Jason A. Carter

Patent Trials and Appeals Board

Sep 16, 2019

13551600 - (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.
13/551,600 07/17/2012 Jason A. Carter 058083-0857864(2233US01) 3492
72058 7590 09/16/2019
Kilpatrick Townsend & Stockton LLP
Adobe Systems, Inc. 58083
Mailstop: IP Docketing - 22
1100 Peachtree Street, Suite 2800
Atlanta, GA 30309-4530
EXAMINER
BUSCH, CHRISTOPHER CONRAD
ART UNIT PAPER NUMBER
3681
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):
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 JASON A. CARTER
____________

Appeal 2017-0106661
Application 13/551,600
Technology Center 3600
____________

Before CYNTHIA L. MURPHY, AMEE A. SHAH, and
MATTHEW S. MEYERS, Administrative Patent Judges.

MURPHY, Administrative Patent Judge.

DECISION ON APPEAL

The Appellant2 appeals from the Examiner’s rejections of claims 1–4
and 6–28 under 35 U.S.C. §§ 101 and 103. We sustain the Examiner’s
rejection under 35 U.S.C. § 101 (Rejection I); and we do not sustain the
Examiner’s rejections under 35 U.S.C. § 103 (Rejections II–IV).
Thus, we AFFIRM.

1 The Appellant appeals under 35 U.S.C. § 134; we have jurisdiction over
this appeal under 35 U.S.C. § 6(b).
2 “Adobe Systems Incorporated” is “the real party in interest for the
presently-appealed application.” (Appeal Br. 4.)
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BACKGROUND
The Appellant discloses a method for “updating keywords of a
keyword-based search engine marketing campaign based on analytics data.”
(Appeal Br. 4.)
A search engine marketing campaign works in conjunction with
“Internet search engines” that offer users the capability to search “using one
or more search terms, i.e., keywords.” (Spec. ¶ 1.) Basically, when a user
wants to initiate a search on a search engine, the user enters a query
containing one or more keyword, and the search engine returns search
results relating to the keyword(s). (See id. ¶ 2.) For example, if a user
enters a query including the keyword “dog,” such as “dog food” or “DOG
stock quote,” the search engine will return search results relating to the
keyword “dog.” (See id. ¶ 19.)
Needless to say, “entities whose advertisements appear frequently on
results pages of a search engine” will “achieve enhanced levels of visibility
for their businesses.” (Spec. ¶ 1.) With a search engine marketing
campaign, companies bid on a keyword, and the company with the highest
bid on this keyword has its corresponding advertisement “appear higher in
the search results in response to user searches, thus giving the business high
visibility to users of the search engine.” (Id.) And if a query-entering user
selects (i.e., clicks on) this prominently displayed advertisement, he/she will
be directed to the company’s website, and will hopefully make a purchase
therefrom. (See id.)
For example, suppose a company is the highest bidder on the keyword
“dog.” (See Spec. ¶ 19.) When a user enters a query for “dog food,” this
will match the keyword “dog,” and the search engine will display the
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highest-bidding company’s advertisement first in the search results. (See
id.) If the highest-bidding company sells dog products, someone interested
in “dog food” is likely to be interested in buying something from this
company. (See id.) As such, there is a good possibility that the query-
entering user will click on the company’s advertisement and will purchase
dog food from the company’s website. Thus, when the query for “dog food”
is entered by a user, the bid cost of the keyword “dog” yields “a high return
on investment.” (Id. ¶ 4.)
However, when a user enters a query for “DOG stock quote,” this will
also match the keyword “dog.” (See Spec. ¶ 32.) As such, the search engine
will still display the highest-bidding company’s advertisement (i.e., the
company selling dog products) first in the search results. Someone
interested in stock-market activity will probably not be interested in buying
dog products. As such, there is a very low possibility that the query-entering
user will even click on the company’s advertisement, much less purchase
products from its website. Thus, when the query “DOG stock quote” is
entered, the bid cost of the keyword “dog” does not yield “a high return on
investment.” (Id. ¶ 3.)
The Appellant’s method refines a company’s marketing strategy to
“ensure a high return on investment” on its keyword bid costs. (Spec. ¶ 3.)
In this method, analytics data is received for each query that resulted in the
company’s advertisement being displayed (e.g., “dog food,” and “DOG
stock quote”) because the query contained a broad keyword (e.g., “dog”).
(See id. ¶ 23, 32.) The received analytics data is used to score the
performance of each query. (See Spec. ¶ 24.) For example, the query “dog
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food” would get a good performance score, while the query “DOG stock
quote” would not.
With the Appellant’s method, a company’s search engine marketing
campaign is revised by making a high-performing query an “exact match
keyword.” (Spec. ¶ 4.) With this revision, the company’s advertisement
will not be displayed just because a query includes a broad keyword (e.g.,
“dog”), but rather will only be displayed when a query includes more
targeted keywords (e.g., “dog food”). Thus, when a user enters a disparate
query (e.g., “DOG stock quote), the company’s advertising efforts are not
wasted on someone who is uninterested in the company’s products (e.g., dog
products).
As pointed out by the Appellant, a search engine marketing campaign
is “particular to the Internet” because it involves Internet search engines.
(Appeal Br. 20.) Nonetheless, the marketing problem addressed and solved
by the Appellant’s method exists in the brick-and-mortar world, and is
solved in the same way.
As discussed above, a company achieves “enhanced levels of
visibility” in a search engine marketing campaign when its advertisement
“appear[s] frequently on results pages of a search engine.” (Spec. ¶ 1.) But
the same could be said of a billboard marketing campaign, as a company
achieves enhanced levels of visibility when its advertisement appears
frequently via multiple billboards displaying this advertisement at different
locations.
Also, if the company sells dog products, analytics data will show that
a billboard located in a dog-walking park performs much better than a
billboard located in a financial district. And based on this analytics data, the
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company would revise its billboard marketing campaign by only leasing
billboards in more targeted locations. Thus, the company’s advertising
efforts are not wasted by leasing a billboard in the financial district.
Thus, the problem addressed by the Appellant is a company incurring
costs for displaying advertisements to people uninterested in the company’s
products; and the Appellant’s solution to this problem is displaying
advertisements only to people interested in the company’s products. In
short, the Appellant’s solution is “targeted advertising.”
ILLUSTRATIVE CLAIM
(with modified paragraphing and bracketed text added)
1. A method for updating keywords of a keyword-
based search engine marketing campaign based on analytics
data, the keyword-based search engine marketing campaign
implemented in a computing environment and comprising one
or more keywords that will cause a search engine to
automatically display advertisements in response to search
engine queries matching the one or more keywords, the method
comprising:
performing by one or more computers:
[(a)] receiving, via a network, analytics data for
advertisements displayed in search results displayed in response
to search engine queries that match a broad match keyword
included in the search engine marketing campaign, the analytics
data identifying (i) performance data for each of the
advertisements displayed in the search results to users of the
search engine, the performance data comprising one or more of:
a number of impressions, a number of clicks, revenue
attributed, and cost attributed, and (ii) the search engine queries
resulting in the respective search results from which the
respective advertisements were displayed;
[(b)] using the analytics data to score a first search engine
query as a candidate exact match keyword;
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[(c)] determining whether the score of the first search
engine query exceeds a first performance threshold;
[(d)] in response to determining that the score of the first
search engine query exceeds the first performance threshold,
adding the first search engine query as an exact match keyword
in the keyword-based search engine marketing campaign,
wherein adding the first search engine query as the exact match
keyword ensures that only queries exactly matching the exact
match keyword result in the corresponding advertisements
displayed in search results; and
[(e)] using the updated keyword-based search engine
marketing campaign to automatically determine advertisements
to be displayed in response to additional search engine queries.
REJECTIONS
I. The Examiner rejects claims 1–4 and 6–28 under 35 U.S.C.
§ 101 as being directed to a judicial exception without significantly more.
(Final Action 2.)
II. The Examiner rejects claims 1–4, 8–12, 15–19, and 22–28
under 35 U.S.C. § 103 as being unpatentable over Armon3 and Nayak.4
(Final Action 5.)
III. The Examiner rejects claims 6, 13, and 20 under 35 U.S.C.
§ 103 as being unpatentable over Armon, Nayak, and Chatwin.5 (Final
Action 9.)
IV. The Examiner rejects claims 7, 14, and 21 under 35 U.S.C.
§ 103 as being unpatentable over Armon, Nayak, and Li.6 (Final Action 10.)

3 Armon-Kest et al., US 2014/0372350 A1, published December 18, 2014.
4 Nayak et al., US 2014/0358904 A1, published December 4, 2014.
5 Chatwin et al., US 2008/0010144 A1, published January 20, 2008.
6 Li et al., US 2011/0196733 A1, published August 11, 2011.
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ANALYSIS
Claims 1, 11, and 18 are the independent claims on appeal, with the
rest of the claims on appeal depending therefrom. (See Appeal Br., Claims
App.) Independent claims 1, 11, and 18 set forth a method, system, and
instructions for “updating keywords of a keyboard-based search engine
marketing campaign” which involves “a search engine” that “automatically
display[s] advertisements in response to search engine queries.”
Rejection I – 35 U.S.C. § 101
The Examiner determines that independent claim 1 is “directed to” an
abstract idea related to “targeted” advertising; and the Examiner determines
that independent claim 1 does not contain “additional elements that are
sufficient to amount to “significantly more” than this abstract idea. (Final
Action 2.) More succinctly, the Examiner concludes that independent
claim 1 fails the Alice test for patent eligibility.7
The 2019 Revised Patent Subject Matter Eligibility Guidance (“2019
Guidance”) provides us with specific steps, namely a two-pronged Step 2A
and a Step 2B, for discerning whether a claim passes the Alice Test for
patent eligibility. (See Federal Register Vol. 84, No. 4, 50–57.)
In the first prong of Step 2A (Prong One), we evaluate whether the
claim recites a judicial exception, such as an abstract idea. (2019 Guidance

7 In Alice Corp. v. CLS Bank Int’l, 573 U.S. 208 (2014), the Supreme Court
provided a two-step test to guard against an attempt to patent purely an
abstract idea. (Id. at 217–18.) In the first step of the Alice Test, a
determination is made as to whether the claim at issue is “directed to” an
abstract idea. (Id. at 218.) In the second step of the Alice test, a
determination is made as to whether additional elements transform the claim
into something “significantly more” than the abstract idea. (Id. at 218–19.)
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at 54.) The 2019 Guidance “extracts and synthesizes key concepts identified
by the courts as abstract ideas,” these concepts include “[c]ertain methods of
organizing human activity,” and, more particularly, “fundamental economic
principles or practices,” such as “advertising, marketing or sales activities.”
(Id. at 52.)
Step (a) of independent claim 1 recites receiving “analytics data for
advertisements displayed in search results displayed in response to search
engine queries that match a broad match keyword included in the search
engine marketing campaign.” (Appeal Br., Claims App.) This step has a
counterpart in brick-and-mortar marketing, in that it consists of obtaining the
information needed to evaluate the commercial effectiveness of
advertisements displayed in different settings. For example, when a
company has its advertisement displayed on billboards at different locations,
the commercial effectiveness of each billboard would apparent from the
number of people who saw this billboard (number of impressions), the
number of people who visited the company’s store after seeing this billboard
(number of clicks), the amount of money spent during these visits (revenue
attributed), and the cost for leasing this billboard (cost attributed).
Step (b) recites “using the analytics data to score a first search engine
query as a candidate exact match keyword,” and step (c) recites
“determining whether the score of the first search engine query exceeds a
first performance threshold.” (Appeal Br., Claims App.) These steps have
counterparts in brick-and-mortar marketing, in that analytics data about the
effectiveness of advertisements displayed in different settings would of
course be used to determine which settings are performing acceptably. For
example, when a company has its advertisement displayed on billboards in
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different locations, analytics data would be used to determine which
locations are commercially effective.
Step (d) recites “in response to determining that the score of the first
search engine query exceeds the first performance threshold, adding the first
search engine query as an exact match keyword in the keyword-based search
engine marketing campaign.” (Appeal Br., Claims App.) This step has a
counterpart in brick-and-mortar marketing, in that a company would
eliminate advertisements displayed in low-performing settings. For
example, when a company would no longer display its advertisement on
billboards in non-effective locations.
Step (e) recites “using the updated keyword-based search engine
marketing campaign to automatically determine advertisements to be
displayed in response to additional search engine queries.” (Appeal Br.,
Claims App.) This step has a counterpart in brick-and-mortar marketing, in
that a company’s advertisement would be still be displayed in high-
performance settings. For example, a company would still display its
advertisement on billboards in commercially-effective locations.
As demonstrated above, independent claim 1 recites targeted-
advertising steps to ensure that a company’s advertisement is displayed only
in settings that reach people interested in buying the company’s product.
Targeted advertising is a fundamental economic practice, which is a method
of organizing human activity, and therefore an abstract idea.
Thus, under Prong One of Step 2A, independent claim 1 recites an
abstract idea, and we proceed to the second prong of Step 2A (Prong Two).
In Prong Two, we evaluate whether the claim contains additional
elements that “integrate” the abstract idea “into a practical application.”
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(2019 Guidance, at 54.) “Additional elements” are “claim features,
limitations, and/or steps that are recited in the claim beyond the identified
judicial exception.” (Id. at 55 n.24) As such, an “additional element” in
independent claim 1 would have to be a limitation/feature that is unrelated to
the targeted-advertising strategy set forth in steps (a)–(e).
The additional elements in independent claim 1 consist of the
targeted-advertising steps being “perform[ed] by one or more computers,”
data being received “via a network,” and perhaps determining
“automatically” advertisements to be displayed. (Appeal Br., Claims App.)
This amounts to independent claim 1 simply requiring a computer to “apply”
the targeted-advertising strategy set forth in steps (a)–(e). (See 2019
Guidance, at 55.) This is not enough to integrate this abstract idea into a
practical application. (See id.)
Thus, under Prong Two of Step 2A, additional elements in independent
claim 1 do not integrate the recited mental process into a practical application,
and we proceed to Step 2B.
In Step 2B, we evaluate whether claim 1’s additional elements
“simply append[] well-understood, routine, conventional activities
previously known in the industry, specified at a high level of generality, to
the judicial exception.” (2019 Guidance, at 56.) Here, the Specification
describes the computer(s), the network, their functions, and their
arrangement relative to each other, as well understood, conventional, and
routine. (See e.g., Spec. ¶¶ 69–73, Fig. 10.) As for “automatically”
determining advertisements to be displayed, this described and depicted as a
block in a flowchart diagram. (See id. ¶ 35, Fig. 3.)
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Thus, we agree with the Examiner that independent claim 1 fails the
Alice test for patent eligibility.
The Appellant argues that, like the claims under review in Enfish,
LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016), the claimed method
sets forth “improvements to a generic computer that provides faster
searching of data than would be possible with existing solutions.” (Reply
Br. 9; see also Appeal Br. 19.) But the Appellant does not explain, and we
do not see, how the claimed method increases the speed at which a search
engine searches. Although the Appellant asserts that the claimed steps are
for “optimizing search engine performance,” it is not the search engine that
is being improved or optimized. (Appeal Br. 19.) Rather, the advertising
impact of the searches returned by the search engine is optimized due to an
adjustment in a targeted-advertising strategy. Insofar as this is an
improvement, it is an improvement in a fundamental economic practice, not
an improvement in computer technology.
The Appellant argues that, like the claims under review in DDR
Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014),
independent claim 1 addresses “a technological problem particular to the
Internet, namely causing Internet search engines to return more relevant
search result content (including advertisements) in response to queries
entered by users of the search engines.” (Appeal Br. 20.) But, the problem
addressed by the Appellant has nothing to do with the performance of a
search engine, and the purported problem is solved by adjusting keywords to
sharpen a targeted-advertising strategy. The adjustment of keywords, based
on target-advertising objectives is not rooted in computing technology, as
the search engines work in the same (i.e., normal and expected) way when
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they return sponsored content in response to queries containing the adjusted
keywords.
Thus, we sustain the Examiner’s rejection of independent claim 1
under 35 U.S.C. § 101. Claims 1–4 and 6–28 are argued as a group for this
rejection, and so claims 2–4 and 6–28 fall with independent claim 1.8
Rejections II – IV- 35 U.S.C. § 103
The Examiner determines that the method/system/instructions set
forth in independent claims 1, 11, and 18 would have been obvious over the
combined teachings of Armon and Nayak. (See Final Action 5.)
Independent claims 1, 11, and 18 require “analytics data for
advertisements displayed in search results displayed in response to search
engine queries” that identifies, among other things “the search engine
queries resulting in the respective search results from which the respective
advertisements were displayed.” (Appeal Br., Claims App., emphasis
added.) Independent claims 1, 11, and 18 also requires analytics data to be
used to “score a first search engine query,” a determination of whether “the
score of the first search engine query exceeds a first performance
threshold,” and the addition of “the first search engine query” to the search
engine marketing campaign (as an exact match keyword). (Id.)
Thus, independent claims 1, 11, and 18 require identifying, scoring,
evaluating, and adding an individual search engine query (not a keyword
contained in this query).

8 “When multiple claims subject to the same ground of rejection are argued
as a group or subgroup,” we may “select a single claim from the group” and
decide the appeal on “the basis of the selected claim alone.” (37 CFR
§ 41.37(c)(1)(iv).)
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The Examiner explains that Armon discloses a method in which
keywords are “monitored,” “‘scored,’” and “applied” to a marketing
campaign; and that Nayak discloses “scor[ing] search-engine keywords, and
“update[ing]” a marketing campaign “according to the keyword scores.”
(Answer 11; see also Armon ¶¶ 58, 65; Nayak ¶¶ 55–66.) This establishes
that the prior art discloses identifying, scoring, and adding keywords.
However, as indicated above, independent claim 1 requires identifying,
scoring, and adding individual search engine queries, not keywords
contained in these queries. As such, the prior art does not show or suggest
the Appellant’s claimed improvement to the fundamental economic practice
of targeted advertising.
We are persuaded, therefore, by the Appellant’s arguments that the
Examiner has not sufficiently established that prior art shows or suggests the
method/system/instructions set forth in independent claims 1, 11, and 18.
(See Appeal Br. 21–26; see also Reply Br. 11–14.) And the Examiner’s
further findings and determinations with respect to the dependent claims do
not compensate for the shortcomings in the rejection of the independent
claims. (See Final Action 7–11.)
Thus, we do not sustain the Examiner’s rejection of claims 1–4, 8–12,
15–18, and 22–28 under 35 U.S.C. § 103 as being unpatentable over Armon
and Nayak; we do not sustain the Examiner’s rejection of claims 6, 13, and
20 under 35 U.S.C. § 103 as being unpatentable over Armon, Nayak, and
Chatwin; and we do not sustain the Examiner’s rejection of claims 7, 14,
and 21 under 35 U.S.C. § 103 as being unpatentable over Armon, Nayak,
and Li.
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DECISION
We AFFIRM the Examiner’s rejection of claims 1–4 and 6–28 under
35 U.S.C. § 101.
We REVERSE the Examiner’s rejections of claims 1–4 and 6–28
under 35 U.S.C. § 103.
AFFIRMED