Ex Parte Partridge et al

Patent Trial and Appeal Board

Jan 29, 2018

12949666 (P.T.A.B. Jan. 29, 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.
12/949,666 11/18/2010 Kurt E. Partridge PARC-20100217-US-NP 6222
35699 7590
PVF - PARC
c/o PARK, VAUGHAN, FLEMING & DOWLER LLP
2820 FIFTH STREET
DAVIS, CA 95618-7759
EXAMINER
CAO, VINCENT M
ART UNIT PAPER NUMBER
3688
NOTIFICATION DATE DELIVERY MODE
01/31/2018 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):
sy_incoming @parklegal.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KURT E. PARTRIDGE, JAMES M.A. BEGOLE,
and MAURICE K. CHU
Appeal 2016-007524
Application 12/949,666
Technology Center 3600
Before St. JOHN COURTENAY III, JOHN A. EVANS, and
JASON M. REPKO, Administrative Patent Judges.
EVANS, Administrative Patent Judge.
DECISION ON APPEAL
Appellants1 seek our review under 35 U.S.C. § 134(a) from the
Examiner’s final rejection of claims 1, 3—9, 11—17, 19-24, and 28—30. App.
Br. 3. Claims 2, 10, 18, and 25—27 are canceled. Id. We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM.2
1 Appellants state the real party in interest is Palo Alto Research Center
Incorporated. App. Br. 1.
2 Rather than reiterate the arguments of the Appellants and the Examiner, we
refer to the Appeal Brief (filed November 19, 2015, “App. Br.”), the Reply
Appeal 2016-007524
Application 12/949,666
STATEMENT OF THE CASE
The claims relate to a system to facilitate contextually specific
opportunity-based advertising. See Abstract.
INVENTION
Claims 1,9, and 17 are independent. An understanding of the
invention can be derived from a reading of Claim 1, which is reproduced
below with some formatting added:
1. A computer-implemented method for facilitating
contextually specific opportunity-based advertising, the method
comprising:
collecting, by a computer, contextual information
associated with a consumer’s activities from a mobile device
that generates the contextual information from one or more
sensors; analyzing, by the computer, the contextual information
including consumer location and consumer motion to determine
an activity in which the consumer is engaged;
predicting one or more upcoming advertisement
opportunities associated with the consumer based on the
determined activities, wherein a respective advertising
opportunity represents an opportunity to present an
advertisement to the customer while the customer is engaged in
the determined activity;
generating a set of consumer-specific behavioral rules
based on analyzing the consumer’s activities from the
contextual information collected from the one or more sensors
on the consumer’s mobile device;
Brief (filed August 1, 2016, “Reply Br.”), the Examiner’s Answer (mailed
May 31, 2016, “Ans.”), the Final Action (mailed May 21, 2015, “Final
Act.”), and the Specification (filed November 18, 2010, “Spec.”) for their
respective details.
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Application 12/949,666
generating, by the computer based on the set of
consumer-specific behavioral rules, an advertisement-
receptivity score that indicates a likelihood that the consumer’s
attention is receptive to a yet to be selected advertisement that
is to be presented while the customer is engaged in the
determined activity; and providing the predicted opportunities
and the advertisement-receptivity score to one or more
advertisers to receive a bid amount from one or more
advertisers for presenting an advertisement at the predicted
opportunities.
Rejections
Claims 1, 3—9, 11—17, 19-24, and 28—30 stand rejected under
35 U.S.C. § 101 as directed to a judicial exception, i.e., an abstract idea,
such as a fundamental economic practice. Final Act. 2—3.
Allowable Subject Matter
The Examiner indicates that the claims on appeal are otherwise
allowable over the prior art of record. Id., at 3^4.
ANALYSIS
We have reviewed the rejections of claims 1, 3—9, 11—17, 19-24, and
28—30 in light of Appellants’ arguments that the Examiner erred. We have
considered in this Decision only those arguments Appellants actually raised
in the Brief. Any other arguments which Appellants could have made but
chose not to make in the Briefs are deemed to be waived. See 37 C.F.R.
§ 41.37(c)(l)(iv). We are not persuaded that Appellants identity reversible
error.
Upon consideration of the arguments presented in the Appeal Brief
and the Reply Brief, we agree with the Examiner that all the pending claims
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Application 12/949,666
are unpatentable under 35 U.S.C. § 101. We adopt as our own the findings
and reasons set forth in the rejections from which this appeal is taken and in
the Examiner’s Answer, to the extent consistent with our analysis below.
We provide the following explanation to highlight and address specific
arguments and findings primarily for emphasis.
We consider Appellants’ arguments seriatim, as they are presented in
the Appeal Brief, pages 13—20.
Claims 1,3-9,11-17,19-24, and 28-30:
Non-Statutory Subject Matter
Appellants argue all claims as a group. App. Br. 13—20.
35 U.S.C. § 101.
Section 101 provides that a patent may be obtained for “any new and
useful process, machine, manufacture, or composition of matter, or any new
and useful improvement thereof.” 35 U.S.C. § 101. The Supreme Court has
long recognized, however, that § 101 implicitly excludes “laws of nature,
natural phenomena, and abstract ideas” from the realm of patent-eligible
subject matter, as monopolization of these “basic tools of scientific and
technological work” would stifle the very innovation that the patent system
aims to promote. Alice Corp. v. CLS Bank Inti, 134 S. Ct. 2347, 2354
(2014) (quoting Ass ’n for Molecular Pathology v. Myriad Genetics, Inc.,
133 S. Ct. 2107, 2116 (2013)); see also Mayo Collaborative Servs. v.
Prometheus Labs., Inc., 132 S. Ct. 1289, 1294-97 (2012); Diamond v. Diehr,
450 U.S. 175, 185 (1981).
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Application 12/949,666
Mavo-Alice Step 1.
The Supreme Court has instructed us to use a two-step framework to
“distinguish[] patents that claim laws of nature, natural phenomena, and
abstract ideas from those that claim patent-eligible applications of those
concepts.” Alice, 134 S. Ct. at 2355. At the first step, we determine whether
the claims at issue are “directed to” a patent-ineligible concept. Id.
Appellants contend the claims are not directed to abstract ideas under
step 1 of the Mayo-Alice test. Id., at 13. Appellants further content that,
assuming arguendo the claims are directed to abstract ideas, that the claims
are patent-eligible because they recite significantly more under Mayo-Alice
step 2. Id.
With respect to Mayo-Alice step 1, the Examiner concludes the claims
are directed to the concepts of collecting user information and creating user
profile data, providing user profile data to advertisers to facilitate bid
interactions, and presenting advertisements to the user based on the
facilitated bids. Final Act. 2. The Examiner finds collecting user
information and generating user profiles are fundamental market research
practices and that providing user profile information, facilitating bids, and
presenting advertisement are fundamental practices in the art of online
advertisement sales. Id., at 2—3; see Ans. 2—3.
With respect to Mayo-Alice step 1, Appellants contend the claims do
not recite any of the case law examples of fundamental economic practices
such as creating a contractual relationship, hedging, or mitigating settlement
risk, therefore the claimed invention is not a fundamental economic practice.
App. Br. 14. Appellants argue, moreover, the claims do not recite examples
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Application 12/949,666
of organizing human activity analogous to those found abstract under prior
case law. Id.
Appellants analogize their claims to Enfish to argue the claims focus
on an improvement to computer because they are directed to a specific
improvement to the way computers operate in modeling human behavior
to predict a human response. Reply Br. 8. Claim 1 recites, inter alia,
“generating, by the computer based on the set of consumer-specific
behavioral rules, an advertisement-receptivity score.” Appellants contend
this limitation, similarly to Enfish3, is directed to a specific improvement in
the way computers operate. Id.
The Federal Circuit contrasted claims “directed to an improvement in
the functioning of a computer” with claims “simply adding conventional
computer components to well-known business practices,” or claims reciting
“use of an abstract mathematical formula on any general purpose computer,”
or “a purely conventional computer implementation of a mathematical
formula,” or “generalized steps to be performed on a computer using
conventional computer activity.” Enfish, 822 F.3d at 1338.
We find the specification describes, and the claims recite, “a desired
function or outcome, without providing any limiting detail that confines the
claim to a particular solution to an identified problem.” Affinity Labs. Of
Tex. LLC v. Amazon.com Inc., 838 F.3d 1266, 1269 (Fed. Cir. 2016).
Contrary to Appellants’ arguments on appeal, we find the present claims are
not directed to a specific improvement to computer functionality. Rather,
3 Enfish, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed.Cir. 2016).
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similar to those of TLI, “they are directed to the use of conventional or
generic technology in a nascent but well-known environment, without any
claim that the invention reflects an inventive solution to any problem
presented by combining the two.” TLI Commc ’ns LLC v. A VAuto., L.L. C.,
823 F.3d 607, 612 (Fed. Cir. 2016). Therefore, we conclude all claims on
appeal are directed to a patent-ineligible abstract idea, i.e., a fundamental
economic practice, as found by the Examiner (Final Act. 2).
Alice Step 2.
Where, as here, the claims are found to be “directed to” a patent-
ineligible concept, we then “consider the elements of each claim both
individually and ‘as an ordered combination’ to determine whether the
additional elements ‘transform the nature of the claim’ into a patent-eligible
application.” Alice, 134 S. Ct. at 2355 (quoting Mayo, 132 S. Ct. at 1298).
This analysis has been characterized as the search for an “inventive
concept”— something sufficient to ensure that the claim amounts to
“significantly more” than the abstract idea itself. Id. (quoting Mayo, 132
S.Ct. at 1294).
With respect to Mayo-Alice step 2, the Examiner notes the claimed
invention includes additional elements directed towards computer
implementation of the method, but finds the claims merely recite generic
computer components and methods. Final Act. 3.
Appellants quote Enfish for the proposition that “[s] oft ware can make
non-abstract improvements to computer technology just as hardware
improvements can. Reply Br. 15.
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We disagree with Appellants’ analogy to Enfish because the
specification and claims describe the claimed invention at such a high level
of abstraction that the public is not taught how the desired functions are
achieved.
Therefore, we conclude that none of the claim limitations, viewed
“both individually and as an ordered combination,” amount to significantly
more than the judicial exception in order to sufficiently transform the nature
of the claims into patent-eligible subject matter. See Alice, 134 S. Ct. at
2355 (internal quotations omitted) (quoting Mayo, 132 S. Ct. at 1297).
Accordingly, we sustain the Examiner’s 35 U.S.C. § 101 rejection of
representative claim 1, and claims 3—9, 11—17, 19-24, and 28—30 (not
argued separately) which fall with claim 1. See 37 C.F.R. § 41.37(c)(l)(iv).
DECISION
The rejection of claims 1, 3—9, 11—17, 19-24, and 28—30 under
35 U.S.C. § 101 is AFFIRMED.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1). See 37 C.F.R.
§ 1.136(a)(l)(iv).
AFFIRMED
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