Ex Parte Canney et al

Patent Trial and Appeal Board

Apr 6, 2018

14316027 (P.T.A.B. Apr. 6, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/316,027 06/26/2014
50437 7590 04/10/2018
DUFT BORNSEN & FETTIG, LLP
1526 SPRUCE STREET
SUITE 302
BOULDER, CO 80302
FIRST NAMED INVENTOR
Jason Canney
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.
CAN-0009 8837
EXAMINER
MENGESHA, MULUGETA A
ART UNIT PAPER NUMBER
2424
NOTIFICATION DATE DELIVERY MODE
04/10/2018 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@dbflaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JASON CANNEY, JOEL HASSELL, SID
GREGORY, CHRIS PIZZURRO, TOM HUBER, and
STEVE MARKEL
Appeal2017-007925 1
Application 14/316,0272
Technology Center 2400
Before JOHNNY A. KUMAR, LARRY J. HUME, and
JOHN D. HAMANN, 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 1-12, 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 Canoe Ventures,
LLC. App. Br. 3.
2 This application is related to Application Ser. No. 14/315,963, Appeal No.
2017-003 63 7, Decision mailed December 4, 2017 (Examiner affirmed).
Appeal2017-007925
Application 14/316,027
STATEMENT OF THE CASE3
The Invention
Appellants' disclosed embodiments and claimed invention "relate[] to
the field of Content On Demand (COD) systems and more specifically to the
modifying asset campaigns of asset managers to improve asset insertion into
COD content selections." Spec. ,-r 2.
Related Case
Although Appellants do not identify it as such (see App. Br. 3) as
required by 37 C.F.R. § 41.37(c)(l)(ii), this Appeal is related to now-
abandoned application Serial No. 14/315,963, Appeal No. 2017-003637, for
which the Decision on Appeal affirming the Examiner was mailed on
December 4, 2017.
Exemplary Claim
Claim 1, reproduced below, is representative of the subject matter on
appeal (emphasis added to contested limitations):
1. A system, comprising:
[LI] a Content On Demand (COD) asset insertion
decision system operable to process a plurality of asset
campaigns from a plurality of asset managers, to process
information from a remote COD content distributer about COD
content selections by a plurality of Customer Premises
Equipment (CPEs), to identify and qualifj; assets of the asset
campaigns for insertion in the COD content selections, and to
3 Our decision relies upon Appellants' Appeal Brief ("App. Br.," filed
Nov. 8, 2016); Reply Brief ("Reply Br.," filed May 3, 2017); Examiner's
Answer ("Ans.," mailed Mar. 3, 2017); Final Office Action ("Final Act.,"
mailed Apr. 26, 2016); and the original Specification ("Spec.," filed
June 26, 2014).
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direct the remote COD content distributor to insert the qualified
assets into the COD content selections; and
[L2] an analytics processor communicatively coupled to
the COD asset insertion decision system and operable to collect
information about the assets inserted in the COD content
selections, to modifY the asset campaigns based on the collected
information, and to present the modified asset campaigns to the
COD asset insertion decision system, wherein
[L3] the COD asset insertion decision system is further
operable to re-qualifY the assets based on the modified asset
campaigns.
Prior Art
The Examiner relies upon the following prior art as evidence in
rejecting the claims on appeal:
Hood US 2008/0046924 Al Feb. 21, 2008
Kitts et al. ("Kitts") US 2014/0101685 Al Apr. 10, 2014
Rejections on Appeal4
RI. Claims 1-12 stand rejected under 35 U.S.C. § 101 as being
directed to patent-ineligible subject matter. Final Act. 7.
R2. Claims 1-12 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Hood and Kitts. Final Act. 10.
4 The Examiner also provisionally rejected claims 1-12 under the judicially-
created doctrine of nonstatutory obviousness-type double patenting as not
being patentably distinct over claims 1-12 of Application No. 14/315,963.
Final Act. 6. We conclude this provisional rejection is now moot, because
Application No. 14/315,963 has been abandoned. See n.2, supra.
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CLAIM GROUPING
Based on Appellants' arguments (App. Br. 5-I6), we decide the
appeal of patent-ineligible subject matter Rejection RI of claims I-I2 on the
basis of representative claim I; and we decide the appeal of obviousness
Rejection R2 of claims I-I2 on the basis of representative claim 1. 5
ISSUES AND ANALYSIS
In reaching this decision, we consider all evidence presented and all
arguments actually made by Appellants. We do not consider arguments
Appellants could have made but chose not to make in the Briefs, and we
deem any such arguments waived. 37 C.F.R. § 41.37(c)(l)(iv).
We disagree with Appellants' arguments with respect to claims I-I2
and, unless otherwise noted, 6 we incorporate by reference herein and adopt
as our own: (1) the findings and reasons set forth by the Examiner in the
5 "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." 37 C.F.R. § 41.37(c)(l)(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, 80I F.2d I324, I325 (Fed. Cir. I986).
6 For Example, with respect to Rejection RI under§ IOI, the Examiner
incorrectly states, "[t]he claim(s) does not fall within at least one of the four
categories of patent eligible subject matter because at least any part of the
claimed invention is directed to a judicial exception of an abstract idea."
Final Act. 7. We disagree with the Examiner's legal conclusion because
claim I is directed to a "system," claim 5 is directed to a "method," and
claim 9 is directed to a "non-transitory computer readable medium," each of
which falls into one of the four categories of statutory subject matter. We
clarify that Rejection RI deals with a patent-ineligible judicial exception to
an otherwise statutory class of subject matter.
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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.
1. § 101 Rejection RI of Claims 1-12
Issue 1
Appellants argue (App. Br. 5-1 O; Reply Br. 2) 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 arguments present us with the
following issue:
Did the Examiner err in concluding representative claim 1 is directed
to an abstract idea without adding significantly more, and thus is patent-
ineligible under § 101?
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. Id.
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The Supreme Court's two-part Mayo/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
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.
Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1334 (Fed. Cir. 2016) (citing
Alice, 134 S. Ct at 2357).
However, 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
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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) (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 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
Our reviewing court has held claims ineligible for being 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. 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. Alice, 134 S. Ct. at 2354 ("[W]e tread
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carefully in construing this exclusionary principle lest it swallow all of
patent law.").
The Examiner concludes the appealed claims are patent-ineligible
because "the claimed invention is directed to a judicial exception of an
abstract idea of inserting assets into content based on a plurality of asset
campaigns, modifying the asset campaigns, presenting the modified asset
campaigns for reviewing." Final Act. 7.
Appellants contend, "[t]he mere fact that a person may describe a
claim in abstract terms does not render that claim unpatentable under§ 101.
Absolutely any claim, including a patentable one, can be rephrased broadly
to include an abstract concept." App. Br. 5. Appellants further argue:
It therefore remains an important duty for the Examiner not to
disregard specifically claimed features when applying the Alice
test. The Examiner must consider the entirety of the claim,
including each specific limitation, when evaluating a claim
under the first part of the Alice test. In regards to inventions
involving computer technology, the Federal Circuit has
clarified that claims directed to software are not inherently
abstract, and has stated that " [ w ]e thus see no reason to
conclude that all claims directed to improvements in computer-
related technology, including those directed to software, are
abstract and necessarily analyzed at the second step of Alice,
nor do we believe that Alice so directs." Enfzsh, slip opinion
at 11.
App. Br. 6.
In addition, Appellants argue claim 1 describes a system to insert
assets from asset campaigns into Content On Demand (COD) content. Id.
"Appellant submits that this intensive task of identifying assets for insertion
into COD content, and modifying asset campaigns based on which assets
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have been inserted, is not a lofty abstract concept, but rather involves a
specific technique to improve the operations of the numerous servers,
computers, and CPEs that handle COD content on a daily basis." 7
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, 83 8 F .3d at
1257 (citation omitted).
Turning to the claimed invention, device claim 1 recites, inter alia, a
system that includes "a Content On Demand (COD) asset insertion decision
system operable ... to identify and qualify assets of the asset campaigns for
insertion in the COD content selections;" "an analytics processor
communicatively coupled to the COD asset insertion decision system and
operable ... to modify the asset campaigns based on the collected
information, and to present the modified asset campaigns to the COD asset
insertion decision system;" "wherein the COD asset insertion decision
7 By emphasis on the alleged improved operations of servers, computers,
and customer premises equipment (CPE) that handle COD content,
Appellants appear to conflate the Alice Step 1 analysis regarding
abstractness with Alice Step 2 analysis for "significantly more," to which
DDR Holdings is directed. See DDR Holdings, LLC v. Hotels.com, L.P.,
773 F.3d 1245 (Fed. Cir. 2014); and see "Alice Step 2-Jnventive Concept"
section, infra. Appellants additionally cite Enfish, LLC v. Microsoft Corp.,
822 F.3d 1327 (Fed. Cir. 2016) in their Appeal Brief (7). However, we find
Appellants' claim 1 is distinguishable over the claim considered by the court
in Enfzsh, which was found to be "directed to an improvement in the
functioning of a computer." Enfzsh, 822 F.3d at 1338. The court in Enfzsh
further noted: "In contrast, the claims at issue in Alice and Versata can
readily be understood as simply adding conventional computer components
to well-known business practices." Id.
