Xiong, True et al.

Patent Trials and Appeals Board

Dec 31, 2019

13312210 - (D) (P.T.A.B. Dec. 31, 2019)

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.
13/312,210 12/06/2011 True Xiong 114514-072UT1 1787
103865 7590 12/31/2019
Procopio - SPE
525 B Street
Suite 2200
San Diego, CA 92101
EXAMINER
MISIASZEK, AMBER ALTSCHUL
ART UNIT PAPER NUMBER
3624
NOTIFICATION DATE DELIVERY MODE
12/31/2019 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):
docketing@procopio.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte TRUE XIONG, LEO PEDLOW,
VIRAL MEHTA, ERIC HOLCOMB and KATHY FIELDER
___________

Appeal 2018–008241
Application 13/312,210
Technology Center 3600
____________

Before CARL W. WHITEHEAD JR., JEFFREY S. SMITH
and RUSSELL E. CASS, Administrative Patent Judges.

WHITEHEAD JR., Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant is appealing the final rejection of claims 1–15 under
35 U.S.C. § 134(a).1 Appeal Brief 2. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies Sony Corporation as the real party in interest.
Appeal Brief 2.
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Introduction
The invention is directed to “live streaming of contents and services,
and more specifically, to placing advertisement, informational and/or
promotional material to the contents and services being streamed live to
client devices.” Specification 1.
Representative Claim
1. A method of placing targeted advertisement, informational or
promotional material into a live stream event streamed to a client
device, the method comprising:
establishing, by an advertising computer, a private relationship
with the client device;
receiving, at the advertising computer, statistical studies
performed of a pattern of behavior of client devices in private
relationships with respect to contents and services streamed live to the
client devices,
wherein the pattern of behavior of the client devices in the
private relationships includes characteristics of users of the client
devices and interface hardware coupled to the client devices;
preparing and storing, at the advertising computer, the
advertisement, informational or promotional material based on the
statistical studies so that the targeted advertisement, informational or
promotional material can be streamed live from the advertising
computer to the client device within an infrastructure of the private
relationship;
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selecting, by the advertising computer, from the stored
advertisement, informational or promotional material targeted to a
user of the client device; and
automatically placing, by the advertising computer, the selected
advertisement, informational or promotional material into a
temporally and spatially appropriate position of the live stream event
streamed to the client device subsequent to the establishment of the
private relationship,
wherein a type of the advertisement, informational or
promotional material streamed live into the temporally and spatially
appropriate position of the live stream event is based on factors
including a phase of the live stream event, a location of the client
device, a timing of the client device’s entry into the live stream event,
and capabilities of the client device.
Appeal Brief 15–16 (Claims Appendix).
Rejection on Appeal
Claims 1–15 stand rejected under 35 U.S.C. § 101 because the
claimed invention is directed to patent-ineligible subject matter. Final
Action 3–7.

ANALYSIS
Rather than reiterate the arguments of Appellant and the Examiner,
we refer to the Appeal Brief (filed December 18, 2018), the Final Action
(mailed May 18, 2017) and the Answer (mailed April 26, 2018), for the
respective details.
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The Examiner determines the claims are patent ineligible under
35 U.S.C. § 101. See Final Action 2. As discussed below, we agree with the
Examiner’s determination because the claims are directed to an abstract idea
comprising commercial or legal interactions (advertising, marketing), a
certain method of organizing human activity, and do not include additional
elements that are sufficient to amount to significantly more than the abstract
idea. See Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 573 U.S. 208, 217 (2014)
(describing the two-step framework “for distinguishing patents that claim
laws of nature, natural phenomena, and abstract ideas from those that claim
patent-eligible applications of those concepts”).
After the mailing of the Answer and the filing of the Brief in this case,
the USPTO published revised guidance on the application of § 101. 2019
Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7,
2019) (hereinafter “Memorandum”).2 Under the Memorandum, the Office
first looks to whether the claim recites:
(1) any judicial exceptions, including certain groupings of
abstract ideas (i.e., mathematical concepts, certain methods of
organizing human activity such as a fundamental economic
practice, or mental processes); and

2 In January 2019, the United States Patent and Trademark Office
(“USPTO”) published revised guidance on the application of 35 U.S.C.
§ 101. 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed.
Reg. 50 (January 7, 2019) (“2019 Guidance”), updated by USPTO, October
2019 Update: Subject Matter Eligibility (available at https://www.uspto.gov/
sites/default/files/documents/peg_oct_2019_update.pdf) (jointly referred to
as “the 2019 Guidance”); see also October 2019 Patent Eligibility Guidance
Update, 84 Fed. Reg. 55942 (October 18, 2019) (notifying the public of the
availability of the October update).
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(2) additional elements that integrate the judicial exception into
a practical application (see MPEP § 2106.05(a)–(c), (e)–(h) (9th
ed. 2018).
Only if a claim (1) recites a judicial exception and (2) does not integrate
that exception into a practical application, does the Office then look to
whether the claim:
(3) adds a specific limitation beyond the judicial exception that
is not “well-understood, routine, conventional” in the field (see
MPEP § 2106.05(d)); or
(4) simply appends well-understood, routine, conventional
activities previously known to the industry, specified at a high
level of generality, to the judicial exception.
See Memorandum.
We are not persuaded the Examiner’s rejection is in error. Unless
otherwise indicated, we adopt the Examiner’s findings and conclusions as
our own. We add the following primarily for emphasis and clarification
with respect to the Memorandum.
Alice/Mayo—Step 1 (Abstract Idea)
Step 2A–Prongs 1 and 2 identified in the Revised Guidance
Step 2A, Prong One
Appellant contends “the claimed method relates to addressing a
problem with having to place targeted ad into a live stream.” Appeal Brief
10. Appellant further contends:
[C]laim 1 emphasizes the establishment of a private relationship
and the statistical studies of a pattern of behavior of the client
device, and the placement of the selected ad into a temporally
and spatially appropriate position within the live stream event
subsequent to the establishment of the private relationship. That
is, the claim does not recite a basic concept that is similar to any
abstract idea previously identified by the courts.
Appeal Brief 11.
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The Specification discloses:
The type of advertisement, informational and/or promotional
material for contents and services being streamed live to the
client devices can be based on several factors. The factors can
include the phase of the live stream event (e.g., the half time of a
sporting event), the physical location of the client device (e.g.,
indicated by its IP address), the timing of the client device’s entry
into the stream (e.g., just when the batter in a baseball game hits
a homerun), the capabilities of the client device (e.g., that the
client device is a 3-D capable device), and other personal
information of the user of the client device known to the source
host (e.g., that the user is a student who likes college football).
Specification 5–6.
Claim 1 recites a “method of placing targeted advertisement,
informational or promotional material into a live stream event streamed to a
client device ” including the steps of:
1. establishing, by an advertising computer, a private
relationship with the client device;
2. receiving, at the advertising computer, statistical studies
performed of a pattern of behavior of client devices in private
relationships with respect to contents and services streamed live
to the client devices;
3. wherein the pattern of behavior of the client devices in the
private relationships includes characteristics of users of the
client devices and interface hardware coupled to the client
devices;
4. preparing and storing, at the advertising computer, the
advertisement, informational or promotional material based on
the statistical studies so that the targeted advertisement,
informational or promotional material can be streamed live
from the advertising computer to the client device within an
infrastructure of the private relationship;
5. selecting, by the advertising computer, from the stored
advertisement, informational or promotional material targeted
to a user of the client device;
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6. automatically placing, by the advertising computer, the
selected advertisement, informational or promotional material
into a temporally and spatially appropriate position of the live
stream event streamed to the client device subsequent to the
establishment of the private relationship;
7. wherein a type of the advertisement, informational or
promotional material streamed live into the temporally and
spatially appropriate position of the live stream event is based
on factors including a phase of the live stream event, a location
of the client device, a timing of the client device’s entry into the
live stream event, and capabilities of the client device.
These steps comprise “commercial or legal interactions” in the form of
“advertising, marketing, or sales activities” which the Memorandum
identifies as one of the “certain methods of organizing human activity” that
constitutes an abstract idea. Memorandum, Section I (Groupings of Abstract
Ideas), at 52; see also Specification 1–4. Our reviewing court has found
claims to be directed to an abstract idea when they recited similar subject
matter. See Bancorp, 687 F.3d at 1280 (concluding that “managing a stable
value protected life insurance policy by performing calculations and
manipulating the results” is an abstract idea); see also buySAFE, Inc. v.
Google, Inc., 765 F.3d. 1350, 1355 (Fed. Cir. 2014) (holding that concept of
“creating a contractual relationship—a ‘transaction performance guaranty’”
is an abstract idea); Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed
Cir. 2014) (holding that claim “describ[ing] only the abstract idea of
showing an advertisement before delivering free content” is patent
ineligible); In re Ferguson, 558 F.3d 1359, 1364 (Fed Cir. 2009) (holding
methods “directed to organizing business or legal relationships in the
structuring of a sales force (or marketing company)” to be ineligible).
Therefore, we conclude the claims recite an abstract idea pursuant to Step
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2A, Prong One of the Memorandum. See Memorandum, Section III(A)(1)
(Prong One: Evaluate Whether the Claim Recites a Judicial Exception).

Step 2A, Prong Two (Integration into a Practical Application)
Under Prong Two of the Memorandum, we must determine “whether the
claim as a whole integrates the recited judicial exception into a practical
application of the exception.” It is noted that a “claim that integrates a
judicial exception into a practical application will apply, rely on, or use the
judicial exception in a manner that imposes a meaningful limit on the
judicial exception, such that the claim is more than a drafting effort designed
to monopolize the judicial exception.” Memorandum, Section III(A)(2).
Appellant argues, “when looked at as a whole, independent claim 1 is
directed to a patentable, technological improvement over the existing
advertising in live stream events” and, further, “claim 1 uses limited
rules/steps in a process specifically designed to achieve an improved
technological result in the conventional industry practice.” Appeal Brief 12.
Appellant contends, “[a]lthough claim 1 broadly and categorically claims
placing targeted advertisement, informational or promotional material into a
live stream event, claim 1 is still limited to placing targeted advertisement,
informational or promotional material into a live stream event streamed to a
client device.” Appeal Brief 13.
As the Federal Circuit has explained, a “claim for a new abstract idea
is still an abstract idea.” Synopsis, Inc. v. Mentor Graphics Corp., 839 F.3d
1138, 1151 (Fed. Cir. 2016). Even assuming the technique claimed was
“[g]roundbreaking, innovative, or even brilliant,” that would not be enough
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for the claimed abstract idea to be patent eligible. See Ass’n for Molecular
Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 591 (2013).
Further, we find Appellant’s claims are distinguished from those
claims that our reviewing court has found to be patent eligible by virtue of
reciting technological improvements to a computer system. See, e.g., DDR
Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1249, 1257 (Holding that
claims reciting computer processor for serving “composite web page” were
patent eligible because “the claimed solution is necessarily rooted in
computer technology in order to overcome a problem specifically arising in
the realm of computer networks.”); see also Visual Memory LLC v. NVIDIA
Corp., 867 F.3d 1253, 1259 (Fed. Cir. 2017) (holding that claims directed to
“an improved computer memory system” having many benefits were patent
eligible); and Appeal Brief 11–13.
In McRO,3 the Federal Circuit concluded that the claim, when
considered as a whole, was directed to a “technological improvement over
the existing, manual 3-D animation techniques” through the “use [of] limited
rules . . . specifically designed to achieve an improved technological result in
conventional industry practice.” McRO, 837 F.3d at 1316. Specifically, the
Federal Circuit found that the claimed rules allow computers to produce
accurate and realistic lip synchronization and facial expressions in animated
characters that previously could only be produced by human animators; and
the rules are limiting because they define morph weight sets as a function of
phoneme sub-sequences. McRO, 837 F.3d at 1313.

3 McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299, 1303 (Fed.
Cir. 2016).
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We find no evidence of record here that the present situation is like the
one in McRO where computers were unable to make certain subjective
determinations, i.e., regarding morph weight and phoneme timings, which
could only be made prior to the claimed invention by human animators. See
Appeal Brief 11–13. The Background section of the McRO ‘576 patent
includes a description of the admitted prior art method and the shortcomings
associated with that prior method. See McRO, 837 F.3d at 1303–06. There is
no comparable discussion in Appellant’s Specification or elsewhere of
record.
Subsequently, we do not find Appellants’ arguments persuasive
because the claims utilize an advertising computer, as well as, a client’s
device without any improvement to the functioning of the devices. See
Specification 5–7 (“The implementation of the above factors in
incorporating the advertisement, informational and/or promotional material
into the contents and services being streamed live can be facilitated by
configuring the live streaming system within the infrastructure of an existing
private relationship such as a server-client relationship.”); see also Enfish,
LLC v. Microsoft Corp., 822 F.3d 1327, 1335–36 (Fed. Cir. 2016) (“[W]e
find it relevant to ask whether the claims are directed to an improvement to
computer functionality versus being directed to an abstract idea . . . the focus
of the claims is on the specific asserted improvement in computer
capabilities (i.e., the self-referential table for a computer database) or,
instead, on a process that qualifies as an ‘abstract idea’ for which computers
are invoked merely as a tool.”). The claims do not recite an additional
element or elements that reflect an improvement in the functioning of a
computer, or an improvement to any other technology or technical field. See
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Alice, 573 U.S. at 222 (“In holding that the process was patent ineligible, we
rejected the argument that ‘implement[ing] a principle in some specific
fashion’ will ‘automatically fal[l] within the patentable subject matter of
§ 101.’”) (quoting Parker v. Flook, 437 U.S. 584, 593 (1978)).
We detect no additional element (or combination of elements) recited
in Appellant’s representative claim 1 that integrates the judicial exception
into a practical application. See Memorandum, Section III(A)(2). For
example, Appellant’s claimed additional elements (e.g., “advertising
computer” “client’s device”): (1) do not improve the functioning of a
computer or other technology; (2) are not applied with any particular
machine (except for a generic computer); (3) do not effect a transformation
of a particular article to a different state; and (4) are not applied in any
meaningful way beyond generally linking the use of the judicial exception to
a particular technological environment, such that the claim as a whole is
more than a drafting effort designed to monopolize the exception. See
MPEP §§ 2106.05(a)-(c), (e)-(h).
Accordingly, we determine the claim does not integrate the recited
judicial exception into a practical application. See Memorandum, Section
III(A)(2) (Prong Two: If the Claim Recites a Judicial Exception, Evaluate
Whether the Judicial Exception Is Integrated Into a Practical Application).

Alice/Mayo—Step 2 (Inventive Concept)
Step 2B identified in the Memorandum
Step 2B
Next, we determine whether the claim includes additional elements
that provide significantly more than the recited judicial exception, thereby
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providing an inventive concept. Alice, 573 U.S. at 217–18 (quoting Mayo,
566 U.S. at 72–73).
Appellant argues, “claim 1 is more than simply using a computer as a
tool to automate conventional activity” based upon:
(a) establishing a private relationship with the client device; (b)
receiving statistical studies performed of a pattern of behavior of
client devices in private relationships with respect to contents
and services streamed live to the client devices; (c) preparing and
storing the ad based on the statistical studies so that the targeted
ad can be streamed live within an infrastructure of the private
relationship; and (d) selecting and placing the selected ad into a
temporally and spatially appropriate position of the live stream
event subsequent to the establishment of the private relationship.
Appeal Brief 13.
In Bascom, our reviewing court found that while the claims of the
patent were directed to an abstract idea, the patentee alleged an “inventive
concept can be found in the ordered combination of the claim limitations
that transform the abstract idea of filtering content into a particular, practical
application of that abstract idea.” Bascom Global Internet Services, Inc. v.
AT&T Mobility LLC, 827 F.3d 1341, 1352. In particular, the patent claimed
“a technology-based solution (not an abstract-idea-based solution
implemented with generic technical components in a conventional way) to
filter content on the Internet that overcomes existing problems with other
Internet filtering systems.” Bascom, 827 F.3d at 1351. Claim 1 is
distinguishable, as it recites an abstract-idea-based solution, that is, a
targeted advertisement method, implemented with a generic technical
component (advertising computer), in a conventional way. (See
Specification 5–7). Therefore, we are not persuaded that ordered
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combinations of steps in claim 1 provide an inventive concept. See
Memorandum 56.
Accordingly, we conclude claims 1–15 are directed to commercial or
legal interactions (advertising/marketing), which are among the certain
methods of organizing human activity identified in the Memorandum that
constitute an abstract idea, and that the claims do not recite limitations that
amount to significantly more than the abstract idea itself. We sustain the
Examiner’s 35 U.S.C. § 101 rejection of claims 1–15.

CONCLUSION
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–15 101 Eligibility 1–15

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1). See 37 C.F.R.
§ 1.136(a)(1)(v).

AFFIRMED