Adobe Inc.

Patent Trials and Appeals Board

Jun 29, 2020

13855235 - (D) (P.T.A.B. Jun. 29, 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.
13/855,235 04/02/2013 Jeffrey E. Young 058083-0856702(2884US01) 3787
72058 7590 06/29/2020
Kilpatrick Townsend & Stockton LLP/Adobe
Adobe Systems, Inc. 58083
Mailstop: IP Docketing - 22
1100 Peachtree Street, Suite 2800
Atlanta, GA 30309-4530
EXAMINER
SUMMERS, KIERSTEN V
ART UNIT PAPER NUMBER
3688
NOTIFICATION DATE DELIVERY MODE
06/29/2020 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 JEFFREY E. YOUNG, VICTOR SAAR, and
DAVID NUESCHELER

Appeal 2019-004220
Application 13/855,235
Technology Center 3600
____________

Before RICHARD M. LEBOVITZ, ULRIKE W. JENKS, and
MICHAEL A. VALEK, Administrative Patent Judges.

JENKS, Administrative Patent Judge.

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from Examiner’s
decision to reject claims as directed to patent-ineligible subject matter. We
have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

1 Appellant identifies the real party in interest as Adobe Systems
Incorporated. Appeal Br. 1. We use the word “Appellant” to refer to
“applicant” as defined in 37 C.F.R. § 1.42(a).
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STATEMENT OF THE CASE
Claims 1, 7, 10, 11, 14, 16, 21, 22, 24–27, 29, 30, and 32–37 are on
appeal, and can be found in the Claims Appendix of the Appeal Brief.
Claim 1 is representative of the claims on appeal, and reads as follows:
1. A method for simulating personalized web content based on
combinations of user interactions with an e-commerce service
provided by a website and a user characteristic that is
independent of the website, the method comprising:
[A] requesting and receiving, by a processor of an author
device, simulation content via communication with a server via
a data network; and
[B] executing, by the author device, executable code
included in the received simulation content, wherein executing
the executable code included in the received simulation content
configures the author device to perform operations comprising:
[B1] configuring a display device that is coupled to
the author device to display a user interface comprising
(i) a simulation panel for receiving input
identifying segments and
(ii) a simulated use of the website within a
browser as displayed to an end user,
wherein each segment comprises a respective one
of the combinations of user interactions, wherein
the user interactions with the e-commerce service
comprises
(i) a first set of interactions selecting a first
combination of online content items to be
included in a first electronic transaction with
the e-commerce service and
(ii) a second set of interactions selecting a
second combination of online content items
to be included in a second electronic
transaction with the e-commerce service,
[B2] receiving, via the simulation panel and during
the simulated use of the website, the input providing a
first test input for identifying a first segment and a
second test input for identifying a second segment,
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wherein the first segment corresponds to the first set of
interactions and a first user characteristic independent of
the website, wherein the second segment corresponds to
the second set of interactions and a second user
characteristic independent of the website,
[B3] selecting, from the received simulation
content, a first personalized content portion based on
receiving the first test input and a second personalized
content portion, different from the first personalized
content portion, based on receiving the second test input,
[B4] updating the user interface to display, during
a first time period in which the simulation panel has
received the first test input, a web page of the website
with the first personalized content portion included in the
web page, and
[B5] updating the user interface to replace, within
the web page and during a second time period in which
the simulation panel has received the second test input,
the first personalized content portion with the second
personalized content portion.

Appeal Br. 29–30 (Claims Appendix)(formatting and numbering in square
bracketing added). In short, the claim is directed to requesting and receiving
executable code for running simulations of website content on an author
device, the simulation allows the author to evaluate the look of the website
after receiving test input information combined with a user characteristic.
The other independent claims, claims 10 and 16, recite a system and a non-
transitory computer readable medium for implementing the method.
Appellant requests review of Examiner’s rejection of claims 1, 7, 10,
11, 14, 16, 21, 22, 24–27, 29, 30, and 32–37 under 25 U.S.C. § 101, as being
directed to patent-ineligible subject matter.
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ANALYSIS
Examiner finds that claim 1 is directed to a method that “recite[s]
functions of collecting information (in that it is merely receiving
constraints), organizing data (in that it is merely selecting what to provide
based on the received constraints), and displaying information (in that it is
merely displaying information that is selected based on the constraints).”
Ans. 5–6. Examiner finds that “[s]imulating or previewing results based on
constraints or inputs is a commercial or legal interaction (including
agreements in the form of contracts; legal obligations; advertising,
marketing or sales activities or behaviors; business relations) which are
certain methods of organizing human activity.” Id. at 15. Organizing human
activity are in the grouping of abstract ideas. Id. at 8; see Guidance, 84 Fed.
Reg. 50−57 (Jan. 7, 2019).
Appellant contends that the claims are not directed to an abstract idea
“because it recites a user interface having a specific structure . . . that is
addressed to and resolves a specifically identified problem in the prior state
of the art.” Appeal Br. 6–7 (citing Data Engine Technologies LLC v. Google
LLC, 906 F.3d 999, 1009 (Fed. Cir. 2018)). In other words, Appellant urges,
the claims are directed to a technical improvement as follows:
The structure of the interface is paired with functionality
for simulating the operation of a website. For instance, the
claimed interface further allows for modifying, “via the
simulation panel and during the simulated use of the website,”
different “test input[s]” for identifying a “segment [that]
corresponds to [a] set of interactions and a . . . user
characteristic independent of the website.” The claimed
invention “updat[es] the user interface to replace, within the
web page and during a . . . time period in which the simulation
panel has received [a particular] test input, [a] first personalized
content portion [selected based on a first test input] with [a]
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second personalized content portion [selected based on a second
test input].”
Id. at 9 (bracketing in original). Appellant contends that the claim provides a
more intuitive authoring tool and is thereby patent-eligible technical
improvement. Id. at 14 (citing Core Wireless Licensing S.A.R.L. v. LG
Elecs., Inc., 880 F.3d 1356 (Fed. Cir. 2018)).
The Supreme Court has established a two-step framework for
“distinguishing patents that claim laws of nature, natural phenomena, and
abstract ideas from those that claim patent-eligible applications of those
concepts.” Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 217 (2014). The
United States Patent and Trademark Office (PTO) issued the 2019 Revised
Patent Subject Matter Eligibility Guidance (“Guidance”), indicating how the
PTO can analyze patent eligibility under the Supreme Court’s two-step
framework and the October 2019 Update to the Revised Guidance
(“Update”), which provides further details regarding how the Patent Office
is to analyze patent-eligibility questions under 35 U.S.C. § 101. Guidance,
84 Fed. Reg. 50−57 (Jan. 7, 2019); Update, 84 Fed. Reg. 55,942 (Oct. 18,
2019). Following the Guidance, under Revised Step 2A, we first look to
whether the claim recites the following:
(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 (see MPEP § 2106.05(a)-(c), (e)-(h)).
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Only if a claim (1) recites a judicial exception and (2) does not
integrate that exception into a practical application, do we then look,
under Step 2B of the Guidance, to whether the claim:
(3) adds specific limitations beyond the judicial exception that
are 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 Guidance.
We select claim 1 as representative of the claimed subject of this
rejection. We agree with and adopt Examiner’s statement of the rejection
and responses to Appellant’s arguments as set forth in the Answer. If we do
not mention specifically separately argued points, we agree with and adopt
Examiner’s positions with respect to these points.
STEP 1:
Claim 1 is “[a] method for simulating personalized web content based
on combinations of user interactions with an e-commerce service provided
by a website and a user characteristic that is independent of the website.”
We therefore conclude that claim 1 encompasses a “process” for carrying
out a website simulation and thus falls into one of the broad categories of
patentable subject matter under section 101. See 35 U.S.C. § 100 (“(b) The
term ‘process’ means process, art, or method, and includes a new use of a
known process, machine, manufacture, composition of matter, or material.”).
Consequently, we proceed to the next steps of the analysis.
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STEP 2A, Prong One:
Under the Guidance, in determining what concept a claim is “directed
to” in step one of the Supreme Court’s two-step framework, we first look to
whether the claim recites any judicial exceptions, such as managing
relationships or interaction between people or business relations, i.e.,
methods of organizing human activity, mental processes, and/or
mathematical concepts. Guidance, 84 Fed. Reg. at 52, 54 (Step 2A, Prong
One).
Claim 1 recites “[a] method for simulating personalized web content
based on combinations of user interactions with an e-commerce service
provided by a website and a user characteristic that is independent of the
