Adobe Inc.

Patent Trials and Appeals Board

Apr 30, 2020

14660024 - (D) (P.T.A.B. Apr. 30, 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.
14/660,024 03/17/2015 Kevin Gary Smith P5165-US 1847
108982 7590 04/30/2020
SBMC
116 W. Pacific Avenue
Suite 200
Spokane, WA 99201
EXAMINER
GOLDBERG, IVAN R
ART UNIT PAPER NUMBER
3624
NOTIFICATION DATE DELIVERY MODE
04/30/2020 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):
docket@sbmc-law.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KEVIN GARY SMITH, WILLIAM BRANDON GEORGE, and
WALTER WEI-TUH CHANG
Appeal 2019-006115
Application 14/660,024
Technology Center 3600
Before MURRIEL E. CRAWFORD, PHILIP J. HOFFMANN, and
BRADLEY B. BAYAT, Administrative Patent Judges.
CRAWFORD, 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 1–20. 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. Appellant identifies the real party in interest as Adobe, Inc. Appeal
Br. 3.
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CLAIMED SUBJECT MATTER
The disclosure describes “[s]egment membership determination for
content provisioning,” where the content may be advertising, web pages,
periodicals, articles, and other content. Spec. ¶¶ 10, 61. Independent claim
1, reproduced below, is illustrative of the claimed subject matter:
1. A method of determining, in a device, whether a user is
included in a segment, the method comprising:
obtaining, by a probabilistic segment membership
determination system of the device from a data store, segment
membership criteria for the segment, the segment membership
criteria including multiple elements and corresponding values for
the multiple elements;
generating an element score for at least one element in the
segment membership criteria by the probabilistic segment
membership determination system of the device that indicates
how close a user value for at least one element in a user data is
to a corresponding value for the at least one element in the
segment membership criteria by:
obtaining, from the data store, the corresponding
value for the at least one element in the segment
membership criteria;
determining, from the user data, the user value for
the at least one element in the user data;
comparing, the user value for the at least one
element in the user data with the corresponding value for
the at least one element in the segment membership
criteria; and
generating the element score based on a difference
between the user value for the at least one element in the
user data and the corresponding value for the at least one
element in the segment membership criteria; and
generating, by the probabilistic segment membership
determination system of the device, a confidence value that the
user is included in the segment based on the element score; and
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providing, by a segmentation-based content provisioning
system of the device, content for display to the user based on the
confidence value.
REJECTIONS
Claims 1–20 are rejected under 35 U.S.C. § 101 as directed to a
judicial exception (i.e., an abstract idea) without reciting significantly more.
Claims 1–3 and 5–20 are rejected under 35 U.S.C. § 103 as
unpatentable over Baum (US 2012/0226559 A1, published Sept. 6, 2012),
Kowalchuck (US 2012/0203780 A1, published Aug. 9, 2012), and
Priyadarshan (US 2012/0042253 A1, published Feb. 16, 2012).
Claim 4 is rejected under 35 U.S.C. § 103 as unpatentable over Baum,
Kowalchuck, Priyadarshan, and Trenkle (US 2014/0289017 A1, published
Sept. 25, 2014).
OPINION
Rejection under 35 U.S.C. § 101
An invention is patent-eligible if it claims a “new and useful process,
machine, manufacture, or composition of matter.” 35 U.S.C. § 101.
However, the Supreme Court has long interpreted 35 U.S.C. § 101 to include
implicit exceptions: “[l]aws of nature, natural phenomena, and abstract
ideas” are not patentable. E.g., Alice Corp. v. CLS Bank Int’l, 573 U.S. 208,
216 (2014).
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court’s two-step framework, described in Mayo
and Alice. Alice, 573 U.S. at 217–18 (citing Mayo Collaborative Servs. v.
Prometheus Labs., Inc., 566 U.S. 66, 75–77 (2012)). In accordance with
that framework, we first determine what concept the claim is “directed to.”
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See Alice, 573 U.S. at 219 (“On their face, the claims before us are drawn to
the concept of intermediated settlement, i.e., the use of a third party to
mitigate settlement risk.”); see also Bilski v. Kappos, 561 U.S. 593, 611
(2010) (“Claims 1 and 4 in petitioners’ application explain the basic concept
of hedging, or protecting against risk.”).
