Bertsch, Fred et al.

Patent Trials and Appeals Board

Aug 20, 2020

13607908 - (D) (P.T.A.B. Aug. 20, 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.
13/607,908 09/10/2012 Fred Bertsch 16113-4435001 5262
26192 7590 08/20/2020
FISH & RICHARDSON P.C.
PO BOX 1022
MINNEAPOLIS, MN 55440-1022
EXAMINER
ANDREI, RADU
ART UNIT PAPER NUMBER
3682
NOTIFICATION DATE DELIVERY MODE
08/20/2020 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):
PATDOCTC@fr.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte FRED BERTSCH, JAMES BESER, and
DAVID MONSEES
____________

Appeal 2019-005139
Application 13/607,908
Technology Center 3600
____________

Before JOHN A. JEFFERY, CARL L. SILVERMAN, and
SCOTT B. HOWARD, Administrative Patent Judges.

JEFFERY, Administrative Patent Judge.

DECISION ON APPEAL
Under 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s
decision to reject claims 1–4, 6, 8, 12–15, 17, and 19–23. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies the real party in interest as Google LLC.
Appeal Br. 1.
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STATEMENT OF THE CASE
Appellant’s invention pertains to advertising on user devices. When a
web page advertisement is displayed on a user device, the advertiser is
charged for the advertisement’s impression. Spec. ¶ 2. But when a web
page’s advertisements are displayed on mobile user devices with limited
viewport sizes, the part of the web page with the advertisement may be
invisible to the user or displayed momentarily as the user pans around the
web page. Spec. ¶ 9. Consequently, an impression may occur despite the
user not seeing the advertisement or being exposed to the advertisement only
fleetingly. Id.
The present invention overcomes these drawbacks by measuring the
user’s engagement or exposure to the content item to ensure that an
advertiser is charged only if the measured user engagement or exposure
satisfies a certain threshold, such as when the content item occupies 50% of
the device’s viewport for at least five seconds. See Spec. ¶ 8.
Claim 1 is illustrative:
1. A method comprising:

receiving, by a user device and from a publisher, an electronic
resource for display within a viewport of a graphical user interface,
the viewport being a display region of the graphical user interface
viewable by a user of the user device;

receiving, by the user device and from a content item provider,
a content item for display that occupies at least a portion of the
electronic resource;

displaying, by the user device and within the viewport of the
graphical user interface, the electronic resource and the content item
that occupies at least the portion of the electronic resource;

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detecting, based on execution of instructions by the user device,
multiple different display states for the content item, wherein the
detecting includes:

detecting, by the user device, a first display state during
which a first portion of the content item is displayed in a first
portion of the electronic resource that is displayed in the
viewport, including determining, by the user device and during
presentation of the electronic resource at the user device, first
dimensions of the first portion of the content item that is
displayed within the viewport while the first portion of the
electronic resource is displayed;

detecting, by the user device, a second display state
during which a second portion of the content item is displayed
in a second portion of the electronic resource that is displayed
in the viewport, including determining, by the user device and
during presentation of the electronic resource at the user device,
second dimensions of the second portion of the content item
that is displayed within the viewport while the second portion
of the electronic resource is displayed, wherein the first portion
of the content item differs from the second portion of the
content item; and

determining, by the user device and for the first display state a
first user exposure level based on a mathematical product of (i) a first
total area of the first portion of the content item displayed in the
viewport during the first display state according to the first
dimensions and (ii) a first duration of the first display state;

determining, by the user device and for the second display state,
a second user exposure level based on a mathematical product of (i) a
second total area of the second portion of the content item displayed
in the viewport during the second display state according to the
second dimensions and (ii) a second duration of the second display
state; and

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calculating, by the user device, an aggregation of user exposure
based on the first user exposure level and the second user exposure
level; and

transmitting, by the user device and to a remote server system,
the calculated aggregation of user exposure level.

THE REJECTIONS
The Examiner rejected claims 1–4, 6, 8, 12–15, 17, and 19–23 under
35 U.S.C. § 101 as ineligible. Final Act. 2–7.2
The Examiner rejected claims 1–4, 6, 8, 12–15, 17, and 19–23 under
35 U.S.C. § 103 as unpatentable over Itzhak (US 2011/0082755 Al;
published Apr. 7, 2011), Qian (US 2014/0028661 Al; published Jan. 30,
2014), Yamaji (US 2011/0242274 Al; published Oct. 6, 2011), and Holm
(US 5,585,604; issued Dec. 17, 1996). Final Act. 7–16.

THE INELIGIBILITY REJECTION
The Examiner determines that the claimed invention is directed to an
abstract idea conceptually similar to abstract ideas that merely collect and
analyze information, and display results of that collection and analysis—
processes that can be done mentally but for the recited computer
components. See Final Act. 2–3; Ans. 3–6. According to the Examiner, the
additional recited computer elements perform generic computer functions

2 Throughout this opinion, we refer to (1) the Final Rejection mailed
December 21, 2018 (“Final Act.”); (2) the Appeal Brief filed May 1, 2019
(“Appeal Br.”); (3) the Examiner’s Answer mailed May 28, 2019 (“Ans.”);
and (4) the Reply Brief filed June 24, 2019 (“Reply Br.”).
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that do not add significantly more to the abstract idea. Final Act. 3–4; Ans.
5–6.
Appellant argues that the claims are eligible because, among other
things, they solve a technical problem, namely determining whether content
is visible at all or for a threshold time period by (1) measuring user
engagement to the content, and (2) setting a minimum exposure or
engagement level for determining whether a view is considered a view. See
Appeal Br. 6–9; Reply Br. 1–3. According to Appellant, the claimed
invention is integrated into a practical application because it improves
conventional visibility detection systems by accurately measuring user
engagement without needing an explicit user indication, thus solving the
above-noted content visibility problem. Appeal Br. 10–11; Reply Br. 2–3.

ISSUE
Under § 101, has the Examiner erred in rejecting claims 1–9 as
directed to ineligible subject matter? This issue turns on whether the claims
are directed to an abstract idea and, if so, whether the recited elements—
considered individually and as an ordered combination—transform the
nature of the claims into a patent-eligible application of that abstract idea.

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 Supreme Court has long interpreted 35 U.S.C. § 101 to include
implicit exceptions: “[l]aws of nature, natural phenomena, and abstract
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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 Supreme Court’s two-step framework, described in Mayo
and Alice. 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 is “directed to.” See Alice, 573
U.S. at 219 (“On their face, the claims before us are drawn to the concept of
intermediated settlement, i.e., the use of a third party to mitigate settlement
risk.”); see also Bilski v. Kappos, 561 U.S. 593, 611 (2010) (“Claims 1 and 4
in petitioners’ application explain the basic concept of hedging, or protecting
against risk.”).
Concepts determined to be abstract ideas, and thus patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219–20; Bilski, 561 U.S. at 611);
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594–95 (1978)); and
mental processes (Gottschalk v. Benson, 409 U.S. 63, 67 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as “molding rubber products” (Diamond v. Diehr, 450 U.S. 175, 191
(1981)); “tanning, dyeing, making water-proof cloth, vulcanizing India
rubber, smelting ores” (id. at 187 n.7 (quoting Corning v. Burden, 56 U.S.
(15 How.) 252, 267–68 (1854))); and manufacturing flour (Benson, 409 U.S.
at 67 (citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
In Diehr, the claim at issue recited a mathematical formula, but the
Supreme Court held that “[a] claim drawn to subject matter otherwise
statutory does not become nonstatutory simply because it uses a
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mathematical formula.” Diehr, 450 U.S. at 176; see also id. at 191 (“We
view respondents’ claims as nothing more than a process for molding rubber
products and not as an attempt to patent a mathematical formula.”). That
said, the Supreme Court also indicated that a claim “seeking patent
protection for that formula in the abstract . . . is not accorded the protection
of our patent laws, . . . and this principle cannot be circumvented by
attempting to limit the use of the formula to a particular technological
environment.” Id. (citing Benson and Flook); see, e.g., id. at 187 (“It is now
commonplace that an application of a law of nature or mathematical formula
to a known structure or process may well be deserving of patent
protection.”).
If the claim is “directed to” an abstract idea, we turn to the second
step of the Alice and Mayo framework, where “we must examine the
elements of the claim to determine whether it contains an ‘inventive
concept’ sufficient to ‘transform’ the claimed abstract idea into a patent-
eligible application.” Alice, 573 U.S. at 221 (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.
In January 2019, the United States Patent and Trademark Office
(“USPTO”) published revised guidance on the application of § 101. See
USPTO’s 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed.
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Reg. 50 (Jan. 7, 2019) (“Guidance”).3 Under that guidance, we first look to
whether the claim recites:
(1) any judicial exceptions, including certain groupings of
abstract ideas (i.e., mathematical concepts, certain methods of
organizing human activity such as a fundamental economic
practice, or mental processes); and
(2) additional elements that integrate the judicial exception into
a practical application (see MANUAL OF PATENT EXAMINING
PROCEDURE (MPEP) §§ 2106.05(a)–(c), (e)–(h) (9th ed. Rev.
08.2017, Jan. 2018)).
Only if a claim (1) recites a judicial exception, and (2) does not integrate that
exception into a practical application, do we then look to whether the claim:
(3) adds a specific limitation beyond the judicial exception that
is not well-understood, routine, and conventional in the field
(see MPEP § 2106.05(d)); or
(4) simply appends well-understood, routine, and conventional
activities previously known to the industry, specified at a high
level of generality, to the judicial exception.
See Guidance, 84 Fed. Reg. at 56.

ANALYSIS
Claims 1–4, 6, 8, 12–15, 17, and 19–23: Alice/Mayo Step One
Representative independent claim 1 recites:

3 See also October 2019 Update: Subject Matter Eligibility, USPTO,
https://www.uspto.gov/sites/default/files/documents/
peg_oct_2019_update.pdf.
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1. A method comprising:

receiving, by a user device and from a publisher, an
electronic resource for display within a viewport of a graphical
user interface, the viewport being a display region of the
graphical user interface viewable by a user of the user device;

receiving, by the user device and from a content item
provider, a content item for display that occupies at least a
portion of the electronic resource;

displaying, by the user device and within the viewport of
the graphical user interface, the electronic resource and the
content item that occupies at least the portion of the electronic
resource;

detecting, based on execution of instructions by the user
device, multiple different display states for the content item,
wherein the detecting includes:

detecting, by the user device, a first display state during
which a first portion of the content item is displayed in a first
portion of the electronic resource that is displayed in the
viewport, including determining, by the user device and during
presentation of the electronic resource at the user device, first
dimensions of the first portion of the content item that is
displayed within the viewport while the first portion of the
electronic resource is displayed;

detecting, by the user device, a second display state
during which a second portion of the content item is displayed
in a second portion of the electronic resource that is displayed
in the viewport, including determining, by the user device and
during presentation of the electronic resource at the user device,
second dimensions of the second portion of the content item
that is displayed within the viewport while the second portion
of the electronic resource is displayed, wherein the first portion
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of the content item differs from the second portion of the
content item; and

determining, by the user device and for the first display
state a first user exposure level based on a mathematical
product of (i) a first total area of the first portion of the content
item displayed in the viewport during the first display state
according to the first dimensions and (ii) a first duration of the
first display state;

determining, by the user device and for the second
display state, a second user exposure level based on a
mathematical product of (i) a second total area of the second
portion of the content item displayed in the viewport during the
second display state according to the second dimensions and (ii)
a second duration of the second display state; and

calculating, by the user device, an aggregation of user
exposure based on the first user exposure level and the second
user exposure level; and

transmitting, by the user device and to a remote server
system, the calculated aggregation of user exposure level.

As the Specification explains, when a web page advertisement is
displayed on a user device, the advertiser is charged for the advertisement’s
impression. Spec. ¶ 2. But when a web page’s advertisements are displayed
on mobile user devices with limited viewport sizes, the part of the web page
with the advertisement may be invisible to the user or displayed
momentarily as the user pans around the web page. Spec. ¶ 9.
Consequently, an impression may occur despite the user not seeing the
advertisement or being exposed to the advertisement only fleetingly. Id.
According to the Specification, the present invention overcomes these
drawbacks by measuring the user’s engagement or exposure to the content
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item to ensure that an advertiser is charged only if the measured user
engagement or exposure satisfies a certain threshold, such as when the
content item occupies 50% of the device’s viewport for at least five seconds.
See Spec. ¶ 8.
Turning to claim 1, we first note that the claim recites a method and,
therefore, falls within the process category of § 101. But despite falling
within this statutory category, we must still determine whether the claim is
directed to a judicial exception, namely an abstract idea. See Alice, 573 U.S.
at 217. To this end, we must determine whether the claim (1) recites a
judicial exception, and (2) fails to integrate the exception into a practical
application. See Guidance, 84 Fed. Reg. at 52–55. If both elements are
satisfied, the claim is directed to a judicial exception under the first step of
the Alice/Mayo test. See id.
The Examiner determines that claim 1 is directed to an abstract idea
conceptually similar to abstract ideas that merely collect and analyze
information, and display results of that collection and analysis—processes
that can be done mentally but for the recited computer components. See
Final Act. 2–3; Ans. 3–6. To determine whether a claim recites an abstract
idea, we (1) identify the claim’s specific limitations that recite an abstract
idea, and (2) determine whether the identified limitations fall within certain
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subject matter groupings, namely, (a) mathematical concepts4; (b) certain
methods of organizing human activity5; or (c) mental processes.6
Here, apart from the recited (1) user device; (2) electronic resource;
(3) displaying the resource and content item within a viewport of a graphical
user interface (GUI), where the viewport is a display region of the GUI; and
(4) basing the display state detection on execution of instructions by the user
device; and (5) transmitting the calculated aggregated user exposure level by
the user device and to a remote server system, all of claim 1’s recited
limitations fit squarely within at least one of the above categories of the
USPTO’s guidelines. When read as a whole, the recited limitations are
directed to determining user exposure to displayed content based on its size
and duration.
That is, apart from the recited (1) user device; (2) electronic resource;
(3) displaying the resource and content item within a viewport of a graphical
user interface (GUI), where the viewport is a display region of the GUI; (4)
basing the display state detection on execution of instructions by the user

4 Mathematical concepts include mathematical relationships, mathematical
formulas or equations, and mathematical calculations. See Guidance, 84
Fed. Reg. at 52.
5 Certain methods of organizing human activity include fundamental
economic principles or practices (including hedging, insurance, mitigating
risk); commercial or legal interactions (including agreements in the form of
contracts; legal obligations; advertising, marketing or sales activities or
behaviors; business relations); managing personal behavior or relationships
or interactions between people (including social activities, teaching, and
following rules or instructions). See Guidance, 84 Fed. Reg. at 52.
6 Mental processes are concepts performed in the human mind including an
observation, evaluation, judgment, or opinion. See Guidance, 84 Fed. Reg.
at 52.
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device; and (5) transmitting the calculated aggregated user exposure level by
the user device and to a remote server system, the claimed limitations recite
mental processes and certain methods of organizing human activity
including fundamental economic practices and marketing and sales
activities. See Guidance, 84 Fed. Reg. at 52.
First, the limitations calling for (1) “receiving . . . from a publisher,
a[] resource for display”;7 and (2) “receiving . . . from a content item
provider a content item for display that occupies at least a portion of the . . .
resource” can be done by manually receiving these items from others via
oral or written communication. Cf. Interval Licensing LLC v. AOL, Inc., 896
F.3d 1335, 1344 (Fed. Cir. 2018) (noting that a nontechnical human activity
of passing a note to a person who is in a meeting or conversation as
illustrating the invention’s focus, namely providing information to a person
without interfering with the person’s primary activity). In short, the recited
receiving limitations fit squarely in the certain methods of organizing human
activity category of the USPTO’s guidelines and, therefore, recite an abstract
idea. See Guidance, 84 Fed. Reg. at 52 (listing exemplary methods of
organizing human activity, including advertising, marketing or sales
activities or behaviors, personal interactions, and following rules or
instructions).
The limitation reciting “displaying . . . the . . . resource and the
content item that occupies at least the portion of the . . . resource” can be
done merely showing the resource and content item on a piece of paper to
others and, therefore, falls within the certain methods of organizing human

7 We italicize certain quoted limitations for clarity and emphasis.
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activity categories of the USPTO’s guidelines. Cf. CyberSource Corp. v.
Retail Decisions, Inc., 654 F.3d 1366, 1372 (Fed. Cir. 2011) (noting that a
person could construct a map of credit card numbers by merely writing down
a list of credit card transactions made from a particular IP address); see also
Guidance, 84 Fed. Reg. at 52 (listing exemplary methods of organizing
human activity, including personal interactions and following rules or
instructions).
The limitations calling for
[(1)] detecting . . . multiple different display states for the
content item, wherein the detecting includes: detecting . . . a
first display state during which a first portion of the content
item is displayed in a first portion of the . . . resource that is
displayed . . . , including determining . . . during presentation of
the . . . resource . . . first dimensions of the first portion of the
content item that is displayed . . . while the first portion of the . .
. resource is displayed; [and (2)] detecting . . . a second display
state during which a second portion of the content item is
displayed in a second portion of the . . . resource that is
displayed . . . including determining . . . during presentation of
the . . . resource . . . second dimensions of the second portion of
the content item that is displayed . . . while the second portion
of the . . . resource is displayed, wherein the first portion of the
content item differs from the second portion of the content item
can be done entirely mentally by merely (1) observing the respective display
states and their associated content item portion displays, and (2) measuring
the respective content item portions either by inspection or by comparing
their dimensions to a known standard, such as with a ruler or tape measure—
steps that involve involving mere observation and logical reasoning. Cf.
CyberSource, 654 F.3d at 1372 (noting that a recited step that utilized a map
of credit card numbers to determine the validity of a credit card transaction
could be performed entirely mentally by merely using logical reasoning to
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identify a likely instance of fraud by merely observing that numerous
transactions using different credit cards all originated from the same IP
address). Therefore, the recited detection steps fall squarely within the
mental processes category of the USPTO’s guidelines and, therefore, recite
an abstract idea. See Guidance, 84 Fed. Reg. at 52 (listing exemplary mental
processes including observation and evaluation).
The limitations reciting
[(1)] determining . . . for the first display state a first user
exposure level based on a mathematical product of (i) a first
total area of the first portion of the content item displayed . . .
during the first display state according to the first dimensions
and (ii) a first duration of the first display state[; (2)]
determining . . . for the second display state, a second user
exposure level based on a mathematical product of (i) a second
total area of the second portion of the content item displayed . .
. during the second display state according to the second
dimensions and (ii) a second duration of the second display
state; [and (3)] calculating . . . an aggregation of user exposure
based on the first user exposure level and the second user
exposure level
can not only be done entirely mentally by merely thinking about these
functions or writing them down, but they also involve mathematical
relationships. See, e.g., In re Grams, 888 F.2d 835, 837 n.1 (Fed. Cir. 1989)
(“Words used in a claim operating on data to solve a problem can serve the
same purpose as a formula.”); Elec. Power Grp., LLC v. Alstom S.A., 830
F.3d 1350, 1354 (Fed. Cir. 2016) (noting that analyzing information by steps
people go through in their minds, or by mathematical algorithms, without
more, are essentially mental processes within the abstract idea category);
Digitech Image Tech., LLC v. Electronics for Imaging, Inc., 758 F.3d 1344,
1351 (Fed. Cir. 2014) (“Without additional limitations, a process that
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employs mathematical algorithms to manipulate existing information to
generate additional information is not patent eligible.”); Benson, 409 U.S. at
63 (holding ineligible claims involving a mathematical algorithm and
directed to converting binary-coded-decimal (BCD) numerals into pure
binary numerals for use with a computer); accord CyberSource, 654 F.3d at
1375 (“That purely mental processes can be unpatentable, even when
performed by a computer, was precisely the holding of the Supreme Court in
[Benson].”). Accordingly, the recited determinations fall squarely within the
mental processes and mathematical concepts categories of the agency’s
guidelines and, therefore, recite an abstract idea. See Guidance, 84 Fed.
Reg. at 52.
Lastly, the recited “transmitting . . . the calculated aggregation of
user exposure level” can be done by merely communicating the calculated
aggregation to others via oral or written communication. Cf. Interval
Licensing, 896 F.3d at 1344 (noting that a nontechnical human activity of
passing a note to a person who is in a meeting or conversation as illustrating
the invention’s focus, namely providing information to a person without
interfering with the person’s primary activity). In short, the recited
transmitting limitation fits squarely in the certain methods of organizing
human activity category of the USPTO’s guidelines and, therefore, recites an
abstract idea. See Guidance, 84 Fed. Reg. at 52 (listing exemplary methods
of organizing human activity, including advertising, marketing or sales
activities or behaviors, personal interactions, and following rules or
instructions).
Therefore, apart from the recited (1) user device; (2) electronic
resource; (3) displaying the resource and content item within a viewport of a
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graphical user interface (GUI), where the viewport is a display region of the
GUI; (4) basing the display state detection on execution of instructions by
the user device; and (5) transmitting the calculated aggregated user exposure
level by the user device and to a remote server system, the recited limitations
fall squarely within the mental processes, certain methods of organizing
human activity, and mathematical concepts categories of the USPTO’s
guidelines and, therefore, recite an abstract idea. See Guidance, 84 Fed.
Reg. at 52.
Notably, the five elements enumerated above are the only recited
elements beyond the abstract idea, but these additional elements, considered
individually and in combination, do not integrate the abstract idea into a
practical application when reading claim 1 as a whole.
First, we are not persuaded that the claimed invention improves a
computer or its components’ functionality or efficiency, or otherwise
changes the way those devices function, at least in the sense contemplated
by the Federal Circuit in Enfish LLC v. Microsoft Corporation, 822 F.3d
1327 (Fed. Cir. 2016) despite Appellant’s contentions to the contrary
(Appeal Br. 7). The claimed self-referential table in Enfish was a specific
type of data structure designed to improve the way a computer stores and
retrieves data in memory. Enfish, 822 F.3d at 1339. To the extent Appellant
contends that the claimed invention uses such a data structure to improve a
computer’s functionality or efficiency, or otherwise change the way that
device functions, there is no persuasive evidence on this record to
substantiate such a contention.
To the extent that Appellant contends that the claimed invention is
rooted in technology because it is ostensibly directed to a technical solution
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(see Appeal Br. 11–12), we disagree. Even assuming, without deciding, that
the claimed invention can determine user exposure to displayed content
based on its size and duration faster or more efficiently than doing so
manually, any speed or efficiency increase comes from the capabilities of
the generic computer components—not the recited process itself. See
FairWarning IP, LLC v. Iatric Systems, Inc., 839 F.3d 1089, 1095 (Fed. Cir.
2016) (citing Bancorp Services, LLC v. Sun Life Assurance Co., 687 F.3d
1266, 1278 (Fed. Cir. 2012) (“[T]he fact that the required calculations could
be performed more efficiently via a computer does not materially alter the
patent eligibility of the claimed subject matter.”)); see also Intellectual
Ventures I LLC v. Erie Indemnity Co., 711 F. App’x 1012, 1017 (Fed. Cir.
2017) (“Though the claims purport to accelerate the process of finding errant
files and to reduce error, we have held that speed and accuracy increases
stemming from the ordinary capabilities of a general-purpose computer do
not materially alter the patent eligibility of the claimed subject matter.”).
Like the claims in FairWarning, the focus of claim 1 is not on an
improvement in computer processors as tools, but on certain independently
abstract ideas that use generic computing components as tools. See
FairWarning, 839 F.3d at 1095.
Nor is this invention analogous to that which the court held eligible in
McRO, Inc. v. Bandai Namco Games America, Inc., 837 F.3d 1299 (Fed.
Cir. 2016). There, the claimed process used a combined order of specific
rules that rendered information in a specific format that was applied to create
a sequence of synchronized, animated characters. McRO, 837 F.3d at 1315.
Notably, the recited process automatically animated characters using
particular information and techniques—an improvement over manual three-
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dimensional animation techniques that was not directed to an abstract idea.
Id. at 1316.
But unlike the claimed invention in McRO that improved how the
physical display operated to produce better quality images, the claimed
invention here merely determines user exposure to displayed content based
on its size and duration. This generic computer implementation is not only
directed to mental processes, certain methods of organizing human activity,
and mathematical concepts, but also does not improve a display mechanism
as was the case in McRO. See SAP Am. v. InvestPic, LLC, 898 F.3d 1161,
1167 (Fed. Cir. 2018) (distinguishing McRO).
Rather, determining user exposure to displayed content based on its
area and duration as claimed is more akin to the claimed invention in Zuili v.
Google LLC, 722 F. App’x 1027 (Fed. Cir. 2018) (non-precedential). There,
the court held ineligible claims reciting, among other things, an advertising
system with a pay-per-click engine on a server side, where fraud was
identified by (1) determining, from received data including information
about user selections of one or more web pages, whether the selections were
fraudulent; and (2) examining a duration between a time of selecting one
web page and a time of another selection of the web page. See Zuili, 722 F.
App’x at 1028–30 (citing various asserted claims of U.S. Patents 7,953,667;
8,326,763; and 8,671,057). In reaching its ineligibility conclusion, the court
noted that the asserted claims were directed to the abstract idea of collecting,
transmitting, analyzing, and storing data to detect fraudulent and/or invalid
clicks based on the time between two requests by the same device or client.
See Zuili, 722 F. App’x at 1030.
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Like the ineligible invention in Zuili, the claimed invention here
collects, analyzes, and transmits data regarding a user’s involvement with
displayed content to determine the nature of that involvement based at least
partly on its duration. To be sure, the invention in Zuili detected fraudulent
behavior based on the duration of the user’s involvement with displayed
content. Nevertheless, the Zuili invention’s overall focus is analogous to
that of the present invention that likewise uses duration as a factor in
determining the nature of the user’s involvement with displayed content,
namely the user’s exposure to that content. Although the present invention
achieves this end by, among other things, determining the duration of
display states and not the time between mouse clicks as in Zuili, time is
nonetheless a key factor in both systems’ determinations that display content
to a user.
The court’s decision in Electric Power Group, LLC v. Alstom S.A.,
830 F.3d 1350 (Fed. Cir. 2016) is also analogous to the claimed invention.
There, the court held ineligible a recited method of detecting events on an
interconnected power grid from plural data streams in real time and
analyzing those events, where the method included, among other things,
displaying event analysis results and diagnoses, metrics, and concurrent
visualization of measurements from the data streams, and deriving a
composite reliability indicator. Electric Power, 830 F.3d at 1351–56.
Similarly, the claimed invention here detects and analyzes events and
metrics associated with displayed content and associated display states to
determine user exposure.
The court’s decision in Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709,
716 (Fed. Cir. 2014) is also analogous to the claimed invention. There, the
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court held ineligible a recited method of distributing products over the
Internet including (1) receiving copyrighted media; (2) selecting an
advertisement; (3) offering the media in exchange for watching the selected
advertisement; (4) displaying the advertisement; (5) allowing consumer
access to the media; and (5) receiving payment from the advertisement’s
sponsor. See Ultramercial, 772 F.3d at 712–15. As with the invention in
Ultramercial that was based on the user’s exposure to certain content,
namely an advertisement, before other content was delivered, the claimed
invention here determines the user’s exposure to certain content in
connection with monetizing that exposure.
This is not a case where the claimed invention is necessarily rooted in
computer technology to overcome a problem arising specifically in computer
networks as was the case in DDR Holdings, LLC v. Hotels.com, L.P., 773
F.3d 1245, 1257 (Fed. Cir. 2014). There, instead of a computer network
operating in its normal, expected manner by sending a website visitor to a
third-party website apparently connected with a clicked advertisement, the
claimed invention in DDR generated and directed the visitor to a hybrid page
that presented (1) product information from the third party and (2) visual
“look and feel” elements from the host website. DDR, 773 F.3d at 1258–59.
Given this particular Internet-based solution, the court held that the claimed
invention did not merely use the Internet to perform a business practice
known from the pre-Internet world, but rather was necessarily rooted in
computer technology to overcome a problem specifically arising in computer
networks. Id. at 1257.
That is not the case here. As noted previously, Appellant’s claimed
invention, in essence, determines user exposure to displayed content based
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on its size and duration. To the extent Appellant contends that the claimed
invention is necessarily rooted in computer technology to overcome a
computer-network-based problem as was the case in DDR, we disagree.
Furthermore, the recited “transmitting . . . the calculated aggregation
of user exposure level” is insignificant post-solution activity at least in the
sense that it is merely ancillary to the user exposure determination focus of
the claimed invention, given the transmission step’s high level of generality
and context in the claimed invention. Therefore, the transmitting step does
not integrate the exception into a practical application for that additional
reason. See Guidance, 84 Fed. Reg. at 55 (citing MPEP § 2106.05(g)).
On this record, then, the claimed invention does not recite additional
elements that (1) improve a computer itself; (2) improve another technology
or technical field; (3) implement the abstract idea in conjunction with a
particular machine or manufacture that is integral to the claim; (4) transform
or reduce a particular article to a different state or thing; or (5) apply or use
the abstract idea in some other meaningful way beyond generally linking the
abstract idea’s use to a particular technological environment, such that the
claim as a whole is more than a drafting effort designed to monopolize the
exception. See Guidance, 84 Fed. Reg. at 55 (citing MPEP §§ 2106.05(a)–
(c), (e)). In short, the claim’s additional elements do not integrate the
abstract idea into a practical application when reading claim 1 as a whole.
In conclusion, although the recited functions may be beneficial by
determining user exposure to displayed content based on its size and
duration, a claim for a useful or beneficial abstract idea is still an abstract
idea. See Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379–
80 (Fed. Cir. 2015). As the court noted in DDR, not all claims purporting to
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address Internet-centric challenges are eligible—even claims directed to a
specific method of advertising and distributing content that was previously
unknown and not employed on the Internet previously. See DDR, 773 F.3d
at 1258 (quoting Ultramercial, 772 F.3d at 1264). We reach a similar
conclusion here given the claimed invention’s high level of generality.
We, therefore, agree with the Examiner that claim 1 is directed to an
abstract idea.

Claims 1–4, 6, 8, 12–15, 17, and 19–23: Alice/Mayo Step Two
Turning to Alice/Mayo step two, claim 1’s additional recited elements,
namely the recited (1) user device; (2) electronic resource; (3) displaying the
resource and content item within a viewport of a graphical user interface
(GUI), where the viewport is a display region of the GUI; (4) basing the
display state detection on execution of instructions by the user device; and
(5) transmitting the calculated aggregated user exposure level by the user
device and to a remote server system—considered individually and as an
ordered combination—do not provide an inventive concept that amounts to
significantly more than the abstract idea when reading claim 1 as a whole.
See Alice, 573 U.S. at 221; see also Guidance, 84 Fed. Reg. at 56. As noted
above, the claimed invention merely uses generic computing components to
implement the recited abstract idea.
To the extent Appellant contends that the recited limitations, including
those detailed above in connection with Alice step one, add significantly
more than the abstract idea to provide an inventive concept under
Alice/Mayo step two (see Appeal Br. 6–11; Reply Br. 1–3), these limitations
are not additional elements beyond the abstract idea, but rather are directed
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to the abstract idea as noted previously. See BSG, 899 F.3d at 1290
(explaining that the Supreme Court in Alice “only assessed whether the
claim limitations other than the invention’s use of the ineligible concept to
which it was directed were well-understood, routine and conventional”)
(emphasis added); see also Guidance, 84 Fed. Reg. at 56 (instructing that
additional recited elements should be evaluated in Alice/Mayo step two to
determine whether they (1) add specific limitations that are not well-
understood, routine, and conventional in the field, or (2) simply append
well-understood, routine, and conventional activities previously known to
the industry (citing MPEP § 2106.05(d)).
Rather, the claimed (1) user device; (2) electronic resource; (3)
displaying the resource and content item within a viewport of a graphical
user interface (GUI), where the viewport is a display region of the GUI; (4)
basing the display state detection on execution of instructions by the user
device; and (5) transmitting the calculated aggregated user exposure level by
the user device and to a remote server system are additional recited elements
whose generic computing functionality is well-understood, routine, and
conventional. See Mortgage Grader, 811 F.3d at 1324–25 (noting that
components such an “interface,” “network,” and “database” are generic
computer components that do not satisfy the inventive concept requirement);
Zuili, 722 F. App’x at 1030 (noting that recited generic computer
components, such as a “web page,” “computing device,” “code,”
“communication network,” and “links associated with a plurality of
websites,” did not render the claimed invention eligible); accord Spec. ¶¶
79–90; Final Act. 4; Ans. 5–6 (determining that the recited generic computer
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components are additional elements that do not add significantly more than
the abstract idea).
We reach a similar conclusion regarding the recited insignificant
extra-solution activity, namely “transmitting . . . the calculated aggregation
of user exposure level” as claimed. That a calculated user exposure level
aggregation is transmitted does not mean that this function is performed in
an unconventional way to add significantly more than the abstract idea to
provide an inventive concept under Alice/Mayo step two. See Guidance, 84
Fed. Reg. at 56. Given this limitation’s high level of generality, the recited
extra-solution activity does not add significantly more than the abstract idea
to provide an inventive concept under Alice/Mayo step two. To the extent
Appellant contends otherwise (see Appeal Br. 6–11; Reply Br. 1–3), we
disagree.
In conclusion, the additional recited elements—considered
individually and as an ordered combination—do not add significantly more
than the abstract idea to provide an inventive concept under Alice/Mayo step
two when reading claim 1 as a whole. See Alice, 573 U.S. at 221; see also
Guidance, 84 Fed. Reg. at 56.
Therefore, we are not persuaded that the Examiner erred in rejecting
claim 1 and claims 2–4, 6, 8, 12–15, 17, and 19–23 not argued separately
with particularity.

THE OBVIOUSNESS REJECTION
Regarding independent claim 1, the Examiner finds that Itzhak
discloses, among other things, (1) receiving a content item for display that
occupies at least part of a received electronic resource; (2) detecting
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different display states for the content item; (3) determining first and second
user exposure levels based on the respective display states’ durations; and
(4) transmitting a calculated user exposure aggregation to a remote server
system. Final Act. 7–8. Although the Examiner acknowledges that Itzhak
does not detect first and second display states or determine the dimensions
of the respective portions of the displayed content item during the resource’s
presentation, the Examiner cites Qian as teaching this feature. Final Act. 8–
9. The Examiner also acknowledges that the Itzhak/Qian system does not
determine the total area of the respective content item portions during the
respective display states, but cites Yamaji as teaching this feature. Final
Act. 9–10. The Examiner also acknowledges that the Itzhak/Qian/Yamaji
system does not disclose the recited mathematical product, but cites Holm to
cure that deficiency. Final Act. 10–11. In light of these collective teachings,
the Examiner concludes that the claim would have been obvious. Final Act.
7–11.
Appellant argues that it would not have been obvious to modify
Itzhak’s system based on (1) Qian’s thumbnail image arrangement; (2)
Yamaji’s panoramic image capture process; and (3) Holm’s dynamically
weighing a load to determine a load measurement value as the Examiner
proposes. Appeal Br. 12; Reply Br. 3. According to Appellant, Qian,
Yamaji, and Holm are unrelated to Itzhak’s technical field of determining
visibility of content to a user. Appeal Br. 12; Reply Br. 3. Appellant adds
that the cited prior art does not teach or suggest determining a first user
exposure level based on a mathematical product of (1) a first total area of the
first portion of the content item displayed during the first display state, and
(2) a first duration of the first display state as claimed. Appeal Br. 12.
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ISSUES
I. Under § 103, has the Examiner erred in rejecting claim 1 by finding
that Itzhak, Qian, Yamaji, and Holm collectively would have taught or
suggested the recited first user exposure level determination?
II. Is the Examiner’s proposed combination of the cited references
supported by articulated reasoning with some rational underpinning to
justify the Examiner’s obviousness conclusion?

ANALYSIS
On this record, we agree with Appellant that the Examiner’s proposed
combination of references is problematic on this record. As noted above, the
Examiner cites Itzhak for teaching many elements of claim 1, including
determining first and second user exposure levels based on respective
display state durations. Final Act. 7–8. In paragraph 22, Itzhak’s system
checks each advertisement’s visibility status, including visibility time, and
reports visibility data to a server. In paragraphs 23 and 24, Itzhak discusses
various ways to determine that an advertisement is visible to a user,
including temporal approaches. See also Itzhak, Abstract (noting that an
advertisement’s visibility duration can be measured).
Although these teachings suggest determining user exposure level
based on a display state’s duration, we fail to see—nor has the Examiner
shown—how or why the other cited references could or would be used to
modify Itzhak’s duration-based visibility determination as the Examiner
proposes, such that Itzhak’s user exposure level is also based on (1) the total
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area of the displayed content item portion during the first display state, and
(2) the mathematical product of this total area and duration as claimed.
The Examiner’s reliance on Yamaji for teaching the total area factor
in the recited user exposure level determination (Final Act. 10) is unavailing.
First, Yamaji has nothing to do with Itzhak’s advertisement presentation and
metering system, but rather produces panoramic images by combining
images acquired by moving an imaging device. See Yamaji Abstract; ¶¶ 65–
78; Fig. 4. Although a synthesis area is used as a basis for comparison in
step S16 in Figure 4, we fail to see how that area—or any other area—
involved in synthesizing panoramic images in Yamaji teaches or suggests
basing a user exposure level determination on a total area of a portion of a
content item displayed in a viewport during a display state, let alone
multiplying that area with the duration of that display state as claimed.
The Examiner’s reliance on Holm for teaching the recited
mathematical product is likewise problematic on this record. Holm has
nothing to do with displaying content items in an electronic resource as
claimed, but rather involves weighing a load passing over a weighing
platform. See Holm Abstract. Although Holm’s Abstract notes that a
“summation result” is produced by integrating a weighing signal over time,
and Holm’s Figure 4 graphs the ideal course of a weighing signal for a
vehicle wheel’s passage over a weighing platform as noted in column 4,
lines 25 to 27, these teachings simply have nothing to do with the
mathematical product of total area and duration as part of a user exposure
level determination as claimed.
In short, the Examiner’s reliance on the secondary references is based
on impermissible hindsight that uses Appellant’s disclosure as a blueprint to
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piece together the claimed invention. See In re Fritch, 972 F.2d 1260, 1266
(Fed. Cir. 1992) (“It is impermissible to use the claimed invention as an
instruction manual or ‘template’ to piece together the teachings of the prior
art so that the claimed invention is rendered obvious . . . .”).
On this record, not only is the Examiner’s proposed combination
unsupported by articulated reasoning with rational underpinning to justify
the Examiner’s obviousness conclusion, the proposed combination does not
teach or suggest the recited first user exposure level determination even if
the references were combinable—which they are not.
Therefore, we are persuaded that the Examiner erred in rejecting (1)
independent claim 1; (2) independent claims 12 and 20 that recite
commensurate limitations; and (3) dependent claims 2–4, 6, 8, 13–15, 17,
19, 22, and 23 for similar reasons. Because this issue is dispositive
regarding our reversing the Examiner’s rejection of these claims, we need
not address Appellant’s other associated arguments.

CONCLUSION

In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)
/Basis
Affirmed Reversed
1–4, 6, 8,
12–15,
17, 19–
23
101 Eligibility 1–4, 6, 8,
12–15, 17,
19–23

1–4, 6, 8,
12–15,
17, 19–
23
103 Itzhak, Qian,
Yamaji,
Holm
1–4, 6, 8,
12–15,
17, 19–23
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Overall
Outcome
1–4, 6, 8,
12–15, 17,
19–23

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)(1).

AFFIRMED