Adobe Inc.

Patent Trials and Appeals Board

Jan 1, 2021

2020003484 (P.T.A.B. Jan. 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.
13/691,442 11/30/2012 Abhishek Pani 058083-0857904
(2586US01)
4788
72058 7590 01/01/2021
Adobe / Kilpatrick Townsend & Stockton LLP
Mailstop: IP Docketing - 22
1100 Peachtree Street, Suite 2800
Suite 2800
Atlanta, GA 30309-4530
EXAMINER
CIRNU, ALEXANDRU
ART UNIT PAPER NUMBER
3622
NOTIFICATION DATE DELIVERY MODE
01/01/2021 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):
KTSDocketing2@kilpatrick.foundationip.com
ipefiling@kilpatricktownsend.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
________________

Ex parte ABHISHEK PANI, DAVIDE IMPERATI, and
ZHENYU YAN
________________

Appeal 2020-003484
Application 13/691,442
Technology Center 3600
________________

Before ST. JOHN COURTENAY III, JASON J. CHUNG, and
SCOTT E. BAIN, Administrative Patent Judges.

CHUNG, Administrative Patent Judge.

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals the Final Rejection
of claims 1–20. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.2
INVENTION
The invention relates to leveraging a hierarchical structure of online
advertisements to generate a robust advertiser-side creative quality score.
Spec. ¶ 8. Claim 1 is illustrative of the invention and is reproduced below.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. According to Appellant, Adobe Inc. is the real party in
interest. Appeal Br. 1.
2 Our panel rendered a decision in this application file previously on
December 4, 2018.
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The emphasized text denotes the abstract idea discussed infra in sections C
and D.
1. A computer implemented method for estimating
performance of online advertisement creatives included in an on-
line advertising campaign, the method comprising:
receiving and storing, at an advertisement server,
performance data for a plurality of online advertisement
creatives in an on-line advertising campaign, the performance
data indicating measurements of user interactions with
respective ones of the plurality of online advertisement creatives,
the measurements including one or more of a click through rate,
a conversion rate, revenue per click, revenue per impression, and
click per impression;
generating, by a model generator implemented on the
advertisement server, a hierarchical model of the plurality of
online advertisement creatives based on respective correlations
among the plurality of online advertisement creatives, the
hierarchical model comprising first level including the plurality
of online advertisement creatives and a second level including a
plurality of advertisement groups;
selecting, from among at least two of the plurality of
advertisement groups, a subset of the plurality of online
advertisement creatives;
estimating, by a performance estimator, performance
values for creatives in the subset of the plurality of online
advertisement creatives by:
aggregating the received performance data at the first
level of the hierarchical model to obtain baseline estimates of
predicted performance values for other ones of the plurality of
online advertisement creatives not in the subset; and
propagating the baseline estimates to the second level of
the hierarchical model to improve estimated performance values
at the second level, wherein the estimated performance values
include one or more of an estimated click through rate, an
estimated conversion rate, an estimated revenue per click, an
estimated revenue per impression, and an estimated click per
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impression for each creative in the subset of the plurality of
online advertisement creatives;
calculating, by a scoring module, a creative quality score
for each of the online advertisement creatives by aggregating the
estimated performance values;
modifying the on-line advertising campaign by
automatically deactivating online advertisement creatives
having creative quality scores that are below a threshold value;
and
periodically, by the scoring module, updating the creative
quality score for each of the online advertisement creatives
based on updated performance data received at the
advertisement server, wherein periodically updating the creative
quality score includes periodically modifying the on-line
advertising campaign by automatically deactivating additional
online advertisement creatives having updated creative quality
scores that are below the threshold value.
Appeal Br. 17–18 (Claims Appendix) (emphases added).

