OptiMine Software, Inc.

Patent Trials and Appeals Board

Feb 26, 2020

14560994 - (D) (P.T.A.B. Feb. 26, 2020)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
14/560,994 12/04/2014 Robert W. Cooley 028862-9004-US01 9475
23409 7590 02/26/2020
MICHAEL BEST & FRIEDRICH LLP (Mke)
100 E WISCONSIN AVENUE
SUITE 3300
MILWAUKEE, WI 53202
EXAMINER
CAO, VINCENT M
ART UNIT PAPER NUMBER
3688
NOTIFICATION DATE DELIVERY MODE
02/26/2020 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
mkeipdocket@michaelbest.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ROBERT W. COOLEY
Appeal 2019-004225
Application 14/560,994
Technology Center 3600
Before BRYAN F. MOORE, BETH Z. SHAW, and
JASON M. REPKO, Administrative Patent Judges.
SHAW, Administrative Patent Judge.
DECISION ON APPEAL

Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–11, 13–20, and 22. See Final Act. 1.
We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies the real party in interest as OptiMine Software,
Inc. Appeal Br. 2.
Appeal 2019-004225
Application 14/560,994
2
CLAIMED SUBJECT MATTER
The claims are directed to systems and methods for assessing the
cross-channel value of media advertising. Claim 1, reproduced below, is
illustrative of the claimed subject matter:
1. A computer-implemented method for assessing a cross-
channel value of media advertising, the method comprising:
receiving, at a processor, a number of impressions for a
particular advertisement for a specified time period;
selecting an entry point for a business event related to the
particular advertisement, wherein the entry point is selected from
a group consisting of a result of a keyword or key phrase related
to the particular advertisement, a uniform resource locator of a
website, and a link from a website;
receiving business value information from the entry point
for the specified time period;
analyzing a relationship, using an advertisement-to-entry-
point relationship model, between the particular advertisement
and the entry point for the business event based on the number
of impressions for the particular advertisement correlated to the
business value information from the entry point for the specified
time period; and
displaying a value for the particular advertisement within
a graphical user interface based on analyzing the relationship,
wherein the advertisement-to-entry-point relationship model
includes a econometric time series forecast model that includes
over-fitting minimization and variable selection;
wherein over-fitting minimization includes an over-fitting
mechanism selected from the group consisting of setting a
threshold minimum number of days for model training of
advertisement, setting a threshold minimum number of
advertisement impressions for the model training, using a
regularized regression algorithm, and comparing a normalized
root mean squared error (NRMSE) of training data to a NRMSE
of a holdout set of data; and
wherein variable selection includes a variable selection
mechanism selected from the group consisting of assigning
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variables using empirical Bayesian ordering and correlating
variables using a forward selection regression algorithm.

REJECTION
Claims 1–11, 13–20, and 22 are rejected under 35 U.S.C. § 101. Final
Act. 2.
OPINION
Section 101
An invention is patent-eligible if it claims a “new and useful process,
machine, manufacture, or composition of matter.” 35 U.S.C. § 101.
However, the U.S. Supreme Court has long interpreted 35 U.S.C. § 101 to
include implicit exceptions: “[l]aws of nature, natural phenomena, and
abstract ideas” are not patentable. E.g., Alice Corp. v. CLS Bank Int’l, 573
U.S. 208, 216 (2014).
In determining whether a claim falls within an excluded category, we
are guided by the Court’s two-part framework, described in Mayo and Alice.
Alice, 573 U.S. at 217–18 (citing Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 566 U.S. 66, 75–77 (2012)). In accordance with that framework,
we first determine what concept the claim is “directed to.” See Alice, 573
U.S. at 219 (“On their face, the claims before us are drawn to the concept of
intermediated settlement, i.e., the use of a third party to mitigate settlement
risk.”); see also Bilski v. Kappos, 561 U.S. 593, 611 (2010) (“Claims 1 and 4
in petitioners’ application explain the basic concept of hedging, or protecting
against risk.”).
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Concepts determined to be abstract ideas, and thus patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219–20; Bilski, 561 U.S. at 611);
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594–95 (1978)); and
mental processes (Gottschalk v. Benson, 409 U.S. 63, 67 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as “molding rubber products” (Diamond v. Diehr, 450 U.S. 175, 191
(1981)); “tanning, dyeing, making waterproof cloth, vulcanizing India
rubber, smelting ores” (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S.
252, 267–68 (1853))); and manufacturing flour (Benson, 409 U.S. at 69
(citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
In Diehr, the claim at issue recited a mathematical formula, but the
Court held that “a claim drawn to subject matter otherwise statutory does not
become nonstatutory simply because it uses a mathematical formula.”
Diehr, 450 U.S. at 187; see also id. at 191 (“We view respondents’ claims as
nothing more than a process for molding rubber products and not as an
attempt to patent a mathematical formula.”). Having said that, the Court
also indicated that a claim “seeking patent protection for that formula in the
abstract . . . is not accorded the protection of our patent laws, and this
principle cannot be circumvented by attempting to limit the use of the
formula to a particular technological environment.” Id. (citation omitted)
(citing Benson and Flook); see, e.g., id. at 187 (“It is now commonplace that
an application of a law of nature or mathematical formula to a known
structure or process may well be deserving of patent protection.”).
If the claim is “directed to” an abstract idea, we turn to the second
step of the Alice and Mayo framework, where “we must examine the
elements of the claim to determine whether it contains an ‘inventive
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concept’ sufficient to ‘transform’ the claimed abstract idea into a patent-
eligible application.” Alice, 573 U.S. at 221 (quotation marks omitted).
“A claim that recites an abstract idea must include ‘additional features’ to
ensure ‘that the [claim] is more than a drafting effort designed to
monopolize the [abstract idea].’” Id. (quoting Mayo, 566 U.S. at 77).
“[M]erely requir[ing] generic computer implementation[] fail[s] to transform
that abstract idea into a patent-eligible invention.” Id.
USPTO Section 101 Guidance
In January 2019, the U.S. Patent and Trademark Office (USPTO)
published revised guidance on the application of § 101. 2019 Revised Patent
Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019)
(“Revised Guidance”).2 “All USPTO personnel are, as a matter of internal
agency management, expected to follow the guidance.” Id. at 51; see also
October 2019 Update at 1.
Under the Revised Guidance and the October 2019 Update, we first
look to whether the claim recites:
(1) any judicial exceptions, including certain groupings of abstract
ideas (i.e., mathematical concepts, certain methods of organizing
human activity such as a fundamental economic practice, or mental
processes) (“Step 2A, Prong One”); and

2 In response to received public comments, the Office issued further
guidance on October 17, 2019, clarifying the Revised Guidance. USPTO,
October 2019 Update: Subject Matter Eligibility (the “October 2019
Update”) (available at
https://www.uspto.gov/sites/default/files/documents/peg_oct_2019_update.p
df).
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(2) additional elements that integrate the judicial exception into a
practical application (see MPEP §§ 2106.05(a)–(c), (e)–(h) (9th ed.
Rev. 08.2017, Jan. 2018)) (“Step 2A, Prong Two”).3
Revised Guidance, 84 Fed. Reg. at 52–55.
Only if a claim (1) recites a judicial exception and (2) does not
integrate that exception into a practical application, do we then look, under
Step 2B, to whether the claim:
(3) adds a specific limitation beyond the judicial exception that is not
“well-understood, routine, conventional” in the field (see MPEP
§ 2106.05(d)); or
(4) simply appends well-understood, routine, conventional activities
previously known to the industry, specified at a high level of
generality, to the judicial exception.
Revised Guidance, 84 Fed. Reg. at 52–56.

Abstract Idea
For the following reasons, we conclude the claims recite a
fundamental economic practice, which is one of certain methods of
organizing human activity identified in the Revised Guidance, and thus, an
abstract idea. See Revised Guidance, 84 Fed. Reg. at 52, 53 (listing
“[c]ertain methods of organizing human activity—fundamental economic

3 This evaluation is performed by (a) identifying whether there are any
additional elements recited in the claim beyond the judicial exception, and
(b) evaluating those additional elements individually and in combination to
determine whether the claim as a whole integrates the exception into a
practical application. See Revised Guidance - Section III(A)(2), 84 Fed.
Reg. 54–55.
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principles or practices” as one of the “enumerated groupings of abstract
ideas”).
Appellant addresses the claims as a group, and we treat claim 1 as
representative. The claim is directed to an abstract idea because it is directed
to a fundamental economic practice, which is one of certain methods of
organizing human activity, as discussed below. The steps of claim 1,
including, with italics,
receiving, at a processor, a number of impressions for a
particular advertisement for a specified time period;
selecting an entry point for a business event related to the
particular advertisement, wherein the entry point is selected
from a group consisting of a result of a keyword or key phrase
related to the particular advertisement, a uniform resource
locator of a website, and a link from a website;
receiving business value information from the entry point
for the specified time period;
analyzing a relationship, using an advertisement-to-entry-
point relationship model, between the particular advertisement
and the entry point for the business event based on the number
of impressions for the particular advertisement correlated to the
business value information from the entry point for the specified
time period; and
displaying a value for the particular advertisement within
a graphical user interface based on analyzing the relationship,
wherein the advertisement-to-entry-point relationship model
includes a econometric time series forecast model that includes
over-fitting minimization and variable selection;
wherein over-fitting minimization includes an over-fitting
mechanism selected from the group consisting of setting a
threshold minimum number of days for model training of
advertisement, setting a threshold minimum number of
advertisement impressions for the model training, using a
regularized regression algorithm, and comparing a normalized
root mean squared error (NRMSE) of training data to a NRMSE
of a holdout set of data; and
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wherein variable selection includes a variable selection
mechanism selected from the group consisting of assigning
variables using empirical Bayesian ordering and correlating
variables using a forward selection regression algorithm.

recite steps of receiving a number of impressions for a particular
advertisement for a specified time period; selecting an entry point for a
business event related to the particular advertisement, wherein the entry
point is selected from a group consisting of a result of a keyword or key
phrase related to the particular advertisement; receiving business value
information from the entry point for the specified time period; analyzing a
relationship, using an advertisement-to-entry-point relationship model,
between the particular advertisement and the entry point for the business
event based on the number of impressions for the particular advertisement
correlated to the business value information from the entry point for the
specified time period; wherein over-fitting minimization includes an over-
fitting mechanism selected from the group consisting of setting a threshold
minimum number of days for model training of advertisement, setting a
threshold minimum number of advertisement impressions for the model
training, using a regularized regression algorithm, and comparing a
normalized root mean squared error (NRMSE) of training data to a NRMSE
of a holdout set of data, wherein variable selection includes a variable
selection mechanism selected from the group consisting of assigning
variables using empirical Bayesian ordering and correlating variables using
a forward selection regression algorithm.
Appellant’s claimed invention is directed to analyzing a value for an
advertisement.
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9
Under Supreme Court precedent, claims directed purely to an abstract
idea are patent ineligible. As set forth in the Revised Guidance, which
extracts and synthesizes key concepts identified by the courts, abstract ideas
include (1) mathematical concepts, (2) certain methods of organizing human
activity, and (3) mental processes. Among those certain methods of
organizing human activity listed in the Revised Guidance are fundamental
economic practices, such as the concept of intermediated settlement in Alice,
and the concept of hedging in Bilski. Like those concepts, claim 1 also
recites a fundamental economic practice. Specifically, the italicized steps
fall under the umbrella of economic practices, because “receiving . . . a
number of impressions for a particular advertisement” and “receiving
business value information” would ordinarily take place in analyzing
advertising, which occurs in our system of commerce. See Spec. ¶ 2
(“[E]mbodiments of the invention determine a value for an advertisement
based on a volume of impressions for that advertisement and corresponding
revenue.”).
In Intellectual Ventures I LLC v. Capital One Bank (USA), 792 F.3d
1363, 1369 (Fed. Cir. 2015), an advertisement taking into account the time
of day and tailoring the information presented to the user based on that
information was considered another “fundamental . . . practice long
prevalent in our system.” In Credit Acceptance Corporation v. Westlake
Services, 859 F.3d 1044 (Fed. Cir. 2017), patent claims directed to a system
and method for providing financing to allow a customer to purchase a
product selected from an inventory of products maintained by a dealer were
considered patent ineligible as directed to the abstract idea of processing an
application for financing a purchase, an economic practice long prevalent in
commerce. Like the claims at issue in Intellectual Ventures I and Credit
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Acceptance, the analysis of values for advertising is “a fundamental
economic practice long prevalent in our system of commerce.” Credit
Acceptance, 859 F.3d at 1054. Thus, we conclude claim 1 recites a
fundamental economic practice, which is one of certain methods of
organizing human activity identified in the Revised Guidance, and thus an
abstract idea.
Although Appellant argues claim 1 does not recite a mathematical
concept or mental process (Reply Br. 3–4), we do not further discuss these
arguments because we determine the claim recites a fundamental economic
practice and thus the mathematical concept classification, the mental process
classification, and the fundamental economic classification are cumulative.
In accordance with the Revised Guidance, and looking to MPEP
§§ 2106.05(a)–(c) and (e)–(h), we determine that the additional elements of
claim 1, both individually and as an ordered combination, do not integrate a
judicial exception, in this case the abstract idea of a fundamental economic
practice, into a practical application. Claim 1 is directed to the
implementation of the abstract idea on generic computer servers and devices.
The claimed “processor” is recited at a high level of generality and merely
invoked as a tool to perform the process of claim 1. Simply implementing
the abstract idea on a generic computer is not a practical application of the
abstract idea. See, e.g., Fig. 2; Spec. ¶¶ 33–34 (a “processor 210 retrieves
and executes instructions”).
In addition, “displaying a value for the particular advertisement within
a graphical user interface based on analyzing the relationship” in claim 1 is
insignificant post-solution activity, because it is merely ancillary to the focus
of the claimed invention, namely, analyzing the relationship between the
particular advertisement and the entry point for the business event based on
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the number of impressions correlated to the business value information,
given the display’s high level of generality and context in the claimed
invention. Where, as here, the recited display function is merely ancillary to
analyzing the advertising relationship of the claimed invention, given its
high level of generality and context in the claimed invention, the recited
display function is insignificant post-solution activity and, therefore, does
not integrate the exception into a practical application for this additional
reason. See 2019 Eligibility Guidance, 84 Fed. Reg. at 55 (citing MPEP
§ 2106.05(g)).
This is not a case involving eligible subject matter as in DDR
Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014) despite
Appellant’s arguments to the contrary (Appeal Br. 7, 11). There, instead of
a computer network operating in its normal, expected manner by sending a
website visitor to a third-party website apparently connected with a clicked
advertisement, the claimed invention in DDR generated and directed the
visitor to a hybrid page that presented (1) product information from the third
party, and (2) visual “look and feel” elements from the host website. DDR,
773 F.3d at 1258–59. Given this particular Internet-based solution, the court
held that the claimed invention did not merely use the Internet to perform a
business practice known from the pre-Internet world, but rather was
necessarily rooted in computer technology to overcome a problem
specifically arising in computer networks. Id. at 1257.
That is not the case here. Appellant’s claimed invention, in essence, is
directed to analyzing a value for an advertisement—albeit using computer-
based components to achieve that end. The claimed invention here is not
necessarily rooted in computer technology in the sense contemplated by
DDR, where the claimed invention solved a challenge particular to the
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Internet. Although Appellant’s invention uses various computer-based
components noted previously, the claimed invention does not solve a
challenge particular to the computing components used to implement this
functionality.
Nor is this invention analogous to that which the court held eligible in
McRO, Inc. v. Bandai Namco Games America Inc., 837 F.3d 1299 (Fed. Cir.
2016) despite Appellant’s arguments to the contrary (Appeal Br. 9–10;
Reply Br. 7). There, the claimed process used a combined order of specific
rules that rendered information in a specific format that was applied to create
a sequence of synchronized, animated characters. McRO, 837 F.3d at 1315.
Notably, the recited process for automatically animated characters using
particular information and techniques—an improvement over manual three-
dimensional animation techniques—was not directed to an abstract idea. Id.
at 1316.
But unlike the claimed invention in McRO that improved how the
physical display operated to produce better quality images, the claimed
invention here merely uses generic computing components to display a user
interface. This generic computer implementation is not only directed to a
fundamental economic practice, but also does not improve a display
mechanism as was the case in McRO. See SAP Am., Inc. v. InvestPic, LLC,
898 F.3d 1161, 1167 (Fed. Cir. 2018) (distinguishing McRO).
Accordingly, the claim as a whole does not integrate the abstract idea
into a practical application because the claim limitations do not impose any
meaningful limits on practicing the abstract idea. Stated differently, the
claims do not (1) improve the functioning of a computer or other technology,
(2) are not applied with any particular machine (except for generic computer
components), (3) do not effect a transformation of a particular article to a
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different state, and (4) are not applied in any meaningful way beyond
generally linking the use of the judicial exception to a particular
technological environment, such that the claim, as a whole, is more than a
drafting effort designed to monopolize the exception. See MPEP
§§ 2106.05(a)–(c), (e)–(h).
Inventive Concept
Because we determine that claim 1 is “directed to” an abstract idea,
we next consider whether claim 1 recites an “inventive concept.” The
Examiner determined that claim 1 does not recite an inventive concept
because the additional elements in the claim do not amount to “significantly
more” than an abstract idea. See Final Act. 3–4.
We agree with the Examiner’s determination in this regard. The
additional elements recited in claim 1 include a “processor.” The claim
recites the processor at a high level of generality, and the written description
indicates that the elements are generic. See, e.g., Fig. 2; Spec. ¶¶ 33–34.
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 idea itself.
Preemption is a driving concern when determining patent eligibility.
See Alice, 573 U.S. at 216–17. Patent law cannot inhibit further discovery
by improperly tying up the future use of the building blocks of human
ingenuity. See id. (citing Mayo, 566 U.S. at 85–86). Although preemption
is characterized as a driving concern for patent eligibility, preemption itself
is not the test for patent eligibility. “Where a patent’s claims are deemed
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only to disclose patent ineligible subject matter under the Mayo framework,
as they are in this case, preemption concerns are fully addressed and made
moot.” Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379
(Fed. Cir. 2015). “While preemption may signal patent ineligible subject
matter, the absence of complete preemption does not demonstrate patent
eligibility.” Id.
To the extent Appellant contends that the recited limitations, including
those detailed above in connection with Alice step one, add significantly
more than the abstract idea to provide an inventive concept under
Alice/Mayo step two (see Appeal Br. 9–11), these limitations are not
additional elements beyond the abstract idea, but rather are directed to the
abstract idea as noted previously. See Revised Guidance, 84 Fed. Reg. at 56
(instructing that additional recited elements should be evaluated in
Alice/Mayo step two to determine whether they (1) add specific limitations
that are not well-understood, routine, and conventional in the field, or (2)
simply append well-understood, routine, and conventional activities
previously known to the industry (citing MPEP § 2106.05(d)).
Appellant contends various elements recited in the claim provide the
necessary inventive concept. Appeal Br. 7–10. But these elements form
part of the recited abstract ideas and thus are not “additional elements” that
“‘transform the nature of the claim’ into a patent-eligible application.”
Alice, 573 U.S. at 217 (quoting Mayo, 566 U.S. at 78); see also Revised
Guidance, 84 Fed. Reg. at 55 n.24 (“USPTO guidance uses the term
‘additional elements’ to refer to claim features, limitations, and/or steps that
are recited in the claim beyond the identified judicial exception.” (Emphasis
added)).
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Rather, the recited “processor” is the additional recited element whose
generic computing functionality is well-understood, routine, and
conventional. See Mortg. Grader, Inc. v. First Choice Loan Servs., Inc., 811
F.3d 1314, 1324–25 (Fed. Cir. 2016) (noting that components such an
“interface,” “network,” and “database” are generic computer components
that do not satisfy the inventive concept requirement); buySAFE, Inc. v.
Google, Inc., 765 F.3d 1350, 1355 (Fed. Cir. 2014) (“That a computer
receives and sends the information over a network—with no further
specification—is not even arguably inventive.”).
To the extent Appellant contends that the claimed invention is rooted
in technology because it is ostensibly directed to a technical solution (see
Appeal Br. 11), we disagree. Even assuming, without deciding, that the
claimed invention can assess cross-channel values of media advertising
faster than before, any speed increase comes from the capabilities of the
generic computer components—not the recited process itself. See
FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1095 (Fed. Cir.
2016) (citing Bancorp Servs., L.L.C. v. Sun Life Assurance Co. of Can.
(U.S.), 687 F.3d 1266, 1278 (Fed. Cir. 2012) (“[T]he fact that the required
calculations could be performed more efficiently via a computer does not
materially alter the patent eligibility of the claimed subject matter.”)); see
also Intellectual Ventures I LLC v. Erie Indemnity Co., 711 F. App’x 1012,
1017 (Fed. Cir. 2017) (unpublished) (“Though the claims purport to
accelerate the process of finding errant files and to reduce error, we have
held that speed and accuracy increases stemming from the ordinary
capabilities of a general-purpose computer ‘do[ ] not materially alter the
patent eligibility of the claimed subject matter.’”). Like the claims in
FairWarning, the focus of claim 1 is not on an improvement in computer
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processors as tools, but on certain independently abstract ideas that use
generic computing components as tools. See FairWarning, 839 F.3d at 1095
(citations and quotation marks omitted).
Accordingly, we sustain the Examiner’s rejection of the pending
claims under 35 U.S.C. § 101 as directed to patent-ineligible subject matter.

CONCLUSION
The Examiner’s rejection is affirmed.

DECISION SUMMARY
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–11, 13–
20, 22
101

1–11, 13–
20, 22

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