ADOBE INC.

Patent Trials and Appeals Board

Jul 20, 2021

2020005620 (P.T.A.B. Jul. 20, 2021)

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.
15/348,865 11/10/2016 Kourosh MODARRESI P6476-US (8828-81T) 7178
159994 7590 07/20/2021
F. CHAU & ASSOCIATES, LLC (ADOBE)
130 Woodbury Road
Woodbury, NY 11797
EXAMINER
BRADY, MARIE P.
ART UNIT PAPER NUMBER
3621
NOTIFICATION DATE DELIVERY MODE
07/20/2021 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):
garramone@chauiplaw.com
mail@chauiplaw.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte KOUROSH MODARRESI and KHASHAYAR KHOSRAVI

Appeal 2020-005620
Application 15/348,865
Technology Center 3600
____________

Before HUBERT C. LORIN, MICHAEL C. ASTORINO, and
ROBERT J. SILVERMAN, Administrative Patent Judges.

SILVERMAN, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), the Appellant1 appeals from the
Examiner’s decision rejecting claims 1, 2, 6–13, 17, and 21–23. 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. The Appellant identifies the real party in interest as Adobe
Inc. Appeal Br. 1.
Appeal 2020-005620
Application 15/348,865

2
ILLUSTRATIVE CLAIM
1. A method, performed by a computing device, for
allocating test offers to determine a best offer in a set of offers
with a desired confidence level, the method comprising:
embedding, by the computing device, tracking codes in
content containing initial test offers;
communicating, by the computing device, the content
containing the initial test offers and the tracking codes to an
initial set of customers over a network;
tracking, by an analytics engine of the computing device,
outcome information regarding the initial test offers provided to
the initial set of customers of a campaign using the tracking
codes, the initial test offers testing offers in the set of offers;
iteratively performing, by an offer engine of the
computing device, the following operations until the best offer
is determined with the desired confidence level:
determining an allocation of additional test offers
based on the outcome information, wherein determining
the allocation comprises allocating the additional test
offers unevenly amongst the offers in the set of offers to
attain the desired confidence level that one of the offers
is the best offer for the campaign, wherein allocating the
additional test offers includes
solving an optimization to allocate the
additional test offers, the optimization minimizing
a total number of test offers allocated while
allocating the additional test offers to eliminate
overlap between a lower bounds of a first
confidence interval for a first place offer and an
maximum upper bounds of a second confidence
interval of any other offer by using an exploration
weight that decreases with each iteration to reduce
a number of test offers allocated to other offers,
wherein the first confidence interval
identifies that outcomes of the first place offer
provided to all customers in the campaign will be
Appeal 2020-005620
Application 15/348,865

3
within the first confidence interval with the desired
confidence level, and the second confidence
interval identifies that outcomes of another offer
provided to all customers in the campaign will be
within the second confidence interval with the
desired confidence level,
embedding, by the computing device, additional
tracking codes in additional content containing additional
test offers,
communicating, by the computing device, the
additional content containing the additional test offers
and the additional tracking codes to an additional set of
customers over the network,
tracking, by an analytics engine of the computing
device, additional outcome information for the additional
test offers and including the additional outcome
information in the outcome information, and
assessing whether the best offer has been
determined with the desired confidence level; and
determining the best offer with the desired
confidence level based on the outcome information.
REJECTION2
Claims 1, 2, 6–13, 17, and 21–23 are rejected under 35 U.S.C. § 101
as ineligible subject matter.
FINDINGS OF FACT
The findings of fact relied upon, which are supported by a
preponderance of the evidence, appear in the following Analysis.

