Ex Parte Razdan et al

Patent Trial and Appeal Board

Apr 30, 2018

14041106 (P.T.A.B. Apr. 30, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/041,106 09/30/2013
826 7590 05/02/2018
ALSTON & BIRD LLP
BANK OF AMERICA PLAZA
101 SOUTH TRYON STREET, SUITE 4000
CHARLOTTE, NC 28280-4000
FIRST NAMED INVENTOR
Rahul Razdan
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.
058769/435627 5023
EXAMINER
ELCHANTI, TAREK
ART UNIT PAPER NUMBER
3621
NOTIFICATION DATE DELIVERY MODE
05/02/2018 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):
usptomail@alston.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RAHUL RAZDAN, FANG CAO, ZHENBO SHI,
ANDREW GIANIKAS, and DI WANG
Appeal2016-008623 1
Application 14/041, 106
Technology Center 3600
Before JOHN A. JEFFERY, LARRY J. HUME, and
CATHERINE SHIANG, Administrative Patent Judges.
HUME, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) of the Final
Rejection of claims 1-20, which are all claims pending in the application.
We have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM, and enter a new ground of rejection for claim 5,
pursuant to our authority under 37 C.F.R. § 41.50(b ).
1 According to Appellants, the real party in interest is Advtravl, Inc. App.
Br. 2.
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STATEMENT OF THE CASE2
The Invention
Appellants' disclosed embodiments and claimed invention "are related
to marketing of businesses on the Internet." Spec. ,r 1. "A method,
apparatus, and computer program product are therefore provided for
facilitating a marketing interlock between businesses on the Internet. As
described herein, embodiments of the claims provide mutually beneficial co-
marketing opportunities to businesses. Spec. ,r 3.
Exemplary Claims
Claims 1, 4, 5, 7-9, and 20, reproduced below, are representative of
the subject matter on appeal (emphases added to contested prior-art
limitations):
1. A method for facilitating marketing of at least two
entities, the method comprising:
receiving, from a sponsoring entity, a funding indication
indicating an intent to fund a third party advertisement of a
sponsored entity;
receiving, from the sponsored entity, a marketing
indication indicating an intent to place marketing content of the
sponsoring entity on a website associated with the sponsored
entity in exchange for the sponsoring entity funding the third
party advertisement of the sponsored entity; and
with a processor, and in response to the funding
indication and marketing indication, causing the marketing
2 Our decision relies upon Appellants' Appeal Brief ("App. Br.," filed
Dec. 11, 2015); Reply Brief ("Reply Br.," filed Sept. 19, 2016); Examiner's
Answer ("Ans.," mailed July 18, 2016); Final Office Action ("Final Act.,"
mailed July 10, 2015); and the original Specification ("Spec.," filed
Sept. 30, 2013).
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content of the sponsoring entity to be displayed on the website
associated with the sponsored entity.
4. The method of claim 1, wherein the third party
advertisement of the sponsored entity comprises a link to the
website associated with the sponsored entity.
5. The method of claim 5, wherein the third party
advertisement of the sponsored entity is provided via a web-
based search engine.
7. The method of claim 1, wherein receiving the
marketing indication comprises receiving an indication of an
agreement between the sponsored entity and a marketing
facilitator to reserve marketing content space on the website
associated with the sponsored entity, wherein the agreement is
made prior to receiving the funding indication, and the method
further comprises maintaining the marketing content space on
the website associated with the sponsored entity.
8. The method of claim 1, further comprising:
causing transmittal of a notification to a provider of the
third party advertisement to provide the third party
advertisement of the sponsored entity.
9. The method of claim 1, wherein the sponsored
entity is not initially registered with a marketing facilitator and
the funding indication comprises information identifying the
sponsored entity, and the method further comprises:
in response to the funding indication, causing transmittal,
to the sponsored entity, of an invitation to register with the
marketing facilitator.
20. A method for facilitating business marketing
relationships comprising:
identifying a service category and a defined geographic
area of a subject business entity;
identifying at least one related service category to the
identified service category of the subject business entity;
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identifying at least one related business entity belonging
to the at least one related service category and located in the
defined geographic area; and
establishing a marketing relationship between the subject
business entity and the at least one related business entity in a
business entity database.
Prior Art
The Examiner relies upon the following prior art as evidence in
rejecting the claims on appeal:
Ho US 2012/0041828 Al Feb. 16, 2012
Bouthillier US 8,818,859 Bl Aug.26,2014
Smith US 2014/0278928 Al Sept. 18, 2014
Rejections on Appeal
RI. Claims 1-20 stand rejected under 35 U.S.C. § 101 as being
directed to patent-ineligible subject matter. Final Act. 2.
R2. Claims 1, 3-5, and 12 stand rejected under 35 U.S.C.
§ I02(a)(l) as being anticipated by Bouthillier. Final Act. 4.
R3. Claims 2, 11, 13, and 19 stand rejected under 35 U.S.C. § I03as
being unpatentable over the combination of Bouthillier and Smith. Final
Act. 6. 3
R4. Claim 6-10 and 14--18 stand rejected under 35 U.S.C. § 103 as
being unpatentable over the combination of Bouthillier and Ho. Final
Act. 7.
3 We note the Examiner cites (Final Act. 6) pre-AIA 35 U.S.C. § I03(a) in
the rejection, but a more correct statement of the basis for the rejection
would be under AIA 35 U.S.C. § 103.
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R5. Claim 20 stand rejected under 35 U.S.C. § 103 as being
unpatentable over the combination of Smith and Ho. Final Act. 10.
CLAIM GROUPING
Based on Appellants' arguments (App. Br. 8-26) and our analysis
herein, we decide the appeal of patent-ineligible subject matter Rejection RI
of claims 1-20 on the basis of representative claim 1; we decide the appeal
of anticipation Rejection R2 of claims 1, 3, and 12 on the basis of
representative claim 1; and we decide the appeal of separately argued
anticipation Rejection R2 of claims 4 and 5, infra.
We decide the appeal of obviousness Rejection R4 of claims 7-9 and
15-17, and obviousness Rejection R5 of claim 20, infra.
Remaining claims 2, 11, 13, and 19 in Rejection R3, and claims 6, 10,
14, and 18 in Rejection R4, not argued separately or with specificity, stand
or fall with the respective independent claim from which they depend. 4
ISSUES AND ANALYSIS
In reaching this decision, we consider all evidence presented and all
arguments actually made by Appellants. We do not consider arguments
Appellants could have made but chose not to make in the Briefs, and we
deem any such arguments waived. 37 C.F.R. § 4I.37(c)(l)(iv).
4 "Notwithstanding any other provision of this paragraph, the failure of
appellant to separately argue claims which appellant has grouped together
shall constitute a waiver of any argument that the Board must consider the
patentability of any grouped claim separately." 3 7 C.F .R. § 41.3 7 ( c )( 1 )(iv).
In addition, when Appellants do not separately argue the patentability of
dependent claims, the claims stand or fall with the claims from which they
depend. In re King, 801 F.2d 1324, 1325 (Fed. Cir. 1986).
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Based upon our review of the record, we find a preponderance of the
evidence supports particular arguments advanced by Appellants with respect
to Rejection R4 of claims 7-9 and 15-17, and Rejection R5 of claim 20 for
the specific reasons discussed below.
However, we disagree with Appellants' arguments with respect to
Rejection RI of claims 1-20, Rejection R2 of claims 1, 3-5, and 12,
Rejection R3 of claims 2, 11, 13, and 19, and Rejection R4 of claims 6, 10,
14, and 18. Unless otherwise noted, we incorporate by reference herein and
adopt as our own: ( 1) the findings and reasons set forth by the Examiner in
the action from which this appeal is taken, and (2) the reasons and rebuttals
set forth in the Examiner's Answer in response to Appellants' arguments
with respect to the rejections we affirm. We highlight and address specific
findings and arguments regarding claims 1, 4, 7-9, and 20 for emphasis as
follows.
1. § 101 Rejection RI ofClaims 1-20
Issue 1
Appellants argue (App. Br. 17-21; Reply Br. 4--7) the Examiner's
rejection of claim 1 under 35 U.S.C. § 101 as being directed to patent-
ineligible subject matter is in error. These contentions present us with the
following issue:
Did the Examiner err in concluding the following?
Claim(s) 1-20 is/are directed towards facilitating a
marketing interlock between businesses and funding a third
party advertisement of sponsored entity which is considered to
be an abstract idea inasmuch as such activity is considered both
a method of organizing human activity a fundamental economic
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practice. The claims do not include additional elements that are
sufficient to amount to significantly more than the judicial
exception because the claims merely amount to the application
or instructions to apply the abstract idea.
Final Act. 2.
Analysis
Alice Framework
Section 101 provides that anyone who "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. 35 U.S.C. § 101.
The Supreme Court has repeatedly emphasized that patent protection should
not extend to claims that monopolize "the basic tools of scientific and
technological work." Gottschalk v. Benson, 409 U.S. 63, 67 (1972); Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 71 (2012);
Alice Corp. Pty. Ltd. v. CLS Bankint'l, 134 S. Ct. 2347, 2354 (2014).
Accordingly, laws of nature, natural phenomena, and abstract ideas are not
patent-eligible subject matter. Id.
The Supreme Court's two-part Mayo/Alice framework guides us in
distinguishing between patent claims that impermissibly claim the "building
blocks of human ingenuity" and those that "integrate the building blocks into
something more." Alice, 134 S. Ct. at 2354 (internal quotation marks,
citation, and bracketing omitted). First, we "determine whether the claims at
issue are directed to [a] patent-ineligible concept[]." Id. at 2355. If so, we
"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." Id. at 2357 (quoting Mayo, 566 U.S. at 72, 79).
