Leeds, Douglas D. et al.

Patent Trials and Appeals Board

Apr 7, 2020

13916510 - (D) (P.T.A.B. Apr. 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.
13/916,510 06/12/2013 Douglas D. Leeds 047611.021610 4463
30734 7590 04/07/2020
BakerHostetler
Washington Square, Suite 1100
1050 Connecticut Ave. N.W.
Washington, DC 20036-5304
EXAMINER
REINHARDT, RICHARD G
ART UNIT PAPER NUMBER
3682
NOTIFICATION DATE DELIVERY MODE
04/07/2020 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):
edervis@bakerlaw.com
eofficemonitor@bakerlaw.com
patents@bakerlaw.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte DOUGLAS D. LEEDS,
JONATHAN M. WEINSTOCK, and
KATIE P. VAN DEN BOS

Appeal 2018-007789
Application 13/916,510
Technology Center 3600
____________

Before ERIC B. GRIMES, RICHARD M. LEBOVITZ, and
ULRIKE W. JENKS, Administrative Patent Judges.

LEBOVITZ, Administrative Patent Judge.

DECISION ON APPEAL
The Examiner rejected the claims under 35 U.S.C. § 101 as reciting
patent ineligible subject matter. Pursuant to 35 U.S.C. § 134(a), Appellant1
appeals from the Examiner’s decision to reject the claims. 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 IAC
Search & Media, Inc., which is a subsidiary of IAC/InterActiveCorp.
Appeal Br. 1.
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The Examiner finally rejected claims 1, 3–5, and 7–9 under 35 U.S.C.
§ 101 as directed to a judicial exception to patent eligibility. Final Act. 2.
We select claim 1 as representative. Claim 1 is reproduced below
(bracketed numbers and letters have been added for reference to the specific
limitations in the claim):
1. A method of advertising comprising:
[1] storing, in an advertiser computer system, a plurality
of key phrases in a key phrase advertising index;
[2] storing, with the advertiser computer system, a
relational data structure with key phrases and related
suggestions related to the key phrases;
[3] generating, with the advertiser computer system, a set
of related suggestions based on and for each respective key
phrase, wherein the related suggestions that are generated are
extracted from the relational data structure based on a matching
of each key phrase in the advertising index to a respective key
phrase in the relational data structure;
[4] storing, with the advertiser computer system, an
advertisement for and associated with each respective key
phrase;
[5] inserting, with the advertiser computer system, the
related suggestions generated for the respective key phrase
stored for the respective advertisement into the respective
advertisement for the same respective key phrase as the related
suggestions;
[6] successfully bidding, with the advertiser computer
system, for a key phrase on a search engine computer system
corresponding to the key phrase on the advertiser computer
system;
[7] [a] uploading, with the advertiser computer system,
the advertisement with the related suggestions onto the search
engine computer system, [b] the search engine computer system
receiving a query related to the bidden key phrase after
uploading the advertisement together with the related search
suggestions onto the search engine system and [c] transmitting
the advertisement for the key phrase corresponding to the
bidding with the related suggestions for the key phrase
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corresponding to the bidding to a user computer system, [d] a
user at the user computer system selecting one of the related
suggestions, each related suggestion having a respective
hyperlink that sends a request signal from the user computer
system to the advertiser computer system;
[8] receiving, with the advertiser computer system, the
request signal from the user computer system; and
[9] causing, with the advertiser computer system,
transmission of a response signal to the user computer system
in response to the request signal.

Principles of Law
Under 35 U.S.C. § 101, an invention is patent-eligible if it claims a
“new and useful process, machine, manufacture, or composition of matter.”
However, not every discovery is eligible for patent protection. Diamond v.
Diehr, 450 U.S. 175, 185 (1981). “Excluded from such patent protection are
laws of nature, natural phenomena, and abstract ideas.” Id. The Supreme
Court articulated a two-step analysis to determine whether a claim falls
within an excluded category of invention. Alice Corp. Pty. Ltd. v. CLS Bank
Int’l, 573 U.S. 208, 216 (2014); Mayo Collaborative Servs. v. Prometheus
Labs, Inc., 566 U.S. 66, 75–77 (2012).
In the first step, it is determined “whether the claims at issue recite
“one of those patent-ineligible concepts.” Alice, 573 U.S. at 217. If it is
determined that the claims recite an ineligible concept, then the second step
of the two-part analysis is applied in which it is asked “[w]hat else is there in
the claims before us?” Id. The Court explained that this step involves:
a search for an ‘inventive concept’ — i.e., 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 217–18 (citing from Mayo, 566 U.S. at 75–77).
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Alice, relying on the analysis in Mayo of a claim directed to a law of
nature, stated that in the second part of the analysis, “the elements of each
claim both individually and ‘as an ordered combination’” must be
considered “to determine whether the additional elements ‘transform the
nature of the claim’ into a patent-eligible application.” Alice, 573 U.S. at
217.
The PTO published guidance on the application of 35 U.S.C. § 101.
USPTO’s January 7, 2019 Memorandum, 2019 Revised Patent Subject
Matter Eligibility Guidance, 84 Fed. Reg. 50, 51–57 (2019) (“Eligibility
Guidance”). This guidance provides additional direction on how to
implement the two-part analysis of Mayo and Alice.
Step 2A, Prong One, of the 2019 Eligibility Guidance, looks at the
specific limitations in the claim to determine whether the claim recites a
judicial exception to patent eligibility. In Step 2A, Prong Two, the claims are
examined to identify whether there are additional elements in the claims that
integrate the exception in a practical application, namely, is there a
“meaningful limit on the judicial exception, such that the claim is more than
a drafting effort designed to monopolize the judicial exception.” 84 Fed.
Reg. 54 (2. Prong Two).
If the claim recites a judicial exception that is not integrated into a
practical application, then, as in the Mayo/Alice framework, Step 2B of the
Eligibility Guidance instructs us to determine whether there is a claimed
inventive concept to ensure that the claims define an invention that is
significantly more than the ineligible concept, itself. 84 Fed. Reg. 56. In
making this determination, we must consider whether there are specific
limitations or elements recited in the claim “that are not well-understood,
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routine, conventional activity in the field, which is indicative that an
inventive concept may be present” or whether the claim “simply appends
well-understood, routine, conventional activities previously known to the
industry, specified at a high level of generality, to the judicial exception,
indicative that an inventive concept may not be present.” 84 Fed. Reg. 56
(footnote omitted).
With these guiding principles in mind, we proceed to determine
whether the claimed subject matter in this appeal is eligible for patent
protection under 35 U.S.C. § 101.

Discussion
Claim 1 recites a “method of advertising.” Following the first step of
the Mayo/Alice analysis, we find that the claim is directed to a method, and
therefore falls into one of the broad statutory categories of patent-eligible
subject matter under 35 U.S.C. § 101. We thus proceed to Step 2A, Prong
One, of the Eligibility Guidance.

Step 2A, Prong One
In Step 2A, Prong One, of the Eligibility Guidance, the specific
limitations in the claim are examined to determine whether the claim recites
a judicial exception to patent eligibility, namely whether the claim recites an
abstract idea, law of nature, or natural phenomenon.
The Examiner found that the claims recite “the abstract idea of
generating related suggestions based on key phrases and inserting them into
advertisements” and “organizing information.” Final Act. 2–3. The
Examiner found that the steps recited in claim 1 describe “concepts
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identified as abstract ideas by the courts.” Id. at 3. The Examiner also found
that the steps could be performed in the human using pen and paper, citing
inter alia, the steps of storing information and generating suggestions based
on key phrases. Id.
Appellant contends that the Examiner did not present a prima facie
case of ineligibility. Appeal Br. 16. Appellant states that the Examiner
“presents no reasoning as to why the ordered combination” of steps recited
in claim 1 “presents a routine and conventional way of Internet advertising.”
Id. Appellant also argues that the Examiner did not “address the benefits
enabled by the disclosure—more easily updating hyperlinks and serving a
broader set of user queries with an ad while maintaining an ability to tailor
the ad to a query—and why conventional advertising systems would already
provide these benefits.” Id. at 16–17.
To begin, we do not agree with Appellant that the Examiner failed to
meet the burden of establishing that the claims recite an abstract idea. The
Examiner specifically identified steps in the claim that the Examiner found
describe the “concept of generating related suggestions based on key phrases
and inserting them into advertisements, which corresponds to concepts
identified as abstract ideas by the courts.” Final Act. 3. The Examiner further
identified the main focus of the claim as directed to the abstract “concept of
generating sets of related suggestions for the key phrases associated with an
advertisement, and the organizing and storing of this information in a
relational data structure.” Id. The Examiner therefore pointed to specific
steps in the claim which the Examiner found constituted the recited abstract
ideas.
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We agree with the Examiner’s determination that the claims recite an
abstract idea. Under the 2019 Eligibility Guidance, the steps of advertising
identified by the Examiner falls into category “(b) Certain methods of
organizing human activity.” 84 Fed. Reg. 52. The Eligibility Guidance
specifically cites “advertising” as an abstract idea of organizing human
activity. Id. The Eligibility Guidance cited Ultramercial, Inc. v. Hulu, LLC,
772 F.3d 709 (Fed. Cir. 2014) as holding that an advertising method is
directed to an abstract idea. 84 Fed. Reg. 52 (fn. 13).
In Ultramercial, the court found that the steps of the claim in which
users “select advertisements” was directed to an abstract idea. Ultramercial,
772 F.3d at 714. The court reviewed the specific steps in the claim and
found that they recite “abstraction—an idea, having no particular concrete or
tangible form.” Id. at 715. The court stated that the recited process of
“receiving copyrighted media, selecting an ad, offering the media in
exchange for watching the selected ad, displaying the ad, allowing the
consumer access to the media, and receiving payment from the sponsor of
the ad all describe an abstract idea, devoid of a concrete or tangible
application.” Id.
Claim 1 has the same deficiency. As explained by the Examiner, steps
[1], [2], and [4] of the claim comprise storing key phrases and related
suggestions. The storage could be accomplished with paper and pen by
writing it down, as found by the Examiner.
In step [3], related suggestions are generated. This step could also be
performed mentally, e.g., determining different misspellings of a keyword as
a suggestion. Step [3] is integral to the method of advertising because the
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suggestions are subsequently inserted into a stored advertisement in step [5]
(step [4] first stores the advertisement with key phrases).
Step [6] is directed to bidding for key phrases. Step [7] can be
divided into four parts: [a] uploading the advertisement into a search engine;
[b] receiving a query for the bidden phrase on the search engine; [c]
transmitting the advertisement with the key phrases to a user computer
system; and [d] a user selecting a suggestion, where each suggestion has a
hyperlink “that sends a request signal from the user computer system to the
advertiser computer system.” In step [8], the signal is received by the
advertiser computer which [9] sends a response to the user computer. Each
of the steps are integral to the method of advertising because they represent
the steps in which the advertisement with the key words and related
suggestions are downloaded, searched for, and transmitted to the user as an
advertisement. These steps are similar to those in Ultramercial of selecting
an ad and displaying an ad to a user. Consequently, we agree with the
Examiner that claim 1 contains steps which recite the abstract idea of
advertising.
Appellant argues that the claim is not directed to an abstract idea.
Appeal Br. 17. Appellant argues:
To determine whether the claims are directed to an abstract
idea, the Federal Circuit teaches that the relevant inquiry is
“whether the focus of the claims is 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.” [Enfish, LLC v. Microsoft Corp.,
822 F.3d 1327, 1335–36 (Fed. Cir. 2016)].
Appeal Br. 17. Appellant asserts that the claims are directed to a specific
improvement in computer capabilities. Id.
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This argument is not persuasive. In the first step of the Mayo/Alice
analysis, it is determined whether the claims recite a patent-ineligible
concept. Alice, 573 U.S. at 218–219. If it is determined that the claims recite
an ineligible concept, then the second step of the two-part analysis is applied
in which it is asked “[w]hat else is there in the claims before us?” Id. The
Court explained that this step involves “a search for an [‘]inventive
concept[’] — i.e., 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.’” Id. (Citing from Mayo, 566 U.S. at 75–
77). Thus, Appellant’s statement that the “relevant inquiry” is whether there
is a specific improvement in computer capabilities is not correct; first, it
must be determined whether the claim recites an abstract idea.
In sum, for the foregoing reasons, we find that claim 1 recites an
abstract idea. Accordingly, we proceed to Step 2A, Prong Two, of the
Eligibility Guidance

