Anand Subramanian et al.

Patent Trials and Appeals Board

Feb 26, 2021

2020000872 (P.T.A.B. Feb. 26, 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.
11/627,902 01/26/2007 Anand Subramanian PUL-P13-11 2821
134513 7590 02/26/2021
Cambridge Technology Law LLC
P.O. Box 590638
Newton, MA 02459-0006
EXAMINER
DAGNEW, SABA
ART UNIT PAPER NUMBER
3682
MAIL DATE DELIVERY MODE
02/26/2021 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ANAND SUBRAMANIAN and SHANTHI SARKAR1
Appeal 2020-000872
Application 11/627,902
Technology Center 3600
Before DONALD E. ADAMS, ERIC B. GRIMES, and
TAWEN CHANG, Administrative Patent Judges.
GRIMES, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) involving claims “relat[ed]
to managing and delivering Internet advertising” (Spec. 1:11), which have
been rejected as lacking adequate written description, being obvious, and
being directed to patent ineligible subject matter. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.

1 Appellant identifies the real party in interest as PulsePoint, Inc. Appeal
Br. 4. We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42.
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STATEMENT OF THE CASE
Appellant’s invention relates to
[a] method and system to operate an Internet-based exchange
that offers commoditized Ad Media. The system receives the
identity of Ad Media from a publisher, automatically classifies
the Ad Media so as to associate the classified Ad Media with
other like Ad Media and groups the associated Ad Media into
buckets forming a commoditized Ad Media, which is offered
for purchase or sale over the Internet as tradeable units on the
exchange.
Spec., Abstract.
Claims 13, 15, 17, and 19–38 are on appeal. Claim 28, reproduced
below, is illustrative:
28. A method, comprising the steps of:
by a computer operated as a marketplace for trading of
internet advertising, continuously receiving from a plurality of
current owners of future internet advertising inventory, data
indicating future internet advertising inventory currently owned
by the respective owners offered for sale to advertisers, future
internet advertising inventory being media space at one or more
internet publishers for future use and available for sale to
advertisers, and automatically by computer, substantially as the
future internet advertising inventory data are received,
classifying the received future internet advertising inventory
into buckets of future internet advertising inventory, each
bucket having one or more corresponding attributes, the
automatic classification of received future internet advertising
inventory into the buckets being based on matching attributes of
respective buckets, and storing, into a computer-readable,
nontransitory memory and for a nontransitory time, records of
the classified future internet advertising inventory as available
for sale to buyers of corresponding buckets of future internet
advertising inventory;
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at the marketplace computer, receiving from buyers
requests for purchase of future internet advertising inventory,
the requests having corresponding classification attributes;
by computer, matching the requested purchase attributes
to one or more respective bucket attributes, and when a buyer
and a seller reach agreement for purchase and sale of future
internet advertising inventory, recording transfer of ownership
of the future internet advertising inventory from the agreed
seller to the agreed buyer.

Claim 38 is the only other independent claim, and is directed to an “ad
exchange marketplace system” comprising a processor and a memory storing
programs that cause the processor to carry out the method of claim 28.
The claims stand rejected as follows:
Claims 13, 15, and 19–38 under 35 U.S.C. § 112, first paragraph, for
lack of adequate written description (Final Action2 2);
Claims 13, 15, 19–26, 28–35, 37, and 38 under 35 U.S.C. § 103(a) as
obvious based on Sagalyn,3 Ozer,4 and Llach5 (Final Action 12);
Claims 17, 27, and 36 under 35 U.S.C. § 103(a) as obvious based on
Sagalyn, Ozer, Llach, and Hsu6 (Final Action 30); and
Claims 13, 15, 17, and 19–38 under 35 U.S.C. § 101 as directed to
patent ineligible subject matter (Final Action 5).

