Ex Parte Meriaz et al

Patent Trial and Appeal Board

Mar 5, 2018

12559780 (P.T.A.B. Mar. 5, 2018)

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.
12/559,780 09/15/2009 Yoram Meriaz 056262/377696 9056
826 7590
ALSTON & BIRD LLP
BANK OF AMERICA PLAZA
101 SOUTH TRYON STREET, SUITE 4000
CHARLOTTE, NC 28280-4000
EXAMINER
HAMILTON, MATTHEW L
ART UNIT PAPER NUMBER
3682
NOTIFICATION DATE DELIVERY MODE
03/07/2018 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):
u sptomail @ alston .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte YORAM MERIAZ, RAN MERIAZ, and
ALEX TKACHMAN
Appeal 2016-008011
Application 12/559,780
Technology Center 3600
Before JOHN A. JEFFERY, BRUCE R. WINSOR, and
JUSTIN BUSCH, Administrative Patent Judges.
BUSCH, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellants1 appeal from the
Examiner’s decision to reject claim 1—32. We have jurisdiction under
35 U.S.C. § 6(b).
We affirm.
1 Appellants identify the real party in interest as MBTE Holdings Sweden
AB. App. Br. 1.
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Application 12/559,780
CLAIMED SUBJECT MATTER
Appellants’ invention relates to “sponsoring content to incentivize
others to promote the content.” Spec. 13. Claim 1 is representative and
reproduced below:
1. An advertising promotion computer system comprising:
a facilitator computer system, the facilitator computer
system comprising one or more memory storage areas and one
or more processors, the facilitator computer system being
configured to:
receive a sponsorship request to sponsor a content item for
distribution, the (a) content item (i) accessible using a first
uniform resource identifier and (ii) viewable via an interface and
(b) sponsorship request originating from a sponsor computing
device;
receive a distribution request to distribute the sponsored
content item, the distribution request being associated with a
distributor account and originating from a distributor computing
device;
generate a distribution link for distributing the sponsored
content item, the distribution link (a) comprising a second
uniform resource identifier and (b) being configured for
generating a sponsored content request that identifies the
sponsored content item and the distributor account;
receive a sponsored content request originating from a
viewer computing device, the sponsored content request being
generated based at least in part on the distribution link
comprising the second uniform resource identifier;
identify the sponsored content item associated with the
sponsored content request based at least in part on the
distribution link comprising the second uniform resource
identifier;
redirect the viewer computing device to the sponsored
content item using the first uniform resource identifier;
uniquely identify the distributor account associated with
the distribution link comprising the second uniform resource
identifier; and
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Application 12/559,780
provide an incentive credit to the distributor account for
the sponsored content request that is generated based at least in
part on the distribution link.
REJECTION2
Claims 1—32 stand rejected under 35 U.S.C. § 101 as being directed to
non-statutory subject matter. Final Act. 2—5.
FINDINGS AND CONTENTIONS
The Examiner finds Appellants’ claims are similar to the claims in
Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709 (2014), which our reviewing
court found claimed merely an abstract idea. Ans. 3. According to the
Examiner, “[Appellants’] invention falls under the abstract idea of certain
methods of organizing human activity because it relates to the concepts of
advertising, marketing and sales activity or behavior.” Id. at 2 (citing July
2015 Update on Subject Matter Eligibility, 80 Fed. Reg. 45429 (July 30,
2015)).
The Examiner adds that the “claim element(s) individually or in
combination do not provide meaningful limitation(s) to transform the
abstract idea into a patent eligible application of the abstract idea such that
the claim(s) amounts to significantly more than the abstract idea itself.” Id.
at 7. According to the Examiner, contrary to the claims in DDR Holdings,
LLC v. Hotels.com, L.P., 773 F.3d 1245 (2014), Appellants’ “claims do not
specify how the internet is manipulated to yield a desired result.” Ans. 5.
2 The rejection is under the provisions of 35 U.S.C. in effect before the
effective date of the Leahy-Smith America Invents Act of 2011 (pre-AIA).
See, e.g., Final Act 2.
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Appellants argue that the claimed invention is not directed to an
abstract idea because the Supreme Court did not state that all methods of
organizing human activities are abstract ideas, as reflected in a guidance
material of the United States Patent and Trademark Office (USPTO) that
identifies only “certain methods of organizing human activities” as abstract.
App. Br. 5—7 (citing Bilski v. Kappos, 561 U.S. 593, 611 (2010)); id. at 7
(citing 2014 Interim Guidance on Patent Subject Matter Eligibility, 79 Fed.
