Ex Parte Hopkins

Patent Trial and Appeal Board

Nov 6, 2017

12157598 (P.T.A.B. Nov. 6, 2017)

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.
12/157,598 06/11/2008 Samuel P. Hopkins 111051-0006U 8104
Arnold & Porter Kaye Scholer LLP
601 Massachusetts Ave., NW
Washington, DC 20001-3743
EXAMINER
OYEBISI, OJO O
ART UNIT PAPER NUMBER
3695
NOTIFICATION DATE DELIVERY MODE
11/08/2017 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):
ipdocketing @ apks.com
ipdocketing @ aporter. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SAMUEL P. HOPKINS
Appeal 2016-004811
Application 127157,59s1
Technology Center 3600
Before NINA L. MEDLOCK, PHILIP J. HOFFMANN, and
BRUCE T. WIEDER, Administrative Patent Judges.
WIEDER, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35U.S.C. § 134 from the
Examiner’s final rejection of claims 7—14 and 16—25. We have jurisdiction
under 35 U.S.C. § 6(b).
We REVERSE.
CLAIMED SUBJECT MATTER
Appellant’s claimed invention relates to a method and a system “for
advertising on a Peer-to-Peer network.” (Spec. 3,11. 16—17.)
1 According to Appellant, the real party in interest is Tiversa IP, Inc.
(Appeal Br. 2.)
Appeal 2016-004811
Application 12/157,598
Claims 11, 16, 19, 24, and 25 are the independent claims on appeal.
Claim 11 is illustrative. It recites:
11. A method for advertising on a Peer-to-Peer network,
comprising:
interposing an Advertisement System on a Peer-to-Peer
network;
monitoring the Peer-to-Peer network through the
Advertisement System for detecting search requests;
responding to a first node in the Peer-to-Peer network with
information that is used for advertising a product or service in
response to the Advertisement System detecting a search request
that matches a list of predetermined criteria; and
sending, by the first node, the information that is used for
advertising the product or service to one or more other nodes in
the Peer-to-Peer network, in response to the first node receiving
a different search request that is similar to the search request
detected by the Advertisement System that matches the list of
predetermined criteria, wherein a distance between the first node
and the Advertisement System does not exceed a distance limit
of the Peer-to-Peer network indicating a maximum distance limit
each message can travel in the Peer-to-Peer network and where
a distance between the one or more other nodes and the
Advertisement System exceeds the distance limit of the Peer-to-
Peer network.
REJECTION
Claims 7—14 and 16—25 are rejected under 35U.S.C. § 101 as directed
to non-statutory subject matter.
ANALYSIS
In 2014, the Supreme Court decided Alice Corp. Pty. Ltd. v. CLS Bank
Int’l, 134 S. Ct. 2347 (2014). Alice applies a two-part framework, earlier set
out in Mayo Collaborative Services v. Prometheus Laboratories, Inc., 566
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Application 12/157,598
U.S. 66 (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.
Under the two-part framework, it must first be determined if “the
claims at issue are directed to a patent-ineligible concept.” Id. If the claims
are determined to be directed to a patent-ineligible concept, then the second
part of the framework is applied to determine if “the elements of the
claim . . . contain[] an ‘inventive concept’ sufficient to ‘transform’ the
claimed abstract idea into a patent-eligible application.” Id. at 2357 (citing
Mayo, 566 U.S. at 72-73, 79).
With regard to step one of the Alice framework, the Examiner
determines that “the claims are directed towards the abstract idea of
advertising a product. Advertising a product is a fundamental economic
practice; and as a result, claims 7—14, 16—25 include an abstract idea.”
(Final Action 3.)
Appellant disagrees and argues that the “claims do not merely
describe the abstract idea of ‘advertising a product.’” (Appeal Br. 13.)
Rather, Appellant argues, “the claims of the current application are directed
to the manner in which an electronic message is transmitted in a Peer-to-
Peer (P2P) network so that the electronic message travels a distance that
exceeds the normal distance limit assigned to such messages in the P2P
network.” (Id.)
In this case, “the claims and their specific limitations do not readily
lend themselves to a step-one finding that they are directed to a nonabstract
idea. We therefore defer our consideration of the specific claim limitations’
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Application 12/157,598
narrowing effect for step two.” See Bascom Global Internet Servs., Inc. v.
AT&T Mobility LLC, 827 F.3d 1341, 1349 (Fed. Cir. 2016).
Step two of the Alice framework has been described “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, 134 S. Ct.
at 2355 (citing Mayo, 566 U.S. at 12—IT).
With regard to step two, the Examiner finds that “the claims do not
include limitations that are ‘significantly more’ than the abstract idea.”
(Final Action 3.) Specifically, the Examiner finds that
the Peer-to-Peer network is recited at a high level of generality
to simply perform the generic computer-network functions of
receiving, processing and transmitting information. Thus,
generic computers performing generic computer functions,
alone, do not amount to significantly more than the abstract idea.
And viewing the limitations as an ordered combination, the
invention as a whole does not amount to significantly more than
the abstract idea itself.
(Answer 4.)
Appellant disagrees and, analogizing to the claims in DDR Holdings,
argues that the claims are “rooted in overcoming a problem specific to
computer networks” and that “Applicant is addressing a specific problem
that occurs in a P2P network.” (Appeal Br. 13, citing DDR Holdings, LLC
v. Hotels.com, L.P., 773 F.3d 1245, 1257 (Fed. Cir. 2014).) In particular,
Appellant argues, “the claims of the currently [sic] application are clearly
rooted in computer technology and specifically P2P networks having
assigned distance limits.” {Id. at 14.) And, as discussed above, Appellant
further argues that “the claims ... are directed to the manner in which an
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Application 12/157,598
electronic message is transmitted in a Peer-to-Peer (P2P) network so that
the electronic message travels a distance that exceeds the normal distance
limit assigned to such messages.” {Id. at 13.)
In determining the claims in DDR Holdings to be directed to patent-
eligible subject matter, the Federal Circuit found that
the claims . . . 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. . . . When the limitations of the ’399
patent’s asserted claims are taken together as an ordered
combination, the claims recite an invention that is not merely the
routine or conventional use of the Internet.
DDR Holdings, 773 F.3d at 1258-59.
As discussed above, Appellant argues that the claimed method (i.e.,
the ordered combination of steps) provides a particular technical advantage.
The Examiner does not persuasively challenge the Appellant’s position. In
particular, the Examiner does not sufficiently establish that the ordered
combination of the recited steps is “merely the routine or conventional use
of [a P2P network]” {id. at 1259), or that the ordered combination of steps
fails to ‘“transform the nature of the claim’ into a patent-eligible
application.” See Alice, 134 S. Ct. at 2355. Therefore, we are persuaded
that the Examiner erred in rejecting claim 11 under § 101.
Independent claims 16, 19, 24, and 25 contain similar language and,
for similar reasons, we are persuaded that the Examiner erred in rejecting
claims 16, 19, 24, and 25, and dependent claims 7—10, 12—14, 17, 18,
and 20—23 under § 101.
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DECISION
The Examiner’s rejection of claims 7—14 and 16—25 under 35 U.S.C.
§101 is reversed.
REVERSED
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