Nuwan Senaratna et al.

Patent Trials and Appeals Board

Mar 16, 2020

13802405 - (D) (P.T.A.B. Mar. 16, 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.
13/802,405 03/13/2013 Nuwan Senaratna 26295-21849/US 2614
160546 7590 03/16/2020
Mannava & Kang, P. C.
3201 Jermantown Road
Suite 525
Fairfax, VA 22030
EXAMINER
SHANKER, JULIE MEYERS
ART UNIT PAPER NUMBER
3689
NOTIFICATION DATE DELIVERY MODE
03/16/2020 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):
docketing@mannavakang.com
fb-pdoc@fb.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte NUWAN SENARATNA and AUSTIN BYRNE
____________

Appeal 2018-005467
Application 13/802,405
Technology Center 3600
____________

Before NINA L. MEDLOCK, AMEE A. SHAH, and
MATTHEW S. MEYERS, Administrative Patent Judges.

MEDLOCK, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
final rejection of claims 1, 2, 4–12, and 14–19. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.
CLAIMED INVENTION
Appellant’s claimed invention “relates to online systems and in
particular to reviewing advertisements in an online system” (Spec. ¶ 1).
Claims 1 and 11 are the independent claims on appeal. Claim 1,
reproduced below with bracketed notations added, is illustrative of the
claimed subject matter:
1. A computer implemented method comprising:
[(a)] receiving, at an online system, an advertisement
from an advertiser;
[(b)] dividing, by one or more computers, the
advertisement into a plurality of components;
[(c)] for each of the plurality of components of the
advertisement, determining, by the one or more computers, one
or more tags describing characteristics of the components,
wherein the one or more tags are independent of policies of the
online system;

1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Our decision references Appellant’s Appeal Brief (“Appeal Br.,”
filed May 8, 2017) and Reply Brief (“Reply Br.,” filed May 3, 2018), and
the Examiner’s Answer (“Ans.,” mailed March 14, 2018), and Final Office
Action (“Final Act.,” mailed December 2, 2016). We note that the pages of
both Appellant’s Appeal Brief and its Reply Brief are unnumbered; we refer
to the title page of each of the briefs as page 1 and treat the pages that follow
as though consecutively numbered. Appellant identifies Facebook, Inc. as
the real party in interest (Appeal Br. 2).
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[(d)] determining, by the one or more computers,
whether the component of the advertisement requires further
review;
[(e)] responsive to determining that the component
requires further review, sending, by the one or more computers,
the component to multiple human reviewers to update the one or
more tags describing characteristics of the component;
[(f)] storing, by the one or more computers, an
association between each of the plurality of components of the
advertisement and the determined one or more tags describing
the characteristics of the component;
[(g)] retrieving, by the one or more computers, a policy
of the online system, the policy of the online system including
one or more advertisement rules;
[(h)] retrieving, by the one or more computers, the one or
more tags describing the characteristics of the component; and
[(i)] determining, by the one or more computers,
whether the component of the advertisement satisfies one or
more policies of the online system by applying the one or more
policies to the one or more tags associated with the component
without applying the one or more policies to the component;
[(j)] detecting, by the one or more computers, a new
policy of the online system, the new policy updated from the
policy of the online system; and
[(k)] responsive to detecting the new policy of the online
system, reevaluating, by the one or more computers, the
component of the advertisement by applying the new policy to
the one or more tags associated with the component.
REJECTIONS
Claims 1, 2, 4–12, and 14–19 are rejected under 35 U.S.C. § 101 as
directed to a judicial exception without significantly more.
Claims 1, 2, 5–12, and 15–17 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Badros et al. (US 2006/0149623 A1, published July 6,
2006) (“Badros”), Minter et al. (US 2010/0287052 A1, published Nov. 11,
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2010) (“Minter”), and Makeev et al. (US 2008/0313030 A1, published
Dec. 18, 2008) (“Makeev”).
Claims 4 and 14 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Badros, Minter, Makeev, and Merdinger (US 2008/0033822 A1,
published Feb. 7, 2008).
Claims 18 and 19 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Badros, Minter, Makeev, and Kae (US 8,732,014 B2,
issued May 20, 2014).
ANALYSIS
Patent Ineligible Subject Matter
Appellant argues the pending claims as a group (Appeal Br. 4–20).
We select independent claim 1 as representative. The remaining claims
stand or fall with claim 1. See 37 C.F.R. §41.37(c)(1)(iv).
Under 35 U.S.C. § 101, an invention is patent eligible if it claims a
“new and useful process, machine, manufacture, or composition of matter.”
35 U.S.C. § 101. The Supreme Court, however, has long interpreted § 101
to include an implicit exception: “[l]aws of nature, natural phenomena, and
abstract ideas” are not patentable. Alice Corp. v. CLS Bank Int’l, 573 U.S.
208, 216 (2014).
The Supreme Court, in Alice, reiterated the two-step framework
previously set forth in Mayo Collaborative Services v. Prometheus
Laboratories, Inc., 566 U.S. 66 (2012), “for distinguishing patents that claim
laws of nature, natural phenomena, and abstract ideas from those that claim
patent-eligible applications of those concepts.” Alice Corp., 573 U.S. at 217.
The first step in that analysis is to “determine whether the claims at issue are
directed to one of those patent-ineligible concepts.” Id. If the claims are not
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directed to a patent-ineligible concept, e.g., an abstract idea, the inquiry
ends. Otherwise, the inquiry proceeds to the second step where the elements
of the claims are considered “individually and ‘as an ordered combination’”
to determine whether there are additional elements that “‘transform the
nature of the claim’ into a patent-eligible application.” Id. (quoting Mayo,
566 U.S. at 79, 78). This is “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.’” Id. at 217–18 (alteration in original).
In rejecting the pending claims under 35 U.S.C. § 101, the Examiner
determined that is the claims are directed to
categorizing components of an ad with tags, comparing tags
associated with components of an advertisement with policies to
determine whether the ad component satisfies the policy, and
reevaluating the ad by comparing new or updated policies to the
tags of the ad components to determine whether an ad satisfies
an updated policy[,]
i.e., to an abstract idea similar to other concepts that the courts have held
abstract (Final Act. 8–9). The Examiner also determined that the claims do
not include additional elements or a combination of elements that is
sufficient to amount to significantly more than the abstract idea itself (id.
at 9–11).
After Appellant’s briefs were filed and the Examiner’s Answer
mailed, the U.S. Patent and Trademark Office (the “USPTO”) published
revised guidance for use by USPTO personnel in evaluating subject matter
eligibility under 35 U.S.C. § 101. 2019 REVISED PATENT SUBJECT MATTER
ELIGIBILITY GUIDANCE, 84 Fed. Reg. 50, 57 (Jan. 7, 2019) (the “2019
Revised Guidance”). That guidance revised the USPTO’s examination
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procedure with respect to the first step of the Mayo/Alice framework by
(1) “[p]roviding groupings of subject matter that [are] considered an abstract
idea”; and (2) clarifying that a claim is not “directed to” a judicial exception
if the judicial exception is integrated into a practical application of that
exception. Id. at 50. The 2019 Revised Guidance, by its terms, applies to all
applications, and to all patents resulting from applications, filed before, on,
or after January 7, 2019. Id.2
Step One of the Mayo/Alice Framework (2019 Revised Guidance, Step 2A)
The first step in the Mayo/Alice framework, as mentioned above, is to
determine whether the claims at issue are “directed to” a patent-ineligible
concept, e.g., an abstract idea. Alice Corp., 573 U.S. at 217. This first step,
as set forth in the 2019 Revised Guidance (i.e., Step 2A), is a two-prong test;
in Step 2A, Prong One, we look to whether the claim recites a judicial
exception, e.g., one of the following three groupings of abstract ideas:
(1) mathematical concepts; (2) certain methods of organizing human
activity, e.g., fundamental economic principles or practices, commercial or
legal interactions; and (3) mental processes. 2019 Revised Guidance,
84 Fed. Reg. at 54. If so, we next consider whether the claim includes
additional elements, beyond the judicial exception, that “integrate the
[judicial] exception into a practical application,” i.e., that 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

2 The USPTO issued an update on October 17, 2019 (the “October 2019
Update: Subject Matter Eligibility,” available at https://www.uspto.gov/sites/
default/files/documents/peg_oct_2019_update.pdf) clarifying the
2019 Revised Guidance in response to comments solicited from the public.
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to monopolize the judicial exception (“Step 2A, Prong Two”). Id. at 54–55.
Only if the claim (1) recites a judicial exception and (2) does not integrate
that exception into a practical application do we conclude that the claim is
“directed to” the judicial exception, e.g., an abstract idea. Id.
