Rodney Hook et al.Download PDFPatent Trials and Appeals BoardJul 29, 201913973405 - (D) (P.T.A.B. Jul. 29, 2019) Copy Citation 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.) Appeal 2017-009457 Application 13/973,405 2 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– Appeal 2017-009457 Application 13/973,405 3 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. Appeal 2017-009457 Application 13/973,405 4 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, Appeal 2017-009457 Application 13/973,405 5 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). Appeal 2017-009457 Application 13/973,405 6 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). Appeal 2017-009457 Application 13/973,405 7 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 Appeal 2017-009457 Application 13/973,405 8 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). Appeal 2017-009457 Application 13/973,405 9 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 Appeal 2017-009457 Application 13/973,405 10 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 Appeal 2017-009457 Application 13/973,405 11 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 Appeal 2017-009457 Application 13/973,405 12 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 Appeal 2017-009457 Application 13/973,405 13 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 Appeal 2017-009457 Application 13/973,405 14 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 Appeal 2017-009457 Application 13/973,405 15 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”). Appeal 2017-009457 Application 13/973,405 16 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 Appeal 2017-009457 Application 13/973,405 17 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 Appeal 2017-009457 Application 13/973,405 18 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 Appeal 2017-009457 Application 13/973,405 19 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 Appeal 2017-009457 Application 13/973,405 20 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 Appeal 2017-009457 Application 13/973,405 21 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.) Appeal 2017-009457 Application 13/973,405 22 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 Appeal 2017-009457 Application 13/973,405 23 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). Appeal 2017-009457 Application 13/973,405 24 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: Appeal 2017-009457 Application 13/973,405 25 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 Appeal 2017-009457 Application 13/973,405 26 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 Appeal 2017-009457 Application 13/973,405 27 ... 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 Appeal 2017-009457 Application 13/973,405 28 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 Appeal 2017-009457 Application 13/973,405 29 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: Appeal 2017-009457 Application 13/973,405 30 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 Appeal 2017-009457 Application 13/973,405 31 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. Appeal 2017-009457 Application 13/973,405 32 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 Appeal 2017-009457 Application 13/973,405 33 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). Appeal 2017-009457 Application 13/973,405 34 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 Appeal 2017-009457 Application 13/973,405 35 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. Appeal 2017-009457 Application 13/973,405 36 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 Copy with citationCopy as parenthetical citation