REJECTION
The Examiner rejects claims 1–20 under 35 U.S.C. § 101 as being
directed to patent-ineligible subject matter. Final Act. 2–4.
ANALYSIS
Claims 1–20 Rejected Under 35 U.S.C. § 101
A. Principles of Law
Inventions for a “new and useful process, machine, manufacture, or
composition of matter” generally constitute patent-eligible subject matter.
35 U.S.C. § 101. However, the U.S. Supreme Court has long interpreted
35 U.S.C. § 101 to include implicit exceptions: “[l]aws of nature, natural
phenomena, and abstract ideas” are not patentable. Alice Corp. v. CLS Bank
Int’l, 573 U.S. 208, 216 (2014).
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In determining whether a claim falls within an excluded category, we
are guided by the Court’s two-step framework, described in Mayo
Collaborative Services v. Prometheus Laboratories, Inc., 566 U.S. 66
(2012), and Alice. Alice, 573 U.S. at 217–18 (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 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” (Diamond v. Diehr, 450 U.S. 175, 191
(1981)); “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))).
In Diehr, the claim at issue recited a mathematical formula, but the
Court held that “a claim drawn to subject matter otherwise statutory does not
become nonstatutory simply because it uses a mathematical formula.”
Diehr, 450 U.S. at 187; see also id. at 191 (“We view respondents’ claims as
nothing more than a process for molding rubber products and not as an
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attempt to patent a mathematical formula.”). Having said that, the Court
also indicated that a claim “seeking patent protection for that formula in the
abstract . . . is not accorded the protection of our patent laws, and this
principle cannot be circumvented by attempting to limit the use of the
formula to a particular technological environment.” Id. at 191 (citing
Benson and Flook); see also, 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 (internal quotation marks
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 Section 101 Guidance
In January 2019, the U.S. Patent and Trademark Office (“USPTO”)
published revised guidance on the application of 35 U.S.C. § 101. See
2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50
(Jan. 7, 2019) (“2019 Guidance”), updated by USPTO, October 2019
Update: Subject Matter Eligibility (available at https://www.uspto.gov/sites/
default/files/documents/peg_oct_2019_update.pdf) (“Update”); see also
October 2019 Patent Eligibility Guidance Update, 84 Fed. Reg. 55942 (Oct.
18, 2019) (notifying the public of the availability of the Update). “All
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USPTO personnel are, as a matter of internal agency management, expected
to follow the guidance.” 2019 Guidance, 84 Fed. Reg. at 51; see also
October 2019 Guidance Update at 1. The Manual of Patent Examining
Procedure (“MPEP”) now incorporates this revised guidance and subsequent
updates at Section 2106 (9th ed. Rev. 10.2019, rev. June 2020).3
Under MPEP § 2106, we first look to whether the claim recites the
following:
(1) any judicial exceptions, including certain groupings of abstract
ideas (i.e., mathematical concepts, certain methods of organizing
human activities such as a fundamental economic practice, or mental
processes); and
(2) additional elements that integrate the judicial exception into a
practical application.4
MPEP §§ 2106.04(a), (d).
Only if a claim (1) recites a judicial exception and (2) does not
integrate that exception into a practical application, do we then look to
whether the claim:
(3) adds a specific limitation beyond the judicial exception that is not
“well-understood, routine, [and] conventional activity” in the field; or

3 All references to the MPEP are to the Ninth Edition, Revision 10.2019
(Last Revised June 2020), unless otherwise indicated.
4 “Examiners evaluate integration into a practical application by
(a) identifying whether there are any additional elements recited in the claim
beyond the judicial exception, and (b) evaluating those additional elements
individually and in combination to determine whether the claim as a whole
integrates the exception into a practical application.” MPEP § 2106.04(d)II.
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(4) simply appends well-understood, routine, conventional activities
previously known to the industry, specified at a high level of
generality, to the judicial exception.
MPEP § 2106.05(d).
C. The Examiner’s Rejection and Appellant’s Arguments
The Examiner concludes the present claims recite certain methods of
organizing human activity. Ans. 3; Final Act 2. The Examiner concludes
the present claims are not integrated into a practical application and there are
no limitations recited in the present claims that add significantly more to the
abstract idea. Ans. 6–7, 10, 13–14; Final Act. 3, 5, 7. The Examiner
determines the present claims do not amount to significantly more than an
abstract idea itself because the abstract idea is implemented using additional
elements that are well-understood, routine, and conventional. Ans. 4 (citing
Spec. ¶¶ 69–71, Fig. 5).
Appellant argues that the present claims recite an improvement of the
functioning of the computer. Appeal Br. 8 (citing McRO, Inc. v. Bandai
Namco Games Am. Inc., 837 F.3d 1299 (Fed. Cir. 2016)); Reply Br. 2, 10–
11 (citing Spec. ¶ 8). Appellant further argues the present claims are
necessarily rooted in computer technology to solve Internet-centric
problems. Appeal Br. 12–13 (citing DDR Holdings, LLC v. Hotels.com,
L.P., 773 F.3d 1245 (Fed. Cir. 2014)); Reply Br. 6–9. Appellant argues the
present claims do not preempt any abstract idea. Appeal Br. 13; Reply Br. 7.
Appellant argues the present claims recite a non-conventional and non-
generic arrangement of known, conventional elements, which results in an
inventive concept. Appeal Br. 14–15 (citing BASCOM Global Internet
Services, Inc. v. AT&T Mobility LLC, 827 F.3d 1341 (Fed. Cir. 2016));
Reply Br. 9. Appellant argues the Examiner does not provide the evidence
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required by Berkheimer to support a determination that the additional
elements are well-understood, routine, or conventional. Appeal Br. 8–11
(citing Berkheimer v. HP Inc., 881 F.3d 1360 (Fed. Cir. 2018)); Reply Br. 3–
6. We disagree with Appellant.
D. Step 2A, Prong 1
Patent eligibility under 35 U.S.C. § 101 is a question that we resolve
pursuant to the MPEP §§ 2106.04(a), (d). The emphasized portions of claim
1, reproduced above (see supra at 2–3)5, recite commercial interactions
(including advertising) because they pertain to techniques that filter
unwanted communications from user devices and thereby improves the
allocation of network and processing resources with respect to electronic
content delivery systems; receiving performance data for a plurality of
online advertisement creatives in an on-line advertising campaign;
calculating creative quality scores for the online advertisement creatives by
aggregating the estimated performance values; modifying an on-line
advertising campaign by automatically deactivating online advertisement
creatives having creative quality scores that are below a threshold value;
periodically updating the creative quality score for each of the online
advertisement creatives based on updated performance data received at the
advertisement server, which Appellant concedes (see Appeal Br. 7). See
MPEP §§ 2106.04(a), (d). Commercial interactions (including advertising)
fall into the category of certain methods of organizing human activity. Id.
Certain methods of organizing human activity are a type of abstract idea. Id.
In addition, the present claims recite “estimating” and “calculating,”

5 We determine that the “receiving and storing” limitation amounts to
insignificant extra-solution activities.
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which are concepts performed in the human mind (including an observation,
evaluation, judgment, opinion). See MPEP §§ 2106.04(a), (d). Concepts
performed in the human mind (including an observation, evaluation,
judgment, opinion) fall into the category of mental processes. Id. Mental
processes are a type of abstract idea. Id.
In addition, the “calculating” limitation, which recites mathematical
calculations. See MPEP §§ 2106.04(a), (d). Mathematical calculations fall
into the category of mathematical concepts. Id. Mathematical concepts are
a type of abstract idea. Id.
We must still determine whether the abstract idea is integrated into a
practical application, namely whether the claim applies, relies on, or uses the
abstract idea in a manner that imposes a meaningful limit on the abstract
idea, such that the claim is more than a drafting effort designed to
monopolize the abstract idea. See MPEP §§ 2106.04(a), (d). We therefore
(1) identify whether there are any additional recited elements beyond the
abstract idea, and (2) evaluate those elements both individually and
collectively to determine whether they integrate the exception into a
practical application. See id.
Accordingly, we proceed to Prong 2.
E. Step 2A, Prong 2
Here, the elements in the present claims used to implement the
abstract idea are the “advertisement server,” “model generator,”
“performance estimator,” “scoring module,”6 “receiving component,”7

6 This feature is recited in claims 1 and 12, but not recited in claim 17.
7 This feature is recited in claim 17, but not recited in claims 1 and 12.
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“scoring component,”8 and “data store.”9 See MPEP §§ 2106.04(a), (d).
The additional elements of the present claims do not integrate the abstract
idea into a practical application because they do not impose any meaningful
limits on practicing the abstract idea for the following reasons.
Appellant does not identify persuasively how the Specification sets
forth an improvement in technology. Appeal Br. 8 (citing McRO, Inc. v.
Bandai Namco Games Am. Inc., 837 F.3d 1299 (Fed. Cir. 2016)); Reply Br.
2, 10–11 (citing Spec. ¶ 8). The MPEP, which incorporates the Update
addresses how we consider evidence of improvement that is presented to us.
The Update states:
[T]he evaluation of Prong Two requires the use of the
considerations (e.g. improving technology, effecting a particular
treatment or prophylaxis, implementing with a particular
machine, etc.) identified by the Supreme Court and the Federal
Circuit, to ensure that the claim as a whole integrates [the]
judicial exception into a practical application [that] will apply,
rely on, or use 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.
MPEP §§ 2106.04(a), (d) (citing Update 11 (emphases added)). The Update
further states:
During examination, the examiner should analyze the
“improvements” consideration by evaluating the specification
and the claims to ensure that a technical explanation of the
asserted improvement is present in the specification, and that the
claim reflects the asserted improvement. Generally, examiners
are not expected to make a qualitative judgment on the merits of
the asserted improvement. If the examiner concludes the
disclosed invention does not improve technology, the burden

