Ex Parte TZIORTZIS et al

Patent Trials and Appeals Board

Apr 1, 2019

12770220 - (D) (P.T.A.B. Apr. 1, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/770,220 04/29/2010
95866 7590 04/03/2019
Fleit Gibbons Gutman Bongini & Bianco P.L.
4800 N. Federal Highway, Suite B306
Boca Raton, FL 33431
FIRST NAMED INVENTOR
Alek TZIORTZIS
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.
35848-US-PAT 9272
EXAMINER
HOAR, COLLEEN A
ART UNIT PAPER NUMBER
3621
NOTIFICATION DATE DELIVERY MODE
04/03/2019 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):
ptoboca@fggbb.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ALEX TZIOR TZIS, DAVID RENE PROULX,
MATTHEW BELLS, and SHERRYL LEE LORRAINE SCOTT
Appeal2018-002222
Application 12/770,220 1
Technology Center 3600
Before HUNG H. BUI, IRVING E. BRANCH, and ADAM PYONIN,
Administrative Patent Judges.
BUI, Administrative Patent Judge.
DECISION ON APPEAL
Appellant seeks our review under 35 U.S.C. § 134(a) from the
Examiner's Final Rejection of claims 1-3, 7, 9-18, and 21-24, which are all
the claims pending in the application. Claims 4---6, 8, and 19-20 are
cancelled. App. Br. 28-30, Claims App. We have jurisdiction under
35 U.S.C. § 6(b ).
WeAFFIRM. 2
1 Appellants identify BlackBerry Limited as the real party in interest. App.
Br. 2.
2 Our Decision refers to Appellants' Appeal Brief filed May 22, 2017
("App. Br."); Reply Brief filed December 26, 2017 ("Reply Br.");
Examiner's Answer mailed October 26, 2017 ("Ans."); Final Office Action
mailed December 19, 2016 ("Final Act."); and original Specification filed
April 29, 2010 ("Spec.").
Appeal2018-002222
Application 12/770,220
STATEMENT OF THE CASE
Appellants' invention relates to a "SYSTEM AND METHOD FOR
DISTRIBUTING MESSAGES [I.E., ADVERTISEMENTS AND OTHER MESSAGES] TO
AN ELECTRONIC [MOBILE] DEVICE BASED ON MOVEMENT OF THE DEVICE."
Spec., Title, ,r,r 2, 14. According to Appellants, "the advertisement may be
selected [from a set of advertisements] based on a speed of the [mobile]
device determined from the state of movement [ determined from comparing
the movement data against a threshold]." Spec. ,r,r 16-17. "An
advertisement may be provided to the [mobile] device in various forms and
media, including as a message (for example, an email, a text message, or a
voice mail message), as an embedded link in a website page that is accessed
to the device, as a streamed content to the device." Spec. ,r 46.
Claims 1 and 18 are independent. Claim 1 is illustrative of the
claimed subject matter, as reproduced below, bracketing added with disputed
limitations in italics:
1. A method for distributing advertisements to a
portable electronic device, said method comprising:
rece1vmg, by an information processing system,
movement data and movement context data from said device, [ 1]
said information processing system being separate and distinct
from said device and external to a transport mechanism
associated with said device, wherein said movement context data
comprises data indicating a type of said transport mechanism
and a relation of a user of said device to said transport
mechanism;
[2] determining, by said information processing system
and from said received movement data, a state of movement of
said device;
[3] determining, by said information processing system
and from said received movement context data, that the transport
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mechanism is a vehicle and whether said device is associated
with a driver of a vehicle or with a passenger associated with
said driver;
[ 4] selecting, by said information processing system, an
advertisement from a plurality of advertisements based on said
state of movement and said movement context data, wherein
different sets of advertisements in said plurality of
advertisements are associated with a different movement context,
and wherein said advertisement comprises a plurality of different
presentation formats, said selecting comprises
[5] if said movement context data indicates that said
device is associated with said driver of said vehicle then
selecting a presentation format from the plurality of
different presentation formats for the advertisement that
includes an audio component,
[6] if said movement context data indicates that said
device is associated with said passenger then selecting a
presentation format for the advertisement that differs from
a presentation format for another advertisement in said set
of advertisements sent to a second device associated with
said driver; and
wirelessly transmitting, by said information processing
system, said advertisement to said device, wherein said
advertisement is configured to be presented on said device
according to said presentation format selected for said
advertisement.
