Ex Parte Steelberg et al

Patent Trials and Appeals Board

Apr 17, 2019

12854438 - (D) (P.T.A.B. Apr. 17, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/854,438 08/11/2010
95508 7590 04/19/2019
OneLLP
4000 MacArthur Blvd.
East Tower, Suite 500
Newport Beach, CA 92660
UNITED ST A TES OF AMERICA
FIRST NAMED INVENTOR
Ryan Steelberg
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.
VTONE.003.X22 7801
EXAMINER
DELI CH, STEPHANIE ZAGARELLA
ART UNIT PAPER NUMBER
3623
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):
IPdocketing@onellp.com
onellpdocketing@onellp.com
P AIRgroup@onellp.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RYAN STEELBERG and CHAD STEELBERG 1
Appeal2018-001277
Application 12/854,438
Technology Center 3600
Before CAROLYN D. THOMAS, JOSEPH P. LENTIVECH, and
SCOTT RAEVSKY, Administrative Patent Judges.
THOMAS, Administrative Patent Judge.
DECISION ON APPEAL
Appellants seek our review under 35 U.S.C. § 134(a) of the
Examiner's Final Rejection of claims 1, 3-7, 9, 11, and 13, all the pending
claims in the present application. Claims 2, 8, 10, and 12 are canceled (see
Claims Appendix). We have jurisdiction over the appeal under 35 U.S.C.
§ 6(b ).
We AFFIRM.
The present invention relates generally to tracking metrics associated
with delivery of an advertisement to a consumer (see Abstract).
1Appellants name Veritone, Inc. as the real party in interest (App. Br. 2).
Appeal2018-001277
Application 12/854,438
Claim 1 is illustrative:
1. A computerized online ad delivery and tracking
system comprising a computer having a computing processor, a
network interface that couples the processor to a network, and a
non-transitory computer readable storage device in data
communication with the processor and storing instructions, the
system further comprising:
a vault storing a plurality of media assets in which
respective prospective sponsors are recognizable to respective
target consumers, for use in creating sponsored advertisements;
a recommendation engine in data communication
with the vault that recommends at least one sponsor for use in a
plurality of requested sponsored advertisements for use in an
advertising campaign, based on an identified product or service;
an advertising wizard in data communication with
the vault and the recommendation engine for selecting media
assets from the vault to be combined with at least one template
to create the requested sponsored advertisements;
a delivery engine in data communication with the
advertising wizard that delivers at least one of the ads to a web
publisher;
wherein:
the vault stores the plurality of endorsed ads in
which respective sponsors are recognizable to respective target
consumers, for use in the sponsored advertisements;
the delivery engine delivers a select one of the
stored ads to the web publisher that publishes the ad on web
pages viewed by the target consumers; and
a tracking engine that calculates advertising
campaign metrics based on a click through rate based on a
number of clicks on the published ad by the target consumers
and positive or negative mentions of the published ad from RSS
feeds;
the delivery engine automatically modifies the ad
campaign based at least in part on the advertising campaign
metrics; and
wherein the modification includes replacing the
published ad with a different ad stored in the vault that is
included in the ad campaign.
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Appellants appeal the following rejections:
RI. Claim 1 is rejected under 35 U.S.C. § 112(a) or (pre-AIA), first
paragraph, as failing to comply with the written description requirement
(Final Act. 6-8);
R2. Claims 1, 3-7, 9, 11, and 13 are rejected under 35 U.S.C. § 101
because the claimed invention is directed to patent-ineligible subject matter
(Final Act. 8-12);
R3. Claims 1, 3-5, 9, 11, and 13 are rejected under 35 U.S.C.
§ I03(a) as being unpatentable over Marcus (US 2006/0015904 Al, Jan. 19,
2006), Cui (US 2005/0021397 Al, Jan. 27, 2005), and Glance (Natalie
Glance et al., Analyzing Online Discussion for Marketing Intelligence,
PROCEEDING WWW '05: SPECIAL INTEREST TRACKS AND POSTERS OF THE
14TH INTERNATIONAL CONFERENCE ON WORLD WIDE WEB, 1172-73 (2005))
(Final Act. 13-28); and
R4. Claims 6 and 7 are rejected under 35 U.S.C. § I03(a) as being
unpatentable over Marcus, Cui, Glance, and Rockfeller (US 2008/0059208
Al, Mar. 6, 2008) (Final Act. 28-32).
We review the appealed rejections for error based upon the issues
identified by Appellants, and in light of the arguments and evidence
produced thereon. Ex parte Frye, 94 USPQ2d 1072, 107 5 (BP AI 2010)
(precedential).
ANALYSIS
Rejection under§ 112
The Examiner finds that "[t]he specification does not describe or
illustrate in the drawings a computer having a processor, network interface
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Application 12/854,438
or storage device, nor does it describe the execution of stored instructions"
(Final Act. 7), because "no specific hardware elements ... are described as
being part of the advertising system" (id.).
In response, Appellants contend that although there is not "literal
support" in the Specification for the claimed hardware "original claim 22
recites 'at least one computing vault' and 'at least one computing processor'
[and] [o]riginal claim 27 recites 'an electronic system' comprising a ...
database" (App. Br. 8), thus, "the Specification reasonably conveys to a
skilled artisan that the inventor has possession of the invention" (id.). We
agree with Appellants.
To satisfy the written description requirement, the disclosure must
reasonably convey to skilled artisans that Appellants possessed the claimed
invention as of the filing date. Ariad Pharms., Inc. v. Eli Lilly & Co., 598
F.3d 1336, 1351 (Fed. Cir. 2010) (en bane). However, the written
description requirement under § 112 does not demand ( 1) any particular
form of disclosure, or (2) the specification recite the claimed invention
verbatim, although a description that merely renders the invention obvious
does not satisfy the requirement. Ariad, 598 F.3d at 1352 (internal citations
omitted). As stated in Ex parte Parks, however, adequate written
description "does not require literal support for the claimed invention." Ex
parte Parks, 30 USPQ2d 1234, 1236 (BPAI 1993). As such, "a lack of
literal support does not, in and of itself, establish a prima facie case for lack
of adequate descriptive support .... " Id. "Rather, it is sufficient if the
originally-filed disclosure would have conveyed to one having ordinary skill
in the art that an appellant had possession of the concept of what is claimed."
Id.
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While we agree with the Examiner that the Specification does not
verbatim disclose the disputed claim limitations, we believe, however, that at
least the portions of the Specification identified by Appellants (see App. Br.
8), as well as other portions of the Specification reasonably convey,
implicitly, to one of ordinary skill in the art that Appellants had possession
of the claimed hardware. We note that the Specification describes that the
purpose of the invention is to track metrics associated with the delivery of
advertisements to a consumer "over at least one computing network" (see
Spec. ,r 11 ). Also, as highlighted by Appellants, the originally filed claims
22 and 27 recited a computing vault, processor, electronic system, and
databases, for example. Given this, we agree with Appellants that the
concept of using hardware, such as a processor, network interface, and non-
transitory computer readable storage device to store instructions, to
implement the invention is implicitly supported by the Specification.
Accordingly, the rejection of claim 1 under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description requirement is
reversed.
Rejection under§ 1 OJ
An invention is patent-eligible if it claims a "new and useful process,
machine, manufacture, or composition of matter." 35 U.S.C. § 101.
However, the Supreme Court has long interpreted 35 U.S.C. § 101 to include
implicit exceptions: "[l]aws of nature, natural phenomena, and abstract
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ideas" are not patentable. E.g., Alice Corp. Pty. Ltd. v. CLS Bank Int 'l, 573
U.S. 208,216 (2014) (internal quotations and citation omitted).
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court's two-step framework, described in Mayo
and Alice. Id. at 217-18 ( citing Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 566 U.S. 66, 75-77 (2012)). In accordance with the framework,
we first determine what concept the claim is "directed to." See Alice, 573
U.S. at 219 ("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."); see also 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."). For example, concepts determined to be abstract ideas, and
thus patent ineligible, include certain methods of organizing human activity,
such as fundamental economic practices (Alice, 573 U.S. at 219-20; Bilski,
561 U.S. at 611); mathematical formulas (Parker v. Flook, 437 U.S. 584,
594--95 (1978)); and mental processes (Gottschalkv. Benson, 409 U.S. 63,
69 (1972)).
Recently, the USPTO published revised guidance on the application
of§ 101. US PTO' s 2019 REVISED PA TENT SUBJECT MATTER ELIGIBILITY
GUIDANCE, 84 Fed. Reg. 50 (Jan. 7, 2019) ("Memorandum"). Under the
Memorandum "Step 2A," 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 MANUAL OF PATENT EXAMINING PROCEDURE
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(MPEP) § 2106.05(a)-(c), (e)-(h) (9th Ed., Rev. 08.2017, Jan. 2018)). 84
Fed. Reg. at 51-52, 55.
Only if a claim (1) recites a judicial exception and (2) does not
integrate that exception into a practical application, does the Office then
(pursuant to the Guidance "Step 2B") look to whether the claim:
(3) adds a specific limitation beyond the judicial exception that is not
"well-understood, routine, conventional" in the field (see MPEP
§ 2106.05(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. 84 Fed. Reg. at 56.
With respect to independent method claim 1, the Examiner determines
that the claims are at least directed to the abstract idea of "recommending,
deliver[ing], and analyzing advertisements" (Final Act. 8), which "relate[s]
to certain methods of organizing human activity similar to the advertising
concept in the form of a business relationship for providing[] determining
... and analyzing ads" (id. at 9 ( citing Ultramercial, Inc. v. Hulu, LLC, 772
F.3d 709 (Fed. Cir. 2014))).
For example, claim 1 recites at least the following limitations:
(1) "storing a plurality of media assets ... for use in creating sponsored
advertisements," (2) "recommends at least one sponsor for use in ...
advertisements," (3) "selecting media assets ... to be combined with at least
one template," (4) "delivers at least one of the ads to a web publisher," (5)
"stores ... endorsed ads," (6) "modifies the ad campaign," (7) and
"replacing the published ad with a different ad." These limitations, under
their broadest reasonable interpretation, recite at least commercial
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interactions akin to advertising, marketing, or sales activities because the
limitations all recite operations that would ordinarily take place in an
advertising/marketing environment.
According to Appellants' Specification, the claimed invention is
directed to "tracking metrics associated with delivery of at least one
endorsed advertisement to at least one consumer" (Spec. ,r 11 ), wherein the
metrics includes a "number of impressions and click throughs" by the
consumer responsive to receiving the advertisement and "compliance rules
for the delivery" (id.).
We find that the above-noted disclosure also describes that advertising
is "a fundamental economic practice long prevalent in our system of
commerce" and "a building block of the modem economy." Alice, 573 U.S.
at 219-20 (internal quotations and citation omitted). The Federal Circuit has
concluded that various forms of advertising were directed to an abstract idea
in at least two precedential cases. Intellectual Ventures I LLC v. Capital
One Bank (USA), 792 F.3d 1363, 1370 (Fed. Cir. 2015) (tailoring of
advertisements); Ultramercial, 772 F .3d at 714--15 ("using advertising as an
exchange or currency").
Here, Appellants do not directly challenge whether claim 1 is directed
to an abstract idea, but instead contend that the claims are "directed to an
improvement in computer-related technology" (App. Br. 11 ). This argument
shall be addressed below with respect to prong (2).
Therefore, for at least the aforementioned reasons, we agree with the
Examiner that claim 1 is directed to an abstract idea, which we conclude is
certain methods of organizing human activity- "a fundamental economic
practice."
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Under the Memorandum, we now must determine if additional
elements in the claims integrate the judicial exception into a practical
application (see MPEP § 2106.0S(a}-(c), (e}-(h)).
Here, Appellants contend that "claim 1 is similar to the claims in
McRO[], claim 1 is an improvement in computer-related technologies
because it enables computers to automatically modify an ad campaign using
rules to calculate an ads campaign metric, which is based on computer
related data such as click-through data and RSS feeds" (App. Br. 10).
Appellants further contend that "[ w ]hile RSS feeds themselves are
conventional, the underlying concept ( of claim 1) on how click through data
and RSS feeds are used in the above combination of limitations is
unconventional" (id. at 11 ). We disagree with Appellants.
In McRO, the Federal Circuit concluded that the claim, when
considered as a whole, was directed to a "technological improvement over
the existing, manual 3-D animation techniques" through the "use [ of] limited
rules ... specifically designed to achieve an improved technological result in
conventional industry practice." McRO, Inc. v. Bandai Namco Games Am.
Inc., 837 F.3d 1299, 1316 (Fed. Cir. 2016).
Specifically, the Federal Circuit found that the claimed rules allow
computers to produce accurate and realistic lip synchronization and facial
expressions in animated characters that previously could only be produced
by human animators; and the rules are limiting because they define morph
weight sets as a function of phoneme sub-sequences. Id. at 1313 (internal
citations omitted).
We find no evidence of record here to support the argument that the
present situation is like the one in McRO where computers were unable to
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make certain subjective determinations, i.e., regarding morph weight and
phoneme timings, which could only be made prior to the claimed invention
by human animators. The Background section of the McRO '576 patent
includes a description of the admitted prior art method and the shortcomings
associated with that prior method. See McRO, 837 F.3d at 1303---06. There
is no comparable discussion in Appellants' Specification or elsewhere of
record.
Although gathering metrics, such as click-through data and RSS
feeds, may improve a business process, i.e., targeting ad campaigns, it does
not achieve an improved technological result. We see no parallel between
the limiting rules described in McRO and the results-based rules recited in
Appellants' claims.
Regarding Appellants' preemption argument (see App. Br. 13), we
note that although pre-emption"' ... might tend to impede innovation more
than it would tend to promote it,' thereby thwarting the primary object of the
patent laws" (Alice, 573 U.S. at 216 (citing Mayo, 566 U.S. at 71)), "the
absence of complete preemption does not demonstrate patent eligibility"
(Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir.
2015)). Moreover, because we find the claimed subject matter covers
patent-ineligible subject matter, the pre-emption concern is necessarily
addressed.
For at least the reason noted supra, we determine that claim 1
(1) recites a judicial exception and (2) does not integrate that exception into
a practical application. Finally, we look to whether claim 1 adds specific
limitations beyond the judicial exception that are not "well-understood,
routine, conventional" in the field (see MPEP § 2106.05(d)).
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Regarding the claimed computer processor, network interface, and
non-transitory computer readable storage device, we note that .Appellants'
Specification fails to distinguish such hardware from generic computer
components, performing generic computer functions that are routine and
conventional, i.e., the nonnal and basic functions of a computer.
Accordingly, Appellants have not adequately explained how claim 1 is
performed such that it is not a routine and conventional function of a generic
computer.
As recognized by the Supreme Court, "the mere recitation of a generic
computer cannot transform a patent-ineligible abstract idea into a
patent-eligible invention." See Alice, 573 U.S. at 223 ( concluding claims
"simply instruct[ing] the practitioner to implement the abstract idea of
intermediated settlement on a generic computer" not patent eligible (id. at
225)); see also Ultramercial, 772 F.3d at 715-16 (claims merely reciting
abstract idea of using advertising as currency as applied to a particular
technological environment of the Internet not patent eligible); Accenture
Global Servs., GmbH v. Guidewire Software, Inc., 728 F.3d 1336, 1344--45
(Fed. Cir. 2013) (claims reciting "generalized software components arranged
to implement an abstract concept [of generating insurance-policy-related
tasks based on rules to be completed upon the occurrence of an event] on a
computer" not patent eligible); and Dealertrack, Inc. v. Huber, 674 F.3d
1315, 1333-34 (Fed. Cir. 2012) ("[s]imply adding a 'computer aided'
limitation to a claim covering an abstract concept, without more, is
insufficient to render [a] claim patent eligible" (internal citation omitted)).
Because Appellant's independent claim 1 is directed to a
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patent-ineligible abstract concept, does not include additional elements that
integrate the judicial exception into a practical application, and does not
add a specific limitation beyond the judicial exception that is not
"well-understood, routine, [and] conventional," we sustain the Examiner's
rejection of the claims under 35 U.S.C. § 101 as being directed to
non-statutory subject matter in light of Alice, its' progeny, and the Revised
101 Guidance (Memorandum).
Accordingly, Appellants' contentions are unpersuasive as to error in
the rejection under 35 U.S.C. § 101.
Rejections under§ 103(a)
Appellants contend that Cui does not teach or suggest "automatically
modifying an ad by replacing the ad with another ad[] based on the metrics"
(App. Br. 19), because "Cui simply discloses collecting ads information and
sending the data back to a server" (id.).
In response, the Examiner finds that "[t]he limitation related to
modifying the existing ad campaign by replacing one ad with another is
taught by Marcus in at least [0311] describing altering sponsored ads"
(Ans. 9), not Cui. The Examiner further notes that "Marcus does not
explicitly recite the specific metrics used to make such decisions or where
the data metrics are from" (id.), therefore, Cui was combined with Marcus to
teach the specific metrics claimed, i.e., "click-through" (id. at 9-10). As
such, it is the combined teachings of Marcus and Cui that the Examiner is
relying on to teach and/or suggest the argued limitation.
As a result, Appellants' argument against Cui separately from Marcus
does not persuasively rebut the combination made by the Examiner. One
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cannot show non-obviousness by attacking references individually, where
the rejections are based on combinations of references. In re Merck & Co.,
Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986); In re Keller, 642 F.2d 413,
425-26 (CCPA 1981).
For example, Appellants' arguments do not take into account what the
collective teachings of the prior art would have suggested to one of ordinary
skill in the art and is, therefore, ineffective to rebut the Examiner's prima
facie case of obviousness. See Keller, 642 F .2d at 425 ("The test for
obviousness is not whether the features of a secondary reference may be
bodily incorporated into the structure of the primary reference; nor is it that
the claimed invention must be expressly suggested in any one or all of the
references. Rather, the test is what the combined teachings of the references
would have suggested to those of ordinary skill in the art.") (internal
citations omitted). This reasoning is applicable here.
Accordingly, we sustain the Examiner's rejection of claim 1.
Appellants do not argue separate patentability for the dependent claims. We,
therefore, also sustain the Examiner's rejections of claims 3-7, 9, 11, and 13.
DECISION
We reverse the Examiner's§ 112 rejection.
We affirm the Examiner's § 101 rejection.
We affirm the Examiner's§ 103(a) rejections.
Since at least one rejection encompassing all claims on appeal is
affirmed, the decision of the Examiner 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).
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AFFIRMED
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