Adobe Inc.

Patent Trials and Appeals Board

Sep 24, 2020

2020002879 (P.T.A.B. Sep. 24, 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.
15/008,181 01/27/2016 Moumita Sinha P5668-US 4648
108982 7590 09/24/2020
SBMC
116 W. Pacific Avenue
Suite 200
Spokane, WA 99201
EXAMINER
PATEL, DIPEN M
ART UNIT PAPER NUMBER
3688
NOTIFICATION DATE DELIVERY MODE
09/24/2020 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):
docket@sbmc-law.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte MOUMITA SINHA, ABHIMANYU JAIN ASATI,
MIHIR SUDHIR KULKARNI, PANKAJ GUDLANI,
and
ATANU R. SINHA
____________________

Appeal 2020-002879
Application 15/008,1811
Technology Center 3600
____________________

Before JOSEPH L. DIXON, DAVID M. KOHUT, and
JON M. JURGOVAN, Administrative Patent Judges.

JURGOVAN, Administrative Patent Judge.

DECISION ON APPEAL

Appellant seeks review under 35 U.S.C. § 134(a) from a Final
Rejection of claims 1–20, which are all the claims pending in the
application. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.2

1 We use the word “Appellant” to refer to “applicant(s)” as defined in 37
C.F.R. § 1.42. The real party in interest is Adobe Inc. (Appeal Br. 3.)
2 Our Decision refers to the Specification (“Spec.”) filed January 27, 2016,
the Final Office Action (“Final Act.”) mailed May 1, 2019, the Appeal Brief
(“Appeal Br.”) filed October 23, 2019, the Examiner’s Answer (“Ans.”)
mailed January 13, 2020, and the Reply Brief (“Reply Br.”) filed March 6,
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CLAIMED INVENTION
The claims are directed to systems and methods for estimating a
causal impact of a particular item of digital marketing content on a digital
marketing outcome, by comparing impacts on users exposed to digital
marketing content sequences that include a “first sequence . . . of a plurality
of items of digital marketing content. . . . the first sequence includ[ing] the
particular item,” and a “second sequence . . . constructed of the plurality of
items of the digital marketing content by removing the particular item from
the first sequence.” (Spec. ¶¶ 5, 8; Abstract.)
Claims 1, 9, and 14 are independent claims. Claim 1, reproduced
below, is illustrative of the claimed subject matter:
1. In a digital medium environment, a method implemented
by a computing device, the method comprising:
receiving, by the computing device, a user input as
selecting a first item of digital marketing content;
determining, automatically and without user intervention
by the computing device, a resulting causal impact of the first
item on a digital marketing outcome from data describing
provision of the digital marketing content over time, the
determining including:
identifying a first sequence of a plurality of items of
digital marketing content provided to a first set of users
taken from a plurality of users, the first sequence including
the first item and a second item from the plurality of items;
constructing a second sequence of the plurality of
items of the digital marketing content, from the first
sequence, that includes the second item and removes the
first item from the first sequence;
identifying a second set of users from the plurality
of users, the second set of users provided with the second
sequence;

2020.
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locating a subset of users from the first set of users
having a characteristic that matches a subset of users from
the second set of users;
determining a first causal impact of the first item on
the digital marketing outcome for the subset of the users
from the first set;
determining a second causal impact of the first item
on the digital marketing outcome for the subset of the
users from the second set; and
determining whether the resulting causal impact of
the first item of digital marketing content has a negative
causal impact on other items of the plurality of digital
marketing content on achieving the digital marketing
outcome based on the first and second causal impacts; and
outputting, by the computing device, the resulting causal
impact indicating whether the resulting causal impact has the
negative causal impact on the other items of the plurality of
digital marketing content on achieving the digital marketing
outcome for display in a user interface.

(Appeal Br. 39–46 (Claims App.) (emphases added).)

REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Louviere et al. US 6,934,748 B1 August 23, 2005
Kumar et al. US 2007/0094066 A13 April 26, 2007
David Chan et al., Evaluating Online Ad Campaigns in a Pipeline:
Causal Models at Scale, Proceedings of the 16th ACM SIGKDD
International Conference on Knowledge Discovery and Data Mining 7–15
(2010)

3 The Examiner’s rejection refers to “Kumar et al. (Pub. No.: US
2001/0025309)” (see Final Act. 13), however, US 2001/0025309 A1 does
not include Kumar as an inventor. The Examiner’s quotes from “Kumar”
(see Final Act. 16) are actually from US 2007/0094066 A1 (to Kumar et al.),
which was cited by the Examiner in rejections asserted in a First Action
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REJECTIONS
Claims 1–20 stand rejected under 35 U.S.C. § 101 as directed to non-
statutory subject matter. (Final Act. 2–13.)
Claims 1–7 and 9–19 stand rejected under 35 U.S.C. § 103 based on
Louviere and Kumar. (Final Act. 13–20.)4
Claims 8 and 20 stand rejected under 35 U.S.C. § 103 based on
Louviere, Kumar, and Chan. (Final Act. 20–21.)

ANALYSIS
§ 101 Rejection
Patent eligibility is a question of law that is reviewable de novo.
Dealertrack, Inc. v. Huber, 674 F.3d 1315, 1333 (Fed. Cir. 2012).
Accordingly, we review the Examiner’s § 101 determinations concerning
patent eligibility under this standard.
Patentable subject matter is defined by 35 U.S.C. § 101, as follows:
Whoever invents or discovers any new and useful process,
machine, manufacture, or composition of matter, or any new and
useful improvement thereof, may obtain a patent therefor, subject
to the conditions and requirements of this title.
In interpreting this statute, the Supreme Court emphasizes that patent
protection should not preempt “the basic tools of scientific and technological
work.” Gottschalk v. Benson, 409 U.S. 63, 67 (1972) (“Benson”); Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 71 (2012)

Interview Pilot Program Pre-Interview Communication dated April 5, 2018.
4 The Examiner’s rejection incorrectly refers to pre-America Invents Act
(“pre-AIA”) § 103(a) instead of AIA § 103. (See Final Act. 13.) We are
aware of no prejudice to Appellant or the Examiner resulting from this error,
and thus we consider this to be harmless error.
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(“Mayo”); Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 217–18 (2014)
(“Alice”). The rationale is that patents directed to basic building blocks of
technology would not “promote the progress of science” under the U.S.
Constitution, Article I, Section 8, Clause 8, but instead would impede it.
Accordingly, laws of nature, natural phenomena, and abstract ideas, are not
patent-eligible subject matter. Thales Visionix Inc. v. United States, 850
F.3d 1343, 1346 (Fed. Cir. 2017) (citing Alice, 573 U.S. at 216–17).
The Supreme Court set forth a two-part test for subject matter
eligibility in Alice (573 U.S. at 217–19). The first step is to determine
whether the claim is directed to a patent-ineligible concept. Id. (citing
Mayo, 566 U.S. at 76–77). If so, then the eligibility analysis proceeds to the
second step of the Alice/Mayo test in which we “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 (quoting Mayo, 566 U.S. at 72, 79). There is no need
to proceed to the second step, however, if the first step of the Alice/Mayo
test yields a determination that the claim is directed to patent eligible subject
matter.
The Patent Office has recently revised its guidance for how to apply
the Alice/Mayo test in the 2019 Revised Patent Subject Matter Eligibility
Guidance, 84 Fed. Reg. 50 (January 7, 2019) (the “Revised Guidance”).
Under the Revised Guidance, we first look to whether the claim recites:
(1) any judicial exceptions, including certain groupings of
abstract ideas (i.e., mathematical concepts, mental processes, or
certain methods of organizing human activity such as a
fundamental economic practice or managing personal behavior
or relationships or interactions between people); and
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(2) additional elements that integrate the judicial exception into
a practical application (see Manual of Patent Examining
Procedure (“MPEP”) § 2106.05(a)–(c), (e)–(h)). 84 Fed. Reg. at
51–52, 55.
A claim that integrates a judicial exception into a practical application
applies, relies on, or uses the judicial exception in a manner that imposes a
meaningful limit on the judicial exception, such that the claim is more than a
drafting effort designed to monopolize the judicial exception. Revised
Guidance, 84 Fed. Reg. at 54. When the judicial exception is so integrated,
then the claim is not directed to a judicial exception and is patent-eligible
under § 101. Revised Guidance, 84 Fed. Reg. at 54. Only if a claim (1)
recites a judicial exception and (2) does not integrate that exception into a
practical application, do we then evaluate whether the claim provides an
inventive concept. Revised Guidance, 84 Fed. Reg. at 56; Alice, 573 U.S. at
217–19, 221. Evaluation of the inventive concept involves consideration of
whether an additional element or combination of elements (1) adds a specific
limitation or combination of limitations that are not well-understood,
routine, conventional activity in the field, which is indicative that an
inventive concept may be present; or (2) simply appends well-understood,
routine, conventional activities previously known to the industry, specified
at a high level of generality, to the judicial exception, which is indicative
that an inventive concept may not be present.
Alice/Mayo—Step 1 (Abstract Idea)
Step 2A–Prongs 1 and 2 identified in the Revised Guidance

