John M. Trenkle et al.

Patent Trials and Appeals Board

Aug 6, 2019

13927687 - (D) (P.T.A.B. Aug. 6, 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.
13/927,687 06/26/2013 John M. TRENKLE 20030.723.1 8419
119741 7590 08/06/2019
Keller Jolley Preece / Adobe
1010 North 500 East, Suite 210
North Salt Lake, UT 84054
EXAMINER
ANDERSON, FOLASHADE
ART UNIT PAPER NUMBER
3623
NOTIFICATION DATE DELIVERY MODE
08/06/2019 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):
docketing@kjpip.com
gjolley@kjpip.com
ljohnson@kjpip.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte JOHN M. TRENKLE and JOHN HUGHES
____________

Appeal 2018-005097
Application 13/927,687
Technology Center 3600
____________

Before MARC S. HOFF, JENNIFER L. McKEOWN, and
STEVEN M. AMUNDSON, Administrative Patent Judges.

AMUNDSON, Administrative Patent Judge.

DECISION ON APPEAL
Appellants1 seek our review under 35 U.S.C. § 134(a) from a final
rejection of claims 1–6, 8–23, and 25–34, i.e., all pending claims. We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm.

1 Appellants identify the real party in interest as Adobe Systems
Incorporated. App. Br. 1.
Appeal 2018-005097
Application 13/927,687

2
STATEMENT OF THE CASE
The Invention
According to the Specification, the invention relates to “rating the
success of online advertising campaigns, as well as predicting the success of
online advertising campaigns, and pricing campaigns based on the
predictions.” Spec. 1:19–21.2 The Specification explains that “Gross Rating
Point (GRP) is a term used in advertising to measure the size of an audience
reached by a specific media vehicle or schedule.” Id. at 1:30–31. The
Specification also explains that a GRP equals “the product of the percentage
of the target audience reached by an advertisement, times the frequency the
audience sees the term in a given campaign (frequency x % reached).” Id.
at 1:31–2:2.
According to the Specification, the invention seeks to “characterize
Websites and viewers” based on degree of polarization. Id. at 1:22–26,
3:29–4:2, 4:31–5:4; see id. at 25:10–14. That characterization provides
information “forming a foundation for the prediction of Gross Rating Points
(GRPs) for online advertising media campaigns” and “other functionalities
related to real-time bidding for electronic media impression auctions.” Id.
at 3:29–32, 4:31–5:2; see id. at 25:10–14. Further, “[b]ased on observed and
calculated parameters, a GRP total can then be predicted and priced to a
client and/ or advertiser for an online ad campaign.” Id. at 4:7–9, 5:9–11;
see id. at 9:21–24, 25:20–22.

2 This decision uses the following abbreviations: “Spec.” for the
Specification, filed June 26, 2013; “Final Act.” for the Final Office Action,
mailed July 13, 2017; “App. Br.” for the Appeal Brief, filed January 9, 2018;
“Ans.” for the Examiner’s Answer, mailed February 23, 2018; and
“Reply Br.” for the Reply Brief, filed April 17, 2018.
Appeal 2018-005097
Application 13/927,687

3
Thus, the invention purports to address the problem that electronic
advertising agencies “have not previously been known to guarantee the
reach of a campaign ahead of time” and instead “typically charge their
advertisers and/or clients based on impressions at a guaranteed price per
impression after the fact, and without guaranteeing that those impressions”
match “specific viewer characteristics.” Id. at 3:15–20.
Exemplary Claims
Independent claims 1 and 12 exemplify the claims at issue and read as
follows (with formatting added for clarity):
1. In a digital medium environment of real-time bidding and
selection of advertising opportunities corresponding to viewers
simultaneously accessing media properties, a computer
implemented method for providing bid responses and
advertising over an online network, comprising:
accessing a truth set of viewers of a plurality of media
properties, wherein the viewers in the truth set have been
determined to have known values of at least one viewer
characteristic;
for each media property of the plurality of media
properties visited by the viewers in the truth set, determining,
by at least one processor, a media property polarization
probability for the at least one viewer characteristic, the media
property polarization probability comprising a probability that
any viewer visiting the media property has a particular value of
the at least one viewer characteristic;
determining, by the at least one processor, a set of
polarized media properties by selecting media properties from
the plurality of media properties with media property
polarization probabilities that exceed a first threshold
probability;
identifying polarized viewers from a plurality of viewers
who are not within the truth set by:
Appeal 2018-005097
Application 13/927,687

4
determining, by the at least one processor, that a
first viewer not in the truth set has made one or more
visits to at least one polarized media property from the
set of polarized media properties;
determining, by the at least one processor, a viewer
polarization probability of the first viewer by applying
the media property polarization probability of the at least
one polarized media property from the set of polarized
media property [sic] to an existing viewer polarized
probability of the first viewer; and
determining that the first viewer is a polarized
viewer, by comparing the viewer polarization probability
of the first viewer to a second threshold probability;
receiving, by the at least one processor, an impression
opportunity from a remote server[,] wherein the impression
opportunity references the first viewer and a first media
property; and
based on the determination that the first viewer is a
polarized viewer, responding to the impression opportunity by
sending a bid response to the remote server, wherein
responding comprises sending an advertisement to the remote
server for display to the first user.
12. In a digital medium environment of real-time bidding and
selection of advertising opportunities corresponding to viewers
simultaneously accessing media properties, a computer
implemented method for providing bid responses and
advertising over an online network, comprising:
accessing a truth set of viewers of a plurality of media
properties, wherein the viewers in the truth set have been
determined to have known values of at least one viewer
characteristic;
for each media property of the plurality of media
properties visited by the viewers in the truth set, determining,
by at least one processor, a media property polarization
probability for the at least one viewer characteristic, the media
property polarization probability comprising a probability that
Appeal 2018-005097
Application 13/927,687

5
any viewer visiting the media property has a particular value of
the at least one viewer characteristic;
determining, by the at least one processor, a set of
polarized media properties by selecting media properties from
the plurality of media properties with media property
polarization probabilities that exceed a first threshold
probability;
identifying polarized viewers from a plurality of viewers
who are not within the truth set by:
determining, by the at least one processor, that a
first viewer not in the truth set has made one or more
visits to at least one polarized media property from the
set of polarized media properties;
determining, by the at least one processor, a viewer
polarization probability of the first viewer by applying
the media property polarization probability of the at least
one polarized media property from the set of polarized
media property [sic] to an existing viewer polarized
probability of the first viewer; and
determining that the first viewer is a polarized
viewer, by comparing the viewer polarization probability
of the first viewer to a second threshold probability;
predicting gross rating points for an online ad campaign
comprising targeting parameters based on the media property
polarization probabilities and the polarized viewers;
selecting the online ad campaign with the targeting
parameters based on the predicted gross rating points;
running the selected online ad campaign by:
receiving, by the at least one processor, an
impression opportunity from a remote server[,] wherein
the impression opportunity references a first viewer and a
first media property; and
based on a determination that the first viewer and
the first media property satisfy the targeting parameters,
responding to the impression opportunity by sending a
Appeal 2018-005097
Application 13/927,687

6
bid response to the remote server, wherein responding
comprises sending an advertisement to the remote server
for display to the first user.
App. Br. 31–32, 35–36 (Claims App.).
The Rejections on Appeal
Claims 1–6, 8–23, and 25–34 stand rejected under 35 U.S.C. § 101 as
directed to patent-ineligible subject matter. Final Act. 8–15; Ans. 3–7.
Claims 32–34 stand rejected under 35 U.S.C. § 112 ¶ 2 as indefinite
for failing to particularly point out and distinctly claim the subject matter
regarded as the invention.3 Final Act. 15; Ans. 7.
ANALYSIS
We have reviewed the rejections in light of Appellants’ arguments
that the Examiner erred. For the reasons explained below, we disagree with
Appellants’ assertions regarding Examiner error. We adopt the Examiner’s
findings and reasoning in the Final Office Action and Answer. See Final
Act. 3–15; Ans. 3–19. We provide the following to address and emphasize
specific findings and arguments.
The § 101 Rejection of Claims 1–6, 8–23, and 25–34
INTRODUCTION
The Patent Act defines patent-eligible subject matter broadly:
“Whoever invents or discovers any new and useful process, machine,
manufacture, or composition of matter, or any new and useful improvement

3 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29,
125 Stat. 284 (2011), amended 35 U.S.C. § 112, e.g., to rename § 112’s
subsections. Because Application 13/927,687 claims priority to applications
filed before the AIA’s effective date for applications, this decision refers to
the pre-AIA version of § 112.
Appeal 2018-005097
Application 13/927,687

7
thereof, may obtain a patent therefor, subject to the conditions and
requirements of this title.” 35 U.S.C. § 101. In Mayo and Alice, the
Supreme Court explained that § 101 “contains an important implicit
exception” for laws of nature, natural phenomena, and abstract ideas. Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 70 (2012);
Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 216 (2014); see Diamond v.
Diehr, 450 U.S. 175, 185 (1981). In Mayo and Alice, the Court set forth a
two-step analytical framework for evaluating patent-eligible subject matter.
Mayo, 566 U.S. at 77–80; Alice, 573 U.S. at 217–18.
Under Mayo/Alice step one, we “determine whether the claims at
issue are directed to” a judicial exception, i.e., an abstract idea, a law of
nature, or a natural phenomenon. Alice, 573 U.S. at 217. Step one involves
looking at the “focus” of the claims at issue and their “character as a whole.”
SAP Am., Inc. v. InvestPic, LLC, 898 F.3d 1161, 1167 (Fed. Cir. 2018).
In January 2019, the PTO issued revised guidance for determining
whether claims are directed to a judicial exception. See 2019 Revised Patent
Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (“2019
Guidance”). The 2019 Guidance applies to the Board. Id. at 50–51, 57 n.42;
see 35 U.S.C. § 3(a)(2)(A) (investing the Director with responsibility “for
providing policy direction” for the PTO). Neither the Examiner nor
Appellants had the benefit of the 2019 Guidance when advocating their
respective positions concerning subject-matter eligibility.
The 2019 Guidance specifies two prongs for the analysis under
Mayo/Alice step one (PTO step 2A). 84 Fed. Reg. at 54–55. Prong one
requires evaluating “whether the claim recites a judicial exception, i.e., an
abstract idea, a law of nature, or a natural phenomenon.” Id. at 54. “If the
Appeal 2018-005097
Application 13/927,687

