Ex Parte Carter et al

Patent Trials and Appeals Board

Feb 25, 2019

13223212 - (D) (P.T.A.B. Feb. 25, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/223,212 08/31/2011
72058 7590 02/27/2019
Kilpatrick Townsend & Stockton LLP
Adobe Systems, Inc. 58083
Mailstop: IP Docketing - 22
1100 Peachtree Street, Suite 2800
Atlanta, GA 30309-4530
FIRST NAMED INVENTOR
Jason A. Carter
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.
58083-857784 (B 1405) 6888
EXAMINER
BUSCH, CHRISTOPHER CONRAD
ART UNIT PAPER NUMBER
3681
NOTIFICATION DATE DELIVERY MODE
02/27/2019 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 JASON A. CARTER, KENT McLEAN, and
DARREN R. NOBLE 1
Appeal2017-003695
Application 13/223,212
Technology Center 3600
Before CARL W. WHITEHEAD JR., BRADLEY W. BAUMEISTER, and
MICHAEL J. STRAUSS, Administrative Patent Judges.
BAUMEISTER, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
Final Rejection of claims 1-9 and 11-15. App. Br. 2. 2 We have jurisdiction
under 35 U.S.C. § 6(b ).
We affirm.
1 Appellants list Adobe Systems Incorporated as the real party in interest.
Appeal Brief filed April 20, 2016 ("App. Br.") 1.
2 Rather than repeat the Examiner's positions and Appellants' arguments in
their entirety, we refer to the above-mentioned Appeal Brief, as well as the
following documents, for their respective details: the Final Action mailed
Sept. 25, 2015 ("Final Act."); the Examiner's Answer mailed Nov. 4, 2016
("Ans."); and the Reply Brief filed December 19, 2016 ("Reply Br.").
Appeal2017-003695
Application 13/223,212
STATEMENT OF THE CASE
Appellants describe the present invention as follows:
Methods and apparatus for various embodiments of an
automated campaign generation tool for creating content given
one or more sources of data. The campaign generation tool may
provide an interface to guide a user through a series of steps by
which an automated content generation task is specified and
created, such that when the automated content generation task is
executed, one or more content objects may be generated in order
to be provide[d] to a search engine. By automating the content
generation, a user may be able to manage a large and frequently
updated source of data.
Abstract.
Independent claim 1, reproduced below, illustrates the claimed
invention:
A computer-implemented method, comprising:
receiving, at a computing device hosting an automated
online advertising campaign generation tool, one or more source
feeds of structured data comprising price information for
products;
analyzing, by a structured data analyzer of the automated
online advertising campaign generation tool, the structured data
to determine one or more feed elements from which to generate
online advertising content;
accessing, by a mapping analyzer of the automated online
advertising campaign generation tool, a mapping of feed
elements to dynamic parameters for one or more campaign
content generation templates specified for the one or more source
feeds, wherein a dynamic parameter defines a mathematical
express10n;
for each specified campaign content generation template,
automatically generating new online advertising content based
on:
the template;
2
Appeal2017-003695
Application 13/223,212
a calculation of new pnce information for the
products using the mathematical expression and at least a
portion of the received price information; and
the structured data according to the mapping for the
corresponding template; and
providing the generated online advertising content to a
search engine configured to associate the generated online
advertising content with search results.
Claims 1-9 and 11-15 stand rejected under 35 U.S.C. § 101 as being
directed to patent-ineligible subject matter. Final Act. 2--4. 3
Claims 1-5, 7-9, and 11-15 stand rejected under 35 U.S.C. § I03(a)
as unpatentable over Zlotin (US 2007 /0233566 Al; published Oct. 4, 2007),
Skillen (US 2009/0192899 Al; published July 30, 2009), Ferber
(US 2005/0171844 Al; published Aug. 4, 2005), and Ekholm
(US 2012/0084173 Al; published April 5, 2012). Final Act. 5-9.
