Ex Parte Esprey

Patent Trial and Appeal Board

Feb 28, 2019

13158355 (P.T.A.B. Feb. 28, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/158,355 06/10/2011
149749 7590 03/04/2019
ITW c/o MCANDREWS HELD & MALLOY
500 WEST MADISON STREET
SUITE 3400
CHICAGO, IL 60661
FIRST NAMED INVENTOR
Vaughan Thomas Esprey
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.
62617US01 (22845) 9236
EXAMINER
TSUI, ALFRED H
ART UNIT PAPER NUMBER
3621
NOTIFICATION DATE DELIVERY MODE
03/04/2019 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):
mhmpto@mcandrews-ip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte VAUGHAN THOMAS ESPREY 1
Appeal 2017-011218
Application 13/158,355
Technology Center 3600
Before JAMES R. HUGHES, JASON J. CHUNG, and
BETH Z. SHAW, Administrative Patent Judges.
HUGHES, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134(a) of the
Examiner's decision rejecting claims 1, 4, 6-8, 10-16, and 18-25. Claims 2,
3, 5, 9, and 17 have been canceled. 2 Final Act. 1-2; Appeal Br. 3. 3 We
have jurisdiction under 35 U.S.C. § 6(b ).
1 Illinois Tool Works Inc. ("Appellant") is the applicant as provided in
37 C.F.R. § 1.46 and is identified as the real party in interest. Appeal Br. 2.
2 The Examiner includes canceled claim 9 in the pending claims. See Final
Act. 1-2. We find this typographical error harmless.
3 We refer to Appellant's Specification ("Spec.") filed June 10, 2011;
Appeal Brief ("Appeal Br.") filed Mar. 13, 2017; and Reply Brief ("Reply
Br.") filed Aug. 30, 2017. We also refer to the Examiner's Final Office
Appeal 2017-011218
Application 13/158,355
We affirm.
Appellant's Invention
The invention relates generally "an advertisement generating system,
more particularly to an advertisement generating system adapted for a point-
of-sale or a service point apparatus such as a weighing scale" (Spec. ,r 2).
See Spec. ,r,r 6-16; Abstract.
Representative Claim
Independent claim 1, reproduced below, further illustrates the
invention:
1. An advertisement generating system, comprising:
a product related database of product related data;
a promotional database of promotional data; and
a client device comprising:
an input device configured to receive one or more user
selections relating to the product related data and the promotional
data; and
a controller operable to permit selection of the
promotional data from the promotional database based at least in
part on the one or more user selections received via the input
device, to access the product related database for selection of the
product related data based at least in part on the one or more user
selections received via the input device, to provide correlation of
the product related data and the promotional data based at least
in part on the one or more user selections received via the input
device, to output the product related data and the promotional
data on a background template in the form of an advertisement
via a display unit of the client device, and to communicate the
advertisement to one or more other client devices
communicatively coupled to the client device via a network,
Action ("Final Act.") mailed Oct. 13, 2016; and Answer ("Ans.") mailed
June 30, 2017.
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wherein the advertisement comprises a plurality of data types or
layers superimposed on the background template.
Rejections on Appeal
1. The Examiner rejects claims 1, 4, 6-8, 10-16, and 18-2 5 under
35 U.S.C. § 101 as being directed to patent-ineligible subject matter. See
Final Act. 3-6.
2. The Examiner rejects claims 1, 4, 6-8, 10-16, and 18-25 under
pre-AIA 35 U.S.C. § I03(a) as being unpatentable over Schuller et al. (US
2004/0211600 Al, published Oct. 28, 2004) ("Schuller"), Evans (US
2010/0324997 Al, published Dec. 23, 2010), and Isomura et al. (US
2006/0078173 Al, published Apr. 13, 2006) ("Isomura"). See Final Act. 7-
18.
ISSUES
Based upon our review of the record, Appellant's contentions, and the
Examiner's findings and conclusions, the issues before us follow:
1. Did the Examiner err in finding Appellant's claims were
directed to patent-ineligible subject matter under 35 U.S.C. § 101?
2. Did the Examiner err in determining that the combination of
Schuller, Evans, and Isomura would have collectively taught or suggested "a
controller operable" "to communicate the advertisement to one or more
other client devices communicatively coupled to the client device via a
network, wherein the advertisement comprises a plurality of data types or
layers superimposed on the background template" within the meaning of
Appellant's claim 1 and the commensurate limitations of claim 16?
3. Did the Examiner err in determining that the combination of
Schuller, Evans, and Isomura would have collectively taught or suggested "a
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controller operable" "to wirelessly push the advertisement to one or more
client devices communicatively coupled to the client device via a wireless
communication network" as recited in Appellant's claim 25?
