Ioffe, Serge et al.

Patent Trials and Appeals Board

Oct 29, 2020

2018004068 (P.T.A.B. Oct. 29, 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.
13/089,235 04/18/2011 Serge Ioffe LifeStreet-P001 1062
7590 10/29/2020
WEBAMG HOLDINGS LIMITED
981 INDUSTRIAL ROAD, SUITE F
SAN CARLOS, CA 94070
EXAMINER
WU, RUTAO
ART UNIT PAPER NUMBER
3621
MAIL DATE DELIVERY MODE
10/29/2020 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte SERGE IOFFE and ALEKSEY STUDNEV
____________

Appeal 2018-004068
Application 13/089,235
Technology Center 3600
____________

Before MAHSHID D. SAADAT, ALLEN R. MacDONALD, and
IRVIN E. BRANCH, Administrative Patent Judges.

SAADAT, Administrative Patent Judge.

DECISION ON APPEAL1

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

1 An oral hearing scheduled for this appeal on Sept. 1, 2020, is deemed
waived.
2 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42(a). Appellant identifies the real party in interest as
WEBAMG SARL and WEBAMG HOLDINGS LIMITED. Appeal Br. 6.
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STATEMENT OF THE CASE
Introduction
Appellant’s disclosure is directed to the field of advertising on the
World Wide Web, and more particularly, ensuring those advertisements
attract users to avoid wasting money and/or resources. Spec. ¶¶ 2–3.
Claim 1 is illustrative of the invention and reads as follows:
1. A machine reading instructions from a non-
transitory medium and executing said instructions on said
machine to determine when a stop command should be sent to a
website based selling campaign and to determine when a stop
command should not be sent to said website based selling
campaign, the following steps executed in this order:
determining when said website based selling campaign is
cost per action and determining when an advertiser's pixel on a
website is not detected and then:
retrieving from a server campaign impressions and
conversion records for a predetermined time interval for said
website based selling campaign;
checking when a last in time retrieved conversion record
has no conversions;
when said last in time retrieved conversion record has
conversions then not sending said stop command;
when said retrieved last in time retrieved conversion
record has no conversions then starting from said retrieved last
in time retrieved conversion record having no conversions:
(a) checking sequentially a next earlier in time retrieved
conversion record;
repeating step (a) until a retrieved conversion record has
a conversion;
determining a first metric based on impressions and
conversions for said retrieved conversion record having said
conversion and determining a second metric for said retrieved
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conversion record immediately later in time from said retrieved
conversion record having said conversion;
determining a ratio of said first metric to said second
metric;
when said ratio is greater than a predetermined stop ratio
then not sending said stop command; and
when said ratio is not greater than a predetermined stop
ratio then sending said stop command.
Appeal Br. 76 (Claim Appendix).
Rejections
Claim 1 stands rejected under 35 U.S.C. § 112(b) or 35 U.S.C. § 112
(pre-AIA), second paragraph, as being indefinite for failing to particularly
point out and distinctly claim the subject matter which the Appellant regards
as the invention. See Final Act. 12.
Claims 1–14 stand rejected under 35 U.S.C. § 101 as being directed to
patent-ineligible subject matter. See Final Act. 12–13.
Claim 1 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Lipsky (US 2006/0184421 Al; pub. Aug. 17, 2006),
Deacon (US 2009/0192871 Al; pub. July 30, 2009), Donovan (US 7,302,399
B1; iss. Nov. 27, 2007), and Kandasamy (US 2006/0173744 Al; pub. Aug.
3, 2006). See Final Act. 13–16.
Claim 2 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Lipsky, Deacon, Donovan, Kandasamy, and Bhatt (US
2011/0035272 Al; pub. Feb. 10, 2011). See Final Act. 16–17.
Claims 3, 4, 10, and 11 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Greenbaum (US 2009/0299835 A1; pub. Dec. 3,
2009), Borgsmidt (US 2008/0301155 Al; pub. Dec. 4, 2008), and Hu (A
Data Warehouse/Online Analytic Processing Framework for Web Usage
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Mining and Business Intelligence Reporting, International Journal of
Intelligent Systems, Vol. 19, 585–606 (2004)). See Final Act. 17–21.
Claims 5 and 12 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Greenbaum, Borgsmidt, Hu, and De Bonet (US
2012/0042337 Al; pub. Feb. 16, 2012). See Final Act. 21–23.
Claims 6, 13, and 14 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Greenbaum, Borgsmidt, Hu, and Kamangar (US
2008/0301155 Al; pub. Dec. 4, 2008). See Final Act. 23–26.
Claims 7–9 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Collins (US 2008/0249855 A1; pub. Oct. 9, 2008),
Borgsmidt, and Hu. See Final Act. 26–29.

