Ex Parte Bui

Patent Trial and Appeal Board

Feb 12, 2019

12250726 (P.T.A.B. Feb. 12, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/250,726 10/14/2008
72058 7590 02/14/2019
Kilpatrick Townsend & Stockton LLP
Adobe Systems, Inc. 58083
Mailstop: IP Docketing - 22
1100 Peachtree Street, Suite 2800
Atlanta, GA 30309-4530
FIRST NAMED INVENTOR
Hai Bui
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.
58083-394842 (B816) 4304
EXAMINER
KOLOSOWSKI-GAGER, KATHERINE
ART UNIT PAPER NUMBER
3622
NOTIFICATION DATE DELIVERY MODE
02/14/2019 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):
ipefiling@kilpatricktownsend.com
KTSDocketing2@kilpatrick.foundationip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HAI BUI
Appeal2017-007587
Application No. 12/250,726 1
Technology Center 3600
Before MARC S. HOFF, BETH Z. SHAW, and JOHN D. HAMANN,
Administrative Patent Judges.
HOFF, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134 from a Final Rejection of
claims 1-3, 5-7, 12-18, 23, 25, 27-29, and 32--40. We have jurisdiction
under 35 U.S.C. § 6(b ).
We affirm.
Appellant's invention is a method and system for providing an
incentive for a user to use a particular application to access content, or to
view a particular type of content. Steps of the method include accessing
content with a hosting application; determining a presence of an embedded
1 The real party in interest is Adobe Systems Incorporated. App. Br. 3.
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Application No. 12/250,726
reward code within the content, and awarding a reward to a user for
accessing the content. The reward is offered by the provider of the content
being viewed with the hosting application, such that users are rewarded by
the content provider for viewing a particular type of content. Spec. 2.
Claim 1 is reproduced below:
1. A computer implemented method comprising: accessing, by a
content application executed by a processor, an electronic document of an
entity to display to a user via a computing device, the entity registered with
a reward program of a provider of the content application, the reward
program configured to reward users upon usage of the content application to
view content of the electronic document, the entity further providing an
option to the users for the content in a non-electronic format independently
of the content application;
determining, by the content application, a user account registered with
the reward program of the provider of the content application;
displaying, by the content application, the electronic document via the
computing device in association with the user account;
in response to displaying the electronic document:
identifying, by the content application, a reward code embedded in the
electronic document, the reward code configured to reward points
exclusively responsive to (a) the content of the electronic document being
displayed by the content application, (b) the electronic document embedding
the reward code, ( c) the reward code comprising an identifier of the entity
registered with the reward program of the provider, and (d) the reward
program being configured to reward the users upon the usage of the
content application;
verifying, by the content application and based on the identified
reward code, an entity account of the entity with the reward program of the
provider;
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determining, by the content application, a number of times the content
has been displayed by the content application in association with the user
account; and updating, by the content application, an account balance of the
user account to award the points to the user account, the points awarded
based on the number of times and based on the entity account being verified;
determining, by the content application, a reward option for the user
account based on the updated account balance;
displaying, by the content application, the reward option via the
computing device; and
causing, by the content application, a reward corresponding to the
reward option to be redeemed based on a selection of the reward option.
The Examiner relies upon the following prior art in rejecting the
claims on appeal:
Onizuka
Heywood
Wood et al.
Westphal
US 2004/0254857 Al
US 2006/0253321 Al
US 7,624,038 Bl
US 2010/0017304 Al
Dec. 16, 2004
Nov. 09, 2006
Nov. 24, 2009
Jan. 21, 2010
Claim 1-3, 5-7, 12-18, 23, 25, 27-29, and 32--40 stand rejected under
35 U.S.C. § 101 as being directed to patent-ineligible subject matter.
Claims 1-3, 5-7, 12-18, 23, 25, 27, 34, 36-38, and 40 stand rejected
under 35 U.S.C. § I03(a) as being unpatentable over Wood and Heywood.
Claims 28 and 29 stand rejected under 35 U.S.C. § I03(a) as being
unpatentable over Wood, Heywood, and Westphal.
Claims 32, 33, 35, and 39 stand rejected under 35 U.S.C. § I03(a) as
being unpatentable over Wood, Heywood, Westphal, and Onizuka.
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Application No. 12/250,726
Throughout this decision, we refer to the Appeal Brief ("App. Br.,"
filed Dec. 21, 2016), the Reply Brief ("Reply Br.," filed Apr. 24, 2017), and
the Examiner's Answer ("Ans.," mailed Feb. 24, 2017) for their respective
details.
ISSUES
1. Is the claimed invention directed to a judicial exception?
2. Is the judicial exception integrated into a practical application?
3. Does the combination of Wood and Heywood disclose or fairly
suggest an entity registered with a reward program of a provider of the
content application?
PRINCIPLES OF LAW
An invention is patent-eligible if it claims a "new and useful process,
machine, manufacture, or composition of matter." 35 U.S.C. § 101.
However, the Supreme Court has long interpreted 35 U.S.C. § 101 to
include implicit exceptions: "[l]aws of nature, natural phenomena, and
abstract ideas" are not patentable. See, e.g., Alice Corp. v. CLS Bank Int 'l,
573 U.S. 208,216 (2014).
In determining whether a claim falls within an excluded category,
we are guided by the Supreme Court's two-step framework, described in
Mayo and Alice. Id. at 217-18 ( citing Mayo Collaborative Servs. v.
Prometheus Labs., Inc., 566 U.S. 66, 75-77 (2012)). In accordance with
that framework, we first determine what concept the claim is "directed
to." See Alice, 573 U.S. at 219 ("On their face, the claims before us are
drawn to the concept of intermediated settlement, i.e., the use of a third
party to mitigate settlement risk."); see also Bilski v. Kappas, 561 U.S.
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Application No. 12/250,726
593, 611 (2010) ("Claims 1 and 4 in petitioners' application explain the
basic concept of hedging, or protecting against risk.").
Concepts determined to be abstract ideas, and thus patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219-20; Bilski, 561 U.S. at 611 );
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594--95 (1978));
and mental processes (Gottschalk v. Benson, 409 U.S. 63, 69 (1972)).
Concepts determined to be patent eligible include physical and chemical
processes, such as "molding rubber products" (Diamond v. Diehr, 450
U.S. 175, 192 (1981)); "tanning, dyeing, making waterproof cloth,
vulcanizing India rubber, smelting ores" (id. at 184 n. 7 ( quoting Corning
v. Burden, 56 U.S. 252, 267-68 (1854))); and manufacturing flour
(Benson, 409 U.S. at 69 (citing Cochrane v. Deener, 94 U.S. 780, 785
(1876))).
In Diehr, the claim at issue recited a mathematical formula, but the
Supreme Court held that "[a] claim drawn to subject matter otherwise
statutory does not become nonstatutory simply because it uses a
mathematical formula." Diehr, 450 at 176; see also id. at 192 ("We view
respondents' claims as nothing more than a process for molding rubber
products and not as an attempt to patent a mathematical formula.").
Having said that, the Supreme Court also indicated that a claim "seeking
patent protection for that formula in the abstract ... is not accorded the
protection of our patent laws, ... and this principle cannot be
circumvented by attempting to limit the use of the formula to a particular
technological environment." Id. (citing Benson and Flook); see, e.g., id. at
187 ("It is now commonplace that an application of a law of nature or
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Application No. 12/250,726
mathematical formula to a known structure or process may well be
deserving of patent protection.").
If the claim is "directed to" an abstract idea, we tum to the second
step of the Alice and Mayo framework, where "we must 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." Alice, 573 U.S. at 221 ( quotation marks omitted).
"A claim that recites an abstract idea must include 'additional features' to
ensure 'that the [claim] is more than a drafting effort designed to
monopolize the [abstract idea]."' Id. ( quoting Mayo, 566 U.S. at 77).
"[M]erely requir[ing] generic computer implementation[] fail[ s] to
transform that abstract idea into a patent-eligible invention." Id.
The PTO recently published revised guidance on the application of
§ 101. USPTO's January 7, 2019 Memorandum, 2019 Revised Patent
Subject Matter Eligibility Guidance ("Memorandum"). Under that
guidance, we first look to whether the claim recites:
(1) any judicial exceptions, including certain groupings of abstract
ideas (i.e., mathematical concepts, certain methods of organizing
human interactions such as a fundamental economic practice, or
mental processes); and
(2) additional elements that integrate the judicial exception into a
practical application (see MPEP § 2106.05(a}-(c), (e}-(h)).
Only if a claim (1) recites a judicial exception and (2) does not
integrate that exception into a practical application, do we then look to
whether the claim:
(3) adds a specific limitation beyond the judicial exception that
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are not "well-understood, routine, conventional" in the field
(see MPEP § 2106.05( d) ); or
(4) simply appends well-understood, routine, conventional
activities previously known to the industry, specified at a high
level of generality, to the judicial exception.
See Memorandum.
ANALYSIS
SECTION 101 REJECTION
Independent claim 1 is directed, inter alia, to providing a reward
system as an incentive to a user to access an electronic document of an entity
using a particular content application and as an incentive to a user to view an
electronic document rather than an equivalent paper document; identifying a
reward code embedded in the electronic document, and properly crediting a
particular user with said reward when the user accesses the electronic
document with the particular content application. Independent claims 12,
23, 28, and 34 recite analogous limitations.
We conclude that independent claims 1, 12, 23, 28, and 34 are
directed to the abstract idea of certain methods of organizing human activity,
specifically to the commercial interaction of displaying advertising and/or
using advertising as exchange or currency. Ans. 5. We agree with the
Examiner's analogy of the invention under appeal to that in Ultramercial,
Inc. v. Hulu, LLC, 772 F.3d 709 (Fed. Cir. 2014). Id. The court in
Ultramercial concluded that the claimed invention there, i.e., "[t]he process
of receiving copyrighted media, selecting an ad, offering the media in
exchange for watching the selected ad, displaying the ad, allowing the
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consumer access to the media, and receiving payment from the sponsor of
the ad" constituted "an abstract idea, devoid of a concrete or tangible
application" - "a method of using advertising as an exchange or currency."
Ultramercial, 772 F.3d at 714--715. Just as the user in Ultramercial was
provided with a reward (the ability to watch copyrighted media at no charge)
in exchange for receiving material (advertisements) that another entity
desired the user to receive, Appellant's claimed invention recites providing a
user with a reward in exchange for agreeing to receive material that another
entity desires the user to receive, and agreeing to view it on a particular
content application.
Appellant's Specification discloses that the objective of Appellant's
invention is to "provide an incentive for a user to use a particular application
to access content or to view a particular type of content." Spec. 2. The
Specification makes clear that the invention is intended to provide an
incentive for users to, for example, "read their monthly statements online
instead of receiving them by mail." Spec. 7. Appellant argues that "the use
of a reward program by an entity responsible for the electronic content
"further improves the relevant technology by reducing or eliminating the
reliance on physical hardcopies." Reply Br. 4; Spec. 7-8. We conclude that
the purported "technological improvement" argued by the Appellant is in
fact an improvement in the number of users who opt to switch from paper
statements to electronic statements. This increased adoption of electronic
statements amounts to an improvement to the underlying abstract idea, not to
an improvement in technology or in the functioning of a computer.
We determine that the identified abstract idea is not integrated into a
practical application. The claimed invention does not constitute an
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improvement to the functioning of a computer. Rather, it merely constitutes
the adaptation of an abstract idea, previously performed mentally or
manually, to execution as steps performed by a computer. MPEP
2106.0S(a). The claimed invention is not applied with, or by use of, a
particular machine. MPEP 2106.0S(b). Appellant's invention does not
effect the transformation or reduction of a particular article to a different
state or thing. MPEP 2106.0S(c).
Appellant argues that the invention improves the "computer-related
technology of content applications that are hosted on computing devices and
are usable for presenting electronic content." Reply Br. 4. "The
specification further establishes that embedding a code and using a reward
program improve this technology by increasing the adoption rate of a
particular content application from the available content applications." Id.
Further, "the use of a reward program by an entity responsible for the
electronic content further improves the relevant technology by reducing or
eliminating the reliance on physical hardcopies." Id.
Appellant's arguments are not persuasive to establish an improvement
in the relevant technology under McR02 or Enfzsh. 3 See Reply Br. 6-7.
First, there is no disclosure of any improvement to the relevant technology
(the content application) per se, only disclosure of Appellant's stated goal of
increasing the use of its content application by users. Rather, we conclude
that the claims are directed to a result or effect that itself is the abstract idea,
merely invoking generic processes and machinery. McRO, 837 F.3d at
2 McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299 (Fed. Cir.
2016).
3 Enfzsh, LLC v. Microsoft Corp., 822 F.3d 1827 (Fed. Cir. 2016).
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1310. Second, such an increase in the adoption rate of a particular content
application may be financially rewarding to the developer of the content
application, but such an increased adoption rate, by itself, does not amount
to an improvement in the technology of content applications. Third, a
reduction in users' reliance on hard copies may save printing and mailing
costs for the information provider, and may even be beneficial to the
environment, but such a reduction also does not amount to a technological
improvement.
Turning to further elements under the Guidelines for determining
whether an abstract idea is integrated into a practical application, as
discussed supra we determine that Appellant's invention constitutes mere
instructions to implement an abstract idea on a computer. MPEP 2106.05([).
We determine that the further claim limitations directed to displaying a
reward option to the user, and causing a reward to be redeemed, to constitute
insignificant post-solution activity. See MPEP 2106.05(g).
In response to Appellant's argument that the claims do not pre-empt
or entirely tie up the "deliver[ing] user selected media content to portable
devices, collecting information, analyzing it, and displaying certain results
of the collection and analysis, as well as obtaining and comparing intangible
data, and collecting and comparing known information" (Reply Br. 7-8), we
note that lack of preemption does not demonstrate patent eligibility. "Where
a patent's claims are deemed only to disclose patent ineligible subject matter
under the Mayo framework, as they are in this case, preemption concerns are
fully addressed and made moot." Ariosa Diagnostics, Inc. v. Sequenom,
Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015).
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WELL-UNDERSTOOD, ROUTINE, CONVENTIONAL
Having determined that the claims recite a judicial exception, and do
not integrate that exception into a practical application, we consider whether
the claim adds a specific limitation beyond the judicial exception that is not
"well understood, routine, and conventional" in the field. US PTO, 2019
Revised Patent Subject Matter Eligibility Guidance, 84(4) Fed. Reg. 50, 56
(January 7, 2019) ("Revised Guidance").
Appellant's claims recite such technical elements as a "processor," an
"electronic document" displayed via a "computing device," and a "content
application." Appellant discloses a "computerized device[,] configured to
process all the method operations," which "includes a memory system, a
processor, communications interface in an interconnection mechanism
connecting these components." Spec. 4. The claimed processing is also
disclosed as performable by "functionally equivalent circuits such as a
digital signal processor circuit or an application specific integrated circuit
(ASIC)." Spec. 10. The processor "may include one or more
microprocessors that may communicate in a stand-alone and/or a distributed
environment," and may be understood "to include a central processing unit,
an arithmetic logic unit, an application-specific integrated circuit (IC),
and/or a task engine." Spec. 15.
We determine that Appellant discloses and claim generic computer
components used conventionally. We are not persuaded that Appellant
provides a non-generic arrangement of known, conventional elements. See
Reply Br. 12. As discussed supra, we do not agree with Appellant that the
claimed invention "improves [an] underlying computer related technology."
Id. Rather, we conclude that the argued increase in "adoption of the content
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application" and decrease in "reliance on hardcopies" are improvements in
the underlying business concept, using a computer as a mere tool to
implement an abstract idea.
As Appellant has not disclosed any features of the claimed computing
device, computer system, or catalog data structure that would be considered
as other than "well-understood, routine, and conventional," these claim
limitations fail to indicate the presence of an inventive concept. We further
find that Appellant's disclosure, discussed supra, are specified at a high
level of generality.
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. See Alice, 134 S. Ct. at 2355
(internal quotations omitted) (quoting Mayo, 566 U.S. at 79, 78).
Accordingly, we sustain the Examiner's 35 U.S.C. § 101 rejection of claims
1-3, 5-7, 12-18, 23, 25, 27-29, and 32--40.
SECTION 103 REJECTIONS
Independent claim 1 recites "an electronic document of an entity to
display to a user via a computing device, the entity registered with a reward
program of a provider of the content application, the reward program
configured to reward users upon usage of the content application to view
content of the electronic document." Independent claims 12, 23, 28, and 34
recite analogous limitations.
The Examiner maps the claimed "entity" to a promoter ( e.g., an
advertiser), the "user" to a consumer who visits a website of the promoter,
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and the "provider" to an administrator of a system that maintains rewards.
Final Act. 6; App. Br. 23.
The claim requires the "provider" to provide the content application.
In Wood, the user visits websites using a web browser. We agree with
Appellant that Wood does not disclose that the web browser is provided by
the administrator of a system that maintains rewards. App. Br. 23-24.
Wood discloses that "[t]he promoter can register and create offers via a form
on the central website 52 at any time and it is the responsibility of the
promoter to maintain the information relevant to the promoter in the central
database 56." Wood col. 9:47-50. Contrary to the Examiner's finding,
Wood does not disclose that the administrator of the system that maintains
rewards is the provider of the content application (i.e., in Wood, the web
browser). See Final Act. 6. Wood discloses that the promoter operates an
application program that will query a central database to determine if the
user is entitled to a reward, but Wood does not disclose a "reward program
of a provider of the content application." See Wood col. 4:35-37.
The examiner further finds that Wood discloses a reward code
"configured to reward points exclusively responsive to (a) the content of the
electronic document being displayed by the content application, (b) the
electronic document embedding the reward code, ( c) the reward code
comprising an identifier of the entity registered with the reward program of
the provider, and ( d) the reward program being configured to reward the
users upon the usage of the content application." Final Act. 7. We do not
agree that Wood discloses this limitation. Wood discloses an advertisement
such as a banner advertisement that can be marked in a certain way, for
example, with a distinctive 'reward' logo" meant to attract users to click on
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the advertisement. App. Br. 24--25; Wood col. 3:24--27. While the 'reward'
logo is arguably "embedded" in the advertisement, Wood does not disclose a
reward code that comprises an identifier of the entity registered with the
reward program of the provider. App. Br. 25. Wood rewards the user for
clicking on the advertisement, independent of any particular content
application (i.e., web browser) used, and independent of whether that web
browser is associated with a reward program. App. Br. 25.
We, therefore, find that the combination of Wood and Heywood fails
to disclose all the limitations of independent claims 1, 12, 23, 28, and 34, or
of dependent claims 2, 3, 5-7, 13-18, 25, 27, 36-38, and 40. We do not
sustain the Examiner's§ 103(a) rejection.
We agree with Appellant that Westphal is not citing as curing, and
does not cure, the deficiencies of Wood and Heywood, described supra.
App. Br. 28-29. We further find that the combination of Wood, Heywood,
and Westphal fails to disclose all the limitations of claims 28 and 29. We do
not sustain the Examiner's§ 103(a) rejection.
We agree with Appellant that Westphal and Onizuka are not citied as
curing, and do not cure, the deficiencies of Wood and Heywood, described
supra. App. Br. 29. We further find that the combination of Wood,
Heywood, Westphal, and Onizuka fails to disclose all the limitations of
claims 32, 33, 35, and 39. We do not sustain the Examiner's§ 103(a)
rejection.
CONCLUSIONS
1. The claimed invention is directed to a judicial exception.
2. The judicial exception is not integrated into a practical application.
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3. The combination of Wood and Heywood does not disclose or fairly
suggest an entity registered with a reward program of a provider of the
content application.
ORDER
The Examiner's decision to reject claims 1-3, 5-7, 12-18, 23, 25,
27-29, and 32-40 under 35 U.S.C. § 101 is affirmed. The Examiner's
decision to reject claims 1-3, 5-7, 12-18, 23, 25, 27-29, and 32--40 under
35 U.S.C. § 103(a) is 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). See 37 C.F.R.
§ 41.50 (f).
AFFIRMED
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