Ex Parte Berry et al

Patent Trial and Appeal Board

Oct 23, 2018

14707440 (P.T.A.B. Oct. 23, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO.
14/707,440
127614 7590
Wong & Rees LLP
FILING DATE
05/08/2015
10/25/2018
4340 Stevens Creek Blvd.
Suite 106
San Jose, CA 95129
FIRST NAMED INVENTOR
Matthew G. Berry
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.
60097-1195 8093
EXAMINER
BRANDENBURG, WILLIAM A
ART UNIT PAPER NUMBER
3681
NOTIFICATION DATE DELIVERY MODE
10/25/2018 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):
docketing@wongrees.com
jyang@wongrees.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MATTHEW G. BERRY,
BENJAMIN J. WEINBERGER, SCHUYLER E. ECKSTROM,
and
ALBERT L. SEGARS 1
Appeal2017-003239
Application 14/707 ,440
Technology Center 3600
Before DENISE M. POTHIER, LARRY J. HUME, and JOYCE CRAIG,
Administrative Patent Judges.
HUME, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) of the Final
Rejection of claims 1-30, which are all claims pending in the application.
We have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM.
1 According to Appellants, the real party in interest is TiVo, Inc. App.
Br. 1.
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Application 14/707 ,440
STATEMENT OF THE CASE2
Related Case
An Appeal has been decided by the Board in related Application
Serial No. 12/624,987, Appeal No. 2017-002911 in which we affirmed the
rejection of all claims on appeal.
The Invention
Appellants' disclosed embodiments and claimed invention "relate[]
generally to targeted advertisements and, more particularly, to methods and
systems for delivering targeted advertisements in association with a video
program based on metadata associated with the video program." Spec. ,r 2.
Exemplary Claim
Claim 1, reproduced below, is representative of the subject matter on
appeal (emphasis added to contested prior-art limitations):
1. A method, comprising:
receiving end user characteristics metadata from a video
display device associated with an end user;
receiving a time-based metadata file providing time-
coded information associated with a video program, the time-
coded information being used to select advertisements for
presentment at specific time-code locations of the video
program;
[L 1] receiving in real-time, by an advertisement
placement system from the video display device, a current time-
2 Our decision relies upon Appellants' Appeal Brief ("App. Br.," filed
June 17, 2016); Reply Brief ("Reply Br.," filed Dec. 9, 2016); Examiner's
Answer ("Ans.," mailed Nov. 2, 2016); Final Office Action ("Final Act.,"
mailed Dec. 4, 2015); and the original Specification ("Spec.," filed
May 8, 2015).
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code location of the video program as the video program is
being viewed on the video display device by the end user;
[L2] selecting in real-time, an advertisement based on
the end user characteristics metadata, the time-based metadata
file, and the current time-code location as the video program is
being viewed;
providing the advertisement, as the video program is
being viewed, by the advertisement placement system over the
Internet to the video display device, for real-time presentment
of the advertisement on the video display device at the current
time-code location of the video program, the real-time
presentment of the advertisement comprising presentment of
the advertisement simultaneous and in non-interference with the
video program;
wherein the method is performed by one or more
computing devices.
Prior Art
The Examiner relies upon the following prior art as evidence in
rejecting the claims on appeal:
Raskin et al. ("Raskin") US 2008/0172293 Al July 17, 2008
Rejections on Appeal
RI. Claims 1-30 stand rejected under 35 U.S.C. § 101 as being
directed to patent-ineligible subject matter. Final Act. 4.
R2. Claims 1-30 stand rejected under 35 U.S.C. § I02(e) as being
anticipated by Raskin. Final Act. 7.
CLAIM GROUPING
Based on Appellants' arguments (App. Br. 6-22) and our discretion
under 37 C.F.R. § 4I.37(c)(l)(iv), we decide the appeal of patent-ineligible
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subject matter Rejection RI of claims 1-30 on the basis of representative
claim 1; and we also decide the appeal of anticipation Rejection R2 of
claims 1-30 on the basis of representative claim 1. 3
ISSUES AND ANALYSIS
In reaching this decision, we consider all evidence presented and all
arguments actually made by Appellants. To the extent Appellants have not
advanced separate, substantive arguments for particular claims, or other
issues, such arguments are waived. 37 C.F.R. § 4I.37(c)(l)(iv).
Based upon our review of the record, we find a preponderance of the
evidence supports particular arguments advanced by Appellants with respect
to anticipation Rejection R2 of claim 1 for the specific reasons discussed
below.
However, we disagree with Appellants' arguments with respect to
patent-ineligible Rejection RI of claim 1 and, unless otherwise noted, we
incorporate by reference herein and adopt as our own: ( 1) the findings and
reasons set forth by the Examiner in the action from which this appeal is
taken, and (2) the reasons and rebuttals set forth in the Examiner's Answer in
response to Appellants' arguments. We highlight and address specific
findings and arguments regarding claim 1 for emphasis as follows.
3 "Notwithstanding any other provision of this paragraph, the failure of
appellant to separately argue claims which appellant has grouped together
shall constitute a waiver of any argument that the Board must consider the
patentability of any grouped claim separately." 3 7 C.F .R. § 41.3 7 ( c )( 1 )(iv).
In addition, when Appellants do not separately argue the patentability of
dependent claims, the claims stand or fall with the claims from which they
depend. In re King, 801 F.2d 1324, 1325 (Fed. Cir. 1986).
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1. § 101 RejectionRl ofClaims 1-30
Issue 1
Appellants argue (App. Br. 6-14; Reply Br. 1-12) the Examiner's
rejection of claim 1 under 35 U.S.C. § 101 as being directed to patent-
ineligible subject matter is in error. These contentions present us with the
following issue:
Under our governing case law concerning 35 U.S.C. § 101, did the
Examiner err in concluding claim 1 is directed to a judicial exception, i.e., an
abstract idea, without significantly more?
Analysis
Alice Framework
Section 101 provides that anyone who "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. 35 U.S.C. § 101.
The Supreme Court has repeatedly emphasized that patent protection should
not extend to claims that monopolize "the basic tools of scientific and
technological work." Gottschalk v. Benson, 409 U.S. 63, 67 (1972); Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 71 (2012);
Alice Corp. Pty. Ltd. v. CLS Bankint'l, 134 S.Ct. 2347, 2354 (2014).
Accordingly, laws of nature, natural phenomena, and abstract ideas are not
patent-eligible subject matter. Alice, 134 S.Ct. at 2354.
The Supreme Court's two-part Alice framework guides us in
distinguishing between patent claims that impermissibly claim the "building
blocks of human ingenuity" and those that "integrate the building blocks into
something more." Id. (internal quotation marks, citation, and bracketing
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omitted). First, we "determine whether the claims at issue are directed to [a]
patent-ineligible concept[]." Id. at 2355. If so, we "examine the elements of
the claim to determine whether it contains an 'inventive concept' sufficient to
'transform' the claimed abstract idea into a patent-eligible application." Id. at
2357 (quoting Mayo, 566 U.S. at 72, 79). While the two steps of the Alice
framework are related, the "Supreme Court's formulation makes clear that
the first-stage filter is a meaningful one, sometimes ending the § 101
inquiry." Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed.
Cir. 2016). We note the Supreme Court "has not established a definitive rule
to determine what constitutes an 'abstract idea"' for the purposes of step one.
Enfzsh, LLC v. Microsoft Corp., 822 F.3d 1327, 1334 (Fed. Cir. 2016) (citing
Alice, 134 S.Ct at 2357).
In Enfzsh, our reviewing court held claims directed to a self-referential
logical model for a computer database patent-eligible under step one of
Alice. Enfzsh, 822 F.3d at 1330. The disclosed technique enabled faster
searching and more effective storage of data than previous methods. Id. at
1333. The court found the claims directed to "a specific improvement to the
way computers operate, embodied in the self-referential table" (id. at 1336),
and explained that the claims are "not simply directed to any form of storing
tabular data, but instead are specifically directed to a self-referential table
for a computer database" that functions differently than conventional
databases. Id. at 1337.
In McRO, the claims were not held to be abstract because they recited
a "specific ... improvement in computer animation" using "unconventional
rules that relate[ d] sub-sequences of phonemes, timings, and morph weight
sets." McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299, 1302-
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03, 1307---08, 1314--15 (Fed. Cir. 2016). In McRO, "the incorporation of the
claimed rules, not the use of the computer," improved an existing
technological process. Id. at 1314.
Our reviewing court has held claims ineligible as directed to an
abstract idea when they merely collect electronic information, display
information, or embody mental processes that could be performed by
humans. Elec. Power Grp., 830 F.3d at 1353-54 (collecting cases). At the
same time, "all inventions at some level embody, use, reflect, rest upon, or
apply laws of nature, natural phenomena, or abstract ideas." Mayo, 566 U.S.
at 71. 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. Alice, 134 S.Ct. at 2355-
57. Under this guidance, we must therefore ensure at step one that we
articulate what the claims are directed to with enough specificity to ensure
the step one inquiry is meaningful. Id. at 2354 ("[W]e tread carefully in
construing this exclusionary principle lest it swallow all of patent law.").
Under the "abstract idea" step we must evaluate "the 'focus of the
claimed advance over the prior art' to determine if the claim's 'character as a
whole' is directed to excluded subject matter." Affinity Labs of Texas, LLC
v. DIRECTV, LLC, 838 F.3d 1253, 1257 (Fed. Cir. 2016) (internal citation
omitted). 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). If the concept is directed to a patent-ineligible
concept, we proceed to the "inventive concept" step. For that second step
we must "look with more specificity at what the claim elements add, in order
to determine 'whether they identify an "inventive concept" in the application
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of the ineligible subject matter' to which the claim is directed." Affinity
Labs, 838 F.3d at 1258 (quoting Elec. Power Grp., 830 F.3d at 1353).
Alice Step I -Abstract Idea
The Examiner concludes:
Claim(s) 1-30 are directed to a system performing the steps of
selecting advertisements for insertion into video programming
based on metadata, which is considered an abstract idea using a
fundamental economic practice. Such as in Smart Gene, which
compares new and stored information and using rules to
identify options, the current invention compares current time-
code information with user characteristics metadata and time-
based metadata file to select an appropriate advertisement to
present an end user. Therefore an abstract idea is present in the
claims.
Final Act. 4--5. The Examiner further determined:
The claimed invention is directed to a judicial exception (i.e., a
law of nature, a natural phenomenon, or an abstract idea)
without significantly more. Claim(s) 1-30 are directed to an
inventive concept of selecting advertisements for insertion into
video programming based on metadata, as explained in detail
below, which is considered an abstract idea using a fundamental
economic practice.
Ans. 9.
Appellants generally contend the Examiner's conclusion that the
claims are directed to a "fundamental economic practice" lacks legal
support. Specifically, "SmartGene is designated by the Federal Circuit
Court as 'non-precedential,' is in non-analogous art, and in particular
contains no holdings for 'fundamental economic practice,' as alleged by the
Final Office Action. Indeed, the entire decision is devoid of any mention of
the word 'fundamental', much less 'fundamental economic practice' ....
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Therefore, SmartGene does not provide legal basis for the Final Office
Action's 'fundamental economic practice' assertion." App. Br. 7; see also
App. Br. 9.
Appellants further contend the Examiner failed to comply with the
requirements of the Manual for Patent Examination Procedure (MPEP
§§ 707.07 (d) and 2103) because "there is no rule, law, or court decision
giving the Examiner with [sic] authority to reject patent claims under 101 as
a matter of law with no evidence required." App. Br. 7-8. "[T]he word
'burden' refers to that of introducing evidence. In order to prove a prima
facie case, evidence would clearly have been required." App. Br. 8.
Appellants' argument concerning the absence of evidence supporting
the § 101 rejection also does not persuade us of Examiner error. "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).
There is no requirement that an examiner cite evidentiary support to
conclude that a claim is directed to a patent-ineligible concept, such as an
abstract idea.
The courts consider the determination of whether a claim is
eligible (which involves identifying whether an exception such
as an abstract idea is being claimed) to be a question of law.
Rapid Litig. Mgmt. v. CellzDirect, 827 F .3d 1042, 104 7, 119
USPQ2d 1370, 1372 (Fed. Cir. 2016); OIP Techs. v.
Amazon.com, 788 F.3d 1359, 1362, 115 USPQ2d 1090, 1092
(Fed. Cir. 2015); DDR Holdings v. Hotels.com, 773 F.3d 1245,
1255, 113 USPQ2d 1097, 1104 (Fed. Cir. 2014); In re Roslin
Institute (Edinburgh), 750 F.3d 1333, 1335, 110 USPQ2d 1668,
1670 (Fed. Cir. 2014); In re Bilski, 545 F.3d 943, 951, 88
USPQ2d 1385, 1388 (Fed. Cir. 2008) (en bane), aff d by Bilski
v. Kappas, 561 U.S. 593, 95 USPQ2d 1001 (2010). Thus, the
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court does not require "evidence" that a claimed concept is a
judicial exception, and generally decides the legal conclusion of
eligibility without resolving any factual issues. FairWarning IP,
LLC v. Iatric Sys., 839 F.3d 1089, 1097, 120 USPQ2d 1293,
1298 (Fed. Cir. 2016) (citing Genetic Techs. Ltd. v. Merial
LLC, 818 F.3d 1369, 1373, 118 USPQ2d 1541, 1544 (Fed. Cir.
2016)); OIP Techs., 788 F.3d at 1362, 115 USPQ2d at 1092;
Content Extraction & Transmission LLC v. Wells Fargo Bank,
N.A., 776 F.3d 1343, 1349, 113 USPQ2d 1354, 1359 (Fed.
Cir. 2014).
MPEP § 2106.07(a) (III).
In response, the Examiner states "there can be significant overlap
between abstract idea categories, and one abstract idea that could be deemed
as a fundamental economic practice may also be categorized as an idea of
itself, and/or organizing human activity, etc. As such, while the inventive
concept was labeled as a fundamental economic practice, the Examiner
identified the inventive concept overlapping into an idea of itself, which is
why SmartGene was cited. Ans. 4. The Examiner further determined that
there is no requirement of
only using precedential, binding cases in the examination of the
instant claims. Even assuming arguendo that was the
requirement ( which the Examiner does not concede), the
particular decision of SmartGene applied the two-step Mayo
analysis and other analyses established in the Alice decision,
which makes the SmartGene decision clearly based on the
precedential and superseding Alice decision and thereby indeed
has a foundation and holding in the law.
Ans. 4 ( emphasis omitted).
Under the "abstract idea" step we must evaluate "the 'focus of the
claimed advance over the prior art' to determine if the claim's 'character as a
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whole' is directed to excluded subject matter." Affinity Labs, 83 8 F .3d at
1257 ( citation omitted).
Turning to the claimed invention, claim 1 ( Claims App 'x) recites a
method "performed by one or more computing devices" that requires the
steps of:
(a) "receiving metadata ... ;"
(b) "receiving a time-based metadata file ... ; "
( c) "receiving in real-time ... a current time-code
location of the video program ... ; "
(d) "selecting in real-time, an advertisement based on the
end user characteristics metadata, the time-based metadata file,
and the current time-code location ... "; and
( e) "providing the advertisement ... over the Internet to
the video display device, for real-time presentment of the
advertisement on the video display device at the current
time-code location of the video program."
Under step one, we agree with the Examiner that the inventions
claimed in each of independent claims 1, 8, and 21 are directed to an abstract
idea. However, we disagree that a conclusion of a fundamental economic
practice most correctly characterizes the subject matter of the claims on
appeal. Instead, as a matter of claim construction, and while recognizing the
potential overlap between the various characterizations of abstract subject
matter in examination guidelines found in the MPEP4 based upon the body
of our controlling case law precedent, we conclude the claims on appeal may
be more appropriately characterized as being directed to a fundamental
practice, albeit not an economic practice, or may alternatively be
4 See, e.g., Manual of Patent Examination Procedure (MPEP) §§ 2103-
2106.
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characterized as being directed to a method of organizing human activity,
i.e., tailoring content based on information about the user. See Ans. 4.
In Intellectual Ventures I LLC v. Capital One Bank (USA), analogous
in key respects to the claims before us on appeal (both of which tailor
content based on information about the user), our reviewing court
determined such claims were directed to an abstract idea and, thus, patent-
ineligible.
At step one of the Alice framework, it is often useful to
determine the breadth of the claims in order to determine
whether the claims extend to cover a "fundamental ... practice
long prevalent in our system .... " Alice, 134 S.Ct. at 2356. As
noted, the claim relates to customizing information based on (1)
information known about the user and (2) navigation data ....
[T]ailoring is "a fundamental ... practice long prevalent in our
system .... " Id. There 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.
Intellectual Ventures I LLC v. Capital One Bank (USA), 792 F.3d 1363,
1369 (Fed. Cir. 2015). Regardless of how the claims are characterized under
Step 1, we conclude they are directed to patent-ineligible subject matter.
As the Specification discloses, " [ t ]he present invention relates
generally to targeted advertisements and, more particularly, to methods and
systems for delivering targeted advertisements in association with a video
program based on metadata associated with the video program." Spec. ,r 2. 5
5 See also Spec. 27 ("Abstract"):
A system for using metadata from a video signal to associate
advertisements therewith, comprising (i) a segmentation system
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We find this type of activity, i.e., tailoring content based on information
about the user, for example, includes longstanding conduct that existed well
before the advent of computers and the Internet and, outside the recitation of
"one or more computing devices," could be carried out by a human with pen
and paper. See CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366,
1375 (Fed. Cir. 2011) ("That purely mental processes can be unpatentable,
even when performed by a computer, was precisely the holding of the
Supreme Court in Gottschalk v. Benson."). 6
Our reviewing court has previously held other patent claims ineligible
for reciting similar abstract concepts. For example, while the Supreme
Court has enhanced the § 101 analysis since CyberSource in cases like Mayo
and Alice, the Federal Circuit continues to "treat[] analyzing information by
steps people go through in their minds, or by mathematical algorithms,
without more, as essentially mental processes within the abstract-idea
to divide the video signal into video clips, (ii) a digitizing
system for digitizing the video clips, (iii) a feature extraction
system for extracting audio and video features from each video
clip, associating each audio feature with respective video clips,
associating each video feature with respective video clips, and
saving the audio and video features into an associated metadata
file, (iv) a web interface to the feature extraction system for
receiving the video clips, and (v) a database, wherein video
signals and associated metadata files are stored and indexed,
wherein the associated metadata file is provided when a video
player requests the corresponding video signal, enabling
selection of a relevant advertisement for presentment in
conjunction with respective video clips based on the associated
audio and video features of the respective video clip.
6 CyberSource further guides that "a method that can be performed by
human thought alone is merely an abstract idea and is not patent-eligible
under§ 101." CyberSource, 654 F.3d at 1373.
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category." Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1146-
47 (Fed. Cir. 2016) (alteration in original) (quoting Elec. Power Grp., 830
F.3d at 1354).
In addition, our reviewing court has concluded that abstract ideas
include the concepts of collecting data, recognizing certain data within the
collected data set, and storing the data in memory. Content Extraction &
Transmission LLC v. Wells Fargo Bank, N.A., 776 F.3d 1343, 1347 (Fed.
Cir. 2014). Additionally, the analysis of collected information (e.g.,
recognizing certain data within the dataset) are also abstract ideas. Elec.
Power Grp., 830 F.3d at 1353-54 (collecting information and "analyzing
information by steps people go through in their minds, or by mathematical
algorithms, without more, [are] essentially mental processes within the
abstract-idea category"). 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). Also,
collecting and comparing known information has been determined to be an
abstract idea. Classen Immunotherapies, Inc. v. Biogen IDEC, 659 F .3d
1057, 1067 (Fed. Cir. 2011) ("Claim 1 of the '283 patent states the idea of
collecting and comparing known information"). Further, a process that
employs mathematical algorithms to manipulate existing information to
generate additional information is abstract. Digitech Image Techs., LLC v.
Elec.for Imaging, Inc., 758 F.3d 1344, 1351 (Fed. Cir. 2014). More
recently, our reviewing court has also concluded that acts of parsing,
comparing, storing, and editing data are abstract ideas. Berkheimer v. HP
Inc., 881 F.3d 1360, 1367 (Fed. Cir. 2018).
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Therefore, in agreement with the Examiner, we conclude claim 1
involves nothing more than identifying, collecting, storing, comparing, and
generating data, without any particular inventive technology, that takes the
form of tailoring content based on information about the user - an abstract
idea. See Elec. Power Grp., 830 F.3d at 1354.7
Accordingly, on this record, and under step one of Alice, we agree
with the Examiner's conclusion the claims are directed to an abstract idea.
Alice Step 2 -Inventive Concept
If the claims are directed to a patent-ineligible concept, as we
conclude above, we proceed to the "inventive concept" step. For that step
we must "look with more specificity at what the claim elements add, in order
to determine 'whether they identify an "inventive concept" in the application
of the ineligible subject matter' to which the claim is directed." Affinity
Labs, 838 F.3d at 1258 (quoting Elec. Power Grp., 830 F.3d at 1353).
In applying step two of the Alice analysis, our reviewing court guides
we must "determine whether the claims do significantly more than simply
describe [the] abstract method" and thus transform the abstract idea into
patentable subject matter. Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709,
715 (Fed. Cir. 2014). We look to see whether there are any "additional
features" in the claims that constitute an "inventive concept," thereby
rendering the claims eligible for patenting even if they are directed to an
abstract idea. Alice, 134 S.Ct. at 2357. Those "additional features" must be
7 Merely automating previously manual processing by using computers does
not qualify as an eligibility-rejection-defeating improvement. Credit
Acceptance Corp. v. Westlake Servs., 859 F.3d 1044, 1055 (Fed. Cir. 2017).
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more than "well-understood, routine, conventional activity." Mayo, 566
U.S. at 79.
Appellants argue additional features recited in claim 1 add
significantly more to the abstract idea because they "cannot be performed as
mental steps as each step in these claim features is incapable [ of] being
performed in the head(s) of a person or people, or by a computing device
acting like the head(s) of a person or people." App. Br. 13.
Id.
These claim features of Claim 1 also clearly involves
"effecting a transformation or reduction of a particular article to
a different state or thing" by the fact that the method results in
"providing the advertisement, as the video program is being
viewed, by the advertisement placement system over the
Internet to the video display device, for real-time presentment
of the advertisement on the video display device at the current
time-code location of the video program, the real-time
presentment of the advertisement comprising presentment of
the advertisement simultaneous and in non-interference with the
video program."
For these reasons, the Final Office Action fails to
properly perform part 2 of the subject matter eligibility test in
rejecting Claims 1-30 under section 101.
With respect to Appellants' apparent "machine-or-transformation"
argument, we disagree. See In re Bilski, 545 F.3d 943, 962 (Fed. Cir. 2008)
(en bane), ajfd on other grounds, 561 U.S. 593 (2010) ("[T]he involvement
of the machine or transformation in the claimed process must not merely be
insignificant extra-solution activity."); see also Bilski at 545 F .3d at 963
( characterizing data gathering steps as insignificant extra-solution activity);
Parker v. Flook, 437 U.S. 584, 590 (1978) (insignificant post-solution
activity found to be insufficient to impart patentability). Apple, Inc. v.
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Ameranth, Inc., 842 F.3d 1229, 1242 (2016) (same). And, as noted
previously, merely presenting the results of abstract processes of collecting
and analyzing information, without more (such as identifying a particular
tool for presentation), is abstract as an ancillary part of such collection and
analysis. Elec. Power, 830 F.3d at 1354.
Thus, evaluating representative claim 1 under step 2 of the Alice
analysis, we agree with the Examiner that it lacks an inventive concept that
transforms the abstract idea of tailoring content based on information about
the user by receiving and analyzing data into a patent-eligible application of
that abstract idea by using "one or more computing devices." See
Ans. 17-18.8
The Examiner further determines:
The claim(s) does/do not include additional elements that
are sufficient to amount to significantly more than the judicial
exception because the claims do not amount to significantly
more than the abstract idea. The claim recites the additional
limitations of "a video display device" and "one or more
8 For example, the Examiner concludes:
The claim(s) does/do not include additional elements that are
sufficient to amount to significantly more than the judicial
exception because the claims do no more than use a generic
processor and generic memory to perform the steps of the
abstract idea of selecting advertisements for insertion into video
programming based on metadata. The additional elements of
the claim do not add a meaningful limitation to the abstract idea
because they would be routine in any computer implementation.
The claims recite the use of a generically recited data processor
for implementing the allocation and communication links which
support information transfer, which is considered
generic/routing computer technology.
Final Act. 5.
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computing devices" (and similarly "one or more media", "one
or more processors" and "a video display device of claim 11
and similarly "an apparatus" with a plurality of "subsystems"
and "a video display device" in claim 21 ). The additional
elements are recited at a high level of generality and are recited
as performing generic computer functions routinely used in
computer applications. As such, the additional elements of the
claim do not add a meaningful limitation to the abstract idea
because they would be generic computer functions in any
computer implementation. Thus, taken alone, the additional
elements do not amount to significantly more than the above-
identified judicial exception (the abstract idea). Looking at the
limitations as an ordered combination adds nothing that is not
already present when looking at the elements taken
individually. There is no indication that the combination of
elements improves the functioning of the computer or improves
any other technology. Their collective functions merely provide
conventional computer implementation.
The additional elements are each functional generic
computer components that perform the generic functions of
processing, communicating and displaying, all common to
electronics and computer systems. Generic computer
implementation does not provide significantly more than that
abstract idea. The multiple receiving steps and providing is
merely extra-solution activity and does not meaningfully limit
the claim.
Ans. 10-11.
We note the patent eligibility inquiry may contain underlying issues of
fact. Mortg. Grader, Inc. v. First Choice Loan Servs. Inc., 811 F.3d 1314,
1325 (Fed. Cir. 2016). In particular, "[t]he question of whether a claim
element or combination of elements is well-understood, routine and
conventional to a skilled artisan in the relevant field is a question of fact."
Berkheimer, 881 F.3d at 1368.
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As evidence of the conventional nature of the claimed network
components and processes, we note the disclosure of Appellant's
Specification. For example:
[0031] Turning now to FIG. IA, a first preferred embodiment
of an advertisement placement system 1 OOA based primarily
upon time-coded metadata associated with an underlying video
program displayed therewith is illustrated. In this first
embodiment, it is contemplated that the video program will be
viewed in a Video-on-Demand (VOD) or video streaming
context from a video provider 110 and that the underlying
metadata file associated with the video program, once created,
is maintained by the video provider 110. This system 1 OOA
includes one or more video storage databases 115 of the video
provider 110 and a video server 113 that provides video
programs in VOD or video streaming format over a computer
network, such as the Internet for example, to a viewer 150 ( or
end user).
[0032] Before a specific video is provided to the viewer 150,
a video file 120 associated with the video program 121 is
preferably provided to a metadata generator 130. The video file
120 has or includes a unique file name or other video identifier
(designated herein by the variable VID). As will be described in
greater detail hereinafter, the metadata generator 130 receives
the video file 120 and, using a metadata processor 133, creates
or generates a time-coded metadata file I25associated with the
corresponding video file 120 and underlying video program
121. As shown in FIG. IA, this metadata file 125 is stored in a
database 135 of the metadata generator 130 but also provided
back to the video provider 110 and associated with the
corresponding video file 120 and underlying video program 121
in video storage databases 115.
Spec. ,r,r 31-32. Thus, Appellants' Specification does not ascribe
specialized, non-conventional functions or performance attributes to the
generically-recited hardware components.
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We agree with the Examiner that the claim limitations may be broadly
but reasonably construed as reciting and relying upon conventional computer
components and techniques, particularly in light of Appellants'
Specification, as quoted above. 9
With respect to the Step 2 analysis, we agree with the Examiner that
no additional element in claim 1 adds "significantly more" because, as in
Alice, the recitation of a method for tailoring content based upon information
about the user using "one or more computing devices" ( claim 1) is simply
not enough to transform the patent-ineligible abstract idea here into a patent-
eligible invention. See Alice, 134 S.Ct. at 2357 ("[C]laims, which merely
require generic computer implementation, fail to transform [an] abstract idea
into a patent-eligible invention."). 10
9 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).
10 In the Reply Brief, Appellant alleges the Examiner failed to properly
carry out the Alice analysis. Reply Br. 7-8.
The Examiner apparently attempts to make up the lack of
the two-part analysis in the Final Office Action, especially Part
II of the analysis, by belatedly presenting a two-part analysis
with a Part II that mentions two terms extracted from the claim
language of Claim 1 such as "a display device" and "one or
more computing device."
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Accordingly, based upon the findings above, on this record, we are
not persuaded of error in the Examiner's conclusion that the appealed claims
are directed to patent-ineligible subject matter. Therefore, we sustain the
Examiner's § 101 rejection of independent claim 1, and grouped claims 2-
30, which are not argued separately, and which fall therewith. See Claim
Grouping, supra.
Therefore, based upon the findings above, on this record, we are not
persuaded of error in the Examiner's factual findings in support of the legal
conclusion that independent claim 1 and grouped claims 2-30 are directed to
patent-ineligible subject matter. See Claim Grouping, supra.
2. § 103 Rejection R2 of Claims 1-30
Issue 2
Appellants argue (App. Br. 14--22; Reply Br. 12-22) the Examiner's
rejection of claim 1 under 35 U.S.C. § I02(e) as being anticipated by Raskin
is in error. These contentions present us with the following issue:
Did the Examiner err in finding the cited prior art discloses a method
that includes, inter alia, the steps of LI, "receiving in real-time, by an
Respectfully, "a high level of generality" for these terms
happens because the Examiner only extracts these terms from
the claim language of Claim 1 without the underlying context
for these terms as recited in Claim 1. This belated two-part
analysis as presented in the Examiner's Answer still overlooks a
large number of claim limitations in the Claim 1, and all the
claim limitations of each of the dependent claims.
Reply Br. 7-8. Even assuming, without agreeing, the Examiner did not
properly carry out the requisite Alice analysis under Step 2, this Decision
clarifies the proper claim construction along with a complete two-step Alice
analysis.
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advertisement placement system from the video display device, a current
time-code location of the video program as the video program is being
viewed on the video display device by the end user;" and L2, "selecting in
real-time, an advertisement based on the end user characteristics metadata,
the time-based metadata file, and the current time-code location as the video
program is being viewed," as recited in claim 1?
Analysis
Appellants contend Raskin fails to disclose limitation L 1, particularly
receiving the claimed "current time-code location of the video program as
the video program is being viewed on the video display device by the end
user." App. Br. 14--15.
Anticipation of a claim under 35 U.S.C. § 102 occurs when each
claimed element and the claimed arrangement or combination of those
elements is disclosed, inherently or expressly, by a single prior art reference.
Therasense, Inc. v. Becton, Dickinson & Co., 593 F.3d 1325, 1332 (Fed. Cir.
2010). A reference inherently discloses an element of a claim "if that
missing characteristic is necessarily present, or inherent, in the single
anticipating reference." Schering Corp. v. Geneva Pharms., 339 F.3d 1373,
1377 (Fed. Cir. 2003) (citation omitted) (emphasis added). "Inherency,
however, may not be established by probabilities or possibilities. The mere
fact that a certain thing may result from a given set of circumstances is not
sufficient." Therasense, 593 F .3d at 1332 ( citing Cont'! Can Co. USA, Inc.
v. Monsanto Co., 948 F.2d 1264, 1269 (Fed. Cir. 1991)).
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The Examiner cites Raskin paragraphs 35 and 53 through 67 as
disclosing limitation LI, including use of the recited "current time-code
location." Final Act. 7-8.
However, we have reviewed the Examiner's extensive citations to
Raskin, and find no explicit or inherent disclosure of receipt of a "current
time-code" or receipt of data that can be reasonably construed as current
time-code information.
Thus, we disagree with the Examiner's finding that Raskin discloses
Limitation LI as recited in claim 1. Ans. 14. Although Appellants also ague
Limitation L2 is not disclosed by Raskin, we find the analysis with respect
to Limitation LI to be dispositive such that we need not reach additional
issues argued by Appellants.
Therefore, based upon the findings above, on this record, we are
persuaded of error in the Examiner's reliance on the cited prior art to
disclose the disputed limitations of claim 1, and we find error in the
Examiner's resulting finding of anticipation. Therefore, we reverse the
Examiner's anticipation rejection of (1) independent claim 1, (2) independent
claims 11 and 21, which recite commensurate limitations, and (3) dependent
claims 2-10, 12-20, and 22-30. See Claim Grouping, supra.
REPLY BRIEF
To the extent Appellants may advance new arguments in the Reply
Brief (Reply Br. 1-22) not in response to a shift in the Examiner's position
in the Answer, we note arguments raised in a Reply Brief that were not
raised in the Appeal Brief or are not responsive to arguments raised in the
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Examiner's Answer will not be considered except for good cause (see 37
C.F.R. § 41.4I(b)(2)), which Appellants have not shown.
CONCLUSIONS
(1) The Examiner did not err with respect to patent-ineligible
subject matter Rejection RI of claims 1-30 under 35 U.S.C. § 101, and we
sustain the rejection.
(2) The Examiner erred with respect to anticipation Rejection R2 of
claims 1-30 under 35 U.S.C. § I02(e) over the cited prior art of record, and
we do not sustain the rejection.
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. § 4I.50(a)(l).
DECISION
We affirm the Examiner's decision rejecting claims 1-30.
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. § 41.50(±).
AFFIRMED
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