CLARIFAI, INC.

Patent Trials and Appeals Board

May 4, 2020

2019001423 (P.T.A.B. May. 4, 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.
15/369,735 12/05/2016 John Rogers 033248-0450425 1894
27500 7590 05/04/2020
PILLSBURY WINTHROP SHAW PITTMAN LLP (CV)
ATTENTION: DOCKETING DEPARTMENT
P.O BOX 10500
McLean, VA 22102
EXAMINER
LAMARDO, VIKER ALEJANDRO
ART UNIT PAPER NUMBER
2126
NOTIFICATION DATE DELIVERY MODE
05/04/2020 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_IP@pillsburylaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOHN ROGERS, KEITH ITO, MARSHALL JONES,
DANIEL KANTOR, and MATTHEW ZEILER
Appeal 2019-001423
Application 15/369,735
Technology Center 2100
Before: JOSEPH L. DIXON, THU A. DANG, and
JAMES R. HUGHES, Administrative Patent Judges.
HUGHES, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Claims 1–12 and 14–21 are pending, stand rejected, are appealed by
Appellant,1 and are the subject of our decision under 35 U.S.C. § 134(a).
See Final Act. 1–2.2 We have jurisdiction under 35 U.S.C. § 6(b). An Oral
Hearing was held on April 15, 2020.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies the real party in interest as Clarifai, Inc.
Appeal Br. 2.
2 Throughout our decision we refer to Appellant’s Specification (“Spec.”)
filed Dec. 5, 2016 (claiming benefit of US 62/262,858, filed Dec. 3, 2015);
Appeal Brief (“Appeal Br.”) filed Aug. 24, 2018; and Reply Brief (“Reply
Br.”) filed Dec. 5, 2018. We also refer to the Examiner’s Final Office
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We REVERSE.
CLAIMED SUBJECT MATTER
The invention “relates to systems and methods for providing a user
interface that facilitates learning user preferences via real-time
recommendations of media items.” Spec. ¶ 2; Abstract. Claims 1 (reciting
an system) and 19 (reciting a method) are independent. Claim 1, reproduced
below, is illustrative of the claimed subject matter:
1. A system for updating, on a user interface,
recommendations in real-time based on user selection of media
item recommendations provided via the user interface, the
system comprising:
one or more hardware processors configured by machine-
readable instructions to:
[A] receive a user request to add a new concept
that is to be learned by a neural network;
[B] cause a set of media item recommendations to
be loaded on a user interface for presentation to a user
responsive to the user request to add the new concept, the media
item recommendation set comprising a set of recommendations
loaded on an on-screen portion of the user interface and a set of
recommendations loaded on an off-screen portion of the user
interface, the on-screen user interface portion being visible to
the user at a first time, and the off-screen user interface portion
not being visible to the user at the first time;
[C] receive a user selection of one or more
recommendations of the on-screen recommendation set;
[D] identify, based on the user recommendation
selection, one or more recommendations of the on-screen
recommendation set that are not included in the user

Action (“Final Act.”) mailed June 25, 2018; and Answer (“Ans.”) mailed
Oct. 5, 2018.
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recommendation selection as recommendations that do not
convey the new concept, the identified recommendations not
included in the user recommendation selection being
recommendations that are not selected by the user;
[E] cause, based on the identified
recommendations not included in the user recommendation
selection, the off-screen recommendation set to be updated in
real-time on the off-screen user interface portion during the
presentation of the media item recommendation set;
[F] cause, based on a user manipulation of the
user interface, at least some of the updated off-screen user
recommendation set to become visible to the user;
[G] identify, as positive examples of the new
concept, based on the user recommendation selection, one or
more recommendations of the on-screen recommendation set
that are included in the user recommendation selection; and
[H] generate an indication on the user interface
that a threshold relating to the neural network has been
satisfied, the indication being generated based on a threshold
number of positive examples of the new concept being
identified during the presentation of the media item
recommendation set.
Appeal Br. 18–19 (Claims App.) (bracketed claim limitation designations
added).
REJECTION
The Examiner rejects claims 1–12 and 14–21 under 35 U.S.C. § 101
as being directed to patent-ineligible subject matter. Final Act. 2–9.
ANALYSIS
Subject Matter Eligibility—35 U.S.C. § 101
Under 35 U.S.C. § 101, a patent may be obtained for “any new and
useful process, machine, manufacture, or composition of matter, or any new
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and useful improvement thereof.” The Supreme Court has “long held that
this provision contains an important implicit exception: Laws of nature,
natural phenomena, and abstract ideas are not patentable.” Alice Corp. Pty.
Ltd. v. CLS Bank Int’l, 573 U.S. 208, 216 (2014) (quoting Association for
Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 589 (2013)).
The Supreme Court, in Alice, reiterated the two-step framework
previously set forth in Mayo Collaborative Servs. v. Prometheus Labs., Inc.,
566 U.S. 66, 77–80 (2012). “[F]or distinguishing patents that claim laws of
nature, natural phenomena, and abstract ideas from those that claim patent-
eligible applications of those concepts.” Alice, 573 U.S. at 217. The
framework requires us first to consider “whether the claims at issue are
directed to one of those patent-ineligible concepts.” Alice, 573 U.S. at 217.
If so, we then examine “the elements of [the] claim both individually and ‘as
an ordered combination’ to determine whether the additional elements
‘transform the nature of the claim’ into a patent-eligible application.” Alice,
573 U.S. at 217 (quoting Mayo, 566 U.S. at 78, 79). That is, we examine the
claim for an “inventive concept,” “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,
573 U.S. at 217–18 (quoting Mayo, 566 U.S. at 72–73).
The Patent Office has published revised guidance concerning this
framework and the application of § 101. USPTO’s 2019 Revised Patent
Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019)
(hereinafter “2019 Revised Guidance”). Under that guidance, we first look
to whether the claim recites:
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(1) any judicial exceptions, including certain groupings of
abstract ideas (i.e., mathematical concepts, mental processes, or
certain methods of organizing human activity such as a
fundamental economic practice or managing personal behavior
or relationships or interactions between people) (hereinafter
“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))
(hereinafter “Step 2A, prong 2”).3
See 2019 Revised Guidance, 84 Fed. Reg. 51–52, 55.
A claim that integrates a judicial exception into a practical application
applies, relies on, or uses the judicial exception in a manner that imposes a
meaningful limit on the judicial exception, such that the claim is more than a
drafting effort designed to monopolize the judicial exception. See 2019
Revised Guidance, 84 Fed. Reg. 54. When the judicial exception is so
integrated, then the claim is not directed to a judicial exception and is patent
eligible under 35 U.S.C. § 101. See 2019 Revised Guidance, 84 Fed. Reg.
54.
Only if a claim (1) recites a judicial exception and (2) does not
integrate that exception into a practical application, do we then evaluate
whether the claim provides an inventive concept. See 2019 Revised
Guidance, 84 Fed. Reg. 56; see also Alice, 573 U.S. at 217–18.
For example, we 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

3 All references to the MPEP are to the Ninth Edition, Revision 08–2017
(rev. Jan. 2018).
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(4) simply appends well-understood, routine, conventional
activities previously known to the industry, specified at a high
level of generality, to the judicial exception.4
See 2019 Revised Guidance, 84 Fed. Reg. 56. With these principles in
mind, we turn to the merits of the § 101 rejection. The Examiner rejects
Appellant’s claims 1–12 and 14–21 as being directed to patent-ineligible
subject matter. See Final Act. 2–4; Ans. 3–14. Appellant does not
separately argue the claims with specificity and, instead, argues the claims
together for this rejection. See Appeal Br. 6–16. Accordingly, we address
the Examiner’s rejection of independent claim 1 and the claims not
separately argued by Appellant as a group based on claim 1, as permitted by
37 C.F.R. § 41.37(c)(1)(iv)(2018). We further address the rejection of
Appellant’s claim 1 with respect to whether the claim recites a judicial
exception (an abstract idea), which is dispositive of the patent-eligibility
issue.
Statutory Subject Matter
Claim 1 recites a “system” (supra). Appellant’s “system” includes a
processor (“one or more hardware processors”) and a “user interface” that
displays information and receives user inputs. Appeal Br. 18–19 (Claims
App.) (claim 1). Accordingly, we analyze Appellant’s claim 1 and claim 19
(see claim 19, Appeal Br. 23–24 (Claims App.)) as a method (process)
performed using certain devices (that is machines performing the delineated
functionality), which is a statutory category of invention (subject matter)
(USPTO’s Step 1).

4 Items (3) and (4) are collectively referred to as “Step 2B” hereinafter and
in the 2019 Revised Guidance.
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Abstract Idea
The Examiner rejects Appellant’s claim 1 as being directed to patent-
ineligible subject matter. See Final Act. 2–4; Ans. 3–14. Specifically, the
Examiner concludes claim 1 and independent claim 19 “are directed to the
abstract idea of displaying results of the analyzed collected data,” similar to
Electric Power Group (Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d
1350 (Fed. Cir. 2016)). Final Act. 3.
Appellant contends the Examiner erred in rejecting the claims as
being directed to patent-ineligible subject matter. See Appeal Br. 6–12;
Reply Br. 2–8. Specifically, Appellant contends, inter alia, that “the
Examiner failed to consider the claims as a whole by ignoring the
requirements of the individual steps and overgeneralizing the claims to
identify an abstract idea.” Appeal Br. 6; see Appeal Br. 7; Reply Br. 2–5.
For the reasons discussed below, we conclude Appellant’s claim 1
(and the other pending claims) does not recite abstract ideas. In view of the
2019 Revised Guidance, we provide our reasoning as follows.
Claim 1 (Appeal Br. 18–19 (Claims App.)) recites a “system for
updating, on a user interface, recommendations in real-time based on user
selection of media item recommendations provided via the user interface”
by “receiv[ing] a user selection of one or more recommendations of the on-
screen recommendation set” displayed on the user interface (limitation C)
(emphasis added), “identify[ing] . . . recommendations of the on-screen
recommendation set that are not included in the user recommendation
selection” (limitation D), “caus[ing] . . . the off-screen recommendation set
to be updated in real-time on the off-screen user interface portion during the
presentation of the media item recommendation set” (limitation E), and
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“caus[ing], based on a user manipulation of the user interface, at least some
of the updated off-screen user recommendation set to become visible to the
user” (limitation F) (emphasis added). See Spec. ¶¶ 4–7, 19–21, 31, 32, 36,
37.
In summary, claim 1 recites a machine implemented process of
updating media item recommendations displayed on a user interface (a
graphical user interface (GUI)), responsive to a user’s interaction with
(manipulation of) information displayed on the GUI. Hereinafter, we refer
to this process as the “recommendation updating process.”
Appellant points out that claim 1 (as well as the other pending claims)
recites “identification of one or more recommendations of the on-screen
recommendation set that are not included in a user recommendation
selection and its specific use to cause the off-screen recommendation set to
be updated in real-time and to cause at least some of the updated off-screen
recommendation set to be visible to a user.” Appeal Br. 7. Appellant
contends “the Examiner failed to [properly] consider” these features together
(“the claim[] as a whole”) (Appeal Br. 6) and that updating displayed
information in response to the manipulation of the GUI is not a mental
process—“causing an off-screen recommendation set to be updated on an
off-screen user interface portion (which is not visible to a user) in real-time
. . . and causing the updated off-screen user recommendation set to become
visible to the user based on a user manipulation of the user interface are
significant processes that distinguish from ordinary mental processes”
(Reply Br. 3).
When interpreted in conjunction with the Specification (in particular,
Spec. ¶¶ 31, 32, and 35–37), claim 1 requires user selection (interaction)
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with information displayed on the interface (GUI), updating information (the
media item recommendations) on the interface (both visible and not visible
information), and in response to a user’s manipulation (e.g., clicking a link
or scrolling) making visible some of the updated, non-visible information.
Although, as set forth by the Examiner (see Final Act. 2–3; Ans. 3–6),
the individual limitations of claim 1 involve “displaying the results of
analyzing collected information” (Ans. 3) similar to Electric Power
Group—the Examiner does not appreciate how the limitations of claim 1 (in
particular, the ordered combination of limitations C–F) operate as a whole.
The receiving of data (the user’s selection) (limitation C), identification of
non-selected information (limitation D) and updating and displaying or
information (limitations E and F) separately and individually may involve a
mental process (see 2019 Revised Guidance, 84 Fed. Reg. at 52, 53
(“[m]ental processes” are “concepts performed in the human mind
(including an observation, evaluation, judgment, opinion)”), but the
combination of limitations C–F recites that the information is updated and
made visible by user interaction with the GUI. Put another way, the updated
information (visible recommendation set) is updated (the information
displayed changes) based a user’s interaction with the displayed information.
A user’s interaction with a GUI and updating non-visible information and
then displaying it based on the user’s interactions is not a mental process that
can practically be performed in the mind or using a pen and paper. The
instant claims are similar to the claims found to be to be patent-eligible in
SRI Int’l. See SRI International, Inc. v. Cisco Systems, Inc., 930 F.3d 1295,
1303–04 (Fed. Cir. 2019) (“[C]laims . . . directed to . . . using a plurality of
network monitors . . .[to] analyze specific types of data on the network”
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cannot practically be performed in the human mind—“the human mind is
not equipped to detect suspicious activity by using network monitors and
analyzing network packets as recited by the claims” (id. at 1304).). The
instant claims are also similar to the claims found to be to be patent-eligible
in Core Wireless. See Core Wireless Licensing S.A.R.L. v. LG Elecs., Inc.,
880 F.3d 1356, 1363 (Fed. Cir. 2018) (The claim “limitations disclose a
specific manner of displaying a limited set of information to the user, rather
than using conventional user interface methods to display a generic index on
a computer.”). The instant claims cannot practically be performed in the
human mind and, therefore, do not recite a mental process. See Bancorp
Servs., L.L.C. v. Sun Life Assurance Co. of Can. (U.S.), 687 F.3d 1266, 1279
(Fed. Cir. 2012) (discussing Research Corp. Techs., Inc. v. Microsoft Corp.,
627 F.3d 859, 868 (Fed. Cir. 2010)—“The method in Research Corp. could
not, as a practical matter, be performed entirely in a human’s mind,” where
the claimed method recited “processes for enabling a computer to render a
halftone image of a digital image by comparing, pixel by pixel, the digital
image against a two-dimensional array called a ‘mask,’” and “the claimed
invention presents functional and palpable applications in the field of
computer technology.”); see also USPTO’s October 2019 Update: Subject
Matter Eligibility, § II.C.i (available at https://www.uspto.gov/sites/default/
files/documents/peg_oct_2019_update.pdf) (“October 2019 Update”)
(“Claims do not recite a mental process when they do not contain limitations
that can practically be performed in the human mind.”).
In summary, we conclude Appellant’s claim 1 does not recite a
judicial exception (USPTO’s Step 2A, Prong 1; see 2019 Revised Guidance)
because claim 1 recites a machine implemented process of updating media
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item recommendations displayed on a user interface, responsive to a user’s
interaction with the interface—the recommendation updating process— that
cannot be practically performed in the human mind.
For at least the reasons above, we are persuaded of Examiner error in
the rejection of claim 1 under 35 U.S.C. § 101. Thus, we do not sustain the
Examiner’s rejection under § 101 of independent claim 1, independent claim
19, which recite commensurate limitations, and dependent claims 2–12, 14–
18, 20, and 21, which depend from claims 1 and 19, respectively.
CONCLUSION
For the reasons discussed above, we determine that claims 1–12 and
14–21 are not directed to an abstract idea. Appellant has shown that the
Examiner erred in rejecting claims 1–12 and 14–21 under 35 U.S.C. § 101.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/
Basis 
Affirmed Reversed
1–12, 14–21 101 Eligibility 1–12, 14–21
REVERSED