Ex Parte Alves

Patent Trial and Appeal Board

Sep 18, 2017

13789317 (P.T.A.B. Sep. 18, 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.
13/789,317 03/07/2013 Michael ALVES TUP12935 2934
62439 7590
SINORICA, LLC
20251 Century Blvd.
Suite 140
Germantown, MD 20874
09/20/2017 EXAMINER
ELCHANTI, TAREK
ART UNIT PAPER NUMBER
3621
NOTIFICATION DATE DELIVERY MODE
09/20/2017 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):
SINORICA@GMAIL.COM
sinorica@outlook.com
pair @ sinorica.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MICHAEL ALVES
Appeal 2016-0031211
Application 13/789,3172
Technology Center 3600
Before JOSEPH A. FISCHETTI, MICHAEL C. ASTORINO, and
MATTHEW S. MEYERS, Administrative Patent Judges.
MEYERS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
Non-Final Rejection of claims 1, 4, 8, 11, 12, 14, 17, and 19. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 Our decision references Appellant’s Appeal Brief (“Br.,” filed
June 4, 2015) and Amended Appeal Brief (filed August 19, 2015),
Examiner’s Answer (“Ans.,” mailed January 4, 2016), and Non-Final Office
Action (“Non-Final Act.,” mailed December 5, 2014).
2 Appellant identifies “Applicant, Michaels ALVES” as the real party in
interest (Br. 2).
Appeal 2016-003121
Application 13/789,317
CLAIMED INVENTION
Appellant’s claims relate “to a method for improving visibility of text
advertisements on internet web pages” (Spec. 1,11. 7—8).
Claims 1,11, and 17 are independent claims on appeal. Claim 1,
reproduced below, is illustrative of the subject matter on appeal:
1. A non-transitory computer-readable medium that
stores instructions executable by one or more processors to
perform a method of improving internet text advertisement
visibility, the method comprises:
instructions for providing a web page;
instructions for providing a plurality of text
advertisements, wherein each of the plurality of text
advertisements includes at least one text element;
instructions for assigning a first index value to each of the
plurality of text advertisements;
instructions for specifying a first selection value in order
to choose the at least one specific advertisement from the
plurality of text advertisements;
instructions for selecting the at least one specific
advertisement from the plurality of text advertisements by
comparing the first selection value to the first index value of each
of the plurality of text advertisements, wherein the first index
value of the at least one specific advertisement is equal to the
first selection value;
instructions for selecting at least one specific
advertisement from the plurality of text advertisements, wherein
the plurality of text advertisements includes the at least one
specific advertisement and other advertisements;
instructions for assigning a second index value to each of
the at least one text element of the at least one specific
advertisement;
instructions for specifying a second selection value in
order to choose the specific element from the at least one text
element;
instructions for designating the specific element from the
at least one text element by comparing the second selection value
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to the second index value of each of the at least one text element,
wherein the second index value of the specific element is equal
to the second selection value;
instructions for designating a highlight color for the
specific element, wherein the highlight color is chosen
pseudorandomly;
instructions for initially displaying the plurality of text
advertisements in the standard color upon loading the web page;
instructions for gradually changing the specific element
from the standard color to the highlight color;
instructions for the first selection value and the second
selection value being pseudorandomly generated numbers;
instructions for selecting the highlight color from a
predetermined list of preferred highlight colors[;]
instructions for making a part of said at least one specific
advertisement dynamically highlighted and another part of said
at least one specific advertisement statically highlighted at a
same time.
REJECTIONS
Claims 1, 4, 8, 11, 12, 14, 17, and 19 are rejected under 35 U.S.C.
§ 101 as directed to non-statutory subject matter.
Claims 1, 4, 8, 11, 12, 14, 17, and 19 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Bern (US 2005/0080772 Al, pub. Apr. 14,
2005), Nong (US 2007/0192164 Al, pub. Aug. 16, 2007), Borst (US
2011/0078030 Al, pub. Mar. 31, 2011), Axe (US 2013/0024283 Al, pub.
Jan. 24, 2013), Javascript Tutor —Lesson 13, http://web.archive.org/web/
20041231105905/http://rainbow.arch.scriptmania.com/scripts/color
change.html (last visited June 19, 2013) (hereinafter “Rainbow Arch”), and
JavaScriptKit, Sorting an array of objects, http://web.archive.org/web/
20120215090914/http ://www.j avascriptkit. com/j avatutors/arraysort2. shtml
(last visited Oct. 23, 2013) (hereinafter “Javascriptkif’).
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ANALYSIS
Non-statutory subject matter
Appellant argues the claims as a group. See Br. 4—5. We select
independent claim 1 as representative. Claims 4, 8, 11, 12, 14, 17, and 19
stand or fall with independent claim 1. See 37 C.F.R. § 41.37(c)(l)(iv).
In rejecting claim 1 as being directed to an abstract idea, the Examiner
finds “the claims are directed towards a method for improving internet text
advertisement visibility highlights text advertisements on a web page in
order to attract a viewer’s attention to the advertisement” (Non-Final Act. 2).
The Examiner further finds that a “[mjethod for improving internet text
advertisement visibility is a fundamental economic practice and thus, the
claims include an abstract idea” (id.).
Appellant argues that the Examiner improperly rejected claim 1 as
being directed to non-statutory subject matter because “a process (method) is
. . . statutory subject matter” (Br. 4—5). More particularly, Appellant argues
that
The Examiner admitted that the present invention is directed
towards a method (process) for improving internet text
advertisement visibility highlights text advertisement on a web
page in order to attract a viewer’s attention to the advertisement.
But failed to explain why a method, namely a process, is a non-
statutory subject matter, because the Law clearly says that
“[wjhoever invents or discovers any new and useful process,
machine, manufacture, or composition of matter, or any new and
useful improvement thereof, may obtain a patent therefor, subject
to the conditions and requirements of this title.”
(Br. 4). Appellant’s argument is not persuasive.
Although we agree with Appellant that an invention is patent-eligible
if it claims a “new and useful process, machine, manufacture, or
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composition of matter” (35 U.S.C. § 101) and independent claim 1 is
directed to a process or more particularly, to an article of manufacture, the
Supreme Court has long interpreted § 101 to include implicit exceptions:
“[l]aws of nature, natural phenomena, and abstract ideas” are not patentable.
See, e.g., Alice Corp. Pty. Ltd. v. CLSBankInt’l, 134 S. Ct. 2347, 2354
(2014). And, in determining whether independent claim 1 falls within the
excluded category of abstract ideas, we are guided in our analysis by the
Supreme Court’s two-step framework, described in Mayo and Alice. Id. at
2355 (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct.
1289, 1296-97 (2012)).
In accordance with that framework, we first must determine whether
the claim is “directed to” a patent-ineligible abstract idea. If so, we then
consider the elements of the claim — both individually and as an ordered
combination — to assess whether the additional elements transform the
nature of the claim into a patent-eligible application of the abstract idea. Id.
This is a search for an “inventive concept” — an element or combination of
elements sufficient to ensure that the claim amounts to “significantly more”
than the abstract idea itself. Id.
Here, we agree with the Examiner that claim 1 is directed generally
“towards a method for improving internet text advertisement visibility
highlights text advertisements on a web page in order to attract a viewer’s
attention to the advertisement” (Non-Final Act. 2), and is similar to certain
fundamental economic and conventional business practices similar that our
reviewing courts have found patent ineligible held certain fundamental
economic and conventional business practices, such as tailoring information
presented to a user based on particular information (see Intellectual Ventures
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ILLCv. Capital One Bank (USA), 792 F.3d 1363, 1370 (Fed. Cir. 2015)),
intermediated settlement {see Alice, 134 S. Ct. at 2356—57), using
advertisement as currency (see Ultramercial, Inc. v. Hulu, LLC, 772 F.3d
709, 713 (Fed. Cir. 2014)). Thus, independent claim 1 directed to a patent-
ineligible abstract idea.
Appellant argues that “the current invention is tied in with the
computer technology” (Br. 5 (emphasis omitted)) because it is “directed] to
improvements of text visibility on a web page” {id. (emphasis omitted)).
However, nothing in claim 1 purports to improve computer functioning or
“effect an improvement in any other technology or technical field.” Alice,
134 S. Ct. at 2359. Nor do the claims solve a problem unique to the Internet,
because improving advertisement visibility is relevant in traditional
advertising. See DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245,
1257 (Fed. Cir. 2014).
We next consider whether additional elements transform the nature of
the claim into a patent-eligible application of the abstract idea, e.g., whether
the claim does more than simply instruct the practitioner to implement the
abstract idea on generic computer components. Here, we agree with the
Examiner that claim 1 includes “limitations [that] are merely instructions to
implement the abstract idea on a computer and require no more than a
generic computer to perform generic computer functions that are well-
understood, routine and conventional activities previously known to the
industry” (Non-Final Act. 3; see also Spec. 4,11. 3—11). Thus, we find
independent claim 1 is directed to an abstract idea without some element or
combination of elements sufficient to ensure that the claim in practice
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amounts to significantly more than the abstract idea itself, and as such, is not
patent-eligible under § 101.
In view of the foregoing, we sustain the Examiner’s rejection under
35 U.S.C. § 101 of independent claim 1, and claims 4, 8, 11, 12, 14, 17, and
19, which fall with independent claim 1.
Obviousness
We are persuaded the Examiner erred in finding that Nong, upon
which the Examiner relies, discloses or suggests “instructions for making a
part of said at least one specific advertisement dynamically highlighted and
another part of said at least one specific advertisement statically highlighted
at a same time,” as recited by independent claim 1, and similarly recited by
independent claims 11 and 17 (Br. 5—7).
The Examiner maintains the rejection is proper, and relies on
paragraphs 25, 26, and 47, as disclosing the argued limitation (see Non-Final
Act. 5—6; see also Ans. 3—4). The Examiner also finds
[i]t would have been obvious for someone skilled in the art at the
time of the invention to make a part of said at least one specific
advertisement dynamically highlighted and another part of said
at least one specific advertisement statically highlighted; because
doing so will help in attracting a viewer’s attention and make
more users to click on an advertisement.
(Non-Final Act. 6). We cannot agree.
In making this determination, we note that Nong is directed to
“an advertisement-generation system generates image-containing
advertisements” (Nong 14). Nong discloses that its “system automatically
generates image-containing advertisements that contain one or more
suggested colors that are automatically suggested based on one or more
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colors present on a web page that will host the image-containing
advertisement” (id.). More particularly, Nong discloses that its system
may be used for providing suggested images for contextual
image-containing advertisements. Automatically generated
image-containing advertisements, which contain harmonious
colors capable of automatically adapting to the colors of hosting
contextual web pages, may be generated based on one or more
of: at least one feature-selection guideline for image-containing
advertisements, an image-clip library, and at least one image-
containing-advertisement template.
(Id. 125). Nong further discloses “a color-theme adaptor”
may be used to adaptively change the colors of an image-
containing advertisement so that those colors will be harmonious
with one or more colors of a web page that is hosting the image-
containing advertisement. For example, a foreground color (e.g.,
in an image-containing advertisement) may be changed when a
legibility conflict (or any other type of incompatibility) is
detected between a displayed background color (e.g., of a hosting
page and/or a background color of an image-containing
advertisement) and a displayed foreground color.
(Id. 147).
We have reviewed the cited portions of Nong and agree with
Appellant that none of the cited portions of Nong discloses or suggests the
argued limitation. In particular, we fail to see, and the Examiner does not
adequately explain how, Nong’s disclosure regarding its “color-theme
adaptor” which “adaptively change[s] the colors of an image-containing
advertisement so that those colors will be harmonious with one or more
colors of a web page that is hosting the image-containing advertisement”
discloses or suggests “the specifically claimed ‘dynamically highlighted and
another part of said at least one specific advertisement statically highlighted
at a same time’” (Br. 6—7).
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In response to Appellant’s arguments, the Examiner states
“first part can be the dynamically color which can be the colors
of the advertisement that are harmonious with one or more colors
and changes depending on the background.” For the second part
of the advertisement which is the static color, the background is
the static color for the advertisement “one or more colors of a
web page that is hosting the image-containing advertisement”
and is doing both process at the same time “colors will be
harmonious with one or more colors of a web page that is hosting
the image-containing advertisement.
(Ans. 3—4). However, we agree with Appellant that Nong does not disclose
or suggest the argued limitation. Instead, Nong discloses “chang[ing] the
colors of an image-containing advertisement so that those colors will be
harmonious with one or more colors of a web page that is hosting the image-
containing advertisement” (Nong 147), which is not the same as “making a
part of said at least one specific advertisement dynamically highlighted and
another part of said at least one specific advertisement statically highlighted
at a same time,” as independent claims 1,11, and 17 require.
In view of the foregoing, we do not sustain the Examiner’s rejection
of independent claims 1,11, and 17 under 35 U.S.C. § 103(a). For the same
reasons, we also do not sustain the Examiner’s rejection of claims 4, 8, 12,
14, and 19, which depend therefrom.
DECISION
The Examiner’s rejection of claims 1, 4, 8, 11, 12, 14, 17, and 19
under 35 U.S.C. § 101 is affirmed.
The Examiner’s rejection of claims 1, 4, 8, 11, 12, 14, 17, and 19
under 35 U.S.C. § 103(a) is reversed.
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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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