Ex Parte Shkedi et al

Patent Trial and Appeal Board

Dec 20, 2018

14089645 (P.T.A.B. Dec. 20, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/089,645 11/25/2013 Roy Shkedi
26362 7590 12/25/2018
LOUIS J. HOFFMAN, P.C.
7689 East Paradise Lane
Suite 2
Scottsdale, AZ 85260
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.
14-TV4-CON2 9960
EXAMINER
BARTLEY, KENNETH
ART UNIT PAPER NUMBER
3693
NOTIFICATION DATE DELIVERY MODE
12/25/2018 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):
Louis@valuablepatents.com
donald@valuablepatents.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ROY SHKEDI AND RONEN SHLOMO
Appeal2017-000325
Application 14/089,645
Technology Center 3600
Before MURRIEL E. CRAWFORD, BIBHU R. MOHANTY, and
MATTHEWS. MEYERS, Administrative Patent Judges.
CRAWFORD, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant(s) seek our review under 35 U.S.C. § 134 of the Examiner's
final decision rejecting claims 50-80. We have jurisdiction over the appeal
under 35 U.S.C. § 6(b ). Appellants appeared for oral hearing on November
28, 2016.
We REVERSE.
Claim 50 is illustrative:
50. A computer-implemented method of dealing with online
activity of a first user having a first set-top box and a first online user
interface device, the method comprising:
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Application 14/089,645
(a) receiving at a computer system a notification, wherein the
notification: (i) includes or references a first set-top box identifier, and (ii)
results from and signifies a first television advertisement presented using the
first set-top box that corresponds to the first set-top box identifier; and
(b) using the notification, automatically with the computer system
causing a first action to be taken with respect to online activity through the
first online user interface device subsequent to presentation of the first
television advertisement, which first online user interface device
corresponds, at a time of the first action, to a first online user interface
device identifier;
( c) wherein the first online user interface device identifier and the first
set top box identifier are associated without using personally identifiable
information pertaining to a user of the set-top box that corresponds to the
first set-top box identifier.
Appellant(s) appeal the following rejection(s):
1. Claims 50-60 and 63-80 under 35 U.S.C. § 101 as directed to non-
statutory subject matter.
2. Claims 50-60 and 63-80 under 35 U.S.C. § I02(b) as anticipated by
Blasko (US 2001/0049620 Al, published December 6, 2001).
3. Claims 61 and 62 under 35 U.S.C. § I03(a) as unpatentable over Blasko
in view of Ertugrul (US 2008/0222283 Al, published September 11,
2008).
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PRINCIPLES OF LAW
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: "[l]aws of nature, natural phenomena, and abstract ideas" are
not patentable. E.g., Alice Corp. Pty. Ltd. v. CLS Bank Int 'l, 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-
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. Kappas, 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.").
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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, Parker, 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.
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.
ANALYSIS
Rei ection under 3 5 US. C. § 101
The Examiner determines that the claims are directed to causing
actions based on advertisement which is a fundamental economic practice.
Final Act. 20. The Examiner finds:
The additional element(s) or combination of elements in the
claim( s) other than the abstract idea per se amount( s) to no
more than recitation of generic computer structure that
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Application 14/089,645
serves to perform generic computer functions that are well-
understood, routine, and conventional activities previously
known to the pertinent industry. Viewed as a whole,
these additional claim element( s) do not provide meaningful
limitation( s) to transform the abstract idea into a patent eligible
application of the abstract idea such that the claim(s) amounts
to significantly more than the abstract idea itself.
Final Act. 20-21
Appellants argue that the rejection fails because the Examiner did not
acknowledge or discuss any "additional elements" or the "combination of
elements" to determine whether these additional elements or the
combination of elements amount to significantly more than the abstract idea.
The Appellants are correct. The Examiner has not addressed what
elements of claim 50 were considered in making the finding that the
additional elements amount to only generic computer structure which
performs generic computer functions. In this regard, claim 50 recites using a
notification which results from a television advertisement presented using a
set top box which causes "a first action to be taken with respect to online
activity through the first online user interface device." This recitation
requires an interaction between a set top box and an online device. The
Examiner did not discuss much less analyze why this recitation in claim 50
does not amount to significantly more than the abstract idea and thus does
not support this finding.
In view of the foregoing, we will not sustain this rejection as it is
directed to claim 50. \Ve will also not sustain this rejection as it is directed
to the remaining claims for the same reason . .....,
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Prior art reiections
We will not sustain the rejection under 35 U.S.C. § 102(b) because we
agree with the Appellants that the Examiner has not established that Blasko
discloses that the device identifier and the first set top box identifier are
associated without using personally identifiable information as required by
claim 50.
The Examiner relies on paragraphs 16, 22, 50 and 77 for teaching this
subject matter. Final Act. 24-25.
We find that paragraph 16 describes a system and method for
transaction profiling using transaction data in a privacy protected manner.
In the Internet context, purchase data is used for the transaction data and in
the television context programming or advertisements watched is used for
the transaction data.
We find that paragraph 22 describes an embodiment of the Blasko
invention which includes a secured correlation system which receives locally
generated profile vectors and generates aggregated profile vectors. The
aggregated profile vectors are used to target advertisement.
We find that paragraph 50 describes that in the case of television
programming, the profile vectors may indicate the type of programming the
user is interested in and in the case of the Internet, the profile vectors may
indicate the type and style of web pages the user prefers or the interests of
the user based on the content of the web pages.
We find that paragraph 77 describes that the secure correlation server
is configured to receive transactions profile vectors from one or more
sources. The transaction profile vectors are based on one or more actions in
a transaction profile vector based on one or more actions in a transaction,
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e.g. retail purchases, on-line purchases, television viewing habits, web
surfing habits etc.
We find no disclosure in these portions of Blasko of associating a set
top box identifier with a device identifier without using personally
identifiable information. Therefore we will not sustain the rejection of claim
50 under 35 U.S.C. § 102(b). We will also not sustain the rejection as it is
directed to the remaining claims subject to this rejection for the same reason.
We will also not sustain the Examiner's rejection under 35 U.S.C.
§ 103(a) because the Examiner relies on Blasko for teaching the subject
matter we have found above is not disclosed in Blasko.
DECISION
We reverse the Examiner's§ 101 and§ 103 rejections.
REVERSED
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