Ex Parte Abraham et al

Patent Trial and Appeal Board

Nov 30, 2018

13768540 (P.T.A.B. Nov. 30, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/768,540 02/15/2013
30734 7590 12/04/2018
BAKER & HOSTETLER LLP
WASHINGTON SQUARE, SUITE 1100
1050 CONNECTICUT A VE. N.W.
WASHINGTON, DC 20036-5304
FIRST NAMED INVENTOR
Magid Abraham
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.
048270.024740 6946
EXAMINER
LONG, MEREDITH A
ART UNIT PAPER NUMBER
3688
NOTIFICATION DATE DELIVERY MODE
12/04/2018 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):
eofficemonitor@bakerlaw.com
edervis@bakerlaw.com
patents@bakerlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MAGID ABRAHAM, LINDA ABRAHAM,
ANNE HUNTER, YON NUTA, and
GREG HARRISON
Appeal2017-009451
Application 13/768,540
Technology Center 3600
Before CARL W. WHITEHEAD JR., JEFFREY S. SMITH and
JEREMY J. CURCURI, Administrative Patent Judges.
WHITEHEAD JR., Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants are appealing the final rejection of claims 1, 3---6, 19, 20,
and 22-38 under 35 U.S.C. § 134(a). Appeal Brief 5. We have jurisdiction
under 35 U.S.C. § 6(b ).
We affirm.
Appeal2017-009451
Application Number 13/768,540
Introduction
The invention is directed to, "a processor-implemented method for
determining the effectiveness of an online advertisement." Appeal Brief 5
( citing Specification ,r 8).
Illustrative Claim
1. A processor-implemented method of determining an
effectiveness of an online advertisement, the method
compnsmg:
receiving, from one or more ad tags, information
corresponding to a set of un-validated impressions, wherein the
information comprises data indicating a number of times that
the online advertisement was downloaded by a client device;
determining, using a processor, a set of validated
impressions, wherein the determining the set of validated
impressions comprises identifying a subset of impressions
within the set of un-validated impressions based at least in part
on the information received from the one or more ad tags,
wherein each impression of the subset of impressions is
identified as being a valid impression based on the impression
satisfying each of:
fraud criteria;
visibility criteria;
brand safety criteria;
demographic criteria; and
geographic criteria;
reporting the set of validated impressions; and
calculating a performance metric of the online
advertisement based on the set of validated impressions.
2
Appeal2017-009451
Application Number 13/768,540
Rejection on Appeal
Claims 1, 3---6, 19, 20, and 22-38 stand rejected under 35 U.S.C. § 101
because the claimed invention is directed to non-statutory subject matter.
The claimed invention is directed to non-statutory subject matter because the
claims as a whole, considering all claim elements both individually and in
combination, do not amount to significantly more than an abstract idea.
Final Action 3--4.
ANALYSIS
Rather than reiterate the arguments of Appellants and the Examiner,
we refer to the Appeal Brief (filed February 14, 2017), the Reply Brief (filed
June 28, 2017), the Answer (mailed May 2, 2017) and the Final Action
( mailed July 14, 2016) for the respective details.
35 U.S.C. § 101 Rejection
Section 101 defines patentable subject matter: "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. § 101. The Supreme Court, however, has "long held that
this provision contains an important implicit exception" that "[l]aws of
nature, natural phenomena, and abstract ideas are not patentable." Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 70 (2012)
( quotation omitted). To determine patentable subject matter, the Supreme
Court has set forth a two-part test.
3
Appeal2017-009451
Application Number 13/768,540
"First, we determine whether the claims at issue are directed to one of
those patent-ineligible concepts" of "laws of nature, natural phenomena, and
abstract ideas." Alice Corp. Pty. Ltd. v. CLS Bank Int 'l, 134 S. Ct. 2347,
2355 (2014). "The inquiry often is whether the claims are directed to 'a
specific means or method' for improving technology or whether they are
simply directed to an abstract end-result." RecogniCorp, LLC v. Nintendo
Co., 855 F.3d 1322, 1326 (Fed. Cir. 2017) (citation omitted). A court must
be cognizant that "all inventions at some level embody, use, reflect, rest
upon, or apply laws of nature, natural phenomena, or abstract ideas" (Mayo,
566 U.S. at 71 ), and "describing the claims at ... a high level of abstraction
and untethered from the language of the claims all but ensures that the
exceptions to § 101 swallow the rule" (Enfish, LLC v. Microsoft Corp., 822
F.3d 1327, 1337 (Fed. Cir. 2016)). Instead, "the claims are considered in
their entirety to ascertain whether their character as a whole is directed to
excluded subject matter." Internet Patents Corp. v. Active Network, Inc.,
790 F.3d 1343, 1346 (Fed. Cir. 2015).
The Supreme Court has identified as abstract ideas claims employing
mathematical relationships or formulas, which are similar to the instant
claimed invention. Specifically, the Supreme Court stated that the concept
of applying a mathematical formula to hedging risk and the application of
that concept to energy markets was not patentable because of similarities to
Gottschalkv. Benson, 409 U.S. 63 (1972), Parker v. Flook, 437 U.S. 584
(1978), and Diamond v. Diehr, 450 U.S. 175 (1981). Bilski v. Kappas, 561
U.S. 593, 611-12 (2010). Further, the Supreme Court noted that the claims,
like those in Parker, were unpatentable because "[Parker] established that
4
Appeal2017-009451
Application Number 13/768,540
limiting an abstract idea to one field of use or adding token postsolution
components did not make the concept patentable." Bilski, 561 U.S. at 612.
Additionally, the Federal Circuit has identified abstract ideas that do
not describe an inventive concept that is more than an abstract idea, even
when embodied in specific system or structure. Specifically, the Federal
Circuit stated "not every claim that recites concrete, tangible components
escapes the reach of the abstract-idea inquiry," including a finding that
"claims reciting an 'interface,' 'network,' and a 'database' are nevertheless
directed to an abstract idea." In re TL! Commc 'ns LLC Patent Litig., 823
F.3d 607, 611 (Fed. Cir. 2016) (citing Mortg. Grader, Inc. v. First Choice
Loan Serv. Inc., 811 F.3d 1314, 1324--25 (Fed. Cir. 2016)). The Federal
Circuit found the "eleven steps for displaying an advertisement in exchange
for access to copyrighted media" was directed to an abstract idea, despite the
claim at issue reciting "certain additional limitations ... [that] add a degree
of particularity." Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 714--15
(Fed. Cir. 2014). Further, the Federal Circuit noted "the concept embodied
by the majority of the limitations describes only the abstract idea of showing
an advertisement before delivering free content," and the addition of novel
or non-routine components did not "necessarily tum[] an abstraction into
something concrete." Id. at 715.
In contrast, the Federal Circuit has found claims that "are not simply
directed to any form of storing tabular data, but instead are specifically
directed to a self-referential table for a computer database" are "directed to
an improvement of an existing technology ... achiev[ing] other benefits
over conventional databases, such as increased flexibility, faster search
times, and smaller memory requirements." Enfish, 822 F.3d at 1337.
5
Appeal2017-009451
Application Number 13/768,540
However, the heart of the claimed invention must be focused on the
underlying technology itself and how the underlying technology is altered
"in a way that leads to an improvement in the technology." Intellectual
Ventures I LLC v. Erie Indem. Co., 850 F.3d 1315, 1328 (Fed. Cir. 2017)
(citing Enfzsh, 822 F.3d 1327); see also TL! Commc 'ns, 823 F.3d at 612.
