Ex Parte Ennals et al

Patent Trial and Appeal Board

Jul 30, 2018

12978125 (P.T.A.B. Jul. 30, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/978, 125 12/23/2010 Robert Ennals
73486 7590 08/01/2018
Barnes & Thornburg LLP (Intel)
11 S. Meridian Steet
Indianapolis, IN 46204
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.
P26438C/4563 l-226046 1640
EXAMINER
SITTNER, MATTHEW T
ART UNIT PAPER NUMBER
3682
NOTIFICATION DATE DELIVERY MODE
08/01/2018 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):
Inteldocs _ docketing@cpaglobal.com
INdocket@btlaw.com
inteldocket@btlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ROBERT ENNALS and PRASHANT GANDHI
Appeal 2016-007535
Application 12/978, 125
Technology Center 3600
Before JOHN A. EV ANS, CARLL. SILVERMAN, and STEVEN M.
AMUNDSON, Administrative Patent Judges.
EV ANS, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 seek our review under 35 U.S.C. § 134(a) of the
Examiner's Final Rejection of Claims 29-56. App. Br. 2. Claims 1-28 have
been canceled. Final Act. 2. We have jurisdiction under 35 U.S.C. § 6(b ).
We REVERSE. 2
1 Appellants identify Intel Corporation as the real party in interest. App.
Br. 2.
2 Rather than reiterate the arguments of Appellants and the Examiner, we
refer to the Appeal Brief (filed December 21, 2015, "App. Br."), the Reply
Brief (filed August 2, 2016, "Reply Br."), the Examiner's Answer (mailed
June 3, 2016, "Ans."), the Final Action (mailed April 17, 2015, "Final
Appeal 2016-007535
Application 12/978, 125
STATEMENT OF THE CASE
The Invention
The claims relate to location-based filtering and advertising
enhancements for merged browsing of network content. See Abstract.
Claims 29, 36, 43, and 50 are independent. Claim 29 is illustrative
and is reproduced below with some formatting added:
29. A client computing device for merged browsing, the
client computing device comprising:
a processor; and
a storage device coupled to the processor and adapted to
store instructions for client logic, wherein the client logic is to:
determine a geographic location of the client
computing device;
determine an indicator of first network content to
be displayed on a graphical user interface of the client
computing device;
provide the geographic location and the indicator
to a server;
receive, from the server and in response to
providing the geographic location and the indicator, a
visual indicator representative of a fragment of second
network content determined by the server to be
associated with the geographic location and the indicator,
wherein the second network content is available at
a second network address different from a first network
address at which the first network content is available;
display the visual indicator of the fragment of the
second network content on the graphical user interface
Act."), and the Specification (filed December 23, 2010, "Spec.") for their
respective details.
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Application 12/978, 125
contemporaneously with the display of the first network
content;
receive the fragment of the second network content
for merged browsing, wherein the fragment of the second
network content is less than the entirety of network
content available at the second network address;
display, in response to a selection of the visual
indicator by a user of the client computing device, the
fragment of the second network content on the graphical
user interface contemporaneously with the display of the
first network content; and
provide, in response to the user's selection of the
visual indicator, an indication to the server that the user
has selected the visual indicator.
Rejection
Claims 29-56 stand rejected under 35 U.S.C. § 101 as directed to non-
statutory subject matter (i.e., a law of nature, a natural phenomenon, or an
abstract idea) without significantly more. Final Act. 3-7.
ANALYSIS
We have reviewed the rejection of Claims 29-56 in light of
Appellants' arguments that the Examiner erred. We consider Appellants'
arguments seriatim, as they are presented in the Appeal Brief, pages 6-12.
CLAIMS 29-56: NON-STATUTORY SUBJECT MATTER.
Appellants argue claims 29, 31-36, 38-43, and 45-56 generally as a
first group. See App. Br. 6. Appellants argue claims 30, 37, and 44 as a
second group in view of the arguments and authorities set forth for the first
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Application 12/978, 125
group. See App. Br. 11. The Examiner's answer applies to all claims as a
group. See Ans. 2-9.
35 us.c. § 101.
Section 101 provides that a patent may be obtained for "any new and
useful process, machine, manufacture, or composition of matter, or any new
and useful improvement thereof." 35 U.S.C. § 101. The Supreme Court has
long recognized, however, that § 101 implicitly excludes "laws of nature,
natural phenomena, and abstract ideas" from the realm of patent-eligible
subject matter, as monopolization of these "basic tools of scientific and
technological work" would stifle the very innovation that the patent system
aims to promote. Alice Corp. v. CLS Bankint'l, 134 S. Ct. 2347, 2354
(2014) (quoting Ass 'nfor Molecular Pathology v. Myriad Genetics, Inc.,
133 S. Ct. 2107, 2116 (2013)); see also Mayo Collaborative Servs. v.
Prometheus Labs., Inc., 132 S. Ct. 1289, 1294-97 (2012); Diamond v.
Diehr, 450 U.S. 175, 185 (1981).
The Examiner finds the claims are directed to non-statutory subject
matter, specifically the abstract idea of geographically based advertising
which, the Examiner finds, is a "fundamental economic practice" and the
claimed steps are simply "methods of organizing human activities." Final
Act. 5. The Examiner further finds the claims recite only the abstract idea of
performing the method without articulation of concrete steps setting forth a
particular implementation of the idea. Id.
Appellants contend the claimed method is not directed to an abstract
concept. App. Br. 8. Appellants argue there is nothing in any of
independent Claims 29, 36, 43, or 50 that recites, or even references,
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Application 12/978, 125
advertising or any other fundamental economic practice. Id. Appellants
further argue the Examiner's finding improperly imports limitations from the
Specification into the claims. Id. Appellants contend each of the
independent claims is directed to providing additional content to a
user of a computing device, and specifically doing so in a way that addresses
internet-centric challenges raised by the technical environment of the claims.
Id.
The Mayo/Alice Framework
The Supreme Court has instructed us to use a two-step framework to
"distinguish[] patents that claim laws of nature, natural phenomena, and
abstract ideas from those that claim patent-eligible applications of those
concepts." Alice, 134 S. Ct. at 2355. At the first step, we determine whether
the claims at issue are "directed to" a patent-ineligible concept. Id. The
Court also cautions that we must "tread carefully in construing this
exclusionary principle lest it swallow all of patent law." Alice, 134 S. Ct. at
2354. This is because at some level, "all inventions ... embody, use, reflect,
rest upon, or apply laws of nature, natural phenomena, or abstract ideas." Id.
Thus, an invention is not rendered ineligible for patenting simply because it
involves an abstract concept. See Diamond v. Diehr, 450 U.S. 175, 187
(1981 ). "[ A Jpplication[ s ]" of such concepts "'to a new and useful end,"' the
Court has said, "remain eligible for patent protection." Alice, 134 S. Ct.
at 2354 (quoting Gottschalkv. Benson, 409 U.S. 63, 67 (1972)).
If the claims are directed to a patent-ineligible concept, we "consider
the elements of each claim both individually and 'as an ordered
combination' to determine whether the additional elements" add enough to
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Application 12/978, 125
transform the "nature of the claim" into "significantly more" than a patent-
ineligible concept. Id. at 2355, 2357 (quoting Mayo, 566 U.S. at 79); see
Affinity Labs of Tex., LLC v. DIRECTV, LLC, 838 F.3d 1253, 1257
(Fed. Cir. 2016).
Appellants and the Examiner significantly disagree as to what are
considered the elements of the claims. Whereas Appellants contend
advertising is not recited in the claims (App. Br. 8), the Examiner finds that
despite the confusing language (i.e., merged browsing and content
fragment), Appellants are essentially claiming geographically based,
targeted advertising. Ans. 3. For example, the Examiner finds independent
Claim 36 is directed to geographically based advertising, an abstract idea, by
steps including collecting known information (i.e., obtaining a known
geographic location and collecting known information (content) associated
with the geographic location), comparing the known information (i.e.,
associating the geographic location and the relevant content associated with
the location), and displaying geographically relevant content to a user's
device. Id. The Examiner finds the claim merely recites a method of
collecting and comparing known information or a method of obtaining and
comparing intangible data, each of which has been held to be "[a]n [i]dea
[o]f[i]tself." Id. at 3--4 (generally citing Classen 3 and CyberSource4) 5.
3 Classen Immunotherapies, Inc. v. Biogen IDEC, 659 F.3d 1057 (Fed. Cir.
2011).
4 CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366 (Fed. Cir.
2011).
5 Because the Examiner does not provide a "pinpoint cite," it is unclear from
where the relied upon language originates.
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Appellants reply that the present claims, unlike those of Classen and
CyberSource, cannot be performed mentally. Reply Br. 2. Appellants argue
the claims require a client computer to interact with both a server and a user.
Id. at 14. Appellants contend the Examiner improperly describes the claims
at "a high level of abstraction and untethered from the language of the
Claims." Id. at 3 (citing Enfish). "However, describing the claims at such a
high level of abstraction and untethered from the language of the claims all
but ensures that the exceptions to§ 101 swallow the rule." Enfish, LLC v.
Microsoft Corp., 822 F.3d 1327, 1337 (Fed. Cir. 2016).
During examination, claim terms are to be given their broadest
reasonable interpretation as they would have been understood by one of
ordinary skill in the art, taking into account whatever enlightenment may be
provided by the Specification. In re Morris, 127 F.3d 1048, 1054 (Fed. Cir.
1997). However, limitations may not be imported into the claims from the
Specification. See SuperGuide Corp. v. DirecTV Enters., Inc., 358 F.3d 870,
875 (Fed. Cir. 2004).
We agree with Appellants that the claims do not recite advertising.
Although the Examiner finds "Appellants are essentially claiming
geographically based targeted advertising," the Examiner does not specify
which claim recitations, given their broadest reasonable interpretation as
they would have been understood by one of ordinary skill in the art and
taking into account the enlightenment provided by the Specification, are
interpreted as targeted advertising.
The Supreme Court has not established a definitive rule to determine
what constitutes an "inventive concept" sufficient to satisfy § 101. Rather,
both the Federal Circuit and the Supreme Court have found it sufficient to
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Application 12/978, 125
compare claims at issue to those claims already found to be patent eligible in
previous cases. Enfish, 822 F.3d 1334.
The present claims determine first and second geographical locations
associated with a client computer and a server and determine first and
second "network content" associated with the first and second geographic
locations. From the various "network content," the claims synthesize a
webpage. See Claim 29. We find these claims are similar to those
previously found patent eligible, at step two, in DDR Holdings, LLC v.
Hotels.com, L.P., 773 F.3d 1245, 1248, 1257-59 (Fed. Cir. 2014) ("these
patents [are] directed to systems and methods of generating a composite
webpage that combines certain visual elements of a 'host' webpage with
content of a third-party merchant" and "the claimed solution amounts to an
inventive concept for resolving [a] particular Internet-centric problem"); see
Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1139, 1151
(Fed. Cir. 2016) (noting that "[i]n DDR Holdings, we held that claims
'directed to systems and methods of generating a composite web page that
combines certain visual elements of a 'host' website with content of a third-
party merchant' contained the requisite inventive concept").
We need not decide whether the claims are directed to an abstract idea
under step 1 because we find the claims are similar to those previously found
to recite patent-eligible subject matter at step two. See e.g., DDR Holdings.
DECISION
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The rejection of Claims 29--56 under 35 U.S.C. § 101 is REVERSED.
REVERSED
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