Ex Parte Grossman

Patent Trial and Appeal Board

Feb 7, 2018

12133357 (P.T.A.B. Feb. 7, 2018)

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.
12/133,357 06/04/2008 Jordan Ian Grossman 18275.0001 9518
42292 7590 02/09/2018
Pliip.sa Shahinian Rr friantnmasii PP EXAMINER
Attn: Jeffrey M. Weinick KANERVO, VIRPI H
One Boland Drive
West Orange, NJ 07052 ART UNIT PAPER NUMBER
3691
NOTIFICATION DATE DELIVERY MODE
02/09/2018 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):
patent @ csglaw. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JORDAN IAN GROSSMAN
Appeal 2016-007058
Application 12/133,35V1
Technology Center 3600
Before ST. JOHN COURTENAY III, JUSTIN BUSCH, and
SCOTT B. HOWARD, Administrative Patent Judges.
HOWARD, Administrative Patent Judge.
DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Final Rejection
of claims 20-28 and 30—41, which constitute all of the claims pending in this
application. Claims 1-19 and 29 have been cancelled. App. Br. 20, 21
(Claims App’x.). We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 Appellant is the Applicant, Jordan Ian Grossman, and is identified in the
Appeal Brief as the real party in interest. App. Br. 1.
Appeal 2016-007058
Application 12/133,357
THE INVENTION
The disclosed and claimed invention is directed “to targeted]
advertising, and in particular, the invention relates to presenting
advertisements based on viewing patterns.” Spec. 1:3—4.
Claim 20, reproduced below, is illustrative of the claimed subject
matter:
20. A method in a data processing system having at least one
processor and memory coupled with the at least one processor
for targeting advertisements to a plurality of recipients, the
method comprising the steps of:
selecting for presentation to a particular one recipient of
the plurality of recipients, by the data processing system, at
least one advertisement from a plurality of advertisements in
accordance with a presentation alteration history of the plurality
of advertisements;
detecting, by the data processing system, a presentation
alteration event associated with the selected advertisement, the
presentation alteration event originating from the particular one
recipient of the plurality of recipients upon a presentation of the
selected advertisement to the particular one recipient;
in response to the detection, selecting for at least one
other recipient of the plurality of recipients at least another one
advertisement of the plurality of advertisements as an
advertisement to be subsequently presented to the at least one
other recipient of the plurality of recipients; and
presenting the at least another one advertisement of the
plurality of advertisements to the at least one other recipient of
the plurality of recipients.
REFERENCES
The prior art relied upon by the Examiner as evidence in rejecting the
claims on appeal is:
Plotnick
Swix
US 2002/0178447 A1 Nov. 28, 2002
US 6,718,551 B1 Apr. 6, 2004
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REJECTIONS
Claims 20-28 and 30^11 stand rejected under 35 U.S.C. § 101 as
being directed to patent-ineligible subject matter. Final Act. 5-6.
Claims 20-28 and 30^11 stand rejected under pre-AIA 35 U.S.C.
§ 103(a) as being unpatentable over Swix in view of Plotnick. Final Act. 6-
12.
ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellant’s
arguments that the Examiner erred. In reaching this decision, we have
considered all evidence presented and all arguments made by Appellant. We
are not persuaded by Appellant’s arguments regarding claims 20-28 and 30-
41, and, instead, we incorporate herein and 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. 5-12), and (2) the reasons and rebuttals set forth
in the Examiner’s Answer in response to Appellant’s arguments (Ans. 10-
12). We incorporate such findings, reasons, and rebuttals herein by
reference unless otherwise noted. However, we highlight and address
specific findings and arguments for emphasis as follows.
Section 101 Rejection
Patent-eligible subject matter is defined in § 101 of the Patent Act,
which recites:
Whoever invents or discovers any new and useful process,
machine, manufacture, or composition of matter, or any new
and useful improvement thereof, may obtain a patent therefor,
subject to the conditions and requirements of this title.
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There are, however, three judicially created exceptions to the broad
categories of patent-eligible subject matter in § 101: laws of nature, natural
phenomena, and abstract ideas. Alice Corp. Pty. Ltd. v. CIS Banklnt’l, 134
S. Ct. 2347, 2354 (2014); Mayo Collaborative Servs. v. Prometheus Labs.,
Inc., 566 U.S. 66, 70-71 (2012). Although an abstract idea, itself, is patent-
ineligible, an application of the abstract idea may be patent-eligible. Alice,
134 S. Ct. at 2355. Thus, we must 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.” Id. (citing Mayo, 132 S. Ct. at 1297-98). The claim must
contain elements or a combination of elements that are “sufficient to ensure
that the patent in practice amounts to significantly more than a patent upon
the [abstract idea] itself.” Id. (citing Mayo, 132 S. Ct. at 1294).
The Supreme Court set forth a two-part “framework for distinguishing
patents that claim laws of nature, natural phenomena, and abstract ideas
from those that claim patent-eligible applications of those concepts.” Id. at
2355.
First, we determine whether the claims at issue are directed to
one of those patent-ineligible concepts. [Mayo,] 132 S. Ct., at
1296-1297. If so, we then ask, “[w]hat else is there in the claims
before us?” Id., at-------, 132 S. Ct., at 1297. To answer that
question, we 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. Id., at-------, 132 S. Ct.,
at 1298, 1297. We have 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
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upon the [ineligible concept] itself.” Id., at-------, 132 S. Ct., at
1294.
Id.
“The ‘abstract idea’ step of the inquiry calls upon us to look at the
‘focus of the claimed advance over the prior art’ to determine if the claim’s
‘character as a whole’ is directed to excluded subject matter.” Affinity Labs
of Tex. v. DirectTV, LLC, 838 F.3d 1253, 1257 (Fed. Cir. 2016) (quoting
Elec. Power Grp., LLCv. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir.
2016)); see also Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed.
Cir. 2016). There is no definitive rule to determine what constitutes an
“abstract idea.” Rather, the Federal Circuit has explained that “both [it] and
the Supreme Court have found it sufficient to compare claims at issue to
those claims already found to be directed to an abstract idea in previous
cases.” Enfish, 822 F.3d at 1334; see also Amdocs (Israel) Ltd. v. Openet
Telecom, Inc., 841 F.3d 1288, 1294 (Fed. Cir. 2016) (explaining that, in
determining whether claims are patent eligible under § 101, “the decisional
mechanism courts now apply is to examine earlier cases in which a similar
or parallel descriptive nature can be seen—what prior cases were about, and
which way they were decided”).
The Examiner concludes claim 20 is directed to the abstract idea of
“targeting advertisements to a recipient” and the “claims do not effect an
improvement to another technology or technical field” and “do not amount
to an improvement to the functioning of a computer itself.” Final Act. 6; see
also Ans. 10. The Examiner further concludes that “[t]he creation of
targeted] advertisements to a recipient, as recited in the independent claims,
is similar to an idea of itself found by the courts to be abstract ideas (e.g.,
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comparing new and stored information and using rules to identify options in
SmartGene^)” Ans. 10
Appellant argues the Examiner erred in finding claim 20 is directed to
an abstract idea. App. Br. 5-10; Reply Br. 1-7. According to Appellant,
“claim 20 encompasses more than just a mere statement of a concept, and
describes a specific application and implementation rather than just an
abstract idea itself.” App. Br. 5. Appellant argues claim 20 “is directed to
targeting advertising to a plurality of recipients employing the data
processing unit’s ability to generate the target advertisement for a particular
one recipient as a function of a prior presentation alteration event of another
— different — recipient” and, as such, is not one of the examples of an
abstract idea set forth in Alice. Id. at 5-6.
Appellant further argues because claim 20 “provides novel and non-
obvious improvements that go well beyond simply retrieving and combining
data using a computer,” the claims are not directed to the use of an abstract
idea. Id. at 8-9.
In the Reply Brief, Appellant also asserts the claims at issue are like
those found not to be directed to an abstract idea in Enfish. Reply Br. 3-7.
Specifically, Appellant argues that, similar to the claims in Enfish, the
pending claims are directed to an improvement in computer technology:
As noted above, the pending claims are directed to
embodiments for targeting advertising to a plurality of
recipients employing the data processing unit’s ability to
generate the target advertisement for a particular one recipient
as a function of a prior presentation alteration event of another
— different — recipient. Importantly, the claimed
2 SmartGene Inc. v. Adv. Bio. Labs. SA, 555 Fed. Appx. 950 (Fed. Cir.
2014).
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embodiments recite a number of selecting and detecting
operations performed by the data processing system (e.g.,
provider system 110, as shown in FIGs. 1 and 3) where the
operations utilize a central processing unit (e.g., CPU 302), a
memory (e.g., memory 306 storing provider program 320) and
a data storage device (e.g., data storage device 308 storing
advertisement database 330 and recipient database 332). The
interplay between the CPU and the respective
databases/memories, in accordance with the claimed
embodiments, serve to demonstrate a similar improvement
to computer functionality itself as in Enfisti that is similarly
bolstered by the teachings of Applicant’s Specification in
support of the claimed embodiments.
Id. at 4-5 (emphasis added).
We are not persuaded by Appellant’s argument that the Examiner
erred. To the contrary, we agree with the Examiner that the claim is directed
to targeted advertising which controls the content provided to users.3 As our
reviewing court has held, “tailoring of content based on information about
the user” is an abstract idea. Affinity, 838 F.3d at 1271 (citing Intellectual
Ventures ILLC v. Capital One Bank (USA), 792 F.3d 1363, 1369 (Fed. Cir.
2015)); see also Morsa v. Facebook, Inc., 77 F. Supp.3d 1007, 1013-14
(C.D. Cal. 2014) (concluding that targeted advertising is an abstract idea).
Although Appellant states the various steps of the claims encompass more
than an abstract idea, we determine that, like limitations in Ultramercial,
those steps “recite an abstraction—an idea, having no particular concrete or
3 We note this is substantially the same as Appellant’s identification of what
the claims are directed to. Compare with App. Br. 5 (arguing that “the claim
is directed to targeting advertising to a plurality of recipients employing the
data processing unit’s ability to generate the target advertisement for a
particular one recipient as a function of a prior presentation alteration event
of another — different — recipient”).
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tangible form,” namely that of “showing an advertisement.” Ultramercial
Inc. v. Hulu LLC, 722 F.3d 1335, 1346 (Fed. Cir. 2013), vacated and
remanded, Wildtangent, Inv. v. Ultramercial LLC, 134 S. Ct. 2870 (2014)
(remanding for consideration in light of Alice, 134 S. Ct. 2347). And,
although certain additional limitations add particularity to the claims, they
do nothing to change the underlying idea.
We are also not persuaded by Appellant’s argument that the claimed
invention is not abstract because it is novel and non-obvious. First, a novel
and nonobvious claim directed to a purely abstract idea is, nonetheless,
patent-ineligible. See Mayo, 132 S. Ct. at 1304. Second, as discussed
below, we sustain the Examiner’s rejection of the claims as unpatentable as
obvious.
We are also not persuaded by Appellant’s comparison of the claims in
the pending application to those in Enfish. In Enflsh, the Federal Circuit
relied on the distinction made in Alice between computer functionality
improvements and uses of existing computers as tools in aid of processes
focused on “abstract ideas.” See Enfish, 822 F.3d at 1335-36 (“[T]he first
step in the Alice inquiry in this case asks whether 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.”); see also Alice, 134 S. Ct. at 2358-59.
The present case is different from Enfish because the focus of the
claims here is not on an improvement in computers as tools or upon an
innovative way to use computers or other devices, but is focused on an
independently abstract idea that uses generic and routine equipment as tools;
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that abstract idea being collecting and processing data relating to
presentation alteration events. That is, here the arguably innovative
technique of the appealed claims is inextricably a part of the abstract idea of
manipulating data itself to decide which targeted advertisements to show.
Moreover, nothing in the claims, understood in light of the Specification,
requires anything other than an off-the-shelf, conventional computer used
for collecting and processing/analyzing various information/data. Therefore,
unlike in Enfish, the claims are directed not to improvement in computer
capabilities, but to the results of applying an abstract idea.
The Examiner further concludes that “the claims, when considered as
a whole, are nothing more than the instruction to implement the abstract idea
(i.e., targeting advertisements to a recipient) in a particular, albeit well-
understood, routine and conventional technological environment.” Final
Act. 6.; see also Ans. 10-11. More specifically, the Examiner determines
that the claims “merely amount to the application or instructions to apply the
abstract idea of targeting advertisements to a recipient on a computer, and is
considered to amount to nothing more than requiring a generic computer
system to merely carry out the abstract idea itself.” Ans. 10-11.
Appellant argues claim 20 “recites meaningful limitations that go well
beyond merely providing instructions to apply the abstract idea on a generic
computer.” App. Br. 7; see also id. at 9 (“Independent claim 20 has
meaningful limitations that elevate the claim beyond any reasonable
interpretation of a generic computer performing
generic/routine/conventional activities.”). Appellant contends the steps in
claim 20 “are meaningful limitations and when viewed either individually or
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as an ordered combination together with the other recited method steps,
amount to significantly more than the abstract idea.” Id. at 9.
Although Appellant asserts that the claims recite something more than
the abstract idea, Appellant does no more than recite or summarize the claim
limitations without explaining how those limitations, either individually or
in combination, result in something more. It is well settled that mere
attorney arguments and conclusory statements, which are unsupported by
factual evidence, are entitled to little probative value. In re Geisler, 116
F.3d 1465, 1470 (Fed. Cir. 1997); see also In re Pearson, 494 F.2d 1399,
1405 (CCPA 1974) (attorney argument is not evidence). Accordingly, we
are not persuaded by Appellant’s argument that the Examiner erred. Instead,
we agree with the Examiner that claim 20 does not recite sufficient
additional elements beyond the recitation of the abstract idea to transform
the nature of the claim into a patent-eligible application.
Accordingly, we sustain the Examiner’s rejection of representative
claim 20 as directed to patent-ineligible subject matter, along with the
rejections of claims 31 and 41, which are argued based on the same reasons
(App. Br. 10, 11), and claims 21-30 and 32^40, which are not separately
argued {id. at 11-12). See 37 C.F.R. § 41.37(c)(l)(iv).
Section 103 Rejection
Appellant argues the Examiner erred in finding Swix teaches using a
presentation alteration history to select content, such as an advertisement.
App. Br. 13-15. More specifically, Appellant argues “Swix employs a
‘static’ advertising population and selection process that is focused on a
particular viewer, that viewer’s activity (e.g., pay-per view activity) and an
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associated demographic group.” Id. at 14. Appellant further argues that the
Examiner erred in equating “Swix’s ‘an event list of every viewing selection
made by the subscriber up to the ordering of the movie’ with the claimed
‘presentation alteration event’ in the rejection of the claims.” Id.
The Examiner finds Swix teaches selecting an advertisement based on
a presentation alteration history of the plurality of advertisements. Final
Act. 7 (citing Swix 12:25-31, 12:37-53); see also id. at 4; Ans. 11-12.
More specifically, the Examiner finds:
Swix . . . teaches that the presentation alteration data of a one
recipient (i.e., “an event list of every viewing selection made by
the subscriber up to the ordering of the movie . . . including]
commercials turned off’) is an indicator for the likelihood that
other recipients will exhibit the same or substantially the same
interest to that advertisement (i.e., “profile processor 104
analyzes the event data and additional data, classifies the viewer
in a certain demographic group, and delivers a commercial
targeted for that group.”).
Ans. 11-12.
During examination of a patent application, a claim is given its
broadest reasonable construction “in light of the specification as it would be
interpreted by one of ordinary skill in the art.” In re Am. Acad, of Sci. Tech
Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004) (quotations omitted). There is a
presumption that a claim term carries its ordinary and customary meaning.
In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). An
applicant may rebut this presumption, however, by acting as his own
lexicographer, providing a definition of the term in the specification with
“reasonable clarity, deliberateness, and precision.” See In re Paulsen, 30
F.3d 1475, 1480 (Fed. Cir. 1994). Any special meaning assigned to a term
“must be sufficiently clear in the specification that any departure from
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common usage would be so understood by a person of experience in the
field of the invention.” Multiform Desiccants, Inc. v. Medzam, Ltd., 133
F.3d 1473, 1477 (Fed. Cir. 1998); see also Helmsderfer v. Bobrick
Washroom Equip., Inc., 527 F.3d 1379, 1381 (Fed. Cir. 2008) (“A patentee
may act as its own lexicographer and assign to a term a unique definition
that is different from its ordinary and customary meaning; however, a
patentee must clearly express that intent in the written description.”).
In the absence of such a definition, limitations are not to be read from
the specification into the claims. In re Van Geuns, 988 F.2d 1181, 1184
(Fed. Cir. 1993). “[Although the specification often describes very specific
embodiments of the invention, we have repeatedly warned against confining
the claims to those embodiments. . . . [CJlaims may embrace ‘different
subject matter than is illustrated in the specific embodiments in the
specification.’” Phillips v. AWH Corp., 415 F.3d 1303, 1323 (Fed. Cir.
2005) (en banc) (citations omitted).
Although the term “presentation alteration” is not used in the
Specification, the Specification provides examples of alterations in the
presentation. For example, the Specification states that “the provider
identifies when recipients alter the normal presentation of advertisements,
such as by fast-forwarding through or interrupting advertisements. If a
recipient fast-forwards or interrupts through an advertisement, it is likely
that the advertisement is ineffective to the respective recipient.” Spec. 9:1—4
(emphasis added). Similarly, in describing Figure 6, the Specification states
that “if the provider program receives a message that the program
presentation has been altered (e.g., by fast-forwarding or interruption) in
step 606, then the provider program uses this information to determine one
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or more subsequent advertisements (step 610).” Spec. 13:5-7 (emphasis
added); see also Fig. 6, step 606 (“INTERRUPT OR FAST-
FORWARDED?”).
Although the Specification discusses interruptions and fast-forwarding
as examples of alterations to the presentation, it does not use language that
denotes an exclusive list. For example, the Specification qualifies the
discussion by using “such as” and “e.g.,” which is exemplary, non-limiting
language. Therefore, although the broadest reasonable interpretation of
presentation alteration encompasses interrupting and fast-forwarding, it is
not limited to those two examples. Instead, it is broad enough to encompass
any type of alteration in the presentation of a commercial.4
Swix teaches creating an event list which includes information such as
“commercials viewed[] and commercials turned off.” Swix 12:25-31. Swix
further teaches that the “profile processor 104 analyzes the event data . . .
and delivers a commercial targeted for that group.” Id. at 12:37-53. Stated
differently, Swix teaches choosing a commercial to be shown to a group
based on data that includes which commercials are turned off. Because the
claim limitation “presentation alteration” is broad enough to encompass
interrupting the presentation of a commercial by turning it off, we are not
persuaded by Appellant’s argument that the Examiner erred.
Appellant further argues “Plotnick is focused on a single subscriber
and that subscriber’s behavior for targeting ads thereto - not to another
subscriber.” App. Br. 15. Therefore, according to Appellant, Plotnick does
4 Because “applicants may amend claims to narrow their scope, a broad
construction during prosecution creates no unfairness to the applicant or
patentee.” In re ICON Health & Fitness, Inc., 496 F.3d 1374, 1379 (Fed.
Cir. 2007) (citation omitted).
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not teach or suggest using information relating to one person as an “indicator
for the likelihood that other recipients will exhibit the same or substantially
the same interest to that advertisement and/or advertisements similar in
nature” and selecting an advertisement for another person based on a
presentation alteration by the first person. Id.
Nonobviousness cannot be established by attacking the references
individually when the rejection is predicated upon a combination of prior art
disclosures. In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986). The
test for obviousness is not whether the claimed invention is expressly
suggested in any one or all of the references, but whether the claimed subject
matter would have been obvious to those of ordinary skill in the art in light
of the combined teachings of those references. In re Keller, 642 F.2d 413,
425 (CCPA 1981).
Because the Examiner relies on Swix, not Plotnick, for teaching
selecting advertisements to be shown to another member of the group (Final
Act. 7), Appellant is improperly arguing the references individually.
Therefore, we are not persuaded by Appellant’s argument that the Examiner
erred.
Accordingly, we sustain the Examiner’s rejection of representative
claim 20 as unpatentable over Swix in view of Plotnick, along with the
rejections of claims 31 and 41, which are argued based on the same reasons
(App. Br. 17, 18), and claims 21-30 and 32^40, which are not separately
argued {id. at 18). See 37 C.F.R. § 41.37(c)(l)(iv).
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DECISION
For the above reasons, we affirm the Examiner’s decisions rejecting
claims 20-28 and 30-41.
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. § 41.50(f).
AFFIRMED
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