Marc Trachtenberg et al.

Patent Trials and Appeals Board

Dec 13, 2021

2021002590 (P.T.A.B. Dec. 13, 2021)

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.
14/788,189 06/30/2015 Marc Trachtenberg 18786.00003i 3602
67883 7590 12/13/2021
Pryor Cashman LLP
Patent Department
7 Times Square
NEW YORK, NY 10036-6569
EXAMINER
FRUNZI, VICTORIA E.
ART UNIT PAPER NUMBER
3688
MAIL DATE DELIVERY MODE
12/13/2021 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte MARC TRACHTENBERG,
FRANCOIS GARIEPY, and KETAN PATEL
____________

Appeal 2021-002590
Application 14/788,189
Technology Center 3600
____________

Before NINA L. MEDLOCK, BRUCE T. WIEDER, and
BRADLEY B. BAYAT, Administrative Patent Judges.

MEDLOCK, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
final rejection of claims 1–20. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Our decision references Appellant’s Appeal Brief (“Appeal Br.,”
filed November 2, 2020) and Reply Brief (“Reply Br.,” filed March 4,
2021), and the Examiner’s Answer (“Ans.,” mailed January 8, 2021) and
Final Office Action (“Final Act.,” mailed February 26, 2020). Appellant
identifies Videri Inc. as the real party in interest (Appeal Br. 3).
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CLAIMED INVENTION
The Specification states, “[t]he present invention represent[s] . . . a
digital advertising platform that maximizes pricing and revenue
opportunities throughout various market spaces” (Spec. 1).
Claims 1 and 11, reproduced below with bracketed notations added,
are the independent claims on appeal and representative of the claimed
subject matter:
1. A digital advertising system for displaying on one
or more display devices and optimizing revenue of at least one
advertisement displayed on the one or more display device
having bidding and rating information comprising:
[(a)] one or more display devices, each display device
having a processor, a memory, an operating system, one or more
applications configured to communicate with the operating
system in generating visual content, a digital signage system
engine configured to create and display advertisements on the
display device, and a profile containing attributes of the display
device, wherein the attributes include one or more time slots that
designate when at least one advertisement is to be displayed on
the display device;
[(b)] an advertising platform adapted to receive, for each
of the one or more display devices, one or more requests for
displaying at least one advertisement in one or more time slots of
the one or more display devices, each of the one or more requests
including bidding and rating information for one or more
requested time slots of a particular display device, wherein, for
each specific display device of the one or more display devices,
the advertising platform automatically selects, for each particular
time slot of the specific display device, a selected request from
one or more requests designating the particular time slot of the
specific display device, such that the selected request is
determined to maximize revenue for the particular time slot of
the specific display device, the advertising platform performing
such selection by using bidding and rating information
associated with the one or more requests designating the
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particular time slot of the specific display device, the at least one
advertisement associated with the selected request being
displayed on the specific display device in the particular time slot
indicated in the selected request; and
[(c)] an exchange adapted to securely access said
advertising platform and the one or more display devices to
govern the flow of data and control between the advertising
platform and each of the one or more display devices, wherein
the exchange communicates with the advertising platform to
receive one or more selected advertisements associated with one
or more selected requests, authenticates the one or more selected
advertisements, routes each of the selected advertisements to be
displayed on a respective display device in a respective time slot,
and provides acknowledgement to the advertising platform.
