Ex Parte Hubbard

Patent Trial and Appeal Board

Sep 19, 2016

12380457 (P.T.A.B. Sep. 19, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/380,457 0212712009
27899 7590 09/21/2016
WILLIAMJ. BENMAN
1875 CENTURY PARK EAST
SUITE 700
LOS ANGELES, CA 90067
FIRST NAMED INVENTOR
Robert B. Hubbard
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.
Hubbard-5 1397
EXAMINER
FLYNN, KEVIN H
ART UNIT PAPER NUMBER
3628
NOTIFICATION DATE DELIVERY MODE
09/21/2016 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):
wbenman@pacbell.net
wbenman@gmail.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ROBERT B. HUBBARD
Appeal2015-007006
Application 12/380,457
Technology Center 3600
Before ANTON W. PETTING, JOSEPH A. FISCHETTI, and
PHILIP J. HOFFMANN, Administrative Patent Judges.
PETTING, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE1
Robert B. Hubbard (Appellant) seeks review under 35 U.S.C. § 134 of a
final rejection of claims 1-18, the only claims pending in the application on
appeal. Appellant petitioned to advance the order of this appeal under the
PT AB' s Streamlined, Expedited Patent Appeal Pilot for Small Entities on
1 Our decision will make reference to the Appellant's Appeal Brief ("App.
Br.," filed July 17, 2013) and Reply Brief ("Reply Br.," filed July 20, 2015),
and the Examiner's Answer ("Ans.," mailed June 2, 2015) and Final Action
("Final Act.," mailed April 16, 2012).
Appeal2015-007006
Application 12/380,457
August 25, 2016. The petition decision granting the petition was mailed
August 26, 2016. In that petition, under the terms of the program, Appellant
agreed that for each ground of rejection applying to two or more claims, the
PTAB may select a single claim from the claims subject to each ground of
rejection and decide the appeal to be made special with respect to every
claim subject to that ground of rejection on the basis of the selected claim
alone. We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b).
The Appellant invented a way of optimizing the pricing of multimedia
content delivery. Specification Title.
An understanding of the invention can be derived from a reading of
exemplary claim 1, which is reproduced below (some paragraphing added).
1. A system for setting a price for delivering multimedia
content to subscribers' devices comprising:
a server;
memory coupled to said server;
software stored in said memory and executed by said server for
obtaining data on subscribers' actions on said devices
and
software stored in said memory and executed by said server for
determining a price to charge a content provider to
deliver multimedia content to said devices based on said
data.
The Examiner relies upon the following prior art:
Landesmann
Strauss
Davis
US 2002/0052782 Al
US 2007/0271136 Al
US 2008/0147484 Al
2
May 2, 2002
Nov. 22, 2007
June 19, 2008
Appeal2015-007006
Application 12/380,457
Claims 1-18 stand rejected under 35 U.S.C. § 101 as directed to non-
statutory subject matter.
Claims 1---6, 8, and 10-18 stand rejected under 35 U.S.C. § 102(b) as
anticipated by Landesmann.
Claims 7 and 9 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over Landesmann and Strauss.
Claims 1-18 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over Davis and Landesmann.
ISSUES
The issue of statutory subject matter tum primarily on whether the
claims are directed to abstract ideas. The issues of anticipation and
obviousness tum primarily on whether Landesmann anticipates the claims.
FACTS PERTINENT TO THE ISSUES
The following enumerated Findings of Fact (FF) are believed to be
supported by a preponderance of the evidence.
Facts Related to the Prior Art
Landesmann
01. Landesmann is directed to the field of marketing, and more
particularly to the field of buyer-driven targeting of purchasing
entities. Landesmann para. 2.
02. Landesmann describes calculating a charge to the third party
advertiser for the search and/or distribution of the incentive to the
3
Appeal2015-007006
Application 12/380,457
group of buyer entities. The charge may be calculated on the basis
of the various scores of each of the buyer entities in the groups
which measure how valuable a buyer entity is to advertisers. This
value could relate to the overall value of that buyer entity to all
advertisers. Alternatively or additionally, it could relate to the
value of that buyer entity to advertisers in a particular product
category. The scores and charges for each buyer entity can be a
function of the recency/timing and volume of its past purchases,
with different weights given to different categories of products,
types of products and different sellers from whom the buyer entity
purchased its products, as well as a function of the responsiveness
of that buyer entity to previous promotions and the degree to
which a buyer entity limits the number of advertisements and
promotions it wishes to receive in a particular time period.
Landesmann para. 194.
Strauss
03. Strauss is directed to online advertising and, in particular, to the
concept of displaying relevant advertising based on geographic
proximity of the viewer to the advertiser combined with
scheduling preferences of the advertiser. Strauss para. 1.
Davis
04. Davis is directed to advertising and more particularly to a
method of cost optimizing advertising on a portable
communication device. Davis para. 3.
4
Appeal2015-007006
Application 12/380,457
ANALYSIS
Claims 1-18 rejected under 35 U.S.C. § 101 as directed to non-statutory
subject matter
The Examiner finds that claims 1-18 are directed to the abstract idea of
determining a price to charge a content provider based on subscriber action
data. Ans. 2. We select method claim 18 as representative.
The Supreme Court
set forth a framework for distinguishing patents that claim laws
of nature, natural phenomena, and abstract ideas from those that
claim patent-eligible applications of those concepts. First, []
determine whether the claims at issue are directed to one of
those patent-ineligible concepts. [] If so, we then ask, "[ w ]hat
else is there in the claims before us? [] To answer that question,
[] consider the elements of each claim both individually and "as
an ordered combination" to determine whether the additional
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, 134 S. Ct. 2347, 2355 (2014) (citing
Mayo Collaborative Services v. Prometheus Labs, Inc., 132 S. Ct. 1289
(2012)).
To perform this test, we must first determine whether the claims at issue
are directed to a patent-ineligible concept.
While the Court in Alice made a direct finding as to what the claims were
directed to, we find that this case's claims themselves and the Specification
provide enough information to inform one as to what they are directed.
5
Appeal2015-007006
Application 12/380,457
The preamble to claim 18 recites that it is a method for setting a price.
The two steps in claim 18 result in determining a price to charge a content
provider. The Specification title recites that the invention relates to a system
and method for optimizing the pricing of multimedia content delivery. Thus,
all this evidence shows that, as the Examiner finds, claim 18 is directed to
setting a price.
It follows from prior Supreme Court cases, and Bilski in particular, that
the claims at issue here are directed to an abstract idea. Bilski v. Kappas,
561 U.S. 593 (2010). Like the risk hedging in Bilski, the concept of pricing
is a fundamental commercial practice long prevalent in our system of
commerce. The use of pricing is also a building block of all market
economies. Thus, pricing, like hedging, is an "abstract idea" beyond the
scope of§ 101. See Alice Corp. Pty. Ltd., 134 S. Ct. at 2356.
As in Alice Corp. Pty. Ltd., we need not labor to delimit the precise
contours of the "abstract ideas" category in this case. It is enough to
recognize that there is no meaningful distinction in the level of abstraction
between the concept of risk hedging in Bilski and the concept of pricing at
issue here. Both are squarely within the realm of "abstract ideas" as the
Court has used that term. See Alice Corp. Pty. Ltd., 134 S. Ct. at 2357.
We are not persuaded by Appellant's argument that the Examiner failed
to provide any evidence to support his finding. Reply Br. 16. Pricing is too
imbued in the literature and history of the capitalist economy in our country
and England before that to seriously raise this as an issue. Appellant
suggests that "it should be easy for the Examiner to cite references that show
at least one system in which a content provider is charged a price for
advertising based on the actions of subscribers on their mobile devices or
6
Appeal2015-007006
Application 12/380,457
some abstraction thereof." Id. This conflates what the claims are directed
to, viz. pricing, with the manner of doing so, viz. being based on the actions
of subscribers on their mobile devices, and what is priced, viz. content
provider advertising. These elements are considered once direction to an
abstract concept is found.
Basing a price on actions is no more than conceptual advice. No
particular algorithm is recited and, more to the point, no use of the price in
performing a transaction is recited either. Similarly, a description of what is
priced is conceptual advice as to what is being priced. Concepts, being
abstract ideas, are not patent eligible. Bilski v. Kappas, 561 U.S. at 601 and
653.
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.
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 Corp. Pty. Ltd., 134 S.Ct. at 2358 (citations omitted).
7
Appeal2015-007006
Application 12/380,457
"[T]he relevant question is whether the claims here do more than simply
instruct the practitioner to implement the abstract idea [] on a generic
computer." Alice Corp. Pty. Ltd., 134 S.Ct. at 2359. They do not.
Taking the claim elements separately, the function performed by the
computer at each step of the process is purely conventional. Using a
computer to record data and arrive at a price amounts to electronic data
collection and computation---one of the most basic functions of a computer.
All of these computer functions are well-understood, routine, conventional
activities previously known to the industry. In short, each step does no more
than require a generic computer to perform generic computer functions.
Looking at the claim as a whole, it accepts inputs to arrive at a number. Few
operations are more primitive or generic.
Considered as an ordered combination, the computer components of
Appellant's method add nothing that is not already present when the steps
are considered separately. Viewed as a whole, Appellant's method claims
simply recite the concept of pricing as performed by a generic computer.
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. Instead, the claims at issue amount to nothing
significantly more than an instruction to apply the abstract idea of pricing
using some unspecified, generic computer. Under our precedents, that is not
enough to transform an abstract idea into a patent-eligible invention. See
Alice Corp. Pty. Ltd., 134 S. Ct. at 2360.
We are not persuaded by Appellant's argument that
the Examiner appears to be suggesting that Alice precludes
patent eligibility for anything that is implemented on a generic
8
Appeal2015-007006
Application 12/380,457
computer. (See, for example, the Examiner's rationale re
Claims 16 and 17.) However, this position is not supported by
the case law. Alice does not proscribe the use of generic
computer components. Alice merely states that the recitation of
generic computer components does not render an abstract idea
patentable.
Reply Br. 17. While we agree with the premise, this argument is
inapplicable to using a generic computer to implement an abstract idea. We
agree that using a generic computer to implement a non-abstract process
might be eligible.
We are not persuaded by Appellant's argument that
the invention at issue is not a generic computer implementation.
Instead, it improves on the function of pricing advertising by
sensing user responses to ads via actions on cellular platforms,
distributing that data to servers via a network, and processing
that data at the server. Even though some steps may be
performed on generic components, the step of monitoring user
actions on a mobile platform requires the use of a custom applet
and is therefore not 'generic'. This constitutes: l) improvement
in another technology, i.e, the cellular phone as a data
collection tool; 2) an improvement in the functioning of the
pricing system itself; and 3) meaningful limitations beyond
linking the allegedly abstract idea to the technological
environment itself.
Id. None of the custom applet, manner of data collection, or pricing
algorithm is recited in the claims. Simply monitoring using interactions is
one of the most primitive operating system functions in any generic
computing device, including cell phones. As such this cannot be the basis
for finding the steps non-generic.
9
Appeal2015-007006
Application 12/380,457
As Appellant agreed that all claims stand or fall on the basis of the
selected representative claim, the rejection as to the remaining claims is
affirmed as well.
Cl aims 1-6, 8, and 1 0--18 re} ected under 3 5 U.S. C. § 10 2 (b) as anticipated
by Landesmann
The Examiner entered this rejection for the first time in the Answer.
Ans. 4--10. Appellant argues with specificity claims 5 and 6 only. Suppl.
Br. 18-19; Reply Br. 18-19.
This is insufficient to act as a separate argument under 37 C.F.R. § 41.37
of the remaining claims. As our reviewing court held,
we hold that the Board reasonably interpreted Rule 41.37 to
require more substantive arguments in an appeal brief than a
mere recitation of the claim elements and a naked assertion that
the corresponding elements were not found in the prior art.
In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011).
Accordingly, the rejection as to claims 1--4, 8, and 10-18 is summarily
affirmed. We select claim 1 as representative. As Appellant agreed that all
claims stand or fall on the basis of the selected representative claim, the
rejection as to the remaining claims is affirmed as well.
Claims 7 and 9 rejected under 35 U.S.C. § 103(a) as unpatentable over
Landesmann and Strauss
Appellant does not argue either of these claims. Accordingly the
rejection is summarily affirmed.
10
Appeal2015-007006
Application 12/380,457
Claims 1-18 rejected under 35 U.S.C. § 103(a) as unpatentable over Davis
and Landesmann
Appellant does not argue the substance of the rejection, but only that the
Davis reference should not be accepted as prior art. As we find that these
claims, with the exception of claims 7 and 9, are anticipated by Landesmann
alone, supra, a finding as to whether Davis is prior art is not necessary to
affirming the rejection. Anticipation is the epitome of obviousness.
Structural Rubber Products Co. v Park Rubber Co., 749 F.2d 707, 716 (Fed.
Cir. 1984).
We select claim 1 as representative. As Appellant agreed that all claims
stand or fall on the basis of the selected representative claim, the rejection as
to the remaining claims is affirmed as well.
CONCLUSIONS OF LAW
The rejection of claims 1-18 under 35 U.S.C. § 101 as directed to non-
statutory subject matter is proper.
The rejection of claims 1---6, 8, and 10-18 under 35 U.S.C. § 102(b) as
anticipated by Landesmann is proper.
The rejection of claims 7 and 9 under 35 U.S.C. § 103(a) as unpatentable
over Landesmann and Strauss is proper.
The rejection of claims 1-18 under 35 U.S.C. § 103(a) as unpatentable
over Davis and Landesmann is proper.
DECISION
The rejection of claims 1-18 is affirmed.
11
Appeal2015-007006
Application 12/380,457
No time period for taking any subsequent action in connection with this
appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l)(iv) (2011).
AFFIRMED
12