Ex Parte Mak

Patent Trial and Appeal Board

Mar 30, 2018

12787679 (P.T.A.B. Mar. 30, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
121787,679 05/26/2010
68155 7590 04/03/2018
FOUNTAINHEAD LAW GROUP, PC
Chad R. Walsh
900 LAFAYETTE STREET
SUITE 301
SANTA CLARA, CA 95050
FIRST NAMED INVENTOR
Wing Chit Mak
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.
000 l l 8-004800US 5096
EXAMINER
DAGNEW, SABA
ART UNIT PAPER NUMBER
3682
NOTIFICATION DATE DELIVERY MODE
04/03/2018 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@fountainheadlaw.com
rbaumann@fountainheadlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte WING CHIT MAK
Appeal 2016-004456 1
Application 12/787 ,6792
Technology Center 3600
Before ANTON W. PETTING, MICHAEL C. ASTORINO, and
ALYSSA A. FINAMORE, Administrative Patent Judges.
FINAMORE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant appeals from the
Examiner's decision to reject claims 1-19. We have jurisdiction under
§ 6(b).
We AFFIRM.
1 Our Decision references Appellant's Specification ("Spec.," filed May 26,
2010), Appeal Brief ("Appeal Br.," filed Aug. 20, 2015), and Reply Brief
("Reply Br.," filed Mar. 16, 2016), as well as the Examiner's Final Office
Action ("Final Act.," mailed Jan. 22, 2015) and Answer ("Ans.," mailed
Jan. 22, 2016).
2 Appellant identifies Hulu, LLC as the real party in interest. Appeal Br. 2.
Appeal2016-004456
Application 12/787,679
SUBJECT MATTER ON APPEAL
The invention "relates to systems and methods for presenting media
programs, and in particular to a system and method and apparatus for rapidly
selecting advertisements to be presented in conjunction with such media
programs." Spec. 1:6-8. Claims 1, 7, and 14 are the independent claims on
appeal. Independent claim 1, reproduced below, is illustrative of the
claimed subject matter:
1. A method comprising:
accepting, by a computer server, an advertisement rule for
each advertisement of a set of advertisements, each
advertisement rule describing circumstances in which the
associated advertisement belongs to a subset of advertisements
complying with an advertisement request, each advertisement
rule comprising: one or more advertisement rule primitives, each
advertisement rule primitive comprising an advertisement rule
key and an advertisement rule value associated with the
advertisement rule key;
precomputing a first map relating each advertisement of
the set of advertisements to its advertisement rule values in a bit
array stored in a memory of the computer server, wherein each
bit of the bit array signifies whether a corresponding one of the
set of advertisements satisfies a corresponding one of the
advertisement rule primitives;
accepting, by the computer server, an advertisement
request having one or more advertisement request keys for a
media program, each of the advertisement request keys having
one or more advertisement request values;
retrieving, in response to the advertisement request, at
least a portion of the precomputed map from the memory, the at
least a portion describing the advertisement rules for which
advertisement rule values match the advertisement request
values;
computing, by the computer server, a second map from the
portion of the precomputed first map using bits of the bit array
associated with the portion of the precomputed first map; and
2
Appeal2016-004456
Application 12/787,679
and
selecting, by the computer server, the subset of
advertisements using the second map as only those
advertisements having advertisement rules satisfied by all of the
advertisement request values; and
providing information for the subset of advertisements for
sending to a media player, the subset of advertisements eligible
for playing in advertisement opportunities associated with the
media program for playing on the media player.
REJECTIONS
The Examiner rejects the claims on appeal as follows:
claims 1-19 under 35 U.S.C. § 101 as non-statutory subject matter;
claims 1-19 under 35 U.S.C. § 103(a) as unpatentable over
Rosenblum et al. ("Rosenblum," US 7,627,603 B2, iss. Dec. 1, 2009).
ANALYSIS
Non-Statutory Subject Matter
Appellant argues claims 1-----19 as a group. Appeal Br. 9----15;
Reply Br. 1----4. We select independent claim 1 as representative. The
remaining claims of the group stand or fall with independent claim 1.
37 C.F.R. § 41.37(c)(l)(iv).
An invention is patent-eligible if it claims a "new and useful process,
machine, manufacture, or composition of matter." 35 U.S.C. § 101. The
Supreme Court, however, has long interpreted § 101 to include implicit
exceptions: "[l]aws of nature, natural phenomena, and abstract ideas" are not
patentable. See, e.g., Alice Corp. Pty. Ltd. v. CLS Banklnt'l, 134 S. Ct.
2347, 2354 (2014) (quoting Ass 'nfor Molecular Pathology v. Myriad
Genetics, Inc., 133 S. Ct. 2107, 2116 (2013)). To "distinguish[] patents that
3
Appeal2016-004456
Application 12/787,679
claim laws of nature, natural phenomena, and abstract ideas from those that
claim patent-eligible applications of those concepts," the Supreme Court, in
Alice, reiterated the two-step framework previously set forth in Mayo
Collaborative Services v. Prometheus Laboratories, Inc., 132 S. Ct. 1289
(2012), which, in the first step, considers whether a claim is directed to a
patent-ineligible concept, e.g., an abstract idea, and, if so, considers, in the
second step, whether the claim recites an inventive concept-an element or
combination of elements sufficient to ensure the claim amounts to
significantly more than the abstract idea and transform the nature of the
claim into a patent-eligible application. Alice, 134 S. Ct. at 2355 (citing
Mayo, 132 S. Ct. at 1294, 1296-98).
In rejecting independent claim 1under35 U.S.C. § 101 as
non-statutory subject matter, i.e., subject matter judicially excepted from
statutory subject matter, the Examiner analyzes the claim using this two-step
framework. Final Act. 2-3. More specifically, pursuant to the first step, the
Examiner determines that the claim is directed to the abstract idea of
selecting advertisements that satisfy advertisement rules, 3 which is a
fundamental economic practice and a method of organizing human
activities, and, therefore, an abstract idea. Id. Under the second step, the
Examiner determines that the elements of the claim do not amount to
significantly more than the abstract idea because they amount to no more
3 We understand the abstract idea identified by the Examiner is selecting
advertisements that satisfy advertisement rules, which is consistent with
Appellant's understanding of the abstract idea. See, e.g., Appeal Br. 11
("For example, the Examiner has stated that the claimed invention is
directed to an abstract idea of selecting advertisements that satisfy
advertisement rules.").
4
Appeal2016-004456
Application 12/787,679
than: (i) mere instruction to implement the idea on a computer; and/or (ii)
recitation of generic computer structure that serves to perform generic
computer functions that are well-understood, routine, and conventional
activities previously known in the industry. Id.
As an initial matter, we are not persuaded of error by Appellant's
argument that independent claim 1 does not wholly preempt the field of
selecting advertisements. Appeal Br. 14--15. Although preemption may be
the concern behind the judicial exceptions to statutory subject matter,
preemption is not the test for eligibility. "The Supreme Court has made
clear that the principle of preemption is the basis for the judicial exceptions
to patentability. For this reason, questions on preemption are inherent in and
resolved by the§ 101 analysis." Ariosa Diagnostics, Inc. v. Sequenom, Inc.,
788 F.3d 1371, 1379 (Fed. Cir. 2015) (citation omitted).
Appellant also argues that the Examiner has failed to set forth a prima
facie case of patent-ineligible subject matter because the Examiner has not
performed a detailed analysis of the claim language. Appeal Br. 11-12;
Reply Br. 2-3. Appellant's argument does not apprise us of error.
With respect to the requirement to make a prima facie case, the
Federal Circuit has held that
the PTO carries its procedural burden of establishing a prima
facie case when its rejection satisfies 35 U.S.C. § 132, in
"notify[ing] the applicant ... [by] stating the reasons for [its]
rejection, or objection or requirement, together with such
information and references as may be useful in judging of the
propriety of continuing the prosecution of [the] application."
In re Jung, 637 F.3d 1356, 1362 (Fed. Cir. 2011) (alterations in original)
(quoting § 132). All that is required of the Office is to set forth the statutory
basis of the rejection in a sufficiently articulate and informative manner. Id.
5
Appeal2016-004456
Application 12/787,679
at 1363; see also Chester v. Miller, 906 F.2d 1574, 1578 (Fed. Cir. 1990)
("Section 132 is violated when a rejection is so uninformative that it
prevents the applicant from recognizing and seeking to counter the grounds
for rejection.").
As set forth above, in rejecting independent claim 1 under 35 U.S.C.
§ 101, the Examiner analyzes the claim using the two-step patent-eligibility
analysis. Final Act. 2-3. In determining that the claim is directed to an
abstract idea under the first step, the Examiner expressly considers each
limitation of the claim. Ans. 3--4. Pursuant to the second step, the Examiner
considers the claim limitations, both individually and as an ordered
combination, to determine that the claim does not recite significantly more
than the abstract idea. Id. at 4. As such, the Examiner sufficiently informs
Appellant that independent claim 1 is patent ineligible. Furthermore, there is
no indication that Appellant does not recognize or understand the
Examiner's rejection, as Appellant's understanding is manifested in the
arguments traversing it. Accordingly, the Examiner's rejection satisfies the
notice requirement of§ 132 and sets forth a prima facie case of
patent-ineligible subject matter. We, therefore, consider Appellant's
remaining arguments to determine whether the Examiner erred in
determining that independent claim 1 is patent ineligible.
Pursuant to the first step of the patent-eligibility analysis, Appellant
argues the Examiner erred in determining that independent claim 1 is
directed to an abstract idea. Appeal Br. 9-11; Reply Br. 1-2. More
specifically, Appellant contends that the claim is directed to a technical way
of selecting ads, not to a fundamental economic practice or some other type
6
Appeal2016-004456
Application 12/787,679
of abstract idea. Appeal Br. 9--11; Reply Br. 2. Appellant's argument is not
convmcmg.
Our reviewing court has instructed that "[ u ]nder step one of
Mayo/Alice, 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)
(emphasis added). For computer-implemented inventions in particular, "the
first step in the Alice inquiry ... asks whether the focus of the claims is on
the specific asserted improvement in computer capabilities ... or, instead,
on a process that qualifies as an 'abstract idea' for which computers are
invoked merely as a tool.'' Enfzsh, LLC v. Microsoft Corp., 822 F.3d 1327,
1335-36 (Fed. Cir. 2016).
Here, independent claim 1 recites the steps of: accepting an
advertisement rule for each advertisement, the advertisement rule
comprising one or more advertisement rule primitives including an
advertisement rule key and an advertisement rule value associated with the
advertisement rule key; precomputing a first map relating each
advertisement to its advertisement rule values in a bit array stored in a
memory of the computer server, wherein each bit of the bit array signifies
whether a corresponding advertisement satisfies a corresponding
advertisement rule primitive; accepting an advertisement request including
one or more advertisement request keys for a media program, each
advertisement request key having one or more advertisement request values;
retrieving, in response to the advertisement request, a portion of the
precomputed map that describes advertisement rule values matching the
advertisement request values; computing a second map from the portion of
7
Appeal2016-004456
Application 12/787,679
the precomputed first map using bits of the bit array associated with the
portion of the precomputed first map; selecting the subset of advertisements
using the second map as only those advertisements having advertisement
rules satisfied by all of the advertisement request values; and providing
information for the subset of advertisements for sending to a media player,
the subset of advertisements eligible for playing in advertisement
opportunities associated with the media program for playing on the media
player. Appeal Br., Claims App. Thus, according to independent claim 1,
the steps of "accepting ... an advertisement rule," "precomputing a first
map," "accepting ... an advertisement request," "retrieving ... a portion of
the precomputed map," "computing ... a second map," "selecting ... the
subset of advertisements," and "providing information for the subset of
advertisements" enable selected advertisements to be played in a media
program on the media player. Id.
Similarly, the Specification explains that
providing directed advertisements in streaming media context is
a challenging proposition, because it involves finding an optimal
(or at least near optimal) match between a large and rapidly
varying number of users with a large and rapidly varying number
of advertisements, based upon a large number of rules, and doing
so in a potentially very short period of time.
Spec. 5:5-9. The Specification further explains that the invention addresses
the need for "rapidly selecting an appropriate advertisement to display to a
user based on a match between user information and targeting rules that
define which advertisements should be shown to which users." Id. at 5: 10-
12.
As Appellant points out, independent claim 1 recites a technical way
of selecting advertisements. Appeal Br. 9. Indeed, independent claim 1
8
Appeal2016-004456
Application 12/787,679
recites a computer server and technical details as to how eligible
advertisements are selected, e.g., precomputing a first map utilizing a bit
array to relate each advertisement to its advertisement rule values, and
computing a second map from the portion of the first map using bits of the
bit array associated with the portion of the first map. These technical details,
however, explain how the computer server selects advertisements to be
played in program. Although the claim specifically recites how the server
selects advertisements, the server is nonetheless used as a tool to select
advertisements. As such, the focus of the claim is not on a specific
improvement in computer capabilities, but rather, as the Examiner
determines, the character of the claim as a whole is directed to selecting
advertisements.
Turning to whether selecting advertisements that satisfy advertisement
rules is an abstract idea, the Federal Circuit has explained that ''the
decisional mechanism courts now apply is to examine earlier cases in which
a similar or parallel descriptive nature can be seen-what prior cases were
about, and which way they were decided." Amdocs (Isr.) Ltd. v. Openet
Telecom, Inc., 841F.3d1288, 1294 (Fed. Cir. 2016). The Federal Circuit
has determined that concepts similar to selecting advertisements that satisfy
advertisement rules are abstract ideas. For example, in Electric Power
Group, LLC v. Alstom S.A., 830 F.3d 1350, 1353-54 (Fed. Cir. 2016), the
court determined that claims directed to collecting information, analyzing it,
and displaying certain results are directed to an abstract idea. Likewise, the
court has held the concept of comparing new and stored information and
using rules to identify options, as well as the concept of organizing
information through mathematical correlations, to be abstract ideas in
9
Appeal2016-004456
Application 12/787,679
SmartGene v. Advanced Biological Laboratories, S.A., 555 F. App 'x 950,
955 (Fed. Cir. 2014) and Digitech Image Technologies, LLC v. Electronics
for Imaging, Inc., 758 F.3d 1344, 1350 (Fed. Cir. 2014), respectively.
Ans. 3--4.
Even if none of the claims in Electric Power, SmartGene, and
Digitech recites bit arrays or using maps to select an advertisement
(Reply Br. 2), these limitations do not separate the claimed invention from
the concept of selecting advertisements that satisfy advertisement rules, as
we discuss supra. Appellant does not assert, and we fail to see, any
meaningful distinction between this concept and the abstract ideas in these
prior cases. Accordingly, we see no error in the Examiner's determination
that independent claim 1 is directed to the abstract idea of selecting
advertisements that satisfy advertisement rules.
Seeing no error in the Examiner's determination that independent
claim 1 is directed to an abstract idea pursuant to the first step of the
patent-eligibility analysis, we tum to Appellant's arguments under the
second step. Appellant alleges that independent claim 1 recites significantly
more than the abstract idea because the claimed invention selects
advertisements in near-real time by precomputing a first map and then
computing a second map that includes a subset of the first map.
Appeal Br. 12. Appellant further contends that the ability to select
advertisements in near-real time is a solution to a problem specifically
arising in the realm of computer networks, similar to the patent-eligible
claims in DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1257
(Fed. Cir. 2014). Id. at 13; Reply Br. 3--4. Appellant's arguments do not
apprise us of error.
10
Appeal2016-004456
Application 12/787,679
At the outset, we note the Federal Circuit has routinely held that using
a computer to perform tasks more quickly or more accurately is not
sufficient to render a claim eligible. See OIP Techs., Inc. v. Amazon.com,
Inc., 788 F.3d 1359, 1363 (Fed. Cir. 2015) ("[R]elying on a computer to
perform routine tasks more quickly or more accurately is insufficient to
render a claim patent eligible."); Intellectual Ventures I LLC v. Capital One
Bank (USA), 792 F.3d 1363, 1367 (Fed. Cir. 2015) ("[C]laiming the
improved speed or efficiency inherent with applying the abstract idea on a
computer [does not] provide a sufficient inventive concept."); Bancorp
Servs., L.L.C. v. Sun Life Assur. Co. of Can. (US.), 687 F.3d 1266, 1278
(Fed. Cir. 2012) ("[T]he fact that the required calculations could be
performed more efficiently via a computer does not materially alter the
patent eligibility of the claimed subject matter.").
Furthermore, we disagree with Appellant that the need for near-real
time selection of advertisements is a problem specifically arising in the
realm of computer networks. Although the need for near-real time selection
of advertisements may be exacerbated for streaming media, selecting
advertisements more quickly would improve advertising in any medium.
Accordingly, even if the claimed invention provides near-real time selection
of advertisements by computing a first map and then a second map including
a subset of the first map, we fail to see how these elements amount to
significantly more than the abstract idea.
Appellant also argues that independent claim 1 recites significantly
more than the abstract idea because the claimed invention improves the
functioning of the computer itself. Appeal Br. 14; Reply Br. 3. In
particular, Appellant contends that the use of bit arrays provides certain
11
Appeal2016-004456
Application 12/787,679
advantages over a targeting rule evaluation process. Reply Br. 3 (citing
Spec. 43:4--18). 4 Appellant's argument is not convincing.
According to Appellant's Specification:
The targeting rule evaluation process used in the previous
examples is rather inefficient. Evaluation of each advertising rule
primitive within an advertising rule involves a search for the
corresponding key-value pair in the advertisement request, and
the entire evaluation process has to be repeated for each live
advertisement in the system in order to find the subset of
advertisements that qualifies for a given advertisement request.
Even opportunities for short-circuiting the evaluation process are
taken advantage of, scaling a system to handle thousands of live
advertisements and hundreds of advertisement selection requests
per second is a significant challenge with the given targeting rule
evaluation algorithm.
However, by exploiting the limitations we have imposed
on the advertisement rule specification semantics, the following
scheme can be used by the advertisement server 322 to evaluate
the advertising rules of all advertisements quickly to determine
if they qualify for an advertising request. Further, the [sic] since
set operations (union and intersection) can be performed very
quickly with simple AND and OR operations if sets are
represented by bit-arrays, the scheme can be efficiently
implemented.
Spec. 25:9--23. As such, the bit-arrays are used to implement an improved
scheme that is more efficient than the targeting rule evaluation process. In
other words, the improvement is to the rule evaluation process, which is
implemented via the use of bit arrays, not to the functioning of the computer
itself.
Appellant further asserts that independent claim 1 recites significantly
more than the abstract idea because the claimed invention effects a
4 Appellant refers to page 42 of the Specification, but the quoted portion of
the Specification appears on page 43.
12
Appeal2016-004456
Application 12/787,679
transformation. Appeal Br. 15. According to Appellant, computing the
second map transforms the first map into a different use. Id. Appellant's
argument is not persuasive of error.
Initially, we note that the machine-or-transformation is not the
standard for determining whether a claim recites significantly more than the
abstract idea. DDR Holdings, 773 F.3d at 1256 ("[S]atisfying the machine-
or-transfonnation test, by itself, is not sufficient to render a claim patent-
eligible, as not all transforrnations or machine implementations infuse an
otherwise ineligible claim with an 'inventive concept.'"). rvioreover, the
alleged "transformation" is a manipulation of data, which is not sufficient to
meet the transformation prong of the test. See Gottschalk v. Benson, 93
S. Ct. 253, 257 (1972) (holding that a computer-based algorithm that merely
transforms data from one form to another is not patent-eligible).
In view of the foregoing, Appellant does not apprise us of error in the
Examiner's determination that independent claim 1 is patent-ineligible, i.e.,
judicially excepted from statutory subject matter. Accordingly, we sustain
the rejection of claims 1-19 under 35 U.S.C. § 101.
Obviousness
Appellant argues that Rosenblum does not disclose a precomputed
first map, accepting an advertising request, and then computing a second
map, as claimed. Appeal Br. 17. Appellant also argues Rosenblum does not
disclose maps having bit arrays. Id. at 19. Appellant's arguments are
convmcmg.
Independent claim 1 recites
13
Appeal2016-004456
Application 12/787,679
precomputing a first map relating each advertisement of the set
of advertisements to its advertisement rule values in a bit array
stored in a memory of the computer server, wherein each bit of
the bit array signifies whether a corresponding one of the set of
advertisements satisfies a corresponding one of the
advertisement rule primitives.
Appeal Br., Claims App. Independent claim 1 further recites "computing,
by the computer server, a second map from the portion of the precomputed
first map using bits of the bit array associated with the portion of the
precomputed first map." Id.
To disclose the claimed first map, the Examiner relies on
Rosenblum's teaching of mapping advertisements to subscriptions.
Final Act. 4 (citing Rosenblum 6:54---67, 32:8-27, Fig. 14). For disclosing
the claimed second map, the Examiner relies on Rosenblum's teaching of
transforming a data advertisement and query to a subscription and a
notification, respectively. Final Act. 5 (citing Rosenblum 33:56-67,
Fig. 21H).
Although we agree with the Examiner that Rosenblum teaches
mapping an advertisement to a subscription and mapping a query to a
notification, the Examiner does not explain, and we fail to see, how
Rosenblum's advertisement or query discloses the claimed first map and
how the subscription or notification discloses the claimed second map. For
example, the Examiner does not explain how Rosenblum's advertisement or
query includes "a bit array ... wherein each bit of the bit array signifies
whether a corresponding one of the set of advertisements satisfies a
corresponding one of the advertisement rule primitives," as the claimed first
map.
14
Appeal2016-004456
Application 12/787,679
In view of the foregoing, the Examiner has not shown sufficiently that
Rosenblum discloses the claimed first and second maps recited in
independent claim 1. Each of independent claims 7 and 14 similarly recite
first and second maps, and the Examiner's rejection of these claims suffers
from the same deficiency as the rejection of independent claim 1.
Final Act. 4--5. Accordingly, we do not sustain the Examiner's rejection of
independent claims 1, 7, and 14 and dependent claims 2-6, 8-13, and 15-19
under 35 U.S.C. § 103(a).
DECISION
The Examiner's decision to reject claims 1-19 under 35 U.S.C. § 101
is affirmed.
The Examiner's decision to reject claims 1-19 under 35 U.S.C.
§ 103(a) is reversed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED
15