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Patent Trials and Appeals Board

Nov 20, 2019

13992801 - (D) (P.T.A.B. Nov. 20, 2019)

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.
13/992,801 06/10/2013 Anand P. Rangarajan ITL.2586US (P40386) 2902
47795 7590 11/20/2019
TROP, PRUNER & HU, P.C.
PO Box 41790
HOUSTON, TX 77241
EXAMINER
VAN BRAMER, JOHN W
ART UNIT PAPER NUMBER
3621
NOTIFICATION DATE DELIVERY MODE
11/20/2019 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
Inteldocs_docketing@cpaglobal.com
tphpto@tphm.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte ANAND P. RANGARAJAN, VICTOR B. LORTZ,
VIJAY SARATHI KESAVAN, SOMYA RATHI, and XINGANG GUO
____________

Appeal 2019-000306
Application 13/992,801
Technology Center 3600
____________

Before DAVID M. KOHUT, IRVIN E. BRANCH, and
JOSEPH P. LENTIVECH, Administrative Patent Judges.

KOHUT, Administrative Patent Judge.

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1, 5–11, 15–20, and 24–30.2
Final Act. 2. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

1 We use “Appellant” to reference the applicant as defined in
37 C.F.R. § 1.42. Appellant identifies the real party in interest as
“Intel Corp.” Appeal Br. 3.
2 Claims 2−4, 12−14, and 21−23 were cancelled in the request for
reconsideration filed February 27, 2017.
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STATEMENT OF THE CASE
APPELLANT’S INVENTION
Appellant’s invention “relates generally to location based
advertising.” Spec. ¶ 1. Claim 1 recites the invention as follows.
1. A method comprising:
distributing a location based advertisement over a peer‐to‐peer
network;
transmitting said advertisement to consumers including a first
consumer;
automatically causing the first consumer to transmit the
advertisement to another consumer; and
automatically causing the first consumer to append an identifier
to the advertisement to identify the first consumer that transmits
the advertisement to another consumer so that the first
consumer can be rewarded for each subsequent distribution of
the advertisement.
Appeal Br. 11 (claims appendix).
REJECTIONS
1. Claims 1, 5–11, 15–20, and 24–30 stand rejected under
35 U.S.C. § 101 as being directed to non-statutory subject
matter. Final Act. 2–9.
2. Claims 1, 5–11, 15–20, 24, and 25 stand rejected under
35 U.S.C. § 103 as being unpatentable over Dendi (US 2007/0282678 A1;
Dec. 6, 2007) and Greenspun (US 2012/0185310 A1; July 19, 2012).
Final Act. 9–12.
3. Claims 26–30 stand rejected under 35 U.S.C. § 102 as being
anticipated by Dendi. Final Act. 13–14.
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OPINION
1. REJECTION UNDER 35 U.S.C. § 101
For the reasons below (sections 1.A–G), we are unpersuaded of error
in this rejection of independent claim 1. For the same reasons, we are
unpersuaded of error in this rejection of claims 5–11, 15–20, and 24–30,
which are not separately argued for this rejection. See 37 C.F.R.
§ 41.37(c)(1)(iv).
A. Principles of Law
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
ideas” are not patentable. E.g., Alice Corp. v. CLS Bank Int’l, 573 U.S. 208,
216 (2014) (citation omitted).
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 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 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);
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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 (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
Supreme 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 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 (citation omitted). “A
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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. (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. PTO Guidance
The PTO recently published revised guidance on the application of
§ 101. USPTO’s 2019 Revised Patent Subject Matter Eligibility Guidance,
84 Fed. Reg. 50 (Jan. 7, 2019). Under the Guidance, 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 activities such as a fundamental economic practice, or mental
processes); and
(2) additional elements that integrate the judicial exception into a
practical application (see Manual of Patent Examining Procedure
(MPEP) § 2106.05(a)–(c), (e)–(h) (9th ed. 2018)).
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
conclude the claim is directed to a judicial exception (id. at 54) and look 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
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(4) simply appends well-understood, routine, conventional activities
previously known to the industry, specified at a high level of
generality, to the judicial exception.
Id. at 56.
C. Step 1: Does Claim 1 Fall within a Statutory Category?
There is no dispute that claim 1 falls within a category of patentable
subject matter. See 35 U.S.C. § 101 (“process, machine, manufacture, or
composition of matter”); see also Guidance, 84 Fed. Reg. at 53–54
(“Step 1”).
D. Step 2A(1):3 Does Claim 1 Recite
Any Judicial Exceptions?
Turning to the first issue set forth by the Guidance (see supra 5,
bullet “(1)”), we find claim 1 recites—and, more particularly, describes—

