Ex Parte Hancock

Patent Trial and Appeal Board

Sep 11, 2018

11735421 (P.T.A.B. Sep. 11, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
11/735,421 04/13/2007 S. Lee Hancock
23410 7590 09/12/2018
Vista IP Law Group LLP
100 Spectrum Center Drive
Suite 900
IRVINE, CA 92618
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.
WGRS-002 1941
EXAMINER
OSMAN BILAL AHME, AF AF
ART UNIT PAPER NUMBER
3682
MAIL DATE DELIVERY MODE
09/12/2018 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Exparte S. LEE HANCOCK
Appeal2017-006003 1
Application 11/735,421
Technology Center 3600
Before MURRIEL E. CRAWFORD, MICHAEL W. KIM, and
PHILIP J. HOFFMANN, Administrative Patent Judges.
KIM, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is an appeal from the rejection of claims 1--4, 11, 28, 29, 31, 33,
38--40,49,65,68, 74,81,84-87,89,92-94,96-100, 103,and 105-108. We
have jurisdiction to review the case under 35 U.S.C. §§ 134(a) and 6.
The invention relates generally to "automated Brand-based, pay-per-
performance search and advertising systems" (Spec. 17: 18-21 ), and also
"providing economic incentive payments to the brandholders based on
1 The Appellant identifies WGRS Licensing Company, LLC as the real party
in interest. Appeal Br. 2.
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revenues derived from the brand name database based on the brandholders'
brands" (id. at 22:9-13).
Claims 1 and 49 are illustrative:
1. A method for protecting and enhancing brand
property rights of brandholders in their brands and branded
products in connection with providing paid search results by
establishing a brand name database comprising a plurality of
brands owned or controlled by respective brandholders and
brandbidder information of brandbidders seeking to bid for
priority placement of the brandbidders' information in paid
search results, and a search engine communicating with the brand
name database for receiving and responding to brand search
requests via a network, the brandbidder information including
authorized brandbidder information of brandbidders authorized
by the brandholders to bid on the brandholders' brands, the
method performed by one or more computer systems
programmed to perform the steps of:
receiving, at the one or more computer systems,
brandholder requests from brandholder computing devices via
the network to link the brandholders with respective brands in
the brand name database;
applying business rules of the brand name database
using the one or more computer systems to the brandholder
requests to link the brandholders with respective brands;
receiving, at the one or more computer systems, a
brandbidder request from a brandbidder computing device via
the network to have the brandbidder's information associated
with a brand in the brand name database such that paid search
results responsive to brand search requests including the brand
include the brandbidder' s information, the brandbidder request
including a bid to the search engine offering to pay to have the
brandbidder's information included in the paid search results;
and
receiving communication from the brandholder linked to
the brand, via the one or more computer systems, confirming that
the brandbidder qualifies as an authorized brandbidder, the
brandholder providing input to the search engine into prioritizing
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paid search results including the authorized brandbidder' s
information that are provided to consumer computing devices in
response to brand search requests including the brand to
thereby protect or enhance property rights of the brandholder in
the brand in connection with providing the paid search results,
wherein the input provided by the brandholder comprises
providing an economic incentive payment to each bid of the
authorized brandbidder to effectively increase the bid of the
authorized brandbidder to improve ranking of the authorized
brandbidder's information relative to brandbidder information of
unauthorized brandbidders included in the paid search results.
49. A method for protecting, compensating, and
enhancing brand property rights of brandholders in their brands
and branded products in connection with providing paid search
results from an Internet search engine accessing a computer
system configured to operate a brand name database comprising
a plurality of brands owned or controlled by respective
brandholders, the method performed by one or more computer
systems configured to perform the steps of:
receiving, at the one or more computer systems, a brand
search request from a computing device of an Internet user via a
network, the brand search request including a brand;
searching the brand name database using the one or more
computer systems for the brand and brandbidder information of
brandbidders who have bid to have their brandbidder information
included in paid search results responsive to brand search
requests including the brand;
providing paid search results using the one or more
computer systems to the Internet user via the network, the paid
search results comprising the brandbidder information of the
brandbidders who have bid on the brand that are prioritized at
least in part based on the different amounts of the bids of the
brandbidders; and
providing an economic incentive payment to the
brandholder whose brand is included in the brand search request
from the search engine via the one or more computer systems to
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compensate the brandholder for its property rights in the brand
used in connection with providing the paid search results.
The Examiner rejected claims 1--4, 11, 28, 29, 31, 33, 38--40, 49, 65,
68, 74, 81, 84--87, 89, 92-94, 96-100, 103, and 105-108 under 35 U.S.C.
§ 101 as directed to ineligible subject matter in the form of abstract ideas.
The Examiner rejected claims 1, 11, 28, 29, 49, 89, 105, and 106
under 35 U.S.C. I03(a) as unpatentable over Tebeau et al.
(US 2005/0203762 Al, pub. Sept. 15, 2005) (hereinafter "Tebeau"), Berke
(US 6,629,092 Bl, iss. Sept. 30, 2003), and Hinson et al.
(US 2007/0244797 Al, pub. Oct. 18. 2007) (hereinafter "Hinson").
The Examiner rejected claims 2 and 3 under 35 U.S.C. § I03(a) as
unpatentable over Tebeau, Berke, Hinson, and McAuliffe et al.
(US 2003/0154127 Al, pub. Aug. 14, 2003) (hereinafter "McAuliffe").
The Examiner rejected claim 4 under 35 U.S.C. § I03(a) as
unpatentable over Tebeau, Berke, Hinson, and Loy (US 2002/0120570 Al,
pub. Aug. 29, 2002).
The Examiner rejected claims 68, 74, 81, and 84--872 under
35 U.S.C. § I03(a) as unpatentable over Tebeau, Berke, and McAuliffe.
The Examiner rejected claims 103, 107, and 108 under 35 U.S.C.
§ I03(a) as unpatentable over Tebeau, Hinson, McAuliffe, and Loy.
The Examiner rejected claims 31, 33, 65, and 96-100 as unpatentable
over Tebeau, Hinson, and Loy.
2 Claim 81 depends from claim 28, and claims 84--87 depend from claim 1,
both of which were rejected over Tebeau, Berke, and Hinson. See Non-Final
Act. 9, 14.
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The Examiner rejected claims 92-94 under 35 U.S.C. § I03(a) as
unpatentable over Tebeau, Hinson, and Koppelman et al. (US 6,662,164 Bl,
iss. Dec. 9, 2003) (hereinafter "Koppelman").
The Examiner rejected claims 38--40 under 35 U.S.C. § 103(a) as
unpatentable over Tebeau, Hinson, and Pisaris-Henderson et al.
(US 2004/0133471 Al, pub. July 8, 2004) (hereinafter "Pisaris-Henderson").
The Examiner rejected claim 68, in the alternative, under 35 U.S.C.
§ I03(a) as unpatentable over Tebeau and Clark (US 6, 351,738 Bl, iss.
Feb. 26, 2002).
We REVERSE.
ANALYSIS
Reiection Under 35 U.S.C. § 1 OJ
Principles of Law
An invention is patent-eligible if it claims a "new and useful process,
machine, manufacture, or composition of matter." 35 U.S.C. § 101. The
Supreme Court, however, has long interpreted § 101 to include implicit
exceptions: "[l]aws of nature, natural phenomena, and abstract ideas" are
not patentable. E.g., Alice Corp. Pty. Ltd. v. CLS Bank Int 'l, 134 S. Ct.
2347, 2354 (2014).
In determining whether a claim falls within the excluded category of
abstract ideas, we are guided in our analysis by the Supreme Court's two-
step framework, described in Mayo and Alice. Id. at 2355 (citing Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1296-97
(2012)). In accordance with that framework, we first determine whether the
claim is "directed to" a patent-ineligible abstract idea. See Alice, 134 S. Ct.
at 2356 ("On their face, the claims before us are drawn to the concept of
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intermediated settlement, i.e., the use of a third party to mitigate settlement
risk."); Bilski v. Kappas, 561 U.S. 593, 611 (2010) ("Claims 1 and 4 in
petitioners' application explain the basic concept of hedging, or protecting
against risk."); Diamond v. Diehr, 450 U.S. 175, 184 (1981) ("Analyzing
respondents' claims according to the above statements from our cases, we
think that a physical and chemical process for molding precision synthetic
rubber products falls within the § 101 categories of possibly patentable
subject matter."); Parker v. Flook, 437 U.S. 584, 594--595 (1978)
("Respondent's application simply provides a new and presumably better
method for calculating alarm limit values."); Gottschalk v. Benson, 409
U.S. 63, 64 (1972) ("They claimed a method for converting binary-coded
decimal (BCD) numerals into pure binary numerals.").
