Ex Parte Corcoran et alDownload PDFPatent Trial and Appeal BoardSep 25, 201812396810 (P.T.A.B. Sep. 25, 2018) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/396,810 03/03/2009 46797 7590 09/27/2018 Patterson & Sheridan, LLP 24 Greenway Plaza, Suite 1600 Houston, TX 77046 FIRST NAMED INVENTOR Sean D. Corcoran 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. ROC920080200US 1 7016 EXAMINER HOAR, COLLEEN A ART UNIT PAPER NUMBER 3621 NOTIFICATION DATE DELIVERY MODE 09/27/2018 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): Pair_eOfficeAction@pattersonsheridan.com IBM@P ATTERSONSHERIDAN.COM rociplaw@us.ibm.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte SEAN D. CORCORAN, MICHAEL T. KALMBACH, JARED W. PATTERSON, and KEVIN WENDZEL Appeal2017-001270 Application 12/396,810 Technology Center 3600 Before BRADLEY W. BAUMEISTER, AMBER L. HAGY, and MICHAEL M. BARRY, Administrative Patent Judges. BARRY, Administrative Patent Judge. DECISION ON APPEAL Appellants 1 appeal under 35 U.S.C. § 134(a) from a final rejection of claims 1, 3-9, 11-17, and 19-24, which are all the pending claims. We have jurisdiction under 35 U.S.C. § 6(b ). We AFFIRM. 1 Appellants identify International Business Machines Corp. as the real party in interest. Appeal Br. 3. Appeal2017-001270 Application 12/396,810 Introduction Appellants describe the invention as "relat[ing] to gathering and analyzing information to enable targeted advertising." Spec. ,r 1. Appellants explain that it was known in the art that "by leveraging computer technology, advertisers are able to target advertisements to an individual based upon information about that individual." Spec. ,r 3. Independent claim 1 is representative of the claims on appeal: 1. A computer-implemented method of presenting a targeted advertisement to a first individual, comprising: identifying, by operation of one or more processors, a plurality of content items on a network, wherein at least a first content item indicates a relationship between a first individual and one or more second individuals, and at least a second content item indicates relationships between the second individuals and a first product; determining values of one or more product strength factors based on at least the second content item; determining values of one or more relationship strength factors based on at least the first content item; determining quantitative product strengths for each of the second individuals and the first product indicating the relationships between corresponding second individuals and the first product and being determined based on at least the determined values of the product strength factors; determining quantitative relationship strengths between the first individual and the second individuals, based on at least the determined values of the relationship strength factors, wherein each of the relationship strengths between the first individual and one of the second individuals represents a predicted strength of a corresponding relationship between the first individual and the one of the second individuals; storing the determined product strengths and relationship strengths in a relational product grid, wherein nodes of the 2 Appeal2017-001270 Application 12/396,810 relational product grid represent individuals and products, wherein each edge between nodes representing one of the individuals and representing one of the products indicates a product strength between the represented individual and the represented product, and wherein each edge between nodes of the relational product grid representing individuals indicates a relationship strength between the represented individuals; analyzing the relational product grid to determine a salability value for the first product based on the relationship strengths between the first individual and the second individuals and the product strengths for each of the second individuals and the first product, wherein the salability value predicts a likelihood that the first individual will respond to a targeted advertisement of the first product, and wherein the salability value is calculated as a sum of the relationship strengths between the first individual and each of the second individuals multiplied by the corresponding product strengths for the respective second individuals and the first product; and upon determining the salability value exceeds a specified threshold, presenting a targeted advertisement of the product to the first individual. Appeal Br. 25-26 (Claims App'x). Re} ections & References Claims 1, 3-9, 11-17, and 19-24 stand rejected under 35 U.S.C. § 101 as patent-ineligibly directed to an abstract idea, without reciting significantly more. Final Act. 2-3. Claims 1, 3-9, 11-17, and 19-24 stand rejected also under pre-AIA 35 U.S.C. § I03(a) as unpatentable over Higgins (US 2010/0179874 Al; July 15, 2010) and Vanhoucke (US 2009/0028434 Al; Jan. 29, 2009). Final Act. 4--8. 