Ex Parte Barbieri et al

Patent Trial and Appeal Board

Jan 17, 2019

13810242 (P.T.A.B. Jan. 17, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/810,242
22913 7590
Workman Nydegger
60 East South Temple
Suite 1000
01/15/2013
01/22/2019
Salt Lake City, UT 84111
FIRST NAMED INVENTOR
Mauro Barbieri
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.
18570.237 1098
EXAMINER
LONG,FONYAM
ART UNIT PAPER NUMBER
3626
NOTIFICATION DATE DELIVERY MODE
01/22/2019 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@wnlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MAURO BARBIERI,
SERVERIUS PETRUS PAULUS PRONK,
and JOHANNES HENRICUS MARIA KORST
Appeal2017---005855
Application 13/810,242
Technology Center 3600
Before MURRIEL E. CRAWFORD, ANTON W. PETTING, and
BIBHU R. MOHANTY, Administrative Patent Judges.
PETTING, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE 1
Mauro Barbieri, Serverius Petrus Paulus Pronk, and Johannes Henricus
Maria Korst (Appellants) seek review under 35 U.S.C. § 134 of a final
rejection of claims 1--4, 6-10, 12-14, and 16-19, the only claims pending in
1 Our decision will make reference to the Appellants' Appeal Brief ("Br.,"
filed June 21, 2016) and the Examiner's Answer ("Ans.," mailed December
1, 2016), and Final Action ("Final Act.," mailed January 21, 2016).
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Application 13/810,242
the application on appeal. We have jurisdiction over the appeal pursuant to
35 U.S.C. § 6(b).
The Appellants invented a way of replacing an advertisement.
Specification 1 :2-3.
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 method for rendering an advertisement, the method
being executed by an apparatus that comprises a user interface
and a processor, the method comprising:
[ 1] identifying, by the processor, whether a current
advertisement received or did not receive a negative input;
[2] estimating, by the processor, which one or more features of
the current advertisement caused the negative input,
the estimating being based at least partially on a
discriminative power of the one or more features of the
current advertisement,
the one or more features of the current advertisement
being arranged in a feature space configured in the
apparatus and accessible by the processor,
the feature space comprising features associated with
advertisements;
[3] selecting, by the processor, a new advertisement that differs
from the current advertisement,
and
the selecting being based at least partially on a distance
in the feature space between one or more features of the
new advertisement and the estimated one or more
features of the current advertisement;
[ 4] replacing, by the processor, the current advertisement with
the new advertisement.
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The Examiner relies upon the following prior art:
Broder US 2009/0254512 Al
Hegeman US 2011/0106630 Al
Novikov US 2011/0153421 Al
Kenedy US 8,386,519 B2
Oct. 08, 2009
May 05, 2011
June 23, 2011
Feb.26,2013
Claims 1--4, 6-10, 12-14, and 16-19 stand rejected under 35 U.S.C.
§ 112(a) as lacking a supporting written description within the original
disclosure. 2
Claims 1--4, 6-10, 12-14, and 16-19 stand rejected under 35 U.S.C.
§ 101 as directed to a judicial exception without significantly more.
Claims 1--4, 6-10, 12-14, 17, and 19 stand rejected under 35 U.S.C.
§ I03(a) as unpatentable over Novikov, Broder, and Kenedy.
Claims 16 and 18 stand rejected under 35 U.S.C. § I03(a) as
unpatentable over Novikov, Broder, Kenedy, and Hegeman.
ISSUES
The issues of written description matter tum primarily on whether the
Specification provides species support for the genus terms used in the
claims.
2 A rejection under 35 U.S.C. § 112(b) was withdrawn. Ans. 3--4.
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The issues of eligible subject matter tum primarily on whether the claims
recite more than abstract conceptual advice of what a computer is to provide
without implementation details.
The issues of obviousness tum primarily on whether the prior art
describes replacing an advertisement.
FACTS PERTINENT TO THE ISSUES
The following enumerated Findings of Fact (FF) are believed to be
supported by a preponderance of the evidence.
