Ex Parte Sandoval et al

Patent Trial and Appeal Board

Jul 12, 2016

11967343 (P.T.A.B. Jul. 12, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
111967,343 12/31/2007
110936 7590 07114/2016
Great Lakes Intellectual Property, PLLC /CableLabs
44750 Yorkshire
Novi, MI 48375
Frank Sandoval
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.
CTL60152PUS I 60152 6793
EXAMINER
CIVAN,ETHAND
ART UNIT PAPER NUMBER
3684
NOTIFICATION DATE DELIVERY MODE
07/14/2016 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):
j. buser@ greatlakesiplaw. com
d.smith@cablelabs.com
USPTO@dockettrak.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte FRANK SANDOVAL, DAVID HOOLEY, DAVID HUNTER,
ALLEN GORDON, and CLARKE STEVENS
Appeal2014--003843
Application 11/967 ,343
Technology Center 3600
Before ANTON W. PETTING, BIBHU R. MOHANTY, and
NINA L. MEDLOCK, Administrative Patent Judges.
PETTING, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE1
Frank Sandoval, David Hooley, David Hunter, Allen Gordon, and
Clarke Stevens (Appellants) seek review under 35 U.S.C. § 134 of a final
rejection of claims 1, 3, 7, 11, 12, 14, 21-33, and 35-39, the only claims
pending in the application on appeal. Oral arguments were presented May 5,
2016. We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b).
1 Our decision will make reference to the Appellants' Appeal Brief ("App.
Br.," filed September 23, 2013) and Reply Brief ("Reply Br.," filed February
17, 2014), and the Examiner's Answer ("Ans.," mailed December 17, 2013),
and Final Action ("Final Act.," mailed March 22, 2013).
Appeal2014-003843
Application 11/967 ,343
The Appellants invented ways of selling products over interactive
platforms, such as but not limited to interactive platforms operating
according to disparate network implementations. Spec. 5-7.
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 of
allowing vendors to sell products over television networks
where each network relies upon disparate interactive
platforms to facilitate subscriber purchase of the products,
the method comprising:
[ 1] associating
a unique vendor ID with each vendor
and
a unique product ID with each product;
[2] receiving an advertisement from at least one of the vendors;
the advertisement including offers for purchasing one or
more products being sold by the at least one of the
vendors;
[3] packaging the advertisement into a first advertisement and a
second advertisement,
the first advertisement packaged for inclusion within a
first network associated with a first one of the at least two
of the disparate interactive platforms
and
the second advertisement packaged for inclusion within a
second network associated with a second one of the at
least two of the interactive platforms,
the first advertisement being inoperable with the second
one of the interactive platforms
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Application 11/967 ,343
and
such that the first advertisement cannot be shown
using the second one of the interactive platforms,
the second advertisement being inoperable with the first
one of the interactive platforms
such that the second advertisement cannot be
shown using the first one of the interactive
platforms,
the packaging of the first and second advertisements
allowing subscribers to navigate and purchase the one or
more products,
the packaging of the first and second advertisements each
including the vendor ID separately from the product ID
for each product;
[ 4] upon receipt of a purchase confirmation message confirming
subscriber purchase of one of the products,
the purchase confirmation message including the
product ID separately from the vendor ID
associated with the purchased product,
issuing a purchase order for the product and vendor
identified by the product ID and vendor ID included in
the purchase confirmation message.
Claims 1, 3, 7, 11, 12, 14, 21-33, and 35-39 stand rejected under
35 U.S.C. § 112, first paragraph, as lacking a supporting written description
within the original disclosure.
Claims 1 and 3 stand rejected under 35 U.S.C. § 112, second
paragraph, as failing to particularly point out and distinctly claim the
invention.
Claims 1, 3, 7, 11, 12, 14, 21-33, and 35-39 stand rejected under
35 U.S.C. § 101 as directed to non-statutory subject matter.
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Application 11/967 ,343
ISSUES
FACTS PERTINENT TO THE ISSUES
The following enumerated Findings of Fact (FF) are believed to be
supported by a preponderance of the evidence.
Facts Related to Claim Construction
01. The disclosure contains no lexicographic definition of
"disparate."
02. The ordinary meaning of "disparate" is fundamentally distinct
or different in kind, or entirely dissimilar. 2
Facts Related to Appellants' Disclosure
03. The Specification does not describe something being
inoperable.
04. The Specification describes disparate systems.
ANALYSIS
Claims 1, 3, 7, 11, 12, 14, 21-33, and 35-39 rejected under 35 U.S.C. § 112,
first paragraph, as lacking a supporting written description within the
original disclosure
As to claim 1, reciting each of two advertisements being inoperable on
one of the interactive platforms, the Examiner finds the Specification does
not describe such inoperability. Ans. 3. We are not persuaded by
Appellants' argument that the Specification describes disparate systems.
2 The American Heritage Dictionary of the English Language, Fifth Edition,
2015, https://www.ahdictionary.com/word/search.html?q=disparate
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Application 11/967 ,343
Disparate means "entirely dissimilar," but mere dissimilarity, even in
extremity, does not imply inoperability. The ability of audio and display
applications to accommodate disparate file types is too widely known to
accept such a proposition.
Claim 26, reciting "unable to operate," is similarly unsupported.
As to claim 7, reciting inserting vendor and product IDs into ads that
are then executed using disparate messaging schemes, we are persuaded by
Appellants' argument that the Examiner fails to present a prima facie case of
unpatentability. App. Br. 11-13. The Examiner makes only the conclusory
finding that "[t]he specification provides no support for these limitations."
Final Act. 4.
Claim 12 depends from claim 7 and this is the sole reason for its
rejection here.
As to claims 21 and 22, each reciting "configuring the first and second
advertisement applications to advertise the products for purchase within one
of a pop-up advertisement and a banner advertisement," and similar
claims 28 and 33, we are not persuaded by Appellants' argument that
"[ s ]upport for these claim limitations is found in paragraph 18 of the
originally filed application." App. Br. 14. Specification paragraph 18
recites "[t]he iTV platform can display an advertisement, such as through a
television commercial, pop-up/banner ad, or other user accessible interface,
and provide a means by which the customer may order the product, such as
by clicking on an icon or selecting a button on a remote control." This is the
sole description of the content of the limitation added by these claims. This
description only describes generic use of a pop-up or banner ad. It does not
describe using such ads in the context of their parent claims. Although this
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Application 11/967 ,343
description may make such a combination obvious, that is insufficient for
written description. Lockwood v. Am. Airlines, 107 F.3d 1565, 1571-72
(Fed. Cir. 1997).
As to claims 23 and 29, each reciting "wherein the overlay and the
displayed media does not display either one of the vendor ID and the product
ID," we are not persuaded by Appellants' argument that "[s]upport for these
claim limitations is found in paragraph 26 of the originally filed
application." App. Br. 14. Specification paragraph 26 recites "[ o ]nee
registered, a vendor can be issued a unique ID and is given template code to
add to their application. Vendors can supply pricing information for
individual items. Each item can also be assigned an ID which is
incorporated into the application template." This does not describe the
content of the limitation added by these claims. Appellants contend that
"[ o ]ne having ordinary skill in the art would readily recognize that
incorporating such IDs within the application would result in the application
displaying the corresponding advertisement without displaying the
incorporated vendor ID and product ID." Id. at 15. Appellants provide no
evidence or even reasoning for this assertion.
As to claims 31 and 32, each reciting "wherein the first and second
advertisement applications are configured to include the vendor ID
separately from the product ID within the purchase request" without entering
those IDs, we are not persuaded by Appellants' argument that "[ s ]upport for
these claim limitations is found in paragraphs 18-19 and 21-22 of the
originally filed application." App. Br. 18. These paragraphs recite "[t]he
iTV platform can display an advertisement, such as through a television
commercial, pop-up/banner ad, or other user accessible interface, and
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Application 11/967 ,343
provide a means by which the customer may order the product, such as by
clicking on an icon or selecting a button on a remote control" and "[a]
transaction request may be generated in response to the customer purchase
request." This is the sole description of the content of the limitation added
by these claims. This description only describes generic use of a button to
execute something and incorporation of vendor and product IDs in a
purchase transaction. It does not describe the absence of entering the IDs.
Again, although this description may make such a combination obvious, that
is insufficient for written description.
As to claims 36 and 37, each reciting that "devices are configured to
descramble television signaling carried over" two networks, we are not
persuaded by Appellants' argument that support for these claim limitations
is found in paragraphs 9 and 11 of the originally filed application. App.
