Ex Parte Qi et al

Patent Trial and Appeal Board

Oct 31, 2016

13963707 (P.T.A.B. Oct. 31, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/963,707 08/09/2013
23623 7590 11/02/2016
AMIN, TUROCY & WATSON, LLP
127 Public Square
57th Floor, Key Tower
CLEVELAND, OH 44114
FIRST NAMED INVENTOR
Qi Qi
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.
IPCP Al7852008/CITYP102USB 4127
EXAMINER
TARAE, CATHERINE MICHELLE
ART UNIT PAPER NUMBER
3992
NOTIFICATION DATE DELIVERY MODE
11/02/2016 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):
docketl@thepatentattorneys.com
swati@thepatentattorneys.com
hmckee@thepatentattorneys.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte QI QI, TIAN-MING BU, and XIAOTIE DENG
Appeal2016-007365
Application 13/963,707 1
Patent 7,996,267 Bl
Technology Center 3900
Before ALLEN R. MACDONALD, KEN B. BARRETT, and
CYNTHIA L. MURPHY, Administrative Patent Judges.
MacDONALD, Administrative Patent Judge.
DECISION ON APPEAL 2
1 Filed August 9, 2013, seeking to reissue U.S. Patent 7,996,267 B2, issued
August 9, 2011, based on Application 12/436,700, filed May 6, 2009, which
claims benefit of Provisional Application 61/051, 144, filed May 7, 2008.
2 The real party in interest is City University of Hong Kong. App. Br. 2.
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STATEMENT OF THE CASE
Introduction
Appellants appeal under 35 U.S.C. § 134 from a Final Rejection of
claims 1-22. We have jurisdiction under 35 U.S.C. § 6(b ).
Appellants 'Invention
This invention relates to "[ s ]ystems and methods for facilitating more
efficient bidding in an ad-words auction." Abstract. Particularly, "[a]n
auctioning component can employ a forward-looking Nash equilibrium to
facilitate an ad-words auction. A bidding component can enable bidding
agents to place bids in the ad-words auction as a function of dynamically
considering at least existing strategies of other bidding agents and future
responses of the other bidding agents." Id.
Exemplary Claims
Exemplary claim 1 under appeal read as follows:
1. A system comprising:
a memory having stored therein computer executable
components that, when executed by a processor of the system, cause
the system to:
employ a forward looking Nash equilibrium to conduct
an Internet ad-words auction of Internet advertisement slots;
and
generate and transmit bids in the Internet ad-words
auction based on dynamically considering at least existing
strategies of other bidding agents and future responses of the
other bidding agents.
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Rejection
1. The Examiner rejected claims 1-22 under 35 U.S.C. § 101 as
being directed to non-statutory subject matter (Final Act. 3-7; Ans. 4--10). 3
Appellants ' Contentions
1. Appellants contend that the Examiner erred in rejecting claim 1
under 35 U.S.C. § 101 because:
Appellant rebuts the pertinency of the [Alice] decision to the
present application since the type of invention involved in Alice
Corporation Pty. Ltd. v. CLS Bank International, 573 US _
(2014) (a well [ -]known and ancient business practice by human
beings merely reduced to execution by computers) is clearly
distinguishable from the novel and non-obvious improvements
over existing technological systems (e.g., existing computerized
auction systems, existing computerized advertisement brokering
systems, existing computerized advertisement analytics systems,
etc.) disclosed by the present application, and thus the present
application is a clear improvement over existing computerized
technologies.
App. Br. 16.
3 We select claim 1 as representative. Separate patentability, in compliance
with 37 C.F.R. § 41.37(c)(iv), is not argued for claims 2-22. As to
independent claims 10, 17, 21, and 22, Appellants merely repeat for these
claims (App. Br. 25---61) the arguments directed to claim 1. As to dependent
claims 2-9, 11-16, and 18-20, Appellants merely quote the claim and repeat
for these claims (App. Br. 61---68) a legal argument directed to claim 1. Cf
Ans. 10 (The Examiner addressing Appellants' failure to substantively
address the dependent claims.)
While repetition of an argument for patentability of a first claim as an
argument for a second claim might outwardly appear to be a separate
argument for patentability of the second claim, such a repeated argument is
not in fact an argument for "separate patentability." Except for our ultimate
decision, the § 101 rejection of claims 2-22 is not discussed further herein.
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Moreover, the various embodiments of the present application
provide improvements to the functionality and use of a
conventional computerized device (e.g., a server, computer,
controller device, a wireless device, etc.) with respect to
employing a forward looking Nash equilibrium to conduct an
Internet ad-words auction of Internet advertisement slots.
App. Br. 16-17.
2. Further, Appellants contend that the Examiner erred in rejecting
claim 1under35 U.S.C. § 101 because:
[W]ith the present claims, there are several particular limitations
that also remove them from being abstract, for example claim 1
recites, in part:
employ a forward looking Nash equilibrium
to conduct an Internet ad-words auction of Internet
advertisement slots; and
generate and transmit bids in the Internet
ad-words auction based on dynamically
considering at least existing strategies of other
bidding agents and future responses of the other
bidding agents
(emphasis added)
As the particular claim limitations of A system comprising:
a memory having stored therein computer executable
components that, when executed by a processor of the system,
cause the system to: employ a forward looking Nash equilibrium
to conduct an Internet ad-words auction of Internet
advertisement slots; and generate and transmit bids in the
Internet ad-words auction based on dynamically considering at
least existing strategies of other bidding agents and future
responses of the other bidding agents necessarily remove the
claim from being a mere abstract idea per Part 1 of the [Alice]
analysis.
App. Br. 18.
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3. Appellants contend that the Examiner erred in rejecting claim 1
under 35 U.S.C. § 101 because:
It is clear that the claims are clearly restricted to the
application of employing a forward looking Nash equilibrium
to conduct an Internet ad-words auction of Internet
advertisement slots.
Pre-emption of a field by a claim to an abstract idea was a
major main concern of the Supreme Court in Alice. There, the
Supreme Court emphasized that "the concern that drives this
exclusionary principle [that abstract ideas cannot be patented] is
one of pre-emption." That is, the Court does not want to allow
an inventor to "effectively grant a monopoly over an abstract
idea". However, the Court very clearly cautioned that it treads
carefully in construing this exclusionary principle "lest it
swallow all of patent law," since all inventions embody, use,
reflect, rest upon, or apply abstract ideas. Moreover, an
invention is not rendered ineligible for patent simply because it
involves an abstract concept.
The Court further explained how it is important to
distinguish between patents that claim the building blocks of
human ingenuity and those that integrate the buiiding biocks into
something more, thereby transforming them into a patent-
eligible invention, which poses no risk of preemption, and
therefore remain eligible for the monopoly granted under our
patent laws. In view of the discussion supra, the claims clearly
do not preempt or cover the full abstract idea of "conducting an
auction", and thus are eligible for patent protection under 35
U.S.C. § 101.
App. Br. 21.
4. Appellants contend that the Examiner erred in rejecting claim 1
under 35 U.S.C. § 101 because as in DDR Holdings, LLC v. Hotels.com,
L.P., 773 F.3d 1245, 1255 (Fed. Cir. 2014):
The subject claims are directed to a particular
computerized online auction centric problem that did not exist
before the recently developed advanced technologies associated
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with computer networks, and do not recite a commonplace
business method aimed at processing business information,
applying a known business process to the particular
technological environment of the Internet, or creating or altering
contractual relations using generic computer functions and
conventional network operations. Specifically, A system
comprising: a memory having stored therein computer
executable components that, when executed by a processor of the
system, cause the system to: employ a forward looking Nash
equilibrium to conduct an Internet ad-words auction of Internet
advertisement slots; and generate and transmit bids in the
Internet ad-words auction based on dynamically considering at
least existing strategies of other bidding agents and future
responses of the other bidding agents was not a known business
process as evidenced by the indication of allowable subject
matter in independent claim 1.
App. Br. 22.
5. Appellants contend that the Examiner erred in rejecting claim 1
under 35 U.S.C. § 101 because:
We further note that the Office Action fails to address each
element of the independent claim separately as required under
the law in a 35 U.S.C. § 101 analysis of patent-eligible subject
matter, and instead makes a general blanket assertion regarding
all of the claims as "conducting an auction". As such, the Office
Action has not made a prima facie case that the independent
claim is abstract and not patentable subject matter if the Office
Action has not addressed each element of the claim in the 101
rejection.
App. Br. 24--25.
6. Appellants contend that the Examiner erred in rejecting claim 1
under 35 U.S.C. § 101 because:
The rejection has clearly merely listed the claim elements
and described them at a high level of abstraction that is
untethered from the language of the claim when determining the
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focus of the claimed invention. Additionally, in using this high
level of abstraction, the rejection has erroneously applied the
"directed to" inquiry, and thus has not determined whether the
whole of the claims in view of the specification is directed to a
patent ineligible concept.
Reply Br. 26.
7. Appellants contend that the Examiner erred in rejecting claim 1
under 35 U.S.C. § 101 because:
[I]n view of the fact that the Office Action has not rejected the
claims under 35 U.S.C. § 102 and 35 U.S.C. § 103, which govern
novelty and nonobviousness, the claims are directed to subject
matter that was not well-understood, routine and conventional
activities previously known to the auction industry.
Reply Br. 26.
ISSUES
1) Did the Examiner err in rejecting claim 1under35 U.S.C. § 101
because, under the Alice § 101 analysis, claim 1 recites something
significantly more that the purported abstract idea?
2) Did the Examiner err in rejecting claim 1 under 35 U.S.C. § 101
because the Examiner fails to establish a proper prima facie case that the
claim is directed to ineligible subject matter (e.g., abstract idea)?
PRINCIPLES OF LAW
A) In re Jung, 637 F.3d 1356, 1362 (Fed. Cir. 2011)
As this court has repeatedly noted, "the prima facie case is
merely a procedural device that enables an appropriate shift of
the burden of production." Hyatt v. Dudas, 492 F.3d 1365, 1369
(Fed.Cir.2007) (citing In re Oetiker, 977 F.2d 1443, 1445
(Fed.Cir.1992)). See also In re Piasecki, 745 F.2d 1468, 1472
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(Fed.Cir.1984). The Patent and Trademark Office ("PTO")
satisfies its initial burden of production by "adequately
explain[ing] the shortcomings it perceives so that the applicant is
properly notified and able to respond." Hyatt, 492 F.3d at 1370.
In other words, the PTO carries its procedural burden of
establishing a prima facie case when its rejection satisfies 35
U.S.C. § 132, in "notify[ing] the applicant ... [by] stating the
reasons for [its] rejection, or objection or requirement, together
with such information and references as may be useful in judging
of the propriety of continuing the prosecution of [the]
application." 35 U.S.C. § 132. That section "is violated when a
rejection is so uninformative that it prevents the applicant from
recognizing and seeking to counter the grounds for rejection."
Chester v. Miller, 906 F.2d 1574, 1578 (Fed.Cir.1990).
In re Jung, 637 F.3d 1356, 1362 (Fed. Cir. 2011).
"Section 132 merely ensures that an applicant at least be
informed of the broad statutory basis for the rejection of his
claims, so that he may determine what the issues are on which he
can or should produce evidence." Chester, 906 F.2d at 1578
(internal citation omitted). As discussed above, all that is
required of the office to meet its prima facie burden of production
is to set forth the statutory basis of the rejection and the reference
or references relied upon in a sufficiently articulate and
informative manner as to meet the notice requirement of§ 132.
As the statute itself instructs, the examiner must "notify the
applicant," "stating the reasons for such rejection," "together
with such information and references as may be useful in judging
the propriety of continuing prosecution of his application." 35
U.S.C. § 132.
In re Jung, 637 F.3d at 1363.
It is well-established that the Board is free to affirm an
examiner's rejection so long as "appellants have had a fair
opportunity to react to the thrust of the rejection." In re Kronig,
539 F.2d 1300, 1302-03 (CCPA 1976).
In re Jung, 637 F.3d at 1365.
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B) Alice Corp. v. CLS Bank Int'!, 134 S. Ct. 2347, 2355 (2014).
[T]he Supreme Court set forth an analytical framework under
§ 101 to distinguish patents that claim patent-ineligible laws of
nature, natural phenomena, and abstract ideas---or add too little
to such underlying ineligible subject matter-from those that
claim patent-eligible applications of those concepts. First, given
the nature of the invention in this case, we determine whether the
claims at issue are directed to a patent-ineligible abstract idea.
Alice Corp. v. CLS Bank Int'!, - U.S.--, 134 S.Ct. 2347,
2355, 189 L.Ed.2d 296 (2014). If so, 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 of that abstract idea. Id. This second step is the
search for an "inventive concept," or some element or
combination of elements sufficient to ensure that the claim in
practice amounts to "significantly more" than a patent on an
ineligible concept. Id.
DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1255
(Fed. Cir. 2014).
ANALYSIS
We have reviewed the Examiner's rejections in light of Appellants'
arguments that the Examiner has erred. We disagree with Appellants'
conclusions and concur with the conclusions reached by the Examiner.
Except as noted below, we adopt as our own (1) the findings and reasons set
forth by the Examiner in the action from which this appeal is taken and
(2) the reasons set forth by the Examiner in the Examiner's Answer in
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response to Appellants' Appeal Brief. We highlight the following additional
points.
As to Appellants' above contentions 1--4, we disagree that the cited
case law establishes error in the Examiner's§ 101 analysis. Appellants
acknowledge that an Examiner may establish a prima facie case that the
claims are directed to patent-ineligible subject matter using the two-part
analysis outlined in Alice Corp. Pty. Ltd. v. CLS Bank Int 'l, 134 S. Ct. 2347
(2014). (App. Br. 12). However, Appellants follow this by citing only to
numerous non-binding decisions of this Board (e.g., PNC Bank v. Secure
Axcess, LLC, CBM2012-00100, PTAB, September 9, 2014) and the District
Courts (Tuxis Technologies, LLC v. Amazon.com, Inc. US District Court
Delaware, Civil Action No. 13-1771-RGA, September 3, 2014) and but a
single decision of our reviewing court (i.e., DDR Holdings, LLC v.
Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014)), while overlooking
numerous highiy reievant Federai Circuit decisions that contradict
Appellants' arguments (e.g., Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709
(Fed. Cir. 2014)). Further, in citing to DDR Holdings, Appellants also
overlook those relevant portions of DDR Holdings that contradict
Appellants' arguments. Such an analysis of the case law is inherently
unpersuasive.
As to Appellants' above contentions 5---6, we disagree that the
Examiner's § 101 analysis is incomplete, overly general, untethered from
claim language, or otherwise flawed. First, Appellants argue that to
establish a prima facie case, the examiner must perform particular required
steps (i.e., "address each element of the independent claim separately").
App. Br. 24. Appellants go on to state that this is "required under the law in
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a 35 U.S.C. § 101 analysis of patent-eligible subject matter". App. Br. 24.
Contrary to Appellants' position, the law sets forth no such requirement.
Rather, 35 U.S.C. § 132 sets forth a more general prima facie notice
requirement. We review Appellants' prima facie arguments under the same
standard we would any prima facie argument. We determine whether the
Examiner notified the applicant, stating the reasons for the rejection together
with such information as may be useful in judging the propriety of
continuing prosecution of his application. 35 U.S.C. § 132.
Appellants acknowledge (App. Br 17):
The Office Action asserts:
In the instant case, Examiner has identified the
claims as falling within one of the four statutory
categories (step 1 ). The Examiner then identified
the claims as being directed to a judicial exception,
in particular, conducting auctions, which is
considered to be an abstract idea inasmuch as such
activity is considered both a fundamentai economic
practice and a method of organizing human activity
(2A). Both fundamental economic practices and
methods of organizing human activities are types of
concepts that have been identified by the courts as
abstract ideas (CBT Slides at 15).
Final Act. 3. Appellants then state:
Appellant respectfully disagrees with this analysis. The Office
Action seems to gloss over the particular limitations of the claims
that narrow substantially the reach of the claims in the overall
field of "conducting auctions".
App. Br. 17. We disagree.
Regarding step 1 of Alice, we conclude that the Examiner's statement,
which Appellants acknowledge they have read, is sufficient to place
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Appellants on notice as to step 1 of Alice as required under 35 U.S.C. § 132.
Further, Appellants' understanding of the Examiner's rejection on this point
was manifested by their response to the Office Action. Appellants did not
respond by asserting that they did not understand the Examiner's rejection.
Instead, Appellants presented above contentions 1 and 2, which we address
above. See In re Jung, 637 F.3d 1356 (Fed. Cir. 2011). On the issue of
prima facie notice, particularly to anticipation but also generally, our
reviewing court was clear in Jung that:
There has never been a requirement for an examiner to make an
on-the-record claim construction of every term in every rejected
claim and to explain every possible difference between the prior
art and the claimed invention in order to make out a prima facie
rejection.
637 F.3d at 1363. The Federal Circuit further stated:
"[Section 132] does not mandate that in order to establish prima
facie anticipation, the PTO must explicitly preempt every
possible response to a section 102 rejection. Section 132 merely
ensures that an applicant at least be informed of the broad
statutory basis for the rejection of his claims, so that he may
determine what the issues are on which he can or should produce
evidence." Chester, 906 F.2d at 1578 (internal citation omitted).
As discussed above, all that is required of the office to meet its
prima facie burden of production is to set forth the statutory basis
of the rejection and the reference or references relied upon in a
sufficiently articulate and informative manner as to meet the
notice requirement of§ 132. As the statute itself instructs, the
examiner must "notify the applicant," "stating the reasons for
such rejection," "together with such information and references
as may be useful in judging the propriety of continuing
prosecution of his application." 35 U.S.C. § 132.
Id. Again, we conclude the Examiner's discussion was more than sufficient
to meet this burden as to Alice step 1.
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Additionally, regarding step 2 of Alice, we also find unpersuasive
Appellants' argument that notice was lacking. We conclude that the
Examiner's analysis and remarks (Final Act. 7-8 and the paragraph bridging
4-5), are sufficient to place Appellants on notice as to step 2 of Alice as
required under 35 U.S.C. § 132. Further, Appellants' understanding of the
Examiner's rejection on this point was manifested by their response to the
Office Action. Appellants did not respond by asserting that they did not
understand the Examiner's rejection. Instead, Appellants presented above
contentions 3 and 4, which we address above.
As to Appellants' above contention 7, we disagree that the absence of
a prior art rejection is indicative of error in the Examiner's§ 101 analysis.
We discern no connection between the lack of a prior art rejection under
35 U.S.C. § 102 or 35 U.S.C. § 103, and the claimed subject matter thus
being patent eligible under 35 U.S.C. § 101.
CONCLUSIONS
(1) The Examiner has not erred in rejecting claims 1-22 as being
unpatentable under 35 U.S.C. § 101.
(2) Claims 1-22 are not patentable.
DECISION
The Examiner's rejection of claims 1-22 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)(l )(iv).
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AFFIRMED
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