We are not persuaded by Appellant’s arguments that the Examiner
erred in determining that claim 1 is directed to an abstract idea (Appeal
Br. 5–15). The Federal Circuit has explained that “the ‘directed to’ inquiry
applies a stage-one filter to claims, considered in light of the specification,
based on whether ‘their character as a whole is directed to excluded subject
matter.’” Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir.
2016) (quoting Internet Patents Corp. v. Active Network, Inc., 790 F.3d
1343, 1346 (Fed. Cir. 2015)). It asks whether the focus of the claims is on a
specific improvement in relevant technology or on a process that itself
qualifies as an “abstract idea” for which computers are invoked merely as a
tool. See id. at 1335–36. Here, it is clear from the Specification (including
the claim language) that the claim 1 focuses on an abstract idea, and not on
any improvement to technology and/or a technical field.
The Specification is titled “REVIEWING ADVERTISEMENT
COMPONENTS FOR COMPLIANCE WITH POLICIES OF AN ONLINE
SYSTEM,” and describes, in the Background section, that many online
systems specify policies with which advertisements must comply before
being presented by the online system (Spec. ¶ 3). Over time, an online
system may change one or more of its policies, and these policy changes
affect which advertisements are presented to users (id.). The Specification
discloses that “[i]n conventional online systems, changing a policy . . .
requires manually specifying the modified policy to the online system or
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additional training for review[er]s manually reviewing advertisements” — a
process that the Specification describes may be expensive and time-
consuming (id.).
The claimed invention is ostensibly intended to improve on these
conventional systems. The Specification, thus, describes that “[t]o resource
the time and resources consumed by changing a policy applied to
advertisements, the online system divides advertisements into components”
(e.g., a title component that provides a brief description of the
advertisement; a body component that detail the product or service
associated with the advertisement; an audience component that describes the
users to be presented with the advertisement) and “separately reviews each
component of an advertisement” (id. ¶¶ 4, 21). To that end, the system
assigns, to each component, one or more policy-independent tags (i.e., tags
that do not change with changes in the online system policy), which describe
the characteristics of the component (id.). And the system uses these tags,
i.e., the characteristics of the components, to determine whether the
advertisement satisfies the online system policies; if a component is
associated with a tag included in a blacklist, the advertisement is determined
not to comply with a policy of the online system and is not presented to
online system users (id. ¶¶ 5, 27). The Specification describes that, in some
embodiments, if the analysis of a component is complex, the system may
suggest manual review of the component; in that circumstance, the ad
component is sent to one or more human reviewers to determine the
appropriate component tag(s) (id. ¶¶ 24–26).
Consistent with this disclosure, claim 1 recites a computer-
implemented method comprising: (1) receiving an advertisement at an online
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system, dividing the advertisement into components, and determining one or
more tags for each ad component, i.e.,
receiving, at an online system, an advertisement from an
advertiser;
dividing, by one or more computers, the advertisement
into a plurality of components; [and]
for each of the plurality of components of the
advertisement, determining, by the one or more computers, one
or more tags describing characteristics of the components,
wherein the one or more tags are independent of policies of the
online system
(steps (a), (b), and (c)); (2) determining whether a component requires
further review and, if so, sending the component to human reviewers to
update the one or more component tags, i.e.,
determining, by the one or more computers, whether the
component of the advertisement requires further review; [and]
responsive to determining that the component requires
further review, sending, by the one or more computers, the
component to multiple human reviewers to update the one or
more tags describing characteristics of the component
(steps (d) and (e)); (3) “storing . . . an association between each of the . . .
components of the advertisement and the . . . one or more tags describing the
characteristics of the component” (step (f)); (4) retrieving the online system
policy and the one or more tags associated with an ad component, and
applying the policy to the tags to determine whether the ad component
satisfies the online system policy, i.e.,
retrieving, by the one or more computers, a policy of the
online system, the policy of the online system including one or
more advertisement rules;
retrieving, by the one or more computers, the one or more
tags describing the characteristics of the component; and
determining, by the one or more computers, whether the
component of the advertisement satisfies one or more policies of
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the online system by applying the one or more policies to the one
or more tags associated with the component without applying the
one or more policies to the component
(steps (g), (h), and (i)); and (5) detecting a new online system policy and
reevaluating the ad component by applying the new policy to the one or
more component tags, i.e.,
detecting, by the one or more computers, a new policy of
the online system, the new policy updated from the policy of the
online system; and
responsive to detecting the new policy of the online
system, reevaluating, by the one or more computers, the
component of the advertisement by applying the new policy to
the one or more tags associated with the component
(steps (j) and (k)). These limitations, when given their broadest reasonable
interpretation, recite determining whether an advertisement complies with an
online system policy by dividing the ad into components, tagging the
components, and applying the policy to the component tags.
Claim 1 recites that the claimed steps (but for the further review) are
performed by “one or more computers.” Yet, we agree with the Examiner
that the underlying processes recited in the claim are all acts that could be
performed by a human, e.g., mentally or manually, using pen and paper,
without the use of a computer or any other machine (Final Act. 3–4, 6).3
Indeed, Appellant ostensibly concedes as much (see Appeal Br. 5 (“As

3 A human reviewer could, for example, receive an advertisement, via
written communication, and, using pen and paper, could classify the
advertisement by dividing the advertisement into components (e.g., title,
body, audience) and associating tags with each component. Such a person,
using pen and paper or mentally, also could compare the online system
policy to the tags to determine whether the advertisement is policy
compliant.
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background, a human reviewer can traditionally evaluate advertisements for
compliance with one or more policies of the online system”); id. at 7
(ostensibly conceding that a human reviewer could divide advertisement into
components and associate tags with the components albeit less efficiently
than via a computer: “Dividing the advertisement into components and
associating tags would, in fact, require far more resources (e.g.[,] time) for a
human reviewer which is contrary to the efforts to make the process more
efficient”); Reply Br. 3 (observing that a human reviewer would visually
examine an advertisement to determine whether the advertisement satisfies a
system policy, and that “[i]f a human reviewer were to tag ad components
and compare tags to policies, this would require more manual resources in
comparison to a mere visual examination of the advertisement”); Spec. ¶ 3
(describing reviewers manually reviewing advertisements for policy
compliance)).
Simply put, claim 1 recites a mental process, i.e., a concept performed
in the human mind, including an evaluation or judgment, and therefore, an
abstract idea. See 2019 Revised Guidance, 84 Fed. Reg. at 52; CyberSource
Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1373 (Fed. Cir. 2011)
(holding that method steps that can be performed in the human mind, or by a
human using a pen and paper, are unpatentable mental processes). See also
Elec. Power Grp., LLC v. Alstom, S.A., 830 F.3d 1350, 1355 (Fed. Cir.
2016) (explaining that the Federal Circuit treats “analyzing information by
steps people go through in their minds, or by mathematical algorithms,
without more, as essentially mental processes within the abstract-idea
category”); Versata Dev. Grp., Inc. v. SAP Am., Inc., 793 F.3d 1306, 1335
(Fed. Cir. 2015) (“Courts have examined claims that required the use of a
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computer and still found that the underlying, patent-ineligible invention
could be performed via pen and paper or in a person’s mind.”); Bancorp
Servs., L.L.C. v. Sun Life Assurance Co. of Can. (U.S.), 687 F.3d 1266, 1278
(Fed. Cir. 2012) (“[T]he fact that the required calculations could be
performed more efficiently via a computer does not materially alter the
patent eligibility of the claimed subject matter.”).
Having concluded that claim 1 recites a judicial exception, i.e., an
abstract idea (Step 2A, Prong One), we next consider whether the claim
recites additional elements that integrate the judicial exception into a
practical application (Step 2A, Prong Two).
The only additional elements recited in claim 1, beyond the abstract
idea, are the “online system” and the “one or more computers” — elements
that, as the Examiner observed, are recited at a high level of generality, i.e.,
as generic computer components performing generic computer functions
(Final Act. 10; see also Spec. ¶¶ 15, 36, 37). We find no indication in the
Specification that the operations recited in claim 1 require any specialized
computer hardware or other inventive computer components, i.e., a
particular machine, invoke any assertedly inventive programming, or that the
claimed invention is implemented using other than generic computer
components to perform generic computer functions. See DDR Holdings,
LLC v. Hotels.com, L.P., 773 F.3d 1245, 1256 (Fed. Cir. 2014) (“[A]fter
Alice, there can remain no doubt: recitation of generic computer limitations
does not make an otherwise ineligible claim patent-eligible.”).
We also find no indication in the Specification that the claimed
invention effects a transformation or reduction of a particular article to a
different state or thing. Nor do we find anything of record that attributes an
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improvement in technology and/or a technical field to the claimed invention
or that otherwise indicates that the claimed invention integrates the abstract
idea into a “practical application,” as that phrase is used in the 2019 Revised
Guidance.4
Appellant attempts to draw a parallel between claim 1 and the patent
eligible claims at issue in Enfish, arguing that the pending claims are
directed “towards a method of improving computer functionality” (Appeal
Br. 6; see also Reply Br. 2–4). Appellant maintains that, “by associating
tags with components of advertisements, and evaluating the advertisement
by applying policies to the tags without applying the policies to the
components of the advertisement,” the claimed invention improves computer
functionality in that it “allows the system ‘to [reduce] the time and resources
consumed by changing a policy applied to advertisements” (Appeal Br. 5–6
(citing Spec. ¶ 4)). Appellant asserts that this improvement is “similar to the
improvement in computer functionality imparted by the implementation of
the self-referential table” in Enfish (id. at 6). Yet, there is no evidence of
record that the claimed method uses a data structure, like the self-referential
table in Enfish, to improve a computer’s functionality or efficiency, or
otherwise change the way the computer operates.

4 The 2019 Revised Guidance references MANUAL OF PATENT EXAMINING
PROCEDURE (“MPEP”) § 2106.05(a)–(c) and (e) in describing the
considerations that are indicative that an additional element or combination
of elements integrates the judicial exception, e.g., the abstract idea, into a
practical application. 2019 Revised Guidance, 84 Fed. Reg. at 55. If the
recited judicial exception is integrated into a practical application, as
determined under one or more of these MPEP sections, the claim is not
“directed to” the judicial exception.
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Importantly too, there is a fundamental difference between computer
functionality improvements, on the one hand, and uses of existing computers
as tools to perform a particular task, on the other — a distinction that the
Federal Circuit applied in Enfish, in rejecting a § 101 challenge at the first
stage of the Mayo/Alice framework because the claims at issue focused on a
specific type of data structure, i.e., the self-referential table, designed to
improve the way a computer stores and retrieves data in memory, and not
merely on asserted advances in uses to which existing computer capabilities
could be put. See Enfish, 822 F.3d at 1335–36. The alleged improvement
that Appellant touts, i.e., a reduction in the time and resources consumed by
changing a policy applied to advertisements, does not concern an
improvement to computer capabilities but instead relates to an alleged
improvement in determining the policy compliance status of an
advertisement — a process in which a computer is used as a tool in its
ordinary capacity.
We also are not persuaded that there is any parallel between claim 1
and the patent eligible claim in McRO, Inc. v. Bandai Namco Games
America, Inc., 837 F.3d 1299 (Fed. Cir. 2016) (Appeal Br. 12–15).
Appellant argues that “similar to the patent eligible claims in McRO, the
claims here incorporate specific features, such as the tags that are descriptive
of a component” and “recite limitations that specifically implement the
particular tags” (id. at 13). Yet, the Federal Circuit premised its
determination that the claim in McRO was patent eligible, not merely on the
specificity of the claimed animation scheme, but on the fact that the claim,
when considered as a whole, was directed to a technological improvement
over existing, manual 3-D animation techniques and used limited rules in a
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process specifically designed to achieve an improved technological result in
conventional industry practice. See McRO, 837 F.3d at 1316.
We are not persuaded that the claimed invention, as recited in claim 1,
achieves a comparable improved technological result. To the contrary, the
claimed invention, when considered in light of the Specification, clearly
appears focused on achieving a commercial objective, i.e., determining
whether an advertisement complies with online system policies, and not on
any claimed means for achieving that goal that improves technology.
We also are not persuaded of Examiner error to the extent Appellant
maintains that claim 1 is patent eligible because there is no risk of
preemption (Appeal Br. 14–15). Although the Supreme Court has described
“the concern that drives [the exclusion of abstract ideas from patent-eligible
subject matter] as one of pre-emption,” Alice Corp., 573 U.S. at 216,
characterizing preemption as a driving concern for patent eligibility is not
the same as characterizing preemption as the sole test for patent eligibility.
“The Supreme Court has made clear that the principle of preemption is the
basis for the judicial exceptions to patentability” and “[f]or this reason,
questions on preemption are inherent in and resolved by the § 101 analysis.”
Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir.
2015) (citing Alice Corp., 573 U.S. at 216). “[P]reemption may signal
patent ineligible subject matter, [but] the absence of complete preemption
does not demonstrate patent eligibility.” Id.
We conclude, for the reasons outlined above, that claim 1 recites a
mental process, i.e., an abstract idea, and that the additional elements recited
in the claim are no more than generic computer components used as tools to
perform the recited abstract idea. As such, they do not integrate the abstract
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idea into a practical application. See Alice Corp., 573 U.S. at 223–24
(“[W]holly generic computer implementation is not generally the sort of
‘additional featur[e]’ that provides any ‘practical assurance that the process
is more than a drafting effort designed to monopolize the [abstract idea]
itself.’” (quoting Mayo, 566 U.S. at 77)). Accordingly, we agree with the
Examiner that claim 1 is directed to an abstract idea.
Step Two of the Mayo/Alice Framework (2019 Revised Guidance, Step 2B)
Having determined under step one of the Mayo/Alice framework that
claim 1 is directed to an abstract idea, we next consider under Step 2B of the
2019 Revised Guidance, the second step of the Mayo/Alice framework,
whether claim 1 includes additional elements or a combination of elements
that provides an “inventive concept,” i.e., whether the additional elements
amount to “significantly more” than the judicial exception itself.
2019 Revised Guidance, 84 Fed. Reg. at 56.
Appellant attempts to draw an analogy between the present claims and
those in BASCOM Global Internet Services, Inc. v. AT&T Mobility LLC,
827 F.3d 1341 (Fed. Cir. 2016) (Appeal Br. 16–19; see also Reply Br. 5–6).
Yet, we can find no parallel between claim 1 and the claims at issue in
BASCOM.
There, the Federal Circuit determined that the claims were directed to
a technology-based solution to filter Internet content that overcame existing
problems with other Internet filtering systems by taking a known filtering
solution — i.e., a “one-size-fits-all” filter at an Internet Service Provider
(“ISP”) — and making it more dynamic and efficient by providing
individualized filtering at the ISP. Id. at 1351. The court, thus, held that the
second step of the Mayo/Alice framework was satisfied because the claimed
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invention “represents a ‘software-based invention[ ] that improve[s] the
performance of the computer system itself.’” Id.
Appellant argues that “[h]ere, the claimed invention is similar to
BASCOM because the claim limitations that qualify as the additional
elements recited in the claims, when considered in totality as an ordered
combination, do not merely recite routine or conventional steps” (Appeal
Br. 18–19). Yet, the limitations that Appellant identifies, i.e., “the steps of
determining tags, which are policy-independent and descriptive of a
component, associating tags with a component of the advertisement,
evaluating a component by applying a policy to the tag, and reevaluating the
component by applying an updated policy to the tag” (see id. at 19), are part
of the abstract idea itself; they are not additional elements to be considered
when determining whether claim 1 includes additional elements or a
combination of elements that is sufficient to amount to significantly more
than the judicial exception.
It could not be clearer from Alice, that under step two of the
Mayo/Alice framework, the elements of each claim are considered both
individually and “as an ordered combination” to determine whether the
additional elements, i.e., the elements other than the abstract idea itself,
“transform the nature of the claim” into a patent-eligible application. Alice
Corp., 573 U.S. at 217 (internal quotations and citation omitted); see Mayo,
566 U.S. at 72–73 (requiring that “a process that focuses upon the use of a
natural law also contain other elements or a combination of elements,
sometimes referred to as an ‘inventive concept,’ sufficient to ensure that the
patent in practice amounts to significantly more than a patent upon the
natural law itself” (emphasis added) (internal citation omitted)). In other
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words, the inventive concept under step two of the Mayo/Alice test cannot be
the abstract idea itself:
It is clear from Mayo that the “inventive concept” cannot be the
abstract idea itself, and Berkheimer . . . leave[s] untouched the
numerous cases from this court which have held claims ineligible
because the only alleged “inventive concept” is the abstract idea.
Berkheimer v. HP, Inc., 890 F.3d 1369, 1374 (Fed. Cir. 2018) (Moore, J.,
concurring); see also BSG Tech LLC v. BuySeasons, Inc., 899 F.3d 1281,
1290 (Fed. Cir. 2018) (“It has been clear since Alice that a claimed
invention’s use of the ineligible concept to which it is directed cannot supply
the inventive concept that renders the invention ‘significantly more’ than
that ineligible concept.”) (internal citation omitted).
The Examiner determined here, and we agree, that the only claim
elements beyond the abstract idea are the “online system” and the “one or
more computers,” i.e., generic computer components used to perform
generic computer functions (Final Act. 10) — a determination amply
supported by, and fully consistent with the Specification (see, e.g., Spec.
¶¶ 15, 36, 37).5 Appellant cannot reasonably contend, nor does Appellant,
that there is a genuine issue of material fact regarding whether the operation
of these components is well-understood, routine, or conventional, where, as

5 The Office’s April 19, 2018 Memorandum to the Examining Corps from
Deputy Commissioner for Patent Examination Policy, Robert W. Bahr,
entitled, Changes in Examination Procedure Pertaining to Subject Matter
Eligibility, Recent Subject Matter Eligibility Decision (Berkheimer v. HP,
Inc.), available at https://www.uspto.gov/sites/default/files/documents/
memo-berkheimer-20180419.PDF, expressly directs that an examiner may
support the position that an additional element (or combination of elements)
is well-understood, routine or conventional with “[a] citation to an express
statement in the specification . . . that demonstrates the well-understood,
routine, conventional nature of the additional element(s)” (id. at 3).
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here, there is nothing in the Specification to indicate that the operations
recited in claim 1 require any specialized hardware or inventive computer
components or that the claimed invention is implemented using other than a
generic computer component to perform generic computer functions, e.g.,
receiving, storing, and processing information. Indeed, the Federal Circuit,
in accordance with Alice, has “repeatedly recognized the absence of a
genuine dispute as to eligibility” where claims have been defended as
involving an inventive concept based “merely on the idea of using existing
computers or the Internet to carry out conventional processes, with no
alteration of computer functionality.” Berkheimer, 890 F.3d at 1373
(Moore, J., concurring) (internal citations omitted); see also BSG Tech,
899 F.3d at 1291 (“BSG Tech does not argue that other, non-abstract
features of the claimed inventions, alone or in combination, are not well-
understood, routine and conventional database structures and activities.
Accordingly, the district court did not err in determining that the asserted
claims lack an inventive concept.”).
We are not persuaded, on the present record, that the Examiner erred
in rejecting independent claim 1 under 35 U.S.C. § 101. Therefore, we
sustain the Examiner’s rejection of claim 1, and claims 2, 4–12, and 14–19,
which fall with claim 1.
Obviousness
Independent Claim 1 and Dependent Claims 2 and 5–10
Appellant argues that the obviousness rejection cannot be sustained
because “one skilled in the art would not be motivated to combine the cited
references, specifically Badros and Minter, as argued by the examiner” and
further because “even if Badros and Minter were combined, their
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combination does not function as described by the claimed invention”
(Appeal Br. 21).
Badros is directed to a method for approving advertisements for
service by an online ad serving system (Badros ¶ 9). In accordance with the
method, advertisements are received and checked for violations of the online
system’s policy rules, and a set of policy violations is generated (id. ¶¶ 12,
85). The set of violations is then filtered using whitelist information to
determine whether the violation is exempted, i.e., whether the advertisement
can be approved notwithstanding the policy violation (id.; see also id. ¶ 87).
Badros discloses that, in at least some embodiments, each violation “may
contain information such as the policy violated, which creative or criteria the
violation applies to . . . , and the violation text (referred to as ‘Text’)” (id.
¶ 88). The violation text, which the Examiner equates to the one or more
tags, recited in claim 1, is compared to items in the whitelist to determine
whether the violation is exempted and, therefore, can be ignored (id.).
Minter is directed to a short-range commercial messaging and
advertising system that allows merchants to deliver advertising over wireless
networks to consumer mobile devices within the vicinity of the merchant
(Minter ¶ 6). Minter discloses that in some embodiments, the commercial
message delivered to the mobile device includes a descriptive tag and
associated content; the tag, which is in the form of a header, precedes the
content and describes the content. For example, a 30-second video
advertisement is immediately preceded by a tag that includes words or
numerical descriptors that describe the advertisement, such as the identity of
the merchant who is sourcing the content, the type of merchant, the type of
product or service being advertised and/or the financial incentive being
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offered (id. ¶ 42). The mobile device determines the “admission and output
status” of the message by comparing the tag to predetermined policies stored
on the mobile device (id.; see also id. ¶ 33 (disclosing that policies include,
e.g., merchant identities, merchant types, product types, and/or financial
inducements that are authorized or unauthorized and/or have a particular
priority)). Minter discloses that the comparison may be a keyword
comparison or a comparison of numerical descriptors for which there is a
standard definition (id. ¶ 57).
In rejecting claim 1 under 35 U.S.C. § 103(a), the Examiner found
that Badros discloses a computer-implemented system and method for
determining whether advertisement components comply with policies of an
online ad serving system by “dividing an advertisement into components,
determining whether the components violate a policy, tagging the
components when they potentially violate a policy with information
characterizing the component, and then using the tags to determine whether
the advertisement satisfies a policy [exemption]” (Final Act. 14). The
Examiner cited Minter as establishing that it was known in the art before
Appellant’s invention to “tag advertisements describing characteristics of the
components and use the tags to determine whether the advertisement should
be approved or rejected based on rules and policies” (id. (citing Minter
¶¶ 42, 57)). And the Examiner concluded that it would have been obvious to
a person of ordinary skill in the art at the time of Appellant’s invention to
modify the advertisement compliance system of Badros to include
“determining tags independent of policies of the online system, storing
associations between the tags and the advertisement being analyzed, and
determining . . . whether the component of the advertisement satisfies one or
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more policies of the online system by applying the one or more policies to
the tag associated with the component . . . as taught in Minter,” inter alia,
because the claimed invention is simply a combination of old elements and
in the combination “each element merely would have performed the same
function in combination as it did separately, and one of ordinary skill in the
art would have recognized that such a combination would have yielded
predictable results” (id. at 16).
We agree with Appellant that the Examiner has not sufficiently
established that a person of ordinary skill in the art would have had an
apparent reason to combine the teachings of Badros and Minter, as the
Examiner proposes. In both Badros and Minter, ad components are tagged,
and rules are applied to the tags, to determine whether or not to approve an
advertisement. In Minter, these rules are policies of the mobile device that
are applied to tags (created by a third party content provider and provided to
the mobile device with the associated content) to determine whether or not
the advertisement should be accepted or rejected, i.e., whether or not the ad
component violates a policy specified by the mobile device. In Badros, on
the other hand, the rules are policy exemptions and are applied to tags,
which are generated when an ad component has been identified as violating
a system policy, to determine whether the advertisement should be approved
notwithstanding the policy violation.
The Examiner, in our view, has not sufficiently established that a
person of ordinary skill in the art at the time of Appellant’s invention would
have had an apparent reason to modify the Badros system, which tags
components only after the components have been determined to violate a
system policy and uses the tags to determine whether the policy violation
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can be exempted, to instead implement tagging to determine whether an ad
component satisfies a system policy in the first instance. It is not enough to
show merely that individual elements of a claim may be found in the cited
references; instead, the Examiner must present a cogent rationale to explain
why a person of ordinary skill would have had an apparent reason to select
and combine the individual elements to arrive at the claimed invention. See
In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (“[R]ejections on
obviousness grounds [require] some articulated reasoning with some rational
underpinning to support the legal conclusion of obviousness”) (cited with
approval in KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007)). The
Examiner has failed to do so here.
In view of the foregoing, we do not sustain the Examiner’s rejection
of independent claim 1 under 35 U.S.C. § 103. For the same reasons, we
also do not sustain the Examiner’s rejection of dependent claims 2 and 5–10.
Cf. In re Fritch, 972 F.2d 1260, 1266 (Fed. Cir. 1992) (“dependent claims
are nonobvious if the independent claims from which they depend are
nonobvious”).
Independent Claim 11 and Dependent Claims 12 and 15–17
Claim 11 includes language substantially similar to the language of
claim 1 and stands rejected based on the same rationale applied with respect
to claim 1 (Final Act. 22–27). Therefore, we do not sustain the Examiner’s
rejection under 35 U.S.C. § 103 of independent claim 11, and claims 12 and
15–17, which depend therefrom, for the same reasons set forth above with
respect to claim 1.
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Dependent Claims 4, 14, 18, and 19
The rejections of dependent claims 4, 14, 18, and 19 do not cure the
deficiencies in the Examiner’s rejection of independent claims 1 and 11.
Therefore, we do not sustain the Examiner’s rejections under 35 U.S.C.
§ 103 of these dependent claims.
CONCLUSION
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 2, 4–12,
14–19
101 Eligibility 1, 2, 4–12,
14–19

1, 2, 5–12,
15–17
103 Badros, Minter,
Makeev
1, 2, 5–12,
15–17
4, 14 103 Badros, Minter,
Makeev,
Merdinger
4, 14
18, 19 103 Badros, Minter,
Makeev, Kae
18, 19
Overall
Outcome
1, 2, 4–12,
14–19

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).

AFFIRMED