Ex Parte Beyda et al

Patent Trial and Appeal Board

Aug 9, 2017

10981758 (P.T.A.B. Aug. 9, 2017)

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.
10/981,758 11/05/2004 Gil Beyda 00008-0036-02000 8881
114629 7590
Bookoff McAndrews
2401 Pennsylvania Avenue, Suite 450
Washington, DC 20037
EXAMINER
SITTNER, MICHAEL J
ART UNIT PAPER NUMBER
3622
NOTIFICATION DATE DELIVERY MODE
08/11/2017 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):
usptomail @bookoffmcandrews.com
Kross @ bookoffmcandrews.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GIL BEYDA, DONALD J. LOCKER, KRISHNA
BALASUBRAMANIAN, KEVIN M. MCDONALD,
ALBERT E. WENGER, and JOSEPH G. WILSON
Appeal 2016-005734
Application 10/981,75 81
Technology Center 3600
Before ROBERT E. NAPPI, ST. JOHN COURTENAY III, and
SCOTT B. HOWARD, Administrative Patent Judges.
HOWARD, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Final Rejection
of claims 1—10 and 41—46, which constitute all of the claims pending in this
application. Claims 11—40 have been cancelled. App. Br. 42. We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 Appellants identify Advertising.com LLC as the real party in interest.
App. Br. 2.
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Application 10/981,758
THE INVENTION
According to Appellants, the disclosed and claimed invention “relates
generally to audience targeting and more particularly to segment
management and profile synchronization in an audience targeting
environment.” Spec. 13.
Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A computer-implemented method for synchronizing
profile data over a computer network, the method comprising:
receiving, at a server, a set of profile data collected in
association with a client computer;
associating, by the server, the set of profile data with an
authoritative identifier for the client computer;
receiving, at the server, first information from the client
computer, said first information including the authoritative
identifier;
determining, by the server, from the first information that
a profile identifier used to identify client computers is not
associated with the set of profile data;
accessing a database mapping the authoritative identifier
to the client computer to determine that the client computer is
associated with the set of profile data in response to determining
that a profile identifier is not associated with the set of profile
data;
assigning, by the server, a profile identifier to the set of
profile data in the database;
transmitting, to the client computer, a cookie having the
assigned profile identifier;
receiving second information from the client computer,
said second information including the cookie having the assigned
profile identifier;
determining, in response to receiving the second
information, that the assigned profile identifier is associated with
the set of profile data;
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determining that the client computer is a member of a first
audience segment based upon the set of profile data;
transmitting a segment-targeting cookie having a segment
identifier identifying the first audience segment to the client
computer, the segment identifier being different from the
authoritative and assigned profile identifiers;
receiving the segment identifier from the client computer;
and
transmitting targeted content to the client computer
responsive to receiving the segment identifier and based on the
client computer being a member of the first audience segment.
REFERENCES
The prior art relied upon by the Examiner as evidence in rejecting the
claims on appeal is:
Gardenswartz US 6,298,330 B1 Oct. 2,2001
Sears, Jr. et al. (“Sears”) US 2002/0133540 A1 Sept. 19, 2002
REJECTIONS
Claims 1—10 and 41—46 stand rejected under 35 U.S.C. § 101 as being
directed to patent-ineligible subject matter. Final Act. 2—3, 24—26; Adv.
Act. 2.
Claims 1—10, 41, 42, 44, and 45 stand rejected under pre-AIA 35
U.S.C. § 103(a) as being unpatentable over Gardenswartz. Final Act. 3—17,
26; Adv. Act. 2—3.
Claims 43 and 46 stand rejected under pre-AIA 35 U.S.C. § 103(a) as
being unpatentable over Gardenswartz and Sears. Final Act. 18—24.
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ANALYSIS
We have reviewed the Examiner’s rejection in light of Appellants’
arguments that the Examiner erred. In reaching this decision, we have
considered all evidence presented and all arguments made by Appellants.
We are not persuaded by Appellants’ arguments with respect to claims 1—10
and 41—46, and we incorporate herein and adopt as our own: (1) the findings
and reasons set forth by the Examiner in the action from which this appeal is
taken (Final Act. 2—26; Adv. Act. 2—3), and (2) the reasons and rebuttals set
forth in the Examiner’s Answer in response to Appellants’ arguments (Ans.
3—13). We incorporate such findings, reasons, and rebuttals herein by
reference unless otherwise noted. However, we highlight and address
specific findings and arguments for emphasis as follows.
Section 101 Rejection
Patent-eligible subject matter is defined in § 101 of the Patent Act,
which recites:
Whoever invents or discovers any new and useful process,
machine, manufacture, or composition of matter, or any new and
useful improvement thereof, may obtain a patent therefor, subject
to the conditions and requirements of this title.
There are, however, three judicially created exceptions to the broad
categories of patent-eligible subject matter in § 101: laws of nature, natural
phenomena, and abstract ideas. Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 134
S. Ct. 2347, 2354 (2014); Mayo Collaborative Servs. v. Prometheus Labs.,
Inc., 132 S. Ct. 1289, 1293 (2012). Although an abstract idea, itself, is
patent-ineligible, an application of the abstract idea may be patent-eligible.
Alice, 134 S. Ct. at 2355. Thus, we must consider “the elements of each
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claim both individually and ‘as an ordered combination’ to determine
whether the additional elements ‘transform the nature of the claim’ into a
patent-eligible application.” Id. (citing Mayo, 132 S. Ct. at 1297—98). The
claim must contain elements or a combination of elements that are
“sufficient to ensure that the patent in practice amounts to significantly more
than a patent upon the [abstract idea] itself.” Id. (citing Mayo, 132 S. Ct. at
1294).
The Supreme Court set forth a two-part “framework for distinguishing
patents that claim laws of nature, natural phenomena, and abstract ideas
from those that claim patent-eligible applications of those concepts.” Id. at
2355.
First, we determine whether the claims at issue are directed to
one of those patent-ineligible concepts. [Mayo,] 132 S.Ct., at
1296—1297. If so, we then ask, “[w]hat else is there in the claims
before us?” Id., at------- , 132 S.Ct., at 1297. To answer that
question, we consider the elements of each claim both
individually and “as an ordered combination” to determine
whether the additional elements “transform the nature of the
claim” into a patent-eligible application. Id., at------- , 132 S.Ct.,
at 1298, 1297. We have described step two of this analysis as a
search for an “‘inventive concept’”—i.e., 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.” Id., at------- , 132 S.Ct., at
1294.
“The ‘abstract idea’ step of the inquiry calls upon us to look at the
‘focus of the claimed advance over the prior art’ to determine if the claim's
‘character as a whole’ is directed to excluded subject matter.” Affinity Labs
of Tex. v. DirectTV, LLC, 838 F.3d 1253, 1257 (Fed. Cir. 2016) (quoting
Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir.
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2016)); see also Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed.
Cir. 2016). There is no definitive rule to determine what constitutes an
“abstract idea.” Rather, the Federal Circuit has explained that “both [it] and
the Supreme Court have found it sufficient to compare claims at issue to
those claims already found to be directed to an abstract idea in previous
cases.” Enfish, 822 F.3d 1327, 1334 (Fed. Cir. 2016); see also Amdocs
(Israel) Ltd. v. Openet Telecom, Inc., 841 F.3d 1288, 1294 (Fed. Cir. 2016)
(explaining that, in determining whether claims are patent eligible under
§101, “the decisional mechanism courts now apply is to examine earlier
cases in which a similar or parallel descriptive nature can be seen—what
prior cases were about, and which way they were decided”).
The Examiner finds, and we agree, that the claims are directed to the
abstract idea of “target advertising” and claims no more than “comparing
new and stored information and using rules to identify options.” Adv. Act. 2
(citing SmartGene, Inc. v. Advanced Biological Labs., SA, 555 Fed. Appx.
950 (Fed. Cir. 2014) (nonprecedential)); see also Final Act. 2, 24—25 (claims
are directed to the abstract idea of targeted advertising); Ans. 4—6 (same).
In this regard, the claims of the instant application are similar to the claims
in Electric Power, which did “not go beyond requiring the collection,
analysis, and display of available information in a particular field, stating
those functions in general terms, without limiting them to technical means
for performing the functions that are arguably an advance over conventional
computer and network technology.” 830 F.3d at 1351. Specifically, our
reviewing Court held that “collecting information, including when limited to
particular content (which does not change its character as information), as
within the realm of abstract ideas” and that “analyzing information by steps
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people go through in their minds, or by mathematical algorithms, without
more, as essentially mental processes within the abstract-idea category.” Id.
at 1353—54 (citations omitted). As in Electric Power, the combination of
various abstract ideas relating to data collection and analysis is itself and
abstract idea.
Appellants argue the Examiner failed to make a prima facie case that
the claims are directed to an abstract idea.2 App. Br. 20-23; 3—10.
However, as our reviewing Court has held, “all that is required of the office
to meet its prima facie burden of production is to set forth the statutory basis
of the rejection ... in a sufficiently articulate and informative manner as to
meet the notice requirement of [35 U.S.C.] § 132.” In re Jung, 637 F.3d
1356, 1363 (Fed. Cir. 2011). We have reviewed the Examiner’s rejection
(Final Act. 2—3, 24—26; Adv. Act. 2; Ans. 3—8) and conclude that the notice
requirement is satisfied in this case by the examiner’s discussion of the
theory of unpatentability, including both the first and second prongs of the
Alice/Mayo framework. See Jung, 637 F.3d at 1363 see also Ex parte
Badros, Appeal 2015-005795, 2017 WF 2303190, at *4 (PTAB May 19,
2017) (non-precedential) (holding the Examiner complied with section 132
when “the Examiner notifies the Appellants that the claims are directed to a
patent-ineligible abstract idea”). Moreover, the scope of Appellants’ Appeal
Brief directed to the section 101 rejection belies any argument that
Appellants were not given sufficient notice as to the basis of the rejection.
2 The Appeal Brief identifies 7 arguments labeled A-G. Due to the
overlapping nature of the arguments, we have combined various arguments.
However, we have considered each of Appellants’ arguments and are not
persuaded by any of them.
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Appellants further argue, based on PNC Bank v. Secure Axcess, LLC,
CBM 2014-00100, Paper 10, slip op. at 21 (PTAB Sept. 9, 2014), that the
Examiner erred by not providing any evidentiary support. App. Br. 20—21;
see also App. Br. 29—31 (citing Alice). However, PNC Bank is a non-
precedential PTAB opinion, and therefore, not binding on this panel.
Moreover, there are significant differences between the attorney arguments
that are presented in a post-grant AIA-CBM proceeding such as PNC Bank
compared to findings and conclusions of an Examiner. See Icon Health &
Fitness, Inc. v. Strava, Inc., 849 F.3d 1034, 1042^44 (Fed. Cir. 2017)
(discussing differences between attorney arguments and the Examiner’s
findings). And, the Panel in PNC Bank relied on more than the lack of
persuasive evidentiary support in determining that the claims were not
directed to an abstract idea. See PNC Bank, Paper 13, slip op. at 4 (PTAB
Sept. 30, 2014) (recognizing that the lack of evidence was only “one factor
in our analysis” in denying request for rehearing). Moreover, we are not
persuaded that the Court’s citation to references in Alice added a
requirement that evidence must always be support the determination that a
claim is directed to an abstract idea.
Instead, we are persuaded by the reasoning in other decisions such as
Craske, which held that “there is no requirement that examiners must
provide evidentiary support in every case before a conclusion can be made
that a claim is directed to an abstract idea.” Ex parte Craske, Appeal 2017-
002559, 2017 WL 2928866, *5 (PTAB June 29, 2017). Although evidence
may be helpful, it is not required.3
3 We note that the Appellants have put forward no rebuttal evidence showing
the claims are not directed to an abstract idea.
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Appellants further argue that the Examiner failed to consider the claim
as a whole. App. Br. 23; Reply Br. 3—11. However, the Examiner explicitly
determined that the claim as a whole is directed to an abstract idea. See
Final Act. 2 (“The claimed invention is directed to non-statutory subject
matter because the claim(s) as a whole, considering all claim elements both
individually and in combination, do not amount to significantly more than an
abstract idea. The claim(s) is/are directed to the abstract idea of: targeted
advertising, which is a basic economic practice.”). Although, as Appellants
argue (Reply Br. 4—7), the Examiner may not have specifically listed every
claim limitation as being directed to the abstract idea, there is no
requirement to do so. Appellants have cited no case that holds that the
abstract idea must be expressly recited in each claim limitation. The Alice
Court did not follow such a rule, but instead analyzed “each claim”
individually. See, e.g., Alice, 134 S. Ct. at 2355.
Appellants also aver that the claims are not directed to an abstract idea
because they cannot be performed in a person’s head or with pen and paper.
Reply Br. 9; see also App. Br. 31—32. But that argument is not persuasive.
Although methods that can be performed in a person’s head or using pen and
paper are directed to unpatentable subject matter,4 that is not a requirement
for all abstract ideas. For example, in Content Extraction, our reviewing
court5 found the claims directed to an abstract idea even though the claims
4 See CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1373
(Fed. Cir. 2011).
5 Unlike the non-precedential decisions cited by Appellants (see App. Br,
31), precedential decisions of the United States Court of Appeals for the
Federal Circuit are binding precedent on the Board.
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required the use of a scanner. Content Extraction & Transmissions LLC v.
Wells Fargo Bank, 776 F.3d 1343, 1347 (Fed. Cir. 2014).
Finally, Appellants argue that, like the invention in DDR, the claims
in the instant application are directed to something more than just the
abstract idea. App. Br. 32—33; Reply Br. 12—18. According to Appellants:
The claims of the present application are similar to the Supreme
Court’s characterization of Diehr and the Federal Circuit's
characterization of DDR Holdings, where the claim is not simply
directed to an abstract idea (targeted advertising) but rather to
solving a technological problem in another technology
(identification of a plurality of user devices connected to the
Internet and targeting advertisements based on use of the
plurality of user devices).
App. Br. 33; see also Reply Br. at 15—17 (reciting the limitations of the
instant claim 1 and claim 19 fromDZFR). Moreover, according to
Appellants, the “claimed solution is necessarily rooted in computer
technology in order to overcome a problem specifically arising in the realm
of computer networks.” Reply Br. 14.
We are not persuaded by Appellants’ arguments. First, as our
reviewing court held in DDR, “not all claims purporting to address Internet-
centric challenges are eligible for patent.” 773 F.3d at 1258. As the Federal
Circuit recognized:
For example, in our recently-decided Ultramerciaf6] opinion,
the patentee argued that its claims were “directed to a specific
method of advertising and content distribution that was
previously unknown and never employed on the Internet before.”
But this alone could not render its claims patent-eligible. In
particular, we found the claims to merely recite the abstract idea
of “offering media content in exchange for viewing an
advertisement,” along with “routine additional steps such as
6 Ultramercial, Inc. v. Hulu, LLC,112 F.3d 709, 715 (Fed. Cir. 2014).
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updating an activity log, requiring a request from the consumer
to view the ad, restrictions on public access, and use of the
Internet.”
Id. (citations omitted). Because Appellants have merely identified routine
additional steps, they are insufficient to render the claims patent-eligible.
Second, we disagree that the claims in this case are directed to a
computer-centric problem similar to that in DDR. Appellants merely offer
conclusory attorney argument and it is well settled that mere attorney
arguments and conclusory statements, which are unsupported by factual
evidence, are entitled to little probative value. In re Geisler, 116 F.3d 1465,
1470 (Fed. Cir. 1997); see also In re Pearson, 494 F.2d 1399, 1405 (CCPA
1974) (attorney argument is not evidence).
Moreover, in DDR, the Court found that the claims “do not merely
recite the performance of some business practice known from the pre-
Internet world along with the requirement to perform it on the Internet.
Instead, the claimed solution is necessarily rooted in computer technology in
order to overcome a problem specifically arising in the realm of computer
networks.” Id. at 1257. In this case, although Appellants aver the claims are
just like those in DDR, Appellants merely recite the claim terms side-by-side
without drawing our attentions to any particular alleged similarly. Such a
conclusory, unsupported argument is not persuasive.
Accordingly, we sustain the Examiner’s rejection that claims 1—10
and 41—46 are directed to patent-ineligible subject matter.
Section 103 Rejection
Appellants agree with the Examiner that Gardenswartz teaches
sending a cookie including a unique identifier to a customer’s computer.
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Reply Br. 18—19. Appellants further agree with the Examiner that
Gardenswartz also teaches using a cookie containing a single PIN that is
assigned to a group of consumers having common features. Id. at 19.
However, Appellants argue the Examiner erred in finding that a person of
ordinary skill in the art would have modified Gardenswartz’s cookie to
contain both a unique identifier and a PIN assigned to a group of consumers
or to send two cookies, one with a unique identifier and the other with a
group PIN. App. Br. 33—36.
The Examiner finds one of ordinary skill in the art would have been
motivated to modify Gardenswartz to
provide separate cookies for each piece of information[—a
profile identifier and a segment identifier]—or to encode a
separate “profile identifier” and “segment identifier” into a single
“cookie number” because Gardenswartz already teaches that the
“cookie number” may represent multiple types of information
and a cookie may serve the functionality of both “profile
identifier” and “segment identifier” as claimed by applicant.
Adv. Act. 3; see also Final Act. 7—8; Ans. 8—13.
The Supreme Court has determined the conclusion of obviousness can
be based on the interrelated teachings of multiple patents, the effects of
demands known to the design community or present in the marketplace, and
the background knowledge possessed by a person having ordinary skill in
the art. KSRInt’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007); id. at 416
(“[The] combination of familiar elements according to known methods is
likely to be obvious when it does no more than yield predictable results.”).
Furthermore, “the analysis need not seek out precise teachings directed to
the specific subject matter of the challenged claim, for a court can take
account of the inferences and creative steps that a person of ordinary skill in
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the art would employ.” Id. at 418. In other words, “if a technique has been
used to improve one device, and a person of ordinary skill in the art would
recognize that it would improve similar devices in the same way, using the
technique is obvious unless its actual application is beyond his or her skill.”
Id. at 417.
Applying this reasoning here, we agree with the Examiner the prior art
contains known solutions that have been used to improve one device and
that a person of ordinary skill in the art would have recognized that one or
more of these solutions could have been used to improve other prior art
devices in a predicable way. Specifically, we agree with the Examiner that a
person of ordinary skill in the art would have reason to use either multiple or
single cookies7 containing both unique profile and segment identifiers in
order to achieve the advantages of each type of identifier. See Final Act. 7—
8.
Moreover, Appellants have not argued that it would have been
“uniquely challenging or difficult for one of ordinary skill in the art” to
make the modifications suggested by the Examiner. See Leapfrog Enters.,
Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (citing AST?,
550 U.S. at 418). Therefore, we are not persuaded by Appellants’ arguments
that the Examiner erred in modifying Gardenswartz.
7 Although claim 1 recites two transmitting steps in which a cookie is
transmitted to a client computer, because the claim does not specify two
different transmissions or two different cookies, the broadest reasonable
interpretation of the claim encompasses transmitting a single cookie to a
client computer containing both an assigned profile identifier and a segment
identifier that is different than the assigned profile identifier. See App. Br.
39-40 (claims appendix).
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Accordingly, we sustain the Examiner’s rejection of representative
claim 1, along with the rejection claims 2—10 and 41—46, which are not
separately argued. See 37 C.F.R. § 41.37(c)(l)(iv) (Arguments not made are
waived).
DECISION
For the above reasons, we affirm the Examiner’s decision rejecting
claims 1—10 and 41—46.
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)(iv). See 37
C.F.R. §41.50(f).
AFFIRMED
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