ANALYSIS
REJECTION UNDER 35 U.S.C. § 112, SECOND PARAGRAPH
The Examiner finds the recited term “determining a first metric based
on impressions and conversions for said retrieved conversion record having
said conversion and determining a second metric for said retrieved
conversion record immediately later in time from said retrieved conversion
record having said conversion” is not clear. Final Act. 12. The Examiner
states:
It is unclear if this sentence is intended to denote that a first
metric is based on impressions and that a conversion in a
conversion record has a conversion, or if a first metric is based
on impressions and conversions for a conversion record.
Further, it is unclear which conversion “said conversion” is
intended to reference. Finally, metric(s) are calculated based on
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conversions for conversions records that may not have
conversion data.
Id.
We disagree with the Examiner’s conclusion that the claims are
unclear. The test for definiteness under 35 U.S.C. § 112 is whether “those
skilled in the art would understand what is claimed.” Orthokinetics, Inc., v.
Safety Travel Chairs, Inc., 806 F.2d 1565, 1576 (Fed. Cir. 1986) (citations
omitted). In particular, breadth is not indefiniteness, provided the skilled
artisan is reasonably apprised of the meaning of the claim. Metabolite Labs.,
Inc. v. Lab. Corp. of Am. Holdings, 370 F.3d 1354, 1366 (Fed. Cir. 2004).
We agree with Appellant that one of ordinary skill in the art would
understand the term “said conversion,” as recited in claim 1, to refer to “one
‘said conversion,’” which actually refers to “the same ‘said retrieved
conversion record having said conversion.’” Appeal Br. 20; see also Reply
Br. 4–5. Appellant also clarifies that conversions are different from
conversion records such that “the conversion record has conversions in it.”
Appeal Br. 21.
Based on the distinction drawn between the terms “conversion” and
“conversion record,” we agree with Appellant that the metes and bound of
the disputed claim feature in claim 1 is understood by the skilled artisan to
require “determining a first metric based on impressions and conversions for
said retrieved conversion record having said conversion and determining
a second metric for said retrieved conversion record immediately later in
time from said retrieved conversion record having said conversion.”
Appeal Br. 20; see also Reply Br. 5. Therefore, we are persuaded the
Examiner erred in rejecting claim 1 under 35 U.S.C. § 112, second
paragraph.
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REJECTION UNDER 35 U.S.C. § 101
“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). Arguments Appellant could have
made, but chose not to make, are deemed to be waived. See 37 C.F.R.
§ 41.37(c)(l)(iv).
Rejection and Arguments
The Examiner determines “the claimed invention, considering the
elements thereof both individually and as an ordered combination, is
directed to a judicial exception (i.e., a law of nature, a natural phenomenon,
or an abstract idea) without significantly more.” Final Act. 12–13. The
Examiner specifically finds the claims “are directed to the series of steps
instructing how to optimize advertising creatives, which is a fundamental
economic practice and thus an abstract idea.” Final Act. 13. The Examiner
also determines that the claims “do not include additional elements that are
sufficient to amount to significantly more than the judicial exception
because the recited processor and memory are generic computer structure
that serve to perform generic computer functions that are well-understood,
routine, and conventional activities previously known to the pertinent
industry.” Id. (citing Spec. ¶¶ 161–167).
Appellant contends the Examiner erred because the rejection did not
include a comparison of the claims with those discussed in the current
caselaw, nor consider “every claim limitation individually and in
combination as a whole.” Appeal Br. 22, 51. Specifically, Appellant argues
“[n]owhere did the examiner, for example explain how, a vector ordered in a
sequence from a first dimension to drop to a last dimension to drop is a
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fundamental economic practice.” Appeal Br. 22. Appellant further argues
that the Examiner erred because the claimed invention solves a problem that
improves the performance of the computer. Id.; see also Appeal Br. 52.
Referring to the decisions in Finjan,3 and DDR Holdings4, Appellant
contends the claimed invention is tied to computer technology and include
elements beyond generic computer components. See Appeal Br. 22–24.
Additionally, Appellant provides general arguments in support of eligibility
of the remaining claims and highlights the same arguments made for claim
1. See Appeal Br. 55–74.
Legal Principles
Patent-eligible subject matter is defined in 35 U.S.C. § 101 of the
Patent Act, which recites:
Whoever invents or discovers any new and useful process,
machine, manufacture, or composition of matter, or any new
and useful improvement thereof, may obtain a patent therefor,
subject to the conditions and requirements of this title.
There is, however, an implicit, longstanding exception to patent-
eligible subject matter in 35 U.S.C. § 101: “[l]aws of nature, natural
phenomena, and abstract ideas are not patentable.” Alice Corp. v. CLS Bank
Int’l, 573 U.S. 208, 216 (2014) (citation omitted). This exception precludes
patenting of “the basic tools of scientific and technological work” from
which all inventions spring. Id. at 216–17 (quotation marks and citation
omitted). Invention or discovery under § 101 is distinguished as being the

3 Finjan Inc. v. Blue Coat Systems, Inc., (N.D. Ca. Nov. 20, 2015); see also
Finjan, Inc. v. Blue Coat Systems, Inc., 879 F.3d 1299 (Fed. Cir. 2018).
4 DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1256 (Fed. Cir.
2014).
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application of such tools to an end otherwise satisfying the requirements of
the patent statutes. See Gottschalk v. Benson, 409 U.S. 63, 67 (1972).
The Supreme Court has established a framework for this eligibility
determination. Where a claim is directed towards a law of nature, natural
phenomena, or abstract idea, the elements of the claim as a whole must
ensure that the claim, in practice, amounts to significantly more than a patent
on the law of nature, natural phenomena, or abstract idea itself. Alice, 573
U.S. at 217–18. In applying this eligibility analysis, our reviewing court has
stated, “the decisional mechanism courts now apply is to examine earlier
cases in which a similar or parallel descriptive nature can be seen[,] . . . the
classic common law methodology for creating law when a single governing
definitional context is not available.” Amdocs (Isr.) Ltd. v. Openet Telecom,
Inc., 841 F.3d 1288, 1294 (Fed. Cir. 2016) (citation omitted).
In January 2019, the USPTO published revised guidance on the
application of § 101. See USPTO’s 2019 Revised Patent Subject Matter
Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (“Guidance”). Under
that guidance (“Step 2A”), the office first looks to whether the claim recites:
(1) Prong One: 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) Prong Two: additional elements that integrate the judicial
exception into a practical application (see MANUAL OF PATENT
EXAMINING PROCEDURE (MPEP) §§ 2106.05(a)–(c), (e)–(h)
(9th ed. Rev. 10. 2019, June 2020)).
Only if a claim (1) recites a judicial exception, and (2) does not
integrate that exception into a practical application, do we then (pursuant to
the Guidance “Step 2B”) look to whether the claim:
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(3) adds a specific limitation beyond the judicial exception that
is not well-understood, routine, and conventional in the field
(see MPEP § 2106.05(d)); or
(4) simply appends well-understood, routine, and conventional
activities previously known to the industry, specified at a high
level of generality, to the judicial exception.
See Guidance, 84 Fed. Reg. at 56.
We review the appealed rejections for error based upon the issues
Appellant identifies, and in light of the arguments and evidence produced
thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential)
cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011)
(“[I]t has long been the Board’s practice to require an applicant to identify
the alleged error in the examiner’s rejections.”). After considering the
argued claims in light of the case law presented in this Appeal and each of
Appellant’s arguments, we are not persuaded the Examiner’s rejection is in
error. We adopt the Examiner’s findings and conclusions as our own, to the
extent consistent with our analysis herein. We add the following primarily
for emphasis and clarification with respect to the Guidance.
I. Step 2A
Prong One
Pursuant to the Guidance, we determine that claims 1–14 are directed
to an abstract idea, and more specifically to a system for controlling a selling
campaign on an advertiser’s website based on how a user acts on the
advertisement. The claims specifically “are directed to the series of steps
instructing how to optimize advertising creatives, which is a fundamental
economic practice, a method of organizing human activity, and an idea of
itself and thus an abstract idea.” See Ans. 6. As further stated by the
Examiner,
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Regarding claim 1, determining when said website based
selling campaign is cost per action and determining when an
advertiser's pixel on a website is not detected and then:
retrieving from a server campaign impressions and conversion
records for a predetermined time interval for said website based
selling campaign; checking when a last in time retrieved
conversion record has no conversions; when said last in time
retrieved conversion record has conversions then not sending
said stop command; when said retrieved last in time retrieved
conversion record has no conversions then starting from said
retrieved last in time retrieved conversion record having no
conversions: (a) checking sequentially a next earlier in time
retrieved conversion record; repeating step (a) until a retrieved
conversion record has a conversion; determining a first metric
based on impressions and conversions for said retrieved
conversion record having said conversion and determining a
second metric for said retrieved conversion record immediately
later in time from said retrieved conversion record having said
conversion; determining a ratio of said first metric to said
second metric; when said ratio is greater than a predetermined
stop ratio then not sending said stop command; and when said
ratio is not greater than a predetermined stop ratio then sending
said stop command are component steps directed to a
fundamental economic practice because they work to maximize
the returns provided by advertising creatives. See Alice, 134 S.
Ct. at 2356-57 (2014) (holding a scheme for mitigating
settlement risk was an abstract idea). In combination, these
component steps amount to the searching for conversions and
determining performance metrics steps of optimizing
advertising creatives.
Ans. 6–7. We also agree with the Examiner that the recited steps, involving
determining when an advertiser’s pixel on a website is not detected,
retrieving campaign impressions and conversion records, checking the time
of conversion, and determining metrics, describe functions related to
“optimizing advertising creatives,” which are directed to “managing
personal behavior, relationships and interactions between people (including
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social activities, teaching, and following rules or instructions).” See Ans. 7–
8 (citing Content Extraction & Transmission LLC v. Wells Fargo Bank,
Nat’l Ass’n, 776 F.3d 1343 (Fed. Cir. 2014) (discussing that merely
presenting the results of abstract processes of collecting and analyzing
information, without more (such as identifying a particular tool for
presentation), is abstract as an ancillary part of such collection and analysis.
)); see also Guidance, 84 Fed. Reg. at 52. Pursuant to the Guidance, such
limitations are the abstract concept of “[c]ertain methods of organizing
human activity.” Id.
We further observe that claim 1 recites an act of judgment and
evaluation in the form of the above-cited limitations, which allows a user to
send a stop command based on determining, retrieving, and evaluating
different factors related to a selling campaign. See also Ans. 8–9
(determining the recited steps are directed to abstract ideas because “they
examine data and compare information to optimize the advertising
creatives.”). Such acts are characteristic of mental processes, which
comprise a category of abstract ideas. October 2019 Update to the
Guidance, 7–9; Cybersource v. Retail Decisions, 654 F.3d 1366, 1372 (Fed.
Cir. 2011) (finding steps extending to “essentially any method of detecting
credit card fraud based on information relating past transactions,” to be an
unpatentable mental process) and FairWarning IP, LLC v. Iatric Systems,
Inc., 839 F.3d 1089, 1093–94 (Fed. Cir. 2016) (finding claims to “detecting
fraud and/or misuse in a computer environment based on analyzing data
such as in log files, or other similar records, including user identifier data” to
be an ineligible mental process).
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Claim 2 adds a mathematical expression for the first metric, which
falls under the mathematical concepts grouping. Independent claims 3 and
7, as well as the remaining claims dependent therefrom, recite functions
similar to claim 1 that, when considered as a whole, are directed to
fundamental economic principles or commercial interactions.
The Guidance states that the abstract idea exception includes
mathematical concepts, certain methods of organizing human activity, and
mental processes. Guidance, 84 Fed. Reg. at 52. The Guidance describes
mental processes as observations, evaluations, judgements, and opinions,
where such can be practically performed in the human mind. October 2019
Update: Subject Matter Eligibility 7, accessible at https://www.uspto.gov/
sites/default/files/documents/peg_oct_2019_update.pdf. Cases reciting steps
of collecting, comparing, and analyzing known information, which are
practically performed in the human mind, are provided as examples of such
mental processes. Id. at 7–8 (citing Classen,5 Electric Power6).
Prong Two
We are not persuaded the Examiner’s rejection is in error pursuant to
Step 2A, Prong Two of the Guidance. Appellant has not shown the claims
include additional elements that improve the underlying computer or other
technology. As the Examiner explains, Appellant’s disclosure describes a
problem that exists outside “the realm of technology” and “[t]he proposed
solution is one that could have been implemented directly by a general
purpose computer applied to facilitate the functions at a high level of

5 Classen Immunotherapies, Inc. v. Biogen IDEC, 659 F.3d 1057 (Fed. Cir.
2011) (collecting and comparing known information).
6 Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350 (Fed. Cir. 2016).
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generality or with the assistance of additional elements performing well-
known, conventional functions.” Ans. 9. In fact, Appellant has not pointed
to any particular part of the Specification to support the assertion that
“Applicant[’]s invention addresses a problem that CANNOT be solved.”
See Reply Br. 6. That is, Appellant has not identified any disclosure in the
Specification that describes how the solution to the stated problem in
conventional methods of determining the effectiveness of an advertisement
improves the computer technology, similar to Enfish. The recited steps
involve functions that do not improve the computer or its components’
functionality or efficiency, or otherwise change the way those devices
function, at least in the sense contemplated by the Federal Circuit in Enfish.
The claimed self-referential table in Enfish was a specific type of data
structure designed to improve the way a computer stores and retrieves data
in memory. Enfish, 822 F.3d at 1339.
Additionally, we are unpersuaded by Appellant’s argument that the
claimed invention is rooted in computer technology the way the claims in
DDR were. See Appeal Br. 23. Unlike the inventive concept found in DDR
(“modification of conventional mechanics behind website display to produce
dual-source integrated hybrid display” where “[T]he claimed solution is
necessarily rooted in computer technology in order to overcome a problem
specifically arising in the realm of computer networks.”), the claims at issue
here merely require “off-the-shelf, conventional, computer, network, and
display technology.” See DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d
1245, 1257 (Fed. Cir. 2014).
Additionally, “merely adding computer functionality to increase the
speed or efficiency of the process does not confer patent eligibility on an
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otherwise abstract idea.” Intellectual Ventures I LLC v. Capital One Bank
(USA), 792 F.3d 1363, 1370 (Fed. Cir. 2015). Moreover, the recited
functions of determining/checking different aspects of a selling campaign
based on conversion records and comparing the results is still an abstract
concept under the Guidance. See Synopsys, Inc. v. Mentor Graphics Corp.,
839 F.3d 1138, 1151 (Fed. Cir. 2016) (holding that “a claim for a new
abstract idea is still an abstract idea”) (emphasis omitted). That is,
monitoring and recognizing manual activities by retrieving, checking, and
comparing information, even performed on a computer, are parts of the
recited abstract idea, as discussed above. See also Ans. 8–9.
The holding in Core Wireless Licensing S.A.R.L. v. LG Elec., Inc., 880
F.3d 1356 (Fed. Cir. 2018) also shows why the abstract ideas in this case are
not integrated into a practical application. Unlike Appellant’s claim 1, the
claims in Core Wireless recited an improved user interface. 880 F.3d at
1362. The claimed “application summary” specified a particular manner to
access a summary window, a particular type of data to be displayed in the
summary window, and a particular time to display the summary window
when an application is in an un-launched state. Id. at 1362–63. The claims
thus recited a specific improvement to user interfaces that displayed a
limited set of information using unconventional user interface methods. Id.
at 1363.
As the argued elements are part of the abstract idea, they are not
additional elements that integrate the identified abstract idea into a practical
application. See Guidance, 84 Fed. Reg. 54–55 (“[E]valuate integration into
a practical application by: (a) Identifying whether there are any additional
elements recited in the claim beyond the judicial exception(s)”).
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Accordingly, we determine the claim does not integrate the judicial
exception into a practical application. See Guidance, 84 Fed. Reg. at 54.
Because we determine the “claim recites a judicial exception and fails to
integrate the exception into a practical application,” we proceed with
“further analysis pursuant to the second step of the Alice/Mayo test (USPTO
Step 2B).” Guidance, 84 Fed. Reg. at 51.
II. Step 2B
We agree with the Examiner that “[t]he additional elements, including
the recited computer system, non-transitory medium, computer program
product, memory, and processor, are generic computer structure that serve to
perform generic computer functions that are well-understood, routine, and
conventional activities previously known to the pertinent industry.” Ans. 9
(citing Spec. ¶¶ 161–167). As further explained by the Examiner, the recited
computer system, non-transitory medium, computer program product, and
the memory are described in Appellant’s Specification as generic
components such that:
Regarding the processor, see, e.g. Appellant’s specification at
[00164] (“For example, any of the methods according to the
present invention can be implemented in hard-wired circuitry,
by programming a general-purpose processor, or by any
combination of hardware and software. One of ordinary skill in
the art will immediately appreciate that the invention can be
practiced with computer system configurations other than those
described, including hand-held devices, multiprocessor
systems, microprocessor-based or programmable consumer
electronics, digital signal processing (DSP) devices, set top
boxes, network PCs, minicomputers, mainframe computers, and
the like.”). In combination, these elements merely continue to
perform their defined functions. Thus, the recited computer
system, non-transitory medium, computer program product,
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memory, and processor elements, alone or in combination, do
not amount to significantly more than the abstract idea.
Ans. 11–12. Regarding the additional elements, we observe that the claimed
components merely amount to the application or instructions to apply the
abstract idea (i.e., a series of steps for collecting and processing information
for analysis of a selling campaign to determine the advertisement
effectiveness), which amount to nothing more than requiring a generic
computer system, including a processor, memory, databases and electronic
devices, to merely carry out the abstract idea itself. See Spec. ¶¶ 161–167
(describing generic algorithms, computing devices, memory units, generic
processors, software, and machine-readable medium). Using generic
computer components to perform abstract ideas does not provide the
necessary inventive concept. See Alice, 573 U.S. at 223 (“[T]he mere
recitation of a generic computer cannot transform a patent-ineligible abstract
idea into a patent-eligible invention.”). Thus, these elements, taken
individually or together, do not amount to “significantly more” than the
abstract ideas themselves. Therefore, the claims have not been shown to be
“significantly more” than the abstract idea.
Additionally, we note that the Examiner has made the above findings
as required by the notice requirement of 35 U.S.C. § 132. See also In re
Jung, 637 F.3d at 1363 (declining “to impose a heightened burden on
examiners beyond the notice requirement of § 132”). In rejecting the
pending claims under § 101, the Examiner notified Appellant that the claims
“are directed to the series of steps instructing how to optimize advertising
creatives, which is a fundamental economic practice and thus an abstract
idea,” and that the claims “do not include additional elements that are
sufficient to amount to significantly more than the judicial exception.” See
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Final Act 13. In particular, contrary to Appellant’s assertions (Reply Br. 6–
7), the Examiner found “the recited processor and memory are generic
computer structure that serve to perform generic computer functions that are
well-understood, routine, and conventional activities previously known to
the pertinent industry,” in accordance with Berkheimer v. HP Inc., 881 F.3d
1360, 1368 (Fed. Cir. 2018). Final Act. 13. The Examiner specifically cited
portions of Appellant’s Specification and Court decisions to establish the
recited functions, including determining different aspects of a selling
campaign, retrieving conversion records, and sending a stop command
constitute elements that are well-understood, routine and conventional to a
skilled artisan. Id.; Ans. 4–12.
Conclusion
For at least the above reasons, we agree with the Examiner that claim
1 is “directed to” an abstract idea and do not recite an “inventive concept.”
Accordingly, we sustain the Examiner’s rejection of claim 1, as well as the
remaining claims which fail to include additional elements that add
significantly more to the abstract idea, under 35 U.S.C. § 101.
REJECTION UNDER 35 U.S.C. § 103
Claim 1
In rejecting claim 1, the Examiner finds Lipsky discloses the recited
instructions stored in a non-transitory medium for performing the steps of
retrieving campaign impressions and conversion records, checking the
records with no conversions, not sending a stop command when the record
has conversions, and determining a first metric and a second metric, whereas
Deacon discloses detecting an advertiser’s pixel on a website. Final Act.
14–15 (citing Lipsky ¶¶ 15, 24, 29, 30, 46, Figs. 2, 3; Deacon ¶ 64). The
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Examiner further relies on Donovan as disclosing the process of starting
from the last record if the desired data is not available and checking
sequentially until the desired data is retrieved, and relies on Kandasamy as
disclosing determining a ratio of the first metric to the second metric. Final
Act. 15 (citing Donovan col. 7, ll. 41–64; Kandasamy ¶¶ 5, 10, 19).
Regarding claim 1, Appellant contends “Kandasamy fails to teach
determining a ratio of said first metric to said second metric [0005] because
Kandasamy’s advertising criterion does not include conversions and
impressions on which applicant’s metrics are based as claimed.” Appeal Br.
26. Additionally, Appellant asserts that the cited portions of the reference
teach performance metrics of two campaigns, rather than the first and second
metrics of a single campaign. Id. According to Appellant, Kandasamy
discloses two campaigns, a parent advertising campaign and a child
advertising campaign, where the child campaign is pruned if the parent’s
performance metric falls below a threshold. Id. (citing Kandasamy ¶¶ 5, 10).
Appellant further contends the cited portions of Kandasamy, in paragraphs
10 and 19, do not teach “sending a stop command to a website based selling
campaign.” Id.7
The Examiner further explains that:
In response to Appellant’s arguments against the
references individually, specifically that Kandasamy does not

7 Appellant also contends the Examiner erred because the cited portion in
column 7 of Deacon “fails to teach when said retrieved last in time retrieved
conversion record has no conversions then starting from said retrieved last in
time retrieved conversion record having no conversions” and “(a) checking
sequentially a next earlier in time retrieved conversion record; repeating step
(a) until a retrieved conversion record has a conversion.” Appeal Br. 25.
We do not address this additional contention because the above-discussed
contentions are dispositive of the issue on appeal.
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teach conversions or impressions, one cannot show
nonobviousness by attacking references individually where the
rejections are based on combinations of references. See In re
Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re
Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
Kandasamy teaches: determining a ratio of said first
metric to said second metric in [0005] (ratio of advertising
criterion); when said ratio is greater than a predetermined stop
ratio then not sending said stop command in [0010] and [0019]
(pruning command [stop command] is not sent when ratio is
greater than a predetermined threshold); and when said ratio is
not greater than a predetermined stop ratio then sending said
stop command in [0010] and [0019] (pruning command [stop
command] sent when ratio is not greater than a predetermined
threshold).
Ans. 13–14.
We disagree with the Examiner’s conclusion based on these findings.
We observe that Kandasamy discloses a system for optimizing advertising
campaigns, wherein “a ratio between a value of an advertising criterion in
the parent advertising campaign and a value of the advertising criterion in
the child advertising campaign varies with a relationship between the first
geographic location and the second geographic location.” Kandasamy ¶ 7.
Kandasamy further discloses “[t]he method further comprises pruning a
child node from the tree if a performance metric corresponding to the parent
node is below a predetermined threshold value.” Kandasamy ¶ 10. As such,
Kandasamy determines a first metric for the parent node and a second metric
for the child node, whereas Appellant’s claim 1 requires determining a first
metric for “said retrieved conversion record having said conversion” and a
second metric for “said retrieved conversion record immediately later in time
from said retrieved conversion record having said conversion.” See claim 1
(emphasis added). Therefore, we agree with Appellant that Kandasamy
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compares the determined metric with a fixed threshold, rather than
comparing the two metrics, as recited in claim 1. We are also persuaded by
Appellant’s argument that the Examiner has not sufficiently explained how
pruning a child node in Kandasamy meets the recited sending a stop
command to the website handling the selling campaign. See also Reply Br.
8.
Claim 3
The Examiner relies on the combination of Greenbaum with
Borgsmidt and Hu to reject independent claim 3. Final Act. 17–19.
Appellant contends that the proposed rejection is in error because:
Further Borgsmidt fails to teach run rule sets has at least
a vector representing dimensions of a cube stored in said
database and a believability test for a cell in said cube; because
Borgsmidt at [0004] is discussing cells in a validation rule
hyperplane not a vector. Vectors are different than a
hyperplane. Nor does Borgsmidt disclose run rule sets, or a
believability test for a cell.
Appeal Br. 28.8
The Examiner responds by reiterating that “Borgsmidt teaches run
rule sets in (Figure 6), [0004], and [0045]-[0047] (e.g. rule object, validation
expression); a vector representing dimensions of a cube stored in said
database and a believability test for a cell in said cube in (Figure 6), [0004],
and [0045]-[0047] (string of cells is vector representing dimensions, and
rules/validation expressions stored in cell).” Ans. 15.
We are persuaded by Appellant’s argument that Borgsmidt discloses
rule objects comprising data cubes, where each cube includes “one

8 We do not address Appellant’s other contentions regarding claim 3 because
this contention is dispositive of the issue on appeal.
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‘expression results’ hyperplane per rule objects,” rather than a vector
representing dimensions of a cube stored in the database. In other words,
Borgsmidt provides no disclosure related to a vector, as recited in claim 3,
and instead, includes validation rule hyperplanes that contain data indicating
whether the data complies with a validation rule. See Borgsmidt ¶¶ 4, 45,
46.
Claim 7
The Examiner relies on the combination of Collins with Borgsmidt
and Hu to reject independent claim 7. Final Act. 26–28. Appellant contends
that the proposed rejection is in error because, similar to the above-stated
reason for claim 3, Borgsmidt fails to teach or suggest “wherein said first
rule sets are stored in said database, wherein each of said first rule sets has at
least (a) a vector representing dimensions of a cube stored in said database,”
as recited in claim 7. Appeal Br. 45.9 The Examiner’s response is similar to
the Examiner’s stated position regarding claim 3, which did not address how
a cube including hyperplanes disclosed in the cited portions of Borgsmidt
meets the recited “vector representing dimensions of a cube stored in said
database.” See Ans. 18–19; see also Borgsmidt ¶¶ 4, 45, 46.
Conclusion
For the above reasons, we agree with Appellant that the Examiner’s
proposed combination does not teach or suggest all the recited features of
independent claims 1, 3, and 7. Additionally, the Examiner has not
identified any teachings in the other applied prior art to cure the above-
discussed deficiencies of Kandasamy or Borgsmidt. Therefore, Appellant’s

9 Similarly, we do not address Appellant’s other contentions regarding claim
7 because this contention is dispositive of the issue on appeal.
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arguments have persuaded us of error in the Examiner’s position with
respect to the rejections of independent claims 1, 3, and 7, as well as the
remaining claims dependent therefrom.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1 112 Indefiniteness 1
1–14 101 Eligibility 1–14
1 103 Lipsky, Deacon,
Donovan,
Kandasamy
1
2 103 Lipsky, Deacon,
Donovan,
Kandasamy, Bhatt
2
3, 4, 10, 11 103 Greenbaum,
Borgsmidt, Hu
3, 4, 10, 11
5, 12 103 Greenbaum,
Borgsmidt, Hu, De
Bonet
5, 12
6, 13, 14 103 Greenbaum,
Borgsmidt, Hu,
Kamangar
6, 13, 14
7–9 103 Collins,
Borgsmidt, Hu
7–9
Overall
Outcome
1–14

FINALITY AND 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).
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AFFIRMED