Claim 6 stands rejected under 35 U.S.C. § I03(a) as unpatentable over
Zlotin, Skillen, Ferber, Ekholm, and Shah (US 8,650,066 B2; issued Feb. 11,
2014). Final Act. 9. 4
3 The Examiner incorrectly states in the Final Action that claims 44--65 are
rejected under 35 U.S.C. § 101, but these claims previously were canceled
and are not under consideration. See App. Br. 6 (noting that claims 44--65
no longer are pending in the application and that Appellants understand the
Examiner to be referring to claims 1-9 and 11-15); see also Final Act. 4
(stating that the "claims"-in the plural----do not add meaningful limitations
and, thereby, indicating that all of the pending claims are subject to the
patent-ineligibility rejection); Ans. 2-8 (not addressing Appellants'
observation about the misnumbering of the rejected claims). Accordingly,
we understand the Examiner's listing of claims 44--65 to constitute a clerical
error intending to recite pending claims 1-9 and 11-15.
4 The Final Rejection states that claim 6 stands rejected under the
combination of merely Zlotin and Shah and that claim 9 stands rejected over
3
Appeal2017-003695
Application 13/223,212
Claim 9 stands rejected under 35 U.S.C. § I03(a) as unpatentable over
Zlotin, Skillen, Ferber, Ekholm, and Liu (US 2005/0154746 Al; published
July 14, 2005). Final Act. 9-10.
Claims 10 and 16-20 are withdrawn from consideration. Id. at 2.
We review the appealed rejections for error based upon the issues
identified by Appellants, and in light of the arguments and evidence
produced thereon. Ex parte Frye, 94 USPQ2d 1072, 107 5 (BP AI 2010)
(precedential).
THE 101 REJECTION
Determinations and Contentions
The Examiner finds that the claims are directed a process of
"[ a ]nalyzing ad[ vertisement] data; mapping the elements of the data;
creating a new ad based on a template; and providing the ad to users via
search results." Final Act. 3. The Examiner determines that these steps are
directed to multiple abstract ideas: a fundamental economic practice, as well
as the concepts of comparing new and stored information and using rules to
identify options, creating contractual relationships, processing information
through a clearinghouse, and organizing information through mathematical
correlations. Id. at 2-3.
The Examiner also determines that "the claims fail to effect an
improvement ... to the functioning of the computer itself," but instead
the combination of Zlotin and Liu. Final Act. 9. Because claims 6 and 9
depend from claim 1, though, we understand these assertions to constitute
clerical errors intending to state that the rejections are over the combination
of all of Zlotin, Skillen, Ferber, Ekholm, and either Shah or Liu,
respectively.
4
Appeal2017-003695
Application 13/223,212
merely use the abstract idea in a particular technological environment. Id. at
3--4. The Examiner further determines that "the claims do not include
additional elements that are sufficient to amount to significantly more than
the judicial exception because the claims merely amount to the application
or instructions to apply the abstract idea" using "generic computer
functionalities [that were] well-understood, routine[,] and conventional
activities previously known to the industry." Id. at 3.
Appellants contend that the Examiner fails to establish a prima facie
showing of subject-matter ineligibility (App. Br. 6-8; Reply Br. 2-5), that
"the claims are not directed to an abstract idea" (App. Br. 8-9; Reply
Br. 6-10), and that even assuming the claims are directed to an abstract idea,
the claims amount to significantly more than the abstract idea (App. Br. 9-
12). We address the details of each of these arguments individually in the
Analysis section, below.
Principles of Law
A. SECTION 101
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. 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
Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66 (2012), and
Alice. 573 U.S. at 217-18 (citing Mayo, 566 U.S. at 75-77). In accordance
5
Appeal2017-003695
Application 13/223,212
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. 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 (Gottschalkv. 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 182 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 U.S. at 187; see also id. at 191 ("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
6
Appeal2017-003695
Application 13/223,212
to limit the use of the formula to a particular technological environment."
Id. (internal citation omitted) ( citing Benson and Flook); see, e.g., id. at 187
("It is now commonplace that an application of a law of nature or
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 ( citation 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. (alterations in original) (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.
B. USPTO SECTION l 01 GUIDANCE
The United States Patent and Trademark Office ("USPTO" or "the
Office") recently published revised guidance on the application of§ 101.
