Facebook, Inc.

Patent Trials and Appeals Board

Oct 26, 2020

2020000952 (P.T.A.B. Oct. 26, 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.
13/933,595 07/02/2013 Fidji Nahema Simo 2006.022US1 6761
160546 7590 10/26/2020
Mannava & Kang, P. C.
3201 Jermantown Road
Suite 525
Fairfax, VA 22030
EXAMINER
ANSARI, AZAM A
ART UNIT PAPER NUMBER
3682
NOTIFICATION DATE DELIVERY MODE
10/26/2020 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):
docketing@mannavakang.com
fb-pdoc@fb.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte FIDJI NAHEMA SIMO and SOURAV CHATTERJI
Appeal 2020-000952
Application 13/933,595
Technology Center 3600

Before JUSTIN BUSCH, JASON J. CHUNG, and JOYCE CRAIG,
Administrative Patent Judges.

CRAIG, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1, 3–12, and 14–22. See Non-Final Act.
1. We have jurisdiction 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 Facebook,
Inc. Appeal Br. 2.
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Application 13/933,595

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CLAIMED SUBJECT MATTER
The claims are directed to a fixed-pricing for guaranteed delivery of
online advertisements. Claim 1, reproduced below, is illustrative of the
claimed subject matter:
1. A method comprising:
receiving, at an online system, an advertisement and
information about the advertisement from an advertiser, the
information including a request by the advertiser to the online
system for a guarantee to provide performance of a specified
number of actions and one or more display times associated with
the advertisement by targeted users of the online system, such
that the advertisement is a guaranteed advertisement;
determining a price to charge the advertiser for displaying
the advertisement to the targeted users by:
determining, by the online system, a target bid amount for
the guaranteed advertisement, the target bid amount for use in an
auction process against bid amounts for other advertisements to
determine which advertisements to select for display to the
targeted users, the determination performed by:
retrieving one or more previous bid amounts applied in
auction processes for prior advertisements that have overlapping
subject matter, one or more overlapping targeting criteria, or one
or more overlapping display times, and determining the target
bid amount for the guaranteed advertisement using on the
retrieved previous bid amounts for prior advertisements, the
target bid amount indicating an amount of compensation to the
online system to select the advertisement from one or more
advertisements for presentation to users of the online system;
determining, by the online system, a predicted likelihood
of the guarantee for the guaranteed advertisement being met by:
retrieving one or more previous actions performed by the
targeted users when presented with prior advertisements that
have overlapping subject matter, one or more overlapping
targeting criteria, or one or more overlapping display times, and
determining the predicted likelihood of the targeted users taking
the specified number of actions for the guaranteed advertisement
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using the retrieved one or more previous actions for prior
advertisements;
determining a premium to be applied to the price to charge
the advertiser to account for a risk of revenue lost by the online
system by decreasing presentation of non-guaranteed
advertisements in exchange for presenting the guaranteed
advertisement; and
calculating the price to charge the advertiser based on the
determined predicted likelihood and the determined target bid
amount, the price including the premium;
providing a charge to the advertiser based on the
determined price; and
following the charging of the determined price, providing
the guaranteed advertisement and the target bid amount to
auction processes to be considered along with other
advertisements for selection to display to a plurality of the
targeted users over a period of time to meet the guarantee.
Appeal Br. 20–21 (Claims Appendix).2
REJECTIONS
Claims 1, 3–12, and 14–22 stand rejected under 35 U.S.C. § 112(a) as
failing to comply with the written description requirement. Non-Final Act. 3.
Claims 1, 3–12, and 14–22 stand rejected under 35 U.S.C. § 101 as
directed to a judicial exception, without significantly more. Non-Final Act.
5.
Claims 1, 3–9, 12, and 14–22 stand rejected under 35 U.S.C. § 103 as
unpatentable over the combination of Shields et al. (US 8,280,765 B2, issued
Oct. 2, 2012) (“Shields”), McAfee et al. (US 2012/0054027 A1, published

