Ex Parte Gaither et al

Patent Trials and Appeals Board

Mar 28, 2019

13572370 - (D) (P.T.A.B. Mar. 28, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/572,370 08/10/2012
72058 7590 04/01/2019
Kilpatrick Townsend & Stockton LLP
Adobe Systems, Inc. 58083
Mailstop: IP Docketing - 22
1100 Peachtree Street, Suite 2800
Atlanta, GA 30309-4530
FIRST NAMED INVENTOR
Shawn A. Gaither
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.
58083-855232 (2266US01) 5867
EXAMINER
OSMAN BILAL AHME, AF AF
ART UNIT PAPER NUMBER
3682
NOTIFICATION DATE DELIVERY MODE
04/01/2019 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):
ipefiling@kilpatricktownsend.com
KTSDocketing2@kilpatrick.foundationip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SHAWN A. GAITHER, LALIT VOHRA AND
RANDY LEE SWINEFORD
Appeal2018-000997
Application 13/572,370
Technology Center 3600
Before CARL W. WHITEHEAD JR., JEREMY J. CURCURI and
NABEEL U. KHAN, Administrative Patent Judges.
WHITEHEAD JR., Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants are appealing the final rejection of claims 19--27 and 32-
42 under 35 U.S.C. § 134(a). Appeal Brief 1. We have jurisdiction under
35 U.S.C. § 6(b).
We affirm.
Introduction
"The advertisement is displayed in an application user interface; in
response to receiving user approval via the displayed advertisement, the
plug-in is installed and an application user interface is updated to display a
user interface control associated with the plug-in." Abstract.
Appeal2018-000997
Application 13/572,370
Illustrative Claim
19. A method comprising:
retrieving, in a computing device, a manifest of advertisements
about plug-ins, the advertisements available for presentation in a user
interface of an application executing on the computing device, the
plug-ins available for installation on the computing device to add
specific functionalities to the application;
selecting, by the computing device, an advertisement about a
plug-in from the manifest of advertisements, wherein the
advertisement is selected based on correlating configuration data of
the application with target information of the advertisement, the target
information identifying the plug-in of the plug-ins;
displaying the advertisement on the user interface of the
computing device, wherein displaying the advertisement comprises
displaying information about a specific functionality provided by the
plug-in and displaying a user interface control for installing the plug-
in on the computing device, wherein the plug-in is a software
component that, when installed on the computing device, adds the
specific functionality to the application;
receiving input selecting the user interface control for installing
the plug-in on the computing device; and
installing, in the computing device, the plug-in in response to
receiving the input selecting the user interface control of the
advertisement.
Appeal Brief 19 (Claims Appendix).
Rejections on Appeal1
Claim 27 stands rejected under 35 U.S.C. § 112(a) or (for pre-AIA) 35
U.S.C. § 112, first paragraph, as failing to comply with the written
description requirement. Final Action 10-11.
Claims 19, 27 and 41 stands rejected under 35 U.S.C. § 112 (b) or (for
pre-AIA) 35 U.S.C. § 112, second paragraph, as being indefinite for failing
1 Claims 28-31 are cancelled. Appeal Brief 21.
2
Appeal2018-000997
Application 13/572,370
to particularly point out and distinctly claim the subject matter which
applicant regards as the invention. Final Action 11-12.
Claims 19-42 stand rejected under 35 U.S.C. § 101 because the
claimed invention is directed to nonstatutory subject matter. Final Action 8-
9.
Claims 19, 20, 22-27, 29-35 and 37--42 stand rejected under 35
U.S.C. § I03(a) as being unpatentable over Boal (US Patent Application
Publication 2011/0082741 Al; published April 7, 2011) and Robinson (US
Patent Application Publication 2001/0054001 Al; published December 20,
2001. Final Action 12-15.
Claims 21 and 36 stand rejected under 35 U.S.C. § I03(a) as being
unpatentable over Boal, Robinson and Fang (US Patent Application
Publication 2006/021234 7 A 1; published September 21, 2006). Final
Action 15-16.
