Ex Parte Jacobson

Patent Trial and Appeal Board

Sep 17, 2018

13712790 (P.T.A.B. Sep. 17, 2018)

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.
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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
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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.
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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.
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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.
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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.
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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
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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
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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.
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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
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