Ex Parte Ray

Patent Trial and Appeal Board

Nov 15, 2018

12485702 (P.T.A.B. Nov. 15, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/485,702 06/16/2009
15142 7590 11/19/2018
Arent Fox, LLP and Qualcomm, Incorporated
1717 K Street, NW
Washington, DC 20006-5344
FIRST NAMED INVENTOR
Rajarshi Ray
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.
030284.02652/0905 l 7 3714
EXAMINER
IOSIF, MARIO CINCINAT
ART UNIT PAPER NUMBER
3681
NOTIFICATION DATE DELIVERY MODE
11/19/2018 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):
ocpat_uspto@qualcomm.com
patentdocket@arentfox.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RAJARSHI RAY
Appeal2017-006981
Application 12/485,702 1
Technology Center 3600
Before BRUCE T. WIEDER, BRADLEY B. BAY AT, and
TARA L. HUTCHINGS, Administrative Patent Judges.
WIEDER, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from the
Examiner's rejection of claims 1-8, 10-19, 21-30, 32--41, 43-51, 53---61,
63-71, 73-81, and 83-85. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
CLAIMED SUBJECT MATTER
Appellant's invention "relates generally to the operation of wireless
communication systems, and more particularly, to methods and apparatus for
advertisement mixing in a communication system." (Spec. ,r 2.) In short, "a
1 According to Appellant, the real party in interest is QUALCOMM
Incorporated. (Appeal Br. 1.)
Appeal2017-006981
Application 12/485,702
method is provided that is operable by a network node for providing
advertisements in a communication network." (Id. ,r 7.)
Claims 1, 12, 23, 34, 45, 55, 65, and 75 are the independent claims on
appeal. Claim 1 is illustrative. It recites:
1. A method operable by a network node for providing
advertisements in a communication network, the method
compnsmg:
obtaining, by a transceiver of the network node via a first
communication link, device information associated with each of
a plurality of communication devices within the communication
network;
determining, by a processor of the network node, one or
more advertisements for a callee communication device upon
detecting, via a second communication link, a call being initiated
between a caller communication device and the callee
communication device based at least on obtained information of
the call and the callee communication device, wherein the caller
and callee communication devices are among the plurality of
communication devices within the communication network;
transmitting, by the transceiver of the network node via the
second communication link, at least a portion of the one or more
advertisements for storing at the callee communication device
during off-peak times of the communication network on a
selected periodic basis;
mixing the one or more advertisements with a
corresponding subscribed call service to be provided to the callee
communication device, wherein at least one of the one or more
advertisements stored at the callee communication device is
selectively retrieved to be associated with the corresponding
subscribed call service for rendering on the callee
communication device; and
delivering the one or more advertisements and the
corresponding subscribed call service to the callee
communication device.
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REJECTIONS
Claims 1-8, 10-19, 21-30, 32--41, 43-51, 53---61, 63-71, 73-81, and
83-85 are rejected under 35 U.S.C. § 101 as directed to a judicial exception
without significantly more.
Claims 1-8, 10-19, 21-30, 32--41, 43-51, 53---61, 63-71, 73-81, and
83-85 are rejected under 35 U.S.C. § I03(a) as unpatentable in view of
Bookstaff (US 2004/0091093 Al, pub. May 13, 2004) and Othmer
(US 2006/0236258 Al, pub. Oct. 19, 2006).
ANALYSIS
The § 101 rei ection
"Whoever invents or discovers any new and useful process, machine,
manufacture, or composition of matter, or any new and useful improvement
thereof, may obtain a patent therefor, subject to the conditions and
requirements of this title." 35 U.S.C. § 101. Section 101, however,
"contains an important implicit exception: Laws of nature, natural
phenomena, and abstract ideas are not patentable." Alice Corp. Pty. Ltd. v.
CLS Bankint'l, 134 S. Ct. 2347, 2354 (2014) (quotingAss'nfor Molecular
Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 589 (2013)).
Alice applies a two-step framework, earlier set out in Mayo
Collaborative Services v. Prometheus Laboratories, Inc., 566 U.S. 66
(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.
Under the two-step framework, it must first be determined if "the
claims at issue are directed to a patent-ineligible concept." Id. If the claims
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are determined to be directed to a patent-ineligible concept, e.g., an abstract
idea, then the second step of the framework is applied to determine if "the
elements of the claim ... contain[] an 'inventive concept' sufficient to
'transform' the claimed abstract idea into a patent-eligible application." Id.
at 2357 (citing Mayo, 566 U.S. at 72-73, 79).
With regard to step one of the Alice framework, the Examiner
determines that "the claims are directed towards providing advertisements
by a network node in a communication network, which represents an
abstract idea." (Non-Final Action 3.)
