Yruski, Andrey et al.

Patent Trials and Appeals Board

Jul 20, 2020

2018003994 (P.T.A.B. Jul. 20, 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.
11/586,958 10/25/2006 Andrey Yruski SCEA-09060 2451
15827 7590 07/20/2020
Polsinelli LLP - SIEA
3 Embarcadero Center
Suite 2400
San Francisco, CA 94111
EXAMINER
BROWN, LUIS A
ART UNIT PAPER NUMBER
3682
NOTIFICATION DATE DELIVERY MODE
07/20/2020 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):
scea_patent_docket@Playstation.Sony.com
sfpatent@polsinelli.com
uspt@polsinelli.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte ANDREY YRUSKI and MURGESH NAVAR
____________

Appeal 2018-003994
Application 11/586,958
Technology Center 3600

____________

Before PHILIP J. HOFFMANN, BRUCE T. WIEDER, and
MATTHEW S. MEYERS, Administrative Patent Judges.

WIEDER, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 seeks review under 35 U.S.C. § 134 from the Examiner’s
final rejection of claims 1, 5, 6, 8–20, 22, 24, 25, 27, 31, 33, 35, 39, 44–46,
50–52, 78, 79, 81, 82, 84, and 85.2 We have jurisdiction under
35 U.S.C. § 6(b). An oral hearing was held June 25, 2020.
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies the real party in interest as Sony
Interactive Entertainment America LLC. (Appeal Br. 3.)
2 In view of the rejection of claim 25 (see Final Action 15–16), we treat the
omission of claim 25 from the list of rejected claims appearing on page 2 of
the Final Action as inadvertent and harmless error.
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CLAIMED SUBJECT MATTER
Appellant states that the invention relates to a method “to associate
one or more media content files with one or more media ads.” (Spec. ¶ 11.)
Claims 1, 15, 20, 39, 78, and 79 are the independent claims on appeal.
Claim 1 is illustrative.3 It recites:
1. A method of associating one or more media content files
with advertisements, the method comprising:
receiving a request from a client device for one or more
media content files;
transmitting one or more advertisements and metadata
associated with each of the one or more advertisements from an
ad server, over the network, to the client device for storage,
wherein, the metadata indicates one or more locations in the one
or more media content files where the one or more
advertisements are to be inserted;
transmitting the one or more media content files after the
one or more advertisements are transmitted to the client device
for storage, wherein a processor of the client device executes
instructions stored in memory, wherein execution of the
instructions by the processor at the client device:
associates at least one of the one or more
advertisements with at least one of the one or more media
content files at the client device, and
inserts at least one of the one or more associated
advertisements into at least one of the one or more media
content files in accordance with the metadata at the client
device;
tracking the one or more advertisements in memory,
wherein tracking includes maintaining a history of one or more
previously transmitted advertisements; and
executing instructions stored in memory, wherein
execution of the instructions by a processor recalls a previously

3 Claim 1 as shown on page 24 of the Appeal Brief is not identical to claim 1
as presented to the Examiner in the amendments of October 24, 2016, and as
entered by the Examiner. We cite to claim 1 as entered.
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transmitted advertisement from the maintained history, wherein
the previously transmitted advertisement is selected by a user at
the client device and is recalled based on instructions provided
by the plug-in module, and wherein the previously transmitted
advertisement is recalled from the maintained history for viewing
and association with user feedback entered at the client device
for a predetermined period of time.

REJECTIONS
Claims 1, 5, 6, 8–20, 22, 24, 25, 27, 31, 33, 35, 39, 44–46, 50–52, 78,
79, 81, 82, 84, and 85 are rejected under 35 U.S.C. § 101 as directed to a
judicial exception without significantly more.
Claims 1, 5, 6, 8–20, 22, 24, 25, 27, 35, 39, 44–46, 50–52, 78, 79, 84,
and 85 are rejected under 35 U.S.C. § 103(a) as unpatentable over Chiu
(US 2006/0248209 A1, pub. Nov. 2, 2006), Perlmutter
(US 2005/0108095 A1, pub. May 19, 2005), and Lawton
(US 2007/0146812 A1, pub. June 28, 2007).4
Claims 31 and 33 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Chiu, Perlmutter, Lawton, and “Official Notice that it is
old and well known in the advertising arts for ad placement rules to be
updated.” (Final Action 18.)

4 In view of the rejection of claims 11, 19, 35, and 50 (see Final Action 13–
14), we treat the omission of these claims from the list of rejected claims
appearing on page 5 of the Final Action as inadvertent and harmless error.
We treat the inclusion of cancelled claims 4, 23, and 43 in the list of rejected
claims appearing on page 5 of the Final Action as inadvertent and harmless
error.
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Claims 81 and 82 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Chiu, Perlmutter, Lawton, and Khoo
(US 2004/0193488 A1, pub. Sept. 30, 2004).

ANALYSIS
The § 101 rejection
“Whoever invents or discovers any new and useful process, machine,
manufacture, or composition of matter, or any new and useful improvement
thereof, may obtain a patent therefor, subject to the conditions and
requirements of this title.” 35 U.S.C. § 101. Section 101, however,
“contains an important implicit exception: Laws of nature, natural
phenomena, and abstract ideas are not patentable.” Alice Corp. Pty. Ltd. v.
CLS Bank Int’l, 573 U.S. 208, 216 (2014) (quoting Ass’n for Molecular
Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 589 (2013)).
Alice applies a two-step framework, earlier set out in Mayo
Collaborative Services v. Prometheus Laboratories, Inc., 566 U.S. 66
(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, 573 U.S. at 217.
Under the two-step framework, it must first be determined if “the
claims at issue are directed to a patent-ineligible concept.” Id. at 218. If the
claims are determined to be directed to a patent-ineligible concept, e.g., an
abstract idea, then the second step of the framework is applied to determine
if “the elements of the claim . . . contain[] an ‘inventive concept’ sufficient
to ‘transform’ the claimed abstract idea into a patent-eligible application.”
Id. at 221 (citing Mayo, 566 U.S. at 72–73, 79).
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With regard to step one of the Alice framework, we apply a “directed
to” two prong test to: 1) evaluate whether the claim recites a judicial
exception, and 2) if the claim recites a judicial exception, evaluate whether
the claim “appl[ies], rel[ies] on, or use[s] 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 judicial
exception.” See USPTO, 2019 Revised Patent Subject Matter Eligibility
Guidance, 84 Fed. Reg. 50, 54 (Jan. 7, 2019) (hereinafter “2019 Guidance”).
Here, the Examiner determines that “[t]he claims are directed to one
or more abstract ideas” because “[t]he claims include selecting and inserting
advertisements according to rules and parameters.” (Final Action 2 (citing
Affinity Labs of Texas, LLC v. Amazon.com Inc., 838 F.3d 1266 (Fed. Cir.
2016), SmartGene, Inc. v. Advanced Biological Labs., SA, 555 F. App’x 950
(Fed. Cir. 2014)).) Affinity Labs relates to an invention directed to
customizing a user interface, which the court analogized to “tailoring of
content based on information about the user . . . an abstract idea that is as old
as providing different newspaper inserts for different neighborhoods.”
Affinity Labs of Texas, LLC, 838 F.3d at 1271. Smartgene relates to “the
mental steps of comparing new and stored information and using rules to
identify medical options.” Smartgene, Inc., 555 F. App’x at 955. Viewing
the Examiner’s determination under the rubric of the 2019 Guidance, the
Examiner determines that claim 1 is directed to the abstract idea of
“advertising, marketing or sales activities or behaviors” which are certain
methods of organizing human activity, and to the abstract idea of mental
processes. (See 2019 Guidance at 52.)
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Appellant argues that “[t]he Examiner attempts to look at the
purported ‘purpose of claim 1, while disregarding the specific limitations
explicitly recited.” (Appeal Br. 11.) Specifically, Appellant argues that
“[t]he claims are not directed to an abstract idea, but rather to on-the-fly
integration of different types of digital content.” (Id. at 12.)
Under step one of the Alice framework, we “look at the ‘focus of the
claimed advance over the prior art’ to determine if the claim’s ‘character as a
whole’ is directed to excluded subject matter.” Affinity Labs of Texas, LLC
v. DIRECTV, LLC, 838 F.3d 1253, 1257 (Fed. Cir. 2016) (quoting Elec.
Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016).
The “directed to” inquiry . . . cannot simply ask whether the
claims involve a patent-ineligible concept, because essentially
every routinely patent-eligible claim involving physical products
and actions involves a law of nature and/or natural phenomenon
. . . . Rather, 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.” Internet Patents Corp. v. Active Network, Inc.,
790 F.3d 1343, 1346 (Fed. Cir. 2015).

Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016). In
other words, the first step of the Alice framework “asks whether the focus of
the claims is on the specific asserted improvement in [the relevant
technology] or, instead, on a process that qualifies as an ‘abstract idea’ for
which computers are invoked merely as a tool.” Id. at 1335–36; see also
2019 Guidance at 54–55.
The Specification provides evidence as to what the claimed invention
is directed. In this case, the Specification discloses that the invention relates
to a method “to associate one or more media content files with one or more
media ads.” (Spec. ¶ 11.) Claim 1 provides further evidence. Claim 1
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recites “[a] method of associating one or more media content files with
advertisements, the method comprising: receiving a request,” “transmitting
a plug-in module,” “transmitting one or more advertisements,” “transmitting
the one or more media content files,” “associat[ing] at least one of the one or
more advertisements with at least one of the one or more media content
files,” “insert[ing] at least one of the one or more associated advertisements
into at least one of the one or more media content files,” “tracking the one or
more advertisements,” and “recall[ing] a previously transmitted
advertisement from the maintained history, wherein the previously
transmitted advertisement is selected by a user.”
In short, claim 1 recites steps for receiving data (a request),
transmitting data (a plug-in module), transmitting and storing data
(advertisements and media content), applying rules (associating the
transmitted data), analyzing data (tracking), and outputting data (recalling).
Receiving, transmitting, and storing data, along with applying rules to data,
and analyzing and outputting data have been determined to be directed to an
abstract idea. See, e.g., Customedia Techs., LLC v. Dish Network Corp., 951
F.3d 1359 (Fed. Cir. 2020) (automatic delivery of multimedia data products,
including advertisements, to a local receiver for processing and recording
determined to be directed to an abstract idea); see also Bridge and Post, Inc.
v. Verizon Commc’ns, Inc., 778 F. App’x 882, 886–87 (Fed. Cir. 2019)
(deciding media content to provide to a user, analyzing usage data, and
displaying data based on the analysis determined to be directed to an abstract
idea), Content Extraction and Transmission LLC v. Wells Fargo Bank, Nat’l
Ass’n, 776 F.3d 1343, 1347 (Fed. Cir. 2014) (“[T]he claims of the asserted
patents are drawn to the abstract idea of 1) collecting data, 2) recognizing
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certain data within the collected data set, and 3) storing that recognized data
in a memory.”), Accenture Glob. Servs., GmbH v. Guidewire Software, Inc.,
728 F.3d 1336, 1344 (Fed. Cir. 2013) (treating as an abstract idea generating
tasks to be performed based on rules).
Nonetheless, Appellant argues that
[b]ecause the media file may be downloaded and played at
different times, any advertising associated with such media files
at the time of download may be stale by the time the media file
is actually played. The problem being solved therefore stems
from the specific field of technology for managing digital
content. The claims therefore provide for the technical solution
of ongoing metadata-based integration, tracking, and
timing/recall control of downloadable digital content.

(Appeal Br. 12.) Appellant further argues that the invention “not only
allows for distribution of up-to-date and relevant content (e.g., new and
different advertisement files spliced into subscription content files
distributed to different client devices), but also avoids redundant storage of
different composite files that may be spliced together at each different client
device.” (Reply Br. 15.) Appellant argues that “such an arrangement leads
to improvements in efficiency and functionality.” (Id.) In other words,
Appellant argues that “claim 1 provides a technological solution to a
technological problem that is limited to a particular technological
environment.” (Appeal Br. 16.) We do not find these arguments persuasive.
Claim 1 does not recite technological implementation details or “a
particular way of programming or designing the software . . . , but instead
merely claim[s] the resulting system[].” Apple, Inc. v. Ameranth, Inc., 842
F.3d 1229, 1241 (Fed. Cir. 2016). For example, claim 1 does not recite how
the processor associates advertisements with and inserts advertisements into
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media content files, how the advertisements are tracked, or how an
advertisement is recalled for viewing and association with user feedback.
In cases involving software innovations, such as we have here, the
inquiry as to whether the claims are directed to an abstract idea “often turns
on whether the claims focus on ‘the specific asserted improvement in
computer capabilities ... or, instead, on a process that qualifies as an
“abstract idea” for which computers are invoked merely as a tool.’” Finjan,
Inc. v. Blue Coat Sys., Inc., 879 F.3d 1299, 1303 (Fed. Cir. 2018) (quoting
Enfish, LLC, 822 F.3d at 1335–36). Here, “the claimed invention merely
improves the abstract concept of delivering . . . advertising using a computer
only as a tool. This is not what the Supreme Court meant by improving the
functioning of the computer itself nor is it consistent with [Federal Circuit]
precedent applying this concept.” Customedia Techs., LLC, 951 F.3d
at 1363. We note that Appellant does not point to support in the
Specification for the attorney argument that the invention “avoids redundant
storage of different composite files that may be spliced together at each
different client device.” (Reply Br. 15.) In short, claim 1 does not recite a
specific asserted improvement to computer technology, e.g., claim 1 does
not recite an improvement to the client device, network, or processors.
Even if we consider claim 1 to be limited to a particular technological
environment, “limiting the claims to [a] particular technological
environment . . . is, without more, insufficient to transform them into patent-
eligible applications of the abstract idea at their core.” Elec. Power Grp.,
830 F.3d at 1354.
We also do not see how the recitation of a generic client device,
network, and processors (see, e.g., Spec. ¶¶ 58), even in conjunction with the
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recited functions, “ensure[s] ‘that the [claim] is more than a drafting effort
designed to monopolize the [abstract idea].’” Alice, 573 U.S. at 221 (second
and third brackets in original) (quoting Mayo, 566 U.S. at 77.)
Additionally, we do not find indication in the Specification that the
claimed invention effects a transformation or reduction of a particular article
to a different state or thing. Nor do we find anything of record that attributes
an improvement in computer technology or functionality to the claimed
invention or that otherwise indicates that the claimed invention “appl[ies],
rel[ies] on, or use[s] 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 judicial exception.” (See 2019
Guidance at 54–55.)
Appellant argues that “claim 1 does not preempt all systems and
methods of ‘associating one or more media content files with media
advertisements.’” (Appeal Br. 14.) We do not find this argument
persuasive. Preemption is not a separate test. “Where a patent’s claims are
deemed only to disclose patent ineligible subject matter under the Mayo
framework, as they are in this case, preemption concerns are fully addressed
and made moot.” Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d
1371, 1379 (Fed. Cir. 2015). In other words, “preemption may signal patent
ineligible subject matter, [but] the absence of complete preemption does not
demonstrate patent eligibility.” Id.
Appellant argues that “claim 1 amounts to significantly more than any
alleged abstract idea in the form of an improvement to performing ad
insertion and recall on a client device, wherein previously transmitted ads
are associated with feedback entered on the device for a predetermined time
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period.” (Appeal Br. 19–20.) This argument, at its core, is an argument that
the asserted advance is in the presentation of advertisements. But “[n]o
matter how much of an advance in the . . . field the claims recite, the
advance lies entirely in the realm of abstract ideas, with no plausibly alleged
innovation in the non-abstract application realm.” SAP Am., Inc. v.
InvestPic, LLC, 898 F.3d 1161, 1163 (Fed. Cir. 2018). Here, the client
device, network, and processors are invoked merely as tools.
In view of the above evidence, we determine that claim 1 is directed
to a method of selecting and inserting advertisements into media, i.e.,
“advertising, marketing or sales activities or behaviors.” (See 2019
Guidance at 52.) Therefore, in view of the 2019 Guidance, claim 1 is
directed to the abstract idea of certain methods of organizing human activity.
(See id.) This is in accord with the Examiner’s determination. (See Final
Action 2.)
Regardless, Appellant seeks to analogize claim 1 to the claims in
Finjan. (Reply Br. 14.) Appellant argues that, like the claims in Finjan,
the present claims recite, inter alia, transmission of different
kinds of digital media files associated with metadata and a plug-
in module to a client device for splicing together different
combinations of files, generating a history of such digital
distribution, and then recalling selected digital content files.
Such a digital distribution, client-based splicing, and recall
system is ‘behavior-based’ in the same way that the Finjan
claims are, since different end-user devices request and splice
together different content files and therefore have different
histories.

(Id.) We do not find this argument persuasive.
The question in Finjan was “whether [the claimed] behavior-based
virus scan . . . constitutes an improvement in computer functionality.”
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Finjan, Inc., 879 F.3d at 1304. The court noted that “[i]n Enfish, for
instance, the court determined that claims related to a database architecture
that used a new, self-referential logical table were non-abstract because they
focused 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 1304–05 (quoting Enfish, LLC, 822 F.3d at 1336). Here,
as discussed above, Appellant does not persuasively argue how the claimed
method improves computer functionality.
Appellant also seeks to analogize claim 1 to the claims in Berkheimer
v. HP Inc., 881 F.3d 1360, 1367 (Fed. Cir. 2018). (Reply Br. 15.) Appellant
argues that, like the claims in Berkheimer, “the present claims recite a
system by which different combinations of content files (e.g., subscription
content and advertising content) may be asynchronously distributed to and
spliced together into different composite files at different client devices.”
(Reply Br. 15.) We do not find this argument persuasive.
In Berkheimer, the court held claim 4 to be “directed to the abstract
idea of parsing, comparing, and storing data.” But the court also determined
that “[t]he specification describes an inventive feature that stores parsed data
in a purportedly unconventional manner” and, to the extent the
improvements disclosed in the specification “are captured in the claims,”
creates “a factual dispute regarding whether the invention describes well-
understood, routine, and conventional activities.” Berkheimer, 881 F.3d at
1366, 1369. Here, it is only the abstract idea that Appellant argues provides
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the allegedly inventive concept. And, as discussed above, none of the
limitations of claim 1 recite technological implementation details.5
Under prong one of the two prong test in the 2019 Guidance, claim 1
recites an abstract idea, i.e., certain methods of organizing human activity;
and, under prong two, additional elements in claim 1 do not “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 judicial exception.” (See id. at 54.) As such,
under step one of the Alice framework, claim 1 is directed to an abstract
idea, and we move to step two.
Step two of the Alice framework has been described “as a 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.’” Alice, 573 U.S.
at 217–18 (brackets in original) (quoting Mayo, 566 U.S. at 72–73). Under
step two, we examine, inter alia, whether a claim element or combination of
elements “[a]dds 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.” (2019 Guidance
at 56.)
Taking the claim elements separately, the functions performed in
claim 1 by the generic client device, network, and processors are purely

5 We acknowledge that some of these considerations could instead be
evaluated under step two of the Alice framework. However, for purposes of
maintaining consistent treatment within the USPTO, we evaluate them under
step one. See 2019 Guidance.

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conventional. The steps of receiving, transmitting, and storing data, along
with applying rules to data, and analyzing and outputting data are well-
understood, routine, and conventional functions previously known to the
industry. See, e.g., Elec. Power Grp., 830 F.3d at 1356 (The claims “do not
include any requirement for performing the claimed functions of gathering,
analyzing, and displaying in real time by use of anything but entirely
conventional, generic technology. The claims therefore do not state an
arguably inventive concept . . . .”); see also In re Katz Interactive Call
Processing Patent Litig., 639 F.3d 1303, 1316 (Fed. Cir. 2011) (“Absent a
possible narrower construction of the terms ‘processing,’ ‘receiving,’ and
‘storing,’ . . . those functions can be achieved by any general purpose
computer without special programming.”), Accenture Glob. Servs., 728 F.3d
at 1344.
Considered as an ordered combination, the generic computing
components of Appellant’s claimed invention add nothing that is not already
present when the limitations are considered separately. For example,
claim 1 does not, as discussed above, purport to improve the functioning of
the client device, network, and processors themselves. Nor does it effect an
improvement in any other technology or technical field. Instead, claim 1
amounts to nothing significantly more than an instruction to apply the
abstract idea using generic computer components performing routine
computer functions. That is not enough to transform an abstract idea into a
patent-eligible invention. See Alice, 573 U.S. at 225–26.
Therefore, we are not persuaded that the Examiner erred in rejecting
claim 1 under § 101. Claims 5, 6, 8–20, 22, 24, 25, 27, 31, 33, 35, 39, 44–
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46, 50–52, 78, 79, 81, 82, 84, and 85 are not separately argued and fall with
claim 1. See 37 C.F.R. § 41.37(c)(1)(iv).
The § 103(a) rejections
Obviousness is a legal conclusion involving a determination of
underlying facts.
Under § 103, the scope and content of the prior art are to be
determined; differences between the prior art and the claims at
issue are to be ascertained; and the level of ordinary skill in the
pertinent art resolved. Against this background, the obviousness
or nonobviousness of the subject matter is determined. Such
secondary considerations as commercial success, long felt but
unsolved needs, failure of others, etc., might be utilized to give
light to the circumstances surrounding the origin of the subject
matter sought to be patented.

KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007) (quoting Graham v.
John Deere Co. of Kansas City, 383 U.S. 1, 17–18 (1966)).
With regard to the scope and content of the prior art, the Examiner
finds that Perlmutter teaches
the previously transmitted advertisement recalled from the
maintained history for viewing at the client device for a
predetermined period of time (see at least Figure 7 and [0042] in
which a user can recall previously viewed ads by selecting the
previously viewed ad to view again, and in which these are taught
as stored advertisements from the ad play history that can be
recalled, and the ad is available for re-play as long as it is one of
the “top 10 most recently viewed ads,” which is technically a
“pre-determined period of time” as claimed; the Examiner notes
that this interpretation is in line with the applicant’s specification
in [0197] [sic, ¶ 194] in which ads can be recalled for a certain
period, such as ads played in the last 30 days . . . . Further, since
there is not a more specific teaching of a “predetermined period
of time” in [0197] [sic, ¶ 194] of the applicant’s specification,
but only examples, Perlmutter’s teaching of a predetermined
period that includes whatever amount of time an advertisement
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is in the “last 10 viewed ads” is considered an obvious variant of
the claimed limitation).

(Final Action 7–8.)
Appellant argues that “recall availablity [sic] of a link in Perlmutter’s
‘play history’ cannot be ‘predetermined,’ because it cannot be known that
the link will become unavailable until a time when the user’s selection
history exceeds the list length (e.g., ten links). See Perlmutter, paragraph
[0042].” (Appeal Br. 21.) Appellant further argues that “the claimed
‘predetermined period of time’ constitutes a specific measurement of time
that is wholly agnostic to and does not rely on any play activity that may or
may not occur. By contrast, Perlmutter’s ‘last 10 ads played’ relies solely on
the play activity.” (Reply Br. 16.)
Perlmutter teaches “a system and method for playing electronic
advertisements in conjunction with other content deliverable through a
communication network.” (Perlmutter, Abstract.) In relevant part,
Perlmutter teaches a window
that will display links to the advertisements which have already
played on the viewer’s computer. This is the play history link.
The play history link allows viewers to view again
advertisements which they have already seen. . . . In one
embodiment, the play history link may display links to the last
ten advertisements that have played on the viewer’s computer.

