Ex Parte Bigby et al

Patent Trial and Appeal Board

Aug 22, 2017

14016220 (P.T.A.B. Aug. 22, 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.
14/016,220 09/02/2013 Michael Bigby 12729/1166 (Y00171US02) 6036
56020 7590 08/22/2017
BGL/Yahoo Holdings
P.O. BOX 10395
CHICAGO, IL 60610
EXAMINER
GARTLAND, SCOTT D
ART UNIT PAPER NUMBER
3622
MAIL DATE DELIVERY MODE
08/22/2017 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte MICHAEL BIGBY, BRITTON GLASSER, ADAM TAISCH,
ANDY ATHERTON, and HARRY FUNG
____________

Appeal 2016-003726
Application 14/016,220
Technology Center 3600
____________

Before CAROLYN D. THOMAS, BRUCE R.WINSOR, and
MICHAEL ENGLE, Administrative Patent Judges.

THOMAS, Administrative Patent Judge.

DECISION ON APPEAL

Appellants seek our review under 35 U.S.C. § 134(a) of the
Examiner’s Final Rejection of claims 1–17, all the pending claims in the
present application. Claims 18–20 are withdrawn. See Spec. 10–13, Claim
Appendix. We have jurisdiction over the appeal under 35 U.S.C. § 6(b).
We AFFIRM.
The present invention relates generally to scheduling advertising. See
Abstract.
Appeal 2016-003726
Application 14/016,220

2
Claim 1 is illustrative:
1. A computer-implemented method for scheduling
advertisements comprising:
receiving a plurality of advertising contracts that are each
associated with a time interval;
determining a click through rate for each of the plurality
of advertising contracts;
determining a conversion rate for each of the plurality of
advertising contracts;
estimating, with at least one processor, a value per
impression that is based on the determined click through rate and the
determined conversion rate multiplied by a conversion bounty,
wherein the conversion bounty comprises a dollar amount per
impression;
calculating, with the at least one processor, a number of
clicks based on the determined click through rate and a weight
assigned to future time intervals that is based on an estimated relative
traffic pattern for each future time interval; and
scheduling the advertisements based on the estimated
value per impression and the calculated number of clicks in the future
time intervals.

Appellants appeal the following rejection:1
Claims 1–17 are rejected under 35 U.S.C. § 101 because the claimed
invention is directed to non-statutory subject matter (Final Act. 5–6).

1 The Examiner withdrew (1) the rejections under 35 U.S.C. § 112, second
paragraph (Final Act. 4) and (2) the Double Patenting rejection, due to the
filing of a Terminal Disclaimer on April 29, 2015 (Ans. 2). As discussed
below, the Examiner also highlights that “there is no rejection related to
provisional support” regarding Provisional Application No. 60/507,031, and
that this issue “does not appear to be appealable” (id.).
Appeal 2016-003726
Application 14/016,220

3
ANALYSIS
Priority to Provisional Application
Appellants “disagree with the Final Office Action’s suggestion that
the Provisional Application (“Provisional”) ‘provides no support for the
concept of weighting, not Fig. 3–6 and their respective discussions’” (App.
Br. 3). In response, the Examiner highlights “that there is no rejection
related to provisional support; therefore, the issue does not appear to be
appealable” (see Ans. 2). Therefore, we shall treat the Examiner’s
discussion regarding support in the Provisional Application as an
“objection,” a non-appealable matter.
Ordinarily an objection is petitionable to the Director whereas a
rejection is appealable to the Board. See 37 C.F.R. § 1.181 (“Petition may
be taken to the Director . . . [f]rom any action or requirement . . . which is
not subject to appeal to the Patent Trial and Appeal Board or to the court”).
Appellants have not established that the Examiner’s determination that the
“Provisional Application No. 60/507,031 provides no support for the
concept of weighting” necessitates our resolution of the “objection” as an
appealable matter as part of this appeal. Accordingly, we do not reach this
objection because it is a matter that is not properly raised before us for
resolution as part of this appeal.
Rejection under § 101
With respect to independent method claim 1, and similarly, computer-
readable medium claim 11, the Examiner finds that these claims are directed
to an abstract idea of “scheduling advertisements based on ad responses and
future impression availabilities” (Final Act. 5). The Examiner further finds
that “[t]he claims do not include limitations that are ‘significantly more’ than
Appeal 2016-003726
Application 14/016,220

