Ex Parte Jaffe et al

Patent Trial and Appeal Board

May 21, 2018

11829329 (P.T.A.B. May. 21, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO.
111829,329
149109 7590
EGL/Excalibur
P.O. Box 10395
Chicago, IL 60610
FILING DATE FIRST NAMED INVENTOR
07/27/2007 Christopher Jaffe
05/21/2018
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.
12729-279 (Y02324USOO) 1938
EXAMINER
SORKOWITZ, DANIEL M
ART UNIT PAPER NUMBER
3681
MAILDATE DELIVERY MODE
05/21/2018 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
Ex parte CHRISTOPHER JAFFE, RONALD MARTINEZ, and
JOSEPH O'SULLIV AN 1
Appeal 2016-006119
Application 11/829,329
Technology Center 3600
Before ROBERT E. NAPPI, JOHNNY A. KUMAR, and CARLL.
SILVERMAN, Administrative Patent Judges.
KUMAR, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from the Examiner's final
rejection of claims 18, 20, 22, 26, and 28-30. We have jurisdiction under
35 U.S.C. § 6(b).
We affirm.
Representative Claim
18. A method for providing electronic advertisements on a display
device of a remote device of a user, the method by a computer and
compnsmg:
transmitting an initial advertisement and a navigational element to the
remote device, the initial advertisement and navigational element being of a
specific format type, wherein the format type includes a specified area for
1 According to Appellants, Yahoo!, Inc. is the real party of interest in this
application. See App. Br. 2.
Appeal 2016-006119
Application 11/829,329
displaying the initial advertisement and the navigational element on the
remote device;
receiving a navigational signal from the remote device, the
navigational signal being transmitted when the navigational element is
selected by the user of the remote device;
selecting a subsequent advertisement based on the user's interaction
with the initial advertisement;
transmitting the subsequent advertisement after the first navigational
signal is received;
wherein the initial and subsequent advertisements are at least one of a
static media advertisement or a sequential media advertisement;
receiving information relating to the user's interaction with the initial
advertisement;
generating a user profile based on the information relating to the user's
interaction with the initial advertisement;
selecting and transmitting the subsequent advertisement based on the
user profile to the remote device, the subsequent advertisement being of the
specific format type of the initial advertisement, wherein the subsequent
advertisement is displayed where the initial advertisement was previously
displayed on the remote device; and
wherein the user's interaction with the initial advertisement
includes a determination if the user selected the initial advertisement
on the display device, wherein selection of the initial advertisement is
used in selecting a subject matter of the subsequent advertisement.
Rejections
1. Claims 18, 20, 22, 26, and 28-30 are rejected under 35 U.S.C. § 101
as being directed to non-statutory subject matter. Final Act. 2-3.
2. Claims 18, 20, 26, 28, and 29 are rejected under 35 U.S.C. § 102(b)
as being anticipated by Botelho (US 2002/0069105 Al; published June 6,
2006). Final Act. 4--7.
3. Claims 22 and 30 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Botelho and Wong (US 2003/0046149 Al; published
Mar. 6, 2003). Final Act. 7-8.
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Application 11/829,329
Issues on Appeal
Did the Examiner err in rejecting claims 18, 20, 22, 26, and 28-30
under 35 U.S.C. § 101, as being directed to patent-ineligible subject matter?
Did the Examiner err in rejecting claims 18, 20, 26, 28, and 29 under
35 U.S.C. § 102(b), as being anticipated by Botelho?
Did the Examiner err in rejecting claims 22 and 30 under pre-AIA
35 U.S.C. § 103(a), as being obvious over the cited combinations of
references?
Grouping of Claims
Based on Appellants' arguments (App. Br. 6-10), we decide the
appeal on the basis of representative claim 18.
ANALYSIS
We have considered all of Appellants' arguments and any evidence
presented. We disagree with Appellants' arguments and we adopt as our
own the findings, legal conclusions, and explanations, as set forth in the
Answer (2-5) in response to Appellants' arguments. (App. Br. 6-10; Reply
Br. 1-7). We highlight and address specific findings and arguments for
emphasis in our analysis below.
Rejection of Claims 18, 20, 22, 26, and 28-30 Under 35 USC§ 101
Under 35 U.S.C. § 101, an invention is patent-eligible if it claims a
"new and useful process, machine, manufacture, or composition of matter."
The Supreme Court, however, has long interpreted § 101 to include an
implicit exception: "[l]aws of nature, natural phenomena, and abstract ideas
are not patentable." See, e.g., Alice Corp. Pty. Ltd. v. CLS Bank Int 'l, 134 S.
Ct. 2347, 2354 (2014) (quoting Ass 'nfor Molecular Pathology v. Myriad
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Application 11/829,329
Genetics, Inc., 133 S. Ct. 2107, 2116 (2013) (internal quotation marks
omitted)). In Alice, the Supreme Court set forth an analytical "framework
for distinguishing patents that claim laws of nature, natural phenomena, and
abstract ideas from those that claim patent-eligible applications of those
concepts." Id. at 2355 (citing Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 566 U.S. 66, 71-73 (2012)).
The first step in our analysis is to determine whether the claims at
issue are directed to a patent-ineligible concept, such as an abstract idea. See
Alice, 134 S. Ct. at 2355.
If the claims are directed to a patent-ineligible concept, the second
step in the analysis is to "consider the elements of each claim both
individually and 'as an ordered combination' to determine whether [there
are] additional elements [that] 'transform the nature of the claim' into a
patent-eligible application." Id. (quoting Mayo, 566 U.S. at 78).
In other words, the second step is to "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."' Id. (quoting Mayo, 566 U.S. at 72-
73).
Alice - Step One
In the Appeal Brief, Appellants contend:
These claims include the elements of transmitting an
initial advertisement and a navigational element to the remote
device, receiving a first navigational signal from the remote
device, the navigational signal being transmitted when the
navigational element is selected by the user of the remote
device, selecting a subsequent advertisement based on the user's
interaction with the initial advertisement, and transmitting the
subsequent advertisement after the navigational signal is
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received. Additionally defined is that the user's interaction with
the initial advertisement includes a determination if the user
selected the initial advertisement on the display device, wherein
selection of the initial advertisement is used in selecting a
subject matter of the subsequent advertisement.
App. Br. 7.
Appellants cite Enfzsh, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed.
Cir. 2016) ("Enfish") to clarify specific requirements for properly analyzing
whether claims are actually directed to an abstract idea (Reply Br. 3-5) and
contend, inter alia:
Like the invention claimed in Enfzsh, the claimed invention is
directed to a specific improvement in computer technology. In
this case, the claimed invention is directed to a systems and
method for providing electronic advertisements on an electronic
device.
The claimed invention is an improvement in computer
technology. One of the drawbacks of prior art solutions is that in
order to maximize the amount of revenue received from third
party advertisers, remote service providers generally attempt to
increase the number of advertisements in their remote services.
However, electronic devices have a finite amount of display
space, limiting the amount of space for available for advertising,
negatively impacting the amount of revenue received from third
party advertisers.
(Reply Br. 4--5.)
However, improving electronic advertisements is not an improvement
to computer capabilities akin to Enfzsh 's self-referential table for a computer
database (see Enfzsh 822 F.3d at 1335-36). Rather, it is an improvement to a
process where computers are invoked merely as a tool, which qualifies as an
abstract idea.
The Examiner finds, and we agree
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the method steps claimed are directed to providing data to
display advertisements, based on user selections, an abstract idea,
considered an idea in and of itself. The claims as a whole disclose
only the abstract idea of providing targeted advertising (i.e. a
fundamental economic practice) using the conventional technology
available to and relying on information generally available to such
conventional technology (web click advertising systems).
Ans. 2.
Likewise, the Examiner determines, and we agree "the method steps
claimed, including a user selecting advertisements, do not improve upon the
underlying computing devices, but claim an improvement to a business
practice of targeting advertisements, not underlying technology." Ans. 4.
Thus, we conclude claim 18 is directed to a method for providing
targeted advertising, a fundamental economic practice. See Enfzsh, 822 F.3d
at 1335 (fundamental economic and conventional business practices are
often found to be abstract ideas, even if performed on a computer); OIP
Techs., Inc. v. Amazon.com Inc., 788 F.3d 1359, 1362-63 (Fed. Cir. 2015).
For at least these reasons, we conclude representative claim 18 is
directed to an abstract idea. (Alice - Step One.)
Alice - Step Two
Proceeding to step two of the Alice test articulated by the Supreme
Court, we further "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." Alice,
134 S. Ct. at 2355 (quoting Mayo, 566 U.S. at 78).
Regarding step two of the Alice analysis, Appellants cite to DDR
Holdings, LLC v. Hotels.com., 773 F.3d 1245, 1257 (Fed. Cir. 2014), and
contend, inter alia:
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In DDR Holdings, the asserted patents claimed a system and method
of generating a composite web page that combined certain visual
elements of a "host" website with content of a third-party merchant.
Even though the claims involved both the Internet and a computer,
they stood "apart because they [did] not merely recite the performance
of some business practice known from the pre-Internet world along
with the requirement to perform it on the Internet.
App. Br. 7-8.
In DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d at 1259, the
subject claim was held patent-eligible because it encompassed "an inventive
concept" for resolving a "particular Internet-centric problem." In contrast,
we find Appellants' method for "providing targeted advertising" does not
provide a solution "necessarily rooted in computer technology in order to
overcome a problem specifically arising in the realm of computer networks."
DDR, 773 F.3d at 1257.
Because we find all claims on appeal merely use a generic computer
or processor as a tool which is used in the way a computer normally
functions, we conclude claim 18 fails to impart any discernible improvement
upon the computer or processor, nor do Appellants' claims solve "a
challenge particular to the Internet" as considered by the court in DDR, 773
F.3d at 1256-57.
Thus, we conclude none of Appellants' claims are like the claim held
patent-eligible by the court in DDR, in which the claimed invention was
directed to the "challenge of retaining control over the attention of the
customer in the context of the Internet," such that:
Instead of the computer network operating in its normal,
expected manner by sending the website visitor to the third-party
website that appears to be connected with the clicked
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advertisement, the claimed system generates and directs the
visitor to the above-described hybrid web page that presents
product information from the third-party and visual "look and
feel" elements from the host website.
DDR, 773 F.3d at 1258-59.
Regarding step two of the Alice test, we find nothing in claims 18, 20,
22, 26, and 28-30 that adds anything "significantly more" to transform the
abstract concept of providing targeted advertising into a patent-eligible
application. See Alice, 134 S. Ct. at 2357. Appellants do not argue that each
of the steps or functions recited in claims 18, 20, 22, 26, and 28-30 is
individually inventive. Nor have Appellants shown that the claims (directed
to providing targeted advertising) improve the functioning of the computer
itself and amount to significantly more than the abstract idea of a
fundamental economic practice. See, e.g., BASCOM Glob. Internet Servs.,
Inc. v. AT&T Mobility LLC, 827 F.3d 1341, 1348 (Fed. Cir. 2016) ("An
abstract idea on 'an Internet computer network' or on a generic computer is
still an abstract idea."); Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d
1350, 1355 (Fed. Cir. 2016) ("We have repeatedly held that such invocations
of computers and networks that are not even arguably inventive are
insufficient to pass the test of an inventive concept in the application of an
abstract idea.") (Internal quotations omitted).
Applying the aforementioned guidance here, we conclude Appellants'
claims are not directed to an improvement in computer functionality, or
database functionality, or network functionality. Therefore, we conclude that
none of the claim limitations, viewed "both individually and as an ordered
combination," amount to significantly more than the judicial exception in
order to sufficiently transform the nature of the claims into patent-eligible
subject matter. See Alice, 134 S. Ct. at 2355 (internal quotations omitted)
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(quoting Mayo, 566 U.S. at 78).
Accordingly, for the reasons discussed above, we sustain the
Examiner's rejection under 35 U.S.C. § 101 of representative claim 18, and
grouped claims 20, 22, 26, and 28-30, as being directed to patent-ineligible
subject matter in light of Alice and its progeny. See Grouping of Claims,
supra.
Prior Art rejections under 35 USC§ 102(b)/ § 103(a)2
Based on Appellants' arguments in the Briefs, the principal and
dispositive issue of whether the Examiner erred in rejecting exemplary claim
18 turns on whether Botelho discloses "wherein the user's interaction with
the initial advertisement includes a determination if the user selected the
initial advertisement on the display device, wherein selection of the initial
advertisement is used in selecting a subject matter of the subsequent
advertisement." (hereinafter "the disputed limitations"). App. Br. 8-10;
Reply Br. 5-7. Independent claim 26 recites similar subject matter.
We adopt the findings of facts made by the Examiner in the Final
Action and Examiner's Answer as our own. We concur with the decision
reached by the Examiner in the Examiner's Answer. We highlight the
following for emphasis.
Appellants contend Botelho does not disclose the disputed
limitations. App. Br. 8; Reply Br. 5.
In particular, Appellants contend:
In Botelho, the user essentially picks which categories are of interest
to the user. The user can than scroll through these advertisements and
provide feedback if they like or do not like the advertisement.
2 Appellants did not provide separate arguments for dependent claims 20, 22,
and 28-30. App. Br. 10.
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However, the user's interaction with the advertisement is not
tracked and the user profile is not generated. Conversely, the present
claimed invention utilizes the user's interaction with the initial
advertisement (not a menu selection device like Botelho) and includes
a determination if the user selected the initial advertisement, wherein
selection of the initial advertisement is used in selecting a subject
matter of the subsequent advertisement.
App. Br. 9 (hereinafter "tracking feature").
The Examiner has identified the relevant portions of Botelho and has
provided sufficient explanation with corresponding citations to various parts
of the reference for disclosing the tracking feature of the disputed
limitations. In particular, the Examiner finds "Botelho teaches a generated
user profile, called user attributes in paragraph 70, tracked by user cookies,
and using to target ads in paragraph 71, map the contents of the individual
cookies to a specific advertisement or targeted content." Ans. 5 (citing
Botelho i-fi-170, 71). In other words, the Examiner equates Botelho's
attributes to the user profile and Botelho' s user cookies to the tracking of the
user's interactions.
The Examiner, giving the claim its broadest reasonable interpretation
consistent with the Specification, has properly found that the tracking feature
of the disputed limitations reads upon Botelho' s disclosure, as explained
above.
It follows that Appellants have not shown error in the Examiner's
rejection of independent claims 18 and 26. Thus, we sustain the rejection of
claims 18, 20, 26, 28, and 29 under 35 U.S.C. § 102.
Appellants have provided no separate arguments towards patentability
for claims 22 and 30. Therefore, the Examiner's§ 103 rejection of claims
22 and 30 is sustained for similar reasons to those noted supra.
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DECISION
We affirm the Examiner's rejection of claims 18, 20, 22, 26, and 28-
30 under 35 U.S.C. § 101.
We affirm the Examiner's § 102(b) rejections of claims 18, 20, 26, 28,
and 29 and the Examiner's § 103(a) rejections of claims 22 and 30.
No time period for taking any subsequent action in connection with
this appeal may be extended under 3 7 C.F .R. § 1.13 6( a)( 1 )(iv). See
37 C.F.R. § 41.50(f).
AFFIRMED
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