Rong Yan et al.

Patent Trials and Appeals Board

Aug 28, 2019

13316493 - (D) (P.T.A.B. Aug. 28, 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.
13/316,493 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