Ex Parte Grebeck et al

Patent Trial and Appeal Board

Jun 29, 2018

14059194 (P.T.A.B. Jun. 29, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO.
14/059,194
114629 7590
Bookoff McAndrews
2020 K Street, NW
Suite 400
FILING DATE
10/21/2013
07/03/2018
Washington, DC 20006
FIRST NAMED INVENTOR
Michael J. GREBECK
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.
00008-0188-02000 6286
EXAMINER
DONLON, RY AND
ART UNIT PAPER NUMBER
3695
NOTIFICATION DATE DELIVERY MODE
07 /03/2018 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):
usptomail@bomcip.com
Kross@bomcip.com
eofficeaction@appcoll.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MICHAEL J. GREBECK, ALI NASIR! AMINI,
AARON E. FLORES, JOSE CARLOS GARCIA FRANCO,
HANS MARIUS HOLTAN, and ROBERT ALDEN LUENBERGER
Appeal2016-007224 1
Application 14/059,1942
Technology Center 3600
Before BIBHU R. MOHANTY, MICHAEL C. ASTORINO, and
TARA L. HUTCHINGS, Administrative Patent Judges.
HUTCHINGS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's final
rejection of claims 26-45. We have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM.
1 Our decision references Appellants' Appeal Brief ("App. Br.," filed Jan. 7,
2016) and Reply Brief ("Reply Br.," filed July 12, 2016), and the
Examiner's Answer ("Ans.," mailed May 12, 2016) and Final Office Action
("Final Act.," mailed June 22, 2015).
2 Appellants identify AOL Advertising Inc. as the real party in interest.
App. Br. 3.
Appeal2016-007224
Application 14/059, 194
CLAIMED INVENTION
Appellants' claimed invention "relate[ s] to facilitating the interaction
of parties engaged in electronic market transactions, and more specifically,
to calculating a bid price for advertising space available on an electronic
medium." Spec. i-f 1.
Claims 26, 38, and 45 are the independent claims on appeal. Claim
26, reproduced below, is illustrative of the claimed subject matter:
26. A computer-implemented method for determining a
bid price of an advertisement for a target web page, the method
comprising the following operations performed by at least one
processor:
receiving data associated with an online advertising
campaign related to a plurality of web pages;
identifying a target web page from the plurality of web
pages based on, at least in part, the received data;
collecting information relating to the target web page by
parsing the received data;
determining a current option value for a learning period
based on an estimated cost for communicating an advertisement
on the target web page based on, at least in part, the collected
information relating to the target web page, wherein determining
the current option value includes:
determining a continuation value associated with
receiving an expected revenue rate associated with the
advertisement for the learning period; and
determining an option value associated with an
option to stop communicating the advertisement during
the learning period;
adjusting the estimated cost based on the current
option value;
setting the bid price equal to the estimated cost
when the current option is zero; and
transmitting the bid price, over a network, to a
publisher.
2
Appeal2016-007224
Application 14/059, 194
REJECTION
Claims 26-45 are rejected under 35 U.S.C. § 101 as directed to non-
statutory subject matter.
ANALYSIS
Under 35 U.S.C. § 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. The Supreme Court, however, has long interpreted§ 101
to include an implicit exception: "[l]aws of nature, natural phenomena, and
abstract ideas" are not patentable. See, e.g., Alice Corp. Pty. Ltd. v. CLS
Bank Int'!, 134 S. Ct. 2347, 2354 (2014).
The Supreme Court, in Alice, reiterated the two-step framework
previously set forth in Mayo Collaborative Services v. Prometheus
Laboratories, Inc., 566 U.S. 66 (2012), "for distinguishing patents that claim
laws of nature, natural phenomena, and abstract ideas from those that claim
patent-eligible applications of those concepts." Alice Corp., 134 S. Ct.
at 2355. The first step in that analysis is to "determine whether the claims at
issue are directed to one of those patent-ineligible concepts." Id. If the
claims are not directed to a patent-ineligible concept, e.g., an abstract idea,
the inquiry ends. Otherwise, the inquiry proceeds to the second step where
the elements of the claims are considered "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, 566 U.S. at 79, 78).
"The 'abstract idea' step of the inquiry calls upon us to look at the
'focus of the claimed advance over the prior art' to determine if the claim's
3
Appeal2016-007224
Application 14/059, 194
'character as a whole' is directed to excluded subject matter." Affinity Labs
of Tex., LLC v. DIRECTV, LLC, 838 F.3d 1253, 1257-58 (Fed. Cir. 2016)
(internal citations omitted). In cases involving software innovations, this
inquiry often turns on whether the claims focus on "the specific asserted
improvement in computer capabilities ... or, instead, on a process that
qualifies as an 'abstract idea' for which computers are invoked merely as a
tool." Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335-36 (Fed. Cir.
2016).
