Douglas A. Bulleit et al.

Patent Trials and Appeals Board

Mar 9, 2020

13570420 - (D) (P.T.A.B. Mar. 9, 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.
13/570,420 08/09/2012 Douglas A. Bulleit 040162CON (9400-93CT) 2847
39072 7590 03/09/2020
AT&T Legal Department - MB
Attn: Patent Docketing
Room 2A-212
One AT&T Way
Bedminster, NJ 07921
EXAMINER
SORKOWITZ, DANIEL M
ART UNIT PAPER NUMBER
3681
NOTIFICATION DATE DELIVERY MODE
03/09/2020 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):
eOfficeActionDocs@att.com
uspto@myersbigel.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte DOUGLAS A. BULLEIT and STANLEY K. YEATTS
____________

Appeal 2018-005562
Application 13/570,420
Technology Center 3600
____________

Before HUBERT C. LORIN, ANTON W. FETTING, and
MICHAEL C. ASTORINO, Administrative Patent Judges.

ASTORINO, Administrative Patent Judge.

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–12, 14–19, and 21. We have
jurisdiction over the appeal under 35 U.S.C. § 6(b).

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. The Appellant identifies the real party in interest as
“AT&T Intellectual Property I, L.P., by transfer of ownership from AT&T
Delaware Intellectual Property, Inc., formerly known as BellSouth
Intellectual Property Corporation.” Appeal Br. 1.
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We REVERSE and enter a NEW GROUND OF REJECTION
pursuant to our authority under 37 C.F.R. § 41.50(b).
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STATEMENT OF THE CASE
Subject Matter on Appeal
Claim 1, reproduced below, with bracketed notations and indents
added, is illustrative of the claimed subject matter.
1. A network communication method comprising:
[(a)] switching from a standard quality of service Internet
connection to a higher, relative to the standard quality of
service, quality of service Internet connection, in response to
user selection of the higher quality of service Internet
connection via a persistent browser interface, at a user device,
that persists as the user device navigates the Internet to a
plurality of Web pages;
[(b)] displaying on the user device a series of links to a
plurality of sponsored Web sites of a plurality of sponsors that
subsidize the higher quality of service Internet connection in the
persistent browser interface at the user device as the user device
navigates the Internet to the plurality of Web pages and that
supercede indicia of sponsorship that are associated with the
plurality of Web pages, in response to the user selection of the
higher quality of service Internet connection at the user device,
the series of links being provided to the user device by a
proactive search engine that is configured to search the Web
independent of user key word input as the user device navigates
the Internet to the plurality of Web pages; and
[(c)] linking the user device to one of the sponsored Web
sites of one of the plurality of sponsors of the higher quality of
service Internet connection in response to user selection of a
corresponding link at the user device,
wherein a plurality of Internet connection options are
displayed in the persistent browser interface at the user device
as the user device navigates the Internet to the plurality of Web
pages, and
wherein the plurality of Internet connection options
displayed in the persistent browser interface comprises:
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a first option that selects the standard quality of
service Internet connection; and
a second option that selects the higher quality of
service Internet connection.

REJECTION
Claims 1–12, 14–19, and 21 stand rejected under 35 U.S.C. § 101 as
being directed to a judicial exception without significantly more.

ANALYSIS
Patent Eligibility
The 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed.
Reg. 50 (Jan. 7, 2019), hereinafter “2019 Revised Guidance,” supersedes the
earlier guidance that was in effect at the time the Appeal Brief was filed
(Dec. 21, 2017) and the Reply Brief was filed (May 7, 2018). Id. at 51
(“Eligibility–related guidance issued prior to the Ninth Edition, R–08.2017,
of the MPEP (published Jan. 2018) should not be relied upon.”). Therefore,
we will not analyze the sufficiency of the Examiner’s rejection against the
Office’s previous guidance. Rather, our analysis will comport with the 2019
Revised Guidance.
35 U.S.C. § 101 provides that “[w]hoever 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.”
Independent claim 1 covers a process -- i.e., a network communication
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method -- and therefore is a claim to a statutory category of patentable
subject matter identified by 35 U.S.C. § 101.2
The rejection posed by the Examiner and disputed by the Appellant is
whether claim 1 contains an important implicit exception, specifically an
abstract idea, which is not patentable. See Alice Corp. v. CLS Bank Int’l,
573 U.S. 208, 216 (2014). Alice identifies a two-step framework for
determining whether claimed subject matter is directed to an abstract idea.
Id. at 573 U.S. 217. According to Alice step one, “[w]e must first determine
whether the claims at issue are directed to a patent-ineligible concept.” Id.
at 218 (emphasis added).
The Examiner determines that claim 1 is directed to the abstract idea
of sales and marketing behavior by determining sponsors for the purpose of
generating revenue, i.e., a fundamental economic practice. See Final Act. 3,
6 (citing Spec. ¶ 28), 7; see also id. at 4 (determining the claimed steps
“describe the concept of advertising and rewards over communication
networks” (citing Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709 (Fed. Cir.
2014))). The Appellant argues that claim 1 is not directed to an abstract
idea. Appeal Br. 8. The Appellant contends:
[The] claim[] focus[es] on a specific means or method that
improves the relevant technology. Namely, a proactive search
engine that searches the Web/Internet for options for switching
to an improved Internet connection in the background (i.e., as
the user device is used to navigate to other Web pages) and
providing those options to the user by way of a persistent

2 This corresponds to Step 1 of the 2019 Revised Guidance which requires
determining whether a “claim is to a statutory category.” 2019 Revised
Guidance at 53. See also id. at 53–54 (“consider[ ] whether the claimed
subject matter falls within the four statutory categories of patentable subject
matter identified by 35 U.S.C. 101.”).
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browser interface without needing to process, parse, and act
upon user input.
Reply Br. 2. Also, the Appellant submits:
the proactive search engine may improve network performance
by searching the Web independently on behalf of the user of a
user device to determine sponsored Web sites that are
candidates for sponsoring the higher quality of service Internet
connection enjoyed by the user without the user needing to
devote processor time in the user device and the network in
performing similar searches.
Appeal Br. 8; see id. at 7 (citing Spec. ¶¶ 26, 28).
Accordingly, there is a dispute over what claim 1 is directed to: a
fundamental economic practice of sales and marketing; or an improvement
to computer functionality with regard to a proactive search engine.
We consider claim 1 as a whole giving it the broadest reasonable
construction as one of ordinary skill in the art would have interpreted it in
light of the Specification at the time of filing. Claim 1 describes “[a]
network communication method comprising:”
step (a), based on a user’s selection at a user’s device, switching from
a standard to a higher quality of service Internet connection, i.e.,
switching from a standard quality of service Internet
connection to a higher, relative to the standard quality of
service, quality of service Internet connection, in response to
user selection of the higher quality of service Internet
connection via a persistent browser interface, at a user device,
that persists as the user device navigates the Internet to a
plurality of Web pages;
step (b), based on the user’s selection, displaying on the user device a
series of links that are provided to the user device by a proactive search
engine that is configured to search the Web independent of user key word
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input as the user device navigates the Internet to a plurality of Web pages,
i.e.,
displaying on the user device a series of links to a
plurality of sponsored Web sites of a plurality of sponsors that
subsidize the higher quality of service Internet connection in the
persistent browser interface at the user device as the user device
navigates the Internet to the plurality of Web pages and that
supercede indicia of sponsorship that are associated with the
plurality of Web pages, in response to the user selection of the
higher quality of service Internet connection at the user device,
the series of links being provided to the user device by a
proactive search engine that is configured to search the Web
independent of user key word input as the user device navigates
the Internet to the plurality of Web pages; and
step (c), based on a user’s selection of a link, provided by the
proactive search engine, at the user device, linking the user device to a
sponsored website, i.e.,
linking the user device to one of the sponsored Web sites
of one of the plurality of sponsors of the higher quality of
service Internet connection in response to user selection of a
corresponding link at the user device.
Additionally, claim 1 recites two “wherein” clauses that further detail
aspects of the claimed concept, i.e.,
wherein a plurality of Internet connection options are
displayed in the persistent browser interface at the user device
as the user device navigates the Internet to the plurality of Web
pages, and
wherein the plurality of Internet connection options
displayed in the persistent browser interface comprises:
a first option that selects the standard quality of
service Internet connection; and
a second option that selects the higher quality of
service Internet connection.
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Broadly, the claimed method is directed to using a proactive search
engine for providing and displaying a series of links to a plurality of
sponsored Web sites, where the proactive search engine is configured to
search the Web independent of user key word input as the user device
navigates the Internet.
As described in the Specification, a “proactive search engine” is
distinct from a “conventional search engine.” Spec. ¶ 26; see also id. ¶ 40.
The Specification describes, “a ‘proactive search engine’ is a search engine
that repeatedly and/or continuously searches for relevant Websites, including
sponsored links or sites, as a user navigates various Websites, independent
of or in addition to, when the user enters key words in a search window of a
browser user interface,” whereas “[a] conventional search engine searches
for Web pages that include key words in response to user searches that are
entered into a search window in a browser user interface.” Id. ¶ 26; see id.
¶ 7 (“Search engines often are utilized to facilitate searching the Web. . . .
As is well known to those having skill in the art, a search engine
conventionally provides a search window in which key words can be entered
by a user. In response, a listing of Web pages is provided that contain the
search terms.”).
These passages go to the problem, the presentation of a series of links
without the invention from the user of a user device to initiate a search for
sponsored links. And, the solution to this problem is the use of a “proactive
search engine” as claimed. Accordingly, the subject matter that claim 1 is
directed to, i.e., using “a proactive search engine” to identify sponsored
links, is not a matter that falls within the enumerated groupings of abstract
ideas; that is “Mathematical concepts,” “Certain methods of organizing
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human activity,” and “Mental processes.” 2019 Revised Guidance, 84 Fed.
Reg. at 54.
In this case, it is the characterization the Appellant has put forward,
supra, which is the more accurate characterization. In our view, the claim as
a whole reflects a specific asserted improvement in technology, rooted in
computer technology, over that which was available in the prior art.
Accordingly, we find the Appellant’s arguments that the claimed subject
matter is not directed to sales and marketing but a technical improvement
persuasive, given the present record. It should be noted that we have
addressed purported specific asserted improvements in technology under
step one of the Alice framework. Additionally, we determine that there is an
integration into a practical application. See id. at 84 Fed. Reg. at 54.
Thus, we do not sustain the Examiner’s rejection of independent
claim 1 and claims 2–10 and 21, which depend therefrom.
In view of our determination that independent claims 11 and 14 are
indefinite, infra, in this case, it follows that the rejection of these claims, as
well as the claims that depend from these claims, under 35 U.S.C. § 101
must fall because it is necessarily based on a speculative assumption as to
the meaning of the claims. See also In re Steele, 305 F.2d 859, 862–63
(CCPA 1962). Thus, we do not sustain the Examiner’s rejection of
claims 11, 12, and 14–19 under this ground of rejection. It should be
understood, however, that our decision in this regard is pro forma and based
solely on the indefiniteness of the claimed subject matter set forth below.

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New Ground of Rejection
Independent claims 11 and 14 are rejected under 35 U.S.C. § 112,
second paragraph, as indefinite for failing to particularly point out and
distinctly claim the subject matter, which Appellant regards as the invention.
See In re Packard, 751 F.3d 1307, 1310–13 (Fed. Cir. 2014) (“[A] claim is
indefinite when it contains words or phrases whose meaning is unclear,” i.e.,
“ambiguous, vague, incoherent, opaque, or otherwise unclear in describing
and defining the claimed invention.”); see also Ex parte McAward, 2017 WL
3669566, at *5 (PTAB Aug. 25, 2017) (precedential) (explaining that the
USPTO considers a claim indefinite when it “contains words or phrases
whose meaning is unclear”).
Claim 11 recites “a user device” including “a display to display a
series of links . . . , the series of links being provided to the user device by a
proactive search engine that is configured to search the Web independent of
user keyword input as the user device navigates the Internet to the plurality
of Web pages.” Appeal Br., Claims App. It is unclear if the “proactive
search engine” is a feature of the claimed “user device” or a distinct device
which is part of a communication network. Therefore, the full scope (i.e.,
the metes and bounds) of claim 14 is unclear.
Additionally, we note that the Specification includes overlapping
descriptions of the structure of a “user device” and “proactive search
engine.” The Specification, at paragraph 23, describes “user devices 110
may be embodied as one or more enterprise, application, personal, pervasive
and/or embedded computer devices that may themselves be interconnected
by one or more public and/or private, wired and/or wireless local and/or
wide area networks, including the Internet.” Spec. ¶ 23; see Fig. 1. The
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Specification, at paragraph 26, describes “[proactive] search engine 150 may
be embodied as one or more enterprise, application, personal, pervasive
and/or embedded computing devices that may themselves be interconnected
by one or more public and/or private, wired and/or wireless local and/or
wide area networks, including the Internet.” Id. ¶ 26, Fig. 1 (referencing
reference number 150 as “(PROACTIVE) SEARCH ENGINE”). Although
Figure 1 depicts user device 110 and proactive search engine 150 in different
boxes, it is unclear whether user device 110 and proactive search engine 150
may be part of the same structure. Therefore, the Specification includes the
possibility that the same structure performs the functions of both the “user
device” and the “proactive search engine.”
Claim 14 is indefinite for a similar reason as claim 11. Claim 14
recites, “[a] network connection provider device” including “a computing
device to display on selected user devices, a series of links . . . , the series of
links being provided to the selected user devices by a proactive search
engine that is configured to search the Web independent of user key word
input as the selected user devices navigate the Internet to the plurality of
Web pages.” Appeal Br., Claims App. It is unclear if the “proactive search
engine” is feature of the claimed “network connection provider device,”
“computing device,” or a distinct device which is part of a communication
network. Therefore, the full scope (i.e., the metes and bounds) of claim 14 is
unclear. And, similar to the discussion above, the Specification includes
overlapping descriptions of the structure of a “network connection provider
device” and “proactive search engine.” See Spec. ¶¶ 24 (describing “[t]he
network connection provider device 130 may be a standalone server and/or
may be embodied in one or more enterprise, application, personal, pervasive
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and/or embedded computing devices that may themselves be interconnected
by one or more public and/or private, wired and/or wireless local and/or
wide area networks, including the Internet.”), 26. Therefore, the
Specification includes the possibility that the same structure performs the
functions of both the “network connection provider device” and the
“proactive search engine.”
Further, claims 12 and 15–19, which depend from either independent
claim 11 or claim 14, are indefinite due to their dependency on an indefinite
claim.

CONCLUSION
We REVERSE the Examiner’s rejection of claims 1–10 and 21 under
35 U.S.C. § 101 as being directed to a judicial exception without
significantly more.
We REVERSE pro forma the Examiner’s rejection of claims 11, 12,
and 14–19 under 35 U.S.C. § 101 as being directed to a judicial exception
without significantly more.
We enter a NEW GROUND OF REJECTION of claims 11, 12, and
14–19 under 35 U.S.C. § 112, second paragraph, as indefinite pursuant to
our authority under 37 C.F.R. § 41.50(b).
37 C.F.R. § 41.50(b) provides “[a] new ground of rejection pursuant
to this paragraph shall not be considered final for judicial review.”
37 C.F.R. § 41.50(b) also provides that the Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
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(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new Evidence relating
to the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the prosecution
will be remanded to the examiner. . . .
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same Record.
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).
In summary:
Claims
Rejected
35 U.S.C. § Basis Affirmed Reversed New
Ground
1–12, 14–
19, 21
101 Eligibility

1–12, 14–
19, 21

11, 12,
14–19
112 ¶ 2 Indefinite 11, 12, 14–
19
Overall
Outcome
1–12, 14–
19, 21
11, 12, 14–
19

REVERSED; 37 C.F.R. § 41.50(b)