Ex Parte Nadig

Patent Trials and Appeals Board

Mar 26, 2019

11962321 - (D) (P.T.A.B. Mar. 26, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
11/962,321 12/21/2007 Deepak Seetharam Nadig
150601 7590 03/28/2019
Shook, Hardy & Bacon L.L.P.
(eBay Inc.)
2555 Grand Blvd.
KANSAS CITY, MO 64108-2613
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.
2043.491US1 7881
EXAMINER
MERCHANT, SHAHID R
ART UNIT PAPER NUMBER
3693
NOTIFICATION DATE DELIVERY MODE
03/28/2019 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):
IPDOCKET@SHB.COM
IPRCDKT@SHB.COM
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DEEP AK SEETHARAM NADIG
Appeal2017-010917
Application 11/962,321 1
Technology Center 3600
Before JEAN R. HOMERE, JEREMY J. CURCURI, and
NABEEL U. KHAN, Administrative Patent Judges.
KHAN, Administrative Patent Judge.
DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Final Rejection
of claims 1, 3-5, 7-9, 11-13, 15-17, 19-21, and 23-25, which constitute all
of the claims pending in the present application. Claims App 'x. We have
jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
1 Appellant identifies eBay Inc. as the real party in interest. App. Br. 2.
Appeal2017-010917
Application 11/962,321
BACKGROUND
THE INVENTION
According to Appellant, the invention relates to "providing on-line
advertising with dynamic content .... " Abstract. Appellant's system
"includes an advertisement ( ad) generator configured to provide an
advertisement template with an embedded region for dynamic content; to
retrieve dynamic content; to modify the presentation of the advertisement to
include the dynamic content; and to serve the modified advertisement
including the dynamic content to a user." Abstract.
Exemplary independent claim 1 is reproduced below.
1. A method comprising:
obtaining, by a publisher system component, an
advertisement template with an embedded region for dynamic
content, the advertisement template also having a static region
with corresponding static region boundaries, the static region
displayed concurrently with the embedded region for a first
dynamic content and a second dynamic content, the embedded
region for the first dynamic content and the second dynamic
content being embedded within the static region boundaries of
the static region, the template including information identifying
a network accessible source for the first dynamic content and the
second dynamic content, the embedded region including a tag
that provides a link to the network accessible source of the
dynamic content, the tag including a mechanism for retrieving or
subscribing to the dynamic content via the link, the link
comprising a Uniform Resource Locator;
retrieving, by the publisher system component, the first
dynamic content and the second dynamic content from the
network accessible source using the link prior to presentation of
the static region to a user, the first dynamic content and the
second dynamic content being retrieved subsequent to retrieval
of the static region;
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Application 11/962,321
modifying, by use of a processor of the publisher system
component, the embedded region of the advertisement template
to include the first dynamic content and the second dynamic
content, the combination of the static region and the modified
embedded region representing a dynamic advertisement, the
dynamic advertisement being renderable by a browser, the first
dynamic content comprising the current bidding price of an item
and the second dynamic content comprising time left for bidding
on the item; and
presenting the dynamic advertisement to the user.
REFERENCES AND REJECTIONS
1. Claims 1, 3-5, 7-9, 11-13, 15-17, 19-21, and 23-25 stand
rejected under 35 U.S.C. § 101 Final Act. 6-11.
DISCUSSION
Principles of Law
An invention is patent-eligible if it claims a "new and useful process,
machine, manufacture, or composition of matter." 35 U.S.C. § 101.
However, the Supreme Court has long interpreted 35 U.S.C. § 101 to include
implicit exceptions: "[l]aws of nature, natural phenomena, and abstract
ideas" are not patentable. E.g., Alice Corp. v. CLS Bank Int 'l, 573 U.S. 208,
216 (2014).
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court's two-step framework, described in Mayo
and Alice. Id. at 217-18 ( citing Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 566 U.S. 66, 75-77 (2012)). In accordance with that framework,
we first determine what concept the claim is "directed to." See Alice, 573
U.S. at 219 ("On their face, the claims before us are drawn to the concept of
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Application 11/962,321
intermediated settlement, i.e., the use of a third party to mitigate settlement
risk."); see also Bilski v. Kappas, 561 U.S. 593, 611 (2010) ("Claims 1 and 4
in petitioners' application explain the basic concept of hedging, or protecting
against risk.").
Concepts determined to be abstract ideas, and thus patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219-20; Bilski, 561 U.S. at 611 );
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594--95 (1978)); and
mental processes (Gottschalkv. Benson, 409 U.S. 63, 69 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as "molding rubber products" (Diamond v. Diehr, 450 U.S. 175, 191
(1981 )); "tanning, dyeing, making water-proof cloth, vulcanizing India
rubber, smelting ores" (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S.
252, 267---68 (1854))); and manufacturing flour (Benson, 409 U.S. at 69
(citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
In Diehr, the claim at issue recited a mathematical formula, but the
Supreme Court held that "[a] claim drawn to subject matter otherwise
statutory does not become nonstatutory simply because it uses a
mathematical formula." Diehr, 450 U.S. at 176; see also id. at 191 ("We
view respondents' claims as nothing more than a process for molding rubber
products and not as an attempt to patent a mathematical formula."). Having
said that, the Supreme Court also indicated that a claim "seeking patent
protection for that formula in the abstract ... is not accorded the protection
of our patent laws, ... and this principle cannot be circumvented by
attempting to limit the use of the formula to a particular technological
environment." Id. ( citing Benson and Flook); see, e.g., id. at 187 ("It is now
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Application 11/962,321
commonplace that an application of a law of nature or mathematical formula
to a known structure or process may well be deserving of patent
protection.").
If the claim is "directed to" an abstract idea, we tum to the second
step of the Alice and Mayo framework, where "we must examine the
elements of the claim to determine whether it contains an 'inventive
concept' sufficient to 'transform' the claimed abstract idea into a patent-
eligible application." Alice, 573 U.S. at 221 ( quotation marks omitted). "A
claim that recites an abstract idea must include 'additional features' to
ensure 'that the [claim] is more than a drafting effort designed to
monopolize the [abstract idea]."' Id. ( quoting Mayo, 566 U.S. at 77).
"[M]erely requir[ing] generic computer implementation[] fail[ s] to transform
that abstract idea into a patent-eligible invention." Id.
The PTO recently published revised guidance on the application of§
IOI. 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg.
50 (Jan. 7, 2019) ("Guidance"). Under the Guidance, we first look to
whether the claim recites:
(1) any judicial exceptions, including certain groupings of
abstract ideas (i.e., mathematical concepts, certain methods of
organizing human activity such as a fundamental economic
practice, or mental processes); and
(2) additional elements that integrate the judicial exception into
a practical application (see MPEP § 2106.05(a}-(c), (e}-(h)).
Only if a claim (1) recites a judicial exception and (2) does not integrate that
exception into a practical application, do we then look to whether the claim:
(3) adds a specific limitation beyond the judicial exception that
is not "well-understood, routine, conventional" in the field (see
MPEP § 2106.05(d)); or
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( 4) simply appends well-understood, routine, conventional
activities previously known to the industry, specified at a high
level of generality, to the judicial exception.
See Guidance.
Analysis
The Examiner concludes the claims are "directed to providing
advertising to a user, which is a fundamental economic practice and
therefore an abstract idea. The claims are principally directed to providing
an advertising template having a static region with an embedded region for
dynamic content." Ans. 17. The Examiner finds that "the problem being
solved is not computer specific" but rather, is a business problem related to
advertising. Ans. 4, 6. Analyzing the claims as a whole the Examiner
characterizes limitations reciting "a publisher system component" and "a
processor" as further describing the abstract idea but not rendering the
concept any less abstract. Ans. 17. The Examiner also characterizes certain
limitations as "mere data gathering and processing steps [that] cannot make
an otherwise nonstatutory claim statutory .... " Ans. 19.
Analogizing the claims to those in Enfish, LLC v. Microsoft Corp.,
822 F.3d 1327 (Fed. Cir. 2016) Appellant argues "claim 1 is also directed to
an improvement to computer functionality itself." App. Br. 11.
Specifically, Appellant highlights certain limitations such as "an embedded
dynamic region of a template using information sourced from a network
source via a link (e.g. URL)" as reciting an improvement to computer
functionality. App. Br. 12 (emphasis removed). Appellant argues that even
if an invention is directed to solving a business problem, as the Examiner
concludes, so long as the solution is technological in nature the claims are
still patent eligible. App. Br. 13 (arguing the invention in DDR Holdings,
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LLC v. Hotels.com, LP, 773 F.3d 1245 (Fed. Cir. 2014) was also directed at
solving a business problem, but did so using a technical solution necessarily
rooted in computer technology).
We agree with the Examiner that the claims recite an advertising
template having a static region with an embedded dynamic region, which
relates to the fundamental economic practice of advertising. Ultramercial,
Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed Cir. 2014) (holding that claim
"describ[ing] only the abstract idea of showing an advertisement before
delivering free content" is patent ineligible). However, even though the
claims recite a fundamental economic practice, we find the claims integrate
the noted judicial exception into a practical application because they include
additional elements that reflect an improvement to the functioning of a
computer or an improvement to other technology or technical field. See
DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1258-59 (Fed. Cir.
2014). Specifically, we are persuaded by Appellant's argument that the
claims here recite limitations that offer a technical solution to the problem of
providing dynamic information in an advertisement. The claim makes it
explicit that the advertising template includes "information identifying a
network accessible source" of the dynamic content that is retrieved by use of
a "tag that provides a link to the network accessible source of the dynamic
content," in the form of a "Uniform Resource Locator." The claim also
makes explicit that the advertisement is "renderable by a browser." Thus,
even though the claims relate to the abstract idea of advertising, the
aforementioned elements limit the claim to an Internet-centric context and to
a solution rooted in computer technology, and thereby improves the
functionality of the publisher system.
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Because Appellant has shown at least one reversible error in the
Examiner's patent ineligibility rejection, we need not reach Appellant's
remaining arguments. Thus, we find the claims are patent eligible and
therefore, do not sustain the Examiner's rejection of the appealed claims.
DECISION
The Examiner's rejection of claims 1, 3-5, 7-9, 11-13, 15-17, 19-21,
and 23-25 under 35 U.S.C. § 101 is reversed.
REVERSED
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