8
claim does not recite a judicial exception, it is not directed to a judicial
exception,” and it satisfies § 101. Id. “If the claim does recite a judicial
exception, then it requires further analysis” under prong two. Id. Prong two
requires evaluating “whether the claim as a whole integrates the recited
judicial exception into a practical application of the exception.” Id. “When
the exception is so integrated, then the claim is not directed to a judicial
exception,” and it satisfies § 101. Id. “If the additional elements do not
integrate the exception into a practical application, then the claim is directed
to the judicial exception,” and it “requires further analysis” under
Mayo/Alice step two (PTO step 2B). Id.
Under Mayo/Alice step two, we “consider the elements of each claim
both individually and ‘as an ordered combination’ to determine whether the
additional elements” add enough to transform the “nature of the claim” into
“significantly more” than the judicial exception. Alice, 573 U.S. at 217–18,
221–22 (quoting Mayo, 566 U.S. at 78–79). Step two involves the search for
an “inventive concept.” Alice, 573 U.S. at 217–18, 221; Univ. of Fla.
Research Found., Inc. v. Gen. Elec. Co., 916 F.3d 1363, 1366 (Fed.
Cir. 2019). “[A]n inventive concept must be evident in the claims.”
RecogniCorp, LLC v. Nintendo Co., 855 F.3d 1322, 1327 (Fed. Cir. 2017).
MAYO/ALICE STEP ONE: PTO STEP 2A PRONG ONE
For Mayo/Alice step one, the Federal Circuit has noted that “[a]n
abstract idea can generally be described at different levels of abstraction.”
Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1240 (Fed. Cir. 2016). Here,
the Examiner determines that the claims are directed to the abstract idea of
“real-time bidding and selection of advertising opportunities corresponding
Appeal 2018-005097
Application 13/927,687

9
to viewers simultaneously accessing media properties.” Final Act. 11;
Ans. 5.
Appellants dispute that the claims are directed to an abstract idea. See
App. Br. 14–22; Reply Br. 1–5. Specifically, Appellants assert that the
Examiner “fails to analyze the elements of the claims in light of the recited
abstract idea” and instead “applies a separate (more generalized) set of
abstract categories to a sub-set of the claim limitations.” App. Br. 19–20.
Appellants also assert that the Examiner fails to “analyze the claims to
determine what specific elements are subsumed by” the recited abstract idea.
Id. at 20.
Appellants’ assertions do not persuade us of Examiner error. In
determining that the claims are directed to an abstract idea, the Examiner
accurately assesses the “focus” of the claims and their “character as a
whole.” See Final Act. 9–12; Ans. 3–5; see also SAP Am., 898 F.3d at 1167.
In addition, we determine that the claims recite abstract ideas falling
within the three groupings of abstract ideas specified in the 2019 Guidance:
mathematical concepts, certain methods of organizing human activity, and
mental processes. See 84 Fed. Reg. at 51–52. As relevant here, the
Guidance identifies “advertising, marketing or sales activities or behaviors”
as among the enumerated methods of organizing human activity. Id. at 52.
This appeal involves four independent claims, i.e., method claims 1
and 12 and system claims 18 and 29. As explained in the following
paragraphs, each independent claim recites “advertising, marketing or sales
activities or behaviors” in various limitations.
Specifically, method claim 12 and system claim 29 recite the
following limitations:
Appeal 2018-005097
Application 13/927,687

10
● “predicting gross rating points for an online ad campaign
comprising targeting parameters based on the media
property polarization probabilities and the polarized
viewers” (claim 12);
● “predict gross rating points for an online ad campaign
based on the media property polarization probabilities
and the polarized viewers, wherein the online ad
campaign comprises targeting parameters” (claim 29);
● “selecting the online ad campaign with the targeting
parameters based on the predicted gross rating points”
(claims 12 and 29);
● “running the selected online ad campaign by”
(claims 12 and 29);
● “receiving . . . an impression opportunity . . . wherein
the impression opportunity references a first viewer and
a first media property” (claims 12 and 29);
● “based on a determination that the first viewer and the
first media property satisfy the targeting parameters,
responding to the impression opportunity by sending a
bid response . . . wherein responding comprises sending
an advertisement . . . for display to the first user”
(claims 12 and 29).
App. Br. 36, 44. Method claim 1 and system claim 18 recite similar
limitations for running an online ad campaign. Id. at 32, 39.
The above-identified limitations encompass “advertising, marketing
or sales activities or behaviors” because they predict gross rating points for
ad campaigns, select a particular ad campaign based on the predictions, and
run the selected ad campaign by responding to an impression opportunity
with a particular advertisement intended for a particular viewer. As noted
above, the 2019 Guidance identifies “advertising, marketing or sales
activities or behaviors” as among the enumerated methods of organizing
human activity, and thus an abstract idea. 84 Fed. Reg. at 52; see also OIP
Appeal 2018-005097
Application 13/927,687

11
Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1361–63 (Fed. Cir. 2015)
(deciding that the claimed concept of “offer-based price optimization” is an
abstract idea “similar to other ‘fundamental economic concepts’ found to be
abstract ideas by the Supreme Court and this court”). Further, targeted
advertising and the “tailoring of content based on information about the
user—such as where the user lives or what time of day the user views the
content—is an abstract idea that is as old as providing different newspaper
inserts for different neighborhoods.” Affinity Labs of Tex., LLC v.
Amazon.com Inc., 838 F.3d 1266, 1271 (Fed. Cir. 2016).
In addition, the 2019 Guidance explains that mental processes include
“concepts performed in the human mind,” such as “an observation,
evaluation, judgment, [or] opinion.” 84 Fed. Reg. at 52 (footnote omitted).
Here, each independent claim recites mental processes in the limitations
concerning determining polarized media properties and identifying polarized
viewers. See Final Act. 9–11; Ans. 3–5.
In particular, method claims 1 and 12 recite the following limitations
concerning determining polarized media properties:
● “for each media property of the plurality of media
properties visited by the viewers in the truth set,
determining . . . a media property polarization probability
for the at least one viewer characteristic, the media
property polarization probability comprising a probability
that any viewer visiting the media property has a
particular value of the at least one viewer characteristic”;
● “determining . . . a set of polarized media properties by
selecting media properties from the plurality of media
properties with media property polarization probabilities
that exceed a first threshold probability.”
Appeal 2018-005097
Application 13/927,687