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While the two steps of the Alice framework are related, the "Supreme
Court's formulation makes clear that the first-stage filter is a meaningful one,
sometimes ending the § 101 inquiry." Elec. Power Grp., LLC v. Alstom
S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016). We note the Supreme Court
"has not established a definitive rule to determine what constitutes an
'abstract idea"' for the purposes of step one. Enfzsh, LLC v. Microsoft Corp.,
822 F.3d 1327, 1334 (Fed. Cir. 2016) (citing Alice, 134 S. Ct. at 2357).
However, our reviewing court has held claims ineligible as directed to
an abstract idea when they merely collect electronic information, display
information, or embody mental processes that could be performed by
humans. Elec. Power Grp., 830 F.3d at 1353-54 (collecting cases). At the
same time, "all inventions at some level embody, use, reflect, rest upon, or
apply laws of nature, natural phenomena, or abstract ideas." Mayo, 566 U.S.
at 71. Abstract ideas may include, but are not limited to, fundamental
economic practices, methods of organizing human activities, an idea of
itself, and mathematical formulas or relationships. Alice, 134 S. Ct. at 2355-
57. Under this guidance, we must therefore ensure at step one that we
articulate what the claims are directed to with enough specificity to ensure
the step one inquiry is meaningful. Id. at 2354 ("[W]e tread carefully in
construing this exclusionary principle lest it swallow all of patent law.").
Under the "abstract idea" step, we must evaluate "the 'focus of the
claimed advance over the prior art' to determine if the claim's 'character as a
whole' is directed to excluded subject matter." Affinity Labs of Texas, LLC
v. DIRECTV, LLC, 838 F.3d 1253, 1257 (Fed. Cir. 2016) (citation omitted).
If the claims are not directed to a patent-ineligible concept, the inquiry ends.
See Visual Memory LLC v. NVIDIA Corp., 867 F.3d 1253, 1262 (Fed.
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Cir. 2017). If the concept is directed to a patent-ineligible concept, we
proceed to the "inventive concept" step. For that second step we must "look
with more specificity at what the claim elements add, in order to determine
'whether they identify an "inventive concept" in the application of the
ineligible subject matter' to which the claim is directed." Affinity Labs, 838
F.3d at 1258 (quoting Elec. Power Grp., 830 F.3d at 1353).
Alice Step I -Abstract Idea
Our reviewing court has held claims ineligible as being directed to an
abstract idea when they merely collect electronic information, display
information, or embody mental processes that could be performed by
humans. Elec. Power Grp., 830 F.3d at 1353-54 (collecting cases). At the
same time, "all inventions at some level embody, use, reflect, rest upon, or
apply laws of nature, natural phenomena, or abstract ideas." Mayo, 566 U.S.
at 71. Under this guidance, we must therefore ensure at step one that we
articulate what the claims are directed to with enough specificity to ensure
the step one inquiry is meaningful. Alice, 134 S. Ct. at 2354 ("[W]e tread
carefully in construing this exclusionary principle lest it swallow all of
patent law.").
Appellants contend:
In the response dated May 1, 2015, the Applicant argued
that the Supreme Court has only identified two fundamental
economic practices - hedging and intermediate settlement.
The Applicant argued that both cases relied on documentary
evidence to show the concepts have been long prevalent in our
systems. The documentary evidence included several
introductory finance books. Applicant argued that the Office
has not identified any such references that indicate the claimed
subject matter has been a long prevalent fundamental economic
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process. The Office has not responded to these arguments.
Furthermore, the Applicant has cited examples of case law in
which the same concepts were tested ( e.g., BuySAFE v. Google
and Alice Corp. v. CLS Bank International) and described how
the instant case differs from these. The Office has not
responded to these arguments either.
As such, Applicant maintains the arguments previously
presented and further emphasizes that (1) the claims as a whole
do indeed provide significantly more than an abstract idea or
fundamental economic process, and (2) the claims do not
preemptively seek to tie up all methods of advertising or
marketing such that other cannot practice it.
App. Br. 18.
Under the "abstract idea" step, we must evaluate "the 'focus of the
claimed advance over the prior art' to determine if the claim's 'character as a
whole' is directed to excluded subject matter." Affinity Labs, 838 F.3d at
1257 ( citation omitted).
Turning to the claimed invention, claim 1 recites " [a] method for
facilitating marketing of at least two entities." Claim 1 (preamble). The
method of claim 1 further includes the steps of "receiving ... a funding
indication"; "receiving ... a marketing indication"; and "in response to the
funding indication and marketing indication, causing the marketing content
of the sponsoring entity to be displayed on the website associated with the
sponsored entity." Claim 1.
The Examiner concludes the appealed claims are directed to a judicial
exception, i.e., the abstract idea of "facilitating a marketing interlock
between businesses and funding a third party advertisement of sponsored
entity which is considered to be an abstract idea inasmuch as such activity is
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considered both a method of organizing human activity [and] a fundamental
economic practice. 11 Final Act. 2; see also Ans. 3--4.
Under step one, we agree with the Examiner that the inventions
claimed in each of independent claims 1, 12, and 20 are directed to an
abstract idea, i.e., methods of organizing human activity, particularly human
activity associated with facilitating marketing between businesses and
funding third party advertisement. See id.
As the Specification describes, 11 [a] method, apparatus, and computer
program product are therefore provided for facilitating a marketing interlock
between businesses on the Internet. As described herein, embodiments of
the claims provide mutually beneficial co-marketing opportunities to
businesses. 11 Spec. ,r 3. The Abstract similarly describes facilitating a
marketing interlock between businesses and third-party advertising. 5
We find this type of activity, i.e., facilitating and funding marketing
between complimentary businesses on a third-party platform, and
5 The Abstract discloses:
A method, apparatus and computer program product are provided
for facilitating a marketing interlock between businesses. Two or
more businesses may enter into a co-marketing campaign in which a
sponsoring entity funds an advertisement of a sponsored entity on a
third party advertising system, such as a search engine. Marketing
content of the sponsoring entity is inserted on the website of the
sponsored entity. Traffic originating on the third party advertising
system may therefore first be driven to the sponsored entity's website,
and subsequently to the sponsoring entity's website, thereby
achieving a mutually beneficial co-marketing relationship. Marketing
relationships among complimentary businesses based on provided
service and location may also be facilitated according to the methods
provided.
