Ex Parte Yruski et al

Patent Trial and Appeal Board

Jul 27, 2018

11586959 (P.T.A.B. Jul. 27, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
11/586,959
15827 7590
Polsinelli LLP - SIEA
3 Embarcadero Center
Suite 2400
10/25/2006
07/31/2018
San Francisco, CA 94111
FIRST NAMED INVENTOR
Andrey Yruski
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.
SCEA-09062 2454
EXAMINER
BROWN, LUIS A
ART UNIT PAPER NUMBER
3682
NOTIFICATION DATE DELIVERY MODE
07/31/2018 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):
scea_patent_ docket@Playstation. Sony. com
uspt@polsinelli.com
sfpatent@polsinelli.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ANDREY YRUSKI and MURGESH NAVAR
Appeal2017-004335
Application 11/586,959
Technology Center 3600
Before ELENI MANTIS MERCADER, LARRY J. HUME, and
JASON M. REPKO, Administrative Patent Judges.
REPKO, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants 1 appeal under 35 U.S.C. § 134(a) from the Examiner's
rejection of claims 32, 34--40, 42, 44, 45, 49, and 51-54. Reply Br. 3. 2
Claims 1-31, 33, 41, 43, 46-48, and 50 were canceled. We have jurisdiction
under 35 U.S.C. § 6(b ).
We affirm.
1 Appellants identify the real party in interest as Sony Interactive
Entertainment America LLC. App. Br. 3.
2 Throughout this opinion, we refer to the Final Rejection ("Final Act.")
mailed January 29, 2016; the Appeal Brief ("App. Br.") filed June 27, 2016;
the Examiner's Answer ("Ans.") mailed November 17, 2016; and the Reply
Brief ("Reply Br.") filed January 17, 2017.
Appeal2017-004335
Application 11/586,959
THE INVENTION
Appellants' claimed invention relates to associating advertisement
information with (1) media content and (2) users that receive the content
over a network. Spec. ,r 11. According to the Specification, the invention
meets the need for an improved technique for targeting advertisements to
podcast subscribers. Id. ,r 10.
Claim 32 is reproduced below:
32. A method for resolving an advertisement rule to determine
advertisement matching to content, the method comprising:
rece1vmg information regarding an advertisement
campaign provided by an advertisement provider server over a
network, the advertisement campaign including a plurality of
advertisements and associated with an advertisement rule for
matching the advertisement campaign with content provided by
a content provider server;
receiving information regarding a content attribute of the
content provided by the content provider server over the
network; and
executing instructions stored in memory, wherein
execution of the instructions by a processor:
matches the advertisement campaign to the content
attribute based on the advertisement rule,
periodically retrieves user usage information,
wherein the user usage information is automatically
transmitted by a software application at a user device, and
wherein the user usage information includes play event
and play duration data associated with each content feed
to which a user of the user device is subscribed;
estimates a probability that the user device will play
the content based on the retrieved user usage information,
wherein the content is a content feed to which the user is
subscribed,
2
Appeal2017-004335
Application 11/586,959
selects an advertisement of the plurality of
advertisements of the matching advertisement campaign
for insertion into the content, the selected advertisement
associated with metadata indicating a location where the
selected advertisement is inserted relative to the content,
wherein the location is measured from the start of the
content when the location is within the content and the
duration of the selected advertisement is within a length
restriction when the selected advertisement is inserted into
the content, wherein the advertisement is selected for
insertion based on the user usage information, the
estimated probability that the user device will play the
content, and the length restriction, and wherein the content
is associated with the selected advertisement when the
content and the selected advertisement are delivered to the
user device over the network,
delivers, in response to a request from the user
device concerning the content, the content and the selected
advertisement to the user device over the network, wherein
the selected advertisement is delivered to the user device
for storage,
receives a usage log regarding the user device
playing a file comprising the content and the selected
advertisement inserted into the content at the insertion
location, the selected advertisement inserted by processing
the metadata to identify the insertion location and by
processing the content to find the insertion location,
wherein the usage log indicates:
an ad play duration of the inserted
advertisement, the ad play duration determined
relative to an ad play starting point of the inserted
advertisement at the insertion location, and
a content play duration of the content,
wherein the content play duration is calculated to
exclude ad play of the inserted advertisement at the
insertion location within the content; and
3
Appeal2017-004335
Application 11/586,959
generates a payment amount for the
advertisement provider based on the usage log.
THE REJECTION
Claims 32, 34--40, 42, 44, 45, 49, and 51-54 stand rejected under
35 U.S.C. § 101 as directed to patent-ineligible subject matter. Final
Act. 2---6.
ANALYSIS
Alice Step One
The Supreme Court's two-step framework guides our analysis. See
Alice Corp. Pty. Ltd. v. CLS Bank Int'!, 134 S. Ct. 2347, 2355 (2014).
According to step one, "[ w ]e must first determine whether the claims at
issue are directed to a patent-ineligible concept," such as an abstract idea.
Id.
The Examiner finds representative3 claim 32 is directed to an abstract
idea. Final Act. 2. The Examiner explains that the claim is directed to
targeting offers based on rules and conditions and estimating probability of a
user event from activity data. Id.
Appellants disagree and argue that the claims are directed to a specific
way to deliver digital-content files, dynamically splice them together, and
determine which portions were actually played. App. Br. 7-10. Appellants
argue the claims are similar to those found eligible in Enfish, LLC v.
Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016) and McRO, Inc. v. Bandai
3 Appellants argue claims 32, 34--40, 42, 44, 45, 49, and 51-54 as a group.
See App. Br. 7-11; Reply Br. 8. We select independent claim 32 as
representative of claims 32, 34--40, 42, 44, 45, 49, and 51-54. See 37 C.F.R.
§ 4I.37(c)(l)(iv).
4
Appeal2017-004335
Application 11/586,959
Namco Games Am., 837 F.3d 1299 (Fed. Cir. 2016). See App. Br. 7-10;
Reply Br. 3--4.
We disagree with Appellants that claim 32 is similar to Enfish and
McRO. Claim 32 merely recites result-based functional language instead of
a particular improvement in the system's function or some technical
solution. By contrast, the claims in Enfish were directed to a specific
asserted improvement to a database's capabilities. See 822 F.3d at 1335-36.
Likewise, the claims in McRO were directed to an improvement to the way
computers create animation. See 837 F.3d at 1314. Unlike the inventions in
those cases, Appellants' invention is purportedly an improved technique for
targeting advertisements to content subscribers (Spec. ,r,r 10-11 ), not an
improvement to a computer's functioning. See Final Act. 5.
Appellants disagree and explain that the claims involve a specific
solution to a software-based problem. App. Br. 8-10 (citing Spec. ,r,r 3-12,
98, 101 ); see also Reply Br. 6 ( comparing digital content with traditional
media). But Appellants' argument is not commensurate with the claim.
Claim 32 is broadly functional and result-oriented. In this way, the claims
are more like those held to be abstract by the Federal Circuit. See Affinity
Labs of Tex., LLC v. DIRECTV, LLC, 838 F.3d 1253, 1258-59 (Fed. Cir.
2016) (holding that the claims were directed to an abstract idea, and
explaining that the claims recited "the function of wirelessly communicating
regional broadcast content to an out-of-region recipient, not a particular way
of performing that function"); Elec. Power Grp., LLC v. Alstom S.A., 830
F.3d 1350, 1354 (Fed. Cir. 2016) (holding the claims were directed to the
abstract idea of "gathering and analyzing information of a specified content,
5
Appeal2017-004335
Application 11/586,959
then displaying the results, and not any particular assertedly inventive
technology for performing those functions.").
For example, the recited method receives and matches the
advertisement campaign and content attribute. Claim 32, however, does not
describe how to achieve this match. Similarly, the claim further recites a
probability estimate and generating a payment amount without any particular
technical solution for doing so. Like the match, the probability estimate and
the generated amount are claimed as a result. Therefore, we disagree that
these limitations make claim 32 less abstract. See Reply Br. 7.
Furthermore, the claimed method uses a processor to select an
advertisement. To be sure, there are several limitations on the selection-
i.e., the advertisement must be associated with metadata, selected based on
certain information, and more. Similarly, the claimed processor sends and
receives information limited to a particular content. Yet "[i]nformation as
such is an intangible." Elec. Power Grp., 830 F.3d at 1353. The Federal
Circuit has "treated collecting information, including when limited to
particular content (which does not change its character as information), as
within the realm of abstract ideas." Id. (citing Digitech Image Techs., LLC
v. Elecs.for Imaging, Inc., 758 F.3d 1344 (Fed. Cir. 2014) and other cases).
Likewise, limitations on the recited advertisements and transmitted data do
not remove Appellants' claim from the abstract-idea realm.
We agree with the Examiner that the claimed method is similar to
other advertisement methods that the Federal Circuit has found to be
directed to an abstract idea. Final Act. 2. For example, the Federal Circuit
found that a "process of receiving copyrighted media, selecting an ad,
offering the media in exchange for watching the selected ad, displaying the
6
Appeal2017-004335
Application 11/586,959
ad, allowing the consumer access to the media, and receiving payment from
the sponsor of the ad all describe an abstract idea." Ultramercial, Inc. v.
Hulu, LLC, 772 F.3d 709, 715 (Fed. Cir. 2014), cited in Ans. 3. Like the
claims in Ultramercial, claim 32' s method selects ads, delivers the ads with
content, and employs a usage log. As a whole, claim 32 uses rules to match
the advertisements to content. Compared to Ultramercial, claim 32
manipulates similar data, solves a similar problem, and does so in a broadly
abstract way. Accord Ans. 3.
Appellants argue that the Examiner erred by relying on the non-
precedential decision in SmartGene, Inc. v. Advanced Biological Labs., SA,
555 F. App'x 950 (Fed. Cir. 2014). Reply Br. 3--4. Notably, the Examiner's
reliance on SmartGene is cumulative. See, e.g., Ans. 3 ( citing Ultramercial
and other cases). Nevertheless, apart from quoting the Examiner guidance,
Appellants have not explained why the facts here do not match the facts at
issue in SmartGene. See Reply Br. 3--4. Accordingly, Appellants have not
persuaded us that the Examiner's reliance on SmartGene is in error. See id.
On this record, we are unpersuaded that the Examiner erred in
concluding that claim 32 is directed to an abstract idea.
Alice Step Two
Because the claims are "directed to an abstract idea," we consider the
claim limitations "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 Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 78-79
(2012)). The Supreme Court has described this analysis "as a search for an
'inventive concept."' Alice, 134 S. Ct. at 2355.
7
Appeal2017-004335
Application 11/586,959
Appellants argue that the Examiner has not supported the conclusion
that claim 32 amounts to an abstract idea without more. Reply Br. 7. We
disagree. Here, the Examiner cites several court decisions in finding that
receiving, accessing, and storing data are considered conventional computer
functioning. See Ans. 3 ( citing Ultramercial, Alice, and buySAFE, Inc. v.
Google, Inc., 765 F.3d 1350 (Fed. Cir. 2014)). In particular, the Federal
Circuit has recognized that the function of "receiving or transmitting data" is
well-understood, routine, and conventional. buySAFE, 765 F.3d at 1355
( explaining that the "computers in Alice were receiving and sending
information over networks connecting the intermediary to the other
institutions involved, and the Court found the claimed role of the computers
insufficient"). On this record, the Examiner's Alice step two analysis is
adequately supported in this regard.
Appellants further contend that the claims recite operations that are
impossible to carry out mentally. Reply Br. 8. According to Appellants, the
claims recite a non-generic and unconventional arrangement that amounts to
significantly more than any abstract idea. App. Br. 8, 10-11; Reply Br. 8.
Even if the claimed method cannot be carried out mentally, the recited
physical and tangible components do not impart an inventive concept here.
In particular, the claimed method begins by reciting two steps for receiving
information regarding an advertising campaign and a content attribute. In
these steps, the advertisement-provider server and content-provider server
merely provide data. So, even if these servers are capable of performing
specialized tasks (App. Br. 8), these tasks are not reflected in claim 32.
Rather, the servers merely send data, which is conventional for the reasons
discussed by the Examiner. See Ans. 3, discussed supra.
8
Appeal2017-004335
Application 11/586,959
The claims also employ a "usage log" indicating an ad-play and a
content-play duration. Notably, the Ultramercial court recognized that
"[a]dding routine additional steps such as updating an activity log . .. and
use of the Internet does not transform an otherwise abstract idea into patent-
eligible subject matter." Ultramercial, 772 F.3d at 716 (emphasis added).
Moreover, Appellants' usage log is used to store data similar to a
conventional play log. See, e.g., Spec. ,r 155 (discussing how iTunes
typically stores data in player play logs).
In view of their conventional use, neither the usage log nor the servers
impart an inventive concept sufficient to transform the nature of Appellants'
claim into eligible subject matter, contrary to Appellants' arguments
(App. Br. 8; Reply Br. 7).
Appellants have not provided, nor do we find, any inventive concept
even considering the limitations as an ordered combination. As discussed,
claim 32 does not improve an existing technological process. See
Final Act. 4--5. Instead, the invention's purported improvement is targeting
advertisements to podcast subscribers. Spec. ,r,r 10-11. To this end, the
claim's recited computer components contribute little to a technology-based
solution, which Appellants argue is present (see Reply Br. 6). Specifically,
the recited servers and processor send and receive data, and the processor
further matches information, estimates a probability, and selects
advertisements. That is, rather than reciting a particular way to achieve the
desired matching, estimating, or selecting, claim 32 merely recites the
outcomes. As an ordered combination, the computer components transfer
the data and carry out the abstract idea. So, considering the claim as a whole
and noting the claim's broad functional language, we are unpersuaded that
9
Appeal2017-004335
Application 11/586,959
the Examiner's characterization is overbroad, as Appellants argue
(App. Br. 8; Reply Br. 3---6). On this record, we agree with the Examiner
that the recited combination of elements does not add meaningful limitations
to the abstract idea that the Examiner identified in Alice step one. See
Final Act. 4--5.
Therefore, Appellants have not persuaded us of error in the rejection
of independent claim 32 under 35 U.S.C. § 101, or the rejection of claims
34--40, 42, 44, 45, 49, and 51-54, which are grouped with claim 32. See
App. Br. 7-11; Reply Br. 8.
DECISION
We affirm the Examiner's rejection of claims 32, 34--40, 42, 44, 45,
49, and 51-54.
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). See 37
C.F.R. § 41.50(±).
AFFIRMED
10