Ex Parte Bernstein et al

Patent Trial and Appeal Board

Aug 28, 2018

12462806 (P.T.A.B. Aug. 28, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO.
12/462,806
114629 7590
Bookoff McAndrews
2020 K Street, NW
Suite 400
FILING DATE
08/10/2009
08/30/2018
Washington, DC 20006
FIRST NAMED INVENTOR
Ari Bernstein
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.
08011.3053-00000 5969
EXAMINER
SORKOWITZ, DANIEL M
ART UNIT PAPER NUMBER
3681
NOTIFICATION DATE DELIVERY MODE
08/30/2018 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):
usptomail@bomcip.com
Kross@bomcip.com
eofficeaction@appcoll.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ARI BERNSTEIN, TAMI COHEN, and
TEDDYJAWDE
Appeal 2017-005991 1
Application 12/462,806
Technology Center 3600
Before MURRIEL E. CRAWFORD, MICHAEL W. KIM, and
PHILIP J. HOFFMANN, Administrative Patent Judges.
CRAWFORD, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is an appeal from the final rejection of claims 1-15 and 18-22.
We have jurisdiction to review the case under 35 U.S.C. §§ 134 and 6.
1 The Appellants identify Advertising.com LLC as the real party in interest.
See Appeal Br. 3.
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Application 12/462,806
The invention relates generally to selling and placing advertisements
on a network, and by additionally using keywords to filter selected
advertisements for exclusion. Spec. ,r,r 15, 17.
Claim 8 is illustrative:
8. A computer-implemented method for controlling the
display of advertisements on a web page, the web page including
text, the method comprising the following operations performed
by at least one processor:
storing, in a database system, a plurality of advertisements
from advertisers and, for each advertisement, at least
one keyword supplied by an advertiser to prevent
display of the advertisement;
receiving, over an electronic network, a request from a user
computer for advertising, wherein the request is
generated in accordance with instructions provided to
the user computer upon the user computer accessing a
web page of a content publisher that is different from
the advertiser, the web page including text;
m response to the request, selecting at least one
advertisement from the database as a candidate for
display on the web page;
comparing the at least one keyword supplied by the
advertiser to at least a subset of the text of the web
page; and
determining that the selected advertisement will not be
displayed on the web page based on a match in the
comparison between the advertiser-supplied keyword
and the subset of the text of the web page.
The Examiner rejects claims 1-15 and 18-22 under 35 U.S.C. § 101
as directed to ineligible subject matter in the form of abstract ideas.
The Examiner rejects claims 1--4, 6, 8-10, 12-14, and 18-22 under
35 U.S.C. § I02(e) as anticipated by Kovinsky (US 2008/0235085 Al, pub.
Sept. 25, 2008).
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The Examiner rejects claim 5 under 35 U.S.C. § 103(a) as
unpatentable over Kovinsky and Desikan (US 2005/0131758 Al, pub. June
16, 2005).
The Examiner rejects claims 7, 11, and 15 under 35 U.S.C. § I03(a) as
unpatentable over Kovinsky and Kwak (US 2008/0306809 Al, pub. Dec. 11,
2008).
We AFFIRM.
ANALYSIS
Patentable Sub;ect Matter
An invention is patent-eligible if it claims a "new and useful process,
machine, manufacture, or composition of matter." 35 U.S.C. § 101. The
Supreme Court, however, has long interpreted § 101 to include implicit
exceptions: "[l]aws of nature, natural phenomena, and abstract ideas" are
not patentable. E.g., Alice Corp. Pty. Ltd. v. CLS Bank Int 'l, 134 S. Ct.
2347, 2354 (2014).
In determining whether a claim falls within the excluded category of
abstract ideas, we are guided in our analysis by the Supreme Court's two-
step framework, described in Mayo and Alice. Id. at 2355 (citing Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 76-78 (2012)).
In accordance with that framework, we first determine whether the claim is
"directed to" a patent-ineligible abstract idea. See Alice, 134 S. Ct. at 2356
("On their face, the claims before us are drawn to the concept of
intermediated settlement, i.e., the use of a third party to mitigate settlement
risk."); Bilski v. Kappas, 561 U.S. 593, 611 (2010) ("Claims 1 and 4 in
petitioners' application explain the basic concept of hedging, or protecting
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against risk."); Diamond v. Diehr, 450 U.S. 175, 184 (1981) ("Analyzing
respondents' claims according to the above statements from our cases, we
think that a physical and chemical process for molding precision synthetic
rubber products falls within the § 101 categories of possibly patentable
subject matter."); Parker v. Flook, 437 U.S. 584, 594--95 (1978)
("Respondent's application simply provides a new and presumably better
method for calculating alarm limit values."); Gottschalk v. Benson, 409 U.S.
63, 64 (1972) ("They claimed a method for converting binary-coded decimal
(BCD) numerals into pure binary numerals.").
The patent-ineligible end of the spectrum includes fundamental
economic practices, Alice, 134 S. Ct. at 2357; Bilski, 561 U.S. at 611;
mathematical formulas, Parker, 437 U.S. at 594--95; and basic tools of
scientific and technological work, Gottschalk, 409 U.S. at 69. On the patent-
eligible side of the spectrum are physical and chemical processes, such as
curing rubber, Diamond, 450 U.S. at 184 n.7, "tanning, dyeing, making
waterproof cloth, vulcanizing India rubber, smelting ores," and a process for
manufacturing flour, Gottschalk, 409 U.S. at 69.
If the claim is "directed to" a patent-ineligible abstract idea, we then
consider the elements of the claim-both individually and as an ordered
combination-to assess whether the additional elements transform the nature
of the claim into a patent-eligible application of the abstract idea. Alice, 134
S. Ct. at 2355. This is a search for an "inventive concept"-an element or
combination of elements sufficient to ensure that the claim amounts to
"significantly more" than the abstract idea itself. Id.
In addition, the Federal Circuit has held that if a method can be
performed by human thought alone, or by a human using pen and paper, it is
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merely an abstract idea and is not patent-eligible under § 101. Cy her Source
Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1373 (Fed. Cir. 2011) ("[A]
method that can be performed by human thought alone is merely an abstract
idea and is not patent-eligible under§ 101.").
Claims involving data collection, analysis, and display are directed to
an abstract idea. Elec. Power Grp. v. Alstom S.A., 830 F.3d 1350, 1353
(Fed. Cir. 2016) (holding that "collecting information, analyzing it, and
displaying certain results of the collection and analysis" are "a familiar class
of claims 'directed to' a patent-ineligible concept"); see also In re TL!
Commc 'ns LLC Patent Litig., 823 F.3d 607, 611 (Fed. Cir. 2016);
FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1093-94 (Fed.
Cir. 2016).
Claims that recite an improvement to a particular computer
technology have been found patent eligible. See, e.g., McRO, Inc. v. Bandai
Namco Games Am. Inc., 837 F.3d 1299, 1314--15 (Fed. Cir. 2016)
( deterrnining clairns not abstract because they "focused on a specific
asserted improvement in computer animation").
Analysis
The Examiner determines that the claims "are directed to targeted
advertising comprising the steps of requesting an online advertisement,
establishing data sets of keywords and using the data sets for targeting
advertisements." Final Act. 3. The Examiner also determines that the
claims are similar to those found abstract in SmartGene, Inc. v. Advanced
Biological Laboratories, SA, 852 F.Supp.2d 42 (D.D.C. 2012), aff'd, 950
(Fed. Cir. 2014). Final Act. 3 ("comparing new and stored information and
using rules to identify options (SmartGene ). ").
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We agree with the Examiner's analysis of what the claims are directed
to. Independent method claim 8 stores advertisements, receives a request for
an advertisement, selects an advertisement, then compares a "keyword
supplied by the advertiser to at least a subset of the text of the web page, and
makes a "determination" of whether the keyword for the advertisement
matches some of the web page text. The Examiner's finding, of what
claim 8 is directed to, therefore, encompasses all the steps of claim 8.
Dependent claims 9-11 and 20 refine the sequence of operations, and limit
the scope of the selecting and determining steps, but do not fall outside the
scope of the abstract idea.
We also agree with the Examiner's finding that the abstract idea to
which claim 8 is directed is similar to those claims found to be abstract ideas
in SmartGene, which the court described as "the mental steps of comparing
new and stored information and using rules to identify medical options."
SmartGene, Inc. v. Advanced Biological Labs., SA, 555 F. App'x. 950, 955
(Fed. Cir. 2014). In claim 1 of SmartGene, the first generating of ranked
results based on comparing treatment regimens corresponds to the claimed
selecting of an advertisement based on matching keywords, and the second
generating of advisory information corresponds to the claimed filtering of
results.
We are not persuaded by the Appellants' argument that the Examiner
has failed to explain why the claims are directed to the abstract idea the
Examiner identifies. Appeal Br. 13. This is because the Appellants have
otherwise not asserted any error in the Examiner's finding, other than an
alleged shortcoming in an amount of explanation. The Examiner provided
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a case name (SmartGene), and an explanation of the similar concept
("comparing new and stored information and using rules to identify
options"), which we are persuaded fairly put Appellants on notice of the
thrust of the rejection. See In re Kronig, 539 F.2d 1300, 1302---03 (CCPA
1976).
We are not persuaded by the Appellants' argument that the Examiner
has failed to explain why the abstract idea identified is similar to those found
abstract by our reviewing courts. Appeal Br. 13. The Examiner has
articulated, for example, that the claims are similar to those in SmartGene,
explaining they similarly involve "comparing new and stored information
and using rules to identify options." Final Act. 3.
The Appellants assert "none of these concepts can possibly serve as
an accurate representation of the claims' 'character as a whole,' and merely
mentioning them together does not bring them in line with the character of
the claims." Appeal Br. 13. However, other than the Appellants'
unsupported assertion, no alleged error in the specific determinations, such
as whether the claims are similar or not to those in SmartGene, is advanced.
Rather, the Appellants assert that by mentioning several abstract ideas, the
Examiner "goes beyond" those abstract ideas. Appeal Br. 15. But no
argument or evidence is advanced by the Appellants as to how or why the
Examiner's findings "go[] beyond" the abstract ideas identified by the
courts.
Instead, the Appellants argue the claims are not directed to abstract
ideas because they do not pre-empt or monopolize the alleged abstract idea.
Appeal Br. 14; see also Reply Br. 2--4. We are not persuaded by the
Appellants' argument on pre-emption. While preemption may signal patent
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ineligible subject matter, the absence of complete preemption does not
demonstrate patent eligibility. Ariosa Diagnostics, Inc. v. Sequenom, Inc.,
788 F.3d 1371, 1379 (Fed. Cir. 2015); see also OIP Techs., Inc. v.
Amazon.com, Inc., 788 F.3d 1359, 1362---63 (Fed. Cir. 2015) ("[T]hat the
claims do not preempt all price optimization or may be limited to price
optimization in the ecommerce setting do not make them any less abstract.").
And, "[ w ]here a patent's claims are deemed only to disclose patent ineligible
subject matter under the Mayo framework, as they are in this case,
preemption concerns are fully addressed and made moot." Ariosa, 788 F.3d
at 1379.
The Appellants have, thus, failed to persuade us of error in the
Examiner's finding that claims 8-11 and 20 are directed to abstract ideas.
Instead, because the claims at issue essentially only collect and analyze
information, they are similar, as an additional example, to the abstract ideas
in Elec. Power Group, which involved "collecting information, analyzing it,
and displaying certain results of the collection and analysis." Elec. Power
Grp, 830 F.3d at 1353.
Turning to the next step of the Alice/ Mayo analysis, we look for an
"inventive concept" or "something more."
The Examiner finds the claims utilize "conventional technology" that
involves only "generic computing structures," and do not improve the
underlying computing structures, thus failing to involve an inventive concept
or something more. Final Act. 3--4.
We are not persuaded by the Appellants' argument that the claims are
inextricably tied to computer technology, citing DDR Holdings, LLC v.
Hotels.com, because they recite components such as a network, database,
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processor, user computer, and web page. Appeal Br. 15-16. Instead, as the
Appellants describe, the "computer system may be any suitable apparatus,
system or device, electronic, optical, or a combination thereof." (Spec.
,r 33), and is therefore simply a general purpose computer that implements
the abstract idea of collecting information, making selections, and filtering
those selections, which can otherwise be performed mentally by a human.
The Appellants' claims, which are generally related to "systems and
methods for selling and placing advertisements ('ads') over a
communications network" (Spec. ,r 6), are asserted as reciting an inventive
concept that transforms the abstract ideas of the claims into eligible subject
matter, because they "improve, among other things, electronic advertising
systems." Appeal Br. 1 7. The Appellants assert, citing Bascom Glob.
Internet Servs., Inc. v. AT&T Mobility LLC, that the "claims solve a
technical problem in implementation of web-based technology (see ,r [0004]
of the Specification)." Reply Br. 5. However, the cited section of the
Specification only describes a problem that unfiltered ad placement may be
"undesirable to that advertiser." Spec. ,r 4. The Appellants, thus, do not
identify any problem in web-based technology upon which the claims
improve.
The Appellants also cite to Enfish LLC v. Microsoft Corp. and
generally assert that the Examiner fails to specifically address the
"additional elements" of the claims, beyond asserting the computing devices
are generic, and that those "additional elements" yield results that address a
technical problem with "no 'conventional' counterpart." Appeal Br. 19. In
the Appeal Brief, no "additional elements" or "technical problem" are
identified. In the Reply Brief, the Appellants assert the claims "employ
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specific rules" to perform acts, but "conventional sales and marketing acts
are not within the scope of Appellant's claims." Reply Br. 6. Those
"specific rules" are not identified in the Briefs.
The Specification, however, describes:
Conventional advertisement placement systems provide
advertisers with the ability to bid on topics, which may be applied
to search engine results, content on a web page or content of a
website. Typically, a vector value is determined for the
advertisement and that vector value is compare[ d] to vector
values for a web page, web pages, a website or a URL. This same
convention may be employed with the invention. However, to
further refine the placement of an advertisement, or to ensure that
an advertisement is not placed in an undesirable location, a
further filter is employed.
Spec. ,r 17. The Appellants, thus, ostensibly argue that "determining that the
selected advertisement will not be displayed on the web page based on a
match in the comparison between the advertiser-supplied keyword and the
subset of the text of the web page" is the specific rule that is not
conventional, and which transforms the abstract idea into eligible subject
matter.
However, filtering, by matching words to determine an exclusion, is
really just a variation of matching words to determine an inclusive selection,
which the Examiner finds is conventional. We are not persuaded that merely
changing the matching from an inclusive to an exclusive operation, by
filtering instead of selecting, changes the abstract idea significantly, because
both involve matching. 2 Compare, for example, the Appellants' description
of matching to select an advertisement ("If the comparison results in a match
2 In addition, as we set forth below, the prior art of record discloses this
exact idea of filtering advertisements by keyword.
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the selected advertisement is displayed"), with Appellants' description of
matching to exclude an advertisement ("If the comparison results in a match
the selected advertisement is not displayed"). Spec. ,r,r 7-8.
The Appellants have, thus, failed to demonstrate error in the rejection
of method claims 8-11 and 2 0 as directed to abstract ideas. For this reason,
we sustain the rejection of claims 8-11 and 20 under 35 U.S.C. § 101.
Independent method claim 18 differs from claim 8 primarily by reciting a
"plurality of keywords" instead of "at least one keyword." For the same
reasons, we sustain the rejection of independent method claim 18 under
35 U.S.C. § 101.
Independent system claims 1 and 12 recite a database to store
advertisements and keywords, and a processor configured to perform
selections substantially as recited in method claim 8. Because the database
and processor appear to be no more than general-purpose computing
components, we also sustain the rejection of claims 1 and 12 for the same
reasons as for claim 8. Dependent claims 2-7, 13-15, 19, and 21 fall within
the same abstract idea to which claims 8-11 and 19 are directed. Therefore,
we sustain the rejection of claims 1-7, 12-15, 19, and 21 under 35 U.S.C. §
101.
Anticipation Reiection
The Appellants argue independent claims 1, 8, 12, and 18 together as
a group. Appeal Br. 24. We select claim 1 as representative. See 37 C.F.R.
§ 4I.37(c)(l)(iv).
We are not persuaded by the Appellants' argument that, because
Kovinsky discloses the selection of advertisements by a publisher of a web
site, Kovinsky, according to the Appellants, fails to disclose that the key
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words used to exclude advertisements are provided by an advertiser. Appeal
Br. 20-23; see also Reply Br. 7.
Kovinsky discloses "content providers 112 may provide ads and ad
related information to the one or more ad repositories 114." Kovinsky ,r 28.
Kovinsky also discloses a "content provider 112 may provide information
for selecting keywords or may request specific keyword associations for ad
content provided to an ad repository 114." Id. ,r 29. Kovinsky further
discloses it may use keywords to exclude an advertisement. Id. f 31.
Kovinsky's system, thus, discloses keywords "supplied by an advertiser to
prevent display of the advertisement."
The Appellants have, thus, not persuasively shown error in the
Examiner's anticipation rejection of independent claims 1, 8, 12, and 18.
No separate argument is advanced for dependent claims 2--4, 6, 9, 10, 13, 14,
and 19-22. See Appeal Br. 24. For this reason, we affirm the rejection of
claims 1--4, 6, 8-10, 12-14, and 18-22 under 35 U.S.C. § 102(e).
Obviousness Re;ection
The Appellants argue error in the obviousness rejections of claims 5,
7, 11, and 15 only by asserting that the references relied upon by the
Examiner, in addition to Kovinsky, "fail to cure" the shortcomings alleged
by the Appellants with regard to claim 1. Appeal Br. 25.
Because we find no shortcomings in the disclosure of Kovinsky, we
are not persuaded of error for any of the obviousness rejections. Therefore,
we sustain the rejections of claims 5, 7, 11, and 15 under 35 U.S.C. § 103(a).
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DECISION
We affirm the rejection of claims 1-15 and 18-22 under 35 U.S.C.
§ 101.
We affirm the rejection of claims 1--4, 6, 8-10, 12-14, and 18-22
under 35 U.S.C. § 102(e).
We affirm the rejections of claims 5, 7, 11, and 15 under 35 U.S.C.
§ 103(a).
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).
AFFIRMED
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