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notwithstanding that the claims on appeal rely at least to some extent upon
computer and Internet technology for implementation, includes longstanding
conduct that existed well before the advent of computers and the Internet,
and could be carried out by a human with pen and paper, e.g., by written
contract, or in face-to-face meetings. See CyberSource Corp. v. Retail
Decisions, Inc., 654 F.3d 1366, 1375 (Fed. Cir. 2011) ("That purely mental
processes can be unpatentable, even when performed by a computer, was
precisely the holding of the Supreme Court in Gottschalk v. Benson."). 6
We further find this ordered combination of steps recites an
abstraction - an idea, having no particular concrete or tangible form. The
process of "receiving ... a funding indication"; "receiving ... a marketing
indication"; and "in response to the funding indication and marketing
indication, causing the marketing content of the sponsoring entity to be
displayed on the website associated with the sponsored entity" all describe
an abstract idea, devoid of a concrete or tangible application. See, e.g.,
Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed. Cir. 2014).
Our reviewing court has previously held other patent claims ineligible
for reciting similar abstract concepts. For example, while the Supreme
Court has enhanced the § 101 analysis since CyberSource in cases like Mayo
and Alice, they continue to "treat[ ] analyzing information by steps people go
through in their minds, or by mathematical algorithms, without more, as
essentially mental processes within the abstract-idea category." Synopsys,
6 CyberSource further guides that "a method that can be performed by
human thought alone is merely an abstract idea and is not patent-eligible
under§ 101." CyberSource, 654 F.3d at 1373.
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Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1146-47 (Fed. Cir. 2016)
(alteration in original) (quoting Elec. Power Grp., 830 F.3d at 1354).
Therefore, in agreement with the Examiner, we conclude claim 1
involves nothing more than marketing and funding third-party advertising,
without any particular inventive technology - an abstract idea. See Elec.
Power Grp., 830 F.3d at 1354. We further refer to Content Extraction,
where the Federal Circuit has provided additional guidance on the issue of
statutory subject matter by holding claims to collecting data, recognizing
certain data within the collected data set, and storing that recognized data in
memory were directed to an abstract idea and therefore unpatentable under
§ 101. Content Extraction & Transmission LLC v. Wells Fargo Bank, N.A.,
776 F.3d 1343 (Fed. Cir. 2014). Similarly, "collecting, displaying, and
manipulating data" is an abstract idea. Intellectual Ventures I LLC v.
Capital One Fin. Corp., 850 F.3d 1332, 1340 (Fed. Cir. 2017).
Accordingly, on this record, and under step one of Alice, we agree
with the Examiner's conclusion the claims are directed to an abstract idea.
Alice Step 2 -Inventive Concept
Because the claims are directed to a patent-ineligible concept, as we
conclude above, we proceed to the "inventive concept" step. For that step
we must "look with more specificity at what the claim elements add, in order
to determine 'whether they identify an "inventive concept" in the application
of the ineligible subject matter' to which the claim is directed." Affinity
Labs, 838 F.3d at 1258 (quoting Elec. Power Grp., 830 F.3d at 1353).
In applying step two of the Alice analysis, our reviewing court guides
we must "determine whether the claims do significantly more than simply
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describe [the] abstract method" and thus transform the abstract idea into
patentable subject matter. Ultramercial, 772 F.3d at 715. To this end, we
determine whether there are any "additional features" in the claims that
constitute an "inventive concept," thereby rendering the claims eligible for
patenting even if they are directed to an abstract idea. Alice, 134 S. Ct. at
2357. Those "additional features" must be more than "well-understood,
routine, conventional activity." Mayo, 566 U.S. at 79.
In arguing under Step 2 of the Alice analysis, Appellants allege the
claims are directed to statutory subject matter because:
[T]he claims amount to significantly more than an abstract idea
or fundamental economic process. The claims provide
additional recitations directed to the specific problem and
solution described above. Similar to concepts tested in DDR,
embodiments of the claims transform a website of the
sponsored entity in response to receipt of (1) a funding
indication and (2) a marketing indication. The ability for such a
transformation of the website to occur without a specific
request from the sponsored entity, while driving increased
traffic to at least two websites solves an Internet-centric
problem in the very specific scenario involving the marketing
of two entities with a single paid-for or sponsored
advertisement. That is, the funding indication and
corresponding third party advertisement of a sponsored entity
draws additional web traffic to the website of the sponsored
entity, which indirectly routes web traffic to the sponsoring
entity's site, as the marketing indication results in the marketing
content of the sponsoring entity to be displayed on the website
of the sponsored entity. The intricacies of such embodiments
therefore do indeed amount to significantly more than an
abstract idea or fundamental economic process relating to
merely advertising, marketing or sponsorship.
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App. Br. 20. Appellants further argue "the claims to do not tie up all
methods of advertising, marketing or sponsorship such that others cannot
practice it." Id.
In response to Appellants' reliance upon DDR and the alleged website
transformation, 7 the Examiner states, "the second step in the analysis
requires us to determine whether the claims do significantly more than
simply describe the abstract method" and "the instant claimed invention is in
fact merely carried out by a generically recited computing platform ....
Those 'additional features' must be more than 'well-understood, routine,
conventional activity."' Ans. 4 (citing Mayo, 566 U.S. at 79).
Evaluating representative claim 1 under Step 2, we agree with the
Examiner that it lacks an inventive concept that transforms the abstract idea
of facilitating and funding marketing between complimentary businesses on
a third-party platform into a patent-eligible application of that abstract idea.
See Ans. 4--5.
As held in DDR, we conclude the test of eligibility is not based on
whether the claimed invention could only be carried out with a computer or
over the Internet. "DDR Holdings does not apply when ... the asserted
claims do not 'attempt to solve a challenge particular to the Internet."' Smart
Sys. Innovations, LLC v. Chi. Transit Auth., 873 F.3d 1364, 1375 (Fed. Cir.
2017) (quoting In re TL! Commc 'ns LLC Patent Litig., 823 F.3d 607, 613
(Fed. Cir. 2016)). Rather, when using a generic computer, the test is
whether the claimed invention effects an improvement to another technology
7 DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1256 (Fed. Cir.
2014).
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or technical field; whether the claimed invention does amount to an
improvement to the functioning of a computer itself; and whether the
claimed invention does move beyond a general link of the use of an abstract
idea to a particular technological environment. DDR, 773 F.3d at 1259. In
this case, we conclude the claimed invention does not meet any of the
aforementioned criteria. The technology implemented in the present
application is useful to solve a business problem, but the additional elements
are not a technological solution to a technological problem, or a solution to a
problem introduced by the technology itself. Therefore, we conclude
Appellants' claims do not address a similar problem and do not contain a
similar inventive concept as the patent-eligible claims in DDR. 8
We agree with the Examiner because, as in Alice, we find the
recitation of "[a] method for facilitating marketing of at least two entities"
that "with a processor," causes marketing content to be displayed on a
website (claim 1); "[a] computer program product for facilitating marketing
of at least two entities" executed by "an apparatus" to cause marketing
content to be displayed on a website (claim 12); or "[a] method for
facilitating business marketing relationships" that utilizes a "business entity
database" ( claim 20) are simply not enough to transform the patent-ineligible
abstract idea here into a patent-eligible invention. See Alice, 134 S. Ct.
8 We note independent claims 1, 12, and 20 provide scant reference to or
recitations of any computer technology/components.
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at 2357 ("[C]laims, which merely require generic computer implementation,
fail to transform [an] abstract idea into a patent-eligible invention."). 9
Accordingly, based upon the analysis above, on this record, we are not
persuaded of error in the Examiner's conclusion that the appealed claims are
directed to patent-ineligible subject matter. Therefore, we sustain the
Examiner's § 101 rejection of independent claim 1, and grouped
claims 2-20, which fall therewith. See Claim Grouping, supra.
2. § 102(a)(l) Rejection R2 of Claims 1, 3, and 12
Issue 2
Appellants argue (App. Br. 11-16; Reply Br. 1-3) the Examiner's
rejection of claim 1 under 35 U.S.C. § 102(a)(l) as being anticipated by
Bouthillier is in error. These contentions present us with the following
issue:
Did the Examiner err in finding the cited prior art discloses a "method
for facilitating marketing of at least two entities" that includes, inter alia, the
steps of "receiving, from the sponsored entity, a marketing indication
indicating an intent to place marketing content of the sponsoring entity on a
website associated with the sponsored entity in exchange for the sponsoring
entity funding the third party advertisement of the sponsored entity;" and "in
response to the funding indication and marketing indication, causing the
marketing content of the sponsoring entity to be displayed on the website
associated with the sponsored entity," as recited in claim 1?
9 As evidence of the conventional nature of the claimed components and
processes, we highlight Appellants' Specification, e.g., paragraph 37 and
Figure 2.
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Analysis
Receiving a Marketing Indication
Appellants contend, "Bouthillier fails to provide any suggestion of a
marketing indication from the sponsored entity, such that marketing content
of the sponsoring entity be placed on a website associated with the
sponsored entity. Applicant specifically argued that Bouthillier fails to
distinguish between a sponsored entity and sponsoring entity .... " App.
Br. 13. Appellants further allege the Examiner, while referencing "the
broadest reasonable interpretation in light of the supporting disclosure,"
"fails to refer to what alleged broad interpretations from the specification of
the pending application are being considered." App. Br. 14. Appellants also
contend, "there is no broader interpretation described in the specification of
the pending application that would lead one skilled in the art to consider that
Bouthillier describes a sponsored entity, sponsoring entity, and the
marketing of both such as presented in the claims and as supported by the
specification." Id.
In response, and as cited by the Examiner under the broadest
reasonable interpretation standard, 10 we find Bouthillier discloses a "sponsor
10 During prosecution, claims must be given their broadest reasonable
interpretation when reading claim language in light of the specification as it
would be interpreted by one of ordinary skill in the art. In re Am. Acad. of
Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). Under this standard,
we interpret claim terms using "the broadest reasonable meaning of the
words in their ordinary usage as they would be understood by one of
ordinary skill in the art, taking into account whatever enlightenment by way
of definitions or otherwise that may be afforded by the written description
contained in the applicant's specification." In re Morris, 127 F.3d 1048,
1054 (Fed. Cir. 1997).
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of the ad" (Bouthillier col. 2, 11. 10 and 11.22-23 11) and a "sponsored entity."
Bouthillier col. 1, 1. 65 - col. 2, 1. 2 ("The advertisement management is
provided as a ... system which connects advertisers for a product or service
with ad-creators, ad-sponsors and end-customers, while enabling end-
customers (viewers of the ad) to obtain content for free in exchange for
viewing the ad.").
As cited by the Examiner, Bouthillier further discloses:
The advertisement management system has several
advantages which will be apparent upon reading the following
detailed description. The advertisement system connects
viewers of advertisements directly with sponsors of an
advertisement to allow for targeted advertising. Additionally,
the system provides an arrangement where viewers and other
end-customers or end-users are able to access content from
content providers by viewing an advertisement that is related to
a particular product or service which they choose. For example,
a user may select an advertisement for a credit card, or for a
vehicle of their choice. Sponsors of the advertisement (which
may or may not be owners of the particular product or service
which the advertisement is related to) provide funds to sponsor
the advertisement. These funds are sent in part to the creator of
the advertisement, so that they may be compensated for
creating the advertisement. The funds are also sent in part to
the content provider, the content provider having content which
the end-customer wishes to acquire. The user is able to view an
ad, by choosing an advertisement related to a product or service
which they are interested in, and upon completion of the
advertisement, the content provider is compensated from funds
provided by the sponsor of the advertisement.
Bouthillier col. 3, 11. 32-54 (emphasis added).
11 "The present invention also relates to a process for an ad-sponsor to
sponsor a posted GTVideo .... " Bouthillier col. 2, 11. 22-23.
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Thus, we find Bouthillier discloses receiving the recited marketing
indication from the sponsored entity, as well as a sponsoring entity.
Causing Marketing Content to be Displayed
Appellants contend "the current rejection does not explain any
reasoning for the Office changing positions [ from a previous rejection on the
disclosure of Bouthillier] and it is therefore submitted that the concession
was made in response to the Applicant's prior arguments, and not in error,"
and "Applicant maintains that Bouthillier does not disclose [the contested
limitation]." App. Br. 15.
The Examiner cites to Bouthillier at column 3, lines 32-63 12 as
disclosing this contested limitation. Final Act. 4. In addition, in the
Answer, the Examiner provides clarification of the findings:
Bouthillier teaches in response to the funding indication and
marketing indication, causing the marketing content of the
sponsoring entity to be displayed on the website associated with
the sponsored entity, (see Fig. 8 804: "the GTVideo is the
marketing content of the sponsoring entity") to be displayed
(see Fig. 8 800 "display on the website") associated with the
sponsored entity (Fig. 8 806 "where to buy["]) and (Fig. I I 1122
"sponsor") and (Fig. 12 1220 "Ad Sponsor Info").
Ans. 2.
12 Column 3 of Bouthillier discloses: "viewing an advertisement" (1. 39);
"[t]he user is able to view an ad" (11. 49-50); and "[r]efer to FIGS. 9 to 12 for
diagrams of exemplary screen displays of an interface of the advertisement
system in accordance with an operative embodiment of the present
invention" (11. 60-63).
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Thus, under the broadest reasonable interpretation, we agree with the
Examiner's findings that Bouthillier discloses this second contested claim
limitation.
Therefore, based upon the findings above, on this record, we are not
persuaded of error in the Examiner's reliance on the cited prior art to
disclose the disputed limitations of claim 1, nor do we find error in the
Examiner's resulting finding of anticipation. Therefore, we sustain the
Examiner's anticipation rejection of independent claim 1, and grouped
claims 3 and 12 which fall therewith. See Claim Grouping, supra.
3. § 102 Rejection R2 of Claims 4 and 5.u
Issue 3
Appellants argue (App. Br. 16-17) the Examiner's rejection of claim 4
under 35 U.S.C. § 102(a)(l) as being anticipated by Bouthillier is in error.
These contentions present us with the following issue:
Did the Examiner err in finding the cited prior art discloses the
method of claim 1, "wherein the third party advertisement of the sponsored
entity comprises a link to the website associated with the sponsored entity,"
as recited in claim 4?
Analysis
The Examiner cites Bouthillier column 2, lines 22 to 28 as disclosing
this limitation (Final Act. 5), but Appellants contend, "[t]his passage is
completely silent regarding a link to a website associated with the sponsored
entity." App. Br. 16. We disagree.
13 Claim 5 may be construed as indefinite under 35 U.S.C. § 112, second
paragraph. See infra, "New Ground of Rejection".
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We disagree because:
Bouthillier teaches where the third party advertisement of the
sponsored entity comprises a link to the website associated with
the sponsored entity (col. 9 lines 38--42 "The term link as used
herein includes any graphical representation corresponding to a
data file, such as a hyper link or URL ( uniform resource locator)
link, as well as other linking capabilities readily apparent to
those skilled in the art") and (col. 2 lines 34--37 "GTVideos
often provide purchasing information, which may include
product/ service cost and availability through online and local
retail outlets or direct links to facilitate the viewers' purchase of
the product.").
Ans. 3.
Therefore, we affirm the Examiner's rejection of dependent claim 4.
Appellants also argue claim 5 is not anticipated by Bouthillier, and
allege the Examiner (see Final Act. 5) has not adequately addressed the
rejection. Reply Br. 3.
Claim 5 recites, in pertinent part, "wherein the third party
advertisement of the sponsored entity is provided via a web-based search
engine." Although claim 5 depends from itself-an inconsistency that
renders the claim indefinite as noted in our new ground of rejection later in
this opinion-we nonetheless presume that the claim depends from claim 1
for purposes of this appeal.
Turning to the rejection, the Examiner cites Bouthillier at column 3,
lines 64 through 67 and column 4, lines 1 through 7 for disclosing this
limitation. 14 Final Act. 5. We agree with the Examiner's findings.
14 This portion of Bouthillier states:
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We agree because Bouthillier's "Graditube database uses product
identification methods, such as a web-search" that, under the broadest
reasonable interpretation, involves a "web-based search engine." Bouthillier
col. 4, 11. 2--4.
4.
Therefore, we also affirm the anticipation Rejection R2 of claim 5.
§ 103(a) Rejection R4 of Claims 7-9 and 15-17
Issue 4
Appellants argue (App. Br. 11-16; Reply Br. 1-3) the Examiner's
rejection of claim 7 under 35 U.S.C. § 103(a) as being obvious over the
combination of Bouthillier and Ho is in error. These contentions present us
with the following issue:
Did the Examiner err in finding the cited prior art teaches or suggests
the method of claim 1, wherein ( 1) "receiving the marketing indication
comprises receiving an indication of an agreement between the sponsored
entity and a marketing facilitator to reserve marketing content space on the
website associated with the sponsored entity"; (2) "the agreement is made
GTVideos are conventional commercial advertisements or
customer-created, context sensitive video advertisements or
other appropriate media files, such as a message sent to a phone
or other device using a multimedia message service, that
customers of products or services create and post to the
Graditube Web Server Database. The Graditube database uses
product identification methods, such as a web-search or UPC/
SKU look-up to ensure that GTVideos are correctly associated
with specific product instances. FIGS. 5 and 6, described
below, detail the procedures for posting and sponsoring videos,
respectively.
Bouthillier col. 3, 1. 64 - col. 4, 1. 7.
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prior to receiving the funding indication"; and (3) "the method further
comprises maintaining the marketing content space on the website
associated with the sponsored entity," as recited in claim 7?
Analysis
Appellants contend the Examiner merely referred to Ho paragraph 22
and Figure 10b as "showing weighted percentages at which 6 different
sponsors, jointly contributing to a sponsorship, are sponsored on a website
with rotating corresponding advertisements." App. Br. 22; see also Final
Act. 8. 15
On this record, given the paucity of the disclosure relied upon in Ho to
teach or suggest the contested limitation of claim 7, we find the Examiner
did not adequately map the contested limitations of claim 7 to the reference
combination in a manner that meets the threshold burden necessary to
establish a prima facie case of obviousness. Accordingly, we do not sustain
Rejection R4 of claims 7 and 15, argued together.
Appellants make similar arguments with respect to Rejection R4 of
claims 8 and 16, i.e., the Examiner does not adequately map the contested
limitations of claim 8 to the prior art combination of Bouthillier and Ho.
App. Br. 22-23; and see Final Act. 8 (again citing Ho ,r 22). Accordingly,
we do not sustain Rejection R4 of claims 8 and 16, argued together.
With respect to claims 9 and 1 7, the Examiner cites Ho at
paragraph 35 (see Final Act 8; Ans. 7) as teaching or suggesting, "in
15 "FIG. 10b shows a weighted randomization module for a graphical
representation of a sponsor selection rotation module, in accordance with an
embodiment of the invention." Ho ,r 22.
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response to the funding indication, causing transmittal, to the sponsored
entity, of an invitation to register with the marketing facilitator." Claim 9. 16
We agree with Appellants that the Examiner's mapping is deficient
with respect to the disputed limitations of claims 9 and 17. Accordingly, we
do not sustain Rejection R4 of claims 9 and 17, argued together.
5. § I03(a) Rejection R5 ofClaim 20
Issue 5
Appellants argue (App. Br. 24--26) the Examiner's rejection of
claim 20 under 35 U.S.C. § I03(a) as being obvious over the combination of
Smith and Ho is in error. These contentions present us with the following
ISsue:
Did the Examiner err in finding the cited prior art teaches or suggests
" [a] method for facilitating business marketing relationships" that includes,
the steps as recited in claim 20?
16 The portion of Ho relied upon by the Examiner in rejecting claims 9 and
17 discloses:
FIG. I shows a conventional layout (100) of presenting all multiple
sponsors on a same webpage, in accordance with a conventional
method. This conventional method illustrates how all multiple
sponsors are presented in one webpage. The webpage is based on an
example of a "World Cup Contest" registration for a website visitor.
The visual heuristics, or effectiveness of the single-page web
advertisement for many sponsors ( e.g. 16 national sponsor teams
presented in FIG. 1 ), is less than optimal because too much
information is presented to the website visitor all at once. Such a
cluttered presentation of multiple or multiple sponsor information may
not be the most effective form of advertising, as a typical website
visitor may find the excessive number of all sponsors unmemorable.
Ho i135.
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Analysis
The Examiner relied upon paragraph 11 of Smith and paragraph 50 of
Ho as teaching or suggesting all the limitations of claim 20. See Final
Act. 10-11. Appellants argue all the limitations in their Appeal Brief. See
App. Br. 24--26. However, in the Answer, the Examiner only partially
responds by stating,
the combination Smith and Ho do teach identifying a service
category and a defined geographic area of a subject business
entity (paragraph 0011 : "Advertiser data may include a
specification of a target geographic and/or demographic as well
as an image-based ad to be used with appropriate clubs and
separately branch or local contact information").
Ans. 9.
We disagree with the Examiner for the same reasons set forth by
Appellants. See App. Br. 24--26. Accordingly, we do not sustain Rejection
R5 of claim 20.
6. Rejection R3 of claims 2, 11, 13, and 19, and Rejection R4 of Claims
6, 10, 14, and 18-Not Separately Argued
In view of the lack of any substantive or separate arguments directed
to obviousness Rejections R3 of claims 2, 11, 13, and 19 and Rejection R4
claims 6, 10, 14, and 18 under§ 103 (see App. Br. 21-24), we sustain the
Examiner's rejection of these claims. Arguments not made are waived. 17
17 Appellants merely argue,
the cited combination relies upon Bouthillier for disclosing the same
features as described above with respect to the rejection of the
independent claims. Since Bouthillier fails in this regard, and Smith
does not cure the deficiencies of Bouthillier, nor is Smith cited for this
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REPLY BRIEF
To the extent Appellants may advance new arguments in the Reply
Brief (Reply Br. 1-7) not in response to a shift in the Examiner's position in
the Answer, we note arguments raised in a Reply Brief that were not raised
in the Appeal Brief or are not responsive to arguments raised in the
Examiner's Answer will not be considered except for good cause (see 37
C.F.R. § 41.4I(b)(2)), which Appellants have not shown.
NEW GROUND OF REJECTION
Pursuant to our authority under C.F .R. § 41. 50(b ), we enter a new
ground of rejection for claim 5 under 35 U.S.C. § 112(b) for indefiniteness.
Original dependent claim 5 depends from itself. See claim 5, supra.
CONCLUSIONS
(1) The Examiner did not err with respect to patent-ineligible
subject matter Rejection RI of claims 1-20 under 35 U.S.C. § 101, and we
sustain the rejection.
(2) The Examiner did not err with respect to anticipation Rejection
R2 of claims 1, 3-5, and 12 under 35 U.S.C. § I02(a)(l) over the cited prior
art of record, and we sustain the rejection.
(3) The Examiner did not err with respect to obviousness Rejection
R3 of claims 2, 11, 13, and 19 under 35 U.S.C. § 103 over the cited prior art
combination of record, and we sustain the rejection.
purpose, claims 2, 11, 13, and 19 are patentable over the cited
combination due at least to the failures of Bouthillier.
App. Br. 21.
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(4) The Examiner erred with respect to obviousness Rejection R4
of claims 7-9 and 15-17 under 35 U.S.C. § 103 over the cited prior art
combination of record, and we do not sustain the rejection.
However, the Examiner did not err with respect to obviousness
Rejection R4 of claims 6, 10, 14, and 18 under 35 U.S.C. § 103 over the
cited prior art combination of record, and we sustain the rejection.
(5) The Examiner erred with respect to obviousness Rejection R5
of claim 20 under 35 U.S.C. § 103, and we do not sustain the rejection.
(6) We enter a new ground of rejection of claim 5 under 35 U.S.C.
§ 112(b) for indefiniteness.
Because we have affirmed at least one ground of rejection with
respect to each claim on appeal, we affirm the Examiner's decision. See 37
C.F.R. § 4I.50(a)(l).
DECISION
We affirm the Examiner's decision rejecting claims 1-20.
This decision contains a new ground of rejection pursuant to 37
C.F.R. § 4I.50(b). Section 4I.50(b) provides "[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review."
Section 41.50(b) also provides:
When the Board enters such a non-final decision, the appellant,
within two months from the date of the decision, must exercise
one of the following two options with respect to the new ground
of rejection to avoid termination of the appeal as to the rejected
claims:
( 1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new Evidence relating
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to the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the prosecution
will be remanded to the examiner. The new ground of rejection
is binding upon the examiner unless an amendment or new
Evidence not previously of Record is made which, in the
opinion of the examiner, overcomes the new ground of rejection
designated in the decision. Should the examiner reject the
claims, appellant may again appeal to the Board pursuant to this
subpart.
(2) Request rehearing. Request that the proceeding be
reheard under§ 41.52 by the Board upon the same Record. The
request for rehearing must address any new ground of rejection
and state with particularity the points believed to have been
misapprehended or overlooked in entering the new ground of
rejection and also state all other grounds upon which rehearing
is sought.
Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure§ 1214.01.
AFFIRMED
37 C.F.R. § 4I.50(b)
29