Ex Parte Agarwal et al

Patent Trial and Appeal Board

Feb 28, 2017

11112715 (P.T.A.B. Feb. 28, 2017)

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.
11/112,715 04/22/2005 Sumit Agarwal 16113-1721001 5593
26192 7590 03/02/2017
FTSH fr RTfTTARnSON P C EXAMINER
PO BOX 1022 GATLING, STACIE D
MINNEAPOLIS, MN 55440-1022
ART UNIT PAPER NUMBER
3622
NOTIFICATION DATE DELIVERY MODE
03/02/2017 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):
PATDOCTC@fr.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SUMIT AGARWAL, BRIAN AXE,
GREGORY JOSEPH BADROS, GOKUL RAJARAM,
HUNTER WALK, and LEORA WISEMAN
Appeal 2015-0040771
Application 11/112,7152
Technology Center 3600
Before MURRIEL E. CRAWFORD, JAMES A. WORTH, and
MATTHEW S. MEYERS, Administrative Patent Judges.
WORTH, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1, 3—14, 18—20, and 22—32. We have jurisdiction under
35 U.S.C. §§ 134 and 6(b).
We AFFIRM.
1 Our decision refers to the Appellants’ Appeal Brief (“Appeal Br.,” filed
Sept. 17, 2014) and Reply Brief (“Reply Br.,” filed Feb. 24, 2015), and the
Examiner’s Final Office Action (“Final Act.,” mailed Mar. 27, 2014) and
Answer (“Ans.,” mailed Dec. 24, 2014).
2 According to Appellants, the real party in interest is Google Inc. (Appeal
Br. 1).
Appeal 2015-004077
Application 11/112,715
Introduction
Appellants’ application relates to “online advertising,” and in
particular, to “helping ad networks to help match advertisers with desired
properties” (Spec. 11).
Claims 1, 14, and 20 are the independent claims on appeal. Claim 1,
reproduced below, is illustrative of the subject matter on appeal:
1. A computer-implemented method comprising:
receiving, by an advertising network support
system including at least one server, from an advertiser,
an indication that the advertiser is interested in
advertising on a property, wherein the property is an
online property;
in response to receiving the indication that the
advertiser is interested in advertising on the property,
determining, by the at least one server, that the property
is not included in an advertising network;
based on determining that the property on which
the advertiser is interested in advertising is not included
in the advertising network, inviting an entity associated
with the property to join the advertising network by
sending an invitation informing the entity of interest in
advertising on the property;
receiving, by the at least one server, a response
from the entity associated with the property based on the
invitation;
adding, by the at least one server, the property to
the advertising network based on the response received
from the entity associated with the property; and
placing advertisements of advertisers of the
advertising network on the property.
(Appeal Br., Claims App.)
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Appeal 2015-004077
Application 11/112,715
Rejections on Appeal
The Examiner maintains, and Appellants appeal, the following
rejections:
I. Claims 1, 3—14, 18—20, and 22—32 stand rejected under
35 U.S.C. § 101 as being directed to non-statutory
subject matter.3
II. Claims 1, 3—14, 18—20, and 22—32 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over Patel (US
7,962,363 B2, iss. June 14, 2011) and Matsumoto (US
2004/0111319 Al, pub. June 10, 2004).
ANALYSIS
Rejection I (Unpatentable subject matter)
Claims 1, 3—14, 18—20, and 22—32
The Examiner determines that the claims are directed to assisting
advertisers and publishers with setting up contracts for displaying
advertisements, which is a fundamental economic practice (Ans. 2).
The Examiner further determines that “the claims do not include an
improvement to another technology or technical field, an improvement to the
functioning of the computer itself, or meaningful limitations beyond
generally linking the use of an abstract idea to a particular technological
environment” (id.). The Examiner finds that the Specification (|| 35, 47 &
Fig. 4) discloses the programming of a general purpose computer to perform
the steps of the abstract idea itself (id.).
3 This rejection is set forth in the Answer pursuant to the procedures for a
new ground of rejection.
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Appeal 2015-004077
Application 11/112,715
Appellants argue that the claimed invention does not pre-empt all
applications of the idea to which the claims are directed (Reply Br. 1—2)
(quoting A lice Corp. v. CLS Bank Inti, 573 U.S.___ , 134 S. Ct. 2347
(2014)). Appellants further argue that the Examiner merely provides
conclusory statements without identifying any particular facts in the record
in determining that the claim limitations do not add significantly more than
the abstract idea {id. at 2).
The Court in Alice emphasized the use of the two-step framework for
analysis of patentability set forth in Mayo Collaborative Services v.
Prometheus Laboratories, Inc., 132 S.Ct. 1289 (2012):
First, we determine whether the claims at issue are
directed to one of those patent-ineligible concepts. If so, we
then ask, “[w]hat else is there in the claims before us?” To
answer that question, we consider the elements of each claim
both individually and “as an ordered combination” to determine
whether the additional elements “transform the nature of the
claim” into a patent-eligible application.
Alice Corp. Pty. Ltd., 134 S.Ct. at 2355. See also USPTO 2014 Interim
Guidance on Patent Subject Matter Eligibility, 79 Fed. Reg. 74,618, 74,621
(Dec. 16, 2014).
Under step one of the Alice test, Appellants do not directly dispute the
Examiner’s determination that the claims are directed to an abstract idea, but
rather contest the rejection on other bases. We agree with the Examiner that
the claims are directed to the abstract idea of helping interested parties set up
an advertising contract, and that this is a fundamental economic idea.
Under step two of the Alice test, we agree with the Examiner that the
claim limitations of claims 1, 3—14, 18—20, and 22—32, taken individually
and as a whole, are directed to the same abstract idea of facilitating
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Appeal 2015-004077
Application 11/112,715
interested parties in setting up a contract. We are unpersuaded by
Appellants’ suggestion that the Examiner’s findings are conclusory (see
Reply Br. 2). First, it is not necessary for the Examiner to reproduce each of
the claims that are listed in the Claims Appendix. We note that exemplary
limitations include “based on determining that the property on which the
advertiser is interested in advertising is not included in the advertising
network, inviting an entity associated with the property to join the
advertising network by sending an invitation informing the entity of interest
in advertising on the property” (claim 1); “allowing advertisers that have
previously indicated an interest in advertising on the property to compete to
be placed on the property automatically once the property is added to the ad
network” (claim 3); and “wherein the indication includes at least one of an
offer per impression, an offer per selection, an offer per conversion, a
maximum offer per impression, a maximum offer per selection and a
maximum offer per conversion” (claim 4).
As such, the additional limitations relate to facilitating interaction
between advertisers and publishers, consummating a contract, and
specifying the terms of the contract. Thus, these limitations relate to the
same abstract idea.
As to the issue identified by the Federal Circuit in DDR Holdings,
LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014), i.e., whether the
invention is directed to an advance in computer technology (see Reply
Br. 1), we determine that the Examiner has correctly made factual findings
that the Specification discloses the use of a generic computer with routine
programming (Ans. 2 (citing Spec, 35, 47)).
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Appeal 2015-004077
Application 11/112,715
As to Appellants’ argument that the claims do not pre-empt all
applications of an abstract idea, this argument is not dispositive and is
addressed here by the remainder of the Alice analysis. See Ariosa
Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1377 (Fed. Cir. 2015)
(“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.”).
For these reasons, we sustain the rejection under 35 U.S.C. § 101 of
claims 1, 3—14, 18—20, and 22—32.
Rejection II (Obviousness)
Independent claim 1 and its dependent claims
We are persuaded by Appellants’ argument that the prior art cited by
the Examiner fails to disclose “in response to receiving the indication that
the advertiser is interested in advertising on the property, determining, by the
at least one server, that the property is not included in an advertising
network,” as recited in independent claim 1. The Examiner relies on Patel
(col. 4,1. 54—col. 5,1. 6, col. 6,11. 10-20, col. 19,11. 40-44 & Fig. 6, 13-14)
and states as follows:
it is obvious that when the system receives the publishers
request for enrollment to the system, that the system has
determined that the publisher’s ad space is not included in the
ad network
(Final Act. 3). The Examiner explains that:
Patel (363) does this when the system determines which offers
have been accepted or rejected by a publisher
(Ans. 3).
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Appeal 2015-004077
Application 11/112,715
We have reviewed the portions of Patel relied on by the Examiner, and
find that it is neither inherent in, nor obvious over, the cited portions of Patel
to determine whether a publisher is already in the network, in accepting or
rejecting an offer from a publisher. Rather, we find that the cited portions of
Patel, at most, disclose accepting or rejecting publishers for the future. Nor
does the Examiner rely on Matsumoto to remedy the argued deficiency in
Patel. Therefore, we do not sustain the Examiner’s rejection under § 103(a)
of independent claim 1, and its dependent claims.
Independent claims 14 and 20 and their dependent claims
Independent claims 14 and 20 contain similar language and
requirements as independent claim 1. We do not sustain the Examiner’s
rejection under § 103(a) of independent claims 14 and 20, and their
dependent claims, for similar reasons as for independent claim 1.
DECISION
The Examiner’s decision to reject claims 1, 3—14, 18—20, and 22—32
under § 101 is affirmed.
The Examiner’s decision to reject claims 1, 3—14, 18—20, and 22—32
under § 103(a) is reversed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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