Ex Parte Subramanian et al

Patent Trial and Appeal BoardMar 19, 2018

12277603 (P.T.A.B. Mar. 19, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/277,603 11125/2008 69316 7590 03/21/2018 MICROSOFT CORPORATION ONE MICROSOFT WAY REDMOND, WA 98052 FIRST NAMED INVENTOR Ravi R. Subramanian 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. 325356-US-NP 6343 EXAMINER STOLTENBERG, DAVID J ART UNIT PAPER NUMBER 3682 NOTIFICATION DATE DELIVERY MODE 03/21/2018 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): usdocket@microsoft.com chriochs@microsoft.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte RA VI R. SUBRAMANIAN and SCOTT COL VILLE Appeal2016-008651 Application 12/277,603 Technology Center 3600 Before JOHN A. EV ANS, CHARLES J. BOUDREAU, and STEVEN M. AMUNDSON, Administrative Patent Judges. AMUNDSON, Administrative Patent Judge. DECISION ON APPEAL Appellants 1 seek our review under 35 U.S.C. Â§ 134(a) from a final rejection of claims 1-7 and 9-32, i.e., all pending claims. We have jurisdiction under 35 U.S.C. Â§ 6(b ). We affirm. 1 Appellants identify the real party in interest as Microsoft Technology Licensing LLC. App. Br. 3. Appeal2016-008651 Application 12/277,603 STATEMENT OF THE CASE The Invention According to the Specification, the invention concerns "context-sensitive advertising for content on a mobile device." Spec. ,-i 15.2 For example, "content" includes emails and instant messages. Id. The Specification explains that: (1) "relevant advertisements are provided to the mobile device, and one or more of the relevant advertisements are injected into content, by the mobile device"; (2) "an advertisement is marked with a sentinel marker when it is injected into content"; and (3) "[ w ]hen the content is to be sent from the device, the sentinel marker is detected and the marked advertisement is removed from the content before the content leaves the device." Abstract; see Spec. ,-i 5. Exemplary Claims Independent claims 1 and 9 exemplify the claims at issue and read as follows (with formatting added for clarity): 1. A method comprising: receiving, at a computing device, content that is to be presented on the computing device, wherein the content that is to be presented on the computing device includes injectable content injected into the content; receiving an indication that the content is to be sent from the computing device to one or more user devices; 2 This decision uses the following abbreviations: "Spec." for the Specification, filed November 25, 2008; "Final Act." for the Final Office Action, mailed April 14, 2015; "App. Br." for the Appeal Brief, filed December 8, 2015; "Ans." for the Examiner's Answer, mailed July 20, 2016; and "Reply Br." for the Reply Brief, filed September 20, 2016. 2 Appeal2016-008651 Application 12/277,603 removing the injectable content from the content that is to be sent before the content is sent from the computing device to the one or more user devices; and sending the content with the injectable content removed, from the computing device to the one or more user devices without first being queried for the content by at least one of the one or more user devices. 9. A computing device comprising: one or more processors; one or more computer-readable storage media embodying software instructions which, when executed by the one or more processors, implement a method comprising: receiving, at the computing device, injectable content from a remote resource, the injectable content configured to be: embedded into and displayed with content on a display associated with the computing device, and identified by a sentinel marker that identifies the injectable content as being distinct from the content; receiving a signal representing an indication that the content is to be sent from the computing device to a device different from the computing device; detecting the sentinel marker in the content; and removing, using the sentinel marker, the injectable content from the content before the content is sent from the computing device to the device different from the computing device; and transmitting the content from the computing device. App. Br. 37-39 (Claims App.). 