Adobe Inc.

Patent Trials and Appeals Board

Mar 18, 2021

2020003018 (P.T.A.B. Mar. 18, 2021)

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.
14/551,975 11/24/2014 Philip S. Thomas P5014-US 4799
108982 7590 03/18/2021
FIG. 1 Patents
116 W. Pacific Avenue
Suite 200
Spokane, WA 99201
EXAMINER
SHORTER, RASHIDA R
ART UNIT PAPER NUMBER
3681
NOTIFICATION DATE DELIVERY MODE
03/18/2021 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):
Fig1Docket@fig1patents.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte PHILIP S. THOMAS, GEORGIOS THEOCHAROUS,
and MOHAMMAD GHAVAMZADEH
____________

Appeal 2020-0030181
Application 14/551,975
Technology Center 3600
____________

Before MURRIEL E. CRAWFORD, BRUCE T. WIEDER, and
AMEE A. SHAH, Administrative Patent Judges.

SHAH, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), the Appellant2 appeals from the
Examiner’s final decision to reject claims 1–14 and 21–26, which are all the
claims pending in this application. We have jurisdiction under 35 U.S.C.
§ 6(b). We AFFIRM.

1 We note related appeal 2020-003125 for application 14/552,047.
2 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. The Appellant identifies the real party in interest as
Adobe, Inc. Appeal Br. 3.
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CLAIMED SUBJECT MATTER
The Appellant’s invention relates generally to “[r]isk quantification,
policy search, and automated safe policy deployment techniques.” Spec.
¶ 4. More particularly, the invention relates to employing policies “to
determine which advertisements to select for inclusion with content that is to
be sent to particular users” using “techniques . . . in which risk for
deployment of a policy is quantifiable, which is utilized to support a variety
of functionality.” Id. ¶¶ 24, 26.
Claims 1, 11, and 21 are the independent claims on appeal. Claim 1 is
illustrative of the subject matter on appeal and is reproduced below (lettered
bracketing added for reference).
1. In a digital medium environment a method implemented by a
computing device, the method comprising:
[(a)] controlling, by the computing device, replacement of
one or more deployed polices [sic] of a content provider that are
used to select advertisements with at least one policy of a
plurality of policies, the controlling including:
[(a1)] receiving an input via a user interface
specifying a threshold measure of performance and a level
of confidence;
[(a2)] determining the at least one policy exhibits a
measure of performance greater than the threshold
measure of performance;
[(a3)] computing one or more statistical guarantees
of the measure of performance through use of
reinforcement learning and a concentration inequality
based on deployment data generated by the one or more
deployed policies;
[(a4)] determining the measure of performance is
within the level of confidence as indicated by the one or
more statistical guarantees; and
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[(a5)] responsive to determining the measure of
performance is within the level of confidence, causing
replacement of the one or more deployed policies with the
at least one policy;
[(b)] selecting, by the computing device, at least one
advertisement based on the at least one policy; and
[(c)] deploying, by the computing device, the selected
advertisement.
Appeal Br. 30 (Claims App.).

THE REJECTION
Claims 1–14 and 21–26 stand rejected under 35 U.S.C. § 101 as being
directed to a judicial exception without significantly more.

OPINION
35 U.S.C. § 101 Framework
The Appellant argues the pending claims as a group. See Appeal
Br. 12. We select independent claim 1 as representative of the group. The
remaining claims stand or fall with claim 1, see 37 C.F.R. § 41.37(c)(1)(iv),
except we also consider the Appellant’s separate assertions with respect to
dependent claims 2, 8, and 22 (see Appeal Br. 21–22).

