Ex Parte Zhou et al

Patent Trial and Appeal Board

Jul 10, 2018

11965636 (P.T.A.B. Jul. 10, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
11/965,636 12/27/2007
71247 7590 07/12/2018
Client 170101 c/o
THOMAS HORSTEMEYER, LLP
3200 WINDY HILL RD SE
SUITE 1600E
ATLANTA, GA 30339
FIRST NAMED INVENTOR
Hanning Zhou
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.
170101-1830 3821
EXAMINER
MADAMBA, CLIFFORD B
ART UNIT PAPER NUMBER
3692
NOTIFICATION DATE DELIVERY MODE
07/12/2018 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):
uspatents@tkhr.com
docketing@thomashorstemeyer.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HANNING ZHOU, JIAN LIANG, and SHERIF M. YACOUB
Appeal2017-003145
Application 11/965,636 1
Technology Center 3600
Before BIBHU R. MOHANTY, MICHAEL W. KIM, and
BRADLEY B. BAY AT, Administrative Patent Judges.
BAY AT, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134(a) from the Final Rejection of
claims 1--41, which are all the pending claims in the application. We have
jurisdiction under 35 U.S.C. § 6(b ).
Appellants' invention relates to "[a] system and a method of
incorporating advertisements in on-demand printed content ... In response
to receiving a request from a consumer for on-demand printed content, an
advertisement is selected ... included within the requested content ... [and]
1 Appellants identify the real party in interest as "Amazon Technologies,
Inc." Appeal Br. 2 (filed April 18, 2016).
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Application 11/965,636
an on-demand printed copy of the requested content, includ[ing] the selected
advertisement, is printed." Spec., Abstract.
Claimed Subject Matter
Claims 1, 15, and 21 are the only independent claims on appeal and
recite substantially similar subject matter. See Appeal Br., Claim App.
Claim 1 is illustrative of the subject matter on appeal, and recites:
1. A method of providing printed content in response to a
request for the printed content, the method comprising:
obtaining, in at least one computing device, a request for
content;
in response to the request, obtaining, in the at least one
computing device, a digital image of a page having a fixed
format, the requested content including the page;
selecting, in the at least one computing device, an
advertisement to be included in the requested content;
embedding, in the at least one computing device, the
selected advertisement within a region of the digital image; and
generating, in the at least one computing device, an on-
demand printed copy of the requested content including a
printed copy of the digital image within which the selected
advertisement is embedded.
Appeal Br. 17, Claims App.
Rejection
Claims 1--41 stand rejected under 35 U.S.C. § 101 as being directed to
non-statutory subject matter. See Final Act. 3-11 (mailed December 2,
2015).
We AFFIRM.
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ANALYSIS
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. § 101.2 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
Bankint'l, 134 S. Ct. 2347, 2354 (2014) (internal quotation marks and
citation omitted).
The Supreme Court, in Alice, reiterated the two-step framework
previously set forth in Mayo Collaborative Services v. Prometheus
Laboratories, Incorporated, 566 U.S. 66, 82-84 (2012), "for distinguishing
patents that claim 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., to 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. 66, 79, 78).
In contesting the Examiner's rejection under 35 U.S.C. § 101,
Appellants argue claims 1--41 as a group. See Appeal Br. 5-15. We select
2 There is no dispute that the pending claims are directed to one of the
statutory categories of invention. See Final Act. 4.
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Application 11/965,636
independent claim 1 as the representative claim for this group, and, thus,
claims 2--41 stand or fall with claim 1. See 37 C.F.R. § 4I.37(c)(l)(iv).
Claim 1 recites a "method of providing printed content in response to
a request for the printed content" comprising five steps: (1) obtaining a
request for content, (2) obtaining an image of a page including the requested
content, (3) selecting an advertisement, ( 4) embedding the advertisement
within the image, and ( 5) generating a printed copy of the requested content
including the advertisement. The claim identifies the image of a page as
being in digital form, and each of steps ( 1 }-( 5) is performed in at a
"computing device," which the Specification describes as "personal
computers, mini- and/or mainframe computers, laptop computers, and the
like." Spec. 5:23-25.
In disputing the Examiner's determination under Alice step one,
Appellants argue that "the subject matter of the claims is not similar to any
of the concepts identified by the Office in Identifying Abstract Ideas that the
courts consider a patent-ineligible idea 'of itself" (Appeal Br. 8), including
the concept of"[ d]isplaying an advertisement in exchange for access to
copyrighted media" (id. at 9), held abstract in Ultramercial, Inc. v. Hulu,
LLC, 772 F.3d 709 (Fed. Cir. 2014).
Contrary to Appellants' argument, we see little character difference
between the concept of including an advertisement in requested content in
exchange for providing a printed copy of the requested content with the
advertisement, and the concept described in Ultramercial. In essence, claim
1 describes the concept of using advertising as an exchange or currency.
This concept is also similar to the concepts involving human activity relating
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to commercial practices (e.g., hedging in Bilski) that have been found by the
courts to be abstract ideas.
We also are unpersuaded by Appellants' contention that "the claims
are directed at a technological solution to problems faced by publishers
when incorporating additional content such as advertisements into on-
demand printed publications such as rare or out-of-print documents where a
traditional print run would not be cost effective" (Appeal Br. 9; see also
Reply Br. 5---6). First, claim 1 generally recites "printed content," and is not
limited to "rare or out-of-print documents." Second, even though the
Ultramercial claims were directed to a specific method of advertising and
content distribution that was previously unknown and never employed on
the Internet before (Ultramercial, 772 F.3d at 714), the court,
nevertheless, concluded that those claims were patent ineligible because
they "merely recite[d] the abstract idea of 'offering media content in
exchange for viewing an advertisement."' Id. ( citation omitted).
We also disagree with Appellants' contention that claims are directed
to a technological solution. See Reply Br. 6-8. Appellants have not offered
any evidence or technical reasoning that the computer implementation
improves the functioning of the computing device itself. There is a
fundamental difference between computer functionality improvements, on
the one hand, and uses of existing computers as tools to perform a particular
task, on the other. In Enfzsh, for example, the court noted that "[ s ]oftware
can make non-abstract improvements to computer technology just as
hardware improvements can." Enfish, LLC v. Microsoft Corp., 822 F.3d
1327, 1335 (Fed. Cir. 2016). The court put the question as being "whether
the focus of the claims is on [a] specific asserted improvement in computer
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capabilities ... or, instead, on a process that qualifies as an 'abstract idea'
for which computers are invoked merely as a tool." Id. at 1335-36. The
court found that the "plain focus of the claims" there was on "an
improvement to computer functionality itself, not on economic or other tasks
for which a computer is used in its ordinary capacity." Id. at 1336. Thus,
the question being, whether the claim as a whole "focus[ es] on a specific
means or method that improves the relevant technology" or is "directed to a
result or effect that itself is the abstract idea and merely invoke [ s] generic
processes and machinery." McRO, Inc. v. Bandai Namco Games Am. Inc.,
837 F.3d 1299, 1314 (Fed. Cir. 2016). We find the focus of the claim as
whole here on is on the latter, because the claimed computing device is
merely invoked as a tool in an advertising scheme.
Under Alice step two, Appellants contend that the claims amount to
significantly more than the abstract idea. Appeal Br. 10. In particular,
Appellants argue that "[i]f the limitations of claim 1 were merely well-
understood, routine and conventional in the field, evidence of such would
likely be provided in a prior art rejection, but no such rejection is made." Id.
at 11.
To the extent that Appellants maintain that the elements of the claim
necessarily amount to "significantly more" than the abstract idea, because
the claimed system is allegedly patentable over the prior art, Appellants
misapprehend the controlling precedent. Although the second step in the
Alice framework is termed a search for an "inventive concept," the analysis
is not an evaluation of novelty or nonobviousness, but rather, a search for
"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
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[ineligible concept] itself."' Alice, 134 S. Ct. at 2355 (alteration in original)
(quoting Mayo, 132 S. Ct. at 1294). In other words, a novel and nonobvious
claim directed to a purely abstract idea is, nonetheless, patent ineligible. See
Mayo, 132 S. Ct. at 1304 (rejecting the suggestion that Sections 102, 103,
and 112 might perform the appropriate screening function and noting that in
Mayo such an approach "would make the 'law of nature' exception ... a
dead letter"); see also Genetic Techs. Ltd. v. Merial L.L.C., 818 F.3d 1369,
1376 (Fed. Cir. 2016) ("[U]nder the Mayo/Alice framework, a claim directed
to a newly discovered law of nature (or natural phenomenon or abstract idea)
cannot rely on the novelty of that discovery for the inventive concept
necessary for patent eligibility."). Thus, an abstract idea is not transformed
into an inventive concept just because the Examiner has not found prior art
that discloses or suggests it. "Groundbreaking, innovative, or even brilliant
discovery does not by itself satisfy the§ 101 inquiry." Ass 'nfor Molecular
Pathology v. Myriad Genetics, Inc., 133 S. Ct. 2107, 2117 (2013). 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).
Further, Appellants contend:
Much like the allowable claims in DDR Holdings, the claims of
the instant application incorporate additional elements into
requested content while maintaining visual elements. For
example, claim 1 "obtain[ s] ... a digital image of a page having
a fixed format,"' "select[ s] ... an advertisement to be included
in the requested content," "embed[s] ... the selected
advertisement within a region of the digital image,"' and
ultimately "generat[ es] ... an on-demand printed copy of the
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requested content including a printed copy of the digital image
within which the selected advertisement is embedded."
Appeal Br. 12; Reply Br. 12.
We cannot agree with Appellants' contention that the claims before us
are similar to the claims held eligible in DDR Holdings, LLC v. Hotels.com,
L.P., 773 F.3d 1245 (Fed. Cir. 2014). In DDR Holdings, the Federal Circuit
determined that although the patent claims at issue involved conventional
computers and the Internet, the claims nevertheless addressed the problem of
retaining website visitors who, if adhering to the routine, conventional
functioning of the Internet hyperlink protocol, would be transported instantly
away from a host's website after "clicking" on an advertisement and
activating a hyperlink. DDR Holdings, 773 F.3d at 1257. The court
determined that those claims were directed to statutory subject matter
because they claim a solution "necessarily rooted in computer technology in
order to overcome a problem specifically arising in the realm of computer
networks." Id.
No such technological advance is evident in the claimed invention.
Unlike DDR Holdings, Appellants do not identify any problem particular to
computer networks and/or the Internet that claim 1 allegedly overcomes.
Claim 1 does not recite the Internet or any other computer network. Nothing
in the claim, understood in light of the Specification, requires anything more
than a generic computing device. See Spec. 5:23-25. "[A]fter Alice, there
can remain no doubt: recitation of generic computer limitations does not
make an otherwise ineligible claim patent-eligible." DDR Holdings, 773
F.3d at 1256 (citation omitted).
Finally, citing Bascom Global Internet Services, Inc. v. AT&T
Mobility LLC, 827 F.3d 1341 (Fed. Cir. 2016), Appellants maintain the
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claims improve an existing technological process and "allow for introducing
content in a particular region of an image of on-demand printed content such
as a content-free region or another particular region of the image." Reply
Br. 14.
We do not agree because the court did not find that the claims in
Bascom recited an inventive concept based solely on the specificity of the
claimed filtering method. Instead, the court found that the claims
represented a technical improvement to filtering content on the Internet.
More particularly, the court held that "[t]he inventive concept described and
claimed in the '606 patent is the installation of a filtering tool at a specific
location, remote from end-users, with customizable filtering features specific
to each end user." Bascom, 827 F.3d at 1350. The court explained that the
remote location of a filtering tool having customizable user-specific filtering
features provides the filtering tool both the benefits of a filter on a local
computer and the benefits of a filter on the ISP server, and is a technical
improvement over prior art ways of filtering content. Id. at 1350-51. Here,
Appellants have not demonstrated any particular arrangement in the claim as
providing an inventive concept. We do not see, and Appellants do not
adequately explain, in what way claim 1 is like the claim of Bascom in
claiming a technology-based solution.
In view of the foregoing, we are not persuaded that the Examiner
erred in concluding that claim 1 is directed to non-statutory subject matter.
Accordingly, we sustain the Examiner's rejection of claim 1 under 35 U.S.C.
§ 101, including claims 2--41, which fall with claim 1.
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DECISION
The Examiner's rejection under 35 U.S.C. § 101 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
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