Pani, Abhishek et al.

Patent Trials and Appeals Board

Jan 31, 2020

13656497 - (D) (P.T.A.B. Jan. 31, 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.
13/656,497 10/19/2012 Abhishek Pani 058083-0857897(2575US01) 3585
72058 7590 01/31/2020
Kilpatrick Townsend & Stockton LLP/Adobe
Adobe Systems, Inc. 58083
Mailstop: IP Docketing - 22
1100 Peachtree Street, Suite 2800
Atlanta, GA 30309-4530
EXAMINER
CIRNU, ALEXANDRU
ART UNIT PAPER NUMBER
3681
NOTIFICATION DATE DELIVERY MODE
01/31/2020 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):
KTSDocketing2@kilpatrick.foundationip.com
ipefiling@kilpatricktownsend.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ABHISHEK PANI and ZHENYU YAN
Appeal 2019-003780
Application 13/656,497
Technology Center 3600

Before J. JOHN LEE, DANIEL J. GALLIGAN, and
DAVID J. CUTITTA II, Administrative Patent Judges.
CUTITTA, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1, 2, 4, 5, 7–10, 13–16, and 19–26.2
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(a). Appellant identifies the real party in interest as Adobe Inc.
Appeal Br. 1.
2 Claims 3, 6, 11, 12, 17, and 18 have been cancelled.
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CLAIMED SUBJECT MATTER
According to Appellant, the claims are directed to selecting
advertisements for an advertising campaign based on performance
predictions for potential advertisements.3 Abstract. Claim 1, reproduced
below with bracketed lettering added for discussion purposes, is exemplary
of the claimed subject matter:
1. A computer implemented method for generating optimal
subsets of creatives for web-based advertising campaigns, the
method comprising:
[a] determining, by creative manager system including a
storage device and a plurality of modules implemented on one or
more computers, whether a set of creatives for a campaign is of
a sufficient size to construct a predictive model that is usable to
determine an optimal subset of creatives;
[b] in response to determining a sufficient set of creatives,
determining an optimal subset of creatives by:
[c] constructing, by the creative manager system,
the predictive model using collected performance data for
an initial subset from the set of creatives, the collected
performance data retrieved from the storage device;
[d] using, by the creative manager system, the
predictive model to generate predicted performance data
for additional creatives from the set of creatives that are
not in the initial subset; and

3 This Decision refers to: (1) Appellant’s Specification filed October 19,
2012 (“Spec.”); (2) the Final Office Action (“Final Act.”) mailed May 14,
2018; (3) the Appeal Brief (“Appeal Br.”) filed November 14, 2018; (4) the
Examiner’s Answer (“Ans.”) mailed February 15, 2019; and (5) the Reply
Brief (“Reply Br.”) filed April 15, 2019.
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[e] determining, by the creative manager system,
the optimal subset of creatives based on the collected
performance data and the predicted performance data, the
optimal subset of creatives including one or more creatives
from each of the initial subset and the additional creatives;
[f] automatically activating, by the creative manager
system, the optimal subset of creatives; and
[g] automatically deactivating, by the creative manager
system, a creative in the set of creatives that is not in the optimal
subset of creatives, wherein activating the optimal subset of
creatives and deactivating the creative in the set of creatives that
is not in the optimal subset of creatives comprises:
[h] updating, by the creative manager system,
creative control data for a creatives server, the creative
control data indicating an active status of the optimal
subset of creatives and an inactive status of the creative in
the set of creatives that is not in the optimal subset of
creatives, wherein updating the creative control data
causes the creatives server to remove the creative with the
inactive status from a subsequent transmission of
electronic content and perform the subsequent
transmission of electronic content with the optimal subset
of creatives included in the subsequent transmission.
REJECTIONS
Claims 1, 2, 4, 5, 7–10, 13–16, and 19–26 stand rejected under 35
U.S.C. § 101 as directed to patent-ineligible subject matter. Final Act. 2–4.
Claims 1, 2, 4, 7–10, 13–16, and 19–264 stand rejected under 35
U.S.C. § 103(a) as being unpatentable over Richardson (US 2008/0249832

4 The Final Action lists claims 1, 2, 4, 7–10, 13–16, 19–20, 22–23, 25 as
rejected over Richardson and Chang. Final Act. 5. However, the Final
Action provides discussion for claims 1, 2, 4, 7–10, 13–16, and 19–26 as
unpatentable over Richardson and Chang. Id. at 5–14. We understand this
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A1, published Oct. 9, 2008) and Chang (US 7,406,434 B1, issued July 29,
2008). Id. at 5–14.
Claim 5 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Richardson, Chang, and Lin (US 8,370,280 B1, issued
Feb. 5, 2013). Id. at 14–15.
Our review in this appeal is limited to the above rejections and the
issues raised by Appellant. Arguments not made are waived. See MPEP
§ 1205.02; 37 C.F.R. § 41.37(c)(1)(iv).

PRINCIPLES OF LAW
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. See, 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-step framework, described in Alice and Mayo.
Id. 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 recites. 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

discrepancy to be a typographical mistake and further understand the Final
Action rejects claims 1, 2, 4, 7–10, 13–16, and 19–26 over Richardson and
Chang.
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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.”).
If the claim recites an abstract idea, we turn to the second step of the
Alice and Mayo framework, in which “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 (internal 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. (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.
The Office published revised guidance on the application of § 101.
2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50
(Jan. 7, 2019) (hereinafter “Guidance”). In October 2019, the USPTO
published an update to that guidance. October 2019 Patent Eligibility
Guidance Update, 84 Fed. Reg. 55,942 (hereinafter “Guidance Update”).
Under the Guidance and the Guidance Update, in determining whether a
claim falls within an excluded category, we first look to whether the claim
recites:
(1) Step 2A — Prong One: any judicial exceptions, including
certain groupings of abstract ideas (i.e., mathematical
concepts, certain methods of organizing human activity, such
as a fundamental economic practice, or mental processes); and
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(2) Step 2A — Prong Two: additional elements that integrate
the judicial exception into a practical application (see MPEP5
§§ 2106.05(a)–(c), (e)–(h)).
See Guidance, 84 Fed. Reg. 54–55 (“Revised Step 2A”). 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 (Step 2B):
(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.
See id. at 56 (“Step 2B: If the Claim Is Directed to a Judicial Exception,
Evaluate Whether the Claim Provides an Inventive Concept.”).

ANALYSIS
Patent Eligibility
We analyze the claims and the Examiner’s rejection in view of the
Guidance and the Guidance Update, and we adopt the nomenclature for the
steps used in the Guidance. Appellant’s arguments focus on limitations
recited in independent claim 1. See Appeal Br. 6–23. We, thus, select
claim 1 as representative. See 37 C.F.R. § 41.37(c)(1)(iv).
Step 1
As an initial matter, the claims must recite at least one of four
recognized statutory categories, namely, machine, process, article of

5 All Manual of Patent Examining Procedure (“MPEP”) citations herein are
to MPEP, Rev. 08.2017, January 2018.
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manufacture, or composition of matter. MPEP § 2106(I); see 35 U.S.C.
§ 101. Independent claim 1 recites a method, claim 9 recites a system, and
claim 15 recites a non-transitory computer-readable storage medium. Thus,
the pending claims recite recognized statutory categories under § 101, i.e.,
processes, machines, and articles of manufacture, and we turn to the two-
step Alice/Mayo analysis applied in accordance with the Guidance.
Step 2A, Prong One in the Guidance
Next, we determine whether claim 1, being directed to a statutory
class of invention, nonetheless recites a judicial exception. Guidance, 84
Fed. Reg. 51.
The Examiner determines that exemplary claim 1 recites a judicial
exception: an abstract idea. Ans. 2. In particular, the Examiner determines
the claim recites steps for “providing advertising,” namely by “[s]electing
and transmitting advertising,” the advertisement selection “based on
performance analysis and predictive modeling.” Id.; Final Act. 2–4. In
correspondence with the Guidance, the Examiner determines that such
advertising schemes are certain methods of organizing human activity.
Ans. 2; Final Act. 3–4; Guidance, 84 Fed. Reg. 52. And, according to the
Guidance, certain methods of organizing human activity are a category of
abstract idea. Guidance, 84 Fed. Reg. 52.
Appellant argues that, rather than reciting an abstract idea, the claims
recite an “application of particular rules [that] is used to control the
operation of electronic content communication systems by excluding certain
target devices from the transmission of electronic content in accordance with
the particular rules.” Appeal Br. 6.
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The Examiner’s position is better supported by the record. As an
initial matter, we note that Appellant mischaracterizes the Examiner’s
position with the assertion that “the only limitations identified by the
Examiner as reciting an abstract idea are ‘determining, by the creative
manager system, the optimal subset of creatives’ and ‘automatically
activating, by the creative manager system, the optimal subset of creatives.’”
Reply Br. 2–4. The Examiner states that the “claimed invention recites the
following abstract concept which has been identified as an abstract idea by
the Courts: providing advertising,” which is “a [certain] method of
organizing human activity.” Ans. 2. Although “[r]elevant claim limitations”
in the Examiner’s analysis “include” determining the optimal subset of
creatives and automatically activating the optimal subset of creatives (id.),
the Examiner’s analysis is not confined to those limitations. For example, in
the Final Rejection, the Examiner considers the majority of the limitations
recited in claim 1 in determining that the claim recites steps for “providing
advertising.” See Final Act. 2–4.
Appellant’s characterization that the claimed invention is a technical
improvement for “selectively allowing or preventing network transmission
of content” (Appeal Br. 6) ignores the Specification’s description that the
purpose of the invention is to create “[a]dvertising campaigns” that select
“factors [that] are particularly well suited for a particular audience, product,
seasonality, demographic or based on other criteria and then provide
elements embodying those factors for incorporation into creatives,” i.e.,
tailoring advertisements. Spec. ¶ 18. The Specification details an “approach
[that] selects creatives with creative factors (image, title, and text body),”
which “interact with audience targeting information (e.g. age, gender,
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location, education, interests).” Spec. ¶ 73. As such, the Specification
supports the Examiner’s determination that the claim recites steps for
selecting and presenting advertisements based on an advertising model.
Aligning with the Specification’s description, claim 1 reflects such an
advertisement selection scheme. Initially, we note that we address
additionally recited computer hardware-related features in the claim, i.e., a
“creative manager system” and the “transmission of electronic content,” at a
later step below. Limitations [a]–[c] recite steps to construct a predictive
model for advertisements using past advertisement performance data.
Limitations [d]–[e] then recite steps applying the predictive model to
potential advertisements in order to select which advertisements will be used
in an advertising campaign. Contrary to Appellant’s argument that those
limitations apply “particular rules” (Appeal Br. 6, 8–9), those limitations do
not recite any particular manner to create or use the predictive model.
Instead, the claim identifies data used in the creation of the model and
broadly claims the resulting model and selection of advertisements. As
such, limitations [a]–[e] recite a scheme to select advertisements based on
past advertisement performance in a broad and result-oriented manner; such
tailoring of advertisements is typical in the creation of advertising
campaigns. See Intellectual Ventures I LLC v. Capital One Bank (USA), 792
F.3d 1363, 1369 (Fed. Cir. 2015). Limitations [f]–[h] recite steps for
“activating” advertisements that were selected, “deactivating”
advertisements that were not selected, and only transmitting the activated,
i.e., selected, advertisements. Presenting the created advertising campaign is
a typical step in any advertisement campaign; fundamentally, any
advertising campaign is for presentation. Accordingly, claim 1 recites steps
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in a certain method of organizing human activity, and, so, recites an abstract
idea.
Step 2A, Prong Two in the Guidance
Next, we determine whether claim 1 is directed to the abstract concept
itself or whether it is instead directed to some technological implementation
or application of, or improvement to, this concept, i.e., integrated into a
practical application. See, e.g., Alice, 573 U.S. at 223 (discussing Diamond
v. Diehr, 450 U.S. 175, 177 (1981)).
The Examiner determines that “[i]mproving the ad[vertisement]
selection/transmission process pertains to a business practice improvement,
not to a technical improvement.” Ans. 3. The Examiner further determines
that certain limitations, e.g., “selecting/de-selecting ad[vertisements],” are
“insignificant extra solution activity.” Ans. 4–5.
Appellant argues that “selectively allowing or preventing network
transmission of content” is a “technical improvement.” Reply Br. 4; Appeal
Br. 6. Further, Appellant argues that the claimed invention
integrates the alleged abstract idea into the practical application
of controlling the delivery of electronic content to some target
devices and preventing the delivery of electronic content to other
target devices based on constructing a predictive model for a
sufficiently sized set of creatives, which is a computer-specific
function rather than an abstract idea.
Reply Br. 4 (emphasis omitted).
We are not persuaded claim 1 integrates the exception into a practical
application. Appellant argues that the claimed invention recites a technical
improvement because “the claimed invention is able to prevent, using a
predictive model, certain content from being transmitted to one or more user
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devices that are excluded from subsequent transmissions of electronic
communications.” Appeal Br. 17–18. First, the selection of advertisements
for presentation using a model based on past advertisement performance is
part of the abstract idea, as discussed above. Second, the claim does not
recite that some devices receive certain advertisements while other devices
do not receive those advertisements. Furthermore, the selection of
advertisements for presentation using a model based on past advertisement
performance is a marketing or business strategy improvement, not a
computing technology improvement. Modeling advertisements to select
advertisements is a task that a computer can be used to perform, but it is not
an improvement specific to computers themselves. The result-oriented
nature of the claim, i.e., the claim recites the resultant features but not some
particular technical manner of achieving those features, further supports our
determination that the claim does not improve some particular computing
technology.
Despite Appellant’s reliance on BASCOM (Appeal Br. 16–17 (citing
BASCOM Glob. Internet Servs., Inc. v. AT&T Mobility LLC , 827 F.3d 1341
(Fed. Cir. 2016)), the claim here does not improve the technology the way
the claims in BASCOM did. In BASCOM, the claims improved prior art
content filtering solutions by making them more dynamic, thus using
software to improve the performance of the computer system itself.
BASCOM, 827 F.3d at 1351. Here, the claim does nothing to improve how
electronic content is transmitted; instead, the claim merely adds generic
networking capabilities to transmit advertisements selected according to a
business strategy.
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Nor are we persuaded the claim solves some “Internet-centric
problems involving data scarcity potentials in conventional computer-
automated predictive analytics systems for web-based campaigns.” Appeal
Br. 18–19. Although the invention can be used in an online context, the
Specification confirms that advertisement selection is not some internet-
specific problem. See Spec. ¶ 18 (“Advertising campaigns, especially on-
line advertising campaigns use combinations of images, titles, bodies and
other categories . . . to create advertisements.”). Further, data scarcity, i.e.,
not having enough data, is not a problem particular to computers or the
Internet; any modeling based on past information requires some amount of
past information. Moreover, the claim does not recite any solution to data
scarcity. The claim only provides a “response to determining a sufficient set
of creatives,” but does not recite a response to determining an insufficient set
of creatives.
Still further, we agree with the Examiner’s determination that
“activating” the selected advertisements or “deactivating” the unselected
advertisements for transmission, as recited in limitations [f]–[g], is
insignificant extra-solution activity. Ans. 4–5. The focus of the invention is
the creation of an advertising campaign, not the transmission of the
campaign. Indeed, the title, the abstract, the summary, and the Specification
are predominantly directed to the selection of advertisements. As such,
“allowing or preventing network transmission of content” (Reply Br. 4;
Appeal Br. 6) is directed to extra-solution activity. In this particular case,
such access control to content is insignificant extra-solution activity.
Additionally, none of the remaining indicia of integration listed by the
January 2019 Guidance is present in claim 1. For example, the claim does
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not recite a particular machine and, instead, generically recites a
“computerized method.” Nor does the claim recite the “[t]ransformation and
reduction of an article ‘to a different state or thing.’” Bilski, 561 U.S. 593,
604 (2010) (emphasis added, alteration in original), quoted in
MPEP § 2106.05(c). Claim 1’s method does not transform a physical object
or substance. In this way, the claim is unlike the transformations found in
some eligible claims. See, e.g., Diehr, 450 U.S. at 184 (a process that
transforms rubber).
We, therefore, determine claim 1 is not directed to a specific asserted
improvement in technology or otherwise integrated into a practical
application and, thus, is directed to a judicial exception.
Step 2B
Next, we determine whether the claim includes additional elements
that provide significantly more than the recited judicial exception, thereby
providing an inventive concept. Alice, 573 U.S. at 221 (quoting Mayo, 566
U.S. at 72–73).
The Examiner determines that, both individually and in combination,
the additionally recited “computing elements are recited at a high level of
generality and only perform generic functions of receiving, manipulating
and transmitting information” and, so, “do not amount to significantly more
than the abstract idea.” Final Act. 4. We agree with the Examiner.
Appellant argues that there is “no evidence establishing that the
additional features . . . are well-understood, routine[,] or conventional.”
Reply Br. 9. Further, Appellant argues “the Specification lack[s] any
statement that explicitly characterizes any claim feature as ‘conventional.’”
Appeal Br. 22.
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We disagree. Appellant’s arguments highlight the steps for creating
the predictive model and for selecting advertisements for transmission (see
Appeal Br. 21–23; see also Reply Br. 9–11), but those steps are part of the
abstract idea, as discussed above. The additionally recited computer-related
elements not encompassed by the abstract idea, i.e., the “creative manager
system” performing the abstract idea and the “transmission of electronic
content,” are well-understood, routine, and conventional, according to the
Specification. The Specification states that the “creative element selection
system based on performance analysis and predictive modeling as described
herein may be executed on one or more computer systems” and such
computer systems “may be . . . in general any type of computing or
electronic device.” Spec. ¶¶ 75, 84. As such, the Specification describes
that the “creative manager system” is implemented using any generic
computing device. Still further, the Specification teaches that the system
“support[s] communication via wired or wireless general data networks.”
Spec. ¶ 81. As such, the Specification describes that the system generically
transmits advertisements using well-understood, routine, and conventional
network technology. With respect to the Examiner’s determination that
“activating” the selected advertisements or “deactivating” the unselected
advertisements for transmission, as recited in limitations [f]–[g], is
insignificant extra-solution activity (Ans. 4–5), Appellant argues that “no
record evidence establishes that these limitation are ‘well known,’ as
required under Berkheimer” (Reply Br. 6–7 (citing Berkheimer v. HP Inc.,
881 F.3d 1360 (Fed. Cir. 2018))). We find this argument unpersuasive
because Appellant addresses whether the limitations are well-understood,
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routine and conventional but does not address the Examiner’s determination
that the limitations are insignificant extra-solution activity.
We, thus, conclude that claim 1 does not provide an inventive concept
because the additional elements recited in claim 1, considered individually
and as an ordered combination, do not provide significantly more than the
recited judicial exception. Accordingly, claim 1 does not recite patent-
eligible subject matter. Because claim 1 is representative of the independent
claims, we conclude that independent claims 9 and 15 also do not recite
patent-eligible subject matter.
Additionally, although Appellant argues that dependent claims 21, 24,
and 26 recite a “particular means for intelligently activating and deactivating
content based on a specific manner of simultaneous hypothesis testing”
(Appeal Br. 13–14), those limitations further describe, and are part of, the
abstract idea discussed above. Further, Appellant has not proffered
sufficient evidence or argument to persuade us that any of the limitations in
remaining dependent claims 2, 4, 5, 7, 8, 10, 13, 14, 16, and 19, 20, 22, 23,
and 25 provide a meaningful limitation that transforms the claims into a
patent-eligible application. See Appeal Br. 6–23. Therefore, we sustain the
rejection of claims 1, 2, 4, 5, 7–10, 13–16, and 19–26 under 35 U.S.C. § 101
as being directed to patent-ineligible subject matter.
Obviousness
Claim 1
Appellant argues the Examiner erred in finding Richardson teaches
determining, by a creative manager system including a storage
device and a plurality of modules implemented on one or more
computers, whether a set of creatives for a campaign is of a
sufficient size to construct a predictive model [and] . . . in
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response to determining a sufficient set of creatives, . . .
constructing, by the creative manager system, the predictive
model,
as recited in claim 1 and similarly recited in claims 9 and 15. Appeal
Br. 23–26. Specifically, Appellant argues “Richardson[’s] disclosures lack
the specific detail of a size determination for a set of creatives for a
campaign.” Appeal Br. 24. Further, Appellant argues “to the extent that
Richardson describes developing an advertisement performance prediction
model using different sets of advertisements, the system of Richardson
assumes a sufficient dataset of advertisements to generate the advertisement
performance prediction model and fails to account for situations where such
data is unavailable or insufficient.” Id. at 25.
We are not persuaded. The Examiner finds (Final Act. 5–6; Ans. 9),
and we agree, that Richardson’s description of an “advertisement
performance prediction model [that] is developed using advertisement
features extracted from a sample set” (Richardson ¶ 14) teaches
determining, by a creative manager system including a storage
device and a plurality of modules implemented on one or more
computers, whether a set of creatives for a campaign is of a
sufficient size to construct a predictive model [and] . . . in
response to determining a sufficient set of creatives, determining
an optimal subset of creatives . . . constructing, by the creative
manager system, the predictive model.
Richardson explains that its sample set is provided by a “sample set
identifying component . . . configured to identify a predetermined number
(e.g., one million) or portion (e.g., 25%) of existing advertisements having
observed advertisement information item(s) and/or advertisement
performance measures.” Richardson ¶ 32.
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Appellant’s argument that Richardson does not “detail . . . a size
determination for a set of creatives for a campaign” (Appeal Br. 24) does not
address Richardson’s sample set, used to create Richardson’s performance
prediction model. That is, Richardson’s sample set teaches “a set of
creatives . . . of a sufficient size to construct a predictive model6” as recited
in claim 1, when the sample set identifies one million or 25% of existing
advertisements. Appeal Br. 32. Further, Appellant’s argument that
Richardson “fails to account for situations where such data is unavailable or
insufficient” (Appeal Br. 25) is not commensurate with the scope of the
claim because the claim does not recite situations in which data is
unavailable or insufficient.
Accordingly, we are not persuaded the Examiner erred in finding
Richardson teaches
determining, by creative manager system including a storage
device and a plurality of modules implemented on one or more
computers, whether a set of creatives for a campaign is of a
sufficient size to construct a predictive model [and] in response
to determining a sufficient set of creatives . . . constructing, by
the creative manager system, the predictive model,
as recited in claim 1 and similarly recited in claims 9 and 15.
Further, Appellant contends the Examiner erred in finding Chang
teaches “determining, by the creative manager system, the optimal subset of

6 We also note that the claim fails to clearly define the metes and bounds of
“a set of creatives . . . of sufficient size to construct a predictive model.”
According to the claim language, any predictive model that is constructed
would necessarily include “a set of creatives . . . of a sufficient size,” and,
so, it is unclear how any predictive model would not necessarily include “a
set of creatives . . . of a sufficient size.” Appeal Br. 32.
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creatives based on the collected performance data and the predicted
performance data, the optimal subset of creatives including one or more
creatives from each of the initial subset and the additional creatives,” where
the “additional creatives [are] from the set of creatives that are not in the
initial subset,” as recited in claim 1 and similarly recited in claims 9 and 15.
Appeal Br. 26–27; Reply Br. 11–13. Specifically, Appellant argues Chang
fail[s] to teach any requirement on the source of the creatives
used in a campaign, let alone that a set of optimal creatives
determined with a predictive model includes both a creative that
was used to generate the predict model and a creative that was
not used to generate the predictive model.
Appeal Br. 27; Reply Br. 11.
We are not persuaded. The Examiner finds (Final Act. 5–6), and we
agree, that Richardson’s “sample set,” which is used to develop an
advertisement performance prediction model (Richardson ¶ 14), teaches “an
initial subset from the set of creatives.” The Examiner further finds (Final
Act. 5–6), and we agree, that Richardson’s use of that performance
prediction model to “estimate expected advertisement performance . . . from
an advertisement that was not included in the sample set” (Richardson ¶ 14)
teaches “additional creatives from the set of creatives that are not in the
initial subset,” as claimed.
Appellant’s argument that Chang fails to teach “the source of the
creatives used in a campaign, let alone that a set of optimal creatives
determined with a predictive model includes both a creative that was used to
generate the predict model and a creative that was not used to generate the
predictive model” (Appeal Br. 27) does not address the Examiner’s reliance
on Richardson to teach those features. Accordingly, we are not persuaded
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the Examiner erred in finding the combination of Richardson and Chang
teaches “determining, by the creative manager system, the optimal subset of
creatives based on the collected performance data and the predicted
performance data, the optimal subset of creatives including one or more
creatives from each of the initial subset and the additional creatives,” where
the “additional creatives [are] from the set of creatives that are not in the
initial subset,” as recited in claim 1 and similarly recited in claims 9 and 15.
