Ex Parte Etchegoyen

Patent Trial and Appeal BoardMay 20, 2016

12818532 (P.T.A.B. May. 20, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/818,532 96051 7590 Uniloc USA Inc, Legacy Town Center 7160 Dallas Parkway Suite 380 Plano, TX 75024 06/18/2010 05/24/2016 FIRST NAMED INVENTOR Craig Stephen Etchegoyen 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. UN-NP-AD-040 7949 EXAMINER UBER, NATHAN C ART UNIT PAPER NUMBER 3622 NOTIFICATION DATE DELIVERY MODE 05/24/2016 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): sean. burdick@unilocusa.com tkiatkulpiboone@unilocusa.com kris.pangan@unilocusa.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte CRAIG STEPHEN ETCHEGOYEN Appeal2014-001341 Application 12/818,532 Technology Center 3600 Before BIBHU R. MOHANTY, CYNTHIA L. MURPHY, and MATTHEWS. MEYERS Administrative Patent Judges. MOHANTY, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE The Appellant seeks our review under 35 U.S.C. Â§ 134 of the final rejection of claims 1-20 which are all the claims pending in the application. We have jurisdiction under 35 U.S.C. Â§ 6(b). SUMMARY OF THE DECISION We AFFIRM. Appeal2014-001341 Application 12/818,532 THE INVENTION The Appellant's claimed invention is directed to providing an interface for advertisers to purchase ad slots (Spec., para. 2). Claim 1, reproduced below, is representative of the subject matter on appeal. 1. A method for providing an interface for purchasing ad slots in an executable program operable at a plurality of clients, the method compnsmg: receiving, at a server, data associated with an ad slot in the executable program; determining a price for the ad slot based at least on the data and information associated with one or more clients operating the executable program, the one or more clients each identified by a device fingerprint; and providing an interface for purchasing the ad slots, the interface identifying the executable program, the ad slot and the determined price; wherein the server further comprises a processor circuit in communication with a memory circuit. THE REJECTIONS The following rejections are before us for review: 1. Claims 1-20 are rejected under 35 U.S.C. Â§ 101 as being directed to non-statutory subject matter. 2. Claims 1-20 are rejected under 35 U.S.C. Â§ 102(b) as anticipated by Starr (US 2006/0287916 Al, pub. Dec. 21, 2006). 2 Appeal2014-001341 Application 12/818,532 FTI'-JDINGS OF FACT We have determined that the findings of fact in the Analysis section below are supported at least by a preponderance of the evidence. 1 ANALYSIS Re} ection under 3 5 U.S. C. Â§ 101 The Appellant argues that the rejection of claim 1 under 35 U.S.C. Â§ 101 is improper (App. Br. 12, 13). In contrast, the Examiner has determined that the cited rejection is proper. Ans. 10, 11. We agree with the Examiner. Under 35 U.S.C. Â§ 101, an invention is patent-eligible if it claims a "new and useful process, machine, manufacture, or composition of matter." 35 U.S.C. Â§ 101. The Supreme Court, however, has long interpreted Â§ 101 to include an implicit exception: "laws of nature, natural phenomena, and abstract ideas" are not patentable. See, e.g., Alice Corp. Pty Ltd. v. CLS Bank Int'!, 134 S.Ct. 2347, 2354 (2014). In judging whether claim 1 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., 132 S.Ct. 1289, 1296-97 (2012)). In accordance with that framework, we first determine whether the claim is "directed to" a patent-ineligible abstract idea. If so, we then consider the elements of the claim both individually and as "an ordered 1 See Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988) (explaining the general evidentiary standard for proceedings before the Patent Office). 3 Appeal2014-001341 Application 12/818,532 combination" to determine assess whether the additional elements "transform the nature of the claim" into a patent-eligible application of the abstract idea. Id. 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. The Court also stated that "the mere recitation of a generic computer cannot transform a patent- ineligible abstract idea into a patent-eligible invention." Id. at 2358. Here, we determine that the claim is directed to the concept of determining the price for an ad slot and providing for its purchase. This is a fundamental economic practice long prevalent in our system of commerce, and is an abstract idea beyond the scope of Â§ 101. We next consider whether additional elements transform the nature of the claim into a patent-eligible application of the abstract idea, e.g., whether the claim does more than simply instruct the practitioner to implement the abstract idea using generic computer components. We conclude that it does not. Here, the process for determining the price for the ad slot on the device and providing for its purchase is simply provided on a generic computer system. Each step of the claimed method does no more than require a generic computer to perform a generic computer function. The use of the claimed "processor" and "memory" circuits are generic components used in any computer system. For these reasons the rejection of claim 1 is sustained. The Appellant has provided the same arguments for the remaining claims and the rejection of these claims is sustained for the same reasons above. 4 Appeal2014-001341 Application 12/818,532 Rejection under 35 U.S. C. Â§ j 02(b) The Appellant argues that the rejection of claim 1 is improper because fails to disclose the claim limitation for determining a price for an ad slot associated with a client"' ... identified by a device fingerprint. "' App. Br. 14. The Appeal Brief presents arguments in this regard at pages 11-13. In contrast, the Examiner has determined that the cited claim limitation is shown by Starr at paras. 232-234 and Figure 1 (item 178). Ans. 11-13. We agree with the Examiner. Here, the argued claim limitation requires that the clients are "identified by a device fingerprint." Starr at para. 232 discloses that the user may be known to the media platform in a variety of ways including the user contacting the media platform through a unique internet address or other self-identifying aspect. Starr at para. 232 also discloses that the user interface maintains a record of the prior contact associated with this unique identifier that may be referenced during communication. Thus in Starr since the "user may be known" through the "unique internet address" and then identified, this meets the claim limitation argued for identification by device fingerprint. Here, in light of the arguments presented, the term "device fingerprint" is broad enough to include a "unique internet address." As the argued limitation has been shown in the prior art, the rejection of claim 1 and its dependent claims is sustained. The remaining claims contain a similar limitation and the rejection of these claims is sustained for these same reasons as well. 5 Appeal2014-001341 Application 12/818,532 CONCLUSIONS OF LAW We conclude that the Appellant has not shown that the Examiner erred in rejecting the claims under 35 U.S.C. Â§ 101and35 U.S.C. Â§ 102(b) as listed in the Rejections section above. DECISION The Examiner's rejections of claims 1-20 are sustained. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a). See 37 C.F.R. Â§ 1.136(a)(l )(iv). AFFIRMED 6