Ex Parte Straus

Patent Trial and Appeal Board

Mar 23, 2018

12222785 (P.T.A.B. Mar. 23, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/222,785 08/15/2008
23117 7590 03/27/2018
NIXON & V ANDERHYE, PC
901 NORTH GLEBE ROAD, 11 TH FLOOR
ARLINGTON, VA 22203
FIRST NAMED INVENTOR
Stephen D. Straus
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.
IPW-2302-100 5923
EXAMINER
ALVAREZ, RAQUEL
ART UNIT PAPER NUMBER
3688
NOTIFICATION DATE DELIVERY MODE
03/27/2018 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):
PTOMAIL@nixonvan.com
pair_nixon@firsttofile.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte STEPHEN D. STRAUS
Appeal 2016-006112
Application 12/222, 785 1
Technology Center 3600
Before ROBERT E. NAPPI, ST. JOHN COURTENAY III, and
JAMES W. DEJMEK, Administrative Patent Judges.
DEJMEK, Administrative Patent Judge.
DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1-10, 23, 25-32, 34--40, and 42. Appellant has canceled claims 11-
22, 24, 33, 41, and 43. Amend. 4--8, filed January 20, 2015. We have
jurisdiction over the remaining pending claims under 35 U.S.C. § 6(b)
We affirm.
1 Appellant identifies TouchTunes Music Corporation as the real party in
interest. App. Br. 3.
Appeal 2016-006112
Application 12/222,785
STATEMENT OF THE CASE
Introduction
Appellant's disclosed and claimed invention relates to "implementing
a business model for digital signage and interactive gaming services in
compliance with federal and state laws and regulations related to alcohol
distribution." Spec. i-f 1. According to the Specification, federal and state
laws restrict the amount of interaction between alcohol retailers, distributors
and wholesalers, and alcohol manufacturers. Spec. i-f 2. Specifically
regarding alcohol-related promotions (e.g., advertisements), the laws and
regulations "make it illegal for revenue sharing to be implemented between
the parties [(i.e., alcohol retailer, distributors, wholesalers, and
manufacturers)], for promotions to be run at the retailers on behalf of the
alcohol providers, etc." Spec. i-f 4. Thus, Appellant's invention is directed to
revenue sharing wherein "revenues from fees collected from alcohol
advertisers are not shared with any retailer involved with selling alcoholic
beverages." Spec. i-f 4.
Claim 23 is representative of the subject matter on appeal and is
reproduced below with the disputed limitations emphasized in italics:
23. A method of providing advertisements to locations, the
method comprising:
receiving, from a packet data network and at a data center
via a computer system including at least one processor, a first set
of electronic advertisement messages, each said advertisement
message in the first set of advertisement messages being alcohol-
related and being displayable at locations for a first fee;
receiving, from the packet data network and at the data
center via the computer system, a second set of electronic
advertisement messages, each said advertisement message in the
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second set of advertisement messages being unrelated to alcohol
and being displayable at locations for a second fee;
sending advertisement messages from the first and second
sets of advertisement messages to one or more of the locations,
the advertisement messages being integratable in a display
window with a streaming video signal,
collecting, on behalf of the data center, first and second
fees for advertisement messages in the first and second sets of
advertisement messages, respectively;
sharing a portion of the second fees with location(s) at
which the associated advertisement messages are displayed; and
preventing any portion of the first fees from being shared
with location(s) at which the associated advertisement messages
are displayed in order to comply with legal regulations relating
to alcoholic beverages.
The Examiner's Rejections2
1. Claims 1-10, 23, 25-32, 34--40, and 42 stand rejected under
35 U.S.C. § 101 as being directed to judicially excepted subject matter.
Final Act. 2-7.
2. Claims 1-10, 23, 25-32, 34--40, and 42 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over Roberts et al. (US
2008/0155588 Al; June 26, 2008) ("Roberts") and Yarmolich et al. (US
2009/0168901 Al; July 2, 2009) ("Yarmolich"). 3 Final Act. 8-16.
2 The Examiner has withdrawn the rejection under 35 U.S.C. § 112, second
paragraph of claim I. See Adv. Act. 2, filed July 10, 2015.
3 In rejecting claims 1-10, 23, 25-32, 34--40, and 42 under 35 U.S.C.
§ 103(a) over the combined teachings and suggestions of Roberts and
Yarmolich, we note the Examiner takes Official Notice that "it is old and
well known to have regulations in place pertaining to how certain fees may
be shared." Final Act. 1 0.
