Google Inc.

Patent Trials and Appeals Board

May 1, 2020

14251824 - (D) (P.T.A.B. May. 1, 2020)

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.
14/251,824 04/14/2014 Jason S. Bayer 098981-1692 2336
10575 7590 05/01/2020
FOLEY & LARDNER LLP
3000 K STREET N.W.
SUITE 600
WASHINGTON, DC 20007-5109
EXAMINER
VANDERHORST, MARIA VICTORIA
ART UNIT PAPER NUMBER
3688
NOTIFICATION DATE DELIVERY MODE
05/01/2020 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):
ipdocketing@foley.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte JASON S. BAYER, RONOJOY CHAKRABARTI,
KEVAL DESAI, MANISH P. GUPTA, JILL A. HUCHITAL,
and WILLARD V T RUSCH II
____________________

Appeal 2019-000953
Application 14/251,824
Technology Center 3600
____________________

Before ALLEN R. MacDONALD, JASON J. CHUNG, and
DAVID J.CUTITTA II, Administrative Patent Judges.

MacDONALD, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from a Final
Rejection (February 8, 2018) of claims 1–3, 5, 6, 9–12, 14, 15, and 18–20.
Appeal Br. 11. Appellant has cancelled claims 4, 7, 8, 13, 16, and 17.
Appeal Br. 24–28. We have jurisdiction under 35 U.S.C. § 6(b). Oral
arguments were heard on April 24, 2020. A transcript of that hearing will be
added to the record in due time.
We REVERSE.

1 Appellant identifies Google LLC as the real party in interest. Appeal Br. 2.
Appeal 2019-000953
Application 14/251,824

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CLAIMED SUBJECT MATTER
Claims 1 and 5 are illustrative of the claimed subject matter
(emphases, formatting, and bracketed material added):
1. A computer-implemented method of verifying video content
presentation, comprising:
[A.] receiving, by a secondary video content server having one
or more processors, from a client device, a request for video
content to be inserted to interrupt a streaming video played
at the client device, the request transmitted by the client
device responsive to executing embedded code for
generating the request in the streaming video subsequent to
initiating playing of the streaming video at the client device,
the streaming video provided to the client device by a
primary video content server;
[B.] providing, by the secondary video content server, responsive
to receiving the request, a video content item for display in
a media player executed on the client device, the media
player including an actionable object and configured with an
application programming interface (API), a triggering of
the actionable object configured to cause the media player:
(a) to skip the playing of the video content item at the
client device and
(b) to communicate with the secondary video content
server from the client device via the API an indication
of the triggering of the actionable object on the media
player,
the API accessible to the secondary video content server for
identifying interactions with the media player;
[C.] detecting, by the secondary video content server in
communication with the media player via the API of the
media player, the triggering of the actionable object to cause
the media player to skip playing of the video content item;
[D.] identifying, by the secondary video content server, based on
detecting the triggering of the actionable object via the API
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Application 14/251,824

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of the media player, a time duration corresponding to an
amount of time between a first time at which the video
content item interrupts the streaming video played at the
client device and a second time at which the triggering of the
actionable object caused the media player to skip the video
content item;
[E.] determining, by the second video content server, that the
time duration is greater than a predetermined time threshold;
and
[F.] updating, by the second video content server, a counter for
the video content item responsive to determining that the
time duration is greater than the predetermined time
threshold.
5. The computer-implemented method of claim 1, further
comprising responsive to determining that the time duration is
not less than the predetermined time duration, determining that
the video content item received a valid impression.

REJECTIONS
The Examiner rejects claims 1–3, 5, 6, 9–12, 14, 15, and 18–20 under
35 U.S.C. § 101 because “the claim[ed invention] is directed to a judicial
exception (i.e., a law of nature, a natural phenomenon, or an abstract idea)
without significantly more,” i.e., because the subject matter of the claimed
invention is patent-ineligible. Final Act. 2–8.
Our decision with regard to the § 101 rejection of claim 1 is
determinative as to the § 101 rejection of all the claims. Therefore, except
for our ultimate decision, we do not discuss further herein the § 101
rejection of claims 2, 3, 5, 6, 9–12, 14, 15, and 18–20.
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Application 14/251,824

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OPINION
We have reviewed the Examiner’s rejections in light of Appellant’s
arguments that the Examiner has erred. Appellant’s contentions we discuss
are determinative as to the rejections on appeal. Therefore, Appellant’s
other contentions are not discussed in detail herein.
A.
In January 2019, the U. S. Patent and Trademark Office (USPTO)
published revised guidance on the application of § 101. 2019 Revised Patent
Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019)
(“2019 Revised Guidance”).2 “All USPTO personnel are, as a matter of
internal agency management, expected to follow the guidance.” Id. at 51;
see also October 2019 Memorandum Update at 1.
Under that guidance of these Memoranda, we first look to whether the
claim recites:
(1) any judicial exceptions, including certain groupings of abstract
ideas (i.e., mathematical concepts, certain methods of organizing
human activity such as a fundamental economic practice, or mental
processes) (“Step 2A, Prong One”); and

2 In response to received public comments, the Office issued further
guidance on October 17, 2019, clarifying the 2019 Revised Guidance.
USPTO, October 2019 Update: Subject Matter Eligibility (the “October
2019 Update”) (available at https://www.uspto.gov/sites/default/files/
documents/peg_oct_2019_update.pdf).
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Application 14/251,824

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(2) additional elements that integrate the judicial exception into a
practical application (see MPEP § 2106.05(a)–(c), (e)–(h)) (9th ed.
Rev. 08.2017, Jan. 2018)) (“Step 2A, Prong Two”).3
2019 Revised Guidance, 84 Fed. Reg. at 52–55.
Only if a claim (1) recites a judicial exception and (2) does not
integrate that exception into a practical application, do we then look, under
Step 2B, to whether the claim:
(3) adds a specific limitation beyond the judicial exception that is not
“well-understood, routine, conventional” in the field (see MPEP
§ 2106.05(d)); or
(4) simply appends well-understood, routine, conventional activities
previously known to the industry, specified at a high level of
generality, to the judicial exception.
2019 Revised Guidance, 84 Fed. Reg. at 52–56.
B.
Appellant raises the following arguments in contending that the
Examiner erred in rejecting claim 1 as being directed to patent-ineligible
subject matter because the claim includes additional elements that integrate
the judicial exception into a practical application.

3 This evaluation is performed by (a) identifying whether there are any
additional elements recited in the claim beyond the judicial exception, and
(b) evaluating those additional elements individually and in combination to
determine whether the claim as a whole integrates the exception into a
practical application. See 2019 Revised Guidance - Section III(A)(2), 84
Fed. Reg. 54–55.
Appeal 2019-000953
Application 14/251,824

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Appellant contends the claim effects an improvement in computer
technology. See Appeal Br. 13–16 (Part I.) and (Part II. A.). Particularly,
Appellant contends:
[T]he claims in the present application are directed to an
improvement to the computer itself. In particular, Applicant’s
specification explains that aspects of the claimed technology
provide improvements and enhancements over conventional
systems that are unable to remotely verify presentation of
video content. See Specification, ¶ [0146] (“only the [media]
player can determine whether the [video content item] has been
played for certain.”). For instance, the claim features allow a
secondary video content server to verify presentation of
video content items via an API of the media player at the client
device by:
providing, by the secondary video content
server, responsive to receiving the request, a video
content item for display in a media player executed
on the client device, the media player including an
actionable object and configured with an
application programming interface (API), a
triggering of the actionable object configured to
cause the media player: (a) to skip the playing of
the video content item at the client device and (b)
to communicate with the secondary video
content server from the client device via the API
an indication of the triggering of the actionable
object on the media player, the API accessible to
the secondary video content server for identifying
interactions with the media player;
detecting, by the secondary video content
server in communication with the media player via
the API of the media player, the triggering of the
actionable object to cause the media player to skip
playing of the video content item;
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identifying, by the secondary video content
server, based on detecting the triggering of the
actionable object via the API of the media
player, a time duration corresponding to an
amount of time between a first time at which the
video content item interrupts the streaming
video played at the client device and a second
time at which the triggering of the actionable
object caused the media player to skip the video
content item;
determining, by the second video content
server, that the time duration is greater than a
predetermined time threshold; and
updating, by the second video content
server, a counter for the video content item
responsive to determining that the time duration
is greater than the predetermined time
threshold.
(Emphasis added)
Applicant submits that when properly considered, the
instant claims are “not ones in which general-purpose computer
components are added after the fact to a fundamental economic
practice or mathematical equation, but [are] directed to a
specific implementation of a solution to a problem in the
software arts.”
Appeal Br. 15–16.
C.
We agree with Appellant’s argument. Essentially, Appellant is
arguing that the Examiner’s articulated reasoning for Alice/Mayo step 1 fails
to show the particular use of an application programming interface (API) is
not an additional element that integrates the judicial exception into a
practical application.
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To provide sufficient articulated reasoning as to why a claim is
directed to an abstract idea or other patent-ineligible concept (e.g., a law of
nature), an Examiner must adequately address both (a) what the character of
the claim as a whole is directed to, and (b) whether the character of the claim
as a whole is directed to an abstract idea or a patent-ineligible concept.
Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016).
In applying step 1 of the Alice/Mayo analysis, the Examiner
determines:
“[A]n application programming interface”; “the application
programming interface accessible to the secondary video content
server for monitoring the triggering of the actionable object”,
only mentioned as API in paragraph 146; Not especial [sic]
definition is giving to the terms. Therefore the Examiner gives
the broadest reasonable interpretation to the terms. The terms
represent insignificant [extra] solution activity. They are the
venue to apply the abstract idea pointed above.
Final Act. 6.
We agree with Appellant that as to use of the API, the Examiner’s
analysis “fails to appreciate that the claims of the present application pertain
to improvements in computer functionality.” Appeal Br. 13. Step 1 of the
Alice/Mayo analysis is based on whether, considered in light of the
specification, the character of the claim as a whole is directed to excluded
subject matter. Enfish, 822 F.3d at 1335. By oversimplifying claim 1, the
Examiner fails to provide sufficient articulated reasoning (i.e., notice) to
Appellant of the Examiner’s determination of what the character of claim 1
as a whole is directed to. Such an oversimplified claim analysis, at best,
may show that the claim involves an abstract idea, but cannot show the
character of the claim as a whole is directed to an abstract idea.
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Application 14/251,824

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In claim 1, the use of the API is recited with greater specificity
(a lower level of generality) than the operations recited in the claims at issue
in Bilski4 and Alice. From a plain reading of claim 1, it is clear that this
feature of claim 1 is not recited as “insignificant extra solution activity” as
determined by the Examiner. See Final Act. 6. Rather, claim 1 includes at
least use of the API additional element not sufficiently addressed by the
Examiner.
D.
Appellant’s arguments persuade us the Examiner fails to determine
properly what the claim is directed to. The Examiner fails to provide
sufficient articulated reasoning to support a conclusion that all the specific
claim limitations that the Examiner labels as included in the abstract idea are
actually an abstract idea. Therefore, we do not sustain the rejection under
35 U.S.C. § 101 of claim 1.

CONCLUSION
The Appellant has demonstrated the Examiner erred in rejecting
claims 1–3, 5, 6, 9–12, 14, 15, and 18–20 under 35 U.S.C. § 101 as being
directed to patent-ineligible subject matter.
The Examiner’s rejection of claims 1–3, 5, 6, 9–12, 14, 15, and 18–20
under 35 U.S.C. § 101 is reversed.

4Bilski v. Kappos, 561 U.S. 593 (2010).
Appeal 2019-000953
Application 14/251,824

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DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis  Affirmed Reversed
1–3, 5, 6,
9–12, 14,
15, 18–20
101 Eligibility 1–3, 5, 6,
9–12, 14,
15, 18–20

REVERSED