Ex Parte Figg et al

Patent Trial and Appeal Board

Jan 9, 2018

13599310 (P.T.A.B. Jan. 9, 2018)

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.
13/599,310 08/30/2012 Matthew Figg D12-015-02533-PR-US 5247
79340 7590 01/11/2018
MANNAVA & KANG, P.C.
3201 Jermantown Road
SUITE 525
FAIRFAX, VA 22030
EXAMINER
STIBLEY, MICHAEL R
ART UNIT PAPER NUMBER
3688
NOTIFICATION DATE DELIVERY MODE
01/11/2018 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):
ASHOKM@MANNAVAKANG.COM
docketing @ mannavakang. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MATTHEW FIGG and JARRED HOLMAN
Appeal 2017-010386
Application 13/599,3101
Technology Center 3600
Before HUBERT C. LORIN, NINA L. MEDLOCK, and
BRUCE T. WIEDER, Administrative Patent Judges.
WIEDER, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35U.S.C. § 134 from the
Examiner’s final rejection of claims 1,2, 16, 20, 21, and 23—26.2 We have
jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
1 According to Appellants, the real party in interest is Accenture Global
Services Limited. (Appeal Br. 3.)
2 Claims 11, 19, and 21 were canceled in the amendment filed
October 21, 2016, and entered by the Advisory Action mailed
November 17, 2016.
Appeal 2017-010386
Application 13/599,310
CLAIMED SUBJECT MATTER
Appellants’ claimed invention relates to an “online content collection
system.” (Spec. 1 6.)
Claims 1,16, and 20 are the independent claims on appeal. Claim 1 is
illustrative. It recites (emphasis added):
1. An online content collection system comprising:
a scanning server to scan web sites to retrieve a potential
creative uniform resource locator (URL), wherein the scanning
and retrieving comprises:
loading web pages for the web sites into a browser,
regular expression matching source code of the web
pages to predetermined criterion,
identifying the potential creative URL from the
source code of the web pages that matches the
predetermined criterion, and
retrieving the potential creative URL that matches
the predetermined criterion;
data storage storing creative URLs, wherein the stored
creative URLs include URLs previously retrieved by the
scanning server; and
an online content collection server analyzing the retrieved
potential creative URL, wherein the analyzing comprises:
determining whether the retrieved potential creative URL
is a redirect URL;
in response to determining the retrieved potential creative
URL is a redirect URL, determining the redirect URL is invalid
if the redirect URL matches one of the stored creative URLs
previously retrieved by the scanning server; and
in response to determining the retrieved potential creative
URL is not a redirect URL,
identifying a creative associated with the retrieved
potential creative URL,
determining whether the creative includes an image
or an object associated with multimedia;
in response to determining the creative includes the
image,
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Application 13/599,310
analyzing pixels of the image to determine an
image width and an image height in terms of pixels
of the image;
in response to determining the width and
height of the image is greater than a threshold of a
predetermined number of pixels for each of the
width and height,
determining the retrieved potential
creative URL is valid and,
storing the retrieved potential creative
URL as a valid creative URL in the data
storage; and
in response to determining the creative includes the
object associated with multimedia,
determining a width and height of the object
from a tag embedded in the source code,
determining if the width and the height of the
object is greater than the threshold of the
predetermined number of pixels for each of
the width and height, and
storing the retrieved potential creative URL
as a valid creative URL in the data storage if
the width and the height of the object is
greater than the threshold.
REJECTION
Claims 1,2, 16, 20, 21, and 23—26 are rejected under 35 U.S.C. § 101
as directed to non-statutory subject matter.
ANALYSIS
In 2014, the Supreme Court decided Alice Corp. Pty. Ltd. v. CLS Bank
Int’l, 134 S. Ct. 2347 (2014). Alice applies a two-part framework, earlier set
out in Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66
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Application 13/599,310
(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.
Under the two-part framework, it must first be determined if “the
claims at issue are directed to a patent-ineligible concept.” Id. If the claims
are determined to be directed to a patent-ineligible concept, then the second
part of the framework is applied to determine if “the elements of the
claim . . . contain[] an ‘inventive concept’ sufficient to ‘transform’ the
claimed abstract idea into a patent-eligible application.” Id. at 2357 (citing
Mayo, 566 U.S. at 72-73, 79).
With regard to part one of the Alice framework, the Examiner
determines that the claims
are directed to the abstract idea of in response to determining the
retrieved potential creative is not a redirect, identifying a creative
associated with the retrieved potential creative, wherein the
identified creative includes an image; analyzing pixels of the
image to determine an image width and an image height in terms
of pixels of the image and in response to determining the width
and height of the image is greater than a threshold of a
predetermined number of pixels for each of the width and height,
determining the retrieved potential creative is valid and storing
the retrieved potential creative as a valid creative, which is not
meaningfully different from one or more abstract ideas
previously considered to be abstract by the courts ....
(Final Action 2—3.) In particular, the Examiner determines that the claims
involve[] basic concepts involving comparing new (determining
an image width and image height in terms of pixels) and stored
information (threshold off [sic] predetermined number of pixels
for each of width and height) and using rules to identify options
(determining retrieved potential creative is valid and storing the
retrieved potential creative as a valid creative).
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Appeal 2017-010386
Application 13/599,310
(Id. at 3.) In sum, the Examiner determines that “the instant claims are
stated with a high level of generality and are indeed directed to an abstract
idea without significantly more than the abstract idea itself.” (Answer 5.) In
particular, the Examiner determines that “[cjlaims 1—2, 11,16 and 19—26 . . .
compare new and stored information and use rules to identify options, i.e.
present basic concepts similar to mental processes and thus are abstract as
they represent an idea of itself.” (Final Action 3, emphasis omitted.)
Appellants disagree and argue that “the claims of the present
application do recite a specific way for scanning and analyzing source code
to identify valid creatives.” (Reply Br. 9.) Appellants further argue that the
claims are directed to a particular “technique for scanning for and analyzing
creatives to identify valid creatives.” (Appeal Br. 21.) In particular,
Appellants argue that the Examiner errs by oversimplifying the claims in
considering if the claims are directed to an abstract idea. Specifically,
Appellants argue that
[t]his oversimplification not only ignores the details of the claims
that the Examiner alleges are the abstract idea (such as
determining whether a retrieved potential creative is a redirect
URL or not a redirect; analyzing pixels of the image to determine
an image width and an image height in terms of pixels;
determining the width and height of the image is greater than a
threshold of a predetermined number of pixels for each of the
width and height, determining the retrieved potential creative is
valid and storing the retrieved potential creative as a valid
creative), it also ignores many of the other features recited in the
independent claims.
(Id.)
The Federal Circuit has “cautioned that [when determining whether a
claim is directed to an abstract idea] courts ‘must be careful to avoid
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Application 13/599,310
oversimplifying the claims’ by looking at them generally and failing to
account for the specific requirements of the claims.” McRO, Inc. v. Bandai
Namco Games Am. Inc., 837 F.3d 1299, 1313 (Fed. Cir. 2016), citing In re
TLI Commc’ns LLC Patent Litig., 823 F.3d 607, 611 (Fed. Cir. 2016).
Claim 1 recites, in relevant part, that “in response to determining [that
a] retrieved potential creative URL is a redirect URL, determining the
redirect URL is invalid if the redirect URL matches one of the stored
creative URLs previously retrieved by the scanning server,” i.e., determining
a redirect URL to be invalid if it matches a stored URL. In other words,
image analysis is not carried out for such a redirect URL, thus eliminating an
analysis.
Claim 1 also recites that if a retrieved potential creative URL is
determined to not be a redirect URL, then “identifying a creative associated
with the . . . URL, determining whether the creative includes an image . . . ,
[and] in response to determining the creative includes the image, analyzing
pixels of the image to determine an image width and an image height in
terms of pixels,” determining if the width and height are greater than a
predetermined threshold, determining that the URL is valid, and storing the
“URL as a valid creative URL in the data storage.” In other words, claim 1
does not merely recite a generic method of retrieving the URL of an
ad/creative and determining if it is already stored.
For the foregoing reasons, we agree with Appellants that the
determination under part 1 of the Alice framework that the claims are
directed to an abstract idea is oversimplified. “In determining the eligibility
of respondents’ claimed process for patent protection under § 101, their
claims must be considered as a whole.” Diamond v. Diehr, 450 U.S. 175,
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Application 13/599,310
188 (1981). “The ‘abstract idea’ step of the inquiry calls upon us to look at
the ‘focus of the claimed advance over the prior art’ to determine if the
claim’s ‘character as a whole’ is directed to excluded subject matter.”
Affinity Labs of Texas, LLC v. DirectTV, LLC, 838 F.3d 1253, 1257 (Fed.
Cir. 2016). Because the claims have not been considered as a whole, the
explanation for determining that the claims are directed to an abstract idea is
inadequate. See “Formulating a Subject Matter Eligibility Rejection and
Evaluating the Applicant’s Response to a Subject Matter Eligibility
Rejection,” Memorandum, Robert W. Bahr, Deputy Commissioner for
Patent Examination Policy, May 4, 2016 (“the rejection . . . must provide an
explanation . . . which [is] sufficiently clear and specific to provide applicant
sufficient notice of the reasons for ineligibility”).
Given the inadequacy of the determination under the first part of the
Alice framework, we need not address the second part of the framework.
We reverse the rejection of claim 1.
Independent claims 16 and 20 contain similar language and for similar
reasons, we reverse the rejection of claims 16 and 20, and dependent claims
2, 21, and 23—26.
DECISION
The Examiner’s rejection of claims 1,2, 16, 20, 21, and 23—26 under
35 U.S.C. § 101 is reversed.
REVERSED
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