Ex parte Berry
| Decision Date | 25 October 2018 |
| Docket Number | 440,Application 14/707,Appeal 2017-003239 |
| Parties | Ex parte MATTHEW G. BERRY, BENJAMIN J. WEINBERGER, SCHUYLER E. ECKSTROM, and ALBERT L.SEGARS[1] Technology Center 3600 |
| Court | Patent Trial and Appeal Board |
Before DENISE M. POTHIER, LARRY J. HUME, and JOYCE CRAIG Administrative Patent Judges.
HUME Administrative Patent Judge.
This is a decision on appeal under 35 U.S.C. § 134(a) of the Final Rejection of claims 1-30, which are all claims pending in the application. We have jurisdiction under 35 U.S.C § 6(b).
We AFFIRM.
STATEMENT OF THE CASE[2]
An Appeal has been decided by the Board in related Application Serial No. 12/624, 987, Appeal No. 2017-002911 in which we affirmed the rejection of all claims on appeal.
Appellants' disclosed embodiments and claimed invention "relate[] generally to targeted advertisements and, more particularly, to methods and systems for delivering targeted advertisements in association with a video program based on metadata associated with the video program." Spec. ¶ 2.
Claim 1, reproduced below, is representative of the subject matter on appeal (emphasis added to contested prior-art limitations):
The Examiner relies upon the following prior art as evidence in rejecting the claims on appeal:
Raskin et al. ("Raskin") U.S. 2008/0172293 A1 July 17, 2008
R1. Claims 1-30 stand rejected under 35 U.S.C. § 101 as being directed to patent-ineligible subject matter. Final Act. 4.
R2. Claims 1-30 stand rejected under 35 U.S.C. § 102(e) as being anticipated by Raskin. Final Act. 7.
Based on Appellants' arguments (App. Br. 6-22) and our discretion under 37 C.F.R. § 41.37(c)(1)(iv), we decide the appeal of patent-ineligible subject matter Rejection R1 of claims 1-30 on the basis of representative claim 1; and we also decide the appeal of anticipation Rejection R2 of claims 1-30 on the basis of representative claim 1.[3]
In reaching this decision, we consider all evidence presented and all arguments actually made by Appellants. To the extent Appellants have not advanced separate, substantive arguments for particular claims, or other issues, such arguments are waived. 37 C.F.R. § 41.37(c)(1)(iv).
Based upon our review of the record, we find a preponderance of the evidence supports particular arguments advanced by Appellants with respect to anticipation Rejection R2 of claim 1 for the specific reasons discussed below.
However we disagree with Appellants' arguments with respect to patent-ineligible Rejection R1 of claim 1 and, unless otherwise noted, we incorporate by reference herein and adopt as our own: (1) the findings and reasons set forth by the Examiner in the action from which this appeal is taken, and (2) the reasons and rebuttals set forth in the Examiner's Answer in response to Appellants' arguments. We highlight and address specific findings and arguments regarding claim 1 for emphasis as follows.
1. $ 101 Rejection R1 of Claims 1-30
Issue 1
Appellants argue (App. Br. 6-14; Reply Br. 1-12) the Examiner's rejection of claim 1 under 35 U.S.C. § 101 as being directed to patent-ineligible subject matter is in error. These contentions present us with the following issue:
Under our governing case law concerning 35 U.S.C. § 101, did the Examiner err in concluding claim 1 is directed to a judicial exception, i.e., an abstract idea, without significantly more?
Section 101 provides that anyone who "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. 35 U.S.C. § 101. The Supreme Court has repeatedly emphasized that patent protection should not extend to claims that monopolize "the basic tools of scientific and technological work." Gottschalk v Benson, 409 U.S. 63, 67 (1972); Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 71 (2012); Alice Corp. Pty. Ltd. v. CLS Bank lnt'l, 134 S.Ct. 2347, 2354 (2014). Accordingly, laws of nature natural phenomena, and abstract ideas are not patent-eligible subject matter. Alice, 134 S.Ct. at 2354.
The Supreme Court's two-part Alice framework guides us in distinguishing between patent claims that impermissibly claim the "building blocks of human ingenuity" and those that "integrate the building blocks into something more." Id. (). First, we "determine whether the claims at issue are directed to [a] patent-ineligible concept[]." Id. at 2355. If so, we "examine the elements of the claim to determine whether it contains an 'inventive concept' sufficient to 'transform' the claimed abstract idea into a patent-eligible application." Id. at 2357 (quoting Mayo, 566 U.S. at 72, 79). While the two steps of the Alice framework are related, the "Supreme Court's formulation makes clear that the first-stage filter is a meaningful one, sometimes ending the § 101 inquiry." Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016). We note the Supreme Court "has not established a definitive rule to determine what constitutes an 'abstract idea'" for the purposes of step one. Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1334 (Fed. Cir. 2016) (citing Alice, 134 S.Ct. at 2357).
In Enfish, our reviewing court held claims directed to a self-referential logical model for a computer database patent-eligible under step one of Alice. Enfish, 822 F.3d at 1330. The disclosed technique enabled faster searching and more effective storage of data than previous methods. Id. at 1333. The court found the claims directed to "a specific improvement to the way computers operate, embodied in the self-referential table" (id. at 1336), and explained that the claims 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" that functions differently than conventional databases. Id. at 1337.
In McRO, the claims were not held to be abstract because they recited a "specific . . . improvement in computer animation" using "unconventional rules that relate[d] sub-sequences of phonemes, timings, and morph weight sets." McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299, 1302-03, 1307-6)8, 1314-15 (Fed. Cir. 2016). In McRO, "the incorporation of the claimed rules, not the use of the computer," improved an existing technological process. Id. at 1314.
Our reviewing court has held claims ineligible as directed to an abstract idea when they merely collect electronic information, display information, or embody mental processes that could be performed by humans. Elec. Power Grp., 830 F.3d at 1353-54 (collecting cases). At the same time, "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 7 l. Abstract ideas may include, but are not limited to, fundamental economic practices, methods of organizing human activities, an idea of itself, and mathematical formulas or relationships. Alice, 134 S.Ct. at 2355- 57. Under this guidance, we must therefore ensure at step one that we articulate what the claims are directed to with enough specificity to ensure the step one inquiry is meaningful. Id. at 2354 ("[W]e tread carefully in construing this exclusionary principle lest it swallow all of patent law.").
Under the "abstract idea" step we must evaluate "the 'focus of the claimed advance over the prior art' to determine if the claim's 'character as a whole' is directed to excluded subject matter." Affinity Labs of Texas, LLC v. DIRECTV, LLC, 838 F.3d 1253, 1257 (Fed. Cir. 2016) (internal citation omitted). If the claims are not directed to a patent-ineligible concept, the inquiry ends. See Visual Memory LLC v. NVIDIA Corp., 867 F.3d 1253, 1262 (Fed. Cir. 2017). If the concept is directed to a patent-ineligible concept, we proceed to the "inventive concept" step. For that second step we must "look with more specificity at what the claim elements add, in order to determine 'whether they identify an "inventive concept" in the application of the ineligible subject matter' to which the claim is directed." Affinity Labs, 838 F.3d at 1258 (quoting Elec. Power Grp., 830 F.3d at 1353).
To continue reading
Request your trial