Yoelle Maarek. Smadja et al.

Patent Trials and Appeals Board

Jun 16, 2020

2018007215 (P.T.A.B. Jun. 16, 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.
12/861,241 08/23/2010 Yoelle Maarek Smadja 12729-864 (Y06461US00) 1657
123510 7590 06/16/2020
Cooper Legal Group LLC
6505 Rockside Road Suite 330
Independence, OH 44131
EXAMINER
MACASIANO, MARILYN G
ART UNIT PAPER NUMBER
3688
NOTIFICATION DATE DELIVERY MODE
06/16/2020 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 YOELLE MAAREK SMADJA, ANDREI BRODER, VANJA
JOSIFOVSKI, and MELISSA B. STEIN
Appeal 2018-007215
Application 12/861,241
Technology Center 3600
BEFORE DEBRA K. STEPHENS, GENE E. BRANCH, and
PHILLIP A. BENNETT, Administrative Patent Judges.
STEPHENS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1, 2, 4–18, 20–25, 27, and 28 (see Final
Act. 1). We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies the real party in interest as Yahoo Holdings, Inc.
(Appeal Br. 2).
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CLAIMED SUBJECT MATTER
The claims are directed to a method and system for using email
receipts for targeted advertising. Claim 1, reproduced below, is illustrative
of the claimed subject matter:
1. A computer implemented method, comprising:
identifying a plurality of commercial emails for a plurality
of users, the plurality of commercial emails stored in a plurality
of email mailboxes in an email store;
parsing the commercial emails to extract data identifying
one or more parameters of a commercial transaction included in
email bodies of the commercial emails;
categorizing, using at least one processor, each of the
plurality of users in to one or more commercial behavior
categories based on the data identifying one or more parameters
of the commercial transaction included in the email bodies of the
commercial emails, wherein each commercial behavior category
identifies a commercial behavior of a respective user;
determining a privacy selection associated with each of the
plurality of users, wherein the privacy selection indicates
whether the system may extract personal information from the
commercial emails associated with the user;
generating, using at least one processor, a user profile for
each of the plurality of users that contains the one or more
commercial behavior categories for the respective user;
associating at least one user profile for at least one user of
the plurality of users with an anonymous identifier in response to
determining that the privacy selection of the at least one user
indicates that personal information may not be extracted from the
commercial emails associated with the at least one user; and
selecting, using at least one processor, a targeted
advertisement for display to a user from the plurality of users
using the user profile for that respective user and based at least
on the one or more commercial behavior categories of the user.
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REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Rawat US 2002/0174185A1 Nov. 21, 2002
Sheldon US 6,708,205 B2 Mar. 16, 2004
Gross US 2005/0044153 A1 Feb. 24, 2005
Yang US 2006/0085504 A1 Apr. 20, 2006
Reardon US 7,873,572 B2 Jan. 18, 2011
Minnis US 8,719,105 B2 May 6, 2014

REJECTIONS2
Claims 1, 2, 4–18, 20–25, 27, and 28 are rejected under 35 U.S.C.
§ 101 because the claimed invention is not directed to patent–eligible subject
matter (Final Act. 3–8).
Claims 1, 2, 4–18, 20–25, 27, and 28 stand rejected under 35 U.S.C.
§ 103 as being unpatentable over Sheldon, Reardon, and Minnis (id. at 9–
33).
We have considered only those arguments that Appellant actually
raised in the Briefs. Arguments Appellant could have made but chose not to
make in the Briefs have not been considered and are deemed to be waived
(See 37 C.F.R. § 41.37(c)(1)(iv)).

2 The separate and additional rejection of claim 18 under 35 U.S.C. § 101 as
not being directed to patent-eligible subject matter (Final Act. 8) has been
withdrawn by the Examiner (Ans. 3).

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OPINION
35 U.S.C. § 101: Claims 1, 2, 4–18, 20–25, 27, and 28
Appellant argues their invention as recited in claims 1, 2, 4–18, 20–
25, 27, and 28, is directed to patent-eligible subject matter (Appeal Br. 5).

Principles of Law
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 (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
id. 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, 69 (1972)). Concepts
determined to be patent-eligible include physical and chemical processes,
such as “molding rubber products” (Diamond v. Diehr, 450 U.S. 175, 192
(1981)); “tanning, dyeing, making water-proof cloth, vulcanizing India
rubber, smelting ores” (id. at 184 n.7 (quoting Corning v. Burden, 56 U.S.
252, 267–68 (1853))); and manufacturing flour (Benson, 409 U.S. at 69
(citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
In Diehr, the claim at issue recited a mathematical formula, but the
Supreme Court held 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 Supreme Court also indicated that a claim “seeking patent
protection for that formula in the abstract . . . is not accorded the protection
of our patent laws . . . and this principle cannot be circumvented by
attempting to limit the use of the formula to a particular technological
environment” (id. (citing Benson and Flook); see, e.g., id. at 187 (“It is now
commonplace that an application of a law of nature or mathematical formula
to a known structure or process may well be deserving of patent
protection.”)).
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
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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.).

USPTO 2019 Revised Section 101 Guidance
In January 2019, the USPTO published revised guidance on the
application of § 101 (see 2019 Revised Patent Subject Matter Eligibility
Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019 (“2019 Guidance”)). 3 “All USPTO
personnel are, as a matter of internal agency management, expected to
follow the guidance” (id. at 51); see also October 2019 Patent Eligibility
Guidance Update, U.S. Patent and Trademark Office, 1 (October 19, 2019),
https://www.uspto.gov/sites/default/files/documents/peg_oct_2019_update.p
df) (“October 2019 Update”))).
Under the 2019 Guidance and the October 2019 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)
(“Step 2A, Prong One”); and

3 In response to received public comments, the Office issued further
guidance on October 17, 2019, clarifying the 2019 Revised Guidance
(USPTO, October 2019 Update: Subject Matter Eligibility (the “October
2019 Update”) (available at https://www.uspto.gov/sites/default/files/
documents/peg_oct_2019_update.pdf)).
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(2) additional elements that integrate the judicial exception into a
practical application (see Manual of Patent Examining Procedure “MPEP”
§ 2106.05(a)–(c), (e)–(h) (9th ed. Rev. 08.2017, Jan. 2018)) (“Step 2A,
Prong Two”)).4
(2019 Revised Guidance, 84 Fed. Reg. at 52–55).
Only if a claim (1) recites a judicial exception and (2) does not
integrate that exception into a practical application, do we then look, under
Step 2B, 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, and conventional
activities previously known to the industry, specified at a high level of
generality, to the judicial exception (2019 Revised Guidance, 84 Fed. Reg. at
52–56).
Appellant argues all pending claims as a group (see Appeal Br. 15).
Accordingly, we address all pending claims as a group and select
independent claim 1 as representative of the claimed subject matter (see
37 C.F.R. § 41.37(c)(1)(iv)).

4 This evaluation is performed by (a) identifying whether there are any
additional elements recited in the claim beyond the judicial exception, and
(b) evaluating those additional elements individually and in combination to
determine whether the claim as a whole integrates the exception into a
practical application. See 2019 Revised Guidance - Section III(A)(2), 84
Fed. Reg. 54–55.
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ANALYSIS
STEP 1
Section 101 provides that “[w]hoever invents or discovers any new
and useful process, machine, manufacture, or composition of matter, or any
new and useful improvement thereof, may obtain a patent therefor, subject to
the conditions and requirements of this title” (35 U.S.C. § 101). We
determine that independent claims 1, 18, and 27 recite a method, a user
classifier, and system, respectively. As such, the claims are directed to
statutory classes of invention within 35 U.S.C. § 101, i.e., processes,
machines, and manufactures.

STEP 2A, Prong 1
Under Step 2A, Prong 1 of the Memorandum, we must determine
whether the claims, being directed to statutory classes of invention,
nonetheless fall within a judicial exception.
We agree with the Examiner’s determination that the claims are
“directed to the abstract idea of classifying users according to commercial
emails, for targeting advertising” (Final Act. 3) and specifically, that the
claims as a whole are directed to the abstract idea of a commercial
interaction, namely advertising activities, which are categorized as certain
methods of organizing human activity, because the claims recite “selecting
… a targeted advertisement for display to a user” (Appeal Br., claim 1) (See
2019 Guidance, 84 Fed. Reg. at 52). We further determine the claims as a
whole are directed to allow advertisers to “better assess the effectiveness of
their advertisements, and . . . better learn what products and services are
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being purchased by consumers” (Spec. ¶ 2) –– commercial interactions, and
specifically, advertising (2019 Guidance, 84 Fed. Reg. at 52).
An inspection of the claims supports the Examiner’s determination.
In particular, representative claim 1 recites:
[a] identifying a plurality of commercial emails for a
plurality of users, the plurality of commercial emails stored in a
plurality of email mailboxes in an email store;
[b] parsing the commercial emails to extract data
identifying one or more parameters of a commercial transaction
included in email bodies of the commercial emails;
[c] categorizing, using at least one processor, each of the
plurality of users in to one or more commercial behavior
categories based on the data identifying one or more parameters
of the commercial transaction included in the email bodies of the
commercial emails, wherein each commercial behavior category
identifies a commercial behavior of a respective user;
[d] determining a privacy selection associated with each
of the plurality of users, wherein the privacy selection indicates
whether the system may extract personal information from the
commercial emails associated with the user;
[e] generating, using at least one processor, a user profile
for each of the plurality of users that contains the one or more
commercial behavior categories for the respective user;
[f] associating at least one user profile for at least one
user of the plurality of users with an anonymous identifier in
response to determining that the privacy selection of the at least
one user indicates that personal information may not be extracted
from the commercial emails associated with the at least one user;
and
[g] selecting, using at least one processor, a targeted
advertisement for display to a user from the plurality of users
using the user profile for that respective user and based at least
on the one or more commercial behavior categories of the user.
(bracketed labels added). Those limitations describe “targeting advertising,”
i.e., certain methods of organizing human activity, and particularly
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commercial interactions (Final Act. 5). Limitations [a], [b], and [c] recite
steps for “identifying . . . commercial emails”; “parsing the commercial
emails . . . identifying . . . parameters of a commercial transaction”;
“categorizing . . . each . . . user in to one or more commercial behavior
categories based on . . . parameters of the commercial transaction” (Claim
1). Determining categories of users based on past purchases to optimize
targeted advertising is a fundamental and well-known aspect of commercial
interaction and specifically, advertising. Thus, these steps involve
commercial interactions (e.g., an advertising activity).
Limitation [d] recites a step for allowing a user to opt out of the
extraction of personal information from their email messages ––
“determining a privacy selection associated with each . . . user” (Claim 1).
Providing the capability to opt out of advertising activities is another
fundamental and well-known aspect of commercial interaction and
particularly, advertising. Thus, this step also describes a commercial
interaction. Limitations [e], [f], and [g] recite steps for “generating . . . a
user profile for each . . . user[s containing the] commercial behavior
categor[y]”; “associating [a] user profile for [the] user . . . with an
anonymous identifier”; and “selecting . . . a targeted advertisement for
display to a user . . . based [on the] commercial behavior categories of the
user.” Associating identifiers with users and displaying targeted
advertisements based on identified categories are fundamental and well-
known aspects of advertising. Thus, these steps also describe a commercial
interaction.
As such, as correctly recognized by the Examiner, the claims recite a
commercial interaction, and more specifically, a type of advertising activity,
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which is identified as a method of organizing human activity according to
the 2019 Guidance (2019 Guidance, 84 Fed. Reg. at 52). Therefore, we
determine the claims recite an abstract idea.

STEP 2A Prong 2
Next, we determine whether the claims are directed to the abstract
concept itself or whether the claims are instead directed to some
technological implementation or application of, or improvement to, the
recited concept, i.e., integrated into a practical application (see, e.g., Alice,
573 U.S. at 223, discussing Diehr, 450 U.S. at 175; October 2019 Update
10).
Appellant argues that “[t]he rejected claims are directed to a specific
improvement in computer capabilities, and are therefore not directed to any
abstract idea” (Reply Br. 2). Appellant further argues “the instant claims
provide for steps that require the use of computer technology to implement,
and thus improves the technology for online advertisement selection by
categorizing user data extracted from emails” (Reply Br. 7). According to
Appellant, “the instant application reduces reliance on the use of pixels or
beacons, which enables avoiding the labor-intensive activities and targeting
limitations associated with the use of pixels or beacons to determine
conversion, and improves the accuracy of selecting targeted advertisements
while reducing noise” (id. at 4, 6, 7 (emphasis added)). Moreover, the
Specification describes in the Background, “further techniques are desired
for measuring conversions and/or for otherwise assessing what products and
services that consumers are purchasing” (Spec. ¶ 3).
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We are not persuaded the claims improve the functioning of a
computer, or any other technology or technical field (see 2019 Guidance, 84
Fed. Reg. at 55). Rather, we determine the claims improve methods for
advertising. We agree with the Examiner that “[t]he claims amount to
nothing more than an abstract idea that uses [a] computer as a tool” (Ans. 4).
The 2019 Guidance states that an element that “merely includes instructions
to implement an abstract idea on a computer, or merely uses a computer as a
tool to perform an abstract idea” is an example which the courts have
identified as not being integrated into a practical application (84 Fed. Reg. at
55). Although Appellant contends the rejected claims are directed to
reducing reliance on the use of pixels or beacons (Reply Br. 7), neither the
claims nor the Specification provides any technical details as to how the
steps are performed on the pixels or beacons. Thus, we are not persuaded the
claims recite additional elements that amount to significantly more than the
judicial exception.
Next, Appellant argues “[t]he instant claims . . . address a business
challenge (providing targeted advertisements) that is particular to the
Internet” and “the claims in the instant application are related to a problem
specifically arising in the realm of the Internet” (Reply Br. 9). However, the
2019 Guidance provides that an element that “does no more than generally
link . . . to a particular technological environment or field of use” does not
integrate the exception into a practical application (84 Fed. Reg. at 55). The
MPEP elaborates on this statement to emphasize that generally linking an
abstract idea to the Internet fails to integrate the abstract idea into a practical
application (MPEP § 2106.05(h), citing Ultramercial, Inc. v. Hulu, LLC, 772
F.3d 709, 716 (Fed. Cir. 2014) (citation omitted) (“Narrowing the abstract
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idea of using advertising as a currency to the Internet is an ‘attempt[ ] to
limit the use’ of the abstract idea ‘to a particular technological environment,’
which is insufficient to save a claim”). Furthermore, our reviewing Court
has held that “merely limiting the field of use of the abstract idea to a
particular . . . environment does not render the claims any less abstract.”
Affinity Labs of Tex., LLC v. DIRECTV, LLC, 838 F.3d 1253, 1259 (Fed.
Cir. 2016). We, therefore, conclude the claims recite mere instructions to
implement the abstract idea on a computer (i.e., the claimed “at least one
processor”), and further, merely use a computer as a tool to perform the
abstract idea (2019 Guidance, 84 Fed. Reg. at 55; MPEP § 2106.05(f)).
Therefore, although the solution uses technology—e.g., software and
processors are used to improve the accuracy of selecting targeted
advertisements while reducing noise—the claims do not recite an
improvement to the computer or the technology itself.
The October 2019 Patent Eligibility Guidance Update states in the
Step 2A Prong 2 analysis, to “analyze the ‘improvements’ consideration by
evaluating the specification and the claims to ensure that a technical
explanation of the asserted improvement is present in the specification, and
that the claim reflects the asserted improvement” (October 2019 Patent
Update). In the instant application, the Specification does not contain any
technical explanation of the asserted improvements of “technology for
online advertisement selection by categorizing user data extracted from
emails” (see Reply Br. 7). Rather, the Specification merely describes the
general communications that occur between an email database and various
processor-implemented components (e.g., a “parsing engine”). For example,
the process of transmitting advertisements to user devices is described as
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being “carried out over one or more networks using well-known network
communication protocols” (Spec ¶ 91). Other portions of the Specification
and Figures similarly describe how the communications generally occur
between the various entities (see generally, Specification). However,
nowhere does Specification provide any technical explanation of the
asserted improvements to the technology.
Appellant contends the claims recites “categorizing the user data
extracted from the emails and selecting a targeted advertisement based on
the classified user data” and thus, “the pending claims recite improvements
in a computer device analyzing large amounts of data (e.g., data extracted
from emails) while also reducing the amount of electronic noise processed
by the computer device” (Appeal Br. 5). Neither the Specification nor the
claims provide any technical explanation as to the asserted improvements to
the technology (see generally, Specification). Indeed, the claims are not
directed to an improvement in the functioning of the computer itself; rather,
the claims are directed toward improving which advertisements will be
displayed based on the commercial behavior categories of the user, which
are determined based on e-mails and their content.
Accordingly, the claims do not recite a specific asserted improvement
in computer technological implementation and particularly, fail to recite
additional elements that integrate the judicial exception into a practical
application.

STEP 2B
Next, we determine whether the claims include additional elements
that provide significantly more than the recited judicial exception, thereby
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providing an inventive concept (Alice, 573 U.S. at 218–219 (quoting Mayo,
566 U.S. at 72–73)).
We agree with the Examiner’s determination that “[t]he claims do[]
not include additional elements that are sufficient to amount to significantly
more than the judicial exception because the additional elements when
considered both individually and as an ordered combination do not amount
to significantly more than the abstract idea” (Final Act. 5). We further agree
with the Examiner’s explanation that “[g]eneric computer components
recited as performing generic computer functions that are well-understood,
routine and conventional activities amount to no more than implementing
the abstract idea with a computerized system” (id.).
Appellant argues that “the instant claims provide for a non-
conventional and non-generic arrangement of features related to the
technological field of targeted advertisement selection using email” (Reply
Br. 11). We are not persuaded. “A claim for a new abstract idea is still an
abstract idea” (Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138,
1151). Neither the individual features of the claims themselves nor the
combination of elements are anything other than well-understood, routine, or
conventional activities. Specifically, Appellant’s Specification describes,
for example, the method of claim 1, user classifier of claim 18, and the
system of claim 27 are described in Figure 14 and in the Specification as
being able to be “implemented using well known servers/computers” (Spec.
¶ 102). The elements of Figure 14 are also described as well-understood,
routine, and conventional (e.g., one or more processors 1404, memory 1406,
a communication device 1402, and one or more input/output (I/O) devices
1422) (Spec. ¶¶ 103–110). For example, in Appellant’s Specification, the
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computer is described as “any commercially available and well known
computer capable of performing the functions described herein, such as
computers available from International Business Machines, Apple, Sun, HP,
Dell, Cray, etc.” (Spec. ¶ 103). The mobile computer or computing device is
described as “a Palm® device, a RIM Blackberry® device, a personal digital
assistant (PDA), a laptop computer, a notebook computer, etc.), a smart
phone, or other type of computing device” (id.¶ 36). Moreover, the process
of transmitting advertisements to user devices is described as being “carried
out over one or more networks using well-known network communication
protocols” such as “IEEE 802.11 wireless LAN (WLAN) wireless links,
Worldwide Interoperability for Microwave Access (Wi-MAX) links, cellular
network links, wireless personal area network (PAN) links (e.g.,
Bluetooth™ links), Ethernet links, USB links, etc.” (Spec ¶¶ 36, 91). Other
portions of the Specification and Figures similarly describe how the
communications generally occur between the various entities (see generally,
Specification). None of these descriptions provide any additional technical
detail.
According to the Berkheimer Memorandum,
[a] specification demonstrates the well-understood, routine,
conventional nature of additional elements when it describes the
additional elements as well-understood or routine or
conventional (or an equivalent term), as a commercially
available product, or 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)

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(Robert W. Bahr, Memorandum on Changes in Examination Procedure
Pertaining to Subject Matter Eligibility, Recent Subject Matter Eligibility
Decision (Berkheimer v. HP, Inc.), 1, 3, (April 19, 2018)).
As stated above with regards to Step 2A, Prong 1, the overall process
described in the claims is nothing other than a long-standing economic
process (i.e., determining categories of users based on past purchases in
order to optimize targeted advertising and subsequently delivering that
advertising to a user). Accordingly, the steps described in the claims are
“well-understood, routine, and conventional”. Further, the individual
elements described in the claims are also well-understood, routine, and
conventional. “An abstract idea does not move into section 101 eligibility
territory by ‘merely requir[ing] generic computer implementation’”
(buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1354 (Fed. Cir. 2014)
(citation omitted)).
Therefore, we conclude that the claims fail to recite additional
elements that amount to significantly more than the judicial exception.
Accordingly, the Examiner did not err in concluding the invention as recited
is directed to non-statutory subject matter. Therefore, the Examiner did not
err in rejecting claims 1, 2, 4–18, 20–25, 27, and 28 under 35 U.S.C. § 101
as not being directed to statutory subject matter.

35 U.S.C. § 103(a): Claims 1, 2, 4–18, 20–25, 27, and 28
Appellant contends their invention as recited in claims 1, 2, 4–18, 20–
25, 27, and 28, is not obvious over Sheldon, Reardon, and Minnis (Appeal
Br. 19). The issue presented by the arguments is whether the combination of
Sheldon, Reardon, and Minnis teaches or suggests
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determining a privacy selection associated with each of the
plurality of users, wherein the privacy selection indicates
whether the system may extract personal information from the
commercial emails
and
categorizing, using at least one processor, each of the plurality of
users in to one or more commercial behavior categories based on
the data identifying one or more parameters of the commercial
transaction included in the email bodies of the commercial
emails, wherein each commercial behavior category identifies a
commercial behavior of a respective user,
as recited in claim 1.

ANALYSIS
“determining a privacy selection associated with each of the plurality
of users, wherein the privacy selection indicates whether the system may
extract personal information from the commercial emails”

Appellant contends the Examiner erred in finding the combination of
Sheldon, Reardon, and Minnis teaches, suggests, or otherwise renders
obvious “determining a privacy selection associated with each of the
plurality of users, wherein the privacy selection indicates whether the system
may extract personal information from the commercial emails” as recited in
claim 1 (Appeal Br., claim 1 (emphasis added)).
Appellant argues “[w]hile Sheldon describes certain email privacy
settings based on the source of the emails, these privacy settings have no
control or relation to whether personal information may be extracted from
emails” (Appeal Br. 22). We find Appellant’s argument persuasive.
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The Examiner relies on column 21, lines 28–46 and (Final Act. 10)
and column 17, lines 25–29 (Ans. 8) of Sheldon to teach this feature. We
agree with Appellant that “Sheldon’s disclosed privacy selection deals with
the receiving and routing of emails” (Appeal Br. 22). In particular, we agree
with Appellant that “[t]he determination of a privacy selection for extracting
personal information from an email is a different technological feature from
determining a privacy selection for receiving and routing emails” (id.).
Thus, Sheldon does not disclose the claimed feature.
Accordingly, we are persuaded the Examiner has not shown the
combination of Sheldon, Reardon, and Minnis teaches, suggests, or
otherwise renders obvious the limitation as recited in claim 1 and claims 2,
4–18, 20–25, 27, and 28, not separately argued. Therefore, we reverse the
rejection of claims 1, 2, 4–18, 20–25, 27, and 28 under 35 U.S.C. § 103(a)
for obviousness over Sheldon, Reardon, and Minnis.
Because we agree with at least one of the arguments advanced by
Appellant, we need not reach the merits of Appellant’s other arguments. It
follows that Appellant has persuaded us the combined teachings of Sheldon,
Reardon, and Minnis fail to render claims 1, 2, 4–18, 20–25, 27, and 28
obvious.
CONCLUSION
Because we have affirmed at least one ground of rejection for each
claim on appeal, we affirm the Examiner's decision to reject the claims.
37 C.F.R. § 41.50(a)(1).
More specifically,
The rejection of claims 1, 2, 4–18, 20–25, 27, and 28 under 35 U.S.C.
§ 101 as not being directed to patent-eligible subject matter is affirmed.
Appeal 2018-007215
Application 12/861,241

20
The rejection of claims 1, 2, 4–18, 20–25, 27, and 28 under 35 U.S.C.
§ 103 as being unpatentable over Sheldon, Reardon, and Minnis is reversed.

DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 2, 4–18,
20–25, 27,
28
101 Eligibility 1, 2, 4–18,
20–25, 27,
28

1, 2, 4–18,
20–25, 27,
28
103 Sheldon, Reardon,
Minnis
1, 2, 4–18,
20–25, 27,
28
Overall
Outcome:
1, 2, 4–18,
20–25, 27,
28

TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a) (see 37 C.F.R.
§ 1.136(a)(1)(iv)).
AFFIRMED