Ex Parte Hartman

Patent Trial and Appeal BoardOct 16, 2017

12240653 (P.T.A.B. Oct. 16, 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. 12/240,653 09/29/2008 Steven Hartman 12729-898 (Y04815US00) 5763 149109 7590 BGL/Excalibur P.O. Box 10395 Chicago, IL 60610 10/16/2017 EXAMINER ALVAREZ, RAQUEL ART UNIT PAPER NUMBER 3622 MAIL DATE DELIVERY MODE 10/16/2017 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte STEVEN HARTMAN Appeal 2016-0038181 Application 12/240,6532 Technology Center 3600 Before ANTON W. FETTING, BIBHU R. MOHANTY, and ALYSSA A. FINAMORE, Administrative Patent Judges. FINAMORE, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134, Appellant appeals from the Examiner’s decision to reject claims 1—26. We have jurisdiction under § 6(b). We AFFIRM. 1 Our Decision references Appellant’s Specification (“Spec.,” filed Sept. 29, 2008), Appeal Brief (“Appeal Br.,” filed June 4, 2015), Corrected Claims Appendix (“Claims App.,” filed Aug. 18, 2015), and Reply Brief (“Reply Br.,” filed Mar. 1, 2016), the Examiner’s Final Office Action (“Final Act.,” mailed Dec. 23, 2014) and Answer (“Ans.,” mailed Jan. 4, 2016), and the transcript of the oral hearing held August 31, 2017 (“Tr.,” mailed Sept. 28, 2017). 2 Appellant identifies Yahoo! Inc. as the real party in interest. Appeal Br. 2. Appeal 2016-003818 Application 12/240,653 SUBJECT MATTER ON APPEAL The invention “generally relate[s] to publisher customization of advertisement data” and, more specifically, relates to “systems and methods for allowing a publisher to update dynamically generated ad marker data.” Spec. 12. Claims 1,10, and 19 are the independent claims on appeal. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A method for publisher customization of advertisement data, the method comprising: receiving at a server computer a request from a client device for an advertisement to be placed on a web page to be displayed on the client device; in response to the receipt of the request for an advertisement to be placed on a web page, determining at the server computer whether data defining an ad marker associated with the advertisement has been previously stored in an ad marker data store accessible by the server computer, the data defining the ad marker including an identifier that identifies the advertisement as advertising content on the web page when the data defining the ad marker is presented in the advertisement when the advertisement is placed on the web page; electronically generating, via a processing device of the server computer, a generic ad marker for the requested advertisement if no data defining the ad marker has been stored in the ad marker data store; if data defining the ad marker has been stored in the ad marker data store, retrieving from the ad marker data store one or more ad marker parameters associated with the stored ad marker; formatting the identifier according to the one or more ad marker parameters; electronically generating, via the processing device, a custom ad marker from the formatted identifier for the requested advertisement; and communicating data defining the advertisement and one of the generic ad marker and the custom ad marker to the client 2 Appeal 2016-003818 Application 12/240,653 device to be placed on the web page to be displayed on the client device. REJECTION The Examiner rejects claims 1—26 under 35 U.S.C. § 101 as non- statutory subject matter. ANALYSIS In rejecting the claims under 35 U.S.C. § 101, the Examiner analyzes the claims using the two-step framework set forth in Mayo Collaborative Services v. Prometheus Laboratories, Inc., 132 S. Ct. 1289, 1296—97 (2012) and reiterated in Alice Corp. Pty. Ltd. v. CLS Bank International, 134 S. Ct. 2347, 2355 (2014), whereby the first step considers whether the claims are directed to a patent-ineligible concept, e.g., an abstract idea, and, if so, the second step considers whether the claims, individually and as an ordered combination, recite an inventive concept—an element or combination of elements sufficient to ensure the claims amount to significantly more than the abstract idea and transform the nature of the claims into a patent-eligible concept. Pursuant to the first step of the analysis, the Examiner finds the claims are directed to an abstract idea because the claims are directed to “determining if data associated with the advertisements have been previously stored in an ad marker store and electronically generating a generic ad marker for the requested advertisement if no ad marker has been stored, for the purpose of enhancing revenue,” which “is a fundamental economic practice (enhancing revenue) and employs mathematical relationships/formulas (algorithms) to achieve this outcome.” Final Act. 6; see also id. at 7—9. Under the second step, the Examiner finds the claims do 3 Appeal 2016-003818 Application 12/240,653 not recite additional limitations amounting to significantly more than the abstract idea because the claims are a mere instruction to apply the abstract idea. Final Act. 7; see also id. at 8—9. The Examiner also finds the claims require no more than computer functions that are well-understood, routine, and conventional. Final Act. 7; see also id. at 8—9. The Examiner further finds that the claims are not an improvement to another technology, technical field, or the functioning of the computer, and that the claims do not include meaningful limitations beyond generally linking the use of an abstract idea to a particular technical environment. Final Act. 7; see also id. at 8—9. As an initial matter, Appellant’s argument that the claims do not preempt every form of an online advertisement brokering communication system does not apprise us of error in the Examiner’s rejection. Appeal Br. 18. Although preemption may be the concern driving the exclusion of abstract ideas from patent-eligible subject matter, preemption is not the test for eligibility. “The Supreme Court has made clear that the principle of preemption is the basis for the judicial exceptions to patentability” and “[f]or this reason, questions on preemption are inherent in and resolved by the § 101 analysis.” Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015) (citing Alice, 134 S. Ct. at 2354). Turning to Appellant’s arguments under the § 101 analysis, Appellant asserts the Examiner merely concludes, without evidence or explanation, that the claims are directed to an abstract idea. Appeal Br. 9; Reply Br. 2. According to Appellant, the claims recite detailed structure and function, and the Examiner does not connect the claim language to an abstract idea. Appeal Br. 9; Reply Br. 2. We disagree. 4 Appeal 2016-003818 Application 12/240,653 The claims recite receiving a request for an advertisement to be placed on a web page and determining whether data defining an ad marker associated with the requested advertisement has been previously stored in an ad marker data store. Claims App. If there is no data defining an ad marker associated the advertisement in the ad marker data store, a generic ad marker for the advertisement is generated. Id. On the other hand, if data defining an ad marker is stored in the ad marker data store, a custom ad marker is generated based on one or more parameters associated with the stored ad marker. Id. Although the Examiner’s characterization unnecessarily includes one of the two exclusive ways of generating an ad marker, i.e., generating a generic ad marker for the requested advertisement if no ad marker has been stored, the Examiner’s characterization of the claims nevertheless reflects the character of the claims as whole. See Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1240 (Fed. Cir. 2016) (“An abstract idea can generally be described at different levels of abstraction. As the Board has done, the claimed abstract idea could be described as generating menus on a computer, or generating a second menu from a first menu and sending the second menu to another location. It could be described in other ways, including, as indicated in the specification, taking orders from restaurant customers on a computer.”). Given that the claims recite determining whether data defining an ad marker associated with a requested advertisement has been stored in an ad marker data store and two discrete ways of generating an ad marker based on the determination, the claims, as a whole, are directed to “determining if data associated with the advertisements have been previously stored in an ad marker store and generating an ad marker for the 5 Appeal 2016-003818 Application 12/240,653 requested advertisement, for the purpose of enhancing revenue.” Cf. PNC Bankv. Secure Axcess, LLC, CBM2014-00100, slip. op. at 21 (PTAB Sept. 9, 2014) (Paper 10) (determining Petitioner does not adequately tie the purposed abstract concept of placing a trusted stamp or seal on a document to the claim language because the claims do not recite placing stamp on a document). Furthermore, the concept of “determining if data associated with the advertisements have been previously stored in an ad marker store and generating an ad marker for the requested advertisement, for the purpose of enhancing revenue” is similar to concepts the courts have held to be abstract ideas. For example, the Federal Circuit has held the concept of tailored advertising to be a fundamental economic practice and therefore an abstract idea. Intellectual Ventures I LLC v. Capital One Bank (USA), 792 F.3d 1363, 1369-70 (Fed. Cir. 2015). As the Examiner points out, the Federal Circuit has also held the concept of “collecting and comparing known information” to be an abstract idea. In re Classen, 659 F.3d 1057, 1067 (Fed. Cir. 2011); Ans. 2. Consequently, the Examiner has sufficiently shown that the claims are directed to an abstract idea. Appellant also argues that the claims are not directed to an abstract idea because the present claims are similar to the patent-eligible claims in DDR Holdings, LLCv. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014). Appeal Br. 10-13; Reply Br. 3—5. According to Appellant, the claimed invention allows for the real-time generation of an ad marker for an advertisement to be displayed on a web page, which is a problem unique to the Internet. Appeal Br. 12; Reply Br. 5. Appellant further asserts that, like the claims in DDR, the present claims “chang[e] the fundamental mechanics 6 Appeal 2016-003818 Application 12/240,653 of the way a web site is displayed by changing these ad markers to allow them to be customized on the fly.” Tr. 6. We, however, see no parallel between the present claims and the patent-eligible claims in DDR. In DDR, the Federal Circuit determined that the claims address the problem of retaining website visitors who, if adhering to the routine, conventional functioning of Internet hyperlink protocol, would be transported instantly away from a host’s website after clicking on an advertisement and activating a hyperlink. 773F.3datl257. The Federal Circuit, thus, held that the claims are directed to statutory subject matter because they claim a solution “necessarily rooted in computer technology in order to overcome a problem specifically arising in the realm of computer networks.” Id. Here, even if we agree with Appellant that both the claims in DDR and the present claims affect the appearance of a website, we fail to see how the claimed invention addresses a problem specific to computers or how the claimed invention is rooted in computer technology. Unlike the problem of retaining visitors to a website, customizing ad markers for an advertisement is not is a problem unique to computer technologies. To the contrary, customization of ad markers is an issue in any field that uses ad markers, including printed publications such as newspapers and magazines. Accordingly, Appellant’s reliance on DDR does not apprise us error. Appellant similarly argues that the claims are not directed to an abstract idea because they are inextricably linked to computing systems. Appeal Br. 13—14. As set forth above, however, the claimed invention does not address a problem unique to computers. Furthermore, although claims recite various computing components, there is no indication that the claimed 7 Appeal 2016-003818 Application 12/240,653 computing components are something apart from generic computer components performing routine and conventional computer functions to execute the recited functions. As such, the claimed invention is simply the generic computer implementation of the abstract idea, which is not patent- eligible. See, e.g., DDR, 773 F.3d at 1256 (“[Tjhese claims in substance were directed to nothing more than the performance of an abstract business practice on the Internet or using a conventional computer. Such claims are not patent-eligible.”). Appellant further argues that the claims are not directed to an abstract idea because the claims use rules, i.e., parameters, to replace a publisher’s artistic judgement, similar to the patent-eligible claims in McRO, Inc. v. Bandai Namco Games America, Inc., 837 F.3d 1299 (Fed. Cir. 2016). Tr. 12—13. Appellant’s argument is unpersuasive. In McRO, the Federal Circuit found that “the claims themselves set out meaningful requirements for the first set of rules: they ‘defme[] a morph weight set stream as a function of phoneme sequence and times associated with said phoneme sequence.’” 837 F.3d at 1313 (citation omitted). The Federal Circuit further explained that “[t]he specific, claimed features of these rules allow for the improvement realized by the invention.” Id. The present claims are distinguishable from the patent-eligible claims in McRO. Notably, the claimed invention does not require the use parameters to generate an ad marker. As set forth above, the claims recite two discrete ways of generating an ad marker, and only one way uses parameters to generate a custom ad marker. Claims App. Moreover, the present claims do not define the recited “one or more parameters.” Claims App. The claims simply recite that one or more 8 Appeal 2016-003818 Application 12/240,653 parameters is used to format the identifier and that the formatted identifier is used to electronically generate a custom ad marker. Id. Consequently, we fail to see how the recited “one or more parameters” results in an improvement. Rather, the improvement appears to be the automation of the conventional activity of generating a custom ad marker by formatting an identifier based on a client’s design parameters. Cf. McRO, 837 F.3d at 1314 (“This [conventional] activity, even if automated by rules, would not be within the scope of the claims because it does not evaluate sub-sequences, generate transition parameters or apply transition parameters to create a final morph weight set. It is the incorporation of the claimed rules, not the use of the computer, that ‘improved [the] existing technological processes’ by allowing the automation of further tasks.”) (citing Alice, 134 S. Ct. at 2358). Additionally, Appellant argues that the claims amount to significantly more than the abstract idea because the claimed invention improves other technology by allowing exploitation of screen space and the use of video and interactive advertisements. Appeal Br. 15—16; Reply Br. 6—7. Appellant’s argument is not persuasive. The present invention improves the generation of ad markers by allowing an ad marker to be customized for an advertisement (Tr. 6—7), but the customization of an ad marker is not unique to computers, nor is it technical. Although the need for customization of ad markers may be exacerbated for on-line advertisements, customization of ad markers is an issue in any field that uses ad markers, including printed publications. Said differently, an improvement to the generation of ad markers is not a technological improvement. 9 Appeal 2016-003818 Application 12/240,653 Appellant also argues that the claims amount to significantly more than the abstract idea because they are patentable over the prior art. Appeal Br. 16—17; Reply Br. 7—8. Appellant’s argument is not persuasive. Notwithstanding that ‘“the § 101 patent-eligibility inquiry and, say, the § 102 novelty inquiry might sometimes overlap’ ... a claim for a new abstract idea is still an abstract idea.” Synopsys, Inc, y. Mentor Graphics Corp839 F,3d 1138, 1151 (quoting Mayo, 132 S. Ct. at 1304). The question in the second step of the patent-eligibility' analysis is not: whether an additional feature is novel, but whether the implementation of the abstract idea involves “more than the performance of Veil-understood, routine, [and] conventional activities previously known to the industry,”’ Content Extraction and Transmission LLC v. Wdis Fargo Bank, Nat. Ass’ru 776 1.3d 1343, 1347-48 (quoting Alice, 134 S. Ct. at 2359). Appellant does not explain how the implementation of the abstract idea, requires something apart from generic computing components and generic computer functionality.