Ex Parte Kosloske et al

Patent Trials and Appeals Board

Jun 20, 2019

14661880 - (D) (P.T.A.B. Jun. 20, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/661,880 03/18/2015
45848 7590 06/24/2019
MICHAEL W. GOLTRY
10643 North Frank Lloyd Wright Boulevard
Suite 201
Scottsdale, AZ 85259
FIRST NAMED INVENTOR
Cheryl C. Kosloske
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.
6173-Al 6305
EXAMINER
SPAR, ILANA L
ART UNIT PAPER NUMBER
3682
NOTIFICATION DATE DELIVERY MODE
06/24/2019 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):
mg@pgpct.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CHERYL C. KOSLOSKE, JAMES D. TORGERSON,
and
WILLIAM C. JOHNSON
Appeal2018-005188
Application 14/661,880
Technology Center 3600
Before JOSEPH L. DIXON, HUNG H. BUI, and JON M. JURGOV AN,
Administrative Patent Judges.
DIXON, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants 1 appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1-5. We have jurisdiction under 35 U.S.C. § 6(b ).
We reverse.
The claims are directed to systems "for posting content to user
webpages of social networking services" from a computer store of posts, for
"expanding commercial advertising at the user webpages." (Spec. 1 :6--8;
Title (capitalization altered).) Appellants' systems include a computer
1 Appellants indicate that Digibuzzshop, LLC is the real party in interest.
(App. Br. 2.)
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Application 14/661,880
server coupled to the computer store and programmed to (i) "receive from a
web browser of a computer user a signal indicating activation of [a] ... post
select control of a selected one of the posts displayed by [a] ... first user
webpage" served by a content provider, (ii) "automatically link the selected
one of the posts to [an] ... external posting link [ associated with the
computer store and a second user webpage at a social networking service],"
(iii) "receive from the web browser of the computer user a signal indicating
activation of the external posting link," and (iv) "automatically issue the
selected one of the posts to the second user webpage for posting thereon."
(Abstract.)
Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A system, comprising:
a content provider serving a first user webpage;
a computer store containing a library of posts, the posts are
different from one another, each of the posts is associated with a
post select control, and is for being posted to a second user
webpage of a social networking service;
the first user webpage displays an external posting link
associated with the computer store and the second user webpage;
a computer server at the content provider, the computer
server is coupled to the computer store and for each of the posts
is programmed to receive from a web browser of a computer user
a signal indicating activation of the post select control of a
selected one of the posts displayed by the first user webpage,
automatically link the selected one of the posts to the external
posting link, receive from the web browser of the computer user
a signal indicating activation of the external posting link, and
automatically issue the selected one of the posts to the second
user webpage for posting thereon.
(App. Br. 17 (Claims Appendix).)
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REFERENCE
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Johnson US 2014/0122201 Al May 1, 2014
REJECTIONS
The Examiner made the following rejections:
Claims 1-5 stand rejected under 35 U.S.C. § 101 because the claimed
invention is directed to a judicial exception (i.e., a law of nature, a natural
phenomenon, or an abstract idea) without significantly more.
Claims 1-5 stand rejected under 35 U.S.C. § I02(a)(l) as being
anticipated by Johnson.
ANALYSIS
35 U.S.C. § 101
An invention is patent eligible if it claims a "new and useful process,
machine, manufacture, or composition of matter." 35 U.S.C. § 101.
However, the Supreme Court has long interpreted 35 U.S.C. § 101 to include
implicit exceptions: "[l]aws of nature, natural phenomena, and abstract
ideas" are not patentable. Mayo Collaborative Servs. v. Prometheus Labs.,
Inc., 566 U.S. 66, 70 (2012) (brackets in original) (citing Diamond v. Diehr,
450 U.S. 175, 185 (1981)).
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court's two-step framework, described in Mayo
and Alice. Alice Corp. Pty. Ltd. v. CLS Bank Int 'l, 573 U.S. 208, 217-18
(2014) (citing Mayo, 566 U.S. at 75-77). In accordance with that
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framework, we first determine what concept the claim is "directed to." See
Alice, 573 U.S. at 218-19 ("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."); see also 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.").
Concepts determined to be abstract ideas, and, thus, patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219-20; Bilski, 561 U.S. at 611 );
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594--95 (1978)); and
mental processes (Gottschalkv. Benson, 409 U.S. 63, 67 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as "molding rubber products" (Diehr, 450 U.S. at 191 ); "tanning,
dyeing, making water-proof cloth, vulcanizing India rubber, smelting ores"
(id. at 182 n.7 (quoting Corning v. Burden, 56 U.S. 252, 267---68 (1853)));
and manufacturing flour (Benson, 409 U.S. at 69 ( citing Cochrane v.
Deener, 94 U.S. 780, 785 (1876))).
In Diehr, the claim at issue recited a mathematical formula, but the
Supreme Court held that "[a] claim drawn to subject matter otherwise
statutory does not become nonstatutory simply because it uses a
mathematical formula." Diehr, 450 U.S. at 187; see also id. at 191 ("We
view respondents' claims as nothing more than a process for molding rubber
products and not as an attempt to patent a mathematical formula."). Having
said that, the Supreme Court also indicated that a claim "seeking patent
protection for that formula in the abstract ... is not accorded the protection
of our patent laws, ... and this principle cannot be circumvented by
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attempting to limit the use of the formula to a particular technological
environment." Id. (citing Benson and Flook); see, e.g., id. at 187 ("It is now
commonplace that an application of a law of nature or mathematical formula
to a known structure or process may well be deserving of patent
protection.").
If the claim is "directed to" an abstract idea, we tum to the second
step of the Alice and Mayo framework, where "we must examine the
elements of the claim to determine whether it contains an 'inventive
concept' sufficient to 'transform' the claimed abstract idea into a
patent-eligible application." Alice, 573 U.S. at 221 (internal citation
omitted). "A claim that recites an abstract idea must include 'additional
features' to ensure 'that the [claim] is more than a drafting effort designed to
monopolize the [abstract idea]."' Id. ( quoting Mayo, 566 U.S. at 77).
"[M]erely requir[ing] generic computer implementation[] fail[ s] to transform
that abstract idea into a patent-eligible invention." Id.
The PTO recently published revised guidance on the application of
§ 101. USPTO's Memorandum, 2019 REVISED PATENT SUBJECT MATTER
ELIGIBILITY GUIDANCE, 84 Fed. Reg. 50 (January 7, 2019) ("Revised
Guidance"). Under that guidance, we first look to whether the claim recites:
(1) any judicial exceptions, including certain groupings of abstract
ideas (i.e., mathematical concepts, certain methods of organizing
human activity such as a fundamental economic practice, or mental
processes); and
(2) additional elements that integrate the judicial exception into a
practical application (see MANUAL OF PATENT EXAMINING PROCEDURE
(MPEP) § 2106.05(a}-(c), (e}-(h) (9th ed., Rev. 08.2017, 2018)).
Only if a claim (1) recites a judicial exception and (2) does not integrate that
exception into a practical application, do we then look to whether the claim:
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(3) adds a specific limitation beyond the judicial exception that is not
"well-understood, routine, conventional" in the field (see MPEP
§ 2106.05(d)); or
( 4) simply appends well-understood, routine, conventional activities
previously known to the industry, specified at a high level of
generality, to the judicial exception.
See Revised Guidance.
Appellants argue independent claims 1 and 4 as a group, providing
arguments for representative claim 1. (See App. Br. 7-8, 10-11, 13).
Because we find the limitations to be similar for the two independent claims,
we will address independent claim 1 as the illustrative claim and the same
line of reasoning applies to independent claim 4, and the respective
dependent claims of claims 1 and 4.
STEP 1 of the Revised Guidance
Claim 1, as a "system" claim, recites one of the enumerated categories
of statutory subject matter in 35 U.S.C. § 101, namely, a machine. The issue
before us is whether it is directed to a judicial exception without
significantly more.
STEP 2A. Prong 1 of the Revised Guidance
In rejecting claim 1 under 35 U.S.C. § 101, the Examiner finds the
claim "is directed to the abstract idea of posting a post to a second webpage"
using a library of content (posts), which is analogous to Ultramercial 's
abstract idea of online advertising. (Final Act. 2-3 ( citing Ultramercial, Inc.
v. Hulu, LLC, 772 F.3d 709 (Fed. Cir. 2014)); Ans. 7.) The Examiner also
finds the claim does not recite significantly more than the abstract idea
because the claim is merely "using a conventional tool in modem social
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media networks, namely posting things 'automatically' by clicking on them"
using "generic computer technology." (Ans. 7; Final Act. 4.)
Appellants argue claim 1 is not directed to an abstract idea, but rather
to an improved system for posting content to user webpages of a social
networking service, whereby "the [system's] computer server [is enabled] to
automatically link the selected one of the posts from the computer store to
an external posting link of the first user web page" and "to automatically
issue the selected one of the posts to the second user website for posting
thereon when the computer server receives from the web browser of the
computer user a signal indicating activation of the external posting link."
(App. Br. 9.)
Having reviewed the evidence, we agree with the Examiner only in
part. Particularly, we agree with the Examiner that independent claim 1 as a
whole recites a judicial exception of a method of organizing human activity
by facilitating commercial advertising at user webpages (such as webpages
of businesses) hosted by social networking services. (See Spec. 1:6-8,
3:11-14, 6:19-20; Title; Abstract.) Thus, claim 1 recites subject matter that
falls within the three types of abstract ideas identified by the Revised
Guidance.
STEP 2A, Prong 2 of the Revised Guidance
Under the Revised Guidance, however, we agree with Appellants that
claim 1 integrates the judicial exception (abstract idea) into a practical
application. (App. Br. 9, 11-13.) Particularly, claim 1 recites a
combination of additional elements including the computer server
programmed to (i) receive from a web browser of a computer user a signal
indicating activation of the post select control of a selected one of the
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library's posts displayed by the first user webpage, (ii) automatically link the
selected post to the external posting link, (iii) receive from the web browser
of the computer user a signal indicating activation of the external posting
link, and (iv) automatically issue the selected post to the second user
webpage at the social networking service, for posting thereon. The claim's
additional elements integrate the method of organizing human activity into a
practical application.
Specifically, the above-mentioned additional claim elements of claim
1 recite a specific improvement in business advertising at businesses' social
networking webpages, by providing an interactive advertising environment
that enables selection of a post from a library of posts, signals the post's
selection for automatically linking that post to an external posting link
associated with the business's social networking webpage ("second user
webpage" hosted by a social networking service such as Facebook or
Twitter), and signals activation of the external posting link to then
automatically issue the selected post to the business's social networking
webpage for posting thereon. Appellants' interactive advertising
environment is enabled by the "configuration of the [ claimed] computer
server and how it is coupled to the computer store [ containing the library of
posts] and how it interacts with the [post's] select control and the posting
link [associated with the business's social networking webpage]." (App. Br.
13.) Thus, Appellants' computer server is enabled "to automatically link the
selected one of the posts from the library of posts to the external posting link
of the second user webpage," the automatic linking then "further enabl[ing]
the computer server ... to automatically issue the selected one of the posts
to the second user webpage for posting thereon when the computer server
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receives from the web browser of the computer user a signal indicating
activation of the external posting link." (App. Br. 11-12.) Appellants'
Specification confirms the improved interactive advertising environment
provided by Appellants' computer server ( 40) that:
is programmed to receive from the web browser of user computer
22A a signal indicating activation of post select control 46 (FIG.
1) [(an internal link)] of the selected one of the posts 45, post 45A
in FIG. 5 in this example, displayed by webpage 27 A,
automatically link the selected post 45A to external posting link
5 0, automatically link the posting link 5 0 to social networking
account 34, and bring up the home page in FIG. 6 displaying the
selected post 45A in a customize text box 74 and posting link 50.
Post select control 46 is selected in response to selecting the
selected post 45A in FIG. 5. The content of selected post 45A
in customize text box 74 in FIG. 6 can be posted to webpage 32A
(FIG. 1) as-is by clicking the displayed posting link 50 in FIG. 6,
or edited or otherwise modified by the business user via user
computer 22A prior to posting .... To post the selected post 45A
as-is from webpage 27 A of website 25 of content provider 26 to
webpage 32A of website 30 of social networking service 31, with
a mouse or other input device of user computer 22A the business
user clicks on the displayed posting link 50 in FIG. 6, and
computer server 40 is programmed to receive from the web
browser of the business user using user computer 22A a signal
indicating activation of posting link 5 0, and automatically issue
the selected post 45A to webpage 32Afor posting thereon. This
posting process is repeated for each post 45 posted from webpage
27 A to webpage 32A. . . . To post the modified selected post
45A from webpage 27 A of website 25 of content provider 26 to
webpage 32A of website 30 of social networking service 31, with
a mouse or other input device of user computer 22A the business
user clicks on the displayed posting link 50 in FIG. 7, and
computer server 40 is programmed to receive from the web
browser of the business user using user computer 22A a signal
indicating activation of posting link 5 0, and automatically issue
the selected post 45A to webpage 32Afor posting thereon. This
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posting process for modified posts is repeated for each post 45
postedfrom webpage 27A to webpage 32A.
(Spec. 12:22-14: 11 (emphases added).) The Specification further provides
an example of Appellants' interactive advertising environment as applied to
a restaurant's marketing webpage:
the business user is a restaurant and selects the restaurant
category of drop-down menu 71 in FIG. 4. In response,
computer server 40 automatically retrieves from computer store
41 the posts 45 of the restaurant category, and resets the content
library page to present a list of posts 45 in the restaurant
category as shown in FIG. 5. The posts in FIG. 5 are related to
the restaurant industry, and are different from one another. Using
user computer 22A in FIG. 1 the business user can browse
through the restaurant listing of posts 45 in FIG. 5 and select one
of the posts 45 for posting, such as post 45A "READY ... SET
... PARTY!!!!!!".
(Spec. 12: 12-19 (emphasis added).)
Appellants' claim 1 therefore integrates business advertising on social
networking webpages into a process rooted in computer and network
technologies. See DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245,
1257-58 (Fed. Cir. 2014) (holding patent-eligible a claim that "address[es] a
business challenge (retaining website visitors)" by enabling visitors "to
purchase products from the third-party merchant without actually entering
that merchant's website," the claim providing a "solution ... necessarily
rooted in computer technology in order to overcome a problem specifically
arising in the realm of computer networks"). Appellants' interactive
advertising system interfaces between a library of posts and an external
posting link ( associated with the post library and with a social networking
webpage ), enabling access to the post library at a content provider, and
enabling selective posting of posts from the library between webpages
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hosted by different entities (the content provider, and a social networking
service such as Facebook or Twitter). (App. Br. 12.) Thus, Appellants'
invention enables businesses to better use online social media advertising by
posting relevant advertising and commercial content easily and consistently
on social networking pages. (See Spec. 2:6-3:8.)
Because claims 1 and 4 contain similar claim limitations and integrate
the judicial exception into a practical application, we find claims 1 and 4,
and their dependent claims 2, 3, and 5 are not directed to a judicial exception
(abstract idea); rather, these claims are directed to patent-eligible subject
matter. Because Alice step 1 is dispositive, we need not reach Alice step 2
(inventive concept, which is also Step 2B of the Revised Guidance). As
such, we do not sustain the Examiner's rejection of claims 1-5 under
35 U.S.C. § 101.
35 U.S.C. § 102(a)(l)
The Examiner, among other things, finds Johnson discloses "a
computer store containing a library of posts" and "a computer server at the
content provider, the computer server is coupled to the computer store" as
recited in claim 1. (Final Act. 5---6.) Particularly, the Examiner finds
"Johnson teaches creating multiple posted webpages, each with its own
control [(element 510 in Figure 5)] ... ," thereby disclosing "a library of
posts, the posts are different from one another, each of the posts is associated
with a post select control" as recited in claim 1. (Ans. 8 (citing Johnson
,r,r 62, 66, Fig. 5) (footnote omitted).) The Examiner further finds Johnson's
"posting module configured to post a link to the webpage on one or more
social networking platforms associated with the user" discloses the claimed
"computer server." (Final Act. 6 (citing Johnson ,r 7); see also Ans. 8 (citing
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Johnson ,r 55).) The Examiner also finds Johnson's webpage link posted to
the social networking platform discloses the claimed selected one of the
posts issued to a second user webpage for posting, as recited in claim 1.
(Ans. 8-9 (citing Johnson ,r,r 55, 70); Final Act. 6 (citing Johnson ,r 7).) The
Examiner concludes that Johnson discloses Appellants' claimed:
computer server ... programmed to receive from a web browser
of a computer user a signal indicating activation of the post select
control of a selected one of the posts displayed by the first user
webpage, automatically link the selected one of the posts to the
external posting link [ associated with the computer store
containing the library of posts, and with the second user webpage
at the social networking service], receive from the web browser
of the computer user a signal indicating activation of the external
posting link, and automatically issue the selected one of the posts
to the second user webpage for posting thereon.
(Final Act. 5---6.)
Having reviewed the evidence, we do not agree with the Examiner's
finding that Johnson discloses "a computer server" programmed to
"automatically link the selected one of the posts to the external posting link"
before "receiv[ing] from the web browser of the computer user a signal
indicating activation of the external posting link, and automatically issu[ing]
the selected one of the posts to the second user webpage for posting" as
recited in claim 1. Rather, we agree with Appellants' arguments that
Johnson does not disclose the claimed computer server "programmed to
automatically issue the selected one of the posts to the second user
webpage for posting thereon when the computer server receives from the
web browser of the computer user a signal indicating activation of the
external posting link." (App. Br. 15.)
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Initially, we note the Examiner has not identified where Johnson
discloses an "external posting link" and "a signal indicating activation of the
external posting link" as recited in claim 1. Additionally, we have reviewed
the Examiner's citations to Johnson (i1i17, 55, 62, 66, 70, and push button
510 and call-to-action phrase 514 in Figure 5) and do not find Johnson
supports the Examiner's finding of a computer server programmed to
"automatically link the selected one of the posts to the external posting link"
before "receiv[ing] from the web browser of the computer user a signal
indicating activation of the external posting link, and automatically issu[ing]
the selected one of the posts to the second user webpage for posting," as
claimed. (See Final Act. 6; Ans. 8-9.)
For example, paragraphs 7 and 55 of Johnson merely describe posting
a post or webpage link to a social networking user page ( e.g., a Facebook
page), but do not disclose automatically linking the post or webpage link to
an external posting link before receiving a signal indicating activation of the
external posting link and automatically issuing the webpage link for posting.
Johnson's paragraphs 62 and 66 merely describe methods for creating user
webpages from templates. (See Johnson ,r,r 62, 66.) Johnson's paragraph 70
and Figure 5 describe a webpage's "'call-to-action' phrase 514 ... [that]
encourage[s] users to share the webpage with their followers," and a
"'push[]' button 510, which allows a user to share the webpage with others,"
where "the 'push' button 510, when clicked, may display a pop-out screen
where a user may select their social media sites to share a link to the
webpage." (See Johnson ,r 70 (emphases omitted); Fig. 5.) Thus, Johnson's
push button 510 and call-to-action phrase 514 link the user's webpage to a
selected social media/networking site ( e.g., Facebook) and then post a
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webpage's link to the site, but Johnson does not disclose the claimed receipt
of a signal indicating activation of an external posting link before
automatically issuing the webpage link to the social networking site for
posting. (See App. Br. 17 ( claim 1 reciting the computer server programmed
to "automatically link the selected one of the posts to the external posting
link, receive from the web browser of the computer user a signal indicating
activation of the external posting link, and automatically issue the selected
one of the posts to the second user webpage for posting thereon").)
As the Examiner has not identified sufficient evidence to support the
anticipation rejection of claim 1, we do not sustain the Examiner's
anticipation rejection of claim 1 and claims 2 and 3 dependent therefrom.
Independent claim 4 includes limitations similar to those of claim 1,
and the Examiner's rejection of claim 4 relies upon similar findings based
upon Johnson alone. (Final Act. 6-7.) Accordingly, we do not sustain the
Examiner's anticipation rejection of claim 4 and claim 5 dependent
therefrom.
CONCLUSIONS
The Examiner erred in rejecting claims 1-5 based on a lack of
patent-eligible subject matter under 35 U.S.C. § 101, and the Examiner erred
in rejecting claims 1-5 as anticipated under 35 U.S.C. § 102(a)(l).
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DECISION
For the above reasons, we reverse ( 1) the Examiner's subject matter
eligibility rejection of claims 1-5 under 35 U.S.C. § 101, and (2) the
Examiner's anticipation rejection of claims 1-5 under 35 U.S.C. § 102(a)(l ).
REVERSED
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