Adobe Inc.

Patent Trials and Appeals Board

Mar 25, 2020

14525760 - (D) (P.T.A.B. Mar. 25, 2020)

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.
14/525,760 10/28/2014 Stéphane Moreau 058083-0915051
(4535US01)
7494
72058 7590 03/25/2020
Kilpatrick Townsend & Stockton LLP/Adobe
Adobe Systems, Inc. 58083
Mailstop: IP Docketing - 22
1100 Peachtree Street, Suite 2800
Atlanta, GA 30309-4530
EXAMINER
ANDERSON, SCOTT C
ART UNIT PAPER NUMBER
3694
NOTIFICATION DATE DELIVERY MODE
03/25/2020 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):
KTSDocketing2@kilpatrick.foundationip.com
ipefiling@kilpatricktownsend.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte STÉPHANE MOREAU, ASHISH DUGGAL,
SACHIN SONI, and ANMOL DHAWAN

Appeal 2019-003268
Application 14/525,760
Technology Center 3600
Before ALLEN R. MacDONALD, JEREMY J. CURCURI, and
IFTIKHAR AHMED, Administrative Patent Judges.
AHMED, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 1–9 and 11–20, which are all of the claims pending
in the application. Claim 10 has been cancelled. Appeal Br. 27. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “Applicant” as defined in
37 C.F.R. § 1.42(a). Appellant identifies the real party in interest as Adobe
Systems Incorporated. Appeal Br. 3.
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TECHNOLOGY
The claims relate to testing marketing campaign communications.
Claim 1 is illustrative and reproduced below:
1. A method for dynamically testing the effectiveness of Internet
marketing communications comprising:
receiving, by a processing device, input identifying a
category of an Internet marketing campaign to be initiated by a
marketer;
in response to identifying the category of the Internet
marketing campaign, receiving, by the processing device, input
indicating a first marketing communication content and a second
marketing communication content in relation to the category of
the Internet marketing campaign, wherein the first marketing
communication content and the second marketing
communication content are to be sent to test recipients;
retrieving, by a processing device, from a database
information identifying recipients of prior Internet marketing
communications containing content associated with the category
of the Internet marketing campaign from a database;
determining, by the processing device, a past
responsiveness of each recipient to each prior Internet marketing
communication by:
determining whether the recipient viewed the prior
Internet marketing communication using a recipient
device and, if so, the time between when the prior Internet
marketing communication was sent and when the recipient
viewed the prior Internet marketing communication,
determining whether the recipient responded to the prior
Internet marketing communication using the recipient
device and, if so, the time between when the prior Internet
marketing communication was viewed and when the
recipient responded to the prior Internet marketing
communication,
determining whether the recipient shared the prior Internet
marketing communication with other users using the
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recipient device and, if so, the time between when the prior
Internet marketing communication was sent and when the
recipient shared the prior Internet marketing
communication, and
determining whether the recipient did not view the prior
Internet marketing communication and did not share the
prior Internet marketing communication with other users
using the recipient device;
selecting, by the processing device, a set of test recipients
by identifying those of the recipients who viewed or shared at
least a predetermined number of the prior Internet marketing
communications in less than a threshold response time;
in response to selecting the set of test recipients, creating,
by the processing device, a first sub set of the test recipients and
a second sub set of the test recipients;
in response to creating the first subset of the test recipients
and the second subset of the test recipients, sending, by the
processing device, the first marketing communication content to
the first subset of the test recipients and sending, by the
processing device, the second marketing communication content
to the second subset of the test recipients; and
determining and assessing, by the processing device,
responsiveness of the first subset of the test recipients to the first
marketing communication content and determining and
assessing responsiveness of the second subset of the test
recipients to the second marketing communication content.
REJECTION
Claims 1–9 and 11–20 stand rejected under 35 U.S.C. § 101 for
claiming patent-ineligible subject matter. Final Act. 2–3.
ISSUE
1. Did the Examiner err in concluding that claim 1 is directed to
patent-ineligible subject matter without significantly more?
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ANALYSIS
§ 101
35 U.S.C. § 101 defines patentable subject matter, but the Supreme
Court has “long held that this provision contains an important implicit
exception” that “[l]aws of nature, natural phenomena, and abstract ideas are
not patentable.” Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566
U.S. 66, 70 (2012) (quotation omitted). “Eligibility under 35 U.S.C. § 101 is
a question of law, based on underlying facts.” SAP Am., Inc. v. InvestPic,
LLC, 898 F.3d 1161, 1166 (Fed. Cir. 2018). To determine patentable subject
matter, the Supreme Court has set forth a two part test.
“First, we determine whether the claims at issue are directed to one of
those patent-ineligible concepts” of “laws of nature, natural phenomena, and
abstract ideas.” Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 217 (2014). A
court must be cognizant that “all inventions at some level embody, use,
reflect, rest upon, or apply laws of nature, natural phenomena, or abstract
ideas” (Mayo, 566 U.S. at 71), and “describing the claims at . . . a high level
of abstraction and untethered from the language of the claims all but ensures
that the exceptions to § 101 swallow the rule.” Enfish, LLC v. Microsoft
Corp., 822 F.3d 1327, 1337 (Fed. Cir. 2016). Instead, “we evaluate the
focus of the claimed advance over the prior art to determine if the character
of the claim as a whole, considered in light of the specification, is directed to
excluded subject matter.” Trading Techs. Int’l, Inc. v. IBG LLC, 921 F.3d
1084, 1092 (Fed. Cir. 2019) (quotation omitted). “The inquiry often is
whether the claims are directed to ‘a specific means or method’ for
improving technology or whether they are simply directed to an abstract
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end-result.” RecogniCorp, LLC v. Nintendo Co., 855 F.3d 1322, 1326 (Fed.
Cir. 2017).
If the claims are directed to an abstract idea or other ineligible
concept, then we continue to the second step and “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.” Alice, 573 U.S. at 217 (quoting Mayo, 566 U.S.
at 79, 78). The Supreme Court has “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.” Id. at
217–18 (quotation omitted). However, “[t]he abstract idea itself cannot
supply the inventive concept, no matter how groundbreaking the advance.”
Trading Techs., 921 F.3d at 1093 (quotation omitted).
In 2019, the U.S. Patent & Trademark Office published revised
guidance on the application of § 101. USPTO, 2019 Revised Patent Subject
Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (“Guidance”);
USPTO, October 2019 Update: Subject Matter Eligibility, available at
https://www.uspto.gov/sites/default/files/documents/peg_oct_2019_update.p
df (“Oct. Update”). Under that guidance, we look to whether the claim
recites
(1) a judicial exception, such as a law of nature or any of the
following groupings of abstract ideas:
(a) mathematical concepts, such as mathematical formulas;
(b) certain methods of organizing human activity, such as a
fundamental economic practice; or
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(c) mental processes, such as an observation or evaluation
performed in the human mind;
(2) any additional limitations such that the claim as a whole
integrates the judicial exception into a practical application (see
MPEP § 2106.05(a)–(c), (e)–(h)); and
(3) any additional limitations beyond the judicial exception that,
alone or in combination, were not “well-understood, routine,
conventional” in the field (see MPEP § 2106.05(d)).
See Guidance, 84 Fed. Reg. at 52, 55, 56.
USPTO Step 2A, Prong One
Here, claim 1 recites:
receiving . . . input identifying a category of an Internet
marketing campaign to be initiated by a marketer;
in response to identifying the category of the Internet
marketing campaign, receiving . . . input indicating a first
marketing communication content and a second marketing
communication content in relation to the category of the Internet
marketing campaign, wherein the first marketing communication
content and the second marketing communication content are to
be sent to test recipients;
retrieving . . . from a database information identifying
recipients of prior Internet marketing communications
containing content associated with the category of the Internet
marketing campaign from a database;
determining . . . a past responsiveness of each recipient to
each prior Internet marketing communication by:
determining whether the recipient viewed the prior
Internet marketing communication . . . and, if so, the time
between when the prior Internet marketing communication was
sent and when the recipient viewed the prior Internet marketing
communication,
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determining whether the recipient responded to the prior
Internet marketing communication . . . and, if so, the time
between when the prior Internet marketing communication was
viewed and when the recipient responded to the prior Internet
marketing communication,
determining whether the recipient shared the prior Internet
marketing communication with other users . . . and, if so, the
time between when the prior Internet marketing communication
was sent and when the recipient shared the prior Internet
marketing communication, and
determining whether the recipient did not view the prior
Internet marketing communication and did not share the prior
Internet marketing communication with other users . . . ;
selecting . . . a set of test recipients by identifying those of
the recipients who viewed or shared at least a predetermined
number of the prior Internet marketing communications in less
than a threshold response time;
in response to selecting the set of test recipients,
creating . . . a first sub set of the test recipients and a second sub
set of the test recipients;
in response to creating the first subset of the test recipients
and the second subset of the test recipients, sending . . . the first
marketing communication content to the first subset of the test
recipients and sending . . . the second marketing communication
content to the second subset of the test recipients; and
determining and assessing . . . responsiveness of the first
subset of the test recipients to the first marketing communication
content and determining and assessing responsiveness of the
second subset of the test recipients to the second marketing
communication content.
“[W]ith the exception of generic computer-implemented steps, there is
nothing in the claims themselves that foreclose them from being performed
by a human, mentally or with pen and paper.” Intellectual Ventures I LLC v.
Symantec Corp., 838 F.3d 1307, 1318 (Fed. Cir. 2016). Here, other than the
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generic computer components discussed below (specifically, the “processing
device” and “recipient device”), the “identifying,” “determining,” and
“selecting” steps can all be performed mentally. For example, before
physically sending out invitations to a party, you might mentally, or with a
pen and paper, determine who on your list did not respond to your previous
invitation, who responded to your previous invitation and how soon, as well
as who shared your invitation with one of their friends. You therefore have
mentally divided a group into at least two subsets based on their response
and whether they shared your invitation. Recipients that did not respond to
your invitation may receive a more personal invitation this time, with a
personalized sentence or two, while recipients that responded and shared
your previous invitation may get the default invitation. See also Final Act. 3
(finding that “[d]etermining a past responsiveness of each recipient to each
prior communication is performed by simply performing four similar
comparisons which are elementary, abstract, and can be done by a person
looking at a paper log of responses which includes time-stamps.”). The
Examiner provided yet another example of the abstract idea being used in
the real world:
For example, a particular issue of National Geographic magazine
might include an advertisement with a blow-card which includes
a return postcard for a person to express interest in a camera, and
the return postcard includes a coded string of text which indicates
to the advertiser which issue the ad appeared in. When a
consumer returns the postcard, the coded string is sufficient to
indicate to the advertiser when the issue was published, and the
postmark on the postcard is sufficient to indicate to the advertiser
when the advertisement solicited a response. . . . [or that] the
magazine subscriber had simply handed the advertisement to a
friend known to be a camera enthusiast, and the friend had
returned the card, . . . [or compile] information about the
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subscribers who did not respond. Further, certain types of mail
sent to consumers is returned to sender if the mail is
undeliverable, and receipt of such returned mail would certainly
indicate that those consumers did not (because they could not
have) viewed the magazine advertisement.
Id. at 3–5. Determining a past responsiveness of a recipient by performing
simple comparisons has long been practiced in the real world. As the
Federal Circuit has said, “analyzing information by steps people go through
in their minds,” without more, constitutes “mental processes within the
abstract-idea category.” Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d
1138, 1146 (Fed. Cir. 2016) (quotation omitted).
Claim 1 therefore recites mental processes, which are an abstract idea.
Other than the generic computer components, the “receiving” and
“sending” steps also can be performed by humans (e.g., verbally by talking
or via physical methods of communication, e.g., through the mail). Claim 1
is specifically directed to “Internet marketing communications,” and recites
sending marketing communication content to each subset of recipients.
Claim 1 therefore recites a form of “advertising, marketing or sales activities
or behaviors,” which falls within “certain methods of organizing human
activity” that forms one grouping of abstract ideas. Guidance, 84 Fed. Reg.
at 52; cf. Interval Licensing LLC v. AOL, Inc., 896 F.3d 1335, 1344 (Fed.
Cir. 2018) (holding that “the act of providing someone an additional set of
information without disrupting the ongoing provision of an initial set of
information is an abstract idea,” such as “the nontechnical human activity of
passing a note to a person who is in the middle of a meeting or
conversation”).
Moreover, “[a]dding one abstract idea . . . to another abstract idea . . .
does not render the claim non-abstract.” RecogniCorp, 855 F.3d at 1327.
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Accordingly, claim 1 recites an abstract idea.
USPTO Step 2A, Prong Two
Appellant asserts that “[t]he claims are directed to technical
improvements to lead generation systems rather than an abstract idea.”
Appeal Br. 10. According to Appellant, “[c]omputer-implemented systems
for dynamically testing the effectiveness of Internet marketing
communications are certainly technological systems, resulting from
significant research and development efforts.” Id.; see also id. at 12–13
(citing BASCOM Global Internet Services, Inc. v. AT&T Mobility LLC, 827
F.3d 1341, 1349 (2016)). Appellant further argues that the Examiner’s
abstract idea determination “disregards many specific elements of the
claims.” Id. 10–11; Reply Br. 3–4 (pointing to the multiple “determining”
steps recited in claim 1). “By intelligently selecting test recipient sets, the
claimed invention can more accurately assess the merit of the different
variants of marketing communication in a timely manner. Selecting the test
recipient sets is intelligently performed by determining a past responsiveness
of each recipient,” Appellant adds. Reply Br. 5. Therefore, Appellant
argues, that “to the extent that the claims include an abstract idea, the
pending claims integrate the abstract idea into a practical application of the
exception and is patent eligible under the 2019 Guidance.” Id.
We are not persuaded by Appellant’s argument that the problem or
solution is technological. The Federal Circuit is clear that “[t]he abstract
idea itself cannot supply the inventive concept, no matter how
groundbreaking the advance.” Trading Techs. Int’l, Inc. v. IBG LLC, 921
F.3d 1084, 1093 (Fed. Cir. 2019) (quotation omitted). As discussed above,
other than the recited computer components of a “processing device” and
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“recipient device,” the claim steps can be performed mentally or verbally.
Thus, Appellant cannot rely on the abstract idea as providing significantly
more.
Moreover, the Federal Circuit “look[s] to whether the claims in these
patents focus on a specific means or method that improves the relevant
technology or are instead directed to a result or effect that itself is the
abstract idea and merely invoke generic processes and machinery.” McRO,
Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299, 1314 (Fed. Cir.
2016). Here, the computer components do not provide a specific means or
method that improves technology. For example, claim 1 does not provide
any technological way to determine “whether the recipient viewed the prior
Internet marketing communication” or “whether the recipient shared the
prior Internet marketing communication with other users.” Instead, the
claim recites only an abstract idea that is to be performed “by” a processing
device, and that the user uses a “recipient device.” As the Supreme Court
has held, “the mere recitation of a generic computer cannot transform a
patent-ineligible abstract idea into a patent-eligible invention.” Alice, 573
U.S. at 223.
In the Reply Brief, Appellant further argues that “claim 1 applies the
alleged abstract idea in a meaningful way that goes beyond generally linking
the use of an abstract idea to a particular technological environment”
because that “claim includes specific limitations other than what is well-
understood, routine and conventional in the field and/or unconventional
steps that confine the claims to a particular useful application.” Reply Br. 5.
Specifically, Appellant relies on limitations of determining whether or not a
recipient of Internet communication views, responds to, or shares that
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communication to argue that “these determining steps are performed based
on ‘redirection techniques’ and other known ‘monitoring techniques’ that
track the interaction of the recipient with links embedded in the electronic
communication.” Reply Br. 5; 3 (citing Spec. ¶ 32); Appeal Br. 12 (arguing
that the term “Internet marketing communication” narrowly refers to “email
communications, links embedded in text messages, [and] social media
messages”). However, none of these are recited in claim 1 and “features that
are not claimed are irrelevant as to step 1 or step 2 of the Mayo/Alice
analysis.” Am. Axle & Mfg., Inc. v. Neapco Holdings LLC, 939 F.3d 1355,
1363 (Fed. Cir. 2019). Moreover, all the “Internet marketing
communication” restriction does is “confine the abstract idea to a particular
technological environment,” and “merely limiting the field of use of the
abstract idea to a particular existing technological environment does not
render the claims any less abstract.” See Affinity Labs of Tex., LLC v.
DIRECTV, LLC, 838 F.3d 1253, 1258–59 (Fed. Cir. 2016); see also
Intellectual Ventures I LLC v. Capital One Bank (USA), 792 F.3d 1363,
1366 (Fed. Cir. 2015) (“An abstract idea does not become nonabstract by
limiting the invention to a particular field of use or technological
environment, such as the Internet.”).
Finally, to the extent sending and receiving were limited to an
electronic communications between server and recipient devices (Reply Br.
5–6), rather than verbal or physical communication, those would be
insignificant extra-solution activity or field of use, akin to merely
automating a manual process. See, e.g., MPEP § 2106.05(g), (h).
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Thus, we are not persuaded that any additional limitation, alone or in
combination, reflects an improvement in the functioning of a computer or
other technology.
Appellant also argues that “the claims [do not] preempt all manners of
performing lead generation on the Internet.” Appeal Br. 11. We agree with
the Examiner, however, that preemption is not the test. Ans. 5. “While
preemption may signal patent ineligible subject matter, the absence of
complete preemption does not demonstrate patent eligibility.” Ariosa
Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015).
“Where a patent’s claims are deemed only to disclose patent ineligible
subject matter under the Mayo framework, as they are in this case,
preemption concerns are fully addressed and made moot.” Id. Therefore,
claim 1 does not integrate the abstract idea into a practical application.
USPTO Step 2B
The additional limitations in claim 1 such as a “processing device”
and “recipient device” were well-understood, routine, and conventional.
The Specification explains that they can be any generic device. E.g., Spec.
¶¶ 55 (“Any suitable computing system or group of computing systems can
be used to implement the marketer system(s) 116, recipient device(s) 118,
and server system l02. . . . The processor 902 may comprise a
microprocessor, an application-specific integrated circuit (‘ASIC’), a state
machine, or other processing device”), 56 (“The memory 904 can include
any suitable computer-readable medium.”), 59 (“The network interface
device 910 can include any device or group of devices suitable for
establishing a wired or wireless data connection to one or more data
networks l15.”), 60 (similar).
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In sum, whether the additional limitations are considered individually
or in ordered combination, claim 1 fails to recite an inventive concept
beyond the abstract idea.
Accordingly, we sustain the rejection under § 101 of claim 1, and
claims 2–9 and 11–20, which Appellant argues are patentable for similar
reasons. See Appeal Br. 10, 22; 37 C.F.R. § 41.37(c)(1)(iv).
DECISION
In summary:
Claims
Rejected Statute Basis Affirmed Reversed
1–9, 11–20 § 101 Eligibility 1–9, 11–20
TIME TO RESPOND
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.
§ 1.36(a)(1)(iv).
AFFIRMED