Adobe Inc.

Patent Trials and Appeals Board

Feb 1, 2021

2020004231 (P.T.A.B. Feb. 1, 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.
14/177,385 02/11/2014 Zhenyu Yan 3854US01 1157
108982 7590 02/01/2021
FIG. 1 Patents
116 W. Pacific Avenue
Suite 200
Spokane, WA 99201
EXAMINER
CIRNU, ALEXANDRU
ART UNIT PAPER NUMBER
3622
NOTIFICATION DATE DELIVERY MODE
02/01/2021 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):
Fig1Docket@fig1patents.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ZHENYU YAN, PRAVEEN KRISHNAKUMAR,
ABHISHEK PANI, ANIL KAMATH, SUMAN BASETTY, and
KUNAL KUMAR JAIN
Appeal 2020-004231
Application 14/177,385
Technology Center 3600
Before JOHN A. EVANS, LARRY J. HUME, and
JENNIFER L. MCKEOWN, Administrative Patent Judges.
HUME, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision rejecting claims 1–4, 7, 8, 10–18, and 20–24, which are
all claims pending in the application. Appellant has canceled claims 5, 6, 9,
and 19. See Appeal Br. 26 et seq. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.

1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies the real party in interest as Adobe Inc. Appeal
Br. 3.
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STATEMENT OF THE CASE2
The claims are directed to a revenue estimation through ensemble
modeling. See Spec. (Title). In particular, Appellant’s disclosed
embodiments and claimed invention relate to “[a]n ensemble model . . . that
predicts revenue metrics for one or more keywords . . . formed using both a
historical model and a user behavior model. The historical model may
include historical data indicative of revenue generated from previous
advertising instances associated with a keyword whereas the user behavior
model may include data describing online user behavior associated with the
keyword.” Spec. ¶ 4.
Exemplary Claim
Claim 1, reproduced below, is representative of the subject matter on
Appeal:
1. A method implemented by a computing device, the
method comprising:
receiving, by the computing device, a search query via a
network, the search query including one or more keywords;
generating, by the computing device, a historical model
that models historical data associated with performance of the
one or more keywords regarding advertising instances
associated with the one or more keywords;
generating, by the computing device, a user behavior
model separate and distinct from the historical model that

2 Our decision relies upon Appellant’s Appeal Brief (“Appeal Br.,” filed
Mar. 5, 2020); Reply Brief (“Reply Br.,” filed May 18, 2020); Examiner’s
Answer (“Ans.,” mailed Apr. 3, 2020); Final Office Action (“Final Act.,”
mailed Aug. 9, 2019); and the original Specification (“Spec.,” filed
Feb. 11, 2014).
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models online user behavior associated with the one or more
keywords;
estimating, by the computing device, a first prediction of
performance for the one or more keywords using the historical
model and a second prediction of performance for the one or
more keywords using the behavior model;
assigning, by the computing device, a weight to the first
prediction based, at least in part, on a sparsity value indicating
usefulness of the historical model to predict the performance of
the one or more keywords;
assigning, by the computing device, a weight to the
second prediction based on the assigned weight of the first
prediction model;
forming, by the computing device, an ensemble model
based on the assigned weight of the first prediction and the
assigned weight of the second prediction from the user behavior
model;
generating, by the computing device, the search result
that includes an advertising instance, the advertising instance
configured based on the predicted metrics; and
outputting, by the computing device, the search result
having the advertising instance for communication via the
network.
REJECTION
Claims 1–4, 7, 8, 10–18, and 20–24 stand rejected under 35 U.S.C.
§ 101 because the claimed invention is directed to a judicial exception (i.e., a
law of nature, a natural phenomenon, or an abstract idea) without
significantly more.
CLAIM GROUPING
Based on Appellant’s arguments (Appeal Br. 13–24) and our
discretion under 37 C.F.R. § 41.37(c)(1)(iv), we decide the appeal of the
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patent-ineligible subject matter rejection of claims 1–4, 7, 8, 10–18, and 20–
24 on the basis of representative claim 1.3
ISSUE
Appellant argues (Appeal Br. 13–24; Reply Br. 2–7) the Examiner’s
rejection of claim 1 under 35 U.S.C. § 101 as being directed to patent-
ineligible subject matter is in error. These contentions present us with the
following issue:
Under the USPTO’s Revised Guidance, informed by our governing
case law concerning 35 U.S.C. § 101, has Appellant persuasively argued that
the Examiner erred in concluding claim 1 is not patent eligible under § 101?
ANALYSIS
In reaching this decision, we consider all evidence presented and all
arguments actually made by Appellant. To the extent Appellant has not
advanced separate, substantive arguments for particular claims, or other
issues, such arguments are waived. 37 C.F.R. § 41.37(c)(1)(iv).
We disagree with Appellant’s arguments with respect to claims 1–4,
7, 8, 10–18, and 20–24 and, unless otherwise noted, we incorporate by
reference herein and adopt as our own: (1) the findings and reasons set forth
by the Examiner in the action from which this appeal is taken, and (2) the

