Ex Parte DeTittaDownload PDFPatent Trial and Appeal BoardSep 28, 201714015567 (P.T.A.B. Sep. 28, 2017) Copy Citation 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): bskpto@bsk.com gmcguire@bsk.com dnocilly @bsk. com 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. 2 Appeal 2016-003207 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 3 Appeal 2016-003207 Application 14/015,567 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. 4 Appeal 2016-003207 Application 14/015,567 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 5 Appeal 2016-003207 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 6 Appeal 2016-003207 Application 14/015,567 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). 7 Appeal 2016-003207 Application 14/015,567 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. 8 Appeal 2016-003207 Application 14/015,567 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 9 Copy with citationCopy as parenthetical citation