Ex Parte Grace

Patent Trial and Appeal Board

Feb 23, 2018

13746994 (P.T.A.B. Feb. 23, 2018)

United States Patent and Trademark Office
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O.Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/746,994 01/22/2013 Mark Grace 5596 6236
22474 7590 02/27/2018
P1e.me.nts RemarH Walker PT T P
EXAMINER
4500 Cameron Valley Parkway
Suite 350
CIRNU, ALEXANDRU
Charlotte, NC 28211 ART UNIT PAPER NUMBER
3681
NOTIFICATION DATE DELIVERY MODE
02/27/2018 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):
patlaw @ worldpatents.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MARK GRACE
Appeal 2016-003288
Application 13/746,994
Technology Center 3600
Before ANTON W. FETTING, CYNTHIA L. MURPHY, and
ALYSSA A. FINAMORE, Administrative Patent Judges.
FETTING, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE1
Mark Grace (Appellant) seeks review under 35 U.S.C. § 134 of a final
rejection of claims 1—20, the only claims pending in the application on
appeal. We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b).
1 Our decision will make reference to the Appellant’s Specification, filed
January 22, 2013, Appeal Brief (“App. Br.,” filed July 30, 2015) and Reply
Brief (“Reply Br.,” filed February 2, 2016), and the Examiner’s Answer
(“Ans.,” mailed December 4, 2015), and Final Action (“Final Act.,” mailed
January 30, 2015).
Appeal 2016-003288
Application 13/746,994
The Appellant invented a way of content and advertising insertion in
visual communications. Specification para. 2.
An understanding of the invention can be derived from a reading of
exemplary claim 1, which is reproduced below (bracketed matter and some
paragraphing added).
1. A method of ad or content insertion, comprising:
[1] communicating, by a server, with a plurality of users;
[2] creating a visual talking message by a user of the plurality
of users comprising a sender, the message being for one or
more recipients comprising users of the plurality of users;
[3] adding advertisements or other content within or around the
visual talking message,
wherein the advertisements or other content comprises
one or more of an image forming part of the visual
talking message,
wherein the sender of the visual talking message controls
or determines what is selected as the advertisements or
other content,
and
wherein the visual talking message uses images in lieu or
in addition to words to convey a message or any other
type of information;
[4] sending the visual talking message with the advertisements
or other content to the one or more recipients;
and
[5] tracking the advertisements or other content through the
server.
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Application 13/746,994
The Examiner relies upon the following prior art:
Rothschild US 2001/0047294 A1
Collison US 2007/0198921 A1
Aaltonen US 2009/0068991 A1
Steelberg US 2011/0047625 A1
Gopinath US 2011/0066497 A1
Kilroy US 2011/0196871 A1
Patel US 8,539,362 B2
Nov. 29, 2001
Aug. 23, 2007
Mar. 12, 2009
Feb. 24, 2011
Mar. 17,2011
Aug. 11,2011
Sept. 17,2013
Claims 1—20 stand rejected under 35 U.S.C. § 101 as reciting a judicial
exception without significantly more.
Claims 1, 2, 8—11, 17, and 18 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Aaltonen, Rothschild, and Steelberg.
Claims 3 and 12 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over Aaltonen, Rothschild, Steelberg, and Gopinath.
Claim 4 stands rejected under 35 U.S.C. § 103(a) as unpatentable over
Aaltonen, Rothschild, Steelberg, Gopinath, and Collison.
Claims 5, 7, 14, and 16 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Aaltonen, Rothschild, Steelberg, and Patel.
Claims 6 and 15 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over Aaltonen, Rothschild, Steelberg, Patel, and Kilroy.
Claim 13 stands rejected under 35 U.S.C. § 103(a) as unpatentable over
Aaltonen, Rothschild, Steelberg, and Collison.
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Application 13/746,994
Claims 19 and 20 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Aaltonen, Rothschild, Steelberg, and Collison.
ISSUES
The issues of patent-eligible subject matter turn primarily on whether the
claims recite significantly more than abstract conceptual advice as to what a
computer is to do without reciting any implementation details.
The issues of obviousness turn primarily on whether the art applied
describes audio with visual messages and attaching advertisements so as to
form an overall message.
FACTS PERTINENT TO THE ISSUES
The following enumerated Findings of Fact (FF) are believed to be
supported by a preponderance of the evidence.
Facts Related to the Prior Art
Aaltonen
01. Aaltonen is directed to monitoring of communication dialogs or
sessions between a plurality of users or a user and a service
provider, thereby enabling management, delivery and assessment
of information content deemed relevant to the users. Aaltonen
para. 1.
02. Aaltonen describes contextual advertising, which involves
advertising that is targeted to the specific individual who is being
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exposed to the advertising. For example, contextual advertising
on the Internet provides advertising content on a web page that
also provides non-advertising related content of interest to the web
page reader. Aaltonen para. 20.
03. As part of that advertising campaign, advertising content is
distributed to a plurality of subscriber terminals, which may be,
for example, mobile devices or other devices capable of sending
and receiving text messages and outputting such messages to the
device users. The advertising content may include information in
the form of data, text, pictures, audio, and/or video. Aaltonen
para. 28.
04. The communication dialogs may include messages of the MMS
type, including, for example, picture data and/or video, sound data
as well as text. Aaltonen para. 99.
Rothschild
05. Rothschild is directed to allowing an Internet user to place an
advertisement within a personal communication, and provides a
recipient of the personal communication requesting additional
information with such information regardless of the network
device the recipient is using. Rothschild para. 4.
06. Rothschild describes giving the sender the ability to choose
which advertisements should be incorporated within his e-mails,
so the advertising message gets displayed before the sender, who
is most likely a consumer of the advertised product, and before the
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Application 13/746,994
recipient, who, by association, is more likely than not to also share
the same interests as the sender. The advertising service should be
capable of distributing e-mails and advertisements to recipients
operating on non-traditional Internet devices (e.g., mobile
phones). The service should also be flexible enough to adapt to
changes within the on-line advertising industry. Rothschild para.
18.
07. The sender network device sends a personal communication,
together with a sender-selected advertisement, to the recipient
network device. A personal communication can include, but is
not limited to, an e-mail message, text message, short message
service (SMS) message, chat-room message, instant messaging
message, video message, voice message, and any other
personalized network communications generally known to those
skilled in the art. Additionally, the personal communication can
contain message data including, but not limited to, text data,
graphic data, audio data, video data, and all other types of
electronically transmitted data generally known to those skilled in
the art. The sender-selected advertisement that is contained within
the personal communication can either be static or interactive. A
static advertisement is an icon, graphic, text message, or voice
message that is intended to provide the recipient with a simple
message, wherein the simple message can be obtained by viewing
and/or hearing the static advertisement. An interactive
advertisement is an icon, graphic, text, or voice message that can
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Application 13/746,994
be interacted with to provide the recipient with additional
communication data, wherein the additional communication data
is provided to the recipient when the recipient interacts with the
advertisement. Rothschild para. 48.
Steelberg
08. Steelberg is directed to an engine for the secure delivery of
asset-related content. Steelberg para. 7.
09. Picture messaging has become more and more popular now that
cell phones often have built in or attachable cameras to enable
people to send picture messaging back and forth. Picture
messaging is made possible through the MMS system via its
support of all kinds of photos, graphics, animation, as well as
video and audio clips. Steelberg para. 51.
ANALYSIS
Claims 1—20 rejected under 35 U.S.C. § 101 as directed to non—statutory
subject matter
The Supreme Court
set forth a framework for distinguishing patents that claim laws
of nature, natural phenomena, and abstract ideas from those that
claim patent-eligible applications of those concepts. First, []
determine whether the claims at issue are directed to one of
those patent-ineligible concepts. [] If so, we then ask, “[w]hat
else is there in the claims before us? [] To answer that question,
[] consider the elements of each claim both individually and “as
an ordered combination” to determine whether the additional
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elements “transform the nature of the claim” into a patent-
eligible application. [The Court] described step two of this
analysis as a 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.”
Alice Corp. Pty. Ltd. v CLS Bank Inti, 134 S. Ct. 2347, 2355 (2014) (citing
Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289
(2012)).
To perform this test, we must first determine whether the claims at issue
are directed to a patent-ineligible concept. The Examiner finds the claims
directed to a fundamental economic practice of advertising that involves
selecting and inserting advertising content within visual messages. Final
Act. 2. We agree.
While the Court in Alice made a direct finding as to what the claims were
directed to, we find that this case’s claims themselves and the Specification
provide enough information to inform one as to what they are directed to.
The preamble to claim 1 recites that it is a method of ad or content
insertion. The steps in claim 1 result in creating and sending an ad. The
Specification at paragraph 2 recites that the invention relates to content and
advertising insertion in visual communications. All this shows that claim 1
is directed to creating and sending an ad, i.e., advertising.
It follows from prior Supreme Court cases, and Bilski (Bilski v. Kappos,
561 U.S. 593 (2010)) in particular, that the claims at issue here are directed
to an abstract idea. Like the risk hedging in Bilski, the concept of
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advertising is a fundamental business practice long prevalent in our system
of commerce. The use of advertising is also a building block of marketing.
Thus, advertising, like hedging, is an “abstract idea” beyond the scope of
§ 101. See Alice Corp. Pty. Ltd., 134 S. Ct. at 2356.
As in Alice Corp. Pty. Ltd., we need not labor to delimit the precise
contours of the “abstract ideas” category in this case. It is enough to
recognize that there is no meaningful distinction in the level of abstraction
between the concept of risk hedging in Bilski and the concept of advertising
at issue here. Both are squarely within the realm of “abstract ideas” as the
Court has used that term. See Alice Corp. Pty. Ltd., 134 S. Ct. at 2357.
Further, claims involving data collection, analysis, and display are
directed to an abstract idea. Elec. Power Grp. v. Alstom S.A., 830 F.3d 1350,
1353 (Fed. Cir. 2016) (holding that “collecting information, analyzing it, and
displaying certain results of the collection and analysis” are “a familiar class
of claims ‘directed to’ a patent ineligible concept”); see also In re TLI
Commc’ns LLC Patent Litig., 823 F.3d 607, 611 (Fed. Cir. 2016);
FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1093—94 (Fed. Cir.
2016). Claim 1, unlike the claims found non-abstract in prior cases, uses
generic computer technology to perform data analysis, creation, and
transmission, and does not recite an improvement to a particular computer
technology. See, e.g., McRO, Inc. v. Bandai Namco Games Am. Inc., 837
F.3d 1299, 1314—15 (Fed. Cir. 2016) (finding claims not abstract because
they “focused on a specific asserted improvement in computer animation”).
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As such, claim 1 is directed to the abstract idea of analyzing, creating, and
transmitting data.
The further limitations in the remaining claims merely describe the
parameters and context for creating the ads, or, in other words, nothing more
than further details of the abstract idea. We conclude that the claims at issue
are directed to a patent-ineligible concept, and so we proceed to the second
step of the test.
The “additional elements” recited in the claims include computer and
network components such as, for example, “a server,” “a network interface,”
“a processor,” etc. And, here,
the introduction of such computer and/or network components into the
claims does not alter the analysis at Mayo step two.
[T]he mere recitation of a generic computer cannot transform a
patent-ineligible abstract idea into a patent-eligible invention.
Stating an abstract idea “while adding the words ‘apply it’” is
not enough for patent eligibility. Nor is limiting the use of an
abstract idea “‘to a particular technological environment.’”
Stating an abstract idea while adding the words “apply it with a
computer” simply combines those two steps, with the same
deficient result. Thus, if a patent’s recitation of a computer
amounts to a mere instruction to “implemen[t]” an abstract idea
“on ... a computer,” that addition cannot impart patent
eligibility. This conclusion accords with the preemption
concern that undergirds our § 101 jurisprudence. Given the
ubiquity of computers, wholly generic computer
implementation is not generally the sort of “additional
featur[e]” that provides any “practical assurance that the
process is more than a drafting effort designed to monopolize
the [abstract idea] itself.”
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Alice Corp. Pty. Ltd., 134 S. Ct. at 2358 (citations omitted).
“[T]he relevant question is whether the claims here do more than simply
instruct the practitioner to implement the abstract idea ... on a generic
computer.” Alice Corp. Pty. Ltd., 134 S. Ct. at 2359. We agree with the
Examiner (see Final Act. 3) that they do not.
Taking the claim elements separately, the function performed by the
computer at each step of the process is purely conventional. Using a
computer to create, add, send, and track data amounts to electronic data
processing—one of the most basic functions of a computer. All of these
computer functions are well-understood, routine, conventional activities
previously known to the industry. In short, each step does no more than
require a generic computer to perform generic computer functions.
Considered as an ordered combination, the computer components of
Appellant’s method add nothing that is not already present when the steps
are considered separately. Viewed as a whole, Appellant’s method claims
simply recite the concept of advertising as performed by a generic computer.
To be sure, the claims recite doing so by advising one to create a visual
talking message with selected ads and sending and tracking it. But this is no
more than abstract conceptual advice on the parameters for such advertising
and the generic computer processes necessary to process those parameters,
and the claims do not recite any particular implementation.
The method claims do not, for example, purport to improve the
functioning of the computer itself. Nor do they effect an improvement in
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any other technology or technical field. The specification spells out
different generic equipment and parameters that might be applied using this
concept and the particular steps such conventional processing would entail
based on the concept of creating and sending advertising under different
scenarios. (See e.g., Specification paras. 83—86.) They do not describe any
particular improvement in the manner a computer functions. Instead, the
claims at issue amount to nothing significantly more than an instruction to
apply the abstract idea of advertising using some unspecified, generic
computer. Under our precedents, that is not enough to transform an abstract
idea into a patent-eligible invention. See Alice Corp. Pty. Ltd., 134 S. Ct. at
2360.
As to the structural claims, they
are no different from the method claims in substance. The
method claims recite the abstract idea implemented on a generic
computer; the system claims recite a handful of generic
computer components configured to implement the same idea.
This Court has long “wam[ed] ... against” interpreting § 101 “in
ways that make patent eligibility ‘depend simply on the
draftsman’s art.’”
Alice Corp. Pty. Ltd., 134 S. Ct. at 2360.
We are not persuaded by Appellant’s argument that advertising is not a
fundamental economic practice. App. Br. 8. Advertising is as old as the use
of signage outside village pubs. Few practices are more fundamental to a
market economy than practices promoting goods and services such as
advertising.
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We are not persuaded by Appellant’s argument that one cannot insert
content on a display device over a network through a server without the
physical hardware. App. Br. 8. This is no more than a contention that a
computer is necessary to process data. “[Limiting the claims to the
particular technological environment ... is, without more, insufficient to
transform them into patent-eligible applications of the abstract idea at their
core.” Electric Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1354—55
(2016).
Appellant further argues that the asserted claims are akin to the claims
found patent-eligible in DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d
1245 (Fed. Cir. 2014). In DDR Holdings, the Court evaluated the eligibility
of claims “address [ing] 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.” Id. at 1257.
There, the Court found that the claims were patent-eligible because they
transformed the manner in which a hyperlink typically functions to resolve
a problem that had no “pre-Internet analog.” Id. at 1258. The Court
cautioned, however, “that not all claims purporting to address Internet-
centric challenges are eligible for patent.” Id. For example, in DDR
Holdings the Court distinguished the patent-eligible claims at issue from
claims found patent-ineligible in Ultramercial. See id. at 1258—59 (citing
Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715-16 (Fed. Cir. 2014)).
As noted there, the Ultramercial claims were “directed to a specific method
of advertising and content distribution that was previously unknown and
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never employed on the Internet before.” Id. at 1258 (quoting Ultramercial,
772 F.3d at 715—16). Nevertheless, those claims were patent-ineligible
because they “merely recite[d] the abstract idea of ‘offering media content
in exchange for viewing an advertisement,’ along with ‘routine additional
steps such as updating an activity log, requiring a request from the
consumer to view the ad, restrictions on public access, and use of the
Internet.’” Id.
Appellant’s asserted claims are analogous to claims found ineligible in
Ultramercial and distinct from claims found eligible in DDR Holdings.
The ineligible claims in Ultramercial recited “providing [a] media product
for sale at an Internet website;” “restricting general public access to said
media product;” “receiving from the consumer a request to view [a] sponsor
message;” and “if the sponsor message is an interactive message, presenting
at least one query to the consumer and allowing said consumer access to
said media product after receiving a response to said at least one query.”
772 F.3d at 712. Similarly, Appellant’s asserted claims recite creating,
analyzing, and transmitting data. This is precisely the type of Internet
activity found ineligible in Ultramercial.
We are not persuaded by Appellant’s argument that
in addition to claiming adding and tracking ad or content with
visual talking messages, are directed to:
a visual talking message; inserting the ad/content directly into
a user’s visual talking message; how the ad or content is
selected (real-time bidding process, analyzing past history, etc.)
- Claims 2-7; creating visual talking messages from the ad or
other content - Claim 8.
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App. Br. 10. Each of these limitations is another form of abstract conceptual
advice as to what a computer is to provide with no implementation details as
to how to do so. “Adding one abstract idea ... to another abstract idea . . .
does not render the claim non-abstract.” RecogniCorp, LLC v. Nintendo
Co., Ltd., 855 F.3d 1322, 1327 (2017).
Claims 1, 2, 8—11, 17, and 18 rejected under 35 U.S.C. § 103(a) as
unpatentable over Aaltonen, Rothschild, and Steelberg
We are not persuaded by Appellant’s argument that
Aaltonen does not teach or otherwise suggest, individually or in
combination with the other references, “creating a visual talking
message” and “adding advertisements or other content within or
around the visual talking message, wherein the advertisements
or other content comprises one or more of an image forming
part of the visual talking message.”
App. Br. 12. A visual talking message is no more than a visual message
with audio. The content of the audio is perceptible only in the mind of the
beholder and afforded no patentable weight. See In re Bernhart, 417 F.2d
1395, 1399 (CCPA 1969). Aaltonen explicitly describes a user adding
advertising content to a message and separately describes the content as
possibly including audio or video. An image forming part of the visual
talking message is just that, an image that is part of the entirety of the
message, and encompasses any visual part of the message. Once the
advertising is added as in the third step of claim 1, the advertising, along
with its imagery, forms part of the message. Thus this limitation is met.
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We are not persuaded by Appellant’s argument that “Appellant's
advertisements or other content is (1) embedded in or around the visual
talking message and (2) forms part of the overall message. Neither of these
limitations is suggested by Aaltonen.” App. Br. 12. Adding an ad to a
message as in Aaltonen is within the scope of embedding the ad around the
message. The overall message is the composite of all text and media
presented, and so the ads in Aaltonen form part of such an overall message.
We are not persuaded by Appellant’s argument that “Rothschild, at best,
teaches a sender-selected advertisement. This sender-selected advertisement
is at an end of an email (FIG. 3). This sender-selected advertisement is
neither physically part of the message nor literally part of the message.”
App. Br. 13. An ad included in an email, even at the end, is still part of the
email and thus part of the message. Appellant apparently is distinguishing
different semantic or contextual parts of the message, but any such
distinction is in the mind of the beholder, which cannot distinguish the
claims over the art. See In re Bernhart, 417 F.2d at 1399. Also, the claims
do not distinguish any such semantic boundaries within the overall message
content, and do not provide any particular implementation details as to how
such boundaries would be maintained even if they were recited.
The remaining claims are not separately argued.
Claims 3 and 12 rejected under 35 U.S.C. § 103(a) as unpatentable over
Aaltonen, Rothschild, Steelberg, and Gopinath
These claims depend from those argued on the basis of claim 1.
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Claim 4 rejected under 35 U.S.C. § 103(a) as unpatentable over Aaltonen,
Rothschild, Steelberg, Gopinath, and Collison
This claim depends from those argued on the basis of claim 1.
Claims 5, 7, 14, and 16 rejected under 35 U.S.C. § 103(a) as unpatentable
over Aaltonen, Rothschild, Steelberg, and Patel
These claims depend from those argued on the basis of claim 1.
Claims 6 and 15 rejected under 35 U.S.C. § 103(a) as unpatentable over
Aaltonen, Rothschild, Steelberg, Patel, and Kilroy
These claims depend from those argued on the basis of claim 1.
Claim 13 rejected under 35 U.S.C. § 103(a) as unpatentable over Aaltonen,
Rothschild, Steelberg, and Collison
This claim depends from those argued on the basis of claim 1.
Claims 19 and 20 rejected under 35 U.S.C. § 103(a) as unpatentable over
Aaltonen, Rothschild, Steelberg, and Collison
These claims are argued on the basis of claim 1.
CONCLUSIONS OF LAW
The rejection of claims 1—20 under 35 U.S.C. § 101 as reciting only
non—statutory subject matter is proper.
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The rejection of claims 1, 2, 8—11, 17, and 18 under 35 U.S.C. § 103(a)
as unpatentable over Aaltonen, Rothschild, and Steelberg is proper.
The rejection of claims 3 and 12 under 35 U.S.C. § 103(a) as
unpatentable over Aaltonen, Rothschild, Steelberg, and Gopinath is proper.
The rejection of claim 4 under 35 U.S.C. § 103(a) as unpatentable over
Aaltonen, Rothschild, Steelberg, Gopinath, and Collison is proper.
The rejection of claims 5, 7, 14, and 16 under 35 U.S.C. § 103(a) as
unpatentable over Aaltonen, Rothschild, Steelberg, and Patel is proper.
The rejection of claims 6 and 15 under 35 U.S.C. § 103(a) as
unpatentable over Aaltonen, Rothschild, Steelberg, Patel, and Kilroy is
proper.
The rejection of claim 13 under 35 U.S.C. § 103(a) as unpatentable over
Aaltonen, Rothschild, Steelberg, and Collison is proper.
The rejection of claims 19 and 20 under 35 U.S.C. § 103(a) as
unpatentable over Aaltonen, Rothschild, Steelberg, and Collison is proper.
DECISION
The rejections of claims 1—20 are affirmed.
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No time period for taking any subsequent action in connection with this
appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l)(iv) (2011).
AFFIRMED
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