Ex Parte Lieberman et al

Patent Trial and Appeal Board

May 29, 2018

13411067 (P.T.A.B. May. 29, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/411,067 03/02/2012
83664 7590 05/31/2018
Davis Wright Tremaine LLP - SF
IP Docketing Dept.
Davis Wright Tremaine LLP
1201 Third Avenue, Suite 2200
Seattle, WA 98101
FIRST NAMED INVENTOR
Todd Lieberman
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.
0105932-001 US2 2974
EXAMINER
SORKOWITZ, DANIEL M
ART UNIT PAPER NUMBER
3681
NOTIFICATION DATE DELIVERY MODE
05/31/2018 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):
patentdocket@dwt.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TODD LIEBERMAN, ARI JACOBY, JEFF WEISBERG, and
JOHN CAPPIELLO
Appeal2016-005429
Application 13/411,067
Technology Center 3600
Before HUBERT C. LORIN, BIBHU R. MOHANTY, and
NINA L. MEDLOCK, Administrative Patent Judges.
MOHANTY, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellants seek our review under 35 U.S.C. § 134 of the rejection
of claims 1-16, which are all the claims pending in the application. We
have jurisdiction under 35 U.S.C. § 6(b ).
SUMMARY OF THE DECISION
We AFFIRM.
Appeal2016-005429
Application 13/411,067
THE INVENTION
The Appellants' claimed invention is directed to generating and
managing interactive advertisements. (Spec., para. 2). Claim 1, reproduced
below, is representative of the subject matter on appeal.
1. A computer-implemented method comprising:
receiving, by a computer, a request for content from a user;
identifying, by the computer, an advertiser based on a user
dataset;
providing, by the computer, an interactive advertisement
associated with the advertiser comprising:
user;
a) a media segment,
b) a branding message, and
c) a user input segment configured to receive a user
response;
transmitting, by the computer, the interactive advertisement to a
receiving, by the computer, the user response;
verifying, by the computer, the user response based on at least a
portion of the branding message;
in response to an acceptable user response, received after at
least some of the interactive advertisement is presented, skipping, by
the computer, at least a portion of the interactive advertisement being
presented;
in response to an unacceptable user response, displaying, in its
entirety, the interactive advertisement being presented; and
providing, by the computer, access to the content.
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Application 13/411,067
THE REJECTIONS
The following rejections are before us for review:
1. Claims 1-16 are rejected under 35 U.S.C. § 101 as being
directed to non-statutory subject matter.
2. Claims 1-11 are rejected under 35 U.S.C. § 102(e) as
anticipated by Jamal (US 2009/0012855 Al, pub. Jan. 8, 2009).
3. Claims 12-16 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Jamal and Haumont (US 2011/0238466 Al, pub. Sept. 29,
2011).
FINDINGS OF FACT
We have determined that the findings of fact in the Analysis section
below are supported at least by a preponderance of the evidence. 1
ANALYSIS
Rejection under 35 USC§ 101
The Appellants argue that the rejection of claim 1 is improper because
the claim is not directed to an abstract idea and instead rooted in technology
(App. Br. 8-10).
In contrast, the Examiner has determined that rejection is proper
(Final Act. 2, 3, Ans. 2, 3).
1 See Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988)
(explaining the general evidentiary standard for proceedings before the
Patent Office).
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Application 13/411,067
We agree with the Examiner. Under 35 U.S.C. § 101, an invention is
patent-eligible if it claims a "new and useful process, machine, manufacture,
or composition of matter." 35 U.S.C. § 101. The Supreme Court, however,
has long interpreted § 101 to include an implicit exception: "laws of nature,
natural phenomena, and abstract ideas" are not patentable. See, e.g., Alice
Corp. Pty Ltd. v. CLS Bankint'l, 134 S. Ct. 2347, 2354 (2014).
In judging whether claim 1 falls within the excluded category of
abstract ideas, we are guided in our analysis by the Supreme Court's two-
step framework, described in Mayo and Alice. Id. at 2355 (citing Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1296-97
(2012)). In accordance with that framework, we first determine whether the
claim is "directed to" a patent-ineligible abstract idea. If so, we then
consider the elements of the claim both individually and as "an ordered
combination" to determine whether the additional elements "transform the
nature of the claim" into a patent-eligible application of the abstract idea. Id.
This is a search for an "inventive concept" an element or combination of
elements sufficient to ensure that the claim amounts to "significantly more"
than the abstract idea itself. Id. The Court also stated that "the mere
recitation of a generic computer cannot transform a patent-ineligible abstract
idea into a patent-eligible invention." Id. at 2358.
Here, we determine that the claim is directed to the concept of
providing customized advertising based on a response. This is a
fundamental economic practice long prevalent in our system of commerce or
a method of organizing human activities, and is an abstract idea beyond the
scope of§ 101. See Electric Power Group, LLC v. Alstom S.A., 830 F.3d
1350 (Fed. Cir. 2016) (where collecting information, analyzing it, and
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Appeal2016-005429
Application 13/411,067
displaying results from certain results of the collection and analysis was held
to be an abstract idea). Note that the Specification at paragraph 2 states that
the invention relates to "generating and managing interactive
advertisements."
