Ex Parte Chenard et al

Patent Trial and Appeal Board

Aug 29, 2017

12420137 (P.T.A.B. Aug. 29, 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.
12/420,137 04/08/2009 Jesse Ray CHENARD TREM-006/01US
314820-2009
1920
58249 7590
COOLEY LLP
ATTN: Patent Group
1299 Pennsylvania Avenue, NW
Suite 700
Washington, DC 20004
EXAMINER
STROUD, CHRISTOPHER
ART UNIT PAPER NUMBER
3688
NOTIFICATION DATE DELIVERY MODE
08/31/2017 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):
zpatdcdocketing@cooley.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JESSE RAY CHENARD and CHARLES PARRA
Appeal 2016-002065
Application 12/420,137
Technology Center 3600
Before ALLEN R. MacDONALD, ROBERT E. NAPPI, and
BRADLEY W. BAUMEISTER, Administrative Patent Judges.
MacDONALD, Administrative Patent Judge.
DECISION ON APPEAL
Appeal 2016-002065
Application 12/420,137
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1—9, 13, 14, 17, 19-21, and 23—30. We have jurisdiction under 35
U.S.C. § 6(b). We AFFIRM.
Representative Claim
Representative claim 1 under appeal reads as follows (emphasis,
formatting, and brackets added):
1. A non-transitory processor-readable medium storing
code representing instructions to be executed by a processor, the
code comprising code to cause the processor to:
[A.] receive, from a user terminal, a request for advertising
content;
[B.] define, based on the request,
[i.] a primary link to a first content providing entity and
[ii.] a failover link to a second content providing entity;
and
[C.] send, to the user terminal and substantially
simultaneously, the primary link and the failover link
such that
[i.] the user terminal accesses the second content
providing entity using the failover link subsequent
to failing to obtain an advertisement from the first
content providing entity using the primary link
when at least one of
(1) the first content providing entity provides a
datum not associated with the advertisement
in response to the user terminal accessing the
primary link or
(2) the first content providing entity does not
respond to the user terminal within a
predetermined time period after accessing the
primary link.
2
Appeal 2016-002065
Application 12/420,137
Gadish
Jardins et al.
Bason
Shaul et al.
Bernard et al.
References
US 6,202,087 B1
US 2006/0080171 Al
US 2008/0109300 Al
US 2008/0319850 Al
US 2009/0187480 Al
March 13, 2001
April 13, 2006
May 8, 2008
Dec. 25, 2008
July 23, 2009
Rejections
1. The Examiner rejected claims 1—9, 13, 14, 17, 19-21, and 23—30
under 35 U.S.C. § 101 “because based upon consideration of the claims as a
whole, claimed invention is directed to a judicial exception (i.e., a law of
nature, a natural phenomenon, or an abstract idea) without significantly
more.” (Ans. 3), i.e., the claimed invention is directed to non-statutory
subject matter.1
2. The Examiner rejected claims 1—4, 13, 14, 17, 19, 20, 23, 24,
27—30 under 35 U.S.C. § 103(a) as being unpatentable over the combination
of Gadish, Jardins, and Bernard.2
1 We select claim 1 as representative. Separate patentability is not argued
for claims 2—9, 13, 14, 17, 19-21, and 23—30. Except for our ultimate
decision, the § 101 rejection of claims 2—9, 13, 14, 17, 19—21, and 23—30 is
not discussed further herein.
2 Arguments are presented only for claim 1 separately. Although Appellants
separately discuss claims 13 and 23, arguments are by reference to the
arguments for claim 1. App. Br. 10. Separate patentability is not argued for
claims 2-4, 13, 14, 17, 19, 20, 23, 24, and 27—30. Thus, the rejection of
these claims turns on our decision as to claim 1. Except for our ultimate
decision, the § 103 rejection of claims 2-4, 13, 14, 17, 19, 20, 23, 24, and
27—30 is not discussed further herein.
3
Appeal 2016-002065
Application 12/420,137
3. The Examiner rejected claims 5—8 and 25 under 35 U.S.C.
§ 103(a) as being unpatentable over the combination of Gadish, Jardins,
Bernard, and Shaul.3
4. The Examiner rejected claims 9, 21, and 26 under 35 U.S.C.
§ 103(a) as being unpatentable over the combination of Gadish, Jardins,
Bernard, and Bason.4
Issues on Appeal
Did the Examiner err in rejecting claim 1 as being directed to
non-statutory subject matter?