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system is further operable to re-qualify the assets based on the modified
asset campaigns."
The Examiner summarizes the Alice Step 1 analysis by stating:
[The claim limitations] correspond to concept identified as
abstract idea by the courts, such as comparing new and stored
information and using rules to identifj; options (SmartGene),
organiz[ing] information through mathematical correlation
(Digitech), displaying an advertisement in exchange for access
to copyrighted media (Ultramerical) etc. The concept described
in claims 1, 5 and 9 is not meaningfully different that those "An
Idea 'Of Itself" found by the courts to be abstract idea. As such,
the description in claim 1, 5 and 9 of inserting assets into
content based on a plurality of asset campaigns, modifying the
asset campaigns, presenting the modified asset campaigns to the
COD insertion system can be performed by human using a pen
and paper, or human mind. For example, a campaign manager
can modifj; the campaigns manually, and provide a modified
asset campaigns to the asset managers verbally or written with
paper and pen, and perform the steps of listing orderly where
the media assets (i.e. commercial) insert into media content
based on a plurality of asset campaigns feedback without a
computer.
Ans. 3--4.
Under step one, we agree with the Examiner that the inventions
claimed in each of independent claims 1, 5, and 9 are directed to one or more
abstract ideas (i.e., comparing new and stored information and using rules to
identify options, organizing information through mathematical correlation,
and/or displaying an advertisement in exchange for access to copyrighted
media), which we consider, in this case, to be systems and methods of
organizing human activities pertaining to advertising by modifying,
presenting, and inserting assets into asset campaigns. See Ans. 2 et seq.
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As the Specification itself observes, "[t]he invention relates to the
field of Content On Demand (COD) systems and more specifically to the
modifying asset campaigns of asset managers to improve asset insertion into
COD content selections." Spec. i12. 8
We find this type of activity, i.e., collecting information for managing
advertising or asset campaigns includes longstanding conduct that existed
well before the advent of computers and the Internet, and 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."). 9
8 See also Spec. 41 ("Abstract"):
One embodiment herein includes a Content On Demand (COD)
asset insertion system that is operable to process a plurality of
asset campaigns from a plurality of asset managers, to process
information from a remote COD content distributer about COD
content selections by a plurality of Customer Premises
Equipment (CPEs), to identify and qualify assets of the asset
campaigns for insertion in the COD content selections, and to
direct the remote COD content distributor to insert the qualified
assets into the COD content selections. The embodiment also
includes an analytics processor that is operable to collect
information about the assets inserted in the COD content
selections, to modify the asset campaigns based on the collected
information, and to present the modified asset campaigns to the
COD asset insertion decision system. The COD asset insertion
decision system is further operable to re-qualify the assets
based on the modified asset campaigns.
9 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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Our reviewing court has previously held other patent claims ineligible
for reciting similar abstract concepts. For example, although the Supreme
Court has enhanced the § 101 analysis since CyberSource in cases like Mayo
and Alice, they continue 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 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 this regard, the claims are similar to claims our reviewing court has
found patent-ineligible in 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").
Therefore, in agreement with the Examiner, we conclude claim 1
involves nothing more than collecting and processing information "to
identify and qualify assets of the asset campaigns for insertion in the COD
content selections," and "to modify the asset campaigns based on the
collected information" without any particular inventive technology-an
abstract idea. See Elec. Power Grp., 830 F.3d at 1354. We further refer to
Content Extraction, where the Federal Circuit has provided additional
guidance on the issue of eligible subject matter by holding claims to
collecting data, recognizing certain data within the collected data set, and
storing that recognized data in memory were directed to an abstract idea and
therefore unpatentable under § 101. Content Extraction & Transmission
LLC v. Wells Fargo Bank, N.A., 776 F.3d 1343 (Fed. Cir. 2014).
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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) (citation omitted). 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 more than "well-understood, routine, conventional activity." Mayo,
566 U.S. at 79.
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 "comparing new and stored information and
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using rules to identify options" (Ans. 4--5) into a patent-eligible application
of that abstract idea. See also Final Act. 7-8. 10
Appellants allege:
[I]nserting assets into COD content for delivery to CPEs (user
devices that are electronic) cannot be done using a pen and
paper, as the Examiner contends on page 3 of the Examiner's
answer, because the COD content (and the inserted assets) are
electronic signals. Second, the CPEs receiving COD content
can number in the millions. The Appellant contends that no
human could conceivably direct asset insertion into millions of
COD content being delivered to millions of devices. And, even
if only one CPE was involved, it would not be feasible for a
human to direct the asset insertion into COD content across a
networked system involved in COD content delivery as would
be understood by one skilled in the art.
Reply Br. 2. We disagree with Appellants' contentions.
10 The Examiner concludes claim 1 is directed to generic computer elements
because:
[T]he claim limitations do not add a meaningful limitation to
the abstract idea because they would be routine in any computer
implementation ... [and] do not add more to the abstract idea
as these limitations when given their broadest reasonable
interpretation are merely deemed to be performed on a generic
computer as described in the [S]pecification according to Fig.1,
Fig. 2, and paragraphs [0028-0042], which is shown to
perform in the conventional manner and has not shown any
unconventional use and/or improvement of the computer
structure/system .... There is no indication that the
combination of elements improve the functioning of a computer
or improve any other technology. Their collective function
merely provide conventional computer implementation.
Therefore, at least the above reasons, the claims 1-12 are
rejected under 35 U.S.C. 101 as being directed to non-statutory
subject matter.
Ans. 4--5.
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We disagree because, as our reviewing court held in Fair Warning:
While the claimed system and method certainly purport to
accelerate the process of analyzing audit log data, the speed
increase comes from the capabilities of a general-purpose
computer, rather than the patented method itself. See
Bancorp Servs., L.L. C. v. Sun Life Assurance Co. of Can.
(U.S.), 687 F.3d 1266, 1278 (Fed. Cir. 2012) ("[T]he fact that
the required calculations could be performed more efficiently
via a computer does not materially alter the patent eligibility of
the claimed subject matter.").
FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1095 (Fed.
Cir. 2016) (emphases added).
We agree with the Examiner because, as in Alice, we find the
recitation of a "Content On Demand (COD) asset insertion decision system"
and "an analytics processor communicatively coupled to the COD assert
insertion decision system" that process information (claim 1 ); and
"processing a plurality of asset campaigns ... [and] information" (claims 5
and 9) 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."). 11
11 Appellants allege:
inserting assets into COD content for delivery to CPEs (user
devices that are electronic) cannot be done using a pen and
paper, as the Examiner contends on page 3 of the Examiner's
answer, because the COD content (and the inserted assets) are
electronic signals. Second, the CPEs receiving COD content
can number in the millions. The Appellant contends that no
human could conceivably direct asset insertion into millions of
COD content being delivered to millions of devices. And, even
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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 2-9,
17-21, 25-28, 30, and 34--37, not argued separately, and which fall
therewith. See Claim Grouping, supra.
2. § 103 Rejection R2 of Claims 1-12
Issue 2
Appellants argue (App. Br. 10-16; Reply Br. 2-3) the Examiner's
rejection of claim 1 under 35 U.S.C. § 103(a) as being obvious over the
combination of Hood and Kitts is in error. These contentions present us
with the following issue:
Did the Examiner err in finding the cited prior art combination teaches
or suggests a system that includes, inter alia, limitation L 1, "a Content On
Demand (COD) asset insertion decision system operable ... to identify and
qualify assets of the asset campaigns for insertion in the COD content
selections;" limitation L2, "an analytics processor communicatively coupled
to the COD asset insertion decision system and operable ... to modify the
asset campaigns based on the collected information, and to present the
modified asset campaigns to the COD asset insertion decision system," and
limitation L3 "wherein the COD asset insertion decision system is further
if only one CPE was involved, it would not be feasible for a
human to direct the asset insertion into COD content across a
networked system involved in COD content delivery as would
be understood by one skilled in the art.
Reply Br. 2.
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operable to re-qualify the assets based on the modified asset campaigns," as
recited in claim 1?
Analysis
Appellants first contend " [ o ]ne issue is whether the Examiner has
identified where each and every element of the Appellant's claims is taught
by the cited references .... The burden of proving anticipation of a claim
therefore rests with the Examiner." App. Br. 10 (emphasis added). We note
the rejection is for obviousness under§ 103, and not for anticipation under
§ 102.
The Cited Prior Art Teaches or Suggests all Limitations
Limitation LI: COD asset insertion decision system
Appellants argue Hood makes no mention of "asset campaigns" but
instead, refers to "auction campaigns" that determine auction operation for
"avails" or open timeslots. App. Br. 11.
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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We note Appellants have not cited to a definition of "asset campaigns"
in the Specification that would preclude the Examiner's broader reading of
the recited "Content On Demand (COD) asset insertion decision system"
onto Hood's "auction campaign manager" that manages video on demand
auction campaigns. 12 Final Act. 10 (citing, inter alia, Hood i-fi-1 40-45);
Ans. 5-10.
Limitation L2: Analytics Processor to Modifj; Asset Campaigns
The Examiner finds Hood teaches "an analytics processor
communicatively coupled to the COD asset insertion decision system."
Final Act. 10 (citing Hood Fig. 2, "Ad Decision Service" 204 coupled to
"Auction Campaign Manager" 210; i-fi-143, 45).
With respect to the Examiner's reliance on Kitts for teaching or
suggesting optimizing or modifying asset campaigns via Hood's analytics
processor, Appellants contend:
Kitts cannot disclose the modification of asset campaigns based
on information collected from COD content selections because
Kitts is not related to on-demand content (e.g., COD). Kitts is
directed to tracking advertisements in real time television
broadcasts (a.k.a. linear advertising). In fact, Kitts does not
even use the terms "COD", or "VOD" (Video On Demand).
And, Kitts' only use of the term "demand" regards a market
12 Any special meaning assigned to a term "must be sufficiently clear in the
specification that any departure from common usage would be so understood
by a person of experience in the field of the invention." Multiform
Desiccants Inc. v. Medzam Ltd., 133 F.3d 1473, 1477 (Fed. Cir. 1998); see
also Helmsderfer v. Bobrick Washroom Equip., Inc., 527 F.3d 1379, 1381
(Fed. Cir. 2008) ("A patentee may act as its own lexicographer and assign to
a term a unique definition that is different from its ordinary and customary
meaning; however, a patentee must clearly express that intent in the written
description.").
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Appeal2017-007925
Application 14/316,027
demand (see e.g., paragraph [0171] of Kitts). The Appellant's
claim explicitly states that the asset campaigns are modified
based on the collected information and that collected
information regards assets that are inserted into COD content
selections.
App. Br. 11.
The Examiner summarizes the pertinent findings of obviousness under
§ 103 by stating:
In general, Hood discloses an advertising insertion within the
VOD system ... and Kitts discloses tracking of advertisement
campaign for a product or service, and adjust and/or modify
advertisement campaign based on tracking information
collected. Therefore, Hood in view of Kitts clearly teach
content on demand and modifying asset campaigns based on
information collected for COD asset insertion.
Ans. 10.
Appellants' contention regarding Kitts not being directed to content on
demand does not persuade us of error on the part of the Examiner because
Appellants are responding to the rejection by attacking the references
separately, even though the rejection is based on the combined teachings of
the references. Nonobviousness cannot be established by attacking the
references individually when the rejection is predicated upon a combination
of prior art disclosures. See In re Merck & Co. Inc., 800 F .2d 1091, 1097
(Fed. Cir. 1986).
Limitation L3: Requalification of Assets
The Examiner finds Kirk teaches or suggests the asset insertion
decision system re-qualifies the assets based upon the modified asset
campaigns. Final Act. 10-11 (citing Kirk i-fi-f 13, 53-54, 231-236; Fig. 17);
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see also Ans. 7. 11 [Kirk] compares the one or more sales metrics to one or
more sales goals for the product or service ... , and identifies an adjustment
to the first advertisement campaign that will cause the one or more sales
metrics to more closely meet the one or more sales goals. 11 Ans. 8 (emphasis
omitted). We find this disclosure of Kirk teaches or at least suggests re-
qualification of assets, i.e., re-qualifying advertising campaigns.
Therefore, based upon the findings above, on this record, we are not
persuaded of error in the Examiner's reliance on the cited prior art
combination to teach or suggest the disputed limitations of claim 1, nor do
we find error in the Examiner's resulting legal conclusion of obviousness.
Therefore, we sustain the Examiner's obviousness rejection of independent
claim 1, and grouped claims 2-12 which fall therewith. See Claim
Grouping, supra.
REPLY BRIEF
To the extent Appellants may advance new arguments in the Reply
Brief (Reply Br. 2-3) not in response to a shift in the Examiner's position in
the Answer, we note arguments raised in a Reply Briefthat were not raised
in the Appeal Brief or are not responsive to arguments raised in the
Examiner's Answer will not be considered except for good cause (see 37
C.F.R. § 41.41(b)(2)), which Appellants have not shown.
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Appeal2017-007925
Application 14/316,027
CONCLUSIONS
(1) The Examiner did not err with respect to patent-ineligible
subject matter Rejection RI of claims 1-12 under 35 U.S.C. § 101), and we
sustain the rejection.
(2) The Examiner did not err with respect to obviousness Rejection
R2 of claims 1-12 under 35 U.S.C. § 103(a) over the cited prior art
combination of record, and we sustain the rejection.
DECISION
We affirm the Examiner's decision rejecting claims 1-12.
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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