8 This feature is recited in claim 17, but not recited in claims 1 and 12.
9 This feature is recited in claim 17, but not recited in claims 1 and 12.
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shifts to applicant to provide persuasive arguments supported by
any necessary evidence to demonstrate that one of ordinary skill
in the art would understand that the disclosed invention improves
technology. Any such evidence submitted under 37 C.F.R.
§ 1.132 must establish what the specification would convey to
one of ordinary skill in the art and cannot be used to supplement
the specification. For example, in response to a rejection under
35 U.S.C. § 101, an applicant could submit a declaration under
§ 1.132 providing testimony on how one of ordinary skill in the
art would interpret the disclosed invention as improving
technology and the underlying factual basis for that conclusion.
MPEP §§ 2106.04(a), (d) (citing Update 13 (emphasis added)).
We, therefore, focus on any evidence Appellant cites in its briefs, as
discussed in the Update. Appellant refers us to paragraph 8 of the
Specification. Appeal Br. 8 (citing McRO, Inc. v. Bandai Namco Games
Am. Inc., 837 F.3d 1299 (Fed. Cir. 2016)); Reply Br. 2, 10–11 (citing Spec.
¶ 8). However, paragraph 8 discusses leveraging a hierarchical structure of
online advertisements to generate a robust advertiser-side creative quality
score, which is an abstract idea as discussed supra in § D. Spec. ¶ 8.
At best, this is an improvement to certain methods of organizing
human activity (i.e., an abstract idea as discussed supra in § D). Id.; see,
e.g., Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1151 (Fed.
Cir. 2016) (“[A] claim for a new abstract idea is still an abstract idea.”).
“[U]nder the Mayo/Alice framework, a claim directed to a newly discovered
law of nature (or natural phenomenon or abstract idea) cannot rely on the
novelty of that discovery for the inventive concept necessary for patent
eligibility . . . .” Genetic Techs. Ltd. v. Merial L.L.C., 818 F.3d 1369, 1376
(Fed. Cir. 2016) (citations omitted).
Furthermore, the additional elements in the present claims, namely
“advertisement server,” “model generator,” “performance estimator,”
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“scoring module,” “receiving component,” “scoring component,” and “data
store” do not, either individually or in combination, integrate the abstract
idea into a practical application. In particular, Appellant’s Specification
discloses that these elements encompass generic computer components.
Spec. ¶¶ 18, 28–29, Fig. 1. Merely adding generic computer components to
perform abstract ideas does not integrate those ideas into a practical
application. See MPEP §§ 2106.04(a), (d) (citing 2019 Revised Guidance,
84 Fed. Reg. at 55 (identifying “merely includ[ing] instructions to
implement an abstract idea on a computer” as an example of when an
abstract idea has not been integrated into a practical application)).
We disagree with Appellant’s argument that the present claims recite
an improvement the functioning of the computer by providing rules relating
specifically to the use of patent prosecution information and the ability to
interact with a user to provide the patent prosecution information. Appeal
Br. 8 (citing McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299
(Fed. Cir. 2016)); Reply Br. 2, 10–11 (citing Spec. ¶ 8).
The subject claim considered by the McRO court concerned a method
for automatically animating lip synchronization and facial
expressions. McRO, 837 F.3d at 1303. The McRO court concluded the
subject claims did not recite an abstract idea because the computer animation
improved the prior art through the use of rules, rather than artists, to set
morph weights and transitions between phonemes. Id. at 1308. Thus, the
claimed invention in McRO allowed for computer performance of animation
steps that previously had to be performed by human animators. Id. at
1313. Notably, the court in McRO determined that the process required by
the claims was not a process previously used by human animators. Id. at
1314. As such, the court determined that the present claims were “unlike
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Flook, Bilski, and Alice, where the claimed computer-automated process and
the prior art method were carried out in the same way.” Id. at 1314–15
(emphasis added). Therefore, the subject claims in McRO used “limited
rules in a process specifically designed to achieve an improved technological
result” over “existing, manual 3–D animation techniques.” Id. at
1316. Here, in contrast to McRO, the present claims do not recite a
computer-automated process that uses rules for animators unlike those
previously employed by humans or a similar type of improvement. Rather,
the present claims recite certain methods of organizing human activity (i.e.,
an abstract idea as discussed supra in § D.).
We disagree with Appellant’s argument that the present claims are
necessarily rooted in computer technology to solve Internet-centric
problems. Appeal Br. 12–13 (citing DDR Holdings, LLC v. Hotels.com,
L.P., 773 F.3d 1245 (Fed. Cir. 2014)); Reply Br. 6–9. The subject claim
considered by the DDR court pertained to a visitor of a host’s website
clicking on an advertisement for a third-party product displayed on the
host’s website, whereby the visitor is no longer being transported to the third
party’s website. DDR Holdings, 773 F.3d at 1257. In DDR, instead of
losing visitors to the third-party’s website, the host website can send its
visitors to a web page on an outsource provider’s server that (1) incorporates
“look and feel” elements from the host website and (2) provides visitors with
the opportunity to purchase products from the third-party merchant without
actually entering that merchant’s website. Id. at 1257–58.
Here, in contrast to the claims of DDR Holdings, the present claims
are not necessarily rooted in computer technology to solve Internet-centric
problems. See DDR Holdings, 773 F.3d at 1257. Unlike DDR Holdings,
Appellant’s device is not claimed as solving or otherwise addressing an
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Internet-centric problem, but rather is directed to an abstract idea as
discussed supra in § D.
Appellant’s arguments that the present claims do not preempt any
abstract idea (Appeal Br. 13; Reply Br. 7) do not persuade us that the claims
are patent eligible. Although preemption may denote patent ineligibility, its
absence does not demonstrate patent eligibility. See FairWarning IP, LLC v.
Iatric Sys., Inc., 839 F.3d 1089, 1098 (Fed. Cir. 2016). For claims covering
a patent-ineligible concept, preemption concerns “are fully addressed and
made moot” by an analysis under the Mayo/Alice framework. Ariosa
Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015).
We, therefore, conclude that the additional elements, whether
considered individually or as an ordered combination, do not integrate the
abstract idea into a practical application because the additional elements are
generic computer components that do not impose meaningful limits on
practicing the abstract idea.
Appellant does not make any other arguments pertaining to Step 2A,
Prong 2. Because we determine that the present claims recite an abstract
idea that is not integrated into a practical application, we proceed to Step 2B.
F. Step 2B
We disagree with Appellant’s argument that the Examiner does not
provide the evidence required by Berkheimer to support a determination that
the additional elements are well-understood, routine, or conventional.
Appeal Br. 8–11 (citing Berkheimer v. HP Inc., 881 F.3d 1360 (Fed. Cir.
2018)); Reply Br. 3–6.
The Examiner determines the present claims do not amount to
significantly more than an abstract idea itself because the abstract idea is
implemented using additional elements that are well-understood, routine,
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and conventional. Ans. 4 (citing Spec. ¶¶ 69–71, Fig. 5).
Notably, Appellant does not rebut paragraphs 69–71 of the
Specification with particularity. Compare Reply Br. 3–6 (lacking a specific
rebuttal of Spec. ¶¶ 69–71, Fig. 5) with Ans. 4 (citing Spec. ¶¶ 69–71, Fig.
5). Furthermore, the Specification indicates that the additional elements
(i.e., “advertisement server,” “model generator,” “performance estimator,”
“scoring module,” “receiving component,” “scoring component,” and “data
store”) are nothing more than generic computer components. Spec. ¶¶ 18,
28–29, Fig. 1. Appellant’s Specification indicates these additional elements
were well-understood, routine, and conventional components because it
describes them at a high level of generality and in a manner that indicates
that they are sufficiently well-known. Id.
We agree with the Examiner that the additional elements, either
individually or in combination, do not amount to an inventive concept. Ans.
8. An inventive concept “cannot be furnished by the unpatentable law of
nature (or natural phenomenon or abstract idea) itself.” Genetic, 818 F.3d at
1376; see also 2019 Revised Guidance; Alice, 573 U.S. at 217 (explaining
that, after determining a claim is directed to a judicial exception, “we then
ask, ‘[w]hat else is there in the claims before us?”’ (alteration in original)
(quoting Mayo, 566 U.S. at 78)). Instead, an “inventive concept” is
furnished by an element or combination of elements that is recited in the
claim in addition to the judicial exception and sufficient to ensure the claim,
as a whole, amounts to significantly more than the judicial exception itself.
Alice, 573 U.S. at 218–19 (citing Mayo, 566 U.S. at 72–73); see BSG Tech
LLC v. BuySeasons, Inc., 899 F.3d 1281, 1290 (Fed. Cir. 2018) (explaining
that the Supreme Court in Alice “only assessed whether the claim limitations
other than the invention’s use of the ineligible concept to which it was
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directed were well-understood, routine and conventional” (emphasis
added)).
Appellant’s citation to BASCOM is unavailing. Appeal Br. 14–15
(citing BASCOM Global Internet Services, Inc. v. AT&T Mobility LLC, 827
F.3d 1341 (Fed. Cir. 2016)); Reply Br. 9. As an initial matter, Appellant’s
argument appears misplaced because all of the features recited, with the
exception of the additional elements identified above, are directed to the
abstract idea, as discussed supra.
Moreover, in BASCOM, the claims were directed to “a filter
implementation versatile enough that it could be adapted to many different
users’ preferences while also installed remotely in a single location.”
BASCOM, 827 F.3d at 1348–51. The inventive concept was “the installation
of a filtering tool at a specific location, remote from the end-users, with
customizable filtering features specific to each end user” that “gives the
filtering tool both the benefits of a filter on a local computer and the benefits
of a filter on the [Internet Service Provider] server.” Id. at 1350. Thus,
when considered as an ordered combination, the Federal Circuit concluded
the claims provided “an inventive concept can be found in the non-
conventional and non-generic arrangement of known, conventional pieces.”
Id. Here, the present claims recite an abstract idea using additional elements
that are generic computer components as discussed supra, or at best,
improving an abstract idea—not an inventive concept. Accordingly,
Appellant’s assertion fails to identify error in the Examiner’s analysis.
For at least the above reasons, we conclude that each of the present
claims, 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. We, therefore, sustain the Examiner’s rejection of:
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(1) independent claims 1, 12, and 17; and (2) dependent claims 2–11, 13–16,
and 18–20 under § 101.
We have only considered those arguments that Appellant actually
raised in the Briefs. Arguments Appellant could have made, but chose not to
make, in the Briefs have not been considered and are deemed to be waived.
See 37 C.F.R. § 41.37(c)(1)(iv).

CONCLUSION

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. § 1.136(a)(1)(iv).

AFFIRMED

Claim(s)
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–20 101 Eligibility 1–20