Ryan Steelberg et al.Download PDFPatent Trials and Appeals BoardAug 19, 201912587535 - (D) (P.T.A.B. Aug. 19, 2019) Copy Citation 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. 12/587,535 10/08/2009 Ryan Steelberg VTONE.003.X19 3673 95508 7590 08/19/2019 One LLP 4000 MacArthur Blvd. East Tower, Suite 500 Newport Beach, CA 92660 EXAMINER RUHL, DENNIS WILLIAM ART UNIT PAPER NUMBER 3689 NOTIFICATION DATE DELIVERY MODE 08/19/2019 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): IPdocketing@onellp.com PAIRgroup@onellp.com onellpdocketing@onellp.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte RYAN STEELBERG and CHAD STEELBERG ____________________ Appeal 2018-003638 Application 12/587,5351 Technology Center 3600 ____________________ Before JENNIFER S. BISK, LARRY J. HUME, and JULIET MITCHELL DIRBA, Administrative Patent Judges. HUME, Administrative Patent Judge. DECISION ON APPEAL This is a decision on appeal under 35 U.S.C. § 134(a) of the Final Rejection of claims 21, 32, and 34–36, which are all claims pending in the application. Appellants have canceled claims 1–20, 22–31, and 33. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 According to Appellants, the real party in interest is Veritone, Inc. App. Br. 1. Appeal 2018-003638 Application 12/587,535 2 STATEMENT OF THE CASE2 The Invention Appellants’ disclosed embodiments and claimed invention relate to a system and method for distributing text content for use in one or more creatives. Spec. ¶ 1. Exemplary Claim Claim 21, reproduced below, is representative of the subject matter on appeal: 21. A system for dynamically generating and distributing a personalized multimedia composition with a user created avatar, comprising: a computer with a tangible computing processor coupled to a computer readable storage device; an electronic database configured to store a plurality of available electronic multimedia assets captured from a plurality of third party electronic sources, each electronic multimedia asset comprising an electronic profile with data to assist in determining what type of personalized composition the electronic multimedia asset should be included in, said data including geographic information and keywords describing the corresponding electronic multimedia asset; a first user interface configured to enable a user to create an avatar by uploading, cropping, and modifying an image, which is stored in said electronic database with an electronic profile that includes data to assist in determining what type of personalized composition the avatar should be included in; 2 Our decision relies upon Appellants’ Appeal Brief (“App. Br.,” filed Mar. 22, 2017); Reply Brief (“Reply Br.,” filed Feb. 20, 2018); Examiner’s Answer (“Ans.,” mailed Dec. 18, 2017); Final Office Action (“Final Act.,” mailed Aug. 22, 2016); and the original Specification (“Spec.,” filed Oct. 8, 2009). Appeal 2018-003638 Application 12/587,535 3 a second user interface that receives at least one request for a personalized multimedia composition and one or more keywords describing a desired electronic multimedia asset; a recommendation engine configured to recommend at least one electronic multimedia asset to be composed with said avatar in response to said request based on the electronic profiles of the electronic multimedia assets and the electronic profile of said avatar and the one or more keywords provided by said request, and a delivery engine configured to dynamically generate a personalized multimedia composition by superimposing said avatar within the recommended electronic multimedia asset and deliver said composition to one or more users over a public network. Prior Art The Examiner relies upon the following prior art as evidence in rejecting the claims on appeal: Maurer et al. (“Maurer”) US 6,272,231 B1 Aug. 7, 2001 Reaney US 2004/0085334 A1 May 6, 2004 Headings et al. (“Headings”) US 6,925,469 B2 Aug. 2, 2005 Hamasaki et al. (“Hamasaki”) US 2009/0310866 A1 Dec. 17, 2009 Box of Wheaties® cereal that has a sports figure (representation) within the image that is on the front of the cereal box (such as Michael Jordan or Larry Bird or Wayne Gretzky as examples).3 3 Although not prior art, per se, the Examiner cites this non-patent literature as evidence of the well-known nature of overlaying avatars in the taking of Official Notice in Rejection R4. Appeal 2018-003638 Application 12/587,535 4 Rejections on Appeal R1. Claims 21, 32, and 34–36 stand rejected under 35 U.S.C. § 101 as being directed to patent-ineligible subject matter. Final Act. 2. R2. Claims 21, 32, and 34–36 stand rejected under pre-AIA 35 U.S.C. § 112, first paragraph, as lacking written description support. Final Act. 10. R3. Claims 21, 32, and 34–36 stand rejected under pre-AIA 35 U.S.C. § 112, second paragraph as being indefinite. Final Act. 15. R4. Claims 21, 32, and 34–36 stand rejected under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over the combination of Headings, Maurer in view of Official Notice as evidenced by Hamasaki, Reaney, “and a box of Wheaties[®] cereal that has a sports figure (representation) within the image that is on the front of the cereal box (such as Michael Jordan or Larry Bird or Wayne Gretzky as examples).” Final Act. 17. CLAIM GROUPING Based on Appellants’ arguments (App. Br. 6–18) and our discretion under 37 C.F.R. § 41.37(c)(1)(iv), we decide the appeal of patent-ineligible subject matter Rejection R1 of claims 21, 32, and 34–36 on the basis of representative claim 21; we decide the appeal of written description Rejection R2 of claims 21, 32, and 34–36 on the basis of representative claim 21; we decide the appeal of indefiniteness Rejection R3 of claims 21, 32, and 34–36 on the basis of representative claim 21; and we decide the Appeal 2018-003638 Application 12/587,535 5 appeal of obviousness Rejection R4 of claims 21, 32, and 34–36 on the basis of representative claim 21.4 ISSUES AND ANALYSIS In reaching this decision, we consider all evidence presented and all arguments actually made by Appellants. To the extent Appellants have not advanced separate, substantive arguments for particular claims, or other issues, such arguments are waived. 37 C.F.R. § 41.37(c)(1)(iv). As discussed below, we agree with particular arguments set forth by Appellants with respect to Rejections R2 and R3 of claims 21, 32, and 34–36 under 35 U.S.C. § 112. However, we disagree with Appellants’ arguments with respect to Rejections R1 and R4 of claims 21, 32, and 34–36 under 35 U.S.C. §§ 101 and 103(a) and, unless otherwise noted, we incorporate by reference herein and adopt as our own: (1) the findings and reasons set forth by the Examiner in the action from which this appeal is taken, and (2) the reasons and rebuttals set forth in the Examiner’s Answer in response to Appellants’ arguments. We highlight and address specific findings and arguments regarding claim 21 for emphasis as follows. 4 “Notwithstanding any other provision of this paragraph, the failure of appellant to separately argue claims which appellant has grouped together shall constitute a waiver of any argument that the Board must consider the patentability of any grouped claim separately.” 37 C.F.R. § 41.37(c)(1)(iv). In addition, when Appellants do not separately argue the patentability of dependent claims, the claims stand or fall with the claims from which they depend. In re King, 801 F.2d 1324, 1325 (Fed. Cir. 1986). Appeal 2018-003638 Application 12/587,535 6 1. § 101 Rejection R1 of Claims 21, 32, and 34–36 Issue 1 Appellants argue (App. Br. 6–12; Reply Br. 2–6) the Examiner’s rejection of claim 1 under 35 U.S.C. § 101 as being directed to patent- ineligible subject matter is in error. These contentions present us with the following issue: Under the USPTO’s Revised Guidance, informed by our governing case law concerning 35 U.S.C. § 101, is claim 1 patent-ineligible under § 101? Principles of Law A. 35 U.S.C. § 101 “Eligibility under 35 U.S.C. § 101 is a question of law, based on underlying facts.” SAP Am., Inc. v. InvestPic, LLC, 898 F.3d 1161, 1166 (Fed. Cir. 2018). An invention is patent-eligible if it claims a “new and useful process, machine, manufacture, or composition of matter.” 35 U.S.C. § 101.5 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. Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 70 (2012) (brackets in original) (citing Diamond v. Diehr, 450 U.S. 175, 185 (1981)). 5 This threshold analysis of whether a claim is directed to one of the four statutory categories of invention, i.e., a process, machine, manufacture, or composition of matter, is referred to as “Step 1” in the USPTO’s patent- eligibility analysis under § 101. MPEP § 2106. Appeal 2018-003638 Application 12/587,535 7 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 Corp. v. CLS Bank Int’l, 573 U.S. 208, 217–18 (2014) (citing Mayo, 566 U.S. at 75–77). 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); 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” (Diehr, 450 U.S. at 191); “tanning, dyeing, making water-proof cloth, vulcanizing India rubber, smelting ores” (id. at 183 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 “[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 Appeal 2018-003638 Application 12/587,535 8 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. (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.”). Abstract ideas may include, but are not limited to, fundamental economic practices, methods of organizing human activities, and mathematical formulas or relationships. Alice, 573 U.S. at 217–21. Under this guidance we must, therefore, ensure at step one that we articulate what the claims are directed to with enough specificity to ensure the step one inquiry is meaningful. Id. at 217 (“[W]e tread carefully in construing this exclusionary principle lest it swallow all of patent law.”). 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 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. Appeal 2018-003638 Application 12/587,535 9 B. USPTO Revised Guidance The PTO recently published revised guidance in the Federal Register concerning the application of § 101. 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (January 7, 2019) (hereinafter “Revised Guidance”) (https://www.govinfo.gov/content/pkg/FR-2019-01- 07/pdf/2018-28282.pdf). Under the Revised 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 activity such as a fundamental economic practice, or mental processes);6 and (2) additional elements that integrate the judicial exception into a practical application (see Manual for Patent Examining Procedure (“MPEP”) §§ 2106.05(a)–(c), (e)–(h)).7 See Revised Guidance 52–53. Only if a claim (1) recites a judicial exception and (2) does not integrate that exception into a practical application, do we then 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 6 Referred to as “Revised Step 2A, Prong 1” in the Revised Guidance (hereinafter “Step 2A(i)”). 7 Referred to as “Revised Step 2A, Prong 2” in the Revised Guidance (hereinafter “Step 2A(ii)”). Appeal 2018-003638 Application 12/587,535 10 (4) simply appends well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception.8 See Revised Guidance 56. Step 2A(i) – Abstract Idea Informed by our judicial precedent, the Revised Guidance extracts and synthesizes key concepts identified by the courts as abstract ideas to explain that the abstract idea exception includes the following groupings of subject matter, when recited as such in a claim limitation: (a) Mathematical concepts—mathematical relationships, mathematical formulas or equations, mathematical calculations; (b) Certain methods of organizing human activity — fundamental economic principles or practices (including hedging, insurance, mitigating risk); commercial or legal interactions (including agreements in the form of contracts; legal obligations; advertising, marketing or sales activities or behaviors; business relations); managing personal behavior or relationships or interactions between people (including social activities, teaching, and following rules or instructions); and (c) Mental processes—concepts performed in the human mind (including an observation, evaluation, judgment, opinion). Under the Revised Guidance, if the claim does not recite a judicial exception (a law of nature, natural phenomenon, or subject matter within the enumerated groupings of abstract ideas above), then the claim is patent- 8 Items (3) and (4) continue to be collectively referred to as “Step 2B” of the Supreme Court’s two-step framework, described in Mayo and Alice. Appeal 2018-003638 Application 12/587,535 11 eligible at Step 2A(i). This determination concludes the eligibility analysis, except in situations identified in the Revised Guidance.9 However, if the claim recites a judicial exception (i.e., an abstract idea enumerated above, a law of nature, or a natural phenomenon), the claim requires further analysis for a practical application of the judicial exception in Step 2A(ii). Step 2A(ii) – Practical Application If a claim recites a judicial exception in Step 2A(i), we determine whether the recited judicial exception is integrated into a practical application of that exception in Step 2A(ii) by: (a) identifying whether there are any additional elements recited in the claim beyond the judicial exception(s); and (b) evaluating those additional elements individually and in combination to determine whether they integrate the exception into a practical application. The seven identified “practical application” sections of the MPEP,10 cited in the Revised Guidance under Step 2A(ii), are: 9 In the rare circumstance in which an Examiner believes a claim limitation that does not fall within the enumerated groupings of abstract ideas should nonetheless be treated as reciting an abstract idea, the procedure described in of the Guidance for analyzing the claim should be followed. See Revised Guidance, Section III.C. 10 See MPEP §§ 2106.05(a)–(c), (e)–(h). Citations to the MPEP herein refer to revision [R-08.2017]. Sections 2106.05(a), (b), (c), and (e) are indicative of integration into a practical application, while §§ 2106.05(f), (g), and (h) relate to limitations that are not indicative of integration into a practical application. Appeal 2018-003638 Application 12/587,535 12 (1) MPEP § 2106.05(a) Improvements to the Functioning of a Computer or To Any Other Technology or Technical Field (2) MPEP § 2106.05(b) Particular Machine (3) MPEP § 2106.05(c) Particular Transformation (4) MPEP § 2106.05(e) Other Meaningful Limitations (5) MPEP § 2106.05(f) Mere Instructions To Apply An Exception (6) MPEP § 2106.05(g) Insignificant Extra-Solution Activity (7) MPEP § 2106.05(h) Field of Use and Technological Environment See Revised Guidance 55. If the recited judicial exception is integrated into a practical application as determined under one or more of the MPEP sections cited above, then the claim is not directed to the judicial exception, and the patent- eligibility inquiry ends. See id. at 54. If not, then analysis proceeds to Step 2B. Step 2B – “Inventive Concept” or “Significantly More” Under our reviewing courts’ precedent, it is possible that a claim that does not “integrate” a recited judicial exception under Step 2A(ii) is nonetheless patent eligible. For example, the claim may recite additional elements that render the claim patent eligible even though a judicial exception is recited in a separate claim element.11 The Federal Circuit has held claims eligible at the second step of the Alice/Mayo test (USPTO Step 2B) because the additional elements recited in the claims provided “significantly more” than the recited judicial exception (e.g., because the 11 See, e.g., Diehr, 450 U.S. at 187. Appeal 2018-003638 Application 12/587,535 13 additional elements were unconventional in combination).12 Therefore, if a claim has been determined to be directed to a judicial exception under Revised Step 2A, we must also evaluate the additional elements individually and in combination under Step 2B to determine whether they provide an inventive concept (i.e., whether the additional elements amount to significantly more than the exception itself).13 Under the Revised Guidance, we must consider in Step 2B whether an additional element or combination of elements: (1) “Adds a specific limitation or combination of limitations that are not well-understood, routine, conventional activity in the field, which is indicative that an inventive concept may be present;” or (2) “simply appends well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception, which is indicative that an inventive concept may not be present.” See Revised Guidance, III.B.14 12 See, e.g., Amdocs (Israel) Ltd. v. Openet Telecom, Inc., 841 F.3d 1288, 1300, 1304 (Fed. Cir. 2016); Bascom Glob. Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341, 1349–52 (Fed. Cir. 2016); DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1257–59 (Fed. Cir. 2014). 13 The patent eligibility inquiry may contain underlying issues of fact. Mortg. Grader, Inc. v. First Choice Loan Servs. Inc., 811 F.3d 1314, 1325 (Fed. Cir. 2016). In particular, “[t]he question of whether a claim element or combination of elements is well-understood, routine and conventional to a skilled artisan in the relevant field is a question of fact.” Berkheimer v. HP Inc., 881 F.3d 1360, 1368 (Fed. Cir. 2018). 14 In accordance with existing Step 2B guidance, an Examiner’s finding that an additional element (or combination of elements) is well understood, routine, conventional activity must be supported with at least one of the four specific types of evidence required by the USPTO Berkheimer Memorandum, as shown above. For more information concerning evaluation Appeal 2018-003638 Application 12/587,535 14 In the Step 2B analysis, an additional element (or combination of elements) is not well-understood, routine or conventional unless the Examiner finds an evidentiary basis, and expressly supports a rejection in writing with, one or more of the following: 1. 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). . . . 2. A citation to one or more of the court decisions discussed in MPEP § 2106.05(d)(II) as noting the well- understood, routine, conventional nature of the additional element(s). 3. A citation to a publication that demonstrates the well-understood, routine, conventional nature of the additional element(s). . . . 4. A statement that the examiner is taking official notice of the well-understood, routine, conventional nature of the additional element(s). . . . See Berkheimer Memo. The analysis in Step 2B further determines whether an additional element or combination of elements: (a) Adds a specific limitation or combination of limitations that are not well-understood, routine, conventional activity in the field, which is indicative that an inventive concept may be present; or of well-understood, routine, conventional activity, see MPEP § 2106.05(d), as modified by the USPTO Berkheimer Memorandum (USPTO Commissioner for Patents Memorandum dated Apr. 19, 2018, “Changes in Examination Procedure Pertaining to Subject Matter Eligibility, Recent Subject Matter Eligibility Decision (Berkheimer v. HP, Inc.)” (hereinafter “Berkheimer Memo”). Appeal 2018-003638 Application 12/587,535 15 (b) simply appends well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception, which is indicative that an inventive concept may not be present. Revised Guidance; see also Berkheimer Memo. If the Examiner or the Board determines under Step 2B that the element (or combination of elements) amounts to significantly more than the exception itself, the claim is eligible, thereby concluding the eligibility analysis. However, if a determination is made that the element and combination of elements does not amount to significantly more than the exception itself, the claim is ineligible under Step 2B, and the claim should be rejected for lack of subject matter eligibility. Analysis Step 1 – Statutory Category Claim 21, as a system (machine) claim, recites one of the enumerated categories of eligible subject matter in 35 U.S.C. § 101. Therefore, the issue before us is whether it is directed to a judicial exception without significantly more. Step 2A(i): Does the Claim Recite a Judicial Exception? The Examiner determined that claim 21 is directed to “an advertisement for a product or service . . . [which] is a method of organizing human activities and/or an idea of itself.” Final Act. 3–4. The Examiner elaborates by stating, “[t]he result of the claim is the generation of a personalized multimedia composition that can be an advertisement per the Appeal 2018-003638 Application 12/587,535 16 [S]pecification and per the remarks from the [A]ppellant in the Brief.” Ans. 3. We conclude claim 21 does not recite the judicial exceptions of either natural phenomena or laws of nature. We evaluate, de novo, whether claim 21 recites an abstract idea based upon the Revised Guidance. Claim 21 recites, in pertinent part, “[a] system for dynamically generating and distributing a personalized multimedia composition with a user created avatar,” that includes the elements of: (1) “[A] computer with a tangible computing processor coupled to a computer readable storage device”. (2) “[A]n electronic database configured to store a plurality of available electronic multimedia assets captured from a plurality of third party electronic sources”. (3) “[E]ach electronic multimedia asset comprising an electronic profile with data to assist in determining what type of personalized composition the electronic multimedia asset should be included in, said data including geographic information and keywords describing the corresponding electronic multimedia asset”. (4) “[A] first user interface configured to enable a user to create an avatar by uploading, cropping, and modifying an image, which is stored in said electronic database with an electronic profile that includes data to assist in determining what type of personalized composition the avatar should be included in”. (5) “[A] second user interface that receives at least one request for a personalized multimedia composition and one or more keywords describing a desired electronic multimedia asset”. (6) “[A] recommendation engine configured to recommend at least one electronic multimedia asset to be composed with said avatar in response to said request based on Appeal 2018-003638 Application 12/587,535 17 the electronic profiles of the electronic multimedia assets and the electronic profile of said avatar and the one or more keywords provided by said request”. (7) “[A] delivery engine configured to dynamically generate a personalized multimedia composition by superimposing said avatar within the recommended electronic multimedia asset and deliver said composition to one or more users over a public network.” Claims App’x. The Specification provides context as to what the claimed invention is directed to. In this case, the Specification discloses that “[t]he present invention is directed to a creative generation engine and, more particularly, to an engine for generation of asset-related content, and a method of making and using same.” Spec. ¶ 6 (emphasis added). Appellants’ Abstract further describes the invention as includ[ing] at least a creative composition engine, system and method. The creative composition engine includes at least one vault having media assets, wherein the media assets include at least one avatar and at least one environment for placement of the at least one avatar, and a receiver for receiving at least one request for a creative. The request for creative may include a composition request for the at least one avatar, and a request for at least one other of the media assets. The at least one avatar may be a composed creative responsive to the at least one request for a creative, and wherein the composed creative further includes the at least one other of the media assets. Spec. 28 (Abstract). Similarly to the Examiner, we determine that claim 21 recites a certain method of organizing human activity, i.e., a commercial interaction in the form of advertising, marketing, and/or sales activities. This type of activity, i.e., creating a personalized multimedia composition, as recited in each of Appeal 2018-003638 Application 12/587,535 18 limitations (4) through (6) as enumerated above, for example, includes longstanding conduct that existed well before the advent of computers and the Internet and, aside from the computer-related aspects, could be carried out by a human with pen and paper. See CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1375 (Fed. Cir. 2011) (“That purely mental processes can be unpatentable, even when performed by a computer, was precisely the holding of the Supreme Court in Gottschalk v. Benson.”).15 Under the broadest reasonable interpretation standard,16 we conclude claim 21 recites steps that would ordinarily occur when creating a personalized multimedia composition, e.g., creating personalized 15 Although we determine claim 21 recites abstract ideas in the form of a method of organizing human activity, our reviewing court recognizes that “[a]n abstract idea can generally be described at different levels of abstraction.” Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1240 (Fed. Cir. 2016). That need not and, in this case does not, “impact the patentability analysis.” Id. at 1241. Further, “[t]he Board’s slight revision of its abstract idea analysis does not impact the patentability analysis.” Id. Moreover, merely combining several abstract ideas does not render the combination any less abstract. RecogniCorp, LLC v. Nintendo Co., 855 F.3d 1322, 1327 (Fed. Cir. 2017) (“Adding one abstract idea (math) to another abstract idea . . . does not render the claim non-abstract.”); see also FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1093–94 (Fed. Cir. 2016) (determining the pending claims were directed to a combination of abstract ideas). 