Yekesa Kosuru

Patent Trials and Appeals Board

Sep 19, 2019

12163421 - (D) (P.T.A.B. Sep. 19, 2019)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
12/163,421 06/27/2008 Yekesa Kosuru 114033-1097/PRAG 63331 8613
146446 7590 09/19/2019
Dinsmore & Shohl LLP
801 Pennsylvania Avenue, N.W.
Suite 610
Washington, DC 20004
EXAMINER
FU, HAO
ART UNIT PAPER NUMBER
3697
NOTIFICATION DATE DELIVERY MODE
09/19/2019 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
Evette.Ginn@DINSMORE.COM
dcipdocket@dinsmore.com
kimberly.koen@dinsmore.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte YEKESA KOSURU
____________________

Appeal 2017-011602
Application 12/163,421
Technology Center 3600
____________________

Before CARL W. WHITEHEAD JR., KARA L. SZPONDOWSKI, and
DAVID J. CUTITTA II, Administrative Patent Judges.

SZPONDOWSKI, Administrative Patent Judge.

DECISION ON APPEAL

Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1–15, 17–20, 22–24, 26–32, 34, and 35, which
constitute all of the claims pending in the current application. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
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STATEMENT OF THE CASE
Appellant’s invention is generally directed to dynamically rearranging
and deploying advertising selection logic in order to optimize the selection
of advertisements to be displayed. Spec. ¶¶ 1, 3. Claim 1, reproduced
below, is representative of the claimed subject matter:
1. A method of rearranging a sequence of advertisement
selection filters comprising:

receiving at a mobile user communication device an
advertisement selection logic sent over a communication
network from a advertisement server, the advertisement
selection logic including a first arrangement of a plurality of
advertisement selection filters, and the mobile user
communication device comprising a processor and a memory
that stores computer executable instructions and data used by
the processor, wherein the processor:

processes the advertisement selection logic in a pipeline
model according to the first arrangement of the plurality of
advertisement selection filters;

determines an advertisement click history at the mobile
user communication device;

determines a second arrangement of the plurality of
advertisement selection filters of the advertisement selection
logic based on the click history;

processes the advertisement selection logic in the
pipeline model according to the second arrangement of the
plurality of advertisement selection filters; and

causes a presentation of one or more advertisements at
the mobile user communication device, wherein the one or
more advertisements are filtered via the second arrangement of
the plurality of advertisement selection filters.
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REJECTION
Claims 1–15, 17–20, 22–24, 26–32, 34, and 35 stand rejected under
35 U.S.C. § 101 as directed to ineligible subject matter.

ANALYSIS
35 U.S.C. § 101 Rejections
An invention is patent-eligible if it claims a “new and useful process,
machine, manufacture, or composition of matter.” 35 U.S.C. § 101.
However, the Supreme Court has long interpreted 35 U.S.C. § 101 to include
implicit exceptions: “[l]aws of nature, natural phenomena, and abstract
ideas” are not patentable. E.g., Alice Corp. v. CLS Bank Int’l, 573 U.S. 208,
216 (2014).
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court’s two-step framework, described in Mayo
and Alice. Id. at 217–18 (citing Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 566 U.S. 66, 75–77 (2012)). In accordance with that framework,
we first determine what concept the claim is “directed to.” See Alice, 573
U.S. at 219 (“On their face, the claims before us are drawn to the concept of
intermediated settlement, i.e., the use of a third party to mitigate settlement
risk.”); see also Bilski v. Kappos, 561 U.S. 593, 611 (2010) (“Claims 1 and 4
in petitioners’ application explain the basic concept of hedging, or protecting
against risk.”).
Concepts determined to be abstract ideas, and thus patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219–20; Bilski, 561 U.S. at 611);
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mathematical formulas (Parker v. Flook, 437 U.S. 584, 594–95 (1978)); and
mental processes (Gottschalk v. Benson, 409 U.S. 63, 69 (1972)).
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 (quotation marks omitted). “A
claim that recites an abstract idea must include ‘additional features’ to
ensure ‘that the [claim] is more than a drafting effort designed to
monopolize the [abstract idea].’” Id. (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 PTO recently published revised guidance on the application of
§ 101. USPTO, 2019 Revised Patent Subject Matter Eligibility Guidance,
84 Fed. Reg. 50 (January 7, 2019) (“Memorandum”). Under that guidance,
we first look to whether the claim recites:
(1) any judicial exceptions, including certain groupings of abstract
ideas (i.e., mathematical concepts, certain methods of organizing
human activity such as a fundamental economic practice, or mental
processes); and
(2) additional elements that integrate the judicial exception into a
practical application (see MPEP §§ 2106.05(a)–(c), (e)–(h)).
Only if a claim (1) recites a judicial exception and (2) does not integrate that
exception into a practical application, do we then look to whether the claim:
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(1) adds a specific limitation beyond the judicial exception that is not
“well-understood, routine, conventional” in the field (see MPEP
§ 2106.05(d)); or
(2) simply appends well-understood, routine, conventional activities
previously known to the industry, specified at a high level of
generality, to the judicial exception.
See Memorandum, 84 Fed. Reg. at 52–57.
USPTO Memorandum, Step 2A, Prong 1
The Examiner determines the claims are directed to rearranging a
sequence of advertisement selection filters based on click history, which is
advertising activity based on a human behavior pattern, and therefore, an
abstract idea. Final Act. 2–4; Ans. 3–4; see also Final Act. 7 (“[T]he claims
are directed towards targeted advertising . . . [which] is a fundamental
economic practice and it is an activity based on human behavior pattern.”).
Appellant argues the claims “include features which are both new and
useful” such that they are not “fundamental” or “long prevalent,” so the
claims are not drawn to an abstract idea. App. Br. 13, 16. Appellant further
argues the Examiner has oversimplified the claim. Id. at 19; Reply Br. 5. In
addition, Appellant argues the “claims are not directed to using advertising
as an exchange or currency.” Reply Br. 3.
Appellant’s arguments are not persuasive. Claim 1 recites the
following limitations: (1) “[a] method of rearranging a sequence of
advertisement selection filters,” (2) “receiving . . . advertisement selection
logic . . . including a first arrangement of a plurality of advertisement
selection filters,” (3) “processes the advertisement selection logic . . .
according to the first arrangement of the plurality of advertisement selection
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filters,” (4) “determines an advertisement click history,” (5) “determines a
second arrangement of the plurality of advertisement selection filters of the
advertisement selection logic based on the click history,” (6) “processes the
advertisement selection logic . . . according to the second arrangement of the
plurality of advertisement selection filters,” and (7) “causes a presentation of
one or more advertisements . . . wherein the one or more advertisements are
filtered via the second arrangement of the plurality of advertisement
selection filters.” Independent claims 17, 20, 32, 34, and 35, recite similar
limitations. These limitations recite advertising activity, in particular,
selecting and presenting advertisements based on a user’s interests, which is
identified as certain methods of organizing human activity and, therefore, an
abstract idea. See Memorandum, 84 Fed. Reg. at 52; see Final Act. 2–4, 7;
Ans. 3–4; see Affinity Labs of Texas, LLC v. Amazon.com Inc., 838 F.3d
1266, 1269 (Fed. Cir. 2016) (“[W]e hold that the concept of delivering user-
selected media content to portable devices is an abstract idea.”); Intellectual
Ventures I LLC v. Capital One Bank (USA), 792 F.3d 1363, 1369–70 (Fed.
Cir. 2015) (the practice of tailoring advertising to individual customers is a
“‘fundamental . . . practice long prevalent in our system’”).
Accordingly, Appellant has not sufficiently argued why the claims do
not recite an abstract idea. Therefore, we conclude the claims recite an
abstract idea pursuant to Step 2A, Prong One of the guidance. See
Memorandum, Section III(A)(1) (Prong One: Evaluate Whether the Claim
Recites a Judicial Exception).
USPTO Memorandum, Step 2A, Prong 2
In determining whether the claims are “directed to” the identified
abstract idea, we next consider whether the claims recite additional elements
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that integrate the judicial exception into a practical application.1 We discern
no additional element (or combination of elements) recited in the claims that
integrates the judicial exception into a practical application. See
Memorandum, 84 Fed. Reg. at 54–55.
The Examiner determines the claims “do not include an improvement
to another technology or technical field, an improvement to the functioning
of the computer itself, or meaningful limitations beyond generally linking
the use of an abstract idea to a particular technological environment.” Final
Act. 7; see also id. at 2–10. In addition, the Examiner determines “the
limitations . . . are [performed] by [a] generically recited computer device.”
Id. at 7.
Appellant argues a claim that recites a generic computer
implementation is not necessarily patent ineligible. App. Br. 15–17.
Appellant further provides quotations and citations from Enfish, LLC v.
Microsoft Corp., 822 F.3d 1327, 1339 (Fed. Cir. 2016) and the May 19,
2016 USPTO Guidance, and argues these support Appellant’s contentions
regarding patent eligibility. App. Br. 17.
We agree with the Examiner’s findings and conclusions. See Final
Act. 7–10; Ans. 4–11. Although Appellant cites to Enfish and the May 2016
USPTO Guidance, Appellant does not provide any argument or explanation

1 We acknowledge that some of the considerations at Step 2A, Prong Two,
properly may be evaluated under Step 2 of Alice (Step 2B of the Office
guidance). For purposes of maintaining consistent treatment within the
Office, we evaluate them under Step 1 of Alice (Step 2A of the Office
guidance). See Memorandum, 84 Fed. Reg. at 55 n.25, 27–32.

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as to how the claims at issue here are similar to those in Enfish or how they
provide an improvement to the functioning of a computer, like the claims in
Enfish. We agree with the Examiner that the claims here are not like those
in Enfish and do not provide an improvement to the functioning of a
computer. See Ans. 5–6; Final Act. 10.
We also agree with the Examiner that the limitations are performed by
generic computer components. See Final Act. 7. Appellant’s claim 1 recites
various computer components, such as a “mobile user communication
device,” “communication network from a advertisement server,” “a
processor and a memory that stores computer executable instructions and
data used by the processor,” and a “pipeline model.” See App. Br. 21
(Claims App’x). These computer components are generically described in
the Specification. E.g., Spec. ¶¶ 3, 24, 28, 29, 34, Figs. 1, 2, 3. Independent
claims 17, 20, 32, 34, and 35, likewise, recite similar generic computer
components. See App. Br. 24, 25, 28–31.
Accordingly, we determine the claims do not integrate the judicial
exception into a practical application. See Memorandum, Section III(A)(2)
(Prong Two: If the Claim Recites a Judicial Exception, Evaluate Whether
the Judicial Exception Is Integrated Into a Practical Application). We,
therefore, agree with the Examiner that the claims are directed to a judicial
exception. See Final Act. 2–4; Ans. 3–4.
USPTO Memorandum, Step 2B
Turning to step 2 of the Alice/Mayo framework, we look to whether
the claims: (a) add a specific limitation or combination of limitations that
are not well-understood, routine, conventional activity in the field, or (b)
simply append well-understood, routine, conventional activities previously
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known to the industry, specified at a high level of generality, to the judicial
exception. Memorandum, 84 Fed. Reg. at 56.
The Examiner determines the claims do not recite additional elements
that amount to significantly more than the abstract idea. Final Act. 11–12
Specifically, the Examiner determines the processor and memory computer
components perform basic functions of processing advertisement selection
logic, determining click history, and rearranging advertisement selection
logic. Id. at 11.
Appellant cites to, quotes from, and describes Bascom Global Internet
Services, Inc. v. AT&T Mobility LLC, 827 F.3d 1341, 1349–52 (Fed. Cir.
2016), and argues it supports Appellant’s contentions on patent eligibility.
App. Br. 18–19; Reply Br. 4–5.
Appellant has not presented persuasive arguments. Although
Appellant cites to Bascom, Appellant does not provide any argument or
explanation as to how the claims at issue here are similar to those in Bascom
or why the claims require a “non-conventional and non-generic arrangement
of computer components,” like the claims in Bascom. Ans. 6–7. We agree
with the Examiner’s findings and conclusions that the claims here are not
like those in Bascom. See Ans. 6–7; Final Act. 12–13. The additional
elements in the claim (e.g., “mobile user communication device,”
“communication network from a advertisement server,” “a processor and a
memory that stores computer executable instructions and data used by the
processor,” and a “pipeline model”), amount to no more than mere
instructions to apply the exception using generic computer components,
which is insufficient to provide an inventive concept. In particular, we agree
with the Examiner that the additional limitations simply append well-
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understood, routine, and conventional activities, specified at a high level of
generality, to the abstract idea. See Final Act. 11–12. Moreover, Appellant
does not direct our attention to anything in the Specification that indicates
the claimed computer components perform anything other than well-
understood, routine, and conventional processing functions, such as
receiving, processing, and displaying data. See Inventor Holdings, LLC v.
Bed Bath & Beyond, Inc., 876 F.3d 1372, 1378 (Fed. Cir. 2017) (holding
that considering claims reciting data retrieval, analysis, modification,
generation, display, and transmission as an “‘ordered combination”’ reveals
that they “amount to ‘nothing significantly more’ than an instruction to
apply [an] abstract idea” using generic computer technology) (internal
citation omitted); Fair Warning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089,
1096 (Fed. Cir. 2016) (noting that using generic computing components like
a microprocessor or user interface do not transform an otherwise abstract
idea into eligible subject matter); 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, sending
information over networks insufficient to add an inventive concept). In
short, the claims do no more than require a generic computer to perform
generic computer functions.
Accordingly, we conclude claims 1–15, 17–20, 22–24, 26–32, 34, and
35 are directed to certain methods of organizing human activity and thus an
abstract idea wherein the claims do not recite limitations that amount to
significantly more than the abstract idea itself.
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DECISION
We affirm the Examiner’s 35 U.S.C. § 101 rejection of claims 1–15,
17–20, 22–24, 26–32, 34, and 35.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED