Ex Parte Gardner et al

Patent Trial and Appeal Board

Oct 12, 2018

11821770 (P.T.A.B. Oct. 12, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
11/821,770 06/25/2007 David Gardner
141746 7590 10/16/2018
ARENT FOX LLP& Microsoft Technology Licensing, LLC
1717 K Street, NW
WASHINGTON, DC 20006-5344
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.
037834.01025/320331-US-NP 7458
EXAMINER
BROWN, LUIS A
ART UNIT PAPER NUMBER
3682
NOTIFICATION DATE DELIVERY MODE
10/16/2018 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):
patentdocket@arentfox.com
USDocket@microsoft.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DAVID GARDNER and WILLIAM H. VONG
Appeal2017---000699
Application 11/821, 770
Technology Center 3600
Before HUBERT C. LORIN, ANTON W. PETTING, and
MATTHEW S. MEYERS, Administrative Patent Judges.
PETTING, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE 1
David Gardner and William H. Vong (Appellants) seek review under
35 U.S.C. § 134(a) of the Examiner's Final Rejection of claims 1-13, 15-17,
and 19-25, the only claims pending in the application on appeal. Claims 14
1 Our decision will make reference to the Appellants' Appeal Brief ("App.
Br.," filed March 18, 2016) and Reply Brief ("Reply Br.," filed October 18,
2016), and the Examiner's Answer ("Ans.," mailed August 25, 2016), and
Final Action ("Final Act.," mailed July 13, 2015).
Appeal2017-000699
Application 11/821,770
and 18 have been cancelled. We have jurisdiction over the appeal pursuant
to 35 U.S.C. § 6(b).
The Appellants invented a way of using interactive advertising overlays
on computer screens. Specification paras. 3--4.
An understanding of the invention can be derived from a reading of
exemplary claim 6, which is reproduced below (bracketed matter and some
paragraphing added).
6. A computer-implemented method comprising:
[1] displaying, using a computer, program content and video
commercial content on a full-screen display of a display
device;
[2] displaying, using the computer, an interactive advertisement
overlay on the full-screen display,
the interactive advertisement overlay including
advertising information associated with a sponsor of the
program content,
wherein displaying the interactive advertisement overlay
includes:
[3] using at least a first indication embedded in the
program content or video commercial content
to determine when to display or remove the
interactive advertisement overlay;
[ 4] using at least a second indication embedded in
the program content or video commercial content
to determine which interactive
advertisement overlay out of a plurality of
interactive advertisement overlays to
display,
at least some interactive advertisement
overlays of the plurality interactive
advertisement overlays having a different
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Application 11/821,770
configuration than at least some other
interactive advertisement overlays of the
plurality of interactive advertisement
overlays;
[ 5] receiving, using the computer, at least one user interaction
with the interactive advertisement overlay;
[6] tracking, using the computer, the at least one user
interaction with the interactive advertisement overlay
by storing information associated with the at least one
user interaction;
[7] sending, directly or indirectly and using the computer,
the stored information to one or more sponsors
based, at least in part, on determining that sending the
stored information is permitted by a user of the computer;
[8] displaying, using the computer, an ad icon on the full-
screen display,
and
wherein the ad icon is configured to display a graphical
image associated with a sponsor of the ad icon;
[9] keeping the ad icon displayed on the full-screen display,
using the computer,
after display of the interactive advertisement overlay has
been terminated.
Claims 1-13, 15-17, and 19-25 stand rejected under 35 U.S.C. § 101 as
directed to non-statutory subject matter.
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Application 11/821,770
ISSUES
The issues of eligible subject matter tum primarily on whether the claims
recite more than abstract conceptual advice of what a computer is to provide
without implementation details.
ANALYSIS
The Examiner determines that the claims are directed
towards display of content and display of a graphic overlay on a
user screen. Further, user interaction is tracked. The claimed
invention simply teaches different combinations of display
decisions based on instructions and user interaction. Display of
graphic overlays, video content, and commercial content in
various styles, sizes, and iterations per instructions is a
fundamental economic practice in the graphic arts. For the above
reasons, the claims include an abstract idea. The claims do not
include limitations that are "significantly more" than the abstract
idea because the claims do not include an improvement to
another technology or technical field, an improvement to the
functioning of the computer itself, or meaningful limitations
beyond generally linking the use of an abstract idea to a
particular technological environment. The claims simply
automate graphic display and use computerized instructions for
various combinations of graphic and commercial content display
instruction determination. Note that the limitations, in the instant
claims, are done by generically recited "one or more ... media",
"one or more processors," and a "computer." The limitations are
merely instructions to implement the abstract idea on a computer
and require no more than a generic computer to perform generic
computer functions that are well-understood, routine and
conventional activities previously known to the industry. The
claims are also simply automation and organization of ordinary
human activity, such as tracking of user interaction with an
advertisement.
Final Act. 2-3.
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Application 11/821,770
As to the Appellants' arguments, we adopt the Examiner's
determinations and analysis from Final Action 2-3 and Answer 2-7 and
reach similar legal conclusions. We note that the Examiner determines that
the claims are directed to using graphics as a fundamental economic
practice. We take this to mean that the use of graphics display in
commercial advertising is a long practiced concept for economic gain
through the sale of both advertisement content and services and of the
advertised products and services. Beyond that, claims directed to
advertising as in the instant claims are directed to an abstract idea.
Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709 (2014)772 F.3d 709, 715
(Fed. Cir. 2014).
We also note that Appellants argue that the asserted claims are akin
to the claims found patent-eligible in DDR Holdings, LLC v. Hotels.com,
L.P., 773 F.3d 1245 (Fed. Cir. 2014). App. Br. 18. In DDR Holdings,
the Court evaluated the eligibility of claims "address[ing] the problem of
retaining website visitors that, if adhering to the routine, conventional
functioning of Internet hyperlink protocol, would be instantly
transported away from a host's website after 'clicking' on an
advertisement and activating a hyperlink." Id. at 1257. There, the Court
found that the claims were patent eligible because they transformed the
manner in which a hyperlink typically functions to resolve a problem
that had no "pre-Internet analog." Id. at 1258. The Court cautioned,
however, "that not all claims purporting to address Internet-centric
challenges are eligible for patent." Id. For example, in DDR Holdings
the Court distinguished the patent-eligible claims at issue from claims
found patent-ineligible in Ultramercial. See id. at 1258-59 (citing
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Application 11/821,770
Ultramercial, 772 F.3d 709, 715-16 (Fed. Cir. 2014)). As noted there,
the Ultramercial claims were "directed to a specific method of advertising
and content distribution that was previously unknown and never
employed on the Internet before." Id. at 1258 (quoting Ultramercial, 772
F .3 d at 715-16). Nevertheless, those claims were patent ineligible because
they "merely recite[d] the abstract idea of 'offering media content in
exchange for viewing an advertisement,' along with 'routine additional
steps such as updating an activity log, requiring a request from the
consumer to view the ad, restrictions on public access, and use of the
Internet."' Id.
Appellants' asserted claims are analogous to claims found ineligible in
Ultramercial and distinct from claims found eligible in DDR Holdings.
The ineligible claims in Ultramercial recited "providing [a] media product
for sale at an Internet website;" "restricting general public access to said
media product;" "receiving from the consumer a request to view [a]
sponsor message;" and "if the sponsor message is an interactive message,
presenting at least one query to the consumer and allowing said consumer
access to said media product after receiving a response to said at least one
query." 772 F.3d at 712. Similarly, Appellants' asserted claims recite
using data to display content and advertising, schedule advertisements,
observing user interactions and informing someone of those interactions, and
displaying an icon, even after an advertisement ends. This is precisely the
type of Internet activity found ineligible in Ultramercial. Rather than
transforming the underlying technology as in DDR, the instant claims recite
an advisory script for using known conventional technology for its intended
use as in Ultramercial.
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Finally we note that although the claims recite the advertising as being
interactive, the claims do not recite the manner or character of such
interactivity as an attribute, and the only argument Appellants base this
interactive attribute on is for enabling interactive advertising on television.
App. Br. 21. This argument is not commensurate with the scope of the
claims as the claims do not recite a television. The recited use of "video
commercial content" describes a data format, not a transmission medium.
Interactivity per se is an attribute of generic computers, particularly those
with graphical user interfaces such as Microsoft Windows. As the Examiner
determines (Ans. 2--4), the recited use of data to indicate what, where, or
when something occurs as in limitations [3] and [ 4] is conventional and
generic, particularly in web page scripts. Appellants do not contend they
invented this as such, only using this in some particular context. The claims
do not recite any particular technological implementations for doing so. The
claims therefore only recite abstract conceptual advice to do so. The claims
do not even narrow the nature of the data used to do so, instead reciting the
use of some generic "indication." Claim 1.
CONCLUSIONS OF LAW
The rejection of claims 1-13, 15-17, and 19-25 under 35 U.S.C. § 101
as directed to non-statutory subject matter is proper.
DECISION
The rejection of claims 1-13, 15-17, and 19-25 is affirmed.
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No time period for taking any subsequent action in connection with this
appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l)(iv) (2011).
AFFIRMED
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