Ex Parte Adam

Patent Trial and Appeal Board

Sep 27, 2017

13631405 (P.T.A.B. Sep. 27, 2017)

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.
13/631,405 09/28/2012 Carasso Adam ADSP0010 2693
88635 7590
Los Angeles Patent Group
8200 Wilshire Boulevard
Suite 200
Beverly Hills, CA 90211
09/29/2017 EXAMINER
CROSS, MICHAEL J
ART UNIT PAPER NUMBER
3621
NOTIFICATION DATE DELIVERY MODE
09/29/2017 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):
mail@lapatentgroup.com
arman@lapatentgroup.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ADAM CARAS SO
Appeal 2016-000497
Application 13/631,4051
Technology Center 3600
Before MURRIEL E. CRAWFORD, NINA L. MEDLOCK, and
ROBERT J. SILVERMAN, Administrative Patent Judges.
SILVERMAN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 1—5, 7—12, and 14—20. We have jurisdiction under
35 U.S.C. § 6(b).
We REVERSE.
1 The Appellant identifies AdSupply, Inc. as the real party in interest.
Appeal Br. 1.
Appeal 2016-000497
Application 13/631,405
ILLUSTRATIVE CLAIM
1. A computer-implemented method for adapting
browser behavior to ensure presentation of an advertisement
when navigating away from a site, the computer-implemented
method performed by a computer system comprising a
processor operating in part to run a browser, the computer-
implemented method comprising:
identifying by operation of the processor, a Uniform
Resource Locator (URL) for a site currently presented in the
browser, wherein the browser creates a first entry for the site in
browser history upon loading the site identified by the URL;
appending by operation of the processor, a fragment
identifier to said URL in response to code embedded as part of
the site;
creating by operation of the processor, a second entry for
the site immediately after the first entry in the browser history
without changing presentation of the site displayed in the
browser by forwarding the browser to the URL appended with
the fragment identifier, wherein said forwarding occurs
automatically without user action immediately after loading the
site identified by the URL without the fragment identifier in the
browser;
detecting by operation of the processor, first invocation
of browser back functionality when the browser is directed to
the URL appended with the fragment identifier;
changing presentation of the site by displaying an
advertisement over or in place of the site when reverting from
the second entry for the site in the browser history to the first
entry for the site in the browser history in response to the first
invocation of the browser back functionality.
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Appeal 2016-000497
Application 13/631,405
REJECTIONS
I. Claims 1—5, 7—12, and 14—20 are rejected under 35 U.S.C.
§ 101 as ineligible subject matter.2
II. Claims 1—4, 7, 8, 10, 12, and 14—20 are rejected under
35 U.S.C. § 103(a) as unpatentable over Gunawardana et al.
(US 2009/0327032 Al, pub. Dec. 31, 2009) (“Gunawardana”).
III. Claims 5, 9, and 11 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Gunawardana and Official Notice.
FINDINGS OF FACT
The findings of fact relied upon, which are supported by a
preponderance of the evidence, appear in the following Analysis.
ANALYSIS
Subject Matter Eligibility
Addressing the first analytic step of Alice Corp. Pty. Ltd. v. CLS Bank
International, 134 S. Ct. 2347, 2355 (2014), the rejection states that
claim l’s “adapting, presenting, identifying, appending, creating,
detecting, and changing data is considered an abstract idea of organizing
human activities” and also characterizes the abstract idea as “comparing
new and stored information and using rule [sic] to identify options.”
Answer 17—18.
In regard to the second Alice step, the rejection maintains that the
additional limitations of claim 1 do not amount to “significantly more” than
the abstract idea, because they do not effect an improvement to computer
2 The rejection under 35 U.S.C. § 101 was introduced in the Answer (pages
15—18) as a New Ground of Rejection.
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Appeal 2016-000497
Application 13/631,405
function or another technology, but merely link the abstract idea to a
particular technological environment. Id. at 18.
The Appellant argues that claim 1 is not a method of organizing
human activity, but is instead involves computer operation, specifically
“manipulating the history and operation of a browser (i.e., a web browsing
application executing on some electronic device or computer).” Reply Br. 7.
Notwithstanding whether claim 1 might be directed to an abstract
idea, the claimed elements, as an ordered combination, provide
unconventional features that amount to significantly more than any such
abstract idea, under the second Alice step. See Reply Br. 8—9. The
Appellant likens claim 1 to the subject matter at issue in DDR Holdings,
LLCv. Hotels.com, LP, 773 F.3d 1245 (Fed. Cir. 2014). Id. at 9. The
comparison is apt. As in DDR Holdings, the elements of claim 1 manipulate
Internet technology to alter the conventional presentation achieved, upon a
user attempting to navigate away from a website. Id. at 8—9. In particular,
claim 1 accomplishes these ends by, e.g., the steps of “appending by
operation of the processor, a fragment identifier to said URL in response to
code embedded as part of the site,” “creating ... a second entry for the site
immediately after the first entry in the browser history without changing
presentation of the site displayed in the browser by forwarding the browser
to the URL appended with the fragment identifier,” and “changing
presentation of the site by displaying an advertisement over or in place of the
site when reverting from the second entry for the site in the browser history
to the first entry for the site in the browser history in response to the first
invocation of the browser back functionality.” See id. Like those giving rise
to patent-eligibility in DDR Holdings, the above-identified elements of
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Appeal 2016-000497
Application 13/631,405
claim 1, “taken together as an ordered combination,” “specify how
interactions with the Internet are manipulated to yield a desired result — a
result that overrides the routine and conventional sequence of events
ordinarily triggered by” the customary use of the technology. DDR
Holdings, 773 F.3d at 1258—59.
The rejection does not address any of these elements — whether
individually or as an ordered combination. See Answer 18.
The elements of claim 1 amount to significantly more than any
identified abstract idea to which the claim might be directed, such that claim
1 is patent-eligible subject matter. The same analysis applies to independent
claims 8 and 17, as well as the dependent claims in the Appeal.
Accordingly, we do not sustain the rejection of claims 1—5, 7—12, and 14—20
under 35 U.S.C. § 101.
Obviousness
The Appellant argues that independent claim 1 was rejected
erroneously because Gunawardana does not teach or suggest the recited
“appending ... a fragment identifier to said URL in response to code
embedded as part of the site.” Appeal Br. 11. According to the Appellant,
“[ejven given the broadest reasonable interpretation of the limitation and the
teachings of Gunawardana, Gunawardana, quite simply, nowhere discloses
or suggests modifying a URL by appending ‘a fragment identifier to said
URL.’” Id.
The Examiner maintains that this feature is disclosed in Gunawardana.
Final Action 5 (citing Gunawardana, Abstract, || 87, 102, 118, 124,
claims 2, 15, 18). However, the rejection does not adequately explain how
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Appeal 2016-000497
Application 13/631,405
the cited portions of Gunawardana might teach the claimed “fragment
identifier” or “appending” it to a URL. Further, the Examiner’s Answer
does not address the identified limitation.
Therefore, the Appellant persuasively argues that independent claim 1
was rejected in error. The same reasoning applies to similar limitations of
independent claims 8 (“generating a modified URL by appending to the
particular URL”) and 17 (“modifying the first URL with a fragment
identifier”), as well as the dependent claims in the Appeal. Accordingly, we
do not sustain the rejections of claims 1—5, 7—12, and 14—20 under 35 U.S.C.
§ 103(a).
DECISION
We REVERSE the Examiner’s decision rejecting claims 1—5, 7—12,
and 14—20 under 35 U.S.C. § 101.
We REVERSE the Examiner’s decision rejecting claims 1—5, 7—12,
and 14—20 under 35 U.S.C. § 103(a).
REVERSED
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