2 Office Action mailed Nov. 6, 2017.
3 US 2006/0036490 A1; Feb. 16, 2006.
4 US 2003/0101454 A1; May 29, 2003.
5 US 2004/0186776 A1; Sept. 23, 2004
6 US 7,013,292 B1; Mar. 14, 2006.
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OPINION
New Matter
Claims 13, 15, and 19–38 stand rejected on the basis that
“continuously receiving from a plurality of current owners of future internet
advertising inventory” data indicating future internet advertising inventory
currently owned by the respective owners offered for sale to advertisers, as
recited in both of the independent claims, is new matter. Final Action 3. The
Examiner points out that the Specification states that “‘in one embodiment
the media ownership rules are updated after trades are executed in the
marketplace. These updates can be made continuously as the trades are
executed.’” Id., quoting Spec. ¶ 53. The Examiner finds, however, that this
disclosure does not provide support for the disputed limitation. Id.
We conclude that the Examiner has set out a prima facie case by
explaining what, in her view, is missing from the Specification’s written
description. See Hyatt v. Dudas, 492 F.3d 1365, 1370 (Fed. Cir. 2007)
(“When no such description can be found in the specification, the only thing
the PTO can reasonably be expected to do is to point out its nonexistence.”).
“The burden was then properly shifted to [the applicant] to cite to the
examiner where adequate written description could be found, or to make an
amendment to address the deficiency.” Id. at 1371.
Appellant argues that original claim 5 recited “[t]he method of claim 1,
wherein the classifying step occurs in real time as ad requests are received.”
Appeal Br. 16. Appellant argues that “[c]lassifying in ‘real time’ only makes
sense if the requests are ‘received’ by the classifying computer
‘continuously’ and substantially as they are sent by submitters.” Id. Similarly,
Appellant points to several references in the Specification to “real-time”
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classification or “real-time” categorization of ad requests. Id. at 16–17.
Appellant argues that “‘[r]eal-time’ categorization and classification only
makes sense if the ‘future internet advertising inventory’ data flowing into
the ‘real time’ classification is ‘continuous.’” Id. at 17.
This argument is unpersuasive, because “continuous” and “real-time”
are not synonymous. The definition of “continuous” is “without a pause or
interruption,” while the definition of “real-time” is “communicated, shown,
presented, etc. at the same time as events actually happen.”7 Thus, data can
be categorized “in real-time,” as described in the Specification, whether
those data are received continuously, periodically, or sporadically; all “real-
time” requires is that the data are categorized as they are received,
regardless of whether there are times when no data are received.
“Continuously,” on the other hand, requires the data to be received without
interruption, not periodically or sporadically.
Appellant also argues that “the claim does not use the word
‘continually’—there might well be hours during which the computer
operates, and hours when it doesn’t.” Appeal Br. 17. Similarly, Appellant
argues that “[t]he ‘broadest reasonable interpretation’ of ‘continuously’ is
that there is at least one time interval during which ‘receiving’ occurs.”
Reply Br. 3. Appellant argues that “‘[c]ontinuously’ might be a market
trading day, or might be a longer time (but it’s entirely irrational to interpret
the claim to require that the mechanism ‘continually, without interruption’
necessarily operate without holidays or maintenance interruptions).” Id.

7 See https://dictionary.cambridge.org/us/dictionary/english/continuous and
https://dictionary.cambridge.org/us/dictionary/english/real-time, last
accessed January 28, 2021.
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This argument is also unpersuasive. “[T]he words of a claim ‘are
generally given their ordinary and customary meaning.’” Phillips v. AWH
Corp., 415 F.3d 1303, 1312–13 (Fed. Cir. 2005). As discussed above, the
ordinary meaning of “continuous,” as defined in the dictionary, is “without a
pause or interruption,” which is consistent with the Examiner’s
interpretation of “continuously,” as recited in the claims.
