Ex Parte LI et al

Patent Trials and Appeals Board

Apr 4, 2019

14146637 - (D) (P.T.A.B. Apr. 4, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO.
14/146,637
149109 7590
EGL/Excalibur
P.O. Box 10395
Chicago, IL 60610
FILING DATE FIRST NAMED INVENTOR
01/02/2014 WentongLI
04/04/2019
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.
12729-1190
(YOl 0057USOO)
9335
EXAMINER
ANDREI, RADU
ART UNIT PAPER NUMBER
3682
MAIL DATE DELIVERY MODE
04/04/2019 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte WENTONG LI, LIN MA, YI MAO, and
WEIRU ZHANG 1
Appeal2018-000077
Application 14/146,637
Technology Center 3600
Before MICHAEL J. STRAUSS, RAMA G. ELLURU, and
JAMES B. ARPIN, Administrative Patent Judges.
STRAUSS, Administrative Patent Judge.
DECISION ON APPEAL
1 According to Appellant, the real party in interest is EXCALIBUR IP, LLC.
See App. Br. 2.
Appeal2018-000077
Application 14/146,637
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from a rejection of claims
1, 4--9, 12-17, and 20. Claims 2, 3, 10, 11, 18, and 19 are canceled. We
have jurisdiction under 35 U.S.C. § 6(b ).
We affirm. 2
SUBJECT MATTER
The claims are directed to presenting an advertiser's retargeting
message to a user device that has accessed a website targeted by the
advertiser. See, e.g., claim 1. Claim 1, reproduced below, is representative
of the claimed subject matter:
1. A system comprising:
a first database configured to store advertiser bidding
information;
a second database configured to store websites statistics
generated by a search engine; and
a system computing device configured to communicate
with the first database and the second database, wherein the
system computing device is further configured to:
receive an input from an advertiser;
obtain, from the first database, a plurality of advertiser
keywords based on the input from the advertiser;
rank the plurality of advertiser keywords;
obtain, from the second database, a plurality of website
identifiers for each top ranked advertiser keywords;
rank the plurality of website identifiers based on history
statistics of the obtained website identifiers;
2 We refer to the Specification, filed January 2, 2014 ("Spec."); Final Office
Action, mailed February 21, 201 7 ("Final Act."); Appeal Brief, filed June
21, 2017 ("App. Br."); Examiner's Answer, mailed August 3, 2017 ("Ans.")
and Reply Brief, filed October 3, 2017 ("Reply Br.").
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Application 14/146,637
select the top ranked website identifiers as targeting
candidates for the advertiser, wherein the targeting candidates
include websites;
determine whether a user device accesses a website
included in the targeting candidates;
in response to determining the user device accesses the
website included in the targeting candidate, label a user
associated with the user device by controlling installation of a
user identifier on the user device; and
control presentation of a retargeting message related to the
advertiser on the user device based on user behavior information
included in the user identifier.
REFERENCES
The Examiner relies upon the following prior art in rejecting the
claims on appeal:
Colledge
Sarukkai
White
Ye
US 2005/0080775 Al
US 2006/0010105 Al
US 2014/0351248 Al
US 2016/0217142 Al
REJECTIONS
The Examiner made the following rejections:
Apr. 14, 2005
Jan. 12,2006
Nov. 27, 2014
July 28, 2016
Claims 1, 4--9, 12-17, and 203 stand rejected under 35 U.S.C. § 101 as
directed to non-statutory subject matter. Final Act. 2---6.
Claims 1, 4--7, 9, 12-15, and 17 stand rejected under 35 U.S.C.
§ I03(a) as unpatentable over Sarukkai, White, and Colledge. Final Act. 6-
10.
Claims 8, 16, and 20 stand rejected under 35 U.S.C. § I03(a) as
unpatentable over Sarukkai, White, Colledge, and Ye. Final Act. 10-11.
3 Although the Examiner lists claims 1-20 as rejected, we note claims 2, 3,
10, 11, 18, and 19 are canceled.
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ANALYSIS
§ 101
Section 101 defines patentable subject matter: "Whoever invents or
discovers any new and useful process, machine, manufacture, or
composition of matter, or any new and useful improvement thereof, may
obtain a patent therefor, subject to the conditions and requirements of this
title." 35 U.S.C. § 101. The U.S. Supreme Court, however, has "long held
that this provision contains an important implicit exception" that "[l]aws of
nature, natural phenomena, and abstract ideas are not patentable." Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 70 (2012)
(quotation omitted). "Eligibility under 35 U.S.C. § 101 is a question of law,
based on underlying facts." SAP Am., Inc. v. InvestPic, LLC, 898 F.3d 1161,
1166 (Fed. Cir. 2018).
To determine patentable subject matter, we undertake a two part test.
"First, we determine whether the claims at issue are directed to one of those
patent-ineligible concepts" of "laws of nature, natural phenomena, and
abstract ideas." Alice Corp. v. CLS Bank Int'!, 573 U.S. 208,217 (2014).
"The inquiry often is whether the claims are directed to 'a specific means or
method' for improving technology or whether they are simply directed to an
abstract end-result." RecogniCorp, LLC v. Nintendo Co., 855 F.3d 1322,
1326 (Fed. Cir. 2017). A court must be cognizant that "all inventions at
some level embody, use, reflect, rest upon, or apply laws of nature, natural
phenomena, or abstract ideas" (Mayo, 566 U.S. at 71), and "describing the
claims at ... a high level of abstraction and untethered from the language of
the claims all but ensures that the exceptions to § 101 swallow the rule."
Enfzsh, LLC v. Microsoft Corp., 822 F.3d 1327, 1337 (Fed. Cir. 2016).
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Instead, "the claims are considered in their entirety to ascertain whether their
character as a whole is directed to excluded subject matter." Internet
Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1346 (Fed. Cir. 2015).
If the claims are directed to an abstract idea or other ineligible
concept, then we continue to the second step and "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." Alice, 573 U.S. at 217 (quoting Mayo, 566 U.S.
at 79, 78). The Court describes the second step 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."' Id. ( quoting Mayo, 566
U.S. at 72-73).
The Office recently published revised guidance on the application of
§ 101. 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed.
Reg. 50 (Jan. 7, 2019) ("Guidance"). 4 Under that guidance, we look to
whether the claim recites
(1) a judicial exception, such as a law of nature or any of the
following groupings of abstract ideas:
(a) mathematical concepts, such as mathematical formulas;
(b) certain methods of organizing human activity, such as a
fundamental economic practice; or
4 This guidance supersedes previous guidance memoranda. See 2019
Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. at 51 ("All
US PTO personnel are, as a matter of internal agency management, expected
to follow the guidance.").
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( c) mental processes, such as an observation or evaluation
performed in the human mind;
(2) any additional limitations that integrate the judicial exception
into a practical application (see MPEP § 2106.05(a}-(c), (e}-(h));
and
(3) any additional limitations beyond the judicial exception that,
alone or in combination, were not "well-understood, routine,
conventional" in the field (see MPEP § 2106.05(d)).
See Guidance 52, 55, 56. Under the Guidance, if the claim does not recite a
judicial exception, then it is eligible under § 101, and no further analysis is
necessary. Id. at 54. Similarly, under the Guidance, "if the claim as a whole
integrates the recited judicial exception into a practical application of that
exception," then no further analysis is necessary. Id. at 53, 54.
Appellants contend "the pending claims recite [] a solution to the
challenge of providing an effective targeting solution for advertisers in an
online environment of networked computing devices to utilize when user
behavior data is not available." App. Br. 7. Appellants argue, rather than
simply automating a fundamental economic practice, the claims are directed
to a specific implementation of a solution to a problem in computer
capabilities. Id. According to Appellants, as such, the claims are similar to
those determined to be directed to patent-eligible subject matter in Enfish
and are not directed to an abstract idea. Id. at 5-7. Appellants further argue
"[t]he solutions recited by the pending claims are ... comparable to the
claims in DDR Holdings[ 5J. It is a problem that arises solely in an online
computing network context. And like the solution in those examples, the
5 DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014).
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present claims are directed to patent eligible subject matter." Id. at 9.
Appellants further analogize the claims to those found patent-eligible in
McR0 6 as reciting "a solution to the challenge of providing an effective
targeting solution for advertisers in an online environment of networked
computing devices to utilize when user behavior data is not available." Id. at
10. Appellants argue the claimed requirement to install a user identifier and
control presentation of a retargeting message on the user device "provides
significantly more than the abstract idea itself', likening the claims to those
found patent-eligible in BASCOM7 and Amdocs8. App. Br. 11-13.
The Examiner determines the claims are directed to the abstract idea
of targeting search results. Final Act. 2. According to the Examiner, the
claimed steps, which include "receiving and comparing new and stored
information, and using rules to identify options" are abstract ideas, favorably
comparing the claims to those in SmartGene. 9 Final Act. 3. The Examiner
also identifies the specific portions of claim 1 included in this abstract idea.
Ans. 3--4. "These claim elements are considered to be abstract ideas because
they are similar to 'collecting information, analyzing it, and displaying
certain results of the collection and analysis', which was found to be an
abstract idea by a controlling court in the Electric Power Group[lOJ
decision." Id. at 3.
6 McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299 (Fed. Cir.
2016).
7 Bascom Glob. Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341
(Fed. Cir. 2016).
8 Amdocs (Israel) Limited v. Openet Telecom, Inc., 841 F.3d 1288, 1301
(Fed. Cir. 2016).
9 SmartGene, Inc. v. Advanced Biological Laboratories, S.A., 555 Fed.
App'x 950, 954--56 (Fed. Cir. 2014).
10 Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350 (Fed. Cir. 2016)
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We agree with the Examiner for the reasons discussed below.
USPTO Step 2A, Prong 1
Claim 1 recites, in part, (A) "stor[ing] ... bidding information; (B)
"stor[ing] ... statistics"; (C) "communicat[ing]" (D) "receiv[ing] an input
from an advertiser"; (E) "obtain[ing] ... keywords ... "; (F) "rank[ing] the
... keywords"; (G) "obtain[ing] ... identifiers"; (H) "ranking the .. .
identifiers based on history statistics"; (I) select[ing] the top ranked .. .
identifiers"; (J) "label[ing] a user", (K) "determin[ing] whether ... a website
[is] included in the targeting candidates", and (L) "label[ing] a user
associated with the user device." Thus, claim 1 is directed to storing and
receiving information, monitoring for the occurrence of a condition, ranking
and selecting information, and associating the activity with a particular user.
We agree with the Examiner that at least collecting and analyzing
information are mental processes performed in the human mind, including
observation, evaluation, and applying judgment (e.g., ranking and selecting).
Consistent with case law and the Guidance, such mental processes constitute
an abstract idea. E.g., Mayo, 566 U.S. at 71 ("mental processes ... are not
patentable, as they are the basic tools of scientific and technological work")
(quotation omitted); Elec. Power Grp., 830 F.3d at 1353-54 ("we have
treated analyzing information by steps people go through in their minds, ...
without more, as essentially mental processes within the abstract-idea
category"); Guidance 52 & nn.14--15 (listing cases).
We further determine the claims are directed to advertising, marketing
or sale activities or behaviors and, therefore, are directed to fundamental
economic practices. Thus, they are directed to certain methods of organizing
human activity that are considered to be abstract ideas. Appellants'
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Specification discloses that "[ a ]dvertisers use on line advertising to increase
the brand awareness or to drive the revenue for the advertiser." Spec. ,r 1.
Appellants explain retargeting is targeted advertising that "serves online ads
to people more frequently after they have left an advertiser's website" by "by
displaying ads to the user as they [later] browse the internet." Id. at ,r,r 3, 4.
A problem identified by Appellants is that "conventional online advertising
systems fail to provide an effective targeting solution for advertisers when
there is no user behavior data." Id. at ,r 6. According to Appellants "[i]t
would be desirable to develop new systems and methods for targeting and
retargeting."
Consistent with the stated objective, the claims recite a system and
method of identifying and ranking places (e.g., websites) based on advertiser
keywords (e.g., ranking websites most relevant to products or services
offered by the advertiser), ranking and selecting the top locations (i.e.,
websites) as target candidates for a retargeting message (e.g., advertising),
identifying a user device visiting the location (i.e., accessing a target website
and labeling the user of the device), and selectively presenting a retargeting
message (e.g., advertising) to the user based on "behavior information
included in the user identifier." Thus, the claims are further directed to
advertising, marketing, or sales activities or behaviors, (i.e., fundamental
economic practices) included under the category of certain methods of
organizing human activity. See Guidance at 52. By analogy, in a physical
environment of a brick-and-mortar retail store, a salesperson for a particular
product line (e.g., cosmetics) might offer to provide a sample of the product
to a customer who had been observed to visit a sales location ( e.g. cosmetics
counter) of the corresponding or a competing product (e.g., brand of
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cosmetics). In another example, an automobile salesperson might provide
appropriate product literature to a potential customer who visited a
showroom and was observed to express interest in a certain make and model
of automobile.
Targeting customers with particular marketing materials is a
longstanding marketing and advertising practice, and is substantially similar
to economic practices that the courts have found patent-ineligible. See, e.g.,
Morsa v. Facebook, Inc., 77 F. Supp. 3d 1007, 1013 (CD. Cal. 2014), affd,
622 F. App'x 915 (Fed. Cir. 2015) (concluding that targeting advertisements
to certain consumers is no more than an abstract idea); Ultramercial, Inc. v.
Hulu, LLC, 772 F.3d 709, 713 (Fed. Cir. 2014) (offering media content in
exchange for viewing an advertisement); 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); Affinity
Labs of Texas, LLC v. Amazon.com, Inc., 838 F.3d 1266, 1271 (Fed. Cir.
2016) ( customizing a user interface to have targeted advertising based on
user information). Thus, for these additional reasons, we determine the
claims recite and are directed to an abstract idea of targeting search results,
which is a judicial exception in the form of a certain method of organizing
human activity, i.e., "fundamental economic principles or practices" and/or
"advertising, marketing or sales activities." Guidance at 52.
USPTO Step 2A, Prong 2
Appellants contend "the presently pending claims define an inventive
concept that is more than just the individual claim features themselves."
App. Br. 12. According to Appellants:
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The inventive concept of claim 1, for example, may be described
as the system computing device configured to install a user
identifier on the user device (in response to determining a user
device accesses a website included in the targeting candidate),
and control presentation of a retargeting message on a display
screen of the user device based on the user identifier installed on
the user device.
App. Br. 12. Appellants argue labeling a user by installation of a user
identifier on a user device and controlling presentation of a retargeting
message add significantly more to the claims such that "the pending claims,
taken as a whole, recite a new, nonobvious invention directed to controlling
presentation of a retargeting message, and therefore are directed to an
inventive concept." Id. Likening the claims to those determined to be
patent-eligible in BASCOM and Amdocs, Appellants assert "the pending
claims recite an inventive concept, and are therefore directed to patent-
eligible subject matter." App. Br. 12, 13, 14.
The Examiner responds, stating
[The] Examiner could not identify any claim language that
discloses how the computer capabilities (i.e. the hardware and
basic software that form the computer) are allegedly improved.
Although the specification discloses that the application provides
means to target and retarget advertisements when cookies are
disabled, it fails to disclose how this mechanism improves the
computer itself or the workings of the computer.
Ans. 3. The Examiner further addresses Appellants' argument analogizing
the claims to those determined to be patent-eligible in DDR Holdings.
Ans. 4--5. In particular, the Examiner finds, in that case, "[ t ]he Court ...
points to the technical improvement of the hyperlink, in which the hyperlink
is not used in the traditional manner of simply transferring the user to a
corresponding URL, but instead the engagement of the hyperlink triggers the
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process of dynamic webpage generation." Id. at 5. According to the
Examiner, in contrast to DDR Holdings, Appellants' claims require only
"basic computer operations, which are well-known, routine and conventional
in the field. Unlike the limitations in the DDR Holdings case, the limitations
of the instant application do not constitute 'significantly more,' for they do
not improve the technical field." Id.
Appellants' arguments are unpersuasive of Examiner error. In
addition to the abstract ideas identified above, the claims recite (A) first and
second databases storing bidding information and statistics, (B) a computing
device, (C) websites and their identifiers, (D) a user device and
(E) responding to the user device accessing an identified website by
(F) controlling installation of a user identifier on the user device, and
(G) controlling presentation of a retargeting message related to the advertiser
on the user device based on user behavior information included in the user
identifier. These additional requirements merely limit the field of use to the
virtual online environment of the Internet including websites, digital
communication, and computers.
The online environment to which the claims are directed are
analogous to the physical, brick-and-mortar business environment of the
prior art that has long-relied upon human observation, evaluation, and
judgment to target advertising, marketing or sales activities to potential
customers. In particular, the recited databases provide electronic data
storage akin to a human memory and/or the use of paper and pencil.
Similarly, the recited websites are virtual locations corresponding to
commercial establishments or locations therein. The user device provides a
user interface, so that a potential human customer can interact with the
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virtual environment. The user identifier serves to link the user of the device
to the virtual environment. Controlling presentation of the retargeting
message is, at most, insignificant extra-solution activity of displaying
advertising. MPEP 2106.05(g). Thus, the additional elements merely serve
to implement advertising and marketing activities in an online environment.
"[ A ]s we have said before, merely limiting the field of use of the
abstract idea to a particular environment does not render the claims any less
abstract." Smart Sys. Innovations, LLC v. Chicago Transit Auth., 873 F.3d
1364, 1373 (Fed. Cir. 2017) (quotation omitted); Bilski v. Kappas, 561 U.S.
593, 612 (2010) ("limiting an abstract idea to one field of use ... did not
make the concept patentable"); see also MPEP § 2106.05(h).
Furthermore, the steps of obtaining, ranking, selecting, determining,
labeling, and controlling ( claim 9) are generic computer functions that are
described at a high level without meaningful detail about their operation and,
therefore, fail to differentiate them from operations performed by standard
computers performing the recited operations. As such, we do not find these
data processing-related functional limitations are sufficient to integrate the
judicial exception into a practical application.
We are also not persuaded that the claims are patent-eligible based on
any similarity with the subject matter determined to be patent-eligible in
BASCOM and Amdocs as argued. See App. Br. 11-13.
In BASCOM, the court determined that "an inventive concept can be
found in the non-conventional and non-generic arrangement of known,
conventional pieces." BASCOM, 827 F.3d at 1350. In that case, the
installation of a filtering tool at a specific location, remote from the end
users, with customizable filtering features specific to each end user, provided
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an inventive concept in that it gave the filtering tool both the benefits of a
filter on a local computer and the benefits of a filter on the ISP server. Id.
We find no analogous achievement of a technical improvement here. None
of claimed steps have been shown to address a technological problem much
less a problem specific to a computing device or online transactions and
advertising. Accordingly, Appellants' reliance on BASCOM is inapposite
and, therefore, unpersuasive of Examiner error.
Appellants' reliance on Amdocs is also inapposite. App. Br. 13. In
particular, the Amdocs court found claim 1:
entails an unconventional technological solution ( enhancing data
in a distributed fashion) to a technological problem (massive
record flows which previously required massive databases). The
solution requires arguably generic components, including
network devices and "gatherers" which "gather" information.
However, the claim's enhancing limitation necessarily requires
that these generic components operate in an unconventional
manner to achieve an improvement in computer functionality.
Amdocs, 841 F.3d 1300--01. In contrast with Amdocs, Appellants do not
present, nor do we find, a specific technical improvement provided by the
rejected claims. Appellants' claims do not operate the recited generic
computer components in an unconventional manner to achieve an
improvement in computer functionality.
For the reasons discussed, we agree with the Examiner that the claim
elements beyond the abstract idea do not "constitute 'significantly more."'
Final Act. 4. As explained by the Examiner "[t]he [additional] claim
elements such as 'selecting the top ranked website identifiers' and 'labeling
the user with a user identifier,' ... when considered individually, only
contribute generic recitations of technical elements to the claims. It is
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readily apparent that the claim is not directed to any specific improvements
of these elements." Ans. 4. We further agree with the Examiner that, when
considered as a whole, these limitations "merely apply the abstract concept
to a technical environment in a very general sense - i.e. a generic computer
receives information from another generic computer, processes that
information and then sends a response based on processing results." Id.
Thus, in view of Appellants' Specification, and consistent with the
Examiner's determinations (Final Act. 6), we conclude that claim 1 does not
integrate the judicial exception into a practical application. We determine
claim 1 does not recite:
(i) an improvement to the functioning of a computer;
(ii) an improvement to another technology or technical field;
(iii) an application of the abstract idea with, or by use of, a
particular machine;
(iv) a transformation or reduction of a particular article to a
different state or thing; or
(v) other meaningful limitations beyond generally linking the
use of the abstract idea to a particular technological
environment.
See MPEP §§ 2106.05(a}-(c), (e}-(h). Instead, any improvement is to the
underlying abstract idea of targeting search results and targeting advertising.
Thus, claim 1 does not integrate the judicial exception into a practical
application. See Guidance 54--56; MPEP § 2106.05(a}-(c), (e}-(h).
Appellants argue "[t]he pending claims define specific combinations
for improving the technology of presenting retargeting messages that does
not preempt all means of providing similar results, and are therefore not
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directed to an abstract idea." App. Br. 9--11. For the reasons discussed
above, we disagree the claims define a combination improving the
technology of presenting retargeting messages. Furthermore, Appellants'
pre-emption argument is unpersuasive. Although preemption "'might tend
to impede innovation more than it would tend to promote it,' thereby
thwarting the primary object of the patent laws" (Alice, 573 U.S. at 216
( quoting Mayo, 566 U.S. at 71 )), "the absence of complete preemption does
not demonstrate patent eligibility" (Ariosa Diagnostics, Inc. v. Sequenom,
Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015)). See also OIP Techs., Inc. v.
Amazon.com, Inc., 788 F.3d 1359, 1362---63 (Fed. Cir. 2015) ("[T]hat 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.").
USPTO Step 2B
Finally, we agree with the Examiner that the additional limitations
"only contribute generic recitations of technical elements to the claims" and
"merely apply the abstract concept to a technical environment in a very
general sense - i.e. a generic computer receives information from another
generic computer, processes that information and then sends a response
based on processing results." Ans. 4, 6. We note, for example, the
Specification discloses
The content server 122 may be a computer, a server, or any
other computing device known in the art, or the content server
122 may be a computer program, instructions, and/or software
code stored on a computer-readable storage medium that runs on
a processor of a single server, a plurality of servers, or any other
type of computing device known in the art.
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Spec. ,r 24 ( emphasis added). Similarly, search engine 124 and
advertisement server 126 are described generally as "a computer system, one
or more servers, or any other computing device known in the art." Spec.
,r,r 25, 26. As the Federal Circuit has held, "the use of conventional
computer components, such as a database and processors, operating in a
conventional manner" "do[es] not confer patent eligibility." Intellectual
Ventures I LLC v. Capital One Bank (USA), 792 F.3d 1363, 1371 (Fed. Cir.
2015). This is because "mere automation of manual processes using generic
computers does not constitute a patentable improvement in computer
technology." Credit Acceptance Corp. v. Westlake Servs., 859 F.3d 1044,
1055 (Fed. Cir. 2017).
We, therefore, determine that the limitations of claim 1 do not add
significantly more to the patent-ineligible abstract idea.
Accordingly, we sustain the rejection of independent claim 1 under 35
U.S.C. § 101 and, for the same reasons, the rejection of independent claims
9 and 17, together with dependent claims 4--8, 12-16, and 20, which are not
argued separately with particularity.
§ 103
Appellants contend the rejection under U.S.C. § 103 is improper,
arguing the prior art fails to teach (i) first and second databases and (ii) the
limitation "in response to determining the user device accesses the website
included in the targeting candidate, label a user associated with the user
device by controlling installation of a user identifier on the user device."
App. Br. 14--16.
In connection with the requirement for first and second databases, the
Examiner responds, directing attention to paragraphs 27 and 33 of Sarukkai
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for disclosing two distinct databases. Ans. 7. The Examiner further finds "it
is routine practice in the computing arts to logically partition one physical
storage (see Sarukkai at fig2, rc32) to obtain multiple logic storages, i.e.
databases. Therefore, the storage of fig2, rc32 can house both the 'first
database' and the 'second database."' Id. Appellants reply, arguing the
Examiner's response fails address the configuration requirements of the
databases, i.e., "'a first database configured to store advertiser bidding
information' and 'a second database configured to store websites statistics
generated by a search engine,' as recited in the pending claims." Reply Br.
6.
Appellants' argument is unpersuasive. The Examiner finds, and we
agree, Sarukkai discloses a first database storing different information than
stored in a distinct second database, i.e., (i) database 38 of account
management server 22 contains advertiser account information and
(ii) search database 40 of search engine 24 comprised of search listing
records used to generate search results. Sarukkai ,r,r 27, 29, 31. The
Examiner further finds Sarukkai's search engine web server 24 generates a
search result list including relevant entries obtained from and formatted by
the results of the bidding process conducted by the account management
server 22, thereby, teaching or suggesting a database configured to store
advertiser bidding information. Final Act. 8, 10.
