Ex Parte SHIMURA

Patent Trial and Appeal Board

Jun 26, 2018

14655086 (P.T.A.B. Jun. 26, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO.
14/655,086
62574 7590
Jason H. Vick
Sheridan Ross, PC
Suite# 1200
1560 Broadway
Denver, CO 80202
FILING DATE FIRST NAMED INVENTOR
06/24/2015 Akihiro SHIMURA
06/28/2018
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.
5553DEN-3 1238
EXAMINER
TOKARCZYK, CHRISTOPHER B
ART UNIT PAPER NUMBER
3622
NOTIFICATION DATE DELIVERY MODE
06/28/2018 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):
j vick@sheridanross.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte AKIHIRO SHIMURA
Appeal2018-005360
Application 14/655,086
Technology Center 3600
Before CAROLYN D. THOMAS, HUNG H. BUI, and NABEEL U. KHAN,
Administrative Patent Judges.
BUI, Administrative Patent Judge.
DECISION ON APPEAL
Appellant seeks our review under 35 U.S.C. § 134(a) of the
Examiner's Final Rejection of claims 1-3 and 34--53, which are all the
claims pending in the application. Claims App'x. Claims 4--33 are
cancelled. Non-Final Act. 2. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM. 1
1 Our Decision refers to Appellant's Appeal Brief ("Br.") filed January 12,
2018; Examiner's Answer ("Ans.") mailed February 27, 2018; Non-Final
Office Action ("Non-Final Act.") mailed September 6, 2017; and original
Specification ("Spec.") filed June 24, 2015.
Appeal2018-005360
Application 14/655,086
STATEMENT OF THE CASE
Appellant's invention relates to "an ad frame management system
[shown in Figure 2] that controls an ad frame transaction market on the
Internet delivery" and "that can enhance the advertising effect as a whole."
Spec. i-fi-f l, 10. Appellant's Figure 2 is reproduced below.
AD FRAME DATA
_,.....,. .... -~...--------··--~---~ ........... - ....... ____ '-'- r---- - - -- -- i~ -- -,
/·' ---~I USER
158UA1
/
/ .----··~ TER.IVHNAL
·•t;Q·.AN!1 I ViEWiNG USER _ __...------------- /!COMPUTER
1 ,._, . • / ·'·r·eo·aL1Tc __ . .-- I .............. ,....,. ........
\ 152 II f~ I : d " ..... '.~,,,_-- /
\ 41;: ___ ,,.,..,-- /
A.D FHAME s·•,'['["1:.'N. '(c ,__,,____,,____ I
RID "'I l 0 . / .. -· 1,F;{;:.f"1 I u . [! f\ l;i ,___ ____ ,,__ vu I
COMPUTEF~ - /jl
150AN2
AD FRAME
BIDDING
COMPUTEF\
11
I
l
/
/
/
B!D I t'(~'-i1'C:N''
'1 \..-~VI': :....:: :
MANAGEMENT ·DISTRIBUTING
COMPUTER COMPUTER \
._ ....... ...,... ......... .....m\
\
AD FRft,ME \
'•N·em: 1'<~E-i"uE,~Pi::Ac;>- '\ , U• ,..._~--i.\,.J •· \._,('\r...... .............
REQUEST , 158UAn
POPUL/•.RffY 154H ! 154C \ . J
BIDDING
\
\..
1 1
\ ! I isr;:R} ~ ,----..._,____,,,_ \1 - '· L
FRArv1E ! I TERMINAL
INCREASE.I ! CHANGE ! COMPUTER
I BiDD!NG
150/\N3 /
,-<>-------., /
AD FF1A!v1E
BIDDING
COMPUTER
/
)
,/
!
100
DECREASE I !NSTRUCT!NG
DETERM!NiNG I MEANS
ME:/\NS ~ ._ ___ ,...
FR/\ME COORDlNAT!NG
COMPUTER ·--.- ·154
iOO ·AD FR.l\ME MJ\Ni\GEME~~T S'i'STEM
Figure 2 shows ad frame management system 100 including ( 1) bid
management computer 152 to transmit bids for a current bid from various
ad frame bidding computers 150AN1-AN3 and (2) frame coordinating
computer 154 to determine whether to increase/ decrease the number of
add frames to be added to content for distribution based on bidding
popularity. Spec. i-fi-156-59.
