Ex Parte Song et al

Patent Trials and Appeals Board

Apr 17, 2019

14664398 - (D) (P.T.A.B. Apr. 17, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/664,398 03/20/2015
25541 7590 04/19/2019
NEAL, GERBER, & EISENBERG
SUITE 1700
2 NORTH LASALLE STREET
CHICAGO, IL 60602
FIRST NAMED INVENTOR
Rho Kook Song
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.
024797-0804 (01US3) 1039
EXAMINER
ELCHANTI, TAREK
ART UNIT PAPER NUMBER
3621
NOTIFICATION DATE DELIVERY MODE
04/19/2019 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):
twilliams@ngelaw.com
ipusmail@ngelaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RHO KOOK SONG and HYE SUNG KIM
Appeal2018-003414
Application 14/664,398
Technology Center 3600
Before ELENI MANTIS MERCADER, NORMAN H. BEAMER,
and ADAM J. PYONIN, Administrative Patent Judges.
MANTIS MERCADER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants 1 appeal under 35 U.S.C. § 134(a) from the Examiner's
final rejection of claims 1-3, 6, 9, 15-17, and 20-34. 2 We have jurisdiction
under 35 U.S.C. § 6(b).
We affirm.
1 Appellants identify Freenters Inc. as the real party in interest (App. Br. 2).
2 Throughout this Appeal, the Parties refer to the final pending claim as
"claim 34," whereas the final pending claim in the Claims Appendix is claim
35. See App. Br. 26 (Claims Appendix). Claim 35 was added in a claim
amendment filed on Feb. 6, 2017, which is prior to the mailing of the Final
Action. As neither the Final Rejection nor the Answer contains any
reference to claim 35, there is no "decision of the examiner" for us to
consider regarding claim 35. See 35 C.F.R. 41.3l(a)(l). We note, however,
that other than the claimed dependency, the subject matter of claim 35 is
identical to that of claim 33.
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Application 14/664,398
THE INVENTION
Appellants' claimed invention is directed to a "computer-implemented
system and method for utilizing open space of a document to be printed for
selective, targeted advertising based on information (such as demographics)
about the user submitting the document" (Abstract).
Independent claim 1, reproduced below, is representative of the
subject matter on appeal:
1. A computer-implemented system for managing print
advertisement campaigns, said computer-implemented system
compnsmg:
a database configured to store user account information
in a plurality of user accounts and advertiser account
information in a plurality of advertiser accounts, wherein each
user account contains profile data identifying characteristics of
a user, and wherein each advertiser account contains at least
one advertisement file corresponding to an advertisement;
a processor in electronic communication with the
database; and
a printer in electronic communication with the processor,
wherein the processor is programmed to operate with the
database and the printer to:
(a) receive an electronic document from a first user, the
electronic document including one or more pages;
(b) offer the first user an option to perform one of a
plurality of designated tasks from the group consisting of
viewing a promotional video or completing a survey;
( c) if the first user performs a designated task, cause the
printer to print the electronic document such that the electronic
document does not include any advertisements; and
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( d) if the user does not perform the designated task:
(1) identify a plurality of candidate advertisement
files from among the advertisement files stored on the database
by comparing the advertisement instructions associated with the
advertisement files stored on the database with the profile data
stored in a user account associated with the first user;
(2) determine at least one selected advertisement
file from among the plurality of candidate advertisement files;
(3) digitally merge an advertisement image
associated with the at least one selected advertisement file into
the electronic document; and
( 4) cause the printer to print the electronic
document including the merged advertisement image.
App. Br. 18-19 (Claims Appendix).
REJECTION
The Examiner made the following rejection:
Claims 1-3, 6, 9, 15-17, and 20-34 stand rejected under 35 U.S.C.
§ 101 because the claimed invention is directed to a judicial exception (i.e., a
law of nature, a natural phenomenon, or an abstract idea) without
significantly more. Final Act. 2.
