Ex Parte Bullock

Patent Trial and Appeal Board

Jan 30, 2017

13531581 (P.T.A.B. Jan. 30, 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.
13/531,581 06/24/2012 Roddy M. Bullock RB121209D 3621
89123 7590
Roddy M. Bullock
936 Hidden Ridge
Milford, OH 45150
EXAMINER
KIM, STEVEN S
ART UNIT PAPER NUMBER
3685
MAIL DATE DELIVERY MODE
01/31/2017 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 RODDY M. BULLOCK
Appeal 2014-0063491
Application 13/531,5812
Technology Center 3600
Before JOSEPH A. FISCHETTI, BIBHU R. MOHANTY, and
TARA L. HUTCHINGS, Administrative Patent Judges.
HUTCHINGS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1—10. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE and enter a NEW GROUND OF REJECTION
pursuant to our authority under 37 C.F.R. § 41.50(b).
1 Our decision references Appellant’s Appeal Brief (“App. Br.,” filed Feb.
14, 2014) and Reply Brief (“Reply Br.,” filed May 3, 2014), and the
Examiner’s Answer (“Ans.,” mailed Apr. 10, 2014), and Final Office Action
(“Final Act.,” mailed Jan. 3, 2014).
2 Appellant identifies Roddy M. Bullock as the real party in interest. App.
Br. 1.
Appeal 2014-006349
Application 13/531,581
CLAIMED INVENTION
Appellant’s claimed invention “relates to a method for monetizing
online content on the internet.” Spec. 1,1. 4.
Claim 1, reproduced below, is the sole independent claim, and is
representative of the subject matter on appeal:
1. A method for generating revenue on the internet by
an internet content provider, the method comprising the steps of:
a. publishing content on a web page accessible via a web
browser;
b. providing on said web page a first area for at least one
user-generated comment in a default-format;
c. providing on said web page a second area for an
advertisement;
d. providing on said web page a third area for at least one
fee-paid comment, said fee paid by a user to the internet content
provider or a third party associated with the internet content
provider;
e. displaying on said web page in said first area at least one
of said at least one user-generated comment in a default-format;
f. displaying on said web page in said second area said
advertisement; and
g. displaying on said web page in said third area said at
least one fee-paid comment;
h. wherein upon viewing said web page readers of said
content have displayed to them said comment in a default-format,
said advertisement, said fee-paid comment on said web page.
REJECTIONS
Claims 1—4 are rejected under 35 U.S.C. § 112, second paragraph, as
indefinite for failing to particularly point out and distinctly claim the subject
matter that Appellant regards as the invention.
Claims 1, 3—8, and 10 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Brougher (US 2009/0157491, pub. June 18, 2009) and
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Application 13/531,581
Halahmi Provisional (US 61/160,649, filed Mar. 16, 2009), which issued as
Halahmi (US 8,326,684 Bl, iss. Dec. 4, 2012).
Claims 2 and 9 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Brougher, Halahmi Provisional, and Bezos (US 2003/0055729 Al, pub.
Mar. 20, 2003).
ANALYSIS
Indefiniteness
Independnet Claim 1 and Dependent Claims 2—4
In rejecting claims 1^4 under 35 U.S.C. § 112, second paragraph, the
Examiner notes that independent claim 1 recites that “upon viewing said
web page[,] readers of said content have displayed to them said comment in
a default-format, said advertisement, said fee-paid comment on said web
page.” Based on this recitation, the Examiner finds that the scope of claim 1
is unclear for the following four reasons: (1) the term “said web page
readers” lacks antecendent basis, (2) it is unclear what claimed elements
represent “them,” (3) it is unclear how the phrase “displayed to them” differs
from the previous displaying step, and (4) it is unclear which comment is
being referred to in the phrase “displayed to them said comment.” Final
Act. 6. We disagree.
The Specification describes that the invention allows readers, for a
fee, to have comments to an online publication of an internet content
provider rendered distinctive. Spec. 7,11. 1^4. In this manner, readers
desiring the public to read their comment or a comment of another can pay a
fee to have a comment visibly changed to stand out from comments posted
in a free, default format. Id. at 7,11. 7—11. For example, after paying a fee,
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Application 13/531,581
the reader’s comment can be posted in a different position or location
relative to the free, default-format comments. Id. at 11,11. 26—28.
In our view, a person of ordinary skill in the art would understand
what is claimed in light of the Specification. Namely, we agree with
Appellant that a person of ordinary skill would understand that (1) “said web
page readers” refers to two elements: a web page and readers, (2) “them”
refers to “readers,” and (3) “displayed to them” does not differ from the
other instances of displaying. App. Br. 13—14. We also determine that a
person of ordinary skill would understand that “said comment” refers to said
user-generated comment.
Therefore, we do not sustain the Examiner’s rejection of claims 1—4
under 35 U.S.C. § 112, second paragraph. See Orthokinetics, Inc. v. Safety
Travel Chairs, Inc., 806 F.2d 1565 (Fed. Cir. 1986) (The test for definiteness
under 35 U.S.C. § 112, second paragraph, is whether “those skilled in the art
would understand what is claimed when the claim is read in light of the
specification.”)
Obviousness
Independent Claim 1 and 5, and Dependent Claims 3, 4, 6—8, and 10
Appellant argues that the Examiner erred in rejecting claims 1, 3—8,
and 10 over the Halahmi Provisional, because the Examiner has not shown
that the resulting non-provisional application, Halahmi, finds 35 U.S.C.
§ 112, first paragraph support in the Halahmi Provisional. App. Br. 5. We
agree.
For prior art, we are currently bound by the Federal Circuit’s recent
holding that the test for entitlement to priority of a provisional application
requires comparison of the claims of the patent to the disclosure in the
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Application 13/531,581
provisional application. “A reference patent is only entitled to claim the
benefit of the filing date of its provisional application if the disclosure of the
provisional application provides support for the claims in the reference
patent in compliance with § 112,11.” Dynamic Drinkware, LLC v. Nat’l
Graphics, Inc., 800 F.3d 1375, 1381 (Fed. Cir. 2015) (emphasis added). It is
insufficient to merely compare the provisional application to: (1) the written
description of the non-provisional child, or (2) the claims of the patent or
application alleged to be invalid. Id.
Here, the Examiner “agrees with the Appellant’s assertion that
‘Halahmi’s non-Provisional Application (filed after Appellant’s priority
date) has a very different disclosure than Halahmi’s Provisional
Application.’” Ans. 12 (quoting Br. 5). But the Examiner has not compared
the disclosure of the Halahmi Provisional to any of the claims of Halahmi, as
required under Dynamic Drinkware.
Accordingly, we reverse the Examiner’s rejections of independent
claims 1 and 5, and dependent claims 3,4, 6—8, and 10. We leave it to the
Examiner to determine in the first instance whether the test is met here.
Dependent Claims 2 and 9
Dependent claims 2 and 9 depend from claims 1 and 5, respectively.
The Examiner’s rejection of these dependent claims does not cure the
deficiency in the Examiner’s rejection of independent claims 1 and 5.
Therefore, we do not sustain the Examiner’s rejection of dependent claims 2
and 9 under 35 U.S.C. § 103(a) for the same reasons set forth above with
respect to the independent claims.
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Application 13/531,581
NEW GROUND OF REJECTION
Claims 1—10 are rejected under 35 U.S.C. § 101 as being directed to
non-statutory subject matter. We select independent claim 1 as
representative of the claims being rejected.
The Supreme Court set forth a framework “for distinguishing patents
that claim laws of nature, natural phenomena, and abstract ideas from those
that claim patent-eligible applications of [these] concepts.” Alice Corp., Pty.
Ltd. v. CLSBankInt’l., 134 S. Ct. at 2347, 2355 (2014) (citing Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289 (2012)).
The first step in this analysis is to “determine whether the claims at issue are
directed to one of those patent-ineligible concepts.” Id. (citing Mayo, 132 S.
Ct. at 1296—97). If the claims are not directed to an abstract idea, the inquiry
ends. Otherwise, the inquiry proceeds to the second step where elements of
the claims are considered “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. (citing Mayo, 132 S. Ct.
at 1298, 1297).
The Court acknowledged in Mayo that “all inventions at some level
embody, use, reflect, rest upon, or apply laws of nature, natural phenomena,
or abstract ideas.” Mayo, 132 S. Ct. at 1293. We, therefore, look to whether
the claims focus on a specific means or method that improves the relevant
technology or are instead directed to a result or effect that itself is the
abstract idea and merely invoke generic processes and machinery. See
Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1336 (Fed. Cir. 2016).
Here, claim 1 recites a “method for generating revenue on the
internet,” comprising the following steps: (a) publishing content on a web
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page; (b) providing a first area on the web page; (c) providing a second area
on the web page; (d) providing a third area on the web page; (e) displaying
in said first area at least one of said at least one user-generated comment in a
default-format; (f) displaying in said second area said advertisement; and
(g) displaying in said third area said at least one fee-paid comment. Stated
another way, claim 1 recites a method for generating revenue by arranging
and displaying fee-paid comment(s) on a web page in a different location
than default-format comment(s). And Appellant’s Specification describes
the invention as solving an “unmet need for a way to permit commenters on
news articles or blog entries to get their comments noticed.” Spec. 3,11. 1—2.
The Specification further describes that the invention “has as an object the
making of money using the internet.” Id. at 6,11. 3^4.
Based on the claim language and Specification, we determine that
claim 1 is directed to generating revenue, which is a basic economic practice
and, thus, an abstract idea. The steps of claim 1 involve nothing more than
providing three different areas on a web page for publishing three types of
content (i.e., user-generated comment in a default-format, an advertisement,
and fee-paid comments), and displaying the three types of content in their
respective areas. At least two of the three areas, the second area for an
advertisement and the third area for at least one fee-paid comment, are each
revenue generating items. Providing different areas on a web page and
displaying different types of content in the different areas is similar to other
claims that our reviewing court has held to be directed to abstract ideas. See,
e.g., Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir.
2016) (collecting data from multiple data sources, analyzing the data, and
displaying the results to be in the realm of abstract ideas).
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Turning to the second step of our analysis, we next consider whether
there is an inventive concept, defined by an element or combination of
elements in claim 1, which is significantly more than the abstract idea of
updating electronic records. See Alice, 134 S. Ct. at 2355 (citation omitted).
We see nothing in the subject matter that transforms the abstract idea of
calculating a value.
The claim’s invocation of a “web page” and “web browser,” as well
as “internet” and “internet content provider” in the preamble, adds no
inventive concept. Alice, 134 S. Ct. at 2358 (“the mere recitation of a
generic computer cannot transform a patent-ineligible abstract idea into a
patent-eligible invention”).
Therefore, claim 1 is rejected under 35 U.S.C. § 101. Independent
claim 5 similarly covers claimed subject matter that is judicially-excepted
from patent eligibility under § 101. We also have reviewed the dependent
claims and do not see anything in those claims that transforms the patent-
ineligible concept of generating revenue to a patent-eligible concept.
Therefore, we enter a new ground of rejection of claims 1—10 under
35 U.S.C. § 101.
DECISION
The Examiner’s rejection of claims 1—4 under 35 U.S.C. § 112,
second paragraph, is reversed.
The Examiner’s rejections of claims 1—10 under 35 U.S.C. § 103(a)
are reversed.
A NEW GROUND OF REJECTION has been entered for claims
1-10 under 35 U.S.C. § 101.
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37 C.F.R. § 41.50(b) provides that “[a] new ground of rejection . . .
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:
(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 proceeding 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)(l)(iv).
REVERSED: 37 C.F.R, $ 41.50(b)
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