Ex Parte MATSUMOTO et al

Patent Trial and Appeal Board

Feb 26, 2019

14066155 (P.T.A.B. Feb. 26, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/066,155 10/29/2013
24041 7590 02/28/2019
SIMPSON & SIMPSON, PLLC
5555 MAIN STREET
WILLIAMSVILLE, NY 14221-5406
FIRST NAMED INVENTOR
Yoshinori MATSUMOTO
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.
127.003.NPUS 2109
EXAMINER
ANDREI, RADU
ART UNIT PAPER NUMBER
3682
NOTIFICATION DATE DELIVERY MODE
02/28/2019 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):
patentEFS@idealawyers.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte YOSHINORI MATSUMOTO
and
SHINGOYABU
Appeal2018-001001
Application 14/066, 15 5
Technology Center 3600
Before CARLA M. KRIVAK, HUNG H. BUI, and JON M. JURGOV AN,
Administrative Patent Judges.
KRIVAK, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 appeal under 35 U.S.C. § 134(a) from a Final Rejection
of claims 4, 7-10, 12, and 13, which are all the claims pending in the
application. We have jurisdiction under 35 U.S.C. § 6(b ).
We reverse.
1 The Appeal Brief identifies Mr. Y oshinori Matsumoto as the real party in
interest (App. Br. 2).
Appeal 2018-001001
Application 14/066,155
STATEMENT OF THE CASE
Appellants' invention is directed to advertisement distribution systems
for "controlling consumption of an advertisement rate ... [set] in the form of
an advance" of advertisement points that depend on a shopping site's
purchase prices, and for providing "an opportunity [ to a purchaser] to
acquire benefit information when the number of advertisement points turns
from being equal to or higher than ... [a] predetermined number to being
lower than the predetermined number" (Spec. ,r,r 1, 13-14 ).
Claims 4 and 9 are independent. Independent claim 9, reproduced
below, is exemplary of the subject matter on appeal.
9. An advertisement distribution system that awards a
prize to a user thereof, the system comprising:
a plurality of user terminals each including a display and
an advertisement user interface;
an advertisement distribution server including a
processor;
an application executable by the processor; and,
a storage device;
wherein, each of the plurality of user terminals including
the advertisement user interface is preconfigured to allow the
advertisement distribution server to communicate with each of
the user terminals via the advertisement user interface and
display information, received from the advertisement
distribution server, on the advertisement user interface,
wherein, the storage device stores information pertaining
to a number of remaining advertisement points associated with
a retailer and purchase information associated with goods and
services offered by the retailer;
wherein, during execution of the application by the
processor:
when specific goods and services offered by the retailer
are purchased from the retailer via the advertisement user
interface of one of the plurality of user terminals, the number of
remaining advertisement points stored in the storage device is
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Application 14/066,155
reduced according to the purchase information associated with
the specific goods and services purchased;
when the number of remaining advertisement points
stored in the storage device and associated with the retailer is
equal to or higher than a predetermined number, the
advertisement distribution server automatically transmits to
each of the plurality of user terminals, via the advertisement
user interface, advertisement information displayable on the
advertisement user interface of each of the user terminals and
pertaining to the retailer along with a link to a website of the
retailer;
when the number of remaining advertisement points
stored in the storage device and associated with the retailer is
lower than the predetermined number, the advertisement
distribution server automatically transmits to each of the
plurality of user terminals, via the advertisement user interface,
advertisement information displayable on the advertisement
user interface of each of the user terminals and pertaining to the
retailer without including the link to the website of the retailer,
the advertisement information displayable on the advertisement
user interface further including at least one of a graphical
representation and an alphanumerical representation of the
number of advertisement points remaining before the prize is
awarded; and,
when the number of remaining advertisement points
stored in the storage device and associated with the retailer
shifts from being equal to or higher than the predetermined
number to being lower than the predetermined number, the
advertisement distribution server automatically selects a
specific user terminal from among the plurality of user
terminals, and automatically transmits prize information to the
selected specific user terminal, via the advertisement user
interface, which prize information is displayable on the
advertisement user interface of the selected user terminal.
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Application 14/066,155
REJECTIONS and REFERENCES
The Examiner rejected claims 4, 7-10, 12, and 13 under
35 U.S.C. § 101 as directed to non-statutory subject matter.
The Examiner rejected claims 9, 10, 12, and 13 under 35 U.S.C. § 103
based upon the teachings of Amano (US 2002/0038244 Al; published Mar.
