Ex Parte Anthony

Patent Trial and Appeal Board

May 3, 2018

14258705 (P.T.A.B. May. 3, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/258,705 04/22/2014
40334 7590
Jordan IP Law, LLC
12501 Prosperity Drive
Suite 401
Silver Spring, MD 20904
05/07/2018
FIRST NAMED INVENTOR
Kevin Edward ANTHONY
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.
8002-6017 1061
EXAMINER
SHORTER, RASHIDA R
ART UNIT PAPER NUMBER
3681
NOTIFICATION DATE DELIVERY MODE
05/07/2018 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):
info@jordaniplaw.com
admin@jordaniplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KEVIN EDWARD ANTHONY
Appeal 2017-001181
Application 14/258,705 1
Technology Center 3600
Before TERRENCE W. McMILLIN, KARA L. SZPONDOWSKI, and
SCOTT B. HOWARD, Administrative Patent Judges.
McMILLIN, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) of the final
rejection of claims 1---6, 8-11, 13-15, 17-19, 21, and 22. We have
jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM.
1 Appellant Kevin Edward Anthony is the real party in interest. App. Br. 2.
Appeal 2017-001181
Application 14/258,705
THE CLAIMED INVENTION
The present invention relates generally to "the field of advertising,"
and more particularly to "apparatuses, systems and methods for interactive
multimedia placement." Spec. ,r 2. Independent claim 1 is directed to a
system; independent claim 9 is directed to a user device; independent claim
13 is directed to a display device; and independent claim 17 is directed to a
method. App. Br. 14, 16-18.
Claim 1, reproduced below, is representative of the claimed subject
matter:
1. A system configured to provide interactive multimedia
placement, the system comprising:
a user device configured to receive an input from a user
through a user interface; and
a display configured to receive a modified media file and
a combinable media, and display the modified media file and the
combinable media,
wherein the input is processed by identifying a media file
of the user and the combinable media, modifying the media file
to produce the modified media file such that the modified media
file is configured to be integrated with the combinable media,
and transmitting the modified media file and the combinable
media,
wherein the display displays the modified media file and
the combinable media based on at least one from among a
proximity of the user device to the display, an amount paid by a
user through the user device, a quality value of a task completed
by the user through the user device, a count value of a total
number of a plurality of tasks completed by the user through the
user device, a priority of the user, and a rank of the modified
media file and the combinable media determined by other users.
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Application 14/258,705
REJECTIONS ON APPEAL
Claims 1---6, 8-11, 13-15, 17-19, 21, and 22 stand rejected under 35
U.S.C. § 101 as being directed to patent ineligible subject matter. Final Act.
2.
Claims 1--4, 6, 8, 9, 11, 13, 15, 17-19, 21, and 22 stand rejected under
35 U.S.C. § I02(a)(l) as being anticipated by Currans et al. (US
2003/0177063 Al, published Sept. 18, 2003) ("Currans"). Final Act. 5. 2
Claims 5, 10, and 14 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Currans and McDonough et al. (US 8,397,253 B2, issued
Mar. 12, 2013) ("McDonough"). Final Act. 11.
ANALYSIS
35 USC§ 101 Rejections
Alice Corp. Pty. Ltd. v. CLS Banklnt'l, 134 S. Ct. 2347 (2014)
identifies a two-step framework for determining whether claimed subject
matter is judicially-excepted from patent eligibility under 35 U.S.C. § 101.
In the first step, "[ w ]e must first determine whether the claims at issue are
directed to a patent-ineligible concept." Alice, 134 S. Ct. at 2355.
The Examiner concludes the claims are directed to "interactive media
placement," which is considered to be the abstract idea of "organizing
human activities" and "a fundamental economic practice." Final Act. 2-3.
2 The Examiner's statement of rejection states that claims 1--4, 6-9, 11-13,
and 15-22 stand rejected, but claims 7, 12, 16, and 20 have been canceled
and there are no pending rejections for them. This is a harmless error.
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Application 14/258,705
Appellant argues that the "claimed invention results in an output of a
consumable, commercial advertising medium which is tangible and in fact
not Abstract." App. Br. 8.
We are not persuaded by Appellant's arguments. Here, the claims are
directed to receiving a user input, processing the input by identifying a
media file and combinable media, modifying the media file to be integrated
with the combinable media, transmitting the modified media file and
combinable media, and displaying the modified media file and combinable
media based on at least one of a variety of considerations such as the
proximity of the user device to the display. We agree with the Examiner that
the claims are directed to the abstract ideas of "organizing human activities"
(providing interactive multimedia placement by identifying a media file and
combinable media, modifying the media file to integrate with the
combinable media, transmitting the modified media file and combinable
media, and displaying the modified media file and combinable media) and
"a fundamental economic practice" (the placement of the advertisement
based on a variety of factors including a proximity of the user device to the
display). Final Act. 3.
The claims display an advertisement along with the delivery of free
content ( displaying modified media and combinable media, manipulating
and reorganizing data to personalize advertisements). See Ultramercial, Inc.
v. Hulu, LLC, 772 F.3d 709, 715 (Fed. Cir. 2014) ("Although certain
additional limitations, such as consulting an activity log, add a degree of
particularity, the concept embodied by the majority of the limitations
describes only the abstract idea of showing an advertisement before
delivering free content."); see also Intellectual Ventures I LLC v. Capital
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Application 14/258,705
One Bank (USA), 792 F.3d 1363, 1370 (Fed. Cir. 2015) (customizing
information and presenting it to users based on particular characteristics).
Moreover, the claims involve receiving, storing, analyzing (receiving input
and processing it by identifying a media file and combinable media,
manipulating and reorganizing data to personalize advertisements), and
displaying data, activities that fit squarely within the realm of abstract ideas.
See Electric Power Group, LLC v. Alstom S.A., 830 F.3d 1350, 1353-54
(Fed. Cir. 2016) ("collecting information, analyzing it, and displaying
certain results of the collection and analysis," and "analyzing information by
steps people go through in their minds, or by mathematical algorithms,
without more, [are] essentially mental processes within the abstract-idea
category.").
Our reviewing court has found that if a method can be performed by
human thought or pen and paper (identifying and modifying media file and
combinable media and then displaying the media file and combinable media,
manipulating and reorganizing data to personalize advertisements), these
processes remain unpatentable even when automated to reduce burden to the
user. CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1375
(Fed. Cir. 2011) ("That purely mental processes can be unpatentable, even
when performed by a computer, was precisely the holding of the Supreme
Court in Gottschalkv. Benson, [409 U.S. 63 (1972)]."). Therefore,
Appellant has not adequately shown the claims are not directed to an
abstract idea.
In the second step of Alice, 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
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application." Alice, 134 S. Ct. at 2355 (quoting Mayo Collaborative
Services v. Prometheus Laboratories, Inc., 132 S. Ct. 1289, 1297-1298
(2012)). In other words, the second step is to "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."' Id. (quoting Mayo, 132 S. Ct. at 1294).
Appellant argues the claimed elements add significantly more to the
alleged abstract idea. See App. Br. 8-9. Specifically, Appellant argues the
claimed invention "is necessarily rooted in digital advertising via computer
networked devices and computer network technology in order to overcome a
problem specifically arising in the realm of personalized digital
advertisement content and thus making contents more appealing and
resonating to its viewer." App. Br. 8-9. We are not persuaded by
Appellant's argument and agree with the Examiner's findings and
conclusion that "[i]mproving the personalization of digital advertisements is
not an improvement to the computer itself, but rather an improvement to the
output of the computer," and that the functioning of the computer has not
been improved nor has the processor's generation of output been improved.
Ans. 3--4. Appellant has not adequately explained how or provided
persuasive evidence to show why the claims are performed such that they
are not routine and conventional functions of a generic computer. See Spec.
,r 15 ( describing a "display"); Spec. ,r 49 ( describing a "user device" as, inter
alia, "any one of a number of modem computing devices which includes but
is not limited to personal computers, tablet computers, and smart phone
devices").
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The claims are distinguishable from those in DDR. In DDR, the
Federal Circuit found that the challenged claims were valid because they
"specif-1ied] how interactions with the Internet are manipulated to yield a
desired result-a result that overrides the routine and conventional" aspects
of the technology. DDR, 773 F.3d at 1258-59. Here, we do not discern that
these claims "stand apart," like those in DDR because they merely recite the
performance of a business practice known from the pre-Internet world
(personalizing advertising content), along with the requirement to perform it
on the Internet. See DDR, 773 F.3d at 1257. In other words, Appellant has
not demonstrated their claimed generic computer components ( e.g. user
device, display, controller, transmitter) are able in combination to peiform
functions that are not merely generic, as the claims in DDR.
The claims, when viewed as a whole, perform conventional
processing functions that courts have routinely found insignificant to
transform an abstract idea into a patent-eligible invention. As such, the
claims amount to nothing significantly more than an instruction to
implement the abstract idea on a generic computer - which is not enough to
transform an abstract idea into a patent-eligible invention. See Alice, 134 S.
Ct. at 2360.
Accordingly, we sustain the Examiner's 35 U.S.C. § 101 rejection of
claims 1-6, 8-11, 13-15, 17-19, 21, and 22.
35 USC§ 102 Rejection
Claims 1-4, 6, 8, 9, 11, 13, 15, 17-19, 21, and 22
Claim 1 recites "wherein the display displays the modified media file
and the combinable media based on at least one from among a proximity of
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the user device to the display, an amount paid by a user through the user
device, a quality value of a task completed by the user through the user
device, a count value of a total number of a plurality of tasks completed by
the user through the user device, a priority of the user, and a rank of the
modified media file and the combinable media determined by other users."
Appeal Br. 14 (Claims App.) (emphasis added).
The Examiner finds Currans describes "using the geographic
proximity of a significant image to (proximity of the user device to the
display) to determine which image is used in the combinable media," and
that this teaching of a user's relation to the image geographically describes
that the "proximity of the user to the image (display) determines which
media is displayed." Ans. 4 (citing Currans ,r,r 14, 16); see also Final Act. 5
( citing Currans ,r,r 14, 16).
Appellant contends that Currans indicates what a selected image may
be related to, but does not describe the claimed "display[ing] the modified
media file and the combinable media." App. Br. 11-12. Specifically,
Appellant argues Currans' inserting a person, building, or landmark that is
"geographically relevant" to the media does not describe "[which]
person/ submission is most relevant to the viewing audience for engagement
purposes." Reply Br. 8 (citing Currans ,r 11).
We are not persuaded by Appellant's arguments. Claim 1 does not
recite displaying media files based on"[ which] person/submission is most
relevant to the viewing audience for engagement purposes." See Reply Br. 8
( emphasis omitted). Rather, the claim recites simply displaying media files
"based on ... a proximity of the user device to the display." Appeal Br. 14
(Claims App.). Appellant does not direct us to any disclosure in Appellant's
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Application 14/258,705
Specification providing any limiting definition for a proximity of the user
device upon which the display is based. We find the scope of this limitation,
when read in light of paragraph 50 of Appellant's Specification (detailing an
example including "the user may select an image ... they would like
integrated and sent to all small displays within their proximity."),
encompasses selecting an image based on geography related to the user.
Spec. i-f 50 ( emphasis added).
As cited by the Examiner (Final Act. 5; see also Ans. 4), Currans
discloses "an image is selected (104) for the at least one individual, such as
... a geographically significant image." Currans ,r 14. Currans further
discloses "the image associated with the user may be related to the user
geographically." Currans ,r 16. In other words, Currans describes an image
is selected based on geographic significance or relation to the user
geographically. Appellant has not provided persuasive argument or
evidence that the claimed displaying media files based on proximity of the
user device to the display is not described by Curran's selecting an image
based on geographic relation to the user.
Accordingly, we sustain the 35 U.S.C. § 102 rejection of independent
claim 1, as well as the rejections of independent claims 9, 13, and 17, which
have limitations commensurate in scope with claim 1, and dependent claims
2--4, 6, 8, 11, 15, 18, 19, 21, and 22, not separately argued. See App. Br. 12.
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35 US.C. § 103 Rejection
Claims 5, 10, and 14
Appellant has provided no separate arguments towards patentability
for claims 5, 10, and 14. Therefore, the Examiner's section 103 rejection of
claims 5, 10, and 14 is sustained for similar reasons as noted supra.
DECISION
The Examiner's rejection of claims 1-6, 8-11, 13-15, 17-19, 21, and
22 under 35 U.S.C. § 101 is affirmed.
The Examiner's rejection of claims 1--4, 6, 8, 9, 11, 13, 15, 17-19, 21,
and 22 under 35 U.S.C. § 102(a)(l) is affirmed.
The Examiner's rejection of claims 5, 10, and 14 under 35 U.S.C.
§ 103 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)(l )(iv).
AFFIRMED
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