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Application 12/222,785
ANALYSIS 4
Re} ection under 3 5 US. C. § 101
Appellant disputes the Examiner's conclusion that the pending claims
are directed to patent-ineligible subject matter under 35 U.S.C. § 101. App.
Br. 9-19; Reply Br. 2-3. In particular, Appellant argues the claims are not
related to an intermediate settlement idea or risk hedging idea and, therefore,
are not directed to a fundamental economic concept. App. Br. 11.
Additionally, Appellant asserts the claims do not recite mathematical
concepts or processes that can be performed in the human mind. App.
Br. 11. Rather, Appellant argues, the claims are:
necessarily rooted in computer technology in order to overcome
a problem specifically arising in the realm of information
processing system, e.g., how to integrate an electronic message
sent from a remote data center via a packet data network with a
streaming video signal in a display window using a display
processor.
App. Br. 12.
The Supreme Court's two-step framework guides our analysis. Alice
Corp. Pty. Ltd. v. CLS Banklnt'l, 134 S. Ct. 2347, 2355 (2014). Ifa claim
falls within one of the statutory categories of patent eligibility (i.e., a
process, machine, manufacture or composition of matter) then the first
inquiry is whether the claim is directed to one of the judicially recognized
exceptions (i.e., a law of nature, a natural phenomenon, or an abstract idea).
Alice, 134 S. Ct. at 2355. If so, the second step is to determine whether any
4 Throughout this Decision, we have considered the Appeal Brief, filed
October 30, 2015 ("App. Br."); the Reply Brief, filed May 31, 2016 ("Reply
Br."); the Examiner's Answer, mailed April 1, 2016 ("Ans."); and the Final
Office Action, mailed March 31, 2015 ("Final Act."), from which this
Appeal is taken.
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element, or combination of elements, amounts to significantly more than the
judicial exception. Alice, 134 S. Ct. at 2355.
Although the independent claims each broadly fall within the statutory
categories of patentability, the Examiner concludes the claims are directed to
a judicially recognized exception-i.e., an abstract idea. Final Act. 2-7. In
particular, the Examiner concludes the claims are directed to the abstract
idea of "presenting advertisements in a retail establishment that is selling
alcoholic beverages while complying with legal regulations pertaining to
alcoholic beverages." Final Act. 5. The Examiner concludes the
presentation of advertisements to enhance revenues "is a fundamental
economic practice and employs mathematical relationships/formulas
(algorithms) to achieve this outcome." Final Act. 5. More simply put, the
Examiner concludes the claims are directed to revenue sharing-a
fundamental economic concept. Ans. 2.
Instead of using a definition of an abstract idea, "the 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." Amdocs (Isr.) Ltd. v. Openet Telecom, Inc.,
841 F.3d 1288, 1294 (Fed. Cir. 2016) (citing Elec. Power Grp., LLC v.
Alstom S.A., 830 F.3d 1350, 1353-54 (Fed. Cir. 2016)); accord United
States Patent and Trademark Office, July 2015 Update: Subject Matter
Eligibility 3 (July 30, 2015), https://www.uspto.gov/sites/default/files/
documents/ieg-july-2015-update.pdf (instructing Examiners that "a claimed
concept is not identified as an abstract idea unless it is similar to at least one
concept that the courts have identified as an abstract idea."). As part of this
inquiry, we must "look at the 'focus of the claimed advance over the prior
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art' to determine if the claim's 'character as a whole' is directed to excluded
subject matter." Affinity Labs of Tex., LLC v. DirecTV, LLC, 838 F.3d 1253,
1257 (Fed. Cir. 2016).
Here, Appellant's claims generally relate to receiving a first set and a
second set of advertising messages at a data center via a network connection.
See, e.g., claim 23. Messages from the first and second sets of advertising
are sent to one or more locations to be presented along with a streaming
video signal. The claims recite fees associated with displaying the various
messages are collected. See, e.g., claim 23. Fees associated with
advertisement messages unrelated to alcohol are shared with the location
displaying the advertisement whereas fees associated with alcohol-related
advertisement messages are not shared with the location displaying the
advertisement.
In buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355 (Fed. Cir.
