Ex Parte Howe et al

Patent Trials and Appeals Board

Apr 30, 2019

14183279 - (D) (P.T.A.B. Apr. 30, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/183,279 02/18/2014
84649 7590 05/02/2019
Symbus Law Group, LLC
Cliff Hyra
11710 Plaza America Drive
Suite 2000
Reston, VA 20190
FIRST NAMED INVENTOR
William Howe
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.
7226-102 7409
EXAMINER
OUSSIR, EL MEHDI
ART UNIT PAPER NUMBER
3685
NOTIFICATION DATE DELIVERY MODE
05/02/2019 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):
docketing@symbus.com
chyra@symbus.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte WILLIAM HOWE and
GEORGE ARIS MICHALOPOULOS
Appeal2018-001925
Application 14/183,279 1
Technology Center 3600
Before ANTON W. PETTING, JOSEPH A. FISCHETTI, and
NINA L. MEDLOCK, Administrative Patent Judges.
FISCHETTI, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 of the Examiner's
non-final rejection of claims 1-22. We have jurisdiction under 35 U.S.C.
§ 6(b).
SUMMARY OF DECISION
We affirm.
1 Appellants identify Eunum, LLC as the real party in interest. Appeal Br. 3.
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Application 14/183,279
THE INVENTION
Appellants state that the disclosure "relates generally to systems and
methods related to advertising." Spec. ,r 1.
Claim 1, reproduced below, is representative of the subject matter on
appeal.
1. A computer-implemented method of interactive advertising,
compnsmg:
receiving advertisements at an advertising server from
advertisers via a computer network, the advertisements
including offers to be extended to consumers;
transmitting the advertisements to one or more client
devices via the computer network, the advertisements being
configured to be presented to the consumers;
receiving at the advertising server one or more votes
associated with one or more of the advertisements from the
consumers during a voting period, and storing the votes
and associated information in a memory;
triggering, via the advertising server, an end of the voting
period;
determining numbers of votes received for the
advertisements during the voting period by accessing the stored
votes and associated information;
determining a winning advertisement via the advertising
server utilizing selection criteria based on interaction between
the consumers and the advertisements via the client devices;
and
extending the offer included with the winning
advertisement to a selected subset of the consumers via the
computer network.
THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
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Foroutan
Albert et al.
(hereinafter "Albert")
Anstandig et al.
(hereinafter "Anstandig")
US 7,162,433 Bl
US 2010/0161398 Al
US 2012/0302156 Al
The following rejections are before us for review.
Jan.9,2007
June 24, 2010
Nov. 29, 2012
Claims 1-22 are rejected under 35 U.S.C. § 101 directed to non-
statutory subject matter.
Claims 1---6, 8-13, and 15-22 are rejected under 35 U.S.C. § I03(a)
over Albert, Anstandig, and F oroutan.
Claims 7 and 14 are rejected under 35 U.S.C. § I03(a) over Albert,
Anstandig, and F oroutan.
Claims 1 and 14 are rejected under 35 U.S.C. § 112(b) as being
indefinite.
FINDINGS OF FACT
We adopt the Examiner's findings as set forth on pages 2-6 of the
Examiner's Answer and on pages 2-8 of the Non-Final Action, concerning
only the 35 U.S.C. § 101 rejection.
ANALYSIS
35 U.S.C. § 112(b) REJECTION
Appellants' only argument to this rejection is that the "terms have
ordinary dictionary definitions." (Appeal Br. 8). We find this argument not
persuasive because we do not consider it to be substantive. Accordingly, we
affirm the rejection under 35 U.S.C. § 112(b ).
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35 U.S.C. § 101 REJECTION
We will affirm the rejection of claims 1-22 under 35 U.S.C. § 101.
The Appellants argue claims 1-22 as a group (Appeal Br. 6), we
select claim 1 as the representative claim for this group, and so the
remaining claims stand or fall with claim 1. See 37 C.F.R. § 4I.37(c)(l)(iv)
(2015).
An invention is patent-eligible if it claims a "new and useful process,
machine, manufacture, or composition of matter." 35 U.S.C. § 101.
However, the Supreme Court has long interpreted 35 U.S.C. § 101 to include
implicit exceptions: "[l]aws of nature, natural phenomena, and abstract
ideas" are not patentable. E.g., Alice Corp. v. CLS Bank Int 'l, 573 U.S. 208,
216 (2014).
