Stubbs, Charles et al.

Patent Trials and Appeals Board

Jun 9, 2020

2018004411 (P.T.A.B. Jun. 9, 2020)

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.
10/931,138 08/31/2004 Charles Stubbs 040096 8686
38516 7590 06/09/2020
AT&T Legal Department - SZ
Attn: Patent Docketing
Room 2A212
One AT&T Way
Bedminster, NJ 07921
EXAMINER
ROBINSON, AKIBA KANELLE
ART UNIT PAPER NUMBER
3628
NOTIFICATION DATE DELIVERY MODE
06/09/2020 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):
admin@scottzimmerman.com
eOfficeActionDocs@att.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte CHARLES STUBBS, LAURIE SCHOLL,
DEREK TALBOT, MATTHEW MULQUEEN, BILL LOTT,
W. B. CASWELL JR., and NEIL SALVAGE
____________

Appeal 2018-0044111
Application 10/931,138
Technology Center 3600
____________

Before MURRIEL E. CRAWFORD, ANTON W. FETTING, and
MATTHEW S. MEYERS, Administrative Patent Judges.

FETTING, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE2

Charles Stubbs, Laurie Scholl, Derek Talbot, Matthew Mulqueen, Bill
Lott, W. B. Caswell JR., and Neil Salvage (Appellant3) seeks review under

1 Oral arguments were presented April 27, 2020.
2 Our decision will make reference to the Appellant’s Appeal Brief (“App.
Br.,” filed September 29, 2017) and Reply Brief (“Reply Br.,” filed March
23, 2018), and the Examiner’s Answer (“Ans.,” mailed January 25, 2018),
and Final Action (“Final Act.,” mailed May 3, 2017).
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35 U.S.C. § 134 of a final rejection of claims 1–7, 12–16, and 20–23, the
only claims pending in the application on appeal. We have jurisdiction over
the appeal pursuant to 35 U.S.C. § 6(b).
The Appellant invented an internet pricing system. Specification
3:15–16.
An understanding of the invention can be derived from a reading of
exemplary claim 12, which is reproduced below (bracketed matter and some
paragraphing added).
12. A method, comprising:
[1] monitoring, by a server, selections of uniform resource
locators that link as Internet traffic to a customer website, the
Internet traffic resulting from Internet searches during a period
of time;
[2] authorizing, by the server, a number of search terms
associated with the customer website during an online auction
conducted by a provider associated with an Internet search
engine;
[3] defining, by the server, a target level associated with the
Internet traffic to the customer website during the period of
time;
[4] comparing, by the server, the target level to the Internet
traffic;
[5] submitting, by the server, an increased number of the search
terms associated with the customer website to the Internet
search engine,
the increased number of the search terms in response to
the Internet traffic being less than the target level;

3 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 AT&T
Intellectual Property I, L.P. (Appeal Br. 3).

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and
[6] submitting, by the server, a decreased number of the search
terms associated with the customer website to the Internet
search engine,
the decreased number of the search terms in response to
the Internet traffic being greater than the target level.
Claims 1–7, 12–16, and 20–23 stand rejected under 35 U.S.C. § 101
as directed to a judicial exception without significantly more.
ISSUES
The issues of eligible subject matter turn primarily on whether the
claims recite more than abstract conceptual advice of results desired.
ANALYSIS
STEP 14
Claim 12, 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 whether the additional

4 For continuity of analysis, we adopt the steps nomenclature from 2019
Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7,
2019) (“Revised Guidance”).
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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 Int’l, 573 U.S. 208, 217–18 (2014) (citations
omitted) (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, 84 Fed. Reg. 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 12 recites monitoring selection data, authorizing a number of search
term data, defining target level data, comparing target level and traffic data,
and submitting increased or decreased numbers of search term data in
response to the comparison result. Monitoring data is receiving data.
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Authorizing data is updating data to represent the authorization. Defining
data is updating data to represent the definition. Comparing data is
rudimentary analysis. Submitting search terms data is data transmission.
Thus, claim 12 recites receiving, updating, analyzing, and transmitting data.
None of the limitations recites technological implementation details for any
of these steps, but instead recite only results desired by any and all possible
means.
From this we see that claim 12 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 in-eligible. As set forth in the Revised Guidance, which
extracts and synthesizes key concepts identified by the courts, abstract ideas
include (1) mathematical concepts5, (2) certain methods of organizing
human activity6, and (3) mental processes7. Among those certain methods
of organizing human activity listed in the Revised Guidance are commercial
or legal interactions. Like those concepts, claim 12 recites the concept of
managing advertising activity. Specifically, claim 12 recites operations that

