Ex Parte Dresden et al

Patent Trial and Appeal Board

Dec 17, 2018

11425234 (P.T.A.B. Dec. 17, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
11/425,234 06/20/2006
24131 7590 12/19/2018
LERNER GREENBERG STEMER LLP
PO BOX 2480
HOLLYWOOD, FL 33022-2480
FIRST NAMED INVENTOR
Scott Dresden
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.
X-9284 8929
EXAMINER
RETTA, YEHDEGA
ART UNIT PAPER NUMBER
3688
NOTIFICATION DATE DELIVERY MODE
12/19/2018 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):
boxoa@patentusa.com
docket@patentusa.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SCOTT DRESDEN and DAVID BOGART DORT
Appeal2017-011108
Application 11/425,234
Technology Center 3600
Before DENISE M. POTHIER, JUSTIN BUSCH, and
NORMAN H. BEAMER, Administrative Patent Judges.
BUSCH, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellants appeal from the
Examiner's decision to reject claims 1, 23-27, 29-31 and 33-35, which
constitute all the claims pending in this application. We have jurisdiction
over the pending claims under 35 U.S.C. § 6(b). We affirm.
CLAIMED SUBJECT MATTER
Appellants' claimed invention is generally related to a "wireless
procurement [ method] in which the telecommunications provider may
generate appropriate revenue from advertising purchasers for both
exposures." Spec. ,r 113. Appellants' claimed invention presents an option
for a consumer to accept an advertisement on their wireless device in
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Application 11/425,234
exchange for an incentive (e.g., a credit on their wireless bill or a coupon to
a restaurant). Spec. ,r 113, Fig. 36. If the consumer accepts the offer, the
method places the advertisement on the wireless device, provides the
consumer with the offered incentive, and charges the advertiser for placing
the advertisement. Spec. ,r 114, Fig. 36. Claim 1 is the only pending
independent claims and is reproduced below:
1. A method of providing advertising on a wireless device,
the method which comprises:
sending, to a wireless device, and displaying on the
wireless device, a message that offers a consumer an incentive
that can be obtained by accepting an individual advertisement to
be subsequently placed on the wireless device, wherein the
advertisement is from a first vendor and the incentive is from a
second vendor that is different from the first vendor;
after sending the message offering the incentive to the
wireless device and displaying the message with the incentive on
the wireless device, determining whether or not the consumer has
pressed a button on the wireless device to indicate that the
individual advertisement will be accepted;
only if it has been determined in the determining step that
the consumer has pressed the button on the wireless device to
indicate that the individual advertisement will be accepted,
placing the advertisement on the wireless device, providing the
consumer with the incentive from the second vendor being a
different vendor that the first vendor providing the
advertisement, and charging the advertiser for placing the
individual advertisement.
REJECTIONS
Claims 1, 23-27, 29-31, and 33-35 stand rejected under 35 U.S.C.
§ 101 as being directed to ineligible subject matter. Final Act. 2-3.
Claims 1, 23-27, 29-31, and 33-35 stand rejected under 35 U.S.C.
§ 103 as obvious in view of Lang (US 2006/0178932 Al; Aug. 10, 2006),
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Glassman (US 2008/0086356 Al; Apr. 10, 2008), and Official Notice. Final
Act. 3-5.
ANALYSIS
We have reviewed the Examiner's rejections in light of Appellants'
arguments that the Examiner erred. In reaching this decision, we have
considered all evidence presented and all arguments Appellants made.
Arguments Appellants could have made, but chose not to make in the Briefs,
have not been considered and are deemed waived. See 37 C.F.R.
§ 4I.37(c)(i)(iv).
THE§ 101 REJECTION
In step one of the Alice analysis, we "determine whether the claims at
issue are directed to" a patent-ineligible concept, such as an abstract idea.
Alice Corp. Pty. Ltd. v. CLS Bankint'l, 134 S. Ct. 2347, 2354--55 (2014). In
step two of our Alice analysis, we determine whether the additional
limitations, when considered both "individually and 'as an ordered
combination"' contain an "inventive concept" sufficient to transform the
claimed "abstract idea" into a patent-eligible application. Alice, 134 S. Ct. at
2355-58. We note, "[ w ]hether a claim is drawn to patent-eligible subject
matter is an issue of law that we review de novo." SiRF Tech., Inc. v. Int 'l
Trade Comm 'n, 601 F.3d 1319, 1331 (Fed. Cir. 2010).
The Examiner concludes the claims are directed to judicially excepted
subject matter. Final Act. 2-3; Ans. 2. In particular, the Examiner finds the
claims are similar to the claims in Ultramercial, which the Federal Circuit
determined were directed to the abstract idea of displaying advertisements in
exchange for access to copyrighted media. Ans. 2 ( citing Ultramercial, Inc.
v. Hulu, LLC, 772 F.3d 709, 715-16 (Fed. Cir. 2014)); see also Final Act. 3.
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The Examiner determines the claims "are drawn to automating the abstract
idea of presenting advertisements and do not go beyond conventional
computer operations or improve electronic advertisement technology."
Ans. 2. The Examiner concludes the claims simply implement the abstract
idea on a generic wireless device and, therefore, do not recite an inventive
concept that adds significantly more to the abstract idea. Ans. 2.
Appellants argue the claims are directed to "a method of providing
advertising on a wireless device." Appeal Br. 4. Appellants argue the
claims are not directed to an abstract idea because the claims require a
wireless device, which is "definite and concrete," and the claims provide a
"new way for telecommunications provider[ s] to generate additional revenue
by charging advertisers for placing advertisements on wireless devices and
by providing the users of these wireless devices with incentives for
accepting the advertisements." Appeal Br. 4--5. Appellants argue that, to
the extent the claims are directed to an abstract idea, the claims add
significantly more to the abstract idea because the invention is an
"improvement in the technical fields of telecommunication services and in
advertising." Appeal Br. 5---6. Appellants argue the claims improve the
ability to generate additional revenue and provide incentives to consumers,
which increases the probability of an advertisement being placed on a
consumer device through increased exposure due to the offered incentive.
Appeal Br. 6. Appellants do not address the Examiner's explanation in the
Answer that the claims are similar to those found ineligible in Ultramercial.
See Reply Br. 2-7.
We agree with Appellants that the claims, at a high level, are directed
to a method of providing advertising on a wireless device. See Appeal Br. 4.
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A slightly narrower characterization of the claims is that they are directed to
a method of providing advertising on a customer's wireless device in
exchange for the customer receiving an offered incentive. Contrary to
Appellants' conclusion, however, we determine these claims are broader
than, but similar to, the claims found ineligible under § 101 in Ultramercial.
More specifically, we determine Appellants' claims are directed to a similar
concept to which the Federal Circuit determined the claims in Ultramerical
were directed-namely, "showing an advertisement before delivering free
content." Ultramercial, 772 F.3d at 715.
The claims in Ultramercial recited eleven steps for "distributi[ ng]
products over the Internet via a facilitator." Ultramercial, 772 F.3d at 712.
The products were copyright-protected media content and the steps included
receiving the products ( similar to Appellants' incentive), selecting a sponsor
message (i.e., an advertisement), providing the product for sale at an Internet
website, restricting access to the product, offering the product to a consumer
without monetary charge in exchange for viewing an advertisement,
receiving a request from the consumer to view the advertisement in response
to being offered the product, displaying the advertisement to the consumer,
providing the offered content after displaying the advertisement ( or after
receiving a response from the consumer to a query), recording the
transaction, and receiving payment from the advertiser for displaying the
advertisement. Ultramercial, 772 F.3d at 712.
As can be seen from the above recited steps in Ultramercial,
Appellants' claims are very similar to the claims found ineligible by the
Federal Circuit. Although not exactly the same, Appellants' recited
incentive is comparable to Ultramercial 's product because both are items the
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consumer elects to receive in exchange for viewing an advertisement.
Appellants' recited use of a wireless device for displaying the
advertisements and receiving the offered incentive are similar to
Ultramercial 's use of an Internet website (and implied device, wireless or
otherwise) to access the product and the advertisement. Appellants' claims
also recite charging the advertiser for the placing the advertisement, whereas
Ultramercial 's claims recite receiving payment from the advertiser for
displaying the advertisement. Although these steps are not exactly the same,
they cover the same concept of resolving payment from the advertiser to the
entity placing the advertisement. Finally, Appellants' claims recite that the
advertisement and the incentive come from different vendors. The
Ultramercial claims do not specify the source of the advertisement and the
product and, therefore, are broad enough to encompass the different sources.
Thus, the concept to which both Ultramercial 'sand Appellants' claims are
directed is a consumer viewing advertisements instead of being charged for
an item in which the consumer is interested ( either an incentive or media
content).
Additionally, we agree with the Examiner that Appellants' claims do
not recite an incentive concept. The Federal Circuit determined that
Ultramercial 's claims did not recite an inventive concept because neither the
steps that were in addition to the abstract idea (i.e., updating an activity log,
requiring a request from the consumer to view the ad, and restricting public
access) nor the use of the Internet "transform[ ed] an otherwise abstract idea
into patent-eligible subject matter." Ultramercial, 772 F.3d at 716. This is
because "the claimed sequence of steps comprises only 'conventional steps,
specified at a high level of generality,' which is insufficient to supply an
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'inventive concept."' Ultramercial, 772 F.3d at 716. Appellants' claimed
step of determining whether a consumer pressed a button to accept the
advertisement is similar to Ultramercial 's step of requiring a request from
the consumer to view the ad. Appellants' recited wireless device also is
insufficient to add an inventive concept because the wireless device is
recited at a high level of generality and is merely used to receive and display
information ( offers, advertisements, incentives) and to receive an input from
the user-i.e., in a conventional, well-understood, and routine manner.
For the above reasons, the Examiner has not erred in concluding that
the claims are directed to merely an abstract idea without adding
significantly more.
THE § 103 REJECTION
The Examiner finds Lang discloses nearly every limitation recited in
independent claim 1, but relies on Glassman for the general teaching of
techniques for charging an advertiser for placing advertisements and Official
Notice for the general teaching that cross-marketing or cross-selling is well-
known. Final Act. 3-5 (citing Lang ,r,r 50-54, 65-70, 72-77, Fig. 1;
Glassman ,r 134); Ans. 3-5. The Examiner cites Brown (US 2004/0249712
Al; Dec. 9, 2004) in support of the Official Notice's teachings. Ans. 4--5
(citing Brown ,r,r 53, 84, 87-88).
Lang discloses an exemplary scenario in which a potential customer
using Lang's service is interested in eating lunch at a nearby restaurant.
Lang ,r 65. The customer may use her phone to activate a service
application having linked menus, which provides a service allowing the
customer to eventually navigate to Thai restaurants, select the area in which
the customer is interested in searching, and receive a list of business
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accompanied by information about the coupon offers from those businesses
and the distance to the business. Lang ,r,r 65----67. The customer may select a
coupon offer, receive further information regarding restrictions on the
coupon offer, and download the offer. Lang ,r,r 67----68. The user may
activate the coupon offer by navigating other menus and present the coupon
to the business representative to receive the discount. Lang ,r,r 68-70.
Lang also discloses various optional ways for a customer to obtain
coupons (e.g., receiving notifications of new coupons for a certain area,
automatically receiving coupons to the customer's device that match the
customer's interest, searching a web site, or sharing personal information in
exchange for an offer). Lang ,r,r 72-77. Lang discloses additional details
regarding other optional information or features that may be included with
the coupon, such as driving instructions and affiliated information ( e.g.,
congestion information, distance to the business, ET A, etc.) and an
automatic dialing page to contact the business. Lang ,r,r 50-52. Lang also
describes how a user may view their downloaded coupons, search for new
coupons, and redeem their coupons. Lang ,r,r 53-54.
Among other arguments, Appellants argue the Examiner has not
identified an element in Lang that teaches or suggests the recited
advertisement. Appeal Br. 8-10. Appellants argue Lang discloses providing
a customer with a list of potential offers and allowing a user to select and
download a particular coupon for a business, but there is nothing in Lang
that teaches or suggests the advertisement as claimed. Reply Br. 2--4.
Appellants further argue that modifying Lang to provide an incentive or
coupon for an item or business that the customer did not select would render
Lang unsatisfactory for its intended purpose of allowing a customer to
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identify and select a particular offer. Appeal Br. 9--10. In addition to
contesting the appropriateness of the Examiner's taking of Official Notice
(and reliance on Brown as support for that Official Notice in the Answer),
Appellants argue, to the extent the Official Notice is proper, the Examiner
provided no rationale for modifying Lang with the teaching from the Official
notice. Appeal Br. 10-12.
The Examiner finds Lang's coupon offer teaches both the recited
advertisement and the recited incentive. See Ans. 3. Specifically, the
Examiner states the claim recites "sending a message ( offering incentive
which is also advertisement); displaying the message with the incentive on
the wireless device (advertisement); determining whether or not the
consumer has pressed a button; and placing the advertisement ( could be the
discount or coupon that was offered in the message)." Ans. 3.
We agree that there are certain types of publications that may serve as
both an advertisement and an incentive. For example, Lang's coupon offer
20 depicted in Figure 1 is a coupon for Top Tim Thai, which serves both as a
discount (i.e., an incentive) at the restaurant as well as an advertisement for
the restaurant, particularly in a situation where the coupon may include an
address, phone number, or other information describing the products or
services offered by the business. One definition of an "advertisement" is a
"notice, such as a poster or a paid announcement in the print, broadcast, or
electronic media, designed to attract public attention or patronage." See The
Am. Heritage Dictionary Online (noun def. 2), available at
https ://www.ahdictionary.com/word/ search.html? q=advertisement (last
visited December 14, 2018). In fact, one definition of a "coupon" is a "code
or detachable part of a ticket, card, or advertisement that entitles the holder
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to a certain benefit, such as a cash refund or a gift." See The Am. Heritage
Dictionary Online (noun def. 1 ), available at
https://www.ahdictionary.com/word/search.html?q=coupon (last visited
December 14, 2018).
However, Appellants' Specification and claim 1 distinguish between
an offered incentive and an advertisement. See Spec. ,r 113. More
importantly, claim 1 recites specific relationships between the
advertisement, incentive, and vendors that render the Examiner's findings
problematic. In particular, claim 1 recites that the "advertisement is from a
first vendor and the incentive is from a second vendor that is different from
the first vendor." The Examiner has not sufficiently explained how Lang's
coupon offer can be both the recited advertisement and the recited incentive
that are from different vendors. Nor is there sufficient evidence on record to
support a finding that Lang teaches an advertisement and an incentive from
different vendors.
To the extent the Examiner relies on Official Notice (as supported by
Brown) to teach that the advertisement and incentive can come from
different vendors, the Examiner provides insufficient explanation of how
and why a person of ordinary skill in the art would have combined the
Official Notice with Lang to arrive at the claimed arrangement. More
specifically, the Examiner takes Official Notice "that it is old and well
known in the art of marketing for a merchant to provide a discount or
coupon to be used at a different merchant (cross-marketing)" and, therefore,
it would have been obvious to an ordinarily skilled artisan "to provide a
cross-marketing agreement among the merchants of Lang in order to benefit
each other." Final Act. 4.
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Such an explanation fails to find the particularly recited limitation of
sending and displaying a message that offers a customer an incentive from
one in exchange for accepting an advertisement from a different vendor.
Even accepting that cross-marketing is well-known, the Examiner has not
found the particular implementation of cross-marketing recited in the claims
was well-known. Nor has the Examiner provided a rationale with a
reasonable underpinning for making the proposed modification. Instead, the
Examiner merely concludes that, because cross-marketing is well-known, it
would have been obvious to modify Lang to have the advertisement be from
one vendor and the incentive from another vendor. This conclusion does not
explain how the Examiner's finding that a single coupon teaches both the
advertisement and the incentive would be modified to teach an incentive
from one vendor and an advertisement from a different vendor.
Because our decision is dispositive with respect to the Examiner's
rejection under 35 U.S.C. § 103, we need not address Appellants' other
arguments. For the reasons discussed above, we are persuaded the Examiner
erred in rejecting claims independent claims 1 as obvious in view of Lang,
Glassman, and Official Notice. Claims 23-27, 29-31, and 33-35 depend
from and incorporate the limitations of claim 1. Therefore, we also are
persuaded the Examiner erred in rejecting claims 23-27, 29-31, and 33-35
as obvious in view of Lang, Glassman, and Official Notice. Accordingly,
we do not sustain the Examiner's rejection of claims 1, 23-27, 29-31, and
33-35 under 35 U.S.C. § 103.
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DECISION
We affirm the Examiner's decision to rejection claims 1, 23-27,
29-31, and 33-35 as directed to non-statutory subject matter under 35
U.S.C. § 101.
We reverse the Examiner's decision to reject claims 1, 23-27, 29-31,
and 33-35 under 35 U.S.C. § 103.
Because we affirm at least one ground of rejection with respect to
each claim on appeal, the Examiner's decision is affirmed. See 37 C.F.R.
§ 4I.50(a)(l).
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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