Adobe Inc.

Patent Trials and Appeals Board

Aug 4, 2021

2021000456 (P.T.A.B. Aug. 4, 2021)

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.
15/611,597 06/01/2017 Sharan Vaswani P6782-US 3937
108982 7590 08/04/2021
FIG. 1 Patents
116 W. Pacific Avenue
Suite 200
Spokane, WA 99201
EXAMINER
KOESTER, MICHAEL RICHARD
ART UNIT PAPER NUMBER
3624
NOTIFICATION DATE DELIVERY MODE
08/04/2021 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):
Fig1Docket@fig1patents.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte SHARAN VASWANI, ZHENG WEN,
BRANISLAV KVETON, and MOHAMMAD GHAVAMZADEH
____________

Appeal 2021-000456
Application 15/611,597
Technology Center 3600
____________

Before MURRIEL E. CRAWFORD, ANTON W. FETTING, and
BRUCE T. WIEDER, Administrative Patent Judges.

CRAWFORD, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134 of the Examiner’s
final rejection of claims 1–5, and 9–23. We have jurisdiction under 35
U.S.C. § 6(b).
SUMMARY OF DECISION
We AFFIRM.
THE INVENTION
Appellant claims a digital marketing system configured to provide
digital marketing content to potential consumers to increase awareness
and/or conversion of goods or services. (Spec. ¶ 1).
Claim 1 is representative of the subject matter on appeal.
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1. In a digital medium environment to determine user influence within
a social network system, a method implemented by at least one computing
device, the method comprising:
selecting, by the at least one computing device, a first subset from a
plurality of user accounts of a social network system;
collecting, by the at least one computing device, user interaction data
subsequent to exposure of digital content to the first subset of user accounts,
the user interaction data describing whether the plurality of user accounts
were influenced by the exposure of the digital content;
computing, by the at least one computing device, an approximation of
a lower bound of an objective function regarding a spread of influence
between the plurality of user accounts of the social network system;
determining, by the at least one computing device from the user
interaction data and independent of knowledge of a diffusion model that
describes how information propagates between the plurality of user
accounts, a pairwise probability that a user account of the first subset of the
user accounts influences a user account of the plurality of user accounts that
is not exposed to the digital content, the pairwise probability being
determined based on an upper confidence bounds based linear bandit
algorithm and the approximation of the lower bound;
selecting, by the at least one computing device, a second subset from
the plurality of user accounts having a highest probability of influencing the
plurality of user accounts based on the determined pairwise probability; and
controlling, by the at least one computing device, output of
subsequent digital content to the second subset.

THE REJECTION
Claims 1–5 and 9–23 are rejected under 35 U.S.C. § 101 as directed to
a judicial exception without significantly more.
Claims 1–5 and 9–23 are rejected under 35 U.S.C. 103 as being
unpatentable over Booker et al. (US 2017/0140397 A1, published May 18,
2017) in view of Neystadt et al. (US 2012/0158476 A1, published June 21,
2012) further in view of Ojha et al. (US Patent 9,342,624 B1, issued May 17,
2016) further in view of Vaswani (Sharan Vaswani, Laks. V.S. Lakshmanan,
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Influence Maximization with Bandits, 27 Feb 2015 [retrieved on
2019-11-04], arxiv.org/abs/1503.00024v1.

