Hans Marius. Holtan

Patent Trials and Appeals Board

Sep 16, 2019

11984244 - (D) (P.T.A.B. Sep. 16, 2019)

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.
11/984,244 11/15/2007 Hans Marius Holtan 00008-0187-00000 6508
114629 7590 09/16/2019
Bookoff McAndrews
2020 K Street, NW
Suite 400
Washington, DC 20006
EXAMINER
NGUYEN, LIZ P
ART UNIT PAPER NUMBER
3696
NOTIFICATION DATE DELIVERY MODE
09/16/2019 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):
Kross@bomcip.com
eofficeaction@appcoll.com
usptomail@bomcip.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte HANS MARIUS HOLTAN
____________

Appeal 2018-006766
Application 11/984,244
Technology Center 3600
____________

Before KARA L. SZPONDOWSKI, SCOTT B. HOWARD, and
STEVEN M. AMUNDSON, Administrative Patent Judges.

AMUNDSON, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 seeks our review under 35 U.S.C. § 134(a) from a final
rejection of claims 1, 4–16, 19, 20, and 22–25, i.e., all pending claims. We
have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies the real party in interest as
Oath (Americas) Inc. Appeal Br. 1.
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STATEMENT OF THE CASE
The Invention
According to the Specification, the invention relates to “facilitating
the interaction of parties engaged in electronic market transactions, and more
specifically, to allocating electronic advertising opportunities to a plurality
of advertisers in an economically efficient manner,” e.g., “in a way that
maximizes . . . profit.” Spec. ¶¶ 1, 4.2 The Specification explains that a
“problem for a facilitator of electronic advertising is choosing how to
allocate an inventory of advertising spaces among a plurality of available
advertisements.” Id. ¶ 4.
Hence, according to the Specification, the invention endeavors to
provide improved “advertising space inventory allocation techniques.” Id.
¶ 7. The invention “allocat[es] advertisements for display” by, among other
things, “creating a qualified advertisement ranking by sorting the qualified
advertisements by bid price” and “selecting advertisements from the
qualified advertisement ranking until the sum of target inventory percentages
of selected advertisements is equal to or greater than 100 percent.” Id. ¶ 8,
Abstract; see also id. ¶¶ 9–10.
Exemplary Claim
Independent claim 1 exemplifies the claims at issue and reads as
follows:

2 This decision uses the following abbreviations: “Spec.” for the
Specification, filed November 15, 2007; “Final Act.” for the Final Office
Action, mailed May 4, 2017; “Appeal Br.” for the Appeal Brief, filed
January 8, 2018; “Ans.” for the Examiner’s Answer, mailed April 20, 2018;
and “Reply Br.” for the Reply Brief, filed June 20, 2018.
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1. A computer-implemented method of allocating
advertisements for display on a web page, the method
comprising the following operations performed by one
or more processors:
collecting a plurality of advertising spaces, each
advertising space having associated advertising space variables
that indicate a first Internet web browser type and a first
internet protocol (IP) address;
collecting a media inventory, the media inventory
comprising a plurality of advertisements, each of the plurality
of advertisements having associated advertisement variables
that indicate a second Internet web browser type and a second
IP address;
receiving, over a communications network, initial bid
information and initial target inventory percentage information
for each of the plurality of advertisements, wherein the initial
target inventory percentage information indicates a percentage
of the plurality of advertising spaces that an advertiser is
willing to purchase;
collecting data related to a performance of the plurality of
advertisements, the plurality of advertising spaces, at least one
advertiser, and at least one publisher;
calculating an optimized bid price and an optimized
target inventory percentage based on the at least one advertising
space variable associated with one of the plurality of
advertising spaces, the at least one advertisement variable
associated with each of the plurality of advertisements, and the
collected data;
identifying qualified advertisements from the plurality of
advertisements that are qualified to receive an impression at one
of the plurality of advertising spaces based on a match between:
the first Internet web browser type and the second
Internet web browser type; and
a geographic region determined from the first IP
address and the second IP address;
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creating a qualified advertisement ranking by sorting the
qualified advertisements by optimized bid price and optimized
target inventory percentage;
selecting qualified advertisements from the qualified
advertisement ranking until the sum of optimized target
inventory percentages of the selected qualified advertisements
is equal to or greater than 100 percent, wherein if two or more
qualified advertisements from the qualified advertisement
ranking have the same optimized bid price and the addition of
any one of such qualified advertisements would cause the sum
of the optimized target inventory percentages of selected
qualified advertisements to be greater than or equal to 100
percent, all qualified advertisements having the same optimized
bid price become selected qualified advertisements; and
allocating advertising impressions to the selected
qualified advertisements.
Appeal Br. 25–26 (Claims App.).
The Rejection on Appeal
Claims 1, 4–16, 19, 20, and 22–25 stand rejected under 35 U.S.C.
§ 101 as directed to patent-ineligible subject matter. Final Act. 5–8.
ANALYSIS
We have reviewed the rejection in light of Appellant’s arguments that
the Examiner erred. For the reasons explained below, we agree with the
Examiner’s conclusion concerning ineligibility under § 101. We adopt the
Examiner’s findings and reasoning in the Final Office Action and Answer.
See Final Act. 3–8; Ans. 3–10. We provide the following to address and
emphasize specific findings and arguments.
Introduction
The Patent Act defines patent-eligible subject matter broadly:
“Whoever invents or discovers any new and useful process, machine,
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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.” 35 U.S.C. § 101. In Mayo and Alice, the
Supreme Court explained that § 101 “contains an important implicit
exception” for laws of nature, natural phenomena, and abstract ideas. Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 70 (2012);
Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 216 (2014); see Diamond v.
Diehr, 450 U.S. 175, 185 (1981). In Mayo and Alice, the Court set forth a
two-step analytical framework for evaluating patent-eligible subject matter.
Mayo, 566 U.S. at 77–80; Alice, 573 U.S. at 217–18.
Under Mayo/Alice step one, we “determine whether the claims at
issue are directed to” a judicial exception, i.e., an abstract idea, a law of
nature, or a natural phenomenon. Alice, 573 U.S. at 217. Step one involves
looking at the “focus” of the claims at issue and their “character as a whole.”
SAP Am., Inc. v. InvestPic, LLC, 898 F.3d 1161, 1167 (Fed. Cir. 2018).
In January 2019, the PTO issued revised guidance for determining
whether claims are directed to a judicial exception. See 2019 Revised Patent
Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (“2019
Guidance”). The 2019 Guidance applies to the Board. Id. at 50–51, 57 n.42;
see 35 U.S.C. § 3(a)(2)(A) (investing the Director with responsibility “for
providing policy direction” for the PTO). Neither the Examiner nor
Appellant had the benefit of the 2019 Guidance when presenting their
respective positions concerning subject-matter eligibility.
The 2019 Guidance specifies two prongs for the analysis under
Mayo/Alice step one (PTO step 2A). 84 Fed. Reg. at 54–55. Prong one
requires evaluating “whether the claim recites a judicial exception, i.e., an
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abstract idea, a law of nature, or a natural phenomenon.” Id. at 54. “If the
claim does not recite a judicial exception, it is not directed to a judicial
exception,” and it satisfies § 101. Id. “If the claim does recite a judicial
exception, then it requires further analysis” under prong two. Id. Prong two
requires evaluating “whether the claim as a whole integrates the recited
judicial exception into a practical application of the exception.” Id. “When
the exception is so integrated, then the claim is not directed to a judicial
exception,” and it satisfies § 101. Id. “If the additional elements do not
integrate the exception into a practical application, then the claim is directed
to the judicial exception,” and it “requires further analysis” under
Mayo/Alice step two (PTO step 2B). Id.
Under Mayo/Alice step two, we “consider the elements of each claim
both individually and ‘as an ordered combination’ to determine whether the
additional elements” add enough to transform the “nature of the claim” into
“significantly more” than the judicial exception. Alice, 573 U.S. at 217–18,
221–22 (quoting Mayo, 566 U.S. at 78–79). Step two involves the search for
an “inventive concept.” Alice, 573 U.S. at 217–18, 221; Univ. of Fla.
Research Found., Inc. v. Gen. Elec. Co., 916 F.3d 1363, 1366 (Fed.
Cir. 2019). “[A]n inventive concept must be evident in the claims.”
RecogniCorp, LLC v. Nintendo Co., 855 F.3d 1322, 1327 (Fed. Cir. 2017).
Mayo/Alice Step One: PTO Step 2A Prong One
For Mayo/Alice step one, the Federal Circuit has noted 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). Here,
the Examiner determines that the claims are directed to an “economic
practice[] in which monetary transactions between people are managed,” in
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particular, “allocating advertisements for display on a web page.” Final
Act. 3–4, 6; Ans. 4–5, 8. The Examiner reasons that the concept does not
differ meaningfully from “those economic concepts found by the courts to
be abstract ideas.” Final Act. 4, 6; Ans. 5.
Appellant disputes that independent claims 1, 20, and 22 are directed
to an abstract idea. See Appeal Br. 14–21. Specifically, Appellant asserts
that the Examiner overgeneralizes the claims and “only considers certain
portions of the claims.” Appeal Br. 14–18; see Reply Br. 3–7.
We disagree. In determining that the claims are directed to an abstract
idea, the Examiner accurately assesses the “focus” of the claims and their
“character as a whole.” See Final Act. 5–8; Ans. 4–7, 8–10; see also SAP
Am., 898 F.3d at 1167.
In addition, we determine that the claims recite abstract ideas falling
within two of the three groupings of abstract ideas specified in the 2019
Guidance, i.e., “certain methods of organizing human activity” and “mental
processes.” See 84 Fed. Reg. at 51–52. First, according to the 2019
Guidance, “certain methods of organizing human activity” include
“advertising, marketing or sales activities or behaviors.” Id. at 52. As
explained below, each independent claim recites “advertising, marketing or
sales activities or behaviors” in various limitations.
Specifically, claim 1 recites the following limitations:
● “collecting a plurality of advertising spaces, each
advertising space having associated advertising space
variables that indicate a first Internet web browser type
and a first internet protocol (IP) address”;
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● “collecting a media inventory, the media inventory
comprising a plurality of advertisements, each of the
plurality of advertisements having associated
advertisement variables that indicate a second Internet
web browser type and a second IP address”;
● “receiving . . . initial bid information and initial target
inventory percentage information for each of the plurality
of advertisements, wherein the initial target inventory
percentage information indicates a percentage of the
plurality of advertising spaces that an advertiser is
willing to purchase”;
● “collecting data related to a performance of the plurality
of advertisements, the plurality of advertising spaces, at
least one advertiser, and at least one publisher”;
● “calculating an optimized bid price and an optimized
target inventory percentage based on the at least one
advertising space variable associated with one of the
plurality of advertising spaces, the at least one
advertisement variable associated with each of the
plurality of advertisements, and the collected data”;
● “identifying qualified advertisements from the plurality
of advertisements that are qualified to receive an
impression at one of the plurality of advertising spaces
based on a match between: the first Internet web browser
type and the second Internet web browser type; and a
geographic region determined from the first IP address
and the second IP address”;
● “creating a qualified advertisement ranking by sorting the
qualified advertisements by optimized bid price and
optimized target inventory percentage”;
● “selecting qualified advertisements from the qualified
advertisement ranking until the sum of optimized target
inventory percentages of the selected qualified
advertisements is equal to or greater than 100 percent,
wherein if two or more qualified advertisements from the
qualified advertisement ranking have the same optimized
bid price and the addition of any one of such qualified
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advertisements would cause the sum of the optimized
target inventory percentages of selected qualified
advertisements to be greater than or equal to 100 percent,
all qualified advertisements having the same optimized
bid price become selected qualified advertisements”; and
● “allocating advertising impressions to the selected
qualified advertisements.”
Appeal Br. 25–26. Claims 20 and 22 recite similar limitations. Id. at 29–33.
The above-identified limitations encompass “advertising, marketing
or sales activities or behaviors” because they specify allocating advertising
impressions to qualified advertisements that are selected based on rankings
from bid prices and target-inventory percentages. As noted above, the 2019
Guidance identifies “advertising, marketing or sales activities or behaviors”
as among the enumerated methods of organizing human activity, and thus an
abstract idea. 84 Fed. Reg. at 52; see also OIP Techs., Inc. v. Amazon.com,
Inc., 788 F.3d 1359, 1361–63 (Fed. Cir. 2015) (deciding that the claimed
concept of “offer-based price optimization” is an abstract idea “similar to
other ‘fundamental economic concepts’ found to be abstract ideas by the
Supreme Court and this court”).
Second, the 2019 Guidance describes “mental processes” as “concepts
performed in the human mind,” such as “an observation, evaluation,
judgment, [or] opinion.” 84 Fed. Reg. at 52 (footnote omitted). As
explained below, each independent claim recites “mental processes” in
various limitations.
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For instance, claim 1 recites the following limitations:
● “identifying qualified advertisements from the plurality
of advertisements that are qualified to receive an
impression at one of the plurality of advertising spaces
based on a match between: the first Internet web browser
type and the second Internet web browser type; and a
geographic region determined from the first IP address
and the second IP address”;
● “creating a qualified advertisement ranking by sorting the
qualified advertisements by optimized bid price and
optimized target inventory percentage”;
● “selecting qualified advertisements from the qualified
advertisement ranking until the sum of optimized target
inventory percentages of the selected qualified
advertisements is equal to or greater than 100 percent,
wherein if two or more qualified advertisements from the
qualified advertisement ranking have the same optimized
bid price and the addition of any one of such qualified
advertisements would cause the sum of the optimized
target inventory percentages of selected qualified
advertisements to be greater than or equal to 100 percent,
all qualified advertisements having the same optimized
bid price become selected qualified advertisements”; and
● “allocating advertising impressions to the selected
qualified advertisements.”
Appeal Br. 25–26. Again, claims 20 and 22 recite similar limitations. Id.
at 29–33.
The above-identified limitations encompass evaluations practically
performed by a human mentally or with pen and paper. For example, a
person could identify qualified advertisements for an advertising space by
mentally matching web browser types and mentally matching geographic
regions. If that mental matching resulted in, for instance, five qualified
advertisements, the person could rank the qualified advertisements by
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arranging them based on bid price or target-inventory percentage. From that
ranking of qualified advertisements, the person could mentally select a
sufficient number of qualified advertisements, for instance, three qualified
advertisements, to reach or exceed 100 percent of the advertising space.
After mentally selecting a sufficient number of qualified advertisements, the
person could allocate advertising impressions to the selected qualified
advertisements, e.g., with pen and paper.
For these reasons, the above-identified limitations encompass
evaluations practically performed by a human mentally or with pen and
paper. The 2019 Guidance identifies an evaluation practically performed by
a human mentally or with pen and paper as a mental process, and thus an
abstract idea. 84 Fed. Reg. at 52 & nn.14–15; see also Intellectual Ventures
I LLC v. Symantec Corp., 838 F.3d 1307, 1318 (Fed. Cir. 2016) (“[W]ith the
exception of generic computer-implemented steps, there is nothing in the
claims themselves that foreclose them from being performed by a human,
mentally or with pen and paper.”) (“Symantec”).
Mayo/Alice Step One: PTO Step 2A Prong Two
Because we determine that each independent claim recites abstract
ideas, we consider whether each claim as a whole integrates the recited
abstract ideas into a practical application. See 84 Fed. Reg. at 54–55. “Only
when a claim recites a judicial exception and fails to integrate the exception
into a practical application, is the claim ‘directed to’ a judicial exception
. . . .” Id. at 51.
As additional elements, claims 1, 20, and 22 recite computer-system
components, in particular, a “processor” or “processors,” a “storage device,”
a “communications network,” and interfaces, i.e., a “publisher interface” and
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an “advertiser interface.” Appeal Br. 25, 29–32. Claim 22 also recites an
“exchange.” Id. Broadly but reasonably interpreted in light of the
Specification, an “exchange” encompasses a software program. See, e.g.,
Spec. ¶ 23. For example, the Specification explains that “[e]xchange 105
may be a software program.” Id.
We determine that each independent claim as a whole does not
integrate the recited abstract ideas into a practical application because the
additional elements do not impose meaningful limits on the abstract ideas.
See 84 Fed. Reg. at 53–54; see also Final Act. 6–8. The claimed computer-
system components constitute generic computer-system components that
perform generic computer functions. See Final Act. 6–7; Ans. 5–6, 8–9; see
also Spec. ¶ 23.
Appellant contends that the claims “use computer-implemented
algorithms and rules to ‘select[] qualified advertisements’ and then
‘allocat[e] advertising impressions,’ which improves over subjective, manual
techniques and existing methods of auctioning advertising spaces.” Appeal
Br. 19 (citing Spec. ¶ 5). Appellant also contends that the claims “are
‘necessarily rooted in computer technology in order to overcome a problem
specifically arising in the realm of computer networks.’” Id. at 20 (quoting
DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1257 (Fed. Cir.
2014)). Further, Appellant asserts that the claims are “specific to the realm
of the Internet” and “address a problem that does not arise in traditional
advertising because the use of impressions in advertising is unique to the
Internet.” Id.
We disagree. The Specification explains that the invention endeavors
to provide improved “advertising space inventory allocation techniques.”
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Spec. ¶ 7. The Specification analogizes advertisements on web pages “to
rented billboard space in highways and cities or commercials broadcasted
during television or radio programs.” Id. ¶ 2. The claims concern the
tailoring of content, i.e., identifying qualified advertisements for advertising
spaces based on matching web browser types and matching geographic
regions. Appeal Br. 25–26, 29–33. The “tailoring of content based on
information about the user,” e.g., “where the user lives,” is “an abstract idea
that is as old as providing different newspaper inserts for different
neighborhoods.” Affinity Labs of Tex., LLC v. Amazon.com Inc., 838 F.3d
1266, 1271 (Fed. Cir. 2016). Thus, the Examiner correctly reasons that the
claims do not “overcome a problem specifically arising in the realm of
computer networks.” Ans. 10.
Appellant asserts that the claims recite “an unconventional
technological solution,” i.e., “allocating advertising impressions,” to
“address a technological problem,” i.e., “inefficient allocation of
advertisements using traditional methods.” Appeal Br. 22.
We disagree that “inefficient allocation of advertisements” constitutes
a technological problem. In Bilski, for example, the Supreme Court did not
view shortcomings in balancing risk positions as a technological problem.
See Bilski v. Kappos, 561 U.S. 593, 599, 609–13 (2010). And in Alice, the
Court did not view shortcomings in mitigating settlement risk as a
technological problem. See Alice, 573 U.S. at 212–14 & n.2, 219–23.
Similarly, in Ultramercial, the Federal Circuit did not view shortcomings in
“displaying an advertisement in exchange for access to copyrighted media”
as a technological problem. See Ultramercial, Inc. v. Hulu, LLC, 772 F.3d
709, 712, 714–16 (Fed. Cir. 2014).
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Appellant analogizes the claims here to the claims in the following
cases: Amdocs (Israel) Ltd. v. Openet Telecom, Inc., 841 F.3d 1288
(Fed. Cir. 2016); McRO, Inc. v. Bandai Namco Games America Inc.,
837 F.3d 1299 (Fed. Cir. 2016); and DDR Holdings, LLC v. Hotels.com,
L.P., 773 F.3d 1245 (Fed. Cir. 2014). See, e.g., Appeal Br. 14–15, 19–21.
But the claims here do not resemble the claims in any of those cases.
In Amdocs, the patents concerned network components “arrayed in a
distributed architecture” that “collect[ed] and process[ed] data close to its
source,” and thus enabled “load distribution” and reduced network
congestion. Amdocs, 841 F.3d at 1291–92, 1300, 1303, 1306. The Federal
Circuit decided that the claims satisfied § 101 under Mayo/Alice step two
because they either (1) “entail[ed] an unconventional technological solution
. . . to a technological problem” that required generic computer components
to “operate in an unconventional manner to achieve an improvement in
computer functionality” or (2) “recite[d] a technological solution to a
technological problem specific to computer networks—an unconventional
solution that was an improvement over the prior art.” Id. at 1299–1306.
Unlike the claims in Amdocs, the claims here do not require generic
computer components to “operate in an unconventional manner to achieve
an improvement in computer functionality.” For instance, the claims do not
require an unconventional arrangement of components or an uncommon
network configuration. Further, the claims do not recite an advance in
hardware or software that causes a computer itself or a network itself to
operate faster or more efficiently.
Instead, the claims use a “communications network” in its ordinary
capacity to communicate data. The claims use a “processor” in its ordinary
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capacity to manipulate data. The claims use a “storage device” in its
ordinary capacity to store data. And the claims use an “interface” in its
ordinary capacity to receive data. Thus, the Examiner correctly determines
that the claims do not “improve the functioning of the computer itself” or
“improve any other technology or technical field.” Final Act. 4, 7; Ans. 6,
9–10.
And unlike the claims in Amdocs, the claims here do not recite a
technological solution to a technological problem. As discussed above,
“inefficient allocation of advertisements” does not constitute a technological
problem.
In McRO, the claims recited a “specific . . . improvement in computer
animation” using “unconventional rules” that related “sub-sequences of
phonemes, timings, and morph weight sets” to automatically animate lip
synchronization and facial expressions for three-dimensional characters that
only human animators could previously produce. McRO, 837 F.3d at
1302–03, 1307–08, 1313–15. In McRO, “the incorporation of the claimed
rules” improved an existing technological process. Id. at 1314.
Unlike the claims in McRO, the claims here do not improve an
existing technological process. See Alice, 573 U.S. at 223 (explaining that
“the claims in Diehr were patent eligible because they improved an existing
technological process”); see also Final Act. 6–7; Ans. 5–6, 8–10. As
discussed above, the Examiner correctly determines that the claims do not
“improve the functioning of the computer itself” or “improve any other
technology or technical field.” Final Act. 4, 7; Ans. 6, 9–10. Instead, the
claims encompass steps to identify qualified advertisements, rank the
qualified advertisements, select certain qualified advertisements based on
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their ranking, and assign the selected advertisements to advertising spaces,
all of which a person can perform mentally or with pen and paper.
In DDR Holdings, the Federal Circuit determined that certain claims
satisfied § 101 under Mayo/Alice step two because “the claimed solution
amount[ed] to an inventive concept for resolving [a] particular Internet-
centric problem,” i.e., a challenge unique to the Internet. DDR Holdings,
773 F.3d at 1257–59; see also Synopsys, Inc. v. Mentor Graphics Corp.,
839 F.3d 1138, 1151 (Fed. Cir. 2016) (noting that “[i]n DDR Holdings, we
held that claims ‘directed to systems and methods of generating a composite
web page that combines certain visual elements of a “host” website with
content of a third-party merchant’ contained the requisite inventive
concept”). The Federal Circuit explained that the patent-eligible claims
specified “how interactions with the Internet are manipulated to yield a
desired result . . . that overrides the routine and conventional sequence of
events ordinarily triggered by the click of a hyperlink.” DDR Holdings,
773 F.3d at 1258. The court reasoned that those claims recited a
technological solution “necessarily rooted in computer technology” that
addressed a “problem specifically arising in the realm of computer
networks.” Id. at 1257.
According to the Federal Circuit, “DDR Holdings does not apply
when . . . the asserted claims do not ‘attempt to solve a challenge particular
to the Internet.’” Smart Sys. Innovations, LLC v. Chi. Transit Auth.,
873 F.3d 1364, 1375 (Fed. Cir. 2017) (quoting In re TLI Commc’ns LLC
Patent Litig., 823 F.3d 607, 613 (Fed. Cir. 2016)). Unlike the patent-eligible
claims in DDR Holdings, the claims here do not attempt to solve a challenge
particular to the Internet.
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Instead, the claims here encompass assigning “a plurality of
advertisements” to “a plurality of advertising spaces” based on matching
web browser types and matching geographic regions. To accomplish the
assigning, the claims receive “information” via a “communications
network,” e.g., the Internet. See Spec. ¶ 45. But receiving “information” via
a “communications network” does not mean that the claims address a
problem specifically arising in the realm of computer networks. Appellant
identifies nothing unconventional about receiving “information” via a
“communications network.”
Moreover, matching web browser types does not mean that the claims
address a problem specifically arising in the realm of computer networks.
The Specification identifies “browser type” as one of several “advertiser-
specified target variables” for an advertising campaign. Spec. ¶¶ 24, 27.
It states, “A campaign goal may define its associated advertising campaign
by setting one or more advertiser-specified target variables for the associated
advertising campaign.” Id. ¶ 24. It also states, “Target variables may be any
combination of, e.g., advertising publication, publication type, connection
speed, browser type, geographic region of the connection’s IP address,
industry, seasonal or other calendar or time restraints, or any other
distinguishing feature,” such as “gender, age, [or] income.” Id.; see id. ¶ 27.
Hence, “advertiser-specified target variables” for an advertising campaign
predate the Internet.
The 2019 Guidance identifies exemplary considerations indicating
that additional elements in claims “may have integrated the [judicial]
exception into a practical application.” 84 Fed. Reg. at 55 & nn.25–29
(citing Manual of Patent Examining Procedure §§ 2106.05(a)–(c),
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2106.05(e)). As the above analysis indicates, we have evaluated Appellant’s
arguments in light of those exemplary considerations. For the reasons
discussed above, however, we determine that each independent claim as a
whole does not integrate the recited abstract ideas into a practical
application. Thus, each claim is directed to a judicial exception and does not
satisfy § 101 under Mayo/Alice step one.
Mayo/Alice Step Two: PTO Step 2B
Because we determine that each independent claim is directed to a
judicial exception, we “consider the elements of each claim both
individually and ‘as an ordered combination’ to determine whether the
additional elements” add enough to transform the “nature of the claim” into
“significantly more” than the judicial exception. See Alice, 573 U.S.
at 217–18, 221–22 (quoting Mayo, 566 U.S. at 78–79). Under Mayo/Alice
step two, we “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) (quoting Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d
1350, 1353 (Fed. Cir. 2016)). An “inventive concept” requires more than
“well-understood, routine, conventional activity already engaged in” by the
relevant community. Rapid Litig. Mgmt. Ltd. v. CellzDirect, Inc., 827 F.3d
1042, 1047 (Fed. Cir. 2016) (quoting Mayo, 566 U.S. at 79–80). But a
“non-conventional and non-generic arrangement of known, conventional
pieces” may provide an “inventive concept” satisfying step two. BASCOM
Glob. Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341, 1350
(Fed. Cir. 2016).
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As discussed above, the independent claims recite computer-system
components, in particular, a “processor” or “processors,” a “storage device,”
a “communications network,” and interfaces, i.e., a “publisher interface” and
an “advertiser interface.” Appeal Br. 25, 29–32. The Examiner correctly
finds that the claimed computer-system components perform “computer
functions” that “are ‘well understood, routine, conventional activities’
previously known to the industry (collecting, comparing, organizing
information).” Final Act. 6–7; Ans. 5–6, 8–10. Further, the Examiner
correctly finds that a “computer is employed for its most basic functions and
does not impose meaningful limits on the scope of the claims.” Final Act.
4, 7; Ans. 6, 9. The Examiner properly reasons that “the claims do no more
than implement the abstract idea on a generic computer.” Final Act. 4, 6;
Ans. 8.
Consistent with the Examiner’s findings and reasoning, the
Specification describes the claimed computer-system components
generically and evidences their conventional nature. See, e.g., Spec. ¶¶ 23,
45, 47. For example, the Specification describes a “communications
network” as “any computer data network that allows communication to
occur amongst any/all components of the system,” such as “any network
and/or combination of networks, including, for example, the Internet.” Id.
¶ 45. Further, the Specification discusses implementing certain system
components as “a software program and/or a computer server.” Id. ¶ 23.
The Specification also discusses using “a machine such as a personal
computer with picture making software to create advertisements suitable for
display.” Id. ¶ 47.
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Simply implementing an abstract idea using conventional machines or
devices “add[s] nothing of substance.” See Alice, 573 U.S. at 226–27; see
also Mayo, 566 U.S. at 84–85 (explaining that “simply implementing a
mathematical principle on a physical machine” does not suffice for patent
eligibility) (citing Gottschalk v. Benson, 409 U.S. 63, 64–65, 71 (1972)).
In addition, the claimed computer-system components operate to
collect, manipulate, and communicate data. Appeal Br. 25–26, 29–33.
Court decisions have recognized that generic computer-system components
operating to collect, manipulate, and communicate data are well understood,
routine, and conventional to a skilled artisan. See, e.g., Alice, 573 U.S.
at 226–27; SAP Am., 898 F.3d at 1164–65 & n.1, 1170; Symantec, 838 F.3d
at 1316–20; Versata Dev. Grp., Inc. v. SAP Am., Inc., 793 F.3d 1306, 1334
(Fed. Cir. 2015); Ultramercial, 772 F.3d at 715–16; buySAFE, Inc. v.
Google, Inc., 765 F.3d 1350, 1355 (Fed. Cir. 2014).
For example, the system claims in Alice recited a “data processing
system” (e.g., a “processor” or “processors”) with a “communications
controller” and a “data storage unit” (e.g., a “storage device”). Alice,
573 U.S. at 226. The Supreme Court decided that the system claims failed
to satisfy § 101 because “[n]early every computer” includes those generic
components for performing “basic calculation, storage, and transmission
functions” and the system claims simply implemented the same abstract idea
as the method claims. Id. at 226–27. The Court reasoned that (1) “the
system claims are no different from the method claims in substance”;
(2) “[t]he method claims recite the abstract idea implemented on a generic
computer”; and (3) “the system claims recite a handful of generic computer
components configured to implement the same idea.” Id. at 226.
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Here, the claimed computer-system components perform “basic
calculation, storage, and transmission functions” that nearly every computer
system performs. Appeal Br. 25–26, 29–33; see Final Act. 6–7; Ans. 5–6,
8–10. For instance, nearly every computer system includes a “processor” for
manipulating data, a “storage device” for storing data, and a
“communications network” for communicating data. Hence, those generic
computer-system components do not satisfy the “inventive concept”
requirement. See, e.g., Mortg. Grader, Inc. v. First Choice Loan Servs. Inc.,
811 F.3d 1314, 1324–25 (Fed. Cir. 2016) (holding that “generic computer
components such as an ‘interface,’ ‘network,’ and ‘database’” did not satisfy
the “inventive concept” requirement); FairWarning IP, LLC v. Iatric Sys.,
Inc., 839 F.3d 1089, 1095–96 (Fed. Cir. 2016) (describing the claimed
“microprocessor” and “user interface” as “generic computer elements”);
Prism Techs. LLC v. T-Mobile USA, Inc., 696 F. App’x 1014, 1016–17
(Fed. Cir. 2017) (describing the claimed “authentication server,” “access
server,” “Internet Protocol network,” “client computer device,” and
“database” as “indisputably generic computer components”).
Appellant “notes that all prior art rejections have been withdrawn.”
Appeal Br. 22. Appellant then contends that the “claims recite novel,
technological features that are neither taught nor suggested by the prior art—
amounting to ‘significantly more’ than any alleged abstract idea.” Id. at 23.
But the absence of anticipation and obviousness “does not resolve the
question of whether the claims embody an inventive concept” under
Mayo/Alice step two. Symantec, 838 F.3d at 1315; see SAP Am., 898 F.3d
at 1163. “The search for a § 101 inventive concept” differs “from
demonstrating § 102 novelty.” Synopsys, 839 F.3d at 1151; see Two-Way
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Media Ltd. v. Comcast Cable Commc’ns, LLC, 874 F.3d 1329, 1340
(Fed. Cir. 2017). “The ‘novelty’ of any element[s] or steps” in a claim or
even the claim itself “is of no relevance in determining whether the subject
matter of a claim” satisfies § 101. Diehr, 450 U.S. at 189–90.
Further, insofar as Appellant relies on the recited abstract ideas to
satisfy the “inventive concept” requirement, he wrongly does so.
A “claimed invention’s use of the ineligible concept,” e.g., an abstract idea,
“cannot supply the inventive concept that renders the invention ‘significantly
more’ than that ineligible concept.” BSG Tech LLC v. BuySeasons, Inc.,
899 F.3d 1281, 1290 (Fed. Cir. 2018). “[U]nder the Mayo/Alice framework,
a claim directed to a newly discovered” 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).
Appellant asserts that the Examiner cites “no documentary or prior art
support” when finding that certain elements “are ‘well understood, routine,
conventional activities’ previously known to the industry.” Appeal Br. 23.
Similarly, based on PTO guidance about Berkheimer v. HP,3 Appellant
asserts that the Answer and previous Office Actions “contain[] an
insufficiently supported allegation that the claims are ‘well-understood,
routine [or] conventional.’” Reply Br. 8–9.
But Appellant concedes that “[o]ne or more citations of a court
decision” may demonstrate that additional elements are well understood,

3 USPTO Memorandum, Changes in Examination Procedure Pertaining
to Subject Matter Eligibility, Recent Subject Matter Eligibility Decision
(Berkheimer v. HP, Inc.) (Apr. 19, 2018).
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routine, and conventional to a skilled artisan. Id. at 8. As discussed above,
court decisions have recognized that generic computer-system components
operating to collect, manipulate, and communicate data are well understood,
routine, and conventional to a skilled artisan. See, e.g., Alice, 573 U.S.
at 226–27; SAP Am., 898 F.3d at 1164–65 & n.1, 1170; Symantec, 838 F.3d
at 1316–20; Versata, 793 F.3d at 1334; Ultramercial, 772 F.3d at 715–16;
buySAFE, 765 F.3d at 1355.
“Whether a combination of claim limitations supplies an inventive
concept that renders a claim ‘significantly more’ than an abstract idea to
which it is directed is a question of law.” BSG Tech, 899 F.3d at 1290.
Given the claimed generic computer-system components that perform
generic computer functions, we conclude that the combination of limitations
in each independent claim does not supply an “inventive concept” that
renders the claim “significantly more” than an abstract idea. Thus, each
claim does not satisfy § 101 under Mayo/Alice step two.
Summary for the Independent Claims
For the reasons discussed above, each independent claim fails to
satisfy § 101 under Mayo/Alice step one and step two. Hence, we sustain the
§ 101 rejection of the independent claims.
Dependent Claims 4–16, 19, and 23–25
We also sustain the § 101 rejection of dependent claims 4–16, 19, and
23–25 because Appellant does not argue eligibility separately for them. See
Appeal Br. 13–23; Reply Br. 2–9; 37 C.F.R. § 41.37(c)(1)(iv).
CONCLUSION
We affirm the Examiner’s decision to reject claims 1, 4–16, 19, 20,
and 22–25.
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In summary:
Claims Rejected Basis Affirmed Reversed
1, 4–16, 19,
20, and 22–25 § 101
1, 4–16, 19,
20, and 22–25
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