Br. 19. These paragraphs recite using cable, satellite, or broadcast television
service providers. This description only describes generic use of such
providers. It does not describe descrambling signals. Again, although this
description may make such a combination obvious, that is insufficient for
written description.
Claims 1 and 3 rejected under 35 U.S. C. § 112, second paragraph, as failing
to particularly point out and distinctly claim the invention
We are persuaded by Appellants' argument that the limitation
regarding packaging would be understood by one of ordinary skill (App.
Br. 20-21).
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Application 11/967 ,343
Claims 1, 3, 7, 11, 12, 14, 21-33, and 35-39 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
element or combination of elements that is "sufficient to ensure
that the patent in practice amounts to significantly more than a
patent upon the [ineligible concept] itself."
Alice Corp., Pty. Ltd. v CLS Bank Intl, 134 S. Ct. 2347, 2355 (2014)
(citations omitted) (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.
We find that this case's claims themselves and the Specification
provide enough information to inform one as to what they are directed to.
The preamble to claim 1 recites that it is a method of allowing
vendors to sell products. The four steps in claim 1 result in issuing a
purchase order. The preamble to claim 7 recites that it is a method of selling
products. The four steps in claim 7 result in generating a purchase request.
The preamble to claim 24 recites that it is a system configured to facilitate
advertising products. The five components in claim 24 are configured to
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Application 11/967 ,343
generate advertisements. The Specification at 1 recites that the invention
relates selling products. Thus, all this evidence shows that the independent
claims are directed to selling products.
It follows from prior Supreme Court cases, and Bilski in particular,
that the claims at issue here are directed to an abstract idea. Like the risk
hedging in Bilski, the concept of selling products is a fundamental economic
practice long prevalent in our system of commerce. The use of sales and
advertising is also a building block of the modem economy. Thus, sales,
like hedging, is an "abstract idea" beyond the scope of§ 101. See Alice
Corp., 134 S. Ct. at 2356.
As in Alice Corp., 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 selling at issue here. Both are
squarely within the realm of "abstract ideas" as the Court has used that term.
See id. at 2357.
The remaining claims merely describe examples of advertisement
packaging aids and content. 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
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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."
Id. 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." Id. 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 associate labels such as IDs with products, receive and package
ads, and issue purchase orders( claim 1 ); and further to identify text in a
purchase order( claim 7); and assign IDs and generate ads amounts to
electronic data generation, query and retrieval-among the most basic
functions of a computer.
The limitations of interactivity, networks, operability, and navigation
are not steps, but a recitation of the context within which ads are generated
and packaged to elicit purchase orders. All of these computer functions are
well-understood, routine, conventional activities previously known to the
industry. In short, each step does no more than require a generic computer
to perform generic computer functions.
Claims 1, 7, and 26 do no more than identify vendors and products,
obtain an ad, package the ad in two separate media forms, and issue a
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purchase order. Aside from the packaging, such identification, ad buys, and
purchase orders are notoriously old. Packaging ads in separate mutually
inoperable formats is as old as the idea of marketing promotion channels,
such as radio and newsprint. Reciting mutually inoperable electronic
formats as in these claims is simply the electronic version of such
notoriously old incompatible marketing channels. At bottom, all claims do
no more than advise one to copy an ad into plural formats, each format
compatible with the marketing channel employed. Advice is a recognized
instance of an abstract concept.
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' claims simply
recite the concept of advertising for sales as performed by a generic
computer. The method claims do not, for example, purport to improve the
:thnctioning 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., 134 S. Ct. at 2360.
CONCLUSIONS OF LAW
The rejection of claims 1, 3, 11, 14, 21-33, and 35-39 under
35 U.S.C. § 112, first paragraph, as lacking a supporting written description
within the original disclosure is proper.
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Application 11/967 ,343
The rejection of claims 7 and 12 under 35 U.S.C. § 112, first
paragraph, as lacking a supporting written description within the original
disclosure is improper.
The rejection of claims 1 and 3 under 35 U.S.C. § 112, second
paragraph, as failing to particularly point out and distinctly claim the
invention is improper.
The rejection of claims 1, 3, 7, 11, 12, 14, 21-33, and 35-39 under
3 5 U.S. C. § 1 01 as directed to non-statutory subject matter is proper.
DECISION
The rejection of claims 1, 3, 7, 11, 12, 14, 21-33, and 35-39 is affirmed.
No time period for taking any subsequent action in connection with this
appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l)(iv) (2011).
AFFIRMED
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