4. Did the Examiner err in determining that the combination of
Schuller, Evans, and Isomura would have collectively taught or suggested
the additional features recited in Appellant's claims 20 and 24?
ANALYSIS
Patent-Ineligible Subject Matter Rejection
The Examiner rejects claims 1, 4, 6-8, 10-16, and 18-25 as a group
based on claim 1 (see Final Act. 3---6) and concludes claim 1 is directed to
patent-ineligible subject matter in that claim 1 is "directed to the abstract
idea of generating advertisements through correlation of product and
promotional data and outputting advertisements." Final Act 4. The
Examiner also concludes the claims "do not include additional elements that
are sufficient to amount to significantly more than the judicial exception
because the additional computer elements, which are recited at a high level
of generality, provide conventional computer functions that do not add
meaningful limits to practicing the abstract idea." Final Act. 4; see Final
Act. 5---6. The Examiner expands on these findings and conclusions in the
Examiner's Answer. See Ans. 4--7.
Appellant contends the Examiner erred in rejecting the claims as
being directed to patent-ineligible subject matter. See Appeal Br. 5-13;
Reply Br. 2-9. Specifically, Appellant contends "the present claims do not
recite abstract ideas" (Appeal Br. 7 (emphasis omitted)) and the claims
neither fall within the categories nor are the claims similar to any examples
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provided within the USPTO's subject matter eligibility guidance (see Appeal
Br. 8-10; Reply Br. 3---6). Appellant further contends the claims are
"'necessarily rooted in computer technology in order to overcome a problem
specifically arising in the realm of computer networks"' (Appeal Br. 9
(quoting DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir.
2014)) and "the present claims are directed to technology specific to solving
an Intemetcentric problem of expending time and effort experienced by
users for generating advertisements," and "are related to overcoming a
problem specifically arising in the realm of computer networks" similar to
DDR Holdings (Appeal Br. 10). See Appeal Br. 9-10; Reply Br. 5---6.
Appellant also reiterates the limitations of claim 1 (see Appeal Br. 12)
and contends "the combination of features recited by the present claims
amount to significantly more than the alleged abstract ideas themselves"
(Appeal Br. 10 (emphasis omitted)), as well as "the present claims include
meaningful limitations beyond generally linking the use of an abstract idea
to a particular technological environment" (Appeal Br. 11 ( emphasis
omitted)). Additionally, Appellant cites Google Inc. v. SimpleAir, Inc.,
CBM 2014-00170, 2015 WL 331089 (Jan. 22, 2015) ("Google") as
supporting the position that the claims "provide unconventional steps that
confine the abstract idea to a particular useful application, and thus recites
patent eligible subject matter." Appeal. Br. 12.
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.
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Ltd. v. CLS Bank Int 'l, 573 U.S. 208, 216 (2014) ( quoting Ass 'n for
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, 77-80 (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, 573 U.S. at
21 7. Assuming that a claim nominally falls within one of the statutory
categories of machine, manufacture, process, or composition of matter, the
first step in the analysis is to "determine whether the claims at issue are
directed to one of those patent-ineligible concepts" (id.), e.g., to an abstract
idea. See Alice, 573 U.S. at 219 ("On their face, the claims before us are
drawn to the concept of intermediated settlement, i.e., the use of a third party
to mitigate settlement risk."); see also Bilski v. Kappas, 561 U.S. 593, 611
(2010) ("Claims 1 and 4 in petitioners' application explain the basic concept
of hedging, or protecting against risk."). Concepts determined to be abstract
ideas, and thus patent ineligible include, but are not limited to, certain
methods of organizing human activity, such as fundamental economic
practices (Alice, 573 U.S. at 219-20; Bilski, 561 U.S. at 611); mathematical
formulas (Parker v. Flook, 437 U.S. 584, 594--95 (1978)); and mental
processes (Gottschalkv. Benson, 409 U.S. 63, 69 (1972)).
If the claims are not directed to an abstract idea, the inquiry ends.
Otherwise, the inquiry proceeds to the second step of the Alice and Mayo
framework where 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
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application." Alice, 573 U.S. at 217 (quoting Mayo, 566 U.S. at 78-79).
This second step is described as "a search for an 'inventive concept'-i.e.,
an element or combination of elements that is ' ... significantly more than
... the [ineligible concept] itself."' Id. at 217-218 ( alteration in original)
(quoting Mayo, 566 U.S. at 72-73). "A claim that recites an abstract idea
must include 'additional features' to ensure 'that the [claim] is more than a
drafting effort designed to monopolize the [abstract idea]."' Alice, 573 U.S.
at 221 ( quoting Mayo, 566 U.S. at 77). "[M]erely requir[ing] generic
computer implementation[] fail[ s] to transform that abstract idea into a
patent-eligible invention." Id.
The Court acknowledged in Mayo that "all inventions at some level
embody, use, reflect, rest upon, or apply laws of nature, natural phenomena,
or abstract ideas." Mayo, 566 U.S. at 71. We, therefore, look to whether the
claims focus on a specific means or method that improves the relevant
technology or are instead directed to a result or effect that itself is the
abstract idea and merely invoke generic processes and machinery. See
Enfzsh, LLC v. Microsoft Corp., 822 F.3d 1327, 1336 (Fed. Cir. 2016).
The PTO recently published revised guidance on the application of
§ 101. USPTO's 2019 Revised Patent Subject Matter Eligibility Guidance,
84 Fed. Reg. 50 (Jan. 7, 2019) (hereinafter "2019 Revised Guidance").
Under that guidance, we first look to whether the claim recites:
(1) any judicial exceptions, including certain groupings of abstract
ideas (i.e., mathematical concepts, certain methods of organizing
human activity such as a fundamental economic practice, or mental
processes) (hereinafter "Step 2A, prong 1 "); and
(2) additional elements that integrate the judicial exception into a
practical application (see MPEP § 2106.05(a}-(c), (e}-(h))
(hereinafter "Step 2A, prong 2").
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Only if a claim (1) recites a judicial exception and (2) does not integrate that
exception into a practical application, do we then look to whether the claim:
(3) adds a specific limitation beyond the judicial exception that is not
"well-understood, routine, conventional" in the field (see MPEP
§ 106.05(d)); or
(4) simply appends well-understood, routine, conventional activities
previously known to the industry, specified at a high level of
generality, to the judicial exception. 4
See 2019 Revised Guidance.
Eligibility Analysis-Revised Guidance Steps 1 and 2A, Prong 1
Turning to the first step of the eligibility analysis, "the first step in the
Alice inquiry ... asks whether the focus of the claims is on the specific
asserted improvement in computer capabilities ... or, instead, on a process
that qualifies as an 'abstract idea' for which computers are invoked merely
as a tool." Enfzsh, 822 F.3d at 1335-36. "The abstract idea exception
prevents patenting a result where 'it matters not by what process or
machinery the result is accomplished."' McRO, Inc. v. Bandai Namco
Games Am. Inc., 837 F.3d 1299, 1312 (Fed. Cir. 2016) (quoting O'Reilly v.
Morse, 56 U.S. (15 How.) 62, 113 (1853)).
The Examiner determines independent claim 1 is directed to the
abstract idea of "generating advertisements through correlation of product
and promotional data and outputting advertisements" (Final Act. 4; see Ans.
4--5), similar to cases involving data comparisons that can be performed
mentally-"comparing new and store information and using rules to identify
4 Items (3) and (4) are collectively referred to as "Step 2B" hereinafter and
in the 2019 Revised Guidance.
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options" (Final Act. 4; see SmartGene, Inc. v. Advanced Biological Labs.,
SA, 555 F. App'x 950, 954-55 (Fed. Cir. 2014)}-and organizing or
analyzing information in a way that can be performed mentally-
"organizing, categorizing, storing and transmitting information" (Final Act.
4; see Cyberfone Sys., LLC v. CNN Interactive Grp., Inc., 558 F. App'x 988,
992 (Fed. Cir. 2014). See Final Act. 4; Ans, 4--5. Here, in rejecting the
claims (in particular claim 1) under 35 U.S.C. § 101, the Examiner analyzed
the claims using the Mayo/Alice two-step framework, consistent with the
guidance set forth in the USPTO's "2014 Interim Guidance on Patent
Subject Matter Eligibility," 79 Fed. Reg. 74618 (Dec. 16, 2014), in effect at
the time the rejection was made, i.e., on Oct. 13, 2016. We agree with the
Examiner that Appellant's claim 1 ( and the other pending claims) are
directed to patent-ineligible abstract ideas or concepts. In view of the 2019
Revised Guidance, we clarify and expand the Examiner's reasoning as
follows.
We begin our analysis by broadly but reasonably construing
Appellant's claim 1. Claim 1 recites a computer implemented information
generating system-an "advertisement generating system" that includes
databases (a product-related data database and a promotional data database),
a client device, and a controller. See claim 1; Spec. ,r,r 2, 23-28, 30). The
client device further includes an input device (interface) that receives user
selections of the product-related data and the promotional data. See claim 1;
Spec. ,r,r 24, 28.
The controller facilitates access and selection of (is operable to permit
selection of) the promotional data as well as product-related data, correlates
(provides correlation of) the data (product-related data and promotional
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data), outputs the data (product-related data and promotional data) to a
background template in the form of an advertisement via a display unit of
the client device, and communicates the advertisement to additional client
devices networked with ( communicatively coupled to) the first client device.
The advertisement itself, which is a data structure, comprises a plurality of
data types or layers superimposed on the background template. See claim 1;
Spec. ,r,r 23-28, 30. That is, the controller performs various functionality to
correlate data from a product-related data database and a promotional data
database, and output the correlated data to a background template in the
form of an advertisement.
Claim 1 also includes additional features (elements) that are part of
the advertisement generation system, appurtenant to the advertisement
generation process, but do not further limit the advertisement generation
system. These elements include: the product related database ( database
containing product related data), the promotional database ( database
containing promotional data), the client device (primary client device e.g.,
weighing scale) further including the input device for receiving user
selections, the "other" client devices networked to the primary client device,
and the controller that performs the advertisement generation functionality.
Appellant's Specification does not define these additional elements or
explain in any detail the structure of the elements.
In each instance the above-identified additional elements consist of
structural elements that, while necessary to perform the functionality of the
advertisement generation process, do not limit how the functionality is
actually performed. For example, the recited "controller" is described in the
Specification as "a controller in the form of a processor" (Spec. ,r 24) that
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"executes computer executable program instructions" (Spec. ,r 25). The
Specification further describes the controller/processor as being "any
number of computer processors, such as processors from Intel Corporation."
Spec. ,r 25.
In summary, claim 1 recites a computer implemented advertising
generation process, including the steps of correlating data from databases
and output the correlated data to a background template in the form of an
advertisement, utilizing a controller, client device and databases.
Hereinafter, we refer to this process as the "advertisement generation
process" and the system as the "advertisement generation system."
We find that the claim recites a "system" comprising structural
components ( devices or apparatuses) and functionality ( a process) for
generating advertisements. Accordingly, we interpret the claim as a process
or method for generating advertisements. A process is a statutory category
of invention (subject matter) (USPTO's Step 1 ). Utilizing our interpretation
of claim 1 (supra), we analyze whether the claim is directed to an abstract
idea (USPTO's Step 2A). Here, Appellant's claims generally, and
independent claim 1 in particular ( as summarized, supra), are directed to
generating advertisements by correlating data and outputting the correlated
data to a background template in the form of an advertisement. This is
consistent with how Appellant describes the claimed invention. See Spec. 2;
Appeal Br. 2-3 (citing Spec. ,r,r 23-28, 30; Figs. 1-5).
Appellant's claim 1 recites a judicial exception (USPTO's Step 2A,
Prong 1; see 2019 Revised Guidance). The advertisement generation
process is a method of organizing human activity, in particular, a
fundamental economic practice.
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Processes for generating advertising are a well-known business
practice that is not patent eligible. See Affinity Labs of Tex., LLC v.
DIRECTV, LLC, 838 F.3d 1266, 1267 (Fed. Cir. 2016) (the claims are
directed to "a method for targeted advertising" where "an advertisement is
selected for delivery to the user of a portable device based on at least one
piece of demographic information about the user." Id. at 1267. These
claims fall within the category of "adding conventional computer
components to well-known business practices." Id. at 1270. As such, the at-
issue claim( s) is "not directed to the solution of a 'technological problem,' ..
. nor is it directed to an improvement in computer or network functionality."
The claims instead recite "the general concept of streaming user-selected
content to a portable device. The addition of basic user customization
features to the interface does not alter the abstract nature of the claims and
does not add an inventive component that renders the claims patentable." Id.
at 1272.); Intellectual Ventures I LLC v. Capital One Bank, 792 F.3d 1363,
1369--70 (Fed. Cir. 2015) (tailoring of content (i.e., advertising) based on
information about a user is an abstract idea and a fundamental business
practice); Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 714--15 (Fed. Cir.
2014) (claim directed to selecting and displaying an advertisement in
exchange for access to media (see id. at 714) "is directed to an abstract idea"
(id. at 715)).
Our conclusion, that the advertisement generation process is a method
of organizing human activity, or more particularly, a fundamental economic
practice, is supported by the similarities between Appellant's claim 1 and the
claims in precedent cases that "simply use computers to serve a conventional
business purpose." Affinity Labs, 838 F.3d at 1261; see Alice, 573 U.S. at
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219 ( concluding that concept of intermediated settlement was "a
fundamental economic practice long prevalent in our system of commerce"
and thus an abstract idea). As explained by the Federal Circuit, the claims at
issue in Affinity Labs were not "directed to how to implement" the abstract
concept, but claimed the function itself instead of a particular way to
perform the function. Affinity Labs, 838 F.3d at 1258.
Claim 1 is no different. It broadly recites the commercial practice of
advertisement generation. While the claim limitations provide steps for
using various computers or devices to perform the process, the limitations
contain no technical details or explanation of how to implement the claimed
abstract idea using the computer. Absent such a disclosure, we cannot
conclude that claim 1 covers anything more than the use of a computer for a
conventional business purpose. See Affinity Labs, 838 F.3d at 1261.
Eligibility Analysis-Revised Guidance Step 2A, Prong 2
Appellant's claim 1 also recites additional elements beyond the
abstract advertisement generation process (the judicial exception) (supra).
These elements include, as previously discussed (supra): the databases
(product related data database and promotional data database), the client
device further including the input device, the "other" client devices, and the
controller that performs the advertisement generation functionality.
We evaluate these additional elements to determine whether the
additional elements integrate the advertisement generation process ( the
judicial exception) into a practical application of the exception (USPTO's
Step 2A, Prong 2; see 2019 Revised Guidance). Appellant contends (supra)
that the claims are "'necessarily rooted in computer technology"' (Appeal
Br. 9 (quoting DDR Holdings, 773 F.3d at 1257)), "the present claims are
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directed to technology specific to solving an Intemetcentric problem ... for
generating advertisements," and "are related to overcoming a problem
specifically arising in the realm of computer networks" (Appeal Br. 10),
similar to DDR Holdings. See Appeal Br. 9-10; Reply Br. 5---6. In other
words, Appellant contends the claims recite meaningful limitations that
sufficiently limit the practical application of the alleged abstract idea. We
disagree. Appellant's additional elements (or the combination of the
additional elements) do not apply or use the advertisement generation
process (the judicial exception) in a manner that imposes a meaningful limit
on the judicial exception, such that it is more than a drafting effort designed
to monopolize the exception. See Alice, 573 U.S. at 221-24 (citing Mayo,
566 U.S. at 78-85). Rather, Appellant's claims recite computers (the
controller (processor), client devices, and databases) that are utilized as tools
to perform the advertisement generation process (the abstract idea).
Utilizing a computer as a tool to perform the abstract idea does not impose a
meaningful limit on the abstract idea. See MPEP § 2106.05(±); see also
Alice, 573 U.S. at 223 ("if [the] recitation of a computer amounts to a mere
instruction to implement an abstract idea on a computer that addition cannot
impart patent eligibility" ( quotations and internal citations omitted)).
Appellant's claims can be distinguished from patent-eligible claims
such as those in McRO, Enfish, Bascom (Bascom Global Internet Servs., Inc.
v. AT&T Mobility LLC, 827 F.3d 1341 (Fed. Cir. 2016)), and DDR Holdings
that are directed to "a specific means or method that improves the relevant
technology" (McRO, 837 F.3d at 1314), or "a specific improvement to the
way computers operate" (Enfzsh, 822 F.3d at 1336), solving a technology-
based problem (BASCOM, 827 F.3d at 1349-52), or a method "rooted in
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computer technology in order to overcome a problem specifically arising in
the realm of computer [technology]" (DDR Holdings, 773 F.3d at 1257).
Contrary to Appellant's arguments, claim 1 is not a specific technological
improvement or an improvement in a technology. Appellant's claim 1 does
not "improve the functioning of the computer itself' or "any other
technology or technical field." Alice, 573 U.S. at 225. Nor, does it provide
a technological solution to a technological problem. See DDR Holdings, 773
F.3d at 1257. See MPEP § 2106.05(a). Rather, Appellant's claims and, in
particular, the above-identified additional elements are similar to the claims
in Alice (see Alice, 573 U.S. at 225-26) and Versata Dev. Group, Inc. v. SAP
Am., Inc., 793 F.3d 1306, 1333-34 (Fed. Cir. 2015) in that the instant claims
implement a known business practice utilizing a general purpose computer.
In summary, "the focus of the claims is not on such an improvement
in computers as tools, but on certain independently abstract ideas that use
computers as tools." Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350,
13 54 (Fed. Cir. 2016). Thus, we agree with the Examiner that the claims are
directed to the abstract idea of performing "a series of steps for a travel-
related financial transaction, which are a fundamental economic practice"
(Final Act. 2), or as we clarify (supra) performing a transaction approval
process utilizing a generic computer.
Eligibility Analysis-Step 2B ("Significantly More")
Having concluded Appellant's claims are directed to an abstract idea
under the 2019 Revised Guidance Step 2A analysis, we next address
whether the claims add significantly more to the alleged abstract idea. As
directed by our reviewing court, we search for an "'inventive concept'
sufficient to 'transform the nature of the claim into a patent-eligible
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application."' McRO, 837 F.3d at 1312 ( quoting Alice, 573 U.S. at 217).
The implementation of the abstract idea involved must be "more than
performance of 'well-understood, routine, [and] conventional activities
previously known to the industry."' Content Extraction & Transmission
LLC v. Wells Fargo Bank, Nat'! Ass'n, 776 F.3d 1343, 1347--48 (Fed. Cir.
2014) (alteration in original) (quoting Alice, 573 U.S. at 225). The
"inventive concept" "must be significantly more than the abstract idea itself,
and cannot simply be an instruction to implement or apply the abstract idea
on a computer." Bascom, 827 F.3d at 1349 (citation omitted).
Here, the Examiner reiterated the limitations of claim 1 and
determined that Appellant's claims do not add significantly more: "[t]he
claim( s) do not include additional elements that are sufficient to amount to
significantly more than the judicial exception because the additional
computer elements, which are recited at a high level of generality, provide
conventional computer functions that do not add meaningful limits to
practicing the abstract idea." Final Act. 4; see Final Act. 5; Ans. 5-7.
Appellant also reiterates the limitations of claim 1 (see Appeal Br. 12-13),
contends "the combination of features recited by the present claims amount
to significantly more than the alleged abstract ideas themselves" (Appeal Br.
10 ( emphasis omitted)), and contends "the present claims include
meaningful limitations beyond generally linking the use of an abstract idea
to a particular technological environment" (Appeal Br. 11 ( emphasis
omitted)). See Reply Br. 6-9. Appellant fails to persuade us of error in the
Examiner's rejection with respect to the second Alice step. We agree with
the Examiner that Appellant's claim 1 (and the other pending claims) does
not evince an "inventive concept" that is significantly more than the abstract
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idea itself. In particular, Appellant fails to explain how the limitations
(above) are not part and parcel of the abstract business practice-
advertisement generation process. Nor does Appellant explain how the
additional features (additional elements, see supra) (individually and in
combination) are not routine or are unconventional.
As previously discussed, claim 1 merely recites additional non-
abstract elements (above) - specifically computers ( the controller
(processor), client devices, input devices, and databases (residing in
computer memory)) and utilizing computers ( conventional computers and
conventional computer processes) to receive, analyze (correlate), and display
information, and to generate advertisement information. Appellant's
Specification describes the computers as conventional (generic) computers.
See, e.g., Spec. ,r,r 24, 25 discussing the controller (the recited "controller" is
"a controller in the form of a processor" (Spec. ,r 24) that "executes
computer executable program instructions" (Spec. ,r 25), and may be "any
number of computer processors, such as processors from Intel Corporation"
(Spec. ,r 25)).
Accordingly, Appellant's Specification itself describes the additional
elements as being well-understood, routine, and conventional. Such
conventional computer processes operating on conventional computer
hardware "do not alone transform an otherwise abstract idea into patent-
eligible subject matter." FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d
1089, 1096 (Fed. Cir. 2016) (citing DDR Holdings, 773 F.3d at 1256).
With respect to Appellant's argument analogizing the instant claims to
those in Google (Appeal Br. 12 ), we note that Google is a non-precedential
Board decision denying institution of a covered business method patent
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review, and, as such, is not binding on this panel. Nonetheless, for the
reasons stated previously we are not persuaded by the analogy Appellant
attempts to draw.
For at least the reasons above, we are not persuaded of Examiner error
in the rejection of claim 1 under 35 U.S.C. § 101. Thus, we sustain the
Examiner's rejection under§ 101 of independent claim 1, independent
claims 16 and 25, and dependent claims 4, 6-8, 10-15, and 18-24, which
were not separately argued with specificity.
Obviousness Rejection of Claims 1, 4, 6-8, 10-16, and 18, 19, and 21-23
Appellant argues independent claims 1 and 16, and dependent claims
4, 6-8, 10-15, 18, 19, and 21-23, together as a group with respect to the
§ 103 rejection. See Appeal Br. 14--19. We select independent claim 1 as
representative of Appellant's arguments with respect to claims 1, 4, 6-8, 10-
16, and 18, 19, and 21-23. 37 C.F.R. § 4I.37(c)(l)(iv).
The Examiner rejects independent claim 1 (as well as independent
claim 16, and dependent claims 4, 6-8, 10-15, 18, 19, and 21-23) as being
obvious in view of Schuller, Evans, and Isomura. See Final Act. 7-9; see
also Final Act. 12-18; Ans. 7-8. The Examiner finds Schuller describes a
system for outputting and displaying product-related data and "promotional
data in the form of an advertisement." See Final Act.8 ( citing Schuller Figs.
1 OB and 1 OC). The Examiner further finds Evans describes outputting
"product related data and the promotional data on a background template in
the form of an advertisement via a display unit of the client device." Final
Act. 8; see Final Act. 9; Ans. 8 (citing Evans ,r,r 11, 67----69, 76, 84, 106).
The Examiner also finds Isomura describes generating information (images)
to be displayed (i.e., an advertisement) comprising "a plurality of media
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layers superimposed on the background template" where the media layers
are graphical images. Final Act. 9; see Ans. 8 ( citing Isomura ,r 99).
Appellant contends that the combination of Schuller, Evans, and
Isomura does not teach the disputed features of claim 1. See Appeal Br. 13-
16; Reply Br. 9-11. Specifically, Appellant contends, inter alia, that the
combination of Evans and Isomura does not teach the limitation of "'the
advertisement comprises a plurality of data tvpes or layers superimposed on
the background template,' as recited by independent claim 1" Reply Br. 1 O;
See Appeal Br. 15-16; Reply Br. 10-11. Appellant further contends "Evans
is completely silent regarding the advertisement comprising a plurality of
data tvpes or layers superimposed on a background template. Moreover,
Isomura fails to obviate the deficiencies of Schuller and Evans." Reply Br.
10.
We disagree with Appellant that Schuller, Evans, and Isomura do not
teach outputting data (the product related data and the promotional data) "on
a background template in the form of an advertisement via a display unit of
the client device" "wherein the advertisement comprises a plurality of data
types or layers superimposed on the background template" ( claim 1 ). See
Appeal Br. 13-16; Reply Br. 9-11. The Examiner provides an explanation
how Schuller, Evans, and Isomura teach or suggest the disputed features of
Appellant's claim 1. We adopt as our own: (1) the findings and reasons set
forth by the Examiner in the action from which this appeal is taken (Final
Act. 7-9), and (2) the reasons set forth by the Examiner in the Examiner's
Answer (Ans. 8-9) in response to Appellant's Appeal Brief. We concur
with the findings and conclusions reached by the Examiner, and we address
specific findings, conclusions, and arguments for emphasis as follows.
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We agree with the Examiner's findings that combination of Schuller,
Evans, and Isomura at least suggests the disputed features of Appellant's
claim 1. As explained by the Examiner, Schuller describes outputting and
displaying various product-related data and promotional data as an
advertisement. See Final Act. 8 ( citing Schuller Figs. 1 OB and 1 OC). As
further described by the Examiner, Evans describes outputting data on a
background template and displaying the advertisement. See Final Act. 8-9;
Ans. 8 ( citing Evans ,r,r 84, 106). The Examiner also explains that Isomura
describes generating information ( an advertisement) comprising multiple
media layers (graphical images) superimposed on the background template.
See Final Act. 9; Ans. 8 ( citing Isomura ,r 99).
Appellants do not address the Examiners findings with respect to the
combination of Schuller, Evans, and Isomura. See Appeal Br. 13-16; Reply
Br. 9-11. Accordingly, we find that Appellant attacks the references
individually and do not address the combination of references. The
references cited by the Examiner must be read, not in isolation, but for what
each fairly teaches in combination with the prior art as a whole. See In re
Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986) (one cannot show
non-obviousness by attacking references individually where the rejections
are based on combinations of references).
Further, Appellants misconstrue the Examiner's rejection. The
relevant feature of Isomura is whether Isomura at least suggests outputting
information composed of multiple media images (layers) superimposed on
one another.
Thus, Appellants' contentions do not persuade us of error in the
Examiner's obviousness rejection of representative independent claim 1.
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Accordingly, we affirm the Examiner's rejection of representative claim 1,
independent claim 16 that includes limitations of commensurate scope, and
dependent claims 4, 6-8, 10-15, 18, 19, and 21-23 that depend from claims
1 and 16, respectively, but were not separately argued with particularity
(supra).
Obviousness Rejection of Claim 25
The Examiner rejects independent claim 25 as being obvious in view
of Schuller, Evans, and Isomura. See Final Act. 9-12; Ans. 8-9. The
Examiner finds Schuller describes "to wirelessly push the advertisement to
one or more other client devices communicatively coupled to the client
device via a wireless communications network." Final Act. 11; see Ans. 9
( citing Schuller ,r 25).
Appellant contends that the combination of Schuller, Evans, and
Isomura does not teach the disputed features of claim 25. See Appeal Br.
16-19; Reply Br. 11-14. Specifically, Appellant contends, inter alia, that
Schuller does not teach the limitation of "wirelessly push[ing] the
advertisement to one or more client devices communicatively coupled to the
client device via a wireless communication network" ( claim 25). See id. In
particular, Appellant contends "the wireless interfaces taught by Schuller do
not wirelessly push the advertisements to one or more client devices." Reply
Br. 12.
We agree with Appellant that the Examiner does not explain
sufficiently how the cited portion of Schuller describes the disputed features.
The Examiner cited portion of Schuller at best describe the client device
(scale) receiving information from other networked devices (see Schuller
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,r 25). We discern no disclosure of sending (pushing) advertisements to
other devices.
Without further explanation, we are left to speculate on how Schuller
in combination with Evans and Isomura teaches the disputed features of
claim 25. Consequently, we are constrained by the record before us to find
that the Examiner erred in concluding the combination of Schuller, Evans,
and Isomura renders obvious Appellant's claim 25. Accordingly, we do not
sustain the Examiner's obviousness rejection of claim 25.
Obviousness Rejection of Claim 20
The Examiner rejects dependent claim 20 as being obvious in view of
Schuller, Evans, and Isomura. See Final Act. 7-9, 17; Ans. 9-10. The
Examiner finds Evans describes "correlating comprises assigning one or
more classification terms to the media data in the product related database."
Final Act. 9; see Ans. 9 (citing Evans ,r,r 11, 45, 53, 57, 58, 67----69, 74--76,
84, 106).
Appellant contends that the combination of Schuller, Isomura, and, in
particular, Evans does not teach the disputed features of claim 20. See
Appeal Br. 19; Reply Br. 14. Specifically, Appellant contends Evans instead
describes an automatic checking feature. See id. ( citing Evans ,r 106).
We agree with Appellant that the Examiner does not explain
sufficiently how the cited portions of Evans describes the disputed features.
The Examiner cited portions of Evans at best describe selecting product
information. We discern no disclosure of assigning classifications to the
product information.
Without further explanation, we are left to speculate on how Evans in
combination with Schuller and Isomura teaches the disputed features of
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claim 20. Consequently, we are constrained by the record before us to find
that the Examiner erred in concluding the combination of Schuller, Evans,
and Isomura renders obvious Appellant's claim 20. Accordingly, we do not
sustain the Examiner's obviousness rejection of claim 25.
Obviousness Rejection of Claim 24
The Examiner rejects dependent claim 24 as being obvious in view of
Schuller, Evans, and Isomura. See Final Act. 7-9, 18; Ans. 10. As with
claim 25, the Examiner finds Schuller describes "push[ing] the
advertisement" and additionally finds the advertisement is pushed "to other
wireless devices in a target vicinity of the client device." Final Act. 18; see
Ans. 10 (citing Schuller ,r 25). As with claim 25, Appellant contends that
the combination of Schuller in combination with Evans and Isomura does
not teach the disputed features of claim 24. See Appeal Br. 19-20; Reply
Br. 14--15. Specifically, Appellant contends that Schuller does not teach
pushing the advertisements. See id.
For the same reasons as claim 25 (supra), we agree with Appellant
that the Examiner does not explain sufficiently how the cited portion of
Schuller describes the disputed features. Without further explanation, we
are left to speculate on how Schuller in combination with Evans and Isomura
teaches the disputed features of claim 24. Consequently, we are constrained
by the record before us to find that the Examiner erred in concluding the
combination of Schuller, Evans, and Isomura renders obvious Appellant's
claim 24. Accordingly, we do not sustain the Examiner's obviousness
rejection of claim 24.
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CONCLUSION
Appellant has not shown that the Examiner erred in rejecting claims 1,
4, 6-8, 10-16, and 18-25 under 35 U.S.C. § 101.
Appellant has not shown that the Examiner erred in rejecting claims 1,
4, 6-8, 10-16, and 18, 19, and 21-23 under 35 U.S.C. § 103(a).
Appellant has shown that the Examiner erred in rejecting claims 20,
24, and 25 under 35 U.S.C. § 103(a).
Because we affirm on at least one ground of rejection with respect to
each claim on appeal, we affirm the Examiner's decision to reject claims 1,
4, 6-8, 10-16, and 18-25. See 37 C.F.R. § 4I.50(a)(l).
DECISION
We affirm the Examiner's rejection of claims 1, 4, 6-8, 10-16, and
18-25.
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). See
37 C.F.R. § 4I.50(f).
AFFIRMED
24