Ex Parte Cassidy et al

Patent Trial and Appeal Board

Sep 24, 2018

13112751 (P.T.A.B. Sep. 24, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/112,751 05/20/2011 Sukhinder Singh Cassidy
7590 09/25/2018
NICK !ONITA, CEO
TIQUE NETWORK
1940 BRYANT STREET
SAN FRANCISO, CA 94110
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.
60381-0013 8106
EXAMINER
SORKOWITZ, DANIEL M
ART UNIT PAPER NUMBER
3681
MAIL DATE DELIVERY MODE
09/25/2018 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SUKHINDER SINGH CASSIDY and DIANA LYNN WILLIAMS
Appeal2017-007166
Application 13/112,751 1
Technology Center 3600
Before KENNETH G. SCHOPPER, BRADLEY B. BAY AT, and
ROBERT J. SILVERMAN, Administrative Patent Judges.
SILVERMAN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
decision rejecting claims 1, 4---6, and 21-27. We have jurisdiction under 35
U.S.C. § 6(b ).
We AFFIRM.
1 The Appellants identify Joyus, Inc. as the real party in interest.
Appeal Br. 1. USPTO assignment records identify Tigue Inc. as the
assignee (reel/frame number 044186/0698, recorded November 21, 2017).
Appeal2017-007166
Application 13/112,751
ILLUSTRATIVE CLAIM
1. A system for marketing products to customers,
compnsmg:
an Internet-connected server; and
software executing on the server from a non-transitory
physical medium, the software providing:
using the server, receiving, from memory of a computer
of an individual customer, data specifying likes and dislikes
relative to future content and storing, in memory of the server,
the likes and dislikes in a profile specific to the individual
customer;
using the server, generating an interactive sales portal on
a computer display screen comprising a video window
displaying video of products for sale and interactive indicia
specific to individual ones of displayed products, the indicia
each associated with a fast link to checkout that is configured
for, upon selection of the fast link, initiating purchase of one of
the individual ones of displayed products, the displayed
products selected based on the profile specific to the user;
using the server, causing displaying at a computer display
screen of the computer of the individual customer, the
interactive sales portal;
using the server, tracking actions of an individual
customer in interaction with the interactive sales portal at the
computer of the individual customer, and storing in memory of
the server a history of the actions in the profile specific to the
individual customer, the tracking including detecting selection
of the associated fast link of one of the individual ones of
displayed products; and
using the server, accessing from memory the profile
specific to the individual customer including the history of
actions in a future session with the same individual customer;
using the server, retrieving a custom video that has been
created with products for private sale to the individual
customer, and causing displaying on the computer display
screen at the computer of the individual customer the custom
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video specifically for the individual customer as a private
presentation.
CITED REFERENCES
The Examiner relies upon the following references:
Jackson
Littman
US 2007/0276721 Al
US 2007/0276734 Al
REJECTIONS
Nov. 29, 2007
Nov. 29, 2007
I. Claims 1, 4--6, and 21-27 are rejected under 35 U.S.C. § 101 as
ineligible subject matter.
II. Claims 1, 5, 6, 21, 22, and 24--27 are rejected under 35 U.S.C.
§ I02(b) as anticipated by Jackson.
III. Claim 4 and 23 are rejected under 35 U.S.C. § I03(a) as
unpatentable over Jackson and Littman.
FINDINGS OF FACT
We rely upon and adopt the Examiner's findings stated in the Non-
Final Office Action at pages 3-11 and the Answer at pages 2-7, except as
stated otherwise in the Analysis below. Additional findings of fact may
appear in the Analysis below.
