Ex Parte Lyon et al

Patent Trial and Appeal Board

Jan 30, 2017

13178693 (P.T.A.B. Jan. 30, 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.
13/178,693 07/08/2011 Clifford Lyon 10-41 l-US-5 8909
98804 7590
Reed Smith LLP
P.O. Box 488
Pittsburgh, PA 15230
EXAMINER
BRANDENBURG, WILLIAM A
ART UNIT PAPER NUMBER
3681
NOTIFICATION DATE DELIVERY MODE
02/17/2017 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):
ptoipinbox @reedsmith.com
gdonovan @reedsmith. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CLIFFORD LYON and NED RHINELANDER
Appeal 2015-001388
Application 13/178,693
Technology Center 3600
Before ROBERT E. NAPPI, DEBRA K. STEPHENS, and
KARA L. SZPONDOWSKI, Administrative Patent Judges.
STEPHENS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from a Final Rejection of
claims 1—14 and 41—66. We have jurisdiction under 35 U.S.C. § 6(b).
Claims 15^40 have been cancelled.
We AFFIRM.
Appeal 2015-001388
Application 13/178,693
STATEMENT OF THE INVENTION
According to Appellants, the claims are directed to a method and
apparatus for presenting offers (Abstract). Claim 1, reproduced below, is
exemplary of the claimed subject matter:
1. A method for presenting an offer by one or more
computing devices, comprising:
consolidating, by at least one of the one or more
computing devices, a plurality of offers from a plurality of
feeds into an offer pool, wherein each offer in the offer pool has
an associated destination page;
assigning, by at least one of the one or more computing
devices, a tag to an offer in the offer pool based on information
extracted from a destination page associated with the offer; and
selecting, by at least one of the one or more computing
devices, a publisher site for the offer based at least in part on
the tag assigned to the offer.
REFERENCE
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Solomon et al. US 2010/0088321 A1 Apr. 8, 2010
REJECTIONS1
Claims 1—14 and 41—66 stand rejected under 35 U.S.C. § 101 as being
directed to non-statutory subject matter (Ans. 3—4).
Claims 1—14 and 41—66 stand rejected under 35 U.S.C. § 102(b) as
being anticipated by Solomon (Final Act. 4—29).
1 The rejection of claims 8, 9, 47, 48, 60, and 61 under 35 U.S.C. § 112,
second paragraph, have been withdrawn by the Examiner (Ans. 4).
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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) (2016).
ISSUES
35 U.S.C. § 101: Claims 1—14 and 41—66
Appellants argue their invention as recited in claims 1—14 and 41—66,
is directed to statutory subject matter (Reply Br. 3—9). The issue presented
by the arguments is:
Issue 1: Has the Examiner erred in concluding the invention as
recited is directed to non-statutory subject matter?
ANALYSIS
In Alice, the Supreme Court sets forth an analytical “framework for
distinguishing patents that claim laws of nature, natural phenomena, and
abstract ideas from those that claim patent-eligible applications of those
concepts” (Alice Corp. Pty. Ltd. V. CLSBankInt’l, 134 S. Ct. 2347, 2355
(2014) (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S.
Ct. 1289, 1296-97 (2012)). The first step in the analysis is to “determine
whether the claims at issue are directed to one of those patent-ineligible
concepts,” and if so, consider the elements of the claims “individually and
‘as an ordered combination”’ to determine whether there are additional
elements that “‘transform the nature of the claim’ into a patent-eligible
application” (id. (quoting Mayo, 132 S. Ct. at 1298, 1297)). Thus,
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is to for an ‘inventive i.e.. 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” (id. (quoting Mayo, 132 S. Ct. at 1294)).
Turning to the first step, the method claim, claim 1, recites a series of
steps for presenting an offer. Thus, the claim is directed to a process — one
of the statutory categories of invention.
Next, the claim is analyzed to determine whether it is directed to any
judicial exception. Here, we determine the claim is directed to use of routine
data-gathering steps and mathematical formulas and thus, is directed to
nothing more than a well-known, conventional activity performed on a
computer to achieve the fundamental economic practice of presenting an
offer to publisher sites (Ans. 3; see OIP Technologies, Inc. v. Amazon.com,
Inc. 768 F.3d 1359, 1363 (2015)). Specifically, the recited consolidating
step is disclosed, as identified by Appellants (App. Br. 2), in Appellants’
Specification as offers being “united in a single catalog” (Spec. 1 86) and
being “gathered and pooled together” (id. 190) — a routine data gathering
step.
The recited “assigning” step is described as being “based on filters
and one or more algorithms” (id. H 23, 93, 94).
The “selecting” step is described as an “offer selection algorithm” (id.
56—58). The Specification further describes determining the matches use
“one or more factors in one or more algorithms or filters” (id. H 25, 51. 90).
“Without additional limitations, a process that employs mathematical
algorithms to manipulate existing information to generate additional
information is not patent eligible” (see Digitech Image Techs., LLC v. Elecs.
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For Imaging, Inc., 758 F.3d 1344, 1351 (Fed. Cir. 2014)). Here, the method
employs routine data gathering and mathematical algorithms to manipulate
existing information to generate additional information (tag) and further
manipulate information.
In looking at the claim itself and the recited steps, we are unpersuaded
the claim amounts to significantly more than the abstract idea of presenting
offers to publisher sites — a fundamental economic practice, itself. Indeed,
the Specification refers to “algorithms” as set forth above and in several
additional places, without elaboration as to the specific algorithm or the
steps of the algorithm (see, e.g., Spec. H 51, 62, 66, 87, 90, 93, 95). As a
result, the claim attempts to cover all algorithms for performing each step
and the method as a whole, thus, preempting any and all uses of the abstract
idea.
Additionally, we are not persuaded the claim requires more than a
generic computer to perform the generic computer functions of:
consolidating offers associated with destination pages, assigning a tag to an
offer based information extracted from the associate destination page, and
selecting a publisher site for the offer based in part on the offer’s tag —
well-understood, routine and conventional activities previously known to the
industry (see, e.g., Spec. H 2, 4 (citing U.S. Patent Application 12/950,169
(see 3—5)); Solomon H 3—6).
Thus, we conclude no meaningful limitations in the claim transform
claim 1 into a patent eligible application.
Claim 54 is similarly recited and thus, for the reasons set forth with
respect to claim 1, we conclude no meaningful limitations in the claim
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transform claim 54 into a patent eligible application. Indeed, we determine
claim 54 is merely a method claim in the guise of a device.
Claim 41 recites “one or more processors” and “one or more
memories operatively coupled to at least one of the one or more processors
and having instructions stored thereon.” Claim 41 further recites the
instructions, “when executed by at least one of the one or more processors,
cause at least one of the one or more processors to” perform recited steps.
However, we are not persuaded that this recitation of “one or more
processors” and “one or more memories” provide meaningful limitations in
the claim. The claim recites a computerized system configured to carry out
a series of steps that mirror claim 1 ’s method claims — consolidating offers,
assigning a tag, and selecting a publisher site. Thus, reciting this general-
purpose computer that would perform the same generalized functions recited
in claim 1, recites a system to carry out otherwise abstract methods recited
therein. Moreover, Appellants’ Specification does not specify precisely how
the memory is specially programmed to perform the recited steps, but
instead recites nothing more than a general purpose computer programmed
in some unspecified manner. Thus, inclusion of “one or more processors”
and “one or more memories” as recited, is insufficient for patent eligibility.
The Court has held that “the mere recitation of a generic computer
cannot transform a patent-ineligible abstract idea into a patent-eligible
invention” {Alice, 134 S. Ct. at 2358) regardless of whether the claims are
directed to a method {id. at 2359-60) or a system (id. at 2360).
Appellants have not proffered sufficient evidence or argument to
persuade us that any of the limitations in the dependent claims provides a
meaningful limitation that thus, transforms the claim into a patent eligible
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application. Accordingly, Appellants have not persuaded us claims 1—14
and 41—66 are directed to statutory subject matter. Therefore, we sustain the
rejection of claims 1—14 and 41—66 under 35 U.S.C. § 101 as not being
directed to statutory subject matter.
35 U.S.C. § 102(b): Claims 1—14 and 41—66
Appellants contend their invention as recited in claims 1—14 and 41—
66, is not anticipated by Solomon (App. Br. 5—12). The issue presented by
the arguments is:
Issue 2: Has the Examiner erred in finding Solomon discloses:
assigning, by at least one of the one or more computing
devices, a tag to an offer in the offer pool based on information
extracted from a destination page associated with the offer; and
selecting, by at least one of the one or more computing
devices, a publisher site for the offer based at least in part on
the tag assigned to the offer,
as recited in claim 1 ?
ANALYSIS
Appellants contend Solomon does not disclose assigning “a tag to an
offer in the offer pool based on information extracted from a destination
page associated with the offer,” as recited in independent claims 1,41, and
54 (App. Br. 6—10). According to Appellants, the Examiner has not clearly
articulated which features in Solomon disclose the recited claim limitation
{id. at 7). Moreover, Appellants contend the cited portions of Solomon
describe identifying a reference to a specific product in a user accessed
document and searching a database to select an advertisement match for the
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specific product (id. at 8—9). Appellants further contend Solomon is
concerned with “organizing the advertisement in a hierarchy of products”
(id. at 9).
Initially, we are not persuaded by Appellants’ argument that the
Examiner has failed to set forth with specificity the anticipation rejection.
Indeed, the Examiner identifies portions of Solomon that disclose the
particular limitations along with the accompanying quotes and explanation
(see, e.g., Final Act. 4—7; Ans. 5—10). Although the Examiner cites to many
different paragraphs, we are not persuaded the cited paragraphs fail to
inform Appellants of the basis of the rejection.
Appellants’ own Specification, which incorporates by reference
several U.S. Patent Applications, admits assigning tags to content is well-
known (see Spec. 123 (indicating U.S. Patent Application 12/950,169 is
incorporated by reference), 119 (citing U.S. Patent Applications 12/895,075,
12/792,029, 12/951,247, and 12/950,169)).
Solomon describes a system that allows “matching between an
advertisement which is related to a certain product and one or more
documents that refer to the product” (Solomon | 65). The Examiner finds,
and we agree, Solomon’s advertisement discloses an offer and Solomon’s
document describes a destination page (Ans. 8). As set forth by the
Examiner, Solomon further discloses creating a list of documents, each
document being associated with one or more products referred to by the
document (Solomon | 66; Ans. 5—6).
Solomon further describes web crawlers that browse a network or
segment thereof, to examine links in documents to discover new documents
that refer to one or more of the products (Solomon | 67). Solomon
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additionally describes identification of a specific product in a document, is
performed in response to a request for an advertisement {id. 173).
Furthermore, a dataset (optionally hierarchical) of advertisements is
reviewed to select an advertisement related to a specific product {id.). Thus,
Solomon discloses creating a list of documents (destination pages), each
associated with one or more products (tags) to which the document refers.
The Examiner then finds a tag has been assigned to an offer based on
extracted information (Ans. 9—10).
However, the Examiner has not shown where Solomon describes the
tag is assigned based on the information extracted from the document
(destination page). Rather, the Examiner makes a leap that the tag has
clearly been assigned without explanation as to why the recited function is
described expressly or is inherent. While such a suggestion might be
adequate to show obviousness, it is insufficient to show anticipation. Absent
a showing that Salomon expressly or inherently describes the tag is based on
information extracted from a destination page, we find the Examiner has not
shown Solomon discloses the recited limitation, “assigning, by at least one
of the one or more computing devices, a tag to an offer in the offer pool
based on information extracted from a destination page associated with the
offer.”
Since we agree with at least one of the arguments advanced by
Appellants, we need not reach the merits of Appellants’ other arguments. It
follows that Appellants have persuaded us Solomon fails to disclose the
invention as recited in independent claim 1 and commensurately recited
independent claims 41 and 54. Accordingly, we are constrained to sustain
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the rejection of claims 1—14 and 41—66 under 35 U.S.C. § 102(b) for
anticipation by Solomon.
DECISION
The Examiner’s rejection of claims 1—14 and 41—66 under
35 U.S.C. § 101 as being directed to non-statutory matter is affirmed.
The Examiner’s rejection of claims 1—14 and 41—66 under 35 U.S.C.
§ 102(b) as being anticipated by Solomon is reversed.
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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