2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50
(Jan. 7, 2019) ("Memorandum" or "Office Guidance"). Under that
guidance, we first look to whether the claim recites the following:
( 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
7
Appeal2017-003695
Application 13/223,212
(2) additional elements that integrate the judicial exception into a
practical application (see MPEP § 2106.0S(a}-(c), (e}-(h)). 5
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 is not
"well-understood, routine, conventional" in the field (see MPEP
§ 2106.0S(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.
Analysis
I.
Appellants assert that the Examiner failed to establish a prima facie
showing that the claims are directed to patent-ineligible subject matter. We
disagree. The Examiner specifically stated what the abstract idea
purportedly is: a process of"[ a ]nalyzing ad[ vertisement] data; mapping the
elements of the data; creating a new ad based on a template; and providing
the ad to users via search results." Final Act. 3. The Examiner also
identified the specific concepts of the abstract ideas to which the claimed
method corresponds. Specifically, the Examiner determines that these steps
are directed to a fundamental economic practice, as well as the concepts of
comparing new and stored information and using rules to identify options,
5 We acknowledge that some of these considerations may be evaluated
properly under Step 2 of Alice (Step 2B of the Office Guidance). Solely for
purposes of maintaining consistent treatment within the Office, we evaluate
this inquiry under Step 1 of Alice (Step 2A of the Office Guidance).
8
Appeal2017-003695
Application 13/223,212
creating contractual relationships, processing information through a
clearinghouse, and organizing information through mathematical
correlations. Id. at 2-3.
The new Office Guidance sets forth a limited set of concepts upon
which the Examiner may rely in determining that the claims are directed to
an abstract idea:
In accordance with judicial precedent and in an effort to improve
consistency and predictability, the 2019 Revised Patent Subject
Matter Eligibility Guidance extracts and synthesizes key
concepts identified by the courts as abstract ideas to explain that
the abstract idea exception includes [ a specified listing ofJ
groupings of subject matter, when recited as such in a claim
limitation(s) (that is, when recited on their own or per se) ....
Office Guidance, 50 Fed. Reg. at 52.
These concepts include mental processes such as forming an
observation, evaluation, or judgment (id.), as well as mathematical concepts
like mathematical relationships, formulas, and calculations (id.). As such,
the Examiner's determination that the claims are directed to at least these
mental processes and mathematical concepts establishes a prima facie
showing that the claims are directed to those abstract ideas that are
recognized by the Office. The burden of rebuttal is shifted to Appellants.
II.
Appellants next present various arguments for why the claims are not
directed to an abstract idea. For example, Appellants argue that "the claims
relate to improving the operations of a search engine by providing [ specified
automated] online advertising content to the search engine" and that "[ s ]uch
features do not meet the ... definition of a fundamental economic practice
judicial exception." App. Br. 8. These arguments are unpersuasive at least
9
Appeal2017-003695
Application 13/223,212
because claim 1, in fact, is not directed to an improvement in a search engine
itself.
Independent claim 1 does not even claim the operation of a search
engine. Claim 1 instead recites steps for receiving structured data,
evaluating the data, using mathematical relationships to generate online
advertising content, and providing this generated content to search engines
for the search engine's subsequently intended, but unclaimed, use. These
claimed method steps may fall within the field of use of search-engine
technology, but the method steps do not recite an improvement in search-
engine technology, itself.
Appellants also argue that "the claims are more limited in scope than
the alleged abstract idea and do not create a risk of tying up the alleged
abstract idea." Id. at 9. We recognize that the Supreme Court has described
"the concern that drives this exclusionary principle [i.e., the exclusion of
abstract ideas from patent eligible subject matter] as one of pre-emption."
Alice, 573 U.S. at 216. However, characterizing preemption as a driving
concern for patent eligibility is not the same as characterizing preemption as
the sole test for patent eligibility. As our reviewing court has explained:
"The Supreme Court has made clear that the principle of preemption is the
basis for the judicial exceptions to patentability" and "[f]or this reason,
questions on preemption are inherent in and resolved by the§ 101 analysis."
Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed.
Cir. 2015) (citing Alice, 573 U.S. at 216). Although "preemption may signal
patent ineligible subject matter, the absence of complete preemption does
not demonstrate patent eligibility." Id.
10
Appeal2017-003695
Application 13/223,212
In their Reply Brief, Appellants subsequently argue that more recent
decisions of our reviewing court also support their position that the claims
are directed to an improvement in computer-related technology-not to an
abstract idea. Reply Br. 6-9 ( citing Enfzsh, LLC v. Microsoft Corp., 822
F.3d 1327 (Fed. Cir. 2016); McRO, Inc. v. Bandai Namco Games America
Inc., 837 F.3d 1299 (Fed. Cir. 2016); Bascom Global Internet Services, Inc.
v AT&T Mobility LLC, 827 F.3d 1341 (Fed. Cir. 2016)). Appellants contend
that "'a claim is directed to an improvement in computer-related technology'
when there is an indication of ... 'a particular solution to a problem or a
particular way to achieve a desired outcome defined by the claimed
invention, as opposed to merely claiming the idea of a solution or
outcome."' Reply Br. 6-7 ( quoting The Bahr Memorandum, Recent Subject
Matter Eligibility Decisions, dated Nov. 2, 2016),
https ://www. uspto. gov/ sites/ default/files/ documents/McRo-Bascom-
Memo. pdf).
Applying this principle to the present appeal, Appellants contend that
their Specification identifies two problems to be resolved:
Given large and frequently updated streams of content, search
engine marketers may quickly become overwhelmed with the
burden of producing advertising campaign objects for the many
items of content coming in. Further, for any given content
source, a search marketer may need to create a large number of
varying advertising campaign objects that may be used by a
search engine to advertise the content on which the advertising
campaign is based.
Reply Br. 8 ( quoting Spec. ,r 1 ).
Appellants contend that their Specification thus describes-and their
claims capture-a particular way to solve this problem and achieve the
desired outcome:
11
Appeal2017-003695
Application 13/223,212
• analyzing, by a structured data analyzer of the automated
online advertising campaign generation tool, the structured
data to determine one or more feed elements from which to
generate online advertising content;
• accessing, by a mapping analyzer of the automated online
advertising campaign generation tool, a mapping of feed
elements to dynamic parameters for one or more campaign
content generation templates specified for the one or more
source feeds, wherein a dynamic parameter defines a
mathematical expression;
• automatically generating new online advertising content
based on:
o the template;
o a calculation of new price information for the products
using the mathematical expression and at least a portion of
the received price information; and
o the structured data according to the mapping for the
corresponding template.
Reply Br. 8.
This argument is unpersuasive because, as noted above, the recited
steps are not directed to search-engine technology, much less any
improvement to search-engine technology. More generally, Appellants also
provide insufficient arguments or evidence that the claims are directed to an
improvement in the functioning of a computer for data gathering, data
processing, or any technical field or endeavor. See generally App. Br.;
Reply Br. For example, Appellants recite various components that are used
in the claimed method. See, e.g., App. Br. 11 (stating that the invention uses
a campaign content generation template). But stating that the invention uses
a component to improve an unclaimed search engine, is not the same as
presenting arguments persuasively explaining why any of the claimed
components, themselves, possess or implement a technical improvement.
12
Appeal2017-003695
Application 13/223,212
Appellants do not assert that the present invention improves the
functioning of known structured-data analyzers, mapping analyzers, or
automated-content generators. See generally App. Br.; Reply Br. Restated,
Appellants provide insufficient arguments or evidence that the claims are
directed to a particular machine or transformation, or that the claims include
any meaningful limitations beyond the abstract idea. Id. We, therefore,
agree with the Examiner that "the claims fail to effect an improvement ... to
the functioning of the computer itself," but, instead, merely use the abstract
idea in a particular technological environment. Final Act. 3--4.
Furthermore, claim 1 's first step of "receiving ... one or more source
feeds of structured data" reasonably can be characterized as merely
constituting insignificant pre-solution activity:
An example of pre-solution activity is a step of gathering data for
use in a claimed process, e.g., a step of obtaining information
about credit card transactions, which is recited as part of a
claimed process of analyzing and manipulating the gathered
information by a series of steps in order to detect whether the
transactions were fraudulent.
MPEP § 2106.05(g).
Similarly, claim 1 's final step of "providing the generated online
advertising content to a search engine" does not add any meaningful
limitations to the abstract idea because it reasonably may be characterized as
merely being directed to the insignificant post-solution activity of
transmitting data. E.g., Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229,
1241--42 (Fed. Cir. 2016) (holding that printing or downloading generated
menus constituted insignificant extra-solution activity).
13
Appeal2017-003695
Application 13/223,212
III.
The Examiner further determines that "the claims do not include
additional elements that are sufficient to amount to significantly more than
the judicial exception because the claims merely amount to the application
or instructions to apply the abstract idea" using "generic computer
functionalities [ that were] well-understood, routine[,] and conventional
activities previously known to the industry." Final Act. 3.
Appellants argue that even if the claims can be characterized as being
directed to an abstract idea, "[t ]he claims also add specific limitations other
than what is well-understood, routine, and conventional in the field." App.
Br. 9. Appellants again contend that the claim limitations discussed above
"improv[ e] operations of a search engine based on automatic generation of
online advertising content." Id.
For the reasons set forth above, we again disagree. No search engine
is actually claimed. And even if a search engine were claimed, Appellants
do not provide persuasive evidence that the technology of the search engine,
itself, has been altered or improved. See generally App. Br.; see also Spec.
Rather, the claims are directed towards making the preliminary acts of data
gathering, evaluation, and organization more efficient by automating these
tasks through the use of computer components.
Furthermore, Appellants' Specification indicates that the computer
components used to implement the invention are conventional:
In various embodiments, the computer system may be a
uniprocessor system including one processor, or a multiprocessor
system including several processors ( e.g., two, four, eight, or
another suitable number). The processors may be any suitable
processor capable of executing instructions. For example, in
various embodiments, the processors may be general-purpose or
14
Appeal2017-003695
Application 13/223,212
embedded processors implementing any of a variety of instruction
set architectures (ISAs ), such as the x86, Power PC, SP ARC, or
MIPS IS As, or any other suitable ISA. In multiprocessor systems,
each of processors may commonly, but not necessarily,
implement the same ISA.
Spec. ,r 75; see generally id. ,r,r 73-83 (reciting an array of conventional
computer components that can be employed in the present system).
IV.
Appellants separately argue that dependent claim 9 is directed to
significantly more than an abstract idea because that claim additionally
recites determining a relevancy measure of keywords and determining a
suitability score for the generated online advertising content. App. Br. 11.
Appellants contend that these limitations improve the technology and
operations of existing search engines. Id. at 11-12.
This argument is unpersuasive for the reasons set forth above in
relation to independent claim 1 and the other claims. The argued
determining steps are not directed to the technology of the search engine,
itself. Moreover, these steps also reasonably may be characterized as being
directed to mental evaluations or mathematical calculations.
Conclusions
For the foregoing reasons, Appellants have not persuaded us either
that the Examiner erred in determining that the claims are directed to patent-
ineligible subject matter or that the Examiner failed to comply with the
Office Guidelines. Accordingly, we sustain the § 101 rejection of claims 1
and 9, as well as claims 2-8 and 11-15, which are not argued separately
from claim 1. See 37 C.F.R. § 4I.37(c)(l)(iv).
15
Appeal2017-003695
Application 13/223,212
THE 103 REJECTIONS
Determinations and Contentions
The Examiner finds that Zlotin discloses the steps of receiving a
source of structured data comprising price information; analyzing the data
and accessing a map of feed elements to dynamic parameters for one or
more content generation templates specified for the source feed; generating
content based on the template and data from the structured data; and
providing the content to a search engine. Final Act. 5 ( citing Zlotin ,r,r 35,
50, 52, 53, 55, 62; Figs. 3-5; claim 24). The Examiner relies on Skillen for
teaching the step of providing advertisements to a search engine that is
configured to associate the content with search results. Id. ( citing Skillen
,r 36). The Examiner cites Ferber for teaching a method in which a dynamic
parameter defines a mathematical expression, and a method for calculating a
new price for a product using a mathematical expression that incorporates
prior pricing information. Id. at 6 (citing Ferber ,r,r 10, 24, 38, 47, 49). The
Examiner relies on Ekholm for teaching a method in which initial pricing
information for products is received, and the pricing is calculated/adjusted
according to dynamic parameters. Id. ( citing Ekholm ,r 89). The Examiner
also determines that motivation existed to combine the four cited references
in a manner that renders obvious independent claim 1. Id. at 2-7.
Appellants argue:
[T]he [determinations] of obviousness is erroneous because
(1) the cited references do not teach or suggest generating new
online advertising content based on a calculation of new price
information for products using a mathematical expression and at
least a portion of received price information, (2) the Examiner
16
Appeal2017-003695
Application 13/223,212
failed to establish a prima facie case of obviousness, and because
(3) the cited references are not properly combinable.
App. Br. 12.
In relation to the first argument, Appellants further assert that
although Ekholm describes price updates over time, Ekholm's
price is a price of the item on the virtual market and not a price
that is advertised in an online advertisement. In other words, the
combination of Zlotin and Ekholm does not disclose
automatically generating new online advertising content based
on a calculation of new price information for the products using
the mathematical expression and at least a portion of the received
price information as recited in the independent claims. Instead,
the combination discloses a price of an item that is updated over
time, where the price is shown on a virtual market that sells the
item based on a quote request from a customer.
Id. at 13.
Analysis
We disagree with the Examiner's conclusion that the relied upon
teachings of Zlotin and Ekholm, when combined, "sufficiently constitut[ e] a
prima facie case for obviousness." Ans. 9. The relied upon passages of
Zlotin that discuss pricing more specifically relate to prices that retailers and
promotors bid for keywords used to populate templates. E.g., Zlotin ,r 35.
On the other hand, the passage of Ekholm relied upon by the Examiner reads
as follows:
Once the initial price of the items of goods 633 is set,
communicated ( e.g. presented at the homepage, or broadcasted
to the nodes in the system) on the virtual market, the algorithms
for the dynamical pricing method determined and the commence
starts, this price is continuously updated as a dynamic price. If a
customer ( e.g. a node in the system) initiates a request to order,
17
Appeal2017-003695
Application 13/223,212
"quote", the dynamic price is presented as a temporary frozen
price during a limited time period, L1Vreeze·
Ekholm ,r 89.
That is, Ekholm teaches a governing node 600 of a computer network
that provides dynamic price quotes directly to customers associated with the
other nodes of the network 200, 300, 400, 500. Ekholm ,r 53; Fig. 1.
Neither Zlotin nor Ekholm teaches accessing a mapping of feed elements to
dynamic parameters for campaign content generation templates-at least not
wherein the templates are used for automatically generating new online
advertising content that is provided to a search engine, as recited in claim 1.
The Examiner's combination of the cited references to teach the recited
claim elements, instead, appears to be the product of impermissible
hindsight.
Accordingly, we do not sustain the obviousness rejection of
independent claim 1 or of independent claim 11, which recites similar
language. We likewise do not sustain the obviousness rejection of
claims 2-5, 7, 8, 12-15, which depend from claims 1 and 11.
With respect to the remaining obviousness rejections of claims 6
and 9, the Examiner does not rely on either Shah or Liu to cure the noted
deficiency noted above in relation to claim 1. See Final Act. 9-10.
Accordingly, we, likewise, do not sustain the obviousness rejections of
claims 6 and 9 for the reasons set forth in relation to claim 1.
CONCLUSIONS
We sustain the rejection of claims 1-9 and 11-15 under§ 101.
We do not sustain the rejection of claims 1-9 and 11-15 under§ 103.
18
Appeal2017-003695
Application 13/223,212
DECISION
The Examiner's decision rejecting claims 1-9 and 11-15 is affirmed.
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). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED
19