Ex Parte Hicken et al

Patent Trial and Appeal Board

Jun 26, 2018

12965773 (P.T.A.B. Jun. 26, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/965,773 12/10/2010
22807 7590 06/28/2018
GREENSFELDER HEMKER & GALE PC
SUITE 2000
10 SOUTH BROADWAY
ST LOUIS, MO 63102
FIRST NAMED INVENTOR
Wendell Hicken
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.
055900/469202 7473
EXAMINER
RETTA, YEHDEGA
ART UNIT PAPER NUMBER
3688
NOTIFICATION DATE DELIVERY MODE
06/28/2018 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):
ipdocket@greensfelder.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte WENDELL HICKEN, and JOSHUA MELICK1
Appeal2017-001588
Application 12/965,773
Technology Center 3600
Before, JOHNNY A. KUMAR, JENNIFER S. BISK, and TERRENCE W.
McMILLIN,
KUMAR, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from the Examiner's final
rejection of claims 1-14 and 17-20. We have jurisdiction under 35 U.S.C.
§ 6(b ).
We affirm.
Exemplary Claim
1. A method, comprising:
logging, via a server system, performance data regarding user
interactions with a plurality of advertisements, each of the
plurality of advertisements relating to a respective one of a
plurality of advertisers;
1 According to Appellants, Yellow Pages.com LLC is the real party of interest
in this application. See App. Br. 2.
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Application 12/965,773
determining, by the server system, a respective performance
metric for each advertiser of the plurality of advertisers based
at least in part on the performance data for the respective
advertisements relating to the respective advertiser over a past
time period;
assigning, by the server system, a respective budget weighting
value, which corresponds to a modifier to modify one or more
weights of advertisements, to each advertiser of the plurality of
advertisers using the respective performance metric for the
respective advertiser, wherein the respective budget weight
value assigned to the respective advertiser is based at least in
part on comparing the respective performance metric
corresponding to the past time period for the respective
advertiser to a targeted performance for the respective
advertiser;
processing a call received by the server system via an
application programming interface from a server of a publisher,
the call corresponding to an advertisement request;
retrieving candidate advertisements from at least one advertisement
database of the server system to create an advertisement candidate pool,
the candidate advertisements comprising a first advertisement
corresponding to a first advertiser of the plurality of advertisers and a
second advertisement corresponding to a second advertiser of the
plurality of advertisers;
based at least in part on comparing a first performance metric for the
first advertiser to a first target performance, storing by the server system
a first budget weighting value and an association of the first budget
weighting value with the first advertiser and the first advertisement
corresponding to the first advertiser;
based at least in part on comparing a second performance metric for the
second advertiser to a second target performance, storing by the server
system a second budget weighting value and an association of the second
budget weighting value with the second advertiser and the second
advertisement corresponding to the second advertiser;
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Application 12/965,773
assigning, by the server system, respective weights to the candidate
advertisements according to one or more factors so that the candidate
advertisements are ranked to correspond to a first ranked order;
modifying, by the server system, the respective weights of at least some
of the candidate advertisements, the modifying the respective weights
compnsmg:
modifying a first weight of the first advertisement corresponding
to the first advertiser using the first budget weighting value to
result in at least a first modified weight, and modifying a second
weight of the second advertisement corresponding to the second
advertiser using the second budget weighting value to result in at
least a second modified weight;
ranking, by the server system, the candidate advertisements such that the
candidate advertisements are in a second ranked order based at least in
part on the first modified weight based on the first budget weighting
value and the second modified weight based on the second budget
weighting value, the second ranked order being different from the first
ranked order;
selecting one or more of the candidate advertisements according to the
second ranked order for presentation to a user to via a media channel;
and
transmitting the selected one or more of the candidate advertisements in
reply to the call from the server of the publisher.
Rejections
Claims 1-14 and 17-20 are rejected under 35 U.S.C. § 101 because
the claimed invention is directed to a judicial exception (i.e., a law of nature,
a natural phenomenon, or an abstract idea) without significantly more.
Final Act. 2
Claims 1-5, 11-13, 15, 17, 19, and 20 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Li et al., (US 2011/0196733 Al, pub.
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Application 12/965,773
Aug. 11, 2011) in view ofYonezaki et al., (US 2011/0125573 Al, pub. May
26, 2011) further in view of Axe et al., (US 8,370,197 B2, issued Feb. 05.
2013). Final Act. 3.
Claims 14 and 18 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Li et al., (US 2011/0196733 Al) in view ofYonezaki et
al., (US 2011/0125573 Al, pub. May 26, 2011) in view of Axe et al. (US
8,370,197 B2) and further in view of Official Notice. Final Act. 7.
Claims 6-9 are rejected under 35 U.S.C. §103(a) as being
unpatentable over Li in view of Yonezaki et al., (US 2011/0125573 Al) in
view of Axe et al. (US 8,370,197 B2) and further in view of Kidder et al.,
(US 2008/0270164 Al, pub. Oct. 30, 2008). Final Act. 8.
Claim 9 is rejected under 35 U.S.C. § 103(a)as being unpatentable
over Li et al., (US 20110196733 Al) in view ofYonezaki et al., (US
2011/0125573 Al) in view of Axe et al., (US 8,370,197 B2) further in view
of Torigoe et al., (US 2010/0250361 Al, pub. Sept. 30, 2010 ). Final Act. 9
Issues on Appeal
Did the Examiner err in rejecting claims 1-14 and 17-20 under
35 U.S.C. § 101, as being directed to patent-ineligible subject matter?
Did the Examiner err in rejecting claims 1-14 and 17-20 under pre-
AIA 35 U.S.C. § 103(a), as being obvious over the cited combinations of
references?
Grouping of Claims
Based on Appellants' arguments (App. Br. 13-27), we decide the
appeal on the basis of representative claim 1.
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Application 12/965,773
ANALYSIS
We have considered all of Appellants' arguments and any evidence
presented. We disagree with Appellants' arguments and we adopt as our
own the findings, legal conclusions, and explanations, as set forth in the
Answer (11-15) and Advisory Action (2) in response to Appellants'
arguments. (App. Br. 13-27; Reply Br. 2-15). We highlight and address
specific findings and arguments for emphasis in our analysis below.
Rejection of Claims 1-14 and 17-20 under 35 US.C. § 101
In Alice Corp. Pty. Ltd. v. CLS Bank International, 134 S. Ct. 2347
(2014 ), the Supreme Court has set forth an analytical "framework 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 (citing Mayo Collaborative Servs. v.
Prometheus Labs., Inc., 566 U.S. 66, 71-73 (2012)). In the first step of the
Alice/Mayo analysis, we determine whether the claims at issue are "directed
to" a judicial exception, such as an abstract idea. Alice, 134 S. Ct. at 2355.
If not, the inquiry ends. Thales Visionix Inc. v. US., 850 F.3d 1343, 1346
(Fed. Cir. 2017); Enfzsh, LLC v. Microsoft Corp., 822 F.3d 1327, 1339 (Fed.
Cir. 2016). If the claims are determined to be directed to an abstract idea,
then we consider under the second step of the Alice/Mayo analysis the
elements of the claims "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." Alice, 134 S. Ct. at 2355
(citing Mayo, 566 U.S. at 79, 78). In other words, the second step is to
"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
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significantly more than a patent upon the [ineligible concept] itself."' Id.
(citing Mayo, 566 U.S. at 72-73).
In rejecting claims 1-14, and 17-20 the Examiner determines (1) the
claims are directed to the abstract idea of selecting advertisement for
database( s) and sending the advertisement upon request for an
advertisement. (i.e., a fundamental economic practice) (Advisory Act. 2) and
that (2) the additional elements in the claim do not provide meaningful
limitations to transform the abstract idea into a patent eligible application of
the abstract idea such that the claims amount to significantly more than the
abstract idea itself. (Final Act. 2-3).
