John Hegeman et al.

Patent Trials and Appeals Board

Oct 11, 2019

12611874 - (D) (P.T.A.B. Oct. 11, 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.
12/611,874 11/03/2009 John Hegeman 26295-15977 3302
87851 7590 10/11/2019
Facebook/Fenwick
Silicon Valley Center
801 California Street
Mountain View, CA 94041
EXAMINER
LI, SUN M
ART UNIT PAPER NUMBER
3681
NOTIFICATION DATE DELIVERY MODE
10/11/2019 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):
fwfacebookpatents@fenwick.com
ptoc@fenwick.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte JOHN HEGEMAN and JARED MORGENSTERN
____________

Appeal 2018-005473
Application 12/611,874
Technology Center 3600
____________

Before ANTON W. FETTING, PHILIP J. HOFFMANN, and
BRUCE T. WIEDER, Administrative Patent Judges.

FETTING, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE1
John Hegeman and Jared Morgenstern (Appellant2) seek review under
35 U.S.C. § 134 of a final rejection of claims 1, 3–14, 16–22, and 24–30, the
only claims pending in the application on appeal. We have jurisdiction over
the appeal pursuant to 35 U.S.C. § 6(b).

1 Our decision will make reference to the Appellant’s Appeal Brief (“App.
Br.,” filed November 28, 2017) and Reply Brief (“Reply Br.,” filed May 7,
2018), and the Examiner’s Answer (“Ans.,” mailed March 8, 2018) and
Final Action (“Final Act.,” mailed February 2, 2017).
2 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 Facebook,
Inc. App. Br. 2.

Appeal 2018-005473
Application 12/611,874

2

The Appellant invented a way of selecting and presenting
advertisements to users in an online service based on previously received
user feedback responses related to the advertisements. Specification para. 1.
An understanding of the invention can be derived from a reading of
exemplary claim 1, which is reproduced below (bracketed matter and some
paragraphing added).
1. A computer-implemented method comprising:
[1] receiving a plurality of advertisements,
each advertisement associated with a bid price;
[2] tracking feedback received from a plurality of users of client
devices over a network for one or more of the advertisements
using graphical user interface elements displayed to the
plurality of users separately from the one or more
advertisements,
wherein a user’s feedback for an advertisement
comprises an explicit indication provided by the user of
an enhancement or degradation of the user’s experience
from having been presented with the advertisement;
[3] for each of at least a subset of the advertisements;
[3.1] computing an expected revenue value for presenting
the advertisement to a particular user based on the bid
price;
[3.2] computing a quality adjustment modifier for the
advertisement based on the feedback received from one
or more of the plurality of users for the advertisement;
and
[3.3] computing a total value for the advertisement by
adjusting the expected revenue value by the quality
adjustment modifier for the advertisement;
and
[4] ranking the advertisements based on the computed total
values;
Appeal 2018-005473
Application 12/611,874

3

[5] by a computing device, selecting one or more of the
advertisements for presentation to the particular user from the
plurality of advertisements based at least in part on the ranking;
and
[6] sending the selected one or more advertisements for display
to the particular user.
Claims 1, 3–14, 16–22, and 24–30 stand rejected under 35 U.S.C.
§ 101 as directed to a judicial exception without significantly more.
ISSUE
The issue of eligible subject matter turn primarily on whether the
claims recite more than abstract conceptual advice of results desired.
ANALYSIS
STEP 13
Claim 1, as a method claim, nominally recites one of the enumerated
categories of eligible subject matter in 35 U.S.C. § 101. The issue before us
is whether it is directed to a judicial exception without significantly more.
STEP 2
The Supreme Court
set forth a framework for distinguishing patents that claim laws
of nature, natural phenomena, and abstract ideas from those that
claim patent-eligible applications of those concepts. First, . . .
determine whether the claims at issue are directed to one of
those patent-ineligible concepts. If so, we then ask, “[w]hat
else is there in the claims before us? To answer that
question, . . . consider the elements of each claim both
individually and “as an ordered combination” to determine

3 For continuity of analysis, we adopt the steps nomenclature from 2019
Revised Patent Subject Matter Eligibility Guidance, 84 FR 50 (Jan. 7, 2019)
(“Revised Guidance”).
Appeal 2018-005473
Application 12/611,874

4

whether the additional elements “transform the nature of the
claim” into a patent-eligible application. [The Court] described
step two of this analysis as a search for an “‘inventive
concept’”—i.e., an element or combination of elements that is
“sufficient to ensure that the patent in practice amounts to
significantly more than a patent upon the [ineligible concept]
itself.”
Alice Corp. v CLS Bank Intl, 573 U.S. 208, 217–18 (2014) (citations
omitted, first and last alterations in original) (citing Mayo Collaborative
Servs. v. Prometheus Labs., Inc., 566 U.S. 66 (2012)). To perform this test,
we must first determine what the claims are directed to. This begins by
determining whether the claims recite one of the judicial exceptions (a law
of nature, a natural phenomenon, or an abstract idea). Then, if the claims
recite a judicial exception, determining whether the claims at issue are
directed to the recited judicial exception, or whether the recited judicial
exception is integrated into a practical application of that exception, i.e., that
the claims “apply, rely on, or use the judicial exception in a manner that
imposes a meaningful limit on the judicial exception, such that the claim is
more than a drafting effort designed to monopolize the judicial exception.”
Revised Guidance at 54. If the claims are directed to a judicial exception,
then finally determining whether the claims provide an inventive concept
because the additional elements recited in the claims provide significantly
more than the recited judicial exception.
STEP 2A Prong 1
At a high level, and for our preliminary analysis, we note that method
claim 1 recites receiving advertisement data, tracking feedback data,
computing revenue, adjustment, and total value data for an advertisement,
ranking advertisements by numeric values, and selecting and sending an
Appeal 2018-005473
Application 12/611,874

5

advertisement for presentation. Tracking data is another form of data
reception. Computing quantitative data is performing mathematical
algorithms. Ranking data is sorting, a rudimentary form of analysis and data
update. Selecting is rudimentary analysis and sending data is data
transmission. Thus, claim 1 recites receiving, computing, analyzing,
updating, and transmitting data. None of the limitations recites
technological implementation details for any of these steps, but instead
recites only results desired by any and all possible means.
From this we see that claim 1 does not recite the judicial exceptions of
either natural phenomena or laws of nature.
Under Supreme Court precedent, claims directed purely to an abstract
idea are patent-ineligible. As set forth in the Revised Guidance, which
extracts and synthesizes key concepts identified by the courts, abstract ideas
include (1) mathematical concepts4, (2) certain methods of organizing
human activity5, and (3) mental processes6. Among those certain methods
of organizing human activity listed in the Revised Guidance are commercial
or legal interactions. Like those concepts, claim 1 recites the concept of

4 See, e.g., Gottschalk v. Benson, 409 U.S. 63, 71–72 (1972); Bilski v.
Kappos, 561 U.S. 593, 611 (2010); Mackay Radio & Tel. Co. v. Radio Corp.
of Am., 306 U.S. 86, 94 (1939); SAP Am., Inc. v. InvestPic, LLC, 898 F.3d
1161, 1163 (Fed. Cir. 2018).
5 See, e.g., Bilski, 561 U.S. at 628; Alice, 573 U.S. at 219–20; Ultramercial,
Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed. Cir. 2014); Smart Sys.
Innovations, LLC v. Chicago Transit Auth., 873 F.3d 1364, 1383 (Fed. Cir.
2017); In re Marco Guldenaar Holding B.V., 911 F.3d 1157, 1160–61 (Fed.
Cir. 2018).
6 See, e.g., Benson, 409 U.S. at 67; CyberSource Corp. v. Retail Decisions,
Inc., 654 F.3d 1366, 1371–72 (Fed. Cir. 2011); Intellectual Ventures I LLC
v. Symantec Corp., 838 F.3d 1307, 1318 (Fed. Cir. 2016).
Appeal 2018-005473
Application 12/611,874