(Id., ¶ 42.)
Appellant’s Specification discloses that “ad rotation rules may specify
characteristics such as ad sequencing, ad lifetime and ad placement within
context, for example.” (Spec. ¶ 133 (emphasis added).) Appellant’s
Specification further discloses that “[i]f the ads to be spliced have not been
retrieved from the network (i.e. from the ad server) or have expired, then the
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agent must request the ads from the network before they can be spliced.”
(Id. ¶ 166 (emphasis added).) Additionally, as discussed in the Final Action,
Appellant’s Specification discloses that “[t]he system also can save a history
of offers for each consumer. . . . The consumer can find the previously
listened/viewed advertisement/offer in the past 30 days or 60 days, for
example.” (Id. ¶ 194.)
We agree with Appellant that the teaching in Perlmutter of retaining
“links to the last ten advertisements that have played on the viewer’s
computer” (Perlmutter ¶ 42) is not a teaching of retaining advertisements
“for a predetermined period of time,” as recited in claim 1. But this does not
end our inquiry.
As noted above, the Examiner also determined that “Perlmutter’s
teaching of a predetermined period that includes whatever amount of time an
advertisement is in the ‘last 10 viewed ads’ is considered an obvious variant
of the claimed limitation[].” (Final Action 8.) However, the question is not
whether the teaching in Perlmutter would have been obvious in view of
Appellant’s Specification. The question is whether the claimed limitation
would have been obvious in view of Perlmutter (in combination with the
other cited art). Thus, even if we agreed with the Examiner that the teaching
in Perlmutter is “an obvious variant of the claimed limitation” (id.), this still
would not inform us as to whether the Examiner might also determine that
the claimed limitation would have been obvious in view of Perlmutter in
combination with the other cited art.
Therefore, we will reverse the § 103(a) rejection of claim 1. The
other claims contain similar language and the Examiner relies on the above
discussed teaching of Perlmutter. Therefore, we will also reverse the
Appeal 2018-003994
Application 11/586,958

18
rejections of claims 5, 6, 8–20, 22, 24, 25, 27, 31, 33, 35, 39, 44–46, 50–52,
78, 79, 81, 82, 84, and 85.
CONCLUSION
The Examiner’s rejection of claims 1, 5, 6, 8–20, 22, 24, 25, 27, 31,
33, 35, 39, 44–46, 50–52, 78, 79, 81, 82, 84, and 85 under 35 U.S.C. § 101 is
affirmed.
The Examiner’s rejections of claims 1, 5, 6, 8–20, 22, 24, 25, 27, 31,
33, 35, 39, 44–46, 50–52, 78, 79, 81, 82, 84, and 85 under 35 U.S.C.
§ 103(a) are reversed.
Specifically:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 5, 6, 8–20,
22, 24, 25, 27,
31, 33, 35, 39,
44–46, 50–52,
78, 79, 81, 82,
84, 85
101 Eligibility 1, 5, 6, 8–
20, 22, 24,
25, 27, 31,
33, 35, 39,
44–46, 50–
52, 78, 79,
81, 82, 84,
85

1, 5, 6, 8–20,
22, 24, 25, 27,
35, 39, 44–46,
50–52, 78, 79,
84, 85
103(a) Chiu, Perlmutter,
Lawton
1, 5, 6, 8–
20, 22, 24,
25, 27, 35,
39, 44–46,
50–52, 78,
79, 84, 85
31, 33 103(a) Chiu, Perlmutter,
Lawton, Official
Notice
31, 33
81, 82 103(a) Chiu, Perlmutter,
Lawton, Khoo
81, 82
Overall Outcome 1, 5, 6, 8–
20, 22, 24,
25, 27, 31,

Appeal 2018-003994
Application 11/586,958

19
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
33, 35, 39,
44–46, 50–
52, 78, 79,
81, 82, 84,
85

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED