Justin Rao et al.

Patent Trials and Appeals Board

Sep 23, 2019

14166783 - (D) (P.T.A.B. Sep. 23, 2019)

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.
14/166,783 01/28/2014 Justin Rao 340099.01 1063
69316 7590 09/23/2019
MICROSOFT CORPORATION
ONE MICROSOFT WAY
REDMOND, WA 98052
EXAMINER
MACASIANO, MARILYN G
ART UNIT PAPER NUMBER
3688
NOTIFICATION DATE DELIVERY MODE
09/23/2019 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):
chriochs@microsoft.com
usdocket@microsoft.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte JUSTIN RAO, SEBASTIEN LAHAIE, DAVID PENNOCK,
and JOHN LANGFORD, RUGGIERO CAVALLO
____________

Appeal 2018-000426
Application 14/166,783
Technology Center 3600
____________

Before MAHSHID D. SAADAT, ST. JOHN COURTENAY III, and
LARRY J. HUME, Administrative Patent Judges.

SAADAT, Administrative Patent Judge.

DECISION ON APPEAL

Appellants1 appeal under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1–5, 8–11, 13–16, and 18–24, which constitute all
the claims pending in this application.2 We have jurisdiction under
35 U.S.C. § 6(b).
We affirm.

1 According to Appellants, the real party in interest is Microsoft Technology
Licensing, LLC. App. Br. 2.
2 Claims 6, 7, 12, and 17 have been canceled previously.
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STATEMENT OF CASE
Introduction
Appellants’ Specification describes “technologies related to a
computer-executable bidding agent that submits bids on behalf of a user”
and “wherein the bids are for respective advertisement positions on pages
that are to be displayed on a display of a client computing device employed
by the user.” Spec. ¶ 5.
Exemplary Claim
Claim 1 under appeal is illustrative of the invention and reads as
follows;
1. A method executed at an ad server, the method
comprising:
receiving, from a client computing device by way of a
network connection between the ad server and the client
computing device:
an indication that a page is to be displayed on a
display of the client computing device, the page
comprising an advertisement position that is configured
to be populated by an advertisement; and
data that is indicative of an identity of a user of the
client computing device;
responsive to receiving the indication and the data and
based upon the indication and the data, soliciting a bid from a
computer-executable bidding agent of the user, the computer-
executable bidding agent of the user configured to submit bids
to the ad server on behalf of the user;
receiving, from a plurality of computer-executable
bidding agents, bids for the advertisement position, wherein the
bids for the advertisement position comprise the bid solicited
from the computer-executable bidding agent of the user; and
responsive to identifying that the bid solicited from the
computer-executable bidding agent of the user is the winning
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bid, transmitting data to the client computing device that causes
the client computing device to display user-approved graphical
content in the advertising position of the page rather than an
advertisement.
Rejections on Appeal3
Claim 16 stands rejected under 35 U.S.C. § 112 (pre-AIA), first
paragraph, as failing to comply with the written description requirement.
See Final Act. 3.
Claims 1–5, 8–11, 13–16, and 18–24 stand rejected under
35 U.S.C. § 101 for being directed to patent-ineligible subject matter. See
Final Act. 5–8.
Claims 1, 2, 5, 8–11, 16, and 18–21 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Bezos (US 2003/0055729 A1; pub. Mar. 20,
2003) and Su (US 9,118,723 B1; iss. Aug. 25, 2015). See Final Act. 9–20.
Claims 3, 14, and 22 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Bezos, Su, and Knapp (US 2011/0173126 A1; pub. July
14, 2011). See Final Act. 20–22.
Claims 4, 13, 15, 23, and 24 stand rejected under 35 U.S.C. § 103(a)
as unpatentable over Bezos, Su, and Krassner (US 2007/0265923 A1; pub.
Nov. 15, 2007). See Final Act. 22–25.

3 The Examiner has withdrawn the 35 U.S.C. § 112 (pre-AIA), second
paragraph, rejection of claims 1–5, 8–11, 13–16 and 18–24 for being
indefinite, as well as the 35 U.S.C. § 101 rejection of claim 20 for being
directed to signal per se. See Final Act. 3–4, 8; Ans. 2.
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ANALYSIS
REJECTION UNDER 35 U.S.C. § 112
Appellants do not submit any arguments contesting the 35 U.S.C.
§ 112, first paragraph, for lack of written description. App. Br. 4–28.
Accordingly, we summarily sustain this rejection. See Hyatt v. Dudas, 551
F.3d 1307, 1314 (Fed. Cir. 2008) (“When the appellant fails to contest a
ground of rejection to the Board, . . . the Board may treat any argument with
respect to that ground of rejection as waived.”).
REJECTION UNDER 35 U.S.C. § 101
Based on the record before us, Appellants have persuaded us that the
Examiner erred in rejecting claims 1–5, 8–11, 13–16, and 18–24 as directed
to patent ineligible subject matter.
Principles of Law
Section 101 of the Patent Act provides that “any new and useful
process, machine, manufacture, or composition of matter, or any new and
useful improvement thereof” is patent eligible. 35 U.S.C. § 101. But the
Supreme Court has long recognized an implicit exception to this section:
“Laws of nature, natural phenomena, and abstract ideas are not patentable.”
Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 216 (2014) (quoting Ass’n for
Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 589 (2013)).
To determine whether a claim falls within one of these excluded categories,
the Court has set out a two-part framework. The framework requires us first
to consider whether the claim is “directed to one of those patent-ineligible
concepts.” Alice, 573 U.S. at 217. If so, we then examine “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
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patent-eligible application.” Alice, 573 U.S. at 217 (quoting Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 78, 79 (2012)).
That is, we examine the claims for an “inventive concept,” “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, 573 U.S. at 217–18 (alteration in original) (quoting
Mayo, 566 U.S. at 72–73).
In January 2019, the USPTO published revised guidance on the
application of § 101. See 2019 Revised Patent Subject Matter Eligibility
Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (“Guidance”). Under that
guidance, 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 activities such as a fundamental economic practice, or mental
processes); and
(2) additional elements that integrate the judicial exception into a
practical application (see MANUAL OF PATENT EXAMINING PROCEDURE
(MPEP) §§ 2106.05(a)–(c), (e)–(h) (9th ed. Rev. 08.2017, Jan. 2018)).
Only if a claim (1) recites a judicial exception, and (2) does not integrate that
exception into a practical application, do we then look to whether the claim:
(3) adds a specific limitation beyond the judicial exception that is not
well-understood, routine, and conventional in the field (see MPEP
§ 2106.05(d)); or
(4) simply appends well-understood, routine, and conventional
activities previously known to the industry, specified at a high level of
generality, to the judicial exception.
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See Guidance, 84 Fed. Reg. at 56.
Arguments
The Examiner concluded the claims are abstract because the claims
are directed to “a process of displaying user-selected content in an
advertisement position when the user wins an auction for the advertisement
position. This is a manner of organizing human activities and mathematical
formulas, organizing information through mathematical correlations (i.e.
computer instructions).” Final Act. 5. The Examiner also determined “[t]he
claimed operations include receiving a request for a page to be displayed,
receiving a plurality of bids for ad placement, submit the first bid and
execute an auction for the advertisement position,” which “are similar to
operations that courts have held to be generic, routine and conventional, and
thus, failing to add significantly more to an abstract idea.” Final Act. 6.
Appellants argue that the claimed invention is similar to the claims
found eligible in McRO, Inc. v. Bandai Namco Games America, Inc., 837
F.3d 1299 (Fed. Cir. 2016) and DDR Holdings, LLC v. Hotels.com, L.P., 773
F.3d 1245 (Fed. Cir. 2014). Namely, Appellants argue that “[l]ike the
claims at issue in McRO, claim 1, for example, clearly sets forth a combined
order of specific steps that is used to create a desired result: the presentation
of user-approved graphical content in advertisement positions.” App. Br. 17.
Further, with respect to DDR, Appellants assert “the claims address a
technical challenge — how to present user-approved content in locations
conventionally occupied by advertisements (without causing a publisher to
suffer)” and “[e]ven if, however, these claims can be characterized as
addressing a business challenge, as noted above, such challenge is clearly
particular to the Internet.” App. Br. 18–19.
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Appellants also allege
Thus, even if claim 1 can be characterized as involving the
allegedly abstract concept of “a process of displaying user-
selected content in an advertisement position when the user
wins an auction for the advertisement position”, this concept is
applied to a new and useful end — the display of user-approved
content in an advertisement position rather than an (potentially
unwanted) advertisement. (See, for example paragraphs [0005],
[0011], [0039], and [0040] of the specification).
App. Br. 20. Additionally, Appellants argue the claimed limitations are
rooted in computer technology and “provide a solution to a problem imposed
by display advertisements and ad blockers — how to cause graphical content
that is approved by a user in an advertisement position on a page without
negatively impacting a content publisher.” Id.
Step 2A, Prong One – Recited Judicial Exception
Step 2A of the Guidance is a two-prong inquiry. In Prong One we
evaluate whether the claim recites a judicial exception. For abstract ideas,
Prong One represents a change as compared to prior guidance because we
determine whether the claim recites mathematical concepts, certain methods
of organizing human activity, or mental processes.
Claim 1 includes “receiving, from a client computing device . . . , an
indication that a page is to be displayed on a display of the client computing
device” and “data that is indicative of an identity of a user of the client
computing device;” “responsive to receiving the indication and the data . . .
receiving, from a plurality of computer-executable bidding agents, bids for
the advertisement position;” and “responsive to identifying that the bid . . . is
the winning bid,” “transmitting data to the client computing device that
causes the client computing device to display user-approved graphical
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content in the advertising position of the page rather than an advertisement.”
Claim 11 additionally recites a server comprising a processor and a memory
for performing the recited method steps. Similarly, claim 20 recites “a
computer-readable storage medium comprising instructions” for carrying out
the recited method steps. Similar limitations are recited in claims 11 and 20
(reciting an advertisement server including a processor and instructions
stored in the memory or computer-readable storage medium for performing
the functionalities address above).
At a high level, the claimed invention recites receiving the data from
the application executing on the client computing device, and responsive to
receipt of the data, conducting an auction for the advertisement position,
which causes the advertisement of the winning advertiser to be displayed in
the advertisement position on the page at the client device. See Spec. ¶ 11.
As such, the claimed invention recites certain methods of organizing human
activity, which is an abstract idea. See, e.g., Ultramercial, Inc. v. Hulu,
LLC, 772 F.3d 709, 715 (Fed. Cir. 2014) (finding the claimed “idea of
showing an advertisement before delivering free content” abstract);
Intellectual Ventures I LLC v. Capital One Bank (USA), 792 F.3d 1363,
1369 (Fed. Cir. 2015) (finding that “tailoring content based on the viewer’s
location or address” or navigation data was abstract and further noting that
“[t]here is no dispute that newspaper inserts had often been tailored based on
information known about the customer—for example, a newspaper might
advertise based on the customer’s location. Providing this minimal
tailoring—e.g., providing different newspaper inserts based upon the
location of the individual—is an abstract idea.”); see also Ans. 3–5
(identifying the claimed abstract idea as “a fundamental business practice”).
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Appellants’ Specification also describes that the “bidding agent” is
included in a computing device, which is further described as a generic
device comprising a processor, a memory and an interface. Spec. ¶ 67–70.
However, the Specification provides no specific component or algorithm as
the recited “bidding agent” other than a “computer-executable bidding
agent.” See e.g., Spec. ¶ 5–8.
Because we conclude the independent claims recite an abstract idea,
the claims require further analysis for a practical application of the judicial
exception.
Step 2A, Prong Two –Practical Application
If a claim recites a judicial exception, in Prong Two we determine
whether the recited judicial exception is integrated into a practical
application of that exception by: (a) identifying whether there are any
additional elements recited in the claim beyond the judicial exception(s); and
(b) evaluating those additional elements individually and in combination to
determine whether they integrate the exception into a practical application.
If the recited judicial exception is integrated into a practical application, the
claim is not directed to the judicial exception.
Here, claim 1 recites the additional elements of soliciting bids,
receiving bids, and “responsive to identifying that the bid solicited from the
computer-executable bidding agent of the user is the winning bid,
transmitting data to the client computing device that causes the client
computing device to display user-approved graphical content in the
advertising position of the page rather than an advertisement,” which allow
user-approved graphical content to be displayed in place of imposed
advertisement. See App. Br. 20; see also Spec. ¶¶ 5, 7, 40, 43. We
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determine these additional technical elements reflect a claimed improvement
in advertising display technology and do “integrate a judicial exception into
a practical application [in that they] apply, rely on, or use the judicial
exception in a manner that imposes a meaningful limit[ation] on the judicial
exception, such that the claim is more than a drafting effort designed to
monopolize the judicial exception.” Guidance at 53.
Our determination is supported by the Specification, which describes
prior advertisement systems use “ad blockers” to prevent the web browser
from displaying an advertisement which leaves a portion of the displayed
web page empty or with an unpleasing image. Spec. ¶ 2. Additionally, ad
blockers prevent publishers and service providers from receiving revenue
that comes from displaying advertisements on web pages. Spec. ¶ 3. The
subject matter of claim 1 improves the user’s control over the displayed
content by submitting bids on behalf of the user without affecting
publishers’ and service providers’ revenue, as explained below:
In an exemplary embodiment, technologies related to a
computer-executable bidding agent that submits bids on behalf
of a user are set forth herein, wherein the bids are for respective
advertisement positions on pages that are to be displayed on a
display of a client computing device employed by the user.
Also described herein are various technologies pertaining to
executing an auction for an advertisement position on a page to
be displayed on a display of a client computing device, wherein
the aforementioned computer-executable agent submits a bid on
behalf of the user, and the auction is executed based upon such
bid. Additionally described herein are various technologies
pertaining to the display of user-selected content in an
advertisement position when the user wins an auction for the
advertisement position.
Spec. ¶ 5.
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There are various advantages associated with the “bid to block”
approach described above, where the user agent 122 sets forth
bids for advertisement positions on behalf of the user. For
example, auctions for advertisement positions to be presented
on respective pages are typically won by bids with relatively
small bid values (often less than 1/10 of one cent).
Accordingly, from the perspective of the user 104, the user 104
can set aside a relatively small amount of money to effectively
prevent a relatively large number of advertisements from being
presented to the user 104, thereby improving satisfaction of the
user 104 with respect to content presented to the user 104.
Moreover, when the user 104 is out-bid, advertisements
displayed to the user 104 are likely to be better targeted to
interests of the user 104 and from “higher” quality advertisers,
which can further improve user experience.
Spec. ¶ 43.
Thus, under the guidance of MPEP § 2106.05(a) (Improvements to the
Functioning of a Computer or To Any Other Technology or Technical Field)
and/or MPEP § 2106.05(e) (Other Meaningful Limitations), we conclude
that claim 1 as a whole integrates the judicial exception, i.e., the method of
organizing human activity, into a practical application. Claims 11 and 20
similarly integrate the abstract idea into a practical application. Because
claims 1, 11, and 20 integrate the recited judicial exception into a practical
application, they are not “directed to” a judicial exception and, therefore, our
inquiry ends.
For these reasons, under the Guidance, we reverse the Examiner’s
§ 101 rejection of independent claims 1, 11, and 20, as well as the
Examiner’s rejection of dependent claims 2–5, 8–10, 13–16, 18, 19, and 21–
24, which stand with the independent claims from which they depend.
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Conclusion
For at least the above reasons, under the Guidance, we do not sustain
the Examiner’s § 101 rejection of independent claims 1, 11, and 20, as well
as the Examiner’s rejection of dependent claims 2–5, 8–10, 13–16, 18, 19,
and 21–24, which stand with the independent claims from which they
depend.
REJECTION UNDER 35 U.S.C. § 103(a)
Claim 1
Appellants contend the Examiner erred in rejecting claim 1 for
obviousness because the combination of Bezos and Su does not teach or
suggest the limitation “soliciting a bid from a computer-executable bidding
agent of the user, the computer-executable bidding agent of the user
configured to submit bids to the ad server on behalf of the user” and
“responsive to identifying that the bid solicited from the computer-
executable bidding agent of the user is the winning bid, transmitting data to
the client computing device that causes the client computing device to
display user-approved graphical content in the advertising position of the
page rather than an advertisement,” as recited in claim 1. App. Br. 24.
Appellants argue that the portions of Bezos in paragraph 34 cited by the
Examiner describes how the user acquires “advertising points by interacting
with a web page,” which refer to the advertiser who uses those points to
purchase display space. App. Br. 25–26. With respect to Su, Appellants
argue reference Figure 1, as described in column 17, “teaches that a post
framework includes an area where advertisements may be depicted,” but not
“user-approved graphical content in the advertising position of the page
rather than an advertisement.” App. Br. 27.
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We are not persuaded the Examiner erred. The Examiner found
“transmitting data to the client computing device that causes the client
computing device to display user-approved graphical content in the
advertising position of the page rather than an advertisement” is missing in
Bezos but “Su teaches a social activity stream content framework which
includes a content body that provides a defined area with in a post for
providing content.” Final Act. 11 (citing Su, col. 17, ll. 5–8) (emphasis
omitted). In response to Appellants’ contentions, the Examiner explains
paragraph 8 of Bezos refers to “users” both as the advertiser and the client
“to whom the advertisement may be placed” and further defines “the
activities for which advertising points may be awarded” as including “the
bidding on an item being auctioned.” Ans. 11, (emphasis omitted).
Regarding Su, the Examiner correctly finds:
Su teaches that “first content” such as a picture in Maui, may be
expanded to “full bleed” or across the entirety of a web page.
The portion of Su column 17 lines 1–4 cited in the office action
refers to the discussion of figure 7 in Su. At column 16 lines
44–50, in discussing figure 7, Su teaches that the “full bleed”
applies to content of the user of the social network. Thus, the
cited part of Su arguably teaches that the user content can
occupy the entire page, including the area normally reserved for
advertising content. Su further teaches a server 230 for
providing a social activity stream content framework, wherein
the content framework includes a content body that provides a
defined area within a post for providing content (advertising
space). In addition, the content framework may provide a
defined container within the content body for third parties, such
as advertisers, or providers of product or services to provide
shared content to consuming users. Content may include a
video, a photograph, a map etc., such that a first content may
fill a portion of the content body such as a picture of a beach in
Maui.
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Ans. 11–12. We agree with the Examiner’s findings and adopt them as our
own.
First, contrary to Appellants’ argument that showing a photo in “full
bleed” leaves no advertisement position (Reply Br. 9), Su provides for
defined area used to display content, which may be an advertisement or
other types of content. See Su, col. 17, ll. 10–18. That is, any content other
than advertisement meets the disputed claim limitation of “to display user-
approved graphical content in the advertising position of the page rather than
an advertisement.” Second, nonobviousness cannot be established by
attacking the references individually when the rejection is predicated upon a
combination of prior art disclosures. See In re Merck & Co., 800 F.2d 1091,
1097 (Fed. Cir. 1986). The test for obviousness is not whether the claimed
invention is expressly suggested in any one or all of the references, but
whether the claimed subject matter would have been obvious to those of
ordinary skill in the art in light of the combined teachings of those
references. See In re Keller, 642 F.2d 413, 425 (CCPA 1981). Here the
Examiner relied on the combination of Bezos with Su for the proposed
rejection.
Claim 20
Regarding the rejection of claim 20, again, Appellants have not
persuasively shown error in the Examiner’s findings. See App. Br. 28;
Reply 10–11. To the contrary, Appellants’ arguments are conclusory,
merely reciting the claim limitation, the teachings of Bezos, and stating that
the two are not the same. Id. As stated by the Federal Circuit, Rule 41.37
“require[s] more substantive arguments in an appeal brief than a mere
recitation of the claim elements and a naked assertion that the corresponding
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elements were not found in the prior art.” In re Lovin, 652 F.3d 1349, 1357
(Fed. Cir. 2011). Additionally, the Examiner has cited to specific portions
of Bezos in the Abstract and paragraphs 8, 26–28, and 32 and provided
explanation as to how the relevant cited teachings meet the disputed claim
limitations, as follows:
[I]n Bezos, the Abstract teaches the display space system
receiving bids each indicating a bid amount and an
advertisement. The display space system may also provide an
auto bidding mechanism that places bids for display on behalf
of the user. In paragraph 0008, Bezos teaches the display space
system receives multiple bids each indicating a bid amount and
an advertisement. When a request is received to provide a web
page that includes the display space, the display space system
selects a bid based in part on the bid amount. Furthermore, in
paragraphs 26, 27 and 28, Bezos teaches the display space
system identifies the advertisement that is to be placed on a web
page based on advertising plans specified by advertisers.
Finally, Bezos in paragraph 32, teaches the display space
system auctions off display space system using an auction
model. The display space system may auction off display space
in a manner similar to conventional auctions of products or
services. For example, the display space system may specify a
certain type of display space and ask for bids from advertisers.
The advertiser who places the highest per access bid wins the
auction and their advertisements are included in the display
space.
Ans. 12–13. We agree with the Examiner’s findings and adopt them as our
own.
Conclusion
For these reasons, we are not persuaded by Appellants’ argument that
the Examiner erred in finding that the combination of Bezos and Su teaches
or suggests the disputed limitations of claims 1 and 20. Accordingly, we
sustain the Examiner’s rejection of claims 1 and 20 under § 103(a), as well
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as the rejection of the remaining claims, not argued separately with
sufficient particularity.
DECISION
We affirm the Examiner’s rejection of claim 16 under 35 U.S.C. § 112
(pre-AIA), first paragraph, as failing to comply with the written description
requirement.
We reverse the Examiner’s rejection of claims 1–5, 8–11, 13–16, and
18–24 under 35 U.S.C. § 101.
We affirm the Examiner’s rejection of claims 1–5, 8–11, 13–16, and
18–24 under 35 U.S.C. § 103.
Because we have affirmed at least one ground of rejection with
respect to each claim on appeal, we affirm the Examiner’s decision. See
37 C.F.R. § 41.50(a)(1).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv) (2015). See
37 C.F.R. § 41.50(f).
AFFIRMED