Ex Parte Smith et al

Patent Trials and Appeals Board

Mar 27, 2019

13533822 - (D) (P.T.A.B. Mar. 27, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/533,822 06/26/2012
72058 7590 03/29/2019
Kilpatrick Townsend & Stockton LLP
Adobe Systems, Inc. 58083
Mailstop: IP Docketing - 22
1100 Peachtree Street, Suite 2800
Atlanta, GA 30309-4530
FIRST NAMED INVENTOR
Kevin Smith
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.
58083-857896 (00028Cl) 4944
EXAMINER
EBERSMAN, BRUCE I
ART UNIT PAPER NUMBER
3692
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):
ipefiling@kilpatricktownsend.com
KTSDocketing2@kilpatrick.foundationip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KEVIN SMITH and DIPENDRA MALHOTRA
Appeal 2017-011778
Application 13/533,822
Technology Center 3600
Before CARL W. WHITEHEAD JR., RAMA G. ELLURU and
KARA L. SZPONDOWSKI, Administrative Patent Judges.
WHITEHEAD JR., Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants 1 are appealing the final rejection of claims 21--41 under
35 U.S.C. § 134(a). Appeal Brief 1. We have jurisdiction under 35 U.S.C.
§ 6(b ).
We reverse.
Introduction
The invention is directed to:
[A] computer-implemented method of keyword bidding for
Internet advertising includes: enabling a user to define a
keyword condition to be met in order for a rule to be
1 Appellants identify Adobe Systems Incorporated as the real party in
interest. Appeal Brief 1.
Appeal 2017-011778
Application 13/533,822
triggered; and enabling a user to define an action to be taken
when the rule is triggered, where the action results in
bidding for the keyword according to a selection by the
user.
Specification ,r 7.
Illustrative Claim
21. A computer-implemented method for automated
bidding on keywords used in an Internet advertising campaign,
the method comprising:
storing, in a library of customized bidding rules in a
storage device of a computing device, a rule comprising a
keyword condition that triggers an action to be taken, the
keyword condition including a variable, an operator, and a
value, the action including automatically bidding on a keyword
associated with the rule;
customizing, by a bid automation tool, the rule in the
storage device to modify subsequent keyword purchasing to
increase web traffic driven to a website as a result of keyword
purchasing, the customizing being based on metrics received
from one or more search engines, the metrics being calculated
based on visitor interactions with the website, and web traffic
data received from a web analytics tool indicating the web
traffic driven to the website as a result of the keyword
purchasing;
determining whether the keyword condition has been met
for the customized rule based on the metrics and comparing a
measure of the web traffic data corresponding to the variable to
the value and the operator of the keyword condition; and
executing, by the computing device, the action to be
taken when the rule is triggered responsive to determining that
the keyword condition has been met.
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Rejection on Appeal
Claims 21--41 stand rejected under 35 U.S.C. § 101 because the
claimed invention is directed to non-statutory subject matter. Final Action
7-12.
ANALYSIS
Rather than reiterate the arguments of Appellants and the Examiner,
we refer to the Appeal Brief (filed March 1, 2017), the Reply Brief
(September 27, 2017), the Final Action (mailed September 1, 2016) and the
Answer (mailed July 27, 2017), for the respective details.
35 U.S.C. § 101 rejection
The Examiner determines the claims are patent ineligible under
35 U.S.C. § 101 because the claims are directed to keyword bidding on
Internet advertising, which is an abstract idea comprising a fundamental
economic practice or organizing human activity, and do not include
additional elements that are sufficient to amount to significantly more than
the abstract idea. Final Action 8-10; see Alice Corp. Pty. Ltd. v. CLS Bank
Int'!, 573 U.S. 208,217 (2014) (describing the two-step framework "for
distinguishing patents that claim laws of nature, natural phenomena, and
abstract ideas from those that claim patent-eligible applications of those
concepts").
After the mailing of the Answer and the filing of the Briefs in this
case, the USPTO published revised guidance on the application of§ 101.
2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50
(Jan. 7, 2019) (hereinafter "Memorandum"). Under the Memorandum, the
Office first looks to whether the claim recites:
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Application 13/533,822
( 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) (9th
ed. 2018).
Only if a claim (1) recites a judicial exception and (2) does not integrate
that exception into a practical application, does the Office then look to
whether the claim:
(3) adds a specific limitation beyond the judicial exception that
are not "well-understood, routine, conventional" in the field
(see MPEP § 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 Memorandum, 84 Fed. Reg. at 52-57.
We are not persuaded the Examiner's rejection is in error. We adopt
the Examiner's findings and conclusions as our own, and add the following
primarily for emphasis and clarification with respect to the Memorandum.
Appellants argue, "The Examiner erred by rejecting claims 21--41
under 35 U.S.C. § 101 for several reasons. First, the Examiner failed to
establish a prima facie case of subject-matter ineligibility. Second, the
rejected claims are not directed to an abstract idea. Finally, each claim
recites significantly more than any abstract idea." Appeal Brief 4.
We agree with the Examiner's determination that the claims are
directed to an abstract idea. See Final Action 7-9. We do not find
Appellants' argument that the Examiner failed to establish a ''prima facie
case of subject-matter ineligibility" persuasive. See Appeal Brief 4. The
Federal Circuit has repeatedly noted that "the prima facie case is merely a
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Application 13/533,822
procedural device that enables an appropriate shift of the burden of
production." Hyatt v. Dudas, 492 F.3d 1365, 1369 (Fed. Cir. 2007) (citing
In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992)). The court has, thus,
held that the Office carries its procedural burden of establishing a prima
facie case when its rejection satisfies the requirements of 35 U.S.C. § 132 by
notifying the applicant of the reasons for rejection, "together with such
information and references as may be useful in judging of the propriety of
continuing the prosecution of [the] application." See In re Jung, 637 F.3d
1356, 1362 (Fed. Cir. 2011).
Appellants' Specification describes that it "[i]n many cases,
businesses are relying on the Internet as their sole or primary advertising
conduit" and it is "commonplace for online and 'brick-and-mortar'
businesses to contract with search engines in an effort to direct search engine
users to the businesses." Specification ,r 2. These relationships involve the
businesses purchasing rights to keywords or keyphrases from the search
engines, and "the search engines conspicuously display[ing] advertising
associated with the businesses when the user inputs the particular purchased
keywords." Specification ,r 2; see also Specification ,r,r 3---6. Appellants'
Abstract discloses that the invention is "A system and method [that] allow a
user or business entity to create customized rules for bidding on keywords
to/from a search engine."
Claim 21 recites "computer-implemented method for automated
bidding on keywords used in an Internet advertising campaign;" "the
keyword condition including a variable, an operator, and a value, the action
including automatically bidding on a keyword associated with the rule;"
"customizing, by a bid automation tool, the rule in the storage device to
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Application 13/533,822
modify subsequent keyword purchasing to increase web traffic driven to a
website as a result of keyword purchasing" and "web traffic data received
from a web analytics tool indicating the web traffic driven to the website as
a result of the keyword purchasing." These steps comprise fundamental
economic principles or practices and/or commercial or legal interactions
( e.g., marketing or sales activities); thus, the claim recites "certain methods
of organizing human activity," which under the Guidance is an abstract idea.
Memorandum, Section I (Groupings of Abstract Ideas); see Final Action 3-
5; see also Specification ,r,r 33-35.
Our reviewing court has found claims to be directed to abstract ideas
when they recited similar subject matter. In re Schrader, 22 F.3d 290, 291,
293-94 (Fed. Cir. 1994) (bidding at an auction) and Priceplay.com, Inc. v.
AOL Advert., Inc., 83 F. Supp. 3d 577, 583 (D. Del. 2015) ("Auctions,
competitive activities, and sales transactions are all abstract ideas, and do not
become non-abstract when combined and conducted over the Internet."),
aff d mem., 627 F. App'x 925 (Fed. Cir. 2016). Therefore, we conclude the
claims recite an abstract idea pursuant to Step 2A, Prong One of the
guidance. See Memorandum, Section III(A)(l) (Prong One: Evaluate
Whether the Claim Recites a Judicial Exception).
Appellants contend:
The Answer continues to be devoid of any discussion of
the claim language in determining that the independent claims
are directed towards an abstract idea. The Answer continues to
simply ignore the claim language altogether at the first step of
the eligibility analysis, and do not describe the claims at even the
"high level of abstraction" found to be erroneous in the Enfzsh
decision.
Reply Brief 3.
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Appellants further contend, "[T]he Examiner failed to include a
sufficient explanation of why the subject matter to which the claims are
actually directed constitutes an abstract idea, and erroneously deprived the
Appellant of an opportunity to explain why the features of the claims are not
directed to an abstract idea." Reply Brief 3. The Examiner addresses the
claims limitations pertaining to "keyword bidding on Internet advertising"
that recites fundamental economic principles or practices and/or commercial
or legal interactions, as stated above. See Final Action 3--4. We do not find
Appellants' argument persuasive because the Examiner's alleged failure
does not relieve Appellants of their burden to address the merits of the
rejection. See Reply Brief 5 ( citing Appeal Brief 5).
Appellants present no persuasive arguments addressing the actual
merits of the rejection and no persuasive arguments indicating that the
claimed invention reflects an improvement in the functioning of a computer,
Internet or any other technology or technical field. See Appeal Brief 3-9;
Reply Brief 2---6; see also Memorandum III (A)(2).
Accordingly, we do not find Appellants' arguments persuasive
because the claims utilize a computer system merely as a tool to obtain bids
for keywords utilized on the Internet. See Specification ,r,r 33-35; see also
Enfzsh, LLC v. Microsoft Corp., 822 F.3d 1327, 1335-36 (Fed. Cir. 2016)
("[W]e find it relevant to ask whether the claims are directed to an
improvement to computer functionality versus being directed to an abstract
idea ... the focus of the claims is on the specific asserted improvement in
computer capabilities (i.e., the self-referential table for a computer database)
or, instead, on a process that qualifies as an 'abstract idea' for which
computers are invoked merely as a tool."). The claims do not recite an
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additional element or elements that reflect an improvement in the
functioning of a computer, or an improvement to other technology or
technical field.
Consequently, we determine the claim does not integrate the judicial
exception into a practical application. See Memorandum, Section III(A)(2)
(Prong Two: If the Claim Recites a Judicial Exception, Evaluate Whether
the Judicial Exception Is Integrated Into a Practical Application).
Turning to Step 2B of the guidance, the Examiner finds in regard to
independent claims 21, 30, and 37 that:
Although a computer acts as the intermediary in the claimed
method, the claims do no more than implement the abstract idea
for keyword bidding on Internet advertising on a generic
computer. Using a computer to storing a rule, modifying the rule,
determining whether the keyword condition has been met and
executing the action to be taken when the rule is triggered which
is one of the most basic functions of a computer. All of these
computer functions are "well understood, routine, conventional
activit[ies]" previously known to the industry.
Answer 5---6; Final Action 10-11.
Appellants contend:
[T]he Examiner's conclusion that the claim limitations, as an
ordered combination, are "well understood, routine, and
conventional" runs contrary to the prosecution history. As noted
in the Appeal Brief, there are no prior art rejections in the current
application, showing that the Examiner is unable to provide even
a combination of references that teach the claim limitations as
whole. See Appeal Brief p. 3. Yet, despite this, the Examiner
maintains that the claim as a whole is well understood, routine,
and conventional. Answer p. 6. Even if it is possible to maintain
that a novel and non-obvious claim does not contain
"significantly more" than the abstract idea because, as an ordered
combination, the claim is a "well understood, routine,
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conventional activity," the Examiner has failed to provide any
rationale for reaching this conclusion.
Reply Brief 5---6.
Appellants' argument about the lack of prior art rejections by the
Examiner does not persuade us of Examiner error. As the Federal Circuit
has explained, a "'claim for a new abstract idea is still an abstract idea."'
SAP Am., Inc. v. Investpic, LLC, No. 2017-2081, 2018 WL 2207254, at *1
(Fed. Cir. May 15, 2018) (quoting Synopsis, Inc. v. Mentor Graphics Corp.,
839 F.3d 1138, 1151 (Fed. Cir. 2016)). Even assuming the technique
claimed was "'innovative, or even brilliant,"' that would not be enough for
the claimed abstract idea to be patent eligible. See SAP America, 2018 WL
2207254 at * 1.
However, the USPTO issued the memorandum titled "Changes in
Examination Procedure Pertaining to Subject Matter Eligibility, Recent
Subject Matter Eligibility Decision (Berkheimer v. HP, Inc.)" on April 19,
2018 ("Berkheimer Memo"). Applying the procedural guidance of the
Berkheimer Memo, the determination that "an additional element (or
combination of elements) is not well-understood, routine or conventional
unless the examiner finds, and expressly supports a rejection in writing."
Berkheimer Memo 3. Support for the determination can be one or more of
the following: (1) "A citation to an express statement in the specification or
to a statement made by an applicant during prosecution that demonstrates the
well-understood, routine, conventional nature of the additional element(s);"
(2) "A citation to one or more of the court decisions discussed in MPEP §
2106.05(d)(II) as noting the well-understood, routine, conventional nature of
the additional element(s);" (3) "A citation to a publication that demonstrates
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the well-understood, routine, conventional nature of the additional
element( s )" and ( 4) "A statement that the examiner is taking official notice
of the well-understood, routine, conventional nature of the additional
element(s)." Berkheimer Memo 3--4.
We conclude that independent claims 21, 30, and 37 recite a
fundamental economic principles or practices and/or commercial or legal
interactions, which are certain methods of organizing human activity
identified in the Memorandum, and, thus, an abstract idea. See Final Action
3--4. However, we reverse the Examiner's 35 U.S.C. § 101 rejection
because we find Appellants' argument that the Examiner failed to provide
rationale or support for determining that the claimed computer functions are
"'well understood, routine, conventional activit[ies]' previously known to
the industry" persuasive of Examiner error. See Answer 5---6; Final Action
10-11; see also Memorandum, Section III (B) (Step 2B: If the Claim Is
Directed to a Judicial Exception, Evaluate Whether the Claim Provides an
Inventive Concept). Therefore, on the record before us, we do not sustain
the Examiner's 35 U.S.C. § 101 rejection of independent claim 21. For the
same reasons, we do not sustain the rejection of independent claims 30 and
37. Dependent claims 22-29, 31-36, and 38--40 stand with the claims from
which they depend.
DECISION
The Examiner's non-statutory subject matter rejection of claims 21-
41 is reversed.
REVERSED
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