ANALYSIS
Subject-Matter Eligibility
Laws of nature, natural phenomena, and abstract ideas are deemed
ineligible for patenting, because they are regarded as the basic tools of
scientific and technological work, such that their inclusion within the
domain of patent protection would risk inhibiting future innovation premised
upon them. Ass 'n for Molecular Pathology v. Myriad Genetics, Inc.,
569 U.S. 576, 589 (2013). Of course, "[a]t some level, 'all inventions ...
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embody, use, reflect, rest upon, or apply'" these basic tools of scientific and
technological work. Alice Corp. v. CLS Bank Int'!, 134 S. Ct. 2347, 2354
(2014) (citation omitted). Accordingly, ascertaining ineligible subject
matter involves a two-step framework for "distinguish[ing] between patents
that claim the buildin[g] block[ s] of human ingenuity and those that integrate
the building blocks into something more, ... thereby transform[ing] them
into a patent-eligible invention." Id. (internal quotation marks and citations
omitted). The first step determines whether the claim is directed to
judicially excluded subject matter (such as a so-called "abstract idea"); the
second step determines whether there are any "additional elements" recited
in the claim that ( either individually or as an "ordered combination") amount
to "significantly more" than the identified judicially excepted subject matter
itself. Id. at 2355.
The Appellants' arguments are directed to claim 1, which the
Appellants regard as representative. See Appeal Br. 9, 17.
In regard to the first step of the Alice framework, the Non-Final Office
Action states that claim 1 is directed to the abstract idea of "displaying an
online video advertisement," further pointing out that the claimed invention
"selects advertisements based on [a] user's action," which the Examiner
regards as similar to the abstract idea identified in Ultramercial. 2 Non-Final
Act. 3.
2 Although the Non-Final Office Action (page 3) simply identifies
"Ultramercial," the Appellants (Appeal Br. 8) regard the Examiner's citation
to refer to Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709 (Fed. Cir. 2014).
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The Appellants contend that the Examiner's identification of the
abstract idea is unsupported (see Appeal Br. 6-8) and "Ultramercial is not
analogous to the pending claims" (id. at 8).
The "directed to" inquiry of the first Alice step "applies a stage-one
filter to claims, considered in light of the specification, based on whether
'their character as a whole is directed to excluded subject matter."' Enfzsh,
LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016) (citing
Internet Patents Corp. v. Active Network, Inc., 790 F.3d 11343, 1346 (Fed.
Cir. 2015)). "The 'abstract idea' step of the inquiry calls [for] look[ing] at
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 Tex., LLC v. DIRECTV, LLC, 838 F.3d 1253, 1257 (Fed.
Cir. 2016) (citing Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350,
1353 (Fed. Cir. 2016)).
The Examiner's characterization of the claims as "displaying an
online video advertisement" and "select[ing] advertisements based on [a]
user's action" (Non-Final Act. 3) reflects claim 1 's features of creating "a
profile specific to the individual customer" based upon the customer's "likes
and dislikes" and displaying "a custom video that has been created with
products for private sale to the individual customer." Similarly, the
Examiner's identification of an abstract idea comports with the
Specification's description of a preferred embodiment, wherein "products
may be aggregated and presented as suggested products according to
personalization criteria." Spec. 15, 11. 15-16.
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Citing DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed.
Cir. 2014), the Appellants further contend that the claimed subject matter is
not directed to an abstract idea, but is instead "directed to":
using a server to cause a computer of an individual customer to
display an interactive sales portal, track actions of the
individual customer, access a history of actions of the
individual customer and retrieve a custom video that has been
created with products for private sale to the individual
customer.
Appeal Br. 11. The Appellants allege that this technique "simply do[ es] not
have a pre-Internet analog." Yet, aside from the particulars of the computer
technology in the Appellants' description, the Appellants' description does
not differ meaningfully from the Examiner's identification of the abstract
idea. Notably, with regard to computer-implemented inventions, such as the
claimed subject matter under review here, "the first step in the Alice inquiry
... asks whether the focus of the claims is on the specific asserted
improvement in computer capabilities ... or, instead, on a process that
qualifies as an 'abstract idea' for which computers are invoked merely as a
tool." Enfzsh, 822 F.3d at 1335-36.
With regard to determining whether a particular concept is an abstract
idea, the Federal Circuit has endorsed the approach of "examin[ing] earlier
cases in which a similar or parallel descriptive nature can be seen - what
prior cases were about, and which way they were decided." Amdocs (Isr.)
Ltd. v. Openet Telecom, Inc., 841 F.3d 1288, 1294 (Fed. Cir. 2016).
Accordingly, the Examiner's determination that claim 1 is directed to an
abstract idea is supported by court decisions in which other forms of targeted
advertising have been held to be abstract ideas. See Affinity Labs, 838 F.3d
at 12 71 (" [T] ailoring of content based on information about the user - such
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as where the user lives or what time of day the user views the content - is
an abstract idea that is as old as providing different newspaper inserts for
different neighborhoods.") ( citing Intellectual Ventures I LLC v. Capital One
Bank (USA) Nat'! Ass 'n, 792 F.3d 1363, 1369 (Fed. Cir. 2015)); OpenTV,
Inc. v. Netflix Inc., 76 F. Supp. 3d 886, 893 (N.D. Cal. 2014) ("The concept
of gathering information about one's intended market and attempting to
customize the information then provided is as old as the saying, 'know your
audience."')
The Appellants assert that claim 1 is not directed to an abstract idea,
because it contains "numerous limitations that are not abstract," such that the
claim is not "wholly abstract." Appeal Br. 9, 10. But, the presence of non-
abstract elements does not foreclose a claim from being directed to an
abstract idea. The first Alice step does not "simply ask whether the claims
involve a patent-ineligible concept, because essentially every routinely
patent-eligible claim involving physical products and actions involves a law
of nature and/or natural phenomenon- after all, they take place in the
physical world." Enfzsh, 822 F.3d at 1335 ( citing Mayo, 132 S. Ct. at 1293).
Furthermore, the role of allegedly non-abstract elements may be considered
in the second step of the Alice framework.
In view of the foregoing discussion, we are not persuaded of any error
in the Examiner's determination that claim 1 is directed to an abstract idea.
Turning to the second step of the Alice framework, the Non-Final
Office Action states that, whether considered individually or as a
combination, the additional claim elements do not amount to significantly
more than the abstract idea. Non-Final Act. 3.
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Disputing the Examiner's determination, the Appellants contend that
claim 1 recites an unconventional combination of elements: "generating an
interactive sales portal"; "tracking actions of an individual customer in
interaction with the interactive sales portal ... the tracking including
detecting selection of the associated fast link of one of the individual ones of
displayed products"; "storing ... a history of the actions in the profile
specific to the individual customer, the tracking including detecting selection
of the associated fast link of one of the individual ones of displayed
products"; and "retrieving a custom video that has been created with
products for private sale to the individual customer." Appeal Br. 14
( emphasis omitted). Yet, these elements, which the Appellants regard as an
unconventional combination (see id. at 15), are intertwined with the abstract
idea that the Examiner identified - "displaying an online video
advertisement" and "select[ing] advertisements based on [a] user's action"
(Non-Final Act. 3). Thus, the Appellants' argument is not persuasive,
because "a claimed invention's use of the ineligible concept to which it is
directed cannot supply the inventive concept that renders the invention
'significantly more' than that ineligible concept." BSG Tech LLC v.
BuySeasons, Inc., 899 F.3d 1281, 1290 (Fed. Cir. 2018).
The Appellants further argue that claim "limitations that are so
specific as to distinguish all art of record cannot properly be deemed to be so
generic as to qualify as a 'generic computer function."' Reply Br. 6
( emphasis omitted). However, neither novelty nor nonobviousness signifies
patent-eligibility. See Ass 'n for Molecular Pathology v. Myriad Genetics,
Inc., 569 U.S. 576, 591 (2013) ("Groundbreaking, innovative, or even
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brilliant discovery does not by itself satisfy the§ 101 inquiry.") See also
Answer 5.
The Appellants also contend that the claimed subject matter is patent-
eligible, because it provides an improvement to computer display
technology, an improved way of tracking customer actions, and an
accompanying reduction in waste of computer resources. Appeal Br. 15-16.
See also Reply Br. 7-8. Although technological improvements may reflect
the existence of elements that amount to significantly more than an abstract
idea (in regard to the second Alice step), invoking technological
improvements does not subvert the Supreme Court's Alice framework.
Moreover, the Appellants do not adequately explain or demonstrate how
these proposed improvements would be manifest. See Answer 5.
In addition, the Appellants contend that the claimed subject matter is
patent-eligible, because they do not preempt the identified abstract idea.
Appeal Br. 16. Yet, "[ w ]hile preemption may signal patent ineligible
subject matter, the absence of complete preemption does not demonstrate
patent eligibility." Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d
1371, 1379 (Fed. Cir. 2015).
In view of the foregoing analysis, the Appellants do not persuasively
argue that the Examiner erred in applying either step of the Alice framework,
such that we sustain the rejection of independent claim 1 and, by the same
reasoning, independent claim 22, as well as dependent claims 4---6, and 23-
27 (for which the Appellants present no separate argument), under 35 U.S.C.
§ 101.
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Anticipation
The Appellants argue that the Examiner erred in rejecting independent
claim 1, because the Jackson reference does not disclose the recited
"retrieving" and "displaying" a "custom video." See Appeal Br. 17-18.
As an initial matter, the Examiner's position is that the claim
limitation at issue, to some extent, describes the content of information to be
"display[ed]," which should be given no patentable weight. See Non-Final
Act. 7-8 (citing In re Gulack, 703 F.2d 1381 (Fed. Cir. 1983) and In re
Lowry, 32 F.3d 1579 (Fed. Cir. 1994)). However, the rejection does not
indicate sufficiently which aspects of the claimed subject matter might not
be afforded patentable weight, or how such a determination would affect the
patentability of claim 1.
In any event, the Appellants do not show error in the Examiner's
determination that Jackson teaches the identified limitation, regardless of
whether it should be given patentable weight. Indeed, the Appellants admit
that Jackson teaches customized catalogs that comprise "a customized
sequence of frames of the hypermedia presentation." Appeal Br. 18 ( citing
Jackson ,r 190). See also Reply Br. 9. The Appellants argue, however, that
Jackson "does not disclose retrieving or displaying custom videos to a
customer." Appeal Br. 18. See also Reply Br. 9. This argument is not
persuasive, however, because the "frames" disclosed in Jackson "incorporate
media objects," such as "video clips." Jackson ,r 46. Further, Jackson
discloses the claimed "retrieving" and "displaying" such "custom[ized]
video" items to customers. Specifically, Jackson discloses a "shopping
system" that "provide[ s] catalogs of products or services for sale customized
for the user" and identifies the manner of such display, for example, by
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using Windows Media Player® or QuickTime® applications for the
presentation of video items. Jackson ,r,r 190-92.
The Appellants rely upon the same argument for independent claim 22
and present no separate arguments for dependent claims 5, 6, 21, and 24--27.
Appeal Br. 20. Accordingly, we sustain the rejection of claims 1, 5, 6, 21,
22, and 24--27 under 35 U.S.C. § 102(b).
Obviousness
As to the obviousness rejection of dependent claims 4 and 23, the
Appellants rely upon the arguments presented in regard to the anticipation
rejection of independent claims 1 and 22. Appeal Br. 20. Accordingly, for
the reasons set forth above, we sustain the rejection of claims 4 and 23 under
35 U.S.C. § 103(a).
DECISION
We AFFIRM the Examiner's decision rejecting claims 1, 4--6, and
21-27 under 35 U.S.C. § 101.
We AFFIRM the Examiner's decision rejecting claims 1, 5, 6, 21, 22,
and 24--27 under 35 U.S.C. § 102(b ).
We AFFIRM the Examiner's decision rejecting claims 4 and 23 under
35 U.S.C. § 103(a).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
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