Reg. 74618, 74621-22 (Dec. 16, 2014)).
Appellants further argue, even if the claims are directed to an abstract
idea, then similar to the claims in DDR Holdings, Appellants’ claims are
directed to overcoming a problem specifically arising in the realm of
computer technology. App. Br. 22. According to Appellants, the claims
“are directed to generating and distributing sponsored content using unique
uniform resource identifiers.” Id. Appellants add that software concepts are
not necessarily abstract (citing Enfish, LLC v. Microsoft Corp., 822 F.3d
1327 (Fed. Cir. 2016)). Reply Br. 2.
ISSUE
Appellants rely on the arguments made for claim 1 to argue the
patentability of the remaining pending claims. See generally App. Br. 4—24;
Reply Br. 1—15. Therefore, we select claim 1 as the representative claim,
pursuant to our authority under 37 C.F.R. § 41.37(c)(l)(iv) (2015). Claims
2—32 stand or fall with claim 1.
The issue presented by Appellants’ arguments is whether the
Examiner erred in concluding claim 1 is directed to ineligible subject matter
under § 101. This issue turns on whether claim 1 is directed to an abstract
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idea under the analysis set forth in Mayo Collaborative Services v.
Prometheus Laboratories, Inc., 566 U.S. 66 (2012), and Alice Corp. Party
Ltd. v. CLS Bank International, 134 S. Ct. 2347 (2014).
ANALYSIS
To be statutorily patentable under 35 U.S.C. § 101, the subject matter
of an invention must be a “new and useful process, machine, manufacture, or
composition of matter, or [a] new and useful improvement thereof.”
35 U.S.C. § 101. The Supreme Court has held there are implicit exceptions
to the categories of patentable subject matter identified in § 101, including
(1) laws of nature, (2) natural phenomena, and (3) abstract ideas. Alice, 134
S. Ct. at 2355. Further, the Court has “set forth a framework for
distinguishing patents that claim laws of nature, natural phenomena, and
abstract ideas from those that claim patent-eligible applications of those
concepts.” Id. (citing Mayo, 566 U.S. 66). The evaluation follows the two-
part analysis set forth in Mayo: 1) determine whether the claim is directed to
an abstract idea; and 2) if the claim is directed to an abstract idea, determine
whether any 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 2355.
Claim 1 is directed to a process, which is one of the four statutory
classes. Following the Court’s guidance, we turn to the first step of the
Mayo/Alice analysis to determine if the claim is directed to one of the
judicial exceptions, i.e., an abstract idea. According to Alice step one, “[w]e
must first determine whether the claims at issue are directed to a patent-
ineligible concept,” such as an abstract idea. Alice, 134 S. Ct. at 2355
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(emphasis added). “[T]he ‘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, 822
F.3d at 1335 (quoting Internet Patents Corp. v. Active Network, Inc., 790
F.3d 1343, 1346 (Fed. Cir. 2015)).
The Specification provides evidence as to what the invention is
directed to. In this case, the Specification discloses that a goal of the
claimed invention is to motivate, incentivize, and compensate parties to
create, distribute, and host content on their systems. Spec. 12. According
to the Specification, “[t]he term ‘content’ may refer to any page, document,
picture, music, review, video, book, information, and/or the like that is
accessible via the Internet (e.g., also referred to as web content).” Id. 130.
According to the Specification, Appellants’ invention allegedly achieves the
goal by proposing a system that receives registration requests from various
parties/entities for creating, sponsoring, hosting, and distributing the content
using links. Id. 121. Upon an accessing party’s selection of one of the
links, the system provides an incentive to the creator, host, and distributor;
and redirects the accessing party to the content. Id.
Here, claim 1 recites five distinct steps—(1) receive a sponsorship
request to sponsor a content item accessible using a first identifier, (2)
generate a distribution link for distributing the sponsored content item using
a second identifier, (3) receive a distribution request to distribute the
sponsored content item, (4) receive a sponsored content request from a
viewer computing device, and (5) redirect the viewer computing device to
the sponsored content item and provide an incentive credit to the distributor.
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The Examiner finds Appellants’ invention falls under the abstract idea
of a method of organizing human activity because it relates to the concepts
of advertising, marketing and sales activity. Ans. 2—3. In particular, the
Examiner explains:
[Appellants’] invention provides an incentive (e.g., reward, cash
or compensation, etc.) to the account of the distributor in
exchange for distributing (akin to advertising, marketing and
sales activity or behavior) the sponsored content (akin to
advertising and marketing) requested (akin to advertising,
marketing and sales activity or behavior) by one or more users or
viewers.
Id. at 3. We agree with the Examiner’s analysis that the claimed method of
organizing human activity is abstract inasmuch as it relates to advertising,
marketing, and sales activity.
Appellants attempt to analogize the claimed invention to the claims in
DDR Holdings, asserting the claimed invention is directed to significantly
more than an abstract idea is unavailing. App. Br. 22. In DDR Holdings,
the Federal Circuit determined that the claims addressed the problem of
retaining website visitors who, if adhering to the routine, conventional
functioning of Internet hyperlink protocol, would be transported instantly
away from a host’s website after clicking on an advertisement and activating
a hyperlink. DDR Holdings, 773 F.3d at 1257. The Federal Circuit further
determined that the claims “specify how interactions with the 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. at 1258. The Federal Circuit, thus, held that the claims were
directed to eligible subject matter because they claim a solution “necessarily
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rooted in computer technology in order to overcome a problem specifically
arising in the realm of computer networks.” Id. at 1257.
We find Appellants’ claim 1 more akin to the claims in Ultramercial
than those in DDR Holdings. Our reviewing court in DDR Holdings
cautioned that
not all claims purporting to address Internet-centric challenges
are eligible for patent. For example, in our recently-decided
Ultramercial opinion, the patentee argued that its claims were
“directed to a specific method of advertising and content
distribution that was previously unknown and never employed
on the Internet before.” 772 F.3d at 1264. But this alone could
not render its claims patent-eligible. In particular, we found the
claims to merely recite the abstract idea of “offering media
content in exchange for viewing an advertisement,” along with
“routine additional steps such as updating an activity log,
requiring a request from the consumer to view the ad, restrictions
on public access, and use of the Internet.” Id. at 1265.
DDR Holdings, 773 F.3d at 1258. See Smart Sys. Innovations, LLC v. Chi.
Transit Auth., 873 F.3d 1364, 1375 (Fed. Cir. 2017) (“DDR Holdings does
not apply when ... the asserted claims do not ‘attempt to solve a challenge
particular to the Internet. (quoting In re TLI Commc ’ns LLC Patent Litig.,
823 F.3d 607, 613 (Fed. Cir. 2016))).
Contrary to Appellants’ arguments, Appellants’ claim 1 does not
attempt to solve a challenge particular to the Internet as do the claims in
DDR Holdings. Appellants argue the claims overcome a problem
specifically arising in computer technology by distributing sponsored
content using “unique uniform resource identifiers.” App. Br. 22. But
redirecting using uniform resource locators (URLs) is a conventional known
practice on the Internet. And motivating, incentivizing, and compensating
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parties to create, distribute, and host content (as discussed above) using the
redirection of URLs is not a challenge particular to the Internet, but is
instead “merely the routine or conventional use of the Internet.” DDR
Holdings, 773 F.3d at 1259.
Similar to the claims in Ultramercial, Appellants’ claim 1 merely
recites the abstract idea of advertising, marketing, and sales activity along
with routine additional steps such as receiving requests involving a content
item, generating a link, redirecting to the content item, and use of the
Internet. Thus, Appellants’ claim 1 “simply instruct[s] the practitioner to
implement the abstract idea with routine, conventional activity.”
Ultramercial, 772 F.3d at 715.
Appellants’ argument in the Appeal Brief that the claims “do not
preempt every application of an idea and provide a specific way to solve the
problem that specifically arises in the realm of computer technology” is
unpersuasive because it does not alter our § 101 analysis. See App. Br. 22.
Preemption concerns are fully addressed and made moot where a claim is
deemed to disclose patent ineligible subject matter under the two-part
framework described in Alice. Ariosa Diagnostics, Inc. v. Sequenom, Inc.,
788 F.3d 1371, 1379 (Fed. Cir. 2015). “While preemption may signal patent
ineligible subject matter, the absence of complete preemption does not
demonstrate patent eligibility.” Id.
Therefore, we are not persuaded that the Examiner erred in rejecting
claim 1, and claims 2—32 not argued separately with particularity.
CONCLUSION
The Examiner did not err in rejecting claims 1—32 under § 101.
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DECISION
For the above reasons, we affirm the Examiner’s decision to reject
claims 1—32 under § 101.
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.
§ 41.50(f).
AFFIRMED
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