Ex Parte Morsa

Patent Trial and Appeal Board

Nov 20, 2018

13694192 (P.T.A.B. Nov. 20, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO.
13/694, 192
7590
SteveMorsa
POB 1996
FILING DATE
11/05/2012
11/20/2018
Thousand Oaks, CA 91358
FIRST NAMED INVENTOR
Steve Morsa
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.
8469
EXAMINER
OUELLETTE, JONATHAN P
ART UNIT PAPER NUMBER
3629
MAIL DATE DELIVERY MODE
11/20/2018 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 STEVE MORSA
Appeal2018-004483
Application 13/694, 192
Technology Center 3600
Before BIBHU R. MOHANTY, MICHAEL W. KIM, and AMEE A. SHAH,
Administrative Patent Judges.
MOHANTY, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellant seeks our review under 35 U.S.C. § 134(a) of the final
rejection of claims 2-74 and 83-89, which are all the claims pending in the
application. We have jurisdiction under 35 U.S.C. § 6(b).
SUMMARY OF THE DECISION
We AFFIRM.
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Application 13/694, 192
THE INVENTION
The Appellant's claimed invention is directed to match engine
marketing (Spec, Title). Claim 2, reproduced below, is representative of the
subject matter on appeal.
2. A technical field improving technological process
compnsmg:
transmitting by a computer system over a network for
display to a user a request for demographic and/or psychographic
user information;
receiving at the computer system over the network from
the user the user information;
saving by the computer system the user information;
receiving at the computer system over the network from a
first advertiser an association between (i) one or more first
criteria comprising demographic and / or psychographic criteria
and a first ad and (ii) a first bid, the bid being the highest amount
the advertiser is willing to, but may not have to, pay, and the first
ad·
' receiving at the computer system over the network from a
second advertiser an association between (i) one or more second
criteria comprising demographic and/or psychographic criteria
and a second ad and (ii) a second bid, the bid being the highest
amount the advertiser is willing, but may not have, to pay, and
the second ad;
determining by the computer system that a first match
exists between the first criteria and the user information;
determining by the computer system that a second match
exists between the second criteria and the user information;
in the event of both a first match and a second match,
determining by the computer system placement of at least one of
the first and second ads based on one or more ad placement
factors comprising the first and second bids;
transmitting by the computer system at least one of the
first and second ads over the network to the user.
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Application 13/694, 192
THE REJECTION 1
Claims 2-74 and 83-89 are rejected under 35 U.S.C. § 101 as being
directed to non-statutory subject matter.
FINDINGS OF FACT
We have determined that the findings of fact in the Analysis section
below are supported at least by a preponderance of the evidence2.
ANALYSIS
Re} ection under 3 5 US. C. § 101
The Appellant argues that the rejection of claim 2 is improper because
the Appellant's claim is directed to a patent eligible concept (App. Br. 15-
25). The Appellant argues that the rejection has been improperly applied
and fails to properly identify the claim as being directed to an abstract
concept (App. Br. 15-25). The Appellant argues that that the claim is
directed to patent eligible subject matter (App. Br. 15-25).
In contrast, the Examiner has determined that rejection of record is
proper (Ans. 3-8; Final Act. 4).
We agree with the Examiner. Under 35 U.S.C. § 101, 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 an implicit exception: "[l]aws of
1 The Answer indicates that the rejections of the claims 2-74 and 83-89
under 35 U.S.C. § 102(b) and double patenting are withdrawn (Ans. 3).
2 See Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988)
( explaining the general evidentiary standard for proceedings before the
Patent Office).
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Application 13/694, 192
nature, natural phenomena, and abstract ideas" are not patentable. See, e.g.,
Alice Corp. Pty Ltd. v. CLS Bankint'l, 134 S. Ct. 2347, 2354 (2014).
In judging whether claim 2 falls within the excluded category of
abstract ideas, we are guided in our analysis by the Supreme Court's two-
step framework, described in Mayo and Alice. Id. at 2355 (citing Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 77, 78 (2012)).
In accordance with that framework, we first determine whether the claim is
"directed to" a patent-ineligible abstract idea. If so, we then consider the
elements of the 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 of the abstract idea. Id. This is a
search for an "inventive concept" an element or combination of elements
sufficient to ensure that the claim amounts to "significantly more" than the
abstract idea itself. Id. The Court also stated that "the mere recitation of a
generic computer cannot transform a patent-ineligible abstract idea into a
patent-eligible invention." Id at 2358.
Here, we agree with the Examiner that the claim is directed to the
concepts of targeting advertisements for a user, and using a bidding system
to determine how the advertisements will be displayed (Ans. 5). We also
agree with the Examiner that these concepts are a fundamental economic
practices long prevalent in our system of commerce and, thus, the claim is
directed to an abstract idea (Ans. 5). Furthermore, as noted by the
