Ex Parte Tu et al

Patent Trial and Appeal Board

Jun 12, 2017

13308394 (P.T.A.B. Jun. 12, 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.
13/308,394 11/30/2011 Peter Henry Tu 251010-1 (GELC:0073) 1012
62204 7590 06/14/2017
GE GLOBAL PATENT OPERATION
GE LICENSING (62204)
901 MAIN AVENUE
NORWALK, CT 06851
EXAMINER
SYROWIK, MATHEW RICHARD
ART UNIT PAPER NUMBER
3622
NOTIFICATION DATE DELIVERY MODE
06/14/2017 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):
rlt @ zpspatents. com
docket@fyiplaw.com
gpo.mail@ge.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PETER HENRY TU, MARK LEWIS GRABB,
XIAOMING LIU, and TING YU
Appeal 2016-002485
Application 13/308,3941
Technology Center 3600
Before MICHAEL J. STRAUSS, NABEEL U. KHAN, and
AARON W. MOORE, Administrative Patent Judges.
KHAN, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Final Rejection
of claims 1—12. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 Appellants identify General Electric Company as the real party in interest.
App. Br. 2.
Appeal 2016-002485
Application 13/308,394
STATEMENT OF THE CASE
The Invention
Appellants’ invention relates to an advertising system that tracks
encounters between a potential customer and an advertising station, and
selects advertising based on the tracked encounters. See Abstract.
Exemplary independent claim 1 is reproduced below.
1. A system comprising:
an advertising station configured to output advertising
content to a potential customer; and
a data processing system including a processor and a
memory having application instructions for execution by the
processor, the application instructions including:
an identification engine to identify the potential
customer;
a tracking engine to track encounters between the
potential customer and the advertising station; and
a content engine to select the advertising content to
be output to the potential customer based on the tracked
encounters between the potential customer and the
advertising station, wherein the advertising content
comprises episodic content.
References and Rejections
1. Claims 1—12 stand rejected under 35 U.S.C. § 101 as directed to
nonstatutory subject matter. Final Act. 11—12.
2. Claims 1—9, 11, and 12 stand rejected under 35 U.S.C. § 103(a)
as unpatentable over Sharma (US 7,921,036 Bl, issued Apr. 5, 2011) and
Fenton (US 7,225,233 Bl, issued May 29, 2007). Final Act. 13—17.
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3. Claim 10 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Sharma, Fenton, and Tischer (US 2007/0271580 Al,
published Nov. 22, 2007). Final Act. 17—18.
ANALYSIS
Non-statutory Subject Matter
The Examiner finds claims 1—12 are directed to “the concept of
selecting advertising content based on observed behavior of a potential
customer(s),” which the Examiner finds is “a fundamental economic practice
and/or a method of organizing human activities.” Final Act. 12. Thus, the
Examiner concludes the claimed subject matter is drawn to an abstract idea.
Id. The Examiner further finds “[t]he claims do not recite limitations that
are ‘significantly more’ than the abstract idea.” Final Act. 12.
Appellants argue “the claims are directed to a system including an
advertising station and a data processing system having a processor and a
memory having application instructions for execution by the processor.
Thus, the claims are directed to a machine or manufacture, which is a
statutory category of invention.” App. Br. 5—6.
Appellants further argue “the functions performed by the recited
system are not generic functions performed using a generic computing
system, but instead are specific instructions or functions implemented by the
recited system to increase customer interest and effectiveness of the recited
advertising system.” App. Br. 6. According to Appellants, “the claims
address a challenge that is particular to advertising” (App. Br. 6) and
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Application 13/308,394
“clearly provide improvements in the field of advertising and outputting
advertising to nearby persons” (App. Br. 7).
We are unpersuaded by Appellants’ arguments. We turn to the two-
step analysis laid out in Alice Corp. Pty. Ltd. v. CLS BankInt 7, 134 S. Ct.
2347, 2355 (2014) (citing Mayo Collaborative Servs. v. Prometheus Labs.,
Inc., 566 U.S. 66, 75—78 (2012). As to step one, we find the Examiner did
not err in finding the claims are directed to a judicially recognized abstract
idea. Claim 1 is directed to a system comprising an advertising station with
a processor and memory that identifies a potential customer, tracks previous
encounters with that customer, and outputs advertising based on previous
encounters with the customer. See App. Br. 21. In view of the claim’s
limitations, we agree with the Examiner that claim 1 is directed to selecting
advertising content based on tracked encounters with a potential customer,
and, therefore, directed to a fundamental economic or commercial practice.
See Intellectual Ventures ILLC v. Capital One Bank, 792 F.3d 1363, 1369—
70 (Fed. Cir. 2015) (finding the practice of tailoring advertising to individual
customers to be a “fundamental. . . practice long prevalent in our system”);
see also Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 714—15 (Fed. Cir.
2014) (finding “showing an advertisement before delivering free content” to
be an abstract idea).
Applying step two of the framework, we also agree with the Examiner
that the claim, when viewed as a whole, does not include anything
significantly more than the abstract concept of selecting advertising content
based on observed behavior of a potential customer. Emphasizing the
claimed hardware elements, such as the data processing system, processor,
and memory (see App. Br. 5—6), Appellants argue the claims are not directed
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Application 13/308,394
to an abstract idea but to a system. However, we agree with the Examiner
that these hardware elements are generic computer elements used to perform
routine and conventional functions. See Ans. 9. As our reviewing court has
explained, “[i]t is well-settled that mere recitation of concrete, tangible
components is insufficient to confer patent eligibility to an otherwise
abstract idea. Rather, the components must involve more than performance
of‘“well-understood, routine, conventional activities previously known to
the industry.’” In re TLI Comms. LLC Patent Litigation, 823 F.3d 607, 613
(Fed. Cir. 2016) (quoting Alice, 134 S. Ct. at 2359).
Notably, the claims are not directed to improving computer
technology. Therefore, even if the claims are directed to “improvements in
the field of advertising and outputting advertising to nearby persons” (Reply
Br. 6), as alleged by Appellants, such improvements are still directed at the
field of advertising itself and not to the technology implementing that
advertising.
Accordingly, we sustain the Examiner’s rejection of claim 1 under 35
U.S.C. § 101. Appellants do not separately argue claims 2—12 and,
therefore, we affirm the Examiner’s rejection of these claims as well.
Obviousness Rejections
The Examiner finds Sharma teaches or suggests all of the limitations
of claim 1, except that Sharma “arguably fails to explicitly disclose wherein
the advertising content comprises episodic content.” Final Act. 14. The
Examiner relies upon Fenton as teaching advertising content comprising
episodic content. Final Act. 14 (citing Fenton 37:64—38:7).
Appellants argue “Fenton teaches that goods or services of a company
may be featured in a single story line .... However nothing in Fenton
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discloses advertising content comprising episodic content (e.g. advertising
content divided multiple, separate episodes), much less outputting episodic
content based on tracked encounters . . . App. Br. 11.
We agree with Appellants that Fenton does not teach or suggest
episodic content. Although the relied upon portions of Fenton teach or
suggest a story line, Fenton does not disclose that this story line is episodic.
We disagree with the Examiner’s interpretation that “episodic content”
encompasses standard video content simply because video content consists
of moving images viewed sequentially. We do not find Appellants’
comments made on page 10 of Appellants’ Amendments filed January 15,
2014, describing “episodic content” as “content. . . intended to be viewed
sequentially,” to indicate that “episodic content” be interpreted in a way
different than its plain meaning viewed in light of the Specification. Instead
we find Appellants’ comment was intended to parallel the Specification’s
description of “episodic content.” See Spec. 1 55 (describing episodic
content as “including ten episodes intended to be viewed sequentially”
where the advertising system “determine[s] how many of the episodes have
been output to the user in the past. . . and may select the appropriate episode
for current output”).
Accordingly, we do not sustain the Examiner’s rejection of claim 1
under 35 U.S.C. § 103(a). For the same reasons, we also do not sustain the
Examiner’s rejection of claims 2—12, which depend from claim 1.
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DECISION
The Examiner’s rejection of claims 1—12 under 35 U.S.C. § 101 is
affirmed.
The Examiner’s rejection of claims 1—12 under 35 U.S.C. § 103 is
reversed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 41.50(f).
AFFIRMED
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