Facebook. Inc.

Patent Trials and Appeals Board

Jun 11, 2020

2019002196 (P.T.A.B. Jun. 11, 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.
14/280,137 05/16/2014 Daniel Slotwiner 26295-26269/US 1097
87851 7590 06/11/2020
Facebook/Fenwick
Silicon Valley Center
801 California Street
Mountain View, CA 94041
EXAMINER
TOKARCZYK, CHRISTOPHER B
ART UNIT PAPER NUMBER
3622
NOTIFICATION DATE DELIVERY MODE
06/11/2020 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):
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 DANIEL SLOTWINER, NEHA BHARGAVA, EURRY KIM,
DAVID YONG JOON PIO, ROBERT ANDREW CREEKMORE,
OMID SAADATI, and TARUN KARTIKAYE SHARMA
________________

Appeal 2019-002196
Application 14/280,137
Technology Center 3600
________________

Before JOHN A. EVANS, JASON J. CHUNG, and
MICHAEL T. CYGAN, Administrative Patent Judges.

CHUNG, Administrative Patent Judge.

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals the Final Rejection
of claims 1–23. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
INVENTION
The invention relates to presenting and evaluating advertisements for
achieving an objective. Spec. ¶ 1. Claim 1 is illustrative of the invention
and is reproduced below:
1. A method comprising:

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. According to Appellant, Facebook, Inc. is the real party in
interest. Appeal Br. 2.
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receiving training data comprising:
a plurality of test ad creatives, each test ad creative
associated with an advertiser and associated with one or more
features, each feature associated with a question describing content of
a test ad creative;
a plurality of test feature scores for each test ad creative
in the plurality of test ad creatives, each test feature score of the test
ad creative based at least in part on received answers to a question
associated with a corresponding feature of the test ad creative; and
one or more test objective scores for each test ad creative
in the plurality of test ad creatives, each test objective score of the test
ad creative measuring how well the test ad creative achieves an
objective of a plurality of possible objectives;
training a model that is usable to determine one or more
objective scores for an ad creative based on one or more feature scores
using the training data;
receiving a request to evaluate a target ad creative from a
requesting advertiser of an online system for presentation to one or
more users of the online system, the target ad creative comprising a
plurality of target feature scores based on received answers to
questions describing content of the target ad creative;
determining a target objective score for one or more objectives
for the target ad creative by applying the trained model to one or more
target features scores of the target ad creative; and
presenting feedback to the requesting advertiser based at least
in part on the objective scores of the target ad creative, the feedback
corresponding to a predicted effectiveness of the target ad creative in
achieving the one or more objectives based on effectiveness of the
plurality of test ad creatives.

Appeal Br. 14 (Claims App.) (emphases added to indicate additional, i.e.,
non-abstract, elements).
REJECTIONS
Claims 1–23 stand rejected under 35 U.S.C. § 101 as being directed to
patent-ineligible subject matter. Final Act. 2–6.
Claims 1–23 stand rejected under 35 U.S.C. § 103 as being
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unpatentable over Hegeman et al. (US 2013/0124297 A1; published May 16,
2013) (“Hegeman”) and Richardson et al. (US 2008/0249832 A1; published
Oct. 9, 2008) (“Richardson”). Final Act. 7–19.

ANALYSIS
We have only considered those arguments that Appellant actually
raised in the Briefs.2,3 Arguments Appellant could have made, but chose not
to make, in the Briefs have not been considered and are deemed to be
waived. See 37 C.F.R. § 41.37(c)(1)(iv) (2018).

I. SECTION 101 REJECTION
A. Principles of Law
An invention is patent-eligible if it claims a “new and useful process,
machine, manufacture, or composition of matter.” 35 U.S.C. § 101.
However, the U.S. 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. E.g., Alice Corp. v. CLS Bank Int’l, 573
U.S. 208, 216 (2014).
In determining whether a claim falls within an excluded category, we
are guided by the Court’s two-part framework, described in Mayo and Alice.

2 In the instant appeal, claims 2–23 are not separately argued from claim 1 in
either of Appellant’s briefs (Appeal Br. 4–12; Reply Br. 2–6), and will not
be addressed separately.
3 Appellant does not provide page numbers in the Briefs. We numbered the
pages in the Briefs in chronological order starting from page 1 on the first
page up to page 13 for the page immediately preceding the Claims
Appendix. In the Reply Brief, we numbered the pages 1 to 7. We refer to
those page numbers in our Decision.
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Id. at 217–18 (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc.,
566 U.S. 66, 75–77 (2012)). In accordance with that framework, we 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, 67 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as “molding rubber products” (Diamond v. Diehr, 450 U.S. 175, 191
(1981)); “tanning, dyeing, making waterproof cloth, vulcanizing India
rubber, smelting ores” (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S.
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
Court held that “a claim drawn to subject matter otherwise statutory does not
become nonstatutory simply because it uses a mathematical formula.”
Diehr, 450 U.S. at 187; 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 Court
also indicated that a claim “seeking patent protection for that formula in the
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abstract . . . is not accorded the protection of our patent laws, and this
principle cannot be circumvented by attempting 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.”).
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 (quotation marks omitted).
“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. (alterations in original) (quoting Mayo,
566 U.S. at 77). “[M]erely 5equire[ing] generic computer implementation[]
fail[s] to transform that abstract idea into a patent-eligible invention.” Id.
B. USPTO Section 101 Guidance
In January 2019, the U.S. Patent and Trademark Office (USPTO)
published revised guidance on the application of § 101. 2019 Revised Patent
Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019)
(“2019 Revised Guidance”).4 “All USPTO personnel are, as a matter of

4 In response to received public comments, the Office issued further
guidance on October 17, 2019, clarifying the 2019 Revised Guidance.
USPTO, October 2019 Update: Subject Matter Eligibility (the “Update”)
(available at
https://www.uspto.gov/sites/default/files/documents/peg_oct_2019_update.p
df).
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internal agency management, expected to follow the guidance.” Id. at 51;
see also Update at 1.
Under the 2019 Revised Guidance and the Update, 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) (“Step 2A, Prong One”); and
(2) additional elements that integrate the judicial exception into a
practical application (see MPEP § 2106.05(a)–(c), €–(h) (9th ed.
Rev. 08.2017, Jan. 2018)) (“Step 2A, Prong Two”).5
2019 Revised Guidance, 84 Fed. Reg. at 52–55.
Only if a claim (1) recites a judicial exception and (2) does not
integrate that exception into a practical application, do we then look, under
Step 2B, to whether the claim:
(3) adds a specific limitation beyond the judicial exception that is 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 This evaluation is performed by (a) identifying whether there are any
additional elements recited in the claim beyond the judicial exception, and
(b) evaluating those additional elements individually and in combination to
determine whether the claim as a whole integrates the exception into a
practical application. See 2019 Revised Guidance - Section III(A)(2), 84
Fed. Reg. 54–55.
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2019 Revised Guidance, 84 Fed. Reg. at 52–56.
C. The Examiner’s Rejection and Appellant’s Arguments
The Examiner concludes that the claims recite certain methods of
organizing human activity. Final Act. 4. The Examiner further concludes
that the abstract idea is not integrated into a practical application, because
the additional elements amount to mere instructions to implement the
abstract ideas on a computer and “do not add meaningful limits to practicing
the abstract idea.” Id. at 6. The Examiner finds that the claims do not recite
additional elements that go beyond what is well-understood, routine, and
conventional activity (Id. at 5–6; citing Spec. ¶¶ 51–53), such that they do
not amount to significantly more than the judicial exception. Final Act. 6.
Appellant argues that the claimed invention is not directed to an
abstract idea. Appeal Br. 4–6 (citing McRO, Inc. v. Bandai Namco Games
Am. Inc., 837 F.3d 1299 (Fed. Cir. 2016)); Reply Br. 2–4. Instead, Appellant
contends that the present claims are similar to Example 39 of the Abstract
Ideas Examples.6 Reply Br. 3–4. Appellant argues that the Examiner’s
analysis is deficient, because it fails to consider whether claimed
requirements of the training data are well-understood, routine and
conventional. Appeal Br. 7 (citing Berkheimer v. HP Inc., 881 F.3d 1360
(Fed. Cir. 2018). Appellant further argues that the claimed limitations, when
considered as an ordered combination of elements, allow an advertiser to