28, 2002), Miles (US 2014/0279534 Al; published Sept. 18, 2014), and
Bargnes (US 2003/0171981 Al; published Sept. 11, 2003). 2
The Examiner rejected claims 4, 7, and 8 under 35 U.S.C. § 103 based
upon the teachings of Amano, Miles, Bargnes, and Postrel (US
2010/0280896 Al; published Nov. 4, 2010).
ANALYSIS
Rejection under 35 US.C. § 101
In rejecting claims 4, 7-10, 12, and 13 under 35 U.S.C. § 101, the
Examiner finds the claims are "directed towards distributing advertisements"
and "transmitting prize information to the [user's] ... terminal," which
correspond to an abstract idea of "collecting information, analyzing it, and
displaying certain results of the collection and analysis" (Final Act. 2-3;
Ans. 3). The Examiner also finds the claims do not recite significantly more
than the abstract idea because "[ t ]he language of claims does not point to
any improvement of 'the distribution of advertisements over a network"' or
"to any 'improvement in the art and technical filed"' (Ans. 7-8).
2 The Examiner's rejection incorrectly refers to pre-America Invents Act
("pre-AIA") § I03(a) instead of AIA § 103. We are aware ofno prejudice to
Appellants or the Examiner resulting from this error, and thus we consider
this to be harmless error.
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Application 14/066,155
Appellants argue claims 4, 7-10, 12, and 13 are not directed to the
abstract idea asserted by the Examiner, but rather to "an improvement in the
art and technical field of distributive advertisements over a communication
network" (Reply Br. 8). Particularly, Appellants assert independent claims 4
and 9 provide an interactive advertising environment that sustains shoppers'
interest by displaying real-time prize information, including an audiovisual
indicator that a prize is likely to be awarded based on a number of
advertisement (ad) points correlated to sale activities (App. Br. 21, 25, 27;
Reply Br. 6, 8).
To determine whether subject matter is patentable under§ 101, the
Supreme Court has set forth a two part test "for distinguishing patents that
claim laws of nature, natural phenomena, and abstract ideas from those that
claim patent-eligible applications of those concepts" (Alice Corp. Pty. Ltd. v.
CLS Bank International, 134 S. Ct. 2347, 2355 (2014)). The first step in
that analysis is to "determine whether the claims at issue are directed to one
of those patent-ineligible concepts," such as an abstract idea (id.). The Court
acknowledged in Mayo that "all inventions at some level embody, use,
reflect, rest upon, or apply laws of nature, natural phenomena, or abstract
ideas" (Mayo Collaborative Services v. Prometheus Laboratories, Inc., 566
U.S. 66, 71 (2012)). We, therefore, look to whether the claims focus on a
specific means or method that improves the relevant technology or are
instead directed to a result or effect that is the abstract idea and merely
invoke generic processes and machinery (see Enfzsh, LLC v. Microsoft
Corp., 822 F.3d 1327, 1336 (Fed. Cir. 2016)). If the claims are not directed
to an abstract idea, the inquiry ends. Otherwise, the inquiry proceeds to the
second step where the elements of the claims are considered "individually
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and 'as an ordered combination' to determine whether the additional
elements 'transform the nature of the claim' into a patent-eligible
application" (Alice, 134 S. Ct. at 2355 (quoting Mayo, 566 U.S. at 79, 78)).
Because there is no single definition of an "abstract idea" under Alice
step 1, the PTO has recently synthesized, for purposes of clarity,
predictability, and consistency, key concepts identified by the courts as
abstract ideas to explain that the "abstract idea" exception includes the
following three groupings: (I) mathematical concepts; (2) mental processes;
and (3) certain methods of organizing human activity, such as a fundamental
economic practice and commercial interactions (including sales activities
and behaviors, and business relations). See 2019 Revised Patent Subject
Matter Eligibility Guidance, 84 Fed. Reg. 50, 52 (Jan. 7, 2019 ("PTO§ 101
Memorandum")), effective January 7, 2019.
The PTO § 101 Memorandum further instructs "[ c ]laims that do not
recite [subject] matter that falls within these enumerated groupings of
abstract ideas should not be treated as reciting abstract ideas," except in rare
circumstances (see PTO§ 101 Memorandum, 84 Fed. Reg. at 53). Even if
the claims recite any one of these three groupings of abstract ideas, these
claims are still not "directed to" a judicial exception (abstract idea), and thus
are patent-eligible "if the claim as a whole integrates the recited judicial
exception into a practical application of that Uudicial] exception" (id.).
"[I]ntegration into a practical application" requires an additional element or
a combination of additional elements in the claim to apply, rely on, or use
the judicial exception in a manner that imposes a meaningful limit on the
judicial exception, such that the claim is more than a drafting effort designed
to monopolize the exception (see PTO§ 101 Memorandum, 84 Fed. Reg. at
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53-55; see also MPEP 2106.05(a}-(c) and (e) (limitations indicative of
"integration into a practical application") and MPEP 2106.05(f)---(h)
(limitations not indicative of "integration into a practical application")).
Having reviewed the evidence, we agree with the Examiner only in
part. Particularly, we agree with the Examiner independent claims 4 and 9
as a whole recite a judicial exception of a method of organizing human
activity by facilitating advertising and incentivizing users to make purchases
(see Spec. ,r,r 1, 14, 18; Title). Thus, claims 4 and 9 recite subject matter
that falls within the three types of abstract ideas identified by the PTO § 101
Memorandum.
However, we agree with Appellants that the claims integrate the
judicial exception (abstract idea) into a practical application (App. Br. 21,
26-27). Particularly, claim 9 (and similarly, claim 4) recites a combination
of additional elements including user terminals preconfigured to
communicate with an advertisement distribution server that (i) reduces a
number of ad points based on purchases reported by a specific retailer, (ii)
automatically transmits to the user terminals a visual representation of "the
number of advertisement points remaining before the prize is awarded," and
(iii) when the number of remaining ad points shifts from equal to or higher
to lower than a predetermined number, automatically selects one user
terminal as the recipient of the prize. The claims' additional elements
integrate the method of organizing human activity into a practical
application.
Our conclusion is supported by claims 4 and 9 and Appellants'
Specification, which confirm an improved interactive, distributive
advertising system that can sustain consumers' attention "by providing a
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prize, as well as an audiovisual indicator that a prize is likely to be awarded
based on certain conditions" (App. Br. 27; see Spec. ,r,r 18, 31-32, 42--43,
Figs. 8-9). Conditions for awarding the prize are set by ad-sponsoring
retailers together with the advertisement distribution server, based on
retailers' previous sales (see Spec. ,r,r 13, 25-26, 54, Fig. 2). Thus,
Appellants' system boosts online sales by offering a prize supported by
revenue from previous sales (see Spec. ,r,r 13, 25-26, 31 ). Additionally, the
prize is awarded to the user whose purchase turns "the number of
advertisement points ... from being equal to or higher than the
predetermined number to being lower than the predetermined number" (see
Spec. ,r 28). With Appellants' distributed advertising system, users are less
likely to ignore online ads presented to them, and are more likely to be
incentivized to make purchases in hopes of winning an advertised prize (see
Spec. ,r,r 28, 31-32, 42--43; App. Br. 26-27). For example, a displayed
number of ad points may inform a user of an approximate time the user can
expect to receive the prize (see Spec. ,r 32).
Appellants' claims 4 and 9 therefore integrate advertising and product
marketing techniques into a process rooted in computer network
technologies. See DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245,
1257-58 (Fed. Cir. 2014) (holding patent-eligible a claim that "address[es] a
business challenge (retaining website visitors)" by enabling visitors "to
purchase products from the third-party merchant without actually entering
that merchant's website," the claim providing a "solution ... necessarily
rooted in computer technology in order to overcome a problem specifically
arising in the realm of computer networks").
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Because claims 4 and 9 integrate the judicial exception into a practical
application, we find claims 4 and 9, and their dependent claims 7, 8, 10, 12,
and 13 are not directed to a judicial exception (abstract idea). Accordingly,
we do not sustain the Examiner's rejection of claims 4, 7-10, 12, and 13
under 35 U.S.C. § 101.
Rejection under 35 US.C. § 103
The Examiner finds the combination of Amano, Miles, and Bargnes
teaches an advertisement distribution server that (i) upon determining the
number of ad points is lower than a predetermined number, transmits to each
of multiple user terminals a visual representation of the number of ad points
remaining before a prize is awarded, and (ii) automatically selects one user
terminal as the prize winner when the number of ad points shifts from being
equal to or higher to being lower than the predetermined number, as recited
in independent claim 9 (Final Act. 7-9). Particularly, the Examiner finds
Amano' s ad supplying system checks whether a number of ad points is
lower than a predetermined number and if so, transmits to user terminals a
"point number displayed on banner advertisement" (visual representation) of
a number of ad points remaining before a prize is awarded, as claimed (Final
Act. 7-8 (citing Amano ,r,r 64, 81, 121, Figs. 5 and 11)). The Examiner also
finds Amano' s system automatically transmits a "banner with points" (prize)
to a selected user terminal (Final Act. 8). The Examiner further finds Miles
determines when a number of ad points shifts from being equal to or higher
to being lower than a predetermined number, thereby teaching (in
combination with Amano) a prize winner selection as claimed (Final Act. 9
(citing Miles Fig. 5)). We do not agree.
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We agree with Appellants that Amano, Miles, and Bargnes, alone or
in combination, fail to teach or suggest transmitting a visual representation
of a number of ad points remaining before a prize is awarded, and selecting a
prizewinner, as claimed (App. Br. 30-32; Reply Br. 9-10). Although
Amano' s ad supplying system checks a remaining number of ad points (see
Amano Fig. 5), Amano does not transmit to multiple user terminals a visual
representation of a number of ad points remaining before a prize is awarded
as required by claim 9 (Appl. Br. 30). Rather, Amano transmits to a user
terminal a visual representation of ad points instantly awarded to that user
"as a result of the mere clicking on an advertisement banner (i.e., a points for
clicks type setup)" (App. Br. 30; see Amano ,r 129, Fig. 11 ).
Amano also does not teach or suggest selecting a prizewinner when a
number of remaining ad points shifts from equal to or higher to lower than a
predetermined number, as claimed (App. Br. 30). Rather, Amano's prizes
(e.g., points on ad banners) are awarded to users based on users' previous
awards-"to avoid such a condition that points are excessively applied to
such a user who intensively accesses the site within a short time period in
order to gain points" (see Amano ,r,r 107, 128). Thus, Amano does not teach
or suggest the claimed displaying a "number of advertisement points
remaining before the prize is awarded," and selecting a prizewinner
contingent on the number of ad points exceeding a predetermined limit.
Miles does not make up for the above-noted deficiencies of Amano.
Miles merely provides a notification to a primary account holder that the
account's available credit is above or below an amount of a transaction
initiated by a secondary account holder (see Miles ,r,r 12, 94, Fig. 5). Miles,
however, does not suggest awarding a prize when an amount ( e.g., a
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transaction's amount, or the account's available credit) shifts from equal to
or higher to lower than a predetermined number, as required by claim 9
(App. Br. 31 ). Additionally, Miles does not discuss ad points presented to
multiple user terminals as a precondition for awarding a prize (App. Br. 32).
The Examiner also has not shown that the additional teachings of
Bargnes ( directed to car tracking systems) make up for the above-noted
deficiencies of Amano and Miles (App. Br. 32-33). Thus, for the reasons
set forth above, we do not sustain the Examiner's obviousness rejection of
independent claim 9 and claims 10, 12, and 13 dependent therefrom.
The Examiner's rejection of independent claim 4 relies additionally
on Postrel. However, the Examiner has not shown that Postrel makes up for
the above-noted deficiencies of Amano, Miles, and Bargnes with respect to
the limitations of claim 4 that are similar to claim 9. Additionally, we agree
with Appellants, Postrel does not teach "an application executable ... [that]
subtracts a number of purchase points based on the purchase price of the
good or service from the number of advertisement points at the shopping
site" as recited in claim 4 (App. Br. 34--35; see Final Act. 15). Postrel
merely subtracts a user's accumulated reward points from a purchase price
paid by that user, but does not subtract points from a number of ad points
presented to multiple user terminals as a precondition for awarding a prize,
as claimed (see Postrel ,r,r 15-16). Thus, for the reasons set forth above, we
do not sustain the Examiner's obviousness rejection of independent claim 4
and claims 7 and 8 dependent therefrom.
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DECISION
The Examiner's decision rejecting claims 4, 7-10, 12, and 13 under
35 U.S.C. § 101 is reversed.
The Examiner's decision rejecting claims 4, 7-10, 12, and 13 under
35 U.S.C. § 103 is reversed.
REVERSED
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