Ex Parte Michaelis et al

Patent Trial and Appeal Board

Jan 31, 2018

12029214 (P.T.A.B. Jan. 31, 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.
12/029,214 02/11/2008 Paul Roller Michaelis 4366CSM-225 8374
48500 7590
SHERIDAN ROSS P.C.
1560 BROADWAY, SUITE 1200
DENVER, CO 80202
EXAMINER
HILLERY, NATHAN
ART UNIT PAPER NUMBER
3715
NOTIFICATION DATE DELIVERY MODE
02/02/2018 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):
cjacquet@ sheridanross.com
pair_Avay a @ firsttofile. com
edocket @ sheridanross .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PAUL ROLLER MICHAELIS and
DAVID S. MOHLER
Appeal 2016-005152
Application 12/029,214
Technology Center 3700
Before HUBERT C. LORIN, CYNTHIA L. MURPHY, and
BRADLEY B. BAYAT Administrative Patent Judges.
MURPHY, Administrative Patent Judge.
DECISION ON APPEAL
The Appellants1 appeal under 35 U.S.C. § 134 from the Examiner’s
rejections of claims 1, 2, 4-8, 10, 12-14, and 16-26. We have jurisdiction
over this appeal under 35 U.S.C. § 6(b).
We REVERSE and enter NE W GROUNDS OF REJECTION
pursuant to our authority under 37 C.F.R. § 41.50(b).
1 The Appellants identify the real party in interest as “Avaya Technology
LLC.” (Appeal Br. 2.)
Appeal 2016-005152
Application 12/029,214
STATEMENT OF THE CASE
According to the Appellants, “the invention relates to applying
filtration rules based on the context in which a request for content is made.”
(Spec. 1,11. 7-8.)
Illustrative Claim
1. A method for filtering content, comprising:
issuing a first request for content, wherein the first
request for content is a first request for web content, by a
processor, from a user;
in response to the first request for web content, receiving,
by the processor, a first plurality of items of content;
determining by a processor enabled filter application a
context applicable to the first request for web content, wherein
a first context is determined to be applicable to the first request
for web content;
in response to determining that the first context is
applicable to the first request for web content, the filter
application selecting a first filter parameter from a plurality of
filter parameters and a first filter parameter value;
after selecting the first filter parameter and the first filter
parameter value, applying by the filter application the first filter
parameter and the first filter parameter value to each item of
content included in the first plurality of items of content;
as a result of applying the first filter parameter and the
first filter parameter value to each of the first plurality of items
of content, preventing a first item of content included in the
first plurality of items of content from being presented to the
user;
issuing a second request for content, wherein the second
request for content is a second request for web content from the
user;
determining by the filter application a context applicable
to the second request for web content, wherein a second context
is determined to apply to the second request for web content;
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Application 12/029,214
in response to determining the context applicable to the
second request for web content, selecting a second filter
parameter from the plurality of filter parameters and a second
filter parameter value; and
providing information disclosing a future event that the
user is scheduled to participate in to the filter application,
wherein the first context is determined with reference to the
scheduled future event, wherein the future event that the user is
scheduled to participate in is in a first location and the first
filter parameter identifies a second location that is associated
with the future event, wherein the filter application prevents the
first item of content, which is associated with the second
location from being presented based on the future event in the
first location.
Prior Art
Matthews US 2003/0050986 A1 Mar. 13, 2003
Sathyanarayan US 6,691,106 B1 Feb. 10, 2004
Koch US 2004/0111411 A1 June 10, 2004
Price US 2008/0250334 A1 Oct. 9, 2008
AAPA “[Tjext and heuristic filtering mechanisms” are
“known to those skilled in the art.” (Spec. 13
11. 1-3, see also id. at 8,11. 26-28.)
Rejections
The Examiner rejects claims 1, 2, 4-8, 10, 12, 13, 16, and 18-26
under 35 U.S.C. § 103(a) as unpatentable over Koch, AAPA, Sathyanarayan,
and Price. (Final Action 3.)
The Examiner rejects claims 14 and 17 under 35 U.S.C. § 103(a) as
unpatentable over Koch, AAPA, Sathyanarayan, Price, and Matthews.
(Final Action 20.)
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Application 12/029,214
ANALYSIS
Claims 1,19, and 24 are the independent claims on appeal, with the
rest of the claims on appeal (i.e., claims 2, 4-8, 10, 12-14, 16-18, 20-23, 25,
and 26) depending therefrom. (See Appeal Br., Claims App.)
Independent claim 1 is directed to a method “for filtering content” and
independent claims 19 and 24 are each directed to system for doing the
same. (Appeal Br., Claims App.) These independent claims require a
request for “web content” the receipt of “items of content” in response to
this request, and a filtering “context” that prevents a received item of content
“from being presented.” (Id.) This filtering “context” is both applicable to
the “request for web content”2 and “determined with reference to [a]
scheduled future event.” (Id.)
The Appellants point to the following scenario described in the
Specification as an example of the claimed method/systems:
[T]he context for a request for content is provided by [a] calendar
application, with reference to [a] clock application. More
particularly, the user may have an entry in the calendar
application indicating that the user will be taking a vacation to
Canada in the near future. Moreover, a predefined “I’m
interested in fishing gear” filter profile can be enabled through
manual selection by the user, or automatically enabled if the user
is detected to be in a sporting goods store, for example as
indicated by information from [a] location application. Within
this context, a request for content made to a web server operated
by a sporting goods supplier that returns content can be filtered
so that items related to tropical fishing equipment are suppressed,
2 Independent claim 1 recites a determination of “a context applicable to” the
request for web content,” independent claim 19 recites “a context in which
the request for web content is made,” and independent claim 24 recites “the
context in which a request from a user for web content is made.” (Appeal
Br., Claims App.)
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Application 12/029,214
while items related to fly fishing are allowed to pass as filtered
items to the browser application.
(Spec. 16,11. 7-17, reference numerals omitted.) In this fishing-gear
scenario, the “scheduled future event” is the user’s vacation to Canada, and
the filtering “context” is both applicable to the request for fishing-gear
content and determined with reference to the upcoming trip to Canada. (See
Reply Br. 7.) Apparently, fly-fishing gear would be purchased for a trip to
Canada, but tropical-fishing gear would not. Hence, when the filtering
context is “based on the vacation to Canada,” fly-fishing gear is presented to
the user, but “tropical fishing equipment is suppressed.” (Id.)
The Examiner relies upon Koch to teach a request for “web content,”
the receipt of “items of content” in response to this request, and a filtering
“context” that relates to the request for web content. (Final Action 3—4.)
Koch teaches that “filter data defining relevance is generated locally and
may be preselected either by the user or by a locating device, for example,
so that geographically relevant data is displayed, or by a clock so that data
relevant in time is displayed.” (Koch, ^ 15.)
Consequently, if a user of Koch’s filtering process is at a sporting
goods store purchasing fishing supplies for an upcoming trip to Canada,
Koch’s filter data would define relevance in the context of the user’s current
location in the sporting goods store. Hence, in response to a request for
fishing-gear content, content pertaining to tropical-fishing gear would not be
suppressed, as Koch’s filtering context would not take into account the
user’s upcoming trip to Canada.
The Examiner’s rejection, as we understand it, is premised upon
Sathyanarayan teaching that an incorporation of its profile agent into Koch
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Application 12/029,214
would result in Koch’s filter data defining relevance with reference to a
scheduled future event.3 We are persuaded by the Appellants’ arguments
(see Appeal Br., 7-10; see also Reply Br. 2-6) that the Examiner does not
sufficiently establish that Sathyanarayan provides such a teaching.
Sathyanarayan discloses a profile agent that “queries any installed
calendar applications, such as Microsoft Outlook, to capture any
appointment details (meetings, events, etc.) for the user.” (Sathyanarayan,
col. 3,11. 38—42.) However, Sathyanarayan does not indicate that all of the
data collected by its profile agent necessarily contributes to the filtering
process. Instead, data collected by Sathyanarayan’s profile agent is used to
generate a “user profile” and it is this user profile, not the profile agent,
which is “used to filter out information.” (Reply Br. 5; see also, e.g.,
Sathyanarayan, col. 6,11. 41-55.) And, significantly, the only calendar-
captured data that seems to make its way to Sathyanarayan’s user profile is
information regarding “the user’s current location and appointment status
(busy/not busy).” (Sathyanarayan, col. 5,11. 29-30; see also id. at col. 1,
1. 56, col. 6,1. 7).
Thus, if Sathyanarayan’s profile agent was incorporated into Koch, as
proposed by the Examiner (see Final Action 6), this profile agent would
indeed capture a future trip to Canada scheduled on the user’s calendar.
However, a sound adoption of Sathyanarayan’s teachings would not result in
Kohn’s filter data defining relevance based upon information in this profile
3 The Examiner finds that Koch does not teach a filtering context that “is
determined with reference to the scheduled future event,” finds that
Sathyanarayan teaches a filtering context that “is determined with reference
to [a] scheduled event,” and determines that it would have been obvious for
Koch to use the “profile agent from Sathyanarayan.” (Final Action 5-6.)
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Application 12/029,214
agent, but rather based on information in a user profile generated thereby.
And, as indicated above, Sathyanarayan teaches that a so-generated user
profile contains information regarding the user’s current location and
appointment status, not future events.
Consequently, if a user is at a sporting goods store purchasing fishing
supplies for a future vacation to Canada, Sathyanarayan does not teach that
Koch’s filter data should define relevance in the context of this upcoming
trip. Hence, even if Koch was provided with Sathyanarayan’s profile agent,
and even if this profile agent captured data regarding the user’s upcoming
trip to Canada, content pertaining to tropical-fishing gear would not be
suppressed in response to a request for fishing-gear content.
Accordingly, the Examiner does not sufficiently establish that
Sathyanarayan teaches a filtering context that “is determined with reference
to [a] scheduled future event” as required by independent claims 1,19,
and 24.4 And the Examiner’s further findings and determinations with
respect to the additional prior art (see Final Action 6-10, 12-14, and 16-20)
do not compensate for this shortcoming in Sathyanarayan.
Thus, we do not sustain the Examiner’s rejection of claims 1, 2, 4-8,
10, 12, 13, 16, and 18-26 under 35 U.S.C. § 103(a) as unpatentable over
Koch, AAPA, Sathyanarayan, and Price; and we do not sustain the
Examiner’s rejection of claims 14 and 17 under 35 U.S.C. § 103(a) as
unpatentable over Koch, AAPA, Sathyanarayan, Price, and Matthews.
4 Sathyanarayan also discloses that the user profile can include information
regarding “the user’s current goal.” (Sathyanarayan, col. 6,11. 7-8.) Insofar
as the Examiner is equating a user’s current goal (e.g., losing 20 pounds) to a
future event (see Answer 3-4), we agree with the Appellant that such a goal
would not constitute a “future scheduled event” 1 (see Reply Br. 5-6).
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Application 12/029,214
NEW GROUND OF REJECTION
Pursuant to our authority under 37 C.F.R. § 41.50(b), we enter the
following new grounds of rejection: we reject claims 1, 2, 4-8, 10, 12, 13, 16,
and 18-26 under 35 U.S.C. § 101 as an attempt to claim nothing significantly
more than an abstract idea.
In Alice Corp. Pty Ltd. v. CLS Bank Inti, 134 S. Ct. 2347, 2355 (2014),
the Supreme Court provided a two-step test for distinguishing a claim to an
“abstract idea” from a claim to “a patent-eligible application” of an abstract
idea. The first step in the Alice test is to determine whether the claim at
issue is “directed to” an abstract idea. Id. If so, the second step in the Alice
test is to consider the elements of the claim “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.
Applying the first step of the Alice test, as indicated above,
independent claim 1 is directed to a method “for filtering content” and
independent claims 19 and 24 are each directed to a system for doing the
same. (Appeal Br., Claims App.) Indeed, as acknowledged by the
Appellants during prosecution, ‘[cjlaim 1 is directed toward a method for
filtering responses from web sites.” (See response filed on March 3, 2015.)
Moreover, the Specification describes the “present invention” as “relating]
to the filtering of information pushed to a communication device.” (Spec. 1,
11. 7-8.)
The record supports a conclusion, therefore, that the claims on appeal
are directed to “filtering content,” and case law establishes that “filtering
content” is a longstanding, well-known method of organizing human
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Application 12/029,214
behavior and thus an abstract idea.5 Case law also establishes that an
abstract idea involving “an Internet computer network” is still an abstract
idea. Intellectual Ventures ILLC v. Capital One Bank (USA), 792 F.3d
1363, 1368 (Fed. Cir. 2015). Thus independent claims 1, 19, and 24
succumb to the first step of the Alice test, and we proceed to the second step
of the Alice test.
Applying the second step of the Alice test, we look to the additional
claim elements to determine whether they transform the above-identified
abstract idea (i.e., filtering content) into a patent-eligible application of this
abstract idea. Here, the additional claim elements entail software
“application^]” for execution, a “memory” for storing software, a
“processer” for execution of software, a “user communication device,” for
5 See Amdocs (Israel) Limited v. Openet Telecom, Inc., 841 F.3d 1288, 1294
(Fed. Cir. 2016) (“[A] mechanism courts now apply” to determine whether a
claimed concept is an abstract idea “is to examine earlier cases in which a
similar or parallel descriptive nature can be seen—what prior cases were
about, and which way they were decided.”) Here, comparable earlier cases
include Intellectual Ventures ILLC v. Capital One Bank (USA), 792 F.3d
1363, 1367 (Fed. Cir. 2015) (holding that “tracking financial transactions to
determine whether they exceed a pre-set spending limit (i.e., budgeting)” is
an abstract idea that “is not meaningfully different from the ideas found to
be abstract in other cases . . . involving methods of organizing human
activity”); Content Extraction & Transmission LLC v. Wells Fargo Bank,
Nat’l Assn, 776 F.3d 1343, 1347 (Fed. Cir. 2014) (finding that “ collecting
data,” “recognizing certain data within the collected data set,” and “storing
that recognized data in a memory” was an abstract idea because “data
collection, recognition, and storage is undisputedly well-known” and
“humans have always performed these functions”); Digitech Image Techs.,
LLCv. Flees, for Imaging, Inc., 758 F.3d 1344, 1350 (Fed. Cir. 2014)
(finding that “a process of organizing information through mathematical
correlations” is an abstract idea).
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Application 12/029,214
receiving communications, and a “communication interface” presumably for
allowing communication among computer-related components. (Appeal Br.,
Claims App.) In other words, independent claims 1,19, and 24 merely call
for performance of the claimed content-filtering functions on conventional
computer and network devices, arranged in a conventional manner.6 The
Specification likewise conveys such conventionality. (See Spec. 4-6,
Fig. 1). As for the recited software applications, neither the claims nor the
Specification give any indication that they invoke any assertedly inventive
programming.
Thus, upon application of the two-step Alice test, independent claims 1,
19, and 24 do not pass muster under 35 U.S.C. § 101 as they constitute an
attempt to claim nothing significantly more than the abstract idea of filtering
content.
We discern that independent claims 1,19, and 24 have large portions
devoted to enumerateing the particulars of “requests] for content,” “items of
content,” “context[es],” “filter parameters],” “value[s],” “information
disclosing a future event,” and/or “location^].” (Appeal Br., Claims App.)
6 The claims at issue here do not require an arguably inventive device or
technique for displaying information, unlike the claims at issue in DDR
Holdings, LLCv. Hotels.com, L.P., 773 F.3d 1245, 1257 (Fed. Cir. 2014) (at
JMOL stage finding inventive concept in modification of conventional
mechanics behind website display to produce dual-source integrated hybrid
display). Nor do the claims here require an arguably inventive distribution
of functionality within a network, thus distinguishing the claims at issue
from those in Bascom Global Internet v. AT&T Mobility LLC, 827 F.3d
1341, 1350 (Fed. Cir. 2016) (at pleading stage finding sufficient inventive
concept in “the installation of a filtering tool at a specific location, remote
from the end users, with customizable filtering features specific to each end
user.”).
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We note that these limitations have not been overlooked or ignored, but
rather carefully considered, in our application of the Alice test. However,
our careful consideration of these limitations revealed that they do nothing
significant to differentiate the claimed method/systems from ordinary mental
processes, whose implicit exclusion from § 101 undergirds the information-
based category of abstract ideas. A strategic selection of filtering parameters
for the sought end of presenting only the most appropriate content, for
example, would be a necessary step in any content-filtering procedure, be it
computerized or not.
As for the dependent claims, they recite only further collection,
recognition, organization, non-presentation, and/or display of the above-
described data (claims 2, 4-7, 14, 16, 18, 20, and 21); details of the above-
described data (claims 10, 12 13, and 17); location concomitant limitations
(claims 7 and 8); additional listing or labeling of software applications
(claims 14, 16, and 20-22); and/or conventional parts of the user
communication device (claim 23). These additional recitals do not elevate
any of the dependent claims above the abstract idea of filtering content nor
do they transform the dependent claims into something significantly more
than this abstract idea.
DECISION
We REVERSE the Examiner’s rejections of claims 1, 2, 4-8, 10,
12-14, and 16-26.
We enter NEW GROUNDS OF REJECTION, pursuant to 37 C.F.R.
§ 41.50(b), rejecting claims 1, 2, 4-8, 10, 12, 13, 16, and 18-26 under
35U.S.C. § 101.
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NON-FINALITY OF DECISION
37 C.F.R. § 41.50(b) provides “[a] new ground of rejection pursuant
to this paragraph shall not be considered final for judicial review.”
37 C.F.R. § 41.50(b) also provide that the Appellants, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment of the
claims so rejected or new evidence relating to the claims so rejected,
or both, and have the matter reconsidered by the Examiner, in which
event the prosecution will be remanded to the Examiner.
(2) Request rehearing. Request that the proceeding be reheard under
§ 41.52 by the Board upon the same record.
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).
REVERSED
37 C.F.R. § 41.50(b)
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