Ex Parte Kirkby

Patent Trial and Appeal Board

Aug 28, 2018

12549669 (P.T.A.B. Aug. 28, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/549,669 08/28/2009 Stephen Denis Kirkby
79340 7590 08/30/2018
MANNA VA & KANG, P.C.
3201 Jermantown Road
SUITE 525
FAIRFAX, VA 22030
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.
D09-099-02127-00-US 9450
EXAMINER
BOYCE, ANDRE D
ART UNIT PAPER NUMBER
3623
NOTIFICATION DATE DELIVERY MODE
08/30/2018 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):
ASHOKM@MANNA V AKANG.COM
docketing@mannavakang.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte STEPHEN DENIS KIRKBY
Appeal2017-004981
Application 12/549,669
Technology Center 3600
Before MURRIEL E. CRAWFORD, BRUCE T. WIEDER, and
ROBERT J. SILVERMAN, Administrative Patent Judges.
CRAWFORD, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant1 seeks our review under 35 U.S.C. § 134 of the Examiner's
final decision rejecting claims 1-21. We have jurisdiction over the appeal
under 35 U.S.C. § 6(b ).
BACKGROUND
Appellant's invention is directed to a system for advertising on the
Internet for product placement. Spec. 4.
Claim 10 is illustrative:
10. A method performed by a computer system executing code stored
1 The real party in interest is Accenture Global Services Limited. App.
Br. 3.
Appeal2017-004981
Application 12/549,669
on a computer readable storage device, the method comprising:
providing a plurality of product-related information and rules for
including each of the plurality of product-related information in user-
generated content, wherein the rules determine compliance based on at least
one of a certain size, a location on a web site, and the product related
information not providing product related information from competitors;
capturing metrics for a plurality of published user-generated content
and each of the published user-generated content includes a product-related
information of the plurality of product-related information, wherein the
captured metrics include information related to compliance with the rules for
the product-related information;
for each of the published user-generated content, determining whether
the published user-generated content complies with the rules, wherein
determining whether the published user-generated content complies with the
rules comprises searching the published user-generated content for keywords
to determine whether the published user generated content provides
product related information from competitors;
comparing the plurality of published user-generated content amongst
each other using at least one of the captured metrics; and
determining, by the computer system, an amount of payment for each
of the published user-generated content based on the compliance with the
rules and the comparison of the plurality of published user-generated content
amongst each other.
Appellant appeals the following rejection:
Claims 1-21 under 35 U.S.C. § 101 as being directed to non-statutory
subject matter.
PRINCIPLES OF LAW
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 § 101 to include implicit
exceptions: "[l]aws of nature, natural phenomena, and abstract ideas" are
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Application 12/549,669
not patentable. E.g.,Alice Corp. Pty. Ltd. v. CLSBankint'l, 134 S. Ct.
2347, 2354 (2014).
In determining whether a claim falls within the excluded category of
abstract ideas, we are guided in our analysis by the Supreme Court's two-
step framework, described in Mayo and Alice. Id. at 2355 ( citing Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 75-78 (2012)).
In accordance with that framework, we first determine whether the claim is
"directed to" a patent-ineligible abstract idea. See Alice, 134 S. Ct. at 2356
("On their face, the claims before us are drawn to the concept of
intermediated settlement, i.e., the use of a third party to mitigate settlement
risk."); Bilski v. Kappas, 561 U.S. 593, 611 (2010) ("Claims 1 and 4 in
petitioners' application explain the basic concept of hedging, or protecting
against risk."); Diamond v. Diehr, 450 U.S. 175, 184 (1981) ("Analyzing
respondents' claims according to the above statements from our cases, we
think that a physical and chemical process for molding precision synthetic
rubber products falls within the § 101 categories of possibly patentable
subject matter."); Parker v. Flook, 437 U.S. 584, 594--595 (1978)
("Respondent's application simply provides a new and presumably better
method for calculating alarm limit values."); Gottschalk v. Benson, 409 U.S.
63, 64 (1972) ("They claimed a method for converting binary-coded decimal
(BCD) numerals into pure binary numerals.").
The patent-ineligible end of the spectrum includes fundamental
economic practices, Alice, 134 S. Ct. at 2357; Bilski, 561 U.S. at 611;
mathematical formulas, Parker, 437 U.S. at 594--95; and basic tools of
scientific and technological work, Gottschalk, 409 U.S. at 67. On the patent-
eligible side of the spectrum are physical and chemical processes, such as
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Application 12/549,669
curing rubber, Diamond, 450 U.S. at 184 n.7, "tanning, dyeing, making
water-proof cloth, vulcanizing India rubber, smelting ores," and a process
for manufacturing flour, Gottschalk, 409 U.S. at 69.
If the claim is "directed to" a patent-ineligible abstract idea, we then
consider the elements of the claim-both individually and as an ordered
combination-to assess whether the additional elements transform the nature
of the claim into a patent-eligible application of the abstract idea. Alice, 134
S. Ct. at 2355. This is a search for an "inventive concept"-an element or
combination of elements sufficient to ensure that the claim amounts to
"significantly more" than the abstract idea itself. Id.
In addition, the Federal Circuit has held that if a method can be
performed by human thought alone, or by a human using pen and paper, it is
merely an abstract idea and is not patent-eligible under § 101. Cy her Source
Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1373 (Fed. Cir. 2011) ("[A]
method that can be performed by human thought alone is merely an abstract
idea and is not patent-eligible under§ 101.").
Claims to data collection, analysis, and display are directed to an
abstract idea. Elec. Power Grp. v. Alstom S.A., 830 F.3d 1350, 1353 (Fed.
Cir. 2016) (holding that "collecting information, analyzing it, and displaying
ce1iain results of the collection and analysis" are "a familiar class of claims
"directed to' a patent-ineligible concept"); see also 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). Claims that
recite an improvement to a particular computer technology have been found
patent eligible. See, e.g., McRO, Inc. v. Bandai Namco Games Am. Inc., 837
F.3d 1299, 1314--15 (Fed. Cir. 2016) (deten11ining claims not abstract
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because they "focused on a specific asserted improvement in computer
animation").
ANALYSIS
Rejection under 35 U.S.C. § 1 OJ
The Examiner determines that the claims are directed to data storage
and instructions executed by a processor to manage content compliance.
Final Act. 3. The Examiner also determines that the claims are similar to
concepts involving an idea of itself and human activity relating to
commercial practices and that the claims involve comparing new and stored
information and using rules to identify options and concepts involving
organizing information. Final Act. 4.
The Examiner finds that the other recitations in the claims in addition
to the abstract idea amount to generally linking the abstract idea to a
particular technological environment and do not provide meaningful
limitations to transform the abstract idea so as to amount to significantly
more that the abstract idea itself.
We agree with the determination of the Examiner that the claims are
directed to an abstract idea. Claim 10, for example, recites collecting data
by providing data in the form of product-related information and rules and
capturing metrics for content; analyzing data by determining compliance
with the rules, comparing content with metrics and determining amount of
payment for content. As such, claim 10 is directed to data collection and
analysis which is an abstract idea.
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\Ve also agree with the Examiner that the elements recited in claim 10
in addition to the abstract idea i.e., the "computer system executing code
stored on a computer readable storage device" is not significantly more than
the abstract idea.
We are not persuaded of error on the part of the Examiner by
Appellant's argument that the Examiner improperly generalized the abstract
idea as simply comparing new and stored information and using niles to
identify options. App. Br. 11. The Appellant directs our attention to the
recitation of the specific data that is analyzed and argues that the Examiner
has failed to grasp the gist of the claimed subject matter. However, while
claim 10 recites the specific data that is analyzed, it is nevertheless directed
to the analysis of data .. As we have explained above, claims directed to the
collection and analysis of data have been held to be directed to an abstract
idea.
\Ve do not agree with the Appellant's argument found on page 14 of
the Appeal Brief that the claims are necessarily rooted in computer
technology in order to overcorne a problem specifically arising in the realm
of computer networks. In Appellant's view, the claims are directed to the
technical compliance checking process. Specifically, Appellant argues that
the claimed subject matter is associated with analyzing data on the Inten1et
in order to overcome a problem specifically arising in the realm of posting
user generated content. App. Br. 15. Appellant argues that the claims are
similar to the clahns in DDR Holdings, LLC v. Hotels.com L.P., 773 F.3d
1245, 1257 (Fed. Cir. 2014).
\Ve are not persuaded by Appellant's argument that the claim is
analogous to that in DDR Holdings, 773 F.3d at 1257, where the Court noted
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that a claim may amount to more than any abstract idea recited in the claims
when it addresses a business challenge, such as "retaining website visitors,"
where that challenge is particular to a specific technological environment,
such as the Internet. Appellant contends that the claims address a business
challenge of placing ads on user generated content on the internet. App.
Br. 17.
In DDR, the court stated that "the[] patent's claims address 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." DDR Holdings, 773 F.3d at 1257. This was
done in the claim by serving a composite page with content based on the link
that was activated to serve the page.
In contrast, claim 10 is directed to a process for placement of content,
e.g., ads. Ad placement is not a problem particular to the Internet
\Ve are also not persuaded of error on the part of the Examiner by
Appellants argument that the claims do not preempt the use of the asserted
abstract idea. App. Br. 18. \Vhile preemption may signal patent ineligible
subject matter, the absence of complete preemption does not demonstrate
patent eligibility." Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d
1371, 1379 (Fed. Cir. 2015); see also OIP Techs., Inc. v. Amazon.com, Inc.,
788 F.3d 1359, 1362---63 (Fed. Cir. 2015) C'[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 thern any less abstract."). And, "[ w ]here a
patent's claims are deemed only to disclose patent ineligible subject matter
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Application 12/549,669
under the Afayo framework, as they are in this case, preemption concerns are
fully addressed and made moot" Ariosa, 788 F.3d at 1379.
Appellant analogizes the claimed invention to the invention at issue in
AfcRO. Reply Br. 8.
We are not persuaded that the claimed invention is analogous to the
claimed invention in AicRO. The claims in AicRO were directed to a
specific asserted improvement in computer animation, i.e., the automatic use
of rules of a particular type. AicRO, 837 F.3d at 1314. By contrast, the
independent clai rns under appeal recite on 1y determining the placement of
content on a website and use of a computer in a conventional and well-
known manner.
\Ve are not persuaded of enor on the part of the Examiner by
Appellants argument that the claims are not taught or suggested by the prior
art. To the extent Appellants maintain that the limitations of claim l
necessarily amount to '"significantly more" than an abstract idea because the
claimed apparatus is allegedly patentable over the prior art, Appellants
misapprehend the controlling precedent Although the second step in the
Alice/lvlayo framework is termed a search for an "inventive concept," the
analysis is not an evaluation of novelty or non-obviousness, but rather, a
search for '"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, 134 S. Ct. at 2355. A novel and
nonobvious daim directed to a purely abstract idea is, nonetheless, patent-
ineligible. See Mayo, 132 S. Ct. at 1304 ..
In view of the foregoing, we will sustain the Examiner's rejection of
claim 10. \Ve will also sustain the Examiner's rejection as it is directed to
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the remaining claims because the Appellant has not argued the separate
eligibility of these claims.
DECISION
We affirm the Examiner's § 101 rejection.
TIME PERIOD
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) (2009).
ORDER
AFFIRMED
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