Ex Parte Flood et al

Patent Trial and Appeal Board

Jul 27, 2018

13418715 (P.T.A.B. Jul. 27, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/418,715 03/13/2012
21839 7590 07/31/2018
BUCHANAN, INGERSOLL & ROONEY PC
POST OFFICE BOX 1404
ALEXANDRIA, VA 22313-1404
FIRST NAMED INVENTOR
Kevin Flood
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.
0079955-000003 9274
EXAMINER
NGUYEN, NGA B
ART UNIT PAPER NUMBER
3683
NOTIFICATION DATE DELIVERY MODE
07/31/2018 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):
ADIPDOC 1@BIPC.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KEVIN FLOOD, MICHAEL HARTY,
and MICHAEL DUMA
Appeal2017-004600
Application 13/418,715 1
Technology Center 3600
Before ELENI MANTIS MERCADER, NORMAN H. BEAMER, and
ADAM J. PYONIN, Administrative Patent Judges.
BEAMER, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
Final Rejection of claims 1-22. We have jurisdiction over the pending
rejected claims under 35 U.S.C. § 6(b).
We affirm and institute a NEW GROUND OF REJECTION within
the provisions of 37 C.F.R. § 41.50(b) (2012).
1 Appellants identify PowerLinks Media Limited as the real party in interest.
(App. Br. 2.)
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Application 13/418,715
THE INVENTION
Appellants' disclosed and claimed invention is directed to an
embedding of contextually-relevant advertisements in a webpage. (Spec.
Independent claims 1 and 16, reproduced below, are illustrative of the
subject matter on appeal:
1. A method for displaying an advertisement, comprising:
receiving product data describing a plurality of products
and services from at least one advertiser,
generating, using a processor in a processing unit,
standardized product data from the received product data;
storing the standardized product data in a product data
database of the processing unit;
generating, using the processor in the processor unit,
keywords from the standardized product data;
assigning, using the processor in the processing unit, a
priority value to each keyword in the plurality of keywords
based on keyword contextual information, user information,
and performance information;
analyzing, using the processor in the processing unit, a
webpage to identify a plurality of words displayed by the
webpage;
assigning, using the processor in the processing unit, a
weight value to each word in the plurality of words based on
word contextual information and user information;
selecting, using the processor in the processing unit, a
word in the plurality of the words based on the assigned word
weight value;
comparing, using the processor in the processing unit, the
selected word to the plurality of keywords to obtain at least one
matched keyword, wherein the at least one matched keyword is
generated based on the selected word and is stored in the
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keyword database when the selected word is not found in the
keyword database;
selecting, using the processor in the processing unit, at
least one keyword from the at least one matched keyword based
on the assigned keyword priority value; and
modifying the webpage such that when a user of the
webpage interacts with the selected word displayed by the
webpage, an advertisement for the product or service
corresponding to the at least one keyword is displayed.
16. A method for distributing advertisements, comprising:
receiving product data corresponding to a plurality of
goods and services from a plurality of advertisers;
normalizing, using a computer including a processor, the
received product data, such that the product data is formatted
into a single layout;
storing the normalized product data in a database;
generating keywords from the normalized product data,
the generated keywords being stored in the database;
assigning, using the processor of the computer, a priority
value to each good and service of the plurality of goods and
services;
corresponding, using the processor of the computer, each
good and service of the plurality of goods and services to at
least one keyword of the plurality of keywords;
associating, in the database, using the processor of the
computer, the product data corresponding to each good and
service of the plurality of goods and services to the
corresponding at least one keyword;
receiving a request for an advertisement for a specified
keyword of the plurality of keywords;
selecting, using the processor of the computer, at least
one specified good or service based on the priority value of
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each good or service corresponding to the specified keyword;
and
transmitting a reply to the request for an advertisement,
the reply including the product data corresponding to the at
least one specified good or service.
REJECTIONS
The Examiner rejected claims 1-22 under 35 U.S.C. § 101 as being
directed to non-statutory subject matter. (Final Act. 6.)
The Examiner rejected claims 1-15 under 35 U.S.C. § I03(a) as being
unpatentable over Henkin et al. (US 2009/0012869 Al, pub. Jan. 8, 2009)
(hereinafter "Henkin") in view of Ramsay (US 2012/0254149 Al, pub. Oct.
4, 2012). (Final Act. 9.)
The Examiner rejected claims 16-22 under 35 U.S.C. § I03(a) as
being unpatentable over Henkin in view of Wasserman et al. (US
2012/0310899 Al, pub. Dec. 6, 2012) (hereinafter "Wasserman"). (Final
Act. 19.)
ISSUES ON APPEAL
Appellants' arguments in the Appeal Brief present the following
issues: 2
Issue One: Whether the Examiner erred in finding claims 1-22 as
directed to non-statutory subject matter. (App. Br. 4--10.)
2 Rather than reiterate the arguments of Appellants and the positions of the
Examiner, we refer to the Appeal Brief (filed Feb. 8, 2016); the Reply Brief
(filed Jan. 23, 2017); the Final Office Action (mailed Sept. 8, 2015); and the
Examiner's Answer (mailed Nov. 21, 2016) for the respective details.
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Issue Two: Whether the Examiner erred in finding the combination
of Henkin and Ramsay teaches or suggests the independent claim 1
limitation of:
comparing, using the processor in the processing unit, the
selected word to the plurality of keywords to obtain at least one
matched keyword, wherein the at least one matched keyword is
generated based on the selected word and is stored in the
keyword database when the selected word is not found in the
keyword database,
and the similar limitations recited in independent claims 8 and 15. (App. Br.
10-11.)
Issue Three: Whether the Examiner erred in finding the combination
of Henkin and Wasserman teaches or suggests the independent claim 16
limitation of:
assigning, using the processor of the computer, a priority
value to each good and service of the plurality of goods and
services,
and the similar limitations recited in independent claims 19 and 22. (App.
Br. 12.)
ANALYSIS
Issue One
The Examiner concludes the pending claims are patent-ineligible
under 35 U.S.C. § 101 because the claims recite an abstract idea:
The claims recite the method for displaying an advertisement,
including receiving product data, generating product data,
storing data, generating keywords, assigning a priority value,
analyzing a webpage, assigning a weight value, selecting a
word, comparing the selected word, selecting one keyword, and
modifying the webpage. In other words, the claims recite
receiving, storing, generating, analyzing, comparing, and
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selecting data in order to modify the data. This is simply
receiving, storing, generating, analyzing, comparing, and
selecting data which can be performed mentally or in a
computer and is similar to the kind of ["]organizing human
activity["] and is an idea of itself. ... Thus, the claims are
directed to an abstract idea.
(Final Act. 6-7.)
Appellants argue, inter alia, that "[l]ike the problem being address[ed]
by the claims in DDR [Holdings, LLC v. Hotels.com L.P., 773 F.3d 1245
(Fed. Cir. 2014)], claims 1-15 here address a business problem unique to the
online advertising marketplaces created by the Internet." (App. Br. 7 .)
Regarding claims 1-15, Appellants contend "the user will see contextually-
relevant advertisements based on the generated matched keyword so that the
advertising opportunity presented by the user's viewing of the web page is
not missed." (Id. at 6-7.)
Regarding claims 16-22, Appellants contend "[t]he wording of
independent claims 16-22 [has] not been properly considered" (App. Br. 6)
and "[t]he Examiner's Answer again fails to even address this claim wording
when discussing the rejection of the claims under 35 U.S.C. § 101." (Reply
Br. 2 ( emphasis omitted).)
We are not persuaded by Appellants' arguments regarding claims 1-
15; however, we are persuaded by Appellants' arguments regarding claims
16-22.
The Supreme Court has long held that "[l]aws of nature, natural
phenomena, and abstract ideas are not patentable." Alice Corp. Pty. Ltd. v.
CLS Bankint'l, 134 S. Ct. 2347, 2354 (2014) (quoting Assoc.for Molecular
Pathology v. Myriad Genetics, Inc., 596 U.S. 576, 598-99 (2013)). The
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"abstract ideas" category embodies the longstanding rule that an idea, by
itself, is not patentable. Alice Corp., 134 S. Ct. at 2354--55 (quoting
Gottschalkv. Benson, 409 U.S. 63, 67 (1972)).
In Alice, the Supreme Court sets forth an analytical "framework for
distinguishing patents that claim laws of nature, natural phenomena, and
abstract ideas from those that claim patent-eligible applications of those
concepts." Id. at 2355. The first step in the analysis is to "determine
whether the claims at issue are directed to one of those patent-ineligible
concepts," such as an abstract idea. Id. If the claims are directed to a patent-
ineligible concept, the second step in the analysis is to consider the elements
of the claims "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. ( quoting Mayo Collaborative
Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 79, 78 (2012)). In other
words, the second step is to "search for an 'inventive concept'-i.e., an
element or combination of elements that is 'sufficient to ensure that the
patent in practice amounts to significantly more than a patent upon the
[ineligible concept] itself."' Id. (quoting Mayo, 566 U.S. at 73.) The
prohibition against patenting an abstract idea "'cannot be circumvented by
attempting to limit the use of the formula to a particular technological
environment' or adding 'insignificant postsolution activity."' Bilski v.
Kappas, 561 U.S. 593, 610-11 (2010) (internal citation omitted.)
Turning to the first step of the Alice inquiry, we agree with the
Examiner's finding that, unlike the claims in DDR Holdings, "the present
claims 'merely recite the performance of some business practice known
from the pre-Internet world along with the requirement to perform it on the
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Internet"' (Ans. 24 (emphasis omitted)) and "do not overcome [a] problem
arising in computer networks, nor provide improvement to the functioning of
[the] computer/ computer network itself." (Id. at 25.)
There is no definitive rule to determine what constitutes an "abstract
idea." Rather, the Federal Circuit has explained that "both [it] and the
Supreme Court have found it sufficient to compare claims at issue to those
claims already found to be directed to an abstract idea in previous
cases." Enfzsh, LLC v. Microsoft Corp., 822 F.3d 1327, 1334 (Fed. Cir.
2016); see also Amdocs (Israel) Ltd. v. Openet Telecom, Inc., 841 F.3d 1288,
1294 (Fed. Cir. 2016) (explaining that, in determining whether claims are
patent-eligible under § 101, "the decisional mechanism courts now apply is
to examine earlier cases in which a similar or parallel descriptive nature can
be seen-what prior cases were about, and which way they were decided").
The Federal Circuit also noted that "examiners are to continue to determine
if the claim recites (i.e., sets forth or describes) a concept that is similar to
concepts previously found abstract by the courts." Amdocs, 841 F.3d at
1294 n.2 (internal citation omitted.)
Here, the claims are similar to the claims that the Federal Circuit
determined are patent ineligible in Intellectual Ventures I LLC v. Capital
One Bank (USA), 792 F.3d 1363, 1369--70 (Fed. Cir. 2015) (tailoring web
page information presented to a user based on particular information). The
Federal Circuit has also held similar data manipulation claims to be directed
to patent-ineligible abstract ideas - see Digitech Image Techs., LLC v.
Elecs. For Imaging, Inc., 758 F.3d 1344, 1351 (Fed. Cir. 2014) (employing
mathematical algorithms to manipulate existing information); OIP Tech.,
Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1362---63 (Fed. Cir. 2015) (offer-
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based price optimization); Accenture Global Servs., GmbH v. Guidewire
Software, Inc., 728 F.3d 1336, 1346 (Fed. Cir. 2013) (generating tasks in an
insurance organization); Versata Dev. Grp., Inc. v. SAP Am., Inc., 793 F.3d
1306, 1333-34 (Fed. Cir. 2015) (price-determination method involving
arranging organizational and product group hierarchies).
The data gathering and analyzing steps recited in claim 1 is an abstract
mental process that can "be performed in the human mind, or by a human
using a pen and paper." CyberSource Corp. v. Retail Decisions, Inc., 654
F.3d 1366, 1372 (Fed. Cir. 2011). The steps recited in claim 1 tailor
information based on a keyword, akin to the "user's personal characteristics"
held as an abstract idea in Intellectual Ventures. See Intellectual Ventures,
792 F.3d at 1369.
Turning to the second step of the Alice inquiry, we find nothing in the
claims that adds anything "significantly more" to transform the abstract idea
of displaying an advertisement. Alice, 134 S. Ct. at 2357. Beyond an
abstract idea, the claims merely recite "'well-understood, routine,
conventional activit[ies]."' Id. at 2359 (quoting Mayo, 566 U.S. at 73).
