11542874 (B.P.A.I. Dec. 5, 2011)

Ex Parte Madhavan

Board of Patent Appeals and InterferencesDec 5, 2011

11542874 (B.P.A.I. Dec. 5, 2011)

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. 11/542,874 10/03/2006 Anand Madhavan YHOO.P0016 5713 76061 7590 12/06/2011 Stattler-Suh PC 60 SOUTH MARKET SUITE 480 SAN JOSE, CA 95113 EXAMINER SORKOWITZ, DANIEL M ART UNIT PAPER NUMBER 3622 MAIL DATE DELIVERY MODE 12/06/2011 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 BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte ANAND MADHAVAN ____________ Appeal 2010-006362 Application 11/542,874 Technology Center 3600 ____________ Before HUBERT C. LORIN, JOSEPH A. FISCHETTI, and BIBHU R. MOHANTY, Administrative Patent Judges. LORIN, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Anand Madhavan (Appellant) seeks our review under 35 U.S.C. § 134 of the final rejection of claims 1-6 and 8-22. We have jurisdiction under 35 U.S.C. § 6(b) (2002). Appeal 2010-006362 Application 11/542,874 2 SUMMARY OF DECISION We AFFIRM-IN-PART.1 THE INVENTION Claim 1, reproduced below, is illustrative of the subject matter on appeal. 1. A method comprising: storing action data associated with a user's actions in a data storage module, said action data being received from at least one network-enabled television set over a network, said action data further comprising an identification of content displayed on said network- enabled television set for viewing by said user; selecting at least one advertisement using said action data for a user; and displaying said advertisement related to said user's actions on a Web page for download to said user's client computer over a network to be displayed on said client computer. THE REJECTIONS The Examiner relies upon the following as evidence of unpatentability: Bau Altberg US 2006/0069616 A1 US 2006/0277108 A1 Mar. 30, 2006 Dec. 7, 2006 The following rejections are before us for review: 1 Our decision will make reference to the Appellant’s Appeal Brief (“App. Br.,” filed Aug. 21, 2009) and Reply Brief (“Reply Br.,” filed Jan. 25, 2010), and the Examiner’s Answer (“Answer,” mailed Nov. 25, 2009). Appeal 2010-006362 Application 11/542,874 3 1. Claims 1-6 and 8-10 are rejected under 35 U.S.C. §101 as being directed to non-statutory subject matter. 2. Claims 1-6 and 8-22 are rejected under 35 U.S.C. §103(a) as being unpatentable over Bau and Altberg. ISSUES Regarding the §101 rejection, the issue is whether the Examiner has adequately shown that the processes recited in claims 1-6 and 8-10 fail to pass the machine-or-transformation test. Regarding the § 103 rejection, the main issue is whether the combination of Bau and Altberg would lead one of ordinary skill in the art to store data received from a network-enabled television set and select an advertisement using the data. FINDINGS OF FACT With respect to the §103 rejection of claims 17-22, we rely on the Examiner’s factual findings (Answer 9-10). ANALYSIS The rejection of claims 1-6 and 8-10 under 35 U.S.C. §101 as being directed to non-statutory subject matter. The process claims 1-6 and 8-10 have been rejected under §101 as being directed to non-statutory subject matter for failing both to be tied to another statutory class of invention (e.g., apparatus) and transforming underlying subject matter to a different state or thing; that is, the Examiner Appeal 2010-006362 Application 11/542,874 4 found the processes recited in the claims failed to pass the machine-or- transformation test. Although the law on patent-eligibility for process claims under §101 has undergone significant clarification since the mailing of the Answer (2009), it remains the case that failing to satisfy the machine-or- transformation test is a factor weighing against the patent eligibility of a process claim. See Interim Guidance for Determining Subject Matter Eligibility for Process Claims in View of Bilski v. Kappos; 75 Fed. Reg. 43922, 43926 (July 27, 2010/Notice). The difficulty here is that the Examiner has not made the case that the processes recited in the claims fail to pass both prongs of the machine-or- transformation test. Since this is the sole basis for rejecting the claims under §101, spelling out the reasons why the processes recited in the claims fail to pass each prong of the machine-or-transformation test might have strengthened the position. Instead, the Examiner simply concluded that the claims fail to pass the test without elaboration. See Answer 4. Furthermore, the conclusion is undermined by what is plainly recited in the claims. In concluding that the claims fail to pass both prongs of the machine-or-transformation test, the Examiner apparently found that the processes recited in the claims were not tied to a particular apparatus. But the process of claim 1, the sole independent claim, makes mention of a data storage module, a network-enabled television set, a network, a Web page, a user’s client computer, and, by implication, a computer display. These would appear to be particular apparatuses and the process as claimed is tied to them. Appeal 2010-006362 Application 11/542,874 5 Because the claimed processes involve a number of particular apparatuses and because there is no claim construction analysis showing why the claimed processes are not tied to a particular apparatus, notwithstanding what the claims recite, we find that a prima facie case of patent ineligibility on the ground that the processes fail to satisfy the machine-or-transformation test has not been made out in the first instance. The rejection of claims 1-6 and 8-22 under 35 U.S.C. §103(a) as being unpatentable over Bau and Altberg. There are three sets of claims – process, apparatus, and computer readable medium claims (claims 1-6, 8-10; claims 11-16; and claims 17-22, respectively). Regarding the process claims and focusing on sole independent process claim 1 as the representative claim, they call in part for storing data received from a network-enabled television set, selecting an advertisement using the data, and displaying the advertisement on a Webpage on a client computer over a network. The Examiner takes the position that Bau discloses storing data “from a media device or client machine over a network ... and displaying advertisements related to said user’s actions on a web page.” Answer 4. The Examiner indicates that Bau does not disclose that the media device or client machine covers a network-enabled television set. Answer 5. Rather, the Examiner relies on Altberg for its disclosure of “internet advertisements displayed on network-enabled television set.” Answer 5. The Examiner concludes from this evidence that one of ordinary skill in the art would have Appeal 2010-006362 Application 11/542,874 6 been led to the claimed method by “substitut[ing] a network-enabled television set for the client media device of Bau.” Answer 5. Combining the Bau and Altberg disclosures, in the manner articulated by the Examiner, would not lead one to the method as claimed. Substituting Altberg’s network-enabled television set for Bau’s client media device would yield a network-enabled television set displaying advertisements and advertisements displayed on a web page. What is missing is any disclosure that would lead one to use a network-enabled television set to provide the data from which to select an advertisement for display on a web page. That Altberg discloses a network-enabled television set displaying advertisements is insufficient evidence in addition to Bau to support the position that storing data received from a network-enabled television set, selecting an advertisement using the data, and displaying the advertisement on a Webpage on a client computer over a network would have been obvious to one of ordinary skill in the art at the time of the invention. Because no evidence has been provided and no apparent reasoning with underlying logic given to show that it would have been obvious to one of ordinary skill in the art to store data received from a network-enabled television set and select an advertisement using the data, a prima facie case of obviousness has not been made out in the first instance. We reach the same conclusion for the apparatus claims which, like the process claims, call for processing servers to store “action data being received from at least one network-enabled television set over a network, said action data further comprising an identification of content displayed on said network-enabled television set for viewing by said user and to select at Appeal 2010-006362 Application 11/542,874 7 least one advertisement using said action data for a user” (sole independent apparatus claim 11, emphasis added). We reach the opposite conclusion as to the computer readable medium claims. Sole independent computer-readable medium claim 17 calls for executable instructions, which, when executed in a processing system, cause a processing system to perform a method comprising storing action data associated with a user's actions in a data storage module, said action data being received from a client computer that transmits said action data over a network ... selecting at least one advertisement using said action data for a user ... and transmitting said advertisements- related to said user’s actions to said user over a network to be displayed on at least one network-enabled television set . (Claim 17, emphasis added). Rather than receiving data from a network-enabled television set and displaying advertisements on a computer as the process and apparatus claims require, these computer-readable claims call for receiving data from a computer and displaying advertisements on a network-enabled television set. The Appellant has not specifically addressed these claims in challenging the rejection but rather argued all the claims as a group, arguing that the cited prior art combination does not disclose and would not lead one of ordinary skill in the art to store data received from a network-enabled television set and select an advertisement using the data. While that argument has been persuasive as to the rejection of the process and apparatus claims, it is not a persuasive argument for overturning the rejection of the computer-readable Appeal 2010-006362 Application 11/542,874 8 medium claims. Given no other argument, the Appellant has not shown error in the rejection of these claims. Accordingly, we will sustain the rejection of claims 17-22. CONCLUSIONS The rejection of claims 1-6 and 8-10 under 35 U.S.C. §101 as being directed to non-statutory subject matter is reversed. The rejection of claims 1-6 and 8-16 under 35 U.S.C. §103(a) as being unpatentable over Bau and Altberg is reversed. The rejection of claims 17-22 under 35 U.S.C. §103(a) as being unpatentable over Bau and Altberg is affirmed. DECISION The decision of the Examiner to reject claims 1-6 and 8-22 is affirmed-in-part. AFFIRMED-IN-PART mls