Ex Parte Nelson et al

Patent Trial and Appeal Board

Jun 11, 2018

10390570 (P.T.A.B. Jun. 11, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
10/390,570 03/13/2003
29989 7590 06/13/2018
HICKMAN PALERMO BECKER BINGHAM LLP
1 ALMADEN BOULEVARD
FLOOR 12
SAN JOSE, CA 95113
Lance Nelson
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.
60201-0015 3918
EXAMINER
ZIMMERMAN, JEFFREY P
ART UNIT PAPER NUMBER
3624
NOTIFICATION DATE DELIVERY MODE
06/13/2018 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):
usdocket@h35g.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte LANCE NELSON, RYAN PENNER, MICHAEL RAMIREZ,
and BRETT MEL TON
Appeal2016-007980
Application 10/390,570
Technology Center 3600
Before ANTON W. PETTING, JOSEPH A. FISCHETTI, and
BRADLEY B. BAY AT, Administrative Patent Judges.
PETTING, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE 1
Lance Nelson, Ryan Penner, Michael Ramirez, and Brett Melton
(Appellants)2 seek review under 35 U.S.C. § 134 of a Final Rejection of
1 Our decision will make reference to the Appellants' Appeal Brief ("App.
Br.," filed February 25, 2016) and Reply Brief ("Reply Br.," filed August
19, 2016), and the Examiner's Answer ("Ans.," mailed June 22, 2016), and
Final Action ("Final Act.," mailed November 27, 2015).
2 The real party in interest is Aptimus, Inc., the assignee of record. App. Br.
1.
Appeal2016-007980
Application 10/390,570
claims 1-8, 11, 12, 14--22, 26, 29, and 31, the only claims pending in the
application on appeal. We have jurisdiction over the appeal pursuant to
35 U.S.C. § 6(b).
The Appellants invented a way of automating the placement of online
offers for consumers (Specification 1 :7-9).
An understanding of the invention can be derived from a reading of
exemplary claim 1, which is reproduced below (bracketed matter and some
paragraphing added).
1. A computer implemented method of placing an offer on a
web page, the method comprising:
[ 1] obtaining placement data of a web page for an offer
placement,
including placement information for a slot on the web
page;
[2] using the placement data to identify a plurality of offers that
are associated with a plurality of initial placement values, each
offer having
(a) offer information corresponding to said placement
information
and
(b) an initial placement value for said offer placement;
wherein each offer of the plurality of offers is associated
with a distinct initial placement value;
[3] generating a plurality of random factors for the plurality of
offers,
wherein a corresponding random factor is independently
generated for each offer;
[ 4] for each of the plurality of offers, generating a randomized
placement value based on
(a) the initial placement value of the offer
and
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(b) the random factor generated for the offer;
[5] determining that a particular offer of the plurality of offers
has a highest randomized placement value of the plurality of
offers;
wherein the particular offer does not have the highest
initial placement value of the plurality of offers;
[ 6] selecting the particular offer from the plurality of offers
based on the particular offer having the highest randomized
placement value of the plurality of offers;
and
[7] placing the particular offer on the slot on the web page;
wherein the method is performed by one or more
computing devices.
Claims 1-8, 11, 12, 14--22, 26, 29, and 31 stand rejected under 35
U.S.C. § 101 as directed to non-statutory subject matter.
ISSUES
The issues of eligible subject matter tum primarily on whether the
claims recite more than abstract conceptual advice of what a computer is to
provide without implementation details.
ANALYSIS
Method claim 1 recites obtaining placement data, using the placement
data to identify a plurality of offers, generating a plurality of random
factors, generating a randomized placement value, determining that a
particular offer of the plurality of offers has a highest randomized placement
value, selecting the particular offer, and placing the particular offer. Thus,
claim 1 recites obtaining, identifying, and generating data, and then
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identifying, selecting, and writing data. None of the limitations recite
implementation details for any of these steps, but instead recite functional
results to be achieved by any and all possible means. Data reception,
analysis and generation, and writing are all generic, conventional data
processing operations to the point they are themselves concepts awaiting
implementation details. The sequence of data reception-generation and
analysis-writing is equally generic and conventional. The ordering of the
steps is therefore ordinary and conventional. The remaining claims merely
describe processing parameters, with no implementation details.
The Supreme Court
set forth a framework for distinguishing patents that claim laws
of nature, natural phenomena, and abstract ideas from those that
claim patent-eligible applications of those concepts. First, []
determine whether the claims at issue are directed to one of
those patent-ineligible concepts. [] If so, we then ask, "[ w ]hat
else is there in the claims before us? [] To answer that question,
[] consider the elements of each claim both individually and "as
an ordered combination" to determine whether the additional
elements "transform the nature of the claim" into a patent-
eligible application. [The Court] described step two of this
analysis as a search for an "'inventive concept'"-i.e., an
element or combination of elements that is "sufficient to ensure
that the patent in practice amounts to significantly more than a
patent upon the [ineligible concept] itself."
Alice Corp., Pty. Ltd. v CLS Bank Intl, 134 S.Ct. 2347, 2355 (2014) (citing
Mayo Collaborative Services v. Prometheus Laboratories, Inc., 566 U.S. 66
(2012)).
To perform this test, we must first determine whether the claims at
issue are directed to a patent-ineligible concept. The Examiner determines
the claims directed to randomly placing offers. Final Act. 2.
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Although the Court in Alice made a determination as to what the
claims were directed to, we find that this case's claims themselves and the
Specification provide enough information to inform one as to what they are
directed to.
The preamble to claim 1 recites that it is a method of placing an offer
on a web page. The steps in claim 1 result in placing a particular offer on a
slot on a web page. The Specification at 1 :7-9 recites that the invention
relates to automating the placement of online offers for consumers. Thus, all
this evidence shows that claim 1 is directed to ad placement, i.e. advertising.
This is consistent with the Examiner's finding.
It follows from prior Supreme Court cases, and Bilski (Bilski v
Kappas, 561 U.S. 593 (2010)) in particular, that the claims at issue here are
directed to an abstract idea. Like the concept of risk hedging in Bilski, the
concept of advertising is a fundamental business practice long prevalent in
our system of commerce. The use of advertising is also a building block of
ingenuity in marketing. Thus, advertising, like hedging, is an "abstract idea"
beyond the scope of§ 101. See Alice Corp. Pty. Ltd., 134 S.Ct. at 2356.
As in Alice, we need not labor to delimit the precise contours of the
"abstract ideas" category in this case. It is enough to recognize that there is
no meaningful distinction in the level of abstraction between the concept of
risk hedging in Bilski and the concept of advertising at issue here. Both are
squarely within the realm of "abstract ideas" as the Court has used that term.
See Alice Corp. Pty. Ltd., 134 S.Ct. at 2357.
Further, claims involving data collection, analysis, and display are
directed to an abstract idea. Electric Power Group v. Alstom S.A., 830 F.3d
1350, 1353 (Fed. Cir. 2016) (holding that "collecting information, analyzing
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it, and displaying certain results of the collection and analysis" are "a
familiar class of claims 'directed to' a patent ineligible concept"); see also In
re TL! Commc'ns LLC Patent Litig., 823 F.3d 607,611 (Fed. Cir. 2016);
FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1093-94 (Fed. Cir.
2016). Claim 1, unlike the claims found non-abstract in prior cases, uses
generic computer technology for obtaining, identifying, and generating data,
and then identifying, selecting, and writing data, and does not recite an
improvement to a particular computer technology. See, e.g., McRO, Inc. v.
Bandai Namco Games Am. Inc., 837 F.3d 1299, 1314--15 (Fed. Cir. 2016)
( finding claims not abstract because they "focused on a specific asserted
improvement in computer animation"). As such, claim 1 is directed to the
abstract idea of obtaining, identifying, and generating data, and then
identifying, selecting, and writing data.
The remaining claims merely describe processing parameters. We
conclude that the claims at issue are directed to a patent-ineligible concept.
The introduction of a computer into the claims does not alter the
analysis at Alice step two.
the mere recitation of a generic computer cannot transform a
patent-ineligible abstract idea into a patent-eligible invention.
Stating an abstract idea "while adding the words 'apply it"' is
not enough for patent eligibility. Nor is limiting the use of an
abstract idea "'to a particular technological environment."'
Stating an abstract idea while adding the words "apply it with a
computer" simply combines those two steps, with the same
deficient result. Thus, if a patent's recitation of a computer
amounts to a mere instruction to "implement[t]" an abstract
idea "on ... a computer," that addition cannot impart patent
eligibility. This conclusion accords with the preemption
concern that undergirds our § 101 jurisprudence. Given the
ubiquity of computers, wholly generic computer
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implementation is not generally the sort of "additional
feature[ e ]" that provides any "practical assurance that the
process is more than a drafting effort designed to monopolize
the [ abstract idea] itself."
Alice Corp. Pty. Ltd., 134 S.Ct. at 2358 ( citations omitted).
"[T]he relevant question is whether the claims here do more than
simply instruct the practitioner to implement the abstract idea [] on a generic
computer." Alice Corp. Pty. Ltd., 134 S.Ct. at 2359. They do not.
Taking the claim elements separately, the function performed by the
computer at each step of the process is purely conventional. Using a
computer to read, analyze, and update data amounts to electronic data query
and retrieval----one of the most basic functions of a computer. The wherein
clauses are not steps, but a recitation of data characterization, which is
aspirational rather than functional. All of these computer functions are well-
understood, routine, conventional activities previously known to the
industry. See Elec. Power Grp. v. Alstom S.A., supra. Also see In re Katz
Interactive Call Processing Patent Litigation, 639 F.3d 1303, 1316 (Fed.
Cir. 2011) ("Absent a possible narrower construction of the terms
'processing,' 'receiving,' and 'storing,' . . . those functions can be achieved
by any general purpose computer without special programming"). In short,
each step does no more than require a generic computer to perform generic
computer functions. As to the data operated upon, "even if a process of
collecting and analyzing information is 'limited to particular content' or a
particular 'source,' that limitation does not make the collection and analysis
other than abstract." SAP America Inc. v. InvestPic LLC, No. 2017-2081,
2018 WL 2207254 (Fed. Cir. May 15, 2018).
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Considered as an ordered combination, the computer components of
Appellants' method add nothing that is not already present when the steps
are considered separately. The sequence of data reception-generation and
analysis-writing is equally generic and conventional or otherwise held to be
abstract. See Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed. Cir.
2014) (sequence of receiving, selecting, offering for exchange, display,
allowing access, and receiving payment recited an abstraction), Inventor
Holdings, LLC v. Bed Bath & Beyond, Inc., 876 F.3d 1372, 1378 (Fed. Cir.
2017) (sequence of data retrieval, analysis, modification, generation, display,
and transmission), Two-Way Media Ltd. v. Comcast Cable Communications,
LLC, 874 F.3d 1329, 1339 (Fed. Cir. 2017) (sequence of processing, routing,
controlling, and monitoring). The ordering of the steps is therefore ordinary
and conventional.
Viewed as a whole, Appellants' method claims simply recite the
concept of advertising as performed by a generic computer. To be sure, the
claims recite doing so by advising one to place ads by computing random
values based on given parameters and using the offer with the highest result
to select an offer for placement. But this is no more than abstract conceptual
advice on the parameters for such advertising and the generic computer
processes necessary to process those parameters, and do not recite any
particular implementation.
The method claims do not, for example, purport to improve the
functioning of the computer itself. Nor do they effect an improvement in
any other technology or technical field. The 17+ pages of the Specification
do not bulge with disclosure, but only spell out different generic equipment
and parameters that might be applied using this concept, and the particular
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steps such conventional processing would entail based on the concept of
advertising under different scenarios. They do not describe any particular
improvement in the manner a computer functions. Instead, the claims at
issue amount to nothing significantly more than an instruction to apply the
abstract idea of advertising using some unspecified, generic computer.
Under our precedents, that is not enough to transform an abstract idea into a
patent-eligible invention. See Alice Corp. Pty. Ltd., 134 S.Ct. at 2360.
We adopt as our own the Examiner's findings and analysis from Final
Action 2-9 and Answer 2-11 and reach similar legal conclusions. We now
tum to the Reply Brief arguments.
Appellants first contend that the Examiner has changed the
characterization as to what the claims are directed to. Reply Br. 3.
Appellants contend the Examiner now determines the claims are directed to
placing offers using randomization. Id. at 4. Appellants contend that as a
result, the Examiner has failed to present a prima facie case because he
mischaracterized what the claims are directed to. Id. Appellants contend the
claims are directed to ad placement based on (a) the initial placement value
of the offer and (b) the random factor generated for the offer. Id. We find
supra that the claims are directed to advertising albeit by advising one to
place ads by computing random values based on given parameters and using
the offer with the highest result to select an offer for placement. Although
claim 1 step [ 4] recites using both a random factor and the initial placement
value, the result of this step is a "randomized placement value." Thus, the
Examiner's determination is consistent with the result of step [ 4] that is used
in steps [5]-[7]. Appellants conflate the two Alice steps by contending that
limitations along the way are part of what the claim achieves. Instead, such
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limitations are examined in step 2 to determine if an inventive concept is
found.
Appellants rely on Enfish, LLC v. Microsoft Corp., 822 F.3d 1327
(Fed, Cir. 2016) to support their argument. This is unavailing as the court in
Enfish found that "we find it relevant to ask whether the claims are directed
to an improvement to computer functionality versus being directed to an
abstract idea, even at the first step of the Alice analysis." Id. at 1335. Thus,
it is only improvements to computer functionality that may expand beyond
the abstract idea in Alice step 1. The parameters used to perform a
computation are not improvements to computer functionality.
We are not persuaded by Appellants' argument that "there are at least
two categories of abstract ideas identified by the Invalid Conglomerate Idea:
(1) organization information and (2) use of mathematics. While either (1) or
(2) corresponds to a judicially recognized category of abstract ideas, put
together, they become an invalid conglomerate idea." Reply Br. 5. "Adding
one abstract idea ... to another abstract idea ... does not render the claim
nonabstract." RecogniCorp, LLC v. Nintendo Co., Ltd., 855 F.3d 1322, 1327
(Fed. Cir. 2017).
We are not persuaded by Appellants' argument that the Examiner's
comparison to Digitech Image Technologies, LLC v. Electronics for
Imaging, Inc., 758 F.3d 1344 (Fed. Cir. 2014) is unavailing. See Reply Br.
6. The Examiner applied Digitech to show that organizing information
through mathematical correlations is an example of an abstract idea found by
the Federal Circuit. Appellants contend that in Digitech, the mathematical
operations applied to existing information, whereas the instant claims use a
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random factor. This does not meaningfully distinguish Digitech as the
underlying use of mathematics remains present.
We are not persuaded by Appellants' argument that "[h]aving not
invented the 'generic' computer may yet lead to patent-eligible subject-
matter, as found in the court in Bascom: 'an inventive concept can be found
in the non-conventional and non-generic arrangement of known,
conventional pieces.' Bascom Global Internet v. AT&T Mobility LLC (Fed
Cir. 2016), at 15." Reply Br. 7. Appellants contend that generating a
randomized placement value based on (a) the initial placement value of the
offer and (b) the random factor generated for the offer together make Claim
1 patent-eligible under section 101. Id. Simply put, values are not pieces
and using unconventional parameters in a computation does not make a
computation as such any less abstract.
We are not persuaded by Appellants' argument that as is made clear
by the Board's decision regarding novelty and obviousness on the point of
randomization, this is exactly the kind of unconventional feature that makes
claim 1 patent eligible. "A claim for a new abstract idea is still an abstract
idea. The search for a § 101 inventive concept is thus distinct from
demonstrating§ 102 novelty." Synopsys, Inc. v. Mentor Graphics
Corporation, 839 F.3d 1138, 1151 (Fed. Cir. 2016).
Appellants further argue that the asserted claims are akin to the
claims found patent-eligible in DDR Holdings, LLC v. Hotels.com, L.P.
773 F.3d 1245 (Fed. Cir. 2014). Reply Br. 9-10. In DDR Holdings, the
court evaluated the eligibility of claims "address[ing] the problem of
retaining website visitors that, if adhering to the routine, conventional
functioning of Internet hyperlink protocol, would be instantly
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transported away from a host's website after 'clicking' on an
advertisement and activating a hyperlink." 773 F.3d at 1257. There, the
court found that the claims were patent eligible because they transformed
the manner in which a hyperlink typically functions to resolve a
problem that had no "pre-Internet analog." 773 F.3d at 1258. The court
cautioned, however, "that not all claims purporting to address Internet-
centric challenges are eligible for patent." Id. For example, in DDR
Holdings the court distinguished the patent-eligible claims at issue from
claims found patent-ineligible in Ultramercial. See id. at 1258-59 (citing
Ultramercial, 772 F.3d 709, 715-16 (Fed. Cir. 2014)). As noted there,
the Ultramercial claims were "directed to a specific method of advertising
and content distribution that was previously unknown and never
employed on the Internet before." Id. at 1258 (quoting Ultramercial, 772
F.3d at 715-16). Nevertheless, those claims were patent ineligible
because they "merely recite[d] the abstract idea of 'offering media content
in exchange for viewing an advertisement,' along with 'routine additional
steps such as updating an activity log, requiring a request from the
consumer to view the ad, restrictions on public access, and use of the
Internet. '" Id.
Appellants' asserted claims are analogous to claims found ineligible
in Ultramercial and distinct from claims found eligible in DDR Holdings.
The ineligible claims in Ultramercial recited "providing [a] media product
for sale at an Internet website;" "restricting general public access to said
media product;" "receiving from the consumer a request to view [a]
sponsor message;" and "if the sponsor message is an interactive message,
presenting at least one query to the consumer and allowing said consumer
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access to said media product after receiving a response to said at least one
query." 772 F.3d at 712. Similarly, Appellants' asserted claims recite
obtaining, identifying, and generating data, and then identifying, selecting,
and writing data. This is precisely the type of Internet activity found
ineligible in Ultramercial.
CONCLUSIONS OF LAW
The rejection of claims 1-8, 11, 12, 14--22, 26, 29, and 31 under 35
U.S.C. § 101 as directed to non-statutory subject matter is proper.
DECISION
The rejection of claims 1-8, 11, 12, 14--22, 26, 29, and 31 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). See 37 C.F.R.
§ 1.136(a)(l)(iv) (2011).
AFFIRMED
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