Jason Carter et al.

Patent Trials and Appeals Board

Nov 12, 2020

2020002009 (P.T.A.B. Nov. 12, 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.
13/551,599 07/17/2012 Jason A. Carter 058083-0857865(2234US01) 6041
72058 7590 11/12/2020
Kilpatrick Townsend & Stockton LLP/Adobe
Adobe Systems, Inc. 58083
Mailstop: IP Docketing - 22
1100 Peachtree Street, Suite 2800
Atlanta, GA 30309-4530
EXAMINER
BUSCH, CHRISTOPHER CONRAD
ART UNIT PAPER NUMBER
3681
NOTIFICATION DATE DELIVERY MODE
11/12/2020 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 JASON A. CARTER and KEVIN G. SMITH
____________

Appeal 2020-002009
Application 13/551,599
Technology Center 3600
____________

Before HUBERT C. LORIN, CYNTHIA L. MURPHY, and
AMEE A. SHAH, Administrative Patent Judges.

SHAH, Administrative Patent Judge.

DECISION ON APPEAL1

STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), the Appellant2 appeals from the
Examiner’s final decision to reject claims 1–20. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.

1 We note prior Decision, appeal 2016-007341, mailed May 3, 2018,
affirming the rejections under 35 U.S.C. §§ 112, 101 and reversing the
rejections under 35 U.S.C. § 103(a).
2 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. The Appellant identifies the real party in interest as
“Adobe Systems Incorporated.” Appeal Br. 1.
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CLAIMED SUBJECT MATTER
The Appellant’s invention relates to “methods and systems for
keyword-based traffic refinement,” particularly for use in marketing
campaigns and displaying advertisements. Spec. ¶ 4.
Claims 1, 10, and 15 are the independent claims on appeal. Claim 1
(Appeal Br. 27–28 (Claims App.)) is exemplary of the subject matter on
appeal and is reproduced below (lettered bracketing added for reference).
1. A method for modifying how one or more search
engines return search results in response to use of keywords in
search engine queries, the method comprising:
performing by one or more computers:
[(a)] receiving queries at the one or more search
engines, wherein the queries use a keyword as a search
criteria;
[(b)] displaying advertisements from a network site
in search results based on an advertisement group
associating the displayed advertisements with the
keyword;
[(c)] receiving analytics data, at a keyword traffic
refinement manager, for each of the displayed
advertisements by identifying analytics data for a network
site accessed by the respective displayed advertisement
being activated in the search results;
[(d)] segmenting the analytics data, using an
analytics data segmenter of the keyword traffic refinement
manager, for the keyword in the displayed advertisements;
[(e)] calculating performance data, using a
performance analyzer of the keyword traffic refinement
manager, for the displayed advertisements using the
segmented analytics data;
[(f)] storing results of the analytics data segmenter
and the performance analyzer at a data store of the
keyword traffic refinement manager;
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[(g)] moving the displayed advertisements between
advertisement groups based on the calculated performance
data for the displayed advertisements by identifying
advertisements that are candidates for a new advertisement
group that includes a second keyword used m a keyword-
based search engine marketing campaign, wherein the new
advertisement group associates the identified
advertisements with the second keyword such that the
identified advertisements are displayed in search results
for queries that use the second keyword;
[(h)] receiving additional queries at the one or more
search engines, wherein the additional queries use the
second keyword as the search criteria; and
[(i)] selecting and displaying the identified
advertisements of the new advertisement group in
response to use of the second keyword in the additional
queries received by the one or more search engines.

THE REJECTION
Claim 1–20 stand rejected under 35 U.S.C. § 101 as being directed to
a judicial exception without significantly more.

OPINION
The Appellant argues claims 1–20 together. See Appeal Br. 5, 6, 25.
Therefore, we consider these claims as a group with claim 1 representative
and the rejections of claims 2–20 standing or falling therewith. See
37 C.F.R. § 41.37(c)(1)(iv) (2018).
35 U.S.C. § 101 Framework
Section 101
An invention is patent-eligible if it claims a “new and useful process,
machine, manufacture, or composition of matter.” 35 U.S.C. § 101.
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However, the U.S. Supreme Court has long interpreted 35 U.S.C. § 101 to
include implicit exceptions: “[l]aws of nature, natural phenomena, and
abstract ideas” are not patentable. E.g., Alice Corp. v. CLS Bank Int’l,
573 U.S. 208, 216 (2014).
In determining whether a claim falls within an excluded category, we
are guided by the Court’s two-part 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 waterproof cloth, vulcanizing India
rubber, smelting ores” (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S.
252, 267–68 (1853))); and manufacturing flour (Benson, 409 U.S. at 69
(citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
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In Diehr, the claim at issue recited a mathematical formula, but the
Court held that “a claim drawn to subject matter otherwise statutory does not
become nonstatutory simply because it uses a mathematical formula.”
Diehr, 450 U.S. at 187; see also id. at 191 (“We view respondents’ claims as
nothing more than a process for molding rubber products and not as an
attempt to patent a mathematical formula.”). Having said that, the 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. (citation omitted)
(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.
USPTO Section 101 Guidance
We are also guided by U.S. Patent and Trademark Office (“USPTO”)
Guidance, as set forth in the 2019 Revised Patent Subject Matter Eligibility
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Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (“Guidance”), incorporated into
the MANUAL OF PATENT EXAMINING PROCEDURE §§ 2104–06, Rev. 10.2019
(“MPEP”) in June 2020. “The guidance sets out agency policy with respect
to the USPTO’s interpretation of the subject matter eligibility requirements
of 35 U.S.C. § 101 in view of decisions by the Supreme Court and the
Federal Circuit.” Guidance, 84 Fed. Reg. at 51. Although “[a]ll USPTO
personnel are, as a matter of internal agency management, expected to
follow the guidance,” the guidance “does not create any right or benefit,
substantive or procedural, enforceable by any party against the USPTO.” Id.
The Guidance, by its terms, applies to all applications, and to all patents
resulting from applications, filed before, on, or after January 7, 2019. Id.
at 50.
Under USPTO Guidance, we first look to whether the claim recites:
(1) any judicial exceptions, including laws of nature, natural phenomena,
and products of nature (see MPEP §§ 2106.04(II)(A)(1), 2106.04(b))
(“Step 2A, Prong One”); and (2) additional elements that integrate the
judicial exception into a practical application (see id. §§ 2106.04(II)(A)(2),
2106.04(d)) (“Step 2A, Prong Two”).3
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, to whether the additional elements, individually or in combination,

3 This evaluation is performed by (a) identifying whether there are any
additional elements recited in the claim beyond the judicial exception, and
(b) evaluating those additional elements individually and in combination to
determine whether the claim as a whole integrates the exception into a
practical application. See Guidance - Section III(A)(2), 84 Fed. Reg. at
54–55, MPEP § 2106.04(d).
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provide an inventive concept. See MPEP §§ 2106(III), 2106.05. “An
inventive concept ‘cannot be furnished by the unpatentable law of nature (or
natural phenomenon or abstract idea) itself.’” Id. § 2106.05 (quoting
Genetic Techs. v. Merial LLC, 818 F.3d 1369, 1376, (Fed. Cir. 2016)).
Among the considerations in determining whether the additional elements,
individually or in combination, amount to significantly more than the
exception itself, we look to whether they add a specific limitation beyond the
judicial exception that is not “well-understood, routine, conventional” in the
field or simply append well-understood, routine, conventional activities
previously known to the industry, specified at a high level of generality, to
the judicial exception. MPEP § 2106.05(II); Guidance, 84 Fed. Reg. at 56.

Step One of the Mayo/Alice Framework
Under the first step of the Mayo/Alice framework and Step 2A, Prong
One of USPTO guidance, the Examiner determines that independent claim 1
is “directed to the abstract idea of selecting and displaying advertisements
based on the analysis of their performance data,” which the Examiner
characterizes as “a mental process (i.e. a process that can be performed in
the human mind, or by a human using a pen and paper) and a method of
organizing human activity (i.e. advertising and marketing activities).” Final
Act. 2 (citing Guidance). Under Prong Two of USPTO guidance, the
Examiner also determines that “this judicial exception is not integrated into a
practical application because it merely uses a computer as a tool to perform
the abstract idea, and generally links the use of the judicial exception to a
particular technological environment (i.e. the internet).” Id. at 2–3.
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The Appellant disagrees and contends that, under Prong One, claim 1
is “directed to modifying how one or more search engines return search
results, rather than being directed to the abstract ideas of ‘collecting data,
analyzing the data, and providing results of the data collection and analysis,’
as alleged in the Office Action at page 3.’” Appeal Br. 8. Under Prong
Two, the Appellant contends that the claim integrates the judicial exception
into a practical application, as the term is used in USPTO Guidance because
it is “directed to a technical improvement of how search engines return
search results” (id. at 7), and especially to “a particular solution to problems
associated with computing systems that use keyword search queries in
search engine marketing campaigns” (id. at 8). See also id. at 9–18; Reply
Br. 2–3.
Under the first step of the Mayo/Alice framework and Step 2A
USPTO guidance, we first determine to what claim 1 is directed, i.e.,
whether claim 1 recites an abstract idea and if so, whether claim 1 is directed
to that abstract idea. The Federal Circuit has explained that “the ‘directed
to’ inquiry applies a stage-one filter to claims, considered in light of the
specification, based on whether ‘their character as a whole is directed to
excluded subject matter.’” Enfish, LLC v. Microsoft Corp., 822 F.3d 1327,
1335 (Fed. Cir. 2016) (quoting Internet Patents Corp. v. Active Network,
Inc., 790 F.3d 1343, 1346 (Fed. Cir. 2015)). It asks whether the focus of the
claim is on a specific improvement in relevant technology or on a process
that itself qualifies as an “abstract idea” for which computers are invoked
merely as a tool. See id. at 1335–36. Here, it is clear from the Specification,
including the claim language, that claim 1 focuses on an abstract idea, and
not on any improvement to technology and/or a technical field.
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Reciting a Judicial Exception
The Specification provides for “Systems And Methods For Keyword-
Ad Pairing.” Spec., Title. In the “BACKGROUND” section, the
Specification discusses known internet search engines “(e.g., Google™,
Bing™, Yahoo!™),” that offer the capability to search for websites based on
keywords. Id. ¶ 1. “To increase the volume of traffic to their website,
business owners create a Search Engine Marketing (SEM) campaign to bid
on keywords that correspond to terms entered by users at a search engine,”
the campaigns including advertisement group(s) with advertisement(s) and
keyword(s). Id. Businesses with higher bids may have their advertisements
appear higher in the search results presented to the user and expect to
achieve greater visibility for their business as a result. See id. “To assist
business owners managing their campaigns, search engines offer data for
analyzing their respective SEM campaigns,” such as the number of
impressions (the number of times the advertisement appeared in the results
to a query), the number of clicks (the number of times a user selected the
advertisement), tracking costs, and other data such as keyword
recommendations. Id. ¶ 2. The Specification discusses the problem with
this approach in that
while the data provides basic information regarding the
campaign, there is not a direct method for optimizing the
keywords or advertisements based on the performance of the
keywords or advertisements in the SEM campaign. Thus,
businesses can not effectively manage their keyword bid costs
and refine the traffic to their website to ensure a high return on
investment.
Id. ¶ 3. The invention ostensibly aims to address this problem by providing
“[v]arious embodiments of methods and systems for keyword-based traffic
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refinement,” comprising receiving a plurality of queries entered at a search
engine that resulted in advertisements associated with the keyword being
displayed in response, receiving analytics data for those associated
advertisements, segmenting that analytics data, and analyzing that data “per
keyword to determine advertisements that are candidates for new
advertisement groups in the keyword-based search engine marketing
campaign.” Id. ¶ 4.
Claim 1, however, recites “[a] method for modifying how one or more
search engines return search results in response to use of keywords in search
engine queries, the method comprising” nine steps performed by one or
more computers. Appeal Br. 27–28 (Claims App.) We consider claim 1 as a
whole4 giving it the broadest reasonable construction5 as one of ordinary
skill in the art would have interpreted it in light of the Specification6 at the
time of filing. The steps performed by the computer(s) of claim 1 are: (a),
(c), and (h) of receiving data of queries that “use a keyword as a search
criteria,” analytics data, and additional queries that use a second keyword;
(b) and (i) of displaying data of advertisements based on and in response to
their association with the keywords; (d) “segmenting the analytics data”;

4 “In determining the eligibility of respondents’ claimed process for patent
protection under § 101, their claims must be considered as a whole.” Diehr,
450 U.S. at 188.
5 Revised Guidance, 84 Fed. Reg. at 52 n.14 (“If a claim, under its broadest
reasonable interpretation . . . .”) (emphasis added).
6 “First, it is always important to look at the actual language of the
claims. . . . Second, in considering the roles played by individual limitations,
it is important to read the claims ‘in light of the specification.’” Smart Sys.
Innovations, LLC v. Chicago Transit Authority, 873 F.3d 1364, 1378 (Fed.
Cir. 2017) (J. Linn, dissenting in part and concurring in part) (citing Enfish,
822 F.3d at 1335, among others).
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(e) “calculating performance data”; (f) storing the results of the segmenting
and calculating; (g) moving the displayed advertisements based on the
calculating by identifying candidates of a new group that include a second
keyword, and (i) selecting the identified advertisements for display. Appeal
Br. 27–28 (Claims App.).
The computer or computing system is a generic, conventional
computing device that includes general-purpose processor(s), memory,
input/output interface, network interface, and input/output devices including
a display. See Spec. ¶¶ 69–78. We note that there are no recited steps for
performing searches or how those searches are performed, and the
Specification refers to search engines as known, available search engines.
See id. ¶¶ 1, 19 (providing examples such as “Google™, Bing™,
Yahoo!™”).
Receiving and displaying data (limitations (a), (b), (c), (h), and (i)) are
extra-solution activities. See Electric Power Grp., LLC v. Alstom S.A., 830
F.3d 1350, 1353–54 (Fed. Cir. 2016); In re Bilski, 545 F.3d 943, 963 (Fed.
Cir. 2008) (en banc), aff’d sub nom Bilski v. Kappos, 561 U.S. 593 (2010)
(characterizing data gathering steps as insignificant extra-solution activity).
Storing data (limitation (f)) is a mental process. See Content Extraction &
Transmission LLC v. Wells Fargo Bank, Nat. Ass’n, 776 F.3d 1343, 1347
(Fed. Cir. 2014) (“The concept of data collection, recognition, and storage is
undisputedly well-known. Indeed, humans have always performed these
functions.”).
The limitations of segmenting and calculating data and moving
advertisements (limitations (d), (e), and (g)) are recited functionally without
details on how, technologically or by what algorithm, they are performed.
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Segmenting data, for which the Specification provides no further detail, is a
way of organizing content by, for example, dividing and grouping similar
data, which is a mental process. See Versata Dev. Grp., Inc. v. SAP Am.,
Inc., 793 F.3d 1306, 1333–34 (Fed. Cir. 2015) (using hierarchies “is a
building block, a basic conceptual framework for organizing information”).
Calculating performance data is also a mental process. See Electric Power,
830 F.3d at 1354 (Fed. Cir. 2016) (citing cases) (“we have treated analyzing
information by steps people go through in their minds, or by mathematical
algorithms, without more, as essentially mental processes”). Moving
advertisements is performed by identifying advertisements that are
candidates, i.e., a mental process of evaluation, into a new group of
advertisements, i.e., a mental process of organizing data. Limitation (i) of
selecting and displaying the identified advertisements is merely presenting
the results of the analyses. See Electric Power, 830 F.3d at 1354 (“merely
presenting the results of abstract processes of collecting and analyzing
information, without more (such as identifying a particular tool for
presentation) is abstract as an ancillary part of such collection and
analysis.”).
When considered collectively and under the broadest reasonable
interpretation, we agree with the Examiner that the limitations of claim 1
recite a way of “selecting and displaying advertisements based on the
analysis of their performance data” by receiving, organizing, analyzing data
and selecting and displaying data based on the results of the analyses.7 This

7 We note that “[a]n abstract idea can generally be described at different
levels of abstraction.” Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1240
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is an abstract idea comprising “[m]ental processes—concepts performed in
the human mind (including an observation, evaluation, judgment, opinion)”
and a “[c]ertain method[] of organizing human activity— . . . commercial or
legal interactions (including agreements in the form of contracts; legal
obligations; advertising, marketing or sales activities or behaviors; business
relations).” Guidance, 84 Fed. Reg. at 52; MPEP § 2106.04(a)(2)(II)(B).
Our reviewing court has held similar concepts to be abstract. For
example, the Federal Circuit has held abstract the concepts of “customizing
a user interface” such as with targeted advertising based on demographic
information in Affinity Labs. of Texas, LLC v. Amazon.com, Inc., 838 F.3d
1266, 1271 (Fed. Cir. 2016), “customizing web page content as a function of
navigation history and information about the user” in Intellectual Ventures I
LLL v. Capital One Bank (USA), 792 F.3d 1363, 1369 (Fed. Cir. 2015)
(“Capital One Bank”), collecting, analyzing, and displaying the results in
Electric Power, 830 F.3d at 1354, “receiving or collecting data queries,
analyzing the data query, retrieving and processing the information
constituting a response to the initial data query, and generating a visual or
audio response to the initial data query” in West View Research, LLC v. Audi
AG, 685 F. App’x 923, 926 (Fed. Cir. 2017), “targeted advertising and
bidding to display the advertising, which are both abstract ideas relating to
customizing information based on the user and matching them to the
advertiser” in In re Morsa, 809 F. App’x 913, 917 (Fed. Cir. 2020), cert.
denied sub nom. Morsa v. Iancu, No. 20-32, 2020 WL 5883301 (U.S. Oct. 5,
2020), and “filter[ing] information for relevance to a user’s query using

(Fed. Cir. 2016). The Board’s “slight revision of its abstract idea analysis
does not impact the patentability analysis.” Id. at 1241.
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combined content and collaborative data” in I/P Engine, Inc. v. AOL Inc.,
576 F. App’x 982, 994 (Fed. Cir. 2014) (J. Mayer, concurring).
We disagree with the Appellant’s contention that claim 1 recites a
way of “modifying how search engines return search results.” Appeal Br. 8;
see also Reply Br. 3. None of the limitations recites modifying the basic
structure or method of search engines to return results. The claim only uses
known, available search engines to receive queries using first and second
keywords as search criteria. Thereafter, advertisements are displayed in the
search results – the claim does not recite how those search results are
determined or how the known search engines’ method(s) of determining
results are modified. Rather, as discussed above, the claim recites a way of
using search engines, analyzing data, and performing the action of
moving/adjusting the display of advertisements based on the analysis, which
may or may not be part of the search results.
Having concluded that claim 1 recites a judicial exception under the
Revised Guidance, Step 2A, Prong One, we next consider whether the claim
recites additional elements that integrate the judicial exception into a
practical application.
Integration into a Practical Application
We look to whether the claim “appl[ies], rel[ies] on, or use[s] 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,” i.e., “integrates a judicial exception
into a practical application.” Guidance, 84 Fed. Reg. at 54; MPEP
§ 2106.04(d). We note that, as stated above, the question is whether the
claims as a whole “focus on a specific means or method that improves the
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relevant technology” or are “directed to a result or effect that itself is the
abstract idea and merely invoke generic processes and machinery.” McRO,
Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299, 1314 (Fed. Cir.
2016). Here, the only additional elements recited in claim 1 beyond the
abstract idea are the “one or more computers,” “one or more search
engines,” “network site,” “keyword traffic refinement manager,” “analytics
data segmenter,” “performance analyzer,” and “data store” — elements that
are described in the Specification as generic computer and available, off-the-
shelf components. See, e.g., Spec. ¶¶ 19–23, 69–79, 173; Figs. 1, 10 (e.g.,
¶ 78 “the computer system and devices may include any combination of
hardware or software that can perform the indicated functions, including
computers, network devices, internet appliances, PDAs, wireless phones,
pagers, etc.”). We note that the Specification does not provide a specific
structural component for “network site,” “analytics data segmenter,” or
“performance analyzer,” but they appear to comprise a conventional
webpage or website, a conventional server, or a conventional processor or
software, respectively. See id. ¶¶ 18–21; Fig. 1. As is clear from the
Specification, there is no indication that the operations recited in claim 1
require any specialized computer hardware or other inventive computer
components, i.e., a particular machine, invoke any asserted inventive
programming, or that the claimed invention is implemented using other than
generic computer components to perform generic computer functions. See
DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1256 (Fed.
Cir. 2014) (“[A]fter Alice, there can remain no doubt: recitation of generic
computer limitations does not make an otherwise ineligible claim patent-
eligible.”). We also find no indication in the Specification that the claimed
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invention as recited in claim 1 effects a transformation or reduction of a
particular article to a different state or thing.
We are not persuaded of Examiner error by the Appellant’s argument
that “the claims are directed to a technical improvement of how search
engines return search results.” Appeal Br. 7; see also Reply Br. 3–4. The
Appellant argues that the “claims recite a particular solution to problems
associated with computing systems that use keyword search queries in
search engine marketing campaigns. See Specification, ¶¶ [0002]-[0003],”
in particular to “optimizing keyword and advertisement performance.”
Appeal Br. 8; see also Reply Br. 3–4. However, the Appellant does not
provide adequate reasoning or evidence, and we do not see from the claim,
how the limitations claim a technological solution to a computer-based
problem, i.e., a solution “necessarily rooted in computer technology in order
to overcome a problem specifically arising in the realm of computer
networks.” DDR Holdings, 773 F.3d at 1257.
The court in DDR noted that “not all claimed purporting to address
Internet-centric challenges are eligible for patent.” Id. As discussed above,
the Specification provides that the problem the invention aims to address is
that the lack of “a direct method for optimizing the keywords or
advertisements based on the performance of the keywords or advertisements
in the SEM campaign” leads to businesses “not effectively manag[ing] their
keyword bid costs and refine the traffic to their website to ensure a high
return on investment.” Spec. ¶ 3. This problem with cost-effective, better
advertising is a problem that existed prior to the Internet. See, e.g., Capital
One Bank, 792 F.3d at 1369–71 (determining that tailoring advertisements in
television commercials and newspaper ads has been long prevalent and not a
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problem unique to the Internet). At best, the problems are computer-based,
but are not specifically arising in the realm of computer networks. See
Bridge and Post, Inc. v. Verizon Commc’ns, Inc., 778 F. App’x 882, 887,
891 (finding that “targeted marketing and market segmentation were
developed to increase the effectiveness of advertisements placed in
traditional media such as radio, television, and printed newspapers and
magazines” are not “problems necessarily rooted in computer technology,”
but “recite the performance of a business practice known from the pre-
internet world.”).
Further, the purported solution of segmenting the analytics data,
calculating performance data, and moving the displayed advertisements
based on analyzing the analytics data (Appeal Br. 9; see also Reply Br. 4) is
not rooted in computer technology. This purported solution requires the use
of a generic computer or computer system. See supra; see also Alice, 573
U.S. at 224–26. The Appellant does not, and cannot, claim to have invented
the use of the computer or search engine. The “focus” of the claim is not
“on the specific asserted improvement in computer capabilities” (Enfish,
822 F.3d at 1336), but rather on using the computer as a tool to implement
the abstract idea in the particular field of online searches and advertising.
The claim recites steps that are mental processes and uses a computer
in its ordinary capacity to receive, display, segment/organize, calculate,
store, move/organize, and select data. That the claim uses the results of the
analysis to provide better information to online search engines (see Appeal
Br. 9) combined with the additional elements outside the abstract idea at best
limit the invention to a particular technical/computer environment of online
searches and advertising and do not make the claim less abstract. See Alice,
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573 U.S. at 223 (holding that attempting to limit the use of an abstract idea
to a particular technological environment does not make a claim patent-
eligible) (quoting Bilski, 561 U.S. at 610–11); Affinity Labs of Tex., LLC v.
DIRECTV, LLC, 838 F.3d 1253, 1259 (Fed. Cir. 2016) (“The Supreme Court
and [the Federal Circuit] have repeatedly made clear that merely limiting the
field of use of the abstract idea to a particular existing technological
environment does not render the claims any less abstract.”). Any purported
improvement lies in the analysis and organizing of data, i.e., an
improvement in the abstract idea itself, not an improvement to any
technological component or functionality. Segmenting, calculating, and
moving data do not comprise “an improvement in networking or computer
functionality” as they do not “enable[] a computer . . . to do things it could
not do before.” Finjan, Inc. v. Blue Coat Sys., Inc., 879 F.3d 1299, 1305
(Fed. Cir. 2018). Rather, the claim’s focus is “not a physical-realm
improvement but an improvement in a wholly abstract idea,” that is not
eligible for patenting.” SAP Am., 898 F.3d 1161 at 1168; see also Bridge &
Post, 778 at 893 (Fed. Cir. 2019) (“Where a claim’s ‘essential advance’ is
abstract, a novel method of performing the advance ‘does not avoid the
problem of abstractness.’”) (quoting Affinity Labs, 838 F.3d at1263).
Regarding the Appellant’s argument that claim 1 is similar to those of
McRO (see Appeal Br. 7–14; Reply Br. 5–6), the claims there were directed
to a specific improvement in computer technology. In McRO, the claims
were directed to computer animation and used rules to automate a subjective
task of humans to create a sequence of synchronized, animated characters.
See McRO, 837 F.3d at 1314–15. Unlike Flook, Bilski, and Alice, it was not
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the use of the computer, but the incorporation of the rules that improved an
existing technological process. Id. at 1314.
Here, as discussed above, there is no such improvement to technology
or a technological process. The Appellant does not assert an improvement in
the technical or technological aspects of the process, but merely that the
process is not the same as previous techniques. See Appeal Br. 13. And,
there is no requirement of “control[ling] when certain visual content will be
displayed” (id. (emphasis added)), but merely that certain content, “i.e.,
clickable advertisements,” (id.) is displayed based on the results of the
analyses. As discussed above, any improvement to selecting and displaying
certain advertisements lies in the process itself, not to any technological
improvement. See BSG Tech LLC v. Buyseasons, Inc., 899 F.3d 1281,
1287–88 (Fed. Cir. 2018). The Appellant also does not direct our attention
to anything in the Specification to indicate that the invention provides a
technical improvement in the analysis or display of data or that claim 1
incorporates rules to automate a subjective task of humans, similar to those
in McRO.
We similarly disagree with the Appellant’s contention that claim 1 is
similar to those of Data Engine Technologies, LLC v. Google LLC, 906 F.3d
999 (Fed. Cir. 2018). See Appeal Br. 14–17. In Data Engine, the Federal
Circuit found the claims did not recite patent ineligible subject matter
because they recited a specific, user interface solution to known problems
with computerized spreadsheets, in particular, “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. Specifically, the court credited an article
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identifying the technological problem at issue, namely, “the industry’s view
that ‘keeping large, complex worksheet projects organized, manageable, and
reliable ha[d] long been a major concern.’” Id. at 1004 (alteration in
original); see also id. at 1008. For the technological solution, the court
credited seven articles that “tout[ed] the advantages of its use of notebook
tabs to improve navigation through three-dimensional spreadsheets.” Id. at
1004. In particular, the Federal Circuit noted, in one article, that “[t]he
invention was applauded by the industry for improving computers’
functionality as a tool able to instantly access all parts of complex three-
dimensional electronic spreadsheets.” Id. at 1008.
In contrast, claim 1 here does not recite specific implementation
details of any particular user interface, computer, or search engine
technology, and the claim lacks any specific means or technological detail
for achieving the Appellant’s asserted improvement — the “functionality” of
a search engine “for accessing and displaying relevant information.” Appeal
Br. 14. As discussed above, the claim merely requires the available search
engine(s) to receive queries (and at best using those keywords as search
criteria), but the actual displaying, receiving, segmenting, calculating,
segmenting, moving, and selecting are performed by the conventional
computer. As discussed above, claim 1 does not provide a technical solution
to then-existing technological problems in computers and search engines.
At best, the process is improved but not the particular technological
components. Rather, claim 1 more resembles those claims in Data Engine
that were found patent ineligible because they were more general and did not
recite a “specific technical solution and improvement in electronic
spreadsheet functionality.” Data Engine, 906 F.3d at 1012.
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We are not persuaded that the claim is integrated into a practical
application by the Appellant’s argument that “The Board has found similar
claims patent eligible for integrating any abstract idea into a practical
application.” Appeal Br. 17; see also id. at 16 (citing non-precedential
cases); Reply Br. 6–7. The Specifications, inventions, and claims at issue in
each of the cited non-precedential cases are different than those here. In any
event, we are not bound by non-precedential decisions of other panels of the
Board.
We thus agree with the Examiner that the additional elements of
claim 1 do not integrate the judicial exception into a practical application, as
the term is used in USPTO Guidance, because they “merely use a computer
as a tool to perform the abstract idea(s), and generally link the use of the
judicial exception to a particular technological environment (e.g., the
internet).” Final Act. 3.
Thus, we are not persuaded of error in the Examiner’s determination
that claim 1 is directed to an abstract idea.

Step Two of the Mayo/Alice Framework
Under the second step in the Alice framework and USTPO guidance
Step 2B, we “[e]valuat[e] additional elements to determine whether they
amount to an inventive concept [which] requires considering them both
individually and in combination to ensure that they amount to significantly
more than the judicial exception itself.” MPEP § 2106.05(I). Here, the
Examiner finds that “the claims do not include additional elements that are
sufficient to amount to significantly more than the judicial exception
because the additional elements when considered both individually and as an
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ordered combination do not amount to significantly more than the abstract
idea.” Final Act. 4. Specifically, the Examiner finds that the additional
elements beyond the abstract idea are “recited at a high level of generality
and are recited as performing generic computer functions routinely used in
computer applications.” Id.
The Appellant contends that claim 1 “requires an unconventional
combination of claim elements for preventing transmission of certain
electronic content, and also addresses an Internet centric problem via a
solution that is necessarily rooted in computing technology.” Appeal Br. 18.
The Appellant argues that the claim “effect[s] the same type of technical
improvement found in” Amdocs (Israel) Ltd. v. Openet Telecom, Inc., 841
F.3d 1288 (Fed. Cir. 2016) and Enfish. Appeal Br. 19, 21; see also id.
at 20, 22; Reply Br. 7–9. We disagree. First, we note that the claim does
not recite “preventing transmission of certain electronic content” or any
technological way of doing do, but merely recites selecting and displaying
content based on the results of analysis. Second, as discussed above, there is
no claimed improvement to technology or a technical field.
In Amdocs, the Federal Circuit held the claim was patent eligible
because the claim entailed an unconventional technological solution
(enhancing data in a distributed fashion) to a technological problem
(massive record flows which previously required massive databases).
Although the solution required generic components, the court adopted the
district court’s interpretation of the claim term “enhance,” stating, it
approved “reading the ‘in a distributed fashion’ and the ‘close to the source’
of network information requirements into the term ‘enhance,’” and
determined that “the claim’s enhancing limitation necessarily requires that
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these generic components operate in an unconventional manner to achieve
an improvement in computer functionality” and that the “enhancing
limitation depends not only upon the invention’s distributed architecture, but
also depends upon the network devices and gatherers––even though these
may be generic––working together in a distributed manner.” Amdocs, 841
F.3d at 1300–01.
Here, there is no similar evidence that the architecture of the generic
computer, search engine, network site, keyword traffic refinement manager,
analytics data segmenter, performance analyzer, and data store is
comparable to the components in Amdocs or otherwise establishes that the
connection or devices operate in an unconventional manner. The Appellant
contends that the claimed method “is unconventional because, even if the
individual components of the architecture are generic, as in Amdocs, the
arrangement of these components in the method provides a solution (e.g., the
optimization of keywords and advertisements in search queries) that was not
solved by the individual components in the prior art.” Appeal Br. 20.
However, the Appellant does not establish how, as in Amdocs, “these
generic components operate in an unconventional manner to achieve an
improvement in computer functionality.” Rather, as discussed more fully
below, the components operate in their conventional capacities to receive,
display, segment, calculate, store, move, and select data.
Similarly, in Enfish, the court held that the focus of the claims was to
“a specific improvement to the way computers operate, embodied in the self-
referential table.” 822 F.3d at 1336. Specifically, “the claims [were] not
simply directed to any form of storing tabular data, but instead [were]
specifically directed to a self-referential table for a computer database.” Id.
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at 1337. The Specification provided that “the self-referential table
function[ed] differently than conventional database structures” (id. at 1337)
and improved “the way a computer stores and retrieves data in memory” (id.
at 1339).
Here, as discussed above, the claim performs the functions using
conventional computer components and search engine(s). Under the
claimed method, query data is received from a conventional search engine,
advertisement displayed based on an analysis of association, analytics data
are identified by some unknown process, received, and segmented,
performance data is calculated, the results are stored, displayed
advertisements are moved into groups based on the calculations, additional
query data is received from the search engines, and advertisements from the
new group are selected and displayed. The Appellant does not purport to
have invented the claimed computer or search engine. As discussed above,
these are conventional components. The claim does not recite any
improvement to technology analogous to the self-referential table in Enfish.
As discussed above, there is no claimed improvement to technology
or a technical field. “[E]fficiently servic[ing] queries and provid[ing] search
results to an audience that are particularly relevant to the search query”
(Appeal Br. 21) are not technical improvements. See Capital One Bank, 792
F.3d at 1370 (“the fact that the web site returns the pre-designed ad [selected
based on analysis of the user’s information] more quickly than a newspaper
could send the user a location-specific advertisement insert does not confer
patent eligibility.”) At best, the claim provides an improved analytical way,
i.e., an improved abstract idea, for providing more cost-effective, relevant
advertising using conventional components. Yet, as the court expressly
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recognized in Enfish, there is a fundamental difference between computer
functionality improvements, on the one hand, and uses of existing computers
as tools to perform a particular task, on the other. The alleged advantages
that the Appellant touts do not concern an improvement to computer
capabilities, but instead relate to an alleged improvement in a method of
selecting and displaying advertisements based on the analysis of their
performance data — a process in which computer components are used as
tools in their ordinary capacities.
The Appellant further argues that “the Examiner fails to address all of
the additional limitations of the claim (e.g., the limitations not emphasized in
the example claim above),” which are limitations (b), (f), (g), and (h) of
displaying advertisements based on analysis of associating data, storing
results of the calculating analysis, moving advertising data between groups
based on analysis, and receiving additional query data. Appeal Br. 23–24.
As discussed above, under Step 2B we look to whether the additional
elements beyond the abstract idea, individually or in combination, provide
an inventive concept. 84 Fed. Reg. at 55. Alice is clear, as described above,
that under step two of the Mayo/Alice framework, the elements of each claim
are considered both individually and “as an ordered combination” to
determine whether the additional elements, i.e., the elements other than the
abstract idea itself, “transform the nature of the claim” into a patent-eligible
application. Alice, 573 U.S. at 217; see also Mayo, 566 U.S. at 72–73
(requiring that “a process that focuses upon the use of a natural law also
contain other elements or a combination of elements, sometimes referred to
as an ‘inventive concept,’ sufficient to ensure that the patent in practice
amounts to significantly more than a patent upon the natural law itself”). In
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other words, the inventive concept under step two of the Mayo/Alice
framework cannot be the abstract idea itself: “It is clear from Mayo that the
‘inventive concept’ cannot be the abstract idea itself, and Berkheimer . . .
leave[s] untouched the numerous cases from this court which have held
claims ineligible because the only alleged ‘inventive concept’ is the abstract
idea.” Berkheimer v. HP, Inc., 890 F.3d 1369, 1374 (Fed. Cir. 2018) (Order,
On Petition for rehearing en banc, May 31, 2018) (Moore, J., concurring)
(Berkheimer II); see also BSG Tech, 899 F.3d at 1290 (“It has been clear
since Alice that a claimed invention’s use of the ineligible concept to which
it is directed cannot supply the inventive concept that renders the invention
‘significantly more’ than that ineligible concept.”).
Here, the Examiner addresses the elements other than the abstract idea
and concludes that they, individually or in combination, do not amount to
significantly more than the abstract idea. See Final Act. 3–4; Ans. 9–11.
The limitations to which the Appellant refers, i.e., limitations (b), (f), (g),
and (h) of displaying, storing, moving/organizing, and receiving, are not
additional elements outside the abstract idea. Rather, as discussed above,
these are extra-solution activities, abstract ideas themselves, and part of the
abstract idea as a whole, and cannot supply the inventive concept.
The Appellant also argues that “the Examiner has not established that
the combination of elements beyond any abstract idea, including the
elements ignored in the Examiner’s ‘directed to’ analysis, is well
understood, routine, or conventional.” Appeal Br. 22. The Appellant argues
that the Examiner fails to provide evidence otherwise in accordance with
Berkheimer v. HP Inc., 881 F.3d 1360 (Fed. Cir. 2018) (“Berkheimer”). Id.
at 22–24; Reply Br. 9–10.
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However, the Examiner cites to the Specification, case law, and the
MPEP as support for the finding that the claimed generic systems perform
functions that are well understood, routine, and conventional. See
Ans. 11–13. In doing so, the Examiner follows the guidance set forth in
“Changes in Examination Procedure Pertaining to Subject Matter Eligibility,
Recent Subject Matter Eligibility Decision (Berkheimer v. HP Inc.),”
USPTO Memorandum, Robert W. Bahr, Deputy Commissioner for Patent
Examination Policy, April 19, 2018 (the “Berkheimer Memo”).
The court in Berkheimer held that “[t]he patent eligibility inquiry may
contain underlying issues of fact.” Berkheimer, 881 F.3d at 1365 (quoting
Mortg. Grader, Inc. v. First Choice Loan Servs. Inc., 811 F.3d 1314, 1325
(Fed. Cir. 2016) (“The § 101 inquiry ‘may contain underlying factual
issues.’”)). But, the court also held that “[w]hen there is no genuine issue of
material fact regarding whether the claim element or claimed combination is
well-understood, routine, [and] conventional to a skilled artisan in the
relevant field, this issue can be decided on summary judgment as a matter of
law.” Berkheimer, 881 F.3d at 1368 (emphasis added). This qualification
has been subsequently reiterated.
If there is a genuine dispute of material fact, Rule 56
requires that summary judgment be denied. In Berkheimer, there
was such a genuine dispute for claims 4–7, but not for claims 1–3
and 9. . . . [I]n accordance with Alice, we have repeatedly
recognized the absence of a genuine dispute as to eligibility for
the many claims that have been defended as involving an
inventive concept based merely on the idea of using existing
computers or the Internet to carry out conventional processes,
with no alteration of computer functionality.
Berkheimer II, 890 F.3d at 1371–73 (Moore, J., concurring); see also Aatrix
Software, Inc. v. Green Shades Software, Inc., 890 F.3d 1354, 1368 (Fed.
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Cir. 2018) (“A factual allegation or dispute should not automatically take the
determination out of the court’s hands; rather, there needs to be justification
for why additional evidence must be considered—the default being a legal
determination.”). Here, the Specification indisputably shows the claimed
computing elements were conventional at the time of filing. See supra;
Spec. ¶¶ 18, 19, 69–81, Fig. 10. Accordingly, based on the Appellant’s
description, we find these components to be well understood, routine, or
conventional.
We note that the claim simply recites the functional results to be
achieved by the components. The claim “provides only a result-oriented
solution[] with insufficient detail for how a computer accomplishes it. Our
law demands more.” Capital One Fin., 850 F.3d at 1342. Taking the
claimed elements separately, the functions performed by the device and
computer systems are purely conventional. The claimed generic
components operate in their ordinary and conventional capacities to perform
the well-understood, routine, and conventional functions of receiving data
(i.e., limitations (a), (c), and (h)), displaying data (i.e., limitations (b) and
(i)), organizing data (i.e.,, limitations (d) and (g)), analyzing data (i.e.,
limitations (d) and (g)), storing data (i.e., limitation (f)), and selecting and
displaying data based on the results of the analysis (i.e., limitation (i)). See
Spec. ¶¶ 18, 19, 69–31 (describing generic computer components); see also,
e.g., Capital One Bank, 792 F.3d at 1369–71 (holding that “the entry of data
into a computer database, the breakdown and organization of that data
according to some criteria, . . . and the transmission of information derived
from that entered data to a computer user, all through the use of conventions
components, such as a database and processors, operation in a convention
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manner” did not transform a patent-ineligible process into something more);
Elec. Power, 830 F.3d at 1355 (gathering, sending, monitoring, analyzing,
selecting, and presenting information does not transform the abstract process
into a patent-eligible invention); I/P Engine, 576 F. App’x at 986 (“search
engines, content-based filtering, and collaborative filtering were all well-
known in the art at the time of the claimed invention”); Alice, 573 U.S. at
226 (“Nearly every computer will include a ‘communications controller’ and
‘data storage unit’ capable of performing the basic calculation, storage, and
transmission functions required by the method claims.”).
Considered as an ordered combination, the components of Appellant’s
claim add nothing that is not already present when the steps are considered
separately. The sequence of receiving, displaying receiving, organizing,
analyzing, storing, organizing, receiving, selecting and displaying data,
receiving and transmitting data, gathering data, analyzing data, and selecting
and displaying data based on the analysis is equally generic and
conventional or otherwise held to be abstract. See, e.g., Elec. Power, 830
F.3d at 1354–56 (holding that the sequence of gathering, analyzing, and
displaying in real-time was abstract); FairWarning IP, LLC v. Iatric Sys.,
Inc., 839 F.3d 1089, 1095 (Fed. Cir. 2016) (generating a rule related to
accessing information, applying the rule, and storing and announcing the
result did not transform the abstract idea into a patent-eligible invention);
Inventor Holdings, LLC v. Bed Bath & Beyond, Inc., 876 F.3d 1372, 1378
(Fed. Cir. 2017) (holding that sequence of data retrieval, analysis,
modification, generation, display, and transmission was abstract).
Thus, we are not persuaded of error in the Examiner’s determination
that the additional elements of claim 1, considered individually and as an
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ordered combination, do amount to significantly more than the abstract idea
itself.
We sustain the Examiner’s rejection under 35 U.S.C. § 101 of
independent claim 1 and thus also of claims 2–20.

CONCLUSION
The Examiner’s decision to reject claims 1–20 is sustained.
In summary:
Claims
Rejected
35 U.S.C. § References/
Basis
Affirmed Reversed
1–20 101 Eligibility 1–20

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