Ex Parte DOMINOWSKA et al

Patent Trial and Appeal Board

Sep 14, 2018

11948721 (P.T.A.B. Sep. 14, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
11/948,721 11/30/2007 EWA DOMINOWSKA
45809 7590 09/18/2018
SHOOK, HARDY & BACON L.L.P.
(MICROSOFT TECHNOLOGY LICENSING, LLC)
INTELLECTUAL PROPERTY DEPARTMENT
2555 GRAND BOULEVARD
KANSAS CITY, MO 64108-2613
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.
321767.01/MFCP.137374 3274
EXAMINER
DAGNEW, SABA
ART UNIT PAPER NUMBER
3682
NOTIFICATION DATE DELIVERY MODE
09/18/2018 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
IPDOCKET@SHB.COM
IPRCDKT@SHB.COM
usdocket@microsoft.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte EWA DOMINOWSKA and ROBERT J. RAGNO,
Appeal2017-006892
Application 11/948, 721 1
Technology Center 3600
Before MARC S. HOFF, JAMES W. DEJMEK, and
STEVEN M. AMUNDSON, Administrative Patent Judges.
HOFF, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from a Non-Final Rejection
of claims 1-20. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
Appellants' invention concerns associating structured information
with online advertisements presented with primary content. Feature-value
pairs corresponding with advertisements describe features of the products or
services advertised. The feature-value pairs may be used during selection of
advertisements for presentation with primary content. User interface
1 The real party in interest is Microsoft Technology Licensing, LLC.
Appeal2017-006892
Application 11/948,721
elements may be generated, allowing users to sort and/ or filter
advertisements during presentation with primary content. The user interface
elements are generated based on the associated feature-value pairs. See
Abstract.
Claim 1 is exemplary of the claims on appeal:
1. One or more computer-storage media embodying computer-
useable instructions for performing a method comprising:
storing an advertisement corresponding with a product or
service and one or more feature-value pairs for the advertisement for
use in an advertisement system that provides advertisements for
presentation in conjunction with presentation of separate primary
content, each feature-value pair for the advertisement being separate
from the content of the advertisement and comprising a feature of the
product or service and a value defining the feature of the product or
service;
receiving a request for advertisements from a user device; and
providing, for delivery to the user device in response to the
request, a plurality of advertisements and one or more feature-value
pairs for each advertisement separate from the content of each
advertisement for use in a user interface that presents at least a portion
of the advertisements in conjunction with separate primary content
and one or more user interface elements that allow a user to sort or
filter the advertisements based on the feature-value pairs associated
with the advertisements while maintaining the
presentation of the separate primary content, the one or more user
interface elements being generated based on the feature-value pairs
associated with the advertisements.
Claims 1-20 stand rejected under 35 U.S.C. § 112, first paragraph,
as failing to comply with the written-description requirement.
Claims 1-20 stand rejected under 35 U.S.C. § 101 as being drawn to
patent-ineligible subject matter.
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Application 11/948,721
Claims 1-20 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Bharat et al. (US 8,352,499 B2, iss. Jan. 8, 2013) and
Hayes, Jr. et al. (US 8,374,915 B2, iss. Feb. 12, 2013).
Throughout this decision, we make reference to the Appeal Brief
("App. Br.," filed Aug. 26, 2016) and the Examiner's Answer ("Ans.,"
mailed Dec. 28, 2016) for their respective details.
ISSUES
1. Does the disclosure reasonably convey to one of ordinary skill in
the art that the inventors had possession of the claimed subject matter?
2. Is the claimed invention directed to a judicial exception,
specifically an abstract idea, without reciting significantly more so as to
transform the invention into a patent-eligible application?
3. Does the combination of Bharat and Hayes disclose or suggest
providing one or more user interface elements that allow a user to sort or
filter advertisements based on feature-value pairs associated with the
advertisements while maintaining presentation of separate primary content,
the user interface elements being generated based on the feature-value pairs
associated with the advertisement?
PRINCIPLES OF LAW
Under the written-description requirement of 35 U.S.C. § 112, the
disclosure of the application relied upon must reasonably convey to one of
ordinary skill in the art that, as of the filing date of the application, the
inventor had possession of the later-claimed subject matter. Vas-Cath Inc. v.
Mahurkar, 935 F.2d 1555, 1563 (Fed. Cir. 1991). "One shows that one is
'in possession' of the invention by describing the invention, with all its
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claimed limitations, not that which makes it obvious." Lockwood v. Am.
Airlines, Inc., 107 F.3d 1565, 1572 (Fed. Cir. 1997) (emphasis in original).
Although "the meaning of terms, phrases, or diagrams in a disclosure
is to be explained or interpreted from the vantage point of one skilled in the
art, all the limitations must appear in the specification." Id. The
Specification need not describe the claimed subject matter in exactly the
same terms as used in the claims, but it must contain an equivalent
description of the claimed subject matter. Id.
Under 35 U.S.C. § 101, a patent may be obtained for "any new and
useful process, machine, manufacture, or composition of matter, or any new
and useful improvement thereof." The Supreme Court has "long held that
this provision contains an important implicit exception: Laws of nature,
natural phenomena, and abstract ideas are not patentable." Alice Corp. Pty.
Ltd. v. CLS Bank Int 'l, 134 S. Ct. 2347, 2354 (2014) (quoting Ass 'nfor
Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 589 (2013)).
The Supreme Court in Alice reiterated the two-step framework previously
set forth in Mayo Collaborative Services v. Prometheus Laboratories, Inc.,
566 U.S. 66, 82-84 (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, 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, such as an
abstract idea. Abstract ideas may include, but are not limited to,
fundamental economic practices, methods of organizing human activities, an
idea of itself, and mathematical formulas or relationships. Id. at 2355-57.
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If the claims are not directed to a patent-ineligible concept, the inquiry
ends. See Visual Memory LLC v. NVIDIA Corp., 867 F.3d 1253, 1262 (Fed.
Cir. 2017).
Otherwise, the inquiry proceeds to the second step in which the
elements of the claims are considered "individually and 'as an ordered
combination' to determine whether the additional elements 'transform the
nature of the claim' into a patent-eligible application." Alice, 134 S. Ct. at
2355 ( quoting Mayo, 566 U.S. at 79, 78).
ANALYSIS
REJECTION UNDER 35 U.S.C. § 112, FIRST PARAGRAPH
The Examiner finds that paragraphs 23, 45, 66, and 67 of Appellants'
Specification provide disclosure that user interface elements are presented,
provided, and interacted with by the user. Ans. 3-4. Nonetheless, the
Examiner determines that the written description is inadequate because the
specification does not describe how the claimed "user interface elements"
are generated. Ans. 4.
We do not agree with the Examiner's determination. We find that the
Specification discloses that "one or more UI elements may be presented with
the advertisements allowing the user to sort and/ or filter" them. Spec. ,r 61.
"The UI elements may include, for instance, drop-down menus, lists, and
other UI elements." Id. Figures 7-11 illustrate the user interface elements
that are disclosed and claimed. We find that the person having ordinary skill
in the art, as of the filing date of the invention under appeal, would have
found these user interface elements to be conventional, and would have
known how to generate such user interface elements.
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We conclude that the Examiner erred in rejecting claims 1-20 under
35 U.S.C. § 112, first paragraph, and we do not sustain the rejection.
REJECTIONUNDER35 U.S.C. § 101
We agree with the Examiner that the claimed invention is directed to
the abstract idea of "delivering of advertisements for presentation with some
primary content." Ans. 5. Proceeding to step 2 of the Alice analysis,
however, we find that the invention solves a problem necessarily rooted in
computer technology in order to overcome a problem specifically arising
when presenting advertising on the Internet.
In DDR Holdings,2 the invention concerned retaining visitors on a
host web site when such visitors click on an advertisement for a third-party
product. Rather than being sent to the third-party website, said visitors were
directed instead to a hybrid website that retains the look and feel of the host
website and presents the product information of the third party. DDR
Holdings, 773 F.3d at 1253. The court held the claims to be patent eligible
because the invention did not merely apply a known business process to the
particular technological environment of the Internet, nor broadly claim "use
of the Internet" to perform an abstract business practice. Id. at 1256.
Rather, the claims in DDR Holdings were found to address the challenge of
retaining control over the attention of the customer in the context of the
Internet. Id.
Similarly, the claims under appeal address the challenge, particular to
the Internet, of providing the ability for users to interact with an
advertisement, using limited screen display space, and view additional
2 DDR Holdings, LLC v. Hotels.com, LP, 773 F.3d 1245 (Fed. Cir. 2014).
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information about an advertised product or products without taking the
user's attention away from primary content. App. Br. 22. We agree with
Appellants' argument that providing user interface elements that allow the
user to sort and/ or filter advertisements based on features that interest the
user, using only the limited screen display space provided for
advertisements, avoids the disadvantages of requiring larger display space
for advertisements or requiring the user to navigate away from primary
content. Id.
Therefore, we find that the claimed invention is deeply rooted in
computer technology to solve a problem that arises with the presentation of
advertising on the Internet. The claimed invention thus recites significantly
more than an abstract idea, so as to transform the nature of the claim into a
patent-eligible application. We conclude that the Examiner erred in
rejecting claims 1-20 under 35 U.S.C. § 101 as being directed to patent-
ineligible subject matter. We do not sustain the Examiner's rejection.
REJECTION UNDER 35 U.S.C. § 103(A)
Independent claim 1 recites, inter alia, "one or more user interface
elements that allow a user to sort or filter the advertisements based on the
feature-value pairs associated with the advertisements while maintaining the
presentation of the separate primary content, the one or more user interface
elements being generated based on the feature-value pairs associated with
the advertisements." Independent claims 9 and 16 recite analogous
limitations.
The Examiner finds that Bharat teaches this limitation concerning user
interface elements. Non-Final Act. 7-8. The Examiner cites Figures 7 and
11-13, and columns 6, 13, and 14 of Bharat as providing a teaching of user
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interface elements that allow a user to sort or filter advertisements based on
feature-value pairs associated with the advertisements.
We find the Examiner's rejection to be erroneous. Bharat is
concerned with employing information that may be gleaned about a user,
e.g., from the user's provided profile information and/or from tracking the
user's search history, in order to serve the user with targeted advertising.
See Bharat, cols. 2-3. Bharat does not disclose the ability for the end user to
sort and/or filter advertising information that is delivered to the user's
computer. Further, the disclosed "feature-value pairs" in Bharat "are
directed to information about the advertisements that may be used to select
advertisements based on user information," not "a feature of the product or
service and a value defining the feature." App. Br. 24, 28; Bharat,
col. 9: 12-50. The Examiner further finds that "user interface elements that
allow a user to sort or filter the advertisement based on the feature value
pairs associated with the advertisements" constitutes "mere intended use"
that receives little patentable weight. Non-Final Act. 10. Even were we to
assume arguendo that the Examiner's statement were correct, the
combination of Bharat and Hayes fails to disclose the claimed user interface
elements.
The Examiner further cites Hayes as disclosing the claimed feature-
value pairs. Non-Final Act. 8-9. Although we agree with the Examiner that
the advertisements shown in Hayes Figures lB and 1 C include product
features such as price and mileage, such features appear as text that forms
the content of the advertisements. We agree with Appellants that there is
nothing to indicate that the product features are "separate from the content of
the advertisement," as claim 1 requires. App. Br. 25. Hayes, like Bharat,
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fails to disclose user interface elements that allow the user to sort and/or
filter the advertisement. App. Br. 26.
Because we are persuaded by Appellants' arguments that the
Examiner erred, we do not sustain the Examiner's§ 103(a) rejection of
claims 1-20 over Bharat and Hayes.
CONCLUSIONS
1. The disclosure reasonably conveys to one of ordinary skill in the art
that the inventors had possession of the claimed subject matter.
2. The claimed invention is directed to an abstract idea, but recites
significantly more so as to transform the invention into a patent-eligible
application.
3. The combination of Bharat and Hayes does not disclose or suggest
providing one or more user interface elements that allow a user to sort or
filter advertisements based on feature-value pairs associated with the
advertisements while maintaining presentation of separate primary content,
the user interface elements being generated based on the feature-value pairs
associated with the advertisement.
ORDER
The Examiner's decision to reject claims 1-20 is reversed.
REVERSED
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