Ex Parte Prakah-Asante et al

Patent Trial and Appeal Board

Jun 13, 2017

13444248 (P.T.A.B. Jun. 13, 2017)

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.
13/444,248 04/11/2012 Kwaku O. Prakah-Asante 83220355 9876
28395 7590 06/15/2017
RROOKS KTTSHMAN P C /FfTET EXAMINER
1000 TOWN CENTER MILLER, ALAN S
22ND FLOOR
SOUTHFIELD, MI 48075-1238 ART UNIT PAPER NUMBER
3623
NOTIFICATION DATE DELIVERY MODE
06/15/2017 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 @brookskushman.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KWAKU O. PRAKAH-ASANTE,
PERRY ROBINSON MACNEILLE, and
GARY STEVEN STRUMOLO
Appeal 2016-001150
Application 13/444,2481
Technology Center 3600
Before CAROLYN D. THOMAS, JON M. JURGOVAN, and
PHILLIP A. BENNETT, Administrative Patent Judges.
BENNETT, Administrative Patent Judge.
DECISION ON APPEAL
1 Appellants’ Brief (“App. Br.”) identifies the real party in interest as Ford
Global Technologies, LLC. App. Br. 2.
Appeal 2016-001150
Application 13/444,248
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 9, 11—13, and 15—22.2 We have jurisdiction under 35
U.S.C. § 6(b).
We affirm.
CLAIMED SUBJECT MATTER
The claims are directed to advertisement message coordination. Spec.
Title. Claim 9, reproduced below, is illustrative of the claimed subject
matter:
9. A computer-implemented method comprising:
receiving at least a proximity parameter, a driver-
workload parameter, and an advertisement optimization
parameter at an advertisement processing server;
determining, via the server, an advertisement having a
delivery value above a threshold value from a plurality of
advertisements, the delivery value for each advertisement based
at least in part on the received proximity parameter, workload
parameter, and advertisement optimization parameter varying an
advertisement monetary value based on driver responsiveness to
previous advertisements; and
delivering the selected advertisement to a vehicle for
driver-delivery.
App. Br. (Appendix 2).
2 Appellants indicated their wish to withdraw claims 1, and 3—8 from this
Appeal in a paper entitled Amendment Filed With Appeal Brief, filed
August 27, 2014. In the Answer, the Examiner treated these claims as
having been cancelled, and we will do the same here. Ex Parte Ghuman, 88
U.S.P.Q.2d (BNA) 1478, 1479-1480 (2008).
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Application 13/444,248
REJECTIONS
Claims 9, 11—13, 15, and 16—22 stand rejected under 35 U.S.C.
§ 102(b) as being anticipated by Barnes Jr. (US 2003/0065805 Al, published
Apr. 3, 2003; hereinafter “Barnes”). Ans. 2.
Claims 9, 11—13, and 15—22 stand rejected under 35 U.S.C. § 101 as
being directed to non-statutory subject matter. Ans. 2.
ISSUES
(1) Has the Examiner erred in finding Barnes discloses “the delivery
value for each advertisement based at least in part on . . . advertisement
optimization parameter varying an advertisement monetary value based on
driver responsiveness to previous advertisements,” as recited in claim 9?
(2) Has the Examiner erred in finding claims 9, 11—13, and 15—22 are
directed to non-statutory subject matter?
ANALYSIS
First Issue
In rejecting claim 9 as anticipated, the Examiner finds Barnes
discloses an “advertisement optimization value varying an advertisement
monetary value based on driver responsiveness to previous advertisements”
at paragraphs 235—240. Final Act. 10—11. More specifically, the Examiner
finds Barnes discloses that advertisements may have an associated
transmission value which determines how much an advertiser is willing to
pay to have an advertisement transmitted to a user. Ans. 4. According to
the Examiner, Barnes discloses the transmission value may vary based on,
inter alia, responses, citing the Barnes statement that “transmission values
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Application 13/444,248
may be different for different times of the day, locations, products,
responses.” Ans. 4 (citing Barnes 1238). The Examiner additionally cites
paragraph 285 of Barnes as disclosing the recited “varying an advertisement
monetary value based on driver responsiveness to previous advertisements.”
Ans. 6. The Examiner explains that in paragraph 285, Barnes discloses the
user device 101 stores “user response information,” which further supports
the finding that the “responses” described in paragraphs 235—240 are
indicative of “responsiveness to previous advertisements,” as recited in
claim 9. Ans. 6.
Appellants argue “[t]he ‘responses’ referenced in Barnes relate to a
response to the present advertisement” because Barnes teaches “delivery of
an advertisement may carry one value, and if the driver actually responds to
the advertisement, a different amount may be paid by the advertiser.” App.
Br. 5. According to Appellants:
Barnes states, in no uncertain terms, “the advertisements may
have an associated transmission value (or bid price) that
determines how much the advertiser is willing to pay to have the
advertisement transmitted to the user or to have the user respond
to the advertisement.” Clearly, “response” in Barnes relates to
response to the present advertisement. At no point does Barnes
discuss values based on responses to previous advertisements as
claimed.
App. Br. 5—6. We are not persuaded by Appellants’ argument.
Barnes discloses that advertisements are selected based on a
determined transmission value. Barnes 1238 (“ACS may also select the
advertisement based on the transmission value of the advertisement”).
Barnes further discloses the transmission value is determined in part based
on responses. Barnes 1238 (“transmission values may be different for
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different. . . responses . . . Because an advertisement is selected for
delivery only after determining a transmission value, it would not make
sense for the user’s response to the present advertisement to be used to
derive the transmission value. That is, it would not make sense to use
information gathered at a later point in time (i.e., a response to the present
advertisement) to make a determination that occurs at an earlier point in time
(determining the transmission value that is used to select which
advertisement to send to the user). We therefore agree with the Examiner
that an ordinarily skilled artisan would have understood the “responses”
disclosed in Barnes to be responses to previous advertisements, and not to
the present advertisement as alleged by Appellants. Accordingly, we sustain
the rejection of independent claim 9, and also of independent claim 16, for
which Appellants rely on the same argument.
Second Issue
The Examiner enters a new ground of rejection of claims 9, 11—13,
and 15—22 under 35 U.S.C. § 101. Ans. 2. Applying the two step
Alice/Mayo inquiry, the Examiner first finds the claims are directed to an
abstract idea of delivering advertisements to a user, which is a fundamental
economic practice. Ans. 2. The Examiner further finds the steps recited in
the claims “merely describe a process of organizing information through
mathematical correlations.” Ans. 2. With respect to the second step, the
Examiner finds the additional recited elements amount to no more than a
recitation of generic computer structure performing generic functions that
were well-known prior to the invention. Ans. 2—3.
In their Reply Brief, Appellants argue the Examiner has erred in
rejecting the claims as being non-statutory. Citing the New Interim
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Eligibility Guidance issued by the Office on December 12, 2014, Appellants
contend the rejection is improper because the claims “do not seek to tie up
the identified judicial exception (delivering advertisements to a user).”
Reply Br. 2. According to Appellants, “[sjince practice of the juridical
exception is not tied up by the claims, streamlined eligibility [analysis under
the Guidance] applies.” Id.
We are not persuaded by Appellants’ arguments. We first note that
the Guidance does not carry the force of law, Enzo Biochem, Inc. v. Gen-
Probe Inc., 323 F.3d 956, 964 (Fed. Cir. 2002), and we must ensure we
follow binding precedent in evaluating whether the Examiner erred in
rejecting the claims as lacking patent-eligibility. Thus, even if the
Examiner’s analysis is not consistent with the Guidance, that inconsistency
is not of itself dispositive of Examiner error. Our inquiry instead focuses
instead on whether the Examiner has properly applied the two-step test set
forth by the Supreme Court in Alice Corp. Pty Ltd. v. CIS Bank Inti., 134 S.
Ct. 2347 (2014).
In analyzing patent-eligibility questions under 35 U.S.C. § 101, the
Supreme Court instructs us to “first determine whether the claims at issue
are directed to a patent-ineligible concept.” Alice Corp. Pty Ltd., 134 S. Ct.
at 2355. If the initial threshold is met, we then move to a second step and
“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,
566 U.S. at 97).
Here, the Examiner finds the claims are directed to the abstract idea of
delivering advertisements to a user. Appellants do not contest this point.
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See Reply Br. 1—2 (“Thus, the ‘judicial exception’ (this term will be used in
the analysis below) is ‘delivering advertisements to a user.’”). The
Examiner further finds the additional elements do not amount to something
more that transforms the claims into a patent eligible application:
The additional elements or combination of elements in the claims
other than the abstract idea per se amount to no more than a
recitation of generic computer structure that serves to perform
generic computer functions that are well-understood, routine,
and conventional activities previously known to the pertinent
industry.
Ans. 2—3. We discern no error in this finding, and Appellants’ reliance on
the Guidance is insufficient to apprise us of error in the Examiner’s analysis.
Appellants do not explain how or why the additional recited claim elements
amount to something more than the abstract idea itself. Rather, Appellants
merely assert that streamlined eligibility analysis could have been used in
this case.
In sum, we conclude that the recited method steps amount to only
routine steps of data collection, organization, and transmission using generic
computer components, and these conventional computer data processing
activities are insufficient to transform the claim into “something more” than
the abstract idea of itself. See Intellectual Ventures ILLC v. Capital One
Fin. Corp., 850 F.3d 1332, 1341 (Fed. Cir. 2017). Accordingly, we are not
persuaded the Examiner erred in finding the claims ineligible for patenting
under 35 U.S.C. § 101, and we sustain the Examiner’s rejections.
Remaining Claims
Appellants do not present any additional arguments with respect to
any of the dependent claims. As a result, the dependent claims all fall with
their respective independent claims.
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DECISION
The Examiner’s rejection of claims 9, 11—13, and 15—22 under 35
U.S.C. § 102(b) is affirmed.
The Examiner’s rejection of claims 9, 11—13, and 15—22 under 35
U.S.C. § 101 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). See 37 C.F.R.
§ 1.136(a)(l)(iv).
AFFIRMED
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