Ex Parte GraceDownload PDFPatent Trial and Appeal BoardFeb 23, 201813746994 (P.T.A.B. Feb. 23, 2018) Copy Citation United States Patent and Trademark Office 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 APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 13/746,994 01/22/2013 Mark Grace 5596 6236 22474 7590 02/27/2018 P1e.me.nts RemarH Walker PT T P EXAMINER 4500 Cameron Valley Parkway Suite 350 CIRNU, ALEXANDRU Charlotte, NC 28211 ART UNIT PAPER NUMBER 3681 NOTIFICATION DATE DELIVERY MODE 02/27/2018 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): patlaw @ worldpatents.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte MARK GRACE Appeal 2016-003288 Application 13/746,994 Technology Center 3600 Before ANTON W. FETTING, CYNTHIA L. MURPHY, and ALYSSA A. FINAMORE, Administrative Patent Judges. FETTING, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE1 Mark Grace (Appellant) seeks review under 35 U.S.C. § 134 of a final rejection of claims 1—20, the only claims pending in the application on appeal. We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b). 1 Our decision will make reference to the Appellant’s Specification, filed January 22, 2013, Appeal Brief (“App. Br.,” filed July 30, 2015) and Reply Brief (“Reply Br.,” filed February 2, 2016), and the Examiner’s Answer (“Ans.,” mailed December 4, 2015), and Final Action (“Final Act.,” mailed January 30, 2015). Appeal 2016-003288 Application 13/746,994 The Appellant invented a way of content and advertising insertion in visual communications. Specification para. 2. An understanding of the invention can be derived from a reading of exemplary claim 1, which is reproduced below (bracketed matter and some paragraphing added). 1. A method of ad or content insertion, comprising: [1] communicating, by a server, with a plurality of users; [2] creating a visual talking message by a user of the plurality of users comprising a sender, the message being for one or more recipients comprising users of the plurality of users; [3] adding advertisements or other content within or around the visual talking message, wherein the advertisements or other content comprises one or more of an image forming part of the visual talking message, wherein the sender of the visual talking message controls or determines what is selected as the advertisements or other content, and wherein the visual talking message uses images in lieu or in addition to words to convey a message or any other type of information; [4] sending the visual talking message with the advertisements or other content to the one or more recipients; and [5] tracking the advertisements or other content through the server. 2 Appeal 2016-003288 Application 13/746,994 The Examiner relies upon the following prior art: Rothschild US 2001/0047294 A1 Collison US 2007/0198921 A1 Aaltonen US 2009/0068991 A1 Steelberg US 2011/0047625 A1 Gopinath US 2011/0066497 A1 Kilroy US 2011/0196871 A1 Patel US 8,539,362 B2 Nov. 29, 2001 Aug. 23, 2007 Mar. 12, 2009 Feb. 24, 2011 Mar. 17,2011 Aug. 11,2011 Sept. 17,2013 Claims 1—20 stand rejected under 35 U.S.C. § 101 as reciting a judicial exception without significantly more. Claims 1, 2, 8—11, 17, and 18 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Aaltonen, Rothschild, and Steelberg. Claims 3 and 12 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Aaltonen, Rothschild, Steelberg, and Gopinath. Claim 4 stands rejected under 35 U.S.C. § 103(a) as unpatentable over Aaltonen, Rothschild, Steelberg, Gopinath, and Collison. Claims 5, 7, 14, and 16 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Aaltonen, Rothschild, Steelberg, and Patel. Claims 6 and 15 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Aaltonen, Rothschild, Steelberg, Patel, and Kilroy. Claim 13 stands rejected under 35 U.S.C. § 103(a) as unpatentable over Aaltonen, Rothschild, Steelberg, and Collison. 3 Appeal 2016-003288 Application 13/746,994 Claims 19 and 20 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Aaltonen, Rothschild, Steelberg, and Collison. ISSUES The issues of patent-eligible subject matter turn primarily on whether the claims recite significantly more than abstract conceptual advice as to what a computer is to do without reciting any implementation details. The issues of obviousness turn primarily on whether the art applied describes audio with visual messages and attaching advertisements so as to form an overall message. FACTS PERTINENT TO THE ISSUES The following enumerated Findings of Fact (FF) are believed to be supported by a preponderance of the evidence. Facts Related to the Prior Art Aaltonen 01. Aaltonen is directed to monitoring of communication dialogs or sessions between a plurality of users or a user and a service provider, thereby enabling management, delivery and assessment of information content deemed relevant to the users. Aaltonen para. 1. 02. Aaltonen describes contextual advertising, which involves advertising that is targeted to the specific individual who is being 4 Appeal 2016-003288 Application 13/746,994 exposed to the advertising. For example, contextual advertising on the Internet provides advertising content on a web page that also provides non-advertising related content of interest to the web page reader. Aaltonen para. 20. 03. As part of that advertising campaign, advertising content is distributed to a plurality of subscriber terminals, which may be, for example, mobile devices or other devices capable of sending and receiving text messages and outputting such messages to the device users. The advertising content may include information in the form of data, text, pictures, audio, and/or video. Aaltonen para. 28. 04. The communication dialogs may include messages of the MMS type, including, for example, picture data and/or video, sound data as well as text. Aaltonen para. 99. Rothschild 05. Rothschild is directed to allowing an Internet user to place an advertisement within a personal communication, and provides a recipient of the personal communication requesting additional information with such information regardless of the network device the recipient is using. Rothschild para. 4. 06. Rothschild describes giving the sender the ability to choose which advertisements should be incorporated within his e-mails, so the advertising message gets displayed before the sender, who is most likely a consumer of the advertised product, and before the 5 Appeal 2016-003288 Application 13/746,994 recipient, who, by association, is more likely than not to also share the same interests as the sender. The advertising service should be capable of distributing e-mails and advertisements to recipients operating on non-traditional Internet devices (e.g., mobile phones). The service should also be flexible enough to adapt to changes within the on-line advertising industry. Rothschild para. 18. 07. The sender network device sends a personal communication, together with a sender-selected advertisement, to the recipient network device. A personal communication can include, but is not limited to, an e-mail message, text message, short message service (SMS) message, chat-room message, instant messaging message, video message, voice message, and any other personalized network communications generally known to those skilled in the art. Additionally, the personal communication can contain message data including, but not limited to, text data, graphic data, audio data, video data, and all other types of electronically transmitted data generally known to those skilled in the art. The sender-selected advertisement that is contained within the personal communication can either be static or interactive. A static advertisement is an icon, graphic, text message, or voice message that is intended to provide the recipient with a simple message, wherein the simple message can be obtained by viewing and/or hearing the static advertisement. An interactive advertisement is an icon, graphic, text, or voice message that can 6 Appeal 2016-003288 Application 13/746,994 be interacted with to provide the recipient with additional communication data, wherein the additional communication data is provided to the recipient when the recipient interacts with the advertisement. Rothschild para. 48. Steelberg 08. Steelberg is directed to an engine for the secure delivery of asset-related content. Steelberg para. 7. 09. Picture messaging has become more and more popular now that cell phones often have built in or attachable cameras to enable people to send picture messaging back and forth. Picture messaging is made possible through the MMS system via its support of all kinds of photos, graphics, animation, as well as video and audio clips. Steelberg para. 51. ANALYSIS Claims 1—20 rejected under 35 U.S.C. § 101 as directed to non—statutory subject matter 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 7 Appeal 2016-003288 Application 13/746,994 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) (citing Mayo Collaborative Servs. v. Prometheus Labs., 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. The Examiner finds the claims directed to a fundamental economic practice of advertising that involves selecting and inserting advertising content within visual messages. Final Act. 2. We agree. While the Court in Alice made a direct finding as to what the claims were directed to, we find that this case’s claims themselves and the Specification provide enough information to inform one as to what they are directed to. The preamble to claim 1 recites that it is a method of ad or content insertion. The steps in claim 1 result in creating and sending an ad. The Specification at paragraph 2 recites that the invention relates to content and advertising insertion in visual communications. All this shows that claim 1 is directed to creating and sending an ad, i.e., advertising. It follows from prior Supreme Court cases, and Bilski (Bilski v. Kappos, 561 U.S. 593 (2010)) in particular, that the claims at issue here are directed to an abstract idea. Like the risk hedging in Bilski, the concept of 8 Appeal 2016-003288 Application 13/746,994 advertising is a fundamental business practice long prevalent in our system of commerce. The use of advertising is also a building block of marketing. Thus, advertising, like hedging, is an “abstract idea” beyond the scope of § 101. See Alice Corp. Pty. Ltd., 134 S. Ct. at 2356. As in Alice Corp. Pty. Ltd., we need not labor to delimit the precise contours of the “abstract ideas” category in this case. It is enough to recognize that there is no meaningful distinction in the level of abstraction between the concept of risk hedging in Bilski and the concept of advertising at issue here. Both are squarely within the realm of “abstract ideas” as the Court has used that term. See Alice Corp. Pty. Ltd., 134 S. Ct. at 2357. Further, claims involving data collection, analysis, and display are directed to an abstract idea. Elec. Power Grp. v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016) (holding that “collecting information, analyzing it, and displaying certain results of the collection and analysis” are “a familiar class of claims ‘directed to’ a patent ineligible concept”); see also In re TLI Commc’ns LLC Patent Litig., 823 F.3d 607, 611 (Fed. Cir. 2016); FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1093—94 (Fed. Cir. 2016). Claim 1, unlike the claims found non-abstract in prior cases, uses generic computer technology to perform data analysis, creation, and transmission, and does not recite an improvement to a particular computer technology. See, e.g., McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299, 1314—15 (Fed. Cir. 2016) (finding claims not abstract because they “focused on a specific asserted improvement in computer animation”). 9 Appeal 2016-003288 Application 13/746,994 As such, claim 1 is directed to the abstract idea of analyzing, creating, and transmitting data. The further limitations in the remaining claims merely describe the parameters and context for creating the ads, or, in other words, nothing more than further details of the abstract idea. We conclude that the claims at issue are directed to a patent-ineligible concept, and so we proceed to the second step of the test. The “additional elements” recited in the claims include computer and network components such as, for example, “a server,” “a network interface,” “a processor,” etc. And, here, the introduction of such computer and/or network components into the claims does not alter the analysis at Mayo step two. [T]he mere recitation of a generic computer cannot transform a patent-ineligible abstract idea into a patent-eligible invention. Stating an abstract idea “while adding the words ‘apply it’” is not enough for patent eligibility. Nor is limiting the use of an abstract idea “‘to a particular technological environment.’” Stating an abstract idea while adding the words “apply it with a computer” simply combines those two steps, with the same deficient result. Thus, if a patent’s recitation of a computer amounts to a mere instruction to “implemen[t]” an abstract idea “on ... a computer,” that addition cannot impart patent eligibility. This conclusion accords with the preemption concern that undergirds our § 101 jurisprudence. Given the ubiquity of computers, wholly generic computer implementation is not generally the sort of “additional featur[e]” that provides any “practical assurance that the process is more than a drafting effort designed to monopolize the [abstract idea] itself.” 10 Appeal 2016-003288 Application 13/746,994 Alice Corp. Pty. Ltd., 134 S. Ct. at 2358 (citations omitted). “[T]he 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 agree with the Examiner (see Final Act. 3) that they do not. Taking the claim elements separately, the function performed by the computer at each step of the process is purely conventional. Using a computer to create, add, send, and track data amounts to electronic data processing—one of the most basic functions of a computer. All of these computer functions are well-understood, routine, conventional activities previously known to the industry. In short, each step does no more than require a generic computer to perform generic computer functions. Considered as an ordered combination, the computer components of Appellant’s method add nothing that is not already present when the steps are considered separately. Viewed as a whole, Appellant’s method claims simply recite the concept of advertising as performed by a generic computer. To be sure, the claims recite doing so by advising one to create a visual talking message with selected ads and sending and tracking it. But this is no more than abstract conceptual advice on the parameters for such advertising and the generic computer processes necessary to process those parameters, and the claims do not recite any particular implementation. The method claims do not, for example, purport to improve the functioning of the computer itself. Nor do they effect an improvement in 11 Appeal 2016-003288 Application 13/746,994 any other technology or technical field. The specification spells out different generic equipment and parameters that might be applied using this concept and the particular steps such conventional processing would entail based on the concept of creating and sending advertising under different scenarios. (See e.g., Specification paras. 83—86.) They do not describe any particular improvement in the manner a computer functions. Instead, the claims at issue amount to nothing significantly more than an instruction to apply the abstract idea of advertising using some unspecified, generic computer. Under our precedents, that is not enough to transform an abstract idea into a patent-eligible invention. See Alice Corp. Pty. Ltd., 134 S. Ct. at 2360. As to the structural claims, they are no different from the method claims in substance. The method claims recite the abstract idea implemented on a generic computer; the system claims recite a handful of generic computer components configured to implement the same idea. This Court has long “wam[ed] ... against” interpreting § 101 “in ways that make patent eligibility ‘depend simply on the draftsman’s art.’” Alice Corp. Pty. Ltd., 134 S. Ct. at 2360. We are not persuaded by Appellant’s argument that advertising is not a fundamental economic practice. App. Br. 8. Advertising is as old as the use of signage outside village pubs. Few practices are more fundamental to a market economy than practices promoting goods and services such as advertising. 12 Appeal 2016-003288 Application 13/746,994 We are not persuaded by Appellant’s argument that one cannot insert content on a display device over a network through a server without the physical hardware. App. Br. 8. This is no more than a contention that a computer is necessary to process data. “[Limiting the claims to the particular technological environment ... is, without more, insufficient to transform them into patent-eligible applications of the abstract idea at their core.” Electric Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1354—55 (2016). Appellant further argues that the asserted claims are akin to the claims found patent-eligible in DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014). In DDR Holdings, the Court evaluated the eligibility of claims “address [ing] the problem of retaining website visitors that, if adhering to the routine, conventional functioning of Internet hyperlink protocol, would be instantly transported away from a host’s website after ‘clicking’ on an advertisement and activating a hyperlink.” Id. at 1257. There, the Court found that the claims were patent-eligible because they transformed the manner in which a hyperlink typically functions to resolve a problem that had no “pre-Internet analog.” Id. at 1258. The Court cautioned, however, “that not all claims purporting to address Internet- centric challenges are eligible for patent.” Id. For example, in DDR Holdings the Court distinguished the patent-eligible claims at issue from claims found patent-ineligible in Ultramercial. See id. at 1258—59 (citing Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715-16 (Fed. Cir. 2014)). As noted there, the Ultramercial claims were “directed to a specific method of advertising and content distribution that was previously unknown and 13 Appeal 2016-003288 Application 13/746,994 never employed on the Internet before.” Id. at 1258 (quoting Ultramercial, 772 F.3d at 715—16). Nevertheless, those claims were patent-ineligible because they “merely recite[d] the abstract idea of ‘offering media content in exchange for viewing an advertisement,’ along with ‘routine additional steps such as updating an activity log, requiring a request from the consumer to view the ad, restrictions on public access, and use of the Internet.’” Id. Appellant’s asserted claims are analogous to claims found ineligible in Ultramercial and distinct from claims found eligible in DDR Holdings. The ineligible claims in Ultramercial recited “providing [a] media product for sale at an Internet website;” “restricting general public access to said media product;” “receiving from the consumer a request to view [a] sponsor message;” and “if the sponsor message is an interactive message, presenting at least one query to the consumer and allowing said consumer access to said media product after receiving a response to said at least one query.” 772 F.3d at 712. Similarly, Appellant’s asserted claims recite creating, analyzing, and transmitting data. This is precisely the type of Internet activity found ineligible in Ultramercial. We are not persuaded by Appellant’s argument that in addition to claiming adding and tracking ad or content with visual talking messages, are directed to: a visual talking message; inserting the ad/content directly into a user’s visual talking message; how the ad or content is selected (real-time bidding process, analyzing past history, etc.) - Claims 2-7; creating visual talking messages from the ad or other content - Claim 8. 14 Appeal 2016-003288 Application 13/746,994 App. Br. 10. Each of these limitations is another form of abstract conceptual advice as to what a computer is to provide with no implementation details as to how to do so. “Adding one abstract idea ... to another abstract idea . . . does not render the claim non-abstract.” RecogniCorp, LLC v. Nintendo Co., Ltd., 855 F.3d 1322, 1327 (2017). Claims 1, 2, 8—11, 17, and 18 rejected under 35 U.S.C. § 103(a) as unpatentable over Aaltonen, Rothschild, and Steelberg We are not persuaded by Appellant’s argument that Aaltonen does not teach or otherwise suggest, individually or in combination with the other references, “creating a visual talking message” and “adding advertisements or other content within or around the visual talking message, wherein the advertisements or other content comprises one or more of an image forming part of the visual talking message.” App. Br. 12. A visual talking message is no more than a visual message with audio. The content of the audio is perceptible only in the mind of the beholder and afforded no patentable weight. See In re Bernhart, 417 F.2d 1395, 1399 (CCPA 1969). Aaltonen explicitly describes a user adding advertising content to a message and separately describes the content as possibly including audio or video. An image forming part of the visual talking message is just that, an image that is part of the entirety of the message, and encompasses any visual part of the message. Once the advertising is added as in the third step of claim 1, the advertising, along with its imagery, forms part of the message. Thus this limitation is met. 15 Appeal 2016-003288 Application 13/746,994 We are not persuaded by Appellant’s argument that “Appellant's advertisements or other content is (1) embedded in or around the visual talking message and (2) forms part of the overall message. Neither of these limitations is suggested by Aaltonen.” App. Br. 12. Adding an ad to a message as in Aaltonen is within the scope of embedding the ad around the message. The overall message is the composite of all text and media presented, and so the ads in Aaltonen form part of such an overall message. We are not persuaded by Appellant’s argument that “Rothschild, at best, teaches a sender-selected advertisement. This sender-selected advertisement is at an end of an email (FIG. 3). This sender-selected advertisement is neither physically part of the message nor literally part of the message.” App. Br. 13. An ad included in an email, even at the end, is still part of the email and thus part of the message. Appellant apparently is distinguishing different semantic or contextual parts of the message, but any such distinction is in the mind of the beholder, which cannot distinguish the claims over the art. See In re Bernhart, 417 F.2d at 1399. Also, the claims do not distinguish any such semantic boundaries within the overall message content, and do not provide any particular implementation details as to how such boundaries would be maintained even if they were recited. The remaining claims are not separately argued. Claims 3 and 12 rejected under 35 U.S.C. § 103(a) as unpatentable over Aaltonen, Rothschild, Steelberg, and Gopinath These claims depend from those argued on the basis of claim 1. 16 Appeal 2016-003288 Application 13/746,994 Claim 4 rejected under 35 U.S.C. § 103(a) as unpatentable over Aaltonen, Rothschild, Steelberg, Gopinath, and Collison This claim depends from those argued on the basis of claim 1. Claims 5, 7, 14, and 16 rejected under 35 U.S.C. § 103(a) as unpatentable over Aaltonen, Rothschild, Steelberg, and Patel These claims depend from those argued on the basis of claim 1. Claims 6 and 15 rejected under 35 U.S.C. § 103(a) as unpatentable over Aaltonen, Rothschild, Steelberg, Patel, and Kilroy These claims depend from those argued on the basis of claim 1. Claim 13 rejected under 35 U.S.C. § 103(a) as unpatentable over Aaltonen, Rothschild, Steelberg, and Collison This claim depends from those argued on the basis of claim 1. Claims 19 and 20 rejected under 35 U.S.C. § 103(a) as unpatentable over Aaltonen, Rothschild, Steelberg, and Collison These claims are argued on the basis of claim 1. CONCLUSIONS OF LAW The rejection of claims 1—20 under 35 U.S.C. § 101 as reciting only non—statutory subject matter is proper. 17 Appeal 2016-003288 Application 13/746,994 The rejection of claims 1, 2, 8—11, 17, and 18 under 35 U.S.C. § 103(a) as unpatentable over Aaltonen, Rothschild, and Steelberg is proper. The rejection of claims 3 and 12 under 35 U.S.C. § 103(a) as unpatentable over Aaltonen, Rothschild, Steelberg, and Gopinath is proper. The rejection of claim 4 under 35 U.S.C. § 103(a) as unpatentable over Aaltonen, Rothschild, Steelberg, Gopinath, and Collison is proper. The rejection of claims 5, 7, 14, and 16 under 35 U.S.C. § 103(a) as unpatentable over Aaltonen, Rothschild, Steelberg, and Patel is proper. The rejection of claims 6 and 15 under 35 U.S.C. § 103(a) as unpatentable over Aaltonen, Rothschild, Steelberg, Patel, and Kilroy is proper. The rejection of claim 13 under 35 U.S.C. § 103(a) as unpatentable over Aaltonen, Rothschild, Steelberg, and Collison is proper. The rejection of claims 19 and 20 under 35 U.S.C. § 103(a) as unpatentable over Aaltonen, Rothschild, Steelberg, and Collison is proper. DECISION The rejections of claims 1—20 are affirmed. 18 Appeal 2016-003288 Application 13/746,994 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. § 1.136(a)(l)(iv) (2011). AFFIRMED 19 Copy with citationCopy as parenthetical citation