Ex Parte KIES et al

Patent Trial and Appeal Board

Nov 29, 2018

11963893 (P.T.A.B. Nov. 29, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
11/963,893 12/24/2007
12371 7590 12/03/2018
Muncy, Geissler, Olds & Lowe, P.C./QUALCOMM
4000 Legato Road, Suite 310
Fairfax, VA 22033
Jonathan K. KIES
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.
QC070772 1878
EXAMINER
MILLER, ALAN S
ART UNIT PAPER NUMBER
3683
NOTIFICATION DATE DELIVERY MODE
12/03/2018 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):
meo.docket@mg-ip.com
meo@mg-ip.com
ocpat_uspto@qualcomm.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JONATHAN K. KIES, KAMERON KERGER, and
ROBERTS. TARTZ
Appeal 2017-001791 1
Application 11/963,893 2
Technology Center 3600
Before HUBERT C. LORIN, TARA L. HUTCHINGS, and
AMEE A. SHAH, Administrative Patent Judges.
HUTCHINGS, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134 from the Examiner's final
rejection of claims 1-59. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 Our decision references Appellants' Appeal Brief ("Appeal Br.," filed June
14, 2016) and Reply Brief ("Reply Br.," filed Nov. 14, 2016), and the
Examiner's Answer ("Ans.," mailed Oct. 6, 2016) and Final Office Action
("Final Act.," mailed Feb. 18, 2016).
2 Appellants identify QUALCOMM Incorporated as the real party in
interest. Appeal Br. 3.
Appeal2017-001791
Application 11/963,893
CLAIMED SUBJECT MATTER
Appellants' invention relates to "optimization [ ofJ the presentation of
media content, specifically advertising content, on a wireless device based
on user behavior." Spec. ,r 1.
Claims 1, 22-25, 46, 50-52, and 56 are the independent claims on
appeal. Claim 56, reproduced below with added bracketed notations, is
illustrative of the claimed subject matter:
56. A method, performed by a wireless communication
device, for presenting advertisements on the wireless
communication device, comprising:
[(a)] capturing usage behavior data on the wireless
communication device;
[ (b)] storing the usage behavior data in a user profile;
[ ( c)] determining to present an advertisement on the
wireless communication device;
[ ( d)] detecting an amount of the usage behavior data that
is currently stored in a portion of the user profile;
[ ( e)] randomly selecting the advertisement if the detected
amount is below a first threshold;
[(f)] selecting the advertisement based on the usage
behavior data stored in the portion of the user profile if the
detected amount is not below a second threshold; and
[ (g)] presenting the selected advertisement at the wireless
communication device.
REJECTION
Claims 1-59 are rejected under 35 U.S.C. § 101 as directed to a
judicial exception without significantly more.
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ANALYSIS
Appellants argue claims 1-59 together. We select claim 56 as
representative. Claims 1-55 and 57-59 stand or fall with claim 56. See
37 C.F.R. § 4I.37(c)(l)(iv).
"Whoever invents or discovers any new and useful process, machine,
manufacture, or composition of matter, or any new and useful improvement
thereof, may obtain a patent therefor, subject to the conditions and
requirements of this title." 35 U.S.C. § 101. Section 101, however,
"'contains an important implicit exception: Laws of nature, natural
phenomena, and abstract ideas are not patentable."' Alice Corp. Pty. Ltd. v.
CLS Bankint'l, 134 S. Ct. 2347, 2354 (2014) (quotingAss'nfor Molecular
Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 589 (2013)).
Alice applies a two-step framework, earlier set out in Mayo
Collaborative Services v. Prometheus Laboratories, Inc., 566 U.S. 66
(2012), "for distinguishing patents that claim laws of nature, natural
phenomena, and abstract ideas from those that claim patent-eligible
applications of those concepts." Alice, 134 S. Ct. at 2355.
Under the two-step framework, it must first be determined if "the
claims at issue are directed to a patent-ineligible concept." Id. If the claims
are determined to be directed to a patent-ineligible concept, e.g., an abstract
idea, then the second step of the framework is applied to determine if "the
elements of the claim ... contain[] an 'inventive concept' sufficient to
'transform' the claimed abstract idea into a patent-eligible application." Id.
at 2357 (citing Mayo, 566 U.S. at 72-73, 79).
Here, the Examiner determines that the claims are "directed to
optimizing / targeting the presentation of media on a mobile device by
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comparing stored usage data in a user profile to a threshold." Final
Action 11. The Examiner further determines that "[p ]roviding targeted
advertisements is a concept relating to the economy and commerce, such as
agreements between people in the form of contracts, legal obligations, and
business relations, and as such it is considered a 'fundamental economic
practice'." Id. Additionally, the Examiner determines that "[t]he claimed
steps of receiving content, capturing and storing usage behavior, and
selecting, for presentation, first, second and third media content based on a
comparison of the data to a threshold, is simply the gathering and
comparison of data which can be performed mentally and is an idea of
itself." Id. The Examiner determines that the claims are "similar to other
concepts that have been identified as abstract by the courts." Id. ( comparing
the claims with the claims held to be ineligible in CyberSource, 3
SmartGene, 4 Digitech, 5 and Flook6). The Examiner further determines that
the claimed elements show "no features, either alone or taken as a whole,
that would amount to significantly more, as the claims merely recite using
generic computer hardware performing the steps of receiving, storing,
comparing and displaying data." Ans. 7; see also Final Act. 11-12.
Appellants charge that the Examiner has failed to identify the alleged
abstract idea "as it is recited ... in the claim," violating USPTO guidelines.
3 CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366 (Fed. Cir.
2011).
4 SmartGene, Inc. v. Advanced Biological Labs., SA, 555 F. App'x 950
(Fed. Cir. 2014).
5 Digitech Image Techs., LLC v. Elecs. For Imaging, Inc., 758 F.3d 1344
(Fed. Cir. 2014).
6 Parker v. Flook, 437 U.S. 584 (1978).
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Appeal Br. 12 (quoting Comm'r of Patent Examination Memorandum,
"Formulating a Subject Matter Eligibility Rejection and Evaluating the
Applicant's Response to a Subject Matter Eligibility Rejection" (May 4,
2016)). Appellants' argument is not persuasive at least because there is no
requirement that the Examiner's formulation of an abstract idea must copy
the claim language. Instead, the Federal Circuit has explained that "the
'directed to' inquiry applies a stage-one filter to claims, considered in light
of the specification, based on whether 'their character as a whole is directed
to excluded subject matter."' Enfish, LLC v. Microsoft Corp., 822 F.3d.
1327, 1335 (Fed. Cir. 2016) (quoting Internet Patents Corp., 790 F.3d
at 1346).
Appellants argue that the claimed invention is not directed to a
fundamental economic practice, a method of organizing human activities, an
idea of itself, or a mathematical formula. Appeal Br. 12; see also Reply
Br. 3. However, claim 56 recites a method for presenting advertisements
that includes the steps of: (a) capturing usage behavior data; (b) storing the
usage behavior data in a user profile; ( c) determining to present an
advertisement; ( d) detecting an amount of the usage behavior data that is
current stored; ( e) randomly selecting the advertisement if the detected
amount is below a first threshold; (f) selecting the advertisement based on
the stored usage behavior data; and (g) presenting the selected
advertisement. In other words, claim 56 involves nothing more than
collecting data (steps (a) and (b )), analyzing data (steps ( c }-(f)), and
presenting the result (step (g))- a method of organizing activities and a
fundamental economic practice, i.e., an abstract idea. Therefore, the
Examiner's determination that the claims are directed to "optimizing/
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targeting the presentation of media on a mobile device by comparing stored
usage data in a user profile to a threshold" and that this concept is similar to
other concepts that have been held by the courts to be in the realm of
abstract ideas has adequate support. See, e.g., Elec. Power Grp. LLC v.
Alstom, S.A., 830 F.3d 1350, 1353-54 (Fed. Cir. 2016) (characterizing
collecting information, analyzing information by steps people go through in
their minds, or by mathematical algorithms, and presenting the results of
collecting and analyzing information, without more, as matters within the
realm of abstract ideas); Intellectual Ventures I LLC v. Capital One Bank
(USA), 792 F.3d 1363, 1369 (Fed. Cir. 2015) (holding that tailoring content
presented to a user is an abstract idea that has been long prevalent in our
system of commerce, as exemplified by the longstanding practice of
providing different newspaper inserts based on location of the individual);
Morsa v. Facebook, Inc., 77 F. Supp. 3d 1007, 1013 (C.D. Cal. 2014), aff'd,
622 F. App 'x 915 (Fed. Cir. 2015) ("targeted advertising is just such a
concept, insofar as matching consumers with a given product or service 'has
been practiced as long as markets have been in operation."').
Appellants argue that the Examiner's level of detail in characterizing
the claims stands "in contrast to the very high-level abstract ideas in the
relevant case law." Appeal Br. 12 ( citations omitted). However, the
Examiner's articulation of the abstract idea at a lower level of abstraction or
in slightly different ways is an insufficient basis for finding that the claims
are not directed to an abstract idea. 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,
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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."). Here, the Examiner alternatively could have described the
abstract idea at a higher level of abstraction, such as "targeting the
presentation of media"7 or in other ways, such as the variations presented in
the Answer that Appellants noted at page 2 of the Reply Brief. 8
Appellants argue that the claims are "directed to an improvement in
computer functionality itself," which facilitates "an improvement in system-
wide delivery of media content." Appeal Br. 13; see also Reply Br. 4--5.
Specifically, pointing to paragraph 4 of the Specification, Appellants assert
that having no knowledge of the user's interests and/or usage behavior and
randomly distributing advertisements results in inefficient distribution of the
advertisements. Id. However, the problem Appellants seek to address-
namely, targeting advertisements, to interested users (see Spec. ,r 4)- is a
business challenge, not an improvement to computer functionality itself.
Quoting paragraph 5 of the Specification, Appellants further argue
that the claimed invention overcomes problems with prior art methods for
targeting media content delivery. Appeal Br. 13-14. Specifically, according
to Appellants, targeted media content delivery typically requires multiple
and persistent communications from the wireless communication device to
7 See Spec. 7 ("a need exists to develop a method for targeting, otherwise
referred to as optimizing, the presentation of delivered media content on a
wireless communication device").
8 The first page of the Reply Brief is numbered as page 1, but the remaining
pages are not numbered. We refer to the pages in the Reply Brief as if
numbered consecutively after page 1.
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the server, requires a large amount of back-end servers to store user profiles
and usage behavior files, and threatens user privacy. Id. at 13. Appellants
contend that by performing the method at the wireless communication
device "the functionality of the wireless communication device itself is
improved" by obtaining targeted advertising "while using less power and
bandwidth[] [and] without compromising the privacy of the user." Id.
Yet, the relevant inquiry at step one is whether the claims are directed
to an improvement to computer functionality versus an abstract idea, such as
"economic or other tasks for which a computer is used in its ordinary
capacity." Enfzsh, 822 F.3d. at 1336. Here, the focus of the claims, as
understood in light of the Specification, is on the abstract idea of targeting
the presentation of media. See, e.g., Spec. ,r,r 1, 7, 9, 39-41. The wireless
communication device is used to implement the abstract idea. We find no
improvement in the computer capabilities of the claimed wireless
communication device itself comparable to the improvement to computer
functionality achieved by Enfzsh 's self-referential table for a computer
database. Enfzsh, 822 F.3d. at 1336. To the extent that Appellants argue that
claim 56 improves conventional targeted advertising technology, we are not
persuaded that a generic wireless communication device (see Spec. ,r 48)
performing the abstract idea of targeted advertisement selection lends claim
56 to a step-one finding that claim 56 is directed to a nonabstract idea. See
BASCOM Global Internet Services, Inc. v. AT&T Mobility LLC, 827 F.3d
1341, 1349 (Fed. Cir. 2016) (contrasting the claims at issue to those in
Enfzsh that "were unambiguously directed to an improvement in computer
capabilities" at step one of the analysis).
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We also are not persuaded of Examiner error by Appellants' argument
regarding preemption. Appeal Br. 13-15; see also Reply Br. 5-6. There is
no dispute that the Supreme Court has described "the concern that drives
[the exclusion of abstract ideas from patent eligible subject matter] as one of
pre-emption." Alice, 134 S. Ct. at 2354. But characterizing preemption as a
driving concern for patent eligibility is not the same as characterizing
preemption as the sole test for patent eligibility. "The Supreme Court has
made clear that the principle of preemption is the basis for the judicial
exceptions to patentability" and, "[ fJor 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). "[P]reemption may signal patent ineligible subject matter,
[but] the absence of complete preemption does not demonstrate patent
eligibility." Id.
Appellants argue that the Examiner has not provided adequate
evidentiary support for the determination at page 12 of the Final Office
Action that the additional elements or combination of elements in the claims
are well-understood, routine, and conventional. Appeal Br. 15-17; see also
Reply Br. 6. Yet, Appellants do not identify any additional elements recited
in the claims that are not well-understood, routine, and conventional. Here,
the only "additional elements" beyond the abstract idea recited in claim 56 is
the use of the claimed wireless communication device to perform the method
steps. But the Specification supports the Examiner's finding that the
claimed wireless communication device is a conventional wireless
communication device. See Spec. ,r,r 37, 48 ("The wireless communication
device 12 may include any type of computerized, communication device,
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such as cellular telephone, Personal Digital Assistant (PDA), two-way text
pager, portable computer, and even a separate computer platform that has a
wireless communications portal, and which also may have a wired
connection to a network or the Internet."). "That purely mental processes
can be unpatentable, even when performed by a computer, was precisely the
holding of the Supreme Court in Gottschalk v. Benson[, 93 S. Ct. 253
(1972)]." CyberSource Corp. v. Retail Decision, Inc., 654 F.3d 1366, 1375
(Fed Cir. 2011).
Appellants additionally assert that the lack of prior art rejections of
the claimed subject matter illustrates that the features are not well-
understood, routine, and conventional in the art, and that the claims are
limited to a particular technology environment. Appeal Br. 1 7; see also
Reply Br. 6. As an initial matter, the mere recitation of a practical
application for an abstract idea is insufficient to transform the abstract idea
into a patent-eligible invention. Cf CyberSource Corp. v. Retail Decisions,
Inc., 654 F.3d 1366, 1371 (Fed. Cir. 2011) ("The Court [in Parker v. Flook,
437 U.S. 584 (1978)] rejected the notion that the recitation of a practical
application for the calculation could alone make the invention patentable.").
Additionally, a finding of novelty or non-obviousness does not
automatically lead to the conclusion that the claimed subject matter is
patent-eligible. Although the second step is termed a search for an
"inventive concept," the analysis is not an evaluation of novelty or non-
obviousness, but rather, a search for "an element or combination of elements
that is 'sufficient to ensure that the patent in practice amounts to
significantly more than a patent upon the [ineligible concept] itself."' Alice
Corp., 134 S. Ct. at 2355. An abstract idea does not transform into an
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inventive concept just because the prior art does not disclose or suggest it.
See Mayo, 566 U.S. at 90.
Here, claim 56 additionally recites a wireless communication device
operating in its ordinary capacity to implement the claimed steps. The
claims recite an invention that is merely the routine or conventional use of a
wireless communication device to carry out the abstract idea. See Two-Way
Media Ltd. v. Comcast Cable Comm 'ns, LLC, 874 F.3d 1329, 1339 (Fed.
Cir. 201 7) ( although "Two-Way Media asserts that the claim solves various
technical problems," "[n]othing in the claims ... requires anything other
than conventional computer and network components operating according to
their ordinary functions") ( citation omitted); see also BASCOM Glob.
Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341, 1350 (Fed. Cir.
2016) ( claims that merely recite the abstract idea along with the requirement
to perform it on generic computer components would not contain an
inventive concept) (citing CyberSource, 654 F.3d at 1370). Appellants do
not identify, and we do not find, any claim element or arrangement of claim
elements that amounts to significantly more than the abstract idea.
Appellants also seek to analogize the present claims to the claims in
DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014).
Appeal Br. 17-20 (citing Spec. ,r,r 4--5 as describing several technology-
specific problems that the claims overcome); see also Reply Br. 6-7.
However, unlike Appellants' claim 56, the invention claimed in DDR
Holdings does more than simply implement the abstract idea using a
conventional computer operating in its ordinary capacity and with
insignificant added activity. See DDR Holdings, 773 F.3d at 1258. Instead,
the claims at issue in DDR Holdings "specify how interactions with the
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Internet are manipulated to yield a desired result-a result that overrides the
routine and conventional sequence of events ordinarily triggered by the click
of a hyperlink." Id. Here, claim 56 improves the process for selecting
targeted advertising, which is an abstract idea. The process is implemented
locally on a wireless communication device instead of remotely at a server,
but there is no indication that implementing the process at a distributed
wireless communication device instead of a central server is a problem
rooted in technology or amounts to an inventive concept sufficient to
transform the abstract idea to a particular application.
In view of the above, we are not persuaded that the Examiner erred in
determining that claim 56 is directed to a judicial exception without
significantly more. Claims 1-55 and 57-59 fall with claim 56.
DECISION
The Examiner's rejection of claims 1-59 under 35 U.S.C. § 101 is
affirmed.
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).
AFFIRMED
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