McElfresh, Charles et al.

Patent Trials and Appeals Board

Sep 28, 2020

13175023 - (D) (P.T.A.B. Sep. 28, 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.
13/175,023 07/01/2011 Charles McElfresh 10779.5700 1837
39602 7590 09/28/2020
THE NOBLITT GROUP, PLLC
Daniel J. Noblitt
8777 NORTH GAINEY CENTER DRIVE
SUITE 175
SCOTTSDALE, AZ 85258
EXAMINER
STIBLEY, MICHAEL R
ART UNIT PAPER NUMBER
3688
NOTIFICATION DATE DELIVERY MODE
09/28/2020 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@ngtechlaw.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte CHARLES MCELFRESH, PAUL MINEIRO, and
MICHAEL RADFORD
____________

Appeal 2019-002100
Application 13/175,023
Technology Center 3600
____________

Before MURRIEL E. CRAWFORD, ANTON W. FETTING, and
ROBERT J. SILVERMAN, Administrative Patent Judges.

CRAWFORD, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134(a) of the
Examiner’s final rejection of claims 1 to 20. We have jurisdiction under 35
U.S.C. § 6(b).
SUMMARY OF DECISION
We AFFIRM.
THE INVENTION
Appellant claims a method for optimum placement of advertisement
on a webpage so that an event associated with the objects is more likely to
occur. (Spec. ¶ 1, ll. 5-9); Title).

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Claim 1 is representative of the subject matter on appeal.
Claim 1. A computer-implemented method of
providing placement of a plurality of advertisements on a
page accessible by a user, the page having positions for
receipt of the advertisements, each advertisement having at
least one link to information, the link being invoked by an
event identifying the advertisement by a computer pointing
device, the method comprising:
by a server, storing in a database and retrieving from
the database performance data associated with a likelihood
of the event occurring for each advertisement;
by the server, in response to a request for
advertisements from a web site, simultaneously arranging
the plurality of advertisements relative to one another on the
page according to the performance data so that an
advertisement with the highest likelihood of the event
occurring is arranged at a most prominent location on the
page and an advertisement with next highest likelihood of
the event occurring is arranged at a next most prominent
location;delivering data relating to the arranged plurality of
advertisements for placement on the page; and
by an advertiser-accessible interface which is in data
communication with the performance data in the database,
providing to an advertiser operating a remotely located
advertising client in data communication with the advertiser-
accessible interface, information about particular
performance data relating to advertisements that have been
displayed to users, the particular performance data based on
performance data retrieved from the database, for monitoring
and tracking at the advertising client performance of the
advertisements that have been displayed to the users.