3 The Guidance separates the herein-enumerated issues (1) to (4) (see
supra 5–6) into Steps 2A(1), 2A(2), and 2B, as follows:
[T]he revised procedure . . . focuses on two aspects [of whether
a claim is “directed to” a judicial exception under the first
step of the Alice/Mayo test (USPTO Step 2A)]: (1) [w]hether
the claim recites a judicial exception; and (2) whether a recited
judicial exception is integrated into a practical application. . . .
[W]hen a claim recites a judicial exception and fails to integrate
the exception into a practical application, . . . further analysis
pursuant to the second step of the Alice/Mayo test (USPTO
Step 2B) . . . is needed . . . in accordance with existing USPTO
guidance as modified in April 2018.[footnote omitted]
84 Fed. Reg. at 51 (also instructing, via the omitted footnote, that Step 2B is
addressed per the “USPTO Memorandum of April 19, 2018, ‘Changes in
Examination Procedure Pertaining to Subject Matter Eligibility, Recent
Subject Matter Eligibility Decision (Berkheimer v. HP, Inc.)’ (Apr. 19,
2018), available at https://www.uspto.gov/sites/default/files/documents/
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judicial exceptions. See October 2019 Patent Eligibility Guidance Update
(“Update”) at 1 (available at https://www.uspto.gov/sites/default/files/
documents/peg_oct_2019_update.pdf) (presenting meanings of: recite; set
forth; describe). Specifically, we agree with the Examiner that “the heart of
[the claimed invention] is providing, receiving, and sharing location based
advertisements.” Final Act. 3; see also Spec. ¶ 1 (quoted supra 2).
We add that the claimed invention applies the above concepts as part
of activities falling within the Guidance’s following category of judicial
exceptions: “(b) Certain methods of organizing human activity—
. . . commercial . . . interactions (including . . . advertising, marketing or
sales activities or behaviors . . . ); managing personal behavior . . . or
interactions between people (including . . . teaching . . . ).” Guidance,
84 Fed. Reg. at 52; see also Update at 2–9 (section addressing Step 2A(1));
e.g., id. at 6 (“advertising, marketing or sales activities or
behaviors”). Specifically, the claimed “distributing a location based
advertisement . . . [and] transmitting said advertisement to consumers
including a first consumer” constitutes a commercial interaction
(advertising). The claimed “causing the first consumer to append an
identifier to the advertisement to identify the first consumer” and to
“transmit[] the advertisement to another consumer[,] so that the first
consumer can be rewarded for . . . distribution of the advertisement,”
constitutes both a commercial interaction and management of interactions
between people (incentivizing ‘word-of-mouth’ advertising).
For the foregoing reasons, claim 1 recites judicial exceptions.

