Ex Parte Nyhan et al

Patent Trials and Appeals BoardMar 27, 2019

09900674 - (D) (P.T.A.B. Mar. 27, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 09/900,674 07/06/2001 23460 7590 03/29/2019 LEYDIG VOIT & MA YER, LTD TWO PRUDENTIAL PLAZA, SUITE 4900 180 NORTH STETSON A VENUE CHICAGO, IL 60601-6731 FIRST NAMED INVENTOR Nick Nyhan 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. 211367 6698 EXAMINER BOYCE, ANDRE D ART UNIT PAPER NUMBER 3623 NOTIFICATION DATE DELIVERY MODE 03/29/2019 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): Chgpatent@leydig.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte NICK NYHAN and RONIT A VIV Appeal2017-004866 Application 09/900,674 1 Technology Center 3600 Before HUBERT C. LORIN, JOSEPH A. FISCHETTI, and BIBHU R. MOHANTY, Administrative Patent Judges. FISCHETTI, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants seek our review under 35 U.S.C. Â§ 134 of the Examiner's final rejection of claims 1, 3, 5, 6, 8-12, 17, 23, 24, 26, 27, 30, and 33. We have jurisdiction under 35 U.S.C. Â§ 6(b). A telephonic hearing was held on March 14, 2019. SUMMARY OF DECISION We REVERSE. 1 Appellants identify Dynamic Logic, Inc. as the real party in interest. Appeal Br. 1. Appeal2017-004866 Application 09/900,674 THE INVENTION Appellants' claims relate to "on-line advertising and, more particularly, to soliciting computer uses to take on-line surveys." Spec. 1 :4-- 5. Claim 1 reproduced below, is representative of the subject matter on appeal. 1. A method for conducting an on-line survey in association with presentation of an on-line advertisement by a browser client, the method comprising: receiving, by a user computer hosting the browser client, a web page configured to display an on-line advertisement; issuing, by the user computer in association with processing the received web page, a request to an ad server, for a block of data comprising computer-readable instructions for presenting the on-line advertisement via the browser client; sending, by the ad server in response to the issued request from the user computer, the block of data including computer- readable instructions for presenting the on-line advertisement and the block of data further including additional computer- readable instructions that facilitate decision-making steps for determining whether to present an on-line survey solicitation via the browser client, wherein acceptance of the on-line survey solicitation by the user results in presentation of an on-line survey via the browser client; accessing, on the user computer, a timestamp value indicative of a period of time that has passed since the on-line survey solicitation was previously presented by the browser client; and executing the additional computer-readable instructions if the timestamp value indicates passage of a period of time satisfying a prescribed wait period between consecutive 2 Appeal2017-004866 Application 09/900,674 presentations of the on-line survey solicitation by the browser client on the user computer, wherein the decision-making steps comprise generating a random number on the user computer; and wherein the method further comprises applying a frequency parameter value to the random number to determine whether to present a survey invitation on the user computer, wherein the frequency parameter value is specified by a survey logic server, wherein the executing step comprises providing the random number to the survey logic server, wherein the survey logic server performs the applying step, and wherein the random number is appended to a URL used by a browser on the user computer to contact the survey logic server. THE REJECTION The following rejection is before us for review: Claims 1, 3, 5, 6, 8-12, 17, 23, 24, 26, 27, 30, and 33 are rejected under 35 U.S.C. Â§ 101. ANALYSIS 35 U.S.C. Â§ 101 REJECTION We will not affirm the rejection of claims 1, 3, 5, 6, 8-12, 17, 23, 24, 26, 27, 30, and 33 under 35 U.S.C. Â§ 101. An invention is patent-eligible if it claims a "new and useful process, machine, manufacture, or composition of matter." 35 U.S.C. Â§ 101. However, the Supreme Court has long interpreted 35 U.S.C. Â§ 101 to include 3 Appeal2017-004866 Application 09/900,674 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 id. at 219 ("On their face, the claims before us are drawn to the concept of 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. 4 Appeal2017-004866 Application 09/900,674 252, 267---68 (1853))); 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 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 5 Appeal2017-004866 Application 09/900,674 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 Â§ 101. 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 Â§ 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 Â§ 2106.05(d)); or ( 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. 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."' Enfzsh, LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 6 Appeal2017-004866 Application 09/900,674 2016) (quoting Internet Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1346 (Fed. Cir. 2015)). It asks whether the focus of the claims is on a specific improvement in relevant technology or on a process that itself qualifies as an "abstract idea" for which computers are invoked merely as a tool. See id. at 1335-36. In so doing, as indicated above, we apply a "directed to" two prong test: 1) evaluate whether the claim recites a judicial exception, and 2) if the claim recites a judicial exception, evaluate whether the claim "appl[ies], rel[ies] on, or use[ s] the judicial exception in a manner that imposes a meaningful limit on the judicial exception, such that the claim is more than a drafting effort designed to monopolize the judicial exception." See 2019 Guidance at 53. The Examiner found that the claims are directed to "the abstract idea of conducting an on-line survey." (Final Act. 2). In the Answer, the Examiner further defines what the claims are directed to as: including the receiving, issuing, determining, accessing, executing, generating and applying steps are similar to concepts involving an idea of itself, and human activity relating to concepts involving comparing new and stored information and using rules to identify options ( e.g., Smartgene, Inc. v. Biological Labs), concepts involving organizing information ( e.g., Digitech Image Tech, LLC v. Electronics for Imaging, Inc., and Ultramercial v. Hulu), and concepts describing mathematical relationships and algorithms ( e.g., Benson, Flook, Diehr and [In re] Grams), all of 7 Appeal2017-004866 Application 09/900,674 which have been found by the courts to be abstract ideas. Answer 7-8. We will base our Decision on the findings made by the Examiner in the Answer. We agree with the Examiner that the claims are at least directed to certain methods of organizing human activity, in this case, keeping users from repeatedly being solicited, e.g., "accessing, on the user computer, a timestamp value indicative of a period of time that has passed since the on- line survey solicitation was previously presented by the browser client." (Claim 1 ). Such "accessing" occurs as a result of the user "hosting the browser client." (Id.) That is, according to the Specification "[t]he invention keeps users from repeatedly being solicited to take a particular on- line survey by identifying which users have recently been solicited to take the survey, and refraining from soliciting those users." Spec. 2: 13-15. In Intellectual Ventures Iv. Symantec Corp., 838 F.3d 1307 (Fed. Cir. 2016), "routing email messages based on specific criteria (rules)" was found to be patent ineligible subject matter. Id. at 1312. Like the court's analogy to a corporate mailroom referenced in Intellectual Ventures, similarly the claim limitation here determines control over the flow of on-line survey solicitations. According to Intellectual Ventures, this constitutes a method of organizing human activity. Id. at 1318. Thus, we find that controlling the dissemination of surveys manages interactions between the surveyor and the person surveyed and thus constitutes "managing personal behavior or relationships or interactions between people" which more broadly is a 8 Appeal2017-004866 Application 09/900,674 method of organizing human activity. The patent-ineligible end of the spectrum includes methods of organizing human activity. See Alice, 573 U.S. at 215-222. Turning to the second prong of the "directed to" test, we next evaluate whether the claim "appl[ies], rel[ies] on, or use[s] the judicial exception in a manner that imposes a meaningful limit on the judicial exception, such that the claim is more than a drafting effort designed to monopolize the judicial exception." Guidance at 53; see also MPEP Â§ 2106.05(a}-(c), (e}-(h). Here we find that the claims do. Claim 1 requires a browser client, a computer hosting the browser client, an ad server, a survey logic server and a user computer all of which are driven by steps of the judicial exception causing a random number to be appended to a browser URL to cause the user computer selectively to contact a survey logic server to effect aa presentation of an on-line survey solicitation on a user computer. That is, according to claim 1, [ 1] the user computer hosts a browser client and receives a web page configured to display an on-line advertisement; [2] the user computer issues in association with processing the received web page, a request to an ad server, for a block of data comprising computer-readable instructions for presenting the on-line advertisement via the browser client; [3] the ad server sends in response to the issued request from the user computer, the block of data including computer-readable instructions for presenting the on-line advertisement; [ 4] the user computer accesses a timestamp value indicative of a period of time 9 Appeal2017-004866 Application 09/900,674 that has passed since the on-line survey solicitation was previously presented by the browser client; [ 5] the user computer generates a random number and the survey logic server specifies a frequency parameter value that is applied to the random number if the timestamp value indicates passage of a period of time satisfying a prescribed wait period; [ 6] the random number is provided to the survey logic server and the random number is appended to a URL used by a browser on the user computer to contact the survey logic server. We find that the recitation of these additional elements do "integrate[] a judicial exception into a practical application [in that they] apply, rely on, or use the judicial exception in a manner that imposes a meaningful limit[ ation] on the judicial exception, such that the claim is more than a drafting effort designed to monopolize the judicial exception." Guidance at 53. Specifically, the manner in which the various identifiers are tied to data blocks to drive machine operation as set forth in steps [1]-[6] are those typical of computer operations, as opposed to human activity. The human analogy equivalent would be requiring an individual to make a mental note of a place in time when last a survey was issued to a user, noting if the time from last issued survey is acceptable, then generating a random number ( assuming that the human mind is even capable such randomness) combined with a frequency factor to calculate a value to be applied to a web address. Thus, we conclude that this is more a case where a judicial exception drives the operation of the various system components to cause the system to append a random number to a "URL used by a browser on the user computer 10 Appeal2017-004866 Application 09/900,674 to contact the survey logic server" in a certain manner, meaning that the claim is not "directed to" the abstract idea alone. Independent claims 8, 9 and 1 7 contain like limitations and thus our analysis above applies equally to these claims. CONCLUSIONS OF LAW We conclude the Examiner did err in rejecting claims 1, 3, 5, 6, 8-12, 17, 23, 24, 26, 27, 30, and 33 under 35 U.S.C. Â§ 101. DECISION The decision of the Examiner to reject claims 1, 3, 5, 6, 8-12, 17, 23, 24, 26, 27, 30, and 33 is reversed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a). See 37 C.F.R. Â§ 1.136(a)(l )(iv). REVERSED 11