Federal Circuit disposition — 17-2394

N OTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
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IN RE: MARK DWAYNE EBERRA,
Appellant
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2017-2394
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Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in No. 12/230,058.
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Decided: May 4, 2018
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MARK D WAYNE EBERRA , Kansas City, KS, pro se.
N ATHAN K. K ELLEY , Office of the Solicitor, United
States Patent and Trademark Office, Alexandria, VA, for
appellee Andrei Iancu. Also represented by K AKOLI
CAPRIHAN, M AI-T RANG D UC D ANG, T HOMAS W. K RAUSE.
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Before P ROST , Chief Judge, D YK and O’MALLEY , Cir-
cuit Judges.
P ER CURIAM .
This is an appeal from a rejection in initial examina-
tion of appellant Mark Eberra’s patent application titled
“Business Method for Opening and Operating a National

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IN RE: EBERRA 2
Television Network” with serial number 12/230,058 (“the
’058 application”). The Examiner rejected all claims of the
’058 application as patent-ineligible under 35 U.S.C. § 101
and as anticipated by U.S. Patent Application Publication
No. 2005/0015267 A1 (“Barringer”) under 35 U.S.C. § 102.
The Patent Trial and Appeal Board (“Board”) initially
affirmed the Examiner’s anticipation rejection without
reaching the § 101 issue. Then, on rehearing, the Board
affirmed the Examiner’s rejection under both § 101 and
§ 102. Mr. Eberra appeals. We have jurisdiction pursuant
to 28 U.S.C. § 1295(a)(4)(A).
I
Section 101 provides that a patent may be obtained
for “any new and useful process, machine, manufacture,
or composition of matter, or any new and useful improve-
ment thereof.” 35 U.S.C. § 101. The Supreme Court has
held, however, that “[l]aws of nature, natural phenomena,
and abstract ideas” are implicit exceptions to the lan-
guage of § 101 and are not patentable subject matter.
Alice Corp. v. CLS Bank Int’l, 134 S. Ct. 2347, 2354 (2014)
(quoting Ass’n for Molecular Pathology v. Myriad Genet-
ics, Inc., 569 U.S. 576, 589 (2013)); accord Mayo Collabo-
rative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 70–77
(2012).
To determine whether a claim is patentable under
§ 101, the Supreme Court has instructed us to use a two-
step framework.1 Alice, 134 S. Ct. at 2355. First, a court
1 Much of Mr. Eberra’s argument is devoted to the
idea that the Mayo/Alice framework should only be ap-
plied if a court first determines that a claim is not “legally
integrated.” Appellant Br. 15; see also id. at 10–17; Appel-
lant Reply Br. 5–10. He argues that the Board erred by
failing to perform this initial “[i]ntegration [a]nalysis,”
which involves “determining if a new and useful claim

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IN RE: EBERRA 3
must determine whether the claim is directed to a patent-
ineligible concept, i.e., a law of nature, a natural phenom-
enon, or an abstract idea. Id. If so, the court must proceed
to step two and ask whether the elements of the claim,
considered “both individually and ‘as an ordered combina-
tion,’” add enough to “‘transform the nature of the claim’
into a patent-eligible application.” Id. (quoting Mayo, 566
U.S. at 78–79).
The ’058 application describes a business method for
providing a television network “that requires the masses
of the general public to purchase products in exchange for
being allowed to perform in television programs shown on
the network.” J.A. 29. Claim 1, which the Board treated
as exemplary, reads:
1. A process for providing a television network
comprising:
(a) opening at least one physical location for a
production of a television program;
(b) requiring at least one customer to make a
purchase of a product;
(c) allowing said customer to give a perfor-
mance in said production of said television
recites a Supreme Court created Judicial exception,
implicit from the statute, that is a law of nature, natural
phenomenon, or abstract idea in the form of a fundamen-
tal economic practice, or if any of the exceptions are
mathematically calculated, statistically analyzed or
otherwise practiced on a computer.” Appellant Br. 14. On
this point, Mr. Eberra is mistaken. As described above,
the Mayo/Alice framework is the appropriate test to
identify patent-eligible subject matter. Moreover, the
Board did begin its analysis by determining that the
claims are directed to an abstract idea.

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IN RE: EBERRA 4
program, in exchange for making said pur-
chase of said product;
whereby said purchase made by said customer re-
sults in said production of said television program
for said performance of said customer on said tel-
evision network.
Id. at 53. Appellant also treats claim 1 as exemplary.
Starting at step one of the Mayo/Alice test, we agree
with the Board’s conclusion that the claims at issue are
directed to an abstract idea, namely “promoting the
purchase of a product with the incentive being a spot in a
television program, i.e. product promotion.” J.A. 14. Like
the concept of risk hedging, which the Supreme Court
found to be an abstract idea in Bilski v. Kappos, the
concept of product promotion is a “fundamental economic
practice long prevalent in our system of commerce.” 561
U.S. 593, 609, 611 (2010) (quoting In re Bilski, 545 F.3d
943, 1013 (Fed. Cir. 2008) (Rader, J., dissenting), aff’d,
id.).
Appellant argues that the claims are not directed to
the abstract idea of product promotion and are instead
directed to what the specification describes as a “new
Customercast model of television” in which “the basic
principle is to attract large numbers of people to perform
on television, and require a purchase for the experience.”
J.A. 30. But the abstract nature of the claims is not
altered at step one by the existence of claim limitations
(much less characterizations in the specification) that
“add a degree of particularity” to the implementation of
the abstract idea. Ultramercial, Inc. v. Hulu, LLC, 772
F.3d 709, 715 (Fed. Cir. 2014). In Ultramercial, for in-
stance, we found that the claims were directed to the
abstract idea of “using advertising as an exchange or
currency”, despite the presence of narrowing limitations
like “consulting an activity log.” Id. Here, claim 1, consid-

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IN RE: EBERRA 5
ered as an ordered combination, simply describes a form
of product promotion in which the incentive for purchas-
ing a product is the opportunity to perform in a television
program. This is more specific than the concept of product
promotion writ large, but it is no less abstract.
II
Turning to step two, we ask whether the claim limita-
tions, considered individually or as an ordered combina-
tion, add an “inventive concept” that transforms the
abstract idea of product promotion into a patent-eligible
invention that is significantly more than the abstract idea
itself. Alice, 134 S.Ct. at 2355 (quoting Mayo, 566 U.S. at
72). Each specific step in the claims—opening a location
(which requires nothing more than finding a location),
requiring a purchase, and allowing a performance in a
television program—is a routine television-production or
advertising activity performed in a conventional way, as
described in the specification. Thus, there is no inventive
concept, and the claims in the ’058 application are not
patentable subject matter under § 101.
Because we affirm the Board’s determination that the
claims are patent-ineligible under § 101, we need not
address the Board’s decision with respect to anticipation.
AFFIRMED
COSTS
No costs.

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