The following method is then used to determine whether what the
claim is "directed to" is an abstract idea:
[T]he 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. See, e.g., Elec. Power Grp., 830 F.3d at 1353-54. That
is the classic common law methodology for creating law when a
single governing definitional context is not available. See
generally Karl N. Llewellyn, The Common Law Tradition:
Deciding Appeals (1960). This more flexible approach is also
the approach employed by the Supreme Court. See Alice, 134 S.
Ct. at 2355-57. We shall follow that approach here.
Amdocs (Israel) Limited v. Openet Telecom, Inc., 841 F.3d 1288, 1294 (Fed.
Cir. 2016) (footnote omitted).
The patent-ineligible end of the spectrum includes fundamental
economic practices, Alice, 134 S. Ct. at 2357; Bilski, 561 U.S. at 611;
mathematical formulas, Flook, 437 U.S. at 594--95; and basic tools of
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scientific and technological work, Benson, 409 U.S. at 69. On the patent-
eligible side of the spectrum are physical and chemical processes, such as
curing rubber, Diamond, 450 U.S. at 184 n.7, "tanning, dyeing, making
waterproof cloth, vulcanizing India rubber, smelting ores," and a process for
manufacturing flour, Gottschalk, 409 U.S. at 67.
If the claim is "directed to" a patent-ineligible abstract idea, we then
consider the elements of the claim-both individually and as an ordered
combination-to assess whether the additional elements transform the nature
of the claim into a patent-eligible application of the abstract idea. Alice, 134
S. Ct. at 2355. This is a search for an "inventive concept"-an element or
combination of elements sufficient to ensure that the claim amounts to
"significantly more" than the abstract idea itself. Id.
Analysis
The Examiner finds:
the claims are directed towards the concept of receiving
brandholders requests from brandholders, applying business
rules of the brandname database to link the brandholders with
respective brands, receiving communication confirming that
brandbidder qualifies as an authorized brandbidder, the
brandholder providing input to the search engine into prioritizing
paid search results including the authorized brandbidder's
information, wherein the input provided by the brandholders
comprises providing an economic incentive payment to each bid
of the authorized brandbidder to effectively increase the bid of
the authorized brandbidder to improve ranking of the authorized
brandbidder's information relative to brandbidder information of
unauthorized brandbidder in the paid search results.
Non-Final Act. 8. The Examiner also finds this "is considered a
fundamental economic practice and requir[ es] no more than a generic
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computer to perform generic computer functions that are well-understood,
routine and conventional activities previously known to the industry." Id.
The Examiner essentially has directly quoted claim language, after
removing references to computers and computer operations, and asserted
that the filtered claim language of just under 100 words, that the claim is
allegedly "directed to," is a fundamental economic practice.
As an initial matter, merely quoting claim language and removing
computer references does not substantively distill the claim into what it is
directed to, because it merely repeats claim language without interpreting
what concept the claim embodies.
In addition, we note that a significant element, in what the Examiner
says all claims are directed to, appears to be enabling a brandholder to
provide "an economic incentive payment to each bid of the authorized
brandbidder to effectively increase the bid of the authorized brandbidder to
improve ranking . . . in the paid search results." This concept is recited in
independent claims 1, 28, and 65.
However, independent claims 49 and 68 do not include this concept or
language. Instead, claim 49 recites "providing an economic incentive
payment to the brandholder whose brand is included in the brand search
request from the search engine via the one or more computer systems to
compensate the brandholder for its property rights in the brand," and
claim 68 recites "apply a portion of revenues derived by the search engine
from the brand search request to an account of the brandholder that owns or
controls the brand as an economic incentive payment to compensate the
brandholder for its property rights in the brand." The Examiner, thus, does
not address the actual language or concepts set forth in claims 49 and 68, or
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the claims that depend from them. The Examiner's rejection of claims 49,
68, 74, and 98-100 under 35 U.S.C. § 101 is, therefore, defective for at least
this reason.
Returning to claims 1, 28, and 65, we characterize these claims as
describing the co-operative advertising model, where the cost of advertising
between a retailer and a manufacturer, for instance, is shared, and applying it
to paid search results auctions for prioritizing search result placement. See,
for example, L. Percy, Strategic Integrated Marketing Communications,
Oxford, Butterworth-Heinemann, 2008 ed., pp. 164---65. Here, the paid
search result placement operates as an advertisement, similar to print ads in
co-operative advertising or other media in Percy's description of "tactical
marketing." However, we are unable to determine from the Examiner's
analysis whether this concept is a fundamental economic practice.
The Examiner finds "Applicant's claims resemble a financial
management scheme with merely generic computer implementation, which
better aligns with a fundamental economic practice such as those recently
found ineligible by the courts, including the hedging scheme in Bilski and
the settlement scheme in Alice." Answer 5. We do not discern "financial
management" actions in the claimed invention, but instead interpret the
claims to be directed to ways of either sharing and increasing payment for
search result placement, or compensating a brandholder because of the
ownership of a brand. We, therefore, are unable to agree that the Examiner
has adequately found the concept, that the claims are directed to, is similar to
others found to be directed to abstract ideas by our reviewing courts.
We are further, and independently, persuaded by the Appellant's
argument that in the analysis that looks for an "inventive concept" or
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"something more," the Examiner has failed to consider "an economic
incentive payment to each bid of the authorized brandbidder to effectively
increase the bid of the authorized brandbidder to improve ranking ... in the
paid search results." Reply Br. 6-7. As alluded to by the Appellant, the
foregoing is not subsumed within the co-operative advertising model to
which claims 1, 28, and 65 are directed, and, thus, we are persuaded should
be treated as additional elements.
When considering the claims as a whole and an ordered combination,
to determine if the claim recites an inventive concept, the Examiner has
focused on the computer functions recited by the claims, which are found to
"requir[ e] no more than a generic computer to perform generic computer
functions that are well-understood, routine and conventional activities
previously known to the industry." Non-Final Act. 8. The Examiner has not
articulated, or advanced evidence supporting, that the concepts of sharing
and increasing payment for search result placement, or compensating a
brandholder because of the ownership of a brand, as variously recited in
either of the two sets of independent claims, are well-understood, routine,
and conventional practices in our system of commerce. For at least this
reason, we do not sustain the Examiner's rejection of claims 1, 28, 49, 65,
and 68 under 35 U.S.C. § 101, nor of the claims that depend from these
independent claims. See Berkheimer v. HP Inc., 881 F.3d 1360, 1368 (Fed.
Cit. 2018).
Obviousness Reiection of Claims 1. 11. 28. 29. 49. 89. 105. and 106
In rejecting independent claims 1, 28, and 49, the Examiner finds
Hinson, at paragraphs 23, 32--41, and 44, discloses brandholder payments to
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increase the bid of an authorized brandbidder to prioritize higher that
brandbidder's search results. Non-Final Act. 10.
As an initial matter, because claim 49 does not recite language
substantially equivalent to this language, as we set forth above, the Examiner
has failed to adequately support the rejection as to claim 49 and claims that
depend from, and were rejected along with, claim 49. We are, thus, in
agreement with the Appellant that the Examiner's rejection fails to recite this
claim element. Appeal Br. 40 ("the Hinson reference fails to teach or
suggest anything about providing an economic inventive payment to an
authorized brandbidder").
We are also in agreement with the Appellant that "the Hinson
reference also fails to disclose, teach, or suggest providing payments to
effectively increase the bid of the authorized brandbidder to improve ranking
of the authorized brandbidder's information relative to brandbidder
information of unauthorized brandbidders included in the paid search
results." Id. 42 (emphasis omitted). We are persuaded by each of the
Appellant's argument that, at the cited paragraphs,
the Hinson auction system has nothing to do with Internet search
results and, in fact, fails to teach or suggest increasing prices to
increase priority - but rather teaches the opposite - to lower the
price of the vehicle to increase the possibility that the customer
will purchase the vehicle from the local dealer
(id. 38) and "each dealer simply submits a price for a vehicle specified by
the potential customer and all prices are presented to the individual
customer" (id. 39). Hinson's reverse auction to sell a car does not disclose a
car manufacturer or similar party, for example, improving a bid of a dealer
to sell a car, or a readily identifiable concept analogous to the claimed
limitation at issue.
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We, therefore, do not sustain the rejection of claims 1, 28, and 49
under 35 U.S.C. § 103(a), because the Examiner has failed to demonstrate
adequately that Hinson discloses a brandholder payment to increase a
brandbidder's bid to improve search result placement, as recited in claims 1
and 28, or compensating a brandholder, as recited in claim 49. We also do
not sustain the rejection of claims 11, 29, 89, 105, and 106 that depend from
either claim 1 or 28, and were rejected along with claims 1 and 28.
Obviousness Re;ection of Claim 65
The Examiner finds that Hinson, at paragraphs 23 and 32-34,
discloses "economic incentive payments ... to facilitate the authorized
brandbidders bidding higher than unauthorized brandbidders and thereby
having the authorized brandbidders' information prioritized higher than the
others brandbidders in the paid search results," and that Loy discloses, at
paragraphs 11, 15, 42, and 47, "rules to determine economic incentive
payments provided from brandholders to their authorized buyer (i.e.
brandbidders)." Non-Final Act. 20 (emphasis omitted).
We are persuaded by the Appellant's argument that "the Hinson
reference fails to teach or suggest anything about providing an economic
inventive payment to an authorized brandbidder" (Appeal Br. 40), for the
same reasons we set forth above.
We are also persuaded by the Appellant's argument that in Loy "there
is no teaching or suggestion of economic incentive payments provided from
Brandholders to their authorized Brandbidders to facilitate the authorized
Brandbidders bidding higher than unauthorized Brandbidders and thereby
having the authorized Brandbidders' information prioritized higher than the
unauthorized Brandbidders in the Paid Search results." Id. 48.
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Loy discloses a clearinghouse for payment and receivables
information (Loy ,r 11 ), offering financing and factoring (id. ,r 15), reports
(id. ,r 42), and a web page for trading receivables (id. ,r 47), but fails to
address payments to increase a bid for search results placement from a party
other than the bidder, substantially as claimed.
The Examiner, thus, fails to support adequately that either of Hinson
or Loy discloses the providing of an incentive payment from a brandholder
to increase a bid of a brandbidder for search results placement. For this
reason we do not sustain the rejection of claim 65 under 35 U.S.C. § 103(a).
Obviousness Re;ection of Claim 68 over Tebeau, Berke, and
McAulitfe
In this rejection of independent claim 68, the Examiner finds
McAuliffe discloses, at paragraph 36, that "an economic incentive payment
to the brandholder (manufacture) is based at least in part on volume of sales
of the brandholder's product." Non-Final Act. 14 (emphasis omitted).
The Appellant argues that McAuliffe discloses compensation to
manufacturers for the resale of their products through non-manufacturer
channels, which has nothing to do with internet searches, and, thus, does not
disclose compensating brandholders for revenue from paid search results
utilizing their brands. Appeal Br. 45--46. We find no direct response to this
argument articulated by the Examiner.
The cited portion ofMcAuliffe discloses:
The detecting of the incentive programs and other search
functions may, in some embodiments, be performed by a search
engine that may be associated with a particular data base program
that may be utilized to store the transaction or other data. In other
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embodiments, a specialized search engine may be utilized for this
purpose.
McAuliffe ,r 36 (emphasis added).
McAuliffe, at the cited location, does not discuss paying a
manufacturer based on a volume of sales, as asserted by the Examiner.
For this reason, the Examiner has not supported adequately that
McAuliff e discloses the claim elements, as asserted. For this reason, we do
not sustain the rejection of claim 68 under 35 U.S.C. § 103(a).
Obviousness Reiection of Claim 68 over Tebeau and Clark
We are persuaded by the Appellant's argument that Clark does not
"provide any additional teaching or suggestion of the features discussed
above that may be properly combined with the Tebeau and/or references to
render the present claims obvious." Appeal Br. 49.
The Examiner finds Clark, rather than Tebeau, discloses
providing an economic incentive payment (see at least
column 3, lined 30-42, column 8, lines 10-30); [and] tracking to
apply a portion of revenue derived from the brand to an account
of the brandholder that owns or controls the brand as an
economic incentive payment to compensate the brandholder for
its property rights in the brand (see at least column 8, lines 18-
33).
Non-Final Act. 23.
Clark discloses, at the cited sections, a "collective business system"
that includes a "for-profit business entity which can assign geographic
territories of operation to its participants" (Clark col. 3, lines 30-42), and
that franchisees pay franchisors for goods and services purchased (id. col. 8,
lines 10-33). Neither section meets the claim language, i.e., compensating a
brandholder for its rights in the brand, because the aforementioned portion
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of Clark instead discloses compensating the brandholder for goods and
services sold.
The Examiner, thus, fails to support adequately the obviousness
rejection of claim 68 over Tebeau and Clark. For this reason, we do not
sustain this rejection of claim 68.
Obviousness Reiections of Claims 2~. 31. 33. 38~0. 65. 74. 81. 8~
87, 92~94, and 9~100
The Examiner has not established on the record that any of the
McAuliffe, Loy, Koppelman, or Pisaris-Henderson references remedy the
shortcomings identified in the rejections of independent claims. For this
reason, we do not sustain the rejections of claims that depend from the
independent claims which were rejected under 35 U.S.C. § 103(a) over any
of these additional references.
DECISION
We REVERSE the rejection under 35 U.S.C. § 101.
We REVERSE the rejections under 35 U.S.C. § 103(a).
REVERSED
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