Still further, Appellant contends the Examiner erred in finding Chang
teaches
updating, by the creative manager system, creative control data
for a creatives server, the creative control data indicating an
active status of the optimal subset of creatives and an inactive
status of the creative in the set of creatives that is not in the
optimal subset of creatives, wherein updating the creative control
data causes the creatives server to remove the creative with the
inactive status from a subsequent transmission of electronic
content and perform the subsequent transmission of electronic
content with the optimal subset of creatives included in the
subsequent transmission,
as recited in claim 1 and similarly recited in claims 9 and 15. Appeal
Br. 27–28. Specifically, Appellant argues Chang “lack[s] any description of
a creative manager system or a creatives server having creative control
data.” Id. at 28.
We are not persuaded. The Examiner finds (Final Act. 5–6), and we
agree, Richardson’s system in which “advertisement[s] may be displayed in
accordance with the advertisement[s’] ranking” teaches “a creative manager
system” which transmits selected advertisements based on “creative control
data” (Richardson ¶¶ 14, 80 (“the advertisement is presented based on the
advertisement ranking determined at block 418.”)). The Examiner further
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finds, and we agree, that Chang teaches “withdraw[ing] creatives that are no
longer relevant or perform poorly and introduc[ing] new creatives” in
advertising campaigns. Chang 1:46–50.
Appellant’s argument addressing Chang alone (Appeal Br. 27–28)
does not address the Examiner’s finding that the combination of Richardson
and Chang teaches the disputed limitation. Even if Chang does not teach a
creative manager system, Richardson’s system, implemented as a computer
server, manages the transmission of selected advertisements based on an
advertisement’s ranking. Richardson ¶¶ 14, 80; see id. Fig. 2. Moreover, in
light of Richardson teaching of a computer server that selects advertisements
to transmit and Chang’s teaching that advertisements can be removed or
added to advertising campaigns, Appellant has not presented persuasive
argument or evidence that it would been “uniquely challenging or difficult
for one of ordinary skill in the art” to use creative control data to include or
remove advertisements from transmission. Leapfrog Enters., Inc. v. Fisher-
Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007). Accordingly, we are not
persuaded the Examiner erred in finding the combination of Richardson and
Chang teaches
updating, by the creative manager system, creative control data
for a creatives server, the creative control data indicating an
active status of the optimal subset of creatives and an inactive
status of the creative in the set of creatives that is not in the
optimal subset of creatives, wherein updating the creative control
data causes the creatives server to remove the creative with the
inactive status from a subsequent transmission of electronic
content and perform the subsequent transmission of electronic
content with the optimal subset of creatives included in the
subsequent transmission,
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as recited in claim 1 and similarly recited in claims 9 and 15. Therefore, we
sustain the Examiner’s obviousness rejection of claims 1, 9, and 15.
Claims 21, 24, and 26
Appellant contends the Examiner erred in finding Richardson teaches
performing simultaneous hypothesis testing using the predicted
performance data to measure confidence levels of predicted
comparison results for each creative of the subset of creatives
and the additional creatives, the predicted comparison results
including a comparison of the collected performance data
retrieved from the storage device and associated with the subset
of creatives to the predicted performance data associated with the
additional creatives [not in the initial subset used to construct the
predictive model],
as recited in claim 21 and similarly recited in claims 24 and 26. Appeal
Br. 29; Reply Br. 13–14. Specifically, Appellant argues Richardson
“teaches comparing predicted performance data (i.e., ‘estimated expected
advertisement performance’) to subsequent actual performance data
generated after the predicted performance data has been estimated with a
model” rather than comparing “predicted performance data to collected
performance data that was used to generate the predictive model.” Appeal
Br. 29; Reply Br. 13.
We disagree with Appellant. The Examiner finds (Final Act. 13), and
we agree, Richardson’s “estimate[d] advertisement performance” used to
“rank the advertisement with respect to a plurality of other advertisements”
(Richardson ¶ 14) teaches “a comparison of the collected performance data
retrieved from the storage device and associated with the subset of creatives
to the predicted performance data associated with the additional creatives.”
In particular, Richardson’s estimated expected advertisement performance is
based on “advertisement features extracted from a sample set,” the sample
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set created from “existing advertisements having observed advertisement
information item(s).” Richardson ¶¶ 14, 32. As such, Richardson’s sample
set teaches “collected performance data.” Further, that sample set is
compared with “an advertisement that was not included in the sample set” in
order to estimate expected advertisement performance for that
advertisement. Id. Richardson then ranks, i.e., performs a comparison of
the performance of the advertisements in the sample set and the
advertisements not in the sample set. Richardson ¶ 81. Accordingly, we are
not persuaded the Examiner erred in finding Richardson teaches
performing simultaneous hypothesis testing using the predicted
performance data to measure confidence levels of predicted
comparison results for each creative of the subset of creatives
and the additional creatives, the predicted comparison results
including a comparison of the collected performance data
retrieved from the storage device and associated with the subset
of creatives to the predicted performance data associated with the
additional creatives [not in the initial subset used to construct the
predictive model],
as recited in claim 21 and similarly recited in claims 24 and 26.
Further, Appellant contends the Examiner erred in finding Chang
teaches
automatically deactivating one or more creatives of the initial
subset and the additional creatives having predicted comparison
results below a predetermined confidence level threshold; and
modifying the initial subset by replacing the deactivated
creatives with replacement creatives of the set of creatives to
form the optimal subset of creatives, the replacement creatives
including creatives having predicted comparison results meeting
the predetermined confidence level threshold,
as recited in claim 21 and similarly recited in claims 24 and 26. Appeal
Br. 30–31; Reply Br. 14–15. Specifically, Appellant argues that the degree
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of confidence described by Chang does not have “any relationship to
comparison results between collected performance data used to generate a
predictive model and predicted performance data generated by the predictive
model.” Appeal Br. 30–31; Reply Br. 15.
We are not persuaded the Examiner erred. As discussed above, we
agree with the Examiner’s finding that Richardson teaches comparing results
from collected performance data used to generate a predictive model with
results from predicted performance data generated by the predictive model.
Final Act. 5–6, 13. Further, we also agree with the Examiner (id. at 14;
Ans. 11–12) that Chang describes “confidence intervals around the relative
impact on advertisement performance,” e.g., a “narrow confidence interval
suggests a high degree of confidence in the estimate and allows for more
aggressive action” and “a low degree of confidence [that] advocates a more
cautious approach to, or delaying of any decision-making” (Chang 3:21–61).
Appellant’s argument does not address the Examiner’s combination of
Richardson and Chang and instead inappropriately attacks Chang
individually. In re Keller, 642 F.2d 413, 426 (CCPA 1981). Appellant
argues Chang does not teach that its confidence level has a “relationship” to
comparison results between collected performance data used to generate a
predictive model and predicted performance data generated by the predictive
model (Appeal Br. 30–31; Reply Br. 15), but the Examiner relies on
Richardson, teaching comparison results between collected performance
data used to generate a predictive model and predicted performance data
generated by the predictive model, in combination with Chang to teach that
feature (see Final Act. 13–14). Accordingly, we are not persuaded the
Examiner erred in finding the combination of Richardson and Chang teaches
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automatically deactivating one or more creatives of the initial
subset and the additional creatives having predicted comparison
results below a predetermined confidence level threshold; and
modifying the initial subset by replacing the deactivated
creatives with replacement creatives of the set of creatives to
form the optimal subset of creatives, the replacement creatives
including creatives having predicted comparison results meeting
the predetermined confidence level threshold,
as recited in claim 21 and similarly recited in claims 24 and 26. Therefore,
we sustain the Examiner’s obviousness rejection of claims 21, 24, and 26.
Claims 2, 4, 5, 7, 8, 10, 13, 14, 16, 19, 20, 22, 23, and 25
Appellant does not argue separate patentability for dependent claims
2, 4, 5, 7, 8, 10, 13, 14, 16, 19, 20, 22, 23, and 25, which depend directly or
indirectly from claims 1, 9, and 15. See Appeal Br. 23–31. Accordingly, for
the reasons set forth above, we sustain the Examiner’s obviousness rejection
of claims 2, 4, 5, 7, 8, 10, 13, 14, 16, 19, 20, 22, 23, and 25.
CONCLUSION
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1, 2, 4, 5, 7–
10, 13–16,
19–26
101 Eligibility 1, 2, 4, 5, 7–
10, 13–16,
19–26

1, 2, 4, 7–
10, 13–16,
19–26
103(a) Richardson, Chang 1, 2, 4, 7–
10, 13–16,
19–26

5 103(a) Richardson,
Chang, Lin
5
Overall
Outcome
1, 2, 4, 5, 7–
10, 13–16,
19–26

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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.
§ 1.136(a)(1)(iv).
AFFIRMED