Ex Parte Wu et al

Patent Trial and Appeal Board

Mar 13, 2018

12645344 (P.T.A.B. Mar. 13, 2018)

United States Patent and Trademark Office
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
12/645,344 12/22/2009 Wang Wu 814194-US-NP 8049
59978 7590 03/15/2018
Chiesa Shahinian & Giantomasi PC (NOKIA)
Attn: Jeffrey M. Weinick
One Boland Drive
West Orange, NJ 07052
EXAMINER
NETZLOFF, ERIC R
ART UNIT PAPER NUMBER
3688
NOTIFICATION DATE DELIVERY MODE
03/15/2018 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):
patent @ csglaw. com
ipsnarocp @ nokia. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte WANG WU, DOROTHY TSE,
MICHAEL GASSEWITZ, and SITAO YANG
Appeal 2016-001981
Application 12/645,3441
Technology Center 3600
Before HUBERT C. LORIN, BART A. GERSTENBLITH, and
ROBERT J. SILVERMAN, Administrative Patent Judges.
SILVERMAN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’
decision rejecting claims 1—9 and 12—20. We have jurisdiction under 35
U.S.C. § 6(b).
We AFFIRM.
1 The Appellants identify Alcatel-Lucent USA Inc. as the real party in
interest. Appeal Br. 1.
Appeal 2016-001981
Application 12/645,344
ILLUSTRATIVE CLAIM
1. An online advertising system comprising:
a computer readable memory for storing instructions; and
a processing unit for executing the instructions stored in
the computer readable memory, when executed by the
processing unit, the instructions configuring the processing unit
and the computer readable memory to provide:
a keyword generation unit for:
receiving an advertisement request,
requesting and receiving a category profile
in response to the advertisement request,
selecting a category based on scores
associated with categories in a classification
hierarchy of the received category profile, the
scores indicating a user's interest in a respective
category, and
generating one or more keywords for the
selected category, the generated one or more
keywords for use in selecting one or more
candidate advertisement messages from a plurality
of advertisement messages, each of the one or
more candidate advertisement messages
comprising a text advertisement associated with at
least one of the generated one or more keywords;
an advertisement selection unit for selecting one
advertisement message from the one or more candidate
advertisement messages based upon one or more characteristics
associated with each of the one or more candidate
advertisement messages; and
a creative advertisement assembly unit for generating an
advertisement image based on the text advertisement of the
selected one advertisement message, wherein the generated
advertisement image is sent to a content requester in response
to the advertisement request for display in network based
content.
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Application 12/645,344
REJECTIONS
I. Claims 1—9 and 12—20 are rejected under 35 U.S.C. § 101 as
ineligible subject matter.
II. Claims 1—4, 6, 12, and 14—16 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Haveliwala et al. (US 2010/0293057 Al, pub.
Nov. 18, 2010, hereafter “Haveliwala”) and Atherton et al. (US
2008/0004956 Al, pub. Jan. 3, 2008, hereafter “Atherton”).
III. Claims 5, 7—9, 13, and 17—20 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Haveliwala, Atherton, and Chan et al. (US
2007/0027850 Al, pub. Feb. 1, 2007, hereafter “Chan”).
FINDINGS OF FACT
The findings of fact relied upon, which are supported by a
preponderance of the evidence, appear in the following Analysis.
ANALYSIS
Subject-Matter Eligibility
Applying the first step of the methodology delineated in Alice Corp.
Pty. Ltd. v. CLS Bank International, 134 S. Ct. 2347, 2355 (2014), the
rejection states that claims are directed to an abstract idea characterized
variously as: “advertising based on scores associated to categories and
keywords in the category that are of interest to a user then selecting
advertisements based on one or more characteristics” (Final Action 3);
“targeted advertising” (z'<2.); using “category scores associated to user
interests ... to generate keywords and select advertisements” {id. at 4); and
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Application 12/645,344
“determining image/text combinations that best correlate to a user’s interest”
(Answer 23).
Under the second Alice step, the Examiner determines that the
claimed features do not involve significantly more than the abstract idea,
because the claimed features merely automate steps for performing the
abstract idea. Final Action 3.
Disputing the rejection, as to the first step of the Alice analysis, the
Appellants state that claim 1 is not directed to an abstract idea (see Appeal
Br. 5, 6), but provide no argument or explanation to support this position.
However, the Examiner’s determination of abstractness aligns with earlier
court decisions. See Amdocs (Israel) Ltd. v. Openet Telecom, Inc., 841 F.3d
1288, 1294 (Fed. Cir. 2016) (a “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.”)
Indeed, courts have regarded targeted advertising, in various forms, as an
abstract idea. See Affinity Labs of Tex., LLC v. Amazon.com, Inc., 838 F.3d
1266, 1271 (Fed. Cir. 2016) (“tailoring of content based on information
about the user — such as where the user lives or what time of day the user
views the content — is an abstract idea that is as old as providing different
newspaper inserts for different neighborhoods”) (citing Intellectual Ventures
ILLCv. Capital One Bank (USA), 792 F.3d 1363, 1369 (Fed. Cir. 2015));
Ultramerical, Inc. v. Hulu, LLC, 772 F.3d 709, 713 (Fed. Cir. 2014)
(allowing a consumer to receive copyrighted media in exchange for
watching a selected advertisement was an abstract idea); Mors a v. Facebook,
Inc., 77 F. Supp. 3d 1007 (C.D. Cal. 2014), aff’d, 622 F. App’x 915 (Fed.
Cir. 2015); OpenTV, Inc. v. Netflixlnc., 76 F. Supp. 3d 886, 893 (N.D. Cal.
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Application 12/645,344
2014) (“The concept of gathering information about one’s intended market
and attempting to customize the information then provided is as old as the
saying, ‘know your audience.’”); Tuxis Techs., LLC v. Amazon.com, Inc.,
No. CV 13-1771-RGA, 2014 WL 4382446, at *5 (D. Del. Sept. 3, 2014)
(matching consumers with a given product or service “has been practiced as
long as markets have been in operation.”) Therefore, we are not persuaded
that the Examiner erred in determining that claim 1 is directed to an abstract
idea.
Turning to the second Alice step, the Appellants liken claim 1 to the
claims in DDR Holdings, LLC v. Hotels.com, LP, 773 F.3d 1245 (Fed. Cir.
2014), arguing that the claim addresses the computer-realm problem of
delivering advertising images based on keyword-based search engine
advertisement requests. Appeal Br. 5—6 (citing Spec. 1 5). Yet, the
Appellants do not identify anything in this operation that overrides the
normal operation of computer technology, as in DDR Holdings, 773 F.3d at
1258.
Additionally, the Appellants argue that the claim elements involve
“significantly more” than the identified abstract idea. See Appeal Br. 7—8,
Reply Br. 2—3. It is unclear, however, which features are intended as
fulfilling this end, and why they might do so, because the Appellants refer to
the features of generating keywords, selecting a candidate advertisement,
and generating an advertisement image as both features of the abstract idea
itself and features that might amount to something more than the abstract
idea. See Appeal Br. 7—8; Reply Br. 2—3. Insofar as the Appellants focus on
“generating an advertisement image based on the text advertisement,” as
being significantly more than the abstract idea (Appeal Br. 7), this is part of
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Application 12/645,344
the identified abstract idea. See Answer 23 (“The problem is face[d] by all
marketers when determining image/text combinations that best correlate to a
user’s interest. For example, combine text X with image Y when a user is
associated with keyword Z, which is merely an abstract idea.”) Further,
although the Appellants contend that elements of claim 1 improve the
functioning of a computer (Appeal Br. 7) or the technical field of image
generation (Reply Br. 3), there is no explanation of which claim elements (or
combination thereof) accounts for such improvements and why they amount
to significantly more than the identified abstract idea.
The Appellants’ contention that claim 1 is novel and nonobvious
(Appeal Br. 7) also does not establish patent-eligibility. Indeed, “[t]he
‘novelty’ of any element or steps in a process, or even of the process itself, is
of no relevance in determining whether the subject matter of a claim falls
within the § 101 categories of possibly patentable subject matter.” Diamond
v. Diehr, 450 U.S. 175, 188—89 (1981). “Groundbreaking, innovative, or
even brilliant discovery does not by itself satisfy the § 101 inquiry.” Ass ’n
for Molecular Pathology v. Myriad Genetics, Inc., 133 S. Ct. 2107, 2117
(2013).
Further, we are not persuaded of error in the rejection, by the
Appellants’ argument that claim 1 does not preempt all methods of targeted
advertising or all methods of generating an advertisement image. See
Appeal Br. 8. “While preemption may signal patent ineligible subject
matter, the absence of complete preemption does not demonstrate patent
eligibility.” Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371,
1379 (Fed. Cir. 2015).
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Application 12/645,344
For the foregoing reasons, we are not persuaded of error in the
rejection of claim 1 — and, for similar reasons, claims 2—9 and 12—20.
Therefore, we sustain the rejection of claims 1—9 and 12—20 under 35 U.S.C.
§101.
Obviousness
1. Claims 1—9, 12, and 13
The Appellants argue that independent claim 1 was rejected
erroneously, because Haveliwala does not teach or suggest the “keywords”
of the following claim language:
generating one or more keywords for the selected
category, the generated one or more keywords for use in
selecting one or more candidate advertisement messages from a
plurality of advertisement messages, each of the one or more
candidate advertisement messages comprising a text
advertisement associated with at least one of the generated one
or more keywords.
See Appeal Br. 9-11; Reply Br. 4—5. In particular, the Appellants argue that
Haveliwala’s labels do not teach or suggest the claimed “keywords.”
Appeal Br. 9—10. The Appellants submit that the portions of Haveliwala,
relied upon in the rejection, disclose labels that are applied to a category
map, but the labels themselves (e.g., “Art,” “Business,” “Science,”
“Environment,” shown in Haveliwala’s Figure 4A) are not “use[dj” in any
operation — thus, the labels cannot satisfy the recited “for use in selecting
one or more candidate advertisement messages from a plurality of
advertisement messages.” Appeal Br. 9—10. To generate targeted
advertisements, Haveliwala employs category identification numbers
together with a quantitative measure of each category’s degree of relevance
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Application 12/645,344
to a user’s interests — not the labels (such as are shown in Figure 4A). See
Appeal Br. 10 (citing Haveliwala 1 83). The Appellants point out that
Haveliwala’s category-based process accomplishes “matching a user’s
interests without exact term matching.” Reply Br. 5 (quoting Haveliwala
181) (emphasis in Reply Brief). Thus, the Appellants contend that “[t]he
Examiner fails to identify where in Haveliwala the labels are used ‘in
selecting one or more candidate advertisement messages.’” Id.
According to the rejection, it makes no difference whether Haveliwala
actually uses the labels to perform the selection process; Haveliwala’s
selected advertisement is “associated with” (per claim 1) the label, because
the numbers signify the labels. Answer 24. The Answer also states that
Haveliwala discloses advertisers assigning particular prices to querying user
profiles for the use of particular words or phrases, in the course of
developing an advertising campaign. Id. (citing Haveliwala 135).
The Appellants’ argument persuades us that claim 1 was rejected
erroneously. The rejection states that “the limitation only requires the text
advertisement is associated with a keyword, such as single category label
from a user profile.” Answer 24. However, claim 1 also explicitly requires
“keywords for use in selecting one or more candidate advertisement
messages.” (Emphasis added). Notwithstanding whether there may be
correlations between Haveliwala’s labels and selected advertisements, the
advertisements are not selected, based upon the textual content of the labels
themselves, as claim 1 requires of the recited “keywords.”
Atherton does not overcome the identified deficiency of Haveliwala,
in regard to claim 1. See Appeal Br. 11.
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Application 12/645,344
Accordingly, we do not sustain the rejection of independent claim 1
and its dependent claims 2—9, 12, and 13 under 35 U.S.C. § 103(a).
2. Claims 14—20
The Appellants argue that substantially the same argument addressed
above (regarding independent claim 1) also applies to independent claim 14.
See Appeal Br. 11—13; Reply Br. 5—6. The relevant language of claim 14
recites: “each of the one or more candidate advertisement messages selected
from a plurality of advertisement messages and comprising a text
advertisement associated with at least one of the retrieved one or more
keywords.” According to the Appellants, “the cited portions of Haveliwala
do not teach or suggest that the labels ... are for use in anything, let alone
for use in selecting one or more candidate advertisement messages, as
provided for in claim 14.” Appeal Br. 12.
However, in contrast to claim 1, the identified limitation of claim 14
does not recite the “use” of “keywords” to “select[ ]” the “one or more
candidate advertisement messages.” Rather, the language of claim 14
demands only that “each of the one or more candidate advertisement
messages . . . comprises] a text advertisement associated with at least one of
the retrieved one or more keywords.” (Emphasis added).
The Appellants acknowledge (in addressing claim 1) that such an
“association]” exists between Haveliwala’s labels and category
identification numbers (Reply Br. 4), but assert that this disclosure fails to
satisfy claim 1 ’s requirement of “keywords for use in selecting one or more
candidate advertisement messages.” (Emphasis added). Claim 14, however,
lacks such a feature.
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Application 12/645,344
Therefore, we are not persuaded of error in the rejection of
independent claim 14. Accordingly, we sustain the rejection of independent
claim 14, along with claims 15—20 depending therefrom, under 35 U.S.C.
§ 103(a).
DECISION
We AFFIRM the Examiner’s decision rejecting claims 1—9 and 12—20
under 35 U.S.C. § 101.
We REVERSE the Examiner’s decision rejecting claims 1—9, 12, and
13 under 35 U.S.C. § 103(a).
We AFFIRM the Examiner’s decision rejecting claims 14—20 under
35 U.S.C. § 103(a).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
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