website.” Appeal Br. 29 (Claims Appendix). The process includes
“requesting and receiving” executable code over a network, “configuring a
display device” to contain a “simulation panel” and a panel containing a
“simulated use of a website,” the process also includes providing simulated
user interactions and “updating the user interface” based on the input
received. The simulated user interactions include entering test input and
combining that information with user characteristics to retrieve simulation
content.
Thus, when read in context with Appellant’s Specification the user
input determines the personalized promotional content that would be
displayed to an end user. Therefore, Appellant’s claim recites a simulated
process of a commercial interaction between a user and a vendor. The
Guidance and the cases cited there consider commercial interactions as a
method of organizing human activity, and ultimately an abstract idea. See
Guidance, 84 Fed. Reg. at 52 (abstract ideas include “(b) Certain methods of
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organizing human activity—fundamental economic principles or practices
(including hedging, insurance, mitigating risk); commercial . . . interactions
(including agreements in the form of contracts; legal obligations;
advertising, marketing or sales activities or behaviors; business relations”)
(emphasis added)); see Ans. 15.
Appellant contends that “Examiner erred by finding that the claims
are directed to an abstract idea merely because they include some feature
that may have a non-digital analogue.” Appeal Br. 11.
We are not persuaded. Under Step 2A, Prong One the issue that must
be addressed is whether the claims recite a judicial exception, here an
abstract idea. Appellant argues that the claims provide a practical
application, which we address later in our analysis, but does not adequately
explain why the steps themselves in the claim do not recite the simulation of
a commercial interaction, which is a type of method of organizing human
activity. See Appeal Br. 5–7.
Accordingly, we conclude the claim recites a method of organizing
human activity identified in the Guidance, and thus an abstract idea. We,
therefore, agree with Examiner that Appellant’s claim 1 recites a judicial
exception in the form of abstract idea.
STEP 2A, Prong Two:
Having made the determination that claim 1 recites an abstract idea,
under the Guidance, we next examine whether there are additional elements
beyond the abstract idea that integrate the judicial exception into a practical
application. Under the Guidance, this is referred to as the “Prong Two”
inquiry under “Step 2A.” Guidance, 84 Fed. Reg. at 54–55. Under the Prong
Two analysis, we look to whether the claim as a whole “appl[ies], rel[ies]
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on, or use[s] the judicial exception in a manner that imposes a meaningful
limit on the judicial exception.” Id.
In making a determination under Step 2A, Prong Two we look to see
if the claims recite additional elements such as improvements to computer
functioning or another technological field, applying the judicial exception by
use of particular machine, transformational reduction of a particular article
to different state or thing, or using 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; Guidance, 84
Fed. Reg. at 54–55.
Claim 1 requires a generic “processor,” “executable code,” and “a
display device” that perform normal computer functionality, i.e., receive test
information, process information, and display information to be used as tools
to perform the abstract idea. One of the “examples in which a judicial
exception has not been integrated into a practical application” is when “[a]n
additional element . . . merely includes instructions to implement an abstract
idea on a computer, or merely uses a computer as a tool to perform an
abstract idea.” Guidance, 84 Fed. Reg. at 55. Moreover, that the program
instructions cause the computer processor to update the display after
receiving test input is a data gathering activity. See MPEP § 2106.05(g):
An example of post-solution activity is an element that is not
integrated into the claim as a whole, e.g., a printer that is used
to output a report of fraudulent transactions, which is recited in
a claim to a computer programmed to analyze and manipulate
information about credit card transactions in order to detect
whether the transactions were fraudulent.
Similarly, a program that instructs the display to update the simulated
website with personalized content based on a test input and user
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characteristic is similarly insignificant post-solution activity. See,
e.g., Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1241–42 (Fed. Cir.
2016) (holding that printing or downloading generated menus constituted
insignificant extra-solution activity).
The present claim recites a user interface containing a “simulation
panel” that can receive input and another panel that displays a simulated
website within a browser. In other words, read in context, the claim recites
one display showing multiple windows, but does not specify any particular
rules or features for doing so. Rather, the claims merely recite “the graphical
user interfaces to collect, organize and display data to perform the idea of
simulating or previewing results based on constraints or inputs,” but do not
provide specific rules as to how these steps are accomplished. Ans. 7. In
other words, the present claims lack an identified structural feature, such as
the notebook tabs2 identified in Data Engine, to solve a problem in prior art
interfaces. See Ans. 13 (the claim was “found eligible [because] it solved a
known technological problem in that ‘Tab Patents[’] solved this known
technological problem in computers in a particular way—by providing a
highly intuitive, user-friendly interface with familiar notebook tabs for
navigating the three-dimensional worksheet environment.”). Instead,
Examiner finds that the present claims resemble those claims in Data Engine
that were found patent ineligible because they were more general and did not
contain sufficient structural detail regarding the interface.

2 The evidence in Data Engine included articles and industry praise that
touted the advantages of the notebook tabs for navigation through three-
dimensional spreadsheets. See Data Engine, 906 F.3d at 1004.
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Appellant disputes Examiner’s finding, contending instead that the
present claims “are directed to the same type of practical application as the
patent-eligible claims of Data Engine.” Appeal Br. 6–7; Reply Br. 1.
Appellant contends that “the claimed invention performs various operations
for reducing the complexity of simulating a website’s behavior, as compared
to prior-art techniques.” Appeal Br. 9 (citing Spec. ¶¶ 14–16).
We are not persuaded because the claim recites the steps in functional
terms, does not recite structural features, and does not identify the problem
that is solved. We agree with Examiner that unlike the specification in Data
Engine, the present Specification “does not discuss a specific solution to an
existing technological problem” because the Specification does not identify
a particular problem in need of solving. Ans. 5. In Data Engine our
reviewing court determined that “the claim recites a specific structure (i.e.,
notebook tabs) within a particular spreadsheet display that performs a
specific function (i.e., navigating within a three-dimensional spreadsheet).”
Data Engine, 906 F.3d at 1010–11.
According to the Specification,
an author may manipulate a simulation panel rendered on a
display of the author device to provide user characteristics (e.g.,
specify by entering a value of 10 that there are 10 items in a
shopping cart) from which to deliver the personalized
promotional content that would be surfaced to an end user that
exhibits those user characteristics.
Spec. ¶ 15. The Specification, however, also suggests that the same
information, although more time consuming, may be obtained by
impersonating users and performing end-user interactions. See Spec. ¶ 14.
Here, neither the claims nor the Specification provides sufficient structural
information with respect to the “simulation panel” or specific rules on how it
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is implemented. Because the only description of the “simulation panel”
provided in the Specification is functional in nature and does not explain
how that panel improves the computer functionality as compared to any
other graphical interface for providing both inputs and simulated web pages,
and the claim steps are also recited in such functional terms, we find the
recited steps do not integrate the recited abstract idea into a practical
application. See Data Engine, 906 F.3d at 1010 (citing Affinity Labs of Tex.,
LLC v. DIRECTV, LLC, 838 F.3d 1253, 1258 (Fed. Cir. 2016)).
Examiner finds that the “technical improvement[s]” relied upon by
Appellant “appears to be mere opinion of Appellant [and do] not [find]
support by evidence or Appellant’s specification as in the cited court
decisions.” Ans. 4. Examiner finds that the Specification “does not discuss
improvements on conventional user interfaces.” Ans. 6. We agree with
Examiner that unlike the record in Data Engine, the present Specification
does not discuss a specific solution to an existing technological problem nor
does the Specification identify the technological problem. Accordingly, we
agree with Examiner that there is insufficient support for the position that
the claims provide a solution for an existing technological problem.
Furthermore, Examiner finds that the ability of a user to “enter a value of 10
to simulate the selection of ten content items rather than having to add each
of the ten items separately which ‘avoids the time-consuming simulations of
the prior art’” are limitations that are not required by claim 1. Ans. 8.
Appellant contends that the claim is “patent eligible at least because it
recites a user interface having a specific structure . . . [and] that is addressed
to and resolves a specifically identified problem in the prior state of the art.”
Appeal Br. 6–7 (citing Data Engine, 906 F.3d at 1009); see Reply Br. 1
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(“the claims are directed to the same type of practical application as the
patent-eligible claims of Data Engine.”). Appellant identifies configuring
the display, receiving test input, and updating the user interface as additional
features. Appellant contends that it is “the combination of at least these
additional features [that] provide an authoring tool, which is more intuitive
and user friendly than prior solutions, in which a user interface is updated
with different personalized web content in accordance with test input
received via a simulation panel.” Reply Br. 3.
We are not persuaded. We look to the Specification to determine if
there is sufficient detail that one of ordinary skill in the art would recognize
the claimed invention as providing an improvement to the technical field,
and it is the claim itself that must reflect the improvement in technology.
Claim 1 elements B1, B2, B4, B5 are directed to the use of the “simulation
panel.” The Specification describes the use of a “simulation panel” but does
not provide sufficient detail with respect to the panel to explain how the
panel provides a solution for the art-recognized problem. The Specification
describes the prior art as requiring the impersonation of a user and
performing end-user interactions. See Spec. ¶ 14. In other words, the
Specification describes a method of obtaining the requisite information by
having an author set up fake accounts with which to test a website
functionality. The claims also do not recite sufficient detail as to how the
simulation is implemented that would prevent it from preempting all ways of
doing so.
A material consideration in assessing patent-eligibility is whether the
claim limitations “prevent preemption of all processes for achiev[ing]” the
stated function in the claim. McRO, Inc. v. Bandai Namco Games Am. Inc.,
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837 F.3d 1299, 1315 (Fed. Cir. 2016). As explained in McRO, the “abstract
idea exception has been applied to prevent patenting of claims that abstractly
cover results where ‘it matters not by what process or machinery the result is
accomplished.’ [O’Reilly v. Morse, 56 U.S. (15 How.) 62, 113,]; see also
Mayo, 132 S.Ct. at 1301.” McRO, 837 F.3d at 1314. Here, Appellant has not
guided us to any rules in the claim, or other limitations specifying a
particular application, that would prevent the abstract idea, itself, from being
preempted. A claim must include more than implementation on generic
components or machinery to qualify as an improvement to an existing
technology. See, e.g., Affinity Labs, 838 F.3d at 1264–65; In re TLI
Commc’ns LLC Patent Litig., 823 F.3d 607, 612–13 (Fed. Cir. 2016).
Accordingly, Appellant’s additional elements recited in claim 1,
considered individually and as an ordered combination, do not improve the
functioning of a computer or other technology, are not applied with any
particular machine (except for generic computer parts), do not effect a
transformation of a particular article to a different state, and are not applied
in any meaningful way beyond generally linking the use of the judicial
exception to a particular technological environment, such that the claim as a
whole is no more than a drafting effort designed to monopolize the
exception. See MPEP §§ 2106.05(a)-(c), (e)-(h).
STEP 2B:
Step 2B requires that we look to whether the claim “adds a specific
limitation beyond the judicial exception that [is] not ‘well-understood,
routine, conventional’ in the field.” See MPEP § 2106.05(d) (9th ed., rev.
08.2017 (Jan. 2018)).
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As the Guidance indicates, unconventional data gathering in
combination with a specifically recited application can render a claim patent
eligible under § 101 despite the fact that the judicial exception is not
considered to be integrated into a practical application. Guidance, 84 Fed.
Reg. at 56 n.39 (citing Exergen Corp. v. Kaz USA, Inc., 725 F. App’x 959,
966 (Fed. Cir. 2018).). A novel and non-obvious claim directed to a purely
abstract idea is, nonetheless, patent-ineligible. See Mayo Collaborative
Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 90 (2012); see also Diamond
v. Diehr, 450 U.S. 175, 188–89 (1981) (“The ‘novelty’ of any element or
steps in a process, or even of the process itself, is of no relevance in
determining whether the subject matter of a claim falls within the § 101
categories of possibly patentable subject matter.”). Thus, although the
second step in the Mayo/Alice framework is termed a search for an
“inventive concept,” the analysis is not an evaluation of novelty or
nonobviousness, but rather, a search for “an element or combination of
elements that is ‘sufficient to ensure that the patent in practice amounts to
significantly more than a patent upon the [ineligible concept] itself.”’ Alice,
573 U.S. at 218 (citation omitted).
Examiner identifies “organizing the information according to
constraints (in that it determines what to provide in response to the
constraints), and displaying information based on the collecting and
organizing” as conventional limitations that use a computer as a tool to
perform the abstract idea of organizing human activity. Ans. 17; see MPEP
2106.05(h). Examiner has cited case law as well as other documents3 to

3 See Final Office Action dated July, 5, 2018 (“Final Act.”) pages 13–14.
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establish that performing these steps in a computer environment is
conventional. See Ans. 20 (“It is noted that all of the cited documents here
are previously of record in this case.”).
Appellant contends that Examiner has not demonstrated with evidence
the well-understood, routine, or conventional nature of the combination of
additional claim elements in the independent claims. Appeal Br. 24.
Appellant contends that Examiner’s rejections rely on what is known rather
than establishing what is conventional. Reply Br. 13.
We are not persuaded by Appellant’s contention that Examiner has
not sufficiently established that running a website simulation on a computer
involves merely well-understood and routine activities. As discussed above,
we do not find that claim 1 recites sufficient structural information with
respect to the “simulation panel” that can distinguish it from any other
computer implemented graphic display. In other words, the lack of structural
detail required for the recited “simulation panel” does not permit a
distinction with the panels and interfaces conventionally used in the art to
perform simulations and display information. Specifically, Examiner
identifies the following components as conventional: a processor of an
author device, a server, instructions running on a computer (e.g., executable
code), a display device, a user interface for communications with the server,
and embedding executable code in a webpage. Final Act. 11; see Ans. 20–
21.
In the Final Action, Examiner identifies certain pertinent evidence of
record with respect to the conventional components of the presently claimed
computer simulation environment. See Final Act. 13−14. Specifically,
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Examiner cites Fairclough4 as evidence that a simulation environment
containing a simulation engine and an image rendering mechanism was
well-understood, routine, and conventional. Fairclough ¶ 72; see Final Act.
13; Ans. 21. The simulation environment in Fairclough can “comprise any
user interface mechanisms such as menu items, forms, toolbars, etc. as
known by ordinarily skilled in the art to provide a user interface to receive
user input with regards to configuration.” Fairclough ¶ 67. Liu likewise
describes that a server computer typically provides a webpage with an on-
screen keypad for data entry. Liu5 ¶ 3; Final Act. 13; Ans. 21. Chan6 also
evidences that methods “for previewing electronic commerce content in a
live electronic commerce environment” were well-understood and routine in
the art. Chan, Abstract. Chan explains that most e-commerce sites test
changes on a separate server but acknowledges that “it may be easier to
preview certain scenarios on a live site, than on a test server, such as
promotions based on user data.” Chan ¶ 7; Final Act. 13. Jain7 similarly
describes “[a]n ad test tool [that] allows rich media developers to test ads in
both a stand-alone environment and within live web pages.” Jain, Abstract;
Final Act. 13. Fisher8 discloses a “system allows a user to run simulations,
utilizing real advertising data, across multiple yield engines to determine
which one is the best to use and (optionally) what parameters for that best
engine produce optimal results.” Fisher ¶ 12; Final Act. 13–14. Galomb9

4 Fairclough, US 2006/0176303 A1, published Aug. 10, 2006.
5 Liu, US 2010/0127987 Al, published May 27, 2010.
6 Chan et al., US 2007/0179892 Al, published Aug. 2, 2007.
7 Jain et al., US 2010/0293014 Al, published Nov. 18, 2020.
8 Fisher, US 2012/0030012 Al, published Feb. 2, 2012.
9 Galomb, US 2001/0039510 Al, published Nov. 8, 2001.
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describes “an advertisement testing method and system that provides a
platform and medium structured for advertisers to directly, objectively,
instantly, and reliably test, evaluate, and optimize the effectiveness of their
advertisements in comparison to competing advertisements.” Galomb ¶ 4;
Final Act. 14. Each of the cited references disclose the use of computers and
graphic displays for communicating information. Based on these disclosures,
we find that Examiner has provided sufficient evidence that the identified
components are well-understood and routine in the art and thereby are also
conventional in this particular art.
We determine that claim 1 contains no additional elements, other than
generic computer elements and routine and conventional concepts such as a
“simulation panel,” beyond the abstract idea itself. Using generic computer
components to perform abstract ideas does not provide the necessary
inventive concept. See Alice, 573 U.S. at 223 (“[T]he mere recitation of a
generic computer cannot transform a patent-ineligible abstract idea into a
patent-eligible invention.
We conclude that claim 1 is directed to no more than the judicial
exceptions to Section 101 and does not recite the “significantly more”
requisite to transform the claim into a patent-eligible application. We
consequently affirm Examiner’s rejection of claim 1 on this ground, and
claims 7, 10, 11, 14, 16, 22, 24, 25, 29, 30, 32, and 33 were not separately
argues and fall with claim 1.
Claims 21, 26, and 27
Appellant contends that “Examiner failed to provide evidence
[]sufficient to establish that the additional features of these dependent claims
are well-understood, routine or conventional under Berkheimer.” Appeal Br.
Appeal 2019-004220
Application 13/855,235
19
26. In other words, Appellant contends that embedding executable code in a
webpage is unconventional.
We are not persuaded by Appellant’s contention that embedding
executable code in a webpage transforms the claim into patent-eligible
subject matter. We agree with Examiner that the recitation of “the code
[being] embedded in the simulated page” is but an alternate way of
“receiving or transmitting data over a network, e.g., using the Internet to
gather data to perform the simulating or previewing results based on
constraints or inputs.” Ans. 23; see also Ultramercial, Inc. v. Hulu, LLC,
772 F.3d 709, 717 (2014) (“Any transformation from the use of computers
or the transfer of content between computers is merely what computers do
and does not change the analysis.”). Accordingly, we affirm the rejection of
claims 21, 26, and 27 for the reasons set out by Examiner in the Answer.
Claims 34 and 36
Appellant contends that claims 34 and 36 provide a technical
improvement wherein the “author device implements [a] selection operation
by matching certain interactions to metadata included in simulation content
and retrieving the relevant simulation content from a remote server based on
the matching.” Appeal Br. 11.
According to Examiner “[t]he additional elements of ‘from the server’
and ‘metadata’ . . . merely recite (1) adding the words ‘apply it’ (or an
equivalent) with the judicial exception . . . [and are] not indicative of
integration into a practical application.” Ans. 11–12. We agree with
Examiner that selecting a particular type of data from a particular location is
not sufficient to transform the abstract idea of organizing human activity into
patent-eligible subject matter.
Appeal 2019-004220
Application 13/855,235
20
Claims 35 and 37
Appellant contends that claims 35 and 37 are patent eligible for being
directed to a technical improvement of “the movable simulation panel [that]
allows a user to easily navigate between the simulation controls and the
resultant simulated website use when evaluating how different parameters
will impact the display of the website to an end user.” Appeal Br. 13.
We are not persuaded and agree with Examiner that a display that
allows two windows to be open on the same monitor and that are
independently movable (see claim 1 element B1 and claim 35) are
conventional elements that are not sufficient to confer patent eligibility upon
the claims. Pop up ads are a conventional example of an online advertising
environment where “one interface element overlaid over another interface
element (like a webpage) that can be moved independently of the other
interface element” and are thereby merely linking these limitations to the
“use of the judicial exception to the online advertising environment or field
of use.” Ans. 24–25. Accordingly, we affirm the rejection of claims 35 and
37 for the reasons set out by Examiner in the Answer.

Appeal 2019-004220
Application 13/855,235
21
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1, 7, 10, 11,
14, 16, 21,
22, 24–27,
29, 30, 32–
37
101 Patent eligibility 1, 7, 10, 11,
14, 16, 21,
22, 24–27,
29, 30, 32–
37

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).

AFFIRMED