Ex Parte Swanson

Patent Trial and Appeal Board

Dec 19, 2017

12315688 (P.T.A.B. Dec. 19, 2017)

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.
12/315,688 12/05/2008 Daniel R. Swanson SR. 2938.001US1 3202
21186 7590 12/21/2017
SCHWEGMAN LUNDBERG & WOESSNER, P.A.
P.O. BOX 2938
MINNEAPOLIS, MN 55402
EXAMINER
BUSCH, CHRISTOPHER CONRAD
ART UNIT PAPER NUMBER
3681
NOTIFICATION DATE DELIVERY MODE
12/21/2017 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):
uspto@slwip.com
SLW @blackhillsip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DANIEL R. SWANSON SR.
Appeal 2016-006109
Application 12/315,68s1
Technology Center 3600
Before ST. JOHN COURTENAY III, LARRY J. HUME,
and NORMAN H. BEAMER, Administrative Patent Judges.
BEAMER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s non-
final rejection of claims 1-10, 17-19, and 22-29. Claims 11-16, 20, and 21
are withdrawn. We have jurisdiction over the pending rejected claims under
35 U.S.C. § 6(b).
We affirm.
1 Appellant identifies Swanson International, Incorporated as the real party
in interest. (App. Br. 4.)
Appeal 2016-006109
Application 12/315,688
THE INVENTION
Appellant’s disclosed and claimed invention is directed to classifying
advertising based on referencable attributes. (Abstract.) Independent
claim 1, reproduced below, is illustrative of the subject matter on appeal:
1. A system comprising:
an input apparatus to facilitate identification and
recording of individual customer advertising preferences that
are specified by the customer and directly identify
classifications of advertisements that are of interest to the
individual customer;
a content provider device to distribute content to the
individual customer, wherein the content provider device is
configured to receive an indication that the individual customer
is viewing the distributed content;
an advertising placement system that uses the customer
advertising preferences for advertising, calculates each
advertisement’s valuation for each individual customer as a
function of the customer advertising preferences and a
preliminary value set by an advertiser or an agent of the
advertiser that indicates how much distributed content the
advertisement will pay for, wherein the valuation includes the
preliminary value modified by a plurality of valuation
modifiers, wherein the valuation modifiers are real numbers,
wherein the plurality of valuation modifiers are provided by the
advertiser or the agent of the advertiser, wherein the plurality of
valuation modifiers each indicate a value to be added or
subtracted from the preliminary value if the classification
identified by a customer user’s advertising preference matches a
classification of the at least one advertisement, wherein the
preliminary value is modified in accord with the plurality of
valuation modifiers to create the valuation, wherein the
valuation of the at least one advertisement as modified by the
plurality of valuation modifiers is greater than or equal to a
threshold value needed to pay for a required valuation of a
defined portion of the distributed content, wherein the valuation
is a real number, wherein the required valuation is provided by
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a provider of the distributed content or an agent of the provider,
and wherein the valuation corresponds to a monetary value,
wherein the preliminary value is set as a function of a location
of the customer, the advertising placement system selects and
inserts the advertisement at an identified point inside the
distributed content such that a presentation device performs the
advertisement within the distributed content provided to the
individual customer; and
wherein the advertising placement system is configured
to insert the at least one advertisement into the content as a
function of the indication, the individual customer’s advertising
preferences, and the valuation of the at least one advertisement.
REJECTIONS
The Examiner rejected claims 1-10, 17-19, and 22-29 under 35
U.S.C. § 101 as being directed to non-statutory subject matter. (Non-Final
Act. 4.)
The Examiner rejected claims 1-3, 6, 17-19, and 23-29 under 35
U.S.C. § 103(a) as being unpatentable over Huber et al. (US 2004/0261100
Al, pub. Dec. 23, 2004), Kenderov et al. (US 8,102,422 Bl, issued Jan. 24,
2012), Grois (US 2008/0256064 Al, pub. Oct. 16, 2008), and Dominowska
et al. (US 2009/0144207 Al, pub. June 4, 2009). (Non-Final Act. 5-10.)
The Examiner rejected claims 4, 5, 7-10, and 22 under 35 U.S.C.
§ 103(a) as being unpatentable over Huber, Kenderov, Grois, Dominowska,
and official notice. (Non-Final Act. 10-15.)2
2 A double patenting rejection has been withdrawn. (Ans. 2.)
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ISSUES ON APPEAL
Appellant’s arguments in the Appeal Brief present the following
dispositive issues:3
Issue One\ Whether the pending claims are directed to non-statutory
subject matter. (App. Br. 24-37.)
Issue Two: Whether the Examiner erred in finding the combination of
Huber, Kenderov, Grois, and Dominowska teaches or suggests the
independent claim 1 limitation, “wherein the valuation includes the
preliminary value modified by a plurality of valuation modifiers,” and the
commensurate limitations of independent claims 6, 17-19, 23, and 24, and
whether the Examiner erred in finding the combination of Huber, Kenderov,
Grois, Dominowska, and official notice teaches or suggests the
commensurate limitation of independent claim 22. (App. Br. 40 45.)
ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellant’s
arguments the Examiner erred. With respect to the non-statutory subject
matter rejection, we disagree with Appellant’s arguments, and we adopt as
our own (1) the pertinent findings and reasons set forth by the Examiner in
the Action from which this appeal is taken (Non-Final Act. 4) and (2) the
corresponding findings and reasons set forth by the Examiner in the
Examiner’s Answer in response to Appellant’s Appeal Brief. (Ans. 2-9.)
3 Rather than reiterate the arguments of Appellant and the positions of the
Examiner, we refer to the Appeal Brief (filed July 20, 2015) (herein, “App.
Br.”); the Reply Brief (filed May 31, 2016) (herein, “Reply Br.”); the Non-
Final Office Action (mailed Dec. 18, 2014) (herein, “Non-Final Act.”); and
the Examiner’s Answer (mailed Mar. 30, 2016) (herein, “Ans.”) for the
respective details.
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We concur with the applicable conclusions reached by the Examiner, and
emphasize the following.
Issue One
The Examiner concludes the pending claims are patent-ineligible
under 35 U.S.C. § 101:
[T]he claims are directed towards the concept of assigning
values to ads based on customer response/feedback. These
actions are fundamental economic practices that are simply
derived by a series of mathematical formulations; therefore, the
claims are drawn to an abstract idea.
(Non-Final Act. 4.) In addition, the Examiner concludes:
The claims do not recite limitations that are “significantly
more” than the abstract idea because the claims do not recite an
improvement to another technology or technical field, an
improvement to the functioning of the computer itself, or
meaningful limitations beyond generally linking the use of an
abstract idea to a particular technological environment. It
should be noted that the limitations of the current claims are
performed by the generically recited computer. The limitations
are merely instructions to implement the abstract idea on a
computer and require no more than a generic computer to
perform generic computer functions that are well-understood,
routine and conventional activities previously known to the
industry.
(Id.)
Appellant argues the Examiner incorrectly describes the subject
matter of the claims:
Appellant contends that the claims are not directed to what the
Examiner states. The claims are directed to providing an [sic]
individual advertisements based on individual user specified
advertising preferences, valuing the advertisements for each
individual user, and inserting advertisements determined to be
of sufficient value in content. In this way, each individual user
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can receive ads targeted directly to that individual. While, each
of the claims do include determining values for respective
advertisements based on user specified advertising preferences,
the claims recite more than the generic abstract idea cited by the
Examiner.
(App. Br. 25.) In elaboration, Appellant enumerates the claim limitations,
characterizing them as steps in a “specific value methodology” that requires
“input from at least three separate entities (advertiser, content provider, and
user).” (See App. Br. 25-27) Based on these specific limitations, Appellant
maintains, “[tjhese recitations alone make the claims directed to more than
an abstract idea and do not unduly preempt others from innovating in the
area of the abstract idea cited by the Examiner.” (App. Br. 26.) Appellant
further argues, inter alia, the Examiner has failed to provide substantial
evidence in support of the rejection, and the claims are not directed to
subject matter that the Courts have identified as falling within the
established exceptions to subject matter eligibility. (App. Br. 28-34.)
Appellant also argues the claims recite significantly more than an
abstract idea — “The claims . . . provide a technical solution to the technical
problem of providing individually tailored advertisements to individual
users.” (App. Br. 34.) In particular, Appellant characterizes the invention of
the claims as “rifle shot targeting” where “people get only those ads they
care about.” (App. Br. 36 (internal quotes omitted).)
We are not persuaded by Appellant’s arguments. We adopt the
Examiner’s findings and conclusions provided in the Non-Final Office
Action and Answer. (Non-Final Act. 4; Ans. 2-9.) The Supreme Court has
long held that “[ljaws of nature, natural phenomena, and abstract ideas are
not patentable.” Alice Corp. Pty. Ltd. v. CLS BankInt’l, 134 S. Ct. 2347,
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2354 (2014) (quoting Assoc, for Molecular Pathology v. Myriad Genetics,
Inc., 133 S. Ct. 2107, 2116 (2013)). The “abstract ideas” category embodies
the longstanding rule that an idea, by itself, is not patentable. Alice Corp.,
134 S. Ct. at 2354-55 (quoting Gottschalkv. Benson, 409 U.S. 63, 67
(1972)).
In Alice, the Supreme Court sets forth an analytical “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. at 2355. The first step in the analysis is to “determine
whether the claims at issue are directed to one of those patent-ineligible
concepts,” such as an abstract idea. Id. If the claims are directed to a patent-
ineligible concept, the second step in the analysis is to consider the elements
of the claims “individually and ‘as an ordered combination’” to determine
whether there are additional elements that “‘transform the nature of the
claim’ into a patent-eligible application.” Id. (quoting Mayo Collaborative
Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 79, 78 (2012)). In other
words, the second step is to “search for an ‘inventive concept’—i.e., an
element or combination of elements that is ‘sufficient to ensure that the
patent in practice amounts to significantly more than a patent upon the
[ineligible concept] itself.’” Id. (quotingMayo, 566 U.S. at 73.) The
prohibition against patenting an abstract idea “‘cannot be circumvented by
attempting to limit the use of the formula to a particular technological
environment’ or adding ‘insignificant postsolution activity.’” Bilski v.
Kappos, 561 U.S. 593, 610-11 (2010) (internal citation omitted.)
Turning to the first step of the Alice inquiry, we agree with the
Examiner that Appellant’s claims are reasonably characterized as directed to
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an abstract idea of “assigning values to ads based on customer
response/feedback.” (Non-Final Act. 4.) The limitations recited in the
claims and itemized by Appellant are broadly consistent with, and merely
elaborate on, the Examiner’s characterization — for example:
• recording individual customer advertising preferences
• consideration of the location of the user
• distribution of content to individual customers, and
obtaining an indication when the content is viewed
• calculating an advertisement’s valuation
• providing required valuation by a provider of the distributed
content
• inserting advertisements into the media content
• inserting different advertisements when a different customer
is viewing
• recording advertisement valuation and placement decisions
in a database
Appellant argues there is no substantial evidence that “[tjhese actions
are fundamental economic practices that are simply derived by a series of
mathematical formulations.” (App. Br. 28.) “Patent eligibility under § 101
presents an issue of law.” Accenture Glob. Servs., GmbHv. Guidewire
Software, Inc., 728 F.3d 1336, 1340 (Fed. Cir. 2013). There is no
requirement that an examiner cite evidentiary support to conclude that a
claim is directed to a patent-ineligible concept, such as an abstract idea.4
4 See, e.g., para. IV, “JULY 2015 UPDATE: SUBJECT MATTER
ELIGIBILITY” to 2014 INTERIM GUIDANCE ON PATENT SUBJECT
MATTER ELIGIBILITY (2014 IEG), 79 Fed. Reg. 74618 (Dec. 16, 2014)
(“The courts consider the determination of whether a claim is eligible (which
involves identifying whether an exception such as an abstract idea is being
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In any event, aside from whether or not the art of record establishes
obviousness of the claimed subject matter, that record establishes that
assigning values to ads based on customer response/feedback, as well as
related actions such as selecting ads for insertion into media content based
on such values are well established and fundamental economic practices:
• calculating charges for advertisements; determine the
adjusted revenue total for the advertisement. (Dominowska
Abstract.)
• pricing advertisements to be presented within a document,
according to their relevance to user’s search query;
determining the relevance weight of said advertisement to
said at least one keyword. (Grois Abstract.)
• conditionally presenting selected categories of advertising to
viewers; viewer requests for categories of advertisements or
for specific advertisements may be processed. (Huber
Abstract.)
• option is presented to the user to receive advertisement
content, where the advertisement content is selected based
on the behavior. (Kenderov Abstract.)
There is no definitive rule to determine what constitutes an “abstract
idea.” Rather, the Federal Circuit has explained that “both [it] and the
Supreme Court have found it sufficient to compare claims at issue to those
claims already found to be directed to an abstract idea in previous
cases.” Enflsh, LLCv. Microsoft Corp., 822 F.3d 1327, 1334 (Fed. Cir.
2016); see also Amdocs (Israel) Ltd. v. Openet Telecom, Inc., 841 F.3d 1288,
1294 (Fed. Cir. 2016) (explaining that, in determining whether claims are
claimed) to be a question of law. Accordingly, courts do not rely on
evidence that a claimed concept is a judicial exception, and in most cases
resolve the ultimate legal conclusion on eligibility without making any
factual findings.” (emphasis added) (footnote omitted)).
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patent-eligible under § 101, “the decisional mechanism courts now apply is
to examine earlier cases in which a similar or parallel descriptive nature can
be seen—what prior cases were about, and which way they were decided”).
The Federal Circuit also noted that “examiners are to continue to determine
if the claim recites (i.e., sets forth or describes) a concept that is similar to
concepts previously found abstract by the courts.” Amdocs, 841 F.3d at
1294 n.2 (internal citation omitted.)
Here, the claims are similar to the claims that the Federal Circuit
determined are patent ineligible in Electric Power Group, 830 F.3d at 1353—
54 (collecting information and “analyzing information by steps people go
through in their minds, or by mathematical algorithms, without more, [are]
essentially mental processes within the abstract-idea category”). The
Federal Circuit has also held similar data manipulation claims to be directed
to patent-ineligible abstract idea—see Digitech Image Techs., LLC v. Elecs.
For Imaging, Inc., 758 F.3d 1344, 1351 (Fed. Cir. 2014) (employing
mathematical algorithms to manipulate existing information); OIP Tech.,
Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1362-63 (Fed. Cir. 2015) (offer-
based price optimization); Intellectual Ventures I LLC v. Capital One Bank
(USA), 792 F.3d 1363, 1370 (Fed. Cir. 2015) (tailoring information
presented to a user based on particular information); Accenture Global
Servs., GmbHv. Guidewire Software, Inc., 728 F.3d 1336, 1346 (Fed. Cir.
2013) (generating tasks in an insurance organization); and Versata Dev. Grp.
v. SAP Am., 793 F.3d 1306, 1333-34 (Fed. Cir. 2015) (price-determination
method involving arranging organizational and product group hierarchies).
Appellant’s argument that the claims require separate inputs from the
advertiser, the content provider, and the user is not inconsistent with the
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Examiner’s conclusions. These aspects of the claims constitute gathering of
pre-solution information which is then analyzed via an algorithm readily
performed mentally or by pencil and paper by a human being. See,
CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1372 (Fed. Cir.
2011); Fairwarning IP, LLC v Iatric Systems, Inc., 839 F.3d 1089, 1096
(Fed. Cir. 2016) (“claims that add the requirement that the system include a
‘user interface’ for selection of a rule” do not recite significantly more to
make claims patent eligible.) As stated in the Specification, “algorithms
described herein may be implemented in software or a combination of
software and human implemented procedures. . . .” (Spec. ^ 32.)
In addition, Appellants’ argument that the claims do not preempt all
methods of assigning values to ads based on customer response/feedback do
not make them any less abstract. See buy SAFE, Inc. v. Google, Inc., 765
F.3d 1350, 1355 (Fed. Cir. 2014) (collecting cases); Accenture, 728 F.3d at
1345; 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”).
Turning to the second step of the Alice inquiry, we find nothing in the
claims that adds anything “significantly more” to transform the abstract
concept of assigning values to ads based on customer response/feedback.
Alice, 134 S. Ct. at 2357. Beyond that abstract idea, the claims merely recite
“‘well-understood, routine, conventional activities],’” either by requiring
conventional computer activities (such as database storage), conventional
media distribution components (such as set-top boxes), or routine data-
gathering steps. (Spec. 45, 106, Fig. 1.) Alice, 134 S. Ct. at 2359
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(quoting Mayo, 566 U.S. at 73). Considered individually or taken together
as an ordered combination, the claim elements fail “to ‘transform’ the
claimed abstract idea into a patent-eligible application.” Id. at
2357 (quoting Mayo, 566 U.S. at 72-73, 78).
Appellant argues the claimed subject matter “provide[s] a technical
solution to the technical problem of providing individually tailored
advertisements to individual users.” (App. Br. 34.) However, as discussed
above, the “solution” is an abstract algorithm that “may be implemented in
software or a combination of software and human implemented procedures. .
. .” (Spec. ^ 32.) Nor are the claims “directed to a specific improvement to
computer functionality,” instead relating to “use of [] abstract mathematical
formula[s] on any general purpose computer.” Enfish, 822 F.3d at 1338. As
stated in the Specification, the claimed “advertising placement system” may
be “any general-purpose computing system using Linux, Unix, Windows,
Apple or any operating system.” (Spec. ^ 59.)
Because Appellant’s claims are directed to a patent-ineligible abstract
concept and do not recite something “significantly more” under the second
prong of the Alice analysis, we sustain the Examiner’s 35 U.S.C. § 101
rejection of the pending claims.
Issue Two
In finding the cited art teaches or suggests the independent claim
limitation, “wherein the valuation includes the preliminary value modified
by a plurality of valuation modifiers,” the Examiner refers only to Huber and
Kenderov:
Kenderov fails to explicitly disclose a method in which
said valuation is determined as an initial value (i.e. prior to the
ad being presented to the customer). However, it would have
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been obvious to one of ordinary skill in the art at the time of the
invention to perform said valuation at any time during the
advertising process. One would have been motivated to do this
in order to provide a baseline value prior to its modification by
the valuation modifiers.
Huber also fails to explicitly disclose a method wherein
the initial valuation is modified by a plurality of valuation
modifiers, wherein the plurality of valuation modifiers are
provided by the advertiser or the agent of the advertiser,
wherein the plurality of valuation modifiers each indicate a
value to be added or subtracted to the initial valuation if the
customer user’s advertising preference matches a classification
of the at least one advertisement, and wherein the initial
valuation is altered in accord with the plurality of valuation
modifiers.
While neither Huber nor Kenderov disclose this
limitation, it would have been obvious to one of ordinary skill
in the art to modify the Huber/Kenderov combination in this
fashion. To reiterate, Kenderov discloses a method in which an
ad is priced/valued as a function of the customer’s advertising
preferences that are specified by the customer, and wherein the
ad is presented as a function of the valuation (Fig. 7; Column 4,
Lines 3-9; Column 9, Lines 13-21). However, the
aforementioned limitation merely adds or subtracts from a
baseline value of an ad as a function of a user’s response. For
example, if a user makes a purchase in response to the ad or
otherwise indicates their preference for an ad, the value of that
ad would go up. Conversely, if a user merely clicks through an
ad without viewing it, the value of the ad would go down.
(Non-Final Act. 6-7.)
Appellant argues the Examiner does not address the requirement that
the preliminary value be “set by an advertiser or an agent of the advertiser,”
and the Examiner uses “impermissible hindsight.” (App. Br. 41^13.)
Appellant also argue the Examiner errs in finding obvious adjusting the
value of an ad as a function of a user “mak[ing] a purchase in response to the
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ad or otherwise indicating] their preference for an ad,” whereas the claims
require adjusting the value prior to presenting the ad to the user. (App. Br.
43 44.) In sum, Appellant argues, “what is stated as obvious is not what is
recited in the claims and the Examiner has failed to properly address each
and every limitation of the claims as required to establish a prima facie case
of obviousness.” (App. Br. 44.) The Examiner does not address these
arguments in the Answer, other than to generally dispute resort to improper
hindsight. (Ans. 10.)
We agree with Appellant’s arguments. The Examiner’s conclusory
finding that the claim limitation at issue is obvious even though it is not
disclosed in any of the cited references is not sufficiently supported by
evidence or reasoned analysis. Therefore, on the record before us, we are
constrained to find the Examiner erred in rejecting independent claims 1, 6,
17-19, and 22-24 as obvious.
CONCLUSION
For the reasons stated above, we sustain the Examiner’s rejection of
claims 1-10, 17-19, and 22-29 as being directed to patent-ineligible subject
matter under § 101.
Also for the reasons stated above, we do not sustain the Examiner’s
obviousness rejections under § 103 of independent claims 1, 6, 17-19, 23,
and 24 over Huber, Kenderov, Grois, and Dominowska, or of claim 22 over
Huber, Kenderov, Grois, Dominowska, and official notice. We also do not
sustain the obviousness rejections of claims 2, 3, and 25-29 over Huber,
Kenderov, Grois, and Dominowska, or of claims 4, 5, and 7-10 over Huber,
Kenderov, Grois, Dominowska, and official notice, which claims depend
from claims 1,6, 17, 19, or 24.
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Because we have affirmed at least one ground of rejection with
respect to each claim on appeal, we affirm the Examiner’s decision. See 37
C.F.R. §41.50(a)(1).
DECISION
We affirm the Examiner’s decision rejecting claims 1-10, 17-19, and
22-29.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv). See 37
C.F.R. § 41.50(f).
AFFIRMED
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