Ex Parte Nicholas et al

Patent Trial and Appeal Board

Sep 22, 2014

11134116 (P.T.A.B. Sep. 22, 2014)

UNITED STATES PATENT AND TRADEMARKOFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
11/134,116 05/20/2005 Frank C. Nicholas 7710/20 9804
7590 09/23/2014
FRANK C. NICHOLAS
CARDINAL LAW GROUP
Suite 2000
1603 Orrington Avenue
Evanston, IL 60201
EXAMINER
DURAN, ARTHUR D
ART UNIT PAPER NUMBER
3682
MAIL DATE DELIVERY MODE
09/23/2014 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 1
___________ 2
3
BEFORE THE PATENT TRIAL AND APPEAL BOARD 4
___________ 5
6
Ex parte FRANK C. NICHOLAS, 7
IAN B. CARSWELL, 8
and PAUL M. HLETKO 9
___________ 10
11
Appeal 2012-000285 12
Application 11/134,116 13
Technology Center 3600 14
___________ 15
16
17
Before ANTON W. FETTING, GEORGE R. HOSKINS, and 18
KEVIN W. CHERRY, Administrative Patent Judges. 19
FETTING, Administrative Patent Judge. 20
DECISION ON APPEAL 21
Appeal 2012-000285
Application 11/134,116

2

STATEMENT OF THE CASE1 1
Frank C. Nicholas, Ian B. Carswell, and Paul M. Hletko (Appellants) 2
seek review under 35 U.S.C. § 134 of a final rejection of claims 1–10, 12, 3
and 21–31, the only claims pending in the application on appeal. We have 4
jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b). 5
The Appellants claim to have invented a way of targeted distribution of 6
advertisements over a network (Specification 1:17–19). 7
An understanding of the claimed invention can be derived from a 8
reading of exemplary claim 1, which is reproduced below [some 9
paragraphing added]. 10
1. A method of online advertising comprising: 11
receiving an ad request; 12
determining at least one proxy ad in response to the ad request; 13
and 14
providing the at least one proxy ad, wherein the at least one 15
proxy ad links to a listing page. 16
The Examiner relies upon the following prior art: 17
Gerace US 5,848,396 Dec. 8, 1998
Smith US 6,018,748 Jan. 25, 2000
Koningstein US 2005/0096980 A1 May 5, 2005
Claims 1–10, 12, and 21, 22 stand rejected under 35 U.S.C. § 101 as 18
directed to non-statutory subject matter. 19

1 Our decision will make reference to the Appellants’ Appeal Brief (“App.
Br.,” filed May 31, 2011) and Reply Brief (“Reply Br.,” filed September 19,
2011), and the Examiner’s Answer (“Ans.,” mailed July 19, 2011).
Appeal 2012-000285
Application 11/134,116

3

Claims 1–5, 7–10, 12, and 22–31 stand rejected under 35 U.S.C. 1
§ 103(a) as unpatentable over Koningstein. 2
Claim 6 stands rejected under 35 U.S.C. § 103(a) as unpatentable over 3
Koningstein and Smith. 4
Claim 21 stands rejected under 35 U.S.C. § 103(a) as unpatentable over 5
Koningstein and Gerace. 6
ISSUES 7
The issues of statutory subject matter turn primarily on whether the 8
claims recite more than the abstract concept of advertising. The issues of 9
obviousness turn primarily on whether the content of an ad can distinguish 10
over the art, and if so, whether content in the form of a listing is a 11
predictable form of a linked ad. 12
FACTS PERTINENT TO THE ISSUES 13
The following enumerated Findings of Fact (FF) are believed to be 14
supported by a preponderance of the evidence. 15
Facts Related to Claim Construction 16
01. The disclosure contains no lexicographic definition of “proxy ad.” 17
18
Facts Related to Appellants’ Disclosure 19
02. One embodiment of a proxy ad is described as an advertisement 20
run promoting the community or the chamber that is proxy 21
advertising for the chamber members. Spec. 76:16–17. 22
23
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Facts Related to the Prior Art 1
Koningstein 2
03. Koningstein is directed to providing unobtrusive, expandable 3
advertisements over the Internet, and particularly to delivering a 4
morphing advertisement that changes from one display format to 5
another display format based on user request. Koningstein para. 2. 6
04. Koningstein describes advertising in an electronic document by 7
storing advertisements associated with subject matters of interest 8
to users. The advertisements include a morphing advertisement. 9
Koningstein receives a request for advertisements related to a 10
subject matter of interest, and delivers a morphing advertisement, 11
including instructions to enable an end user system to change a 12
first display format to a second display format different from the 13
first display format based on user request. Koningstein para. 7. 14
05. Koningstein describes advertisements associated with one or more 15
subject matters of interest to users and storing at least one price 16
parameter value in association with one or more advertisements 17
when the advertisement meets one or more performance 18
parameters with respect to the end user. Upon receiving a request 19
for one or more advertisements related to a subject matter of 20
interest, Koningstein determines one or more advertisements to 21
deliver based at least in part on the price parameter associated 22
with advertisements associated with the subject matter of interest 23
and at least one area-based parameter. Koningstein para. 8. 24
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Application 11/134,116