12
App. Br. 31, 35. System claims 18 and 29 recite similar limitations. Id.
at 38, 43.
The limitations concerning determining polarized media properties
encompass an evaluation performed by a human mentally or with pen and
paper. For example, the Specification identifies gender as a viewer
characteristic. See, e.g., Spec. 4:2–6, 5:4–8, 6:3–5, 7:21–22, 8:12–14,
8:20–23. Further, the Specification states that “[s]tereotypical examples of
Websites (MPs [media properties]) exhibiting extreme degrees of
polarization include for instance Sports-oriented for Males, and Fashion-
oriented for Females.” Id. at 10:13–15.
Thus, using gender data for individuals in a truth set, a person could
note the respective numbers of male and female visitors to a website during
a particular period. See Spec. 8:18–23, Fig. 3. Then, based on the
respective numbers of male and female visitors, the person could determine
the website’s polarization probability. See id. at 8:23–25, Fig. 3. After that,
the person could mentally compare the website’s polarization probability to
a website-polarization threshold to discern whether the website’s
polarization probability exceeds the website-polarization threshold. The
person could repeat the preceding steps for other websites.
For these reasons, the limitations concerning determining polarized
media properties encompass an evaluation performed by a human mentally
or with pen and paper. The 2019 Guidance identifies an evaluation
performed by a human mentally or with pen and paper as a mental process,
and thus an abstract idea. 84 Fed. Reg. at 52 & nn.14–15; see also
Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d 1307, 1318
(Fed. Cir. 2016) (“[W]ith the exception of generic computer-implemented
Appeal 2018-005097
Application 13/927,687

13
steps, there is nothing in the claims themselves that foreclose them from
being performed by a human, mentally or with pen and paper.”)
(“Symantec”).
In addition, method claims 1 and 12 recite the following limitations
concerning identifying polarized viewers:
● “identifying polarized viewers from a plurality of viewers
who are not within the truth set by”;
● “determining . . . that a first viewer not in the truth set
has made one or more visits to at least one polarized
media property from the set of polarized media
properties”;
● “determining . . . a viewer polarization probability of the
first viewer by applying the media property polarization
probability of the at least one polarized media property
from the set of polarized media property [sic] to an
existing viewer polarized probability of the first viewer”;
● “determining that the first viewer is a polarized viewer,
by comparing the viewer polarization probability of the
first viewer to a second threshold probability.”
App. Br. 31–32, 35–36. System claims 18 and 29 recite similar limitations.
Id. at 38–39, 43–44.
The limitations concerning identifying polarized viewers encompass
an evaluation performed by a human mentally or with pen and paper. For
example, a person could note that an individual not in a truth set has visited
a polarized website. See Spec. 10:30–11:8, Fig. 3. Then, the person could
determine an updated polarization probability for the individual by applying
the website’s polarization probability to the individual’s existing
polarization probability. See id. at 11:6–29, Fig. 3. After that, the person
could mentally compare the individual’s updated polarization probability to
an individual-polarization threshold to discern whether the individual’s
Appeal 2018-005097
Application 13/927,687

14
updated polarization probability exceeds the individual-polarization
threshold. See id. at 11:31–12:13, Fig. 3. The person could repeat the
preceding steps for other individuals.
For these reasons, the limitations concerning identifying polarized
viewers encompass an evaluation performed by a human mentally or with
pen and paper. As noted above, the 2019 Guidance identifies an evaluation
performed by a human mentally or with pen and paper as a mental process,
and thus an abstract idea. 84 Fed. Reg. at 52 & nn.14–15.
MAYO/ALICE STEP ONE: PTO STEP 2A PRONG TWO
Because we determine that each independent claim recites abstract
ideas, we consider whether each claim as a whole integrates the recited
abstract ideas into a practical application. See 84 Fed. Reg. at 54–55. “Only
when a claim recites a judicial exception and fails to integrate the exception
into a practical application, is the claim ‘directed to’ a judicial exception
. . . .” Id. at 51.
As additional elements, the independent claims recite computer-
system components, i.e., “at least one processor,” “at least one non-
transitory computer readable storage medium,” “an online network,” and
“a remote server.” App. Br. 31–32, 35–36, 38–39, 43–44. The dependent
claims add “a historical database” and “a database of polarized viewers.” Id.
at 32–34, 36–37, 39, 42, 45.
The independent claims also recite the following data-collecting
limitations:
● “accessing a truth set of viewers of a plurality of media
properties, wherein the viewers in the truth set have been
determined to have known values of at least one viewer
characteristic” (claims 1 and 12);
Appeal 2018-005097
Application 13/927,687

15
● “access a truth set of viewers of a plurality of media
properties, wherein the viewers in the truth set have been
determined to have known values of at least one viewer
characteristic” (claims 18 and 29).
Id. at 31, 35, 38, 43.
We determine that each independent claim as a whole does not
integrate the recited abstract ideas into a practical application because the
additional elements do not impose meaningful limits on the abstract ideas.
See 84 Fed. Reg. at 53–54. The recited computer-system components
constitute generic computer-system components that perform generic
computer functions. See Final Act. 13–14; Ans. 6, 17–18; see also Spec.
14:9–15:22. Further, the data-collecting limitations constitute insignificant
extra-solution activity. See, e.g., Mayo, 566 U.S. at 79; OIP Techs.,
788 F.3d at 1363–64; Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 716
(Fed. Cir. 2014); CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d
1366, 1370 (Fed. Cir. 2011); In re Grams, 888 F.2d 835, 839–40 (Fed. Cir.
1989).
As an example of insignificant extra-solution activity, in Mayo the
Supreme Court decided that measuring metabolite levels for later analysis
constituted purely “conventional or obvious” pre-solution activity. Mayo,
566 U.S. at 79. Similarly, the Federal Circuit has held that mere data-
gathering steps “cannot make an otherwise nonstatutory claim statutory.”
CyberSource, 654 F.3d at 1370 (quoting Grams, 888 F.2d at 840). The
Federal Circuit has also held that (1) presenting offers to potential customers
and (2) gathering statistics concerning customer responses were
“conventional data-gathering activities that d[id] not make the claims patent
eligible.” OIP Techs., 788 F.3d at 1363–64. Consistent with those
Appeal 2018-005097
Application 13/927,687

16
decisions, the Manual of Patent Examining Procedure (“MPEP”) identifies
“gathering data” as an example of insignificant pre-solution activity. MPEP
§ 2106.05(g) (9th ed. rev. 08.2017 Jan. 2018).
Here, the data-collecting limitations amount to mere data-gathering
steps and require nothing unconventional or significant. See Final Act. 13;
Ans. 6; see also Classen Immunotherapies, Inc. v. Biogen IDEC, 659 F.3d
1057, 1067 (Fed. Cir. 2011) (analogizing “data gathering” to “insignificant
extra-solution activity”). For example, the Specification describes obtaining
a truth set of viewers by “purchasing or otherwise acquiring data.” Spec.
8:11–12. Hence, the data-collecting limitations do not help integrate the
recited abstract ideas into a practical application.
Appellants contend that the claims contain “concrete limitations that
improve computing systems implementing online media campaigns within a
real-time bidding environment” by increasing computing system “efficiency
and accuracy.” App. Br. 15; Reply Br. 1–2; see App. Br. 1–2, 17, 27–28.
Appellants assert that the claims permit computing systems to “implement
campaigns that more accurately target desired audiences, that generate more
efficient and accurate bid responses, and that reduce resources required to
process and manage unnecessary purchases within the real-time bidding
environment.” App. Br. 17; Reply Br. 4–5; see App. Br. 16, 26; Reply Br. 7.
Appellants urge that “[t]hese are technical improvements to implementing
computing systems, not abstract ideas.” Reply Br. 5; see App. Br. 29–30.
We disagree. The claims do not recite an improvement in computer,
network, or database functionality. See Ans. 11, 18. Instead, the claims use
a computer, network, and database in their ordinary capacities to perform
“basic calculation, storage, and transmission functions.” See App. Br.
Appeal 2018-005097
Application 13/927,687

17
31–45; Spec. 8:8–12:19, 14:9–15:22; Final Act. 13–14; Ans. 11–12, 17;
see also Alice, 573 U.S. at 226.
In addition, the Specification does not describe an alleged deficiency
in a computer, network, or database. See, e.g., Spec. 1:15–4:9, 4:29–5:22,
6:17–7:14, 9:19–29, 25:10–22; see also Ans. 11–12. Instead, the
Specification identifies an alleged deficiency in information available for
advertising purposes, i.e., information “forming a foundation for the
prediction of Gross Rating Points (GRPs) for online advertising media
campaigns” and “other functionalities related to real-time bidding for
electronic media impression auctions.” Spec. 3:29–4:9, 4:31–5:11; see id.
at 25:10–22. As the Examiner correctly reasons, “[t]he invention seeks to
solve the non-technical problem of allowing advertising agencies to
‘guarantee the reach of a campaign ahead of time’ through the ‘prediction
of GRPs for a campaign,’” thus allowing advertising agencies “to demand
a higher bid price.” Ans. 9–10 (citations omitted); see id. at 11–12, 18. The
problem of predicting gross rating points for an advertising campaign
concerns a business issue, not a technological challenge. See id. at
11–12, 18.
Further, the Specification fails to support Appellants’ assertions about
“reduc[ing] resources required to process and manage unnecessary
purchases within the real-time bidding environment.” See, e.g., Spec.
1:15–4:9, 4:29–5:22, 25:10–22; App. Br. 16–17, 26; Reply Br. 4–5, 7. The
alleged reduction in “resources” seems to concern cost savings resulting
from more accurately targeted advertising. See App. Br. 17; Reply Br. 4–5.
Appellants argue that the “claims are on all fours with the claims in
Enfish.” App. Br. 15 (citing Enfish, LLC v. Microsoft Corp., 822 F.3d 1327
Appeal 2018-005097
Application 13/927,687

18
(Fed. Cir. 2016)). Appellants assert that “[s]imilar to Enfish, the focus of the
claims as a whole is not an abstract idea, but improvements to computer
functionality and/or a technological process.” Id.
We disagree. The claims in Enfish recited a “specific improvement to
the way computers operate,” i.e., an improved database configuration that
permitted faster and more efficient searching. Enfish, 822 F.3d at 1330–33,
1336. Further, the Federal Circuit has explained that the claims in Enfish
“did more than allow computers to perform familiar tasks with greater speed
and efficiency” and “actually permitted users to launch and construct
databases in a new way.” Finjan, Inc. v. Blue Coat Sys., Inc., 879 F.3d
1299, 1305 (Fed. Cir. 2018).
Unlike the claims in Enfish, the claims here use a computer, network,
and database in their ordinary capacities. See Secured Mail Sols. LLC v.
Universal Wilde, Inc., 873 F.3d 905, 910 (Fed. Cir. 2017) (explaining that
the claims in Enfish “focused on an improvement to computer functionality
itself, not on economic or other tasks for which a computer is used in its
ordinary capacity”). The claims here do not recite an advance in hardware
or software that, for example, causes a computer itself or a database itself to
operate faster or more efficiently. See App. Br. 31–45. Nor do the claims
require an unconventional network configuration. See id. Instead, the
claimed “online network” provides a generic environment for implementing
the recited abstract ideas. See Final Act. 11–12; Ans. 5.
Appellants analogize the claims here to the claims in Diehr, the claims
in DDR Holdings, and the claims in McRO. App. Br. 23–28 (citing DDR
Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014); McRO,
Appeal 2018-005097
Application 13/927,687

19
Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299 (Fed. Cir. 2016)).
But the claims here do not resemble the claims in any of those cases.
In Diehr, the “claims involve[d] the transformation of . . . raw,
uncured synthetic rubber, into a different state or thing,” namely, cured
synthetic rubber, and they “describe[d] in detail a step-by-step method for
accomplishing” that transformation. Diehr, 450 U.S. at 184. Unlike the
claims in Diehr, the claims here do not include steps producing an analogous
change in a physical object.
In DDR Holdings, the Federal Circuit determined that certain claims
satisfied Mayo/Alice step two because “the claimed solution amount[ed] to
an inventive concept for resolving [a] particular Internet-centric problem,”
i.e., a challenge unique to the Internet. DDR Holdings, 773 F.3d at 1257–59;
see Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1151 (Fed. Cir.
2016) (noting that “[i]n DDR Holdings, we held that claims ‘directed to
systems and methods of generating a composite web page that combines
certain visual elements of a “host” website with content of a third-party
merchant’ contained the requisite inventive concept”). The Federal Circuit
explained that the patent-eligible claims specified “how interactions with the
Internet are manipulated to yield a desired result . . . that overrides the
routine and conventional sequence of events ordinarily triggered by the click
of a hyperlink.” DDR Holdings, 773 F.3d at 1258. The court reasoned that
those claims recited a technological solution “necessarily rooted in computer
technology” that addressed a “problem specifically arising in the realm of
computer networks.” Id. at 1257.
According to the Federal Circuit, “DDR Holdings does not apply
when . . . the asserted claims do not ‘attempt to solve a challenge particular
Appeal 2018-005097
Application 13/927,687

20
to the Internet.’” Smart Sys. Innovations, LLC v. Chi. Transit Auth.,
873 F.3d 1364, 1375 (Fed. Cir. 2017) (quoting In re TLI Commc’ns LLC
Patent Litig., 823 F.3d 607, 613 (Fed. Cir. 2016)). The claims here do not
attempt to solve a challenge particular to the Internet. See App. Br. 31–45.
In McRO, the claims recited a “specific . . . improvement in computer
animation” using “unconventional rules” that related “sub-sequences of
phonemes, timings, and morph weight sets” to automatically animate lip
synchronization and facial expressions for three-dimensional characters that
only human animators could previously produce. McRO, 837 F.3d at
1302–03, 1307–08, 1313–15. In McRO, “the incorporation of the claimed
rules” improved an existing technological process. Id. at 1314.
Unlike the claims in McRO, the claims here do not improve 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”); see also Ans. 9–12. As explained above, the claims
here use a computer, network, and database in their ordinary capacities.
Appellants assert that “the digital environment for real-time bidding
for electronic media impressions introduces unique obstacles and problems
when compared to conventional advertising.” App. Br. 24. Appellants also
assert that “unique circumstances mandate bidding on digital advertising
opportunities, selection of digital advertising content, and provision of
digital advertising content over an online network within milliseconds, and
thus create difficult challenges not inherent in traditional advertising.” Id.
But the claims here do not cover methods or systems that decrease the
time to bid on, select, or provide digital advertising. If anything, the
invention increases the time to bid on, select, and provide digital advertising
Appeal 2018-005097
Application 13/927,687

21
due to the limitations concerning determining polarized media properties and
identifying polarized viewers. The data processing required by those
limitations may take time to accomplish, e.g., depending on the amount of
data processed.
Instead of addressing a technological challenge, the invention
endeavors to obtain information allegedly unavailable with conventional
methods and systems for bidding on, selecting, and providing digital
advertising. See Spec. 1:22–26, 3:15–4:9, 4:31–5:11; see id. at 25:10–22.
According to the Specification, the invention purports to address the
problem that electronic advertising agencies “have not previously been
known to guarantee the reach of a campaign ahead of time” and instead
“typically charge their advertisers and/or clients based on impressions at a
guaranteed price per impression after the fact, and without guaranteeing that
those impressions” match “specific viewer characteristics.” Id. at 3:15–20.
Appellants admit that the invention addresses an alleged inability “to
select online media campaigns based on reach” before running the
campaigns. App. Br. 24. According to Appellants, that alleged inability
caused “inefficiencies in purchases” of advertising because clients could
“purchase impressions that either over- or under-perform relative to a
targeted need.” Id. The “inefficiencies in purchases” of advertising concern
a business issue, not a technological challenge.
The 2019 Guidance identifies exemplary considerations indicating
that additional elements in claims “may have integrated the [judicial]
exception into a practical application.” 84 Fed. Reg. at 55 & nn.25–29
(citing MPEP §§ 2106.05(a)–(c), 2106.05(e)). As the above analysis
indicates, we have evaluated Appellants’ arguments in light of those
Appeal 2018-005097
Application 13/927,687

22
exemplary considerations. For the reasons discussed above, however, we
determine that each independent claim as a whole does not integrate the
recited abstract ideas into a practical application. Thus, each claim is
directed to a judicial exception and does not satisfy § 101 under Mayo/Alice
step one.
MAYO/ALICE STEP TWO: PTO STEP 2B
Because we determine that each independent claim is directed to a
judicial exception, we “consider the elements of each claim both
individually and ‘as an ordered combination’ to determine whether the
additional elements” add enough to transform the “nature of the claim” into
“significantly more” than the judicial exception. See Alice, 573 U.S.
at 217–18, 221–22 (quoting Mayo, 566 U.S. at 78–79). Under Mayo/Alice
step two, we “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 Tex., LLC v. DIRECTV, LLC, 838 F.3d 1253, 1258
(Fed. Cir. 2016) (quoting Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d
1350, 1353 (Fed. Cir. 2016)). An “inventive concept” requires more than
“well-understood, routine, conventional activity already engaged in” by the
relevant community. Rapid Litig. Mgmt. Ltd. v. CellzDirect, Inc., 827 F.3d
1042, 1047 (Fed. Cir. 2016) (quoting Mayo, 566 U.S. at 79–80). But a
“non-conventional and non-generic arrangement of known, conventional
pieces” may provide an “inventive concept” satisfying step two. BASCOM
Glob. Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341, 1350
(Fed. Cir. 2016).
Appeal 2018-005097
Application 13/927,687

23
As discussed above, the claims recite computer-system components as
additional elements, i.e., “at least one processor,” “at least one non-transitory
computer readable storage medium,” “an online network,” “a remote
server,” “a historical database,” and “a database of polarized viewers.” App.
Br. 31–45. The Examiner correctly finds that those additional elements
correspond to “a generic, routine, and conventional computer system, well
known in the art.” Final Act. 13–14; Ans. 6, 17–18.
Consistent with the Examiner’s findings, the Specification describes
the recited computer-system components generically and evidences their
conventional nature. See Spec. 14:9–15:22. As an example, the
Specification broadly describes a “computer system” as a “machine to
perform any of the herein disclosed methodologies.” Id. at 4:25–27,
14:11–13, Fig. 4. The Specification explains that a “machine” may
“comprise or include a network router, a network switch, a network bridge,
[a] personal digital assistant (PDA), a cellular telephone, a Web appliance or
any machine capable of executing or transmitting a sequence of instructions
that specify actions to be taken.” Id. at 14:14–17. As another example, the
Specification broadly describes a storage medium as “any mechanism for
storing or transmitting information in a form readable by a machine,”
including “read-only memory (ROM); random access memory (RAM);
magnetic disk storage media; optical storage media; flash memory devices;
electrical, optical, acoustical or other form of propagated signals, for
example, carrier waves, infrared signals, digital signals, etc.; or any other
type of media suitable for storing or transmitting information.” Id. at
15:15–22.
Appeal 2018-005097
Application 13/927,687

24
In addition, the recited computer-system components operate to
collect, manipulate, and communicate data. App. Br. 31–45. Court
decisions have recognized that generic computer-system components
operating to collect, manipulate, and communicate data are well understood,
routine, and conventional to a skilled artisan. See, e.g., Alice, 573 U.S.
at 226–27; SAP Am., 898 F.3d at 1164–65 & n.1, 1170; Apple, 842 F.3d
at 1234, 1241–42; Symantec, 838 F.3d at 1316–20; Versata Dev. Grp., Inc.
v. SAP Am., Inc., 793 F.3d 1306, 1334 (Fed. Cir. 2015); Ultramercial,
772 F.3d at 715–16; buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355
(Fed. Cir. 2014). “[I]nvocations of computers and networks that are not
even arguably inventive are ‘insufficient to pass the test of an inventive
concept in the application’ of an abstract idea.” Elec. Power, 830 F.3d
at 1355 (quoting buySAFE, 765 F.3d at 1353).
For example, the system claims in Alice recited a “data processing
system” with a “communications controller” and a “data storage unit,” i.e.,
a “storage medium” or “database.” Alice, 573 U.S. at 226. The Supreme
Court decided that the system claims failed to satisfy § 101 because
“[n]early every computer” includes those generic components for
performing “basic calculation, storage, and transmission functions” and the
system claims simply implemented the same abstract idea as the method
claims. Id. at 226–27. The Court reasoned that (1) “the system claims are
no different from the method claims in substance”; (2) “[t]he method claims
recite the abstract idea implemented on a generic computer”; and (3) “the
system claims recite a handful of generic computer components configured
to implement the same idea.” Id. at 226.
Appeal 2018-005097
Application 13/927,687

25
Here, the recited computer-system components perform “basic
calculation, storage, and transmission functions” that nearly every computer
system performs. For instance, nearly every computer system manipulates
data with a “processor,” stores data in a “storage medium” or “database,”
and transmits data through an “online network.” Hence, those generic
computer-system components do not satisfy the “inventive concept”
requirement. See, e.g., Mortg. Grader, Inc. v. First Choice Loan Servs. Inc.,
811 F.3d 1314, 1324–25 (Fed. Cir. 2016) (holding that “generic computer
components such as an ‘interface,’ ‘network,’ and ‘database’” did not satisfy
the “inventive concept” requirement); FairWarning IP, LLC v. Iatric Sys.,
Inc., 839 F.3d 1089, 1095–96 (Fed. Cir. 2016) (describing the claimed
“microprocessor” and “user interface” as “generic computer elements”);
Prism Techs. LLC v. T-Mobile USA, Inc., 696 F. App’x 1014, 1016–17
(Fed. Cir. 2017) (describing the claimed “authentication server,” “access
server,” “Internet Protocol network,” “client computer device,” and
“database” as “indisputably generic computer components”).
We reach a similar conclusion concerning the data-collecting
limitations, i.e., the “accessing” and “access” limitations. As discussed
above, the data-collecting limitations amount to mere data-gathering steps
and require nothing unconventional or significant. Consequently, the
claimed insignificant extra-solution activity does not satisfy the “inventive
concept” requirement. See, e.g., Mayo, 566 U.S. at 79–80; OIP Techs.,
788 F.3d at 1363–64; CyberSource, 654 F.3d at 1370.
For Mayo/Alice step two, Appellants argue eligibility separately for
dependent claims 10 and 27. See App. Br. 26–27; Reply Br. 7–8. Claim 10
depends from claim 1 and further requires:
Appeal 2018-005097
Application 13/927,687

26
generating a database of polarized viewers;
identifying a look-alike viewer based on the database
of polarized viewers;
determining that the database of polarized viewers is
not sufficient to meet campaign requirements, wherein the
campaign requirements comprise at least one of reach or run
time; and
based on the determination that the database of polarized
viewers is not sufficient to meet campaign requirements, adding
the look-alike viewers to the database of polarized viewers.
App. Br. 33–34. Claim 27 depends from claim 18 and includes limitations
paralleling claim 10’s limitations. Id. at 42.
Appellants argue that claims 10 and 27 implement an “approach [that]
allows computing systems implementing online media campaigns in real-
time bidding environments to dynamically modify targeted viewers” by
“dynamically identify[ing] and add[ing] look-alike viewers to a database of
polarized viewers to increase the target audience of a particular campaign.”
App. Br. 27; Reply Br. 7.
We disagree that claims 10 and 27 include limitations sufficient to
satisfy the “inventive concept” requirement. The claimed “database of
polarized viewers” functions like any conventional database to store data.
See Final Act. 14; Ans. 6, 17. Further, the Examiner correctly finds that the
“generating” and “adding” limitations in claims 10 and 27 perform “the
well-understood, routine, and conventional” functions of “processing and
storing data.” Ans. 17.
In addition, the “identifying” and “determining” limitations in
claims 10 and 27 recite mental processes, i.e., evaluations performed by a
human mentally or with pen and paper. For example, a person could
Appeal 2018-005097
Application 13/927,687

27
mentally compare information about a potential look-alike viewer with
information about a polarized viewer to identify a look-alike viewer.
Consistent with this, the Specification admits that “[l]ook-alike modeling
has been used for some time in advertising campaigns.” Spec. 13:15–16.
Moreover, a person could mentally compare a database population size to a
required population size to evaluate database sufficiency. As noted above,
the 2019 Guidance identifies an evaluation performed by a human mentally
or with pen and paper as a mental process, and thus an abstract idea. 84 Fed.
Reg. at 52 & nn.14–15.
“Whether a combination of claim limitations supplies an inventive
concept that renders a claim ‘significantly more’ than an abstract idea to
which it is directed is a question of law.” BSG Tech LLC v. BuySeasons,
Inc., 899 F.3d 1281, 1290 (Fed. Cir. 2018). Given the claimed generic
computer-system components that perform generic computer functions and
the claimed insignificant extra-solution activity, we conclude that the
combination of limitations in each of independent claims 1, 12, 18, and 29
and dependent claims 10 and 27 does not supply an “inventive concept” that
renders the claim “significantly more” than an abstract idea. Thus, each
claim does not satisfy § 101 under Mayo/Alice step two.
SUMMARY FOR PATENT ELIGIBILITY
For the reasons discussed above, Appellants’ arguments have not
persuaded us of any error in the Examiner’s findings or conclusions under
Mayo/Alice step one or step two. Hence, we sustain the § 101 rejection of
independent claims 1, 12, 18, and 29 and dependent claims 10 and 27. We
also sustain the § 101 rejection of the other dependent claims because
Appeal 2018-005097
Application 13/927,687

28
Appellants do not argue eligibility separately for them. See 37 C.F.R.
§ 41.37(c)(1)(iv).
The § 112 ¶ 2 Rejection of Claims 32–34
Appellants do not contest the § 112 ¶ 2 rejection. App. Br. 30 n.1.
Because Appellants do not contest that rejection, we summarily sustain that
rejection. See In re Berger, 279 F.3d 975, 980, 984–85 (Fed. Cir. 2002)
(holding that the Board did not err in sustaining a rejection under 35 U.S.C.
§ 112 ¶ 2 when the appellant failed to contest the rejection on appeal); see
also MPEP § 1205.02 (explaining that “[a]n appellant’s brief must present
arguments responsive to every ground of rejection stated by the examiner in
the Office action from which the appeal has been taken (as modified by any
advisory action and/or pre-appeal brief conference decision)”).
DECISION
We affirm the Examiner’s decision to reject claims 1–6, 8–23,
and 25–34.
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