Ex Parte Tischer

Patent Trial and Appeal Board

Jul 6, 2017

11638273 (P.T.A.B. Jul. 6, 2017)

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.
060485 3304
EXAMINER
IOSIF, MARIO CINCINAT
ART UNIT PAPER NUMBER
3622
MAIL DATE DELIVERY MODE
11/638,273 12/13/2006
38516 7590 07/07/2017
AT&T Legal Department - SZ
Attn: Patent Docketing
Room 2A-207
One AT&T Way
Bedminster, NJ 07921
Steven N. Tischer
07/07/2017 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 STEVEN N. TISCHER
Appeal 2016-001799
Application 11/638,2731
Technology Center 3600
Before MICHAEL J. STRAUSS, MICHAEL M. BARRY, and
MICHAEL J. ENGLE, Administrative Patent Judges.
ENGLE, Administrative Patent Judge.
DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from a final rejection of
claims 1,3,8, 10, 12, 14, 19, and 21, which are all of the claims pending in
the application. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
Technology
The application relates to an “auction” for “an advertisement time
slot.” Spec. Abstract.
Illustrative Claim
Claim 1 is illustrative and reproduced below with certain disputed
limitations emphasized:
1 According to Appellant, the real party in interest is AT&T Intellectual
Property I, L.P. App. Br. 3.
Appeal 2016-001799
Application 11/638,273
1. A method of managing an advertisement time slot,
comprising:
receiving, at a server, a scheduled lineup of digital
programming content having an advertisement fixed into the
advertisement time slot, the scheduled lineup of digital
programming content scheduled for broadcast;
receiving, by the server, a categorization of the
advertisement time slot as one of overrideable and non-
overrideable, an overrideable categorization allowing the
advertisement to be replaced in the advertisement time slot with
a different advertisement, and a non-overrideable categorization
not allowing replacement of the advertisement in the scheduled
lineup of digital programming content, such that the
advertisement is electronically transmitted in the advertisement
time slot during the broadcast;
conducting, by the server, an online auction for the
advertisement time slot;
sending, by the server, rating information to different
advertisers that describes a popularity of content associated with
the advertisement time slot;
determining, by the server, a winning bid from a winning
advertiser of the different advertisers;
determining, by the server, that the winning advertiser
categorized the advertisement time slot as being of the
overrideable categorization;
associating, by the server, the advertisement time slot to
multiple advertisements of the winning advertiser,
replacing, by the server, the advertisement in the
scheduled lineup with one of the multiple advertisements of the
winning advertiser; and
broadcasting, from the server, an overridden lineup having
one of the multiple advertisements of the winning advertiser
inserted into the advertisement time slot.
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Application 11/638,273
Rejections
Claims 1, 3, 8, 10, 12, 14, 19, and 21 stand rejected under 35 U.S.C.
§ 101 as being directed to ineligible subject matter. Final Act. 2—3.
Claims 1, 3, 8, 10, 12, 14, 19, and 21 stand rejected under 35 U.S.C.
§ 103(a) as obvious over the combination of Kitayama et al. (US
2002/0169709 Al; Nov. 14, 2002), Bykowsky et al. (US 2002/0013757 Al;
Jan. 31, 2002), and Whymark (US 2004/0015400 Al; Jan. 22, 2004). Final
Act. 4—8.
ISSUES
1. Did the Examiner err in concluding claim 1 is directed to
ineligible subject matter under § 101?
2. Did the Examiner err in finding the combination of Kitayama,
Bykowsky, and Whymark teaches or suggests “associating, by the server,
the advertisement time slot to multiple advertisements of the winning
advertiser,” as recited in claim 1?
ANALYSIS
Subject Matter (§101)
Section 101 defines patentable subject matter: “Whoever invents or
discovers any new and useful process, machine, manufacture, or
composition of matter, or any new and useful improvement thereof, may
obtain a patent therefor, subject to the conditions and requirements of this
title.” 35 U.S.C. § 101. The Supreme Court, however, has “long held that
this provision contains an important implicit exception” that “[ljaws of
nature, natural phenomena, and abstract ideas are not patentable.” Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 70 (2012)
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Application 11/638,273
(quotation omitted). To determine patentable subject matter, the Supreme
Court has set forth a two-part test. Alice Corp. v. CLS Banklnt’l, 134 S. Ct.
2347, 2355 (2014).
A) Step One of the §101 Analysis
“First, we determine whether the claims at issue are directed to one of
those patent-ineligible concepts” of “laws of nature, natural phenomena, and
abstract ideas.” Alice, 134 S. Ct. at 2355. A court must be cognizant that
“all inventions at some level embody, use, reflect, rest upon, or apply laws
of nature, natural phenomena, or abstract ideas” {Mayo, 566 U.S. at 71), and
“describing the claims at... a high level of abstraction and untethered from
the language of the claims all but ensures that the exceptions to § 101
swallow the rule.” Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1337
(Fed. Cir. 2016). Instead, “the claims are considered in their entirety to
ascertain whether their character as a whole is directed to excluded subject
matter.” Internet Patents Corp. v. Active Network, Inc., 790 F.3d 1343,
1346 (Fed. Cir. 2015).
The Examiner concludes “the claims are directed towards a processor-
implemented method ... of managing an advertisement time slot using an
auction model, which represents an abstract idea inasmuch as such activity is
considered a method of organizing human activity and/or a fundamental
economic practice of advertising.” Ans. 4.
Appellant argues “the Examiner puts forth no evidence to support the
prima facie case.” App. Br. 8. We are not persuaded by Appellant’s
argument. “Issues of patent-eligible subject matter are questions of law and
are reviewed without deference.” CyberSource Corp. v. Retail Decisions,
Inc., 654 F.3d 1366, 1369 (Fed. Cir. 2011).
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Application 11/638,273
Here, auctions and advertising—and even auctioning for ad slots—are
each “a fundamental economic practice long prevalent in our system of
commerce” and “a building block of the modem economy.” Ans. 4—5; Final
Act. 3; Alice, 134 S. Ct. at 2356. Indeed, the Federal Circuit has found
various forms of advertising were directed to an abstract idea in at least two
precedential cases. Intellectual Ventures ILLC v. Capital One Bank (USA),
792 F.3d 1363, 1370 (Fed. Cir. 2015) (tailoring of advertisements);
Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 714—15 (Fed. Cir. 2014)
(“using advertising as an exchange or currency”). Similarly, in at least one
case, the Federal Circuit affirmed under Rule 36 the PTAB’s conclusion that
claims related to a reverse auction were directed to an abstract idea.
America’s Collectibles Network, Inc. v. Jewelry Channel, Inc. USA, 672 F.
App’x 997 (Fed. Cir. 2017) (unpublished), aff’ingper curiam, 2014 WL
5386840, at *11 (PTAB Oct. 20, 2014); see also Ans. 4—6 (analogizing the
present application to other cases). The background section of the
Specification also explains that advertising has been conventional and
routine at least as far back as the radio. Spec. 4, 6, 15. Moreover, the
Federal Circuit has held that “[ajdding one abstract idea ... to another
abstract idea . . . does not render the claim non-abstract.” RecogniCorp,
LLCv. Nintendo Co., Ltd., 855 F.3d 1322, 1327 (Fed. Cir. 2017). Thus, the
combination of an auction for advertising, without more, is directed to an
abstract idea.
Appellant is incorrect that the Examiner must apply some “required
preemption analysis” beyond the Alice!Mayo framework. Reply Br. 7.
“While preemption may signal patent ineligible subject matter, the absence
of complete preemption does not demonstrate patent eligibility.” Ariosa
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Application 11/638,273
Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015).
“Where a patent’s claims are deemed only to disclose patent ineligible
subject matter under the Mayo framework, as they are in this case,
preemption concerns are fully addressed and made moot.” Id.
Thus, Appellant has not persuaded us that the Examiner erred in
determining the claims were directed to an abstract idea.
B) Step Two of the §101 Analysis
In the second step, we “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.” Alice, 134 S. Ct. at 2355 (quoting Mayo, 566 U.S. at 78). The
Supreme Court has “described step two of this analysis as 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. (quotation omitted).
Appellant argues that the claims recite “significantly more” than an
abstract idea because three limitations are “not taught or suggested by the
cited [prior art] documents.” App. Br. 9. The requirements for patentable
subject matter in § 101, however, are distinct from the requirements of
novelty in § 102 and non-obviousness in § 103. For example, “under the
Mayo!Alice framework, a claim directed to a newly discovered law of nature
(or natural phenomenon or abstract idea) cannot rely on the novelty of that
discovery for the inventive concept necessary for patent eligibility.” Genetic
Techs. Ltd. v. MenialL.L.C., 818 F.3d 1369, 1376 (Fed. Cir. 2016);
Diamond v. Diehr, 450 U.S. 175, 188—89 (1981).
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Application 11/638,273
Appellant further contends “these heretofore-unknown features
persuasively indicate an ‘improvement’ in multiple ‘technical field[s]’ of
content delivery, targeted advertising, and dynamic auctioning.” App. Br.
11. We agree with the Examiner, however, that the claimed components and
steps constitute “a generic computer performing generic functions.” Ans. 6—
7. Although the claims recite the steps are performed at, by, or from “a
server,” the Federal Circuit has “repeatedly held that such invocations of
computers and networks that are not even arguably inventive are insufficient
to pass the test of an inventive concept in the application of an abstract
idea.” Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1355 (Fed.
Cir. 2016) (quotation omitted). This is because “with the exception of
generic computer-implemented steps, there is nothing in the claims
themselves that foreclose them from being performed by a human, mentally
or with pen and paper.” Intellectual Ventures I LLC v. Symantec Corp., 838
F.3d 1307, 1318 (Fed. Cir. 2016). Any “improvements” identified by
Appellant are to the abstract idea of auctioning an ad slot, not to the
computer itself. Thus, unlike DDR Holdings, LLC v. Hotels.com, L.P., 773
F.3d 1245, 1257 (Fed. Cir. 2014), neither the problem nor the solution is
“rooted in computer technology.”
Moreover, Appellant has not sufficiently explained how any of the
alleged “improvements” actually add significantly more than the abstract
idea. For example, Appellant points to an initial ad being “fixed” into the
time slot. App. Br. 11. But as the Examiner correctly points out, other than
being replaced by a new ad, “[t]he initial advertisement is not required and is
not used in the claimed method” and “[tjhere is nothing in the claim teaching
that the presence of an advertisement initially fixed to an ad spot alters in
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Application 11/638,273
any way this [ad placement] functionality.” Ans. 9. The same is true for
associating the ad slot “to multiple advertisements of the winning
advertiser.” App. Br. 11. The only use of the multiple ads in claim 1 is to
put one in the scheduled lineup, so it is unclear how the multiple ads add
significantly more than the abstract idea. Conclusory attorney argument,
without more, is insufficient. See, e.g., In re Pearson, 494 F.2d 1399, 1405
(CCPA 1974).
Accordingly, we sustain the Examiner’s § 101 rejection of claim 1,
and claims 3,8, 10, 12, 14, 19, and 21, which Appellant argues are
patentable for similar reasons. See App. Br. 8—11; 37 C.F.R.
§ 41.37(c)(l)(iv).
Obviousness (§103)
Claim 1 recites “associating, by the server, the advertisement time slot
to multiple advertisements of the winning advertiser.” Independent claims
14 and 21 recite commensurate limitations.
The Examiner finds Whymark teaches “an advertisement
identification (e.g., ISCI code)” and “an advertiser can edit or revise (e.g.,
override) any record in the booking details of a previously placed buy order
. . . including a particular ISCI code.” Ans. 3. “[I]t is inherent that there are
other ISCI codes (multiple advertisements) to replace the original
advertisement with.” Id.
Although we agree with the Examiner that a person of ordinary skill
in the art would know something about the art apart from what the
references disclose (Ans. 14), that it is inherent that any of multiple
advertisements could replace the original advertisement (Ans. 3), and that
those multiple advertisements could be from the winning advertiser, the
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Application 11/638,273
Examiner has not sufficiently explained how Whymark teaches or suggests
associating the ad slot to multiple ads of the winning advertiser. See App.
Br. 15—16. At most, the ad slot in Whymark appears to be associated with
only one ad at a time.
Accordingly, we are constrained to reverse the Examiner’s
obviousness rejection of independent claims 1, 14, and 21, and their
dependent claims 3, 8, 10, 12, and 19.
DECISION
For the reasons above, we affirm the Examiner’s decision rejecting
claims 1, 3, 8, 10, 12, 14, 19, and 21 under § 101, but reverse the Examiner’s
decision rejecting claims 1,3,8, 10, 12, 14, 19, and 21 under § 103.
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.
§ 41.50(f).
AFFIRMED
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