3 “Notwithstanding any other provision of this paragraph, the failure of
appellant to separately argue claims which appellant has grouped together
shall constitute a waiver of any argument that the Board must consider the
patentability of any grouped claim separately.” 37 C.F.R. § 41.37(c)(1)(iv).
In addition, when Appellant does not separately argue the patentability of
dependent claims, the claims stand or fall with the claims from which they
depend. In re King, 801 F.2d 1324, 1325 (Fed. Cir. 1986).
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reasons and rebuttals set forth in the Examiner’s Answer in response to
Appellant’s arguments. We highlight and address specific findings and
arguments regarding claim 1 for emphasis as follows.
PRINCIPLES OF LAW
A. 35 U.S.C. § 101
An invention is patent-eligible if it is a “new and useful process,
machine, manufacture, or composition of matter.” 35 U.S.C. § 101.4
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. Mayo Collaborative Servs. v. Prometheus Labs.,
Inc., 566 U.S. 66, 70 (2012) (brackets in original) (citing Diamond v. Diehr,
450 U.S. 175, 185 (1981)).
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. Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 217–18 (2014)
(citing Mayo, 566 U.S. at 75–77). 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

4 This threshold analysis of whether a claim is directed to one of the four
statutory categories of invention, i.e., a process, machine, manufacture, or
composition of matter, is referred to as “Step 1” in the USPTO’s patent-
eligibility analysis under § 101. MPEP § 2106.
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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
mental processes (Gottschalk v. Benson, 409 U.S. 63, 67 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as “molding rubber products” (Diehr, 450 U.S. at 191); “tanning,
dyeing, making water-proof cloth, vulcanizing India rubber, smelting ores”
(id. at 182 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))).
Abstract ideas may include, but are not limited to, fundamental
economic practices, methods of organizing human activities, and
mathematical formulas or relationships. Alice, 573 U.S. at 217–21. Under
this guidance, we must therefore ensure at step one that we articulate what
the claims are directed to with enough specificity to ensure the step one
inquiry is meaningful. Id. at 217 (“[W]e tread carefully in construing this
exclusionary principle lest it swallow all of patent law.”).
Examples of claims that do not recite mental processes because they
cannot be practically performed in the human mind include: (a) a claim to a
method for calculating an absolute position of a GPS receiver and an
absolute time of reception of satellite signals, where the claimed GPS
receiver calculated pseudoranges that estimated the distance from the GPS
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receiver to a plurality of satellites, SiRF Technology, Inc. v. International
Trade Commission, 601 F.3d 1319, 1331–33 (Fed. Cir. 2010); (b) a claim to
detecting suspicious activity by using network monitors and analyzing
network packets, SRI Int’l, Inc. v. Cisco Systems, Inc., 930 F.3d 1295, 1304
(Fed. Cir. 2019); (c) a claim to a specific data encryption method for
computer communication involving a several-step manipulation of data,
Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1149 (Fed.
Cir. 2016) (distinguishing TQP Development, LLC v. Intuit Inc., 2014 WL
651935 (E.D. Tex. Feb. 19, 2014)) (the specific data encryption method
“could not conceivably be performed in the human mind or with pencil and
paper”). Whereas a claim limitation to a process that “can be performed in
the human mind, or by a human using a pen and paper” qualifies as a mental
process, a claim limitation that “could not, as a practical matter, be
performed entirely in a human’s mind” (even if aided with pen and paper)
would not qualify as a mental process.5
In Diehr, the claim at issue recited a mathematical formula, but the
Supreme Court held “[a] claim drawn to subject matter otherwise statutory
does not become nonstatutory simply because it uses a mathematical
formula.” Diehr, 450 U.S. at 187; 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

5 CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1372, 1375–
76 (Fed. Cir. 2011) (distinguishing Research Corp. Techs. v. Microsoft
Corp., 627 F.3d 859 (Fed. Cir. 2010), and SiRF Tech., Inc. v. Int’l Trade
Comm’n, 601 F.3d 1319 (Fed. Cir. 2010)).
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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. (citation omitted) (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 (citation 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. (alterations in original) (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.
B. USPTO Revised Guidance
In January 2019, the U.S. Patent and Trademark Office (USPTO)
published revised guidance on the application of § 101.6 The Manual of

6 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50
(Jan. 7, 2019) (hereinafter “Revised Guidance”) (https://www.govinfo.gov/
content/pkg/FR-2019-01-07/pdf/2018-28282.pdf). In response to formal
public comments, the Office issued further guidance on October 17, 2019,
clarifying the Revised Guidance. USPTO, October 2019 Update: Subject
Matter Eligibility (the “October 2019 Update”). “All USPTO personnel are,
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Patent Examining Procedure (“MPEP”) now incorporates this revised
guidance and subsequent updates at Section 2106 (9th ed. Rev. 10.2019, rev.
June 2020).7
Under MPEP § 2106, 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,” referred
to herein as “Step 2A(i)”); and
(2) additional elements that integrate the judicial
exception into a practical application (“Step 2A, Prong Two,”
referred to herein as “Step 2A(ii)”).8
MPEP § 2106.04(a)) and § 2106.04(d).
Under this guidance, if the claim does not recite a judicial exception
(a law of nature, natural phenomenon, or subject matter within the
enumerated groupings of abstract ideas above), then the claim is patent-

as a matter of internal agency management, expected to follow the
guidance.” 84 Fed. Reg. at 51; see also October 2019 Update at 1.
7 All references to the MPEP are to the Ninth Edition, Revision 10.2019
(Last Revised June 2020), unless otherwise indicated.
8 “Examiners evaluate integration into a practical application by:
(1) identifying whether there are any additional elements recited in the claim
beyond the judicial exception, and (2) evaluating those additional elements
individually and in combination to determine whether the claim as a whole
integrates the exception into a practical application, using one or more of the
considerations introduced in subsection I supra, and discussed in more detail
in MPEP §§ 2106.04(d)(1), 2106.04(d)(2), 2106.05(a) through (c) and
2106.05(e) through (h).” MPEP § 2106.04(d)II.
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eligible at Step 2A(i). This determination concludes the eligibility analysis,
except in situations identified in the Revised Guidance.9
Only if a claim (1) recites a judicial exception and (2) does not
integrate that exception into a practical application,10 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; or
(4) simply appends well-understood, routine,
conventional activities previously known to the industry,
specified at a high level of generality, to the judicial
exception.11
MPEP § 2106.05(d).
In the Step 2B analysis, an additional element (or combination of
elements) is not well-understood, routine or conventional unless the

9 In the rare circumstance in which an examiner believes a claim limitation
that does not fall within the enumerated groupings of abstract ideas should
nonetheless be treated as reciting an abstract idea, the procedure described in
the MPEP for analyzing the claim should be followed. See MPEP
§ 2106.04(a)(3)(“Tentative Abstract Ideas”).
10 This corresponds to Alice part one where it is determined whether the
claim is “directed to” an abstract idea. See Alice, 573 U.S. at 219. If a claim
is “not directed to an abstract idea under part one of the Alice framework, we
do not need to proceed to step two.” Enfish, LLC v. Microsoft Corp., 822
F.3d 1327, 1339 (Fed. Cir. 2016).
11 Items (3) and (4) correspond to Alice part two where it is determined
“whether the claim contains an ‘inventive concept’ sufficient to ‘transform’
the claimed abstract idea into a patent-eligible application” (Alice, 573 U.S.
at 221) and continue to be collectively referred to as “Step 2B” of the
Supreme Court’s two-step framework, described in Mayo and Alice.
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examiner finds an evidentiary basis, and expressly supports a rejection in
writing with, one or more of the following:
1. A citation to an express statement in the
specification or to a statement made by an applicant during
prosecution that demonstrates the well-understood, routine,
conventional nature of the additional element(s). . . .
2. A citation to one or more of the court decisions
discussed in MPEP § 2106.05(d)(II) as noting the well-
understood, routine, conventional nature of the additional
element(s).
3. A citation to a publication that demonstrates the
well-understood, routine, conventional nature of the additional
element(s). . . .
4. A statement that the examiner is taking official
notice of the well-understood, routine, conventional nature of
the additional element(s). . . .
See MPEP §§ 2106.05(d)(I)(2); 2106.07(a).
If the Examiner or the Board determines under Step 2B that the
element (or combination of elements) amounts to significantly more than the
exception itself, the claim is eligible, thereby concluding the eligibility
analysis.
However, if a determination is made that the element and combination
of elements do not amount to significantly more than the exception itself, the
claim is ineligible under Step 2B, and the claim should be rejected for lack of
subject matter eligibility.
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ANALYSIS
Step 1 – Statutory Category
Claim 1, as a method (process) claim, recites one of the enumerated
categories of eligible subject matter in 35 U.S.C. § 101. Therefore, the issue
before us is whether it is directed to a judicial exception without
significantly more.
Step 2A(i): Does the Claim Recite a Judicial Exception?
The Examiner determined that claim 1 “recites the abstract concept of
a commercial activity — i.e. advertising activities or behaviors/business
relations —[] which represents a method of organizing human activity, and
has been identified as an abstract idea by the Courts,” and further concludes
the claims “also recite[] the abstract concept of a mathematical concept —
i.e. mathematical relationships/calculations—[] which has been identified as
an abstract idea by the Courts.” Final Act. 4.
We conclude claim 1 does not recite the judicial exceptions of either
natural phenomena or laws of nature. We evaluate whether claim 1 recites
an abstract idea based upon the Revised Guidance.
First, we look to the Specification to provide context as to what the
claimed invention is directed to. In this case, the Specification discloses:
An ensemble model is described that predicts revenue
metrics for one or more keywords. In one or more
implementations, an ensemble model is formed using both a
historical model and a user behavior model. The historical
model may include historical data indicative of revenue
generated from previous advertising instances associated with a
keyword whereas the user behavior model may include data
describing online user behavior associated with the keyword. In
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one or more implementations, weights are assigned to the
historical model and/or the user behavior model based on
sparsity of the historical data used to form the historical model.
For example, if the historical data is rich (e.g., represents a high
likelihood of accurately predicting revenues for the keyword),
then a higher weight is assigned to the historical model relative
to the weight assigned to the user behavior model.
Spec. ¶ 4.
Appellant’s Abstract similarly describes the invention as:
An ensemble model is described that is usable to predict
revenue metrics for one or more keywords. The ensemble
model may be formed using both a historical model and a user
behavior model. In one or more implementations, weights are
assigned to the historical model and/or the user behavior model
based on one or more criteria. Various processing techniques of
the ensemble model may utilize the historical model and the
user behavior model to predict revenue metrics for one or more
keywords.
Spec. 41 (Abstract).
In this phase of the analysis, Appellant presents two Federal Circuit
cases discussed in the Revised Guidance in an attempt to distinguish their
claims on appeal.
OIP Technologies12
OIP Technologies involved an action against an online retailer for
infringement of computer-implemented methods for pricing a product for
sale. In OIP, the Federal Circuit agreed with the district court below and
held that the patent involved no more than an abstract idea coupled with

12 OIP Technologies, Inc. v. Amazon.com, Inc., 788 F.3d 1359 (Fed.
Cir. 2015)
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routine data-gathering steps and conventional computer activity. OIP
Technologies, 788 F.3d at 1364.
Appellant argues “[i]n contrast to claim 1 in OIP Techs, the subject
matter of claim 1 in the current Application describes, in part, a method for
generating a search result based on metrics that are predicted using an
ensemble model formed based on the historical model and the user behavior
model. Generating a search result based on the steps recited in claim 1 is
very different from offer-based price optimization.” Appeal Br. 17–18.
While we agree with Appellant that the specific claim in question in
OIP is different in specifics than claim 1 on appeal, we disagree that the
differences in the claims render the Federal Circuit’s holding irrelevant in
light of the Revised Guidance, or make claim 1 patent eligible, as discussed
below.
In re Ferguson13
In Ferguson, the claimed invention focuses on a “method of
marketing a product” and a “paradigm for marketing software.” The Federal
Circuit held the methods directed toward organizing business or legal
relationships in structuring of sales force or marketing company were not
tied to a particular machine or apparatus and did not transform particular an
article into a different state or thing. Ferguson 558 F.3d at 1365.
Similar to the argument concerning OIP, Appellant argues the claims
in Ferguson recite “subject matter that is very different from the features
recited in claim 1 of the current application. For at least these reasons,

13 In re Ferguson, 558 F.3d 1359 (Fed. Cir. 2009).
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contrary to the Examiner’s assertion, claim 1 of the current application does
not recite the abstract concept of a commercial activity.” Appeal Br. 18–19.
We disagree, as discussed below.
In TABLE I below, we identify in italics the specific claim limitations
in claim 1 that we conclude recite an abstract idea. We additionally identify
in bold the additional (non-abstract) claim limitations that are generic
computer components and techniques, and underline limitations representing
extra or post-solution activity:
TABLE I
Independent Claim 1 Revised Guidance
A method implemented by
a computing device, the
method comprising:
A process (method) is a statutory subject
matter class. See 35 U.S.C. § 101. See 35
U.S.C. § 101 (“Whoever 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.”).
[L1] receiving, by the
[L1a] computing device,
a search query via
[L1b] a network, the
search query including
one or more keywords;
As claimed, a computing device and a
network represent conventional computer
components and techniques. See Spec. ¶ 26
(“The computing device 102, for instance,
may be configured as a desktop computer, a
laptop computer, a mobile device (e.g.,
assuming a handheld configuration such as a
tablet or mobile phone), and so forth.”); ¶ 43
(“The network 114, meanwhile, represents
any one or combination of multiple different
types of wired and/or wireless networks, such
as cable networks, the Internet, private
intranets, and so forth.”).
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Independent Claim 1 Revised Guidance
Data gathering (i.e., “receiving . . . a search
query”) is merely insignificant extra-solution
activity that does not add significantly more
to the abstract idea to render the claimed
invention patent-eligible. See In re Bilski, 545
F.3d 943, 962 (Fed. Cir. 2008) (en banc),
aff’d on other grounds, 561 U.S. 593 (2010)
(“[T]he involvement of the machine or
transformation in the claimed process must
not merely be insignificant extra-solution
activity”); see also MPEP § 2106.05(g); and
see buySAFE, Inc. v. Google, Inc., 765 F.3d
1350, 1355 (Fed. Cir. 2014) (computer
receives and sends information over a
network).
[L2] generating, by the
computing device, a
historical model that
models historical data
associated with
performance of the one or
more keywords regarding
advertising instances
associated with the one or
more keywords;
Generating a model using advertising-related
data is an abstract idea, i.e., certain methods
of organizing human activity including
commercial interactions in the form of
advertising, marketing or sales activities. See
MPEP 2106.04(a)(2)(II)(B); Revised
Guidance 52.
[L3] generating, by the
computing device, a user
behavior model separate
and distinct from the
historical model that
models online user
behavior associated with
the one or more keywords;
Generating a model that models user behavior
associated with keywords using user behavior
data is an abstract idea, i.e., certain methods
of organizing human activity including
managing personal behavior or relationships
or interactions between people. See MPEP
2106.04(a)(2)(II)(C); Revised Guidance 52.
[L4] estimating, by the
computing device, a first
prediction of performance
Mathematical calculations, e.g., estimating
first and second predictions using modeling
information, is an abstract idea. See MPEP
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Independent Claim 1 Revised Guidance
for the one or more
keywords using the
historical model and a
second prediction of
performance for the one
or more keywords using
the behavior model;
§ 2106.04(a)(2)(I)(C); see also SAP
America, Inc. v. InvestPic, LLC, 898 F.3d
1161, 1163 (Fed. Cir. 2018) (holding that
claims to a “series of mathematical
calculations based on selected information”
are directed to abstract ideas).
[L5] assigning, by the
computing device, a
weight to the first
prediction based, at least
in part, on a sparsity value
indicating usefulness of
the historical model to
predict the performance of
the one or more keywords;
Assigning a weight to a prediction is an
abstract idea, i.e., an observation,
evaluation, judgment, opinion which could
be performed as a mental process. See
MPEP § 2106.04(a)(2)(III)(A).
[L6] assigning, by the
computing device, a
weight to the second
prediction based on the
assigned weight of the
first prediction model;
Assigning a weight to a prediction is an
abstract idea, i.e., an observation,
evaluation, judgment, opinion which could
be performed as a mental process. See
MPEP § 2106.04(a)(2)(III)(A).
[L7] forming, by the
computing device, an
ensemble model based on
the assigned weight of the
first prediction and the
assigned weight of the
second prediction from the
user behavior model;
Forming a model based on different
weighted predictions is an abstract idea, i.e.,
an observation, evaluation, judgment,
opinion which could be performed as a
mental process. See MPEP
§ 2106.04(a)(2)(III)(A).
[L8] generating, by the
computing device, the
search result that includes
an advertising instance,
the advertising instance
Generating a search result that includes an
advertising instance based on predicted
metrics is an abstract idea, i.e., certain
methods of organizing human activity
including commercial interactions in the
form of advertising, marketing or sales
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Independent Claim 1 Revised Guidance
configured based on the
predicted metrics; and
activities. See MPEP 2106.04(a)(2)(II)(B);
Revised Guidance 52.
[L9] outputting, by the
computing device, the
search result having the
advertising instance for
communication via the
network.
Outputting or transmitting information, e.g.,
the search result, is insignificant post-
solution activity. Revised Guidance 55,
n.31; see also MPEP § 2106.05(g); and see
buySAFE, 765 F.3d at 1355 (computer
receives and sends information over a
network).
Appeal Br. 26–27 (Claims App.).
Under the broadest reasonable interpretation standard,14 we conclude
limitations L1 through L9 recite steps that would ordinarily occur when
predicting revenue metrics for one or more keywords. See Final Act. 4–5;
see generally, Ans. For example, using models to predict sales revenue in
connection with advertising is an operation that generally occurs when
predicting revenue metrics for one or more keywords. Further, we conclude
limitations L2 through L8 recite various abstract ideas as indicated in
TABLE 1, above, whether initiated person-to-person, on paper, or using a
computer.

14 During prosecution, claims must be given their broadest reasonable
interpretation when reading claim language in light of the specification as it
would be interpreted by one of ordinary skill in the art. In re Am. Acad. of
Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). Under this standard,
we interpret claim terms using “the broadest reasonable meaning of the
words in their ordinary usage as they would be understood by one of
ordinary skill in the art, taking into account whatever enlightenment by way
of definitions or otherwise that may be afforded by the written description
contained in the applicant’s specification.” In re Morris, 127 F.3d 1048,
1054 (Fed. Cir. 1997).
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We determine that claim 1, overall, recites a certain method of
organizing human activity in the form of commercial interactions relating to
revenue generation and advertising that may also be performed by pen and
paper. This type of activity, i.e., predicting revenue metrics for one or more
keywords, as recited in the above-identified limitations, for example, and
aside from any computer-related aspects, includes longstanding conduct that
existed well before the advent of computers and the Internet, and could be
carried out by a human with pen and paper. See CyberSource Corp. v. Retail
Decisions, Inc., 654 F.3d 1366, 1375 (Fed. Cir. 2011) (“That purely mental
processes can be unpatentable, even when performed by a computer, was
precisely the holding of the Supreme Court in Gottschalk v. Benson.”).15
Thus, under Step 2A(i), we agree with the Examiner that claim 1’s
“method implemented by a computing device” recites a judicial exception.
We conclude claim 1, under our Revised Guidance, recites a judicial
exception of predicting revenue metrics for one or more keywords, i.e., a
certain method of organizing human activity in the form of a business

15 Our reviewing court recognizes that “[a]n abstract idea can generally be
described at different levels of abstraction.” Apple, Inc. v. Ameranth, Inc.,
842 F.3d 1229, 1240 (Fed. Cir. 2016). That need not and, in this case does
not, “impact the patentability analysis.” Id. at 1241. Further, “[t]he Board’s
slight revision of its abstract idea analysis does not impact the patentability
analysis.” Id. Moreover, merely combining several abstract ideas does not
render the combination any less abstract. RecogniCorp, LLC v. Nintendo
Co., 855 F.3d 1322, 1327 (Fed. Cir. 2017) (“Adding one abstract idea (math)
to another abstract idea . . . does not render the claim non-abstract.”); see
also FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1093–94 (Fed.
Cir. 2016) (determining the pending claims were directed to a combination
of abstract ideas).
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activity related to advertising and revenue generation, and thus recites an
abstract idea.
Step 2A(ii): Judicial Exception Integrated into a Practical Application?
If the claims are directed to a judicial exception, as we conclude
above, we proceed to the “practical application” Step 2A(ii) in which we
determine whether the recited judicial exception is integrated into a practical
application of that exception by: (a) identifying whether there are any
additional elements recited in the claim beyond the judicial exception(s); and
(b) evaluating those additional elements individually and in combination to
determine whether they integrate the exception into a practical application.
With respect to this phase of the analysis, Appellant cites to DDR
Holdings to argue subject matter eligibility.16
Analogous to the claims in DDR Holdings, claim 1
addresses a digitally rooted challenge of accurately predicting
revenues for keywords based on past user interaction with these
words in an online environment. Specifically, claim 1 addresses
the challenge of predicting metrics for keywords using an
ensemble model that is based on a historical model and a user
behavior model. The historical model is generated using
historical data indicative of revenue generated from previous
advertising instances (e.g., a displayed advertisement, a
displayed webpage, a displayed search result, a promoted
webpage, and so forth). In contrast, the user behavior model is
generated using data describing online user behavior associated
with the keyword such as, e.g., time spent on webpage,
webpage viewed, bounce rate, and other such after users click
the advertisement associated with the keyword. Use of this data
to generate an ensemble model solves the digitally rooted
challenge of accurately predicting keywords based on user

16 DDR Holdings v. Hotels.com, 773 F.3d 1245 (Fed. Cir. 2014).
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interaction with these keywords. In part because the ensemble
model is used to generate a search result that includes an
advertising instance that is based on metrics that are predicted
using this data.
Appeal Br. 20–21 (footnotes omitted).
Appellant’s reliance on DDR (Appeal Br. 20–21; Reply Br. 3 n.5) is
misplaced as the recited claims do not improve the computer. In DDR, the
claims at issue involved, inter alia, “web pages displays [with] at least one
active link associated with a commerce object associated with a buying
opportunity of a selected one of a plurality of merchants” (claim 1 of US
7,818,399). The Federal Circuit found the claims in DDR to be patent-
eligible under step one of the Alice test because “the claimed solution is
necessarily rooted in computer technology in order to overcome a problem
specifically arising in the realm of computer networks.” DDR Holdings v.
Hotels.com, 773 F.3d 1245, 1257 (Fed. Cir. 2014). Specifically, the Federal
Circuit found the claims addressed the “challenge of retaining control over
the attention of the customer in the context of the Internet.” Id. at 1258. We
find the rejected claims in this Appeal are dissimilar to DDR’s web page
with an active link, and the Specification does not support the view that the
computer related claim elements are unconventional. See Spec. ¶ 26 (“The
computing device 102, for instance, may be configured as a desktop
computer, a laptop computer, a mobile device (e.g., assuming a handheld
configuration such as a tablet or mobile phone), and so forth.”).
Appellant further argues:
It is reasonable to conclude that such data cannot be
gathered and analyzed by a human alone, as a human cannot
view and track which webpage is being viewed at a particular
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time by various users, how long multiple users spend viewing a
webpage, and what portions of the webpage is being viewed by
a particular user without access to a computing device.
Consequently, for at least the reasons discussed above, claim 1
is directed to a specific implementation of a solution to the
problem of accurately predicting revenues for keywords based
on past user interaction with these words in an online
environment.
Appeal Br. 21 (footnotes omitted) (emphasis added).
We are not persuaded by Appellant’s argument because it is not
commensurate with the scope of the claim. Contrary to Appellant’s
argument, claim 1 does not explicitly recite determining “which webpage is
being viewed at a particular time by various users,” “how long multiple
users spend viewing a webpage,” or “what portions of the webpage is being
viewed by a particular user.”
Turning back to TABLE 1, and as to the specific limitations, we find
limitation L1 (“receiving . . . a search query”) recites insignificant data
gathering. See MPEP § 2106.05(g). Data gathering, as performed by the
step or function in Appellant’s claims, is a classic example of insignificant
extra-solution activity. See, e.g., In re Bilski, 545 F.3d 943, 963 (Fed. Cir.
2008) (en banc), aff’d sub nom, Bilski v. Kappos, 561 U.S. 593 (2010).
We also find limitation L9 (“outputting . . . the search result having
the advertising instance for communication via the network”) recites
insignificant post solution activity. The Supreme Court guides that the
“prohibition against patenting abstract ideas ‘cannot be circumvented by’ . . .
adding ‘insignificant postsolution activity.’” Bilski, 561 U.S. at 610–11
(quoting Diehr, 450 U.S. at 191–92).
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On this record, we are of the view that Appellant’s claims do not
operate the recited generic computer components in limitations L1a (“a
computing device”) and L1b (“a network”) in an unconventional manner to
achieve an improvement in computer functionality. See MPEP § 2106.05(a).
Appellant does not point to any specific limitation or limitations which
might arguably be construed as integrating the abstract ideas in claim 1 into
a practical application of that idea.
We find each of the limitations of claim 1 recite abstract ideas, estra
or post-solution activity, or generic computer components and functionality
as identified in Step 2A(i), supra, and none of the limitations integrate the
judicial exception of predicting revenue metrics for one or more keywords
into a practical application as determined under one or more of the MPEP
sections cited above. The claim as a whole merely uses instructions to
implement the abstract idea on a computer or, alternatively, merely uses a
computer as a tool to perform the abstract idea.
Under analogous circumstances, the Federal Circuit has held that
“[t]his is a quintessential ‘do it on a computer’ patent: it acknowledges that
[such] data . . . was previously collected, analyzed, manipulated, and
displayed manually, and it simply proposes doing so with a computer. We
have held such claims are directed to abstract ideas.” Univ. of Fla. Research
Found., Inc. v. Gen. Elec. Co., 916 F.3d 1363, 1367 (Fed. Cir. 2019); see
also Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1351 (Fed. Cir.
2016) (“Though lengthy and numerous, the claims do not go beyond
requiring the collection, analysis, and display of available information in a
particular field, stating those functions in general terms, without limiting
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them to technical means for performing the functions that are arguably an
advance over conventional computer and network technology.”).
Therefore, the claim as a whole merely uses instructions to implement
the abstract idea on a computer or, alternatively, merely uses a computer as a
tool to perform the abstract idea. Thus, on this record, Appellant has not
shown an improvement or practical application under the guidance of MPEP
section 2106.05(a) (“Improvements to the Functioning of a Computer or to
Any Other Technology or Technical Field”) or section 2106.05(e)(“Other
Meaningful Limitations”). Nor does Appellant advance any arguments in
the Brief(s) that are directed to the Bilski machine-or-transformation test,
which would only be applicable to the method (process) claims on appeal.
See MPEP §§ 2106.05(b) (Particular Machine) and 2106.05(c) (Particular
Transformation).
Therefore, we conclude the abstract idea is not integrated into a
practical application, and thus the claim is directed to the judicial exception.
Step 2B – “Inventive Concept” or “Significantly More”
If the claims are directed to a judicial exception, and not integrated
into a practical application, as we conclude above, we proceed to the
“inventive concept” step. For Step 2B we must “look with more specificity
at what the claim elements add, in order to determine ‘whether they identify
an “inventive concept” in the application of the ineligible subject matter’ to
which the claim is directed.” Affinity Labs of Tex., LLC v. DIRECTV, LLC,
838 F.3d 1253, 1258 (Fed. Cir. 2016).
In applying step two of the Alice analysis, our reviewing court guides
we must “determine whether the claims do significantly more than simply
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describe [the] abstract method” and thus transform the abstract idea into
patentable subject matter. Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709,
715 (Fed. Cir. 2014). We look to see whether there are any “additional
features” in the claims that constitute an “inventive concept,” thereby
rendering the claims eligible for patenting even if they are directed to an
abstract idea. Alice, 573 U.S. at 221. Those “additional features” must be
more than “well-understood, routine, conventional activity.” Mayo, 566
U.S. at 79.
Limitations referenced in Alice that are not enough to qualify as
“significantly more” when recited in a claim with an abstract idea include, as
non-limiting or non-exclusive examples: adding the words “apply it” (or an
equivalent) with an abstract idea17; mere instructions to implement an
abstract idea on a computer18; or requiring no more than a generic computer
to perform generic computer functions that are well-understood, routine and
conventional activities previously known to the industry.19
With respect to this step of the analysis, Appellant argues:
Appellant submits that even assuming arguendo that
claim 1 is directed to a judicial exception, which it is not, the
claims are nonetheless patent eligible. At least one reason is
because the claim includes a specific limitation or a
combination of limitations that are not well understood, routine,
or conventional. Specifically, claim 1 recites features of a

17 Alice, 573 U.S. at 221–23.
18 Alice, 573 U.S. at 222–23, e.g., simply implementing a mathematical
principle on a physical machine, namely a computer.
19 Alice, 573 U.S. at 225 (explaining using a computer to obtain data, adjust
account balances, and issue automated instructions involves computer
functions that are well-understood, routine, conventional activities).
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method that solve a particular technological problem present in
conventional systems, namely the problem of generating a
search result based on metrics that are predicted using an
ensemble model that is formed based on a historical model and
a user behavior model. The manner in which this technological
problem is solved is recited in the steps of claim 1.
Appeal Br. 23.
However, we note Appellant does not point to any specific limitation
or limitations that might arguably be construed as offering significantly
more than the abstract ideas recited in claim 1.
Evaluating representative claim 1 under step 2 of the Alice analysis,
we conclude it lacks an inventive concept that transforms the abstract idea of
predicting revenue metrics for one or more keywords into a patent-eligible
application of that abstract idea.
The patent eligibility inquiry may contain underlying issues of fact.
Mortg. Grader, Inc. v. First Choice Loan Servs. Inc., 811 F.3d. 1314, 1325
(Fed. Cir. 2016). In particular, “[t]he question of whether a claim element or
combination of elements is well-understood, routine and conventional to a
skilled artisan in the relevant field is a question of fact.” Berkheimer v. HP
Inc., 881 F.3d 1360, 1368 (Fed. Cir. 2018).
As evidence of the conventional nature of the recited “computing
device,” and “network” in method claim 1, the Specification discloses:
[0026] The computing device 102, for instance, may be
configured as a desktop computer, a laptop computer, a mobile
device (e.g., assuming a handheld configuration such as a tablet
or mobile phone), and so forth. . . .
[0043] The network 114, meanwhile, represents any one or
combination of multiple different types of wired and/or wireless
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networks, such as cable networks, the Internet, private intranets,
and so forth. . . .
Spec. ¶¶ 26, 43.
Although not argued separately by Appellant, the variously recited
“modules” in system claim 8, and “means for” limitations in system claim
14 are also carried out by conventional computer components and
techniques. The Specification further describes these limitations:
[0025] Generally, any of the functions described herein can be
implemented using software, firmware, hardware (e.g., fixed
logic circuitry), or a combination of these implementations. The
terms “model,” “module,” “functionality,” and “logic” as used
herein generally represent software, firmware, hardware, or a
combination thereof. In the case of a software implementation,
the module, functionality, or logic represents program code that
performs specified tasks when executed on a processor (e.g.,
CPU or CPUs). The program code can be stored in one or more
computer readable memory devices. The features of the
techniques described below are platform-independent, meaning
that the techniques may be implemented on a variety of
commercial computing platforms having a variety of
processors, as further described in FIG. 6.
Spec. ¶ 25.
Thus, because the Specification describes the additional elements in
general terms, without describing the particulars, we conclude the claim
limitations may be broadly but reasonably construed as reciting conventional
computer components and techniques, particularly in light of Appellants’
Specification, as quoted above.20

20 Claim terms are to be given their broadest reasonable interpretation, as
understood by those of ordinary skill in the art and taking into account
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The MPEP, based upon our precedential guidance, provides additional
considerations with respect to analysis of the well-understood, routine, and
conventional nature of the recited computer-related components.
Another consideration when determining whether a claim
integrates a judicial exception into a practical application in
Step 2A Prong Two or recites significantly more than a judicial
exception in Step 2B is whether the additional elements amount
to more than a recitation of the words “apply it” (or an
equivalent) or are more than mere instructions to implement an
abstract idea or other exception on a computer. As explained by
the Supreme Court, in order to make a claim directed to a
judicial exception patent-eligible, the additional element or
combination of elements must do “‘more than simply stat[e] the
[judicial exception] while adding the words ‘apply it’”. Alice
Corp. v. CLS Bank, 573 U.S. 208, 221, 110 USPQ2d 1976,
1982-83 (2014) (quoting Mayo Collaborative Servs. V.
Prometheus Labs., Inc., 566 U.S. 66, 72, 101 USPQ2d 1961,
1965). Thus, for example, claims that amount to nothing more
than an instruction to apply the abstract idea using a generic
computer do not render an abstract idea eligible. Alice Corp.,
573 U.S. at 223, 110 USPQ2d at 1983. See also 573 U.S. at
224, 110 USPQ2d at 1984 (warning against a § 101 analysis
that turns on “the draftsman’s art”).
. . . . In Alice Corp., the claim recited the concept of
intermediated settlement as performed by a generic computer.
The Court found that the recitation of the computer in the claim
amounted to mere instructions to apply the abstract idea on a
generic computer. 573 U.S. at 225-26, 110 USPQ2d at 1984.
The Supreme Court also discussed this concept in an earlier
case, Gottschalk v. Benson, 409 U.S. 63, 70, 175 USPQ 673,
676 (1972), where the claim recited a process for converting
binary-coded-decimal (BCD) numerals into pure binary
numbers. The Court found that the claimed process had no

whatever enlightenment may be had from the Specification. In re Morris,
127 F.3d 1048, 1054 (Fed. Cir. 1997).
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meaningful practical application except in connection with a
computer. Benson, 409 U.S. at 71-72, 175 USPQ at 676. The
claim simply stated a judicial exception (e.g., law of nature or
abstract idea) while effectively adding words that “apply it” in a
computer. Id.
MPEP § 2106.05(f) (“Mere Instructions To Apply An Exception”).
We conclude the claims fail the Step 2B analysis because claim 1, in
essence, merely recites various computer-based elements along with no
more than mere instructions to implement the identified abstract idea using
the computer-based elements.
Therefore, in light of the foregoing, we conclude, under the Revised
Guidance, that each of Appellant’s claims 1–4, 7, 8, 10–18, and 20–24, each
considered as a whole, is directed to a patent-ineligible abstract idea that is
not integrated into a practical application and does not include an inventive
concept. Accordingly, we sustain the Examiner’s § 101 rejection of
independent claim 1, and grouped claims 2–4, 7, 8, 10–18, and 20–24 which
fall therewith. See Claim Grouping, supra.
REPLY BRIEF
To the extent Appellant may advance new arguments in the Reply
Brief (Reply Br. 2–7) not in response to a shift in the Examiner’s position in
the Answer, arguments raised in a Reply Brief that were not raised in the
Appeal Brief or are not responsive to arguments raised in the Examiner’s
Answer will not be considered except for good cause (see 37 C.F.R.
§ 41.41(b)(2)), which Appellant has not shown.
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CONCLUSIONS
Under our Revised Guidance, governed by relevant case law,
Appellant has not persuasively argued that the Examiner erred in rejecting
claims 1–4, 7, 8, 10–18, and 20–24 as being patent ineligible under 35
U.S.C. § 101, and we sustain the rejection.
DECISION SUMMARY
Claims
Rejected
35 U.S.C.
§
Basis /
References Affirmed Reversed
1–4, 7–8, 10–18,
20–24 101
Eligibility 1–4, 7–8, 10–18, 20–24
FINALITY AND 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)(1)(iv). See 37
C.F.R. § 41.50(f).
AFFIRMED