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court's two-step framework, described in Mayo
and Alice. Id. at 217-18 ( citing Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 566 U.S. 66, 75-77 (2012)). In accordance with that framework,
we first determine what concept the claim is "directed to." See id. at 219
("On their face, the claims before us are drawn to the concept of
intermediated settlement, i.e., the use of a third party to mitigate settlement
risk."); see also Bilski v. Kappas, 561 U.S. 593, 611 (2010) ("Claims 1 and 4
in petitioners' application explain the basic concept of hedging, or protecting
against risk.").
Concepts determined to be abstract ideas, and thus patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219-20; Bilski, 561 U.S. at 611 );
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594--95 (1978)); and
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mental processes (Gottschalkv. Benson, 409 U.S. 63, 67 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as "molding rubber products" (Diamond v. Diehr, 450 U.S. 175, 191
(1981 )); "tanning, dyeing, making water-proof cloth, vulcanizing India
rubber, smelting ores" (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S.
252, 267---68 (1853))); and manufacturing flour (Benson, 409 U.S. at 69
(citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
In Diehr, the claim at issue recited a mathematical formula, but the
Supreme Court held that "[a] claim drawn to subject matter otherwise
statutory does not become nonstatutory simply because it uses a
mathematical formula." Diehr, 450 U.S. at 176; see also id. at 191 ("We
view respondents' claims as nothing more than a process for molding rubber
products and not as an attempt to patent a mathematical formula."). Having
said that, the Supreme Court also indicated that a claim "seeking patent
protection for that formula in the abstract ... is not accorded the protection
of our patent laws, ... and this principle cannot be circumvented by
attempting to limit the use of the formula to a particular technological
environment." Id. (citing Benson and Flook); see, e.g., Diehr, 450 U.S. at
187 ("It is now commonplace that an application of a law of nature or
mathematical formula to a known structure or process may well be deserving
of patent protection.").
If the claim is "directed to" an abstract idea, we tum to the second
step of the Alice and Mayo framework, where "we must examine the
elements of the claim to determine whether it contains an 'inventive
concept' sufficient to 'transform' the claimed abstract idea into a patent-
eligible application." Alice, 573 U.S. at 221 ( quotation marks omitted).
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"A claim that recites an abstract idea must include 'additional features' to
ensure 'that the [claim] is more than a drafting effort designed to
monopolize the [abstract idea]."' Id. ( quoting Mayo, 566 U.S. at 77).
"[M]erely requir[ing] generic computer implementation[] fail[ s] to transform
that abstract idea into a patent-eligible invention." Id.
The PTO recently published revised guidance on the application of
§ 101. 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed.
Reg. 50 (Jan. 7, 2019) ("Guidance"). Under the Guidance, we first look to
whether the claim recites:
(1) any judicial exceptions, including certain groupings of
abstract ideas (i.e., mathematical concepts, certain methods of
organizing human activity such as a fundamental economic
practice, or mental processes); and
(2) additional elements that integrate the judicial exception into
a practical application (see Manual of Patent Examining
Procedure ("MPEP") § 2106.05(a}-(c), (e}-(h)).
Only if a claim (1) recites a judicial exception and (2) does not integrate that
exception into a practical application, do we then look to whether the claim:
(3) adds a specific limitation beyond the judicial exception that
is not "well-understood, routine, conventional" in the field (see
MPEP § 2106.05(d)); or
(4) simply appends well-understood, routine, conventional
activities previously known to the industry, specified at a high
level of generality, to the judicial exception.
See Guidance.
The U.S. Court of Appeals for the Federal Circuit has explained that
"the 'directed to' inquiry applies a stage-one filter to claims, considered in
light of the specification, based on whether 'their character as a whole is
directed to excluded subject matter."' Enfzsh, LLC v. Microsoft Corp.,
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822 F.3d 1327, 1335 (Fed. Cir. 2016) (quoting Internet Patents Corp. v.
Active Network, Inc., 790 F.3d 1343, 1346 (Fed. Cir. 2015)). It asks whether
the focus of the claims is on a specific improvement in relevant technology
or on a process that itself qualifies as an "abstract idea" for which computers
are invoked merely as a tool. See id. at 1335-36.
In so doing, as indicated above, we apply a "directed to" two prong
test: 1) evaluate whether the claim recites a judicial exception, and 2) if the
claim recites a judicial exception, evaluate whether the claim "appl[ies],
rel[ies] on, or use[ s] the judicial exception in a manner that imposes a
meaningful limit on the judicial exception, such that the claim is more than a
drafting effort designed to monopolize the judicial exception." Guidance,
84 Fed. Reg. at 53; see also MPEP § 2106.05(a}-(c), (e}-(h).
The Specification at the Summary states, "Embodiments disclosed
herein provide systems and methods for advertising in which viewers or
consumers of advertisements (referred to hereinafter as 'consumers') vote on
advertisements in order to receive some benefit, such as an offer, discount,
prize, etc. (hereinafter referred to as an 'offer'), from the advertisers." Spec.
,r 5. The preamble of claim 1 states it is a "computer-implemented method
of interactive advertising." Understood in light of the Specification, claim 1,
recites, in pertinent part,
a) receiving advertisements ... from advertisers, ... , the
advertisements including offers to be extended to consumers;
b) transmitting the advertisements ... , the advertisements being
configured to be presented to the consumers;
c) receiving ... one or more votes associated with one or more
of the advertisements from the consumers during a voting
period, and storing the votes and associated information ... ;
d) triggering ... , an end of the voting period;
e) determining numbers of votes received for the
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advertisements during the voting period by accessing the stored
votes and associated information;
f) determining a winning advertisement . . . utilizing selection
criteria based on interaction between the consumers and the
advertisements via the client devices; and
g) extending the offer included with the winning advertisement
to a selected subset of the consumers ....
Accordingly, the Examiner found that the claims are directed to
"gathering information/votes in particular from consumers to determine a
winning advertisement and winning voter, which is determined as
organizing human activity." (Non-Final Act. 5).
We agree with the Examiner that claim 1 is at least directed to a
method of organizing human activity because gathering votes to determine a
winning advertisement is a type of managing interactions between people in
that it requires a person to declare a preference and hence effect an outcome
which affects an audience through such interaction. "Managing personal
behavior or relationships or interactions between people" is a certain method
of organizing human activity. Guidance, 84 Fed. Reg. at 52. The patent-
ineligible end of the spectrum includes methods of organizing human
activity. Alice, 573 U.S. at 220.
Turning to the second prong of the "directed to" test, claim 1 only
generically requires "an advertising server," "computer network," and
"client devices." These components are described in the Specification at a
high level of generality. See Spec. ,r,r 32--41, Figs. 1, 4. We fail to see how
the generic recitations of these most basic computer components and/or of a
system so integrates the judicial exception as to "impose[] a meaningful
limit on the judicial exception, such that the claim is more than a drafting
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effort designed to monopolize the judicial exception." Guidance,
84 Fed. Reg. at 53.
Thus, we find that the claims recite the judicial exception of a method
of organizing human activity that is not integrated into a practical
app li cation.
That the claims do not preempt all forms of the abstraction or may be
limited to determining numbers of votes received for the advertisements
during the voting period, does not make them any less abstract. See OIP
Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1362-63 (Fed. Cir. 2015)
("And that the claims do not preempt all price optimization or may be
limited to price optimization in the e-commerce setting do not make them
any less abstract.").
Turning to the second step of the Alice analysis, because we find that
the claims are directed to abstract ideas/judicial exceptions, the claims must
include an "inventive concept" in order to be patent-eligible, i.e., there must
be an element or combination of elements sufficient to ensure that the claim
in practice amounts to significantly more than the abstract idea itself. See
Alice, 573 U.S. at 217-18 (quoting Mayo, 566 U.S. at 72-73).
Concerning this step the Examiner found the following:
The additional element(s) or combination of elements in
the claim( s) other than the abstract idea( s) per se amount( s) to
no more than significantly more than the abstract idea itself.
The claim recites the additional elements of a 'server,'
'computer network,' 'memory,' 'computing device( s ), ' and
'module(s),' utilized to carry out the claimed limitations. The
additional elements 'server,' 'computer network,' 'memory,'
'computing device( s ), ' and 'module( s ), ' are only recited at a
high level of generality and only perform generic functions of
sending and receiving information and storing information to
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tie advertisements to a winning advertisement based on amount
of votes received from consumers and rewarding consumers
using generic computers or devices and communications
means. Generic computers performing generic computer
functions, without an inventive concept, do not amount to
significantly more than the abstract idea. The 'server,'
'computer network,' 'memory,' 'computing device(s ), ' and
'module(s),' are simply generic, which are recited to attempt to
limit the abstract idea to a particular technological environment.
The type of information being manipulated and obtained does
not impose meaningful limitations or render the idea less
abstract. Looking at the elements as a combination does not add
anything more than the elements analyzed individually.
Therefore, the claims do not amount to significantly more than
the abstract idea itself; thus rending the claim not patent
eligible.
(Answer 4--5). We agree with the Examiner. "[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, 573 U.S.
at 225. 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 receive, transmit, trigger, determine and apply decision criteria
to data to generate a result are some of the most basic functions of a
computer. All of these computer functions are well-understood, routine,
conventional activities previously known to the industry. See Elec. Power
Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1354 (Fed. Cir. 2016); see also In
re Katz Interactive Call Processing Patent Litig., 639 F.3d 1303, 1316 (Fed.
Cir. 2011) ("Absent a possible narrower construction of the terms
'processing,' 'receiving,' and 'storing,' ... those functions can be achieved
by any general purpose computer without special programming"). In short,
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each step does no more than require a generic computer to perform generic
computer functions.
Considered as an ordered combination, the computer components of
Appellants' claims add nothing that is not already present when the steps are
considered separately. The sequence of data reception-analysis (receiving,
transmitting, triggering, determining and applying decision criteria to data to
generate a result) and storing is equally generic and conventional or
otherwise held to be abstract. See Ultramercial, Inc. v. Hulu, LLC, 772 F.3d
709, 715 (Fed. Cir. 2014) (sequence of receiving, selecting, offering for
exchange, display, allowing access, and receiving payment recited an
abstraction), Inventor Holdings, LLC v. Bed Bath & Beyond, Inc., 876 F.3d
1372, 1378 (Fed. Cir. 2017) (holding that sequence of data retrieval,
analysis, modification, generation, display, and transmission was abstract),
Two-Way Media Ltd. v. Comcast Cable Commc 'ns, LLC, 874 F.3d 1329,
1339 (Fed. Cir. 2017) (holding sequence of processing, routing, controlling,
and monitoring was abstract). The ordering of the steps is, therefore,
ordinary and conventional.
Thus, the claims at issue amount to nothing significantly more than
instructions to apply the abstract ideas of a fundamental economic practice
and a commercial or legal interaction using some unspecified, generic
computer. Under our precedents, that is not enough to transform an abstract
idea into a patent-eligible invention. See Alice, 573 U.S. at 225-26.
We have reviewed all the arguments Appellants have submitted
concerning the patent eligibility of the claims before us that stand rejected
under 35 U.S.C. § 101. (Appeal Br. 6-7). We find that our analysis above
substantially covers the substance of all the arguments, which have been
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made. But, for purposes of completeness, we will address various
arguments in order to make individual rebuttals of same.
Appellants argue:
determining winning advertisements using various algorithms
and technical means, and distributing offers associated with the
winning advertisements to subsets of users. These are not
abstract ideas, they are various technical methods of
determining advertisements to be distributed in a network. The
claims in Ultramercial v. Hulu were directed to the idea of
using ad-viewing as currency- agreeing to view ads in exchange
for a desired product or service. The only similarity between the
two sets of claims is that both pertain in some way to
advertisements. The claims in Ultramercial were not directed to
technical methods of selecting appropriate advertisements for
distribution as in the present application.
App. Br. 6-7.
We disagree with Appellants first because, as found above, claim 1 is
directed to the abstract idea of "gathering votes to determine a winning
advertisement" based on, for example, claim limitations such as,
"determining numbers of votes received for the advertisements during the
voting period by accessing the stored votes and associated information;
determining a winning advertisement ... utilizing selection criteria based on
interaction between the consumers and the advertisements." Claim 1. As to
the recitation of the generically recited "an advertising server," "computer
network," and "client devices," we also found that these generic recitations
of the most basic computer components and/ or of a system fail to integrate
the judicial exception so as to "impose[] a meaningful limit on the judicial
exception, such that the claim is more than a drafting effort designed to
monopolize the judicial exception." Guidance, 84 Fed. Reg. at 53. These
components are described in the Specification at a high level of generality.
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See Spec. ,r,r 32--41, Figs. 1, 4. Appellants offer insufficient evidence as to
why reference to these "technical means" are meaningful beyond the face of
the language itself other than being the way that data are carried within the
network. There is no further discussion in the Specification of the particular
technology for performing this claimed step. See Affinity Labs of Texas,
LLC v. DIRECTV, LLC, 838 F.3d 1253, 1263 (Fed. Cir. 2016); see also
Enfzsh, 822 F.3d at 1336 (focusing on whether the claim is "an improvement
to computer functionality itself, not on economic or other tasks for which a
computer is used in its ordinary capacity.") In sum, the nature of the
technology recited in claim 1 is so general as to not impose a meaningful
limit on the judicial exception. See Guidance, 84 Fed. Reg. at 53.
The Ultramercial2 claims, like those before us here, were directed to
an abstraction, "a specific method of advertising and content distribution
that was previously unknown and never employed on the Internet before."
DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1258 (Fed. Cir.
2014) (quoting Ultramercial, 772 F.3d at 715-16). Those claims were
similarly 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.
For the reasons identified above, we determine there are no
deficiencies in the Examiner's prima facie case of patent ineligibility of the
rejected claims. Therefore, we will sustain the Examiner's § 101 rejection
of claims 1-22.
2 Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709 (Fed. Cir. 2014)).
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35 U.S.C. § 103(a) REJECTION
The Appellants argued claims 1---6, 8-13, and 15-22 as a group.
(Appeal Br. 8, 10), arguing claim 1 as the representative claim for this
group, and the remaining independent claims standing or falling with
claim 1. See 37 C.F.R. § 4I.37(c)(l)(iv) (2015).
Appellants argue, "Albert rewards users for viewing or viewing and
voting on an advertisement, regardless of the results of any such voting."
(Appeal Br. 9). Concerning Foroutan, Appellants further argue that it only
discloses "a web page on which users guess which content will win various
contests, and receive credit if they guess right. This credit is not 'included in
the winning advertisement' rather it is apparently completely independent of
any particular content and rather is rewarded for correctly guessing a
contest-winner." Id.
We disagree with Appellants. Albert at paragraph 63 states the
following:
if user information 302 indicates based on a history of user vote
314 that a user has ranked car advertisements higher than
motorcycle advertisements, then content delivery system 106
applying user selection criteria 216 may increase the likelihood
of a car advertisement being selected for download and display
to the particular user.
Thus, the effect of voting/ranking in Albert may "increase the likelihood of a
car advertisement." The term "likelihood" implies possibility, and thus the
reward is not absolute as Appellants argue. Moreover, Albert explicitly
discloses using votes by a user to rank advertisements presented to him/her,
stating, "[u]ser vote 314 comprises information related to a user vote and/or
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ranking of a particular advertisement viewed by the user." Albert ,r 40. To
the extent Appellants argue that the votes tallied are not taken from a pool of
users, the Examiner relies on Foroutan to meet this limitation. See
Answer 8, 9. Our review of Foroutan reveals no error with the Examiner's
finding in that fans (plural) choose: "MY PICKS page 930 where fan users
choose individual content which they believe will eventually win the
elimination contest 210." Foroutan, col. 25, 11. 64---67; see also Appeal Br. 8.
The Examiner's reasoning to combine Albert and Foroutan is based on the
"motivation of enticing consumers to vote for advertisements and providing
an efficient way of determining a winning advertisement." Answer 9.
Because the Examiner has provided some articulated reasoning with some
rational underpinning for why a person with ordinary skill in the art would
modify Albert with Foroutan's plural person voting platform, we find no
error with the Examiner findings.
Appellants argument to dependent claims 7 and 14 rests on those set
forth for claim 1 (Appeal Br. 10-11). Therefore, the rejection of these
claims is not sustained for the same reasons set forth above for the rejection
of independent claim 1.
CONCLUSIONS OF LAW
We conclude the Examiner did not err in rejecting claims 1-22 under
35 U.S.C. § 101.
We conclude the Examiner did not err in rejecting claims 1-22 under
35 U.S.C. § 103.
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DECISION
The rejections of claims 1-22 are 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). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED
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