Ex Parte Ramer et al

Patent Trial and Appeal Board

May 1, 2018

13459179 (P.T.A.B. May. 1, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/459, 179 04/28/2012
130011 7590 05/03/2018
Shook, Hardy & Bacon L.L.P.
(AOL Inc.)
Intellectual Property Department
2555 Grand Blvd.
Kansas City, MO 64108-2613
FIRST NAMED INVENTOR
Jorey Ramer
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.
AOLI.246034 7955
EXAMINER
KAZIMI, HAN! M
ART UNIT PAPER NUMBER
3691
NOTIFICATION DATE DELIVERY MODE
05/03/2018 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):
IPDOCKET@SHB.COM
IPRCDKT@SHB.COM
seaton@shb.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOREY RAMER, ADAM SOROCA,
DENNIS DOUGHTY and NEAL J. KARASIC
Appeal 2016-004156
Application 13/459,179 1
Technology Center 3691
Before MURRIEL E. CRAWFORD, KENNETH G. SCHOPPER, and
TARA L. HUTCHINGS, Administrative Patent Judges.
CRAWFORD, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 of the Examiner's
final decision rejecting claims 1-5 and 7-12. We have jurisdiction over the
appeal under 35 U.S.C. § 6(b ).
1Real party in interest Millennial Media, Inc.
Appeal2016-004156
Application 13/459, 179
BACKGROUND
Appellants' invention is directed to a method and system for
facilitating the selection of appropriate advertisements to be delivered to
mobile communication facilities. Spec. 1
Claim 1 is illustrative:
1. A system for targeting advertising content of
a first and second sponsor to a first and second mobile
communication facility, the system comprising one or more
computers having computer readable mediums having stored
thereon instructions which, when executed by one or more
processors of the one or more computers, causes the system to
perform the steps of:
(a) receiving a first and second request for
advertising content, wherein the first request is associated
with a first user and the first mobile communication facility
and the second request is associated with a second user and
the second mobile communication facility, wherein a
rendering capability of the first type of mobile
communication facility is different from a rendering
capability of the second type of mobile communication
facility, wherein the rendering capability comprises a model
of the respective mobile communication facility;
(b) retrieving data from a provider pertaining to the
first and second users, wherein the data is at least one of:
(i) credit card data;
(ii) reward card data;
(iii) mail order catalog data;
(iv) survey data;
(v) search query data;
(vi) supermarket or pharmacy purchase data; and
(vii) settop box television viewing data;
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Application 13/459, 179
( c) selecting first and second items of
advertising content from each of the first sponsor and the
second sponsor based at least on a determination of
relevancy of each advertising content to the data, wherein the
relevancy determination generates respective relevancy scores,
wherein the first items of advertising content require the
rendering capability of the first type of mobile communication
facility to be rendered thereon and the second items of
advertising content require the rendering capability of the
second type of mobile communication facility to be rendered
thereon, wherein the first items of advertising content are
incompatible with the second type of mobile communication
facility and the second items of advertising content are
incompatible with the first type of mobile communication
facility;
( d) determining that the first item of
advertising content of the first sponsor and the second item of
advertising content of the second sponsor are more relevant to
the first user than the second user based on the respective
relevancy scores and determining that the first item of
advertising content of the second sponsor and the second item
of advertising content of the first sponsor are more relevant to
the second user than the first user based on the respective
relevancy scores; and
( e) transmitting the first item of advertising
content of the first sponsor instead of the second item of
advertising content of the second sponsor to the first mobile
communication facility for display thereon and transmitting
the second item of advertising content of the first sponsor
instead of the first item of advertising content of the second
sponsor to the second mobile communication facility for
display thereon.
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Application 13/459, 179
Appellants appeal the following rejection:
Claims 1-5 and 7-12 are rejected under 35 U.S.C. §101.
PRINCIPLES OF LAW
An invention is patent-eligible if it claims a "new and useful process,
machine, manufacture, or composition of matter." 35 U.S.C. § 101. The
Supreme Court, however, has long interpreted § 101 to include implicit
exceptions: "[l]aws of nature, natural phenomena, and abstract ideas" are
not patentable. E.g., Alice Corp. Pty. Ltd. v. CLS Bank Int 'l, 134 S.Ct. 2347,
2354 (2014).
In determining whether a claim falls within the excluded category of
abstract ideas, we are guided in our analysis by the Supreme Court's two-
step framework, described in Mayo and Alice. Id. at 2355 (citing Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1296-97
(2012)). In accordance with that framework, we first determine whether the
claim is "directed to" a patent-ineligible abstract idea. See Alice, 134 S. Ct.
at 2356 ("On their face, the claims before us are drawn to the concept of
intermediated settlement, i.e., the use of a third party to mitigate settlement
risk."); Bilski v. Kappas, 561 U.S. 593, 611 (2010) ("Claims 1 and 4 in
petitioners' application explain the basic concept of hedging, or protecting
against risk."); Diamond v. Diehr, 450 U.S. 175, 184 (1981) ("Analyzing
respondents' claims according to the above statements from our cases, we
think that a physical and chemical process for molding precision synthetic
rubber products falls within the § 101 categories of possibly patentable
subject matter."); Parker v. Flook, 437 U.S. 584, 594--595 (1978)
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Application 13/459, 179
("Respondent's application simply provides a new and presumably better
method for calculating alarm limit values."); Gottschalk v. Benson, 409 U.S.
63, 64 (1972) ("They claimed a method for converting binary-coded decimal
(BCD) numerals into pure binary numerals.").
The patent-ineligible end of the spectrum includes fundamental
economic practices, Alice, 134 S. Ct. at 2357; Bilski, 561 U.S. at 611;
mathematical formulas, Parker, 437 U.S. at 594--95; and basic tools of
scientific and technological work, Gottschalk, 409 U.S. at 69. On the patent-
eligible side of the spectrum are physical and chemical processes, such as
curing rubber, Diamond, 450 U.S. at 184 n.7, "tanning, dyeing, making
waterproof cloth, vulcanizing India rubber, smelting ores," and a process for
manufacturing flour, Gottschalk, 409 U.S. at 69.
If the claim is "directed to" a patent-ineligible abstract idea, we then
consider the elements of the claim-both individually and as an ordered
combination-to assess whether the additional elements transform the nature
of the claim into a patent-eligible application of the abstract idea. Alice, 134
S. Ct. at 2355. This is a search for an "inventive concept"-an element or
combination of elements sufficient to ensure that the claim amounts to
"significantly more" than the abstract idea itself. Id.
Claims involving only data collection, analysis, and display are
directed to an abstract idea. Elec. Power Grp. v. Alstom S.A., 830 F.3d 1350,
1353 (Fed. Cir. 2016) (holding that "collecting information, analyzing it, and
displaying ceiiain results of the collection and analysis" are "a familiar class
of claims 'directed to' a patent ineligible concept"); see also In re TL!
Comma 'ns LLC Patent Litig., 823 F.3d 607, 611 (Fed. Cir. 2016);
FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1093-94 (Fed. Cir.
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Application 13/459, 179
2016). Claims that use generic computer technology to perform data
collection, analysis, and display and that do not recite an improvement to a
particular computer technology are patent ineligible. See, e.g., McRO, Inc. v.
Bandai Namco Games Am. Inc., 837 F.3d 1299, 1314-15 (Fed. Cir. 2016)
(finding claims not abstract because they "focused on a specific asserted
improvement in computer animation").
ANALYSIS
Re} ection under 3 5 U.S. C. § 101
The Examiner holds that the claims are directed to the abstract idea of
targeting advertising content which is a fundamental economic practice.
Final Act. 4. The Examiner finds that the additional elements other than the
abstract idea are no more than mere instructions to implement the idea on a
computer and/or are recitations of generic computer structure that serves to
perform generic computer functions that are well-understood, routine, and
conventional activities previously known to the pertinent industry.
We are not persuaded of error on the part of the Examiner by
Appellants arguments that the claims are directed to a processor and memory
which are structural elements. Specifically, Appellants argue, relying on
DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1257 (Fed. Cir.
2014), that the claims relate to an issue that did not exist in the pre-Internet
world and that the claimed solution is rooted in computer technology in that
the ad server and the data provider operate in a networked environment.
App. Brief 5-6. Appellants contend that the claim addresses a business
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challenge of effective targeting of adve1iisement to users of mobile devices
that is particular to the Internet. App. Brief 5.
We are not persuaded by Appellants' argument that the claim is
analogous to the claims in DDR, where the court noted that a claim may
arnount to more than any abstract idea recited in the claims when it
addresses a business challenge, such as "retaining website visitors," where
that challenge is particular to a specific technological environment, such as
the lnten1et. DDR Holdings, 773 F.3d at 1257. In DDR, the court stated that
"the [] patent's claims address the problem of retaining website visitors that,
if adhering to the routine, conventional functioning of Internet hyperlink
protocol, would be instantly transported away from a host's website after
'clicking' on an advertisement and activating a hyperlink." Id. This was
done in the claim by serving a composite page with content based on the link
that was activated to serve the page.
In contrast, claim 1, according to the Specification at pages 5-6, seeks
to solve problems related to facilitating the selection of advertisements
through an ad exchange by associating advertisement requests with a user,
user profile or other mobile communication type information which are not
computer technology problems but business problems. That this problem
may assisted by the use of a computer, or may be a network-centric solution,
is not pertinent to determining whether the claim itself provides a technical
solution to a computer technology problem. See DDR Holdings, 773 F.3d at
1258 ("not all claims purporting to address Internet-centric challenges are
eligible for patent") (citation omitted); see also id. at 1259 (determining that
the claims do not merely apply the abstract idea "to the particular
technological environment of the Internet"). We note that claim 1 does not
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recite an improvement to the computer. In fact, Appellants' Specification
teaches at paragraph 391 that the processes, and steps of the invention, may
be realized in hardware, software, or any combination of these suitable for a
particular application and that the hardware may include a general purpose
computer and/or dedicated computing device.
In view of the foregoing, we will sustain the Examiner's rejection as
to claim 1. We also sustain the rejection as it is directed to the remaining
claims because the Appellants have not argued the separate eligibility of
these claims.
DECISION
The decision of the Examiner is affirmed.
TIME PERIOD
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) (2009).
ORDER
AFFIRMED
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