Chitilian, Varouj A. et al.

Patent Trials and Appeals Board

Dec 23, 2019

13474977 - (D) (P.T.A.B. Dec. 23, 2019)

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.
13/474,977 05/18/2012 Varouj A. Chitilian 16113-2874001 2262
26192 7590 12/23/2019
FISH & RICHARDSON P.C.
PO BOX 1022
MINNEAPOLIS, MN 55440-1022
EXAMINER
SUMMERS, KIERSTEN V
ART UNIT PAPER NUMBER
3688
NOTIFICATION DATE DELIVERY MODE
12/23/2019 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):
PATDOCTC@fr.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte VAROUJ A. CHITILIAN, ILYA NETCHITAILO,
NIKHIL BAKSHI, JIAQI YU, and CHETAN PATEL
____________

Appeal 2019-002117
Application 13/474,977
Technology Center 3600
____________

Before DONALD E. ADAMS, FRANCISCO C. PRATS, and
MICHAEL A. VALEK, Administrative Patent Judges.

ADAMS, Administrative Patent Judge.

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–10, 12–18, and 20–25. We have
jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

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 “Google
LLC” (Appellant’s August 30, 2018 Appeal Brief (Appeal Br.) 1).
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STATEMENT OF THE CASE
Appellant’s disclosure relates to “managing application program
interface [(API)] calls for script execution in, for example, an advertising
management environment” (Spec.2 1:12–13). Appellant’s independent claim
1 is representative and reproduced below:
1. A system, comprising:
a data processing apparatus including one or more computers;
and
a computer storage system storing instructions that when
executed by the data processing apparatus cause the data
processing apparatus to perform operations comprising:
executing, for each of a plurality of rules, a
corresponding script defining the rule, the rule being associated
with a campaign management entity of an advertising campaign
and defining an operation and a corresponding event, the event
being an occurrence of a condition defined for the campaign
management entity, and the operation specifying an entity
change for the associated campaign management entity, the
execution of the script comprising:
identifying requests to an advertising service, each
request being for a respective first cardinality of first entities of
a same first entity type and corresponding to the campaign
management entity;
determining, for API calls for entities of the first entity
type, a given cardinality limit that provides a target success rate
for the API calls for entities of the first entity type, the given
cardinality limit specifying a maximum number of entities of
the first entity type for which a single API call for entities of the
first entity type is allowed, the target success rate being a
percentage of the API calls for entities of the first entity type
that do not time out before the advertising service responds to
the API calls, the determining comprising:

2 Appellant’s May 18, 2012 Specification.
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determining, for each of a plurality of cardinality
limits, a success rate of previous API calls for a number of
entities of the first entity type that matches the cardinality limit,
the success rate for each cardinality limit being a percentage of
the previous API calls for the number of entities that did not
time out before the advertising service responded to the API
calls; and
identifying, as the given cardinality limit, a
cardinality limit for which the success rate for the cardinality
limit meets the target success rate;
for each request in which the respective first cardinality
is greater than the given cardinality limit, generating a plurality
of API calls to the advertising service for first entities of the
request, each of the plurality of API calls specifying up to the
given cardinality limit of entities of the first entity type,
including:
generating a first API call to the advertising
service for a first set of the first entities, the first set including a
number of first entities that is less than or equal to the given
cardinality limit; and
generating one or more additional API calls to the
advertising service for remaining first entities not included in
the first set of the first entities, each of the one or more
additional API calls specifying up to the given cardinality limit
of first entities; and
for each given request in which the respective first
cardinality is less than the given cardinality limit, generating a
single API call to the advertising service for first entities of the
given request, wherein at least one request has a respective first
cardinality that is greater than the given cardinality limit and at
least one other request has a respective first cardinality that is
less than the given cardinality limit.
(Appeal Br. 12–13.)

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Ground of rejection before this Panel for review:
Claims 1–10, 12–18, and 20–25 stand rejected under 35 U.S.C. § 101.

ISSUE
Does the preponderance of evidence of record support Examiner’s
finding that Appellant’s claimed invention is directed to patent ineligible
subject matter?
PRINCIPLES OF LAW
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. Id. 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.” 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
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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 (1854))); and manufacturing flour (Gottschalk, 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 176; 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.” Id. (citing Gottschalk and Parker); 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
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concept’ sufficient to ‘transform’ the claimed abstract idea into a patent-
eligible application.” Alice, 573 U.S. at 221 (internal 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. (alterations in original) (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 published revised guidance on the application of
§ 101. USPTO, 2019 Revised Patent Subject Matter Eligibility Guidance,
84 Fed. Reg. 50 (January 7, 2019) (“Revised Guidance”). Under 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 a fundamental economic
practice, or mental processes); and
(2) additional elements that integrate the judicial exception into
a practical application (see MPEP §§ 2106.05(a)–(c), (e)–(h)).
See Revised Guidance, 84 Fed. Reg. at 54–55. 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:
(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 Revised Guidance, 84 Fed. Reg. at 51.

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ANALYSIS
Applying the Revised Guidance to the facts on this record, we find
that Appellant’s claims are directed to patent-eligible subject matter.
The Revised Guidance instructs us first to determine whether any
judicial exception to patent eligibility is recited in the claim. The Revised
Guidance identifies three judicially-excepted groupings identified by the
courts as abstract ideas: (1) mathematical concepts, (2) certain methods of
organizing human behavior such as fundamental economic practices, and (3)
mental processes.
On this record, Examiner finds that Appellant’s claimed invention is
“directed to the idea of batch processing information according to
constraints . . . a concept similar to those previously found by the courts to
be abstract” (see Ans.3 3–4 (citing Dealertrack, Inc. v. Huber, 674 F.3d 1315
(Fed. Cir. 2012), In re Maucorps, 609 F.2d 481 (CCPA 1979), and Digitech
Image Techs., LLC v. Elecs. for Imaging, Inc., 758 F.3d 1344 (2014))).
Having found that Appellant’s claims are directed to a mental process,
Examiner further finds that Appellant’s claims
do not include additional elements that are sufficient to amount
to significantly more than the judicial exception because the
additional elements in the claims when considered alone and in
combination amount to no more than:
(1) Generally linking the use of the judicial exception to
a particular technological environment or field of use . . .,
. . . .
(2) Adding the words “apply it” (or an equivalent) with
the judicial exception or mere instruction to implement an
abstract idea on a computer . . .,

3 Examiner’s November 16, 2018 Answer.
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[a]nd (3) Simply appending well-understood, routine and
conventional activities previously known to the industry,
specified at a high level of generality, to the judicial exception.
(Ans. 4–6; see also id. at 6–11.)
Thus, Examiner finds that Appellant’s claimed invention “is directed
to a judicial exception . . . without significantly more” (id. at 3). We are not
persuaded.
Initially, we agree with Examiner that Appellant’s claimed invention
involves a mental process, i.e. an abstract idea, wherein instructions, when
executed by a data processing apparatus, cause the data processing apparatus
to perform a series of operations (see generally Appeal Br. 12–13). We
note, however, that “[i]n cases involving software innovations, th[e] inquiry
often turns on whether the claims focus on ‘the specific asserted
improvement in computer capabilities . . . or, instead, on a process that
qualifies as an abstract idea for which computers are invoked merely as a
tool.’” Finjan, Inc. v. Blue Coat Sys., Inc., 879 F.3d 1299, 1303 (Fed. Cir.
2018) (quoting Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335–36
(Fed. Cir. 2016) (internal quotation marks omitted)).
In contrast to Examiner’s analysis, on this record, we find that
Appellant’s claimed invention recites additional elements that integrate the
judicial exception into a practical application, i.e., an improvement in
computer capabilities. Specifically, as Appellant discloses:
The system that provides for management and execution
of the rules may be external to an advertising management
system that manages and stores campaign data upon which the
rules operate. Accordingly, the two separate systems
communicate by means of application programming interface
(API) calls. During execution of a rule, an API call requested
data for a first entity can be expanded to request that same
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corresponding data for all previously requested entities. The
expansion of the API call can drastically reduce the number of
API calls between the systems, which, in turn, frees up
processing resources. The system can dynamically expand the
API calls during script execution, and thus script coding
optimization techniques need not be utilized at the script level.
Additionally, during execution API calls for the same
entity types can be batched for more efficient utilization of API
resources. The system can monitor success and failures of API
calls (e.g., monitor for API call timeouts, batch update failures,
etc.). The system can dynamically adjust the number
(cardinality) of entities being requested or updated for API calls
until a desired success rate is achieved. The batching of the
API call into apportioned API calls facilitates the writing of
scripts that do not need to take into account pre-defined call
limits. Furthermore, when an operation on a particular entity
fails, the API call can be regenerated to omit the particular
entity, thus ensuring at least partial success of a particular batch
execution.
(Spec. 4:1–18.) As Appellant explains:
The claimed technical solution dynamically adjusts the
maximum number of entities that can be included in API calls
based on determined success rates of API calls for a plurality of
cardinality limits and generates API calls that are limited by the
maximum number to ensure that the API calls achieve the target
success rate over time. Thus, the claimed solution is a “solution
to a problem in the software arts” and provides a “technological
solution to a technological problem,” namely how to limit
system failures, rather than “simply the addition of general
purpose computers added post-hoc to an abstract idea.”
(Appeal Br. 7 (citing MPEP § 2106.05(a); see also Reply Br. 2–4). See
Koninklijke KPN N.V. v. Gemalto M2M GmbH, 942 F.3d 1143, 1150 (Fed.
Cir. 2019) (“software inventions [were found] to be patent-eligible where
they have made non-abstract improvements to existing technological
processes and computer technology”).
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For the foregoing reasons, we find that Appellant’s claims integrate
the judicial exception into a practical application. This concludes the
eligibility analysis on this record. Therefore, we need not address the
contentions on this record concerning what was, or was not, “well-
understood, routine, conventional” in the field. See generally Appeal Br. 1–
2; cf. Revised Guidance.
CONCLUSION
The preponderance of evidence of record fails to support Examiner’s
finding that Appellant’s claimed invention is directed to patent ineligible
subject matter. The rejection of claims 1–10, 12–18, and 20–25 under 35
U.S.C. § 101 is reversed.

DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § Basis Affirmed Reversed
1–10, 12–18,
20–25
101 Eligibility 1–10, 12–18,
20–25

REVERSED