Ex Parte Ahopelto

Patent Trial and Appeal Board

Oct 30, 2017

13058717 (P.T.A.B. Oct. 30, 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.
13/058,717 10/24/2011 TimoAhopelto 20182.33.PCUS00_P11585US1 3208
77970 7590 11/01/2017
Polsinelli — Apple Inc.
c/o Polsinelli PC
Three Embarcadero Center, Suite 2400
San Francisco, CA 94111
EXAMINER
HENRY, RODNEY M
ART UNIT PAPER NUMBER
3681
NOTIFICATION DATE DELIVERY MODE
11/01/2017 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):
Apple @ Polsinelli. com
cadocket @ Polsinelli. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TIMO AHOPELTO
Appeal 2015-0082051
Application 13/058,7172
Technology Center 3600
Before JOSEPH A. FISCHETTI, BRUCE T. WIEDER, and
TARA L. HUTCHINGS, Administrative Patent Judges.
HUTCHINGS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1—36 and 38. We have jurisdiction under 35 U.S.C.
§ 6(b).
1 Our Decision references Appellant’s Appeal Brief (“App. Br.,” filed
Dec. 15, 2014), Reply Brief (“Reply Br.,” filed Sept. 8, 2015), and Amended
Specification (“Spec.,” filed Feb. 11, 2011), and the Examiner’s Answer
(“Ans.,” mailed July 7, 2015) and Final Office Action (“Final Act.,” mailed
June 19, 2014).
2 Appellant identifies Apple, Inc. as the real party in interest. App. Br. 3.
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We AFFIRM.
CLAIMED INVENTION
Appellant’s claimed invention “relates in general to delivery of
promotional material via cellular networks. In particular the invention
relates to targeted delivery of Internet-available promotional material to
mobile service subscribers via their mobile devices[.]” Spec. 12.
Claims 1,19, and 38 are the independent claims on appeal. Claim 1,
reproduced below, is illustrative of the claimed subject matter:
1. A method for identifying promotional content for
delivery to at least one mobile device, the method comprising:
receiving, by a processor, a request from a mobile device
for a promotional content item pertaining to a specified subject
specified by the request;
searching, by the processor, one or more promotional
content inventories including promotional content configured for
delivery via the Internet based on the specified subject to identify
promotional content for delivery to the mobile device;
selecting, by the processor, from the promotional content
items identified as a result of the search, a first promotional
content item determined to include a selectable element enabling
the mobile device to immediately purchase an item advertised by
the first promotional content item; and
reformatting, by the processor, the first promotional
content item for delivery to the mobile device in one or more
messages including at least one of text and multimedia objects.
REJECTIONS
Claims 1—36 and 38 are rejected under 35U.S.C. § 101 as directed to
non-statutory subject matter.
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Claims 1, 2, 4—8, 13—20, 22—26, 31—36, and 38 are rejected under 35
U.S.C. § 103(a) as unpatentable over Lang (US 2006/0178932 Al, pub.
Aug. 10, 2006), and Grannan (US 2007/0244750 Al, pub. Oct. 18, 2007).3
Claims 3 and 21 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Lang, Grannan, and Bemmel (US 2008/0097851 Al, pub. Apr. 24,
2008).
Claims 9—12 and 27—30 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Lang, Grannan, and Ramer (US 2007/0060099 Al, pub.
Mar. 15,2007).
ANALYSIS
Non-Statutory Subject Matter
Appellant argues claims 1—36 and 38 as a group. Reply Br. 3—8. We
select claim 1 as representative, and claims 2—36 and 38 stand or fall with
claim 1. See 37 C.F.R. § 41.37(c)(l)(iv).
Under 35 U.S.C. § 101, an invention is patent-eligible if it claims a
“new and useful process, machine, manufacture, or composition of matter.”
35 U.S.C. § 101. The Supreme Court, however, has long interpreted § 101
to include an implicit exception: “[ljaws of nature, natural phenomena, and
abstract ideas” are not patentable. See, e.g., Alice Corp. Pty. Ltd. v. CLS
Banklnt’l, 134 S. Ct. 2347, 2354 (2014).
The Supreme Court, in Alice, reiterated the two-step framework
previously set forth in Mayo Collaborative Services v. Prometheus
3 We treat the Examiner’s identification at page 2 of the Final Office Action
of claims 3 and 21 among the claims subject to rejection over Lang and
Grannan as inadvertent error, given their separate rejection at pages 24—27
of the Final Office Action.
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Laboratories, Inc., 132 S. Ct. 1289, 1300 (2012), “for distinguishing patents
that claim laws of nature, natural phenomena, and abstract ideas from those
that claim patent-eligible applications of those concepts.” Alice Corp.,
134 S. Ct. at 2355. The first step in that analysis is to “determine whether
the claims at issue are directed to one of those patent-ineligible concepts,”
id., e.g., to an abstract idea. If the claims are not directed to a patent-
ineligible concept, the inquiry ends. Otherwise, the inquiry proceeds to the
second step where the elements of the claims are considered “individually
and ‘as an ordered combination”’ to determine whether there are additional
elements that “‘transform the nature of the claim’ into a patent-eligible
application.” Alice Corp., 134 S. Ct. at 2355 (quoting Mayo, 132 S. Ct.
at 1297).
The Court acknowledged in Mayo, that “all inventions at some level
embody, use, reflect, rest upon, or apply laws of nature, natural phenomena,
or abstract ideas.” Mayo, 132 S. Ct. at 1293. We, therefore, look to whether
the claims focus on a specific means or method that improves the relevant
technology or are instead directed to a result or effect that itself is the
abstract idea and merely invoke generic processes and machinery.
See Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1336 (Fed. Cir. 2016).
We are not persuaded of Examiner error by Appellant’s argument that
the Examiner fails to establish a prima facie case rejection of patent-
ineligible subject matter under 35 U.S.C. § 101. Reply Br. 3^4. In this
regard, Appellant charges that the Examiner overgeneralizes the claims, fails
to support the rejection with analysis and support from case law precedent,
fails to consider the remaining claim elements not identified in step one of
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the rejection, and fails to articulate the reasoning for the rejection with
sufficient clarity and specificity. Id.
Yet the Federal Circuit has repeatedly noted that “the prima facie case
is merely a procedural device that enables an appropriate shift of the burden
of production.” Hyatt v. Dudas, 492 F.3d. 1365, 1369 (Fed. Cir. 2007)
(citing In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992)). The court has,
thus, held that the USPTO carries its procedural burden of establishing a
prima facie case when its rejection satisfies the requirements of 35 U.S.C.
§ 132 by notifying the applicant of the reasons for rejection, “together with
such information and references as may be useful in judging of the propriety
of continuing the prosecution of [the] application.” See In re Jung, 637 F.3d
1356, 1362 (Fed. Cir. 2011). Thus, all that is required of the Office is that it
set forth the statutory basis of the rejection, and the reference or references
relied on, in a sufficiently articulate and informative manner as to meet the
notice requirement of § 132. Id.', see also Chester v. Miller, 906 F.2d 1574,
1578 (Fed. Cir. 1990) (Section 132 “is violated when a rejection is so
uninformative that it prevents the applicant from recognizing and seeking to
counter the grounds for rejection.”).
Here, in rejecting the pending claims under § 101, the Examiner
analyzed the claims in accordance with the Mayo!Alice two-step framework.
Specifically, the Examiner notified Appellant that independent claims 1,19,
and 38 and their dependents are directed to “providing promotional content
based on search requests from mobile devices,” which the Examiner
characterizes as a fundamental economic practice, and a method of
organizing human activities, i.e., abstract ideas. Ans. 3^4. The Examiner
finds that the additional elements or combination of elements are not
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sufficient to amount to significantly more than the abstract idea because the
claims merely amount to an application of the abstract idea. Id. at 4—6. In
particular, the Examiner finds that the elements, when taken alone, “each
execute in a manner routinely and conventionally expected of these
elements,” and, when taken as a combination, “do not offer substantially
more than the sum of the functions of the elements when each is taken
alone.” Id. at 5. The Examiner determines that the claims “Jo not effect an
improvement to another technology or technical field” or “an improvement
to the functionins of a computer itself” and merely ‘link fl the use of an
abstract idea to a varticular environment.” Id. And the Examiner
concludes that the claims merely amount to applying the abstract idea on a
computer, requiring no more than a generic computer system. The
Examiner, thus, notified Appellant of the reasons for the rejection “together
with such information and references as may be useful in judging of the
propriety of continuing the prosecution of [the] application.” 35 U.S.C.
§132. And we find that, in doing so, the Examiner set forth a proper
rejection under § 101 such that the burden then shifted to Appellant to
demonstrate that the claims are patent-eligible.
Addressing the first step of the Mayo!Alice framework, Appellant
argues that the claims are directed to “a unique method for selecting
promotional content and reformatting it for delivery to a mobile device,” and
not to “the execution of a basic financial concept.” Reply Br. 5. Appellant
asserts that the Specification indicates that the invention provides a
“technical advantage,” because “mobile media is limited by screen size and
other qualities, and thus search functionality is not easily converted onto
mobile devices,” and that operations include “the removal [of] certain
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content that is inappropriate for inclusion in a text message and/or
replacement or reformatting of some or all of the promotional content with
corresponding text.” Id. (citing Spec. 16, 38).
Yet, the relevant question is whether the claims as a whole “focus on a
specific means or method that improves the relevant technology,” or instead
are “directed to a result or effect that itself is the abstract idea and merely
invoke generic processes and machinery.” McRO, Inc. v. Bandai Namco
Games Am. Inc., 837 F.3d 1299, 1314 (Fed. Cir. 2016), citing Enfish, LLCv.
Microsoft Corp., 822 F.3d 1327, 1336 (Fed. Cir. 2016). Here, we find no
such technological advance or improvement to technology.
Claim 1, for example, recites four steps for identifying promotional
content for delivery to a mobile device. The steps include: (1) receiving a
request from a mobile device for a promotional content item; (2) searching
one or more promotional content inventories including promotional content
configured for delivery via the Internet, (3) selecting from the promotional
content items identified as a result of the search a first promotional content
item determined to include a selectable element enabling the mobile device
to immediately purchase an item advertised by the first promotional content,
and (4) reformatting the first promotional content item for delivery to the
mobile device.
Appellant’s Specification describes a need for advertisers to reach
potential customers via the next new channel, namely, mobile marketing.
Spec. 14. Having existing Internet-based advertising inventory made
available for mobile subscribers would be a “significant revenue
contributor.” Id. 115. Put simply, the Specification describes a business
need to extend Internet-based advertisting to mobile devices. The claimed
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invention thus converts existing, Internet-based advertising inventory into
messages including text and/or multimedia objects for delivery to mobile
service subscribers. Id. 1117, 33. To achieve this conversion, the
Specification describes in generic terms “remov[ing] certain content that is
inappropriate for inclusion in a text message and/or replacement or
reformatting of some or all of the promotional content with corresponding
text” to facilitate delivery of the Internet-based advertisement to a mobile
device. Id. 138.
Considered in light of the Specification, the heart of the invention
addresses a business need (i.e., extending delivery of existing Internet-based
advertising to mobile service subscribers), and not to any claimed specific
means for accomplishing this goal that improves technology. It follows
from case law precedent, and Ultramercial Inc. v. Hulu, LLC, 772 F.3d 709
(Fed. Cir. 2014) in particular, that the claims, considered as a whole and in
light of the Specification, are directed to an abstract idea.
In Ultramercial, the patentee argued that its claims were “directed to a
specific method of advertising and content distribution that was previously
unknown and never employed on the Internet before.” Ultramercial,
772 F.3d at 714. But the court rejected this argument, finding that “the
majority of the limitations describes only the abstract idea of showing an
advertisement before delivering free content.” Id. at 715. The court
acknowledged that the claim contained “certain additional limitations” that
“add a degree of particularity,” but deferred consideration of “any novelty in
implementation of the idea” as a factor to be considered in the second step in
the analysis. Id.
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Applying step two of the Mayo/Alice framework, the Ultramercial
court found that none of the eleven claimed steps, viewed both individually
and as an ordered combination, transformed the nature of the claim into
patent-eligible subject matter. Ultramercial, 772 F.3d at 715. Particularly,
the court found that the additional steps (e.g., updating an activity log,
requiring a request to view the ad, restricting public access, and using the
Internet) were routine or conventional steps insufficient to supply the
requisite inventive concept. Id. at 716. The court determined, for example,
that restricting public access represents insignificant, pre-solution activity.
Id. The court further determined that limiting the use of the abstract idea to
a particular technological environment (i.e., the Internet) was insufficient to
save the claim. Id.
Like the claims in Ultramercial, the majority of the limitations of
claim 1 describe only the abstract idea of identifying promotional content for
delivery. For example, steps (1)—(3) (i.e., receiving, searching, and
selecting) relate to the concept of identifying promotional content for
delivery. Appellant cannot reasonably deny that identifying promotional
content for delivery to a potential customer, i.e., targeted advertising, is an
age-old and ubiquitous economic practice and, thus, an abstract idea.
Moreover, Appellant cannot reasonably deny, and does not deny, that
identifying promotional content for delivery also can be properly
characterized as an abstract idea relating to a method of organizing human
activities. See Ans. 3^4 (identifying claims as directed to an abstract method
of organizing human activities). Although our articulation of the concept to
which the claims are directed may differ from that articulated by the
Examiner, any such difference only relates to the level of abstraction. See
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Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1240—1241 (Fed. Cir. 2016)
(“An abstract idea can generally be described at different levels of
abstraction.”).
We agree with the Examiner that the additional claim elements, when
viewed individually and as an ordered combination, are insufficient to
transform the abstract idea into patent-eligible subject matter. Claim 1, for
example, further recites that the step of selecting includes determining that
the promotional content item includes a “selectable element” enabling the
mobile device to immediately purchase an item advertised by the
promotional content item. But there is no indication in the Specification, nor
does Appellant argue, that this step is anything more than a routine or
conventional step. See, e.g., Spec. 137 (“Additionally, the resulting
promotional content may be further filtered based on a mobile subscriber’s
ability to immediately access the special offers. Thus, for example,
promotional content may be ordered first if they have click-to-buy or click-
to-call functionality.”).
Claim 1 also additionally recites reformatting the promotional content
item “for delivery to the mobile device in one or more messages including at
least one of text and multimedia objects.” Appellant argues that “a mobile
device may not be capable of receiving promotional content that is
configured for delivery via the Internet,” and “concerns such as bandwidth
and data usage can make [promotional content configured for the Internet]
less appealing to an advertiser or a network operator [for delivery to a
mobile device].” Reply Br. 7; see also id. at 5 (the claimed solution
provides a “technical advantage” because mobile media is limited by screen
size and other qualities). Yet Appellant does not claim to have invented the
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technique of reformatting, nor for that matter does Appellant claim to have
invented any advances in reformatting technology.
Here, the claimed “reformatting” broadly and generically focuses on
the result of the reformatting (e.g., for delivery to the mobile device” in a
message having text and/or multimedia objects), and not on any innovative
technique or technology required to execute the step. See Elec. Power Grp.,
LLC v. Alstom S.A., 830 F.3d 1350, 1355 (2016) (“[ijnquiry must turn to any
requirements for how the desired result is achieved.”). The claimed
reformatting lacks any details regarding how the claimed reformatting is
achieved and, as such, covers any known technology for reformatting.
Similarly, the Specification also lacks details indicating that reformatting
requires anything more than conventional, generic functionality. See Spec.
138 (“Operations performed at 225 may include the removal certain [sic]
content that is inappropriate for inclusion in a text message and/or
replacement or reformatting of some or all of the promotional content with
corresponding text.”); see also Elec. Power Grp., 830 F.3d at 1356 (“the
essentially result-focused functional character of claim language has been a
frequent feature of claims held ineligible under § 101”). Thus, similar to the
situation in Ultramercial, here, the claimed reformatting merely limits the
use of the abstract idea to a particular technological environment (i.e.,
mobile devices), which is insufficient to save the claim.
Appellant additionally argues that “the claims recite substantial
features that particularly define the manner in which promotional content is
searched, selected, and reformatted to facilitate delivery to a mobile device.”
Reply Br. 7. But that the claims are “particularly defined” make them no
less abstract. Appellant contends that the claims search promotional content
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inventory that is configured for delivery via the Internet, thereby
“increasing] the scope of available promotional content but can present
issues with respect to a mobile device.” Id. Yet this feature relates to the
business need addressed by the invention. Appellant asserts that mobile
devices may be unable to receive the content configured for the Internet, or
may find such content unappealing due to bandwidth and data usage
concerns associated with the mobile device. Id. Yet, as described above,
Appellant does not establish that the claimed reformatting, whether
considered alone or as an ordered combination, transforms the nature of
claim 1 into a patent-eligible application.
We are not persuaded by Appellant’s argument regarding preemption.
See Reply Br. 7—8. There is no dispute that the Supreme Court has
described “the concern that drives this exclusionary principle [i.e., the
exclusion of abstract ideas from patent eligible subject matter] as one of pre­
emption.” Alice Corp., 134 S. Ct. at 2354. But characterizing pre-emption
as a driving concern for patent eligibility is not the same as characterizing
pre-emption as the sole test for patent eligibility. “The Supreme Court has
made clear that the principle of preemption is the basis for the judicial
exceptions to patentability” and “[f]or this reason, questions on preemption
are inherent in and resolved by the § 101 analysis.” Ariosa Diagnostics, Inc.
v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015) (citing Alice Corp.,
134 S. Ct. at 2354). Yet, although “preemption may signal patent ineligible
subject matter, the absence of complete preemption does not demonstrate
patent eligibility.” Id.
No technological advance is evident in the present invention. Claim 1
does not resolve any problem particular to computer networks and/or the
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Internet. Instead, claim 1 merely employs generic computer components to
perform generic computer functions, i.e., receiving and processing
information, to solve a business need. See Elec. Power Grp., 830 F.3d at
1355 (“Nothing in the claims, understood in light of the specification,
requires anything other than off-the-shelf, conventional computer, network,
and display technology for gathering, sending, and presenting the desired
information”).
In view of the foregoing, we sustain the Examiner’s rejection of
claim 1 under 35 U.S.C. § 101. We also sustain the Examiner’s rejection of
claims 2—36 and 38, which fall with claim 1, under 35 U.S.C. § 101.
Obviousness
Independent Claim 1 and Dependent Claims 2, 4—8, and 13—18
We are persuaded by Appellant’s argument that the Examiner erred in
rejecting independent claim 1 because Lang fails to disclose or suggest
“selecting . . . from the promotional content items identified as a result of the
search, a first promotional content item determined to include a selectable
element enabling the mobile device to immediately purchase an item
advertised by the first promotional content item,” as recited in claim 1. App.
Br. 6—8. The Examiner relies on paragraphs 14 and 41 as disclosing the
argued limitation. See Ans. 7. Yet we see nothing in the cited portions that
teaches or suggests the argued limitation.
Lang is directed to a method and system for electronic coupons
offered by businesses via the wireless devices operated by potential
customers in a region. Lang Abstract. Lang’s system allows potential
customers having a wireless communication device to identify coupons in a
selected region that are associated with a category of goods or services of
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interest to the customer. Id. 137; see also id. ]Hf 14, 41. Coupons are
distributed to the customer’s wireless communication device from a central
server. Id. 137. The coupons are stored on the wireless device in an
inactive or active status. Id. An active coupon may be presented to a
business and redeemed. Id. Specifically, the potential customer presents the
activated coupon stored on the wireless communication device to a business
representative, and the business representative reviews the coupon and, if
necessary, records the coupon’s serial number. Id. 121.
The Examiner finds that Lang at paragraphs 14 and 42 describes
“immediate purchasing based on customer searches of available coupons[,]
and the customer being able to refine the search for coupons of immediate
interest,” which the Examiner equates to the step of “selecting,” as recited in
claim 1. Final Act. 5. The difficulty with the Examiner’s analysis is that
Lang’s coupon does not include a selectable element enabling the mobile
device to immediately purchase an item advertised by the coupon, as called
for in the argued claim limitation. Instead, Lang teaches that the customer
redeems the coupon by first displaying the coupon on the mobile device, and
then presenting the coupon to the business representative. Lang 121.
In view of the foregoing, we do not sustain the Examiner’s rejection
of independent claims 1 and dependent claims 2, 4—8, and 13—18 under 35
U.S.C. § 103(a).
Independent Claims 19 and 38, and Dependent Claim 20, 22—26, and 31—36
Claims 19 and 38 includes language substantially similar to the
language of claim 1, and stands rejected under the same reasoning as applied
to claim 1. See Final Act. 20—21, 24. Therefore, we do not sustain the
Examiner’s rejection of claims 19 and 38, and dependent claims 10, 22—26,
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and 31—36 under 35 U.S.C. § 103(a) for the same reasons set forth above
with respect to claim 1.
Dependent Claims 3, 9—12, 21, and 27—30
Each of claims 3, 9-12, 21, and 27—30 depends, directly or indirectly,
from one of independent claims 1 and 19. The rejections of these dependent
claims do not cure the deficiencies in the rejections of independent claims 1
and 19. Therefore, we do not sustain the Examiner’s rejections of claims 3,
9—12, 21, and 27—30 under 35 U.S.C. § 103(a) for the same reasons set forth
above with respect to independent claims 1 and 19.
DECISION
The Examiner’s rejection of claims 1—36 and 38 under 35 U.S.C.
§ 101 is affirmed.
The Examiner’s rejections of claims 1—36 and 38 under 35 U.S.C.
§ 103(a) are reversed.
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).
AFFIRMED
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