Ex Parte ALTBERG et al

Patent Trial and Appeal Board

Oct 25, 2018

11737975 (P.T.A.B. Oct. 25, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
11/737,975 04/20/2007
22807 7590 10/29/2018
GREENSFELDER HEMKER & GALE PC
SUITE 2000
10 SOUTH BROADWAY
ST LOUIS, MO 63102
FIRST NAMED INVENTOR
Ebbe ALTBERG
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
055900/469270 6614
EXAMINER
ALVAREZ, RAQUEL
ART UNIT PAPER NUMBER
3688
NOTIFICATION DATE DELIVERY MODE
10/29/2018 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):
ipdocket@greensfelder.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte EBBE ALTBERG, SCOTT FABER, RON HIRSON,
BEN HARRIS LYON, PAUL G. MANCA,
SEAN VAN DER LINDEN, and
VIRGINIA HONG-JIA YANG
Appeal2017-009663
Application 11/737 ,975
Technology Center 3600
Before: ST. JOHN COURTENAY III, LARRY HUME, and
JOYCE CRAIG, Administrative Patent Judges.
COURTENAY, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 appeal under 35 U.S.C. § 134(a) from a non-final
rejection of claims 1-3, 5-8, and 10-19. Claims 4, 9, and 20 are cancelled.
We have jurisdiction over the pending claims under 35 U.S.C. § 6(b ).
We Affirm.
1 According to Appellants, the real party in interest is Y ellowpages.com.
App. Br. 2.
Appeal2017-009663
Application 11/737,975
STATEMENT OF THE CASE
Introduction
Appellants' invention generally relates to "connecting people via
virtual reality for real time communications." (Spec. ,r 1 ).
Exemplary Claim
1. A method, comprising:
receiving, by a connection server system from a virtual
reality server, information regarding a context of an advertising
opportunity in a virtual reality world, wherein (a) the virtual
reality world provides a customer with immersion in,
navigation in, and manipulation of at least one of a character or
an object in the virtual reality world, (b) a virtual object of an
advertiser senses the surrounding conditions in the virtual
reality world, and ( c) the context comprises interaction of a
customer avatar of the customer with the virtual object of the
advertiser;
selecting, by the connection server system, an
advertisement for the advertiser based on the context, wherein
the advertisement is one of a plurality of advertisements pre-
associated with the virtual object in a database of the virtual
reality server;
identifying, by the connection server system, an
availability of the advertiser to communicate with the customer
via a real time communications session based at least in part on
a virtual location in the virtual reality world of an advertiser
avatar of the advertiser;
assigning, by the connection server system, a reference to
the advertisement, wherein the reference (a) comprises one
selected from the group consisting of a telephone number of a
connection provider without an extension, a telephone number
with an extension of the connection provider, a session
initiation protocol uniform resource identifier, and a voice over
Internet protocol user identifier, and (b) is used to request
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connection of a real time communications session with the
advertiser;
embedding the reference in the advertisement;
causing, by the connection server system via the virtual
reality server, presentation of the advertisement comprising the
embedded reference in the virtual reality world, wherein the
advertisement indicates the availability of the advertiser to
communicate with the customer via a real time
communications session;
receiving, by the connection server system, a request for
connection of a real time communications session via the
reference embedded in the advertisement;
in response to the request for connection of a real time
communications session, connecting, by the connection server
system, the customer to the advertiser via a real time
communications session; and
charging the advertiser, by the connection server system,
an advertisement fee based on the connecting of the customer
and the advertiser for the real time communications session via
the reference embedded in the advertisement.
App. Br. 31-33, Claims App'x.
Rejection
Claims 1-3, 5-8, and 10-19 are rejected under 35 U.S.C. § 101 as
being directed to patent-ineligible subject matter. Non-Final Act. 2.
Issue on Appeal
Did the Examiner err in rejecting claims 1-3, 5-8, and 10-19 under
35 U.S.C. § 101 as being directed to a judicial exception, without
significantly more?
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ANALYSIS
We have considered all of Appellants' arguments and any evidence
presented. To the extent Appellants have not advanced separate, substantive
arguments for particular claims, or other issues, such arguments are waived.
See 37 C.F.R. § 4I.37(c)(l)(iv). We highlight and address specific findings
and arguments for emphasis in our analysis below.
Mayo/Alice Analysis under 35 USC§ 101
Under 35 U.S.C. § 101, a patent may be obtained for "any new and
useful process, machine, manufacture, or composition of matter, or any new
and useful improvement thereof." The Supreme Court has "long held that
this provision contains an important implicit exception: Laws of nature,
natural phenomena, and abstract ideas are not patentable." Alice Corp. Pty.
Ltd. v. CLSBankint'l, 134 S. Ct. 2347, 2354 (2014) (quotingAss'nfor
Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 589 (2013)).
The Supreme Court in Alice reiterated the two-step framework previously
set forth in Mayo Collaborative Services v. Prometheus Laboratories, Inc.,
566 U.S. 66, 82-84 (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, 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, such as an
abstract idea. Abstract ideas may include, but are not limited to,
fundamental economic practices, methods of organizing human activities, an
idea of itself, and mathematical formulas or relationships. Id. at 2355-57.
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If the claims are not directed to a patent-ineligible concept, the inquiry
ends. See Visual Memory LLC v. NVIDIA Corp., 867 F.3d 1253, 1262 (Fed.
Cir. 2017).
Otherwise, the inquiry proceeds to the second step in which the
elements of the claims are considered "individually and 'as an ordered
combination' to determine whether the additional elements 'transform the
nature of the claim' into a patent-eligible application." Alice, 134 S. Ct. at
2355 (quoting Mayo, 566 U.S. at 79, 78). We consider the question of
whether the claims are directed to a specific improvement in the capabilities
of the computing devices, or, instead, "a process that qualifies as an 'abstract
idea' for which computers are invoked merely as a tool." Enfzsh, LLC v.
Microsoft Corp., 822 F.3d 1327, 1336 (Fed. Cir. 2016).
We, therefore, decide under step two whether the claims: (a) set forth
an inventive concept that provides a specific means or method that improves
the relevant technology, or (b) are directed to a result or effect that itself is
the abstract idea, in which the claims merely invoke generic processes and
machinery. See Enfzsh, 822 F.3d at 1336.
The Examiner's Rejection under 35 US.C. § 101
Regarding the first step of the Alice/Mayo analysis, the Examiner
concludes claims 1-3, 5-8, and 10-19 are directed to an abstract idea,
because: 2
2 "Patent eligibility under§ 101 presents an issue of law .... " Accenture
Glob. Servs., GmbH v. Guidewire Software, Inc., 728 F.3d 1336, 1340 (Fed.
Cir. 2013).
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[P]resenting advertisements based on the availability of the
advertiser to communicate with the customer [is an abstract
idea]. The limitations that set forth the abstract idea are:
receiving, identifying, assigning, causing and charging the
advertiser based on connecting the customer to the advertiser.
In other words, the claim describes collecting and comparing
known information.
Non-Final Act. 2.
The Examiner additionally notes that collecting and comparing known
information is an abstract idea, similar to (the '283) claim in Classen. 3 The
Examiner thus concludes: "Similarly, [ c ]laim 1 discloses receiving
information regarding a context; receiving a request for connection (i.e.
collecting information) and identifying an availability of the advertise[r] to
communicate with the customer; causing presentation of the advertisement
and billing the advertiser based on the connecting of the customer and the
advertiser (i.e. comparing known information)." Id. at 2-3.
Regarding the second step of the Mayo/Alice analysis, the
Examiner concludes:
The additional elements of using a connection server system,
manipulation of a character in the virtual reality world, a
telephone, a session initiation protocol resource identifier and
Voice over Internet protocol in independent claim 1 [are] not
enough to qualify as "significantly more" than the abstract idea
itself, since the claims are mere instruction[ s] to apply the
abstract idea because they are routine in any computer
implementation (i.e. receiving, manipulating, selecting,
identifying, assigning and charging). Under Alice, that is not
3 The Examiner is referring to Classen Immunotherapies, Inc. v. Biogen
IDEC, 659 F.3d 1057, 1067---68 (Fed. Cir. 2011) ("Claim 1 of the '283
patent states the idea of collecting and comparing known information ... the
abstraction of the '283 claim is unrelieved by any movement from principle
to application.") ( emphasis added).
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sufficient "to transform an abstract idea into a patent eligible
invention" Id. See July 2015 Update to the 2014 Interim
Guidance on Subject Matter Eligibility; Alice; Ultramercial;
buy SAFE, Inc. v. Google, Inc.; Cyberfone Systems, LLC v.
CNN Interactive Group, Inc.
Non-Final Act. 3.
For the aforementioned reasons, the Examiner concludes that all
claims 1-3, 5-8, and 10-19 on appeal are not patent eligible under 35 U.S.C.
§ 101.
Mayo/Alice Analysis - Step 1
Regarding Alice Step 1, Appellants contend the Examiner has not
considered each of the claims as a whole and has not provided a reasoned
rationale that the claims are directed to an abstract idea. App. Br. 7-11.
Appellants further contend: "[T]he Examiner must demonstrate why
Claims 1-3, 5-8, and 10-19 are so similar to a concept that a court has
identified as abstract that the court case necessarily controls the result.
However, the case referenced as being similar by the Examiner does not
support the Examiner's position." App. Br. 13. (underline in original
replaced with italics for emphasis).
In response, the Examiner further explains the basis for the rejection:
[T]he claims are directed to presenting advertisements based on
the availability of the advertiser to communicate with the
customer. This is similar to collecting information and
comparing known information as evidenced by Classen.
Similarly, claim 1 discloses receiving information regarding a
context; receiving a request for connection (i.e. collecting
information) and identifying an availability of the advertise to
communicate with the customer; causing presentation of the
advertisement and billing the advertiser based on the connecting
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of the customer and the advertiser (i.e. comparing known
information).
In addition, presenting advertisements based on
availability of the advertisers to communicate with the
customers, in that context, providing marketing
offers/advertisements is a fundamental economic and
conventional business practice. The courts have held certain
fundamental economic and conventional business practices.
Like advertisement and marketing in Ultramercial. The
presentment of advertisement of claim 1 is similar to
Ultramercial, and thus, claim 1 is directed to an abstract idea.
Ans. 2.
Applying the first step of the Mayo/Alice framework, we agree with
the Examiner that the claims are directed to an abstract idea, i.e., to
advertising - a conclusion fully consistent with the Specification, including
the claim language. 4 See Spec. ,r,r 12-14, 16-17. Tuxis Technologies, LLC
v. Amazon.com, Inc., No. CV 13-1771-RGA, 2014 WL 4382446, at *5 (D.
Del. Sept. 3, 2014) (Matching consumers with a given product or service
"has been practiced as long as markets have been in operation."). See also
Morsa v. Facebook, Inc., 77 F. Supp.3d 1007, 1013-14 (CD. Cal. 2014),
ajfd 622 F. App'x 915 (Fed. Cir. 2015) (concluding that targeted
advertising is an abstract idea).
4 During prosecution, claims must be given their broadest reasonable
interpretation when reading claim language in light of the specification as it
would be interpreted by one of ordinary skill in the art. In re Am. Acad. of
Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). Under this standard,
we interpret claim terms using "the broadest reasonable meaning of the
words in their ordinary usage as they would be understood by one of
ordinary skill in the art, taking into account whatever enlightenment by way
of definitions or otherwise that may be afforded by the written description
contained in the applicant's specification." In re Morris, 127 F.3d 1048,
1054 (Fed. Cir. 1997).
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Here, we find advertising is "a fundamental economic practice long
prevalent in our system of commerce" and "a building block of the modem
economy." Alice, 134 S. Ct. at 2356. The Federal Circuit has concluded
that various forms of advertising were directed to an abstract idea in at least
two precedential cases. Intellectual Ventures I LLC v. Capital One Bank
(USA), 792 F.3d 1363, 1370 (Fed. Cir. 2015) (tailoring of advertisements);
Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 714-15 (Fed. Cir. 2014)
("using advertising as an exchange or currency").
Additionally, the collection of information and analysis of information
( e.g., recognizing certain data within the dataset) are also abstract ideas.
Elec. Power, 830 F.3d at 1353. Similarly, "collecting, displaying, and
manipulating data" is an abstract idea. Intellectual Ventures I LLC v.
Capital One Fin. Corp., 850 F.3d 1332, 1340 (Fed. Cir. 2017); see also SAP
Am., Inc. v. InvestPic, LLC, 890 F.3d 1016, 1021 (Fed. Cir. 2018) ("merely
presenting the results of abstract processes of collecting and analyzing
information ... is abstract as an ancillary part of such collection and
analysis") ( quotations omitted).
Applying this guidance here, we agree with the Examiner (Non-Final
Act. 2) that Appellants' claimed method for "presenting advertisements
based on the availability of the advertiser to communicate with the
customer," is directed to a fundamental economic practice.
For at least these reasons, we conclude claims 1-3, 5-8, and 10-19
are directed to the abstract idea of a fundamental economic practice.
Mayo/Alice Analysis-Step 2
Because we conclude the claims are directed to an abstract idea for
essentially the same reasons articulated by the Examiner (Non-Final Act. 2;
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Ans. 2), we tum to the second part of the Alice/Mayo analysis. We analyze
the claims to determine if there are additional limitations that individually,
or as an ordered combination, ensure the claims amount to "significantly
more" than the abstract idea. Alice, 134 S. Ct. at 2357.
Regarding Alice Step 2, Appellants address the purported significantly
more limitations of the claims:
In the present application, Appellant respectfully submits that
Claims 1-3, 5-8, and 10-19 (1) include improvements to another
technology or technical field (i.e., virtual reality); (5) add a
specific limitation other than what is well-understood, routine
and conventional in the field, or add unconventional steps that
confine the claim to a particular useful application; and ( 6)
include meaningful limitations beyond generally linking the
user of an abstract idea to a particular technological
environment. In particular, Claims 1-3, 5-8, and 10-19 are
direct to virtual reality technologies.
App. Br. 21.
Regarding the use of the recited generic server computer system
( claim 1 ), the Supreme Court held "the mere recitation of a generic computer
cannot transform a patent-ineligible abstract idea into a patent-eligible
invention." Alice, 134 S. Ct. at 2358; see also Bascom Glob. Internet Servs.,
Inc. v. AT&T Mobility LLC, 827 F.3d 1341, 1348 (Fed. Cir. 2016) ("An
abstract idea on 'an Internet computer network' or on a generic computer is
still an abstract idea.").
Our reviewing court has "repeatedly held that such invocations of
computers and networks that are not even arguably inventive are
'insufficient to pass the test of an inventive concept in the application' of an
abstract idea." Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1355
(Fed. Cir. 2016) (internal citations omitted); see also Intellectual Ventures I
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LLC v. Capital One Fin. Corp., 850 F.3d 1332, 1341 (Fed. Cir. 2017)
("Rather, the claims recite both a generic computer element-a processor-
and a series of generic computer 'components' that merely restate their
individual functions . . . . That is to say, they merely describe the functions
of the abstract idea itself, without particularity. This is simply not enough
under step two.").
Moreover, we find Appellants' claim 1 that includes a database is
distinguished from the claims considered by the court in Enfzsh, 822 F.3d at
1336, because Appellants' method claim 1 is not directed to an improvement
in the database itself, such as a "self-referential table" that "is a specific type
of data structure designed to improve the way a computer stores and
retrieves data in memory." Enfzsh, 822 F.3d at 1339.
Because we find none of Appellants' claims are directed to an
improvement in the recited server system or database ( claim 1 ), we conclude
that none of the claim limitations, viewed both individually and as an
ordered combination, amount to significantly more than the judicial
exception in order to sufficiently transform the nature of the claims into
patent-eligible subject matter.
In light of the foregoing, we conclude, under the Mayo/Alice analyses,
that each of Appellants' claims 1-3, 5-8, and 10-19 considered as a whole,
is directed to a patent-ineligible abstract idea (under step one), and under
step two, does not recite something "significantly more" to transform the
nature of the claim into a patent-eligible application.
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Accordingly, for the reasons discussed above, we sustain the
Examiner's rejection under 35 U.S.C. § 101 of claims 1-3, 5-8, and 10-19,
as being directed to patent-ineligible subject matter. 5
CONCLUSION
The Examiner did not err in rejecting claims 1-3, 5-8, and 10-19
under 35 U.S.C. § 101, as being directed to patent-ineligible subject matter.
DECISION
We affirm the Examiner's decision rejecting claims 1-3, 5-8, and 10-
19 under 35 U.S.C. § 101.
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). See
37 C.F.R. § 4I.50(f).
AFFIRMED
5 To the extent Appellants have not advanced separate, substantive
arguments for particular claims, or other issues, such arguments are waived.
See 37 C.F.R. § 4I.37(c)(l)(iv).
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