Ex Parte Berry

Patent Trial and Appeal Board

Oct 3, 2018

12624987 (P.T.A.B. Oct. 3, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO.
12/624,987
75563 7590
Haley Guiliano LLP
75 Broad Street
Suite 1000
FILING DATE
11/24/2009
10/05/2018
NEW YORK, NY 10004
FIRST NAMED INVENTOR
Matthew G. Berry
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.
113142-0123-101 9362
EXAMINER
BRANDENBURG, WILLIAM A
ART UNIT PAPER NUMBER
3681
NOTIFICATION DATE DELIVERY MODE
10/05/2018 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):
haleyguiliano_P AIR@firsttofile.com
HGPatentDocket@hglaw.com
DocketRequests@hglaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MATTHEW G. BERRY
Appeal 2017-002911
Application 12/624,987 1
Technology Center 3600
Before DENISE M. POTHIER, LARRY J. HUME, and JOYCE CRAIG,
Administrative Patent Judges.
HUME, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) of the Final
Rejection of claims 1-20, which are all claims pending in the application.
We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 According to Appellant, the real party in interest is TiVo, Inc. App. Br. 1.
Appeal 2017-002911
Application 12/624,987
STATEMENT OF THE CASE2
Related Case
An Appeal is pending before the Board in related Application Serial
No. 14/707,440, Appeal No. 2017-003239. App. Br. 2.
The Invention
Appellant's disclosed embodiments and claimed invention "relate
generally to analyzing trends and patterns in video consumption, and more
particularly to identifying trends in video viewer activity as a function of
embedded video metadata for purposes of optimizing content associated
with video media." Spec. 1, 11. 12-15.
Exemplary Claim
Claim 1, reproduced below, is representative of the subject matter on
appeal (emphases and labeling added to contested prior-art limitations):
1. A method for predicting viewer behavior toward a
new video based on identified patterns in video consumption
data associated with one or more existing videos, comprising
the steps of:
[L 1] receiving video consumption data comprising one or
more output states at particular time points within each of the
one or more existing videos, the video consumption data
associated with all viewers of each of the one or more existing
videos monitored by a tracking system;
2 Our decision relies upon Appellant's Appeal Brief ("App. Br.," filed
May 4, 2016); Reply Brief ("Reply Br.," filed Dec. 9, 2016); Examiner's
Answer ("Ans.," mailed Nov. 4, 2016); Final Office Action ("Final Act.,"
mailed Oct. 1, 2015); and the original Specification ("Spec.," filed
Nov. 24, 2009) (claiming benefit of US 61/117,454, filed Nov. 24, 2008).
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[L2] receiving time-based metadata associated with
content of the one or more existing videos where the time-based
metadata includes a time-code or range of time-codes indicating
a point or points in a video in which the metadata associated
content occurs;
[L3] analyzing, by one or more computing devices, the
video consumption data and metadata via a multivariate
analysis engine to identify patterns associated with the
metadata associated with the one or more output states;
[L4] generating, by the one or more computing devices,
one or more rules based on multiple metadata variables linking
combinations of metadata to the one or more output states to
identify and target likely output states at time points within the
new video based on time-based metadata for the new video and
based on the identified patterns; and
[L5] editing, by the one or more computing devices,
content in the new video at time points within the new video to
incorporate additional content into the new video, the
additional content matching the targeted likely output states
using the generated rules.
Prior Art
The Examiner relies upon the following prior art as evidence in
rejecting the claims on appeal:
Andrade US 2009/0183210 Al July 16, 2009
L. Eriksson et al., "Multi- and Megavariate Data Analysis:
Basic Principles and Applications," Vol. 1, 2nd Revised and
Enlarged Ed., Jan. 2006, pp. 1, 3, 27-34 (hereinafter
"Eriksson").
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Rejections on Appeal
RI. Claims 1-20 stand rejected under 35 U.S.C. § 101 as being
directed to patent-ineligible subject matter. Final Act. 3.
R2. Claims 1--4, 8, 9, and 13-20 stand rejected under 35 U.S.C.
§ I02(e) as being anticipated by Andrade. Final Act. 5.
R3. Claims 5-7 and 10-12 stand rejected under 35 U.S.C. § I03(a)
as being unpatentable over the combination of Andrade and Eriksson. Final
Act. 28.