Here, in rejecting the claims under § 101, the Examiner determines
that the claims are directed to "the fundamental economic practice of
determining [a] bid price for [an] advertisement," i.e., an abstract idea. Final
Act. 2. The Examiner further determines that the claims do not include
additional elements that constitute "significantly more" than the abstract idea
because the claims do not effect an improvement to another technology or
technical field, do not amount to an improvement to the functioning of the
computer itself, and do not amount to more than an instruction to implement
the abstract idea in a particular technological environment. Id. at 2-3.
In the Appeal Brief, Appellants submit that the Examiner's
characterization of the claimed subject matter "conflicts with the actual
language of the claims." App. Br. 11; but see id. at 12-13 ("the claims are
directed to 'determining a bid price of an advertisement for a target web
page"'). Yet, Appellant does not explain how, and we do not see how, the
characterization conflicts with the claim language. For example,
independent claims 26, 38, and 45 each recites in the preamble that the claim
is "for determining a bid price of an advertisement." Further, each of
independent claims 26, 38, and 45 recites a series of operations that result in
4
Appeal2016-007224
Application 14/059, 194
transmitting a bid price to a publisher. Paragraph 1 of Appellants'
Specification provides that the invention relates specifically "to calculating a
bid price for advertising space available on an electronic medium." The
Background section describes how "a company may want to determine a bid
price, which represents the highest price that the company is willing to pay
for placing an advertisement on a website." Spec. i-f 3. "The determination
of a bid price may help companies, and those obtaining advertising space on
their behalf, to assess the potential benefit of placing a particular
advertisement on a particular web page." Id. Therefore, "companies have a
need to determine bid prices for placing advertisements on web pages," and
an object of Appellants' claimed invention is "to overcome the shortcomings
of current techniques for pricing bids." Id. at i-fi-13--4. In our view, the
Examiner's characterization of the claimed subject matter as "determining
[a] bid price for [an] advertisement" (Final Act. 2) is fully consistent with
the claim language, viewed in light of the Specification.
Appellants argue that the claims are not directed to any subject matter
that the Supreme Court or the Federal Circuit has identified as abstract.
App. Br. 12. Yet, Appellants cannot reasonably deny that determining a
price for an advertisement is a long-standing economic practice and,
therefore, an abstract idea. Appellants contend that the Examiner's
indication that the claims are allowable over the prior art indicates that the
claims are not directed to a long-prevalent concept or idea. App. Br. 14
(identifying claim 26's limitations for "collecting information" and
"determining ... based on, at least in part, the collected information").
Yet, a finding of novelty or non-obviousness does not automatically
lead to the conclusion that the claimed subject matter is patent-eligible. A
5
Appeal2016-007224
Application 14/059, 194
novel and non-obvious claim directed to a purely abstract idea is,
nonetheless, patent-ineligible. See Mayo, 566 U.S. at 90. Here, the steps of
collecting information and determining may constitute an improvement to a
process for determining a price, such as bid price. But an improved abstract
idea is still an abstract idea.
Moreover, the steps recited in the claims involve no more than
collecting and analyzing information and communicating the results, without
any particular inventive technology- a concept that the courts have
repeatedly held is within the realm of abstract ideas. See, e.g., Elec. Power
Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353-54 (Fed. Cir. 2016) (when
"the focus of the asserted claims" is "on collecting information, analyzing it,
and displaying certain results of the collection and analysis," the claims are
directed to an abstract idea).
We are not persuaded by Appellants' argument that the claims are
analogous to the claims at issue in DDR Holdings, LLC v. Hotels.com, L.P.,
773 F.3d 1245 (Fed. Cir. 2014), because the address a problem arising in the
realm of computer networks. App. Br. 14--16; see also Reply Br. 6-7.
Specifically, Appellants charge that claim 26:
solves technical problems specifically arising in the realm of
computer networks (e.g., to identify a target web page and to
determine a bid price for placing an advertisement on the target
web page) using technical solutions (e.g., multiple significant
steps, including "collecting information relating to [a] target web
page by parsing ... received data"}-problems and solutions that
simply do not exist in the vague, non-computerized environment
of the alleged abstract idea.
App. Br. 16. Yet, the claims at issue in DDR Holdings modified the routine,
conventional functioning of Internet hyperlink protocol to direct a user of a
host website to a "store within a store" on the host website, rather than to an
6
Appeal2016-007224
Application 14/059, 194
advertiser's third-party website, when the user clicks an advertisement.
DDR Holdings, 773 F.3d at 1257-58. Here, in contrast, Appellants'
Specification describes that the "determination of a bid price may help
companies ... to assess the potential benefit of placing a particular
advertisement on a particular web page." Spec. i-f 3. In other words, the
claimed solution is an improvement to an abstract business practice, not an
improvement to computer networks. Further, unlike the situation in DDR
Holdings, there is no indication here that a computer network is used other
than in its normal, expected, and routine manner, e.g., transmitting
information over a network. There is a fundamental difference between
computer functionality improvements, on the one hand, and using existing
computers as tools to perform a particular task, on the other.
In the Reply Brief, Appellants argue that the claims, like the claims in
Enfish, LLC v. Microsoft Corp., 822 F.3d. 1327 (Fed. Cir. 2016), "recite
particular technical aspects that are distinct from the asserted abstract idea"
that "have been ignored or glossed over by the Examiner." Reply Br. 4.
Yet, the alleged improvement that Appellants tout (i.e., identifying a target
web page, and determining a bid price for placing an advertisement on the
web page) is not an improvement to computer capabilities akin to Enfish 's
self-referential table for a computer database. See Enfish, 822 F.3d at 1335-
36. See Enfish, 822 F.3d at 1335-36. Instead, it is an improvement to a
process that qualifies as an abstract idea, for which computers are invoked
merely as a tool.
Appellants argue in the Reply Brief that the "dependent claims recite
additional patent-eligible subject matter," which the Examiner's Answer
fails to address. Reply Br. 4--5. Specifically, Appellants point only to
7
Appeal2016-007224
Application 14/059, 194
dependent claim 27, and contend that is directed to applying models to the
observed revenue rate impression and calculating a bid price that takes
future events into account. Id. at 5. This argument is provided for the first
time in the Reply Brief and is not responsive to an argument raised in the
Examiner's Answer. The Appellants have not shown good cause for not
presenting this argument in the opening brief. See Final Act. 2-3
(addressing claims 26-45 as a group). As such, we will not consider the
Appellants' added argument. See 37 C.F.R. § 41.41(b)(2) ("Any argument
raised in the reply brief which was not raised in the appeal brief, or is not
responsive to an argument raised in the examiner's answer, including any
designated new ground of rejection, will not be considered by the Board for
purposes of the present appeal, unless good cause is shown.").
Moreover, even in the absence of waiver, Appellants have not
persuaded us that the dependent claims are not directed to an abstract idea or
contain additional elements, alone or in combination, that would render them
patent-eligible. For example, we fail to see how or why, and Appellants do
not explain how or why, associating a set of expected revenue rates with the
learning period starting at an initial time; assigning a set of transition
probabilities to an initial expected revenue rate in the set of expected
revenue rates; and determining an initial expected revenue based on at least
one of the transition probabilities and at least one of the later expected revue
rates, as called for in claim 27, involve more than collecting, analyzing, and
displaying information, i.e., an abstract idea. Notably, like the patent-
ineligible claims at issue in Electric Power Group, Appellants' claim 27
recites the what of the invention, but none of the how that is necessary to
tum the abstract idea into a patent-eligible application. Elec. Power Grp.,
8
Appeal2016-007224
Application 14/059, 194
830 F.3d at 1353; see also Clarilogic, Inc. v. FormFree Holdings Corp.,
681 F. App'x 950, 954 (Fed. Cir. 2017) (non-precedential) (holding that
claims "for collection, analysis, and generation of information reports, where
the claims are not limited to how the collected information is analyzed or
reformed, is the height of abstraction"). Appellants do not present any
arguments for the remaining dependent claims, and we do not see anything
recited therein that removes the claims from the realm of the abstract.
Appellants argue the claims are analogous to those in Bascom Global
Internet Services, Inc. v. AT&T Mobility LLC, 827 F.3d 1341 (Fed. Cir.
2016). See Reply Br. 7. Yet, Appellants do not persuasively explain how,
and we do not see how, the claims here parallel the claims in Bascom, which
recited a "non-conventional and non-generic arrangement of known,
conventional pieces" within a network, the arrangement of elements being "a
technical improvement over the prior art ways of filtering." Bascom, 827
F.3d at 1350.
Appellants argue that the claims do not preempt all ways of
performing the abstract idea. Reply Br. 7. But, characterizing preemption
as a driving concern for patent eligibility is not the same as characterizing
preemption as the sole test for patent eligibility. "The Supreme Court has
made clear that the principle of preemption is the basis for the judicial
exceptions to patentability" and "[f]or this reason, questions on preemption
are inherent in and resolved by the§ 101 analysis." Ariosa Diagnostics, Inc.
v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015) (citing Alice Corp.,
134 S. Ct. at 2354). Although "preemption may signal patent ineligible
subject matter, the absence of complete preemption does not demonstrate
patent eligibility." Id.
9
Appeal2016-007224
Application 14/059, 194
In view of the foregoing, we sustain the Examiner's rejection of
independent claims 26, 38, and 45, and dependent claims 27-37 and 39--44
under 35 U.S.C. § 101.
DECISION
The Examiner's rejection of claims 26--45 under 35 U.S.C. § 101 is
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
10