Ex Parte Ivory et al

Patent Trial and Appeal Board

Mar 25, 2019

13911953 (P.T.A.B. Mar. 25, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/911,953
58139 7590
IBM CORP. (WSM)
c/o WINSTEAD P.C.
P.O. BOX 131851
DALLAS, TX 75313
06/06/2013
03/27/2019
FIRST NAMED INVENTOR
Andrew J. Ivory
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.
RSW920130086US1 6006
EXAMINER
NGUYEN, CHAU T
ART UNIT PAPER NUMBER
2177
NOTIFICATION DATE DELIVERY MODE
03/27/2019 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):
patdocket@winstead.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ANDREW J. IVORY, TODD E. KAPLINGER,
AARON K. SHOOK, and DAVID M. STECHER
Appeal2018-006508
Application 13/911,95 3 1
Technology Center 2100
Before JAMES R. HUGHES, ERIC S. FRAHM, and
MATTHEW J. McNEILL, Administrative Patent Judges.
FRAHM, Administrative Patent Judge.
DECISION ON APPEAL
1 International Business Machines Corporation ("Appellant") is the
applicant, under 37 C.F.R. § 1.46 (see Application Data Sheet filed June 6,
2013 ), and is identified as the real party in interest. Appeal Br. 1.
Appeal2018-006508
Application 13/911,953
STATEMENT OF THE CASE
Introduction
Appellant appeals under 35 U.S.C. § 134(a) from a non-final rejection
of claims 1-14. See Appeal Br. 4--44. 2 We have jurisdiction under 35
U.S.C. § 6(b).
We affirm-in-part.
Exemplary Claim
Appellant's disclosed and claimed invention pertains to optimizing the
loading of a web page based on aggregated user preferences for Web page
elements of the Web page. Spec. ,r 1. Claim 1, reproduced below, is
illustrative of the claimed subject matter:
1. A computer program product embodied in a non-transitory
computer readable storage medium for optimizing the loading of
a web page, the computer program product comprising the
programming instructions for:
receiving indications of web page elements of interest of a
web page from a plurality of client devices;
updating a list of web page elements of said web page
sorted in terms of popularity based on said received indications
of web page elements of interest of said web page;
receiving a request to retrieve said web page;
2 We refer to Appellant's Specification ("Spec.") filed June 6, 2013;
Supplemental Appeal Brief ("Appeal Br.") filed December 12, 2017; and
Reply Brief ("Reply Br.") filed June 6, 2018. We also refer to the
Examiner's Non-Final Office Action (''Non-Final Act.") mailed September
21, 2017; and Answer ("Ans.") mailed April 6, 2018.
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Application 13/911,953
accessing said sorted list of web page elements of said web
page; and
transmitting data to populate content of web page elements
of said web page in an order based on said sorted list.
The Examiner's Rejections3
Claims 1-14 stand rejected under 35 U.S.C. § 101 as being directed to
patent-ineligible subject matter.
Claims 1, 2, 5, 8, 9, and 12 stand rejected under 35 U.S.C. § I02(a)(l)
as being anticipated by Khorashadi (US 2013/0031459 Al; Jan. 31, 2013). 4
Claims 3, 4, 10, and 11 stand rejected under 35 U.S.C. § I03(a) as
being unpatentable over Khorashadi and Bryar (US 8,225,195 B 1; Jul. 17,
2012).
3 The Examiner has withdrawn the provisional obviousness-type double
patenting rejection of claims 1-14. See Ans. 13.
4 Appellant asserts the Examiner improperly searched for the new prior art
references relied upon in the current anticipation and obviousness rejections,
subsequent to the Board's prior decision reversing obviousness rejections
based on other prior art references. See Appeal Br. 5-8; Reply Br. 2. The
Board's role is to review the rejections on the record. See 35 U.S.C. § 6(b)
("The Patent Trial and Appeal Board shall-( 1) on written appeal of an
applicant, review adverse decisions of examiners upon applications for
patents pursuant to section I34(a)"). The Examiner's conduct regarding the
new search is a petitionable matter, and we do not address it in our opinion.
See 3 7 C.F .R. § 1.181 (a) ("Petition may be taken to the Director: ( 1) From
any action or requirement of any examiner in the ex parte prosecution of an
application ... which is not subject to appeal to the Patent Trial and Appeal
Board or to the court"); MANUAL OF p ATENT EXAMINING PROCEDURE
("MPEP") § 1201 (Ninth Edition, Revision 08.2017 (rev. Jan. 2018)) ("The
line of demarcation between appealable matters for the Board and
petitionable matters for the Director of the U.S. Patent and Trademark Office
(Director) should be carefully observed.").
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Application 13/911,953
Claims 6 and 13 stand rejected under 35 U.S.C. § I03(a) as being
unpatentable over Khorashadi and Coleman (US 2011/0055740 Al; Mar. 3,
2011).
Claims 7 and 14 stand rejected under 35 U.S.C. § I03(a) as being
unpatentable over Khorashadi and Venkatrao (US 2014/0188814 Al; Jul. 3,
2014).
ANALYSIS
Patent Eligibility
Patent-eligible subject matter is defined in 35 U.S.C. § 101 of the
Patent Act, which recites:
Whoever invents or discovers any new and useful
process, machine, manufacture, or composition of matter, or
any new and useful improvement thereof, may obtain a patent
therefor, subject to the conditions and requirements of this title.
There are, however, three judicially-created exceptions to the broad
categories of patent-eligible subject matter in 35 U.S.C. § 101: "[l]aws of
nature, natural phenomena, and abstract ideas." Alice Corp. Pty. Ltd. v. CLS
Banklnt'l, 573 U.S. 208,216 (2014); Mayo Collaborative Servs. v.
Prometheus Labs., Inc., 566 U.S. 66, 70 (2012).
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court's two-step framework, described in Mayo
and Alice. Alice, 573 U.S. at 217-18 (citing Mayo, 566 U.S. at 75-77). In
accordance with that framework, we first determine what concept the claim
is "directed to." See id. at 219 ("On their face, the claims before us are
drawn to the concept of intermediated settlement, i.e., the use of a third party
to mitigate settlement risk."); see also Bilski v. Kappas, 561 U.S. 593, 611
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(2010) ("Claims 1 and 4 in petitioners' application explain the basic concept
of hedging, or protecting against risk .... ").
Concepts determined to be abstract ideas, and thus patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219--20; Bilski, 561 U.S. at 611);
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594--95 (1978)); and
mental processes ( Gottschalk v. Benson, 409 U.S. 63, 69 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as "molding rubber products" (Diamond v. Diehr, 450 U.S. 175, 192
( 1981) ); "tanning, dyeing, making water-proof cloth, vulcanizing India
rubber, smelting ores" (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S.
252, 267---68 (1854))); and manufacturing flour (Benson, 409 U.S. at 69
(citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
In Diehr, the claim at issue recited a mathematical formula, but the
Supreme Court held that "[a] claim drawn to subject matter otherwise
statutory does not become nonstatutory simply because it uses a
mathematical formula." Diehr, 450 U.S. at 187; see also id. at 191 ("We
view respondents' claims as nothing more than a process for molding rubber
products and not as an attempt to patent a mathematical formula."). Having
said that, the Supreme Court also indicated that a claim "seeking patent
protection for that formula in the abstract .... is not accorded the protection
of our patent laws, and this principle cannot be circumvented by attempting
to limit the use of the formula to a particular technological environment."
Id. ( citing Benson and Flook); see, e.g., id. at 187 ("It is now commonplace
that an application of a law of nature or mathematical formula to a known
structure or process may well be deserving of patent protection.").
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If the claim is "directed to" an abstract idea, we tum to the second
step of the Alice and Mayo framework, where "we must examine the
elements of the claim to determine whether it contains an 'inventive
concept' sufficient to 'transform' the claimed abstract idea into a patent-
eligible application." Alice, 573 U.S. at 221 (quotation marks omitted). "A
claim that recites an abstract idea must include 'additional features' to
ensure 'that the [claim] is more than a drafting effort designed to
monopolize the [ abstract idea]."' Id. ( alterations in original) ( quoting Mayo,
566 U.S. at 77). "[M]erely requir[ing] generic computer implementation[]
fail[s] to transform that abstract idea into a patent-eligible invention." Id.
The PTO recently published revised guidance on the application of
§ 101. USPTO's January 7, 2019 Memorandum, 2019 Revised Patent
Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (hereinafter, "Revised
Guidance"). Under that guidance, after determining that a claim falls within
one of the statutory categories under § 101 (hereinafter, "USPTO Step 1 "),
we determine whether the claim recites:
(1) any judicial exceptions, including certain groupings of abstract
ideas (i.e., mathematical concepts, mental processes, or certain
methods of organizing human activities such as a fundamental
economic practice or managing personal behavior or relationships or
interactions between people) (hereinafter, "USPTO Step 2A, Prong
1"); and
(2) additional elements that integrate the judicial exception into a
practical application (see MPEP §§ 2106.05(a}-(c), (e}-(h))
(hereinafter, "USPTO Step 2A, Prong 2").
Revised Guidance, at 51-52, 54--55.
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Only if a claim: (1) recites a judicial exception, and (2) does not integrate
that exception into a practical application, do we then evaluate whether the
claim provides an inventive concept. Revised Guidance, at 56; Alice, 573
U.S. at 217-18. For example, we look to whether the claim:
(3) adds a specific limitation beyond the judicial exception that is not
"well-understood, routine, conventional" in the field (see MPEP
§ 2106.05(d)); or
(4) simply appends well-understood, routine, and conventional
activities previously known to the industry, specified at a high level of
generality, to the judicial exception (hereinafter, "USPTO Step 2B").
Revised Guidance, at 56.
USPTO Steps 1 and 2A, Prong 1
Claim 1 relates to "[a] computer program product embodied in a non-
transitory computer readable storage medium for optimizing the loading of a
web page," which, on its face, falls at least within the category of a
"manufacture" under 35 U.S.C. § 101. See MPEP § 2106.03(!). The
Examiner finds, however, that claim 1 is directed to a judicial exception, in
particular, an abstract idea. Non-Final Act. 8-9. Specifically, the Examiner
compares certain concepts embodied by claim !-"receiving information,
sorting the received information, and transmitting the sorted information for
display"-to the abstract concepts found by the Federal Circuit in Electric
Power Grp., LLC v. Alstom S.A., 830 F.3d 1350 (Fed. Cir. 2016). Non-Final
Act. 8-9; Ans. 15-16. The Examiner further compares the sorting concept
in claim 1 to a "mathematical algorithm" (Non-Final Act. 9) and a "method
of organizing human behavior." Ans. 16.
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Appellant contends that claim 1 is unlike the patent-ineligible claims
in Electric Power and that claim 1 is not directed to an abstract mathematical
algorithm or any of the abstract methods of organizing human activity
identified by the Examiner in the Answer. See Appeal Br. 10-15; Reply Br.
4--8. We are persuaded by Appellant that claim 1 is not directed to an
abstract idea.
We focus here on the claim 1 limitations that correspond to the
concepts the Examiner has found constitute an abstract idea. See Non-Final
Act. 8-9. Claim 1 recites "receiving indications of web page elements of
interest of a web page from a plurality of client devices," "updating a list of
web page elements of said web page sorted in terms of popularity based on
said received indications of web page elements of interest of said web page,"
and "transmitting data to populate content of web page elements of said web
page in an order based on said sorted list." These limitations, under their
broadest reasonable interpretation, recite loading a Web page by transmitting
Web page elements in an order based on a determined popularity of
respective elements, i.e., a particularly optimized loading of a Web page.
The optimized loading of a Web page recited in claim 1 does not fall into
any of the subcategories of abstract ideas enumerated in the Revised
Guidance, namely:
(a) Mathematical concepts-mathematical relationships,
mathematical formulas or equations, mathematical calculations;
(b) Certain methods of organizing human activity-
fundamental economic principles or practices (including hedging,
insurance, mitigating risk); commercial or legal interactions
(including agreements in the form of contracts; legal obligations;
advertising, marketing or sales activities or behaviors; business
relations); managing personal behavior or relationships or interactions
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between people (including social activities, teaching, and following
rules or instructions); and
( c) Mental processes----concepts performed in the human mind
(including an observation, evaluation, judgment, opinion).
Revised Guidance, at 52. In particular, the sorting feature of claim!-
"updating a list of web page elements of said web page sorted in terms of
popularity based on said received indications of web page elements of
interest of said web page"----does not define any mathematical relationships,
formulas, equations, or calculations. While sorting may be based on
underlying mathematical concepts, updating a sorted list of Web page
elements based on popularity is not a naked mathematical abstraction, but
part of a procedure that defines how to load a Web page. The sorting feature
of claim 1 also does not define one of the enumerated subcategories of
methods of organizing human activity. Rather than organizing any
economic, commercial, legal, or human-based activity, the claimed updating
of a sorted list of Web page elements based on popularity organizes
information in the service of a technical pursuit, i.e., loading a Web page in
a particularly optimized way.
In addition, claim 1 is unlike the claims at issue in Electric Power. In
Electric Power the claims focused on "collecting information, analyzing it,
and displaying certain results of the collection and analysis." 830 F.3d at
1353. The court found "[t]he advance [the claims] purport to make is a
process of gathering and analyzing information of a specified content, then
displaying the results, and not any particular assertedly inventive technology
for performing those functions." Id. at 1354. In contrast, claim 1 does not
merely define what content is collected, analyzed, and displayed, but how
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indications of interest in Web page elements are used to load a Web page.
Accordingly, we are persuaded the Examiner erred in finding claim 1 is
directed to an abstract idea.
USPTO Step 2A, Prong 2
For completeness, we also look at whether claim 1 integrates the
alleged judicial exception into a practical application. Appellant contends
claim 1 is directed to a technological improvement. Appeal Br. 16-19;
Reply Br. We agree with Appellant.
In DDR Holdings, LLC v. Hotels.com, L.P., the Federal Circuit found
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" to be patent eligible. 773 F.3d 1245, 1248 (Fed.
Cir. 2014). Specifically, the court explained that
these claims stand apart because they do not merely recite the
performance of some business practice known from the pre-
Internet world along with the requirement to perform it on the
Internet. Instead, the claimed solution is necessarily rooted in
computer technology in order to overcome a problem specifically
arising in the realm of computer networks.
Id. at 1257. Similarly, claim 1 solves a problem specific to computer
networks:
[T]he server will be able to transmit to the browser of the
requesting client device the data to populate the content of the
elements of the requested web page that are higher in interest
prior to those of lower in interest thereby optimizing the loading
of the web page (i.e., possibly reducing the waiting time for the
user to view the element( s) of interest in the requested web page).
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Spec. ,r 16. Accordingly, we conclude that claim 1 integrates the allegedly
abstract concepts embodied therein into a practical application, specifically,
an improvement in the loading of a Web page. See MPEP § 2106.05(a).
USPTO Step 2B
As we determine claim 1 is not directed to a judicial exception, and in
any event, integrates the alleged judicial exception into a practical
application, we need not consider whether there is an inventive concept
under USPTO Step 2B. We are, therefore, persuaded the Examiner erred in
rejecting independent claim 1, independent claim 8 which recites
commensurate limitations, and dependent claims 2-7 and 9-14 for the same
reasons.
Anticipation
Claims 1, 5, 8, and 12
Appellant contends Khorashadi fails to disclose "accessing said sorted
list of web page elements of said web page" and "transmitting data to
populate content of web page elements of said web page in an order based
on said sorted list," as recited in claim 1. See Appeal Br. 21-24. We are not
persuaded by Appellant's arguments.
Khorashadi describes improving a browser experience when rendering
a Web page on a computing device, such as a mobile device, by providing
metadata to the browser that "may provide hints on how the mobile device
can efficiently handle a request for a webpage sent from the mobile device."
Khorashadi, ,r,r 57---60. "For example, the metadata may provide information
that certain data is frequently accessed or is popular among users."
Khorashadi, ,r 61. In one embodiment,
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based on a number of observed users, the metadata may indicate
that a portion of a webpage is the most viewed webpage element
based on statistical information. Metadata may indicate that the
most viewed webpage element may be downloaded first before
other webpage elements. . . . Metadata may indicate that the
processor may download one portion first over another portion,
a sequence or a schema.
Khorashadi, ,r 125. Here, Khorashadi' s description of metadata meets the
broadest reasonable interpretation of "a sorted list of web page elements"
because it indicates at least a portion of a Web page that may be downloaded
prior to other portions. That is, metadata that indicates priority of one
portion over other portions is "a sorted list." Further, Khorashadi's sending
the metadata to the mobile computing device and downloading, at the
mobile device, Web page portions in an order based on the metadata (see
Khorashadi, ,r 125) meets the limitations of "accessing said sorted list of
web page elements of said web page" and "transmitting data to populate
content of web page elements of said web page in an order based on said
sorted list," as recited in claim 1.
We are, therefore, not persuaded the Examiner erred in rejecting as
anticipated claim 1, and claims 5, 8, and 12 not specifically argued
separately.
Claims 2 and 9
Appellant contends Khorashadi fails to disclose "wherein said
indications of web page elements of interest of said web page are expressed
as Document Object Model (DOM) elements," as recited in claim 2. Appeal
Br. 24--26. We are persuaded of Examiner error.
Khorashadi discloses that "the metadata may include hints on how to
process a DOM tree in a parallel manner." Khorashadi, ,r 62. We are,
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however, persuaded by Appellant's argument that "[t]he server informing a
user on how to process a DOM tree does not correspond to the server
receiving browsing habits of the users, where such browsing habits include
indications that are expressed as Document Object Model (DOM) elements."
Appeal Br. 26. Although Khorashadi's metadata is based on, for example,
"aggregate information on browsing habits based on a plurality of users as
the users use a web browser" (Khorashadi, ,r 7), the Examiner has not shown
Khorashadi's browsing habits include "indications of web page elements of
interest" that "are expressed as Document Object Model (DOM) elements,"
as recited in claims 1 and 2. 5
We are, therefore, constrained by the record to find the Examiner
erred in rejecting claim 2, and claim 9 which recites commensurate
limitations.
Obviousness
Claims 3, 4, 10, and 11
The Examiner has not shown Bryar cures the deficiencies of
Khorashadi discussed above with respect to claims 2 and 9, from which
claims 3, 4, 10, and 11 depend. Accordingly, we find the Examiner erred in
rejecting claims 3, 4, 10, and 11 as being obvious for the same reasons the
Examiner erred in rejecting claims 2 and 9 as being anticipated.
5 Upon further prosecution, the Examiner may consider whether the
Coleman reference teaches these limitations in the portions of Coleman
relied upon by the Examiner in rejecting claims 6 and 13, and whether the
combination of such teachings with Khorashadi would have been obvious to
one of ordinary skill in the art.
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Claims 6 and 13
Appellant contends the Examiner fails to provide sufficient reasoning
for combining Coleman with Khorashadi in rejecting claims 6 and 13.
Appeal Br. 35-37. Specifically, Appellant argues the following:
There is no language in Coleman that makes any
suggestion to have the browsing habits of Khorashadi . . . be
identified in response to a user selection of an area on the web
page, where the user selection comprises drawing an outline
around the element of interest on the web page ... in order to
limit future loading or updating of elements corresponding to the
selected portion as taught by Coleman. In fact, this is contrary
to Khorashadi's intended purpose.
As taught in Khorashadi, Khorashadi teaches using the
monitored browsing habits to determine which portions of the
webpage should be rendered first as opposed to being prevented
from being rendered as taught in Coleman.
Appeal Br. 3 6. We are not persuaded of Examiner error.
Coleman's teachings are not as narrow as Appellant's arguments
suggest. Coleman teaches that a user can select among multiple display
templates for customizing the display of the selected content portion.
Coleman, ,r 13. For example, display templates may include "a traditional
collapsible section, a dynamic slider, and an accordion-type display. Other
display templates could cause the selected content portion to be, for
example, always hidden or always visible." Id. Accordingly, Coleman
teaches a display template in which the user's selected content portion is
always visible. See id. Thus, combining Coleman with Khorashadi would
not have rendered Khorashadi unsatisfactory for its intended purpose
because Coleman's teachings are not confined to a display template that
limits the loading of the user's selected content.
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We are, therefore, not persuaded the Examiner erred in rejecting as
obvious claim 6, and claim 13 not specifically argued separately.
Claims 7 and 14
Appellant contends "[ t ]here is no discussion in Khorashadi or
Venkatrao regarding the concept of using AMD API, let alone using AMD
API for defining web page elements of interest and their children that can be
asynchronously loaded." Appeal Br. 39. We are persuaded of Examiner
error.
The Examiner relies on Khorashadi for teaching the claim 7 limitation
of an "Asynchronous Module Definition (AMD) Application Programming
Interface (API) for defining web page elements of interest." Non-Final Act.
17; Ans. 24--25. The Examiner's cited portions of Khorashadi, however, do
not explicitly describe such an AMD API, and the Examiner does not
explain how the cited portions teach this feature. Rather, Khorashadi merely
describes an API "that enables interaction with any resident applications
(e.g., a 'media' interface 140 that works cooperatively with information
communicated by the registration server 142 shown in FIG. 1)."
Khorashadi, ,r 77. We see no teaching of an AMD API "for defining web
page elements of interest," as recited in claim 7.
The Examiner relies on V enkatrao for teaching the claim 7 limitation
of "defining ... children that can be asynchronously loaded." See Non-Final
Act. 17; Ans. 25. However, while Venkatrao describes APis that provide
"asynchronous update behavior for data viewable via the personalized user
site" (Venkatrao, ,r 4), the Examiner has not shown Venkatrao teaches
defining children of Web page elements of interest that can be
asynchronously loaded.
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We are, therefore, constrained by the record to find the Examiner
erred in rejecting as obvious claim 7, and claim 14 which recites
commensurate limitations.
CONCLUSIONS
Under 35 U.S.C. § 101, the Examiner erred in rejecting claims 1-14.
Under 35 U.S.C. § 102(a)(l), the Examiner erred in rejecting claims 2
and 9, but did not err in rejecting claims 1, 5, 8, and 12.
Under 35 U.S.C. § 103(a), the Examiner erred in rejecting claims 3, 4,
7, 10, 11, and 14, but did not err in rejecting claims 6 and 13.
DECISION
We affirm the Examiner's decision to reject claims 1, 5, 6, 8, 12, and
13,6 and reverse the Examiner's decision to reject claims 2--4, 7, 9-11, and
14.
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-IN-PART
6 See 37 C.F.R. § 4I.50(a)(l) ("The affirmance of the rejection of a claim on
any of the grounds specified constitutes a general affirmance of the decision
of the examiner on that claim, except as to any ground specifically
reversed").
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