Ex Parte Beyda et al

Patent Trial and Appeal Board

Aug 28, 2017

11014248 (P.T.A.B. Aug. 28, 2017)

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.
11/014,248 12/17/2004 Gil Beyda 00008-0038-00000 8412
114629 7590
Bookoff McAndrews
2401 Pennsylvania Avenue, Suite 450
Washington, DC 20037
EXAMINER
ALVAREZ, RAQUEL
ART UNIT PAPER NUMBER
3622
NOTIFICATION DATE DELIVERY MODE
08/30/2017 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 @bookoffmcandrews.com
Kross @ bookoffmcandrews.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GIL BEYDA, KRISHNA BALASUBRAMANIAN,
DONALD J. LOCKER, KEVIN M. MCDONALD,
JOSEPH G. WILSON, DAVID R. MORGAN,
and ALISON P. LOWRY
Appeal 2016-002089
Application 11/014,248
Technology Center 3600
Before ALLEN R. MacDONALD, CARL W. WHITEHEAD JR., and
BRADLEY W. BAUMEISTER, Administrative Patent Judges.
MacDONALD, Administrative Patent Judge.
DECISION ON APPEAL
Appeal 2016-002089
Application 11/014,248
STATEMENT OF CASE
Introduction
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1—7 and 15—31. Claims 8—14 have been cancelled. App. Br. 36. We
have jurisdiction under 35 U.S.C. § 6(b).
Exemplary Claims
Exemplary claims 1 and 2 under appeal read as follows (emphasis and
bracketing added):
1. A computer implemented method for performance based
delivery of content to a client computer having access to a network
domain and a plurality of audience member information collection
domains, the method comprising:
[A.] collecting profile data relating to the client computer from
the plurality of audience member information collection domains;
[B.] managing audience segments corresponding to the
audience member information collection domains;
[C.] determining that the client computer is a member of a
network segment that includes client computers having a set of
attributes corresponding to profile data collected from the plurality of
audience member information collection domains, wherein the
network segment is affiliated with the network domain;
[D.] transmitting a segment-targeting cookie, which includes a
segment identifier for the network segment of client computers, to the
client computer; and
[E.] accommodating the delivery of an advertisement to the
client computer based upon the segment identifier in the segment­
targeting cookie and performance criteria configured to benefit a
publisher of content in which the advertisement is placed.
2. The method of claim 1, wherein the performance criteria
includes maximizing revenue to the publisher.
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Application 11/014,248
Examiner’s Rejection
1. The Examiner rejected claims 1—7 and 15—31 under 35 U.S.C.
§101 because the claimed invention is directed to non-statutory subject
matter.1
Appellants ’ Contentions2
1. Appellants contend that the Examiner erred in rejecting
claim 1 because no evidence exists on the record to establish that the
claims are directed to an abstract methods of “fundamental economic
practices” under part one of the Alice Test. App Br. 22. “[Tjhere is no
evidence on the record that the application, as defined by the particular claim
limitations, is simply an abstract method of fundamental economic practices
. . . as alleged by the Final Office Action.” App. Br. 23 (emphasis added).
2. Appellants contend that the examiner erred in rejecting claim 1
because the invention provides an improvement in a technical field or in
another technology. App Br. 33.
The claims of the present application are similar to . . .
Federal Circuit’s characterization of DDR Holdings, where the
claim is not simply directed to an abstract idea (organizing
human activity)[,] but rather to solving a technological problem
in another technology (identification of a plurality of user
devices connected to the Internet and targeting advertisements
based on use of the plurality of user devices).
App Br. 34.
1 We select claim 1 as representative. Separate patentability is not argued
for claims 2—7 and 15—31. Except for our ultimate decision, the § 101
rejection of claims 1—7 and 15—31 is not discussed further herein.
2 The contentions of error we discuss are dispositive. Appellants’ other
contentions of error are not discussed further herein.
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Appeal 2016-002089
Application 11/014,248
Issue on Appeal
Did the Examiner err in rejecting claim 1 as being directed to
non-statutory subject matter?
ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellants’
arguments (Appeal and Reply Briefs3) that the Examiner has erred.
First as to Appellants’ above contention 1 (regarding part one of the
Alice Test), Appellants argue there is no evidence exists on the record to
establish the claims are directed to a fundamental economic practice. We
disagree. Appellants’ claim 2 is explicit that the claims are directed to a
3 In the Reply Brief, Appellants argue the “segment-targeting cookie is
transformative” limitations of claim 1. These limitations were not
previously argued in the Appeal Brief or newly raised by the Examiner in
the Answer. In the absence of a showing of good cause by Appellants, we
decline to consider an argument raised for the first time in the Reply Brief,
as the Examiner has not been provided a chance to respond. See 37 C.F.R.
§ 41.41(b)(2) (2012); In re Hyatt, 211 F.3d 1367, 1373 (Fed. Cir. 2000)
(noting that an argument not first raised in the brief to the Board is waived
on appeal); Ex parte Nakashima, 93 USPQ2d 1834, 1837 (BPAI 2010)
(informative) (explaining that arguments and evidence not timely presented
in the principal brief will not be considered when filed in a Reply Brief,
absent a showing of good cause explaining why the argument could not have
been presented in the principal brief); Ex parte Borden, 93 USPQ2d 1473,
1477 (BPAI 2010) (informative) (“Properly interpreted, the Rules do not
require the Board to take up a belated argument that has not been addressed
by the Examiner, absent a showing of good cause.”). Appellants have
provided no showing of good cause.
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Application 11/014,248
fundamental economic practice in the form of “maximizing revenue.”
Claim 1 encompasses this fundamental economic practice.4
Second as to Appellants’ above contention 1, Appellants argue there
is no evidence that the application, as defined by the particular claim
limitations, is simply an abstract method of fundamental economic practices.
We fail to see the relevance of this argument as the Alice test is not an “is
simply” test. Rather, eligibility under 35 U.S.C. § 101 is determined using
the two-step Alice!Mayo framework. Alice Corp. Pty. Ltd. v. CIS Bank
Inti, 134 S. Ct. 2347 (2014). The first step involves determining whether
the claims at issue are directed to a patent-ineligible concept. Id. at 2355.
The second step involves determining whether the elements of the claim
contain an inventive concept5 sufficient to transform a claimed abstract idea
into a patent-eligible application. Id. at 2357.
The “inventive concept” may arise in one or more of the individual
claim limitations or in the ordered combination of the limitations. Id.
Appellants’ argument overlooks that the first step in the Alice!Mayo
framework looks only to whether the claim is directed to an abstract idea
4 Although Appellants also argue “the allegation by [the Examiner in] the
Final Office Action that the claim is for the mere abstract idea of a method
of ‘organizing human activity’ has no support” (App. Br. 24), we find no
such conclusion (fact finders make findings and conclusions, not allegations)
by the Examiner in the Final Action.
5 Alice, 134 S. Ct. at 2355 (emphasis added).
[S]tep 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.” [Mayo Collaborative Services v. Prometheus Labs, Inc.,
132 S.Ct. 1289, 1294 (2012)].
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Application 11/014,248
(not whether the claim as whole is simply an abstract idea); and considers
the claim as a whole only at step 2. Alice, 134 S.Ct. 2361 n.3 (“Because the
approach we made explicit in Mayo considers all claim elements, both
individually and in combination, it is consistent with the general rule that
patent claims ‘must be considered as a whole.’”).
As to above contention 2 (regarding part two of the Alice Test),
Appellants assert they are “solving a technological problem in another
technology (identification of a plurality of user devices connected to the
Internet and targeting advertisements based on use of the plurality of user
devices).” Appellants then overlook the need to provide analysis connecting
this broad assertion to particular limitations within the claim. Rather,
Appellants leave it to the Board to construct an argument to support
Appellants’ bare assertion.
Normally, this Panel would leave Appellants’ unsupported argument
as we find it (unpersuasive). However, we use our discretion to sua sponte
determine whether the Examiner’s Final Action establishes aprima facie
case as to the second step in the Alice!Mayo framework. Particularly, we
address the following question: has the Examiner set forth sufficient
analysis to show Appellants’ claims are not directed to significantly more
than the claimed fundamental economic practice of maximizing revenue?
We reproduce Examiner’s Alice/Mayo second step analysis in its entirety.
The abstract idea of distributing coupons by a retailer for
the purpose of enhancing revenue has not been applied in an
eligible manner. The steps or acts performed (utilizing a
processor) in independent method claims 1, 15, 23 and 30 are not
enough to qualify as “significantly more” than the abstract idea
itself, since the claims are a mere instruction to apply the
abstract idea. Furthermore, there is no improvement to another
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Application 11/014,248
technology or technical field, no improvements to the
functioning of the computer itself, and no meaningful limitations
beyond generally linking the use of an abstract idea to a
particular technical environment, and the claims require no more
than a generic computer to perform generic computer functions
that are well-understood, routine and conventional. Therefore,
based on the two-part Alice Corp. analysis, there are no
meaningful limitations in the claims that transform the exception
(i.e., abstract idea) into a patent eligible application.
Final Act. 5 (emphasis added).
As to Alice/Mayo step two, first, the Examiner’s Final Action is
conclusory without any supporting analysis to show why steps A—D of
above claim 1 would be understood to be “a mere instruction to apply the
abstract idea” (as concluded by the Examiner).6 Second, our review of
claim 1 (in light of claim 2) does not find the claim on its face to be “a mere
instruction to apply the abstract idea.” Third, our review of the record does
not find other alternative support to shows why steps A—D of above claim 1
would be understood by an artisan (without supporting analysis in the
rejection itself) to be “a mere instruction to apply the abstract idea.” Absent
on its face recognition or something in the record showing why claim 1 is “a
6 DDR Holdings, LLC v. Hotels.com et al., provides guidance on how the
Examiner might show the claim limitations would be understood to be a
mere instruction to apply the abstract idea. 773 F.3d 1245, 1257 (Fed.
Cir. 2014)(“[T]hese claims stand apart because they 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.”).
For example, to support the second step of the Alice!Mayo framework
analysis, an examiner might discuss known pre-Internet business practices
for selectively directing information to customers (based on attributes in a
customer’s profile) and explain why each claimed step is merely the
conversion of a known pre-Internet process step into a computer
implemented method step.
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Application 11/014,248
mere instruction to apply the abstract idea,” we conclude the Examiner has
not set forth sufficient articulated reasoning as to why the ordered
combination of the limitations does not set forth an inventive concept as
required under step two of the Alice!Mayo framework.
CONCLUSIONS
(1) The Examiner erred in rejecting claims 1—7 and 15—31 under
35 U.S.C. § 101, as being directed to non-statutory subject matter.
(2) On this record, claims 1—7 and 15—31 have not been shown to be
unpatentable.
DECISION
The Examiner’s rejection of claims 1—7 and 15—31 under 35 U.S.C.
§ 101, as being directed to non-statutory subject matter, is reversed.
REVERSED
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