ANALYSIS
35 U.S.C. § 101 REJECTION
We will sustain the rejection of claims 1–5, and 9–23 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 excluded subject matter.’” See Enfish, LLC v.
Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016) (quoting Internet
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Patents Corp. v. Active Network, Inc., 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 recite using a computer
system that measures how people interact with one another and then using
that information for marketing purposes and that this is a certain method
organizing human activity. (Final Act. 6). The Examiner also determines
that the claims recite a mathematical concept. The Examiner finds that the
additional elements recited are insufficient with respect to a practical
application. The Examiner further finds that the additional elements of a
computer device, a subset selection module, a seed output module, a data
collection module, and pairwise determination modules are merely the
software and hardware components used to implement the abstract idea and
do not amount to significantly more than the abstract idea. (Id. at 8).
The Specification discloses that influence maximization techniques
have been developed by digital marketing systems to reduce the cost of
providing digital marketing content yet still promote conversion of a good or
service. (Spec. ¶ 2). However, conventional influence maximization
techniques are inefficient and prone to error and thus fail to accurately
identify user accounts of a social network. (Spec. ¶ 5). This is due to a
requirement of conventional influence maximization techniques on
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knowledge of an underlying diffusion model of the social network system.
A diffusion model describes how information propagates through the social
network system, e.g. from user account to user account via posts, direct
messages and so forth. (Id.). The present invention makes a determination
about the probability that each user account of the plurality of user accounts
will be influenced by the exposure to the digital marketing content.
Therefore, the Specification is clear that the invention relates to marketing.
Consistent with the disclosure, claim 1 recites “a digital medium
environment to determine user influence within a social network system,”
“determining, . . . independent of the knowledge of a diffusion model,” “a
pairwise probability that a user account of the first subset of the user
accounts influences a user account of the plurality of user accounts that is
not exposed to the digital content,” “selecting . . . [a subset] of user accounts
having a highest probability of influencing the plurality of user accounts
based on the determined pairwise probability,” and “controlling . . . output
of subsequent digital content.”
We thus agree with the Examiner’s findings that the claims are
directed to measuring how people interact with one another and then using
that information for marketing purposes. Controlling the behavior of
persons concerning marketing is a certain method of organizing human
activity. Guidance at 52.
We also agree with the Examiner that claim 1 recites a mathematical
concept because claim 1 recites the computing and determining steps that
involve calculations that are detailed in paragraphs 48–52 of the
Specification.
Also, we find the steps of collecting user interaction data, computing
an approximation of a lower bound, determining pairwise probability and
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selecting a second subset from a plurality of user accounts 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 agree that the claims recite the judicial exception of a method of
organizing human activity and in the alternative a mathematical concept and
a mental process.
Turning to the second prong of the “directed to test”, claim 1 requires
“a computing device” and “a social network system.” These recitations do
not recite a practical application, i.e., do 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, 84 Fed. Reg. at
52. We find no indication in the Specification, nor does Appellant direct 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 affects a transformation or reduction of a particular article to a
different state or thing. Nor do we find anything of record, short of attorney
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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 Guidance. Guidance, 84 Fed. Reg.
at 55.
In this regard, the recitation does not affect an improvement in the
functioning of the computing device, the social network system 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. See id. Thus, claim 1 is directed to judicial
exceptions that are not integrated into a practical application and thus
claim 1 is directed to abstract ideas.
Turning to the second step of the Alice analysis, because we find that
claim 1 is directed to abstract ideas, the claim 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 (quoting Mayo Collaborative Servs. v. Prometheus Labs.,
Inc., 566 U.S. 66, 72–73 (2012)).
The introduction of computer and computer network components 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
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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.”
Alice, 573 U.S. at 223 (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 idea . . . on a
generic computer.” Id. at 225. It does not.
Taking the claim elements separately, the function performed by the
computing device 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
marketing 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).
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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 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 social network system or the computing device. As we stated above, the
claims do 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 the concept of the invention. (See,
e.g., Spec. ¶¶ 14, 20, 25). Thus, claim 1 at issue amounts to nothing
significantly more than instructions to apply the abstract ideas recited in the
claim using some unspecified, generic network and generic computer.
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. 15–28) 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
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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 the record is devoid of reasoning to support a
conclusion that the subject matter qualifies as an abstract idea. (Appeal Br.
17–18). As we discussed above, the claims recite the abstract idea of
measuring how people interact with one another and then using that
information for marketing purposes. Marketing activities are specifically
listed as one of the types of fundamental economic practices which are
judicial exceptions. Guidance, 84 Fed. Reg. 52. Therefore, we find no error
in the Examiner’s determination that the claims recite the judicial exception
of a certain method of organizing human activity.
We also find no error in the Examiner’s determination that claim 1
recites a mathematical concept. We agree with the Examiner’s response to
