Google Inc.

Patent Trials and Appeals Board

Jun 17, 2020

2020001325 (P.T.A.B. Jun. 17, 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.
14/630,092 02/24/2015 Xiaohuan Li 16113-7215001 8962
26192 7590 06/17/2020
FISH & RICHARDSON P.C.
PO BOX 1022
MINNEAPOLIS, MN 55440-1022
EXAMINER
MPAMUGO, CHINYERE
ART UNIT PAPER NUMBER
3621
NOTIFICATION DATE DELIVERY MODE
06/17/2020 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 XIAOHUAN LI
________________

Appeal 2020-001325
Application 14/630,092
Technology Center 3600
________________

Before ERIC S. FRAHM, JOHNNY A. KUMAR, and
BETH Z. SHAW, Administrative Patent Judges.

KUMAR, Administrative Patent Judge.

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals the Final Rejection
of claims 1, 2, 4, 6, 7, 9–14, and 16–21. We have jurisdiction under 35
U.S.C. § 6(b).
We REVERSE.
INVENTION
The claimed invention relates to a content publication system that
allows a content provider to provide near real-time content for inclusion in
content items published within online resources. Spec. ¶ 13. Claim 1 is
illustrative of the invention and is reproduced below:

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. According to Appellant, Google LLC is the real party in
interest. Appeal Br. 1.
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1. A method comprising:

generating, by a content publication system including one
or more processors, a content item template for a content item
configured for publication within one or more resources
provided by one or more publishers, the content item associated
with a content provider, the generating including creating a
content item template that includes a set of content and one or
more fields configured to be populated at a later time based on
subsequent input from the content provider;

storing, by the content publication system, the generated
content item template within a memory for later publication;

prior to receiving the subsequent input from the content
provider, withholding the content item from publication
through auctions;

receiving, by the content publication system, the
subsequent input from the content provider through a social
media interface that is separate from an interface of the content
publication system;

detecting, by the one or more processors, a trigger signal
indicating that the content item is available for entry into an
auction based on a current time being after a start time of a live
event, wherein the trigger signal is defined by the content
provider;

entering, by the content publication system, the content
item into an auction to publish content items within a resource
provided by a publisher only after detecting the trigger signal
and receiving the subsequent input;

populating, by the content publication system, the stored
content item template with the subsequent input data received
from the content provider through the social media interface to
generate the content item prior to publication of the content
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item within the resource provided by the publisher based on an
outcome of the auction; and

providing the content item for presentation in the
resource provided by the publisher.

Appeal Br. 13–14 (Claims App.) (emphases added to denote additional, i.e.,
non-abstract, elements).

REJECTIONS
Claims 1, 2, 4, 6, 7, 9–14, and 16–21 stand rejected under 35 U.S.C.
§ 101 as being directed to patent-ineligible subject matter. Final Act. 3–8.
Claims 1, 4, 6, 7, 12, 14, 16, 17, 20, and 21 stand rejected under
35 U.S.C. § 103 as being unpatentable over D’Ambrosio et al. (US
2010/0324973 A1; published Dec. 23, 2010) (“D’Ambrosio”), Rose et al.
(US 2008/0313011 A1; published Dec. 18, 2008) (“Rose”), and DeAngelis
(US 2009/0012868 A1; published Jan. 8, 2009). Final Act. 9–16.
Claim 2 stands rejected under 35 U.S.C. § 103 as being unpatentable
over D’Ambrosio, Rose, DeAngelis, and Moxley et al. (US 2011/0276397
A1; published Nov. 10, 2011) (“Moxley”). Final Act. 16–17.
Claims 9, 11, and 18 stand rejected under 35 U.S.C. § 103 as being
unpatentable over D’Ambrosio, Rose, DeAngelis, and Makeev et al. (US
2014/0075293 A1; published Mar. 13, 2014) (“Makeev”). Final Act. 17–20.
Claims 10 and 19 stand rejected under 35 U.S.C. § 103 as being
unpatentable over D’Ambrosio, Rose, DeAngelis, Makeev, and Zhang (US
2015/0331583 A1; published Nov. 19, 2015). Final Act. 20–21.
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Claim 13 stands rejected under 35 U.S.C. § 103 as being unpatentable
over D’Ambrosio, Rose, DeAngelis, and Lundy et al. (US 7,293,064 B1;
issued Nov. 6, 2007) (“Lundy”). Final Act. 21–22.