memo-berkheimer-20180419.PDF ([ . . . ‘USPTO Berkheimer
Memorandum’].”).
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E. Step 2A(2): Are the Recited Judicial Exceptions
Integrated Into a Practical Application?
Turning to the second issue set forth by the Guidance (see supra 5,
bullet “(2)”), we find the recited judicial exceptions are not integrated into a
practical application. See Guidance, 84 Fed. Reg. at 53 (describing a
“practical application” as a “meaningful limit on the [recited judicial
exceptions], such that the claim is more than a drafting effort designed to
monopolize the [exceptions]”); see also id. at 55 (“exemplary considerations
. . . indicative that an additional element (or combination of elements) may
have integrated the exception into a practical application”); Update at 10–15
(section addressing Step 2A(2)). Specifically, we agree with the Examiner
that claim 1’s additional elements (i.e., claimed features not constituting
judicial exceptions) are “a peer‐to‐peer network” (explicit) and “general
purpose computers performing the generic computer functions” (implicit) of
receiving, transmitting, and appending information. Adv. Act. 2. We
further agree the additional elements are recited at a “high level of
generality”—merely “distributing [] advertisements, transmitting [an]
advertisement, causing the first consumer to transmit [the] advertisement,
and causing the first consumer to append an identifier to [the]
advertisement.” Id. We also agree that, because claim 1 lacks “details
regarding the identifier, the appending process[,] or . . . tracking . . . [of] the
appended identifier to provide rewards,” claim 1 “generically provide[s] for
appending an identifier to an advertisement and . . . rewarding users[, i.e.,]
without setting out how this is to be accomplished.” Ans. 5 (emphasis
added).
We add that McRO, Inc. v. Bandai Namco Games Am. Inc.,
837 F.3d 1299 (Fed. Cir. 2016), exemplifies why claim 1 lacks sufficient
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detail for a practical application of the recited judicial exceptions. McRO’s
claim was held patent-eligible because of “us[ing] a combined order of
specific rules that renders information into a specific format that is then used
and applied to create desired results.” McRO, 837 F.3d at 1315 (emphasis
added). The underlying basis for this finding was that the claim did not
preempt the judicial exception; i.e., the claimed rules satisfied this
criterion. Id. at 1314. McRO explains:
The preemption concern arises when the claims are not
directed to a specific invention[.] . . . A patent is not good for
an effect . . . because such patents would prohibit all other
persons from making the same thing by any means
whatsoever. . . . We therefore look to whether the claims in
these patents focus on a specific means or method
that improves the relevant technology or are instead directed to
a result or effect that itself is the abstract idea and merely
invoke generic processes and machinery.
Id. (citations and quotation marks omitted). Claim 1 does not overcome
these concerns. Claim 1 recites activities of: marketing a product by
incentivizing distributions of related information (claimed advertisement);
and, as part thereof, having a distributor append their identification (claimed
first consumer and identifier) to the information in order to cause the
recipient (claimed another consumer) to subsequently identify the distributor
(claimed “so that the first consumer can be rewarded”).4 These features do

4 The Specification confirms the claimed “so that the first consumer can be
rewarded” encompasses the above-noted activity of an advertisement’s
recipient (claimed second consumer) identifying the advertisement’s sender
(claimed first consumer) in a subsequent transaction. Spec. ¶ 5. As this
activity constitutes a judicial exception, we need not address the Examiner’s
determination that the claimed “so that the first consumer can be rewarded”
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not prevent preemption of the recited judicial exceptions, but rather
constitute the judicial exceptions. See also SAP Am., Inc. v. InvestPic, LLC,
898 F.3d 1161, 1163 (Fed. Cir. 2018), cert. denied 139 S. Ct. 2747 (2019)
(“[An] advance [that] lies entirely in the realm of abstract ideas . . . is
ineligible for patenting.”).
We also add that Secured Mail Sols. LLC v. Universal Wilde, Inc., 873
F.3d 905 (Fed. Cir. 2017), cert. denied, 138 S. Ct. 2000 (2018), further
exemplifies why claim 1’s description of the appended identifier does not
impart patent-eligibility. See also Ans. 6 (citing Secured Mail). As to
Secured Mail’s appended identifier, the Federal Circuit stated:
Secured Mail argues that the claims are specifically directed to
a sender-generated unique identifier, which improved on the
existing process both by reliably identifying the sender of the
mail object and by permitting the sender to create a
bi-directional communication channel between the sender and
recipient of the mail object. The fact that an identifier can be
used to make a process more efficient, however, does not
necessarily render an abstract idea less abstract.
The claims of the Intelligent Mail Barcode patents are not
directed to specific details of the barcode or the equipment for
generating and processing it. The claims generically provide
for the encoding of various data onto a mail object but do not
set out how this is to be performed. The claims state that
various identifiers are affixed to a mail object, stored in a
database, scanned from the mail object, and retrieved from the
database. No special rules or details of the computers,
databases, printers, or scanners are recited. Cf. McRO, 837 F.3d

limitation (which encompasses this activity) is an intended use. Ans. 5. We
note, however, the Digitech decision instructs that a claim preamble’s
description of an invention’s “purpose or intended use” is not a
claim limitation for purposes of patent-eligibility under 35 U.S.C. § 101.
Digitech, 758 F.3d at 1351.
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at 1315 (finding patent eligibility where the “claimed process
uses a combined order of specific rules that renders information
into a specific format that is then used and applied to create
desired results”)[.]
Secured Mail, 873 F.3d at 910. Similar to the claim recitations for Secured
Mail’s identifier, claim 1’s recitations for the identifier describe a
“sender-generated unique identifier [for] . . . reliably identifying the sender
of the [sent] object” in a subsequent electronic transaction, are “not directed
to specific details of the [identifier] or the equipment for generating and
processing it,” and thus “generically provide for the encoding of various data
onto [the sent] object but do not set out how this is to be performed.” Id.
For the foregoing reasons, claim 1 is directed to the recited judicial
exceptions—not to a practical application thereof.
F. Step 2B: Does Claim 1 Recite Anything That Is
Beyond the Recited Judicial Exceptions and Not a Well-Understood,
Routine, Conventional Activity?
Turning to the third and fourth issues set forth by the Guidance
(see supra 5–6, bullets “(3)” and “(4)”), we find the claimed invention does
not comprise a feature that is neither a judicial exception nor
“well-understood, routine, conventional.” 84 Fed. Reg. at 56. Specifically,
we agree with the Examiner that claim 1’s additional elements (see supra 8)
perform (at most) the following “computer functions [that are]
well-understood, routine, and conventional: . . . receiving, processing, and
storing data; electronically . . . extracting data . . . ; . . . automating me[n]tal
tasks; and receiving or transmitting data over a network.” Final Act. 3
(emphasis omitted) (citing the “July 2015 Update: Subject Matter
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Eligibility”);5 see also Ans. 6 (“[G]eneral purpose computer functions[,] as
identified by MPEP [§] 2106.05(d)(II)[,] . . . include at least distributing,
receiving and transmitting data over a network, electronic record keeping,
storing and retrieving information.”). We also agree the claimed peer‐to‐
peer network and peer devices (first consumer and another consumer)
encompass “common network nodes operating in commonplace LAN and
WAN networking environments[,] as supported by at least Dendi [at
paragraphs 13, 65, and 106].” Id. at 5.
For the foregoing reasons, the claimed additional elements merely
append “well-understood, routine, conventional” technology to the recited
judicial exceptions.
G. Appellant’s Arguments
We reviewed Appellant’s arguments (Appeal Br. 6–7; Reply Br. 1–2)
and, in view of our above analyses, are not persuaded the Examiner
erred. We address the below contentions for emphasis.
Appellant contends:
The [Examiner has determined claim 1 does] not detail the
[invention’s] technological requirements[.] See Answer, p. 5.
. . . [T]he claimed invention tells you exactly how to achieve
the results. You have to apply an identifier for the referring
customer so that each referred customer can then be tied back to
the referring customer[, who then] gets credits for all the
peer-to-peer referrals. The Examiner has no art that teaches this