Concepts determined to be abstract ideas, and thus patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219–20; Bilski, 561 U.S. at 611);
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594–95 (1978)); and
mental processes (Gottschalk v. Benson, 409 U.S. 63, 67 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as “molding rubber products” (Diamond v. Diehr, 450 U.S. 175, 191
(1981)); “tanning, dyeing, making water-proof cloth, vulcanizing India
rubber, smelting ores” (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S.
252, 267–68 (1853))); and manufacturing flour (Benson, 409 U.S. at 69
(citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
In Diehr, the claim at issue recited a mathematical formula, but the
Supreme Court held that “a claim drawn to subject matter otherwise
statutory does not become nonstatutory simply because it uses a
mathematical formula.” Diehr, 450 U.S. at 187; see also id. at 191 (“We
view respondents’ claims as nothing more than a process for molding rubber
products and not as an attempt to patent a mathematical formula.”). Having
said that, the Supreme Court also indicated that a claim “seeking patent
protection for that formula in the abstract . . . is not accorded the protection
of our patent laws, and this principle cannot be circumvented by attempting
to limit the use of the formula to a particular technological environment.”
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Id. (citing Benson and Flook); see, e.g., id. at 187 (“It is now commonplace
that an application of a law of nature or mathematical formula to a known
structure or process may well be deserving of patent protection.”).
If the claim is “directed to” an abstract idea, we turn to the second
step of the Alice and Mayo framework, where “we must examine the
elements of the claim to determine whether it contains an ‘inventive
concept’ sufficient to ‘transform’ the claimed abstract idea into a patent-
eligible application.” Alice, 573 U.S. at 221 (quotation marks omitted). “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. (quoting Mayo, 566 U.S. at 77).
“[M]erely requir[ing] generic computer implementation[] fail[s] to transform
that abstract idea into a patent-eligible invention.” Id.
The PTO recently published revised guidance on the application of
§ 101. 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed.
Reg. 50 (Jan. 7, 2019) (“Guidance”). Under the 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 a fundamental economic
practice, or mental processes); and
(2) additional elements that integrate the judicial exception into
a practical application (see Manual of Patent Examining
Procedure (“MPEP”) § 2106.05(a)–(c), (e)–(h)).
Only if a claim (1) recites a judicial exception and (2) does not integrate
that exception into a practical application, do we then look to whether the
claim:
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(3) adds a specific limitation beyond the judicial exception that
is not “well-understood, routine, 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 Guidance.
Prong One of Step 2A of the Guidance
The Appellant argues claims 1–20 together as a group. Appeal Br. 26.
We select claim 1 as representative. See 37 C.F.R. § 41.37(c)(1)(iv).
The Examiner determines claim 1 “is directed to an abstract idea,
specifically collecting information, analyzing it, and displaying the results
(Electric Power Group).” Final Act. 3. The Examiner explains the claims
recite “certain methods of organizing human activity,” because
“[s]egmenting users into different groups is part of the field of marketing.”
Answer 4.
We consider the claim language to determine what the claim is
directed to. Guidance at 53–54. Claim 1 recites “generating an element
score . . . by” performing steps that include “determining . . . the user value
for the at least one element,” “comparing, the user value . . . with the
corresponding value for . . . the segment membership criteria,” and
“generating the element score based on a difference between the user value
. . . and the corresponding value for the at least one element in the segment
membership criteria.” See claim 1 supra. The Specification describes that
the determining, comparing, and generating steps, within the “generating an
element score” step, encompass the use of mathematical operations such as
subtraction and division. Spec. ¶¶ 27–31 (cited, except for ¶ 31, at Appeal
Br. 4–5). Also, the method encompasses assignment of a numeric value
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based on an arbitrary system. Id. ¶ 31 (“geographic location element 318 is
partially satisfied (e.g., in the US but not the southwest US), and generates
an element score for the geographic location element 318 of 0.5 (e.g., due to
the user living in a geographic location that is adjacent to the location
identified”).
The steps thus involve mathematical calculations, which can be
performed mentally.
The claim also calls for “generating . . . a confidence value that the
user is included in the segment based on the element score.” The
Specification describes that this also involves mathematical calculations.
Spec. ¶ 11 (cited at Appeal Br. 5) (“confidence value that the user is
included in the segment is determined by combining (e.g., averaging or
adding) the element scores for the multiple elements in the set of criteria”).
These steps in the method are thus steps that can be performed
mentally, through evaluation and judgment, and involve mathematical
calculations, both of which are categories of judicial exceptions. Guidance
at 52.
The steps are also directed to steps directly related to advertising, and
targeted advertising, in particular. Spec. ¶¶ 21, 22, 61, 62. This is one of
certain methods of organizing human activity, because methods that practice
advertising are fundamental economic principles or practices. Guidance
at 52.
Claim 1 is thus directed to a judicial exception, as a mental process, as
mathematical calculations, and as for providing advertising.
Prong Two of Step 2a of the Guidance
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Next, we evaluate whether the judicial exception is integrated into a
“practical application.” Guidance at 54.
The additional elements, beyond the abstract idea, are, as follows:
“obtaining, by a probabilistic segment membership determination system of
the device from a data store, segment membership criteria for the segment,
the segment membership criteria including multiple elements and
corresponding values for the multiple elements,” “obtaining, from the data
store, the corresponding value for the at least one element in the segment
membership criteria,” and “providing, by a segmentation-based content
provisioning system of the device, content for display to the user based on
the confidence value,” as well as generating the element score “by the
probabilistic segment membership determination system of the device.”
As to the “obtaining,” the Specification describes that “segment
membership criteria can be obtained from various different sources.” Spec.
¶ 54 (cited at Appeal Br. 4); see also Spec. ¶ 16. We view the “obtaining” as
data gathering steps. The “providing” is described as being that “particular
content (e.g., an advertisement) is displayed,” which merely outputs results.
Spec. ¶ 21 (cited at Appeal Br. 5). The obtaining and providing steps thus
are insignificant extra-solution activity. See Guidance 55; see also MPEP
§ 2106.05(g).
The “probabilistic segment membership determination system 104” is
described as being able to “be implemented on different ones of multiple
computing devices.” Spec. ¶ 15. The Specification describes this as a
program executing on a general-purpose computer. Spec. ¶ 65 (“Computing
device 502 may be, for example, a server of a service provider, a device
associated with a client (e.g., a client device), an on-chip system, and/or any
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other suitable computing device or computing system.”) (cited by way of
Figure 5 at Appeal Br. 4). Thus, the method does not improve the
underlying “system” recited as performing the limitations of claim 1,
because any general-purpose computer processor can be used to execute the
claimed method, and is unchanged in its operations by the claimed method.
In addition, the method is directed to “content provisioning” (Spec.
¶ 10 (cited at Appeal Br. 4)), and as such the claimed method does not
improve another technology. Guidance at 55; see also MPEP § 2106.05(a).
Because a particular computer is not required, the claim also does not define
or rely on a “particular machine.” Guidance at 55; see also MPEP
§ 2106.05(b). Further, the method does not transform matter. Guidance at
55; see also MPEP § § 2106.05(c). The method has no other meaningful
limitations (MPEP § 2106.05(e)), and thus merely recites instructions to
execute the abstract idea on a computer (MPEP § 2106.05(f)). Guidance
at 55.
As such, we determine that claim 1 does not integrate the judicial
exception into a “practical application.”
Step 2B of the Guidance
In Step 2B, we consider whether an additional element or combination
of additional elements adds a specific limitation or combination of
limitations that are not well-understood, routine, conventional activity in the
field. Guidance at 56.
Obtaining data from a “data store,” as recited in claim 1, involves
simple data access and retrieval. Providing content is described as
encompassing that “coupons or advertisements are to be provided to a device
of the user (e.g., the user’s wireless phone, watch, eyeglasses, etc.).” Spec.
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¶ 62. This may involve the simple display of data on a device’s user
interface. Both the manner of obtaining data and displaying content are thus
well-understood, routine, and conventional activities. The operations of
storing, analyzing, receiving, and writing data are primitive computer
operations found in any computer system. See 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,’ discussed below, those functions can be achieved by any general
purpose computer without special programming.”).
We thus conclude under Step 2B that the method of claim 1 does not
represent an inventive concept that is something more than the recited
abstract idea.
