Ryan Steelberg et al.

Patent Trials and Appeals Board

Aug 19, 2019

12587535 - (D) (P.T.A.B. Aug. 19, 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.
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.
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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).
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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.
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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
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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).
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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.
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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
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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.
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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)”).
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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.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.
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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.
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(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.
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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
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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”).
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(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
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[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
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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
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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).
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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.
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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).
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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
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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.
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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.
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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.
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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.
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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.
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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
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“‘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-
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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
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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).
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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).
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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.
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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
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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.
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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
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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)
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(“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.
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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).
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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
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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.
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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.
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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.

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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