Ex Parte Serena

Patent Trial and Appeal Board

Feb 27, 2017

11898887 (P.T.A.B. Feb. 27, 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.
11/898,887 09/17/2007 Frank David Serena 8802.127,NPUS00_P11124US1 4384
77970 7590 03/01/2017
Polsinelli — Apple Inc.
c/o Polsinelli PC
Three Embarcadero Center, Suite 1350
San Francisco, CA 94111
EXAMINER
VIG, NARESH
ART UNIT PAPER NUMBER
3622
NOTIFICATION DATE DELIVERY MODE
03/01/2017 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):
Apple @ Polsinelli. com
cadocket @ Polsinelli. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte FRANK DAVID SERENA
Appeal 2015-006594
Application 11/898,8871
Technology Center 3600
Before HUBERT C. LORIN, JAMES A. WORTH, and
ROBERT J. SILVERMAN, Administrative Patent Judges.
LORIN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Frank David Serena (Appellant) seeks our review under 35 U.S.C.
§ 134 of the final rejection of claims 1—4, 6—16, and 18—31. We have
jurisdiction under 35 U.S.C. § 6(b) (2002).
SUMMARY OF DECISION
We REVERSE and enter a NEW GROUND OF REJECTION.
1 The Appellant identifies Apple Inc. as the real party in interest. App. Br. 3.
Appeal 2015-006594
Application 11/898,887
THE INVENTION
Claim 13, reproduced below, is illustrative of the subject matter on
appeal.
13. A method comprising:
receiving advertising content from a sponsor;
determining an ad value associated with a presentation of
the advertising content, the ad value being redeemable to
purchase other items;
combining the advertising content with the ad value to
yield a combined advertisement,
wherein the ad value is inserted into the advertising
content as a watermark such that the ad value is not visible to a
user during presentation of the advertising content; and
transmitting the combined advertisement to a user device.
THE REJECTION
The Examiner relies upon the following as evidence of
unpatentability:
Kurihara US 2004/0044576 A1 Mar. 4,2004
Ray US 2007/0288951 A1 Dec. 13,2007
The following rejection is before us for review:
1. Claims 1—4, 6—16, and 18—31 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Ray and Kurihara.
ISSUE
Did the Examiner err in rejecting claims 1—4, 6—16, and 18—31 are
rejected under 35 U.S.C. § 103(a) as being unpatentable over Ray and
Kurihara?
2
Appeal 2015-006594
Application 11/898,887
ANALYSIS
We agree with the Appellant that Ray does not disclose “combin[ing]
[an] advertising content with [an] ad value to yield a combined
advertisement” (claim 1), a limitation all the claims include, as the Examiner
has alleged. See App. Br. 8—10.
The Examiner cited Figures 3, 4b, and 9 and associated disclosure in
support of finding that Ray discloses said claim limitation. However, we do
not see anywhere in said disclosures a combined advertisement from
combining an advertising content with an ad value. In response to the
Appellant’s argument in the Appeal Brief, the Examiner cites more
particularly “Fig. 3, item 308, Fig. 4b, item 440” of Ray. Ans. 2. But item
308 in Fig 3 states
TRANSMIT PROGRAM CONTENT COMPRISING
NONCOMMERCIAE CONTENT AND A COMMERCIAL TO A
CONTENT RECEIVER OPERATED BY A CONSUMER,
WHEREIN THE CONTENT RECEIVER IS CONFIGURED TO
STORE THE NON-COMMERCIAL CONTENT AS STORED NON­
COMMERCIAL CONTENT AND CONFIGURED TO STORE THE
COMMERCIAL AS A STORED COMMERCIAL FOR LATER
PLAYBACK
and item 440 of Fig. 4b states “CREDIT THE CONSUMER WITH
MONETARY VALUE.” Ray, Figs 3, 4b. These statements would not lead
one of ordinary skill in the art to combine an advertising content with an ad
value to yield a combined advertisement as claimed. As the Appellant has
argued, “Ray simply discloses crediting a user for viewing an advertisement
based on pre-defined rules in the registration of the incentive program.”
App. Br. 10.
3
Appeal 2015-006594
Application 11/898,887
For the foregoing reasons, a prima facie case of obviousness has not
been made out in the first instance by a preponderance of the evidence.
Accordingly, the rejection is not sustained.
NEW GROUND OF REJECTION
Claims 1—4, 6—16, and 18—31 are rejected under 35 U.S.C. § 101 as
being directed to judicially-excepted subject matter.
Alice Corp. Pty. Ltd. v. CLS Bank International, 134 S. Ct. 2347
(2014) identifies a two-step framework for determining whether claimed
subject matter is judicially-excepted from patent eligibility under § 101.
According to Alice step one, “[w]e must first determine whether the
claims at issue are directed to a patent-ineligible concept,” such as an
abstract idea. Alice, 134 S. Ct. at 2355.
Taking claim 13 as representative of the claims on appeal, the claimed
subject matter is directed to value-added advertising. Value-added
advertising is a fundamental economic practice. As such, it is an abstract
idea.
Step two is “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.’” Id. (alteration in original) (quoting Mayo Collaborative
Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1294 (2012)).
We see nothing in the subject matter claimed that transforms the
abstract idea of value-added advertising into an inventive concept.
4
Appeal 2015-006594
Application 11/898,887
The method of claim 13 sets out four steps by which two types of
information content—an advertising content and an ad value—are combined
and transmitted. Specifically, the first three steps, which are not linked to
any device and some of which could be practiced mentally (cf. In re
Comiskey, 554 F.3d 967, 979 (Fed. Cir. 2009) (“mental processes—or
processes of human thinking—standing alone are not patentable even if they
have practical application”), involving (1) “receiving” a first content, (2)
“determining” a second content, and (3) “combining” the first and second
contents so that the second content is inserted as a watermark and not visible
during presentation. Finally, (4) the method calls for “transmitting” the
combined content “to a user device,” the claim leaving open the mode of
transmission.
None of these individual steps, viewed “both individually and ‘as an
ordered combination,’” transform the nature of the claim into patent-eligible
subject matter. See Alice, 134 S. Ct. at 2355 (quoting Mayo, 132 S. Ct. at
1297, 1298).
The receiving, determining, combining, and transmitting steps are
known operations for gathering, designing, and communicating desired
information and thus add little to patentably transform the value-added
advertising abstract idea. The specific types of information set forth in the
claims, as well as the specific design (e.g., watermarking), gives the
combined receiving, determining, combining, and transmitting steps a
practical application. But that is not enough to transform the nature of the
claim into patent-eligible subject matter. Cf. CyberSource Corp. v. Retail
Decisions, Inc., 654 F.3d 1366, 1371 (Fed. Cir. 2011) (“The Court [Parker
5
Appeal 2015-006594
Application 11/898,887
v. Flook, 437 U.S. 584 (1978)] rejected the notion that the recitation of a
practical application for the calculation could alone make the invention
patentable.”).
Finally, we note that claim 13 calls for transmitting the combined
content “to a user device.” But any general-purpose computer available at
the time the application was filed would have satisfied this limitation. The
Specification supports that view. See Spec. 7:3—12. “[T]he mere recitation
of a generic computer cannot transform a patent-ineligible abstract idea into
a patent-eligible invention. Stating an abstract idea ‘while adding the words
“apply if” is not enough for patent eligibility.” Alice, 134 S. Ct. at 2358.
For the foregoing reasons, we find that claim 13 covers claimed
subject matter that is judicially-excepted from patent eligibility under § 101.
The other independent claims—apparatus claims 1 and 8 and method claim
19 parallel claim 13—similarly cover claimed subject matter that is
judicially-excepted from patent eligibility under § 101. The dependent
claims describe various presentation and business related schemes which do
little to patentably transform the abstract idea.
Therefore, we enter a new ground of rejection of claims 1—4, 6—16,
and 18-31 under 35 U.S.C. § 101.
For the foregoing reasons, the rejections are reversed, but the claims
are newly rejected under §101.
CONCLUSIONS
The rejection of claims 1—4, 6—16, and 18—31 under 35 U.S.C.
§ 103(a) as being unpatentable over Ray and Kurihara is reversed.
6
Appeal 2015-006594
Application 11/898,887
Claims 1—4, 6—16, and 18—31 are newly rejected under 35 U.S.C.
§ 101 as being directed to judicially-excepted subject matter.
DECISION
The decision of the Examiner to reject claims 1—4, 6—16, and 18—31 is
reversed.
Claims 1—4, 6—16, and 18—31 are newly rejected.
NEW GROUND
This decision contains a new ground of rejection pursuant to 37
C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.” 37 C.F.R. § 41.50(b) also provides that the Appellants, WITHIN
TWO MONTHS FROM THE DATE OF THE DECISION, must exercise
one of the following two options with respect to the new ground of rejection
to avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment
of the claims so rejected or new evidence relating to the claims
so rejected, or both, and have the matter reconsidered by the
examiner, in which event the proceeding will be remanded to the
examiner. . . .
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same record. . . .
7
Appeal 2015-006594
Application 11/898,887
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) (2011).
REVERSED; 37 C.F.R, $ 41.50(b)
8