16 During prosecution, claims must be given their broadest reasonable interpretation when reading claim language in light of the specification as it would be interpreted by one of ordinary skill in the art. In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). Under this standard, we interpret claim terms using “the broadest reasonable meaning of the words in their ordinary usage as they would be understood by one of ordinary skill in the art, taking into account whatever enlightenment by way of definitions or otherwise that may be afforded by the written description contained in the applicant’s specification.” In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997). Appeal 2018-003638 Application 12/587,535 19 advertising. See Final Act. 3–7. For example, creating an avatar and using profile data to determine the type of personalized composition (limitation (4)), and configuring the composition in response to a request (limitations (5) and (6)) are operations that generally occur when creating a personalized multimedia composition.17 Appellants argue, without the uploaded avatar and the data to assist in determining what type of personalized composition the avatar should be included in, it would be much more difficult for a marketer or advertiser to automatically research, purchase, and deliver an advertisement with ease. Accordingly, claim 21 improved an existing technological process for generating and delivering advertisement. App. Br. 7. The Examiner responds to Appellants’ assertion that claim 21 improves a technological process by finding the result of the claims does not serve to improve technology or a technical field. The result of the claim is the generation of a personalized multimedia composition that can be an advertisement per the [S]pecification and per the remarks from the [A]ppellant[s] in the Brief. The claimed method does not improve technology contrary to what has been argued therefore the argument is not persuasive. Ans. 3 (emphasis added). We agree with the Examiner.18 17 Although not explicitly defined by either Appellants or the Examiner, we take the definition of “avatar” to be “an electronic image that represents and may be manipulated by a computer user (as in a game).” See https://www.merriam-webster.com/dictionary/avatar. 18 The Examiner further concludes, “[c]reating custom or personalized advertisements using an avatar is not improving technology or a technical field like was the case in Bascom or even McRo.” Ans. 5. Appeal 2018-003638 Application 12/587,535 20 Appellants also argue claim 21 is patent-eligible “because it does not preempt all other alternative processes to generate an electronic advertisement with an embedded avatar,” and “claim 21 does not improperly monopolize the process of generating an electronic advertisement using an avatar and a personalized composition using other means.” App. Br. 9 (emphasis omitted). We agree with the Examiner’s response, which we incorporate herein by reference. Ans. 9 (explaining that “narrowness of a claim is not dispositive of the eligibility issue”); see also buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355 (Fed. Cir. 2014) (collecting cases); Accenture Glob. Servs., GmbH v. Guidewire Software, Inc., 728 F.3d 1336, 1345 (Fed. Cir. 2013); Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015) (“While preemption may signal patent ineligible subject matter, the absence of complete preemption does not demonstrate patent eligibility.”). In the Reply Brief, Appellants further allege claim 21 is patent eligible in light of the Federal Circuit’s holding in Finjan, decided January 10, 2018, after mailing of the Examiner’s Answer.19 In Finjan, the claims were directed to a system and method for providing computer security by attaching a security profile to a downloadable file, or in other asserted claims, to a system and method for providing computer security at a network gateway by comparing security profiles associated with requested files to the security policies of requesting users. Finjan, 879 F.3d at 1302. Appellants argue, “[s]imilar to the use of the ‘security profile’ in Finjan, the system of claim 21 utilizes ‘an electronic profile with data to assist in determining 19 See Finjan, Inc. v. Blue Coat Sys., Inc., 879 F.3d 1299 (Fed. Cir. 2018). Appeal 2018-003638 Application 12/587,535 21 what type of personalized composition the electronic multimedia asset should be included in.’” Reply Br. 4. We are not persuaded by Appellants’ argument. We are not persuaded because, in contrast to the claims on Appeal, the Federal Circuit held the claims at issue in Finjan were patent eligible, at least in part, because: The “behavior-based” approach to virus scanning was pioneered by Finjan and is disclosed in the ’844 patent’s specification. In contrast to traditional “code-matching” systems, which simply look for the presence of known viruses, “behavior-based” scans can analyze a downloadable’s code and determine whether it performs potentially dangerous or unwanted operations—such as renaming or deleting files. Because security profiles communicate the granular information about potentially suspicious code made available by behavior- based scans, they can be used to protect against previously unknown viruses as well as “obfuscated code”—known viruses that have been cosmetically modified to avoid detection by code-matching virus scans. The security profile approach also enables more flexible and nuanced virus filtering. After an inspector generates a security profile for a downloadable, a user’s computer can determine whether to access that downloadable by reviewing its security profile according to the rules in whatever “security policy” is associated with the user. Administrators can easily tailor access by applying different security policies to different users or types of users. And having the security profile include information about particular potential threats enables administrators to craft security policies with highly granular rules and to alter those security policies in response to evolving threats. Finjan 879 F.3d at 1302. We see insufficient similarity between the patent-eligible claims in Finjan, which utilized “behavior-based” scans to determine malicious Appeal 2018-003638 Application 12/587,535 22 software, with Appellants’ claim 21, which generates a personalized multimedia composition using a user profile. Thus, under Step 2A(i), we agree with the Examiner that claim 1’s system for dynamically generating and distributing a personalized multimedia composition with a user created avatar recites a certain method of organizing human activity. We conclude claim 21, under our Revised Guidance, recites a judicial exception of commercial interactions, i.e., advertising, marketing, or sales activities, and thus, is an abstract idea. Step 2A(ii): Judicial Exception Integrated into a Practical Application? If the claims are directed to a patent-ineligible concept, as we conclude above, we proceed to the “practical application” Step 2A(ii) in which we determine whether the recited judicial exception is integrated into a practical application of that exception by: (a) identifying whether there are any additional elements recited in the claim beyond the judicial exception(s); and (b) evaluating those additional elements individually and in combination to determine whether they integrate the exception into a practical application. As to the specific limitations, we find limitation (3), quoted above, recites insignificant data gathering. See MPEP § 2106.05(g). Data gathering, as performed by the steps or function in Appellants’ claims, is a classic example of insignificant extra-solution activity. See, e.g., In re Bilski, 545 F.3d 943, 963 (Fed. Cir. 2008) (en banc), aff’d sub nom, Bilski, 561 U.S. 593. Appeal 2018-003638 Application 12/587,535 23 We also find limitation (7) recites insignificant post solution activity.20 The Supreme Court guides that the “prohibition against patenting abstract ideas ‘cannot be circumvented . . .’ [by] adding ‘insignificant postsolution activity.’” Bilski, 561 U.S. at 610–11 (quoting Diehr, 450 U.S. at 191–92). On this record, we are of the view that Appellants’ claims do not operate the recited generic computer components in an unconventional manner to achieve an improvement in computer functionality. See MPEP § 2106.05(a). We find no limitations additional to the abstract limitations recited in limitations (4) through (6) identified in Step 2A(i), supra, and the extra and post-solution activity recited by limitations (3) and (7), that integrate the judicial exception of creating personalized advertising into a practical application as determined under one or more of the MPEP sections cited above.21 The claim as a whole merely uses instructions to implement the abstract idea on a computer or, alternatively, merely uses a computer as a tool to perform the abstract idea. Therefore, we conclude the claim as a whole merely uses instructions to implement the abstract idea on a computer or, alternatively, merely uses a computer as a tool to perform the abstract idea. Thus, on this record, Appellants have not shown an improvement or practical application under 20 We also note the “generat[ion of] a personalized multimedia composition by superimposing said avatar within the recommended electronic multimedia asset and deliver[ing] said composition to one or more users,” aside from the computer and network-related aspects, can be carried out by a human by use of pen and paper or suitable media. See CyberSource, 654 F.3d at 1375. 21 We address limitations (1) and (2) in our analysis under Step 2B, infra. Appeal 2018-003638 Application 12/587,535 24 the guidance of Manual of Patent Examining Procedure section 2106.05(a) (“Improvements to the Functioning of a Computer or to Any Other Technology or Technical Field”) or section 2106.05(e) (“Other Meaningful Limitations”). Therefore, we conclude the abstract idea is not integrated into a practical application, and thus, the claim is directed to the judicial exception. Step 2B – “Inventive Concept” or “Significantly More” If the claims are directed to a patent-ineligible concept, as we conclude above, we proceed to the “inventive concept” step. For Step 2B we must “look with more specificity at what the claim elements add, in order to determine ‘whether they identify an “inventive concept” in the application of the ineligible subject matter’ to which the claim is directed.” Affinity Labs of Texas, LLC v. DIRECTV, LLC, 838 F.3d 1253, 1258 (Fed. Cir. 2016) (quoting Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016)). In applying step two of the Alice analysis, our reviewing court guides we must “determine whether the claims do significantly more than simply describe [the] abstract method” and, thus, transform the abstract idea into patentable subject matter. Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed. Cir. 2014). We look to see whether there are any “additional features” in the claims that constitute an “inventive concept,” thereby rendering the claims eligible for patenting even if they are directed to an abstract idea. Alice, 573 U.S. at 221. Those “additional features” must be more than “well-understood, routine, conventional activity.” Mayo, 566 U.S. at 79. Appeal 2018-003638 Application 12/587,535 25 Limitations referenced in Alice that are not enough to qualify as “significantly more” when recited in a claim with an abstract idea include, as non-limiting or non-exclusive examples: adding the words “apply it” (or an equivalent) with an abstract idea22; mere instructions to implement an abstract idea on a computer23; or requiring no more than a generic computer to perform generic computer functions that are well-understood, routine and conventional activities previously known to the industry.24 Evaluating representative claim 21 under step 2 of the Alice analysis, we conclude it lacks an inventive concept that transforms the abstract idea of creating a personalized multimedia composition into a patent-eligible application of that abstract idea. The patent eligibility inquiry may contain underlying issues of fact. Mortg. Grader, 811 F.3d at 1325. In particular, “[t]he question of whether a claim element or combination of elements is well-understood, routine and conventional to a skilled artisan in the relevant field is a question of fact.” Berkheimer, 881 F.3d at 1368. As evidence of the well-understood, routine, and conventional nature of the recited “computer with a tangible computing processor coupled to a computer readable storage device” (limitation (1)), and “an electronic database configured to store a plurality of available electronic multimedia 22 Alice, 573 U.S. at 221–23. 23 Alice, 573 U.S. at 221, e.g., simply implementing a mathematical principle on a physical machine, namely a computer (citing Mayo, 566 U.S. at 84–85). 24 Alice, 573 U.S. at 225, e.g., using a computer to obtain data, adjust account balances, and issue automated instructions. Appeal 2018-003638 Application 12/587,535 26 assets captured from a plurality of third party electronic sources” (limitation (2)), in system claim 21, the Specification discloses: As will be apparent to those skilled in the art, the engines of the present invention may draw on any number of communication access points and media sources, including wired and wireless, radio and cable, telephone, television and internet, personal electronic devices, satellite, databases, data files, and the like, in order to increase media asset content in the vault, contribute media asset content to the vault, and to best allow for recommendations and delivery. Spec. ¶ 47; see also Spec. ¶¶ 31, 40–43, 45. Thus, because the Specification describes the additional elements in general terms, without describing the particulars, we conclude the claim limitations may be broadly but reasonably construed as reciting conventional computer components and techniques, particularly in light of Appellants’ Specification, as quoted above.25 With respect to this step of the analysis, Appellants argue the Office Action has not establish a prima facie case to show that the above ordered combination of limitations is a conventional or longstanding commercial practice. In rejecting claim 21, the Office simply asserted that these limitations are functional and abstract without any actual showing that they are conventional practice. App. Br. 11. Appellants further argue, “[t]he ordered combination of the above limitations is not a conventional or longstanding commercial practice and therefore adds significantly more to the underlying abstract idea of 25 Claim terms are to be given their broadest reasonable interpretation, as understood by those of ordinary skill in the art and taking into account whatever enlightenment may be had from the Specification. Morris, 127 F.3d at 1054. Appeal 2018-003638 Application 12/587,535 27 placing an avatar on an ad” (id.), and further contend, “[a]s evidence . . . in Applicants’ response to the 103 rejection, the prior art does not teach or suggest the unique ordered combination of limitations as recited in claim 21.” Id. In response, we point to the Specification as cited and quoted above as evidence of the well-understood, routine, and conventional nature of the recited limitations (1) and (2). Furthermore, we note the Supreme Court emphasizes, “[t]he ‘novelty’ of any element or steps in a process, or even of the process itself, is of no relevance in determining whether the subject matter of a claim falls within the § 101 categories of possibly patentable subject matter.” Diehr, 450 U.S. at 188–89 (emphasis added). Our reviewing court further guides that “[e]ligibility and novelty are separate inquiries.” Two-Way Media Ltd. v. Comcast Cable Commc’ns, LLC, 874 F.3d 1329, 1340 (Fed. Cir. 2017); see also Affinity Labs, 838 F.3d at 1263 (holding that “[e]ven assuming” that a particular claimed feature was novel does not “avoid the problem of abstractness”). The Manual of Patent Examining Procedure, based upon our precedential guidance, provides additional considerations with respect to analysis of the well-understood, routine, and conventional nature of the claimed computer-related components. Another consideration when determining whether a claim recites significantly more than a judicial exception is whether the additional elements amount to more than a recitation of the words “apply it” (or an equivalent) or are more than mere instructions to implement an abstract idea or other exception on a computer. As explained by the Supreme Court, in order to transform a judicial exception into a patent-eligible application, the additional element or combination of elements must do Appeal 2018-003638 Application 12/587,535 28 “‘more than simply stat[e] the [judicial exception] while adding the words ‘apply it’”. Alice Corp. v. CLS Bank, 573 U.S. __, 134 S. Ct. 2347, 2357, 110 USPQ2d 1976, 1982-83 (2014) (quoting Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 72, 101 USPQ2d 1961, 1965). Thus, for example, claims that amount to nothing more than an instruction to apply the abstract idea using a generic computer do not render an abstract idea eligible. Alice Corp., 134 S. Ct. at 2358, 110 USPQ2d at 1983. See also 134 S. Ct. at 2389, 110 USPQ2d at 1984 (warning against a § 101 analysis that turns on “the draftsman’s art”) . . . . In Alice Corp., the claim recited the concept of intermediated settlement as performed by a generic computer. The Court found that the recitation of the computer in the claim amounted to mere instructions to apply the abstract idea on a generic computer. 