2 The Appeal Brief does not have page numbers. We treat the Appeal Brief
as if it were numbered beginning with the Title page.
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Mar. 1, 2012) (“McAfee”), and Vassilvitskii et al. (US 2010/0082393 A1,
published Apr. 1, 2010) (“Vassilvitskii”). Non-Final Act. 8.
Claims 10 and 11 stand rejected under 35 U.S.C. § 103 as
unpatentable over the combination of Shields, McAfee, Vassilvitskii, and
Silverman et al. (US 2010/0228636 A1, published Sept. 9, 2010)
(“Silverman”). Non-Final Act. 23.
ANALYSIS
Rejection of Claims 1, 3–12, and 14–22 Under 35 U.S.C. § 112(a)
Claims 1 and 12 recite, in part, “determining, by the online system, a
target bid amount for the guaranteed advertisement” and “determining, by
the online system, a predicted likelihood of the guarantee for the guaranteed
advertisement being met.” Appeal Br. 20–21. The Examiner rejected claims
1, 3–12, and 14–22 as failing to comply with the written description
requirement of § 112 because the originally filed Specification lacks support
for the limitations above. According to the Examiner, “[n]either the
specification nor the drawings disclose in detail the specific steps or
algorithm needed to perform the operation[s].” Non-Final Act. 4.
Appellant argues that “Applicant may ‘express that algorithm in any
understandable terms including as a mathematical formula, in prose, or as a
flow chart, or in any other manner that provides sufficient structure.’”
Appeal Br. 7 (citing Examining Computer-Implemented Functional Claim
Limitations for Compliance with 35 U.S.C. § 112, 84 Fed. Reg. 57 (Jan. 7,
2019) (hereinafter “2019 §112 Guidance”), pp. 18–19 (citing Finisar Corp.
v. DirecTV Grp., Inc., 523 F.3d 1323, 1340 (Fed. Cir. 2008))). Appellant
points to the substeps of the “determining” steps recited in the claims, as
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well as Figure 3 and paragraphs 40 and 41 of the Specification as adequate
written description for the disputed limitations. Id. at 7–8.
To satisfy the written description requirement, the Specification must
describe the claimed invention in sufficient detail that one skilled in the art
can reasonably conclude that the inventor had possession of the claimed
invention. Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1562–63 (Fed. Cir.
1991). Specifically, to have “possession,” the Specification must describe
the claimed invention in a manner understandable to a person of ordinary
skill in the art and show that the inventor actually invented the claimed
invention. Id.; Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351
(Fed. Cir. 2010) (en banc). Claims may fail to satisfy the written description
requirement when the invention is claimed and described in functional
language but the specification does not sufficiently identify how the
invention achieves the claimed function. Id. For software, this can occur
when the algorithm or steps for performing the computer function are not
explained at all or are not explained in sufficient detail. It is not enough that
one skilled in the art could write a program to achieve the claimed function
because the specification must explain how the inventor intends to achieve
the claimed function to satisfy the written description requirement.
Vasudevan Software, Inc. v. MicroStrategy, Inc., 782 F.3d 671, 681–83 (Fed.
Cir. 2015); see also 2019 § 112 Guidance, 84 Fed. Reg. at 57, 62).
Here, the first limitation argued by Appellant is a computer-
implemented functional limitation, reciting “determining, by the online
system, a target bid amount for the guaranteed advertisement.” This is a
functional limitation because the “determining” describes what the claim
does rather than what the claim is. Manual of Patent Examining Procedure
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(“MPEP”) § 2173.05(g) (9th Ed., Rev. 10.2019, June 2020) (“A claim term
is functional when it recites a feature ‘by what it does rather than by what it
is’ (e.g., as evidenced by its specific structure or specific ingredients.)”)
(quoting In re Swinehart, 439 F.2d 210, 212 (CCPA 1971)). The Federal
Circuit further informs that “[t]he written description requirement is not met
if the specification merely describes a ‘desired result.”’ Vasudevan, 782 F.3d
at 682 (quoting Ariad, 598 F.3d at 1349). The “telling question is whether
the specification shows possession by the inventor” of how this desired
result “is achieved.” Id. at 683.
We agree with Appellant that the Specification describes the claimed
invention in sufficient detail that one skilled in the art can conclude
reasonably that the inventor had possession of the claimed invention. See
Appeal Br. 7–10. The Specification describes that an advertisement’s target
bid amount is based on bid amounts received for it previously. Spec. ¶ 40.
The Specification also describes that the target bid amount may be based on
advertisements with similar subject matter on dates in previous years. Id. We
disagree with the Examiner that paragraph 40 merely discloses inputs to an
algorithm, as the target bid amount is described as having a historical basis
and does not require additional data processing to determine.
The second limitation argued by Appellant, “determining, by the
online system, a predicted likelihood of the guarantee for the guaranteed
advertisement being met,” is also a functional limitation because it broadly
describes the function—determining—and a desired result (predictable
likelihood of the guarantee for the guaranteed advertisement being met),
rather than any specific structure. Swinehart, 439 F.2d at 212.
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We agree with Appellant that the Specification describes the claimed
invention in sufficient detail that one skilled in the art can conclude
reasonably that the inventor had possession of the claimed invention. See
Appeal Br. 7–10. The Specification describes that the predicted likelihood of
the guarantee is based on factors such as the number of installations the
advertiser is requesting, the relative popularity of the content, and the
timeframe in which to achieve the guarantee. Spec. ¶ 41. The Specification,
however, also describes that the target bid amount may be based on
advertisements with similar subject matter on dates in previous years. Id.
Like the target bid amount, discussed above, the Specification describes a
historical basis for the predicted likelihood of the guarantee. Id. For
example, the system retrieves previous actions performed by users when
presented with advertisements having similar content, targeting criteria, and
display times. Id. Thus, we disagree with the Examiner’s finding that
paragraph 41 merely discloses inputs to an algorithm, as the probability
likelihood is described as having a historical basis and does not clearly
require additional data processing.
Accordingly, because Appellant establishes that the Specification
provides sufficient algorithms for the limitations at issue, we do not sustain
the Examiner’s rejection of claims 1 and 12 under 35 U.S.C. § 112(a). We
also do not sustain the Examiner’s 35 U.S.C. § 112(a) rejection of dependent
claims 3–11 and 14–22 for similar reasons.

Rejection of Claims 1, 3–12, and 14–22 Under 35 U.S.C. § 101
Appellant argues that the Examiner’s rejection of claim 1 under
35 U.S.C. § 101 as directed to patent-ineligible subject matter is in error. To
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the extent Appellant has not advanced separate, substantive arguments for
particular claims, or other issues, such arguments are waived. 37 C.F.R.
§ 41.37(c)(1)(iv) (2018). Appellant argues claims 1, 3–12, and 14–22 as a
group. See Appeal Br. 10. Given our discretion under 37 C.F.R.
§ 41.37(c)(1)(iv), we decide the § 101 rejection of claims 1, 3–12, and 14–22
based on representative claim 1.
Principles of Law
“Whether a claim is drawn to patent-eligible subject matter is an issue
of law that we review de novo.” SiRF Tech., Inc. v. Int’l Trade Comm’n, 601
F.3d 1319, 1331 (Fed. Cir. 2010).
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
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.”).
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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 water-proof 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.” 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. (citation 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 part
of the Alice and Mayo framework, where “we must examine the elements of
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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.
In January 2019, the U.S. Patent and Trademark Office (“USPTO”)
published revised guidance on the application of § 101. 2019 Revised Patent
Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019),
incorporated in the MPEP in sections 2103 through 2106.07(c)
(“2019 Revised Guidance”).3
Under the 2019 Revised Guidance and the October 2019 Update, we
first look 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) (“Step 2A, Prong One”); and
(2) additional elements that integrate the judicial exception into a
practical application (see MPEP § 2106.05(a)–(c), (e)–(h)) (“Step 2A,
Prong Two”).4

3 In response to received public comments, the Office issued further
guidance on October 17, 2019, clarifying the 2019 Revised Guidance.
USPTO, October 2019 Update: Subject Matter Eligibility (the “October
2019 Update”) (available at https://www.uspto.gov/sites/default/files/
documents/peg_oct_2019_update.pdf).
4 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
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2019 Revised Guidance, 84 Fed. Reg. at 52–55.
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
Step 2B, 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.
2019 Revised Guidance, 84 Fed. Reg. at 52–56; MPEP § 2106.04.
Step 1
Claim 1, as a method claim, falls within the process category of
§ 101. See 2019 Revised Guidance, 84 Fed. Reg. at 53–54 (citing MPEP
§§ 2106.03, 2106.06).
Step 2A(i): Does the Claim Recite a Judicial Exception?
Among the certain methods of organizing human activity listed in the
2019 Revised Guidance are commercial or legal interactions. Like those
concepts, claim 1 recites the concept of managing advertising. Specifically,
claim 1 recites operations that would take place ordinarily in allowing an
advertiser to pay a fixed amount for a guaranteed number of presentations of
an advertisement to online system users. The method involves receiving and
sending a particular advertisement, which are economic acts ordinarily
performed in the stream of commerce that would take place whenever one is
managing advertising.

determine whether the claim as a whole integrates the exception into a
practical application. See 2019 Revised Guidance - Section III(A)(2), 84
Fed. Reg. at 54–55.
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The Examiner determined that claim 1 is directed to determining a
price to charge an advertiser for displaying an advertisement according to a
guaranteed contract based on determined target bid amount and determined
likelihood of guarantee being met. Non-Final Act. 5. The preamble to claim
1 does not recite what it is to achieve, but the steps in claim 1 result in
calculating the price to charge an advertiser, providing the charge to the
advertiser, and providing a guaranteed advertisement and a target bid
amount to auction processes for selection, absent any technological
mechanism other than “an online system” for doing so. As to the specific
limitations, the “determining” steps recite the generic analyzing of
advertising, applying generic functions to get the results. The Specification
describes the invention as relating to maximizing revenue and providing
advertisers with a measure of certainty regarding actions associated with an
advertisement by users. Spec. ¶ 4. Thus, the intrinsic evidence shows that
claim 1 recites managing advertising. This is consistent with the Examiner’s
determination. See Non-Final Act. 5.
This is also an example of commercial or legal interactions as a
certain method of organizing human activity because managing advertising
coordinates interactions to advertise goods and services in the promotion of
commerce. The concept of managing advertising by determining a price to
charge an advertiser for displaying an advertisement according to a
guaranteed contract based on determined target bid amount and determined
likelihood of guarantee being met is one idea for managing the selection and
transmission of advertising. The steps recited in claim 1 are part of how this
might be premised conceptually.
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Our reviewing court has found claims to be directed to abstract ideas
when they recited similar subject matter. Ultramercial, Inc. v. Hulu, LLC,
772 F.3d 709, 715 (Fed. Cir. 2014) (advertising). The Examiner determined
that claim 1, as a whole, recites a concept similar to the claims in
Ultramercial, “using advertising as an exchange or currency (i.e. allowing
advertisers to bid for an ad slot in exchange for currency).” Non-Final Act.
5.
From this, we conclude that claim 1 recites managing advertising by
determining a price to charge an advertiser for displaying an advertisement
according to a guaranteed contract based on determined target bid amount
and determined likelihood of guarantee being met, which is a commercial
interaction, one of certain methods of organizing human activity identified in
the 2019 Revised Guidance, and, thus, an abstract idea.
Because we agree with the Examiner that the claim recites an abstract
idea, we proceed to Prong Two of Step 2A to determine if the idea is
integrated into a practical application, in which case the claim as a whole
would not be “directed to” merely an abstract idea.
Step 2A(ii): Judicial Exception Integrated into a Practical Application?
We next determine whether the recited judicial exception is integrated
into a practical application of that exception by: (a) identifying whether there
are any additional elements recited in the claim beyond the judicial
exception(s); and (b) evaluating those additional elements individually and
in combination to determine whether they integrate the exception into a
practical application.
We use the term “additional elements” for claim features, limitations,
or steps that the claim recites beyond the identified judicial exception. See
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2019 Revised Guidance, 84 Fed. Reg. at 55 n.24. In claim 1, the additional
elements include the limitation “online system.”
To integrate the exception into a practical application, the recited
“online system” must, for example, improve the functioning of a computer
or any other technology or technical field (see MPEP § 2106.05(a)), apply
the judicial exception with a particular machine (see MPEP § 2106.05(b)),
affect a transformation or reduction of a particular article to a different state
or thing (see MPEP § 2106.05(c)), or apply or use the judicial exception in
some other meaningful way beyond generally linking the use of the judicial
exception to a particular technological environment (see MPEP
§ 2106.05(e)). See 2019 Revised Guidance.
The Examiner determined that the “online system” is not sufficient to
amount to significantly more than the judicial exception because the
additional computer element is no more than a generic device (i.e., general
purpose computing device) that performs generic computer functions
(receiving information about an advertisement, determining a target bid,
determining a likelihood that actions associated with the advertisement will
occur, and determining a price based on the target bid and determined
likelihood). Non-Final Act. 6–7 (citing Spec. ¶ 51).
Appellant argues “the claims recite an improvement over conventional
advertising systems, and improve the way the computer functions in running
advertisement auctions.” Appeal Br. 12. In particular, Appellant argues that
claim 1 “aims to provide a guaranteed number of impressions of an
advertisement or a guaranteed number of actions taken by users when an
advertisement is presented, which ultimately provides advertisers with
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higher certainty that their advertisements will be presented some number of
times.” Id.
Appellant has not persuaded us of Examiner error. In cases involving
software innovations, such as here, the inquiry as to whether the claims are
directed to an abstract idea “often turns on whether the claims focus on ‘the
specific asserted improvement in computer capabilities . . . or, instead, on a
process that qualifies as an ‘abstract idea’ for which computers are invoked
merely as a tool.” Finjan, Inc. v. Blue Coat Sys., Inc., 879 F.3d 1299, 1303
(Fed. Cir. 2018) (quoting Enfish, LLC v. Microsoft Corp., 822 F.3d 1327,
1335–36 (Fed. Cir. 2016)). The nature of claim 1 as a whole is not to define
a specific technological improvement; instead, claim 1 merely recites the
steps necessary to perform the abstract idea itself. Our reviewing court has
“made clear that mere automation of manual processes using generic
computers does not constitute a patentable improvement in computer
technology.” Credit Acceptance Corp. v. Westlake Servs., 859 F.3d 1044,
1055 (Fed. Cir. 2017). Like the claims in Credit Acceptance, the focus of
claim 1 is on the abstract idea itself “and the recited generic computer
elements ‘are invoked merely as a tool.’” Id. (citing Enfish, 822 F.3d 1327);
see also Versata Dev. Grp., Inc. v. SAP Am., Inc., 793 F.3d 1306, 1334 (Fed.
Cir. 2015) (collecting cases).
Considering claim 1 as a whole, then, Appellant’s invention lacks a
technical solution to a technical problem. Claim 1 as a whole merely uses
instructions to implement the abstract idea on a computer or, alternatively,
merely uses a computer as a tool to perform the abstract idea. Here, the
additional limitation(s) do not integrate the judicial exception into a practical
application. More particularly, the claims do not recite (i) an improvement to
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the functionality of a computer or other technology or technical field; (ii) a
“particular machine” to apply or use the judicial exception; (iii) a particular
transformation of an article to a different thing or state; or (iv) any other
meaningful limitation. See 2019 Revised Guidance, 84 Fed. Reg. at 55.
Rather, claim 1 recites an abstract ideas as identified in Step 2A(i), supra,
and none of the limitations integrates the judicial exception into a practical
application.
Therefore, because the abstract idea is not integrated into a practical
application, we conclude that the claim is directed to the judicial exception.
Step 2B — “Inventive Concept” or “Significantly More”
Because we conclude the claims are directed to a patent-ineligible
concept, we proceed to the “inventive concept” step. For Step 2B we must
“look with more specificity at what the claim elements add, in order to
determine ‘whether they identify an “inventive concept” in the application of
the ineligible subject matter’ to which the claim is directed.” Affinity Labs of
Tex., LLC v. DIRECTV, LLC, 838 F.3d 1253, 1258 (Fed. Cir. 2016) (quoting
Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir.
2016)). We look to see whether there are any “additional features” in the
claims that constitute an “inventive concept,” thereby rendering the claims
eligible for patenting even if they are directed to an abstract idea. Alice, 573
U.S. at 221. Those “additional features” must be more than “well-
understood, routine, conventional activity.” Mayo, 566 U.S. at 79.
The Examiner determined that the additional element in claim 1, alone
or in combination with the other elements, “simply instruct[s] the
practitioner to implement the abstract idea with routine, conventional
activity.” Non-Final Act. 7. The Examiner found that claim 1 is
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implemented with a “general-purpose computing device.” Ans. 9–10 (citing
Spec. ¶ 51).
Appellant argues that claim 1 includes sub-steps for determining a
target bid, determining a predicted likelihood, determining a premium,
calculating a price to charge, providing the charge, and providing the
guaranteed advertisement. Appeal Br. 13. Thus, Appellant argues that claim
1 “clearly provide[s] significantly more than just determining a price to
charge.” Id.
We are not persuaded by Appellant’s argument that the Examiner
erred. Appellant does not direct our attention to anything in the Specification
that indicates the computer components perform anything other than well-
understood, routine, and conventional functions, such as receiving data,
looking up data in a database, determining data values based on data from
the database, and providing information to other processes. See buySAFE,
Inc. v. Google, Inc., 765 F.3d 1350, 1355 (Fed. Cir. 2014) (“That a computer
receives and sends the information over a network—with no further
specification—is not even arguably inventive”); In re TLI Commc’ns LLC
Patent Litig., 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); Alice, 573 U.S. at
225–26 (receiving, storing, sending information over networks insufficient
to add an inventive concept).
Moreover, the Examiner found that Applicant’s Specification
describes that the target bid amount and predicted likelihood can be
determined using “machine-learning algorithms.” Ans. 11 (citing Spec.
¶¶ 35, 36). According to the Examiner, machine learning using trained
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historical data is a well-known technique. Id. (citing “Peter Norvig & Stuart
J. Russell, Artificial Intelligence: A Modern Approach (2d ed., 2003,
Prentice Hall, ISBN 978-0137903955); Parker v. Flook, 437 U.S. 584
(1978). Appellant has not rebutted the Examiner’s findings persuasively.
Reply Br. 9–10.
Because the Specification describes the additional element in general
terms, without describing the particulars, we conclude the claim limitation
may be broadly but reasonably construed as reciting conventional computer
components and techniques, particularly in light of Appellant’s
Specification, as cited above. See Berkheimer Memo5 § III.A.1; Spec. ¶ 51.
We conclude claim 1 does not have an inventive concept because the claim,
in essence, merely recites an “online computer system” along with no more
than mere instructions to implement the identified abstract idea using the
online computer system.
Because claim 1 is directed to a judicial exception, without
significantly more, we sustain the Examiner’s § 101 rejection of independent
claim 1 and grouped claims 3–12 and 14–22, not argued separately with
particularity.

5 “Changes in Examination Procedure Pertaining to Subject Matter
Eligibility, Recent Subject Matter Eligibility Decision (Berkheimer v. HP,
Inc.)” at 3 (Apr. 19, 2018) (explaining that a specification that describes
additional elements “in a manner that indicates that the additional elements
are sufficiently well-known that the specification does not need to describe
the particulars of such additional elements to satisfy 35 U.S.C. § 112(a)” can
show that the elements are well understood, routine, and conventional).
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Rejections of Claims 1, 3–12, and 14–22 Under 35 U.S.C. § 103
With respect to independent claim 1, Appellant contends the cited
portions of Shields do not teach or suggest “providing a charge to the
advertiser based on the determined price,” as recited in claim 1. Appeal Br.
17. Appellant argues that, “considering that the next claimed step is
‘following the charging of the determined price, providing the guaranteed
advertisement and the target bid amount to auction processes . . . ,’ the
ordering of when payment is received and when the advertisement is put in
an auction is different between Shields and the claimed invention.” Id. at 18.
According to Appellant, in claim 1, no auction processes occur prior to
providing the charge because providing the guaranteed advertisement to
auction processes occurs following the step for providing the charge. Id.
The Examiner found that Shields teaches that “the minimum bid or
target bid amount is continually updated for each auction process (before
and after each auction)” and “the updated minimum bid CPM is utilized for
the next auction process.” Ans. 15 (citing Shields Fig. 3, col. 6:38–61).
According to the Examiner, “after the auction has been completed and the
price has been charged to the advertiser, this information becomes historical
data (i.e. previous historical bids) to compute or update the minimum bid
CPM (or target bid amount).” Id.
We agree with Appellant that the differences between claim 1 and the
cited portions of Shields are such that the subject matter as a whole would
not have been obvious to a person having ordinary skill in the art. The
Specification describes that
[c]onventional online systems select and present an
advertisement to a user satisfying one or more targeting criteria
associated with the advertisement; the online system then
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charges an advertiser associated with the presented
advertisement based on a bid amount associated with the
advertisement and provided by the advertiser.
Spec. ¶ 2. The Specification further describes that an online system allows
advertisements to bypass such a conventional selection mechanism by
allowing advertisers to pay a flat fee to the online system for a guaranteed
number of actions associated with one or more advertisements. Spec. ¶ 4.
The limitation recited in claim 1,
following the charging of the determined price [to the
advertiser], providing the guaranteed advertisement and the
target bid amount to auction processes to be considered along
with other advertisements for selection to display to a plurality
of the targeted users over a period of time to meet the
guarantee,
is not taught specifically or by implication in any of the cited prior art
references, singularly or in combination. The Examiner’s finding that, in
Shields, after the auction has been completed and the price has been charged
to the advertiser, this information becomes historical to compute or update
the minimum bid CPM is too attenuated to clearly teach or suggest the
disputed limitations. The Examiner has not found that McAfee or
Vassilvitskii provides the teaching or suggestion missing in Shields.
For these reasons, we are persuaded that the Examiner erred in finding
that the combination of Shields, McAfee, and Vassilvitskii teaches or
suggests the “following” limitation, as recited in claim 1.
Accordingly, we reverse the Examiner’s § 103 rejection of
independent claim 1, as well as the Examiner’s § 103 rejection of
independent claim 12, which recites a commensurate limitation. Appeal Br.
14. We also sustain the Examiner’s § 103 rejections of dependent claims 3–
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11 and 14–22, which incorporate the disputed limitation recited in claims 1
and 12. Id.
Because it is dispositive that the Examiner has not shown by a
preponderance of evidence that the cited prior art teaches or reasonably
suggests the claimed “following” limitation, we do not address other issues
raised by Appellant’s arguments related to these claims. See Beloit Corp. v.
Valmet Oy, 742 F.2d 1421, 1423 (Fed. Cir. 1984) (finding an administrative
agency is at liberty to reach a decision based on “a single dispositive issue”).
CONCLUSION
We reverse the Examiner’s decision rejecting claims 1, 3–12, and 14–
22 under 35 U.S.C. § 112(a).
We affirm the Examiner’s decision rejecting claims 1, 3–12, and 14–
22 under 35 U.S.C. § 101.
We reverse the Examiner’s decision rejecting claims 1, 3–12, and 14–
22 under 35 U.S.C. § 103.
Because we affirm at least one ground of rejection with respect to
each claim on appeal, the Examiner’s decision rejecting claims 1, 3–12, and
14–22 is affirmed. See 37 C.F.R. § 41.50(a)(1).

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DECISION SUMMARY
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 3–12, 14–22 112(a) Written Description 1, 3–12,
14–22
1, 3–12, 14–22 101 Eligibility 1, 3–12,
14–22

1, 3–9, 12, 14–
22
103 Shields, McAfee,
Vassilvitskii
1, 3–9,
12, 14–22
10, 11 103 Shields, McAfee,
Vassilvitskii,
Silverman
10, 11
Overall
Outcome
1, 3–12,
14–22

TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED