Ex Parte Silver et al

Patent Trial and Appeal Board

Oct 19, 2018

12349859 (P.T.A.B. Oct. 19, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/349,859 01/07/2009
149379 7590 10/23/2018
Clarivate Analytics, Legal Department
(C/0 Janice Read)
1500 Spring Garden Street
4th Floor
Philadelphia, PA 19130
FIRST NAMED INVENTOR
David Silver
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.
509976US 5814
EXAMINER
ZELASKIEWICZ, CHRYSTINAE
ART UNIT PAPER NUMBER
3621
NOTIFICATION DATE DELIVERY MODE
10/23/2018 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):
clarivate.docketing@clari vate. com
oblonpat@oblon.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DAVID SIL VER, DARYLE S. FONG, JEFF KLEIN,
P. GARRETT GAUDIN!, and ANDREW HORTON
Appeal2017-007322
Application 12/349,859 1
Technology Center 3600
Before ST. JOHN COURTENAY III, LARRY J. HUME, and
JOYCE CRAIG, Administrative Patent Judges.
CRAIG, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's non-
final rejection of claims 1---6 and 9--27, which are all of the claims pending in
this application. Claims 7 and 8 previously have been cancelled. We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 According to Appellants, the real party in interest is Camelot UK Bidco
Limited. App. Br. 2.
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Application 12/349,859
INVENTION
Appellants' application relates to tools and techniques for providing
information about online entities. Spec. 6. Claim 1 is illustrative of the
appealed subject matter and reads as follows:
1. A system for providing information about online entities, the
system comprising:
a brand notification computer system comprising a first
processor and a first computer readable storage medium having
encoded thereon a first set of instructions executable by the brand
notification computer system, wherein, when executed by the
first processor, the first set of instructions cause the first
processor to:
identify a set of online content on a website having a
corresponding siteowner, the siteowner comprising at least one
of an entity that owns the website, an entity that maintains the
website, and an entity that is responsible for the set of online
content, the set of online content being identified by a uniform
resource locator ("URL");
provide a user interface to facilitate interaction between the
brand notification computer system and a first user, the first user
comprising a brandowner associated with a brand, or a
representative of the brandowner;
display, via the user interface, the set of online content for the
first user;
receive, from the first user via the user interface, user input
indicating that the set of online content improperly uses the
brand;
determine, based at least in part on the user input indicating that
the set of online content improperly uses the brand, that the set
of online content includes an improper brand usage;
generate a brand notification that includes the determination that
the set of online content includes an improper brand usage,
wherein the brand notification comprises an identification of the
URL, an identification of the brand, an identification of the
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brandowner, and an indication of a category describing at least
one activity that demonstrates how the set of online content
improperly uses the brand, the brand notification being formatted
with a structured markup language;
generate a brand notification feed comprising the brand
notification provide the brand notification feed upon request
from a brand notification client at a security vendor computer
system; and
display, via the user interface, status information about the brand
notification;
the security vendor computer system comprising a second
processor and a second computer-readable storage medium
having encoded thereon a second set of instructions executable
by the security vendor computer system, wherein, when executed
by the second processor, the second set of instructions cause the
second processor to:
receive, at the brand notification client, a Java object requesting
the brand notification feed from the brand notification computer
system;
convert the Java object request into a brand notification request
at the brand notification client;
transmit the brand notification request from the brand
notification client for reception by the brand notification
computer system;
receive, at the brand notification client, the brand notification
feed from the brand notification computer system;
convert, at the brand notification client, the brand notification
feed to a Java object response available to the security vendor
computer system, the Java object response comprising
information from the brand notification feed;
provide the Java object response, from the brand notification
client, for use by the security vendor computer system;
publish, from the security vendor computer system and to a
security client on a computer used by a second user, the second
user comprising a subscriber to a security service hosted by the
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security vendor, a notification that the URL is suspect, based at
least in part on the information from the brand notification feed;
receive, from the siteowner, information disputing the
determination that the set of online content includes an improper
brand usage; and
transmit, via the brand notification client software program, a
dispute notification indicating that the siteowner disputes the
determination that the set of online content includes an improper
brand usage;
wherein the first set of instructions further causes the brand
notification computer system to:
receive the dispute notification;
display, via the user interface, the dispute notification;
receive, from the first user via the user interface, user input
indicating a status of the dispute;
update the brand notification, based at least in part on the user
input indicating the status of the dispute;
generate an updated brand notification feed comprising the
updated brand notification; and
provide the updated brand notification feed upon request from
the brand notification client at the security vendor computer
system.
REJECTIONS
Claims 1-6 and 9-27 stand rejected under 35 U.S.C. § 101 because
the claimed invention is directed to a judicial exception to patent-eligible
subject matter, without significantly more. Non-Final Act. 3.
Claim 1 stands rejected under 35 U.S.C. § I03(a) as unpatentable over
the combination of Krishnamurthy et al. (US 7,698,442 Bl; issued Apr. 13,
2010) ("Krishnamurthy"), Dixon et al. (US 2006/0253458 Al; published
Nov. 9, 2006) ("Dixon"), Rogers (US 2008/0162368 Al; published July 3,
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2008), and Green et al. (US 2006/0106866 Al; May 18, 2006) ("Green").
Non-Final Act. 9.
Claims 2---6 and 9--27 stand rejected under 35 U.S.C. § I03(a) as
unpatentable over the combination of Krishnamurthy, Dixon, and Green.
Non-Final Act. 16.
ANALYSIS
We have reviewed the Examiner's rejections of claims 1---6 and 9-27
in light of Appellants' arguments that the Examiner erred. We have
considered in this decision only those arguments Appellants actually raised
in the Briefs. Any other arguments Appellants could have made, but chose
not to make, in the Briefs are waived. See 37 C.F.R. § 4I.37(c)(l)(iv).
Appellants' arguments are not persuasive of error. We agree with and
adopt as our own the Examiner's findings of facts and conclusions as set
forth in the Answer (Ans. 2-8) and in the Action from which this appeal was
taken (Non-Final Act. 9--30). We provide the following explanation for
emphasis.
Rejection of Claims 1-6 and 9-27 under 35 US.C. § 101
The Examiner concluded that claims 1---6 and 9-27 are directed to the
abstract idea of providing a forum to bring about a brand dispute, which is
an idea of itself and a certain method of organizing human activity. Non-
Final Act. 3. The Examiner further concluded the claim limitations do not
recite additional elements that amount to significantly more than the judicial
exception because the additional limitations simply describe the abstract
idea. Id. at 6-7.
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. Alice Corp. v. CLS Bank
Int'!, 134 S. Ct. 2347, 2355 (2014) (citing Mayo Collaborative Servs. v.
Prometheus Labs., Inc., 566 U.S. 66, 76-77 (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.
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. (internal quotations and
citation omitted).
Appellants first contend the Examiner failed to make a prima facie
case of patent ineligibility because the Examiner incorrectly characterized
Appellants' claims. App. Br. 6-7.
We disagree. The Examiner satisfied the burden of establishing a
primafacie case under 35 U.S.C. § 132 by setting forth a rejection in a
sufficiently articulate and informative manner. In re Jung, 637 F.3d 1356,
1363 (Fed. Cir. 2011). If the Examiner "adequately explain[s] the
shortcomings ... the burden shifts to the applicant to rebut the prima facie
case with evidence and/or argument." Hyatt v. Dudas, 492 F.3d 1365, 1370
(Fed. Cir. 2007). The Non-Final Office Action adequately explains the
§ 101 rejection. See Non-Final Act. 3-9. The Examiner's statements satisfy
§ 132(a) because they apply the Alice analytical framework and apprise
Appellants of the reasons for the§ 101 rejection under that framework.
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Appellants have not responded by alleging a failure to understand the
rejection. To the contrary, Appellants clearly identify the abstract idea. See,
e.g., App. Br. 5.
Appellants further argue "merely pasting text from the Office's § 101
Guidelines and citing Federal Circuit cases-without any explanation or
analysis----does not equate to a showing or explanation sufficient to create a
prima facie case of patent ineligibility or should not be considered
responsive to Appellant's evidence-supported assertions." Reply Br. 2.
We disagree because the Examiner's determination that the claims are
directed to an abstract idea is consistent with the approach required by Alice
and approved by our reviewing court in several subsequent decisions. The
Federal Circuit has held that the "decisional mechanism" for determining
whether a claim is directed to an abstract idea compares the claim to those
claims previously found to have been directed to abstract ideas in other
cases. Amdocs (Isr.) Ltd. v. Openet Telecom, Inc., 841 F.3d 1288 (Fed. Cir.
2016) ("[T]he decisional mechanism courts now apply is to examine earlier
cases in which a similar or parallel descriptive nature can be seen-what
prior cases were about, and which way they were decided.").
Here, that is precisely what the Examiner has done. In concluding the
claims are directed to an abstract idea, the Examiner found Appellants'
claims
are similar to several examples of abstract ideas identified by
the courts: 1) obtaining and comparing intangible data as in
CyberSource (e.g. obtaining user input and brandowner
identification of online content that allegedly uses his brand
improperly, comparing this data to a siteowner' s information);
and 2) arbitration as in Comiskey ( e.g. disputing use of a brand,
presenting information from opposing sides).
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See Non-Final Office Action 7-9; Ans. 3--4; and CyberSource Corp. v.
Retail Decisions, Inc., 654 F.3d 1366, 1373 (Fed. Cir. 2011) ("[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."). We discern no error in the Examiner's analysis, and
Appellants do not present any argument or explanation as to how the present
claims differ from those found ineligible in the cases identified by the
Examiner. Without such explanation, Appellants do not identify error in the
Examiner's determination.
Applying the framework set forth in Alice, and as the first step of that
analysis, we agree with the Examiner that claim 1 is directed to an abstract
idea. Ans. 3. We agree with the Examiner that limitations directed to
identifying the content, providing user input, and generating notifications
and feeds regarding the alleged improper brand usage are directed to
disputing the use of the brand. We also agree with the Examiner that
limitations directed to having a vendor system publish a notification,
receiving additional information regarding the dispute, and updating the
status of the dispute are directed to allowing the brand owner to continue
disputing the use of his brand. See Non-Final Office Action 3-7. Thus, we
are not persuaded of error in the Examiner's conclusion that claim 1 is
directed to the abstract idea of "providing a forum to bring about a brand
dispute." See Non-Final Act. 3.
Moreover, each of independent claims 1, 2, and 23-27 requires in one
form or another collecting, analyzing, and displaying data. App. Br. 20-22
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(Claim 1 ). The steps recited in claim 1 are directed to collecting data (user
input); analyzing the data ( determining based on user input improper brand
usage); and displaying brand notification information.
Abstract ideas include the concepts of collecting data, recognizing
certain data within the collected data set, and storing the data in memory.
Content Extraction & Transmission LLC v. Wells Fargo Bank, N.A., 776
F.3d 1343, 1347 (Fed. Cir. 2014). Additionally, the collection of information
and analysis of information (e.g., recognizing certain data within the dataset)
are also abstract ideas. Electric Power, 830 F.3d at 1353 (holding that
"collecting information, analyzing it, and displaying certain results of the
collection and analysis" are "a familiar class of claims 'directed to' a patent
ineligible concept"); see also In re TL! Commc 'ns LLC Patent Litig., 823
F.3d 607, 611 (Fed. Cir. 2016); FairWarning IP, LLC v. Iatric Sys., Inc., 839
F.3d 1089, 1093-94 (Fed. Cir. 2016). Similarly, "collecting, displaying, and
manipulating data" is an abstract idea. Intellectual Ventures I LLC v.
Capital One Financial Corp., 850 F.3d 1332, 1340 (Fed. Cir. 2017).
In this regard, we agree with the Examiner that the steps of claim 1
are similar to the steps the Federal Circuit determined were patent ineligible
in Electric Power. See Ans. 4. In Electric Power, the method claims at
issue were directed to performing real-time performance monitoring of an
electric power grid by collecting data from multiple data sources, analyzing
the data, and displaying the results. Electric Power, 830 F.3d at 1351-52.
There, the Federal Circuit held that the claims were directed to an abstract
idea because "[t]he advance they purport to make is a process of gathering
and analyzing information of a specified content, then displaying the results,
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and not any particular assertedly inventive technology for performing those
functions." Id. at 1354.
Similarly here, claim 1 involves nothing more than collecting data,
analyzing the data, and displaying status information based on the analyzed
data-activities squarely within the realm of abstract ideas. See id. at 1353-
54 ( characterizing collecting information, analyzing information by steps
people go through in their minds, or by mathematical algorithms, and
presenting the results of collecting and analyzing information, without more,
as matters within the realm of abstract ideas).
Further, combining several abstract ideas does not render the
combination any less abstract. RecogniCorp, LLC v. Nintendo Co., 855 F.3d
1322, 1327 (Fed. Cir. 2017) ("Adding one abstract idea ... to another
abstract idea ... does not render the claim non-abstract."); see also
FairWarning IP, 839 F.3d at 1094 (determining the pending claims were
directed to a combination of abstract ideas).
We are not persuaded Appellants' claims are similar to those found
eligible in McRO. App. Br. 8 (citing McRO, Inc. v. Bandai Namco Games
Am. Inc., 837 F.3d 1299 (Fed. Cir. 2016)). In McRO, the Federal Circuit
found the claims prevent preemption of all processes for achieving
automated lip-synchronization of 3-D characters because the claims recite a
rule with specific characteristics. 837 F.3d at 1315. Unlike in McRO,
Appellants' claims do not recite a rule-based improvement of a
technological process. The claims in McRO were drawn to improvements in
the operation of a computer at a task, rather than applying a computer
system to perform generic data manipulation steps, as in Appellants' claim 1.
See McRO, 837 F.3d at 1314. Moreover, the McRO court explicitly
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"recognized that 'the absence of complete preemption does not demonstrate
patent eligibility."' See McRO, 837 F.3d at 1315 (quoting Ariosa
Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015));
see also OIP Techs., Inc. v. Amazon.com, Inc, 788 F.3d 1359, 1362---63
("[T]hat the claims do not preempt all price optimization or may be limited
to price optimization in the e-commerce setting do not make them any less
abstract."), cert, denied, 136 S. Ct. 701 (2015).
Because Appellants have not persuaded us the Examiner incorrectly
analyzed the claims under Alice step 1, we proceed to the second step of the
Alice inquiry.
In Alice step two, we find no inventive concept sufficient to overcome
the abstract idea judicial exception ineligible for patenting. As the court
explained in Electric Power, "merely selecting information, by content or
source, for collection, analysis, and display does nothing significant to
differentiate a process from ordinary mental processes, whose implicit
exclusion from § 101 undergirds the information-based category of abstract
ideas." Id. at 1355.
There is no indication in the record that any specialized computer
hardware or other "inventive" computer components are required in claim 1.
Claim 1 merely employs a brand notification computer system comprising
generic computer components to perform generic computer functions, i.e.,
collecting, storing, and processing information, which is not enough to
transform an abstract idea into a patent-eligible invention. See Non-Final
Act. 7.
Appellants argue claim 1 necessarily recites an "inventive concept"
because the independent claims recite features that go beyond "providing a
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forum to bring about a brand dispute." App. Br. 8. Appellants argue, for
example, that independent claims 1, 2, 23, and 24 recite features directed to
providing a brand notification to a security vendor. Id.; see also Spec. ,r,r 12,
14.
We are not persuaded the Examiner erred. We note that in step 2 of
the Alice analysis, the question is not whether there are claim features that
"go beyond" the abstract idea, as Appellants contend, but, rather, whether
any additional elements provide an inventive concept (i.e., whether the
additional elements amount to significantly more than the exception itself).
Appellants argue the claimed solution is necessarily rooted in
computer technology in order to overcome a problem specifically arising in
the realm of computer networks. Id. at 9 ( citing DDR Holdings, LLC v.
Hotels.com, 773 F.3d 1245, 1257 (Fed. Cir. 2014)). Appellants argue this is
so because the pending claims recite solutions to "online-specific problems."
Id. Appellants again point to the recited features directed to providing a
brand notification to a security vendor so that the security vendor can notify
its clients about brand misuse. Id.
We are not persuaded. Appellants have not persuasively explained
how the claims at issue involve a technological solution that overcomes a
specific challenge unique to the Internet. In DDR Holdings, the Federal
Circuit held that claims "directed to systems and methods of generating a
composite web page that combines certain visual elements of a 'host'
website with content of a third-party merchant" contained the requisite
inventive concept. 773 F.3d at 1248. The claims at issue involved a
technological solution that overcame a specific challenge unique to the
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Internet. Id. at 1259. This distinguished the claims at issue from those
claims found unpatentable in earlier cases. Id.
Unlike the claims in DDR Holdings, Appellants' claims do not
introduce a technical advance or improvement. They contain nothing that
"amounts to significantly more than a patent upon the [abstract idea] itself."
Alice, 134 S.Ct. at 2355 (citation omitted). Claim 1, for example, does not
purport to improve the functioning of the computer system itself. Nor does
it effect an improvement in any other technology or technical field. Instead,
claim 1 amounts to nothing significantly more than an instruction to
implement the abstract idea of "providing a forum to bring about a brand
dispute" using generic computer components. That is insufficient to
transform an abstract idea into a patent-eligible invention.
We are also not persuaded by Appellants' argument that "the
Examiner failed to consider and provide analysis about the entire claimed
combination." App. Br. 10 (citing BASCOM Global Internet Servs., Inc. v.
AT&T Mobility LLC, 827 F.3d 1341, 1348 (Fed. Cir. 2016)). The Examiner
considered the claim elements both individually and as an ordered
combination. See Ans. 5.
For these reasons, we affirm the Examiner's 35 U.S.C. § 101 rejection
of claim 1, as well as claims 2---6 and 9--27, not argued separately. 2
2 Although the Examiner does not individually address the§ 101 rejection of
dependent claims 3---6 and 9--22, as noted by Appellants (Reply Br. 3), these
claims are in the heading of the rejection and we understand the Examiner to
have grouped them together with independent claim 2. See 37 C.F.R.
§ 4I.37(c)(l)(iv).
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Rejection of Claim 1 under 35 USC§ 103(a)
In rejecting claim 1 for obviousness, the Examiner found Dixon
teaches or suggests the sole disputed limitation of claim 1, "receive, from the
first user via the user interface, user input indicating that the set of online
content improperly uses the brand." See Non-Final Act. 13 (citing Dixon
,r,r 187,291); Ans. 6 (citing Dixon, ,r,r 102,269, 301, 10, 173-175, 197).
Appellants contend the Examiner erred because the cited portions of
Dixon allegedly do not teach this limitation. App. Br. 12.
We are not persuaded the Examiner erred. The Examiner found
Dixon teaches that users have the ability to vote about sites/content, provide
feedback and performance information related to the site, including
improper brand usage such as a webpage containing misleading information,
brand name confusion, or impersonated sites. Ans. 6. We agree with the
Examiner that the cited portions of Dixon at lease suggest the disputed
limitation. Moreover, Appellants have not persuasively rebutted the
Examiner's findings articulated in the Answer. See Reply Br. 4--5.
Arguments not made are waived. See 37 C.F.R. § 4I.37(c)(l)(iv).
Appellants further argue the Examiner's reasons for modifying
Krishnamurthy with the teachings of Dixon are deficient. App. Br. 13.
We are not persuaded by Appellants' arguments because the
Examiner provided "articulated reasoning with some rational underpinning
to support the legal conclusion of obviousness." In re Kahn, 441 F.3d 977,
988 (Fed. Cir. 2006). We find no error in the Examiner's conclusion that the
combination of the cited features of Krishnamurthy, Dixon, Rogers, and
Green would have been obvious to one of ordinary skill in the art because a
need exists for providing enhanced security for users of computer devices.
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Non-Final Act. 15. Moreover, the Examiner's combination of known
elements would have merely produced a predictable result. See KSR Int 'l
Co. v. Teleflex Inc., 550 U.S. 398, 401 (2007) ("[A] combination of familiar
elements according to known methods is likely to be obvious when it does
no more than yield predictable results.").
Appellants do not provide evidence sufficient to demonstrate that
combining the teachings of Krishnamurthy and Dixon would have been
"uniquely challenging or difficult for one of ordinary skill in the art,"
(Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir.
2007)). Nor have Appellants provided any objective evidence of secondary
considerations, which our reviewing court guides "operates as a beneficial
check on hindsight." Cheese Sys., Inc. v. Tetra Pak Cheese and Powder
Sys., Inc., 725 F.3d 1341, 1352 (Fed. Cir. 2013).
For these reasons, we sustain the Examiner's§ 103(a) rejection of
independent claim 1, and the separate§ 103(a) rejection of independent
claims 2 and 23-27, and dependent claims 3---6 and 9-22.
DECISION
We affirm the Examiner's decision rejecting claims 1-6 and 9-27 as
directed to patent-ineligible subject matter.
We affirm the Examiner's decision rejecting claims 1-6 and 9-27 for
obviousness.
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). See
37 C.F.R. § 41.50(±).
AFFIRMED
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