Section 101
An invention is patent-eligible if it claims a “new and useful process,
machine, manufacture, or composition of matter.” 35 U.S.C. § 101.
However, the U.S. Supreme Court has long interpreted 35 U.S.C. § 101 to
include implicit exceptions: “[l]aws of nature, natural phenomena, and
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abstract ideas” are not patentable. E.g., Alice Corp. v. CLS Bank Int’l,
573 U.S. 208, 216 (2014).
In determining whether a claim falls within an excluded category, we
are guided by the Court’s two-part framework, described in Mayo and Alice.
Id. at 217–18 (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc.,
566 U.S. 66, 75–77 (2012)). In accordance with that framework, we first
determine what concept the claim is “directed to.” See Alice, 573 U.S.
at 219 (“On their face, the claims before us are drawn to the concept of
intermediated settlement, i.e., the use of a third party to mitigate settlement
risk.”); see also Bilski v. Kappos, 561 U.S. 593, 611 (2010) (“Claims 1 and 4
in petitioners’ application explain the basic concept of hedging, or protecting
against risk.”).
Concepts determined to be abstract ideas, and thus patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219–20; Bilski, 561 U.S. at 611);
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594–95 (1978)); and
mental processes (Gottschalk v. Benson, 409 U.S. 63, 67 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as “molding rubber products” (Diamond v. Diehr, 450 U.S. 175, 191
(1981)); “tanning, dyeing, making waterproof cloth, vulcanizing India
rubber, smelting ores” (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S.
252, 267–68 (1853))); and manufacturing flour (Benson, 409 U.S. at 69
(citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
In Diehr, the claim at issue recited a mathematical formula, but the
Court held that “a claim drawn to subject matter otherwise statutory does not
become nonstatutory simply because it uses a mathematical formula.”
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Diehr, 450 U.S. at 187; see also id. at 191 (“We view respondents’ claims as
nothing more than a process for molding rubber products and not as an
attempt to patent a mathematical formula.”). Having said that, the Court
also indicated that a claim “seeking patent protection for that formula in the
abstract . . . is not accorded the protection of our patent laws, and this
principle cannot be circumvented by attempting to limit the use of the
formula to a particular technological environment.” Id. (citations omitted)
(citing Benson and Flook); see, e.g., id. at 187 (“It is now commonplace that
an application of a law of nature or mathematical formula to a known
structure or process may well be deserving of patent protection.”).
If the claim is “directed to” an abstract idea, we turn to the second
step of the Alice and Mayo framework, where “we must 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 (quotation marks omitted).
“A claim that recites an abstract idea must include ‘additional features’ to
ensure ‘that the [claim] is more than a drafting effort designed to
monopolize the [abstract idea].’” Id. (alterations in original) (quoting Mayo,
566 U.S. at 77). “[M]erely requir[ing] generic computer implementation[]
fail[s] to transform that abstract idea into a patent-eligible invention.” Id.
USPTO Section 101 Guidance
We are also guided by U.S. Patent and Trademark Office (“USPTO”)
guidance, as set forth in the 2019 Revised Patent Subject Matter Eligibility
Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (“Guidance”) and the October
2019 Update: Subject Matter Eligibility (“October 2019 Update”),
incorporated into the MANUAL OF PATENT EXAMINING PROCEDURE
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§§ 2104–06, Rev. 10.2019 (“MPEP”) in June 2020. “The guidance sets out
agency policy with respect to the USPTO’s interpretation of the subject
matter eligibility requirements of 35 U.S.C. § 101 in view of decisions by
the Supreme Court and the Federal Circuit.” Guidance, 84 Fed. Reg. at 51.
Although “[a]ll USPTO personnel are, as a matter of internal agency
management, expected to follow the guidance,” the guidance “does not
create any right or benefit, substantive or procedural, enforceable by any
party against the USPTO.” Id. The Guidance, by its terms, applies to all
applications, and to all patents resulting from applications, filed before, on,
or after January 7, 2019. Id. at 50.
Under USPTO guidance, we first look to whether the claim recites:
(1) any judicial exceptions, including laws of nature, natural phenomena,
and products of nature (see MPEP §§ 2106.04(II)(A)(1), 2106.04(b))
(“Step 2A, Prong One”); and (2) additional elements that integrate the
judicial exception into a practical application (see id. §§ 2106.04(II)(A)(2),
2106.04(d)) (“Step 2A, Prong Two”).3
Only if a claim (1) recites a judicial exception and (2) does not
integrate that exception into a practical application, do we then look, under

