Google Inc.

Patent Trials and Appeals Board

Apr 30, 2020

14337559 - (D) (P.T.A.B. Apr. 30, 2020)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
14/337,559 07/22/2014 Satyam Shaw 16113-2096002 7034
26192 7590 04/30/2020
FISH & RICHARDSON P.C.
PO BOX 1022
MINNEAPOLIS, MN 55440-1022
EXAMINER
BROWN, LUIS A
ART UNIT PAPER NUMBER
3682
NOTIFICATION DATE DELIVERY MODE
04/30/2020 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):
PATDOCTC@fr.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte SATYAM SHAW
____________

Appeal 2019-002489
Application 14/337,559
Technology Center 3600
____________

Before MURRIEL E. CRAWFORD, MICHAEL C. ASTORINO, and
NANA L. MEDLOCK, Administrative Patent Judges.

CRAWFORD, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant1 seeks our review under 35 U.S.C. § 134(a) of the
Examiner’s final rejection of claims 37, 39, 40, 42, 44, 45, 47, 48, 50, 51,
53, 55, and 56. We have jurisdiction under 35 U.S.C. § 6(b).

SUMMARY OF DECISION
We REVERSE.
THE INVENTION
Appellant claims technologies relating to content presentation. (Spec.
¶ 1).

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies Google LLC as the real party in
interest. (Appeal Br. 1.)
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Claim 37 is representative of the subject matter on appeal.
37. A computer-implemented method comprising:
identifying, by one or more computers, a given advertisement from an
inventory associated with an online advertisement system;
determining, by the one or more computers, that the given
advertisement is only capable of providing a predefined number of
conversions based on the given advertisement being for a product having a
limited available inventory that is limited to the predefined number, the
predefined number being greater than one;
receiving, by the one or more computers, multiple requests for content
from two or more user devices;
responding, by the one or more computers, to the multiple requests
with an advertisement, including:
determining, by the one or more computers and for at least some of
the requests, that the limited available inventory of the product of the given
advertisement is greater than zero;
and
providing, by the one or more computers, the given advertisement in
response to the determination that the limited available inventory of the
product is greater than zero;
reserving, by the one or more computers, the product for a specified
amount of time after providing the given advertisement during which
purchase of the product is able to be completed through a user device that
received the given advertisement;
during the specified amount of time, not providing, by the one or more
computers, the given advertisement in response to other requests from other
user devices;
determining, by the one or more computers, that the purchase of the
product was not completed during the specified amount of time;
in response to the purchase of the product not being completed during
the specified amount of time, providing, by the one or more computers, the
given advertisement in response to one or more of the multiple requests;
receiving, by the one or more computers and over a network,
conversion information indicating one or more conversions attributed to the
given advertisement when provided responsive to the one or more of the
multiple requests; and
determining, by the one or more computers and based on a detected
number of conversions and the predefined number of conversions, that the
limited available inventory has been depleted to a depleted level at which
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Application 14/337,559
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additional conversions provided by further distribution of the given
advertisement will fail to be fulfilled because of the depleted level of the
inventory of the product;
discontinuing, by the one or more computers, distribution of the given
advertisement in response to subsequent requests following the
determination that additional conversions provided by further distribution of
the given advertisement will fail to be fulfilled because of the depleted level
of the inventory of the product; and
distributing, by the one or more computers, different advertisements
in response to the subsequent requests.

THE REJECTION
Claims 37, 39, 40, 42, 44, 45, 47, 48, 50, 51, 53, 55, and 56 are
rejected under 35 U.S.C. § 101 as directed to a judicial exception without
significantly more.

ANALYSIS
35 U.S.C. § 101 REJECTION
We will not sustain the rejection of claims 37, 39, 40, 42, 44, 45, 47,
48, 50, 51, 53, 55, and 56 under 35 U.S.C. § 101.
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, . . . 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]
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itself.”
Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 217–218 (citing Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 72–73 (2012))
(citations omitted).
To perform this test, we must first determine whether the claims at
issue are directed to a patent-ineligible concept. The Federal Circuit has
explained that “the ‘directed to’ inquiry applies a stage-one filter to claims,
considered in light of the [S]pecification, based on whether ‘their character
as a whole is directed to excluded subject matter.’” See Enfish, LLC v.
Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016) (quoting Internet
Patents Corp., 790 F.3d 1343, 1346 (Fed. Cir. 2015)). It asks whether the
focus of the claims is on a specific improvement in relevant technology or
on a process that itself qualifies as an “abstract idea” for which computers
are invoked merely as a tool. See id. at 1335–36.
In so doing we apply a “directed to” two prong test: 1) evaluate
whether the claim recites a judicial exception, and 2) if the claim recites a
judicial exception, evaluate whether the judicial exception is integrated into
a practical application. 2019 Revised Patent Subject Matter Eligibility
Guidance, 84 Fed. Reg. 50, 50–57 (Jan. 7, 2019) (“Revised Guidance”).
The Examiner determines that the claims are directed to the
fundamental economic practice of advertising based on inventory
availability. (Final Act. 3). The Examiner finds that the claims automate the
fundamental economic practice and involve only a generic computer
identifying and waiting for a time period to remove the product for sale and
then re-introduce it for sale. (Id. at 4).
The Specification discloses that a user making a transaction can
reserve an item for some specified time in which the user can complete
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conversions (e.g., a time in which the user can purchase the item). The user
can use the specified time to complete the transaction including payment as
well as to interact with the seller. Once the item has been reserved, the ad is
not presented to any other potential buyers unless the user fails to complete
the transaction within the specified time. (Spec. ¶ 49).
Appellant argues that the claims recite an inventive concept.
Specifically, Appellant argues
by ensuring that a given user that has been provided an
advertisement for a particular product is afforded an
opportunity to complete an online purchase of that particular
product, which can take some time, rather than simply allowing
another user to purchase that particular product while the
particular user continues to complete the steps required
to complete the online purchase. Specifically, the claims require
that “multiple requests for content” be responded to by
“reserving . . . the product for a specified amount of time after
providing the given advertisement during which purchase of the
product is able to be completed through a user device that
received the given advertisement,” and “during the specified
amount of time, not providing the given advertisement in
response to other requests from other user devices.”
(Claim 37).

Appeal Br. 6.
According to Appellant, the invention addresses the Internet problem of an
automated system continuing to distribute an advertisement after all the
inventory of the item has been depleted. (id. at 7). Appellant also argues
that the claims are uniquely applicable to the online scenario and the ability
to halt distribution of ads for some period of time after distribution of the ad
to a particular user device and then restart distribution after that period
concludes. This is not possible in the offline publication scenario because
the publications have already been printed and distributed to many other
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users. Appellant argues that the claimed subject matter provides an
improvement over traditional systems that would continue to distribute
advertisements for a product irrespective of whether a purchase of that
product could be completed. (id at 9). In support of this argument,
Appellant relies on DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245
(Fed. Cir. 2014).
We are persuaded by the Appellant’s argument, that the claims
amount to more than any abstract idea recited in the claims. As such, even if
the Examiner is correct that the claims recite an abstract idea, we find that
the claims recite significantly more than any such abstract idea. The claims
address the business challenge of reserving the product for a specified
amount of time after providing the advertisement during which purchase of
the product is able to be completed. This challenge is particular to a specific
technological environment, such as the Internet and is deeply rooted in
computer technology. Each independent claim is directed to improvements
in the process of online advertising and transactions. Analogous to the
claims at issue in DDR, the instant claims do not merely recite the
performance of some business practice known from the pre-Internet world
along with the requirement to perform it on the Internet. Instead, the
claimed solution is necessarily rooted in computer technology in order to
overcome a problem specifically arising in the realm of the Internet and
computer networks.
The claims thus recite significantly more than the abstract idea of
advertising based on inventory availability
In view of the foregoing, we reverse the Examiner’s rejection of the
claims under 35 U.S.C. § 101.
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CONCLUSION
We conclude the Examiner did err in rejecting claims 37, 39, 40, 42,
44, 45, 47, 48, 50, 51, 53, 55, and 56 under 35 U.S.C. § 101.
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
37, 39, 40,
42, 44, 45,
47, 48, 50,
51, 53, 55,
56
101 Eligibility 37, 39, 40,
42, 44, 45,
47, 48, 50,
51, 53, 55,
56

REVERSED