4
the abstract idea because the claims do not include improvements to another
technology or technical field” and “the limitations in the instant claims are
done by the generically recited computer” (id.).
Appellants contend that “the Final Action fails to articulate how the
claimed invention is an abstract idea” (App. Br. 4) and “[t]he advertisement
scheduling, determinations, estimates, and calculations as claimed are not ‘a
fundamental economic practice’ or a ‘building block of the modern
economy’” (id. at 5).
We disagree with Appellants’ contentions. Instead, we find that the
Examiner has provided a sufficient response supported by a preponderance
of evidence (Ans. 4–12). As such, we refer to, rely on, and adopt the
Examiner’s findings and conclusions set forth in the Answer. Our
discussions here will be limited to the following points of emphasis.
A patent may be obtained for “any new and useful process, machine,
manufacture, or composition of matter, or any new and useful improvement
thereof.” 35 U.S.C. § 101. The Supreme Court has held that this provision
contains an important implicit exception: Laws of nature, natural
phenomena, and abstract ideas are not patentable. Alice Corp. v. CLS Bank
Int’l, 134 S. Ct. 2347, 2354 (2014); Gottschalk v. Benson, 409 U.S. 63, 67
(1972) (“Phenomena of nature, though just discovered, mental processes,
and abstract intellectual concepts are not patentable, as they are the basic
tools of scientific and technological work.”). Notwithstanding, that a law of
nature or an abstract idea, by itself, is not patentable, the application of these
concepts may be deserving of patent protection. Mayo Collaborative Servs.
v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1293–94 (2012). In Mayo, the
Court stated that “to transform an unpatentable law of nature into a patent
Appeal 2016-003726
Application 14/016,220

5
eligible application of such a law, one must do more than simply state the
law of nature while adding the words ‘apply it.’” Id. at 1294 (citation
omitted).
In Alice, the Court reaffirmed the framework set forth previously in
Mayo “for distinguishing patents that claim laws of nature, natural
phenomena, and abstract ideas from those that claim patent-eligible
applications of these 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.” Id. If the claims are directed to a
patent-ineligible concept, then 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.” Id. (quoting Mayo, 132 S.
Ct. at 1298, 1297).
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. (brackets and quotation marks omitted)
(quoting Mayo, 132 S. Ct. at 1294). The prohibition against patenting an
abstract idea “cannot be circumvented by attempting to limit the use of the
formula to a particular technological environment or adding insignificant
post-solution activity.” Bilski v. Kappos, 561 U.S. 593, 610–11 (2010)
(quotations omitted). The Court in Alice noted that “‘[s]imply appending
conventional steps, specified at a high level of generality,’ was not ‘enough’
[in Mayo] to supply an ‘inventive concept.’” Alice, 134 S. Ct. at 2357
(quoting Mayo, 132 S. Ct. at 1300, 1297, 1294).
Appeal 2016-003726
Application 14/016,220

6
Step one: Are the claims at issue directed to a patent-ineligible concept?
Claim 1 recites six steps: (a) receiving; (b) determining a click
through rate; (c) determining a conversion rate; (d) estimating;
(e) calculating; and (f) scheduling. Each of these steps involves either
information or a calculation. For example, advertising contract information
associated with a time interval is received. A click through rate and a
conversion rate is determined for each advertising contract. A value per
impression is estimated. The number of clicks is calculated and
advertisements are scheduled. This is the essence of the abstract concept of
scheduling advertisements based on ad responses and future impressions
availabilities (see Ans. 6).
We agree with the Examiner that Appellants’ claims are directed to an
abstract idea of “scheduling advertisements based on ad responses and future
impression availabilities” (Final Act. 5), i.e., receiving, determining,
estimating, calculating, and scheduling information. Information collection
and analysis, including when limited to particular content, is within the
realm of abstract ideas. See, e.g., Elec. Power Grp. LLC v. Alstom S.A., 830
F.3d 1350, 1353 (Fed. Cir. 2016) (holding that “collecting information,
analyzing it, and displaying certain results of the collection and analysis” are
“a familiar class of claims ‘directed to’ a patent-ineligible concept”);
FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1093–94 (Fed. Cir.
2016); Internet Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1349
(Fed. Cir. 2015); Digitech Image Techs., LLC v. Elecs. for Imaging, Inc.,
758 F.3d 1344, 1351 (Fed. Cir. 2014); CyberSource Corp. v. Retail
Decisions, Inc., 654 F.3d 1366, 1370 (Fed. Cir. 2011).
Appeal 2016-003726
Application 14/016,220

7
Step two: Is there something else in the claims that ensures that they are
directed to significantly more than a patent-ineligible concept?
With respect to whether the claim elements, individually or
collectively, add significantly more than the abstract idea, the Examiner
finds that “applying the abstract idea by use of a computer is not considered
a significant improvement” (Ans. 7) and that “Appellant’s claims [] merely
apply a mathematical formula to the field-of-use of scheduling advertising”
(id. at 8). We agree with the Examiner.
“A claim that recites an abstract idea must include ‘additional features'
to ensure ‘that the claim is more than a drafting effort designed to
monopolize the abstract idea.”’ Alice, 134 S. Ct. at 2357 (brackets omitted)
(quoting Mayo, 132 S. Ct. at 1297). The prohibition against patenting an
abstract idea “cannot be circumvented by attempting to limit the use of the
formula to a particular technological environment or adding insignificant
post-solution activity.” Bilski, 561 U.S. at 610–11 (quotations omitted).
The recitations in claim 1 pertaining to with at least one processor are
analogous to the recitation of a conventional “computer” discussed in Alice.
Appellants contend that “the instant claims are not well-understood,
routine and conventional activities previously known to the industry”
because “there are no prior art rejections for the claimed activities” (App.
Br. 8). In response, the Examiner finds, and we agree, that “[t]he Alice
Court does not appear to conflate 102 or 103 analysis with the 101 analysis
they perform, the Court appears to merely use cited references to illustrate
the idea” (Ans. 5).
Whether a rejection under §§ 102 or 103 has been issued is not the test
for determining patent-eligible subject matter under § 101. See Diamond v.
Appeal 2016-003726
Application 14/016,220

8
Diehr, 450 U.S. 175, 188–89 (1981) (“The ‘novelty’ of any element or steps
in a process, or even of the process itself, is of no relevance in determining
whether the subject matter of a claim falls within the § 101 categories of
possibly patentable subject matter.”). The Supreme Court has set forth in
Alice the proper two step framework for distinguishing patents that claim
abstract ideas. Appellants’ contention above that the Examiner has found no
prior art references that teach or suggest all of the claimed features does not
apprise us of error in the rejection under 35 U.S.C. § 101. An abstract idea
does not transform into an inventive concept just because the prior art does
not disclose or suggest it.2
Appellants further contend that the “claims are akin to the patent
eligible claims in DDR Holdings”3 because “[t]he presently pending claims
overcome technical problems related to electronic advertisement scheduling
and estimating future electronic advertisement value” and “[t]he presently-
solved problem . . . arises solely in an online computing network context”
(App. Br. 7; see also Reply Br. 3–5). The Examiner finds, and we agree,
that “the instant claims exhibit no similar characteristics [to the claims in
DDR Holdings] – there is no change in function of the computer or computer
technology” (Ans. 11).
Specifically, Appellants’ claims 1–17 are not rooted in computer
technology as outlined in DDR Holdings nor do they seek to improve any
type of computer capabilities, such as a “self-referential table for a computer
database” outlined in Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1336–

2 Alice also confirmed that if a patent’s systems claims are no different in
substance from its method claims, they will rise and fall together. 134 S. Ct.
at 2360. The same was true of the Alice patent’s media claims. Id.
3 DDR Holdings, LLC v. Hotels.com L.P., 773 F.3d 1245 (Fed. Cir. 2014).
Appeal 2016-003726
Application 14/016,220

9
37 (Fed. Cir. 2016). Instead, Appellants’ claims 1–17 simply recite an
abstract concept of “scheduling advertisements based on ad responses and
future impression availabilities” (Final Act. 5), i.e., collecting, analyzing,
and scheduling information. We agree with the Examiner that “[a]lthough
the instant claims are related to the more modern medium of computer
advertising, the same problem of assessing or estimating values to schedule
advertising” existed when “contracting for placement in a newspaper,
magazine, journal, or other medium” (Ans. 9). “The Supreme Court and this
court have repeatedly made clear that merely limiting the field of use of the
abstract idea to a particular existing technological environment does not
render the claims any less abstract.” Affinity Labs of Texas, LLC v. DirecTV,
LLC, 838 F.3d 1253, 1259 (Fed. Cir. 2016).
Additionally, as recognized by the Federal Circuit in Ultramercial,
Inc. v. Hulu, LLC, 772 F.3d 709, 716 (Fed. Cir. 2014), Bilski’s “machine-or-
transformation” (MoT) test can provide a “useful clue” in the second step of
the Alice framework. See Bilski, 561 U.S. at 611. Under Bilski’s MoT test,
a claimed process can be considered patent-eligible under § 101 if: (1) “it is
tied to a particular machine or apparatus”; or (2) “it transforms a particular
article into a different state or thing.” In re Bilski, 545 F.3d 943, 954 (Fed.
Cir. 2008) (citing Gottschalk, 409 U.S. at 70), aff’d, 561 U.S. 593.
Claim 1 does not specify any particular entity that performs the
recited “receiving,” “determining,” and “scheduling” steps, thus, such steps
could be practiced mentally. Adding a mental step cannot patentably
transform an otherwise abstract idea into an inventive concept. In re
Comiskey, 554 F.3d 967, 979 (Fed. Cir. 2009) (“mental processes—or
processes of human thinking—standing alone are not patentable even if they
Appeal 2016-003726
Application 14/016,220

10
have practical application”). As for the estimating and calculating steps, we
agree with the Examiner that such steps are done by “no more than a generic
computer” (Final Act. 5). We further agree with the Examiner that such a
“series of math calculations that could be carried out by hand or in a
person’s mind do not constitute significantly more, even if they are claimed
to be performed through computer implementation” (Ans. 12).
As recognized by the Supreme Court, “the mere recitation of a generic
computer cannot transform a patent-ineligible abstract idea into a patent-
eligible invention.” Alice, 134 S. Ct. at 2359 (concluding claims “simply
instruct[ing] the practitioner to implement the abstract idea of intermediated
settlement on a generic computer” not patent eligible); see also
Ultramercial, 772 F.3d at 715–16 (claims merely reciting abstract idea of
using advertising as currency as applied to particular technological
environment of the Internet not patent eligible); Accenture Global Servs.,
GmbH v. Guidewire Software, Inc., 728 F.3d 1336, 1344–45 (Fed. Cir.
2013) (claims reciting “generalized software components arranged to
implement an abstract concept [of generating insurance-policy-related tasks
based on rules to be completed upon the occurrence of an event] on a
computer” not patent eligible); Dealertrack, Inc. v. Huber, 674 F.3d 1315,
1333–34 (Fed. Cir. 2012) (“[s]imply adding a ‘computer aided’ limitation to
a claim covering an abstract concept, without more, is insufficient to render
[a] claim patent eligible” (internal citation omitted)).
Limiting such an abstract concept of “scheduling advertisements
based on ad responses and future impression availabilities” to generic
components, such as a processor, or to a field of use in online ads does not
make the abstract concept patent-eligible under 35 U.S.C. § 101. Because
Appeal 2016-003726
Application 14/016,220

11
Appellants’ independent claims 1 and 11 are directed to a patent-ineligible
abstract concept and do not recite something “significantly more” under the
second prong of the Alice analysis, we sustain the Examiner’s rejection of
these claims, as well as respective dependent claims 2–10 and 12–17, under
35 U.S.C. § 101 as being directed to non-statutory subject matter in light of
Alice and its progeny.

DECISION
As such, we AFFIRM the Examiner’s final rejections of claims 1–17
under 35 U.S.C. § 101.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED