Ex Parte Wu et al

Patent Trial and Appeal Board

Jun 27, 2018

14549329 (P.T.A.B. Jun. 27, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/549,329 11/20/2014
45809 7590 06/29/2018
SHOOK, HARDY & BACON L.L.P.
(MICROSOFT TECHNOLOGY LICENSING, LLC)
INTELLECTUAL PROPERTY DEPARTMENT
2555 GRAND BOULEVARD
KANSAS CITY, MO 64108-2613
Gang Wu
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.
MFCP.242934 7377
EXAMINER
PADOT, TIMOTHY
ART UNIT PAPER NUMBER
3683
NOTIFICATION DATE DELIVERY MODE
06/29/2018 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):
IPDOCKET@SHB.COM
IPRCDKT@SHB.COM
usdocket@microsoft.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GANG WU and TCHA VDAR DANGAL TCHEV
Appeal2016-005197 1
Application 14/549,3292
Technology Center 3600
Before JOSEPH A. FISCHETTI, JAMES A. WORTH, and
TARA L. HUTCHINGS, Administrative Patent Judges.
HUTCHINGS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's final
rejection of claims 1-20. We have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM.
1 Our Decision references Appellants' Appeal Brief ("Br.," filed August 19,
2015) and the Examiner's Answer ("Ans.," mailed February 9, 2016) and
Final Office Action ("Final Act.," mailed May 21, 2015).
2 Appellants identify Microsoft Technology Licensing, LLC, a subsidiary of
Microsoft Corporation, as the real party in interest. Br. 3.
Appeal 2016-005197
Application 14/549,329
CLAIMED INVENTION
Claims 1, 5, 9, and 13 are the independent claims on appeal. Claim 1,
reproduced below with added bracketed notations, is illustrative of the
claimed subject matter:
1. A computer-implemented method comprising:
[(a)] receiving, by a computer, a user query from a web
browser of a user device;
[(b)] determining, by the computer, a visible area of a
user interface of the web browser based on one or more of a
height of the web browser user interface, a width of the web
browser user interface, a point of origin for a comer of the web
browser user interface, a status of the web browser, or an
indication as to a visibility of the web browser user interface;
[ ( c)] determining, by the computer, a preliminary
number of media content slots based on the determined visible
area of the web browser user interface;
[ ( d)] determining, by the computer, an actual number of
media content slots available based on the preliminary number
of media content slots and at least one of: a user preference, a
history of user interaction with advertisements, or a popularity of
the user query; and
[(e)] transmitting, by the computer, to the user device a
number of media content items for display on the web browser
based on the determined actual number of media content slots
available.
REJECTIONS 3
Claims 1-20 are rejected under 35 U.S.C. § 101 as directed to non-
statutory subject matter.
3 The provisional double patenting rejection is moot in view of the
abandonment of U.S. Application No. 13/291,149.
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Claims 1, 2, 5, 6, 9, 10, 13, and 14 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Plut (US 2010/0306022 Al, pub. Dec. 2,
2010) ("Plut") and Horowitz (US 2009/0106096 Al, pub. Apr. 23, 2009).
Claims 3, 4, 7, 8, 11, 12, 15, and 16 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Plut, Horowitz, and Shahshahani
(US 2010/0030647 Al, pub. Feb. 4, 2010).
Claims 17-20 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Plut, Horowitz, RealVu®Platform: Measurement Process and
Description Methodology, Revision #4 (Sept. 2009) (hereinafter "RealVu"),
and Dykes (US 2008/0306815 Al, pub. Dec. 11, 2008).
ANALYSIS
Non-Statutory Subject Matter
Appellants argue claims 1-20 as a group for this ground of rejection.
Br. 14-36. \Ve select independent claim 1 as representative. The remaining
claims of the group stand or fall with independent claim l. 37 C.F.R.
§ 41.37(c)(l)(iv).
Under 35 U.S.C. § 101, an invention is patent-eligible if it claims a
"new and useful process, machine, manufacture, or composition of matter."
35 U.S.C. § 101. The Supreme Court, however, has long interpreted§ 101
to include an implicit exception: "[l]aws of nature, natural phenomena, and
abstract ideas" are not patentable. See, e.g., Alice Corp. Pty. Ltd. v. CLS
Banklnt'l, 134 S. Ct. 2347, 2354 (2014).
The Supreme Court, in Alice, reiterated the two-step framework
previously set forth in Mayo Collaborative Services v. Prometheus
Laboratories, Inc., 566 U.S. 66 (2012), "for distinguishing patents that claim
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laws of nature, natural phenomena, and abstract ideas from those that claim
patent-eligible applications of those concepts." Alice, 134 S. Ct. at 2355.
The first step in that analysis is to "determine whether the claims at issue are
directed to one of those patent-ineligible concepts." Id. If the claims are not
directed to a patent-ineligible concept, e.g., an abstract idea, the inquiry
ends. Otherwise, the inquiry proceeds to the second step where the elements
of the claims are considered "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. (quoting Mayo,
566 U.S. at 79, 78).
The Court acknowledged in Mayo, that "all inventions at some level
embody, use, reflect, rest upon, or apply laws of nature, natural phenomena,
or abstract ideas." Mayo, 566 U.S. at 71. Therefore, the Federal Circuit has
instructed that claims are to be considered in their entirety to determine
"whether their character as a whole is directed to excluded subject matter."
McRO, Inc. v. Bandai Namco Games Am., Inc., 837 F.3d 1299, 1312
(Fed. Cir. 2016) (quoting Internet Patents Corp. v. Active Network, Inc.,
790 F.3d 1343, 1346 (Fed. Cir. 2015)).
In rejecting the pending claims under § 101, the Examiner analyzed
the claims using the Mayo/Alice two-step framework, consistent with the
guidance set forth in the US PTO' s "2014 Interim Guidance on Patent
Subject Matter Eligibility," in effect at the time the Final Office Action was
mailed. See Final Act. 8-9. Specifically, the Examiner notified Appellants
that the claims are broadly directed to "determining a number of media
content slots available." Id. at 8. The Examiner determined that the concept
is a fundamental economic practice, i.e., an abstract idea, because
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determining media content slots available, such as determining the number
of ads or columns that can be inserted on a page of a newspaper or magazine
is ubiquitous throughout media/advertising and pre-dates computing
technology. Id. Turning to step two, the Examiner determined that the
claims do not include any claim element or a combination of elements that
amount to significantly more than the abstract idea of determining a number
of media content slots available. Id. at 8-9.
Appellants argue that the Examiner fails to analyze the entire claim
and instead makes a conclusory statement that the claims are directed to the
abstract idea of determining a number of media content slots. Br. 15.
Appellants assert that the Examiner "does not even cite actual claim
language in its conclusion that the claims are directed to an abstract idea."
Id. Yet, there is no requirement for the Examiner's formulation of an
abstract idea to copy the claim language. Instead, the Federal Circuit has
explained that "the 'directed to' inquiry applies a stage-one filter to claims,
considered in light of the specification, based on whether 'their character as
a whole is directed to excluded subject matter."' See Enfzsh, LLC v.
Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016) (citing Internet
Patents Corp., 790 F.3d at 1346).
The Examiner's determination here that the claims are directed to
"determining a number of media content slots available" is fully consistent
with the Specification, including the claim language (see, e.g., claim 1 ("A
computer-implemented method" recites a sequence of steps that results in
transmitting to the user device "a number of media content items for display
... based on the determined actual number of media content slots
available"); Spec. i-fi-1 3 (describing a problem in prior art in which
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"advertisements are not seen by a user because ... the user's web browser is
resized to allow another program window to be shown on his or her
display"), 15 ("various embodiments ... enable a number of advertisement
slots to be determined and presented"). Moreover, the Examiner's
characterization of the claimed subject matter is consistent with Appellants'
description thereof. See App. Br. 15 (charging that "[t]he subject matter of
the claims pertains to determining a number of media content slots to display
in a web browser based[,] in part[,] on the visibility of a web browser user
interface"). To the extent that Appellants would adopt a narrower
characterization, we note that an abstract idea can be expressed at various
levels of abstraction. See Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1240
(Fed. Cir. 2016). That the Examiner articulates the abstract idea at a
different level of abstraction than Appellants is an insufficient basis on this
record for finding that the claims are not directed to an abstract idea.
Appellants argue that the subject matter of the claims "does not
pertain to a long-prevalent and fundamental practice in comparison to the
abstract ideas of risk-hedging and intermediated settlement relied upon by
the Alice Court, which have been in widespread use for many centuries
throughout the world." Br. 15-16. Appellants point to limitations (b) and
( c ), as recited in claim 1, as exemplary limitations demonstrating that the
subject matter does not pertain to a long-prevalent and fundamental practice.
See id. at 16. Yet, Appellants cannot reasonably deny that determining a
number of media content slots based on a visible area, such as a number of
spaces for advertisements on a newspaper page, is a long-standing economic
practice and, therefore, an abstract idea. That the claims limit the use of the
abstract idea to a particular technological environment, i.e., a web browser
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user interface, does not make the claims any less abstract. See Bilski v.
Kappas, 561 U.S. 593, 610-11 (2010) (the prohibition against patenting an
ineligible concept, such as an abstract idea, cannot be circumvented by
limiting the use of the abstract idea to a particular technological
environment). For at least this reason, we are not persuaded that the
Examiner erred in determining that the claims are directed to an abstract
idea.
In addition, receiving data, processing the data, and transmitting
information in response, as recited in claim 1, is not meaningfully distinct
from claims involving the collection, organization, manipulation or display
of data that have been held by the Federal Circuit to be directed to abstract
ideas. See, e.g., Electric Power Grp., LLC v. Alstom, 830 F.3d 1350, 1353
(claims focused on "collecting information, analyzing it, and displaying
certain results of the collection and analysis" are directed to an abstract
idea); Intellectual Ventures I LLC v. Capital One Fin. Corp., 850 F.3d 1332,
1340 ("at their core, [the claims are] directed to the abstract idea of
collecting, displaying, and manipulating data").
Appellants argue that the claimed subject matter parallels patent-
eligible claim 1 of Example 23 of the USPTO's "July 2015 Update
Appendix 1: Examples."4 Br. 16-18. In particular, Appellants assert that
claim 1, like claim 1 of Example 23, does not recite a concept that is similar
to any abstract idea previously identified by the courts. Id. at 17. However,
we are not persuaded that claim 1 of Example 23 is analogous to claim 1 in
4 July 2015 Update Appendix 1: Examples, available at
https://www.uspto.gov/sites/default/fi1es/documents/ieg-july-2015-app 1.pdf
(hereinafter "July 2015 Examples").
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the instant application. Instead, we determine that claim 1 is more akin to
patent-ineligible claim 3 of Example 23.
For example, claim 1 of Example 23 "address[ es] a problem with
overlapping windows within a graphical user interface." July 2015
Examples 9. To solve this problem, Example 23 's claim 1 recites, in part,
"constantly monitoring the boundaries of the first window and the second
window [in a graphical user interface] to detect an overlap condition where
the second window overlaps the first window such that the textual
information in the first window is obscured from a user's view,"
"automatically relocating the textual information ... to an unobscured
portion of the first window in a second format during an coverlap condition
so that the extual information is viewable," and "automatically returning the
relocated textual information ... to the first format within the first window
when the overlap condition no longer exists." Id. at 8. In this way, Example
23 's claim 1 is not directed to a judicial exception, but rather to addressing a
problem with overlapping windows within a graphical user interface. Id. at
9. The claimed solution there is "necessarily rooted in computer technology
to overcome a problem specifically arising in graphical user interfaces." Id.
Example 23 's claim 3, on the other hand, recites a computer-
implemented method of resizing textual information within a window
displayed in a graphical user interface comprising: generating first data for
describing the area of a first graphical element; generating second data for
describing the area of a second graphical element containing textual
information; and calculating, by the computer, a scaling factor. Id. at 8.
Claim 3 is "directed to a series of steps for calculating a scaling factor," i.e.,
a mathematical algorithm, which is an abstract idea. Id. at 10. A computer
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in a graphical user interface environment implements the mathematical
algorithm Id. at 8, 11. But limiting the use of the abstract idea to a
particular technological environment, is not significantly more. Id. (citing
Parker v. Flook, 437 U.S. 584 (1978)). The USPTO explains that claim 3 of
Example 23 "may improve computer technology" but it provides no
meaningful limitations to realize such improvement and confer patent-
eligibility. Id.
Similar to the situation in claim 3 of Example 23, Appellants' claim 1
recites a sequence of steps that results in a calculation (i.e., determining an
actual number of media content slots). The result of the calculation is used
to transmit a number of media content items to the user device. Like claim
3, the invention is implemented in a graphical user interface environment by
a computer, but does not otherwise recite meaningful limitations to amount
to significantly more than the abstract idea. Appellants contend that
transmitting the media content items based on the actual number of media
content slots, as recited in claim 1, and similarly recited in claims 5, 9, and
13, "improves the ability of the user device to display information and
interact with the user." Br. 22 (pointing out that the actual number of media
slots available is determined based on a preliminary number of media
content slots and "'at least one of: a user preference, a history of user
interaction with advertisements, or a popularity of the user query"'). But
unlike the situation in claim 1 of Example 23, the improvement identified by
Appellants is not a technological improvement to a graphical user interface
and does not address a problem particular to graphical user interfaces that is
rooted in computer technology. Instead, the identified improvement relates
to a process that is itself an abstract idea. See, e.g., Intellectual Ventures I,
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850 F.3d at 1340 (identifying the abstract idea of collecting, displaying, and
manipulating data).
Turning to the second step of the Mayo/Alice framework, Appellants
assert that the claims amount to significantly more than the abstract idea,
because the claims would not pre-empt others from using the abstract idea.
Br. 22-23. Appellants' argument is not persuasive. There is no dispute that
the Supreme Court has described "the concern that drives [the exclusion of
abstract ideas from patent eligible subject matter] as one of pre-emption."
Alice, 134 S. Ct. at 2354. But characterizing preemption as a driving
concern for patent eligibility is not the same as characterizing preemption as
the sole test for patent eligibility. "The Supreme Court has made clear that
the principle of preemption is the basis for the judicial exceptions to
patentability" and "[ fJor this reason, questions on preemption are inherent in
and resolved by the§ 101 analysis." Ariosa Diagnostics, Inc. v. Sequenom,
Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015) (citing Alice, 134 S. Ct. at 2354).
"[P]reemption may signal patent ineligible subject matter, [but] the absence
of complete preemption does not demonstrate patent eligibility." Id.
Appellants argue that the claims are analogous to the claims in DDR
Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014), because
they solve a technological problem that specifically arises in the realm of
computers. Br. 23-25. Specifically, Appellants contend that "Internet
publication poses problems specifically arising in the realm of computer
networks and enabling control or use of a person's [I]nternet metadata and
tailoring their interactions with the [I]nternet is a solution necessarily rooted
in computer technology." Id. at 24. Yet, leveraging a person's metadata to
tailor Internet interactions serves a conventional business purpose:
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improved targeted content. Such a problem is not a problem that specifically
arises in the realm of computers. Nor is it a solution to a challenge
particular to computer networks, or a solution necessarily rooted in computer
technology. Instead, it describes the use of technology to serve a
conventional business purpose. Here, Appellants do not persuade us that the
claims effect any change comparable to the change to the routine,
conventional functioning of Internet hyperlink protocol that the court
recognized in DDR Holdings. See DDR Holdings, 773 F.3d at 1257.
In view of the foregoing, we sustain the Examiner's rejection under 35
U.S.C. § 101 of claim 1 and claims 2-20, which fall with claim 1.
Obviousness
Independent Claims 1, 5, 9, and 13, and Dependent Claims 2, 6, 10, and 14
We are persuaded by Appellants' argument that the Examiner erred in
rejecting independent claims 1, 5, 9, and 13 under 35 U.S.C.
§ 103(a) because Plut does not disclose or suggest "determining, by the
computer, a preliminary number of media content slots based on the
determined visible area of the web browser user interface," as recited in
claim 1, and similarly recited in claims 5, 9, and 13. Br. 32. The Examiner
relies on Plut for the argued limitation. Final. Act. 11 (citing Plut i-fi-1 42--43,
Figs. 2-3); see also Ans. 11-12(citing Plut i-fi-142--43, Figs. 2-3).
With reference to Figure 3, Plut describes a methodology for
rendering advertisement content. Plut i1 41. The process involves receiving
search query information (step 302), and analyzing the received query to
establish criteria (e.g., a topic or content) related to the user or the user's
current activity (step 304). Id. i142. The established criteria is used to
retrieve relevant advertisements (step 306). Id. At step 308, a determination
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is made based on applicable rules whether additional advertisements are to
be retrieved. Id. i-f 43.
The Examiner takes the position that determining whether additional
advertisements are to be made "in accordance with applicable rules," as
described by Plut, teaches determining a preliminary number of media
content slots based on the determined visible area of the web browser user
interface. Ans. 12 (citing Plut i-f 43). Yet, that Plut teaches leveraging
"applicable rules" to determine whether additional advertisements are to be
retrieved fails to teach or suggest the claimed step of determining. We do
not find any indication in the cited portion that Plut teaches determining a
preliminary number of media content slots, much less that the determination
is based on the determined visible area of the web browser user interface.
In view of the foregoing, we do not sustain the Examiner's rejection
of independent claims 1, 5, 9, and 13, and dependent claims 2, 6, 10, and 14
under 35 U.S.C. § 103(a).
Dependent Claims 3, 4, 7, 8, 11, 12, and 15-20
Claims 3, 4, 7, 8, 11, 12, and 15-20 each depend from one of
independent claims 1, 5, 9, and 13. The rejections of these dependent claims
do not cure the deficiency in the Examiner's rejection of independent claims
1, 5, 9, and 13. Therefore, we do not sustain the Examiner's rejections of
claims 3, 4, 7, 8, 11, 12, and 15-20 under 35 U.S.C. § 103(a) for the same
reasons set forth above with respect to the independent claims.
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DECISION
The Examiner's rejection of claims 1-20 under 35 U.S.C. § 101 is
affirmed.
The Examiner's rejections of claims 1-20 under 35 U.S.C. § 103(a)
are reversed.
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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