Adobe Inc.

Patent Trials and Appeals Board

Jul 2, 2020

2019006990 (P.T.A.B. Jul. 2, 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.
14/534,744 11/06/2014 David A. Jared 058083-0911462
(4285US01)
9907
72058 7590 07/02/2020
Kilpatrick Townsend & Stockton LLP/Adobe
Adobe Systems, Inc. 58083
Mailstop: IP Docketing - 22
1100 Peachtree Street, Suite 2800
Atlanta, GA 30309-4530
EXAMINER
NGUYEN, NGA B
ART UNIT PAPER NUMBER
3683
NOTIFICATION DATE DELIVERY MODE
07/02/2020 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 DAVID A. JARED
and DAVID M. WEINSTEIN
____________

Appeal 2019-006990
Application 14/534,744
Technology Center 3600
____________

Before KALYAN K. DESHPANDE, CHARLES J. BOUDREAU,
and SHARON FENICK, Administrative Patent Judges.

BOUDREAU, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1, 3–6, 12–14, 16, 17, 21, and 26–34,
which are all of the pending claims. We have jurisdiction under 35 U.S.C.
§ 6(b)(1).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies Adobe Systems Incorporated as the
real party in interest. Appeal Br. 1.
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CLAIMED SUBJECT MATTER
Appellant’s invention relates generally to “calculating and estimating
changes in audience size” and more particularly to “near real-time
estimation of audience segment sizes over time,” including in marketing
applications. Spec. ¶ 1; see id. ¶¶ 2–3.
Claims 1, 14, and 17 are independent. Claim 17, reproduced below, is
illustrative of the subject matter on appeal:
17. A system comprising:
a web server configured to:
receive a request for calculation of size of an audience
segment, the request comprising a segment rule that includes one
or more visitor traits of members of the audience segment and a
time range including at least a future time duration;
create, from the request, a plurality of database queries
comprising the one or more visitor traits and corresponding to a
past time period;
receive from a secondary device, a plurality of responses
corresponding to the plurality of database queries, each response
indicating a size of the audience segment matching the segment
rule during a respective past time period;
concatenate the plurality of responses into a time series,
thereby evaluating the segment rule; and
generate a prediction of a future size of the audience
segment for a future time duration by applying a predictive
model to the time series;
a master device configured to, on a periodic basis:
receive a sampled subset of audience data,
index the sampled subset of audience data by date and
time, and
transmit a replicated set of audience data comprising the
indexed data to the secondary device; and
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the secondary device, wherein the secondary device is
configured to:
receive the replicated set of audience data from a master
device,
receive, from the web server, the plurality of database
queries,
generate the plurality of responses by determining, from
the replicated set of audience data and for each of the plurality of
database queries, a respective one of the plurality of responses,
and
transmit the plurality of responses to the web server.
Appeal Br. 21 (Claims App.).
REJECTION
Claims 1, 3–6, 12–14, 16, 17, 21, and 26–34 stand rejected under
35 U.S.C. § 101 as being directed to non-statutory subject matter. Final
Act. 2–7.
OPINION
An invention is patent-eligible if it claims a “new and useful process,
machine, manufacture, or composition of matter, or [a] new and useful
improvement thereof.” 35 U.S.C. § 101. However, the U.S. Supreme Court
has long interpreted § 101 to “contain[] an important implicit exception:
Laws of nature, natural phenomena, and abstract ideas are not patentable.”
Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 216 (2014) (quoting Ass’n for
Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 589 (2013)).
In Alice, the Supreme Court reiterated the two-step framework
previously set forth in Mayo Collaborative Servs. v. Prometheus Labs., Inc.,
566 U.S. 66, 75–77 (2012) “for distinguishing patents that claim laws of
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nature, natural phenomena, and abstract ideas from those that claim patent-
eligible applications of those concepts.” Alice, 573 U.S. at 217. The first
step in this analysis is to “determine whether the claims at issue are directed
to one of those patent-ineligible concepts,” e.g., to an abstract idea. Id.
Concepts determined to be abstract ideas include certain methods of
organizing human activity, such as fundamental economic practices (id.
at 219–20; Bilski v. Kappos, 561 U.S. 593, 611 (2010)); mathematical
formulas (Parker v. Flook, 437 U.S. 584, 594–95 (1978)); and mental
processes (Gottschalk v. Benson, 409 U.S. 63, 67 (1972)). If it is determined
that the claims are directed to a patent-ineligible concept, the second step of
the analysis requires consideration of the elements of the claims
“individually and ‘as an ordered combination’” to determine whether there
are additional elements that “‘transform the nature of the claim’ into a
patent-eligible application.” Alice, 573 U.S. at 217 (quoting Mayo, 566 U.S.
at 78, 79). “A claim that recites an abstract idea must include ‘additional
features’ to ensure ‘that the [claim] is more than a drafting effort designed to
monopolize the [abstract idea].’” Id. at 221 (alterations in original) (quoting
Mayo, 566 U.S. at 77). In other words, the claims must contain an
“inventive concept,” or some element or combination of elements “sufficient
to ensure that the patent in practice amounts to significantly more than a
patent upon the [abstract idea] itself.” Id. at 217–18 (quoting Mayo, 566
U.S. at 72–73). “[M]erely requir[ing] generic computer implementation[]
fail[s] to transform that abstract idea into a patent-eligible invention.” Id.
at 221.
In January 2019, the PTO published revised guidance on the
application of § 101. 2019 Revised Patent Subject Matter Eligibility
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Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (“Revised Guidance”).2 “All
USPTO personnel are, as a matter of internal agency management, expected
to follow the guidance.” Id. at 51; see also October 2019 Update at 1.
Consistent with3 that guidance, we first look to whether the claim recites:
(1) any judicial exceptions, including certain groupings of
abstract ideas (i.e., mathematical concepts, certain methods of
organizing human activity such as fundamental economic
practices, or mental processes) (“Step 2A, Prong 1”); and
(2) additional elements that integrate the judicial exception into
a practical application (see MPEP §§ 2106.05(a)–(c), (e)–(h)
(9th ed. Rev. 08.2017, Jan. 2018)) (“Step 2A, Prong 2”).4
See Revised Guidance, 84 Fed. Reg. at 52–55.

