13216786 (P.T.A.B. Aug. 30, 2018)

Ex Parte NAM et al

Patent Trial and Appeal BoardAug 30, 2018

13216786 (P.T.A.B. Aug. 30, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/216,786 08/24/2011 30593 7590 09/04/2018 HARNESS, DICKEY & PIERCE, P.L.C. P.O. BOX 8910 RESTON, VA 20195 FIRST NAMED INVENTOR Kyung Bo NAM 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. 16634-000077 /US 4782 EXAMINER OSMAN BILAL AHME, AF AF ART UNIT PAPER NUMBER 3682 NOTIFICATION DATE DELIVERY MODE 09/04/2018 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): dcmailroom@hdp.com pshaddin@hdp.com jcastellano@hdp.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte KYUNG BO NAM and CHOONG HEE LEE Appeal2017-003964 Application 13/216,786 Technology Center 3600 Before JOHN A. EV ANS, BETH Z. SHAW, and JASON M. REPKO, Administrative Patent Judges. EV ANS, Administrative Patent Judge. DECISION ON APPEAL Appellants 1 seek our review under 35 U.S.C. Â§ 134(a) of the Examiner's final rejection of Claims 1-20. Br. 1. We have jurisdiction under 35 U.S.C. Â§ 6(b ). We REVERSE. 2 1 Appellants identify NHN Corporation, as the real party in interest. Br. 2. 2 Rather than reiterate the arguments of Appellants and the Examiner, we refer to the Appeal Brief (filed January 5, 2016, "Br."); the Examiner's Answer (mailed September 16, 2016, "Ans."); the Final Action (mailed August 8, 2015, "Final Act."); and the Specification (filed August 24, 2011, "Spec.") for their respective details. Appeal2017-003964 Application 13/216,786 STATEMENT OF THE CASE The Invention The claims relate to an internet telematics system and method to provide web content. See Abstract. Claims 1 and 11 are independent. Claim 1 is illustrative and is reproduced below with some formatting added: 1. A system to provide a telematics service, the system compnsmg: a telematics system comprising a navigation terminal; a telematics server including a processor, the processor including, a request information receiver configured to receive request information from the telematics system, a content selector configured to select content associated with the request information from a content server, a content providing unit configured to provide the selected content to the telematics system, an update monitoring unit configured to monitor whether information on a webpage is updated by communicating with a server providing the webpage, the monitoring being in response to receiving the request information when the request information corresponds to webpage information associated with a user, an advertising information generator configured to generate advertising information associated with the request information by sending the advertising information to an advertisement server and receiving an advertisement from the advertisement server, an advertising information providing unit configured to provide the advertisement based on the advertising information to the telematics system during a 2 Appeal2017-003964 Application 13/216,786 portion of the provided content when a sound output is absent such that the advertisement is provided without disrupting the sound output of the provided content, wherein the telematics system is configured to output the content in an auditory form. (Br., Claims Appendix, 26.) References and Rejections Steele, et al., US 2002/0046084 Al Apr. 18, 2002; hereinafter "Steele" Odinak US 2005/0065779 Al Mar. 24, 2005 Busch US 2008/0248815 Al Oct. 9, 2008 Shuart US 2009/0134991 Al May 28, 2009 The claims stand rejected3 as follows: 1. Claims 1-20 stand rejected under 35 U.S.C. Â§ 101 as is directed to non-statutory subject matter. Final Act. 6-7. 2. Claims 1-3, 5-13 and 15-20 stand rejected under 35 U.S.C. Â§ I03(a) as being unpatentable over Shuart, Steele, and Odinak. Final Act. 9- 13. 3. Claims 4 and 14 stand rejected under 35 U.S.C. Â§ I03(a) as being unpatentable over Shuart, Steele, Odinak, and Busch. Final Act. 13- 14. 3 The rejections under 35 U.S.C. Â§Â§ 112(1) and 112(2) are withdrawn. (See Ans. 2.) 