Ex Parte Hamilton et al

Patent Trial and Appeal Board

Nov 16, 2018

11679715 (P.T.A.B. Nov. 16, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
11/679,715 02/27/2007 Rick A. Hamilton II
45092 7590 11/20/2018
HOFFMAN WARNICK LLC
540 Broadway
4th Floor
ALBANY, NY 12207
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.
END920070011 US 1 4016
EXAMINER
SORKOWITZ, DANIEL M
ART UNIT PAPER NUMBER
3681
NOTIFICATION DATE DELIVERY MODE
11/20/2018 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):
PTOCommunications@hoffmanwarnick.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RICK A. HAMIL TON II, BRIAN M. O'CONNELL,
CLIFFORD A. PICKOVER, and KEITH R. WALKER1
Appeal2017-008577
Application 11/679,715
Technology Center 3600
Before KAL YANK. DESHPANDE, CHARLES J. BOUDREAU, and
SHARON PENICK, Administrative Patent Judges.
PENICK, Administrative Patent Judge.
DECISION ON APPEAL
Introduction
This is an appeal under 35 U.S.C. § 134(a) from the Examiner's Final
Rejection of claims 1, 3-8, 10-14, and 16-21. Claims 2, 9, 15, and 22-24
have been cancelled. We have jurisdiction under 35 U.S.C. § 6(b)(l).
We AFFIRM.
1 Appellants identify International Business Machines Corporation as the
real party in interest. App. Br. 1.
Appeal2017-008577
Application 11/679,715
Invention
Appellants' invention relates to planning and paying for
advertisements in a virtual universe (VU). Spec. ,r 4. Specifically, it is
determined which portions of the VU and which avatars in the VU are most
viewed, and advertisements are placed in/around the most viewed portions
and avatars. Id. ,r,r 4, 34. Users associated with those portions of the VU
and avatars may be compensated based on the frequency or time that the
advertisements are viewed. Id. ,r,r 4, 35.
Exemplary Claim
Claims 1, 8, 14, and 21 are independent. Claim 1, reproduced below,
is exemplary:
1. A method of planning and paying for advertisements in a
virtual universe (VU), comprising:
identifying, via a computer device, portions of the VU
and avatars in the VU that are most viewed, wherein the
identifying comprises:
tracking, via an analysis module, a set of data including a
quantity of texture renderings, a duration, and a distance that
each portion and avatar in the VU is being viewed;
determining, via the analysis module, a set of agents
controlled by an Artificial Intelligence;
excluding, via the analysis module, from the set of data
any data pertaining to the set of agents controlled by an
Artificial Intelligence;
determining, via the analysis module, a period of time
that a user viewing portions of the VU and avatars in the VU
has had no interaction with the VU; and
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excluding, via the analysis module, from the set of data
any data pertaining to the period of time the user is not
interacting with the VU;
planning, for an advertiser, a placement of
advertisements in the VU and potential avatars for an
advertisement deal based on the identifying, wherein the
potential avatars are user owned avatars which have been
identified as avatars which are most viewed; and
establishing a compensation plan based on a viewing of
the advertisements, wherein the compensation plan determines
a compensation from the advertiser to an advertising user
owning a selected one of the portion of the VU or the potential
avatar, and the viewing is calculated following a placement of
the advertisements in the selected one of the portion of the VU
or on the potential avatar.
Rejection on Appeal
The Examiner rejects claims 1, 3-8, 10-14, and 16-21 2 under
35 U.S.C. § 101 as being directed to non-statutory subject matter. Final Act.
2---6; Ans. 4--5.
2 The Examiner's Final Rejection lists claims 1, 3-8, 14, and 16-21, but not
claims 10-13, both as "pending in the application" and as being rejected.
Final Act. 1-3, 5. As Appellants point out (App. Br. 10, 19), the omission of
claims 10-13 from the claim listings appears to have been a typographical
error, as the Examiner rejects all pending claims under 35 U.S.C. § 101 and
does not indicate that any claims are allowed (see Final Act. 1). We note,
moreover, that claims 10-13 correspond to claims 3, 4, 6, 7, and claims 16,
17, 19, and 20, which are all explicitly listed as rejected under 35 U.S.C.
§ 101 and differ from claims 10-13 only in their dependency from different
independent claims.
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ANALYSIS
An invention is patent-eligible if it claims a "new and useful process,
machine, manufacture, or composition of matter, or [a] new and useful
improvement thereof." 35 U.S.C. § 101. However, the Supreme Court has
long interpreted § 101 to "contain[] an important implicit exception: Laws of
nature, natural phenomena, and abstract ideas are not patentable." Alice
Corp. v. CLS Bankint'l, 134 S. Ct. 2347, 2354 (2014) (quotingAss'nfor
Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 589 (2013)).
In Alice, the Supreme Court reiterated the two-step framework
previously set forth in Mayo Collaborative Servs. v. Prometheus Labs., Inc.,
566 U.S. 66, 75-77 (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, 134 S. Ct. at 2355. The first
step in this analysis is to "determine whether the claims at issue are directed
to one of those patent-ineligible concepts," e.g., to an abstract idea. Id. If
the claims are not directed to a patent-ineligible concept, the inquiry ends.
Otherwise, the inquiry proceeds to the second step, in which the elements of
the claims are considered "individually and 'as an ordered combination"' to
determine whether there are additional elements that "'transform the nature
of the claim' into a patent-eligible application." Id. (quoting Mayo, 566 U.S.
at 78, 79). The claims must contain an "inventive concept," or some
element or combination of elements "sufficient to ensure that the patent in
practice amounts to significantly more than a patent upon the [ abstract idea]
itself." Id. (quoting Mayo, 566 U.S. at 72-73).
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Alice/Mayo Step 1
The Examiner determines that the claims are directed to an "abstract
idea of a marketing and sales act" (Final Act. 3), in particular an "abstract
idea of displaying a[] virtual or real advertisement, a fundamental economic
practice for a commercial activity" (Ans. 5). According to the Examiner, the
steps of claim 1 "describe the concept of advertising over communication
networks" similar to the concepts involving advertising and payments over
the Internet that were determined to be abstract in Ultramercial, Inc. v. Hulu,
LLC, 772 F.3d 709 (Fed. Cir. 2014). Final Act. 4.
According to Appellants, the claims are "directed toward planning and
establishing advertisements within a virtual universe, and subsequently
paying advertising users in the virtual universe for complying with the
ability to provide an advertisement within[] the virtual universe." App.
Br. 11-12. Appellants argue that this is not merely an abstract idea, but that
the claimed "method, system, or program product applies to, and affects, a
computer network and its capacity to efficiently provide advertisements and
compensate advertising users within a virtual world; a commercial avenue
that is unique and unexplored for providing commercial benefits and/ore-
commerce opportunities to businesses." Id. at 12.
We agree with the Examiner that the claims are directed to patent-
ineligible concepts of advertising. Claim 1, for example, describes
identifying areas and individuals that are most viewed ("identifying, via a
computer device, portions of the VU and avatars in the VU that are most
viewed"), planning placement of advertisements and advertisement deals
according to the most-viewed areas and individuals ("planning, for an
advertiser, a placement of advertisements in the VU and potential avatars for
an advertisement deal based on the identifying"), and planning
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compensation of individuals who facilitate the advertising, based on placed
advertisements being viewed ("establishing a compensation plan based on a
viewing of the advertisements, wherein the compensation plan determines a
compensation from the advertiser to an advertising user owning a selected
one of the portion of the VU or the potential avatar"). In other words, the
claim is directed to placing advertisements where they "will have a great
amount of exposure and/or visibility" and compensating individuals who
permit or "provide advertisements" (App. Br. 12}-in even shorter terms,
"planning and paying for advertisements" (Spec. ,r 4). This is a basic and
well-established abstract idea with no particular concrete or tangible form,
like the concept of offering free media products in exchange for watching
advertisements found to be abstract in Ultramercial, as the Examiner notes.
See Ultramercial, 772 F.3d at 715.
Appellants contend that the claims recite "more than a series of steps
that can each be performed mentally" and that "[p ]lanning, placing and
compensating for advertisements within a virtual universe that is entirely
based on and reliant on computer infrastructures ... 'is necessarily rooted in
computer technology in order to overcome a problem specifically arising in
the realm of computer networks."' App. Br. 13 ( quoting DDR Holdings,
LLC v. Hotels.com, L.P., 773 F.3d 1245, 1257 (Fed. Cir. 2014)).
Specifically, Appellants contend that "the claimed device can improve
efficiencies relating to strategically placing advertisements within a virtual
universe and adequately, accurately and safely compensating targeted users
for their participation in advertising in the virtual universe." Id.
We disagree with Appellants that the claims are directed to a
computer-centric problem like in DDR. In DDR, the Court found that the
claims addressed "the problem of retaining website visitors that ... would
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be instantly transported away from a host's website after 'clicking' on an
advertisement and activating a hyperlink," and that the claims "d[id] not
merely recite the performance of some business practice known from the
pre-Internet world along with the requirement to perform it on the Internet."
DDR, 773 F.3d at 1257. However, the claims in the instant case merely
adopt a pre-existing business practice-strategically placing advertisements
and paying for the advertising-for use with computer technology, in a
virtual universe. Advertisement placement and paying for advertising are
not challenges particular to computer technology or the virtual universe
environment. Performing the "identifying" step "via a computer device" and
placing the advertisements "in a virtual universe," as recited in claim 1, do
not tum the abstraction into something concrete, for a claim that is directed
to an abstract idea does not become patent-eligible by "merely requir[ing]
generic computer implementation" (Alice, 134 S. Ct. at 2357) or "limiting
the claims to [a] particular technological environment" (Elec. Power Grp.,
LLC v. Alstom S.A., 830 F.3d 1350, 1354 (Fed. Cir. 2016)). See also
Ultramercial, 772 F.3d at 716 ("the use of the Internet is not sufficient to
save otherwise abstract claims from ineligibility under 101 ") ( citing
CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1370 (Fed. Cir.
2011)); DDR, 773 F.3d at 1256 (claims "directed to nothing more than the
performance of an abstract business practice on the Internet or using a
conventional computer .... are not patent-eligible").
Appellants further contend that "the claims are narrow and detailed
enough to avoid preemption, and they do not recite a method that would be
performed by existing human activity" because they "only seek[] to obtain
protection for a specific and unique approach of planning, placing, and
compensating for advertisements in a virtual world .... " App. Br. 13-14.
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Although the extent of preemption is a consideration, the absence of
complete preemption is not dispositive. See, e.g., Ariosa Diagnostics, Inc. v.
Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015) ("While preemption
may signal patent ineligible subject matter, the absence of complete
preemption does not demonstrate patent eligibility."); Ultramercial, Inc. v.
Hulu, LLC, 722 F.3d at 1346 ("[T]he Supreme Court has stated that, even if
a claim does not wholly pre-empt an abstract idea, it still will not be limited
meaningfully if it contains only insignificant or token pre- or post-solution
activity-such as identifying a relevant audience, a category of use, field of
use, or technological environment.") ( citations omitted), vacated and
remanded, WildTangent, Inc. v. Ultramercial, LLC, 134 S. Ct. 2870 (2014)
(remanding for further consideration in light of Alice). Thus, even if the
claims do not preempt the abstract idea, that alone is not enough to render
the claims patent-eligible.
Accordingly, we agree with the Examiner that the claims are directed
to an abstract idea.
Alice/Mayo Step 2
The Examiner determines that the claims do not include additional
elements that, when considered both individually and as an ordered
combination, are sufficient to amount to significantly more than the abstract
idea because "[ t ]he claim recites the additional limitation of a computer
device, a generic computer component recited as performing generic
computer functions that are well-understood, routine and conventional
activities [and] amount to no more than implementing the abstract idea with
a computerized system." Final Act. 4. According to the Examiner, "[t]he
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claim's invocation of a 'computer device' as well as 'virtual universe' ...
adds no inventive concept." Ans. 5.
Appellants argue that the claim elements, considered individually,
amount to significantly more than an abstract idea because they
recite the process of analyzing the data in detail to determine
avatars or agents control[led] by artificial intelligence (AI),
determining avatars or agents who do not meet exposure or
interaction requirements within the virtual universe and
excluding these AI controlled and determined avatars or agents
from receiving the capabilities of being included in the
advertising and compensation plan.
App. Br. 16. Appellants further argue that the claim elements, considered as
a combination, "recite unique, detailed features that clearly improve the
efficiency and effectiveness of detailed processes of advertising and
compensating avatars or agents who advertise in a virtual universe." Id. at
18.
We agree with the Examiner. First, we are unpersuaded by
Appellants that the "determining" and "excluding" limitations, considered
individually, amount to significantly more than the abstract idea. Although
these limitations add a degree of particularity to the claims, the particularity
is only in excluding certain data ( data pertaining to AI-controlled agents and
periods of time in which the user is not interacting with the VU) from the set
of data tracked to identify the most viewed portions and avatars in the VU,
in order to plan and pay for advertisements. Our reviewing court has
"treated collecting information, including when limited to particular content
(which does not change its character as information), as within the realm of
abstract ideas." Elec. Power Grp., 830 F.3d at 1353; see id. at 1355
("Merely requiring the selection and manipulation of information ... by
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itself does not transform the otherwise-abstract processes of information
collection and analysis."). Thus, the "determining" and "excluding"
limitations are insufficient to transform the abstract idea of planning and
paying for advertisements into patent-eligible subject matter because they
"represent insignificant 'data-gathering steps,' ... and thus add nothing of
practical significance to the underlying abstract idea." Ultramercial, 772
F.3d at 716 (citing CyberSource, 654 F.3d at 1370).
Furthermore, as the Examiner finds, there is "no indication that the
combination of elements improves the functioning of a computer or
improves any other technology." Final Act. 4--5. Although Appellants
contend that the claim elements as a combination "recite unique, detailed
features that clearly improve the efficiency and effectiveness of detailed
processes of advertising and compensating avatars or agents who advertise
in a virtual universe" (App. Br. 18), the claims do not recite any such
improvement. For example, "they do not require an arguably inventive set
of components or methods, such as measurement devices or techniques, that
would generate new data. They do not invoke any assertedly inventive
programming." Elec. Power Grp., 830 F.3d at 1355. Rather, claim 1
generically recites a "computer device" and an "analysis module" for
performing the claimed steps. The claims also recite various other
"modules" (independent claim 8), a "program product" stored on a
"computer readable medium comprising program code" for a "computer
system" (independent claim 14 ), and a "computer infrastructure"
(independent claim 21 ). According to the Specification, these elements take
the form of "any specific purpose computing article of manufacture
comprising hardware and/or computer program code for performing specific
functions, any computing article of manufacture that comprises a
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combination of specific purpose and general purpose hardware/software, or
the like." Spec. ,r 29. The Specification further indicates that "the program
code and hardware can be created using standard programming and
engineering techniques, respectively." Id. Our reviewing court has held that
such "nominal recitations of basic computer hardware .... merely graft
generic computer components onto otherwise-ineligible [] claims."
FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1096 (Fed. Cir.
2016); see also Elec. Power Grp., 830 F.3d at 1354 ("gathering and
analyzing information of a specified content, ... and not any particular
assertedly inventive technology for performing those functions" is
insufficient to transform an abstract idea into patent-eligible subject matter).
Thus, we agree with the Examiner that there are no claim elements-
considered individually or as an ordered combination-that transform the
nature of the claims into a patent-eligible application. Rather, the claimed
invention is directed to the broad concept of planning and paying for
advertisements.
Appellants contend that "[ t ]he argument that these processes are not
insignificant or routine activities is further strengthened by the fact that the
claims have overcome all rejections under 35 U.S.C. 102 and 103." App.
Br. 17. We, like the Examiner, find this unpersuasive. See Ans. 4. Our
reviewing court has disagreed that "the addition of merely novel or non-
routine components to the claimed idea necessarily turns an abstraction into
something concrete." Ultramercial, 772 F.3d at 715.
Appellants further contend that the rejection is deficient because it
"does not adequately connect the allegedly abstract idea of Appellants'
claims with an established judicial exception" (Reply Br. 4--5) and that the
Examiner "does not analyze the claims under Step 2B (e.g., the significantly
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more analysis)" (App. Br. 15). Appellants acknowledge that "the Examiner
suggests in the Final Office Action and the Examiner's Answer that the
claims are directed to a 'basic economic practice."' Reply Br. 5 ( citing
Ans. 5; Final Act. 4). Appellants also acknowledge the Examiner's
determination that the invocation of a "computer device" and a "virtual
universe" fails to add an inventive concept to the claims. Reply Br. 2 ( citing
Ans. 5). We have reviewed the record and determine that the Examiner
provides sufficient reasoning in determining that the claims are directed to
an abstract idea and that they do not contain elements sufficient to transform
the abstract idea into patent-eligible subject matter.
For the foregoing reasons, we are not persuaded the Examiner erred in
rejecting claims 1, 3-8, 10-14, and 16-21 under 35 U.S.C. § 101.
DECISION
The Examiner's rejection of claims 1, 3-8, 10-14, and 16-21 under
35 U.S.C. § 101 is affirmed.
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
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