Rong Yan et al.Download PDFPatent Trials and Appeals BoardAug 28, 201913316493 - (D) (P.T.A.B. Aug. 28, 2019) Copy Citation 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. 13/316,493 12/10/2011 Rong Yan 26295-19394 4161 87851 7590 08/28/2019 Facebook/Fenwick Silicon Valley Center 801 California Street Mountain View, CA 94041 EXAMINER SITTNER, MICHAEL J ART UNIT PAPER NUMBER 3622 NOTIFICATION DATE DELIVERY MODE 08/28/2019 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 RONG YAN and NUWAN SENARATNA1 ____________________ Appeal 2018-004037 Application 13/316,493 Technology Center 3600 ____________________ Before MAHSHID D. SAADAT, JOHNNY A. KUMAR, and JOYCE CRAIG, Administrative Patent Judges. CRAIG, Administrative Patent Judge. DECISION ON APPEAL This is a decision on appeal under 35 U.S.C. § 134(a) of the final rejection of claims 1–6, 8–12, 21, and 22, which are all claims pending in the application. Appellants have canceled claims 7 and 13–20. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. 1 According to Appellants, the real party in interest is Facebook, Inc. App. Br. 1. Appeal 2018-004037 Application 13/316,493 2 STATEMENT OF THE CASE The Invention Appellants’ disclosed embodiments and claimed invention relate to assisted adjustment of an advertising campaign based on an initial set of advertising results. Spec. ¶ 1. Exemplary Claim Claim 1, reproduced below, is representative of the subject matter on appeal (emphasis added to contested prior-art limitations): 1. A computer-implemented method comprising: receiving, at a publishing system from an advertiser, data for an advertising campaign comprising an initial ad and targeting criteria defining an initial target group for receiving the initial ad; providing the initial ad for display to a plurality of users in a plurality of user segments of the initial target group, each user segment defined by one or more user attributes of the targeting criteria; for a first user segment of the plurality of user segments: identifying a user attribute having at least one value; identifying a first subgroup of users of the first user segment having the user attribute of a first set of values and corresponding to a first set of values of an advertising metric in response to the initial ad; identifying a second subgroup of users of the first user segment having the user attribute of a second set of values and corresponding to a second set of values of the advertising metric in response to the initial ad; responsive to determining that the first set of values of differing from the second set of values of the Appeal 2018-004037 Application 13/316,493 3 advertising metric by at least a threshold amount, determining that the user attribute causes a divergence of responses to the initial ad between the first subgroup of users and the second subgroup of users; responsive to determining that the user attribute causes the divergence, determining a plurality of suggestions for the advertiser to select to modify the targeting criteria to modify the first user segment of the initial target group; and providing, from the publishing system to the advertiser, a graphical user interface based on the determined suggestions, the graphical user interface including a graphical representation of the first set of values of the user attribute and a corresponding first set of graphical controls specifying first functionality related to the first set of values of the user attribute corresponding to a first determined suggestion, and a graphical representation of the second set of values of the user attribute and a corresponding second set of graphical controls specifying second functionality related to the second set of values of the user attribute corresponding to a second determined suggestion, the first functionality different from the second functionality. Rejections on Appeal Claims 1–6, 8–12, 21, and 22 stand rejected under 35 U.S.C. § 101 as directed to patent-ineligible subject matter. Final Act. 3–6. Claims 1–6, 8–12, 21, and 22 stand rejected under 35 U.S.C. § 112(a) as lacking written description support. Final Act. 6–7. Claims 1, 2, 5, 9–11, 21, and 22 stand rejected under 35 U.S.C. § 103(a) as unpatentable over the combination of Koningstein (US 2006/0224447 A1; published Oct. 5, 2006) and Priyadarshan (US 2012/0041817 A1; published Feb. 16, 2012) (“Priyadarshan”). Final Act. 7– 19. Appeal 2018-004037 Application 13/316,493 4 Claims 4 and 8 stand rejected under 35 U.S.C. § 103(a) as unpatentable over the combination of Koningstein, Priyadarshan, and Heiser, II et al. (US 2008/0091535 A1; published Apr. 17, 2008) (“Heiser”). Final Act. 20–23. Claims 3 and 6 stand rejected under 35 U.S.C. § 103(a) as unpatentable over the combination of Koningstein, Priyadarshan, and Applicant Admitted Prior Art. Final Act. 23–26. ANALYSIS Rejection of Claims 1–6, 8–12, 21, and 22 under 35 U.S.C. § 101 “Whether a claim is drawn to patent-eligible subject matter is an issue of law that we review de novo.” SiRF Tech., Inc. v. Int’l Trade Comm’n, 601 F.3d 1319, 1331 (Fed. Cir. 2010). An invention is patent-eligible if it claims a “new and useful process, machine, manufacture, or composition of matter.” 35 U.S.C. § 101.2 However, the Supreme Court has long interpreted 35 U.S.C. § 101 to include implicit exceptions: “[l]aws of nature, natural phenomena, and abstract ideas” are not patentable. Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 70 (2012) (brackets in original) (citing Diamond v. Diehr, 450 U.S. 175, 185 (1981)). In determining whether a claim falls within an excluded category, we are guided by the Supreme Court’s two-step framework, described in Mayo and Alice. Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 217–18 (2014) (citing Mayo, 566 U.S. at 75–77). In accordance with that framework, we 2 This threshold analysis of whether a claim is directed to one of the four statutory categories of invention, i.e., a process, machine, manufacture, or composition of matter, is referred to as “Step 1” in the patent-eligibility inquiry under § 101. Appeal 2018-004037 Application 13/316,493 5 first determine what concept the claim is “directed to.” See Alice, 573 U.S. at 219 (“On their face, the claims before us are drawn to the concept of intermediated settlement, i.e., the use of a third party to mitigate settlement risk.”); see also Bilski v. Kappos, 561 U.S. 593, 611 (2010) (“Claims 1 and 4 in petitioners’ application explain the basic concept of hedging, or protecting against risk . . . .”). Concepts determined to be abstract ideas, and thus patent ineligible, include certain methods of organizing human activity, such as fundamental economic practices (Alice, 573 U.S. at 219–20; Bilski, 561 U.S. at 611); mathematical formulas (Parker v. Flook, 437 U.S. 584, 594–95 (1978)); and mental processes (Gottschalk v. Benson, 409 U.S. 63, 69 (1972)). Concepts determined to be patent eligible include physical and chemical processes, such as “molding rubber products” (Diehr, 450 U.S. at 191); “tanning, dyeing, making water-proof cloth, vulcanizing India rubber, smelting ores” (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S. (15 How.) 252, 267–68 (1853))); and manufacturing flour (Benson, 409 U.S. at 69 (citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))). In Diehr, the claim at issue recited a mathematical formula, but the Supreme Court held “[a] claim drawn to subject matter otherwise statutory does not become nonstatutory simply because it uses a mathematical formula.” Diehr, 450 U.S. at 176; see also id. at 191 (“We view respondents’ claims as nothing more than a process for molding rubber products and not as an attempt to patent a mathematical formula.”). Having said that, the Supreme Court also indicated that a claim “seeking patent protection for that formula in the abstract . . . is not accorded the protection of our patent laws, and this principle cannot be circumvented by attempting Appeal 2018-004037 Application 13/316,493 6 to limit the use of the formula to a particular technological environment.” Id. (citation omitted) (citing Benson and Flook); see, e.g., id. at 187 (“It is now commonplace that an application of a law of nature or mathematical formula to a known structure or process may well be deserving of patent protection.”). Abstract ideas may include, but are not limited to, fundamental economic practices, methods of organizing human activities, and mathematical formulas or relationships. Alice, 573 U.S. at 217–21. Under this guidance, we must therefore ensure at step one that we articulate what the claims are directed to with enough specificity to ensure the step one inquiry is meaningful. Id. at 217 (“[W]e tread carefully in construing this exclusionary principle lest it swallow all of patent law.”). If the claim is “directed to” an abstract idea, we turn to the second step of the Alice and Mayo framework, where “we must examine the elements of the claim to determine whether it contains an ‘“inventive concept”’ sufficient to ‘transform’ the claimed abstract idea into a patent- eligible application.” Alice, 573 U.S. at 221. “A claim that recites an abstract idea must include ‘additional features’ to ensure ‘that the [claim] is more than a drafting effort designed to monopolize the [abstract idea].’” Id. (quoting Mayo, 566 U.S. at 77). “[M]erely requir[ing] generic computer implementation[] fail[s] to transform that abstract idea into a patent-eligible invention.” Id. The PTO recently published revised guidance in the Federal Register concerning the application of § 101. 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (January 7, 2019) (hereinafter Appeal 2018-004037 Application 13/316,493 7 “Revised Guidance”) (https://www.govinfo.gov/content/pkg/FR-2019-01- 07/pdf/2018-28282.pdf). Under the Revised Guidance, we first look to whether the claim recites: (1) any judicial exceptions, including certain groupings of abstract ideas (i.e., mathematical concepts, certain methods of organizing human activity such as a fundamental economic practice, or mental processes);3 and (2) additional elements that integrate the judicial exception into a practical application (see Manual for Patent Examining Procedure (“MPEP”) §§ 2106.05(a)–(c), (e)–(h)).4 Only if a claim (1) recites a judicial exception and (2) does not integrate that exception into a practical application, do we then look to whether the claim: (3) adds a specific limitation beyond the judicial exception that are not “well-understood, routine, conventional” in the field (see MPEP § 2106.05(d)); or (4) simply appends well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception.5 See Revised Guidance. Based on Appellants’ arguments (App. Br. 5–13) and our discretion under 37 C.F.R. § 41.37(c)(1)(iv), we decide the appeal of the patent- 3 Referred to as “Revised Step 2A, Prong 1” in the Revised Guidance (hereinafter “Step 2A(i)”). 4 Referred to as “Revised Step 2A, Prong 2” in the Revised Guidance (hereinafter “Step 2A(ii)”). 5 Items (3) and (4) continue to be collectively referred to as “Step 2B” of the Supreme Court’s two-step framework, described in Mayo and Alice. Appeal 2018-004037 Application 13/316,493 8 ineligible subject matter rejection of claims 1–6, 8–12, 21, and 22 on the basis of representative claim 1. Step 1 Claim 1, as a method (process) claim, recites one of the enumerated categories of eligible subject matter in 35 U.S.C. § 101. Therefore, the issue before us is whether it is directed to a judicial exception without significantly more. Step 2A(i): Does the Claim Recite a Judicial Exception? The Examiner determined that claim 1 is directed to “a combination of ideas similar to judicially recognized abstract ideas,” including organizing, storing and transmitting information; organizing information through mathematical correlations; mental processes; and human activity relating to commercial practices. Final Act. 3–4. We evaluate whether claim 1 recites an abstract idea based upon the Revised Guidance. We conduct our review for abstractness de novo. Claim 1 recites, in pertinent part, the steps of: identifying a user attribute having at least one value; identifying a first subgroup of users of the first user segment having the user attribute of a first set of values and corresponding to a first set of values of an advertising metric in response to the initial ad; identifying a second subgroup of users of the first user segment having the user attribute of a second set of values and corresponding to a second set of values of the advertising metric in response to the initial ad; responsive to determining that the first set of values of differing from the second set of values of the advertising metric by at least a threshold amount, determining that the user attribute causes a Appeal 2018-004037 Application 13/316,493 9 divergence of responses to the initial ad between the first subgroup of users and the second subgroup of users; responsive to determining that the user attribute causes the divergence, determining a plurality of suggestions for the advertiser to select to modify the targeting criteria to modify the first user segment of the initial target group; Claims App’x. We determine that those steps of claim 1 recite mental processes, which is one of the abstract ideas identified in the Revised Guidance. The step of “identifying a user attribute having at least one value” can be performed in the human mind or practicably with pen and paper. See CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1375 (Fed. Cir. 2011) (“That purely mental processes can be unpatentable, even when performed by a computer, was precisely the holding of the Supreme Court in Gottschalk v. Benson.”). Similarly, identifying first and second subgroups of users, as recited in the claim, can be performed in the human mind or with pen and paper. The “determining” steps merely provide information, as a result of reasoning, observation, research, or calculation, to be used in the process, wherein determining information is a step that can be performed in the human mind. As such, the “identifying” and “determining” steps are mental steps, and claim 1, therefore is recites a mental process, an abstract idea. Thus, under Step 2A(i), we agree with the Examiner that claim 1 recites an abstract idea. See Final Act. 3. Step 2A(ii): Judicial Exception Integrated into a Practical Application? If the claims are directed to a patent-ineligible concept, as we conclude above, we proceed to the “practical application” Step 2A(ii) in which we determine whether the recited judicial exception is integrated into Appeal 2018-004037 Application 13/316,493 10 a practical application of that exception by: (a) identifying whether there are any additional elements recited in the claim beyond the judicial exception(s); and (b) evaluating those additional elements individually and in combination to determine whether they integrate the exception into a practical application. Here, the additional elements recited in claim 1 beyond the judicial exception include the “receiving” step and the two “providing” steps. The “receiving” and “providing” steps amount to insignificant extra-solution activity. The “receiving” step amounts to mere data gathering, as the data received is an initial ad and targeting criteria for the ad campaign. Providing the initial ad for display to