Adobe Inc.Download PDFPatent Trials and Appeals BoardNov 12, 202014548684 - (D) (P.T.A.B. Nov. 12, 2020) Copy Citation 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. 14/548,684 11/20/2014 Ritwik Sinha P4602-US 8640 108982 7590 11/12/2020 SBMC 116 W. Pacific Avenue Suite 200 Spokane, WA 99201 EXAMINER ANDERSON, SCOTT C ART UNIT PAPER NUMBER 3694 NOTIFICATION DATE DELIVERY MODE 11/12/2020 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): docket@sbmc-law.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte RITWIK SINHA, TAPAN BOHRA, SANKET VAIBHAV MEHTA, and ADIT KRISHNAN Appeal 2020-001362 Application 14/548,684 Technology Center 3600 Before JOSEPH L. DIXON, JOHN A. JEFFERY, and JOHNNY A. KUMAR, Administrative Patent Judges. DIXON, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1–3, 7, 8, 10, 11, 13–16, 19, and 20. Claims 4–6, 9, 12, 17, and 18 are canceled. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42(a) (2018). Appellant identifies the real party in interest as Adobe Incorporated. Appeal Br. 3. Appeal 2020-001362 Application 14/548,684 2 CLAIMED SUBJECT MATTER The claims are directed to a system and method for personalized marketing based on sequence mining. Claim 1, reproduced below with emphases added, is illustrative of the claimed subject matter: 1. In a digital marketing environment for management of digital marketing campaigns to provide online marketing offers to consumers, a method to individualize marketing actions taken with respect to different consumers comprising: collecting, using a computing device, marketing data indicative of interactions of the consumers with online marketing offers provided to the consumers; selecting, using the computing device, a sequence of marketing actions for targeted marketing to an individual user by comparing sequence data obtained from the collected marketing data that describes sequencing for the marketing offers provided to the consumers to one or more potential sequences for the individual user, each of the one or more potential sequences including a partial sequence of actions already engaged in with respect to the individual user, the comparison includes an assessment of similarity between sequences within the collected marketing data that satisfied an objective defined for the targeted marketing to the individual user and the one or more potential sequences for the individual user, the assessment of similarity includes calculating, by the computing device, a minimum super sequence based on the partial sequence of actions such that the minimum super sequence includes a minimum number of interactions that include the partial sequence of interactions, the minimum number of interactions being a subset of another sequence of interactions; the assessment of similarity is further based upon matching of characteristics of the individual user to characteristics of consumers associated with the sequences that satisfied the objective defined for the targeted marketing to the individual user such that the Appeal 2020-001362 Application 14/548,684 3 characteristics that are matched include behaviors associated the individual user and the consumers; and performing, using the computing device, one or more marketing actions in accordance with the selected sequence effective to provide targeted marketing offers to the individual user. REJECTION Claims 1–3, 7, 8, 10, 11, 13–16, 19, and 20 stand rejected under 35 U.S.C. § 101 because the claimed invention is directed to a judicial exception (an abstract idea) without significantly more. OPINION 35 U.S.C. § 101 Appellant argues claims 1–3, 7, 8, 10, 11, 13–16, 19, and 20 as a group. Appeal Br. 12. We select claim 1 to represent the group. See 37 C.F.R. § 41.37(c)(1)(iv). Arguments which Appellant could have made but did not make in the Briefs are deemed to be waived. See 37 C.F.R. § 41.37(c)(1)(iv). Appellant has the burden on appeal to the Board to demonstrate error in the Examiner’s position. See In re Kahn, 441 F.3d 977, 985–86 (Fed. Cir. 2006). Patent eligibility under 35 U.S.C. § 101 is a question of law that is reviewable de novo. See Dealertrack, Inc. v. Huber, 674 F.3d 1315, 1333 (Fed. Cir. 2012). a. Legal Principles An invention is patent eligible if it claims a “new and useful process, machine, manufacture, or composition of matter.” 35 U.S.C. § 101. However, the Supreme Court has long interpreted 35 U.S.C. § 101 to include Appeal 2020-001362 Application 14/548,684 4 implicit exceptions: “[l]aws of nature, natural phenomena, and abstract ideas” are not patentable. E.g., Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 216 (2014). In determining whether a claim falls within an excluded category, we are guided by the Supreme Court’s two-step framework, described in Mayo and Alice. Alice, 573 U.S. at 217–18 (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 75–77 (2012)). In accordance with that framework, under Step 2A, we first determine what concept the claim is “directed to.” See Alice, 573 U.S. at 219 (“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.”); see also 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.”). Concepts determined to be abstract ideas and, thus, patent ineligible, include certain methods of organizing human activity, such as fundamental economic practices (Alice, 573 U.S. at 219–20; Bilski, 561 U.S. at 611); mathematical formulas (Parker v. Flook, 437 U.S. 584, 594–95 (1978)); and mental processes (Gottschalk v. Benson, 409 U.S. 63, 67 (1972)). Concepts determined to be patent eligible include physical and chemical processes, such as “molding rubber products” (Diamond v. Diehr, 450 U.S. 175, 191 (1981)); “tanning, dyeing, making water-proof cloth, vulcanizing India rubber, smelting ores” (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S. 252, 267–68 (1854))); and manufacturing flour (Benson, 409 U.S. at 69 (citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))). If, under Step 2A, the claim is “directed to” an abstract idea, then, under Step 2B, “we must examine the elements of the claim to determine Appeal 2020-001362 Application 14/548,684 5 whether it contains an ‘inventive concept’ sufficient to ‘transform’ the claimed abstract idea into a patent-eligible application.” Alice, 573 U.S. at 221 (quotation marks omitted). “A claim that recites an abstract idea must include ‘additional features’ to ensure ‘that the [claim] is more than a drafting effort designed to monopolize the [abstract idea].’” Id. (quoting Mayo, 566 U.S. at 77). “[M]erely requir[ing] generic computer implementation[] fail[s] to transform that abstract idea into a patent-eligible invention.” Id. On January 7, 2019, the U.S. Patent and Trademark Office (“USPTO”) published revised patent subject matter eligibility guidance. See 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (2019) (“Revised Guidance”). Under the Revised Guidance, Step 2A of the Alice two-step framework is divided in two prongs. For Step 2A, Prong 1, we look to whether the claim recites any judicial exceptions falling into certain groupings of abstract ideas (e.g., mathematical concepts, certain methods of organizing human activity such as a fundamental economic practice, or mental processes). For Step 2A, Prong 2, if the claim recites such a judicial exception, we look to whether the claim recites any additional elements that integrate the judicial exception into a practical application (see Manual of Patent Examining Procedure (“MPEP”) § 2106.05(a)–(c), (e)– (h)). Only if a claim recites a judicial exception and does not integrate that exception into a practical application, do we then determine, under Step 2B of the Alice two-step framework, whether the claim adds a specific limitation beyond the judicial exception that is not “well-understood, routine, conventional” in the field (see MPEP § 2106.05(d)) or simply Appeal 2020-001362 Application 14/548,684 6 appends well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception. b. Discussion — Claim 1 i. Examiner’s Findings and Conclusions In the Final Action, the Examiner determines that claim 1 recites “collecting marketing data, selecting marketing actions by making comparisons among the data including determining similarities, and performing marketing actions in order to provide targeted marketing offers to a person.” Final Act. 2. Examiner determines that all of this falls within either of “advertising, marketing or sales activities or behaviors”, which are identified as certain methods of organizing human activity, or concepts which are capable of being performed mentally such as “observation, evaluation, judgment, opinion.” Final Act. 2. The Examiner additionally determines that the additional computer elements, which are recited at a high level of generality, provide conventional computer functions that do not add meaningful limits to practicing the abstract idea. Final Act. 3–4 (see Spec. ¶ 18.) The Examiner determines the computation of a minimal supersequence is trivial and can be done mentally, with ease, for small amounts of data, and the claim does not require more than small amounts. The minimal supersequence of “a” and “b” for example is either “ab” or “ba,” and it took the Examiner about half a second to work that out in his mind. Final Act. 3. The Examiner also determines that information is collected about “online marketing offers” is simply a field of use that attempts to confine the invention to a particular technological environment. Final Act. 4. Appeal 2020-001362 Application 14/548,684 7 The Examiner also determines that the claim elements when considered as an ordered combination, that is, a generic computer performing a series of abstract steps arranged chronologically, does nothing more than when analyzed individually. Final Act. 4. The other independent claims are simply different embodiments but in each case are directed to abstract computers performing the same or a very similar process. Final Act. 4. ii. Appellant’s Arguments and Contentions In the Appeal Brief, Appellant contends that contrary to certain methods of organizing human activity, claim 1 is directed to a method to provide online marketing offers to consumers and is a specific series of steps performed with the use of a computing device to provide individualized marketing actions to consumers. Appeal Br. 16. Appellant also contends that to the extent that the claims may include an exception, the claims integrate the exception into a particular useful application. Appeal Br. 17–18. Appellant contends that the features of claim 1 are more than just a general linking of the use of the judicial exception to a particular technological environment, and these features describe specific, detailed, and concrete steps that are implemented using a computing device to “perform one or more marketing actions with ... the selected sequence . . . to provide targeted marketing offers.” Appeal Br. 17– 18. Appellant further contends that the sequence of marketing actions is selected by comparing sequence data obtained from marketing data, which includes user characteristics (e.g., age, sex, location, affiliations, etc.), and behaviors (e.g., browsing habits, favorites, purchase history, preferences, Appeal 2020-001362 Application 14/548,684 8 account activity, page views, offer views etc.), to one or more potential sequences for a user. Appeal Br. 17–18; see generally Reply Brief 5. (See Appeal Br. 18–19 citing to Spec. ¶¶ 13–14, 24.) Appellant also contends that “[p]ersonalizing a sequence of marketing actions to individuals is an improvement to the technical field of digital marketing, because it overcomes the deficiencies of traditional marketing techniques . . . Thus resulting in wastage of resources utilized for digital marketing.” Appeal Br. 18. Appellant further argues that the claims “The elements or combination of elements in claim 1 are not well-understood, routine, or conventional activity in the field” and “directly address a deficiency that is a characteristic of conventional marketing techniques.” Appeal Br. 18–19; see generally Reply Brief 6. (See Appeal Br. 18–19 citing to application ¶¶ 13–14, 24.) iii. Analysis Appellant addresses the Revised Guidance in the Appeal and Reply Briefs. We address Appellant’s analysis under the Revised Guidance. Appellant does not set forth separate arguments for patentability of claims 1–3, 7, 8, 10, 11, 13–16, 19, and 20 and lists all the claims together. See Appeal Br. 13; Reply Br. 3. Based on Appellant’s arguments and our discretion under 37 C.F.R. § 41.37(c)(1)(iv), we select independent claim 1 as the representative claim for the group and address Appellant’s arguments thereto. See 37 C.F.R. § 41.37(c)(1)(iv). Independent claims 11 and 16 along with dependent claims stand or fall with representative claim 1. See 37 C.F.R. § 41.37(c)(1)(iv). Appeal 2020-001362 Application 14/548,684 9 For Step 2A, Prong 1, of the Revised Guidance, we agree with the Examiner and find that the emphasized portions of claim 1, reproduced above, recite elements that fall within the abstract idea groupings of certain methods of organizing human activity (“advertising, marketing or sales activities or behaviors”, which are identified as certain methods of organizing human activity, or concepts which are capable of being performed mentally such as “observation, evaluation, judgment, opinion”); and mental processes (concepts performed in the human mind). See generally Final Act. 2–3. The Revised Guidance requires us to evaluate whether the claim recites a judicial exception (e.g., an abstract idea). According to the Revised Guidance, to determine whether a claim recites an abstract idea, we must identify limitations that fall within one or more of the designated subject matter groupings of abstract ideas. According to the October 2019 Patent Eligibility Guidance Update produced by the USPTO, “a claim recites a judicial exception when the judicial exception is ‘set forth’ or ‘described’ in the claim.” See October 2019 Patent Eligibility Guidance Update Revised Patent Subject Matter Eligibility Guidance, https://www.uspto.gov/sites/default/files/documents/peg_oct_2019_update.p df (“October Update”). The Revised Guidance lists “[c]ertain methods of organizing human activity” as one such grouping and characterizes certain methods of organizing human activity as including, inter alia, groupings of certain methods of organizing human activity (managing personal behavior or relationships or interactions between people (including social activities, Appeal 2020-001362 Application 14/548,684 10 teaching, and following rules or instructions).” 84 Fed. Reg. at 52. We find that the emphasized elements of claim 1 describe these judicial exceptions.2 Specifically, regarding certain methods of organizing human activity, we agree with the Examiner that claim 1 sets forth the human activity of “collecting marketing data, selecting marketing actions by making comparisons among the data including determining similarities, and performing marketing actions in order to provide targeted marketing offers to a person.” Final Act. 2. We agree with the Examiner that claim 1 falls within “advertising, marketing or sales activities or behaviors,” which are identified as certain methods of organizing human activity. Final Act. 2. Thus, we find that claim 1 recites an abstract idea. Turning to Prong 2 of Step 2A of the Revised Guidance, we recognize claim 1 includes an additional element such as a “computing device.” Furthermore, our review of Appellant’s Specification finds that the term “computing device” is nominal. Appellant’s Specification indicates that the “computing device” (see Spec. ¶ 18; see also Final Act. 3–4) of claim 1 do not recite specific types of additional elements or their specific operations. As a result, this additional element is not enough to distinguish the steps of claim 1 from describing certain methods of organizing human activity. Thus, claim 1 does not integrate the recited abstract idea into a practical application. In addition, we determine that claim 1 also recites insignificant post- solution activity (“performing, using the computing device, one or more 2 We note that similar analysis may be made under the mental processes category for abstract ideas where each of the recited limitations may be performed in the human mind or with paper and pencil. Appeal 2020-001362 Application 14/548,684 11 marketing actions in accordance with the selected sequence effective to provide targeted marketing offers to the individual user.”) See Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1241–42 (Fed. Cir. 2016) (addressing insignificant post-solution activity). We also determine that claim 1 also recites insignificant pre-solution activity (“collecting, using a computing device, marketing data indicative of interactions of the consumers with online marketing offers provided to the consumers”). OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1363–64 (Fed. Cir. 2015) (addressing insignificant pre-solution activity). The recited insignificant extra-solution activity does not help integrate the recited methods of organizing human activity into a practical application of the abstract idea.3 In the Appeal Brief, Appellant does not sufficiently explain what the claimed “marketing actions” or “marketing offers” refers to or how they are an improvement to conventional computing systems, as asserted. In the Reply Brief, Appellant provides a general argument that “the claims describe specific, detailed, and concrete steps that are implemented using a computing device to individualize actions towards various consumers” and [t]he data used to select the sequences, for example, may be based on user characteristics (e.g., age, location, affiliations, etc.), and user behaviors (e.g., browsing habits, favorites, purchase history, preferences, account activity, page views, offer views, etc.), which cannot effectively and realistically be collected and analyzed (on any reasonable scale) without use of a computing device. 3 Alternatively, the indicated extra-solution activity may be deemed to be part of the recited abstract idea as indicated by the Examiner which would not change the outcome of the analysis. Appeal 2020-001362 Application 14/548,684 12 Reply Br. 5. This argument, however, is unpersuasive because Appellant does not identify any improvement in the computer system that is separate from the abstract idea of a method of digital marketing environment for management of digital marketing campaigns to provide online marketing offers to consumers and is not specifically recited in the language of claim 1. Thus, Appellant’s argument fails because the argument is not commensurate with the scope of claim 1. See In re Self, 671 F.2d 1344, 1348 (CCPA 1982) (“[A]ppellant’s arguments fail from the outset because . . . they are not based on limitations appearing in the claims.”); see also In re Hiniker Co., 150 F.3d 1362, 1369 (Fed. Cir. 1998) (“[The] proffered facts . . . are not commensurate with the claim scope and are therefore unpersuasive.”). The broad language of claim 1 merely specifies “marketing data indicative of interactions of the consumers with online marketing offers provided to the consumers” and “one or more potential sequences for the individual user” without further detail. Regarding independent claims 1, 11, and 16, our reviewing court provides further applicable guidance: the “‘mere automation of manual processes using generic computers’ . . . ‘does not constitute a patentable improvement in computer technology.’” Trading Techs. Int’l, Inc. v. IBG LLC, 921 F.3d 1378, 1384 (Fed. Cir. 2019) (quoting Credit Acceptance Corp. v. Westlake Servs., 859 F.3d 1044, 1055 (Fed. Cir. 2017)). As a result, we agree with the Examiner that the combination of additional elements as a whole does not integrate the recited abstract idea into a practical application. Therefore, based on our analysis under the Revised Guidance, we agree with the Examiner and find that claim 1 is directed to an abstract idea. Appeal 2020-001362 Application 14/548,684 13 As a result, we focus our attention on Step 2B of the Alice two-step framework. Step 2B of the Alice two-step framework requires us to determine whether any element, or combination of elements, in the claim is sufficient to ensure that the claim amounts to significantly more than the judicial exception. Alice, 573 U.S. at 221. As discussed above, claim 1 includes an additional element “computing device.” We agree with the Examiner’s findings that the additional element of claim 1, when considered individually and in an ordered combination, correspond to nothing more than generic and well-known components used to implement the abstract ideas. See Final Act. 3–4. Also, the Examiner determines that the Specification in at least paragraph 18 describes that the “computing device may be configured as a computer that is capable of communicating over the network 108, such as a desktop computer, a mobile station, an entertainment appliance, a set-top box communicatively coupled to a display device, a wireless phone, a game console, and so forth.” Final Act. 4. (See also Figure 7.) In other words, we find that the additional elements, as claimed, are well-understood, routine, and conventional and “behave exactly as expected according to their ordinary use.” See In re TLI Commc’ns LLC Patent Litig., 823 F.3d 607, 615 (Fed. Cir. 2016). Thus, implementing the abstract idea with these generic and well-known components “fail[s] to transform that abstract idea into a patent-eligible invention.” Alice, 573 U.S. at 221. Therefore, we agree with the Examiner that claim 1 does not provide significantly more than the abstract idea itself. Therefore, because claim 1 is directed to the abstract ideas of certain methods of organizing human activity and does not provide significantly Appeal 2020-001362 Application 14/548,684 14 more than the abstract idea itself, we agree with the Examiner that claim 1 is ineligible for patenting and affirm the Examiner’s rejection of representative independent claim 1 under 35 U.S.C. § 101. Because Appellant has not set forth separate arguments for patentability of independent claims 11 and 16 and dependent claims 2, 3, 7, 8, 10, 13–15, 19, and 20, we group these claims as falling with representative independent claim 1. CONCLUSION The Examiner’s patent eligibility rejection is sustained. DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1–3, 7, 8, 10, 11, 13– 16, 19, 20 101 Eligibility 1–3, 7, 8, 10, 11, 13– 16, 19, 20 TIME PERIOD FOR RESPONSE 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 Copy with citationCopy as parenthetical citation