Ex Parte DeTitta

Patent Trial and Appeal Board

Sep 28, 2017

14015567 (P.T.A.B. Sep. 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.
14/015,567 08/30/2013 John E. DeTitta 323P002 8801
28264 7590 10/02/2017
BOND, SCHOENECK & KING, PLLC
ONE LINCOLN CENTER
SYRACUSE, NY 13202-1355
EXAMINER
STIBLEY, MICHAEL R
ART UNIT PAPER NUMBER
3688
NOTIFICATION DATE DELIVERY MODE
10/02/2017 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):
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOHN E. DeTITTA
Appeal 2016-0032071
Application 14/015,5672
Technology Center 3600
Before ANTON W. FETTING, NINA L. MEDLOCK, and
BRADLEY B. BAYAT, Administrative Patent Judges.
BAYAT, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
John E. DeTitta (Appellant) seeks our review under 35 U.S.C. § 134
of the Examiner’s Final Rejection of claims 1 and 2. We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM.
1 Our Decision references Appellant’s Appeal Brief (“App. Br.,” filed Mar.
5, 2015), Reply Brief (“Reply Br.,” filed July 22, 2015), the Examiner’s
Answer (“Ans.,” mailed May 22, 2015), and the Final Office Action (“Final
Act.,” mailed Dec. 23, 2014).
2 Appellant identifies “Howudowin, Inc.” as the real party in interest. App.
Br. 3.
Appeal 2016-003207
Application 14/015,567
CLAIMED SUBJECT MATTER
Sole independent claim
1. A method of raising funds in a target fund for a project,
said method comprising the steps of:
providing a project webpage by a computer system
comprising a web server and an advertising server;
receiving information regarding a target fund amount for
the project;
providing, to an advertiser accessing said project webpage,
a plurality of advertising buy options having respective media
outlets available for purchase by the advertiser;
receiving an advertising buy purchase selection from the
advertiser;
placing the advertisers’ advertising material on one or
more media properties associated with the purchased media buy;
tracking views of the advertisers’ advertising material on
the one or more media properties associated with the purchased
media buy, wherein each view increments an impression count,
the impression count associated with generating advertising
revenue as defined by the advertising buy;
collecting the generated advertising revenue from a
completed advertising buy; and
applying the collected revenue produced by the completed
advertising buy to said target fund.
REJECTIONS
Claims 1 and 2 stand rejected under 35U.S.C. § 101 directed to non-
statutory subject matter.
Claim 1 and 2 stand provisionally rejected on the ground of non-
statutory obvious-type double patenting as being unpatentable over
claims 7—26 of co-pending application 11/274,706, and claims 1—3 of co­
pending application 14/015,604.
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Application 14/015,567
ANALYSIS
Non-Statutory Subject Matter
Under 35 U.S.C. § 101, 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 an implicit exception: “[l]aws of nature, natural phenomena, and
abstract ideas” are not patentable. See, e.g., Alice Corp. Pty. Ltd. v. CLS
Banklnt’l, 134 S. Ct. 2347, 2354 (2014) (internal quotation marks and
citation omitted).
The Supreme Court, in Alice, reiterated the two-step framework
previously set forth in Mayo Collaborative Services v. Prometheus
Laboratories, Incorporated, 566 U.S. 66, 82—84 (2012), “for distinguishing
patents that claim laws of nature, natural phenomena, and abstract ideas
from those that claim patent-eligible applications of those concepts.” Alice,
134 S. Ct. at 2355. The first step in that analysis is to “determine whether
the claims at issue are directed to one of those patent-ineligible concepts.”
Id. If the claims are not directed to a patent-ineligible concept, e.g., to an
abstract idea, the inquiry ends. Otherwise, the inquiry proceeds to the
second step where the elements of the claims are considered “individually
and ‘as an ordered combination”’ to determine whether there are additional
elements that “‘transform the nature of the claim’ into a patent-eligible
application.” Id. (quoting Mayo, 566 U.S. 66, 79, 78).
Applying the framework in Alice, and as the first step of that analysis,
the Examiner determined that independent claim 1 is drawn to “fundamental
economic practices and certain methods of organizing human activities as
the claims are directed to: advertisement delivery techniques drawn towards
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delivering content of interest to consumers to encourage the purchase and
sale of goods from businesses; revenue raising for projects.” Final Act. 4;
Ans. 6—7.
Appellant argues that claim 1 is not directed to an abstract idea
because
rather than seek to patent a mathematical formula or an abstract
idea, Applicant seeks patent protection for a computer-
implemented method for online financing of a target fund using
a project webpage and advertising. Although the process may
“embody, use, reflect, rest upon, or apply” an abstract idea,
Applicant does not seek to preempt the use of that abstract idea.
Rather, Applicant seeks only to foreclose others from the use of
that abstract idea in conjunction with ALL the other steps in the
claimed computer-implemented method.
App. Br. 10. We disagree.
Turning to the first step, we agree with the Examiner that claim 1 is
directed to the abstract idea of raising revenue for projects from selling
advertising—which is an age-old economic and business practice.
Appellant’s disclosure informs us that the present invention specifically
relates to “a process that allows advertisers to finance media productions
through advertising media buys while eliminating the risk of normal event
financing speculative investment.” Spec. 12. It is also telling that the
background of the Specification describes the movie industry process and
problems faced with conventional film financing. Spec. 118:
The main problem with conventional film financing is that
the investor has a high chance of losing their investment.
Another problem with conventional film financing is that the
speculative investment gives limited if any public relations to the
investor. Another problem with conventional media event
financing is that it is difficult for the film producer to get a film
financed.
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The advance noted by Appellant is generating revenue through advertising
sales to finance film projects, “while eliminating the risk of normal film
financing.” Id. 121. The business concept of generating revenue through
advertising sales is a fundamental economic practice long prevalent in our
system of commerce—a building block of the modem economy.
The preamble of claim 1 also recites “[a] method of raising funds in a
target fund for a project.” App. Br. 14 (Claims App.). The implementation
of the abstract idea is evident from the steps of claim 1: providing a project
webpage, receiving information about the project, providing advertising
buying options on the webpage, receiving advertising buy purchase
selection, placing the advertising, tracking advertising views, collecting the
advertising revenue, and applying the revenue to the project. Thus, claim 1,
as a whole, merely recites the familiar concept of generating revenue by
selling advertising on a webpage.
As in Alice, we need not labor to delimit the precise contours of the
“abstract ideas” category. It is enough to recognize that there is no
meaningful distinction in the level of abstraction between the concept of an
intermediated settlement in Alice and the concept of generating revenue
from advertising sales, at issue here. Both are squarely within the realm of
“abstract ideas” as the Court has used that term. The fact that claim 1 does
not preempt all forms of the abstraction, or may be limited to computer-
implemented online settings (e.g., webpage), does not make it any less
abstract. See OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1362—63
(Fed. Cir. 2015); see also Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709,
715 (Fed. Cir. 2014) (“Although certain additional limitations, such as
consulting an activity log, add a degree of particularity, the concept
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Application 14/015,567
embodied by the majority of the limitations describes only the abstract idea
of showing an advertisement before delivering free content”).
Turning to the second step, Appellant contends:
These elements are meaningful limitations that do more than just
“generally link[] the use of an abstract idea to a particular
technological environment.” Alice, 134 S. Ct. at 2360. The
elements do not simply provide the instruction to “apply” an
abstract idea, and do not simply require a computer to perform
conventional or routine activities. Indeed, instead of simply
giving directions to apply the abstract ideas of “advertisement
delivery techniques” or “raising revenue for projects,” and rather
than simply requiring a computer to perform conventional or
routine activities, the claimed method provides for online
financing of a target fund using a project webpage, advertising
buys, and a project fund, among other limitations.
App. Br. 12. We disagree.
Instead, we agree with the Examiner’s analysis on pages 7—11 of the
Answer, and conclude that claim 1 does not contain an inventive concept
sufficient to “‘transform the nature of the claim’ into a patent-eligible
application.” Alice, 134 S. Ct. at 2355. The introduction of a computer
system or server into the claims does not alter the analysis here.3 The
[T]he 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 if” 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 pre-emption
concern that undergirds our § 101 jurisprudence. Given the
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claim here does no more than simply instruct the practitioner to implement
the abstract idea on a generic computer. In fact, the only portion of claim 1
that could be considered “technological” is the first process step that
provides a webpage by a generic “computer system” (see Spec. ]Hf 46-47)
used to implement the claimed invention, which is inadequate to confer
subject matter eligibility. See Elec. Power Grp., LLC v. Alstom S.A.,
830 F.3d 1350, 1355 (Fed. Cir. 2016) (“Nothing in the claims, understood in
light of the specification, requires anything other than off-the-shelf,
conventional computer, network, and display technology for gathering,
sending, and presenting the desired information”); see also Dealertrack, Inc.
v. Huber, 674 F.3d 1315, 1333 (Fed. Cir. 2012) (“Simply adding a
‘computer aided’ limitation to a claim covering an abstract concept, without
more, is insufficient to render [a] claim patent eligible”) (citation omitted).
Contrary to Appellant’s argument on page 3 of the Reply Brief, a
finding that the claims are novel and nonobvious in light of an absence of
evidence does not conflict with the Examiner’s conclusion under § 101,
because “a claim for a new abstract idea is still an abstract idea.” Synopsys,
Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1151 (Fed. Cir. 2016) (citing
Mayo, 566 U.S. at 90). The question in step two of the Alice framework is
not whether an additional feature is novel, but whether the implementation
of the abstract idea involves “more than the performance of ‘well-
ubiquity of computers, wholly generic computer
implementation is not generally the sort of “additional
featur[e]” that provides any “practical assurance that the
process is more than a drafting effort designed to monopolize
the [abstract idea] itself.”
Alice, 134 S. Ct. at 2358 (citations omitted).
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understood, routine, [and] conventional activities previously known to the
industry. Content Extraction and Transmission LLC v. Wells Fargo Bank,
Nat. Assn, 776 F.3d 1343, 1347-48 (Fed. Cir. 2014) (alteration in original)
(quoting Alice, 134 S. Ct. at 2359). Looking at the claim steps separately,
the function performed by the computer at each step of the process is purely
conventional. Using a computer to provide a webpage, receive information,
provide advertising buy options, receive an advertising purchase selection,
placing the advertising, tracking advertising views, and collecting the
advertising revenue are the most basic functions of a computer.
Programming conventional software or hardware to apply rules and data is a
routine and conventional practice. The recited claim limitations, both
individually and as an ordered combination, fail to transform the nature of
the claim into a patent-eligible application. Thus, independent claim 1 does
not recite any limitation that, in practical terms, limits the scope of the claim
so it does not fully cover the abstract idea itself.
For the foregoing reasons, we sustain the rejection of independent
claim 1 under 35 U.S.C. § 101, including dependent claim 2, which is not
argued with any specificity. See App. Br. 13.
Obviousness-Type Double Patenting
Appellant has not addressed or otherwise contested the rejections of
claims 1 and 2 under obviousness-type double patenting in the Briefs before
us. Thus, we summarily sustain these rejections.
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DECISION
The Examiner’s decision to reject claims 1 and 2 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).
AFFIRMED
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