as set forth on pages 2–8 in the
Final Office Action2 and on pages 3–6 in the Examiner’s Answer,
concerning only the 35 U.S.C. § 101 rejection.

ANALYSIS
35 U.S.C. § 101 REJECTION
We will affirm the rejection of claims 1–4, 7–12, and 15–18 under
35 U.S.C. § 101.
The Appellant argues claims 1–4, 7–12, and 15–18 as a group.
(Appeal Br. 5, 9). We select claim 1 as the representative claim for this
group, and so the remaining claims stand or fall with claim 1. See 37 C.F.R.
§ 41.37(c)(1)(iv) (2015).
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 Supreme Court has long interpreted 35 U.S.C. § 101 to include
implicit exceptions: “[l]aws of nature, natural phenomena, and abstract

2 All references to the Final Office Action refer to the Final Office Action
mailed on May 22, 2018.
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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 Supreme Court’s two-step framework, described in Mayo
and Alice. Alice, 573 U.S. 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 id. 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 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 water-proof cloth, vulcanizing India
rubber, smelting ores” (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S.
252, 267–68 (1854))); 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
Supreme Court held that “a claim drawn to subject matter otherwise
statutory does not become nonstatutory simply because it uses a
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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 Supreme 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. (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.”).
If the claim is “directed to” an abstract idea, we turn to the second
step 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.
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)
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(“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 1.4
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 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”).5
Guidance, 84 Fed. Reg. at 52–55.

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).
4 The 2019 Revised Guidance supersedes MANUAL OF PATENT EXAMINING
PROCEDURE (“MPEP”) § 2106.04(II) and also supersedes all versions of the
USPTO’s “Eligibility Quick Reference Sheet Identifying Abstract Ideas.”
See 2019 Revised Guidance, 84 Fed. Reg. at 51 (“Eligibility-related
guidance issued prior to the Ninth Edition, R-08.2017, of the MPEP
(published Jan. 2018) should not be relied upon.”). Accordingly,
Appellant’s arguments challenging the sufficiency of the Examiner’s
rejection will not be addressed to the extent those arguments are based on
now superseded USPTO guidance.
5 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 Guidance - Section III(A)(2), 84 Fed. Reg. at 54–
55.
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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.
Guidance, 84 Fed. Reg. at 52–56. The U.S. Court of Appeals for the Federal
Circuit has explained that “the ‘directed to’ inquiry applies a stage-one filter
to claims, considered in light of the specification, based on whether ‘their
character as a whole is directed to excluded subject matter.’” Enfish, LLC v.
Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016) (quoting Internet
Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1346 (Fed. Cir.
2015)). It asks whether the focus of the claims is on a specific improvement
in relevant technology or on a process that itself qualifies as an “abstract
idea” for which computers are invoked merely as a tool. See Enfish,
822 F.3d at 1335–36.
In so doing, as indicated above, we apply a “directed to” two
prong test: 1) evaluate whether the claim recites a judicial exception,
and 2) if the claim recites a judicial exception, evaluate whether the
claim “appl[ies], rel[ies] on, or use[s] the judicial exception in a
manner that imposes a meaningful limit on the judicial exception,
such that the claim is more than a drafting effort designed to
monopolize the judicial exception.” Guidance, 84 Fed. Reg. at 53; see
also MPEP § 2106.05(a)–(c), (e)–(h).
Accordingly, we find the following:
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The Specification states,
On-line publication activity may result in remuneration of rewards
and other valuable consideration to content providers, in consideration
for generating measured viewing activity by other users or viewers of
an interactive web-based service. For example, advertisements may
be added to or otherwise associated with a published posting, wherein
the posting user is paid a fixed fee for each new view of the posting
by another, unique person, sometimes referred to as a “page view.”
Affiliate marketing is a type of performance-based marketing in
which a business rewards one or more affiliates for each visitor or
customer brought in, as determined by unique page views of said
visitors or customers.
Specification ¶ 3.

The preamble states the claim is for “content generator compensation
in response to graphic item selection.” Claim 1.
Claim 1 recites in pertinent part,
in response to a selection by a viewing user of a graphic item
that is visible within an image published . . . service, analyzing
text content of a comment posted within a comment application
window by the viewing user . . . service in association with the
published image to identify a phrase within the posted comment
that comprises a reference by the viewing user to an identifying
indicia of the graphic item; in response to determining that the
selection of the graphic item is associated with a reference by
the viewing user to the graphic item within the analyzed text
content of the posted comment, executing an item selection
action defined for the graphic item, and identifying a person
depicted in the published image in an association with the
graphic item via distinguishing the identified person from
another person visible in the published image as a function of
determining that the another person visible in the published
image is not depicted in the association with the item, wherein
the association is selected from the group consisting of wearing
the graphic item and physically engaging the graphic item; and
in response to the execution of the item selection action defined
for the graphic item, providing a first reward value to the person
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depicted in the association with the graphic item, not providing
the first reward value to the another person that is determined to
be visible in the published image and not depicted in the
association with the graphic item, and providing a second
reward value to another user that published the image on the
interactive web-based service, wherein the another user is
different from the viewing user that selected the graphic item
and posted the analyzed text content.

The Examiner found claim 1 is:
directed to providing compensation to graphical item selection
by analyzing text content posted on the interactive web-based
services in association with the published image. The steps that
describe/set-forth the idea are “analyzing text content comment
posted, executing an item selection action, identifying indicia of
the graphic item, providing a first reward, and providing a
second reward.”
(Final Act. 2).

Accordingly, we find that claim 1 recites a reward incentive scheme
for rewarding publication and interaction with published content. For
example, claim 1 recites “providing a first reward value to the person
depicted in the association with the graphic item, . . . and providing a second
reward value to another user that published the image on the interactive
web-based service, wherein the another user is different from the viewing
user that selected the graphic item and posted the analyzed text content.”
Such incentive based reward practices concern managing personal behavior
or relationships or interactions between people, which is which is one of
certain methods of organizing human activity that are judicial exceptions.
Guidance, 84 Fed. Reg. at 52.
Turning to the second prong of the “directed to” test, claim 1 only
generically requires “a computer processor.” This component is described in
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the Specification at a high level of generality. See Spec. ¶¶ 5, 14, 19, Fig. 1.
We fail to see how the generic recitation of this most basic computer
component and/or of a system so integrates the judicial exception as to
“impose[] a meaningful limit on the judicial exception, such that the claim is
more than a drafting effort designed to monopolize the judicial exception.”
Guidance, 84 Fed. Reg. at 53. We find no indication in the Specification,
nor does the Appellant direct us to any indication, that the operations recited
in independent claim 1 invoke any assertedly inventive programming,
require any specialized computer hardware or other inventive computer
components, i.e., a particular machine, or that the claimed invention is
implemented using other than generic computer components to perform
generic computer functions. See DDR Holdings, LLC v. Hotels.com, L.P.,
773 F.3d 1245, 1256 (Fed. Cir. 2014) (“[A]fter Alice, there can remain no
doubt: recitation of generic computer limitations does not make an otherwise
ineligible claim patent-eligible.”). Because no more than a generic computer
is required, the claim also does not define, or rely on, a “particular machine.”
MPEP § 2106.05(b). Further, the method does not transform matter. MPEP
§ § 2106.05(c).
Thus, we find that claim 1 recites one of certain methods of
organizing human activity that are judicial exceptions that is not integrated
into a practical application.
That claim 1 does not preempt all forms of the abstraction or may be
limited to content rewards, does not make it any less abstract. See OIP
Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1362–63 (Fed. Cir. 2015)
(“And that the claims do not preempt all price optimization or may be
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limited to price optimization in the e-commerce setting do not make them
any less abstract.”).
Turning to the second step of the Alice analysis, because we find that
claim 1 is directed to abstract ideas/judicial exceptions, the claim must
include an “inventive concept” in order to be patent eligible, i.e., there must
be an element or combination of elements sufficient to ensure that the claim
in practice amounts to significantly more than the abstract idea itself. See
Alice, 573 U.S. at 217–18 (quoting Mayo Collaborative Servs., 566 U.S.
at 72–73).
Concerning this step the Examiner found the following:

The claims do not amount to significantly more than the recited
abstract idea and the additional elements add no inventive
concept. A computer ‘that receives and sends information over
a network- with no further specification — is not even arguably
inventive’. The limitations also represent insignificant data-
gathering steps and thus adds nothing of practical significance
to the abstract idea.
Moreover, dependent claims 2−4, 7, 8, 10−12, and 16−18
do not recite any limitations that would remedy the deficiencies
outlined above as they do not add any elements which
constitute significantly more.

Final Act. 3–4. We agree with the Examiner. “[T]he relevant question is
whether the claims here do more than simply instruct the practitioner to
implement the abstract idea . . . on a generic computer.” Alice, 573 U.S.
at 225. They do not.
Taking the claim elements separately, the function performed by the
computer at each step of the process is purely conventional. Using a
computer to retrieve, select, and apply decision criteria to data and modify
the data as a result amounts to electronic data query and retrieval—one of
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the most basic functions of a computer. All of these computer functions are
well-understood, routine, conventional activities previously known to the
industry. See Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1354
(Fed. Cir. 2016); see also In re Katz Interactive Call Processing Patent
Litig., 639 F.3d 1303, 1316 (Fed. Cir. 2011) (“Absent a possible narrower
construction of the terms ‘processing,’ ‘receiving,’ and ‘storing,’ . . . those
functions can be achieved by any general purpose computer without special
programming”). In short, each step does no more than require a generic
computer to perform generic computer functions. Claim 1 does not, for
example, purport to improve the functioning of the computer itself. In
addition, the claim does not effect an improvement in any other technology
or technical field. The Specification spells out different generic equipment
and parameters that might be applied using this concept and the particular
steps such conventional processing would entail based on the concept of
information access under different scenarios (see, e.g., Spec. ¶¶ 5, 14, 19,
Fig. 1). Thus, the claim at issue amounts to nothing significantly more than
instructions to apply the abstract idea using some unspecified, generic
computer. Under our precedents, that is not enough to transform an abstract
idea into a patent-eligible invention. See Alice, 573 U.S. at 225–226.
Considered as an ordered combination, the computer components of
claim 1 add nothing that is not already present when the steps are considered
separately. The sequence of data reception-analysis (analyzing, identifying,
determining, identifying, determining, executing, and providing) and storing
is equally generic and conventional or otherwise held to be abstract. See
Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed. Cir. 2014)
(sequence of receiving, selecting, offering for exchange, display, allowing
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access, and receiving payment recited an abstraction), Inventor Holdings,
LLC v. Bed Bath & Beyond, Inc., 876 F.3d 1372, 1378 (Fed. Cir. 2017)
(holding that sequence of data retrieval, analysis, modification, generation,
display, and transmission was abstract), Two-Way Media Ltd. v. Comcast
Cable Commc’ns, LLC, 874 F.3d 1329, 1339 (Fed. Cir. 2017) (holding
sequence of processing, routing, controlling, and monitoring was abstract).
The ordering of the steps is, therefore, ordinary and conventional.
We have reviewed all the arguments Appellant has submitted
concerning the patent eligibility of the claims before us that stand rejected
under 35 U.S.C. § 101. (App. Br. 12–29, Reply Br. 1–9). We find that our
analysis above substantially covers the substance of all the arguments, which
have been made. But, for purposes of completeness, we will address various
arguments in order to make individual rebuttals of same.
Appellant highlights various claim limitations as examples of
“improvement[s] to the field of web-based marketing.” Appeal Br. 7, see
also Reply Br. 7. Specifically, Appellant asserts:
[t]he claimed inventions provide an improvement to the
technical field of automated, web-based marketing
mechanisms; by executing the specifically-claimed,
precedential series of ‘rules’ or steps (i)-(v) described above,
they autonomously and automatically allocate rewards to
content posters and to persons appearing within content
wearing or using a specific item, but not to other persons also
visible but autonomously determined to be not wearing or using
the item.
Id. at 8.

We are not persuaded by Appellant’s arguments because Appellant
has not provided evidence that the improvements are made in the computer
as contrasted with, e.g., incentive based marketing and advertising tactics.
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The asserted improvement, of providing “rewards for clicking on defined
published content are not limited to only those entities under formal
agreement with marketers providing the rewards” (Appeal Br. 8), is an
improvement to an abstract idea only. “A claim for a new abstract idea is
still an abstract idea.” Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d
1138, 1151 (citing Mayo, 566 U.S. at 90). Here, the alleged improvement
lies in the abstract idea itself, not in any technological improvement. See
BSG Tech LLC v. Buyseasons, Inc., 899 F.3d 1281, 1287–88 (Fed. Cir.
2018). Even if the advance over the prior art is to “an organic, natural
process that requires little or no effort by an advertising entity, merely the
remuneration of price-per-click reward values to each of the posting users.”
(Appeal Br. 9), that purported advance is an abstract idea itself, i.e., driving
human behavior is similar to hedging against financial risk in Bilksi,
561 U.S. at 609, and collecting and analyzing investment data in SAP
America, Inc. v. InvestPic, LLC, 898 F.3d 1161, 1167–1168 (Fed. Cir.
2018), using conventional technology. The alleged improvement lies in the
abstract idea itself, not in any technological improvement.
Although the claims purport to efficiently facilitate automatically
conveying rewards to “a posting person… without requiring prior or formal
agreement . . . [to] proportionately expand, grow and mushroom via
deployment of the claimed invention” (Appeal Br. 8–9, see also Reply
Br. 5), our reviewing court has held that speed and accuracy increases
stemming from the ordinary capabilities of a general purpose computer “do[]
not materially alter the patent eligibility of the claimed subject matter.”
Bancorp Servs., L.L.C. v. Sun Life Assurance Co. of Can. (U.S.), 687 F.3d
1266, 1278 (Fed. Cir. 2012).
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Although we agree with the Appellant that the claims must be read as
a whole (Appeal Br. 10, Reply Br. 7), we nevertheless find, on balance, that
claim 1 is directed to a reward incentive scheme for rewarding publication
and interaction with published content for the reasons specified above with
respect to our “directed to” findings. As found supra, claim 1 only
generically requires “a computer processor.” What remains in the claim
after disregarding this device limitation are abstractions, i.e.,
analyzing text content of a comment posted within a comment
application window by the viewing user on the interactive web–
based service in association with the published image to
identify a phrase within the posted comment that comprises a
reference by the viewing user to an identifying indicia of the
graphic item;
. . .
identifying a person depicted in the published image in an
association with the graphic item via distinguishing the
identified person from another person visible in the published
image as a function of determining that the another person
visible in the published image is not depicted in the association
with the item.

In other words, the asserted improvement is, at best, an improvement to the
abstract idea. But, “[n]o matter how much of an advance in the . . . field the
claims recite, the advance lies entirely in the realm of abstract ideas, with no
plausibly alleged innovation in the non-abstract application realm.” SAP
Am., Inc., 898 F.3d at 1163.
Appellant argues, “[t]he claims in the instant application recite
specific steps (i) through (v) to accomplish a particular result, instead of
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merely reciting a desired result, and are therefore not directed to an abstract
idea. Finjan, Inc. v. Blue Coat Systems, Inc.”6 (Appeal Br. 10).
We disagree with the Appellant that the asserted claims are akin to
the claims found patent eligible in Finjan because in Finjan, the court held
that claims to a “behavior-based virus scan” were a specific improvement in
computer functionality and hence not directed to an abstract idea. Finjan,
879 F.3d at 1304. The claimed technique of scanning enabled “more
flexible and nuanced virus filtering” and detection of potentially dangerous
code. Id. This was done by “scanning a downloadable and attaching the
results of that scan to the downloadable itself in the form of a ‘security
profile.’” Id. at 1303. The security profile included the information about
potentially hostile operations produced by a “behavior-based” virus scan, as
distinguished from traditional, “code-matching” virus scans that are limited
to recognizing the presence of previously-identified viruses, typically by
comparing the code in a downloadable to a database of known suspicious
code. Id. at 1304. This behavior-based scan resulted in a new type of file
that when attached to a downloadable file, allowed the computer to do more
to protect itself than in the past.
The instant claims present no such new type of processing to create a
security profile. Instead, the claims are conventional data processing of
content. They may improve marketing efforts, but this is not an
improvement to the computer.
Appellant next argues,
[t]hus, pursuant to consideration (1) of the Step 2B analysis
‘Significantly More’ considerations, the claimed device aspects

6 Finjan, Inc. v. Blue Coat Systems, Inc., 879 F.3d 1299 (Fed. Cir. 2018).
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provide an improvement to the technical field of automated,
web-based marketing mechanisms. The inventive concept is
found in the nonconventional and non-generic arrangement of
the claimed component subject matter . . . . The limitations at
issue are similar to subject matter that the courts have found to
qualify as ‘significantly more’ when recited in a claim with a
judicial exception: ‘[]Adding a specific limitation other than
what is well-understood, routine, conventional activity in the
field, or adding unconventional steps that confine the claim to a
particular useful application.’ See BASCOM, and MPEP
2106.05.
. . .
[T]here is no showing of record by the examiner of a citation to
an express statement in the specification or to a statement made
by an applicant during prosecution that demonstrates the well-
understood, routine, conventional nature of the “additional
element(s)” at issue.

(Appeal Br. 10–11).
As described above, the only claim element beyond the abstract idea
is “a computer processor.” Appellant cannot reasonably deny that the
operation of “a computer processor” is well-understood, routine, or
conventional. Indeed, the Federal Circuit, in accordance with Alice, has
“repeatedly recognized the absence of a genuine dispute as to eligibility”
where claims have been defended as involving an inventive concept based
“merely on the idea of using existing computers or the Internet to carry out
conventional processes, with no alteration of computer functionality.”
Berkheimer v. HP Inc., 890 F.3d 1369, 1373 (Fed. Cir. 2018) (Moore, J.,
concurring) (citations omitted); see also BSG Tech LLC, 899 F.3d at 1291
(“BSG Tech does not argue that other, non-abstract features of the claimed
inventions, alone or in combination, are not well-understood, routine and
conventional database structures and activities. Accordingly, the district
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court did not err in determining that the asserted claims lack an inventive
concept.”).
The Federal Circuit in Berkheimer made clear that “not every § 101
determination contains genuine disputes over the underlying facts material to
the § 101 inquiry.” Berkheimer v. HP Inc., 881 F.3d 1360, 1368 (Fed. Cir.
2018). In fact, the Federal Circuit in Berkheimer did not require evidentiary
support for independent claim 1 because “[t]he limitations [of claim 1]
amount to no more than performing the abstract idea of parsing and
comparing data with conventional computer components.” Id. at 1370.
Citing BASCOM Global Internet Services, Inc. v. AT&T Mobility
LLC, 827 F.3d 1341 (Fed. Cir. 2016), Appellant argues that whether or not
the additional elements in claim 1 recite generic computer network or
Internet components, “the elements in combination amount to significantly
more because of the non-conventional and non-generic arrangement that
provided a technical improvement in the art.” Appeal Br. 9. But, Appellant
does not identify the allegedly “non-conventional and non-generic”
arrangement of elements. Nor does Appellant otherwise adequately explain
(id. at 11, Reply Br. 8) in what way BASCOM impacts the patent eligibility
of claim 1. Claim 1 simply recites functional results to be achieved by any
means. See, e.g., Content Extraction and Transmission LLC v. Wells Fargo
Bank, Nat’l Ass’n, 776 F.3d 1343, 1347 (Fed. Cir. 2014).
Concerning claims 2, 10 and 16 (Appeal Br. 12–14), Appellant
attempts to analogize these claims to the rules claimed in McRO, Inc. v.
Bandai Namco Games America Inc., 837 F.3d 1299 (Fed. Cir. 2016). In
McRO, “it was the incorporation of the claimed rules not the use of the
computer, that improved the existing technology process,” because the
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prior process performed by humans “was driven by subjective
determinations rather than specific, limited mathematical rules.” Id.
at 1314 (internal quotation marks, citation, and alterations omitted). In
contrast, the claims of the instant application merely implement an old
practice of rewarding participation in the publication of content. Appellant
has not argued that the claimed processes of rewarding publishers and the
viewers of published content uses rules in a manner technologically
different from those which humans used, albeit with less efficiency, before
the claimed invention was made. Merely automating a reward process is
just that, automation of a known existing practice.
The claims in McRO were not directed to an abstract idea, but
instead were directed to ‘a specific asserted improvement in
computer animation, i.e., the automatic use of rules of a
particular type.’ We explained that ‘the claimed improvement
[was] allowing computers to produce ‘accurate and realistic lip
synchronization and facial expressions in animated characters’
that previously could only be produced by human animators.’
The claimed rules in McRO transformed a traditionally
subjective process performed by human artists into a
mathematically automated process executed on computers.
FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, at 1094 (Fed. Cir.
2016) (differentiating the claims at issue from those in McRO).
Claims 2, 10, and 16 also depend from independent claims 1, 9
and 15, respectively, and are directed to the same abstract idea as claim 1.
See Content Extraction & Transmission LLC, 776 F.3d at 1348 (explaining
that when all claims are directed to the same abstract idea, “addressing each
claim of the asserted patents [is] unnecessary.”). These dependent claims
recite additional features of “identifying within the analyzed text content
indicia of the graphic item that is selected from the group consisting of a
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name of the graphic item, a type of the graphic item, a category of the
graphic item and a color of the graphic item.” But, the additional elements
recited in these claims are insufficient, in our view, to confer patent
eligibility as each item concerns only a further detail in a behavioral driven
reward process.
Appellant’s other arguments, including those directed to now-
superseded USPTO guidance, have been considered but are not persuasive
of error. See 2019 Revised Guidance, 84 Fed. Reg. at 51 (“Eligibility-
related guidance issued prior to the Ninth Edition, R–08.2017, of the MPEP
(published Jan. 2018) should not be relied upon.”).

CONCLUSIONS OF LAW
We conclude the Examiner did not err in rejecting claims 1−4, 7−12
and 15−18 under 35 U.S.C. § 101.

DECISION
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1−4, 7−12,
15−18
101 Eligibility 1−4, 7−12
15−18

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