Ayman Omar. Farahat et al.

Patent Trials and Appeals Board

Feb 7, 2020

14011181 - (D) (P.T.A.B. Feb. 7, 2020)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
14/011,181 08/27/2013 Ayman Omar Farahat 2893US01 2407
108982 7590 02/07/2020
SBMC
116 W. Pacific Avenue
Suite 200
Spokane, WA 99201
EXAMINER
CIRNU, ALEXANDRU
ART UNIT PAPER NUMBER
3681
NOTIFICATION DATE DELIVERY MODE
02/07/2020 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):
docket@sbmc-law.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte AYMAN OMAR FARAHAT and ABHISHEK PANI
____________

Appeal 2018-008967
Application 14/011,181
Technology Center 3600
____________

Before CAROLYN D. THOMAS, IRVIN E. BRANCH, and
SCOTT RAEVSKY, Administrative Patent Judges.

THOMAS, Administrative Patent Judge.

DECISION ON APPEAL

Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–5, 7–9, and 11–22. Claims 6 and 10
are canceled. We have jurisdiction over the appeal under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies the real party in interest as Adobe
Systems, Inc. Appeal Br. 3.
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The present invention relates generally to techniques for predicting
success rates for online search terms based on offline advertising. See Abstr.
Independent claim 1, reproduced below, is representative of the
appealed claims:
1. A method comprising:
receiving, by a predictor component of a
computing device, an offline advertising schedule describing
future offline advertisements for a product, brand, or entity;
generating, by the predictor component of the
computing device, predicted success rates for online search
terms associated with a same, similar, or related product, brand,
or entity, the predicted success rates being generated based on
offline advertising data indicating at least one of a number of
persons to be exposed to the future offline advertisements or
timing of the future offline advertisements; and
outputting, by the predictor component of the
computing device, the predicted success rates for the online
search terms, the predicted success rates describing a predicted
search volume and a predicted search rate for the online search
terms relative to the offline advertising schedule.

Appellant appeals the following rejections:
R1. Claims 1–5, 7–9, and 11–22 are rejected under 35 U.S.C. § 101
because the claimed invention is directed to patent-ineligible subject matter.
Final Act. 2–4.; and
R2. Claim 1 is rejected under 35 U.S.C. § 112(b) or 35 U.S.C. 112
(pre-AIA), second paragraph, as being indefinite. Final Act. 5.
We review the appealed rejections for error based upon the issues
identified by Appellant, and in light of the arguments and evidence produced
thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential).

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ANALYSIS
Rejection under § 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 Supreme Court has long interpreted 35 U.S.C. § 101 to include
implicit exceptions: “[l]aws of nature, natural phenomena, and abstract
ideas” are not patentable. 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 Supreme Court’s two-step 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 the 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.”). For example, 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,
69 (1972)).
The USPTO published revised guidance on the application of 35
U.S.C. § 101. USPTO’s 2019 Revised Patent Subject Matter Eligibility
Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (“Revised Guidance”). Updated
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by USPTO, October 2019 Update: Subject Matter Eligibility (available at
https://www.uspto.gov/sites/default/files/documents/
peg_oct_2019_update.pdf) (jointly referred to as “Revised Guidance”); see
also October 2019 Patent Eligibility Guidance Update, 84 Fed. Reg. 55942
(Oct. 18, 2019) (notifying the public of the availability of the October
update).
Under the Revised Guidance “Step 2A,” the office first looks to
whether the claim recites:
(1) any judicial exceptions, including certain groupings
of abstract ideas (i.e., mathematical concepts, certain methods
of organizing human activity such as a fundamental economic
practice, or mental processes); and
(2) additional elements that integrate the judicial
exception into a practical application (see MPEP § 2106.05(a)-
(c), (e)-(h)).

Revised Guidance, 84 Fed. Reg. at 51–52, 55.
Only if a claim (1) recites a judicial exception and (2) does not
integrate that exception into a practical application, does the Office then
(pursuant to the Revised Guidance “Step 2B”) look to whether the claim:
(3) adds a specific limitation beyond the judicial
exception that is not “well-understood, routine, conventional”
in the field (see MPEP § 2106.05(d)); or
(4) simply appends well-understood, routine,
conventional activities previously known to the industry,
specified at a high level of generality, to the judicial exception.
Revised Guidance, 84 Fed. Reg. at 56.

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Step 2A, Prong 1 (Does the Claim Recite a Judicial Exception?)
With respect to independent method claim 1, and similarly, system
claim 20 and computer-readable storage media claim 14,2 the Examiner
determines that the claims are directed to “predicting online ad performance
based on offline advertising data” (Final Act. 2), which we conclude are at
least mental processes, which is a type of abstract idea. We further
determine that the claims are directed to fundamental economic practices,
such as commercial interactions involving advertising, which is another type
of abstract idea, i.e., certain methods of organizing human activity. For at
least the following reasons, we are persuaded that representative claim 1
recites plural abstract ideas.
The Specification discloses:
Techniques for predicting success rates for online search terms
based on offline advertising are described herein. The
techniques enable marketers to determine appropriate values for
online search terms based on their predicted success rates. By
so doing, marketers may decide whether to pay online search
engines for preferences for their website in response to a search
using these online search terms.
Spec. ¶ 3.
Alternatively or in addition to use of offline advertising
schedules to predict success rates for online search terms,
remote computing device 104 may predict success rates for
online advertisements based on offline advertising schedule 106

2 In the event of further prosecution, we leave it to the Examiner to consider
if computer-readable storage media claim 14 should also be rejected under
35 U.S.C. § 101 for encompassing a transitory media. Signals are not
patentable eligible subject matter under § 101. In re Nuijten, 500 F.3d 1346,
1357 (Fed. Cir. 2007); see also MPEP § 2106(I) (8th ed. Rev. 9 Aug. 2012);
Ex parte Mewherter, 107 USPQ2d 1857 (PTAB 2013) (precedential).

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and provide predicted success rates 110 for those online
advertisements. These online advertisements can be for various
websites and presented in various manners currently used for
presenting advertisements online, including advertisements on
the online search engines. On receipt of these predicted success
rates 110, local computing device 102 may present predicted
success rates 110 through user interface 112 to better enable a
marketer to decide whether or not to purchase advertisements
on online search engines (or other websites). When used in
combination, a marketer may determine, based on predicted
success rates 110 for both online search terms and online
advertisements, to purchase preferences for online search terms
and to display advertisements on the online search engine’s
results page, for example.
Spec. ¶ 24. In other words, Appellant’s Specification describes techniques
for predicting the success rate for online search terms based on offline
advertising, such as television commercials, radio commercials, print
advertisements, and brick-and-mortar store ads, such as those on signs or in
windows. See Spec. ¶ 20.
Claim 1 recites at least “receiving . . . an offline advertising schedule.”
See Claim 1. This limitation, under its broadest reasonable interpretation,
recites a fundamental economic practice akin to advertising and/or
marketing because this limitation recites an operation that would ordinarily
take place in a commercial environment. For example, at least the following
decisions from our reviewing court have found many types of fundamental
commercial practices patent ineligible: OIP Techs., Inc. v. Amazon.com,
Inc., 788 F.3d 1359 (Fed. Cir. 2015), cert. denied, 136 S. Ct. 701 (mem)
(2015) (offer-based price optimization); buySAFE, Inc. v. Google, Inc., 765
F.3d 1350 (Fed. Cir. 2014) (transaction guaranty); Personalized Media
Commc’ns, L.L.C. v. Amazon.com Inc., 671 F. App’x 777 (mem) (Fed. Cir.
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2016) (receiving instructions for ordering); Macropoint, LLC v. Fourkites,
Inc., 671 F. App’x 780 (mem) (Fed. Cir. 2016) (tracking freight); Wireless
Media Innovations, LLC v. Maher Terminals, LLC, 636 F. App’x 1014
(mem) (Fed. Cir. 2016) (monitoring shipping containers); America’s
Collectibles Network, Inc. v. Jewelry Channel, Inc. USA, 672 F. App’x 997
(mem) (Fed. Cir. 2017) (conducting reverse auction by adjusting price and
inventory); and EasyWeb Innovations, LLC v. Twitter, Inc., 689 F. App’x
969 (Fed. Cir. 2017) (receiving, authenticating, and publishing data).
Additionally, a claim recites a mental process when the claim
encompasses acts people can perform using their minds or pen and paper.
See, e.g., CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1372–
73 (Fed. Cir. 2011) (determining that a claim whose “steps can be performed
in the human mind, or by a human using a pen and paper” is directed to an
unpatentable mental process). This is true even if the claim recites that a
generic computer component performs the acts. See, e.g., Versata Dev.
Grp., Inc. v. SAP Am., Inc., 793 F.3d 1306, 1335 (Fed. Cir. 2015) (“Courts
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.”); see also 2019 Eligibility Guidance 84 Fed.
Reg. at 52 n.14 (“If a claim, under its broadest reasonable interpretation,
covers performance in the mind but for the recitation of generic computer
components, then it is still in the mental processes category unless the claim
cannot practically be performed in the mind.”).
Here, the claimed “receiving . . . an offline advertising schedule;”
“generating . . . predicted success rates;” and “outputting . . . the predicted
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success rates,” under their broadest reasonable interpretations, encompass
acts people can perform using their minds or pen and paper because:
(1) people can perform the “receiving” step by simply reading or looking at
the recited content, i.e., advertising schedule. People can perform the
“generating” step by looking at the number of persons exposed to offline
advertising data and observing the timing of future offline advertisements
and using pen and paper to calculate a success rate. Finally, people can
“output” the success rates by merely passing a piece of paper to one another.
Appellant does not directly challenge whether the claims recite an
abstract idea, but instead make arguments more directly related to
integrating the judicial exception into a practical application and whether
specific limitations are not well-understood, routine, conventional activity in
the field. We address such arguments below under our Prong 2 and Step 2B
analysis.
Therefore, for at least the aforementioned reasons, we agree with the
Examiner that representative claim 1 recites plural abstract ideas, which we
conclude are “mental processes” and “certain methods of organizing human
activity.”
Step 2A—Prong 2 (integration into Practical Application)3
Under the Revised Guidance, we now must determine if additional
elements in the claims integrate the judicial exception into a practical
application (see MPEP § 2106.05(a)–(c), (e)–(h)).

