Ex Parte Abe et al

Patent Trial and Appeal Board

Jun 13, 2018

13715169 (P.T.A.B. Jun. 13, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/715, 169 12/14/2012
45773 7590 06/14/2018
WHITHAM, CURTIS & COOK, P.C.
11491 SUNSET HILLS ROAD, SUITE 340
RESTON, VA 20190
FIRST NAMED INVENTOR
Naoki Abe
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
YOR920050513US3 9253
EXAMINER
STERRETT, JONATHAN G
ART UNIT PAPER NUMBER
3623
MAIL DATE DELIVERY MODE
06/14/2018 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte NAO KI ABE and EDWIN PETER DAWSON PEDNAUL T
Appeal2017-002170
Application 13/715,169
Technology Center 3600
Before JEAN R. HOMERE, NABEEL U. KHAN, and
MICHAEL M. BARRY, Administrative Patent Judges.
HOMERE, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1 and 18-20, which constitute all claims pending in this application. 1
App. Br. 1. We have jurisdiction under 35 U.S.C. § 6(b ).
We affirm.
1 Appellants identify the real party in interest as International Business
Machines, Inc. App. Br. 3.
Appeal2017-002170
Application 13/715,169
Introduction
According to Appellants, the claimed subject matter relates to a
method utilizing a Markov Decision Process (MDP) framework for
modeling batch reinforcement learning, and an optimum mix of marketing
media for a brand at various points during the lifetime of the brand to
produce different quantities of printing, TV advertising, emailing, and
distribution of product catalogs at those various points during the lifetime of
the brand. Spec. 4, Fig. 1.
Representative Claim
Independent claim 1 is representative, and reads as follows:
1. A computer implemented method of marketing
optimization with respect to brand lifetime management for a
brand having a lifetime and that comprises one or more branded
products, without the method steps using data tied to individual
customers, comprising the steps performed by a computer of:
storing, using a computer, data that relate to the one or
more branded products of the brand during the lifetime of the
brand but which are not tied to individual customers, the data
being characterized by being tied to said one or more branded
products and by the impossibility to ascertain individual
customers from the data, wherein the storing step includes
storing:
(a) transaction data that contain historical, dated
records of transactions, with information that specifies what
products were sold and corresponding sales amount with or
without specifying profit amount, the transaction data being
stored in a transaction data store,
(b) marketing data which consist of historical,
dated records of marketing actions, the marketing data being
stored in a marketing data store,
( c) product taxonomy data, the product taxonomy
data being stored in a product taxonomy data store;
for a mix of marketing media, and using the stored data
obtained from the transaction data store, the marketing data
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Application 13/715,169
store, and, optionally, the product taxonomy data store,
performing using the computer a long term reward optimization
problem using batch reinforcement learning with function
approximation wherein each of Introducing New Brand,
Developing Brand, Maturing Brand, Fading Brand, Branding
Driving Other Brands, Profitable Brand and Failing Brand is
defined as a state at a given point in time, wherein the computer
writes a feature vector into a feature vector memory location in
the computer, where the feature vector comprises categorical
and numerical fields which characterize what is known about
each brand or product of the brand at a time a decision is made
during the lifetime of the brand;
optimizing the marketing mix using the computer;
maximizing a net present value of profits and losses over
the lifetime of the brand using the computer and a display
which permits visual evaluation results obtained with one or
more lifetime value models for said batch reinforcement
learning generated using the stored data obtained from the
transaction data store, the marketing data store, and, optionally,
the product taxonomy data store;
outputting using the computer an action vector that is a
set of marketing actions which is a marketing mix optimization,
optimized over the life cycle of the brand, wherein the action
vector has been computed from stored data, wherein said action
vector specifies an investment mix over a set of marketing
media that comprises mass marketing, printing, TV, email and
catalogues based on a value function model which determines
an expected lifetime of the brand given a particular feature
vector and a particular action vector;
taking action on the outputted action vector, said taking
action including performing one or more of printing, TV
advertising, e-mailing, and distributing catalogues;
and after taking action based on the outputted action
vector, repeating said steps of performing, optimizing,
maximizing, outputting with said computer, and taking action
on the outputted action vector at a plurality of different time
points during the life cycle of the brand, wherein the computer
modifies the feature vector during each repeating step in one or
more of the categorical and numerical fields at the feature
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Application 13/715,169
vector memory location with what is known about each brand
or product of the brand at a time after action has been taken,
wherein the computer iteratively modifies the action vector
during the repeating step from an initial action vector to a
current action vector towards a largest possible improvement in
value function until a convergence criterion is met.
Rejection on Appeal
Claims 1 and 18-20 stand rejected under 35 U.S.C. § 101 as being
directed to patent ineligible subject matter. Final Act. 11-14.
ANALYSIS
We consider Appellants' arguments seriatim, as they are presented in
the Appeal Brief, pages 15-29, and the Reply Brief, pages 1-9. 2
Appellants argue the Examiner erred in rejecting claims 1 and 18-20
as being directed to the abstract idea of "optimizing the brand management
marketing mix, i.e .... a method of organizing human activity". App. Br.
15-16. In particular, Appellants allege that the Examiner's rejection is not
supported by court-based evidence recognizing marketing or brand
management as an abstract idea. Id. at 16-1 7. Appellants assert that, unlike
methods for organizing financial transactions or contractual relations ( which
have been recognized by the courts as being directed to patent ineligible
subject matter), the claims on appeal are directed to" ... marketing
2 Rather than reiterate the arguments of Appellants and the Examiner's
findings and conclusions, we refer to the Appeal Brief (filed July 14, 2016)
("App. Br."), the Reply Brief (filed November 14, 2016) ("Reply Br."), the
Answer (mailed September 15, 2016) ("Ans."), and the Final Action (mailed
February 17, 2016) ("Final Act") for the respective details. We have
considered in this Decision only those arguments Appellants actually raised
in the Briefs. Any other arguments Appellants could have made but chose
not to make in the Briefs are deemed to be waived. See 37 C.F.R.
§ 4I.37(c)(l)(iv).
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Application 13/715,169
optimization with respect to brand lifetime management for a brand having a
lifetime and that comprises one or more branded products ... " Id. at 18.
According to Appellants, the Examiner has mischaracterized and
oversimplified the claims as being directed to merely determining an optimal
number of mailings. Id. at 19. Further, Appellants argue that the claims are
not directed to an abstract idea such as a Markov process per se, nor do they
preempt or monopolize all possible applications of "Markov Decision
Process" or "batch reinforcement learning." Id. at 24. Appellants argue that
these functions are instead applied to marketing optimization with respect to
brand lifetime management in combination with additional features to output
an action vector so as to produce printing, TV advertising, e-mail, and
printing catalogues. Id. at 25-26. Accordingly, Appellants argue that the
claims as a whole amount to significantly more than the abstract idea, and
are consequently directed to patent eligible subject matter. Id. at 27-29.
These arguments are not persuasive. The U.S. Supreme Court
provides a two-step test for determining whether a claim is directed to
patent-eligible subject matter under 35 U.S.C. § 101. Alice Corp. Pty. Ltd. v.
CLS Bank Int'!, 134 S. Ct. 2347, 2354 (2014). In the first step, we determine
whether the claims are directed to one or more judicial exceptions (i.e., law
of nature, natural phenomenon, and abstract ideas) to the four statutory
categories of invention (i.e., process, machine, manufacture, and
composition of matter). Id. at 2355 ( citing Mayo Collaborative Servs. v.
Prometheus Labs., Inc., 132 S. Ct. 1289, 1296-97 (2012)) ("Mayo"). In the
second step, we "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."
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(citing Mayo, 132 S. Ct. at 1298, 1297). In other words, the second step is to
"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."' Id.
(citing Mayo, 132 S. Ct. at 1294).
We agree with the Examiner that the claims on appeal are directed to
the abstract idea of optimizing a brand management marketing mi(i.e.,
performing human activities). Ans. 4--7. The claims require that, during
each stage in the lifetime of the brand, algorithms pertaining to a Markov
Decision Process and a batch reinforcement learning are utilized to perform
calculations upon various types of data collected about the brand in order to
produce an action vector indicating an optimal mix of printing, TV
advertising, and email distribution of product catalog printing. As noted by
Appellants, the claims as a whole amount to the generation of mass
marketing over the lifetime of a brand. App. Br. 5. Our reviewing court has
consistently held that such marketing enhancement methods are mere
characterizations of human activities within the stream of commerce, which
are not patent eligible. See, e.g., Elec. Power Grp. v. Alstom S.A., 830 F.3d
1350, 1353 (Fed. Cir. 2016) (claims directed to collection, manipulation, and
display of data); Intellectual Ventures I LLC v. Capital One Bank (USA),
792 F.3d 1363, 1370 (Fed. Cir. 2015) (customizing information and
presenting it to users based on particular characteristics). That these claims
are directed to an abstract idea is confirmed by the fact that the claimed
method of producing mass advertising over the lifetime of the brand is of the
type that could be performed manually. See CyberSource Corp. v. Retail
Decisions, Inc., 654 F.3d 1366, 1373 (Fed. Cir. 2011) ("[A] method that can
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be performed by human thought alone is merely an abstract idea and is not
patent-eligible under § 101."). Prior to the Internet, such activities were
widely practiced, and became computerized with the assistance of human
administrators to facilitate marketing optimization. See OIP Technologies,
Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1364 (Fed. Cir. 2015).
We likewise find unpersuasive Appellants' argument that the cited
claim steps, as a whole, amount to significantly more than the abstract idea
of mass marketing over the lifetime of a brand because the recited functions
of those elements are conventional, well-understood, and do not go beyond
those of a general purpose computer for merely accessing, manipulating, and
displaying data. Therefore, they do not add any meaningful limitations
beyond generally linking the abstract idea to the particular technological
environment. Id. 3 Furthermore, Appellants' arguments asserting that the
claims do not block others from using the abstraction do not persuade us that
3 Considerations for determining whether a claim with additional elements
amounts to "significantly more" than the judicial exception itself include
improvements to another technology or technical field (Alice Corp., 134 S.
Ct. at 2359---60 (citing Diamond v. Diehr, 450 U.S. 175, 177-78 (1981);
Mayo, 132 S. Ct. at 1298 (2012))); adding a specific limitation other than
what is well-understood, routine and conventional in the field, or adding
unconventional steps that confine the claim to a particular useful application
(Mayo, 132 S. Ct. at 1299, 1302); or other meaningful limitations beyond
generally linking the use of the judicial exception to a particular
technological environment (Alice Corp., 134 S. Ct. at 2360). See, e.g.,
Intellectual Ventures I LLC v. Capital One Bank (USA), 792 F.3d 1363,
1370 (Fed. Cir. 2015) ("[M]erely adding computer functionality to increase
the speed or efficiency of the process does not confer patent eligibility on an
otherwise abstract idea.").
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the claims are directed to patent eligible material. Pre-emption is not a
separate test.
To be clear, the proper focus is not preemption per se, for some
measure of preemption is intrinsic in the statutory right granted
with every patent to exclude competitors, for a limited time,
from practicing the claimed invention. See 35 U.S.C. § 154.
Rather, the animating concern is that claims should not be
coextensive with a natural law, natural phenomenon, or abstract
idea; a patent-eligible claim must include one or more
substantive limitations that, in the words of the Supreme Court,
add "significantly more" to the basic principle, with the result
that the claim covers significantly less. See Mayo 132 S. Ct. at
1294. Thus, broad claims do not necessarily raise § 101
preemption concerns, and seemingly narrower claims are not
necessarily exempt.
CLS Bankint'l v. Alice Corp. Pty. Ltd., 717 F.3d 1269, 1281 (Fed. Cir.
2013); see also Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371,
13 79 (Fed. Cir. 2015) ("[ w ]hile preemption may signal patent ineligible
subject matter, the absence of complete preemption does not demonstrate
patent eligibility."). Because we find the claimed subject matter covers
patent-ineligible subject matter, the pre-emption concern is necessarily
addressed. "Where a patent's claims are deemed only to disclose patent
ineligible subject matter under the Mayo framework, ... preemption
concerns are fully addressed and made moot." Ariosa Diagnostics, 788 F.3d
at 1379. Accordingly, we are not persuaded of error in the Examiner's
conclusion that claims 1 and 18-20 are directed to patent ineligible subject
matter.
DECISION
For the above reasons, we affirm the Examiner's rejections of claims
1 and 18-20, as set forth above.
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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