Ex Parte ALTBERG et al

Patent Trial and Appeal Board

Sep 28, 2018

11678032 (P.T.A.B. Sep. 28, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
11/678,032 02/22/2007
22807 7590 10/02/2018
GREENSFELDER HEMKER & GALE PC
SUITE 2000
10 SOUTH BROADWAY
ST LOUIS, MO 63102
FIRST NAMED INVENTOR
Ebbe ALTBERG
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.
055900/469167 1994
EXAMINER
ALVAREZ, RAQUEL
ART UNIT PAPER NUMBER
3688
NOTIFICATION DATE DELIVERY MODE
10/02/2018 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):
ipdocket@greensfelder.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte EBBE AL TBERG, SCOTT FABER, RON HIRSON,
SEAN VAN DER LINDEN, and PAUL G. MANCA
Appeal2017-005430
Application 11/678,032
Technology Center 3600
Before JUSTIN BUSCH, MATTHEW J. McNEILL, and
JASON M. REPKO, Administrative Patent Judges.
REPKO, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants 1 appeal under 35 U.S.C. § 134(a) from the Examiner's
rejection of claims 1-11, 13, and 15-24. App. Br. 8. 2 Claims 12 and 14
were canceled. We have jurisdiction under 35 U.S.C. § 6(b ). We affirm.
1 Appellants identify the real party in interest as YP Holdings LLC, the
ultimate parent company of Y ellowPages.com LLC. App. Br. 1.
2 Throughout this opinion, we refer to the Final Rejection ("Final Act.")
mailed March 15, 2016; the Appeal Brief ("App. Br.") filed September 1,
2016; the Examiner's Answer ("Ans.") mailed December 15, 2016; and the
Reply Brief ("Reply Br.") filed February 15, 2017.
Appeal2017-005430
Application 11/678,032
THE INVENTION
Appellants' invention tracks communication leads generated from
advertisements. Spec. ,r 12. One embodiment provides advertisements on
behalf of a party, counts phone calls delivered via advertisements, and
charges the party using the count. Id. ,r,r 13, 52.
Claim 1 is reproduced below:
1. A method to make and track connections for voice-based
communications, comprising:
transmitting, by a first server of a communication
connection system, a document to generate a user interface to
receive specifications for a first set of parameters of an
advertisement;
generating the advertisement by the communication
connection system with an advertisement creation module based
at least in part on the specifications for the first set of parameters
for the advertisement, the advertisement for provisioning to
customers on behalf of a specific party, and storing the
advertisement in a database of the communication connection
system;
transmitting, by the communication connection system,
the advertisement to a third party server for provision to
customers on behalf of the specific party;
receiving, by receiving equipment of the communication
connection system, communications responsive to the
advertisement over a communication network;
establishing communication connections for the
communications, via switching equipment of the communication
connection system, with a communication reference of the
specific party;
tracking the communication connections by the switching
equipment, the tracking comprising counting voice-based
communication leads that are delivered via the advertisement;
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Application 11/678,032
charging an account of the specific party maintained by
the communication connection system a subscription fee for a
pre-determined time period wherein the subscription fee is based
on delivering a pre-determined number of the voice-based
communication leads via the advertisement within the pre-
determined time period,
and the subscription fee is further based on past
performance of advertisements in a particular category; and
during the pre-determined time period, automatically
changing by the communication connection system a second set
of parameters for the advertisement based at least in part on
comparing a first metric of the established communication
connections to a threshold and determining whether the threshold
is satisfied, wherein the threshold is based at least in part on the
pre-determined number of the voice-based communication leads;
and
transmitting the advertisement for provisioning to
customers on behalf of the specific party based at least in part on
the second set of parameters for the advertisement, the
advertisement transmitted to the customers via respective voice
over internet protocol calls.
THE REJECTION
Claims 1-11, 13, and 15-24 stand rejected under 35 U.S.C. § 101 as
directed to patent-ineligible subject matter. Final Act. 2--4.
ANALYSIS
The Examiner rejects representative3 claim 1 under 35 U.S.C. § 101
because the claim is directed to an abstract idea of "tracking advertiser
communication leads" and lacks an inventive concept sufficient to transform
3 Appellants argue claims 1-11, 13, and 15-24 as a group. See App. Br. 8-
28. We select independent claim 1 as representative of claims 1-11, 13, and
15-24. See 37 C.F.R. § 4I.37(c)(l)(iv).
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the claimed invention into patent-eligible subject matter. Final Act. 2--4. As
discussed below, Appellants have not persuaded us that the Examiner erred
in this regard.
I
The Supreme Court's two-step framework guides our analysis. See
Alice Corp. Pty. Ltd. v. CLS Bankint'l, 134 S. Ct. 2347, 2355 (2014).
According to Alice step one, "[ w ]e must first determine whether the claims
at issue are directed to a patent-ineligible concept," such as an abstract idea.
Id.
We agree with the Examiner that claim 1 is directed to the abstract
idea of "tracking advertiser communication leads." Final Act. 2. We are
unpersuaded by Appellants' argument that the Examiner has oversimplified
the claims in applying Alice step one. App. Br. 10-13.
Claim 1 recites a method to make and track connections for voice-
based communications, e.g., phone calls. See Spec. ,r 97. The method
overcomes the limitations of performance-based advertising. Id. ,r 2. In
performance-based advertising, the advertiser pays for only a measurable
event directly resulting from a consumer viewing the advertisement. Id. ,r 9.
According to the Specification, this type of advertising typically requires a
web page. Id. But some advertisers do not have a web page, or if they do,
their web page may be unable to capture a web visitor's value. Id. Such
advertisers are unable or unwilling to participate in traditional performance-
based advertising. Id.
To address this issue, the claimed method provides advertisements to
customers on behalf of a party and then counts the phone calls delivered via
the advertisements. Id. ,r,r 52, 372. For example, the advertisement may
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include a unique phone number. Id. ,r 52. To count the phone calls, the
system monitors calls to that unique number. Id. A fee can be based on the
number of leads generated from the advertising. See, e.g., id. ,r,r 3 77, 3 80.
Appellants' claimed solution is not rooted in a technical improvement.
Rather, the recited method involves counting and tracking as an alternative
to a web page. See id. ,r,r 9, 368-372. In this way, claim 1 's focus is
advertising and tracking the resulting leads. Accord Final Act. 2.
The recited concept is not "internet centric" in a way that affects
whether the claims are directed to an abstract idea. See App. Br. 16-17;
Reply Br. 4--9. Apart from the limitations drawn to making and tracking the
connections, claim 1 recites a "communication connection system" having
"switching equipment." The claim, however, does not recite improvements
to this system or its switching equipment. Here, Appellants merely claim a
generic communication-connection system.
The tracking itself is not rooted in computer technology, contrary to
Appellants' argument (see App. Br. 23; Reply Br. 4--9). According to the
Specification, "[ t ]racking phone calls may include publishing a unique
phone number that is different from the advertiser's standard phone number"
and counting calls to that number. Id. ,r 97; see also id. ,r,r 55, 372. In this
way, the claimed method may provide an alternative for advertisers able to
participate in typical webpage-based advertising. Id. ,r 9. Indeed, claim 1
broadly and abstractly recites tracking and counting these phone calls
without reciting how this is accomplished.
Appellants note that a general-purpose computer cannot carry out all
the recited steps. Reply Br. 3. According to Appellants, the claims are
directed to a communication-connection system for securely establishing
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and tracking connections for voice-based communications. App. Br. 10-13,
18, 23, 27; Reply Br. 6. For example, the claimed equipment could include
telephone-switching equipment. Spec. ,r 162.
But such a minimal limitation, by itself, does not remove the claim
from the realm of abstract ideas. For example, the Federal Circuit
determined that claims directed to "collecting data" were abstract even
though an "automated digitizing unit" collected the data. Two-Way Media
Ltd. v. Comcast Cable Commc 'ns, 874 F.3d 1329, 1337-38 (Fed. Cir. 2017).
Similarly, claim 1 's generically recited components do not shift the claim's
focus away from advertising. Final Act. 2.
Indeed, software "can make non-abstract improvements to computer
technology just as hardware improvements can." Enfzsh, LLC v. Microsoft
Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016). But we must consider whether
the claim's focus is on a "specific asserted improvement in computer
capabilities ... , or, instead on a process that qualifies as an 'abstract idea'
for which computers are merely invoked as a tool." Id. at 1336. Here,
Appellants invoke computers as a tool. As the Examiner points out, claim
1 's communication-connection system merely serves to transmit and provide
the advertisements and carry out the abstract idea. See Final Act. 5-6.
The Examiner identifies other cases involving concepts related to
advertising that were held to be abstract. Ans. 2. For example, the
Examiner finds that Appellants' claims are similar to those found to be
abstract in Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709 (Fed. Cir. 2014).
Id. The Ultramerical claims recited limitations that added a degree of
particularity----e.g., "consulting an activity log"-but the majority of the
limitations described only the abstract idea relating to the advertising
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concept. Ultramerical, 772 F.3d at 715, cited in Ans. 3. Similarly, claim 1
recites a user interface and some equipment, but claim 1 's focus is on
tracking advertiser-communication leads, not improvements to the interface
or equipment. See Final Act. 4.
Appellants argue that the claims are unlike those in Cyberfone
Systems, LLC v. CNN Interactive Group, Inc., 558 F. App'x. 988
(Fed. Cir. 2014) (unpublished). App. Br. 13-17; Reply Br. 1-2. Appellants
point to the Examiner Guidance to support their argument that the Examiner
erred. Reply Br. 2. Notably, the quoted portion of that Guidance permits
Examiners to apply Cyberfone at least when the facts match. Id. And the
Examiner has made findings regarding why the facts in Cyberfone match
those here. See Final Act. 2-3. Yet Appellants have not provided a
persuasive rebuttal to the Examiner's findings. See App. Br. 13-17.
Instead, Appellants merely summarize the claims in Cyberfone and
reproduce the claims in this case. Id. In doing so, Appellants have not
persuasively explained why the Examiner's reliance on Cyberfone is in
error. Id. at 13-17; Reply Br. 1-2. Moreover, we note that the Examiner
has also cited other cases, such as Ultramerical, as discussed above. See
Ans. 2. That is, the Examiner's reliance on Cyberfone is cumulative and in
the alternative. See id. So, any error in this regard does not change the
result here. For the reasons discussed above, we are unpersuaded that the
Examiner erred in concluding that claim 1 is directed to an abstract idea.
II
Because claim 1 is "directed to an abstract idea," we consider the
claim limitations "both individually and 'as an ordered combination' to
determine whether the additional elements 'transform the nature of the
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claim' into a patent-eligible application." Alice, 134 S. Ct. at 2355 (quoting
Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 78-79
(2012)) (emphasis added). That is, we must ask in Alice step two "[w]hat
else is there in the claims before us?" Mayo, 566 U.S. at 78.
The Supreme Court has described this analysis "as a search for an
'inventive concept."' Alice, 134 S. Ct. at 2355. The "inventive concept"
cannot be the abstract idea itself. See Mayo, 566 U.S. at 72-73 (requiring
"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' ( emphasis
added)).
Appellants argue that "both the elements recited and the combination
of the recited elements are both essential to the successful implementation of
the claims." App. Br. 22. Appellants contend that the claimed system is
rooted in technology like the system in DDR Holdings, LLC v. Hotels.com,
L.P., 773 F.3d 1245 (Fed. Cir. 2014). Id. at 25; Reply Br. 4--9.
But here, there is no indication that the recited computing devices
produce "a result that overrides [their] routine and conventional" use. DDR
Holdings, LLC, 773 F.3d at 1258. In particular, the Examiner concludes that
claim 1 's additional elements are no more than mere instructions to
implement an abstract idea on a computer. Final Act. 3. Apart from the
abstract idea itself, the claims recite a communication-connection system, a
server, a database, receiving equipment, a network, and switching
equipment. The Examiner finds that these components are generic. See id.;
Ans. 2. Although Appellants argue this finding lacks support (App. Br. 23-
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24 ), we note that the Examiner has supported this argument by citing the
Specification. See Ans. 2 (Spec. ,r,r 49, 51, 74, Figs. 1, 2, 11).
For instance, the Examiner-cited paragraphs show that the invention is
not tied to a particular communications path. See Spec. ,r,r 49, 51. In one
embodiment, clients are coupled to a wide area network (WAN) 14, such as
the Internet, via a communications path. Id. ,r 49. Advertisers may be
coupled to WAN 14, but this is "purely optional." Id. ,r 51. The
communications path may be "a conventional telephone network," VoIP
technology, or "switches of a public telephone network." Id. The advertiser
could also use email, chat, instant message, VoIP clients, or other media
channels. Id. Furthermore, the hardware used to implement the method is a
generic computer system. Id. ,r 74. As further shown by the Examiner-cited
paragraphs, the recited method does not use a particular communication
channel or computer system. See id. ,r,r 49, 51, 74. Instead, the recited
components merely execute the abstract idea. See id.
Appellants argue that McRO, Inc. v. Bandai Namco Games America
Inc., 837 F.3d 1299 (Fed. Cir. 2016) supports the eligibility of claim 1.
Reply Br. 9-13. Appellants contend that claim 1 provides a specific
improvement to a computer's capabilities. App. Br. 27. According to
Appellants, claim 1 achieves "an improved technological result over
conventional industry practices." Reply Br. 10. In Appellants' view, the
recited method involves a nonobvious solution with a specific combination
of features that overcomes the "strict and unaccommodating" system
imposed by the World Wide Web's infrastructure. Id. at 11. In particular,
Appellants contend that the claimed configuration minimizes or eliminates
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inefficiencies associated with an unsecure and erroneous communication
connection. Id. at 12-13.
The claims in McRO recited a specific way to improve three-
dimensional animation. 837 F.3d at 1315. By contrast, Appellants' claims
are broadly functional and result-oriented. For example, claim 1 recites
tracking without reciting a particular technological improvement or
inventive computer-based solution for doing so. To be sure, claim 1 does
add some particularity to how the recited accounts are charged a subscription
fee and when to change the advertisement parameters. But these limitations
merely narrow the abstract idea itself. The claims and the Specification
show that these limitations require no improved computer resources that
Appellants claim to have invented. Rather, the limitations----considered both
individually and as an ordered combination-merely invoke already
available computers using their available functions as tools to execute the
abstract idea. Ans. 2 (citing Spec. ,r,r 49, 51, 74, Figs. 1, 2, 11).
Therefore, Appellants have not persuaded us of error in the rejection
of representative claim 1 under 35 U.S.C. § 101. We sustain the Examiner's
rejection of claim 1 and claims 2-11, 13, and 15-24, which Appellants argue
together with claim 1. See App. Br. 8-28.
DECISION
We affirm the Examiner's rejection of claims 1-11, 13, and 15-24.
No time period for taking any subsequent action in connection with
this appeal maybe extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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