Ex Parte GLASER

Patent Trial and Appeal Board

Jun 27, 2018

13275108 (P.T.A.B. Jun. 27, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/275, 108 10/17/2011
11788 7590 06/29/2018
Schwabe, Williamson & Wyatt/SFC-FC
1211 SW Fifth Ave.
Suite 1900
Portland, OR 97204
FIRST NAMED INVENTOR
Lawrence F. GLASER
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.
5810-0004 3425
EXAMINER
RETTA, YEHDEGA
ART UNIT PAPER NUMBER
3688
NOTIFICATION DATE DELIVERY MODE
06/29/2018 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):
IPDocketing@SCHWABE.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte LA WREN CE F. GLASER 1
Appeal2017-002256
Application 13/275,108
Technology Center 3600
Before CARL W. WHITEHEAD JR., BRADLEY W. BAUMEISTER, and
PHILLIP A. BENNETT, Administrative Patent Judges.
BAUMEISTER, Administrative Patent Judge.
DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner's
Final Rejection of claims 31-79, which constitute all the claims pending in
this application. App. Br. 9. 2 We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 Appellant lists Xenogenic Development Limited Liability Company as the
real party in interest. Appeal Brief 3 (filed March 29, 2016) ("App. Br.").
2 Appellant notes that a prior Final Action incorrectly listed which claims
stand rejected under 35 U.S.C. § 101, but Appellant interprets the Action as
intending to recite claims 31-79. App. Br. 9. The Examiner confirms this
interpretation on page three of the Final Action mailed February 22, 2016
("Final Act").
Appeal2017-002256
Application 13/275,108
THE INVENTION
Appellant describes the present invention as follows:
A system and method for advertising wherein a
communication from a sending party to a receiving party
includes one or more advertisements. Such communication
could include one or more of an email, a voice mail, a voice
communication (i.e. a telephone call or internet based telephony
communication), a facsimile message, a pager message, or any
other suitable electronic communication. In a preferred
embodiment, the communication is an email sent from a sending
party to a receiving party, wherein the email includes an
advertisement for a product or service used by the sending party.
Such advertisement could include a "testimonial" from the
sending party, [whose] credibility is established with the
receiving party. In another preferred embodiment, the
advertisement could be for a software program installed and
operated on a computer system used by the sending party. The
advertisement is included in the email message of the sending
party as a result of an election made by the sending party during
installation of the software program. The advertisements can be
structured in a multi-level marketing type organization including
trusted and credible reporting systems to account for each
participant's advertising efforts.
Abstract.
Independent claim 31 illustrates the claimed invention: 3
31. A method, comprising:
installing a product on a first processing device;
receiving an indication of an agreement at the first
processing device during installation of the product;
automatically embedding, using the first processing
device, an advertisement about the product in a communication
3 Appellant argues all of claims 31-79 together as a group. See App. Br. 9-
12. Accordingly, we select independent claim 31 as representative. See
37 C.F.R. § 4I.37(c)(l)(iv).
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Application 13/275,108
transmitted from the first processing device in response to the
receiving the indication of the agreement during the installation
of the product that allows the first processing device to embed
the advertisement about the product in the communication;
transmitting, using the first processing device, the
communication with the advertisement about the product
embedded therein to a second processing device distinct from the
first processing device; and
determining, using the first processing device, a
compensation due for embedding the advertisement in the
communication.
THE REJECTION AND CONTENTIONS
Claims 31-79 stand rejected under 35 U.S.C. § 101 as being directed
to patent-ineligible subject matter. Final Act. 2-5. 4 The Examiner has
withdrawn a previously issued double patenting rejection as a result of
Appellant's filing of a terminal disclaimer. Id. at 4.
The Examiner determines that the claims are directed to an abstract
idea because they relate to a fundamental economic practice and also to
organizing human activity. Ans. 2. The Examiner further concludes that the
claim elements that recite performing steps with processor elements do not
add significantly more to the abstract idea because, inter alia, the claims do
not include an improvement to another technology. Id. at 3. According to
the Examiner "[ t ]he limitations are merely instructions to implement the
abstract idea on a computer and require no more than a generic computer to
4 Rather than repeat the Examiner's positions and Appellant's arguments in
their entirety, we refer to the above mentioned Appeal Brief and Final
Action, as well as the following documents for their respective details: the
Examiner's Answer mailed September 22, 2016 ("Ans.") and the Reply
Brief filed November 22, 2016 ("Reply Br.").
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Application 13/275,108
perform generic computer functions that are well-understood, routine and
conventional activities previously known to the industry." Id.
Appellant argues the claims are not directed to activities such as
hedging, intermediated settlement, or any other fundamental economic
practice that is long prevalent and extensively used in our system of
commerce. App. Br. 10. Appellant similarly asserts that the record is
devoid of any evidence that the recited method is anything like the
fundamental economic practices involved in the inventions of Alice5 or
Bilski. 6 Id. at 11.
Appellant also argues that even if the claims are directed to a
fundamental economic practice or other judicial exception, the claims
amount to significantly more than the judicial exception, thus, rendering the
claims patent eligible. Id. According to Appellant, the claimed processing
device transforms the communication into a communication that includes an
advertisement only under certain circumstances. Id. Appellant argues that
the invention embeds the advertisement in a particular manner and time,
such that the claims recite more than a judicial exception and adding the
words "apply it." Id. at 11-12. Appellant also argues "[t]he recited claim
language is fairly detailed and specific and not just 'conventional steps,
specified at a high level of generality."' Id. at 12.
5 Alice Corp. Pty. Ltd. v. CLS Bank Int'!, 134 S. Ct. 2347 (2014).
6 Bilski v. Kappas, 130 S. Ct. 3218 (2010).
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Application 13/275,108
PRINCIPLES OF LAW
We review the appealed rejections for error based upon the issues
identified by Appellant, and in light of the arguments and evidence produced
thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential).
Regarding the question patent eligibility under 35 U.S.C. § 101, the
Supreme Court has set forth an analytical "framework for distinguishing
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 (citing Mayo Collaborative Servs. v. Prometheus Labs.,
Inc., 566 U.S. 66, 71-73 (2012)). In the first step of the analysis, we
determine whether the claims at issue are "directed to" a judicial exception,
such as an abstract idea. Id. at 2355. If not, the inquiry ends. Thales
Visionix Inc. v. US., 850 F.3d 1343, 1346 (Fed. Cir. 2017); Enfzsh, LLC v.
Microsoft Corp., 822 F.3d 1327, 1339 (Fed. Cir. 2016). If the claims are
determined to be directed to an abstract idea, then we consider under step
two whether the claims contain an "inventive concept" sufficient to
"transform the nature of the claim into a patent-eligible application." Alice,
134 S. Ct. at 2355 (quotations and citation omitted).
In considering whether a claim is directed to an abstract idea, we
acknowledge, as did the Supreme Court, 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. We, therefore, look to whether the
claims focus on a specific means or method that improves the relevant
technology or are instead directed to a result or effect that itself is the
abstract idea and merely invoke generic processes and machinery. See
Enfzsh, 822 F.3d at 1336.
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Application 13/275,108
If the claims are directed to an abstract idea, we then must consider
whether the claim contains an element or a combination of elements that is
sufficient to transform the nature of the claim into a patent-eligible
application. Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 714 (Fed.
Cir. 2014); Alice, 134 S. Ct. at 2355.
In applying step two of the Alice analysis, we must
"determine whether the claims do significantly more than simply
describe [the] abstract method" and thus transform the abstract
idea into patentable subject matter. . . . We look to see whether
there are any "additional features" in the claims that constitute
an "inventive concept," thereby rendering the claims eligible for
patenting even if they are directed to an abstract idea. . . . Those
"additional features" must be more than "well-understood,
routine, conventional activity."
Intellectual Ventures I LLC v. Erie Indemnity Company, 850 F.3d 1315,
1328 (Fed. Cir. 2017) (citations omitted).
Claims that "merely require generic computer implementation[] fail to
transform [an] abstract idea into a patent-eligible invention." Id. Alice, 134
S. Ct. at 2357.
ANALYSIS
Step 1
We need not decide whether the claims reasonably can be
characterized as being related to a fundamental economic practice or
organizing human activity. It is sufficient that the claims reasonably can be
characterized as being directed to concepts relating to advertising,
marketing, and sales activities or behaviors. See MPEP § 2106.04(a)(2)
Part (II). More specifically, Appellant's invention is analogous to the pre-
Internet business practice of a roofer, remodeler, or other construction
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worker giving a customer a discount on their services in return for the
homeowner allowing the worker to temporarily place an advertising sign in
the homeowner' s front yard. The only substantive difference between that
pre-Internet method of advertising and the present invention is that the
present invention entails carrying out the advertising on the Internet and
automating the compensation.
The courts have found such automated advertising, marketing, and
sales activities to constitute patent-ineligible abstract ideas. For example, in
Ultramercial, our reviewing court determined
The process of receiving copyrighted media, selecting an ad,
offering the media in exchange for watching the selected ad,
displaying the ad, allowing the consumer access to the media,
and receiving payment from the sponsor of the ad all describe an
abstract idea, devoid of a concrete or tangible application.
Although certain additional limitations, such as consulting an
activity log, add a degree of particularity, the concept embodied
by the majority of the limitations describes only the abstract idea
of showing an advertisement before delivering free content.
Ultramercial, 772 F.3d at 715.
Step Two
We, likewise, are unpersuaded that the Examiner erred in concluding
that the claim elements fail to add significantly more to the abstract idea of
claim 31. See App. 11-12 (wherein Appellant argues that the claims amount
to significantly more than the abstract idea).
Appellant does not point to any technological problem that the
invention solves. See generally App. Br.; see generally Reply Br. Rather,
Appellant's invention instead appears to entail merely employing the
abstract marketing idea in a particular technological environment. For
example, Appellant's Specification indicates that the communication in
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Application 13/275,108
which the advertisement is embedded can be associated with any of various
generically recited devices, such as email, voice mail, voice communication,
facsimile message, pager message, video message, or any other suitable
electronic communication. Spec. 9: 18-21. Moreover, the process of the
present invention is described at a very high, generic level. See id. at 13:3-
14:27; FIG. 2.
As our reviewing court explained, "[ n ]arrowing the abstract idea of
using advertising as a currency to the Internet is an 'attempt[ ] to limit the
use' of the abstract idea 'to a particular technological environment,' which is
insufficient to save a claim." Ultramercial, 772 F.3d at 716.
DECISION
Appellant has not persuaded us of error in the Examiner's
determination that the appealed claims are directed to patent-ineligible
subject matter. Accordingly, the Examiner's decision rejecting claims 31-
79 under 35 U.S.C. § 101 is affirmed.
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). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED
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