Ex Parte BASHETTY et al

Patent Trial and Appeal Board

Oct 30, 2018

14682038 (P.T.A.B. Oct. 30, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/682,038 04/08/2015
30734 7590 11/01/2018
BAKER & HOSTETLER LLP
WASHINGTON SQUARE, SUITE 1100
1050 CONNECTICUT A VE. N.W.
WASHINGTON, DC 20036-5304
FIRST NAMED INVENTOR
Rajesh BASHETTY
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.
48270.21500 6364
EXAMINER
BUSCH, CHRISTOPHER CONRAD
ART UNIT PAPER NUMBER
3681
NOTIFICATION DATE DELIVERY MODE
11/01/2018 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):
eofficemonitor@bakerlaw.com
edervis@bakerlaw.com
patents@bakerlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RAJESH BASHETTY, YUNZHEN WANG,
THOMAS POTTJEGORT, and
ALFONSO CORRETT! GERBAUD0 1
Appeal2017-007639
Application 14/682,038
Technology Center 3600
Before CAROLYN D. THOMAS, JOHN R. KENNY, and
MICHAEL J. ENGLE, Administrative Patent Judges.
KENNY, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134 from a final rejection of
claims 1-5, 7-13, 15-18, and 20-23, which constitute all pending claims.
Final Act. 1. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 Appellants identify comScore, Inc. as the real party in interest. App. Br. 1.
Appeal2017-007639
Application 14/682,038
SPECIFICATION
The Specification discloses a computer-implemented method for
receiving at an analysis network information concerning video ad tracking.
Spec. ,r,r 1, 6. The disclosed method involves communications amongst a
content provider, a creative provider, and an analysis network. See, e.g., Id.
at Figs. 3, 4A. A content provider may be a website owner, content
publisher, or an advertising agency or broker that provides advertisements to
the website owner or content publisher. Id. ,r 20. A creative provider may
be a company seeking to market or sell products or services, or an
advertisement agency or broker that provides advertisements to the content
provider. Id. An analysis network may be a third party seeking to receiving
information received by content provider and the creative provider to
determine metrics associated with the viewing of the advertisements. Id.
CLAIMED INVENTION
Claim 1 is illustrative:
1. A computer-implemented method for receiving
tracking information at an analysis network, the computer-
implemented method comprising:
receiving, at the analysis network and from a creative
provider, a first link to a first video ad serving template
comprising first instructions for generating first tracking
information and a second link to a video creative;
generating, based on the first link to the first video ad
serving template, a second video ad serving template
compnsmg:
the first link to the first video ad serving template
comprising the first instructions for generating the first
tracking information and the second link to the video
creative, and
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Application 14/682,038
a third link to second instructions for generating
second tracking information, the second tracking
information being different from the first tracking
information;
forwarding, from the analysis network and to the creative
provider, a link to the second video ad serving template that is
forwarded by the creative provider to a content provider;
receiving, at the analysis network and from the content
provider, a request for the second instructions for generating the
second tracking information;
forwarding, from the analysis network and to the content
provider, the second instructions for generating the second
tracking information; and
receiving, at the analysis network and from the content
provider, the second tracking information generated by the
second instructions.
REJECTION
Claims 1-5, 7-13, 15-18, and 20-23 stand rejected under 35 U.S.C.
§ 101. Final Act. 2.
ANALYSIS
In Alice Corp v. CLS Bank International, 134 S. Ct. 2347 (2014), the
Supreme Court reiterates an analytical two-step framework previously set
forth in Mayo Collaborative Services v. Prometheus Laboratories, Inc., 566
U.S. 66, 79 (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, 134 S. Ct. at 2355. The first step in
the analysis is to "determine whether the claims at issue are directed to one
of those patent-ineligible concepts," such as an abstract idea. Id. If the
claims are directed to eligible subject matter, the inquiry ends. Thales
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Visionix Inc. v. United States, 850 F.3d 1343, 1349 (Fed. Cir. 2017); Enfzsh,
LLC v. Microsoft Corp., 822 F.3d 1327, 1339 (Fed. Cir. 2016).
If the claims are directed to a patent-ineligible concept, the second
step in the analysis is to consider the elements of the claims "individually
and 'as an ordered combination"' to determine whether there are additional
elements that "'transform the nature of the claim' into a patent-eligible
application." Alice, 134 S. Ct. at 2355 (citing Mayo, 566 U.S. at 79, 78). 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. (alteration in original) (quoting Mayo, 566
U.S. at 72-73).
In rejecting claims 1-5, 7-13, 15-18, and 20-23 under 35 U.S.C.
§ 101, the Examiner determines these claims are directed to the abstract idea
of "distributing ads and creating links to monitor and record the performance
of the ads," which is considered as (1) an idea of itself and (2) a fundamental
economic process. The Examiner also determines these claims include
limitations that are analogous to those discussed in SmartGene, Inc. v.
Advanced Biological Labs, 555 F. App'x 950 (Fed. Cir. 2014); buySAFE,
Inc. v. Google, Inc., 765 F.3d 1350 (Fed. Cir. 2014); Dealertrack, Inc. v.
Huber, 674 F.3d 1315 (Fed. Cir. 2012); and Digitech Image Tech., LLC v.
Electronics for Imaging, Inc., 758 F.3d 1344 (Fed. Cir. 2014). Final Act. 2-
3. The Examiner also determines the additional limitations in the claims do
not improve another technology or technical field, do not improve the
functioning of a computer itself, and do not move beyond a general link of
the abstract idea to a particular technological environment. Id. at 3--4. The
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Examiner further determines the claims merely amount to the application of
the abstract idea on a generic computer system, and merely are instructions
to implement the abstract idea in a particular, well-understood, routine, and
conventional technological environment. Id.
Alice Step One
Turning to the first step of the Alice inquiry, Appellants argue that the
Examiner improperly overgeneralizes or simplifies the claims, asserting that
the pending claims do not recite distributing ads. App. Br. 14; Reply Br. 1-
2. Instead, Appellants assert the claims recite the creation of a particular
type of file-a second video ad serving template-that includes two specific
types of information: a first link to the first video ad serving template and a
third link to the second instructions for generating second tracking
information. App. Br. 14; Reply Br. 3. Further, Appellants argue that,
because the second video ad serving template contains two different links for
tracking, two different networks can track the performance of an
advertisement in different ways using different instructions. App. Br. 14;
Reply Br. 3. Specifically, Appellants contend that the content provider can
request instructions for generating first tracking information and second,
different tracking information based on the reception of a single file. App.
Br. 14; Reply Br. 3. Appellants assert that by providing links and not the
instructions themselves, the second video ad serving template allows the
creative provider and the analysis network to update the instructions
themselves without creating a new video ad serving template or informing
the other party of the update, thereby improving the performance of the
network. App. Br. 14; Reply Br. 3.
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Appellants argue that because the claims create the recited second
video ad serving template, the claims are not directed to an abstract idea, but
rather to (1) an improvement in computer-related technology, like the claims
in McRO, Inc. v. Bandai Namco Games America Inc., 837 F.3d 1299 (Fed.
Cir. 2016) (App. Br. 14--15; Reply Br. 2-3) and (2) an unconventional
technological solution for a technical problem, i.e., tracking the performance
of advertisements simultaneously using two different networks working
together in a distributed manner, like the claims in Amdocs (Israel) Ltd. v.
Openet Telecom, Inc., 841 F.3d 1288 (Fed. Cir. 2016). App. Br. 15.
Appellants further argue that, under Enfzsh, the mere fact that the
claimed elements can be performed on a general purpose computer does not
mean they are directed to an abstract idea. App. Br. 16; Reply Br. 3.
Further, Appellants assert that the claims here pose no threat of preempting
all techniques of distributing ads and creating links to monitor and record the
performance of the ads and, therefore, are patent eligible. App. Br. 15. And
Appellants also contend that because the pending claims solve technological
problems, they are not directed to an abstract idea under Thales Visionix.
Reply. Br. 6.
