Google Inc.Download PDFPatent Trials and Appeals BoardApr 30, 202014337559 - (D) (P.T.A.B. Apr. 30, 2020) Copy Citation 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. 14/337,559 07/22/2014 Satyam Shaw 16113-2096002 7034 26192 7590 04/30/2020 FISH & RICHARDSON P.C. PO BOX 1022 MINNEAPOLIS, MN 55440-1022 EXAMINER BROWN, LUIS A ART UNIT PAPER NUMBER 3682 NOTIFICATION DATE DELIVERY MODE 04/30/2020 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): PATDOCTC@fr.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte SATYAM SHAW ____________ Appeal 2019-002489 Application 14/337,559 Technology Center 3600 ____________ Before MURRIEL E. CRAWFORD, MICHAEL C. ASTORINO, and NANA L. MEDLOCK, Administrative Patent Judges. CRAWFORD, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant1 seeks our review under 35 U.S.C. § 134(a) of the Examiner’s final rejection of claims 37, 39, 40, 42, 44, 45, 47, 48, 50, 51, 53, 55, and 56. We have jurisdiction under 35 U.S.C. § 6(b). SUMMARY OF DECISION We REVERSE. THE INVENTION Appellant claims technologies relating to content presentation. (Spec. ¶ 1). 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies Google LLC as the real party in interest. (Appeal Br. 1.) Appeal 2019-002489 Application 14/337,559 2 Claim 37 is representative of the subject matter on appeal. 37. A computer-implemented method comprising: identifying, by one or more computers, a given advertisement from an inventory associated with an online advertisement system; determining, by the one or more computers, that the given advertisement is only capable of providing a predefined number of conversions based on the given advertisement being for a product having a limited available inventory that is limited to the predefined number, the predefined number being greater than one; receiving, by the one or more computers, multiple requests for content from two or more user devices; responding, by the one or more computers, to the multiple requests with an advertisement, including: determining, by the one or more computers and for at least some of the requests, that the limited available inventory of the product of the given advertisement is greater than zero; and providing, by the one or more computers, the given advertisement in response to the determination that the limited available inventory of the product is greater than zero; reserving, by the one or more computers, the product for a specified amount of time after providing the given advertisement during which purchase of the product is able to be completed through a user device that received the given advertisement; during the specified amount of time, not providing, by the one or more computers, the given advertisement in response to other requests from other user devices; determining, by the one or more computers, that the purchase of the product was not completed during the specified amount of time; in response to the purchase of the product not being completed during the specified amount of time, providing, by the one or more computers, the given advertisement in response to one or more of the multiple requests; receiving, by the one or more computers and over a network, conversion information indicating one or more conversions attributed to the given advertisement when provided responsive to the one or more of the multiple requests; and determining, by the one or more computers and based on a detected number of conversions and the predefined number of conversions, that the limited available inventory has been depleted to a depleted level at which Appeal 2019-002489 Application 14/337,559 3 additional conversions provided by further distribution of the given advertisement will fail to be fulfilled because of the depleted level of the inventory of the product; discontinuing, by the one or more computers, distribution of the given advertisement in response to subsequent requests following the determination that additional conversions provided by further distribution of the given advertisement will fail to be fulfilled because of the depleted level of the inventory of the product; and distributing, by the one or more computers, different advertisements in response to the subsequent requests. THE REJECTION Claims 37, 39, 40, 42, 44, 45, 47, 48, 50, 51, 53, 55, and 56 are rejected under 35 U.S.C. § 101 as directed to a judicial exception without significantly more. ANALYSIS 35 U.S.C. § 101 REJECTION We will not sustain the rejection of claims 37, 39, 40, 42, 44, 45, 47, 48, 50, 51, 53, 55, and 56 under 35 U.S.C. § 101. The Supreme Court set forth a framework for distinguishing patents that claim laws of nature, natural phenomena, and abstract ideas from those that claim patent-eligible applications of those concepts. First, . . . determine whether the claims at issue are directed to one of those patent-ineligible concepts. . . . If so, . . . then ask, “[w]hat else is there in the claims before us?” . . . To answer that question, . . . 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. . . . [The Court] 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] Appeal 2019-002489 Application 14/337,559 4 itself.” Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 217–218 (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 72–73 (2012)) (citations omitted). To perform this test, we must first determine whether the claims at issue are directed to a patent-ineligible concept. The Federal Circuit has explained that “the ‘directed to’ inquiry applies a stage-one filter to claims, considered in light of the [S]pecification, based on whether ‘their character as a whole is directed to excluded subject matter.’” See Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016) (quoting Internet Patents Corp., 790 F.3d 1343, 1346 (Fed. Cir. 2015)). It asks whether the focus of the claims is on a specific improvement in relevant technology or on a process that itself qualifies as an “abstract idea” for which computers are invoked merely as a tool. See id. at 1335–36. In so doing we apply a “directed to” two prong test: 1) evaluate whether the claim recites a judicial exception, and 2) if the claim recites a judicial exception, evaluate whether the judicial exception is integrated into a practical application. 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50, 50–57 (Jan. 7, 2019) (“Revised Guidance”). The Examiner determines that the claims are directed to the fundamental economic practice of advertising based on inventory availability. (Final Act. 3). The Examiner finds that the claims automate the fundamental economic practice and involve only a generic computer identifying and waiting for a time period to remove the product for sale and then re-introduce it for sale. (Id. at 4). The Specification discloses that a user making a transaction can reserve an item for some specified time in which the user can complete Appeal 2019-002489 Application 14/337,559 5 conversions (e.g., a time in which the user can purchase the item). The user can use the specified time to complete the transaction including payment as well as to interact with the seller. Once the item has been reserved, the ad is not presented to any other potential buyers unless the user fails to complete the transaction within the specified time. (Spec. ¶ 49). Appellant argues that the claims recite an inventive concept. Specifically, Appellant argues by ensuring that a given user that has been provided an advertisement for a particular product is afforded an opportunity to complete an online purchase of that particular product, which can take some time, rather than simply allowing another user to purchase that particular product while the particular user continues to complete the steps required to complete the online purchase. Specifically, the claims require that “multiple requests for content” be responded to by “reserving . . . the product for a specified amount of time after providing the given advertisement during which purchase of the product is able to be completed through a user device that received the given advertisement,” and “during the specified amount of time, not providing the given advertisement in response to other requests from other user devices.” (Claim 37). Appeal Br. 6. According to Appellant, the invention addresses the Internet problem of an automated system continuing to distribute an advertisement after all the inventory of the item has been depleted. (id. at 7). Appellant also argues that the claims are uniquely applicable to the online scenario and the ability to halt distribution of ads for some period of time after distribution of the ad to a particular user device and then restart distribution after that period concludes. This is not possible in the offline publication scenario because the publications have already been printed and distributed to many other Appeal 2019-002489 Application 14/337,559 6 users. Appellant argues that the claimed subject matter provides an improvement over traditional systems that would continue to distribute advertisements for a product irrespective of whether a purchase of that product could be completed. (id at 9). In support of this argument, Appellant relies on DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014). We are persuaded by the Appellant’s argument, that the claims amount to more than any abstract idea recited in the claims. As such, even if the Examiner is correct that the claims recite an abstract idea, we find that the claims recite significantly more than any such abstract idea. The claims address the business challenge of reserving the product for a specified amount of time after providing the advertisement during which purchase of the product is able to be completed. This challenge is particular to a specific technological environment, such as the Internet and is deeply rooted in computer technology. Each independent claim is directed to improvements in the process of online advertising and transactions. Analogous to the claims at issue in DDR, the instant claims do not merely recite the performance of some business practice known from the pre-Internet world along with the requirement to perform it on the Internet. Instead, the claimed solution is necessarily rooted in computer technology in order to overcome a problem specifically arising in the realm of the Internet and computer networks. The claims thus recite significantly more than the abstract idea of advertising based on inventory availability In view of the foregoing, we reverse the Examiner’s rejection of the claims under 35 U.S.C. § 101. Appeal 2019-002489 Application 14/337,559 7 CONCLUSION We conclude the Examiner did err in rejecting claims 37, 39, 40, 42, 44, 45, 47, 48, 50, 51, 53, 55, and 56 under 35 U.S.C. § 101. In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 37, 39, 40, 42, 44, 45, 47, 48, 50, 51, 53, 55, 56 101 Eligibility 37, 39, 40, 42, 44, 45, 47, 48, 50, 51, 53, 55, 56 REVERSED Copy with citationCopy as parenthetical citation