Ex Parte Naiem

Patent Trial and Appeal Board

Jan 19, 2018

13672317 (P.T.A.B. Jan. 19, 2018)

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.
13/672,317 11/08/2012 Ahmed Essam Naiem 17982/002002 6057
22511 7590 01/23/2018
O SH ATT ANfi T I P
EXAMINER
TWO HOUSTON CENTER LONG, MEREDITH A
909 FANNIN, SUITE 3500
HOUSTON, TX 77010 ART UNIT PAPER NUMBER
3688
NOTIFICATION DATE DELIVERY MODE
01/23/2018 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@oshaliang.com
hathaway@oshaliang.com
escobedo @ oshaliang. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte AHMED ESSAM NAIEM
Appeal 2016-0047471
Application 13/672,3172
Technology Center 3600
Before MURRIEL E. CRAWFORD, NINA L. MEDLOCK, and
KENNETH G. SCHOPFER, Administrative Patent Judges.
MEDLOCK, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1—3, 5—15, and 17—20. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.
1 Our decision references Appellant’s Appeal Brief (“Br.,” filed August 4,
2015) and the Examiner’s Answer (“Ans.,” mailed January 25, 2016) and
Final Office Action (“Final Act.,” mailed March 6, 2015).
2 Appellant identifies F16Apps as the real party in interest. Br. 4.
Appeal 2016-004747
Application 13/672,317
CLAIMED INVENTION
Appellant’s claimed invention relates to “a method and system for
obtaining targeted advertising without submitting data to advertisers specific
to the user” (Spec. 115).
Claims 1,10, and 20 are the independent claims on appeal. Claim 1,
reproduced below, is illustrative of the claimed subject matter:
1. A system comprising:
an evaluation engine, executing on a client device,
configured to:
obtain a plurality of media attributes of a plurality
of media items associated with a user;
determine a media category and a media
subcategory based on the plurality of attributes, wherein
the media category comprises the media subcategory;
receive, from a user application on the client device,
a request for the media subcategory, wherein the request
comprises the media category;
identify, in response to the request, the media
subcategory associated with the media category;
determine a source of the request; and
provide, to the client device, the media subcategory
for the media category based on the source of the request;
a secure storage configured to:
store the media subcategory for access and
identification by the evaluation engine;
an advertising client, executing on the client device,
configured to:
obtain, from the evaluation engine, the media
category;
generate an advertising request comprising the
media category and excluding the media subcategory;
submit, to an advertising server, the advertising
request; and
receive, from the advertising server, a plurality of
advertisements corresponding to the media category; and
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Application 13/672,317
a media selector, executing on the client device,
configured to:
identify a subset of the plurality of advertisements
corresponding to the media subcategory; and
present an advertisement of the subset to the user.
REJECTION
Claims 1—3, 5—15, and 17—20 are rejected under 35 U.S.C. § 101 as
directed to non-statutory subject matter.
ANALYSIS
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: “[ljaws 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).
The Supreme Court, in Alice, reiterated the two-step framework
previously set forth in Mayo Collaborative Services v. Prometheus
Laboratories, Inc., 566 U.S. 66 (2012), “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., 134 S. Ct.
at 2355. The first step in that analysis is to “determine whether the claims at
issue are directed to one of those patent-ineligible concepts.” Id. If the
claims are not directed to a patent-ineligible concept, e.g., an abstract idea,
the inquiry ends. Otherwise, the inquiry proceeds to the second step where
the elements of the claims are considered “individually and ‘as an ordered
combination”’ to determine whether there are additional elements that
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Application 13/672,317
‘“transform the nature of the claim’ into a patent-eligible application.” Id.
(quoting Mayo, 566 U.S. at 79-80).
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, 566 U.S. at 71. Therefore, the Federal Circuit has
instructed that claims are to be considered in their entirety to determine
“whether their character as a whole is directed to excluded subject matter.”
McRO, Inc. v. Bandai Namco Games Am., Inc., 837 F.3d 1299, 1312
(Fed. Cir. 2016) (quoting Internet Patents Corp. v. Active Network, Inc.,
790 F.3d 1343, 1346 (Fed. Cir. 2015)).
Appellant maintains here that the § 101 rejection cannot be sustained,
because the Examiner has provided “absolutely no evidence” to support the
Examiner’s findings that the claims are directed to an abstract idea, and has,
therefore, failed to establish a prima facie case of patent-ineligibility (Br. 8).
As an initial matter, we are aware of no controlling precedent that
requires the Office to identify specific references to support a finding that a
claim is directed to an abstract idea. Nor, contrary to Appellant’s assertion
(Br. 8), did this Board hold in Ex parte Renald Poisson, Appeal 2012011084
(PTAB February 27, 2015) that there is any such requirement.3 Instead, the
Federal Circuit has repeatedly observed that “the prima facie case is merely
a procedural device that enables an appropriate shift of the burden of
production.” Hyatt v. Dudas, 492 F.3d. 1365, 1369 (Fed. Cir. 2007) (citing
In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992)). The court has, thus,
held that the USPTO carries its procedural burden of establishing a prima
3 We would not be bound, in any event, by a non-precedential decision of
another panel of the Board.
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facie case when its rejection satisfies the requirements of 35 U.S.C. § 132 by
notifying the applicant of the reasons for the rejection, “together with such
information and references as may be useful in judging of the propriety of
continuing the prosecution of [the] application.” See In re Jung, 637 F.3d
1356, 1362 (Fed. Cir. 2011). Thus, all that is required of the Office is that it
sets forth the statutory basis of the rejection in a sufficiently articulate and
informative manner as to meet the notice requirement of § 132. Id.', see also