If the claims are not directed to a patent-ineligible concept, the inquiry
ends. Otherwise, the inquiry proceeds to the second step, where we
"consider the elements of each claim both individually and 'as an ordered
combination' to determine whether the additional elements 'transform the
nature of the claim' into a patent-eligible application." Alice, 134 S. Ct. at
2355 (quoting Mayo, 566 U.S. at 79, 78). The Supreme Court has
"described step two of this analysis as 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. (brackets and quotation omitted). For
computer-related technology, the Federal Circuit has held that a claim may
pass the second step if "the claimed solution is necessarily rooted in
computer technology in order to overcome a problem specifically arising in
the realm of computer [technology]," e.g., "a challenge particular to the
Internet." DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1257
(Fed. Cir. 2014).
In Bilski, the Supreme Court rejected the machine-or-transformation
test as the exclusive test for determining patentability, but nonetheless held
the claims were ineligible because the claims were preemptory of risk
hedging in all fields. Bilski, 561 U.S. at 612-13 (citing Parker, 437 U.S.
584; Gottschalk, 409 U.S. 63). The Federal Circuit has also identified when
6
Appeal2017-009451
Application Number 13/768,540
abstract ideas do not amount to significantly more than the judicial
exception. The Federal Circuit held the abstract idea of classifying and
storing digital images in an organized manner was not significantly more
than an abstract idea because "the recited physical components behave
exactly as expected according to their ordinary use" and the claimed
invention "fails to provide the requisite details necessary to carry out th[ e]
idea." TL! Commc 'ns, 823 F.3d at 615. Moreover, the Federal Circuit held
the idea of "receiving copyrighted media, selecting an ad, offering the media
in exchange for watching the selected ad, displaying the ad, allowing the
consumer access to the media, and receiving payment from the sponsor of
the ad" was not significantly more than the abstract idea because "the claims
simply instruct the practitioner to implement the abstract idea with routine,
conventional activity." Ultramercial, Inc., 772 F.3d at 715. Additionally,
the Federal Circuit noted "[ n Jone of these eleven individual steps, viewed
'both individually and "as an ordered combination,"' transform the nature of
the claim into patent-eligible subject matter." Id. ( citations omitted).
In contrast, the Federal Circuit held claims directed to methods of
organizing human activity may be significantly more "when the claim
limitations were considered individually and as an ordered combination,
they recited an invention that is not merely the 'routine or conventional use'
of technology." Amdocs (Israel) Ltd. v. Openet Telecom, Inc., 841 F.3d
1288, 1301---02 (Fed. Cir. 2016) (citing DDR Holdings, 773 F.3d at 1259;
Bascom Global Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341
(Fed. Cir. 2016)). Additionally, the Federal Circuit held the ordered
combination of the claim limitations recited an inventive concept because
"the distributed, remote enhancement that produced an unconventional
7
Appeal2017-009451
Application Number 13/768,540
result," which represented "a technical improvement over prior art
technologies and served to improve the performance of the system itself."
Amdocs, 841 F.3d at 1302 (emphasis added); see also Bascom, 827 F.3d at
1352 ("an inventive concept can be found in the ordered combination of
claim limitations that transform the abstract idea of filtering content into a
particular, practical application").
Step One: Whether the Claims Are Directed to a Patent-Ineligible
Concept (Abstract Idea)
Appellants argue:
Claims 1, 3-6, 19, 20, and 22-38 are directed to an
improvement in computer capabilities. Specifically, the claimed
methods and systems address computer-centric problems related
to accurately evaluating online advertisement impressions.
Computers are not merely invoked as a tool because the
processes described in the claims can only be performed using a
computer and improve previous "prior art" processes that also
could only be performed using a computer.
Appeal Brief 9.
Appellants disclose, "[t]he client 205 may be any computing system
used by a user 207, such a personal computer, a laptop computer, a tablet
computer, a smart phone, or the like. The publisher server 210 may be any
computing system that supplies content upon request from a client 205."
Specification ,r 20. Appellants argue: "[T]he types of problems associated
with accurately measuring online advertisement impressions, as well as the
data that is available to assess online advertisement impressions, are unique
to the software and networking environments associated with online
advertisements." Appeal Brief 14. Appellants further argue: "[T]he
problems are software problems, and general-purpose computer components
8
Appeal2017-009451
Application Number 13/768,540
are fundamental to the solution, not added after the fact. According to the
2016 Guidelines, under Enfish, this makes the claims non-abstract, and thus
patent-eligible." Appeal Brief 14. Despite characterizing the claimed
invention as using computer technology to overcome a problem specific to
the operation of a computer or a computer network per se, Appellants do not
present sufficient persuasive evidence or argument that the claims are
directed to an improvement specific to a computer network or the Internet
itself (e.g., improving the network's operation or configuration, or retaining
website visitors). Compare, e.g., Elec. Power, 830 F.3d at 1354, with DDR
Holdings, 773 F.3d at 1257; Enfzsh, 822 F.3d at 1338 (holding that claims
directed to a self-referential table for a computer database were patent
eligible because the claims were directed to an improvement in the
functioning of a computer).
Appellants contend:
In responding to Appellant[s'] arguments that there are steps that
cannot be performed using a human analog, the Office Action
stated that the "Examiner recognizes that, of course, a human
cannot act in the exact manner of a computer. However, the
computer is performing functions that, as analyzed in step 2B of
the Alice analysis, are routine, well-understood, and
conventional." Office Action, page 2. This is an error in the
Examiner's analysis, however, because determining whether the
claims recite an idea of itself is part of step 2A of the Alice
analysis. Determining whether functions are routine, well-
understood, and conventional, which can be part of step 2B of
the Alice analysis, is not relevant to determining whether the
claims are directed to an abstract idea in step 2A.
Appeal Brief 16.
We note the Examiner finds and determines under step 2B of the
Alice analysis that, "[a] processor determining validated impressions based
9
Appeal2017-009451
Application Number 13/768,540
on the information received (determining if data meets criteria) is
automating mental tasks, a function determined by the courts to be a well-
understood, routine, and conventional function of a computer." Final Action
4. Accordingly, we do not find Appellants' arguments that the Examiner's
determination is erroneous.
Appellants disclose: "By providing improved techniques for verifying
or validating impressions and calculating metrics associated with online
advertisements, the present disclosure allows for more accurate and/ or useful
data reporting and understanding of online behavior, and better business
decisions in the area of online advertising." Specification ,r 19.
Accordingly, claim 1 is directed to method of determining the
effectiveness of an online advertisement. Consequently, claim 1 is
analogous to claims our reviewing court has deemed abstract in Intellectual
Ventures I LLC v. Capital One Bank (USA), 792 F.3d 1363, 1369--70 (Fed.
Cir. 2015) ( customizing and tailoring web page content based on navigation
history and known user information) and Affinity Labs of Texas, LLC v.
Amazon.com Inc., 838 F.3d 1266, 1271 (Fed. Cir. 2016) (customizing a user
interface to have targeted advertising based on user information). At least
the following decisions from our reviewing court have found many similar
types of fundamental commercial practices patent ineligible: Am. Needle,
Inc. v. Zazzle Inc., 670 Fed. App'x 717 (Mem) (Fed. Cir. 2016) (affirming
the district court's holding that showing merchandise to potential customers
is patent ineligible.); Cyberfone Sys., LLC v. CNN Interactive Grp., 558 Fed.
App'x 988 (Fed. Cir. 2014) (affirming the district court's holding that using
categories to organize, store, and transmit information is well-established
and the idea of collecting information and then separating and transmitting
10
Appeal2017-009451
Application Number 13/768,540
that information according to its classification is patent ineligible.); Content
Extraction & Transmission LLC v. Wells Fargo Bank, Nat. Ass 'n, 776 F.3d
1343 (Fed. Cir. 2014) (cert. denied, 136 S. Ct. 119 (2015) (data collection,
recognition, and storage is undisputedly well-known and collecting data,
recognizing certain data within the collected data set, and storing that
recognized data in a memory is patent ineligible.); Concaten, Inc. AmeriTrak
Fleet Solutions, LLC, 669 Fed. App'x 571 (Mem) (Fed. Cir. 2016) (cert.
denied), 137 S. Ct. 1604 (Mem) (2017) (receiving, processing, and
transmitting data is patent ineligible.); Elec. Power Grp., LLC v. Alstom S.A.,
830 F.3d 1350 (Fed. Cir. 2016) (holding that collecting information,
analyzing it, and displaying certain results of the collection and analysis is
patent ineligible.). Here, the claim involves nothing more than receiving,
determining, and identifying/analyzing data or impressions, and reporting,
without any particular inventive technology- an abstract idea. See Elec.
Power, 830 F.3d at 1354.
Appellants contend the "methods and systems provide advances over
the prior art in measuring online advertisement impressions." Appeal Br.
12. As the Federal Circuit has explained, a "'claim for a new abstract idea is
still an abstract idea."' SAP Am., Inc. v. Investpic, LLC, 890 F.3d 1016,
1018 (Fed. Cir. 2018) (quoting Synopsis, Inc. v. Mentor Graphics Corp., 839
F.3d 1138, 1151 (Fed. Cir. 2016)). Even assuming the technique claimed
was "'innovative, or even brilliant,"' that would not be enough for the
claimed abstract idea to be patent eligible. See SAP, 90 F .3d at 1018.
We agree with the Examiner's finding that at step one of the Alice
analysis, the claims are directed to one or more abstract ideas, we tum to the
second step of the Alice analysis, in which we must determine whether the
11
Appeal2017-009451
Application Number 13/768,540
additional elements of the claims transform them into patent-eligible subject
matter.
Step Two: Whether Additional Elements Transform the Idea into
Patent-Eligible Subject Matter
Appellants contend:
As in DDR Holdings, the claims of the current application also
are "necessarily rooted in computer technology in order to
overcome a problem specifically arising in the realm of computer
networks." For example, claim 1 recites "receiving . . .
information [that] comprises data indicating a number of times
that [an] online advertisement was downloaded by a client
device" and "calculating a performance metric of the online
advertisement." Like the claims at issue in DDR Holdings, the
present claim 1 is necessarily rooted in computer network
technology because online advertising, and its associated
problems with determining whether, how, and by whom an
online advertisement is viewed, specifically arise in the realm of
computer networks.
Appeal Brief 1 7.
Appellants further contend:
[T]he claims of the current application also recite a method that
improves the functioning of the computer itself. For example,
the claims recite "receiving, from one or more ad tags,
information corresponding to a set of un-validated impressions."
The novel ad tags, and the novel information received from them,
improve the ability of the computer to collect and evaluate
impression information associated with online advertisements.
Appeal Brief 19.
As we stated above, we find Appellants' claims are distinguished
from those claims that our reviewing court has found to be patent eligible by
virtue of reciting technological improvements to a computer system. See,
e.g., DDR Holdings, 773 F.3d at 1249, 1257 (holding that claims reciting
12
Appeal2017-009451
Application Number 13/768,540
computer processor for serving "composite web page" were patent eligible
because "the claimed solution is necessarily rooted in computer technology
in order to overcome a problem specifically arising in the realm of computer
networks"); Enfzsh, 822 F.3d at 1338 (holding that claims directed to a self-
referential table for a computer database were patent eligible because the
claims were directed to an improvement in the functioning of a computer);
Visual Memory LLC v. NVIDIA Corp., 867 F.3d 1253, 1259 (Fed. Cir. 2017)
(holding that claims directed to "an improved computer memory system"
having many benefits were patent eligible).
We agree with the Examiner's determination and, therefore, we do not
find that the claims recite significantly more to transform the abstract idea
into a patent-eligible application. We sustain the Examiner's 35 U.S.C.
§ 101 rejection of claims 1, 3---6, 19, 20, and 22-38.
DECISION
The Examiner's 35 U.S.C. § 101 rejection of claims 1, 3---6, 19, 20,
and 22-38 is affirmed.
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 ). See 37 C.F.R.
§ 1.136(a)(l )(v).
AFFIRMED
13