Ex Parte Unger et al

Patent Trial and Appeal Board

Sep 26, 2018

14859101 (P.T.A.B. Sep. 26, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/859,101 09/18/2015
30554 7590
MAHAMEDI IP LAW LLP
910 Campisi Way, Suite IE
Suite 600
Campbell, CA 95008
09/28/2018
FIRST NAMED INVENTOR
Thomas R. Unger
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.
MKTO.P009C2 3701
EXAMINER
PHAM, KHANH B
ART UNIT PAPER NUMBER
2166
NOTIFICATION DATE DELIVERY MODE
09/28/2018 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):
uspto@m-iplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte THOMAS R. UNGER, EREZ BARAK,
PAUL ROBERT BROWN, and SCOTT PASSER
Appeal2018-001692
Application 14/859, 101
Technology Center 2100
Before JOHN A. EV ANS, BETH Z. SHAW, and JASON M. REPKO,
Administrative Patent Judges.
REPKO, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants 1 appeal under 35 U.S.C. § 134(a) from the Examiner's
rejection of claims 1-10. App. Br. 3.2 Claims 11-15 are canceled. We have
jurisdiction under 35 U.S.C. § 6(b). We affirm.
1 Appellants identify the real party in interest as Marketo, Inc., having a
principal place of business at 901 Mariners Island Blvd., Suite 500 in San
Mateo, California 94404. App. Br. 3.
2 Throughout this opinion, we refer to the Final Rejection ("Final Act.")
mailed February 27, 2017; the Appeal Brief ("App. Br.") filed July 25, 2017;
the Examiner's Answer ("Ans.") mailed October 5, 2017; and the Reply
Brief ("Reply Br.") filed December 5, 2017.
Appeal2018-001692
Application 14/859, 101
THE INVENTION
Appellants' invention provides webpage recommendations for
the creation of inbound links to a target webpage. Spec. ,r 3. An
example embodiment provides a marketing-activity support system
(MASS). Id. ,r 10. A MASS user (e.g., a marketing professional) can
direct a marketing campaign or other marketing activities to a subject-
matter domain. Id. The system can recommend link-placement
opportunities by determining webpages that are relevant to a subject-
matter domain. Id. The subject-matter domain can be described by
keywords. Id. The MASS can then recommend determined webpages
as candidates for the placement of a link or other reference to a target
webpage about the subject-matter domain. Id.
Claim 1 is reproduced below with our emphasis:
1. A computer-implemented method for providing Web page
recommendations for the creation of inbound links to a target
Web page, comprising:
receiving one or more keywords that describe a subject
matter domain associated with the target Web page;
determining a plurality of Web pages that refer to the
received one or more keywords;
for each Web page of the plurality of Web pages,
identifying each unique link within that Web page to any other
of the plurality of Web pages and determining a total number of
unique links within that Web page to any other of the plurality of
Web pages;
generating an ordered set of the plurality of Web pages,
wherein the plurality of Web pages are ordered by at least (1) the
total number of unique links determined for each of the plurality
of Web pages, and (2) a likelihood that a link to the target Web
page can be placed on each of the plurality of Web pages,
wherein the likelihood is determined from a domain of each of
the plurality of Web pages; and
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Appeal2018-001692
Application 14/859, 101
providing the ordered set of the plurality of Web pages as
recommended Web pages in which to create inbound links to the
target Web page.
THE EVIDENCE
The Examiner relies on the following as evidence:
Sundaresan et al.
Koppel et al.
Ives et al.
Unger et al.
US 2002/0169800 Al
US 7,257,766 Bl
US 2011/0004504 Al
US 9,171,320 B2
THE REJECTIONS
Nov. 14, 2002
Aug. 14, 2007
Jan. 6, 2011
Oct. 27, 2015
Claims 1-10 are rejected under 35 U.S.C. § 101 as directed to patent-
ineligible subject matter. Ans. 3-9.
Claims 1-5 and 10 stand rejected under 35 U.S.C. § I03(a) as
unpatentable over Koppel and Ives. Final Act. 3-6.
Claims 6-9 stand rejected under 35 U.S.C. § I03(a) as unpatentable
over Koppel, Ives, and Sundaresan. Final Act. 6-9.
THE PATENT-ELIGIBILTY REJECTION
The Examiner rejects claims 1-10 under 35 U.S.C. § 101 because the
claims as a whole (1) are directed to an abstract idea of collecting
information, analyzing it, and displaying certain results of the collection and
analysis and (2) do not contain an "inventive concept" sufficient to
transform the claimed abstract idea into a patent-eligible application.
Ans. 4.
Appellants argue claims 1-10 together. See Reply Br. 2-5. We select
claim 1 as representative.
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Application 14/859, 101
I. Alice Step One
The Supreme Court's two-step framework guides our analysis. See
Alice Corp. Pty. Ltd. v. CLS Bankint'l, 134 S. Ct. 2347, 2355 (2014). Step
one asks "whether the claims at issue are directed to a patent-ineligible
concept," such as an abstract idea. Id. In this step, the claims are considered
"in their entirety to ascertain whether their character as a whole is directed to
excluded subject matter." Internet Patents Corp. v. Active Network, Inc.,
790 F.3d 1343, 1346 (Fed. Cir. 2015).
The method of claim 1 collects keywords and webpages that refer to
those keywords. The method further identifies unique links within the
webpages and orders them. The webpages are then recommended as
candidates for link placement for marketing. Spec. ,r 10. Therefore, as a
whole, the concept here involves collecting data, ordering it, and providing
the ordered set for marketing. See id.
Because claim 1 is directed to collecting information, analyzing it, and
displaying certain results, the Examiner finds that claim 1 is similar to the
claims in Electric Power Group, LLC v. Alstom S.A., 830 F.3d 1350 (Fed.
Cir. 2016). We agree. For example, regarding the recited data collection,
the court in Electric Power Group stated "we have treated collecting
information, including when limited to particular content ( which does not
change its character as information), as within the realm of abstract ideas."
Id. at 1353.
Appellants characterize the claim as a method that identifies unique
links within webpages and allows for links to the target webpage. Reply
Br. 5. According to Appellants, this activity is rooted in computers. Id. We
are unpersuaded that this is the case. Considering the claim's character as a
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Application 14/859, 101
whole, its focus is using the computer as a tool to gather and output data in
another form. Similarly, the Federal Circuit has held that "[a] process that
started with data, added an algorithm, and ended with a new form of data
was directed to an abstract idea." RecogniCorp, LLC v. Nintendo Co., 855
F.3d 1322, 1327 (Fed. Cir. 2017) (citing Digitech Image Techs., LLC v.
Elecs.for Imaging, Inc., 758 F.3d 1344, 1351 (Fed. Cir. 2014)).
Overall, the focus and purpose of claim 1 is a method of marketing
that uses data. See, e.g., Spec. ,r 10. Claim 1 does not improve how the data
is collected or ordered. Rather, the claim recites "determining a plurality of
Web pages that refer to the received one or more keywords," without
reciting specific steps for carrying out the determination. The limitation
"generating an ordered set of the plurality of Web pages" is not limited to a
particular method of generating the set, apart from specifying the criteria
used. The remaining functions are similarly abstract. Thus, claim 1 merely
uses these data-processing functions for a marketing campaign or other
marketing activities. Id. ,r 10.
Accordingly, we are unpersuaded that the Examiner erred in
concluding that representative claim 1 is directed to an abstract idea.
II. Alice Step Two
Because the claims are "directed to an abstract idea," we consider the
claim limitations "both individually and 'as an ordered combination' to
determine whether the additional elements 'transform the nature of the
claim' into a patent-eligible application." Alice, 134 S. Ct. at 2355 (quoting
Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 78-79
(2012)). The Supreme Court has described this analysis "as a search for an
'inventive concept."' Id. at 2355.
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Appellants argue that the invention provides an Internet-centric
solution rooted in computer technology. Reply Br. 5. In this regard,
Appellants explain that the claimed system is rooted in technology like the
system in DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir.
2014). Id. According to Appellants, the Internet-centric challenge here is
providing webpage recommendations for the creation of inbound links to a
target webpage. Id. But the "inventive concept" must be more than the
abstract idea itself. Mayo, 566 U.S. at 72-73 (requiring that "a process that
focuses upon the use of a natural law also contain other elements or a
combination of elements, sometimes referred to as an 'inventive concept,'
sufficient to ensure that the patent in practice amounts to significantly more
than a patent upon the natural law itself') ( emphasis added).
Considering the limitations as an ordered combination and
individually, we agree with the Examiner that claim 1 simply recites the
abstract concept as performed by a generic computer. See Ans. 4
( explaining that claim 1 lacks additional features that constitute an
"inventive concept"). For example, unlike the inventive distribution of
function between the local computer and an ISP server in BASCOM,
Appellants' Specification, in paragraphs 36, 47, and 48, discloses that a
generic computer merely carries out the recited method. See BASCOM
Global Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341, 1352
(Fed. Cir. 2016) (discussing the specific location for the filtering system and
the role of networking accounts in concluding that the claims did not
preempt the abstract idea's use). That is, claim 1 recites the abstract idea
identified by the Examiner with the instruction to apply it on a generic
computer.
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Application 14/859, 101
Therefore, Appellants have not persuaded us of error in the rejection
of claim 1 under 35 U.S.C. § 101. Accordingly, we sustain the Examiner's
rejection of representative claim 1 and claims 2-10, which are not separately
argued (see Reply Br. 2-5).
THE OBVIOUSNESS REJECTION OVER KOPPEL AND IVES
The Examiner's Findings
The Examiner finds that Koppel teaches every limitation recited in
representative 3 claim 1 except for ordering by the second factor: a
likelihood that a link to the target webpage can be placed on each of a
plurality of webpages. Final Act. 4--5. The Examiner finds that Ives teaches
this feature, and concludes that claim 1 would have been obvious. Id. In
particular, the Examiner finds that Ives's method scores webpages by brand
reputation. Id. at 5 (citing Ives ,r,r 10-13, Fig. 4).
Appellants ' Contentions
Appellants argue that Ives and Koppel do not collectively teach or
suggest determining "a likelihood that a link to the target Web page can be
placed on each of the plurality of Web pages." App. Br. 7. According to
Appellants, Ives uses a brand-reputation score because high brand-reputation
scores correspond to greater trust levels. Id. (citing Ives ,r 13). In
Appellants' view, this has "nothing to do with likelihoods of being able to
place links on web pages," and Ives is silent regarding link placement.
Id. at 7-8. Appellants contend that the Examiner improperly relies on the
3 Appellants argue claims 1-5 and 10 together as a group. See App. Br. 8.
We select independent claim 1 as representative of claims 1-5 and 10. See
37 C.F.R. § 4I.37(c)(l)(iv).
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Application 14/859, 101
Specification for the teaching that brand fame is a useful factor in
determining the recited link-placement likelihood. Id.; Reply Br. 7-9.
Analysis
The disputed limitation of claim 1 calls for, in part,
generating an ordered set of the plurality of Web pages,
wherein the plurality of Web pages are ordered by at least ... a
likelihood that a link to the target Web page can be placed on
each of the plurality of Web pages, wherein the likelihood is
determined from a domain of each of the plurality of Web
pages.
Regarding this limitation, the Specification explains that some pages may
not be good candidates for link placement. Spec. ,r 32. For example, such
pages include those in the .gov domain and those belonging to famous
brands. Id. According to the Specification, these pages are unlikely to
include a link to a third-party commercial webpage. Id.
Appellants, however, explain that claim 1 is not limited to the famous-
brands example. See Reply Br. 8 n.1. We agree. For instance, the
generating step orders pages by at least "a likelihood that a link to the target
Web page can be placed on each of the plurality of Web pages." Yet, claim
1 does not recite what makes one page more likely for link placement than
another, only that some likelihood is used. But we note that the famous-
brands example at least falls within claim 1 's scope.
Similar to the above example about "famous brands" (Spec. ,r 32),
Ives considers "brand reputation metrics" when ordering webpages.
Ives ,r 13. In particular, Ives scores each URL as a measure of a webpage's
trustworthiness. Id. ,r 12. According to Ives, a webpage should be
trustworthy-regardless of content-if a widely recognized or respected
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organization has generated it. Id. Accordingly, Ives teaches ranking
webpages based on a score that considers a brand-reputation metric. Id.
The Examiner finds that Koppel orders webpages to create inbound
links to the target webpage, and it would have been obvious to use Ives' s
brand-reputation metric as part of Koppel's ordering. Final Act. 4--5.
Specifically, Koppel relates to hubs, which are websites that contain links to
other sites in the same field. Koppel 1:21-24. Koppel's method can be used
to suggest a website link to the hubs. Id. at 11 :35-37, cited in Final Act. 4.
That is, the Examiner relies on Koppel for link placement. See id.
Appellants' argument that Ives is silent regarding link placement
(App. Br. 8), however, does not address the Examiner's reliance on the
combined teachings of Koppel and Ives to arrive at the claimed limitation.
We also disagree that the Examiner improperly relies on the
Specification for the teaching that brand fame is a useful factor in
determining the recited link-placement likelihood. App. Br. 7-8;
Reply Br. 7-9. In the obviousness rationale, the Examiner cites Ives's
paragraph 13. Final Act. 5. The cited portion of Ives teaches that brand
reputation correlates with pages that "someone performing a search would
like to direct his or her attention" and those pages are ordered accordingly.
Ives ,r 13. Likewise, Koppel is related to web searches and directing users'
attention to relevant websites. See, e.g., Koppel 1:21-24; 11:35-37,
discussed supra. In this way, the Examiner's rationale is based on the
teachings of the references themselves.
Appellants have not shown that using Ives' s metric for a similar
purpose in Koppel would have been uniquely challenging or otherwise
beyond the level of ordinarily skilled artisans. See Leapfrog Enters., Inc. v.
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Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007). Rather, adding
Ives's metric would simply be an additional factor in selecting and
organizing information for Koppel's users. Koppel 1:21-24; 11:35-37;
Ives ,r 13. In this way, the Examiner's proposed enhancement uses prior-art
features predictably according to their established functions, which is an
obvious improvement. See KSR Int 'l Co. v. Teleflex Inc., 550 U.S. 398, 417
(2007).
Accordingly, we sustain the Examiner's rejection of representative
claim 1 and claims 2-5 and 10, which are argued as a group with claim 1.
THE OBVIOUSNESS REJECTION OVER KOPPEL, IVES, AND
SUNDARESAN
Claims 6-9 depend, directly or indirectly, from claim 1. In arguing
for the patentability of claims 6-9, Appellants refer to the arguments
presented for independent claim 1. See App. Br. 8; Reply Br. 9. Therefore,
for the reasons discussed in connection with claim 1, we also sustain the
rejections of claims 6-9.
DECISION
We affirm the Examiner's rejection of claims 1-10.
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. § 4I.50(f).
AFFIRMED
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