Chester v. Miller, 906 F.2d 1574, 1578 (Fed. Cir. 1990) (Section 132 “is
violated when the rejection is so uninformative that it prevents the applicant
from recognizing and seeking to counter the grounds for rejection.”).
Appellant does not contend here that the § 101 rejection was not
understood or that the Examiner otherwise failed to satisfy the requirements
of § 132. Indeed, Appellant’s understanding of the rejection is clearly
manifested by Appellant’s response, as set forth in the Appeal Brief.
Appellant further argues that even if the claims are directed to an
abstract idea, the claims are nonetheless patent-eligible because the claims
“include an inventive concept sufficient to transform the claimed abstract
idea into a patent-eligible application” (Br. 8—9). Appellant likens the
present claims to those at issue in DDR Holdings, LLC v. Hotels.com, L.P.,
773 F.3d 1245 (Fed. Cir. 2014) {id. at 9-11). But, we find no parallel
between the present claims and those at issue in DDR Holdings.
The claims at issue in DDR Holdings were directed to retaining
website visitors, and in particular to a system that modified the conventional
web browsing experience by directing a user of a host website, who clicks
an advertisement, to a “store within a store” on the host website, rather than
to the advertiser’s third-party website. DDR Holdings, 773 F.3d at 1257—
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1258. The court determined that “the claims address a business challenge
(retaining website visitors) [that] is a challenge particular to the Internet.”
Id. at 1257. The court also determined that the invention was “necessarily
rooted in computer technology in order to overcome a problem specifically
arising in the realm of computer networks,” and that the claimed invention
did not simply use computers to serve a conventional business purpose. Id.
Rather, there was a change to the routine, conventional functioning of
Internet hyperlink protocol. Id.
Appellant maintains that the pending claims, like the claims in DDR
Holdings, are directed to a problem (i.e., “allowing for targeted advertising
while at the same time protecting a user’s privacy from unknown third
parties”) rooted in computer technology — “specifically, the massive loss of
privacy by the Internet that is not present in the brick and mortar context”
(Br. 9—10). Yet, unlike the situation in DDR Holdings, it is unclear how
selecting advertising to display to a user while maintaining user privacy is “a
challenge particular to the Internet.” Appellant cannot reasonably deny that
targeted advertising is a long-standing and well-known economic practice,
and has been practiced as long as markets have been in operation. See Tuxis
Technologies, LLC v. Amazon.com, Inc., No. CV 13-1771-RGA, 2014 WL
4382446, at *5 (D. Del. Sept. 3, 2014) (Matching consumers with a given
product or service “has been practiced as long as markets have been in
operation.”). The problem of maintaining consumer privacy existed before,
and still exists outside of computer technology and computer networks. As
the Examiner observes, “the problem of massive loss of privacy may be
exacerbated by the Internet due to larger amounts of data and ease of
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Application 13/672,317
gathering such data, [but] the problem is not rooted in computer technology”
(Ans. 3).
Appellant further argues that, like the claims in DDR Holdings, the
present claims specify ‘“how interactions with a network are manipulated to
yield a desired result —a result that overrides the routine and conventional
sequence of events ordinarily triggered’” (Br. 9). But Appellant does not
identify the “interactions with the Internet” that the claimed invention
allegedly manipulates; nor does Appellant otherwise explain how the
claimed invention makes other than routine and conventional use of the
Internet. Cf. Intellectual Ventures ILLC v. Capital One Bank (USA), 792
F.3d 1363, 1371 (Fed. Cir. 2015) (“claims here do not address problems
unique to the Internet, so DDR has no applicability”). In fact, independent
claims 1,10, and 20 do not even recite the Internet or a computer network.
We find nothing in the Specification, nor does Appellant point us to
anything in the Specification, to indicate that the particular operations
recited in the claims require any specialized computer hardware or other
inventive computer components, invoke any assertedly inventive
programming, or that the claimed invention is implemented using other than
generic computer components to perform generic computer functions, e.g.,
receiving, processing, transmitting, and displaying information, which is not
enough for patent-eligibility.
Appellant argues that, as in DDR Holdings, the claims “require an
override to the normal sequence of events” (Br. 10—11). But the events that
Appellant alleges are a departure from the “normal sequent of events”
merely relate to implementation of the abstract idea and do not relate to a
departure from the normal or routine functioning of the nework itself.
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We also are not persuaded of Examiner error to the extent that
Appellant argues that the claims are patent-eligible because the claims are
allegedly non-obvious (Br. 11—12). A finding of novelty or non-obviousness
does not automatically lead to the conclusion that the claimed subject matter
is patent-eligible. Although the second step in the MayolAlice 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. “Groundbreaking,
innovative, or even brilliant discovery does not by itself satisfy the § 101
inquiry.” Ass ’n. for Molecular Pathology v. Myriad Genetics, Inc., 569 U.S.
576, 591 (2013). A novel and non-obvious claim directed to a purely
abstract idea is, nonetheless, patent-ineligible. See Mayo, 566 U.S. at 90.
See also Diamond v. Diehr, 450 U.S. 175, 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.”).
We have considered Appellant’s further arguments, but we find them
unpersuasive of Examiner error. Therefore, we sustain the Examiner’s
rejection of claims 1—3, 5—15, and 17—20 under 35 U.S.C. § 101.
DECISION
The Examiner’s rejection of claims 1—3, 5—15, and 17—20 under
35 U.S.C. § 101 is affirmed.
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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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