Ex Parte KANNAN et al

Patent Trials and Appeals Board

Jun 7, 2019

14080578 - (D) (P.T.A.B. Jun. 7, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/080,578 11/14/2013
22918 7590 06/11/2019
PERKINS COIE LLP - PAO General
P.O. BOX 1247
SEATTLE, WA 98111-1247
FIRST NAMED INVENTOR
Pallipuram V. KANNAN
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.
110524-8057.USOl 9814
EXAMINER
YESILDAG, MEHMET
ART UNIT PAPER NUMBER
3624
NOTIFICATION DATE DELIVERY MODE
06/11/2019 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):
patentprocurement@perkinscoie.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PALLIPURAM V. KANNAN, RA VI VIJAYARAGHA VAN and
KRANTHI MITRA ADUSUMILLI.
Appeal2018-004925
Application 14/080,578
Technology Center 3600
Before JEAN R. HOMERE, CARL W. WHITEHEAD JR.,
and JEREMY CURCURI, Administrative Patent Judges.
HOMERE, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
Final Rejection of claims 6-13, which constitute all claims pending in this
application. 1 App. Br. 1. Claims 1-5 and 14--17 have been canceled.
Claims App'x. We have jurisdiction under 35 U.S.C. § 6(b ).
We REVERSE.
1 Appellants identify 24/7 Customer, Inc., as the real party in interest. App.
Br. 2.
Appeal2018-004925
Application 14/080,578
Introduction
According to Appellants, the claimed subject matter relates to a
customer relationship management ( CRM) system using machine learning
and statistical models for dynamically generating a customized on-line
survey consistent with the customer's preferences (interests, look and feel,
purchase habits) when a computed value corresponding to the customer's
predicted intent exceeds a predetermined threshold confirming that the
customer is likely to respond to the survey. Spec. 2: 15-22, Fig. 2.
Representative Claim
Claims 6 and 10 are independent. Independent claim 6 is
representative, and reads as follows:
6. A computer implemented method for automatically
generating a customized survey design, comprising:
obtaining any of machine learning and statistical models that
predict a customer intent as a function of customer data,
wherein said machine learning and statistical models are trained
to identify associations between customer data and a pre-defined list
of possible customer intents including any of browsing for specific
product information, browsing for deals on a specific product, simple
browsing without intent of purchase, intent of purchasing a specific
product in immediate future, intent of purchasing a product for a
specific need in immediate future, trying to gather information to
solve a specific service related problem or a problem associated with a
specific product;
obtaining customer data having a record of a plurality of web
page activities associated with a customer device,
wherein the plurality of web page activities include any of a
time of a web page visit associated with the customer device, a
referral web page, landing and/or exit web pages, detected interaction
with a web page, and interaction history with a web page;
in connection with receiving and fulfilling a request for Web-
based information, from a customer device, a processor applying any
of the machine learning and the statistical models to predict a
customer intent based on the customer data said processor identifying
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an ordered sequence of inputs in the customer data associated with a
web browsing history through a plurality of web pages by the
customer device and interaction history with the plurality of web
pages;
applying, by said processor, the predicted customer intent and
the ordered sequence of inputs to proactively determine whether a
customized survey is to be delivered to said customer device by:
additional web browsing history and interaction history is detected, at
each instance said processor calculating the predicted customer intent
and a probability of receiving a survey response;
when the probability of receiving the survey response crosses a
predetermined threshold, said processor generating a customized
survey design based on the predicted customer intent, the customized
survey design including at least one question among a plurality of
questions, at least one option to answer the at least one question, and
an appearance selected from a design library corresponding to the
predicted customer intent,
wherein generating the customized survey design comprises a survey
selection module, based upon model provided information, mapping
the predicted customer intent to at least one available question among
a plurality of available questions and/or applying a weighting function
to select at least one available question among the plurality of
available questions, the at least one available question being
incorporated in the customized survey design; and said processor
delivering a survey including the customized survey design to the
customer device.
Rejection on Appeal
Claims 6-13 stand rejected under 35 U.S.C. §101 as being directed to
patent ineligible material. Final Act. 4--8.
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Application 14/080,578
ANALYSIS 2
Standard for Patent Eligibility
An invention is patent-eligible if it claims a "new and useful process,
machine, manufacture, or composition of matter." 35 U.S.C. § 101.
However, the Supreme Court has long interpreted 35 U.S.C. § 101 to include
implicit exceptions: "[l]aws of nature, natural phenomena, and abstract
ideas" are not patentable. E.g., Alice Corp. v. CLS Bank Int 'l, 573 U.S. 208,
216 (2014).
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court's two-step framework, described in Mayo
and Alice. Id. at 217-18 ( citing Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 566 U.S. 66, 75-77 (2012)). In accordance with that framework,
we first determine what concept the claim is "directed to." See Alice, 573
U.S. at 219 ("On their face, the claims before us are drawn to the concept of
intermediated settlement, i.e., the use of a third party to mitigate settlement
risk."); see also Bilski v. Kappas, 561 U.S. 593, 611 (2010) ("Claims 1 and 4
in petitioners' application explain the basic concept of hedging, or protecting
against risk.").
Concepts determined to be abstract ideas, and thus patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219-20; Bilski, 561 U.S. at 611);
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594--95 (1978)); and
mental processes (Gottschalkv. Benson, 409 U.S. 63, 67 (1972)). Concepts
2 We refer to Appellants' arguments and the Examiner's findings and
conclusions set forth in the Final Action (mailed April 21, 2017, "Final
Act."), the Appeal Brief (filed January 26, 2018, "App. Br."), the Answer
(mailed February 9, 2018, "Ans."), and the Reply Brief (filed April 6, 2018,
"Reply Br.") for the respective details.
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determined to be patent eligible include physical and chemical processes,
such as "molding rubber products" (Diamond v. Diehr, 450 U.S. 175, 191
(1981) ); "tanning, dyeing, making water-proof cloth, vulcanizing India
rubber, smelting ores" (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S.
252, 267---68 (1854))); and manufacturing flour (Benson, 409 U.S. at 69
(citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
In Diehr, the claim at issue recited a mathematical formula, but the
Supreme Court held that "a claim drawn to subject matter otherwise
statutory does not become nonstatutory simply because it uses a
mathematical formula." Diehr, 450 U.S. at 176, 191 ("We view
respondents' claims as nothing more than a process for molding rubber
products and not as an attempt to patent a mathematical formula."). Having
said that, the Supreme Court also indicated that a claim "seeking patent
protection for that formula in the abstract ... is not accorded the protection
of our patent laws, ... and this principle cannot be circumvented by
attempting to limit the use of the formula to a particular technological
environment." Id. ( citing Benson and Flook), and 187 ("It is now
commonplace that an application of a law of nature or mathematical formula
to a known structure or process may well be deserving of patent
protection.").
If the claim is "directed to" an abstract idea, we tum to the second
step of the Alice and Mayo framework, where "we must examine the
elements of the claim to determine whether it contains an 'inventive
concept' sufficient to 'transform' the claimed abstract idea into a patent-
eligible application." Alice, 573 U.S. at 221. "A claim that recites an
abstract idea must include 'additional features' to ensure 'that the [claim] is
more than a drafting effort designed to monopolize the [abstract idea]."' Id.
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( quoting Mayo, 566 U.S. at 77). "[M]erely requir[ing] generic computer
implementation[] fail[ s] to transform that abstract idea into a patent-eligible
invention." Id.
The PTO recently published revised guidance on the application of
section 101. 2019 Revised Patent Subject Matter Eligibility Guidance, 84
Fed. Reg. 50-57 (Jan. 7, 2019) ("2019 PEG"). Under the 2019 PEG, we
first look to whether the claim recites:
( 1) any judicial exceptions, including certain groupings of abstract
ideas (i.e., mathematical concepts, certain methods of organizing
human activity such as a fundamental economic practice, or mental
processes); and
(2) additional elements that integrate the judicial exception into a
practical application (see MPEP § 2106.05(a}-(c), (e}-(h)). 3
See 2019 PEG, 52, 55-56. Only if a claim: (1) recites a judicial exception!
and (2) does not integrate that exception into a practical application, does the
office then look to whether the claim:
(3) adds a specific limitation beyond the judicial exception that is not
"well-understood, routine, conventional" in the field (see MPEP
§ 2106.05(d)); or
(4) simply appends well-understood, routine, conventional activities
previously known to the industry, specified at a high level of
generality, to the judicial exception.
See 2019 PEG at 56.
Examiner's Findings and Conclusions
In the first step of the Alice inquiry, the Examiner determines
independent claims 6 and 10 are directed to the abstract idea of "managing
customized survey generation and delivery." Final Act. 4. According to the
Examiner, the underlying steps of
3 All references to the MPEP are to Rev. 08.2017 (Jan. 2018).
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obtaining statistical models to predict a customer intent as a
function of customer data, ... obtaining customer data having a
record of a plurality of web page activities associated with a
customer device, ... applying the predicted customer intent and
ordered sequence of inputs to proactively determine whether a
customized survey is to be delivered to said customer, ...
generating a customized survey design . . . based on the
predicted customer intent including at least one question among
a plurality of questions
are all steps which can be performed by a human mentally or with pen and
paper. Id. at 4--5. Further, the Examiner determines that the recited steps
are simply directed to collecting information, analyzing it, and displaying
certain results of the collection and analysis as in Electric Power Group. 4
Id. at 5; see also Ans. 3--4. Furthermore, the Examiner determines that
notion of managing customized survey generation and delivery is also
considered as a method of organizing human activity, a fundamental
economic practice, similar to the concept of "generating menus on a
computer" as in Apple Inc. v. Ameranth, Inc. (Fed. Cir. 2016). Final Act. 6.
The Examiner therefore submits:
Utilizing customer data to predict an intent and further
using that intent as input data to select/ determine a survey
design (from available questions and a design library (i.e., other
input data)) is simply executing an algorithm/function to find a
resulting value(s) based on input parameters; which is mere
manipulation or reorganization of data. It is noted that the mere
manipulation or reorganization of data does not satisfy the
transformation prong and does not provide significantly more
than an abstract idea. See Cybersource Corp. v. Retail
Decisions, Inc. (Fed. Cir. 2011).
Ans. 4.
4 Electric Power Group, LLC v. Alstom S.A., 830 F3d. 1350 (Fed. Cir.
2016)).
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Id.
Appellant's claimed invention does not pertain to the fact
pattern of McRO and DDR Holdings decisions/cases.
Appellant's claimed invention at most provides an
improvement, such as increased rate of response, to a business
model (and not a technology) of surveying customers by
incorporating customer intent/interests and probability
threshold for customer response into the generating of the
survey. Further, the claimed invention merely uses generic
computer/ computing technologies to perform the functions of
the invention.
At Alice step 2, the Examiner determines the claims do not recite
additional elements sufficient to amount to significantly more than the
abstract idea of managing customized survey generation and delivery. Final
Act. 7. Instead, the Examiner avers the claims merely implement the
abstract idea on generic devices, which are simply performing their well-
understood, routine, and conventional functions. Id. According to the
Examiner, merely labeling an algorithm ( e.g., statistical algorithm or
regression algorithm) that can be performed manually or on a generic
computer ( e.g. a learning machine) does not provide significantly more than
the abstract idea. Id. at 7-8. Likewise, the Examiner avers that providing
targeted content to customers based on customer data/attribute is a well-
known practice that predate Appellants' invention. Ans. 5. Further, the
Examiner determines that the recited functions of transmitting/ exchanging
data between well-known devices, locating a customer based on location of
the customer device (GPS tracking, triangulation), storing data in a database,
tracking browser activities of a person are insignificant extra solution
activities, which do not transform the identified abstract idea into patent
eligible subject matter. Final Act. 8. The Examiner therefore submits:
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The claims do not amount to "significantly more" than the
abstract idea because they neither ( 1) recite any improvements
to another technology or technical field; (2) recite any
improvements to the functioning of the computer itself; (3)
apply the judicial exception with, or by use of, a particular
machine; ( 4) effect a transformation or reduction of a particular
article to a different state or thing; ( 5) add a specific limitation
other than what is well-understood, routine and conventional in
the field; ( 6) add unconventional steps that confine the claim to
a particular useful application; nor (7) provide other meaningful
limitations beyond generally linking the use of the judicial
exception to a particular technological environment.
Id. at 7.
Appellants ' Contentions
Regarding the first step of the Alice inquiry, Appellants argue that
because the present claims in this appeal recite "a transformation of
customer data to a predicted customer intent which itself is transformed into
a customized survey design", they are not directed to an abstract idea. App.
Br. 7. Therefore, Appellants argue because the claimed customized survey
design is not a direct result of obtained data, and does not merely recite
displaying customer data (e.g., displaying web page access events) back to a
customer device, it is distinguishable from the claims at issue in Electric
Power Group. Id. Likewise, Appellants argue that the present claims are
distinguishable from Ameranth, which involves claims reciting a menu
consisting of a static menu ( not customized for any particular customer) with
categories displayable in a window of a graphical user interface (GUI),
whereas the "present claims recite a dual transformation involving machine
learning and statistical models used to transform customer data into another
state or thing ( e.g., a predicted customer intent) which is further transformed
into another state or thing (e.g., a customized survey design)". Id. at 8.
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Appellants further argue that even if the claimed customization of the
survey design implicated a judicial exception, it is patent-eligible because
(1) it effects the transformation or reduction of customer data ( e.g., predicted
customer intent) into a different state or thing ( e.g., a customized survey
design), (2) it improves computer-related technology by allowing computer
performance of a function not previously performed by a computer renders
it patent eligible, (3) it arranges non-conventional and non-generic elements
to result in an inventive concept. Id. at 8-9
Our Review
Applying the guidance set forth in the 2019 PEG, we determine
whether the Examiner has erred in rejecting the claims as being directed to
patent ineligible subject matter.
In revised step 1 of 2019 PEG, we consider whether the claimed
subject matter falls within the four statutory categories of patent-eligible
subject matter identified by 35 U.S.C. § 101: process, machine, manufacture,
or composition of matter. Because independent claim 6 recites a process
including a number of steps, claim 6 falls within the process category of
patent-eligible subject matter. Because independent claim 10 recites an
apparatus, claim 10 falls within a machine category of patent-eligible subject
matter.
In prong 1 of revised step 2A of the 2019 PEG, we determine whether
any judicial exception to patent eligibility is recited in the claims. The
guidance identifies three judicially-excepted groupings: ( 1) mathematical
concepts; (2) certain methods of organizing human activity such as
fundamental economic practices; and (3) mental processes. Independent
claim 6 recites, inter alia, the following limitations:
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( 1) obtaining any of machine learning and statistical models that
predict a customer intent as a function of customer data,
(2) wherein said machine learning and statistical models are trained to
identify associations between customer data and a pre-defined list
of possible customer intents including any of browsing for specific
product information, browsing for deals on a specific product,
simple browsing without intent of purchase, intent of purchasing a
specific product in immediate future, intent of purchasing a
product for a specific need in immediate future, trying to gather
information to solve a specific service related problem or a
problem associated with a specific product. .. a processor applying
any of the machine learning and the statistical models to predict a
customer intent based on the customer data said processor
identifying an ordered sequence of inputs in the customer data
associated with a web browsing history through a plurality of web
pages by the customer device and interaction history with the
plurality of web pages;
(3) applying, by said processor, the predicted customer intent and the
ordered sequence of inputs to proactively determine whether a
customized survey is to be delivered to said customer device;
At a high level, the claimed invention relates to an internet vendor
generating and delivering a customized survey to a customer based on the
analysis of collected customer data (browsing, purchasing) at the website.
We agree with the Examiner that to the extent these activities merely involve
collecting data, analyzing data, and displaying the result of the data analysis,
they can be performed mentally or with pen and paper, as in Electric Group,
and thereby involve a mental process. Ans. 3--4. Likewise, we agree with
the Examiner that to the extent that the cited functions merely involve using
the analysis of a commercial interaction or transaction between a consumer
and a merchant to determine whether to provide a customized survey to the
consumer, the claim also falls within the category of certain methods of
organizing human activity. Id. at 4. Accordingly, we agree with the
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Examiner that independent claim 6 recites the judicial exceptions of a mental
process and a method of organizing human activity. Id. Because
independent claim 10 recites similar limitations, claim 10 likewise recites
the cited judicial exceptions.
Having determined that the claims recite a judicial exception, our
analysis under the 2019 PEG (prong 2 of revised step 2A) turns now to
determining whether there are "additional elements that integrate the judicial
exception into a practical application." See MPEP § 2106.05(a}-(c), (e}-(h).
"Integration into a practical application" requires an additional element or a
combination of additional elements in the claim to 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 exception. 84 Fed. Reg. 53-55. In particular, we
determine whether the claimed invention provides a technological
improvement to the prior art process either by improving the technology
itself, by improving the functionality of the computer in performing not
previously performable functions. As detailed in the steps set forth above,
Appellants' independent claim 6 recites a processor generating a customized
survey as correlated with the predicted customer intent. Appellants'
Specification discusses problems arising in the context of static hard-coded
surveys that offer to each customer the same questions, the same look, and
feel resulting in low survey participation. Spec. 2: 1-11. The Specification
discusses the need to provide an improved type of survey tailored uniquely
for each particular customer based on the specific interactions of the
customer with the website as well as other factors ( e.g., customer journey,
browsing/purchase history, shopping interests and preferences) that are
unique to the customer. Id. at 2: 17-22. We find these computer-related
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limitations of independent claim 6, as set forth above, capture the
improvement discussed in the Specification, and are thereby sufficient to
integrate the judicial exception into a practical application. In particular, the
claim recitation of a computer's utilization of a machine learning or
statistical model to analyze a customer's browsing and purchasing activities
at a vendor's website to derive a numerical assessment, which is correlated
with the customer's predicted intent when compared to a predetermined
threshold, to tailor a survey around the specific purchasing and browsing
patterns of the customer integrates the judicial exception into a practical
application. While statistical modeling can be performed with pen and
paper, we agree with Appellants that the processor transforming the
collected customer data into customer's predicted intent to devise a specific
survey that varies from customer to customer is an improvement over the
prior art. App. Br. 9-11. As such, we agree with Appellants that the claim
recitation of "the processor generating a customized survey having
maximum weighted correlation with the predicted customer intent" is
directed to a technological improvement. Id. at 11 ( citing McRO, Inc. v.
Bandai Namco Games Am. Inc., 837 F.3d 1299, 1313-14 (Fed. Cir. 2016),
See MPEP § 2106.05(a); 84 Fed. Reg. 55.
Because claim steps 1-3, outlined above, provide a technical solution
to a technical problem as required by DDR Holdings; 5 we are persuaded by
5 DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014).
The Federal Circuit found DDR' s claims are patent-eligible under§ 101
because DDR 's claims: (1) do not merely recite "the performance of some
business practice known from the pre-Internet world" previously disclosed
in Bilski and Alice; but instead (2) provide a technical solution to a technical
problem unique to the Internet, i.e., a "solution ..... necessarily rooted in
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Appellants' argument that claims 6-13 are directed to an abstract idea that is
integrated into a practical application. App. Br. 12. Accordingly, we do not
address Step 2B of the Revised Guidance ( corresponding to step two of the
Alice/Mayo test). We, therefore, determine claims 6-13 are directed to
patent eligible subject matter.
For the foregoing reasons, we do not sustain the§ 101 rejection of
claim 6. We, likewise, do not sustain the rejection of claims 7-13, which
recite similar limitations.
DECISION
For the above reasons, we reverse the Examiner's patent ineligibility
rejection of claims 6-13.
REVERSED
computer technology in order to overcome a problem specifically arising in
the realm of computer networks." DDR, 773 F.3d at 1257.
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