Appellant’s Arguments
We are not persuaded by the Appellant’s argument that the Examiner
“ignores significant portions of the claims in the subject matter eligibility
analysis,” by mischaracterizing the three “generating” limitations as analysis
steps, which, the Appellant argues, are “not ‘analyzing.’” Appeal Br. 19–
20; see also Reply Br. 4–5. Presumably, this is an attempt to distinguish the
claims from Electric Power Group, LLC v. Alstom, S.A., 830 F.3d 1350,
1351 (Fed. Cir. 2016). However, our analysis under the Guidance, above,
makes this argument unpersuasive as we do not ignore any claim language
in our analysis. Nor does our analysis rely solely on the claims being similar
to those of Electric Power Group.
Similarly, we are unpersuaded by the Appellant’s argument that the
Examiner’s reliance on the Electric Power Group decision is inappropriate,
“because the present claims recite more than just receiving data and
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displaying something based on the received data.” Appeal Br. 22. Our
analysis under the Guidance, above, makes this argument unpersuasive See
also MPEP § 2106.04(a)(2)(III)(B) (categorizing the method in Electric
Power Group as involving the analysis, of information, that can be
performed mentally).
The Appellant argues that, based on the alleged improvement in
“content provisioning technology,” “the claimed advance is a concrete
assignment of specified functions among a computer’s components to
improve content provisioning technology, and this claimed improvement in
computer functionality is eligible for patenting.” Appeal Br. 24–25. This
argument is unpersuasive because any alleged improvement, such as by
“generating . . . a confidence value,” rather than using Boolean values (id.),
points to the abstract idea itself. Even unconventional abstract ideas are still
unpatentable. See SAP Am., Inc. v. Investpic, LLC, 890 F.3d 1016, 1018
(Fed. Cir. 2018). “What is needed is an inventive concept in the non-
abstract application realm.” SAP Am., Inc. v. InvestPic, LLC, 898 F.3d 1161,
1168 (Fed. Cir. 2018). See also Mayo, 566 U.S. at 90 (holding that a novel
and nonobvious claim directed to a purely abstract idea is, nonetheless
patent-ineligible). See also Synopsys, Inc. v. Mentor Graphics Corp., 839
F.3d 1138, 1151 (Fed. Cir. 2016) (“[A] claim for a new abstract idea is still
an abstract idea.”) (emphasis omitted). An improvement to an abstract idea
is ineligible subject matter, unless it integrates the abstract idea into a
“practical application,” or recites “significantly more” in the form of an
“inventive concept.” See generally Guidance.
The Appellant next argues, citing DDR Holdings, LLC v. Hotels.com,
L.P., 773 F.3d 1245, 1258 (Fed. Cir. 2014), that the claims recite “something
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more” because, according to the Appellant, the claims “recite how
interactions are manipulated to achieve a desirable result.” Appeal Br. 24–
25. Appellant’s reliance on DDR Holdings is unpersuasive, because the
claims at issue do not address a problem unique to the Internet. See
Intellectual Ventures I LLC v. Capital One Bank (USA), 792 F.3d 1363,
1371 (Fed. Cir. 2015) (“The patent at issue in DDR provided an Internet-
based solution to solve a problem unique to the Internet that (1) did not
foreclose other ways of solving the problem, and (2) recited a specific series
of steps that resulted in a departure from the routine and conventional
sequence of events after the click of a hyperlink advertisement. The patent
claims here do not address problems unique to the Internet, so DDR has no
applicability.” (citation omitted)). Indeed, selecting advertising for display,
based on user characteristics, has been performed without computers since
the dawn of advertising.
We are unpersuaded by the Appellant’s argument, that “the claims as
a whole are integrated into a practical application,” because “the claims
reflect an improvement to a technology or a technical field by improving
content provisioning technology.” Appeal Br. 25–26; see also Reply Br. 3–
4 (arguing the Examiner “ignored the technological improvements in the
Examiner’s subject matter eligibility analysis by characterizing the
technological improvements as improvements to an abstract idea”). Because
the invention is directed to “content provisioning,” the claims do not
improve another technology. See Guidance at 55. If the claims represent an
improvement, the improvement is in a method that can be performed in the
mind.
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The Appellant has not shown error in the Examiner’s rejection of
claims 1–20 under 35 U.S.C. § 101. Therefore, we sustain the rejection of
claims 1–20 as directed to a judicial exception without significantly more.

Rejection under 35 U.S.C. § 103
As to the limitation “generating the element score based on a
difference between the user value for the at least one element in the user data
and the corresponding value for the at least one element in the segment
membership criteria,” in each independent claim, the Examiner finds this
limitation disclosed by Baum at paragraphs 19 and 23. Final Act. 11; see
also id. 18, 20 (finding independent claims 10 and 17 are rejected for the
same reasons as claim 1). Specifically, the Examiner relies on the statement
in paragraph 19 as to generating a score which “exceeds the offer provider’s
minimum threshold,” and the statement in paragraph 23 that the data used
for matching attributes may include a score. Id. (emphasis omitted). The
Examiner also finds, in addition to paragraph 23 of Baum disclosing that the
data includes a score, “Baum also discloses in paragraph 19 alternatively
generating a score based on exceeding a threshold (i.e. a difference is then
calculated relative to the threshold). . . . Thus, Baum explicitly is scoring the
comparison/difference between user attributes and target attributes in either
paragraph 19 or 23.” Answer 18–19.
The Appellant argues that Baum fails to disclose the claim language
because Baum has no reason to calculate a score for the target attributes, to
classify customers into micro-segments. Appeal Br. 34. In response to the
Examiner’s statements in the Answer, the Appellant argues, persuasively,
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that Baum does not disclose “a difference is calculated relative to the
threshold.” Reply Br. 6–7.
As to paragraph 23 of Baum, disclosing that attribute data may
include “a score” (as well as “an approximate number of consumers in the
micro-segment, an approximate number of consumers in the micro-segment
above a threshold to avoid small micro-segment populations, and/or other
statistics about the micro-segment classification” that the Examiner did not
repeat), Baum does not disclose here that that score was generated “based on
a difference.”
As to a score being calculated that exceeds a threshold, in
paragraph 19 of Baum, this does not mean that the score is generated by
subtracting the threshold value, as the Examiner appears to conclude. Baum
discloses, specifically, “a user may not have to match all of the attributes,
but may match enough of the attributes to generate a score that exceeds the
offer provider’s minimum threshold.” Baum ¶ 19. This merely means that
not all the data needs to matched, if a subset of it generates a score that is
high enough to include a user in a target group. It does not mean that a
mathematical subtraction operation, which is what the claimed “difference”
requires, was performed to generate the score. See Spec. ¶ 27 (“the element
score is generated by determining how close an element is to being satisfied
(e.g., based on a difference between the user data for the element and the
value of the element). For example, if an element indicates that the user age
is to be at least 30 years old, and the user is 27 years old, then the element
score can be 0.9 (1-(30-27)÷30=0.9).”).
Finally, as to the Examiner’s erroneous assertion that “Baum
explicitly is scoring the comparison/difference between user attributes and
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target attributes” (Answer 18–19), we find Baum instead discloses a
“determination of which users in the plurality of users 106 have user
attribute values that match the target attributes.” Baum ¶ 19; see also id.
¶ 23 (“determine a micro-segment classification from the plurality of users
that each has a match between the set of user attributes and the set of target
attributes”). Determining which values match does not involve calculating a
difference between those values.
The Examiner has thus failed to establish that the combination of cited
references renders obvious the claimed step of “generating the element score
based on a difference between the user value for the at least one element in
the user data and the corresponding value for the at least one element in the
segment membership criteria.” For this reason, we do not sustain the
rejection of the independent claims, nor of the claims that depend from
them, which are rejected over the same combination of references. In
addition, because the Examiner has not established on the record that
Trenkle remedies the deficiencies in the rejections of independent claims, we
also do not sustain the rejection of claim 4 as obvious.
CONCLUSION
The Examiner’s rejection under 35 U.S.C. § 101 is sustained.
The Examiner’s rejections under 35 U.S.C. § 103 are not sustained.
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DECISION SUMMARY
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–20 101 Judicial exception 1–20
1–3, 5–20 103 Baum, Kowalchuck,
Priyadarshan
1–3, 5–20
4 103 Baum, Kowalchuck,
Priyadarshan, Trenkle
4
Overall
Outcome
1–20

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). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED