Ex Parte Malden et al

Patent Trial and Appeal Board

Jul 24, 2017

12541028 (P.T.A.B. Jul. 24, 2017)

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.
12/541,028 08/13/2009 Matthew Scott Malden 82948422 2519
22879
HP Tnr
7590 07/26/2017 EXAMINER
3390 E. Harmony Road
Mail Stop 35
SITTNER, MICHAEL J
FORT COLLINS, CO 80528-9544 ART UNIT PAPER NUMBER
3622
NOTIFICATION DATE DELIVERY MODE
07/26/2017 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):
ipa.mail@hp.com
barbl@hp.com
y vonne.bailey @ hp. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MATTHEW SCOTT MALDEN
and JOHN LUDWIG COKER
Appeal 2016-004867
Application 12/541,02 s1
Technology Center 3600
Before KRISTEN L. DROESCH, SCOTT B. HOWARD, and
JOYCE CRAIG, Administrative Patent Judges.
CRAIG, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1—4, 6—13, 15, and 17—24, which are all of the
claims pending in this application.2 We have jurisdiction under 35 U.S.C.
§ 6(b).
We affirm.
1 According to Appellants, the real party in interest is Hewlett-Packard
Development Company, LP. App. Br. 1.
2 Claims 5, 14, and 16 have been canceled. App. Br., Claims App’x.
Appeal 2016-004867
Application 12/541,028
INVENTION
Appellants’ application relates to a method and system for internet
advertising administration using a unified user interface. Spec., Abstract.
Claim 1 is illustrative of the appealed subject matter and reads as follows:
1. A method comprising:
receiving, by a system comprising a processor, campaign
configuration data for an internet advertising campaign;
receiving, by the system, a selection of publisher systems
to run the internet advertising campaign;
adjusting, by the system, the campaign configuration data
according to abstraction rules, including automatic expansion of
keywords into keyword variants for a plurality of match types
specifying different types of keyword matching of a keyword to
a search term of a search submitted to a publisher system, the
automatic expansion of keywords comprising expanding a first
keyword into plural different keyword variants for the respective
plurality of match types;
providing, by the system, the adjusted campaign
configuration data to the publisher systems that comprise search
engines;
gathering, by the system, statistics associated with user
interaction with advertisements displayed by the publisher
systems in response to user-submitted search terms; and
outputting, by the system, for display in a display screen
information comprising the gathered statistics.
REJECTIONS
Claims 1—4, 6—13, 15, and 17—24 stand rejected under 35 U.S.C. § 101
as directed to patent-ineligible subject matter.
Claims 1—4, 6—13, 15, and 17—24 stand rejected under 35 U.S.C.
§112, first paragraph, as failing to comply with the written description
requirement.
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Claim 9 stands rejected under 35 U.S.C. § 112, second paragraph, as
indefinite for failing to particularly point out and distinctly claim the subject
matter which the applicant regards as the invention.
Claims 1—4, 10-13, 15, and 17—24 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over the combination of Kline et al. (US
2006/0074749 Al, published Apr. 6, 2006) (“Kline”) and Dangaltchev et al.
(US 2009/0112609 Al; published Apr. 30, 2009) (“Dangaltchev”).
Claim 9 stands rejected under 35 U.S.C. § 103(a) as unpatentable over
the combination of Kline, Dangaltchev, and Barko Germany, Julie. Best
Practices for Political Online Advertising, GW's Institute for Politics,
Democracy & the Internet, Mar. 4, 2008, pp. 36—37 (“NPL”).
Claims 6—8 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over the combination of Kline and Tang et al. (US 2007/0156757 Al;
published July 5, 2007) (“Tang”).
ANALYSIS
Rejection of Claims 1—4, 6—13, 15, and 17—24 under 35 U.S.C. § 101
Appellants contend the Examiner erred in rejecting claim 1 as directed
to patent-ineligible subject matter. App. Br. 7.
In Alice, the Supreme Court set forth an analytical “framework for
distinguishing patents that claim laws of nature, natural phenomena, and
abstract ideas from those that claim patent-eligible applications of those
concepts.” A lice Corp. Pty. Ltd. v. CLS Bank Int’l, 134 S. Ct. 2347, 2355
(2014) (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566
U.S. 66 (2012)). The first step is to “determine whether the claims at issue
are directed to one of those patent-ineligible concepts,” such as an abstract
idea. Id. (citing Mayo, 566 U.S. at 77—78). If the claims are directed to a
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patent-ineligible concept, the second step is to consider the elements of the
claims “individually and ‘as an ordered combination’” to determine whether
there are additional elements that “‘transform the nature of the claim’ into a
patent-eligible application.” Id. (quoting Mayo, 566 U.S. at 79, 78). In
other words, the second step is to “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. (alterations in original) (quoting Mayo, 566
U.S. at 72—73). The prohibition against patenting an abstract idea “‘cannot
be circumvented by attempting to limit the use of the formula to a particular
technological environment’ or adding ‘insignificant postsolution activity.’”
Bilski v. Kappos, 561 U.S. 593, 610—11 (2010) (citation omitted).
Turning to the first step of the Alice inquiry, we agree with the
Examiner that limitations of the independent claims are directed to targeted
advertising and brokerage of ads, and that the claims describe the concepts
of comparing new information (keywords submitted to a search engine) with
stored information (lists of words that are variants of keywords) and using
rules (abstraction rules) to identify options (possible campaign configuration
data/advertisement adjustments). Final Act. 2—3. We also agree that this is
similar to the concept of comparing new and stored information and using
rules to identity options, which is an abstract idea. Id. at 3 (citing
SmartGene Inc. v. Adv. Bio. Labs. SA, 555 Fed. Appx. 950 (Fed. Cir. 2014)).
In SmartGene, the Federal Circuit found claims patent ineligible
because they did “no more than call on a ‘computing device,’ with basic
functionality for comparing stored and input data and rules, to do what
doctors do routinely.” SmartGene, 555 Fed. Appx. at 954. In the instant
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case, the recited “campaign configuration data” is nothing more than data
used in an algorithm process that uses a system (i.e., computer) to adjust the
data using mathematical comparisons and rule-based processes. The claims
at issue in SmartGene relied upon “expert rules” for “‘evaluating and
selecting’ from a stored ‘plurality of different therapeutic treatment
regimens.”’ Id. at 951—952. The “expert rules” in SmartGene are analogous
to the “abstraction rules” used to adjust campaign configuration data in
claim 1.
The steps of claim 1 are also similar to the steps that the Federal
Circuit determined were patent ineligible in Electric Power Group LLC v.
Alstom S.A., 830 F.3d 1350 (Fed. Cir. 2016). In Electric Power, the method
claims at issue were directed to “performing real-time performance
monitoring of an electric power grid by collecting data from multiple data
sources, analyzing the data, and displaying the results.” Elec. Power Grp.,
830 F.3d at 1351—52. There, the Federal Circuit held that the claims were
directed to an abstract idea because “[t]he advance they purport to make is a
process of gathering and analyzing information of a specified content, then
displaying the results, and not any particular assertedly inventive technology
for performing those functions.” Id. at 1354.
We agree with the Examiner that, in the instant case, the claimed steps
do not rely on an inventive device or technique for displaying information or
new techniques for adjusting information, but rather constitute a generic
recitation of steps for mathematically manipulating data to obtain modified
data. See Ans. 3^4. No technological advance is evident in the present
invention, and Appellants do not identity any problem particular to computer
networks and/or the Internet that claim 1 allegedly overcomes.
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Appellants argue the Examiner erred because “the § 101 rejection of
claim 1 is based on an inaccurate characterization of the claim.” App. Br. 7.
Appellants also argue in a conclusory manner that the claim at issue in
SmartGene is “completely different from the claim at issue in the present
case.” Id. Because Appellants do not persuasively explain how the
Examiner mischaracterized the claim or how the claims differ from those in
SmartGene, we are not persuaded by Appellants’ arguments.3
With regard to Appellants’ argument that “claim 1 of the present
application is directed to a method that includes more than just routine
steps,” Appellants point out “specific interactions between the system that
performs the adjusting of campaign configuration data and publisher systems
including search engines with which user interaction is made.” App. Br. 9.
Appellants also argue that claim 1 requires “the display of information
comprising gathered statistics associated with user interaction with
advertisements displayed by the publisher systems in response to user-
submitted search terms.” Id.
Appellants’ arguments are not persuasive at least because they are
based upon elements not recited or required by the claims. Claim 1 recites
“providing, by the system, the adjusted campaign configuration data to the
publisher systems that comprise search engines.” Claims App’x i.
Moreover, claim 1 recites “outputting, by the system, for display in a display
screen information comprising the gathered statistics.” Id. Providing data
from one system to another and outputting data for display using generic
computer components are routine and well-known functions. Appellants
3 Appellants also point out that SmartGene is a nonprecedential decision, but
present no developed argument based on that fact. See App. Br. 7.
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have not identified any particular inventive technology for performing those
functions. Here, the advance the claims purport to make is a process of
gathering and analyzing information, then displaying the information, and
not any particular assertedly inventive technology for performing those
functions. See, e.g., Elec. Power Grp., 830 F.3d at 1354.
For these reasons, we are not persuaded of error in the Examiner’s
finding that the claims are directed to the abstract idea of comparing new
and stored information and using rules to identify options. Final Act. 2—3;
Ans. 3.
Turning to the second step of the Alice inquiry, we find nothing in
claim 1 that adds anything “significantly more” to transform the abstract
concept of comparing new and stored information and using rules to identify
options into a patent-eligible application. Alice, 134 S. Ct. at 2357. We are
not persuaded by Appellants’ arguments that the claims recite additional
elements that transform the abstract idea into a patent-eligible application
because Appellants effectively identify the entirety of claim 1 as adding
“significantly more,” with no persuasive explanation. See App. Br. 10-11.
Appellants also argue that the “additional subject matter of claim 1 is
non-obvious over the cited references, and therefore is clearly inventive.”
Id. Even if we were to conclude Appellants’ claims are nonobvious, such
finding would not necessarily lead to the conclusion that subject matter is
patentable eligible. See Ass ’n for Molecular Pathology v. Myriad Genetics,
Inc., 133 S.Ct. 2107,2117 (2013).
Appellants further argue that “the subject matter in the various clauses
of claim 1 supplies an inventive concept ‘in the physical realm of things’
that provides a ‘new and useful application’ of the claimed subject matter to
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the physical realm.” App. Br. 11 (citing buy SAFE, Inc. v. Google, Inc., 765
F.3d 1350, 1355 (Fed. Cir. 2014)). Appellants specifically argue that “the
clauses of claim 1 recite an interaction between systems, including the
system comprising a processor, the publishers systems comprising search
engines, and a display screen, which are physical entities.” Id.
We are not persuaded by Appellants’ argument because Appellants
have not persuasively explained how the “interaction between systems” adds
something “significantly more” to transform the abstract concept of
comparing new and stored information and using rules to identify options
into a patent-eligible application.
Accordingly, we sustain the Examiner’s rejection under 35 U.S.C.
§101 of independent claim 1, and claims 2-4, 6—13, 15, and 17—24, which
Appellants have grouped with claim 1. See App. Br. 12.
Rejection of Claims 1—4, 6—13, 15, and 17—24
under 35 U.S.C. § 112, first paragraph
The Examiner rejected claims 1—4, 6—13, 15, and 17—24 as failing to
satisfy the written description requirement after finding no written
description for the limitation “automatic expansion of keywords into
keyword variants for a plurality of match types specifying different types of
keyword matching of a keyword to a search term of a search submitted to a
publisher system,” recited in claim 1. Final Act. 4—6.
We agree with Appellants that the Examiner erred in rejecting claim
1. See App. Br. 13 (citing Spec. 149). Paragraph 49 of the Specification
describes expanding keywords into match-type variance by associating each
keyword with one or more match types (e.g., broad match, phrase match,
exact match, etc.) used by a publisher. Spec. 149. We find paragraph 49 is
sufficient to convey to those skilled in the art that the inventor had
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possession of the claimed subject matter as of the filing date. See Ariad
Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en
banc).
With respect to dependent claim 24, the Examiner found that the
written description requirement is not satisfied with respect to the limitation
“structuring, by the system, the internet advertising campaign based on the
gathered statistics,” recited in claim 24. Final Act. 4—5. Paragraph 64 of the
Specification describes that the platform 116 creates and structures a
campaign based on data from the statistics database 314, publisher systems
320, and third party data sources 312, and provides an example in which
“the system can determine which keywords to use, which advertisements to
use, how to structure ad groups, which publishers to advertise on, etc. based
on experiential data.” App. Br. 14; Spec. 1 64. We find paragraph 64 is
sufficient to convey to those skilled in the art that the inventor had
possession of the claimed subject matter as of the filing date. See Ariad, 598
F.3d at 1351.
Accordingly, we reverse the Examiner’s rejection of claims 1 and 24
under 35 U.S.C. § 112, first paragraph. We also reverse the Examiner’s
rejection of claims 2-4, 6—13, 15, and 17—23 for similar reasons.
Rejection of Claim 9 under 35 U.S.C. § 112, second paragraph
Appellants argue that the Examiner erred in rejecting claim 9 as
indefinite because claim 9 depends from claim 1, which recites “abstraction
rules.” Appellants argue that claim 1 provides antecedent support for the
limitation “the abstraction rules that specify modifying a text length,” recited
in claim 9.
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We agree with Appellants that the Examiner erred. The Examiner has
not explained in sufficient detail why the phrase recited in claim 9 renders
the metes and bounds of the claim scope unclear. The Examiner also has not
explained in sufficient detail whether the phrase at issue is amenable to two
or more plausible claim constructions. See Ex parte Miyazaki, 89 USPQ2d
1207, 1211 (BPAI 2008) (precedential) (“[I]f a claim is amenable to two or
more plausible claim constructions, the USPTO is justified in requiring the
applicant to more precisely define the metes and bounds of the claimed
invention by holding the claim . . . indefinite.”). We find that one of
ordinary skill would have understood the disputed phrase in claim 9 to refer
to a subset of the “abstraction rules” recited in claim 1.
Accordingly, we reverse the Examiner’s rejection of claim 9 under 35
U.S.C. § 112, second paragraph.
Rejection of Claims 1—4, 6—13, 15, and 17—24 under 35 U.S.C. § 103(a)
In rejecting claim 1, the Examiner found that Kline teaches or
suggests all of the recited limitations, except “for a plurality of match types
specifying different types of keyword matching,” for which the Examiner
relied on Dangaltchev. Final Act. 10.
Appellants contend the cited portions of Dangaltchev do not teach
expanding a keyword into plural different keyword variants for respective
plurality of match types, as claim 1 requires. App. Br. 19. Appellants argue
that associating a bid with one or more of three match types, as Dangaltchev
teaches, “does not involve automatic expansion of a keyword into plural
different keyword variants for the respective plurality of match types.” Id.
(citing Dangaltchev Tflf 7, 17).
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Appellants’ arguments do not persuade us of Examiner error.
Appellants attack the prior art references individually even though the
Examiner relies on the combination of Kline and Dangaltchev as teaching or
suggesting the disputed features. Final Act. 7—11; Ans. 12—13; see also In re
Mouttet, 686 F.3d 1322, 1332 (Fed. Cir. 2012) (citing In re Keller, 642 F.2d
413, 425 (CCPA 1981)) (“The test for obviousness ... is what the combined
teachings of the references would have suggested to those having ordinary
skill in the art.”). The Examiner found that Kline teaches “expanding a
keyword into plural different keyword variants” and a method of generating
tables of keywords (keyword variants) for the purpose of matching them to a
search term of a search query submitted to a publisher system such as a
search engine. Ans. 12—13 (citing Kline 166). The Examiner further found
that Dangaltchev teaches or suggests that the matching of keywords may be
based on specific types of matching which specify either “exact,” “phrase,”
or “broad” matching). Final Act. 10-11 (citing Dangaltchev Tflf 7, 17, 24).
Appellants have not persuasively explained why the combined
teachings cited by the Examiner would not have suggested the disputed
limitation to an artisan of ordinary skill. See Reply Br. 18. Instead,
Appellants explain what results the combination of Kline and Dangaltchev
would have “led to.” Id. Because Appellants have not persuasively
addressed whether the claimed subject matter would have been obvious to
those of ordinary skill in the art in light of the combined teachings of those
references, Appellants have not persuasively rebutted the Examiner’s
findings.
Appellants next argue that a person of ordinary skill in the art would
not have found a reason to incorporate the subject matter of Dangaltchev
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into the arrangement of Kline. App. Br. 20. Appellants contend that a
category as taught in Kline is not a match type, and relating keyword groups
to categories, as performed in Kline, is completely unrelated to what occurs
in Dangaltchev. Id. We disagree. The Examiner provides “articulated
reasoning with some rational underpinning to support the legal conclusion of
obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006); see Final
Act. 11; Ans. 13—14. Appellants’ arguments rebutting the Examiner’s
findings and conclusion of law are not supported by objective evidence of
record. It is well settled that attorney argument, unsupported by factual
evidence, is entitled to little probative value. In re Geisler, 116 F.3d 1465,
1470 (Fed. Cir. 1997); see also In re Pearson, 494 F.2d 1399, 1405 (CCPA
1974) (attorney argument is not evidence).
For these reasons, we are not persuaded that the Examiner erred in
finding that the combination of Kline and Dangaltchev teaches or suggests
the disputed limitations of claim 1.
Accordingly, we sustain the 35 U.S.C. § 103(a) rejection of
independent claim 1, as well as the 35 U.S.C. § 103(a) rejection of
independent claims 19 and 20, which Appellants argue are patentable for
similar reasons. App. Br. 20. We also sustain the Examiner’s rejection of
dependent claims 2—4, 6—13, 15, 17, 18, and 21—24, for which Appellants
make no separate arguments for patentability. Id.
DECISION
We affirm the decision of the Examiner rejecting claims 1—4, 6—13,
15, and 17—24 under 35 U.S.C. § 101.
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We affirm the decision of the Examiner rejecting claims 1—4, 6—13,
15, and 17—24 under 35 U.S.C. § 103(a).
We reverse the decision of the Examiner rejecting claims 1—4, 6—13,
15, and 17—24 under 35 U.S.C. § 112, first paragraph.
We reverse the decision of the Examiner rejecting claim 9 under
35 U.S.C. § 112, second paragraph.
Because we affirm at least one ground of rejection with respect to
each claim on appeal, the Examiner’s decision rejecting claims 1—4, 6—13,
15, and 17—24 is affirmed. See 37 C.F.R. § 41.50(a)(1).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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