Step 2A, Prong Two
Prong Two of Step 2A under the 2019 Eligibility Guidance asks
whether there are additional elements that integrate the exception into a
practical application. As in the Mayo/Alice framework, we must look at the
claim elements individually and “as an ordered combination” to determine
whether the additional elements integrate the recited abstract idea into a
practical application. As discussed in the Eligibility Guidance, “[a] claim
that integrates a judicial exception in a practical application will apply, rely
on, or use the judicial exception in a manner that places a meaningful limit
on the judicial exception, such that the claim is more than a drafting effort
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designed to monopolize the judicial exception.” Eligibility Guidance, 84
Fed. Reg. 54. Integration into a practical application is evaluated by
identifying whether there are additional elements individually, and in
combination, which go beyond the judicial exception, e.g., by providing an
improvement to a technical field or technology. Eligibility Guidance, 84
Fed. Reg. 54–55.
Appellant acknowledges that “[c]onventionally, . . . advertising over
the Internet utilizes an advertiser computer system that stores ‘key phrases,’
each associated with an advertisement.” Appeal Br. 13–14. Appellant
explains that in this conventional system a bidding process ensures that
when a query is submitted to a search engine, an advertisement is served to
the user when the query is matched to a key phrase. Id. at 14. Appellant
further acknowledges that “ads have been pre-embedded [with] a hyperlink
so that, when the ad selected from the bidding process is served, the user has
the ability to click on a link to navigate to the advertiser’s web page.” Id.
Appellant identifies a shortcoming with “conventional” advertising methods:
if an advertiser wanted to include a hyperlink in an online ad,
the advertiser would have to design the ad with the hyperlink
pre-embedded. [Spec. 1, ¶ 3] This creates problems arising
specifically in the technical context of the Internet: any desired
links would be associated with a key phrase, so altering the
hyperlink would necessitate redesigning the ad.
Appeal Br. 14.
Appellant explains that the Specification describes “a technical
solution to this technical problem.” Appeal Br. 14. Appellant states:
Specifically, the specification describes an advertiser computer
system that includes a relational data generator in
communication with a relational data structure that includes key
phrases. Id. at p. 8, ¶ [0021]. The relational data structure,
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moreover, includes a plurality of related suggestions associated
with each key phrase. Id. A hyperlink generator can generate a
unique hyperlink to be associated with each related suggestion.
Id. at p. 9, ¶ [0024]. Accordingly, when a bidding process
matches a key phrase to a search query, the advertiser computer
system can serve an ad generated to include a plurality of
related suggestions, each with a generated hyperlink, based on
the matched key phrase. Id. at p. 9, ¶ [0025].
Appeal Br. 14.
Appellant further explains:
This leads to an improvement for the advertiser, which could
replace an outdated hyperlink, or could replace an outdated or
ineffective related suggestion (and hyperlink), while still
maintaining an ad associated with a key phrase. This
improvement to the technology eliminates the necessity of
redesigning an entire ad when only small changes need to be
made. This problem of updating Internet ads that incorporate
hyperlinks – a technical problem arising specifically in the
realm of the Internet – is thus alleviated by Applicant’s
disclosure.
Appeal Br. 15.
These arguments do not persuade us that the Examiner erred in
rejecting the claims. Appellant did not identify what step in claim 1
corresponds to this “hyperlink generator.” Step [3] of claim 1 generates the
related suggestions. The suggestions are inserted into the advertisement in
step [5]. There is no mention of generating hyperlinks that are inserted into
the advertisement or replacing them as asserted by Appellant. Appeal Br.
15, 17. In step [7][d], the claim recites “a user at the user computer system
selecting one of the related suggestions, each related suggestion having a
respective hyperlink.” However, this step does not describe how the
suggestion became initially associated with the hyperlink. Appellant’s
assertion that the improvement enables outdated links to be replaced, which
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eliminates the need to redesign ads, is not reflected in the language of the
claim. Appellant did not direct us to the words in the claim that manifest the
asserted improvement comprising the incorporation of hyperlinks.
Appellant further argues that claim 1 is directed to a specific
improvement in computer capabilities. Appeal Br. 17. In making this
argument, Appellant lists steps [2]–[7] of the claim. We have already found
that steps [3] and [7] are integral to the method of advertising and therefore
cannot serve as the additional element beyond the judicial exception.
Step [2] of the claim comprises storing key phrases and related
suggestions in a “relational data structure.” Appellant did not explain how
this step of the claim constitutes an improvement to the advertising method.
Appellant asserts it improves computer functionality, but Appellant did not
establish that the relational data structure imparts an improvement to the
computer as it did in Enfish, LLC v. Microsoft Corp., 822 F.3d 1327 (2016).
In Enfish, 822 F.3d at 1366, the claims were directed to a data storage
and retrieval system for a computer memory comprising a logical table that
included “a plurality of logical rows,” each “including an object
identification number (OID)” and “a plurality of logical columns intersecting
said plurality of logical rows to define a plurality of logical cells, each said
logical column including an OID to identify each said logical column.” In
finding the claims patent-eligible, the court explained 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.” Enfish, 822 F.3d at 1336. The court turned to the specification
which taught “that the self-referential table functions differently than
conventional database structures” and “achieves other benefits over
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conventional databases, such as increased flexibility, faster search times, and
smaller memory requirements.” Id. at 1337. The court further stated “the
self-referential table recited in the claims on appeal is a specific type of data
structure designed to improve the way a computer stores and retrieves data
in memory.” Id. at 1338. Based on these findings, the court held that the
claims on appeal were “directed to a specific implementation of a solution to
a problem in the software arts” and not an abstract idea. Id.
The claims here are distinguishable because rejected claim 1 does not
recite the specific structure of the “relational data structure” in the claim as
the Enfish claim did for its self-referential table. Appellant also does not
explain how the “relational data structure” improves the function of an
aspect of the computer. Appellant cites to Enfish in their Appeal Brief (at 11,
17), but does not explain how the facts in it lead to the determination that the
claims at issue in this appeal are patent-eligible.
Like Enfish, the claims in Visual Memory LLC v. NVIDIA
Corporation, 867 F.3d 1252, 1259 (Fed. Cir. 2017) were found to be patent-
eligible because they recited specific features, “having one or more
programmable operational characteristics, said characteristics being defined
through configuration by said computer based on the type of said processor”
which improved the computer memory system. Here, Appellant has not
identified a specific feature or characteristic of the “relational data structure”
of claim 1, step [2], which imparts an improvement to the computer.
Appellant also identifies step [4] of storing the advertisement, step [5]
of inserting the suggestions in the advertisements, and step [6] of bidding for
key phrases as improving computer capability. Appeal Br. 17. None of these
steps recite how the action is achieved. Thus, as discussed for step [2], these
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steps do not transform the abstract idea of the advertising into an eligible
practical application.
McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299 (Fed.
Cir. 2016) is also pertinent to our determination that that claims are directed
to patent-ineligible subject matter. In McRO, 837 F.3d at 1314, the court
noted that the “abstract idea exception has been applied to prevent patenting
of claims that abstractly cover results where ‘it matters not by what process
or machinery the result is accomplished.’ [O’Reilly v. Morse, 56 U.S. 62,
113 (1853)]; see also Mayo, 132 S.Ct. at 1301.” McRO stated that therefore,
a court must “look to whether the claims in these patents focus on a specific
means or method that improves the relevant technology or are instead
directed to a result or effect that itself is the abstract idea and merely invoke
generic processes and machinery.” McRO, 837 F.3d at 1314. In this case,
none of these steps identified by Appellant require the storing, inserting,
bidding, etc., to be executed in a specific manner or utilizing a specific
structure.
The claimed steps, as a whole, recite the desired result, but not the
specific rules that enable the result, which would deter preemption of the
abstract idea of organizing human activity. In McRO, the court held that the
“limitations in claim 1 prevent preemption of all processes for achieving
automated lip-synchronization of 3–D characters.” McRO, 837 F.3d at 1315.
The court explained that “[t]he specific structure of the claimed rules would
prevent broad preemption of all rules-based means of automating lip
synchronization.” Id. Here, the steps in rejected claim 1 are recited in such
general terms – storing a relational data structure (step [2]), generating
related suggestions based on matching to key phrases (step [3]), storing an
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advertisement (step [4]), inserting the suggestions in the advertisements
(step [5]), and of bidding for key phrases (step [6]) – that internet advertising
based on such steps would preempt the abstract idea embodied in the claims.
Step [7] recites the same generalities in how the steps are accomplished and
thus reflects the same deficiency.
Appellant also asserts that “another benefit” of its “disclosure” is the
ability to incorporate “several key phrases in an ad, [so that] an advertiser
can design an ad that is served to a broader array of users.” Appeal Br. 15,
citing Spec. 8, ¶ 21. Appellant explains that because “the ad is served in
response to a key phrase being matched with a user query, the inclusion of
multiple key phrases associated with the ad means that the ad could
successfully bid a broader selection of queries.” Appeal Br. 15. Appellant
did not identify a step in the claim that requires an advertisement to
comprise more than one key phrase. Step [5], for example, recites
“inserting, with the advertiser computer system, the related suggestions
generated for the respective key phrase stored for the respective
advertisement into the respective advertisement for the same respective key
phrase as the related suggestions.” (Emphasis added.) The step refers to
“the” key phrase and not more than one key phrases. Nonetheless, even if
the claim were construed to require more than one keyword in the claim, the
claim does not describe a specific manner in which it is inserted into the
claim and thus does not impart eligibility to the claim by providing an
“additional element” to the method of advertising.
Accordingly, for the foregoing reasons, we conclude that the recited
abstract idea of advertising recited in the claims is not integrated into a
practical application.
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Step 2B
Because we determined that the judicial exception is not integrated
into a practical application, we proceed to Step 2B of the Eligibility
Guidance, which asks, as in the Mayo/Alice framework, whether there is an
inventive concept. In making this Step 2B determination, we must consider
whether there are specific limitations or elements recited in the claim “that
are not well-understood, routine, conventional activity in the field, which is
indicative that an inventive concept may be present” or whether the claim
“simply appends well-understood, routine, conventional activities previously
known to the industry, specified at a high level of generality, to the judicial
exception, indicative that an inventive concept may not be present.”
Eligibility Guidance, 84 Fed. Reg. 56 (footnote omitted). We must also
consider whether the combination of steps in the claim perform “in an
unconventional way and therefore include an ‘inventive step,’ rendering the
claim eligible at Step 2B.” Id. In this part of the analysis, “the elements of
each claim both individually and ‘as an ordered combination’” must be
considered “to determine whether the additional elements ‘transform the
nature of the claim’ into a patent-eligible application.” Alice, 573 U.S. at
217.
Appellant asserts that “the ordered combination of claim elements
constitutes an inventive concept.” Appeal Br. 18. Appellant explains that
“[f]irst, an advertiser can associate a hyperlink with a related suggestion,
which can in turn be associated with a key phrase, which can in turn be
associated with an ad” that “leads to an improvement for the advertiser,
which could replace an outdated hyperlink, or could replace an outdated or
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ineffective related suggestion (and hyperlink), while still maintaining an ad
associated with a key phrase.” Appeal Br. 19. Appellant states that, second,
“by incorporating potentially several key phrases in an ad, an advertiser can
design an ad that is served to a broader array of users.” Id. Appellant further
explains that “the same ad could be dynamically generated to include
different related suggestions based on the key phrase matched to the query.”
Id.
As already discussed, the inventive step described by Appellant does
not appear in the claim. Appellant refers to replacing outdated links and
dynamically generating an advertisement with links including different
suggestions to tailor the ad. But Appellant did not identify the claim steps
which enable the dynamically updating and tailoring of the ad. Accordingly,
we find Appellant’s argument unpersuasive because it has no nexus to the
steps listed in the claim.
The Specification acknowledges that hyperlinks on a web page were
conventional. (Spec. ¶ 3: “Recently, it has become possible for the inclusion
of multiple objects, each with a respective hyperlink in one advertisement.
An advertiser would typically include objects that, when selected by the
user, would direct the user to different pages on an advertiser’s web page.
These links are commonly referred to as ‘site links.’”). The claim does not
distinguish the “suggestion” embedded in the advertisement associated with
a suggestion (step [7][d]) from this conventional method.
The Examiner did not characterize the claim as “a routine and
conventional way of Internet advertising” as asserted by Appellant. Appeal
Br. 17. Rather, the Examiner expressly acknowledged that the steps of
“generating, organizing, and associating these related suggestions with key
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phrases, specifically with reference to advertisements, may not be routine
and conventional in and of itself.” Final Act. 3. The Examiner found,
however, that organizing and storing data is well-known and conventional,
and that the steps of the claims “do not articulate any particular technical or
concrete implementation of any of these concepts.” Id. Thus, the Examiner
considered each element of the claim and found the absence of an inventive
step.
Appellant also argues that the solution is deeply rooted in computer
technology, and cites DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d
1245 (Fed. Cir. 2014) to support the contention that the claims are patent
eligible. Appeal Br. 19. In DDR, the claims were directed to an “e-
commerce outsourcing system” “to serve a composite web page to the visitor
computer wit[h] a look and feel based on the look and feel description in the
data store and with content based on the commerce object associated wit[h]
the link.” DDR, 773 F.3d at 1249 (alterations in original). The court found
the claims to be patent eligible because “the claimed solution is necessarily
rooted in computer technology in order to overcome a problem specifically
arising in the realm of computer networks.” Id. at 1257.
Appellant did not establish that the rejected claims are “necessarily
rooted in computer technology” as they were in DDR. The steps in the claim
are performed on a computer system, but the steps do not address a problem
that improves the computer system which carries out the method. The
improvement asserted by Appellant of facilitating the dynamic updating of
hyperlinks is not even recited in the claims.

Appeal 2018-007789
Application 13/916,510

19
Summary
For the foregoing reasons, we affirm the rejection of claim 1 under
§ 101. Appellant stated in the Appeal Brief that it “elects to argue all
pending claims as a group with claim 1 being representative of the group.”
Appeal Br. 10. Accordingly, claims 3–5 and 7–9 fall with claim 1.

CONCLUSION
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1, 3–5, 7–9 101 Eligibility 1, 3–5, 7–9

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

AFFIRMED