In contrast to the Examiner's findings, Appellants fail to explain what
structural limitations are imposed by requiring the first database to be
configured to store advertiser bidding information, particularly because
claim 1 only requires the system computing device "obtain, from the first
database, a plurality of advertiser keywords" ( emphasis added) with no
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mention of bidding information. Likewise, Appellants fail to explain what
structural limitations are imposed by requiring the second database be
configured to store website statistics, particularly because claim 1 only
requires the system computing device "obtain, from the second database, a
plurality of website identifiers" ( emphasis added) with no mention of
statistics. Thus, we also are unpersuaded by Appellants' further argument
"the cited references fail to specifically disclose 'a first database configured
to store advertiser bidding information' and 'a second database configured to
store websites statistics generated by a search engine,' as recited in the
pending claims" argued with particularity for the first time in the Reply
Brief at page 6.
In connection with the second argued limitation, the Examiner finds
Sarukkai's redirection action which accesses account identification
information before accessing an advertiser's URL and matching an account
identifier with a URL teaches or suggests determining the user accesses a
website included in a targeting candidate. Final Act 7 ( citing Sarukkai ,r 31 ).
Although the Examiner finds Sarukkai "implicitly reads on user labeling, for
without labeling the operation is not possible," Colledge's cookie also is
cited for teaching labeling a user associated with the user device by
controlling installation of a user identifier on the user device. Final Act. 9.
Appellants argue Sarukkai is deficient because it "discloses only the
conditional portion of 'in response to determining the user device accesses
the website included in the targeting candidate, ... ' without proposing what
it is Sarukkai teaches in response to determining the user device accesses the
website included in the targeting candidate." App. Br. 16. Likewise,
Appellants argue Colledge is deficient because Colledge' s cookie is not
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stored "in response to determining the user device accesses the website
included in the targeting candidate." Id.
The Examiner responds, finding "the combination Sarukkai, in view
of White, in further view of Colledge discloses the entire limitation as
recited in the claim." The Examiner additionally finds "Colledge discloses
at [0086]-[0088] that a user requests to view a webpage and that 'As part of
the response to the end-user's request, a unique identifier is assigned to the
end-user.' Therefore, Colledge also discloses the entire limitation as recited
in the claim." Ans. 8.
Appellants' arguments are unpersuasive as nonresponsive to the
Examiner's findings. In particular, the Examiner relies on Colledge for the
limitations argued to be missing from Sarukkai and vice versa. Thus,
Appellants' argument is an improper attack on the references individually
where the rejection is based on the combination of references. See In re
Keller, 642 F.2d 413,426 (CCPA 1981); In re Merck & Co., Inc., 800 F.2d
1091, 1097 (Fed. Cir. 1986). Furthermore, Appellants fail to address the
Examiner's finding that Colledge at paragraphs 86-88 discloses the entirety
of the argued limitation. See Ans. 8. We also are unpersuaded by
Appellants' belatedly presented argument that "the motivation to combine
the cited references is improper" appearing for the first time in the Reply
Brief at page 7. Absent a showing of good cause explaining why the
argument could not have been presented in the Appeal Brief, this newly
presented argument is untimely and waived. 3 7 C.F .R. § 41.41 (b )(2) (2016).
Instead, we find the Examiner has articulated reasoning with rational
underpinnings sufficient to justify the legal conclusion of obviousness. Final
Act. 9; Ans. 8.
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For the reasons discussed above, we sustain the rejection of
independent claim 1 under 35 U.S.C. § 103 and, for the same reasons, the
rejection of independent claims 9 and 17, together with dependent claims 4--
8, 12-16, and 20, which are not argued separately with particularity.
DECISION
We affirm the Examiner's decision to reject claims 1, 4--9, 12-17, and
20 under 35 U.S.C. §§ 101 and 103.
No time period for taking any subsequent action in connection with
this appeal maybe extended under 37 C.F.R. § 1.136(a)(l)(iv). See 37
C.F.R. § 41.50(±).
AFFIRMED
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