ISSUE
The pivotal issue is whether the Examiner erred in finding the claimed
invention to be directed to a judicial exception without significantly more.
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ANALYSIS
The Examiner determines the claims are patent ineligible under
35 U.S.C. § 101, because the claims "are directed to printing advertisement
free copies or prints based on [a] user completing a task" which is
considered "a fundamental economic practice," "a method of organizing
human activities," "creating a contractual relationship," and "collecting and
comparing known information" (Final Act. 2).
The Examiner further finds that the claims require a "computer-
implemented system, database, processor, and a printer" which are "generic
computer components," and that "[t]he claim limitations amount to mere
instructions to implement the abstract idea on a computer" (Final Act. 3; see
also Alice Corp. Pty. Ltd. v. CLS Banklnt'l, 573 U.S. 208,217 (2014)
( describing the two-step framework "for distinguishing patents that claim
laws of nature, natural phenomena, and abstract ideas from those that claim
patent-eligible applications of those concepts")).
After the mailing of the Answer and the filing of the Brief in this case,
the USPTO published revised guidance on the application of§ 101 (2019
Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7,
2019) (hereinafter "Memorandum")). Under the Memorandum, the Office
first looks to whether the claim recites:
(1) any judicial exceptions, including certain groupings of abstract
ideas (i.e., mathematical concepts, certain methods of
organizing human activity such as a fundamental economic
practice, or mental processes); and
(2) additional elements that integrate the judicial exception into a
practical application (see MPEP § 2106.05(a}-(c), (e}-(h)).
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Application 14/664,398
Only if a claim (1) recites a judicial exception and (2) does not integrate
that exception into a practical application, does the Office then look to
whether the claim:
(3) adds a specific limitation beyond the judicial exception that are
not "well-understood, routine, conventional" in the field (see
MPEP § 2106.0S(d)); or
(4) simply appends well-understood, routine, conventional
activities previously known to the industry, specified at a high
level of generality, to the judicial exception.
See Memorandum.
We are not persuaded the Examiner's rejection is in error. We adopt
the Examiner's findings and conclusions as our own, and we add the
following primarily for emphasis and clarification with respect to the
Memorandum.
Appellants argue that steps such as "'digitally merg[ing] an
advertisement into [an] electronic document' (claims 1 and 16), and
'reformat[ ing] one of the electronic document [or] the advertising image'
( claim 20)" are
MUCH more specific and narrow than the broad "abstract idea
of printing advertisement free copies or prints based on user
completing a task" that the Examiner has identified - to the
extent that is even a cognizable abstract idea, and not just
something garnished from the preamble of the claim
(Reply Br. 2).
We agree with the Examiner that the claim is directed to an abstract
idea, and we find that claim 1 recites methods of organizing human activity,
including both (1) commercial or legal interactions, and (2) fundamental
economic practices. In claim 1, a "first user" desires a physical copy of an
"electronic document." A processor is programmed to "offer the first user
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an option to perform one of a plurality of designated tasks from the group
consisting of viewing a promotional video or completing a survey." See
claim 1.
Should the first user perform the designed task, the first user then
receives a printed copy of "the electronic document such that the electronic
document does not include any advertisements." However, should the first
user decline to perform the designated task, the first user receives a printed
copy of "the electronic document including [a] merged advertisement
image." See claim 1.
Thus, the claim is directed to the abstract idea of a "commercial or
legal interaction[]." Memorandum, Section I (Groupings of Abstract Ideas).
In order to receive an advertisement-free copy of an electronic document,
the claim recites the first user must pay the price of "perform[ing] a
designated task"; otherwise the first user receives a copy of an electronic
document that includes "a merged advertisement image." The first user's
choice of whether to perform a task is an interaction that forms the basis of a
commercial transaction.
Similarly, the claim is directed to the abstract idea of a "fundamental
economic principle[] or practice[]" including "advertising, marketing or
sales activities or behaviors" (Id.), because the first user is able to receive
printed information at no-cost, provided that advertisements are included in
the print copy. Such a business model, in which the inclusion of
advertisements pays the costs of proving printed information, has been in
use for decades in the newspaper industry. 3 In essence, the fundamental
3 "One of the main developments of the 1970s and '80s was the spread of
free newspapers (known in the United Kingdom as free sheets), which are
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economic principal used by the advertiser is to attach advertisements to
desired information in order to attract eyeballs. 4
We are further unpersuaded by Appellants' submission of an Order
Denying Motion to Dismiss (Free Stream Media Corp. v. Alphonso Inc.,
Case No. 17-cv-02107-RS (N.D Cal. Jan. 12, 2018) "that serves as a
reminder that patents covering unique ways of targeted advertising are
patentable and can overcome Alice" (Reply Br. 4, further citing Enfzsh, LLC
v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016)). In Enfish, the claims at
issue were held as "not directed to an abstract idea within the meaning of
Alice. Rather, they are directed to a specific improvement to the way
computers operate" (Enfish, 822 F.3d at 1336).
Appellants point to nothing in the claim or in the disclosure that
indicates (1) a particular computer system architecture, (2) non-generic, non-
routine, and non-conventional elements are used to perform the method, or
(3) any kind of technological improvement. We agree with the Examiner
that the claims require a "computer-implemented system, database,
processor, and a printer" which are "generic computer components," and
that "[t]he claim limitations amount to mere instructions to implement the
abstract idea on a computer" (Final Act. 3).
delivered door-to-door or distributed in public places. Many free
newspapers are printed by smaller newspaper enterprises and are entirely
financed by advertising revenue." Encyclopedia Britannica,
https ://www.britannica.com/topic/publishing/N ewspaper-publishing.
4 Definition of eyeball: "Marketing Used to refer to the number of people
who visit a website, watch a television programme or channel, read a
publication, etc., especially when regarded as a potential source of revenue."
Oxford Living Dictionaries,
https://en.oxforddictionaries.com/definition/eyeball.
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Rather, the disputed limitations (see, e.g., Reply Br. 5) are part of the
abstract idea itself. See Alice, 573 U.S. at 222 ("In holding that the process
was patent ineligible, we rejected the argument that 'implement[ing] a
principle in some specific fashion' will 'automatically fal[l] within the
patentable subject matter of§ 101. "') ( alterations in original) ( quoting
Parker v. Flook, 437 U.S. 584, 593 (1978)).
Accordingly, we determine the claims do not integrate the judicial
exception into a practical application. See Memorandum, Section III(A)(2)
(Prong Two: If the Claim Recites a Judicial Exception, Evaluate Whether
the Judicial Exception Is Integrated Into a Practical Application). Nor do we
find the claim includes a specific limitation or a combination of elements
that amounts to significantly more than the judicial exception itself. See
Memorandum, Section III(B) (Step 2B: If the Claim Is Directed to a
Judicial Exception, Evaluate Whether the Claim Provides an Inventive
Concept); see also Aatrix Software, Inc. v. Green Shades Software, Inc., 890
F.3d 1354, 1359 (Fed. Cir. 2018) (Moore, J., concurring) ("the 'inventive
concept' cannot be the abstract idea itself'). The claim elements only recite
generic computer components that are well-understood, routine, and
conventional. See Final Act. 3; Spec. ,r,r 20-39; Alice, 573 U.S. at 212
("merely requiring generic computer implementation fails to transform [the]
abstract idea into a patent-eligible invention").
Accordingly, we agree with the Examiner that independent claim 1 is
patent in-eligible, as well as independent claims 16 and 20 not separately
argued with particularity, and all claims dependent therefrom. See App. Br.
10-17.
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CONCLUSION
The Examiner did not err in finding the claimed invention to be
directed to a judicial exception without significantly more.
DECISION
The Examiner's decision rejecting claims 1-3, 6, 9, 15-17, and 20-34
under 35 U.S.C. § 101 is affirmed.
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).
AFFIRMED
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