Did the Examiner err in rejecting claims 1, 7, and 8 as being obvious?
ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellants’
arguments (Appeal Brief and Reply Brief) that the Examiner has erred.
3 Claims 7 and 8 are argued separately. Claim 25 is argued with claim 8.
Separate patentability is not argued for claims 5, 6, and 9. Thus, the
rejection of these claims turns on our decision as to claim 1. Except for our
ultimate decision, the § 103 rejection of claims 5, 6, 9, and 25, is not
discussed further herein.
4 Separate patentability is not argued for claims 9, 21, and 26. Thus, the
rejection of these claims turns on our decision as to claim 1. Except for our
ultimate decision, the § 103 rejection of claims 9, 21, and 26 is not discussed
further herein.
4
Appeal 2016-002065
Application 12/420,137
1. Non-Statutory Subject Matter
A
Appellants contend that the Examiner erred in rejecting claim 1 under
35 U.S.C. § 101 because claim 1 satisfies the first part of the Alice/Mayo
framework. Particularly:
[Independent claim 1 is not directed towards an abstract idea,
and is patent eligible. . . . [Claim 1] does not [“Jmerely recite the
performance of some business practice known from the pre-
Internet world along with the requirement to perform it on the
Internet” ([January 27, 2015 Abstract Idea] Examples, pages 5
and 6). In fact, a business practice of sending such links to
various content providing entities was not necessary and did not
exist in a pre-Internet world.
Reply Br. 2 (emphasis added).
We disagree. Appellants assert the Examiner has erred as to the first
part of Alice/Mayo framework and assert claim 1 is not directed towards an
abstract idea. However, we do not find where Appellants have provide
support for these first part of Alice/Mayo assertions. Instead Appellants
immediately shift to arguing claim 1 is not merely directed towards an
abstract idea as the links did not exist in a pre-Internet world (i.e., arguing
claim 1 satisfies the second part of the Alice/Mayo framework.)5 We find
Appellants’ Alice/Mayo step one assertions to be conclusory. Such
unsupported attorney argument, is entitled to little probative value. In re
Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997); In re De Blauwe, 736 F.2d
699, 705 (Fed. Cir. 1984).
5 Below we address separately Appellants’ arguments that claim 1 satisfies
the second part of the Alice/Mayo framework.
5
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Application 12/420,137
We agree with the Examiner that the claim before us is directed to
“the fundamental economic practice of providing advertisements.” Ans. 5.
Appellants explicitly state the invention is “[a] system and method for
providing ad content.” Abstract. Further, Appellants’ Application title
explicitly states the invention is directed to a “SYSTEM AND METHOD
FOR PROVIDING ADVERTISEMENTS.”
B
Appellants also contend that the Examiner erred in rejecting claim 1
under 35 U.S.C. § 101 because claim 1 satisfies the second part of the
Alice/Mayo framework. Particularly:
[CJlaim 1 in the instant application recites a specialized process
rooted in computer technology to resolve the particular
Internet-centric problems caused by failure to obtain specific
content via a specific link, by providing, for example, a second,
failover link, substantially simultaneously with an initial link
such that the specific requested content can be obtained in an
efficient manner.
Reply Br. 2—3 (emphasis added).
[CJlaim 1 more than satisfies the se[co]nd part of the Alice test,
i.e., whether the claim contains an inventive concept sufficient to
transform an abstract idea into a patent-eligible application. . . .
Similar to the reasoning behind finding patent eligible
hypothetical claim 2 of Example 21 in the July 2015 Update
published by the U.S. Patent Office (the “2015 Update”), . . .
[CJlaim 1 of the instant application, “when considered as an
ordered combination demonstrates a technologically rooted
solution to an Internet-centric problem ([resolving failed
attempts to obtain specific content via a specific link, by
providing, for example, a second, failover link, substantially
simultaneously with an initial link such that the specific
requested content can be obtained in an efficient manner)]”
(2015 Update, page 5).
6
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Application 12/420,137
Reply Br. 3^4 (emphasis added).
In the Answer, the Examiner similarly evaluates further claim
recitations in isolation. By analyzing each portion of the claim
in isolation and not as a whole, the Examiner fails to consider
claim 1 “as an ordered combination,” which “demonstrates a
technologically rooted solution to an Internet-centric
problem'”.
Reply Br. 3 (emphasis added).
We conclude, consistent with Appellants’ argument, there is
insufficient articulated reasoning to support the Examiner’s conclusion the
claims fail to quality as “significantly more” under the second part of the
Alice/Mayo framework. Further, as there is no response by the Examiner to
Appellants’ Reply Brief § 101 arguments, we conclude, consistent with
Appellants’ “technologically rooted” argument, there is insufficient
articulated reasoning to support a conclusion that the claimed invention is
not “a technologically rooted solution to an Internet-centric problem.” Reply
Br. 4.6
6 We agree with Appellants that Examiner’s articulated reasoning is lacking
and thus the rejection fails. However, we note the following points. We
believe the Internet process before us has a long standing pre-Internet world
business practice analog in paper driven processes. We believe it was
routine practice to supply potentially useful, but unrequested, information to
a customer in addition to information explicitly requested by the customer.
For example, a directory-assistance operator, or other person responding to a
request for contact information, may provide the requesting party not only
the primary contact information for a merchant or service provider (e.g., a
business telephone number or mailing address), but also provide the
requesting party secondary contact information (e.g., a home phone or
mailing address) in the event that the requesting party cannot make contact
via the primary contact information. As another example, a person
responding to a request may provide the contact information for a back-up
merchant or service provider in case the primary merchant or service
7
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Application 12/420,137
We agree, as pointed out by the Examiner (Ans. 5), transmitting data
over a network is recognized to be well understood, routine, and
conventional. Also, we conclude that the providing (sending or
transmitting) substantially simultaneously two pieces of data is equally well
understood, routine, and conventional transmitting of data over a network.
However, these conclusions alone are insufficient to show the claimed
invention is not a technologically rooted solution to an Internet-centric
problem. The claims are not directed merely to sending plural distinct links
to respective content. Rather, the question is whether the Examiner has
sufficiently articulated why the steps—delivering content and backup
content and then using rules to access the backup content in the event access
to the primary content fails—constitute a problem that is really business
rooted with conventional technology applied thereto and not an Internet-
centric problem with a technologically rooted solution.
provider is unavailable. Conventionally, this sort of backup information for
improved directory-assistance efficiency. We believe the claim might be
viewed as directed to performing via the Internet (simultaneously providing
potential access to two pieces of information, i.e., advertising) this
conventional form of providing information (e.g., simultaneously providing
information, as well as backup information that a customer may potentially
read or use).
The record does not show the Examiner has considered these points.
Therefore, should there be further prosecution of this application, we leave it
to the Examiner to determine the appropriateness of a new ground of
rejection in light of these points.
8
Appeal 2016-002065
Application 12/420,137
2. Obviousness
A
Appellants contend that the Examiner erred in rejecting claim 1 under
35 U.S.C. § 103(a) because:
Gadish discloses sending a non-error message as a replacement
to and instead of sending an error message, but nowhere does
Gadish disclose or suggest sending substantially
simultaneously two links (i.e., a primary link and a failover link).
App. Br. 7 (emphasis added).
As to Appellants’ above contention, we disagree. Appellants are
attacking Gadish singly for lacking a teaching (“sending substantially
simultaneously two links”) that the Examiner relied on a combination of
references to show. Particularly, the Examiner points to Gadish as
disclosing sending a primary link and a failover link; and the Examiner
points to Jardins as teaching sending substantially simultaneously two links.
Final Act. 3. It is well established that one cannot show nonobviousness by
attacking references individually where the rejections are based on
combinations of references. See In re Keller, 642 F.2d 413 (CCPA 1981);
In re Merck & Co., 800 F.2d 1091 (Fed. Cir. 1986). Appellants argue a
finding the Examiner never made. This form of argument is unavailing to
show Examiner error.
B
Appellants contend that the Examiner erred in rejecting claim 1 under
35 U.S.C. § 103(a) because:
It is unclear to what portions of Gadish the Examiner
analogizes a primary link and a failover link. The Examiner in
the Office Action only points to one link, i.e., a link included in
a non-error message. It appears the Examiner is analogizing the
error message of Gadish to the primary link of claim 1.
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Appeal 2016-002065
Application 12/420,137
Nowhere, however, does Gadish disclose or suggest that the
error message includes a link. In fact, an error message including
a link would destroy the intended functionality of Gadish.
App. Br. 8 (emphasis added, footnotes omitted).
We disagree. An objective artisan reading Gadish would not find the
reference or the Examiner’s rejection to be unclear as to what portions of
Gadish the Examiner analogizes a primary link and a failover link. Rather,
Gadish (in the sections cited by the Examiner) discloses a first resource and
another second resource. Gadish discloses “[a] resource on the Internet,
such as a Web site, is accessed by indicating its unique address, such as an
IP (Internet Protocol) address.” Gadish 1:13—15. Gadish also discloses
Rather than simply displaying an error message, a more
useful solution would redirect the user to another resource, in
which the user can optionally find additional information. For
example, if the requested resource is a Web site or a Web page,
the other resource could optionally be a Web page which not only
indicates that the request has failed, but also suggests additional
information such as links to alternative Web pages, a search
engine, or advertisements.
Gadish 1:30-38.
Contrary to the entire premise of Appellants’ argument, the Examiner
is not “analogizing the error message of Gadish to the primary link of
claim 1” (App. Br. 8), but rather is analogizing the first “resource” of Gadish
to the primary link.
C
Appellants contend that the Examiner erred in rejecting claim 1 under
35 U.S.C. § 103(a) because:
Gadish specifically teaches away . . . from being modified as
suggested in the Office Action by the Examiner. . . . Gadish
discloses “preferably ... the server device does not actually
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Appeal 2016-002065
Application 12/420,137
produce the error message. Rather the server device would
directly produce the non-error message [when an error message
would otherwise be generated].” Thus, Gadish discloses a
preference to eliminate the error message altogether, and instead,
generate a non-error message at the server device 16, and
subsequently send only the non-error message to the network
device 12.
App. Br. 8 (emphasis added, footnotes omitted).
The United States Court of Appeals for the Federal Circuit has
counseled:
A reference may be said to teach away when a person of ordinary
skill, upon reading the reference, would be discouraged from
following the path set out in the reference, or would be led in a
direction divergent from the path that was taken by the
applicant. . . . [I]n general, a reference will teach away if it
suggests that the line of development flowing from the
reference’s disclosure is unlikely to be productive of the result
sought by the applicant.
In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994).
As to Appellants’ above contention, we disagree. Contrary to the
premise of Appellants’ argument that Gadish teaches away, the full quote of
the above first sentence of Gadish cited by Appellants is “[ojptionally and
preferably, the non-error message generator could be an implicit feature of
the server device, such that the server device does not actually produce the
error message.” Gadish 2:61—64. Further, Gadish explicitly discloses an
alternative option where the server device generates the error message”
{Id. at 2:43).
We conclude that Gadish does not teach away as argued by
Appellants. “A reference does not teach away, however, if it merely
expresses a general preference for an alternative invention but does not
criticize, discredit, or otherwise discourage investigation into the invention
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Application 12/420,137
claimed.” DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d
1314, 1327 (Fed. Cir. 2009) (quotation omitted).
D
Appellants contend that the Examiner erred in rejecting claim 1 under
35 U.S.C. § 103(a) because:
[If] the Examiner is instead suggesting in the Office Action to
modify the non-error message to include Jardins ’ list of links,
then under such a modification, the list of links would be sent in
response to the error, and not before the error occurs, as required
by independent claim 1.
App. Br. 9 (emphasis added).
We disagree. Again the premise of Appellants argument is mistaken.
We do not find where the Examiner is suggesting “to modify the non-error
message to include Jardins ’ list of links” as premised by Appellants.
Rather, at page 3 of the Final Office Action, the Examiner finds “Gadish
teaches defining], based on the request, a primary link to a first content
providing entity and a failover link to a second content providing entity” (the
above discussed resources). Further, the Examiner finds “Jardins teaches
sending a list of links ‘substantially simultaneously.’” Id. The Examiner
then concludes “[i]t would have been obvious to one of ordinary skill in the
art at the time of the invention to modify the teachings of Gadish to include
sending a list of links to the user as taught by Jardins in order to decrease the
amount of time needed to access a failover link.” Id. That is, the
modification has the list being sent (pre-positioned) in response to the initial
request rather than in response to the error, as argued by Appellants.
We agree with the Examiner (and Appellants do not dispute) that
sending a list (to cover the case where an error occurs in accessing the first
resource on the list) in response to the initial request would decrease the
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Application 12/420,137
amount of time needed to access a failover link if an error were to occur.
Further, we agree with the Examiner that it would have been obvious to one
of ordinary skill in the art at the time of the invention to so modify Gadish as
this is simply a pre-positioning of the known failover link in case it is
needed (i.e., performing the same steps as Gadish, but in a different order
(sending simultaneously rather than sequentially)).
E
Appellants contend that the Examiner erred in rejecting claim 7 under
35 U.S.C. § 103(a) because:
Accessing advertisement files based on a priority value, as
disclosed by Shaul, is different from successively accessing one
or more failover links. Similarly stated, successively accessing
failover links due to one or more failures in accessing a primary
link, is different from successively accessing the advertisements
files themselves, as disclosed by Shaul.
App. Br. 11 (emphasis added).
Accessing a secondary advertising file based on a budget
associated therewith is different from and does not include
successively accessing one or more failover links until
(a) renderable advertising content is obtained or (b) each
failover link has been accessed.
App. Br. 12 (emphasis added).
We conclude, consistent with Appellants’ argument, there is
insufficient articulated reasoning to support the Examiner’s findings that
Shaul discloses “successively accessing one or more failover links until
(a) renderable advertising content is obtained or (b) each failover link has
been accessed.” Therefore, we conclude that there is insufficient articulated
reasoning to support the Examiner’s final conclusion that claim 7 would
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Application 12/420,137
have been obvious to one of ordinary skill in the art at the time of
Appellants’ invention.7
F
Appellants contend that the Examiner erred in rejecting claim 8 under
35 U.S.C. § 103(a) because:
None of the Shaul’s barring events, however, disclose or suggest
a calling frequency number. In fact, Shaul remains entirely silent
as to predefining a number of user attempts to retrieve an
advertisement file.
App. Br. 13 (emphasis added).
We conclude, consistent with Appellants’ argument, there is
insufficient articulated reasoning to support the Examiner’s findings that
Shaul discloses “the user terminal attempts to retrieve an advertisement
using the at least one primary link a number of times equal to the calling
frequency number prior to accessing the second content providing entity
using the failover link.” Therefore, we conclude that there is insufficient
articulated reasoning to support the Examiner’s final conclusion that claim 8
7 We agree with Appellants that Examiner’s articulated reasoning is lacking
and thus the rejection fails. However, we note the following points. First,
we deem a plurality of successive failover links to be obvious as it merely
constitutes a duplication of parts in light of a first known failover link.
Second, Shaul teaches that events can occur that bar (end) further
advertising. Shaul 80-82. Third, we deem it conventional for a process to
have the two ending events of (a) it works and (b) it fails as all alternatives
have been tried and none worked.
The record does not show the Examiner has considered these points.
Therefore, should there be further prosecution of this application, we leave it
to the Examiner to determine the appropriateness of a new ground of
rejection in light of these points.
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Application 12/420,137
would have been obvious to one of ordinary skill in the art at the time of
Appellants’ invention.8
CONCLUSIONS
(1) Appellants have established that the Examiner erred in rejecting
claims 1—9, 13, 14, 17, 19-21, and 23—30 under 35 U.S.C. § 101, as being
directed to non-statutory subject matter.
(2) The Examiner has not erred in rejecting claims 1—6, 9, 13, 14, 17,
19-21, 23, 24, and 26—30 as being unpatentable under 35 U.S.C. § 103(a).
(3) Appellants have established that the Examiner erred in rejecting
claims 7, 8, and 25 as being unpatentable under 35 U.S.C. § 103(a).
(4) Claims 1—9, 13, 14, 17, 19-21, and 23—30 are not patentable.
(5) On this record, claims 7, 8, and 25 have not been shown to be
unpatentable.
8 We agree with Appellants that Examiner’s articulated reasoning is lacking
and thus the rejection fails. However, we note the following points. First,
we deem a plurality of successive failover links to be obvious as it merely
constitutes a duplication of parts in light of a first known failover link.
Second, that the successive links are identical is again duplication of parts.
Third, we deem it conventional in a data retrieval step to retry the step in
light of failure of the data retrieval. Fourth, we deem it also conventional to
place a cap on the number of retries.
The record does not show the Examiner has considered these points.
Therefore, should there be further prosecution of this application, we leave it
to the Examiner to determine the appropriateness of a new ground of
rejection in light of these points.
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DECISION
The Examiner’s rejection of claims 1—9, 13, 14, 17, 19-21, and 23—30
under 35 U.S.C. § 101, as being directed to non-statutory subject matter, is
reversed.
The Examiner’s rejections of claims 1—6, 9, 13, 14, 17, 19-21, 23, 24,
and 26—30 as being unpatentable under 35 U.S.C. § 103(a) are affirmed.
The Examiner’s rejections of claims 7, 8, and 25 as being
unpatentable under 35 U.S.C. § 103(a) are 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-IN-PART
16