Ex Parte Cassidy et al

Patent Trial and Appeal Board

Sep 24, 2018

13772788 (P.T.A.B. Sep. 24, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/772,788 02/21/2013 Sukhinder Singh Cassidy
7590 09/25/2018
NICK !ONITA, CEO
TIQUE NETWORK
1940 BRYANT STREET
SAN FRANCISCO, CA 94110
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.
60381-0017 7430
EXAMINER
SORKOWITZ, DANIEL M
ART UNIT PAPER NUMBER
3681
MAIL DATE DELIVERY MODE
09/25/2018 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SUKHINDER SINGH CASSIDY and DIANA LYNN WILLIAMS
Appeal2017-007045
Application 13/772,788 1
Technology Center 3600
Before KENNETH G. SCHOPPER, BRADLEY B. BAY AT, and
ROBERT J. SILVERMAN, Administrative Patent Judges.
SILVERMAN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
decision rejecting claims 12 and 21-26. We have jurisdiction under 35
U.S.C. § 6(b ).
We AFFIRM.
1 The Appellants identify Joyus, Inc. as the real party in interest. Appeal
Br. 1. USPTO assignment records identify Tigue Inc. as the assignee
(reel/frame number 044186/0698, recorded November 21, 2017).
Appeal2017-007045
Application 13/772,788
ILLUSTRATIVE CLAIM
12. A method provided by software stored on and
executing from memory of a computerized server, comprising
the steps:
using the server, receiving, from memory of a computer
of an individual customer, data specifying likes and dislikes
relative to future content and storing, in memory of the server,
the likes and dislikes in a profile specific to the individual
customer;
using the server, generating an interactive interface on a
computer display screen comprising a video presenting
individual products offered for sale and commentary about the
products, the interactive interface also comprising interactive
indicia specific to individual ones of displayed products, the
indicia each having a link initiating purchase of the associated
product;
wherein the video comprises a custom video with a
private custom product collection and comprising compilation
of a plurality of sub video clips each representing a different
product and based upon the profile;
(a) using the server, causing displaying the interactive
interface at the computer of the individual customer;
(b) using the server, tracking actions of an individual
customer in interaction with the interactive interface at the
computer of the user, and storing in memory of the server a
history of the actions in a profile specific to the individual
customer, the tracking including detecting selection of a
particular button; and
( c) using the server, accessing from memory the specific
customer profile including the history of the actions in a future
session with the same customer;
using the server, and based upon the specific customer
profile, determining a particular product to recommend to the
individual customer;
adding a particular sub video clip of the particular
product to a custom video for display during the future session.
2
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Application 13/772,788
CITED REFERENCES
Knee et al. US 2003/0115602 Al
(hereinafter "Knee")
Jackson US 2007/0276721 Al
Littman US 2007/0276734 Al
Reddy et al. US 2011/0225036 Al
(hereinafter "Reddy")
REJECTIONS
June 19, 2003
Nov. 29, 2007
Nov. 29, 2007
Sept. 15, 2011
I. Claims 12 and 21-26 are rejected under 35 U.S.C. § 101 as
ineligible subject matter.
II. Claims 12 and 22-24 are rejected under 35 U.S.C. § I02(b) as
anticipated by Jackson. 2
III. Claim 21 is rejected under 35 U.S.C. § I03(a) as unpatentable
over Jackson and Littman.
IV. Claim 25 is rejected under 35 U.S.C. § I03(a) as unpatentable
over Jackson and Reddy.
V. Claim 26 is rejected under 35 U.S.C. § I03(a) as unpatentable
over Jackson and Knee.
FINDINGS OF FACT
We rely upon and adopt the Examiner's findings stated in the Non-
Final Office Action at pages 4--18 and the Answer at pages 2-8, except as
stated otherwise in the Analysis below. Additional findings of fact may
appear in the Analysis below.
2 We regard the inclusion of claims 1, 5---6, and 2 7 and the omission of
claims 12 and 23, in the heading paragraph for Rejection II (see Non-Final
Act. 6), as an inadvertent error.
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Application 13/772,788
ANALYSIS
Subject-Matter Eligibility
Laws of nature, natural phenomena, and abstract ideas are deemed
ineligible for patenting, because they are regarded as the basic tools of
scientific and technological work, such that their inclusion within the
domain of patent protection would risk inhibiting future innovation premised
upon them. Ass 'n for Molecular Pathology v. Myriad Genetics, Inc.,
569 U.S. 576, 589 (2013). Of course, "[a]t some level, 'all inventions ...
embody, use, reflect, rest upon, or apply'" these basic tools of scientific and
technological work. Alice Corp. v. CLS Bankint'l, 134 S. Ct. 2347, 2354
(2014) (citation omitted). Accordingly, ascertaining ineligible subject
matter involves a two-step framework for "distinguish[ing] between patents
that claim the buildin[g] block[ s] of human ingenuity and those that integrate
the building blocks into something more, ... thereby transform[ing] them
into a patent-eligible invention." Id. (internal quotation marks and citations
omitted). The first step determines whether the claim is directed to
judicially excluded subject matter (such as a so-called "abstract idea"); the
second step determines whether there are any "additional elements" recited
in the claim that ( either individually or as an "ordered combination") amount
to "significantly more" than the identified judicially excepted subject matter
itself. Id. at 2355.
As to the first step of the Alice framework, the Non-Final Office
Action states that independent claim 12 is directed to the abstract idea of
"selecting advertisements based on user actions," along with the refinement
of "adding recommend[ ed] products to a video," which the Examiner
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Application 13/772,788
regards as similar to the abstract idea identified in Ultramercial. 3 Non-Final
Action 4 ( emphasis omitted).
The Appellants argue that the Examiner's identification of the abstract
idea is unsupported (see Appeal Br. 5-7) and "Ultramercial is not analogous
to the pending claims" (id. at 7-8).
The "directed to" inquiry of the first Alice step "applies a stage-one
filter to claims, considered in light of the specification, based on whether
'their character as a whole is directed to excluded subject matter."' Enfish,
LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016) (citing
Internet Patents Corp. v. Active Network, Inc., 790 F.3d 11343, 1346 (Fed.
Cir. 2015)). "The 'abstract idea' step of the inquiry calls [for] look[ing] 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., LLC v. DIRECTV, LLC, 838 F.3d 1253, 1257 (Fed.
Cir. 2016) (citing Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350,
1353 (Fed. Cir. 2016)).
The Examiner's characterization of the claims as directed to
"selecting advertisements based on user actions" and "adding
recommend[ed] products to a video" (Non-Final Act. 4) reflects claim 12's
features of "storing ... the likes and dislikes in a profile specific to the
individual customer," "tracking actions of an individual customer in
interaction with the interactive sales portal ... and storing ... a history of
the actions in the profile specific to the individual customer," "based upon
3 Although the Non-Final Office Action (page 4) simply identifies
"Ultramercial," the Appellants (Appeal Br. 7) regard the Examiner's citation
to refer to Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709 (Fed. Cir. 2014).
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Application 13/772,788
the specific customer profile, determining a particular product to recommend
to the individual customer," and "adding a particular sub video clip of the
particular product to a custom video for display during the future session."
Similarly, the Examiner's identification of an abstract idea comports with
the Specification's description of a preferred embodiment, wherein
"products may be aggregated and presented as suggested products according
to personalization criteria." Spec. 15, 11. 15-16.
Citing DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed.
Cir. 2014), the Appellants further contend that the claimed subject matter is
not directed to an abstract idea, but is instead "directed to using a server to
cause a computer of an individual customer to display an interactive
interface, track actions of the individual customer, access a history of actions
of the individual customer and add a video sub clip to a custom video" - a
technique, the Appellants allege, that "simply do[es] not have a pre-Internet
analog." Appeal Br. 10. Yet, aside from the particulars of the computer
technology in the Appellants' description, the Appellants' description does
not differ meaningfully from the Examiner's identification of the abstract
idea. Notably, with regard to computer-implemented inventions, such as the
claimed subject matter under review here, "the first step in the Alice inquiry
... asks whether the focus of the claims is on the specific asserted
improvement in computer capabilities ... or, instead, on a process that
qualifies as an 'abstract idea' for which computers are invoked merely as a
tool." Enfzsh, 822 F.3d at 1335-36.
With regard to determining whether a particular concept is an abstract
idea, the Federal Circuit has endorsed the approach of "examin[ing] earlier
cases in which a similar or parallel descriptive nature can be seen - what
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prior cases were about, and which way they were decided.") Amdocs (Isr.)
Ltd. v. Openet Telecom, Inc., 841 F.3d 1288, 1294 (Fed. Cir. 2016).
Accordingly, the Examiner's determination that claim 12 is directed to an
abstract idea is supported by court decisions in which other forms of targeted
advertising have been held to be abstract ideas. See Affinity Labs, 838 F.3d
at 1271 ("[T]ailoring of content based on information about the user- such
as where the user lives or what time of day the user views the content - is
an abstract idea that is as old as providing different newspaper inserts for
different neighborhoods.") ( citing Intellectual Ventures I LLC v. Capital One
Bank (USA) Nat'! Ass 'n, 792 F.3d 1363, 1369 (Fed. Cir. 2015)); OpenTV,
Inc. v. Netflix Inc., 76 F. Supp. 3d 886, 893 (N.D. Cal. 2014) ("The concept
of gathering information about one's intended market and attempting to
customize the information then provided is as old as the saying, 'know your
audience."')
The Appellants assert that claim 12 is not directed to an abstract idea,
because it contains "numerous limitations that are not abstract," such that the
claim is not "wholly abstract." Appeal Br. 8, 9. But, the presence of non-
abstract elements does not foreclose a claim from being directed to an
abstract idea. The first Alice step does not "simply ask whether the claims
involve a patent-ineligible concept, because essentially every routinely
patent-eligible claim involving physical products and actions involves a law
of nature and/ or natural phenomenon - after all, they take place in the
physical world." Enfzsh, 822 F.3d at 1335 (citing Mayo, 132 S. Ct. at 1293).
Furthermore, the role of allegedly non-abstract elements may be considered
in the second step of the Alice framework.
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In view of the foregoing discussion, we are not persuaded of any error
in the Examiner's determination that claim 12 is directed to an abstract idea.
Turning to the second step of the Alice framework, the Non-Final
Office Action states that, whether considered individually or as a
combination, the additional claim elements do not amount to significantly
more than the abstract idea. Non-Final Act. 5.
Disputing the Examiner's determination, the Appellants contend that
claim 12 recites an unconventional combination of the following identified
elements:
(a) using the server, causing displaying the interactive
inter/ ace at the computer of the individual customer;
(b) using the server, tracking actions of an individual
customer in interaction with the interactive inter/ ace at the
computer of the user, and storing in memory of the server a
history of the actions in a profile specific to the individual
customer, the tracking including detecting selection of a
particular button; and ...
adding a particular sub video clip of the particular
product to a custom video for display during the future
session.
Appeal Br. 13. Yet, these elements are intertwined with the abstract idea
that the Examiner identified - "selecting advertisements based on user
actions" and "adding recommend[ed] products to a video" (Non-Final Act.
4). Thus, the Appellants' argument is not persuasive, because "a claimed
invention's use of the ineligible concept to which it is directed cannot supply
the inventive concept that renders the invention 'significantly more' than
that ineligible concept." BSG Tech LLC v. BuySeasons, Inc., 899 F.3d 1281,
1290 (Fed. Cir. 2018).
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The Appellants also contend that the claimed subject matter is patent-
eligible, because it provides an improvement to computer display
technology, an improved way of tracking customer actions, and an
accompanying reduction in waste of computer resources. Appeal Br. 14--15.
See also Reply Br. 4. Although technological improvements may reflect the
existence of elements that amount to significantly more than an abstract idea
(in regard to the second Alice step), invoking technological improvements
does not subvert the Supreme Court's Alice framework. Moreover, the
Appellants do not adequately explain or demonstrate how these proposed
improvements would be manifest. See Answer 6.
In addition, the Appellants contend that the claimed subject matter is
patent-eligible, because they do not preempt the identified abstract idea.
Appeal Br. 15. Yet, "[ w ]hile preemption may signal patent ineligible
subject matter, the absence of complete preemption does not demonstrate
patent eligibility." Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d
1371, 1379 (Fed. Cir. 2015).
In view of the foregoing analysis, the Appellants do not persuasively
argue that the Examiner erred in applying either step of the Alice framework,
such that we sustain the rejection of independent claim 12 and dependent
claims 21-26 (for which the Appellants present no separate argument),
under 35 U.S.C. § 101.
Anticipation
The Appellants advance two arguments supporting the position that
independent claim 12 was rejected erroneously.
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Application 13/772,788
First, The Appellants argue that the Jackson reference does not teach
claim 12' s "custom video" comprising a "compilation of a plurality of sub
video clips each representing a different product and based upon the
profile." See Appeal Br. 17-18.
This argument is unpersuasive. The Specification indicates that a
"sub video clip" is a portion of a video presentation. See Spec. 8, 11. 18-21.
The Appellants admit that Jackson discloses such "sub video clips," because
Jackson teaches a hypermedia presentation that "can, in a frame of the
hypermedia presentation, incorporate video clips or digital animation."
Appeal Br. 18 ( citing Jackson ,r 46). Further, the Appellants acknowledge
that Jackson's hypermedia presentations are "custom[ized]," because they
"provide catalogs of products or services for sale customized for the user"
and "make specific product recommendations, alter the graphical interface,
change content and essentially redecorate, and rearrange itself to appeal to a
particular user." Id. (quoting Jackson ,r 190). Therefore, the Appellants do
not persuasively argue that Jackson fails to meet the identified limitation of
claim 12.
As a second argument asserting error in the rejection of claim 12, the
Appellants argue that Jackson does not teach the claimed feature of "adding
a particular sub video clip of the particular product to a custom video for
display during the future session." Appeal Br. 18-19. Notwithstanding that
Jackson teaches the claimed "sub video clip," as noted above, the Appellants
contend that Jackson does not disclose "adding a sub video clip," as claimed.
Id. at 19.
The Appellants' second argument is unpersuasive because Jackson
teaches "dynamically layered graphical menus" that are "structured
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Application 13/772,788
according to conceptual groupings based on predetermined event
sequences," such as "frames that incorporate media objects," "for example,
video clips." Jackson ,r 46. Further, "the predetermined event sequences,"
including video content, "may be arranged in the form of a story or game
centering on the product or service presented for sale." Id. ,r 191.
Accordingly, the Appellants do not persuasively argue that Jackson fails to
teach claim 12' s limitation of "adding a particular sub video clip of the
particular product to a custom video for display during the future session."
Finally, the Appellants (see Appeal Br. 19-20) also dispute the
Examiner's position that the "profile specific to the individual customer"
and the "custom video" of claim 12 constitute nonfunctional descriptive
material and should not be afforded patentable weight (see Non-Final Act.
8-9 (citing In re Gulack, 703 F.2d 1381 (Fed. Cir. 1983) and In re Lowry, 32
F.3d 1579 (Fed. Cir. 1994)). However, the rejection does not indicate
sufficiently which aspects of the claimed subject matter might not be
afforded patentable weight, or how such a determination would affect the
patentability of claim 12. In any event, the Examiner provided prior art
citations for the claim limitations at issue in this Appeal. See Answer 8.
In view of the foregoing, we sustain the rejection of independent
claim 12 and dependent claims 22-24 (for which the Appellants present no
separate argument) under 35 U.S.C. § 102(b).
Obviousness
As to the obviousness rejection of dependent claims 21, 25, and 26,
the Appellants rely upon the arguments presented in regard to the
anticipation rejection of independent claims 1 and 22. Appeal Br. 20-21.
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Accordingly, for the reasons set forth above, we sustain the rejection of
claims 21, 25, and 26 under 35 U.S.C. § 103(a).
DECISION
We AFFIRM the Examiner's decision rejecting claims 12 and 21-26
under 35 U.S.C. § 101
We AFFIRM the Examiner's decision rejecting claims 12 and 22-24
under 35 U.S.C. § 102(b).
We AFFIRM the Examiner's decision rejecting claims 21, 25, and 26
under 35 U.S.C. § 103(a).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
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