Ex Parte Hannan

Patent Trial and Appeal Board

Jan 23, 2019

13846442 (P.T.A.B. Jan. 23, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/846,442 03/18/2013
87851 7590
Facebook/Fenwick
Silicon Valley Center
801 California Street
Mountain View, CA 94041
01/25/2019
FIRST NAMED INVENTOR
Scott Hannan
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.
26295-23292/US 1020
EXAMINER
MACASIANO, MARILYN G
ART UNIT PAPER NUMBER
3688
NOTIFICATION DATE DELIVERY MODE
01/25/2019 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):
ptoc@fenwick.com
fwfacebookpatents@fenwick.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SCOTT HANNAN
Appeal2017---005884
Application 13/846,442
Technology Center 3600
Before MURRIEL E. CRAWFORD, ANTON W. PETTING, and
TARA L. HUTCHINGS, Administrative Patent Judges.
PETTING, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE 1
Scott Hannan (Appellant) seeks review under 35 U.S.C. § 134 of a final
rejection of claims 1--4, 7-19, and 21-27, the only claims pending in the
application on appeal. We have jurisdiction over the appeal pursuant to
35 U.S.C. § 6(b).
The Appellant invented an advertising system. Specification para. 2.
1 Our decision will make reference to the Appellant's Appeal Brief ("App.
Br.," filed July 29, 2016) and Reply Brief ("Reply Br.," filed February 21,
2017), and the Examiner's Answer ("Ans.," mailed December 20, 2016),
and Final Action ("Final Act.," mailed October 1, 2015).
Appeal2017-005884
Application 13/846,442
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 comprising:
[ 1] receiving a location event from a user device,
the location event identifying a geographical location;
[2] determining, by a computer system, attributes for the
geographical location identified by the location event
to serve as targeting criteria for advertisement selection;
[3] storing the attributes in a places object for the geographical
location;
[ 4] calculating, by a computer system, a quality score for each
places object,
and
the quality score calculated based on the stored attributes
about the geographical location;
[ 5] selecting an advertisement for the user
based on the quality score for the geographical location.
The Examiner relies upon the following prior art:
Beckner US 2010/0198503 Al
Cheng US 8,396,888 B2
Aug. 5,2010
Mar. 12, 2013
Claims 1--4, 7-19, and 21-27 stand rejected under 35 U.S.C. § 101 as
directed to a judicial exception without significantly more.
Claims 1--4, 7-19, and 21-27 stand rejected under 35 U.S.C. § I03(a) as
unpatentable over Cheng and Beckner.
2
Appeal2017-005884
Application 13/846,442
ISSUES
The issues of eligible subject matter tum primarily on whether the claims
recite more than abstract conceptual advice of what a computer is to provide
without implementation details.
The issues of obviousness tum primarily on whether the art describes the
limitations.
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 Claim Construction
01. The disclosure contains no lexicographic definition of "location
event." At best, paragraph 14 of the Specification provides in a
non-limiting fashion that "[l]ocation events may include any user
interactions with a location, including, but not limited to, checking
in at the location, tagging or otherwise referencing a location in a
post on a social networking system, and checking into a location
implicitly through constantly sharing location coordinates, for
example."
02. The plain meaning of location event is the noun "event"
modified by the noun adjective "location." Neither the claims nor
the Specification narrow the manner of modification.
03. The disclosure contains no lexicographic definition of "places
object."
3
Appeal2017-005884
Application 13/846,442
04. An object in the software context is an instance of the data
structure and behavior defined by the object's class. Each object
has its own values for the instance variables of its class and can
respond to the methods defined by its class. 2
Facts Related to the Prior Art
Cheng
05. Cheng is directed to location-based searching. Cheng 1: 16-17.
06. Cheng describes performing location-based searching. In
general, without a user of a mobile device having to enter an
explicit search query ( e.g., by typing or speaking the query), a
mobile computing device may display content that corresponds to
a search result. The search result may have been selected by a
search engine as responsive to a query for a search area, where the
search area was selected based on a geographical location of the
mobile computing device. The search area may be selected from
among several search areas that correspond to the geographical
location. The several areas can be geographically nested within
each other and may be regions that all include the geographical
location. The search results may be generated automatically by a
user powering on their device, by the user launching a browser on
their device, by a user selecting a "search" button without defining
a query, or in other similar manners. Id. at 1:41-57.
2 Free Online Dictionary of Computing, http://foldoc.org/object.
4
Appeal2017-005884
Application 13/846,442
07. Cheng describes a server system that receives a geographical
location and selects one of several "search areas" that correspond
to the geographical location. For example, search areas that
correspond to the geographical location may be those search areas
that include the geographical location, or that are geographically
near to the geographical location. As a conceptual illustration, the
geographical location may correspond to seven search areas that
are geographically nested within each other like Russian nesting
dolls. An exemplary set of nested search areas includes continent,
country, state, county, city, neighborhood, shopping center, and
store designators. Accordingly, every search area in a nested
collection except for a "highest" level search area may spatially
include a higher level search area, and every search area in the
nested collection but a "lowest" level search area may spatially
include a lower level search area. Id. at 3:64--4:12.
08. Cheng describes retrieving markers labeled as pizza places in
response to a query. Id. at 25:18-28.
09. Cheng describes programming its software with an object-
oriented programming language. Id. at 29:7-11.
Beckner
10. Beckner is directed to location-based services, and more
particularly, to assessing the quality of location content available
from location-based systems. Beckner para. 2.
11. Beckner describes a location content management system that
receives location content in the form of a profile from a content
5
Appeal2017-005884
Application 13/846,442
source. The location content management system includes a
content quality system that evaluates the quality of location
content. The evaluation includes evaluating who provided the
content, the accuracy of the location data associated with the
content, the integrity or completeness of the content, and when the
content and location data was provided to the location content
management system. As a result of the evaluation, the content
quality system generates one or more quality scores. The quality
score provides an indication of the reliability of the location
content. Preferably, the method for assessing the quality of
location content is repeated when a change is made to the content.
Id. at para. 8.
12. Beckner describes providing a content quality score. The
location content management system receives content from the
content source. The content source adds a new profile or modifies
an existing profile via the user interface and/or Web service
provided by the content upload server. The content quality system
analyzes the content and the source of the content. In some cases,
the content quality system may use a matrix to calculate the score.
In mathematics, a matrix is a rectangular table of elements, which
may be added and multiplied. In Beckner, a matrix includes any
table or other organization of variables that may be used to
calculate a score. The matrix of variables allows for an on-going,
automatic weighted assessment. Preferably, the matrix variables
can be modified at any time without impacting the location based
system. Id. at paras. 45--48.
6
Appeal2017-005884
Application 13/846,442
13. Beckner describes a where factor, which refers to the
geospatial accuracy of a location. The location referencing system
evaluates location accuracy. The location content management
system may provide a where factor value as a number between 0
and 100 that indicates the level of trust for the accuracy of the
location relative to ground-truth, which may be determined by the
method used to locate the location ( e.g., by one or more of
address, latitude/longitude, and administrative area). Id. at para.
58.
ANALYSIS
Claims 1-4, 7-19, and 21-27 rejected under 35 USC§ 101 as directed to
a judicial exception without significantly more
STEPP-
Claim 1, as a method claim, recites one of the enumerated categories of
eligible subject matter in 35 U.S.C. § 101. The issue before us is whether it
is directed to a judicial exception without significantly more.
STEP 2
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
3 For continuity of analysis, we adopt the steps nomenclature from 2019
Revised Patent Subject Matter Eligibility Guidance, 84 FR 50 (Jan. 7, 2019).
7
Appeal2017-005884
Application 13/846,442
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 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 Intl, 573 U.S. 208, 217-18 (2014)
( citations omitted) ( citing Mayo Collaborative Services v. Prometheus
Laboratories, Inc., 566 U.S. 66 (2012)). To perform this test, we must first
determine what the claims are directed to. This begins by determining
whether the claims recite one of the judicial exceptions ( a law of nature, a
natural phenomenon, or an abstract idea). Then, if claims recite a judicial
exception, determining whether the claims at issue are directed to the recited
judicial exception, or whether the recited judicial exception is integrated into
a practical application of that exception. If the claims are directed to a
judicial exception, then finally determining whether the claims provide an
inventive concept because the additional elements recited in the claims
provide significantly more than the recited judicial exception.
STEP 2A Prong 1
Method claim 1 recites receiving event data, determining and storing
attribute data, calculating quality score data, and selecting advertising data
based on this other data. Thus, claim 1 recites receiving, analyzing,
modifying, and storing data. None of the limitations recite technological
implementation details for any of these steps, but instead recite only
functional results to be achieved by any and all possible means.
8
Appeal2017-005884
Application 13/846,442
From this we see that claim 1 does not recite the judicial exceptions of
either natural phenomena or laws of nature. The next issue is whether it
recites the judicial exception of an abstract idea. To answer this, we next
determine whether it recites one of the concepts the Courts have held to be
lacking practical application, viz. mathematical concepts, 4 certain methods
of organizing human interactions, 5 including fundamental economic
practices and business activities, or mental processes. 6
The Examiner determines the claims to be directed to
receiving information about physical places to develop scores
for targeting advertisements to users. Claim 19 adds steps for
replacing information ( quality score) for [a] nearby
geographical location. Thus, the independent claims are
directed to the abstract idea of gathering information about
physical places to develop quality scores for targeting
advertisements to users of mobile devices sharing geographical
location events with service providers, that could be performed
by certain methods of organizing human activity.
Final Act. 3.
4 See e.g., Gottschalkv. Benson, 409 U.S. 63, 71-72 (1972); Bilski v.
Kappas, 561 U.S. 593, 611 (2010); Mackay Radio & Telegraph Co. v. Radio
Corp. of Am., 306 U.S. 86, 94 (1939); SAP America, Inc. v. InvestPic, LLC,
898 F.3d 1161, 1163 (Fed. Cir. 2018)
5 See e.g., Bilski, 561 U.S. at 628; Alice, 573 U.S. at 219-20; Ultramercial,
Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed Cir. 2014); Smart Systems
Innovations, LLC v. Chicago Transit Authority, 873 F.3d 1364, 1383 (Fed.
Cir. 2017); In re Marco Guldenaar Holding B. V., 2018 WL 6816331 (Fed.
Cir. 2018)
6 See e.g., Benson, 409 U.S. at 67; CyberSource Corp. v. Retail Decisions,
Inc., 654 F.3d 1366, 1371-1372 (Fed. Cir. 2011); Intellectual Ventures I
LLCv. Symantec Corp., 838 F.3d 1307, 1318 (Fed. Cir. 2016)
9
Appeal2017-005884
Application 13/846,442
The preamble to claim 1 does not recite what it is to achieve, but the
steps in claim 1 result in selecting an advertisement for the user based on a
quality score for a geographical location absent any technological
mechanism, other than a conventional computer, for doing so.
As to the specific limitations, limitations 1-3 recite insignificant
receiving, determining, and storing of location data, which advise one to
apply generic functions to get to these results. Limitations 4--5 recite
calculating a score and selecting an advertisement based on that score, which
is simply using a mathematical calculation as a selection criterion. To
advocate using a mathematical calculation as a selection criterion is
conceptual advice for results to be obtained, and not technological
operations.
The Specification at paragraph 2 provides that the invention relates to an
advertising system. Thus, all this intrinsic evidence shows that claim 1 is
directed to a way of selecting an advertisement, i.e. advertising. This is
consistent with the Examiner's determination.
The concept of advertising is a fundamental business practice long
prevalent in our system of commerce. The use of advertising is also a
building block of ingenuity in sales and marketing. Thus, advertising is an
example of a conceptual idea subject to the Supreme Court's "concern that
patent law not inhibit further discovery by improperly tying up the future use
of these building blocks of human ingenuity." See Alice, 573 U.S. at 216
( citations omitted). Claim 1 recites the idea of performing various
conceptual steps generically resulting in the advertising. As we determined
earlier, none of these steps recite specific technological implementation
details, but instead get to this result by advising one to select an ad based on
10
Appeal2017-005884
Application 13/846,442
some score and location. Thus claim 1 is directed to advertising, which is a
fundamental business practice.
This in tum is an example of advertising as a certain method of
organizing human interactions because advertising is a large part of using
marketing to get customers. The advertising is done by selecting an ad
based on some score for the geographical location. The steps recited in
claim 1 are part of this ad selection idea.
Our reviewing court has found claims to be directed to abstract ideas
when they recited similar subject matter. Ultramercial, Inc. v. Hulu, LLC,
772 F.3d 709, 715 (Fed. Cir. 2014) (using advertising).
Alternately, this is an example of concepts performed in the human mind
as mental processes because the steps of receiving, analyzing, modifying,
and storing data mimic human thought processes of observation, evaluation,
judgment, and opinion, perhaps with paper and pencil, where the data
interpretation is perceptible only in the human mind. See In re TL!
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 reception, analysis,
modification, and storage 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"). As such, claim 1 is directed to the abstract idea of receiving,
analyzing, modifying, and storing data, and not a technological
implementation or application of that idea.
11
Appeal2017-005884
Application 13/846,442
Alternately, this is an example of a mathematical concept because the
steps of calculating a score perform a mathematical algorithm. The
remaining steps are mere data gathering and incidental post processing steps.
From this we conclude that at least to this degree, claim is directed to the
abstract idea of advertising by advising one to select an ad based on some
score for the location.
STEP 2A Prong 2
The next issue is whether the claim not only recites, but is more
precisely directed to this concept itself or whether it is instead directed to
some technological implementation or application of, or improvement to,
this concept i.e. integrated into a practical application. 7
At the same time, we tread carefully in construing this
exclusionary principle lest it swallow all of patent law. At
some level, "all inventions ... embody, use, reflect, rest upon, or
apply laws of nature, natural phenomena, or abstract ideas."
Thus, an invention is not rendered ineligible for patent simply
because it involves an abstract concept. "[ A Jpplication[ s ]" of
such concepts " 'to a new and useful end,' " we have said,
remain eligible for patent protection. Accordingly, in applying
the § 101 exception, we must distinguish between patents that
claim the" 'buildin[g] block[s]' "of human ingenuity and those
that integrate the building blocks into something more.
Alice, 573 U.S. at 217 ( citations omitted).
The introduction of a computer into the claims does not alter the analysis
at Mayo step two.
the mere recitation of a generic computer cannot transform a
patent-ineligible abstract idea into a patent-eligible invention.
7 See, e.g., Alice, 573 U.S. at 223, discussing Diamond v. Diehr, 450 U.S.
175 (1981).
12
Appeal2017-005884
Application 13/846,442
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 "implement[ 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
feature[ e ]" that provides any "practical assurance that the
process is more than a drafting effort designed to monopolize
the [ abstract idea] itself."
Alice, 573 U.S. at 223-24 ( 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, 573 U.S. at 225. They do not.
Taking the claim elements separately, the function performed by the
computer at each step of the process is purely functional, devoid of
implementation details. Steps 1 and 2 are pure data gathering steps.
Limitations describing the nature of the data do not alter this. Step 3 is
insignificant activity, such as storing, transmitting, or displaying the results.
Steps 4 and 5 recite generic computer processing of calculating data and
making a selection based on that data expressed in functional terms to be
performed by any and all possible means and so present no more than
abstract conceptual advice. All purported inventive aspects reside in how
the data is interpreted and the results desired, and not in how the process
physically enforces such a data interpretation or in how the processing
technologically achieves those results.
13
Appeal2017-005884
Application 13/846,442
Viewed as a whole, Appellant's method claim 1 simply recites the
concept of advertising as performed by a generic computer. To be sure, the
claims recite doing so by advising one to select an ad based on some score
for a location. 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 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
any other technology or technical field. The 28 pages of specification spell
out different generic equipment8 and parameters that might be applied using
this concept and the particular steps such conventional processing would
entail based on the concept of advertising under different scenarios. They do
not describe any particular improvement in the manner a computer
functions. Instead, claim 1 amounts to nothing significantly more than an
instruction to apply the abstract idea of advertising by advising one to select
an ad based on some score and location using some unspecified, generic
computer. Under our precedents, that is not enough to transform an abstract
idea into a patent-eligible invention. See Alice, 573 U.S. at 225-26. None
of the limitations reflect an improvement in the functioning of a computer,
or an improvement to other technology or technical field, applies or uses a
judicial exception to effect a particular treatment or prophylaxis for a disease
or medical condition, implements a judicial exception with, or uses a judicial
8 The Specification describes a conventional computer system. Spec. para.
28.
14
Appeal2017-005884
Application 13/846,442
exception in conjunction with, a particular machine or manufacture that is
integral to the claim, effects a transformation or reduction of a particular
article to a different state or thing, or applies or uses the judicial exception in
some other meaningful way beyond generally linking the use of the judicial
exception to a particular technological environment, such that the claim as a
whole is more than a drafting effort designed to monopolize the exception.
We conclude that claim 1 is directed to advising one to select an ad based
on some score and location to achieve the functional result of advertising as
distinguished from a technological improvement for achieving or applying
that result. The claim does not integrate the judicial exception into a
practical application.
STEP 2B
The next issue is whether the claim provides an inventive concept
because the additional elements recited in the claim provides significantly
more than the recited judicial exception. Taking the claim elements
separately, the function performed by the computer at each step of the
process is purely conventional. Using a computer for receiving, analyzing,
modifying, and storing data amounts to electronic data query and retrieval-
one of the most basic functions of a computer. All of these computer
functions are generic, routine, conventional computer activities that are
performed only for their conventional uses. See Elec. Power Grp. v. Alstom
S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016). Also see In re Katz Interactive
Call Processing Patent Litigation, 639 F.3d 1303, 1316 (Fed. Cir. 2011)
("Absent a possible narrower construction of the terms 'processing,'
'receiving,' and 'storing,' ... those functions can be achieved by any
general purpose computer without special programming"). None of these
15
Appeal2017-005884
Application 13/846,442
activities are used in some unconventional manner nor do any produce some
unexpected result. Appellant does not contend they invented any of these
activities. In short, each step does no more than require a generic computer
to perform generic computer functions. As to the data operated upon, "even
if a process of collecting and analyzing information is 'limited to particular
content' or a particular 'source,' that limitation does not make the collection
and analysis other than abstract." SAP America, Inc. v. InvestPic LLC, 898
F.3d 1161, 1168 (Fed. Cir. 2018).
Considered as an ordered combination, the computer components of
Appellant's method claim add nothing that is not already present when the
steps are considered separately. The sequence of data reception-analysis-
modification-storage is equally generic and conventional or otherwise held
to be abstract. See Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed.
Cir. 2014) (sequence of receiving, selecting, offering for exchange, display,
allowing access, and receiving payment recited an abstraction), Inventor
Holdings, LLC, v. Bed Bath & Beyond, Inc., 876 F.3d 1372, 1378 (Fed. Cir.
2017) (sequence of data retrieval, analysis, modification, generation, display,
and transmission), Two-Way Media Ltd. v. Comcast Cable Communications,
LLC, 874 F.3d 1329, 1339 (Fed. Cir. 2017) (sequence of processing, routing,
controlling, and monitoring). The ordering of the steps is therefore ordinary
and conventional.
We conclude that the claim 1 does not provide an inventive concept
because the additional elements recited in the claim do not provide
significantly more than the recited judicial exception.
REMAINING CLAIMS
16
Appeal2017-005884
Application 13/846,442
The other independent method claims are substantially similar at least as
regards this analysis. The remaining method claims merely describe process
parameters. We conclude that the method claims at issue are directed to a
patent-ineligible concept itself, and not to the practical application of that
concept.
LEGAL CONCLUSION
From these determinations we further determine that the claims do not
recite an improvement to the functioning of the computer itself or to any
other technology or technical field, a particular machine, a particular
transformation, or other meaningful limitations. From this we conclude the
claims are directed to the judicial exception of the abstract idea of
advertising, without significantly more.
APPELLANT'S ARGUMENTS
As to Appellant's Appeal Brief arguments, we adopt the Examiner's
determinations and analysis from Final Action 2-5 and Answer 2-5 and
reach similar legal conclusions. We now tum to the Reply Brief.
We are not persuaded by Appellant's argument of "the absence of a
showing of how or why the claims correspond to a concept that the courts
have identified as abstract beyond a mere conclusion that the examiner
believes this to be the case." Reply Br. 2. As we determine supra, the
intrinsic evidence shows that claim 1 is directed to a way of selecting an
advertisement, i.e. advertising. This is consistent with the Examiner's
determination. Tailoring ads to customers based on location has been found
abstract.
17
Appeal2017-005884
Application 13/846,442
[T]ailoring content based on the viewer's location or address
would satisfy the "as a function of the user's personal
characteristics" limitation. This sort of information
tailoring is "a fundamental ... practice long prevalent in
our system .... " Id. There is no dispute that newspaper inserts
had often been tailored based on information known about
the customer-for example, a newspaper might advertise
based on the customer's location. Providing this minimal
tailoring----e.g., providing different newspaper inserts based
upon the location of the individual-is an abstract idea.
Intellectual Ventures I LLC v. Capital One Bank (USA), 792 F.3d 1363,
1369 (Fed. Cir. 2015).
We are not persuaded by Appellant's argument the Examiner "does not
address ... the fact that the examiner has bundled all of the steps of the
claims into the abstract idea although not supported by the Interim Guidance
nor any Supreme Court of Federal Circuit case." Reply Br. 2. As we
determine supra, the intrinsic evidence shows that claim 1 is directed to a
way of selecting an advertisement, i.e. advertising. This is consistent with
the Examiner's determination. Tailoring ads to customers based on location
has been found by the Federal Circuit to be abstract. See, e.g., Intellectual
Ventures I, 792 F.3d at 1369.
We are not persuaded by Appellant's argument the Examiner does not
address "Appellant's arguments distinguishing SmartGene, Cyberfone, and
Digitech, among other issues." Reply Br. 2. As to SmartGene, Inc. v.
Advanced Biological Labs., SA, 555 Fed. Appx. 950 (Fed.Cir.2014),
Appellant first argues that it is non-precedential. App. Br. 7. Even so, this
case demonstrates examples and analysis of claims the Federal Circuit held
abstract. Appellant next argues that the instant claims could not be
completed by the human mind, as they are explicitly recited as being
18
Appeal2017-005884
Application 13/846,442
performed "by a computer system." Id. at 7-8. As we determined supra,
simply reciting the use of a computer does not remove a claim from the
realm of the abstract. Further, the Federal Circuit determined that
we do not rely on the pen and paper test to reach our holding of
patent eligibility in this case. At the same time, we note that, in
viewing the facts in FairWaming's favor, the inability for the
human mind to perform each claim step does not alone confer
patentability. As we have explained, "the fact that the required
calculations could be performed more efficiently via a computer
does not materially alter the patent eligibility of the claimed
subject matter."
FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1098 (Fed. Cir.
2016) ( citations omitted).
As to Cyberfone Systems, LLC v. CNN Interactive Group, Inc., 558 Fed.
Appx. 988 (Fed. Cir. 2014), Appellant argues that "it is unclear how the
Cyberfone decision applies to this case." App. Br. 8. The Examiner applied
Cyberfone for reasons similar to our citation to Elec. Power, supra.
As to Digitech Image Technologies, LLC v. Electronics for Imaging,
Inc., 758 F.3d 1344 (Fed. Cir. 2014), Appellant argues that "[t]he method of
Digitech entails combining two sets of data that were obtained separately to
form an overall device profile. This has little if anything to do with the
limitations of the present claims identified by the Examiner as being
abstract. Thus Digitech is not applicable to the claims at hand." App. Br. 8.
The Examiner applied Digitech for reasons similar to our citation to Elec.
Power, supra.
Claims 1-4, 7-19, and 21-27 rejected under 35 USC§ 103(a) as
unpatentable over Cheng and Beckner
19
Appeal2017-005884
Application 13/846,442
We are not persuaded by Appellant's argument that "Cheng and Beckner
do not disclose or suggest 'determining, by a computer system, attributes for
the geographical location identified by the location event to serve as
targeting criteria for advertisement selection,' as recited in claim 1. This
argument applies to claims 1 and 19." App. Br. 13 (emphasis omitted). The
Examiner determines that Cheng describes submitting a search among
whose search criteria is a particular location. This corresponds to the recited
location event. The coordinates or other location identifying data
correspond to the recited location attributes. Final Act. 6-7.
Appellant contends
Cheng at 25:20-29 pertains to a mapping service that can
return location-specific results. In the example discussed, a
location is combined with a user query term ("pizza places") are
a query to the mapping system, resulting in a street map with
nearby pizza places. However, the claim recites "determining ...
attributes for the geographical location identified by the
location event to serve as targeting criteria for advertisement
selection." Cheng does not disclose such attribute
determination. Further, the only criteria disclosed here are the
location itself and a user- input term - there's no determined
attribute used as targeting criteria. Further, this limitation is
explicit that the determination of attributes is performed "by a
computer system," not by the user.
App. Br. 14. Appellant appears not to realize that data identifying a location
are location attributes. Furthermore, for Cheng to return pizza locations, the
attribute of being a pizza place is necessarily stored in association with a
particular location. As to the computer system determining the location, that
is what Cheng is directed to. Whether the search is augmented by user input
does not negate the computer analysis Cheng describes.
20
Appeal2017-005884
Application 13/846,442
We are not persuaded by Appellant's argument that "Cheng and
Beckner do not disclose or suggest 'storing the attributes in a places object
for the geographical location,' as recited in claim 1. This argument applies
to claims 1, 19, and 23." App. Br. 14 (emphasis omitted). The Examiner
determines that Cheng describes storing location identifying information in a
database. This corresponds to the recited places object. Ans. 6. An object
is just an instance of a data structure. Its behavior is defined by the software.
At the programming level, this may be abstracted as a class, but this
abstraction is removed after compilation and assembly into the binary
executable file. In any event, Cheng's description of using an object
oriented programming language makes using such programmed classes for
storing location attributes in location (places) objects at least predictable and
suggested.
We are not persuaded by Appellant's argument that "Cheng and Beckner
do not disclose or suggest 'calculating, by a computer system, a quality
score for each places object, the quality score calculated based on the stored
attributes about the geographical location,' as recited in claim 1. This
argument applies to claims 1, 19, and 23." App. Br. 15 (emphasis omitted).
In particular, Appellant contends Cheng's score is not for a places object.
Id. The Examiner determines that Beckner describes computing quality
scores for varying levels of location precision in a location-based search
service. This corresponds to the recited the quality score calculated based on
the stored attributes about the geographical location. Ans. 7-8.
We are not persuaded by Appellant's argument that "Cheng and Beckner
do not disclose or suggest 'selecting an advertisement for the user based on
the quality score for the geographical location,' as recited in claim 1. This
21
Appeal2017-005884
Application 13/846,442
argument applies to claims 1, 19, and 23." App. Br. 16 (emphasis omitted).
In particular, Appellant contends neither reference selects an ad. Id. at 17.
The Examiner determines that Cheng describes retrieving pizza restaurant
visual indicators. This corresponds to the recited the ad selections. Final
Act. 7.
With respect to claims 13, 19, 21, 22, and 24, 9 we are persuaded by
Appellant's argument that the art does not describe the recited use of
thresholds. App. Br. 19. The Examiner makes no determinations as to this
limitation.
We are not persuaded by Appellant's argument that "Cheng and Beckner
do not disclose or suggest 'extracting information about the geographical
locations from the location events,' as recited in claims 4 and 23." App. Br.
20 ( emphasis omitted). Again, Appellant does not appear to appreciate that
location identifying information are attributes. As we determine supra, such
data is part of Cheng's search that corresponds to the location event.
We are persuaded by Appellant's argument that "Cheng and Beckner do
not disclose or suggest 'wherein calculating the quality score for the places
object comprises: defining a scoring model that includes selected of the
attributes as weights in the scoring model; and scoring the places object
using the scoring model,' as recited in claim 8. This argument applies to
claims 8, 22, and 26." App. Br. 20-22 (emphasis omitted). The Examiner
9 Appellant refers to claim 16 rather than 13, but it is claim 13, and not claim
16, that has this limitation. Claims 21 and 22 are not explicitly referred to,
but they depend from claim 19.
22
Appeal2017-005884
Application 13/846,442
makes no determinations as to this limitation, but instead cites portions of
the art referring to alternate attributes. Final Act. 10-11.
With respect to claims 9--13, and 27, 10 we are persuaded by Appellant's
arguments as to those claims. App. Br. 22-24.
CONCLUSIONS OF LAW
The rejection of claims 1--4, 7-19, and 21-27 under 35 U.S.C. § 101 as
directed to a judicial exception without significantly more is proper.
The rejection of claims 1--4, 7, 14--18, 23, and 25 under 35 U.S.C. §
103(a) as unpatentable over Cheng and Beckner is proper.
The rejection of claims 8-13, 19, 21, 22, 24, 26, and 27 under 35 U.S.C.
§ 103(a) as unpatentable over Cheng and Beckner is improper.
DECISION
The rejection of claims 1--4, 7-19, and 21-27 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). See 37 C.F.R.
§ 1.136(a)(l)(iv) (2011).
10 Appellant does not refer to claim 10 in the arguments (see App. Br. 22-
23), but claim 10 depends from claim 9.
23
Appeal2017-005884
Application 13/846,442
AFFIRMED
24