3 Appeal2017-001270 Application 12/396,810 ANALYSIS The § 101 Re} ection The Supreme Court has set forth an analytical "framework for distinguishing patents that claim laws of nature, natural phenomena, and abstract ideas from those that claim patent-eligible applications of those concepts." Alice Corp. v. CLS Banklnt'l, 134 S. Ct. 2347, 2355 (2014) (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 71-73 (2012)). In the first step of the framework, we determine whether the claims at issue are "directed to" a judicial exception, such as an abstract idea. Alice, 134 S. Ct. at 2355. If we determine they are not, then the inquiry ends. Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1339 (Fed. Cir. 2016). If we determine they are, then we consider under step two of the framework whether the claims contain an "inventive concept" sufficient to "'transform the nature of the claim' into a patent-eligible application." Alice, 134 S. Ct. at 2355 (quotations and citation omitted). In considering whether a claim is directed to an abstract idea, we acknowledge, as did the Court in Mayo, that "all inventions at some level embody, use, reflect, rest upon, or apply laws of nature, natural phenomena, or abstract ideas." Mayo, 566 U.S. at 71. Noting that the two stages involve "overlapping scrutiny of the content of the claims," the Federal Circuit has described "the first-stage inquiry" as "looking at the 'focus' of the claims, their 'character as a whole,"' and "the second-stage inquiry (where reached)" as "looking more precisely at what the claim elements add- specifically, whether, in the Supreme Court's terms, they identify an 'inventive concept' in the application of the ineligible matter to which (by assumption at stage two) the claim is directed." Electric Power Grp., LLC v. 4 Appeal2017-001270 Application 12/396,810 Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016). Therefore, we 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. See Enfzsh, 822 F.3d at 1336. Step One: Whether the Claims Are Directed to a Patent-Ineligible Concept (Abstract Idea) Appellants argue the § 101 rejection of claims 1, 3-9, 11-1 7, and 19- 24 together as a group, see Appeal Br. 11-1 7, and we select claim 1 as representative, see 37 C.F.R. § 41.37(c)(l)(iv). The Examiner determines the claimed method simply describes the concept of gathering and combining data by reciting steps of organizing information through mathematical relationships. The gathering and combining merely employs mathematical relationships to manipulate existing information to generate additional information in the form of a 'salability value,' without limit. This idea is similar to the basic concept of manipulating information using mathematical relationships (e.g., converting numerical representation in Bensonm), which has been found by the courts to be an abstract idea. Final Act. 2-3; see also id. at 8-9 ( citing SmartGene3, Cyberfone4, and Digitech5). Appellants argue the Examiner errs in determining claim 1 is directed to the idea of "using categories to organize information" because claim 1 is 2 Gottschalkv. Benson, 409 U.S. 63 (1972). 3 Cyberfone Systems, LLC v. CNN Interactive Group, Inc., 558 F. App'x 988 (Fed. Cir. 2014). 4 Digitech Image Technologies, LLC v. Electronics for Imaging, Inc., 758 F.3d 1344 (Fed. Cir. 2014). 5 SmartGene, Inc. v. Advanced Biological Laboratories, SA, 555 F. App'x 950 (Fed. Cir. 2014) 5 Appeal2017-001270 Application 12/396,810 unlike the claims at issue in Cybeifone, Digitech, and SmartGene, in which "the inventions at issue were simple processes that can and were performed mentally by humans." Appeal Br. 14. Appellants' argument overgeneralizes those cases and is unpersuasive. For example, in Cyberfone, there was no finding or evidence that humans performed the claim at issue, which recited steps such as "forming a plurality of different exploded data transactions for [a] single transmission" and "sending said different exploded data transactions over a channel to said different destinations." See 558 F. App'x at 990. Instead, what the Federal Circuit found was that "[l]ike protecting against risk, using categories to organize, store, and transmit information is well-established. Here, the well- known concept of categorical data storage, i.e., the idea of collecting information in classified form, then separating and transmitting that information according to its classification, is an abstract idea that is not patent-eligible." Id. at 992. In other words, even if a claim is impractical for a human to perform, if that claim merely involves "using categories to organize, store, and transmit information" then, without more to it, the claim may be directed to a patent-ineligible abstract idea. Id. Appellants further argue claim 1 is not directed to a patent-ineligible abstract idea because "the claimed computer-specific implementation involving identifying content items on a network and storing and analyzing identified relationships in a 'relational product grid' data structure is rooted in computer technology and overcomes the computer-specific problem of identifying, storing, and analyzing relationships present in content items on a network." Appeal Br. 15 (citing DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014) (emphasis omitted). We disagree. 6 Appeal2017-001270 Application 12/396,810 In DDR Holdings, the Federal Circuit found claims at issue were not directed to an abstract idea because they were directed to "a challenge particular to the Internet," and were "necessarily rooted in computer technology in order to overcome a problem specifically arising in the realm of computer networks." 773 F.3d at 1257. Here, however, while claim 1 recites that its method is "computer-implemented" in its preamble, 6 the body of the claim recites functional requirements that are not tied to any particular computer hardware, software, or network. To the extent claim 1 requires the use of computer technology, it is not the type of claim that is "necessarily rooted in computer technology" as in DDR Holdings. See, e.g., Intellectual Ventures I LLC v. Capital One Bank (USA), 792 F.3d 1363, 1371 (Fed. Cir. 2015) ("Requiring the use of a 'software' 'brain' 'tasked with tailoring information and providing it to the user' provides no additional limitation beyond applying an abstract idea, restricted to the Internet, on a generic computer."). As the Examiner responds, and we agree, the requirements related to the recited "relational product grid" are high-level functional requirements, and the "[c ]laims are simply classifying something as a 'product strength' and 'relationship strength' with and between 'individuals' and calculating to determine a 'salability value' using data that is collected and then used in calculations to identify ads to be presented to specific individuals." Ans. 5 6 If a preamble is essential to understand the limitations in the claim body then it properly is considered a limitation of the claim. See Catalina Marketing Int'!, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 808 (Fed. Cir. 2002). A preamble generally is not accorded any patentable weight where it merely recites the purpose of a process and the body of the claim does not depend on the preamble for completeness but, instead, the process steps are able to stand alone. See, e.g., In re Hirao, 535 F.2d 67, 70 (CCPA 1976). 7 Appeal2017-001270 Application 12/396,810 ( citing In re 111 Comnnmications LLC Patent Litigation, 823 F.3d 607 (Fed. Cir. 2016) ). The present claims are similar to 1LI Communication, where that "specification fail[ ed] to provide any technical details for the tangible components, but instead predominately describe[d] the system and methods in purely functional terms." 823 F.3d at 612. Here, Appellants describe and functionally clairn a "relational product grid" that does not create any specific data structure requirements. Fmihermore, the algorithmic requirements recited in claim 1 for using the recited relational product grid to determine a salability value are also an abstract idea-a person with pen and paper can perform the algorithm. As our reviewing court has held, "Adding one abstract idea ... to another abstract idea ... does not render the claim non-abstract." RecogniCorp, LLC v. Nintendo Co. LTD., 855 F.3d 1322, 1327 (Fed. Cir. 2017); see also FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1093-94 (Fed. Cir. 2016) (patent-ineligible claims were directed to a combination of abstract ideas). In reply, Appellants contend claim 1 is akin to the claims at issue in Enjzsh and lvfcRO, Inc. v. Bandai Namco Games America Inc., 837 F.3d 1299 (Fed. Cir. 2016), which were determined patent-eligible by the Federal Circuit. See Reply Br. 3----5. \Ve disagree In E11fish, the claims at issue were found to be "directed to a specific improvement to the way computers operate, embodied in [a] self-referential table." 822 F.3d at 1336. Although claim 1 recites functional aspects that may be implemented in software, claim 1 does not recite and is not directed to any specific software technology feature, in contrast to Enfish. See Spec. ,r,r 4---6, 16-18 ( describing generic computer technology and software 8 Appeal2017-001270 Application 12/396,810 functionality with non-limiting terms such as "grid builder" and "grid analyzer"); see also id. at 19 ( explaining "any particular program nomenclature ... is used merely for convenience, and thus the invention should not be limited to use solely in any specific application identified and/or implied by such nomenclature"). McRO is similarly inapposite to Appellants' claim 1. The claim at issue in McRO was directed to specific technology for computer animation (reciting, e.g., limitations for streams of "morph weight sets" with frame rate and other timing limitations), which the court found addressed a specific technological issue that went beyond mere use of a computer to implement an abstract idea. See 837 F.3d at 1307---08, 1314. Although Appellants' claim 1 recites a "relational product grid" that includes "quantitative product strengths" and "quantitative relationship strengths," these are not directed to a specific technology, but, instead, are broadly recited components for the functional requirement of "analyzing the relational product grid to determine a salability value." In other words, unlike in Enfzsh and McRO, claim 1 's computer/software technology aspects are recited at a high level and do not affect the idea to which claim 1 is directed. Thus, we proceed to step two of the Alice framework. Step Two: Whether the Claims Recite "Significantly More" than the Patent Ineligible Concept. Appellants argue the Examiner's rejection fails to make out a prima facie case under the second step of the Alice framework because "the Examiner simply asserts that the 'claim does not include additional elements beyond the abstract idea of gathering and combining data."' Appeal Br. 12 ( quoting Final Act. 3). To the extent the Final Action failed to make out a 9 Appeal2017-001270 Application 12/396,810 prima facie case under the second step of Alice, the Examiner remedies this in the Answer by determining that the claim limitations do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the additional elements of a computers, processors, data storage grids, computer-readable storage medium, [and] an executable program [that] performs operations, are generic recitation of computers or computer components, recited at a high level of generality, in a computer network, to perform the generic computer functions of accessing, receiving, storing, processing data, transmitting, and presenting information, and the additional limitation of collecting data from images and presenting targeted advertisements to individuals represents insignificant extrasolution activity. Taking the elements both individually and as a combination, the computers or computer components in the claims perform purely generic computer functions. Thus, Claims 1, 3-9, 11-17, [and] 19-24, both individually and as a whole[,] do not amount to significantly more than the abstract idea itself. None of the limitations are directed to improvements to another technology or technical field, none of the limitations are directed to improvements to the functioning of the computer itself. Therefore the claims are not significantly more than recitations of a judicial exception. Ans. 5---6. Appellants argue that claim 1 recites significantly more because the particular data structure ( the "relational product grid") used to store and analyze identified relationships in a computing device to present a targeted advertisement based on a calculation of salability values, provide a specific technological improvement to solve the distinctly modem problem of targeting advertisements based on content items on a network (e.g., the Internet). Appeal Br. 16; see also Reply Br. 6-9. 10 Appeal2017-001270 Application 12/396,810 This argument is unpersuasive. Appellants' Specification explains that "any particular program nomenclature ... is used merely for convenience." Spec. ,r 19. Appellants do not persuade us that a relational product grid is a particular data structure that amounts to significantly more than the abstract idea. Instead, we agree with the Examiner that the functional recitations require only well-known, routine, and conventional computer hardware and software to carry out the ideas for "classifying something as a 'product strength' and 'relationship strength' with and between 'individuals' and calculating to determine a 'salability value' using data that is collected and then used in calculations to identify ads." Ans. 5. We agree with the Examiner that this does not add significantly more to the idea of using categories to organize and store information for targeted advertising. Id. Appellants further contend claim 1 recites significantly more than the abstract idea because targeted advertising may also be performed in other ways, i.e., there is no preemption of the underlying idea. Appeal Br. 16-17. To be sure, the Supreme Court has described "the concern that drives this exclusionary principle [i.e., the exclusion of abstract ideas from patent eligible subject matter] as one of pre-emption." See Alice, 134 S. Ct. at 2354. However, characterizing preemption as a driving concern for patent eligibility is not the same as characterizing preemption as the test for patent eligibility. As our reviewing court has explained: "The Supreme Court has made clear that the principle of preemption is the basis for the judicial exceptions to patentability" and "[ fJor this reason, questions on preemption are inherent in and resolved by the § 101 analysis." Ariosa Diagnostics, Inc., v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015) (citing Alice, 11 Appeal2017-001270 Application 12/396,810 134 S. Ct. at 2354). Thus, although "preemption may signal patent ineligible subject matter, the absence of complete preemption does not demonstrate patent eligibility." Id. Thus, having considered all of Appellants' arguments (Appeal Br. 11- 17; Reply Br. 2-9), we are unpersuaded of Examiner error, and we sustain the§ 101 rejection of claim 1 and of claims 3-9, 11-17, and 19-24, which Appellants argue together with claim 1. The§ 103 Rejection teach In rejecting claim 1, the Examiner finds both Higgins and Vanhoucke storing the determined product strengths and relationship strengths in a relational product grid, wherein nodes of the relational product grid represent individuals and products, wherein each edge between nodes representing one of the individuals and representing one of the products indicated a product strength between the represented individual and the represented product, and wherein each edge between nodes of the relational product grid representing individuals indicates a relationship strength between the represented individuals, as recited. Final Act. 5---6 (citing Higgins ,r,r 75-76, Vanhoucke ,r,r 33, 54) ( emphasis removed). Appellants argue, inter alia, 7 the Examiner errs in this finding because the discussion of storing items such as media objects and related metadata (Higgins) and supplemental content (Vanhoucke) are only general mentions of storage. App. Br. 19-21. According to Appellants, the general discussion of storage does not teach storing the recited strengths in the recited grid, which includes edges and nodes. See Appeal Br. 19-21. 7 Because we reverse the Examiner's§ 103(a) rejection of claim 1 based on a dispositive issue, we do not opine about Appellants' other arguments. 12 Appeal2017-001270 Application 12/396,810 The Examiner responds that the "[p ]rior art does not teach a grid for storage of indicators of relationship strength between an individual and a product. Both Higgins and [V anhoucke] teach other data structures [that] provide predictable results." Ans. 9. The Examiner further finds: Therefore, it would have been obvious to one having ordinary skill in the art at the time of the invention to substitute the data storage of Higgins for matching ads to viewers in the claims of applicant. The substituted storage databases are known. The technical ability exists to substitute the components as claimed and the results of the substitution [are] predictable." Ans. 10 (citing Higgins ,r,r 9, 63, 73, 76, 141, 193-94, 197-98, 233-34, Table 1, Figs. 2, 5, 32) ( emphasis added). Appellants reply, and we agree, that the Examiner's explanation is unclear. Reply Br. 13. The Examiner finds (a) that neither Higgins nor Vanhoucke teaches claim 1 's relational product grid (Ans. 9), but that (b) Higgins nevertheless renders the disputed limitation of claim 1 obvious because an ordinarily skilled artisan would have been able "to substitute the data storage of Higgins ... in the claims of applicant" because "[ t ]he technical ability exists to substitute the components as claimed and the results of the substitution [are] predictable" (Ans. 10). In view of this explanation, we find that, "[a]lthough the test for obviousness is flexible, see KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398,415 (2007), the Examiner fails to articulate "reasoning with some rational underpinning to support the legal conclusion of obviousness." In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (clarifying that obviousness rejections "cannot be sustained by mere conclusory statements") ( cited with approval in KSR, 550 U.S. at 418). 13 Appeal2017-001270 Application 12/396,810 We agree with Appellants that the Examiner errs by failing to articulate a "rational underpinning" in the explanation for how Higgins and Vanhoucke teach or suggest the disputed limitation of claim 1. We agree with Appellants that substituting the data storage of Higgins into claim 1 does not, absent some suggestion for which there is no finding by the Examiner here, teach substituting the recited relational product grid into claim 1. Reply Br. 14. We also note that, irrespective of the particular breadth or narrowness of the argued relational product grid claim limitations, and regardless that, as discussed supra, the product grid claim limitations are not sufficient to recite significantly more than the idea(s) to which claim 1 is directed, the relational product grid claim limitations reflect an algorithmic data structure as discussed in Appellants' Specification, see Spec. 15-25, and the Examiner does not make a sufficient finding to explain how or why the prior art's disclosure teaches or suggests the disputed relational product grid limitations. Accordingly, we find the Examiner fails to articulate reasoning with rational underpinning as necessary under Kahn and KSR to support the conclusion of obviousness. Thus, we do not sustain the 35 U.S.C. § 103(a) rejection of claim 1. For the same reason we do not sustain the§ 103(a) rejection of independent claims 9 and 17, which include commensurate limitations and stand rejected on the same grounds. See Appeal Br. 27-28, 29-30 and Final Act. 4---6. We also, likewise, do not sustain the 103(a) rejection of dependent claims 3-8, 11-16, and 19-24. 14 Appeal2017-001270 Application 12/396,810 DECISION For the above reasons, we affirm the rejection of claims 1, 3-9, 11- 17, and 19-24 under 35 U.S.C. § 101 and reverse their rejection under § 103(a). Because we affirm the rejection of all claims under§ 101, we designate our decision an affirmance. 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). AFFIRMED 15 Copy with citationCopy as parenthetical citation