Ex Parte Lejano et al

Patent Trial and Appeal Board

Jul 30, 2018

14070235 (P.T.A.B. Jul. 30, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO.
14/070,235
149109 7590
EGL/Excalibur
P.O. Box 10395
Chicago, IL 60610
FILING DATE FIRST NAMED INVENTOR
11/01/2013 Lisandra Miguel Lejano
07/30/2018
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.
12729-1158 (Y04435US01) 3031
EXAMINER
CHANG, EDWARD
ART UNIT PAPER NUMBER
3696
MAIL DATE DELIVERY MODE
07/30/2018 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 ST ATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte LI SANDRO MIGUEL LEJANO, ERIK RUBEN RACHO, and
CLAUDE JONES
Appeal2017-004327
Application 14/070,235
Technology Center 3600
Before JOHN A. JEFFERY, BETHZ. SHAW, and
JASON M. REPKO, Administrative Patent Judges.
SHAW, Administrative Patent Judge.
DECISION ON APPEAL
Appellants seek our review under 35 U.S.C. § 134(a) of the
Examiner's Final Office Action rejecting claims 13, 14, 16-20, 23-27, and
30-3 7, all of which are pending on appeal. We have jurisdiction under
35 U.S.C. § 6(b).
WeAFFIRM. 1
1 Our Decision refers to the Appeal Brief filed July 15, 2016 ("App. Br.");
Reply Brief filed January 12, 2017 ("Reply. Br."); Examiner's Answer
mailed November 18, 2016 ("Ans."); and Final Office Action mailed
December 22, 2015 ("Final Act.").
Appeal2017-004327
Application 14/070,235
STATEMENT OF THE CASE
Appellants' invention relates to "systems and methods for organizing
an advertising campaign, which can receive selection criteria, match
websites to the selection criteria, and generate a list of website names and
purchasing information to be displayed on a display device." App. Br. 2.
Claim 13 is illustrative of Appellants' invention, as reproduced below:
13. A system, comprising:
one or more processors and a non-transitory storage
medium comprising program logic for execution on the
processors, the program logic comprising:
a list generator;
a graphical user interface (GUI) generator, the GUI
generator comprising instructions executable to generate a user
interface including a GUI search field configured to:
receive a user entered query for websites with
available ad space for purchase; and
communicate the user entered query to the list
generator; and
the list generator comprising instructions executable to:
receive the user entered query communicated by the GUI
search field, the user entered query including selection criteria;
use the selection criteria as input for a search algorithm
to match websites to the selection criteria, the algorithm
configured to:
search a database including website information,
the website information including attributes of
websites with available ad space for purchase; and
identify websites that match the selection criteria
by comparing the selection criteria to at least some
of the attributes of at least some of the websites;
execute the search algorithm;
generate a list of website names and purchasing
information corresponding to the websites identified by the
executed search algorithm, to be displayed on a display device,
the website names representing the matched websites, and the
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purchasing information defming terms for placing
advertisements on the matched websites; and
communicate the list to the GUI generator, the GUI
generator further comprising instructions executable to switch
from the user interface including the GUI search field to a user
interface including a GUI output field configured to display the
list.
Examiner's Rejection
Claims 13, 14, 16-20, 23-27, and30-37 stand rejected under
35 U.S.C. § 101 because the claimed invention is directed to ineligible
subject matter. Final Act. 2-5.
ANALYSIS
The Examiner fmds claims 13, 14, 16-20, 23-27, and30-37 are
directed to ideas that have been identified as abstract by our reviewing court.
Final Act. 2-5; Ans. 3-5. In particular, the Examiner fmds the claims
constitute an abstract idea of certain methods of organizing human activity,
including advertising. Final Act. 3, Ans. 3. The Examiner also fmds
additional elements recited in the claims do not amount to significantly more
than the abstract idea itself. Final Act. 3-5. According to the Examiner, the
claims require no more than performing generic computer functions. Id.
Appellants present several arguments against the 35 U.S.C. § 101
rejection. App. Br. 7-21; Reply Br. 2-10. Appellants argue claims 13, 20,
and 27. App. Br. 7-21. We select claim 13 as representative of the group.
37 C.F.R. § 4I.50(b).
Appellants contend the claims are not directed to an abstract idea
because the claimed invention provides benefits over conventional systems
by describing unconventional technology to search for websites based on
advertiser criteria and to display those websites to the user. App. Br. 7-8.
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Appellants also contend the claims recite significantly more than an abstract
idea because the claimed invention is necessarily rooted in computer
technology that would only arise in the context of online advertising
computer networks. Id. at 13-14.
We do not find Appellants' arguments persuasive. At the outset, we
note the Supreme Court has long held that "[l]aws of nature, natural
phenomena, and abstract ideas are not patentable." Alice Corp. Pty. Ltd. v.
CLS Bank Intern., 134 S. Ct. 2347, 2354 (2014) (quoting Assoc.for
Molecular Pathologyv. Myriad Genetics, Inc., 133 S. Ct. 2107, 2116
(2013) ). "The 'abstract ideas' category embodies 'the longstanding rule that
'[a]n idea, by itself, is not patentable."' Id. at 2355 ( quoting Gottschalkv.
Benson, 409U.S. 63, 67 (1972)).
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. at2355 (citing Mayo CollaborativeServs. v. Prometheus
Labs., Inc., 566U.S. 66(2012)). Thefirststep in the analysis is to
"determine whether the claims at issue are directed to one of those patent-
ineligible concepts," such as an abstract idea. Id. ( citing Mayo, 566 U.S. at
77-78).
If the claims are directed to a patent-ineligible concept, the second
step in the analysis is to consider the elements of the claims "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 79, 78). In other words, the
second step is to "search for an 'inventive concept'-i.e., an element or
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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. (alteration in original) ( quoting Mayo, 566 U.S. at 72-
73). The prohibition against patenting an abstract idea "'cannot be
circumvented by attempting to limit the use of the formula to a particular
technological environment' or adding 'insignificant postsolution activity."'
Bilski v. Kappas, 561 U.S. 593, 610-11 (2010) (citation omitted).
Turning to the first step of the Alice inquiry, Appellants' claims are
directed to an abstract idea of searching and retrieving information. All the
steps recited in Appellants' claims, including, for example: (i) "receive a
user entered query," (ii) "search a database," (iii) "identify websites," (iv)
"execute the search algorithm," and ( v) "generate a list of website names and
purchasing information corresponding to the websites identified by the
executed search algorithm," are abstract processes of receiving, identifying,
and generating data. Our reviewing court's cases fmd an abstract idea in
storing, sending, receiving, determining, updating, and displaying data. See
Elec. Power Grp. LLCv. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016)
("collecting, analyzing, and displaying certain results of the collection and
analysis" is abstract); In re Salwan, 681 Fed. App'x 938, 941 (Fed. Cir.
2017) (nonprecedential) (affrrming the rejection under§ 101 of claims
directed to "storing, communicating, transferring, and reporting patient
health information," noting that "while these concepts may be directed to
practical concepts, they are fundamental economic and conventional
business practices"); Cyberfone Sys., LLCv. CNN Interactive Grp., Inc., 558
F. App'x 988,992 (Fed. Cir. 2014) (nonprecedential) ("using categories to
organize, store, and transmit information is well-established"). Similarly, all
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the steps executed by claim 13 's "processors" are abstract processes of
receiving, identifying, and generating data.
Turning to the second step of the Alice inquiry, we fmd nothing in
Appellants' claims that adds anything "significantly more" to transform
them into a patent-eligible application of the abstract idea. Alice, 134 S. Ct.
at 23 5 7. The claimed steps are ordinary steps in search retrieval and are
recited in an ordinary order.
We are not persuaded by Appellants' argument that the claims are
necessarily "rooted" in computer technology. App. Br. 7. Appellants do not
persuade us why the claims or Specification provide the "unconventional
technology" asserted by Appellants. App. Br. 7. Rather, the claims and
Specification provide little specificity regarding technological elements. See
Spec. ,r 19 ("Fig. 15 illustrates a general computer system, which may
represent any of the computing devices referenced herein"), ,r 7 6 ("the
processor 1405 may be part of a standard personal computer"), Fig. 14; Ans.
4. Thus, contrary to Appellants' assertions, the Specification does not
describe the system as made up of special-purpose or specially configured
computer components, but rather, as a general-purpose computer that
includes generic components. As a result, nothing recited by the claims
"offers a meaningful limitation beyond generally linking 'the use of the
[ method] to a particular technological environment,' that is, implementation
via computers." Alice 134 S. Ct. at 2360 (quoting Bilski, 561 U.S. at 610-
11 ).
Appellants argue that the
claimed invention thus solves a technical problem in the field of
online advertising computer networks, and in the process
provides benefits over conventional online advertising
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networks, because the claimed invention does allow advertisers
to fmd and choose, in a rapid and efficient manner, a relevant
and available set of websites with which to present targeted
online advertisements.
App. Br. 8. Yet, limiting an abstract concept of searching and fmding
websites to general purpose computer having generic components, such as
the processor( s) recited in Appellants' claims, does not make the abstract
concept patent-eligible under35 U.S.C. § 101. As recognized by the
Supreme Court, "the mere recitation of a generic computer cannot transform
a patent ineligible abstract idea into a patent-eligible invention." Alice, 134
S. Ct. at 2358; see id. at 2359 ( concluding claims "simply instruct[ing] the
practitioner to implement the abstract idea of intermediated settlement on a
generic computer" are not patent eligible); see also Ultramercial, Inc. v.
Hulu, LLC, 772 F.3d 709, 715-16 (Fed. Cir. 2014) (claims merely reciting
abstract idea of using advertising as currency as applied to particular
technological environment of the Internet are not patent eligible); Accenture
GlobalServs., GmbHv. GuidewireSoftware,Inc., 728F.3d 1336, 1344--45
(Fed. Cir. 2013) (claims reciting "generalized software components arranged
to implement an abstract concept [ of generating insurance-policy-related
tasks based on rules to be completed upon the occurrence of an event] on a
computer" are not patent eligible); Dealertrack, Inc. v. Huber, 67 4 F. 3d
1315, 1333-34 (Fed. Cir. 2012) ("[s]imply adding a 'computer aided'
limitation to a claim covering an abstract concept, without more, is
insufficient to render [a] claim patent eligible"); Credit Acceptance Corp. v.
Westlake Servs., 859 F.3d 1044, 1056 (Fed. Cir. 2017) (generic computer
elen1ents did not represent hnproven1ent in computer technology but rather
were invoked merely as tools, and did not transfon11 the claims into
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significantly more than claims to abstract idea itself); Elec. Power Group,
830 F.3dat 1356 (rejectionaffrrmed for a method of performing real-time
performance monitoring of an electric power grid because "the claims do not
go beyond requiring the collection, analysis, and display of available
information in a particular field . . . over conventional computer and
network technology").
Contrary to Appellants' arguments (see App. Br. 16-18), the claims
are neither rooted in computer technology as outlined in DDR Holdings,
LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014), nor do they seek to
improve any type of computer capabilities, such as a "self-referential table
for a computer database" outlined in Enfish, LLCv. Microsoft Corp., 822
F.3d 1327, 1336 (Fed. Cir. 2016). The "one or more processors" or
"processor" recited in Appellants' claims is described in the Specification as
"part of a standard personal computer or a workstation." Spec. ,r 76.
"[M]erely 'configur[ing]' [a] generic computer[] in order to 'supplant and
enhance' an otherwise abstract manual process is precisely the sort of
invention that the Alice Court deemed ineligible for patenting." Credit
Acceptance Corp, 859 F.3d at 1056.
Appellants argue "the claimed invention as a whole would have no
meaning outside of a computer network." App. Br. 14. Appellants overlook
that our reviewing court cautioned against Appellants' position in its DD R
Holdings decision.
We caution, however, that not all claims purporting to address
Internet-centric challenges are eligible for patent. For example,
in our recently-decided Ultramercial opinion, the patentee
argued that its claims were "directed to a specific method of
advertising and content distribution that was previously
unknown and never employed on the Internet before." 772 F .3d
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at 714. But this alone could not render its claims patent-eligible.
In particular, we found the claims to merely recite 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. at715-716.
DDR Holdings, 773 F.3d at 1258.
The claimed invention in DDR Holdings did not merely use the
Internet, but changed how interactions on the Internet operated. In contrast,
Appellants' recited computer technology is merely used to increase the
efficiency of known processes. See App. Br. 14 ("the question of how an
advertiser can find and choose, in a rapid and efficient manner, a relevant
and available set of websites with which to present targeted online
advertisements").
Appellants further argue in the Reply Brief that the claims are not
directed to an abstract idea because the claims "( 1) are sufficiently specific
that they do not preempt all manners of achieving the particular
improvement of the relevant technology; and (2) do not merely automate a
prior method of achieving the particular improvement of the relevant
technology," similar to the patent-eligible claims in McRO, Inc. v. Bandai
Namco Games America, Inc., 837 F.3d 1299 (Fed. Cir. 2016). Reply Br. 3-
4. Appellants' arguments are unpersuasive.
In McRO, the Federal Circuit found that "the claims themselves set
out meaningful requirements for the frrst set of rules: they 'define[] a morph
weight set stream as a function of phoneme sequence and times associated
with said phoneme sequence."' 837 F.3d at 1313 (citation omitted). The
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Federal Circuit further explained that "[t]he specific, claimed features of
these rules allow for the improvement realized by the invention." Id.
The present claims are distinguishable from the patent-eligible claims
in McRO. Notably, the present claims do not defme meaningful
requirements for any "specific rules" as alleged by Appellants that are
remotely analogous to the meaningful requirements for the first set of rules
in McRO. Claims App'x. Consequently, we fail to see how these alleged
rules result in an improvement. Rather, the alleged improvement appears to
be the automation of searching for and retrieving a list of websites. Cf
McRO, 837 F.3d at 1314 ("This [ conventional] activity, even if automated
by rules, would not be within the scope of the claims because it does not
evaluate sub-sequences, generate transition parameters or apply transition
parameters to create a fmal morph weight set. It is the incorporation of the
claimed rules, not the use of the computer, that 'improved [the] existing
technological processes' by allowing the automation of further tasks."
( citing Alice, 134 S. Ct. at 2358)).
Moreover, preemption is not the sole test for patent eligibility, and
any questions on preemption in the instant case have been resolved by the
Examiner's Mayo/Alice analysis. As our reviewing court has explained:
"questions on preemption are inherent in and resolved by the § 101
analysis," and, although "preemption may signal patent ineligible subject
matter, the absence of complete preemption does not demonstrate patent
eligibility." AriosaDiagnostics,Inc. v. Sequenom,Inc., 788F.3d 1371,
1379 (Fed. Cir. 2015); cf GIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d
1359, 1362---63 (Fed. Cir. 2015) ("[T]hatthe claims do not preempt all price
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optimization or may be limited to price optimization in the e-commerce
setting do not make them any less abstract.").
Additionally, Appellants argue that claim 20 specifically "effects a
transformation of a particular article to a different state or thing," such that
"the method results in a transformation of the browser from one that is not
displaying 'the output data' to one that is displaying 'the output data."' App.
Br. 20.
To the extent Appellants rely on the machine-or-transformation test
set forth in Bilski v. Kappas, 561 U.S. 593 (2010), we are not persuaded that
claim 20 satisfies the test. First, we note that the Supreme Court has made
clear that a patent claim's failure to satisfy the machine-or-transformation
test is notdispositive of the§ 101 inquiry. See Bilski, 130 S. Ctat 3227.
However, the machine-or-transformation test is "a useful and important clue,
an investigative tool, for determining whether some claimed inventions are
processes under § 101." Id.
Claim 20 recites method steps that merely identify websites that
match selection criteria and communicates output data, including a list of
website names, that represents the matched websites. The matching of one
type of electronic data (i.e., selection criteria) to another type of electronic
data (i.e., list of website names corresponding to the selection criteria) is not
a transformation or reduction of an article into a different state or thing
constituting patent-eligible subject matter. "The mere manipulation or
reorganization of data ... does not satisfy the transformation prong."
CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1375 (Fed. Cir.
2011 ). Thus, claim 20 fails to satisfy the transformation prong of the
machine-or-transformation test.
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Because Appellants' claims are directed to a patent-ineligible abstract
concept and do not recite something "significantly more" under the second
prong of the Alice analysis, we sustain the Examiner's rejection of these
claims under 35 U.S.C. § 101 as being directed to non-statutory subject
matter in light of Alice and its progeny.
CONCLUSION
On the record before us, we conclude Appellants have not
demonstrated the Examiner erred in rejecting claims 13, 14, 16-20, 23-27,
and 30-37under35 U.S.C. § 101.
DECISION
We affrrm the Examiner's rejection of claims 13, 14, 16-20, 23-27,
and 30-37.
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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