Ex Parte Hegeman et al

Patent Trial and Appeal BoardDec 14, 2017

13545266 (P.T.A.B. Dec. 14, 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. 13/545,266 07/10/2012 John Hegeman 26295-20055 1050 87851 7590 12/18/2017 Faoehnnk/Fen wi ok EXAMINER Silicon Valley Center ELCHANTI, TAREK 801 California Street Mountain View, CA 94041 ART UNIT PAPER NUMBER 3621 NOTIFICATION DATE DELIVERY MODE 12/18/2017 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): ptoc @ fenwick.com fwfacebookpatents @ fenwick.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JOHN HEGEMAN, HONG GE, MAXIM GUBIN, and ALON AMIT Appeal 2016-004317 Application 13/545,266 Technology Center 3600 Before PHILIP J. HOFFMANN, CYNTHIA L. MURPHY, and BRADLEY B. BAYAT, Administrative Patent Judges. MURPHY, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING In this Request for Rehearing (“Request”), the Appellants ask us to reconsider our opinion of September 25, 2017 (“Opinion”) in which we affirmed the Examiner’s rejection of claims 1—32 under 35 U.S.C. § 101 as failing to recite patent-eligible subject matter. The Appellants’ Request appears to be premised primarily upon two relatively recent cases (.McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299 (Fed. Cir. 2016) and Electric Power Group, LLC v. Alstom S.A., 830 F.3d 1350 (Fed. Cir. 2016)) that apparently were decided “after the Appeal Brief and the Reply Brief were both filed” and/or that purportedly were not “raised” by us during the Oral Hearing. (See Request 2.) We have carefully reconsidered these more recent cases, and the Appellants ensuing Appeal 2016-004317 Application 13/545,266 arguments, but stand by our conclusion that the claims on appeal do not do not pass muster under 35U.S.C. § 101. As an initial matter, the Appellants’ reliance upon McRO is misplaced. (See Request 3 4.) In McRO, the Federal Circuit held that “claim 1 is directed to a patentable, technological improvement over existing, manual 3-D animation techniques’’ and “therefore, is not directed to an abstract idea.” McRO at 1316, (emphasis added). In reaching this determination, the Federal Circuit expressly distinguished 3-D animation steps from those involved in “carrying out of a fundamental economic practice.” Id. at 1315. Here, the claims on appeal are directed to carrying out the fundamental economic practice of targeting advertising (see Opinion 5), which immediately sets them apart from the claims considered by the Federal Circuit in McRO. In the Request, the Appellants do not point with particularity to, and we do not see, any feature recited in the claims on appeal that carries out a function unrelated to target advertising. Rather, the Appellants’ concerns voiced in the Request appear to reside in our allegedly improper characterization of the claims’ “additional limitations.” (Request 2.) In other words, the Appellants contend that our analysis of the second step of the Alice test, and particularly “our analysis of the claims under EPG” is flawed. (Id.) However, the Federal Circuit’s holding in Electric Power Group does not make or break our analysis under the second step of the Alice test. As set forth in the Opinion: As for the second step of the Alice test, we agree with the Examiner that the claims on appeal contain no inventive concept because they simply implement the above-identified abstract concept through the generic computer elements. The 2 Appeal 2016-004317 Application 13/545,266 claims on appeal call only for a “processor” that receives requests, performs score-related computations, selects stories based on these computations, and/or sends selected stories to the viewing user. (See Appeal Br., Claims App.) In other words, the processor functions solely as a tool to speed the selection of stories by, for example, collecting data and performing calculations. (Opinion 7.) Just as in Alice, “all of these computer functions are ‘well- understood, routine, conventional activities] ’ previously known to the industry.” Alice, 134 S. Ct. at 2359 (quoting Mayo, 132 S. Ct. at 1294) (alterations in original); see also buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355 (Fed. Cir. 2014). Indeed, the Specification states that “[a]ny computer-based system that provides social networking functionality can be used in accordance with the present invention” and “[t]he invention is thus not limited to any particular type of communication system, network, protocol, format or application.” (Spec. 1 87.)1 In any event, the crux of the Appellants’ arguments continues to be that the claimed process “requires that a score for a matching candidate organic story be generated in a specific wav by computing an organic score, a revenue contribution, combining the organic score and the revenue contribution, and applying a conversion factor to the combination of the organic score and the revenue contribution.” (Request 5.) This same line of argument was advanced in the Appeal Brief and the Reply Brief. (See, e.g., Appeal Br. 4; Reply Br. 4.) As we explained then (see, e.g., Opinion 7), and as we explain again now, this “score,” and the specific way this “score” is derived, 1 As for McRO, as indicated above, the Federal Circuit held the claims in that case were not directed to an abstract idea, and, therefore, they did “not reach Alice step two.” McRO at 1316. 3 Appeal 2016-004317 Application 13/545,266 corresponds, at most, to an improvement in the fundamental economic practice of targeted advertising. And an improved abstract idea (e.g., “an innovative improvement on the abstract idea of targeted advertising”) is still an abstract idea. (Id. ) On a more general note, the Appellants seem to urge us to view “preemption” as a dispositive beacon of patent eligibility. (See, e.g., Request 4—5.) However, “[wjhile preemption may signal patent ineligible matter, the absence of complete preemption does not demonstrate patent eligibility.” Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015). Preemption concerns are fully addressed and made moot where, as here, the claims are deemed to recite only patent-ineligible subject matter under the two-step Alice test. Lastly, the Appellants draw our attention to “the reversal of the prior art rejections” as a recognition that the claims recite a “novel generation of values.” (Request 5—6.) This is just another way of saying that the claims recite an undocumented version of the merely abstract idea of targeted advertising. And a novel and nonobvious claim directed to a purely abstract idea is, nonetheless, patent-ineligible. Mayo Collaborative Services v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1304 (2012). REHEARING DENIED 4