Ex Parte De Titta

Patent Trial and Appeal Board

Sep 28, 2017

11274706 (P.T.A.B. Sep. 28, 2017)

United States Patent and Trademark Office
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
11/274,706 11/14/2005 John E. De Titta 323P001 7191
28264 7590 10/02/2017
BOND, SCHOENECK & KING, PLLC
ONE LINCOLN CENTER
SYRACUSE, NY 13202-1355
EXAMINER
STIBLEY, MICHAEL R
ART UNIT PAPER NUMBER
3688
NOTIFICATION DATE DELIVERY MODE
10/02/2017 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
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOHN E. DE TITTA
Appeal 2016-0005501
Application 11/274,7062
Technology Center 3600
Before ANTON W. FETTING, NINA L. MEDLOCK, and
BRADLEY B. BAYAT, Administrative Patent Judges.
BAYAT, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
John E. De Titta (Appellant) seeks our review under 35 U.S.C. § 134
of the Examiner’s Final Rejection of claims 7—26.3 We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM.
1 Our decision references Appellants’ Appeal Brief (“App. Br.,” filed
Mar. 5, 2015), Reply Brief (“Reply Br.,” filed Oct. 6, 2015), the Examiner’s
Answer (“Ans.,” mailed Aug. 7, 2015), and the Final Office Action (“Final
Act.,” mailed Dec. 18, 2014).
2 Appellant identifies “Howudowin, Inc.” as the real party in interest. App.
Br. 3.
3 Claims 1—6 have been canceled. Id. at 30.
Appeal 2016-000550
Application 11/274,706
CLAIMED SUBJECT MATTER
Method claim 7, computer-readable medium claim 16, and system
claim 23 are the independent claims on appeal and recite substantially
similar subject matter. See App. Br. (Claims App’x). Independent claim 7,
reproduced below, is illustrative of the subject matter on appeal.
7. A method of media production, comprising:
providing, by a computer system, a media production
funding website configured to raise funds using advertising to
produce media content relating to particular subject matter, the
computer system comprising a web server and an advertising
server;
processing, by the advertising server, an advertising buy
associated with an advertiser regarding the presentation of
advertising content in a webpage associated with the media
production funding website, wherein the advertising buy
specifies a predetermined number of impressions at a particular
cost to the advertiser, and wherein the particular subject matter
and the advertising content are directed to a particular
demographic group;
processing, by the web server, a webpage request from a
client computer relating to the particular subject matter:
in response to the webpage request, causing
communication, by the web server, of a webpage to the client
computer in accordance with the advertising buy, wherein the
webpage comprises the advertising content and information
relating to the particular subject matter;
in response to the communicating, incrementing an
impression count by the advertising server, representing that a
user has been exposed to the advertising content;
completing, by the advertising server, a condition of the
advertising buy in response to determining that the impression
count has reached a predetermined number of impressions; and
causing, by the computer system, placement of revenue
corresponding to the particular cost into a media production
fund for funding of the media content relating to the particular
subject matter.
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Application 11/274,706
REJECTIONS
Claims 7—26 stand rejected under 35 U.S.C. § 101 directed to non-
statutory subject matter.
Claim 7—26 stand provisionally rejected on the ground of non-
statutory obvious-type double patenting as being unpatentable over claims
1—2 of co-pending application 14/015,567, and claims 1—3 of co-pending
application 14/015,604.
ANALYSIS
Non-Statutory Subject Matter
Under 35 U.S.C. § 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. The Supreme Court, however, has long interpreted § 101
to include an implicit exception: “[ljaws of nature, natural phenomena, and
abstract ideas” are not patentable. See, e.g., Alice Corp. Pty. Ltd. v. CLS
Banklnt’l, 134 S. Ct. 2347, 2354 (2014).
The Supreme Court, in Alice, reiterated the two-step framework
previously set forth in Mayo Collaborative Services v. Prometheus
Laboratories, Incorporated, 566 U.S. 66 (2012), “for distinguishing patents
that claim laws of nature, natural phenomena, and abstract ideas from those
that claim patent-eligible applications of those concepts.” Alice Corp.,
134 S. Ct. at 2355. The first step in that analysis is to “determine whether
the claims at issue are directed to one of those patent-ineligible concepts.”
Id. If the claims are not directed to a patent-ineligible concept, e.g., to an
abstract idea, the inquiry ends. Otherwise, the inquiry proceeds to the
second step where the elements of the claims are considered “individually
and ‘as an ordered combination”’ to determine whether there are additional
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elements that ‘“transform the nature of the claim’ into a patent-eligible
application.” Id. (quoting Mayo, 566 U.S. at 78, 79).
Applying the framework in Alice, and as the first step of that analysis,
the Examiner determined that claims 7—26 are drawn to “fundamental
economic practices and certain methods of organizing human activities as
the claims are directed to: advertisement delivery techniques drawn towards
delivering content of interest to consumers to encourage the purchase and
sale of goods from businesses; revenue raising for projects.” Final Act. 4;
Ans. 6.
Independent claim 7 and dependent claims 8—15
Appellant argues that claim 7 is not directed to an abstract idea
because
rather than seek to patent a mathematical formula or an abstract
idea, Applicant seek[s] patent protection for a computer-
implemented method for fully online financing of a media
production using a media production website and advertising.
Although the process may “embody, use, reflect, rest upon, or
apply” an abstract idea, Applicant does not seek to pre-empt the
use of that abstract idea. Rather, Applicant seeks only to
foreclose others from the use of that abstract idea in conjunction
with ALL the other steps in the claimed computer-implemented
method....
App. Br. 12. We disagree.
Turning to the first step, we agree with the Examiner that claim 7 is
directed to the abstract idea of raising revenue for projects from selling
advertising—which is an age-old economic and business practice. The
implementation of the abstract idea is evident from the steps recited in claim
7: providing a funding website, processing an advertising buy associated
with an advertiser, processing a webpage request from a client computer,
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communicating from the webpage to the client computer, incrementing an
impression count, completing a condition of the advertising buy, and placing
revenue into the fund. See App. Br. 12—13 (reciting steps 1—7 performed in
claim 7). Claim 7, as a whole, merely recites the familiar concept of
generating revenue by selling advertising on a webpage.
Appellant’s disclosure informs us that the present invention
specifically relates to “a process that allows advertisers to finance media
productions through advertising media buys while eliminating the risk of
normal event financing speculative investment.” Spec. 1. It is also telling
that the background of the Specification describes the movie industry
process and problems faced with conventional film financing. Spec. 4 (“The
main problem with conventional film financing is that the investor has a
high chance of losing their investment. Another problem with conventional
film financing is that the speculative investment gives limited if any public
relations to the investor. Another problem with conventional media event
financing is that it is difficult for the film producer to get a film financed.”).
The advance noted by Appellant is generating revenue through advertising
sales to finance film projects, “while eliminating the risk of normal film
financing.” Id. at 5. The business concept of generating revenue through
advertising sales is a fundamental economic practice long prevalent in our
system of commerce—a building block of the modem economy.
As in Alice, we need not labor to delimit the precise contours of the
“abstract ideas” category. It is enough to recognize that there is no
meaningful distinction in the level of abstraction between the concept of an
intermediated settlement in Alice and the concept of generating revenue
from advertising sales, at issue here. Both are squarely within the realm of
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“abstract ideas” as the Court has used that term. The fact that claim 7 does
not preempt all forms of the abstraction, or may be limited to computer-
implemented online settings (e.g., webpage), does not make it any less
abstract. See OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1362—63
(Fed. Cir. 2015); see also Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709,
715 (Fed. Cir. 2014) (“Although certain additional limitations, such as
consulting an activity log, add a degree of particularity, the concept
embodied by the majority of the limitations describes only the abstract idea
of showing an advertisement before delivering free content.”).
Turning to the second step, Appellant contends:
These elements are meaningful limitations that do more than
just “generally link[] the use of an abstract idea to a particular
technological environment.” Alice, 134 S. Ct. at 2360. The
elements do not simply provide the instruction to “apply” an
abstract idea, and do not simply require a computer to perform
conventional or routine activities. Indeed, instead of simply
giving directions to apply the abstract ideas of “advertisement
delivery techniques” or “raising revenue for projects,” and
rather than simply requiring a computer to perform
conventional or routine activities, the claimed method provides
a specific media production funding website to raise funds to
produce media content relating to particular subject matter,
receives and processes advertising buys, responds in real-time
to a user(s) accessing the funding website, and funds a media
production fund based on the activity of the user(s).
App. Br. 14. We disagree.
We agree with the Examiner and conclude that claim 7 does not
contain an inventive concept sufficient to “‘transform the nature of the
claim’ into a patent-eligible application.” Alice, 134 S. Ct. at 2355. The
introduction of a computer system or server into the claims does not alter the
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analysis here.4 The claim here does no more than simply instruct the
practitioner to implement the abstract idea on a generic computer. Although
Appellant contends otherwise, Appellant fails to provide any persuasive
evidence or technical reasoning in support thereof. Providing a website with
ad buy options by a generic “computer system” (see Spec. 11—12) used to
implement the claimed invention is inadequate to confer subject matter
eligibility. See Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1355
(Fed. Cir. 2016) (“Nothing in the claims, understood in light of the
specification, requires anything other than off-the-shelf, conventional
computer, network, and display technology for gathering, sending, and
presenting the desired information.”); see also Dealertrack, Inc. v. Huber,
674 F.3d 1315, 1333 (Fed. Cir. 2012) (“Simply adding a ‘computer aided’
4 [T]he mere recitation of a generic computer cannot transform a
patent-ineligible abstract idea into a patent-eligible invention.
Stating an abstract idea “while adding the words ‘apply it’” is
not enough for patent eligibility. Nor is limiting the use of an
abstract idea “‘to a particular technological environment.’”
Stating an abstract idea while adding the words “apply it with a
computer” simply combines those two steps, with the same
deficient result. Thus, if a patent’s recitation of a computer
amounts to a mere instruction to “implement[t]” an abstract
idea “on ... a computer,” that addition cannot impart patent
eligibility. This conclusion accords with the pre-emption
concern that undergirds our § 101 jurisprudence. Given the
ubiquity of computers, wholly generic computer
implementation is not generally the sort of “additional
featur[e]” that provides any “practical assurance that the
process is more than a drafting effort designed to monopolize
the [abstract idea] itself.”
Alice, 134 S. Ct. at 2358 (citations omitted).
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limitation to a claim covering an abstract concept, without more, is
insufficient to render [a] claim patent eligible.”).
Contrary to Appellant’s argument on page 3 of the Reply Brief, a
finding that the claims are novel and nonobvious in light of an absence of
evidence does not conflict with the Examiner’s conclusion under § 101,
because “a claim for a new abstract idea is still an abstract idea.” Synopsys,
Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1151 (Fed. Cir. 2016) (citing
Mayo, 566 U.S. at 90). The question in step two of the Alice framework is
not whether an additional feature is novel but whether the implementation of
the abstract idea involves “more than performance of ‘well-understood,
routine, [and] conventional activities previously known to the industry.’”
Content Extraction and Transmission LLC v. Wells Fargo Bank, Nat. Ass ’n,
776 F.3d 1343, 1347-48 (Fed. Cir. 2014) (alteration in original) (quoting
Alice, 134 S. Ct. at 2359). Fooking at the claim steps separately, the
function performed by the computer at each step of the process is purely
conventional. Using a computer to provide a website, processing advertising
buy options, processing webpage requests from a client computer,
communicating to the client computer, incrementing an impression count,
completing a condition of the advertising buy, and placing the advertising
revenue into a fund are the most basic functions of a computer.
Programming conventional software or hardware to apply conditions and
data is a routine and conventional practice. The recited claim limitations,
both individually and as an ordered combination, fail to transform the nature
of the claim into a patent-eligible application. Thus, independent claim 7
does not recite any limitation that, in practical terms, limits the scope of the
claim so it does not fully cover the abstract idea itself.
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For the foregoing reasons, we sustain the rejection of independent
claim 7 under 35 U.S.C. § 101, including dependent claims 8—15, which are
not argued with any specificity. See App. Br. 15—19.
Independent claims 16 and 23 and dependent claims 17—22 and 24—26
We initially note that claims directed to a process that includes a
“computer readable medium,” or “computer system” despite their format
should be treated no differently from the comparable process claim 7. As
the Supreme Court has explained, the form of the claims should not trump
basic issues of patentability. See Parker v. Flook, 437 U.S. 584, 593 (1978)
(advising against a rigid reading of §101 that “would make the determination
of patentable subject matter depend simply on the draftsman’s art and would
ill serve the principles underlying the prohibition against patents for ‘ideas’
or phenomena of nature”); see also Internet Patents Corp. v. Active Network,
Inc., 790 F.3d 1343, 1349 (Fed. Cir. 2015). Although Appellant provides
separate headings in arguing claims 16—26, Appellant nevertheless relies on
similar arguments presented above with respect to claim 7 (see App. Br. 19—
29). Consequently, we sustain the rejection of computer readable medium
claim 16 and system claim 23 under 35 U.S.C. § 101 for the same reasons.
We also sustain the rejection of dependent claims 17—22 and 24—26 under 35
U.S.C. § 101 for the same reasons.
Obviousness Double Patenting
Appellant has not addressed or otherwise contested the rejections of
claims 7—26 under obviousness-type double patenting in the Briefs before
us. Thus, we summarily sustain these rejections.
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DECISION
The Examiner’s decision to reject claims 7—26 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).
AFFIRMED
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