Ex Parte Colcernian et alDownload PDFPatent Trial and Appeal BoardSep 27, 201814150716 (P.T.A.B. Sep. 27, 2018) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 14/150,716 01/08/2014 69316 7590 10/01/2018 MICROSOFT CORPORATION ONE MICROSOFT WAY REDMOND, WA 98052 FIRST NAMED INVENTOR Christina Colcernian 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. 340622.01 4797 EXAMINER CHEUNG, EDDY ART UNIT PAPER NUMBER 2165 NOTIFICATION DATE DELIVERY MODE 10/01/2018 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): usdocket@microsoft.com chriochs@microsoft.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte CHRISTINA COLCERNIAN, YINGHUA YAO, ANH QUYNH LY, BRITT H. HANSING, WILLIAM JAMES WAGNER, ELIA KARAGIANNIS, and NATHAN CHALMERS Appeal2018-002705 Application 14/150,716 1 Technology Center 2100 Before DENISE M. POTHIER, JOHN D. HAMANN, and MATTHEW J. McNEILL, Administrative Patent Judges. McNEILL, Administrative Patent Judge. DECISION ON APPEAL Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's rejection of claims 1, 3, 5-13, 16-18, and 21-26, which are all the claims pending in this application. Claims 2, 4, 14, 15, 19, and 20 were cancelled. App. Br. 15-19. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. 1 According to Appellants, the real party in interest is MICROSOFT TECHNOLOGY LICENSING LLC. App. Br. 2. The Applicant is Microsoft Corporation. Appeal2018-002705 Application 14/150,716 STATEMENT OF THE CASE Introduction Appellants' application relates to providing supplementary results to an online search, including rich visuals, interactive elements, and animations in addition to the answer to the search query. Spec. ,r,r 1-3. Claim 1 illustrates the appealed subject matter and reads as follows: 1. A system, comprising: a hardware microprocessor, and a memory device that stores computer-executable instructions, the computer- executable instructions executed by the microprocessor to cause the microprocessor to enable: a promotion component configured to compute a promotion value for candidate responses to a received query, wherein the promotion value indicates a likelihood that the candidate responses are a definitive answer to the received query based on an evaluation of a determined intent of the received query and an evaluation of data associated with the candidate responses; and a prominence region component configured to generate a prominence region that presents, in a results page, content for a candidate response in a separate region from a search results listing and advertising content, wherein generation of the prominence region compnses: ranking the candidate responses based on the computed promotion value of the candidate responses, wherein the ranking comprises applying one or more machine learning models that selects the candidate response from a ranking of the candidate responses and provides a region indication for positional display of the prominence region based on the selected candidate response, determining a position on the results page for display of the prominence region based 2 Appeal2018-002705 Application 14/150,716 on the region indication provided from the ranking, generating the results page that comprises the prominence region located at the determined position, wherein the prominence region comprises content for the selected candidate response including rich interactive content, and outputting the generated results page for display. The Examiner's Rejection Claims 1, 3, 5-13, 16-18, and 21-26 stand rejected under 35 U.S.C. § 101 as being directed to unpatentable subject matter. Final Act. 4-7. ANALYSIS We have reviewed the Examiner's rejections in light of Appellants' contentions that the Examiner has erred. We disagree with Appellants' contentions. Except as noted below, we adopt as our own: (1) the findings and reasons set forth by the Examiner in the Final Action from which this appeal is taken; and (2) the reasons set forth by the Examiner in the Examiner's Answer in response to Appellants' Appeal Brief. We concur with the Examiner's conclusions. We highlight the following additional points. Under 35 U.S.C. § 101, a patent may be obtained for "any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof." The Supreme Court has "long held that this provision contains an important implicit exception: Laws of nature, natural phenomena, and abstract ideas are not patentable." Alice Corp. Pty. 3 Appeal2018-002705 Application 14/150,716 Ltd. v. CLSBankint'l, 134 S. Ct. 2347, 2354 (2014) (quotingAss'nfor Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 589 (2013)). 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, 134 S. Ct. at 2355. Assuming that a claim nominally falls within one of the statutory categories of machine, manufacture, process, or composition of matter, the first step in the analysis is to "determine whether the claims at issue are directed to one of those patent-ineligible concepts." Id. For example, abstract ideas include, but are not limited to, fundamental economic practices, methods of organizing human activities, an idea of itself, and mathematical formulas or relationships. Id. at 2355-57. If the claim is directed to a judicial exception, such as an abstract idea, the second step is to determine whether additional elements in the claim "'transform the nature of the claim' into a patent- eligible application." Id. at 2355 (quoting Mayo, 566 U.S. at 78). This second step is described as "a search for an "'inventive concept"'-i.e., an element or combination of elements that is ' ... significantly more than ... the [ineligible concept] itself."' Id. ( alteration in original) ( quoting Mayo, 566 U.S. at 72-73). Alice Step One "[T]he first step in the Alice inquiry ... asks whether the focus of the claims is on the specific asserted improvement in computer capabilities ... or, instead, on a process that qualifies as an 'abstract idea' for which computers are invoked merely as a tool." Enfzsh, LLC v. Microsoft Corp., 4 Appeal2018-002705 Application 14/150,716 822 F.3d 1327, 1335-36 (Fed. Cir. 2016). "The abstract idea exception prevents patenting a result where 'it matters not by what process or machinery the result is accomplished."' McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299, 1312 (Fed. Cir. 2016) (quoting O'Reilly v. Morse, 56 U.S. (15 How.) 62, 113 (1854)). "We therefore look to whether the claims ... focus on a specific means or method that improves the relevant technology or are instead directed to a result or effect that itself is the abstract idea and merely invoke generic processes and machinery." McRO, 837 F.3d at 1314. Appellants argue claim 1 is not directed to an abstract idea. See App. Br. 4-5, Reply Br. 3-6. According to Appellants, the claimed invention improves computing devices executing search algorithm processing with identification of a definitive answer to query. App. Br. 4. Appellants argue this improvement is achieved by "identification of more relevant search results (including disambiguation of query intent), speed in which content is found ( or not found), reduction in latency in computing processing and providing of contextual understanding for search result content, among other examples." Id. at 5. Appellants argue that, similar to Enfzsh, the claimed invention improves the functioning of the computer rather than invoking the use of a computer as a tool and claim 1, therefore, is not directed to an abstract idea. Id. at 5. Appellants have not persuaded us of Examiner error. Claim 1 recites a system with various computer executable components, including a promotion component that determines the likelihood candidate answers are a definitive answer to a received query and a prominence region component that displays the computed definitive answer in a prominent region of a 5 Appeal2018-002705 Application 14/150,716 search results page. We agree with the Examiner that claim 1 is generally directed to determining the intent of a search query, determining the most definitive answer to the query, and presenting the answer as interactive content in a prominent region of a result page. Final Act. 5. The Examiner further finds, and we agree, claim 1 is directed to the abstract idea of "collecting information, analyzing it, and displaying certain results of the collection and analysis." Id. Appellants' argument that claim 1 improves the functioning of a computing device is unpersuasive because claim 1 recites a generalized search algorithm with result-oriented limitations instead of limitations that explain how to improve the efficiency and performance of a computing device or allow the computing device to perform a new function. To wit, claim 1 generally recites a method for identifying information that users are seeking and presenting that information in a prominent manner. The computer limitations in claim 1 are merely tools to achieve this method. The Federal Circuit in DDR Holdings found claims "necessarily rooted in computer technology" to be patent eligible, but issued a relevant warnmg: [W]e caution, however, that not all claims purporting to address Internet-centric challenges are eligible for patent. For example, in our recently-decided Ultramercial opinion, the patentee argued that its claims were "directed to a specific method of advertising and content distribution that was previously unknown and never employed on the Internet before." But this alone could not render its claims patent- eligible. In particular, we found the claims to merely recite the abstract idea of "offering media content in exchange for viewing an advertisement," along with "routine additional steps such as updating an activity log, requiring a request from the consumer to view the ad, restrictions on public access, and use 6 Appeal2018-002705 Application 14/150,716 of the Internet." DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1258 (Fed. Cir. 2014) ( citations omitted). The claims in DDR Holdings addressed a problem unique