Ex Parte Karson et al

Patent Trials and Appeals Board

Dec 21, 2018

12342944 - (D) (P.T.A.B. Dec. 21, 2018)

United States Patent and Trademark Office
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
12/342,944 12/23/2008 Steven R. Karson RWF-1266-0050 3590
23117 7590 12/26/2018
NIXON & VANDERHYE, PC
901 NORTH GLEBE ROAD, 11TH FLOOR
ARLINGTON, VA 22203
EXAMINER
BROWN, ALVIN L
ART UNIT PAPER NUMBER
3682
NOTIFICATION DATE DELIVERY MODE
12/26/2018 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):
PTOMAIL@nixonvan.com
pair_nixon @ firsttofile. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte STEVEN R. KARSON,
MARK G. SMITH,
and MICHAEL J. BURGISS
Appeal 2016-003283
Application 12/342,944
Technology Center 3600
Before ANTON W. FETTING, MICHAEL W. KIM, and
KENNETH G. SCHOPFER, Administrative Patent Judges.
FETTING, Administrative Patent Judge.
DECISION ON SECOND REQUEST FOR REHEARING
STATEMENT OF THE CASE
This is the second decision on rehearing in Appeal No. 2016-003283.
We have jurisdiction under 35 U.S.C. § 6(b).1
Requests for Rehearing are limited to matters misapprehended or
overlooked by the Board in rendering the original decision, or to responses
1 We will refer to the Second Request for Rehearing, filed November 26,
2018, as “Second Request.”
Appeal 2016-003283
Application 12/342,944
to a new ground of rejection designated pursuant to § 41.50(b). 37 C.F.R.
§ 41.52. This Second Request is in response to a new ground of rejection
designation raised in the prior Decision on Request for Rehearing mailed
September 25, 2018.
ISSUES ON REHEARING
Appellants raise the issue of whether the new ground of rejection,
with its attendant evidence, is proper.
ANALYSIS
In our Decision mailed March 2, 2018, we determined that the
rejection of claims 1—16 under 35U.S.C. § 101 as directed to non-statutory
subject matter is proper. Decision 13. This rejection was based on the Alice
two part test. Alice Corp. v CLS Bank Inti, 134 S. Ct. 2347, 2355 (2014).
The second part of the test considers the claim elements individually, and as
an ordered combination, while considering the claims as a whole to
determine whether there is an inventive concept. In their first Request for
Rehearing, Appellants contended that the Examiner failed to present
evidence in support of determining that the claim elements were well-
understood, routine, conventional activity. Request 4. For support,
Appellants cited Berkheimer v. HP Inc., 881 F.3d 1360, 1369 (Fed. Cir.
2018) (“Whether something is well-understood, routine, and conventional to
a skilled artisan at the time of the patent is a factual determination.”). In
response, we added such evidence to the record in our Decision on Request
for Rehearing, and denominated the rejection as a new ground. Appellants
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now exercise the opportunity for response from this new ground in this
Second Request.
Before responding to these arguments individually, we first note that
the arguments depend heavily on what Appellants’ refer to as the overlap
situations. This refers to the phrase “overlap situations” in the claim
limitation of
forecasting availability of future opportunities for delivering
targeted advertising content via at least one server on the
network in response to said assessed future capacity and said
assessed reserved deliveries, including the processor taking
overlap situations into account, wherein an overlap situation
occurs if advertising content is responsive to more than one
specific user query.
Claim 1. To put this in context, claim 1 is a method for delivering ads on the
internet. Claim 1 does not recite any particular technology for doing so, but
instead recites applying decision criteria for selecting the ads to deliver.
These criteria include user data, forecasted ad availability, and reserved ad
content delivery. Forecasted availability and reserved content delivery are in
turn dependent on user perceptions as they are selected relative to user query
responsiveness. Overlap situations, being situations of user perceptual
overlap, thus may alter the calculations of forecasted availability, and thus
the ad selection criteria.
From this context we determine that such overlap situations refer to
perceptual situations because their definition is based on how responsive
advertising content is. Advertising content is perceptual in nature, being
content meant to be perceived for some purpose. That is, an overlap
situation occurs where the perceptual effect of content in the mind of the
beholder is responsive to more than one query. The import of this in the
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context of subject matter eligibility arises from the general lack of patentable
weight afforded limitations perceptible only by the human mind. In re
Bernhart, 417 F.2d 1395, 1399 (CCPA 1969).
Not only is an overlap situation something only perceptible by the
human mind, the claims only take them into account in some unrecited
manner in making a forecast. A forecast is a mental model of an
expectation, again only perceptible by the human mind. And this forecast is
then used in some unrecited manner to select an ad for presentation. The ad
itself is perceptible only in the human mind. So the argued overlap situation
is an abstract idea perceptible only in the human mind, used to create a
forecast, another abstract idea perceptible only in the human mind, to select
an ad, another abstract idea perceptible only in the human mind. No
technological steps are recited for performing this.
Appellants present three series of arguments. The first is relative to
the Merriman reference, introduced to show that using an advertising server
is conventional. The second is relative to the Bittel and Sandbrook
references, introduced to show the conventionality of sales administration
techniques, including forecasting and planning and delivering ads. The third
is relative to another PTAB case.
We are not persuaded by Appellants’ argument that “[t]he Merriman
Citation Shows The Present Invention Is Necessarily Rooted In
Computer Technology In Order To Overcome A Problem Specifically
Arising In The Realm Of Computer Networks.” Second Request 2.
Appellants contend that
if two different ads could be served to the same user (an
“overlap situation” in the terminology of the present
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Application 12/342,944
application), Merriman’s system gives priority to the ad that is
the furthest “behind schedule” based on its “satisfaction index.”
This is exactly the problem Applicant’s disclosure recognizes —
the problem with the way systems such as Merriman handle
such “overlap situations” when it comes to trying to predict in
advance the capacity of a system to deliver a certain number of
ad impressions.
Merriman makes apparent that this problem is peculiar to real
time delivery by an ad targeting engine over the Internet or
other real time delivery network in response to unscheduled
electronic user requests. For example, the problem does not
apply to advertisements delivered electronically over broadcast
networks or in print where the number of ads that can be
delivered per time period (or newsprint space) can be scheduled
in advance (see 0007 of applicant's specification).
Second Request 2—3.
Appellants appear to be arguing that because there is a problem
peculiar to real time delivery, the solution is a practical application. First,
just because something is peculiar to real time delivery does not mean it is
caused by real time delivery. This is a case of placing advertising in an
internet context, not of creating a technological mechanism for ad delivery
with the internet. “Limiting the invention to a technological environment
does ‘not make an abstract concept any less abstract under step one.’”
Berkheimer v. HP Inc., 881 F.3d at 1367. Second, the claims do no more
than modify selection criteria for ad selection. Any problem with such
criteria arises from marketing and ad contract considerations, not from how
ads are delivered. That one my choose to base those marketing and contract
considerations on ad delivery metrics is just that, a matter of making a
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choice on subjective criteria to apply, and not a technological
implementation issue.
This is a marketing problem, that of creating ads and selecting from an
array of advertisements. Contrary to Appellants’ assertion, Merriman does
not make “apparent that this problem is peculiar to real time delivery by an
ad targeting engine over the Internet or other real time delivery network in
response to unscheduled electronic user requests.” See Appellants quote
supra. At best, Merriman shows that it was already customary to use
forecasted impressions as such decision criteria. The problem is not even
unique to the internet, but only highlighted by it. Even with ads in printed
publications, the ads are targeted to the readers of those particular
publications, and such ads may have content amenable to notice by plural
sub-types of that publication’s readers, creating an overlap situation.
To the extent overlap situations cause a problem, the problem arises
from the contractual arrangements for certain numbers of ads and the
uncertainty in ad viewership, not from the internet. The solution recited in
the claims is “forecasting availability of future opportunities for delivering
targeted advertising content . . . taking overlap situations into account.”
Claim 1. The solution is therefore not in internet technology, but in
forecasting, itself an abstract concept and activity, of opportunities, which is
an even more abstract concept than forecasting, and taking overlap situations
into account, i.e., considering the existence of such situations. Not only is
an overlap situation an abstraction, but the action applied is the abstract idea
of consideration. There is no technological component to such an action.
At bottom, the claimed context and attendant problem and solution arises
because, having already decided to post ads on internet pages, advertisers
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created agreements using the statistics from those pages. It is the decision to
use statistics for forecasting in an advertising contract, not the technology of
sending ads over the internet, that then leads to contractual problems in
forecasting and the proposed use of the overlap situations as solutions.
Appellants do not argue that they invented any improvement in the
technology of serving ads, or for forecasting ad delivery. They instead argue
that recognizing overlap situations, that is perceiving them, is technological.
Again, simply perceiving information is not a technological act.
Appellants next review each of the Bittel and Sandbrook references we
applied. Second Request 2—8. After reviewing each portion, Appellants
contend that the application of these references is in error because the art
predates electronic advertising, and that the art fails to describe the asserted
problem of overlap situations or to describe that it was routine and
conventional. Id.
Appellants conflate the issues the art was applied for. Appellants asked
the Office to produce evidence that the claim elements were routine.
Appellant respectfully requests the PTAB to reconsider its
3/2/18 Decision affirming the rejection under 35 USC 101 in
view of Berkheimer v. HP, Inc., 881 F.3d 1360, 125 U.S.P.Q.2d
1649 (Fed. Cir. 2018). Appellant respectfully submits that
Berkheimer requires the PTAB to remand this case to the
Examiner for an evidentiary showing that the claim elements
"are well- understood, routine, conventional activities
previously known to the industry" that "do no more than require
a generic computer to perform generic computer functions"
Request 1. None of Appellants’ contentions rebut our showing that the
claim steps are routine and conventional. Instead, Appellants now argue that
they were not applied to the context of electronic advertising and its alleged
problems, and in particular did not describe what Appellants refer to as an
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overlap situation. As to the first contention, we responded to the issue of
placing a known conventional practice in a new context supra.
As to the second contention, the issue regarding the application of
references is whether the steps recited were routine and conventional, not
whether the purpose of the steps was. Such purpose is in the mind of the
beholder and does not require an evidentiary showing in this context. In re
Bernhart, supra. The results as such, as distinguished from the purpose, of
the recited claims are delivering ads based on availability and reserved
amounts. This is conventional data analysis and transfer. Elec. Power Grp.
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”); see also In re TLI 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). 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).
We are not persuaded by Appellants’ argument that our decision is
contrary to that in Ex parte Alvaro Bo Liv Ar and Weny An Hu, Appeal
2017-003747 (09/28/2018). Second Request 8—9. A separate PTAB
proceeding presents a different fact situation and has no legal precedential
value unless the Decision is made precedential. Appellants cite a quote from
the Decision in that case referring to DDR Holdings, LLC v. Hotels.com,
L.P. 773 F.3d 1245 (Fed. Cir. 2014).
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In DDR Holdings, the Court evaluated the eligibility of claims
“addressing] the problem of retaining website visitors that, if adhering to
the routine, conventional functioning of Internet hyperlink protocol,
would be instantly transported away from a host’s website after
‘clicking’ on an advertisement and activating a hyperlink.” Id. at 1257.
There, the Court found that the claims were patent eligible because they
transformed the manner in which a hyperlink typically functions to
resolve a problem that had no “pre-Internet analog.” Id. at 1258. The
Court cautioned, however, “that not all claims purporting to address
Internet-centric challenges are eligible for patent.” Id. For example, in
DDR Holdings the Court distinguished the patent-eligible claims at issue
from claims found patent-ineligible in Ultramercial. See id. at 1258—59
(citing Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715—16 (Fed. Cir.
2014)). As noted there, the Ultramercial claims were “directed to a
specific method of advertising and content distribution that was
previously unknown and never employed on the Internet before.” Id. at
714 (quoting Ultramercial, 772 F.3d at 715—16). Nevertheless, those
claims were patent ineligible because they “merely recite[d] the abstract
idea of ‘offering media content in exchange for viewing an advertisement,’
along with ‘routine additional steps such as updating an activity log,
requiring a request from the consumer to view the ad, restrictions on public
access, and use of the Internet.’” Id.
The instant claims are more similar to the advertising claims in
Ultramercial, as there is no technological problem created by technology
and the solution is conventional data processing. Again, the problem as such
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is in meeting the terms of the advertising agreements, not in technologically
induced operational changes.
DECISION
To summarize, our decision is as follows:
We have considered the SECOND REQUEST FOR
REHEARING; and
We determine that Appellants have now availed
themselves of the opportunity to rebut the new ground in the
prior Decision
and
We DENY the request that we reverse the rejection as to
claims 1—16.
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).
REHEARING DENIED
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