Ex Parte Rodriguez et alDownload PDFPatent Trial and Appeal BoardDec 16, 201613541489 (P.T.A.B. Dec. 16, 2016) Copy Citation 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. 13/541,489 07/03/2012 Adrian X. Rodriguez RPS920110066US2 4543 63638 7590 12/16/2016 STREETS & STEELE - IBM CORPORATION (ROC) 13100 WORTHAM CENTER DRIVE, SUITE 245 Suite 245 HOUSTON, TX 77065 EXAMINER VAN BRAMER, JOHN W ART UNIT PAPER NUMBER 3622 MAIL DATE DELIVERY MODE 12/16/2016 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte ADRIAN X. RODRIGUEZ and ERIC WOODS Appeal 2014-0043891 Application 13/541,4892 Technology Center 3600 Before BIBHU R. MOHANTY, BRADLEY B. BAYAT, and AMEE A. SHAH, Administrative Patent Judges. BAYAT, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final rejection of claims 1—7. We have jurisdiction under 35 U.S.C. § 6(b). STATEMENT OF THE DECISION We AFFIRM. 1 Our decision references Appellants’ Appeal Brief (“Br.,” filed Oct. 16, 2013) and the Examiner’s Answer (“Ans.,” mailed Dec. 17, 2013) and Final Office Action (“Final Act.,” mailed June 13, 2013). 2 Appellants identify International Business Machines Corporation as the real party in interest. Br. 2. Appeal 2014-004389 Application 13/541,489 CLAIMED INVENTION Appellants’ claimed invention “relates to capturing user data during user interaction with a website.” Spec. 12. Claim 1, reproduced below, is the sole independent claim and representative of the subject matter on appeal: 1. A computer-implemented method, comprising: receiving, at a web server, a request from a first user at a first IP address for content hosted on the web server; delivering the requested content from the web server to the first IP address; inspecting an advertising feed targeted to the first IP address; inferring user data from the advertising feed; generating supplemental content according to the user data inferred from the advertising feed; and providing the supplemental content to the first IP address. REJECTIONS Claims 1—7 are rejected under 35 U.S.C. § 101 as directed to non- statutory subject matter. Claims 1—7 are rejected under 35 U.S.C. § 102(b) as anticipated by Ramer (US 2008/0214157 Al, pub. Sept. 4, 2008). ANALYSIS Non-statutory Subject Matter As an initial matter, we note that Appellants argue claim 1—7 together. Br. 5—6. We select claim 1 as being representative. Thus, claims 2—7 stand or fall with independent claim 1. See C.F.R. § 41.37(c)(l)(iv). 2 Appeal 2014-004389 Application 13/541,489 Subsequent to the filing of briefs in this appeal, the Supreme Court in Alice Corp. v. CLS Bank Int’l, 134 S. Ct. 2347 (2014), reiterated the framework set out previously 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, 134 S. Ct. at 2355. The first step in this analysis is to “determine whether the claims at issue are directed to one of those patent-ineligible concepts.” Id. (citation omitted). If so, in the second step, the elements of the claims “individually and ‘as an ordered combination”’ are considered to determine whether there are additional elements that “‘transform the nature of the claim’ into a patent- eligible application.” Id. (quoting Mayo, 132 S. Ct. at 1297, 1298). In other words, the second step is 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. (quoting Mayo, 132 S. Ct. at 1294). At step one “the court must identify the purpose of the claim—in other words, determine what the claimed invention is trying to achieve—and ask whether that purpose is abstract.” Enfish, LLC v. Microsoft Corp., 56 F.Supp.3d 1167, 1173 (C.D.Cal. 2014). Appellants’ Specification describes the invention as “relating] to capturing user data during user interaction with a website.” Spec. 12. The method of claim 1 comprises six steps: (a) receiving.. .a request for content, (b) delivering the requested content, (c) inspecting a targeted ad feed, (d) inferring user data from the ad feed, (e) generating content according to the inferred data, and (f) providing the content. The subject matter of claim 1, as reasonably broadly construed, is 3 Appeal 2014-004389 Application 13/541,489 drawn to a process of providing targeted advertisements to a web user. See e.g., Spec. 17 (“For example, a web-based e-mail provider can obtain keywords from the content of a user's e-mail or from the user's search queries for selecting targeted advertisements to display to that user.”). The idea underlying the invention in this case is akin to the similar ideas underlying the claims in recent court decisions such as TLI Communications (abstract idea of “classifying and storing digital images in an organized manner.”),3 Affinity Labs (abstract idea of “providing out-of-region access to regional broadcast content.”),4 Bascom (abstract idea of “filtering content on the internet.”),5 and Morsa (abstract idea of “targeting advertisements to certain consumers, and using a bidding system to determine when and how advertisements will be displayed.”).6 As such, we find that claim 1 is directed to the concept of targeted advertising, a patent- ineligible abstract idea which has been around as long as advertising itself. Turning to the second step in Alice, we consider whether there is an inventive concept, defined by an element or combination of elements in claim 1, which is significantly more than the abstract idea of targeted advertising. We conclude that there is no such inventive concept. In reviewing claim 1, we find it fails the “machine or transformation” test. Specifically, in analyzing claim 1, Appellants merely take the abstract 3 In re TLI Communications LLC Patent Litigation, 823 F.3d 607 (Fed. Cir. 2016). 4 Affinity Labs ofTXLLCv. DirecTV, LLC, 120 USPQ2d 1201 (Fed. Cir. 2016). 5 BASCOM Global Internet Services v. AT&T Mobility LLC, 827 F.3d 1341 (Fed. Cir. 2016). 6 Morsa v. Facebook, Inc., 622 F.App’x 915 (Fed. Cir. 2015). 4 Appeal 2014-004389 Application 13/541,489 idea identified above and apply it to a generic computer—in this case, a web server, which stores files read by browsers. The introduction of a generic element, such as a server, computer, or storage medium, into a method has been deemed insufficient by the Supreme Court to transform a patent- ineligible claim into one that is patent-eligible, and it fails to do so here as well. See Alice, 134 S. Ct. at 2358. Moreover, a general purpose computer, coupled with the internet, has been found to be a “ubiquitous, information- transmitting medium, not a novel machine,” thus failing the machine test. Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 716—17 (Fed. Cir. 2014). The functions performed by claim 1—receiving a request, delivering content, inspecting data, inferring data, generating supplemental content according to the inferred data, and providing the supplemental content—can all be performed by a generic computer. For instance, the Specification describes the inspecting step of claim 1 as keyword/database matching, and the inferring step as identifying user parameters associated with the keyword. Spec. 123. As with data matching, none of the recited steps of claim 1 perform anything beyond well understood, routine, and conventional activity. Claim 1 neither purports to improve the functioning of the web server, nor does it effect an improvement in any other technology or technical field nearing an “inventive concept.” The claim when viewed as whole is nothing more than performing conventional processing functions that courts have routinely found insignificant to transform an abstract idea into a patent-eligible invention. For the foregoing reasons, we sustain the rejection of claim 1 under 35 U.S.C. § 101, and claims 2—7, which fall with claim 1. 5 Appeal 2014-004389 Application 13/541,489 Anticipation We are persuaded by Appellants’ argument that the Examiner erred in rejecting independent claim 1 under 35 U.S.C. § 102(b) because Ramer does not disclose “inspecting an advertising feed targeted to the first IP address” and “inferring user data from the advertising feed,” as recited in claim 1 (Br. 6—13). The Examiner directs our attention to paragraphs 9, 154—158, 865—867, and 869-872 of Ramer (Ans. 5—6). But we find nothing in the cited paragraphs that discloses the argued limitations. Ramer is directed to a system and method for categorizing a mobile user profile based on the user’s browse behavior (Ramer | 3), and discloses that a category may be created, including a user profile, based at least in part on an association of mobile web browser activity and contextual information relating to a website, e.g., a link structure, an inbound link, an outbound link, a link, a text, a keyword, and the like {id. 19). Ramer discloses a syndication program in paragraphs 154—158, cited by the Examiner, where mobile content is added to a website when the website is presented to a mobile communication facility, e.g., a cell phone. And Ramer discloses that syndication of the mobile content to a website may be based, at least in part, on using contextual information associated with the website, e.g., keywords, terms or phrases located on the website, to determine the relevancy of the mobile content available for syndication and assign a relevancy score. For example, Ramer describes that in the case of mobile content, such as a ringtone download advertisement, “Entertainment” websites may receive a higher relevancy score than “Weather” websites {id. 1157). Ramer discloses in paragraphs 865—867 that an aspect of the disclosed method involves receiving a website request from a mobile communication 6 Appeal 2014-004389 Application 13/541,489 facility, e.g., a cell phone; receiving contextual information, e.g., keywords, relating to the requested website; associating the contextual information with mobile content; and displaying the mobile content with the website on the mobile communication facility. Ramer further discloses, in paragraphs 869— 872, that relevance between the contextual information and the mobile content may be related to a mobile subscriber characteristic (e.g., if a senior citizen requests a website for which contextual information includes the term “vacation,” the relevant mobile content may be an advertisement for a seniors’ cruise, not one for spring break in Cancun), the relationship between the contextual information and the mobile content (e.g., the degree of similarity or dissimilarity between the contextual information and the mobile content), or the relationship between stored contextual information and/or mobile content originating from a previous website request by the mobile subscriber. In sum, the cited portions of Ramer disclose a system and method for monitoring a user’s web browsing behavior, and then providing targeted advertisements based on that browsing behavior. Rather than inferring information about a user from an advertisement as claimed, Ramer determines what mobile content, e.g., advertisements, to present to a user visiting a website based on the relevance of the mobile content, e.g., advertisements, to contextual information, e.g., keywords, associated with the website. In other words, Ramer infers information about the user, e.g., the user’s interest in certain content, from the user’s browsing activity, and then provides targeted advertisements based on the inferred information. Although the Examiner contends otherwise, we find nothing in the cited portions of Ramer that discloses inferring user data from an 7 Appeal 2014-004389 Application 13/541,489 advertisement. In this regard, we fail to see how, and the Examiner does not adequately explain how, providing mobile content, e.g., advertisements, targeted to a user visiting a website based on the relevance of the mobile content to contextual information, e.g., keywords, associated with the website, as disclosed in the cited paragraphs of Ramer, constitutes “inspecting an advertising feed targeted to the first IP address” and “inferring user data from the advertising feed,” as called for in independent claim 1. In view of the foregoing, we do not sustain the Examiner’s rejection of independent claim 1 under 35 U.S.C. § 102(b). For the same reasons, we also do not sustain the rejection of claims 2—7, which depend from independent claim 1. DECISION The Examiner’s rejection of claims 1—7 under 35 U.S.C. § 101 is affirmed. The Examiner’s rejection of claims 1—7 under 35 U.S.C. § 102(b) is reversed. 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 8 Copy with citationCopy as parenthetical citation