Pearce Aurigemma

Patent Trials and Appeals Board

Jun 2, 2020

13466909 - (D) (P.T.A.B. Jun. 2, 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.
13/466,909 05/08/2012 Pearce Aurigemma 058083-0857892(2397US02) 9100
72058 7590 06/02/2020
Kilpatrick Townsend & Stockton LLP/Adobe
Adobe Systems, Inc. 58083
Mailstop: IP Docketing - 22
1100 Peachtree Street, Suite 2800
Atlanta, GA 30309-4530
EXAMINER
KARMIS, ALISSA D
ART UNIT PAPER NUMBER
3683
NOTIFICATION DATE DELIVERY MODE
06/02/2020 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):
KTSDocketing2@kilpatrick.foundationip.com
ipefiling@kilpatricktownsend.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte PEARCE AURIGEMMA
____________________

Appeal 2018-007050
Application 13/466,909
Technology Center 3600
____________________

Before JAMES R. HUGHES, JENNIFER L. McKEOWN, and
JOHN P. PINKERTON, Administrative Patent Judges.

PINKERTON, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 21–38, which are all of the claims pending in the
application. Claims 1–20 are canceled. We have jurisdiction under 35
U.S.C. § 6(b).
We affirm.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies the real party in interest as Adobe
Systems Incorporated. Appeal Br. 1.
Appeal 2018-007050
Application 13/466,909

2
STATEMENT OF THE CASE
Introduction
Appellant’s described and claimed invention is generally directed to
methods and apparatus that use network analytics to evaluate the
effectiveness of an advertisement. Spec. ¶¶ 5, 17.2 The Specification
explains that in the context of websites, marketing may include
advertisements for a website and associated products to encourage people to
visit the website and purchase products and services offered via the website.
Id. at ¶ 2. The Specification also explains that “[i]in the context of internet
advertising, tracking user interaction with a website is known as ‘web
analytics,’ which provides information, among other things, about the
number of visitors to a website and the behavior of users while using the
site.” Id. at ¶ 4.
Claims 21, 28, and 34 are independent. Claim 21 is representative of
the subject matter on appeal and is reproduced below (with paragraph
notations added):
21. In an environment in which resources are allocated to
various electronic marketing activities, a method for allocating
data network resources for presenting online advertisements
based on estimating a value of using a subscription
advertisement to acquire new fan page subscribers, the method
comprising:

2 Our Decision refers to the Final Office Action mailed June 7, 2017 (“Final
Act.”), Appellant’s Appeal Brief filed Nov. 9, 2017 (“Appeal Br.”),
Response to Notification of Non-Compliant Appeal Brief filed Dec. 28,
2017 (“Response”), and Reply Brief filed June 28, 2018 (“Reply Br.”), the
Examiner’s Answer mailed May 3, 2018 (“Ans.”), and the original
Specification filed May 8, 2012 (“Spec.”).

Appeal 2018-007050
Application 13/466,909

3
(a) providing an interface for presenting a subscription
advertisement and a product advertisement and for receiving
user input;
(b) presenting, via the interface, the subscription
advertisement to non-subscribers of a fan page, the subscription
advertisement comprising a first selectable element embedded
with a first tracking code to track a number of new fan page
subscribers acquired from the subscription advertisement;
(c) determining the number of new fan page subscribers
acquired from the subscription advertisement based on
receiving a selection of the first selectable element;
(d) determining a cost per new fan page subscriber of
using the subscription advertisement to acquire new fan page
subscribers, the cost determined by computing a ratio of cost
for implementing the subscription advertisement to the number
of new fan page subscribers;
(e) presenting, via the interface, the product
advertisement on the fan page for receipt by fan page
subscribers, the product advertisement comprising a second
selectable element embedded with a second tracking code to
track conversion data for purchases resulting from selection, via
user input provided via the interface, of the second selectable
element by fan page subscribers;
(f) determining a value per fan page subscriber for the
product advertisement by computing a ratio of the tracked
conversion data to a number of the fan page subscribers
receiving the product advertisement;
(g) determining a value of using the subscription
advertisement to acquire new fan page subscribers by
comparing the cost per new fan page subscriber with the value
per fan page subscriber; and
(h) allocating data network resources to use the
subscription advertisement to acquire new fan page subscribers
based on the determined value of using the subscription
advertisement to acquire new fan page subscribers, wherein
allocating data network resources to use the subscription
Appeal 2018-007050
Application 13/466,909

4
advertisement includes causing a web content server to
perform, based on the determined value of using the
subscription advertisement to acquire new fan page subscribers,
at least one of:
continuing to present the subscription advertisement,
stopping presentation of the subscription advertisement,
or
modifying the subscription advertisement.
Response 3–4 (Claims App.).
Rejections on Appeal3
Claims 21–38 stand rejected under 35 U.S.C. § 101 as being directed
to an abstract idea without significantly more. Final Act. 7–12.
Claims 21–38 stand rejected under 35 U.S.C. §103(a) as being
unpatentable over the combination of Latona et al. (US 2005/0028188 A1;
published Feb. 3, 2005) (“Latona”), Johansson, L. Measuring a Niche
Website (outfox.com, Dec. 4, 2007) (“Johansson”), Brooks, C. How to
Calculate Cost Per Fan in Facebook (eHow.com, July 12, 2011)
(“Brooks”). Final Act. 13–23.
ANALYSIS
I. SECTION 101 REJECTION
A. Examiner’s Findings and Conclusions,
and Appellant’s Arguments
The Examiner finds that claims 21–38 are directed to the abstract idea
of “evaluating advertisements values and making a determination about
continuing, stopping or modifying an advertisement based on the

3 Although the Examiner rejected claims 21–38 under 35 U.S.C. § 112, first
paragraph, for failing to comply with the written description requirement
(Final Act. 7), the Examiner withdrew that rejection after the filing of the
Appeal Brief. Ans. 3.
Appeal 2018-007050
Application 13/466,909

5
advertisement values.” Final Act. 8. In particular, the Examiner finds that
claim 21 is directed to the concept of presenting advertisements to users,
tracking the users’ actions of subscribing and purchasing based on respective
ads, calculating a cost and value per new subscriber for the respective ads,
comparing the two calculations to estimate a value of the ad associated with
subscribing, and determine whether to continue using, stop using, or modify
the ad associated with subscribing based on that value. Id. at 9. The
Examiner also finds this concept is directed toward “methods of organizing
human activities related to advertising, marketing, and sales activities, which
is an example identified by the courts as an abstract idea.” Id. at 9–10
(citing Ultramercial4 and In re Ferguson5).
The Examiner finds that in addition to the abstract idea, the claims
recite the additional elements of an “interface,” “a first tracking code” in the
subscription advertisement, “a second tracking code” in the product
advertisement, “data network resources,” and “a web content server.” Id. at
10–11. The Examiner further finds that these elements, taken alone and as
an ordered combination, do not amount to significantly more than the
abstract idea because they perform well-understood, routine, and
conventional functions in the field of online advertising. Id. at 11–12. The
Examiner notes that claim 34 recites a processor at a high level of generality,
and finds that “no more than a generic computer is required for performing
the [claimed] functions and serves to generally link the abstract idea to a
technological environment.” Id. at 11.

4 Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709 (Fed. Cir. 2014).
5 In re Ferguson, 558 F.3d 1359 (Fed. Cir. 2009).
Appeal 2018-007050
Application 13/466,909

6
Appellant contends the Examiner erred by rejecting claims 21–38
under 35 U.S.C. § 101 because (1) the claims are not directed to an abstract
idea, (2) the claims recite significantly more than any abstract idea, and (3)
the Examiner failed to establish prima facie ineligibility of the dependent
claims. Appeal Br. 12–32; Reply Br. 1–12.6 In particular, Appellant argues
that the Examiner failed to follow the May 19, 2016 Office guidance that
“examiners are to continue to determine if the claim recites . . . a concept
that is similar to concepts previously found abstract by the courts” (Appeal
Br. 13 (emphasis omitted)) because “none of the decisions cited by the
Examiner involved concepts sufficiently similar to the features recited in the
pending claims” (Appeal Br. 14). See Appeal Br. 13–14 (citing
Memorandum from Robert H. Bahr, Deputy Commissioner for Patent
Examination Policy, U.S. Patent and Trademark Office, “Recent Subject
Matter Eligibility Decisions” (May 19, 20l6) (“May 19 Guidance”) at 2); see
also id. 14–25; Reply Br. 8–12. According to Appellant, analyzing each of
the independent claims as a whole, in view of the Specification, shows that
“the claims are directed to a specific implementation of a software solution
for allocating network resources using tracking code embedded in selectable
features of online advertisements, rather than any abstract idea.” Appeal Br.
26; see Appeal Br. 25–28.
Appellant also argues that the claims recite significantly more than
any abstract idea because the claims “solve the Internet-centric problem of
allocating data network resources used for online communications (e.g.,

6 The pages of Appellant’s Reply Brief are not numbered. We consider the
title or cover page to be page number 1 and each of the subsequent pages to
be numbered sequentially thereafter.
Appeal 2018-007050
Application 13/466,909

7
online advertisements) in an electronic environment and do so using a
solution that is necessarily rooted in computing technology.” Id. at 28–30
(citing DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1257–59
(Fed. Cir. 2014)). In that regard, Appellant argues the claims solve this
problem by using embedded tracking code to perform analysis based on
interactions with selectable elements of online content, and allocating
resources by configuring a web server to continue, stop, or modify an online
advertisement, all of which require computing technology to implement. Id.
at 29–30; Reply Br. 4–6. Moreover, Appellant argues that the claims are
directed to, and the Specification shows, “a technical improvement (e.g.,
embedding tracking code in online content and controlling web servers using
the tracking code) rather than organizing human activities.” Reply Br. 6–8.
According to Appellant, after the Appeal Brief was filed, and three
months before the Answer was issued, the Federal Circuit explained in
Berkheimer7 that a finding of ineligibility is improper without evidence as to
whether a claim element (or combination of elements) is conventional. Id. at
2. Appellant argues that because the Examiner conceded there were
additional elements in the claims in addition to the identified abstract idea,
the Examiner was required to provide evidence that the additional claim
limitations are well-understood, routine, or conventional, both individually
and as an ordered combination. Id. at 2–3. Appellant also argues that the
claims are patentable at least because the Examiner failed to meet this
burden. Id. at 3.
Appellant further argues that the recited claim elements are not well-
understood, routine, and conventional functions because the Examiner fails

7 Berkheimer v. HP Inc., 881 F.3d 1360, 1367–70 (Fed. Cir. 2018).
Appeal 2018-007050
Application 13/466,909

8
to identify a single prior art reference, or combination of references, that
discloses the elements of the claims. Id. at 30–31. Additionally, Appellant
argues that the claims are patent eligible under § 101 because they “do not
preempt every application of any abstract idea.” Id. at 31. Lastly, Appellant
argues that the Examiner “erred by failing to explain why dependent claims
22–27, 29–33, and 35–38 are directed to an abstract idea and lack features
that are ‘significantly more’ than the abstract idea.” Id. at 32.
B. Applicable Law
“Whether a claim is drawn to patent-eligible subject matter is an issue
of law that we review de novo.” SiRF Tech., Inc. v. Int’l Trade Comm’n,
601 F.3d 1319, 1331 (Fed. Cir. 2010).
Section 101 of the Patent Act provides that “any new and useful
process, machine, manufacture, or composition of matter, or any new and
useful improvement thereof” is patent eligible. 35 U.S.C. § 101. However,
the Supreme Court has long interpreted 35 U.S.C. § 101 to include implicit
exceptions: “[l]aws of nature, natural phenomena, and abstract ideas are not
patentable.” Alice, 573 U.S. at 216 (quoting Ass’n for Molecular Pathology
v. Myriad Genetics, Inc., 569 U.S. 576, 589 (2013)). To determine whether
a claim falls within one of these excluded categories, the Court has set out a
two-part framework. The framework requires us first to consider whether
the claim is “directed to one of those patent-ineligible concepts.” Alice, 573
U.S. at 217. If so, we then examine “the elements of [the] claim both
individually and ‘as an ordered combination’ to determine whether the
additional elements ‘transform the nature of the claim’ into a patent-eligible
application.” Alice, 573 U.S. at 217 (quoting Mayo Collaborative Servs. v.
Prometheus Labs., Inc., 566 U.S. 66, 78, 79 (2012)). That is, we examine
Appeal 2018-007050
Application 13/466,909

9
the claim for an “inventive concept,” “an element or combination of
elements that is ‘sufficient to ensure that the patent in practice amounts to
significantly more than a patent upon the [ineligible concept] itself.’” Alice,
573 U.S. at 217–18 (alteration in original) (quoting Mayo, 566 U.S. at 72–
73).
In January 2019, the Patent Office issued guidance about this
framework. See 2019 Revised Patent Subject Matter Eligibility Guidance,
84 Fed. Reg. 50 (Jan. 7, 2019) (“Revised Guidance”).8 Under the Revised
Guidance, to decide whether a claim is directed to an abstract idea, we
evaluate whether the claim (1) recites one of the abstract ideas listed in the
Revised Guidance (“Prong One”) and (2) fails to integrate the recited
abstract idea into a practical application (“Prong Two”). See Revised
Guidance, 84 Fed. Reg. at 51, 54. If the claim is directed to an abstract idea,
as noted above, we then determine whether the claim has an inventive
concept. The Revised Guidance explains that when making this
determination, we should consider whether the additional claim elements
add “a specific limitation or combination of limitations that are not well-
understood, routine, conventional activity in the field” or “simply append[]
well-understood, routine, conventional activities previously known to the
industry, specified at a high level of generality.” Revised Guidance, 84 Fed.
Reg. at 56.

8 See also USPTO, October 2019 Patent Eligibility Guidance Update (Oct.
17, 2019), https://www.uspto.gov/sites/default/files/documents/
peg_oct_2019_update.pdf.
Appeal 2018-007050
Application 13/466,909

10
With these principles in mind, we first analyze whether claim 21 is
directed to an abstract idea.9
C. Abstract Idea
1. USPTO Step 2A, Prong One
Beginning with Step 2A, Prong One, of the Revised Guidance,10 we
must determine “whether the claims at issue are directed to one of those
patent-ineligible concepts,” including the abstract ideas enumerated in the
Revised Guidance. Alice, 573 U.S. at 217. One of the subject matter
groupings identified as an abstract idea in the Revised Guidance is “[c]ertain
methods of organizing human activity— . . . commercial . . . interactions
(including . . . advertising, marketing or sales activities or behaviors).”
Revised Guidance, 84 Fed. Reg. at 52. The Revised Guidance identifies
another category of abstract ideas as including “[m]ental processes—
concepts performed in the human mind (including an observation,
evaluation, judgment, opinion).” Id.
For our prong one analysis, we set aside, for consideration below, the
technological elements recited in claim 21: an “interface” for presenting
advertisements, as recited in limitations (a), (b), and (e); a “first selectable
element embedded with a first tracking code” in the subscription
advertisement, as recited in limitation (b); a “second selectable element
embedded with a second tracking code” in the product advertisement, as

9 Appellant argues claims 21–38 as a group focusing on claim 21. See
Appeal Br. 12–32; Reply Br. 1–13. Thus, we decide the appeal based on
representative claim 21. See 37 C.F.R. § 41.37(c)(1)(iv).
10 The Guidance refers to “Step One” as determining whether the claimed
subject matter falls within the four statutory categories identified by 35
U.S.C. § 101: process, machine, manufacture, or composition of matter.
This step is not at issue in this case.
Appeal 2018-007050
Application 13/466,909

11
recited in limitation (e); and, “data network resources” and a “web content
server,” as recited in limitation (h).
Thus, claim 21 recites “a method . . . for presenting online
advertisements based on estimating a value of using a subscription
advertisement to acquire new fan page subscribers,” including the steps of:
(a) “. . . presenting a subscription advertisement and a product advertisement
and . . . receiving user input”; (b) “presenting . . . the subscription
advertisement to non-subscribers of a fan page, . . . [and] track a number of
new fan page subscribers acquired from the subscription advertisement”; (c)
“determining the number of new fan page subscribers acquired from the
subscription advertisement based on receiving a selection of the first
selectable element”; (d) “determining a cost per new fan page subscriber of
using the subscription advertisement to acquire new fan page subscribers,
the cost determined by computing a ratio of cost for implementing the
subscription advertisement to the number of new fan page subscribers”; (e)
“presenting . . . the product advertisement on the fan page for receipt by fan
page subscribers. . . [and] track conversion data for purchases resulting from
selection . . . of [the product advertisement]”; (f) “determining a value per
fan page subscriber for the product advertisement by computing a ratio of
the tracked conversion data to a number of the fan page subscribers
receiving the product advertisement”; (g) “determining a value of using the
subscription advertisement to acquire new fan page subscribers by
comparing the cost per new fan page subscriber with the value per fan page
subscriber”; and, (h) “. . . use the subscription advertisement to acquire new
fan page subscribers based on the determined value of using the subscription
advertisement to acquire new fan page subscribers, wherein . . . use the
Appeal 2018-007050
Application 13/466,909

12
subscription advertisement includes . . . at least one of: continuing to
present the subscription advertisement, stopping presentation of the
subscription advertisement, or modifying the subscription advertisement.”
The Examiner finds that the claims “describe a concept of determining
the value or effectiveness of advertisements presented to users in terms of
acquired conversions or subscriptions in order to decide whether to continue
using, stop using, or modify an advertisement based on its determined
effectiveness in comparison to another advertisement’s effectiveness.” Ans.
7. The Examiner also finds that “[t]his concept is clearly directed to
advertising, marketing and sales activities which falls under the abstract idea
category of certain methods of organizing human activities.” Id.
We agree with the Examiner’s findings and conclude that claim 21
focuses on the concept of evaluating the effectiveness of a subscription
advertisement in comparison to a product advertisement and using that
evaluation in regard to continuing to present, stopping presentation of, or
modifying the subscription advertisement. In particular, in “presenting” step
(b), a “subscription advertisement” is presented to “non-subscribers” of a fan
page. In “determining” step (c), the “number” of new subscribers acquired
from the subscription advertisement is determined; and in “determining”
step (d), the “cost per new fan page subscriber” from using the subscription
advertisement is determined.
In “presenting” step (e), a product advertisement is presented to fan
page “subscribers,” and “conversion data for purchases” is tracked. In
“determining” step (f), a “value per fan page subscriber” for the product
advertisement is determined. In “determining” step (g), a “value of using
the subscription advertisement” to acquire new subscribers is determined by
Appeal 2018-007050
Application 13/466,909

13
“comparing” the “cost per new fan page subscriber” (for the subscription
advertisement) with the “value per fan page subscriber” (for the product
advertisement). Then, in step (h) of claim 21, the “value of using the
subscription advertisement” is used in regard to continuing to present,
stopping presentation of, or modifying the subscription advertisement.
Thus, we also conclude, as does the Examiner, that this concept is
directed to advertising, marketing, and sale activities, and is, therefore, a
method of organizing human activity. See Revised Guidance, 84 Fed. Reg.
at 52; Ans. 7.
In addition, the Examiner finds that the recited limitations “such as
determining the number . . . , determining a cost . . . , determining a value
[per fan page subscriber for the product advertisement] . . . , and determining
a value [of using the subscription advertisement] . . . can be performed
mentally or with pen and paper.” Ans. 9. In that regard, step (c) recites
“determining the number of new fan page subscribers from the subscription
advertisement based on receiving a selection of the first selectable element,”
and step (d) recites “determining a cost per new fan page subscriber of using
the subscription advertisement.” Step (e) recites “track conversion data for
purchases resulting from selection via user input . . . of the second selectable
element [of the product advertisement],” and step (f) recites “determining a
value per fan page subscriber for the product advertisement.” We determine
that steps (c), (d), (e), and (f) of claim 21 describe concepts that can be
performed in the human mind or practicably with pen and paper, and,
therefore, fall into the mental processes category of abstract ideas. See 2019
Revised Guidance, 84 Fed. Reg. at 52.
Appeal 2018-007050
Application 13/466,909

14
Although steps (c) and (e) recite determining the number of new
subscribers and tracking conversion data based on receiving a “selection” of
the first and second selectable element, we determine these steps are
nevertheless in the mental processes category. The Revised Guidance
explains that “[m]ental processes” include acts that people can perform in
their minds or using pen and paper, even if the claim recites that a generic
computer component performs the acts. See Revised Guidance, 84 Fed.
Reg. at 52 n.14 (“If a claim, under its broadest reasonable interpretation,
covers performance in the mind but for the recitation of generic computer
components, then it is still in the mental processes category unless the claim
cannot practically be performed in the mind.”) (emphasis omitted); 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 steps,
there is nothing in the claims themselves that foreclose them from being
performed by a human, mentally or with pen and paper.”); Elec. Power Grp.,
LLC v. Alstom S.A., 830 F.3d 1350, 1354 (Fed. Cir. 2016) (characterizing
collecting information, analyzing information by steps people go through in
their minds, or by mathematical algorithms, and presenting the results of
collecting and analyzing information, without more, as matters within the
realm of abstract ideas); CyberSource Corp. v. Retail Decisions, Inc., 654
F.3d 1366, 1372, 1375–76 (Fed. Cir. 2011) (holding that the incidental use
of “computer” or “computer readable medium” does not make a claim
otherwise directed to process that “can be performed in the human mind, or
by a human using a pen and paper” patent eligible, explaining that “purely
mental processes can be unpatentable, even when performed by a
computer”).
Appeal 2018-007050
Application 13/466,909

15
We further determine that step (d) of “determining a cost per new fan
page subscriber” and step (f) of “determining a value per fan page
subscriber” can be performed by a human using pen and paper to perform
basic arithmetic operations. Moreover, the functions of “determining a
value” of using the subscription advertisement by “comparing” the cost per
new fan page subscriber with the value per fan page subscriber, as recited in
step (g) of claim 21, can also be performed in the human mind, or by a
human using a pen and paper.
We note that merely combining several abstract ideas does not render
the combination any less abstract. RecogniCorp, LLC v. Nintendo Co., Ltd.,
855 F.3d 1322, 1327 (Fed. Cir. 2017) (“Adding one abstract idea . . . to
another abstract idea . . . does not render the claim non-abstract.”); see also
FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1094 (Fed. Cir.
2016) (determining the pending claims were directed to a combination of
abstract ideas).
Appellant argues extensively that none of the Federal Circuit
decisions cited by the Examiner show that the claims are directed to an
abstract idea because they did not involve concepts sufficiently similar to the
features recited in the pending claims. See Appeal Br. 13–25; Reply Br. 8–
12. These arguments are not persuasive. Under the Revised Guidance, the
relevant inquiry is whether the claims recite an abstract idea as described in
the identified groupings, including certain methods of organizing human
activity and mental processes. It is not persuasive to show that the claimed
subject matter is unrelated (e.g., in the field of art) to a specific case
identifying a particular method of organizing human activity. See Revised
Guidance, 84 Fed. Reg. at 51–53.
Appeal 2018-007050
Application 13/466,909

16
Accordingly, we conclude that claim 21 recites the abstract idea of
organizing human activity by evaluating the effectiveness of a subscription
advertisement in comparison to a product advertisement and using that
evaluation in regard to continuing to present, stopping presentation of, or
modifying the subscription advertisement.
2. USPTO Step 2A, Prong Two
Because we determine that claim 21 recites an abstract idea, we turn
to prong two of the first step of the Alice analysis and consider whether
claim 21 integrates this abstract idea into a practical application. See
Revised Guidance, 84 Fed. Reg. at 51. In doing so, we consider whether
there are any additional elements beyond the abstract idea that, individually
or in combination, “integrate the [abstract idea] into a practical application,
using one or more of the considerations laid out by the Supreme Court and
the Federal Circuit.”11 Revised Guidance, 84 Fed. Reg. at 54–55.
As discussed supra, Appellant argues that claim 21 is not directed to
an abstract idea because it solves the Internet-centric problem of allocating
data network resources used for online advertisements using a solution
rooted in computing technology. Appeal Br. 28–30. In particular, Appellant
argues claim 21 solves this problem by using embedded tracking code to
perform analysis based on interactions with selectable elements of online
content, and allocating resources by configuring a web server to continue,
stop, or modify an online advertisement, all of which require computing

11 We acknowledge that some of these considerations may be properly
evaluated under step 2 of Alice (step 2B of the Revised Guidance). Solely
for purposes of maintaining consistent treatment within the Office, we
evaluate it under step 1 of Alice (step 2A, prong two, of the Revised
Guidance). See Revised Guidance, 84 Fed. Reg. at 54–55.
Appeal 2018-007050
Application 13/466,909

17
technology to implement. Id. at 29–30; Reply Br. 4–6. Appellant also
argues that the claims are directed to, and the Specification shows, “a
technical improvement (e.g., embedding tracking code in online content and
controlling web servers using the tracking code) rather than organizing
human activities.” Reply Br. 6–8.
We are not persuaded by Appellant’s arguments. First, we are not
persuaded that claim 21 is directed to an Internet-centric problem of
allocating data network resources for online advertisements. Instead, we
agree with the Examiner’s finding that claim 21 addresses the problem of
determining the effectiveness of advertisements presented to users in terms
of acquired conversions or subscriptions to decide whether to continue
using, stop using, or modify an advertisement. Ans. 10.
Second, we are not persuaded by Appellant’s arguments that claim 21
recites a technological improvement. The Examiner finds, and we agree,
that “there is no technical improvement described in the claims.” Ans. 10.
Appellant’s arguments are conclusory and fail to specify how claim 21
allegedly provides any specific improvement to the technological elements
recited in claim 21. In particular, Appellant has failed to demonstrate that
claim 21 requires any specialized computer hardware or other inventive
computer components, i.e., a particular machine, that the claimed invention
is performed using other than generic computer components, or that the
claim results in the improvement of a computer, computer software, or the
functioning of a computer or its components. Although Appellant argues
that claim 21 recites “using embedded tracking code to perform analysis
based on interactions with selectable elements of online content, and
allocating resources by configuring a web server to continue, stop, or modify
Appeal 2018-007050
Application 13/466,909

18
an online advertisement,” these elements are recited at a high level of
generality without any particular or specialized features or modifications.
Appellant has also not identified or described any technological
improvement required by claim 21 to embedded tracking codes, interfaces
for presenting advertisements, the Internet or network-related infrastructure,
data network resources or web content servers. Nor has Appellant identified
any disclosure in the Specification of any inventive techniques or specialized
computer components or software required by claim 21.
Third, we also are not persuaded by Appellant’s argument that the
Federal Circuit’s decision in DDR supports a conclusion that claim 21 is
patent eligible. In DDR, instead of a computer network operating in its
normal, expected manner by sending a website visitor to a third-party
website apparently connected with a clicked advertisement, the claimed
invention generated and directed the visitor to a hybrid page that presented
(1) product information from the third party, and (2) visual “look and feel”
elements from the host website. DDR, 773 F.3d at 1258–59. Given this
particular Internet-based solution, the court held that the claimed invention
did not merely use the Internet to perform a business practice known from
the pre-Internet world, but rather was necessarily rooted in computer
technology to overcome a problem specifically arising in computer
networks. Id. at 1257. That is not the case here. As noted previously, claim
21 merely uses the existing Internet, without any recited technological
improvements, to evaluate the effectiveness of an online advertisement to
acquire new subscribers and use that evaluation to make any necessary
adjustments to existing resources using a web server to continue using, stop
using, or modify the advertisement. In short, this operation is not rooted in
Appeal 2018-007050
Application 13/466,909

19
computer technology to overcome a problem arising in computer networks,
but is directed to organizing human activity by evaluating the effectiveness
of advertisements presented to users and using that evaluation in regard to
continuing to use, stop using, or modifing an advertisement—an abstract
idea.
Thus, claim 21 does not recite a technological improvement to
computers, computer components or software, tracking codes, interfaces, or
network-related infrastructure (including data network resources and web
servers). Rather, the computers, software, and network-related infrastructure
are readily available computing and networking elements performing their
available basic functions as tools in implementing the abstract idea of
evaluating the effectiveness of advertisements. Accordingly, we determine
that the additional elements recited in claim 21 do not integrate the recited
abstract idea into a practical application. See SAP Am., Inc. v. InvestPic,
LLC, 898 F.3d 1161, 1169–70 (Fed. Cir. 2018); Affinity Labs of Tex., LLC v.
DIRECTV, LLC, 838 F.3d 1253, 1262 (Fed. Cir. 2016) (“In this case, the
claims are directed not to an improvement in cellular telephones but simply
to the use of cellular telephones as tools in the aid of a process focused on an
abstract idea. That is not enough to constitute patentable subject matter.”);
Revised Guidance, 84 Fed. Reg. at 55 (explaining that courts have identified
“merely us[ing] a computer as a tool to perform an abstract idea” as an
example of when a judicial exception may not have been integrated into a
practical application). Further, consistent with the Examiner’s findings (see
Ans. 9–12), and in view of Appellant’s Specification (see e.g., paragraphs
14, 17–18, 21–28, 36, 55, 59–69), we conclude that claim 21 does not
integrate the judicial exception into a practical application, and thus is
Appeal 2018-007050
Application 13/466,909

20
directed to the judicial exception itself. In particular, we determine claim 21
does not recite:
(i) an improvement to the functioning of a computer;
(ii) an improvement to another technology or technical field;
(iii) an application of the abstract idea with, or by use of, a
particular machine;
(iv) a transformation or reduction of a particular article to a
different state or thing; or
(v) other meaningful limitations beyond generally linking the
use of the abstract idea to a particular technological
environment.
See MPEP § 2106.05(a)–(c), (e)–(h).
3. USPTO Step 2B — Inventive Concept
Finally, we consider whether claim 21 has an inventive concept, that
is, whether any additional claim elements “‘transform the nature of the
claim’ into a patent-eligible application.” Alice, 573 U.S. at 217 (quoting
Mayo, 566 U.S. at 78, 79). This requires us to evaluate whether the
additional claim elements add “a specific limitation or combination of
limitations that are not well-understood, routine, conventional activity in the
field” or “simply append[] well-understood, routine, conventional activities
previously known to the industry, specified at a high level of generality.”
Revised Guidance, 84 Fed. Reg. at 56.
The Examiner finds that the additional claim elements of an interface,
tracking code, data network resources, and a web content server are not
“significantly more” than the abstract idea because they are performing well-
understood, routine, and conventional functions in the field of online
advertising. Final Act. 11. The Examiner also finds that Appellant “has not
described how the data network resources/web content server, interface and
tracking codes are not well-understood, routine and conventional
Appeal 2018-007050
Application 13/466,909

21
computer/computing elements for performing well-understood, routine and
conventional functions such as presenting advertisements and tracking
online user activity.” Ans. 11. Appellant makes several arguments that the
claims recite significantly more than any abstract idea. Appeal Br. 30–31;
Reply Br. 1–6. We are not, however, persuaded by Appellant’s arguments
for the reasons discussed below.
First, Appellant argues that claims “recite significantly more than any
abstract idea because the ordered combination of elements in each claim is
neither conventional nor routine.” Reply Br. 1. We are not persuaded by
this argument because, as we understand it, Appellant is arguing nothing
more than the abstract idea itself. The law is clear, however, that the claim
elements to be considered under Alice step 2B cannot be the abstract idea
itself. Berkheimer v. HP Inc., 890 F.3d 1369, 1374 (Fed. Cir. 2018)
(Moore, J., concurring) (“Berkheimer . . . leave[s] untouched the numerous
cases from [the Federal Circuit] which have held claims ineligible because
the only alleged ‘inventive concept’ is the abstract idea.”); 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.”); Aatrix Software, Inc. v.
Green Shades Software, Inc., 890 F.3d 1354, 1359 (Fed. Cir. 2018) “[T]he
‘inventive concept’ cannot be the abstract idea itself.”).
Second, Appellant argues that in light of Berkheimer, which was
decided three months before the Answer was issued, the claims are
patentable because the Examiner was required to provide “evidence that the
additional claim elements are well-understood, routine, or conventional, both
Appeal 2018-007050
Application 13/466,909

22
individually and as an ordered combination,” but the Examiner failed to
meet this burden. Reply Br. 1–3. This argument is not persuasive in view of
the Examiner’s findings and the Specification. Here, the Examiner finds that
the use of tracking codes for online advertisements is conventional based on
the disclosures of Horowitz12 and Oldham.13 Ans. 11. Appellant’s argument
that the Examiner’s “citation to a single piece of prior art” is insufficient (see
Reply Br. 3) is not persuasive because both prior art references describe
tracking codes in a general manner evidencing that they were well-
understood, routine, and conventional. See, e.g., Horowitz ¶ 79; Oldham
¶ 17. The Examiner also finds that the Specification describes the
combination of the computer/computing elements as well-understood,
routine, and conventional. Ans. 12. In particular, the Examiner finds that
“the client device which presents advertisements to the user can be a
personal computer or cellular phone which are known for displaying
webpages including advertisements and using an interface” (id. (citing Spec.
¶¶ 24, 25, 36)) and “the content server is not described as anything other
than a server hosted by a website and providing content to client devices
which is also well-known in the art” (id. (citing Spec. ¶¶ 21, 25, 36)). The
Examiner further finds, and we agree, that Appellant “has not described how
the data network resources/web content server, interface and tracking codes
are not well-understood, routine and conventional computer/computing
elements for performing well-understood, routine and conventional

12 Horowitz et al. (US 2005/0149396 A1; published July 7, 2005)
(“Horowitz”).
13 Oldham et al. (US 2008/0103887 A1; published May 1, 2008)
(“Oldham”).
Appeal 2018-007050
Application 13/466,909

23
functions such as presenting advertisements and tracking online user
activity.” Id. at 11–12.
Moreover, we find that the Specification indisputably shows the
additional elements of claim 21 were well-understood, routine, and
conventional at the time of filing because they are described in a general
manner without additional details that would distinguish them from
conventional components. See, e.g., Spec. ¶¶ 14, 17–18, 21–28, 36, 55,
59–69; see also Berkheimer, 890 F.3d at 1371 (“Relying on the specification
alone may be appropriate where, as in Mayo, the specification admits . . . .”
[that the additional elements were well-understood, routine, and
conventional]). And, as discussed supra, we have determined that claim 21
does not recite a technological improvement to computers, computer
components or software, or network-related infrastructure (including
interfaces and web servers). Accordingly, we agree with the Examiner’s
findings that the additional elements of claim 21 were well-understood,
routine, and conventional. See, e.g., Alice, 573 U.S. at 225–26 (holding that
“implement[ing] the abstract idea . . . on a generic computer” was not
sufficient “to transform an abstract idea into a patent-eligible invention”);
Mortg. Grader, Inc. v. First Choice Loan Servs., Inc., 811 F.3d 1314, 1324–
25 (Fed. Cir. 2016) (noting that components such an “interface,” “network,”
and “database” are generic computer components that do not satisfy the
inventive concept requirement); buySAFE, Inc. v. Google, Inc., 765 F.3d
1350, 1355 (Fed. Cir. 2014) (“That a computer receives and sends the
information over a network—with no further specification—is not even
arguably inventive.”).
Appeal 2018-007050
Application 13/466,909

24
Third, we are not persuaded by Appellant’s argument that the recited
claim elements are not well-understood, routine, and conventional functions
because the Examiner fails to identify a single prior art reference, or
combination of references, that discloses the elements of the claims. See
Appeal Br. 30–31. In that regard, Appellant improperly conflates the
requirements for eligible subject matter (§ 101) with the independent
requirements of novelty (§ 102) and non-obviousness (§ 103). “The
‘novelty’ of any element or steps in a process, or even of the process itself, is
of no relevance in determining whether the subject matter of a claim falls
within the § 101 categories of possibly patentable subject matter.” Diehr,
450 U.S. at 188–89; see also Genetic Techs. Ltd. v. Merial L.L.C., 818 F.3d
1369, 1376 (Fed. Cir. 2016) (stating that, “under the Mayo/Alice framework,
a claim directed to a newly discovered law of nature (or natural phenomenon
or abstract idea) cannot rely on the novelty of that discovery for the
inventive concept necessary for patent eligibility”).
Fourth, we are not persuaded by Appellant’s argument that the claims
are patent eligible under § 101 because they “do not preempt every
application of any abstract idea.” Appeal Br. 31. While preemption may
signal patent ineligible subject matter, the absence of complete preemption
“does not demonstrate patent eligibility. . . . Where a patent’s claims are
deemed only to disclose patent ineligible subject matter under the Mayo
framework, as they are in this case, preemption concerns are fully addressed
and made moot.” Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d
1371, 1379 (Fed. Cir. 2015); see also OIP Techs., Inc. v. Amazon.com, Inc.,
788 F.3d 1359, 1362–63 (Fed. Cir. 2015) (“that the claims do not preempt
Appeal 2018-007050
Application 13/466,909

25
all price optimization or may be limited to price optimization in the e-
commerce setting do not make them any less abstract”).
Accordingly, considering claim 21 as a whole, we determine that the
additional elements recited in claim 21 are readily available computing and
networking elements performing their available basic functions and do not
provide “a specific limitation or combination of limitations that are not well-
understood, routine, conventional activity in the field.” Revised Guidance,
84 Fed. Reg. at 56. Rather, these elements “simply append[] well-
understood, routine, conventional activities previously known to the
industry, specified at a high level of generality.” Id. Accordingly, we find
that claim 21 does not have an inventive concept.
4. Dependent Claims 22–27, 29–33, and 35–38
Appellant argues that the Examiner “erred by failing to explain why
dependent claims 22–27, 29–33, and 35–38 are directed to an abstract idea
and lack features that are ‘significantly more’ than the abstract idea.”
Appeal Br. 32. The Examiner fully addressed this argument in the Answer.
Ans. 12–14. We agree with the Examiner’s findings and conclusions as set
forth in the Answer. Based on the Examiner’s findings and conclusions,
which we adopt as our own, we are not persuaded by Appellant’s argument
with respect to these dependent claims. In particular, our step 2A, prong
one, and step 2A, prong two, analysis of claim 21 is equally applicable to
these dependent claims because the recited limitations of these claims do not
change our determination that the character of the claim, as a whole, is
directed to an abstract idea. And, our step 2B analysis is equally applicable
because “‘well-understood, routine, conventional activities’ previously
Appeal 2018-007050
Application 13/466,909

26
known to the industry” cannot provide an inventive concept. Alice, 573 at
221 (quoting Mayo, 566 U.S. at 79).
5. Conclusion
Because we determine that claim 21 is directed to an abstract idea and
does not contain an inventive concept, we sustain the Examiner’s rejection
of claim 21 under 35 U.S.C. § 101. For the same reasons, we sustain the
Examiner’s rejection under 35 U.S.C. § 101 of independent claims 28 and
34. We also determine, for the reasons discussed above, that dependent
claims 22–27, 29–33, and 35–38 are directed to an abstract idea and do not
contain an inventive concept, and therefore we sustain the Examiner’s
rejection of claims 22–27, 29–33, and 35–38 under § 101.
II. SECTION 103 REJECTION
The dispositive issue raised by Appellant’s arguments with respect to
the rejection of claims 21–38 under § 103(a) is whether the combination of
Latona, Johansson, and Brooks teaches or suggests “presenting . . . the
subscription advertisement to non-subscribers of a fan page” and “presenting
. . . the product advertisement on the fan page for receipt by fan page
subscribers,” as recited in limitations (b) and (e), respectively, of claim 21,
and commensurately recited in claims 28 and 34. See Appeal Br. 33–35;
Reply Br. 12–13.
The Examiner relies on Latona as teaching these limitations. Final
Act. 14, 16 (citing Latona ¶¶ 30–32); Ans. 14–15. In response to
Appellant’s argument that Latona fails to teach these limitations because
Latona “describes presenting first and second advertisements to the same set
of recipients” (Appeal Br. 33), the Examiner finds that “nothing in the claim
describes recognizing the type of user and presenting a particular
Appeal 2018-007050
Application 13/466,909

27
advertisement based on the type of user.” Ans. 14. The Examiner also finds
that based on the Specification’s disclosure that an advertisement can be
made available only to subscribers or to others as well, Latona does not have
to teach “restricting certain users to viewing particular ads” and “[i]f both
ads are presented to recipients, then the requirement of the recipients to view
or be presented with one of those ads is satisfied.” Id. at 14–15 (citing Spec.
¶ 43).
We are persuaded by Appellant’s arguments that the Examiner erred.
First, we agree with Appellant’s argument that the Examiner erred in
interpreting claim 21. Contrary to the Examiner’s finding that nothing in the
claim describes presenting a particular advertisement “based on the type of
user,” the disputed limitations of claim 21 expressly recite presenting
different advertisements to different types of users. Specifically, limitation
(b) recites presenting the subscription advertisement to “non-subscribers of a
fan page,” and limitation (e) recites presenting the product advertisement on
the fan page “for receipt by fan page subscribers.” In addition, we agree
with Appellant’s argument that the Examiner improper broadens the scope
of claim 21 based on the Specification. Ans. 12. Appellant argues that
although the Specification describes some embodiments in which an
advertisement can be made available only to subscribers and other
embodiments in which the advertisement can be made available to others as
well as to subscribers, the pending claims are directed to “a particular
embodiment in which a first online advertisement (i.e., a subscription
advertisement) is presented to a first set of recipients (i.e., non-subscribers of
a fan page) and a second online advertisement (i.e., a product advertisement)
is presented to a second set of recipients (i.e., fan page subscribers).” Reply
Appeal 2018-007050
Application 13/466,909

28
Br. 12. Under these circumstances, we agree with Appellant’s argument
because “[a]lthough claim terms are interpreted in light of the specification,
we do not read limitations from the specification into the claims.” See
Constant v. Advanced Micro-Devices, Inc., 848 F.2d 1560, 1571–72 (Fed.
Cir. 1988), cert. denied, 488 U.S. 892 (1988) (various limitations on which
appellant relied were not stated in the claims; the specification did not
provide evidence indicating these limitations must be read into the claims to
give meaning to the disputed terms); see also In re Am. Acad. Of Sci. Tech
Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004).
Second, we agree with Appellant’s argument that Latona does not
teach the disputed limitations of claim 21 as properly interpreted. Appellant
argues, and we agree, that Latona teaches determining the relative
effectiveness of advertising content by presenting advertisements to the
same user or set of recipients. Appeal Br. 33 (citing Latona ¶¶ 30–33, 46,
47, 80); Reply Br. 12–13; see also Latona ¶ 54. Thus, we also agree with
Appellant’s argument that Latona does not teach or suggest the disputed
limitations that specifically require presenting different advertisements to
different recipients because Latona teaches presenting advertisements to the
same user or set of recipients.
Accordingly, for these reasons, we do not sustain the Examiner’s
rejection of claim 21 under § 103(a). For the same reasons, we do not
sustain the Examiner’s rejection of claims 28 and 34, as well as dependent
claims 22–27, 29–33, and 35–38.

Appeal 2018-007050
Application 13/466,909

29
DECISION
We affirm the Examiner’s rejection of claims 21–38 under 35 U.S.C.
§ 101.
We reverse the Examiner’s rejection of claims 21–38 under 35 U.S.C.
§ 103(a).
Because we affirm at least one ground of rejection with respect to
each claim on appeal, the Examiner’s decision is affirmed. See 37 C.F.R.
§ 41.50(a)(1).
SUMMARY
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
21–38 101 Eligibility 21–38
21–38 103(a) Latona, Johansson,
Brooks
21–38
Overall
Outcome
21–38

TIME PERIOD FOR RESPONSE
No 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