Federal Circuit disposition — 24-1015

N OTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
IN RE: JAROM MCDONALD, THERON BRENT
HARMON, JEFFREY HARMON, NEAL HARMON,
VIDANGEL, INC., ANGEL STUDIOS, INC.,
Appellants
______________________
2024-1015
______________________
Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in No. 15/454,677.
______________________
Decided: September 10, 2024
______________________
J OSEPH MORRIS S HAPIRO, Shapiro IP Law, Draper, UT,
for appellants.
ROBERT MCB RIDE, Office of the Solicitor, United States
Patent and Trademark Office, Alexandria, VA, for appellee
Katherine K. Vidal. Also represented by K AKOLI
CAPRIHAN, AMY J. N ELSON, F ARHEENA YASMEEN RASHEED.
______________________
Before P ROST , T ARANTO, and HUGHES , Circuit Judges.
P ER CURIAM .
The appellants are the four individuals named as in-
ventors in U.S. Patent Application No. 15/454,677 (’677
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IN RE: MCDONALD 2
application) and two corporations that assert that they are
parties in interest defending the application. The applica-
tion, titled “Tipping for Media Content,” is for a patent on
a “method and system for eliciting and receiving tips from
a consumer based on the consumer’s consumption of media
content.” The patent examiner within the Patent and
Trademark Office (PTO) rejected each of the application’s
claims 21–32—the claims now at issue—for ineligibility
under 35 U.S.C. § 101 and obviousness under 35 U.S.C.
§ 103, and the PTO’s Patent Trial and Appeal Board af-
firmed the rejection on both grounds. We affirm the
Board’s decision on both grounds, each independently suf-
ficient to support rejection of the claims.
I
The ’677 application, as filed on March 9, 2017, con-
tained 20 claims. The examiner rejected all those claims
on April 17, 2019, and in response, appellants amended the
’677 application by canceling claims 1–20 and adding
claims 21–32, which the examiner rejected on July 9,
2020.1 After appellants responded with arguments and
amendments to claims 21, 24, and 29 on August 20, 2020,
the examiner again rejected claims 21–32, on March 3,
2021. Claim 21, in the amended form, reads:
21. A computer-implemented method, comprising:
providing media content to a consumer com-
puter device;
presenting a tipping interface, related to the
media content, to the consumer computer device;
and
receiving tipping input from the consumer com-
puter device, through the tipping interface,
1 For simplicity, we use “appellants” to refer to the
filers and defenders of the application, without regard to
when the corporate entities entered the proceeding.
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IN RE: MCDONALD 3
wherein the tipping input includes information
associated with a tip;
wherein:
the tipping interface is a computer-based
interface; and
the media content includes closing
credits and the tipping interface is presented at the
beginning of or during the closing credits; or
the tipping interface is presented at
one or more trigger points during the media con-
tent.
The examiner rejected all the pending claims under 35
U.S.C. § 101, as directed to an abstract idea without adding
significantly more. The examiner also rejected all the
claims (analyzed in several subgroups) under 35 U.S.C.
§ 103, for obviousness in light of the teachings of various
combinations of six pieces of prior art: Lim, U.S. Patent
Publication No. 2018/0374121 A1 (a tipping interface on a
consumer computer); Van Vleck, U.S. Patent Publication
No. 2009/0158369 A1 (a method of displaying interactive
displays while receiving a media content stream); Twist,
U.S. Patent Publication No. 2018/0158114 A1 (an online
charitable donation system that maximizes donations); Ig-
nacio, U.S. Patent Publication No. 2014/0337099 A1 (a sys-
tem for customers in hospitality environments to provide
workers with information about their service requests and
associated tipping); Mowry, U.S. Patent Publication No.
2017/0109699 A1 (an incentive-based exchange for project
contributions); and Carlson, U.S. Patent Publication No.
2010/0325048 A1 (a system for estimating or suggesting a
tip based on consumer preferences).
When appellants appealed to the Board, they desig-
nated claim 21 as representative for purposes of patent el-
igibility and argued eligibility on the ground that what was
claimed was a computer-implemented method of integrat-
ing media content and a tipping interface that “improves
presentation of media content” and “facilitates tipping.”
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IN RE: MCDONALD 4
Appx 316. Regarding obviousness, appellants discussed
five claims separately, arguing (as relevant here) the fol-
lowing. For claim 21, they argued the absence of an ade-
quate finding of a motivation to combine Lim’s disclosure
of a tipping interface with Van Vleck’s disclosure of inter-
active displays at specific points within media content. For
claim 24, they argued that no combination of Lim, Twist,
and Ignacio discloses all the claim’s limitations, including
“elicitation content,” an “upsell interface,” and financing an
enumerated future purpose. Appx 319–21. For claim 26,
they argued that “the combination of Lim, Twist, and Igna-
cio does not disclose elicitation content comprising ‘a mes-
sage from an actor, producer, director, or developer of the
media content.’” Appx 321. For claim 28, they argued that
the combination of Lim, Twist, Ignacio, and Mowry does
not disclose a tipping interface that indicates that tips are
used for at least one of the enumerated purposes. For claim
29, they argued that the examiner did not provide a suffi-
cient rationale for combining Lim’s tipping interface disclo-
sure with Carlson’s media content interface disclosure.
The Board affirmed the examiner’s decisions on ineli-
gibility and obviousness. Regarding ineligibility, the Board
reasoned that (representative) claim 21 is directed to the
abstract idea of organizing the human activity of tipping
rather than a non-abstract technological implementation,
application, or improvement of the idea, as the claim re-
cites only conceptual steps that can be achieved by generic
computer functions. The Board added that claim 21 does
not provide an inventive concept, as the use of a computer
at each step and the ordered combination of the steps are
conventional.
Regarding obviousness, the Board first addressed
claims 21–23, determining that the examiner provided a
sufficient rationale for combining Lim and Van Vleck, a ra-
tionale concerning customer benefits set forth in Van Vleck
itself. For claims 24–27, the Board reasoned that Twist
implicitly discloses elicitation content by describing
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IN RE: MCDONALD 5
content to solicit contributions and that Ignacio, by provid-
ing rewards to customers who tip their hospitality service
workers well, discloses a practice within the scope of an
upsell interface. For claim 26, the Board determined that
the ’677 application’s disclosure of an actor, producer, di-
rector, or developer recites only that “the message is from
one of these parties, not how a party actually participates,”
and is thus made obvious by Twist. Appx 22. For claim 28,
the Board determined that Lim, Twist, Ignacio, and Mowry
in combination describe the limitations of the claim and
that the examiner set forth a sufficient motivation to com-
bine the references. For claims 29–32, the Board deter-
mined that the examiner provided a sufficient reason to
combine Lim and Carlson.
Appellants timely appeal. We have jurisdiction under
28 U.S.C. § 1295(a)(4)(A).
II
We review the Board’s legal conclusions without defer-
ence and its factual findings for substantial evidence. In re
Jolley, 308 F.3d 1317, 1320 (Fed. Cir. 2002); In re Lister,
583 F.3d 1307, 1311 (Fed. Cir. 2009). Substantial evidence
“means such relevant evidence as a reasonable mind might
accept as adequate to support a conclusion.” Consolidated
Edison Co. v. NLRB, 305 U.S. 197, 229 (1938).
Patent eligibility is a question of law that may contain
underlying issues of fact. Interval Licensing LLC v. AOL,
Inc., 896 F.3d 1335, 1342 (Fed. Cir. 2018) (citing Berk-
heimer v. HP Inc., 881 F.3d 1360, 1365 (Fed. Cir. 2018)).
Obviousness is a question of law that is based on underly-
ing factual findings. In re Gartside, 203 F.3d 1305, 1316
(Fed. Cir. 2000). This case involves a conclusion of obvi-
ousness based on determinations that a combination of
prior-art references teaches the claimed limitations and
that a relevant artisan would have had a motivation to
make the combination with a reasonable expectation of
success. See, e.g., KSR International Co. v. Teleflex Inc.,
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IN RE: MCDONALD 6
550 U.S. 398, 418 (2007); Elekta Ltd. v. ZAP Surgical Sys-
tems, Inc., 81 F.4th 1368, 1374 (Fed. Cir. 2023); Regents of
the University of California v. Broad Institute, Inc., 903
F.3d 1286, 1291 (Fed. Cir. 2018). What a prior-art refer-
ence discloses and whether a relevant artisan would have
been motivated to combine or modify references or reason-
ably expected success are questions of fact. See Corepho-
tonics, Ltd. v. Apple Inc., 84 F.4th 990, 1003 (Fed. Cir.
2023); Regents, 903 F.3d at 1291.
A
Applying the familiar two-step framework for analysis
of eligibility under Alice Corp. v. CLS Bank International,
573 U.S. 208, 217, 221 (2014), we first conclude that (rep-
resentative) claim 21 is directed to an abstract idea, which
is one of the categories of ineligible subject matter. “[W]e
evaluate 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.” PersonalWeb Technologies
LLC v. Google LLC, 8 F.4th 1310, 1315 (Fed. Cir. 2021)
(cleaned up) (quoting and citing cases). As part of this in-
quiry in a case like this, we ask “whether the claims focus
on the specific asserted improvement in computer capabil-
ities or, instead, on a process that qualifies as an abstract
idea for which computers are invoked merely as a tool.”
Trinity Info Media, LLC v. Covalent, Inc., 72 F.4th 1355,
1362–63 (Fed. Cir. 2023) (cleaned up); see In re Killian, 45
F.4th 1373, 1382 (Fed. Cir. 2022).
Claim 21 is directed to the managing of a process for
making commercial tipping payments—here, for customer-
approved media. This readily comes within the numerous
precedents recognizing methods of “organizing human ac-
tivity” such as “fundamental economic practice[s]” as ab-
stract ideas. Alice, 573 U.S. at 220; see, e.g., Bozeman
Financial LLC v. Federal Reserve Bank of Atlanta, 955
F.3d 971, 978 (Fed. Cir. 2020); Smart Systems Innovations,
LLC v. Chicago Transit Authority, 873 F.3d 1364, 1372
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IN RE: MCDONALD 7
(Fed. Cir. 2017); Credit Acceptance Corp. v. Westlake
Servs., 859 F.3d 1044, 1054–55 (Fed. Cir. 2017); buySAFE,
Inc. v. Google, Inc., 765 F.3d 1350, 1353–55 (Fed. Cir.
2014). Managing commercial tipping transactions consti-
tutes a method of organizing a fundamental economic hu-
man activity. And the focus of the claim is clearly on that
activity, using “generic computer implementation[s]” (in-
cluding networks) as a tool, rather than any improvement
in computer capabilities, e.g., for receiving, storing, retriev-
ing, analyzing, generating, transmitting, or presenting in-
formation. Alice, 573 U.S. at 223; see Inventor Holdings,
LLC v. Bed Bath & Beyond, Inc., 876 F.3d 1372, 1378 (Fed.
Cir. 2017); Electric Power Group, LLC v. Alstom S.A., 830
F.3d 1350, 1353 (Fed. Cir. 2016); buySAFE, 765 F.3d at
1354.
Claim 21 does not qualify as eligible under the second
step of Alice, which asks if specifics of the claim sufficiently
transform the claim into a claim beyond the ineligible sub-
ject matter. Here, nothing in the claim, considered alone
or in light of the specification, goes beyond performing a
method of organizing human economic activity with the aid
of a conventional computer—which is not enough for eligi-
bility. See, e.g., Alice, 573 U.S. at 223–26; Weisner v. Google
LLC, 51 F.4th 1073, 1083–84 (Fed. Cir. 2022); Inventor
Holdings, 876 F.3d at 1378; Two-Way Media Ltd. v. Com-
cast Cable Communications, LLC, 874 F.3d 1329, 1339
(Fed. Cir. 2017); Credit Acceptance, 859 F.3d at 1055. The
individual elements of the claim are providing media con-
tent, presenting a content-related interface for customer
tipping, and receiving the customer tipping input at a par-
ticular point in the presentation of the media content or its
credits. Alone or together, these functions call on nothing
but generic computer components performing their conven-
tional functions, without identification of improved ways of
carrying out the familiar computer capabilities. See Appx
16–17. The specification confirms that determination by
what it says and what is absent from it. See Appx 44–60.
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IN RE: MCDONALD 8
For those reasons, claim 21 is ineligible. Because both
parties agree that claim 21 is representative of the pending
claims for eligibility purposes, all pending claims are inva-
lid for ineligibility under § 101.
B
Our conclusion about § 101 suffices to affirm the
Board’s decision. But for completeness, we also discuss the
Board’s obviousness determinations challenged by appel-
lants here. We affirm those determinations as well.
Appellants assert deficiencies in the Board’s analysis
of claims 21, 24, 26, 28, and 29. They make no separate
argument about the other claims, which depend on one or
more of the five discussed claims. Appellants’ Brief at 21
(stating that dependent claims 22–23, 25–28, and 30–32
“are nonobvious at least because the independent claims
upon which these claims depend are nonobvious”). We con-
clude that appellants have not identified reversible error in
the Board’s obviousness ruling.
1
The Board relied on Lim and Van Vleck in concluding
that the method of claim 21 would have been obvious to the
relevant artisan. Appx 19–20. Appellants acknowledge
that Lim discloses a tipping interface and Van Vleck dis-
closes timing an interface’s presentation between pieces of
media content. But they argue the Board erred in several
respects. We reject those arguments.
Appellants argue that the Board did not find a ra-
tionale for combining Lim and Van Vleck. We disagree.
The Board relied on the examiner’s stated rationale for
combining the two references. Appx 20. The examiner
found that a relevant artisan had reason
to provide for a display of the tipping interface dur-
ing the media content because it provides for an im-
proved system and method for displaying media
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IN RE: MCDONALD 9
content and an interactive display such that it does
not interrupt the media content being delivered to
the user, prevent the subscriber from viewing an
entire media content segment, and does not pre-
vent the subscriber from viewing subsequent me-
dia content.
Appx 338 (citing Van Vleck at Abstract, ¶¶ 2–14). That
finding, resting on Van Vleck itself, is supported by sub-
stantial evidence.
Appellants also argue that Lim discloses a tipping in-
terface only for static content, which would not require tim-
ing parameters. This argument is forfeited because
appellants failed to present it to the Board and have offered
no adequate basis to excuse that failure. See In re Google
Technology Holdings LLC, 980 F.3d 858, 863 (Fed. Cir.
2020) (“[A] position not presented in the tribunal under re-
view will not be considered on appeal in the absence of ex-
ceptional circumstances.”); see also In re Couvaras, 70
F.4th 1374, 1379 (Fed. Cir. 2023) (same). On the merits,
too, the argument fails. Lim, though referring to a scien-
tific journal as an example of media content that may use
a tipping interface, Appx 430, ¶ 62, does not limit itself to
static content, see Appx 433, ¶ 99 (listing “streaming video”
and “live streaming video” as examples of media formats
for advertisements); Appx 435, ¶ 132 (discussing video as a
medium to elicit responses from users).
Finally, appellants argue that combining Lim and Van
Vleck would not have reasonably been expected to succeed
and was contrary to a conventional view that a “consumer
must pay for media content up front.” Appellants’ Brief at
12, 13. The Board could readily find that there was nothing
unpredictable about succeeding in presenting a tipping in-
terface during closing credits, Appx 20, which, as the ex-
aminer found, was taught by Van Vleck, Appx 258. And
nothing presented by appellants rises to the level of a
teaching away of post-consumption tipping in this context.
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IN RE: MCDONALD 10
2
Claim 24’s method is similar to that of claim 21 but also
requires that the tipping interface include “elicitation con-
tent,” an “upsell interface,” or an indication that a tip will
be used for financing a sequel to, or improving streaming,
filtering, distribution, or affordability of, the media con-
tent. Appx 32, 324–25. The Board held claim 24 invalid
for obviousness in light of Lim, Twist, and Ignacio. Appx
20–22. We reject appellants’ challenges to that ruling.
First, appellants argue that the Board erred in finding
that Twist discloses a tipping interface that includes elici-
tation content. They recognize that Twist discloses a solic-
itation or request to donate but contend that “elicitation
content” is “more than a mere request to tip.” Appellants’
Brief at 15. They argue that the Board improperly con-
strued “elicitation content” under the broadest-reasonable-
interpretation standard and thereby reached a construc-
tion contrary to the ’677 application’s specification and the
drafter’s clear intentions to limit or modify terms.
It is well established that the PTO, during patent ex-
amination, must give claims their broadest reasonable in-
terpretation consistent with the specification unless the
patentee has demonstrated a clear intention to limit the
claim scope. See, e.g., Phillips v. AWH Corp., 415 F.3d
1303, 1316 (Fed. Cir. 2005) (en banc); Prima Tek II, L.L.C.
v. Polypap, S.A.R.L., 412 F.3d 1284, 1289 (Fed. Cir. 2005);
Liebel-Flarsheim Co. v. Medrad, Inc., 358 F.3d 898, 906
(Fed. Cir. 2004). We see no error in the Board’s plain-
meaning understanding of “elicitation,” which determines
the meaning of “elicitation content,” as “the process of get-
ting information from someone.” Appx 21. The ’677 appli-
cation does not provide a definition at all, let alone one
contrary to the Board’s understanding, or otherwise signal
an intent to depart from that understanding. See Appx 43,
48–50. The specification provides examples of elicitation
content—namely, audio, visual, or other communications
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IN RE: MCDONALD 11
designed to provide information on tipping and encourage
customers to tip. Id. The broadest reasonable interpreta-
tion consistent with the specification is content that com-
municates to a customer the provider’s interest in being
paid by the customer, as the Board concluded. The Board
readily found Twist to teach such content, Appx 21, and
appellants do not show, or even argue, that the Board was
incorrect about Twist under the Board’s interpretation.
See Appx 484, ¶ 83.
Appellants also argue that the examiner and the Board
did not articulate a sufficient reason for combining Lim and
Twist. We disagree. The examiner’s rationale for combin-
ing the references was to provide “an integrated online do-
nation or tipping option that enables charitable
organizations to maximize donations by enabling access to
a greater number of potential donors and intelligently sug-
gesting donation quantities or amounts and by enabling us-
ers to both contribute to a charitable organization and
communicate with others in the process.” Appx 339 (citing
Twist, Appx 463, at Abstract, ¶¶ 2–7). The Board agreed.
Appx 21–22. And appellants have identified no basis for
doubting the existence of a reasonable expectation of suc-
cess in presenting elicitation content.
Given the disjunctive “or” language of claim 24, the
foregoing suffices to uphold the Board’s obviousness ruling
on that claim, regardless of whether the Board was correct
in finding obviousness of the “upsell interface” limitation
in the Lim, Twist, and Ignacio. Appx 22. But we also see
no error in that conclusion on its own. Appellants assert
the absence of an adequate articulated motivation to com-
bine Lim and Twist’s disclosures with Ignacio’s disclosure
of rewarding customers for providing higher tips for hospi-
tality service, but we see no such deficiency. The examiner
found a motivation to combine in the objective of maximiz-
ing the gratuity received, Appx 340, an adequate finding
that the Board adopted, Appx 22.
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IN RE: MCDONALD 12
Appellants also assert that the examiner and the Board
failed to articulate how Ignacio’s teachings are analogous
to teachings about tipping for media content. This argu-
ment is forfeited for failure to present it to the Board. See
In re Google, 980 F.3d at 863. And the argument fails on
the merits as well. A reference is analogous art if (1) it is
from the same field of endeavor as the claimed invention or
(2) it is reasonably pertinent to the problem being ad-
dressed by the inventor. See Airbus S.A.S. v. Firepass
Corp., 941 F.3d 1374, 1379 (Fed. Cir. 2019). Here, Ignacio
is in the same field of endeavor (facilitating tipping
through an interface), and it also is reasonably pertinent to
the claimed invention’s underlying problem (facilitating
tipping when the service provider is not physically pre-
sent). Appx 41; Appx 430, ¶ 62.
3
Claim 26, which depends on claim 24, adds that “the
elicitation content comprises a message from an actor, pro-
ducer, director, or developer of the media content.” Appx
325. The Board invalidated this claim based on the combi-
nation of Lim, Twist, and Ignacio, focusing on the teaching
of Twist of a social-media post having a message, a video,
and a banner with an option for donating. Appx 22. We
see no reversible error.
Appellants argue that, although “Twist discloses that a
social media post may comprise a message portion, a video,
and a banner with a ‘donate’ option,” it does not disclose a
message from the claimed actor, producer, director, or de-
veloper of the media content. Appellants’ Brief at 19. They
further argue that the examiner did not articulate an ade-
quate rationale for combining these prior-art references.
Id. We disagree. Substantial evidence supports the
Board’s finding that Twist’s disclosure of elicitation content
includes messages from at least one of the claimed persons
in or behind the media content: Twist teaches that the mes-
sage and media content may come from the same creators.
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IN RE: MCDONALD 13
Appx 484, ¶ 83. And for the same reasons as those recited
in discussing claim 24, the examiner and the Board pro-
vided an adequate rationale to combine the references.
4
Claim 28, which depends on claim 24, narrows claim 24
to require that the tipping interface include an indication
that a tip will be used for financing a sequel to, or improv-
ing streaming, filtering, distribution, or affordability of, the
media content. Appx 325. The Board held claim 28 invalid
for obviousness in light of the combination of Lim, Twist,
Ignacio, and Mowry—specifically, for the disputed aspect,
the combination of Lim and Mowry. Appx 23. We see no
reversible error.
The Board found that Mowry “is evidence that one use
of solicitations was the recited financing a sequel.” Appx
23. Appellants, who acknowledge that Mowry disclosed
“incentivizing individuals to support a future project,” Ap-
pellants’ Brief at 20, have not shown a lack of substantial
evidence for the Board’s finding. The combination with
Lim, the Board found, provided for the use of a tipping in-
terface for the purpose. Appx 23. And the Board relied on
the examiner’s rationale for combining these references: to
provide “a system and method for incentive-based ex-
change, such as improvements and financing, for project
contribution.” Appx 341–42 (citing Mowry, Abstract, ¶¶ 3–
7); see Appx 23 (relying on that examiner finding). The
finding has substantial-evidence support.
5
Finally, claim 29 is similar to claim 21 but requires the
tipping interface to provide tipping estimate information
based in part on the tipping data of other consumers. Appx
325–26. The Board held claim 29 invalid for obviousness
in light of the combination of Lim and Carlson. Appx 23.
Appellants, without disputing that Carlson discloses use of
tipping data for another consumer, suggest that the
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IN RE: MCDONALD 14
examiner did not provide a justification for combining Carl-
son with Lim. But the examiner, citing Carlson, identified
the rationale for the combination—“to provide a system
that provides an alert that may include a suggested
amount for a tip and provides the consumer with infor-
mation that may be used to determine an amount for the
tip.” Appx 272. The Board relied on that rationale. Appx
23. The Board’s holding is supported by substantial evi-
dence.
III
For the foregoing reasons, we affirm the Board’s deci-
sion on both patent ineligibility and obviousness.
The parties shall bear their own costs.
AFFIRMED
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