Ex Parte ChoDownload PDFPatent Trial and Appeal BoardJun 16, 201712159900 (P.T.A.B. Jun. 16, 2017) 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. 12/159,900 07/02/2008 Hong-Goo Cho LPP20081974U S 3931 06/16/201766390 7590 LEX IP MEISTER, PLLC 5180 PARKSTONE DRIVE, SUITE 175 CHANTILLY, VA 20151 EXAMINER KANG, IRENE S ART UNIT PAPER NUMBER 3695 MAIL DATE DELIVERY MODE 06/16/2017 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 HONG-GOO CHO Appeal 2015-002199 Application 12/159,90c1 Technology Center 3600 Before HUBERT C. LORIN, JAMES A. WORTH, and BRUCE T. WIEDER, Administrative Patent Judges. WIEDER, Administrative Patent Judge. DECISION ON APPEAL This is a decision on appeal under 35U.S.C. § 134 from the Examiner’s rejection of claims 21—M. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. CLAIMED SUBJECT MATTER Appellant’s claimed “invention relates to an advertisement providing system and method, and particularly, it relates to an advertisement providing system and method for providing an advertisement satisfying a user preference through a network.” (Spec. 1,11. 7—10.) 1 According to Appellant, the real parties in interest are Hong-Goo Cho and Myoung Lee. (Appeal Br. 3.) Appeal 2015-002199 Application 12/159,900 Claims 27, 28, and 43 are the independent claims on appeal. Claim 27 is illustrative and is reproduced below (emphasis added): [27.] A machine for providing advertisement information, the machine being connected to a network service medium via a network, the machine comprising: a user information database for storing user information including user personal information registered by a user at a user terminal and user preference information; an advertisement information database for storing advertisement information including advertisement contents, an advertisement ID, and sponsor information; a recording medium for recording a program; a unit for processing that is realized by a combination of hardware and software and that is coupled to the user information database and the advertisement information database, wherein the unit for processing is programmed to provide advertisement information by: generating in real-time advertisement information matched with the user’s current interested information based on the preference information which is stored in the user information database and the advertisement information stored in the advertisement information database, acquiring a user’s browser reading history and a user ID from a user information acquirer installed in the network service medium, generating a first list of advertisement categories that the user is currently interested in from the browser reading history, acquiring the user’s preference information corresponding to the user ID, determining whether to update the user preference information based on at least one advertisement category acquired by analyzing the browser reading history and the user preference information stored in the user information database, removing unregistered advertisement categories that are not provided in the user preference information 2 Appeal 2015-002199 Application 12/159,900 stored in the user information database from the first list of advertisement categories to generate a second list of advertisement categories, and updating the user preference information such that the advertisement categories which were included in the second list of advertisement categories are reprioritized higher than advertisement categories which were not included in the second list of advertisement categories. REJECTIONS Claims 27-47 are rejected under 35U.S.C. § 101 because the claimed invention is directed to non-statutory subject matter.2 Claims 27-47 are rejected under 35 U.S.C. § 103(a) as unpatentable in view of Ramer (US 2007/0061328 Al, pub. Mar. 15, 2007) and Hoyle (US 2011/0208582 Al, pub. Aug. 25, 2011).3 ANALYSIS The §101 rejection After the Final Action was mailed, the Supreme Court decided Alice Corp. Pty. Ltd. v. CLSBankInt’l, 134 S. Ct. 2347 (2014). Alice applies a two-part framework, earlier set out in Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66 (2012), “for distinguishing patents that claim laws of nature, natural phenomena, and abstract ideas from those that 2 In the Final Action, only claims 43—47 were rejected under § 101. (Final Action 3—4.) In the Answer, the Examiner entered a new ground of rejection and rejected claims 27-47 under § 101. (Answer 4—5.) 3 Because the Final Action discusses the rejection of claims 27-47 under § 103(a) (see Final Action 4—14), we treat the reference to only claims 27— 44 being rejected under § 103(a) as a typographical error (see id. at 5.) 3 Appeal 2015-002199 Application 12/159,900 claim patent-eligible applications of those concepts.” Alice, 134 S. Ct. at 2355. Under the two-part framework, it must first be determined if “the claims at issue are directed to a patent-ineligible concept.” Id. If the claims are determined to be directed to a patent-ineligible concept, e.g., an abstract idea, then the second part of the framework is applied to determine if “the elements of the claim . . . contain[] an ‘inventive concept’ sufficient to ‘transform’ the claimed abstract idea into a patent-eligible application.” Id. at 2357 (citing Mayo, 566 U.S. at 72—73, 79). In the new ground § 101 rejection, the Examiner determines that “the claims are directed towards providing advertisement information. Providing advertisement information is a fundamental business practice and thus, the claims include an abstract idea.” (Answer 5.) In the original ground § 101 rejection, the Examiner determines that “with respect to the claim as a whole, claim(s) 43 is directed toward the statutory category of a method (process).” (Final Action 3.) Under part one of the Alice framework, we “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 Texas, LLC v. DirectTV, LLC, 838 F.3d 1253, 1257 (Fed. Cir. 2016) (quoting Electric Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016)). Thus, while we consider the claim as a whole, the “directed to” inquiry focuses on the claim’s “character as a whole.” With regard to the Examiner’s determination in the original ground §101 rejection that claim 43 is directed to a “method (process),” we conclude that there was not a proper inquiry into the character of the claim 4 Appeal 2015-002199 Application 12/159,900 as a whole to determine if the claim was directed to excluded subject matter. Regardless, we consider the new ground § 101 rejection to supersede the original ground § 101 rejection. With regard to the new ground § 101 rejection, the Examiner determines that “the claims are directed towards providing advertisement information. Providing advertisement information is a fundamental business practice and thus, the claims include an abstract idea.” (Answer 5.) Appellant disagrees and argues that “claim 27 clearly requires ‘machine being connected to a network service medium via a network’” and that “an exchange of signals during the communication via the network, as required in claim 27, is not a mere abstract idea that a human mind could perform.” (Reply Br. 4.) In other words, Appellant’s argument is directed to part two of the Alice framework. Appellant does not persuasively argue, with regard to part one of the Alice framework, that the claims are not directed to the abstract idea of providing advertising information. (See Reply Br. 4—5.) Moreover, presenting tailored advertising information to a user has been determined to be an abstract idea. See Intellectual Ventures I LLC v. Capital One Bank (USA), 792 F.3d 1363, 1369-1370 (Fed. Cir. 2015). With regard to part two of the Alice framework, Appellant does not point to any persuasive evidence in the Specification or elsewhere indicating that the claimed databases and “unit for processing” are more than a generic computer connected to databases and programmed to perform the desired tasks. To the contrary, Appellant acknowledges that “according to independent claim 43, the machine comprises a processor that is realized by a combination of hardware and software and a recording medium for 5 Appeal 2015-002199 Application 12/159,900 recording information,” i.e., Appellant does not indicate anything more than a generic processor with software combined with a recording medium. (See Reply Br. 4.) Therefore, we are not persuaded that the Examiner erred in the new ground of rejection of claims 27-47 under § 101. The §103 rejection In relevant part, the Examiner finds that Ramer teaches “determining whether to update the user preference information based on at least one advertisement category acquired by analyzing the browser reading history and the user preference information stored in the user information database.” (Final Action 6.) However, the Examiner does not indicate in the Final Action where Ramer teaches this limitation of claim 27. (See id.; see also Appeal Br. 12—14.) In the Answer, the Examiner finds that “[i]n |[0071], Ramer teaches that user preferences can be explicitly defined or implicitly registered through online activity. Then these preferences are used by the recommendation system to create a list of recommended items. The recommended items include advertisements (see at least |[0046] and 1[0088]).” (Answer 18.) Appellant disagrees and argues that claim 27 recites that at least one “advertisement category” is acquired by analyzing the browser reading history such that determination as to whether to update the user preference information is made based on the at least one advertisement category and the user preference information stored in the user information database. However, Ramer fails to disclose or 6 Appeal 2015-002199 Application 12/159,900 suggest such a determining operation as required in independent claim 27. (Reply Br. 6.) We agree with the Examiner that paragraph 71 of Ramer teaches obtaining user preference data, e.g., from “explicit preference information” and implicitly from user behavior. (See Ramer 171.) However, the Examiner does not indicate where Ramer teaches “determining whether to update the user preference information based on [(i)] at least one advertisement category acquired by analyzing the browser reading history and [(ii)] the user preference information stored in the user information database,” as recited in claim 27. (Emphasis added.) More specifically, the Examiner does not indicate where Ramer teaches a unit for processing programmed to perform the determining step. Nor does the Examiner explain why it would have been obvious to “determin[e] whether to update the user preference information.” (See Final Action 6; see also Answer 18.) Therefore, we are persuaded that the Examiner erred in rejecting claim 27 under § 103(a). Independent claims 28 and 43 contain similar language and for similar reasons, we are persuaded that the Examiner erred in rejecting claims 28, 43, and dependent claims 29-42 and 44-47. DECISION The Examiner’s rejection of claims 27—47 under 35 U.S.C. § 101 is affirmed. The Examiner’s rejection of claims 21—M under 35 U.S.C. § 103(a) is reversed. 7 Appeal 2015-002199 Application 12/159,900 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). AFFIRMED 8 Copy with citationCopy as parenthetical citation