Ex Parte Smallwood et al

Patent Trial and Appeal Board

Jul 2, 2018

13354849 (P.T.A.B. Jul. 2, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/354,849 01/20/2012
87851 7590
Facebook/Fenwick
Silicon Valley Center
801 California Street
Mountain View, CA 94041
07/05/2018
FIRST NAMED INVENTOR
Bradley Hopkins Smallwood
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.
26295-18940 7911
EXAMINER
REFAI,SAMM
ART UNIT PAPER NUMBER
3681
NOTIFICATION DATE DELIVERY MODE
07/05/2018 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):
ptoc@fenwick.com
fwfacebookpatents@fenwick.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BRADLEY HOPKINS SMALL WOOD, KURT DODGE RUNKE,
and GOKUL RAJARAM
Appeal2017-003912
Application 13/354,849 1
Technology Center 3600
Before JAMES R. HUGHES, JENNIFER L. MCKEOWN,
and NORMAN H. BEAMER, Administrative Patent Judges.
BEAMER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
Final Rejection of claims 1-6, 10-18, and 20-25. Claims 7-9 and 19 are
cancelled. (Final Act. 2.) We have jurisdiction over the pending rejected
claims under 35 U.S.C. § 6(b ).
We affirm.
1 Appellants identify Facebook, Inc. as the real party in interest. (Br. 2.)
Appeal2017-003912
Application 13/354,849
THE INVENTION
Appellants' disclosed and claimed invention is directed to an online
advertising system that receives ads and ad exposure goals, and selects an ad
for presentation among the received ads based on the received ad exposure
goals associated with the ads and the determined amount of exposure for
each ad. (Abstract.)
Independent claim 1, reproduced below, is illustrative of the subject
matter on appeal:
1. A method comprising:
receiving, at an ad server from one or more advertisers a plurality of
ads, each ad associated with an ad exposure goal, the ad server
comprising one or more hardware processors;
for each of the plurality of ads,
determining, by an exposure determination engine communicatively
coupled to the ad server, that the ad has been selected for
presentation to each of a plurality of users on one or more of a
plurality of ad mediums, the exposure determination engine
comprising or more hardware processors,
for each of the plurality of users, weighting, by the exposure
determination engine, a length of time that the user was
exposed to the ad by a weighting factor to generate a weighted
length of time, the weighting factor determined based on
information associated with the user, and
computing, by the exposure determination engine, an exposure time
associated with the ad by aggregating the weighted lengths of
time;
receiving, at the ad server from a client, a request for an ad; and
selecting, by the ad server, an ad from the plurality of ads for
presentation to the client based on the ad exposure goals and the
exposure times associated with the plurality of ads.
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Application 13/354,849
REJECTIONS
The Examiner rejected claims 1---6, 10-18, and 20-25 under
35 U.S.C. § 101 as being directed to ineligible subject matter. (Final Act.
2-5.)
The Examiner provisionally rejected claims 1-6, 10-18, and 20-25 on
the ground of nonstatutory double patenting as being unpatentable over
claims 1-20 of copending Application No. 13/354,785. (Final Act. 5-6.)2
ISSUE ON APPEAL
Appellants' arguments in the Appeal Brief present the following
dispositive issue: 3
Whether claims 1-6, 10-18, and 20-25 are directed to ineligible
subject matter. (Br. 3-7.)
ANALYSIS
We have reviewed the Examiner's rejections in light of Appellants'
arguments that the Examiner erred. We disagree with Appellants'
arguments, and we adopt as our own ( 1) the pertinent findings and reasons
set forth by the Examiner in the Action from which this appeal is taken
(Final Act. 2-5, 7-10) and (2) the corresponding findings and reasons set
2 Appellants' sole response to this rejection was a request that it be held in
abeyance, but the Examiner maintains the rejection. (Final Act. 6.)
Therefore, this rejection is summarily affirmed.
3 Rather than reiterate the arguments of Appellants and the positions of the
Examiner, we refer to the Appeal Brief (filed June 7, 2016) (herein, "Br.");
the Final Office Action (mailed Dec. 15, 2015) (herein, "Final Act."); and
the Examiner's Answer (mailed Sept. 8, 2016) (herein, "Ans.") for the
respective details.
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Application 13/354,849
forth by the Examiner in the Examiner's Answer in response to Appellants'
Appeal Brief. (Ans. 3-12.) We concur with the applicable conclusions
reached by the Examiner, and emphasize the following.
The Examiner concludes the pending claims are patent-ineligible
under 35 U.S.C. § 101:
[The claims] are directed to the abstract idea of calculating a
length of time that a user was exposed to an ad by a weighting
factor to generate a weighted length of time, and computing an
exposure time associated with the ad by aggregating the
weighted lengths of time. The claimed concept is merely
applying a weighting factor to the length of time that a user was
exposed to an ad.
(Final Act. 2-3.) In addition, the Examiner concludes:
The claims do not impose meaningful limits that apply the
formula to improve an existing technological process" ....
[The claims do] not include additional elements that are
sufficient to amount to significantly more than the judicial
exception because the steps require no more than a generic
computer. The claim's use of "ad medium" and "computer
processor" adds no inventive concept. These devices are being
used to create a computer network environment to perform a
well-known business practice known from the pre-internet
world. This concept is not "necessarily rooted in computer
technology in order to overcome a problem specifically arising
in the realm of computer networks" .... Additionally, the
claimed functions of the generic computer represent
insignificant data gathering steps and thus add nothing of
practical significance to the abstract idea. . . . Viewed as a
whole, these additional claim element(s) do not provide
meaningful limitation( s) to transform the abstract idea into a
patent eligible application of the abstract idea such that the
claim(s) amount to significantly more than the abstract idea
itself.
(Final Act. 3--4.)
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Application 13/354,849
Appellants argue, inter alia, the Examiner has not identified an
abstract idea that is related to the claimed subject matter, has not
demonstrated that the abstract idea is comparable to those identified by the
applicable precedent, and is neither directed to a mathematical formula, an
"idea of itself," nor a fundamental economic practice. (Br. 6-10.)
Appellants also argue the claims recite significantly more than any abstract
idea, because they address a business challenge particular to the Internet, and
make use of an unconventional "ad server" and "exposure determination
engine." (Br. 11-16.)
We are not persuaded by Appellants' arguments. We adopt the
Examiner's findings and conclusions provided in the Final Office Action
and Answer. (Final Act. 2-5, 7-10; Ans. 3-12.) The Supreme Court has
long held that "[l]aws of nature, natural phenomena, and abstract ideas are
not patentable." Alice Corp. Pty. Ltd. v. CLS Bankint'l, 134 S.Ct. 2347,
2354 (2014) (quoting Assoc.for Molecular Pathology v. Myriad Genetics,
Inc., 596 U.S. 576, 598-99 (2013)). The "abstract ideas" category embodies
the longstanding rule that an idea, by itself, is not patentable. Alice Corp.,
134 S.Ct. at 2354--55 (quoting Gottschalkv. Benson, 409 U.S. 63, 67
(1972)).
In Alice, the Supreme Court sets forth an analytical "framework for
distinguishing patents that claim laws of nature, natural phenomena, and
abstract ideas from those that claim patent-eligible applications of those
concepts." Id. at 2355. The first step in the analysis is to "determine
whether the claims at issue are directed to one of those patent-ineligible
concepts," such as an abstract idea. Id. If the claims are directed to a patent-
ineligible concept, the second step in the analysis is to consider the elements
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of the claims "individually and 'as an ordered combination"' to determine
whether there are additional elements that "'transform the nature of the
claim' into a patent-eligible application." Id. (quoting Mayo Collaborative
Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 79, 78 (2012)). In other
words, the second step is to "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."' Id. (quoting Mayo, 566 U.S. at 73.) The
prohibition against patenting an abstract idea "'cannot be circumvented by
attempting to limit the use of the formula to a particular technological
environment' or adding 'insignificant postsolution activity."' Bilski v.
Kappas, 561 U.S. 593, 610-11 (2010) (internal citation omitted.)
Turning to the first step of the Alice inquiry, we agree with the
Examiner that Appellants' claims are reasonably characterized as directed to
an abstract idea of "of calculating a length of time that a user was exposed to
an ad by a weighting factor to generate a weighted length of time, and
computing an exposure time associated with the ad by aggregating the
weighted lengths of time." (Final Act. 2.) As the Examiner concludes, the
fact that the claims further recite the abstract idea at a higher level of
specificity does not alter the conclusion that the claims are directed to an
abstract idea. (Ans. 3.)
There is no definitive rule to determine what constitutes an "abstract
idea." Rather, the Federal Circuit has explained that "both [it] and the
Supreme Court have found it sufficient to compare claims at issue to those
claims already found to be directed to an abstract idea in previous
cases." Enfzsh, LLC v. Microsoft Corp., 822 F.3d 1327, 1334 (Fed. Cir.
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Application 13/354,849
2016); see also Amdocs (Israel) Ltd. v. Openet Telecom, Inc., 841 F.3d 1288,
1294 (Fed. Cir. 2016) (explaining that, in determining whether claims are
patent-eligible under § 101, "the decisional mechanism courts now apply is
to examine earlier cases in which a similar or parallel descriptive nature can
be seen-what prior cases were about, and which way they were decided").
The Federal Circuit also noted that "examiners are to continue to determine
if the claim recites (i.e., sets forth or describes) a concept that is similar to
concepts previously found abstract by the courts." Amdocs, 841 F.3d at
1294 n.2 (internal citation omitted.)
Here, the claims are similar to the claims that the Federal Circuit
determined are patent ineligible in Electric Power Group, LLC v. Alstom S.
A., 830 F.3d at 1353-54 (collecting information and "analyzing information
by steps people go through in their minds, or by mathematical algorithms,
without more, [are] essentially mental processes within the abstract-idea
category"). The Federal Circuit has also held similar data manipulation
claims to be directed to patent-ineligible abstract ideas - see Digitech
Image Techs., LLC v. Elecs. For Imaging, Inc., 758 F.3d 1344, 1351 (Fed.
Cir. 2014) (employing mathematical algorithms to manipulate existing
information); OIP Tech., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1362---63
(Fed. Cir. 2015) (offer-based price optimization); Intellectual Ventures I
LLC v. Capital One Bank (USA), 792 F.3d 1363, 1370 (Fed. Cir.
2015) (tailoring information presented to a user based on particular
information); Accenture Global Servs., GmbH v. Guidewire Software, Inc.,
728 F.3d 1336, 1346 (Fed. Cir. 2013) (generating tasks in an insurance
organization); and Versata Dev. Grp. v. SAP Am., 793 F.3d 1306, 1333-34
(Fed. Cir. 2015) (price-determination method involving arranging
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organizational and product group hierarchies). Here, the data gathering and
analyzing steps recited in the claims are an abstract mental process that can
"be performed in the human mind, or by a human using a pen and paper."
CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1372 (Fed. Cir.
2011 ). Appellants' arguments that "the human mind is notoriously bad at
storing data precisely," and is unable to receive and serve ads "at a high
frequency" are irrelevant and not commensurate with the scope of the
claims, which are not limited to the high volume of information and fast
operations premised by these arguments. (Br. 10-11.)
Turning to the second step of the Alice inquiry, we find nothing in the
claims that adds anything "significantly more" to transform the abstract idea
of determining a working and living area for a person. Alice, 134 S. Ct. at
2357. Beyond an abstract idea, the claims merely recite "'well-understood,
routine, conventional activit[ies]."' Alice, 134 S. Ct. at 2359 (quoting Mayo,
566 U.S. at 73). In particular, we agree with the Examiner that the "ad
server" and "exposure determination engine" do not add significantly more
to the abstract idea embodied in the claims. (Ans. 9-12.) In particular,
those modules are described in the Specification as software modules of an
"advertisement system" that are "implemented with a computer program
... which can be executed by a computer processor for performing any or all
of the steps, operations, or processes described." (Spec. Fig. 2; i-fi-149, 77,
78.) Thus, Appellants' arguments that a generic computer would not be
capable of performing the claimed steps (Br. 11) is inconsistent with the
Specification, and is unpersuasive attorney argument unsupported by the
record. Considered individually or taken together as an ordered
combination, the claim elements fail "to 'transform' the claimed abstract
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idea into a patent-eligible application." Id. at 2357 (quoting Mayo, 566 U.S.
at 72-73, 78).
Because Appellants' claims are directed to a patent-ineligible abstract
concept and do not recite something "significantly more" under the second
prong of the Alice analysis, we sustain the Examiner's 35 U.S.C. § 101
rejection of the pending claims.
CONCLUSION
For the reasons stated above, we sustain the Examiner's rejection of
claims 1-6, 10-18, and 20-25 as being directed to patent-ineligible subject
matter under Section 101.
As stated above, the provisional rejection of the pending claims on the
ground of nonstatutory double patenting is summarily affirmed.
DECISION
We affirm the Examiner's decision rejecting claims 1-6, 10-18, and
20-25.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv). See 37
C.F.R. § 41.50(±).
AFFIRMED
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