6 In conjunction with the 2019 Revised Guidance, the Office issued
examples of claims that do not recite abstract ideas. USPTO, Subject Matter
Eligibility Examples: Abstract Ideas (“Abstract Ideas Examples”) (available
at
https://www.uspto.gov/sites/default/files/documents/101_examples_37to42_
20190107.pdf).
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evaluate the ability of an ad creative to achieve one or more objectives and
determine whether to include the ad creative in an ad campaign. Appeal Br.
8 (citing BASCOM Global Internet Servs. v. AT&T Mobility LLC, 827 F.3d
1341, 1350 (Fed. Cir. 2016); Spec. ¶ 35).
D. Step 2A, Prong 1
Patent eligibility under 35 U.S.C. § 101 is a question that we resolve
pursuant to the 2019 Revised Guidance. Claim 1 requires receiving training
data, determine one or more objective scores for an ad creative based on one
or more feature scores using the training data, evaluating a target ad creative,
determining a target objective score by applying the trained model to the
target ad creative, and presenting feedback to an advertiser, and we therefore
conclude the non-emphasized portions of claim 1, reproduced above (see
supra at 1–2), recite concepts relating to commercial or legal interactions or
concepts that can be practically performed in the human mind or by using
pen and paper. See 2019 Revised Guidance, 84 Fed. Reg. at 52 n.14.
The present claims recite concepts relating to commercial or legal
interactions, which falls into the category of certain methods of organizing
human activity. See id. Moreover, those certain methods of organizing
human activity are a type of abstract idea. See id. Namely, the claims recite
features such as “receiving training data comprising: a plurality of test ad
creatives…; a plurality of test feature scores…each test feature score of the
test ad creative based at least in part on…a corresponding feature of the test
ad creative; and one or more test objective scores…measuring how well the
test ad creative achieves an objective;”7 “determine one or more objective

7 This limitation appears only in claim 1. See Claims App.
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scores for an ad creative;”8 “receiv[ing] a request to evaluate a target ad
creative from a[n] [requesting] advertiser;”9 “determin[ing] a[n] [target]
objective score for one or more objectives for the [target] ad creative;”10 and
“present[ing] [the] feedback to the [requesting] advertiser…the feedback
corresponding to a predicted effectiveness of the target ad creative,”11 which
are all features directed to advertising, and therefore fall under certain
methods of organizing human activity.
Further, the present claims recite concepts that can be performed in
the mind or by using pen and paper, which are concepts performed in the
human mind (including an observation, evaluation, judgment, opinion).
Concepts performed in the human mind fall under the category of mental
processes (i.e., an abstract idea). Namely, the claims require features such as,
“one or more features…associated with a question describing content of a
test ad creative;”12 “a plurality of test feature scores…[each] based at least in
part on received answers to a question;”13 “one or more test objective
scores…[each] measuring how well the test ad creative achieves an
objective;”14 “receiv[ing] a request to evaluate a target ad creative from a[n]
[requesting] advertiser;”15 “a plurality of target feature scores based on

8 This limitation appears in claim 1. See Claims App. Claim 14 recites a
similar, “determining an objective score for the ad creative” and claim 23
recites a similar “determine an objective score for one or more objectives for
the ad creative.” See id.
9 This limitation is recited in each of claims 1, 14, and 23. See Claims App.
10 This limitation is recited in each of claims 1, 14, and 23. See Claims App.
11 This limitation is recited in each of claims 1, 14, and 23. See Claims App.
12 This limitation is recited only in claim 1. See Claims App.
13 This limitation is recited only in claim 1. See Claims App.
14 This limitation is recited only in claim 1. See Claims App.
15 This limitation is recited in each of claims 1, 14, and 23. See Claims App.
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received answers to questions describing content of the target ad creative;”16
“determin[ing] a[n] [target] objective score;”17 and “present[ing] [the]
feedback to the [requesting] advertiser…the feedback corresponding to a
predicted effectiveness of the target ad creative,”18 which are all features that
can be performed practically in the human mind or by pen and paper, and
therefore are abstract ideas. In particular, these claim features are similar to
using a questionnaire for test advertising, which is a task that humans
routinely and for many years have performed mentally or with pen and
paper.
We are not persuaded by Appellant’s argument that the present claims
are analogous to Example 39 of the Abstract Ideas Examples. Reply Br. 3–4.
The claim of Example 39 is directed to a computer-implemented method of
training a neural network for facial detection comprising collecting a set of
digital facial images, applying one or more transformations to the images
including mirroring, rotating, smoothing, or contrast reduction to create a
modified set of digital facial images, creating first and second training sets,
and training the neural network. See Abstract Ideas Examples. Example 39
claim does not recite an abstract idea, because, among other things, it does
not recite any method of organizing human activity, and does not recite steps
that are practically performed in the human mind. Id. In contrast, the present
claims recite concepts relating to advertising, marketing or sales activities or

16 This limitation is recited in claim 1. See Claims App. Claims 14 and 23
each recite a similar, “a plurality of target feature scores based on received
answers to questions describing corresponding features of the ad creative.”
See id.
17 This limitation is recited in each of claims 1, 14, and 23. See Claims App.
18 This limitation is recited in each of claims 1, 14, and 23. See Claims App.
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behaviors, as discussed supra, which falls under certain methods of
organizing human activity. Notably, the claims expressly require at least “ad
creative[s]” and “an advertiser.” See Claims App. Furthermore, the steps
recited in the present claims, in contrast to Example 39, the latter of which
requires applying one or more transformations to the images including
mirroring, rotating, smoothing, or contrast reduction to create a modified set
of digital facial images (see Abstract Ideas Examples), can be performed in
the human mind or with pen and paper, as discussed supra. To the extent
that the training a neural network of Example 39 is similar to the claimed
“training a model,”19 the claimed step of training a model is an additional
element that does not integrate the abstract idea into a practical application
and is not disclosed as being anything more than being well-understood,
routine, and conventional, as discussed infra.
We must still determine whether the abstract idea is integrated into a
practical application, namely whether the claim applies, relies on, or uses the
abstract idea in a manner that imposes a meaningful limit on the abstract
idea, such that the claim is more than a drafting effort designed to
monopolize the abstract idea. See 2019 Revised Guidance, 84 Fed. Reg. at
54–55. We therefore (1) identify whether there are any additional recited
elements beyond the abstract idea, and (2) evaluate those elements both
individually and collectively to determine whether they integrate the
exception into a practical application. See id.
Accordingly, we proceed to Prong 2.

19 This limitation is recited in claim 1. See Claims App. Claims 14 and 23
each recite a similar, “the model trained.” See id.
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E. Step 2A, Prong 2
Here, the only elements in the claims beyond the abstract idea are
“online system,”20 “training a model,”21 and “processor.”22 See 2019 Revised
Guidance, 84 Fed. Reg. at 52. The additional elements of the present claims
do not integrate the abstract idea into a practical application because they do
not impose any meaningful limits on practicing the abstract idea for the
following reasons.
Appellant does not identify persuasively how the Specification sets
forth an improvement in technology. The October 2019 Update addresses
how we consider evidence of improvement that is presented to us. The
Update states:
the evaluation of Prong Two requires the use of the
considerations (e.g. improving technology, effecting a particular
treatment or prophylaxis, implementing with a particular
machine, etc.) identified by the Supreme Court and the Federal
Circuit, to ensure that the claim as a whole “integrates [the]
judicial exception into a practical application [that] will 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.
Update, 11 (emphases added). The Update further states:
During examination, the examiner should analyze the
“improvements” consideration by evaluating the specification
and the claims to ensure that a technical explanation of the
asserted improvement is present in the specification, and that the
claim reflects the asserted improvement. Generally, examiners

20 This additional element is recited in claims 1, 14, and 23. See Claims App.
21 This limitation is recited in claim 1. See Claims App. Claims 14 and 23
each recite a similar, “the model trained.” See id.
22 This additional elements is recited only in claim 23. See Claims App.
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are not expected to make a qualitative judgment on the merits of
the asserted improvement. If the examiner concludes the
disclosed invention does not improve technology, the burden
shifts to applicant to provide persuasive arguments supported by
any necessary evidence to demonstrate that one of ordinary skill
in the art would understand that the disclosed invention improves
technology. Any such evidence submitted under 37 C.F.R.
§ 1.132 must establish what the specification would convey to
one of ordinary skill in the art and cannot be used to supplement
the specification. For example, in response to a rejection under
35 U.S.C. § 101, an applicant could submit a declaration under
§ 1.132 providing testimony on how one of ordinary skill in the
art would interpret the disclosed invention as improving
technology and the underlying factual basis for that conclusion.
Id. at 13 (emphasis added).
Here, the Examiner concludes that the additional elements, when
considered individually or as an ordered combination, does not “improve[]
the functioning of a computer or improve[] any other technology.” Final Act.
6. Instead, the Examiner concludes, and we agree, that the claims are
directed to improvements to the abstract idea (i.e., certain methods of
organizing human activity), rather than to a technology or technological
field. Appeal Br. 5. Consequently, we focus on any evidence Appellant cites,
as discussed in the Update.
In this case, Appellant argues that the claimed invention includes
allowing advertisers to evaluate and test ad creatives before they are used in
a campaign to ensure that the ad creatives match the advertiser’s goals.
Appeal Br. 7–8 (citing Spec. ¶ 35). However, these alleged improvements
are improvements in advertising, sales, or marketing, which falls within the
category of an abstract idea, as discussed supra, not an improvement to
technology. “[A] claim for a new abstract idea is still an abstract idea.”
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Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1151 (Fed. Cir.
2016) (emphasis added). “[U]nder the Mayo/Alice framework, a claim
directed to a newly discovered law of nature (or natural phenomenon or
abstract idea) cannot rely on the novelty of that discovery for the inventive
concept necessary for patent eligibility . . . .” Genetic Techs. Ltd. v. Merial
L.L.C., 818 F.3d 1369, 1376 (Fed. Cir. 2016) (citations omitted).
Furthermore, the additional elements in the present claims, namely
“online system,” “training a model,” and “processor,” do not, either
individually or in combination, integrate the abstract idea into a practical
application. Appellant’s Specification discloses that these elements
encompass generic components, such as a generic online system (Spec. ¶¶ 2,
17–18, 21), a generic model (Spec. ¶¶ 9, 33), and a generic processor (Spec.
¶¶ 51–52). Merely adding generic hardware and computer components to
perform abstract ideas does not integrate those ideas into a practical
application. See 2019 Revised Guidance, 84 Fed. Reg. at 55 (identifying
“merely includ[ing] instructions to implement an abstract idea on a
computer” as an example of when an abstract idea has not been integrated
into a practical application).
Regarding the claimed “training a model,” Appellant’s Specification
discloses that, “[f]or example, the model is trained using simple linear
regression, multiple linear regression, other suitable modeling algorithms,
supervised learning, or any other suitable machine learning algorithm using
feature scores and objective scores.” Spec. ¶ 9; see also Spec. ¶ 33. Thus,
training a model is discussed at a high level of generality, and is not
disclosed as including improvements to known methods of training a model.
Appellant does not make any other arguments pertaining to Step 2A,
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Prong 2. Because the present claims recite an abstract idea that is not
integrated into a practical application, we proceed to Step 2B.
F. Step 2B
We disagree with Appellant’s argument that “the [E]xaminer has not
made any factual determination with respect to whether these specific
requirements of the training data are ‘well-understood, routine and
conventional.’” Appeal Br. 7 (citing Berkheimer). Notably, the Examiner
finds that the abstract idea is implemented with additional elements that are
well-understood, routine, and conventional. Final Act. 5–6 (citing Spec.
¶¶ 51–53). The Specification also supports the Examiner’s determination in
this regard, because it explains that “online system,” “training a model,” and
“processor” are generic computer components. Spec. ¶¶ 2, 9, 17–18, 21, 33,
51–52. To the extent that Appellant argues that certain limitations identified
as part of the abstract idea (e.g., characteristics of the training data itself) are
unconventional, Appellant’s argument appears misplaced. Appeal Br. 6–7.
We additionally disagree with Appellant’s argument that the
Examiner does not establish the conventionality of the claimed steps as a
whole or as an ordered combination. Appeal Br. 7–8. An inventive concept
“cannot be furnished by the unpatentable law of nature (or natural
phenomenon or abstract idea) itself.” Genetic, 818 F.3d at 1376; BSG Tech
LLC v. Buyseasons, Inc., 899 F.3d 1281, 1290 (Fed. Cir. 2018) (explaining
that the Supreme Court in Alice “only assessed whether the claim limitations
other than the invention’s use of the ineligible concept to which it was
directed were well-understood, routine and conventional” (emphasis
added)).
Appellant further cites to BASCOM to demonstrate that the claimed
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invention recites either “a specific, discrete implementation of the abstract
idea” or “a technical improvement over prior art [methods].” Appeal Br. 8.
In BASCOM, the claims were directed to “a filter implementation versatile
enough that it could be adapted to many different users’ preferences while
also installed remotely in a single location.” BASCOM, 827 F.3d at 1348–51.
The inventive concept was “the installation of a filtering tool at a specific
location, remote from the end-users, with customizable filtering features
specific to each end user” that “gives the filtering tool both the benefits of a
filter on a local computer and the benefits of a filter on the ISP server.” Id. at
1350. Thus, when considered as an ordered combination, the court
concluded the claims provided “an inventive concept can be found in the
non-conventional and non-generic arrangement of known, conventional
pieces.” Id. Here, the present claims recite an abstract idea using additional
elements that are generic computer components arranged in a conventional
and generic manner, as discussed supra, or at best, improving an abstract
idea—not an inventive concept for the reasons discussed above.
Accordingly, Appellant’s assertion fails to identify error in the Examiner’s
analysis.
For at least the above reasons, we conclude, under the 2019 Revised
Guidance, that each of Appellant’s claims 1–23, considered as a whole, is
directed to a patent-ineligible abstract idea that is not integrated into a
practical application, and does not include an inventive concept. We
therefore sustain the Examiner’s rejection of claims 1–23 under 35 U.S.C.
§ 101.23

23 We have decided the Appeal before us. However, in the event of further
prosecution, the Examiner should evaluate claim 23 in light of In re Nuijten,
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II. SECTION 103 REJECTION
A. Whether the combination of Hegeman and Richardson teaches one or
more test objective scores
Claim 1 recites, inter alia, “one or more test objective scores for each
test ad creative…each test objective score of the test ad creative measuring
how well the test ad creative achieves an objective of a plurality of possible
objectives.” See Claims App.
The Examiner finds that Hegeman teaches the disputed limitation
above, mapping advertiser bids to the one or more test objective scores.
Final Act. 8 (citing Hegeman ¶ 34). The Examiner further finds that
Richardson teaches training a model that is usable to determine one or more
objective scores for an ad creative based on using training data. Final Act. 10
(citing Richardson ¶¶ 56–58).
Appellant disagrees that the bids can be mapped to the test objective
scores, arguing that “the ‘bids’ of Hegeman do not ‘[measure] how well the
test ad creative achieves an objective’ as recited by the claims, but instead
represent[] a generic value or ‘bidding price’ that an advertiser would pay to
display the ad.” Appeal Br. 10–11 (citing Hegeman ¶¶ 5, 34, 46). We
disagree with Appellant.
Hegeman teaches that the bidding system “allows multiple advertisers
to manually bid for ad space. . . .[T]he ad with the highest bidding price is
selected and presented in the ad space to maximize the ad fees.” Hegeman

500 F.3d 1346 (Fed. Cir. 2007); Subject Matter Eligibility of Computer
Readable Media, 1351 Off. Gaz. Pat. Office 212 (Feb. 23, 2010). Although
the Board is authorized to reject claims under 37 C.F.R. § 41.50(b), no
inference should be drawn when the Board elects not to do so. See Manual
of Patent Examining Procedure (MPEP) § 1213.02.
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¶ 5. More specifically, Hegeman teaches:
[T]he automated bidding module 280 produces a bid for each ad
stored in the ad database 250. . . .[T]he automated bidding
module 280 may determine bids based on the ad request, ad
content, ad budgets or other ad constraints, ad impression
goads, ad performance weightings, social networking system ad
functionality or ad context, the statistics associated with ads
received from the tracking module 260, the predicted ad
performance received from the performance prediction module
270, or any other factor associated with the ad, the requesting
client 210 or the requesting ad viewer.

Hegeman ¶ 34 (emphasis added) (cited at Final Act. 8). In other words,
Hegeman teaches that the bids are formulated based on an ad’s ability to
meet criteria designated by an advertiser. Id. Therefore, we agree with the
Examiner that the bids of Hegeman measure how well the ad achieves an
objective of a plurality of objectives. Final Act. 8–9; Ans. 7–8. In particular,
we agree with the Examiner that the bids of Hegeman:
measure how well the ad constraints, ad impression goals, ad
performance weightings, and/or predicted ad performance—i.e.,
objectives like the likelihood that a viewer of a requested ad
takes a particular action with regards to the requested ad, such
as clicking on the ad, selecting the ad, sharing the ad, liking the
ad, otherwise endorsing the ad, watching the ad playing the
ad—are met.

Ans. 8. Although Appellant argues that the bids represent a bidding price
that an advertiser would pay to display the ad and, therefore, cannot be the
claimed “test objective scores” (Appeal Br. 10–11), the claim does not
preclude such a feature.
Appellant’s contention that “it is clearly incorrect to assert that
anything ‘determined based on’ a factor then serves as ‘a measure of’ that
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factor” (Reply Br. 6), is untimely. Appellant’s argument is untimely and
waived because the Examiner did not change the theory of unpatentability in
the Answer (compare Final Act. 8–9 (citing Hegeman ¶ 34) with Ans. 7–8
(citing Hegeman ¶ 34)), while Appellant proffered new arguments in the
Reply Brief (compare Appeal Br. 9–12 with Reply Br. 6) without showing
good cause. See 37 C.F.R. § 41.41(b)(2). Even assuming, arguendo, that this
argument were not untimely, Hegeman at least suggests that a bid measures
how well the test ad creative achieves an objective, because the bid amount
is determined based on how well the test ad creative achieves the objective.
See Hegeman ¶ 34.
Thus, Appellant’s arguments, above, are unpersuasive to show that the
Examiner erred in finding that Hegeman as modified by Richardson teaches
one or more test objective scores as claimed.
B. Whether the combination of Hegeman and Richardson teaches
determining a target objective score
Claim 1 further recites, inter alia, “determining a target objective
score for one or more objectives for the target ad creative by applying the
trained model to one or more target features scores of the target ad creative.”
See Claims App.
The Examiner maps Hegeman’s advertiser bids to the target objective
score and finds that Hegeman teaches the claimed one or more target feature
scores, because Hegeman teaches a performance prediction module 270 that
predicts a likelihood of a user taking a particular action with regards to an
ad. Final Act. 9–10 (citing Hegeman ¶¶ 33, 34). The Examiner further finds
that Richardson teaches training a model that is usable to determine one or
more objective scores for an ad creative based on using training data. Final
Act. 10 (citing Richardson ¶¶ 56–58).
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Appellant argues that an earlier Office Action “admits that Hegeman
does not disclose these aspects of the claims,” instead relying on a different
prior art reference for the teachings above. Appeal Br. 11. Appellant
additionally argues that the bids of Hegeman are not objective scores,
because they represent a value or price that an advertiser would pay to use
the ad. Id. at 12 (citing Hegeman ¶¶ 5, 34, 46; Spec. ¶¶ 8, 37). Further,
Appellant argues that “the ‘predicted likelihoods’ of Hegeman are not
analogous to any of the ‘feature scores’ recited by the claims,” because the
performance prediction module of Hegeman is merely a prediction of user
action, not based on received answers to questions describing content of an
ad creative, as required in the claim. Reply Br. 4–5 (citing Hegeman ¶¶ 25–
26, 31–33, 47, 50). We disagree with Appellant.
Appellant’s first contention, namely that the Examiner’s findings
conflict with those presented in an earlier Office Action (Appeal Br. 11), is
unavailing to show that the Examiner erred with respect to the rejection
before us. As discussed supra, we agree with the Examiner that Hegeman
teaches objective scores. See Final Act. 8–10.
Furthermore, Appellant’s argument that the bids of Hegeman are not
objective scores (Appeal Br. 12), is unpersuasive for the reasons discussed
above. Appellant cites paragraphs 8 and 37 of the Specification as disclosing
that the objectives recited in the claims are distinct from the bids of
Hegeman (see Appeal Br. 12), but this argument appears misplaced, because
the Examiner maps the bids to the objective scores, rather than to the
objectives themselves. See Final Act. 8–10; Ans. 7–8. In particular, the
Examiner finds that Hegeman teaches objectives that are, for example, ad
budgets or other ad constraints, ad impression goals, or the likelihood of an
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ad viewer taking a particular action in regards to the ad, such as clicking on,
sharing, endorsing, liking, watching, or playing the ad. Ans. 7–8. Paragraphs
8 and 37 of the Specification provide example objectives, including
“promoting brand awareness of a product or service, promoting perception
of a brand or product or service of the brand, or promoting purchase intent of
a product or service associated with a brand” (Spec. ¶ 8) and “increasing
awareness of a brand, conveying a quality of a brand, and conveying images
or other information to identify a brand.” Spec. ¶ 37. Therefore, the
objective of Hegeman’s ad impression goals at least suggests “objective” as
used in Appellant’s Specification.
Additionally, our reviewing court dictates that we assume two
different terms in a claim have two different meanings. See Applied Med.
Res. Corp. v. U.S. Surgical Corp., 448 F.3d 1324, 1333 n.3 (Fed. Cir.
2006) (“[T]he use of two terms in a claim requires that they connote
different meanings . . . .”); see also CAE Screenplates Inc. v. Heinrich
Fiedler GmbH, 224 F.3d 1308, 1317 (Fed. Cir. 2000) (“In the absence of
evidence to the contrary, we must presume that the use of these different
terms in the claims connotes different meanings.”). We should presume,
then, in the absence of contrary evidence, that the language of claim 1,
which requires both “one or more test objective scores” and “a target
objective score,” demands a test objective score that has a different meaning
than a target objective score.
Here, Appellant points to paragraphs 5, 8–10, 32, 42, and 44 of the
Specification as disclosing the claimed objective scores. See Reply Br. 6. In
this regard, Appellant’s Specification supports a claim construction that
requires a test objective score distinct from a target objective score. See, e.g.,
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Spec. ¶¶ 8–10, 32, 37, Fig. 4. However, although the Examiner maps the
bids of Hegeman to both the test objective scores and the target objective
scores (see Final Act. 8–10), the Examiner relies on Richardson for teaching
training a model that is usable to determine one or more objective scores
using training data. Id. at 10 (citing Richardson ¶¶ 56–58). Notably,
Richardson teaches training an advertisement performance prediction model
using a training set and a testing set. See Richardson ¶ 56. Appellant does
not provide substantive arguments against Richardson or the combination of
Hegeman and Richardson. See Appeal Br. 8–12; Reply Br. 4–6. As such, we
find no error with the Examiner’s finding that the combination of Hegeman
and Richardson teaches training data comprising one or more test objective
scores, i.e., bids forming a part of a training set, and a distinct target
objective score, i.e., bids forming part of a testing set. See Final Act. 8–10.
Regarding Appellant’s newly-presented argument in the Reply Brief
that the Examiner’s mapping of the performance prediction module of
Hegeman to the claimed feature scores is erroneous (Reply Br. 4–5), this
argument is untimely. Appellant’s argument is untimely and thus waived
because the Examiner did not modify or change findings in the Answer, and
Appellant presents a new argument in the Reply Brief without showing good
cause. See 37 C.F.R. § 41.41(b)(2); compare Final Act. 8–10 (citing
Hegeman ¶¶ 25–26, 33, 34, 47, 50) with Ans. 6 (citing Hegeman ¶¶ 25–26,
33, 47, 50); compare Appeal Br. 8–13 with Reply Br. 4–5.
For the foregoing reasons, we sustain the Examiner’s obviousness
rejection of claim 1. Claims 2–23 are not argued separately, and we
therefore sustain the obviousness rejection of claims 1–23.

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CONCLUSION

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. § 1.136(a)(1)(iv).

AFFIRMED

Claim(s)
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–23 101 Eligibility 1–23
1–23 103 Hegeman,
Richardson
1–23
Overall
Outcome
1–23