Ex Parte Ralph et al

Patent Trial and Appeal Board

Jan 22, 2018

11478331 (P.T.A.B. Jan. 22, 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.
11/478,331 06/29/2006 Tony Ralph 12729/134 (Y01458US00) 5539
149109 7590
BGL/Excalibur
P.O. Box 10395
Chicago, IL 60610
EXAMINER
BROWN, ALVIN L
ART UNIT PAPER NUMBER
3682
MAIL DATE DELIVERY MODE
01/22/2018 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TONY RALPH, ILYA SLAIN,
VICTOR CHANG, and BRIAN FRANCE
Appeal 2016-004837
Application 11/478,331
Technology Center 3600
Before NINA L. MEDLOCK, AMEE A. SHAH, and
ALYSSA A. FINAMORE, Administrative Patent Judges.
SHAH, Administrative Patent Judge.
DECISION ON APPEAL1
The Appellants2 appeal under 35 U.S.C. § 134(a) from the Examiner’
final decision rejecting claims 1—23 under 35 U.S.C. § 101 as directed to
non-statutory subject matter. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 Throughout this opinion, we refer to the Appellants’ Appeal Brief
(“Appeal Br.,” filed Oct. 19, 2015), Reply Brief (“Reply Br.,” filed Apr. 11,
2016), and Specification (“Spec.,” filed June 29, 2006), and to the
Examiner’s Answer (“Ans.,” mailed Feb. 10, 2016) and Final Office Action
(“Final Act.,” mailed Mar. 17, 2015).
2 According to the Appellants, the real party in interest is “YAHOO! INC.”
Appeal Br. 2.
Appeal 2016-004837
Application 11/478,331
STATEMENT OF THE CASE
The Appellants’ invention relates “generally to the display of
advertisements on various pages or screens, such as websites [and,]
[specifically, [to] the verification of advertisement monitoring or
impressions.” Spec. 11.
Claims 1,10, and 17 are the independent claims on appeal. Claim 1
(Appeal Br. 14 (Claims App.)) is illustrative of the subject matter on appeal,
and is reproduced below:
1. A method for verifying advertisement impressions in a
page with a processor, the method comprising:
providing at least one advertisement in the page;
providing at least one beacon associated with the at least
one advertisement in the page;
recording, with a beacon server, beacon logging data
regarding the at least one beacon, wherein the at least one beacon
is configured to determine the advertisement impressions and the
beacon logging data comprises requests of the at least one
beacon;
recording web server logs related to tracking information
of the at least one advertisement; and
verifying, with the processor, the advertisement
impressions in the page by comparing the beacon logging data
with tracking information from the web server logs for the at
least one advertisement;
wherein when a flag is triggered in outgoing web traffic,
the web server logs are copied to a local file; and
wherein when a flag is not triggered in outgoing web
traffic, the web server logs are not copied to a local file.
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Application 11/478,331
ANALYSIS
The Appellants argue claims 1—23 as a group. See Appeal Br. 4.
Under 35 U.S.C. § 101, a patent may be obtained for “any new and
useful process, machine, manufacture, or composition of matter, or any new
and useful improvement thereof.” The Supreme Court has “long held that
this provision contains an important implicit exception: Laws of nature,
natural phenomena, and abstract ideas are not patentable.” Alice Corp. Pty.
Ltd. v. CLS Bank Inti, 134 S. Ct. 2347, 2354 (2014) (quoting Assn for
Molecular Pathology v. Myriad Genetics, Inc., 133 S. Ct. 2107, 2116
(2013)). The Court has, thus, made clear that “[phenomena of nature,
though just discovered, mental processes, and abstract intellectual concepts
are not patentable, as they are the basic tools of scientific and technological
work.” Gottschalk v. Benson, 409 U.S. 63, 67 (1972).
The Supreme Court in Alice reiterated the two-step framework, set
forth previously in Mayo Collaborative Services v. Prometheus
Laboratories, Inc., 132 S. Ct. 1289, 1300 (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, 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. (citing
Mayo, 132 S. Ct. at 1296—97) (emphasis added). If so, the second step is to
consider the elements of the claims “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,
132 S. Ct. at 1297-98).
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In other words, the second step is to “search for an ‘inventive
concept’—i.e., 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.’” Id. (alteration in original) (quoting
Mayo, 132 S. Ct. at 1294). 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, 132 S. Ct. at 1293.
We, therefore, look to whether the claims 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. See Enfish, LLC v. Microsoft Corp., 822 F.3d
1327, 1336 (Fed. Cir. 2016).
Turning to the first step of the Alice framework, “the ‘directed to’
inquiry applies a stage-one filter to claims, considered in light of the
specification, based on whether ‘their character as a whole is directed to
excluded subject matter.’” Enfish, 822 F.3d at 1335. Here, the Examiner
looks to the language of the claims and determines that the claims are
directed to “verifying the display of an advertisement on a page.” Final
Act. 5; Ans. 3.
The claims recite a process comprising the steps of providing an
advertisement, providing a beacon (i.e., an inserted identifier (Spec. 131)),
recording beacon logging data and web server log data, verifying the
advertisement impressions by comparing the data, and conditionally copying
log data to a file, without being tied to a specific structure or machine
besides general servers. The preamble of independent claim 1 provides for a
method for “verifying advertisement impressions in a page with a
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processor.” Appeal Br. 14 (Claims App.). Similarly, the preamble of
independent claim 10 provides for a medium comprising instructions for a
processor to “confirm[] advertisement impressions” (id. at 15), and the
preamble of independent claim 17 provides for a “system for monitoring ad
impressions” {id. at 16). The Specification provides that the invention is
directed to “verification of advertisement monitoring or impressions” (Spec.
11), to “measuring online advertising” {id. 1 6) and to “verifying the
accuracy of measured ad impressions” {id.). In that context, we find
supported the Examiner’s determination that the “character as a whole” of
the claims, considered in light of the Specification (see Enfish, 822 F.3d at
1335), is directed to the abstract idea of “verifying the display of an
advertisement on a page,” a fundamental economic practice and an idea of
itself.
Although we find nothing in Alice that requires the Examiner to
provide “evidence” (Appeal Br. 6, Reply Br. 2), “sufficient persuasive
evidentiary support” (Appeal Br. 6, Reply Br. 3), or to “tie the claim
language to the abstract concept” (Reply Br. 3) to support its determination
that the claims are directed to an abstract idea such as a fundamental
economic practice or idea in itself, the abstract idea here is similar to ones
our reviewing courts have deemed ineligible. See Elec. Power Grp. LLC v.
Alstom S.A., 830 F.3d 1350, 1353—54 (Fed. Cir. 2016) (collecting, analyzing,
displaying information); FairWarningIP, LLC v. Iatric Systems, Inc., 839
F.3d 1089, 1093—94 (Fed. Cir. 2016); and Two-Way Media Ltd. v. Comcast
Cable Commc’ns, LLC, 874 F.3d 1329, 1337—38 (Fed. Cir. 2017) (sending
information and directing, monitoring the receipt of, and accumulating
(logging) records about the receipt of sent information). Here, the claims
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involve nothing more than providing, tracking, recording, and
verifying/comparing data of advertisement impressions, without any
particular inventive technology — an abstract idea. See Elec. Power Grp.,
830 F.3d at 1354.
We find unpersuasive the Appellants’ argument that the claims are
analogous to those of DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d
1245 (Fed. Cir. 2014), because they ‘“address a business challenge
([accounting for non-human activity in ad impression counting]) that is
particular to the Internet.’” Appeal Br. 7; see also id. at 8—10; Reply Br. 4.
In DDR Holdings, the Federal Circuit determined that the claims
addressed the problem of retaining website visitors who, if adhering to the
routine, conventional functioning of Internet hyperlink protocol, would be
transported instantly away from a host’s website after clicking on an
advertisement and activating a hyperlink. DDR Holdings, 773 F.3d at 1257.
The Federal Circuit, thus, held that the claims were directed to statutory
subject matter because they claim a solution “necessarily rooted in computer
technology in order to overcome a problem specifically arising in the realm
of computer networks.” Id. The court cautioned that “not all claims
purporting to address Internet-centric challenges are eligible for patent.” Id.
at 1258. And the court contrasted the claims to those at issue in
Ultramercial Inc. v. Hulu, LLC, 772 F.3d 709 (Fed. Cir. 2014) in that, in
DDR Holdings, the computer network was not operating in its “normal
expected manner” and the claims did not “recite an invention that is merely
the routine or conventional use of the Internet.” Id. at 1258—59.
In contrast, here, the claims address the problem of verifying the
count of impressions of advertisements by filtering out incorrect data. See
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Spec. H 1, 3, 4. Although there may be an Internet-centric problem in that
the data of impressions can include counts from robots, spiders, or other
non-human activity (Appeal Br. 7—8, Spec. 14), the problem of verifying
data is one that existed prior to the Internet. The computers and computer
network still operate in their normal capacities to account for undesired data
by providing data, providing an identifier (beacon), recording data
comprising requests, recording data related to tracking, verifying the
impressions by comparing the recorded data, and conditionally copying a
file based on the trigger of a flag. The claims do not recite limitations that
specifically provide for how the data, determination, and verification are
specifically affected by or dependent on the robots, spiders, or other non­
human activities. Without that, the claims are no more than collecting,
analyzing (comparing) data, and conditionally copying a file (data).
Turning to the second step of the Alice framework, the Appellants
assert that the claims are nonetheless directed to patent-eligible subject
matter because the claims “define significantly more than an abstract idea.”
Appeal Br. 10; see also id. at 11; Reply Br. 4—6. We disagree.
We find unpersuasive the Appellants’ arguments that the claims
provide an improvement to technology because they improve the “field of
advertisement tracking across the Internet” (Appeal Br. 11) and improve the
“functioning of the servers implementing ad tracking” (id. at 12 (brackets
omitted)). Tracking advertisements is not a technological field, and having
the field of use be the Internet, i.e., simply tracking ads over the Internet,
does not improve technology. Moreover, presenting, recording, and
comparing data are basic, purely conventional functions of a computer. See
Alice, 134 S. Ct. at 1259. The Specification supports this view in providing
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for generic servers, computers, database, and network for performing the
functions. See Spec. ]Hf 21—27, Fig. 1; cf. Reply Br. 5 (arguing that the
claims do not recite a generic computer because they recite a web server, an
ad server, and a beacon server).
The Appellants do not provide adequate evidence that the functions
are not routine, well-understood, and conventional to a generic computer, or
that the computer, processor, or devices themselves are technologically
improved so as to show error in the Examiner’s determination that the
claims do not amount to significantly more than the abstract idea. We note
that the claims do not recite how, e.g., by what algorithm, the beacon, i.e.,
identifier (see Spec. 131), determines the advertisement impressions such
that providing a beacon and recording beacon data would not be a routine,
well-understood, and conventional function of a generic computer, as
asserted by the Appellants (Reply Br. 5). See TDE Petroleum Data Sols.,
Inc., v. AKMEnter., Inc., 657 F. App’x 991, 993 (Fed. Cir. 2016), cert,
denied, 137 S. Ct. 1230 (2017) (“As we discussed at greater length in
Electric Power, the claims of the ’812 patent recite the what of the
invention, but none of the how that is necessary to turn the abstract idea into
a patent-eligible application.”) (citing Elec. Power Grp., 830 F.3d at 1353);
see also Internet Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1348
(Fed. Cir. 2015) (“As the district court observed, claim 1 contains no
restriction on how the result is accomplished.”). Further, the claims do not
recite that an “analysis of a flag is performed” (Reply Br. 6) or what that
analysis is, but merely provide that a flag triggers an action or inaction.
Rather, the claims recite providing, recording, and verifying (by comparing)
data and conditionally copying a file using existing, generic technology.
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The servers themselves are not technologically improved. The
computer implementation of the abstract idea here is purely conventional
and uses basic computer functions. See Alice, 134 S. Ct. at 2359-60; Enfish,
822 F.3d. at 1336 (focusing on whether the claim is “an improvement to
[the] computer functionality itself, not on economic or other tasks for which
a computer is used in its ordinary capacity). The Appellants do not explain
how the process improves any technological aspect of the servers, as
opposed to the existing functionality of tracking. See Appeal Br. 11.
Further, “relying on a computer to perform routine tasks more quickly or
more accurately is insufficient to render a claim patent eligible.” OIP
Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1363 (Fed. Cir. 2015)
(citing Alice, 134 S. Ct. at 2359).
We also find unpersuasive the Appellants’ argument that the claims
are significantly more than an abstract idea because they “are indicated as
allowable over the prior art.” Appeal Br. 10. An abstract idea does not
transform into an inventive concept just because the prior art does not
disclose or suggest it. See Mayo, 132 S. Ct. at 1304—05. “Groundbreaking,
innovative, or even brilliant discovery does not by itself satisfy the § 101
inquiry.” Myriad, 133 S. Ct. at 2117. Indeed, “[t]he ‘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.” Diamond v. Diehr,
450 U.S. 175, 188-89 (1981); see also Mayo, 132 S. Ct. at 1303-04
(rejecting “the Government’s invitation to substitute §§ 102, 103, and 112
inquiries for the better established inquiry under § 101”).
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We are further not persuaded of Examiner error by the Appellants’
argument that the pending claims are patent-eligible because “there is no risk
that the claim will ‘tie up’ excepted subject matter so as to pre-empt others
from using the claimed subject matter.” Appeal Br. 12; see also id. at 13.
Although the Supreme Court has described “the concern that drives this
exclusionary principle [i.e., the exclusion of abstract ideas from patent
eligible subject matter] as one of pre-emption,” see Alice, 134 S. Ct. at 2354,
characterizing pre-emption as a driving concern for patent eligibility is not
the same as characterizing pre-emption as the sole test for patent eligibility.
“The Supreme Court has made clear that the principle of preemption is the
basis for the judicial exceptions to patentability” and “[f]or this reason,
questions on preemption are inherent in and resolved by the § 101 analysis.”
Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir.
2015) (citing Alice, 134 S. Ct. at 2354). Although “preemption may signal
patent ineligible subject matter, the absence of complete preemption does
not demonstrate patent eligibility.” Id. The aforementioned concept is not
sufficiently limiting so as to fall clearly on the side of patent-eligibility.
Based on the foregoing, we are not persuaded that the Examiner erred
in rejecting the claims under 35 U.S.C. § 101. Therefore, we sustain the
Examiner’s rejection.
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DECISION
The Examiner’s rejection of claims 1—23 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)(l)(iv).
AFFIRMED
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