3 We acknowledge that some of the considerations at Step 2A, Prong 2,
properly may be evaluated under Step 2 of Alice (Step 2B of the Revised
Guidance). For purposes of maintaining consistent treatment within the
Office, we evaluate them under Step 1 of Alice (Step 2A of the Revised
Guidance). See Revised Guidance, 84 Fed. Reg. at 55 nn.25, 27–32.

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We discern no additional element (or combination of elements)
recited in Appellant’s representative claim 1 that integrates the judicial
exceptions into a practical application. See Revised Guidance, 84 Fed. Reg.
at 54–55 (“Prong 2”). For example, Appellant’s claimed additional element
(e.g., “predictor component of a computing device”) does not: (1) improve
the functioning of a computer or other technology; (2) is not applied with
any particular machine (except for a generic computer); (3) does not effect a
transformation of a particular article to a different state; and (4) is 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).
Appellant contends that “the specific language of claim 1 prevents
preemption of all processes for predicting success rates of online search
terms.” Appeal Br. 19.
Although pre-emption “‘might tend to impede innovation more than it
would tend to promote it,’ thereby thwarting the primary object of the patent
laws” (Alice, 573 U.S. at 216 (citing Mayo, 566 U.S. at 71)), “the absence of
complete preemption does not demonstrate patent eligibility” (Ariosa
Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015)).
Moreover, because we find the claimed subject matter covers patent-
ineligible subject matter, the pre-emption concern is necessarily addressed.
“Where a patent’s claims are deemed only to disclose patent ineligible
subject matter under the Mayo framework, . . . preemption concerns are fully
addressed and made moot.” Ariosa Diagnostics, 788 F.3d at 1379.

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Appellant also contends that representative claim 1 is similar to
Enfish, McRo, and DDR Holdings. Appeal Br. 17, 20. We disagree with
Appellant.
Appellant’s Specification discloses:
Techniques for predicting success rates for online search terms
based on offline advertising are described herein. The
techniques enable marketers to determine appropriate values for
online search terms based on their predicted success rates. By
so doing, marketers may decide whether to pay online search
engines for preferences for their website in response to a search
using these online search terms.
Spec. ¶ 3. In other words, the present invention generates “success rates”
that can be used to inform marketers as to whether or not to purchase
preferences to their websites.
The claims at issue in Enfish were directed to a specific type of data
structure, i.e., a self-referential table for a computer database, designed to
improve the way a computer carries out its basic functions of storing and
retrieving data. See Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335–
36 (Fed. Cir. 2016). In rejecting a § 101 challenge, the court in Enfish held
that “the plain focus of the claims is on an improvement to computer
functionality itself, not on economic or other tasks for which a computer is
used in its ordinary capacity.” Id. at 1336.
Here, Appellant does not point to anything in the claim that resembles
the inventive self-referential data structure at issue in Enfish. Appellant also
does not direct our attention to anything in the Specification to indicate that
the invention provides an improvement in the computer’s technical
functionality.
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Instead, the claimed process improves economic tasks, i.e.,
determining whether or not to purchase preferences of their websites. That
is, here the arguably innovative technique of the appealed claims is
inextricably a part of the abstract idea of predicting online ad performance
based on offline advertising data.
Moreover, nothing in the claims, understood in light of the
Specification, requires anything other than an off-the-shelf conventional
computer used for collecting and analyzing various data. See Spec. ¶ 60.
Therefore, unlike Enfish, the claims are directed not to an improvement in
computer capabilities, but to the results of applying an abstract idea.
In McRO, the Federal Circuit concluded that the claim, when
considered as a whole, was directed to a “technological improvement over
the existing, manual 3-D animation techniques” through the “use of limited
rules specifically designed to achieve an improved technological result in
conventional industry practice.” McRO, Inc. v. Bandai Namco Games Am.
Inc., 837 F.3d 1299, 1316 (Fed. Cir. 2016). Specifically, the Federal Circuit
found that the claimed rules allow computers to produce accurate and
realistic lip synchronization and facial expressions in animated characters
that previously could only be produced by human animators; and the rules
are limiting because they define morph weight sets as a function of phoneme
sub-sequences. Id. at 1313 (citations omitted).
In contrast, here, Appellant has not identified any analogous
improvement attributable to the claimed invention. Although providing
“predicted success rates for online search terms” may improve a business
process, i.e., how to calculate payments for website preferences, it does not
achieve an improved technological result. We see no parallel between the
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limiting rules described in McRO and the results-based rules recited in
Appellant’s claims.
Finally, in DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245,
1259 (Fed. Cir. 2014), the court held the subject claim patent-eligible
because it encompassed “an inventive concept” for resolving a “particular
Internet-centric problem.” Specifically, the invention in DDR Holdings
allowed a host merchant website to maintain the look and feel of the host
website when hyperlinking to outside merchants’ product pages, i.e.,
“specify how interactions with the Internet are manipulated to yield a desired
result.” DDR Holdings, 773 F.3d at 1257–58.
In contrast, we find Appellant’s method performed by a predictor
component of a computing device (see claim 1) does not provide a solution
“necessarily rooted in computer technology in order to overcome a problem
specifically arising in the realm of computer networks.” DDR, 773 F.3d at
1257. Instead, analyzing offline advertising data, i.e., non-electronic
advertising mechanisms, is an integral part of generating the predicted
success rates.
Furthermore, we find all claims on appeal merely use a generic
computing device as a tool, which is used in the way a computer normally
functions. As such, we conclude that the claims fail to impart any
discernible improvement upon the computer or processor; nor do
Appellant’s claims solve “a challenge particular to the Internet” as
considered by the court in DDR, 773 F.3d at 1256–57. See Alice, 573 U.S.
at 224 (concluding claims “simply instruct[ing] the practitioner to implement
the abstract idea of intermediated settlement on a generic computer” not
patent eligible).
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For at least the reason noted supra, we determine that claim 1
(1) recites a judicial exception and (2) does not integrate that exception into
a practical application. Thus, representative claim 1 is directed to an
abstract idea.

Alice/Mayo—Step 2 (Inventive Concept)
Step 2B identified in the Revised Guidance
Turning to the second step of the Alice inquiry, we now look to
whether claim 1 contains any “inventive concept” or adds anything
“significantly more” to transform the abstract concept into a patent-eligible
application. Alice, 573 U.S. at 216. 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) 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.
See Revised Guidance, 84 Fed. Reg. at 56; see MPEP § 2106.05(d).
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.
Appellant has not adequately explained how claim 1 is performed such that
it is not a routine and conventional function of a generic computer.
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Appellant merely contends that the claimed feature “enables
advantages over existing technology . . . [because they] are neither disclosed,
taught, nor suggested by the references of record.” Appeal Br. 17.
However, a finding of novelty or non-obviousness does not require
the conclusion that the claimed subject matter is patent-eligible. Although
the second step in the Mayo/Alice framework is termed a search for an
“inventive concept,” the analysis is not an evaluation of novelty or
nonobviousness, but, rather, is a search for “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 216. “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). A novel and non-
obvious claim directed to a purely abstract idea is, nonetheless, patent-
ineligible. See Mayo, 566 U.S. at 90. See also Diamond v. Diehr, 450 U.S.
175, 188–89 (1981) (“The ‘novelty’ of any element or steps in a process, or
even of the process itself, is of no relevance in determining whether the
subject matter of a claim falls within the § 101 categories of possibly
patentable subject matter.”).
Appellant also contends that “the Examiner has failed to provide any
facts showing that the features of the claims were widely prevalent or in
common use in the relevant industry at the time the patent application was
filed.” Appeal Br. 14. In response, the Examiner states that “[t]he
computing elements have been identified as ‘generic’ computing elements,
not as ‘well-understood, routine and conventional,’ and therefore, no express
support is required on the part of the Examiner.” Ans. 4.
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However, we note that a generic component is commonly known as a
well-understood, routine, and conventional element. “Whether something is
well-understood, routine, and conventional to a skilled artisan at the time of
the patent is a factual determination.” Berkheimer v. HP Inc., 881 F.3d
1360, 1369 (Fed. Cir. 2018).
As noted supra, we supported the Examiner’s factual determination of
the claimed invention using generic components by citing Appellant’s
Specification at paragraph 60, which describes the predictor as software,
firmware, hardware, or a combination thereof which is “platform-
independent, meaning that the techniques may be implemented on a variety
of commercial computing platforms having a variety of processor.” Spec. ¶
60. Appellant fails to persuasively argue why the functions performed in the
claims – receiving an offline advertising schedule, generating predicted
success rates, and outputting the predicted success rates – i.e., accessing
data, analyzing data, and outputting data, are not routine, conventional, and
well-known functions of a generic computer. See buySAFE, Inc. v. Google,
Inc., 765 F.3d 1350, 1355 (Fed. Cir. 2014) (“[t]hat a computer receives and
sends information over a network––with no further specification—is not
even arguably inventive”); In re TLI Communications LLC Patent
Litigation, 823 F.3d 607, 614 (Fed. Cir. 2016) (server that receives data,
extracts classification information from the received data, and stores the
digital images insufficient to add an inventive concept); Lending Tree, 656
Fed. Appx. at 996 (“automating conventional activities using generic
technology does not amount to an inventive concept”). Thus, considering
the features of the claims, individually and as an ordered combination, we
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find there are no additional elements that transform the nature of the claim
into a patent-eligible application. Alice, 573 U.S. at 216
The Examiner’s noting of the generic nature of the component parts
recited in the claims along with our supportive citation to Appellant’s
Specification provides sufficient evidence of a generic computer system
used to implement the abstraction. See Credit Acceptance Corp. v. Westlake
Services, 859 F.3d 1044, 1057 (Fed. Cir. 2017) (“Significantly, the claims do
not provide details as to any non-conventional software for enhancing the
financing process.”); Intellectual Ventures I LLC v. Capital One Fin. Corp.,
850 F.3d 1332, 1342 (Fed. Cir. 2017) (explaining that “[o]ur law demands
more” than claim language that “provides only a result-oriented solution,
with insufficient detail for how a computer accomplishes it”).
Because Appellant’s independent claim 1 is directed to a patent-
ineligible abstract concept, does not include additional elements that
integrate the judicial exception into a practical application, and does not add
a specific limitation beyond the judicial exception that is not “well-
understood, routine, and conventional,” we sustain the Examiner’s rejection
of the claims 1–5, 7–9, and 11–22 under 35 U.S.C. § 101 as being directed
to non-statutory subject matter in light of Alice, its progeny, and the Revised
Guidance.

Rejection under § 112
The Examiner finds that “[i]t is unclear and indefinite what a
‘predicted search rate’ is.” Final Act. 5. “[W]e apply the approach for
assessing indefiniteness approved by the Federal Circuit in Packard, i.e., ‘[a]
claim is indefinite when it contains words or phrases whose meaning is
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unclear.’” Ex parte McAward, 2017 WL 3669566, at *5 (PTAB Aug. 25,
2017) (precedential) (quoting In re Packard, 751 F.3d 1307, 1310, 1314
(Fed. Cir. 2014)). “Put differently, ‘claims are required to be cast in clear—
as opposed to ambiguous, vague, indefinite—terms.’” Id. (quoting Packard,
751 F.3d at 1313); see also MPEP § 2173 .02(1). “At the same time, this
requirement is not a demand for unreasonable precision.” Packard, 751
F.3d at 1313. For instance, the breadth of a claim is not to be equated with
indefiniteness. In re Miller, 441 F.2d 689, 693 (CCPA 1971).
Here, we find that the claimed “predicted search rate” (see claim 1)
while broad, is not indefinite. Appellant contends that “the [S]pecification
clearly . . . provides an example ‘predicted search rate’ as a search volume
relative to a time period: ‘six ads within a three-hour period.’” Appeal Br.
11, citing Spec. ¶ 32.
Specifically, Appellant’s Specification states:
Consider, by way of example, Fig. 3, which illustrates an
historic success rate 302 for an online search term “Newboy”
associated with a particular offline advertising schedule for
Newboy Internet Services. The offline advertising schedule
associated with historic success rate 302 (here measured in
search volume) is relatively short - six ads within a three-hour
period (for a three-hour sporting event with a very large market
share). Offline advertising schedule 304 is shown as a mark on
the graph for February 4th, 2012. Note that historic success rate
302 is based on searches that have at least a single term—the
name of the entity that was advertised, Newboy. Another
historic success rate, historic success rate 306 for a competitive
entity, Oldboy Internet Services, which holds a larger market
share and higher general search volumes, is shown for context
and can be used by predictor 210 as a set of control data.
Spec. ¶ 32.
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In response, the Examiner finds that “Appellant’s Spec. does not
further define a ‘predicted search rate.’ . . . Para 32 discusses success rate
and search volume, as well as ad scheduling – ‘six ads within a three-hour
period.’ An ad schedule is different from a ‘predicted search rate.’” Ans. 3.
In response to the Examiner (although not directly addressing the
Examiner’s specific aforementioned interpretation), Appellant contends that
Fig. 3 illustrate a search rate “by monitoring the search volume relative to
time, as noted by the y-axis and x-axis . . . Likewise, Fig. 6 of Appellant’s
specification illustrates a predicted search volume relative to time.” Reply
Br. 5. We find Appellant’s argument persuasive.
Specifically, Appellant directs our attention to Figures 3 and 6 in the
disclosure, which Appellant believes define, by example, the claimed
“search rate,” i.e., search volume relative to time. We find that one of
ordinary skill in the art would view the claimed “search rate” as a quantity of
searches measured per unit of something else. Here, at least Appellant’s
Figures identify the something else as “time.”
Accordingly, we reverse the Examiner’s rejection of claim 1 under
35 U.S.C. § 112, second paragraph, as being indefinite.

CONCLUSION
Appellant has demonstrated that the Examiner erred in rejecting
claim 1 as being indefinite under 35 U.S.C. § 112, second paragraph.
However, the Examiner’s rejection of all the claims, i.e., claims 1–5,
7–9, and 11–22, under 35 U.S.C. § 101, is affirmed.

Appeal 2018-008967
Application 14/011,181

19
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–5, 7–9, 11–
22
101 Eligibility 1–5, 7–9,
11–22

1 112 Indefiniteness 1
Overall
Outcome
1–5, 7–9,
11–22

Because at least one rejection encompassing all claims on appeal is
affirmed, the decision of the Examiner is affirmed.
No period for taking any subsequent action in connection with this
appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED