Tingyi Wu et al.

Patent Trials and Appeals Board

Sep 18, 2019

14277964 - (D) (P.T.A.B. Sep. 18, 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.
14/277,964 05/15/2014 Tingyi Wu Y10400US00 7029
123510 7590 09/18/2019
Cooper Legal Group LLC
6505 Rockside Road Suite 330
Independence, OH 44131
EXAMINER
SUMMERS, KIERSTEN V
ART UNIT PAPER NUMBER
3688
NOTIFICATION DATE DELIVERY MODE
09/18/2019 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):
docketing@cooperlegalgroup.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte TINGYI WU, SOPHIA THITIRAT PERL, ENRIQUE ANDRES
MUNOZ TORRES, ANDREW POON, and CONRAD WAI
____________

Appeal 2018-006972
Application 14/277,9641
Technology Center 3600
____________

Before JUSTIN BUSCH, MATTHEW J. McNEILL, and SCOTT E. BAIN,
Administrative Patent Judges.

Opinion for the Board filed by Administrative Patent Judge
SCOTT E. BAIN.

Opinion Dissenting filed by Administrative Patent Judge JUSTIN BUSCH.

BAIN, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1–20. We have jurisdiction under 35 U.S.C.
§ 6(b).
We reverse.

1 Appellants identify Yahoo Holdings, Inc. as the real party in interest. App.
Br. 2.
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BACKGROUND
The Claimed Invention
The invention relates to a mobile device display, and specifically, a
“less intrusive” way to present advertisements in a constrained display
environment. Spec. ¶¶ 2–3, 21–22. According to the Specification, the
common techniques of providing lists of search results or advertisements are
“not well adapted to the particular constraints of a mobile device,” and a “set
of engineering problems [must] be solved in order to provide search results
to users that are well adapted to mobile devices.” Id. at ¶ 3. Appellants’
invention addresses these problems by providing a display configuration
including “moveable” visual objects that may be repositioned by user
interaction, such as user touch on the screen. Embodiments are shown in
Figures 2a, 2b, 3a, and 3b, reproduced below.

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Figures 2a, 2b, 3a, and 3b depict “screen presentations” on mobile device
200 as provided by the invention. Spec. ¶¶ 74–77. Display 202 includes
“GUI parts” 204a, 206a, 206b, and 206c among others. Id. at ¶ 77. As
shown in the figures, “any combination” of the GUI parts may be “hidden”
on the display based on user interaction such as “when a user’s finger [306]
. . . interacts with a GUI part within a section” of the display framework, as
shown in Figure 3b, allowing other parts to be seen more easily. Id. at
¶¶ 77–78.
Claims 1 and 18 are independent. Claim 1, reproduced below, is
representative of the invention and the subject matter in dispute:
1. A system stored in a non-transitory medium executable
by processor circuitry, comprising:
first interface circuitry configured to receive a search
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query from a search field on a page view displayed on a display
screen of a mobile client device;
second interface circuitry communicatively coupled to
the first interface circuitry, the second interface circuitry
configured to receive analytics data about characteristics of an
audience including a user of the mobile client device or about
advertisements displayed on the display screen of the mobile
client device, or about user interactions with advertisements
displayed on the display screen of the mobile client device, the
analytics data corresponding to the search query;
first framework circuitry communicatively coupled to the
first interface circuitry and the second interface circuitry, the
first framework circuitry configured to determine a plurality of
sponsored entity search results according to the search query
and the analytics data and to display one or more sponsored
entity search results of the plurality of sponsored entity search
results on the display screen of the mobile client device;
third interface circuitry communicatively coupled to the
first framework circuitry, the third interface circuitry configured
to receive a user interaction with a sponsored entity search
result of the one or more sponsored entity search results
displayed on the display screen of the mobile client device; and
second framework circuitry communicatively coupled to
the third interface circuitry, the second framework circuitry
configured to determine an interactive entity section for display
on the page view in response to the user interaction with the
sponsored entity search result, wherein the interactive entity
section includes a plurality of moveable visual objects
moveable within the interactive entity section in response to
interactions including the user interaction to expose to user
view a moveable visual object of current interest to the user of
the mobile client device and to hide from view other moveable
visual objects not of current interest to the user of the mobile
client device to allow more screen space for viewing of the
moveable visual object of current interest to the user.
App. Br. 22–23 (Claims Appendix) (emphasis added).
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The Rejections on Appeal
Claims 1–20 are rejected under 35 U.S.C. § 101 as being directed to
patent-ineligible subject matter. Final Act. 6–8.
Claims 1–4, 8, 12, 13, 15, and 17 are rejected under 35 U.S.C. § 103
as being unpatentable over Talluri et al. (US 2014/0372218 A1; pub. Dec.
18, 2014) (“Talluri”). Final Act. 9–37.
Claims 5, 6, 9, and 10 are rejected under 35 U.S.C. § 103 as being
unpatentable over Talluri and Smith et al. (US 2003/0006911 A1; pub. Jan.
9, 2003) (“Smith”). Final Act. 38–51.
Claims 7 and 11 are rejected under 35 U.S.C. § 103 as being
unpatentable over Talluri and Agius et al. (US 2009/0157507 A1; pub. June
18, 2009) (“Agius”). Final Act. 52–58.
Claims 14, 16, 18, and 19 are rejected under 35 U.S.C. § 103 as being
unpatentable over Talluri and Huang et al. (US 2012/0197857 A1; pub. Aug.
2, 2012) (“Huang”). Final Act. 58–76.
Claim 20 is rejected under 35 U.S.C. § 103 as being unpatentable over
Talluri and Wilson et al. (US 2010/0031185 A1; pub. Feb. 4, 2010)
(“Wilson”). Final Act. 77–81.
DISCUSSION
We have reviewed the Examiner’s rejections in light of Appellants’
arguments. For the reasons set forth below, we cannot sustain the
Examiner’s rejections on the record before us.
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Rejection Under 35 U.S.C. § 101
The Examiner determined that the claims constitute ineligible subject
matter because they recite “search engine advertising,” which the Examiner
characterizes as a “field of use” and abstract idea, and “simply append[]
well-understood, routine, and conventional activities” using generic
computer functions. Ans. 4–5; Final Act. 6–8 (citing Alice Corp. v. CLS
Bank lnt’l, 573 U.S. 208, 217 (2014) (describing two-step framework “for
distinguishing patents that claim laws of nature, natural phenomena, and
abstract ideas from those that claim patent-eligible applications of those
concepts”)). Appellants argue the Examiner erred and that the claims are
patent-eligible because they “solve[] an existing technical problem,” namely,
the limited space on mobile device displays that is available to display
promotional items in search results. Reply Br. 3–5. Appellants contend the
Examiner has “oversimplified” the claims and that they are not abstract, and
moreover, that the claims recite a “clear . . . improvement to computer
technology.” App. Br. 7–15.
After the Briefs were filed and Answer mailed in this case, the
USPTO published revised guidance synthesizing case law and providing
agency instruction on the application of § 101. USPTO’s January 7, 2019,
2019 Revised Patent Subject Matter Eligibility Guidance 84 Fed. Reg. 50
(Jan. 7, 2019) (“Guidance”). Under the Guidance, we must look to whether
the claim recites:
(1) any judicial exceptions, including certain groupings of abstract
ideas (i.e., mathematical concepts, certain methods of organizing
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human activity such as a fundamental economic practice, or mental
processes) (“Step 2A, Prong One”)2; and
(2) additional elements that integrate the judicial exception into a
practical application (see MPEP § 2106.05(a)–(c), (e)–(h)) (“Step 2A,
Prong Two”).
See 84 Fed. Reg. at 54–55.
Only if a claim recites a judicial exception and 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
(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 id. at 56 (collectively “Step 2B”).
After considering Appellants’ arguments and the Examiner’s Answer
in light of the new Guidance and corresponding case law, we are persuaded
the Examiner erred in rejecting the claims as patent ineligible.
We begin with claim 1. Claim 1 recites a system comprising
“circuitry” that is “configured” to do the following: (1) “receive a search
query,” (2) “receive analytics data,” (3) “determine [calculate] sponsored
entity search results,” (4) “display one or more sponsored entity search

2 The Guidance refers to “Step One” as determining whether the claimed
subject matter falls within the four statutory categories identified by 35
U.S.C. § 101: process, machine, manufacture, or composition of matter.
This step is not at issue in this case.
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results,” (5) “receive a user interaction” (i.e., an input) with a sponsored
entity search result, (6) “determine an interactive entity section for display,”
including “moveable visual objects moveable within the interactive entity
section in response to . . . user interaction” on a “mobile client device.”
App. Br. 22–23 (claim 1). We do not discern that these steps fall into any of
the categories deemed abstract ideas under Step 2A, Prong One of the
Guidance, i.e., mathematical concepts, certain methods of organizing human
activity such as a fundamental economic practice, or mental processes.
Although some of the foregoing steps relate merely to data collection or
analysis (e.g., receiving a search query and determining search results), the
claim as a whole is directed to a particular way of displaying search results
within a constrained display area on a mobile device. See Spec. ¶¶ 3, 21,
74–77, Figs. 2a, 2b, 3a, 3b. The claimed steps present a technical solution to
the problem of a constrained display screen: “moveable” visual objects
which can be repositioned on the screen by user interaction after the search
result is displayed. Id.
The foregoing steps of displaying visual objects cannot be performed
merely by mental steps, and are not mathematical concepts – they are
specific steps relating to display on a mobile device. Moreover, although
“search engine advertising” generally may be characterized as organizing
human activity, the particular system in claim 1 is not, as discussed above,
merely directed to the concept of search engine advertising but to a
particular display configuration on a mobile device. As the Specification
explains, the invention uses “predictive circuitry” and a “modular search
object framework” in order to produce a display configuration “well adapted
to mobile devices.” Id. at ¶¶ 3, 25–26.
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Accordingly, we conclude under Step 2A, Prong One of the Guidance
that claim 1 does not recite any of the judicial exceptions enumerated in the
Guidance, including certain groupings of abstract ideas. Thus, we conclude
claim 1 is directed to patent-eligible subject matter.
Appellants group independent claim 18 with claim 1 for purposes of
the subject matter eligibility rejection, and claim 18 includes limitations
commensurate in scope with claim 1. App. Br. 6. The Examiner rejects
claim 18 for the same reasons as claim 1. Ans. 3–8. For the same reasons as
discussed above, we conclude that claim 18 is directed to patent-eligible
subject matter.
For the foregoing reasons, we do not sustain the rejection of claims 1
and 18 under 35 U.S.C. § 101. For the same reasons, we also do not sustain
the rejection of remaining claims 2–17, 19, and 20, all of which depend from
claim 1 or claim 18.
Rejections Under 35 U.S.C. § 103
Appellants argue the Examiner erred in finding Talluri teaches or
suggests “a plurality of moveable visual objects moveable within the
interactive entity section in response to . . . the user interaction,” as recited in
claim 1. App. Br. 16–17. Specifically, Appellants allege that although
Talluri (the sole reference relied upon by the Examiner as to claim 1) teaches
“position[ing] items on the display,” the items are not “moveable” by user
interaction (such as dragging by touch) as required by the claim. Rather, in
Talluri, the positioning of items in a display, such as advertisements, is
determined by a “rank” (score) of the items, or orientation of the screen
(portrait or landscape). Id.; Talluri ¶¶ 22, 25, 34. For the following reasons,
we are persuaded by Appellants’ arguments.
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The Examiner interprets “user interaction” in the disputed claim
limitation as including setting a “preference” for display, such as portrait or
landscape display, or “personalization factors” previously determined based
upon “for example[,] users clicking on ads.” Ans. 9–10. Accordingly, the
Examiner finds Talluri teaches or suggests the disputed claim limitation in
Talluri’s description of ad placement based upon display mode or
personalization preferences. Id.; Talluri ¶¶ 18, 22, 25, 34. We, however, do
not agree that mere settings or display modes satisfy the claim limitation.
Appellants’ claim 1 recites that the user interaction is “a user interaction
with . . . one [of the] sponsored entity search results displayed on the
display screen.” App. Br. 22 (claim 1) (emphasis added). The “interactive
entity section,” in turn, is determined “in response to the user interaction
with the sponsored entity search result.” Id. (claim 1).
Thus, the language of claim 1 requires that “moveable” visual objects
refers to user interaction with the display after a search query (such as finger
touch or dragging), not mere positioning of objects in a display based on
previous search queries or based on the device mode, as in Talluri.
Appellants’ Specification further confirms this interpretation. See supra
Figs. 2a, 2b, 3a, 3b; Spec. ¶¶ 74–77.
Accordingly, giving claim 1 its broadest reasonable interpretation
consistent with the Specification, In re Am. Acad. of Sci. Tech Ctr., 367 F.3d
1359, 1364 (Fed. Cir. 2004), we determine that “moveable visual objects
moveable within the interactive entity section in response to . . . user
interaction” does not include objects positioned according to predetermined
settings or modes that cannot be moved subsequently in response to user
interaction. We, therefore, conclude that the Examiner erred in finding
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Talluri’s description of display modes and personalization settings teaches or
suggests the disputed limitation. For these reasons, we do not sustain the
Examiner’s obviousness rejection of claim 1.
Independent claim 18 recites a disputed limitation similar to that in
claim 1: “search results being moveable about the touchscreen of the mobile
client device in response to tactile gestures.” App. Br. 26. As to claim 18,
the Examiner acknowledges that “Talluri does not specifically teach search
results are movable on a touch screen by a user’s gesture” but finds that
“Huang et al. teaches in paragraph 63 a user may use a gesture to cause the
search results to be expanded.” Ans. 13 (citing Huang ¶¶ 57, 60, 63, Fig. 7).
The Examiner reasons that one of ordinary skill would have been motivated
to apply Huang’s teaching to Talluri in order to provide for an “adjust[ed]
view of search results.” Ans. 14. On this record, however, we are persuaded
the Examiner has erred.
As Appellants argue, Huang merely teaches “gestures to change the
scope of a search.” Reply Br. 12–13 (emphasis added). Specifically, Huang
teaches performing a search by using tactile gestures to highlight a word in a
display, and that a user can change the search by, for example, dragging the
user’s fingers over additional words. Huang ¶¶ 60, 63, Fig. 4. An example
is shown in Huang Figure 4, reproduced below.
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Figure 4 illustrates an “example technique for altering a scope of a
search by resizing the representation [of the search] 302,” by a “resizing
gesture [with a finger] 400.” Huang ¶ 60. The resulting search is now
defined by representation 402. Id.
Huang does not teach or suggest, however, “moveable” visual objects
as recited in the claim. Like Talluri, Huang teaches defining particular
placement of stationary items or results, based on preferences or previously-
taken actions. See supra. The record does not demonstrate, however, that
one of ordinary skill in the art would understand placement of a stationary
item, as taught by the combination of Talluri and Huang, is the same as
“moveable” visual objects in a search result display “to allow more screen
space on the touchscreen for viewing of the moveable visual object of
current interest to the user,” as recited in claim 18.
For the foregoing reasons, we conclude that the Examiner erred in
rejecting independent claim 18, and we do not sustain the rejection. Each of
the remaining claims depends from claim 1 or claim 18, and therefore, for
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the reasons discussed above, we also do not sustain the obviousness
rejections of those claims.
DECISION
We reverse the Examiner’s decision rejecting claims 1–20.
REVERSED

BUSCH, Administrative Patent Judge, dissenting.

Although I agree with and join the Majority’s decision reversing the
rejection of claims 1–17 and 20 under 35 U.S.C. § 103, I respectfully dissent
with respect to the overall disposition of the case. Specifically, I disagree
with and write separately regarding the portions of the Majority’s decision
reversing the Examiner’s rejection of claims 1–20 under 35 U.S.C. § 101 as
being directed to ineligible subject matter without significantly more and
reversing the rejection of claims 18 and 19 under 35 U.S.C. § 103.
THE 35 U.S.C. § 101 REJECTION OF CLAIMS 1–20
The Examiner rejects the claims as being “directed to the [abstract]
idea of comparing new and stored information and using rules to identify
options.” Final Act. 6–7. The Examiner further determines the claims do
not recite “additional elements that are sufficient to amount to significantly
more than the judicial exception because the additional elements when
considered alone [and] in combination amount to no more than” generally
linking the abstract idea to a particular environment, instructions to apply the
abstract idea on a computer, simply appending well-understood, routine and
conventional activities, specified at a high level of generality, to the abstract
idea, and insignificant extra-solution activity. Final Act. 7–8; Ans. 4–6.
Appellants dispute the Examiner’s conclusion that the claims are
directed to an abstract idea. Appeal Br. 6–16; Reply Br. 2–9. In particular,
Appellants argue the claims are eligible because the “claims are directed to a
specific set of technological features that result in improvements to
computer capabilities for improving the display of information on a display
of a mobile device during user interaction with the display of the device”
and the claims “define specific combinations of features for improving the
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technology for providing results such as search results on a display of a
mobile device.” Appeal Br. 6–7.
Appellants summarize various Federal Circuit decisions holding the
respective claims eligible because they recited improvements to computer
functionality or another technology. Appeal Br. 7–10. Appellants then
argue the pending claims similarly “focus on a specific asserted
improvement, or technological solution to a noted technological problem.”
Appeal Br. 11. Appellants explain that conventional lists of search results
are not well adapted to the small display sizes of mobile devices. Appeal
Br. 11–13 (citing Spec. ¶¶ 3, 22,1 77–78, 81, 90, 97, 115, Figs. 2a–6b);
Reply Br. 2–3, 6–7. Appellants also argue claim 20’s recitation of
overlapping moveable cards further supports Appellants’ assertion that the
claims are directed to a technological improvement. Appeal Br. 14; Reply
Br. 5–6.
Appellants contend “the problem of displaying multiple features,
including sponsored search results, on a limited-size display on a mobile
communication device, has been solved.” Appeal Br. 13. Specifically,
Appellants assert “using analytics data and a search query to determine
sponsored entity search results” and providing moveable visual objects that
can be hidden or exposed in response to a user interaction provides a
solution to “the technical problem of displaying information, including
sponsored ad listings, on a small screen of a mobile device.” Appeal Br. 14.
Appellants also argue the claimed solution improves computer functionality
by providing a more readable and useable user-interface than the

1 Appellants cite paragraph 25, but the quoted language is in paragraph 22 of
the Specification.
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conventional results lists. Appeal Br. 15.
Appellants also assert the claims recite more than a mere result
because the claims “describe[] the action of the computer in generating the
display” and “provide for an improved display arrangement that allows for
desired content to be displayed, seen, and/or interacted with.” Appeal Br. 15
(describing exemplary embodiments that hide or expose various visual
objects); Reply Br. 8. Appellants argue the claim language relating to
exposing objects of current interest and hiding objects not of current interest
to the user to allow more screen space for showing the objects of interest
“illustrates the actual solution to the problem of displaying varying
information on a mobile client device.” Appeal Br. 15.
As the Majority notes, the Supreme Court’s two-step framework
guides patent eligibility analysis under 35 U.S.C. § 101. Alice Corp. v. CLS
Bank Int’l, 573 U.S. 208, 217 (2014). As also set forth by the Majority, after
the Briefs were filed, the Office published revised guidance for evaluating
subject matter eligibility under 35 U.S.C. § 101, specifically with respect to
applying the Alice framework. USPTO, 2019 Revised Patent Subject Matter
Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (“Guidance”).
If a claim falls within one of the statutory categories of patent
eligibility (i.e., a process, machine, manufacture, or composition of matter),
we determine whether the claim is directed to one of the judicially
recognized exceptions (i.e., a law of nature, a natural phenomenon, or an
abstract idea). Alice, 573 U.S. at 217. As part of our inquiry, we “look at
the ‘focus of the claimed advance over the prior art’ to determine if the
claim’s ‘character as a whole’ is directed to excluded subject matter.”
Affinity Labs of Tex., LLC v. DIRECTV, LLC, 838 F.3d 1253, 1257 (Fed.
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Cir. 2016). The Guidance directs us to address this inquiry using two prongs
of analysis: (i) does the claim recite a judicial exception (e.g., an abstract
idea), and (ii) if so, is the judicial exception integrated into a practical
application. 84 Fed. Reg. at 54.
Under the Guidance, if the judicial exception is integrated into a
practical application, the claim is patent eligible under § 101. 84 Fed. Reg.
at 54–55. If the claim is directed to a judicial exception (i.e., the claim both
recites a judicial exception and fails to integrate the exception into a
practical application), we next determine whether the claim provides an
inventive concept, which includes determining whether any element, or
combination of elements, amounts to significantly more than the judicial
exception. Alice, 573 U.S. at 217; 84 Fed. Reg. at 56.
Here, I conclude Appellants’ claims are directed to mental processes
(i.e., a concept performed in the human mind, such as, an observation,
evaluation, judgment, and opinion), which are abstract ideas. See 84 Fed.
Reg. at 52. Appellants’ claims generally are directed to providing
interactive advertisements responsive to a search query. This is consistent
with how Appellants describe the claimed embodiments of the invention.
Appeal Br. 2 (“In particular, the present invention relates to displaying
content including sponsored entity search results on the display of a mobile
client device.”); See Spec. ¶¶ 3–4, 21 (“Provided herein are novel systems,
methods, and circuitry related to the sponsorship and monetization of entity
based content (such as entity search results and graphical user interfaces
(GUIs))” and “modular search objects and frameworks for supporting entity
based content, modular search objects, and user interactions with the
aforementioned,” which provide “less intrusive advertising and a more
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manageable environment for online browsing in a mobile context.”).
Notwithstanding Appellants’ characterization of the claims as improving
technology, Appeal Br. 6–16, Appellants’ description regarding the claimed
invention describes a problem with the usability of GUIs. Although
Appellants describe this problem as an “engineering problem,” the
Appellants describe and broadly claim a solution rooted in the design (i.e.,
the layout and interactivity) and use of conventional GUI elements.
Claim 1 is reproduced below with the claim limitations that recite
providing interactive advertisements responsive to a search query
emphasized in italics:
1. A system stored in a non-transitory medium executable by
processor circuitry, comprising:
first interface circuitry configured to receive a search
query from a search field on a page view displayed on a display
screen of a mobile client device;
second interface circuitry communicatively coupled to the
first interface circuitry, the second interface circuitry configured
to receive analytics data about characteristics of an audience
including a user of the mobile client device or about
advertisements displayed on the display screen of the mobile
client device, or about user interactions with advertisements
displayed on the display screen of the mobile client device, the
analytics data corresponding to the search query;
first framework circuitry communicatively coupled to the
first interface circuitry and the second interface circuitry, the first
framework circuitry configured to determine a plurality of
sponsored entity search results according to the search query
and the analytics data and to display one or more sponsored
entity search results of the plurality of sponsored entity search
results on the display screen of the mobile client device;
third interface circuitry communicatively coupled to the
first framework circuitry, the third interface circuitry configured
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to receive a user interaction with a sponsored entity search result
of the one or more sponsored entity search results displayed on
the display screen of the mobile client device; and
second framework circuitry communicatively coupled to
the third interface circuitry, the second framework circuitry
configured to determine an interactive entity section for display
on the page view in response to the user interaction with the
sponsored entity search result, wherein the interactive entity
section includes a plurality of moveable visual objects moveable
within the interactive entity section in response to interactions
including the user interaction to expose to user view a moveable
visual object of current interest to the user of the mobile client
device and to hide from view other moveable visual objects not
of current interest to the user of the mobile client device to allow
more screen space for viewing of the moveable visual object of
current interest to the user.
More particularly, providing interactive advertisements responsive to
a search query comprises (i) receiving the data necessary to display the
results (i.e., the search query and the analytics data); (ii) determining search
results to be displayed based on the received data; (iii) displaying the search
results; and (iv) determining the “interactive entity section for display.”
The concept recited in the claims is simply a series of observations,
evaluations, and judgements for determining search results and how to
arrange the results for display on a device. Consistent with our Guidance
and case law, I conclude this concept is a mental process and, therefore, an
abstract idea. See 84 Fed. Reg. at 52; Digitech Image Techs., LLC v. Elecs.
for Imaging, Inc., 758 F.3d 1344, 1351 (Fed. Cir. 2014) (concluding “taking
existing information . . . and organizing this information into a new form” is
an abstract idea); SAP Am., Inc. v. InvestPic, LLC, 898 F.3d 1161, 1167
(Fed. Cir. 2018) (concluding claims were directed to the abstract idea of
“selecting certain information, analyzing it using mathematical techniques,
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and reporting or displaying the results of the analysis”); see also Elec. Power
Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353–54 (Fed. Cir. 2016)
(concluding that “analyzing information by steps people go through in their
minds, or by mathematical algorithms, without more, as essentially mental
processes within the abstract-idea category” and concluding claims directed
to “collecting information, analyzing it, and displaying certain results of the
collection and analysis” were abstract); Intellectual Ventures I LLC v.
Capital One Fin. Corp., 850 F.3d 1332, 1340 (Fed. Cir. 2017) (concluding
claims that focused on collecting, displaying and manipulating data were
directed to an abstract idea).
If a claim, under its broadest reasonable interpretation, covers
performance in the mind but for the recitation of generic computer
components, then it is still in the mental processes category unless the claim
cannot practically be performed in the mind. See Intellectual Ventures I
LLC v. Symantec Corp., 838 F.3d 1307, 1318 (Fed. Cir. 2016) (“[W]ith the
exception of generic computer-implemented steps, there is nothing in the
claims themselves that foreclose them from being performed by a human,
mentally or with pen and paper.”); see also CyberSource Corp. v. Retail
Decisions, Inc., 654 F.3d 1366, 1375, 1372 (Fed. Cir. 2011) (holding that the
incidental use of “computer” or “computer readable medium” does not make
a claim otherwise directed to process that “can be performed in the human
mind, or by a human using a pen and paper” patent eligible); Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 71 (2012)
(explaining mental processes are not patentable); 84 Fed. Reg. at 52–53
nn.14–15.
Even though GUIs are, by their nature, used in electronic devices,
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simply claiming relationships between elements in a GUI or between a user
and the GUI elements does not necessarily recite an improvement to
technology sufficient to render the claimed subject matter eligible. Two
relatively recent Federal Circuit cases discuss the eligibility of claims that
focus on alleged improvements to GUIs. Compare Apple, Inc. v. Ameranth,
Inc., 842 F.3d 1229, 1241 (Fed. Cir. 2016) (determining claims directed to a
GUI that allowed a user to select items from a first set of menus and
facilitated generating a second menu were abstract ideas because “[t]hey do
not claim a particular way of programming or designing the software to
create menus that have these features, but instead merely claim the resulting
systems”) (emphases added), with Core Wireless Licensing S.A.R.L. v. LG
Electronics, Inc., 880 F.3d 1356, 1360 (Fed. Cir. 2018) (determining claims
directed to a GUI providing access to application information from a main
menu with the application in an unlaunched state were not directed to an
abstract idea). Admittedly, distinguishing the claims held ineligible in Apple
from the claims held eligible in Core Wireless is difficult, and, at first blush,
Appellants’ claims have may seem analogous to the claims in Core Wireless.
In Core Wireless, the court determined the claims were “directed to an
improved user interface for computing devices,” reiterating the emphasized
portions of the claims and stating that the “limitations disclose a specific
manner of displaying a limited set of information to the user, rather than
using conventional user interface methods to display a generic index on a
computer.” Core Wireless, 880 F.3d at 1362–63 (emphases added).
Notably, the court focused on the fact that the claims recited “an application
summary window that can be reached directly from the main menu . . .
while the application is in an un-launched state.” Core Wireless, 880 F.3d at
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1360 (reproducing the claim to demonstrate emphasis on what the court
presumably found important regarding eligibility).
Here, unlike the claims in Core Wireless, there is no evidence
suggesting that the moveable visual objects, which are part of the
determined interactive entity section, are anything other than conventional
GUI elements (e.g., windows in any graphics-based operating system)
implemented using conventional GUI methods. In other words, the claims
simply recite determining an interactive entity section for display that
includes particular GUI elements. The broad scope of the claims, however,
at least encompasses conventional windows (or tabs in a window or
application) in a conventional operating system that are moveable in
response to a user selecting and dragging those windows (or clicking
through the different tabs). Because the claims encompass these
conventional windowing or tabbing GUI elements, I do not find Appellants’
claims similar to the claims in Core Wireless.
Rather, I find Appellants’ claims are more similar to the claims held
ineligible in Apple. The ineligible claims in that case focused on particular
relationships between GUI elements and creating new GUI elements from
existing GUI elements. Apple, 842 F.3d at 1241. The court determined the
claims did “not claim a particular way of programming or designing the
software to create menus that have these features, but instead merely claim
the resulting systems.” Apple, 842 F.3d at 1241 (emphases added). The
Court further stated that, “[e]ssentially, the claims are directed to certain
functionality—here, the ability to generate menus with certain features,” not
“to a specific improvement in the way computers operate.” Apple, 842 F.3d
at 1241.
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Other than receiving data, determining and displaying search results
according to the received data, receiving a user interaction with the search
results, Appellants’ claims simply recite determining an interactive entity
section for display having objects that, in response to a user action, are
moveable “to expose to user view . . . and to hide from view” particular
objects depending on which objects currently are of interest to the user.
Accordingly, as in Apple, Appellants’ claims fail to “claim a particular way
of programming or designing the software to create [moveable visual
objects] that have these features, but instead merely claim the resulting
systems.” Apple, 842 F.3d at 1241.
Because the claim recites a judicial exception, I next analyze whether
the claim integrates the judicial exception into a practical application.
84 Fed. Reg. at 54. To determine whether the judicial exception is
integrated into a practical application, we identify whether there are “any
additional elements recited in the claim beyond the judicial exception(s)”
and evaluate those additional elements to determine whether they integrate
the judicial exception into a recognized practical application. 84 Fed. Reg.
at 54–55 (emphasis added); see also Manual of Patent Examining Procedure
(“MPEP”) § 2106.05(a)–(c), (e)–(h) (9th ed. Rev. 08.2017, Jan. 2018).
Here, I would find the additional limitations do not integrate the
judicial exception into a practical application. More particularly, the claims
do not recite: (i) an improvement to the functionality of a computer or other
technology or technical field (see MPEP § 2106.05(a)); (ii) use a “particular
machine” to apply or use the judicial exception (see MPEP § 2106.05(b));
(iii) a particular transformation of an article to a different thing or state (see
MPEP § 2106.05(c)); or (iv) any other meaningful limitation (see MPEP
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§ 2106.05(e)). See also 84 Fed. Reg. at 55.
Rather, the additional elements simply (1) use computers as tools to
implement the abstract idea requiring no more than generic computer
elements to perform generic computer functions or (2) add insignificant
extra-solution activity. The additional elements recited in the claims include
the variously recited interface and framework circuitry and receiving a user
interaction with a displayed sponsored entity of a search result. For
purposes of this Dissent, although I determine the entirety of the determining
an interactive entity step is merely a mental process (i.e., an evaluation) and
part of the abstract idea, I alternatively consider the recitation that the
interactive entity section includes moveable visual objects to expose or hide
certain of those objects to be an additional element.
The recited interface and framework circuitry elements are generic
computer elements recited at a high level of generality. The majority of the
references to the circuitry in the Specification provide only general, vague,
open-ended (i.e., non-limiting), and functional descriptions of these
elements. See, e.g., Spec. ¶¶ 7–19, 40 (“Analytics circuitry may be used to
determine analytics data, and such circuitry may be embedded in any one of
the servers and client devices.”), 98 (“Each module has respective[] circuitry
configured to execute various aspects of the module.”), 119–134 (describing
Figure 7’s block diagram of exemplary circuitry by associating various
functions with each block; for example, paragraph 128 describing “Display
GUI Circuitry” 716 as being configured to display a GUI and/or sub-GUI
associated with the search result without describing structure or how this
circuity performs the function), 148–149. Appellants’ disclosure also
describes circuitry as potentially including software and/or hardware. Spec.
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¶¶ 78–79 (explaining the circuitry can be “a combination of circuitry of the
native operating system, the native client-side application, and the
framework,” and “parts of the circuitry can include client-side code such as
AJAX, JavaScript, or any combination thereof”), 141 (“circuitry may
include circuits connected wirelessly as well as circuits connected by
hardware, such as wires”).
Additionally, “receiv[ing] a user interaction with [information]
displayed on the display screen of the mobile client device” is the most
fundamental, generic, and basic purpose of GUIs (graphical user interfaces).
Although not all GUIs necessarily include moveable visual objects that may
be moved in response to a user action to expose or hide certain of those
objects depending on the objects in which the user currently is interested,
conventional operating systems (e.g., Microsoft Windows®) having
moveable windows or applications and/or having applications with tabs
(e.g., Microsoft Excel®) use an “interactive entity section” that includes
moveable objects to hide or expose the objects based on the objects in which
the user is interested. Accordingly, these limitations simply recite the use of
generic computer components as tools to implement the abstract idea. See
84 Fed. Reg. at 55; MPEP § 2106.05(f).
Although the receiving a search query and receiving analytics data
steps are part of the above-identified abstract idea because these steps are
merely observations (i.e., mental processes), to the extent these steps could
be considered additional elements beyond the abstract idea, they are merely
pre-solution data gathering steps required to obtain the data necessary to
make the recited determinations. Furthermore, to the extent displaying the
actual GUI elements determined to be displayed goes beyond the abstract
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idea, displaying the results of the determination is merely post-solution
activity to output the results of the mental steps. These steps recite the type
of insignificant extra-solution activity the courts have determined
insufficient to transform judicially excepted subject matter into a patent-
eligible application. See 84 Fed. Reg. at 55, 55 n.31; MPEP § 2106.05(g);
Bancorp Servs., L.L.C. v. Sun Life Assur. Co. of Can., 771 F.Supp.2d 1054,
1065 (E.D. Mo. 2011) aff'd, 687 F.3d 1266 (Fed. Cir. 2012) (explaining that
“providing data . . . [is] insignificant post solution activity”); Bilski v.
Kappos, 561 U.S. 593, 612 (holding the use of well-known techniques to
establish inputs to the abstract idea as extra-solution activity that fails to
make the underlying concept patent eligible); also Parker v. Flook, 437 U.S.
584, 590 (1978) (explaining “[t]he notion that post-solution activity, no
matter how conventional or obvious in itself, can transform an unpatentable
principle into a patentable process exalts form over substance”); Elec.
Power, 830 F.3d at 1354 (recognizing “that merely presenting the results of
abstract processes of collecting and analyzing information, without more
(such as identifying a particular tool for presentation), is abstract as an
ancillary part of such collection and analysis”).
Therefore, I disagree with Appellants’ contention that the claims
recite an improvement to technology. To the extent Appellants argue the
claims provide a solution to the “problem of displaying information,
including sponsored ad listings, on a small screen of a mobile device,”
Appeal Br. 14, I disagree that this constitutes a technical problem or a
technical solution to the problem that provides an improvement to
technology. Rather, the claims are directed to determining a usable GUI
layout but are not, for example, creating new GUI elements.
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Appellants’ alleged benefits focus simply on GUI elements that are
movable. The claims are not directed to “an improvement in computers as
tools,” like those claims found patent-eligible. Elec. Power Grp., LLC v.
Alstom S.A., 830 F.3d 1350, 1354 (Fed. Cir. 2016). Rather, the claims
invoke computers merely as a tool to implement an abstract idea for
presenting information in a particular way. See BSG Tech LLC v.
Buyseasons, Inc., 899 F.3d 1281, 1287–88 (Fed. Cir. 2018) (disagreeing
with BSG “that its claims focus on a non-abstract improvement in database
functionality” by improving the quality and organization of information in
the database because the recited benefits “are not improvements to database
functionality” but instead are “benefits that flow from performing an abstract
idea in conjunction with a well-known database structure”). Analogous to
the claims in BSG, the claims do not relate to how GUIs function, but how
conventional GUIs are used to organize and present information in a way
that allegedly improves the arrangement of information presented in a GUI.
See BSG, 899 F.3d at 1287. At best, I believe Appellants’ claims recite an
improvement to a user’s ability to interact with the GUI, but this simply
results from a decision on how to present the information using extant GUI
elements, not from an improvement to the device itself or some other
technology.
The most relevant portion of the Guidance instructs us that
“improvement in the functioning of a computer, or an improvement to other
technology or technical field” may be enough to integrate the abstract idea
into a practical application. See 84 Fed. Reg. at 55. In my view, the present
claims are similar to those at issue in Apple and, therefore, do not recite the
type of technological solution or address the type of technical problem the
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Guidance suggests would be sufficient to integrate an abstract idea into a
practical application. Even assuming that the particular GUI arrangement is
useful for browsing information on the small screen of a mobile device, this
is not enough to integrate the abstract idea into a practical application. Cf.
Univ. of Fla. Research Found., Inc. v. General Elec. Co., 916 F.3d 1363,
1367 (Fed. Cir. 2019) (noting that although the claimed invention may
“‘result in life altering consequences’ . . . is laudable, [] it does not render
[the claims] any less abstract”).
It is unclear to me how the claims’ broad aspirational language
provides a technological solution. Under the broadest reasonable
interpretation, the claims encompass (1) receiving three types of
information: (a) a search query from a search field in a browser web page
displayed on a tablet running a GUI of various operating systems,
(b) analytics data, and (c) user interactions with advertisements displayed on
the screen of the tablet; (2) determining sponsored search results using the
received search query and analytics data; (3) displaying the search results on
the tablet’s screen; (4) receiving a user interaction with the displayed search
results; and (5) determining GUI elements to display, including moveable
GUI elements (that, in response to user interaction, expose objects of interest
to the user and hide other objects not of interest). As broadly recited, the
claims’ determining an interactive entity step encompasses any type of
“moveable visual object,” such as windows that a user can resize (including
expanding, contracting, minimizing, maximizing) or click-and-drag to cover
other windows in which the user is not interested or GUI elements similar to
tabbed worksheets. In other words, the claims recite at a high level of
generality the idea of having moveable GUI elements with which a user may
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interact to (a) expose GUI elements in which the user is interested and (b)
hide GUI elements in which the user is not interested recited at a high level
of generality—essentially, generic GUI functions. Appellants argue claims
recite a solution rather than a mere result, but Appellants fail to explain
persuasively how reciting the intended capabilities and visual results of
manipulating GUI elements teaches how this capability is technically
implemented and, more importantly, how such an implantation is an
improvement to technology.
I believe an analogy to organizing physical documents underscores
the lack of an improvement to technology. The claims recite, at a high level
of generality, determining what information to display and how to display it
for ease of readability. If I have multiple documents relating to each of my
car insurance, home insurance, and auto insurance, but I have a small desk, I
may not be able to view all of the information at the same time. I may
determine to place each document relating to my car insurance in a first
folder, each document relating to my auto insurance in a second folder, and
each document relating to my home insurance in a third folder. When I wish
to look at my home insurance documents, I may close my first two folders
and move them out of sight, or simply place my third folder on top of them,
then open my third folder. With the documents placed in folders, I am able
interact with the folders to expose the documents in which I am interested
and hide the documents in which I am not interested. This document
organization technique makes it easier for me to view a subset of the
information available to me, but it does not constitute a technological
improvement. Similarly, I do not find applying the idea of using generic
electronic devices to implement information organization and display
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techniques, recited at a high level of generality, improves the devices or any
other technology.
For at least the foregoing reasons, the claims do not integrate the
judicial exception into a practical application. Accordingly, I agree with the
Examiner that the claims are directed to an abstract idea and turn to step 2 of
the Alice analysis.
Because I would determine the claims are directed to an abstract idea,
I analyze the claims under step two of Alice to determine if there are
additional limitations that individually, or as an ordered combination, ensure
the claims amount to “significantly more” than the abstract idea. Alice, 573
U.S. at 217–18 (citing Mayo, 566 U.S. at 72–73, 77–79 (2012)). As stated
in the Guidance, many of the considerations to determine whether the claims
amount to “significantly more” under step two of the Alice framework are
already considered as part of determining whether the judicial exception has
been integrated into a practical application. 84 Fed. Reg. at 56. Thus, at this
point of the analysis, I determine if the claims add a specific limitation, or
combination of limitations, that is not well-understood, routine, conventional
activity in the field, or simply appends well-understood, routine,
conventional activities at a high level of generality. 84 Fed. Reg. at 56.
Appellants’ claims fail to recite specific additional limitations (or a
combination of limitations) that are not well-understood, routine, and
conventional. As discussed above, the additional elements, at most include
the various circuitry, receiving information and a user interaction, and
displaying information in a GUI. As also discussed above, the circuitry
elements, as supported by the Specification, are generic computer
components recited at a high level of generality. Similarly, receiving
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information, a user interaction, and displaying information in a GUI are
basic computer functions, none of which recite limitations beyond what was
well-understood, routine, and conventional in the art. See Berkheimer
Memo2 § III.A.1; 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.”);
FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1096 (Fed.
Cir. 2016) (“[T]he use of generic computer elements like a microprocessor
or user interface do not alone transform an otherwise abstract idea into
patent-eligible subject matter.”).
For the reasons discussed above, I am not persuaded the Examiner
erred, and I would sustain the Examiner’s rejection of claims 1–20 under
35 U.S.C. § 101.
THE 35 U.S.C. § 103 REJECTION OF CLAIMS 18 AND 19
The Examiner rejects claim 18 as obvious in view of Talluri and
Huang. Final Act. 68–74. Particularly relevant to Appellants’ arguments,
the Examiner finds Talluri teaches or suggests outputting a plurality of
search results moveable about the touchscreen of the mobile device, but
acknowledges Talluri does not explicitly teach “search results are moveable

2 “Changes in Examination Procedure Pertaining to Subject Matter
Eligibility, Recent Subject Matter Eligibility Decision (Berkheimer v. HP,
Inc.)” at 3 (Apr. 19, 2018), available at
https://www.uspto.gov/sites/default/files/documents/memo-berkheimer-
20180419.PDF (explaining that a specification that describes additional
elements “in a manner that indicates that the additional elements are
sufficiently well-known that the specification does not need to describe the
particulars of such additional elements to satisfy 35 U.S.C. § 112(a)” can
show that the elements are well understood, routine, and conventional).
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on a touch screen by a user’s gesture or more specifically,” as recited in
claim 18:
in response to tactile gestures made on the touchscreen on or
proximate to the sponsored and the non-sponsored search results
to expose to user view a moveable visual object of current
interest to the user of the mobile client device and to hide from
view other moveable visual objects not of current interest to the
user of the mobile device to allow more screen space on the
touchscreen for viewing of the moveable visual objects of current
interest to the user.
Final Act. 71–72 (citing Talluri ¶¶ 16, 46, Figs. 5–6); Ans. 12–13
(additionally citing Talluri ¶¶ 7, 17–18, Abstract). However, the Examiner
finds Huang teaches or suggests this missing aspect of claim 18 and provides
a rationale for combining these teachings. Final Act. 73–74 (citing Huang
¶ 57, 60, 63, 66; Talluri ¶ 39, 46). As the Examiner notes, in response to a
user gesture, Huang’s display causes the search results to be expanded,
moving the search results from a partial window on the edge of the screen to
a full window, thereby covering (or hiding) the news section from which the
user performed the gesture-based search. Ans. 13. The Examiner explains
that this gesture results in a display presenting information of interest to the
user and hiding information not of interest to the user. Ans. 13.
Appellants acknowledge Huang discloses “expansion (and
presumably contraction) of an on-screen image,” but assert “this still fails to
show movement about the touchscreen of the device.” Appeal Br. 20. More
specifically, Appellants argue Huang simply teaches expanding an edge of a
window, but the claims require “moving entire objects around the screen, the
[sic] expose to view objects of interest to the user and hide from view
objects not of interest . . . not just a resizing function,” which requires
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deleting objects from view and adding objects to view. Final Act. 20; Reply
Br. 13.
I agree with the Examiner’s findings and conclusion. I am not
persuaded the broadest reasonable interpretation of the “search results being
moveable about the touchscreen . . . in response to tactile gestures . . . to
expose” objects of interest to the user and hide objects not of interest to the
user excludes Huang’s disclosure of expanding search results. As
Appellants’ acknowledge, Huang teaches expansion (and at least suggests
contraction) of the search results portion of a display in response to a user
gesture on a touchscreen. Huang teaches displaying multiple elements on a
touch screen. Huang further teaches receiving a user gesture on the screen
to change what is displayed on the screen. One such gesture changes the
display from showing news on one part of a screen and search results on
another part of the screen to showing the search results in a larger window
and hiding the news. Huang ¶ 63; Compare Huang Fig. 7 (depicting two
visual objects: (1) a window with news partially covered by (2) search
results), with Huang Fig. 8 (depicting a single visual object showing more
information of the search results previously displayed on the right edge of
the screen in Figure 7 and hiding the news that was displayed in Figure 7).
Therefore, I am not persuaded the Examiner erred in rejecting claim 18 and
claim 19, not argued separately with particularity.
For the above reasons, I respectfully dissent.