In particular, we agree with the Examiner that the "computer
processor, a storage medium, a database, and software instructions" are
"'well understood, routine, conventional activities' previously known to the
industry" and claim 1 "do[ es] not purport to improve the functioning of the
computer itself, or to improve any other technology." (Ans. 25.)
Particularly, the disclosure places no limitations on the type of "processing
server" as it "may be any type of server suitable for performing the functions
as discussed herein." (Spec. ,r 24; see also id. ,r,r 20-28.) Appellants'
argument that the claims "address the technological challenges associated
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with displaying and distributing contextually-relevant advertisements to
users visiting web pages" (Reply Br. 3) is unpersuasive attorney argument
unsupported by the record. Considered individually or taken together as an
ordered combination, the elements of claim 1 fail "to 'transform' the
claimed abstract idea into a patent-eligible application." Alice, 134 S. Ct. at
2357 (quoting Mayo, 566 U.S. at 72-73, 78).
Because claims 1-15 are directed to a patent-ineligible abstract
concept and do not recite something "significantly more" under the second
prong of the Alice analysis, we sustain the Examiner's 35 U.S.C.
§ 101 rejection of claims 1-15.
Regarding claims 16-22, we agree with Appellants that the claim
wording has not been considered in the rejection of these claims. The
Examiner's recitation of the actions performed in the claims ("including
receiving product data, generating product data, storing data, generating
keywords, assigning a priority value" (Final Act. 6)) principally cover claim
1; while there is some overlap in the actions performed when claim 1 is
considered against claim 16, the rejection includes no analysis explaining
how the findings of claim 1 transfer to claim 16. Accordingly, we reverse
the Examiner's 35 U.S.C. § 101 rejection of claims 16-22.
Issue Two
In finding the combination of Henkin and Ramsay teaches or suggests
the claim 1 limitation at issue, the Examiner relies on the disclosure of
Henkin of a match type portion that may be used to determine the type of
match ( e.g. exact or fuzzy) which is to be in effect for a particular display
string record. (Final Act. 13; Henkin ,r 219.) The Examiner further relies on
the disclosure of Ramsay of ( 1) a web crawler keyword database having a
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priority level used to determine the frequency of crawling, and containing
keywords that are assigned a priority level, (2) the addition of brands that are
identified in a search query but not in the web crawler keyword database to
the database with a default priority level, and (3) the addition of new
adjective-based keywords to the database via search. (Final Act. 15-16;
Ans. 27-30; Ramsay ,r,r 91-93.)
Appellants argue that "[i]nstead of generating a matched keyword
based on the selected keyword as recited in the claims, Ramsay describes
how user input is used to populate a database. Ramsay makes no disclosure
tying the user input to another word, let alone the selected word recited in
the claims." (App. Br. 11.)
The Examiner finds, and we agree, that in Ramsay,
when a brand identified in a search query (the selected word) is
not in the web crawler keyword database, the brand is added
(generating and storing) in the keyword database, then the
brand is subsequently determined automatically based on its
frequency of appearance in subsequent search queries (matched
keyword based on the selected word).
(Ans. 28-29 (citing Ramsay ,r,r 91-93, Figs. 14--15).)
The Examiner further finds that one of ordinary skill in the art would
combine the teachings of Henkin and Ramsay "for the purpose of providing
more efficiency in identifying the matching keywords in the keyword
database by adding new keywords based on the search queries to the
keyword database." (Id. at 29.) We agree, as the method outlined by
Ramsay is similar to web crawlers updating their search indices, and is
performed "so that the brand results are up-to-date." (Ramsay ,r 91.)
Appellants do not address and challenge the Examiner's findings in the
Reply. (See Reply Br. 4.) Accordingly, we sustain the Examiner's rejection
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of independent claim 1, and independent claims 8 and 15 commensurate in
scope, as well as dependent claims 2-7 and 9-14 not argued separately. (See
App. Br. 10-11.)
Issue Three
In finding the combination of Henkin and Wasserman teaches or
suggests the claim 16 limitation at issue, the Examiner relies on the
disclosure of Henkin of ( 1) management of categories of an Ad Campaign to
limit the number of times that keywords are highlighted on page so that not
too many of the same category keywords will highlighted, and (2) sorting of
keywords in a category by priority in which a score of 100 is the highest
priority and a score of 1 is the lowest priority. (Final Act. 20-21; Ans. 30;
Henkin, Fig. 25D, ,r,r 160-161.)
Appellants argue that "Henkin describes highlighting priorities of
keywords of an advertisement campaign, not priority values of goods or
services that correspond to a keyword as recited in claims 16-22." (App. Br.
12 (citing Henkin ,r 161).)
The Examiner finds, and we agree, that Henkin teaches that "the
priority value of the current website ( equivalent to claimed 'good or
service') is set to 100 corresponding to the specified keyword" so that
"Henkin[' s] highlighting priorities of keywords of an advertisement
campaign is also the priority values of goods or service that correspond[] to
a keyword." (Ans. 30 (citing Henkin ,r,r 160-161, Fig. 25D).)
Here, the Examiner has reasonably equated the priority value of a
good as the priority value of its corresponding keyword, as taught by
Henkin, because Appellants' disclosure allows for instances of a keyword
matching the good. For example, the disclosure identifies an "iPhone®" as
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both a keyword and a good. (See Spec. ,r 32.) Further, Appellants do not
address and challenge the Examiner's findings in the Reply. (See Reply Br.
4.) Accordingly, we sustain the Examiner's rejection of independent claim
16 and independent claims 19 and 22 commensurate in scope, as well as
dependent claims 17, 18, 20, and 21 not argued separately. (See App. Br.
12.)
NEW GROUND OF REJECTION PURSUANT TO 37 C.F.R. § 4I.50(B)
Pursuant to our authority under 3 7 CPR § 41.50(b ), we enter
a new grounds of rejection of claims 16-22 under 35 U.S.C. § 101.
Turning to the first step of the Alice inquiry, we find the claims
directed to the abstract idea of distributing advertisements. The recited steps
of claim 16 include "receiving product data" and "receiving a request for an
advertisement," and correspond to data gathering. The recited steps of claim
16 further include "normalizing ... the received product data," "generating
keywords," "assigning ... a priority value," "corresponding," "associating,"
and "selecting ... at least one specified good or service," and correspond to
analyzing. The data gathering and analyzing steps recited in the claims are
an abstract mental process that can "be performed in the human mind, or by
a human using a pen and paper." CyberSource Corp., 654 F.3d at 1372.
Turning to the second step of the Alice inquiry, we find nothing in the
claims that adds anything "significantly more" to transform the abstract idea
of transmitting an advertisement. Alice, 134 S. Ct. at 2357. Beyond an
abstract idea, the claims merely recite "'well-understood, routine,
conventional activit[ies]."' Id. at 2359 (quoting Mayo, 566 U.S. at 73). For
example, the final step of claim 16 of "transmitting a reply" is postsolution
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activity. Our findings above with respect to claim 1 regarding Alice step two
are equally applicable to claim 16.
Because claims 16-22 are directed to a patent-ineligible abstract
concept and do not recite something "significantly more" under the second
prong of the Alice analysis, we reject claims 16-22 under 35 U.S.C. § 101.
CONCLUSION
For the reasons stated above, we
1. affirm the Examiner's non-statutory subject matter rejection of claims
1-15·
'
2. reverse the Examiner's non-statutory subject matter rejection of
claims 16-22;
3. affirm the Examiner's obviousness rejections of claims 1-22; and
4. add a new ground of rejection and reject claims 16-22 as directed to
non-statutory subject matter.
DECISION
The Examiner's decision rejecting claims 1-15 under 35 U.S.C. § 101
is affirmed.
The Examiner's decision rejecting claims 16-22 under 35 U.S.C.
§ 10 1 is reversed.
The Examiner's decision rejecting claims 1-22 under 35 U.S.C.
§ 103(a) is affirmed.
We enter new grounds of rejection of claims 16-22 under 35 U.S.C.
§ 101.
This decision contains a new ground of rejection pursuant to
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37 C.F.R. § 4I.50(b). 37 C.F.R. § 4I.50(b) provides "[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review."
37 CPR§ 41.50(b) also provides that the Appellants, 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 prosecution
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).
AFFIRMED
37 C.F.R. § 4I.50(b)
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