Ex Parte Priya et al

Patent Trial and Appeal Board

Sep 14, 2017

13667933 (P.T.A.B. Sep. 14, 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.
13/667,933 11/02/2012 Bhaskar Priya 2376US01/ADBS .209657 1018
121363 7590 09/18/2017
Shook, Hardy & Bacon L.L.P.
(Adobe Systems Incorporated)
Intellectual Property Department
2555 Grand Blvd
Kansas City, MO 64108
EXAMINER
KUNWAR, BINOD J
ART UNIT PAPER NUMBER
2454
NOTIFICATION DATE DELIVERY MODE
09/18/2017 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):
IPDOCKET@SHB.COM
IPRCDKT@SHB.COM
mjj ordan @ shb .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BHASKAR PRIYA, HIMANSHU SAWHNEY, and
PARESH KHARYA
Appeal 2017-000884
Application 13/667,9331
Technology Center 2400
Before ALLEN R. MacDONALD, MICHAEL M. BARRY, and
PHILLIP A. BENNETT, Administrative Patent Judges.
BENNETT, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s non-
final rejection of claims 1—19 and 21, which are all of the pending claims.
We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 Appellants’ Brief (“App. Br.”) identifies Adobe System Incorporated as the
real party in interest. However, based on assignment records, we read the
real party in interest as Adobe Systems Incorporated.
Appeal 2017-000884
Application 13/667,933
CLAIMED SUBJECT MATTER
The claims are directed to integrating web analytics products with
web conferencing products for better reporting of user interaction and data
tracking. Spec. 115. Claim 1, reproduced below, is illustrative of the
claimed subject matter:
1. A method comprising:
at a web conferencing host that is hosting a web
conferencing event on the Internet, the web conferencing host
comprising a web conferencing server:
receiving a first set of tracking data from a first
client that is attending the web conferencing event,
wherein the first set of tracking data is associated with the
web conferencing event;
transmitting the first set of tracking data to a web
analytics server for storage at the web analytics server,
wherein the web analytics server is different from, and
communicatively coupled to, the web conferencing server;
receiving, from a second client that is an organizer
of the web conferencing event, a request for a report
associated with the web conferencing event, the report
including report data;
requesting the report data from the web analytics
server;
responsive to requesting the report data, receiving
the report data from the web analytics server, the report
data being based on the first set of tracking data and a
second set of tracking data, wherein the second set of
tracking data is received by the web analytics server
directly from the first client; and
augmenting the report data with additional data
stored at the web conferencing host in order to provide the
report including the report data and the additional data;
and
transmitting the report to the second client.
App. Br. 25—26 (Claims App’x).
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REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Siegalovsky US
Ackerman US
Kuhlke US
Goeldi US
2005/0114171 A1 May 26,2005
2010/0037151 A1 Feb. 11,2010
8,392,503 B2 Mar. 5,2013
8,375,024 B2 Feb. 12,2013
REJECTIONS
Claims 1—19 and 21 stand rejected under 35U.S.C. § 101 as being
directed to ineligible subject matter. Non-Final Act. 10—14.
Claims 1, 3—12, 14, 15, 17—19, and 21 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Goeldi, Ackerman, and Kuhlke. Non-
Final Act. 14-40.
Claims 2, 13, and 16 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Goeldi, Ackerman, Kuhlke, and Siegalovsky. Non-Final
Act. 40-43.
ISSUES
First Issue: Has the Examiner erred in finding the cited references
teach, suggest, or otherwise render obvious a “web conferencing host
comprising a web conferencing server,” as recited in independent claims 1
and 12, and “a web conferencing server,” as recited in independent claim
15?
Second Issue: Has the Examiner erred in concluding the pending
claims are directed to ineligible subject matter under 35 U.S.C. § 101?
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ANALYSIS
First Issue
Claim 1 recites the performance of various steps “at a web
conferencing host that is hosting a web conferencing event on the Internet,
the web conferencing host comprising a web conferencing server.” App. Br.
25 (Claims App’x). The Examiner interprets “web conferencing host” as a
“person or the organizer who is in charge or [is the] leader or host of the web
conference.” Ans. 16. The Examiner interprets “web conferencing server”
as “any kind of conference from where user’s [organizer and participants]
can participate and interact [with] each other.” Ans. 16 (first pair of brackets
in original (bracketed “with” added)). Applying these definitions, the
Examiner then finds Goeldi teaches the “web conferencing host” as an
“author or leader of social media source within Social media Analytics
platform” and the recited “web conferencing server” as a “GUI of event or
online social media sources.” Non-Final Act. 15 (citing Goeldi Fig. 1A).
Appellants contend the Examiner has erred in interpreting the recited
“web conferencing host” and “web conferencing server.” App. Br. 18.
More specifically, Appellants argue “the language of [the] claim [ ] makes
clear that the web conferencing host comprises a web conferencing server.”
Id. According to Appellants, “[t]he Office’s reliance on a person or a GUI
as teaching the ‘web conferencing host’ is clearly erroneous, because it is
inconsistent with the claim language specifying that the ‘web conferencing
host compris[es] a web conferencing server.’” Id. We agree with
Appellants.
As noted above, the Examiner interprets “web conferencing host” as a
“person or the organizer who is in charge or [is the] leader or host of the web
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conference.” Ans. 16. This interpretation is inconsistent with both the
language of the claim and the Specification. Appellants argue, and we
agree, that the language of the claim requires the “web conferencing host” to
comprise a “web conferencing server.” App. Br. 18. That is, the language
of the claim specifies that the recited “web conferencing host” includes a
“web conferencing server.” Under the Examiner’s proposed interpretation, a
person (i.e., the web conferencing host) would need to include a graphical
user interface (i.e., the web conferencing server). But people are not made
up of graphical user interfaces, and, therefore, the Examiner’s interpretation
makes no sense.
Moreover, the Specification makes clear that the recited “web
conferencing host” and “web conferencing server” are both computing
systems. For example, the Specification describes “an example of a web
conferencing product is Adobe®Connect™ available from Adobe®
Systems, Inc.” Spec. 117. The Specification further states “the terms ‘web
conferencing product,’ ‘web conferencing host,’ ‘web conferencing
application,’ ‘web conferencing server,’ and ‘Adobe Connect’ maybe used
interchangeably herein,” and that “Adobe Connect... is an example of a
web conferencing host.” Spec. 117—18. The Examiner’s finding that
Goeldi teaches a “web conferencing host comprising a web conferencing
server” because it teaches “person or the organizer who is in charge or leader
or host of the web conference” is erroneous because a relies on the incorrect
interpretation of “web conferencing host.” Accordingly, we do not sustain
the rejection of claim 1 under 35 U.S.C. § 103(a), and also of independent
claims 12 and 15, which recite similar limitations. For the same reason, we
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do not sustain the rejection of claims 2—11, 13—14, 16—19, and 21, which
depend therefrom.2
Second Issue
In rejecting the claims under 35U.S.C. § 101, the Examiner finds
claims 1,12, and 15 are directed to the abstract idea of gathering data from
user activities, providing a report of those activities, and augmenting the
report for graphical display to a user. Non-Final Act. 12—13; see also Ans.
3—12. The Examiner also finds additional elements recited in the remaining
claims do not amount to significantly more than the abstract idea itself
because they involve only conventional data gathering and processing
operations performed by a generic computer. Non-Final Act. 13; see also
Ans. 13—15.
Appellants present several arguments against the § 101 rejection.
App. Br. 8—17; Reply Br. 4—16. Appellants argue the Examiner
characterizes the invention too broadly and ignores the specific limitations
recited in the claims, including the various entities involved such as a web
conferencing host, a web analytics server, a first client and a second client.
App. Br. 11. Appellants further argue the claims amount to more than the
abstract idea and include an inventive concept because they are necessarily
rooted in computer technology to overcome a problem specific to computer
networks. App. Br. 13—14. According to Appellants, “an exemplary
computer-network-centric challenge that is addressed by the claims includes
the challenge of measuring, collecting, analyzing, and reporting Internet data
2 Because we have found one of Appellants’ arguments persuasive of
Examiner error, we do not address the remaining arguments made with
respect to the rejections under 35 U.S.C. § 103(a).
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that is associated with a web conference.” App. Br. 14. Relying on DDR
Holdings, LLCv. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014) (“DDR
Holdings”), Appellants also contend the solution provides a technological
improvement because they improve integration and interoperability of a web
analytics server and a web conferencing host and reduce storage
requirements. App. Br. 14—16. Appellants further argue the claims recite
unconventional steps because they are patentable over the prior art, and the
claims pose no risk of preemption. App. Br. 16—17.
We do not find Appellants’ arguments persuasive. 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. 2347, 2355
(2014). 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 1297).
Turning to the first step of the Alice inquiry, we agree with the
Examiner that Appellants’ claims are directed to an abstract idea. More
specifically, we agree the claims are directed to the abstract idea of gathering
data regarding user activities in a web conferencing event, generating a
report of those activities, and augmenting the report for graphical display to
a user. All the steps recited in claim 1, including, for example: (i)
“receiving a first set of tracking data . . . ,” (ii) “transmitting the first set of
tracking data . . . ,” (iii) “receiving ... a request for a report. . . ,”
(iv) “requesting the report data . . . ,” (v) “responsive to requesting the report
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data, receiving the report data . . .,” (vi) “augmenting the report data . . .,”
and (vi) “transmitting the report. . . are directed to collecting data from
conference attendees, generating a report of those activities, and augmenting
the report for the conference host. The steps recited in claim 1 involve
nothing more than receiving, analyzing, transmitting, and presenting data.
In this regard, the claims are similar to the claims that the Federal Circuit
determined were patent ineligible in Electric Power Group LLC v. Alstom
S.A., 830 F.3d 1350, 1353—54 (Fed. Cir. 2016). In Electric Power Group,
the district court found the claims at issue were found to be directed to “the
abstract idea of monitoring and analyzing data from disparate sources.” Id.
at 1352. The Federal Circuit affirmed the district court’s analysis under
Alice step 1, stating that:
The claims in this case fall into a familiar class of claims
“directed to” a patent-ineligible concept. The focus of the
asserted claims, as illustrated by claim 12 quoted above, is on
collecting information, analyzing it, and displaying certain
results of the collection and analysis. We need not define the
outer limits of “abstract idea,” or at this stage exclude the
possibility that any particular inventive means are to be found
somewhere in the claims, to conclude that these claims focus on
an abstract idea—and hence require stage-two analysis under
§101.
Id. at 1353. The analyzed claim in Electric Power Group case bears
substantial similarity to the claims at issue here. In particular, like the
claims in Electric Power Group, Appellants’ claims involve collecting data
from disparate sources, and providing reporting using that collected data,
and they amount to no more than providing a web conferencing host with
useful information about its attendees by obtaining and analyzing
information. As such, the “advance they purport to make is a process of
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gathering and analyzing information of a specified content, then displaying
the results, and not any particular assertedly inventive technology for
performing those functions.” See Elec. Power Group, 830 F.3d at 1354.
Turning to the second step of the Alice inquiry, we agree with the
Examiner that nothing in Appellants’ claims adds anything “significantly
more” to transform the abstract concept into a patent-eligible application.
Alice, 134 S. Ct. at 2357. Appellants argue that as an ordered combination
of steps performed by the web conferencing host, the claims supply an
inventive concept because they provide improved integration between a web
analytics server and a web conferencing server and reduce storage
requirements. App. Br. 10-11. We are not persuaded that these alleged
benefits are sufficient to transform the claims into a patent-eligible concept.
Neither the claims nor the Specification describe any details of the alleged
improved integration beyond the fact that they share data via API calls and
select data using parameterized data filters—both conventional data sharing
techniques well-known prior to Appellants’ priority date. Thus, the steps
recited in the claims are merely ordinary steps in data collection, sharing,
analysis, and reporting, and no specific improvements to computer
technology are recited in the claims.
We are not persuaded by Appellants’ argument that the claims do not
preempt every application of the claimed abstract idea and are, therefore,
patent eligible. App. Br. 12—13. Lack of preemption does not make the
claims any less abstract. Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788
F.3d 1371, 1379 (Fed. Cir. 2015) (“While preemption may signal patent
ineligible subject matter, the absence of complete preemption does not
demonstrate patent eligibility.”). We also disagree that the novelty and non-
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obviousness of the claims demonstrates they amount to “something more.”
App. Br. 17. Appellants’ argument presupposes that any claim found to be
novel and non-obvious over prior art is necessarily “something more” in the
Alice/Mayo framework. We are aware of no case supporting this
proposition, nor do Appellants cite to any. Nor would such a rule make
sense, as it would limit the application of 35 U.S.C. § 101 to only those
claims found to be otherwise unpatentable under other sections of the Patent
Act (e.g., 35 U.S.C. §§ 102, 103, 112).
Finally, we also are not persuaded DDR Holdings mandates reversal.
As we noted above, Appellants argue DDR Holdings controls because the
present claims involve functions which improve the integration of an
analytics server and a web conferencing server. App. Br. 14—15. We do not
view collecting data from conference attendees, generating a report of those
activities, and augmenting the report for the conference host as a problem
rooted in technology. At its core, Appellants’ invention solves a business
problem. Although implemented in the context of a web conferencing
system, the abstract idea to which the claims are directed has a close offline
analog—namely, the common and long-standing practice of surveying
conference attendees regarding their experiences at the conference and
learning how they heard about the conference. Thus, the fact that
Appellants’ invention is implemented in the context of the Internet does not
mean that it solves a problem unique to the Internet as required under DDR
Holdings.
In sum, we conclude the Examiner correctly determined that the
pending claims are directed to an abstract idea. We further conclude the
limitations recited in those claims amount to only routine steps of receiving,
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analyzing, transmitting, and presenting data using generic computer systems
and conventional computer data processing activities 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.
DECISION
We reverse the Examiner’s rejection of claims 1—19 and 21 under
35 U.S.C. § 103.
We affirm the Examiner’s rejection of claims 1—19 and 21 under
35 U.S.C. § 101.
Because all the claims were affirmed under at least one ground of
rejection, we affirm the Examiner’s rejections of claims 1—19 and 21. See
37 C.F.R. § 41.50(a)(1) (“The affirmance of the rejection of a claim on any
of the grounds specified constitutes a general affirmance of the decision of
the examiner on that claim ....”)
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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