Time Warner Cable Enterprises LLC

Patent Trials and Appeals Board

Nov 23, 2020

2019003416 (P.T.A.B. Nov. 23, 2020)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
15/443,992 02/27/2017 Steven Riedl TWAR.045C1C1C1/
TWC06-03C3
2239
27299 7590 11/23/2020
GAZDZINSKI & ASSOCIATES, PC
16644 WEST BERNARDO DRIVE
SUITE 201
SAN DIEGO, CA 92127
EXAMINER
SALTARELLI, DOMINIC D
ART UNIT PAPER NUMBER
2421
MAIL DATE DELIVERY MODE
11/23/2020 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte STEVEN RIEDL, BRYAN SANTANGELO,
and GABE ZIMBELMAN

Appeal 2019-003416
Application 15/443,992
Technology Center 2400

Before JEAN R. HOMERE, CARL W. WHITEHEAD JR, and
DAVID J. CUTITTA II, Administrative Patent Judges.
HOMERE, Administrative Patent Judge.

DECISION ON APPEAL
I. STATEMENT OF THE CASE1
Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the
Examiner’s rejection of claims 43–64. Claims App. Claims 1–42 have been
canceled. Id. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We refer to the Specification, filed Feb. 27, 2017 (“Spec.”); Final Office
Action, mailed Mar. 19, 2018 (“Final Act.”); Appeal Brief, filed Oct. 12,
2018 (“Appeal Br.”); Examiner’s Answer, mailed Jan. 24, 2019 (“Ans.”),
and Reply Brief, filed Mar. 25, 2019 (“Reply Br.”).
2 We use the word “Appellant” to refer to “Applicant” as defined in
37 C.F.R. § 1.42(a). Appellant identifies the real party in interest as Time
Warner Cable Enterprises LLC. Appeal Br. 1.
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II. CLAIMED SUBJECT MATTER
According to Appellant, the claimed subject matter relates to a
method and system for optimizing revenue and associated delivery of
content using available bandwidth in a cable television network. Spec. 1:3–
6. Figure 4c, reproduced below, is useful for understanding the claimed
invention:

Figure 4c illustrates headend (150) that performs cost/benefit optimization to
deliver requested content to CPE (consumer premises equipment 106) via
available bandwidth according to consumer profile. Id. at 25:7–11.

As depicted in Figure 4C above, upon receiving from CPE (106) a
request to stream a particular content, a network optimization controller
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(NOC) in headend (150) evaluates the cost benefits associated with available
delivery options to optimize the bandwidth available to the CPE according to
a metric generated based on the consumer’s profile (e.g. demographics,
interests, and preferences) while optimizing the net cost for delivering the
requested content along with targeted advertisement to the consumer. Spec.
6:20–31, 20:8–29, 33:23–34:15. In particularly, the NOC evaluates the
metric based on its correlation of demographic data associated with the CPE
and the digital data stream so as to select the optimal delivery option
between creating a new digital program stream and switching to another
existing program stream. Id.
Claims 43, 51, and 57 are independent. Claim 43 is illustrative of the
claimed subject matter:
43. Computer readable apparatus comprising a non-transitory
storage medium, the non-transitory medium comprising at least one
computer program having a plurality of instructions configured to,
when executed on a processing apparatus:
based at least on receipt of data representative of a request for
digitally rendered content, the data representative of the request issued
from a computerized client device in data communication with a
content delivery network, the computerized client device having at
least one subscriber associated therewith, analyze two or more
possible options for service of the request for the digitally rendered
program, the analysis comprising an evaluation of at least one
metric, the at least one metric determined based at least in part
on a correlation of: (i) demographic data associated with the at least
one subscriber, to (ii) at least one stream characterization profile, the
at least one stream characterization profile comprising data descriptive
of one or more demographic attributes of at least one of a plurality of
digital program streams;
process the at least one of the plurality of digital program
streams, the at least one of the plurality of digital program streams
configured to carry the digitally rendered content, the processing of
the at least one of the plurality of digital program streams comprising
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segmentation of the at least one digital program stream at one or more
boundaries;
establish a data session with the computerized client device, the
session established according to a networking protocol; and
insert digitally rendered advertising or promotional content within the
at least one of the plurality of digital program streams at the one or
more boundaries, the at least one of the plurality of digital program
streams being deliverable via the data session and according to one
of the two or more possible options;
wherein the inserted digitally rendered advertising or
promotional content and the one of the two or more possible options
are each selected based at least in part on the analysis.
Appeal Br. 23 (Claims Appendix).