App. Br. 27 (Claims App.).
EXAMINER'S REJECTIONS & REFERENCES
(1) Claims 1-3, 7, 9-18, and 21-24 stand rejected under
35 U.S.C. § 101 because the claimed invention is directed to an abstract idea
without significantly more. Final Act. 2-3.
(2) Claims 1-3, 7, 9-18, and 21-24 [sic, claims 1-3, 7, and 9-18]
stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Ramer et
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Application 12/770,220
al. (US 8,195,133 B2; issued June 5, 2012, hereinafter "Ramer"), Barbera
(US 8,280,438 B2; issued Oct. 2, 2012), and Smith (US 2010/0251283 Al;
published Sept. 30, 2010). Final Act. 3-9.
(3) Claims 8 and 13 [sic, claims 13 and 21-24] stand rejected under
35 U.S.C. § 103 as being unpatentable over Ramer and Zilka (US 8,255,154
B2; issued Aug. 28, 2012). Final Act. 9-12.
DISCUSSION
Patent Eligible Subject Matter
To determine whether claims are patent eligible under 35 U.S.C.
§ 101, we apply the Supreme Court's two-step framework articulated in
Alice Corp. Pty Ltd. v. CLS Bank Int'!, 573 U.S. 208 (2014). First, we
determine whether the claims are directed to a patent-ineligible concept:
laws of nature, natural phenomena, and abstract ideas. Id. at 216-1 7. If so,
we then proceed to the second step to consider the elements of the claims
"individually and 'as an ordered combination"' to determine whether there
are additional elements that "'transform the nature of the claim' into a
patent-eligible application." Id. at 217. In other words, the second step is to
"search for an 'inventive concept'-i.e., an element or combination of
elements that is 'sufficient to ensure that the patent in practice amounts to
significantly more than a patent upon the [ineligible concept] itself."' Id. at
217-218.
The Federal Circuit has described the Alice step-one inquiry as
looking at the "focus" of the claims, their "character as a whole," and the
Alice step-two inquiry as looking more precisely at what the claim elements
add-whether they identify an "inventive concept" in the application of the
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ineligible matter to which the claim is directed. See Elec. Power Grp., LLC
v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016); Enfzsh, LLC v.
Microsoft Corp., 822 F.3d 1327, 1335-36 (Fed. Cir. 2016); Internet Patents
Corp. v. Active Network, Inc., 790 F.3d 1343, 1346 (Fed. Cir. 2015).
Because there is no single definition of an "abstract idea" under Alice
step 1, the Federal Circuit (1) has adopted the common law, analogy-driven
approach (a.k.a. "analogous claim" test) to determine whether a claim is
directed to an abstract idea, and (2) has instructed us "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 (Israel)
Ltd. v. Openet Telecom, Inc., 841 F.3d 1288, 1294 (Fed. Cir. 2016) (citing
Elec. Power Grp., 830 F.3d at 1353-54; accordUSPTO Memorandum, 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.").
The PTO has acknowledged that the Federal Circuit's common law,
analogy-driven approach (a.k.a. "analogous claim" test) was effective soon
after Alice, but recently concluded that approach has since become
impractical as the growing body of Federal Circuit precedent has become
increasing more difficult for the Office and Examiners to apply in a
predictable manner. In particular, the PTO has issued a new section 101
Memorandum that governs all patent-eligibility analysis under Alice and
section 101 effective as of January 7, 2019. See 2019 Revised Patent
Subject Matter Eligibility Guidance, 84 Fed. Reg. 50, 52, Jan. 7, 2019
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("PTO§ 101 Memorandum"). In this PTO§ 101 Memorandum, the PTO
has synthesized, for purposes of clarity, predictability, and consistency, key
concepts identified by the courts as abstract ideas to explain that the
"abstract idea" exception includes the following three groupings:
( 1) Mathematical
mathematical
calculations;
concepts-mathematical
formulas or equations,
relationships,
mathematical
(2) Mental processes----concepts performed in the human
mind (including an observation, evaluation, judgment,
opinion); and
(3) Certain methods of orgamzmg human activity-
fundamental economic principles or practices (including
hedging, insurance, mitigating risk); commercial or legal
interactions (including agreements in the form of
contracts; legal obligations; advertising, marketing or
sales activities or behaviors; business relations); managing
personal behavior or relationships or interactions between
people (including social activities, teaching, and following
rules or instructions).
