MICROSOFT TECHNOLOGY LICENSING, LLC

Patent Trials and Appeals Board

Mar 30, 2022

2021003126 (P.T.A.B. Mar. 30, 2022)

UNITED STATES PATENT AND TRADEMARK OFFICE 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 APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 15/879,406 01/24/2018 John Lincoln DeMARIS MS1-9158US 4058 142810 7590 03/30/2022 Newport IP, LLC 1400 112th Ave SE Suite 100 Bellevue, WA 98004 EXAMINER SCHEUNEMANN, RICHARD N ART UNIT PAPER NUMBER 3624 NOTIFICATION DATE DELIVERY MODE 03/30/2022 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): docketing@newportip.com eofficeaction@appcoll.com scott@newportip.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte JOHN LINCOLN DeMARIS, DANIEL FRIEL HOLME, CHRISTOPHER FRANCIS McNULTY, and IAN DAVID STORY ____________ Appeal 2021-003126 Application 15/879,406 Technology Center 3600 ____________ Before MURRIEL E. CRAWFORD, BIBHU R. MOHANTY, and ROBERT J. SILVERMAN, Administrative Patent Judges. CRAWFORD, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant seeks our review under 35 U.S.C. § 134(a) of the Examiner’s final rejection of claims 1, 2, 4, and 6-22. We have jurisdiction under 35 U.S.C. § 6(b). SUMMARY OF DECISION We AFFIRM. THE INVENTION Appellant claims a method of intelligent targeting of files needing attention to effectively prompt the worker to view the document. (Spec. ¶ 1, Title). Claim 1 is representative of the subject matter on appeal. 1. A computer-implemented method for intelligent targeting Appeal 2021-003126 Application 15/879,406 2 of files needing attention for the purpose of increasing a percentage of a plurality of files interacted with by a group of users, the method comprising: receiving data indicating whether each of the group of users has interacted with each of the plurality of documents, wherein a user of the group of users is determined to have interacted with a document of the plurality of documents based on a determination, made by an application that opened the document, that the user scrolled through the document at a reading pace; determining the percentage of documents that each of the group of users has interacted with based on the received data; calculating an average of the percentages; calculating a standard deviation of the percentages; identifying a user of the group of users that has interacted with a smaller percentage of the plurality of documents than a defined threshold; selecting a channel over which to promote a document that the user has not interacted with, wherein the channel includes a location within an application of a plurality of applications used by the user, and wherein the channel is selected in part based on application usage data captured by the plurality of applications that indicates how much time the user spent in each of the plurality of applications; displaying in the location within the application of the plurality of applications a list of links including the document that the user has not interacted with; receiving an activation of the link; and opening the document that the user has not interacted with in response to the activation of the link. Appeal 2021-003126 Application 15/879,406 3 THE REJECTION Claims 1, 2, 4, and 6-22 are rejected under 35 U.S.C. § 101 as directed to a judicial exception without significantly more. ANALYSIS 35 U.S.C. § 101 REJECTION We will sustain the rejection of claims 1, 2, 4 and 6-22 under 35 U.S.C. § 101. The Supreme Court set forth a framework for distinguishing patents that claim laws of nature, natural phenomena, and abstract ideas from those that claim patent-eligible applications of those concepts. First, . . . determine whether the claims at issue are directed to one of those patent-ineligible concepts. . . . If so, . . . then ask, “[w]hat else is there in the claims before us?” . . . To answer that question, . . . consider the elements of each claim both individually and “as an ordered combination” to determine whether the additional elements “transform the nature of the claim” into a patent-eligible application. . . . [The Court] described step two of this analysis as a search for an “‘inventive concept’”-i.e., an element or combination of elements that is “sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the [ineligible concept] itself.” Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 573 U.S. 208, 217-218 (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 72-73 (2012)) (citations omitted). To perform this test, we must first determine whether the claims at issue are directed to a patent-ineligible concept. The Federal Circuit has explained that “the ‘directed to’ inquiry applies a stage-one filter to claims, considered in light of the [S]pecification, based on whether ‘their character as a whole is directed to Appeal 2021-003126 Application 15/879,406 4 excluded subject matter.’” See Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016) (quoting Internet Patents Corp., 790 F.3d 1343, 1346 (Fed. Cir. 2015)). It asks whether the focus of the claims is on a specific improvement in relevant technology or on a process that itself qualifies as an “abstract idea” for which computers are invoked merely as a tool. See id. at 1335-36. In so doing we apply a “directed to” two prong test: 1) evaluate whether the claim recites a judicial exception, and 2) if the claim recites a judicial exception, evaluate whether the judicial exception is integrated into a practical application. 2019 Revised Patent Subject Matter Eligibility Guidance, 84 FR 50, pp. 50-57 (Jan. 7, 2019) (“Guidance”). The Examiner determines that the claims are “directed to targeting files to users.” (Final Act. 4). The Examiner determines that the claims recite a method of organizing human activity and can be performed mentally or using pen and paper. (Final Act. 2, 4). The Examiner finds that the general purpose computer is recited for implementation and that the judicial exceptions recited are not integrated into a practical application and the claims do not include additional elements that are significantly more than the abstract idea. (Id. at 5-6). The Specification discloses that the goal of the invention is to improve engagement across collections of documents in work environments. (Spec. ¶ 1). The challenge met by the invention is to effectively prompt the worker to view the document. We thus agree with the Examiner’s findings that claim 1 is directed to controlling the behavior of persons concerning reviewing documents. Also, we agree with the Examiner that the steps of “receiving data,” “determining the percentage,” “calculating an average,” “calculating a standard deviation,” “identifying a user,” “selecting a channel,” and “displaying in the location” Appeal 2021-003126 Application 15/879,406 5 constitute “analyzing information by steps people go through in their minds, or by mathematical algorithms, without more, as essentially mental processes within the abstract-idea category.” Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1354 (Fed. Cir. 2016); see also buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355 (Fed. Cir. 2014) (claims directed to certain arrangements involving contractual relations are directed to abstract ideas). Thus, we find that claim 1 recites the judicial exceptions of a method of organizing human activity and in the alternative, a mental process. Turning to the second prong of the “directed to test,” claim 1 requires a “computer implemented method.” This recitation does not impose “a meaningful limit on the judicial exception, such that the claim is more than a drafting effort designed to monopolize the judicial exception.” Guidance at 53. We find no indication in the Specification, nor does Appellant directs us to any indication, that the operations recited in claim 1 invoke any inventive programming, require any specialized computer hardware or other inventive computer components, i.e., a particular machine, or that the claimed invention is implemented using other than generic computer components to perform generic computer functions. See DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1256 (Fed. Cir. 2014) (“[A]fter Alice, there can remain no doubt: recitation of generic computer limitations does not make an otherwise ineligible claim patent-eligible.”). We also find no indication in the Specification that the claimed invention effects a transformation or reduction of a particular article to a different state or thing. Nor do we find anything of record, short of attorney argument, that attributes any improvement in computer technology and/or functionality to the claimed invention or that otherwise indicates that the claimed invention integrates the abstract idea into a “practical application,” as that phrase is used in the revised Appeal 2021-003126 Application 15/879,406 6 Guidance. See Guidance, 84 Fed. Reg. at 55. In this regard, the recitation does not effect an improvement in the functioning of a computer or other technology, does not recite a particular machine or manufacture that is integral to the claims, and does not transform or reduce a particular article to a different state or thing. Id. Claim 1 is directed to judicial exceptions that are not integrated into a practical application and thus claim 1 is directed to an “abstract idea.” Turning to the second step of the Alice analysis, because we find that claim 1 is directed to abstract ideas, claim 1 must include an “inventive concept” in order to be patent-eligible, i.e., there must be an element or combination of elements that is sufficient to ensure that the claim in practice amounts to significantly more than the abstract idea itself. See Alice, 573 U.S. at 217-18 (alteration in original) (quoting Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 72-73 (2012)). The introduction of a computer into claim 1 does not alter the analysis at Alice step two. [T]he mere recitation of a generic computer cannot transform a patent- ineligible abstract idea into a patent-eligible invention. Stating an abstract idea “while adding the words ‘apply it’” is not enough for patent eligibility. Nor is limiting the use of an abstract idea “‘to a particular technological environment.’” Stating an abstract idea while adding the words “apply it with a computer” simply combines those two steps, with the same deficient result. Thus, if a patent’s recitation of a computer amounts to a mere instruction to “implemen[t]” an abstract idea “on . . . a computer,” that addition cannot impart patent eligibility. This conclusion accords with the preemption concern that undergirds our § 101 jurisprudence. Given the ubiquity of computers, wholly generic computer implementation is not generally the sort of “additional featur[e]” that provides any “practical assurance that the process is more than a drafting effort designed to monopolize the [abstract idea] itself.” Appeal 2021-003126 Application 15/879,406 7 Alice, 573 U.S. at 223-24 (alterations in original) (citations omitted). Instead, “the relevant question is whether claim 1 here does more than simply instruct the practitioner to implement the abstract ideas . . . on a generic computer.” Id. at 225. It does not. Taking the claim elements separately, the function performed by the computer at each step of the process is purely conventional. Using a computer to retrieve, select, and apply decision criteria to data and modify the data as a result amounts to electronic data query and retrieval-one of the most basic functions of a computer. All of these computer functions are well-understood, routine, conventional activities previously known to the trading industry. See Elec. Power Grp., 830 F.3d at 1354; see also In re Katz Interactive Call Processing Patent Litig., 639 F.3d 1303, 1316 (Fed. Cir. 2011) (“Absent a possible narrower construction of the terms ‘processing,’ ‘receiving,’ and ‘storing,’ . . . those functions can be achieved by any general purpose computer without special programming”). In short, each step does no more than require a generic computer to perform generic computer functions. As to the data operated upon, “even if a process of collecting and analyzing information is ‘limited to particular content’ or a particular ‘source,’ that limitation does not make the collection and analysis other than abstract.” SAP Am. Inc. v. InvestPic, LLC, 890 F.3d 1016, 1022 (Fed. Cir. 2018). Considered as an ordered combination, the computer components of Appellant’s claims add nothing that is not already present when the steps are considered separately. The sequence of data reception-analysis-access/display is equally generic and conventional or otherwise held to be abstract. See Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed. Cir. 2014) (sequence of receiving, selecting, offering for exchange, display, allowing access, and receiving Appeal 2021-003126 Application 15/879,406 8 payment recited an abstraction), Inventor Holdings, LLC v. Bed Bath & Beyond, Inc., 876 F.3d 1372, 1378 (Fed. Cir. 2017) (holding that sequence of data retrieval, analysis, modification, generation, display, and transmission was abstract), Two- Way Media Ltd. v. Comcast Cable Commc’ns, LLC, 874 F.3d 1329, 1339 (Fed. Cir. 2017) (holding sequence of processing, routing, controlling, and monitoring was abstract). The ordering of the steps is, therefore, ordinary and conventional. Claim 1 does not, for example, purport to improve the functioning of the computer itself. As we stated above, claim 1 does not effect an improvement in any other technology or technical field. The Specification spells out different generic equipment and parameters that might be applied using this concept and the particular steps such conventional processing would entail based on the concept of information access under different scenarios. (See, e.g., Spec. ¶ 70). Thus, claim 1 at issue amounts to nothing significantly more than instructions to apply the abstract idea of targeting files to users. Under our precedents, that is not enough to transform an abstract idea into a patent-eligible invention. See Alice, 573 U.S. at 226. We have reviewed all the arguments (Appeal Br. 21-33; Reply Br. 6-22) Appellant has submitted concerning the patent eligibility of the claims before us that stand rejected under 35 U.S.C. § 101. We find that our analysis above substantially covers the substance of all the arguments, which have been made. But, for purposes of emphasis, we will address various arguments in order to make individual rebuttals of same. We are not persuaded of error on the part of the Examiner by Appellant’s argument that a person is not recited in the claims. (Appeal Br. 14; Reply Br. 1). As an initial matter, we note that the Specification discloses that it is indeed a person that is disclosed as performing the steps of the claim. (Spec. ¶5, 6). In Appeal 2021-003126 Application 15/879,406 9 addition, as the Federal Circuit has made clear, “the basic character of a process claim drawn to an abstract idea is not changed by claiming only its performance by computers, or by claiming the process embodied in program instructions on a computer readable medium.” See CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1375 (Fed. Cir. 2011) (citing In re Abele, 684 F.2d 902 (CCPA 1982)). We are not persuaded of error on the part of the Examiner by Appellant’s argument that scrolling is not a technique applicable to books, magazines and other printed documents and, therefore, making a determination based on scroll rate is an improvement to the software application. (Appeal Br. 15; Reply Br. 8). We agree with the Examiner’s response to this argument found on pages 3 to 4 of the Answer and adopt same as our own. Specifically, we agree that claim 1 does not disclose a scrolling step but rather receiving data based on a determination that a user scrolled through the document. As such, all that is required in claim 1 is receiving data that has been previously determined by an application that opened the document that the user scrolled through the document. No details of the scrolling are recited. We are not persuaded of error on the part of the Examiner by Appellant’s argument that scrolling through the plurality of documents recited in claim 1 generates a volume and type of data that could not practically be processed in the human mind because as we stated above, claim 1 does not positively recite scrolling and in addition, claim 1 does not recite a large volume of documents but rather is broad enough to cover two documents of any page number. We do not agree with Appellant that claim 1 describes modifying the user interface of a computing device by selecting a location of an application of a plurality of applications from which to display a link to a document and this constitutes an improvement to the computing device. (Appeal Br. 16-17). We do not understand, and Appellant does not explain how determining where a link is to Appeal 2021-003126 Application 15/879,406 10 be displayed is an improvement to the computing device. We agree with the Examiner that as the Specification discloses at paragraph 67 that the channel where the link is displayed could be a webpage or an email, there is no improvement to the computing device itself by displaying a link on a webpage or an email. Appellant argues that the method improves upon the functionality of the computing device because (1) selecting a channel for displaying the link that includes locations within an application is a novel technique for grabbing the attention of a user of a computing device, (2) existing techniques do not select a channel based on application usage data and (3) claim 1 recites a novel user interface. (Appeal Br. 17, 23). To the extent Appellant maintains that the limitations of claim 1 necessarily amount to “significantly more” than an abstract idea because the claimed apparatus is allegedly patentable over the prior art, Appellant misapprehend the controlling precedent. Although the second step in the Alice/Mayo framework is termed a search for an “inventive concept,” the analysis is not an evaluation of novelty or non-obviousness, but rather, a search for “‘an element or combination of elements that is sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the [ineligible concept] itself.”’ Alice, 573 U.S. at 217. A novel and nonobvious claim directed to a purely abstract idea is, nonetheless, patent-ineligible. See Mayo, 566 U.S. at 90. We are not persuaded of error on the part of the Examiner by Appellant’s argument that claim 1 is not analogous to the examples of managing personal behavior listed in MPEP 2106.04(a)(2)(II)(C). (Appeal Br. 17). We agree with the Examiner’s response to this argument found on page 5 of the Answer and adopt same as our own. Appeal 2021-003126 Application 15/879,406 11 Appellant argues that the determining, calculating and identifying steps of claim 1 integrate any judicial exception into a practical application. (Appeal Br. 22). However, the analysis of whether a recited judicial exception is integrated into a practical application examines whether the claim recites additional elements that integrate the judicial exception into a practical application. Guidance, 84 Fed. Reg. 54. As such, the analysis focuses on the additional elements. This argument is not persuasive because it focuses on steps that are part of the abstract idea not on the additional elements. Similarly, Appellant argues that the selecting step and the displaying step improve the discoverability of the documents and are other than what is well- understood, routine and conventional activity in the field. (Appeal Br. 23, 26; Reply Br. 17). This argument, like the one above, focuses on steps that are part of the abstract idea itself rather than additional elements that are examined to determine whether the additional elements are significantly more than an abstract idea that is recited. Again, no technological implementation details are recited. The improvements come from the conceptual idea itself and flow from performing an abstract idea in conjunction with a well-known computer elements. BSG Tech LLC v. BuySeasons, Inc., 899 F.3d 1281, 1288 (Fed. Cir. 2018). It could not be clearer from Alice, that under step two of the Mayo/Alice framework, the elements of each claim are considered both individually and “as an ordered combination” to determine whether the additional elements, i.e., the elements other than the abstract idea itself, “transform the nature of the claim” into a patent-eligible application. Alice Corp., 573 U.S. at 217 (internal quotations and citation omitted); see Mayo, 566 U.S. at 72-73 (requiring that “a process that focuses upon the use of a natural law also contain other elements or a combination of elements, sometimes referred to as an ‘inventive concept,’ sufficient to ensure Appeal 2021-003126 Application 15/879,406 12 that the patent in practice amounts to significantly more than a patent upon the natural law itself” (emphasis added) (internal citation omitted)). In other words, the inventive concept under step two of the Mayo/Alice test cannot be the abstract idea itself: “It is clear from Mayo that the ‘inventive concept’ cannot be the abstract idea itself, and Berkheimer . . . leave[s] untouched the numerous cases from this court which have held claims ineligible because the only alleged ‘inventive concept’ is the abstract idea.” Berkheimer v. HP Inc., 890 F.3d 1369, 1374 (Fed. Cir. 2018) (Moore, J., concurring); see also BSG Tech LLC, at 1290 (“It has been clear since Alice that a claimed invention’s use of the ineligible concept to which it is directed cannot supply the inventive concept that renders the invention ‘significantly more’ than that ineligible concept.”) (internal citation omitted). As such, this argument is not persuasive of error on the part of the Examiner. In regard to claim 7, Appellant argues that the step of “modifying a user interface of the application to display, in the location . . . a list of links” is not a step that is well-understood, routine and conventional. (Appeal Br. 28). However, like the arguments above, Appellant focuses on the abstract idea itself rather than on the additional elements to argue that the claim recites significantly more than the abstract ideas recited. As such, this argument is not persuasive. In regard to claim 15, Appellant argues that the recitation of “prioritize the document that the user has not interacted with among other documents” is not well-understood, routine and conventional. (Appeal Br. 29). Once again, this argument focuses on the abstract idea rather than the additional elements. Appellant argues that the selection of a channel and addition of a channel to a file list as is done in claims 9 and 11 to 13 in unconventional locations and prioritizing documents based on author interaction as in claim 21 integrates the Appeal 2021-003126 Application 15/879,406 13 alleged abstract idea into a practical application and amounts to significantly more than the alleged abstract idea. (Appeal Br. 31-32). These arguments are not persuasive for the same reason, i.e. Appellant relies on the abstract idea rather than the additional elements. We do not agree with Appellant that the Examiner erred in determining that the claimed method manages behavior for targeting media files for business purposes because increasing a percentage of a plurality of files interacted with the group of users has nothing to do with business practice but would be useful for schools, churches, politicians, journalists and medical professionals. (Reply Br. 14). We note that not all of these venues are non-business venues as medicine, journalism and churches may be considered businesses. In any case, while the method of claim 1 may be used by non-businesses, the invention is specifically disclosed as being used with workers. (Spec. ¶¶ 1-2). In addition, because the method is used to controlling the behavior of persons, the method is a certain method of organizing human activity whether used by a business or other entity. We find untimely Appellant’s argument in the Reply Brief related to claim 14 and that the claims are analogous to the claims in Example 37 of the Guidance. (Reply Br. 15, 20-21). In the absence of a showing of good cause by Appellant, we decline to consider an argument raised for the first time in the Reply Brief, as the Examiner has not been provided a chance to respond. See 37 C.F.R. § 41.41(b)(2) (2012); In re Hyatt, 211 F.3d 1367, 1373 (Fed. Cir. 2000) (noting that an argument not first raised in the brief to the Board is waived on appeal); Ex parte Nakashima, 93 USPQ2d 1834, 1837 (BPAI 2010) (informative) (explaining that arguments and evidence not timely presented in the principal brief will not be considered when filed in a reply brief, absent a showing of good cause explaining why the argument could not have been presented in the principal brief); Ex parte Appeal 2021-003126 Application 15/879,406 14 Borden, 93 USPQ2d 1473, 1477 (BPAI 2010) (informative) (“Properly interpreted, the Rules do not require the Board to take up a belated argument that has not been addressed by the Examiner, absent a showing of good cause.”). Appellant has provided no showing of good cause. In view of the foregoing, we will sustain the rejection as it is directed to claims 1, 9, 13, and 15. We will also sustain the rejection as it is directed to the remaining claims because Appellant has not argued the separate eligibility of these claims. CONCLUSIONS OF LAW We conclude the Examiner did not err in rejecting claims 1, 2, 4, and 6-22 under 35 U.S.C. § 101. DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)Basis Affirmed Reversed 1, 2, 4, 6- 22 101 Eligibility 1, 2, 4, 6- 22 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED