Ex Parte Collins et al

Patent Trial and Appeal Board

Dec 18, 2018

11413465 (P.T.A.B. Dec. 18, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO.
11/413,465
149109 7590
EGL/Excalibur
P.O. Box 10395
Chicago, IL 60610
FILING DATE FIRST NAMED INVENTOR
04/28/2006 Robert J. Collins
12/18/2018
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.
12729-164 (Y01453USOO) 1387
EXAMINER
KOLOSOWSKI-GAGER, KATHERINE
ART UNIT PAPER NUMBER
3622
MAIL DATE DELIVERY MODE
12/18/2018 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 ROBERT J. COLLINS, PAUL JOSEPH APODACA,
ADAM J. WAND, and CLAUDE JONES III 1
Appeal2017-010537
Application 11/413,465
Technology Center 3600
Before CARLA M. KRIVAK, HUNG H. BUI, and JON M. JURGOV AN,
Administrative Patent Judges.
KRIVAK, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
Final Rejection of claims 32--44, which are all the claims pending in the
application. We have jurisdiction under 35 U.S.C. § 6(b ).
We affirm.
1 Appellants identify the real party in interest as Excalibur IP, LLC (see
App. Br. 2).
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Application 11/413,465
STATEMENT OF THE CASE
Appellants' invention is directed to a method and an "application
program interface (' API') for managing advertiser defined groups of
advertisement campaign information" by receiving instructions via the API
"for modifying at least a portion of the advertisement campaign information
based on ... one or more ad groups [ of the advertisement campaign
information]," and modifying "at least a portion of the advertisement
campaign information ... based on the received instructions" (Abstract).
Claims 32, 41, 43 are independent. Independent claim 32, reproduced
below, is exemplary of the subject matter on appeal.
32. A computer-implemented method for managing
advertisement campaign information using an advertisement
campaign management system comprising: (i) a computer-
readable storage medium storing instructions, and (ii) a
processor configured to execute the instructions, the method
compnsmg:
organizing, through execution of the instructions by the
processor, advertisement campaign information into an
advertising campaign;
receiving, with the processor, an advertiser-specified ad
group parameter;
organizing, through execution of the instructions by the
processor, the advertising campaign into a plurality of
advertiser-defined ad groups, the organizing of the advertising
campaign into the plurality of advertiser-defined ad groups
compnsmg:
grouping, through execution of the instructions by
the processor, a plurality of online advertisements into an
advertiser-defined ad group, based on the advertiser-
specified ad group parameter; and
associating, through execution of the instructions
by the processor, the plurality of online advertisements of
the advertiser-defined ad group with the advertiser-
specified ad group parameter so that a change made to
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Application 11/413,465
the advertiser-specified ad group parameter will apply to
a respective ad parameter of each of the plurality of
online advertisements of the advertiser-defined ad group;
sending, with the processor, a portion of the
advertisement campaign information associated with the
advertiser-defined ad group including the plurality of online
advertisements and the advertiser-specified ad group parameter
from an application program interface ("API") of the
advertisement campaign management system to an application
running on a user device for display to an advertiser;
dynamically receiving commands from the application
running on the user device via the API at the advertisement
campaign management system to modify the advertiser-
specified ad group parameter associated with the advertiser-
defined ad group including the plurality of online
advertisements; and
dynamically modifying, through execution of the
instructions by the processor, the advertiser-specified ad group
parameter based on the received commands, the modification of
the advertiser-specified ad group parameter applying to the
respective ad parameter of each of the plurality of online
advertisements of the ad group.
App. Br. 27-28 (Claims Appendix).
REJECTIONS and REFERENCE
The Examiner rejected claims 32--44 under 35 U.S.C. § 101 as
directed to non-statutory subject matter.
The Examiner rejected claims 32--44 under 35 U.S.C. § I02(a) as
anticipated by Kline (US 2006/0074748 Al; published Apr. 6, 2006).
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Application 11/413,465
ANALYSIS
Rejection of claims 32-44 under 35 US.C. § 101
Appellants contend the Examiner erred in finding the subject matter of
claims 32--44 are patent-ineligible under 35 U.S.C. § 101 for the reasons
that: (1) the Examiner overgeneralized the claims (App. Br. 15-16; Reply
Br. 7); (2) the claims are not directed to organizing human activities or
collecting and manipulating data (App. Br. 14--15; Reply Br. 7-8); (3) the
claims are directed to an improvement in computer-related technology (App.
Br. 9-10, 12, 17; Reply Br. 4, 8); and (4) the claims recite an unconventional
ordered set of computer operations analogous to McRO, Inc. v. Bandai
Namco Games America Inc., 837 F.3d 1299 (Fed. Cir. 2016) (App. Br. 12,
14; Reply Br. 2, 6). We do not agree.
Under § 101, "[ w ]hoever 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 therefor, subject to the
conditions and requirements of this title." 35 U.S.C. § 101. The Supreme
Court has recognized "important implicit exception[ s ]" to the categories of
patent-eligible subject matter such as "[l]aws of nature, natural phenomena,
and abstract ideas." Alice Corp. v. CLS Bank International, 134 S. Ct. 2347,
2354 (2014). We follow the Supreme Court's two-step framework in Alice
in determining whether an invention is patent-eligible subject matter under
§ 101. First, we must "determine whether the claims at issue are directed to
a patent-ineligible concept," such as an abstract idea. Id. at 2355. If so, then
we examine the elements of the claims "individually and 'as an ordered
combination'" to determine whether there are additional elements that
"'transform the nature of the claim' into a patent-eligible application." Id.
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(citing Mayo, 566 U.S. at 78-79). In other words, the second step
"search[es] for an 'inventive concept'-i.e., an element or combination of
elements that is 'sufficient to ensure that the patent in practice amounts to
significantly more than a patent upon the [ineligible concept] itself."' Id.
(citing Mayo, 566 U.S. at 72-73).
Initially we note Appellants argue independent claims 41 and 43 for
the same reasons as independent claim 32, thus we chose claim 32 for our
analysis (see App. Br. 20-21 ).
The Examiner finds claim 32 and similarly, claims 41 and 43 are
"directed toward ... the abstract idea of organizing human activities" and
"comparing new (parameters) and stored ( ad groups) information an[ d]
using rules (commands) to identify options" by "organizing campaign
information into a plurality of advertiser defined groups ... and dynamically
receiving and modifying commands based on the parameters" (Final Act. 4 ).
The Examiner finds the claim's abstract idea is similar to data gathering and
manipulation techniques previously identified by the courts (Final Act. 4
(citing SmartGene, Inc. v. Advanced Biological Labs., SA, 852 F. Supp. 2d
42 (D.D.C. 2012), aff'd 555 F. App'x 950 (Fed. Cir. 2014)); Ans. 5 (citing
Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1240-41 (Fed. Cir. 2016)
( claims directed to generating a second menu on a computer from a first
menu, and sending the second menu to another location are not patent
eligible); Electric Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353-54
(Fed. Cir. 2016) ( 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");
Digitech Image Techs., LLC v. Elecs.for Imaging, Inc., 758 F.3d 1344,
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13 51 (Fed. Cir. 2014) ( employing mathematical algorithms to manipulate
existing information)).
We agree with the Examiner that the claims are directed to grouping
ads and modifying ads' characteristics ("ad parameters") based on a user's
preference-an abstract idea similar to data gathering and manipulation
techniques previously identified by the courts in Ameranth, Electric Power
Group, Digitech, Intellectual Ventures, and Content Extraction (Ans. 3-5;
see Intellectual Ventures I LLC v. Capital One Bank (USA), 792 F.3d 1363,
1367, 1370 (Fed. Cir. 2015) (administration of financial accounts using
advanced internet interface providing user display access to customized
webpages, and notifying user when a spending limit is reached, is an abstract
idea); and Content Extraction & Transmission LLC v. Wells Fargo Bank,
Nat'! Ass 'n, 776 F.3d 1343, 1347--48 (Fed. Cir. 2014) (finding "[t]he
concept of data collection, recognition, and storage is undisputedly well-
known," and "humans have always performed these functions")).
We also agree with the Examiner that Appellants' claims are directed
to ad management, which is a fundamental business practice long prevalent
in our system of commerce (Ans. 6). See Morsa v. Facebook, Inc., 77 F.
Supp. 3d 1007, 1013 (C.D. Cal. 2014), aff'd, 622 F. App'x 915 (Fed. Cir.
