Ex Parte Colcernian et al

Patent Trial and Appeal Board

Sep 27, 2018

14150716 (P.T.A.B. Sep. 27, 2018)

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.
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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
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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.
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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.,
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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
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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
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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
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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)
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( 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
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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
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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
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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
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