Ex Parte Ennis et al

Patent Trial and Appeal Board

Mar 29, 2018

13699574 (P.T.A.B. Mar. 29, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO.
13/699,574
154241 7590
IP Spring - AI
180 N. LaSalle St.
Suite 3700
Chicago, IL 60601
FILING DATE FIRST NAMED INVENTOR
1112112012 Patrick John Ennis
04/02/2018
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.
M-6300.078 US 8124
EXAMINER
BEHESHTI, BRENDON
ART UNIT PAPER NUMBER
3621
NOTIFICATION DATE DELIVERY MODE
04/02/2018 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):
ajay.gambhir@ipspring.com
docket@ipspring.com
paralegalteam@ipspring.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PA TRICK JOHN ENNIS,
ALEXANDER KNIGHT, VLAD GRIGORE DABIJA,
TIMOTHY MARTIN LONDERGAN, DAVID WALTER ASH,
DOMINIC DAN SUCIU, and RAGHURAM MADABUSHI
Appeal2017-001365
Application 13/699,574 1
Technology Center 3600
Before CARL W. WHITEHEAD, JR., JASON V. MORGAN, and
KARA L. SZPONDOWSKI, Administrative Patent Judges.
MORGAN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Introduction
This is an appeal under 35 U.S.C. § 134(a) from the Examiner's Final
Rejection of claims 1, 3, 7, 8, 10, 12, 15-17, 21, 22, 24, 25, 27, 48, and 49.
We have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM.
1 Appellants identify EMPIRE TECHNOLOGY DEVELOPMENT LLC as
the real party in interest. App. Br. 3.
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Application 13/699,574
Invention
Appellants disclose that a processor that may: 1) receive event
information that relates to a status of an event; 2) receive crowd information
that relates to demographics or interests of the participants at the event; and
3) select an advertisement based on the event information and the crowd
information. Abstract.
Representative Claim (key limitations emphasized)
1. A method to select an advertisement to be displayed during
an event, the method comprising, by a processor:
receiving event information, wherein the event information
includes a status of a current activity of a team participating in
the event;
receiving crowd information, wherein the crowd information is
different from the event information and includes social
network information, and the social network information
includes at least one of demographics and interests of
participants of a crowd attending the event;
processing the event information to create processed event
information;
processing the crowd information to create processed crowd
information;
selecting the advertisement from a database of advertisements
based on the processed event information and the processed
crowd information; and
causing the advertisement to be displayed for viewing by at
least one of the participants of the crowd during the event.
Rejections
The Examiner rejects claims 1, 3, 7, 8, 10, 12, 15-17, 21, 22, 24, 25,
27, 48, and 49 under 35 U.S.C. § 112, first paragraph, as failing to comply
with the written description requirement. Final Act. 3-6.
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The Examiner rejects claims 1, 3, 7, 8, 10, 12, 15-17, 21, 22, 24, 25,
27, 48, and 49 under 35 U.S.C. § 112, second paragraph, as being indefinite
for failing to particularly point out and distinctly claim the subject matter
which Appellants regard as the invention. Final Act. 6-8.
The Examiner rejects claims 1, 3, 7, 8, 10, 12, 15-17, 21, 22, 24, 25,
27, 48, and 49 under 35 U.S.C. § 101 as being directed to non-statutory
subject matter. Final Act. 13-16.
The Examiner rejects claims 1, 3, 7, 8, 10, 12, 15-17, 21, 22, 25, 27,
and 492 under 35 U.S.C. § 102(e) as being anticipated by Teller et al. (US
8,812,419 Bl; issued Aug. 19, 2014). Final Act. 17-20.
The Examiner rejects claims 24 and 48 under 35 U.S.C. § 103(a) as
being unpatentable over Teller and Badros et al. (US 2008/0294524 Al;
published Nov. 27, 2008). Final Act. 20-21.
ANALYSIS
We agree with and adopt as our own the Examiner's findings of facts
and conclusions as set forth in the Answer and in the Action from which this
appeal was taken. We have considered Appellants' arguments, but do not
find them persuasive of error. We provide the following explanation for
emphasis.
35 US.C. § 112,first paragraph
In rejecting claim 1 under 35 U.S.C. § 112, first paragraph, the
Examiner notes the Specification fails to provide "useful technical
22 The statement of the rejection contains a minor typographical error.
Specifically, claims 24 and 48 are listed with the claims rejected for
anticipation (Final Act. 17) even though these claims are instead rejected for
obviousness (id. at 20).
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information as to how specifically the [event and crowd] information is
processed and used in the selection process" and that "the disclosure fails to
evidence possession" of the claimed invention. Final Act. 3. The Examiner
notes that, rather than "provide any specific information about how
specifically [the claimed] steps are performed," the Specification merely
"presents a computer-implemented invention disclosed ... in terms of its
functionality." Id. at 4; see also Ans. 7 ("the disclosure is entirely silent as
to how specifically the advertisement is selected based on the specific
information").
Appellants contend the Examiner erred because the disclosure of
"'technical' components [is] not part of the written description requirement."
App. Br. 13. Appellant contend the Specification merely requires "some
text or figures [that] support the claimed subject matter." Id. at 14. In
particular, Appellants submit "the present specification indeed includes text
that is almost exactly the same as [the] words found in the claim." Id.
(emphasis added).
Appellants' arguments are unpersuasive because, whether in the form
of "technical components" or not, the Specification must reasonably convey
to an artisan of ordinary skill that Appellants had possession of the claimed
invention at the time the application was filed. See Vasudevan Software,
Inc. v. MicroStrategy, Inc., 782 F.3d 671, 682 (Fed. Cir. 2015) (citing Ariad
Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en
bane)). Generic claim language in the Specification-such as functional
language merely describing an intended result-that fails to support the
scope of the claimed invention is insufficient to show possession, even when
the claim recitations are found word-for-word in the Specification. See
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Vasudevan, 782 F.3d at 682 ("[t]he written description requirement is not
met if the specification merely describes a 'desired result"') (citing Ariad,
598 F.3d at 1349); Enzo Biochem, Inc. v. Gen-Probe, Inc., 323 F.3d 956,
968 (Fed. Cir. 2002) ("[t]he appearance of mere indistinct words in a
specification or a claim, even an original claim, does not necessarily satisfy"
the written description requirement). The Specification must explain, for
example, how Appellants intended to achieve the claimed function to satisfy
the written description requirement. Vasudevan, 782 F.3d at 683. While
"[t]here is no rigid requirement that the disclosure contain 'either examples
or an actual reduction to practice,"' the written description requirement
requires the Specification set forth "an adequate description that 'in a
definite way identifies the claimed invention' in sufficient detail such that a
person of ordinary skill would understand that the inventor had made the
invention at the time of filing." Allergan, Inc. v. Sandoz Inc., 796 F.3d
1293, 1308 (Fed. Cir. 2015) (citingAriad, 598 F.3d at 1352).
Here, an artisan or ordinary skill would be unable to discern how
Appellants intended to achieve at least the function embodied in the recited
step of selecting the advertisement from a database of advertisements based
on the processed event information and the processed crowd information, or
otherwise be provided with sufficient detail to understand Appellants had
possession of the claimed invention at the time of filing. Although two
inputs (i.e., processed event information and processed crowd information),
one output (i.e., an advertisement), and a resource (i.e., a database of
advertisements) are recited, it is unclear how Appellants intended to perform
the claimed selecting. Claim 1 does not include any recitations directed to a
particular process for performing the claimed selecting (nor, for that matter,
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do any of the other claims, independent or dependent). Furthermore,
Appellants do not direct our attention to any disclosures in the Specification
that explain how Appellants intended to achieve the claimed selecting.
Appellants argue the Specification discloses that "gathered event
information and crowd information is ... processed by a processor
executing instructions in a memory in order to weigh both the event and
crowd information to determine an advertisement to display." App. Br. 17;
see also Reply Br. 3 ("utilizing memories and processors provides speed [in]
determining and displaying an advertisement based on processing the
gathered information"). However, it is not enough that an artisan could
write a program to achieve the disclosed and claimed function. See Manual
of Patent Examining Procedure (9th ed., rev. 08.2017) § 2161.01.I (Jan.
2018) (citing Vasudevan Software, Inc., 782 F.3d at 681-83).
The Specification discloses that "[a ]dvertisement processor 122 may
select one or more advertisements 134, 136 from an advertisement database
124 based on event information 132, crowd information 130, and
instructions 128 in a memory 126." Spec. i-f 12; see also id. Fig. 1. The
Specification also discloses that "[ u ]sing event information and crowd
information [such as the mood of participants, or crowd demographics or
interests], an advertisement processor may select and display
advertisements." Id. i-f 28; see also id. Figs. 5---6. Although Appellants
contend these disclosures provide support for the selecting step (App. Br. 6),
we are unable to discern from these disclosures, or any other disclosures
identified by Appellants, any explanation of how Appellants intended to
achieve the claimed function. Vasudevan Software, Inc., 782 F.3d at 683.
Therefore, we agree with the Examiner that the Specification fails to
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reasonably convey to an artisan of ordinary skill that Appellants had
possession of the claimed invention at the time of the filing, at least with
respect to the claim 1 recitation of "selecting the advertisement from a
database of advertisements based on the processed event information and the
processed crowd information."
Accordingly, we sustain the Examiner's 35 U.S.C. § 112, first
paragraph, rejection ofclaim 1, and claims 3, 7, 8, 10, 12, 15-17, 21, 22, 24,
25, 27, 48, and 49, which contain similar recitations and which Appellants
argue together with claim 1. App. Br. 12.