Facts Related to Claim Construction
01. The disclosure contains no lexicographic definition of
"discriminative power."
02. The ordinary meaning of "discriminative" in the context of the
invention is drawing distinctions. 3
03. The disclosure contains no lexicographic definition of "feature
space."
04. The disclosure contains no lexicographic definition of
"replacing."
05. The ordinary meaning of "replace" in the context of the
invention is to take the place of, or provide a substitute for. 4
3 American Heritage Dictionary, 2018
https://www.ahdictionary.com/word/search.html?q=discriminative
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Facts Related to Appellants' Disclosure
06. The dissimilarity between the new and current advertisements
is calculated using a distance measure in the advertisements
feature space (e.g. the Jaccard distance 5). Spec. 9:20-22.
Facts Related to the Prior Art
Novikov
07. Novikov is directed to social networking, and more specifically
to combining social networking system content and
advertisements in a social networking environment. N ovikov
para. 1.
08. Novikov's social networking system uses information obtained
from and about its users to select social networking content and
advertising for presentation to users in a way that optimizes for a
particular optimization goal. The social networking system may
be configured for one or more optimization goals, such as
maximizing monetization, sharing, user engagement, system
growth, communication, or any other goal of an administrator of
4 American Heritage Dictionary, 2018
https://www.ahdictionary.com/word/search.html?q=replace
5 The Jaccard distance, is a measure of how dissimilar two sets are. It is the
complement of the Jaccard index and can be found by subtracting the
J accard Index from 100%. The J accard similarity index compares members
for two sets to see which members are shared and which are distinct. It's a
measure of similarity for the two sets of data, with a range from 0% to
100%. The higher the percentage, the more similar the two populations.
http://www.statisticshowto.com/jaccard-index/
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the social networking system. The optimization goal may be
altered at any time, and in real time, depending on the needs or
priorities of the administrator of the system. Novikov para. 7.
09. Novikov describes a process by which feedback is collected
from users and is used in selecting content items, according to one
embodiment. The display server receives explicit feedback when
a user rates content items provided. Novikov para. 80.
10. Novikov describes how stored feedback is used to select
content items. When the display server has indicated that certain
information ( e.g. a particular web page) has been requested by a
user and the content server requests content items for a display
from the selector , the selector can query for feedback from the
feedback store. The store returns any feedback available from the
user (e.g., ratings or actions of a user regarding prior content items
provided). The content item selector then applies this feedback in
selecting content items. For example, if the user gives poor
ratings to all travel ads provided, the selector can avoid travel ads
for that user. If the user interacts only with social ads and not
other ads, the selector can focus on social ads. The feedback can
be accumulated in the store and filtered in a variety of ways to
acquire trends for a given user, and the selector can apply this
information in a variety of ways to select items. Novikov para.
80.
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Broder
11. Broder is directed to computer networks, and more particularly,
to matching of advertisements with content provided over the
Internet. Broder para. 2.
Kenedy
12. Kenedy is directed to delivering personalized web search results
and online recommendations based on the pangenetic attributes of
individuals. More particularly, these approaches rely on
correlations determined between specific pangenetic attributes-
also referred to in this disclosure as pangenetic data-and
historical online behavior and preferences of users with respect to
information and offerings contained in webpages. Kenedy 1 :6-
15.
ANALYSIS
We begin by construing some unusual terms in the claims. There is no
lexicographic definition of "discriminative power," but the ordinary meaning
of discriminative is drawing distinctions. We therefore construe
"discriminative power" to mean capacity for drawing distinctions. There is
no lexicographic definition of "feature space." Its only use in the
Specification is in using a distance measure in the advertisements feature
space. The use of the words "distance" and "space" initially suggest some
measure of physical distance in some n----dimensional space. The
Specification, however, suggests the Jaccard distance, a measure of
statistical dissimilarity between data sets rather than physical distance, as an
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example. Thus a feature space is a set of features rather than some physical
space containing features. Similarly, "distance in the feature space between
one or more features of the new advertisement and the estimated one or
more features of the current advertisement" is a measure of statistical
dissimilarity between feature data sets in the advertisements.
Claims 1-4, 6-10, 12-14, and 16-19 rejected under 35 USC§ l 12(a) as
lacking a supporting written description within the original disclosure
The Examiner enters several rejections as to written description because
the claims recite several forms of genus and the Specification fails to show
possession of all species within the genus. The Examiner cites MPEP
2161.01 Computer Programming, Computer Implemented Inventions, and
35 U.S.C. 112(a) or Pre-AIA 35 U.S.C. 112, First Paragraph. Final Act. 8-
9. This MPEP section cites Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d
1336 (Fed. Cir. 2010) (en bane).
[A] generic claim may define the boundaries of a vast
genus of chemical compounds, and yet the question may still
remain whether the specification, including original claim
language, demonstrates that the applicant has invented species
sufficient to support a claim to a genus. The problem is
especially acute with genus claims that use functional language
to define the boundaries of a claimed genus. In such a case, the
functional claim may simply claim a desired result, and may do
so without describing species that achieve that result. But the
specification must demonstrate that the applicant has made a
generic invention that achieves the claimed result and do so by
showing that the applicant has invented species sufficient to
support a claim to the functionally-defined genus.
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Ariad Pharmaceuticals v. Eli Lilly and Co., 598 F.3d 1336, 1349 (Fed.
Cir. 2010).
[A] sufficient description of a genus instead requires the
disclosure of either a representative number of species falling
within the scope of the genus or structural features common to
the members of the genus so that one of skill in the art can
"visualize or recognize" the members of the genus. We
explained that an adequate written description requires a precise
definition, such as by structure, formula, chemical name,
physical properties, or other properties, of species falling within
the genus sufficient to distinguish the genus from other
materials. We have also held that functional claim language can
meet the written description requirement when the art has
established a correlation between structure and function. But
merely drawing a fence around the outer limits of a purported
genus is not an adequate substitute for describing a variety of
materials constituting the genus and showing that one has
invented a genus and not just a species.
Id. at 1350. See also LizardTech, Inc. v. Earth Resource Mapping, Inc.,
424 F.3d 1336, 1345 (Fed. Cir. 2005) for holding such written description
requirements in electrical and computer technology claims. In reviewing the
rejections, it is helpful to bear in mind that the Specification does not bulge
with disclosure at only 10 Yz pages. As the claim construction supra
indicates, this paucity of disclosure contains numerous unusual terminology
that are not lexicographically defined and provides negligible textual support
for those claim recitations.
The Examiner initially rejects the use of "feature space" as being
inadequately supported. Final Act. 9-10. The Examiner determines that the
Specification only uses the phrase once, and provides no description of what
it is or made of, how it would be created or instantiated, or help to one of
ordinary skill to understand what this means. The Examiner thus determines
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that there is no support for describing the genus other than providing a title,
and no support for showing that any of the species in the genus were in the
inventor's possession.
Appellants do not respond directly to this rejection, but instead parse the
claim and show where the Specification in some manner supports the parsed
portion. Br. 9--15. This only confirms the Examiner's determination that
there is exactly one place in the Specification that mentions "feature space"
and provides no additional support to understand what it is or how it is
constituted. Br. 10. This shows Appellants had possession of the title of the
genus, but no more. Appellants do not provide evidence that one of ordinary
skill would understand the term as it is used in the Specification. This is
insufficient under Ariad, as the Examiner determines. Ans. 6.
The Examiner next rejects the use of "estimated to have caused" as
being inadequately supported. Final Act. 11. The Examiner determines that
the Specification describes hypothesizing and not estimating.
Appellants do not respond directly to this rejection, but instead parse the
claim and show where the Specification in some manner supports the parsed
portion. Br. 9--15. This only confirms the Examiner's determination that the
Specification describes "hypothesized" and not "estimated." Br. 10. This
shows Appellants had possession of the hypothesizing, but no more.
Appellants do not provide evidence that one of ordinary skill would
understand the term "hypothesized" as it is used in the Specification to be
encompassed by the term "estimated" recited in the claims. This is
insufficient under Ariad, as the Examiner determines. Ans. 6.
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The Examiner next rejects the use of "detect whether the current
advertisement caused a negative input" as being inadequately supported with
respect to claims 13, 14, and 18. Final Act. 11-12. The Examiner
determines that the Specification describes hypothesizing and not detecting.
Appellants do not respond directly to this rejection, but instead parse the
claim and show where the Specification in some manner supports the parsed
portion. Br. 9-15. This only confirms the Examiner's determination that the
Specification describes "hypothesized" and not "detected." Br. 14. This
shows Appellants had possession of the hypothesizing, but no more.
Appellants do not provide evidence that one of ordinary skill would
understand the term "hypothesized" as it is used in the Specification to be
encompassed by the term "detected" recited in the claims. This is
insufficient under Ariad, as the Examiner determines. Ans. 12.
The Examiner next rejects the use of "calculate a plurality of products
between advertisements and the current advertisement" as being
inadequately supported with respect to claims 16 and 18. Final Act. 12-13.
Appellants do not respond directly to this rejection, but instead parse the
independent claims and show where the Specification in some manner
supports the parsed portion. Br. 9-15. Appellants do not comment on
claims 16 and 18. Thus this is uncontested.
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Claims 1-4, 6-10, 12-14, and 16-19 rejected under 35 USC§ 101 as
directed to a judicial exception without significantly more
STEP 12
Claim 1, as a method claim, recites one of the enumerated categories of
eligible subject matter in 35 U.S.C. § 101. The issue before us is whether it
is directed to a judicial exception without significantly more.
STEP 2
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, we
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]
itself."
Alice Corp., Pty. Ltd. v CLS Bank Intl, 573 U.S. 208, 217-18 (2014)
( citations omitted) ( citing Mayo Collaborative Services v. Prometheus
Laboratories, Inc., 566 U.S. 66 (2012)). To perform this test, we must first
determine what the claims are directed to. This begins by determining
6 For continuity of analysis, we adopt the steps nomenclature from 2019
Revised Patent Subject Matter Eligibility Guidance, 84 FR 50 (Jan. 7, 2019).
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whether the claims recite one of the judicial exceptions ( a law of nature, a
natural phenomenon, or an abstract idea). Then, if claims recite a judicial
exception, determining whether the claims at issue are directed to the recited
judicial exception, or whether the recited judicial exception is integrated into
a practical application of that exception. If the claims are directed to a
judicial exception, then finally determining whether the claims provide an
inventive concept because the additional elements recited in the claims
provide significantly more than the recited judicial exception.
STEP 2A Prong 1
Method claim 1 recites identifying data, estimating what data caused
what was identified, selecting a new ad, and replacing one ad with another.
Thus, claim 1 recites receiving, analyzing, and modifying data. None of the
limitations recite technological implementation details for any of these steps,
but instead recite only functional results to be achieved by any and all
possible means.
From this we see that claim 1 does not recite the judicial exceptions of
either natural phenomena or laws of nature. The next issue is whether it
recites the judicial exception of an abstract idea. To answer this, we next
determine whether it recites one of the concepts the Courts have held to be
lacking practical application, viz. mathematical concepts 7, certain methods
7 See e.g., Gottschalkv. Benson, 409 U.S. 63, 71-72 (1972); Bilski v.
Kappas, 561 U.S. 593, 611 (2010); Mackay Radio & Telegraph Co. v. Radio
Corp. of Am., 306 U.S. 86, 94 (1939); SAP America, Inc. v. InvestPic, LLC,
898 F.3d 1161, 1163 (Fed. Cir. 2018)
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of organizing human interactions 8, including fundamental economic
practices and business activities, or mental processes9•
The Examiner determines the claims to be directed to processing ( e.g.
advertising) commercial/contractual information. Final Act. 14.
The preamble to claim 1 recites that it is a method for rendering an
advertisement. The steps in claim 1 result in replacing one advertisement
with another absent any technological mechanism other than a conventional
computer for doing so.
As to the specific limitations, limitations 1--4 are the steps associated
with performing what the claim produces and recite performing identifying
data, estimating features, and replacing an ad with a selected ad, which is
simply replacing an ad based on judgement. To advocate replacing an ad
based on judgement is conceptual advice for results to be obtained and not
technological operations.
The Specification at 1 :2-3 recites that the invention relates to replacing
an advertisement. Thus, all this intrinsic evidence shows that claim 1 is
directed to replacing an advertisement, i.e. advertising. This is consistent
with the Examiner's determination.
8 See e.g., Bilski, 561 U.S. at 628; Alice, 573 U.S. at 219-20; Ultramercial,
Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed Cir. 2014); Smart Systems
Innovations, LLC v. Chicago Transit Authority, 873 F.3d 1364, 1383 (Fed.
Cir. 2017); In re Marco Guldenaar Holding B. V., 2018 WL 6816331 (Fed.
Cir. 2018)
9 See e.g., Benson, 409 U.S. at 67; CyberSource Corp. v. Retail Decisions,
Inc., 654 F.3d 1366, 1371-1372 (Fed. Cir. 2011); Intellectual Ventures I
LLCv. Symantec Corp., 838 F.3d 1307, 1318 (Fed. Cir. 2016)
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The concept of advertising is a fundamental business practice long
prevalent in our system of commerce. The use of advertising is also a
building block of ingenuity in promoting commerce. Thus, advertising is an
example of a conceptual idea subject to the Supreme Court's "concern that
patent law not inhibit further discovery by improperly tying up the future use
of these building blocks of human ingenuity." See Alice, 573 U.S. at 216
( citations omitted). Claim 1 recites the idea of performing various
conceptual steps generically resulting in the advertising. As we determined
earlier, none of these steps recite specific technological implementation
details, but instead get to this result by advising one to decide to replace one
ad with another based on some negative input, guessing which feature
caused that negative input, and selecting the replacement based on some
statistical measure. Thus claim 1 is directed to advertising, which is a
fundamental business practice.
This in tum is an example of advertising as a certain method of
organizing human interactions because advertising is messaging to promote
sales, which is among the most notorious of organizing activities. The
concept of advertising as advised to be done by deciding to replace one ad
with another based on some negative input, guessing which feature caused
that negative input, and selecting the replacement based on some statistical
measure is designed to optimize the organization of sales activity. The steps
recited in claim 1 are part of selecting an ad based on what is perceived as
negative inputs and perceived relations between perceived features and some
space in the data.
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Our reviewing court has found claims to be directed to abstract ideas
when they recited similar subject matter. Ultramercial, Inc. v. Hulu, LLC,
772 F.3d 709, 715 (Fed. Cir. 2014).
Alternately, this is an example of concepts performed in the human mind
as mental processes because the steps of receiving, analyzing, and modifying
data mimic human thought processes, perhaps with paper and pencil, where
the data interpretation is perceptible only in the human mind and the process
recites estimating features and selecting an ad each of which is an exemplar
of human judgment.
From this we conclude that at least to this degree, the claims are directed
to the abstract idea of advertising by advising one to decide to replace one ad
with another based on some negative input, guessing which feature caused
that negative input, and selecting the replacement based on some statistical
measure.
STEP 2A Prong 2
The next issue is whether the claims not only recite, but are more
precisely directed to this concept itself or whether they are instead directed
to some technological implementation or application of, or improvement to,
this concept i.e. integrated into a practical application. 10
At the same time, we tread carefully in construing this
exclusionary principle lest it swallow all of patent law. At some
level, "all inventions ... embody, use, reflect, rest upon, or apply
laws of nature, natural phenomena, or abstract ideas." Thus, an
invention is not rendered ineligible for patent simply because it
involves an abstract concept. "[ A Jpplication[ s ]" of such
10 See, e.g., Alice, 573 U.S. at 223, discussing Diamond v. Diehr, 450 U.S.
175 (1981).
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concepts " 'to a new and useful end,' " we have said, remain
eligible for patent protection. Accordingly, in applying the §
101 exception, we must distinguish between patents that claim
the" 'buildin[g] block[s]' "of human ingenuity and those that
integrate the building blocks into something more.
Alice, 573 U.S. at 217 ( citations omitted).
The introduction of a computer into the claims does not alter the analysis
at Mayo step two.
the mere recitation of a generic computer cannot
transform a patent-ineligible abstract idea into a patent-eligible
invention. Stating an abstract idea "while adding the words
'apply it"' is not enough for patent eligibility. Nor is limiting
the use of an abstract idea "'to a particular technological
environment."' Stating an abstract idea while adding the words
"apply it with a computer" simply combines those two steps,
with the same deficient result. Thus, if a patent's recitation of a
computer amounts to a mere instruction to "implement[t]" an
abstract idea "on ... a computer," that addition cannot impart
patent eligibility. This conclusion accords with the preemption
concern that undergirds our § 101 jurisprudence. Given the
ubiquity of computers, wholly generic computer
implementation is not generally the sort of "additional
feature[ e ]" that provides any "practical assurance that the
process is more than a drafting effort designed to monopolize
the [ abstract idea] itself."
Alice, 573 U.S. at 223-24 ( citations omitted).
"[T]he relevant question is whether the claims here do more than simply
instruct the practitioner to implement the abstract idea [] on a generic
computer." Alice, 573 U.S. at 225. They do not.
Taking the claim elements separately, the function performed by the
computer at each step of the process is purely functional, devoid of
implementation details. Steps 1 - 4 recite generic computer processing
expressed in functional terms to be performed by any and all possible means
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and so present no more than abstract conceptual advice. All purported
inventive aspects reside in how the data is interpreted and the results desired,
and not in how the process physically enforces such a data interpretation or
in how the processing technologically achieves those results.
Viewed as a whole, Appellants' method claims simply recite the concept
of advertising as performed by a generic computer. To be sure, the claims
recite doing so by advising one to decide to replace one ad with another
based on some negative input, guessing which feature caused that negative
input, and selecting the replacement based on some statistical measure. But
this is no more than abstract conceptual advice on the parameters for such
advertising and the generic computer processes necessary to process those
parameters, and do not recite any particular implementation.
The method claims do not, for example, purport to improve the
functioning of the computer itself. Nor do they effect an improvement in
any other technology or technical field. The 1 O+ pages of specification spell
out different generic equipment 11 and parameters that might be applied using
this concept and the particular steps such conventional processing would
entail based on the concept of advertising under different scenarios. They do
not describe any particular improvement in the manner a computer
functions. Instead, the claims at issue amount to nothing significantly more
than an instruction to apply the abstract idea of advertising by advising one
to decide to replace one ad with another based on some negative input,
guessing which feature caused that negative input, and selecting the
11 The Specification describes using a suitably programmed computer. Spec.
11:10-12.
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replacement based on some statistical measure using some unspecified,
generic computer. Under our precedents, that is not enough to transform an
abstract idea into a patent-eligible invention. See Alice, 573 U.S. at 225-26.
None of the limitations reflect an improvement in the functioning of a
computer, or an improvement to other technology or technical field, applies
or uses a judicial exception to effect a particular treatment or prophylaxis for
a disease or medical condition, implements a judicial exception with, or uses
a judicial exception in conjunction with, a particular machine or manufacture
that is integral to the claim, effects a transformation or reduction of a
particular article to a different state or thing, or applies or uses the judicial
exception in some other 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.
We conclude that claim 1 is directed to advising one to decide to replace
one ad with another based on some negative input, guessing which feature
caused that negative input, and selecting the replacement based on some
statistical measure to achieve the functional result of advertising as
distinguished from a technological improvement for achieving or applying
that result. The claim does not integrate the judicial exception into a
practical application.
STEP 2B
The next issue is whether the claims provide an inventive concept
because the additional elements recited in the claims provide significantly
more than the recited judicial exception. Taking the claim elements
separately, the function performed by the computer at each step of the
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process is purely conventional. Using a computer for receiving, analyzing,
and modifying data amounts to electronic data query and retrieval----one of
the most basic functions of a computer. All of these computer functions are
generic, routine, conventional computer activities that are performed only
for their conventional uses. See Elec. Power Grp. v. Alstom S.A., 830 F.3d
1350, 1353 (Fed. Cir. 2016). Also see In re Katz Interactive Call Processing
Patent Litigation, 639 F.3d 1303, 1316 (Fed. Cir. 2011) ("Absent a possible
narrower construction of the terms 'processing,' 'receiving,' and 'storing,' ..
. those functions can be achieved by any general purpose computer without
special programming"). None of these activities are used in some
unconventional manner nor do any produce some unexpected result.
Appellants do not contend they invented any of these activities. In short,
each step does no more than require a generic computer to perform generic
computer functions. As to the data operated upon, "even if a process of
collecting and analyzing information is 'limited to particular content' or a
particular 'source,' that limitation does not make the collection and analysis
other than abstract." SAP America, Inc. v. InvestPic LLC, 898 F.3d 1161,
1168 (Fed. Cir. 2018).
Considered as an ordered combination, the computer components of
Appellants' method claims add nothing that is not already present when the
steps are considered separately. The sequence of data reception-analysis-
modification is equally generic and conventional or otherwise held to be
abstract. See Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed. Cir.
2014) (sequence of receiving, selecting, offering for exchange, display,
allowing access, and receiving payment recited an abstraction), Inventor
Holdings, LLC v. Bed Bath & Beyond, Inc., 876 F.3d 1372, 1378 (Fed. Cir.
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2017) (sequence of data retrieval, analysis, modification, generation, display,
and transmission), Two-Way Media Ltd. v. Comcast Cable Communications,
LLC, 874 F.3d 1329, 1339 (Fed. Cir. 2017) (sequence of processing, routing,
controlling, and monitoring). The ordering of the steps is therefore ordinary
and conventional.
We conclude that the claims do not provide an inventive concept because
the additional elements recited in the claims do not provide significantly
more than the recited judicial exception.
REMAINING CLAIMS
The remaining method claims merely describe process parameters. We
conclude that the method claims at issue are directed to a patent-ineligible
concept itself, and not to the practical application of that concept.
As to the structural claims, they
are no different from the method claims in substance.
The method claims recite the abstract idea implemented on a
generic computer; the system claims recite a handful of generic
computer components configured to implement the same idea.
This Court has long "warn[ ed] ... against" interpreting § 101 "in
ways that make patent eligibility 'depend simply on the
draftsman's art.'
Alice, 573 U.S. at 226. As a corollary, the claims are not directed to any
particular machine.
LEGAL CONCLUSION
From these determinations we further determine that the claims do not
recite an improvement to the functioning of the computer itself or to any
other technology or technical field, a particular machine, a particular
transformation, or other meaningful limitations. From this we conclude the
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claims are directed to the judicial exception of the abstract idea of
advertising without significantly more.
APPELLANTS' ARGUMENTS
As to Appellants' Appeal Brief arguments, we adopt the Examiner's
determinations and analysis from Final Action 14--17 and Answer 16-22 and
reach similar legal conclusions.
In particular, Appellants further argue that the asserted claims are
akin to the claims found patent-eligible in DDR Holdings, LLC v.
Hotels.com, L.P. 773 F.3d 1245 (Fed. Cir. 2014). Br. 24-26. In DDR
Holdings, the Court evaluated the eligibility of claims "address[ing] 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." Id. at 1257. There, the Court
found that the claims were patent eligible because they transformed the
manner in which a hyperlink typically functions to resolve a problem
that had no "pre-Internet analog." Id. at 1258. The Court cautioned,
however, "that not all claims purporting to address Internet-centric
challenges are eligible for patent." Id. For example, in DDR Holdings the
Court distinguished the patent-eligible claims at issue from claims found
patent-ineligible in Ultramercial. See id. at 1258-59 (citing Ultramercial,
772 F.3d 7 0 9, 715-16 (Fed. Cir. 2014)). As noted there, the Ultramercial
claims were "directed to a specific method of advertising and content
distribution that was previously unknown and never employed on the
Internet before." Id. at 1258 (quoting Ultramercial, 772 F.3d at 715-16).
Nevertheless, those claims were patent ineligible because they "merely
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recite[d] the abstract idea of 'offering media content in exchange for
viewing an advertisement,' along with 'routine additional steps such as
updating an activity log, requiring a request from the consumer to view the
ad, restrictions on public access, and use of the Internet."' Id.
Appellants' asserted claims are analogous to claims found ineligible in
Ultramercial and distinct from claims found eligible in DDR Holdings.
The ineligible claims in Ultramercial were directed to a method of using
advertising as an exchange or currency. 772 F.3d at 715. This is
similar to the instant use of advertising in the claims, which use an ad as a
replacement for another. The ineligible claims in Ultramercial recited
"providing [a] media product for sale at an Internet website;" "restricting
general public access to said media product;" "receiving from the
consumer a request to view [a] sponsor message;" and "if the sponsor
message is an interactive message, presenting at least one query to the
consumer and allowing said consumer access to said media product after
receiving a response to said at least one query." 772 F.3d at 712.
Similarly, Appellants' asserted claims recite receiving, analyzing, and
modifying data. This is precisely the type of Internet activity found
ineligible in Ultramercial.
At bottom, the claims recite functions to be performed by any and all
possible means, absent any technological details.
The claims thus do not go beyond "stating [ the relevant]
functions in general terms, without limiting them to technical
means for performing the functions that are arguably an
advance over conventional computer and network technology."
Affinity Labs of Texas, LLC v. Amazon.com Inc., 838 F.3d 1266, 1271
(2016).
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Claims 1-4, 6-10, 12-14, 17, and 19 rejected under 35 USC§ 103(a) as
unpatentable over Novikov, Broder, and Kenedy
We are persuaded by Appellants' argument that "Novak [sic, Novikov]
does not disclose, for example, replacing a current advertisement with a new
advertisement, since Novak provides future advertisements based on past
feedback." Br. 27. The Examiner responds that because Novikov's
selection of an advertisement differs from some advertisement placed into
Novikov's content store at an earlier time, this is a replacement. Ans. 27.
The definition of a replacement is to take the place of, or provide a substitute
for. An item that is selected cannot take the place of or provide a substitute
for an item not selected, which never was in place.
Claims 16 and 18 rejected under 35 USC§ 103(a) as unpatentable over
Novikov, Broder, Kenedy, and Hegeman
These claims depend from the claims in the prior rejection.
CONCLUSIONS OF LAW
The rejection of claims 1--4, 6-10, 12-14, and 16-19 under 35 U.S.C.
§ 112(a) as lacking a supporting written description within the original
disclosure is proper.
The rejection of claims 1--4, 6-10, 12-14, and 16-19 under 35 U.S.C.
§ 101 as directed to a judicial exception without significantly more is
proper.
The rejection of claims 1--4, 6-10, 12-14, 17, and 19 under 35 U.S.C.
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§ 103(a) as unpatentable over Novikov, Broder, and Kenedy is improper.
The rejection of claims 16 and 18 under 35 U.S.C. § 103(a) as
unpatentable over Novikov, Broder, Kenedy, and Hegeman is improper.
DECISION
The rejection of claims 1--4, 6-10, 12-14, and 16-19 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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