Ex Parte Henderson

Patent Trial and Appeal Board

May 15, 2018

14152579 (P.T.A.B. May. 15, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/152,579 01/10/2014 Ronald S. Henderson
23643 7590 05/17/2018
Barnes & Thornburg LLP (IN)
11 S. Meridian Street
Indianapolis, IN 46204
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.
62271-225760 5231
EXAMINER
CASTRO, ALFONSO
ART UNIT PAPER NUMBER
2421
NOTIFICATION DATE DELIVERY MODE
05/17/2018 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):
INDocket@btlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RONALD S. HENDERSON
Appeal2017-010377
Application 14/152,579 1
Technology Center 2400
Before ALLEN R. MACDONALD, ADAM J. PYONIN, and
SHARON PENICK, Administrative Patent Judges.
PYONIN, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) from a final
rejection of claims 1, 3, 4, 9--12, and 14--24, which are all of the pending
claims. See App. Br. 6. We have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM.
1 Appellant, Ronald S. Henderson, is identified as the real party in interest.
App. Br. 2.
Appeal2017-010377
Application 14/152,579
STATEMENT OF THE CASE
The Application is directed to "storing, in a database of a computer,
information pertaining to subscriptions of subscribers that have signed up to
have their names displayed on a scrolling fan ticker during a sports
broadcast," and "providing to a television network a list of the names of the
subscribers that are to be displayed on the scrolling fan ticker during the
sports broadcast." Abstract. Claims 1, 10, and 24 are independent. Claim 1
is reproduced below for reference (with formatting added):
1. A method comprising
storing in a database of a computer information pertaining
to subscriptions of subscribers that have signed up to have the
names of the subscribers displayed on a scrolling fan ticker
during a sports broadcast,
providing to a television network a list of the names of the
subscribers that are to be displayed on the scrolling fan ticker
during the sports broadcast,
populating the database with information received from a
sports organization pertaining to season ticket holders and
offering the subscriptions only to the season ticket holders,
contacting the season ticket holders to offer subscriptions,
wherein contacting the season ticket holders to offer
subscriptions comprises at least one of the following:
e-mailing at least some of the season ticket holders,
text messaging at least some of the season ticket holders,
calling at least some of the season ticket holders
using a telephone, and
mailing literature to at least some of the season
ticket holders,
hosting a website that is used by subscribers to establish
their subscriptions, and
providing on the website selectable fields for a plurality of
sports organizations that are used by subscribers to establish their
subscriptions.
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Application 14/152,579
Claims 1, 3, 4, 9--12, and 14--24 stand rejected under 35 U.S.C. § 101
as being directed to patent-ineligible subject matter. See Final Act. 3.
ANALYSIS
We have reviewed the Examiner's rejection in light of Appellant's
arguments. We have considered in this Decision only those arguments
Appellant actually raised in the Briefs. Any other arguments Appellant
could have made but chose not to make are deemed waived. See 37 C.F.R. §
4I.37(c)(l)(iv). We are not persuaded of Examiner error; we adopt the
Examiner's findings and conclusions as our own, and we add the following
for emphasis.
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 35 U.S.C. § 101 to include an
implicit exception: laws of nature, natural phenomena, and abstract ideas
are not patentable. See, e.g., Alice Corp. v. CLS Banklnt'l, 134 S. Ct. 2347,
23 54 (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,
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,"
e.g., to an abstract idea. Alice, 134 S. Ct. at 2355. If the claims are directed
to a patent-ineligible concept, the inquiry proceeds to the second step, where
the elements of the claims are considered "individually and 'as an ordered
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combination"' to determine whether there are additional elements that
"'transform the nature of the claim' into a patent-eligible application."
Alice, 134 S. Ct. at 2355 (quoting Mayo, 132 S. Ct. at 1297).
I. Independent Claim 1
Appellant argues the Examiner's rejection of independent claim 1 and
dependent claims 3, 4, 9, and 19 is in error, because the "claims are not
directed toward an abstract idea (i.e., a patent ineligible concept), and "the
claims, as a whole, amount to significantly more than the [purported]
abstract idea." App. Br. 7. We select claim 1 as representative of this
group, pursuant to our authority under 37 C.F.R. § 4I.37(c)(l)(iv).
A. Alice Step One
Appellant argues the Examiner errs in "stat[ing] that the claims recite
the abstract idea of 'using advertising as an exchange wherein subscribers
pay a premium to have content advertised"' (App. Br. 7), because "the
present application makes a distinction between advertising and a scrolling
fan ticker" (Reply Br. 3). Appellant argues that "a scrolling fan ticker is not
considered to be advertising because the fans are simply demonstrating
their loyalty to a sports entity and are not offering anything for sale." Reply
Br. 3.
We are not persuaded the Examiner's determination, that claim 1 is
directed to an abstract idea, is in error. See Final Act. 4. Appellant's
arguments refer to "advertising" as offering something "for sale," and ignore
the Examiner's use of the term, as a "public notice" or the "action of making
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Application 14/152,579
generally known; a calling to the attention of the public." Ans. 6-7 ( quoting
http://www.dictionary.com/browse/advertisement.). We find the Examiner's
application of advertising to the characterization of the claim to be
reasonable: claim 1 recites subscribers that have signed up to have their
names displayed during a sports broadcast, which is an "advertisement" of
their names. See Final Act. 3--4; Ans. 13. Thus we agree with the Examiner
that claim 1 is directed to an abstract idea, as the idea of having subscribers
pay a premium for their names to be called to the attention of the public is
similar to concepts that have been found abstract. See Ans. 7; see also, e.g.,
Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed. Cir. 2014);
Smariflash LLC v. Apple Inc., 680 F. App'x 977, 983 (Fed. Cir. 2017)
(holding the "claims are directed to the abstract idea of 'conditioning and
controlling access to data based on payment"'); NexusCard, Inc. v. Kroger
Co., 173 F. Supp. 3d 462, 467 (E.D. Tex. 2016), aff'd, No. 2016-2074, 2017
WL 1908190 (Fed. Cir. 2017) ( collecting customer information and
membership discount programs); Affinity Labs of Texas, LLC v.
Amazon.com, Inc., 838 F.3d 1266, 1271 (Fed. Cir. 2016) (finding
determining customizing a user interface to have targeted advertising based
on user information is abstract).
Additionally, we do not find the use of the term "advertising," with
respect to the claims, to be dispositive. Appellant contends "[ t ]he ultimate
aim of the independent claims of the present application is the provision of a
'scrolling fan ticker' on a 'sports broadcast."' App. Br. 8; see also Reply Br.
4 ("The scrolling fan ticker which is the subject of the claims of the present
application is a narrowly tailored term which refers to very limited content
( e.g., fan names) shown in very limited circumstances ( e.g., a sports
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broadcast)."). Displaying the names of subscribers, such as on a sports
broadcast fan ticker, is an idea of itself, or a method of organizing human
activity, that does not place a claim within the realm of patent eligibility. 2
Nor has Appellant shown the claimed scrolling fan ticker to be distinct,
under Alice, from prior methods of publishing subscriber names. See Spec.
,r,r 2-3 ( describing known ways of publicly displaying subscriber
information); see also FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d
1089, 1094 (Fed. Cir. 2016) (merely implementing an old practice in a new
environment is abstract).
We are also unpersuaded by Appellant's contention that "[t]here is no
attempt in the claims of the present application to constrain others from
practicing the abstract idea of using advertising as an exchange," thus
"others would not be precluded or pre-empted from using advertising in
exchange for a premium in light of the claims of the present application."
App. Br. 7. Preemption, however, is not the sole test for patent eligibility,
and any questions on preemption in the instant case have been resolved by
the above analysis. As our reviewing court has explained: "questions on
preemption are inherent in and resolved by the § 101 analysis," and,
although "preemption may signal patent ineligible subject matter, the
absence of complete preemption does not demonstrate patent eligibility."
2 We find displaying subscriber names to be similar to claims our reviewing
court has found abstract. See, e.g., Easy Web Innovations, LLC v. Twitter,
Inc., 2017 WL 1969492, 2 (Fed. Cir. 2017); see also Elec. Power Grp. LLC
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").
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Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir.
2015); cf OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1362---63
(Fed. Cir. 2015) ("[T]hat the claims do not preempt all price optimization or
may be limited to price optimization in the e-commerce setting do not make
them any less abstract.").
Accordingly, we agree with the Examiner that claim 1 is directed to
an abstract idea. See Ans. 3-7.
B. Alice Step Two
Appellant argues that, "[ e ]ven if the claims are directed toward an
abstract idea, the claims, as a whole, amount to significantly more than the
abstract idea." App. Br. 8 (emphasis omitted). Particularly, Appellant
contends the aim of claim 1, "[h ]aving a scrolling fan ticker during a sports
broadcast on which subscribers' names appear[,] is not well-understood or
conventional or routine," because "[i]f it were, the examiner could find it in
the prior art." App. Br. 8-9. Appellant elaborates that, "while scrolling
tickers on sports broadcasts may be known, ... [ o ]ffering subscriptions may
be known," and "[h Jo sting a website may be known," what is not known is
the ordered combination of claim 1: "[ scrolling tickers on sports broadcasts]
dedicated to displaying the names of subscribing fans, including only the
names of season ticket holders," "offering subscriptions to people ( only
season ticket holder in claim 1) to have their names displayed on a scrolling
fan ticker," and "hosting [ a website] for people to subscribe to have their
names included on a scrolling fan ticker of a sports broadcast." App. Br. 9.
We are not persuaded the Examiner errs in finding "whether taken
individually or together as an ordered combination, the claim elements fail
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Application 14/152,579
to transform the claimed abstract idea into a patent-eligible application."
Advisory Act. 2. Appellant does not challenge the Examiner's evidence, or
present sufficient reasoning, to show the Examiner errs in finding the claim
elements are well-understood, routine, and conventional to a skilled artisan.
See Ans. 10-11, citing (at n.26) US Patent No. 7,774,815 Bl, iss. Aug. 10,
2010 ("Context-Sensitive Interactive Television Ticker"); US 2011/0296476
Al, publ. Dec. 1, 2011 ("Systems And Methods For Providing A Social
Mashup In A Content Provider Environment"); Spec. ,r,r 2-3, 33.
Further, we agree with the Examiner that claim 1 does not provide a
technical benefit; rather the claim recites "the performance of some business
practice known from the pre-Internet world (i.e., subscribers advertising
during sports broadcasts) along with the requirement to perform it on the
Internet." Ans. 13; see also Spec. 2-3; Alice, 134 S. Ct. at 2359 (finding
claims do not recite significantly more when the "claims do not, for
example, purport to improve the functioning of the computer itself');
compare Bascom Glob. Internet Servs., Inc. v. AT&T Mobility LLC, 827
F.3d 1341, 1351 (Fed. Cir. 2016) ("the claimed invention represents a
'software-based invention[] that improve[s] the performance of the computer
system itself").
Accordingly, we agree with the Examiner that independent claim 1
does not include elements that transform the nature of the claim into a
patent-eligible application. See Ans. 7-14. We sustain the Examiner's
rejection of claim 1, and claims 3, 4, 9, and 19.
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II. Independent Claims 10 and 24
Appellant argues the Examiner's rejection of independent claim 10 is
in error, for the same reasons as presented for independent claim 1, and also
because claim 10 additionally "requires two classes of subscriptions for the
scrolling fan ticker, namely, a 'general subscription' and a 'premium
subscription,"' which is "more costly than the general subscription." App.
Br. 10-11. "More importantly," according to Appellant, "claim 10 requires
that a larger area on the scrolling fan ticker is occupied for each of the
premium subscriptions than each of the general subscriptions." App. Br. 11.
Appellant presents similar arguments for independent claim 24, and quotes
further limitations from this claim. See App. Br. 15-16.
We are not persuaded the Examiner errs in finding claim 10 is
unpatentable pursuant to the two step Alice analysis. See Ans. 15-16.
Appellant does not challenge the Examiner's findings in the Answer. Nor
do Appellant's statements in the Appeal Brief show how the disputed
limitations, which are directed to benefits for classes of subscribers, are
anything more than the abstract idea encompassed by independent claim 1,
or transform the nature of the claim into a patent-eligible application.
Accordingly, we sustain the Examiner's rejection of independent claim 10,
and independent claim 24 for similar reasons. See Ans. 27-30.
III. Dependent Claims 11, 12, 14-18, 20, and 21-23
For each of the remaining claims, Appellant quotes the respective
claim limitations, and states the Examiner's "conclusory, boilerplate
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sentences cannot possibly be considered a sufficient examination of the
particularly recited limitations." App. Br. 11-14.
We are not persuaded the Examiner errs. We find the Examiner has
provided a thorough analysis of each of the argued dependent claims, which
we incorporate herein. See Ans. 16-27. Appellant does not challenge this
analysis. Thus, we find Appellant has been notified of the reasons for the
rejection with such information "as may be useful in judging of the propriety
of continuing the prosecution of [the] application," as required. In re Jung,
637 F.3d 1356, 1362 (Fed. Cir. 2011) (alteration in original) (quoting 35
U.S.C. § 132). Accordingly, we sustain the Examiner's rejection of claims
11, 12, 14--18, 20, and 21-23.
DECISION
The Examiner's decision rejecting claims 1, 3, 4, 9-12, and 14--24 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
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