We disagree. At the outset, we note the Examiner is required to
characterize whether a claim is directed to an abstract idea under Alice step
one. But because there is no single universal definition of an abstract idea,
the Examiner is asked "to examine earlier cases in which a similar or parallel
descriptive nature can be seen-what prior cases were about, and which way
they were decided." Amdocs, 841 F.3d at 1294 (citing Elec. Power Grp. v.
Alstom S.A., 830 F.3d 1350, 1353-54 (Fed. Cir. 2016)); accordUSPTO
Memorandum, July 2015 Update: Subject Matter Eligibility (July 30, 2015),
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https ://www. uspto. gov/ sites/ default/files/ docmnents/ieg-july-2015-
update. pdf (instructing Examiners that "a claimed concept is not identified
as an abstract idea unless it is similar to at least one concept that the courts
have identified as an abstract idea"). In this case, the Examiner did what
was required under the USPTO Memorandum, and characterized the claims
as required under Alice. Further, the identified abstract idea need not
encompass every claim limitation. Otherwise, there would be no need for
step two of the Alice inquiry. Alice, 134 S. Ct. at 2355.
Second, although the pending claims do not expressly recite
distributing ads, they recite distributing links to such ads (i.e., a second link
to a video creative in a first ad serving template). The purpose of such links
is to distribute the ads/video creatives themselves. See Spec. Figs 4A and
4B. Therefore, the Examiner's finding that the claims are directed to the
distribution of ads is not erroneous. Moreover, to the extent that we would
clarify that only links to video creatives are distributed, the alleged error by
the Examiner would be harmless. In that case, the abstract idea would be
phrased as involving the distribution of links to a video creative, which
would not substantively affect our analysis.
Third, Appellants' reliance on McRO is misplaced. The claims in
McRO recited a "specific ... improvement in computer animation" using
"unconventional rules that relate[ d] sub-sequences of phonemes, timings,
and morph weight sets." McRO, 837 F.3d at 1302---03, 1307---08, 1314--15.
In McRO, the defendants conceded that, before the claimed invention, an
animator's process was driven by subjective determinations rather than
specific, limited mathematical rules. Id. at 1314. The claimed invention in
McRO "improv[ ed] the prior art through 'the use of rules, rather than artists,
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to set the morph weights and transitions between phonemes."' Id. at 1313
( citation omitted). Here, however, what is alleged to be unconventional
about the recited template is not technological ( e.g., having a file that
includes links from two different sources with instructions), but rather
economic (i.e., having a file that contains a link from a creative provider and
a link/ram an analysis network, each with instructions/or ad tracking). As
such, the claims reciting this template are directed to an abstract idea. See
Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed. Cir. 2014) ("The
process of receiving copyrighted media, selecting an ad, offering the media
in exchange for watching the selected ad, displaying the ad, allowing the
consumer access to the media, and receiving payment from the sponsor of
the ad all describe an abstract idea, devoid of a concrete or tangible
application."); see also buySAFE, 765 F.3d at 1355; Dealertrack, 674 F.3d
at 1334; and Digitech Image Tech., 758 F.3d at 1349--1351.
Fourth, Appellants' reliance on Amdocs is misplaced. Amdocs did not
hold that the claims at issue in that case were patent eligible under step one
of the Alice test. Amdocs, 841 F.3d at 1300 ("Indeed, even if we were to
agree that claim 1 is directed to an ineligible abstract idea under step one, the
claim is eligible under step two because it contains a sufficient 'inventive
concept."'). Accordingly, we will address Appellants' arguments
concerning Amdocs in our analysis of step two below.
Fifth, Appellants' reliance on Enfish is also misplaced. Although
Enfzsh indicates that the mere ability of an invention to run on a general
purpose computer does not render the invention patent eligible, Enfish does
not hold that all inventions running on a general purpose computer are patent
eligible. Enfzsh, 822 F.3d at 1338. In Enfish, the claims were directed to an
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improved database architecture, i.e., a self-referential table - "a specific
type of data structure designed to improve the way a computer stores and
retrieves data in memory." Enfish, 822 F.3d at 1339. Such a data structure
has several distinct advantages over conventional relational databases,
including: (1) faster searching of data than would be possible with the
conventional relational model (see US 6,151,604, 1:55-59, 2:66-3:6);
(2) more effective storage of data other than structured text, such as storage
of images and unstructured text (id. at 2:16-22, 2:46-52); and (3) more
flexibility in configuring the database (id. at 2:27-29).
In Enfzsh, the Federal Circuit interpreted the "directed to" inquiry as
asking "whether the claims are directed to an improvement to computer
functionality versus being directed to an abstract idea." Enfzsh, 822 F.3d at
1335 (emphasis added). "[T]he focus of the claims is on the specific
asserted improvement in computer capabilities (i.e., the self-referential table
for a computer database)." Id. at 1335-1336. Based on the "plain focus of
the claims," the Federal Circuit reached the conclusion that Enfzsh 's claims
were directed to "a specific improvement to the way computers operate,
embodied in the self-referential table," and, as such, were more than a mere
abstract idea. Id. at 1336. As discussed above, however, here what is
alleged to be unconventional about the creation of the second video ad
serving template in the pending claims is economic, rather than
technological.
Sixth, Appellants' arguments regarding preemption are also
misplaced. Although "preemption may signal patent ineligible subject
matter, the absence of complete preemption does not demonstrate patent
eligibility." Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371,
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1379 (Fed. Cir. 2015). "Where a patent's claims are deemed only to
disclose patent ineligible subject matter" under the Alice/Mayo framework,
"preemption concerns are fully addressed and made moot." Id.
Seventh, Appellants' argument that the claims are patent eligible
under Thales Visionix because the claims solve technological problems is
not persuasive because, as discussed above, the allegedly unconventional
aspects of the claims, concern economic, rather than technological factors.
Accordingly, we agree with the Examiner that the pending claims are
directed to an abstract idea of distributing ads and creating links to monitor
and record the performance of the ads.
Alice Step Two
Turning to step two of the Alice inquiry, Appellants argue that the
claims are patent eligible because (i) the limitations reciting the second
video ad tracking template, like the claimed steps in BASCOM Global
Internet Services, Inc. v. AT&T Mobility LLC, 827 F.3d 1341 (Fed. Cir.
2016), provide an inventive concept sufficient to transform the claims into
more than the abstract idea, (ii) the claims recite a self-evident, patent
eligible ordered combination, like the claims in BASCOM, and (iii) the
claims solve problems that are unique to activities on the Internet, like the
claims in DDR Holdings, LLC v. Hotels.com, LP, 773 F.3d 1245 (Fed. Cir.
2014).
We disagree. First, as discussed above, the allegedly unconventional
aspect of the second video ad tracking template concerns economic, not
technological factors. Second, the steps identified by Appellants as a self-
evident, patent eligible ordered combination are not self-evidently patent
eligible, and Appellants have provided no persuasive reason for us to deem
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them patent eligible. Reply Br. 5-6. Third, Appellants' analogy to DDR
Holdings is unpersuasive. The claims in DDR Holdings addressed a unique
technical problem in computer technology: how to allow a user to view
something from another website while retaining control over what is
displayed to the user. DDR Holdings, 773 F.3d at 1257-1258. As discussed
above, the allegedly unconventional aspects of the pending claims concern
economic, not technological, factors.
Fourth, regarding Amdocs, the inventive concept in that case was "an
unconventional technological solution ( enhancing data in a distributed
fashion) to a technological problem (massive record flows which previously
required massive databases) ... [ where the] claim's enhancing limitation
necessarily requires that ... generic components operate in an
unconventional manner to achieve an improvement in computer
functionality." Amdocs, 841 F.3d at 1300-1301. As discussed above, the
allegedly unconventional aspects of the pending claims concern economic,
not technological, factors.
Therefore, we agree with the Examiner that the claims do not recite an
inventive concept sufficient to transform the abstract idea into a patent-
eligible application. Accordingly, we sustain the rejection.
DECISION
We affirm the rejection of claims 1-5, 7-13, 15-18, and 20-23 under
35 U.S.C. § 101.
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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)(l )(iv).
AFFIRMED
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