Ex Parte Wills et al

Patent Trial and Appeal Board

May 9, 2017

13854861 (P.T.A.B. May. 9, 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.
13/854,861 04/01/2013 Anthony Joseph Wills 08011.3051-01000 6987
100692 7590
AOL Inc./Finnegan
901 New York Ave., NW
Washington, DC 20001
05/11/2017 EXAMINER
POE, KEVIN T
ART UNIT PAPER NUMBER
3692
NOTIFICATION DATE DELIVERY MODE
05/11/2017 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):
regional-desk @ finnegan. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ANTHONY JOSEPH WILLS,
JOSEPH AMEDEO FORTUNA JR., MICHAEL FISHER,
YIGAL BEN EFRAIM, TAMI COHEN, and TEDDY JAWDE
Appeal 2015-0071961
Application 13/854,8612
Technology Center 3600
Before: MURRIEL E. CRAWFORD, TARA L. HUTCHINGS, and
MATTHEW S. MEYERS, Administrative Patent Judges.
MEYERS, 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 26-45. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM.
1 Our decision references Appellants’ Appeal Brief (“Appeal Br.,” filed
November 17, 2014) and Reply Brief (“Reply Br.,” filed July 27, 2015), the
Examiner’s Answer (“Ans.,” mailed May 27, 2015), and Final Office Action
(“Final Act.,” mailed June 16, 2014).
2 Appellants identify Advertising.com LLC as the real party in interest
(Appeal Br. 3).
Appeal 2015-007196
Application 13/854,861
CLAIMED INVENTION
Appellants’ claims relate to a system “for selling one or more
advertisements and displaying the one or more advertisements in a fixed
placement for a duration of time on a web page within an Internet website in
combination with displaying advertisements from the same advertiser in
contextually relevant locations within the website” (Spec. 11).
Claims 26, 36, and 45 are the independent claims on appeal. Claim
26, reproduced below, with added bracketed notations and paragraphing, is
illustrative of the subject matter on appeal:
26. A computer-implemented method, comprising:
[a] receiving a request for advertising content, the request
comprising a selection criterion associated with a web page;
[b] identifying, in response to the request, a plurality of
advertisements associated with an advertiser;
[c] obtaining contextual information identifying a
relevance of the identified advertisements to content within the
web page; and
[d] selecting, using at least one processor, a first one of the
advertisements for display at a predetermined location within the
web page, and a second one of the advertisements for display at
a location within the web page associated with a portion of the
content that is relevant to the second advertisement, the selection
being based on the selection criterion and the contextual
information.
REJECTIONS
Claims 26-45 are rejected under 35 U.S.C. § 101 as being directed to
non-statutory subject matter.3
3 The Examiner entered this rejection as a NEW GROUNDS OF
REJECTION in the Answer (see Ans. 10—12).
2
Appeal 2015-007196
Application 13/854,861
Claims 26-45 are rejected on the ground of non-statutory obvious-
type double patenting as being unpatentable over claims 1—25 of
Mazzochette (US 8,571,412 B2, iss. Oct. 29, 2013).
Claims 26-45 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Dean (US 2004/0059708 Al, pub. Mar. 25, 2004) and Whittaker (US
2006/0041638 Al, pub. Feb. 23, 2006).
ANALYSIS
Non-Statutory Subject Matter
Appellants argue claims 26-45 as a group (see Reply Br. 2—8). We
select claim 26 as representative. Claims 27-45 stand or fall with claim 26.
See 37 C.F.R. § 41.37(c)(l)(iv).
Under 35 U.S.C. § 101, a patent may be obtained for “any new and
useful process, machine, manufacture, or composition of matter, or any new
and useful improvement thereof.” The Supreme Court has “long held that
this provision contains an important implicit exception: Laws of nature,
natural phenomena, and abstract ideas are not patentable” (see Alice Corp.
Pty. Ltd. v. CLS Bank Inti, 134 S.Ct. 2347, 2354 (2014) (citing Ass ’n for
Molecular Pathology v. Myriad Genetics, Inc., 133 S.Ct. 2107, 2116
(2013))).
The Supreme Court in Alice reiterated the two-step framework, set
forth previously in Mayo Collaborative Services v. Prometheus Labs., Inc.,
132 S.Ct. 1289, 1300 (2012), “for distinguishing patents that claim laws of
nature, natural phenomena, and abstract ideas from those that claim patent-
eligible applications of those concepts” {see Alice Corp., 134 S.Ct. at 2355).
The first step in that analysis is to “determine whether the claims at issue are
3
Appeal 2015-007196
Application 13/854,861
directed to one of those patent-ineligible concepts” {Alice Corp., 134 S.Ct. at
2355). If so, the second step is to consider the elements of the claims
“individually and ‘as an ordered combination”’ to determine whether the
additional elements ‘“transform the nature of the claim’ into a patent-eligible
application” {see Alice Corp., 134 S.Ct. at 2355 (citing Mayo, 132 S.Ct.
at 2355)). In other words, the second step is to “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. (citing Mayo, 132 S.Ct. at 1294)).
The Court acknowledged in Mayo, that “all inventions at some level
embody, use, reflect, rest upon, or apply laws of nature, natural phenomena,
or abstract ideas” {Mayo, 132 S.Ct. at 1293). We, therefore, look to whether
the claims focus on a specific means or method that improves the relevant
technology or are instead directed to a result or effect that itself is the
abstract idea, and merely invoke generic processes and machinery.
Here, the Examiner rejects claims 26-45 as being directed to an
abstract idea of “selling and displaying advertisements” without additional
elements that transform it into a patent-eligible application of that idea {see
Ans. 11—12). More particularly, the Examiner finds the claims
are drawn to a method for selling and displaying advertisements
over a network. Selling and displaying advertisements over a
network is not a preexisting fundamental truth but rather is a
longstanding commercial practice. The concept of selling and
displaying advertisements is a fundamental economic practice
long prevalent in our system of commerce, which is in the realm
of abstract ideas identified by the Supreme Court.
{Id. at 11).
4
Appeal 2015-007196
Application 13/854,861
In response, Appellants’ argue
[t]he Examiner’s Answer does not and reasonably cannot provide
any rational basis for asserting that computerized techniques for
selecting, based on contextual information, a first one of a
plurality of advertisements for display at a predetermined
location within a web page and a second one of the
advertisements for display at a location within the web page
associated with a portion of the content that is relevant to the
second advertisement, as recited by independent claim[s] 26, 36,
and 45 relate to or describe a “fundamental business practice,”
much less an “abstract idea” under § 101.
(Reply Br. 4).
Appellants’ argument is not persuasive. To the extent the Appellants
argue that the claims are not directed to the abstract idea of “selling and
displaying advertisements” (see Reply Br. 3—5), we disagree. Independent
claim 26 recites the steps of “receiving a request. . . comprising a selection
criterion associated with a web page,” “identifying . . . advertisements,”
“obtaining contextual information identifying a relevance of the identified
advertisements to content within the web page,” and “selecting ... a first
[and second] of the advertisements for display” (see Appeal Br. i (Claims
App.)). Further, according to the Specification, the invention relates to “to
systems and methods for displaying advertisements over a network” (Spec.
11). In that context, the claims are directed to selecting and displaying
advertisements based on selection criterion and contextual information.4
Our reviewing courts have held certain fundamental economic and
conventional business practices, like using advertisement as currency (see
4 We note that “[a]n abstract idea can generally be described at different
levels of abstraction.” Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1240
(Fed. Cir. 2016).
5
Appeal 2015-007196
Application 13/854,861
Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 713—14 (Fed.Cir.2014)),
intermediated settlement {see Alice, 134 S.Ct. at 2356—57), and tailoring
information presented to a user based on particular information (see
Intellectual Ventures I LLC v. Capital One Bank (USA), 792 F.3d 1363,
1370 (Fed. Cir. 2015); see also Bascom Glob. Internet Servs., Inc. v. AT&T
Mobility LLC, 827 F.3d 1341, 1348 (Fed. Cir. 2016)), as being abstract
ideas. Here, we find the selection and displaying of advertisements based on
selection criterion and contextual information of independent claim 1 to be
similar to these abstract ideas, and thus, we determine that independent
claim 1 and substantially similar independent claims 36 and 45 are directed
to an abstract idea.
We also are not persuaded by Appellants’ argument that the Examiner
fails to satisfy the second step of the Alice analysis, “because Appellants’]
claims amount to ‘significantly more’ than any alleged abstract idea” (Reply
Br. 7—8). However, the only claim elements beyond the abstract idea are
directed to the system (including generic processing and storage
components) on which the method of “selling and displaying
advertisements,” i.e., selecting and displaying advertisements based on
selection criterion and contextual information, is performed. Considered as
an ordered combination, we are unclear as to how these computer
components add anything that is not already present when the steps of the
method are considered separately. The claims do not, for example, appear to
improve the functioning of the computer itself. Nor do they appear to effect
an improvement in any other technology or technical field. Instead, the
claims seem to amount to nothing significantly more than an instruction to
apply the abstract idea of “selling and displaying advertisements” based on
6
Appeal 2015-007196
Application 13/854,861
selection criterion and contextual information, i.e., “receiving a
request. . . comprising a selection criterion associated with a web page,”
“identifying . . . advertisements,” “obtaining contextual information
identifying a relevance of the identified advertisements to content within the
web page,” and “selecting ... a first [and second] of the advertisements for
display” based on selection criterion and contextual information, which we
are unpersuaded is enough to transform an abstract idea into a patent-eligible
invention (see Alice Corp., 134 S.Ct. at 2360).
Appellants also argue “the pending claims cannot be directed to an
abstract idea because they do not attempt to preempt every application of the
alleged abstract idea of ‘selling and displaying advertisements over a
network’” (Reply Br. 5). However,
[t]he Supreme Court has made clear that the principle of
preemption is the basis for the judicial exceptions to
patentability. Alice, 134 S. Ct. at 2354 (“We have described the
concern that drives this exclusionary principle as one of pre-
emption[.]”). For this reason, questions on preemption are
inherent in and resolved by the § 101 analysis.
Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed.
Cir. 2015). Preemption concerns are, thus, fully addressed and rendered
moot where a claim is determined to disclose patent ineligible subject matter
under the two-part framework described in Mayo and Alice. Although
“preemption may signal patent ineligible subject matter, the absence of
complete preemption does not demonstrate patent eligibility” (id.).
Appellants further argue that the present claims are like those in
DDR Holdings, LLCv. Hotels.com, L.P., 773 F.3d 1245, 1256 (Fed. Cir.
2014) (Reply Br. 5—7). In DDR Holdings, the Federal Circuit determined
that, although the patent claims at issue involved conventional computers
7
Appeal 2015-007196
Application 13/854,861
and the Internet, the claims addressed the problem of retaining website
visitors who, if adhering to the routine, conventional functioning of Internet
hyperlink protocol, would be transported instantly away from a hosts
website after “clicking” on an advertisement and activating a hyperlink
(DDR Holdings, 773 F.3d at 1257). The Federal Circuit, thus, held that the
claims were directed to statutory subject matter because they claimed a
solution “necessarily rooted in computer technology in order to overcome a
problem specifically arising in the realm of computer networks” (id.).
We are not persuaded that Appellants’ claims are like those at issue in
DDR Holdings. Here, Appellants argue that their claims are “inextricably
tied to computer networks rather than ethereal ideas or mental processes”
(Reply Br. 5—6) and
[t]he claimed combinations cannot exist outside of the [“jrealm
of computer technology” because, for example, they involve “at
least one processor” capable of selecting a “first advertisement”
for display at a “predetermined location within [a] web page” and
a “second advertisement” for display at a “location within the
web page associated with a portion of the content that is relevant
to the second advertisement” based on obtained contextual data.
(Id. at 6—7). However, we agree with the Examiner that exemplary
independent claim 26 merely uses a “processor [which] acts as the
intermediary in the claimed method” and that the functions performed by the
processor “are ‘well understood, routine, conventional activities]’
previously known to the industry” (Ans. 12). Although Appellants assert
that the claims “require specially] designed] and programmed processors
and other physical hardware, rather than use of conventional computer
functions and/or mental processes” (Reply Br. 7), Appellants do not identify
where the Specification discloses such. Instead, the Specification discloses
8
Appeal 2015-007196
Application 13/854,861
that the invention “is applicable to many types of networks, an example of a
suitable network is the Internet” (Spec. 118). The Specification further
discloses that “[u]ser computer 102 and advertiser computer 118 may be any
suitable computing equipment for accessing content (e,g„ web pages) over
[Ijnternet 108 and displaying advertisement to end user(s)” (id. 123). The
Specification also discloses that “[a]d selection application 110 may include
any suitable hardware, software, or combination thereof for receiving and
responding to requests for advertisements received by ad system 106 via
Internet 108” (Spec. 125).
In view of the foregoing, we sustain the Examiner’s rejection under
35 U.S.C. § 101 of independent claim 26, and claims 27-45, which fall with
independent claim 26.
Obvious-type Double Patenting
Appellants acknowledge the obvious-type double patenting rejection
of claims 26-45, but elects not to appeal this rejection, and “respectfully
request[] that the Office hold the double patenting rejection in abeyance until
final resolution of the outstanding § 103 rejection” (see App. Br. 9, fh. 1).
Therefore, the double patenting rejection is summarily sustained.
Obviousness
Independent claim 26 and dependent claims 27—35
We are persuaded by Appellants’ argument that the Examiner erred in
rejecting independent claim 26 under 35 U.S.C. § 103(a) because Whittaker,
upon which the Examiner relies, fails to disclose or suggest limitation [d] of
independent claim 26 which recites:
9
Appeal 2015-007196
Application 13/854,861
selecting, using at least one processor, a first one of the
advertisements for display at a predetermined location within the
web page, and a second one of the advertisements for display at
a location within the web page associated with a portion of the
content that is relevant to the second advertisement, the selection
being based on the selection criterion and the contextual
information.
(See Appeal Br. 9—13; see also Reply Br. 9—12).
The Examiner maintains the rejection is proper (see Ans. 13—15).
More particularly, the Examiner acknowledges that Dean does not disclose
the argued limitation, but Whittaker, at paragraphs 64, 65, 87, 120, as well as
claim 4, discloses the argued limitation (see Final Act. 4 (citing Whittaker
64, 65, 87, and 120; claim 4); see also Ans. 13—15 (citing Whittaker H 64
and 87)). However, we agree with Appellants that there is nothing in the
cited portions that discloses or suggests the argued limitation.
In making this determination, we note that Whittaker is directed to a
system for “servicing and cycling of advertisements on mobile handheld
device” (Whittaker 12). More particularly, Whittaker discloses
an advertiser web page associated with an advertisement image
displayed on the first web page is displayed when a user interacts
with the displayed advertisement image. In other words, when
an advertisement image, such as one of first or second
advertisement images 1604 and 1606, is selected on a web page,
such as web page 1602, a second web page, which is typically a
web page of an advertising entity corresponding to the
advertisement image, is displayed. The advertising entity web
pages may be transferred to the mobile device at any time,
including during step 1702, and/or during a synchronization
process with the mobile device server.
(Id. 1 87). Whittaker further discloses “[i]n the first web page,
advertisement 612 includes a generic advertisement image file reference or
link and an associated generic advertisement destination link that are related
10
Appeal 2015-007196
Application 13/854,861
to the generic advertisement” (id. 1120). Whittaker also discloses
“displaying the first web page on the mobile device a second time, wherein
the first web page includes a second advertisement image corresponding to a
second advertisement image file of the stored plurality of advertisement
image files” (Whittaker, Claim 4).
We have reviewed the cited portions of Whittaker and agree with
Appellants that none of the cited portions of Whittaker discloses or suggests
the argued limitation. In particular, we fail to see, and the Examiner does
not adequately explain how, Whittaker’s disclosure regarding a first and
second advertisement displayed on a web page discloses or suggests the
argued limitation. Instead, we agree with Appellants that
Whittaker is completely silent regarding any basis for selecting
stored advertisements for display within web page 1602 at “the
location of the advertisement.” Indeed, the processes of
Whittaker at most select an additional advertising image for
display within a web page in response to a user’s selection of first
or second advertisement images 1604 and 1606 within web page
1602.
(Reply Br. 12 (citing Whittaker 187; Figs. 16A and 16B)). The Examiner
does not rely on Dean to address the argued limitation (see Final Act. 4).
In view of the foregoing, we do not sustain the Examiner’s rejection
of independent claim 18 under 35 U.S.C. § 103(a) as unpatentable over Dean
and Whittaker. For the same reasons, we also do not sustain the Examiner’s
rejection of dependent claims 27—34 which depend from independent claim
26.
Independent claims 36 and 45, and dependent claims 37—44
Independent claims 36 and 45 include a limitation substantially
similar to independent claim 26’s limitation [d] discussed above. Therefore,
11
Appeal 2015-007196
Application 13/854,861
we do not sustain the Examiner’s rejection under 35 U.S.C. § 103(a) of
independent claims 36 and 45, and dependent claims 37-44 that depend
therefrom, for the same reasons set forth above with respect to independent
claim 26.
DECISION
The Examiner’s rejection of claims 26-45 under 35 U.S.C. § 101 is
affirmed.
The Examiner’s rejection of claims 26-45 on the ground of non-
statutory obvious-type double patenting is affirmed.
The Examiner’s rejection of claims 26-45 under 35 U.S.C. § 103(a) 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)(l)(iv).
AFFIRMED
12