3 Appeal2016-008651 Application 12/277,603 The Prior Art Supporting the Re} ections on Appeal As evidence ofunpatentability, the Examiner relies on the following prior art: Bandera et al. ("Bandera") Voisin et al. ("Voisin") Goldentouch Crolley Mekikian US 6,332,127 Bl Dec. 18, 2001 US 7,103,563 Bl Sept. 5, 2006 US 2009/0254529 Al Oct. 8, 2009 (filed Apr. 2, 2009) (provisional appl. filed Apr. 4, 2008) US 7,778,873 B2 Aug. 17, 2010 (filed Apr. 20, 2005) US 8,135,799 B2 Mar. 13, 2012 (filed Jan. 11, 2007) The Rejections on Appeal Claims 1-7 and 9-32 stand rejected under 35 U.S.C. Â§ 101 as directed to patent-ineligible subject matter. Final Act. 2-8. Claims 1, 2, 5, 6, 9, 10, 12-17, and 19-32 stand rejected under 35 U.S.C. Â§ 103(a) as unpatentable over Bandera and Goldentouch. Final Act. 9-36. Claims 3 and 11 stand rejected under 35 U.S.C. Â§ 103(a) as unpatentable over Bandera, Goldentouch, and Crolley. Final Act. 36-38. Claim 7 stands rejected under 35 U.S.C. Â§ 103(a) as unpatentable over Bandera, Goldentouch, and Voisin. Final Act. 38-39. Claims 4 and 18 stand rejected under 35 U.S.C. Â§ 103(a) as unpatentable over Bandera, Goldentouch, and Mekikian. Final Act. 39-40. 4 Appeal2016-008651 Application 12/277,603 ANALYSIS We have reviewed the rejections in light of Appellants' arguments that the Examiner erred. For the reasons explained below, we concur with the Examiner's conclusions concerning unpatentability under Â§ 101 and Â§ 103(a). We adopt the Examiner's findings and reasoning in the Final Office Action (Final Act. 2--43) and Answer (Ans. 3-12). We add the following to address and emphasize specific findings and arguments. TheÂ§ 1 OJ Rejection of Claims 1-7 and 9-32 INTRODUCTION The Patent Act defines patent-eligible subject matter broadly: "Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title." 35 U.S.C. Â§ 101. In Mayo Collaborative Services v. Prometheus Laboratories, Inc., 566 U.S. 66, 70 (2012), and Alice Corp. v. CLS Bank International, 134 S. Ct. 2347, 2354 (2014), the Supreme Court explained that Â§ 101 "contains an important implicit exception" for laws of nature, natural phenomena, and abstract ideas. See Diamond v. Diehr, 450 U.S. 175, 185 (1981). In Mayo and Alice, the Court set forth a two-step analytical framework for evaluating patent-eligible subject matter: 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. If so, "consider the elements of each claim both individually and 'as an ordered combination' to determine whether the additional elements" add enough to transform the "nature of the claim" into "significantly more" than a patent-ineligible concept. Id. at 2355, 2357 (quoting Mayo, 566 U.S. 5 Appeal2016-008651 Application 12/277,603 at 79); see Affinity Labs of Tex., LLC v. DIRECTV, LLC, 838 F.3d 1253, 1257 (Fed. Cir. 2016). Step one of the Mayo/Alice framework involves looking at the "focus" of the claims at issue and their "character as a whole." Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016); Enfzsh, LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016). Step two involves the search for an "inventive concept." Alice, 134 S. Ct. at 2355; Elec. Power Grp., 830 F.3d at 1353. Under step two, "an inventive concept must be evident in the claims." RecogniCorp, LLC v. Nintendo Co., 855 F.3d 1322, 1327 (Fed. Cir. 2017). And although "an inventive concept can be found in the non-conventional and non-generic arrangement of known, conventional pieces," Bascom Global Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341, 1350 (Fed. Cir. 2016), an "inventive concept" requires more than "well-understood, routine, conventional activity already engaged in" by the relevant community, Rapid Litig. Mgmt. Ltd. v. CellzDirect, Inc., 827 F.3d 1042, 1047 (Fed. Cir. 2016) (quoting Mayo, 566 U.S. at 79-80). MAYO/ALICE STEP ONE Appellants assert that independent claims 1, 9, 14, 24, and 29 satisfy Mayo/Alice step one because they include steps that "are not fundamental economic practices, methods of organizing human activity, an idea itself, or a mathematic relationship." App. Br. 13, 16-19. Appellants further assert that the Examiner failed to consider the claims "taken as a whole" and instead analyzed only some claim elements. Id. at 13, 15-17. Appellants' assertions do not persuade us of Examiner error. The Examiner determines that the claims are directed to the abstract idea of "receiving, removing, and sending content," in particular, "receiving 6 Appeal2016-008651 Application 12/277,603 content, removing some of the content (e.g. the injectable content), and sending the remaining content (e.g. to one or more other users)." Final Act. 5, 41; Ans. 3. Hence, the Examiner accurately assesses the "focus" of the claims at issue. See Elec. Power Grp., 830 F.3d at 1353. The Examiner also determines that the claims concern a method of organizing human activity, i.e., a "sequence of claimed steps" for "removing an inserted advertisement from received correspondence and sending the correspondence without the advertisement to another destination." Final Act. 5, 41; Ans. 3. That sequence of claimed steps is analogous in substance to the "series of steps instructing how to hedge risk" in a commodities market recited in the claims at issue in Bilski v. Kappas, 561 U.S. 593, 599 (2010). In Alice, the Supreme Court explained that the claims in Bilski concerned a method of organizing human activity. Alice, 134 S. Ct. at 2356; see also Intellectual Ventures I LLC v. Capital One Bank (USA), 792 F.3d 1363, 1367 (Fed. Cir. 2015) (finding the claim at issue "not meaningfully different from the ideas found to be abstract in other cases before the Supreme Court and our court involving methods of organizing human activity"). In addition, the claims cover data collection and manipulation. See Ans. 4-5. The Federal Circuit has ruled that claims covering data collection and manipulation were directed to abstract ideas. See, e.g., Credit Acceptance Corp. v. Westlake Servs., 859 F.3d 1044, 1047, 1054-56 & n.6 (Fed. Cir. 2017); Intellectual Ventures I LLC v. Capital One Fin. Corp., 850 F.3d 1332, 1339--40 (Fed. Cir. 2017); Elec. Power Grp., 830 F.3d at 1351-54. 7 Appeal2016-008651 Application 12/277,603 MAYO/ALICE STEP Two Appellants assert that independent claims 1, 9, 14, 24, and 29 satisfy Mayo/Alice step two because they "satisfy the machine-or-transformation test." App. Br. 15. Appellants also assert that the claims include "meaningful limitations" that: (1) "sufficiently tie the claimed features to a particular machine"; and (2) "transform content with injectable content to content with the injectable content removed enabling improved device performance with reduced size of content file." Id. Appellants' assertions do not persuade us of Examiner error. After Mayo and Alice, satisfying the machine-or-transformation test does not necessarily demonstrate patent eligibility because "not all transformations or machine implementations infuse an otherwise ineligible claim with an 'inventive concept."' DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1256 (Fed. Cir. 2014); see also Vehicle Intelligence & Safety LLC v. Mercedes-Benz USA, LLC, 635 F. App'x 914, 919 (Fed. Cir. 2015). Simply using a "physical machine" does not impart patent eligibility. See Mayo, 566 U.S. at 84. In Alice, for example, "[a]ll of the claims [we]re implemented using a computer." 134 S. Ct. at 2353, 2360. Moreover, the machine-or-transformation test requires "an apparatus specific to the claimed invention" for patent eligibility. Smart Sys. Innovations, LLC v. Chi. Transit Auth., 873 F.3d 1364, 1375 (Fed. Cir. 2017). Here, the claims at issue do not require "an apparatus specific to the claimed invention" but instead recite generic computer components performing generic computer functions. See App. Br. 37--46 (Claims App.); see also Final Act. 5-7; Ans. 4-5. For instance, claim 9 recites a "computing device" comprising "one or more processors," "one or more 8 Appeal2016-008651 Application 12/277,603 computer-readable storage media," and a "display." App. Br. 38-39. Further, the Specification describes generic computer components rather than an invention-specific hardware arrangement. See, e.g., Spec. iii! 19, 54-56, Fig. 8. As the Examiner reasons, "none of the hardware recited" provides "a meaningful limitation beyond generally linking the use of the method to a particular technological environment." Final Act. 7. Regarding the asserted transformation, the Examiner reasons that: (1) "there is no physical transformation of any matter taking place"; and (2) "there is no transformation taking place, not even of the content involved." Final Act. 42; Ans. 4. The Examiner explains that "[t]he claims receive[] two types of content, remove[] one of the types of content," "send[] the other type of content," and "[b ]oth pieces of content remain the same." Final Act. 42; Ans. 4. In addition, the transformation of informational content would not confer patent eligibility. The Federal Circuit has ruled that claims covering the transformation of information in one form ("a functional description of a logic circuit") into another form ("a hardware component description of the logic circuit") were directed to abstract ideas. Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1139, 1150-51 (Fed. Cir. 2016); see Gottschalkv. Benson, 409 U.S. 63, 71-74 (1972) (holding that claims covering methods for converting binary-coded decimal numbers to binary numbers did not satisfy Â§ 101 ). Appellants contend, without citing any supporting evidence, that "with the injectable content removed from the content, there is improved device performance with reduced size of the content file and, consequently, reduced bandwidth capacity for transmitting." App. Br. 14, 16-19. 9 Appeal2016-008651 Application 12/277,603 Appellants' contention constitutes attorney argument. Attorney argument "cannot take the place of evidence." In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974). In addition, the Examiner reasons that "reducing the size of a file may in fact improve system performance" but "relating any system performance increase on a file size reduction should take into account the relative size reduction as well as other factors before any performance enhancement may be realized." Ans. 5. The Examiner explains that "if the original content file is large, and the inserted content is relatively small, a removal of the inserted content would have little if any effect upon system performance." Id. Further, the Examiner finds that the Specification lacks "any recitation or disclosure of an improvement in computer or network performance" due to the claimed invention. Id. Accordingly, the Examiner determines that the claimed invention does not "improve the functioning of the computer itself or another technology or technical field." Final Act. 5. Appellants' arguments do not persuade us of error in the Examiner's determinations. Consequently, we agree with the Examiner that the claims at issue lack meaningful limitations needed to transform them into significantly more than a patent-ineligible abstract idea, and thus do not satisfy Mayo/Alice step two. Final Act. 6-7; see Ans. 5-6. SUMMARY For the reasons discussed above, Appellants' arguments have not persuaded us that the Examiner erred in rejecting independent claims 1, 9, 14, 24, and 29 under Â§ 101. Hence, we sustain the Â§ 101 rejection of these independent claims. 10 Appeal2016-008651 Application 12/277,603 Claims 2-7, 10-13, 15-23, 25-28, and 30-32 depend directly or indirectly from an independent claim discussed above. Appellants do not argue patentability separately for these dependent claims. App. Br. 13-19; Reply Br. 1-2. Because Appellants do not argue the claims separately, we sustain the Â§ 101 rejection of these dependent claims for the same reasons as the independent claims. See 37 C.F.R. Â§ 41.37(c)(l)(iv). TheÂ§ 103(a) Rejections of Claims 1-7 and 9-32 REMOVING THE INJECTABLE CONTENT BEFORE SENDING Appellants argue that the Examiner erred in rejecting independent claims 1, 9, 14, 24, and 29 because Bandera and Goldentouch fail to teach or suggest the following limitation in claim 1 and similar limitations in the other independent claims: "removing the injectable content from the content that is to be sent before the content is sent from the computing device to the one or more user devices." App. Br. 22, 26, 28, 31, 34. Appellants contend that the Examiner "concedes that Bandera is not directed to this subject matter." Id. at 23. Appellants then assert that Golden touch discloses: ( 1) generating from a source internet document a second internet document "further including" certain "granular elements" and "granular element associated information"; and (2) sending the second internet document containing additional content compared to the source internet document. Id. at 23, 27, 29, 32, 34-35 (quoting Goldentouch ,-i 160). Appellants contrast Goldentouch' s addition of content before sending to the claimed removal of content before sending. Id. at 24, 26-27. Appellants' arguments do not persuade us of Examiner error because, as the Examiner finds, Goldentouch discloses: (1) acquiring a source internet document, such as an HTML document, that may include an embedded 11 Appeal2016-008651 Application 12/277,603 object, e.g., an advertising object; (2) generating a second internet document from the source internet document by adding or removing content, e.g., removing an advertising object; and (3) sending the second internet document to a user device, such as a cellular device. Goldentouch iii! 60-61, 106, 115, 119-120, 124-125, 160, 166-169,442,449,548,569,Fig.4A; see Final Act. 10-11 (citing Golden touch iii! 61, 442, 548, 568); Ans. 6-8 (citing Goldentouch iii! 106, 115, 125, 160, 166-167, 449, 569). For example, Goldentouch explains that embedded content in a source internet document includes "active objects" and that document modification involves "remov[ing] scripts, advertising or other" objects. Goldentouch iii! 125, 569. Further, Goldentouch describes document-modification algorithms, such as "ad-blocking algorithms," that "remove or otherwise modify" content. Id. iii! 127, 157, 373, 385, 564. Although Goldentouch discloses adding content, such as "granular element associated information," when generating the second internet document, adding content does not distinguish Goldentouch from the claims. The claims use the transitional term "comprising" and, therefore, do not exclude unrecited elements, such as "granular element associated information." See Regeneron Pharm., Inc. v. Merus N. V., 864 F.3d 1343, 1352 (Fed. Cir. 2017) (citing Manual of Patent Examining Procedure Â§ 2111.03). Appellants assert that "Goldentouch teaches directly away from" the claimed subject matter by "requiring generation of a second document" with additional content. App. Br. 24, 27, 29, 32, 35. "A reference does not teach away, however, if it merely expresses a general preference for an alternative invention but does not 'criticize, discredit, or otherwise discourage' 12 Appeal2016-008651 Application 12/277,603 investigation into the invention claimed." DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d 1314, 1327 (Fed. Cir. 2009) (quoting In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004)). Here, Goldentouch's disclosure of content addition as well as content removal when generating the second internet document does not "criticize, discredit, or otherwise discourage" investigation into the claimed subject matter. Appellants argue that "modifying Goldentouch to meet" the claimed subject matter "would change the intended purpose of Goldentouch which is to allow users to collaborate on a second document while maintaining the original version information." App. Br. 24, 27, 29-30, 32, 35. But that argument does not respond to the rejection because the Examiner relies on Bandera as the primary reference and Goldentouch as the secondary reference. See Final Act. 9-11. Based on Goldentouch's teachings, the Examiner determines that "it would have been obvious to one having ordinary skill in the art at the time the invention was made for Bandera to strip off (remove) the inserted advertising object." Id. at 11. In addition, obviousness does not depend on "whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference." In re Keller, 642 F.2d 413, 425 (CCPA 1981). REMOVING THE INJECTABLE CONTENT IN RESPONSE TO A SIGNAL Appellants argue that the Examiner erred in rejecting independent claims 14 and 29 because "there is simply no indication in Goldentouch that the injectable content is removed 'responsive to receiving a signal representing an indication to send the content' as recited in" these claims. App. Br. 30, 35. We disagree. 13 Appeal2016-008651 Application 12/277,603 As the Examiner finds, Goldentouch discloses document modification in response to receiving a query for a document. Goldentouch iii! 129, 172-175, Fig. 4A; see Ans. 10, 12 (citing Goldentouch iii! 60, 124-175, Fig. 4A). A query for a document corresponds to a signal representing an indication to send the document. Thus, Goldentouch teaches or suggests content removal "responsive to receiving a signal representing an indication to send the content," as recited in claims 14 and 29. SUMMARY For the reasons discussed above, Appellants' arguments have not persuaded us that the Examiner erred in rejecting independent claims 1, 9, 14, 24, and 29 for obviousness based on Bandera and Goldentouch. Hence, we sustain theÂ§ 103(a) rejection of these independent claims. Claims 2-7, 10-13, 15-23, 25-28, and 30-32 depend directly or indirectly from an independent claim discussed above. Appellants do not argue patentability separately for these dependent claims. App. Br. 22-36; Reply Br. 1-2. Because Appellants do not argue the claims separately, we sustain theÂ§ 103(a) rejections of these dependent claims for the same reasons as the independent claims. See 37 C.F.R. Â§ 41.37(c)(l)(iv). DECISION We affirm the rejection of claims 1-7 and 9-32 under 35 U.S.C. Â§ 101. We affirm the rejections of claims 1-7 and 9-3 2 under 3 5 U.S. C. Â§ 103(a). 14 Appeal2016-008651 Application 12/277,603 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ l.136(a)(l)(iv). See 37 C.F.R. Â§ 41.50(Â±). AFFIRMED 15