Ex Parte FOK et al

Patent Trials and Appeals Board

Jun 6, 2019

12132491 - (D) (P.T.A.B. Jun. 6, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/132,491 06/03/2008
12371 7590 06/10/2019
Muncy, Geissler, Olds & Lowe, P.C./QUALCOMM
4000 Legato Road, Suite 310
Fairfax, VA 22033
Kenny FOK
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.
QC071400 7817
EXAMINER
KOLOSOWSKI-GAGER, KATHERINE
ART UNIT PAPER NUMBER
3622
NOTIFICATION DATE DELIVERY MODE
06/10/2019 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):
meo.docket@mg-ip.com
meo@mg-ip.com
ocpat_uspto@qualcomm.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KENNY FOK and ERIC CHI CHUNG YIP
Appeal2018-003257
Application 12/132,491
Technology Center 3600
Before ALLEN R. MacDONALD, NABEEL U. KHAN, and
IFTIKHAR AHMED, Administrative Patent Judges.
MacDONALD, Administrative Patent Judge.
DECISION ON APPEAL 1
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1-11, 13-26, 28-34, 36-41, 43-75, and 78-89. Appellants have
cancelled claims 12, 27, 35, 42, 76, and 77. App. Br. 23-33. We have
jurisdiction under 35 U.S.C. § 6(b). We AFFIRM.
1 Appellants indicate the real party in interest is QUALCOMM Incorporated.
App. Br. 3.
Appeal2018-003257
Application 12/132,491
Illustrative Claim
Illustrative claim 1 under appeal reads as follows ( emphasis,
formatting, and bracketed material added):
1. A method of operating a user device, comprising:
[A.] monitoring, by the user device, application specific
data that characterizes application type commonality between
two or more applications that are configured for execution on
the user device and/ or user interaction commonality between
the two or more applications;
[B.] determining, by the user device, a user interest trend
for a user of the user device based on the application type
commonality and/ or the user interaction commonality;
[C.] updating, by the user device, a local advertisement
cache maintained by the user device with one or more new
targeted advertisements that are relevant to the user interest
trend;
[D.] selecting, by the user device, a given targeted
advertisement from the one or more new targeted
advertisements in the local advertisement cache; and
[E.] outputting, by the user device, the given targeted
advertisement.
App. Br. 22 (Claims Appendix).
2
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Application 12/132,491
Subramonian et al.
Macaluso
Ramer et al.
Lerman et al.
Carion et al.
References2
US 6,701,362 Bl Mar. 2, 2004
US 2005/0215238 Al Sept. 29, 2005
US 2007 /0060099 Al Mar. 15, 2007
US 2008/0021775 Al Jan.24,2008
US 2012/0022915 Al Jan.26,2012
Re} ections3
A. 35 U.S.C. § 101
The Examiner rejected claims 1-11, 13-26, 28-34, 36-41, 43-75, and
78-89 under 35 U.S.C. § 101 because the claimed invention "includes an
abstract idea without significantly more," i.e., because the claimed invention
is directed to patent-ineligible subject matter. Final Act. 2-7.
We select claim 1 as representative. Appellants do not separately
argue claims 2-11, 13-26, 28-34, 36-41, 43-75, and 78-89. Except for our
ultimate decision, we do not discuss the § 101 rejection of claims 2-11, 13-
26, 28-34, 36-41, 43-75, and 78-89 further herein.
2 All citations herein to these references are by reference to the first named
inventor only.
3 All citations to the "Final Action" are to the Final Action mailed on
April 6, 2017.
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Application 12/132,491
B. 35 U.S.C. § 103 4
B.1.
The Examiner rejected5 claims 1-5, 10, 11, 13-20, 25, 26, 28-31, 33,
34,36-39,41,43,45--49,55-60,66,67,69, 70, 71, 73, 74, 78, 81-87,and
89 under 35 U.S.C. § 103 as being unpatentable over the combination of
Carion, Subramonian, and Macaluso. Final Act. 8-18.
We select claim 1 as representative. Appellants do not present
separately arguments for claims 2-5, 10, 11, 13-20, 25, 26, 28-31, 33, 34,
36-39, 41, 43, 45--49, 55---60, 66, 67, 69, 70, 71, 73, 74, 78, 81-87, and 89.
Except for our ultimate decision, we do not discuss the § 103 rejection of
claims 2-5, 10, 11, 13, 14, 16-20, 25, 26, 28, 29, 31, 33, 34, 36, 37, 39, 45-
49, 55---60, 66, 67, 69, 70, 71, 73, 74, 78, 81-87, and 89 further herein.
B.2.
The Examiner rejects claims 6-9, 21-24, 32, 40, 44, 50-53, 61---64,
68, 70, 72, 75, 79, 80, and 88 under 35 U.S.C. § 103 as being unpatentable
over the combination of Mallon, Eldering, and Joseph in various
combinations with numerous references. Final Act. 18-23.
Appellants do not present arguments for claims 6-9, 21-24, 32, 40,
44, 50-53, 61---64, 68, 70, 72, 75, 79, 80, and 88. Thus, the rejection of these
claims turns on our decision as to claim 1. Except for our ultimate decision,
we do not address the§ 103 rejection of claims 6-9, 21-24, 32, 40, 44, 50-
53, 61---64, 68, 70, 72, 75, 79, 80, and 88 further herein.
4 For simplicity, we label any rejections under 35 U.S.C. § 103(a), as
rejections under § 103.
5 Although not listed in the heading of the Examiner's rejection, claims 15,
30, 38, 41, and 43 are included in the body of the rejection. Final Act, 8, 12.
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Application 12/132,491
Issues on Appeal
Did the Examiner err in rejecting claim 1 as being directed to
patent-ineligible subject matter?
Did the Examiner err in rejecting claim 1 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. We
disagree with Appellants. Except as noted below, we adopt as our own
( 1) the findings and reasons set forth by the Examiner in the action from
which this appeal is taken and (2) the reasons set forth by the Examiner in
the Examiner's Answer in response to Appellants' Appeal Brief arguments.
We concur with the conclusions reached by the Examiner. We highlight the
following points.
A. Section 101
An invention is patent-eligible if it claims a "new and useful process,
machine, manufacture, or composition of matter." 35 U.S.C. § 101.
However, the Supreme Court has long interpreted 35 U.S.C. § 101 to include
implicit exceptions: "[l]aws of nature, natural phenomena, and abstract
ideas" are not patentable. E.g., Alice Corp. v. CLS Bank Int 'l, 573 U.S. 208,
216 (2014).
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court's two-step framework, described in Mayo
and Alice. Id. at 217-18 ( citing Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 566 U.S. 66, 75-77 (2012)). In accordance with that framework,
we first determine what concept the claim is "directed to." See Alice, 573
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U.S. at 219 ("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
risk."); see also 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.").
Concepts determined to be abstract ideas, and thus patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219--20; Bilski, 561 U.S. at 611);
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594--95 (1978)); and
mental processes ( Gottschalk v. Benson, 409 U.S. 63, 69 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as "molding rubber products" (Diamond v. Diehr, 450 U.S. 175, 192
( 1981) ); "tanning, dyeing, making waterproof cloth, vulcanizing India
rubber, smelting ores" (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S.
252, 267---68 (1853))); and manufacturing flour (Benson, 409 U.S. at 69
(citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
In Diehr, the claim at issue recited a mathematical formula, but the
Supreme Court held that "[a] claim drawn to subject matter otherwise
statutory does not become nonstatutory simply because it uses a
mathematical formula." Diehr, 450 U.S. at 187; see also id. at 191 ("We
view respondents' claims as nothing more than a process for molding rubber
products and not as an attempt to patent a mathematical formula."). Having
said that, the Supreme Court also indicated that a claim "seeking patent
protection for that formula in the abstract ... is not accorded the protection
of our patent laws, ... and this principle cannot be circumvented by
attempting to limit the use of the formula to a particular technological
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environment." Id. ( citation omitted) ( citing Benson and Flook); see, e.g., id.
at 187 ("It is now commonplace that an application of a law of nature or
mathematical formula to a known structure or process may well be deserving
of patent protection.").
If the claim is "directed to" an abstract idea, we tum to the second
step of the Alice and Mayo framework, where "we must examine the
elements of the claim to determine whether it contains an 'inventive
concept' sufficient to 'transform' the claimed abstract idea into a patent-
eligible application." Alice, 573 U.S. at 221 (quotation marks omitted).
"A claim that recites an abstract idea must include 'additional features' to
ensure 'that the [claim] is more than a drafting effort designed to
monopolize the [ abstract idea]."' Id. ( alterations in original) ( quoting Mayo,
566 U.S. at 77). "[M]erely requir[ing] generic computer implementation[]
fail[s] to transform that abstract idea into a patent-eligible invention." Id.
B. USPTO § 101 Guidance
The United States Patent and Trademark Office (USPTO) recently
published revised guidance on the application of§ 101. US PTO' s January
7, 2019 Memorandum, 2019 Revised Patent Subject Matter Eligibility
Guidance, 84 Fed. Reg. 50 ("2019 Memorandum"). Under that guidance,
we first look to whether the claim recites:
( 1) (see 2019 Memorandum Step 2A - Prong One) any judicial
exceptions, including certain groupings of abstract ideas (i.e.,
mathematical concepts, certain methods of organizing human activity
such as a fundamental economic practice, or mental processes); and
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(2) (see 2019 Memorandum Step 2A - Prong Two) additional
elements that integrate the judicial exception into a practical
application (see MPEP § 2106.0S(a}-(c), (e}-(h)). 6
Only if a claim (1) recites a judicial exception and (2) does not integrate that
exception into a practical application, do we then look to whether the claim:
(3) adds a specific limitation beyond the judicial exception that is not
"well-understood, routine, conventional" in the field (see MPEP
§ 2106.0S(d)); or
( 4) simply appends well-understood, routine, conventional activities
previously known to the industry, specified at a high level of
generality, to the judicial exception.
See 2019 Memorandum Step 2B.
C. Examiner's§ 101 Rejection -Alice/Mayo - Steps 1 and 2
C.1. 2019 Memorandum Step 2A - Prong One
Applying step 1 of the Alice/Mayo analysis, the Examiner determines
claim 1 recites an abstract idea:
Claim 1 recites in part, a method comprising [:]
monitoring application specific data that characterizes
application type commonality between two or more
applications configured for execution and/or user
interaction commonality between two or more
application,
6 We acknowledge that some of these considerations may be properly
evaluated under Step 2 of Alice (Step 2B of Office guidance). Solely
for purposes of maintaining consistent treatment within the Office, we
evaluate it under Step 1 of Alice (Step 2A of Office guidance). See 2019
Guidance.
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determining a user interest trend based on the application
type commonality and/ or user interaction
commonality,
updating advertisements with one or more new targeted
advertisements that are relevant to the user interest
trend,
selecting a given advertisement from the one or more new
targeted advertisements, and outputting the given
advertisement.
Final Act. 4--5 ( emphasis and bracketing added).
The Examiner further determines:
These steps describe the concept of facilitating communication
and/or targeting advertisements, which corresponds to concepts
identified as abstract ideas regarding human activities by the
courts, such as managing relationships or transactions between
people, organizing information that can be performed mentally
abstract, such as such as collecting and comparing known
information (Classen), collecting information analyzing it and
displaying certain results of the collection and analysis (Electric
Power group), organizing information through mathematical
correlations (Digitech) as well as obtaining and comparing
intangible data (CyberSource). These concepts relate to an
"idea" as well as "certain methods of organizing human
activity". These steps describe the concept of advertising, which
corresponds to concepts identified as abstract ideas by the courts,
such as displaying of advertising ( Ultramercial). The concept
described in claim 1 ... is not meaningfully different than those
"idea" as well as "organizing human activity" found by the courts
to be abstract ideas.
Final Act. 5 ( emphasis added).
C.2. 2019 Memorandum Step 2A - Prong Two
Further applying step 1 of the Alice/Mayo analysis, the Examiner
determines claim 1 is directed to an abstract idea.
There is no indication that the combination of elements improves
the functioning of a computer or improves any other technology.
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Final Act. 6.
Further, the Examiner determines:
[Appellants'] claim 1 simply recites using a computer to operate
a set of rules regarding sending and receiving - there is no
indication of an improvement of the functioning of the computer
itself, nor the individual elements of the process (i.e. sending and
receiving), nor the finalized product of advertisements.
Final Act. 24 ( emphasis added).
C.3. 2019 Memorandum Step 2B
Applying step 2 of the Alice/Mayo analysis, the Examiner determines:
The claims recite: monitoring "by the user device,", and wherein
the monitored data is occurring "on the user device," as well as
wherein the "user device" determines the user interest trend,
updates a "local advertisement cache maintained by the user
device", the user device also "selects the given advertisement,",
and outputs the given advertisement. Generic computer
components, i.e. processors, memory, communication
apparatuses, recited as performing generic computer functions
that are well-understood, routine and conventional activities
amount to no more than implementing the abstract idea with a
computerized system. Thus, taken alone, the additional elements
do not amount to significantly more than a judicial exception.
Looking at the limitations as an ordered combination adds
nothing that is not already present when looking at the elements
taken individually.
Final Act. 6.
Additionally, the Examiner determines:
The courts have found that functions similar to those of
Applicants claims of "receiving, processing, and storing data"
(See Alice Corp., 134 S. Ct. at 2360. []) and "receiving or
transmitting data over a network, e.g., using the Internet to gather
data" (See Ultramercial, [Inc. v. Hulu, LLC, 772 F.3d 709, 716-
17 (Fed Cir. 2014)]; buySAFE, Inc. v. Google, Inc., 765 F.3d
1350, 1355 (Fed. Cir. 2014) to be well-understood, routine, and
conventional functions when they are claimed in a merely
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generic manner. Courts have held computer-implemented
processes not to be significantly more than an abstract idea ( and
thus ineligible) where the claim as a whole amounts to nothing
more than generic computer functions merely used to implement
an abstract idea.
Final Act. 6.
D. Appellants'§ 101 Arguments & Panel's Analysis
D.1. 2019 Memorandum Step 2A, Prong 1
The Examiner correctly determines that claim 1 recites the following
limitations:
[A.] monitoring . . . application specific data that characterizes
application type commonality between two or more
applications that are configured for execution on the user
device and/ or user interaction commonality between the
two or more applications;
[B.] determining ... a user interest trend for a user of the user
device based on the application type commonality and/or
the user interaction commonality;
[C.] updating ... [advertisements] ... with one or more new
targeted advertisements that are relevant to the user
interest trend; and
[D.] selecting ... a given targeted advertisement from the one or
more new targeted advertisements ....
Final Act. 4--5 (bracketing added). In short, the Examiner correctly
determines that claim 1 recites a method of facilitating communication
and/or targeting advertisements; and advertising is one of certain methods
of organizing human activity identified in the 2019 Memorandum, and thus
an abstract idea. 84 Fed. Reg. at 52.
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D.2. 2019 Memorandum Step 2A, Prong 2
D.2.a.
Having determined that claim 1 recites an abstract idea, we now tum
to whether claim 1 is directed to that abstract idea. Appellants contend that
like McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299 (Fed. Cir.
2016), claim 1 "meet[ s] the Part I test set forth in Alice is by claiming a set
of rules 'allowing computer performance of a function not previously
performable by a computer' which improves an 'existing technological
process'." App. Br. 10. Appellants particularly contend:
As recognized in the [Office's] 11/02/2016 Memorandum, the
"[t]he McRO court indicated that it was the incorporation of the
particular claimed rules in computer animation that 'improved
[the] existing technological process', unlike cases such as Alice
where a computer was merely used as a tool to perform an
existing process." The Examiner is trying to limit McRO's
applicability to 3D animation lip-syncing models, which is an
overly narrow takeaway and contrary to the intent of the
11/02/2016 Memorandum .
. . . In independent claim 1, the "existing technological
process" of outputting a targeted advertisement is improved by
updating a local advertisement cache using a "user interest trend"
that is determined "based on the application type commonality
and/or the user interaction commonality", thereby satisfying 35
U.S.C. § 101 pursuant to McRO as well as the policies set forth
in the 11/02/2016 Memorandum.
App. Br. 10 ( emphasis added).
We agree with Appellants that improving a technological process may
result in integrating the judicial exception into a practical application. This
consideration has also been referred to as the search for a technological
solution to a technological problem. See Amdocs (Isr.), Ltd. v. Openet
Telecom, Inc., 841 F.3d 1288, 1300 (Fed. Cir. 2016) ("[T]his claim entails
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an unconventional technological solution ... to a technological problem
.... ").
However, as discussed supra, we conclude the Examiner correctly
determines that Appellants' claimed process is "facilitating communication
and/or targeting advertisements" which is a business problem and not a
technological problem. We do not agree with Appellants that "outputting a
targeted advertisement" is either a "technological field" or a "technological
problem" or a "technological solution." Rather, we determine that this is
directed to the field of advertising and its problems and solutions. See
Ultramercial, 772 F .3d at 715 (holding that claim "describe[ing] only the
abstract idea of showing an advertisement before delivering free content " is
patent ineligible). Appellants' argument is not persuasive.
D.2.b.
Appellants also contend:
The feature of "updating, by the user device, a local
advertisement cache maintained by the user device with one or
more new targeted advertisements that are relevant to the user
interest trend" as recited in independent claim 1, for example, is
similar to Enfish, [LLCJ v. Microsoft Corp., 822 F.3d 1327 (Fed.
Cir. 2016) because memory fetch times for a targeted
advertisement are faster when a matching advertisement is stored
in local cache memory (i.e., cache hit) as opposed to when that
targeted advertisement must be fetched remotely (i.e., cache
miss).
App. Br. 11.
Further, the Appellant notes that the CAFC has recently
established that changing the type of data stored in a cache to
increase a hit ratio is non-abstract and patent eligible under Part
I of the Alice framework. In particular, the Appellant directs the
Examiner to Visual Memory LLC v. NVIDIA Corp. [867 F .3d
1253] (Fed. Cir. 2017).
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App. Br. 12.
Appellants' argument is not persuasive. Unlike the detailed and
in-depth cache improvement disclosed and claimed in NVIDIA (e.g.,
NVIDIA' s figure 1 ), Appellants' cache is disclosed as a black box labeled as
"ADVERTISEMENT CACHE" (e.g., Appellants' figure 2). We determine
that unlike NVIDIA, Appellants claim the cache without specifying how the
cache operates. In order to transform a judicial exception into a patent-
eligible application, the additional element or combination of elements must
do "'more than simply stat[ e] the Uudicial exception] while adding the
words 'apply it."' Alice, 573 U.S. at221 (quotingMayo, 566U.S. at72).
D.2.c.
We agree with the Examiner that as to the steps of claim 1, "[ t ]here is
no indication that the combination of elements improves the functioning of a
computer or improves any other technology." Final Act. 6. In view of
Appellants' Specification, and consistent with the Examiner's
determinations, we conclude that claim 1 does not integrate the judicial
exception into a practical application. We determine claim 1 does not recite:
(i) an improvement to the functioning of a computer;
(ii) an improvement to another technology or technical field;
(iii) an application of the abstract idea with, or by use of, a
particular machine;
(iv) a transformation or reduction of a particular article to a
different state or thing; or
(v) other meaningful limitations beyond generally linking the
use of the abstract idea to a particular technological
environment.
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See MPEP §§ 2106.05(a}-(c), (e}-(h). We agree with the Examiner that
claim 1 is directed to a judicial exception.
D.3. 2019 Memorandum Step 2B
Discussing the cache (Final Act. 6, line 4), the Examiner points out:
[P]erforming generic computer functions that are well-
understood, routine and conventional activities amount to no
more than implementing the abstract idea with a computerized
system.
Final Act. 6.
We agree with the Examiner that use of a cache is well-understood,
routine and conventional. This is evidenced by the references cited during
examination. See Macaluso at 25, Ramer at 67, and Lerman at 49. At best,
Appellants use the claimed cache as built and not as part of an improvement
to the functioning of a computer system. Although claim 1 recites "more"
under step two of the Alice/Mayo analysis, we conclude the "more" is not
patentably significant. Rather, the record shows this "more" to be the
epitome of a well-understood, routine, conventional element/combination
previously known in the industry.
Because claim 1, in addition to the abstract idea, recites only a well-
understood, routine, conventional element/combination previously known in
the industry, we conclude the case law shows there is no genuine issue of
material fact regarding step two of the Examiner's Alice/Mayo analysis.
Therefore, we are unpersuaded by Appellants' argument that further
evidence is required. In view of Appellants' Specification, and consistent
with the Examiner's determinations, we determine the claims do not recite:
(vi) a specific limitation other than what is well-understood,
routine, conventional activity m the field or
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unconventional steps that confine the claim to a particular
useful application.
See MPEP § 2106.05(d).
E. Appellants '§ 103 Arguments
E.1.
Appellants contend that the Examiner erred in rejecting claim 1 under
35 U.S.C. § 103 because:
The Appellant maintains that the asserted combination is
unreasonable at least because the application data tracked by
Carion is server-specific would not be available for client-side
monitoring.
App. Br. 15 ( emphasis added).
The Appellant reminds the Examiner that the claimed "user
interest trend" is being interpreted as the "types of interactions
considered to make a profile" with respect to [0023]-[0026] of
Carion (e.g., see Page 8 of the Final Office Action). These
interactions are monitored strictly at the server in Carion ( e.g.,
see [0022] of Carion). If Subramonian's client-side monitoring
were simply added to Carion as suggested by the Examiner, the
only reasonable result would be Subramanian' s client-side
monitoring being used in parallel with Carion' s server-side
monitoring, because Carion requires server-side monitoring of
its server-hosted applications whereas Subramonian's client-
based system executes "without any server intervention" ( e.g.,
Col. 10, lines 22-29 of Subramanian). In this case,
Subramonian's client-side monitoring would not determine the
claimed "user interest trend" because the claimed "user interest
trend" is being interpreted upon server-side operation in Carion
which would not be visible to Subramanian's client-side
monitoring.
App. Br. 17.
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As to Appellants' above contention, we are not persuaded because
essentially Appellants' argument is premised on a "physical" or "bodily"
incorporation of Cari on' s entire server-side processing into Subramanian' s
client-side processing. This is not the standard. "The test for obviousness is
not whether the features of a secondary reference may be bodily
incorporated into the structure of the primary reference .... Rather, the test
is what the combined teachings of those references would have suggested to
those of ordinary skill in the art." In re Keller, 642 F.2d 413, 425, 208 USPQ
871, 881 (CCPA 1981); see also In re Sneed, 710 F.2d 1544, 1550, 218
USPQ 385, 389 (Fed. Cir. 1983) ("[I]t is not necessary that the inventions of
the references be physically combinable to render obvious the invention
under review."); In re Nievelt, 482 F.2d 965, 179 USPQ 224, 226 (CCP A
1973) ("Combining the teachings of references does not involve an ability to
combine their specific structures.").
The Examiner did not suggest Carion's entire server-side processing
should be bodily incorporated into the method of Subramanian. Rather, the
Examiner relied on Carion to show it is known in the prior art to perform the
claimed monitoring, determining, updating, and selecting functions. Final
Act. 8. Appellants go beyond this to incorporate limitations from Carion
which were not relied upon by the Examiner. Appellants then argue the
limitations the Examiner did not rely upon. We are unpersuaded by this
form of argument.
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E.2.
Appellants also contend that the Examiner erred in rejecting claim 1
under 35 U.S.C. § 103 because:
A second dispute to be resolved ... relates to whether Macaluso
cures the admitted deficiency of Carion and Subramanian to
disclose a local advertisement cache being updated specifically
based on an inter-application user interest trend. The Examiner
appears to be interpreting the "updating" feature in an overly
broad manner by parsing out associated claim language. Once
the "updating" feature is properly interpreted, Macaluso
describes advertisements being downloaded in a manner that is
not based upon an inter-application user interest trend.
App. Br. 15 ( emphasis added).
The Examiner admits that "Macaluso is not cited for the user
interest trend, merely the storage and use of cached targeted
advertisements on a user device." (e.g., see 6/16/2017 Advisory
Action). This teaching from Macaluso is not a point of dispute,
as the Appellant acknowledges that Macaluso caches
advertisements as noted in Macaluso at [0032]. However, this
contribution from Macaluso is broad, and is only relevant if the
"updating" feature of independent claim 1 is parsed to an
unreasonable extent.
The fact that Carion tracks certain application type and/or
interaction information would thereby not appear relevant to
Macaluso' s new advertisement selection scheme, since the basis
ofMacaluso's new advertisement selection scheme appears to be
strictly based on advertisement view history.
Accordingly, when "updating" is interpreted with the remainder
of the claim language in independent claim 1 for example,
Macaluso includes no suggestion of factoring "a user interest
trend for a user of the user device based on the application type
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commonality and/ or the user interaction commonality" as recited
in independent claim 1.
App. Br. 19--20.
Appellants' assertion that claim 1 is "parsed to an unreasonable
extent" is not persuasive. Beyond Appellants' assertion, we find no
explanation by Appellants as to why it is improper for the Examiner to use
Macaluso for the limited purpose of teaching local caching of
advertisements is known. Final Act. 9. 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).
Moreover, Appellants' arguments do not rebut the Examiner's
findings regarding the combined teachings of Carion, Subramonian, and
Macaluso. Final Act. 8-10. The Examiner does not cite Macaluso for the
argued "user interest trend" limitation. Rather, the Examiner cites Carion.
Final Act. 8. Thus, Appellants do not address the actual reasoning of the
Examiner's rejection. Instead, Appellants attack the Macaluso reference
singly for lacking a teaching that the Examiner relied on a combination of
references to show. It is well-established that one cannot show non-
obviousness by attacking references individually where the rejections are
based on combinations of references. See Keller, 642 F.2d at 425; In re
Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986). References must
be read, not in isolation, but for what they fairly teach in combination with
the prior art as a whole. Merck, 800 F.2d at 1097.
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Appeal2018-003257
Application 12/132,491
CONCLUSIONS
(1) The Examiner has not erred in rejecting claims 1-11, 13-26, 28-
34, 36-41, 43-75, and 78-89 under 35 U.S.C. § 101, as being directed to
patent-ineligible subject matter.
(2) The Examiner has not erred in rejecting claims 1-11, 13-26, 28-
34, 36-41, 43-75, and 78-89 as being unpatentable under 35 U.S.C. § 103.
(3) Claims 1-11, 13-26, 28-34, 36-41, 43-75, and 78-89 are not
patentable.
DECISION
The Examiner's rejection of claims 1-11, 13-26, 28-34, 36-41, 43-
75, and 78-89 under 35 U.S.C. § 101, as being directed to patent-ineligible
subject matter, is affirmed.
The Examiner's rejections of claims 1-11, 13-26, 28-34, 36-41, 43-
75, and 78-89 as being unpatentable under 35 U.S.C. § 103 are 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
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