2
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Application 14/655,086
Claims 1, 2, and 3 are independent. Claim 1 illustrates the claimed
subject matter, as reproduced below with disputed limitations in italics:
1. An ad frame management system comprising:
a content distributing computer that distributes, to a user
terminal computer, a distribution data including an ad frame and
a content frame on one screen;
a bid management computer that manages bidding of ad
frames according to a real-time bidding platform; and
a plurality of ad frame bidding computers that submit bids
to the bid management computer,
a frame management system comprising:
a frame coordinating computer having:
a frame increase determining means storing therein a
rule for increasing the number of ad frames and that
determines whether to increase the number of ad frames so
as to increase the number of the ad frames, without shifting
the display layout of the distribution data; and
a change instructing means, connected to the content
distributing computer, that issues a frame type change order
to the content distributing computer when the frame increase
determining means determines to increase the number of ad
frames, the content distributing computer determines to
increase the number of ad frames based a fluctuation in a
click through rate of an advertisement per unit time of the
content distributing computer, the fluctuation being
determined based on an embedded tag provided for the frame
coordinating computer, the fluctuation providing correlation
for a match rate between content and the advertisement.
App. Br. 68 (Claims App'x) (bracketing added).
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Application 14/655,086
REJECTIONS 2 & REFERENCES
(1) Claims 1-3 and 34--53 stand rejected under 35 U.S.C. § l 12(a),
as failing to comply with the written description requirement. Non-Final
Act. 6-7.
(2) Claims 1-3 and 34--53 stand rejected under 35 U.S.C. § l 12(b),
as being indefinite. Non-Final Act. 7-9.
(3) Claims 1-3 and 34--53 stand rejected under 35 U.S.C. § 101
because the claimed invention is directed to non-statutory subject matter.
Non-Final Act. 10-14.
(4) Claim 3 stands rejected under 35 U.S.C. § 102(a)(l) as being
anticipated by Serena (US 2012/0198321 Al; published Aug. 2, 2012).
Non-Final Act. 14--17.
(5) Claims 1, 2, 34--36, 38, 39, 42--46, 48, 49, 52, and 53 stand
rejected under 35 U.S.C. § 103(a) as unpatentable over Serena and Flake et
al. (US 2008/0004990 Al; published Jan. 3, 2008) (hereinafter "Flake").
Non-Final Act. 17-29.
(6) Claims 37 and 47 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Serena, Flake, and Pfeiffer (US 2008/0154889 Al;
published June 26, 2008). Non-Final Act. 29-30.
(7) Claims 40, 41, 50, and 51 stand rejected under
35 U.S.C. § 103(a) as unpatentable over Serena, Flake, and Makeev (US
2009/0319372 Al; published Dec. 24, 2009). Non-Final Act. 30-32.
2 We note that the Examiner has objected to the Specification as introducing
new matter. Non-Final Act. 2-3. Appellant presents arguments directed to
the objection. However, as recognized by the Examiner, the objection is a
petitionable matter-not an appealable matter under MPEP § 1002. As
such, we need not consider this objection on appeal.
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ANALYSIS
Written Description
With respect to claims 1-3 and 34--53, the Examiner finds several
"means-plus-function" limitations recited therein, including: (1) "a frame
increase determining means" and (2) "a change instructing means" recited in
independent claims 1 and 2; (3) "a distribution request receiving means," ( 4)
"a distribution data storing means" and ( 5) "a changing means" recited in
independent claim 3; ( 6) "bidding popularity predicting means" recited in
claims 34, 35, 44, 45; (7) "change instructing means" recited in claims 39
and 49; and (8) "informing means" recited in claims 52 and 53. Non-Final
Act. 3-5. According to the Examiner, these "means-plus-function"
limitations invoke the application of 35 U.S.C. § 112(±); however, "the
specification does not provide an adequate disclosure of the corresponding
structure ... to satisfy the requirements of 35 U.S.C. § 112(b )"and "fails to
disclose the algorithms needed to transform the general-purpose computer
referred to in the specification into a special purpose computer" to perform
the functions associated with their respective 35 U.S.C. § 112(±) limitations.
Non-Final Act. 5-8.
Because Appellant's Specification does not disclose sufficient
corresponding structure, i.e., an algorithm for performing the functions
recited in these "processor" limitation, the Examiner finds claims 1-3 and
34--53 fails to comply with the written description requirement under
35 U.S.C. § 112(a). Non-Final Act. 7.
Appellant contends (1) "the claim terms should not be interpreted
under 35 U.S.C. § 112(±), and even if they are, there is sufficient structure
and description in the specification to satisfy [] the written description
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requirement"; and (2) "the specification does explicitly provide the specific
software function being relied upon by the means element" in the context of
steps shown in Figure 5 and text described in paragraphs 63-64, 72, 82-85
of Appellants' Specification. App. Br. 1-21.
We agree with Appellant. At the outset, we note the written
description requirement under 35 U.S.C. § 112(a) requires Appellant to
"reasonably convey[] to those skilled in the art that the inventor had
possession of the claimed subject matter as of the filing date." Ariad
Pharms., Inc. v. Eli Lilly and Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010).
However, "the disclosure as originally filed does not have to provide in haec
verba support for the claimed subject matter at issue." Purdue Pharma L.P.
v. Faulding Inc., 230 F.3d 1320, 1323 (Fed. Cir. 2000). In some cases,
"drawings alone may provide a 'written description' of an invention as
required by§ 112." Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1565 (Fed.
Cir. 1991 ). Regardless, the disclosure must convey with reasonable clarity
to those skilled in the art that the inventor was in possession of the invention.
Id. at 1563-1564. Here, Appellant has shown that there is sufficient
structure and description in the specification.
Because the Examiner has not explained why Appellant's
Specification fails to make and use the claimed invention throughout its
scope, without undue experimentation, we decline to sustain the§ 112(a)
rejection of claims 1-3 and 34--53 for failure to comply with the
"enablement" requirement. "The enablement requirement is often more
indulgent than the written description requirement. The specification need
not explicitly teach those in the art to make and use the invention; the
requirement is satisfied if, given what they already know, the specification
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teaches those in the art enough that they can make and use the invention
without 'undue experimentation.'" Amgen, Inc., v. Hoechst Marion Roussel,
Inc., 314 F.3d 1313, 1334 (Fed. Cir. 2003).
Indefiniteness
Similar to the written description rejection, the Examiner finds several
"means-plus-function" limitations, including: ( 1) "a frame increase
determining means" and (2) "a change instructing means" recited in
independent claims 1 and 2; (3) "a distribution request receiving means," ( 4)
"a distribution data storing means" and ( 5) "a changing means" recited in
independent claim 3; ( 6) "bidding popularity predicting means" recited in
claims 34, 35, 44, 45; (7) "change instructing means" recited in claims 39
and 49; and (8) "informing means" recited in claims 52 and 53 invoke the
application of 35 U.S.C. § 112(f). Non-Final Act. 4--5. However, the
Examiner finds "the specification does not provide an adequate disclosure of
the corresponding structure ... to satisfy the requirements of 35 U.S.C.
§ 112(b )"and "fails to disclose the algorithms needed to transform the
general-purpose computer" referred to in the Specification into a special
purpose computer to perform the functions associated with their respective
35 U.S.C. § 112(f) limitations. Non-Final Act. 5-8.
Because Appellant's Specification does not disclose sufficient
corresponding structure, i.e., an algorithm for performing the functions
recited in these "processor" limitation, the Examiner finds claims 1-3 and
34--53 are indefinite under 35 U.S.C. § 112(b). Non-Final Act. 7-8.
Appellant contends ( 1) "the claim terms should not be interpreted
under 35 U.S.C. §112(f), and even if they are, there is sufficient structure
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and description in the specification to satisfy [] the written description
requirement"; and (2) "the specification does explicitly provide the specific
software function being relied upon by the means element" in the context of
steps shown in Figure 5 and text described in paragraphs 63-64, 72, 82-85
of Appellant's Specification. App. Br. 1-21.
We agree with Appellant only in part. Contrary to Appellant's
arguments, 35 U.S.C. § 112(±) is invoked to interpret a claim when there is a
"means-plus-function" limitation recited therein. Under 35 U.S.C. § 112(±),
the "means-plus-function" limitation must be "construed to cover the
corresponding structure, material, or acts described in the specification and
equivalents thereof." Personalized Media Commc 'ns, LLC v. Int'! Trade
Comm 'n, 161F.3d696, 703 (Fed. Cir. 1998). If the "means-plus-function"
limitation recited in the claim does not have an adequate supporting
disclosure, then the claim fails to particularly point out and distinctly claim
the invention as required under 35 U.S.C. § 112(b). See In re Donaldson
Co., 16 F.3d 1189, 1195 (Fed. Cir. 1994) ("[I]f one employs means-plus-
function language in a claim, one must set forth in the specification an
adequate disclosure showing what is meant . . . . If an applicant fails to set
forth an adequate disclosure, the applicant has in effect failed to particularly
point out and distinctly claim the invention as required by the second
paragraph of section 112.")
In the context of software, the disclosed structure is a general purpose
computer programmed to perform a disclosed algorithm. WMS Gaming, Inc.
v. Int'! Game Tech., 184 F.3d 1339, 1349 (Fed. Cir. 1999) ("In a means-
plus-function claim in which the disclosed structure is a computer, or
microprocessor, programmed to carry out an algorithm, the disclosed
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structure is not the general purpose computer, but rather the special purpose
computer programmed to perform the disclosed algorithm."). A general
purpose computer alone is insufficient if the Specification fails to disclose an
algorithm for performing the claimed function. Net MoneyIN, Inc. v.
VeriSign, Inc., 545 F.3d 1359, 1367 (Fed. Cir. 2008). In other words,
Appellant's Specification must sufficiently disclose an algorithm to
transform the general purpose computer or processor to a special purpose
processor programmed to perform the disclosed algorithm. Aristocrat
Techs. Australia Pty Ltd. v. Int'! Game Tech., 521F.3d1328, 1338 (Fed.
Cir. 2008). An algorithm is defined, for example, as "a finite sequence of
steps for solving a logical or mathematical problem or performing a task."
MICROSOFT COMPUTER DICTIONARY 23 (5th ed. 2002). An applicant may
express the algorithm in any understandable terms including as a
mathematical formula, in prose, in a flow chart, or "in any other manner that
provides sufficient structure." Finisar Corp. v. DirecTV Group, Inc., 523
F.3d 1323, 1340 (Fed. Cir. 2008).
An indefiniteness rejection under § 112(b) is appropriate if the
Specification discloses no corresponding algorithm associated with a
computer or processor. Aristocrat, 521 F.3d at 1337-38. However, mere
reference to a general purpose computer or processor with appropriate
programming without providing an explanation of the appropriate
programming, or to "software" without providing detail about the means to
accomplish the software function, is not an adequate disclosure. Id. at 1334;
Finisar, 523 F .3d at 1340-41. Likewise, simply reciting the claimed
function in the Specification, while saying nothing about how the computer
or processor ensures that those functions are performed, is not a sufficient
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disclosure for an algorithm which, by definition, must contain a sequence of
steps. Blackboard, Inc. v. Desire2Learn, Inc., 574 F.3d 1371, 1384 (Fed.
Cir. 2009).
Nevertheless, we agree with Appellant that the flowchart shown in
Figure 5 and text described in at least paragraphs 63---64, 72, 82-85 of
Appellant's Specification provide an algorithm for performing the functions
and, as such, sufficient corresponding structure. Accordingly, we do not
sustain the Examiner's rejection of claims 1-3 and 34--53 as indefinite under
35 U.S.C. § 112(b).
Abstract Idea under 35 U.S.C. § 101: Claims 1-3 and 34-53
Patent eligibility is a question of law that is reviewable de nova.
Dealertrack, Inc. v. Huber, 674 F.3d 1315, 1333 (Fed. Cir. 2012). In Alice
Corp. Pty. Ltd. v. CLS Bankint'l, 134 S. Ct. 2347 (2014), the Supreme
Court reiterates an analytical two-step framework previously set forth in
Mayo Collaborative Services v. Prometheus Laboratories, Inc., 566 U.S. 66,
79 (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
the analysis is to "determine whether the claims at issue are directed to one
of those patent-ineligible concepts," such as an abstract idea. Id. If the
claims are directed to eligible subject matter, the inquiry ends. Thales
Visionix Inc. v. United States, 850 F.3d 1343, 1349 (Fed. Cir. 2017); Enfzsh,
LLC v. Microsoft Corp., 822 F.3d 1327, 1339 (Fed. Cir. 2016). If the claims
are directed to a patent-ineligible concept, the second step in the analysis is
to consider the elements of the claims "individually and 'as an ordered
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combination'" to determine whether there are additional elements that
"'transform the nature of the claim' into a patent-eligible application."
Alice, 134 S. Ct. at 2355 (citing Mayo, 566 U.S. at 79, 78). 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. (citing Mayo, 566 U.S. at 72-73).
In rejecting independent claims 1, 2, and 3, and dependent claims 34--
53 under 35 U.S.C. § 101, the Examiner finds these claims are directed to an
abstract idea of "distributing data including an ad[ vertisement]" and
"managing bids [of advertisement], submitting bids, determining whether
to increase the number of ad frames without shifting the display layout of the
distribution data, and issuing a frame type change order ... to increase the
number of ad frames" which is analogous or similar to the abstract ideas of
"collecting information, analyzing it, and displaying certain results of the
collection and analysis" discussed in Electric Power Group. Non-Final Act.
10-11 (citing Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353
(Fed. Cir. 2016)). The Examiner also finds "the claimed managing bidding,
submitting bids, and actions for fulfilling obligations created by the bidding
(e.g., placing an ad in an ad frame)" also "relate to interpersonal and
intrapersonal activities such as managing relationships or transactions
between people, satisfying or avoiding a legal obligation, and advertising,
marketing, and sales activities or behavior," which is considered as "a
fundamental economic practice" and "certain methods of organizing human
activity" similar to fundamental economic and transactional practices
identified in Alice andBilskiv. Kappas, 561U.S.593 (2010). Ans. 8-9;
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Final Act. 11-12. In addition, the Examiner finds the steps recited in claims
1-3 and 34--53 "can be performed mentally or by a human using a pen and
paper." Non-Final Act. 11; Ans. 8.
The Examiner further finds claims 1-3 and 34--53 "do not include
additional elements that are sufficient to amount to significantly more than
the judicial exception because the additional [computer] elements" (e.g., a
content distributing computer, a user terminal, a bid management computer,
a plurality of ad frame bidding computers, a frame coordinating computer
equipped with various means) "are recited at a high level of generality (see
at least i-fi-1 [0060]-[0066] of applicant's specification) and provide
conventional computer functions that do not add meaningful limits to
practicing the abstract idea." Non-Final Act. 12-13; Ans. 11-12.
Alice/Mayo--Step 1
Turning now to the first step of the Alice inquiry, Appellant argues the
claims are not directed to "an abstract idea" because:
( 1) "the focus of the claims is on a specific improvement of an
existing technology," i.e., "the present technology makes
advertisement frame(s) work without[] drawbacks by switching
from the already placed content frame(s) to the advertisement
frames(s) based on technical rules" (App. Br. 24--29) (emphasis
omitted);
(2) "this technology cannot be performed in someone's mind and is
necessarily rooted in computer and internet technology," "[t]he
claims certainly solve a technical problem with existing internet
and advertising techniques" (App. Br. 29-30);
(3) "the claims do not invoke computer elements merely as a tool in
its ordinary capacity" (App. Br. 30-31) (emphasis omitted);
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( 4) "the claims are not directed to any method of organizing human
activities" (App. Br. 31-34) (emphasis omitted);
(5) "[l]ike Enfish, the claimed invention is directed to a specific
improvement to the way computers operate. For example, the
system of claim 1 is at least capable of improving an ad frame
management system that controls an ad frame transaction market
on the Internet delivery, and more particularly to a dynamic
switching processing for switching from a content frame to an ad
frame, or vice versa" (App. Br. 36-37 (citing Enfish); and
(6) "[l]ike McRO, the instant claims do not recite conventional
methods for switching content in a web page that have been used
by humans or by existing machines. Instead, the claims are a
patentable, technological improvement over existing methods"
(App. Br. 37-38 (citing McRO, Inc. v. Bandai Namco Games
America Inc., 837 F.3d 1299 (Fed. Cir. 2016)).
Appellant's arguments are not persuasive. Appellant's Specification
is directed to "an ad[ vertisement] frame management system that can
enhance the advertising effect as a whole." Spec. i-f 10. The Specification
further provides embodiments for evaluating whether to increase the number
of ads based on its popularity and its demand. See Fig. 5. Thus, we agree
with the Examiner that the claims are directed to the abstract idea of
"distributing data including an ad[vertisement]," which is a fundamental
economic practice. Ans. 10. Such activities are squarely within the realm of
abstract ideas. Evaluating whether to increase the number of ads based on
its popularity and its demand for distribution is a fundamental business
practice, like (1) risk hedging in Bilski, (2) intermediated settlement in Alice,
134 S. Ct. at 2356-57, (3) verifying credit card transactions in CyberSource
Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1370 (Fed. Cir. 2011), (4)
collecting and analyzing information to detect and notify of misuses in
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FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1093-94 (Fed. Cir.
2016), and ( 5) guaranteeing transactions in buySAFE, Inc. v. Google, Inc.,
765 F.3d 1350, 1354 (Fed. Cir. 2014). Evaluating whether to increase the
number of ads based on its popularity and its demand for distribution is also
a building block of a market economy. Thus, distribution of ads
(advertisements), like risk hedging, intermediated settlement, and verifying
credit card transactions, is an "abstract idea" beyond the scope of § 101.
See Alice, 134 S. Ct. at 2356.
As also recognized by the Examiner (Ans. 8), evaluating whether to
increase the number of ads based on its popularity and its demand for
distribution could be performed in the human mind, or could be performed
manually using, at most, a pen and paper, without need of any computer or
other machine. See CyberSource, 654 F.3d at 1372-73 ("[A] method that
can be performed by human thought alone is merely an abstract idea and is
not patent-eligible under§ 101."); see also In re Comiskey, 554 F.3d 967,
979 (Fed. Cir. 2009) ("[M]ental processes-or processes of human thinking-
standing alone are not patentable even if they have practical application.");
Gottschalkv. Benson, 409 U.S. 63, 67 (1972) ("Phenomena of nature ... ,
mental processes, and abstract intellectual concepts are not patentable, as
they are the basic tools of scientific and technological work" (emphasis
added)). Additionally, mental processes remain unpatentable even when
automated to reduce the burden on the user of what once could have been
done with pen and paper. CyberSource, 654 F.3d at 1375 ("That purely
mental processes can be unpatentable, even when performed by a computer,
was precisely the holding of the Supreme Court in Gottschalk v. Benson.").
All the functions recited in Appellant's claims 1-3, including receiving an
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ad frame, submitting bids of ad frames, determining whether to increase the
number of ad frames based on a click rate, can be performed in the human
mind, or by a human (advertisement executive) using pen and paper.
Accordingly, we agree with the Examiner that claims 1-3 and 34--53
are directed to "distributing [] an ad[ vertisement]," and evaluating whether
to increase the number of ads based on its popularity and its demand for
distribution, which is both ( 1) "a fundamental economic practice" identified
as an "abstract idea" by the Supreme Court in Bilski and Alice, and (2)
"mental processes" identified as an abstract idea by the Supreme Court in its
earlier trilogy of Gottschalk, Parker v. Flook, 437 U.S. 584 (1978), and
Diamond v. Diehr, 450 U.S. 175 (1981).
Alice/Mayo--Step 2
In the second step of the Alice inquiry, Appellant argues the claims
recite "additional elements that add significantly more to any alleged
abstract concept" because: (1) "[l]ike BASCOM and DDR ... the ordered
combination of the claimed features transforms any alleged abstract idea into
a particular, practical application of the alleged abstract idea" (App. Br. 38-
39 (citing DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir.
2014) and Bascom Global Internet Services, Inc. v. AT&T Mobility LLC, 827
F.3d 1341 (Fed. Cir. 2016)); and (2) "the Office Action has simply omitted
or ignored most of the body of the claims" and "[a]t this high level of
abstraction, the meaningful features of the claims have simply been
ignored." (App. Br. 39--42).
We are not persuaded by Appellant's arguments. Rather, we agree
with the Examiner that ( 1) the functions recited in Appellant's claims 1-3,
including receiving an ad frame, submitting bids of ad frames, determining
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whether to increase the number of ad frames based on a click rate are
implemented on generic computer components (e.g., computer and
processor); and (2) these additional elements (generic computer
components), whether taken individually or as an ordered combination, do
not add significantly more than the abstract idea because these additional
elements (generic computer components) are well-understood, routine and
conventional. Ans. 11-12. As described by the Supreme Court, the second
step of the Alice inquiry 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."' Alice, 134 S. Ct. at 2355 (citing Mayo, 566 U.S.
at 72-73). As discussed supra, we are not persuaded the added computer
elements transform the abstract idea into a patent eligible invention. Rather,
claims 1-3 simply incorporate a general-purpose computer and generic
components to perform the abstract concept of "distributing [] an
ad[ vertisement]," and evaluating whether to increase the number of ads
based on its popularity and its demand for distribution. Spec. i-fi-f 10-12, 28,
42, Fig. 5. Appellant has not directed our attention to anything in the record
that shows specialized computer hardware is required, nor has Appellant
shown how the claims are performed such that they are not routine,
conventional functions of a generic computer. See Alice, 134 S. Ct. 2358
("the mere recitation of a generic computer cannot transform a patent-
ineligible abstract idea into a patent-eligible invention.")
In fact, none of the steps and elements recited in Appellant's claims
1-3 provide, and nowhere in Appellant's Specification can we find, any
description or explanation as to how "distributing [] an ad[ vertisement]," and
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evaluating whether to increase the number of ads based on its popularity and
its demand for distribution is intended to provide: (1) a "solution ...
necessarily rooted in computer technology in order to overcome a problem
specifically arising in the realm of computer networks," as explained by the
Federal Circuit in DDR Holdings, 773 F.3d at 1257; (2) "a specific
improvement to the way computers operate," as explained in Enfzsh, 822
F.3d at 1336; or (3) an "unconventional technological solution ... to a
technological problem" that "improve[ s] the performance of the system
itself," as explained in Amdocs (Israel) Ltd. v. Openet Telecom, Inc., 841
F.3d 1288, 1300, 1302 (Fed. Cir. 2016).
Accordingly, claims 1-3 and 34--53, when considered "both
individually and 'as an ordered combination,"' amount to nothing more than
an attempt to patent the abstract idea embodied in the steps of the claims
(see Alice, 134 S. Ct. at 2355 (quoting Mayo, 566 U.S. at 78)).
Lastly, Appellant argues that the claims do not seek to tie up or
preempt "all ways of providing internet content." App. Br. 39. However,
this argument is not persuasive because, although "preemption may signal
patent ineligible subject matter, the absence of complete preemption does
not demonstrate patent eligibility." Ariosa Diagnostics, Inc. v. Sequenom,
Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015). "Where a patent's claims are
deemed only to disclose patent ineligible subject matter" under the
Alice/Mayo framework, "preemption concerns are fully addressed and made
moot." Id.
Because we agree with the Examiner's analysis and find Appellant's
arguments insufficient to show error, we sustain the rejection of claims 1-3
and 34--53 under 35 U.S.C. § 101.
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Anticipation under 35 U.S.C. § 102: Claim 3
Claim 3 recites a content distributing computer connected to a frame
coordinating computer and a user terminal computer, comprising, inter alia:
a changing means, connected to the content distributing
computer, adapted to change the content frame to the ad frame
of the distribution data stored in the storing means without
shifting the display layout of the distribution data, upon receiving
an order to change the number of frames from the frame
coordinating computer, the content distributing computer
determines to increase the number of ad frames based a
fluctuation in a click through rate of an advertisement per unit
time of the content distributing computer, the fluctuation being
determined based on an embedded tag provided for a frame
coordinating computer, the fluctuation providing correlation for
a match rate between content and the advertisement.
App. Br. 69 (Claims App 'x).
Appellant acknowledges Serena discloses an observation program to
observe content which includes at least one term (e.g., an advertisement for a
first bank) and replace an advertisement with a replacement content such as
another advertisement or service for a second bank, or an advertisement link
(hyperlink). App. Br. 48--49 (citing Serena i-fi-12, 39, 41, 47, 75-76).
However, Appellant argues Serena does not disclose any
changing means, connected to the content distributing
computer, adapted to change the content frame to the ad frame
of the distribution data stored in the storing means without
shifting the display layout of the distribution data, upon
receiving an order to change the number of frames from the
frame coordinating computer
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as recited in claim 3. App. Br. 49-50. In addition, Appellant argues "Serena
is absolutely devoid of any teaching [] that can be correlated to the claimed
feature of a click through rate of an advertisement per unit time let alone the
other features" recited in claim 3. App. Br. 54.
In response, the Examiner takes the position that ( 1) when an
advertisement of Serena is replaced with a replacement content (e.g.,
advertisement or hyperlink) "the total number [of] areas or regions on the
page-i.e., ad and content frames-as well as the page layout stays the same
when a replacement image of the same size is used" and (2) Serena's meta-
clicking (for example, alt-shift click) on the advertisement represents
Appellant's claimed "click through rate of an advertisement per unit time."
As such, the Examiner asserts Serena discloses (1) "chang[ing] the content
frame to the ad frame of the distribution data stored in the storing means
without shifting the display layout of the distribution data" and (2)
"increas[ing] the number of ad frames based a fluctuation in a click through
rate of an advertisement per unit time of the content distributing computer"
as recited in claim 3. Ans. 13-14 (citing Serena i-fi-137, 43, 47, 75, 89).
We disagree with the Examiner. Anticipation under 35 U.S.C. § 102
is a question of fact. Brown v. 3M, 265 F.3d 1349, 1351 (Fed. Cir. 2001). A
patent claim is anticipated only if each and every element as set forth in the
claim is found, either expressly or inherently described in a single prior art
reference. Summit 6, LLC v. Samsung Elecs. Co., 802 F.3d 1283, 1294 (Fed.
Cir. 2015) (citing Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369
(Fed. Cir. 2008)).
Serena discloses the use of an observation program to allow a user to
observe an advertisement 702 (shown in Figure 7) and to control the
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replacement of the observed advertisement 702 by way of "meta-clicking
(for example, alt-shift click) on the advertisement 702. Serena i-fi-12, 17-18,
4 7. According to Serena, when the user clicks on the observed
advertisement 702, different options for preferences relating to that content
are provided to the user, including: (1) "a box 705 selecting the URL or a
substring of the URL address 705," (2) a box 710 selecting the
advertisement itself, (3) a box 715 selecting all content originating from the
originator of that advertisement, and ( 4) a box 720 selecting the IP address.
Serena i1 4 7. Contrary to the Examiner's findings, Serena does not disclose
any
increase the number of ad frames based a fluctuation in a click
through rate of an advertisement per unit time of the content
distributing computer, the fluctuation being determined based
on an embedded tag provided for a frame coordinating
computer, the fluctuation providing correlation for a match rate
between content and the advertisement
recited in claim 3.
Based on this record, we do not sustain the Examiner's anticipation
rejection of independent claim 3 based on Serena.
Obviousness under 35 U.S.C. § 103: Claims 1, 2, and 34-53
Because the Examiner's obviousness rejections of claims 1, 2, and
34--53 are predicated upon the correctness of the anticipation rejection of
claim 3 based on Serena, we also do not sustain the Examiner's obviousness
rejections of(l) claims 1, 2, 34--36, 38, 39, 42--46, 48, 49, 52, and 53 as
unpatentable over Serena and Flake; (2) claims 37 and 47 as unpatentable
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over Serena, Flake, and Pfeiffer; and (3) claims 40, 41, 50, and 51 s as
unpatentable over Serena, Flake, and Makeev.
DECISION
As such, we AFFIRM the Examiner's final rejection of claims 1-3
and 34--53 under 35 U.S.C. § 101. However, we REVERSE the Examiner's
final rejection of claims 1-3 and 34--53 under (1) 35 U.S.C. §§ 112(a) as
failing to comply with the written description requirement; (2) 35 U.S.C.
§§ 112(b) as being indefinite; (3) 35 U.S.C. §§ 102 and 103 as being
anticipated/obvious based on Serena and other prior art references.
Because we have affirmed at least one ground of rejection with
respect to each claim on appeal, the Examiner's decision is
affirmed. See 37 C.F.R. § 41.50(a)(l).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a) (1 )(iv).
AFFIRMED
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