3 Appeal2017-003964 Application 13/216,786 ANALYSIS We have reviewed the rejection of Claims 1-20 in light of Appellants' arguments that the Examiner erred. We consider Appellants' arguments seriatim, as they are presented in the Appeal Brief, pages 7-24. CLAIMS 1-3, 5-13 AND 15-20: OBVIOUSNESS OVER SHUART, STEELE, AND ODIN AK. Independent Claim 1 recites, inter alia: an advertising information providing unit configured to provide the advertisement based on the advertising information to the telematics system during a portion of the provided content when a sound output is absent such that the advertisement is provided without disrupting the sound output of the provided content[ J Claim 1 ( emphasis added). Appellants contend the prior art fails to teach the claimed insertion of advertisements into a content stream, but only during portions where the sound output of the content is absent. Br. 8. The Examiner finds the combination of Shuart and Steele fails to teach the disputed limitation. Final Act. 10. The Examiner finds Odinak supplies the missing limitation by teaching a system and method that provides greater flexibility for a user to obtain information and complete transactions related to a wide range of products and services advertised over the radio. Id. (citing Odinak, ,r 32). Appellants contend Odinak teaches modifying content requested by a user, but only modifications to visual, not auditory content. Br. 10. 4 Appeal2017-003964 Application 13/216,786 Appellants specifically argue that Odinak fails to disclose modifying audio content by determining where/when sound output in the audio content exists, and then inserting an advertisement within that silent period without disturbing the sound output of the provided audio content, as claimed. Id. The Examiner disagrees with Appellants because: Claim 1 does not recite modifying audio content by first determining where/when sound output in the audio content exists and then inserting an advertisement within that silent period without disturbing the sound output of the provided audio content. Ans. 7-8. We disagree with the Examiner. The disputed limitation of Claim 1 recites, inter alia, "during a portion of the provided content when a sound output is absent such that the advertisement is provided without disrupting the sound output of the provided content. The claim explicitly recites that which the Examiner incorrectly finds the claim does not. Independent Claim 11 comprises commensurate recitations. In view of the foregoing, we decline to sustain the rejection of Claims 1-3, 5-13 and 15-20, dependent thereupon. CLAIMS 4 AND 14: OBVIOUSNESS OVER SHUART, STEELE, 0DINAK, AND BUSCH. Appellants contend Busch does not cure the deficiencies argued with regard to independent Claims 1 and 11. Br. 13. The Examiner's Answer does not discuss Claims 4 and 14. In view of the foregoing, we decline to sustain the rejection of Claims 4 and 14. 5 Appeal2017-003964 Application 13/216,786 CLAIMS 1-20: NON-STATUTORY SUBJECT MATTER. The Examiner finds the claims are directed to an abstract idea because they are merely directed towards a navigational terminal, and a server that is using a processor to provide advertisement information, based on requested information which is received from a telematics system. Ans. 2. Moreover, the Examiner finds that using a processor to provide requested advertising information is a fundamental economic practice which requires no more than a generic computer to perform generic computer functions that are well- understood, routine and conventional activities previously known to the industry. Id. The Examiner further finds the claims do not provide either 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. Id. 2-3. 35 USCÂ§ 101 Section 101 provides that a patent may be obtained for "any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof." 35 U.S.C. Â§ 101. The Supreme Court has long recognized, however, that Â§ 101 implicitly excludes "laws of nature, natural phenomena, and abstract ideas" from the realm of patent-eligible subject matter, as monopolization of these "basic tools of scientific and technological work" would stifle the very innovation that the patent system aims to promote. Alice Corp. Pty. Ltd. v. CLS Bankint'l, 134 S. Ct. 2347, 2354 (2014) (quoting Ass 'nfor Molecular Pathology v. Myriad Genetics, Inc., 133 S. Ct. 2107, 2116 (2013)); see also Mayo Collaborative Servs. v. 6 Appeal2017-003964 Application 13/216,786 Prometheus Labs., Inc., 132 S. Ct. 1289, 1294--97 (2012); Diamond v. Diehr, 450 U.S. 175, 185 (1981). Instead of using a definition of an abstract idea, "[what] the decisional mechanism courts now apply is to examine earlier cases in which a similar or parallel descriptive nature can be seen-what prior cases were about, and which way they were decided." Amdocs (Isr.) Ltd. v. Openet Telecom, Inc., 841 F.3d 1288, 1294 (Fed. Cir. 2016) (citing Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353-54 (Fed. Cir. 2016)); accord July 2015 Update: Subject Matter Eligibility4 (instructing Examiners that "a claimed concept is not identified as an abstract idea unless it is similar to at least one concept that the courts have identified as an abstract idea."). As part of this inquiry, we must "look at the 'focus of the claimed advance over the prior art' to determine if the claim's 'character as a whole' is directed to excluded subject matter." Affinity Labs of Tex., LLC v. DirecTV, LLC, 838 F.3d 1253, 1257 (Fed. Cir. 2016). Alice Step 1 The Supreme Court has instructed us to use a two-step framework to "distinguish[] patents that claim laws of nature, natural phenomena, and abstract ideas from those that claim patent-eligible applications of those concepts." Alice, 134 S. Ct. at 2355. At the first step, we determine whether the claims at issue are "directed to" a patent-ineligible concept. Id. Under the first step, the Examiner finds representative5 claim 1 to be directed 4 United States Patent and Trademark Office, July 2015 Update: Subject Matter Eligibility (July 30, 2015), https://www.uspto.gov/sites/default/files/ documents/ieg-july-2015-update.pdf; see MPEP 2106.04(a). 5 The Examiner finds, and Appellants do not dispute, claim 1 to be 7 Appeal2017-003964 Application 13/216,786 toward a judicial exception, namely the abstract idea of providing advertisements using telematics systems. Final Act. 6. The Examiner finds the limitations that set forth this abstract idea are: "a request information receiver ... ," "content selector ... ," "content provider ... ," "advertising information generator ... ," and "an advertising information providing unit ..... " Id. Such limitations are considered to be abstract because the limitations are directed comparing new and stored information and using rules to identify options which courts have found to be abstract ideas. Id. (citing Smart Gene) 6â€¢ Appellants contend that there is no implication, either individually or as an ordered combination, within the limitations of the claims that would lead one of ordinary skill in the art to determine that the telematics system would be primarily used in commerce, an economic or banking field, nor that the processor, navigation terminal, or servers recited within the claims would necessarily implicate and preempt a recognized fundamental economic practice. Br. 1 7. Claim Construction. As an initial matter, we note that ... claim construction is helpful to resolve the question of patentability under Â§ 101. McRo v. Bandai Namco Games America Inc., 837 F.3d 1299, 1311-12 (Fed. Cir. 2016). "We begin with a construction of the claim." Cf State St. Bank & Trust Co. v. "representative." Final Act. 6. We adopt the Examiner's formulation. 6 Smart Gene v. Advanced Biological Labs, 555 Fed. Appx. 950 (Fed. Cir. 2014). 8 Appeal2017-003964 Application 13/216,786 Signature Fin. Group, 149 F.3d 1368, 1370 (Fed. Cir. 1998) ("[W]hether the ... patent is invalid for failure to claim statutory subject matter under Â§ 101 [ ] is a matter of both claim construction and statutory construction."). Ex parte Renald Poisson, Appeal 2012-011084, slip op. at_ (PTAB 02/27/2015). Because "all inventions at some level embody, use, reflect, rest upon, or apply laws of nature, natural phenomena, or abstract ideas," (Mayo 132 S.Ct. 1289 at 1293,; see also In re TL! Commc'ns LLC Patent Litig., 823 F.3d 607, 611 (Fed. Cir. 2016)), "the claims are considered in their entirety to ascertain whether their character as a whole is directed to excluded subject matter." Internet Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1346 (Fed. Cir. 2015). The Federal Circuit has previously cautioned that courts "must be careful to avoid oversimplifying the claims" by looking at them generally and failing to account for the specific requirements of the claims. McRo, 837 F.3d at 1313 [bolding omitted] (quoting TL! Commc'ns, 823 F.3d at 611; see also Diehr, 450 U.S. at 189 n.12, 101 S.Ct. 1048). Specific Limitations. In order to avoid oversimplification, we "look to whether the claims in these patents focus on a specific means or method that improves the relevant technology or are instead directed to a result or effect that itself is the abstract idea and merely invoke generic processes and machinery. McRo, at 1314 [bolding omitted] (quoting Enfzsh LLC v. Microsoft Corp., 822 F.3d 1327, 1336 (Fed. Cir. 2016); see also Rapid Litig. Mgmt. Ltd. v. CellzDirect, Inc., 827 F.3d 1042, 1048 (Fed. Cir. 2016)). The Examiner finds the limitations that set forth this abstract idea are: 9 Appeal2017-003964 Application 13/216,786 "a request information receiver ... ," "content selector ... ," "content provider ... ," "advertising information generator ... ," and "an advertising information providing unit .... " Final Act. 6. Appellants contend the claims recite a telematics system and a method for providing a telematics service. Br. 16-17. We interpret Appellants as arguing that, in construing the claims, the Examiner characterizes them at too high a level of abstraction. We agree with Appellants. The Examiner "describe[ s] the claims at an impermissibly "high level of abstraction," such that they are "untethered from the language of the claims." Enfzsh, 822 F.3d at 1337. Claim 1 recites "a telematics system comprising a navigation terminal." The system comprises "a navigation terminal" ( a device) "installed in a vehicle" and a "communication terminal [which] may be any suitable mobile device including ... a portable personal computer (PC) or a mobile phone." Spec., ,r,r 30, 31. The IEEE defines a "system" as a "set of interconnected elements that achieve a given objective through the performance of a specified function," or alternatively, as "[h Jard ware and software collectively organized to achieve an operational objective." IEEE 1007, 1143--44. Appellants argue the claimed system solves a specific 7 IEEE, IEEE 100 The Authoritative Dictionary of IEEE Standards Terms, Seventh Edition (2000). ("IEEE 100"). Accord Arthrocare Corp. v. Smith & Nephew, Inc., 2003 U.S. Dist. LEXIS 5976 (D. Del., Apr. 9, 2003) ("an assemblage or combination of things or parts forming a unitary whole"); ABB Automation Inc. v. Schlumberger Resource Management Services, Inc., 2003 U.S. Dist. LEXIS 5002 (D. Del., Mar. 27, 2003) ("an integrated assemblage of hardware and/or software elements operating together to accomplish a prescribed end purpose"). 10 Appeal2017-003964 Application 13/216,786 problem of providing information, such as advertising, but without disrupting the sound output of the provided content. Br. 18. The Examiner's characterization of the claims ignores this limitation of providing information without disrupting the sound content. Accordingly, we conclude the claims are directed to this technological solution (providing advertising without disrupting a sound output of provided content) to a technological, non-manual problem (providing a telematics service) and are therefore not directed to an abstract idea. Our reviewing court has approved claims of this general character. See, e.g., McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299, 1316 (Fed. Cir. 2016) (finding eligible claims that use "limited rules" in a computerized "process specifically designed to achieve an improved technological result in conventional industry practice"); DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1256-1259 (Fed. Cir. 2014) (finding eligible claims directed to creation of an improved type of web page); see also Trading Techs. Int'!, Inc. v. CQG, Inc., 675 F. App'x 1001, 1005 (Fed. Cir. 201 7) ("Abstraction is avoided or overcome when a proposed new application or computer-implemented function is not simply the generalized use of a computer as a tool to conduct a known or obvious process, but instead is an improvement to the capability of the system as a whole."); Amdocs (Israel) Ltd. v. Openet Telecom, Inc., 841 F.3d 1288, 1300--01 (Fed. Cir. 2016) ( finding claims eligible where, although "[ t ]he solution requires arguably generic components," a specific limitation "requires that these generic components operate in an unconventional manner to achieve an 11 Appeal2017-003964 Application 13/216,786 improvement in computer functionality"). The instant claims are eligible because they are directed to an improvement in the functioning of a computer in providing a second content without disturbing the provision of a first content. We note that, because the claims are narrowly directed to providing advertising without disrupting the sound content of provided content, any preemption is appropriately limited to Appellants' contribution to the art and does not extend to advertising or providing content generally. For these reasons, we decline to sustain the rejection of claims 1-20 under 35 U.S.C. Â§ 101. DECISION The rejection of claims 1-20 under 35 U.S.C. Â§ 101 is REVERSED. The rejections of claims 1-20 under 35 U.S.C. Â§ 103(a) are REVERSED. REVERSED 12