The Examiner further finds:
the claims only recite a server (server system) to perform the
claimed steps of logging data, determining metric, assigning
value, processing a request (call), retrieving advertisements,
modifying value, ranking and selecting advertisements, and
transmitting advertisements to publisher.
Ans. 14.
Appellants argue the Examiner has failed to establish a prima facie
case of patent-ineligibility under§ 101 because there is no evidence to
support the Examiner's findings that the claims are directed to a patent-
ineligible abstract idea. Reply Br. 3-5.
Appellants' argument is not persuasive because patent eligibility is a
question of law. Dealertrack, Inc. v. Huber, 674 F.3d 1315, 1333 (Fed. Cir.
2012). We are aware of no controlling authority that requires the Office to
provide factual evidence to support a finding that a claim is directed to an
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abstract idea. 2 The Federal Circuit has repeatedly noted that "the prima
facie case is merely a procedural device that enables an appropriate shift of
the burden of production." Hyatt v. Dudas, 492 F.3d 1365, 1369 (Fed. Cir.
2007) (citing In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992)). The
court has held that the USPTO carries its procedural burden of establishing a
prima facie case when its rejection satisfies the requirements of 35 U.S.C.
§ 132 by notifying the applicant of the reasons for rejection, "together with
such information and references as may be useful in judging of the propriety
of continuing the prosecution of [the] application." In re Jung, 637 F.3d
1356, 1362 (Fed. Cir. 2011). Thus, all that is required of the Office is that it
set forth the statutory basis of the rejection in a sufficiently articulate and
informative manner as to meet the notice requirement of§ 132. Id., see also
Chester v. Miller, 906 F.2d 1574, 1578 (Fed. Cir. 1990) (Section 132 "is
violated when [t]he rejection is so uninformative that it prevents the
applicant from recognizing and seeking to counter the grounds for
rejection.").
Appellants argue the claims do not contain an abstract idea because
the claims are not directed solely to a mathematical relationship or
mathematical formula. Reply Br. 8-9. In particular, Appellants contend the
claims are directed "to a unique approach for ranking and selecting a
particular advertisement for transmission and display" Id.
2 Berkheimer v. HP Inc., 881 F.3d, 1360 (Fed. Cir. 2018), holds that the
question of whether certain claim limitations represent well-understood,
routine, conventional activity may raise a disputed factual issue. That
question, however, is not at issue in this case. As in Berkheimer, in
determining that the claims are directed to an abstract idea, the Examiner
compared the claims to claims held to be abstract in prior judicial decisions.
Compare Final Act. 2 with Berkheimer, 881 F.3d at 1366---67.
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Appellants' argument is not persuasive. The title of Appellants'
Specification provides the invention is directed to "SELECTING AND
RANKING ADVERTISEMENTS FROM ONE OR MORE DATABASES
USING ADVERTISER BUDGET INFORMATION." The Specification
further provides embodiments for selecting one or more advertisements from
one or more databases for sending at least one advertisement to a publisher.
Spec. i-f 1. Thus, we agree with the Examiner (see Advisory Act. 2) that the
claim is directed to the abstract idea of selecting advertisements, which is a
fundamental economic practice.
Appellants contend
the claimed solution is necessarily rooted in computer
technology in order to overcome a problem specifically arising
in the realm of computer networks: digitally advertising over a
network in response to real time user interactions, because the
claimed invention is similar to the claims of DDR and "specify
how interactions with the Internet are manipulated to yield a
desired result.
Reply Br. 14--15 (citing DDR Holdings, LLC, v. Hotels.com, L.P., 773 F.3d
1245 (Fed. Cir. 2014)).
We are unpersuaded as Appellants have not demonstrated their
claimed generic "server system" is able to perform functions that are not
merely generic, as were the claims in DDR. See DDR, 773 F.3d at 1256-58
(holding the claims at issue patent eligible because "they do not broadly and
generically claim 'use of the Internet' to perform an abstract business
practice (with insignificant added activity)," and "specify how interactions
with the Internet are manipulated to yield a desired result-a result that
overrides the routine and conventional sequence of events ordinarily
triggered by the click of a hyperlink.").
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Rather, Appellants' claim 1 merely recites generic steps of logging
data, determining metric, assigning value, processing a request (call),
retrieving advertisements, modifying value, ranking and selecting
advertisements, and transmitting advertisements to publisher. Such data
manipulation steps are abstract ideas similar to data manipulation techniques
identified in Cyberfone, SmartGene, Digitech, Content Extraction, and
Electric Power Group. Final Act. 3; see SmartGene, Inc. v. Advanced
Biological Labs., SA, 852 F. Supp. 2d 42 (D.D.C. 2012), ajf'd 555 F. App'x
950 (Fed. Cir. 2014); Cyberfone, 558 F. App'x at 988, 992; Digitech,
758 F.3d at 1344, 1351 (employing mathematical algorithms to manipulate
existing information); Content Extraction & Transmission LLC v. Wells
Fargo Bank, Nat'! Ass 'n, 776 F.3d 1343, 1347--48 (Fed. Cir. 2014) (finding
that "[t]he concept of data collection, recognition, and storage is
undisputedly well-known," and "humans have always performed these
functions"); Electric Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353-
54 (Fed. Cir. 2016) (collecting information and "analyzing information by
steps people go through in their minds, or by mathematical algorithms,
without more, [are] essentially mental processes within the abstract-idea
category"); see also Intellectual Ventures I LLC v. Capital One Bank (USA),
792 F.3d 1363, 1370 (Fed. Cir. 2015) (tailoring information presented to a
user based on particular information).
Claim 1 also does not recite a specific improvement to the way
computers operate, or an improvement in the technical functioning of
computer networks. In fact, none of the steps and elements recited in
Appellants' claims provide, and nowhere in Appellants' Specification can
we find, any description or explanation as to how the claimed steps of
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logging data, determining metric, assigning value, processing a request
(call), retrieving advertisements, modifying value, ranking and selecting
advertisements, and transmitting advertisements to publisher are intended to
provide: (1) a "solution ... necessarily rooted in computer technology in
order to overcome a problem specifically arising in the realm of computer
networks," as explained by the Federal Circuit in DDR Holdings, 773 F.3d at
1257; (2) "a specific improvement to the way computers operate," as
explained in Enfish, 822 F.3d at 1336; or (3) an "unconventional
technological solution ... to a technological problem" that "improve[ s] the
performance of the system itself," as explained in Amdocs (Israel) Ltd. v.
Openet Telecom, Inc., 841F.3d1288, 1300, 1302 (Fed. Cir. 2016).
Further, with respect to Appellants' preemption argument (that the
claimed invention does not pre-empt all applications of presenting
advertisements, see App. Br. 23), we note the McRO court explicitly
"recognized that 'the absence of complete preemption does not demonstrate
patent eligibility."' See McRO, Inc. v. Bandai Namco Games America Inc.,
837 F.3d 1299, 1315 (Fed. Cir. 2016) (quoting Ariosa Diagnostics, Inc. v.
Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015)).
Accordingly, we agree with the Examiner that claims 1-14 and 17-20
are directed to an abstract idea and amount to nothing more than an attempt
to patent the abstract idea embodied in the steps of the claims. See Alice,
134 S. Ct. at 2355 (quoting Mayo, 566 U.S. at 78).
Because we agree with the Examiner's analysis and find Appellants'
arguments insufficient to show error, we sustain the rejection of claims 1-14
and 17-20 under 35 U.S.C. § 101.
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Prior Art Rejections under 35 USC§ 103(a)3
Independent claim 1 recites, 4 inter alia,
processing a call received by the server system via an
application programming interface from a server of a publisher,
the call corresponding to an advertisement request;
based at least in part on comparing a first performance metric
for the first advertiser to a first target performance, storing by
the server system a first budget weighting value and an
association of the first budget weighting value with the first
advertiser and the first advertisement corresponding to the first
advertiser [;]
based at least in part on comparing a second performance
metric for the second advertiser to a second target performance,
storing by the server system a second budget weighting value
and an association of the second budget weighting value with
the second advertiser and the second advertisement
corresponding to the second advertiser.
(Claim Appendix, pages 29 and 30, hereinafter "the disputed limitations").
The Examiner has identified the relevant portions of Li, Y onezaki,
and Axe and has provided sufficient explanation with corresponding
citations to various parts of the references for teaching the disputed
limitations. Final Act. 3---6.
In particular, the Examiner finds, and we agree:
Y onezaki teaches known advertisement allocators place
advertisements based on a performance of the advertisement ...
such known advertisement allocators do not account for a
campaign budgets ... accordingly a need exists for allocating
advertisements based on performance and the budget allotted
3 Appellants did not provide separate arguments for dependent claims 2-14
and 17-20. App. Br. 15-21.
4 Claims 19 and 20 recite similar subject matter. Claim Appendix, pages 39
and 42.
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to the campaign ... (see [0003]) ... teaches a budget module for
calculating and/or determining a budget score for an
advertisement campaign ... the budget score can be based on a
number of advertisement units in a campaign budget ... number
of impressions, number of clicks, conversion rate ... included in
the budget (for each advertiser) (see [0034]-[0037]) ... if the
budget score is greater than a threshold, there is a large number
of advertisement units remaining in the budget and/or a small
number of possible placements for the advertisements of a
campaign without much time left to spend the budget ...
advertisements are placed ... having a performance less than the
second threshold in order to spend the budget prior to the time
to spend the budget elapsing (see [0078]-[0083].
Ans. 12 (emphasis in original).
Regarding Appellants' contentions about the claimed "processing a
call" (App. Br. 19--21), the Examiner finds, and we agree that "in light of
Appellants' Specification 'processing a call received by the sever system ...
from a server of a publisher, the call corresponding to an advertisement
request' is characterized as 'processing an ad request received by the server
form a publisher'."' Ans. 13.
We agree with the Examiner's findings because "In the patentability
context, claims are to be given their broadest reasonable interpretations ...
limitations are not to be read into the claims from the specification." In re
Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993) (citations omitted). Any
special meaning assigned to a term "must be sufficiently clear in the
specification that any departure from 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
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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."). Absent an express "intent to impart a novel meaning to a
claim term[ s ], the words are presumed to take on the ordinary and customary
meanings attributed to them by those of ordinary skill in the art." Brookhill-
Wilk 1, LLC v. Intuitive Surgical, Inc., 334 F.3d 1294, 1298 (Fed. Cir. 2003)
(citation omitted).
The Examiner, giving the claim its broadest reasonable interpretation
consistent with the Specification, has properly found that the disputed
limitations reads upon the combined teachings of Li, Y onezaki, and Axe, as
explained on pages 3 through 6 of the Final Action.
We have considered Appellants' Reply Brief but we observe that the
Appellants did not rebut the Examiner's prior art findings and responses to
Appellants' arguments. Therefore, in the absence of persuasive rebuttal
evidence or argument to persuade us otherwise, we adopt the Examiner's
findings and underlying reasoning, which are incorporated herein by
reference.
It follows that Appellants have not shown error in the Examiner's
rejection of independent claims 1, 19, and 20. Thus, we sustain the rejection
of claims 1-14 and 17-20 under 35 U.S.C. § 103.
DECISION
We affirm the Examiner's rejection of claims 1-14 and 17-20 under
35 U.S.C. § 101.
We affirm the Examiner's§ 103(a) rejections of claims 1-14 and 17-
20.
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No time period for taking any subsequent action in connection with
this appeal may be extended under 3 7 C.F .R. § 1.13 6( a)( 1 )(iv). See
37 C.F.R. § 41.50(f).
AFFIRMED
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