6

advertising. Specifically, claim 1 recites operations that would ordinarily
take place in advising one to select and provide information about an ad for
a product based on total value rankings computed from expected revenues
and adjustments based on feedback. The advice to select and provide
information about an ad for a product based on total value rankings
computed from expected revenues and adjustments based on feedback
involves choosing an ad to present, which is an economic act, and evaluating
the ad, which is an act ordinarily performed in the stream of commerce. For
example, claim 1 recites “selecting one or more of the advertisements,”
which is an activity that would take place whenever one is advertising.
Similarly, claim 1 recites “ranking the advertisements” which is also
characteristic of advertising management.
The Examiner determines the claims to be directed to the steps
recited. Final Act. 18–19.
The preamble to claim 1 does not recite what the claim is to achieve,
but the steps in claim 1 result in selecting and sending an ad absent any
technological mechanism other than a conventional computer for doing so.
As to the specific limitations, limitations 1 and 2 recite data reception.
Limitations 3–6 recite insignificant receiving, computing, analyzing,
updating, and transmitting of advertising data, which advise one to apply
generic functions to get to these results. The limitations thus recite advice
for selecting and providing information about an ad for a product based on
total value rankings computed from expected revenues and adjustments
based on feedback. To advocate selecting and providing information about
an ad for a product based on total value rankings computed from expected
Appeal 2018-005473
Application 12/611,874

7

revenues and adjustments based on feedback is conceptual advice for results
desired and not technological operations.
The Specification at paragraph 1 describes the invention as relating to
selecting and presenting advertisements to users in an online service based
on previously received user feedback responses related to the
advertisements. Thus, all this intrinsic evidence shows that claim 1 is
directed to selecting an ad, i.e., advertising. This is consistent with the
Examiner’s determination.
This in turn is an example of commercial or legal interactions as a
certain method of organizing human activity because advertising is a major
component of commercial marketing transactions. The concept of
advertising by selecting and providing information about an ad for a product
based on total value rankings computed from expected revenues and
adjustments based on feedback is one idea for selecting such ads. The steps
recited in claim 1 are part of how this might conceptually be premised.
Our reviewing court has found claims to be directed to abstract ideas
when they recited similar subject matter. See Ultramercial, 772 F.3d at 715
(using advertising).
Alternately, this is an example of concepts performed in the human
mind as mental processes because the steps of receiving, computing,
analyzing, updating, and transmitting data mimic human thought processes
of observation, evaluation, judgment, and opinion, perhaps with paper and
pencil, where the data interpretation is perceptible only in the human mind.
See In re TLI Commc’ns LLC Patent Litig., 823 F.3d 607, 611 (Fed. Cir.
2016); FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1093–94
(Fed. Cir. 2016). Claim 1, unlike the claims found non-abstract in prior
Appeal 2018-005473
Application 12/611,874

8

cases, uses generic computer technology to perform data reception,
computation, analysis, update, and transmission, and does not recite an
improvement to a particular computer technology. See, e.g., McRO, Inc. v.
Bandai Namco Games Am. Inc., 837 F.3d 1299, 1314–15 (Fed. Cir. 2016)
(finding claims not abstract because they “focused on a specific asserted
improvement in computer animation”). As such, claim 1 is directed to
receiving, computing, analyzing, updating, and transmitting data, and not a
technological implementation or application of that idea.
From this we conclude that at least to this degree, claim 1 is directed
to advertising by selecting and providing information about an ad for a
product based on total value rankings computed from expected revenues and
adjustments based on feedback, which is a commercial and legal interaction,
one of certain methods of organizing human activity identified in the
Revised Guidance, and, thus, an abstract idea.
STEP 2A Prong 2
The next issue is whether claim 1 not only recites, but is more
precisely directed to this concept itself or whether it is instead directed to
some technological implementation or application of, or improvement to,
this concept, i.e., integrated into a practical application.7
At the same time, we tread carefully in construing this
exclusionary principle lest it swallow all of patent law. At
some level, “all inventions . . . embody, use, reflect, rest upon,
or apply laws of nature, natural phenomena, or abstract ideas.”
Thus, an invention is not rendered ineligible for patent simply
because it involves an abstract concept. “[A]pplication[s]” of

7 See, e.g., Alice, 573 U.S. at 223, discussing Diamond v. Diehr, 450 U.S.
175 (1981).
Appeal 2018-005473
Application 12/611,874

9

such concepts “‘to a new and useful end,’” we have said,
remain eligible for patent protection.
Accordingly, in applying the § 101 exception, we must
distinguish between patents that claim the “‘buildin[g]
block[s]’” of human ingenuity and those that integrate the
building blocks into something more.
Alice, 573 U.S. at 217 (citations omitted, alterations in original).
Taking the claim elements separately, the operation performed by the
computer at each step of the process is expressed purely in terms of results,
devoid of implementation details. Steps 1 and 2 are pure data gathering
steps. Limitations describing the nature of the data do not alter this. Step 6
is insignificant post solution activity, such as storing, transmitting, or
displaying the results. Steps 3–5 recite generic computer processing
expressed in terms of results desired by any and all possible means and so
present no more than conceptual advice. All purported inventive aspects
reside in how the data is interpreted and the results desired, and not in how
the process physically enforces such a data interpretation or in how the
processing technologically achieves those results.
Viewed as a whole, Appellant’s claim 1 simply recites the concept of
advertising by selecting and providing information about an ad for a product
based on total value rankings computed from expected revenues and
adjustments based on feedback as performed by a generic computer. This is
no more than conceptual advice on the parameters for this concept and the
generic computer processes necessary to process those parameters, and does
not recite any particular implementation.
Claim 1 does not, for example, purport to improve the functioning of
the computer itself. Nor does it effect an improvement in any other
technology or technical field. The 35 pages of Specification spell out
Appeal 2018-005473
Application 12/611,874

10

different generic equipment8 and parameters that might be applied using this
concept and the particular steps such conventional processing would entail
based on the concept of advertising by selecting and providing information
about an ad for a product based on total value rankings computed from
expected revenues and adjustments based on feedback under different
scenarios. They do not describe any particular improvement in the manner a
computer functions. Instead, claim 1 amounts to nothing significantly more
than an instruction to apply advertising by selecting and providing
information about an ad for a product based on total value rankings
computed from expected revenues and adjustments based on feedback using
some unspecified, generic computer. Under our precedents, that is not
enough to transform an abstract idea into a patent-eligible invention. See
Alice, 573 U.S. at 225–26.
None of the limitations reflects an improvement in the functioning of
a computer, or an improvement to other technology or technical field,
applies or uses a judicial exception to effect a particular treatment or
prophylaxis for a disease or medical condition, implements a judicial
exception with, or uses a judicial exception in conjunction with, a particular
machine or manufacture that is integral to the claim, effects a transformation
or reduction of a particular article to a different state or thing, or applies or
uses the judicial exception in some other meaningful way beyond generally
linking the use of the judicial exception to a particular technological
environment, such that the claim as a whole is more than a drafting effort
designed to monopolize the exception.

8 The Specification describes desktop computers, laptop computers, mobile
phones, setup boxes, and game consoles. Spec. para. 36.
Appeal 2018-005473
Application 12/611,874

11

We conclude that claim 1 is directed to achieving the result of
advertising by advising one to select and provide information about an ad for
a product based on total value rankings computed from expected revenues
and adjustments based on feedback, as distinguished from a technological
improvement for achieving or applying that result. This amounts to
commercial or legal interactions, which fall within certain methods of
organizing human activity that constitute abstract ideas. The claim does not
integrate the judicial exception into a practical application.
STEP 2B
The next issue is whether claim 1 provides an inventive concept
because the additional elements recited in the claim provide significantly
more than the recited judicial exception.
The introduction of a computer into the claims does not generally alter
the analysis at Mayo step two.
[T]he mere recitation of a generic computer cannot transform a
patent-ineligible abstract idea into a patent-eligible invention.
Stating an abstract idea “while adding the words ‘apply it’” is
not enough for patent eligibility. Nor is limiting the use of an
abstract idea “‘to a particular technological environment.’”
Stating an abstract idea while adding the words “apply it with a
computer” simply combines those two steps, with the same
deficient result. Thus, if a patent’s recitation of a computer
amounts to a mere instruction to “implemen[t]” an abstract idea
“on . . . a computer,” that addition cannot impart patent
eligibility. This conclusion accords with the preemption
concern that undergirds our § 101 jurisprudence. Given the
ubiquity of computers, wholly generic computer
implementation is not generally the sort of “additional
featur[e]” that provides any “practical assurance that the
process is more than a drafting effort designed to monopolize
the [abstract idea] itself.”
Alice, 573 U.S. at 223–24 (citations omitted).
Appeal 2018-005473
Application 12/611,874

12

“[T]he relevant question is whether the claims here do more than
simply instruct the practitioner to implement the abstract idea [] on a generic
computer.” Alice, 573 U.S. at 225. They do not.
Taking the claim elements separately, the function performed by the
computer at each step of the process is purely conventional. Using a
computer for receiving, computing, analyzing, updating, and transmitting
data amounts to electronic data query and retrieval—one of the most basic
functions of a computer. All of these computer functions are generic,
routine, conventional computer activities that are performed only for their
conventional uses. See Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d
1350, 1353 (Fed. Cir. 2016). See also In re Katz Interactive Call Processing
Patent Litig., 639 F.3d 1303, 1316 (Fed. Cir. 2011) (“Absent a possible
narrower construction of the terms ‘processing,’ ‘receiving,’ and
‘storing,’ . . . those functions can be achieved by any general purpose
computer without special programming.”). None of these activities is used
in some unconventional manner nor does any produce some unexpected
result. Appellant does not contend it invented any of these activities. In
short, each step does no more than require a generic computer to perform
generic computer functions. As to the data operated upon, “even if a process
of collecting and analyzing information is ‘limited to particular content’ or a
particular ‘source,’ that limitation does not make the collection and analysis
other than abstract.” SAP Am., 898 F.3d at 1168.
Considered as an ordered combination, the computer components of
Appellant’s claim 1 add nothing that is not already present when the steps
are considered separately. The sequence of data reception-computation-
analysis-update-transmission is equally generic and conventional. See
Appeal 2018-005473
Application 12/611,874

13

Ultramercial, 772 F.3d at 715 (sequence of receiving, selecting, offering for
exchange, display, allowing access, and receiving payment recited an
abstraction), Inventor Holdings, LLC v. Bed Bath & Beyond, Inc., 876 F.3d
1372, 1378 (Fed. Cir. 2017) (sequence of data retrieval, analysis,
modification, generation, display, and transmission), Two-Way Media Ltd. v.
Comcast Cable Commc’ns, LLC, 874 F.3d 1329, 1339 (Fed. Cir. 2017)
(sequence of processing, routing, controlling, and monitoring). The ordering
of the steps is therefore ordinary and conventional.
We conclude that claim 1 does not provide an inventive concept
because the additional elements recited in the claim do not provide
significantly more than the recited judicial exception.
REMAINING CLAIMS
Claim 1 is representative. The remaining method claims merely
describe process parameters. We conclude that the method claims at issue
are directed to a patent-ineligible concept itself, and not to the practical
application of that concept.
As to the structural claims, they
are no different from the method claims in substance. The
method claims recite the abstract idea implemented on a generic
computer; the system claims recite a handful of generic
computer components configured to implement the same idea.
This Court has long “warn[ed] . . . against” interpreting § 101
“in ways that make patent eligibility ‘depend simply on the
draftsman’s art.’ ”
Alice, 573 U.S. at 226. As a corollary, the claims are not directed to any
particular machine.
Appeal 2018-005473
Application 12/611,874

14

LEGAL CONCLUSION
From these determinations we further determine that the claims do not
recite an improvement to the functioning of the computer itself or to any
other technology or technical field, a particular machine, a particular
transformation, or other meaningful limitations. From this we conclude the
claims are directed to the judicial exception of the abstract idea of certain
methods of organizing human activity as exemplified by the commercial and
legal interaction of advertising by selecting and providing information about
an ad for a product based on total value rankings computed from expected
revenues and adjustments based on feedback, without significantly more.
APPELLANT’S ARGUMENTS
As to Appellant’s Appeal Brief arguments, we adopt the Examiner’s
determinations and analysis from Final Action 17–25 and Answer 3–17 and
reach similar legal conclusions. We now turn to the Reply Brief.
We are not persuaded by Appellant’s argument that “the claims in the
instant application are not directed to an abstract idea because they are not
similar to the abstract ideas cited in the Examiner’s Answer.” Reply Br. 4.
The determinations and pertinent case law leading to the conclusions that the
claims in the instant application are directed to an abstract idea are presented
supra.
Appellant attempts to distinguish the claims from those in Electric
Power Group, LLC v. Alstom S.A., 830 F.3d 1350 (Fed. Cir. 2016). Id.
Appellant contends that “selecting an advertisement and sending the
advertisement is not the same as ‘displaying results based on that
information.’” Reply Br. 5. But to display results implies selecting those
results somehow and transmitting those results for display. Appellant then
Appeal 2018-005473
Application 12/611,874

15

contends that the claims perform a selection process unlike that in Electric
Power. Id. The problem with this argument is that the selection process is
recited at such a high functional level it becomes conceptual advice for
results to be achieved devoid of technological implementation details. “Like
Electric Power, the purported advance ‘is a process of gathering and
analyzing information of a specified content, then displaying the results, and
not any particular assertedly inventive technology for performing those
functions.’ We thus conclude that the claims are directed to an abstract
idea.” Trading Techs. Int’l, Inc. v. IBG LLC, 921 F.3d 1378, 1385 (Fed. Cir.
2019).
Appellant then contends the data transformation performed by the
claims is more than an abstract idea. Reply Br. 5. But data transformation is
not a physical transformation. “Schrader’s claims, except for incidental
changes to a ‘record,’ do not reflect any transformation or conversion of
subject matter representative of or constituting physical activity or objects.”
In re Schrader, 22 F.3d 290, 294 (Fed. Cir. 1994).
Appellant next contends that
the tracking involves receiving data across a network, the
network being feedback information inputted via a set of newly
added feedback graphical interface elements (as described in
the figures). This is not the same as simply “analyzing” data as
alleged by the Examiner’s Answer. Receiving data from
multiple computers with data derived from a graphical interface
as recited in the claims is also a strictly computer and Internet
centric activity. It cannot be performed by pen and paper, and
does not pre-empt any such pen and paper methods.
Reply Br. 6. Tracking per se is no more than data reception. The claims
recite no technological operations that would extend tracking beyond that.
Appeal 2018-005473
Application 12/611,874

16

The references to a network and graphical user interface are to conventional
computer elements.
The use and arrangement of conventional and generic computer
components recited in the claims—such as a database, user
terminal, and server— do not transform the claim, as a whole,
into “significantly more” than a claim to the abstract idea itself.
“We have repeatedly held that such invocations of computers
and networks that are not even arguably inventive are
‘insufficient to pass the test of an inventive concept in the
application’ of an abstract idea.”
Credit Acceptance Corp. v. Westlake Servs., 859 F.3d 1044, 1056 (Fed.
Cir. 2017) (citations omitted).
Appellant also attempts to analogize the claims to those involved in
McRO, Inc. v. Bandai Namco Games America Inc., 837 F.3d 1299 (Fed.
Cir. 2016). Reply Br. 7. In McRO, the court held that, although the
processes were previously performed by humans, “the traditional process
and newly claimed method . . . produced . . . results in fundamentally
different ways.” FairWarning, 839 F.3d a t 1094 (differentiating the
claims at issue from those in McRO). In McRO, “[i]t [ was] the
incorporation of the claimed rules not the use of the computer, that
improved the existing technolog[y] process,” because the prior process
performed by humans “was driven by subjective determinations rather
than specific, limited mathematical rules.” 837 F.3d at 1314 (internal
quotation marks and alterations omitted). In contrast, the claims of the
instant application merely implement an old practice of using decision
criteria in making advertising decisions in a new environment. Appellant
has not argued that the claimed processes of selecting ads apply rules of
selection in a manner technologically different from those which humans
used, albeit with less efficiency, before the invention was claimed. Merely
Appeal 2018-005473
Application 12/611,874

17

pigeon holing the objects of decision making to aid decision making is both
old and itself abstract.
The claims in McRO were not directed to an abstract
idea, but instead were directed to “a specific asserted
improvement in computer animation, i.e., the automatic use of
rules of a particular type.” We explained that “the claimed
improvement [was] allowing computers to produce ‘accurate
and realistic lip synchronization and facial expressions in
animated characters’ that previously could only be produced by
human animators.” The claimed rules in McRO transformed a
traditionally subjective process performed by human artists into
a mathematically automated process executed on computers.
FairWarning, 839 F.3d at 1094 (internal citations omitted, alteration in
original).
Appellant next contends that
the process recited in the claims that integrates user feedback in
order to select ads is also a result that is heretofore unknown in
the art, and recites to multiple limitations that are not simply
computations, such as “tracking feedback received from a
plurality of users of client devices . . .,” and “sending the
selected one or more advertisements for display to the particular
user”. The Examiner’s Answer never alleges that this method
is known in the art, only that some components in the claims,
such as a processor, are conventional components. No
combination of art, nor reference to any other reference
material, is provided in order to show that the claimed method
and result are known.
Reply Br. 8. “A claim for a new abstract idea is still an abstract idea. The
search for a § 101 inventive concept is thus distinct from demonstrating
§ 102 novelty.” Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138,
1151 (Fed. Cir. 2016). The operations of receiving, computing, analyzing,
updating, and transmitting data and their sequence is shown to be well
known supra.
Appeal 2018-005473
Application 12/611,874

18

Appellant next contends that “the Examiner’s Answer errs by not
referring to any case law when making the determination here.” Reply
Br. 9. Such case law is referred to supra.
We are not persuaded by Appellant’s argument that
this limitation includes specific elements, such as receiving data
from a network, presenting a graphical interface, and so on, that
cannot be performed by a human using pen and paper, let alone
mentally. The other limitations in the claims include similar
elements that preclude simple mental operation by a human.
Reply Br. 9. This is the same argument as presented supra.
We are not persuaded by Appellant’s argument that “the claims
provide significantly more at least because they provide a technical
improvement.” Reply Br. 10 (emphasis omitted). The claims recite no
technological implementation details.
At that level of generality, the claims do no more than
describe a desired function or outcome, without providing any
limiting detail that confines the claim to a particular solution
to an identified problem. The purely functional nature of the
claim confirms that it is directed to an abstract idea, not to a
concrete embodiment of that idea.
Affinity Labs of Tex., LLC v. Amazon.com Inc., 838 F.3d 1266, 1269 (2016).
We are not persuaded by Appellant’s argument of “[f]ailure to
consider the claims as a whole.” Reply Br. 11 (emphasis omitted). Such
consideration is presented supra.
We are not persuaded by Appellant’s argument that the claims contain
an inventive concept that is also found in the specific ordered combination
of the limitations, similar to the Federal Circuit’s findings in BASCOM
(BASCOM Glob. Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341
(Fed. Cir. 2016)). Reply Br. 13. Initially, we remind Appellant that
Appeal 2018-005473
Application 12/611,874

19

BASCOM did not find claims eligible on the substance, but rather that the
Appellees did not provide sufficient evidence to support a 12(b)(6) motion to
dismiss in which facts are presumed in the non-movant’s favor.
The key fact in BASCOM was the presence of a structural change in
“installation of a filtering tool at a specific location, remote from the end-
users, with customizable filtering features specific to each end user. This
design gives the filtering tool both the benefits of a filter on a local computer
and the benefits of a filter on the ISP server.” BASCOM, 827 F.3d at 1350.
The instant claims have no analogous structural benefit.
We are not persuaded by Appellant’s argument that the
“[i]mprovement need not be to the computer itself.” Reply Br. 13 (emphasis
omitted). “While the fact that an invention is run on a generic computer
does not, by itself, ‘doom the claims,’ the claims here fail because arranging
information along an axis does not improve the functioning of the computer,
make it operate more efficiently, or solve any technological problem.”
Trading Techs., 921 F.3d at 1385 (citation omitted).
We are not persuaded by Appellant’s argument that “[g]raphical
interfaces have been shown by courts to have inventive concepts.” Reply
Br. 14 (emphasis omitted).
Appellant relies on Core Wireless Licensing S.A.R.L. v. LG Elecs.,
Inc., 880 F.3d 1356 (Fed. Cir. 2018), which stated:
Claim 1 of the ’476 patent requires “an application summary
that can be reached directly from the menu,” specifying a
particular manner by which the summary window must be
accessed. The claim further requires the application summary
window list a limited set of data, “each of the data in the list
being selectable to launch the respective application and enable
the selected data to be seen within the respective application.”
This claim limitation restrains the type of data that can be
Appeal 2018-005473
Application 12/611,874

20

displayed in the summary window. Finally, the claim recites
that the summary window “is displayed while the one or more
applications are in an un-launched state,” a requirement that the
device applications exist in a particular state. These limitations
disclose a specific manner of displaying a limited set of
information to the user, rather than using conventional user
interface methods to display a generic index on a computer.
Core Wireless, 880 F.3d at 1362–63. Claim 1 does not recite an improved
user interface, in contrast to Core Wireless. Claim 1 recites
tracking feedback received from a plurality of users of client
devices over a network for one or more of the advertisements
using graphical user interface elements displayed to the
plurality of users separately from the one or more
advertisements, wherein a user’s feedback for an advertisement
comprises an explicit indication provided by the user of an
enhancement or degradation of the user’s experience from
having been presented with the advertisement.
Claim 1. This merely separates the data that is shown as any generic user
interface would. In contrast, Core Wireless had an interface that assembled
a limited number of applications which could then be launched from that
interface. Here, “the claims are focused on providing information . . . in a
way that helps them process information more quickly, . . . not on improving
computers or technology.” Trading Techs., 921 F.3d at 1384.
We are not persuaded by Appellant’s argument that “[a]nalysis [is]
not necessarily limited to matter[s] of law.” Reply Br. 16 (emphasis
omitted). Appellant cites Berkheimer v. HP Inc., 881 F.3d 1360, 1369 (Fed.
Cir. 2018) (“Whether something is well-understood, routine, and
conventional to a skilled artisan at the time of the patent is a factual
determination.”). We agree with this as far as it goes, and the pertinent
factual determinations are made supra.
Appeal 2018-005473
Application 12/611,874

21

CONCLUSIONS OF LAW
The rejection of claims 1, 3–14, 16–22, and 24–30 under 35 U.S.C.
§ 101 as directed to a judicial exception without significantly more is proper.

CONCLUSION
The rejection of claims 1, 3–14, 16–22, and 24–30 is affirmed.
In summary:
Claims
Rejected
35 U.S.C. § Basis Affirmed Reversed
1, 3–14, 16–22,
24–30
101 Eligibility 1, 3–14, 16–22,
24–30

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) (2011).

AFFIRMED