Rodney Hook et al.

Patent Trials and Appeals Board

Jul 29, 2019

13973405 - (D) (P.T.A.B. Jul. 29, 2019)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/973,405 08/22/2013 Rodney HOOK MED6-009/01US
318298-2018
7165
58249 7590 07/29/2019
COOLEY LLP
ATTN: IP Docketing Department
1299 Pennsylvania Avenue, NW
Suite 700
Washington, DC 20004
EXAMINER
RETTA, YEHDEGA
ART UNIT PAPER NUMBER
3688
NOTIFICATION DATE DELIVERY MODE
07/29/2019 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
zIPPatentDocketingMailboxUS@cooley.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte RODNEY HOOK, TOMMY YIWEL MEI, and
STANLEY KUBASEK
____________

Appeal 2017-009457
Application 13/973,4051
Technology Center 3600
____________

Before BRUCE T. WIEDER, TARA L. HUTCHINGS, and
ROBERT J. SILVERMAN, Administrative Patent Judges.

WIEDER, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from the
Examiner’s final rejection of claims 1, 2, 5–13, 15, 16, 18, 19, 21–25, and
27–36. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

CLAIMED SUBJECT MATTER
Appellants’ invention relates to on demand advertisement placement
and inhibiting advertisement collisions. (Spec. ¶¶ 1001–02.)

1 According to Appellants, the real party in interest is dstillery, Inc. (Appeal
Br. 3.)
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Claims 1, 15, and 19 are the independent claims on appeal. Claim 1 is
illustrative. It recites:
1. A non-transitory processor-readable medium storing code
representing instructions to be executed by a processor, the code
comprising code to cause the processor to:
receive, at a first time and from a first advertisement
device, a request for permission to serve a first advertisement to
a first display device, the request from the first advertisement
device including an indication of a first advertiser;
set a lock indicator to an active state in response to the
request from the first advertisement device;
send, to the first advertisement device, approval to serve
the first advertisement such that the first advertisement device
serves the first advertisement to the first display device;
receive, at a second time after the first time and from a
second advertisement device, a request for permission to serve a
second advertisement to a second display device, the request
from the second advertisement device including an indication of
a second advertiser; and
decline to send, to the second advertisement device,
approval to serve the second advertisement when the lock
indicator is in the active state.

REJECTIONS2,3
Claims 29–31 are rejected under 35 U.S.C. § 112(a) or 35 U.S.C.
§ 112, first paragraph (pre-AIA), as failing to comply with the written
description requirement.

2 The rejection of claim 35 under 35 U.S.C. § 112(d) or 35 U.S.C. § 112,
fourth paragraph (pre-AIA), was withdrawn. (See Answer 7.)
3 Appellants filed a provisional application on September 6, 2012 (US App.
61/697,529). The non-provisional application that is the subject of this
appeal was filed on August 22, 2013. The Examiner declined to afford
Appellants the priority date of the provisional application. (Final Action 2–
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Claims 29–31 are rejected under 35 U.S.C. § 112(b) or 35 U.S.C.
§ 112, second paragraph (pre-AIA), as indefinite for failing to particularly
point out and distinctly claim the subject matter applicants regard as the
invention.
Claims 1, 2, 5–13, 15, 16, 18, 19, 21–25, and 27–36 are rejected under
35 U.S.C. § 101 as directed to a judicial exception without significantly
more.
Claims 1, 2, 5–13, 15, 16, 18, 19, 21–23, 25, 27, 28, and 32–36 are
rejected under 35 U.S.C. § 103(a) as unpatentable over Karassner
(US 2009/0265243 A1, pub. Oct. 22, 2009) and Brouhard
(US 2012/0022930 A1, pub. Jan. 26, 2012).
Claim 24 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Karassner, Brouhard, and Brush (US 2009/0254614 A1, pub. Oct. 8, 2009).

3.) In this appeal, Appellants seek to be afforded the priority date under
35 U.S.C. § 119(e)(1). (Appeal Br. 34–35.) Appellants do not directly or
indirectly connect this with the merits of any issues involving rejections of
claims. (See id.)
“Congress intended to differentiate between whatever requirements
and objections an examiner might make on the one hand, and matters
involving actual rejections of claims on the other, at least insofar as its
provision of statutory rights of appeal to the board accruing from such
actions in and of themselves.” In re Hengehold, 440 F.2d 1395, 1403
(CCPA 1971); see also In re Searles, 422 F.2d 431, 435 (CCPA 1970).
“[T]he kind of adverse decisions of examiners which are reviewable by the
board must be those which relate, at least indirectly, to matters involving the
rejection of claims.” In re Hengehold, 440 F.2d at 1404; see also MPEP
§ 1201. Under these facts, Appellants have recited a petitionable, rather than
an appealable, matter.
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Claims 29–31 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Karassner, Brouhard, and Collins (US 2007/0027771 A1, pub.
Feb. 1, 2007).

ANALYSIS
The § 112(a)/§ 112, first paragraph, rejections
The Examiner finds that claims 29–31 “contain[] subject matter which
was not described in the specification in such a way as to reasonably convey
to one skilled in the relevant art that . . . the inventors, at the time the
application was filed, had possession of the claimed invention.” (Final
Action 3.) Each of claims 29–31 depend from claim 1.
Claim 29, which was added by amendment, recites, in relevant part,
“the lock indicator is configured to expire after the first advertisement device
and the second advertisement device have had an opportunity to exchange
data associated with which advertisements have been served to which user
devices.” (Emphasis added.)
Appellants argue that paragraph 1042 of the Specification supports
this limitation. (Appeal Br. 18–19.) Specifically, Appellants argue that the
necessary support is found in the disclosure “that ‘locks can be configured to
expire after the first advertisement device 130 and the second advertisement
device 140 have had an opportunity to synch tracking cookies.’” (Id. at 19,
quoting claim 29.) Appellants argue that this “fully supports the claim
language of claims 29-31.” (Id.)
With regard to claim 29, the Examiner answers that “[c]ookie
synchronization or cookie synching (cookie matching) is understood to be a
practice of tracking domains to pass information associated with a user,
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amongst each other (sharing of cookie values). However Appellant’s [sic]
specification does not disclose what information is exchanged or what
information is collected by the cookie.” (Answer 6.)
We do not find Appellants’ argument persuasive of error.
Specifically, Appellants do not explain why the Examiner’s finding that the
“specification does not disclose what information is exchanged or what
information is collected by the cookie” (Answer 6), is in error. Nor do
Appellants sufficiently explain why the disclosure of synchronization of
tracking cookies in paragraph 1042 was “sufficient to allow persons of
ordinary skill in the art to recognize that the inventor[s] invented the subject
matter that is claimed,” i.e., the “exchange [of] data associated with which
advertisements have been served to which user devices.” See
Commonwealth Sci. and Indus. Research Org. v. Buffalo Tech. (USA), Inc.,
542 F.3d 1363, 1379 (Fed. Cir. 2008); see also claim 29. Therefore, we will
affirm the rejection of claim 29 under § 112, first paragraph.
With regard to claims 30 and 31, we will reverse this rejection for the
reasons discussed below with regard to the § 112(b)/§ 112, second
paragraph, rejection of these claims. In particular, we agree with the
Examiner that claims 30 and 31 are indefinite. In this case, due to the
indefiniteness, we are unable to construe the claims. Because of this, we
find that the rejection of claims 30 and 31 under § 112(a)/§ 112, first
paragraph, was necessarily based on speculative assumptions as to the
meaning of the claims. See In re Steele, 305 F.2d 859, 862–63 (CCPA
1962).

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The § 112(b)/§ 112, second paragraph, rejections
The Examiner determines that claim 29 is indefinite because
it is unclear as to whether the claim refers to the prior recited first
advertisement and second advertisement or different
advertisements found outside of the scope of the claim. Further
claim 29 is indefinite as it is not clear as to whether the claim
refers to the prior recited first display device or second display
device or some different device outside of the scope of the claim.

(Final Action 4.)
Appellants argue “that the scope of the claim language is clear when
interpreted in view of the specification, particularly paragraph [1042].”
(Appeal Br. 19.) We disagree.
Claim 29, as discussed above, recites that “the lock indicator is
configured to expire after the . . . advertisement device[s] have had an
opportunity to exchange data associated with which advertisements have
been served to which user devices.” But it is not clear how far back this
extends, i.e., where does one draw the line as to the advertisements that have
been served? Does one meet the claim limitation by exchanging information
regarding the last 20 advertisements that were served? The last 2
advertisements that were served? Advertisements served in the last 24
hours?
The Federal Circuit has stated that
when the USPTO has initially issued a well-grounded rejection
that identifies ways in which language in a claim is ambiguous,
vague, incoherent, opaque, or otherwise unclear in describing
and defining the claimed invention, and thereafter the applicant
fails to provide a satisfactory response, the USPTO can properly
reject the claim as failing to meet the statutory requirements of
§ 112(b).

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In re Packard, 751 F.3d 1307, 1311 (Fed. Cir. 2014). In this case, the
Examiner presents a well-grounded rejection identifying why this claim
language is unclear in this context. Appellants have not persuaded us that
the Examiner erred in rejecting claim 29.
Claim 30 recites, in relevant part, “a time period between the first time
and the second time is such that the first advertisement device and the
second advertisement device are unable to coordinate within the time
period.” (Emphasis added.) Claim 31 recites, in relevant part, “the first
advertisement device and the second advertisement device are, during a time
period between the first time and the second time, uncoordinated members
of a common advertising network, such that the first advertisement and the
second advertisement are selected based on parameters associated with a
common advertising campaign.” (Emphasis added.)
The Examiner determines that claims “30 and 31 contain the
limitation ‘... advertisement device(s) are unable to coordinate...’ and
‘uncoordinated members of a ... network’. The claims are indefinite as it is
not possible for the Examiner to interpret the meaning of the claim in light
of the specification.” (Final Action 4.)
Appellants again argue “that the scope of the claim language is clear
when interpreted in view of the specification, particularly paragraph [1042].”
(Appeal Br. 19.) Again, we disagree.
Paragraph 1042 does not recite “coordinate” or “uncoordinated,” or
otherwise explain how we should construe these claim terms. (See Spec.
¶ 1042.) Nor do Appellants explain what language in paragraph 1042
informs us how the terms should be interpreted. In short, we are left to
speculate as to how these terms should be construed in these claims. Once
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again, the Examiner presents a well-grounded rejection identifying why this
claim language is unclear in this context. Appellants have not persuaded us
that the Examiner erred in rejecting claims 30 and 31.

The § 101 rejections
Claims 1, 2, 5–13, and 32–34
“Whoever invents or discovers any new and useful process, machine,
manufacture, or composition of matter, or any new and useful improvement
thereof, may obtain a patent therefor, subject to the conditions and
requirements of this title.” 35 U.S.C. § 101. Section 101, however,
“‘contains an important implicit exception: Laws of nature, natural
phenomena, and abstract ideas are not patentable.’” Alice Corp. Pty. Ltd. v.
CLS Bank Int’l, 573 U.S. 208, 216 (2014) (quoting Assoc. for Molecular
Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 589 (2013)).
Alice applies a two-step framework, earlier set out 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, 573 U.S. at 217.
Under the two-step framework, it must first be determined if “the
claims at issue are directed to a patent-ineligible concept.” Id. at 218. If the
claims are determined to be directed to a patent-ineligible concept, e.g., an
abstract idea, then the second step of the framework is applied to determine
if “the elements of the claim . . . contain[] an ‘inventive concept’ sufficient
to ‘transform’ the claimed abstract idea into a patent-eligible application.”
Id. at 221 (citing Mayo, 566 U.S. at 72–73, 79).
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With regard to step one of the Alice framework, we apply a “directed
to” two prong test to: 1) evaluate whether the claim recites a judicial
exception, and 2) if the claim recites a judicial exception, evaluate whether
the claim “appl[ies], rel[ies] on, or use[s] the judicial exception in a manner
that imposes a meaningful limit on the judicial exception, such that the claim
is more than a drafting effort designed to monopolize the judicial
exception.” See USPTO, 2019 Revised Patent Subject Matter Eligibility
Guidance, 84 Fed. Reg. 50, 54 (Jan. 7, 2019) (hereinafter “2019 Guidance”).
Here, the Examiner determines that “[t]he claims are directed to an
abstract idea: the coordinating of human activity and the fundamental
business practice of marketing.” (Final Action 5.) Specifically, the
Examiner determines that “[c]laim 1 is directed to the approval and
prevention of advertisement display. Claims 15 and 19 are directed to
participation in auctions for ad display.” (Id.) The Examiner also
determines that
[r]eceiving a request, setting an indicator to active state, sending
approval and/or declining to send approval for a second request,
receiving an invitation, sending a request to bid, receiving a
response, sending a signal; requesting permission, are steps
which are considered to be “An idea of itself” (that can be
performed in the human mind or by using pen and paper).

(Answer 2.)
Appellants argue that “consulting a mediator device that could affect a
lock was unconventional and unknown in both the field of Internet
advertising and the field of conventional advertising.” (Appeal Br. 25; see
also id. at 32–33.) Appellants further argue that “by distributing the power
to approve or deny permission to serve an advertisement to a mediator
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device, the claims here represent a patent-eligible technological solution to a
technological problem.” (Reply Br. 4.)
Under step one of the Alice framework, we “look at the ‘focus of the
claimed advance over the prior art’ to determine if the claim’s ‘character as a
whole’ is directed to excluded subject matter.” Affinity Labs of Texas, LLC
v. DIRECTV, LLC, 838 F.3d 1253, 1257 (Fed. Cir. 2016) (quoting Elec.
Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016)).
The “directed to” inquiry . . . cannot simply ask whether the
claims involve a patent-ineligible concept, because essentially
every routinely patent-eligible claim involving physical products
and actions involves a law of nature and/or natural phenomenon
. . . . Rather, 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.” Internet Patents Corp. v. Active Network, Inc.,
790 F.3d 1343, 1346 (Fed. Cir. 2015).

Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016). In
other words, the first step of the Alice framework “asks whether the focus of
the claims is on the specific asserted improvement in [the relevant
technology] or, instead, on a process that qualifies as an ‘abstract idea’ for
which computers are invoked merely as a tool.” Id. at 1335–36; see also
2019 Guidance at 54–55.
The Specification provides evidence as to what the claimed invention
is directed. In this case, the Specification discloses that the invention relates
to on demand advertisement placement and inhibiting advertisement
collisions. (Spec. ¶¶ 1001–02.) Claim 1 provides further evidence. Claim 1
recites “code to cause the processor to: receive . . . a request for permission
to serve a first advertisement to a first display device,” “set a lock indicator
to an active state in response to the request,” “send . . . approval to serve the
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first advertisement,” “receive . . . a request for permission to serve a second
advertisement,” “and decline to send . . . approval to serve the second
advertisement when the lock indicator is in the active state.” (See Claim 1;
see also Answer 2.)
In other words, claim 1 is directed to the abstract idea of certain
methods of organizing human activity, i.e., commercial interactions, and in
particular, advertising and marketing; in short, determining whether to
approve serving an advertisement. Cf. Affinity Labs of Texas, LLC v.
Amazon.com Inc., 838 F.3d 1266, 1271 (Fed. Cir. 2016) (“[T]ailoring of
content based on information about the user––such as where the user lives or
what time of day the user view the content––is an abstract idea that is as old
as providing different newspaper inserts for different neighborhoods.”)
(citing Intellectual Ventures I LLC v. Capital One Bank (USA), 792 F.3d
1363, 1369 (Fed. Cir. 2015)). This is accomplished by receiving data,
setting an indicator, sending data, receiving and analyzing additional data,
and declining to send a response based on the analysis and indicator setting.
Although we and the Examiner describe, at different levels of
abstraction, to what the claims are directed, it is recognized that “[a]n
abstract idea can generally be described at different levels of abstraction.”
Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1240 (Fed. Cir. 2016). That
need not and, in this case does not, “impact the patentability analysis” of
claim 1. See id. at 1241.
We do not see how the recitation of a generic “non-transitory
processor-readable medium” or even a generic processor or “advertising
device” (see, e.g., Spec. ¶¶ 1024, 1025, 1029, 1072), even in conjunction
with the recited functions, “ensure[s] ‘that the [claim] is more than a drafting
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effort designed to monopolize the [abstract idea].” Alice, 573 U.S. at 221
(brackets in original) (quoting Mayo, 566 U.S. at 77.) Moreover, the
limitations of claim 1 do not recite implementation details. Instead, they
recite functional results to be achieved. In other words, claim 1 does not
recite “a particular way of programming or designing the software . . . , but
instead merely claim[s] the resulting [method].” Apple, Inc., 842 F.3d at
1241. “Indeed, the claim language here provides only a result-oriented
solution, with insufficient detail for how a computer accomplishes it. Our
law demands more.” Intellectual Ventures I LLC v. Capital One Fin. Corp.,
850 F.3d 1332, 1342 (Fed. Cir. 2017). And “the recited physical
components merely provide a generic environment in which to carry out the
abstract idea.” In re TLI Commc’ns LLC Patent Litig., 823 F.3d 607, 611
(Fed. Cir. 2016).
“[W]e have treated collecting information, including when limited to
particular content (which does not change its character as information), as
within the realm of abstract ideas.” Elec. Power Grp., 830 F.3d at 1353. “In
a similar vein, we have treated 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.” Id. at 1354.
We agree with the Examiner that the limitations recited in claim 1 “can be
performed in the human mind or by using pen and paper.” See Answer 2.
“But relying on a computer to perform routine tasks more quickly or more
accurately is insufficient to render a claim patent eligible.” OIP Techs., Inc.
v. Amazon.com, Inc., 788 F.3d 1359, 1363 (Fed. Cir. 2015). Moreover,
“[h]ere, the claims are clearly focused on the combination of those abstract-
idea processes.” Elec. Power Grp., 830 F.3d at 1354; see also Content
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Extraction and Transmission LLC v. Wells Fargo Bank, Nat’l Ass’n, 776
F.3d 1343, 1347 (Fed. Cir. 2014) (determining claims directed to collecting,
recognizing, and storing data in a computer memory to be directed to an
abstract idea).
Appellants seek to analogize claim 1 to the claims in Amdocs (Israel)
Limited v. Openet Telecom, Inc., 841 F.3d 1288 (Fed. Cir. 2016). (Reply
Br. 3–4.) Specifically, Appellants argue that “[t]he distributed nature of
advertising devices, real-time bidding devices (RTBs), mediator devices,
and/or programmatic buying platforms (PBPs) as described in the
Specification represents a technical problem similar to that presented in
Amdocs[].” (Id. at 4 (footnote omitted).)
We disagree. In relevant part, claim 1 of Amdocs recites “computer
code for using the accounting information with which the first network
accounting record is correlated to enhance the first network accounting
record.” Amdocs, 841 F.3d at 1299 (emphasis added). In an earlier opinion,
Amdocs (Israel) Limited v. Openet Telecom, Inc., 761 F.3d 1329 (Fed. Cir.
2014) (Amdocs I), the court had “construed ‘enhance’ as meaning ‘to apply a
number of field enhancements in a distributed fashion.’ [Amdocs I] at 1340.
We took care to note how the district court explained that ‘[i]n this context,
“distributed” means that the network usage records are processed close to
their sources before being transmitted to a centralized manager.’ [Amdocs I]
at 1338.” Amdocs, 841 F.3d at 1300.
In view of the above claim interpretation, the Federal Circuit
determined that “[t]he solution requires arguably generic components . . . .
However, the claim’s enhancing limitation necessarily requires that these
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generic components operate in an unconventional manner to achieve an
improvement in computer functionality.” Id. at 1300–01.
Here, Appellants do not persuasively argue how the processor, or
advertisement devices, operate in an unconventional manner to improve
computer functionality.
Appellants also seek to analogize claim 1 to the claims in DDR
Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014). (Reply
Br. 4.) Appellants argue that “by distributing the power to approve or deny
permission to serve an advertisement to a mediator device, the claims here
represent a patent-eligible technological solution to a technological
problem.” (Id.)
The claims in DDR Holdings “specify how interactions with the
Internet are manipulated to yield a desired result –– a result that overrides
the routine and conventional sequence of events ordinarily triggered by the
click of a hyperlink.” Id. As an initial matter, we note that claim 1 not only
does not specify interactions with the Internet, it is silent as to how the
processor and advertisement devices communicate. Claim 1 recites a
processor that receives an inquiry/request and sends a response, and then
receives another inquiry/request. Appellants do not persuasively argue how
this overrides the routine and conventional sequence of events ordinarily
triggered by receipt of such an inquiry/request.
In view of the above, we agree with the Examiner that claim 1 is
directed to an abstract idea.
Step two of the Alice framework has been described “as a search for
an ‘“inventive concept”’ –i.e., an element or combination of elements that is
‘sufficient to ensure that the patent in practice amounts to significantly more
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than a patent upon the [ineligible concept] itself.’” Alice, 573 U.S. at 217–
18 (citing Mayo, 566 U.S. at 72–73).
Appellants argue that “claim 1 includes specific recitations other than
what is conventional in the field and represents a solution that improves
another technology or technical field.” (Appeal Br. 29.) In particular,
Appellants argue that “setting a lock indicator and declining to send
approval based on the lock indicator was unconventional and unknown,” and
that “[t]he recitations of claim 1 relate to improving Internet-based
advertisement delivery.” (Appeal Br. 30.) We do not find Appellants’
argument persuasive.
Appellants’ arguments rely on the ineligible concept itself to establish
that the claims recite an inventive concept. But “[i]t 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.” BSG Tech LLC v.
BuySeasons, Inc., 899 F.3d 1281, 1290 (Fed. Cir. 2018). The asserted
improvement is to methods of organizing human activity, rather than to an
improvement in, e.g., computer technology itself.
Appellants also argue that “claim 1 is allowable for reasons similar to
those presented in the in the [sic] analysis of example 21 of Appendix 1 of
the USPTO July 2015 Update on Subject Matter Eligibility.”4 (Appeal
Br. 30.) We do not find Appellants’ argument persuasive.

4 See July 2015 Update: Subject Matter Eligibility (July 2015) (available at
https://www.uspto.gov/sites/default/files/documents/ieg-july-2015-
update.pdf); see also July 2015 Update Appendix 1: Examples (July 2015)
(available at https://www.uspto.gov/sites/default/files/documents/ieg-july-
2015-app1.pdf) (“Update Appendix”).
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As an initial matter, we note that the Update simply presents
hypothetical examples. (See Update Appendix 1.) Also, claim 2 in
Example 21 recites “[a] method of distributing stock quotes over a network
to a remote subscriber computer” including the steps of
transmit[ting] the formatted stock quote alert over a
wireless communication channel to a wireless device associated
with a subscriber based upon the destination address and
transmission schedule,
wherein the alert activates the stock viewer application to
cause the stock quote alert to display on the remote subscriber
computer and to enable connection via the URL to the data
source over the Internet when the wireless device is locally
connected to the remote subscriber computer and the remote
subscriber computer comes online.

(Id. at 3.) The Update Appendix explains that
[t]he claimed invention addresses the Internet‐centric challenge
of alerting a subscriber with time sensitive information when the
subscriber’s computer is offline. This is addressed by
transmitting the alert over a wireless communication channel to
activate the stock viewer application, which causes the alert to
display and enables the connection of the remote subscriber
computer to the data source over the Internet when the remote
subscriber computer comes online.

(Id. at 4.)
Claim 1 in Example 21 is similar to claim 2 except that Claim 1 lacks
the stock viewer application; and, thus, does not address “the Internet-centric
challenge of alerting a subscriber . . . when the subscriber’s computer is
offline” or “enable[] the connection of the remote subscriber computer to the
data source over the Internet when the remote subscriber computer comes
online.” Claim 1 in Example 21 is described as patent ineligible. (Id. at 3–
4.) Appellants do not persuasively argue why code to cause a processor to
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receive a request, set a lock indicator, send approval, receive a request, and
decline to send approval when the lock indicator is active, is analogous to
addressing “the Internet-centric challenge of alerting a subscriber . . . when
the subscriber’s computer is offline” and, in particular, “enables the
connection of the remote subscriber computer to the data source over the
Internet when the remote subscriber computer comes online.” (See id. at 4.)
Nor do Appellants persuasively argue why Appellants’ claim 1 is
analogous to claim 2 in Example 21, but not analogous to claim 1 in
Example 21.
Taking the claim elements separately, the functions performed by the
generic “non-transitory processor-readable medium,” generic “processor,”
and “advertising device[s]” are purely conventional. Receiving, analyzing,
and sending data are basic computer functions, i.e., they are well-
understood, routine, and conventional functions previously known to the
industry. See Elec. Power Grp., 830 F.3d at 1356 (The claims “do not
include any requirement for performing the claimed functions of gathering,
analyzing, and displaying in real time by use of anything but entirely
conventional, generic technology. The claims therefore do not state an
arguably inventive concept . . . .”); see also In re Katz Interactive Call
Processing Patent Litig., 639 F.3d 1303, 1316 (Fed. Cir. 2011) (“Absent a
possible narrower construction of the terms ‘processing,’ ‘receiving,’ and
‘storing,’ . . . those functions can be achieved by any general purpose
computer without special programming.”).
Considered as an ordered combination, the generic components of
Appellants’ method add nothing that is not already present when the
limitations are considered separately. For example, claim 1 does not, as
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discussed above, purport to improve the functioning of the processor or
other components. Nor does it effect an improvement in any other
technology or technical field. Instead, claim 1 amounts to nothing
significantly more than an instruction to apply the abstract idea using generic
computer components performing routine computer functions. That is not
enough to transform an abstract idea into a patent-eligible invention. See
Alice, 573 U.S. at 225–26. Claims 2, 5–13, and 32–34 depend from claim 1
and are not separately argued. They fall with claim 1. See 37 C.F.R.
§ 41.37(c)(1)(iv).

Claims 27 and 28
Appellants separately argue the eligibility of claims 27 and 28, which
both depend from claim 1. Claim 27 recites, in relevant part, “wherein the
code . . . includes code to cause the processor to send approval for the first
advertisement device to submit a bid to have the first advertisement served
to the first display device.” Claim 28 recites, in relevant part, “wherein the
code . . . includes code to cause the processor to send approval for the first
advertisement device such that the first advertisement device serves the first
advertisement to the first display device after the first advertisement device
wins an auction.”
The Examiner determines that “[d]ependent claims 2, 5-13, 16, 18,
21-25 and 27-36 fail to correct the deficiencies inherited from the
independent claim[s].” (Final Action 6.)
With regard to claim 27, Appellants argue that “the Examiner has
conflated claim recitations related to approval to bid and bidding” and that
the claim “makes the distinction between approval to bid and bidding
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explicit.” (Appeal Br. 31.) Appellants make a similar argument with regard
to claim 28. We do not find the arguments persuasive.
Appellants’ argument relies on the ineligible concept itself to establish
that the claims recite an inventive concept. But, as discussed above, “[i]t 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.” BSG Tech LLC,
899 F.3d at 1290. Appellants do not explain why the asserted improvement
is to, e.g., computer technology itself, rather than methods of organizing
human activity.

Claim 29-31
Claims 29–31 depend from claim 1. Appellants separately argue the
eligibility of claims 29–31. However, to the extent Appellants repeat the
arguments set forth regarding claim 1, we do not find the arguments
persuasive for the reasons already discussed.
Appellants additionally argue that “[t]he recitations in claim [sic] 29-
31 explicitly state that the advertising devices are members of a common
advertising network, providing further basis for patent eligibility.” (Appeal
Br. 32.) We do not find this argument persuasive. Appellants do not
sufficiently explain why devices being members of a common advertising
network is not simply an argument relying on the ineligible concept itself to
try to establish that the claims recite an inventive concept. See BSG Tech
LLC, 899 F.3d at 1290.
Appellants also argue that “[b]y consulting a mediator device via a
separate channel, however, claim 39-31 [sic] represent an improvement to
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another field, Internet-advertising, that is unconventional in both the pre-
and post-Internet advertising fields.” (Appeal Br. 32.) We do not find this
argument persuasive as none of claims 29–31 recites consulting a mediator
device.
However, as discussed above with regard to the rejection of claims 30
and 31 under § 112(b)/§ 112, second paragraph, claims 30 and 31 are
indefinite as we are unable to interpret, in the context of the claims, the
terms “device[s] are unable to coordinate,” and “uncoordinated members of
a . . . network.” Because we are unable to interpret the claims, the rejection
under § 101 is necessarily based on speculative assumptions about the
meaning of the claims. See In re Steele, 305 F.2d at 862–63. Therefore, we
will not sustain the rejection of claims 30 and 31 under § 101. It must be
understood, however, that our decision regarding this rejection of claims 30
and 31 is based solely on the ambiguity and indefiniteness of the claims.

Claims 15 and 35
Independent claim 15 is separately argued. Claim 15 recites:
15. A non-transitory processor-readable medium storing code
representing instructions to be executed by a processor, the code
comprising code to cause the processor to:
receive, from a real-time bidding device, an invitation to
participate in an auction for an ad space;
send, to a mediator device, a request to bid a first
advertisement in response to receiving the invitation, the request
to bid the first advertisement associated with an advertiser such
that the mediator device defines a lock indicator in response to
the request to bid that prevents a display device from being
served a second advertisement associated with the advertiser
when the lock indicator is in an active state; and
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receive, from the mediator device, a response to the
request to bid, the response including an indication of approval
to bid.

Like claim 1, claim 15 is directed to the abstract idea of certain
methods of organizing human activity, i.e., commercial interactions, and in
particular, advertising and marketing; in short, determining whether to
approve serving an advertisement. (See supra.) This is accomplished by
receiving data, sending data and setting an indicator, and receiving
additional data.
For the reasons discussed above, we agree with the Examiner that
claim 15 is directed to an abstract idea.
As also discussed above, step two of the Alice framework has been
described “as a search for an ‘“inventive concept”’ –i.e., an element or
combination of elements that is ‘sufficient to ensure that the patent in
practice amounts to significantly more than a patent upon the [ineligible
concept] itself.’” Alice, 573 U.S. at 217–18 (citing Mayo, 566 U.S. at 72–
73). “The second step of the Alice test is satisfied when the claim limitations
‘involve more than performance of “well-understood, routine [and]
conventional activities previously known to the industry.”’ Content
Extraction, 776 F.3d at 1347–48 (quoting Alice, [573 U.S. at 225].”
Berkheimer v. HP Inc., 881 F.3d 1360, 1367 (Fed. Cir. 2018); see also 2019
Guidance at 56.
The Examiner determines that “using a computers [sic] (bidding
devices, mediator devices) for receiving, setting indicator to active or
inactive, sending approval or denial, declining, searching database, verifying
for bidding and serving ads does not transform an otherwise abstract idea
into patentable-eligible subject matter.” (Answer 3.)
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Appellants disagree and, as noted above, argue that “consulting a
mediator device that could affect a lock was unconventional and unknown in
both the field of Internet advertising and the field of conventional
advertising.” (Appeal Br. 25.) But this is an argument that the abstract idea
provides the inventive concept. However, it is well established that [i]f a
claim’s only ‘inventive concept’ is the application of an abstract idea using
conventional and well-understood techniques, the claim has not been
transformed into a patent-eligible application of an abstract idea.” BSG Tech
LLC, 899 F.3d at 1290–91.
“The question of whether a claim element or combination of elements
is well-understood, routine and conventional to a skilled artisan in the
relevant field is a question of fact.” Berkheimer, 881 F.3d at 1368. Here,
the question is whether the steps of receiving data, sending data and setting
an indicator, and receiving additional data, were well-understood, routine
and conventional. And as discussed above, we determine that these steps
recite basic computer functions. See supra; see also Elec. Power Grp., 830
F.3d at 1356; In re Katz Interactive Call Processing Patent Litig., 639 F.3d
at 1316.
Appellants also argue that “[t]he recitation in claim 15 of a mediator
device that is operable to set a lock indicator introduces an alternate
communication channel. Rather than submitting a bid in response to an
invitation, a bidder (e.g., a real-time bidding device) queries a mediator
device via an alternate channel.” (Appeal Br. 26.)
We do not find this argument persuasive. The limitations of claim 15
do not recite implementation details. Claim 15 does not recite “a particular
way of programming or designing the software . . . , but instead merely
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claim[s] the resulting [method].” Apple, Inc., 842 F.3d at 1241. In
particular, claim 15 does not recite “an alternate communication channel.”
Nor does claim 15 recite a particular way in which communication to the
mediator device is accomplished.
Appellants also argue that claim 15 “relates to an improvement to
another technology or technical field.” (Appeal Br. 27 (emphasis omitted).)
However, Appellants do not persuasively argue what technology or technical
field is allegedly improved. At best, Appellants argue that the claim
improves advertising. But even if the claimed techniques are “[g]round-
breaking, innovative, or even brilliant,” that is not enough for patent
eligibility. Ass’n for Molecular Pathology, 569 U.S. at 591.
Appellants also argue that they are “not seeking to monopolize a
fundamental truth.” (Appeal Br. 27.) We do not find this argument
persuasive. “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).
In other words, “preemption may signal patent ineligible subject matter,
[but] the absence of complete preemption does not demonstrate patent
eligibility.” Id.
Therefore, we are not persuaded that the Examiner erred in rejecting
claim 15 under § 101. Claim 35 depends from claim 15 and is not separately
argued. It falls with claim 15. See 37 C.F.R. § 41.37(c)(1)(iv).

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Claim 16
Claim 16 depends from claim 15 and recites “the code further
comprising code to cause the processor to: verify, in response to receiving
the request from the second advertisement device, that the lock indicator is
associated with the category of advertiser.”
Appellants argue that “[c]laim 16 makes explicit the distinction
between bidding and requesting permission to bid, which are separate
recitations that collectively improves the technical field of Internet-based
real-time bidding.” (Appeal Br. 28.)
We do not find this argument persuasive. This is an argument that the
abstract idea provides the inventive concept. However, as discussed above,
it is well established that [i]f a claim’s only ‘inventive concept’ is the
application of an abstract idea using conventional and well-understood
techniques, the claim has not been transformed into a patent-eligible
application of an abstract idea.” BSG Tech LLC, 899 F.3d at 1290–91.
Moreover, the added limitation of claim 16 does not recite implementation
details. It does not recite “a particular way of programming or designing the
software . . . , but instead merely claim[s] the resulting [method].” Apple,
Inc., 842 F.3d at 1241.
Therefore, we are not persuaded that the Examiner erred in rejecting
claim 16 under § 101.

Claims 19, 21–25, and 36
Independent claim 19 is separately argued. It recites:
19. A non-transitory processor-readable medium storing code
representing instructions to be executed by a processor, the code
comprising code to cause the processor to:
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receive, from a first display device, a request to be served
a first advertisement to fill an ad space;
receive, from a programmatic buying platform, a signal
representing a bid for the ad space, the bid associated with an
advertiser;
request permission from a mediator device to serve the
first advertisement, the request including an indication of the
advertiser;
receive an indicator of approval to serve the first
advertisement such that a second display device is prevented
from being served a second advertisement associated with the
advertiser, the second display device being different from the
first display device; and
redirect the first display device to the programmatic
buying platform after receiving the indicator of approval such
that the first display device is served the first advertisement from
the programmatic buying platform.

Like claim 1, claim 19 is directed to the abstract idea of certain
methods of organizing human activity, i.e., commercial interactions, and in
particular, advertising and marketing; in short, determining whether to
approve serving an advertisement. (See supra.) This is accomplished by
receiving data, sending data and setting an indicator, and receiving
additional data.
For the reasons discussed above, we agree with the Examiner that
claim 19 is directed to an abstract idea.
Appellants argue that “the presence of a mediator device in claim 19
demonstrates that the claimed subject matter represents a solution that only
exists in the context of the Internet and particular to a real-time bidding
environment within the Internet.” (Appeal Br. 33.) We disagree.
The mediator device in claim 19 performs no function. Claim 19
recites “request permission from a mediator device to serve the first
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advertisement,” i.e., the program code executed by the processor simply
sends a request. The claim does not recite that the mediator device must
receive the request or that the mediator device responds to the request.
Although claim 19 recites “receiv[ing] an indicator of approval to serve the
first advertisement,” the claim is silent as to the source of that approval. We
decline to read into claim 19 that the indicator of approval must be received
from the mediator device.
Therefore, for the reasons discussed above, and with regard to
claim 1, we are not persuaded that the Examiner erred in rejecting claim 19
under § 101. Claims 21–25 and 36 depend from claim 19 and are not
separately argued. They fall with claim 19. See 37 C.F.R. § 41.37(c)(1)(iv).

The § 103(a) rejections
Claims 1, 2, 5–13, 19, 21–25, 27–34, and 36
The Examiner finds that Karassner discloses:
receive, at a first time and from a first advertisement device, a
request for permission to serve a first advertisement to a first
display device, the request from the first advertisement device
including an indication of a first advertiser (see at least ¶0122-
123. A user’s browser (first display device) activates a billboard
module of an advertiser. The module sends request [sic] to serve
an ad. ¶0112-113. A real time auction is occurs [sic] amongst
several advertisers. The winning bidder is granted the right to
serve the ad).

(Final Action 6–7.) The Examiner also determines that
Karassner teaches a billboard module communicating with a
dispatcher server 126 ....and the relevant keywords and other
information relating the ad space 5 is provided from the billboard
module to conduct a real-time auction to select an ad for display
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... once the auction is conducted an ad is selected, retrieved and
displayed at the ad space 5 (see [0119]).

(Answer 4.) In short, the Examiner determines that the disclosure in
Karassner of a bid to serve an advertisement, i.e., the receipt of a bid to serve
an advertisement, teaches the claim limitation of “receive . . . a request for
permission to serve a first advertisement.”
Appellants disagree and argue that “the references of record fail to
disclose or suggest ‘receiving a request for permission to serve an
advertisement.’” (Reply Br. 6.) In particular, Appellants argue that the cited
portions of Karassner “only disclos[e] that the advertiser computer 2 is
capable of bidding and/or serving an advertisement – not that the advertiser
computer sends a request for permission to serve an advertisement.” (Id.
at 7.)
Karassner discloses
an all inclusive electronic advertising network system and
method, including means for advertisers to create advertisements
using licensed digital content on a cost-per-use basis, and means
for distributing said advertisements via a “billboard module” and
a dispatcher server automatically conducting a real-time auction
to select an ad for display whenever a billboard module on the
network is requested by a network user/ad viewer.

(Karassner ¶ 112.) Karassner describes a “billboard module” as a “display
space module.” (Id. ¶ 9.) Specifically, Karassner’s
invention provides ad publishers with the ability to automatically
accept placement of advertising at their network locations by
providing a display space module, or “billboard module” that can
be easily embedded at the network location where the ad will be
displayed, such as, for example, on the ad publisher’s web
page(s) or, installed in cellular phone or a variety of other
network devices that display advertising. This “billboard
module” is associated with categories or keywords and
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communicates with a central dispatcher server that selects
advertising and provides instructions to render the advertising in
the module.

(Id.) Karassner further discloses that the system includes
a dispatcher server including an ad parameter and command file
database, and one or more software applications to execute a
real-time auction to select an ad to be displayed at a particular
network location . . . . When activated/initiated, said billboard
modules establish communications with the dispatcher server,
causing a real-time auction to be executed for all advertisements
in the dispatcher database with like parameters (e.g., the same
keywords, categories and geographical region) and selecting one
or more advertisements for display at the billboard module
location based on the advertisers’ bid . . . , and then causing the
selected ad to be displayed at the module.

(Id. ¶ 113.) In other words, Karassner discloses bidding to serve an
advertisement.
Appellants’ Specification discloses that “[i]n one embodiment, a
programmatic buying platform can be operable to request permission before
bidding an advertisement. Requesting permission from, e.g., a mediator
device, can be operable to inhibit advertising collisions.” (Spec. ¶ 1016.)
The Specification also discloses:
The programmatic buying platform can receive a signal,
e.g., from the mediator device, that either approves the request to
bid the advertisement or denies the request to bid the
advertisement. If the programmatic buying platform receives a
denial, the programmatic buying platform can optionally select
another advertisement and request permission to bid the other
advertisement.

(Id. ¶ 1018.) The Specification also discloses that “[i]n one embodiment, a
real time bidding device can be operable to request permission before
conducting an auction for an ad space. Requesting permission from, e.g., a
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mediator device can be operable to inhibit advertising collisions.” (Id.
¶ 1019.) In short, Appellants’ Specification distinguishes between a request
for permission to bid and bidding.
But, the Examiner points out that in
arguments filed on 1/6/15 . . . Applicant [sic] argues that
Krassner/Brouhard [sic] does not disclose “receiving [. . .] a
request for permission to serve a first advertisement” or
“receiving a request for permission to serve a second
advertisement”. The Applicant maintains his previously recited
contradictory assertion that “requesting permission to bid”
supports claim limitations “requesting permission to serve an
advertisement” while arguing against this assertion in the
application of the prior art (Remarks pg. 15). The contradictory
nature of the Applicant’s argument is illustrated in the disclosure
which states that “Real-time bidding (RTB) can allow advertisers
to bid on individual ad spaces (e.g., individual impressions)
served to individual advertisement canvases on user devices”
(Spec.1006). The contradictory nature of the Applicant’s
argument is further demonstrated by the specification and
Remarks. Applicant also states that the system “can be operable
to request permission before bidding an advertisement’
(Remarks pg. 16; Spec. ¶1016). The Applicant has defined that
by bidding an advertiser is seeking permission to serve an
advertisement impression. The Applicant is relying upon non-
limiting examples of different embodiments to support
contradictory views to support a claim of priority and an
argument against the application of the references.

(Final Action 30 (emphasis added).)
Appellants argued in a Reply and Amendment filed April 17, 2014,
that several claim limitations, including the limitation: “receive, at a first
time and from a first advertisement device, a request for permission to serve
a first advertisement to a first display device” are supported by the
disclosure in the related provisional application:
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The mediator server is configured to: receive, from a first
advertisement server, a request to bid for a user on an
advertisement placement on a website; . . . generating and
granting the lock to the first advertisement server; allowing, the
first advertisement server to place the bid for the user on the
advertisement placement based on the granted lock.

(Reply and Amendment Under 37 C.F.R. § 1.111, filed April 17, 2014, at
12–13.) In a subsequent Reply and Amendment filed January 6, 2015,
Appellants argued that
Applicants respectfully submit that the Examiner
misunderstands the Applicants’ position. The Applicants do take
the position that disclosure related to requesting permission to
bid supports claim language related to requesting permission to
serve an advertisement. The Applicants do not take the position
and do not concede that disclosure related to mere bidding on an
advertisement corresponds to requesting permission to bid or
requesting permission to serve an advertisement.

(Reply and Amendment Under 37 C.F.R. § 1.111, filed January 6, 2015,
at 15.)
We do not agree with the Examiner that Appellants have “defined that
by bidding an advertiser is seeking permission to serve an advertisement
impression.” (See Final Action 30.) Rather, the arguments of Appellants
cited by the Examiner are that the disclosure in the provisional application of
“a request to bid” supports “a request for permission to serve.” (See Reply
of April 17, 2014, at 12–13.)
In view of the above, we determine that the term “request for
permission” should be given its ordinary meaning. In this case, and
applying a broadest reasonable interpretation, we determine that the term
includes asking for authorization. (See Merriam-Webster.com,
http://merriam-webster.com/dictionary/permission, def. 2 (last visited
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July 25, 2019); see also Merriam-Webster.com, http://www.merriam-
webster.com/dictionary/request, def. 1 (last visited July 25, 2019).)
Applying this interpretation, we do not see where, in the cited portions
of Karassner, a request for permission, i.e., asking for authorization, to serve
an advertisement to a display device, is disclosed. Rather, the cited portions
of Karassner disclose automatically conducting an auction to select an ad to
be displayed, i.e., receiving bids/offers, rather than asking for authorization
to serve. (See, e.g., Karassner ¶ 112.) Therefore, we will reverse the
rejection of claim 1, and dependent claims 2, 5–13, 27–34,5 which depend
from claim 1. Independent claim 19 includes similar language and for
similar reasons we will reverse the rejection of claim 19, and dependent
claims 21–25 and 36, which depend from claim 19.

Claims 15, 16, and 18
In relevant part, independent claim 15 recites, “send, to a mediator
device, a request to bid a first advertisement” and “receive, from the
mediator device, a response to the request to bid, the response including an
indication of approval to bid. Claim 16 recites, “send, to the real-time
bidding device, a signal representing a bid on the ad space in response to
receiving the indication of approval.”
The Examiner, relying on Brouhard, finds that “the cited portions of
the reference disclose circumstances arising in data relays where an ad is

5 We recognize that dependent claims 30 and 31 are indefinite and cannot be
interpreted. (See supra.) However, in view of the reversal of claim 1, we
elect to not additionally reverse and enter a new ground of rejection of
claims 30 and 31 due to the inability to interpret the claims. See In re Steele,
305 F.2d at 862–63.
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blocked. This teaching necessarily discloses the scenario that under other
circumstances the ads are NOT blocked. I[n] other words you cannot
disclose ‘blocking’ something unless it would otherwise not be blocked.”
(Advisory Action, June 9, 2015, at 2.) The Examiner also finds that
Brouhard teaches that “[o]nce a user receives an offer from Merchant A the
cross channel media coordination system blocks (indicator active) an offer
from any other merchants of a [sic] similar products).” (Final Action 8,
citing Brouhard ¶ 96.)
Appellants argue that “Krassner [sic] in view of Brouhard does not
disclose or suggest receiving an indication of approval to bid that is distinct
from an invitation to participate in an auction.” (Appeal Br. 15.)
Specifically, Appellants argue that “Brouhard merely discloses that offers
are either blocked or not blocked. The mere act of not blocking in and of
itself is not an indication of approval to bid.” (Id. at 15.)
The Examiner, however, determines that while “the claim positively
requires ‘receiving a response,’ the content of the response is non-functional
descriptive matter.” (Advisory Action, June 9, 2015, at 2.) Appellants
disagree and argue that “the content of the message is functional.” (Appeal
Br. 14.)
When a claim limitation relates to the type of information being
claimed, we generally analyze that limitation under the rubric of printed
matter. “[I]f a limitation claims (a) printed matter that (b) is not functionally
or structurally related to the physical substrate holding the printed matter, it
does not lend any patentable weight to the patentability analysis.” In re
DiStefano, 808 F.3d 845, 848 (Fed. Cir. 2015), citing In re Gulack, 703 F.2d
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1381, 1384–85 (Fed. Cir. 1983). Descriptive or printed “matter must be
matter claimed for what it communicates.” Id. at 850.
In claim 15, the content of the response, i.e., “an indication of
approval to bid,” is matter claimed for what it communicates – the indication
of approval. To determine whether to lend patentable weight to the term, we
ask if it is functionally or structurally related to the processor. We find no
function in claim 15 related to the content of the response. Therefore, we
agree with the Examiner that, in claim 15, no patentable weight should be
accorded to the claim term “the response including an indication of approval
to bid.”
Thus, we do not find Appellants’ argument that Karassner in view of
Brouhard fails to disclose receiving an indication of approval persuasive of
error, as to the rejection of claim 15.
Dependent claim 16 recites, “send . . . a signal representing a bid.”
The function recited in claim 16 is related to receipt of a particular response;
that is, receipt of an indication of approval to bid. In other words, the
additional limitation of claim 16 functionally relates the language of
claim 15 regarding the content of the response, to the processor. See In re
Gulack, 703 F.2d at 1385 (“The claim must be read as a whole.”).
Moreover, we agree with Appellants that the cited portions of Karassner in
view of the cited portions of Brouhard fail to disclose receiving an indication
of approval. The indication of approval being functional language in
claim 16.
Therefore, we will reverse the rejection of claim 16 under § 103(a).
Claim 18 contains similar language and for similar reasons we will reverse
the rejection of claim 18 under § 103(a).
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Claim 35
Claim 35 depends from claim 15 and recites, “wherein the request to
bid the first advertisement is not a bid to serve the first advertisement.”
The Examiner finds that Karassner discloses this limitation. (Final
Action 27, citing Karassner ¶ 121; see also id. at 17 (“see at least ¶0119.
The dispatch server sends out invitations to advertisers’ computers to bid on
the display of ads for the ad space.”).) The Examiner further finds that
Karassner teaches advertisers provided with an account (to
register) to put an electronic ad and also to enter keywords to
associate with the advertisement ... on a [sic] third party websites,
search engines and other network locations (see [0014]-[0016]).
. . . Therefore, providing an opportunity for advertisers to
provide advertisement and/keywords [sic], in order to place
advertisements on advertisement spot, is an invitation for
advertisers to bid for advertisement since the advertisements are
selected based on bids submitted by the registered advertisers.

(Answer 5.)
Appellants disagree and argue that “for a reference or combination of
references to render claim 35 obvious, the reference or references must
disclose or suggest sending a signal that requests permission from a mediator
device and that does not represent a bid.” (Appeal Br. 17.) Appellants
further argue that “[t]he references cited by the Examiner do not disclose or
suggest such a request to bid.” (Id.)
Paragraph 121 of Karassner discloses:
Registering with the system as an advertisement
administrator 300, 310 advertisers are directed to a menu where
they create their advertising display by entering messaging,
uploading logos or pictures, selecting from a variety of digital
content libraries made available through the system for licensing
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on a cost-per-use basis, and create an advertising campaign by
entering keywords or selecting categories to associate with said
advertisement, network location and geographical region for the
advertisement’s display, go-to location upon click action on the
advertisement, cost-per-use bid, minimum daily budget and other
ad parameter data. Advertisers are also provided the opportunity
to run real-time test auctions to evaluate approximate results of
their campaign with the parameters they have selected.

(Karassner ¶ 121.)
We are persuaded of error. Here, the Examiner determines that
Karassner’s disclosure of providing an opportunity to register with the
system, create an advertisement, and enter, e.g., associated keywords and
categories, teaches providing “an invitation for advertisers to bid,” i.e., an
invitation to the advertisers. (See Answer 5.) However, claim 35 does not
refer to the “receive . . . an invitation to participate” limitation of claim 15.
Instead, it refers to the “request to bid” recited in claim 15, that is, a request
from the advertiser.
Therefore, we will reverse this rejection of claim 35 under § 103(a).

DECISION
The Examiner’s rejection of claim 29 under 35 U.S.C. § 112(a) or
35 U.S.C. § 112, first paragraph (pre-AIA), is affirmed.
The Examiner’s rejection of claims 30 and 31 under 35 U.S.C.
§ 112(a) or 35 U.S.C. § 112, first paragraph (pre-AIA), is reversed.
The Examiner’s rejection of claims 30 and 31 under 35 U.S.C.
§ 112(b) or 35 U.S.C. § 112, second paragraph (pre-AIA), is affirmed.
The Examiner’s rejections of claims 1, 2, 5–13, 15, 16, 18, 19, 21–25,
27–29, and 32–36 under 35 U.S.C. § 101 are affirmed.
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Application 13/973,405

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The Examiner’s rejections of claims 30 and 31 under 35 U.S.C. § 101
are reversed.
The Examiner’s rejections of claims 1, 2, 5–13, 16, 18, 19, 21–25,
and 27–36 under 35 U.S.C. § 103(a) are reversed.
The Examiner’s rejection of claim 15 under 35 U.S.C. § 103(a) is
affirmed.
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