Ex Parte Swanson

Patent Trial and Appeal Board

Feb 28, 2018

12315688 (P.T.A.B. Feb. 28, 2018)

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.
12/315,688 12/05/2008 Daniel R. Swanson SR. 2938.001US1 3202
21186 7590 03/02/2018
SCHWEGMAN LUNDBERG & WOESSNER, P.A.
P.O. BOX 2938
MINNEAPOLIS, MN 55402
EXAMINER
BUSCH, CHRISTOPHER CONRAD
ART UNIT PAPER NUMBER
3681
NOTIFICATION DATE DELIVERY MODE
03/02/2018 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):
uspto@slwip.com
SLW @blackhillsip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DANIEL R. SWANSON SR.
Appeal 2016-006109
Application 12/315,688
Technology Center 3600
Before ST. JOHN COURTENAY III, LARRY J. HUME,
and NORMAN H. BEAMER, Administrative Patent Judges.
BEAMER, Administrative Patent Judge.
DECISION ON REQUEST FOR REHEARING
On February 14, 2018, Appellant filed a Request for Rehearing
(“Request”) under 37 C.F.R. § 41.52 from the Decision on Appeal
(“Decision”) of the Patent Trial and Appeal Board (“Board”), mailed
December 21, 2017. In the Decision, we affirmed the Examiner’s rejection
of claims 1—10, 17—19, and 22—29 as directed to patent-ineligible subject
matter under 35 U.S.C. § 101.
In the Request, Appellant cites Berkheimer v. HP Inc., No. 2017-1437
2018 WL 774096 (Fed. Cir. Feb. 8, 2018), for the proposition that the Board
must meet “the clear and convincing standard required by the Federal
Circuit.” (Request 3^4.) Not so — Berkheimer is a District Court summary
judgement case, and the discussion therein of the burden of proof required to
prove that a patent claim is invalid before the court is inapplicable to this
Appeal 2016-006109
Application 12/315,688
Appeal. On appeal to the Federal Circuit, the Board’s review of the
Examiner’s factual findings underlying questions of law is subject to the
deferential “substantial evidence” standard of review accorded to agency
findings of fact. In re Antor Media Corp., 689 F.3d 1282, 1287 (Fed.
Cir. 2012); MPEP § 2144.03 (9th ed. Rev. 08.2017, Jan. 2018).
However, whether a patent claim is directed to patent-eligible subject
matter is a question of law that is reviewed de novo by the Federal Circuit
without deference. See Prometheus Laboratories, Inc. v. Mayo
Collaborative Services, 628 F.3d 1347, 1353 (Fed. Cir. 2010)(citation
omitted). “Patent eligibility under § 101 presents an issue of law.”
Accenture Glob. Servs., GmbHv. Guidewire Software, Inc., 728 F.3d 1336,
1340 (Fed. Cir. 2013).
For appeals before the Board from an Examiner’s adverse action,
“[t]he default evidentiary standard is a preponderance of the evidence.” 37
C.F.R. § 42.1(d). Thus, “clear and convincing” and “substantial evidence”
are standards of review applied by the Federal Circuit and are inapplicable
with respect to our review of the record before the Examiner, which is based
upon a preponderance of the evidence.
We are not persuaded the Examiner’s findings lack support, and
certainly the attorney arguments offered by Appellant do not raise any
legitimate factual issues. In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir.
1997); In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984).
Appellant also challenges the Board’s agreement with the Examiner’s
characterization of the claims as directed to the abstract idea of “assigning
values to ads based on customer response/feedback.” (Request 5.)
Appellant would characterize the claims as “rifle shot targeting”:
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Application 12/315,688
The rifle shot targeting is a specific modification of
content to include only ads for which a user has expressly
indicated characteristic preferences. The modification of
content includes the ads in the content in locations based on a
valuation of the ads that is determined on an individual basis.
That is, a same ad is valued differently for users with different
expressly indicated characteristic preferences. Systems and
methods provide same content, viewed by users with different
expressly indicated characteristic preference with different
modifications.
(Request 2.) This alternative characterization of the claims is itself an
abstract idea, and is merely a more detailed description of the abstract idea
reasonably summarized by the Examiner’s characterization. Appellant
argues the various details underlying the abstract idea of the claims as
summarized in the Decision — such as “distribution of content to individual
customers,” “obtaining an indication when the content is being viewed,”
“inserting advertisements into the media content,” “providing required
valuation by a provider of the distributed content,” “inserting different
advertisements when a different customer is viewing,” and “recording
advertisement. . . placement decisions in a database” — have “a very
tenuous relation to ‘assigning values to ads based on customer/response
feedback’ at best.” (Request 6.) However, we are not persuaded that this is
so. For example, “obtaining an indication when the content is being
viewed,” is one conventional aspect of obtaining customer feedback.
Therefore, we remain of the opinion that the first step of the Alice analysis
leads here to a conclusion that the subject matter of the claims is directed to
an abstract idea.
Appellant emphasizes that the claims have not been determined
obvious over the prior art cited by the Examiner. (Request 8.) However, the
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Application 12/315,688
Supreme Court emphasizes: “[t]he ‘novelty’ of any element or steps in a
process, or even of the process itself, is of no relevance in determining
whether the subject matter of a claim falls within the § 101 categories of
possibly patentable subject matter.” Diamond v. Diehr, 450 U.S. 175, 188—
89 (1981) (emphasis added). Our reviewing court further guides that
“[ejligibility and novelty are separate inquiries.” Two-Way Media Ltd. v.
Comcast Cable Commc’ns, LLC, 874 F.3d 1329, 1340 (Fed. Cir. 2017); see
also Affinity Labs of Tex., LLCv. DIRECTV, LLC, 838 F.3d 1253, 1263
(Fed. Cir. 2016) (holding that “[ejven assuming” that a particular claimed
feature was novel does not “avoid the problem of abstractness”).
Indeed, as pointed out in the Decision, the cited art provides evidence
that the “rifle-shot” targeting idea that the claims purport to embody was a
conventional business practice when the Application was filed. (See
Decision 9.)
Appellant further challenges the Board’s affirmance of the Examiner’s
findings as to the second step of the Alice analysis. (Request 9-11.) In
particular, Appellant argues the “three separate entities” covered by the
claims — “input apparatus,” “content provider device,” and “advertisement
tailoring system” — adds significantly more to the claims than an abstract
idea. (Request 9, 10.) But the Specification explains that the input
apparatus includes “television or set-top TV box remote controls, satellite
remote controls, cell phones, telephones, Personal Digital Assistants, or any
other wireless or wired device that has the ability to make selections and link
to a network”; the content provider device is simply a television or radio,
and the advertisement tailoring system is a properly programmed general
purpose computer. (Spec. Figs. 1,3,4, 19, H 45, 59, 106.) We are not
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Application 12/315,688
persuaded of error in finding the use of these “entities” are “well-
understood, routine, conventional activities].’” (Decision 11.)
Finally, Appellant argues our reliance on Electric Power Group, LLC
v. Alstom S.A., 830 F.3d 1350 (Fed. Cir. 2016) is misplaced. (Request 11—
12.) However, we remain of the view that the data gathering, analyzing, and
displaying of information recited in the claims here are analogous to the
corresponding activities of Electric Power.
In sum, we find none of Appellant’s arguments are persuasive that our
Decision was in error. We have reconsidered our Decision, but decline to
grant the relief requested.
DECISION
In view of the foregoing discussion, we have granted Appellant’s
Request to the extent that we have reconsidered the original Decision, but
have denied it with respect to making any changes to the Decision.
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).
REHEARING DENIED
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