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THE REJECTION
Claims 1–20 are rejected under 35 U.S.C. § 101 as directed to a
judicial exception without significantly more.
ANALYSIS
35 U.S.C. § 101 REJECTION
We will sustain the rejection of claims 1–20 under 35 U.S.C. § 101.
The Supreme Court
set forth a framework for distinguishing patents
that claim laws of nature, natural phenomena, and
abstract ideas from those that claim patent-eligible
applications of those concepts. First, . . . determine
whether the claims at issue are directed to one of
those patent-ineligible concepts. . . . If so, . . . then
ask, “[w]hat else is there in the claims before us?” .
. . To answer that question, . . . consider the
elements of each claim both individually and “as
an ordered combination” to determine whether the
additional elements “transform the nature of the
claim” into a patent-eligible application. . . . [The
Court] described step two of this analysis as 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 Corp. Pty. Ltd. v. CLS Bank Int’l, 573 U.S. 208, 217-218 (citing Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 72–73 (2012))
(citations omitted).
To perform this test, we must first determine whether the claims at
issue are directed to a patent-ineligible concept. The Federal Circuit has
explained that “the ‘directed to’ inquiry applies a stage-one filter to claims,
considered in light of the [S]pecification, based on whether ‘their character
as a whole is directed to excluded subject matter.’” See Enfish, LLC v.
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Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016) (quoting Internet
Patents Corp., 790 F.3d 1343, 1346 (Fed. Cir. 2015)). It asks whether the
focus of the claims is on a specific improvement in relevant technology or
on a process that itself qualifies as an “abstract idea” for which computers
are invoked merely as a tool. See id. at 1335–36.
In so doing we apply a “directed to” two prong test: 1) evaluate
whether the claim recites a judicial exception, and 2) if the claim recites a
judicial exception, evaluate whether the judicial exception is integrated into
a practical application. 2019 Revised Patent Subject Matter Eligibility
Guidance, 84 FR 50, pp 50–57 (Jan. 7, 2019).
The Examiner determines that the claims are directed to storing and
retrieving performance data for advertisements, arranging a plurality of
advertisements relative to one another according to performance data and
delivering data relating to the arranged plurality of advertisements which the
Examiner determines to be a mental processes (Final Act. 2–3). The
Examiner finds claims 1–20 do not contain an inventive concept sufficient to
transform the claimed abstract idea into a patent eligible application because
they do not go beyond the well-understood, routine and conventional. (Id. at
6).
The Specification states that the invention relates to optimizing the
placement of graphical objects such as advertisements on a page so that an
event associated with the objects is more likely to occur. The Specification
indicates that the event includes a user identifying or clicking on the object
with a pointing device. (Spec. 1, ll. 5-9). The Specification states as with
newspaper and other such advertising mediums, factors such as the location
and size of the ad on a webpage will affect the price charged. Ads appearing
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at the start of the webpage will usually command a higher price than ads
appearing at the end (Spec. 2, ll. 14–17).
The Specification also discloses that the system of the invention
gathers information relating to a user and stores this information in a central
database under a user identification tag which is passed to the user as part of
the cookie data. The user data is further grouped into a variety of bins
according to behavioral differences associated with such groups. A click-
through-percentage is calculated for each ad based upon the user
information, the associated bins, and the prior click-through-percentage
associated with the ad. The ads are arranged on the webpage in descending
order according to the calculated click-through-percentage for each ad.
(Spec. 7, ll. 7–14).
As the invention relates to placing advertisement on a webpage, the
invention relates to advertising and marketing or sales activities which are
certain methods of organizing human activity in the form of a fundamental
economic practices. Fundamental economic practices such as placing ads
where they will be most effecting is a judicial exception. Guidance, 84 Fed.
Reg. 52.
We also agree with the Examiner’s determination that the steps of
claim 1 constitute “analyzing information by steps people go through in their
minds, or by mathematical algorithms, without more, as essentially mental
processes within the abstract-idea category.” Elec. Power Grp., LLC v.
Alstom S.A., 830 F.3d 1350, 1354 (Fed. Cir. 2016); see also buySAFE, Inc.
v. Google, Inc., 765 F.3d 1350, 1355 (Fed. Cir. 2014) (claims directed to
certain arrangements involving contractual relations are directed to abstract
ideas). Thus, we find that the claims recite an abstract idea of methods of
organizing human activity and a mental process.
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Turning to the second prong of the “directed to test”, claim 1 requires
a “computer pointing device,” “server” and an “interface.” The recitation of
these words does not impose “a meaningful limit on the judicial exception,
such that the claim is more than a drafting effort designed to monopolize the
judicial exception.” Guidance, 84 Fed. Reg. at 52. We find no indication in
the Specification, nor does Appellant direct us to any indication, that the
operations recited in independent claim 1 invoke any inventive
programming, require any specialized computer hardware or other inventive
computer components, i.e., a particular machine, or that the claimed
invention is implemented using other than generic computer components to
perform generic computer functions. See DDR Holdings, LLC v.
Hotels.com, L.P., 773 F.3d 1245, 1256 (Fed. Cir. 2014) (“[A]fter Alice, there
can remain no doubt: recitation of generic computer limitations does not
make an otherwise ineligible claim patent-eligible.”).
We also find no indication in the Specification that the claimed
invention effects a transformation or reduction of a particular article to a
different state or thing. Nor do we find anything of record, short of attorney
argument, that attributes any improvement in computer technology and/or
functionality to the claimed invention or that otherwise indicates that the
claimed invention integrates the abstract idea into a “practical application,”
as that phrase is used in the revised Guidance. See Guidance, 84 Fed. Reg.
at 55.
In this regard, the recitation does not effect an improvement in the
functioning of a server, interface or other technology, does not recite a
particular machine or manufacture that is integral to the claims, and does not
transform or reduce a particular article to a different state or thing. Id.
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Thus, claim 1 is directed to judicial exceptions that are not integrated into a
practical application and thus “abstract ideas.”
Turning to the second step of the Alice analysis, because we find that
the claims are directed to abstract ideas, the claims must include an
“inventive concept” in order to be patent-eligible, i.e., there must be an
element or combination of elements that is sufficient to ensure that the claim
in practice amounts to significantly more than the abstract idea itself. See
Alice, 573 U.S. at 217–18 (alteration in original) (quoting Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 72–73 (2012)).
The introduction of a server computer and an interface into the claims
does not alter the analysis at Alice step two.
[T]he mere recitation of a generic computer cannot
transform a patent-ineligible abstract idea into a
patent-eligible invention. Stating an abstract idea
“while adding the words ‘apply it’” is not enough
for patent eligibility. Nor is limiting the use of an
abstract idea “‘to a particular technological
environment.’” Stating an abstract idea while
adding the words “apply it with a computer”
simply combines those two steps, with the same
deficient result. Thus, if a patent’s recitation of a
computer amounts to a mere instruction to
“implemen[t]” an abstract idea “on . . . a
computer,” that addition cannot impart patent
eligibility. This conclusion accords with the
preemption concern that undergirds our § 101
jurisprudence. Given the ubiquity of computers,
wholly generic computer implementation is not
generally the sort of “additional featur[e]” that
provides any “practical assurance that the process
is more than a drafting effort designed to
monopolize the [abstract idea] itself.”
Alice, 573 U.S. at 223 (alterations in original) (citations omitted).
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Instead, “the relevant question is whether the claims here do more
than simply instruct the practitioner to implement the abstract idea . . . on a
generic computer.” Id. at 225. It does not.
Taking the claim elements separately, the function performed by the
server computer and interface at each step of the process is purely
conventional. Using a server computer and/or interface to retrieve, select,
and apply decision criteria to data and modify the data as a result amounts to
electronic data query and retrieval—one of the most basic functions of a
computer. All of these computer functions are well-understood, routine,
conventional activities previously known to the trading industry. See Elec.
Power Grp., 830 F.3d at 1354; see also In re Katz Interactive Call
Processing Patent Litig., 639 F.3d 1303, 1316 (Fed. Cir. 2011) (“Absent a
possible narrower construction of the terms ‘processing,’ ‘receiving,’ and
‘storing,’ . . . those functions can be achieved by any general purpose
computer without special programming”). In short, each step does no more
than require a generic computer to perform generic computer functions. As
to the data operated upon, “even if a process of collecting and analyzing
information is ‘limited to particular content’ or a particular ‘source,’ that
limitation does not make the collection and analysis other than abstract.”
SAP Am. Inc. v. InvestPic, LLC, 890 F.3d 1016, 1022 (Fed. Cir. 2018).
Considered as an ordered combination, the computer components of
Appellant’s claims add nothing that is not already present when the steps are
considered separately. The sequence of data reception-analysis-
access/display is equally generic and conventional or otherwise held to be
abstract. See Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed. Cir.
2014) (sequence of receiving, selecting, offering for exchange, display,
allowing access, and receiving payment recited an abstraction), Inventor
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Holdings, LLC v. Bed Bath & Beyond, Inc., 876 F.3d 1372, 1378 (Fed. Cir.
2017) (holding that sequence of data retrieval, analysis, modification,
generation, display, and transmission was abstract), Two-Way Media Ltd. v.
Comcast Cable Commc’ns, LLC, 874 F.3d 1329, 1339 (Fed. Cir. 2017)
(holding sequence of processing, routing, controlling, and monitoring was
abstract). The ordering of the steps is, therefore, ordinary and conventional.
The claims do not, for example, purport to improve the functioning of
the computer pointing device, server, or interface. As we stated above, the
claims do not effect an improvement in any other technology or technical
field. We agree with the Examiner that the functionality performed by the
server and interface including identifying, obtaining, collecting, monitoring,
and tracking and displaying information are generic computer functionalities
performed by generic computer technology which are well-understood,
routine and conventional computing functions. (Final Act. 8). Thus, the
claims at issue amount to nothing significantly more than instructions to
apply the abstract ideas of the invention using some unspecified, generic
computer. Under our precedents, that is not enough to transform an abstract
idea into a patent-eligible invention. See Alice, 573 U.S. at 226.
We have reviewed all the arguments (Appeal Br. 6–29; Reply Br. 2–
11) Appellant has submitted concerning the patent eligibility of the claims
before us that stand rejected under 35 U.S.C. § 101. We find that our
analysis above substantially covers the substance of all the arguments, which
have been made. But, for purposes of emphasis, we will address various
arguments in order to make individual rebuttals of same.
We are not persuaded of error on the part of the Examiner by
Appellant’s argument that the instant invention recites an improvement to
technology by automating the process of selecting ads and also automates
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the optimization of ad placement thereby solving the technical problem of
which ads to select and where to place them on a web page. (Appeal Br. 10–
11; Reply 6). We agree with the Examiner’s response to this argument
found on page 17 of the Answer and adopt same as our own. In this regard
we agree that organizing content in a human comprehensible way is abstract
and optimizing revenue has long been a building block of business. In
addition, the improvements that the Appellant touts are business
improvements to ad placement so as to improve ad effectiveness and are not
improvements to the operations of the server or any other technology.
We are not persuaded of error on the part of the Examiner by
Appellant’s argument that (1) the claims provide the benefit that an
advertiser can directly monitor and track ad performance and (2) that no
prior art rejections has been applied thereby suggesting that the invention is
novel and nonobvious in the field of endeavor. Appellant concludes that the
claimed invention is significantly more than any recited abstract concept.
(Appeal Br. 15; Reply Br. 7). To the extent Appellant maintains that the
limitations of claim 1 necessarily amount to “significantly more” than an
abstract idea because the claimed apparatus is allegedly patentable over the
prior art, Appellant misapprehend the controlling precedent. Although the
second step in the Alice/Mayo framework is termed a search for an
“inventive concept,” the analysis is not an evaluation of novelty or non-
obviousness, but rather, a search for “‘an element or combination of
elements that is sufficient to ensure that the patent in practice amounts to
significantly more than a patent upon the [ineligible concept] itself.’” Alice,
573 U.S. at 217. A novel and nonobvious claim directed to a purely abstract
idea is, nonetheless, patent-ineligible. See Mayo, 566 U.S. at 90.
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We are not persuaded of error on the part of the Examiner by
Appellant’s argument that the method of the invention provides placement
of a plurality of advertisements on a page accessible by a user, in
combination with an advertiser accessible interface which is a combination
that is not well-understood, routine or conventional. The determination of
whether the additional elements are well-understood, routine and
conventional is done after it has been determined that the claim recites
abstract ideas that are not integrated into a practical application. This
determination focuses on elements of the claim that are in addition to any
abstract ideas recited. Guidance 84 Fed. Reg. at 55. In claim 1, the only
recitations that is not part of the abstract idea identified by the Examiner of
storing and retrieving performance data for advertisements, arranging a
plurality of advertisements relative to one another according to performance
data and delivering data relating to the arranged plurality of advertisements
are the recited server, interface, and computer pointing device. As such the
analysis does not consider whether the bulk of the claim, or the combination
recited is well-understood, routine and conventional but is rather directed to
the server only. The Appellant has not established, or even argued, that the
server, interface, or computer pointing device are not well-understood,
routine and conventional
We are not persuaded of error on the part of the Examiner by
Appellant’s argument that the interface provides the inventive concept
consistent with BASCOM Global Internet Services, Inc. v. AT&T Mobility
LLC, 827 F.3d 1341 (Fed. Cir. 2016). (Appeal Br. 17).
In BASCOM, the Federal Circuit held “[t]he inventive concept
described and claimed in the '606 patent is the installation of a filtering tool
at a specific location, remote from end-users, with customizable filtering
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features specific to each end user.” 827 F.3d at 1350. In determining this
feature to be an inventive concept, the Federal Circuit explained that the
remote location of a filtering tool having customizable user-specific filtering
features provides the filtering tool both the benefits of a filter on a local
computer and the benefits of a filter on the ISP server and is a technical
improvement over prior art ways of filtering content. Id. at 1350–51.
Notably, the Federal Circuit specifically determined that “the claims may be
read to ‘improve[] an existing technological process.’” Id. at 1351 (citing
Alice, 134 S. Ct. at 2358). As we have discussed above, there is no
improvement to the interface or any other technology recited in claim 1.
We are not persuaded of error on the part of the Examiner by
Appellant’s argument that the Examiner failed to provide evidence that the
claim features are well-understood, routine and conventional. As we
explained above, the only elements of claim 1 that are analyzed to determine
whether they are well-understood, routine and conventional are the computer
pointing device, the server, and the interface.
Appellant cannot reasonably contend, nor does Appellant, that there is
a genuine issue of material fact regarding whether the operation of the
computer pointing device, the server and interface are well-understood,
routine, or conventional, where, as here, there is nothing in the Specification
to indicate that the operations recited in claim 1 require any specialized
hardware or inventive computer components or that the claimed invention is
implemented using other than generic computer components to perform
generic computer functions, e.g., receiving, transmitting, and processing
information. Indeed, the Federal Circuit, in accordance with Alice, has
“repeatedly recognized the absence of a genuine dispute as to eligibility”
where claims have been defended as involving an inventive concept based
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“merely on the idea of using existing computers or the Internet to carry out
conventional processes, with no alteration of computer functionality.”
Berkheimer, 890 F.3d at 1373 (Moore, J., concurring) (internal citations
omitted); see also BSG Tech, 899 F.3d at 1291 (“BSG Tech does not argue
that other, non-abstract features of the claimed inventions, alone or in
combination, are not well-understood, routine and conventional database
structures and activities. Accordingly, the district court did not err in
determining that the asserted claims lack an inventive concept.”).
We are not persuaded of error on the part of the Examiner by
Appellant’s argument that the features of claim 1 require a computer placing
data on a representation of a web page to be sent to a user, which is not
possible in the human mind. (Reply Br. 8). Mental processes remain
unpatentable even when automated to reduce the burden on the user of what
once could have been done with pen and paper. CyberSource, 654 F.3d at
1375 (“That purely mental processes can be unpatentable, even when
performed by a computer, was precisely the holding of the Supreme Court in
Gottschalk v. Benson.”).
In view of the foregoing, we will sustain the Examiner’s rejection of
claim 1 under 35 U.S.C. §101. We will also sustain this rejection as it is
directed to the remaining claims because Appellant has not argue the
separate eligibility of these claims.
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CONCLUSIONS OF LAW
We conclude the Examiner did not err in rejecting claims 1–20 under
35 U.S.C. § 101.

Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–20 101 Eligibility 1–20

CONCLUSION
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