2014), our reviewing court concluded claims directed to the creation of a
contractual relationship were directed to an abstract idea. Additionally, our
reviewing court has concluded that abstract ideas include the concepts of
"collecting, displaying, and manipulating data." Intellectual Ventures I LLC
v. Capital One Fin. Corp., 850 F.3d 1332, 1340 (Fed. Cir. 2017). The
collection of data, recognition of certain data within the collected data (i.e.,
analysis of collection information) are also abstract ideas. See Content
Extraction & Transmission LLC v. Wells Fargo Bank, N.A., 776 F.3d 1343,
1347 (Fed. Cir. 2014); Elec. Power, 830 F.3d at 1353. Further, a process
that employs mathematical algorithms to manipulate existing information to
generate additional information is abstract. Digitech Image Techs., LLC v.
Elec.for Imaging, Inc., 758 F.3d 1344, 1351 (Fed. Cir. 2014).
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Further, merely 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 (math) to another
abstract idea ... does not render the claim non-abstract."); see also
FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1093-94 (Fed. Cir.
2016) (determining the pending claims were directed to a combination of
abstract ideas).
In the Specification, Appellant describes embodiments of the
invention as relating to "implementing a business model for digital signage
and interactive gaming services" while complying with applicable laws and
regulations. Spec. i-f 1. By complying with applicable laws and regulations,
Appellant discloses (and claims) a business model wherein fees collected
from advertisers are shared with the retailer only if the advertisement
messages are not alcohol-related. Spec. i-f 17. Thus, fees associated with
alcohol-related advertisements are not shared with the retailer. Spec. i-f 17.
We agree with the Examiner that Appellant's claims are directed to a
business model for revenue sharing fees collected from the presentation of
advertisement messages. Here, the collection of fees for displaying
advertisement messages and the sharing of associated revenue according to
applicable laws and regulations is a fundamental economic practice and
achieved by performing a series of mathematical relationships and
recognizing certain sets of data (i.e., alcohol-related advertisement
messages). See Alice, 134 S. Ct. at 2356 (citing Bilski v. Kappas, 561 U.S.
593, 611 (2010)); see also Digitech, 758 F.3d at 1351, RecogniCorp, 855
F.3d at 1327; Content Extraction, 776 F.3d at 1347, Elec. Power, 830 F.3d
at 1353. Additionally, the receiving and sending of information over a
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network are also abstract steps performed in furtherance of the abstract idea.
See buySAFE, 765 F.3d at 1355.
Because we determine the claims are directed to an abstract idea, we
analyze the claims under step two of Alice to determine if there are
additional limitations that individually, or as an ordered combination, ensure
the claims amount to "significantly more" than the abstract idea. Alice, 134
S. Ct. at 2355 (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc.,
132 S. Ct. 1289, 1294, 1297-98 (2012)). The implementation of the abstract
idea involved must be "more than [the] performance of 'well-understood,
routine, [and] conventional activities previously known to the industry."'
Content Extraction, 776 F.3d at 1347--48 (quoting Alice, 134 S. Ct. at 2359)
(alteration in original).
Despite characterizing the claimed invention as using computer
technology to overcome a problem specific to computer networks and
addressing a business challenge particular to the Internet, Appellant does not
present sufficient persuasive evidence or argument that the claims are
directed to an improvement specific to a computer network or the Internet
itself (e.g., improving the network's operation or configuration, or retaining
website visitors). See App. Br. 12-16; see also Final Act. 6. Nor does
Appellant provide sufficient persuasive evidence or argument that the claims
improve the functioning of the basic display function of the information
processing system. App. Br. 16; see also Two-Way Media Ltd. v. Comcast
Cable Commc 'ns, LLC, 874 F.3d 1329, 1338-39 (Fed. Cir. 2017). Rather,
the focus of the claims is on a business model (i.e., revenue sharing) for the
presentation of advertisement messages using generic computers and
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Application 12/222,785
networks as tools, not on improvements in the computer (e.g., display
functions). See Alice, 134 S. Ct. at 2359.
Additionally, we disagree with Appellant (see App. Br. 15) that the
particular steps of collecting, sharing, and preventing sharing of fees amount
to significantly more than the abstract idea itself. Rather, the collection and
sharing (or prevention of sharing) of fees are simply steps to implement the
abstract idea of revenue sharing.
Appellant asserts that the claims add a specific limitation that was not
well-understood, routine, or conventional. See App. Br. 17-18. Appellant
concedes that receiving and transmitting data over a network are generic
computer functions. App. Br. 17. However, Appellant contends causing an
advertisement message to be integrated in a display window with a
streaming video signal is not a generic function. App. Br. 18. We disagree.
As described in the Specification, the displays are not related to any
particular computer or apparatus. Spec. i-f 34. "Various general purpose
systems may be used." Spec. i-f 34. Additionally, the Specification describes
that the advertisement messages "may be displayed on any acceptable
display device." Spec. i-f 37. Accordingly, the claims do not recite more
than generic components performing well-understood, routine, and
conventional functions to implement the abstract idea of revenue sharing
fees collected from the presentation of advertisement messages.
Appellant also argues the claims "do not attempt to preempt every
application of the idea of 'presenting advertisement in a retail establishment
that is selling alcoholic beverages while complying with legal regulations
pertaining to alcoholic beverages."' App. Br. 16.
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"While preemption may signal patent ineligible subject matter, the
absence of complete preemption does not demonstrate patent eligibility."
FairWarning IP, 839 F.3d at 1098 (quotingAriosa 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 (Fed. Cir. 2015) ("[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."). Further, "[ w ]here a patent's claims are deemed only to disclose
patent ineligible subject matter under the Mayo framework, as they are in
this case, preemption concerns are fully addressed and made moot." Ariosa,
788 F.3d at 1379.
For the reasons discussed supra, we are not persuaded of Examiner
error. Accordingly, we sustain the Examiner's rejection under 35 U.S.C.
§ 101 of independent claim 23. For similar reasons, we also sustain the
Examiner's rejection of independent claims 1 and 32, which were argued
together with claim 23 and which recite similar limitations. See App. Br. 9--
19. Additionally, we sustain the Examiner's rejection under 35 U.S.C. § 101
of claims 2-10, 25-31, 34--40, and 42, which depend directly or indirectly
therefrom and were not argued separately. See App. Br. 9--19; 37 C.F.R.
§ 41.37(c)(l)(iv)(2015).
Rejection under 35 USC§ 103(a)
Appellant argues the Examiner erred in rejecting the pending claims
over the combined teachings of Roberts and Yarmolich. App. Br. 20-21;
Reply Br. 6-7. In particular, Appellant asserts Roberts teaches away from
preventing any portion of fees associated with alcohol-related advertisement
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messages from being shared with the retailer. App. Br. 20-21 (citing
Roberts i-f 20); Reply Br. 6-7 (citing Roberts i-f 20).
Robert describes:
In some embodiments, for example, a distributor may be
awarded a share of the advertising revenues. In addition, a
potential to share revenue may attract content producers and
quality media content to the distributor, thereby enhancing the
library of media content hosted by the distributor. A library of
differentiating content can increase the appeal of services
provided by the distributor.
Roberts i-f 20. Thus, Appellant argues Roberts teaches revenue sharing
attracts more content producers and quality media content and, therefore,
increase the appeal of services provided by a distributor. Reply Br. 7.
Axiomatically, Appellant posits if revenue is prevented from being shared,
the appeal of services would decrease. Reply Br. 7.
"A reference may be said to teach away when a person of ordinary
skill, upon reading the reference, would be discouraged from following the
path set out in the reference, or would be led in a direction divergent from
the path that was taken by the applicant." Ricoh Co., Ltd. v. Quanta
Computer, Inc., 550 F.3d 1325, 1332 (Fed. Cir. 2008) (citations omitted).
[T]he 'mere disclosure of more than one alternative' does not amount to
teaching away from one of the alternatives where the reference does not
'criticize, discredit, or otherwise discourage the solution claimed."'
SightSound Techs., LLC v. Apple Inc., 809 F.3d 1307, 1320 (Fed. Cir. 2015)
(quoting In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004)).
We are not persuaded by Appellant's arguments that Roberts teaches
away from preventing revenue sharing-particularly if such revenue sharing
is not consistent with prevailing laws and regulations. Rather, Roberts states
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that "[i]n some embodiments, for example, a distributor may be awarded a
share of the advertising revenues." Roberts i-f 20. Thus, Roberts
contemplates that in other embodiments, advertising revenues would not be
shared with a distributor. Additionally, Roberts does not criticize, discredit,
or otherwise discourage the prevention of revenue sharing-particularly if
such revenue sharing is prohibited. Thus, we find Roberts does not teach
away from preventing revenue sharing of certain fees (i.e., fees collected
from displaying alcohol-related advertisement messages).
In rejecting, inter alia, the independent claims, the Examiner relies on
the combined teachings and suggestions of Roberts and Y armolich and
further takes Official Notice "that it is old and well known to have
regulations in place pertaining to how certain fees may be shared." Final
Act. 10. In support of the Official Notice, the Examiner identifies Rule 5.4
of the Model Rules of Professional Conduct (generally proscribing the
sharing of certain fees).