3 This evaluation is performed by (a) identifying whether there are any
additional elements recited in the claim beyond the judicial exception, and
(b) evaluating those additional elements individually and in combination to
determine whether the claim as a whole integrates the exception into a
practical application. “A claim that integrates a judicial exception into a
practical application will apply, rely on, or use the judicial exception in a
manner that imposes a meaningful limit on the judicial exception, such that
the claim is more than a drafting effort designed to monopolize the judicial
exception.” See Guidance - Section III(A)(2), 84 Fed. Reg. at 54–55; MPEP
§ 2106.04(d).
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Step 2B, to whether the additional elements, individually or in combination,
provide an inventive concept. See MPEP §§ 2106(III), 2106.05. “An
inventive concept ‘cannot be furnished by the unpatentable law of nature (or
natural phenomenon or abstract idea) itself.’” Id. § 2106.05 (quoting
Genetic Techs. v. Merial LLC, 818 F.3d 1369, 1376 (Fed. Cir. 2016)).
Among the considerations in determining whether the additional elements,
individually or in combination, amount to significantly more than the
exception itself, we look to whether they add a specific limitation beyond the
judicial exception that is not “well-understood, routine, conventional” in the
field or simply append well-understood, routine, conventional activities
previously known to the industry, specified at a high level of generality, to
the judicial exception. MPEP § 2106.05(II); Guidance, 84 Fed. Reg. at 56.
Step One of the Mayo/Alice Framework
Under the first step of the Mayo/Alice framework and Step 2A of
USPTO guidance, we first determine to what claim 1 is directed, i.e.,
whether the claim recites an abstract idea and if so, whether the claim is
directed to that abstract idea. The Federal Circuit has explained that “the
‘directed to’ inquiry applies a stage-one filter to claims, considered in light
of the specification, based on whether ‘their character as a whole is directed
to excluded subject matter.’” Enfish, LLC v. Microsoft Corp., 822 F.3d
1327, 1335 (Fed. Cir. 2016) (quoting Internet Patents Corp. v. Active
Network, Inc., 790 F.3d 1343, 1346 (Fed. Cir. 2015)). It asks whether the
focus of the claim is on a specific improvement in relevant technology or on
a process that itself qualifies as an “abstract idea” for which computers are
invoked merely as a tool. See id. at 1335–36. Here, it is clear from the
Specification, including the claim language, that claim 1 focuses on an
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abstract idea, and not on any improvement to technology and/or a technical
field.
Under the first step of the Mayo/Alice framework and Step 2A, Prong
One of USPTO guidance, we agree with and adopt the Examiner’s findings
and determinations that claim 1 “describe[s] or set[s]-forth optimizing the
deployment of advertising campaigns, which amounts to a fundamental
practice and/or advertising, marketing or sales activities or behaviors” by
using mathematical concepts and mental processes. Final Act. 5–6,
Ans. 4–8. We add the following for emphasis.
We disagree with the Appellant’s contention that claim 1 does not
recite an abstract idea because it does not fall within one of the enumerated
categories of USPTO guidance. See Appeal Br. 13–19, Reply Br. 3–11.
Claim 1 recites a method including controlling replacement of deployed
policies with a policy having a measure of performance within a calculated
level, selecting an advertisement based on that new policy, and deploying
the advertisement. As such, claim 1 recites a way of selecting and deploying
an advertisement based on the results of analyses. This is an abstract idea of
a “[c]ertain method[] of organizing human activity—fundamental economic
principles or practices . . . commercial or legal interactions (including . . .
advertising, marketing or sales activities or behaviors. . . ” Guidance,
84 Fed. Reg. at 52; MPEP §§ 2106.04(a)(2)(II); see also Ans. 5.
The analyses comprise determinations performed by comparisons of
greater than a threshold and within a level of confidence, and a computation
performed by reinforcement learning and a concentration inequality. The
limitations are recited functionally without details on how, technologically
or by what algorithm, they are performed. Although the claim does not
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recite the specific mathematical numbers, formulas, equations, or operations
(see Appeal Br. 14), the Specification is clear that the reinforcement learning
and concentration inequality employ mathematical algorithms. See Spec.
¶ 27 (defining reinforcement learning as “a type of machine learning in
which software agents are executed to take actions in an environment to . . .
maximize performance of a policy to select advertisements”), ¶ 28 (“The
concentration inequality is employed as part of reinforcement learning to
insure safety that the new policy exhibits performance of at least an amount
of the deployed policy”), ¶¶ 29, 47–76 (describing the mathematical
concepts, formulas, and algorithms used for the reinforcement learning and
concentration inequality). As such the analyses comprise comparing data,
i.e., “[m]ental processes—concepts performed in the human mind (including
an observation, evaluation, judgment, opinion)” and performing
mathematical algorithms, i.e., “Mathematical concepts—mathematical
relationships, mathematical formulas or equations, mathematical
calculations.” Guidance, 84 Fed. Reg. at 52; MPEP §§ 2106.04(a)(2)(I),
2106.04(a)(2)(III); see also Ans. 5, 6–8.
We note that our reviewing court has held similar concepts to be
abstract. For example, the Federal Circuit has held abstract the concepts of
“customizing a user interface” such as with targeted advertising based on
demographic information in Affinity Labs of Texas, LLC v. Amazon.com,
Inc., 838 F.3d 1266, 1271 (Fed. Cir. 2016) (“Amazon”), “targeted
advertising and bidding to display the advertising, which are both abstract
ideas relating to customizing information based on the user and matching
them to the advertiser” in In re Morsa, 809 F. App’x 913, 917 (Fed. Cir.
2020), cert. denied sub nom. Morsa v. Iancu, No. 20-32, 2020 WL 5883301
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(U.S. Oct. 5, 2020), reh’g denied, No. 20-32, 2020 WL 6551927 (U.S. Nov.
9, 2020); collecting, analyzing, and displaying the results in Electric Power
Group, LLC v. Alston, S.A., 830 F.3d 1350, 1354 (Fed, Cir. 2016),
collecting, analyzing, manipulating, and processing data and displaying the
results of the analysis, manipulation, and processing in Intellectual
Ventures I LLC v. Capital One Financial Corp., 850 F.3d 1332, 1340 (Fed.
Cir. 2017) (“Capital One Fin.”), and “selecting certain information,
analyzing it using mathematical techniques, and reporting or displaying the
results of the analysis” in SAP America, Inc. v. InvestPic, LLC, 898 F.3d
1161, 1167 (Fed. Cir. 2018).
Regarding the Appellant’s apparent contention that claim 1 cannot
recite a mental process because “the human mind is not equipped to perform
‘computing one or more statistical guarantees of the measure of performance
through use of reinforcement learning and a concentration inequality based
on deployment data generated by the one or more deployed policies’” and
because “it is not possible to perform [the step of receiving input via] ‘a user
interface’ in the human mind or using pen and paper” (Appeal Br. 18), we
note that “[c]ourts have examined claims that required the use of a computer
and still found that the underlying, patent-ineligible invention could be
performed via pen and paper or in a person’s mind.” Versata Dev. Grp., Inc.
v. SAP Am., Inc., 793 F.3d 1306, 1335 (Fed. Cir. 2015).; see also Content
Extraction & Transmission LLC v. Wells Fargo Bank, Nat. Ass’n, 776 F.3d
1343, 1347 (Fed. Cir. 2014) (in response to an argument that “human minds
are unable to process and recognize the stream of bits output by a scanner,”
the court noted that “the claims in Alice also required a computer that
processed streams of bits, but nonetheless were found to be abstract.”). We
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are also not persuaded by the Appellant’s argument that the Examiner’s
“interpretations ignore the plain language of the claims.” Appeal Br. 18; see
also Reply Br. 9–10. We note that the claim does not recite precisely how
the reinforcement learning is “used” and that, as discussed above, the
reinforcement learning can comprise mathematical algorithms. We further
note that receiving data is an extra-solution activity. See Electric Power,
830 F.3d at 1353–54; In re Bilski, 545 F.3d 943, 963 (Fed. Cir. 2008) (en
banc), aff’d sub nom Bilski v. Kappos, 561 U.S. 593 (2010) (characterizing
data gathering steps as insignificant extra-solution activity).
Under the first step of the Mayo/Alice framework and Step 2A, Prong
Two of USPTO guidance, we agree with and adopt the Examiner’s findings
and conclusion that the additional limitations of claim 1 do not integrate the
abstract idea into a practical application, as the term is used in USPTO
guidance. See Final Act. 7–9, Ans. 4. We add the following for emphasis.
We are not persuaded of Examiner error by the Appellant’s argument
that claim 1 is “integrated into a practical application [because it includes]
an element that reflects an improvement in the functioning of a computer, or
an improvement to other technology or technical field.” Appeal Br. 19; see
also id. at 20–22, Reply Br. 12–13. Rather, we agree with and adopt the
Examiner’s findings and conclusion that claim 1 does not reflect an
improvement to the functioning of the computer, technology or other
technical field. See Final Act. 7, 13–14; Ans. 9–11. As the Appellant states,
the prior art deficiencies lie in “not hav[ing] a mechanism for bounding or
quantifying accuracy of whether a new policy will perform better than a
currently deployed policy” so that users were forced “to make a best guess
as to whether this new policy will have better performance, e.g., result in an
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increased number of selections of the advertisement, result in an increased
number of conversions in which the user purchased the good or service, and
so on.” Appeal Br. 19 (citing Spec. ¶ 25). These are not problems rooted in
technology, but rather problems related to effective advertising, an abstract
idea. See Morsa, 809 F. Appx. at 917; cf. Appeal Br. 27 (arguing that the
claim is similar to those of DDR Holdings).
The invention here aims to address these issues by providing
“techniques . . . in which risk for deployment of a policy is quantifiable,
which is utilized to support a variety of functionality” by accessing and
processing “data describing deployment of existing policies . . . to determine
whether the new policy will exhibit increased performance over the existing
policies.” Id. at 19–20 (citing Spec. ¶ 26). This determination is “performed
through calculation of confidence values that express the confidence that
performance of the new policy will meet at least a defined value (e.g., which
may be based on performance of the deployed policy) and thus act as a
statistical guarantee of this performance.” Id. at 20 (citing Spec. ¶ 26).
The alleged improvements, i.e., “to improve efficiency in the
calculation of policy selection,” “(1) guaranteeing that a new policy will be
an improvement relative to an existing deployed policy; (2) increasing and
improving the accuracy of such guarantees; and (3) increasing and
improving selection and location of policies” (id. at 21), are improvements
to the process and business field of better advertising by the processing and
determining of data through the use of calculations, and to the accuracy of
such calculations, the abstract idea itself, and not to any technology, i.e., to
the claimed computer components themselves. See BSG Tech LLC v.
BuySeasons, Inc., 899 F.3d 1281, 1287–88 (Fed. Cir. 2018); see also
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Customedia Techs., LLC v. Dish Network Corp., 951 F.3d 1359, 1364 (Fed.
Cir. 2020) (“To be a patent-eligible improvement to computer functionality,
we have required the claims to be directed to an improvement in the
functionality of the computer or network platform itself.”). Similarly,
dependent claims 2, 8, and 22 reciting the limitations of setting a threshold
to exhibit an improved measure of performance and computing a direction in
policy that points toward a safe region (see Appeal Br. 21–22) at best
improve the process and not any claimed technology. See Ans. 9–10.
Further, the purported solution comprises a generic computing device
operating in its ordinary and conventional capacity. See Spec. ¶ 32 (“A
computing device, for instance, is configurable as a desktop computer, a
laptop computer, a mobile device (e.g., assuming a handheld configuration
such as a tablet or mobile phone), and so forth.”); see also Alice, 573 U.S. at
224–26. The Appellant does not contend that it invented any of the claimed
components (i.e., the digital medium environment, computing device, or
user interface), or their basic functions or that those components, claimed
generally, were unknown in the art as of time of the invention. Amazon, 838
F.3d at 1270. As the court in DDR Holdings noted, “not all claims
purporting to address Internet-centric challenges are eligible for patent.”
773 F.3d at 1258. Here, the “focus” of the claim is not “on the specific
asserted improvement in computer capabilities” (Enfish, 822 F.3d at 1336),
but rather on using a computer to “maximize performance of a policy to
select advertisements such as to increase a number of selections of an
advertisement (e.g., ‘clicks’), conversions of the advertisement (e.g., resulted
in ‘buys’), and so forth” (Spec. ¶ 27) in a digital medium and via a user
interface. See Bancorp Servs., L.L.C. v. Sun Life Assurance Co. of Can., 687
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F.3d 1266, 1278 (Fed. Cir. 2012) (the fact that the required calculations
could be performed more efficiently via a computer does not materially alter
the patent-eligibility of the claimed subject matter.”); Intellectual Ventures I
LLC v. Capital One Bank (USA), 792 F.3d 1363, 1367, 1370 (Fed. Cir.
2015) (“[O]ur precedent is clear that merely adding computer functionality
to increase the speed or efficiency of the process does not confer patent
eligibility on an otherwise abstract idea”); Alice, 573 U.S. at 223 (holding
that attempting to limit the use of an abstract idea to a particular
technological environment does not make a claim patent-eligible) (quoting
Bilski, 561 U.S. at 610–11); DIRECTV, LLC, 838 F.3d 1253, 1259 (Fed. Cir.
2016) (“[M]erely limiting the field of use of the abstract idea to a particular
existing technological environment does not render the claim[] any less
abstract”); see also Ans. 10.
The Appellant’s argument that claim 1’s elements of computing and
determining “are meaningful limitations such that the claim as a whole is
more than a drafting effort to monopolize a judicial exception” (Appeal
Br. 22) does not persuade us that these limitations integrate the judicial
exception into a practical application. Although the Supreme Court has
described “the concern that drives this exclusionary principle[, i.e., the
exclusion of abstract ideas from patent-eligible subject matter,] as one of
pre-emption” (see Alice, 573 U.S. at 216), characterizing preemption as a
driving concern for patent eligibility is not the same as characterizing
preemption as the sole test for patent eligibility. “The Supreme Court has
made clear that the principle of preemption is the basis for the judicial
exceptions to patentability” and “[f]or this reason, questions on preemption
are inherent in and resolved by the § 101 analysis.” Ariosa Diagnostics, Inc.
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v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015) (citing Alice, 573
U.S. at 216). Although “preemption may signal patent ineligible subject
matter, the absence of complete preemption does not demonstrate patent
eligibility.” Id.
We are also not persuaded by the Appellant’s argument that claims 1
and 8 are “directed to a particular improvement in computer-based policy
deployment technology” similar to hypothetical Example 40 of USPTO’s
“Subject Matter Eligibility Examples: Abstract Ideas,” available at
https://www.uspto.gov/sites/default/files/documents/
101_examples_37to42_20190107.pdf) (“Examples”) issued in conjunction
with the Guidance. Appeal Br. 23–24. That hypothetical example relates to
“Adaptive Monitoring of Network Traffic Data.” Examples 10. The
USPTO considered hypothetical claim 1, as a whole, to be “directed to a
particular improvement in collecting traffic data,” because “the method
limits collection of additional Netflow protocol data to when the initially
collected data reflects an abnormal condition, which avoids excess traffic
volume on the network and hindrance of network performance. The
collected data can then be used to analyze the cause of the abnormal
condition,” providing “a specific improvement over prior systems, resulting
in improved network monitoring.” Id. at 11. Conversely, in hypothetical
claim 2, the collecting step was “recited at a high level of generality (i.e., as
a general means of gathering network traffic data for use in the comparison
step), and amount[ed] to mere data gathering, which is a form of
insignificant extra-solution activity.” Id. at 12. Here, there is no such
improvement to network monitoring or any technology. As discussed
above, any improvement lies in the process of deploying a selected
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advertisement based on a more effective policy. Claims 1 and 8 here are
similar to hypothetical claim 2 whereby the steps are recited at a high level
of generality, and “[e]ach of the additional limitations is no more than mere
instructions to apply the exception using a generic computer.” Id.; see also
Ans. 10–11.
Similarly, we are not persuaded by the Appellant’s argument that
“like Example 37, the claims recite additional elements of a specific manner
of replacement of the one or more deployed policies. Both Example 37 and
the claims include a user interface and recite a specific manner of interaction
with the user interface.” Appeal Br. 25; see also id. at 24. First, replacing
one or more deployment policies as recited in claim 1 is not an additional
element; instead, it is part of the abstract idea itself. The only additional
elements recited in claim 1 beyond the abstract idea are “digital medium
environment,” i.e., the field of use, and “a computing device” that includes
“a user interface,” i.e., a generic computer used as a tool to perform the
abstract idea.4 See Final Act. 7–8.
Second, the USPTO determined that hypothetical claim 1 in
Example 37 integrates the recited abstract idea, i.e., a mental process, into a
practical application because the additional elements (i.e., receiving, via a

4 In the Reply Brief, the Appellant newly argues “the Examiner did not
evaluate the user interface as an additional element or in any other manner in
the Final Office Action dated October 16, 2019.” Reply Br. 11 (emphasis
omitted). Because this argument was not raised in the Appeal Brief, is not
responsive to an argument raised in the Examiner’s Answer, and good cause
has not been shown, we do not consider this new argument. 37 C.F.R.
§ 41.41(b)(2). However, we note that the Specification provides for a
generic user interface operating in its ordinary capacity to receive input. See
Spec. ¶¶ 122, 125.
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GUI, a user selection to organize each icon based on the amount of use of
each icon, a processor for performing the determining step, and
automatically moving the most used icons to a position on the GUI closest to
the start icon of the computer system based on the determined amount of
use) “recite a specific manner of automatically displaying icons to the user
based on usage[,] which provides a specific improvement over prior
systems, resulting in an improved user interface for electronic devices.”
Examples 2–3. Put simply, the hypothetical claim requires the GUI to
function in a specific manner that results in an improved user interface for
electronic devices. Claim 1 here does not provide an improvement to the
interface comparable to that of hypothetical claim 1. The Appellant’s
claim 1, at best, provides an improvement to the abstract idea of optimizing
the deployment of advertising campaigns, which, as described above, is not
enough for patent eligibility. Rather, the Appellant’s claim 1 is akin to
hypothetical claim 3 of Example 37. Similar to claim 1 here, hypothetical
claim 3 recites one additional element — a processor recited at a high level
of generality, i.e., as a generic processor performing a generic computer
function of processing data — that the USPTO determines “does not
integrate the abstract idea into a practical application because it does not
impose any meaningful limits on practicing the abstract idea.” Examples 5.
Thus, we are not persuaded of error in the Examiner’s determination
that claim 1, 2, 8, and 22 are directed to an abstract idea.

Step Two of the Mayo/Alice Framework
Under the second step in the Mayo/Alice framework and USTPO
guidance Step 2B, we “[e]valuat[e] additional elements to determine
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whether they amount to an inventive concept [which] requires considering
them both individually and in combination to ensure that they amount to
significantly more than the judicial exception itself.” MPEP § 2106.05(I).
Here, we agree with and adopt the Examiner’s findings and conclusion that
claim 1’s limitations, when considered individually and in combination, “do
not qualify as ‘significantly more.” Final Act. 9; see also id. at 10–11;
Ans. 11–14. We add the following for emphasis.
The “Appellant submits that the claims include limitations that are not
well-understood, routine, conventional activity in the field.” Appeal Br. 25.
The Appellant argues that, for example, limitation (a3) of computing
statistical guarantees through use of reinforcement learning and a
concentration inequality based policy-generated data is not well-understood,
routine, or conventional in the field. Id. at 25–26.
As discussed above, under Step 2B, we look to whether the additional
elements beyond the abstract idea, individually or in combination, provide
an inventive concept. Guidance, 84 Fed. Reg. at 55; MPEP § 2106.05(I).
Alice is clear, as described above, that under step two of the Mayo/Alice
framework, the elements of each claim are considered both individually and
“as an ordered combination” to determine whether the additional elements,
i.e., the elements other than the abstract idea itself, “transform the nature of
the claim” into a patent-eligible application. Alice, 573 U.S. at 217. In other
words, the inventive concept under step two of the Mayo/Alice framework
cannot be the abstract idea itself: “It is clear from Mayo that the ‘inventive
concept’ cannot be the abstract idea itself, and Berkheimer [v. HP Inc., 881
F.3d 1360 (Fed. Cir. 2018) (“Berkheimer”)] . . . leave[s] untouched the
numerous cases from this court which have held claims ineligible because
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the only alleged ‘inventive concept’ is the abstract idea.” Berkheimer v. HP,
Inc., 890 F.3d 1369, 1374 (Fed. Cir. 2018) (Order, On Petition for rehearing
en banc, May 31, 2018) (Moore, J., concurring) (Berkheimer II); see also
BSG Tech, LLC. V. BuySeasons, Inc., 899 F.3d 1281, 1290 (Fed. Cir. 2018)
(“It has been clear since Alice that a claimed invention’s use of the ineligible
concept to which it is directed cannot supply the inventive concept that
renders the invention ‘significantly more’ than that ineligible concept.”).
Here, the Examiner properly considers the additional elements outside
the abstract idea and determines they do not transform the nature of the
claim into a patent-eligible application. See Final Act. 9–10. The elements
to which the Appellant refers, i.e., computing statistical guarantees through
reinforcement learning and a concentration inequality (Appeal Br. 25–26),
replacing an existing policy with the policy determined to be within the
computed measure of performance (id. at 27), and receiving input via a user
interface specifying a threshold measure (id. at 28) are, as also discussed
above, abstract ideas themselves — a mathematical concept and mental
process — and part of the abstract idea as a whole as well as an extra-
solution activity of receiving data. They are not additional elements to be
considered when determining whether claim 1 includes additional elements
or a combination of elements that is sufficient to amount to significantly
more than the judicial exception. And, as discussed above, the only claim
elements beyond the abstract idea are the digital medium environment in
which the process is used and the computing device including a user
interface device that performs the steps, recited generally, that the
Specification indisputably shows were conventional at the time of the filing.
See supra.
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We agree with and adopt the Examiner’s findings and determinations
that taking the claimed elements separately, the functions performed by the
computing device are purely conventional. See Final Act. 9–10. We also
agree with and adopt the Examiner’s findings and determinations that:
When considered as an ordered combination, the additional
components of the claims add nothing that is not already present
when considered separately, and thus simply append the abstract
idea with words equivalent to “apply it” on a generic computer
and/or mere instructions to implement the abstract idea on a
generic computer, append the abstract idea with insignificant
extra solution activity associated with the implementation of the
judicial exception, (e.g., mere data gathering, post-solution
activity), and appended with well-understood, routine and
conventional activities previously known to the industry.
Id. at 10.
To the extent the Appellant argues that claim 1 recites elements that
amount to significantly more than the abstract idea because “the claims
include an inventive concept because the claims are not rejected under
35 U.S.C. § 102/103” (Appeal Br. 25), an abstract idea does not transform
into an inventive concept just because the prior art does not disclose or
suggest it. See Mayo, 566 U.S. at 78. “Groundbreaking, innovative, or even
brilliant discovery does not by itself satisfy the § 101 inquiry.” Ass’n for
Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 591 (2013).
Indeed, “[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.” Diehr, 450 U.S. at 188–89; see also Mayo, 566 U.S. at 91
(rejecting “the Government’s invitation to substitute §§ 102, 103, and 112
inquiries for the better established inquiry under § 101”).
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We disagree that claim 1 is similar to those in Ancora Technologies,
Inc. v. HTC America, Inc., 908 F.3d 1343 (Fed. Cir. 2018). Appeal
Br. 26–27. The Appellant repeats the argument that “the claims are directed
to several improvements to computer-based policy deployment technology”
because they “improve[] computer technology by (1) guaranteeing that a
new policy will be an improvement relative to an existing deployed policy;
(2) increasing and improving the accuracy of such guarantees; and
(3) increasing and improving selection and location of policies.” Id.; see
also id. at 21–22. As discussed above, the improvements are to the business
process and not to any claimed technology. Unlike the Appellant’s claims,
the claims in Ancora recited a specific improvement in computer technology
“by a specific technique that departs from earlier approaches to solve a
specific computer problem,” the “functionality improvement . . . effectuated
in an assertedly unexpected way” of moving a software-verification structure
to a location not previously used for this purpose, thereby altering how the
security verification function is performed. Ancora, 908 F.3d at 1348–50.
Here, as discussed above, there is nothing that the claimed computing device
could not have done before, technologically, nor is there a technologically
unconventional solution to solve a problem rooted in computers; rather,
claim 1 merely uses a computer as a tool to guarantee a new policy is an
improvement over an existing policy, improve the accuracy of the guarantee,
and improve the selection of the policy. See Appeal Br. 21–22, 26–27.
We are unpersuaded of error by the Appellant’s argument that claim 1
recites significantly more than the abstract idea because, like DDR Holdings,
the claim provides a “solution [that] is necessarily rooted in computing
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technology because the claims cannot be performed without the computing
technology” (Appeal Br. 28) for the reasons discussed above.
Thus, we are not persuaded of error in the Examiner’s determination
that the additional elements of claim 1, considered individually and as an
ordered combination, do not amount to significantly more than the abstract
idea itself.
We sustain the Examiner’s rejection under 35 U.S.C. § 101 of
independent claim 1 and thus also of claims 2–14 and 21–26.

CONCLUSION
The Examiner’s decision to reject claims 1–14 and 21–26 is sustained.
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/
Basis
Affirmed Reversed
1–14, 21–26 101 Eligibility 1–14, 21–26

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