Ex Parte Aldrey et al

Patent Trials and Appeals Board

Jun 28, 2019

12971024 - (D) (P.T.A.B. Jun. 28, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/971,024 12/17/2010
25537 7590 07/02/2019
VERIZON
PA TENT MANAGEMENT GROUP
1320 North Court House Road
9th Floor
ARLINGTON, VA 22201-2909
FIRST NAMED INVENTOR
Raul I. Aldrey
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
20100658 7174
EXAMINER
COPPOLA, JACOB C
ART UNIT PAPER NUMBER
3685
NOTIFICATION DATE DELIVERY MODE
07/02/2019 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):
patents@verizon.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RAUL I. ALDREY, DONALD H. REL YEA,
DONALD H. REL YEA, and GEORGE M. HIGA
Appeal2018-005005
Application 12/971,024
Technology Center 3600
Before JENNIFER L. McKEOWN, JASON CHUNG, and CARLL.
SILVERMAN, Administrative Patent Judges.
McKEOWN, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 appeal under 35 U.S.C. § 134(a) from the Examiner's
decision to reject claims 1---6, 13-18, and 25-36. We have jurisdiction under
35 U.S.C. § 6(b).
We affirm.
1 According to Appellants, the real party in interest is Verizon
Communications Inc. App. Br. 3.
Appeal2018-005005
Application 12/971,024
STATEMENT OF THE CASE
Appellants' disclosed and claimed invention
A method including providing content for purchasing and
viewing by users, wherein the purchasing includes buying or
renting content; performing real-time tracking pertaining to the
purchasing and the viewing of content by the users based on the
providing; generating real-time tracking information based on
the performing, wherein the real-time tracking information
identifies a content purchased by the user and a user device used
by the user to view the content; automatically creating a content
promotion or a campaign ad based on the real-time tracking
information; and automatically providing the content promotion
or the campaign ad to the users.
Abstract.
Claim 1 is illustrative of the claimed invention and reads as follows:
1. A method comprising:
providing, by one or more devices of a network, content to
users, wherein the providing includes allowing the users to
purchase and view the content, and wherein purchasing includes
buying or renting the content;
receiving, by the one or more devices, requests to purchase
and view the content in response to the providing;
performing, by the one or more devices, real-time tracking
of real-time metrics that include the purchasing of the content
and subsequent viewing of the purchased content by the users,
the content purchased, including content bought to own and
content rented; the purchased content viewed; format of the
purchased content, including whether the purchased content
included advertisements, whether the purchased content did not
include advertisements, whether the purchased content did allow
replay, and whether the purchased content did not allow replay;
usage patterns including time of viewing of the purchased
content, frequency of viewing of the purchased content, location
associated with viewing of the purchased content; and velocity
of purchasing over time pertaining to a particular content or
group of content, based on the rece 1 vmg;
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Application 12/971,024
compiling, by the one or more devices, information
obtained from the real-time tracking of the real-time metrics;
generating, by the one or more devices, real-time tracking
information based on the performing and the compiling, wherein
the real-time tracking information includes information that
identifies the content purchased by one or more of the users and
one or more user devices used by the one or more of the users to
view the content purchased;
providing, by the one or more devices, to a user via a user
interface, real-time performance information pertaining to the
content purchased based on the generating;
receiving, by the one or more devices, a first user selection
of a promoted content, from the user via the user interface, in
response to the providing of the real-time performance
information;
receiving, by the one or more devices, a second user
selection of the one or more of the users to target a content
promotion, from the user via the user interface;
creating, by the one or more devices, the content
promotion based on the first user selection and the second user
selection, wherein the content promotion includes a price for
purchasing the promoted content, by the one or more of the users,
and wherein the promoted content includes at least one of a first
content with advertisement or a second content without
advertisement; and
providing, by the one or more devices, the content
promotion to the one or more of the users, wherein the providing
of the content promotion includes allowing the one or more of
the users to purchase and view the promoted content.
THE REJECTION
The Examiner rejected claims 1---6, 13-18, and 25-36 under
35 U.S.C. § 101 as directed to patent ineligible subject matter. Final Act.
2--4.
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Application 12/971,024
ANALYSIS
Based on the record before us, we are not persuaded that the Examiner
erred in rejecting claims 1---6, 13-18, and 25-36 as directed to patent
ineligible subject matter.
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
ideas" are not patentable. 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. Kappas, 130 S. Ct. 3218 (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, see above);
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594--95 (1978)); and
mental processes (Gottschalkv. Benson, 409 U.S. 63, 69 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
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such as "molding rubber products" (Diamond v. Diehr, 450 U.S. 175, 192
(1981) ); "tanning, dyeing, making water-proof cloth, vulcanizing India
rubber, smelting ores" (id. at 184 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 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."). Having
said that, 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 tum 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 ( 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
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[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.
The PTO recently published revised guidance on the application of
section 101. USPTO's 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
(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. 2018)).
See Memorandum 52, 55-56. 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 are not
"well-understood, routine, conventional" in the field (see MPEP
§ 2106.05(d)); or
( 4) simply appends well-understood, routine, conventional activities
previously known to the industry, specified at a high level of
generality, to the judicial exception.
See Memorandum 56.
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Analysis - Revised Step 2A
Under the Memorandum, in prong one of step 2A we look to whether
the claims recite a judicial exception. The claimed invention includes
"receiving ... requests to purchase and view the content in response to the
providing;" "performing ... real-time tracking of real-time metrics that
include the purchasing of the content and subsequent viewing of the
purchased content by the users, the content purchased, including content
bought to own and content rented; the purchased content viewed; format of
the purchased content, including whether the purchased content included
advertisements, whether the purchased content did not include
advertisements, whether the purchased content did allow replay, and whether
the purchased content did not allow replay; usage patterns including time of
viewing of the purchased content, frequency of viewing of the purchased
content, location associated with viewing of the purchased content; and
velocity of purchasing over time pertaining to a particular content or group
of content, based on the receiving;" "compiling ... information obtained
from the real-time tracking of the real-time metrics;" "generating ... real-
time tracking information based on the performing and the compiling,
wherein the real-time tracking information includes information that
identifies the content purchased by one or more of the users and one or more
user devices used by the one or more of the users to view the content
purchased;" "receiving ... a first user selection of a promoted content, from
the user via the user interface, in response to the providing of the real-time
performance information;" "receiving ... a second user selection of the one
or more of the users to target a content promotion, from the user via the user
interface;" and "creating ... the content promotion based on the first user
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selection and the second user selection, wherein the content promotion
includes a price for purchasing the promoted content. .. and wherein the
promoted content includes at least one of a first content with advertisement
or a second content without advertisement."
The claimed invention, thus, includes receiving content purchase
requests, performing real time tracking on the purchased content, receiving
content selections from users, and using the collected data to generate
content promotions for one or more users. See also Ans. 4 ( concluding that
the claimed invention "is directed to collecting data, analyzing the data,
displaying certain results of the collection and analysis, and using the results
to customize a targeted content promotion."). We conclude that these
claimed limitations relate to the content sales and advertising for the sale of
content. The claimed invention at least recites sales activities and
advertising, which are certain methods of organizing human activity. As
such, the claimed invention recites an abstract idea. See also, e.g., Electric
Power Group, LLC, v. Alstom, 830 F.3d 1350, 1354 (Fed. Cir. 2016)
( concluding "a process of gathering and analyzing information of a specified
content, then displaying the results, and not any particular assertedly
inventive technology for performing those functions" as directed to an
abstract idea); Intellectual Ventures v. Capital One Bank, 792 F.3d 1363,
1367 (Fed. Cir. 2015) (concluding that "tracking financial transactions to
determine whether they exceed a pre-set spending limit (i.e., budgeting)" is
an abstract idea).
Under prong two of revised step 2A, we determine whether the recited
judicial exception is integrated into a practical application of that exception
by (a) identifying whether there are any additional elements recited in the
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claim beyond the judicial exception(s); and (b) evaluating those additional
elements individually and in combination to determine whether they
integrate the exception into a practical application.
We are not persuaded by Appellants that the claimed invention is
integrated into a practical application. The claimed invention additionally
recites "one or more devices of a network," "real-time-tracking," "providing .
. . content to users, wherein the providing includes allowing the users to
purchase and view the content, and wherein purchasing includes buying or
renting the content;" and "providing ... the content promotion to the one or
more of the users, wherein the providing of the content promotion includes
allowing the one or more of the users to purchase and view the promoted
content." The Examiner concludes that the additional limitations do not add
significantly more to the claimed abstract idea. In particular, the Examiner
determines that one or more devices of the network and the real-time are
field of use limitations and further notes that providing content and receiving
requests to purchase content are routine and conventional activity. Final
Act. 3--4.
Appellants argue that the claimed invention provides a solution to a
technological problem. App. Br. 18; Reply Br. 4--5. Namely, Appellants
explain that conventional approaches to content management use estimates
or forecasts relative to end users, whereas the claimed invention uses "real-
time information pertaining to the purchasing and viewing of content by end
users" to select content promotions for the end user. App. Br. 18. While we
recognize that the claimed invention may provide tracking information to the
content manager, Appellants fail to support persuasively that this is a
technical improvement. Instead, the Specification supports the Examiner's
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determination that the claimed invention performs routine and conventional
activity. See, e.g., Spec. 40 and 52 ( describing generically that the system
components may provide real-time tracking information without any
particularity of how the tracking is performed); see also Spec. 23 ( describing
exemplary user devices and a network at a high level of generality).
We also disagree with Appellants that the recited "user interface"
"improves the functioning of a user interface device relating to usability,
accurate selection of content relative to end users, and time to create a
content promotion." See App. Br. 19. As the Examiner points out, the
claimed invention merely recites "via a user interface" in "performing
routine and convention activity (i.e. providing and receiving data)." Ans. 7.
As such, we are not persuaded that the claimed user interface provides a
technical improvement.
We further note that the step of receiving and providing data and
content is merely insignificant extra-solution activity. The claimed
invention receives, processes, and displays data - this is merely conventional
data gathering and analysis. See MPEP § 2106.05(g); OIP Techs., Inc., v.
Amazon.com, Inc., 788 F.3d 1359, 1363 (Fed. Cir. 2015); Electric Power
GroupLLCv. Alstom S.A., 830F.3d 1350, 1354 (Fed. Cir. 2016). As such,
based on the record before us, we determine that the claimed invention is not
integrated into a practical application.
Analysis - Revised Step 2B
We agree with the Examiner that the additional limitations are not
sufficient to amount to significantly more than the claimed abstract idea.
See Final Act. 3--4. Namely, as the Examiner explains,
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Claim 1 does not include additional elements, when
considered individually and as an ordered combination, that are
sufficient to amount to significantly more than the abstract idea.
The "by one or more devices of a network" and "real-time" are a
field of use limitations that do no transform the claim into
something patent eligible. The first two steps of the claim, i.e.,
(i) providing content to users, wherein the providing includes
allowing the users to purchase and view the content, and wherein
purchasing includes buying or renting the content, and (ii)
receiving requests to purchase and view the content in response
to the providing, represent routine and conventional activity
and/or long prevalent commercial practices, and consequently
add nothing of significance to claim 1. The "via a user interface"
is both a field of use limitation and routine and conventional
activity. The last step, i.e., providing the content promotion to
the one or more of the users, wherein the providing of the content
promotion includes allowing the one or more of the users to
purchase and view the promoted content, is both insignificant
post-solution activity and routine and conventional activity
previously known.
Final Act. 3--4. As discussed above, the Specification discusses the
additional limitations at a high level of generality. See, e.g., Spec. 23, 40
and 53. See also Electric Power Group LLC, 830 F.3d at 1354 (finding that
use of "conventional computer, network, and display technology for
gathering, sending, and presenting the desired information" does not add
significantly more to the claimed abstract idea); Content Extraction and
Transmission, LLC v. Wells Fargo Bank, 776 F.3d 1343, 1347 (Fed. Cir.
2014) (discussing that data collection, recognition, and storage is well-
known); CyberSource Corp. v. Retail Decision, Inc., 654 F.3d 1366, 1375
(Fed. Cir. 2011) ("[T]he incidental use of a computer to perform the
[ claimed process] does not impose a sufficiently meaningful [limitation] on
the claim's scope.").
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Moreover, we note that the step of providing data and content is
merely insignificant extra-solution activity. Namely, the claimed invention
receives, processes, and displays data - this is merely conventional data
gathering and analysis. See MPEP § 2106.05(g); OIP Techs., Inc., 788 F.3d
at 1363; Electric Power Group, 830 F.3d at 1354.
Accordingly, based on the record before us, we are not persuaded of
error in the Examiner's determination that the appealed claims are directed
to patent ineligible subject matter. Therefore, we affirm the Examiner's
decision to reject claims 1---6, 13-18, and 25-36.
DECISION
We affirm the Examiner's decision to reject claims 1---6, 13-18, and
25-36 as directed to patent ineligible subject matter.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l).
AFFIRMED
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