Ex Parte Piekarec et al

Patent Trial and Appeal Board

Mar 16, 2017

12350326 (P.T.A.B. Mar. 16, 2017)

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.
12/350,326 01/08/2009 Sophie Piekarec LUTZ 200956US01 6706
48116 7590 03/20/2017
FAY STTARPF/T TTf’F.NT
EXAMINER
1228 Euclid Avenue, 5th Floor BROWN, ALVIN L
The Halle Building
Cleveland, OH 44115-1843 ART UNIT PAPER NUMBER
3682
NOTIFICATION DATE DELIVERY MODE
03/20/2017 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):
docketing @ faysharpe.com
ipsnarocp @ nokia. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SOPHIE PIEKAREC, STEPHANE BETGE BREZETZ,
GUY-BERTRAND KAMGA, and MARIE-PASCALE DUPONT
Appeal 2015-001062
Application 12/3 50,3261
Technology Center 3600
Before ANTON W. FETTING, BRUCE T. WIEDER, and
KENNETH G. SCHOPFER, Administrative Patent Judges.
WIEDER, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35U.S.C. § 134 from the final
rejection of claims 1—11. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
CLAIMED SUBJECT MATTER
Appellants’ claimed invention relates “to the field of content
distribution: television-over-IP, mobile television, video-on-demand (VoD),
etc, and more particularly to providing personalized advertisements within
the context of content distribution.” (Spec. 1,11. 3—5.)
1 According to Appellants, the real party in interest is Alcatel Lucent.
(Appeal Br. 1.)
Appeal 2015-001062
Application 12/350,326
Claims 1, 6, and 9 are the independent claims on appeal. Claim 1 is
illustrative. It recites (emphasis added):
1. A method for distributing media elements to media
terminals, said method comprising the following operations,
carried out within a media server:
- determining at least one distribution criterion;
- preselecting a group of media elements that meet the
distribution criterion (or criteria);
- for each media element, defining correlation criteria
intrinsic with other media elements by defining metadata
characteristic of the content of the media element as well as
metadata characteristic of other media elements that may be
combined with said media element;
- selecting a plurality of elements from among the
preselected group of media elements, said selected plurality of
elements exhibiting an intrinsic correlation with one another;
- concatenating the selected plurality of elements to form
at least one eligible sequence;
- choosing a sequence from among the eligible sequences,
- distributing the chosen sequence to the media terminals.
REJECTIONS
Claims 1—11 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Maigret (US 2008/0109306 Al, pub. May 8, 2008) and Do
(US 2007/0220040 Al, pub. Sept. 20, 2007).
Claims 1—11 are rejected under 35 U.S.C. § 101 as directed to non-
statutory subject matter.
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ANALYSIS
The f103 rejection
The Examiner finds that
Maigret does not explicitly disclose
for each media element, defining correlation criteria
intrinsic with other media elements by defining metadata
characteristic of the content of the media element as well as
metadata characteristic of other media elements that may be
combined with said media element.
However, Do discloses - for each media element, defining
correlation criteria intrinsic with other media elements by
defining metadata characteristic of the content of the media
element as well as metadata characteristic of other media
elements that may be combined with said media element (par
[0005-0009, 0025, 0026, 0030, 0049-0053]).
(Final Action 3.)
Appellants disagree and argue that
the cited passages of Do describe a so-called “seed” which is “a
concept” used to group keywords and advertisers together. . . .
[T]he seed is used to retrieve advertising information to display
for a user. Clearly, the seed is not metadata defined for any
particular media element. The seed merely defines groups of
advertisers and/or groups of keywords together.
(Appeal Br. 8.)
Do relates to “a method of generating an advertising list using a seed,
which can determine a property of a content page using a seed, and thereby
can display various types of advertising information of a plurality of
advertisers with the determined property, as contextual advertising.” (Do
110.)
Do discloses that a seed can be a defined group of keywords. {Id.
125.) Specifically, “the seed is utilized to determine a property of a content
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page that a user is currently reading. Also, the seed is utilized to retrieve
advertising information corresponding to the determined property (content)
and display the retrieved advertising information for a user.” (Id. ) Do also
discloses that “a seed generator receiv[es] a selection of a keyword
associated with advertising information from each of a plurality of
advertisers.” (Id. 113.)
By way of example, Do discloses:
when a content page about ‘graduation’ is displayed for a user,
an advertising matching system may synthetically analyze
keywords (text-in-keyword) included in the content page,
determine a seed of the content page as ‘graduation’, and display
advertising information associated with the determined seed,
‘graduation’, for example, graduation gift, flower delivery, and
the like, for the user.
(Id. 130.) In this example, the keyword “graduation” defines a metadata
characteristic of the content of a first media element. “[Graduation gift,
flower delivery, and the like,” each defines a metadata characteristic of other
media elements that may be combined with the first media element.
Moreover, because the seed generator receives keywords associated with the
media elements/advertising, seeds are generated in correlation with each
media element. (See id. 113.) Therefore, we agree with the Examiner that
Do’s seeds are “data about data,” i.e., metadata. (See Answer 7.)
In view of the above, we are not persuaded that the Examiner erred in
