Ex Parte Gilliam

Patent Trial and Appeal Board

Dec 28, 2016

11781484 (P.T.A.B. Dec. 28, 2016)

United States Patent and Trademark Office
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
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Alexandria, Virginia 22313-1450
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APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
11/781,484 07/23/2007 Orey Gilliam 10587.0435-00000 5984
100692 7590
AOL Inc./Finnegan
901 New York Ave., NW
Washington, DC 20001
12/30/2016 EXAMINER
IOSIF, MARIO CINCINAT
ART UNIT PAPER NUMBER
3622
NOTIFICATION DATE DELIVERY MODE
12/30/2016 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):
regional-desk @ finnegan. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte OREY GILLIAM
Appeal 2015-0027171
Application 11/781,484
Technology Center 3600
Before MURRIEL E. CRAWFORD, JOSEPH A. FISCHETTI, and
MICHAEL W. KIM, Administrative Patent Judges.
CRAWFORD, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF CASE
This is an appeal from the final rejection of claims 1—18, 23—25, and
27—59. We have jurisdiction to review the case under 35 U.S.C. §§ 134.
We REVERSE.
The invention relates generally to the display of advertising in an
instant messaging system. Spec., para. 2.
1 The Appellant identifies AOL Inc. as the real party in interest. Appeal
Br. 3.
Appeal 2015-002717
Application 11/781,484
Claim 1 is illustrative:
1. A computer-implemented method for displaying advertising
content in an instant messaging user interface, the method
comprising the following operations performed by at least
one processor:
rendering an instant message sender user interface
for an instant messaging communications
session involving an instant message sender
and an instant message recipient;
receiving, as user input entered by the instant
message sender through manipulation of the
instant message sender user interface, data
for transmission as an instant message from
the instant message sender to the instant
message recipient;
determining contextual information corresponding
to advertising content previously viewed by
the instant message sender;
generating a value of an attribute of the instant
message sender based on the contextual
information;
selecting advertising content based on the value of
the attribute; and
generating, based on a count value indicative of an
activity of the instant message sender, an
instruction to display the selected advertising
content during at least a portion of the time
that the instant message sender awaits receipt
of a reply from the instant message recipient.
Claims 1—18, 23—25, and 27—59 are rejected under 35 U.S.C. § 101 as
reciting ineligible subject matter in the form of an abstract idea.
Claims 1—12, 14, 16—25, 27—29, 37—40, 44—53, and 59 are rejected
under 35 U.S.C. § 102(b) as anticipated by Shah (US 2006/0129455 Al,
pub. June 15, 2006).
2
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Application 11/781,484
Claims 13, 30—36, 41—43, and 54—58 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Shah and Fellenstein (US 2004/0186766 Al,
pub. Sept. 23, 2004).
Claim 15 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Shah and Criddle (US 2006/0004630 Al, pub. Jan. 5, 2006).
Claims 1,5, 17, 25, 38—40, 44, 49, and 592 are rejected, in the
alternative, under 35 U.S.C. § 103(a) over Shah and Merriman
(US 2002/0072965 Al, pub. June 13, 2002).
Claims 41—43 are rejected, in the alternative, under 35 U.S.C. § 103(a)
as unpatentable over Shah, Fellenstein, and Merriman.
Claim 15 is rejected, in the alternative, under 35 U.S.C. § 103(a) over
Shah, Merriman, and Criddle.
ANALYSIS
Rejection under 35 U.S.C. §101
We are persuaded by Appellant’s argument the Examiner generalizes
the claim language, by associating only the display of advertising content in
an instant messaging user interface with the abstract idea of being a
“fundamental economic principle of advertising.” Reply Br. 3^4.
Although each of independent claims 1, 39-41, 43, 44, and 49 recite
language about displaying advertising in an instant messaging user interface,
the independent claims recite more, such as language substantially identical
to “determining contextual information corresponding to advertising content
2 It appears that claims 2—4, 6—14, 16, 18, 23, 24, 27—37, 45—48, and 50—58
are not rejected in the alternative, but only over Shah, or Shah and
Fellenstein. See Final Act. 22—36.
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Application 11/781,484
previously viewed by the instant message sender.” The claims are, thus,
directed to more than just the fundamental economic principle of
advertising.
The Examiner also advances that the display of advertising content in
an instant messaging user interface in the claims are “a method of organizing
human activity by managing and displaying advertisement information.”
Answer 2—\. Once again, however, the claims do more than merely display
advertising. The selection of advertisements, based on advertisements
previously viewed, is also more than the broad concept of “organizing
human activity.” Otherwise, essentially all human activities would be
considered too abstract to be eligible for patent protection.
The Supreme Court
set forth a framework for distinguishing patents that claim laws
of nature, natural phenomena, and abstract ideas from those that
claim patent-eligible applications of those concepts. First, . . .
determine whether the claims at issue are directed to one of those
patent-ineligible concepts. If so, we then ask, “[w]hat else is
there in the claims before us? To answer that question, . . .
consider the elements of each claim both individually and “as an
ordered combination” to determine whether the additional
elements “transform the nature of the claim” into a patent-
eligible application. [The Court] described step two of this
analysis as a search for an “‘inventive concept’”—i.e., an
element or combination of elements that is “sufficient to ensure
that the patent in practice amounts to significantly more than a
patent upon the [ineligible concept] itself.”
Alice Corp. Pty. Ltd. v CLS Bank Inti., 134 S. Ct. 2347, 2355 (2014)
(citations omitted) (citing Mayo Collaborative Services v. Prometheus
Laboratories, Inc., 132 S. Ct. 1289 (2012)). To perform this test, we must
first determine whether the claims at issue are directed to a patent-ineligible
concept.
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Application 11/781,484
The claims recite more than merely displaying advertising and have
no readily apparent equivalent in human practice unaided by computers. An
instant messaging system is a particular computing environment commonly
used for interpersonal communications in real time. As a whole, the specific
combination of steps, ignoring the computing environment in which they are
recited, do not seem to be to merely be an abstract concept.
More to the point, however, even if we were to assume the claims
recite a purely abstract concept, “the relevant question is whether the claims
here do more than simply instruct the practitioner to implement the abstract
idea ... on a generic computer.” Alice Corp. Pty. Ltd., 134 S. Ct. at 2359.
We conclude they do.
The claims rely on a specific set of computer instructions to operate
an instant messaging system, modified beyond what is customarily found in
stock instant messaging systems, to display advertising within instant
messaging sessions, and further modified to select advertisements a specific
way within that system. The claims specifically utilize a computer to
determine contextual information and generate counts based on activity of a
user within the instant messaging system. Generic computers do not,
without additional, non-trivial programming, present instant messaging
systems or determine contextual information from within such a system.
The claims, even if they did present merely an abstract concept, which
we do not agree with, do more than ask that the recited steps be performed
on a generic computer.
We therefore find that each of the independent claims recite more than
a mere abstract idea. For this reason, we do not sustain the rejection of the
claims under 35 U.S.C. § 101.
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Rejection of Claims 1—12, 14, 16—25, 27—29, 37—39, 44—53, and 59
under 35 U.S.C. § 102(b) over Shah
Each of independent claims 1, 39, 41, 43, 44, and 49 recite language
substantially equivalent to “determining contextual information
corresponding to advertising content previously viewed by the instant
message sender.”
We are persuaded by Appellant’s argument that nothing in Shah
discloses a process that identifies keywords, based on previously viewed
advertising content, that are then used to select advertising to display.
Appeal Br. 16—20; see also Reply Br. 7—9.
The Examiner finds Shah uses “[kjeywords present in each text
message [that] trigger[] the presentation of advertisements targeted to that
unique message or user,” and advertisements are “linked to a particular
keyword in a particular message,” and used until a new message is
generated. Final Act. 3. The Examiner concludes this corresponds to the
claimed “contextual information corresponding to advertising content
previously viewed.” Id. (emphasis omitted.).
We disagree with the Examiner that basing keywords in content from
each subsequent message satisfies the claim language of the contextual
information coming from advertising previously viewed. Shah clearly uses
context from the instant messages to select advertising. Shah discloses an
instant message conversation where the mention of seeing a movie leads to a
movie-related advertisement (Fig. 1). Shah also discloses, at a later moment
in the same instant message session, mention of “dinner too” leads to an
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advertisement related to fitness. Shah, Fig. 6, 7; see also id. at para. 84. The
Examiner relies on this to reason:
The expression “too” in the message sent by “Cathy77” is
equivalent to saying “in addition to watching a movie”,
indicating a contextual relation. Therefore an advertisement for
a movie from Movie Central viewed previously to suggesting
dinner (also in the context of the conversation) is used to generate
another related advertisement (e.g. a dinner related
advertisement) (also in the context of the conversation).
Adv. Act. 2 (dated June 3, 2014.)
We see no relationship between the dinner advertisement and a
previous advertisement related to movies. The word “too” is too indirect a
link between these two. In Shah, the choice of either an advertisement about
fitness equipment (Fig. 6) or an advertisement about weight-loss (Fig. 7)
appears to have nothing to do with movies, in spite of the user’s indirect link
by mentioning “too,” and everything to do with “dinner.” See Shah, paras.
84—85. More importantly, the fitness/weight-loss advertisements in Shah
have nothing to do with the advertisement about movies, which is what the
claims require, and which the word “too” fails to establish. For example, the
advertisement in Figure 7 is related to the advertisement in Figure 6 because
both are based on the word “dinner” sent by a user. Id. The advertisement
in Figure 6 is a sidebar option, while the advertisement in Figure 7 is a large-
format version in a conversation panel. Id. Shah does not disclose that the
advertisement in Figure 7 is related to the advertisement in Figure 6
(additionally because both are related only to the word “dinner”), or even
that one replaces the other. We interpret them as separate embodiments
showing ways any ad may be displayed.
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For this reason, we do not sustain the rejection of independent claims
1, 39, 44, and 49, nor of dependent claims 2—12, 14, 16—25, 27—29, 37, 38,
45—53, and 59 that were rejected along with the listed independent claims.
See Final Act. 2, 12.
Rejection of Claims 13, 30—36, 41—43, and 54—58 under 35 U.S.C.
§ 103(a) over Shah and Fellenstein
The Examiner has not established on the record that Fellenstein
selects advertisements based on the previously-viewed advertisements, as we
have shown is missing from Shah. Therefore, we do not sustain the rejection
of claims 13, 30-36, 41—43, and 54—58 over Shah and Fellenstein, because
they are based on a flawed interpretation of Shaw, as set forth above. See
also Final Act. 15, 17.
Rejection of Claim 15 under 35 U.S.C. § 103(a) over Shah and
Criddle
The Examiner has not established on the record that Criddle remedies
the shortcomings of Shah we established above. For this reason, we do not
sustain the rejection of claim 15 over Shah and Criddle.
Rejection of claim 40 under 35 U.S.C. § 102 over Shah
Claim 40 recites language different from the other independent
claims. Specifically, claim 40 recites “determine the advertising content at
the intermediary server based upon at least one of the context of the data or
the value of the attribute.” The “value of the attribute” is based on
advertising previously viewed, but the “context of the data” is based on data
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Application 11/781,484
input by a user in the instant message. Claim 40, thus, can base
advertisements on the context of data, instead of on previous advertising.
Appellant does not argue claim 40 separately. Appeal Br. 21.
Because Shah discloses basing advertisements based on user input (Shah,
paras. 84—85), Appellant’s other arguments are not persuasive when applied
to claim 40. For this reason, we sustain the rejection of claim 40 under 35
U.S.C. § 102 over Shah.
Alternative Rejection of Claims 1, 5, 77, 25, 38, 39, 44, 49, 59 over
Shah and Merriman
In the alternative rejection analysis, the Examiner relies on Shah for
determining advertising from previously-viewed advertising and does not
indicate any reliance on Merriman for this portion of the claim. See Final
Act. 22—29. We, therefore, do not sustain the rejection of these claims over
Shah and Merriman for the same reasons we established above in the
rejection under 35 U.S.C. § 102(b).
Alternative Rejection of Claim 40 over Shah and Merriman
We affirm the rejection of claim 40 under 35 U.S.C. § 103(a) over
Shah and Merriman for similar reasons as in the rejection under 35 U.S.C.
§ 102(b), above.
Alternative Rejection of Claims 41—43 over Shah, Fellenstein, and
Merriman
In the alternative rejection analysis, the Examiner relies on Shah for
determining advertising from previously-viewed advertising (Final Act. 30,
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33) and does not indicate any reliance on Fellenstein or Merriman for this
portion of the claim. See Final Act. 29—36. We, therefore, do not sustain the
rejection of these claims over Shah, Fellenstein, and Merriman for the same
reasons we established above in the rejection under 35 U.S.C. § 102(b).
Alternative Rejection of Claim 15 under 35 U.S.C. § 103(a) over
Shah, Merriman, and Criddle
The Examiner has not established on the record that Merriman or
Criddle remedy the shortcomings of Shah we established above. For this
reason, we do not sustain the alternative rejection of claim 15 over Shah,
Merriman, and Criddle.
DECISION
We reverse the rejection under 35 U.S.C. § 101 of claims 1—18, 23—
25, and 27-59.
We reverse the rejection under 35 U.S.C. § 102(b) of claims 1—12, 14,
16-25, 27-29, 37-39, 44—53, and 59.
We reverse the rejection under 35 U.S.C. § 103(a) over Shah and
Fellenstein of claims 13, 30-36, 41—43, and 54—58.
We reverse the rejection under 35 U.S.C. § 103(a) over Shah and
Merriman of claims 1,5, 17, 25, 38-40, 44, 49, and 59.
We reverse the rejection under 35 U.S.C. § 103(a) over Shah,
Fellenstein, and Merriman of claims 41—43.
We reverse the rejections under 35 U.S.C. § 103(a) of claim 15.
We affirm the rejection under 35 U.S.C. § 103(a) of claim 40.
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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-IN-PART
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