Ex Parte Shkedi

Patent Trial and Appeal Board

Aug 30, 2018

12912726 (P.T.A.B. Aug. 30, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/912,726 10/26/2010 Roy Shkedi
26362 7590 09/04/2018
LOUIS J. HOFFMAN, P.C.
7689 East Paradise Lane
Suite 2
Scottsdale, AZ 85260
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.
14-BID-CON4 2607
EXAMINER
REINHARDT, RICHARD G
ART UNIT PAPER NUMBER
3682
NOTIFICATION DATE DELIVERY MODE
09/04/2018 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):
Louis@valuablepatents.com
donald@valuablepatents.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ROY SHKEDI
Appeal 2016-008150
Application 12/912,726
Technology Center 3600
Before MURRIEL E. CRAWFORD, ROBERT J. SILVERMAN, and
ALYSSA A. FINAMORE, Administrative Patent Judges.
CRAWFORD, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant1 seeks our review under 35 U.S.C. § 134 of the Examiner's
final decision rejecting claims 63-86. We have jurisdiction over the appeal
under 35 U.S.C. § 6(b ).
BACKGROUND
Appellant's invention is directed to a method for transacting an
advertisement transfer. Spec. 1
1 Appellant identifies AlmondNet, Inc. as the real party in interest. App. Br.
1.
Appeal 2016-008150
Application 12/912,726
Claim 63 is illustrative:
63. A method for automatically deciding how to fill ad
space by presenting electronic advertisements while a visitor is
in contact with a communications node, the method comprising:
upon a visitor visiting a communications node,
electronically and automatically and individually for that
visitor, with at least one Internet-connected computer:
(a) obtaining a profile of the visitor, which
profile contains attribute data identifying various attributes
believed to be associated with the visitor;
(b) accessing an electronic storage device
containing stored data derived from a plurality of pre-collected
bids, the bids being for delivery of an associated electronic
advertisement to a visitor visiting the communications node, the
bids having multiple parts including:
(i) a base offer price for cases where a
visitor to the communications node has a subset of attributes
whose values are consistent with specified values of a base,
required set of bid attributes, and
(ii) at least one supplemental offer price
for cases where the visitor has an additional attribute whose
value is consistent with a specified value of an additional,
optional bid attribute;
( c) using the stored data, of those bids for which
the visitor's profile contains attribute data consistent with the
values specified in the bid for each of the base, required bid
attributes, identifying at least one of the bids based on the total
value of:
(i) the base offer price, and
(ii) the sum of all of the supplemental
offer prices for which the visitor's profile contains attribute data
that is consistent with the specified value of the additional,
optional bid attribute;
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Application 12/912,726
( d) delivering to the visitor the electronic
advertisement associated with each of said at least one bid
identified in part ( c ); and
( e) for each of said at least one bid identified in
part ( c ), recording electronic billing data identifying the
delivered advertisement and a price to be paid as a result of
delivery to the visitor of the advertisement, which price does
not exceed a maximum price derived from said at least one bid
identified in part ( c ).
Appellant appeals the following rejections:
1. Claims 63-86 are rejected under 35 U.S.C. § 101 because the
claimed invention is directed to a judicial exception (i.e. a law of nature, a
natural phenomenon, or an abstract idea) without significantly more. Final
Act. 2---6.
2. Claims 63, 67, 68, 70, 72, 76, and 78 are rejected under 35
U.S.C. § 102(e) as being anticipated by Hanson et al. (US 5,974,398; issued
Oct. 26, 1999). Final Act. 6-12.
3. Claims 64, 65, 73, 74, and 84--86 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Hanson in view of Brett et al. (US
6,023,685, issued Feb. 8, 2000). Final Act. 12-14.
4. Claims 66, 71, 75, and 77 are rejected under 35 U.S.C. § 103(a)
as being unpatentable over Hanson in view of Official Notice. Final Act.
14--15.
5. Claim 69 is rejected under 35 U.S.C. § 103(a) as being
unpatentable over Hanson in view of Meisel et al. (US 7,035,812 B2; issued
Apr. 25, 2006). Final Act. 16.
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Application 12/912,726
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) (quoting Ass 'nfor Molecular Pathology v. Myriad Genetics
Inc., 569 U.S. 576, 589 (2013)).
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--95 (1978)
(Respondent's "application simply provided a new and presumably better
method for calculating alarm limit values."); Gottschalk v. Benson, 409 U.S.
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Application 12/912,726
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.
In addition, the Federal Circuit has held that if a method can be
performed by human thought alone, or by a human using pen and paper, it is
merely an abstract idea and is not patent-eligible under § 101. CyberSource
Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1373 (Fed. Cir. 2011) ("[A]
method that can be performed by human thought alone is merely an abstract
idea and is not patent-eligible under§ 101.").
Claims involving 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
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Application 12/912,726
displaying certain results of the collection and analysis" are "a farniliar class
of claims 'directed to' a patent ineligible concept"); see also In re TL!
Commc '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.
2016).
Claims that recite an improvement to a particular computer
technology have been held patent eligible. See, e.g., McRO, Inc. v. Bandai
Namco Games Am. Inc., 837 F.3d 1299, 1314--15 (Fed. Cir. 2016)
(determining claims not abstract because they "focused on a specific
asserted improvement in computer animation").
ANALYSIS
Rejection under 35 USC§ 101
The Examiner determines that the claims are directed to presenting
electronic advertisements to a visitor, conducting an auction and performing
accounting functions which are fundamental economic practices. Final Act.
3.
The Examiner also determines that the case of SmartGene Inc. v.
Advanced Biological Laboratories, SA, 555 F. App'x 950 (Fed. Cir. 2014)
(non-precedential) and the case of Cybeifone Systems, LLC v. CNN
Interactive Group, Inc., 558 F. App'x 988, 992 (Fed. Cir. 2014) are relevant
to the claims on appeal. Ans. 17. We agree. The steps of claim 63, for
example, comprise collecting data ( obtaining a profile of a visitor and
accessing stored pre-collected bids), analyzing data (identifying bids based
on total value), and transmitting or displaying data ( delivering one bid). As
such, the claims are similar to the SmartGene claims that compare new and
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Application 12/912,726
stored information and using rules to identify options and to the Cyberfone
claims which use categories to organize, store and transmit information. As
we stated above, the Federal Circuit has made it clear that claims that
involve data collection, analysis, and display are directed to an abstract idea.
Elec. Power Grp., 830 F.3d at 1353.
Therefore, we agree with the Examiner that the claims are directed to
an abstract idea.
The only recitations in claim 63 that are not included in the collection,
analysis and display of data are a communication node, at least one Internet-
connected computer and an electronic storage device. The Examiner finds
that there is no improvement to another technology or technical field such as
improving the processing speed of the computer processor and no
meaningful limitations beyond generally linking the use of the abstract idea
to a particular technical environment. Final Act. 4. The Examiner also finds
that the claims require no more than a generic computer to perform generic
computer functions that are well-understood, routine and conventional. Id.
This finding of the Examiner is supported by Appellant's Specification that
discloses that the computer of the instant invention is of a type which is
today normally connected to the Internet indicating that the computer is a
general purpose computer. Spec. 28. We agree with the Examiner that the
claims do not amount to significantly more than the abstract idea of
collecting, analyzing and displaying data.
We have reviewed all the arguments Appellant has submitted
concerning the patent eligibility of the claims before us which stand rejected
under 35 U.S.C. § 101. We find that our analysis above substantially covers
the substance of all the arguments which have been made. But for purposes
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Application 12/912,726
of completeness, we will address various arguments in order to make
individual rebuttals of same.
We are not persuaded of error on the part of the Examiner by
Appellant's argument that the Examiner determined that the claims are
direct to three abstract ideas instead of one. App. Br. 20. In this regard, the
Appellant directs our attention to the determination of the Examiner that the
claims are directed to presenting advertisements, comparing tenders and
performing accounting functions and argues that a claim cannot be directed
to three abstract ideas. As in Alice Corp. Pty. Ltd., we need not labor to
delimit the precise contours of the "abstract ideas" category in this case. See
Alice Corp. Pty. Ltd., 134 S. Ct. at 2357. It is enough to recognize that there
is no meaningful distinction in the level of abstraction between the concept
of an intermediated settlement in Alice and the concepts of presenting
advertisements, comparing tenders and performing accounting functions.
Both are squarely within the realm of "abstract ideas" as the Court has used
that term. In addition, the determination that a claim is directed to multiple
abstract ideas does not necessarily evidence a failure to consider the claims
as a whole or a failure to consider the limitations of the claims both
individually and in combination. See FairWarning IP, LLC, 839 F.3d at
1093-94 ("Here, the claims are directed to a combination of these abstract-
idea categories."); see also RecogniCorp, LLC v. Nintendo Co., Ltd., 855
F.3d 1322, 1327 (Fed. Cir. 2017) (holding the claims directed to multiple
abstract ideas). A claim reciting multiple exceptions is directed to at least
one judicial exception regardless of whether the multiple exceptions are
distinct from each other, and thus must be further analyzed. See, e.g.,
RecogniCorp, 855 F.Jd at 1326-27 (claim reciting multiple abstract ideas,
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Application 12/912,726
i.e., the manipulation of infonnation through a series of mental steps and a
rnathematica1 caku1ation, was held directed to an abstract idea and thus
subjected to further analysis in part two of the ,;Uice!lviayo test).
We are not persuaded of error on the part of the Examiner by
Appellant's arguments that the claims are not directed to an fundamental
economic practice, a method of organizing human activities and have no
direct analog in manual advertising because even if the Appellant is correct,
the claims are clearly directed to the collection, analysis and display of data
and are directed to an abstract idea on that basis. App. Br. 22-27.
The Appellant argues that the claims require more than a generic
computer to perform generic computer functions; however, the Appellant
does not explain this argument. While the Appellant may be correct that
programming a generic computer can never be significantly more than an
abstract idea, the Appellant does not explain why the computer and storage
device recited in claim 63 is significantly more than the abstract idea of
collecting, analyzing and displaying data.
We do not agree with the Appellant that the recitation of multi-part
bids is more than the abstract idea because multi-part bids are part of the
data that is collected, analyzed and displayed and thus are part of the abstract
idea itself.
We have reviewed the Declaration of Dr. Michael Shamos but do not
find it persuasive of error on the part of the Examiner in rejecting the claims
under 35 U.S.C. §101. Dr. Shamos states in ,r 22, that claim 63 recites a
specific method of conducting a particular type of novel bid tender that
results in a choice of at least one advertisement, and Appellant maintains
that the limitations of claim 63 necessarily amount to "significantly more"
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than an abstract idea because the claimed apparatus is allegedly patentable
over the prior art. Appellant misapprehends the controlling precedent.
Although the second step in the AlicelAIIayo framework is tenned a search
for an "inventive concept," the analysis is not an evaluation of novelty or
non-obviousness, but rather, a search for "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"' Alice,
134 S. Ct. at 2355. A novel and nonobvious claim directed to a purely
abstract idea is, nonetheless, patent ineligible. See Mayo, 132 S. Ct. at 1304.
We do not agree with the statement in ,r 31 of the Declaration that
claim 63 contains a number of material limitations that amount to
significantly more than the abstract idea. Dr. Shamos declares that
evaluating bid tenders by determining which of multiple desirable attributes
a visitor exhibits and evaluating such bids based on the value of base and
supplemental prices for matching attributes are some of these material
limitations. However, these steps of the claim are part of the abstract idea,
i.e., they relate to the collection and analysis of data and as such cannot
amount to significantly more than the abstract idea.
In view of the foregoing, we will sustain this rejection as it is directed
to claim 63. We will sustain this rejection as it is directed to the remaining
claims for the same reasons.
Reiections under 35 US.C. §§ 102 and 103
We will not sustain the prior art rejections because in each of the
rejections the Examiner relies on Hanson for teaching bids having multiple
parts including a base offer price for a visitor with a subset of attributes and
a supplemental offer price for a visitor with an additional attribute.
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Claim 63 recites in one step "obtaining a profile of the visitor, which
profile contains attribute data identifying various attributes believed to be
associated with the visitor." Claim 63 also recites "bids having multiple
parts including" a "base offer price where a visitor ... has a subset of
attributes" and a "supplemental offer price for cases where the visitor has an
additional attribute." Appellant's Specification discloses that the attributes
could be key words that classify the content the visitor requested or is
watching, the visitor's IP address, geographical location of the visitor's
company or organization, etc. Spec., page 8, 1. 32-page 9, 1. 7. The
attributes may also be the visitor's history in the site. Spec., page 9, 11. 18-
21. They may also be demographic information including gender, age,
annual household income; gender, age and status of household members;
occupation; hobbies; etc. Spec., page 9, 11. 22-25. As such, the attributes
recited in claim 63 are attributes related to the visitor or as is recited in claim
63 attributes "associated" with the visitor.
The Examiner relies on Hanson at column 8, lines 8-23 for teaching
this subject matter. Hanson discloses here that a bid price may vary
according to whether the user is interested in tennis, for example, but may
also have a supplemental price for the user that starts reading an e-mail
posting on the tennis bulletin board. As such, the Examiner reasons that
whether the user starts reading an e-mail posting is an additional attribute of
the user as recited in claim 63. We agree with the Appellant that whether a
user reads an e-mail posting is not an attribute of the user and certainly not
an attribute associated with the user as disclosed in Appellant's
Specification. Therefore, we will not sustain the rejection of claim 63 under
35 U.S.C. § 102(e).
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We will not sustain this rejection as it is directed to claims 67, 68, 70,
72, 76 and 78 for the same reason.
We will also not sustain the rejections under 35 U.S.C. § 103 because
the Examiner relies on Hanson for teaching the subject matter we have
found lacking in Hanson.
DECISION
We affirm the Examiner's§ 101 rejection.
We do not affirm the Examiner's§ 102(e) and§ 103(a) rejections.
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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