Ex Parte Drake et al

Patent Trial and Appeal Board

Nov 21, 2018

13457057 (P.T.A.B. Nov. 21, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/457,057 04/26/2012
94468 7590 11/26/2018
DISNEY ENTERPRISES INC.
c/o Patent Ingenuity, P.C.
9701 Wilshire Blvd., Suite 1000
Beverly Hills, CA 90212
FIRST NAMED INVENTOR
Edward Drake
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.
DISNEY-0560-US 9332
EXAMINER
BARGEON, BRITTANY E
ART UNIT PAPER NUMBER
3684
NOTIFICATION DATE DELIVERY MODE
11/26/2018 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):
ssimpson@patentingenuity.com
patents@patentingenuity.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte EDWARD DRAKE and ARNAUD ROBERT
Appeal2017-008966
Application 13/457,057 1
Technology Center 3600
Before ELENI MANTIS MERCADER, JASON J. CHUNG, and
JASON M. REPKO, Administrative Patent Judges.
CHUNG, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) of the Non-
Final Rejection of claims 1-5, 8-18, and 21-27. 2 We have jurisdiction
under 35 U.S.C. § 6(b).
We affirm.
INVENTION
The invention is directed to delivery of data content. Spec. ,r 2.
Claim 1 is illustrative of the invention and is reproduced below:
1. A computer program product comprising a non-
transitory computer readable storage device having a computer
1 According to Appellants, Disney Enterprises, Inc. is the real party in
interest. App. Br. 2.
2 Claims 6, 7, 19, and20 are canceled. App. Br. 15, 17. Claims 28--42 are
withdrawn. Id. at 18-22.
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Application 13/457,057
readable program stored thereon, wherein the computer readable
program when executed on a computer causes the computer to:
compose one or more auction publisher parameters as
auction selection criteria for a selection of a content delivery
network provider from one or more content delivery network
providers, the auction selection criteria being based at least in
part on one or more resource metrics for delivery of the content
through a network, the one or more resource metrics being based
on at least one of network traffic and content consumption
patterns;
send the one or more auction publisher parameters from a
content publisher to an auction engine; and
receive, from the auction engine, a selected bid based upon
a bid selection process that evaluates a bid from each of the one
or more of the plurality of content delivery network providers,
the bid being based upon the one or more auction publisher
parameters.
REJECTIONS AT ISSUE3
Claims 1-5, 8-18, and 21-27 stand rejected under 35 U.S.C. § 101 as
being directed to a judicial exception without significantly more. Non-Final
Act. 6-9.
Claims 1-5, 8-18, and 21-27 stand rejected under 35 U.S.C. § 112,
first paragraph, as failing to comply with the written description
requirement. Non-Final Act. 9-10.
Claims 1-5, 8-18, and 21-27 stand rejected under 35 U.S.C. § 112,
second paragraph, as being indefinite. Non-Final Act. 10.
3 Claims 1--4, 11-18, and 24--27 were rejected previously under 35 U.S.C.
§ I03(a) as being unpatentable over the combination of DeAngelis and Jain
et al. (US 2007/0011080 Al; published Jan. 11, 2007). Non-Final Act. 14.
That rejection has been withdrawn. Ans. 12.
2
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Application 13/457,057
Claims 1-5, 11-18, and 24--27 stand rejected under 35 U.S.C.
§ I02(b) as being anticipated by DeAngelis (US 2008/0140493 Al;
published June 12, 2008). Non-Final Act. 11-13.
Claims 8, 9, 21, and 22 stand rejected under 35 U.S.C. § I03(a) as
being unpatentable over the combination of DeAngelis and White et al. (US
7,340,428 Bl; issued Mar. 4, 2008). Non-Final Act. 14--15.
Claims 10 and 23 stand rejected under 35 U.S.C. § I03(a) as being
unpatentable over the combination of DeAngelis, White, and Chatter et al.
(US 2010/0169126 Al; published July 1, 2010). Non-Final Act. 15-16.
We have only considered those arguments that Appellants actually
raised in the Briefs. Arguments Appellants could have made, but chose not
to make, in the Briefs have not been considered and are deemed to be
waived. See 37 C.F.R. § 4I.37(c)(l)(iv).
ANALYSIS
Claims 1-5, 8--18, and 21-27 rejected under 35 U.S.C. § 101
The Examiner concludes the present claims are directed to an abstract
idea similar to Dealertrack Inc. v. Huber, 674 F.3d 1315 (Fed. Cir. 2012),
buySAFE, Inc. v. Google, Inc., 765 F.3d 1350 (Fed. Cir. 2014),
Ultramercial, Inc. v. Hulu, LLC, 722 F.3d 1335 (Fed. Cir. 2013), and
SmartGene, Inc. v. Advanced Biological Laboratories, SA, 555 F. App'x 950
(Fed. Cir. 2014). Non-Final Act. 6-7. Additionally, the Examiner
concludes the present claims do not improve the underlying technology, like
the claims in Enfzsh, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir.
2016), because the present claims are directed to an improved abstraction
that happen to use computer tools (i.e., the claims are directed to provide the
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content publisher a mechanism for efficiently managing what CDN provider
is most economical to utilize at any point in time, present or future). Id. at
2-3.
In addition, the Examiner concludes the claims do not amount to
significantly more than the abstract idea because the additional elements are:
(1) automating mental tasks and receiving; or (2) transmitting data over a
network. Id. at 7. The Examiner also concludes these additional elements
operate using well-understood, routine, and conventional functions. Id. at 7-
8.
Appellants argue the present claims use a particular set of resource
metrics as criteria for selecting a content delivery network provider in a way
that improves how a computer operates, similar to Enfzsh. App. Br. 6-7.
Appellants argue the Examiner has not responded to Appellants' specific
application to Enfzsh to the instant claims. Id. at 7. Appellants also argue
the claims amount to significantly more than the abstract idea because the
claims provide a solution for a network delivery problem. Reply Br. 3--4.
We disagree with Appellants.
Following the decision in Alice Corp. Pty. Ltd. v. CLS Bank
International, 134 S. Ct. 2347 (2014), (citing Mayo Collaborative Services
v. Prometheus Laboratories, Inc., 566 U.S. 66, 82-84 (2012)), we analyze
claims where the abstract idea judicial exception to the categories of
statutory subject matter is at issue using the following two-part analysis set
forth in Mayo: 1) Determine whether the claim is directed to an abstract
idea; and 2) if an abstract idea is present in the claim, determine whether any
element, or combination of elements, in the claim is sufficient to ensure that
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the claim amounts to significantly more than the abstract idea itself. See
Alice, 134 S. Ct. at 2350.
As to the first part of the analysis, examples of abstract ideas
referenced in Alice include: fundamental economic practices4; certain
methods of organizing human activities5; "[a]n idea ofitself'6; and,
mathematical relationships or formulas. 7 Claims that include abstract ideas
like these are examined under the second part of the analysis to determine
whether the abstract idea has been applied in an eligible manner.
As to the second part of the analysis, we consider the claim as a whole
by considering all claim elements, both individually and in combination. Id.
at 2355. Limitations referenced in Alice that may be enough to qualify as
"significantly more" when recited in a claim with an abstract idea include, as
non-limiting or non-exclusive examples: Improvements to another
technology or technical field8; improvements to the functioning of the
computer itself9; and meaningful limitations beyond generally linking the
4 Alice Corp., 134 S. Ct. at 2350: e.g., intermediated settlement, i.e., the use
of a third party intermediary to mitigate settlement risk.
5 Id. at 2356: e.g., a series of steps instructing how to hedge risk ( citing
Bilski, 561 U.S. at 599).
6 Id. at 2355: e.g., a principle, an original cause, a motive (citing Gottschalk
v. Benson, 409 U.S. 63, 67 (1972) and Le Roy v. Tatham, 14 How. 156, 175
(1852)).
7 Id. at 2350: e.g., a mathematical formula for computing alarm limits in a
catalytic conversion process (Parker v. Flook, 437 U.S. 584, 594--95
(1978)), or a formula for converting binary-coded decimal numerals into
pure binary form (Gottschalk, 409 U.S. at 71-72).
8 Id. at 2358: e.g., a mathematical formula applied in a specific rubber
molding process (citing Diamond v. Diehr, 450 U.S. 175, 177-78 (1981)).
9 Id. at 2359.
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use of an abstract idea to a particular technological environment. 10
Limitations referenced in Alice that are not enough to qualify as
"significantly more" when recited in a claim with an abstract idea include, as
non-limiting or non-exclusive examples: adding the words "apply it" ( or an
equivalent) with an abstract idea 11; mere instructions to implement an
abstract idea on a computer12; or requiring no more than a generic computer
to perform generic computer functions that are well-understood, routine and
conventional activities previously known to the industry. 13
If there are no meaningful limitations in the claim that transform the
abstract idea into a patent eligible application such that the claim amounts to
significantly more than the abstract idea itself, the claim is directed to non-
statutory subject matter under 35 U.S.C. § 101.
The Federal Circuit held "merely selecting information, by content or
source, for collection, analysis, and display does nothing significant to
differentiate a process from ordinary mental processes, whose implicit
exclusion from § 101 undergirds the information-based category of abstract
ideas." Elec. Power Grp., LLC., v Alstom S.A., 830 F.3d 1350, 1355 (Fed.
Cir. 2016). In addition, "merely presenting the results of abstract processes
of collecting and analyzing information, without more (such as identifying a
10 Id. at 2360: noting that none of the hardware recited "offers a meaningful
limitation beyond generally linking 'the use of the [method] to a particular
technological environment,' that is, implementation via computers" ( citing
Bilski v. Kappas, 561 U.S. 593, 610-11).
11 Id. at 2357-58.
12 Id.: e.g., simply implementing a mathematical principle on a physical
machine, namely a computer ( citing Mayo, 566 U.S. at 84--85).
13 Id. at 2359: e.g., using a computer to obtain data, adjust account balances,
and issue automated instructions.
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particular tool for presentation), is abstract as an ancillary part of such
collection and analysis." Id. at 1354. The Federal Circuit further stated:
[ t ]he claims in this case do not even require a new source or type
of information, or new techniques for analyzing it. ... As a result,
they do not require an arguably inventive set of components or
methods, such as measurement devices or techniques, that would
generate new data. They do not invoke any assertedly inventive
programming. Merely requiring the selection and manipulation
of information-to provide a "humanly comprehensible" amount
of information useful for users ... by itself does not transform
the otherwise-abstract processes of information collection and
analysis.
Id. at 1355 (internal citations omitted).
Alice Step 1
On this record, we see no error in the Examiner's analysis and
conclusion that the present claims are directed to an abstract idea. Non-Final
Act. 2-3, 6-9. Regarding Appellants' arguments (App. Br. 7) that the
Examiner has not responded to Appellants' specific application to Enfzsh to
the instant claims, we disagree because the Examiner concludes that the
present claims do not improve the underlying technology, like the claims in
Enfzsh, because the present claims are directed to an improved abstraction
that happen to use computer tools (i.e., the claims are directed to provide the
content publisher a mechanism for efficiently managing what CDN provider
is most economical to utilize at any point in time, present or future). Non-
Final Act. 2-3.
Moreover, we conclude the present claims are similar to the abstract
idea of collecting information, analyzing it, and displaying certain results of
the collection and analysis in Electric Power. 830 F.3d at 1355. We also
conclude the claims are similar to the abstract idea of determining a price,
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using organizational and product group hierarchies in Versata Software, Inc.,
v. SAP America, Inc., 717 F.3d 1255 (Fed. Cir. 2013).
Furthermore, the claims in Enfzsh recited means-plus-function
limitations, so the Federal Circuit looked in the Specification to determine
there was an improvement over the underlying technology (see 822 F .3d at
1336-37), whereas the alleged improvement over the underlying technology
in the present case is not recited in the claims nor do the present claims
recite means plus function limitations.
Because the present claims are directed to an abstract idea, we
proceed to step (2) of the Alice, two-part test.
Alice Step 2
On this record, we see no error in the Examiner's analysis and
conclusion that the present claims are not directed to significantly more than
the abstract idea. Non-Final Act. 2-3, 6-9. In particular, we agree with the
Examiner's conclusion that the present claims operate using well-
understood, routine, and conventional functions. 14
In addition, we note Appellants did not present any arguments
pertaining to Alice, step 2 in the Appeal Brief; rather, Appellants arguments
pertain to Enfzsh, which is an Alice, step 1 issue. See App. Br. 6-7.
Appellants' arguments filed in the Reply Brief (see Reply Br. 2-5),
14 The Specification states, "system 100 is implemented utilizing a general
purpose computer or any other hardware equivalents" ( emphasis added).
Spec. ,r 25. And the Specification states "[t]he processes described herein
may be implemented in a general, multi-purpose or single purpose
processor" ( emphasis added). Id. ,r 50. We, therefore, conclude the
Specification recites generic elements that operate well-understood, routine,
and conventional functions. Alice at 2359.
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therefore, are untimely and waived because the Examiner did not change the
theory in the Answer while Appellants' proffered new arguments in the
Reply Brief. See 37 C.F.R. § 41.41(b)(2); compare Final Act. 2-3, 6-9, with
Ans. 2-5, 12-13. Even if Appellants' Alice, step 2 arguments (Reply Br. 3-
4) in the Reply Brief were timely, which they are not, Appellants' arguments
are unpersuasive because the present claims are directed to an improved
abstraction that happen to use computer tools (i.e., the claims are directed to
provide the content publisher a mechanism for efficiently managing what
CDN provider is most economical to utilize at any point in time, present or
future). In addition, we conclude the present claims use generic elements in
combination with abstract ideas. Alice, 134 S. Ct. at 2359.
Accordingly, we sustain the Examiner's rejection of: ( 1) independent
claims 1, 14, and 27; and (2) dependent claims 2-5, 8-13, 15-18, and 21-26
under 35 U.S.C. § 101.
Claims 1-5, 8--18, and 21-27 rejected under 35 U.S.C. § 112, first
paragraph
The Examiner concludes that there is no written description support
for the limitation "one or more resource metrics for delivery of content
through a network, the one or more resource metrics being based on at least
one of network traffic and content consumption patterns" recited in claims 1,
14, and 27 because the disclosure does not describe how the resource metrics
are ultimately determined or calculated. Non-Final Act. 9-10; Ans. 5---6.
Appellants argue "quality of service" is an example of one or more
resource metrics that support this limitation. App. Br. 7-8 ( citing Spec. ,r,r
5---6); Reply Br. 4--5. We disagree with Appellants.
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At the outset, although it is obvious that "consumption patterns,"
without the modifier "content," could mean "content consumption patterns,"
obviousness is insufficient when determining whether the written description
requirement is satisfied. See Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d
1336, 1352 (Fed. Cir. 2010) (en bane). Moreover, the Specification's
disclosure of "consumption patterns" could also mean "network
consumption patterns" rather than "content consumption patterns." Spec.
,r 6. For example, the Specification uses the term "anticipated consumption"
after discussing "upcoming storage and traffic requirements," which relate to
network usage generally. Id. ,r 23. As such, Appellants did not have
possession of the limitation "content consumption patterns" recited in claims
1, 14, and 27 at the time of filing the application.
Regarding the Examiner's conclusion that the disclosure does not
describe how the resource metrics are ultimately determined or calculated
(Non-Final Act. 9--10; Ans. 5---6), the present claims do not recite
determining or calculating resource metrics, so the Examiner's conclusion
lacks relevance. Nonetheless, although it may be obvious that "quality of
service" is based on at least one of network traffic and content consumption
patterns, obviousness is insufficient when determining written description.
In fact, it is well settled that a description that merely renders the invention
obvious does not satisfy the written description requirement. See Ariad, 598
F.3d at 1352. In the present case, the Specification does not state an explicit
nexus between a "quality of service" being based on at least one of network
traffic and content consumption patterns.
Additionally, paragraph 5 of the Specification states "[t]he cost
inferred by CDN providers for utilization of CDN s may vary dramatically at
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any given time as a result of broad fluctuations in CDN resource utilization"
( emphasis added). Spec. ,r 5. Furthermore, the Specification states "[ t ]he
CDN providers typically offer pricing structures that scale with usage, for
example based on storage, resulting network traffic, and consumption
patterns" (emphases added). Id. ,r 6. We conclude the "cost"/"pricing
structures" are not reasonable examples of the claimed "one or more
resource metrics" that are "based on at least one of network traffic and
content consumption patterns." Id. ,r,r 5-6. Even if the "cost"/"pricing
structures" are reasonable examples, which they are not, it would be
insufficient to overcome the shortcoming of claims 1, 14, and 27 explicitly
stating "content consumption patterns" ( emphasis added) as discussed
supra.
Accordingly, we sustain the Examiner's rejection of: ( 1) independent
claims 1, 14, and 27; and (2) dependent claims 2-5, 8-13, 15-18, and 21-26
under 35 U.S.C. § 112, first paragraph.
Claims 1-5, 8--18, and 21-27 rejected under 35 U.S.C. § 112, second
paragraph
The Examiner concludes the metes and bounds of the present claims
are unclear because a person having ordinary skill in the art at the time of the
invention cannot define a "resource metric" and the Specification does not
describe any meaningful structure/algorithm explaining the meaning of
"resource metric." Non-Final Act. 10-11; Ans. 6-7.
Appellants argue "quality of service" is an example of one or more
resource metrics that support this limitation. App. Br. 8-9 ( citing Spec.
,r,r 5---6); Reply Br. 5. We disagree with Appellants.
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As discussed supra, the Specification lacks sufficient description as to
the definition of a "resource metric." Because the does not describe how the
"resource metrics" are determined or calculated, this term can take multiple
contradictory meanings when read in the context of this Specification. We,
therefore, conclude a person having ordinary skill in the art at the time of the
invention cannot define a "resource metric."
Accordingly, we sustain the Examiner's rejection of: (1) independent
claims 1, 14, and 27; and (2) dependent claims 2-5, 8-13, 15-18, and 21-26
under 35 U.S.C. § 112, second paragraph.
Claims 1-5, 8--18, and 21-27 rejected under 35 U.S.C. §§ 102(b) and
103(a)
The Examiner DeAngelis discloses auction engine 60 matches bidding
parameters from content providers 25 with DDS parameters 31 from owners
20; the DDS parameters define DDS connection bandwidth, anticipated
impression as a function of an event proximate the DDS, length of
impression, etc., which the Examiner maps to the limitation:
compose one or more auction publisher parameters as auction
selection criteria for a selection of a content delivery network
provider from one or more delivery network providers, the
auction selection criteria being based at least in part on one or
more resource metrics for delivery of the content through a
network, the one or more resource metrics being based on at least
one of network traffic and content consumption patterns
recited in claim 1 (and similarly recited in claims 14 and 27). Non-Final
Act. 11 (citing DeAngelis ,r,r 30, 36); Ans. 7-8. The Examiner also finds the
limitation "for a selection of a content delivery network provider from one
or more delivery network providers" recited in claims 1, 14, and 27 is
intended use and carry little patentable weight. Non-Final Act. 4--5.
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Appellants argue DeAngelis fails to disclose "for selection criteria for
a selection of a content delivery network provider" because DeAngelis
discloses auction engine 60 determines auction close time for each time slot
based upon DDS parameters 31. App. Br. 9--11 ( citing DeAngelis ,r,r 30,
36); Reply Br. 5---6. We disagree with Appellants.
At the outset, we note that paragraphs 30 and 36 of DeAngelis, cited
by the Examiner, pertain to Figure lB of DeAngelis; Figure lB pertains to
paragraph 43. DeAngelis ,r,r 30, 36, 43, Figs. lB, 2. DeAngelis discloses
using DDS parameters 31 to determine an auction winner. DeAngelis ,r 43,
Figs. lB, 2.
The cited portions of DeAngelis disclose auction engine 60 matches
bidding parameters from content providers 25 with DDS parameters 31 from
owners 20 (i.e., one or more auction publisher parameters that are used for
an eventual selection of a content delivery network provider via auction).
Non-Final Act. 11 (citing DeAngelis ,r,r 30, 36); Ans. 7-8. The cited
portions of DeAngelis disclose DDS parameters 31 define DDS connection
bandwidth, anticipated impression as a function of an event proximate the
DDS (i.e., based on one or more resource metrics for delivery of the content
through a network, the one or more resource metrics being based on at least
content consumption patterns), length of impression (i.e., also a content
consumption pattern), etc., which the Examiner maps to the limitation:
compose one or more auction publisher parameters as auction
selection criteria for a selection of a content delivery network
provider from one or more delivery network providers, the
auction selection criteria being based at least in part on one or
more resource metrics for delivery of the content through a
network, the one or more resource metrics being based on at least
one of network traffic and content consumption patterns
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recited in claim 1 (and similarly recited in claims 14 and 27). Non-Final
Act. 11 (citing DeAngelis ,r,r 30, 36); Ans. 7-8.
Accordingly, we sustain the Examiner's rejection of: (1) independent
claims 1, 14, and 27; and (2) dependent claims 2-5, 8-13, 15-18, and 21-26
under 35 U.S.C. §§ 102(b) and 103(a). 15
DECISION
We affirm the Examiner's decision rejecting claims 1-5, 8-18, and
21-27 under 35 U.S.C. §§ 101, 102(b), and 103(a).
We affirm the Examiner's decision rejecting claims 1-5, 8-18, and
21-27 under 35 U.S.C. § 112, first paragraph and second paragraph.
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
15 We disagree with the Examiner's finding that the limitation "for a
selection of a content delivery network provider from one or more delivery
network providers" recited in claims 1, 14, and 2 7 is intended use and carries
little patentable weight. Non-Final Act. 4--5. We disagree because the
limitation "the bid being based upon the one or more auction publisher
parameters" makes clear that the "selection of a content delivery network
provider" has already occurred, and, therefore, is not intended use.
Nonetheless, the intended-use issue is not dispositive of the rejections under
35 U.S.C. §§ 102(b) and 103(a) because DeAngelis anticipates claims 1, 14,
and 27.
14