PTO§ 101 Memorandum, 84 Fed. Reg. 52. According to the PTO§ 101
Memorandum, " [ c] laims that do not recite [subject] matter that falls within
these enumerated groupings of abstract ideas should not be treated as
reciting abstract ideas," except in rare circumstances. Even if the claims
recite any one of these three groupings of abstract ideas, these claims are
still not "directed to" a judicial exception (abstract idea), and thus are patent-
eligible, if "the claim as a whole integrates the recited judicial exception into
a practical application of that uudicial] exception." See PTO§ 101
Memorandum, 84 Fed. Reg. 53. "[I]ntegration into a practical application"
requires an additional element or a combination of additional elements in the
claim to apply, rely on, or use the judicial exception in a manner that
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imposes a meaningful limit on the judicial exception, such that the claim is
more than a drafting effort designed to monopolize the exception. See PTO
§ 101 Memorandum, 84 Fed. Reg. 53-55.
For example, limitations that are indicative of "integration into a
practical application" include:
1) Improvements to the functioning of a computer, or to
any other technology or technical field - see MPEP
§ 2106.05(a);
2) Applying the judicial exception with, or by use of, a
particular machine - see MPEP § 2106.05(b );
3) Effecting a transformation or reduction of a particular
article to a different state or thing - see MPEP
§ 2106.05(c); and
4) Applying or using the judicial exception in some other
meaningful way beyond generally linking the use of the
judicial exception to a particular technological
environment, such that the claim as a whole is more than
a drafting effort designed to monopolize the exception
-see MPEP § 2106.05(e).
See PTO§ 101 Memorandum, 84 Fed. Reg. 53-55.
In contrast, limitations that are not indicative of "integration into a
practical application" include:
1) Adding the words "apply it" (or an equivalent) with the
judicial exception, or mere instructions to implement an
abstract idea on a computer, or merely uses a computer
as a tool to perform an abstract idea - see MPEP
§ 2106.05(±);
2) Adding insignificant extra-solution activity to the
judicial exception-see MPEP § 2106.05(g); and
3) Generally linking the use of the judicial exception to a
particular technological environment or field of use -
see MPEP § 2106.05(h).
See PTO§ 101 Memorandum, 84 Fed. Reg. 54--55 ("Prong Two").
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Examiner's Determination of Patent-Ineligibility
In rejecting claims 1-3, 7, 9-18, and 21-24 under 35 U.S.C. § 101,
the Examiner determines these claims are generally directed to an abstract
idea of "distributing messages [i.e., advertisement] to electronic devices"
including "selection and presentation of advertisements" which is considered
as "certain methods of organizing human activities" such as a fundamental
economic practice involving "advertising, marketing, and sale activities."
Ans. 3--4. The Examiner also determines that the claims include limitations
that are analogous or similar to concepts, for example of: (1) "collecting
information, analyzing it, [ and] displaying certain results" as discussed in
Electric Power Group (see Final Act. 13-15 (citing Elec. Power Grp., LLC
v. Alstom S.A., 830 F.3d 1350, 1354 (Fed. Cir. 2016)) (holding that claims
directed to "gathering and analyzing information of a specified content, then
displaying the results" are patent-ineligible under section 101 ); (2) "using
advertising as an exchange [allowing a consumer to access content]" as
discussed in Ultramercial; and (3) "delivering user-selected media content to
portable devices" as discussed in Affinity Labs of Texas. Ans. 5-8 citing
(Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709 (Fed. Cir. 2014) (holding
that claims directed to a "process of allowing a consumer to receive
copyrighted media in exchange for watching a selected advertisement" are
patent-ineligible) (Affinity Labs of Texas v. Amazon.com Inc. 838 F.3d 1266
(Fed. Cir. 2014) (holding that claims directed to "delivering user-selected
media content to portable devices" are patent-ineligible under section 101).
The Examiner further determines that the claims fail to amount to
"significantly more than the judicial exception" or contain an "inventive
concept" because: (1) the additional elements beyond the abstract ideas are
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generic computer components, such as (i) portable electronic device,
information processing system, and vehicle ( claim 1 ); and (ii) server,
microprocessor, movement analysis module, and advertisement selection
module ( claim 18), perform generic computer functions; and (2) "[ n Jone of
the limitations are directed to improvements to another technology or
technical field ... to the functioning of the computer itself." Ans. 8-12.
Appellants argue independent claims 1 and 18 together (App. Br. 6-
16). We select claim 1 as representative. Claims 2, 3, 7, 9-17, and 21-24
stand or fall with claim 1 (see 37 C.F.R. § 4I.37(c)(l)(iv)).
Alice/May~tep 1 (Abstract Idea)
Step 2A-Prongs 1 and 2 identified in the Revised Guidance
Step 2A-Prong 1
Appellants argue the claims are directed to "distributing electronic
content to portable electronic devices such that network traffic is reduced
and user safety is increased with respect to interaction with electronic
content" and, as such, are directed to patent eligible subject matter because
they describe "a patentable, technological improvement over existing
bandwidth/resource intensive content distribution techniques" similar to the
claims inMcR0. 3 App. Br. 8-16 (emphasis omitted) (citingMcRO, Inc. v.
3 In addition to McRO, Appellant also presents several patent-eligibility
arguments based on: (1) DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d
1245 (Fed. Cir. 2014); (2) BASCOM Global Internet Servs., Inc. v. AT&T
Mobility LLC, 827 F.3d 1341 (Fed. Cir. 2016)); and (3) Amdocs (Israel) Ltd.
v. Openet Telecom, Inc., 841 F.3d 1288 (Fed. Cir. 2016). App. Br. 10-16.
However, the Federal Circuit's decisions inDDR, BASCOM, and Amdocs
are applicable to the analysis under Prong Two of the PTO § 101
Memorandum and Alice step 2 under the Federal Circuit precedent, rather
than Alice step 1, and, as such, will be addressed separately in that context
See PTO§ 101 Memorandum, 84 Fed. Reg. at 55.
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Bandai Namco Games America, Inc., 837 F.3d 1299 (Fed. Cir. 2016)).
Specifically, Appellants argue:
the claimed invention is not directed to advertising as asserted by
the Examiner but is directed to a technical improvement for
distributing content ( e.g., an advertisement) to an electronic
device such that that network traffic is reduced and user
distraction resulting from the content is decreased while
operating a vehicle.
Reply Br. 2 (citing Spec. ,r,r 2, 122). According to Appellants,
[t]he specific recitations of at least independent claims 1 and 18
reduce the overall traffic within the network by selecting
electronic content to be sent to these devices based on a specific
activity being performed by the user ( and a type of transport
mechanism transporting the user/ device as recited in claim 16),
and further decrease user distraction while operating the
transport mechanism while being presented the electronic
content by at least the claimed selection and formatting
operations. For example, the specific claimed combination of
features directed to an information processing system receiving
movement context data indicating a type of transport mechanism
and a user's relation (e.g., driver or passenger) to the specific
transport mechanism; using this data to determine that the
transport mechanism is a vehicle and whether the user is a driver
or passenger of the vehicle; and selecting a presentation format
of content to be delivered to the user based on the user being a
driver or passenger of the vehicle allow for the improvement
realized by the invention.
Reply Br. 2-3 ( emphasis added).
Appellants' arguments are not persuasive. At the outset, we note
Appellants' reliance on McRO is misplaced. For example, McRO 's '576
patent (U.S. Patent No. 6,307,576) describes computer software for
matching audio to a 3D animated mouth movement to provide lip-synched
animation. McRO 's claims contain (i) specific limitations regarding a set of
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rules that "define[] a morph weight set stream as a function of phoneme
sequence and times associated with said phoneme sequence" to enable
computers to produce "accurate and realistic lip synchronization and facial
expressions in animated characters" (McRO, 837 F.3d at 1313) and, when
viewed as a whole, are directed to (ii) a "technological improvement over
the existing, manual 3-D animation techniques" that uses "limited rules in a
process specifically designed to achieve an improved technological result in
conventional industry practice." Id. at 1316.
In contrast to McRO, Appellant's claims and Specification describe a
system and method for distributing advertisements to a mobile device. Spec.
,r,r 2, 14 ( claims 1 and 18). According to Appellants' claims, "the
advertisement may be selected [ from a set of advertisements] based on ( 1)
movement data (i.e., a speed of the [mobile] device determined from the
state of movement [ determined from comparing the movement data against a
threshold], and (2) movement context data (i.e., data indicating that the
mobile device is associate with a driver or a passenger of a vehicle). Spec.
,r,r 16-17 (claims 1 and 18). "An advertisement may be provided to the
[mobile] device in various forms and media, including as a message (for
example, an email, a text message, or a voice mail message), as an
embedded link in a website page that is accessed to the device, as a streamed
content to the device." Spec. ,r 46.
As correctly recognized by the Examiner, "distributing advertisements
to a portable electronic device" in a certain presentation format selected
from a plurality of presentation formats "based on the behavior of user,
either as a driver or passenger in relation to other received movement and
context data," i.e., based on (1) movement data of the device, and (2)
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movement context data (i.e., data indicating a type of a vehicle and whether
the device is associate with a driver or a passenger of a vehicle) as recited in
Appellants' claims 1 and 18 is plainly directed to "advertising, marketing,
and sale activities" in the context of a mobile device, i.e., a "fundamental
economic practice"-a "certain method of organizing human activity"-and
is thus a subject matter that fall within the categories of abstract ideas
identified by the PTO § 101 Memorandum. Ans. 4--5.
For example, the steps recited in Appellants' claim 1: such as ( 1)
"receiving ... movement data and movement context data from said
device;" (2) "determining ... a state of movement of said device ...
whether said device is associated with a driver of a vehicle or with a
passenger;" (3) "selecting ... an advertisement from a plurality of
advertisements based on said state of movement and said movement context
data;" and (4) "wirelessly transmitting ... said advertisement to said device .
. . to be presented on said device according to said presentation format
selected for said advertisement" are descriptive of various conditions and
formats in which an advertisement can be presented to a mobile device.
Nowhere in Appellants' Specification is there any description that selecting
and transmitting an advertisement to be presented in a mobile device based
on various conditions and formats is intended to reduce network traffic or
avoid user distraction while operating a vehicle, as Appellants argue. Reply
Br. 2. Rather, the activities recited in Appellants' claims 1 and 18 are
squarely within the realm of abstract ideas, like: (1) the risk hedging in
Bilski v. Kappas, 561 U.S. 593 (2010); (2) the intermediated settlement in
Alice, 573 U.S. at 220; (3) verifying credit card transactions in CyberSource,
654 F.3d at 1370; (4) guaranteeing transactions in buySAFE, Inc. v. Google,
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Inc., 765 F.3d 1350, 1354 (Fed. Cir. 2014); (5) distributing products over the
Internet in Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709 (Fed. Cir. 2014);
( 6) determining a price of a product offered to a purchasing organization in
Versata Dev. Grp., Inc. v. SAP Am., Inc., 793 F.3d 1306 (Fed. Cir. 2015);
and (7) pricing a product for sale in OIP Techs., Inc. v. Amazon.com, Inc.,
788 F.3d 1359 (Fed. Cir. 2015). Target advertisement based on various
criteria is also a building block of a market economy and, like risk hedging
and intermediated settlement, is an "abstract idea" beyond the scope of
§ 101. See Alice, 573 U.S. at 220.
Step 2A-Prong 2 (Integration into Practical Application)
According to the PTO § 101 Memorandum, even if the claims recite
"mental processes" or a "fundamental economic practice," these claims are
still not "directed to" a judicial exception (abstract idea), and thus are patent-
eligible, if "the claim as a whole integrates the recited judicial exception into
a practical application of that uudicial] exception." See PTO§ 101
Memorandum, 84 Fed. Reg. at 53. The "integration into a practical
application" prong requires an additional element or a combination of
additional elements in the claim to apply, rely on, or use the judicial
exception in a manner that imposes a meaningful limit on the judicial
exception, such that the claim is more than a drafting effort designed to
monopolize the exception. See PTO§ 101 Memorandum, 84 Fed. Reg. at
53-55.
However, we discern no additional element ( or combination of
elements) recited in Appellants' claims 1 and 18 that integrates the judicial
exception into a practical application. See PTO § 101 Memorandum, 84
Fed. Reg. 54--55 ("Prong Two"). For example, Appellant's claimed
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additional elements ( e.g., "information processing system," "portable
electronic device," and "vehicle" recited in claim 1, and "server" and
"microprocessor" including "movement module," "advertisement selection
module," "transmittal module," and "movement analysis module") do not:
( 1) improve the functioning of a computer or other technology; (2) are not
applied with any particular machine ( except for a generic computer); (3) do
not effect a transformation of a particular article to a different state; and ( 4)
are not applied in any meaningful way beyond generally linking the use of
the judicial exception to a particular technological environment, such that
the claim as a whole is more than a drafting effort designed to monopolize
the exception. See MPEP §§ 2106.05(a}-(c), (e}-(h).
For business-centric inventions such as Appellants' invention
involving target advertisement, the "integration into a practical application"
prong further requires consideration of whether the claims purport to provide
"a technical solution to a technical problem" as required by the Federal
Circuit's precedential decisions in (1) DDR Holdings, LLC v. Hotels.com,
L.P., 773 F.3d 1245, 1257 (Fed. Cir. 2014) and (2) Amdocs (Isr.) Ltd. v.
Openet Telecom, Inc., 841 F.3d 1288 (Fed. Cir. 2016). See MPEP
§ 2106.05(a).
For example, the Federal Circuit found DDR 's claims are patent-
eligible under section 101 because DDR 's claims: (1) do not merely recite
"the performance of some business practice known from the pre-Internet
world" previously disclosed in Bilski and Alice; but instead (2) provide a
technical solution to a technical problem unique to the Internet, i.e., a
"solution ... necessarily rooted in computer technology in order to
overcome a problem specifically arising in the realm of computer networks."
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DDR, 773 F.3d at 1257. Likewise, the Federal Circuit also found Amdocs'
claims patent-eligible under section 101 because like DDR, Amdocs' claims
"entail[] an unconventional technological solution ( enhancing data in a
distributed fashion) to a technological problem (massive record flows which
previously required massive databases)" and "improve the performance of
the system itself." Amdocs, 841 F.3d at 1300, 1302.
Contrary to Appellants' arguments, selecting or distributing an
advertisement to a mobile device in a certain presentation format based on
various conditions, i.e.: (1) movement data of the mobile device; and (2)
movement context data (i.e., data indicating a type of a vehicle and whether
the device is associated with a driver or a passenger of a vehicle) does not
provide any "technical solution to a technical problem" as contemplated by
the Federal Circuit in DDR and Amdocs. See MPEP § 2106.05(a).
Targeting advertisements in the context of a mobile device is neither
technology nor a technical solution to a technological problem. Instead,
limitations of Appellants' claims 1 and 18 recite the abstract idea, and thus
are not "additional elements recited in the claim beyond the recited judicial
exception." PTO§ 101 Memorandum, 84 Fed. Reg. 54--55 (emphasis
added).
In contrast to DDR and Amdocs, Appellant's abstract idea of
"distributing advertisements to a portable electronic device" does not
provide a technical solution to a technical problem unique to the Internet,
i.e., a "solution ... necessarily rooted in computer technology in order to
overcome a problem specifically arising in the realm of computer networks."
DDR, 773 F.3d at 1257. Nor does Appellants' invention entail, like Amdocs,
any "unconventional technological solution ( enhancing data in a distributed
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fashion) to a technological problem (massive record flows which previously
required massive databases)" and "improve the performance of the system
itself." Amdocs, 841 F.3d at 1300, 1302. Instead, the solution proposed by
Appellants is simply to improve the business strategy and increase revenue
and not to improve the technology. While an advertisement selected for
sending to a mobile device can be any combination of audio, video, and
SMS messages, the selection of such an advertisement is not intended to
solve any problem related to network traffic or network efficiency, as
Appellants argue. App. Br. 9, 16.
Moreover, selecting an advertisement to be presented to a mobile
device in a certain presentation format based on various criteria, i.e., (1)
movement data of the mobile device, and (2) movement context data (i.e.,
data indicating a type of a vehicle and whether the device is associate with a
driver or a passenger of a vehicle) is not "a technical improvement for
distributing content (e.g., an advertisement)" as Appellants argue. Reply Br.
2. Nor does transmission of an advertisement to a mobile device based on
various conditions and presentation formats improve any computer
functionality or "reduce the overall traffic within the network ... and further
improving the safety of users while interacting with the electronic content"
as Appellants argue. App. Br. 9. The focus of Appellants' invention is not
to improve the performance of computers, but to use computers (i.e., server
and microprocessor) as a tool to implement business functions of selecting
and distributing an advertisement to a mobile device.
For these reasons, we agree with the Examiner's determination that
Appellants' claims 1-3, 7, 9-18, and 21-24 are directed to an abstract idea
that does not integrate into a practical application.
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Alice/May~tep 2 (Inventive Concept)
Step 2B identified in the Revised Guidance
In the second step of the Alice inquiry, Appellants do not argue
whether the claims contain an "inventive concept" or significant more than
an abstract idea. Instead, Appellants present several additional patent-
eligibility arguments based on: (1) DDR; (2) BASCOM; and (3) Amdocs.
App. Br. 10-16. For example, Appellants argue, like the claims in Amdocs,
their claims are directed to "a specific, unconventional technological
solution that was narrowly drawn[] to resolve a specific technological
problem, and serve as an improvement over the prior art" because "the
specific recitation of at least independent claims 1 and 18 reduce the overall
traffic within the network by selecting electronic content to be sent to these
devices based on a specific activity being performed by the user, and further
improving the safety of users while interacting with the electronic content by
at least the claimed selection and formatting operations." App. Br. 9.
( emphasis omitted). Similarly, Appellants argue, like the claims in
BASCOM, "claim 1 clearly sets forth concrete operations [and] describe a
more efficient and safer method for distributing advertisements to a portable
electronic device." App. Br. 11. Likewise, Appellants argue, like the claims
in DDR, "claim 1 is specifically directed to a solution that is 'necessarily
rooted in computer technology'" because "claim 1 seeks to take on the
'technical challenge' of efficiently and safely distributing electronic content
to portable electronic devices" and such a "problem only exists and arises
from the computing technology itself." App. Br. 16.
Appellants' arguments are not persuasive for reasons discussed in
connection with DDR and Amdocs. With respect to BASCOM, Appellants'
reliance on BASCOM is also misplaced. For example, Bascom (U.S. Patent
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No. 5,987,606 ("Bascom '606 patent")) describes a particular arrangement
of filtering software at a specific location, remote from the end-users, with
customizable filtering features specific to each end user. The filtering
software enables individually customizable filtering at the remote ISP server
by taking advantage of the technical ability of the ISP server to identify
individual accounts and associate a request for Internet content with a
specific individual account. Bascom '606 patent 4:35-38.
The Federal Circuit recognized that Bascom's installation of an
Internet content filter at a particular network location is "a technical
improvement over prior art ways of filtering such content" because such an
arrangement advantageously allows the Internet content filter to have "both
the benefits of a filter on a local computer and the benefits of a filter on the
ISP server" and "give[ s] users the ability to customize filtering for their
individual network accounts." BASCOM, 827 F.3d at 1350, 1352.
According to the panel, BASCO M's claims "do not preempt the use of the
abstract idea of filtering content on the Internet or on generic computer
components performing conventional activities." Id. Instead, Bascom's
claims "carve out a specific location for the filtering system ( a remote ISP
server) and require the filtering system to give users the ability to customize
filtering for their individual network accounts." Id. As such, "an inventive
concept can be found in the non-conventional and non-generic arrangement
of known, conventional pieces." Id. at 1350.
In contrast to Bascom, Appellants' claims and Specification are
directed to a system and method for distributing advertisements to a mobile
device. Spec. ,r,r 2, 14. According to Appellants' claims, "the advertisement
may be selected [ from a set of advertisements] based on ( 1) movement data
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(i.e., a speed of the [mobile] device determined from the state of movement
[determined from comparing the movement data against a threshold], and (2)
movement context data (i.e., data indicating that the mobile device is
associated with a driver or a passenger of a vehicle). Spec. ,r,r 16-17 ( claims
1 and 18). There is no evidence in the record to support the contention that
Appellant's claimed system is provided with any non-conventional and non-
generic arrangement of known, conventional components.
As further recognized by the PTO § 101 Memorandum, an "inventive
concept" under Alice step 2 can also be evaluated based on whether an
additional element or combination of elements:
( 1) add a specific limitation or combination of limitations that
are not well-understood, routine, conventional activity in
the field, which is indicative that an inventive concept may
be present (see MPEP § 2106.05(d)); or
(2) simply appends well-understood, routine, conventional
activities previously known to the industry, specified at a
high level of generality, to the judicial exception, which is
indicative that an inventive concept may not be present.
See PTO§ 101 Memorandum, 84 Fed. Reg. at 56.
However, Appellants' invention only uses generic computer
components ( e.g., server and microprocessor), shown, for example, in Figure
1, as a tool to select and distribute an advertisement to a mobile device. The
use of generic computer components does not alone transform an otherwise
abstract idea into patent-eligible subject matter. As our reviewing court has
observed, "after Alice, there can remain no doubt: recitation of generic
computer limitations does not make an otherwise ineligible claim patent-
eligible." DDR, 773 F.3d at 1256 (citing Alice, 573 U.S. at 223). As such,
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we find no element or combination of elements recited in Appellant's claims
1 and 18 that contains any "inventive concept" or adds anything
"significantly more" to transform the abstract concept into a patent-eligible
application. Alice, 573 U.S. at 221-22. Moreover, Appellants have not
shown any specific limitation in claims 1 and 18 beyond the judicial
exception that is not "well-understood, routine, and conventional" in the
field. See MPEP § 2106.05(d).
Lastly, with respect to Appellants' preemption argument (App. Br. 8),
we note the McRO court explicitly "recognized that 'the absence of complete
preemption does not demonstrate patent eligibility."' See McRO, 837 F.3d
at 1315 (quotingAriosaDiagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371,
1379 (Fed. Cir. 2015)). "Where a patent's claims are deemed only to
disclose patent ineligible subject matter" under the Alice/Mayo framework,
"preemption concerns are fully addressed and made moot." Ariosa, 788
F.3d at 1379.
Because Appellant's claims 1 and 18 are directed to a patent-ineligible
abstract concept and do not recite something "significantly more" under the
second prong of the Alice analysis, we sustain the Examiner's rejection of
claims 1-3, 7, 9-18, and 21-24 under 35 U.S.C. § 101.
35 U.S.C. § 103: Claims 1-3, 7, 9-18, and 21-24
In support of the § 103 rejection, the Examiner finds the combination
of Ramer, Barbera, and Smith teaches or suggests all limitations of claims 1
and 18. App. Br. 4--6.
Appellants dispute the Examiner's factual findings regarding Ramer,
Barbera, and Smith relative to each and every limitation of Appellants'
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claims 1 and 18. For example, Appellants argue neither Ramer, Barbera, nor
Smith teaches or suggests all limitations recited in claim 1 and similarly,
claim 8, including:
1) receiving, by an information processing system, movement data
and movement context data from said device, said information
processing system being separate and distinct from said device
and external to a transport mechanism associated with said
device, wherein said movement context data comprises data
indicating a type of said transport mechanism and a relation of a
user of said device to said transport mechanism;
2) determining ... from said received movement data, a state of
movement of said device;
3) determining ... from said received movement context data, that
the transport mechanism is a vehicle and whether said device is
associated with a driver of a vehicle or with a passenger
associated with said driver;
4) selecting ... an advertisement from a plurality of advertisements
based on said state of movement and said movement context
data, wherein different sets of advertisements in said plurality of
advertisements are associated with a different movement
context, and wherein said advertisement comprises a plurality of
different presentation formats, said selecting comprises:
5) if said movement context data indicates that said device 1s
associated with said driver of said vehicle then selecting a
presentation format from the plurality of different presentation
formats for the advertisement that includes an audio component,
6) if said movement context data indicates that said device is
associated with said passenger then selecting a presentation
format for the advertisement that differs from a presentation
format for another advertisement in said set of advertisements
sent to a second device associated with said driver.
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App. Br. 17-25.
In particular, Appellants argue Ramer does not teach what the
Examiner alleges as the claimed: (1) "movement data and movement
context data;" and (2) "selecting ... an advertisement from a plurality of
advertisements based on said state of movement and said movement context
data" comprising "a plurality of different presentation formats." Reply Br.
6-7 (citing Ramer 8:56-67, 9:1-24). We agree.
Obviousness is a question of law based on underlying factual
findings, In re Baxter, 678 F.3d 1357, 1361 (Fed. Cir. 2012), including what
a reference teaches, In re Beattie, 974 F.2d 1309, 1311 (Fed. Cir. 1992), and
the existence of a reason to combine references, In re Hyon, 679 F.3d 1363,
1365---66 (Fed. Cir. 2012).
Ramer teaches creating an advertisement to be presented to a mobile
communication facility ( mobile device), shown, for example, in Figure 21,
in response to a navigation request ( e.g., search query, domain name entry,
web browser action, menu selection, transaction).
Ramer' s Figure 21 shows a process for mobile dynamic advertisement
creation and placement, as reproduced below:
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N.4VIGATlON HEOl.lEST 2132
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