Step 2A—Prong 1 (Does the Claim Recite a Judicial Exception?)
Turning to the first step of the Alice inquiry (Step 2A, Prong 1 of the
Revised Guidance), the Examiner finds independent claim 1 (and similarly,
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independent claims 9 and 14) is directed to an abstract idea because the
claim
[is] directed to the abstract idea of estimating resulting causal
impact of a particular item selected by a user as part of a
marketing campaign based on presenting the particular item in a
first sequence and not presenting it in a second sequence to sets
of users,

which is a process performable in the human mind or with pen and paper,
and also a method of organizing human activity through “commercial
interactions (including advertising, marketing or sales activities or
behaviors).” (Final Act. 2–4, 6; Ans. 6.) Particularly, the Examiner finds
the claims are directed to a method of organizing human activity because
“the claims pertain to studying the effects of a marketing item on other
marketing items by presenting it to sets of users.” (Ans. 6; Final Act. 6
(citing Intellectual Ventures I LLC v. Capital One Bank (USA), 792 F.3d
1363 (Fed. Cir. 2015)).)
Appellant contends the Examiner erred in rejecting claim 1 under
35 U.S.C. § 101 as directed to non-statutory subject matter because the claim
is not directed to an abstract idea. (Appeal Br. 16–28.) Particularly,
Appellant contends claim 1 is not directed to a mental process because
it is not practical for the human mind to identify a sequence of a
plurality of items of digital marketing content that includes a
selected item, and additionally identify that the same sequence
has been provided to a certain set of users especially when
confronted with the vast amounts of data involved in identifying
these sequences.

(Appeal Br. 19–20; see also Reply Br. 3–4.) Appellant also argues claim 1
is not directed to a method of organizing human activity because the claimed
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identifying a first sequence and the claimed determining whether the
resulting causal impact of the first item has a negative causal impact on other
items “are not commercial or legal interactions.” (Appeal Br. 21–22.)
Appellant submits, “although the claims do recite digital marketing content,
the claims are not directed to digital marketing content but rather
determining the potential negative causal impact of an item and other items
in the sequence.” (Reply Br. 4.)
Appellant’s arguments do not persuade us that the Examiner erred in
finding claim 1 recites an abstract idea and, therefore, we concur with the
Examiner’s conclusion that the claim recites an abstract idea of estimating a
resulting causal impact or effectiveness of advertising items used in a
marketing campaign, which is a process performable in the human mind or
with pen and paper. (Final Act. 2–3; Ans. 4–6.)
In particular, for Step 2A, Prong 1, of the Revised Guidance, we agree
with the Examiner and find that the emphasized portions of claim 1,
reproduced above, recite elements that fall within the abstract idea grouping
of mental processes. (See Final Act. 3; Ans. 4–5.) Specifically, we agree
with the Examiner that claim 1 sets forth a process performable in the human
mind or with pen and paper, the process collecting/gathering information
(“receiving” step), analyzing the information (claimed “determining . . . a
resulting causal impact” by “identifying a first sequence,” “constructing a
second sequence,” “identifying a second set of users,” “locating a subset of
users,” “determining a first causal impact,” “determining a second causal
impact,” and “determining whether the resulting causal impact of the first
item of digital marketing content has a negative causal impact on other
items”), and providing results of the collection and analysis (“outputting . . .
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the resulting causal impact”). (See Ans. 4–5.) These steps of claim 1 do not
require “vast amounts of data involved in identifying the[] sequences” as
Appellant argues. (See Appeal Br. 20 (emphasis added); Ans. 4.) Under its
broadest reasonable interpretation, claim 1 requires identifying a first
sequence of at least three digital marketing items and a second sequence of
at least two of the at least three items, identifying subsets of at least two
users from a first set of users and from a second set of users, determining
impacts of a marketing item for the at least two users in the two subsets, and
determining a resulting causal impact from the two impacts (e.g., by
comparing the impacts). Although claim 1 recites a “computing device”
performing the claimed steps, the underlying operations recited in the claim
are acts that could be performed mentally and by pen and paper, without the
use of a computer or any other machine. (Ans. 4–5.)
Our reviewing court has concluded that mental processes include
similar concepts of collecting, analyzing, and outputting, data. See
Intellectual Ventures I LLC v. Capital One Fin. Corp., 850 F.3d 1332, 1340
(Fed. Cir. 2017) (the Federal Circuit held “the concept of . . . collecting data,
. . . recognizing certain data within the collected data set, and . . . storing that
recognized data in a memory” ineligible); Electric Power Grp., LLC v.
Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016) (merely selecting
information, by content or source, for collection, analysis, and display does
nothing significant to differentiate a process from ordinary mental
processes). Thus, we agree with the Examiner that claim 1 recites an
abstract idea of a mental process.
We also agree with the Examiner that claim 1 recites elements that fall
within the abstract idea grouping of certain methods of organizing human
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activity. (See Final Act. 3, 6; Ans. 6.) Specifically, we agree with the
Examiner that claim 1 sets forth the human activity of “studying the effects
of a marketing item on other marketing items by presenting it to sets of
users” in order to tailor marketing content to users, which is a form of
“commercial interactions (including advertising, marketing or sales activities
or behaviors)” discussed in the Revised Guidance. (Ans. 6; Final Act. 6.)
For example, identifying and constructing sequences of digital marketing
items and determining whether a resulting causal impact of a digital
marketing item has a negative causal impact on other items (as recited in
claim 1) recite advertising research activities that identify ads for effective
advertising campaigns. See Affinity Labs of Texas, LLC v. Amazon.com, 838
F.3d 1266, 1269, 1271 (Fed. Cir. 2016) (“‘customizing information based on
. . . information known about the user’ is an abstract idea. . . . tailoring of
content based on information about the user . . . is an abstract idea that is as
old as providing different newspaper inserts for different neighborhoods”
(citing Intellectual Ventures I LLC, 792 F.3d at 1363, 1369)). These steps of
claim 1 relate to “[c]ertain methods of organizing human activity” including,
inter alia, “commercial or legal interactions.” See Revised Guidance, 84
Fed. Reg. at 52. Thus, we agree with the Examiner that claim 1 recites an
abstract idea of a method of organizing human activity.
Having determined that claim 1 recites an abstract idea (a mental
process, and a method of organizing human activity) identified in the
Guidance, we turn to Step 2A, Prong Two, of the Guidance to determine
whether the abstract idea is integrated into a practical application. See
Revised Guidance, 84 Fed. Reg. at 54–55.
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Step 2A—Prong 2 (Integration into Practical Application)
Under Revised Step 2A, Prong Two of the Revised Guidance, we
recognize that claim 1 includes additional elements such as a digital medium
environment, a computing device, and a user interface. Furthermore, our
review of Appellant’s Specification finds that the terms “digital medium
environment,” “computing device,” and “user interface” are nominal.
Appellant’s Specification indicates that the “digital medium environment,”
“computing device,” and “user interface” (see Spec. ¶¶ 26–27, 62, 65–67,
71) of claim 1 do not recite specific types of additional elements or their
operations. As a result, these additional elements are not enough to
distinguish the steps of claim 1 from describing a mental process and a
method of organizing human activity.
Appellant argues claim 1 is not directed to a mental process because
“outputting a resulting causal impact ‘for display in a user interface’ is
virtually impossible to be performed in the human mind, much less
practically performed in the human mind.” (Appeal Br. 20.) Appellant’s
argument is unpersuasive because the claim merely uses the computing
elements (computing device and display/user interface) in an ordinary
manner, and for their ordinary functions, to perform operations (data
manipulation and output) readily performable in the human mind or with pen
and paper. (Ans. 4–5; see Intellectual Ventures I LLC, 792 F.3d at 1370
(“merely adding computer functionality to increase the speed or efficiency
of the process does not confer patent eligibility on an otherwise abstract
idea”); SiRF Tech., Inc. v. Int’l Trade Comm’n, 601 F.3d 1319, 1333 (Fed.
Cir. 2010) (“In order for the addition of a machine to impose a meaningful
limit on the scope of a claim, it must play a significant part in permitting the
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claimed method to be performed, rather than function solely as an obvious
mechanism for permitting a solution to be achieved more quickly, i.e.,
through the utilization of a computer for performing calculations.”).) The
claimed outputting of the resulting causal impact for display in a user
interface is insignificant post-solution activity that does not help integrate
the recited abstract idea into a practical application of the abstract idea. See
Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1241–42 (Fed. Cir. 2016)
(addressing insignificant post-solution activity); OIP Techs., Inc. v.
Amazon.com, Inc., 788 F.3d 1359, 1363–64 (Fed. Cir. 2015) (addressing
insignificant pre-solution activity).
Appellant also argues claim 1 recites additional elements that
integrate a judicial exception into a practical application because the claim is
analogous to the claims in DDR. (Appeal Br. 24–27 (citing DDR Holdings,
LLC v. Hotels.com, L.P., 773 F.3d 1245, 1257 (Fed. Cir. 2014)); Reply Br.
5–7.) In particular, Appellant argues claim 1 addresses “a digitally-rooted
challenge, which . . . involves estimating a causal impact of a particular item
of digital marketing content on a digital marketing outcome,” and provides
“a specific implementation of a solution to the problem of estimating a
causal impact of a particular item of digital marketing content.” (Appeal Br.
25; Reply Br. 7.)
We remain unpersuaded by Appellant’s argument. The Federal
Circuit found DDR’s claims are patent-eligible under § 101 because DDR’s
claims: (1) do not merely recite “the performance of some business practice
known from the pre-Internet world” previously disclosed in Bilski and Alice;
but instead (2) provide a technical solution to a technical problem unique to
the Internet, i.e., a “solution . . . necessarily rooted in computer technology
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in order to overcome a problem specifically arising in the realm of computer
networks.” DDR, 773 F.3d at 1257. Appellant’s determination of a digital
marketing item’s impact does not provide a technical solution to a technical
problem unique to the Internet, i.e., a “solution . . . necessarily rooted in
computer technology in order to overcome a problem specifically arising in
the realm of computer networks.” See id. Appellant’s claim 1 solves a
business problem (identifying ads that may appeal to consumers and
increase sales, and identifying ads that may have the opposite effect) by
providing a business solution and a financial benefit to a merchant or
company (providing/identifying ads for effective advertising campaigns).
(See Spec. ¶¶ 1, 18, 22; Ans. 10–11.) Although claim 1 evaluates digital
marketing items, the claim does not demonstrate a use of computing
elements that in combination perform functions that are not merely generic,
as the claims in DDR. See DDR Holdings, 773 F.3d at 1258. Appellant’s
claim 1 merely recites generic automation of operations performable in the
human mind or with pen and paper (e.g., operations that evaluate
consumers’ response to ads, such as ad view counts, ad clicks, and purchases
made after viewing ads). (See Spec. ¶¶ 4, 24; Ans. 10–11.) See
CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1375 (Fed. Cir.
2011) (“That purely mental processes can be unpatentable, even when
performed by a computer, was precisely the holding of the Supreme Court in
Gottschalk v. Benson.”); OIP Techs., 788 F.3d at 1363 (“[R]elying on a
computer to perform routine tasks more quickly or more accurately is
insufficient to render a claim patent eligible.”).
Accordingly, under Step 2A, Prong 2, we conclude that claim 1, and
similarly worded independent claims 9 and 14 argued for the same reasons
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(see Appeal Br. 28–30, Reply Br. 7) do not recite “additional elements that
integrate the judicial exception into a practical application,” and are directed
to an abstract idea in the form of a mental process and a method of
organizing human activity. Revised Guidance, 84 Fed. Reg. at 52, 54.
Therefore, we proceed to Step 2B, The Inventive Concept.

Alice/Mayo—Step 2 (Inventive Concept)
Step 2B identified in the Revised Guidance

Step 2B of the Alice two-step framework requires us to determine
whether any element, or combination of elements, in the claim is sufficient
to ensure that the claim amounts to significantly more than the judicial
exception. Alice, 573 U.S. at 221; see also Revised Guidance, 84 Fed. Reg.
at 56. As discussed above, claim 1 includes additional elements such as a
“digital medium environment,” a “computing device,” and a “user
interface.” We agree with the Examiner’s findings that the additional
elements of claim 1, when considered individually and in an ordered
combination, correspond to nothing more than generic and well-known
components used to implement the abstract ideas. (See Final Act. 7–13.) In
other words, we find that the additional elements, as claimed, are well-
understood, routine, and conventional and “behave exactly as expected
according to their ordinary use.” (See In re TLI Commc’ns LLC Patent
Litig., 823 F.3d 607, 615 (Fed. Cir. 2016); Final Act. 9–10.) Thus,
implementing the abstract idea with these generic and well-known
components “fail[s] to transform that abstract idea into a patent-eligible
invention.” Alice, 573 U.S. at 221. Therefore, we agree with the Examiner
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that claim 1 does not provide significantly more than the abstract ideas
themselves.
Therefore, because claim 1 is directed to the abstract ideas of a mental
process and a method of organizing human activity, and does not provide
significantly more than the abstract ideas themselves, we agree with the
Examiner that claim 1 is ineligible for patenting and affirm the Examiner’s
rejection of claim 1 under 35 U.S.C. § 101, and claims 2–8 argued for their
dependency. (Appeal Br. 30.) We also sustain the Examiner’s § 101
rejection of independent claims 9 and 14 argued for the same reasons as
claim 1, and claims 10–13 and 15–20 argued for their dependency. (Appeal
Br. 30; Reply Br. 7.)

§ 103 Rejections
With respect to independent claim 1, the Examiner finds Louviere’s
combinations of content elements in content (15) that is presented to users to
determine “content combinations or treatments worthy of being used”
and to “remove[] information about unsuccessful content combinations
or treatments,” teach the claimed (i) determining of first and second causal
impacts of a first item on a digital marketing outcome for first and second
user subsets, and (ii) determining whether the resulting causal impact of the
first item of digital marketing content has a negative causal impact on other
digital marketing content items, as claimed. (Final Act. 13–15 (citing
Louviere 5:9–54, 9:2–10:9, 10:54–11:6, 20:60–21:9, 24:47–58, 26:13–27:7);
Ans. 14–16.) The Examiner acknowledges “Louviere expressly does not
disclose sequence, i.e. marketing content items arranged in a sequence. . . .
[but] Kumar teaches sequence, i.e. marketing content items arranged in a
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sequence.” (Ans. 17 (citing Kumar ¶¶ 7, 117, 120, 155, 177, 229–236, 378–
380); see also Final Act. 15–16.) The Examiner reasons:
As one would want to analyze sequential purchase patterns or
behavior associated with products, therefore it would be obvious
to person having ordinary skill in the art (hereinafter PHOSITA)
before the effective filing date of the invention with motivation
to provide appropriate targeted marketing in form
recommendations based on sequence based behavior or purchase
pattern.

(Ans. 17 (citing Kumar ¶¶ 177, 403); see also Final Act. 16.) We do not
agree.
We agree with Appellant that Louviere and Kumar, alone or in
combination, fail to teach or suggest determining whether a resulting causal
impact of a first item of digital marketing content has a negative causal
impact on other items of the plurality of digital marketing content based on
first and second causal impacts determined from (1) a first sequence
including first and second items of digital marketing content and (2) a
second sequence of items constructed by removing the first item from the
first sequence while keeping the second item from the first sequence, as
recited in claim 1. (Appeal Br. 31–32, 35–36; Reply Br. 8–11.)
Appellant’s Specification explains that a sequence of a plurality of
items of digital marketing content is a group of advertisements (e.g., “emails,
advertisements included in webpages, webpages themselves”) provided to
users sequentially/in temporal order. (See Spec. ¶¶ 18, 24, 30, 34, 39, 43.)
For example, a first sequence of a plurality of items of digital marketing
content may include a sequence of promotional emails “A,” “B,” “C,” “T,”
“D,” “E,” and “F,” and a second sequence of the plurality of items of digital
marketing content may include a sequence of promotional emails “A,” “B,”
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“C,” “D,” “E,” and “F,” but does not include email “T” (i.e., a “first item”
has been removed from the first sequence). (See Spec. ¶ 43.) As Appellant
explains, Louviere does not expose users to sequences of digital marketing
content (sequences of ads). (Appeal Br. 31–32, 35.) Instead, Louviere
exposes users to individual “treatments” or “content structures,” where a
“treatment” or “content structure” represents “the particular way in which
the content is formatted.” (See Louviere 5:16–25, 9:4–6, 26:34–60.) For
example, the visual characteristics (“content elements”) of a webpage form a
“treatment” to which one set of users is exposed:
Each separate combination and/or formatting of content 15
constitutes a content structure or treatment. A content structure
can be, for example, a particular implementation of a web page
at a given moment. More specifically, at the given instance of
time, the web page may contain particular text, icons, images,
and/or video located at particular positions on the screen,
particular visual background shading or color, particular borders
for dividing up the screen, particular audio (music or speech),
and the like.

(See Louviere 5:15–25, 9:13–40.)
Thus, Louviere does not expose users to sequences of digital
marketing content (sequences of ads) and does not determine differential
effects of sequences of ads on users (as recited in claim 1). (Appeal Br. 35;
Reply Br. 8–11.) Instead, Louviere presents one ad (one treatment) to one
set of users, and a slightly different ad (e.g., with a different background
color) to another set of users, and determines the effect of each ad on the
exposed users. (See Louviere 26:34–60.)
Kumar does not make up for the above-noted deficiencies of
Louviere, as Kumar does not teach or suggest comparing impacts of
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sequences of items of digital marketing content, either. (Appeal Br. 36–37;
Reply Br. 9, 11–12.) Contrary to the Examiner’s assertion that “Kumar
teaches sequence, i.e. marketing content items arranged in a sequence” (see
Ans. 17 (emphasis added)), Kumar merely studies sequences of purchases
made by customers. (See Kumar ¶¶ 7, 117, 120, 155.) In particular, Kumar
explains that a “retail process may be summarized as Customers buying
products at retailers in successive visits, each visit resulting in the
transaction of a set of one or more products (market basket),” with each
customer’s transactions “represented by the time-stamped sequence of
market baskets” such as
two products [that] may be purchased in the same visit, e.g. milk
and bread, or one product [that] may be purchased three months
after another, e.g. a printer purchased three months after a PC, or
a product [that] might be purchased within six months of another
product, e.g. a surround sound system may be purchased within
six months of a plasma TV.

(Kumar ¶¶ 36, 117, 120, 155.) Kumar then provides discounted “product
bundles” to customers. (See Kumar ¶¶ 7, 324–325 (“buy product A and get
product B half off,” “buy the entire bundle for 5% less,” and “capture the
latent intentions of customers” with “product assortment promotions”).
Thus, Kumar does not manipulate sequences of items of digital
marketing content, and does not compare a sequence of digital marketing
content including a particular advertisement, with a matching sequence that
does not have that particular advertisement. (Appeal Br. 36–37.) In
addition, the Examiner has not provided an adequate reason based on
rational underpinnings to explain why a skilled artisan familiar with Kumar
and Louviere, would have been led to compare sequences of digital
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marketing content items (sequences of ads), as in claim 1. (Id. at 33–34, 37.)
As discussed supra, neither Louviere nor Kumar studies or determines
differential effects of ad sequences on consumers. See In re Chaganti, 554
Fed. Appx. 917, 922 (Fed. Cir. 2014) (“It is not enough to say that . . . to do
so would ‘have been obvious to one of ordinary skill.’ Such circular
reasoning is not sufficient—more is needed to sustain an obviousness
rejection.”). The Examiner also has not shown that the additional teachings
of Chan make up for the above-noted deficiencies of Louviere and Kumar.
Thus, for the reasons set forth above, we do not sustain the
Examiner’s obviousness rejection of independent claim 1, and claims 2–8
dependent therefrom. We also do not sustain the Examiner’s obviousness
rejection of independent claims 9 and 14 (argued for substantially the same
reasons as claim 1 and reciting similar limitations), and claims 10–13 and
15–20 dependent therefrom. (Appeal Br. 37–38.)

CONCLUSION
The Examiner’s rejection of claims 1–20 under 35 U.S.C. § 101 is
AFFIRMED.
The Examiner’s rejection of claims 1–20 under 35 U.S.C. § 103 is
REVERSED.

DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.§ Reference(s)/
Basis
Affirmed Reversed
1–20 101 Eligibility 1–20
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20
Claims
Rejected
35 U.S.C.§ Reference(s)/
Basis
Affirmed Reversed
1–7, 9–19 103 Louviere, Kumar 1–7, 9–19
8, 20 103 Louviere, Kumar,
Chan
8, 20
Overall
Outcome
1–20

Because we have affirmed at least one ground of rejection with
respect to each claim on appeal, the Examiner’s decision is affirmed. See
37 C.F.R. § 41.50(a)(1).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED