Ex Parte Error et al

Patent Trial and Appeal Board

Jun 28, 2018

10608442 (P.T.A.B. Jun. 28, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
10/608,442 06/26/2003
72058 7590 07/02/2018
Kilpatrick Townsend & Stockton LLP
Adobe Systems, Inc. 58083
Mailstop: IP Docketing - 22
1100 Peachtree Street, Suite 2800
Atlanta, GA 30309-4530
FIRST NAMED INVENTOR
Brett Error
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.
58083-857826 (00004) 7141
EXAMINER
JASMIN, LYNDA C
ART UNIT PAPER NUMBER
3629
NOTIFICATION DATE DELIVERY MODE
07/02/2018 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):
ipefiling@kilpatricktownsend.com
KTSDocketing2@kilpatrick.foundationip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BRETT ERROR, CHRIS ERROR,
and BRIAN CURRAN
Appeal2017-000437
Application 10/608,442
Technology Center 3600
Before MURRIEL E. CRAWFORD, BRADLEY B. BAYAT, and
MATTHEWS. MEYERS, Administrative Patent Judges.
CRAWFORD, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants 1 seek our review under 35 U.S.C. § 134 of the Examiner's
final decision rejecting claims 1, 2, 4-6, 17, 26-31, and 34-39. 2 We have
jurisdiction over the appeal under 35 U.S.C. § 6(b).
1 Appellants identify Adobe Systems Incorporated as the real party in
interest. Appeal Br. 4.
2 Claims 3, 7-16, 18-25, 32, and 33 have been canceled.
Appeal2017-000437
Application 10/608,442
BACKGROUND
Appellants' invention is directed to "tracking user traffic on websites,
and more specifically, to a method and system for generating custom events
and attributes related to those events to be collected and analyzed by a data
collection server." Spec. ,i 2.
Claim 1 is illustrative:
1. A method for customizing traffic tracking for an online
content site accessed via the Internet, the method comprising:
generating by a processor, tracking code for a content
page of a content site;
providing by the processor, a graphical user interface
comprising user interface elements for specifying creation of a
custom event;
receiving user input, by the processor via the graphical
user interface, defining the custom event by specifying a
combination of a content item and an interaction with the
content item, wherein the combination of the content item and
the interaction is specific to the content site;
generating, by the processor, custom configuration data
based on the custom event specified through the user input,
wherein the custom configuration data comprises data
identifying the combination of the interaction and the content
item that is specific to the content site; and
providing, by the processor, the custom configuration
data for embedding into the tracking code for the content page
of the content site,
wherein embedding the custom configuration data into
the tracking code modifies the tracking code for tracking
occurrences of the custom event.
The Examiner relies on the following prior art reference as evidence
of unpatentability:
Ramraj
Messer
Niffenegger
US 2002/0174174 Al
US 7,020,622 Bl
WO 01/31492 A2
2
Nov. 21, 2002
Mar. 28, 2006
May 3, 2001
Appeal2017-000437
Application 10/608,442
Appellants appeal the following rejections:
Claims 1, 2, 4-6, 17, 26-31, and 34-37 under 35 U.S.C. § 101 as
being directed to non-statutory subject matter.
Claims 1, 2, 4-6, 17, 26, 29-31, 34, and 37-39 under 35 U.S.C.
§ 103(a) as unpatentable over Niffenegger in view of Ramraj.
Claims 27 and 35 under 35 U.S.C. § 103(a) as being unpatentable
over Niffenegger and Ramraj, and further in view Messer.
Claims 28 and 36 under 35 U.S.C. § 103(a) as being unpatentable
over Niffenegger, Ramraj, and Messer, and further in view of Official
Notice.
PRINCIPLES OF LAW
An invention is patent eligible if it claims a "new and useful process,
machine, manufacture, or composition of matter." 35 U.S.C. § 101. The
Supreme Court, however, has long interpreted § 101 to include implicit
exceptions: "[l]aws of nature, natural phenomena, and abstract ideas" are
not patentable. E.g., Alice Corp. Pty. Ltd. v. CLS Bank Int'!, 134 S. Ct.
2347, 2354 (2014).
In determining whether a claim falls within the excluded category of
abstract ideas, we are guided in our analysis by the Supreme Court's two-
step framework, described in Mayo and Alice. Id. at 2355 ( citing Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66 (2012)). In
accordance with that framework, we first determine whether the claim is
"directed to" a patent-ineligible abstract idea. See Alice, 134 S. Ct. at 2356
("On their face, the claims before us are drawn to the concept of
intermediated settlement, i.e., the use of a third party to mitigate settlement
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Application 10/608,442
risk."); Bilski v. Kappas, 561 U.S. 593, 611 (2010) ("Claims 1 and 4 in
petitioners' application explain the basic concept of hedging, or protecting
against risk .... "); Diamond v. Diehr, 450 U.S. 175, 184 (1981)
("Analyzing respondents' claims according to the above statements from our
cases, we think that a physical and chemical process for molding precision
synthetic rubber products falls within the § 101 categories of possibly
patentable subject matter."); Parker v. Flook, 437 U.S. 584, 594-95 (1978)
("Respondent's application simply provides a new and presumably better
method for calculating alarm limit values."); Gottschalk v. Benson, 409 U.S.
63, 64 (1972) ("They claimed a method for converting binary-coded decimal
(BCD) numerals into pure binary numerals.").
The patent-ineligible end of the spectrum includes fundamental
economic practices, Alice, 134 S. Ct. at 2357; Bilski, 561 U.S. at 611;
mathematical formulas, Parker, 437 U.S. at 594-95; and basic tools of
scientific and technological work, Gottschalk, 409 U.S. at 69. On the patent-
eligible side of the spectrum are physical and chemical processes, such as
curing rubber, Diamond, 450 U.S. at 182 n.7, "tanning, dyeing, making
water-proof cloth, vulcanizing India rubber, smelting ores," and a process
for manufacturing flour, Gottschalk, 409 U.S. at 69.
If the claim is "directed to" a patent-ineligible abstract idea, we then
consider the elements of the claim-both individually and as an ordered
combination-to assess whether the additional elements transform the nature
of the claim into a patent-eligible application of the abstract idea. Alice, 134
S. Ct. at 2355. This is a search for an "inventive concept"-an element or
combination of elements sufficient to ensure that the claim amounts to
"significantly more" than the abstract idea itself. Id.
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Application 10/608,442
The Federal Circuit in DDR Holdings, LLC v. Hotels.com, L.P., 773
F.3d 1245 (Fed. Cir. 2014), determined that the claims satisfied Alice step
two because "the claimed solution is necessarily rooted in computer
technology in order to overcome a problem specifically arising in the realm
of computer networks." Id. at 1257. As a result, the DDR court held the
claims patent eligible regardless of whether they are characterized as an
abstract idea under Alice step one. See id.
ANALYSIS
Rejection under 35 U.S. C. §1 OJ
The Examiner holds that the claims are directed to setting up targeted
tracking information for a website and, therefore, are directed to an abstract
idea. The Examiner finds that it is long held in targeted advertising to
identify what information you want monitored to determine effectiveness.
Final Act. 2-3. In regards to the second step of the Alice analysis, the
Examiner holds that the additional steps of providing an interface, receiving
inputs, and providing data are all insignificant generic computer activities.
The Appellants argue that the claims recite significantly more than
any abstract idea because they address the technical problem that involves
customizing traffic tracking for an online content site accessed via the
Internet and is an Internet-centric problem unique to the Internet realm.
Appeal Br. 17-18. Appellants also argue that the claims are rooted in
computer technology because the steps of generating custom configuration
data based on the custom event specified through the user and providing
custom configuration for embedding into the tracking code are functions
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Application 10/608,442
that, individually and in combination, require computing devices for their
performance. Id. at 18.
Appellants' Specification discloses that a data collection system
provider may create a set of web bug requests that a website operator can
paste in web pages. The web bugs have been created by the data collection
provider to identify specific events such as opening a home page or checking
out a page. The events are coded in the web bug request itself. However, a
web operator cannot change the event identified without having the data
collection provider modify the code. As the web provider cannot change the
events without the aid of the data collection provider, the flexibility of the
web operators to accurately describe events they want to track is diminished
(Spec. ,i,i 10-11 ). Because the web operator must enlist the aid of the data
collection provider, making changes is costly and inefficient (id. ,i 14). The
present invention provides a system wherein the web provider can make
changes to the web bug without enlisting the aid of the data collection
provider. The method of claim 1 includes the steps of receiving user (web
provider) input by the processor defining an event and content item for a
specific content site, generating by the processor custom configuration data,
providing custom configuration data, and embedding the custom
configuration data into a tracking code for the content page of the site. In
this way, the web provider can modify the events tracked without the aid of
the data collection provider. As such, the instant application and claims are
directed to solving data collection system problems on a website.
We agree with the Appellants' argument that claim 1 is directed to
problem unique to the Internet realm. The instant claims are analogous to
the claims in DDR, 773 F.3d at 1257, where the court noted that a claim may
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amount to more than any abstract idea recited in the claims when it
addresses a business challenge, such as "retaining website visitors," where
that challenge is particular to a specific technological environment, such as
the Internet. In DDR, the court stated that the "patent's claims address the
problem of retaining website visitors that, if adhering to the routine,
conventional functioning of Internet hyperlink protocol, would be instantly
transported away from a host's website after 'clicking' on an advertisement
and activating a hyperlink." DDR, 773 F.3d at 1257. This was done in the
claim by serving a composite page with content based on the link that was
activated to serve the page.
In the instant case, the problem addressed was the inability of the vveb
provider to change the events tracked without the aid of the data collection
provider because the data coHection provider was the only one with the
technical ability to change the code that tracts events. This is a problem
unique to the Inten1et and cornputer technology and, thus, amounts to
significantly more than an abstract idea.
In view of the foregoing, we will not sustain the Examiner's rejection
of claim 1. We will also not sustain this rejection as it is directed to the
remaining claims subject to this rejection for the same reason.
Rejections under 35 U.5'.C. § 103
\Ve will not sustain the rejection of claim l as unpatentable over
Niffenegger and Ramraj because we agree with the Appellants that the prior
art does not disclose generating data identifying the combination of the
interaction and the content of item that is speci fie to the content site as
recited in claim 1. The Examiner relies on lines 112----115 of Niffenegger for
teaching this subject matter. Final Act. 3.
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Application 10/608,442
\Ve find that Niffenegger discloses at lines 51----58 that the problem
sought to be solved is that prior art systems track user behavior by a specific
website and do not track behavior with respect to ads over a number of
diverse vvebsites. Niffenegger further discloses at lines 112----115, which
were relied on by the Examiner for disclosing the claimed subject matter,
that an advertiser can customize content, determine ad rates, and develop
user profiles based data related to whether an ad is visible on the screen, how
long the ad is visible, and what user interactions, if any, are taken wHh
respect to the ad. \Ve agree with the Appellants that there is no disclosure
that the data used is specific to a content site as required by claim l.
Therefore, we will not sustain the rejection of claim 1. vVe also will not
sustain the rejections of the rernaining claims for the same reason.
DECISION
We do not affirm the Examiner's § 101 rejection.
We do not affirm the Examiner's § 103 rejections.
ORDER
REVERSED
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