Optimized Markets, Inc.

Patent Trials and Appeals Board

Mar 11, 2021

2019004746 (P.T.A.B. Mar. 11, 2021)

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.
15/814,630 11/16/2017 Tuomas W. Sandholm 155710.00201 2503
29880 7590 03/11/2021
Fox Rothschild LLP
997 Lenox Drive
Lawrenceville, NJ 08648
EXAMINER
GEE, ALEXANDER
ART UNIT PAPER NUMBER
2425
NOTIFICATION DATE DELIVERY MODE
03/11/2021 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):
ipdocket@foxrothschild.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte TUOMAS W. SANDHOLM
________________

Appeal 2019-004746
Application 15/814,630
Technology Center 2400
____________

Before ST. JOHN COURTENAY III, JAMES W. DEJMEK, and
MATTHEW J. McNEILL, Administrative Patent Judges.

McNEILL, Administrative Patent Judge.

DECISION ON APPEAL

Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1‒30, which are all the claims pending in this application.
We have jurisdiction under 35 U.S.C. § 6(b).
We affirm in part.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42 (2018). Appellant identifies the real party in interest as
Optimized Markets, Inc. Appeal Br. 3.
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STATEMENT OF THE CASE
Introduction
Appellant’s application relates to a system for implementing digital
media campaigns. Spec. ¶¶ 4‒7. Claim 1 is illustrative of the appealed
subject matter and reads as follows:
1. A system for managing a digital media campaign,
comprising:
a first data store comprising a plurality of digital media
files, each of which corresponds to a digital advertisement that
an electronic media service provider may present to consumers;
a second data store containing an inventory of digital
programming files, each of which corresponds to one or more
digital programming assets;
a set of programming data comprising temporal attributes
and non-temporal attributes for a plurality of the digital
programming files;
a digital media server configured to access the first data
store and transmit the digital programming files to a plurality of
media presentation devices;
a processor; and
a computer-readable medium containing programming
instructions that, when executed, cause the processor to
implement a digital media campaign manager by:
causing an electronic device to implement a buyer-side
user interface that displays a plurality of sections that provide
input fields for user-selectable purchasing criteria for placement
of digital advertisements in one or more of the digital
programming assets,
receiving, via one or more of the input fields of the
buyer-side user interface, a selection of one or more of the
purchasing criteria for a purchase of digital advertisements by a
first buyer,
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causing a display device to present a seller-side user
interface that comprises sections that provide input fields for by
which a seller may enter seller-side criteria for placement of
digital advertisements in one or more of the digital
programming assets,
receiving, via the input fields of the seller-side user
interface, a selection of one or more of the seller-side criteria
for placement of digital advertisements in one or more of the
digital programming assets,
comparing the purchasing criteria and the seller-side
criteria to the temporal attributes and non-temporal attributes in
the data set to automatically develop an advertising campaign
for the first buyer by selecting a group of the digital
programming assets and automatically allocating the selected
group of digital programming assets to the advertising
campaign, along with scheduling parameters indicating when
the digital advertisements will run within the digital
programming assets in the group, so that the advertising
campaign satisfies the selected purchasing criteria and the
selected seller-side criteria, and
causing either the buyer-side user interface or the seller-
side user interface to present indicia of the advertising
campaign to either the first buyer or the seller to review; and
after acceptance of the advertising campaign by either the
first buyer or the seller, causing the digital media server to
transmit the selected group of digital programming assets to a
plurality of media presentation devices with the digital media
files that will run according to the scheduling parameters.
The Examiner’s Rejections
Claims 1‒6, 9‒16, and 18‒30 stand rejected under 35 U.S.C. § 101 as
being directed to patent-ineligible subject matter. Final Act. 9‒11. Claims 7,
8, and 17 were rejected in the Final Action under 35 U.S.C. § 101, but the
Examiner withdrew this rejection in the Answer. Ans. 33. Accordingly,
claims 7, 8, and 17 are not currently rejected under 35 U.S.C. § 101.
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Claims 1‒4, 9‒12, 14–20, 22‒28, and 30 stand rejected under
35 U.S.C. § 103 as unpatentable over Balakrishnan (US 2014/0109123 A1;
Apr. 17, 2014), Steelberg (US 2011/0029373 A1; Feb. 3, 2011), Seldin (US
2011/0295678 A1; Dec. 1, 2011), Nolet (US 2010/0262498 A1; Oct. 14,
2010), and Kucharz (US 2014/0074627 A1; Mar. 13, 2014). Final Act. 11‒
28.
To the base combination of references in the obviousness rejection,
the Examiner adds Yehoshua (US 8,131,594 B1; Mar. 6, 2012) to reject
claim 5 (Final Act. 28‒29), Biggs (US 2011/0047026 A1; Feb. 24, 2011) to
reject claim 6 (Final Act. 29‒31), Zenor (US 2011/0314495 A1; Dec. 22,
2011) to reject claim 7 (Final Act. 31‒33), Bayer (US 8,255,949 B1; Aug.
28, 2012) to reject claim 8 (Final Act. 33‒35), Steelberg ’791 (US
2008/0021791 A1; Jan. 24, 2008) to reject claim 13 (Final Act. 35‒36),
Duva (US 8,238,540 B1; Aug. 7, 2012) to reject claim 21 (Final Act. 36‒
38), and Houston (US 2003/0066070 A1; Apr. 3, 2003) to reject claim 29
(Final Act. 38‒39).
ANALYSIS
Patent-Ineligible Subject Matter
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 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 Supreme Court’s two-step framework, described in Mayo
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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.”).
Concepts determined to be abstract ideas, and thus patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219–20; Bilski, 561 U.S. at 611);
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594–95 (1978)); and
mental processes (Gottschalk v. Benson, 409 U.S. 63, 67 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as “molding rubber products” (Diamond v. Diehr, 450 U.S. 175, 191
(1981)); “tanning, dyeing, making water-proof cloth, vulcanizing India
rubber, smelting ores” (id. at 183 n.7 (quoting Corning v. Burden, 56 U.S.
(15 How.) 252, 267–68 (1854))); 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
Supreme 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 Supreme Court also indicated that a claim “seeking patent
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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.
(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
concept’ sufficient to ‘transform’ the claimed abstract idea into a patent-
eligible application.” Alice, 573 U.S. at 221 (citation omitted). “A claim that
recites an abstract idea must include ‘additional features’ to ensure ‘that the
[claim] is more than a drafting effort designed to monopolize the [abstract
idea].’” Id. (alterations in original) (quoting Mayo, 566 U.S. at 77).
“[M]erely requir[ing] generic computer implementation[] fail[s] to transform
that abstract idea into a patent-eligible invention.” Id.
In January 2019, the U.S. Patent and Trademark Office (“USPTO”)
published revised guidance on the application of 35 U.S.C. § 101. See
2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50
(Jan. 7, 2019) (“2019 Guidance”), updated by USPTO, October 2019
Update: Subject Matter Eligibility (available at https://www.uspto.gov/sites/
default/files/documents/peg_oct_2019_update.pdf) (“Update”); see also
October 2019 Patent Eligibility Guidance Update, 84 Fed. Reg. 55942 (Oct.
18, 2019) (notifying the public of the availability of the Update). “All
USPTO personnel are, as a matter of internal agency management, expected
to follow the guidance.” 2019 Guidance, 84 Fed. Reg. at 51; see also
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October 2019 Guidance Update at 1. The Manual of Patent Examining
Procedure (“MPEP”) now incorporates this revised guidance and subsequent
updates at Section 2106 (9th ed. Rev. 10.2019, rev. June 2020).2
Under that guidance, 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); and
(2) additional elements that integrate the judicial
exception into a practical application.3
MPEP §§ 2106.04(a), (d).
Only if a claim (1) recites a judicial exception and (2) does not
integrate that exception into a practical application, do we then look to
whether the claim:
(3) adds a specific limitation beyond the judicial
exception that is not “well-understood, routine, conventional”
in the field; 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.

2 All references to the MPEP are to the Ninth Edition, Revision 10.2019
(Last Revised June 2020), unless otherwise indicated.
3 “Examiners evaluate integration into a practical application by:
(1) identifying whether there are any additional elements recited in the claim
beyond the judicial exception(s), and (2) evaluating those additional
elements individually and in combination to determine whether they
integrate the exception into a practical application.” MPEP § 2106.04(d)II.
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MPEP § 2106.05(d).
Revised Guidance Step 1
Step 1 of the Revised Guidance asks whether the claimed subject
matter falls within the four statutory categories of patentable subject matter
identified by 35 U.S.C. § 101: process, machine, manufacture, or
composition of matter. See Revised Guidance. Independent claims 1 and 30
recite a “system.” Appellant does not argue the Examiner erred in
concluding claims 1 and 30 fall within the four statutory categories of
patentable subject matter. We agree with the Examiner’s conclusion because
claims 1 and 30 fall within the machine or manufacture categories.
Revised Guidance Step 2A, Prong 1
Under Step 2A, Prong 1 of the Revised Guidance, we determine
whether the claims recite 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). MPEP § 2106.04(a).
The Examiner determines claim 1 is directed to an interface for
inputting parameters for which to schedule advertisements, which the
Examiner determines is an advertising, marketing, and sales activity and a
fundamental economic practice. Final Act. 9.
Appellant argues claim 1 is not directed to an abstract idea because
claim 1 does not cover each and every way of automatically developing an
advertising campaign and recites specific structure. Appeal Br. 10‒14.
Claim 1 recites a “system for managing a digital media campaign”
that includes “a first data store,” “a second data store,” “a digital media
server,” “a processor,” and “a computer-readable medium.” The “first data
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store” and “second data store” comprise digital files related to digital
advertisements and digital programming, respectively. The “digital media
server” accesses the first data store and transmits digital programming files
to a plurality of media presentation devices. The computer-readable medium
contains instructions that cause the processor to implement a digital media
campaign manager that allows a user to manage a digital media campaign by
performing a series of steps.
We agree with the Examiner that these claimed steps each relate to
managing a digital media campaign, which is a form of advertising,
marketing, or sales activities or behaviors. That is, claim 1 recites a system
that includes a user interface for receiving information relating to a digital
media campaign and using the received information to manage a digital
media campaign. These interactions with users and the use of the received
information relate to managing advertising, marketing, or sales activities in
the form of a digital media campaign. Thus, these steps recite limitations
that fall within the certain methods of organizing human activities category
of abstract ideas. We address Appellant’s arguments regarding the recited
structure to perform these advertising, marketing, or sales activities or
behaviors below with respect to Prong 2.
We also agree with the Examiner that claim 1, under its broadest
reasonable interpretation, recites limitations that relate to a fundamental
economic practice because managing a media campaign is a fundamental
economic practice. For these reasons, we conclude claim 1 recites an
abstract idea and turn to Step 2A, Prong 2 of the Revised Guidance.
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Revised Guidance Step 2A, Prong 2
Under Step 2A, Prong 2 of the Revised Guidance, we next determine
whether the claims recite additional elements that integrate the judicial
exception into a practical application (see MPEP § 2106.05(a)–(c), (e)–(h)).
To integrate the exception into a practical application, the additional claim
elements must, for example, improve the functioning of a computer or any
other technology or technical field (see MPEP § 2106.05(a)), apply the
judicial exception with a particular machine (see MPEP § 2106.05(b)), affect
a transformation or reduction of a particular article to a different state or
thing (see MPEP § 2106.05(c)), or apply or use the judicial exception in
some other meaningful way beyond generally linking the use of the judicial
exception to a particular technological environment (see MPEP
§ 2106.05(e)).
The “additional elements” recited in claim 1 include “a first data
store,” “a second data store,” “a digital media server,” “a plurality of media
presentation devices,” “a processor,” and “a computer-readable medium.”
These additional elements do not constitute “additional elements that
integrate the judicial exception into a practical application.”
Appellant argues claim 1 integrates the alleged abstract idea into a
practical application because claim 1 includes the concrete steps of
developing a media campaign, not mere analysis. Appeal Br. 14. Appellant
argues the data stores and user interfaces are additional elements that
integrate the abstract idea into a practical application. Id. Appellant also
argues the transmission of the selected digital programming assets to the
media presentation devices integrates the abstract idea into a practical
application. Id.
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Appellant has not persuaded us of Examiner error. The focus of
claim 1 is not on an improvement to computers or another technology, but
rather on using generic computer components to perform the recited method
of managing a digital media campaign. Thus, claim 1 focuses on the abstract
idea itself, rather than any technical improvement.
In Trading Technologies, the Federal Circuit affirmed the Board’s
decision that the challenged claims were not patent eligible under 35 U.S.C.
§ 101, because the claims were directed to a “business problem” to provide
traders additional information, such as profit and loss data, on an existing
trading screen. Trading Techs. Int’l, Inc. v. IBG LLC, 921 F.3d 1378, 1382
(Fed. Cir. 2019). The court determined that the written description made
“clear that ‘the focus of the claimed advance over the prior art’ is providing
a trader with additional financial information to facilitate market trades, an
abstract idea.” Id. at 1384 (citation omitted). The court held that this was not
a technological solution because it “improv[ed] the trader, not the
functioning of the computer.” Id. at 1383. The court also affirmed the
Board’s conclusion that the claims were directed to an unpatentable abstract
idea of calculating and displaying information that “is nothing more than
‘mere automation of manual processes using generic computers,’” and held
that the claims failed to recite an inventive concept because the claimed
trading screen simply took the prior art trading screen and added profit and
loss values along the axis. Id. at 1384 (citation omitted).
The claim at issue here is similar. As stated by Appellant, current
methods of implementing digital media campaigns are very inefficient, often
involving manual negotiation. Spec. ¶ 4. Appellant identifies particular
inefficiencies, such as the people managing the ad campaign not having
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access to scheduling information, which leads to scheduling issues that result
in wasted work time and lost revenue. Id. Appellant also states that current
methods lack an efficient mechanism to manage cross-media advertising
campaigns because scheduling and managing ads across broadcast
television, cable television, radio, and streaming media can involve different
data sets that representatives must manually search to determine packages to
offer to a consumer. Id. ¶ 6. In other words, the problem Appellant is
attempting to solve is rigid, inefficient collection of information from users
during digital media campaign preparation. Appellant solves this problem by
automating the collection of information and maintaining all of the relevant
information in the automated system. Like in Trading Technologies, these
improvements focus on improving the business process, “not the functioning
of the computer.” 921 F.3d at 1383.
The alleged improvements identified by Appellant do not “enable[] a
computer . . . to do things it could not do before.” Finjan, Inc. v. Blue Coat
Sys., Inc., 879 F.3d 1299, 1305 (Fed. Cir. 2018). Appellant’s improvements
relate to how information is stored, and how that information is used to
manage digital media campaigns. However, improvements to the
information stored by a database are not equivalent to an improvement in the
database’s functionality. See BSG Tech LLC v. Buyseasons, Inc., 899 F.3d
1281, 1288 (Fed. Cir. 2018).
Also, improvements to the manner in which digital media campaigns
are managed are improvements to the abstract idea itself. Even if a claimed
abstract idea is novel, a claim directed to a new abstract idea is still directed
to an abstract idea. Elec. Commc’n Techs., LLC v. ShoppersChoice.com,
LLC, 958 F.3d 1178, 1182–83 (Fed. Cir. 2020). Indeed, “[w]e may assume
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that the techniques claimed are ‘[g]roundbreaking, innovative, or even
brilliant,’ but that is not enough for eligibility.” SAP Am., Inc. v. InvestPic,
LLC, 898 F.3d 1161, 1163 (Fed. Cir. 2018) (quoting Ass’n for Molecular
Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 591 (2013)).
The Specification further confirms that the improvements at issue are
improvements to the abstract idea itself. In particular, “[t]he specification is
silent as to any specific structural or inventive improvements in computer
functionality related to this claimed system.” See Customedia Techs., LLC v.
Dish Network Corp., 951 F.3d 1359, 1365 (Fed. Cir. 2020). Providing
“simply generic descriptions of well-known computer components” does not
integrate the abstract idea into a practical application where, as here,
Appellant “makes no claim that it invented any of those components or their
basic functions, nor does it suggest that those components, at that level of
generality, were unknown in the art.” Affinity Labs of Tex., LLC v.
Amazon.com Inc., 838 F.3d 1266, 1270 (Fed. Cir. 2016); see also
Intellectual Ventures I LLC v. Erie Indem. Co., 850 F.3d 1315, 1331 (Fed.
Cir. 2017) (“The claimed mobile interface is so lacking in implementation
details that it amounts to merely a generic component (software, hardware,
or firmware) that permits the performance of the abstract idea, i.e., to
retrieve the user-specific resources.”). Indeed, the Specification confirms the
generic nature of the claimed computer components. See, e.g., Spec. ¶¶ 147‒
152.
Appellant’s argument that the claimed data stores, user interfaces, and
transmission of digital media assets integrate the abstract idea into a
practical application is unpersuasive. See Appeal Br. 14. Each of these
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limitations relates to data gathering and outputting, which are insignificant
extra-solution activities. See MPEP § 2106.05(g).
Thus, in claim 1 a generic computer system is used to implement the
claimed functionality, and there is no indication that claim 1 improves the
functioning of the processor, makes it operate more efficiently, or solves a
technological problem with a solution rooted in computer technology.
For these reasons, Appellant has not persuaded us of Examiner error
with respect to Step 2A, Prong 2 of the Revised Guidance. We, therefore,
conclude the judicial exception is not integrated into a practical application
under the Revised Guidance.
Revised Guidance Step 2B
Under Step 2B of the Revised Guidance, we next determine whether
the claims recite an “inventive concept” that “must be significantly more
than the abstract idea itself, and cannot simply be an instruction to
implement or apply the abstract idea on a computer.” BASCOM Glob.
Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341, 1349 (Fed. Cir.
2016). There must be more than “computer functions [that] are ‘well-
understood, routine, conventional activit[ies]’ previously known to the
industry.” Alice, 573 U.S. at 225 (second alteration in original) (quoting
Mayo, 566 U.S. at 73).
Appellant argues claim 1 recites an inventive concept for the same
reasons that claim 1 allegedly integrates the abstract idea into a practical
application. See Appeal Br. 13‒14; Reply Br. 3‒4. As explained above, this
argument is unpersuasive because claim 1 recites an improvement to an
abstract idea that solves a business problem, not an improvement to
computer technology.
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Thus, Appellant has not persuasively identified any “inventive
concept” sufficient to transform the claims from an abstract idea to a patent-
eligible application. For these reasons, we agree with the Examiner (see
Final Act. 9‒11; Ans. 33‒34) that the claims do not recite an “inventive
concept” sufficient to transform the claims from an abstract idea to a patent-
eligible application. We, therefore, sustain the patent-ineligible subject
matter rejection of claim 1. We also sustain the rejection of independent
claim 30, and dependent claims 2‒6, 9‒16, and 18‒29, for which Appellant
relies on the same arguments. See Appeal Br. 14‒20.
Obviousness
Claim 1
Appellant argues the Examiner errs in rejecting claim 1 as
unpatentable over Balakrishnan, Steelberg, Seldin, Nolet, and Kucharz for
several reasons. See Appeal Br. 21‒25. First, Appellant argues the references
do not teach or suggest “a first data store comprising a plurality of digital
media files, each of which corresponds to a digital advertisement that an
electronic media service provider may present to consumers.” Appeal Br. 21.
In particular, Appellant argues Balakrishnan teaches a server that merely
forwards packets associated with media content to set top boxes or other
media processors. Id. Appellant argues Balakrishnan does not mention a data
store containing digital video files corresponding to digital advertisements.
Id.
Appellant has not persuaded us of Examiner error. The Examiner
finds, and we agree, Balakrishnan teaches providing advertising content to a
user. Ans. 35 (citing Balakrishnan ¶¶ 12, 13, 55). We agree with the
Examiner that even if Balakrishnan does not explicitly disclose a data store
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to store this content prior to delivery, these teachings, which include a
memory that stores impressions relating to the display of content, at least
suggest “a first data store comprising a plurality of digital media files, each
of which corresponds to a digital advertisement that an electronic media
service provider may present to consumers.” Further, the Examiner cites
additional references with explicit teachings regarding memory devices that
store advertising content. See, e.g., Final Act. 16 (citing Seldin ¶ 45, which
teaches an advertising content store, as teaching an interface for sellers to
define advertising campaigns and submit advertising content).
Second, Appellant argues the references do not teach or suggest
“comparing the purchasing criteria and the seller-side criteria to the temporal
attributes and non-temporal attributes in the data set.” Appeal Br. 22‒23. In
particular, Appellant argues in the Appeal Brief that Nolet teaches a method
for choosing between two competing bids for one advertisement space. Id. In
so arguing, Appellant notes that the Examiner finds paragraphs 26 and 53 of
Nolet teach this limitation. Id. But Appellant reproduces the language of
paragraphs 23 and 56 and argues that nothing in these paragraphs teaches or
suggests the claim limitations. Id. In the Reply Brief, Appellant argues the
Examiner’s citations in the Answer do not reference any particular
paragraphs, arguing that relevant teachings cannot be found. Reply Br. 9.
Appellant has not persuaded us of Examiner error. The Examiner
finds, and we agree, Nolet teaches a system that produces an advertising
campaign based on predefined constraint criteria specified by both the buyer
and the seller. Final Act. 17 (citing Nolet ¶¶ 26, 53). Nolet specifically
teaches comparing predefined criteria set by both the seller and the buyer.
Nolet ¶ 53. These criteria include price, geography, time of delivery,
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location of delivery, quantity, and language. Id. ¶ 52. Thus, these criteria
include both temporal and non-temporal attributes. Appellant argues the
Examiner’s findings based on paragraphs 26 and 53 are erroneous, but
quotes the wrong paragraphs in arguing that Nolet does not teach the
claimed comparison. Thus, Appellant’s argument is not responsive to the
Examiner’s findings.
Finally, Appellant argues the Examiner errs because the Examiner’s
rationale to combine the references relies on impermissible hindsight.
Appeal Br. 23‒25. Appellant argues the Examiner relies on the exact same
rationale to add Steelberg’s buyer-side interface and Seldin’s seller-side
interface to Balakrishnan’s system. Id. at 24. Appellant argues the Examiner
has not explained why it would have been obvious to add both of the
claimed user interfaces to Balakrishnan’s system. Id.
Appellant has not persuaded us of Examiner error. The Examiner
makes adequate findings regarding the rationale to combine each of the
references, and we adopt those as our own. See Final Action 15‒19. The
Examiner’s rationale to add Steelberg’s buyer-side interface and Seldin’s
seller-side interface to Balakrishnan’s system is indeed the same. See id. at
15‒16. However, we see no error in the finding that adding a buyer-side
interface or a seller-side interface would have been obvious “because the
system would need some type of method for inputting the advertisement
campaign criteria which is common to be provided through the use of a user
interface for entering the parameters of the advertisement campaign.” Id.
The fact that the rationale statement does not specifically reference whether
the added interface is seller-side or buyer-side does not obviate the need for
inputting advertisement criteria in both situations.
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For these reasons, we sustain the obviousness rejection of claim 1. We
also sustain the obviousness rejection of independent claim 30, for which
Appellant relies on the same arguments. See Appeal Br. 31‒33.
Dependent Claims
a. Claim 3
Claim 3 recites, in relevant part, enabling the first buyer to “identify
one or more different monetary values that the first buyer will pay if any of
[one or more] alternative criteria are met.” Appellant argues Steelberg does
not teach or suggest connecting user bids to alternative criteria. Appeal
Br. 26.
The Examiner finds, and we agree, Steelberg teaches users can adjust
how much the user is willing to bid for a spot that reaches a particular
number of listeners, which the Examiner finds teaches the “alternative
criteria” limitation. Ans. 36. Appellant does not respond in the Reply Brief
or identify persuasive error in the Examiner’s findings. Accordingly, we
sustain the Examiner’s obviousness rejection of claim 3.
b. Claim 5
Claim 5 recites:
The system of claim 1, wherein the received selection of
one or more of the purchasing criteria comprises a target
audience criterion that comprises at least one of the following:
a requirement that a viewer have purchased a specified
good or service within a time period;
a requirement that a viewer have exhibited a viewing
pattern over a time period;
a requirement that a viewer has publicly expressed
positive feedback on a social network for a digital media asset
in the advertising campaign; or
a requirement that a viewer has not publicly expressed
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negative feedback on a social network for a digital media asset
in the advertising campaign.
The Examiner adds Yehoshua to the base combination to reject claim
5 as unpatentable under 35 U.S.C. § 103. Final Act. 28‒29. Appellant argues
the Examiner errs by relying on impermissible hindsight without a reasoned
explanation for combining Yehoshua with the other references. Appeal
Br. 26.
Appellant has not persuaded us of Examiner error. The Examiner
finds, and we agree, an ordinarily skilled artisan would have combined
Yehoshua’s requirement that a viewer exhibit a viewing pattern over a time
period with the combined system because it was quite common to adjust
content to be delivered to a user based on the user’s viewing history.
Ans. 36‒37. Appellant has not persuasively identified error in this finding.
Accordingly, we sustain the obviousness rejection of claim 5.
c. Claim 6
Claim 6 recites:
The system of claim 3, wherein:
at least one of the alternative criteria comprises an
exclusivity preference that comprises:
an exclusive time period, and
a competitive restriction for the placement of
advertisements by a second buyer in one or more of the
digital programming assets during the exclusive time
period; and
the instructions to automatically develop the advertising
campaign comprise instructions to:
use the different monetary value for the exclusivity
preference to determine whether satisfying the
exclusivity preference will maximize a revenue
opportunity for the media service provider, and
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if satisfying the exclusivity preference will
maximize a revenue opportunity for media service
provider, then develop an advertising campaign for the
second buyer so that digital media assets of the second
buyer are positioned in a manner that does not violate the
exclusivity preference of the first buyer.
Appellant argues the Examiner errs in rejecting claim 6 as
unpatentable over the base combination in view of Biggs. Appeal Br. 26‒27.
In particular, Appellant argues Biggs teaches buyers may place higher bids
for ad exclusivity, but Biggs is concerned with placement of ads on
individual pages, not ad campaigns. Id. at 27. Appellant argues Biggs’
exclusivity only relates to placement, not time periods, as claimed. Id.
Appellant has not persuaded us of Examiner error. The Examiner
finds Steelberg teaches using time periods and Biggs teaches using an
auction to vary the layout of advertisements for certain time slots in which a
company may bid higher to prevent a competitor from having ad exclusivity.
Ans. 37. Appellant’s argument, which focuses on the teachings of Biggs
without considering the combined teachings of Biggs and Steelberg, is
unpersuasive because the relevant inquiry is whether the claimed subject
matter would have been obvious to those of ordinary skill in the art in light
of the combined teachings of those references. In re Keller, 642 F.2d 413,
425 (CCPA 1981). We, therefore, sustain the obviousness rejection of claim
6.
d. Claim 7
Claim 7 recites:
The system of claim 1, wherein:
the instructions to present the buyer-side user interface
that displays a plurality of user-selectable purchasing criteria
comprise instructions to enable the first buyer to:
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identify an overall time period for the advertising
campaign,
define a time unit that is a subunit of the overall
time period, and
identify a smoothness criterion that represents a
measurement of a maximum amount of, or a maximum
change in a volume of, advertisements allocated to each
of the time units for the advertising campaign; and
the instructions to automatically develop the advertising
campaign comprise instructions to select a group of
advertisements for the campaign and automatically allocate the
advertisements to spots in the campaign so that any
advertisements placed in digital programming assets that are
scheduled television programs are allocated to the time units in
a manner that does not violate the smoothness criterion.
Appellant argues the Examiner errs in rejecting claim 7 as
unpatentable over the base combination in view of Zenor. Appeal Br. 27‒28.
In particular, Appellant argues Zenor teaches assessing saturation, a measure
of the number of times an ad is displayed to a user, but does not teach using
smoothness in generation of an ad campaign. Id. Appellant also argues the
Examiner has not sufficiently explained why an ordinarily skilled artisan
would have combined Zenor’s teachings with the base combination. Id. at
28.
The Examiner concludes the limitation “so that any advertisements for
media assets that are scheduled television programs are allocated [to] the
time units in a manner that does not violate the smoothness criterion”
reflects an intended use and is not entitled to patentable weight. Ans. 37. The
Examiner also finds Zenor teaches a smoothness criterion. Id.
Appellant has persuaded us of Examiner error. As an initial matter, we
disagree with the Examiner that the limitation “so that any advertisements
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for media assets that are scheduled television programs are allocated [to] the
time units in a manner that does not violate the smoothness criterion” is not
entitled to patentable weight. This limitation defines the manner in which
advertisements are allocated to spots during the generation of an
advertisement campaign.
Further, Zenor teaches ensuring that an advertisement is not displayed
to a household so often that the advertisement has reduced effectiveness.
Zenor ¶ 34. However, the Examiner has not explained how Zenor teaches a
smoothness criterion, as claimed. That is, the Examiner has not identified,
nor have we found, teachings in Zenor that relate to allocating
advertisements within each time unit of an advertising campaign such that
the allocation does not violate a maximum number of ads per time slot.
Accordingly, we are constrained by the record to reverse the Examiner’s
obviousness rejection of claim 7.
e. Claim 8
Claim 8 recites:
The system of claim 1, wherein:
the instructions to present the buyer-side user interface
that displays a plurality of user-selectable purchasing criteria
comprise instructions to enable the user to:
identify a separation criterion that comprises:
a user-specified type of advertisement, and
a minimum distance that the advertising
campaign should maintain between placement of
the first buyer's advertisements and placement of
advertisements of the user-specified type; and
the instructions to automatically develop the advertising
campaign comprise instructions to select a group of
advertisements for the first buyer for the campaign and
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automatically allocate the first buyer's advertisements to spots
in the campaign so that the first buyer's advertisements and
placement of advertisements of the user-specified type are
positioned in a manner that does not violate the separation
criterion.
Claim 8 stands rejected as unpatentable over the base combination in
view of Bayer. Final Act. 33‒34. The Examiner finds an ordinarily skilled
artisan would have been motivated to combine Bayer with the other
references because it is well known in the art to restrict advertisements so
that they cannot be placed near a competitor’s advertisement. Ans. 37‒38.
Appellant argues the Examiner has not sufficiently explained why an
ordinarily skilled artisan would have combined Bayer’s teachings with the
base combination and that the Examiner’s stated rationale is merely
conclusory. Appeal Br. 28.
Appellant has not persuasively identified error in the Examiner’s
findings. Bayer teaches a number of criteria that may be used in determining
the placement of advertisements relative to each other, including restricting
placement of advertisements near competitors’ advertisements. Bayer
14:19‒42. Appellant’s argument that the addition of Bayer to the base
combination is the result of hindsight is unpersuasive because Bayer and the
base combination relate to the placement of advertisements and the various
criteria which may be used in determining advertisement placement. The
addition of Bayer to the base combination is not merely suggested using
hindsight gleaned from Appellant’s Specification, but rather from the
knowledge of an ordinarily skilled artisan and the references themselves.
Accordingly, Appellant has not persuaded us of Examiner error with respect
to claim 8. We, therefore, sustain the obviousness rejection of claim 8.
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f. Claim 9
Claim 9 recites:
The system of claim 1, wherein the instructions to cause
the display device to present the seller-side user interface
comprise instructions to provide an input by which the seller-
side user interface may receive from a user:
a categorization of at least one of the purchasing criteria
as a preference; and
for at least one of the criteria that is categorized as a
preference, a plurality of levels for the preference criterion and,
for each level, a level-specific bonus amount that the first buyer
will pay if the preference is satisfied in the advertising
campaign.
Appellant argues the Examiner errs in rejecting claim 9 as
unpatentable because even if Steelberg teaches a system that charges more in
certain situations or that a buyer may bid more in certain situations,
Steelberg does not teach a seller-side user interface by which a user
categorizes at least one purchasing criterion as a preference, with a plurality
of levels, and a level-specific bonus amount for each level, as recited in
claim 9. Appeal Br. 28‒29.
Appellant has not persuaded us of Examiner error. The Examiner
finds, and we agree, Steelberg teaches a campaign manager that may provide
sellers with additional parameters identifying certain preferences and how
much these preferences cost. Ans. 38. Appellant’s argument is conclusory
and does not persuasively identify error in the Examiner’s findings.
Accordingly, we sustain the obviousness rejection of claim 9.

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g. Claim 10
Claim 10 recites:
The system of claim 1, wherein:
the instructions to present the seller-side user interface
comprise instructions to provide an input by which the seller-
side user interface may receive from a user:
a categorization of two or more of the purchasing
criteria as preferences, and
for each of the criteria that are categorized as a
preference, a bonus amount that the first buyer will pay if
the preference is satisfied in the advertising campaign;
and
the instructions to automatically develop the advertising
campaign comprise instructions to develop the advertising
campaign to satisfy at least one of the preferences that
maximize a revenue opportunity for the media service provider.
Appellant argues the Examiner errs in rejecting claim 10 for
substantially the same reasons as claim 9. Appeal Br. 29. That is, Appellant
argues Steelberg’s teachings do not relate to a seller-side user interface by
which a user categories purchasing criteria, as recited in claim 10. Id. We
disagree for the same reasons set forth above with respect to claim 9. We,
therefore, sustain the obviousness rejection of claim 10.
h. Claim 12
Claim 12 recites:
The system of claim 1, wherein:
the instructions to implement the digital media campaign
manager also comprise instructions to receive a group of zones
that constitute an interconnect for at least a portion of the
advertising campaign;
the instructions to automatically develop the advertising
campaign comprise instructions to develop the portion of the
advertising campaign so that whenever a slot is allocated to an
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interconnect, then present an ad running in that slot to all zones
that constitute the interconnect.
Appellant argues the Examiner errs in rejecting claim 12 because
Steelberg teaches bidding more for certain geographic locations, but claim
12 requires “whenever a slot is allocated to an interconnect, the system
present an ad running in that slot to all zones that constitute the
interconnect.” Appeal Br. 29.
Appellant has not persuaded us of Examiner error. Claim 12 recites
receiving “a group of zones that constitute[s] an interconnect” and
“whenever a slot is allocated to an interconnect, . . . present an ad running in
that slot to all zones that constitute the interconnect.” Thus, the claimed
“interconnect” may refer to a group of zones that are interconnected such
that an ad is presented to all of the interconnected zones.
The Examiner finds Steelberg teaches bidding more for certain spots
associated with certain geographic locations or zones, such as New York
City or Los Angeles. Ans. 38. Appellant offers a conclusory assertion that
this teaching does not satisfy the limitation “whenever a slot is allocated to
an interconnect, the system present an ad running in that slot to all zones that
constitute the interconnect.” Appeal Br. 29. We disagree because Steelberg
at least suggests running an ad in a large geographic area that comprises a
number of smaller areas (such as New York City, which may be divided into
many smaller areas). We, therefore, sustain the obviousness rejection of
claim 12.

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i. Claim 13
Claim 13 recites:
The system of claim 1, wherein the instructions to cause
the electronic device to implement the buyer-side user interface
that displays the plurality of user-selectable purchasing criteria
comprise instructions to:
access a set of profile data for the first buyer;
for at least one of the purchasing criteria, determine a
recommended value for that purchasing criteria for the first
buyer based on the profile data;
include the recommended value in the campaign as a
default value.
Claim 13 stands rejected as unpatentable over the base combination in
view of Steelberg ’791. Final Act. 35‒36. The Examiner finds an ordinarily
skilled artisan would have been motivated to combine Steelberg ’791 with
the other references because it is well known in the art to generate bids
based on periodic budgets associated with advertising campaigns. Ans. 38‒
39.
Appellant argues the Examiner has not sufficiently explained why an
ordinarily skilled artisan would have combined Steelberg ’791’s teachings
with the base combination and that the Examiner’s stated rationale is merely
conclusory. Appeal Br. 30.
Appellant has not persuasively identified error in the Examiner’s
findings. Steelberg ’791 teaches generating advertising bids based on
various time intervals associated with budgetary periods. Steelberg ’791
¶ 133. Appellant’s argument that the addition of Steelberg ’791 to the base
combination is the result of hindsight is unpersuasive because Steelberg ’791
and the base combination relate to the placement of advertisements and the
various criteria which may be used in determining advertisement placement.
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The addition of Steelberg ’791 to the base combination is not merely
suggested using hindsight gleaned from Appellant’s Specification, but rather
from the knowledge of an ordinarily skilled artisan and the references
themselves. Accordingly, Appellant has not persuaded us of Examiner error
with respect to claim 13. We, therefore, sustain the obviousness rejection of
claim 13.
j. Claim 21
Claim 21 recites:
The system of claim 1, wherein the instructions further
comprise instructions that, when executed, cause the processor
to, after presenting the indicia of the advertising campaign:
receive a response comprising an acceptance of a first
portion of the advertising campaign and a rejection of a second
portion of the advertising campaign;
determine an updated price for the first portion of the
advertising campaign;
modify the advertising campaign to exclude the second
portion of the advertising campaign; and
output the modified advertising campaign and the
updated price via the buyer-side user interface and/or the seller-
side user interface for review.
Appellant argues the Examiner errs in rejecting claim 21 as
unpatentable over the base combination in view of Duva. Appeal Br. 30. In
particular, Appellant argues Duva teaches accepting or rejecting a campaign
as a whole, but does not teach accepting or rejecting a first portion of a
campaign and a second portion of a campaign, and modifying the campaign
in response. Id. Appellant also argues the Examiner has not sufficiently
explained why an ordinarily skilled artisan would have combined Duva’s
teachings with the base combination. Id.
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Appellant has not persuaded us of Examiner error. The Examiner
finds, and we agree, Steelberg teaches updating prices for portions of
advertising campaigns and presenting campaign information, including
prices for these portions, to a user. Ans. 39. The Examiner finds, and we
agree, Duva teaches a user accepting or rejecting advertising campaigns. Id.
Appellant’s argument that Duva does not teach or suggest accepting or
rejecting portions of an advertising campaign is unpersuasive because the
relevant inquiry is whether the claimed subject matter would have been
obvious to those of ordinary skill in the art in light of the combined
teachings of those references. In re Keller, 642 F.2d 413, 425 (CCPA 1981).
Appellant’s argument regarding the Examiner’s rationale to combine
the references is also unpersuasive. Similar to the references discussed above
with respect to claims 8 and 13, the addition of Duva to the base
combination is not merely suggested using hindsight gleaned from
Appellant’s Specification, but rather from the knowledge of an ordinarily
skilled artisan and the references themselves. We, therefore, sustain the
obviousness rejection of claim 21.
k. Claim 29
Claim 29 recites:
The system of claim 1, further comprising additional
programming instructions to:
determine a first cost to reach a target audience using a
first type of targeting for the placement of the digital
advertisements in one or more of the digital programming
assets;
determine a second cost to reach the target audience
using a second type of targeting, wherein the second type of
targeting is broader or narrower than the first type of targeting;
and
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cause the seller-side user interface or the buyer-side user
interface to output the first and second costs for comparison.
Appellant argues the Examiner errs in rejecting claim 29 as
unpatentable over the base combination in view of Houston. Appeal Br. 31.
In particular, Appellant argues Houston teaches comparing costs associated
with reaching a particular audience through different media vehicles, but
does not teach comparing costs for reaching different target audiences, as
recited in claim 29. Id. Appellant also argues Houston is not related to
advertising campaign development and the Examiner has not sufficiently
explained why an ordinarily skilled artisan would have combined Houston’s
teachings with the base combination. Id.
Appellant has not persuaded us of Examiner error. The Examiner
finds, and we agree, Houston teaches comparing costs associated with
targeted advertising campaigns. Final Act. 38 (citing Houston ¶ 4). These
targeted advertising campaigns may reach different audiences with different
sizes. See, e.g., Houston ¶¶ 4‒7. We agree with the Examiner that Houston’s
comparison of advertising campaigns of differing sizes teaches or suggests
comparing costs of targeting advertisements “wherein the second type of
targeting is broader or narrower than the first type of targeting,” as recited in
claim 29.
Appellant’s argument regarding the Examiner’s rationale to combine
the references is also unpersuasive. Similar to the references discussed above
with respect to claims 8, 13, and 21, the addition of Houston to the base
combination is not merely suggested using hindsight gleaned from
Appellant’s Specification, but rather from the knowledge of an ordinarily
skilled artisan and the references themselves. We, therefore, sustain the
obviousness rejection of claim 29.
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DECISION SUMMARY
In summary:
Claim(s)
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1‒6, 9‒16,
18‒30
101 Eligibility 1‒6, 9‒16,
18‒30

1‒4, 9‒12,
14–20, 22‒
28, 30
103 Balakrishnan,
Steelberg, Seldin,
Nolet, Kucharz
1‒4, 9‒12,
14–20, 22‒
28, 30

5 103 Balakrishnan,
Steelberg, Seldin,
Nolet, Kucharz,
Yehoshua
5
6 103 Balakrishnan,
Steelberg, Seldin,
Nolet, Kucharz, Biggs
6
7 103 Balakrishnan,
Steelberg, Seldin,
Nolet, Kucharz, Zenor
7
8 103 Balakrishnan,
Steelberg, Seldin,
Nolet, Kucharz, Bayer
8
13 103 Balakrishnan,
Steelberg, Seldin,
Nolet, Kucharz,
Steelberg ’791
13
21 103 Balakrishnan,
Steelberg, Seldin,
Nolet, Kucharz, Duva
21
29 103 Balakrishnan,
Steelberg, Seldin,
Nolet, Kucharz,
Houston
29
Overall
Outcome
1‒6, 8‒30 7

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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.
§ 41.50(f).

AFFIRMED IN PART