Arvind Gupta et al.Download PDFPatent Trials and Appeals BoardAug 1, 201914260146 - (D) (P.T.A.B. Aug. 1, 2019) Copy Citation 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. 14/260,146 04/23/2014 Arvind Gupta 9444P004 3915 151312 7590 08/01/2019 Vungle, Inc./ Jaffery Watson Mendonsa & Hamilton 483 Hyland Drive Castle Rock, CO 80108 EXAMINER REINHARDT, RICHARD G ART UNIT PAPER NUMBER 3682 NOTIFICATION DATE DELIVERY MODE 08/01/2019 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): april.piepenburg@jwmhlaw.com eofficeaction@appcoll.com jeremy.schweigert@jwmhlaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte ARVIND GUPTA, WAYNE CHAN, RAYMOND MYERS, BEN REITER, and ROLANDO ABARCA ____________ Appeal 2018-003485 Application 14/260,146 Technology Center 3600 ____________ Before JAMES B. ARPIN, IRVIN E. BRANCH, and JOSEPH P. LENTIVECH, Administrative Patent Judges. LENTIVECH, Administrative Patent Judge. DECISION ON APPEAL Pursuant to 35 U.S.C. § 134(a), Appellants1 appeal from the Examiner’s decision to reject claims 1–26, the only claims pending in the Application on Appeal. We have jurisdiction over the pending claims under 35 U.S.C. § 6(b). We affirm. 1 According to Appellants, the real party-in-interest is Vungle Inc. App. Br. 2. Appeal 2018-003485 Application 14/260,146 2 STATEMENT OF THE CASE Appellants’ Claimed Invention Appellants’ invention generally relates to “systems and methods for providing advertising services to devices.” Spec. ¶ 3. Claim 1, which is illustrative of the claimed invention, reads as follows: 1. An advertising system for improved delivery of video ads to mobile devices, comprising: an ad store to store video ads of ad campaigns; a storage medium to store one or more software programs; and an ad server having dedicated ad functionality including processing logic coupled to the storage medium, the processing logic is configured to execute instructions of at least one software program to: receive an advertising request from a mobile device upon the mobile device having an ad play event for an ad campaign to display or play a video ad of the ad campaign in-app within an initiated content software application on a graphical user interface of the mobile device, wherein the advertising request includes a publisher of the initiated content software application and placement information for placement of the video ad of the ad campaign in-app; determine, with the processing logic of the ad server, a bandwidth and a corresponding latency for a network connection including a wide area network between the advertising system and the mobile device; and determine, with the processing logic of the ad server, whether at least one video ad stored in an ad cache store on the mobile device or at least one streamed different type of video ad from the ad store will be displayed on the mobile device with ad streaming functionality of the mobile device in a timely manner for the ad play event based on configurable parameters including the bandwidth for the network connection between Appeal 2018-003485 Application 14/260,146 3 the advertising system and the mobile device for improved bandwidth utilization, a service level agreement of the publisher for latency in delivering the at least one video ad for display on the mobile device, and availability of at least one different type of streamed video ad from the ad store that is more likely to convert than the at least one video ad stored in the ad cache store on the mobile device. Rejections Claims 1–26 stand rejected under 35 U.S.C. § 101 because the claimed subject matter is judicially-excepted from patent eligibility under 35 U.S.C. § 101. Final Act. 2–5. Claims 1, 6, 10, 14, and 25 stand rejected under 35 U.S.C. § 112(b) as being indefinite. Final Act. 6–7. Claims 1–26 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over the combination of Herz et al. (US 6,571,279 B1; issued May 27, 2003) (“Herz”) and Dow et al. (US 8,561,104 B1, issued Oct. 15, 2013) (“Dow”). Final Act. 10–17. ANALYSIS Rejection under 35 U.S.C. § 101 PRINCIPLES OF LAW An invention is patent-eligible if it claims a “new and useful process, machine, manufacture, or composition of matter.” 35 U.S.C. § 101. However, the U.S. Supreme Court has long interpreted 35 U.S.C. § 101 to include implicit exceptions: “[l]aws of nature, natural phenomena, and abstract ideas” are not patentable. E.g., Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 216 (2014) (citations omitted). Appeal 2018-003485 Application 14/260,146 4 In determining whether a claim falls within an excluded category, we are guided by the Court’s two-step framework, described in Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66 (2012) and Alice. Alice, 573 U.S. at 217–18 (citing Mayo, 566 U.S. at 75–77). 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, 69 (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 183 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))). 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 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 Appeal 2018-003485 Application 14/260,146 5 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. (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 (internal citation 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. (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 GUIDANCE The USPTO recently published revised guidance on the application of § 101. USPTO, 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (“Memorandum”). 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 Appeal 2018-003485 Application 14/260,146 6 (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)). See Memorandum, 84 Fed. Reg. at 52, 54–55. 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, conventional” in the field (see MPEP § 2106.05(d)); or (4) simply appends well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception. See Memorandum, 84 Fed. Reg. at 56. OUR REVIEW Appellants argue claims 1–9, 18, 19, and 22–24 as a group and state that claim 1 is the representative claim of this first group. App. Br. 8. Accordingly, claims 2–9, 18, 19, and 22–24 stand or fall with claim 1. 37 C.F.R. § 41.37(c)(1)(iv). Although Appellants purport to argue claims 10– 17, 20, 21, 25, and 26 as a group, and state that claim 10 is representative of this second group (App. Br. 8), Appellants’ arguments with respect to claim 10 are substantially similar to certain arguments provided with respect to claim 1. Compare App. Br. 10–11 with App. Br. 14–15. As such, claims 10–17, 20, 21, 25, and 26 also stand or fall with claim 1. Alice/Mayo—Step 1 (Abstract Idea) STEP 2A, PRONG 1 (DOES THE CLAIM RECITE A JUDICIAL EXCEPTION?) Under “Step 2A, Prong One” of the analysis, we determine whether the claim recites a judicial exception. Memorandum, 84 Fed. Reg. at 54. Appeal 2018-003485 Application 14/260,146 7 The Examiner finds, and we agree, the claim recites mental processes that can be performed in the human mind or by a person using pen and paper. Final Act. 2–3, 5 (rejecting claims 1–5, 18, and 22–24 “for substantially the same reasons as claims 10–13 and 20.”). In particular, claim 1 recites: receiv[ing] an advertising request from a mobile device upon the mobile device having an ad play event for an ad campaign to display or play a video ad of the ad campaign in- app within an initiated content software application on a graphical user interface of the mobile device, wherein the advertising request includes a publisher of the initiated content software application and placement information for placement of the video ad of the ad campaign in-app; determin[ing], with the processing logic of the ad server, a bandwidth and a corresponding latency for a network connection including a wide area network between the advertising system and the mobile device; and determin[ing], with the processing logic of the ad server, whether at least one video ad stored in an ad cache store on the mobile device or at least one streamed different type of video ad from the ad store will be displayed on the mobile device with ad streaming functionality of the mobile device in a timely manner for the ad play event based on configurable parameters including the bandwidth for the network connection between the advertising system and the mobile device for improved bandwidth utilization, a service level agreement of the publisher for latency in delivering the at least one video ad for display on the mobile device, and availability of at least one different type of streamed video ad from the ad store that is more likely to convert than the at least one video ad stored in the ad cache store on the mobile device. We agree with the Examiner that these steps recite mental processes because “a human, using the mind or pen and paper, can receive an ad request, determine bandwidth and latency for a network connection, and make a determination of whether at least one stored or streamed ad will be displayed Appeal 2018-003485 Application 14/260,146 8 in a timely manner based on certain parameters.” Final Act. 3. Claim 1, therefore, recites mental processes, a category of abstract ideas. Memorandum, 84 Fed. Reg. at 52; see also Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353–54 (Fed. Cir. 2016) (explaining that “analyzing information by steps people go through in their minds” is a mental process within the abstract-idea category); Cellspin Soft, Inc. v. Fitbit, Inc., 927 F.3d 1306, 1315 (Fed. Cir. 2019) (“As the district court recognized, we have consistently held that similar claims reciting the collection, transfer, and publishing of data are directed to an abstract idea.”; citing, with approvel, Elec. Power Grp., 830 F.3d at 1353). Further, claim 1 is directed generally to providing advertising services to a device by determining certain parameters associated with the device and selecting an advertisement to provide to the device based on the determination. This is consistent with how Appellants describe the claimed invention. See Spec. ¶¶ 3 (“Embodiments of the invention are generally related to systems and methods for providing advertising services to devices.”), 18 (“The system is designed to deliver the most relevant and highest converting ads to devices using data about the device behavior and the configurable parameters.”). Providing advertising services is a commercial interaction (an advertising or marketing activity) and, therefore, an abstract idea because it falls within the certain method of organizing human activity category in our Guidance. See Memorandum, 84 Fed. Reg. at 52; see also Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed. Cir. 2014) (holding that claims reciting showing an advertisement before delivering content were directed to an abstract idea); Morsa v. Facebook, Inc., 77 F. Supp. 3d 1007, 1013 (C.D. Cal. 2014), aff’d, 622 F. App’x 915 Appeal 2018-003485 Application 14/260,146 9 (Fed. Cir. 2015) (concluding claims directed to targeted advertising were ineligible abstract ideas without significantly more); Quantum Stream Inc. v. Charter Commc’ns, Inc., 309 F. Supp. 3d 171, 186 (S.D. N.Y. 2018) (concluding claims were “directed at the abstract idea of customized advertising”); Intellectual Ventures I LLC v. Capital One Bank (USA), 792 F.3d 1363, 1369–71 (Fed. Cir. 2015) (concluding that claims directed to customizing media content based on navigation history or known information about a user and contextual information were abstract). For the foregoing reasons, we find claim 1 recites one or more abstract ideas. STEP 2A—PRONG 2 (INTEGRATION INTO PRACTICAL APPLICATION)2 Under “Step 2A, Prong Two,” we determine whether the claim as a whole integrates the recited judicial exception into a practical application of the exception. Memorandum, 84 Fed. Reg. at 54. Claim 1 recites the following additional elements: an ad store to store video ads of ad campaigns; a storage medium to store one or more software programs; and an ad server having dedicated ad functionality including processing logic coupled to the storage medium. 2 We acknowledge that some of the considerations at Step 2A, Prong 2, properly may be evaluated under Step 2 of Alice (Step 2B of the Office guidance). For purposes of maintaining consistent treatment within the Office, we evaluate them under Step 1 of Alice (Step 2A of the revised guidance). See Memorandum, 84 Fed. Reg. at 55 n.25, 27–32. Appeal 2018-003485 Application 14/260,146 10 We find these additional limitations fail to integrate the judicial exception into a practical application. For example, the claims do not: (1) improve the functioning of a computer or other technology, (2) are not applied with any particular machine (except for a generic computer), (3) do not effect a transformation of a particular article to a different state, and (4) are not applied in any meaningful way beyond generally linking the use of the judicial exception to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception. See Memorandum, 84 Fed. Reg. at 54–55; MPEP §§ 2106.05(a)– (c), (e)–(h). The additional elements simply allow a generic computer to perform the claimed operations using generic computer functions. See Spec. ¶ 24 (“The advertising operational flow may be executed by an apparatus or system, which includes processing circuitry or processing logic. The processing logic may include hardware (circuitry, dedicated logic, etc.), software (such as is run on a general purpose computer system or a dedicated machine or a device), or a combination of both.”). The claim recites generic computer components, such as, for example, “an ad store,” “a storage medium,” “an ad server,” and “processing logic,” that are merely used as tools to facilitate the claimed steps. See Bascom Glob. Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1348 (Fed. Cir. 2016). Appellants argue claim 1 is similar to the claims in McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299 (Fed. Cir. 2016) because “claim 1 is directed to a specific improvement in video ad delivery to a mobile device based on ‘rules of a particular type’ that did not merely require a computer to automate conventional activity.” App. Br. 10. Appellants argue: Appeal 2018-003485 Application 14/260,146 11 The claimed rules themselves, and not the mere use of a computer, improved an existing technology. For example, the claimed rules of “determine, with the processing logic of the ad server, whether at least one video ad stored in an ad cache store on the mobile device or at least one streamed different type of video ad from the ad store will be displayed on the mobile device with ad streaming functionality of the mobile device in a timely manner for the ad play event based on configurable parameters including the bandwidth for the connection between the advertising system and the mobile device for improved bandwidth utilization, a service level agreement of the publisher for latency in delivering the at least one video ad for display on the mobile device, and availability of at least one different type of streamed video ad from the ad store that is more likely to convert than the at least one video ad stored in the ad cache store on the mobile device” improve upon video ad delivery to mobile device. App. Br. 10–11. We do not find Appellants’ arguments persuasive. The limitation argued by Appellants as providing the specific improvement in video ad delivery is one that we point to above as reciting a mental process—an abstract idea. A limitation as this one, which recites solely an abstract idea, fails to integrate the abstract idea into a practical application of that abstract idea. See Alice, 573 U.S. at 217–18. We are not persuaded by Appellants’ argument that “the claimed genus of rule[s] in claim 1 does not cover all rules-based approaches to video ad delivery to mobile devices due to the ‘limited’ and ‘specific’ nature of the recited claim language.” App. Br. 11. Claims that are otherwise directed to patent-ineligible subject matter cannot be saved by arguing the absence of complete preemption. “While preemption may signal patent ineligible subject matter, the absence of complete preemption does not demonstrate patent eligibility.” Ariosa Diagnostics, Inc. v. Sequenom, Inc., Appeal 2018-003485 Application 14/260,146 12 788 F.3d 1371, 1379 (Fed. Cir. 2015). “Where a patent’s claims are deemed only to disclose patent ineligible subject matter under the Mayo framework, as they are in this case, preemption concerns are fully addressed and made moot.” Id. We also are not unpersuaded that the claims are similar to the claims in DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014). App. Br. 11–13. We find no indication in the Specification, nor do Appellants direct us to sufficient indications, that the operations recited by the claims invoke any inventive programming, require any specialized computer hardware or other inventive computer components, i.e., a particular machine, or that the claimed invention is implemented using other than generic computer components (e.g., processor, database, computer readable storage medium, module) to perform generic computer functions (receiving data, analyzing data, and performing an action based on the analysis). See DDR Holdings, 773 F.3d at 1256 (“[A]fter Alice, there can remain no doubt: recitation of generic computer limitations does not make an otherwise ineligible claim patent-eligible.”); see Final Act. 3–4; Ans. 5–6. The claims merely add generic computer components to support the abstract idea, which is insufficient to integrate the judicial exception into a practical application. For the foregoing reasons, claim 1 is directed to a method of organizing human activity (e.g., a fundamental economic practice), i.e., an abstract idea, and does not integrate the judicial exception into a practical application. Appeal 2018-003485 Application 14/260,146 13 Alice/Mayo—Step 2 (Inventive Concept) STEP 2B Turning to the second step of the Alice inquiry, we now look to whether claim 1 contains any “inventive concept” or adds anything “significantly more” to transform the abstract concept into a patent-eligible application. Alice, 573 U.S. at 216; Memorandum, 84 Fed. Reg. at 56. We find no element or combination of elements recited in claim 1 that contains an “inventive concept,” such that the claims add anything “significantly more” to transform the abstract concept into a patent-eligible application. The additional elements recited in claim 1 (i.e., the “ad store,” the “storage medium,” the “ad server,” and the “processing logic”) are described and claimed as generic computer components recited at a high level of generality and fail to cause the claim to recite significantly more than the abstract idea. See Spec. ¶¶ 24, 28, 44–50; see also Mortgage Grader, Inc. v. First Choice Loan Servs. Inc., 811 F.3d 1314, 1324–25 (Fed. Cir. 2016) (generic computer components such as an “interface,” “network,” and “database” fail to satisfy the inventive concept requirement). The additional elements simply allow a generic computer to perform the claimed operations using generic computer functions. See Spec. ¶ 24. To the extent Appellants argue that claims recite novel and non- obvious subject matter and, therefore, recite significantly more than the abstract idea (App. Br. 11–12), we disagree. A finding of novelty or non- obviousness does not require the conclusion that the claimed subject matter is patent-eligible. See SAP Am., Inc. v. InvestPic, LLC, 898 F.3d 1161, 1163 (Fed. Cir. 2018) (It is not “enough for subject-matter eligibility that claimed techniques be novel and nonobvious in light of prior art, passing muster Appeal 2018-003485 Application 14/260,146 14 under 35 U.S.C. §§ 102 and 103.”) Although the second step in the Mayo/Alice framework is termed a search for an “inventive concept,” the analysis is not an evaluation of novelty or non-obviousness, but, rather, is a search for “an element or combination of elements that is ‘sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the [ineligible concept] itself.”’ Alice, 573 U.S. at 216. “Groundbreaking, innovative, or even brilliant discovery does not by itself satisfy the § 101 inquiry.” Ass’n for Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 591 (2013). A novel and non-obvious claim directed to a purely abstract idea is, nonetheless, patent-ineligible. See Mayo, 566 U.S. at 90; see also Diehr, 450 U.S. at 188–89 (“The ‘novelty’ of any element or steps in a process, or even of the process itself, is of no relevance in determining whether the subject matter of a claim falls within the § 101 categories of possibly patentable subject matter.”). For the foregoing reasons, we find claim 1 is directed to a patent- ineligible abstract concept, and does not recite something “significantly more” under the second prong of the Alice analysis. Accordingly, we sustain the Examiner’s rejection of claim 1 and claims 2–26, which fall with claim 1, under 35 U.S.C. § 101. Rejection under 35 U.S.C. § 112(b) Regarding the rejection of claims 1, 6, 10, 14, and 25 under 35 U.S.C. § 112(b), Appellants direct their arguments to claim 1 and state that claims 6, 10, 14, and 25 stand or fall with claim 1. App. Br. 15. Appeal 2018-003485 Application 14/260,146 15 “At Least One Streamed Different Type Of Video Ad” The Examiner finds “at least one streamed different type of video ad,” as recited in claim 1, is unclear and, therefore, renders the claim indefinite. Final Act. 6; Ans. 7–8. The Examiner finds “the different ‘type’ of video ad could be referring to different genre types of ads” and that “[a]nother way to [interpret] different ‘type’ could be the different video formats that computers use.” Ans. 7. The Examiner further finds: One can also not be certain what the claim is attempting to refer to being “different” than. One way to try and interpret this is that the “at least one streamed different type of video ad” just means to be different from the “at least one video ad stored in an ad cache store.” But the claim language does NOT say “at least one streamed different type of video ad that is different than the at least one video ad stored in an ad cache store.” So we do not fully know what it is supposed to be different than. Ans. 8. Appellants contend “at least one streamed different type of video ad” “indicates that the at least one streamed video ad is different (i.e., not the same video ad) than the at least one video ad stored in the ad cache store.” App. Br. 16. “It is of utmost importance that patents issue with definite claims that clearly and precisely inform persons skilled in the art of the boundaries of protected subject matter.” MPEP § 2173. During prosecution “[a] claim is indefinite when it contains words or phrases whose meaning is unclear.” MPEP § 2173.05(e). Language in a claim is unclear if it is “ambiguous, vague, incoherent, opaque, or otherwise unclear in describing and defining the claimed invention . . . .” In re Packard, 751 F.3d 1307, 1311 (Fed. Cir. 2014), or if it is “is amenable to two or more plausible claim constructions Appeal 2018-003485 Application 14/260,146 16 . . . .” Ex Parte Miyazaki, 89 USPQ2d 1207, 1211 (BPAI 2008) (precedential). However, “[t]he requirement, applied to the real world of modern technology, does not contemplate in every case a verbal precision of the kind found in mathematics.” Packard, 751 F.3d at 1313. We agree with the Examiner that “different type” may refer to different genres as well as different formats. However, “[b]readth of a claim is not to be equated with indefiniteness.” MPEP § 2173.04 (citing In re Miller, 441 F.2d 689, 693 (CCPA 1971)). Accordingly, we find the Examiner erred in determining the limitation “at least one streamed different type of video ad,” as recited in claim 1, renders the claim indefinite. Determine . . . Whether At Least One Video Ad Stored In An Ad Cache Store On The Mobile Device Or At Least One Streamed Different Type Of Video Ad From The Ad Store Will Be Displayed On The Mobile Device The Examiner finds the limitation “determine . . . whether at least one video ad stored in an ad cache store on the mobile device or at least one streamed different type of video ad from the ad store will be displayed on the mobile device,” as recited in claim 1, renders the claim indefinite. Final Act. 6; Ans. 8–9. The Examiner reasons: [T]here are multiple ways of interpreting what steps will be performed and how. For example, the “determining . . . whether at least one video ad . . . will be displayed . . .” step can be interpreted as simply determining whether at least one ad, stored or streamed, will be displayed on a mobile device based on how it is written. It does not have to be an “either/or” type of determination. It could also be making a determination between a stored ad and a streamed ad. Final Act. 6. The Examiner further finds “[b]oth of these interpretations fit within the claim language, and each can make sense individually, but they Appeal 2018-003485 Application 14/260,146 17 are mutually exclusive and each creates a different process and different end-results.” Ans. 9. Appellants contend: This limitation determines whether at least one video ad stored in an ad cache store on the mobile device or at least one streamed different type of video ad from the ad store will be displayed on the mobile device. In other words, at least one video ad stored in ad cache store will be displayed on the mobile device or at least one streamed different type of video ad from the ad store will be displayed on the mobile device based on the determination of the processing logic of the ad server. App. Br. 16. We find Appellants’ arguments unpersuasive. We find the claim language can be construed as follows: (1) the determination including a selection of a video ad from a group that includes at least one video ad stored in an ad cache store on a mobile device and at least one streamed different type of video ad from an ad store; or (2) determining one of: (a) whether at least one video ad stored in an ad cache store on a mobile device will be displayed on the mobile device; or (b) whether at least one streamed different type of video ad from an ad store will be displayed on the mobile device. The first construction essentially requires a selection or choice between at least one of at least one video ad stored in the ad cache store and at least one streamed different type of video ad from the ad store. The second construction requires a single, isolated determination—e.g., whether the at least one video ad stored in the ad cache store will be displayed. Because the claim language is amenable to two or more plausible claim Appeal 2018-003485 Application 14/260,146 18 constructions, we agree with the Examiner that the limitation renders the claim indefinite. Miyazaki, 89 USPQ2d at 1211. In A Timely Manner The Examiner finds “in a timely manner,” as recited in claim 1, renders the claim indefinite. Final Act. 7; Ans. 10–11. The Examiner finds “timely manner” is a relative term that renders the claim indefinite because it “is not defined by the claim, the [S]pecification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention.” Final Act. 7. Appellants argue “in a timely manner” “refers to the video ad being displayed in time for ad play of the ad play event.” App. Br. 16 (citing Spec. ¶ 25). We do not find Appellants’ arguments persuasive. Appellants’ Specification uses the relative terms “in a timely manner” without quantifying or otherwise lending some specificity or precision to what would and would not be considered “timely” in these circumstances. Appellants’ do not identify, nor do we find, any portion of the Specification that discusses a time frame associated with the display of the video ad. When a word of degree is used in a claim, it is incumbent upon Appellants to provide, in the Specification, some standard for measuring that degree. Seattle Box Co. v. Industrial Crating & Packaging, Inc., 731 F.2d 818, 826 (Fed. Cir. 1984). Here, Appellants fail to provide a standard for measuring the timeliness with respect to displaying the video ad. Accordingly, we are not persuaded the Examiner erred. Appeal 2018-003485 Application 14/260,146 19 Conclusion For the foregoing reasons, we sustain the Examiner’s rejection of claim 1, and claims 6, 10, 14, and 25, which fall with claim 1, under 35 U.S.C. § 112(b). Rejections under 35 U.S.C. § 103(a) In view of the indefiniteness of independent claims 1, 6, 10, 14, and 25, we find that it is not possible to ascertain the scope claims 1–26. Accordingly, we find the Examiner’s rejections of claims 1–26 are necessarily based on speculation and assumptions. See In re Steele, 305 F.2d 859, 862 (CCPA 1962) (“[W]e do not think a rejection under 35 U.S.C. § 103 should be based on . . . speculations and assumptions. . . . [I]t is essential to know what the claims do in fact cover.”). Therefore, we decline pro forma to sustain the rejections of claims 1–26. It should be understood, however, that our decision in this regard is based solely on the indefiniteness of the claimed subject matter and does not reflect the adequacy or the inadequacy of the prior art references applied in support of the rejection before us. Once definite claims are presented, the Examiner may apply the same, different, or additional prior art, as the amended claims warrant. DECISION We affirm the Examiner’s rejection of claims 1–26 under 35 U.S.C. § 101. We affirm the Examiner’s rejection of claims 1, 6, 10, 14, and 25 under 35 U.S.C. § 112(b). Appeal 2018-003485 Application 14/260,146 20 We reverse the Examiner’s rejection of claims 1–26 under 35 U.S.C. § 103(a). Because at least one rejection encompassing all claims on appeal is affirmed, the decision of the Examiner is affirmed. 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 Copy with citationCopy as parenthetical citation