2 The Final Office Action rejected claims 17 and 21–33 under 35 U.S.C.
§ 112(b) and rejected claims 1, 2, 6–13, 17, and 21–23 under 35 U.S.C.
§ 103. See Final Act. 4, 9–37. These rejections are withdrawn. See
Answer 4.
Appeal 2020-005620
Application 15/348,865

4
ANALYSIS
Under 35 U.S.C. § 101, an invention is patent-eligible if it claims a
“new and useful process, machine, manufacture, or composition of matter.”
35 U.S.C. § 101. Yet, subject matter belonging to any of the statutory
categories may, nevertheless, be ineligible for patenting. The Supreme
Court has interpreted 35 U.S.C. § 101 to exclude laws of nature, natural
phenomena, and abstract ideas, because they are regarded as the basic tools
of scientific and technological work, such that including them within the
domain of patent protection would risk inhibiting future innovation premised
upon them. Ass’n for Molecular Pathology v. Myriad Genetics, Inc.,
569 U.S. 576, 589 (2013).
Of course, “[a]t some level, ‘all inventions . . . embody, use, reflect,
rest upon, or apply’” these basic tools of scientific and technological work.
Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 217 (2014). Accordingly,
evaluating ineligible subject matter, under these judicial exclusions, involves
a two-step framework for “distinguish[ing] between patents that claim the
buildin[g] block[s] of human ingenuity and those that integrate the building
blocks into something more, thereby transform[ing] them into a patent-
eligible invention.” Id. (alterations in original) (citing Mayo Collaborative
Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 88–89 (2012) (internal
citation and quotation marks omitted)). The first step determines whether
the claim is directed to judicially excluded subject matter (such as a so-
called “abstract idea”); the second step determines whether there are any
“additional elements” recited in the claim that (either individually or as an
“ordered combination”) amount to “significantly more” than the identified
judicially excepted subject matter itself. Id. at 217–18.
Appeal 2020-005620
Application 15/348,865

5
In 2019, the USPTO published revised guidance on the application of
§ 101, in accordance with judicial precedent. See 2019 Revised Patent
Subject Matter Eligibility Guidance, 84 Fed. Reg. 50, 52 (Jan. 7, 2019)
(“2019 Revised Guidance”).3 Under the 2019 Revised Guidance, a claim is
“directed to” an abstract idea, only if the claim recites any of (1)
mathematical concepts, (2) certain methods of organizing human activity,
and (3) mental processes — without integrating such abstract idea into a
“practical application,” i.e., without “apply[ing], rely[ing] on, or us[ing] the
judicial exception in a manner that imposes a meaningful limit on the
judicial exception, such that the claim is more than a drafting effort designed
to monopolize the judicial exception.” Id. at 52–55. The considerations
articulated in MPEP § 2106.05(a)–(c) and (e)–(h) bear upon whether a claim
element (or combination of elements) integrates an abstract idea into a
practical application. Id. at 55 (referring to MPEP 9th ed. Rev. 08.2017, rev.
Jan. 2018). A claim that is “directed to” an abstract idea constitutes
ineligible subject matter, unless the claim recites an additional element (or
combination of elements) amounting to significantly more than the abstract
idea. Id. at 56.
Although created “[i]n accordance with judicial precedent,” the 2019
Revised Guidance enumerates the analytical steps differently than the
Supreme Court’s Alice opinion. 2019 Revised Guidance, 84 Fed. Reg. at 52.

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). The Manual of Patent Examining
Procedure (“MPEP”) incorporates the revised guidance and subsequent
updates at § 2106 (9th ed. Rev. 10.2019, rev. June 2020).
Appeal 2020-005620
Application 15/348,865

6
Step 1 of the 2019 Revised Guidance addresses whether the claimed subject
matter falls within any of the statutory categories of 35 U.S.C. § 101. Id.
at 53–54. Step 2A, Prong One, concerns whether the claim at issue recites
ineligible subject matter; if an abstract idea is recited, Step 2A, Prong Two,
addresses whether the recited abstract idea is integrated into a practical
application. Id. at 54–55. Unless such integration exists, the analysis
proceeds to Step 2B, in order to determine whether any additional element
(or combination of elements) amounts to significantly more than the
identified abstract idea, which would render a claim patent-eligible, even
though it is directed to judicially excepted subject matter. Id. at 56.
The Appellant argues all claims in the Appeal together, as a group,
referring to independent claim 1 as exemplary. See Appeal Br. 10–18. We
select claim 1 for analysis herein, pursuant to 37 C.F.R. § 41.37(c)(1)(iv).
With regard to Step 1, the Examiner does not determine that any claim
is drawn to subject matter outside of the categories identified in § 101.
Turning to Step 2A, the Examiner’s analysis considers the limitations
of claim 1 italicized below:
1. A method, performed by a computing device, for
allocating test offers to determine a best offer in a set of offers
with a desired confidence level, the method comprising:
embedding, by the computing device, tracking codes in
content containing initial test offers;
communicating, by the computing device, the content
containing the initial test offers and the tracking codes to an
initial set of customers over a network;
tracking, by an analytics engine of the computing device,
outcome information regarding the initial test offers provided
to the initial set of customers of a campaign using the tracking
codes, the initial test offers testing offers in the set of offers;
Appeal 2020-005620
Application 15/348,865

7
iteratively performing, by an offer engine of the
computing device, the following operations until the best offer
is determined with the desired confidence level:
determining an allocation of additional test offers
based on the outcome information, wherein determining
the allocation comprises allocating the additional test
offers unevenly amongst the offers in the set of offers to
attain the desired confidence level that one of the offers
is the best offer for the campaign, wherein allocating the
additional test offers includes
solving an optimization to allocate the
additional test offers, the optimization minimizing
a total number of test offers allocated while
allocating the additional test offers to eliminate
overlap between a lower bounds of a first
confidence interval for a first place offer and an
maximum upper bounds of a second confidence
interval of any other offer by using an exploration
weight that decreases with each iteration to reduce
a number of test offers allocated to other offers,
wherein the first confidence interval
identifies that outcomes of the first place offer
provided to all customers in the campaign will be
within the first confidence interval with the desired
confidence level, and the second confidence
interval identifies that outcomes of another offer
provided to all customers in the campaign will be
within the second confidence interval with the
desired confidence level,
embedding, by the computing device, additional
tracking codes in additional content containing additional
test offers,
communicating, by the computing device, the
additional content containing the additional test offers
and the additional tracking codes to an additional set of
customers over the network,
Appeal 2020-005620
Application 15/348,865

8
tracking, by an analytics engine of the computing
device, additional outcome information for the additional
test offers and including the additional outcome
information in the outcome information, and
assessing whether the best offer has been
determined with the desired confidence level; and
determining the best offer with the desired
confidence level based on the outcome information.
See Final Act. 5–6. According to the Examiner, these limitations “recite[ ] a
method of organizing human activity”; “[t]he claimed invention tracks user’s
response to offers in order to determine the best offer, which are marketing
or sales activities.” Id. at 6.
The Appeal Brief includes no argument challenging the Examiner’s
determination under Step 2A, Prong One. However, in the Reply Brief, the
Appellant argues that the Examiner’s Answer introduces a “new issue” or, at
least, “confusion regarding the basis for the rejection.” Reply Br. 3. The
Appellant points to the Examiner’s position that certain of the Appellant’s
alleged technological improvements are no more than “improvements to the
abstract idea o[f] mathematics.” Answer 12–13. The Appellant proceeds to
argue that the Examiner’s identified limitations of claim 1 (italicized above)
“clearly do not fit within the category of marketing and sales activity” — a
“mischaracterization” that the Examiner “essentially admits,” by “stating
that the claims are directed to an improvement in mathematics.” Reply
Br. 4.
These arguments do not persuade us of error in the rejection. Claim
language can include more than one type of judicial exception. See Genetic
Techs. Ltd. v. Merial LLC, 818 F.3d 1369, 1374–75, 1379 (Fed. Cir. 2016)
(claim to a method for analyzing DNA recited both the law of nature of
Appeal 2020-005620
Application 15/348,865

