Ex Parte Cooke et al

Patent Trial and Appeal Board

Feb 28, 2017

12780842 (P.T.A.B. Feb. 28, 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.
12/780,842 05/14/2010 Raymond Mark Cooke 41290-0017001 1560
20985 7590 03/02/2017
FISH & RICHARDSON P.C. (SD)
P.O. BOX 1022
MINNEAPOLIS, MN 55440-1022
EXAMINER
HAMILTON, MATTHEW L
ART UNIT PAPER NUMBER
3682
NOTIFICATION DATE DELIVERY MODE
03/02/2017 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):
PATDOCTC@fr.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RAYMOND MARK COOKE and MADHU VUDALI
Appeal 2015-0031321
Application 12/780,8422
Technology Center 3600
Before JOSEPH A. FISCHETTI, BIBHU R. MOHANTY, and
JAMES A. WORTH, Administrative Patent Judges.
WORTH, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of newly amended claims 1 and 11—13. Claims 6, 9, 10, and 20
have been canceled. Appellants state that they have withdrawn claims 2—5,
7, 8, and 19 from consideration. We have jurisdiction under 35 U.S.C.
§§ 134 and 6(b).
We AFFIRM.
1 Our decision refers to the Appellants’ Appeal Brief (“Appeal Br.,” filed
Mar. 4, 2014) and Reply Brief (“Reply Br.,” filed Dec. 23, 2014), and the
Examiner’s Final Office Action (“Final Act.,” mailed July 3, 2013) and
Answer (“Ans.,” mailed Oct. 23, 2014).
2 According to Appellants, the real party in interest is Brand.Net (Appeal
Br. 2).
Appeal 2015-003132
Application 12/780,842
Introduction
Appellants’ application relates to “online display advertising” and,
more particularly, to “techniques for creating, monitoring, and controlling
the representation of guaranteed advertising campaigns managed by an ad
network with the use of an external, third-party ad server” (Spec. 12).
Claims 1 and 11 are the independent claims on appeal. Claim 1,
reproduced below, is illustrative of the subject matter on appeal:
1. An ad network system for optimizing delivery of online
display advertisement inventory, comprising:
an advertiser management system to manage and acquire
data for a set of advertising campaigns for a set of advertisers;
a publisher management system to manage and acquire
data for inventory at publishers’ sites and applications; and
a delivery management system to manage a set of
representations of the set of advertising campaigns in a third-
party ad server in order for the ad server to acquire and deliver
advertising inventory during the set of advertising campaigns
that meets a set of guarantees for the set of advertising
campaigns, the delivery management system including a state
description that is periodically updated, the state description
including a description of the set of representations and a
schedule for their modification;
wherein the description of the set of representations is
modified by the delivery management system during the
advertising campaigns based at least in part on an existing state
description, an updated supply description including a forecast
of expected future impressions, and an updated demand
description based on a remaining debt for every guarantee for
the set of advertising campaigns.
(Appeal Br., Claims App.)
2
Appeal 2015-003132
Application 12/780,842
Rejections on Appeal
The Examiner maintains, and Appellants appeal, the following
rejections:
I. Claims 1 and 11—13 stand rejected under 35 U.S.C. § 101
as being directed to non-statutory subject matter.3
II. Claims 1 and 11—13 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Ozer (US
2005/0021403 Al, pub. Jan. 27, 2005) and Chickering
(US 2010/0191558 Al, iss. July 29, 2010) (Ans. 2).
ANALYSIS
Rejection I (Unpatentable subject matter)
Claims 1 and 11—13
The Court in Alice emphasized the use of the two-step framework for
analysis of patentability set forth in Mayo Collaborative Services v.
Prometheus Laboratories, Inc., 132 S.Ct. 1289 (2012):
First, we determine whether the claims at issue are directed to
one of those patent-ineligible concepts. If so, we then ask,
“[wjhat else is there in the claims before us?” To answer that
question, 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 application.
Alice Corp. Pty. Ltd., 134 S. Ct. 2347, 2355 (2014). See also USPTO
2014 Interim Guidance on Patent Subject Matter Eligibility, 79 Fed.
Reg. 74,618, 74,621 (Dec. 16, 2014).
3 This rejection is set forth in the Answer pursuant to the procedures for a
new ground of rejection (Ans. 2).
3
Appeal 2015-003132
Application 12/780,842
The Examiner determines that claims are directed to managing and
acquiring advertising campaign data and inventory data for the purpose of
forecasting or predicting future impressions and enhancing revenue, which is
a fundamental economic practice and which represents methods of
organizing human activities (Ans. 4).
The Examiner further determines that the steps or acts performed (e.g.,
utilizing a publisher management system, publisher management system,
delivery management system and a third party ad server) in independent
system claims 1 and 11 are merely instructions to apply the abstract idea and
use conventional computer functions, and are therefore not enough to quality
as “significantly more” than the abstract idea (Ans. 5).
Appellants argue that the Examiner’s reasoning is without evidence in
reaching the conclusions that the claims are a fundamental economic activity
or a method of organizing human activity (Reply Br. 2). Appellants assert
that the Examiner fails to give weight to the limitations that recite specific
apparatuses and computer systems for delivering the tangible result of
delivering advertising inventory during a set of advertising campaigns that
meets a set of guarantees for a set of advertising campaigns (id.). Appellants
further argue that the claims recite more than an abstract idea, and
specifically recite a system to acquire data for a set of advertisers, a system
to acquire data for inventory at publishers’ sites, and a system to meet a set
of guarantees by delivering advertising inventory (id. at 2—3).
Under step one of the Alice framework, we agree with the Examiner
and determine that the claims are each directed to a method of delivering on
a guarantee. This is an abstract idea because it is a fundamental economic
activity. See Alice, 134 S. Ct. at 2356. The claims accomplish the method
4
Appeal 2015-003132
Application 12/780,842
of delivering on guarantees in business by forecasting whether the
guarantees will be met and adjusting practices to better deliver on the
guarantees, which is the heartbeat of commerce.
Under step two of the Alice framework, we determine that the fact that
the abstract idea is set in the context of a particular business, here between a
publisher and an advertiser, does not transform the idea into patentable
subject matter.4 We have reviewed the additional limitations of the claims,
and we agree with and adopt the findings of the Examiner on page 5 of the
Answer. We determine that the additional limitations, taken individually
and as a whole in the ordered combination, do not add significantly more
than the abstract idea or transform the abstract idea into patentable subject
matter. We note, in particular, that the claims recite “a forecast of expected
impressions,” which remains an abstraction.
We, therefore, sustain the rejection under 35 U.S.C. § 101 of claims 1
and 11—13.
Rejection II (Obviousness)
Independent claim 1
We are persuaded by Appellants’ argument that Chickering fails to
disclose “an updated supply description including a forecast of expected
future impressions,” as recited in independent claim 1, i.e.,
4 Although claim 1 recites a “system”, the claimed system fails to recite even
a handful of generic computer components configured to implement the
implement the claimed idea. Thus, we find the term “system” to mean, an
organized or established procedure (httpsi/Vwww.merriam-
webster.com/dietionarv/svstem (last visited 2/21/2017), which we find is
merely the organization of claimed abstract steps.
5
Appeal 2015-003132
Application 12/780,842
wherein the description of the set of representations is
modified by the delivery management system during the
advertising campaigns based at least in part on an existing state
description, an updated supply description including a forecast
of expected future impressions, and an updated demand
description based on a remaining debt for every guarantee for
the set of advertising campaigns
(Appeal Br. 6—7). The Examiner relies on the disclosure in Chickering
23—24) of estimating available impressions in determining whether to accept
an order for advertising, i.e., of accepting only those advertising offers that
can be fulfilled (Ans. 16—19). However, the portions of Chickering relied on
by the Examiner do not disclose doing so “during the advertising campaign,”
as recited, i.e., after the order has been booked. Nor does Chickering
disclose an “updated” supply description, as recited. Therefore, we do not
sustain the Examiner’s rejection under 35 U.S.C. § 103 of independent claim
1.
Independent claim 11 and dependent claims 12 and 13
Independent claim 11, the sole independent claim before us, contains
different language, e.g., “an optimization module” and “a translator.”
Nevertheless, for similar reasons as for independent claim 1, we are
persuaded by Appellants’ argument that Chickering fails to disclose the
recited limitations (Appeal Br. 8). The Examiner relies on portions of
Chickering (H 21, 25) which relate to estimations of available inventory at
the time an order is placed (Ans. 20-22). We are persuaded by Appellants
that these portions of Chickering do not disclose an “optimization” “to
acquire and deliver advertising inventory during the set of advertising
campaigns,” as recited by independent claim 11. We, therefore, do not
6
Appeal 2015-003132
Application 12/780,842
sustain the Examiner’s rejection under 35 U.S.C. § 103 of independent claim
11, and claims 12 and 13, which depend therefrom.
DECISION
The Examiner’s decision to reject claims 1 and 11—13 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
7