ADOBE INC.Download PDFPatent Trials and Appeals BoardJan 13, 20212020004972 (P.T.A.B. Jan. 13, 2021) 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. 14/812,805 07/29/2015 SACHIN SONI P5413-US/231499 3752 121363 7590 01/13/2021 Shook, Hardy & Bacon L.L.P. (Adobe Inc.) Intellectual Property Department 2555 Grand Blvd Kansas City, MO 64108 EXAMINER ANDERSON, SCOTT C ART UNIT PAPER NUMBER 3694 NOTIFICATION DATE DELIVERY MODE 01/13/2021 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): seaton@shb.com shbdocketing@shb.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte SACHIN SONI, SURYADEEP KUMAR AGRAWAL, WALTER W. CHANG, ANMOL DHAWAN, and ASHISH DUGGAL Appeal 2020-004972 Application 14/812,805 Technology Center 3600 ____________ Before DONALD E. ADAMS, RICHARD M. LEBOVITZ, and DEBORAH KATZ, Administrative Patent Judges. Opinion for the Board filed by Administrative Patent Judge Administrative Patent Judge LEBOVITZ. Opinion Dissenting filed by KATZ. LEBOVITZ, Administrative Patent Judge. DECISION ON APPEAL The Examiner rejected claims 1–20 under 35 U.S.C. § 101 as being directed to patent eligible subject matter. Pursuant to 35 U.S.C. § 134(a), Appeal 2020-004972 Application 14/812,805 2 Appellant1 appeals from the Examiner’s decision to reject the claims. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. STATEMENT OF THE CASE The Examiner rejected claims 1–20 in the Final Office Action under 35 U.S.C. § 101 as directed to an abstract idea “without significantly more.” Final Act. 2. There are three independent claims on appeal, claims 1, 10, and 17. Claim 1 is representative and reproduced below, with annotations added to number the steps of the claim. 1. A method for facilitating providing offers utilizing population densities, the method comprising: [1] determining location data based on locations of a plurality of user devices relative to one or more beacons positioned in a retail environment; [2] determining, in real time, a population density for a geographical space in the retail environment by analyzing the location data; [3] determining values that indicate priorities of users located in the geographical space based on a purchase probability of the users for items associated with the geographical space; [4] using the population density and the values associated with the geographical space to determine a personalized electronic offer for a user, using an offer analyzer component, the personalized electronic offer being associated with an item present in a second geographical space in the retail environment to entice the user to move from the geographical space to the second geographical space; and 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as Adobe Inc. Appeal Br. 1. Appeal 2020-004972 Application 14/812,805 3 [5] providing, using an offer generator component, the personalized electronic offer for viewing by the user via a user device. Appeal Br. 16 (Claims Appendix). PRINCIPLES OF LAW Under 35 U.S.C. § 101, an invention is patent-eligible if it claims a “new and useful process, machine, manufacture, or composition of matter.” However, not every discovery is eligible for patent protection. Diamond v. Diehr, 450 U.S. 175, 185 (1981). “Excluded from such patent protection are laws of nature, natural phenomena, and abstract ideas.” Id. The Supreme Court articulated a two-step analysis to determine whether a claim falls within an excluded category of invention. Alice Corp. v. CLS Bank Int’l, 573 U.S. 208 (2014); Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 75–77 (2012). In the first step, it is determined “whether the claims at issue are directed to one of those patent-ineligible concepts.” Alice, 573 U.S. at 217. If it is determined that the claims are directed to an ineligible concept, then the second step of the two-part analysis is applied in which it is asked “[w]hat else is there in the claims before us?” Id. (alteration in original). The Court explained that this step involves 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.” Alice, 573 U.S. at 217–18 (alteration in original) (citing from Mayo, 566 U.S. at 75–77). Alice, relying on the analysis in Mayo of a claim directed to a law of nature, stated that in the second part of the analysis, “the elements of each Appeal 2020-004972 Application 14/812,805 4 claim both individually and ‘as an ordered combination’” must be considered “to determine whether the additional elements ‘transform the nature of the claim’ into a patent-eligible application.” Alice, 573 U.S. at 217. The PTO published revised guidance on the application of 35 U.S.C. § 101, USPTO’s January 7, 2019 Memorandum, 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (“Eligibility Guidance”). This guidance provides additional direction on how to implement the two-part analysis of Mayo and Alice. Step 2A, Prong One, of the Eligibility Guidance, looks at the specific limitations in the claim to determine whether the claim recites a judicial exception to patent eligibility. In Step 2A, Prong Two, the claims are examined to identify whether there are additional elements in the claims that integrate the exception in a practical application, namely, is there a “meaningful limit on the judicial exception, such that the claim is more than a drafting effort designed to monopolize the judicial exception.” 84 Fed. Reg. 54 (Prong Two). If the claim recites a judicial exception that is not integrated into a practical application, then as in the Mayo/Alice framework, Step 2B of the Eligibility Guidance instructs us to determine whether there is a claimed “inventive concept” to ensure that the claims define an invention that is significantly more than the ineligible concept itself. 84 Fed. Reg. 56. With these guiding principles in mind, we proceed to determine whether the claimed subject matter in this appeal is eligible for patent protection under 35 U.S.C. § 101. Appeal 2020-004972 Application 14/812,805 5 DISCUSSION Claim 1 is directed to a method for facilitating providing offers utilizing population densities. A method is also a “process,” one of the statutory categories of patent-eligible subject matter under 35 U.S.C. § 101. Because the claim falls into one of the statutory categories of patent-eligible subject matter, following the first step of the Mayo/Alice analysis, we proceed to Step 2A, Prong One, of the Eligibility Guidance. Step 2A, Prong One In Step 2A, Prong One, of the Eligibility Guidance, the specific limitations in the claim are examined to determine whether the claim recites a judicial exception to patent eligibility, namely whether the claim recites an abstract idea, law of nature, or natural phenomenon. The Examiner found that claim 1 recites steps comprising providing an electronic offer to a person in a retail environment which the Examiner determined is “advertising, sales or marketing activities or behaviors,” one of the enumerated groupings of abstract ideas in the Eligibility Guidance. Final Act. 2. See Eligibility Guidance, 84 Fed. Reg. 52 (“Certain methods of organizing human behavior”, including “advertising, marketing or sales activities or behaviors”). The Examiner also found that the steps of the claim could be performed in the human mind and therefore are “Mental processes,” the third grouping of abstract ideas listed in the Eligibility Guidance. Final Act. 2. Appellant argues that claims are not directed to the abstract idea of “advertising, marketing or sales activities or behaviors” because they perform “technical operations.” Appeal Br. 9. The “technical operations” Appeal 2020-004972 Application 14/812,805 6 described by Appellant are the specific “determining” steps recited in the claim. This argument does not persuade us that the Examiner erred in making this determination. The claim preamble recites that it is a “method for facilitating providing offers.” Examples of “offers” described in the Specification are “coupons, discounts, or sales.” Spec. ¶ 1. In step [1] of the claim, “location data based on locations of a plurality of user devices relative to one or more beacons positioned in a retail environment” is determined. The user device is therefore in a retail environment, such as a store. The population density is determined in the retail environment in step [2], and in step [4], “the population density and the values associated with the geographical space” are used “to determine a personalized electronic offer for a user.” Therefore, step [4] determines, for example, whether to offer a coupon or discount to customer in a store. The “offer” is provided to the user in the last step of the claim. These steps constitute sales activity, and a method of organizing human activity, because a purpose of the offer is to make a sale to a customer. While the steps may be “technical operations,” how the steps are accomplished technically does not change the fact they recite sales activities. Appellant also argues that “determining location data based on locations of user devices relative to beacons is not a ‘concept performed in the human mind’ as asserted by the examiner,” but rather uses a computing device and beacon to make this determination. Appeal Br. 10. This argument does not persuade us that the Examiner erred in this determination. Appellant has misconstrued how the abstract idea of a mental process is applied when the steps of the claim are performed on a computer Appeal 2020-004972 Application 14/812,805 7 and using other technologies. Specifically, the issue is whether the claimed process that is accomplished using a technology is automating a process that could also be performed in the human mind. That is, could a human mind perform the steps of the claim without using the technology recited in the claim? “Courts have examined claims that required the use of a computer and still found that the underlying, patent-ineligible invention could be performed via pen and paper or in a person’s mind.” Versata Development Group, Inc. v. SAP America, Inc., 793 F.3d 1306, 1335 (Fed. Cir. 2015). Therefore, while claim 1 may recite steps which are accomplished using a beacon to determine population density, where the beacon technology is Bluetooth Low Energy (Spec. ¶¶ 26, 27), the technological-implementation does not confer patent-eligibility because the steps could still be performed by a human (See Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d 1307, 1318 (Fed Cir. 2016) (“Furthermore, with the exception of generic computer-implemented steps, there is nothing in the claims themselves that foreclose them from being performed by a human, mentally or with pen and paper.”). Specifically, a human could determine “population density” by visually counting the customers present in the geographical space as in step [2] of claim 1. A human could also ask the customers whether they intend to make a purchase that day, or ask to see if they have a rewards card indicating they have shopped in the store before, and therefore establish “purchase probability of the users” of step [3] of the claim. When the space is determined to have reached a specific population density, a human could make an offer to customers associated with items in another part of the retail environment, such as offering a physical coupon to a user, as in steps [4] and Appeal 2020-004972 Application 14/812,805 8 [5] of the claim. Accordingly, we are not persuaded the Examiner erred in determining that claim 1 recites mental processes. Because we find that the Examiner correctly found that claim 1 recites an abstract idea, we proceed to Step 2A, Prong Two, of the analysis. Step 2A, Prong Two Prong Two of Step 2A under the 2019 Eligibility Guidance asks whether there are additional elements that integrate the exception into a practical application. We must look at the claim elements individually and “as an ordered combination” to determine whether the additional elements integrate the recited abstract idea into a practical application. “A claim that integrates a judicial exception into a practical application will 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.” Eligibility Guidance, 84 Fed. Reg. 54. Integration into a practical application is evaluated by identifying whether there are additional elements individually, and in combination, which go beyond the judicial exception. Id. at 54–55. Appellant states that the claim uses specific technology to determine “location data based on locations of a plurality of user devices” (step [1]) and then analyze this data to determine population density (step [2]) and provide personalized offers to a user (steps [3] and [4]). Appeal Br. 11. Appellant argues that the additional element, the technology used in step [2] of the claim to determine the “plurality of user devices,” “applies and/or uses the purported judicial exception in a meaningful way beyond generally linking the use of the purported judicial exception to a particular Appeal 2020-004972 Application 14/812,805 9 technological environment, such that the claims as a whole are designed to monopolize the purported exception.” Id. Appellant argues that the claim, like Diehr, qualifies as a practical application, explaining that the determination of population density and purchase probability recited in steps [2] and [3] of the claim are like the rules in Diehr about when rubber is cured, when then entice users to another part of the store by providing an offer (steps [4] and [5]), similar to initiating the control signal to open the mold as in Diehr. Appeal Br. 12–13. Appellant’s argument does not persuade us that the Examiner erred in the analysis of the claim under Step 2A, Prong Two. The beacon in step [1] of the claim is used to determine the locations of a “plurality of user devices” in the retail environment and then use the location information to determine population density as in step [2] of the claim. The beacon is merely automating a step which could be accomplished mentally by a human observing the location of users in a store and determining the number of users in a specific location. A judicial exception is not integrated into a practical application when a computer is used as a tool to perform the abstract idea. Eligibility Guidance, 84 Fed. Reg. 54. Here, the beacon is used as a tool to automate the mental process and abstract idea of determining user location and thus is not the type of technological improvement required by Step 2A, Prong Two of the eligibility analysis. Diehr is not dispositive in this case. In Diehr, the question was whether the use of a well-known mathematical equation in a process of curing synthetic rubber made the claims ineligible for a patent under 35 U.S.C. § 101. Diehr, 450 U.S. at 192–93. The court determined that it did not because the equation was used in a physical process of “installing rubber Appeal 2020-004972 Application 14/812,805 10 in a press, closing the mold, constantly determining the temperature of the mold, constantly recalculating the appropriate cure time through the use of the formula and a digital computer, and automatically opening the press at the proper time” to “lessen[ ] the probability of ‘overcuring’ or ‘undercuring’” and therefore there was no pre-emption of the equation but rather a practical use of it. Diehr, 450 U.S. at 187. Here, the issue is very different because the additional element in the claim is being used to automate a process that could be accomplished mentally. Step 2B Because we determined that the judicial exception is not integrated into a practical application, we proceed to Step 2B of the Eligibility Guidelines, which asks whether there is an inventive concept. In making this Step 2B determination, we must consider whether there are specific limitations or elements recited in the claim “that are not well-understood, routine, conventional activity in the field, which is indicative that an inventive concept may be present” or whether the claim “simply appends well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception, indicative that an inventive concept may not be present.” Eligibility Guidance, 84 Fed. Reg. 56 (footnote omitted). We must also consider whether the combination of steps perform “in an unconventional way and therefore include an ‘inventive step,’ rendering the claim eligible at Step 2B.” Id. In this part of the analysis, 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- Appeal 2020-004972 Application 14/812,805 11 eligible application.” Alice, 573 U.S. at 217. Appellant argues that the Examiner did not establish the combination of steps in the claim were well-understood, routine, and conventional at the time the application was filed. Appeal Br. 14. Specifically, Appellant states that the Examiner did not provide evidence that the steps of determining a population density using location based on a “plurality of user devices relative to one or more beacons positioned in a retail environment” in a geographical space (steps [1] and [2]]) and using this information to determine an offer to entice users to move to a second geographical space (steps [4] and [5]) were “known in the field.” Id.; see also id. at 13. The Examiner responded that tracking the location of a mobile device was known in the art, and provided evidence to establish this fact, specifically citing Sharony.2 Ans. 7. Sharony discloses tracking mobile devices using the Received Signal Strength Indicator (RSSI) method (at ¶ 6), but the Examiner did not establish that Sharony, in determining the location of a plurality of devices, uses the location data to “determining, in real time, a population density for a geographical space in the retail environment by analyzing the location data” and then uses this information “to entice[s] the user to move from the geographical space to the second geographical space” as recited in steps [2] and [4] of the claim. The dissenting opinion states that “it was known in the prior art to use beacons in a process of determining population density from the location data produced by the beacons,” but as explained above, Sharony does not use the beacon to determine population density and does not use the determined density to entice customers to move to a different part of the 2 US 2005/0153713 A1, published July 14, 2005. Appeal 2020-004972 Application 14/812,805 12 store. Under Berkheimer v. HP Inc., 881 F.3d 1360 (Fed. Cir. 2018), as discussed in a USPTO memorandum, an additional element, or combination of elements, “is not well-understood, routine or conventional unless the examiner finds, and expressly supports a rejection in writing” with several specifically mentioned sources. Memorandum (Apr. 19, 2018), “Changes in Examination Procedure Pertaining to Subject Matter Eligibility, Recent Subject Matter Eligibility Decision (Berkheimer v. HP, Inc.),” from Robert W. Bahr, Deputy Commissioner for Patent Examination Policy, p. 3–4 (“Berkheimer Memorandum”). The Examiner did not meet the burden under Berkheimer of demonstrating that it was conventional at the time the application was filed to accomplish the determination of population density of “a plurality of users” using the additional element of a beacon. Finding an inventive step in the use of the beacon to determine the population density of a plurality of users and to entice a user to a second geographical space is consistent with Thales Visionix, Inc. v. U.S., 850 F.3d 1343 (Fed. Cir. 2017). In Thales, the eligibility of claims “for tracking the motion of an object relative to a moving reference frame” which comprised inertial sensors was addressed. Thales, 850 F.3d at 1345. The court found that the claims were eligible under § 101 because they “are directed to systems and methods that use inertial sensors in a non-conventional manner to reduce errors in measuring the relative position and orientation of a moving object on a moving reference frame.” Id. at 1348. Here, Appellant asserts that the beacon is used in a non-conventional manner to measure population density of a plurality of users. The Examiner did not meet the burden under Berkheimer of establishing that such an assertion is incorrect. Appeal 2020-004972 Application 14/812,805 13 Therefore, we are compelled to conclude that the Examiner did not meet the burden under Berkheimer of demonstrating that it was well-understood, routine, or conventional at the time the application was filed to accomplish the determination of population density of “a plurality of users” using the additional element of a beacon. For the foregoing reasons, the § 101 rejection of claim 1 is reversed. Independent claims 10 and 17, and dependent claims 2–9, 11–16, and 18–20 incorporate substantially the same limitations and are reversed, as well. CONCLUSION In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1–20 101 Subject matter eligibility 1–20 REVERSED Appeal 2020-004972 Application 14/812,805 14 KATZ, Administrative Patent Judge, dissenting. I agree with my colleagues that the method of Appellant’s claim 1 recites an abstract idea, specifically a mental process, which is not integrated into a practical application, for the reasons stated in the majority opinion. Nevertheless, I respectfully disagree that the Examiner erred in finding the method of Appellant’s claim 1 to be drawn to ineligible subject matter. Specifically, I disagree that the Examiner erred in finding the claimed methods include specific limitations or elements “that are not well- understood, routine, conventional activity in the field” indicating that “an inventive concept may be present,” rather than “simply append[ing] well- understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception, indicative that an inventive concept may not be present.” Eligibility Guidance, 84 Fed. Reg. 56. Accordingly, I disagree that the Examiner erred in rejecting Appellant’s claims under 35 U.S.C. § 101. My colleagues determined that the Examiner failed to meet the burden of demonstrating it was conventional at the time the application was filed to accomplish the determination of population density of “a plurality of users” using the additional element of a beacon. But the Examiner found that a person of ordinary skill in the art would have been able to determine the location of multiple humans in the vicinity of a beacon by merely observing the humans and noticing the locations of the beacons and the locations of the humans. See Ans. 4. The Examiner found further that Appellant’s claims do not recite any particularity about the structure or use of the beacons, reciting only the result achieved. See id. at 4 and 7 (citing Spec. ¶ 29). And Appeal 2020-004972 Application 14/812,805 15 the Examiner found that Sharony demonstrates that the use of multiple tracking mobile devices or radio frequency tags to establish location was a conventional technique at the time. See Final Act. 4–5. I understand from the Examiner’s findings that it was known in the prior art to use beacons in a process of determining population density from the location data produced by the beacons, because the beacons indicate location and density can be determined by one of ordinary skill from this location data. The Examiner has set forth sufficient findings to support a conclusion that the additional elements were well understood, conventional, and routine, and Appellant provides insufficient evidence to demonstrate that the Examiner’s determinations were erroneous. Thus, the overall method claimed by Appellant is directed to the abstract idea of determining the location of multiple humans in the vicinity of a beacon with the conventional technology of beacons, determining the population density by analyzing this location information, and using a determined population density to provide an offer. I disagree with my colleagues that because Sharony does not teach each and every element of Appellant’s claimed method (determination of population density of “a plurality of users” using the additional element of a beacon), it is drawn to patentable subject matter. “[A] claim for a new abstract idea is still an abstract idea. The search for a § 101 inventive concept is thus distinct from demonstrating § 102 novelty.” Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1151 (Fed. Cir. 2016) (holding claims to a method for converting a hardware independent user description of a logic circuit are not eligible because the use of assignment conditions as an intermediate step in the translation process is an aid to a mental process Appeal 2020-004972 Application 14/812,805 16 and does not change the nature of the claims to being directed to more than an abstract idea). I also disagree with my colleagues that the facts of this case are similar to those of Thales Visionix Inc. v. United States, 850 F.3d 1343 (Fed. Cir. 2017). In Thales, the court found that the claims were eligible under § 101 because they did “not use the conventional approach of measuring inertial changes with respect to the earth,” but rather changed the reference frame to track the position and orientation of an object within a moving platform, a method that did not require conventional input or calculations. Id. at 1345. Thus, in Thales, the claims were directed to an unconventional way of tracking the motion of an object. In contrast, Appellant’s claimed method does not recite any unconventional use of beacons. Rather, as the Examiner found, Appellant’s claimed method fails to recite any particularity of how the beacons recited in claim 1 are used. See Ans. 4 and 7. Appellant fails to explain how the use of such beacons would be unconventional, not routine, or different from the teachings of Sharony. I conclude that the Examiner met the burden required in Berkheimer of demonstrating that it would have been well-understood, routine, or conventional at the time the application was filed to accomplish the determination of population density of “a plurality of users” using the additional element of a beacon, because such beacons would have been used in a conventional way to determine location. Accordingly, I respectfully dissent from the reversal of the Examiner’s rejection. Copy with citationCopy as parenthetical citation