Examiner, the claims at issue are similar to claims in Morsa v. Facebook,
Inc. 77 F.Supp.3d 1007, C.D. California, Dec. 23, 2014 (aff'd in Aforsa v.
Facebook, Inc. 622 Fed. Appx. 915, Nov. 13, 2015) where claims directed to
targeting advertisements to certain consumers, and using a bidding system to
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deterrnine when and how advertisernents will be displayed were held to be
directed toward an abstract concept (Ans. 5-6). We have reviewed the claim
and determine it is directed to the abstract concept identified above.
We next consider whether additional elements of the claim, both
individually and as an ordered combination, transform the nature of the
claim into a patent-eligible application of the abstract idea, e.g., whether the
claim does more than simply instruct the practitioner to implement the
abstract idea using generic computer components. We conclude that it does
not. The Specification at pages 20-37 for example describes using generic
computer components such as network PC's, minicomputers, mainframe
computers, cell phones, servers, match, engines, local area networks and
wide area networks in a conventional manner for the known functions.
Considering each of the claim elements in tum, the function
performed by the computer system at each step of the process is purely
conventional. Each step of the claimed method does no more than require a
generic computer to perform a generic computer function.
We note the point about pre-emption (App. Br. 25-28). While pre-
emption "might tend to impede innovation more than it would tend to
promote it, 'thereby thwarting the primary object of the patent laws"' (Alice,
134 S. Ct. at 2354 (quoting Mayo Collaborative Servs. v. Prometheus Labs.,
Inc., 566 U.S. 66 at 70 (2012)), "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), cert, denied,
136 S. Ct. 701, 193 (2015)("[T]hat the claims do not preempt all price
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optimization or may be limited to price optimization in the e-commerce
setting do not make them any less abstract.").
The Appellant argues that the claims have been shown to be novel and
non-obvious and, thus, not directed to an abstract concept (App. Br. 33, 34).
However, neither a finding of novelty nor a non-obviousness determination
automatically leads to the conclusion that the claimed subject matter is
patent-eligible. Although the second step of the Mayo/Alice framework is
termed a search for an "inventive concept," the analysis is not an evaluation
of novelty or non-obviousness, but rather, a search for "an element or
combination of elements that is 'sufficient to ensure that the patent in
practice amounts to significantly more than a patent upon the [ineligible
concept] itself."' Alice Corp., 134 S. Ct. at 2355 (citation omitted).
"Groundbreaking, innovative, or even brilliant discovery does not by itself
satisfy the§ 101 inquiry." Ass 'nfor Molecular Pathology v. Myriad
Genetics, Inc., 569 U.S. 576, 591 (2013). See Diamond v. Diehr, 450 U.S.
17 5, 188-89 (1981) ("The 'novelty' of any element or steps in a process, or
even of the process itself, is of no relevance in determining whether the
subject matter of a claim falls within the § 101 categories of possibly
patentable subject matter.").
The Appellant also argues in the Appeal Brief at page 29 that
advertising is real, tangible, and concrete. We have considered this
argument but determine here that the claim at issue is instead directed to the
abstract concept identified above.
The Appellant argues the claims are directed to improved technology
and improved computer technology (App. Br. 34--39), but for the reasons
above we disagree. Here, the claims are not rooted in technology, but in the
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abstract concept identified above, and the claims fail to transform the
abstract nature of the claim into patent eligible subject matter for the reasons
provided. For example, there is no indication that the generic computer
system is technologically improved; any alleged improvement appears to
reside in the claimed process, and the Appellant has not persuaded us
otherwise. For these reasons, the rejection of claim 2 is sustained.
The Appellant states at pages 3-13 that the remaining claims 3-7 4
and 83-89 are separately contested, but presents no specific arguments for
the substance of these claims. We have reviewed each of these claims and
determined that they are directed to the same basic abstract concept
identified above, and also each fail to transform the abstract nature of each
respective claim and the rejection of these claims is sustained as well. For
example, claim 36 is broader in scope, but directed to the same abstract
concept as claim 2 discussed above. Independent claims 68 and 83 are more
specific in claiming the particular number of devices in the network, but also
are drawn to the same abstract concept identified above. Similarly, while
the dependent claims are each more specific, they are drawn to the same or a
similar abstract concept as well, and fail to transform the respective abstract
nature of each respective claim.
The Appellant's arguments have been fully considered but are not
deemed persuasive and, therefore, the rejection is sustained.
CONCLUSIONS OF LAW
We conclude that Appellant has not shown that the Examiner erred in
rejecting claims 2-74 and 83-89 under 35 U.S.C. § 101.
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DECISION
The Examiner's rejection of claims 2-74 and 83-89 is sustained.
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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