Ex Parte Passmore et al

Patent Trial and Appeal Board

Mar 19, 2018

12845307 (P.T.A.B. Mar. 19, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO.
12/845,307
100692 7590
Oath Inc./Finnegan
FILING DATE
07/28/2010
03/21/2018
901 New York Ave., NW
Washington, DC 20001
FIRST NAMED INVENTOR
Eric Passmore
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.
10587.0453-00000 9719
EXAMINER
GARTLAND, SCOTT D
ART UNIT PAPER NUMBER
3622
NOTIFICATION DATE DELIVERY MODE
03/21/2018 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):
regional-desk@finnegan.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ERIC PAS SM ORE, SUDHIR ACHUTHAN,
SEAN CHRISTOPHER TIMM,
TRAVIS ADAM WALKER, and VINEET MAHAJAN
Appeal2017-000087
Application 12/845,307
Technology Center 3600
Before CARLA M. KRIVAK, AMBER L. HAGY, and
KARA L. SZPONDOWSKI, Administrative Patent Judges.
SZPONDOWSKI, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
Final Rejection of claims 1-28, which constitute all the claims pending in
this application. We have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM.
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Application 12/845,307
STATEMENT OF THE CASE
Appellants' invention is directed to systems and methods for
managing electronic content, and specifically to information processing,
electronic content generation, and electronic advertising over the Internet.
Spec. i-f 1. Claim 1, reproduced below, is representative of the claimed
subject matter:
1. A computer-implemented method for managing electronic
content on a website, the method including:
receiving, over an electronic network, log data of activities
by Internet users;
filtering, by at least one processor, the log data based on at
least one aspect of the activities;
aggregating, by the at least one processor, the filtered log
data by a predetermined period of time;
calculating a trend concerning one or more keywords
associated with the aggregated log data, based on a change in a
volume of the activities;
presenting to an editor of the website, over the electronic
network, an editorial console including a the topic associated
with the calculated trend and metadata related to the topic;
determining, by the at least one processor, desired
electronic content relating to the topic associated with the
calculated trend;
predicting, by the at least one processor, traffic resulting
from providing the desired electronic content on the website;
determining, based at least on the predicted traffic
associated with providing the desired electronic content, a
monetary value to pay a content contributor for submissions of
the desired electronic content; and
distributing a request for the desired electronic content,
over the electronic network, to solicit submissions from the
content contributor, the request specifying the monetary value
for submissions.
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Application 12/845,307
REJECTIONS
Claims 1-28 stand rejected under 35 U.S.C. § 101 because the
claimed invention is directed to a judicial exception to statutory subject
matter.
Claims 1-5, 7-11, 13-18, and 20-28 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over the combination of Ketchum et al. (US
2010/0198655 Al; published Aug. 5, 2010) ("Ketchum"), Marcia Yudkin,
From Writer to Content Provider, (1999, 2001), downloaded from
http://www.yudkin.com/content.htm on 18 April 2015 ("Yudkin"), and
Grouf et al. (US 2009/0144129 Al; published June 4, 2009) ("Grouf'). 1
Claims 6 and 19 stand alternatively rejected under 35 U.S.C. § 103(a)
as being unpatentable over the combination of Ketchum, Yudkin, Grouf, and
Druzgalski et al. (US 2010/0100537 Al; published April 22, 2010)
("Druzgalski").
Claim 12 stands alternatively rejected under 35 U.S.C. § 103(a) as
being unpatentable over the combination of Ketchum, Yudkin, Grouf, and
Redlich (US 2009/0327057 Al; published Dec. 31, 2009) ("Redlich").
1 Although the heading on page 7 of the Final Office Action states claims
16-26 are rejected under 35 U.S.C. § 103(a), pages 22-23 of the Final
Action discuss the rejection of claims 27 and 28. We consider this oversight
in the heading harmless error as Appellants understands claims 16-28 are
included in this rejection (see App. Br. 10, 22).
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Application 12/845,307
ANALYSIS
35 US.C. § 101 Rejections
We have reviewed the Examiner's rejection in light of Appellants'
arguments in the Briefs. For the reasons discussed below, as well as the
reasons provided by the Examiner in the Final Rejection (Final Act. 3-7,
28-33) and the Examiner's Answer (Ans. 2-18), we are not persuaded by
Appellants' arguments that the Examiner erred in rejecting claims 1-28
under 35 U.S.C. § 101. Although we make the following points for
emphasis, the Examiner has provided a thorough and comprehensive
analysis of the issues raised by Appellants, and we therefore adopt the
Examiner's analysis in that regard (Final Act 3-7, 28-33; Ans. 2-18) as our
own. See, e.g., In re Paulsen, 30 F. 3d 1475, 1478 n.6 (Fed. Cir. 1994).
To determine whether a claim is eligible under § 101, "[ w ]e must first
determine whether the claims at issue are directed to a patent-ineligible
concept." Alice Corp. v. CLS Bankint'l, 134 S. Ct. 2347, 2355 (2014). Ifit
is, we then "consider the elements of each 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." Id.
(quoting Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66,
78-79 (2012)).
In the first step of the Alice analysis, the Examiner determines the
claims are directed to the abstract idea of paying a content contributor for
submissions of desired content, a fundamental economic practice and/or
method of organizing human activities. Final Act. 3-7; see also Ans. 3--4
("to solicit popular or trendy content from contributors"). In the second step
of the Alice analysis, the Examiner determines the claims do not recite
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significantly more than the abstract idea itself, and are merely instructions to
implement the abstract idea on a generic computer. Final Act. 3-7, 30-33;
see also Ans. 4--18.
Appellants argue there is no case law addressing a similar abstract
idea and "no evidence to support that the claims are merely directed to
'organizing human activities."' App. Br. 11-12; see also Reply Br. 3--4.
Appellants further argue the claims "do not threaten to monopolize or 'pre-
empt' a well-known idea or concept" because "there are numerous ways to
use or implement the supposed alleged abstract idea without practicing the
pending claims." App. Br. 12; see also Reply Br. 4--5.
We agree with the Examiner that the claims are directed to an abstract
idea. Claim 1 generally recites the steps of receiving log data of activities by
Internet users, filtering the log based data on at least one aspect of the
activities, aggregating the filtered log data by a predetermined period of
time, calculating a trend concerning one or more keywords associated with
the aggregated log data, presenting to an editor the topic associated with the
calculated trend and metadata related to the topic, determining desired
electronic content relating to the topic associated with the calculated trend,
predicting traffic resulting from providing the desired electronic content on
the website, determining a monetary value to pay a content contributor for
submissions of the desired electronic content, and distributing a request for
the desired content to solicit submissions from the content contributor.
Independent claims 13 and 15 recite similar limitations. Appellants describe
the invention as including "managing electronic content, determining topics
in high demand, calculating the value of electronic content, and requesting
electronic content from users, such as over the Internet." Spec. i-f 6.
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Although the claims describe using a computer to perform Appellants'
method, we agree with the Examiner that the recited steps are directed to the
performance of basic human activities that have been performed for years,
particularly in the news industry. See Ans. 5-9; e.g., CyberSource Corp. v.
Retail Decisions, Inc., 654 F.3d 1366, 1375 (Fed. Cir. 2011) ("That purely
mental processes can be unpatentable, even when performed by a computer,
was precisely the holding of the Supreme Court in Gottschalk v. Benson.").
Moreover, Appellants' invention is not meaningfully different from
other claims found abstract by our reviewing court. See, e.g., Elec. Power
Grp. v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016) (claims directed
to collection, manipulation, and display of data); Intellectual Ventures I LLC
v. Capital One Bank (USA), 792 F.3d 1363, 1370 (Fed. Cir. 2015)
(customizing information and presenting it to users based on particular
characteristics); Content Extraction and Transmission LLC v. Wells Fargo
Bank, National Ass 'n, 776 F.3d 1343, 1347 (Fed. Cir. 2014) ("collecting
data, ... recognizing certain data within the collected data set, and ...
storing that recognized data in a memory"); Cyberfone Systems, LLC v. CNN
Interactive Grp, Inc., 558 F. App'x 988, 992 (Fed. Cir. 2014)
(nonprecedential) ("using categories to organize, store, and transmit
information is well-established").
Appellants' preemption argument is likewise unpersuasive of
Examiner error. Although preemption "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 (citing Mayo Collaborative
Services v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1293 (2012))), "the
absence of complete preemption does not demonstrate patent eligibility."
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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) ("[T]hat the claims do not preempt all price optimization
or may be limited to price optimization in the e-commerce setting do not
make them any less abstract.").
Turning to the second step of the Alice analysis, Appellants argue "the
claims are 'improvements to another technology or technical field"' because
the claims "improve at least the fields of managing web traffic and
electronic content, by providing computerized solutions for determining
topics in high demand, calculating the value of electronic content to such
topics, and requesting electronic content over the Internet." App. Br. 14; see
also Reply Br. 6. According to Appellants, these improvements were
needed "because conventional methods and techniques are unable to, among
other things, manage large quantities of electronic content and process high
volumes of online data to efficiently determine trends, pricing, etc." App.
Br. 14. Citing to DDR Holdings, LLC v. Hotels.com, 773 F.3d 1245 (Fed.
Cir. 2014), Appellants also argue the claims "overcome a problem
specifically arising in the realm of computer networks." App. Br. 15.
Appellants argue that, like the claims in DDR Holdings, Appellants' claims
"yield a 'result that overrides the routine and conventional sequence of
events,' to address a technical problem of which there is no 'conventional'
counterpart." App. Br. 16.
Appellants have not directed our attention to anything in the record
that shows, nor can we find, any specialized computer hardware or other
"inventive" computer components are required. See Spec. i-fi-177-85. Rather
than reciting additional elements that amount to "significantly more" than
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the abstract idea, the pending claims, at best, add only a "electronic
network," "processor," "editorial console," and "server," i.e., generic
components (see Spec. i-fi-177-85), which do not satisfy the inventive
concept. See, e.g., DDR Holdings, 773 F.3d at 1256 (internal quotation
marks omitted) ("[A ]fter Alice, there can remain no doubt: recitation of
generic computer limitations does not make an otherwise ineligible claim
patent-eligible. The bare fact that a computer exists in the physical rather
than purely conceptual realm is beside the point."). Rather, conventional
elements of a generic computer system are employed for their inherent
functions to perform as expected; that is, receiving, filtering, aggregating,
calculating, presenting, determining, predicting, and distributing types of
information.
Nor have Appellants adequately shown why the claimed invention
"address[es] a technical problem of which there is no 'conventional'
counterpart" or effects "improvements to another technology or technical
field." See App. Br. 14, 16. Appellants' alleged improvement is in the
automation of the abstract idea, which is insufficient to confer patent
eligibility. See Bancorp Servs., L.L. C. v. Sun Life Assurance Co. of Can.
(US.), 687 F.3d 1266, 1278 (Fed. Cir. 2012) ("[T]he fact that the required
calculations could be performed more efficiently via a computer does not
materially alter the patent eligibility of the claimed subject matter."); OIP
Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1363 (Fed. Cir. 2015)
(relying on a computer to perform routine tasks more quickly or more
accurately is insufficient to render a claim patent-eligible). Moreover, as the
Examiner points out, Appellants' claims do not require large volumes of
quantity or data. Ans. 14. As such, the claims amount to nothing
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significantly more than an instruction to implement the abstract idea on a
generic computer - which is not enough to transform an abstract idea into a
patent-eligible invention. See Alice, 134 S. Ct. at 2360.
Accordingly, we sustain the Examiner's 35 U.S.C. § 101 rejection of
claims 1-28.
35 US. C. § 103 Rejections
Appellants argue Yudkin is not prior art to the claimed invention.
App. Br. 17. According to Appellants, the Examiner does not "present[] any
evidence that the April 18, 2015, downloaded and cited version of the
website for Yudkin was publically available prior to the filing date of the
present application, which is July 28, 2010." App. Br. 17-18; see also
Reply Br. 9. Appellants argue because "[t]he content of websites can be
updated or modified over time, irrespective of copyright notices or dates ...
there is no evidence of record that affirms what content was publicly
available on the URL ... of Yudkin prior to July 28, 2010." App. Br. 18; see
also Reply Br. 9. Appellants argue the last modified date for Yudkin is
September 14, 2015. App. Br. 18; see also Reply Br. 10.
The Examiner finds the content of Yudkin indicates a copyright date
of 2001, and the Examiner was unable to find any evidence that would
appear to invalidate that date provided on Yudkin itself. Ans. 18-19. The
Examiner further finds that a Google search indicates a creation date of
February 1, 2001 and another indexing date of October 7, 2007 for the
Yudkin reference. Ans. 19-20.
The Yudkin reference is an article titled "From Writer to Content
Provider" written by Marcia Yudkin, and available on her website,
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www.yudkin.com. At the bottom of the Yudkin reference it states
"Copyright 2001 Marcia Yudkin." We agree with the Examiner that the
Yudkin reference's copyright date of 2001, along with the Google creation
date of February 1, 2001, and indexing date of October 7, 2007, for that
page,2 adequately indicates that the Yudkin reference was publicly available
before the July 28, 2010, filing date. Appellants present no countervailing
evidence suggesting changes to the content of the Yudkin reference itself,
rather than to the web page generally. For example, the web page the
Yudkin reference is located on (www.yudkin.com/content.htm) also includes
sidebars on the left and right side of the page, which include links to books
by the author, a place to subscribe to the author's marketing newsletter, and
links to other pages on the web site. Although Appellants indicate a last
modified date of the web page of September 14, 2015, there is no indication
that the content of the reference article has changed, as opposed to the
information located in the sidebars of the page. 3 Accordingly, Appellants
have not sufficiently shown the Examiner erred.
Appellants also argue Yudkin does not teach or suggest "predicting,
by the at least one processor, traffic resulting from providing the desired
electronic content on the website," "determining ... a monetary value to pay
a content contributor," and "distributing a request for the desired electronic
content, over the electronic network," as recited in independent claim 1.
2 Although Appellants indicate they were unable to replicate the Examiner's
Google search (App. Br. 18, Reply Br. 10), we were able to do so by
following the instructions as set forth by the Examiner on pages 19 and 20 of
the Answer.
3 We note the information currently showing in the left sidebar differs from
the information showing in the left sidebar when the reference was
downloaded by the Examiner on April 14, 2015.
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App. Br. 20, emphasis omitted. Specifically, Appellants argue Yudkin is
"limited primarily to a listing of content types with associated examples of
how others have made money providing such content." App. Br. 20; see
also Reply Br. 12. Appellants argue Grouf fails to cure the deficiencies of
Yudkin, and Ketchum does not explicitly disclose the disputed limitations.
App. Br. 19--21; see also Reply Br. 11-13.
We are not persuaded by Appellants' arguments. The Examiner relies
on the combination of Ketchum, Yudkin, and Grouf to teach or suggest the
three disputed limitations. Final Act. 8-10; Ans. 21-24. Although the
Examiner finds Ketchum fails to explicitly teach or suggest the three
disputed limitations, the Examiner finds "Ketchum is actually rather close"
and comprehensively explains how the combination of Ketchum, Yudkin,
and Groufteaches or suggests the disputed limitations. Ans. 21-24. We
agree with and adopt the Examiner's findings. Appellants' arguments
directed to Yudkin alone are insufficient to persuasively rebut the
Examiner's findings.
Accordingly, we are not persuaded the Examiner erred in rejecting
independent claim 1 under 35 U.S.C. § 103, and, therefore, we sustain the
Examiner's rejection. For the same reasons, we sustain the Examiner's 35
U.S.C. § 103 rejection of independent claims 13 and 15, which recite similar
limitations, and dependent claims 2-12, 14, and 16-28, which were not
separately argued.
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DECISION
The Examiner's 35 U.S.C. § 101 rejection of claims 1-28 is affirmed.
The Examiner's 35 U.S.C. § 103 rejection of claims 1-28 is affirmed.
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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