“Without evidence in the patent specification of an express intent to
impart a novel meaning to a claim term, the term takes on its ordinary
meaning.” Optical Disc Corp. v. Del Mar Avionics, 208 F.3d 1324, 1334
(Fed. Cir. 2000). Appellant has not pointed to a narrower definition of
“continuously” in the Specification.
We therefore affirm the rejection of claims 13, 15, and 19–38 under
35 U.S.C. § 112, first paragraph, for lack of adequate written description.
Obviousness
Claims 13, 15, 19–26, 28–35, 37, and 38 stand rejected as obvious
based on Sagalyn, Ozer, and Llach. Claims 17, 27, and 36 stand rejected as
obvious based on Sagalyn, Ozer, Llach, and Hsu. The same issues are
dispositive for both rejections.
The Examiner finds that Sagalyn discloses a method meeting most of
the limitations of claim 28 (Final Action 12–14), but “does not explicitly
teach the corresponding received collection of advertisement for publication
is received continuously.” Id. at 14. The Examiner finds, however, that
“Ozer teaches continuously (paragraph [0050], discloses continuously
delivered to planning modules 12a–12n to update the scheduled adverting
[sic] inventory stored . . . ).” Id. The Examiner concludes that it would have
been obvious “to modify the collection of advertisement provided of
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Sagalyn with continually delivering to update the schedule adverting [sic]
inventory of Ozer in order to increase impression goal (See Ozer, paragraph
[0118]).” Id.
The Examiner finds that “[n]either Sagalyn nor Ozer explicitly teach
the corresponding advertisement package is determined based on received
request and matching the requested purchased attributes to one or more
respective buckets attributes.” Id. at 15. The Examiner finds that “Llach
teaches matching the requested purchased attributes to one or more
respective buckets attributes” and concludes that it would have been obvious
“to modify request, and/or negotiate to purchase one or more advertising
opportunities of Sagalyn and facilitate the needs to these advertiser and
maximize advertising revenue of Ozer with matching buying and selling
offers of Llach in order to bind[] both buyer and seller to a particular
campaign contract.” Id., citing Llach ¶¶ 22, 23, 41.
Appellant argues, among other things, that the Examiner has not
shown that a skilled artisan would have had a reason to combine Ozer and
Llach with Sagalyn. Appeal Br. 25–26. Appellant argues that “the Action
states a ‘motivation to combine,’ ‘to bind both buyer and seller to a
particular campaign contract (see Llach paragraph [0023]).’ (Action of
November 2017, page 15, last line). But this is superfluous—Sagalyn ’490
already ‘binds buyer and seller to a contract.’ (Sagalyn ’490 ¶ [0090]).” Id.
at 25.
With regard to Ozer, Appellant argues that the Examiner has not
provided “a proper showing of motivation to combine. First, ¶ [0050]
discusses historical data, not future data. Second, the relevant sentence of
¶ [0118] is about an entirely different thing than the ‘historical data’ of
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¶ [0050]. . . . ‘Motivation to combine’ must be specific to the specific
teachings to be combined.” Appeal Br. 26.
We agree with Appellant that the Examiner has not persuasively
shown that the method of claim 28, or the corresponding system of claim 38,
would have been obvious to a person of ordinary skill in the art based on
Sagalyn, Ozer, and Llach. Sagalyn discloses “systems and methods for
aggregating and marketing institution based advertising opportunities related
to fundraising events.” Sagalyn ¶ 7. Sagalyn discloses that the
advertisements involved include a web page; i.e., internet advertising. Id.
¶ 28.
The Examiner finds that Sagalyn teaches receiving data indicating
future internet advertising inventory in its disclosure that “advertising
opportunities aggregators may employ one or more controllers to automate
or partially automate the aggregation of advertising opportunities into a
market and/or a advertising opportunities package.” Sagalyn ¶ 31; see Final
Action 13. The Examiner finds that Ozer teaches continuously receiving
such data. Final Action 14.
Ozer discloses “a planning module . . . that enables broadcasters to
schedule campaigns of advertisements for one or more advertisers.” Ozer
¶ 16. As a disclosure of “continuously receiving . . . data indicating future
internet advertising inventory,” as required by the claims, the Examiner cites
the following passages in Ozer:
Each planning module 12a–12n utilizes a combination of
historical advertising inventory data and currently scheduled
advertisements to define an estimate[d] advertising inventory
and the availability of advertising impressions. The historical
advertising inventory data, in one configuration, is collected by
control module 16a–16n and periodically, sporadically, or
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continuously delivered to planning modules 12a–12n to update
the scheduled advertising inventory stored therein. . . .
* * *
. . . This prompt provides the user and/or advertiser with the
option of booking the campaign, canceling the campaign, or
adjusting the campaign. In the event that the user and/or
advertiser select [t]o adjust the campaign, planning module 12
and/or reservation module 32 automatically generates a list of
potential modifications to the advertising campaign. For
instance, planning module 12 and/or reservation module 32 can
break the overall campaign into hourly, daily, weekly, or the
like sub-campaigns and modify the impression goals for each
separate sub-campaign based upon the available advertising
inventory and achieving the impression goal for the overall
campaign, such as by increasing impression goals where there
is a surplus of advertising inventory to offset sub-campaigns
that have an impression goal deficiency.
Ozer ¶¶ 50, 118 (emphasis added).
We agree with Appellant that the Examiner has not adequately shown
that the cited disclosures would have made obvious “continuously receiving
. . . data indicating future internet advertising inventory,” as required by the
claims. As Appellant points out, the “continuous” process in Ozer that the
Examiner cites is the delivery of historical advertising inventory data, not
data indicating future internet advertising inventory as recited in the claims.
The Examiner’s statement of the rejection does not explain why continuous
reception of historical advertising inventory data would suggest instead
continuously receiving data indicating future advertising inventory. Nor does
the Examiner’s statement of the rejection adequately explain why Ozer’s
teaching, in paragraph 118, to break an overall advertising campaign into
sub-campaigns and adjust the impression goals for each sub-campaign, such
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as by increasing impression goals, would have suggested the limitation in
question.
In summary, we conclude that the Examiner has not persuasively
shown that the method of claim 28 and the system of claim 38 would have
been obvious based on Sagalyn, Ozer, and Llach. We reverse the rejection of
claims 13, 15, 19–26, 28–35, 37, and 38 under 35 U.S.C. § 103. For the
same reason, we reverse the rejection of dependent claims 17, 27, and 36
under 35 U.S.C. § 103 based on Sagalyn, Ozer, Llach, and Hsu.
Eligibility
Claims 13, 15, 17, and 19–38 under 35 U.S.C. § 101 on the basis that
“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.” Final Action 5. The Examiner finds that “[t]he claims recite
classifying continually received internet advertising inventory into the
buckets based on match[ing] attribute and storing for the future internet
adverting [sic] inventory . . .”. Ans. 9.8 The Examiner finds that this
“limitation falls within ‘Certain Methods Of Organizing Human Activity’
for managing personal behavior or relationships or interactions between
people,” which include “advertising, marketing or sales activities or
behaviors.” Id. at 9–10.
The Examiner also finds that “the only additional elements are
computer operated marketplace for trading the classified and received
advertising inventory and a computer-readable, non-transitory memory for

8 The Examiner updated the rationale of the § 101 rejection “based on the
January 2019 guidelines.” Ans. 9. Appellant responded to the updated
reasoning. Reply Br. 6–9.
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storing the classified internet adverting [sic] inventory . . . and matching the
request purchase attribute to one or more respective bucket attribute.” Id. at
10. The Examiner finds that the computer functions (and hardware for claim
38) are recited at a high level of generality, “such that it amounts [to] no
more than mere instructions to apply the exception using a generic computer
component.” Id. The Examiner concludes that “the claim as a whole
monopolizes the abstract idea of classifying the receiving internet adverting
[sic] when attribute matches with the buckets.” Id.
Finally, the Examiner finds that “[t]he claim does not include
additional elements that are sufficient to amount to significantly more than
the judicial exception” because “the additional element of using computer
operated marketplace and processor for trading the classified internet
advertising . . . amounts to no more than mere instructions to apply the
exception using a generic computer component, and using computer
operated to send and receive internet advertising inventory amount to
insignificant extra-solution activity.” Id. at 10–11.
The Examiner concludes that “[m]ere instructions to apply an
exception using a generic computer component, and adding insignificant
extra-solution activity to the judicial exception cannot provide an inventive
concept. The claims are not patent eligible.” Id. at 11.
Appellant argues that the claims do not recite one of the “methods of
organizing human activity” that fall within a judicial exception. Reply Br. 6–
7. Appellant also argues that the claimed method is an improvement to the
functioning of a computer or another technology, and therefore integrates
any abstract idea into a practical application. Id. at 7–8. Appellant also
argues that “specific limitations of claims 18 and 28 recite significant
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‘something more’ to confer eligibility under . . . step 2B.” Id. at 8. Finally,
Appellant argues that the rejection “relies on nothing more than the
Examiner’s personal opinion” regarding what is well-understood, routine,
and conventional in the art. Id. at 8–9.
Principles of Law
A. Section 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.
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. E.g., Alice Corp. v. CLS Bank Int’l, 573
U.S. 208, 216 (2014).
In determining whether a claim falls within an excluded category, we
are guided by the Court’s two-part framework, described in Mayo and Alice.
Id. at 217–18 (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc.,
566 U.S. 66, 75–77 (2012)). 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
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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 waterproof cloth, vulcanizing India
rubber, smelting ores” (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S.
252, 267–68 (1854))); 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
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. (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 (quotation marks omitted).
“A claim that recites an abstract idea must include ‘additional features’ to
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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 § 101. See 2019 Revised
Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019)
(“Revised Guidance”).9 “All USPTO personnel are, as a matter of internal
agency management, expected to follow the guidance.” Id. at 51; see also
October 2019 Update at 1.
Under the Revised Guidance and the October 2019 Update, 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”); and
(2) additional elements that integrate the judicial exception into a
practical application (see MPEP § 2106.05(a)–(c), (e)–(h) (9th ed.
Rev. 08.2017, Jan. 2018)) (“Step 2A, Prong Two”).10

9 In response to received 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”) (available at https://www.uspto.gov/sites/default/files/documents/
peg_oct_2019_update.pdf).
10 This evaluation is performed by (a) identifying whether there are any
additional elements recited in the claim beyond the judicial exception, and
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Revised Guidance, 84 Fed. Reg. at 52–55.
Only if a claim (1) recites a judicial exception and (2) does not
integrate that exception into a practical application, 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 (see MPEP
§ 2106.05(d)); 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.
Revised Guidance, 84 Fed. Reg. at 52–56.
Revised Guidance Step 2A, Prong 1
Following the Revised Guidance, we first consider whether the claims
recite a judicial exception. Claim 28 recites, among other steps,
“continuously receiving . . . data indicating future internet advertising
inventory . . . offered for sale to advertisers,” “classifying the received future
internet advertising inventory into buckets of future internet advertising
inventory, each bucket having one or more corresponding attributes,”
“storing, into a computer-readable, nontransitory memory and for a
nontransitory time, records of the classified future internet advertising
inventory as available for sale to buyers,” “receiving from buyers requests
for purchase of future internet advertising inventory,” “matching the

(b) evaluating those additional elements individually and in combination to
determine whether the claim as a whole integrates the exception into a
practical application. See Revised Guidance — Section III(A)(2), 84 Fed.
Reg. 54–55.
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requested purchase attributes to one or more respective bucket attributes,”
and “when a buyer and a seller reach agreement for purchase and sale of
future internet advertising inventory, recording transfer of ownership.”
Among the abstract ideas identified in the Revised Guidance are
“[c]ertain methods of organizing human activity,” including “commercial or
legal interactions (including agreements in the form of contracts; legal
obligations; advertising, marketing or sales activities or behaviors; business
relations).” 84 Fed. Reg. at 52 (emphasis added). See also Ultramercial, Inc.
v. Hulu, LLC, 772 F.3d 709, 715 (Fed. Cir. 2014) (The “claims are indeed
directed to an abstract idea, which is . . . a method of using advertising as an
exchange or currency.”); OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d
1359, 1362–63 (Fed. Cir. 2015) (“[T]he claims are directed to the concept of
offer-based price optimization. . . . [T]hat the claims do not preempt all price
optimization or may be limited to price optimization in the e-commerce
setting do not make them any less abstract.”).
Here, the steps of receiving data indicating available future internet
advertising inventory, classifying the inventory into “buckets” based on
attributes, storing the classified inventory, receiving requests to purchase
internet advertising, matching the requested purchase attributes with
classified internet advertising, and recording the transfer of ownership are
expressly directed to advertising and sales activity. See Spec. 1:11–13 (“The
present invention relates to managing and delivering Internet advertising,
and more particularly to managing a marketplace where producers and
consumers of Internet ad requests can buy and sell groups (i.e., buckets) of
these requests according to dynamic market prices.”). Thus, the steps of
claim 28 recite the sale of internet advertising inventory, which is a method
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of organizing human activity within the categories of abstract ideas that have
been identified by the courts. We agree with the Examiner that claim 28
recites an abstract idea.
Revised Guidance Step 2A, Prong 2
Although claim 28 recites an abstract idea, it would still be patent-
eligible if “the claim as a whole integrates the recited judicial exception into
a practical application of the exception”; i.e., if the claim “appl[ies], rel[ies]
on, or use[s] the judicial exception in a manner that imposes a meaningful
limit on the judicial exception.” 84 Fed. Reg. at 54. The analysis of whether
the claim integrates the judicial exception into a practical application
includes “[i]dentifying whether there are 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.
The exemplary considerations indicating that an additional element
may integrate an exception into a practical application include “[a]n
additional element [that] reflects an improvement in the functioning of a
computer, or an improvement to other technology or technical field.” Id. at
55. However, “[a]n additional element . . . [that] merely includes instructions
to implement an abstract idea on a computer, or merely uses a computer as a
tool to perform an abstract idea” is an indication that “a judicial exception
has not been integrated into a practical application.” Id.
Here, claim 28 states that the claimed method is operated “by a
computer operated as a marketplace.” However, claim 28 does not recite any
specific physical requirements for the computer. Consistent with the claim
language, the Specification provides no guidance regarding specific
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requirements for the computer recited in claim 28. The claimed method
therefore requires no more than a generic, conventional computer system.
The claim does not require any specific configuration of the recited
computer or its components that might reflect an improvement in the
functioning of a computer.
We conclude that the method of claim 28 does not reflect an
improvement in the functioning of a computer, or an improvement to
another technical field. Rather, the generic computer recited in the claim
merely implements the recited advertising and sales activity. It therefore
does not integrate the recited judicial exception into a practical application.
In summary, claim 28 recites an abstract idea and does not integrate it
into a practical application. Claim 28 is therefore directed to a judicial
exception to patentability.
Revised Guidance Step 2B
Finally, the Revised Guidance directs us to consider whether claim 28
includes “additional elements . . . [that] provide[] ‘significantly more’ than
the recited judicial exception.” 84 Fed. Reg. at 56. The Revised Guidance
states that an additional element that “simply appends well-understood,
routine, conventional activities previously known in the industry, specified
at a high level of generality, to the judicial exception, . . . is indicative that
an inventive concept may not be present.” Id.
As discussed above, and aside from the steps that are expressly
directed to the sale of internet advertising, claim 28 recites only a “computer
operated as a marketplace.” However, the claim language does not require
any unconventional computer configuration or software, nor does the
Specification describe any unconventional computer implementation as part
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of the claimed method. Thus, claim 28 requires using only a generic
computer to carry out the claimed process, and “the mere recitation of a
generic computer cannot transform a patent-ineligible abstract idea into a
patent-eligible invention.” Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 223
(2014).
In summary, the combination of elements recited in the method of
claim 28 does not amount to significantly more than the judicial exception
itself, and under 35 U.S.C. § 101 the claimed method is ineligible for
patenting.
Appellant’s Arguments
Appellant argues that the Examiner’s step 2A, prong 1, analysis errs
for three reasons:
• There’s no “managing personal behavior.” The portion of the
claim cited by the Examiner’s Answer relates solely to
computer behavior, and computer-to-computer interactions.
There’s no “personal behavior” in the portion of the claim
indicated by the Examiner’s Answer.
• There’s no “relationship or interactions between people.” The
portion of the claim cited by the Examiner’s Answer recites
actions entirely of computers.
• The portion of the claim indicated in the Examiner’s Answer
has no “contract, legal obligation, advertising, marketing or
sales activity or behavior, or business relation.” The word
“advertising” and “sale” appears, but only in the context of
describing technological, computer infrastructure. There’s no
recitation of the act of advertising or sale itself.
Reply Br. 7.
These arguments are not persuasive. Regarding Appellant’s first and
second bullet points, the Examiner did not (and we do not) rely on the
“methods of organizing human activity” involving “managing personal
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behavior or relationships or interactions between people.” See 84 Fed. Reg.
at 52. The applicable category is that of “commercial or legal interactions
(including . . . advertising, marketing, or sales activities or behaviors;
business relations).” Id.
As to Appellant’s third bullet point, the Specification expressly
describes the claimed method as “managing a marketplace where producers
and consumers of Internet ad requests can buy and sell groups (i.e., buckets)
of these requests.” Spec. 1:12–13. Even if claim 28 does not recite the act of
advertising or sale itself, the claimed method is directed to matching people
who want to sell opportunities for internet advertising with people who wish
to buy internet advertising. The claimed method therefore is accurately
characterized as one involving advertising or sales activities. Cf. In re
Morsa, 809 Fed. Appx. 913, 917 (Fed. Cir. 2020) (“Because independent
claim 2 of the ’192 application relates to ‘the field of advertising’ and
‘matching advertisers with entities via computer networks,’ it is directed to
an abstract idea.”).
Appellant also argues that the claimed method represents an
improvement: “That improvement is ‘bucketizing’ of ‘future internet
advertising inventory.’ This focus is new over the art, and thus the claim is
eligible.” Reply Br. 7.
This argument, however, is contradicted by Appellant’s own
Specification, which states that
[t]he ability to buy and sell media by category is a feature of the
current online advertising market. Categorization adds value,
and makes it possible for media sellers to demand higher prices.
. . . The demand for well categorized media implies demand for
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scalable categorization processes. Prior art processes include
both manual and automated approaches.
Spec. 5:18–21.
In addition, even if “bucketizing” advertising inventory is an
improvement on the current “ability to buy and sell media by category,” that
improvement is in the buying and selling of advertising, which is the judicial
exception to which the claims are directed. An improved abstract idea is still
an abstract idea, and is still patent ineligible. See SAP America, Inc. v.
InvestPic, LLC, 898 F.3d 1161, 1163 (Fed. Cir. 2018) (“[T]he advance lies
entirely in the realm of abstract ideas, with no plausibly alleged innovation
in the nonabstract application realm. An advance of that nature is ineligible
for patenting.”).
Appellant also argues that the claims pertain to an improvement to the
functioning of a computer or other technology because
the claims claim the further inventive concept of “classifying”
future internet advertising inventory into “buckets” so that the
future internet advertising inventory can be allocated to its
highest and best use. . . . Providing an efficient way to allocate
advertising space in advance may reduce network load relative
to the conventional approach to internet advertising, in which
advertisers and publishers negotiate every ad placement in real
time.
Reply Br. 8 (quoting Appeal Br. 9–10).
This argument is unpersuasive, because Appellant has cited no
evidence to support the argument, first presented in the Appeal Brief and
repeated in the Reply Brief, that the claimed method results in an
improvement in computer functioning by reducing network load compared
to the current approach. “Attorney’s argument in a brief cannot take the
place of evidence.” In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974).
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Appellant argues that “[t]he Appeal Brief, at pages 33–34, shows that
specific limitations of claims 18 and 28 recite significant ‘something more’
to confer eligibility under . . . step 2B.” Reply Br. 8. The cited passage states
that “‘[f]uture internet advertising inventory’ was not known, and not
previously automated. ‘Bucketizing’ of internet inventory was not known,
and not previously automated.” Appeal Br. 33. “The recited states [sic]
provide a new functionality to internet users (especially publishers and
advertisers) to direct internet advertising and inventory to best advantage.”
Id.
This argument is unpersuasive, for the same reason discussed above in
the context of the Step 2A, prong 2, analysis: Even if the concepts of “future
internet advertising inventory” and “bucketizing” internet advertising were
not previously known, they represent at best a new element in the patent
ineligible process of matching sellers of internet advertising with appropriate
buyers. “The ‘novelty’ of any element or steps in a process, or even of the
process itself, is of no relevance in determining whether the subject matter of
a claim falls within the § 101 categories of possibly patentable subject
matter.” Diamond v. Diehr, 450 U.S. 175, 188–89 (1981).
Finally, Appellant cites “[t]he recent Berkheimer memorandum” and
argues that “[t]he Examiner’s Answer relies on nothing more than the
Examiner’s personal opinion.” Reply Br. 8–9.
We do not agree that the Examiner’s analysis runs afoul of the
Office’s guidance regarding how to apply Berkheimer v. HP Inc., 881 F.3d
1360 (Fed. Cir. 2018). The Office’s memorandum lists, among other
sources, court decisions noting the well-understood, routine, and
conventional nature of the additional claim elements.
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Here, the additional element of claim 28—aside from the recited
judicial exception—is a “computer operated as a marketplace.” The well-
understood, routine, and conventional nature of a generic computer is
established by the Alice case itself, which held that “the mere recitation of a
generic computer cannot transform a patent-ineligible abstract idea into a
patent-eligible invention.” Alice, 573 U.S. at 223. Thus, we see no
inconsistency with the Examiner’s analysis and the Office’s Berkheimer
memorandum.
We affirm the rejection of claim 28 under 35 U.S.C. § 101 as being
directed to patent ineligible subject matter. Claims 13, 15, 17, 19–27, and
29–38 fall with claim 28 because they were not argued separately. 37 C.F.R.
§ 41.37(c)(1)(iv).
CONCLUSION
We reverse the rejections under 35 U.S.C. § 103(a). However, we
affirm the rejection under 35 U.S.C. § 101 and the rejection under 35 U.S.C.
§ 112, first paragraph.
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DECISION SUMMARY
In summary:
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
13, 15, 19-
38
112 first
paragraph
Written Description 13, 15, 19-
38

13, 15, 19-
26, 28-35,
37, 38
103(a) Sagalyn, Ozer, Llach 13, 15, 19-
26, 28-35,
37, 38
17, 27, 36 103(a) Sagalyn, Ozer, Llach,
Hsu
17, 27, 36
13, 15, 17,
19-38
101 Eligibility 13, 15, 17,
19-38

Overall
Outcome
13, 15, 17,
19-38

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