5 The July 2015 Update is available at https://www.uspto.gov/
sites/default/files/documents/iegjuly-2015-update.pdf. The Update presents
a list of computer functions that are judicially-recognized as “well
understood, routine, conventional.” See also MPEP § 2106.05(d)(II)
(presenting a substantially similar list of computer functions that are
judicially-recognized as conventional; cited by the Berkheimer
Memorandum at, § III.A.2, as sufficient support for a Step 2B finding).
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and the claims adequately detail how to do this. Certainly the
elegance of the solution includes its simplicity and it is not seen
how simplicity, which has never been achieved before, can be
an argument against patent eligibility.
Reply Br. 2; see also Appeal Br. 6 (“[Claim 1] is not an attempt to patent
some economic system that provides incentives[,] but rather . . . to claim the
way this is done, [as] specifically adapted for implementation by a
computer.”). We are unpersuaded for the reasons presented in our above
discussion of McRO and Secured Mail. See supra, Step 2A(2).
Appellant also contends:
The [Examiner’s] analysis . . . ignores the way that the
[claimed] identifier is placed on to the advertisement to achieve
results in a computer . . . .
This limitation is simply brushed off as “organize information
through mathematical correlations.” . . .
The claims do not involve either organizing information or
doing so through mathematical correlations. It is not at all
evident why the office action believes there is something
mathematical here.
Appeal Br. 6 (addressing Final Act. 3–5). We are unpersuaded. The
Examiner quotes “organiz[e] information through mathematical
correlations” as the specific abstract idea addressed by Digitech Image
Techs., LLC v. Elecs. for Imaging, Inc., 758 F.3d 1344
(Fed. Cir. 2014). Final Act. 3, 5; Ans. 6. Even assuming (arguendo) the
Examiner errs in analogizing the claimed appending of a sender-generated
identifier to Digitech, the Examiner also analogizes the claimed appending
to Secured Mail. Ans. 6; see also supra 11–12. Appellant does not address
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Secured Mail nor otherwise rebut that appending a sender-generated
identifier to a business communication is a judicial exception.
Appellant also contends claim 1 compels a finding of patent-eligibility
under DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245
(Fed. Cir. 2014) and Enfish, LLC v. Microsoft Corp., 822 F.3d 1327
(Fed. Cir. 2016). Appeal Br. 6–7; Reply Br. 1–2. These decisions, like
McRO, emphasize a need for a claimed mechanism that prevents preemption
of recited judicial exceptions. See DDR, 773 F.3d at 1259 (The claims “do
not attempt to preempt . . . making two web pages look the same,” but
“[r]ather . . . recite a specific way to automate the creation of a composite
web page.”); Enfish, 822 F.3d at 1339 (The claims “recited . . . a specific
type of data structure . . . confirm[ing] . . . the § 101 analysis has not been
deceived by the ‘draftsman’s art.’” (quoting Alice, 573 U.S. at 226)). As
discussed with reference to McRO, the argued features of Appellant’s
claim 1 do not prevent preemption of the judicial exceptions, but rather
constitute judicial exceptions. See supra Step 2A(2).
Accordingly, as we are not persuaded of error, we sustain the rejection
of claims 1, 5–11, 15–20, and 24–30 under 35 U.S.C. § 101.
2 AND 3. REJECTIONS UNDER 35 U.S.C. §§ 103 AND 102
We select claim 1 as representative of the claims rejected under
35 U.S.C. § 103 and claim 26 as representative of the claims rejected under
35 U.S.C. § 102. See 37 C.F.R. § 41.37(c)(1)(iv). For the reasons below,
we are persuaded of error in these rejections of claims 1 and 26.
Each of claims 1 and 26 recites the above-addressed feature of
distributing (transmitting) an advertisement and, as part thereof, first
appending an identifier of the distributor to the advertisement.
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Before proceeding to Appellant’s arguments regarding the disputed
feature (Appeal Br. 8–10; Reply Br. 3), we note the Examiner’s
contradictory findings: for the rejection of claim 1, under 35 U.S.C. § 103,
that “Dendi . . . does not specifically disclose that an identifier . . . is
appended” (Final Act. 10); and for the rejection of claim 26, under
35 U.S.C. § 102, that “Dendi discloses . . . to append an identifier” (id. at
13). The Examiner does not reconcile these findings. Final Act. 13; Ans. 8–
9.6 We are, therefore, uncertain of whether—much less how—the Examiner
perceives the claimed appending to be taught by Dendi.
Accordingly, we do not sustain the 35 U.S.C. § 102 rejection of
claims 26–30 over Dendi.
Turning to the 35 U.S.C. § 103 rejection of claims 1, 5–11, 15–20, 24,
and 25 over Dendi and Greenspun, and again to the claimed appending, the
Examiner finds:
Greenspun discloses that it is well known to dynamically
append a user identifier to output links in at least paragraph
[0029]. Therefore, it would have been obvious to one of
ordinary skill in the art at the time the invention was made to
append the user identifier to the transmitted advertisements of
Dendi. The rational for doing so is that there are a limited
number of predictable ways in which to track a shared
advertisement for the purpose of rewarding the person that
transmitted the advertisement[. A]ppending the user identifier
to the advertisement is one such predictable way.

6 For example, the Examiner does not state claim 26’s “appending” language
merely describes an intended use of the claimed apparatus. Final Act. 13;
Ans. 8–9; see also In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997)
(“Schreiber’s contention that his structure will be used to dispense popcorn
does not have patentable weight if the structure is already known, regardless
of whether it has ever been used in any way in connection with popcorn.”).
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Final Act. 10–11; see also Ans. 7–8. Appellant responds:
[P]aragraph 29 of Greenspun . . . talks about a user identifier
that may be included on subsequent requests to a website. The
user identifier allows the website to tailor content for the user
according to the user context. In other words, all Greenspun is
talking about here is an identifier for a user to enable
customization for that user. Even if one could argue the
identifier is appended to a request, there is no suggestion of
using an identifier appended to a transmission to identify the
entity that transmits an advertisement. In other words[,] there is
no suggestion that when a downstream user sends a
transmission of the advertisement on, he automatically appends
an identifier to that advertisement.
Appeal Br. 9.
We agree with Appellant inasmuch the Examiner does not explain
how Dendi and Greenspun show it would have been obvious to “track a
shared advertisement . . . [by] appending the [person’s] user identifier to the
advertisement” (Final Act. 10–11). At best, the Examiner’s findings for
Dendi evidence a desire to incentivize a device’s promoting of a service
provider’s “products or services” (Dendi ¶ 55) by tracking how many times
the device shares related information and accordingly rewarding the device
user. See, e.g., Final Act. 14.7 The findings for Greenspun evidence a
capability to append a device identifier to information transmitted by the
device (Greenspun ¶ 29). See, e.g., Final Act. 10–11. There is still an
unanswered question of whether an artisan would combine these teachings—
that is, track how many times a device transmits information by appending a
device identifier to the information. The Examiner cannot bridge that gap by

7 Page 14 of the Final action references Greenspun’s paragraph 55, but
plainly intended to reference Dendi’s paragraph 55.
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merely stating, as here, “there are a limited number of predictable ways in
which to track a shared advertisement.” Final Act. 10–11 (block-quoted
above). To take this obvious-to-try approach, the Examiner must—but does
not—first show: the art comprised a finite number of known solutions for
tracking how many times a device transmits information; and appending a
device identification to transmitted information was one of those known
solutions. See Rolls-Royce, PLC v. United Techs. Corp., 603 F.3d 1325,
1339 (Fed. Cir. 2010) (“To determine that an invention would have been
obvious to try on the basis of the record before the time of invention, . . . the
possible approaches and selection to solve the problem must be ‘known and
finite.’” (citation omitted)); see also Slot Speaker Techs., Inc. v. Apple Inc.,
680 F. App’x 932, 941 (Fed. Cir. 2017) (“Apple’s expert . . . explained that
the [modification] . . . would be a routine design choice, as one of a limited
number of known solutions to minimize the presence of standing waves[.]
. . . Based on this showing, we conclude that substantial evidence supports
the Board’s finding that [an artisan] . . . would have recognized that [the
modification] . . . suppresses standing waves.” (internal cite and quotation
marks omitted)); MPEP § 2143.I.E (respective section titles are: Examples
of Basic Requirements of a Prima Facie Case of Obviousness; Exemplary
Rationales; “Obvious To Try”—Choosing From a Finite Number of
Identified, Predictable Solutions, With a Reasonable Expectation of Success)
(8th ed. 2017).
Accordingly, we do not sustain the 35 U.S.C. § 103 rejection of
claims 1, 5–11, 15–20, 24, and 25 over Dendi and Greenspun.
Appeal 2019-000306
Application 13/992,801

18
CONCLUSION
We affirm the Examiner’s decision to reject claims 1, 5–11, 15–20,
and 24–30 under 35 U.S.C. § 101. See 37 C.F.R. § 41.50 (“The affirmance
of the rejection of a claim on any of the grounds specified constitutes a
general affirmance of the decision of the examiner on that claim[.]”).

DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/
Basis
Affirmed Reversed
1, 5–11, 15–20,
24–30
101 Eligibility 1, 5–11, 15–20,
24–30

1, 5–11, 15–20,
24, 25
103 Dendi,
Greenspun
1, 5–11, 15–20,
24, 25
26–30 102 Dendi 26–30
Overall
Outcome
1, 5‐11, 15–20,
24–30

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