Ex Parte Zschocke et al

Patent Trial and Appeal Board

Dec 2, 2016

12697842 (P.T.A.B. Dec. 2, 2016)

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.
12/697,842 02/01/2010 Mark S. Zschocke 50196-00150 2814
25231 7590 12/06/2016
MARSH, FISCHMANN & BREYFOGLE LLP
8055 East Tufts Avenue
Suite 450
Denver, CO 80237
EXAMINER
IOSIF, MARIO CINCINAT
ART UNIT PAPER NUMBER
3622
NOTIFICATION DATE DELIVERY MODE
12/06/2016 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):
PTOMail @ mfblaw. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MARK S. ZSCHOCKE and DANIEL C. WILSON
Appeal 2017-000025
Application 12/697,842
Technology Center 3600
Before ANTON W. FETTING, PHILIP J. HOFFMANN, and
MATTHEW S. MEYERS, Administrative Patent Judges.
FETTING, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE1
Mark S. Zschocke and Daniel C. Wilson (Appellants) seek review under
35 U.S.C. § 134 of a final rejection of claims 1—32 and 59-62, the only
claims pending in the application on appeal. We have jurisdiction over the
appeal pursuant to 35 U.S.C. § 6(b).
The Appellants invented a way to auction targeted advertising media
delivery opportunities to asset providers. Specification 1:14—16.
1 Our decision will make reference to the Appellants’ Appeal Brief (“App.
Br.,” filed February 16, 2016) and Reply Brief (“Reply Br.,” filed September
Appeal 2017-000025
Application 12/697,842
An understanding of the invention can be derived from a reading of
exemplary claim 1, which is reproduced below (bracketed matter and some
paragraphing added).
1. A system for auctioning asset delivery options in a broadcast
network, the broadcast network primarily involving
synchronized distribution of broadcast content to an aggregate
audience of target users, said system comprising:
[1] a traffic interface for receiving information regarding said
aggregate audience,
wherein said information comprises one or more
classification parameters associated with individual ones
of said target users of said aggregate audience;
[2] a user interface for receiving, from each of a plurality of
asset providers,
an identification of at least one asset for distribution
within a specific broadcast content of said broadcast
network,
one or more targeting parameters associated with each
said asset,
and
a value per impression for one or more segments of said
aggregate audience,
wherein each said classification parameter and each said
targeting parameter identifies one of said segments of
said aggregate audience;
and
a processor, said processor having logic for:
15, 2016), and the Examiner’s Answer (“Ans.,” mailed July 15, 2016) and
Final Action (“Final Act.,” mailed February 17, 2015).
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Application 12/697,842
[3] determining,
from a set of defined auctioning models where
each of the auctioning models has a different set of
rules for identifying a winning bid and an asset
delivery price for the winning bid,
a first auctioning model for auctioning a first asset
delivery option
and
a second auctioning model for auctioning a second asset
delivery option;
and
[4] auctioning said first asset delivery option via said first
auctioning model and said second asset delivery option via said
second auctioning model
such that first and second winning bids are identified for
each of said first and second asset delivery options for
delivery in connection with a single asset delivery
opportunity,
wherein said second auctioning model is at least partially
based on said identified first winning bid of said first
asset delivery option.
The Examiner relies upon the following prior art:
Claims 1—32 and 59—62 stand rejected under 35 U.S.C. § 101 as directed
to non—statutory subject matter.
Bykowsky
Bronnimann
Siler
Sandholm
US 2002/0013757 A1 Jan. 31, 2002
US 2004/0044571 A1 Mar. 4, 2004
US 2004/0133467 A1 July 8, 2004
US 2006/0224496 A1 Oct. 5, 2006
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Appeal 2017-000025
Application 12/697,842
Claims 1 and 21 stand rejected under 35 U.S.C. § 112, second paragraph,
as failing to particularly point out and distinctly claim the invention.
Claims 1—16, 18—32, and 59 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Bykowsky and Sandholm.
Claim 17 stands rejected under 35 U.S.C. § 103(a) as unpatentable over
Bykowsky, Sandholm, and Bronnimann.
Claims 60—62 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over Bykowsky, Sandholm, and Siler.
ISSUES
The issues of statutory subject matter turn primarily on whether the
claims are directed to more than the selection of advertising by auctions.
The issues of indefiniteness turn primarily on whether one of ordinary skill
would understand the metes and bounds of the claims. The issues of
obviousness turn primarily on whether the art applied describes a second
auctioning model being at least partially based on an identified first winning
bid.
FACTS PERTINENT TO THE ISSUES
The following enumerated Findings of Fact (FF) are believed to be
supported by a preponderance of the evidence.
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Application 12/697,842
Facts Related to the Prior Art
Bykowsky
01. Bykowsky is directed to an automated exchange and method for
assigning advertising time and space, and, more specifically, to an
electronic auction and method which determines, using complex
mathematical algorithms, an efficient assignment of
heterogeneous items from sellers to buyers and a set of transaction
prices for such items, based upon “single-item” and “multiple-
item” bids and offers. Bykowsky para. 1.
Sandholm
02. Sandholm is directed to expressive auctions for the allocation of
differentiated supply in dynamic environments with uncertainty
about future supply and future demand. Sandholm para. 2.
ANALYSIS
Claims 1—32 and 59—62 rejected under 35 U.S.C. § 101 as directed to non—
statutory subject matter
We agree with and adopt the Examiner’s findings that independent
claim 21 is directed to auctioning asset delivery options for advertising use
which is a fundamental business practice. Final Act. 3—A. Both auctions and
advertising are notoriously old practices in commerce. We further agree
with and adopt the Examiner’s findings that the individual limitations, taken
separately and as an ordered combination do not add more to create a
creative concept. Final Act. 4—5.
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Application 12/697,842
We are not persuaded by Appellants’ argument that the invention is
limited to a narrow context. App. Br. 7. That the claim does not preempt all
forms of the abstraction or may be limited to the abstract idea in a particular
setting do not make them any less abstract. See OIP Technologies, Inc. v.
Amazon.com, Inc., 788 F.3d 1359, 1360—1361 (2015).
We are not persuaded by Appellants’ argument that the claim is
analogous to that in DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245,
1257 (Fed. Cir. 2014), where the Court noted that a claim may amount to
more than any abstract idea recited in the claims when it addresses a
business challenge, such as “retaining website visitors,” where that challenge
is particular to a specific technological environment, such as the Internet.
Appellants contend that the claim addresses a business challenge of
auctioning assets in a broadcast network unique to parallel distribution of
targeted advertisements in the broadcast network. App. Br. 8.
In DDR, the court stated that “the [] patent’s claims address the problem
of retaining website visitors that, if adhering to the routine, conventional
functioning of Internet hyperlink protocol, would be instantly transported
away from a host’s website after ‘clicking’ on an advertisement and
activating a hyperlink.” DDR Holdings, 773 F.3d at 1257. This was done in
the claim by serving a composite page with content based on the link that
was activated to serve the page.
In contrast, claim 21 performs a process that is not part of the argued
broadcast process per se, but instead identifies ads that will be put into the
broadcast. Ad identification is not a technical problem, it is a marketing
problem. Using an auction is a commercial solution, not a technical
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solution. That this may assist with then laying out ads in a broadcast outside
the scope of the claim is not pertinent to determining whether the claim itself
provides a technical solution to a technical problem. A simple mathematical
algorithm such as addition is equally useful in solving technical problems,
but simply automating it is insufficient to make it not an abstract idea.
We are not persuaded by Appellants’ argument that “there is no prior art
that recognizes the advantage of using different auction models for
auctioning different asset delivery options of a single spot, much less where
a second auction model depends on a winning bid of a first asset delivery
option.” App. Br. 9. This argument conflates the abstract subject matter
analysis with that of obviousness. Selection of auction models is a
marketing rather than technical decision. Technical solutions may be
employed, but as they are not in the claim, such is irrelevant. Basing the
selection on any particular criteria, including a winning bid, is again a
marketing rather than technical decision. Marketing decisions are among the
more abstract types of decisions in commerce.
Claim 1 is directed to a general purpose computer programmed to
perform the process of claim 21. The dependent claims are not argued
separately. Thus, we agree with the Examiner that these claims are non-
statutory, for the same reasons discussed above for claim 21.
Claims 1 and 21 rejected under 35 U.S.C. § 112, second paragraph, as
failing to particularly point out and distinctly claim the invention
We are persuaded by Appellants’ argument that the limitation of
“wherein said second auctioning model is at least partially based on said
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Application 12/697,842
identified first winning bid of said first asset delivery option” is not
indefinite. App. Br. 4—5. The Examiner construes the wherein clause as
being timed to process following the determining and auctioning limitations.
Final Act. 2—3. But the wherein clause describes how those limitations
interact and is not an independent third step. One of ordinary skill in the
computer programming arts would understand the wherein clause requires
the determination of the second model to occur after identifying the first
winning bid of the first asset delivery option.
We are also persuaded by Appellants’ argument that the Examiner’s
finding that the determination is unduly broad (Final Act. 3) does not render
the claim indeterminate. App. Br. 5—6. “[BJreadth is not to be equated with
indefmiteness.” Application of Miller, 441 F.2d 689, 693 (CCPA 1971).
Claims 1—16, 18—32, and 59 rejected under 35 U.S.C. § 103(a) as
unpatentable over Bykowsky and Sandholm
We are persuaded by Appellants’ argument that neither reference
describes a second auctioning model being at least partially based on an
identified first winning bid. App. Br. 12; see also Reply Br. 9. The
Examiner makes no findings as to this limitation, and we are unable to find it
described in the applied art.
Claim 17 rejected under 35 U.S.C. § 103(a) as unpatentable over Bykowsky,
Sandholm, and Bronnimann
Claim 17 depends from claim 1.
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Application 12/697,842
Claims 60—62 rejected under 35 U.S.C. § 103(a) as unpatentable over
Bykowsky, Sandholm, and Siler
These claims depend from claim 1.
CONCLUSIONS OF LAW
The rejection of claims 1—32 and 59-62 under 35 U.S.C. § 101 as
directed to non—statutory subject matter is proper.
The rejection of claims 1 and 21 under 35 U.S.C. § 112, second
paragraph, as failing to particularly point out and distinctly claim the
invention, is improper.
The rejection of claims 1—16, 18—32, and 59 under 35 U.S.C. § 103(a) as
unpatentable over Bykowsky and Sandholm is improper.
The rejection of claim 17 under 35 U.S.C. § 103(a) as unpatentable over
Bykowsky, Sandholm, and Bronnimann is improper.
The rejection of claims 60—62 under 35 U.S.C. § 103(a) as unpatentable
over Bykowsky, Sandholm, and Siler is improper.
DECISION
The rejection of claims 1—32 and 59—62 is affirmed.
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)(iv) (2011).
AFFIRMED
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