Ex Parte Peterson et al

Patent Trial and Appeal Board

Aug 24, 2017

12437126 (P.T.A.B. Aug. 24, 2017)

United States Patent and Trademark Office
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.
12/437,126 05/07/2009 Harold L. Peterson 60843.300401 6885
103807 7590 08/28/2017
Intellectual Property Venture Group
3350 Shelby St., Ste. 200
Ontario, CA 91764-5556
EXAMINER
BROWN, LUIS A
ART UNIT PAPER NUMBER
3622
NOTIFICATION DATE DELIVERY MODE
08/28/2017 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):
pfiler @ ipvglaw .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HAROLD L. PETERSON,
JAMES B. WILLIAMS,
JOEL R. RIGLER,
and MATTHEW R. MUYRES
Appeal 2015-003916
Application 12/437,126
Technology Center 3600
Before HUBERT C. LORIN, ANTON W. FETTING, and
MATTHEW S. MEYERS, Administrative Patent Judges.
FETTING, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE1
Harold L. Peterson, James B. Williams, Joel R. Rigler, and Matthew
R. Muyres (Appellants) seek review under 35 U.S.C. § 134 of a final
rejection of claims 1—4 and 7—23, the only claims pending in the application
1 Our decision will make reference to the Appellants’ Appeal Brief (“App.
Br.,” filed September 29, 2014) and Reply Brief (“Reply Br.,” filed February
10, 2015), and the Examiner’s Answer (“Ans.,” mailed December 15, 2014),
and Final Action (“Final Act.,” mailed April 14, 2014).
Appeal 2015-003916
Application 12/437,126
on appeal. We have jurisdiction over the appeal pursuant to
35 U.S.C. § 6(b).
The Appellants invented a way of advertising in interactive computer
networks used for marketing for vending and delivery of digital content and
services related thereto. Spec. para. 6.
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 method for
providing offline advertising on a personal computerized
system of a user,
wherein the personal computerized system has a display
unit and a primary storage unit,
the method comprising:
(a) providing a campaign set and an inventory of digital content
stored in the primary storage unit prior to said primary storage
unit being received by the user,
either as part of the personal computerized system or by
addition to the personal computerized system,
wherein said campaign set includes a plurality of ads
each having respective deployment attributes;
(b) generating a viewable window on the display unit,
wherein said viewable window includes at least one
position;
(c) retrieving a said ad from said campaign set
based on its respective said deployment attributes,
wherein said ad is for an item of said digital content
present in said inventory;
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(d) presenting said ad in said position,
thereby permitting the user of the personal computerized
system to view said ad.
The Examiner relies upon the following prior art:
Petrecca US 5,781,894 July 14, 1998
Marsh US 5,848,397 Dec. 8, 1998
Cheng US 6,151,643 Nov. 21, 2000
Claims 1—4 and 7—23 stand rejected under 35 U.S.C. § 101 as directed
to non—statutory subject matter.
Claims 1—4 and 7—23 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Marsh, Petrecca, and Cheng.
ISSUES
The issues of eligible subject matter turn primarily on whether
advertising is an abstract concept. The issues of obviousness turn primarily
on whether the references show it was known to install product and related
ads on a computer prior to purchase, or whether it was otherwise predictable.
FACTS PERTINENT TO THE ISSUES
The following enumerated Findings of Fact (FF) are believed to be
supported by a preponderance of the evidence.
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Facts Related to Claim Construction
01. The disclosure contains no lexicographic definition of
“inventory” as a noun.
02. The usual meaning of “inventory” is
a. A detailed, itemized list, report, or record of things in one's
possession, especially a periodic survey of all goods and
materials in stock.
b. The process of making such a list, report, or record.
c. The items listed in such a report or record.
d. The quantity of goods and materials on hand; stock.2
03. Although the Specification describes inventory as “the local
collection of assets 22 of merchandise or units of service” (Spec,
para. 74), this is in the context of a preferred embodiment and not
definitional. In any event, this is consistent with conventional
meaning (d) supra.
Facts Related to the Prior Art
Marsh
04. Marsh is directed to a system by which users of on-line
computer networks may be exposed to a continuously—changing
variety of advertisements. Marsh 1:14—17.
05. Marsh’s advertisement display scheduler receives all of the
advertisements it will show from the server system. An initial set
2 American Heritage Dictionary available at
https: //www. ahdictionary. com/ word/ search.html? q=inventory
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of advertisements may also be loaded along with the client system
software to ensure that the user is shown advertisements even
before the user goes on-line for the first time. Marsh 13:56—65.
06. Each time a new banner advertisement is displayed, for
example, the advertisement display scheduler updates the statistics
log file with the identification of the banner advertisement, the
time and date it was displayed, and the duration of the display.
This information is then used by the advertisement display
scheduler in determining which advertisements to display
subsequently. Marsh 15:2—10.
Petrecca
07. Petrecca is directed to presenting an advertising message, or set
of advertising messages, to users of personal computers ("PC")
without inconveniencing the user. Petrecca 1:6—10.
08. Petrecca describes an advertising system and method that
appeals to software companies who offer software products at a
discounted rate, or free of charge, and to computer companies who
install such software into new computers. Sometimes the versions
that they offer are "bare bones" versions, or earlier versions of
their latest software, which are intended to give the user an idea of
what it is like to use their product. Currently many companies
such as Prodigy (TM) or Quicken (TM) enter into this type of
arrangement so that their software is available to the purchaser of
the computer with the purchase of a new computer. This type of
arrangement benefits the computer manufacturers and the PC
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customers because computer manufacturers can offer their
customers attractive software for free, or for very little additional
cost, with the purchase of their personal computer system. The
software companies hope to benefit from this arrangement by
gaining loyal users who will choose their software products, over
those of their competitors, when they decide to purchase future
versions of the software. The value of having computer users
become used to a certain software package is seen as so valuable
that software companies spend considerable amounts of money in
order to advertise free versions of their software in the hopes of
capturing future customers. Petrecca 2:14-42.
09. Petrecca describes an advertising system and method that may
be configured so that if a user chooses not to activate the
advertising message system the message material is not
transferred to the computer during the instillation of the software
product. Alternatively, if the software is already installed on the
storage medium of the computer, as may occur when a consumer
purchases a new computer that comes "loaded", the choice of not
to activate the advertising system activates a routine that erases
the message material so that it does not take up space on the user's
hard drive. Petrecca 4:44—53.
Cheng
10. Cheng is directed to automatically updating software products
from diverse software vendors on a plurality of end-user, client
computer systems. Cheng 1:10—15.
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11. The access that the service provider computer has to the
software profile of the client computers lends itself to sending
information, advertisements, and other promotional material that
would be appropriate to each specific user, based on the software
installed on the user's computer. Basing information delivery on
the installed software products increases the saliency of the
information since the user has already manifested an interest in the
products. Thus, advertising or promotional information that is
derived from or associated with such software products is most
likely to be of interest to the user. The service provider computer
associates software products with advertising information, and
enables this advertising information to be periodically delivered to
the user. Cheng 22:29-42.
ANALYSIS
Claims 1—4 and 7—23 rejected under 35 U.S.C. § 101 as directed to non—
statutory subject matter
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
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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 Inti, 134 S. Ct. 2347, 2355 (2014) (citing
Mayo Collaborative Services v. Prometheus Laboratories, Inc., 132 S. Ct.
1289 (2012)).
To perform this test, we must first determine whether the claims at
issue are directed to a patent—ineligible concept. Appellants state that the
claims directed to offline advertising. Reply Br. 4.
While the Court in Alice made a direct finding 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 for providing
offline advertising on a personal computerized system of a user. The steps
in claim 1 result in presenting an ad. The Specification at paragraph 1
recites that the invention relates to advertising in interactive computer
networks used for marketing for vending and delivery of digital content and
services related thereto. Thus, all this evidence shows that claim 1 is
directed to presenting an ad, i.e. advertising. This is consistent with
Appellants’ statement in the Reply Brief.
It follows from prior Supreme Court cases, and Bits hi (Bilski v
Kappos, 561 U.S. 593 (2010)) in particular, that the claims at issue here are
directed to an abstract idea. Like the risk hedging in Bilski, the concept of
advertising is a fundamental business practice long prevalent in our system
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of commerce. The use of advertising is also a building block of modem
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 Corp. Pty. Ltd., 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. Elec. Power Grp. v. Alstom S.A., 830 F.3d 1350,
1353 (Fed. Cir. 2016) (holding that “collecting information, analyzing 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 TLI
Commc’ns LLC Patent Litig., 823 F.3d 607, 611 (Fed. Cir. 2016);
Fair Warning 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 to perform data collection, analysis, and
display 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 receiving, analyzing, and
displaying data.
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The remaining claims merely describe generic equipment and
software 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 Mayo 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
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 provide, retrieve and present data and generate display windows
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amounts to electronic data query and retrieval—one of the most basic
functions of a computer. In short, each step does no more than require a
generic computer to perform generic computer functions.
Considered as an ordered combination, the computer components of
Appellants’ method add nothing that is not already present when the steps
are considered separately. 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 store ads along with
digital content related to the ads and present the ads based on attributes. But
this is no more than abstract conceptual advice on the parameters for such
promotion 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. 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.
As to the structural claims, they
are no different from the method claims in substance. The
method claims recite the abstract idea implemented on a generic
computer; the system claims recite a handful of generic
computer components configured to implement the same idea.
This Court has long “wam[ed] . . . against” interpreting § 101
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“in ways that make patent eligibility ‘depend simply on the
draftsman’s art.’”
Alice Corp. Pty. Ltd., 134 S. Ct. at 2360.
We are not persuaded by Appellants' argument that the primary
storage unit, containing the campaign set and the inventory of digital
content, is provided prior to the primary storage unit being received by the
user and being useable in the personal computerized system. App. Br. 8.
Data storage is a generic computer operation per se. There is nothing
distinguishable about timing such storage relative to the timing of delivery to
a customer, as software is routinely added both prior to and subsequent to
delivery. For example, the operating system is provided in the primary
storage prior to delivery. This is again a generic computer operation. The
nature of the data being ads is afforded no weight as the nature does not
functionally affect the claim operations.
We are not persuaded by Appellants' argument that there is a
particular machine because the steps of generating, retrieving, and
presenting require the personal computerized system to be particularly
programmed or to perform particular execution. App. Br. 9. Although these
steps may require programming, the claims do not recite such programming,
but instead only recite the results to be obtained, which again are generic
computer operations. The claims do not recite steps that create specific
improvements in computer operation.
The patents claim systems including menus with particular
features. They do not claim a particular way of programming or
designing the software to create menus that have these features,
but instead merely claim the resulting systems. Essentially, the
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claims are directed to certain functionality—here, the ability to
generate menus with certain features. Alternatively, the claims
are not directed to a specific improvement in the way computers
operate.
Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1241 (2016)
We are not persuaded by Appellants' argument that offline advertising
is an improvement to advertising, and that it is concurrently an improvement
to the computer itself. Reply Br. 5. As to the computer itself, this argument
is completely conclusory, and is absent any supporting argument or
evidence. As to it being an improvement to advertising, improving an
abstraction is itself an abstraction. “Adding one abstract idea ... to another
abstract idea . . . does not render the claim non-abstract.” RecogniCorp,
LLCv. Nintendo Co., Ltd., 855 F.3d 1322, 1327 (2017)
Claims 1—4 and 7—23 rejected under 35 U.S.C. § 103(a) as unpatentable
over Marsh, Petrecca, and Cheng
We are not persuaded by Appellants' argument that
Cheng's installed software products and updates to them are not
equivalent to Appellant's local inventory of digital content to be
purchased. At col. 22, In. 28-42 Cheng teaches information
delivery related to its installed software products, with no
discussion there of how those software products came to be
installed. This paragraph is accordingly irrelevant to "an
inventory of digital content stored in the primary storage unit
prior to said primary storage unit being received by the user"
(claim 1, emphasis added). Moreover, one of ordinary skill in
the art will appreciate that "installed" in the context of Cheng
means that such an installed software product is not equivalent
to part of an "inventory" in the context of Appellant's claims,
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wherein the inventory includes assets being advertised to the
user rather than products they already have and are able to use.
App. Br. 12.
First, as to timing of installation, there are only two choice, before or
after delivery to user either by direct connection or over the Internet. Each is
equally predictable and desirable in general and the choice is driven by the
marketing and sales model rather than technological considerations.
Second, the Examiner applies Petrecca rather than Cheng for this
limitation. Final Act. 6. Petrecca explicitly describes software provided by
the likes of Prodigy or Quicken installed on a computer prior to purchase of
that computer. The Examiner then finds that Petrecca’s ads are for software
upgrades rather than the originally installed software and applies Cheng for
such a relationship. Final Act. 6—7. Cheng states that “[bjasing information
delivery on the installed software products increases the saliency of the
information since the user has already manifested an interest in the
products.” Cheng 22:34—36. This describes the relationship between ads
and installed product recited in the claims. Whether Cheng is sufficiently
explicit as to whether the installation occurred prior to purchase is not
determinative, as Petrecca was applied for that timing recitation.
Finally, Appellants contends that
one of ordinary skill in the art will appreciate that "installed" in
the context of Cheng means that such an installed software
product is not equivalent to part of an "inventory" in the context
of Appellant's claims, wherein the inventory includes assets
being advertised to the user rather than products they already
have and are able to use.
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App. Br. 12. The limitation at issue is “an inventory of digital content stored
in the primary storage unit prior to said primary storage unit being received
by the user.” The claim recites nothing regarding ability or inability for use.
Although another limitation is “wherein said ad is for an item of said digital
content present in said inventory,” even an ad for a product upgrade to a
product in inventory is “for an item of said digital content present in said
inventory,” as how the word “for” modifies “item” is not recited and is
extremely broad. Also, the content of an ad is discemable only in the mind
of the beholder and therefore afforded no patentable weight. In re Bernhart,
417 F.2d 1395, 1399 (CCPA 1969).
We are not persuaded by Appellants' argument that the combination
would be inoperative or change the principles of operation. App. Br. 13—14.
The Appellants cite In re Ratti, 270 F.2d 810 (CCPA 1959), which
stated that
[w]e hold, further, that the combination of Jepson with
Chinnery et al. is not a proper ground for rejection of the claims
here on appeal. This suggested combination of references
would require a substantial reconstruction and redesign of the
elements shown in Chinnery et al. as well as a change in the
basic principles under which the Chinnery et al. construction
was designed to operate.
Id. at 981. This holding does not apply in this case for the same reason as
explained by the CCPA in In re Hebberling, 357 F.2d 1001, 1006 (CCPA
1966).
The decisions in In re Ratti and In re Shaffer relied on by the
appellant, are not considered controlling here. In each of those
cases, the court concluded that the modification of the basic
reference relied on in the rejection reversed by it was not made
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obvious by the prior art. In the present case, we find nothing
which satisfies us that the substitution suggested in the rejection
of claims 1 and 2 would not have been obvious or provides any
unobvious result.
Here the only limitations applied from Petrecca and Cheng are the
timing of the data storage and the relationship between the ads and digital
product. Storing prior to purchase and relating the ads to the product stored
prior to purchase would not affect Marsh. Indeed storing software prior to
purchase was already known and widely practiced at least of the operating
system and preinstalled applications and relating ads to the products they
refer to is and was common sense.
CONCLUSIONS OF LAW
The rejection of claims 1—4 and 7—23 under 35 U.S.C. § 101 as
directed to non—statutory subject matter is proper.
The rejection of claims 1—4 and 7—23 under 35 U.S.C. § 103(a) as
unpatentable over Marsh, Petrecca, and Cheng is proper.
DECISION
The rejection of claims 1—4 and 7—23 is affirmed.
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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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