Ex Parte Wilson

Patent Trial and Appeal Board

Oct 20, 2017

12882905 (P.T.A.B. Oct. 20, 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.
12/882,905 09/15/2010 Joseph G. Wilson 00008-0035-02000 3813
114629 7590
Bookoff McAndrews
2401 Pennsylvania Avenue, Suite 450
Washington, DC 20037
EXAMINER
HAMILTON, MATTHEW L
ART UNIT PAPER NUMBER
3682
NOTIFICATION DATE DELIVERY MODE
10/24/2017 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):
usptomail @bookoffmcandrews.com
Kross @ bookoffmcandrews.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOSEPH G. WILSON
Appeal 2016-0031981
Application 12/882,905
Technology Center 3600
Before MURRIEL E. CRAWFORD, MICHAEL W. KIM, and
PHILIP J. HOFFMANN, Administrative Patent Judges.
KIM, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is an appeal from the final rejection of claims 1—7, 24, 25,
and 37—47. We have jurisdiction to review the case under 35 U.S.C. §§ 134
and 6.
The invention relates generally to “targeting the delivery of content to
selected audience members.” Spec. 12.
Independent claim 1 is illustrative:
1 The Appellant identifies Advertising.com LLC as the real party in interest.
Appeal Br. 2.
Appeal 2016-003198
Application 12/882,905
1. A computer implemented method of delivering content via a
first digital medium to an audience member computer, and
delivering content via a second digital medium to an interface
with the second digital medium, said method comprising the
steps of:
receiving, from an audience member, a request to access
the first digital medium stored on one or more servers, using an
audience member computer;
receiving, from the audience member, a request to access
the second digital medium stored on the one or more servers,
using an interface with the second digital medium, wherein the
interface with the second digital medium and the audience
member computer are separate and distinct devices;
associating, by the one or more servers, use by the
audience member of the audience member computer with a
unique first digital medium identifier;
associating, by the one or more servers, use by the
audience member of the interface with a unique second digital
medium identifier;
collecting, by the one or more servers, profile data of the
audience member from both interactions with the first digital
medium by the audience member using the audience member
computer and interactions with the second digital medium by the
audience member using the interface;
storing the collected profile data in a database associated
with the one or more servers;
associating, by the one or more servers, the stored profile
data with one or both of the unique first digital medium identifier
and the unique second digital medium identifier in the database;
associating, by the one or more servers, the unique first
digital medium identifier and the unique second digital medium
identifier with a segment of audience member computers based
on the profile data;
transmitting first content to the audience member
computer via the first digital medium based on the association of
the unique first digital medium identifier with the segment of
audience member computers; and
transmitting second content to the interface with the
second digital medium based on the association of the unique
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second digital medium identifier with the segment of audience
member computers.
Claims 1—7, 24, 25, and 37-47 are rejected under 35 U.S.C. § 101 as
reciting ineligible subject matter in the form of an abstract idea.
We AFFIRM.
PRINCIPLES OF LAW
An invention is patent-eligible if it claims a “new and useful process,
machine, manufacture, or composition of matter.” 35 U.S.C. § 101. The
Supreme Court, however, has long interpreted § 101 to include implicit
exceptions: “[ljaws of nature, natural phenomena, and abstract ideas” are
not patentable. E.g., Alice Corp. Pty. Ltd. v. CLSBankInt’l, 134 S. Ct.
2347, 2354 (2014).
In determining whether a claim falls within the excluded category of
abstract ideas, we are guided in our analysis by the Supreme Court’s two-
step framework, described in Mayo and Alice. Id. at 2355 (citing Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1296—97
(2012)). In accordance with that framework, we first determine whether the
claim is “directed to” a patent-ineligible abstract idea. See Alice, 134 S. Ct.
at 2356 (“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.”); Bilski v. Kappos, 561 U.S. 593, 611 (2010) (“Claims 1 and 4 in
petitioners’ application explain the basic concept of hedging, or protecting
against risk.”); Diamond v. Diehr, 450 U.S. 175, 184 (1981) (“Analyzing
respondents’ claims according to the above statements from our cases, we
think that a physical and chemical process for molding precision synthetic
rubber products falls within the § 101 categories of possibly patentable
subject matter.”); Parker v. Flook, 437 U.S. 584, 594—595 (1978)
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(“Respondent’s application simply provides a new and presumably better
method for calculating alarm limit values.”); Gottschalk v. Benson, 409 U.S.
63, 64 (1972) (“They claimed a method for converting binary-coded decimal
(BCD) numerals into pure binary numerals.”).
The following method is then used to determine whether what the
claim is “directed to” is an abstract idea:
[T]he 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. See, e.g., Elec. Power Grp., 830 F.3d at 1353—54. That
is the classic common law methodology for creating law when a
single governing definitional context is not available. See
generally Karl N. Llewellyn, The Common Law Tradition:
Deciding Appeals (1960). This more flexible approach is also
the approach employed by the Supreme Court. See Alice, 134 S.
Ct. at 2355—57. We shall follow that approach here.
Amdocs (Israel) Limited v. Openet Telecom, Inc., 841 F.3d 1288, 1294 (Fed.
Cir. 2016).
The patent-ineligible end of the spectrum includes fundamental
economic practices, Alice, 134 S. Ct. at 2357; Bilski, 561 U.S. at 611;
mathematical formulas, Flook, 437 U.S. at 594—95; and basic tools of
scientific and technological work, Benson, 409 U.S. at 69. On the patent-
eligible side of the spectrum are physical and chemical processes, such as
curing rubber, Diamond, 450 U.S. at 184 n.7, “tanning, dyeing, making
waterproof cloth, vulcanizing India rubber, smelting ores,” and a process for
manufacturing flour, Gottschalk, 409 U.S. at 67.
If the claim is “directed to” a patent-ineligible abstract idea, we then
consider the elements of the claim—both individually and as an ordered
combination—to assess whether the additional elements transform the nature
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of the claim into a patent-eligible application of the abstract idea. Alice, 134
S. Ct. at 2355. This is a search for an “inventive concept”—an element or
combination of elements sufficient to ensure that the claim amounts to
“significantly more” than the abstract idea itself. Id.
ANALYSIS
The Appellant argues that there is no evidence in the record that the
claims are directed to organizing human activity, that the “specific steps”
recited in the claims have not been considered, the claims “cannot be similar
to merely ‘[mjanaging a [g]ame of [b]ingo.’” Appeal Br. 14—24. In
accordance with Mayo and Alice, we begin our evaluation of the Appellant’s
assertions with what the claims are “directed to.”
Independent claim 1 recites steps involving receiving two requests,
providing an identifier for the digital medium in each request, collecting
profile data from the user’s interactions with each of the two digital media
identifiers, associating the identified digital media identifiers with the profile
data and with a “segment of audience member computers based on the
profile data,” and transmitting content to each digital medium based on the
“association” of each digital medium identifier and the segment data.
Independent claim 1 is, therefore, directed to receiving, associating, and
sending information based on user interaction data.
A “digital medium” is not defined, but is described in the Appellant’s
Specification as encompassing networks and ways of providing an
“addressable” approach to “interface” the user with content. Spec. 140
(“The digital mediums may be heterogeneous, and may include, but are not
limited to, a website network, a cable system, a non-web based internet
network, a wireless communications system, such as a cellular phone or RF
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network, and/or any digital medium in which the means for interfacing the
audience member with the digital content is uniquely addressable.”). It may
also broadly encompass a set of web site domains. Id. 30-31; see also
Claim 3. Accordingly, we construe “digital medium” as a method or system
of communication for content, which encompasses web sites and
communication networks. As the claim also recites the digital medium is
“stored on one or more servers,” this excludes some exemplary digital media
described in the Specification, such as a cable system or cellular phone or
RF network, because we do not discern how a network can be “stored on a
server.”
Setting aside for now the claim language requirements for computers
and “interfaces,” which the claims indicate are “devices,” we are
unpersuaded that the Examiner erred in asserting that the claims are similar
in nature to those found to recite abstract ideas by our reviewing courts. See
Amdocs, 841 F.3d at 1294. For example, as cited by the Examiner
(Answer 4), the claims are similar to those in Planet Bingo, where a player
identification number is used to retrieve different sets of numbers associated
with the player identification number. See Planet Bingo, LLC v. VKGS LLC,
576 Fed. App’x. 1005 (Fed. Cir. 2014). For example, claim 1 of the ‘646
patent at issue in Planet Bingo recites:
(i) input of at least two sets of Bingo numbers which are
preselected by a player to be played in at least one selected game
of Bingo in a future period of time;
(ii) storage of the sets of Bingo numbers which are
preselected by the player as a group in the memory of the
computer;
(iii) assignment by the computer of a player identifier
unique to the player for the group having the sets of Bingo
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numbers which are preselected by the player wherein the player
identifier is assigned to the group for multiple sessions of Bingo;
(iv) retrieval of the group using the player identifier; [and]
(v) selection from the group by the player of at least one
of the sets of Bingo numbers preselected by the player ....
These steps are similar to the claimed method, which involves
associating, by the one or more servers, the stored profile
data with one or both of the unique first digital medium identifier
and the unique second digital medium identifier in the database;
[and]
associating, by the one or more servers, the unique first
digital medium identifier and the unique second digital medium
identifier with a segment of audience member computers based
on the profile data.
Of course, the claims in Planet Bingo concern Bingo, while the instant
claims do not. That, however, is merely a field of use which is not
dispositive. More pertinently, when all the Bingo related terms are removed
from the claim from Planet Bingo, we are left with an intelligible claim
directed to data associated with a common identifier that is used for further
association with additional data. That is substantively identical to what
Appellant’s independent claim 1 is directed.
Independent claim 1 is also similar to a claim in Intellectual Ventures
ILLC v. Capital One Financial Corp., 2014 WL 1513273 (E.D.Va. 2014),
aff d, 792 F.3d 1363 (Fed. Cir. 2015), in which user profile data is used to
communicate other data to a user over a communication medium. In
addition, claim 1 is similar to claims in Affinity Labs of Texas, LLC v.
Amazon.com, Inc., 2015 WF 11622489 (W.D.Tex., 2015), aff’d, 838 F.3d
1266 (Fed. Cir. 2016), where content tailored to an individual is presented
and delivered to a customer, and to “communicate an advertisement to the
given user based at least in part on a demographic of the given user.”
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Thus, because we find that what independent claim 1 is “directed to”
is similar to other claims found by the courts to be “directed to” abstract
ideas, we are unpersuaded that the Examiner erred in asserting that
independent claim 1 is directed to an abstract idea.
Turning to the second step of the Alice analysis, because we find that
independent claim 1 is directed to an abstract idea, the claim must include an
“inventive concept” in order to be patent-eligible, i.e., there must be an
element, or combination of elements, which is sufficient to ensure that the
claim in practice amounts to significantly more than the abstract idea itself.
To that end, we are unpersuaded by the Appellant’s argument that the
claims recite “significantly more than an abstract idea,” because, according
to the Appellant, the “application requires multiple computing devices
operating over a network,” “involves using user data to control which digital
content gets transmitted to a user’s computing devices,” and cannot be
performed through mental thought with pen and paper. Appeal Br. 22—26,
see also Reply Br. 5—7. We are also unpersuaded that the claims provide for
an improvement in a technical field or in another technology, “solve a
network centric problem,” “overcome[ ] a problem specifically arising in the
use of ‘collect[ing] and integrat[ing of] consumer data from a variety of on
line and offline sources,”’ and use computer “cookies” that are “significantly
more.” Appeal Br. 27—29; Reply Br. 5—13.
The receiving of data, associating it with identifiers, collecting,
storing and associating profile data, and associating data with a “segment,”
can all be done by the human mind with the use of pen and paper. The
Federal Circuit has held that if a method can be performed by human
thought alone, or by a human using pen and paper, it is merely an abstract
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idea and is not patent-eligible under § 101. CyberSource Corp. v. Retail
Decisions, Inc., 654 F.3d 1366, 1373 (Fed. Cir. 2011) (“[A] method that can
be performed by human thought alone is merely an abstract idea and is not
patent-eligible under § 101.”). Furthermore, mental processes, e.g.,
retrieving and replacing data, as recited in independent claim 1, remain
unpatentable even when automated to reduce the burden on the user of what
once could have been done with pen and paper. Id. at 1375 (“That purely
mental processes can be unpatentable, even when performed by a computer,
was precisely the holding of the Supreme Court in Gottschalk v. Benson,
[409 U.S. 63 (1972)].”).
The claimed “audience member computer” and “servers” perform
generic computer functions, such as sending, receiving, and storing data, as
well as hosting, and interacting with, web sites. Spec. H 30-32.
Independent claim 1, thus, only utilizes what is essentially a generic
computer, which we are unpersuaded is “significantly more.” See Spec.
1130-38. “[A]fter Alice, there can remain no doubt: recitation of generic
computer limitations does not make an otherwise ineligible claim patent-
eligible. The bare fact that a computer exists in the physical rather than
purely conceptual realm is beside the point.” DDR Holdings, LLC v.
Hotels.com, L.P., 773 F.3d 1245, 1256 (Fed. Cir. 2014) (internal citations
and quotation marks omitted).
Dependent claims 2—7, 24, 25, and 47 expand on the type of
communications with which the method may operate, the type of content
handled, and the storing and use of data on a computer in a “cookie” file.
We are unpersuaded that anything, however, in claims 1—7, 24, 25, or 47
purports to improve computer functioning or “effect an improvement in any
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other technology or technical field” beyond receiving, associating, and
sending information based on user interaction data. Alice, 134 S. Ct. at
2359. For example, the Specification discloses that the “present invention
relates to a system and method for targeting the delivery of content to
selected audience members based on the integration of diverse data into
profile data relating to the selected audience members”; as most of the terms
related to audience targeting, which is a business problem, we are unclear as
to what technical feature the claims are supposed to improve. Spec. 12.
Nor are we persuaded that the claims solve a problem unique to the
Internet, because the Internet is not recited, and not utilized in all
embodiments, as indicated in the Specification (the invention is “not limited
to delivery of content via” the Internet). Id.', see also DDR Holdings, 773
F.3d at 1257. The claims also are not adequately tied to “a particular
machine or apparatus.” Bilski v. Kappos, 561 U.S. 593, 601 (2010).
Because claims 1—7, 24, 25, and 47 are directed to an abstract idea and
nothing in the claims adds an inventive concept, the claims are not patent-
eligible under § 101. Therefore, we sustain the Examiner’s rejection of
claims 1—7, 24, 25, and 47 under 35 U.S.C. § 101.
We find no meaningful distinction between independent method
claim 1 and independent method claim 37, because claim 37 essentially
recites one “digital medium” is the Internet and another is “subscription-
based,” and limits the method to those applications. Dependent claims 38—
46 do not alter the general analysis, by limiting where data originates,
naming computer types, refining the meaning of “segment,” indicating data
is collected continuously, and storing and using data in computer “cookie”
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files. Therefore, we also sustain the rejection of claims 37-46 as reciting
abstract ideas under 35 U.S.C. § 101.
DECISION
We AFFIRM the rejection of claims 1—7, 24, 25, and 37-47 under 35
U.S.C. § 101.
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).
AFFIRMED
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