5 See, e.g., Gottschalk v. Benson, 409 U.S. 63, 71–72 (1972); Bilski v.
Kappos, 561 U.S. 593, 611 (2010); Mackay Radio & Telegraph Co. v. Radio
Corp. of Am., 306 U.S. 86, 94 (1939); SAP America, Inc. v. InvestPic, LLC,
898 F.3d 1161, 1163 (Fed. Cir. 2018).
6 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).
7 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).
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would ordinarily take place in advising one to manipulate advertising query
levels to achieve approximate numeric targets. The advice to manipulate
advertising query levels to achieve approximate numeric targets involves
monitoring such advertising query levels, which is an advertising
management act, and sending advertising queries in for response, which is
an act ordinarily performed in the stream of commerce. For example, claim
12 recites “monitoring . . . Internet traffic to a customer website, . . .
resulting from Internet searches,” which is an activity that would take place
whenever one is monitoring advertising search queries. Similarly, claim 1
recites “submitting . . . the search terms associated with the customer
website to the Internet search engine,” which is also characteristic of
managing advertising queries to a search.
The Examiner determines the claims to be directed to managing
relationships or transactions between people and sales activities. Final Act.
3. The preamble to claim 12 does not recite what it is to achieve, but the
steps in claim 12 result in managing advertising activity by manipulating
advertising query levels to achieve approximate numeric targets absent any
technological mechanism other than a conventional computer for doing so.
As to the specific limitations, limitation 1 recites receiving data.
Limitations 2–6 recite generic and conventional updating, analyzing, and
transmitting of advertising query data, which advise one to apply generic
functions to get to these results. The limitations thus recite advice for
manipulating advertising query levels to achieve approximate numeric
targets. To advocate manipulating advertising query levels to achieve
approximate numeric targets is conceptual advice for results desired and not
technological operations.
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The Specification at 3:15–16 describes the invention as relating to an
internet pricing system. Thus, all this intrinsic evidence shows that claim
12 recites managing advertising activity. 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 managing advertising
activity is a way of inducing customer commerce. The concept of managing
advertising activity by manipulating advertising query levels to achieve
approximate numeric targets is one idea for distributing advertising as a
commodity. The steps recited in claim 12 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. Ultramercial, Inc. v. Hulu, LLC,
772 F.3d 709, 715 (Fed. Cir. 2014)(advertising).
From this we conclude that at least to this degree, claim 12 recites
managing advertising activity by manipulating advertising query levels to
achieve approximate numeric targets, 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 12 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.8

8 See, e.g., Alice, 573 U.S. at 223, discussing Diamond v. Diehr, 450 U.S.
175 (1981).
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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
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).
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. Step 1 is a pure data gathering step.
Limitations describing the nature of the data do not alter this. Steps 2 and 3
recite basic conventional data operations such as generating, updating, and
storing data. Steps 5 and 6 are insignificant post solution activity, such as
storing, transmitting, or displaying the results. Step 4 recites 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 12 simply recites the concept of
managing advertising activity by manipulating advertising query levels to
achieve approximate numeric targets as performed by a generic computer.
This is no more than conceptual advice on the parameters for this concept
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and the generic computer processes necessary to process those parameters,
and do not recite any particular implementation.
Claim 12 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 21+ pages of specification9 do not bulge
with disclosure, but only spell out different generic equipment10 and
parameters that might be applied using this concept and the particular steps
such conventional processing would entail based on the concept of
managing advertising activity by manipulating advertising query levels to
achieve approximate numeric targets under different scenarios. They do not
describe any particular improvement in the manner a computer functions.
Instead, claim 12 at issue amounts to nothing significantly more than an
instruction to apply managing advertising activity by manipulating
advertising query levels to achieve approximate numeric targets 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

9 Page 1 is just a title page and the last page is only two thirds full.
10 The Specification describes a computer-based system, processor-
containing system, or other system that can fetch the instructions from the
instruction execution system. Spec. 23:2–4.
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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.
We conclude that claim 12 is directed to achieving the result of
managing advertising activity by advising one to manipulate advertising
query levels to achieve approximate numeric targets, 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 12 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.
the 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 “implement[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
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ubiquity of computers, wholly generic computer
implementation is not generally the sort of “additional
feature[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).
“[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, updating, analyzing, 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
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and analysis other than abstract.” SAP America, Inc. v. InvestPic LLC, 898
F.3d 1161, 1168 (Fed. Cir. 2018).
Considered as an ordered combination, the computer components of
Appellant’s claim 12 add nothing that is not already present when the steps
are considered separately. The sequence of data reception-update-analysis-
transmission is equally generic and conventional. See 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 Communications,
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 12 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 12 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
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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.
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 managing advertising activity by advising one to
manipulate advertising query levels to achieve approximate numeric targets,
without significantly more.
APPELLANT’S ARGUMENTS
We are not persuaded by Appellant's argument that the Examiner
mischaracterized the claims. Appellant contends that the Examiner’s
characterization fails to mention various features. App. Br. 7–8. The
Examiner explicitly considered and treated each of the steps. Final Act. 2–3.
Presumably, Appellant quarrels with the Examiner’s lack of reference to the
nature of the data the steps operate upon. But “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, 898 F.3d at 1168.
We are not persuaded by Appellant's argument that independent
claim 1 addresses a "business challenge" that is "particular to the internet,"
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as in DDR. App. Br. 9–11. Similarly, we are not persuaded by Appellant's
argument that independent claim 1 is "rooted in computer technology in
order to overcome a problem specifically arising in the realm of computer
networks," as in DDR. App. Br. 11–13. In both these arguments, Appellant
contends that the asserted claims are akin to the claims found patent-
eligible in DDR Holdings, LLC v. Hotels.com, L.P. 773 F.3d 1245 (Fed.
Cir. 2014). In DDR Holdings, the Court evaluated the eligibility of claims
“address[ing] the problem of retaining website visitors that, if adhering to
the routine, conventional functioning of Internet hyperlink protocol,
would be instantly transported away from a host’s website after
‘clicking’ on an advertisement and activating a hyperlink.” Id. at 1257.
There, the Court found that the claims were patent eligible because they
transformed the manner in which a hyperlink typically functions to
resolve a problem that had no “pre-Internet analog.” Id. at 1258. The
Court cautioned, however, “that not all claims purporting to address
Internet-centric challenges are eligible for patent.” Id. For example, in
DDR Holdings the Court distinguished the patent-eligible claims at issue
from claims found patent-ineligible in Ultramercial. See id. at 1258–59
(citing Ultramercial, 7 7 2 F.3d at 715–16). As noted there, the
Ultramercial claims were “directed to a specific method of advertising and
content distribution that was previously unknown and never employed on
the Internet before.” Id. at 1258 (quoting Ultramercial, 772 F.3d at 715–
16). Nevertheless, those claims were patent ineligible because they
“merely recite[d] the abstract idea of ‘offering media content in exchange
for viewing an advertisement,’ along with ‘routine additional steps such as
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updating an activity log, requiring a request from the consumer to view the
ad, restrictions on public access, and use of the Internet.’” Id.
Appellant’s asserted claims are analogous to claims found ineligible
in Ultramercial and distinct from claims found eligible in DDR Holdings.
The ineligible claims in Ultramercial recited “providing [a] media product
for sale at an Internet website;” “restricting general public access to said
media product;” “receiving from the consumer a request to view [a]
sponsor message;” and “if the sponsor message is an interactive message,
presenting at least one query to the consumer and allowing said consumer
access to said media product after receiving a response to said at least one
query.” 772 F.3d at 712. Similarly, Appellant’s asserted claims recite
receiving, updating, analyzing, and transmitting data. This is precisely the
type of Internet activity found ineligible in Ultramercial.
Appellant specifically refers to how the
Specification expressly explains how "web searches" are of a
"particular interest to businesses." Indeed, it is "imperative for
businesses (especially small businesses) to be included in
search engines' databases of web pages." However, "most
search engines have turned their search engine database into a
profit center," in which fees are charged for "buying entry into a
search engine's database, or pay-per-click by buying the right to
appear when particular search terms are used."
App. Br. 9 (citations omitted). This describes a business and marketing
problem, not a technological problem. Web searches are the product being
sold. There is no discussion of difficulty and solution to the technological
mechanisms of web searches. Instead, the difficulty is in managing the
production levels of a product for sale, in this case such searches. This is a
classic production management issue having nothing to do with
technological issues.
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We are not persuaded by Appellant's argument that independent claim
1 is analogous to McRO. App. Br. 13–14. In this, 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). 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 IP, LLC v. Iatric
Systems, 839 F.3d 1089, 1094 (Fed. Cir. 2016) (differentiating the claims
at issue from those in McRO). In McRO, “it was the incorporation of the
claimed rules not the use of the computer, that improved the existing
technology 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, citation,
and alterations omitted). In contrast, the claims of the instant application
merely implement an old practice of using decision criteria in making
delivery decisions in a new environment. Appellant has not argued that the
claimed processes of selecting delivery levels apply rules of selection in a
manner technologically different from those which humans used, albeit with
less efficiency, before the invention was claimed. Merely pigeon holing the
objects of decision making in tiers 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
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subjective process performed by human artists into a
mathematically automated process executed on computers.
FairWarning, 839 F.3d at 1094 (differentiating the claims at issue from
those in McRO).
We are not persuaded by Appellant's argument that dependent claims
2–7 recite "significantly more" under DDR. App. Br. 14–15. Appellant
only refers to the arguments made in the parent claim rejection as support,
and they are no more persuasive here.
We are not persuaded by Appellant's argument that dependent claims
2–7 satisfy McRO. App. Br. 15. Appellant only refers to the arguments
made in the parent claim rejection as support, and they are no more
persuasive here.
We are not persuaded by Appellant's argument that independent claim
12 addresses a "business challenge" that is "particular to the internet," as in
DDR. App. Br. 15–16. Appellant repeats the argument made as to claim 1,
which is similar in substance. That argument is no more persuasive here.
We are not persuaded by Appellant's argument that independent claim
12 is "rooted in computer technology to overcome a problem specifically
arising in the realm of computer networks," as in DDR. App. Br. 16–18.
Appellant repeats the argument made as to claim 1, which is similar in
substance. That argument is no more persuasive here.
We are not persuaded by Appellant's argument that independent claim
12 is analogous to McRO. App. Br. 18–19. Appellant repeats the argument
made as to claim 1, which is similar in substance. That argument is no more
persuasive here.
We are not persuaded by Appellant's argument that dependent claims
13–16 recite "significantly more" under DDR. App. Br. 19–20. Appellant
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only refers to the arguments made in the parent claim rejection as support,
and they are no more persuasive here.
We are not persuaded by Appellant's argument that dependent claims
13–16 satisfy McRO. App. Br. 20. Appellant only refers to the arguments
made in the parent claim rejection as support, and they are no more
persuasive here.
We are not persuaded by Appellant's argument that independent claim
20 addresses a "business challenge" that is "particular to the internet," as in
DDR. App. Br. 20–21. Appellant repeats the argument made as to claim 1,
which is similar in substance. That argument is no more persuasive here.
We are not persuaded by Appellant's argument that independent claim
20 is "rooted in computer technology to overcome a problem specifically
arising in the realm of computer networks," as in DDR. App. Br. 21–23.
Appellant repeats the argument made as to claim 1, which is similar in
substance. That argument is no more persuasive here.
We are not persuaded by Appellant's argument that independent claim
20 is analogous to McRO. App. Br. 23–24. Appellant repeats the argument
made as to claim 1, which is similar in substance. That argument is no more
persuasive here.
We are not persuaded by Appellant's argument that dependent claims
21–23 recite "significantly more" under DDR. App. Br. 24–25. Appellant
only refers to the arguments made in the parent claim rejection as support,
and they are no more persuasive here.
We are not persuaded by Appellant's argument that dependent claims
21–23 satisfy McRO. App. Br. 25. Appellant only refers to the arguments
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made in the parent claim rejection as support, and they are no more
persuasive here.
We are not persuaded by Appellant's argument that
the claim elements must recite an improvement that goes
beyond "well-understood, routine, and conventional activity."
Indeed, if no prior art is cited against the pending claims,
the pending claims must logically transform any alleged
abstract idea into patent eligible subject matter. The
pending claims, in plain words, must satisfy Step 2 of the
Mayo/Alice inquiry.
App. Br. 25–26. Appellant’s attempt at a logic syllogism is actually a non-
sequitur. Novelty and obviousness differ from eligibility. “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).
Appellant further argues that the asserted claims are akin to the
claims found patent-eligible in Diamond v. Diehr, 450 U.S. 175 (1981).
App. Br. 26–27. But,
we must read Diehr in light of Alice, which emphasized that
Diehr does not stand for the general proposition that a claim
implemented on a computer elevates an otherwise ineligible
claim into a patent-eligible improvement. Alice. Rather, Diehr
involved “a ‘well-known’ mathematical equation ... used ... in a
process designed to solve a technological problem in
‘conventional industry practice.’”
OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1363 (Fed. Cir. 2015).
Diehr solved a technological problem in the conventional industry practice
of molding tires. Here Appellant argues only that the invention directs
content for search results based on request levels. Modifying content is not
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a technological industry practice, but instead it is only making content
available as desired.
Appellant argues that the asserted claims are akin to the claims
found patent-eligible in Finjan, Inc. v. Blue Coat System, Inc., 879 F.3d
1299 (Fed. Cir. 2018). Reply Br. 18–19. In Finjan, the Court held that
claims to a “behavior-based virus scan” were a specific improvement in
computer functionality and hence not directed to an abstract idea. 879 F.3d
at 1304. The claimed technique of scanning enabled “more flexible and
nuanced virus filtering” and detection of potentially dangerous code. Id.
This was done by “scanning a downloadable and attaching the results of that
scan to the downloadable itself in the form of a ‘security profile.’” Id. at
1303. The security profile included the information about potentially hostile
operations produced by a “behavior-based” virus scan, as distinguished from
traditional, “code-matching” virus scans that are limited to recognizing the
presence of previously-identified viruses, typically by comparing the code in
a downloadable to a database of known suspicious code. Id. at 1304. This
behavior-based scan was a new type of file that when attached to a
downloadable allowed the computer to do more to protect itself than in the
past.
The instant claims present no such new type of processing to create a
file that improves computer performance. Instead, the claims are
conventional data processing of search and advertising related data. They
may improve achieving management target levels of commerce, but this is
not an improvement to the computer.
Appellant refers to a newer case at oral arguments and argues that the
asserted claims are akin to the claims found patent-eligible in SRI Int’l,
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Inc. v. Cisco Sys. Inc., 930 F.3d 1295, 1304 (Fed. Cir. 2019). Oral Hearing
Transcript mailed May 6, 2020, 3:1–2. There the Court held patent eligible
claims directed to an improved method of network security “using network
monitors to detect suspicious network activity generating reports of that
suspicious activity, and integrating those reports using hierarchical
monitors.” 930 F.3d at 1303. The Court concluded that the “focus of the
claims was on the specific asserted improvement in computer capabilities,”
namely “providing a network defense system that monitors network traffic
in real-time to automatically detect large-scale attacks.” Id. at 1303–04.
Significantly, the Court construed “network traffic data” as data obtained
from direct examination of network packets. Id. at 1306.
Appellant cites our prior Decision (Ex Parte Stubbs, 2012-007541
(PTAB 8/5/2014)) at page 10 for its use of the term “traffic.” Appellant
contends that our description that “the customer purchases an additional
number of search terms to increase traffic to the customer website,” id., is
analogous to SRI’s detecting network traffic data in its claim 1. Appellant
concludes that the claims are therefore patent eligible because basing action
on reacting to network traffic is a technological improvement. Appellant
draws the wrong implication from SRI. The mere fact that the instant claims
use the same word “traffic” is insufficient to make this leap. The Court in
SRI held that the claims provided a network defense system that monitored
network traffic in real-time to automatically detect large-scale attacks. The
instant claims instead enforce the terms of an advertising contract.
Appellant also refers to SRI describing how “the claims actually
prevent the normal, expected operation of a conventional computer
network,” and analogize that to our description of how the art cited by the
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Examiner did “the opposite of what is claimed.” Ex Parte Stubbs at 10. But
that was not the opposite of conventional computing, but instead, the
opposite of a different contractual arrangement. Finally, the term “traffic” is
a collective noun. Much as a mob of thieves is very different from a mob of
kangaroos11, the characteristics of a collective noun depend largely on the
content of what it collects. The Court in SRI construed its traffic to contain
data obtained from direct examination of network packets. The traffic in the
instant claims contain search terms. The difference is that while SRI
examined packet data, which contains data relating the packet content to
nodes in the physical network that could be exploited to discover potential
threats, the instant claims examine search term data and simply count the
number of searches against a contractual target level. Instead of protecting a
physical, technological network, the instant claims enforce the terms of a
conceptual contractual agreement. As the Court in Customedia stated,
In sum, “software can make non-abstract improvements to
computer technology just as hardware improvements can.”
Enfish, 822 F.3d at 1335. But to be directed to a patent-eligible
improvement to computer functionality, the claims must be
directed to an improvement to the functionality of the computer
or network platform itself. See, e.g., id. 1336–39; DDR
Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1257–59
(Fed. Cir. 2014). Thus, this inquiry “often turns on whether the
claims focus on ‘the specific asserted improvement in computer
capabilities . . . or, instead, on a process that qualifies as an
“abstract idea” for which computers are invoked merely as a
tool.’” Finjan, 879 F.3d at 1303 (quoting Enfish, 822 F.3d at
1335–36).
Against this background, we agree with the Board that the
claims here are not directed to a patent-eligible improvement to

11 “Mob” is the proper collective noun in each instance.
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computer functionality. The claims of the ’090 and ’494
patents do not enable computers to operate more quickly or
efficiently, nor do they solve any technological problem. They
merely recite reserving memory to ensure storage space is
available for at least some advertising data. The specification is
silent as to any specific structural or inventive improvements in
computer functionality related to this claimed system. See, e.g.,
’090 patent at 30:57–67, 3:47–50. The only improvements
identified in the specification are generic speed and efficiency
improvements inherent in applying the use of a computer to any
task. Therefore, the claimed invention is at most an
improvement to the abstract concept of targeted advertising
wherein a computer is merely used as a tool. This is not an
improvement in the functioning of the computer itself.
Customedia Techs., LLC v. Dish Network Corp., 951 F.3d 1359, 1364 (Fed.
Cir. 2020). Similarly, here the claimed invention is at most an improvement
to the abstract concept of targeted advertising wherein a computer is merely
used as a tool. This is not an improvement in the functioning of the
computer itself.
CONCLUSIONS OF LAW
The rejection of claims 1–7, 12–16, and 20–23 under 35 U.S.C. § 101
as directed to a judicial exception without significantly more is proper.
CONCLUSION
The rejection of claims 1–7, 12–16, and 20–23 is affirmed.
In summary:
Claims
Rejected
35 U.S.C. § Basis Affirmed Reversed
1–7, 12–16,
20–23
101 Eligibility 1–7, 12–16,
20–23

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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