9
linkage disequilibrium and the mental process of examining a non-coding
region to detect an allele in the coding region). See also MPEP
§ 2106.04(II)(B) (9th ed. March 2014, June 2020 Rev. R-10.2019)
(“Evaluating Claims Reciting Multiple Judicial Exceptions”). The
Examiner’s recognition that a portion of the identified claim language
(reciting one type of judicial exception) includes language reciting another
type of judicial exception (a mathematical concept) does not undermine the
Examiner’s determination — i.e., that the entirety of the claim language at
issue (italicized above) recites a judicial exception in the form of a certain
method of organizing human activity. Accordingly, contrary to the
Appellant’s position (Reply Br. 4), the presence of claim language reciting a
mathematical operation (“solving an optimization”) is not inconsistent with
the determination that claim 1 recites “marketing or sales activity.” Indeed,
in Bilski v. Kappos, 561 U.S. 593 (2010), the Supreme Court determined that
both independent claims at issue (claims 1 and 4) “explain the basic concept
of hedging, or protecting against risk” and both claims were deemed
ineligible, even though claim 4 (but not claim 1) “reduced” the “concept of
hedging” “to a mathematical formula.” Bilski, 561 U.S. at 611. In Bilski,
the critical aspect of the claim language — in regard to the identification of a
judicial exception — was not any use of mathematical language, but, rather,
the recitation of a fundamental economic practice (i.e., a certain method of
organizing human activity, in the terminology of the 2019 Revised
Guidance). Id.
In view of the foregoing, we are not persuaded of error in the
Examiner’s analysis corresponding to Step 2A, Prong One.
Appeal 2020-005620
Application 15/348,865

10
Proceeding to Step 2A, Prong Two, unless a claim that recites a
judicial exception (such as an abstract idea) “integrates the recited judicial
exception into a practical application of that exception,” the claim is
“directed to” the judicial exception. 2019 Revised Guidance, 84 Fed. Reg.
at 53. The analysis of such an “integration into a practical application”
involves “[i]dentifying . . . any additional elements recited in the claim
beyond the judicial exception(s)” and “evaluating those additional elements
individually and in combination to determine whether they integrate the
exception into a practical application.” Id. at 54–55. Among the
considerations “indicative that an additional element (or combination of
elements) may have integrated the exception into a practical application” is
whether “[a]n additional element reflects an improvement in the functioning
of a computer, or an improvement to other technology or technical field.”
Id. at 55 (footnote omitted). “[W]hether an additional element or
combination of elements integrate[s] the exception into a practical
application should be evaluated on the claim as a whole.” Id. at 55 n.24.
The Appellant argues that claim 1 integrates the identified judicial
into a practical application, by accomplishing “a particular improved
technique for hypothesis testing, which is a technique used in data analytics
and reinforcement learning systems generally.” Appeal Br. 12. Several of
the Appellant’s arguments are unpersuasive, because — rather than
involving any so-called “additional elements” — the purported
improvements are entirely features of what the Examiner identifies as the
claim language reciting the judicial exception. See Appeal Br. 16–17
(relying upon language of claim 1 reciting, e.g., “solving an optimization to
allocate the additional test offers, the optimization minimizing a total
Appeal 2020-005620
Application 15/348,865

11
number of test offers allocated while allocating the additional test offers to
eliminate overlap between a lower bounds of a first confidence interval for a
first place offer and an maximum upper bounds of a second confidence
interval of any other offer by using an exploration weight that decreases with
each iteration to reduce a number of test offers allocated to other offers”).
Similarly, the Appellant argues “the [claim 1] step of ‘solving an
optimization’ enables an improved subsequent data gathering step (i.e.,
‘tracking additional outcome information’) that relies on fewer test offers.”
Reply Br. 6. Yet, both the “solving an optimization” and “tracking . . .
additional outcome information” limitations are included in claim language
that the Examiner identifies as reciting the judicial exception. See Final
Act. 5–6.
The Appellant also argues that, “even if the present claims, as a
whole, recite marketing or sales activity, they also include additional steps
that leverage a computing environment to provide an advantage over prior
art systems.” Reply Br. 8. “Specifically,” the Appellant contends, “the
claims include the elements of ‘embedding . . . tracking codes in content[,’]
prior to ‘solving an optimization,’ and then ‘embedding . . . additional
tracking codes’ during the iterative process of determining the best offer.”
Id.
As an initial matter, the Appellant did not raise this argument in the
Appeal Brief and the Appellant has not indicated that the argument responds
to anything raised in the Examiner’s Answer. Nor has the Appellant
presented good cause for consideration of this argument. The Final Office
Action stated that the “embedding” limitations “are just insignificant extra
solution activity because they are just embedding a code in order to track
Appeal 2020-005620
Application 15/348,865

12
data and then just outputting information,” which fails to “integrate the
abstract idea into a practical application.” Final Act. 6–7. The Examiner’s
Answer does not refer to the “embedding” limitations. Accordingly, the
referenced argument on page 8 of the Reply Brief is not properly presented.
See 37 C.F.R. § 41.41(b)(2) (“Any argument raised in the reply brief which
was not raised in the appeal brief, or is not responsive to an argument raised
in the examiner’s answer . . . , will not be considered by the Board for
purposes of the present appeal, unless good cause is shown.”)
Moreover, the Appellant does not identify any improvement arising
from the “embedding” limitations. The Examiner’s contrary position — i.e.,
that the “embedding” features relate to insignificant extra-solution activity
(see Final Act. 6–7) — aligns with the Specification, which does not ascribe
any particular improvement or benefit to the “embedding” of “tracking
codes.” See Spec. ¶ 45 (“The user can enable tracking of the content while
creating the content or at any other point. Various methods of tracking can
be used. For example, a tracking code can be embedded into the content for
tracking and sending tracked data to the analytics engine 190.”)
In view of the foregoing, the Appellant’s arguments do not persuade
us of error in the Examiner’s analyses corresponding to Step 2A, Prong
Two.
Under Step 2B of the 2019 Revised Guidance, 84 Fed. Reg. at 56, a
claim that recites a judicial exception (such as an abstract idea) might,
nevertheless, be patent-eligible, if the claim contains “additional elements
amount[ing] to significantly more than the exception itself” — i.e., “a
specific limitation or combination of limitations that [is] not well-
understood, routine, conventional activity in the field, which is indicative
Appeal 2020-005620
Application 15/348,865

13
that an inventive concept may be present.” See Alice, 573 U.S. at 223
(“[T]he mere recitation of a generic computer cannot transform a patent-
ineligible abstract idea into a patent-eligible invention.”)
According to the Examiner, claim 1 contains no unconventional
additional elements, whereby the claim might constitute significantly more
than the identified judicial exception. Final Act. 7–8.
The Appellant argues that “the claimed element of ‘allocating the
additional test offers unevenly’ is unconventional”; hence, the Examiner has
not established an adequate factual basis for the rejection. Reply Br. 9. See
Berkheimer v. HP Inc., 881 F.3d 1360, 1369 (Fed. Cir. 2018) (“Whether
something is well-understood, routine, and conventional to a skilled artisan
at the time of the patent is a factual determination.”)
Yet, the limitation in question — “allocating the additional test offers
unevenly” — is part of the claim language that, according to the Examiner,
recites the judicial exception. See Final Act. 5–6. As such, this limitation
cannot establish patent eligibility, under Step 2B. “It has been clear since
Alice that a claimed invention’s use of the ineligible concept to which it is
directed cannot supply the inventive concept that renders the invention
‘significantly more’ than that ineligible concept.” BSG Tech v. BuySeasons,
Inc., 899 F.3d 1281, 1290 (Fed. Cir. 2018).
Therefore, the Appellant does not persuade us of error in the
Examiner’s application of Step 2B.
In view of the foregoing, we sustain the Examiner’s rejection of
independent claim 1 along with, per 37 C.F.R. § 41.37(c)(1)(iv),
independent claims 13 and 17, and dependent claims 2, 6–12, and 21–23,
under 35 U.S.C. § 101.
Appeal 2020-005620
Application 15/348,865

14
CONCLUSION
In summary:
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 2, 6–13,
17, 21–23
101 Ineligibility 1, 2, 6–13,
17, 21–23

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