11. A method for displaying on one or more display
devices and optimizing revenue of at least one digital
advertisement displayed on the one or more display devices
having bidding and rating information comprising:
[(a)] providing one or more display devices, each display
device having a processor, a memory, an operating system, one
or more applications configured to communicate with the
operating system in generating visual content, a digital signage
system engine configured to create and display advertisements
on the display device, and a profile containing attributes of the
display device, wherein the attributes include one or more time
slots that designate when at least one advertisement is to be
displayed on the at least one display device;
[(b)] receiving by an advertising platform, for each of the
one or more time slots of the one or more display devices, one or
more requests for displaying at least one advertisement in one or
more time slots of the one or more display devices, each of the
one or more requests including bidding and rating information
for one or more requested time slots of a particular display
device;
[(c)] for each specific display device of the one or more
display devices, selecting automatically by the advertising
platform, for each particular time slot of the specific display
device, a selected request from one or more requests designating
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the particular time slot of the specific display device, such that
the selected request is determined to maximize revenue for the
particular time slot of the specific display device, the advertising
platform performing such selection by using bidding and rating
information associated with the one or more requests designating
the particular time slot of the specific display device, the at least
one advertisement associated with the selected request being
displayed on the specific display device in the particular time slot
indicated in the selected request;
[(d)] securely accessing by an exchange information
from said advertising platform and said at least one display
device;
[(e)] governing the flow of data and control between said
advertising platform and said at least one display device by said
exchange;
[(f)] communicating by the exchange with the
advertising platform to receive one or more selected
advertisements associated with one or more selected requests;
[(g)] authenticating the one or more selected
advertisements;
[(h)] routing by the exchange each of the selected
advertisements to be displayed on a respective display device in
a respective time slot;
[(i)] providing acknowledgement to the advertising
platform; and
[(j)] displaying by each of the one or more display
devices the selected advertisements.
REJECTIONS
Claims 1–20 are rejected under 35 U.S.C. § 101 as directed to a
judicial exception without significantly more.
Claims 1, 5–7, 11, and 15–17 are rejected under 35 U.S.C. § 103 as
unpatentable over Shaw et al. (US 8,566,152 B1, issued Oct. 22, 2013)
(“Shaw”), Yeo et al. (US 2004/0172326 A1, published Sept. 2, 2004)
(“Yeo”), and Charania (US 2011/0066487 A1, published Mar. 17, 2011).
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Claims 2–4, 9, 12–14, and 19 are rejected under 35 U.S.C. § 103 as
unpatentable over Shaw, Yeo, Charania, and Sweeney
(US 2015/0095166 A1, published Apr. 2, 2015).
Claims 8, 10, 18, and 20 are rejected under 35 U.S.C. § 103 as
unpatentable over Shaw, Yeo, Charania, and Baffier et al. (US 8,849,850
B2, issued Sept. 30, 2014) (“Baffier”).
ANALYSIS
Patent-Ineligible Subject Matter
Appellant argues the pending claims as a group (Appeal Br. 11–15).
We select independent claim 11 as representative. The remaining claims
stand or fall with claim 11. See 37 C.F.R. § 41.37(c)(1)(iv).
Under 35 U.S.C. § 101, “[w]hoever 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.” 35 U.S.C.
§ 101. The Supreme Court, however, has long interpreted § 101 to include
an implicit exception: “[l]aws of nature, natural phenomena, and abstract
ideas” are not patentable. Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 216
(2014).
The Supreme Court, in Alice, reiterated the two-step framework
previously set forth in Mayo Collaborative Services v. Prometheus
Laboratories, Inc., 566 U.S. 66 (2012), “for distinguishing patents that claim
laws of nature, natural phenomena, and abstract ideas from those that claim
patent-eligible applications of those concepts.” Alice Corp., 573 U.S. at 217.
The first step in that analysis is to “determine whether the claims at issue are
directed to one of those patent-ineligible concepts.” Id. If the claims are not
directed to a patent-ineligible concept, e.g., an abstract idea, the inquiry
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ends. Otherwise, the inquiry proceeds to the second step where the elements
of the claims are considered “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,
566 U.S. at 79, 78). This is “a 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. at 217–18 (alteration in original).
The U.S. Patent and Trademark Office (the “USPTO”) published
revised guidance on January 7, 2019, for use by USPTO personnel in
evaluating subject matter eligibility under 35 U.S.C. § 101. 2019 REVISED
PATENT SUBJECT MATTER ELIGIBILITY GUIDANCE, 84 Fed. Reg. 50 (Jan. 7,
2019) (the “2019 Revised Guidance”).2 That guidance revised the USPTO’s
examination procedure with respect to the first step of the Mayo/Alice
framework by (1) “[p]roviding groupings of subject matter that [are]
considered an abstract idea”; and (2) clarifying that a claim is not “directed
to” a judicial exception if the judicial exception is integrated into a practical
application of that exception. Id. at 50.
The first step, as set forth in the 2019 Revised Guidance (i.e.,
Step 2A), is, thus, a two-prong test. In Step 2A, Prong One, we look to
whether the claim recites a judicial exception, e.g., one of the following
three groupings of abstract ideas: (1) mathematical concepts; (2) certain
methods of organizing human activity, e.g., fundamental economic

2 The MANUAL OF PATENT EXAMINING PROCEDURE (“MPEP”) incorporates
the revised guidance and subsequent updates at Section 2106 (9th ed.
Rev. 10.2019, rev. June 2020).
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principles or practices, commercial or legal interactions; and (3) mental
processes. 2019 Revised Guidance, 84 Fed. Reg. at 54. If so, we next
determine, in Step 2A, Prong Two, whether the claim as a whole integrates
the recited judicial exception into a practical application, i.e., whether the
additional elements recited in the claim beyond the judicial exception, apply,
rely on, or use the judicial exception in a manner that imposes a meaningful
limit on the judicial exception, such that the claim is more than a drafting
effort designed to monopolize the judicial exception. Id. at 54–55. Only if
the claim (1) recites a judicial exception and (2) does not integrate that
exception into a practical application do we conclude that the claim is
“directed to” the judicial exception, e.g., an abstract idea. Id.
If the claim is determined to be directed to a judicial exception under
revised Step 2A, we next evaluate the additional elements, individually and
in combination, in Step 2B, to determine whether they provide an inventive
concept, i.e., whether the additional elements or combination of elements
amounts to significantly more than the judicial exception itself; only then, is
the claim patent eligible. 2019 Revised Guidance, 84 Fed. Reg. at 56.
Here, in rejecting the pending claims under 35 U.S.C. § 101, the
Examiner determined that the claims recite “displaying an advertisement
based on bidding and rating information” and that the claims fall within the
“[c]ertain methods of organizing human activity” grouping of abstract ideas
(Final Act. 2–3). The Examiner also determined that the recited abstract
idea is not integrated into a practical application (id. at 3), and that the
claims do not include additional elements sufficient to amount to
significantly more than the abstract idea itself (id. at 3–4).
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Step One of the Mayo/Alice Framework (2019 Revised Guidance,
Step 2A)
We are not persuaded here that the Examiner erred in determining that
claim 11 is directed to an abstract idea. The Federal Circuit has explained
that “the ‘directed to’ inquiry applies a stage-one filter to claims, considered
in light of the specification, based on whether ‘their character as a whole is
directed to excluded subject matter.’” Enfish, LLC v. Microsoft Corp.,
822 F.3d 1327, 1335 (Fed. Cir. 2016) (quoting Internet Patents Corp. v.
Active Network, Inc., 790 F.3d 1343, 1346 (Fed. Cir. 2015)). It asks whether
the focus of the claims is on a specific improvement in relevant technology
or on a process that itself qualifies as an “abstract idea” for which computers
are invoked merely as a tool. See id. at 1335–36. Here, it is clear from the
Specification (including the claim language) that claim 11 focuses on an
abstract idea, and not on an improvement to technology and/or a technical
field.
The Specification is titled “Advertising Platform for Ad Placement,”
and describes the present invention as “a digital advertising platform that
maximizes pricing and revenue opportunities throughout various market
spaces” (Spec. 2). More particularly, the Specification describes that the
advertising platform uses bidding and rate sheets to determine advertising
media content placement and, thus, allows advertisers to acquire display
time on various types of display devices through a fixed rate or bidding
process (id. at 3). Also, central to the digital advertising system, is an
“exchange,” adapted to securely access the advertising platform and manage
the flow of information between the advertising platform and the display
devices (id. at 11, Abstr.).
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Consistent with this disclosure, claim 11 recites a method for
optimizing revenue of at least one digital advertisement displayed on one or
more display devices having bidding and rating information comprising:
(1) receiving, by an advertising platform, requests, including bidding and
rating information, to display advertisements in one or more time slots of the
one or more display devices, i.e.,
providing one or more display devices, each display
device having a processor, a memory, an operating system, one
or more applications configured to communicate with the
operating system in generating visual content, a digital signage
system engine configured to create and display advertisements
on the display device, and a profile containing attributes of the
display device, wherein the attributes include one or more time
slots that designate when at least one advertisement is to be
displayed on the at least one display device; [and]
receiving by an advertising platform, for each of the one
or more time slots of the one or more display devices, one or
more requests for displaying at least one advertisement in one or
more time slots of the one or more display devices, each of the
one or more requests including bidding and rating information
for one or more requested time slots of a particular display device
(steps (a) and (b)); (2) automatically selecting, by the advertising platform,
for each time slot of each display device, the request that maximizes revenue
for that particular time slot, i.e.,
for each specific display device of the one or more display
devices, selecting automatically by the advertising platform, for
each particular time slot of the specific display device, a selected
request from one or more requests designating the particular time
slot of the specific display device, such that the selected request
is determined to maximize revenue for the particular time slot of
the specific display device, the advertising platform performing
such selection by using bidding and rating information
associated with the one or more requests designating the
particular time slot of the specific display device, the at least one
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advertisement associated with the selected request being
displayed on the specific display device in the particular time slot
indicated in the selected request
(step (c)); (3) communicating with the advertising platform, by an exchange,
to receive the advertisements associated with the selected requests;
authenticating the advertisements; routing the advertisements to be displayed
on a respective display device in a respective time slot; and providing
acknowledgement to the advertising platform, i.e.,
securely accessing by an exchange information from said
advertising platform and said at least one display device;
governing the flow of data and control between said
advertising platform and said at least one display device by said
exchange;
communicating by the exchange with the advertising
platform to receive one or more selected advertisements
associated with one or more selected requests;
authenticating the one or more selected advertisements;
routing by the exchange each of the selected
advertisements to be displayed on a respective display device in
a respective time slot; [and]
providing acknowledgement to the advertising platform
(steps (d) through (i)); and (4) “displaying by each of the one or more
display devices the selected advertisements” (step (j)). We agree with the
Examiner that these limitations, when given their broadest reasonable
interpretation, recite “displaying an advertisement based on bidding and
rating information,” i.e., a method of organizing human activity,” and,
therefore, an abstract idea (Final Act. 2–3).
Appellant generally describes the features of claim 11 and argues,
“such features cannot be summarily viewed as merely ‘displaying an
advertisement based on bidding and rating information’” (Appeal Br. 12).
But, aside from asserting that the claim “permits advertisements to be
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securely displayed while allowing for maximum revenue to be
automatically generated for each of the time slots on the specific display
device as well as the rest of the display devices as a whole” (id.),
Appellant offers no persuasive argument or reasoning as to why the
Examiner’s determination (i.e., that claim 11 recites an abstract idea) is
unreasonable or unsupported.
We also are not persuaded by Appellant’s argument that claim 11
includes additional elements that integrate the recited abstract idea into a
“practical application,” as that phrase is used in the 2019 Revised Guidance
(Appeal Br. 13–14).
The Revised Guidance references MPEP, Ninth Edition
(rev. Jan 2018) (available at https://www.uspto.gov/web/offices/pac/
mpep/old/mpep_E9R08-2017.htm) § 2106.05(a)–(c) and (e) in
non-exhaustively listing considerations indicative that an additional element
or combination of elements may have integrated a recited judicial exception
into a practical application. 2019 Revised Guidance, 84 Fed. Reg. at 55.
In particular, the Guidance describes that an additional element may have
integrated the judicial exception into a practical application if, inter alia, the
additional element reflects an improvement in the functioning of a computer
or an improvement to other technology or technical field. Id. At the same
time, the Guidance makes clear that merely including instructions to
implement an abstract idea on a computer, or merely using a computer as a
tool to perform an abstract idea; adding insignificant extra-solution activity
to the judicial exception; or only generally linking the use of the judicial
exception to a particular technological environment or field are not sufficient
to integrate the judicial exception into a practical application. Id.
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Appellant argues that “the ‘additional elements’ cited by the Examiner
are not recited at a high level of generality and are not generic computer
components” because “no existing generic computer” performs the
operations recited in steps (c) through (i) of claim 11, i.e., “automatically
selects, for each time slot of a display device, a selected request . . . such
that the selected request is determined to maximize revenue for the particular
time slot . . . based on bidding and rating information” or “governs the flow
of data . . . between an advertising platform and one or more display devices,
communicates with the advertising platform to receive selected
advertisements, authenticates the selected advertisements, routes the selected
advertisements to . . . a respective display device . . . and provides
acknowledgement to the advertising platform” (Appeal Br. 13). Yet, we
find no disclosure in the Specification, nor does Appellant direct us to a
disclosure, of any specialized hardware or inventive computer components
for performing the identified operations.
Taking the claim elements separately, the function performed at each
step of the process is purely conventional. That is, each step does no more
than require a generic computer to perform generic computer functions, e.g.,
receiving, processing, and transmitting information.
Appellant argues that the claimed invention solves “the technological
problems” associated with having to (1) manually select an advertisement
from each advertiser; (2) negotiate a price with the advertiser; (3) manually
authenticate the advertisement; (4) manually place the advertisement on each
display device; and (5) provide acknowledgement that the advertisement is
on the display device (Appeal Br. 13; see also id. at 14). But, we are not
persuaded that these are technical problems as opposed to business problems
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or that merely adding generic computer functionality to replace routine
manual activity in the longstanding business practice of scheduling
advertisements is an improvement in technology or a technical field.
In University of Florida Research Foundation, for example, the
Federal Circuit held that replacing manual entry of portions of flowsheets
with automation, even if that would eliminate transcription errors, was not
sufficient to render abstract ideas patent eligible. Univ. of Fla. Research
Found., Inc. v. Gen. Elec. Co., 916 F.3d 1363, 1367 (Fed. Cir. 2019). The
court, thus, determined that simply automating pen and paper methodologies
to conserve human resources and minimize errors was a “quintessential ‘do
it on a computer’ patent”; was directed to an abstract idea; and did not do
“more than simply instruct the practitioner to implement the abstract idea . . .
on a generic computer.” Id. at 1369; see also OIP Techs., Inc. v.
Amazon.com, Inc., 788 F.3d 1359, 1363 (Fed. Cir. 2015) (“[R]elying on a
computer to perform routine tasks more quickly or more accurately is
insufficient to render a claim patent eligible.”).
Appellant’s further argument that the claimed invention “improves
technology by enhancing security” (Appeal Br. 14) is likewise unavailing.
Appellant asserts that the exchange “improves security by authenticating the
selected advertisements, routing each of the selected advertisements to be
displayed on a respective display device in a respective time slot, and
providing acknowledgement to the advertising platform” (id.). But, we fail
to see how, and Appellant does not adequately explain how, the security of
the computer itself is thereby improved.
It also is significant here that claim 11 merely recites that the
exchange performs the various identified operations. The claim provides no
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technical details regarding how these operations are performed, and there is
no indication here that the claimed “exchange” is other than a generic
computer used in its normal and ordinary capacity to perform generic
computer functions. Similar to the claims at issue in Intellectual Ventures I
LLC v. Capital One Fin. Corp., 850 F.3d 1332 (Fed. Cir. 2017), “the claim
language here provides only a result-oriented solution with insufficient detail
for how a computer accomplishes it. Our law demands more.” Id. at 1342
(citing Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1356 (Fed.
Cir. 2016)).
We conclude, for the reasons outlined above, that claim 11 recites a
method of organizing human activity, i.e., an abstract idea, and that the
claim does not include additional elements or a combination of elements that
integrates the recited abstract idea into a practical application. Accordingly,
we agree with the Examiner that claim 11 is directed to an abstract idea.
Step Two of the Mayo/Alice Framework (2019 Revised Guidance,
Step 2B)
Having determined under step one of the Mayo/Alice framework that
claim 11 is directed to an abstract idea, we next consider under Step 2B of
the 2019 Revised Guidance, the second step of the Mayo/Alice framework,
whether claim 11 includes additional elements or a combination of elements
that provides an “inventive concept,” i.e., whether an additional element or
combination of elements adds specific limitations beyond the judicial
exception that are not “well-understood, routine, conventional activity” in
the field (which is indicative that an inventive concept is present) or simply
appends well-understood, routine, conventional activities previously known
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to the industry to the judicial exception. 2019 Revised Guidance,
84 Fed. Reg. at 56.
Appellant argues that the claimed invention satisfies step 2B because
the features recited in steps (c) through (i) of claim 11 are “not [in] any
shape or form well-understood, routine, or conventional activities” (Appeal
Br. 15). Yet, that argument is not persuasive at least because these steps are
part of the abstract idea itself; they are not additional elements to be
considered in determining whether claim 11 includes additional elements or
a combination of elements sufficient to amount to significantly more than
the judicial exception.
It could not be clearer from Alice, that under step two of the
Mayo/Alice framework, the elements of each claim are considered both
individually and “as an ordered combination” to determine whether the
additional elements, i.e., the elements other than the abstract idea itself,
“transform the nature of the claim” into a patent-eligible application. Alice
Corp., 573 U.S. at 217 (citation omitted); see Mayo, 566 U.S. at 72–73
(requiring that “a process that focuses upon the use of a natural law also
contain other elements or a combination of elements, sometimes referred to
as an ‘inventive concept,’ sufficient to ensure that the patent in practice
amounts to significantly more than a patent upon the natural law itself”
(emphasis added) (citation omitted)). In other words, the inventive concept
under step two of the Mayo/Alice test cannot be the abstract idea itself:
It is clear from Mayo that the “inventive concept” cannot be the
abstract idea itself, and Berkheimer . . . leave[s] untouched the
numerous cases from this court which have held claims ineligible
because the only alleged “inventive concept” is the abstract idea.
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Berkheimer v. HP Inc., 890 F.3d 1369, 1374 (Fed. Cir. 2018) (Moore, J.,
concurring); see also BSG Tech LLC v. BuySeasons, Inc., 899 F.3d 1281,
1290 (Fed. Cir. 2018) (“It has been clear since Alice that a claimed
invention’s use of the ineligible concept to which it is directed cannot supply
the inventive concept that renders the invention ‘significantly more’ than
that ineligible concept.”).
Here, the Examiner determined, and we agree, that the only additional
elements recited in claim 11 beyond the abstract idea are “one or more
display devices”; “an advertising platform”; “a digital signage system
engine”; and “an exchange,” i.e., generic computer components (Final
Act. 3–4). Appellant cannot reasonably maintain that there is insufficient
factual support for the Examiner’s determination that the operation of these
components is well-understood, routine, or conventional, where, as here,
there is nothing in the Specification to indicate that the operations recited in
claim 11 require any specialized hardware or inventive computer
components or that the claimed invention is implemented using other than
generic computer components to perform generic computer functions, e.g.,
receiving, processing, and transmitting information. Indeed, the Federal
Circuit, in accordance with Alice, has “repeatedly recognized the absence of
a genuine dispute as to eligibility” where claims have been defended as
involving an inventive concept based “merely on the idea of using existing
computers or the Internet to carry out conventional processes, with no
alteration of computer functionality.” Berkheimer, 890 F.3d at 1373
(Moore, J., concurring) (internal citations omitted); see also BSG Tech LLC,
899 F.3d at 1291 (“BSG Tech does not argue that other, non-abstract
features of the claimed inventions, alone or in combination, are not well-
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understood, routine and conventional database structures and activities.
Accordingly, the district court did not err in determining that the asserted
claims lack an inventive concept.”).
We are not persuaded, on the present record, that the Examiner erred
in rejecting independent claim 11 under 35 U.S.C. § 101. Therefore, we
sustain the Examiner’s rejection of claim 11, and claims 1–10 and 12–20,
which fall with claim 11.
Obviousness
Independent Claims 1 and 11 and Dependent Claims 5–7 and 15–17
We are persuaded by Appellant’s argument that the Examiner erred in
rejecting independent claims 1 and 11 under 35 U.S.C. § 103 at least
because Shaw, on which the Examiner relies, does not disclose or suggest
“an exchange,” as recited in claim 1, and similarly recited in claim 11, that
“authenticates the one or more selected advertisements, [and] routes each of
the selected advertisements to be displayed on a respective display device in
a respective time slot” (Appeal Br. 16–17).
The Examiner cites column 12, lines 5–50 of Shaw as disclosing the
argued limitation (Final Act. 6–7). We, however, agree with Appellant that
although Shaw discloses that advertisements, once selected, may be subject
to ranking based on various factors, including bids, we find nothing in the
cited portion of Shaw that discloses or suggests authenticating the selected
advertisements, i.e., evaluating the advertisements to determine that the
advertisements are “real, true, or genuine” (Appeal Br. 16 (citing a Merriam-
Webster dictionary definition of “to authenticate”)).
Responding to Appellant’s argument, the Examiner opines in the
Answer, that, under a broadest reasonable interpretation, “the term
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‘authenticate’ should not be limited to Applicant’s dictionary definition”
(Ans. 9). The Examiner, thus, ostensibly maintains that the term can be
reasonably broadly construed to include ranking and filtering
advertisements, as Shaw discloses (id. at 9–10). We disagree.
The law is well-settled that claims are to be given “their broadest
reasonable interpretation consistent with the specification” and that claim
language should be read “in light of the specification as it would be
interpreted by one of ordinary skill in the art.” In re Am. Acad. of Sci. Tech
Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004) (citations omitted). We are not
persuaded here that a person of ordinary skill in the art would interpret the
term “authenticate,” as used in the present context, to include ranking and
filtering selected advertisements, as disclosed in Shaw.
Therefore, we do not sustain the Examiner’s rejection of independent
claims 1 and 11 under 35 U.S.C. § 103. For the same reasons, we also do
not sustain the Examiner’s rejection of dependent claims 5–7 and 15–17.
Cf. In re Fritch, 972 F.2d 1260, 1266 (Fed. Cir. 1992) (“dependent claims
are nonobvious if the independent claims from which they depend are
nonobvious”).
Dependent Claims 2–4, 8–10, 12–14, and 18–20
Each of claims 2–4, 8–10, 12–14, and 18–20 depends, directly or
indirectly, from one of independent claims 1 and 11. The rejections of these
dependent claims do not cure the deficiencies in the Examiner’s rejection of
independent claims 1 and 11. Therefore, we do not sustain the Examiner’s
rejection under 35 U.S.C. § 103 of dependent claims 2–4, 8–10, 12–14, and
18–20 for the same reasons set forth above with respect to the independent
claims.
Appeal 2021-002590
Application 14/788,189

19
CONCLUSION
In summary:
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–20 101 Eligibility 1–20
1, 5–7, 11,
15–17
103 Shaw, Yeo,
Charania
1, 5–7, 11,
15–17
2–4, 9,
12–14, 19
103 Shaw, Yeo,
Charania, Sweeney
2–4, 9,
12–14, 19
8, 10, 18,
20
103 Shaw, Yeo,
Charania, Baffier
8, 10, 18,
20
Overall
Outcome
1–20
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.
§ 1.136(a)(1)(iv).
AFFIRMED