Ex Parte Shea

Patent Trial and Appeal Board

Apr 27, 2017

11849091 (P.T.A.B. Apr. 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.
11/849,091 08/31/2007 Matthew T. Shea 109910-155145 4999
25943 7590 05/01/2017
Schwabe Williamson & Wyatt
P AC WEST CENTER, SUITE 1900
1211 SW FIFTH AVENUE
PORTLAND, OR 97204
EXAMINER
IOSIF, MARIO CINCINAT
ART UNIT PAPER NUMBER
3622
NOTIFICATION DATE DELIVERY MODE
05/01/2017 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):
IPDocketing @ S CHWABE.com
patent@ schwabe.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MATTHEW T. SHEA
Appeal 2015-000280
Application 11/849,091
Technology Center 3600
Before MURRIEL E. CRAWFORD, HUBERT C. LORIN, and
CYNTHIA L. MURPHY, Administrative Patent Judges.
CRAWFORD, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134 of the Examiner’s
final decision rejecting claims 1—14 and 19—24. We have jurisdiction over
the appeal under 35 U.S.C. § 6(b).
We AFFIRM.
BACKGROUND
Appellant’s invention is directed to methods and devices for adapting
content rendering, such as advertisements, based on attributes of an
application such as ownership information or contextual information (Spec.
1)
Appeal 2015-000280
Application 11/849,091
Claim 1 is illustrative:
1. A method comprising:
executing, by a device, an application, including
rendering primary output content of the application on a display
of the device; and
rendering, by the device, secondary content on the
display, supplementing the primary output content, based at
least in part on a licensing/ownership attribute of the
application describing a number of times the application has
been initiated at a functional level.
The Examiner relies on the following prior art reference as evidence
of unpatentability:
Kelly US 2002/0010025 A1 Jan. 24,2002
Hays WO 2005/086969 A2 Sept. 22,2005
Appellant appeals the following rejections:
Claims 1—14 and 19-24 under 35U.S.C. § 101 because the claimed
invention is directed to non-statutory subject matter;
Claims 4 and 7 under 35 U.S.C. § 112, first paragraph, as allegedly
failing to comply with the written description;
Claims 1—14 and 19—24 under 35 U.S.C. § 103(a) as unpatentable
over Hays in view of Kelly.
ISSUES
Did the Examiner err in rejecting claims 1—14 and 19—24 under
35U.S.C. § 101 because the claims physically transform the primary content,
recite an improvement in a technological process and do not preempt the
technical field of data processing/computer graphics?
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Did the Examiner err in rejection claims 4 and 7 under 35 U.S.C.
§112, first paragraph, because the Specification clearly discloses first,
second, and third licensing/ownership attributes?
Did the Examiner err in rejecting claims 1—14 and 19—24 under 35
U.S.C. § 103(a) because the prior art does not disclose rendering secondary
content based on the number of times the application has been initiated at a
functional level?
ANALYSIS
Rejection under 35 U.S.C. § 101
In the Answer, the Examiner entered a new ground of rejection under
35 U.S.C. § 101. The Examiner held that the invention relates to the abstract
idea of displaying content to a user, either primary content or secondary
contend and either game content or other content, and thus represents a
fundamental economic practice. The Examiner further held that the claims
do not include limitations that are significantly more than the abstract idea
because they do not include an improvement to another technology or
technical field or an improvement to the functioning of the computer itself.
An invention is patent-eligible if it claims a “new and useful process,
machine, manufacture, or composition of matter.” 35 U.S.C. § 101. The
Supreme Court, however, has long interpreted § 101 to include implicit
exceptions: “[ljaws of nature, natural phenomena, and abstract ideas” are
not patentable. E.g., Alice Corp. Pty. Ltd. v. CLS Bank Inti, 134 S. Ct.
2347, 2354 (2014).
In determining whether a claim falls within the excluded category of
abstract ideas, we are guided in our analysis by the Supreme Court’s two-
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step framework, described in Mayo and Alice. Id. at 2355 (citing Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1296—97
(2012)). In accordance with that framework, we first determine whether the
claim is “directed to” a patent-ineligible abstract idea. See Alice, 134 S. Ct.
at 2356 (“On their face, the claims before us are drawn to the concept of
intermediated settlement, i.e., the use of a third party to mitigate settlement
risk.”); Bilski v. Kappos, 561 U.S. 593, 611 (2010) (“Claims 1 and 4 in
petitioners’ application explain the basic concept of hedging, or protecting
against risk.”); Diamond v. Diehr, 450 U.S. 175, 184 (1981) (“Analyzing
respondents’ claims according to the above statements from our cases, we
think that a physical and chemical process for molding precision synthetic
rubber products falls within the § 101 categories of possibly patentable
subject matter.”); Parker v. Flook, 437 U.S. 584, 594—595 (1978)
(“Respondent’s application simply provides a new and presumably better
method for calculating alarm limit values.”); Gottschalk v. Benson, 409 U.S.
63, 64 (1972) (“They claimed a method for converting binary-coded decimal
(BCD) numerals into pure binary numerals.”).
The patent-ineligible end of the spectrum includes fundamental
economic practices, Alice, 134 S. Ct. at 2357; Bilski, 561 U.S. at 611;
mathematical formulas, Flook, 437 U.S. at 594—95; and basic tools of
scientific and technological work, Gottschalk, 409 U.S. at 69. On the patent-
eligible side of the spectrum are physical and chemical processes, such as
curing rubber, Diamond, 450 U.S. at 184 n.7, “tanning, dyeing, making
waterproof cloth, vulcanizing India rubber, smelting ores,” and a process for
manufacturing flour, Gottschalk, 409 U.S. at 69.
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If the claim is “directed to” a patent-ineligible abstract idea, we then
consider the elements of the claim—both individually and as an ordered
combination—to assess whether the additional elements transform the nature
of the claim into a patent-eligible application of the abstract idea. Alice, 134
S. Ct. at 2355. This is a search for an “inventive concept”—an element or
combination of elements sufficient to ensure that the claim amounts to
“significantly more” than the abstract idea itself. Id.
We are not persuaded of error on the part of the Examiner by
Appellant’s argument that the claims are not directed to an abstract idea and
that none of the claims recite displaying content (Reply 7).
Claim 1, based on its express limitations, is directed to rendering
primary content on a display and rendering secondary content on a display.
As such, claim 1 recites displaying content. This rendering is based in part
on a licensing/ownership attribute describing the number of times the
application or game has been initiated. The secondary content is disclosed
by the Specification at paragraph 12 to include advertisements, offers, and
coupons. Therefore, claim 1 is directed to displaying advertisements, offers,
and coupons based on the number of times that the application or game is
initiated. The Specification discloses at paragraph 3 that the use of the
licensing/ownership attribute allows the system to determine how likely a
user of the games is to take some action in response to the advertisement,
offer, or coupon. As such, the invention of claim 1 is a method of targeting
the presentations of advertisements or offers by displaying the advertisement
or offer based on the actions of the user which indicate whether the user is
likely to take some action. This is akin to well-known economic practices of
targeting the presentation of advertisements or offers based on various
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actions of a consumer such as the frequent purchases of a user from a
specific merchant, the purchase of specific products or services, and,
therefore, the claims recite a fundamental economic practice.
The Appellant’s arguments that the claims relate to transforming a
scenic file to a digital image or raster graphics image file is not persuasive
because claim 1 does not recite this subject matter.
In addition, we are not persuaded of error on the part of the Examiner
by Appellant’s argument that claim 1 satisfies the transformation prong
originally outlined fry the Federal Circuit in In re Bilski, 545 F.3d 943, 954
(Fed. Cir. 2008) (en banc), and subsequently confirmed as a useful and
important clue, an investigative tool, for determining whether Appellant’s
claimed invention is a process under § 101 in Bilski v. Kappos, 130 S. Ct.
3218, 3227 (June 28, 2010). In particular, claim 1 does not transform a
particular article into a different state or thing but rather at best corresponds
to manipulation of data. See Gottschalk, 409 U.S. at 72.
We are not persuaded of error on the part of the Examiner by
Appellant’s argument that the subject matter of claim I is distinguishable
from the subject matter which is the subject of Alice or Bilski, because
nothing in either case states that the subject matter therein is the only subject
matter that may be found to be abstract.
We are not persuaded of error on the part of the Examiner by
Appellant’s argument that the Examiner has provided no evidentiary support
for alleging that claim 1 is directed to a fundamental economic practice.
There is no requirement that Examiners must provide evidentiary' support in
every case before a conclusion can be made that a claim is directed to an
abstract idea. See, e.g., para. IV “July 2015 Update: Subject Matter
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Eligibility” to 2014 Interim Guidance on Subject Matter Eligibility (2014
IEG), 79 Fed. Reg. 74618 (Dec. 16, 2014) (“The courts consider the
determination of whether a claim is eligible (which involves identifying
whether an exception such as an abstract idea is being claimed) to be a
question of law. Accordingly, courts do not rely on evidence that a claimed
concept is a judicial exception, and in most cases resolve the ultimate legal
conclusion on eligibility without making any factual findings.” (emphasis
added)). Evidence may be helpful in certain situations where, for instance,
facts are in dispute. But it is not always necessary. It is not necessary in this
case.
Turning to the second step of the Alice analysis, because we determine
that independent claim 1 is directed to an abstract idea, the claim must
include an “inventive concept” in order to be patent-eligible, i.e., there must
be an element or combination of elements that is sufficient to ensure that the
claim in practice amounts to significantly more than the abstract idea itself.
Appellant argues that the claims are directed to an improvement in the
technical field of data processing/computer graphics with technical solutions
of when and how to render secondary' content supplementing the primary
content.
We do not agree. As an initial matter, we note that the claims do not
recite how content is rendered, but only that the content is rendered. In
addition, we do not agree with Appellant that this process improves an
existing technological process, and solves a technical problem in the data
processing/computer graphics field and provides solutions that overcome
technological problems within the filed. Instead, we are persuaded that even
Appellant’s more detailed description of its claimed subject matter relates to
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an abstract idea of targeting the presentation of advertisements, offers, and
coupons to consumers during game play. Of course, the advertisements and
games are presented by the use of a device. This, however, does not. in
itself, remove the claimed subject matter from the realm of the abstract as
“necessarily rooted in technology.” See Alice, 134 S. Ct. at 2352 (holding a
“computerized scheme for mitigating ‘settlement risk’ “ as unpatentable
subject matter); In re TLI Commc'ns LLCPatent Litig., 2016 WL 2865693,
at *5 (Fed. Cir. May 12, 2016) (holding unpatentable a method for recording
imaging with a phone, storing the images digitally, transmitting to a server,
and sorting based on classification information).
In view of the foregoing, we will sustain the Examiner’s rejection of
claim 1 under 35 U.S.C. § 101. We will also sustain the rejection as it is
directed to the remaining claims under this rejection because the Appellant
does not make arguments as to separate patent eligibility of these claims.
Rejection under 35 U.S.C. § 112, first paragraph
We are not persuaded of error on the part of the Examiner by
Appellant’s argument that the first licensing/ownership attribute, second
licensing/ownership attribute, and third licensing/ownership attribute are
described in paragraphs 18—20 and 22. We find that paragraphs 18—20 and
22 disclose that the licensing/ownership attributes may include game level,
number of times a user has assessed the game, whether the application is
purchased or has free access, an indication of what level of the game the user
has paid for. However, we agree with the Examiner that this is not a
disclosure that one of these attributes is a first, second, or third attribute. In
addition, this portion of the Specification does not disclose that that the
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secondary content is rendered based on a first licensing/ownership attribute
and is further based on a second licensing/ownership attribute. Rather, the
portion of the Specification relied on by the Appellant to teach this subject
matter only discloses various licensing/ownership attributes and not that any
one of the attributes is considered a first, second, or third attribute or that a
secondary content is rendered based on a first and a second attribute.
In view of the foregoing, we will sustain the Examiner’s rejection of
claims 4 and 7 under 35U.S.C. § 112, first paragraph.
Rejection under 35 U.S.C. §103
We will not sustain this rejection because we agree with the Appellant
that the prior art does not disclose rendering secondary content based on the
number of times the application has been initiated at a functional level. The
Examiner relies on paragraphs 64 and 72 of Hays for teaching this subject
matter (Final Act. 5).
We find that paragraph 64 of Hays discloses that an advertiser may
provide options for the advertiser to specify measurements and tracking
options for its advertisement campaigns that include measuring the number
of times an advertisement was viewed. This disclosure does not relate to the
number of times an application is initiated. Paragraph 72 discloses that
advertisement can be provided at the beginning and end of a game and in
between game levels (similar to commercials). While this disclosure relates
to the initiation of an application or game, it does not relate to the number of
times a game is initiated but, rather, is played at the beginning of a game
regardless of how many times the game is initiated.
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In view of the foregoing, we will not sustain this rejection as it is
directed to claim 1 and claims 2—10 dependent therefrom. We will also not
sustain this rejection as it is directed to the remaining claims because each of
these claims also recite similar subject matter.
DECISION
We affirm the Examiner’s 35 U.S.C. § 101 rejection of claims 1—14
and 19-24.
We affirm the Examiner’s 35 U.S.C. § 112, first paragraph rejection
of claims 4 and 7.
We do not affirm the Examiner’s 35 U.S.C. § 103(a) rejection of
claims 1—14 and 19—24.
TIME PERIOD
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)(1) (2009).
AFFIRMED
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