Ex Parte Simmons et al

Patent Trials and Appeals Board

Jun 26, 2019

13537991 - (D) (P.T.A.B. Jun. 26, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/537,991 06/29/2012 Willard L. Simmons
127660 7590 06/28/2019
Behmke Innovation Group LLC
One International Place
Suite 1400
Boston, MA 02110
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.
0330002.CIP 7510
EXAMINER
SITTNER, MICHAEL J
ART UNIT PAPER NUMBER
3622
NOTIFICATION DATE DELIVERY MODE
06/28/2019 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):
patent@bigiplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte WILLARD L. SIMMONS and
SANDRO N. CATANZARO
Appeal2018-001729
Application 13/537,991
Technology Center 3600
Before JUSTIN BUSCH, CARL L. SILVERMAN, and JASON M. REPKO,
Administrative Patent Judges.
BUSCH, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellants appeal from the
Examiner's decision to reject claims 1-8, which constitute all the claims
pending in this application. We have jurisdiction over the pending claims
under 35 U.S.C. § 6(b). We affirm.
CLAIMED SUBJECT MATTER
Appellants' disclosure relates "to using historical and real-time data
associated with digital media and its use to adjust the pricing and delivery of
advertising media among a plurality of available advertising channels."
Spec. ,r 3. Appellants' claimed invention more specifically relates to
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targeting advertising placement in a channel using an advertising analytics
platforms. Spec., Abstract. Appellants' system creates that creates
"Synthetic User Identifiers" (SUIDs) using targeting parameters that define a
group of users reached through a particular media channel. Spec. ,r 233.
The SUID may identify a group of individuals or, in cases where the SUID
is defined using multiple parameters, it may describe a "unique individual."
Spec. ,r 233. Furthermore, "users may be tagged by several SUIDs," such as
one SUID representing targeting parameters that identify users who follow
sports content in one time slot and a second SUID representing targeting
parameters that identify users who follow news content in another time slot.
Spec. ,r 233. The disclosed methods and systems permit establishing "a
statistical link between online advertisements shown and actions achieved at
the advertiser's website." Spec. ,r 233. Claim 1 is the only independent
claim and is reproduced below:
1. A computer program product embodied in a non-transitory
computer readable medium that, when executing on one or more
computers, performs the steps of:
creating, at a server facility, a plurality of synthetic user
identifiers by associating, in a database, digital media content
with impression data for the digital media content, device
information regarding one or more devices via which the digital
media content was presented to one or more users, and contextual
information regarding interactions between the one or more users
and the media content, wherein the contextual information
further comprises categorization metadata for the digital media
content;
storing the synthetic user identifiers in the database,
wherein the database is accessible to the server facility and
separate from a client system;
analyzing the plurality of synthetic user identifiers for
correlations that indicate that a particular media type may
produce a predetermined rate of users performing a particular
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user action if the particular media type is presented to particular
media channel, wherein analyzing the plurality of synthetic user
identifiers comprises forming a matrix that maps the plurality of
synthetic user identifiers to user actions, wherein a first subset of
the plurality of synthetic user identifiers are channel-specific
synthetic user identifiers and a second subset of the plurality of
synthetic user identifiers are effect-specific synthetic user
identifiers; and
recommending, a particular piece of media content that is
associated with the media type for presentation via the particular
media channel, based on the analysis of the synthetic user
identifiers.
REJECTIONS 1
Claims 1-8 stand rejected under 35 U.S.C. § 101 as being directed to
ineligible subject matter. Final Act. 3-5.
Claims 1-8 stand rejected under 35 U.S.C. § 112, first paragraph, for
failing to comply with the written description requirement. Final Act. 5-11.
Claims 1-8 stand rejected under 35 U.S.C. § 103 as obvious in view
of Tangney2 (US 2011/0302025 Al; Dec. 8, 2011), Chang (US 7,406,434
Bl ; Jul. 29, 2008), and Kolve (US 2008/0215418 Al; Sept. 4, 2008). Final
Act. 10-22.
ANALYSIS
We have reviewed the Examiner's rejections in light of Appellants'
arguments that the Examiner erred. In reaching this decision, we have
considered all evidence presented and all arguments Appellants made.
1 Although only claims 1-8 are pending, the Examiner identifies claims 1-
18 and 1-13 as rejected under 35 U.S.C. § 101 and 35 U.S.C. § 112,
respectively.
2 Although we normally refer to patent applications using the first-named
inventor, we refer to this patent application as Tangney herein to be
consistent with how Appellants and the Examiner refer to this application.
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Arguments Appellants could have made, but chose not to make in the Briefs,
are deemed waived. See 37 C.F.R. § 4I.37(c)(l)(iv).
THE 35 U.S.C. § 101 REJECTION
The Rejection and Appellants' Arguments
The Examiner concludes claims 1-8 are directed to judicially
excepted subject matter. Final Act. 3-5; Ans. 3---6. Appellants argue the
§ 101 rejection of all claims as a group. Appeal Br. 5-18; Reply Br. 3-9.
Appellants assert claim 1 is not directed to an abstract idea. Appeal
Br. 7-12, 14--15; Reply Br. 3-10. Specifically, Appellants argue the
Examiner mischaracterized the claims, the claims are directed to a solution
rooted in computer technology, the Examiner's comparison of Appellants'
claims to the claims in SmartGene is improper, and the claims would not
pre-empt using the abstract idea. Appeal Br. 7-12, 14--17; Reply Br. 3-10.
Appellants also contend the claims recite significantly more than the abstract
idea. Appeal Br. 13-14, 17-18. In particular, Appellants argue the
Examiner's reliance on multiple judicial exceptions does not properly
consider the elements of the claim that are more than the judicial exception
itself and the Examiner ignores the creating SUIDs and forming a matrix
steps, which "present a technical methodology that goes well beyond the
constructed abstract idea alleged by the Examiner." Appeal Br. 13-14, 17-
18.
35 US.C. § 101 Framework
If a claim falls within one of the statutory categories of patent
eligibility (i.e., a process, machine, manufacture, or composition of matter),
we determine whether the claim is directed to one of the judicially
recognized exceptions (i.e., a law of nature, a natural phenomenon, or an
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abstract idea). Alice Corp. v. CLS Banklnt'l, 573 U.S. 208,217 (2014).
The Supreme Court's two-step framework guides our analysis of judicially-
excepted subject matter under 35 U.S.C. § 101. Alice, 573 U.S. at 217. In
addition, the Office recently published revised guidance for evaluating
subject matter eligibility under 35 U.S.C. § 101, specifically with respect to
applying the Alice framework. USPTO, 2019 Revised Patent Subject Matter
Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) ("Guidance").
As part of our inquiry, we "look at the 'focus of the claimed advance
over the prior art' to determine if the claim's 'character as a whole' is
directed to excluded subject matter." Affinity Labs of Tex., LLC v.
DIRECTV, LLC, 838 F.3d 1253, 1257 (Fed. Cir. 2016). The Guidance
directs us to address this inquiry using two prongs of analysis: (i) does the
claim recite a judicial exception ( e.g., an abstract idea), and (ii) if so, is the
judicial exception integrated into a practical application. 84 Fed. Reg. at 54.
Under the Guidance, if the judicial exception is integrated into a
practical application, the claim is patent eligible under§ 101. 84 Fed. Reg.
at 54--55. If the claim is directed to a judicial exception (i.e., the claim both
recites a judicial exception and fails to integrate the exception into a
practical application), we next determine whether the claim provides an
inventive concept, which includes determining whether any element, or
combination of elements, amounts to significantly more than the judicial
exception. Alice, 573 U.S. at 217; 84 Fed. Reg. at 56.
Our Analysis of the Rejection under 35 USC§ 101
Here, we conclude Appellants' claims recite an abstract idea. More
specifically, Appellants' claims are generally directed to analyzing the
effectiveness of advertising and recommending a targeted advertisement
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based on the analysis. This is consistent with how Appellants describe the
claimed invention. See Spec. ,r,r 4 ("The ability to measure advertising
campaign results is a priority of a majority of advertising systems."), 162
("The learning system may then identify a subset of advertising content from
the prior campaign that was relatively more successful that other of the
advertisements in the campaign, and recommend this advertising content for
future use on the basis of its higher expected value."). Analyzing
advertisement effectiveness and recommending a targeted advertisement
based on the analysis is a commercial interaction ( an advertising or
marketing activity) and, therefore, an abstract idea because it falls within the
certain method of organizing human activity category in our Guidance. See
84 Fed. Reg. at 52; see also Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709,
715 (Fed. Cir. 2014) (holding that claims reciting showing an advertisement
before delivering content were directed to an abstract idea); Morsa v.
Facebook, Inc., 77 F. Supp. 3d 1007, 1013 (C.D. Cal. 2014), ajf'd, 622 F.
App'x 915 (Fed. Cir. 2015) (concluding claims directed to targeted
advertising were ineligible abstract ideas without significantly more);
Quantum Stream Inc. v. Charter Commc 'ns, Inc., 309 F. Supp. 3d 171, 186
(S.D.N.Y. 2018) (concluding claims were "directed at the abstract idea of
customized advertising"); Intellectual Ventures I LLC v. Capital One Bank
(USA), 792 F.3d 1363, 1369-71 (Fed. Cir. 2015) (concluding that claims
directed to customizing media content based on navigation history or known
information about a user and contextual information were abstract).
Claim 1 is reproduced below, with the claim limitations that recite
elements of the abstract idea of analyzing the effectiveness of advertising
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and recommending a targeted advertisement based on the analysis
emphasized in italics:
1. A computer program product embodied in a non-transitory
computer readable medium that, when executing on one or more
computers, performs the steps of:
creating, at a server facility, a plurality of synthetic user
identifiers by associating, in a database, digital media content
with impression data for the digital media content, device
information regarding one or more devices via which the digital
media content was presented to one or more users, and
contextual information regarding interactions between the one
or more users and the media content, wherein the contextual
information further comprises categorization metadata for the
digital media content;
storing the synthetic user identifiers in the database,
wherein the database is accessible to the server facility and
separate from a client system;
analyzing the plurality of synthetic user identifiers for
correlations that indicate that a particular media type may
produce a predetermined rate of users performing a particular
user action if the particular media type is presented to particular
media channel, wherein analyzing the plurality of synthetic user
identifiers comprises forming a matrix that maps the plurality of
synthetic user identifiers to user actions, wherein a first subset of
the plurality of synthetic user identifiers are channel-specific
synthetic user identifiers and a second subset of the plurality of
synthetic user identifiers are effect-specific synthetic user
identifiers;
recommending, a particular piece of media content that is
associated with the media type for presentation via the particular
media channel, based on the analysis of the synthetic user
identifiers.
More particularly, analyzing the effectiveness of advertising and
recommending a targeted advertisement based on the analysis comprises
(i) obtaining and identifying data relevant to analyzing the success of an
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advertisement, such as impression data, device information, and contextual
information (i.e., the claimed creating step); (ii) analyzing the identified data
for correlations between media type and user actions (i.e., the claimed
analyzing step); and (iii) recommending new media content based on the
analysis (i.e., the claimed recommending step). Moreover, these data
collection and analysis steps constitute mental process because obtaining and
associating information, analyzing the obtained information, and providing a
recommendation are all steps that could be performed mentally. Our
Guidance identifies mental processes as another category of abstract ideas.
84 Fed. Reg. at 52; see also Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d
1350, 1353-54 (Fed. Cir. 2016) (explaining that "analyzing information by
steps people go through in their minds" is a mental process within the
abstract-idea category).
Because the claim recites a judicial exception, we next determine
whether the claim integrates the judicial exception into a practical
application. 84 Fed. Reg. at 54. To determine whether the judicial
exception is integrated into a practical application, we identify whether there
are "any additional elements recited in the claim beyond the judicial
exception(s)" and evaluate those elements to determine whether they
integrate the judicial exception into a recognized practical application. 84
Fed. Reg. at 54--55 (emphasis added); see also Manual of Patent Examining
Procedure ("MPEP") § 2106.05(a}-(c), (e}-(h) (9th ed. Rev. 08.2017,
Jan. 2018).
Here, there are no additional limitations recited beyond the judicial
exception itself to integrate the exception into a practical application.
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Similarly, the additional limitations recited in the dependent claims fail to
integrate the judicial exception into a practical application. More
particularly, the claims do not recite: (i) an improvement to the functionality
of a computer or other technology or technical field (see MPEP
§ 2106.05(a)); (ii) a "particular machine" to apply or use the judicial
exception (see MPEP § 2106.05(b )); (iii) a particular transformation of an
article to a different thing or state (see MPEP § 2106.05(c)); or (iv) any other
meaningful limitation (see MPEP § 2106.05(e)). See also 84 Fed. Reg.
at 55.
Regarding Appellants' arguments that the Examiner mischaracterized
the claims or that the claims are rooted in computer technology and
overcome a problem specifically arising in the field of payment networks,
Appeal Br. 8-12; Reply Br. 3-10, we disagree. Appellants' arguments focus
on the recited SUIDs, asserting the claims address a technical problem
rooted entirely in the Internet. Appeal Br. 8-12; Reply Br. 3-10.
Essentially, Appellants argue cookies permit recording user actions across
services and websites without maintaining a profile ( and sacrificing
anonymity) but"[ e ]ven with the use of cookies, 'it may not be possible or
desirable to identify individuals,"' noting that "TV, certain online media,
and other sources may not use cookie identifiers at all." Appeal Br. 8
( quoting Spec. ,r 229). Appellants conclude that cookies, therefore,
"represent an incomplete solution to the problem of user anonymity on the
Internet."
Initially, we note that "creating ... synthetic user identifiers" is not an
additional element that may integrate the abstract idea into a practical
application. 84 Fed. Reg. at 54--55. Rather, creating SUIDs is part of the
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identified abstract idea because it merely involves labeling the associations
created between the advertisement and the obtained data so that the data may
be identified and correlated in the analyzing step.
Moreover, to the extent these SUIDs could be considered an
additional element, the record does not support Appellants' conclusion.
Appellants do not identify, nor do we see, evidence suggesting SUIDs are an
alternative technology to cookies or some other improvement rooted in
computer technology to solve the problem of maintaining anonymity on the
Internet or distinguishing online users.
The claimed SUIDs are used when the use of cookies "is not possible
or desirable," but a need to provide "an advertising measurement solution"
still exists. Spec. ,r,r 4--5, 229. In other words, as Appellants acknowledge,
cookies solve the problem of distinguishing individuals while maintaining
user anonymity on the Internet. Spec. ,r,r 4, 229. The Specification clearly
describes the claimed systems and methods solve the problem of measuring
advertising success "across different channels (e.g., TV and online media)
... without the use of cookies." Spec. ,r 229 ( emphasis added). The fact that
the SUIDs apply to various channels including channels unrelated to the
Internet, indicates SUIDs do not solve the problem of anonymity on the
Internet. Spec. ,r 229. Although the claims restrict the type of content to
which these identifiers apply (i.e., "digital media content," which notably
would include digital television content), the claims do not change the nature
of the identifiers.
Appellants' system creates SUIDs using "a set of targeting parameters
defining a set of users reached through a specific channel." Spec. ,r 233. It
is true that the claimed SUIDs may not collect user-identifying information
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and, therefore, SUIDs may be independent of user identity. Spec. ,r,r 229--
230. In such embodiments, the SUIDs may identify "small [audience]
segments that may contain" one or more individuals by associating multiple
user characteristics, such as "a time of day ... , a geographic region, an
individual[s'] interest in a type of content" with the SUIDs. Spec. ,r,r 229--
230; but see Spec. ,r 233 ("A SUID may describe several individuals, but in
specific cases (by adding multiple parameters) it may describe a unique
individual" (emphasis added)). However, user anonymity is the reason
Appellants create these segments tracked by SUIDs, see Spec. ,r 5 ("it may
not be possible or desirable to identify individuals" by using cookies); the
SUIDs are not a solution to maintaining user anonymity while distinguishing
users.
Therefore, the record indicates SUIDs are not a technical solution to a
technological problem, but simply a label applied to segments of data based
on a set of target parameters (i.e., groups of data). The claims use the SUID
to keep track of the segments in order to solve a business problem of
analyzing advertising effectiveness via a media channel (e.g., the Internet,
TV, newspaper) without knowing, or needing to know, the identity of
individual users in order to recommend a particular advertisement to present
via a certain media channel. See Spec. ,r,r 229--234; Morsa, 77 F. Supp. 3d
at 1013 (quoting OpenTV, Inc. v. Neiflix Inc., 76 F. Supp. 3d 886, 893 (N.D.
Cal. 2014) ("The concept of gathering information about one's intended
market and attempting to customize the information then provided is as old
as the saying, 'know your audience."'). In other words, the evidence
suggests SUIDs merely help identify small segments of the advertising
audience to support the targeted advertising, even when using cookies is not
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possible or desirable. Morsa, 77 F. Supp. 3d at 1013 ("[T]argeted
advertising is [a well-known] concept, insofar as matching consumers with a
given product or service 'has been practiced as long as markets have been in
operation."').
The additional elements recited in claim 1 (i.e., the "computer
program product embodied in a non-transitory computer readable medium,"
the "server facility," the "database," and storing the SUIDs in the database)
are generic computer elements recited at a high level of generality that
amount to no more than applying the abstract idea on a computer and a basic
function of a computer to store data. 84 Fed. Reg. at 55; Bancorp Servs.,
L.L.C. v. Sun Life Assur. Co. of Can. (US.), 687 F.3d 1266, 1278 (Fed. Cir.
2012) (a computer "employed only for its most basic function ... does not
impose meaningful limits on the scope of those claims"). As explained in
OIP Technologies, Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1363 (Fed. Cir.
2015), "relying on a computer to perform routine tasks more quickly or more
accurately is insufficient to render a claim patent eligible." See also Alice,
573 U.S. at 224 ("use of a computer to create electronic records, track
multiple transactions, and issue simultaneous instructions" is not an
inventive concept).
By contrast, in DDR Holdings, the Federal Circuit determined "the
claimed solution amount[ ed] to an inventive concept for resolving [a]
particular Internet-centric problem," i.e., a challenge unique to the Internet.
DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1257-59 (Fed. Cir.
2014); see Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1151
(Fed. Cir. 2016) (noting that "[i]n DDR Holdings, we held that claims
'directed to systems and methods of generating a composite web page that
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combines certain visual elements of a 'host' website with content of a third-
party merchant' contained the requisite inventive concept"). The Federal
Circuit explained that the patent-eligible claims specified "how interactions
with the Internet are manipulated to yield a desired result ... that overrides
the routine and conventional sequence of events ordinarily triggered by the
click of a hyperlink." DDR Holdings, 773 F.3d at 1258. The court reasoned
that those claims recited a technological solution "necessarily rooted in
computer technology" that addressed a "problem specifically arising in the
realm of computer networks." DDR Holdings, 773 F.3d at 1257. Here,
unlike the claims at issue in DDR Holdings, Appellants' claims rely on
assigning an identifier to user segments across media channels without
needing to identify individual users.
Finally, Appellants contend the claims are not directed to an abstract
idea because they do not pre-empt all ways of providing guided
walkthroughs of a store. Appeal Br. 16-17. We disagree that the lack of
complete pre-emption demonstrates patent eligibility in this case. Claim 1
limits the identified abstract idea only by identifying the particular
information collected and analyzed. Elec. Power, 830 F.3d at 1353-54
(noting that the particular content of collected information does not change
its character as information in a way that would render the abstract idea
eligible).
Moreover, although "preemption may signal patent ineligible subject
matter, the absence of complete preemption does not demonstrate patent
eligibility. . . . Where a patent's claims are deemed only to disclose patent
ineligible subject matter under the A{ayo framework, as they are in this case,
preemption concerns are fully addressed and made moot." Ariosa
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Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015);
see also OIP Techs. v. Amazon.com, Inc., 788 F.3d 1359, 1362---63 (Fed. Cir.
2015) ("And [the fact] that the claims do not preempt all price optimization
or may be limited to price optimization in the e-commerce setting do [es] not
make them any less abstract.").
For at least the foregoing reasons, the claims do not integrate the
judicial exception into a practical application.
Because we determine the claims are directed to an abstract idea, we
analyze the claims under step two of Alice to determine whether there are
additional limitations that individually, or as an ordered combination, ensure
the claims amount to "significantly more" than the abstract idea. Alice, 573
U.S. at 217-18 (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc.,
566 U.S. 66, 72-73, 77-79 (2012)). As stated in the Guidance, many of the
considerations to determine whether the claims amount to "significantly
more" under step two of the Alice framework are already considered as part
of determining whether the judicial exception has been integrated into a
practical application. 84 Fed. Reg. at 56. Thus, at this point of our analysis,
we determine if the claims add a specific limitation, or combination of
limitations, that is not well-understood, routine, conventional activity in the
field, or simply appends well-understood, routine, conventional activities at
a high level of generality. 84 Fed. Reg. at 56.
As with the integration into a practical application analysis discussed
above, an inventive concept "cannot be furnished by the unpatentable law of
nature (or natural phenomenon or abstract idea) itself." Genetic Techs. Ltd.
v. Merial L.L.C., 818 F.3d 1369, 1376 (Fed. Cir. 2016); see also 84 Fed.
Reg. at 56; Alice, 573 U.S. at 217 ( explaining that, after determining a claim
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is directed to a judicial exception, "we then ask, '[w] hat else is there in the
claims before us?"' ( emphasis added, brackets in original)
(quoting Mayo, 566 U.S. at 78)). Instead, an "inventive concept" is
furnished by an element or combination of elements that is recited in the
claim in addition to the judicial exception and sufficient to ensure the claim
as a whole amounts to significantly more than the judicial exception
itself. Alice, 573 U.S. at 218-19 (citing Mayo, 566 U.S. at 72-73); see BSG
TechLLCv. BuySeasons, Inc., 899 F.3d 1281, 1290 (Fed. Cir. 2018)
( explaining that the Supreme Court in Alice "only assessed whether the
claim limitations other than the invention's use of the ineligible concept to
which it was directed were well-understood, routine and conventional,"
( emphasis added)).
Appellants' claims fail to recite specific limitations ( or a combination
of limitations) that are not well-understood, routine, and conventional.
Rather, the only additional elements (i.e., the "computer program product
embodied in a non-transitory computer readable medium," "server facility,"
"database," and the storing step) are generic computer components recited at
a high level of generality or a basic computer function, none of which
Appellants argue is beyond what was well-understood, routine, and
conventional in the art. See Spec. ,r,r 339-353; see also Mortgage Grader,
Inc. v. First Choice Loan Servs. Inc., 811 F.3d 1314, 1324--25 (Fed. Cir.
2016) (generic computer components such as an "interface," "network," and
"database" fail to satisfy the inventive concept requirement).
To the extent Appellants argue the creating SUIDs or forming a
matrix add significantly more, we note that these steps are part of the
ineligible abstract idea. "If a claim's only 'inventive concept' is the
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application of an abstract idea using conventional and well-understood
techniques, the claim has not been transformed into a patent-eligible
application of an abstract idea." BSG Tech, 899 F.3d at 1290-91 (citing
Berkheimerv. HP Inc., 881 F.3d 1360, 1370 (Fed. Cir. 2018)). "[I]t is
irrelevant whether [the claimed abstract idea] may have been non-routine or
unconventional as a factual matter ... narrowing or reformulating an
abstract idea does not add 'significantly more' to it." BSG Tech, 899 F.3d at
1291.
For the above reasons, Appellants have not persuaded us of Examiner
error, and we sustain the Examiner's rejection of claims 1-8 under 35 U.S.C.
§ 101.
THE 35 U.S.C. § 112 REJECTIONS
Rejection of Claims 1 and 8
The Examiner rejects claims 1-8 under 35 U.S.C. § 112 for failing to
comply with the written description requirement. Final Act. 6-11; Ans. 11-
14. Specifically, the Examiner rejects claim 1, and claims 2-8 due to their
dependency on claim 1, under 35 U.S.C. § 112, first paragraph, for three
different reasons, and the Examiner further rejects claim 2 under 35 U.S.C.
§ 112, first paragraph, for an additional reason.
The Examiner finds claim 1 recites a genus without sufficient written
description for its species because the claimed creating and analyzing steps
"define[] the boundaries of a genus," but the Specification fails to disclose
any algorithms or methods, which the Examiner considers the species, for
either creating or analyzing the SUIDs. Final Act. 6-7; Ans. 12-14. More
specifically, the Examiner finds the Specification describes only generic
variables to be used with undisclosed algorithms without defining the
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algorithms for creating the SUIDs. Final Act. 7; Ans. 12-14. The Examiner
also finds Figure 58 discloses associating users with advertising channels
without disclosing how the associations are performed or "how any specific
user is known to be identified through any particular association of data."
Final Act. 7; Ans. 12-13. Similarly, the Examiner finds the Specification
describes using a matric to calculate certain probabilities, but states "there
are an infinite number of ways" to perform the calculation, "each of which
may have different results," and the Specification fails to disclose any
methods or "how the differences in results affect the outcome of' the
invention." Final Act. 7-8; Ans. 13.
The Examiner also finds insufficient support for claim 1 's "particular
media type" or claim 1 's limitation that the "contextual information further
comprises categorization metadata." Final Act. 9-10. More specifically, the
Examiner determines the Specification describes advertisement types, but
because media is not limited to advertisements, "it appears a 'media type' is
something" different than an advertisement type. Final Act. 9. The
Examiner clarifies that the written description rejection of the media type
limitation relates to the entirety of the analyzing step because there is no
support for an analysis step "predicated upon an understanding of 'media
type' and how it may impact users performing user actions." Ans. 14.
Regarding the contextual information, the Examiner finds the Specification
discloses contextual data may be stored as categorization metadata, but the
Specification does not support contextual data comprises categorization
metadata. Final Act. 9-10.
Finally, the Examiner finds claim 2 's limitation that "the plurality of
synthetic user identifiers describe a single user, and wherein each of the
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plurality of synthetic user identifiers is associated with a different type of
media type and time period" is not supported for its full scope. Final
Act. 10-11. Specifically, the Examiner determines there is no support for a
system or method that "definitively knows whether a single SUID represents
a single user ( nor does [ the Specification] teach a set of criteria forming a
SUID which represents a unique user within some specific probability)
much less that ALL SUIDs represent a single user." Final Act. 10-11. The
Examiner finds that, although the SUID may include device information, the
Specification does not describe identifying a single user based on device
information. Final Act. 11.
Appellants argue the written description rejection is improper because
the Examiner made no finding regarding the level of skill in the art and
provided no evidence in support of the conclusion that a person of ordinary
skill in the art reviewing the Specification objectively would have
determined the inventor lacked possession of the claimed subject matter.
Appeal Br. 20. Appellants contend written description support for the
disputed limitations is found throughout the Specification. Appeal Br. 20;
see Appeal Br. 3--4 (citing Spec. ,r,r 227, 233-236, 239-240, 244--247, 260).
Appellants also argue no flowchart or algorithm is necessary to satisfy
35 U.S.C. § 112, first paragraph. Appeal Br. 21 (citing MPEP § 2163).
The Specification discloses using a set of targeting parameters, which
define "a set of users reached through a specific channel," to create the
SUIDs. Spec. ,r 233; see Spec. ,r 260 ( describing assigning an SUID to each
"grouping of users" that are described "through media, consumer, and
creative attributes that the users share"). An SUID may describe a group of
individuals or a unique individual and each individual may be part of
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multiple SUIDs. Spec. ,r,r 233 ( explaining that a user following sports
content from 3-6 PM in a geographic area may be part of, or "tagged by," an
SUID associated with that particular set of target parameters, and the same
user following news content from 7-10 PM in the same geographic area may
be part of a different SUID associated with that other set of target
parameters), 260 ("In the case of online, mobile, and video over IP content,
combined SUIDs may result in describing very few individuals or just one.
Simultaneous tagging of users with multiple SUIDs may be possible.").
More specifically, the Specification discloses creating SUIDs "by
associating an advertisement with the advertisement's impression data and at
least two of user, device and contextual information as derived from a
plurality of users' interactions with the advertisement." Spec. ,r 236.
Contextual data may include keywords in an advertisement, Uniform
Resource Locators (URLs) "associated with prior placements of the ad," or
other contextual data. Spec. ,r,r 87, 236. The contextual data may be stored
as categorization metadata related to a publisher's content, examples of
which include that one publisher's website relates to financial content and
another publisher's content relates to sports. Spec. ,r,r 87, 236 (providing
another example in which one publisher's website relates to music and
another publisher's website relates to automobiles). Exemplary types of
contextual information include "a device characteristic, an operation system,
an advertising medium type, a plurality of contextual information, a user
demographic, or some other type of contextual information." Spec. ,r 239.
The Specification also describes measuring the success of a particular
advertisement by, for example, determining whether a user performed a
certain action at the advertiser's website (e.g., "ad conversion, click-through,
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or some other behavior") each time the advertisement is viewed. Spec.
,r 233. The advertiser's website may record the various relevant target
parameters (from which SUIDs may be created), which allows Appellants'
systems and methods to "establish a statistical link between online
advertisements shown and actions achieved at the advertiser's website."
Spec. ,r 233.
After the SUIDs, which represent a user or group of users belonging
to a certain segment defined by a set of target parameters, are stored, the
claimed systems and methods analyze the SUIDs "for correlations that
indicate an advertisement type may produce a predetermined conversion rate
if presented to an advertisement channel" and recommend presenting a
targeted advertisement, which is associated with the advertisement type,
over that channel. Spec. ,r,r 236, 244.
One disclosed method of analyzing the SUIDs includes using a matrix
to assign an "effect achieved by mapping advertising results ... to the
SUIDs of the advertisements." Spec. ,r 245. One exemplary matrix uses "a
column for each possible 'Effect Synthetic User ID' (EID) and rows for each
Channel Synthetic User ID (CID)." Spec. ,r 245; see Spec. ,r 247, Fig. 41.
Compliance with the written description requirement is a question of
fact that is context sensitive. Ariad Pharms., Inc. v. Eli Lilly & Co., 598
F.3d 1336, 1351 (Fed. Cir. 2010) (en bane) ("[T]he level of detail required to
satisfy the written description requirement varies depending on the nature
and scope of the claims and on the complexity and predictability of the
relevant technology."). The test is whether the disclosure "conveys to those
skilled in the art that the inventor had possession of the claimed subject
matter as of the filing date." Ari ad, 598 F .3 d at 13 51. The Specification
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must adequately describe the claimed subject matter, but "the exact terms
need not be used in haec verba." Lockwood v. Am. Airlines, 107 F.3d 1565,
1572 (Fed. Cir. 1997).
Appellants' disclosure and the cited prior art indicate that a person of
ordinary skill in the art would have understood the inventor to be in
possession of each of the disputed limitations. When a claim limitation
involves elements that were "well known as of the filing date, the inventors"
need not describe the details of the known aspects. See En Ocean GmbH v.
Face Int'! Corp., 742 F.3d 955,961 (Fed. Cir. 2014) (citing Webster Loom
Co. v. Higgins, 105 U.S. 580, 586 (1881)); see also Webster Loom, 105 U.S.
at 586 ("That which is common and well known is as if it were written out in
the patent and delineated in the drawings"). "This enables patents to remain
concise statements of what is new, not cumbersome repetitions of what is
already known and readily provided by reference." EnOcean, 742 F.3d at
961---62 (quoting Pressure Prods. Med. Supplies, Inc. v. Greatbatch
Ltd., 599 F.3d 1308, 1324 (Fed. Cir. 2010)).
The recited step of creating SUIDs simply involves associating digital
media content (e.g., an advertisement) with impression data, device
information, and contextual information. The creating SUIDs step further
requires that the contextual information associated with the advertisement
"comprises categorization metadata." At least the Specification's
disclosures discussed above demonstrate that a person of ordinary skill in the
art would have understood the inventor to be in possession of the idea of
associating an advertisement with impression data, device information, and
contextual information. See Spec. ,r 236 ("embodiments ... may provide
methods ... for creating ... a plurality of [SUIDs] by associating an
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advertisement with the advertisement's impression data and at least ...
device, and contextual information as derived from a plurality of user's
interactions with the advertisement").
Moreover, the Specification also supports possession of the idea that
contextual information comprises categorization metadata for the
advertisement. Metadata is simply data about other data. Appellants'
claimed categorization metadata, therefore, is simply data about how the
advertisement is categorized. The Specification discloses an example in
which the categorization metadata records the fact that a publisher's content
relates to sports. Spec. ,r 87. In such an example, it is possible that the
contextual information regarding interactions between a user and the
advertisement may include the fact that the advertising content could be
categorized as related to sports. Therefore, although the Specification
discloses that contextual data may be stored as categorization metadata, a
person of ordinary skill in the art would have understood the inventor to be
in possession of the claimed relationship that the contextual information
comprises categorization metadata because the categorization metadata may
simply be a description of the type of content of the advertisement with
which users interact.
Similarly, the analyzing SUIDs step simply requires analyzing
correlations indicating a media type results in a certain user action at a
predetermined rate when the advertisement is presented using a certain
media channel ( e.g., online banner advertising, television commercials, or
radio spots). The analyzing step also requires "forming a matrix that maps
the" SUIDs, which include both channel-specific and effect-specific SUIDs,
to user actions. Again, at least the Specification's disclosures discussed
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above demonstrate that a person of ordinary skill in the art would have
understood the inventor to be in possession of the idea of analyzing the
SUIDs (i.e., the user segments) for correlations indicating a particular media
type presented over a particular media channel provides certain results ( a
predetermined rate of users performing an action). See Spec. ,r,r 233 ("it
may be possible to establish a statistical link between online advertisements
shown and actions achieved at the advertiser's website," emphasis added),
23 6 (The SUIDs "may be analyzed for correlations that indicate an
advertisement type may produce a predetermined conversion rate if
presented to an advertisement channel."), 244--24 7 ( describing an exemplary
matrix), Fig. 41 ( depicting an exemplary matrix and operations).
Moreover, as the Examiner notes, an advertisement is a type of media
and the Specification supports analyzing SUIDs for correlations that a
particular advertisement type produces certain results. Final Act. 9; see
Spec. ,r 236. Thus, because an advertisement is a media type, it follows that
an advertisement type is a particular type of media type. Additionally,
although the Specification does not call different types of content a "media
type," a person of ordinary skill in the art would have understood that an
SUID representing a segment of users in a region who watch sports during
one time period would relate to a different media type than an SUID
representing a segment of users in that region who watch news during a
different time period. Because the SUIDs may account for this information,
and the Specification describes identifying conversion rates ( and other
actions) based on the SUIDs, we disagree that the Specification fails to
demonstrate possession of analyzing SUIDs for correlations indicating
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particular media types produce particular actions. See, e.g., Spec. ,r,r 233,
236,240.
We also agree with Appellants that the Examiner erred in rejecting
claim 2 's limitation related to the SUIDs describing a single user and each
SUID is associated with a different media type and time period for lacking
written description support. At least the Specification's disclosures
discussed above demonstrate that a person of ordinary skill in the art would
have understood the inventor to be in possession of a plurality of SUIDs
describing a single user where each of the plurality of SUIDs is associated
with a different media type and time period. In particular, the Specification
describes an example where a single user may be "tagged" by several SUIDs
because the user follows sports content from 3-6 PM and news content from
7-lOPM and each pair of media type and time. See Spec. ,r 233. Finally, the
claim merely requires all of the recited plurality of SUIDS describe a single
user. Thus, in the case where the recited plurality of SUIDs consists of only
two SUIDs, claim 1 merely requires having two SUIDs that describe a single
user.
Thus, we agree with Appellants that the Specification provides
sufficient written description support under 35 U.S.C. § 112, first paragraph,
for the creating SUIDs and analyzing SUIDs steps, including the limitations
related to the categorization metadata and the media type, recited in claim 1.
We also agree with Appellants that the Specification provides sufficient
written description support under 35 U.S.C. § 112, first paragraph, for the
limitation relating to the SUIDs describing a single user.
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THE 35 U.S.C. § 103 REJECTIONS
The Examiner finds the combination of Tangney, Chang, and Kolve
teaches or suggests every limitation recited in claims 1-8. Final Act. 11-23.
Of particular note regarding claim 1, the Examiner finds: Tangney teaches
or suggests the creating and storing steps and the analyzing step, except
Tangney does not teach or suggest using a matrix to map SUIDs to user
actions or the existence of channel-specific and effect-specific SUIDs;
Chang teaches or suggests the portions of the analyzing step Tangney does
not teach; and Kolve teaches or suggests the recommending step. Final
Act. 12-14 (citing Tangney ,r,r 58, 60-62, 66-69, 83,221, 437--438, 464--
465, 523, Fig. 9A), 15-17 (citing Chang 6:5-27, 6:65-7:30, 10:45-57,
14:20-30, 15:1-25, 163), 18 (citing Kolve ,r,r 34, 40); Ans. 15 (citing
Tangney ,r,r 51, 58, 60-62, 67----69). The Examiner also provides a rationale
for combining the cited teachings from Tangney, Chang, and Kolve. Final
Act. 17-19.
Appellants argue claims 1-8 as a group. See Appeal Br. 24--28. We
select independent claim 1 as representative of all pending claims-i.e.,
claims 1-8. 37 C.F.R. § 4I.37(c)(l)(iv).
Appellants argue "Tangney describes data relating to a user and to
presented content," whereas embodiments of Appellants' invention create
SUIDs to enable analyzing sets of users reached through certain media
channels for correlations to user actions in response to the presented media
for situations in which it is not possible or desirable to distinguish
individuals. Appeal Br. 25-26. Appellants assert Tangney fails to teach or
suggest the recited "synthetic user identifiers" and the recited analyzing the
SUIDs step. Appeal Br. 26-27. Appellants note the Examiner
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acknowledges Tangney fails to disclose the use of a matrix and the
disclosure of channel-specific and effect-specific SUIDs and argues Chang
does not overcome Tangney's deficiencies because Chang fails to describe
creating SUIDs or analyzing SUIDs for the recited correlations. Appeal
Br. 27. Finally, Appellants argue Kolve also fails to teach or suggest
creating SUIDs. Appeal Br. 27-28.
Claim 1 recites creating SUIDs "by associating ... digital media
content with impression data ... device information ... and contextual
information." In other words, as discussed above, Appellants' SUIDs are
merely labels used to identify segments of users who have received, or may
be targeted to receive, certain media content. See, e.g., Spec. ,r,r 229-230,
233. Tangney teaches tracking and storing information in a database related
to advertisements presented to users and user interactions with the
advertisements. Tangney ,r,r 51, 53, 57-58. Tangney also tracks, associates,
and stores other information, such as keywords, prior user interactions,
device information, and "conditions under which each advertisement was
selected for presentation." Tangney ,r,r 48, 60-62, 67. "Data for each
impression can also be stored so that each impression and user selection can
be associated with (i.e., stored with references to and/or indexed according
to) the advertisement that was selected and/or the targeting keyword that
caused the advertisement to be selected for presentation." Tangney ,r 48
( emphasis added).
Tangney, therefore, at least suggests associating impression and other
data with a presented advertisement and storing that information in a
database. Because (i) Tangney suggests performing the associating step and
storing the associations in a database and (ii) the recited SUIDs are
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identifiers created by that associating step, Tangney at least suggests
creating these identifiers as part of storing the created associations so they
can be accessed from the database. For these reasons and on this record, we
are not persuaded the Examiner erred.
To the extent Appellants argue neither Chang nor Kolve teach
creating the SUIDs, such an argument is not responsive to the Examiner's
rejection, which does not find either Chang or Kolve teaches creating the
SUIDs. The Examiner finds Tangney creates and analyzes the SUIDs and
Chang teaches another method of analyzing similar data, and the Examiner
concludes adding Chang's matrix analysis to Tangney merely requires
combining known techniques to yield predictable results. See Final Act. 15-
17.
For the above reasons, we are not persuaded the Examiner erred in
rejecting representative claim 1 as obvious in view of the combination of
Tangney, Chang, and Kolve. For the same reasons, we are not persuaded the
Examiner erred in rejecting claims 2-8.
SUMMARY
We sustain the Examiner's decision to reject claims 1-8 under
35 U.S.C. § 101.
We do not sustain the Examiner's decision to reject claims 1-8 under
35 U.S.C. § 112, first paragraph.
We sustain the Examiner's decision to reject claims 1-8 under
35 U.S.C. § 103.
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DECISION
Because we affirm at least one ground of rejection with respect to
each claim on appeal, the Examiner's decision to reject claims 1-8 is
affirmed. See 37 C.F.R. § 41.50(a)(l ).
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
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