ANALYSIS
SECTION 101 REJECTION
A. Principles of Law
An invention is patent-eligible if it claims a “new and useful process,
machine, manufacture, or composition of matter.” 35 U.S.C. § 101.
However, the U.S. Supreme Court has long interpreted 35 U.S.C. § 101 to
include implicit exceptions: “[l]aws of nature, natural phenomena, and
abstract ideas” are not patentable. E.g., Alice Corp. v. CLS Bank Int’l, 573
U.S. 208, 216 (2014).
In determining whether a claim falls within an excluded category, we
are guided by the Court’s two-part framework, described in Mayo and Alice.
Id. at 217–18 (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc.,
566 U.S. 66, 75–77 (2012)). In accordance with that framework, we first
determine what concept the claim is “directed to.” See Alice, 573 U.S. at 219
(“On their face, the claims before us are drawn to the concept of
intermediated settlement, i.e., the use of a third party to mitigate settlement
risk.”); see also Bilski v. Kappos, 561 U.S. 593, 611 (2010) (“Claims 1 and 4
in petitioners’ application explain the basic concept of hedging, or protecting
against risk.”).
Concepts determined to be abstract ideas, and thus patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219–20; Bilski, 561 U.S. at 611);
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mathematical formulas (Parker v. Flook, 437 U.S. 584, 594–95 (1978)); and
mental processes (Gottschalk v. Benson, 409 U.S. 63, 67 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as “molding rubber products” (Diamond v. Diehr, 450 U.S. 175, 191
(1981)); “tanning, dyeing, making water-proof cloth, vulcanizing India
rubber, smelting ores” (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S.
252, 267–68 (1853))); and manufacturing flour (Benson, 409 U.S. at 69
(citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
In Diehr, the claim at issue recited a mathematical formula, but the
Court held that “a claim drawn to subject matter otherwise statutory does not
become nonstatutory simply because it uses a mathematical formula.” Diehr,
450 U.S. at 187; see also id. at 191 (“We view respondents’ claims as
nothing more than a process for molding rubber products and not as an
attempt to patent a mathematical formula.”). Having said that, the Court also
indicated that a claim “seeking patent protection for that formula in the
abstract . . . is not accorded the protection of our patent laws, and this
principle cannot be circumvented by attempting to limit the use of the
formula to a particular technological environment.” Id. (citation omitted)
(citing Benson and Flook); see, e.g., id. at 187 (“It is now commonplace that
an application of a law of nature or mathematical formula to a known
structure or process may well be deserving of patent protection.”).
If the claim is “directed to” an abstract idea, we turn to the second
step of the Alice and Mayo framework, where “we must 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.” Alice, 573 U.S. at 221 (quotation marks omitted).
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“A claim that recites an abstract idea must include ‘additional features’ to
ensure ‘that the [claim] is more than a drafting effort designed to
monopolize the [abstract idea].’” Id. (alterations in original) (quoting Mayo,
566 U.S. at 77). “[M]erely requir[ing] generic computer implementation[]
fail[s] to transform that abstract idea into a patent-eligible invention.” Id.
B. USPTO Section 101 Guidance
In January 2019, the U.S. Patent and Trademark Office (USPTO)
published revised guidance on the application of § 101. 2019 Revised Patent
Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019)
(“2019 Revised Guidance”).2 “All USPTO personnel are, as a matter of
internal agency management, expected to follow the guidance.” Id. at 51; see
also Update at 1.
Under the 2019 Revised Guidance and the Update, we first look to
whether the claim recites:
(1) any judicial exceptions, including certain groupings of abstract
ideas (i.e., mathematical concepts, certain methods of organizing
human activity such as a fundamental economic practice, or mental
processes) (“Step 2A, Prong One”); and

2 In response to received public comments, the Office issued further
guidance on October 17, 2019, clarifying the 2019 Revised Guidance.
USPTO, October 2019 Update: Subject Matter Eligibility (the “Update”)
(available at
https://www.uspto.gov/sites/default/files/documents/peg_oct_2019_update.p
df).
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(2) additional elements that integrate the judicial exception into a
practical application (see MPEP § 2106.05(a)–(c), (e)–(h) (9th ed.
Rev. 08.2017, Jan. 2018)) (“Step 2A, Prong Two”).3
2019 Revised Guidance, 84 Fed. Reg. at 52–55.
Only if a claim (1) recites a judicial exception and (2) does not
integrate that exception into a practical application, do we then look, under
Step 2B, to whether the claim:
(3) adds a specific limitation beyond the judicial exception that is not
“well-understood, routine, conventional” in the field (see MPEP
§ 2106.05(d)); or
(4) simply appends well-understood, routine, conventional activities
previously known to the industry, specified at a high level of
generality, to the judicial exception.
2019 Revised Guidance, 84 Fed. Reg. at 52–56.
C. The Examiner’s Rejection and Appellant’s Arguments
The Examiner concludes that the present claims recite certain methods
of organizing human activity. Final Act. 5–6. The Examiner further
concludes that the abstract idea is not integrated into a practical application,
because the additional elements amount to mere instructions to apply the
judicial exception using generic computer components. Id. at 6–7. The
Examiner finds that the claims do not recite additional elements that go

3 This evaluation is performed by (a) identifying whether there are any
additional elements recited in the claim beyond the judicial exception, and
(b) evaluating those additional elements individually and in combination to
determine whether the claim as a whole integrates the exception into a
practical application. See 2019 Revised Guidance - Section III(A)(2), 84
Fed. Reg. at 54–55.
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beyond what is well-understood, routine, and conventional activity (id. at 7–
8 (citing MPEP § 2106.05(d)(II); Versata Dev. Group v. SAP Am., Inc., 793
F.3d 1306, 1334 (Fed. Cir. 2015); OIP Techs., Inc. v. Amazon.com, Inc., 788
F.3d 1359, 1363 (Fed. Cir. 2015); buySAFE, Inc. v. Google, Inc., 765 F.3d
1350, 1355 (Fed. Cir. 2014))), such that they do not amount to significantly
more than the judicial exception. Final Act. 7–8.
Appellant disagrees that the claims are not integrated into a practical
application, and argues that the Examiner ignores the actual claim language.
Appeal Br. 7–11. In particular, Appellant contends that the claims “provide a
technical solution to the technical problem of how to enable the
incorporation of real-time information into a content item that is required to
undergo a long build process before it can be distributed” (id. at 7), by
allowing the content provider to complete a partially filled template with
information without having to again access the content publication system,
that allows for efficiency, reduction of delays, and publication of time-
sensitive content in a timely fashion. Id. at 7–9 (citing Spec. ¶¶ 13, 18).
D. Step 2A, Prong 1
Patent eligibility under 35 U.S.C. § 101 is a question of law that is
reviewable de novo. See Dealertrack, Inc. v. Huber, 674 F.3d 1315, 1333
(Fed. Cir. 2012). Claim 1 requires generating a content item template for a
content item configured for publication, storing the template for later
publication, withholding the content item from publication through auctions,
receiving subsequent input from the content provider, detecting a trigger
signal indicating that the content item is available for entry into an auction,
entering the content item into an auction to publish content items, populating
the stored content item template with the subsequent input data to generate
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the content item, and providing the content item for presentation in the
resource provided by the published, and we therefore conclude the non-
emphasized portions of claim 1, reproduced above (see supra at 2–3), recite
concepts relating to commercial or legal interactions.
The present claims recite concepts relating to commercial or legal
interactions, which fall into the category of certain methods of organizing
human activity. See 2019 Revised Guidance, 84 Fed. Reg. at 52. Moreover,
those certain methods of organizing human activity are a type of abstract
idea. See id. Namely, the claims recite features such as “generat[ing] . . . a
content item template for a content item configurat[ion] for publication
within one or more resources provided by one or more publishers”;
“stor[ing] . . . the generated content item template . . . for later publication”;
“withhold[ing] the content item from publication through auctions”;
“detect[ing] . . . that the content item is available for entry into an auction”;
“enter[ing] . . . the content item into an auction to publish content items
within a resource provided by a publisher”; and “provid[ing] the content
item for presentation in the resource provided by the publisher,” which are
all features directed to advertising, marketing or sales activities or behaviors,
or business relations, and therefore fall under certain methods of organizing
human activity.
Nevertheless, we must still determine whether the abstract idea is
integrated into a practical application, namely, whether the claim applies,
relies on, or uses the abstract idea in a manner that imposes a meaningful
limit on the abstract idea, such that the claim is more than a drafting effort
designed to monopolize the abstract idea. See 2019 Revised Guidance, 84
Fed. Reg. at 54–55. We therefore (1) identify whether there are any
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additional recited elements beyond the abstract idea, and (2) evaluate those
elements both individually and collectively to determine whether they
integrate the exception into a practical application. See id.
Accordingly, we proceed to prong 2.
E. Step 2A, Prong 2
Here, the only elements in the claims beyond the abstract idea are
“content publication system,” “one or more processors,” “a memory,” “a
social media interface,” “an interface,” “at least one computing device,”4
and “at least one memory.”5 See 2019 Revised Guidance, 84 Fed. Reg. at 52.
We determine that the additional elements of the present claims integrate the
abstract idea into a practical application that uses the judicial exception in a
manner that imposes a meaningful limit on the judicial exception for the
following reasons.
In this case, Appellant identifies persuasively how the Specification
sets forth an improvement in technology. Appellant argues that the claimed
invention includes technological improvements, such as allowing the content
provider to complete a partially filled template with information without
having to again access the content publication system, which allows for
efficiency, reduction of delays, and publication of time-sensitive content in a
timely fashion. Appeal Br. 7–9 (citing Spec. ¶¶ 13, 18).
Appellant’s Specification discloses that the claimed invention allows
content providers to use a content item template that includes a set of
content, and provide subsequent input through a separate social media
interface that allows for publishing of time-sensitive content. See claim 1;

4 This additional element is recited only in claim 12. See Claims App.
5 This additional element is recited only in claim 12. See Claims App.
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Spec. ¶¶ 13, 15, 17–18, 39–40. We therefore agree with Appellant’s
argument that:
the claimed subject matter improves the functioning of content
publication systems by using disparate systems in a way that
reduces the amount of time required to publish time sensitive
information, thereby enabling the publication of time-sensitive
content in a timely fashion, and by way of a system that differs
from the system that contains the content item.

Appeal Br. 8 (emphases added). In other words, the present claims recite an
improvement to the content publication system, because “a content provider
can finish populating a content item template that is stored by the content
publication system by way of subsequent inputs through a social media
interface that is not part of the content publication system.” Id. at 9.
As such, based on the record before us, we are persuaded that the
Examiner erred in determining that the claims are directed to an abstract
idea. Because we determine that the present claims integrate the abstract
idea into a practical application that uses the judicial exception in a manner
that imposes a meaningful limit on the judicial exception, we need not
proceed to step 2B. Accordingly, we reverse the Examiner’s decision to
reject claims 1, 2, 4, 6, 7, 9–14, and 16–21 as directed to patent ineligible
subject matter.
SECTION 103 REJECTION
Claim 1 recites, inter alia: “receiving . . . the subsequent input from
the content provider through a social media interface that is separate from an
interface of the content publication system.” See Appeal Br. 13 (Claims
App.).
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The Examiner finds that D’Ambrosio and Rose teach the disputed
limitation above. Final Act. 10, 12. In particular, the Examiner finds that
D’Ambrosio teaches:
where the webpage provider may submit a preference
specification, such as, for example, a list of ordered
preferences, to the request-time web content auction service
150. As discussed herein, this preference specification may be
used by the request-time web content auction service 150 to
generate a willingness-to-pay function for the webpage
provider.

Final Act. 10 (emphases omitted) (citing D’Ambrosio ¶ 41). The Examiner
further cites, from Rose:
[O]nce the campaign launches, the campaign is accessible to
users via web servers that retrieve information concerning the
campaign from the database. . . .[T]he information entered via
the template is used to generate a campaign home page (often
referred to as a landing page). The landing page can be further
enhanced using a HTML editor. A screen shot of a WYSIWIG
HTML editor such as the FCKEditor.net distributed by
Frederico Caldeira Knabben of Warsaw, Poland, provided by a
campaign creator application to enable the enhancement of a
campaign landing page generated from a template in
accordance with an embodiment of the invention is shown in
FIG. 3E.

Final Act. 12 (emphases omitted) (citing Rose ¶¶ 110, 130, Fig. 3E).
Appellant argues that the combination of D’Ambrosio, Rose, and
DeAngelis fails to teach the limitations of claim 1, at least because the
Examiner’s cited portions of D’Ambrosio and Rose fail to teach or suggest
the disputed limitation. Appeal Br. 4–6.
Based on our review of D’Ambrosio and Rose, we are persuaded by
Appellant’s contention that the cited portions of D’Ambrosio teach
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identifying content using a web page provider’s preferences (Appeal Br. 4–
5; see also D’Ambrosio ¶ 41); and the cited portions of Rose teach
presentation of a landing page. Appeal Br. 6; see also Rose ¶¶ 110, 130, Fig.
3E. In other words, it is not clear how D’Ambrosio and Rose meet the
disputed claim limitations because the Examiner has not identified any
elements in these two references that teach receiving subsequent input
through a social media interface that is separate from an interface of the
content publication system.
Therefore, Appellant’s arguments have persuaded us of error in the
Examiner’s rejections of independent claim 1 and independent claims 12 and
20, which recite similar limitations. The Examiner has not identified any
teachings in the other applied prior art that would make up for the above-
mentioned deficiency, nor does the Answer provide assistance in this regard.
See Final Act. 8–13; Ans. 5. Accordingly, we do not sustain the rejections of
claims 1, 12, and 20, as well as claims 2, 4, 6, 7, 9–11, 13, 14, 16–19, and 21
depending therefrom.

CONCLUSION
The Examiner erred in rejecting claims 1, 2, 4, 6, 7, 9–14, and 16–21
as being subject-matter ineligible under 35 U.S.C. § 101.
The Examiner erred in rejecting claims 1, 2, 4, 6, 7, 9–14, and 16–21
as being obvious under 35 U.S.C. § 103, over the combined teachings and
suggestions of the cited references.

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REVERSED

Claim(s)
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1, 2, 4, 6, 7,
9–14, 16–
21
101 Eligibility 1, 2, 4, 6, 7,
9–14, 16–
21
1, 4, 6, 7,
12, 14, 16,
17, 20, 21
103 D’Ambrosio, Rose,
DeAngelis
1, 4, 6, 7,
12, 14, 16,
17, 20, 21
2 103 D’Ambrosio, Rose,
DeAngelis,
Moxley
2
9, 11, 18 103 D’Ambrosio, Rose,
DeAngelis,
Makeev
9, 11, 18
10, 19 103 D’Ambrosio, Rose,
DeAngelis,
Makeev, Zhang
10, 19
13 103 D’Ambrosio, Rose,
DeAngelis, Lundy
13
Overall
Outcome
1, 2, 4, 6, 7,
9–14, 16–
21