rejecting claim 1. Claims 2—9 are not separately argued and, therefore, fall
with claim 1. See 37 C.F.R. § 41.37(c)(iv) (2012).
Dependent claim 10 is separately argued. Claim 10 recites:
The method of claim 9, further comprising:
defining a third metadata term for the plurality of media
elements, the third metadata term being characteristic of the
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content of other media elements which may not be combined
with the media element for which the third metadata term is
defined.
Appellants argue that “[njeither Maigret nor Do explicitly teach
defining such a third metadata term for the media elements.” (Appeal
Br. 10.) Specifically, Appellants argue that “Do does NOT disclose
defining two metadata terms let alone three.'” (Id.)
The Examiner, however, finds that “Do further discloses defining a
third metadata term for the plurality of media elements.” (Final Action 9.)
As discussed above, Do discloses that there may be multiple metadata
terms for the plurality of media elements, e.g., “graduation gift, flower
delivery, and the like.” (Do 130.) Therefore, we are not persuaded that the
Examiner erred in rejecting claim 10. Claim 11, which depends from
claim 10, is not separately argued and, therefore, falls with claim 10.
See 31 C.F.R. § 41.37(c)(iv) (2012).
The f101 rejection
After the Appeal Brief was filed in this case, the Supreme Court
decided Alice Corp. Pty. Ltd. v. CLSBankInt’l, 134 S. Ct. 2347 (2014).
Alice applies a two-part framework, earlier set out in Mayo Collaborative
Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289 (2012), “for distinguishing
patents that claim laws of nature, natural phenomena, and abstract ideas
from those that claim patent-eligible applications of those concepts.” Alice
Corp., 134 S. Ct. at 2355.
Under the two-part framework, it must first be determined if “the
claims at issue are directed to a patent-ineligible concept.” Id. If the claims
are determined to be directed to a patent-ineligible concept, then the second
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part of the framework is applied. “We have described step two of this
analysis as a search for an ‘inventive concept’ — i.e., an element or
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. at 2355 (brackets in original).
In the Answer, the Examiner enters a new ground of rejection under
§101 rejecting claims 1—11. Specifically, the Examiner determines that
[t]he claimed invention is directed to selecting a group of media
elements that meet a certain distribution criterion and
distributing media elements to media terminals. Selecting and
distributing a group of media elements that meet a certain
distribution criterion to enhance revenue is a fundamental
economic practice. As noted above, fundamental economic
practices is an example of an abstract idea explicitly referenced
in Alice Corp.
(Answer 5.) The Examiner further determines that
[t]he steps or acts performed (utilizing a processor) in
independent method claims 1 and 9 are not enough to qualify as
“significantly more” than the abstract idea itself, since the claims
are mere instructions to apply the abstract idea. Furthermore,
there is no improvement to another technology or technical field.
(Id.)
In reply, Appellants argue that “the claims make no mention of
‘enhancing revenue.’ In fact, the claims have absolutely nothing to do with
providing financial services or any economic practices.” (Reply Br. 3.)
Appellants further argue, “on its face[,] methods of distributing media
elements are NOT fundamental economic practices.” (Id. at 4.) Moreover,
Appellants argue, “nowhere . . . does the Supreme Court suggest that just
because someone might ‘enhance revenue’ by practicing a claimed
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invention, then the claimed invention is directed to a fundamental economic
practice.” (Id.)
The Specification discloses that “[t]he invention pertains to the field
of content distribution” (Spec. 1,1. 3), and that “[w]ith respect to the
Internet, various solutions exist to distribute advertisements in a targeted
manner” (id. at 1,11. 28—29). In particular, the Specification discloses that “a
publisher inserts an advertising window into a website including a sponsored
link to a site determined by the advertiser, who in turn collects statistics
regarding the users who clicked on that link, paying the publisher a fee for
each click.” (Id. at 1,11. 31—33.) Further, the Specification discloses that
“[t]he invention intends to mitigate the insufficiencies of the existing
solutions, by proposing a method for distributing personalized
advertisements that makes it possible to maximize the impact on the
viewer.” (Id. at 2,11. 18—20.) In short, the invention is directed to
“mitigat[ing] the insufficiencies” regarding the distribution of media
elements, e.g., advertisements, by “[selecting and distributing a group of
media elements that meet a certain distribution criterion.” (See id', see also
Answer 5.) Regardless of financial services, Appellants do not persuasively
argue why the targeted distribution of advertisements is not “a ‘fundamental
. . . practice long prevalent in our system [of commerce] . . . .’ Alice, 134 S.
Ct. at 2356.” See, e.g., Intellectual Ventures ILLC v. Capital One Bank
(USA), 792 F.3d 1363, 1369 (Fed. Cir. 2015).
Appellants do not argue the second part of the Alice framework.
In view of the above, we are not persuaded that the Examiner erred in
rejecting claims 1—11 under § 101.
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DECISION
The Examiner’s rejection of claims 1—11 under 35 U.S.C. § 103(a) is
affirmed.
The Examiner’s rejection of claims 1—11 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). See 37 C.F.R.
§ 1.136(a)(l)(iv).
AFFIRMED
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