ANALYSIS
Rather than reiterate the arguments of Appellants and the Examiner,
we refer to the Appeal Brief (filed August 29, 2016), the Reply Brief (filed
November 8, 2017), the Final Action (mailed April 1, 2016) and the Answer
(mailed September 8, 2017) for the respective details.
35 U.S.C. § 112 rejection
Appellants contend in regard to the 35 U.S.C. § 112(a) rejection of
claim 27:
The Office Action identifies these two features as "wherein the
target information comprises metadata and wherein the plug-in
is identified from the metadata" and "[ selecting] the
advertisement includes parsing the target information to identify
3
Appeal2018-000997
Application 13/572,370
the plug-in." Appellant respectfully disagrees for two reasons.
First, claim 27 does not recite such features; the first feature is
actually recited in claim 41 and the second feature is recited in
claim 40.
Appeal Brief 15.
The Examiner finds:
[B]ecause Appellant's amendment fails to provide in sufficient
detail such that one of ordinary skill in the art can reasonably
conclude that the inventor had possession of the claimed subject
matter. Therefore, the claim rejection of claim 27 under 35
U.S.C. [§] 112(a) or 35 U.S.C. 112 [§] (pre-AIA), first paragraph,
as failing to comply with the written description requirement
should be affirmed.
Answer 6.
The Examiner does not address Appellants' argument that claim 27
fails to recite the alleged above limitations and it is evident that the
limitations are not recited in claim 2 7. Accordingly, we find Appellants'
argument persuasive. We reverse the Examiner's 35 U.S.C. § 112(a)
rejection of claim 27.
Appellants contends, "With respect to independent claims 19, 27, and
30, the Office Action asserts that the recitation of 'wherein the
advertisement is selected based on correlating configuration data of the
application with target information of the advertisement, the target
information identifying the plug-in of the plug-ins' is unclear" however "the
plain language of the claims and the specification are clear as to the meaning
of this subject matter." Appeal Brief 16. We find Appellants' arguments
persuasive of Examiner error. The rejection merely recites the limitations
and indicates that they are unclear. See Final Action 11-12. The Examiner
has not provided sufficient explanation to support the determination of
indefiniteness in regard to the claims. See Final Action 11-12; see also
4
Appeal2018-000997
Application 13/572,370
Answer 5---6. Accordingly, we reverse the Examiner's 35 U.S.C. § 112 (b)
rejection of claims 19, 27 and 41.
35 U.S.C. § 101 rejection
The Examiner determines the claims are patent ineligible under 35
U.S.C. § 101 because the claims are directed to an abstract idea comprising a
fundamental economic practice or organizing human activity, and do not
include additional elements that are sufficient to amount to significantly
more than the abstract idea. Final Action 8-9; see also Alice Corp. Pty. Ltd.
v. CLS Banklnt'l, 573 U.S. 208,217 (2014) (Describing the two-step
framework "for distinguishing patents that claim laws of nature, natural
phenomena, and abstract ideas from those that claim patent-eligible
applications of those concepts.").
After the mailing of the Answer and the filing of the Briefs in this
case, the US PTO published revised guidance on the application of§ 101.
2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50
(Jan. 7, 2019) (hereinafter "Memorandum"). Under the Memorandum, the
Office first looks 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); and
(2) additional elements that integrate the judicial exception into
a practical application (see MPEP § 2106.05(a}-(c), (e}-(h)).
Only if a claim (1) recites a judicial exception and (2) does not integrate
that exception into a practical application, does the Office then look to
whether the claim:
5
Appeal2018-000997
Application 13/572,370
(3) adds a specific limitation beyond the judicial exception that
are not "well-understood, routine, conventional" in the field (see
MPEP § 2106.05(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.
See Memorandum.
We are not persuaded the Examiner's rejection is in error. We adopt
the Examiner's findings and conclusions as our own, and we add the
following primarily for emphasis and clarification with respect to the
Memorandum.
Appellants argue the pending claims are not directed to an abstract
idea because "the Office Action fails to provide any reasoned rationale that
explains why the above identified [ claimed] features are considered a
fundamental economic practice or how they amount to advertising plug-ins
via product messaging." Appeal Brief 11.
We agree with the Examiner's determination that the claims are
directed to an abstract idea. See Final Action 8-9. Claim 19 recites a
"retrieving, in a computing device, a manifest of advertisements about plug-
ins, the advertisements available for presentation in a user interface of an
application executing on the computing device," "selecting, by the
computing device, an advertisement about a plug-in from the manifest of
advertisements" and "displaying the advertisement on the user interface of
the computing device." These steps, among others, comprise fundamental
economic principles or practices and/or commercial or legal interactions;
thus the claim recites the abstract idea of "certain methods of organizing
human activity." Memorandum, Section I (Groupings of Abstract Ideas);
see Specification ,r,r 23, 25, 31 and 32. Our reviewing court has found
6
Appeal2018-000997
Application 13/572,370
claims to be directed to abstract ideas when they recited similar subject
matter. See Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed. Cir.
2014) (claims merely reciting abstract idea of using advertising as currency
as applied to particular technological environment of the Internet not patent
eligible).
Appellants contend the invention is not directed to an abstract idea
because, "paragraphs [0019], [0030], and [0031] of the specification
describe[ e] technical benefits for the claimed solution: saving network traffic
bandwidth (e.g., by sending targeted notification), enabling system
flexibility ( e.g., by separating an advertisement server from a plug-in
server), and extending application functionality to resolve security issues (by
notifying the user about the relevant update)." Appeal Brief 13. We do not
find Appellants' argument persuasive because the claims utilize the network
as a tool to distribute advertising content. See Enfzsh, LLC v. Microsoft
Corp., 822 F.3d 1327, 1335-36 (Fed. Cir. 2016). ("[W]e find it relevant to
ask whether the claims are directed to an improvement to computer
functionality versus being directed to an abstract idea ... the focus of the
claims is on the specific asserted improvement in computer capabilities (i.e.,
the self-referential table for a computer database) or, instead, on a process
that qualifies as an 'abstract idea' for which computers are invoked merely
as a tool."). Appellants further contend that:
Even if we assume, arguendo, that the claims are directed to an
abstract idea at some level, the claims recite additional features
that amount to significantly more than the abstract idea. In
particular, the claims include meaningful features that go beyond
generally linking the use of an abstract idea to an abstract
technological environment.
7
Appeal2018-000997
Application 13/572,370
Appeal Brief 13. Appellants support their contentions by reciting various
limitations from the claims:
To illustrate, the claims recite in part: "retrieving, in a computing
device, a manifest of advertisements about plug-ins;" "selecting,
by the computing device, an advertisement about a plug-in from
the manifest of advertisements;" "the advertisement is selected
based on correlating configuration data of the application with
target information of the advertisement, the target information
identifying the plug-in of the plug-ins;" "displaying information
about a specific functionality provided by the plug-in and
displaying a user interface control for installing the plug-in on
the computing device;" "the plug-in is a software component
that, when installed on the computing device, adds the specific
functionality to the application;" "and "installing, in the
computing device, the plug-in in response to receiving the input
selecting the user interface control of the advertisement."
Appeal Brief 13.
However, none of the recited limitations recite an additional element
or elements that reflect an improvement in the functioning of a computer, or
an improvement to other technology or technical field. See Final Action 9
(The claims do not recite limitations that are "significantly more"
than the abstract idea because the claims do not recite an
improvement to another technology or technical field, an
improvement to the functioning of the computer itself, or
meaningful limitations beyond generally linking the use of an
abstract idea to a particular technological environment. It should
be noted the limitations of the current claims are performed by
the generically recited processor.);
Alice, 573 U.S. at 222 ("In holding that the process was patent ineligible, we
rejected the argument that 'implement[ing] a principle in some specific
fashion' will 'automatically fal[l] within the patentable subject matter of
§ 101."') (quoting Parker v. Flook, 437 U.S. 584, 593(1978)).
8
Appeal2018-000997
Application 13/572,370
Accordingly, we determine the claim does not integrate the judicial
exception into a practical application. See Memorandum, Section III(A)(2)
(Prong Two: If the Claim Recites a Judicial Exception, Evaluate Whether the
Judicial Exception Is Integrated Into a Practical Application). Nor do we
find the claim includes a specific limitation or a combination of elements
that amounts to significantly more than the judicial exception itself. See
Memorandum, Section III(B)(Step 2B: If the Claim Is Directed to a Judicial
Exception, Evaluate Whether the Claim Provides an Inventive Concept); see
also Aatrix Software, Inc. v. Green Shades Software, Inc., 890 F.3d 1354,
1359 (Fed. Cir. 2018) ("the 'inventive concept' cannot be the abstract idea
itself'). Other than the abstract idea itself, the remaining claim elements
only recite generic computer components that are well-understood, routine,
and conventional. See Final Action 9; Specification ,r 9
([A] component such as a processor or a memory described as
being configured to perform a task may be implemented as a
general component that is temporarily configured to perform the
task at a given time or a specific component that is manufactured
to perform the task. As used herein, the term "processor" refers
to one or more devices, circuits, and/ or processing cores
configured to process data, such as computer program
instructions.);
Alice, 573 U.S. at 226.
Accordingly, we conclude that claims 19--42, not argued separately,
recites a fundamental economic practice, which is one of certain methods of
organizing human activity identified in the Memorandum and thus an
abstract idea. See Appeal Brief 10-14.
35 U.S.C. § 103 rejections
Appellants contend:
9
Appeal2018-000997
Application 13/572,370
Independent claim 19 recites in part: "selecting, by the
computing device, an advertisement about a plug-in from the
manifest of advertisements, wherein the advertisement is
selected based on correlating configuration data of the
application with target information of the advertisement, the
target information identifying the plug-in of the plug-ins." The
remaining independent claims recite similar features.
Appeal Brief 7.
Appellants argue the Examiner's finding that Robinson discloses "a
selection based on correlating configuration data of an application with
target information, where the target information identifies an advertised
plug-in" is erroneous and therefore fails to address Boal's noted deficiency.
Appeal Brief 7; see Final Action 13. Appellants contend, "Robinson
explains that '[i]f the plug-in is not installed, an ad may be displayed by
other methods" (Appeal Brief 8; citing Robinson paragraph 135) wherein
"Robinson displays an advertisement regardless of whether a plug-in for
displaying the advertisement exists at the user's device." Appeal Brief 8.
Appellants conclude, "Robinson does not disclose 'selecting, by the
computing device, an advertisement about a plug-in from the manifest of
advertisements, wherein the advertisement is selected based on correlating
configuration data of the application with target information of the
advertisement, the target information identifying the plug-in of the plug-
ins. "' Appeal Brief 8.
The Examiner finds Robinson discloses the disputed limitation in
paragraphs 88-89 and 134--137. Final Action 13. Robinson discloses, "An
advertisement is selected at the client for display to the user, based upon the
advertising targeting information stored at the client." Robinson, Abstract.
However it is not evident that Robinson discloses an advertisement about a
plug-in and of course it follows that Robinson does not disclose selecting an
10
Appeal2018-000997
Application 13/572,370
advertisement about plug-ins from a manifest of advertisements as required
by independent claims 19, 27 and 30. Further, the Examiner fails to provide
an explanation or indicate a specific finding as to why the cited paragraphs
of Robinson disclose the disputed claim limitation. See Final Action 13;
Answer 2-3. Fang fails to cure the deficiencies of the Boal/Robinson
combination. Accordingly, we find the Examiner did not meet the burden of
presenting a prima facie case of obviousness and we reverse the obviousness
rejection of independent claims 19, 27 and 30; as well as, the obviousness
rejections corresponding dependent claims 20-26, 28, 29 and 31--42.
DECISION
The Examiner's 35 U.S.C. § 112(a) rejection of claim 27 is reversed.
The Examiner's 35 U.S.C. § 112(b) rejection of claims 19, 27, 30 and
41 is reversed.
The Examiner's nonstatutory subject matter rejection of claims 19-27
and 32--42 is affirmed.
The Examiner's obviousness rejections of claims 19-27 and 32--42
are reversed.
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 ). See 37 C.F.R.
§ 1.136(a)(l )(v).
AFFIRMED
11