a plurality of users and providing a graphical user interface that includes a graphical representation of data are merely insignificant extra-solution activity. In other words, the claimed invention receives, processes, and displays data—this is merely conventional data gathering and analysis. See MPEP § 2106.05(g); OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1363 (Fed. Cir. 2015); Electric Power Group LLC v. Alstom S.A., 830 F.3d 1350, 1354 (Fed. Cir. 2016). In addition, we agree with the Examiner that the limitations that include recitations of generic computer structure such as a “publishing system,” and a “graphical user interface” are similar to limitations from Alice, where the court determined that such generic references to hardware do not “offer a meaningful limitation beyond generally linking ‘the use of the [system/method] to a particular technological environment,’ that is, implementation via computers.” See Final Act. 5. Appellants contend claim 1 is directed to a specific improvement in computer functionality and, therefore, is not directed to an abstract idea. Appeal 2018-004037 Application 13/316,493 11 App. Br. 6. Appellants seek to analogize the claimed invention to the claims in Trading Technologies.6 Id. at 7. Appellants contend that “the claimed invention similarly recites a specific, structured ad campaign graphical user interface that is paired with multiple functionalities related to the ad campaign graphical user interface structure.” Id. at 8. Appellants argue that each of the recited claim elements that defines the structure of the graphical user interface has a prescribed functionality. Id. We are not persuaded by Examiner’s arguments. Appellants’ claims resemble the claims that the Trading Technologies courts distinguished as patent ineligible. Trading Techs., 2015 WL 774655 at *4 (“[i]f the claims simply provided for ‘setting, displaying, and selecting’ data information, CQG would be correct in its assessment that the claims are directed to an abstract idea”); see also Trading Techs., 2017 WL 192716 *3 (“ineligible claims generally lack steps or limitations specific to a solution of a problem, or improvement in the functioning of technology”). In Trading Technologies, the district court found that the claims are directed to solving a problem that existed with prior art GUIs, namely, that the best bid and best ask prices would change based on updates received from the market. There was a risk with the prior art GUIs that a trader would miss her intended price as a result of prices changing from under her pointer at the time she clicked on the price cell on the GUI. Trading Techs., 2015 WL 774655 at *4. Similarly, the Federal Circuit found 6 Trading Technologies Int’l, Inc. v. CQG, INC., 675 F. App’x 1001 (Fed. Cir. 2017), aff’g No. 05-cv-4811, 2015 WL 774655 (N.D. Ill. Feb. 24, 2015). Appeal 2018-004037 Application 13/316,493 12 [t]he patents explain problems that arise when a trader attempts to enter an order at a particular price, but misses the price because the market moved before the order was entered and executed. It also sometimes occurred that trades were executed at different prices than intended, due to rapid market movement. This is the problem to which these patents are directed. Trading Techs., 2017 WL 192716 at *1. To solve this problem, the invention keeps prices static in positions, and allows quantities at each price to change. Trading Techs., 2015 WL 774655 at *4; Trading Techs., 2017 WL 192716 at *1 (“the system pairs orders with the static display of prices and prevents order entry at a changed price”). In this way, Trading Technologies is consistent with precedent recognizing that specific technologic modifications to solve a problem or improve the functioning of a known system generally produce patent- eligible subject matter. See, e.g., DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014); McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299, 1315 (Fed. Cir. 2016). No such problem has been identified here. Appellants’ arguments based on McRO, are also not persuasive. See App. Br. 9. Appellants contend the claims recite a specific, discrete implementation of receiving data for an advertising campaign, providing an initial ad for display, identifying a user attribute, identifying subgroups of users, determining that the user attribute causes a divergence, determining a plurality of suggestions to modify targeting criteria, and providing a graphical user interface. Id. at 10. In McRO, the claims were held not abstract because they recited a “specific [] improvement in computer animation” using “unconventional Appeal 2018-004037 Application 13/316,493 13 rules that relate[d] sub-sequences of phonemes, timings, and morph weight sets.” McRO, 837 F.3d at 1302–03, 1307–08, 1314–15. In McRO, “the incorporation of the claimed rules, not the use of the computer,” improved an existing technological process. Id. at 1314. The claims in McRO, however, recited a “specific [] improvement in computer animation” using “unconventional rules that relate[d] sub-sequences of phonemes, timings, and morph weight sets.” Id. at 1302–03, 1307–08, 1314–15. Appellants do not, however, identify how claim 1 improves 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”). Nor do Appellants direct us to any evidence that the claimed “receiving” and “providing” functions correspond to unconventional rules. Appellants also rely on Bascom Global Internet Services, Inc. v. AT&T Mobility LLC, 827 F.3d 1341 (Fed. Cir. 2016), arguing that the specific “ordered combination” of limitations achieve an improvement in computer functionality by receiving data for an advertising campaign; providing the initial ad to users of the initial target group; and for a user segment, identifying a user attribute, identifying a subgroup of users that have the user attribute of a first set of values, identifying another subgroup of users that have the user attribute of a second set of values, determining that the user attribute causes a divergence of responses to the initial ad if the two sets of values are sufficiently different, determining suggestions to modify the target criteria, and providing a graphical user interface based on the determined suggestions that includes graphical representations and graphical controls specifying different functionalities corresponding to the suggestions. These limitations involve a “non-conventional and non-generic arrangement”. . . . App. Br. 12. Appeal 2018-004037 Application 13/316,493 14 In Bascom, the Federal Circuit held “[t]he inventive concept described and claimed in the ’606 patent is the installation of a filtering tool at a specific location, remote from the end-users, with customizable filtering features specific to each end user.” Bascom, 827 F.3d at 1350. In determining this feature was an inventive concept, the Federal Circuit explained that the remote location of a filtering tool having customizable user-specific filtering features provides the filtering tool both the benefits of a filter on a local computer and the benefits of a filter on the ISP server and is a technical improvement over prior art ways of filtering content. Id. at 1350–51. Notably, the Federal Circuit specifically determined that “the claims may be read to ‘improve[] an existing technological process.”’ Id. at 1351 (citing Alice, 573 U.S. at 223). The Federal Circuit emphasized that the claims of the ’606 patent are a technical solution that improves computer technology. See id. In considering the instant claims individually and as an ordered combination, we fail to see how the specific steps recited in the claims improve the functioning of a computer or some other technology. Instead, we conclude the steps of the claimed method are directed to ad publishing, in which the steps may be performed by any generic computer with appropriate programming. App. Br. 9–10. However, “the mere recitation of a generic computer cannot transform a patent-ineligible abstract idea into a patent-eligible invention.” Alice, 573 U.S. at 223. To summarize, claim 1 recites abstract ideas as identified in Step 2A(i), supra, and none of the additional elements integrates the abstract mental process into a practical application. The claim as a whole merely Appeal 2018-004037 Application 13/316,493 15 uses instructions to implement the abstract idea on a computer or, alternatively, merely uses a computer as a tool to perform the abstract idea. Thus, on this record, Appellants have not shown under the guidance of Manual of Patent Examining Procedure section 2106.05(a) (“Improvements to the Functioning of a Computer or to Any Other Technology or Technical Field”) or section 2106.05(e)(“Other Meaningful Limitations”). Nor do Appellants advance any arguments in the Brief(s) that are directed to the Bilski machine-or-transformation test, which would only be applicable to the method (process) claims on appeal. See MPEP §§ 2106.05(b) (Particular Machine) and 2106.05(c) (Particular Transformation). For these reasons, we conclude the abstract idea is not integrated into a practical application, and thus claim 1 is directed to the judicial exception. Step 2B – “Inventive Concept” If the claims are directed to a patent-ineligible concept, as we conclude above, we proceed to the “inventive concept” step. For Step 2B we must “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 Texas, LLC v. DIRECTV, LLC, 838 F.3d 1253, 1258 (Fed. Cir. 2016) (quoting Elec. Power Grp., 830 F.3d at 1353). In applying step two of the Alice analysis, our reviewing court guides we must “determine whether the claims do significantly more than simply describe [the] abstract method” and thus transform the abstract idea into patentable subject matter. Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed. Cir. 2014). We look to see whether there are any “additional Appeal 2018-004037 Application 13/316,493 16 features” in the claims that constitute an “inventive concept,” thereby rendering the claims eligible for patenting even if they are directed to an abstract idea. Alice, 573 U.S. at 221. Those “additional features” must be more than “well-understood, routine, conventional activity.” Mayo, 566 U.S. at 79. Evaluating representative claim 1 under step 2B of the Revised Guidance, we conclude it lacks an inventive concept that transforms the abstract idea of mental processes into a patent-eligible application of that abstract idea. Regarding the recited “publishing system” in claim 1, the Specification describes the composite content provider, ad publisher, client devices, network, advertiser, and targeting criteria in general terms. See Spec. Fig. 1, ¶¶ 17–23, 26, 28. Because the Specification describes the additional elements in general terms, without describing the particulars, we conclude the claim limitations may be broadly but reasonably construed as reciting conventional computer components and techniques, particularly in light of Appellants’ Specification, as quoted above.7 Appellants argue in a conclusory manner that “the additional elements recited in the claims are not known and conventional pieces.” App. Br. 12. It is well settled, however, that mere attorney arguments and conclusory statements, which are unsupported by factual evidence, are entitled to little probative value. In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997); see 7 Claim terms are to be given their broadest reasonable interpretation, as understood by those of ordinary skill in the art and taking into account whatever enlightenment may be had from the Specification. In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997). Appeal 2018-004037 Application 13/316,493 17 also In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974) (attorney argument is not evidence). Thus, we conclude that claim 1 lacks an inventive concept that transforms the abstract idea of mental processes into a patent-eligible application of that abstract idea. Claim 1, in essence, merely recites various computer-based elements along with no more than mere instructions to implement the identified abstract idea using the computer-based elements. Therefore, we sustain the Examiner’s § 101 rejection of independent claim 1, and grouped claims 2–6, 8–12, 21, and 22, not argued separately, and which fall therewith. Rejection of Claims 1–6, 8–12, 21, and 22 under 35 U.S.C. § 112, Second Paragraph The Examiner rejected claims 1–6, 8–12, 21, and 22 as indefinite because the limitation “responsive to determining that the first set of values of differing from,” recited in claims 1 and 9, is ambiguous. Final Act. 6. Appellants argue that the rejection should be withdrawn because “[i]t is clear to one of ordinary skill in the art that the phrase in question refers to the first set of values differing from the second set of values.” App. Br. 13. We are not persuaded that the Examiner erred. The cited claim drafting is not precise and is subject to more than one possible meaning. For example, one could interpret the claim as omitting one or more words, but it is not clear which words are missing. “[I]ssuing patents with clear and definite claim language is a key component to enhancing the quality of patents and raising confidence in the patent process.” MPEP § 2173. During patent prosecution an applicant has the opportunity to amend the claims in order to overcome indefiniteness rejections. Exxon Research & Appeal 2018-004037 Application 13/316,493 18 Eng’g. Co. v. U.S., 265 F.3d 1371, 1380 (Fed. Cir. 2001) (citing In re Zletz, 893 F.2d 319, 322 (Fed. Cir. 1989)). The patent drafter is in the best position to resolve ambiguity in patent claims. MPEP § 2173.02 (quoting Halliburton Energy Servs. v. M-ILLC, 514 F.3d 1244, 1255 (Fed. Cir. 2008)). Indeed, 35 U.S.C. § 112, second paragraph, “puts the burden of precise claim drafting squarely on the applicant.” In re Morris, 127 F.3d at 1056. For these reasons, we affirm the Examiner’s rejection of claims 1–6, 8–12, 21, and 22 under 35 U.S.C. § 112, second paragraph. Rejection of Claims 1, 2, 5, 9–11, 21, and 22 under 35 U.S.C. § 103(a) Appellants contend that the Examiner erred in rejecting claim 1 for obviousness because the combination of Koningstein and Priyadarshan does not teach or suggest the limitation “responsive to determining that the user attribute causes the divergence, determining a plurality of suggestions for the advertiser to select to modify the targeting criteria to modify the first user segment of the initial target group,” as recited in claim 1. App. Br. 14. Appellants argue that the portions of Koningstein cited by the Examiner “are not concerned with modifying targeting criteria, much less with determining suggestions for modifying targeting criteria, and are certainly not more specifically concerned with determining suggestions for modifying targeting criteria in response to determining that the user attribute caused divergence.” Id. at 16. Appellants further argue that “Koningstein’s ‘suggestion list’ . . . is not determined ‘responsive to determining that the user attribute causes the divergence.’” Reply Br. 10 (emphasis omitted). Appellants also argue Appeal 2018-004037 Application 13/316,493 19 that the performance information taught in Koningstein is different from the user attribute that causes the divergence in the claims. App. Br. 16. We are not persuaded that the Examiner erred. The Examiner concluded that “Koningstein’s proximity of a user with CA is an attribute; the value of which may be either ‘in CA’ or ‘out of CA.’” Final Act. 9 (citing Koningstein ¶ 84) (emphasis added). Appellants have not persuasively rebutted the Examiner’s interpretation of “user attribute” as broad enough to include the proximity of a user with California. Specifically, Appellants have not persuasively shown that the Examiner’s interpretation is overly broad, unreasonable, or inconsistent with the Specification. The Examiner also found that Koningstein’s suggestion list is for the purpose of modifying the recited “audience segment.” Final Act. 11. The Examiner found that Koningstein’s audience segment may be modified through selection of targeting criteria in response to determining that a user attribute causes divergence used for segmentation. Id. (citing Koningstein ¶¶ 75–76). More specifically, the Examiner found that Koningstein teaches that user behavior feedback may be used to perform audience segmentation. Ans. 9 (citing Koningstein ¶ 63). The Examiner also found that at least paragraphs 63 and 75–76 of Koningstein teach determining a plurality of suggestions and providing them to the user. Id. The Examiner explained that the list of suggested audience segments was determined using performance information tracked by the user behavior feedback operations 320. Id. at 9–10. Again, Appellants have not persuasively shown error in the Examiner’s findings. See App. Br. 15–16; Reply 10–11. To the contrary, Appeal 2018-004037 Application 13/316,493 20 Appellants arguments are conclusory, merely reciting the claim limitation, the teachings of Koningstein, and stating that the two are not the same. Id. As stated by the Federal Circuit, Rule 41.37 “require[s] more substantive arguments in an appeal brief than a mere recitation of the claim elements and a naked assertion that the corresponding elements were not found in the prior art.” In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011). Appellants next contend the Examiner erred because the combination of Koningstein and Priyadarshan does not teach or suggest the limitation “providing . . . a graphical user interface based on the determined suggestions,” as recited in claim 1. App. Br. 17. Appellants argue that, in claim 1, the recited graphical user interface “is dependent upon” the determined suggestions. Id. at 18. We are not persuaded that the Examiner erred. We agree with the Examiner that Appellants’ interpretation of “based on” is overly narrow. See Ans. 10. Appellants have presented no persuasive reasoning to support their contention that “based on” means “is dependent on.” See App. Br. 18. We also agree with the Examiner that at least paragraph 76 of Koningstein teaches or suggests that the interface used to provide the suggestion list is at least “based on” the suggestions provided therein. See Ans. 10–11 (citing Koningstein ¶¶ 63, 76, 98). Appellants have not persuasively rebutted this finding by the Examiner. Appellants further contend the combination of Koningstein and Priyadarshan does not teach or suggest the graphical user interface including a graphical representation of the first set of values of the user attribute and a corresponding first set of graphical controls specifying first functionality related to the first set of values of the user Appeal 2018-004037 Application 13/316,493 21 attribute corresponding to a first determined suggestion, and a graphical representation of the second set of values of the user attribute and a corresponding second set of graphical controls specifying second functionality related to the second set of values of the user attribute corresponding to a second determined suggestion, the first functionality different from the second functionality, as recited in claim 1. App. Br. 19. In particular, Appellants argue that Priyadarshan “does not disclose at least the claimed ‘set of graphical controls specifying ... functionality related to the ... set of values of the user attribute corresponding to a ... determined suggestion’,” as recited in claim 1. Id. at 20. We are not persuaded that the Examiner erred. Nonobviousness cannot be established by attacking the references individually when the rejection is predicated upon a combination of prior art disclosures. See In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986). The test for obviousness is not whether the claimed invention is expressly suggested in any one or all of the references, but whether the claimed subject matter would have been obvious to those of ordinary skill in the art in light of the combined teachings of those references. See In re Keller, 642 F.2d 413, 425 (CCPA 1981). Here, the Examiner found that Koningstein teaches that “advertisers are provided with a ‘user interface’ to select [modify] audience segments and this includes (e.g., see [0063]) functionality to enter ‘characteristics of audience segments’ [set of values of the user attribute] and per at least [0063] and [0076] the user is ‘provided with a suggestion list from which the advertiser can select audience segments.’” Ans. 12 (citing Koningstein ¶¶ 60, 63, 76). Appeal 2018-004037 Application 13/316,493 22 The Examiner also found that Figure 30 of Priyadarshan illustrates a graphical user interface for generating a custom segment. Final Act. 12–13; Ans. 12 (citing Priyadarshan Fig. 30, ¶¶ 200, 213). The interface presents particular categories of user characteristics (i.e., attributes). Id. The Examiner also found that Priyadarshan teaches to include a characteristic (attribute) in the custom segment, a content provider simply selects the associated box, which the Examiner maps to “graphical controls.” Id. Additionally, each characteristic is presented with an expandable list of available user characteristic values, which the Examiner mapped to graphical controls specifying different functionality related to the value of the attribute corresponding to its respective suggestion, and a check box is specific for each characteristic (attribute) or characteristic value (attribute value). Id. “The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). The Examiner applied known techniques in the art (as taught in Priyadarshan) to a known device or method (as taught in Koningstein) to yield predictable results. See Ans. 13. Appellants have not persuaded us that the teachings of Koningstein and Priyadarshan, as combined by the Examiner, do not teach or suggest the disputed limitation of claim 1. For these reasons, we are not persuaded by Appellants’ argument that the Examiner erred finding that Koningstein teaches or suggests the disputed limitations of claim 1. Appeal 2018-004037 Application 13/316,493 23 Accordingly, we sustain the Examiner’s rejection of claim 1 under § 103(a), as well as the Examiner’s § 103(a) rejection of claims 2, 5, 9–11, 21, and 22, not argued separately with particularity. Rejection of Claims 4 and 8 under 35 U.S.C. § 103(a) Appellants contend the Examiner erred because Koningstein and Priyadarshan do not teach or suggest “forming a plurality of combination clusters by clustering the combinations according to similarity in the values of the advertising metric of the combinations” as recited in claim 8. App. Br. 20. Appellants argue that the Examiner “erroneously relied upon Koningstein’s users as allegedly reading on the claimed ‘combination clusters.’” Id. at 21. Appellants contend that, unlike the claimed “combination clusters,” which are formed based on clustering “combinations of the values of the user attributes,” Koningstein’s users are “split” based only on user location. Id. Appellants’ arguments are not persuasive, at least because they do not address the rejection actually made by the Examiner, who mapped Koningstein’s “segments” to the recited “cluster.” Final Act. 21–22 (“Konningstein’s [sic] determination of segments, based on performance metrics [ad metrics], reads on applicant’s forming “clusters.”). We agree with the Examiner that Koningstein provides an example of two such “clusters”: (i) users in California and (ii) users outside California. Id. at 22. In the Reply Brief, Appellants for the first time present arguments directed to the Examiner’s findings with regard to Heiser. Reply Br. 11. Specifically, Appellants argue that the cited portions of Heiser do not teach or suggest “identifying, as a segment to be removed, a group of users having the user attribute values of the combinations in the identified combination Appeal 2018-004037 Application 13/316,493 24 cluster,” as recited in claim 8. Appellants, however, have waived this argument because they presented it for the first time in the Reply Brief, without a showing of good cause. See 37 C.F.R. § 41.41(b)(2) (2012); accord Ex parte Borden, 93 USPQ2d 1473, 1473–74 (BPAI 2010 (informative opinion) (“[T]he reply brief [is not] an opportunity to make arguments that could have been made in the principal brief on appeal to rebut the Examiner's rejections, but were not.”). We note, however, that Appellants’ argument is not only untimely, it is unpersuasive. The Examiner found that Heiser teaches that [t]he software of the system can break out the criteria used to define the market segment and suggest that if certain criteria for the market segment were to be removed then .... For example, the marketer could be presented with the option to define the market...; Heiser suggests removal of targeting criteria and presents an analysis/prediction of an outcome based on the proposed change. Ans. 22 (quotation omitted). Therefore, based upon the findings above, on this record, we are not persuaded of error in the Examiner’s reliance on the cited prior art combination to teach or suggest the disputed limitation(s) of claim 8, nor do we find error in the Examiner’s resulting legal conclusion of obviousness. Therefore, we sustain the Examiner’s obviousness rejection of dependent claim 8, and grouped claim 4, not argued separately. DECISION We affirm the Examiner’s decision rejecting claims 1–6, 8–12, 21, and 22. Appeal 2018-004037 Application 13/316,493 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 Copy with citationCopy as parenthetical citation