The Examiner has determined that the claim is directed to the concept
of selecting web page advertisements (Final Act. 3) and although our
characterization of the abstract idea is slightly different, abstract ideas can be
described at different levels of abstraction. 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.").
We next consider whether additional elements of the claim, both
individually and as an ordered combination, transform the nature of the
claim into a patent-eligible application of the abstract idea, e.g., whether the
claim does more than simply instruct the practitioner to implement the
abstract idea using generic computer components. We conclude that it does
not. The Specification at paragraph 25 for instance discloses the invention
used with generic computer systems and technology such as a desktop
computer, server, and networks.
Considering each of the claim elements in tum, the function
performed by the computer system at each step of the process is purely
conventional. Each step of the claimed method does no more than require a
generic computer to perform a generic computer function.
The Appellants cite to DDR Holdings, LLC v. Hotels, L.P., 773 F.3d
1245 (Fed. Cir. 2014) and argue that the claim is "rooted in computer
technology in order to overcome a problem specifically arising in the realm
of computer networks" (App. Br. 10). We disagree as the Appellants have
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Application 13/411,067
not shown how the claimed subject matter is rooted in technology given that
the Specification describes only the use of generic computer equipment used
in a routine, conventional, and generic manner. As noted above, the
Specification at paragraph 25 for instance discloses the invention used with
generic computer systems and technology such as a desktop computer,
server, and networks used in a generic, conventional, manner.
For these reasons, the rejection of claim 1, and its dependent claims
which were not separately argued is sustained. Claims 10-14 are drawn to
similar subject matter and the rejection of these claims is sustained as well.
We reach the same conclusion as to independent system claim 6 and
its dependent claims. Here, as in Alice, "the system claims are no different
in substance from the method claims. The method claims recite the abstract
idea implemented on a generic computer; the system claims recite a handful
of generic computer components configured to implement the same idea."
Alice, 134 S. Ct. at 23 51. "[T]he mere recitation of a generic computer
cannot transform a patent-ineligible abstract idea into a patent-eligible
invention. Stating an abstract idea 'while adding the words 'apply it' is not
enough for patent eligibility." Id. at 2358 (quoting Mayo, 132 S. Ct. at
1294).
Rejections under 35 US.C. § 102(a) and 35 US.C. § 103(a)
Claims 1-10, 15, and 16
The Appellants argue that the rejection of claim 1 is improper because
the cited prior art fails to disclose the claim limitation requiring:
receiving ... a request for content from a user ... providing an
interactive advertisement [to the user] .. .in response to an
acceptable user response, received after at least some of the
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Application I3/4I I,067
interactive advertisement is presented, skipping ... at least a portion
of the interactive advertisement being presented ... in response to an
unacceptable user response, displaying, in its entirety, the
interactive advertisement being presented [and] providing ... access to
the content.
(App. Br. I2).
In contrast, the Examiner asserts this is shown by Jamal at Figures IC,
ID (#425), and paragraphs I 7 and 27 (Ans. 3, 4).
We agree with the Appellants. Here, Jamal at the above cited portions
fails to disclose the cited claim limitation, and the rejection of claim I and its
dependent claims is not sustained. Jamal at paragraph 27 discloses using the
CAPTCHA system but not "skipping ... at least a portion of the
advertisement" in response to an "acceptable user response" as claimed.
Claims 6 and I 0 contain a similar limitation and the rejection of these claims
and their dependent claims is not sustained as well.
Claims 11-14
The Appellants argue that the rejection of claim I is improper because
the cited prior art fails to disclose the claim limitation requiring:
receiving, ... a request for content from a user; ...
skipping, .... at least a portion of the advertisement being presented in
response to receipt of an acceptable user response to the challenge,
wherein the acceptable user response is received after at least some of
the advertisement is presented;
(App. Br. 20).
In contrast, the Examiner asserts this is shown by Jamal at Figures IC,
ID (#425), and paragraphs I 7 and 27 (Ans. 3, 4).
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Application 13/411,067
We agree with the Appellants. Here, the above citations fail to
disclose the cited claim limitation, and the rejection of claim 11 and its
dependent claims is not sustained. Jamal at paragraph 27 discloses using the
CAPTCHA system but not "skipping at least a portion of the advertisement"
in response to receipt of an "acceptable user response" as claimed.
CONCLUSIONS OF LAW
We conclude that Appellants have not shown that the Examiner erred
in rejecting 1-16 are rejected under 35 U.S.C. § 101.
We conclude that Appellants have shown that the Examiner erred in
rejecting 1-16 are rejected under 35 U.S.C. § 102(a) and 35 U.S.C. § 103(a)
as listed in the Rejections section above.
DECISION
The Examiner's rejection of claims 1-16 is sustained.
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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