35 US.C. § 112, second paragraph
35 U.S.C. § 112, second paragraph, provides that "[t]he specification
shall conclude with one or more claims particularly pointing out and
distinctly claiming the subject matter which the applicant regards as his
invention." The Federal Circuit has stated that "[i]t makes good sense, for
definiteness and clarity ... for the USPTO initially to reject claims based on
a well-founded prima facie case of lack of clarity (in its several forms) based
on the perspective of one of ordinary skill in the art in view of the entire
written description and developing prosecution history." In re Packard, 751
F.3d 1307, 1312 (Fed. Cir. 2014). A rejection is well-grounded ifit merely
"identifies ways in which language in a claim is ambiguous, vague,
incoherent, opaque, or otherwise unclear in describing and defining the
claimed invention." Id. at 1311.
In rejecting claim 1under35 U.S.C. § 112, second paragraph, the
Examiner concludes that, in light of the lack of technical details related to
the steps of processing event information to create processed event
information and processing the crowd information to create processed
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crowd information, "the metes and bounds of the claim cannot be reasonably
ascertained," thus rendering the claim indefinite. Final Act. 7; see also id. at
11-12; Ans. 10-11.
Appellants contend the Examiner erred because 35 U.S.C. § 112 does
not require "technical details" and, "in any event, the application does
include technical components." App. Br. 17-18; see also id. at 15-16.
However, an artisan of ordinary skill, "after considering the information
provided by the applicant including the written description, and after putting
the disputed term in the context of the proposed patent, [would] find[] the
claim to contain words or phrases whose meaning is unclear." Packard, 751
F.3d at 1323 (Plager, J., concurring).
Neither the claim recitations nor the disclosures cited by Appellants
provide sufficient details to provide an artisan of ordinary skill with the
requisite clarity with respect to the disputed claim recitations. Appellants
submit the Specification discloses that "[i]n processing crowd information
130, advertisement processor 122 may prioritize and/or more heavily weigh
turnstile information 146, seat information 150 and/or ticket processing
information 154 higher than other information" and that "ticket processing
information 154 and social network information 13 8 may be weighed
heavier" or "mobile device messages 142 and seat device information 150
may be weighed heavier" depending on whether event 200 has started. App.
Br. 15-16 (citing Spec. i-fi-f 19-20); see also App. Br. 5. Appellants further
submit the Specification discloses that:
[a ]dvertisement processor 122 may ... process event information
132 .... Depending on a status of an event, advertisement
processor 122 may select a different, or no advertisement. ...
Instructions 128 may indicate that slower moments may be more
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conducive to displaying advertisements or that different
advertisements should be displayed depending on the interest
level of the event
App. Br. 16 (citing Spec. 23-25); see also App. Br. 4--5.
Appellants argue the Specification discloses that "gathered event
information and crowd information is then processed ... in order to weigh
both the event and crowd information to determine an advertisement." Id. at
17. That is, Appellants argue that processed event information is event
information that has been weighed, while processed crowd information is
crowd information that has been weighed. However, the cited disclosures do
not discuss weighing event information at all, either alone or in combination
with weighed (or processed) crowd information. Moreover, the
Specification broadly discloses that crowd information may include "ticket
processing information or turnstile information," "seat device information,"
or "social network information" such as "demographics and interests of
participants of a crowd," "an indication that at least one participant is
currently at the event," "a check-in at a location of the event," "geography
coordinates," or "a mobile device message." App. Br. 5 (citing Spec. i-fi-f 14--
17). Yet, the cited disclosures fail to disclose what it means to weigh such
disparate information. Because neither the claim nor the Specification
makes clear what it means to weigh (or otherwise process) either event
information or crowd information, we agree with the Examiner that the
claim 1 recitations directed to "processing the event information to create
processed event information" and "processing the crowd information to
create processed crowd information" are indefinite.
Accordingly, we sustain the Examiner's 35 U.S.C. § 112, second
paragraph, rejection ofclaim 1, and claims 3, 7, 8, 10, 12, 15-17, 21, 22, 24,
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25, 27, 48, and 49, which contain similar recitations and which Appellants
argue together with claim 1. App. Br. 12.
35 us.c. § 101
In rejecting claim 1 under 35 U.S.C. § 101, the Examiner concludes
the claimed invention is merely "directed to gathering, processing and
comparing and formatting information ... to make a selection for
transmission," and thus is directed to an abstract "organization and
comparison of data which can be performed mentally." Final Act. 14; see
also Ans. 15. The Examiner further concludes that the limitations in claim 1
(and in the other claims similar rejected) directed to processors, memories,
and instructions are merely directed to "generic computing components
performing generic computing activities of executing programming,
extracting, receiving, processing, calculating or transmitting of data or
information" and thus "do not amount to significantly more than the
[underlying] abstract idea." Final Act. 15 (citing Spec. i-fi-1 3 7, 3 8, and 41-
46); see also Ans. 16.
Appellants contend the Examiner erred because the claimed invention
"is directed to improved data gathering and analysis and selecting an
advertisement to display based on the gathered data and analysis." App. Br.
20. Appellants argue that similarly rejected claim 49's "operations
performed by the advertising processor ... could not be achieved as a
mental process." Id. at 22. However, the operations or steps in the claims-
directed to using crowd and event information to select an advertisement-
are quintessential mental process steps directed to using audience
information, combined with a sensitivity for the context presented by events,
to select an advertisement that the audience is likely to be receptive to and
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that is pertinent to their situational context. Thus, the claims are directed to
"essentially mental processes within the abstract-idea category." Electric
Power Group, LLC v. Alstom S.A., 830 F.3d 1350, 1354 (Fed. Cir. 2016);
see also Cybersource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1375
(Fed. Cir. 2011) ("That purely mental processes can be unpatentable, even
when performed by a computer, was precisely the holding of the Supreme
Court in Gottschalk v. Benson.").
Appellants further argue that claim 1 is directed to statutory subject
matter because the claim recites "selecting an advertisement from a
'database of advertisements' and causing 'the advertisement to be displayed
for viewing by at least one of the participants of the crowd during the
event."' App. Br. 22; see also Reply Br. 5---6. However, we agree with the
Examiner (see Ans. 17) that the recitation of a generic database, even in
combination with other generic computer elements, does not introduce
anything significantly more so as to "transform [the] patent-ineligible
abstract idea into a patent-eligible invention." Alice Corp. Pty. v. CLS Bank
Int'!, 134 S. Ct. 2347, 2358 (2014). Moreover, displaying the advertisement
adds nothing more in terms of transformation of the abstract idea because
"merely presenting the results of abstract processes of collecting and
analyzing information, without more ... is abstract as an ancillary part of
such collection and analysis." Electric Power Group, 830 F.3d at 1354.
For these reasons, we agree with the Examiner that claim 1 is directed
to non-statutory subject matter. Accordingly, we sustain the Examiner's 35
U.S.C. § 101 rejection ofclaim 1, and claims 3, 7, 8, 10, 12, 15-17, 21, 22,
24, 25, 27, 48, and 49, which contain similar recitations and which
Appellants argue together with claim 1. App. Br. 12.
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35 USC§§ 102(e), 103(a)
In rejecting claim 1under35 U.S.C. § 102(e), the Examiner finds
Teller's disclosed targeted advertising to a group of people, using context
data such as proximate events, social network information, etc., discloses the
recitations of claim 1, including the claimed event information, crowd
information, and the step of selecting an advertisement from a database of
advertisements based on processed event information and processed crowd
information. Final Act. 18 (citing, e.g., Teller col. 1, 11. 21-32, col. 3, 11. 50-
53, col. 5, 11. 49-60, col. 6, 11. 44--45, and col. 6, 11. 56-58); see also Ans. 19.
Appellants contend the Examiner erred because Teller shows "the
system determining an advertisement based on historical data (people who
have a similar purchase history who also passed through a location on a day
with similar weather) and the current location and weather." App. Br. 24
(emphasis added). Appellants further argue Teller "construe[ s] sports
events, players, and field positions as related objects proximate to a location.
Teller does not ... show context data related to activities of a team
participating in an event." Reply Br. 6.
Appellants' arguments are unpersuasive because, as the Examiner
correctly notes, Appellants' arguments do not distinguish the claimed crowd
information and event information from Teller's teachings directed to
information about "persons watching a sports game" (i.e., crowd
information) and information about "sports events, players, field positions,
etc." (i.e., event information). Ans. 19 (citing Teller col. 1, 11. 21-32, col. 6,
11. 44--45). The claimed invention does not preclude the use of "historical"
information in making the claimed advertisement selection. Nor does the
claimed "status of a current activity of a team participating in [an] event"
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preclude information such as players and field positions. Therefore, we
agree with the Examiner that Teller discloses all of the disputed recitations
of claim 1.
Accordingly, we sustain the Examiner's 35 U.S.C. § 102(e) rejection
of claim 1, and claims 3, 7, 8, 10, 12, 15-17, 21, 22, 25, 27, and 49, which
are similarly rejected and which Appellants argue together with claim 1.
App. Br. 12. For similar reasons, we also sustain the Examiner's
35 U.S.C. § 103(a) rejection of claims 24 and 48, also argued together with
claim 1. Id.
DECISION
We affirm the Examiner's decision rejecting claims 1, 3, 7, 8, 10, 12,
15-17, 21, 22, 24, 25, 27, 48, and 49.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 41.50(±).
AFFIRMED
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