this argument found on pages 4–5 of the Answer that the mathematical
aspect is clearly highlighted and actually recited in claim 1. In this regard
claim 1 recites computing an approximation of a lower bound of an
objective function regarding a spread of influence and determining a
pairwise probability. These steps are described in the Specification starting
at paragraphs 46 and clearly involve mathematical calculations.
We do not agree with Appellant that the claims are similar to the
claims in DDR Holdings, LLC v. Hotels.com, L.P. 773 F.3d 1245 (Fed.
Cir. 2014) because they solve specific problems in the realm of computer
technology. (Appeal Br. 21).
In DDR Holdings, the Court evaluated the eligibility of claims
“address[ing] the problem of retaining website visitors that, if adhering to
the routine, conventional functioning of Internet hyperlink protocol, would
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be instantly transported away from a host’s website after ‘clicking’ on an
advertisement and activating a hyperlink.” DDR, 773 F.3d at 1257. There,
the Court found that the claims were patent eligible because they
transformed the manner in which a hyperlink typically functions to resolve a
problem that had no “pre-Internet analog.” Id. at 1258. The Court
cautioned, however, “that not all claims purporting to address Internet-
centric challenges are eligible for patent.” Id. For example, in DDR
Holdings the Court distinguished the patent-eligible claims at issue from
claims found patent-ineligible in Ultramercial. See DDR, 773 at 1258–59
(citing Ultramercial, 772 F.3d 709, 715–16 (Fed. Cir. 2014)). As noted
there, the Ultramercial claims were “directed to a specific method of
advertising and content distribution that was previously unknown and never
employed on the Internet before.” Id. at 1258 (quoting Ultramercial, 772
F.3d at 715–16). Nevertheless, those claims were patent ineligible because
they “merely recite[d] the abstract idea of ‘offering media content in
exchange for viewing an advertisement,’ along with ‘routine additional steps
such as updating an activity log, requiring a request from the consumer to
view the ad, restrictions on public access, and use of the Internet.’” Id.
Appellant’s asserted claims are analogous to claims found ineligible in
Ultramercial and distinct from claims found eligible in DDR Holdings.
The ineligible claims in Ultramercial recited “providing [a] media product
for sale at an Internet website;” “restricting general public access to said
media product;” “receiving from the consumer a request to view [a]
sponsor message;” and “if the sponsor message is an interactive message,
presenting at least one query to the consumer and allowing said consumer
access to said media product after receiving a response to said at least one
query.” Ultramercial, 772 F.3d at 712. Similarly, Appellant’s claim 1
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recites receiving, analyzing, modifying, and transmitting data to measure
how people interact with one another and then using that information for
marketing purposes using a generic unimproved computing device and a
generic network. This is precisely the type of Internet activity found
ineligible in Ultramercial.
We are not persuaded of error on the part of the Examiner by
Appellant’s argument that the features of claim 1 are not well-understood,
routine and conventional activity. (Appeal Br. 25). Appellant directs our
attention to the last selecting step and the controlling step of claim 1.
However, these steps are part of the abstract idea itself of measuring how
people interact with one another and then using that information for
marketing purposes. The determination of whether aspects of a claim recite
well-understood, routine and conventional activity is relevant only to the
elements that are in addition to the abstract idea. The only recitations in
claim 1 in addition to the abstract idea are the recitation of the computing
device and social network system.
In view of the foregoing, we will sustain the Examiner’s rejection of
claim 1. We will also sustain the rejection as it is directed to claims 2–5, 9,
and 21–23 because Appellant does not argue the separate eligibility of these
claims.
We are not persuaded of error on the part of the Examiner by
Appellant’s argument that claims 10 and 16 recite specific steps and rules
that clearly differentiate them from an abstract idea of measuring how
people interact with one another and then using that information for
marketing purposes. (Appeal Br. 27). Appellant directs our attention to the
recitations in claims 10 and 16 related to selecting a subset of a plurality of
user accounts, collecting user interaction data, computing an approximation,
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and generating influence probability data. However, in our view, these
recitations do not differentiate the claims from the abstract idea but are
actually part of the abstract idea of measuring how people interact with one
another and then using that information for marketing purposes. In this
regard, these recitations provide further details of the measuring of people
interactions with one another and then use that information for marketing
purposes is performed.
In view of the foregoing, we will also sustain the Examiner’s rejection of
claims 10 and 16 and claims 11–15 and 17–20 dependent therefrom.
REJECTION UNDER 35 U.S.C. § 103(A).
We will not sustain this rejection because we agree with Appellant
that the prior art does not disclose “computing. . . an approximation of a
lower bound of an objective function regarding a spread of influence
between the plurality of user accounts of the social network system”.
(Appeal Br. 44 ). The Examiner relies on the Vaswani Abstract for teaching
this subject matter.
This subject matter is described in paragraph 51 of the Specification.
This portion of the Specification discloses that the theorem used implies that
for any progressive model satisfying a first assumption 1, maximizing a
function is the same as maximizing a lower-bound on a true spread and may
serve as a good approximation of the function.
We agree with Appellant that the mention in Vaswani in the Abstract
of proposed algorithms that establish bounds on their performance is
insufficient to teach this subject matter. The portion of Vaswani relied on by
the Examiner does not describe a lower bound much less an approximation
of a lower bound. Therefore, we will not sustain this rejection as it is
directed to claim 1 and claims 2–5, 9, and 21–23 dependent therefrom. We
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will also not sustain this rejection as it is directed to the remaining claims
because each of the claims requires an approximation of a lower bound.

CONCLUSIONS OF LAW
We conclude the Examiner did not err in rejecting claims 1–5, and 9–
23under 35 U.S.C. § 101.
We conclude the Examiner did err in rejecting claims 1–5, and 9–23
under 35 U.S.C. § 103.

DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–5, 9–23 101 Eligibility 1–5, 9–23
1–5, 9–23 103 Booker, Neystadt,
Ojha, Vaswani
1–5, 9–23
Overall
Outcome
1–5, 9–23

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