Ex Parte Lee et al

Patent Trial and Appeal Board

Aug 21, 2018

11747084 (P.T.A.B. Aug. 21, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
11/747,084 05/10/2007 Hyo Lee
27189 7590 08/23/2018
PROCOPIO, CORY, HARGREAVES & SAVITCH LLP
525 B STREET
SUITE 2200
SAN DIEGO, CA 92101
UNITED ST A TES OF AMERICA
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.
116536-130UT1 3849
EXAMINER
OSMAN BILAL AHME, AF AF
ART UNIT PAPER NUMBER
3682
NOTIFICATION DATE DELIVERY MODE
08/23/2018 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):
docketing@procopio.com
PTONotifications@procopio.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HYO LEE and PETER H.I. KIM
Appeal2017---000672
Application 11/747,084
Technology Center 3600
Before ANTON W. PETTING, PHILIP J. HOFFMANN, and
MATTHEWS. MEYERS, Administrative Patent Judges.
PETTING, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE 1
Hyo Lee and Peter H.I. Kim (Appellants) seek review under
35 U.S.C. § 134 of a final rejection of claims 1-5, 8, 11-20, and 23-37, the
only claims pending in the application on appeal. We have jurisdiction over
the appeal pursuant to 35 U.S.C. § 6(b).
1 Our decision will make reference to the Appellants' Appeal Brief ("App.
Br.," filed October 22, 2015) and Reply Brief ("Reply Br.," filed October
10, 2016), and the Examiner's Answer ("Ans.," mailed August 8, 2016), and
Final Action ("Final Act.," mailed June 18, 2014).
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Application 11/747,084
The Appellants invented techniques for discerning errors on the Internet
advertising units rendered on web browsers. Specification para. 1.
An understanding of the invention can be derived from a reading of
exemplary claim 18, which is reproduced below (bracketed matter and some
paragraphing added).
18. A method for identifying errors in an advertisement unit,
compnsmg:
[ 1] rendering2 the advertisement unit on a web browser;
[2] requesting an error checking script;
[3] receiving the error checking script;
and
[ 4] executing the error checking script on the web browser,
wherein, the execution of the error checking script includes,
[5] comparing the rendered advertisement unit against
predicted rendered advertisement unit parameters
included in the error checking script,
[ 6] the predicted rendered advertisement unit parameters
comprising a set of physical parameters that the rendered
advertisement should have,
[7] the predicted rendered advertisement unit parameters
being compared to physical parameters of the rendered
advertisement
to determine whether the physical parameters of
the rendered advertisement match the predicted
rendered advertisement unit parameters of the
script,
2 Claim 18 as recited in the Claim Appendix incorrectly capitalizes the first
letter of this word. The claim as filed has this word correctly in lower case.
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[8] identifying errors in the rendered advertisement unit
based on the comparison,
and
[9] generating a summary report detailing the errors
identified.
The Examiner relies upon the following prior art:
Adler US 6,009,409
Haitsuka US 6,766,369 Bl
Perlmutter US 2005/0108095 Al
Gardner US 6,959,424 Bl
Dec. 28, 1999
July 20, 2004
May 19, 2005
Oct. 25, 2005
Claims 1-5, 8, 11-20, and 23-37 stand rejected under 35 U.S.C. § 101
as directed to non-statutory subject matter.
Claims 1, 2, 4, 5, 8, 11-20, and 23-37 stand rejected under 35 U.S.C. §
I03(a) as unpatentable over Perlmutter, Haitsuka, and Adler.
Claim 3 stands rejected under 35 U.S.C. § I03(a) as unpatentable over
Perlmutter, Haitsuka, Adler, and Gardner.
ISSUES
The issues of eligible subject matter tum primarily on whether the claims
recite more than abstract conceptual advice of what a computer is to provide
without implementation details.
The issues of obviousness tum primarily on whether the art applied
describes comparing the rendered advertisement unit against predicted
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rendered advertisement unit parameters included in the error checking script,
the predicted rendered advertisement unit parameters comprising a set of
physical parameters that the rendered advertisement should have.
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 the Prior Art
Perlmutter
01. Perlmutter is directed to playing electronic advertisements on
display devices. Perlmutter para. 14.
02. Perlmutter describes an advertisement as including computer
readable content files. The advertisement may also be associated
with execution instructions ("play script") to cause a user terminal
to display the advertisement at a predetermined time or upon the
occurrence of a predetermined play triggering event (e.g.,
completion of the downloading of advertisement content, elapse of
a period of time, user initiation of access to a different webpage or
website, detection of an error or idle condition, a combination
thereof, or the like). Similarly, the play script may cause the
advertisement to be removed from display upon the occurrence of
a predetermined removal triggering event. The play script may be
in the form of a JAVA applet, an HTML instructions or the like.
The execution instructions may also cause the advertisement to be
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removed from the display of a user terminal at a predetermined
time or upon the occurrence of a predetermined event, such as the
detection of an error in playing the advertisement. Perlmutter
para. 22.
03. Perlmutter describes a user terminal continuing play when the
advertisement is being played, until determining that a removal
triggering condition has been satisfied. Upon satisfaction of the
removal triggering condition, the user terminal may terminate play
of the advertisement, remove visual advertisement content from
the display and stop collecting play tracking information. The
removal triggering condition may be specified in the play script.
The removal triggering condition may be the passage of a
specified length of time from the advertisement play start time, the
detection of an error condition in the user terminal display
functions, or the like ( or some combination thereof). Perlmutter
para. 28.
04. Perlmutter describes an advertisement duration information
element containing information indicating the run time of the
advertisement. The information contained in the advertisement
duration element may be used to create instructions or set a
timeline in a play script or unified play script to control events
such as the displaying and removal of the visual advertisement
content. The instructions for removing the advertisement from
display may cause the advertisement to be removed from display a
specified amount of time (based on the advertisement's duration)
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after the advertisement is first displayed or playing of the
advertisement begins. The advertisement may be removed from
display automatically (i.e., without action by the user) even if an
error occurs in the middle of playing the advertisement.
Perlmutter para. 35.
05. Perlmutter describes installing a cookie on the viewer's
computer when the web browser of a viewer's computer first
accesses a website with the necessary advertisement software.
The cookie may be installed by the Advertisement Server, or it
may be installed by the Website Server which hosts the webpage.
The advertisements are stored on the advertisement server, such
that the link is to a location on the advertisement server.
Perlmutter para. 38.
Haitsuka
06. Haitsuka is directed to displaying advertisements to a user of an
online service. Haitsuka 1 :40-41.
07. Haitsuka describes a client application for enabling access to an
online service and displaying advertisements while the user has
access to the online service. Haitsuka 4:24--27.
08. Haitsuka describes a client application and/or the server
creating and storing an error record each time an error event
occurs. An error record comprises a file that memorializes the
occurrence of an event. Haitsuka 13:35--44.
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Adler
09. Adler is directed to scheduling and controlling delivery of
advertising in a communications network. Adler 1:7-10.
10. Adler describes identifying characteristics associated with a
particular advertising region (e.g., height, width, depth, shape,
format). Adler 8:26-29.
11. Adler describes finding an optimal solution to the n
dimensional problem that provides a solution to the case where the
advertisements may be specified in terms of height, width, and
either user frequency or time frequency. Adler 13: 1--4.
ANALYSIS
Claims 1-5, 8, 11-20, and 23-37 are rejected under 35 USC§ 101 as
directed to non-statutory subject matter
Method claim 18 recites rendering an advertisement, requesting,
receiving, and executing a script, the script comparing the advertisement to
parameters to identify errors and generating a report of those errors. Thus,
claim 18 recites receiving, analyzing, and displaying 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 and modification, and display are all generic,
conventional data processing operations to the point they are themselves
concepts awaiting implementation details. The sequence of data reception-
analysis-display is equally generic and conventional. The ordering of the
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steps is therefore ordinary and conventional. The remaining method claims
merely describe parameters used for such error checking, 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 significantly more than a
patent upon the [ineligible concept] itself."
Alice Corp., Pty. Ltd. v CLS Bank Intl, 134 S.Ct. 2347, 2355 (2014) (citing
Mayo Collaborative Services v. Prometheus Laboratories, Inc., 566 U.S. 66
(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 comparing the rendered advertisement unit against predicted
rendered advertisement parameters included in the error checking script.
Ans. 2.
Although the Court in Alice made a determination as to what the claims
were directed to, we find that this case's claims themselves and the
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Specification provide enough information to inform one as to what they are
directed to.
The preamble to claim 18 recites that it is a method for identifying errors
in an advertisement unit. The steps in claim 18 result in identifying and
reporting errors in an advertisement unit. The Specification at paragraph 1
recites that the invention relates to discerning errors on the Internet
advertising units rendered on web browsers. Thus, all this evidence shows
that claim 18 is directed to identifying errors in an advertisement unit, i.e.
error checking. This is consistent with the Examiner's finding.
It follows from prior Supreme Court cases, and Bilski (Bilski v Kappas,
561 U.S. 593 (2010)) in particular, that the claims at issue here are directed
to an abstract idea. The concept of error checking is a fundamental clerical
practice, long prevalent in our system of factual research and dissemination.
The use of error checking is also a building block of ingenuity in
disseminating information. Thus, error checking, 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 error
checking 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
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displaying certain results of the collection and analysis" are "a familiar class
of claims 'directed to' a patent ineligible concept"); see also In re TL!
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 18, unlike the claims found non-abstract in prior cases, uses
generic computer technology to perform data retrieval, analysis, and
reporting 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 18 is directed to the abstract idea of receiving, analyzing, and
reporting data.
The remaining method claims merely describe parameters used for such
error checking, with no implementation details. 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.
[T]he 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
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ubiquity of computers, wholly generic computer
implementation is not generally the sort of "additional
feature[ 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 retrieve and compare 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 activities
previously known to the industry. See Elec. Power Grp. v. Alstom S.A.,
supra. Also see In re Katz Interactive Call Processing Patent Litigation,
639F.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, each step does no more than require a generic
computer to perform generic computer functions. As to the data operated
upon, "even if a process of collecting and analyzing information is 'limited
to particular content' or a particular 'source,' that limitation does not make
the collection and analysis other than abstract." SAP America Inc. v.
InvestPic LLC, 890 F.3d 1016, 1022 (Fed. Cir. 2018).
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Considered as an ordered combination, the computer components of
Appellants' method add nothing that is not already present when the steps
are considered separately. The sequence of data reception-analysis-display
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)
( sequence of data retrieval, analysis, modification, generation, display, and
transmission), Two-Way Media Ltd. v. Comcast Cable Communications,
LLC, 874 F.3d 1329, 1339 (Fed. Cir. 2017) (sequence of processing, routing,
controlling, and monitoring). The ordering of the steps is therefore ordinary
and conventional.
Viewed as a whole, Appellants' method claims simply recite the concept
of error checking as performed by a generic computer. To be sure, the
claims recite doing so by advising one to do so in a web advertising context
using ubiquitous web page scripts. But this is no more than abstract
conceptual advice on the parameters for such error checking 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 15 pages of specification do not
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bulge with disclosure, but only spell out different generic equipment3 and
parameters that might be applied using this concept and the particular steps
such conventional processing would entail based on the concept of error
checking under different scenarios. They do not describe any particular
improvement in the manner a computer functions. Instead, the claims at
issue amount to nothing significantly more than an instruction to apply the
abstract idea of error checking 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.
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 "warn[ ed] ... against" interpreting § 101 "in
ways that make patent eligibility 'depend simply on the
draftsman's art."'
Alice Corp. Pty. Ltd. at 2360.
System claim 1 recites a web browser, web server, and advertisement
server, and a script for the browser to generate a server request that
cooperate to perform the process recited in claim 18. This is a purely
conventional arrangement and the Specification does not suggest Appellants
invented this arrangement.
3 "Various general purpose machines may be used with computer programs
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We are not persuaded by Appellants' argument that "it is worth noting
that the Action does not really explain why identifying errors in an
advertisement unit is abstract, even though it does not appear to be on its
face, i.e., there is nothing abstract about identifying errors in an
advertisement unit." Reply Br. 3--4. This is a conclusory argument. The
idea of identifying errors is such an old concept that it was part of the plot in
Melville's 1853 "Bartleby the Scrivener." Merely doing so in a particular
context, no matter how new, does not move the abstract concept out of the
arena of abstraction.
To be sure, the '379 patent claims the wireless delivery of
regional broadcast content only to cellphones. In that sense, the
claims are not as broad as the abstract idea underlying them,
which could apply to the delivery of out-of-region content to
any electronic device. That restriction, however, does not alter
the result. All that limitation does is to confine the abstract idea
to a particular technological environment-in this case, cellular
telephones. The Supreme Court and this court have repeatedly
made clear that merely limiting the field of use of the abstract
idea to a particular existing technological environment does not
render the claims any less abstract.
Affinity Labs of Texas, LLC v. DIRECTV, LLC, 838 F.3d 1253, 1258-59
(Fed. Cir. 2016).
We are not persuaded by Appellants' argument that the claims are
analogous to those in Enfzsh, 822 F.3d 1327 (Fed. Cir. 2016). Reply Br. 4--
5. The claims differ from those found patent eligible in Enfzsh, where the
claims were "specifically directed to a self-referential table for a computer
written in accordance with the teachings herein." Spec. para. 45.
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database." J d. at 13 3 7. The claims thus were "directed to a specific
improvement to the way computers operate" rather than an abstract idea
implemented on a computer. Id. at 1336. Here, by contrast, the claims
are not directed to an improvement in the way computers operate.
Though the claims purport to accelerate the process of error checking and
make it more accurate, our reviewing court has held that speed and
accuracy increases stemming from the ordinary capabilities of a general
purpose computer "do[] not materially alter the patent eligibility of the
claimed subject matter." Bancorp Servs., L.L.C. v. Sun Life Assurance Co.
of Can. (US.), 687 F.3d 1266, 1278 (Fed. Cir. 2012). Instead, the claims
are more analogous to those in FairWarning, 839 F.3d 1089 (Fed. Cir.
2016), wherein claims reciting "a few possible rules to analyze audit log
data" were f o u n d directed to an abstract idea because they asked
"the same questions ( though perhaps phrased with different words) that
humans in analogous situations detecting fraud have asked for decades."
839 F.3d at 1094, 1095.
The claims are not "necessarily rooted in the associated technological
environment" as Appellants contend. Reply Br. 5. The claims merely
practice an age old concept in the context of relatively new web pages. The
only limitation that comes even close to being a technological improvement
is the use of a script in the advertisement to execute the error checking. But
this is the technological equivalent of a post-it note on an ad reminding one
to check for errors. The use of web page scripts for automating otherwise
manual steps substantially predates the filing of this application and the
claims recite no particular technological implementation for how scripts are
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executed. Thus, reciting the use of such scripts is no more than reciting the
well known concept of such use.
Claims 1, 2, 4, 5, 8, 11-20, and 23-37 rejected under 35 USC§ 103(a) as
unpatentable over Perlmutter, Haitsuka, and Adler
We are persuaded by Appellants' argument that the references fail to
describe "comparing the rendered advertisement unit against predicted
rendered advertisement unit parameters included in the error checking script,
the predicted rendered advertisement unit parameters comprising a set of
physical parameters that the rendered advertisement should have." Reply
Br. 4--7. As Appellants contend, the Examiner initially cites portions of
Adler that compute what the proper parameters are. Final Act. 6. Then, in
response to the Appeal Brief, the Examiner does not respond to this
argument. The closest we find is Perlmutter using a script to look for certain
physical parameters such as the playing of an ad stopping. But Perlmutter
does not describe comparing the rendered advertisement unit against
predicted rendered advertisement unit parameters included in the error
checking script. It may be that premature stopping is considered an error.
But absent at least some basic engineering procedural description of
comparing expected results to actual results and some suggestion to list
something like Perlmutter's premature stopping or deviations from Adler's
physical ad dimensions as an error condition parameter, Perlmutter is too
distant from the claim limitations to say the gap is predictable.
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Claim 3 rejected under 35 USC§ 103(a) as unpatentable over Perlmutter,
Haitsuka, Adler, and Gardner
This claim depends from independent claim 1.
CONCLUSIONS OF LAW
The rejection of claims 1-5, 8, 11-20, and 23-37 under 35 U.S.C. § 101
as directed to non-statutory subject matter is proper.
The rejection of claims 1, 2, 4, 5, 8, 11-20, and 23-37 under 35 U.S.C. §
103 (a) as unpatentable over Perlmutter, Haitsuka, and Adler is improper.
The rejection of claim 3 under 35 U.S.C. § 103(a) as unpatentable over
Perlmutter, Haitsuka, Adler, and Gardner is improper.
DECISION
The rejection of claims 1-5, 8, 11-20, and 23-37 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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