Appellant disputes the Examiner's taking of Official Notice. App.
Br. 21-28; Reply Br. 3---6. In particular, Appellant argues the Model Rules
of Professional Conduct is non-analogous art to Appellant's claimed
invention and "does not teach or suggest how to comply with legal
regulations pertaining to sharing revenue from alcoholic beverage related
advertisements." App. Br. 22-24; Reply Br. 3--4. Additionally, Appellant
argues the Examiner's use of Official Notice was improper at least because
the "officially noticed 'fact' in this case is not capable of 'of [sic] instant and
unquestionable demonstration as being well-known' in the pertinent art."
App. Br. 26-28.
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We have considered all of Appellant's arguments and are not
persuaded of Examiner error. As an initial matter, we note Appellant's
Specification sets forth that it was well known that regulations at the federal
and state level are in place regarding revenue sharing of fees collected from
alcoholic beverage related advertisements. See Spec. i-fi-f l--4. Further, the
Examiner identified documentary evidence (i.e., Rule 5.4 of the Model
Rules of Professional Conduct) to support the Officially Noticed fact of
having regulations in place regarding fee sharing. Thus, to the extent
Appellant has created a reasonable doubt as to the circumstances justifying
the Examiner's notice of what was well known, the Examiner has identified
documentary evidence. See In re Boon, 439 F.2d 724, 728 (CCPA 1971);
Manual of Patent Examining Procedure ("MPEP") § 2144.03(C) (9th ed.
Rev. 08.2017, Jan. 2018).
Additionally, to the extent Appellant's arguments are not misplaced of
whether the Model Rules of Professional Conduct is non-analogous art, we
are not apprised of Examiner error.
A reference is analogous art to the claimed invention if: (1) the
reference is from the same field of endeavor as the claimed invention (even
if it addresses a different problem); or (2) the reference is reasonably
pertinent to the problem faced by the inventor (even if it is not in the same
field of endeavor as the claimed invention). In re Bigio, 381 F.3d 1320,
1325 (Fed. Cir. 2004). In order for a reference to be "reasonably pertinent"
to the problem, it must "logically would have commended itself to an
inventor's attention in considering his problem." In re Icon Health and
Fitness, Inc., 496 F.3d 1374, 1379--80 (Fed. Cir. 2007) (quoting In re Clay,
966 F.2d 656, 659 (Fed. Cir. 1992).
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Here, we agree with the Examiner (see Ans. 4) that Rule 5 .4 of the
Model Rules of Professional Conduct (i.e., proscribing the sharing of certain
fees with specific individuals) is reasonably pertinent to the problem being
addressed by Appellant's claimed invention (i.e., complying with legal
regulations proscribing the sharing of revenues with specific individuals (i.e.
the retailers)). Further, Appellant does not persuasively rebut the
Examiner's determination that the combined teachings and suggestions of
Roberts and Y armolich-taken with the general teaching of determining
which fees can be shared and those which are prohibited from being shared
(i.e., Rule 5.4 of the Model Rules of Professional Conduct}-teach
Appellant's claimed limitations related to revenue sharing of alcohol-related
advertisements in compliance with legal regulations. Ans. 4; see also
Perfect Web Techs., Inc. v. InfoUSA, Inc., 587 F.3d 1324, 1329 (Fed. Cir.
2009) (holding the obviousness inquiry "may include recourse to logic,
judgment, and common sense available to the person of ordinary skill that do
not necessarily require explication in any reference or expert opinion").
For the reasons discussed supra, we are unpersuaded of Examiner
error. Accordingly, we sustain the Examiner's rejection under 35 U.S.C.
§ 103(a) of independent claims 1, 23, and 32. Additionally, we also sustain
the Examiner's rejection of claims 2-10, 25-31, 34--40, and 42, which
depend directly or indirectly therefrom and were not argued separately. See
App. Br. 20-28; 37 C.F.R. § 41.37(c)(l)(iv).
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DECISION
We affirm the Examiner's decision rejecting claims 1-10, 23, 25-32,
34--40, and 42 under 35 U.S.C. § 101.
We affirm the Examiner's decision rejecting claims 1-10, 23, 25-32,
34--40, and 42 under 35 U.S.C. § 103(a).
No time period for taking any subsequent action in connection with
this appeal may be extended under 3 7 C.F .R. § 1.13 6( a )(1 )(iv). See
37 C.F.R. § 41.50(f).
AFFIRMED
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