to the Internet in a manner that was "not merely the routine or conventional use of the Internet." Id. at 1259. In particular, rather than the expected behavior of simply sending the website visitor to a third-party website, the claimed invention behaved in a manner different than expected by sending a website visitor to a hybrid web page presenting information from a third-party with the look and feel of the host website. Id. at 1258-59. In contrast, Appellants have not identified any unconventional behavior by the recited computer limitations in claim 1. The nature of claim 1 as a whole is not to define a specific technological improvement, but to recite the steps necessary to perform the abstract idea itself. Claim 1 employs "generic processes and machinery" to achieve results, and is not focused on "a specific means or method that improves the relevant technology." McRO, 837 F.3d at 1314. Appellants cite several "specific processing operations" as supporting "the processing efficiency improvements discussed above through specific processing operations." See Reply Br. 5. In particular, Appellants cite the processing operations of "determin[ing] promotion value of candidate responses for a search query, rank[ing] the candidate responses (using one or more machine learning models) based on the determined promotion value, determin[ing] positioning of a prominence region that displays selected candidate responses and generat[ing] a search results page based on the foregoing processing." Id. However, claim 1 does not explain how these 7 Appeal2018-002705 Application 14/150,716 steps are achieved, instead using result-oriented language of the sort cautioned against in DDR Holdings and McRO. Accordingly, we find claim 1 does not contain the specificity necessary to show how the processors' operations differ from prior human methods, and is therefore not directed to a technological improvement, but the abstract idea itself. See McRO, 837 F.3d at 1314 ("The computer here is employed to perform a distinct process to automate a task previously performed by humans .... This is unlike Flook, Bilski, and Alice, where the claimed computer-automated process and the prior method were carried out in the same way."). However, we note that "the decisional mechanism courts now apply is to examine earlier cases in which a similar or parallel descriptive nature can be seen - what prior cases were about, and which way they were decided." Amdocs (Isr.) Ltd. v. Openet Telecom, Inc., 841 F.3d 1288, 1294 (Fed. Cir. 2016) (citing Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353- 54 (Fed. Cir. 2016)). Here, a survey of other cases supports our finding that claim 1 is directed to an abstract idea. That is, claim 1 is analogous to other cases where the Federal Circuit has found claims relating to computer- implemented business methods to be directed to abstract ideas, for example, Inventor Holdings, LLC v. Bed Bath & Beyond, Inc., 876 F.3d 1372, 1374 (Fed. Cir. 2017) ("purchasing goods at a local point-of-sale system from a remote seller"), Credit Acceptance Corp. v. Westlake Services, 859 F.3d 1044 (Fed. Cir. 2017) (providing financing packages to a customer for products in a dealer's inventory based on customer financial information transmitted to a server via a communication network), OIP Technologies, Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1362---63 (Fed. Cir. 2015) 8 Appeal2018-002705 Application 14/150,716 ( automatic optimization of product pricing based on potential customer responses to offers), and buySAFE, Inc. v. Google, Inc., 765 F.3d 1350 (Fed. Cir. 2014) (performing a transaction performance guaranty service for online commercial transactions). Similarly, our reviewing court has concluded that abstract ideas include the concepts of collecting data, recognizing certain data within the collected data set, and storing the data in memory. Content Extraction & Transmission LLC v. Wells Fargo Bank, N.A., 776 F.3d 1343, 1347 (Fed. Cir. 2014). Additionally, the collection of information and analysis of information ( e.g., recognizing certain data within the dataset) are also abstract ideas. Elec. Power, 830 F.3d at 1353. Similarly, "collecting, displaying, and manipulating data" is an abstract idea. Intellectual Ventures I LLC v. Capital One Fin. Corp., 850 F.3d 1332, 1340 (Fed. Cir. 2017). Also, the gathering and combining of data that does not require input from a physical device is an abstract idea. Digitech Image Techs., LLC v. Elecs. for Imaging, Inc., 758 F.3d 1344, 1351 (Fed. Cir. 2014). Our reviewing court has also concluded that "creating an index and using that index to search for and retrieve data" is an abstract idea. Intellectual Ventures I LLC v. Erie Indem. Co., 850 F.3d 1315, 1327 (Fed. Cir. 2017). For these reasons, Appellants have not persuaded us the Examiner erred in finding claim 1 is directed to an abstract idea. Alice Step Two The second step in the Alice analysis requires a search for an "inventive concept" that "must be significantly more than the abstract idea itself, and cannot simply be an instruction to implement or apply the abstract idea on a computer." Bascom Global Internet Servs., Inc. v. AT&T Mobility 9 Appeal2018-002705 Application 14/150,716 LLC, 827 F.3d 1341, 1349 (Fed. Cir. 2016). There must be more than "computer functions [that] are 'well-understood, routine, conventional activit[ies]' previously known to the industry." Alice, 134 S. Ct. at 2359 (second alteration in original) (quoting Mayo, 566 U.S. at 73). Appellants argue the claims recite "significantly more" than the abstract idea because the claims describe technical features that improve another technology or technical field. App. Br. 6-11; Reply Br. 7-11. In particular, Appellants argue the claimed invention solves technical problems involved in executing search algorithms, including "determining intent of a user query, determining what results to return, determining how to arrange content, etc., while also accounting for latency issues in execution of search algorithm processing." App. Br. 6-9. Appellants further argue the claimed invention solves additional technical problems including "difficulty in determining how to arrange search content, the speed in which answers are identified ( or not identified), understanding context of an answer, whether to include follow-up, etc." Id. Appellants have not persuaded us of Examiner error. As discussed above, claim 1 is generally directed to determining the intent of a search query, determining the most definitive answer to the query, and presenting the answer as interactive content in a prominent region of a result page. Appellants argue the claims are akin to the claims in DDR Holdings that were necessarily rooted in computer technology. See App. Br. 6-11. We disagree. In DDR Holdings, the Federal Circuit found claims drawn to "generating a composite web page that combines certain visual elements of a 'host' website with content of a third-party merchant" provided a solution "necessarily rooted in computer technology in order to overcome a problem 10 Appeal2018-002705 Application 14/150,716 specifically arising in the realm of computer networks." 773 F.3d at 1248, 1257. In contrast, claim 1 solves a problem of identifying a definitive answer to a user's question (i.e., search query) and prominently displaying that answer to the user. That is, claim 1 addresses a business challenge that was previously addressed using a manual process; it does not embody a solution to a computer-based problem. Indeed, the "technical problems" identified by Appellants highlight this distinction. Appellants argue the claims improve search algorithm execution by "determining intent of a user query, determining what results to return, determining how to arrange content, etc., while also accounting for latency issues in execution of search algorithm processing." App. Br. 6. However, the first three determinations apply equally to searches performed without the assistance of a computer (e.g., encyclopedias, yellow- or white-pages, library card catalogs, etc.). The "latency issues" identified by Appellants are not persuasive because Appellants have not persuasively identified any limitations recited in the claims that improve latency issues for algorithm execution in a manner other than improving the data supplied to the algorithm, which is not an improvement to the algorithm execution itself. See BSG Tech LLC v. BuySeasons, Inc., 899 F.3d 1281, 1288 (Fed. Cir. 2018). Thus, as noted above, claim 1 is akin to the type of claim the Federal Circuit admonished against in DDR Holdings. 773 F.3d at 1257 ( differentiating the claims at issue from claims that "merely recite the performance of some business practice known from the pre-Internet world along with the requirement to perform it on the Internet"). Moreover, our reviewing court has made it clear that merely making the practice of an abstract idea more effective by implementing the idea on a 11 Appeal2018-002705 Application 14/150,716 computer does not suffice to meet the inventive concept requirement of Alice. See OIP Techs., 788 F.3d at 1363 ("[R]elying on a computer to perform routine tasks more quickly or more accurately is insufficient to render a claim patent eligible."). For these reasons, we are not persuaded the Examiner erred in rejecting claim 1 as patent ineligible. We, therefore, sustain the rejection of independent claim 1. We also sustain the rejection of independent claims 7 and 16, for which Appellants provide no separate argument. See App. Br. 11-12. We also sustain the rejection of dependent claims 3, 5, 6, 8-13, 17, 18, and 21-26, for which Appellants provide no separate argument. See id. at 11-13. DECISION We affirm the decision of the Examiner rejecting claims 1, 3, 5-13, 16-18, and 21-26. 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 )(iv). See 37 C.F.R. § 4I.50(f). AFFIRMED 12 Copy with citationCopy as parenthetical citation