Appellant argues "that the Office Action erred by not analyzing the
actual claim language and instead considering only an oversimplified and
inaccurate conclusory statement of the gist of the claims." (Appeal Br. 13.)
Under step one of the Alice framework, we "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 Texas, LLC
v. DIRECTV, LLC, 838 F.3d 1253, 1257 (Fed. Cir. 2016) (quoting Elec.
Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016)).
The Specification provides evidence as to what the claimed invention
is directed. In this case, the Specification discloses that the invention
"relates generally to the operation of wireless communication systems, and
more particularly, to methods and apparatus for advertisement mixing in a
communication system." (Spec. ,r 2.) The Specification further discloses
that the claimed invention "operates to present advertisements to device
users when utilizing a variety of call services in a communication network."
(Id. ,I 6.)
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Claim 1 provides further evidence. Claim 1 recites "[a] method ...
for providing advertisements in a communication network ... comprising:
obtaining ... device information associated with ... devices within the
communication network," "determining ... advertisements for a callee
communication device upon detecting ... a call being initiated between a
caller ... and the callee," "transmitting ... advertisements for storing at the
callee ... device," "mixing the ... advertisements with a corresponding
subscribed call service to be provided to the callee," "and delivering ...
advertisements and the corresponding subscribed call service to the callee."
Claim 45 also provides evidence. Claim 45 recites "[a] method ...
for obtaining advertisements in a communication network ... comprising:
transmitting ... device information associated with the communication
device to a network node," "receiving by ... the communication device ...
a subscribed call service associated with an incoming call," "obtaining an
advertisement along with the subscribed call service," "rendering the
advertisement on the communication device," "obtaining and storing ...
advertisements," "and selectively retrieving the ... advertisements to be
associated with ... subscribed call services."
Although we and the Examiner describe, at different levels of
abstraction, to what the claims are directed, it is recognized that "[a]n
abstract idea can generally be described at different levels of abstraction."
Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1240 (Fed. Cir. 2016). That
need not and, in this case does not, "impact the patentability analysis." See
id. at 1241.
In this case, as in Alice, we need not labor to delimit the precise
contours of the "abstract ideas" category. It is enough to recognize that
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there is no meaningful distinction in the level of abstraction between the
concept of tailoring and delivering content such as advertisements "based on
information known about the customer," Intellectual Ventures I LLC v.
Capital One Bank (USA), 792 F.3d 1363, 1369 (Fed. Cir. 2015), and
"present[ing] advertisements to device users ... utilizing a variety of call
services" (Spec. ,r 6). Both are squarely within the realm of "abstract ideas"
as the Court has used that term. See Alice, 134 S. Ct. at 2357.
In view of the above, we agree with the Examiner that claims 1 and 45
are directed to an abstract idea. (See Non-Final Action 3.)
Step two of the Alice framework has been described "as a 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."' Alice, 134 S. Ct.
at 2355 (citing Mayo, 566 U.S. at 72-73).
The Examiner determines that
[ t ]he AD server its components and the processors are recited at
a high level of generality and its broadest reasonable
interpretation comprises a generic computer performing generic
functions. In the instant case, it is noted, that these elements,
when taken both individually and/or as an ordered combination,
execute in a manner routinely and conventionally expected of
these elements.
(Non-Final Action 5.)
Appellant argues "that the Federal Circuit Court has upheld the [sic]
patentability where the claimed solution is necessarily rooted in computer
technology in order to overcome a problem specifically arising in the realm
of computer networks. See, DDR Holdings, LLC v. Hotels.com, L.P., 773
F.3d 1245 (Fed. Cir. 2014)." (Appeal Br. 13, emphasis omitted.) In
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particular, Appellant argues, "the claimed invention addresses a wireless
communication network-centric challenge of determining and presenting
advertisements to device users when utilizing a variety of call services in the
communication network." (Id. at 14.) For example, "[s]imilar to the
creation of a composite web page in DDR, the present application recites
obtaining, by a network node (i.e., AD server 200), device information ... to
determine and deliver advertisements for a communication device in
connection with the call services that are also provided to the
communication device." (Id. at 14--15.)
Appellant's Specification discloses that "[s]ervices offered by today's
carriers and service providers ... [include] Call Identification (ID) or Caller
Ring-Back Tones (CRBTs)." (Spec. ,r 3.) "In the caller ID case, the phone
generally displays the caller identification information. In the CRBT case,
the caller hears a pre-selected ring-tone and generally has no option to skip it
or alter it." (Id.) "The network carriers and service providers would like to
have mechanisms to allow various advertisements (ADs) to be presented to
device users in order to generate more revenue from the same user-base. For
example, the advertisements may be context-based, location-based or even
time-based advertisements." (Id. ,r 4.)
To that end, the Specification further discloses:
Each device comprises AD receiver 128. The AD receiver
128 operates to decode ADs mixed in with call services received
from the AD server 102. For example, the device 120 receives
the AD mixed in with the call ID service and the device 122
receives the AD mixed in with the CRBT service. The AD
receiver 128 at each device operates to render received ADs
using a device display or sound system. . . . [E]ach device is
assigned ADs based on device location, context and/or time and
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those ADs are delivered as part of call services provided by the
AD server 102.
In another aspect, ADs are delivered to the devices 106
during off-peak times and stored in an advertisement inbox at
each device. When receiving a call service, the AD receiver 128
operates to obtain selected ADs from the advertisement inbox
and present these ADs to the device user.
(Id. ,I,I 45--46.)
Relatedly, claim 1 recites "transmitting, by the transceiver of the
network node via the second communication link, at least a portion of the
one or more advertisements for storing at the callee communication device
during off-peak times of the communication network on a selected periodic
basis." Claim 1 further recites
mixing the one or more advertisements with a corresponding
subscribed call service to be provided to the callee
communication device, wherein at least one of the one or more
advertisements stored at the callee communication device is
selectively retrieved to be associated with the corresponding
subscribed call service for rendering on the callee
communication device.
Considered as an ordered combination, claim 1 recites a particular
arrangement of steps, e.g., transmitting ads during off-peak times for storing
at a callee device, retrieving a stored ad and mixing it with a call service,
e.g., caller ID or CRBT, and providing this to the callee's device. See
BASCOM Global Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d
1341, 1350 (Fed. Cir. 2016).
Although the Examiner determines that "storing an advertisement for
later display is further part of the advertising effort" (Answer 3), the
Examiner does not determine that it was conventional to transmit an ad for
storing at a callee device, and to retrieve the stored ad and mix it with a call
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service, and provide this to the callee's device. Therefore, "[ a ]lthough the
invention ... was engineered in the context of [providing advertisements by
a network node], the invention was not claiming a business method per se,
but was instead claiming a technical way to satisfy an existing problem for
[carriers and service providers]. See BASCOM, 827 F.3d at 1351 (discussing
DDR Holdings, 773 F.3d at 1248-50 and 1257-59).
Thus, we will reverse the rejection of claim 1 under § 101.
Independent claims 12, 23, and 34 contain similar language. Therefore, we
will also reverse, under§ 101, the rejection of independent claims 12, 23,
and 34, and dependent claims 2-8, 10, 11, 13-19, 21, 22, 24--30, 32, 33, 35-
41, 43, 44, and 85.
Unlike claim 1, independent claim 45 simply recites "obtaining an
advertisement along with the subscribed call service," "rendering the
advertisement on the communication device," and "obtaining and storing
one or more advertisements," all without specifying from where the
advertisement is obtained or where it is stored. In other words, claim 45
simply recites functional results to be achieved. That is not sufficient to
under step two of the Alice framework. See, e.g., Apple, Inc., 842 F.3d
at 1241; see also Intellectual Ventures I LLC v. Capital One Fin. Corp., 850
F.3d 1332, 1342 (Fed. Cir. 2017).
Thus, we will affirm the rejection of claim 45 under § 101.
Independent claims 55, 65, and 75 contain similar language. Therefore, we
will also affirm, under §101, the rejection of independent claims 55, 65,
and 75, and dependent claims 46-51, 53, 54, 56-61, 63, 64, 66-71, 73, 74,
76-81, 83, and 84, which are not separately argued. See 37 C.F.R.
§ 4I.37(c)(l)(iv).
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The § 103 (a) reiection
In relevant part, claim 1 recites ( emphasis added): "determining ...
one or more advertisements for a callee communication device upon
detecting . .. a call being initiated."
The Examiner finds that Bookstaff discloses a "[ s ]ystem and method
for advertising over a communications network." (Non-Final Action 7.)
Specifically, the Examiner finds that Bookstaff discloses a "[ t ]elephone call
whereby a subscribed caller using a communication device calls or places a
call to a communication device of a subscribed callee ... , wherein said
calling functionality comprises a plurality of call services." (Id. at 7-8.)
The Examiner finds that Bookstaff further discloses that
using the call features provided by the call feature module, the
advertisement module can be adapted to select one or more
targeted advertisements . . . based on the identified call features
and provide the targeted advertisements for presentation to the
callee (and/or caller and/or both) via the telephone network,
wherein advertisements may be provided for playback to the
caller at any number of points during a telephone call.
(Id. at 8.)
The Examiner finds that Othmer discloses a system "configured to
deliver different types of content using different communication links ... or
network modes ( different transmission modes according to actual
circumstances)( ... 'while engaging in a telephone call')." (Id. at 10.)
Appellant, however, argues that
Bookstaff does not disclose or suggest . . . determining one or
more advertisements for a callee communication device upon
detecting, via a second communication link, a call being initiated
between a caller communication device and the callee
communication device based at least on obtained information of
the call and the callee communication device.
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(Appeal Br. 17 .) Appellant further argues that "Othmer6258 does not
remedy the foregoing deficiencies in Bookstaff." (Id.)
"[T]here must be some articulated reasoning with some rational
underpinning to support the legal conclusion of obviousness." KSR Int 'l Co.
v. Teleflex Inc., 550 U.S. 398,418 (2007) (quoting In re Kahn, 441 F.3d
977, 988 (Fed. Cir. 2006)). Here, however, the Examiner does not provide
sufficient articulated reasoning for us to fully evaluate the Examiner's
position as to why the cited disclosures in Bookstaff or Othmer teach
"determining . .. one or more advertisements for a callee communication
device upon detecting . .. a call being initiated," as recited in claim 1.
Therefore, we reverse the rejection of claim 1 under§ 103(a).
Independent claims 12, 23, and 34 contain similar language. Therefore, we
will also reverse, under§ 103(a), the rejection of independent claims 12, 23,
and 34, and dependent claims 2-8, 10, 11, 13-19, 21, 22, 24--30, 32, 33, 35-
41, 43, 44, and 85.
Claim 45, however, does not recite determining an advertisement
upon detecting a call being initiated. Rather, claim 45 recites "obtaining an
advertisement along with the subscribed call service, wherein the
advertisement is determined based at least on obtained information of the
incoming call and the device information associated with the communication
device." And paragraph 46 of Bookstaff discloses that ''using the call
feature( s) provided by the call feature module 224, the advertisement
module 226 could be adapted to select one or more targeted advertisements
based on the identified call features and provide the targeted advertisements
for presentation to the caller via the telephone network 208." (Bookstaff
,r 46; see also Non-Final Action 7-8.)
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Appellant further argues that Othmer does not disclose "using
different communication links for obtaining device information associated
with each of a plurality of communication devices within the communication
network, and detecting a call between communication devices and
transmitting determined advertisement for either devices." (Appeal Br. 18.)
that
We do not find this argument persuasive of error. Othmer discloses
content can be obtained from multiple content sources using any
of a number of data transmission modes or "bearers", depending
on the configuration of the device. For example, as the user
changes location, a cell phone equipped to communicate with a
cellular telephone system and to sense the wireless access points
of both Bluetooth and 802.11 networks may obtain stock quotes
via an SMS text message, art exhibit content via Bluetooth, and
a discount coupon from a nearby retailer associated with an
802.11 network.
(Othmer ,r 16.) And, the Examiner finds, and we agree, that Othmer
discloses that a "mobile communication device of a user is configured to
sense ( automatically or otherwise) [a] wireless access point . . . . It follows
that device information or information about device capability ( e.g.,
Bluetooth communications capability) is acquired (obtaining) by the system
(acquired automatically)." (Non-Final Action 9--10, citing Othmer ,r,r 16,
33, 34, and Fig. 6.)
Additionally, the Examiner determines:
It would have been obvious to one of ordinary skill in the
art at the time of the invention to expand the features of targeting
advertisements . . . as taught in the system of Bookstaff; to
include the feature as taught in Othmer of obtaining device
information via a first communication link, detecting a phone call
via a second communication link, and delivering advertisement
content while engaging in a telephone call.
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(Non-Final Action 10.)
Appellant's other arguments have been considered and are not
deemed persuasive of error.
In view of the above, we affirm the rejection of claim 45 under
§ 103(a). Independent claims 55, 65, and 75 contain similar language.
Therefore, we will also affirm, under §103(a), the rejection of independent
claims 55, 65, and 75, and dependent claims 45-51, 53, 54, 56-61, 63, 64,
66-71, 73, 74, 76-81, 83, and 84, which are not separately argued. See 37
C.F .R. § 41.3 7 ( c )(1 )(iv).
DECISION
The Examiner's rejection of claims 1-8, 10-19, 21-30, 32--41, 43, 44,
and 85 under 35 U.S.C. § 101 is reversed.
The Examiner's rejection of claims 45-51, 53---61, 63-71, 73-81, 83,
and 84 under 35 U.S.C. § 101 is affirmed.
The Examiner's rejection of claims 1-8, 10-19, 21-30, 32--41, 43, 44,
and 85 under 35 U.S.C. § 103(a) is reversed.
The Examiner's rejection of claims 45-51, 53---61, 63-71, 73-81, 83,
and 84 under 35 U.S.C. § 103(a) 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-IN-PART
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