2 In October 2019, in response to received public comments, the PTO issued
a further memorandum clarifying the Revised Guidance. USPTO
Memorandum, October 2019 Update: Subject Matter Eligibility (Oct. 17,
2019), available at https://www.uspto.gov/sites/default/files/documents/
peg_oct_2019_update.pdf (“October 2019 Update”).
3 Our reviewing court has explained that the Revised Guidance “cannot
modify or supplant the Supreme Court’s law regarding patent eligibility, or
[our reviewing court’s] interpretation and application thereof.” In re Rudy,
956 F.3d 1379, 1383 (Fed. Cir. 2020). Our decision is based upon
applicable statutory authority and precedent of the United States Supreme
Court and Court of Appeals for the Federal Circuit and applies the analytical
framework set forth in the Revised Guidance in a manner consistent with
authority and precedent.
4 This evaluation is performed by (a) identifying whether there are any
additional elements recited in the claim beyond the judicial exception, and
(b) evaluating those additional elements individually and in combination to
determine whether the claim as a whole integrates the exception into a
practical application. See Revised Guidance, 84 Fed. Reg. at 54–55
(Section III.A.2).
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Only if a claim (1) recites a judicial exception and (2) does not
integrate that exception into a practical application, do we then (under
“Step 2B”) look to whether the claim:
(3) adds a specific limitation beyond the judicial exception that
is not “well-understood, routine, and conventional” in the field
(see MPEP § 2106.05(d)); or
(4) simply appends well-understood, routine, conventional
activities previously known to the industry, specified at a high
level of generality, to the judicial exception.
See Revised Guidance, 84 Fed. Reg. at 56.
The Examiner determines that the claims recite certain methods of
organizing human activity as well as mental processes and, thus, an abstract
idea. Final Act. 4; Ans. 4–5. The Examiner further determines that the
abstract idea is not integrated into a practical application because the
additionally recited “web server,” “master device,” and “secondary device”
are generic computing devices performing generic functions of “receiving,
generating, and transmitting.” Ans. 5–6. Finally, the Examiner determines
that the claims do not contain an inventive concept or include additional
elements that are sufficient to amount to significantly more than the abstract
idea. Id. at 6; Final Act. 5–7. Specifically, the Examiner finds that the
additionally recited elements “do not provide any improvements to the
functioning of a computer/computer network itself” and amount to no more
than mere instructions to apply the judicial exception using generic
computer components. Ans. 6; see Final Act. 5–7.
Appellant argues that the claims “are directed to a unique combination
of computing devices that use a set of rules that improve computer-related
technology by facilitating an efficient response to queries for audience size.”
Appeal Br. 5. According to Appellant, any abstract idea recited in the
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claims is integrated into a practical application because the claims recite a
particular machine that is integral to the claims by “requiring a particular
configuration of computing devices.” Id. at 6–7; see Reply Br. 6. For
example, Appellant argues that, “by using a master device and a secondary
device, the system recited in claim 17 is able to more quickly service
queries, resulting [i]n audience prediction being obtained more quickly.”
Appeal Br. 11; see Reply Br. 5. Thus, Appellant argues, the claims recite a
“nonconventional and non-generic arrangement of elements to provide a
technical improvement” and significantly more than an abstract idea.
Appeal Br. 12 (emphasis omitted); see Reply Br. 5. Finally, Appellant
argues that the Examiner has not demonstrated that the combination of
additional elements recited in the claims is well-understood, routine, or
conventional. Appeal Br. 14–16; Reply Br. 1–4.
Step 2A, Prong 1
We agree with the Examiner that the claims recite a judicial
exception, i.e., an abstract idea. See Ans. 5. Specifically, we agree that the
claims recite mental processes. See id.
For example, independent claim 17 recites “creat[ing], from the
request, a plurality of database queries comprising the one or more visitor
traits and corresponding to a past time period,” “concatenat[ing] the plurality
of responses into a time series, thereby evaluating the segment rule,”
“generat[ing] a prediction of a future size of the audience segment for a
future time duration by applying a predictive model to the time series,”
“index[ing] the sampled subset of audience data by date and time,” and
“generat[ing] the plurality of responses by determining, from the replicated
set of audience data and for each of the plurality of database queries, a
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respective one of the plurality of responses,” “each response indicating a
size of the audience segment matching the segment rule during a respective
past time period.” Under their broadest reasonable interpretation, these
“creat[ing],” “concatenat[ing],” “generat[ing],” and “index[ing]” limitations
cover performance of the limitations in the mind (as do corresponding
limitations in independent claims 1 and 14), but for the recitation of generic
components. That is, other than the “web server,” “master device,” and
“secondary device” recited in claim 17 (and similar elements recited in
claims 1 and 14) as performing those recited steps, nothing in the claims
precludes those steps from being performed in the human mind. For
example, but for the recitation of the “web server,” “master device,” and
“secondary device,” claim 17 encompasses mentally creating a plurality of
queries comprising the one or more visitor traits and corresponding to a past
time period; mentally concatenating the plurality of responses into a time
series, thereby mentally evaluating the segment rule; mentally generating a
prediction of a future size of the audience segment for a future time duration
by mentally applying a predictive model to the time series; mentally
indexing the sampled subset of audience data by date and time; and mentally
generating the plurality of responses indicating a size of the audience
segment matching the segment rule during a respective past time period by
mentally determining, from the replicated set of audience data and for each
of the plurality of database queries, a respective one of the plurality of
responses.
Accordingly, the claims recite mental processes and, thus, an abstract
idea.
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Step 2A, Prong 2
Because the claims recite an abstract idea, we next look to whether the
claims recite additional elements that integrate the abstract idea into a
practical application. Revised Guidance, 84 Fed. Reg. at 54. Claim
limitations that indicate integration into a practical application include
additional elements that reflect an improvement in the functioning of a
computer, or an improvement to other technology or technical field. Id. at
55. When a claim recites a judicial exception and fails to integrate the
judicial exception into a practical application, the claim is “directed to” the
judicial exception. Id. at 51.
We agree with the Examiner that the additional limitations recited in
the claims do not integrate the recited judicial exception into a practical
application. See Ans. 5–6. For example, claim 17 additionally recites
“receiv[ing] a request for calculation of size of an audience segment, the
request comprising a segment rule that includes one or more visitor traits of
members of the audience segment and a time range including at least a
future time duration,” “receiv[ing] from a secondary device, a plurality of
responses corresponding to the plurality of database queries,” “receiv[ing] a
sampled subset of audience data,” “receiv[ing] the replicated set of audience
data from a master device,” and “receiv[ing], from the web server, the
plurality of database queries,” as well as “transmit[ting] a replicated set of
audience data comprising the indexed data to the secondary device” and
“transmit[ting] the plurality of responses to the web server.” These
“receiv[ing]” and “transmit[ting]” limitations are recited at a high level of
generality (i.e., as general steps of collecting various information used to
predict a future size of an audience segment and transmitting information
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used to predict a future size of an audience segment, respectively) and
amount to insignificant pre- or post-solution activity. See Revised
Guidance, 84 Fed. Reg. at 55; MPEP § 2106.05(g).
We further agree with the Examiner that the claims otherwise merely
recite generic computer components that similarly fail to integrate the
recited abstract idea into a practical application. See Ans. 5–6. For
example, claim 17 additionally recites a “web server,” “master device,” and
“secondary device.” As the Examiner points out, these limitations are
recited at a high level of generality, i.e., as generic components performing
generic computer functions of computer processing and communication.
See id. at 5; Spec. ¶¶ 49–50 (describing a “master cluster” and “slave
cluster” as clusters of servers). The claims merely apply the abstract idea
using generic computer components and indicate a field of use or
technological environment (i.e., computer software) for predicting a future
size of an audience segment. See Revised Guidance, 84 Fed. Reg. at 55;
MPEP § 2106.05(f), (h).
Appellant argues that the claims recite a particular machine that is
integral to the claims (Appeal Br. 7)—“a unique combination of devices
including a web server, a master device, and a secondary device that perform
different functions and operate together to efficiently respond to queries for
audience size” (id. at 9). See Revised Guidance, 84 Fed. Reg. at 55; MPEP
§ 2106.05(b). Although Appellant argues that the claims “requir[e] a
particular configuration of computing devices” (Appeal Br. 7), we disagree
that the claims recite a particular machine because, as discussed above, the
“web server,” “master device,” and “secondary device” are generic computer
components (servers) performing generic computer functions. The claims
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merely implement the abstract idea with general purpose computer
components, not a particular machine. See Ultramercial, Inc. v. Hulu, LLC,
772 F.3d 709, 716–17 (Fed. Cir. 2014) (determining that claims tied to a
general purpose computer or the Internet are not tied to a particular
machine); In re TLI Commc’ns LLC Patent Litig., 823 F.3d 607, 611–12
(Fed. Cir. 2016) (finding that a server “merely provide[s] a generic
environment in which to carry out the abstract idea” when “described simply
in terms of performing generic computer functions such as storing,
receiving, and extracting data”). Moreover, the Specification provides that
“[t]he systems or systems discussed herein are not limited to any particular
hardware architecture or configuration. A computing device can include any
suitable arrangement of components that provide a result conditioned on one
or more inputs.” Spec. ¶ 132. “Any suitable programming, scripting, or
other type of language or combinations of languages may be used to
implement the teachings contained herein in software to be used in
programming or configuring a computing device.” Id.
Appellant further argues that the claimed invention “improve[s]
computer-related technology by facilitating an efficient response to queries
for audience size.” Appeal Br. 5. For example, Appellant argues that, “by
using a master device and a secondary device, the system recited in claim 17
is able to more quickly service queries, resulting [i]n audience prediction
being obtained more quickly.” Id. at 11; see Reply Br. 5. We are
unpersuaded by Appellant’s argument and agree with the Examiner that the
claims do not recite a technological improvement in addition to the abstract
idea. See Ans. 6; Final Act. 5–7.
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As discussed above, the recited “web server,” “master device,” and
“secondary device” are merely generic computer components performing
generic functions of computer processing and communication. The other
additionally recited elements, i.e., the “receiv[ing]” and “transmit[ting]”
steps, merely involve collecting or sending data and “do not require an
arguably inventive set of components or methods, such as measurement
devices or techniques, that would generate new data” or “invoke any
assertedly inventive programming.” Elec. Power Grp., LLC v. Alstom S.A.,
830 F.3d 1350, 1355 (Fed. Cir. 2016). Although Appellant argues that the
claimed features “enable a more effective use of computing resources . . . .
by distinguishing between different audience groups” (Appeal Br. 12
(emphasis omitted)), the differentiation between audience groups results
from the recited “segment rule” including “visitor traits,” which, as
discussed above in the analysis under Step 2A, Prong 1, are part of the
mental processes/abstract idea. The claims simply recite an existing
practice—predicting an audience size for marketing and advertisements—
with the benefit of generic computer technology. See OIP Techs., Inc. v.
Amazon.com, Inc., 788 F.3d 1359, 1363 (Fed. Cir. 2015) (finding that
“relying on a computer to perform routine tasks more quickly or more
accurately is insufficient to render a claim patent eligible”). Thus, the
claims do not reflect an improvement in computer functionality or to any
other technology or technical field. See Revised Guidance, 84 Fed. Reg. at
55; MPEP § 2106.05(a).
Even in combination, the additional limitations do not integrate the
abstract idea into a practical application because they do not impose any
meaningful limits on practicing the abstract idea. Accordingly, we agree
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with the Examiner that the claims are directed to an abstract idea. See
Ans. 6.
Step 2B
Turning to Step 2B of the Revised Guidance, we agree with the
Examiner that there are no specific limitations beyond the judicial exception,
i.e., the abstract idea, that are not well-understood, routine, and conventional
in the field. See Final Act. 6; Ans. 8; Alice, 573 U.S. at 225.
For example, the “web server,” “master device,” and “secondary
device” additionally recited in claim 17 are mere recitations of generic
computer components performing generic computer functions that are
well-understood, routine, and conventional, and thus do not amount to
significantly more than the abstract idea. See, e.g., Spec. ¶¶ 13 (generally
referring to “server devices” and “servers”), 48 (disclosing “web server
432 . . . implemented as an Apache Tomcat web service” and “comparable
web services”), 49–50 (describing a “master cluster” and “slave cluster” as
clusters of servers, such as “Solr servers”). As indicated by the Examiner,
those additional elements amount to no more than mere instructions to apply
the abstract idea using generic computer components, which do not provide
an inventive concept. See Final Act. 5; Ans. 6; Alice, 573 U.S. at 223–24.
Reevaluating the extra-solution activity of “receiv[ing] a request for
calculation of size of an audience segment, the request comprising a segment
rule that includes one or more visitor traits of members of the audience
segment and a time range including at least a future time duration,”
“receiv[ing] from a secondary device, a plurality of responses corresponding
to the plurality of database queries,” “receiv[ing] a sampled subset of
audience data,” “receiv[ing] the replicated set of audience data from a
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master device,” and “receiv[ing], from the web server, the plurality of
database queries” (see Revised Guidance, 84 Fed. Reg. at 56 (stating that a
conclusion under Step 2A that an additional element is insignificant extra-
solution activity should be reevaluated in Step 2B)), we find nothing
unconventional in these steps of collecting the various information used to
predict a future size of an audience segment. Likewise, reevaluating the
extra-solution activity of “transmit[ting] a replicated set of audience data
comprising the indexed data to the secondary device” and “transmit[ting] the
plurality of responses to the web server,” we find nothing unconventional in
these steps of transmitting information used to predict a future size of an
audience segment.
Appellant has not shown that the claims on appeal add any specific
limitation beyond the judicial exception that is not well-understood, routine,
and conventional in the field. While Appellant argues that the claims recite
a “nonconventional and non-generic arrangement of elements to provide a
technical improvement” (Appeal Br. 12 (emphasis omitted)) and that the
Examiner has not demonstrated the combination of additional elements to be
well-understood, routine, or conventional (Appeal Br. 14–16 (citing
Berkheimer v. HP, Inc., 881 F.3d 1360, 1368 (Fed. Cir. 2018)); Reply Br. 1–
4), we are unpersuaded by Appellant that the additional elements are
unconventional in combination. Specifically, we find that the combination
of the additional elements (“web server,” “master device,” “secondary
device,” and extra-solution steps of “receiv[ing]” and “transmit[ting]”
information or data) merely reflects receiving and transmitting data across
multiple generic computer components. We agree with the Examiner that
“the ordered combination adds nothing that is not already present when
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looking at the elements taken individually.” Final Act. 6. Thus, Appellant
has not shown that the ordered combination of claim elements is
unconventional or amounts to significantly more than the abstract idea to
which the claims are otherwise directed.
Accordingly, considering the claim elements individually and as an
ordered combination, we agree with the Examiner that there are no
meaningful claim limitations that represent sufficiently inventive concepts to
transform the nature of the claims into a patent-eligible application of the
abstract idea. See Final Act. 8; Ans. 6.
For the foregoing reasons, we sustain the Examiner’s rejection of
claims 1, 3–6, 12–14, 16, 17, 21, and 26–34 under 35 U.S.C. § 101.
CONCLUSION
We affirm the Examiner’s rejection of claims 1, 3–6, 12–14, 16, 17,
21, and 26–34 under 35 U.S.C. § 101.
DECISION SUMMARY
In summary:
Claims
Rejected 35 U.S.C. § Basis Affirmed Reversed
1, 3–6, 12–14,
16, 17, 21,
26–34
101 Eligibility 1, 3–6, 12–14,
16, 17, 21,
26–34

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TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1) (iv).

AFFIRMED