Roytman, Anatoly et al.Download PDFPatent Trials and Appeals BoardMar 27, 202013264480 - (D) (P.T.A.B. Mar. 27, 2020) 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. 13/264,480 10/14/2011 Anatoly Roytman 02333-00-US 1093 79340 7590 03/27/2020 MANNAVA & KANG, P.C. 3201 Jermantown Road SUITE 525 FAIRFAX, VA 22030 EXAMINER LI, SUN M ART UNIT PAPER NUMBER 3681 NOTIFICATION DATE DELIVERY MODE 03/27/2020 ELECTRONIC Please find below and/or attached an Office communication concerning this application or proceeding. The time period for reply, if any, is set in the attached communication. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address(es): ASHOKM@MANNAVAKANG.COM docketing@mannavakang.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte ANATOLY ROYTMAN and MATTHEW SYMONS ____________________ Appeal 2019-004068 Application 13/264,4801 Technology Center 3600 ____________________ Before JOSEPH L. DIXON, DAVID M. KOHUT, and JON M. JURGOVAN, Administrative Patent Judges. JURGOVAN, Administrative Patent Judge. DECISION ON APPEAL Appellant seeks review under 35 U.S.C. § 134(a) from a Final Rejection of claims 1, 2, 4, 6, 8, 9, 12, 13, 15, 17, 19, and 21–23. Claims 3, 5, 7, 10, 11, 14, 16, 18, and 20 have been cancelled. We have jurisdiction under 35 U.S.C. § 6(b). We affirm.2 1 We use the word “Appellant” to refer to “applicant(s)” as defined in 37 C.F.R. § 1.42. The real party in interest is Accenture Global Services Limited. (Appeal Br. 3.) 2 Our Decision refers to the Specification (“Spec.”) filed October 14, 2011, the Final Office Action (“Final Act.”) mailed June 20, 2018, the Appeal Brief (“Appeal Br.”) filed December 20, 2018, the Examiner’s Answer (“Ans.”) mailed March 1, 2019, and the Reply Brief (“Reply Br.”) filed April 30, 2019. Appeal 2019-004068 Application 13/264,480 2 CLAIMED INVENTION The claims are directed to a “digital creative interaction system” and method that issue, to a plurality of sources, a request for creative briefs for a target consumer group and in response, “receive[] creative briefs and corresponding bids” and “deploy[] each of the creative briefs to the target consumer group and capture[] user behavior data responsive to the deployed creative briefs.” (Spec. ¶ 10; Title (capitalization altered); Abstract.) Claims 1, 8, and 15 are independent claims. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A system, comprising: a processor and a storage device to store machine-readable instructions executed by the processor, wherein the processor is to: determine gap data for a client, the gap data identifying at least one of a target consumer group that does not purchase a specific product or service of the client, and a target consumer group having a less than desired market share of a specific product or service of the client; convert the gap data into an electronic message and send the electronic message to the client by way of a network; in response to the electronic message sent to the client, receive a prompt from the client to prepare and issue a request for creative briefs to be used by the client; create the request for creative briefs to be used by the client, wherein the request for creative briefs includes a request electronic message created by populating a message template with parameters based on the determined gap data for the target consumer group, and wherein the parameters include creative brief parameters specifying a maximum size, colors and layout dimensions for the creative briefs being requested; Appeal 2019-004068 Application 13/264,480 3 transmit, by the processor, the request electronic message including the request for creative briefs to a plurality of creative agencies; receive a plurality of responses to the request for creative briefs, each response of the plurality of responses including a creative brief comprising an online advertisement and a corresponding bid for use of the online advertisement by the client; determine whether each of the plurality of responses conforms to the parameters in the request for creative briefs, wherein to determine whether each of the plurality of responses conforms to the parameters comprises determining whether the online advertisement in each response conforms to the maximum size, the colors and the layout dimensions specified in the creative brief parameters; test each online advertisement of the conforming responses to measure an impact of each online advertisement on the identified at least one target consumer group, wherein to test each online advertisement, the processor is to: post each online advertisement of the conforming responses to an internet site; and capture user behavior data responsive to each tested online advertisement, wherein the captured user behavior data includes a number of times each online advertisement was clicked on by a member of the target consumer group; and determine which of the online advertisements to select based on the testing. (Appeal Br. 31–32 (Claims App.).) Appeal 2019-004068 Application 13/264,480 4 REJECTION Claims 1, 2, 4, 6, 8, 9, 12, 13, 15, 17, 19, and 21–23 stand rejected under 35 U.S.C. § 101 as directed to non-statutory subject matter. (Final Act. 17–24.) ANALYSIS Patent eligibility is a question of law that is reviewable de novo. Dealertrack, Inc. v. Huber, 674 F.3d 1315, 1333 (Fed. Cir. 2012). Accordingly, we review the Examiner’s § 101 determinations concerning patent eligibility under this standard. Patentable subject matter is defined by 35 U.S.C. § 101, as follows: [w]hoever 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. In interpreting this statute, the Supreme Court emphasizes that patent protection should not preempt “the basic tools of scientific and technological work.” Gottschalk v. Benson, 409 U.S. 63, 67 (1972) (“Benson”); Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 71 (2012) (“Mayo”); Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 573 U.S. 208, 217–18 (2014) (“Alice”). The rationale is that patents directed to basic building blocks of technology would not “promote the progress of science” under the U.S. Constitution, Article I, Section 8, Clause 8, but instead would impede it. Accordingly, laws of nature, natural phenomena, and abstract ideas, are not patent-eligible subject matter. Thales Visionix Inc. v. U.S., 850 F.3d 1343, 1346 (Fed. Cir. 2017) (citing Alice, 573 U.S. at 216). Appeal 2019-004068 Application 13/264,480 5 The Supreme Court set forth a two-part test for subject matter eligibility in Alice (573 U.S. at 217–19). The first step is to determine whether the claim is directed to a judicial exception to patent eligibility, such as an abstract idea, law of nature or natural phenomenon. Id. (citing Mayo, 566 U.S. at 76–77). If so, then the eligibility analysis proceeds to the second step of the Alice/Mayo test in which we “examine the elements of the claim to determine whether it contains an ‘inventive concept’ sufficient to ‘transform’ the claimed abstract idea into a patent-eligible application.” Alice, 573 U.S. at 221 (quoting Mayo, 566 U.S. at 72, 79). There is no need to proceed to the second step, however, if the first step of the Alice/Mayo test yields a determination that the claim is directed to patent eligible subject matter. The Patent Office has recently revised its guidance for how to apply the Alice/Mayo test in the 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50–57 (January 7, 2019) (“the Revised Guidance”). Under the Revised Guidance, we first look to whether the claim recites: (1) any judicial exceptions, including certain groupings of abstract ideas (i.e., mathematical concepts, mental processes, or certain methods of organizing human activity such as a fundamental economic practice or managing personal behavior or relationships or interactions between people); and (2) additional elements that integrate the judicial exception into a practical application (see Manual of Patent Examining Procedure (“MPEP”) § 2106.05(a)–(c), (e)–(h)). 84 Fed. Reg. at 51–52, 55. A claim that integrates a judicial exception into a practical application applies, relies on, or uses 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. 84 Fed. Reg. Appeal 2019-004068 Application 13/264,480 6 at 54. When the judicial exception is so integrated, then the claim is not directed to a judicial exception and is patent-eligible under § 101. 84 Fed. Reg. at 54. Only if a claim (1) recites a judicial exception and (2) does not integrate that exception into a practical application, do we then evaluate whether the claim provides an inventive concept. 84 Fed. Reg. at 56; Alice, 573 U.S. at 217–19, 221. Evaluation of the inventive concept involves consideration of whether an additional element or combination of elements (1) adds a specific limitation or combination of limitations that are not well- understood, routine, conventional activity in the field, which is indicative that an inventive concept may be present; or (2) simply appends well- understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception, which is indicative that an inventive concept may not be present. Alice/Mayo—Step 1 (Abstract Idea) Step 2A–Prongs 1 and 2 identified in the Revised Guidance Step 2A—Prong 1 (Does the Claim Recite a Judicial Exception?) Turning to the first step of the Alice inquiry (Step 2A, Prong 1 of the Revised Guidance), the Examiner finds independent claim 8 (and similarly, independent claims 1 and 15) is “directed to the abstract idea of creating targeted ad creatives/advertisement to a consumer group,” and more particularly, to “the abstract idea of collecting, determining and converting gap data, monitoring ad request/response data, and analyzing the ad parameters based on the analysis to create the advertisement for the targeted consumer group.” (Final Act. 17, 19.) The Examiner finds the abstract idea recited by Appellant’s claims “fall[s] within ‘Certain Methods of Organizing Human Activity’ grouping of abstract idea” because the Appeal 2019-004068 Application 13/264,480 7 independent claims’ “steps mainly describe the concepts of commercial or legal interactions (advertising, marketing or sales activities or behaviors; business relations)” and “managing personal behavior or relationships or interactions between people (including following rules or instructions) e.g. creating . . . brief with predefined parameters, such as size, color, layout dimension, posting and testing the creative brief of the conforming responses, capturing user behavior/interactions.” (Ans. 6–7 (citing the Revised Guidance).) The Examiner then determines the independent claims’ additional elements do not integrate the abstract idea into a practical application because the additional elements “are recited at a high-level of generality such that it [sic] amounts no more than mere instructions to apply the judicial exception(s) using a generic computer component (i.e., a server)”; and the claims also “do not include additional elements that are sufficient to amount to significantly more than the judicial exception because . . . [the claimed elements] are recited at a high level of generality” and “are recited as performing generic computer functions routinely used in the computer applications.” (Ans. 4, 7–8; see also Final Act. 22–24.) Appellant argues independent claims 1, 8, and 15 together, presenting arguments directed to independent claim 1. (Appeal Br. 13–15, 17–18, 22– 24; Reply Br. 7–8, 12–14, 17.) As a result, we select independent claim 1 as the representative claim for the group and address Appellant’s arguments thereto. See 37 C.F.R. § 41.37(c)(1)(iv) (2017). Appellant contends the Examiner erred in rejecting the claims under 35 U.S.C. § 101 as directed to non-statutory subject matter because the claims are not directed to an abstract idea. (Appeal Br. 12–21; Reply Br. 6– Appeal 2019-004068 Application 13/264,480 8 11.) Particularly, Appellant contends: (i) the claims are directed to an improvement in computer-related technology that is not an abstract idea, the improvement “allowing computers to interact to efficiently and automatically” generate and send requests to create online ads, receive online ads from the creative agencies and identify the online ads that conform to the technical parameters, and test the conforming online ads on the internet for performance (Appeal Br. 12, 15); (ii) the claims are not directed to any abstract idea similar to concepts the courts have identified as abstract ideas (Appeal Br. 16–19); and (iii) the claims are not directed to a method of organizing human activity, as “it is a completely improper oversimplification to consider the claimed subject matter to be directed to commercial or legal interactions or managing personal behavior or relationships or interactions between people” (Reply Br. 6–10; Appeal Br. 20–21). Appellant’s arguments are not persuasive. Here, representative claim 1 recites instructions whose execution results in producing creative briefs (e.g., advertisements) and testing the ads’ effectiveness on consumer groups. (See Spec. ¶¶ 10, 13–14; Title; Abstract.) More specifically, representative claim 1 recites machine-readable instructions whose execution encompasses the following steps: (1) “determine gap data for a client, the gap data identifying at least one of a target consumer group that does not purchase a specific product or service of the client” and “a target consumer group having a less than desired market share of a specific product or service of the client”; (2) “convert the gap data into a[] . . . message and send the . . . message to the client” and “in response to the . . . message sent to the client, receive a prompt from the client to prepare and issue a request Appeal 2019-004068 Application 13/264,480 9 for creative briefs to be used by the client”; (3) “create the request for creative briefs to be used by the client, wherein the request for creative briefs includes a request . . . message created by populating a message template with parameters based on the determined gap data for the target consumer group” and “the parameters include creative brief parameters specifying a maximum size, colors and layout dimensions for the creative briefs being requested,” and “transmit . . . the request . . . message including the request for creative briefs to a plurality of creative agencies”; (4) “receive a plurality of responses to the request for creative briefs, each response of the plurality of responses including a creative brief comprising an online advertisement and a corresponding bid for use of the online advertisement by the client” and “determine whether each of the plurality of responses conforms to the parameters in the request for creative briefs,” wherein “to determine whether each of the plurality of responses conforms to the parameters comprises determining whether the online advertisement in each response conforms to the maximum size, the colors and the layout dimensions specified in the creative brief parameters”; (5) “test each online advertisement of the conforming responses to measure an impact of each online advertisement on the identified at least one target consumer group” by “post[ing] each online advertisement of the conforming responses” and “captur[ing] user behavior data responsive to each tested online advertisement, wherein the captured user behavior data includes a number of times each online advertisement was clicked on by a member of the target consumer group”; and (6) “determine which of the online advertisements to select based on the testing.” (Appeal Br. 31–32 (Claims App.).) These limitations, under their broadest reasonable interpretation, recite targeting Appeal 2019-004068 Application 13/264,480 10 advertisements to particular consumers by producing ads and testing the ads’ effectiveness on the consumers, thereby describing operations that would ordinarily take place when entities prepare and present ads to promote products and generate revenue through advertising. For example, limitation (1) in claim 1 describes determining groups of unexposed consumers, which is an activity ordinarily performed by market research companies that analyze a market sector while seeking to promote products to new (unexposed) consumer groups to increase a product’s market share. (See Spec. ¶ 15 (describing gap determination data “identifying a segment of the population, i.e. target consumer group, that does not purchase a specific product or service sold by the client” or “a segment of population, i.e. a target consumer group, that has a small market share of a product or service sold by the client”).) Limitation (2) in claim 1 describes preparing a request for ads pertinent to unexposed consumer groups—an activity ordinarily performed by market research companies and other entities that prepare and monetize ads. (See Spec. ¶ 14 (“a creative brief is an advertisement or description of an advertisement for an identified product or service targeted at a group of potential consumers, i.e. a target consumer group”).) Limitation (3) in claim 1 describes preparing ad requests with ad characteristics targeted to particular consumer groups, and sending the ad requests to advertising or design agencies—an activity ordinarily performed by entities that monetize ads, such as businesses seeking to produce and display ads for obtaining revenue. (See Spec. ¶¶ 14 (“creative agencies 104a-n may include advertising agencies, creative contractors, marketers or any other entity that may respond to a request for creative briefs”), 18 (“The request for creative briefs . . . may be posted to an Appeal 2019-004068 Application 13/264,480 11 electronic board . . . or may be sent electronically to the creative agencies 104a-n via text, email, automated message alert, etc.”).) Limitation (4) in claim 1 describes reviewing the cost and quality of the received targeted ads to determine the best or most suitable ads, which are activities ordinarily performed by entities that monetize ads by presenting those ads most likely to bring in revenue. (See Spec. ¶ 18 (“The creative brief parameters are requirements for creative briefs” and “may include maximum size, specific colors, layout dimensions, layout design preferences, etc.,” and “[t]he bid parameters are requirements for the bids corresponding to the creative briefs” and “may include currency, minimum amount, maximum amount, an acceptable range, etc.”).) Limitations (5) and (6) in claim 1 describe conducting advertising research to determine impact and effectiveness of ads on potential consumers and select the best ads for presentation, which are activities ordinarily performed by entities that monetize ads by presenting to the public those ads most likely to bring in revenue. Thus, limitations (1)–(6) in claim 1 recite producing targeted advertisements and testing the ads’ effectiveness on consumer groups, which is a known business activity and a fundamental economic practice in our system of commerce, similar to other concepts identified by the courts as abstract ideas. (Ans. 6; Final Act. 21–22.) For example, like the risk hedging in Bilski, the intermediated settlement in Alice, and the delivery of free content in exchange for viewing ads in Ultramercial, the concept of producing targeted advertisements and testing the ads’ effectiveness on consumer groups is a fundamental business practice long prevalent in our system of commerce. See Bilski v. Kappos, 561 U.S. 593, 599, 611–12 (2010) (risk hedging); Alice, 573 U.S. at 215–19 (intermediated settlement Appeal 2019-004068 Application 13/264,480 12 of traded or exchanged financial obligations to mitigate the risk that one party will not perform); Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715– 16 (Fed. Cir. 2014) (“[t]he process of receiving copyrighted media, selecting an ad, offering the media in exchange for watching the selected ad, displaying the ad, allowing the consumer access to the media, and receiving payment from the sponsor of the ad all describe an abstract idea”); Affinity Labs of Texas, LLC v. Amazon.com, 838 F.3d 1266, 1269, 1271 (Fed. Cir. 2016) (“the concept of delivering user-selected media content to portable devices [(in a method for targeted advertising in which an advertisement is selected for delivery to the user of a portable device based on at least one piece of demographic information about the user)] is an abstract idea,” and “‘customizing information based on . . . information known about the user’ is an abstract idea” (citing Intellectual Ventures I LLC v. Capital One Bank (USA), 792 F.3d 1363, 1369 (Fed. Cir. 2015))); Morsa v. Facebook, Inc., 77 F.Supp.3d 1007, 1013 (C.D. Cal. 2014), aff’d, 622 F. App’x 915 (Fed. Cir. 2015) (“[t]he concept of gathering information about one’s intended market and attempting to customize the information then provided is as old as the saying, ‘know your audience.’” (quoting OpenTV, Inc. v. Netflix Inc., 76 F.Supp.3d 886, 893 (N.D. Cal. 2014))). Thus, we disagree with Appellant’s argument that “the claims are not similar to an abstract idea similar to one identified by the courts.” (See Appeal Br. 19.) Performing targeted advertising and advertising research by testing ads’ effectiveness on consumers is also a building block of a market economy and, like risk hedging and intermediated settlement, is an “abstract idea” beyond the scope of § 101. See Alice, 573 U.S. at 219. Thus, similar to the concept of intermediated settlement in Alice, the concept of hedging in Appeal 2019-004068 Application 13/264,480 13 Bilski, and targeted advertising in Affinity Labs, the concept of targeted advertising and performing advertising research by testing ads’ effectiveness on consumers (as in Appellant’s claim 1) “is a fundamental economic practice long prevalent in our system of commerce.” See Alice, 573 U.S. at 219; Bilski, 561 U.S. at 611–12 (“Claims 1 and 4 in petitioners’ application explain the basic concept of hedging, or protecting against risk.”). We therefore conclude limitations (1)–(6) in representative claim 1, and similar limitations in independent claims 8 and 15, recite producing targeted advertisements and testing ads’ effectiveness on consumer groups, which is a fundamental economic practice and a commercial interaction— thus methods of organizing human activity identified in the Revised Guidance and therefore an abstract idea. See Revised Guidance (Revised Step 2A, Prong One), 84 Fed. Reg. at 52 (describing an abstract idea category of “[c]ertain methods of organizing human activity—fundamental economic principles or practices . . . ; commercial or legal interactions (including . . . advertising, marketing or sales activities or behaviors; business relations)”). In conclusion, we agree with the Examiner that representative claim 1, and grouped independent claims 8 and 15, recite an abstract idea comprising a fundamental economic practice and a commercial interaction. (Ans. 6–7; Final Act. 21.) Step 2A—Prong 2 (Integration into Practical Application) Under Step 2A, Prong 2 of the Revised Guidance, we discern no additional element (or combination of elements) recited in Appellant’s representative claim 1 that integrates the judicial exception into a practical application. See Revised Guidance, 84 Fed. Reg. at 54–55 (“Prong Two”). For example, Appellant’s claimed additional elements in claim 1 (e.g., “a Appeal 2019-004068 Application 13/264,480 14 processor,” “the processor” transmitting a “request electronic message,” “a storage device to store machine-readable instructions,” “a network” to send an “electronic message,” and “an internet site” where the processor posts online advertisements that can be clicked on) do not: (1) improve the functioning of a computer or other technology; (2) are not applied with any particular machine (except for a generic processor); (3) do not effect a transformation of a particular article to a different state; and (4) are not applied in any meaningful way beyond generally linking the use of the judicial exception to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception. See MPEP §§ 2106.05(a)–(c), (e)–(h). Rather, Appellant’s claimed computing and hardware components are configured to perform numerous real-world functions and operations that automate the transmission of content (e.g., transmission of creative brief requests and online ads) and the testing of the ads’ effectiveness on consumer groups, adding nothing of substance to the underlying abstract idea. (Ans. 4, 7–8.) It is clear from the claims and the Specification (discussing “a processor 402, unit or processing circuitry that may implement or execute software instructions performing some or all of the methods, functions and other steps described herein” and noting that “other known electronic components may be added or substituted in the computer system 400,” a “digital creative interaction system 100 [that] may also be an agent running on equipment belonging to the client 102, a system accessed via the Internet, a web service, etc.,” “a computer readable storage device 403, such as random access memory (RAM),” “storage device 403 [that] may also include non- volatile data storage,” “a network, such as the Internet or other type of Appeal 2019-004068 Application 13/264,480 15 network,” and a “test system 110 [that] places the creative brief into a live environment, such as the Internet”), that the claimed computing and hardware components require no improved computing or networking elements that Appellant claims to have invented. (See Spec. ¶¶ 14, 19, 21, 26, 36, 39, 40; Ans. 8–9, 18.) Claim 1 does not recite a specific improvement to the way computers, networks, or Internet sites operate. Thus, the claim’s limitations are not indicative of “integration into a practical application.” See Revised Guidance, 84 Fed. Reg. at 54–55. Rather, the processor, storage device, network, and Internet posting site are readily available computing and networking elements using their already available basic functions as tools in executing the claimed testing of ads on consumer groups. See SAP Am., Inc. v. InvestPic LLC, 898 F.3d 1161 (Fed. Cir. 2018). Appellant argues the claims are directed to a practical application as required by the Revised Guidance because claimed steps—including the determining steps (“determin[ing] whether each of the plurality of responses conforms to the parameters in the request for creative briefs” and “determin[ing] whether the online advertisement in each response conforms to the maximum size, the colors and the layout dimensions specified in the creative brief parameters”) and the testing, posting, and capturing steps (“test each online advertisement of the conforming responses,” “post each online advertisement of the conforming responses to an internet site,” and “capture user behavior data responsive to each tested online advertisement, wherein the captured user behavior data includes a number of times each online advertisement was clicked on by a member of the target consumer group”)—provide “an improvement in computer-related technology.” Appeal 2019-004068 Application 13/264,480 16 (Reply Br. 10–11; see also Appeal Br. 12–15.) In particular, Appellant argues an improvement that “provid[es] a virtual environment for a client to automatically determine which creative briefs (e.g., online ads) conform to stated creative brief parameters and to test creative briefs and dynamically determine which creative brief to select based on metrics gathered by the electronic system” and “provides an increase in the scalability and efficiency of the use of computer and network devices employed by client and creative agencies, while reducing uncertainties related to non-conforming creative briefs and uncertainties related to selection of affective [sic] creative briefs.” (Reply Br. 11.) We remain unpersuaded because Appellant’s claim 1 does not recite any technical improvements to the process of posting or reviewing ads, or to the technical functioning of an Internet network or site. (Ans. 8, 12–13.) The broad limitations in the claimed determining, testing, posting, and capturing steps in claim 1 merely require (i) checking generic image parameters such as size, colors, and layout dimensions of ad files, without specifying a technical improvement in, e.g., image analysis technology, (ii) posting ads to a generic Internet site, which may be done by generic Internet-based applications such as webpage applications, and (iii) capturing numbers of clicks on posted ads, which may be done by generic Internet technology such website analytics applications that capture user navigation behavior on Internet websites. Claim 1 implements ad testing and selection using generic computer and network technology, such as an “electronic message,” a “request electronic message,” “posting” to an “internet site,” and tracking online clicks. In fact, none of the steps and elements recited in Appellant’s claim 1 provide, and nowhere in Appellant’s Specification can Appeal 2019-004068 Application 13/264,480 17 we find, any description or explanation as to how the claimed steps are intended to provide an improvement in computer- or network-related technology, such as (i) a “solution . . . necessarily rooted in computer technology in order to overcome a problem specifically arising in the realm of computer networks,” as explained by the Federal Circuit in DDR Holdings, LLC, v. Hotels.com, L.P., 773 F.3d 1245, 1257 (Fed. Cir. 2014), (ii) “a specific improvement to the way computers operate,” as explained in Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1336, 1339 (Fed. Cir. 2016), or (iii) an “unconventional technological solution . . . to a technological problem” that “improve[s] the performance of the system itself,” as explained in Amdocs (Israel) Ltd. v. Openet Telecom, Inc., 841 F.3d 1288, 1299 (Fed. Cir. 2016). Although Appellant emphasizes the “electronic interactions between systems of the clients, the systems of the creative agencies and the digital creative interaction system” and “an increase in the scalability and efficiency of the use of computer and network devices employed by client and creative agencies” in claim 1, the claim does not recite more than generic electronic interaction and data manipulation steps using generic computer and network technology, and does not demonstrate an increase in scalability and efficiency of using the claimed network and computing elements, as Appellant argues. (See Appeal Br. 14; Reply Br. 11; Ans. 8, 13.) For these reasons, we determine claim 1, and grouped claims 8 and 15, are directed to a judicial exception, namely, the abstract idea of producing targeted advertisements and testing ads’ effectiveness on consumer groups, which is a fundamental economic practice and Appeal 2019-004068 Application 13/264,480 18 commercial interaction, and one of the certain methods of organizing human activity identified as an abstract idea in the Revised Guidance. Alice/Mayo—Step 2 (Inventive Concept) Step 2B identified in the Revised Guidance Appellant challenges the Examiner’s findings as to the second step of the Alice analysis on the bases that: (i) claim 1 recites “significantly more” because the claim “describe[s] the particular technical details of utilizing the digital creative interaction systems and related methods . . . to enable clients and creative agencies to communicate efficiently in a virtual, networked environment and to provide automatic testing and generation of metrics relating to creative briefs” and “increase the scalability and efficiency of computer and network devices that are employed by client and creative agencies”; (ii) the “combination of claim features [in claim 1] . . . is not well known, routine or conventional,” and “no evidence or showing is provided that demonstrates the actual combination of claim features is well known, routine or conventional” or that demonstrates that “the claim elements are a recitation of generic computer functions”; and (iii) “the claims of the instant application recite non-generic steps,” and even “generic computer components and generic computer functions may be considered significantly more than the abstract idea when considered as an ordered combination.” (Reply Br. 12–17; Appeal Br. 22–25, 28–29 (citing DDR Holdings, 773 F.3d at 1245; McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299 (Fed. Cir. 2016); USPTO Memorandum, “Changes in Examination Procedure Pertaining to Subject Matter Eligibility, Recent Subject Matter Eligibility Decision (Berkheimer v. HP, Inc.),” published on April 19, 2018 Appeal 2019-004068 Application 13/264,480 19 (“Berkheimer Memo”); Berkheimer v. HP Inc., 881 F.3d 1360 (Fed. Cir. 2018)).) Appellant’s arguments are not persuasive. As recognized by the Revised Guidance, an “inventive concept” under Alice step 2 can be evaluated based on whether an additional element or combination of elements: (1) “[a]dds a specific limitation or combination of limitations that are not well-understood, routine, conventional activity in the field, which is indicative that an inventive concept may be present;” or (2) “simply appends well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception, which is indicative that an inventive concept may not be present.” See Revised Guidance, 84 Fed. Reg. at 56. In this case, however, we find no element or combination of elements recited in Appellant’s claim 1 that contains any “inventive concept” or adds anything “significantly more” to transform the abstract concept into a patent- eligible application. Alice, 573 U.S. at 221–222. Particularly, we are not persuaded by Appellant’s argument that claim 1 recites “significantly more” because the claim “describe[s] the particular technical details of utilizing the digital creative interaction systems and related methods . . . to enable clients and creative agencies to communicate efficiently in a virtual, networked environment and to provide automatic testing and generation of metrics relating to creative briefs” and “increase the scalability and efficiency of computer and network devices that are employed by client and creative agencies.” (See Reply Br. 14.) As discussed supra, claim 1 does not recite more than generic electronic interactions and data manipulation steps using Appeal 2019-004068 Application 13/264,480 20 generic computer and network technology, and claim 1 does not recite or demonstrate an increase in scalability and efficiency of computer and network devices, as Appellant argues. Appellant’s claimed ad creation steps, ad’s display on an Internet site, and message transmission and receipt via a network, do not provide any technical solution to a technical problem as the claims in DDR, or a “technological improvement over the existing, manual 3–D animation techniques” that uses “limited rules in a process specifically designed to achieve an improved technological result in conventional industry practice” as the claims in McRO. See McRO, 837 F.3d at 1313, 1316; DDR Holdings, 773 F.3d at 1245; Ans. 13–14. Appellant also has not demonstrated the claimed generic processor, storage device, network, Internet site, and electronic message exchange are able in combination to perform functions that are not merely generic, as the claims in DDR. See DDR Holdings, 773 F.3d at 1258. Appellant’s claim 1 merely recites data manipulation and transmission steps performable by conventional computers and networking infrastructure. (Ans. 8–10.) Furthermore, Appellant’s abstract idea of producing targeted advertisements and testing ads’ effectiveness on consumer groups, applied to generic computing and network infrastructure, does not provide any particular practical application as described in BASCOM. See BASCOM Glob. Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341, 1352, 1350 (Fed. Cir. 2016). BASCOM’s patent-eligible ordered combination of claim limitations contains an “inventive concept [that] harnesses [a] . . . technical feature of network technology in a filtering system by associating individual accounts with their own filtering scheme and elements while locating the filtering system on an ISP [(Internet Service Provider)] server.” Appeal 2019-004068 Application 13/264,480 21 See BASCOM, 827 F.3d at 1350. BASCOM’s claimed ordered combination “improve[s] the performance of the computer system itself” with a “technology-based solution . . . to filter content on the Internet that overcomes existing problems with other Internet filtering systems.” See BASCOM, 827 F.3d at 1351–52 (internal citation omitted). By contrast, Appellant’s invention uses generically-claimed computing and network elements to perform the abstract idea. (Ans. 4, 7–10.) As our reviewing court has observed, “after Alice, there can remain no doubt: recitation of generic computer limitations does not make an otherwise ineligible claim patent-eligible.” DDR Holdings, 773 F.3d at 1256 (citing Alice, 573 U.S. at 222–23); see also SiRF Tech., Inc. v. Int’l Trade Comm’n, 601 F.3d 1319, 1333 (Fed. Cir. 2010) (“In order for the addition of a machine to impose a meaningful limit on the scope of a claim, it must play a significant part in permitting the claimed method to be performed, rather than function solely as an obvious mechanism for permitting a solution to be achieved more quickly, i.e., through the utilization of a computer for performing calculations.”). We are also not persuaded that the “combination of claim features [in claim 1] . . . is not well known, routine or conventional.” (See Reply Br. 14– 17.) Appellant’s Specification describes generic computing and networking elements performing generic data processing, transmission, receipt, and display functions, and Appellant’s claim 1 uses generic technology to perform the data processing, transmission, and display. (Ans. 8–11; see Spec. ¶¶ 14, 19, 21, 26, 36, 39, 40.) We find the Examiner’s referencing the generic nature of the computing and networking elements and steps as discussed in Appellant’s Specification and recited in Appellant’s claims Appeal 2019-004068 Application 13/264,480 22 (see, e.g., Ans. 9–11, 15–17 and Final Act. 21–22) provides sufficient evidence of generic processor, storage device, network, and electronic communication used to implement the abstract idea recited in the claims. (Ans. 9–10, 15–17 (citing Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d 1307, 1321 (Fed. Cir. 2016) (receiving, screening, and distributing email is well known); Versata Dev. Group, Inc. v. SAP Am., Inc., 793 F.3d 1306, 1334 (Fed. Cir. 2015) (receiving, storing, retrieving, sorting, and eliminating information is well known); OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1363 (Fed. Cir. 2015) (noting that storing data is well- understood, routine, and conventional and does not render claims eligible)); see also Content Extraction & Transmission LLC v. Wells Fargo Bank, Nat’l Ass’n, 776 F.3d 1343, 1347 (Fed. Cir. 2014) (discussing that data collection, recognition, and storage is well known); Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1355 (Fed. Cir. 2016) (finding that use of “conventional computer, network, and display technology for gathering, sending, and presenting the desired information” does not add significantly more to the claimed abstract idea); CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1375 (Fed. Cir. 2011) (“[T]he incidental use of a computer to perform the [claimed process] does not impose a sufficiently meaningful limit on the claim’s scope.”).) “[T]he use of generic computer elements like a microprocessor or user interface” to perform conventional computer functions “do not alone transform an otherwise abstract idea into patent- eligible subject matter.” FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1096 (Fed. Cir. 2016) (citing DDR Holdings, 773 F.3d at 1256); see also BSG Tech LLC v. BuySeasons, Inc., 899 F.3d 1281, 1286–87 (Fed. Cir. Appeal 2019-004068 Application 13/264,480 23 2018) (“claims are not saved from abstraction merely because they recite components more specific than a generic computer”). Appellant also argues “all of the prior art rejections were withdrawn” would confirm the claimed features “cannot be considered well known, routine or conventional” and “the independent claims recite significantly more than the abstract idea.” (Reply Br. 15; Appeal Br. 26.) This improperly conflates the test for 35 U.S.C. § 101 with the separate tests for 35 U.S.C. §§ 102 and 103. See, e.g., Genetic Techs. Ltd. v. Merial L.L.C., 818 F.3d 1369, 1376 (Fed. Cir. 2016) (“[U]nder the Mayo/Alice framework, a claim directed to a newly discovered law of nature (or natural phenomenon or abstract idea) cannot rely on the novelty of that discovery for the inventive concept necessary for patent eligibility.”). As the Supreme Court emphasizes, “[t]he ‘novelty’ of any element or steps in a process, or even of the process itself, is of no relevance in determining whether the subject matter of a claim falls within the § 101 categories of possibly patentable subject matter.” Diamond v. Diehr, 450 U.S. 175, 188–89 (1981) (emphasis added). Thus, a novel and nonobvious claim directed to a purely-abstract idea is, nonetheless, patent-ineligible. See Mayo, 566 U.S. at 89–91 (2012). Because Appellant’s representative claim 1, and grouped claims 8 and 15 are directed to a patent-ineligible abstract concept and do not recite an “inventive concept” by providing a solution to a technical problem under the second step of the Alice analysis, we sustain the Examiner’s § 101 rejection of independent claims 1, 8, and 15, and their dependent claims 2, 4, 6, 9, 12, 13, 17, 19, and 21–23. Appeal 2019-004068 Application 13/264,480 24 CONCLUSION The Examiner’s rejection of claims 1, 2, 4, 6, 8, 9, 12, 13, 15, 17, 19, and 21–23 under 35 U.S.C. § 101 is AFFIRMED. In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 2, 4, 6, 8, 9, 12, 13, 15, 17, 19, 21–23 101 Eligibility 1, 2, 4, 6, 8, 9, 12, 13, 15, 17, 19, 21–23 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED Copy with citationCopy as parenthetical citation