Ex Parte Murray et al

Patent Trial and Appeal Board

Jun 29, 2018

12191412 (P.T.A.B. Jun. 29, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/191,412 08/14/2008
58249 7590 07/03/2018
COOLEYLLP
ATTN: IP Docketing Department
1299 Pennsylvania Avenue, NW
Suite 700
Washington, DC 20004
FIRST NAMED INVENTOR
Alan Murray
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.
MED6-001/01US
318298-2001
CONFIRMATION NO.
1770
EXAMINER
MUNSON, PATRICIA H
ART UNIT PAPER NUMBER
3622
NOTIFICATION DATE DELIVERY MODE
07 /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):
zIPPatentDocketingMailbox US @cooley.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ALAN MURRAY, JOSHUA ABRAM, RODNEY HOOK, and
BALAJI DEV ARAJAN
Appeal2017-002287
Application 12/191,412 1
Technology Center 3600
Before ALLEN R MACDONALD, JEREMY J. CURCURI, and
IRVINE. BRANCH, Administrative Patent Judges.
BRANCH, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1-5, 8-11, 13, 14, 16, and 19-29, which are all of the claims pending
in the application. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
Technology
The application relates to "targeting online advertisements using data
derived from social networks." Spec. Abstract.
1 According to Appellants, the real party in interest is dstillery, Inc. App. Br.
3.
Appeal2017-002287
Application 12/191,412
Illustrative Claim
Claim 1 is illustrative and reproduced below:
1. A method comprising:
receiving visitation data associated with a first user
v1s1tmg a webpage that includes social networking content
associated with a social network of a second user, the visitation
data including a unique identifier associated with the second
user;
receiving visitation data associated with a third user
visiting the webpage including the unique identifier;
constructing a micronetwork associating the first
user with the third user by determining that the first user and the
third user have each visited the webpage based on (1) the
visitation data associated with the first user visiting the webpage
including the unique identifier and (2) the visitation data
associated with the third user visiting the webpage including the
unique identifier, the micronetwork constructed such that at least
a portion of the social network of the second user is reconstructed
without collecting private information related to the first user or
the third user;
selecting advertisements for transmission to the
micronetwork; and
transmitting at least one selected advertisement to
the micronetwork.
Rejections2
Claims 1-5, 8-11, 13, 14, 16, and 19-29 stand rejected under 35
U.S.C. § 101 as being directed to a judicial exception (i.e. a law of nature, a
2 Rather than repeat the Examiner's positions and Appellants' arguments in
their entirety, we refer to the above-mentioned Appeal Brief, as well as the
following documents for their respective details: the Final Action mailed
May 26, 2015 ("Final Act.") and the Examiner's Answer mailed September
23, 2016 ("Ans.").
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Application 12/191,412
natural phenomenon, or an abstract idea) without significantly more. Final
Act. 2-3.
Claims 1-5, 8-11, 13, 14, 16, and 19-29 stand rejected under 35
U.S.C. § l 12(b) or 35 U.S.C. § 112 (pre- AIA), second paragraph, as being
indefinite for failing to particularly point out and distinctly claim the subject
matter which the inventor regards as the invention. Final Act. 3--4.
Claims 1--4, 8-11, 13, 14, and 19-23 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over the combination of Beyda
(US 2005/0166233 Al; published July 28, 2005) and Kublickis (US
2007 /0067297 Al; published Mar. 22, 2007)). Final Act. 4--18.
Claims 5, 16, and 24--29 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Beyda, Kublickis, and Rohan (US 2008/0162260 Al;
published July 3, 2008). Final Act. 18-30.
ANALYSIS
We review the appealed rejections for error based upon the issues
identified by Appellants, and in light of the arguments and evidence
produced thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010)
(precedential). Because Appellants do not present arguments with respect to
the rejections under 35 U.S.C. §§ 112 and 103, we summarily affirm those
rejections. See, generally, App. Br.; see Reply Br. 2 ("Appellant will
address the other rejections, as appropriate, once the Patent Trials and
Appeals Board has rendered a decision on the patent eligibility of claims 1,
23, and 24.").
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Application 12/191,412
The 35 USC§ 101 Rejection
Section 101 defines patent-eligible subject matter as "any new and
useful process, machine, manufacture, or composition of matter, or any new
and useful improvement thereof." 35 U.S.C. § 101. The Supreme Court has
"long held that this provision contains an important implicit exception[:]
Laws of nature, natural phenomena, and abstract ideas are not patentable."
Ass 'nfor Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 589
(2013) (quoting Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566
U.S. 66, 70 (2012)).
To distinguish "patents that claim laws of nature, natural phenomena,
and abstract ideas from those that claim patent-eligible applications of those
concepts," the Supreme Court has set up an analytical framework. Alice
Corp.Pty. v. CLS Bankint'l, 134 S.Ct. 2347, 2355 (2014) (citing Mayo, 566
U.S. at 71-73). In the first step of the analysis, we determine whether the
claims at issue are "directed to" a judicial exception, such as an abstract
idea. Alice, 134 S. Ct. at 2355. If not, the inquiry ends. Thales Visionix Inc.
v. US., 850 F.3d 1343, 1346 (Fed. Cir. 2017); Enfzsh, LLC v. Microsoft
Corp., 822 F.3d 1327, 1339 (Fed. Cir. 2016). If the claims are determined to