III. REFERENCES
The Examiner relies upon the following references.3
Name Reference Date
Eldering US 2001/0004733 A1 June 21, 2001
Zubeldia US 2003/0144967 A1 July 31, 2003
Coffin, III US 2003/0172376 A1 Sept. 11, 2003
La Joie US 2006/0171390 A1 Aug. 3, 2006
Smith US 2006/0277569 A1 Dec. 7, 2006
Bayer US 2008/0263578 A1 Oct. 23, 2008
Heller US 7,988,560 B1 Aug. 2, 2011
Riedl US 8,959,563 B2 Feb. 17, 2015

IV. REJECTIONS4
The Examiner rejects claims 43–64 as follows:

3 All reference citations are to the first named inventor only.
4 The Examiner withdrew the indefiniteness rejection previously entered
against claim 43 in the Final Action. Ans. 3.
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1. Claims 43–64 are rejected on the ground of nonstatutory double patenting
as being unpatentable over claims 1–26 of US Patent 8,959,563. Final
Act. 5–6.
2. Claims 43–64 are rejected on the ground of nonstatutory double patenting
as being unpatentable over claims 1–18 of US Patent 9,584,839. Final
Act. 6.
3. Claim 57 is rejected under 35 U.S.C. § 101 as not directed to patent
eligible subject matter. Final Act. 7–8.
4. Claims 57, 58, and 64 are rejected under 35 U.S.C. § 102(b) as being
anticipated by La Joie. Id. at 8–10.
5. Claims 43–48, 51–53 and 56 are rejected under 35 U.S.C. § 103 as being
unpatentable over the combination of Lajoie and Bayer. Id. at 10–19.
6. Claim 49 is rejected under 35 U.S.C. § 103 as being unpatentable over
the combination of LaJoie, Bayer, and Heller. Id. at 19–20.
7. Claim 50 is rejected under 35 U.S.C. § 103 as being unpatentable over
the combination of Lajoie, Bayer, and Coffin. Id. at 20–21.
8. Claims 54 and 55 are rejected under 35 U.S.C. § 103 as being
unpatentable over the combination of Lajoie, Bayer, and Smith. Id. at
21–22.
9. Claims 59 and 60 are rejected under 35 U.S.C. § 103 as being
unpatentable over the combination of Lajoie and Smith. Id. at 22–21.
10. Claim 61 is rejected under 35 U.S.C. § 103 as being unpatentable over
the combination of Lajoie and Zubeldia. Id. at 23.
11. Claims 62 and 63 are rejected under 35 U.S.C. § 103 as being
unpatentable over the combination of Lajoie and Eldering. Id. at 24–25.

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V. ANALYSIS
1. Double Patenting Rejections
Because Appellant has not presented any arguments to rebut the
Examiner’s double patenting rejections, we summarily affirm the rejections
of claims 43–64.
2. Patent Eligibility Rejection
An invention is patent-eligible if it claims a “new and useful process,
machine, manufacture, or composition of matter.” 35 U.S.C. § 101.
However, the U.S. Supreme Court has long interpreted 35 U.S.C. § 101 to
include implicit exceptions: “[l]aws of nature, natural phenomena, and
abstract ideas” are not patentable. E.g., Alice Corp. v. CLS Bank Int’l, 573
U.S. 208, 216 (2014).
In determining whether a claim falls within an excluded category, we
are guided by the Court’s two-step framework, described in Mayo and Alice.
Alice, 573 U.S. at 217–18 (citing Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 566 U.S. 66, 75–77 (2012)). In accordance with that framework,
we first determine what concept the claim is “directed to.” See Alice, 573
U.S. at 219 (“On their face, the claims before us are drawn to the concept of
intermediated settlement, i.e., the use of a third party to mitigate settlement
risk.”); see also Bilski v. Kappos, 561 U.S. 593, 611 (2010) (“Claims 1 and 4
in petitioners’ application explain the basic concept of hedging, or protecting
against risk.”).
Concepts determined to be abstract ideas, and thus patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219–20; Bilski, 561 U.S. at 611);
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594–95 (1978)); and
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mental processes (Gottschalk v. Benson, 409 U.S. 63, 67 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as “molding rubber products” (Diamond v. Diehr, 450 U.S. 175, 191
(1981)); “tanning, dyeing, making water-proof cloth, vulcanizing India
rubber, smelting ores” (Diehr, 450 U.S. at 182 n.7 (quoting Corning v.
Burden, 56 U.S. 252, 267–68 (1854))); and manufacturing flour (Benson,
409 U.S. at 69 (citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
In Diehr, the claim at issue recited a mathematical formula, but the
Court held that “[a] claim drawn to subject matter otherwise statutory does
not become nonstatutory simply because it uses a mathematical formula.”
Diehr, 450 U.S. at 176; see also id. at 191 (“We view respondents’ claims as
nothing more than a process for molding rubber products and not as an
attempt to patent a mathematical formula.”). Having said that, the Court
also indicated that a claim “seeking patent protection for that formula in the
abstract . . . is not accorded the protection of our patent laws, and this
principle cannot be circumvented by attempting to limit the use of the
formula to a particular technological environment.” Id. (citation omitted)
(citing Benson and Flook), id. at 187 (“It is now commonplace that an
application of a law of nature or mathematical formula to a known structure
or process may well be deserving of patent protection.”).
If the claim is “directed to” an abstract idea, we turn to the second
step of the Alice and Mayo framework, where “we must examine the
elements of the claim to determine whether it contains an ‘inventive
concept’ sufficient to ‘transform’ the claimed abstract idea into a patent-
eligible application.” Alice, 573 U.S. at 221. “A claim that recites an
abstract idea must include ‘additional features’ to ensure ‘that the [claim] is
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more than a drafting effort designed to monopolize the [abstract idea].’” Id.
(quoting Mayo, 566 U.S. at 77). “[M]erely requir[ing] generic computer
implementation[] fail[s] to transform that abstract idea into a patent-eligible
invention.” Id.
The Office published revised guidance on the application of
Section 101. 2019 Revised Patent Subject Matter Eligibility Guidance, 84
Fed. Reg. 50–57 (Jan. 7, 2019) (“2019 PEG”). Recently, the Office
published an update to that guidance. October 2019 Patent Eligibility
Guidance Update, 84 Fed. Reg. 55,942 (hereinafter “PEG Update”). Under
the 2019 PEG and PEG Update, we first look to whether the claim recites:
(1) any judicial exceptions, including certain groupings of
abstract ideas (i.e., mathematical concepts, certain
methods of organizing human activity such as a
fundamental economic practice, or mental processes); and

(2) additional elements that integrate the judicial exception
into a practical application (see MPEP § 2106.05(a)–(c),
(e)–(h)).5

See 2019 PEG, 52, and 55–56. Only if a claim: (1) recites a judicial
exception; and (2) does not integrate that exception into a practical
application, does the office 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
(4) simply appends well-understood, routine, conventional
activities previously known to the industry, specified at a
high level of generality, to the judicial exception.
See 2019 PEG 56.

5 All references to the MPEP are to 9th ed. Rev. 10.2019 (June 2020).
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We analyze the patent-eligibility rejection with the principles
identified above in mind.
Examiner’s Findings and Conclusions
The Examiner determines that because claim 57 recites a “method for
deciding whether it is optimal to create a new digital program stream or
switch a client device onto an existing digital program stream” it is thereby
directed to the abstract idea of “choosing an optimal option, with no
indication regarding what does the choosing or if the optimal solution found
is actually applied to anything.” Final Act. 7–8.
In particular, the Examiner determines the following:
The claim does not include additional elements that are
sufficient to amount to significantly more than the judicial exception
because the only additional elements claimed are generic client
devices which are under analysis and have no bearing on what
actually performs the claimed method. See Two-Way Media, Ltd. v.
Comcast Cable Communications, LLC,_ F.3d _ (Fed Cir. 2017)
CAFC Appeal No. 2016-2531, 2016-2532, where the claims were not
found to be patent eligible because the claims contained no indication
as to how to achieve results in a not abstract way. Claim 57 is similar
in that it is directed towards a method that achieves an outcome that is
not tied to any particular system such that it can be said to improve the
functioning of said system. In fact, it is outside the scope of the claim
to actually create a new program stream or switch client devices.

Id.
The claim recites “determining which of: (a) creating a new
digital program stream, and causing the at least one computerized
client device to tune thereto; or (b) switching of the at least one
computerized client device onto at least the other existing digital
program stream in order to allow subsequent removal of at least the
first one of the plurality of digital program streams, is optima I”. This
judicial exception is not integrated into a practical application because
the claimed invention only claims the idea of a solution (“determining
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... which is optimal”), and only generally links the solution to a
particular environment. The claim does not include additional
elements that are sufficient to amount to significantly more than the
judicial exception because using a generic computer to perform a
routine computation (finding an optimal solution based on cost) is a
well understood and conventional activity.

Ans. 3–4.
Appellant’s Contentions
In the first part of the Alice inquiry, Appellant argues that claim 57
solves an Internet-centric problem by optimizing digital content delivery to
provide reduced channel changing latency in a content distribution network.
Appeal Br. 6. Appellant argues, similarly to DDR Holdings, the claim
effects an improvement in technology or technological field, specifically in
digital content delivery. Id. at 7–8. Further, Appellant argues, similarly to
Enfish and McRO, claim 57 is directed to a specific implementation of a
solution to a problem in the software arts by optimizing delivery
optimization to reduce latency. In particular, Appellant asserts the
following:
Claim 57 focuses on a specific technological method to improve
optimization of costs and benefits to the network operator during e.g.,
instances when there are multiple revenue generation/service options,
in accordance with specific steps and algorithms...
When looked at as a whole, Claim 57 is directed to a patentable,
technological improvement over the existing ways to optimize
selections from among e.g., multiple revenue generation/service
options. Claim 57 employs a limited set of specified rules in a
computerized process specifically designed to achieve an improved
technological result in optimization in a digital content delivery
network, especially for networks carrying multiple channels of
Internet protocol (IP) content, and there is no danger of broad
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preemption. Simply stated, no human can perform any portion of the
claimed algorithmic data evaluation and decision process.

Id. at 8–9.
In the second part of the Alice inquiry, Appellant states the following:
Similar to the claims in Amdocs, Appellant's Claim 57 entails
an unconventional technological solution as of its priority date of
October 15, 2007 (allowing optimization of costs and benefits to the
network operator of fulfilling a program viewing request made by a
subscriber on a request-by-request (i.e.,35 per CPE) basis, and
effectively in real time), including the delivery of digital content so as
to optimization of network resources such as bandwidth based on the
requesting subscriber's demographic or other particular profile, to the
one or more technological problems described at, inter alia, page 2
through page 6 of Appellant's substitute specification ( e.g., "the
requirement for manual intervention or input on the part of the
network operator (e.g., MSO) in order to make 40 best use of the
available bandwidth").

Id. at 10.
For example, Claim 57 recites “[a] computerized method of
operating a content delivery 35 network having a plurality of
computerized client devices associated therewith, each of the plurality
of computerized client devices configured to receive at least a
respective one of a plurality of digital program streams being
delivered over the content delivery network.” Accordingly, Claim 57
is directed at solving computer technological-specific problems
arising in the realm of content delivery networks, through an ordered
combination of specific technological features that address 40 the
problems attendant in the limitations of existing content delivery
systems. As in DDR, these claims do not “recite a commonplace
business method aimed at processing business information, applying a
known business process to the particular technological environment of
the Internet, or creating or altering contractual relations using generic
computer 45 functions and conventional network operations, such as
the claims in Alice, Ultramercial, buySAFE, Accenture, and
Bancorp.” DDR, 773 F.3d at 1258.

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Id. at 11.
Appellant’s Claim 57 is similar to those in Berkheimer v. HP
INC., 881 F.3d 1360 (2018), where the Federal Circuit found claims
directed at digitally processing and archiving files in a digital asset
management system abstract under the first step of Alice, but
found the claims passed muster under the second step of Alice because
they contained limitations directed to the arguably unconventional
inventive concept described in the specification (i.e., storing object
structures in the archive without substantial redundancy to improve
system operating efficiency and reduce storage costs).

Id. at 12.

Thus, while some limitations of Appellant’s Claim 57 may
arguendo be embodied in computer software that can be processed by
general-purpose computers: (i) the computerized implementation of
these limitations is not itself in any way inherent to general purpose
computer equipment; and (ii) Claim 57 recites a specific structure of
the claimed rules which would prevent broad preemption of all
rules-based means of optimizing resources, including providing
digitally rendered content over a content delivery network to at least
one computerized client device. Therefore, Appellant’s Claim 57 is
more similar to the eligible claims in Amdocs, DDR Holdings,
Bascom, and Berkheimer than the ineligible claims in Two-Way Media
(cited by the Office).
Id.

Our Review
Applying the guidance set forth in the 2019 PEG, we determine
whether the Examiner has erred in rejecting the claims as directed to patent
ineligible subject matter.
In revised step 1 of the 2019 PEG, we consider whether the claimed
subject matter falls within the four statutory categories of patent-eligible
subject matter identified by 35 U.S.C. § 101: process, machine, manufacture,
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or composition of matter. Because independent claim 57 recites a “method”
including a number of steps, claim 57 falls within the “process” category of
patent-eligible subject matter.
In prong 1 of revised step 2A of the 2019 PEG, we determine whether
any judicial exception to patent eligibility is recited in the claim. The
guidance identifies three judicially-excepted groupings of abstract ideas:
(1) mathematical concepts; (2) certain methods of organizing human
activity, such as fundamental economic practices; and (3) mental processes.
Independent claim 57, under a broadest reasonable interpretation, recites,
inter alia, the following:
A. analyzing a client device currently tuned to a first existing
digital program stream by;
a. evaluating a metric determined based on its correlation
of demographic data associating the client computer
with a first existing digital program stream;
i. determining, based on the evaluated metric,
whether it is optimal to either (a) create a new
digital program stream or (b) switch the client
device onto another existing digital program
stream to thereby remove the first digital
program stream.
As an initial matter, we note that the preamble of claim 57 recites “[a]
computerized method of operating a content delivery network having a
plurality of computerized client devices associated therewith, each of the
plurality of computerized client devices configured to receive at least a
respective one of a plurality of digital program streams being delivered over
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the content delivery network.” Further, as set forth above, such delivery of
digital program streams to a client device is optimized by evaluating a
metric based on its correlation of demographic data associated with the
client computer and the digital data stream so as to choose the optimal
delivery option between creating a new digital program stream and
switching to another existing program stream. Therefore, claim 57 recites
providing targeted content (e.g., digital program stream including
advertisement) specifically tailored for the CPE according to a calculated
metric based on delivery cost, expected advertisement returns, available
bandwidth, location, etc. Such a manipulation of customer data to provide
targeted content including advertisement to customers has been identified by
our reviewing court as a fundamental economic practice long prevalent in
commerce. See e.g., Cyberfone. Consequently, the claim recites a method
of organizing human activity, a judicial exception involving commercial
interaction in an e-commerce environment, wherein a business owner
delivers streaming content including targeted advertisements to a consumer
based on consumer’s profile and location. Additionally, we determine these
limitations are steps of “managing personal behavior or relationships or
interactions between people (including social activities, teaching, and
following rules or instructions),” which the 2019 PEG provides are
“[c]ertain methods of organizing human activity.” 84 Fed. Reg. 52.
Accordingly, independent claim 57 recites the judicial exception of certain
methods of organizing human activity.
Having determined that the claims recite a judicial exception, our
analysis under the 2019 PEG turns now to determining whether there are
“additional elements that integrate the judicial exception into a practical
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application.” See MPEP § 2106.05(a)–(c), (e)–(h).6 “Integration into a
practical application” requires an additional element or a combination of
additional elements in the claim to apply, rely on, or use the judicial
exception in a manner that imposes a meaningful limit on the judicial
exception, such that the claim is more than a drafting effort designed to
monopolize the exception. 84 Fed. Reg. at 53.
Appellant’s claim 57 recites computer-related limitations (e.g.,
computerized method for delivering digital data streams to client devices).
Appellant argues that the cited limitations provide a solution to an Internet
centric problem by optimizing digital content delivery decisions to provide
reduced channel changing latency in a content distribution network, and
thereby effects an improvement in technology or technological field. Appeal
Br. 6–9.
We do not find the recited computer-related limitations are sufficient
to integrate the judicial exception into a practical application. As noted
above, the outlined steps in the computerized method are performed by a
network optimization controller (NOC). Spec. 33:23–34:15. However, the

6 Specifically, we determine whether the claims recite:
(i) an improvement to the functioning of a computer [(or a
mobile device)];
(ii) an improvement to another technology or technical field;
(iii) an application of the abstract idea with, or by use of, a
particular machine;
(iv) a transformation or reduction of a particular article to a
different state or thing; or
(v) other meaningful limitations beyond generally linking the
use of the abstract idea to a particular technological
environment.
Id.
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Specification does not provide additional details about the NOC that would
distinguish it from any generic processing devices that optimize processes in
a computer network environment. Id. Although we do not dispute that the
NOC includes specific instructions for performing the recited optimization
functions including processing algorithms (e.g. Boolean logic, Bayesian or
Dempster-Schaefer logic, fuzzy logic) to reduce channel changing latency in
the content distribution network, Appellant has not explained persuasively
how the selected digital data stream transforms the data content to a new
state or thing. See MPEP § 2106.05(a). Rather, the claim merely adapts the
certain methods of organizing the human activity through the NOC to select
a suitable digital data stream along with targeted advertisement for delivery
to the client devices based on delivery costs, expected returns calculated
from the customer profile, available bandwidth, and location. See Credit
Acceptance Corp. v. Westlake Servs., 859 F.3d 1044, 1055 (Fed. Cir. 2017)
(“Our prior cases have made clear that mere automation of manual processes
using generic computers does not constitute a patentable improvement in
computer technology.”); see also Bancorp Services, L.L.C. v. Sun Life
Assurance Co. of Canada (U.S.), 687 F.3d 1266, 1278 (Fed. Cir. 2012) (A
computer “employed only for its most basic function . . . does not impose
meaningful limits on the scope of those claims.”).
Further, Appellant’s identified improvements are to the abstract idea
itself, not improvements to a technology or computer functionality. That is,
the cited claim limitations do not improve the functionality of the NOC by
performing the cited operations to deliver the digital data streams, nor do
they achieve an improved technological result in conventional industry
practice. See McRO, Inc. v. Bandai Namco Games Am., Inc., 837 F.3d 1299,
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1316 (Fed. Cir. 2016). Thus, the claim does not recite an additional element
reflecting an improvement in the functioning of a computer, or an
improvement to other technology or technical field. See DDR Holdings,
LLC v. Hotels.com, L.P., 773 F.3d 1245, 1258–59 (Fed. Cir. 2014).
Nor does the claim recite an additional element that implements the
abstract idea with a particular machine or manufacture that is integral to the
claim. Instead, the claim limitations only recite additional elements that add
insignificant extra-solution activity to the judicial exception. See
CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1375 (Fed. Cir.
2011). Our reviewing court has consistently held that mere characterizations
of human activities within the stream of commerce are not patent eligible.
See, e.g., Elec. Power Grp. v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir.
2016) (claims directed to collection, manipulation, and display of data);
Intellectual Ventures I LLC v. Capital One Bank (USA), 792 F.3d 1363,
1370 (Fed. Cir. 2015) (customizing information and presenting it to users
based on particular characteristics). Prior to the Internet, such activities
were widely practiced, and became computerized to facilitate the
distribution of television content including targeted advertisements to cable
consumers (e.g., Pay Per View delivery). See OIP Technologies, Inc. v.
Amazon.com, Inc., 788 F.3d 1359, 1364 (Fed. Cir. 2015).
Because the claim steps, outlined above, do not (1) provide any
technical solution to a technical problem as required by DDR Holdings;7

7 See DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir.
2014). The Federal Circuit found DDR’s claims are patent-eligible under
35 U.S.C. § 101 because DDR’s claims: (1) do not merely recite “the
performance of some business practice known from the pre-Internet world”
previously disclosed in Bilski and Alice; but instead (2) provide a technical
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(2) provide any particular practical application as required by BASCOM;8 or
(3) entail an unconventional technological solution to a technological
problem as required by Amdocs, 9 we agree with the Examiner’s
determination that Appellant’s claim 57 is directed to an abstract idea that is
not integrated into a practical application.
Alice/Mayo—Step 2B (Inventive Concept)
Turning to step 2B of the 2019 PEG, we look to whether the claim:
(a) recites a specific limitation or combination of limitations that are not
well-understood, routine, conventional activity in the field; or (b) simply
appends well-understood, routine, conventional activities previously known
to the industry, specified at a high level of generality, to the judicial
exception. 84 Fed. Reg. 56; see Alice, 573 U.S. at 217 (“[W]e consider the
elements of each claim both individually and ‘as an ordered combination’”
to determine whether the claim includes “significantly more” than the
ineligible concept); see also BASCOM, 827 F.3d at 1350 (“[A]n inventive
concept can be found in the non-conventional and non-generic arrangement
of known, conventional pieces.”).
We discern no additional element or combination of elements recited
in Appellant’s independent claim 57 that contain any “inventive concept” or
add anything “significantly more” to transform the abstract concept into a

solution to a technical problem unique to the Internet, i.e., a “solution . . .
necessarily rooted in computer technology in order to overcome a problem
specifically arising in the realm of computer networks.” DDR, 773 F.3d at
1257.
8 See BASCOM Glob. Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d
1341 (Fed. Cir. 2016).
9 See Amdocs Ltd. v. Openet Telecom, Inc., 841 F.3d 1288 (Fed. Cir. 2016).
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patent-eligible application. Alice, 573 U.S. at 221. We are not persuaded by
Appellant’s remarks, noted above, alleging the claims are directed to a non-
routine and unconventional system because the NOC performs optimization
routines to select the most cost-effective option for delivering digital data
stream to client computing devices based on available bandwidth. Appeal
Br. 10–12. Appellant has failed to establish on this record how the alleged
optimization is distinguished from routine querying of a server to retrieve
requested digital streams including relevant advertisements based on criteria
assessed from the consumer’s profile, demographics, location, time of day,
etc. We agree with the Examiner that using a generic computing device to
collect, analyze, process data and deliver requested digital data content
including targeted advertisement to client computers in the manner
suggested is a routine and conventional approach to data management. Ans.
3–4.
As noted above, Appellant does not direct our attention to any portion
of the Specification indicating that the NOC performs anything other than
well-understood, routine, and conventional functions, such as receiving,
analyzing, processing, and delivering requested digital data streams to client
computing devices. See Elec. Power Group, LLC v. Alstom S.A., 830 F.3d
1350, 1355 (Fed. Cir. 2016) (“Nothing in the claims, understood in light of
the [S]pecification, requires anything other than off-the-shelf, conventional
computer, network, and display technology for gathering, sending, and
presenting the desired information.”); see also buySAFE, Inc. v. Google,
Inc., 765 F.3d 1350, 1355 (Fed. Cir. 2014) (“That a computer receives and
sends the information over a network—with no further specification—is not
even arguably inventive.”); Alice, 573 U.S. at 224–26 (receiving, storing,
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sending information over networks insufficient to add an inventive concept).
Instead, Appellant’s claimed subject matter simply uses generic computer
components (computer system) to perform the abstract idea of delivering
digital data streams including targeted advertisements to client computing
devices based on the consumer’s profile information and location. As noted
above, the use of a generic computer does not alone transform an otherwise
abstract idea into patent-eligible subject matter. As our reviewing court has
observed, “after Alice, there can remain no doubt: recitation of generic
computer limitations does not make an otherwise ineligible claim patent-
eligible.” DDR, 773 F.3d at 1256 (citing Alice, 573 U.S. at 223).
Because the discussed claim elements only recite generic computer
functions that are well-understood, routine, and conventional, individually
and in combination, the claim is devoid of an inventive concept. See Alice,
573 U.S. at 217. Appellant is reminded that “the ‘inventive concept’ [under
the second part of the Mayo/Alice test] cannot be the abstract idea itself” and
“Berkheimer . . . leave[s] untouched the numerous cases from this court
which have held claims ineligible because the only alleged ‘inventive
concept’ is the abstract idea.” Berkheimer v. HP Inc., 890 F.3d 1369, 1374
(Fed. Cir. 2018) (Moore, J., concurring). “It has been clear since Alice that a
claimed invention’s use of the ineligible concept to which it is directed
cannot supply the inventive concept that renders the invention ‘significantly
more’ than that ineligible concept.” BSG Tech LLC v. Buyseasons, Inc., 899
F.3d 1281, 1290 (Fed. Cir. 2018). We, therefore, agree with the Examiner
that the computer functions recited in the claims were, in fact, generic, and
are met by numerous precedent establishing that using a generic computer to
expedite and automate processes traditionally performed manually, or that
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are otherwise abstract, is a well-understood, routine, and conventional use of
such computers. Final Act. 7–8; see also, e.g., Intellectual Ventures I LLC v.
Symantec Corp., 838 F.3d 1307, 1321 (Fed. Cir. 2016) (utilizing an
intermediary computer to forward information); Bancorp Services,
L.L.C., 687 F.3d at 1278 (“The computer required by some of Bancorp’s
claims is employed only for its most basic function, the performance of
repetitive calculations, and as such does not impose meaningful limits on the
scope of those claims.”).
Therefore, we conclude that claim 57’s elements, both individually
and as an ordered combination, do not provide an inventive concept. See 84
Fed. Reg. 56; Berkheimer, 881 F.3d at 1370 (“The limitations amount to no
more than performing the abstract idea of parsing and comparing data with
conventional computer components.”); Bancorp, 687 F.3d at 1278 (“[T]he
use of a computer in an otherwise patent-ineligible process for no more than
its most basic function—making calculations or computations—fails to
circumvent the prohibition against patenting abstract ideas and mental
processes.”).
To the extent Appellant argues the claims necessarily contain an
“inventive concept” based on their alleged novelty or non-obviousness over
the cited references, Appellant misapprehends the controlling precedent.
Although the second part in the Alice/Mayo framework is termed a search
for an “inventive concept,” the analysis is not an evaluation of novelty or
non-obviousness, but, rather, a search for “an element or combination of
elements that is ‘sufficient to ensure that the patent in practice amounts to
significantly more than a patent upon the [ineligible concept] itself.”’ Alice,
573 U.S. at 217–218 (quoting Mayo 566 U.S. 72–73). A novel and
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nonobvious claim directed to a purely abstract idea is, nonetheless, patent-
ineligible. See Mayo, 566 U.S. at 90.
Appellant is further reminded that, in many cases, “relying on a
computer to perform routine tasks more quickly or more accurately is
insufficient to render a claim patent eligible.” OIP Techs., 788 F.3d at 1363
(citing Alice, 573 U.S. at 224) (“[U]se of a computer to create electronic
records, track multiple transactions, and issue simultaneous instructions” is
not an inventive concept.); see also, e.g., Intellectual Ventures I LLC v.
Capital One Bank, 792 F.3d at 1370 (“[M]erely adding computer
functionality to increase the speed or efficiency of the process does not
confer patent eligibility on an otherwise abstract idea.”). Therefore, the
functions recited in independent claim 57 do not add meaningful limitations
beyond generally linking the abstract idea to the particular technological
environment. See Final Act 7–8, Ans. 3–4.
Appellant argues that claim 57 recites a specific structure of claimed
rules, which would prevent broad preemption of all rules-based means of
optimizing resources including delivery rendered content to client
computing devices. Appeal Br. 12. This argument is not persuasive.
Appellant’s arguments asserting that the claims do not block others from
using the abstraction do not persuade us that the claims are directed to patent
eligible material. Pre-emption is not a separate test.
To be clear, the proper focus is not preemption per se, for
some measure of preemption is intrinsic in the statutory right
granted with every patent to exclude competitors, for a limited
time, from practicing the claimed invention. See 35 U.S.C.
§ 154. Rather, the animating concern is that claims should not
be coextensive with a natural law, natural phenomenon, or
abstract idea; a patent-eligible claim must include one or more
substantive limitations that, in the words of the Supreme Court,
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add “significantly more” to the basic principle, with the result
that the claim covers significantly less. See Mayo[, 566 U.S. at
72–73]. Thus, broad claims do not necessarily raise § 101
preemption concerns, and seemingly narrower claims are not
necessarily exempt.
CLS Bank Int’l v. Alice Corp. Pty. Ltd., 717 F.3d 1269, 1281 (Fed.
Cir. 2013) (Lourie, J., concurring), aff’d, 573 U.S. 208; see also 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.”). Because
we find the claimed subject matter covers patent-ineligible subject matter,
the pre-emption concern is necessarily addressed. “Where a patent’s claims
are deemed only to disclose patent ineligible subject matter under the Mayo
framework, . . . preemption concerns are fully addressed and made moot.”
Ariosa Diagnostics, 788 F.3d at 1379.
Because Appellant’s claim 57 is directed to a patent-ineligible abstract
concept and do not recite something “significantly more” under the second
part of the Alice analysis, we sustain the Examiner’s rejection of
independent claim 57 under 35 U.S.C. § 101.10
3. Anticipation Rejection
Appellant argues that the Examiner erred in finding that La Joie
describes correlating demographic data associated with an existing digital
program stream and a computerized client device to evaluate a metric for
determining whether it is optimal to either (a) create a new digital program
stream or (b) switch to an existing digital program stream to deliver data to

10 In the event of further prosecution, the Examiner should consider whether
the remaining claims pending in this appeal are similarly rejectable as being
directed to patent-ineligible subject matter.
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the client, as recited in independent claim 57. Appeal Br. 13–14. In
particular, Appellant argues that La Joie’s disclosure of a rule engine of
extracting CPE or user ID information from a request message along with
demographic data associated with the user does not disclose the disputed
claim limitations. Id. at 13 (citing La Joie ¶¶ 97, 121, 156, 157). Further,
Appellant argues that La Joie’s disclosure of establishing an HD session on a
channel already carrying HD content when the HD content is available is
similarly deficient. Id. (citing La Joie ¶ 98).
Appellant’s arguments are persuasive of reversible Examiner error.
La Joie discloses a switched approach for conserving bandwidth within a
network capable of broadcasting or simulcasting its programs to two or more
channels in standard definition (SD) or high definition (HD) such that no
HD broadcast occurs within a given area until requested. La Joie, Abstr. In
particular, according to La Joie, upon determining that a subscriber is
already tuned to an HD channel at a local node servicing a group of
subscribers who are logically proximate (i.e., same service plan,
demographics, viewing habits), a request by another subscriber to stream
digital content on that same service node as part of the established HD
session is preferably granted. Id. ¶¶ 97–100. Further, La Joie discloses
imposing a moratorium on establishing or allocating new physical channels
to HD session requests unless certain minimum threshold of available
bandwidth is present. Id. ¶ 151. Furthermore, La Joie discloses an
optimization mechanism wherein a conservation bandwidth manager
(CBM)/rule engine from one local service area communicates with other
processes of other service areas in different time zones to work together to
compensate for increased HD demands. La Joie ¶¶ 157, 158.
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We do not agree with the Examiner’s finding that La Joie’s disclosure
of CBMs from different time zones cooperating to consolidate resources to
stream HD data on an existing channel as opposed to creating new ones
describes the disputed claim limitations. Ans. 4 (citing La Joie ¶ 4).
Although La Joie discloses taking into consideration commonalities
(demographics, time zone, viewing habits, location, service node) between
subscribers to determine whether to utilize an existing HD channel or to
create a new one to deliver digital data stream to the subscribers, La Joie
does not describe determining a metric for facilitating such an assessment.
That is, La Joie describes, at best, an ad hoc mechanism that considers the
cited criteria in assessing whether to use an existing HD channel as opposed
to an SD channel. More importantly, La Joie does not particularly formulate
such factors as a metric to facilitate the determination of the optimal option
to deliver the digital data stream to the client computing system.
Because Appellant has shown at least one reversible error in the
Examiner’s anticipation rejection of independent claim 57, we do not reach
Appellant’s remaining arguments. Accordingly, we do not sustain the
Examiner’s anticipation rejection of independent claim 57. Likewise, we do
not sustain the rejections of dependent claims 58, and 64, which recite the
disputed limitations.

3. Obviousness Rejections
Because the Examiner does not rely upon the secondary references to
cure the noted deficiencies of La Joie discussed above, we do not sustain the
Examiner’s rejections of dependent claims 43–56, and 59–63, which recite
the disputed limitations.
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VI. CONCLUSION
We affirm the Examiner’s double patenting rejections of claims 43–
64. We affirm the Examiner’s patent eligibility rejection of claim 57 under
35 U.S.C. § 101.
However, we reverse the Examiner’s anticipation and obviousness
rejections of claims 43–64.
Because we have affirmed at least one ground of rejection with
respect to each claim on appeal, the Examiner’s decision is affirmed. See 37
C.F.R. § 41.50(a)(1).

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DECISION SUMMARY
In summary:
Claims
Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed
57 101 Eligibility 57
43–64 Double Patenting US Patent 8,959,563 43–64
43–64 Double Patenting 9,584,839 43–64
57, 58, 64 102 La Joie 57, 58, 64
43–48, 51–53, 56 103 La Joie, Bayer 43–48, 51–53, 56
49 103 La Joie, Bayer, Heller 49
50 103 La Joie, Bayer, Coffin 50
54, 55 103 La Joie, Bayer, Smith 54, 55
59, 60 103 La Joie, Smith 59, 60
61 103 La Joie, Zubeldia 61
62, 63 103 La Joie, Eldering 62, 63
Overall Outcome 43–64

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). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED