Ex Parte JacobsonDownload PDFPatent Trial and Appeal BoardSep 17, 201813712790 (P.T.A.B. Sep. 17, 2018) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 13/712,790 12/12/2012 Van L. Jacobson 99499 7590 09/19/2018 Edell, Shapiro, & Finnan, LLC 9801 Washingtonian Blvd. Suite 750 Gaithersburg, MD 20878 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. 0370.4087C/l 009165-US.Ol 8195 EXAMINER SNIDER, SCOTT ART UNIT PAPER NUMBER 3621 NOTIFICATION DATE DELIVERY MODE 09/19/2018 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): epatent@usiplaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte VAN L. JACOBSON (Applicant: Cisco Technology, Inc.) Appeal2017-004534 Application 13/712,790 1 Technology Center 3600 Before ST. JOHN COURTENAY III., JASON J. CHUNG, and NORMAN H. BEAMER, Administrative Patent Judges. CHUNG, Administrative Patent Judge. DECISION ON APPEAL This is a decision on appeal under 35 U.S.C. § 134(a) of the Non- Final Rejection of claims 1, 3-5, 7-9, 11-13, and 15-20. 2 We have jurisdiction under 35 U.S.C. § 6(b). We affirm. INVENTION The invention is directed to local insertion of online advertisements. Spec.~ 2. Claim 1 is illustrative of the invention and is reproduced below: 1 According to Appellant, Palo Alto Research Center Incorporated is the real party in interest. App. Br. 1. However, this application was assigned to Cisco Systems, Inc. on Jan. 17, 2017, and was further assigned to Cisco Technology, Inc. on Feb. 14, 2017, which is the current real party in interest. 2 Claims 2, 6, 10, and 14 have been canceled. App. Br. 52, 53, 54, 56. Appeal2017-004534 Application 13/712,790 1. A computer-executable method for facilitating delivery of advertisements over a Content-Centric Network, compnsmg: receiving, by a computing device implementing an affiliate network node in the Content-Centric Network, a content piece from a content producer, wherein the affiliate network node that receives the content piece is not the same as the content producer from which the content piece originated, and wherein the content piece includes a placeholder name prefix associated with a predetermined advertising slot; modifying, by the affiliate network node, the content piece by replacing the placeholder name prefix with a name prefix of an advertisement or a name prefix associated with an advertiser; receiving a request over the Content-Centric Network for the content piece from a client; and delivering, by the affiliate network node, the modified content piece to the client over the Content-Centric Network. REJECTIONS AT ISSUE Claims 1, 3-5, 7-9, 11-13, and 15-20 stand rejected under 35 U.S.C. § 101 as being directed to a judicial exception to patent-eligible subject matter. Non-Final Act. 3--4. Claims 1, 4, 5, 8, 9, 12, 13, and 16 stand rejected under 35 U.S.C. § I03(a) as being unpatentable over the combination of Ramer et al. (US 2001/0258049 Al; Oct. 20, 2011), Jacobson (US 2009/0287835 Al; Nov. 19, 2009), and Content Delivery Network (Wikipedia, the free encyclopedia, http:// en. wikipedia. org/w /index. php ?title=Content_delivery _network&o ldid =465077460 (February 27, 2015)). Non-Final Act. 5-12. Claims 3, 7, 11, and 15 stand rejected under 35 U.S.C. § I03(a) as being unpatentable over the combination of Ramer, Jacobson, Content Delivery Network, and Digital Signature (Wikipedia, the free encyclopedia, http://en.wikipedia.org (August 31, 2009)). Non-Final Act. 12-15. 2 Appeal2017-004534 Application 13/712,790 We have only considered those arguments that Appellants actually raised in the Briefs. Arguments Appellants could have made, but chose not to make, in the Briefs have not been considered and are deemed to be waived. See 37 C.F.R. § 41.37(c)(l)(iv). ANALYSIS Rejection of Claims 1, 3--5, 7-9, 11-13, and 15--20 under 35 U.S.C. § 101 The Examiner concludes claims 1, 3-5, 7-9, 11-13, and 15-20 are directed to an abstract idea of presenting content with advertisements in place of advertisement placeholders. Non-Final Act. 3--4. The Examiner also concludes the present claims are analogous to judicial exceptions found in Ultramercial, Inc. v. Hulu LLC, (772 F.3d 709 (Fed. Cir. 2014)). Non- Final Act. 3. The Examiner concludes the claims do not amount to significantly more than the judicial exception because the additional components are generic. Id. at 4 ( citing Spec. ,r 48). Appellant argues the present claims are not abstract because they do not map to any abstract ideas. App. Br. 14--15. Appellant argues the Examiner fails to make a prima facie case because the Examiner does not cite case law and does not map the case law to the limitations of the present claims adequately. Id. at 15-16. Appellant argues the present claims are unlike the claims in Ultramercial because the present claims recite operations that include modifying, by an affiliate network node, a content piece received from a content producer node by replacing a placeholder name prefix with a name prefix of an advertisement or a name prefix associated with an advertiser; whereas the claims in Ultramercial were directed to facilitating a three-way exchange between consumers, content 3 Appeal2017-004534 Application 13/712,790 providers, and advertisers. Id. at 16-18. Appellant argue that the present claims are similar to McRO, Inc. dba Planet Blue v. Bandai Namco Games America Inc., 837 F.3d 1299, 1308-14 (Fed. Cir. 2016) because the present claims are directed to an improvement in computer-related technologies. Reply Br. 3--4. 3 Moreover, Appellant argues the present claims recite an improvement on existing technological practices similar to Diamond v. Diehr, 450 U.S. 175. App. Br. 18-21. In particular, Appellant argues the present claims improve the existing technological process for reducing load on a source node in the network and providing customized information to client devices. Id. at 19-21. In addition, Appellant argue, similar to BASCOM Global Internet Services v. AT&T Mobility LLC, 827 F.3d 1341 (Fed. Cir. 2016), the present claims are inventive due to the non-conventional and non-generic arrangement of elements that are rooted necessarily in computer technology to overcome a specific problem arising in the realm of advertisement insertion. Reply Br. 5-7. 4 We disagree with Appellant. Following the decision in Alice Corp., ( citing Mayo Collaborative Services v. Prometheus Laboratories, Inc., 566 U.S. 66, 82-84 (2012)), we analyze claims where the abstract idea judicial exception to the categories of statutory subject matter is at issue using the following two-part analysis set forth in Mayo: 1) determine whether the claim is directed to an abstract idea; and 2) if an abstract idea is present in the claim, determine whether any 3 Appellants' argument is timely because McRO was decided after the Examiner's Answer mailed. 4 Appellants' argument is timely because BASCOM was decided after the Examiner's Answer mailed. 4 Appeal2017-004534 Application 13/712,790 element, or combination of elements, in the claim is sufficient to ensure that the claim amounts to significantly more than the abstract idea itself. See Alice, 134 S. Ct. at 2350. As to the first part of the analysis, examples of abstract ideas referenced in Alice include: fundamental economic practices; 5 certain methods of organizing human activities; 6 "[a]n idea of itself'; 7 and, mathematical relationships or formulas. 8 Claims that include abstract ideas like these are examined under the second part of the analysis to determine whether the abstract idea has been applied in an eligible manner. As to the second part of the analysis, we consider the claim as a whole by considering all claim elements, both individually and in combination. Id. at 2355. Limitations referenced in Alice that may be enough to qualify as "significantly more" when recited in a claim with an abstract idea include, as non-limiting or non-exclusive examples: improvements to another technology or technical field; 9 improvements to the functioning of the computer itself; 10 and meaningful limitations beyond generally linking the 5 Alice Corp., 134 S. Ct. at 2350: e.g., intermediated settlement, i.e., the use of a third party intermediary to mitigate settlement risk. 6 Id. at 2356: e.g., a series of steps instructing how to hedge risk ( citing Bilski, 561 U.S. at 599). 7 Id. at 2355: e.g., a principle, an original cause, a motive ( citing Gottschalk v. Benson, 409 U.S. 63, 67 (1972) and Le Roy v. Tatham, 14 How. 156, 175 (1852)). 8 Id. at 2350: e.g., a mathematical formula for computing alarm limits in a catalytic conversion process (Parker v. Flook, 437 U.S. 584, 594--95 (1978)), or a formula for converting binary-coded decimal numerals into pure binary form (Benson, 409 U.S. at 71-72). 9 Id. at 2358: e.g., a mathematical formula applied in a specific rubber molding process (citing Diamond v. Diehr, 450 U.S. 175, 177-78 (1981)). 10 Id. at 2359. 5 Appeal2017-004534 Application 13/712,790 use of an abstract idea to a particular technological environment. 11 Limitations referenced in Alice that are not enough to qualify as "significantly more" when recited in a claim with an abstract idea include, as non-limiting or non-exclusive examples: adding the words "apply it" ( or an equivalent) with an abstract idea; 12 mere instructions to implement an abstract idea on a computer; 13 or requiring no more than a generic computer to perform generic computer functions that are well-understood, routine and conventional activities previously known to the industry. 14 If there are no meaningful limitations in the claim that transform the abstract idea into a patent eligible application such that the claim amounts to significantly more than the abstract idea itself, the claim is directed to non- statutory subject matter under 35 U.S.C. § 101. Alice Step 1 On this record, we are not persuaded of error in the Examiner's analysis and conclusion that the present claims are directed to an abstract idea. Non-Final Act. 3--4. We also agree with the Examiner's conclusion that the present claims are similar to the claims in Ultramercial. Similar to Ultramercial, the present claims are directed to an abstract idea of 11 Id. at 2360: noting that none of the hardware recited "offers a meaningful limitation beyond generally linking 'the use of the [ method] to a particular technological environment,' that is, implementation via computers" ( citing Bilski, 561 U.S. at 610---11). 12 Id. at 2357-58. 13 Id.: e.g., simply implementing a mathematical principle on a physical machine, namely a computer (citing Mayo, 566 U.S. at 84--85). 14 Id. at 2359: e.g., using a computer to obtain data, adjust account balances, and issue automated instructions. 6 Appeal2017-004534 Application 13/712,790 presenting content with advertisements in exchange for advertisement placeholders. We disagree with Appellant's argument (App. Br. 14--16) that the Examiner does not cite cases nor map the cases to the present case. The Examiner cites Ultramercial and maps it to the present claims. Non-Final Act. 3--4; Ans. 2. We also disagree with Appellant's argument that the present claims are unlike Ultramercial (App. Br. 16-18) - to the contrary, the claims are similar to Ultramercial, being directed to an abstract idea of presenting content with advertisements in exchange for advertisement placeholders. We disagree with Appellant's arguments (Reply Br. 3--4) that the present claims are similar to McRo because the present claims are directed to an improvement in computer-related technologies. McRO, Inc. dba Planet Blue v. Bandai Namco Games America Inc., 837 F.3d 1299, 1308-14 (Fed. Cir. 2016). In this case, the present claims do not recite any improvement over the prior art using timing rules for lip synchronization and facial expression animation. That is, the present claims present content with advertisements in exchange for advertisement placeholders and are merely executed with technology, but do nothing significant to improve the way the technology operates. Because the present claims are directed to an abstract idea, we proceed to step (2) of the Alice, two-part test. 7 Appeal2017-004534 Application 13/712,790 Alice Step 2 On this record, we are not persuaded of error in the Examiner's analysis and conclusion that the present claims are directed to an abstract idea without significantly more than the abstract idea. Non-Final Act. 3--4. We disagree with Appellant's argument because: the claims do not recite reducing load on a source node in the network; the argument provides no citation to the Specification; and the argument lacks any affidavit to an expert and amounts to mere attorney argument. We also disagree with Appellant's argument that the present claims are inventive due to the non-conventional and non-generic arrangement of elements that are rooted necessarily in computer technology to overcome a specific problem arising in the realm of advertisement insertion (Reply Br. 5-7), because we agree with the Examiner's conclusion that paragraph 48 of the Specification describe the components recited in the present claims as generic. Non-Final Act. 4 (citing Spec. ,r 48). And we conclude although the present claims happen to be performed with technology, the present claims do not overcome a specific problem arising in the realm of advertisement insertion. Accordingly, we sustain the Examiner's rejection of claims 1, 3-5, 7- 9, 11-13, and 15-20 under 35 U.S.C. § 101. Rejection of Claims 1, 3--5, 7-9, 11-13, and 15--20 under 35 U.S.C. § 103(a) Independent claims 1 and 9 recite "modifying, by the affiliate network node, the content piece by replacing the placeholder name prefix with a name prefix of an advertisement or a name prefix associated with an 8 Appeal2017-004534 Application 13/712,790 advertiser" (hereinafter "the modifying limitation"). Independent claims 5 and 13 recite "determining a name prefix of an advertisement or a name prefix of an advertiser that is to serve the advertisement that matches the predetermined advertising slot" (hereinafter "the determining limitation"). The Examiner finds Ramer teaches modifying the content by replacing a placeholder with an advertisement. Non-Final Act. 5 (citing Ramer ,r,r 1291, 1292, 1293, 1890, 1924). The Examiner finds Jacobson teaches a "name prefix" is a substitution for "current web-based naming structures." Non-Final Act. (citing Jacobson ,r,r 9, 56, 58, 77). The Examiner finds the combination of Ramer and Jacobson teach "the modifying limitation" of claims 1 and 9 and "the determining limitation" of claims 5 and 13. The Examiner concludes Appellant's arguments amount to piece-meal attacking references in isolation without considering the combination of references. Ans. 6-7. Appellant argues Ramer does not teach the modifying limitation because Ramer is limited to inserting advertisements in webpages. App. Br. 28-29. Furthermore, Appellant argues Jacobson does not remedy the shortcomings of Ramer because Jacobson merely teaches a name prefix, but does not go as far to teach "the modifying limitation" in claims 1 and 9. Id. at 29-31. Moreover, Appellant argues Ramer and Jacobson fails to teach "the determining limitation" in claims 5 and 13 for similar reasons as it fails to teach "the modifying limitation." Id. at 31-38. We disagree with the Examiner and agree with Appellant. The cited portions of Ramer teach inserting advertisements in webpages. Non-Final Act. 5 (citing Ramer ,r,r 1291, 1292, 1293, 1890, 1924). Jacobson's paragraph 58 is the most relevant to "the modifying 9 Appeal2017-004534 Application 13/712,790 limitation." In particular, the cited portions of Jacobson teach structuring names in a content centric network such that content can be accessed by name, but fails to teach "the modifying limitation" in claims 1 and 9 because the combination of Ramer and Jacobson teaches inserting advertisements into webpages and having a name prefix. However, that combination fails to teach a replacement of a placeholder name prefix with a name prefix of an advertisement or a name prefix associated with an advertiser; rather, it could be that Ramer and Jacobson decide to keep a name prefix the same (i.e., do not replace a placeholder name prefix with a name prefix of an advertisement or a name prefix associated with an advertiser). Ramer and Jacobson do not rise to the level of specificity required to teach "the modifying limitation" of claims 1 and 9. Regarding claims 5 and 13, Jacobson's paragraph 58 is the most relevant to "the determining limitation." In particular, the cited portions of Jacobson teach structuring names in a content centric network such that content can be accessed by name, but fails to teach "the determining limitation" in claims 5 and 13 because the combination of Ramer and Jacobson teaches inserting advertisements into webpages and having a name prefix. However, that combination fails to teach a match of a name prefix of an advertisement or a name prefix of an advertiser with an advertising slot; rather, it could be that Ramer and Jacobson do not match a name prefix at all. Ramer and Jacobson do not rise to the level of specificity required to teach "the determining limitation" of claims 5 and 13. 10 Appeal2017-004534 Application 13/712,790 Accordingly, we do not sustain the Examiner's rejection of: (1) independent claims 1, 5, 9, and 13; and (2) dependent claims 3, 4, 7, 8, 11, 12, and 15-20 under 35 U.S.C. § 103. DECISION We affirm the Examiner's decision rejecting claims 1, 3-5, 7-9, 11- 13, and 15-20 under 35 U.S.C. § 101. We reverse the Examiner's decision rejecting claims 1, 3-5, 7-9, 11- 13, and 15-20 under 35 U.S.C. § 103(a). Because we have affirmed at least one ground of rejection with respect to each claim on appeal, the Examiner's decision is affirmed. See 37 C.F.R. § 4I.50(a)(l). No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv). AFFIRMED 11 Copy with citationCopy as parenthetical citation