2015) ("[t]he 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."' (quoting OpenTV, Inc. v. Neiflix Inc., 76 F.
Supp. 3d 886, 893 (N.D. Cal. 2014))). As Appellants' Specification
explains, "the disclosed advertisement campaign management system
provides the ability to manage advertisement campaign information at a
level defined by the user .... allowing the user to display, manage,
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Application 11/413,465
optimize" or "modify the business objectives associated with an ad
campaign" (see Spec. ,r,r 21, 111 ).
Appellants' claims are also not directed to an unconventional ordered
set of computer operations analogous to McRO, or to an improvement in
computer-related technology (see App. Br. 9-10, 12, 14; Reply Br. 4, 6, 8).
Appellants have not demonstrated their claims recite a specific improvement
to the way computers operate, and do not present evidence to establish the
claims recite a specific improvement to the claimed processor or user device
(Ans. 4--5; see Enfzsh, LLC v. Microsoft Corp., 822 F.3d 1327, 1336, 1339
(Fed. Cir. 2016)). Appellants also have not demonstrated their claims
"improve the way a computer stores and retrieves data in memory," as did
the claims in Enfish via a "self-referential table for a computer database."
See Enfzsh, 822 F.3d at 1336, 1339. For example, the only feature of claim
32 that could be considered technological is the claimed "application
program interface (' API') of the advertisement campaign management
system." The API, however, is recited in a general, generic, and functional
manner, and Appellants have not provided evidence that the API is
improved to perform functions that are not merely generic for application
program interfaces (Ans. 3--4). See DDR Holdings, LLC, v. Hotels.com,
L.P., 773 F.3d 1245, 1257-58 (Fed. Cir. 2014). The API recited in claim 32
is merely used for "sending ... a portion of the advertisement campaign
information" and for "dynamically receiving commands from the application
running on the user device via the APL"
Additionally, Appellants' claims and Specification do not describe
technological process improvements similar to McRO (Ans. 3, 5). In
contrast to Appellants' claim, McRO's claims and Specification employ
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"rules that define output morph weight set stream as a function of phoneme
sequence and time of said phoneme sequence" to "achieve an improved
technological result." See McRO, 837 F.3d at 1310, 1316. McRO's
improved technological result is "allowing computers to produce 'accurate
and realistic lip synchronization and facial expressions in animated
characters' that previously could only be produced by human animators."
See McRO, 837 F.3d at 1313. The claims in McRO were drawn to
improvements in the operation of a computer at a task, rather than applying a
computing system to perform generic transmission and manipulation of data
(ad campaign information and parameters), as Appellants' claim 32 recites.
See McRO, 837 F.3d at 1314; Bancorp Services, L.L.C. v. Sun Life
Assurance Co. of Canada (US.), 687 F.3d 1266, 1278 (Fed. Cir. 2012) ("the
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.").
Accordingly, we agree with the Examiner that claims 32, 41, and 43
are directed to an abstract idea.
Turning now to the second step of the Alice framework,Appellants
allege claims 32, 41, and 43 include an "inventive concept" significantly
more than an abstract idea because: ( 1) the claims generate "a specific data
structure" linked to the user device via the API (Reply Br. 9-10; App. Br.
19), (2) the claimed components "operate in an unconventional manner to
achieve an improvement in computer functionality" similar to Amdocs
(Israel) Ltd. v. Openet Telecom, Inc., 841 F.3d 1288 (Fed. Cir. 2016) (Reply
Br. 6, 10), and (3) similar to DDR, the claims provide "a solution necessarily
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rooted in computer technology to overcome a problem specifically arising in
the realm of computer networks" (App. Br. 18-20; Reply Br. 11 ).
We are not persuaded by Appellants' arguments, and note claim 32
merely recites a generic API and processor (Ans. 4---6). Claim 32 does not
recite an improved data structure as Appellants argue, rather, it recites
generic data manipulation by the processor and API (Ans. 6-7). As the
Examiner asserts, and we agree, the "processor" and the "API" are routine
and conventional, merely "implement[ing] the abstract idea with high-level,
generic technology executing routine functions" (Final Act. 5). Further,
Appellants' Specification and claims describe generic computing elements
performing generic computing functions (Ans. 6-7; Final Act. 10; see Spec.
,r,r 25-26, 35-36, 55).
Additionally, Appellants' claims focus on the problem of managing
advertising campaigns and customizing ads based on the advertiser's
business objectives (Ans. 6; see Spec. ,r,r 21, 57, 98, 111 ). This is not a
technical problem or one rooted in computer technology or particular only to
the Internet; rather, it is a marketing problem of presenting relevant
information to consumers, to increase sales. Thus, claim 32 merely "recites
the performance of some business practice known from the pre-Internet
world [advertisement management], along with the requirement to perform it
on the internet" (Ans. 6 (citing DDR, 773 F.3d at 1245)). See also Alice,
134 S. Ct. at 2356; Bilski v. Kappas, 561 U.S. 593 (2010).
In fact, none of the steps and elements recited in Appellants' claims
provide, and nowhere in Appellants' Specification can we find, any
description or explanation as to how the claimed ad management steps are
intended to provide a patentable invention such as: (1) a "solution ...
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necessarily rooted in computer technology in order to overcome a problem
specifically arising in the realm of computer networks," as explained by the
Federal Circuit in DDR, 773 F.3d at 1257; (2) an "unconventional
technological solution ... to a technological problem" that "improve[ s] the
performance of the system itself," as explained in Amdocs, 841 F.3d at 1302;
or (3) "a technology-based solution ... to filter content on the Internet that
overcomes existing problems with other Internet filtering systems" and
"improve[ s] an existing technological process" as explained in BASCOM
Global Internet Services, Inc. v. AT&T Mobility LLC, 827 F.3d 1341, 1351
(Fed. Cir. 2016). Rather, claim 32 merely recites generic computer
functions of sending and receiving data (Ans. 6) (see Ultramercial, Inc. v.
Hulu, LLC, 772 F.3d 709, 715-16 (Fed. Cir. 2014) ("[a]dding routine
additional steps such as updating an activity log, requiring a request from the
consumer to view the ad, restrictions on public access, and use of the
Internet does not transform an otherwise abstract idea into patent-eligible
subject matter.")).
Further, with respect to Appellants' preemption argument (App. Br.
12-14), we note the McRO court explicitly "recognized that 'the absence of
complete preemption does not demonstrate patent eligibility"' (see McRO,
837 F.3d at 1315 (quoting Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788
F.3d 1371, 1379 (Fed. Cir. 2015))). "Where a patent's claims are deemed
only to disclose patent ineligible subject matter" under the Alice/Mayo
framework, "preemption concerns are fully addressed and made moot"
(Ariosa, 788 F.3d at 1379).
We therefore agree with the Examiner's analysis and find Appellants'
arguments insufficient to show error and sustain the Examiner's§ 101
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rejection of independent claims 32, 41, and 43, and dependent claims 33--40,
42, and 44, for which no separate arguments are provided.
Rejection of claims 32-44 under 35 US.C. § 102(a)
Appellants contend the Examiner erred in finding Kline discloses all
the limitations of independent claim 32 (App. Br. 21-52). Specifically,
Appellants contend Kline does not disclose the claimed "application
program interface (' API') of the advertisement campaign management
system" from which campaign information is "sent ... to an application
running on a user device for display to an advertiser" recited in claim 32
(Reply Br. 14; App. Br. 22-23). Appellants also contend Kline does not
disclose "dynamically receiving commands from the application running on
the user device via the API at the advertisement campaign management
system to modify the advertiser-specified ad group parameter," where
"the modification applies to the respective ad parameter of each of the
plurality of online advertisements of the ad group," as required by claim 32
(Reply Br. 15; App. Br. 23-25). We do not agree.
We agree with and adopt the Examiner's findings as our own (Final
Act. 6-7; Ans. 7-11). Initially, we note that a cited reference need not recite
the claim language ipsissimis verb is to anticipate under § 102 (see
Kennametal, Inc. v. Ingersoll Cutting Tool Co., 780 F.3d 1376, 1381 (Fed.
Cir. 2015) ("a reference can anticipate a claim even if it 'd[ oes] not
expressly spell out' all the limitations arranged or combined as in the claim,
if a person of skill in the art, reading the reference, would 'at once envisage'
the claimed arrangement or combination.") (quoting In re Petering, 301 F.2d
676, 681 (CCPA 1962))). The Examiner's findings persuade us that Kline
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discloses the contested claim limitations. That is, the broad language of
claim 32 allows a reading of Appellants' claim on Kline. For example,
Appellants' claimed AP I of the ad campaign management system is
commensurate with Kline's user interface engine in advertising platform
120, as Kline's "user interface engine 237 [is] configured to interact with an
advertiser computer" and "receive[] inputs from the advertiser" to allow the
advertiser to analyze and modify ads of an ad campaign (see Kline ,r,r 34, 38,
40-41, 47, 51-54, 63, 65, Figs. 2B-2C; Ans. 8-10). Appellants'
Specification provides a similar discussion of exemplary "APis" of an ad
campaign management system (see Spec. ,r,r 22, 26-27, 148-149, 152, 167;
Ans. 7-8). 2
Kline also discloses "sending ... a portion of the advertisement
campaign information associated with the advertiser-defined ad group" from
the "API[] of the advertisement campaign management system to an
application running on a user device for display to an advertiser," as recited
in claim 32 (Ans. 9-10). Specifically, Kline discloses "[t]he proposed
marketing campaign [(set up by advertiser/user on ad platform 120)] is
presented to the advertiser ... and can be reviewed and adjusted as desired
2 Appellants' Specification does not provide an explicit and exclusive
definition of the claimed "application program interface (' API')," rather, it
broadly describes "a pod 100 [ ( a plurality of software components and data
for management of ad campaigns)] exposes one or more APis 110 and Uis
115," the "user and application program interfaces ... [being] used to
facilitate management and optimization of ad campaigns" (see Spec. ,r,r 22,
26-27). "For example, advertisers use these interfaces to access ad
campaign information and ad campaign performance information ... search
the information, analyze the information .... [ and] change listings or
bidding strategies using these interfaces" (see Spec. ,r 27).
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before proceeding with the campaign" (see Kline ,r 63 ( emphasis added);
Ans. 9-10). For example, "[if] the original budget estimate is insufficient,
the advertiser is provided with a message through user interface engine 237
recommending that the budget amount be increased" (Kline ,r 63).
Additionally, ad campaign results are reported to the advertiser (see Kline
,r,r 80, 95, 97-99, Fig. 2B; Ans. 8-9). Thus, Kline teaches the claimed API
(user interface engine 237) sends a portion of the ad campaign information
for display to the advertiser "through a user interface displayed on the
advertiser's computer, [by which] the advertiser interacts with user interface
engine 237" (see Kline ,r 51 ).
We also agree with the Examiner that Kline discloses "dynamically
receiving commands from the application running on the user device via the
API at the advertisement campaign management system to modify the
advertiser-specified ad group parameter" as claimed (Ans. 8-10 (citing
Kline ,r,r 36, 40-41, 54, 63, 71, 75, 81-82, Figs. 1 and 2B-2C)).
Specifically, Kline's advertisement campaign management (ad platform
120) receives, via the API (user interface engine 237), commands from an
application running on the user device (advertiser's computer 110) to modify
an advertiser-specified ad group parameter----e.g., to increase a budget
determined to be insufficient for the ad campaign (see Kline ,r 63) or to
select publishers that optimize the campaign allocation (see Kline ,r,r 75, 82)
(Ans. 9-10). Additionally, Kline discloses "all advertisements in a given
category (group) are modified for duration [ of the ad campaign] based on
cost optimization, which ... may be updated at any time" by the user (Ans.
11 (citing Kline ,r,r 54, 63, 81-83)). Thus, Kline teaches the modification of
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an ad group parameter (e.g., campaign budget or set of publishers) applies to
all ads in the ad group/campaign, as required by claim 32 (Ans. 11 ).
Thus, for the above reasons, we sustain the Examiner's anticipation
rejection of independent claim 32, independent claims 41 and 43 argued for
substantially the same reasons (App. Br. 25-26), and dependent claims 33-
40, 42, and 44, argued for their dependency on claims 32, 41, and 43 (App.
Br. 25-26).
DECISION
The Examiner's decision rejecting claims 32--44 under
35 U.S.C. § 101 is affirmed.
The Examiner's decision rejecting claims 32--44 under
35 U.S.C. § 102(a) 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)(iv).
AFFIRMED
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