Ex Parte Karson et al

Patent Trial and Appeal Board

Feb 28, 2018

12342944 (P.T.A.B. Feb. 28, 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.
12/342,944 12/23/2008 Steven R. Karson RWF-1266-0050 3590
23117 7590 03/02/2018
NIXON & VANDERHYE, PC
901 NORTH GLEBE ROAD, 11TH FLOOR
ARLINGTON, VA 22203
EXAMINER
BROWN, ALVIN L
ART UNIT PAPER NUMBER
3682
NOTIFICATION DATE DELIVERY MODE
03/02/2018 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):
PTOMAIL@nixonvan.com
pair_nixon @ firsttofile. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte STEVEN R. KARSON,
MARK G. SMITH,
and MICHAEL J. BURGISS
Appeal 2016-003283
Application 12/342,944
Technology Center 3600
Before ANTON W. FETTING, MICHAEL W. KIM, and
KENNETH G. SCHOPFER, Administrative Patent Judges.
FETTING, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE1
Steven R. Karson, Mark G. Smith, and Michael J. Burgiss (Appellants)
seek review under 35 U.S.C. § 134 of a final rejection of claims 1-16, the
1 Our decision will make reference to the Appellants’ Appeal Brief (“App.
Br.,” filed July 29, 2015) and Reply Brief (“Reply Br.,” filed February 4,
2016), and the Examiner’s Answer (“Ans.,” mailed December 4, 2015), and
Final Action (“Final Act.,” mailed January 29, 2015).
Appeal 2016-003283
Application 12/342,944
only claims pending in the application on appeal. We have jurisdiction over
the appeal pursuant to 35 U.S.C. § 6(b).
The Appellants’ Specification discloses a way of forecasting when
advertising capacity is not within a producer’s control, or based on a
manufactured quantity. Specification para. 3.
An understanding of the purported invention can be derived from a
reading of exemplary claim 1, which is reproduced below (bracketed matter
and some paragraphing added).
1. A method of delivering digitally-encoded advertising
content over a digital network comprising:
[1] storing, in a memory device, historical advertising content
delivery data comprising
a recording of a substantial number of actual advertising
impressions delivered in response to user queries;
[2] with at least one processor coupled to the memory device
and to the network,
receiving user queries via the digital network
and
in response thereto, analyzing the stored advertising
content delivery data
to assess future capacity for delivering targeted
advertising content in response to the user queries
via the network;
[3] with the at least one processor, assessing already reserved
advertising content deliveries;
[4] with the at least one processor, forecasting availability of
future opportunities for delivering targeted advertising content
via at least one server on the network in response to said
assessed future capacity and said assessed reserved deliveries,
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including the processor taking overlap situations into
account,
wherein an overlap situation occurs if
advertising content is responsive to more
than one specific user query,
and
the at least one processor forecasts availability at least in
part by the processor automatically calculating
availability based on the number of times
advertising content has served targeted to a
specific user query
and
the number of times the matched advertising
content has served to any targeting;
[5] with the at least one processor, reserving additional
advertising content delivery
in response at least in part to said forecasted availability;
and
[6] using the at least one server on the network, delivering
digitally encoded targeted advertising content
to users over the network
based at least in part on the forecasted availability and
the reserved additional advertising content delivery.
Claims 1-16 stand rejected under 35 U.S.C. § 101 as directed to non-
statutory subject matter.
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Application 12/342,944
ISSUES
The issues of eligible subject matter turn primarily on whether the claims
recite more than abstract conceptual advice as to what a computer is to do
without any implementation details as to how to do so.
FACTS PERTINENT TO THE ISSUES
The following enumerated Findings of Fact (FF) are believed to be
supported by a preponderance of the evidence.
Facts Related to Appellants ’ Disclosure
01. In this exemplary illustrative non-limiting implementation, the
number of ads booked and reserved is calculated as being equal to
a flight target 1 710(1) +the flight target 2 710(2) +flight target n
710(n). In other words, the number of ads booked and reserved
can be determined as the total number of ads “in flight” that are
targeted based on the various combinations of queries. The
percentage of overlap 712 is calculated based on the number of
times the matched flight target has served to the query targeting in
historical database divided by the number of times the matched
flight target has served to all targeting. Such percentage of
overlap 712 calculation can be assisted by actual data logged by
the real time ad targeter 104 indicating which impressions could
have been served within the targeting rules, i.e., “runners up.”
Specification para. 66.
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ANALYSIS
Method claim 1 recites storing historical advertising content delivery
data, receiving user queries and analyzing the data, assessing content
delivery data, forecasting future opportunity availabilities, and reserving
content delivery. Thus, claim 1 recites, in summary, storing, analyzing,
receiving, forecasting and writing reservation data. None of the limitations
recite implementation details for any of these steps, but instead recite
functional results to be achieved by any and all possible means. Data
reception, analysis, modification, forecasting, and reserving are all generic,
conventional data processing operations to the point they are themselves
concepts awaiting implementation details. The sequence of data reception-
analysis-forecast-reservation is equally generic and conventional. The
ordering of the steps is, therefore, ordinary and conventional. The remaining
claims merely describe parameters used for forecasting, such as seasonality,
with no implementation details.
The Supreme Court:
set forth a framework for distinguishing patents that claim laws
of nature, natural phenomena, and abstract ideas from those that
claim patent-eligible applications of those concepts. First, [ ]
determine whether the claims at issue are directed to one of
those patent-ineligible concepts. [ ] If so, we then ask, “[w]hat
else is there in the claims before us?” [ ] To answer that
question, [ ] 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. [The Court] 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
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significantly more than a patent upon the [ineligible concept]
itself.”
Alice Corp., Pty. Ltd. v CLS Bank Inti, 134 S. Ct. 2347, 2355 (2014) (citing
Mayo Collaborative Services v. Prometheus Laboratories, Inc., 132 S. Ct.
1289 (2012)).
To perform this test, we must first determine whether the claims at issue
are directed to a patent-ineligible concept. The Examiner finds the claims
directed to forecasting availability of future opportunities for delivering
targeted advertising content. Final Act. 5.
While the Court in Alice made a direct finding as to what the claims were
directed to, we find that this case’s claims themselves and the Specification
provide enough information to inform one as to what they are directed to.
The preamble to claim 1 recites that it is a method of delivering digitally-
encoded advertising content over a digital network. The steps in claim 1
result in delivering ads. The Specification, at paragraph 3, recites that the
invention relates to forecasting when advertising capacity is not within a
producer’s control and also to inventory availability when purchases can be
satisfied by multiple combinations of differing inventory units. Thus, all this
evidence shows that claim 1 is directed to delivering ads based on forecast
and inventory, i.e., managing the delivery of advertising.
It follows from prior Supreme Court cases, and Bilski (Bilski v Kappos,
561 U.S. 593 (2010)) in particular, that the claims at issue here are directed
to an abstract idea. Like the risk hedging in Bilski, the concept of managing
the delivery of advertising is a fundamental marketing practice long
prevalent in our system of commerce. The use of managing the delivery of
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advertising is also a building block of advertising. Thus, managing the
delivery of advertising, like hedging, is an “abstract idea” beyond the scope
of §101. See Alice Corp. Pty. Ltd. at 2356.
As in Alice Corp. Pty. Ltd., we need not labor to delimit the precise
contours of the “abstract ideas” category in this case. It is enough to
recognize that there is no meaningful distinction in the level of abstraction
between the concept of risk hedging in Bilski and the concept of managing
the delivery of advertising at issue here. Both are squarely within the realm
of “abstract ideas” as the Court has used that term. See Alice Corp. Pty. Ltd.
at 2357.
Further, claims involving data collection, analysis, and display are
directed to an abstract idea. Elec. Power Grp. v. Alstom S.A., 830 F.3d 1350,
1353 (Fed. Cir. 2016) (holding that “collecting information, analyzing it, and
displaying certain results of the collection and analysis” are “a familiar class
of claims ‘directed to’ a patent ineligible concept”); see also In re TLI
Commc ’ns LLC Patent Litig., 823 F.3d 607, 611 (Fed. Cir. 2016);
FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1093-94 (Fed. Cir.
2016). Claim 1, unlike the claims found non-abstract in prior cases, uses
generic computer technology to perform data retrieval, analysis, and
transmission, and does not recite an improvement to a particular computer
technology. See, e.g., McRO, Inc. v. Bandai Namco Games Am. Inc., 837
F.3d 1299, 1314-15 (Fed. Cir. 2016) (finding claims not abstract because
they “focused on a specific asserted improvement in computer animation”).
As such, claim 1 is directed to the abstract idea of receiving, analyzing, and
transmitting data.
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The remaining claims merely describe parameters used for forecasting,
such as seasonality. We conclude that the claims at issue are directed to a
patent-ineligible concept.
The introduction of a computer into the claims does not alter the analysis
at Mayo step two:
the mere recitation of a generic computer cannot transform a
patent-ineligible abstract idea into a patent-eligible invention.
Stating an abstract idea “while adding the words ‘apply it’” is
not enough for patent eligibility. Nor is limiting the use of an
abstract idea “‘to a particular technological environment.’”
Stating an abstract idea while adding the words “apply it with a
computer” simply combines those two steps, with the same
deficient result. Thus, if a patent’s recitation of a computer
amounts to a mere instruction to “implement[t]” an abstract
idea “on ... a computer,” that addition cannot impart patent
eligibility. This conclusion accords with the preemption
concern that undergirds our §101 jurisprudence. Given the
ubiquity of computers [ ], wholly generic computer
implementation is not generally the sort of “additional
featur[e]” that provides any “practical assurance that the
process is more than a drafting effort designed to monopolize
the [abstract idea] itself.”
Alice Corp. Pty. Ltd., 134 S. Ct. at 2358 (citations omitted).
“[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 Corp. Pty. Ltd., 134 S. Ct. at 2359. 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 store, analyze, and transmit data amounts to electronic data
query and retrieval—one of the most basic functions of a computer. All of
these computer functions are well-understood, routine, conventional
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activities previously known to the industry. In short, 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’ method add nothing that is not already present when the steps
are considered separately. Viewed as a whole, Appellants’ method claims
simply recite the concept of managing the delivery of advertising as
performed by a generic computer. To be sure, the claims recite doing so by
advising one to assess advertising capacity using historical, query, and
content inventory data to in turn forecast advertising opportunities and
deliver ads. But this is no more than abstract conceptual advice on the
parameters for such managing the delivery of advertising and the generic
computer processes necessary to process those parameters, and do not recite
any particular implementation.
The method claims do not, for example, purport to improve the
functioning of the computer itself. Nor do they effect an improvement in
any other technology or technical field. The 34 pages of the Specification
spell out different generic equipment and parameters that might be applied
using this concept and the particular steps such conventional processing
would entail based on the concept of managing the delivery of advertising
under different scenarios. They do not describe any particular improvement
in the manner of computer functions. Instead, the claims at issue amount to
nothing significantly more than an instruction to apply the abstract idea of
managing the delivery of advertising using some unspecified, generic
computer. Under our precedents, that is not enough to transform an abstract
idea into a patent-eligible invention. See Alice Corp. Pty. Ltd. at 2360.
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As to the structural claims, they:
are no different from the method claims in substance. The
method claims recite the abstract idea implemented on a generic
computer; the system claims recite a handful of generic
computer components configured to implement the same idea.
This Court has long “wam[ed] ... against” interpreting § 101“in
ways that make patent eligibility ‘depend simply on the
draftsman’s art.’
Alice Corp. Pty. Ltd. 134 S. Ct. at 2360.
We adopt the Examiner’s findings and analysis from Final Action 2-7
and Answer 2-6. We now respond to the Reply Brief arguments.
We are not persuaded by Appellants’ argument that:
[the] Answer fails to analyze applicant’s actual claim language
but instead substitutes a shorthand “generic” version of features
of claim 1 which the Answer then alleges are “well-understood,
routine and conventional [computer] functions when they are
claimed in a merely generic manner . . . .” But the law requires
the PTO to look at what applicant is actually claiming.
Reply Br. 1. Appellants conflate claim recitation and analysis. The first part
of Alice requires finding what the claims are directed to, not an analysis of
each of every aspect of what they recite. The second part requires looking at
the claim to see if there is something significantly more. Both tests require
analyzing the component parts of the claim. After that, then the claim is
looked at as a whole, which the Examiner did.
We are not persuaded by Appellants’ argument that:
the computer processor is looking at information concerning
previously delivered ads to automatically assess future capacity
for delivering targeted advertising content in response to user
queries. This automatically performed step is not merely
“performing repetitive calculations” nor merely “receiving,
processing and storing data” nor merely “electronically
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scanning or extracting data from a physical document” nor
merely “electronic recordkeeping” nor merely “automating
mental tasks” nor merely “receiving or transmitting data over a
network, e,g., using the Internet to gather data.” To the
contrary, the specification describes this detailed analysis as
taking both historically served ads and user queries into
account.
Reply Br. 2. This argument contends that the particular parameters relied on
and the purpose of the analysis are sufficient to show the claims are more
than abstract conceptual advice. But all this shows is that the claims
describe analyzing data to decide what data to transmit.
This case is similar to Digitech Image Technologies, LLC v.
Electronics for Imaging, Inc., 758 F.3d 1344 (Fed. Cir. 2014).
There, the claims of the challenged patent were directed to the
abstract idea of organizing information through mathematical
correlations. We explained that the claim at issue “recites a
process of taking two data sets and combining them into a
single data set” simply by organizing existing data into a new
form. A process that started with data, added an algorithm, and
ended with a new form of data was directed to an abstract idea.
In this case, the ’303 patent claims a method whereby a user
starts with data, codes that data using “at least one
multiplication operation,” and ends with a new form of data.
We discern no material difference between the Alice step one
analysis in Digitech and the analysis here.
RecogniCorp, LLCv. Nintendo Co., Ltd., 855 F.3d 1322, 1327 (2017)
(citations omitted).
Further, the nature of the data, what it represents, is discemable only in
the human mind and undeserving of patentable weight. See In re Bernhart,
417 F.2d 1395, 1399 (CCPA 1969).
We are not persuaded by Appellants’ argument that the specification
specifically states that forecasting “can be difficult” and the PTO does not
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contend claim 1 is anticipated or obvious in view of prior art. Reply Br. 3.
The difficulty of the programming details for this functionality is immaterial,
because these details are not recited in the actual claims. “The degree of
difficulty in implementing an abstract idea in this circumstance does not
itself render an abstract idea patentable.” Apple, Inc. v. Ameranth, Inc., 842
F.3d 1229, 1242 (2016). “[A] claim for a new abstract idea is still an
abstract idea. The search for a § 101 inventive concept is thus distinct from
demonstrating § 102 novelty.” Synopsys, Inc. v. Mentor Graphics
Corporation, 839 F.3d 1138, 1151 (2016).
We are not persuaded by Appellants’ argument that:
The claim further specifies precisely how the processor
calculates to take overlap situations into account: the at least
one processor forecasts availability at least in part by the
processor automatically calculating availability based on the
number of times advertising content has served targeted to a
specific user query and the number of times the matched
advertising content has served to any targeting .... The
specification refers to this unique calculation result as
“percentage of overlap”.
Reply Br. 4. First, as to Appellants’ referral to Specification paragraph 66 as
defining “percentage of overlap,” this paragraph states that it is an
exemplary embodiment and even then only further states that in this instance
a percentage of overlap is computed in a general fashion. Thus, the
Specification does not lexicographically define “percentage of overlap.”
More to the point, forecasting availability, at least in part, and
calculating availability, based on X and Y under conditions of uncertainty, is
imprecise at best. The claim does not recite or narrow the implementation or
manner of such basis, and the result is only relied upon in some part, again
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without any recitation of implementation for the forecasting. This is an
abstraction of a mathematical algorithm, which itself would be an
abstraction, at best.
We are not persuaded by Appellants’ argument that “the claims enable
software to perform a function in digital advertising computer delivery
environment that (to the extent was even possible previously) required a
helter-skelter series of imprecise human guesswork that could not possibly
keep up with real time that is required for Internet ad delivery.” Reply Br. 5.
Relying on the intrinsic speed and organizational capacity of a general
purpose computer is not a technological improvement.
The claims here, in contrast, are not directed to an improvement
in the way computers operate, nor does FairWaming contend as
much. While the claimed system and method certainly purport
to accelerate the process of analyzing audit log data, the speed
increase comes from the capabilities of a general-purpose
computer, rather than the patented method itself.
FairWarningIP, LLC v. Iatric Systems, Inc., 839 F.3d 1089, 1095 (2016).
CONCLUSIONS OF LAW
The rejection of claims 1-16 under 35 U.S.C. § 101 as directed to non-
statutory subject matter is proper.
DECISION
The rejection of claims 1-16 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). See 37 C.F.R.
§ 1.136(a)(l)(iv) (2011).
AFFIRMED
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