12619510 (P.T.A.B. Sep. 17, 2018)

Ex Parte Fang et al

Patent Trial and Appeal BoardSep 17, 2018

12619510 (P.T.A.B. Sep. 17, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. 12/619,510 149109 7590 EGL/Excalibur P.O. Box 10395 Chicago, IL 60610 FILING DATE FIRST NAMED INVENTOR 11/16/2009 Fang Fang 09/17/2018 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. 12729-1068 (Y05789USOO) 8723 EXAMINER SITTNER, MATTHEW T ART UNIT PAPER NUMBER 3682 MAIL DATE DELIVERY MODE 09/17/2018 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 FANG FANG, STEVEN HARTMAN, TIM KAISER, ALEX WU, and WEIPING PENG Appeal2017-000987 1 Application 12/619,5102 Technology Center 3600 Before NINA L. MEDLOCK, AMEE A. SHAH, and ALYSSA A. FINAMORE, Administrative Patent Judges. MEDLOCK, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. Â§ 134(a) from the Examiner's final rejection of claims 1-15. We have jurisdiction under 35 U.S.C. Â§ 6(b ). We AFFIRM. 1 Our decision references Appellants' Appeal Brief ("App. Br.," filed October 13, 2015) and Reply Brief ("Reply Br.," filed October 21, 2016), and the Examiner's Answer ("Ans.," mailed August 22, 2016) and Final Office Action ("Final Act.," mailed March 18, 2015). 2 Appellants identify Yahoo! Inc. as the real party in interest. App. Br. 2. Appeal2017-000987 Application 12/619,510 CLAIMED INVENTION Appellants' claimed invention "relates to audience sharing in online advertising" and, more particularly, to "an advertising exchange system that allows the audience of a market player to be shared as an asset with others in that exchange to increase the amount of advertisement revenue that may be generated from that audience" (Spec. ,r 1 ). Claims 1, 6, and 11 are the independent claims on appeal. Claim 1, reproduced below with bracketed notations added, is illustrative of the claimed subject matter: 1. A method to target an online audience for advertisement in an advertising exchange system, the method compnsmg: [ (a)] processing, in the advertising exchange system, at least one request to deliver at least one advertisement over a network, wherein the advertising exchange system provides a marketplace for disseminating opportunities to place advertisements on website locations for a plurality of independent publishers of the website locations; [ (b)] retrieving from storage a data log file including information about interests and activities of visitors to one or more website locations of a first independent publisher; [ ( c)] using the data log file, determining an audience segment for the first independent publisher in the advertising exchange system, wherein the audience segment lists a population of the visitors to the one or more website locations of the first independent publisher based on activity of the visitors at the first independent publisher; [ ( d)] identifying, in the advertising exchange system, one or more visitors listed in the audience segment on one or more website locations of a second independent publisher; and 2 Appeal2017-000987 Application 12/619,510 [ ( e)] delivering, in response to the request, the advertisement from the advertising exchange system to the one or more visitors at the second independent publisher on behalf of the first independent publisher if the second independent publisher has given permission to the first independent publisher to target the one or more visitors listed in the audience segment at the second independent publisher. REJECTI0N3 Claims 1-15 are rejected under 35 U.S.C. Â§ 101 as directed to a judicial exception without significantly more. ANALYSIS Under 35 U.S.C. Â§ 101, an invention is patent-eligible if it claims a "new and useful process, machine, manufacture, or composition of matter." 35 U.S.C. Â§ 101. The Supreme Court, however, has long interpretedÂ§ 101 to include an implicit exception: "[l]aws of nature, natural phenomena, and abstract ideas" are not patentable. Alice Corp. v. CLS Bank Int 'l, 134 S. Ct. 2347, 2354 (2014). The Supreme Court, in Alice, reiterated the two-step framework previously set forth in Mayo Collaborative Services v. Prometheus Laboratories, Inc., 566 U.S. 66 (2012), "for distinguishing patents that claim laws of nature, natural phenomena, and abstract ideas from those that claim patent-eligible applications of those concepts." Alice Corp., 134 S. Ct. at 2355. The first step in that analysis is to "determine whether the claims at issue are directed to one of those patent-ineligible concepts." Id. If the 3 The rejection of claims 1-15 under 35 U.S.C. Â§ 101 entered in the Final Office Action was withdrawn and replaced in the Answer by new grounds of rejection under Â§ 101. Ans. 2. 3 Appeal2017-000987 Application 12/619,510 claims are not directed to a patent-ineligible concept, e.g., an abstract idea, the inquiry ends. Otherwise, the inquiry proceeds to the second step where the elements of the claims are considered "individually and 'as an ordered combination'" to determine whether there are additional elements that "'transform the nature of the claim' into a patent-eligible application." Id. ( quoting Mayo, 566 U.S. at 79, 78). The Court acknowledged in Mayo, that "all inventions at some level embody, use, reflect, rest upon, or apply laws of nature, natural phenomena, or abstract ideas." Mayo, 566 U.S. at 71. Therefore, the Federal Circuit has instructed that claims are to be considered in their entirety to determine "whether their character as a whole is directed to excluded subject matter." McRO, Inc. v. Bandai Namco Games Am., Inc., 837 F.3d 1299, 1312 (Fed. Cir. 2016) (quoting Internet Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1346 (Fed. Cir. 2015)). In rejecting claims 1-15 under 35 U.S.C. Â§ 101, the Examiner determined that the claims are directed to "targeting an online audience by collecting and storing data about website visitors, organizing that data, comparing the data to find visitors common to at least two publishers, and delivering an advertisement," i.e., to "An Idea Of Itself' and "Certain Methods of Organizing Human Activity," and, therefore, to an abstract idea (Ans. 2--4). The Examiner also determined that the claims do not include additional elements or a combination of elements sufficient to ensure that the claims amount to significantly more than the abstract idea itself (id. at 4--8). Addressing the first step of the Mayo/Alice framework, Appellants argue that the claims are not directed to an abstract idea; instead, according to Appellants, the focus of the claims is on a specific improvement in 4 Appeal2017-000987 Application 12/619,510 computer capabilities (Reply Br. 4--8). Appellants assert that although the result of the invention is online advertising, "an admittedly abstract notion," the claims are directed to a "non-abstract distributed system of servers with a novel configuration of software that enables them to keep track of the millions of users, thousands of websites, and hundreds of advertising contracts that are implicated by each page load within the system" (id. at 4-- 5). Quoting limitations (b) through ( d), recited in claim 1, Appellants note that advertisements are targeted to individuals, who as a group, are termed "an audience segment," and explain that this is done using a data log file of information about user interests and activities to identify members of an audience segment and target those members for receiving an advertisement at the website of a second publisher (id. at 5). Appellants maintain that this ability to share an audience segment with other market players provides a "technological benefit" (id. ( citing Spec. ,r 32 ("By allowing the audience represented in that audience segment to be made available to third-party demand channels, the volume and liquidity of demand on exchange 204 will be increased."))). But, we are not persuaded that increasing the volume and liquidity of demand on the advertising exchange system amounts to a technological benefit, as opposed to an economic one. Cf Content Extraction & Transmission LLC v. Wells Fargo Bank, Nat. Ass 'n, 776 F.3d 1343, 1347 (Fed. Cir. 2014) (explaining that claims directed to "the mere formation and manipulation of economic relations" and "the performance of certain financial transactions" have been held to involve abstract ideas). Appellants assert that no previous computer system was capable of "keeping track of so many users, websites, and advertisers simultaneously," 5 Appeal2017-000987 Application 12/619,510 and that "it is this scale that permits the improved volume and liquidity in demand" (Reply Br. 6). Yet, we find no indication in the Specification, nor do Appellants direct us to any indication, that the operations recited in claim 1 require any specialized computer hardware or other inventive computer components. Instead, the Specification suggests just the opposite, i.e., that the claimed invention is implemented using only generic computer components (see, e.g., Spec. ,r,r 100-105), which is not enough for patent- eligibility. DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1256 (Fed. Cir. 2014) ("[A]fter Alice, there can remain no doubt: recitation of generic computer limitations does not make an otherwise ineligible claim patent-eligible."). Appellants further argue that the claimed invention provides a specific technical improvement over conventional systems by shifting storage of the claimed data log, i.e., information about user interests and activities, from user cookies on the user's device to back-end storage (Reply Br. 6). Appellants assert this provides the benefit of improving the accuracy and completeness of the user data because local user cookies may be less accurate (id.). But, that argument is not persuasive at least because it is not commensurate with the claim language. Claim 1 merely recites retrieving a data log file "from storage." We also are not persuaded of Examiner error by Appellants' argument that the claims improve the technology of targeting online advertisements (Reply Br. 8-10). Appellants argue that tracking and use of user data stored in a data log file permits improvement of the existing technological process of targeting advertisements to users, and that "[ t ]his goes beyond a 'fundamental economic practice' and defines a new data manipulation, 6 Appeal2017-000987 Application 12/619,510 based on user characteristics and activities, to select users to receive an advertisement" (id. at 9). Yet, we are not persuaded the claimed invention represents an improvement to a technological process as opposed to an improvement to the abstract idea of targeting advertisements. And the law is clear that an improved abstract idea is not patent-eligible. SAP America, Inc. v. InvestPic, LLC, No. 2017-2081, 2018 WL 3656048, at *6 (Fed. Cir. Aug. 2, 2018) ("[P]atent law does not protect such claims [i.e., claims to an asserted advance in the realm of abstract ideas] ... no matter how groundbreaking the advance."). Turning to step two of the Mayo/Alice framework, Appellants assert that even if claims 1-15 are directed to an abstract idea, the claims are nonetheless patent-eligible because the claims include an inventive concept, which is more than a mere abstract idea (Reply Br. 10-12 ). Yet, to the extent Appellants maintain that the claimed invention is patent-eligible, i.e., that the claims amount to "significantly more" than an abstract idea, because the claims are allegedly novel and/or non-obvious in view of the prior art, 4 Appellants misapprehend the controlling precedent. A finding of novelty or non-obviousness does not automatically lead to the conclusion that the claimed subject matter is patent-eligible. Although the second step in the Mayo/Alice framework is termed a search for an "inventive concept," the analysis is not an evaluation of novelty or non- obviousness, but rather, a search for "an element or combination of elements 4 See Reply Br. 11 ("[T]he claims clearly define an invention which is patentable over the prior art, and thus must necessarily define an inventive concept."); id. ("[T]he features of claim 1, taken as a whole, recite a new, non-obvious invention, and therefore an inventive concept."). 7 Appeal2017-000987 Application 12/619,510 that is 'sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the [ineligible concept] itself."' Alice Corp., 134 S. Ct. at 2355 (citation omitted). "Groundbreaking, innovative, or even brilliant discovery does not by itself satisfy the Â§ 101 inquiry." Ass 'nfor Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 591 (2013). A novel and non-obvious claim directed to a purely abstract idea is, nonetheless, patent-ineligible. See Mayo, 566 U.S. at 90; see also Diamond v. Diehr, 450 U.S. 175, 188-89 (1981) ("The 'novelty' of any element or steps in a process, or even of the process itself, is of no relevance in determining whether the subject matter of a claim falls within the Â§ 101 categories of possibly patentable subject matter."). Finally, we are not persuaded by Appellants' argument that the present claims are analogous to the claims held patent-eligible in BASCOM Global Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341 (Fed. Cir. 2016) (Reply Br. 10-12). In BASCOM, the claims described an inventive concept in the non- conventional and non-generic arrangement of known, conventional pieces. BASCOM, 827 F.3d at 1350. Specifically, the Federal Circuit determined that the claimed installation of a filtering tool at a specific location, remote from the end users, with customizable filtering features specific to each end user, provided an inventive concept in that it gave the filtering tool both the benefits of a filter on a local computer and the benefits of a filter on the ISP server. Id. Appellants do not identify any comparable non-conventional, non-generic arrangement of elements that is recited in the present claims. Instead, Appellants merely rely on the absence of a pending rejection based on prior art (see Reply Br. 11 ("The invention of claim 1 thus provides 'a 8 Appeal2017-000987 Application 12/619,510 non-conventional and non-generic arrangement.' This is evidenced by the apparent allowability of the claims over the prior art.")). We are not persuaded, on the present record, that the Examiner erred in rejecting claims 1-15 under 35 U.S.C. Â§ 101. Therefore, we sustain the Examiner's rejection. DECISION The Examiner's rejection of claims 1-15 under 35 U.S.C. Â§ 101 is affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a)(l)(iv). AFFIRMED 9