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06. Koningstein describes how advertisements may be presented in 1
electronic documents, such as web content in a manner that 2
enables transition from a first display format into a second display 3
format on demand in a rapid fashion. In one example, the 4
advertisement or a grouping of advertisements is/are presented 5
first in textual format while enabling the user to expand the 6
advertisement into a menu-driven, graphical advertisement. The 7
menu-driven, graphical advertisement may enable the user to view 8
the content of the advertisement and then return to the textual 9
format if desired. Koningstein para. 22. 10
07. Koningstein describes how the second display format may 11
comprise a menu-driven, graphical advertisement that includes 12
one or more menu-selections and further graphics or text to enable 13
the user to find out more about the advertiser and/or its products 14
before deciding whether to visit the pages of content to which the 15
user will be transferred upon selection of the advertisement. The 16
menus may provide one or more selections that enable the user to 17
view even more information/content related to advertiser and/or 18
its products. When the user selects one of the menu selections, the 19
contents page returned may include the same menu-driven 20
graphics-based advertisement so that the advertisement “follows 21
the user.” A “home” link may be provided to transfer the user 22
back to the contents/search page and menu-based graphical 23
advertisement viewed before the user selected the menu selection 24
in the advertisement. In one exemplary embodiment, the 25
advertiser is not determined to have met a performance parameter 26
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(e.g., a “click-through”) for a menu-selection within the 1
advertisement, so the user is able to learn more about the 2
advertiser and/or its products before it “clicks through.” Enabling 3
the user to view more information before an advertiser is deemed 4
to have met a performance parameter that results in charging of a 5
price parameter associated with the performance parameter makes 6
the eventual referral more valuable to the advertisers. Koningstein 7
para. 23. 8
08. Koningstein describes how the original “advertisement” may 9
comprise free information provided via the Internet and/or World 10
Wide Web that expands to provide more information about an 11
advertising entity and/or is products and/or services. In addition, 12
the first display format may be an advertisement and the second 13
display format may comprise free web-based information. For 14
example, a search result entry in a search engine may be 15
expandable into a local business listing. Koningstein para. 29. 16
09. Koningstein describes linking a web page to an ad. Koningstein 17
para. 65. 18
19
Appeal 2012-000285
Application 11/134,116

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ANALYSIS 1
Claims 1–10, 12, and 21, 22 rejected under 35 U.S.C. § 101 as directed to 2
non-statutory subject matter 3
The Supreme Court 4
set forth a framework for distinguishing patents that claim laws 5
of nature, natural phenomena, and abstract ideas from those that 6
claim patent-eligible applications of those concepts. First, [] 7
determine whether the claims at issue are directed to one of 8
those patent-ineligible concepts. [] If so, we then ask, “[w]hat 9
else is there in the claims before us?” [] To answer that 10
question, [] consider the elements of each claim both 11
individually and “as an ordered combination” to determine 12
whether the additional elements “transform the nature of the 13
claim” into a patent-eligible application. [The Court has] 14
described step two of this analysis as a search for an “‘inventive 15
concept’”—i.e., an element or combination of elements that is 16
“sufficient to ensure that the patent in practice amounts to 17
significantly more than a patent upon the [ineligible concept] 18
itself.” 19
Alice Corp. Pty. Ltd. v CLS Bank Int’l, 134 S.Ct. 2347, 2355 (2014) (citing 20
Mayo Collaborative Services v. Prometheus Laboratories, Inc., 132 S.Ct. 21
1289 (2012)). 22
We must first determine whether the claims at issue are directed to a 23
patent-ineligible concept. We conclude that they are. These claims are 24
drawn to the abstract idea of advertising. It follows from prior Supreme 25
Court cases, particularly Bilski v. Kappos, 130 S.Ct. 3218 (2010), that the 26
claims at issue here are directed to an abstract idea. On their face, the claims 27
before us are drawn to the concept of advertising. Like the risk hedging in 28
Bilski, the concept of advertising is a fundamental economic practice long 29
prevalent in our system of commerce. The use of an advertisement is also a 30
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building block of the modern economy. Thus, advertising, like hedging, is 1
an “abstract idea” beyond the scope of § 101. See Alice Corp. Pty. Ltd., 134 2
S.Ct. at 2355–57. 3
As in Alice Corp. Pty. Ltd., we need not labor to delimit the precise 4
contours of the “abstract ideas” category in this case. See id. at 2357. It is 5
enough to recognize that there is no meaningful distinction in level of 6
abstraction between the concept of risk hedging in Bilski and the concept of 7
advertising at issue here. Both are squarely within the realm of “abstract 8
ideas” as the Court has used that term. See id. 9
The introduction of a computer into the claims does not alter the analysis 10
at Mayo step two. 11
[T]he mere recitation of a generic computer cannot transform a 12
patent-ineligible abstract idea into a patent-eligible invention. 13
Stating an abstract idea “while adding the words ‘apply it’” is 14
not enough for patent eligibility. Nor is limiting the use of an 15
abstract idea “‘to a particular technological environment.’” 16
Stating an abstract idea while adding the words “apply it with a 17
computer” simply combines those two steps, with the same 18
deficient result. Thus, if a patent’s recitation of a computer 19
amounts to a mere instruction to “implemen[t]” an abstract idea 20
“on . . . a computer,” that addition cannot impart patent 21
eligibility. This conclusion accords with the preemption 22
concern that undergirds our §101 jurisprudence. Given the 23
ubiquity of computers, wholly generic computer 24
implementation is not generally the sort of “additional 25
featur[e]” that provides any “practical assurance that the 26
process is more than a drafting effort designed to monopolize 27
the [abstract idea] itself.” 28
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Application 11/134,116

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Alice Corp. Pty. Ltd., 134 S.Ct. at 2358 (citations omitted). 1
“[T]he relevant question is whether the claims here do more than simply 2
instruct the practitioner to implement the abstract idea [] on a generic 3
computer.” Id. at 2359. They do not. 4
Taking the claim elements separately, the function performed by the 5
computer at each step of the process is purely conventional. Using a 6
computer to receive a request, determine an ad, and provide that ad amounts 7
to electronic data query and retrieval—one of the most basic functions of a 8
computer. The limitation of “the at least one proxy ad links to a listing 9
page” is not a step, but a recitation of advertising content, viz. a link, which 10
is the binary data equivalent of a text citation. The only step recited in that 11
limitation is that of providing an ad. The phrase “ad links to” means only 12
that an ad has text that names some other content. An ad itself does not 13
transit to a linked page, so the phrase “links to” means only “recites the 14
name of.” All of these computer functions are well-understood, routine, 15
conventional activities previously known to the industry. In short, each step 16
does no more than require a generic computer to perform generic computer 17
functions. 18
Considered as an ordered combination, the computer components of 19
Appellants’ claimed method add nothing that is not already present when the 20
steps are considered separately. Viewed as a whole, Appellants’ method 21
claims simply recite the concept of advertising as performed by a generic 22
computer. The method claims do not, for example, purport to improve the 23
functioning of the computer itself. Nor do they effect an improvement in 24
any other technology or technical field. Instead, the claims at issue amount 25
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to nothing significantly more than an instruction to apply the abstract idea of 1
advertising using some unspecified, generic computer. That is not enough to 2
transform an abstract idea into a patent-eligible invention. See Alice Corp. 3
Pty. Ltd., 134 S.Ct. at 2359–60. 4
Claims 1–5, 7–10, 12, and 22–31 rejected under 35 U.S.C. § 103(a) as 5
unpatentable over Koningstein 6
Claim 6 rejected under 35 U.S.C. § 103(a) as unpatentable over Koningstein 7
and Smith 8
Claim 21 rejected under 35 U.S.C. § 103(a) as unpatentable over 9
Koningstein and Gerace 10
Claim 1 has three steps: (1) receiving an ad request; (2) determining a 11
proxy ad; and (3) providing the proxy ad. Step (3) also recites that the proxy 12
ad content contains a link to a listing page. 13
There is no question but that Koningstein (1) receives an ad request; 14
(2) determines an ad; and (3) provides the ad. Koningstein also links 15
another page to the provided ad. The phrase “proxy ad” is undefined, but 16
the Specification describes one ad that can be run in place of another. Under 17
a broadest reasonable interpretation, so long as there are plural ads to select 18
from, any one of those ads when selected is run in place of those not chosen. 19
The arguments go to the recited link target as being a listing page. A 20
listing page is simply a text afforded no patentable weight. The page content 21
being a listing does not have a functional relationship to the claim process. 22
It cannot distinguish the claim over the art, for otherwise anyone could 23
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continue patenting a process indefinitely by adding similar unrelated 1
limitations. 2
In an analogous context, we have held that “[w]here the printed 3
matter is not functionally related to the substrate, the printed 4
matter will not distinguish the invention from the prior art in 5
terms of patentability.”. . . The rationale behind this line of 6
cases is preventing the indefinite patenting of known products 7
by the simple inclusion of novel, yet functionally unrelated 8
limitations. 9
Although these “printed matter” cases involved the addition of 10
printed matter, such as written instructions, to a known product, 11
we see no principled reason for limiting their reasoning to that 12
specific factual context. Rather, we believe that the rationale 13
underlying these cases extends to the situation presented in this 14
case, wherein an instructional limitation is added to a method, 15
as opposed to a product, known in the art. Thus, the relevant 16
inquiry here is whether the additional instructional limitation of 17
claim 21 has a “new and unobvious functional relationship” 18
with the known method of administering metaxalone with food. 19
. . . This relationship, however, is not functional. Informing a 20
patient about the benefits of a drug in no way transforms the 21
process of taking the drug with food. Irrespective of whether 22
the patient is informed about the benefits, the actual method, 23
taking metaxalone with food, is the same. In other words, the 24
“informing” limitation “in no way depends on the [method], 25
and the [method] does not depend on the [‘informing’ 26
limitation].” 27
King Pharmaceuticals, Inc. v. Eon Labs, Inc., 616 F.3d 1267, 1279 (Fed. 28
Cir. 2010) (citations omitted); see also In re Ngai, 367 F.3d 1336, 1339 (Fed 29
Cir 2004). 30
In claim 1, the listing on the linked page in no way depends on the 31
providing of the ad and the providing of the ad in no way depends on the 32
linked page containing listings. Appellants are trying to distinguish the 33
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claims over the art on the basis of the what the content of a linked page 1
informs a user of. As in King Pharmaceuticals, obtaining a patent for 2
simply providing information would enable indefinite patenting by adding 3
unrelated limitations. 4
A listing page is not a novel arrangement of content, as the Examiner 5
found that Koningstein figs. 1 and 5 show listing pages. Ans. 24, 25. 6
Therefore, even if the listing page content is given weight, such content is at 7
least a predictable target of Koningstein’s links. 8
As to the remaining claims, with the exception of claims 9, 10, and 21, 9
we adopt the Examiner’s findings and analysis and reach similar legal 10
conclusions. 11
We are persuaded by the Appellants’ arguments as to claims 9, 10, and 12
21. Claim 9 recites the proxy ad of claim 1 serves as one or both of the 13
targeted or default ad in a Targeted Ad Wrapper Server system. Claim 10 14
recites determining an ad based on multiple confirmation targeting criteria. 15
Claim 21 recites a multi-dimensional ad tracking cookie. A Targeted Ad 16
Wrapper Server system has a unique identifier for one or more specific ad 17
campaigns. A multiple confirmation targeting and a multi-dimensional ad 18
tracking cookie are defined at Specification pages 76, 77, 79, and 80. The 19
Examiner has made no findings as to how the art describes these limitations. 20
CONCLUSIONS OF LAW 21
The rejection of claims 1–10, 12, and 21, 22 under 35 U.S.C. § 101 as 22
directed to non-statutory subject matter is proper. 23
Appeal 2012-000285
Application 11/134,116

13

The rejection of claims 1–5, 7, 8, 12, and 22–31 under 35 U.S.C. 1
§ 103(a) as unpatentable over Koningstein is proper. 2
The rejection of claims 9 and 10 under 35 U.S.C. § 103(a) as 3
unpatentable over Koningstein is improper. 4
The rejection of claim 6 under 35 U.S.C. § 103(a) as unpatentable over 5
Koningstein and Smith is proper. 6
The rejection of claim 21 under 35 U.S.C. § 103(a) as unpatentable over 7
Koningstein and Gerace is improper. 8
DECISION 9
The rejection of claims 1–10, 12, and 21–31 is affirmed. 10
No time period for taking any subsequent action in connection with this 11
appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. 12
§ 1.136(a)(1)(iv) (2011). 13
14
AFFIRMED 15
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rvb 23