be directed to an abstract idea, then we consider under step two whether the
claims contain an "inventive concept" sufficient to "'transform the nature of
the claim' into a patent-eligible application." Alice, 134 S.Ct. at 2355
(citation omitted).
Noting that the two stages involve "overlapping scrutiny of the
content of the claims," the Federal Circuit has described "the first-stage
inquiry" as "looking at the 'focus' of the claims, their 'character as a
whole,"' and "the second-stage inquiry (where reached)" as "looking more
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Application 12/191,412
precisely at what the claim elements add-specifically, whether, in the
Supreme Court's terms, they identify an 'inventive concept' in the
application of the ineligible matter to which (by assumption at stage two) the
claim is directed." Electric Power Grp, LLC v. Alstom S.A., 830 F.3d 1350,
1353 (Fed. Cir. 2016). In considering whether a claim is directed to an
abstract idea, we acknowledge, as did the Court in Mayo, 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. 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 in itself is
the abstract idea and merely invoke generic processes and machinery. See
Enfzsh, 822 F.3d at 1336.
Step One: Whether the Claims Are Directed to a Patent-Ineligible
Concept (Abstract Idea)
Claim 1, which is representative of the claims before us, is directed to
sending advertisements to users based on the web sites they visit.
The Examiner concludes that the claims are directed to the
fundamental economic practice of targeted advertising, an abstract idea,
which is a judicial exception to patent eligibility. Final Act. 2-3; Ans. 3--4.
The Examiner likens the claims to comparing new and stored information
and using rules to identify options, noting that such claims have been found
patent ineligible. Ans. 3 (citing SmartGene, Inc. v. Advanced Biological
Labs., SA, 555 Fed. Appx. 950 (Fed. Cir. 2014) (nonprecedential)).
We agree with and adopt the Examiner's conclusion that the claims
are directed to an abstract idea.
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Appellants argue that "claims that 'address a business challenge ...
that is particular to the Internet' are not considered to be directed to a
judicial exception if they 'differ from other claims found by the courts to
recite abstract ideas' particularly if they do not 'merely recite the
performance of some business practice known from the pre-Internet world
along with a requirement to perform it on the Internet'." Reply Br. 1
(quoting App. Br. 8). On the record before us, we conclude that the claims
in the present application are similar to those found patent ineligible in
SmartGene, reaching the same conclusion as the Examiner. Appellants do
not otherwise persuasively rebut the Examiner's conclusion.
Accordingly, we agree with the Examiner at step one of the Alice
analysis.
Step Two: Whether Additional Elements Transform The Abstract Idea
Into Patent-Eligible Subject Matter
The Examiner also finds the claims do not include limitations that are
"significantly more" than the abstract idea because "the claims do not
include an improvement to another technology or technical field, an
improvement to the functioning of the computer itself, or meaningful
limitations beyond generally linking the use of an abstract idea to a
particular technological environment." Final Act. 3; see Ans. 3--4.
We adopt the Examiner's conclusion that the claims do not transform
the abstract idea into patent-eligible application.
Appellants argue that the claims are not like those in Alice because the
claims here relate to "constructing a micronetwork without private
information of users," which is not "well-understood, routine, or
conventional." App. Br. 11. Appellants also argue "the claims are rooted in
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Application 12/191,412
a particular technological environment and address a challenge that is
particular to that technological environment." Reply Br. 2 (also arguing that
the claims are similar to those found patent-eligible in DDR Holdings, LLC.
v. Hotel.s.com, 773 F.3d 1245 (Fed. Cir. 2014). We disagree. Appellants
state:
As used herein, a "micronetwork" (sometimes referred to herein
as a "micro-affinity group") generally includes a subset of users
who, through their behavior as evidenced on social networking
websites, are more likely to share interests and consumer
preferences. For example, a micronetwork may include
members with a user's social network that share a particular
interest.
Spec. i-f 28. Therefore, we conclude that a micronetwork is a human interest
group (a method of organizing human activity) to which Appellants apply a
computer network to use its well-understood, routine, or conventional
communication functions.
Appellants' arguments are not persuasive because, even if the
construction of a micronetwork roots the claims in networking technology
(i.e., "constructing a micronetwork"), improving how advertising is targeted
within networks does not improve the technology of networking.
Accordingly, for the foregoing reasons, we are not persuaded the
Examiner erred in rejecting independent claim 1under35 U.S.C. § 101 as
directed to patent-ineligible subject matter, or in rejecting on the same basis
independent claims 23 and 24, as well as dependent claims 2-5, 8-11, 13,
14, 16, 19-22, and 25-29, which Appellants do not argue separately. App.
Br. 6-14.
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Application 12/191,412
DECISION
For the reasons above, we affirm the Examiner's decision rejecting
claims 1-5, 8-11, 13, 14, 16, and 19-29.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 41.50(±).
AFFIRMED
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