134 S. Ct. at 2359-60, 110 USPQ2d at 1984. The Supreme Court also discussed this concept in an earlier case, Gottschalk v. Benson, 409 U.S. 63, 70, 175 USPQ 673, 676 (1972), where the claim recited a process for converting binary-coded decimal (BCD) numerals into pure binary numbers. The Court found that the claimed process had no substantial practical application except in connection with a computer. Benson, 409 U.S. at 71-72, 175 USPQ at 676. The claim simply stated a judicial exception (e.g., law of nature or abstract idea) while effectively adding words that “apply it” in a computer. Id. MPEP § 2106.05(f) (“Mere Instructions To Apply An Exception”). With respect to the Step 2B analysis, we conclude, similar to Alice, the recitation of a system in claim 21 that includes “a computer with a tangible computing processor coupled to a computer readable storage device” (limitation (1)) and “an electronic database configured to store a plurality of available electronic multimedia assets captured from a plurality of third party electronic sources” (limitation (2)), as argued by Appellants, is simply not enough to transform the patent-ineligible abstract idea here into a patent- Appeal 2018-003638 Application 12/587,535 29 eligible invention under Step 2B because these are conventional and generic computer elements. See Alice, 573 U.S. at 221 (“[C]laims, which merely require generic computer implementation, fail to transform [an] abstract idea into a patent-eligible invention.”). We conclude the claims fail the Step 2B analysis because claim 21, in essence, merely recites various computer-based elements along with no more than mere instructions to implement the identified abstract idea using the computer-based elements. Therefore, because the claims fail under both the Step 2A and Step 2B analyses, we sustain the Examiner’s § 101 rejection of independent claim 21, and grouped claims 32 and 34–36, not argued separately, and which fall therewith. See Claim Grouping, supra. 2. § 112, ¶ 1, Written Description Rejection R2: Claims 21, 32, 34–36 Issue 2 Appellants argue (App. Br. 12–15) the Examiner’s rejection of claim 21 under 35 U.S.C. § 112, first paragraph, as lacking written description support is in error. These contentions present us with the following issues: Did the Examiner err in finding a lack of written description support for “[a] system for dynamically generating and distributing a personalized multimedia composition with a user created avatar” that includes, in particular, (a) a “recommendation engine,” because the Specification provides no guidance on how to make a recommendation; (b) how the avatar Appeal 2018-003638 Application 12/587,535 30 is created via the recited “first interface”; and (c) the recited “second interface,” as recited in claim 21? Principles of Law The test for compliance with the written description requirement is “whether the disclosure of the application relied upon reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date.” Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc). “[T]he level of detail required to satisfy the written description requirement varies depending on the nature and scope of the claims and on the complexity and predictability of the relevant technology.” Id.; cf. U.S. v. Telectronics, Inc., 857 F.2d 778, 785 (Fed. Cir. 1988) (“The test of enablement is whether one reasonably skilled in the art could make or use the invention from the disclosures in the patent coupled with information known in the art without undue experimentation.”). Further, the Specification “need not describe the claimed subject matter in exactly the same terms as used in the claims.” Eiselstein v. Frank, 52 F.3d 1035, 1038 (Fed. Cir. 1995). “If . . . the specification contains a description of the claimed invention, albeit not in ipsis verbis (in the identical words), then the examiner . . . must provide reasons why one of ordinary skill in the art would not consider the description sufficient.” In re Alton, 76 F.3d 1168, 1175 (Fed. Cir. 1996). Appeal 2018-003638 Application 12/587,535 31 Analysis (a) “recommendation engine” The Examiner highlights the fact that the written description requirement is separate and distinct from the enablement requirement. Final Act. 10 (citing Ariad Pharm., 598 F.3d at 1340). However, the Examiner continues by erroneously formulating the written description rejection as follows: The specification as originally filed contains no guidance setting forth how the applicant is making the recommendation other than the fact that it is based on the media asset profile, the avatar profile, and the keywords. The specification does not disclose how this is being done and how the actual recommendation is being made by using this information. The extent of the disclosure in the specification appears to be the fact that the profiles for the media assets and the avatar are used along with keywords to recommend a media asset. The manner in which this information/data is being used is not disclosed other than to recite the end result that is to be achieved. Final Act. 11–12. With this stated emphasis on the asserted lack of “how” a recommendation is made, it appears the Examiner has conflated the enablement requirement with the written description requirement under 35 U.S.C. § 112, first paragraph. Furthermore, Appellants provide a persuasive and detailed argument that their disclosure provides adequate written description support for the recited “recommendation engine.” See App. Br. 13–14 (citing Spec. ¶¶ 26–28). Appeal 2018-003638 Application 12/587,535 32 Therefore, we are persuaded by Appellants’ argument that the recited “recommendation engine” has adequate written description support. (b) first user interface / avatar creation The Examiner finds, “with respect to the limitation reciting a first user interface that is used to allow a user to create an avatar by uploading, cropping, and modifying an image, while this function has literal support in the specification as originally filed, the applicant has not disclosed how they are actually causing the avatar to be created.” Final Act. 12. Again, we determine the Examiner appears to have conflated the enablement requirement with the written description requirement under 35 U.S.C. § 112, first paragraph. Appellants persuasively respond to the Examiner’s rejection by pointing out that the recited user interface features are clearly disclosed in FIG. 2 as 1st and 2nd devices and also in paragraphs [0022] and [0031]. Specifically, the Specification teaches that “[t]he images may be uploaded from an existing photograph, for example, or may be imported from a camera or a video camera attached to, or accessible via, a user interface, or through other electronic media.” Specification, para. [0033]. “Creative requests 22 may be made via an [sic] “wizard” using templates, as will be apparent to those skilled in the art.” Specification, para. [0022]. Accordingly, based at least in the above paragraphs, one skill in the art can reasonably recognized what had been invented and claimed. App. Br. 14. Appeal 2018-003638 Application 12/587,535 33 We agree with Appellants’ argument regarding the adequacy of their disclosure, and disagree with the Examiner’s application of the relevant law concerning written description under § 112, first paragraph. (c) “second interface” The Examiner finds, “there is no disclosure to having a second interface as claimed . . . [and] the second interface is considered to be new matter that is not supported by the specification as originally filed.” Final Act. 12. Claim 21 recites, in pertinent part, “a second user interface that receives at least one request for a personalized multimedia composition and one or more keywords describing a desired electronic multimedia asset.” Claims App’x (emphasis added). As cited above, and as supported by Appellants’ “SUMMARY OF CLAIMED SUBJECT MATTER” section of the Appeal Brief (3), Appellants respond to the Examiner’s rejection by pointing out that the recited “user interface features are clearly disclosed in FIG. 2 as 1st and 2nd devices and also in paragraphs [0022] and [0031].” App. Br. 14. As indicated above, Appellants’ Specification discloses “[c]reative requests 22 may be made via an [sic] ‘wizard’ using templates, as will be apparent to those skilled in the art.” Spec. ¶ 22. Contrary to the Examiner’s determination (Ans. 14) that “[e]ven if the claimed wizard satisfies the claimed 2nd interface, there is nothing disclosed about the interface/wizard and how it works beyond that of disclosing that a wizard can be used to Appeal 2018-003638 Application 12/587,535 34 make a creative request,” we find the disclosed “wizard” provides adequate written description support for the recited “second interface.”26 We agree with Appellants’ argument (App. Br. 14) regarding the adequacy of their disclosure, and disagree with the Examiner’s application of the relevant law concerning written description under § 112, first paragraph. Therefore, based upon the findings above, on this record, we are persuaded of error in the Examiner’s finding of lack of written description support for the above-identified limitations such that we do not sustain the Examiner’s written description Rejection R2 of independent claim 21, and grouped claims 32 and 34–36 which stand therewith. See Claim Grouping, supra. 3. § 112, ¶ 2, Indefiniteness Rejection R3: Claims 21, 32, and 34–36 Issue 3 Appellants argue (App. Br. 15–16; Reply Br. 6) the Examiner’s rejection of claim 21 under 35 U.S.C. § 112, second paragraph, as being indefinite is in error. These contentions present us with the following issue: 26 We again point out that the rejection is for lack of written description, and not for lack of an enabling disclosure. See Alton, 76 F.3d at 1175 (If the Specification contains a description of the claimed invention, “albeit not in ipsis verbis (in the identical words), then the examiner . . . must provide reasons why one of ordinary skill in the art would not consider the description sufficient.”). We find no such reasoning provided by the Examiner, except to suggest the recited limitation is not enabled. See Final Act. 12; Ans. 14. Appeal 2018-003638 Application 12/587,535 35 Did the Examiner err in concluding the claims are indefinite because the scope of the recited “first user interface” in claim 21 is unclear? Principles of Law “[A] patent is invalid for indefiniteness if its claims, read in light of the specification delineating the patent, and the prosecution history, fail to inform, with reasonable certainty, those skilled in the art about the scope of the invention.” Nautilus, Inc. v. Biosig Instruments, Inc., 572 U.S. 898, 901 (2014). Further, we give pending claims “their broadest reasonable interpretation consistent with the specification” and “in light of the specification as it would be interpreted by one of ordinary skill in the art.” Am. Acad., 367 F.3d at 1364. Analysis The Examiner concluded the claims are indefinite because “[i]t is not clear what the scope of the claimed configuration is for the claimed first user interface” (Final Act. 15), and because “it is not known what kinds of user interfaces are being claimed by the ‘configured to’ language of” claim 21. Id. at 16. The Examiner further stated: [O]ne of ordinary skill in the art wishing to avoid infringement would not understand what the scope of the claim is as far as what kind of configuration is being claimed for the interface. It is not clear what kind of first user interface is being claimed and what the boundaries are that are being imposed in the claim by this language (interface configured to). This somewhat stems from the fact that the specification does not actually disclose how the images are being used to create the claimed avatar (see 112, 1st rejection) so it is not clear what is required of the interface to be configured to enable a user to create an avatar as claimed. This deficiency in the disclosure is such that it also renders the claim language indefinite because it is not known Appeal 2018-003638 Application 12/587,535 36 what kinds of user interfaces are being claimed by the “configured to” language of the claim. Final Act. 16. Appellants argue “the Specification teaches that ‘images may be uploaded from an existing photograph, for example, or may be imported from a camera or a video camera attached to, or accessible via, a user interface, or through other electronic media.’” App. Br. 15 (quoting Spec. ¶ 31). In addition, Appellants respectfully submit that the claim does indeed define the scope (kind) of user interface being claimed. That is, a user interface that “enable[s] a user to create an avatar by uploading, cropping, and modifying an image.” There is no requirement in Section 112, second paragraph, that requires the Applicants to further define what the user interface may look like (if that is what the Office is looking for). It is clear from the claim language that the user interface enables one to upload, crop, and modify an image. Id. at 16. We disagree with the Examiner’s conclusion that the “first interface” as recited in claim 21, is indefinite. See Ans. 15–16 (stating Appellants’ arguments are “not persuasive because it is still not clear as to what kinds of configurations are being claimed and what kinds are excluded from the claim scope. The boundaries imposed by this limitation is not clear in terms of the claimed configuration.”). We disagree with the Examiner because we find the Examiner has equated claim breadth with indefiniteness, which the predecessor to our reviewing court has held to be reversible error. See In re Miller, 441 F.2d 689 (CCPA 1971); In re Gardner, 427 F.2d 786, 788 (CCPA 1970) Appeal 2018-003638 Application 12/587,535 37 (“Breadth is not indefiniteness.”); see also MPEP § 2173.04 (instructing that a broad claim is not indefinite merely because it encompasses a wide scope of subject matter provided the scope is clearly defined. For example, a genus claim that covers multiple species is broad, but is not indefinite because of its breadth, which is otherwise clear.). Therefore, based upon the findings above, on this record, we are persuaded of at least one error in the Examiner’s legal conclusion of indefiniteness, such that we do not sustain the Examiner’s indefiniteness rejection of independent claim 21, and grouped claims 32 and 34–36 which stand therewith. See Claim Grouping, supra.27 4. § 103(a) Obviousness Rejection R4: Claims 21, 32, and 34–36 Issue 4 Appellants argue (App. Br. 15–16; Reply Br. 6) the Examiner’s rejection of claim 21 under 35 U.S.C. § 103(a) as being unpatentable over the combination of Headings, Maurer in view of Official Notice as evidenced by Hamasaki, Reaney, and a box of Wheaties® cereal is in error. These contentions present us with the following issue: Did the Examiner err in concluding the cited prior art teaches or suggests the recited “system for dynamically generating and distributing a 27 The Examiner also concludes the recited second interface is likewise indefinite by finding that no second interface “is found to be disclosed in the specification as originally filed . . . . [and which] does not appear to be consistent with the original disclosure and is indefinite for that reason.” Final Act. 16. However, it appears the Examiner has applied the written description requirement rather than the definiteness requirement of § 112 to this limitation, and therefore we disagree with the Examiner’s conclusion. Appeal 2018-003638 Application 12/587,535 38 personalized multimedia composition with a user created avatar” because the Examiner allegedly engaged in the use of impermissible hindsight and thereby failed to set forth articulated reasoning as to how the Headings reference teaches or suggests the use of an avatar in the Headings’ content management system? Principles of Law In KSR, the Court stated “[t]he combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.” KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 416 (2007). When a work is available in one field of endeavor, design incentives and other market forces can prompt variations of it, either in the same field or a different one. If a person of ordinary skill can implement a predictable variation, § 103 likely bars its patentability. For the same reason, if a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill . . . . [A] court must ask whether the improvement is more than the predictable use of prior art elements according to their established functions. Id. at 417. Further, the relevant inquiry is whether the Examiner has set forth “some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (cited with approval in KSR, 550 U.S. at 418). Appeal 2018-003638 Application 12/587,535 39 Analysis The Examiner concludes claim 21 is obvious over the combination of Headings, Maurer, and Official Notice (evidenced by Hamasaki, Reaney, and a box of Wheaties® cereal), by finding Headings teaches or suggests personalization of multimedia composition, a recommendation engine, and a delivery engine (Final Act. 17–19); Maurer teaches or suggests the creation of avatars (id. at 19); taking Official Notice that the concept of creating an avatar is well-known in the art (id.), and further “tak[ing] official notice of the fact that it is known in the art that one can take a representation of any kind, including an avatar, and superimpose it within an image (a media asset).” Id. at 21. With respect to the motivation to combine, the Examiner finds: It would have been obvious to one of ordinary skill in the art at the time the invention was made to provide Headings with the further ability to allow a user to create and store an avatar as a media asset to be stored in the system of Headings, and so that it is made available for use by others for a fee (which is the purpose of Headings). This is simply taking a subcombination known separately in the art, and providing it to the system of Headings to obtain predictable results as far as having a way to allow a user to create and store an avatar. The combination is no more than a simple arrangement of old elements, with each performing the same function it had been known to perform, yielding no more than one would expect from such arrangement . . . . All of the claimed elements were known in the prior art and one of ordinary skill in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination would have yielded nothing more than predictable results to one of ordinary skill in the art at the time of the invention (i.e., predictable results are obtained by combing the processing functionality of being able Appeal 2018-003638 Application 12/587,535 40 to create an avatar from Maurer with the media asset system of Headings). Final Act. 20 (citing KSR, 550 U.S. at 406). The Examiner further finds, with respect to the motivation to combine, “[i]t would have been obvious to one of ordinary skill in the art at the time the invention was made to also use Headings with media assets such as avatars, so that avatars can also be made available for use by others as a media asset.” Final Act. 21 (citing Reaney, Hamasaki, and Wheaties® box of cereal as evidence of the well-known aspects of the use of avatars, including an avatar superimposed upon a media asset). Appellants contend “the Office has used impermissible hindsight to construct all of the limitations recited by claim [2]1.” App. Br. 17. Further, [n]owhere does Headings disclose or suggest an avatar in such a content management system . . . . Headings has to at least suggest the use of an avatar in some capacity or in some form. Otherwise, this strongly indicates hindsight reconstruction . . . . The Office has not established a prima facie case of obviousness because the Office failed to set forth articulated reasoning how Headings teaches or suggests the use of an avatar in the Headings’ content management system. Id. Appellants also argue, it seems to be an impermissible hindsight to suggest that [the cited prior art, including the taking of Official Notice] teach or suggest all of the limitation[s] of claim [2]1. The Office has not provided an articulated reasoning how one skill in the art can bridge the gap created by the missing teaching from each reference. App. Br. 18. Regarding Appellants’ hindsight argument, we are cognizant that our reviewing courts have not established a bright-line test for hindsight. Appeal 2018-003638 Application 12/587,535 41 However, in KSR, the U.S. Supreme Court guides that “[a] factfinder should be aware, of course, of the distortion caused by hindsight bias and must be cautious of arguments reliant upon ex post reasoning.” KSR, 550 U.S. at 421 (citing Graham v. John Deere Co. of Kansas City, 383 U.S. 1, 36 (1966)). Nevertheless, the Supreme Court also qualified the issue of hindsight by stating “[r]igid preventative rules that deny factfinders recourse to common sense, however, are neither necessary under our case law nor consistent with it.” Id. In this case, the Examiner has relied upon what appears to be common sense to find that “[t]he creation of avatars is well known in the art and the applicant is simply using a subcombination known in the art (avatar creation) and including that with an advertising system such as that of Headings.” Ans. 17. Further in this regard, the Examiner finds: An avatar is a representation, and the claim recites that it is an image that has been uploaded, cropped, and modified. This includes things such as images of Mickey Mouse or a famous person such as those placed on a Wheaties box of cereal. The rejection of record states that it would have been obvious to use media assets such as images of Mickey Mouse or of Homer Simpson . . . . One could argue that this is also taking a subcombination known separately in the art and combining it with the system of Headings to achieve predictable results. Avatars are and can be considered as a media asset, and the teaching in Headings that the media assets can any category of media assets teaches those of ordinary skill in the art that assets other than movies and music (other than the specific examples given) can be contemplated for use. For these reasons, the use of an avatar (a representation in a broad sense) in the system of Headings would have been obvious to one of ordinary skill in the art and the traversal is not persuasive. Ans. 17–18. Appeal 2018-003638 Application 12/587,535 42 In further response, we note Appellants’ contention regarding Headings is not responsive to the rejection as set forth by the Examiner, and therefore, does not persuade us of error on the part of the Examiner because Appellants are responding to the rejection by attacking the references separately, even though the rejection is based on the combined teachings of the references. Nonobviousness cannot be established by attacking the references individually when the rejection is predicated upon a combination of prior art disclosures. See In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986). We further disagree with Appellants’ contention that the Examiner failed to provide proper motivation with respect to the suggested combination, and find the Examiner has provided articulated reasoning for the suggested combination as required by KSR. See Final Act. 20–21 (quoted above in pertinent part). Therefore, based upon the findings above, on this record, we are not persuaded of error in the Examiner’s reliance on the cited prior art combination to teach or suggest the limitations of claim 21, nor do we find error in the Examiner’s resulting legal conclusion of obviousness such that we sustain the Examiner’s obviousness Rejection R4 of independent claim 21, and grouped claims 32 and 34–36 which fall therewith. See Claim Grouping, supra. Appeal 2018-003638 Application 12/587,535 43 CONCLUSION A. Under our Revised Guidance, governed by relevant case law, we sustain Rejection R1 of claims 21, 32, and 34–36 under 35 U.S.C. § 101 as being directed to patent-ineligible subject matter. B. We do not sustain written description Rejection R2 of claims 21, 32, and 34–36 under 35 U.S.C. § 112, first paragraph. C. We do not sustain indefiniteness Rejection R3 of claims 21, 32, and 34–36 under 35 U.S.C. § 112, second paragraph. D. We sustain obviousness Rejection R4 of claims 21, 32, and 34– 36 under 35 U.S.C. § 103(a). Because we have affirmed at least one ground of rejection with respect to each claim on appeal, we affirm the Examiner’s decision. See 37 C.F.R. § 41.50(a)(1). DECISION We affirm the Examiner’s decision rejecting claims 21, 32, and 34–36. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). See 37 C.F.R. § 41.50(f). AFFIRMED Copy with citationCopy as parenthetical citation