CLAIM GROUPING
Based on Appellant's arguments (App. Br. 5-24), we decide the
appeal of patent-ineligible subject matter Rejection RI of claims 1-20 on the
basis of representative claim 1; and we decide the appeal of anticipation
Rejection R2 of claims 1--4, 8, 9, and 13-20 on the basis of representative
claim 1.
Remaining claims 5-7 and 10-12 in Rejection R3, not argued
separately, stand or fall with the respective independent claim from which
they depend. 3
3 "Notwithstanding any other provision of this paragraph, the failure of
appellant to separately argue claims which appellant has grouped together
shall constitute a waiver of any argument that the Board must consider the
patentability of any grouped claim separately." 37 C.F.R. § 4I.37(c)(l)(iv).
In addition, when Appellant does not separately argue the patentability of
dependent claims, the claims stand or fall with the claims from which they
depend. In re King, 801 F.2d 1324, 1325 (Fed. Cir. 1986).
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ISSUES AND ANALYSIS
In reaching this decision, we consider all evidence presented and all
arguments actually made by Appellant. To the extent Appellant has not
advanced separate, substantive arguments for particular claims, or other
issues, such arguments are waived. 37 C.F.R. § 4I.37(c)(l)(iv).
We disagree with Appellant's arguments with respect to claims 1-20
and, unless otherwise noted, we incorporate by reference herein and adopt as
our own: ( 1) the findings and reasons set forth by the Examiner in the action
from which this appeal is taken, and (2) the reasons and rebuttals set forth in
the Examiner's Answer in response to Appellant's arguments. We highlight
and address specific findings and arguments regarding claim 1 for emphasis
as follows.
1. § 101 RejectionRl ofClaims 1-20
Issue 1
Appellant argues (App. Br. 5-16; Reply Br. 1-13) the Examiner's
rejection of claim 1 under 35 U.S.C. § 101 as being directed to patent-
ineligible subject matter is in error. These contentions present us with the
following issue:
Did the Examiner err in concluding claim 1 is directed to a judicial
exception, i.e., an abstract idea, without significantly more, and thus is
patent-ineligible under§ 101?
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Analysis
Alice Framework
Section 101 provides that anyone who "invents or discovers any new
and useful process, machine, manufacture, or composition of matter, or any
new and useful improvement thereof' may obtain a patent. 35 U.S.C. § 101.
The Supreme Court has repeatedly emphasized that patent protection should
not extend to claims that monopolize "the basic tools of scientific and
technological work." Gottschalk v. Benson, 409 U.S. 63, 67 (1972); Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 71 (2012);
Alice Corp. Pty. Ltd. v. CLS Bankint'l, 134 S. Ct. 2347, 2354 (2014).
Accordingly, laws of nature, natural phenomena, and abstract ideas are not
patent-eligible subject matter. Id.
The Supreme Court's two-part Alice framework guides us in
distinguishing between patent claims that impermissibly claim the "building
blocks of human ingenuity" and those that "integrate the building blocks into
something more." Id. (internal quotation marks, citation, and bracketing
omitted). First, we "determine whether the claims at issue are directed to [a]
patent-ineligible concept[]." Id. at 2355. If so, we "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." Id. at
2357 (quoting Mayo, 566 U.S. at 72, 79). While the two steps of the Alice
framework are related, the "Supreme Court's formulation makes clear that
the first-stage filter is a meaningful one, sometimes ending the § 101
inquiry." Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed.
Cir. 2016). We note the Supreme Court "has not established a definitive rule
to determine what constitutes an 'abstract idea"' for the purposes of step one.
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Enfzsh, LLC v. Microsoft Corp., 822 F.3d 1327, 1334 (Fed. Cir. 2016) (citing
Alice, 134 S. Ct at 2357).
In Enfzsh, our reviewing court held claims directed to a self-referential
logical model for a computer database patent-eligible under step one of
Alice. Enfzsh, 822 F.3d at 1330. The disclosed technique enabled faster
searching and more effective storage of data than previous methods. Id. at
1333. The court found the claims directed to "a specific improvement to the
way computers operate, embodied in the self-referential table" (id. at 1336),
and explained that the claims are "not simply directed to any form of storing
tabular data, but instead are specifically directed to a self-referential table
for a computer database" that functions differently than conventional
databases. Id. at 1337.
In McRO, the claims were not held to be abstract because they recited
a "specific ... improvement in computer animation" using "unconventional
rules that relate[ d] sub-sequences of phonemes, timings, and morph weight
sets." McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299, 1302-
03, 1307---08, 1314--15 (Fed. Cir. 2016). In McRO, "the incorporation of the
claimed rules, not the use of the computer," improved an existing
technological process. Id. at 1314.
However, our reviewing court has held claims ineligible as directed to
an abstract idea when they merely collect electronic information, display
information, or embody mental processes that could be performed by
humans. Elec. Power Grp., 830 F.3d at 1353-54 (collecting cases). At the
same time, "all inventions at some level embody, use, reflect, rest upon, or
apply laws of nature, natural phenomena, or abstract ideas." Mayo, 566 U.S.
at 71. Abstract ideas may include, but are not limited to, fundamental
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economic practices, methods of organizing human activities, an idea of
itself, and mathematical formulas or relationships. Alice, 134 S. Ct. at 2355-
57. Under this guidance, we must therefore ensure at step one that we
articulate what the claims are directed to with enough specificity to ensure
the step one inquiry is meaningful. Id. at 2354 ("[W]e tread carefully in
construing this exclusionary principle lest it swallow all of patent law.").
Under the "abstract idea" step we must evaluate "the 'focus of the
claimed advance over the prior art' to determine if the claim's 'character as a
whole' is directed to excluded subject matter." Affinity Labs of Texas, LLC
v. DIRECTV, LLC, 838 F.3d 1253, 1257 (Fed. Cir. 2016) (internal citation
omitted). If the claims are not directed to a patent-ineligible concept, the
inquiry ends. See Visual Memory LLC v. NVIDIA Corp., 867 F.3d 1253,
1262 (Fed. Cir. 2017). If the concept is directed to a patent-ineligible
concept, we proceed to the "inventive concept" step. For that second step
we must "look with more specificity at what the claim elements add, in order
to determine 'whether they identify an "inventive concept" in the application
of the ineligible subject matter' to which the claim is directed." Affinity
Labs, 838 F.3d at 1258 (quoting Elec. Power Grp., 830 F.3d at 1353).
Alice Step I -Abstract Idea
The Examiner concludes:
Claim(s) 1-20 are directed to an inventive concept of predicting
viewer behavior toward a new video based on identified
patterns in video consumption data with one or more existing
videos, which is considered an abstract idea using a
fundamental economic practice. Such as in Smart Gene, which
compares new and stored information and using rules to
identify options, the current invention compares consumption
data with time-based metadata associated with content to
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generate rules for editing content in a new video. Therefore an
abstract idea is present in the claims.
Final Act. 3. The Examiner further observes:
Finally, to the extent that the abstract idea is not
considered a "fundamental" economic practice, initially note
buySAFE, Inc. v. Google, Inc., 112 USPQ2d 1093 (Fed.
Cir. 2014) which stated that in "defining the excluded
categories, the Court has ruled that the exclusion applies if a
claim involves a natural law or phenomenon or abstract idea,
even if the particular natural law or phenomenon or abstract
idea at issue is narrow. Mayo, 132 S. Ct. at 1303".
Final Act. 4.
Appellant generally contends the Examiner did not properly apply the
subject matter eligibility test by confusing the two inquiries in the two-part
Alice test. App. Br. 5---6. More specifically, Appellant argues, "the Final
Office Action directly alleges an inventive concept ('of predicting viewer
behavior toward a new video based on identified consumption patterns in
video consumption data with one or more existing videos') to which
Claims 1-20 are directed." App. Br. 6. "[T]here is no evidence that the
Final Office Action has performed a search for an inventive concept in light
of a determination (in Part 1 of the test) of the judicially recognized
exception such as abstract idea." App. Br. 7. Additionally, Appellant
alleges SmartGene4 is nonprecedential and "has no holding relating to
fundamental economic practice ... [alleged] in Claim 1 ... [and] is
devoid of any mention of the word 'fundamental', much less 'fundamental
economic practice' .... SmartGene does not provide a valid legal basis for
the ... 'fundamental economic practice' assertion." Id.
4 SmartGene, Inc. v. Adv. Bio. Labs. SA, 555 F. App'x 950 (Fed. Cir. 2014)
( nonprecedential).
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In response, the Examiner states the requisite two-step Alice analysis
was carried out (Ans. 3--4), and SmartGene, even if non-precedential, is
cited as being one of many exemplary cases in US PTO Guidelines that
provides a useful tool for determining patent eligibility. Ans. 6.
Id.
[T]here can be significant overlap between abstract idea
categories, and one abstract idea that could be deemed as a
fundamental economic practice may also be categorized as an
idea of itself, and/or organizing human activity, [and] ... while
the inventive concept was labeled as a fundamental economic
practice, the Examiner identified the inventive concept
overlapping into an idea of itself, which is why SmartGene was
cited.
Finally, the Examiner notes that it is reasonable that
fundamental economic practices would not be limited to merely
contractual relationships, hedging and mitigating settlement
risk. Additionally, in accordance with the "July 2015 Update:
Subject Matter Eligibility", section III. A., the Examiner notes
"The term 'fundamental"' is used in the sense of being
foundational or basic, and not in the sense of necessarily being
"old" or "well-known." As such, inserting advertisements into
video programming can certainly and reasonably be construed
as "foundational or basic" in the art of content-based media
advertising (e.g. video and/or television advertising). Aside
from this fact, SmartGene was specifically used because like
SmartGene, the current invention compares current time-code
information with user characteristics metadata and time-based
metadata file to select an appropriate advertisement to present
to an end user. Thus, the claim is directed towards an abstract
idea and hence ineligible.
Ans. 7-8.
Under the "abstract idea" step we must evaluate "the 'focus of the
claimed advance over the prior art' to determine if the claim's 'character as a
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whole' is directed to excluded subject matter." Affinity Labs, 83 8 F .3d at
1257 ( citation omitted).
Turning to the claimed invention, claim 1 recites: " [a] method for
predicting viewer behavior toward a new video based on identified patterns
in video consumption data associated with one or more existing videos."
Claim 1 (preamble). The limitations of method claim 1 also require the
steps of:
(a) "receiving video consumption data ... ;"
(b) "receiving time-based metadata ... ; "
(c) "analyzing ... the video consumption data and
metadata . . . ; "
(d) "generating ... one or more rules based on multiple
metadata variables ... to identify and target likely output states
... based on time-based metadata ... and based on the
identified patterns; and"
( e) editing ... content ... to incorporate additional
content ... matching the targeted likely output states using the
generated rules."
Under step one, we agree with the Examiner that the inventions
claimed in each of independent claims 1 and 8 are directed to an abstract
idea. However, we disagree that a conclusion of a fundamental economic
practice most correctly characterizes the subject matter of the claims on
appeal. Instead, as a matter of claim construction, and while recognizing the
potential overlap between the various characterizations of abstract subject
matter in examination guidelines found in the MPEP 5 based upon the body
of our controlling case law precedent, we conclude the claims on appeal may
5 See, e.g., Manual of Patent Examination Procedure (MPEP) §§ 2103-
2106.
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be more appropriately characterized as being directed to a fundamental
practice, albeit not an economic practice, or may alternatively be
characterized as being directed to a method of organizing human activity.
See Ans. 8. Regardless of how the claims are characterized under Step 1, we
conclude they are directed to patent-ineligible subject matter.
In Intellectual Ventures I LLC v. Capital One Bank (USA), analogous
in key respects to the claims before us on appeal (both of which tailor
content based on information about the user), our reviewing court
determined such claims were directed to an abstract idea and, thus, patent-
ineligible.
At step one of the Alice framework, it is often useful to
determine the breadth of the claims in order to determine
whether the claims extend to cover a "fundamental ... practice
long prevalent in our system .... " Alice, 134 S. Ct. at 2356. As
noted, the claim relates to customizing information based on ( 1)
information known about the user and (2) navigation data ....
[T]ailoring is "a fundamental ... practice long prevalent in our
system ... . "Id.There is no dispute that newspaper inserts had
often been tailored based on information known about the
customer-for example, a newspaper might advertise based on
the customer's location. Providing this minimal tailoring----e.g.,
providing different newspaper inserts based upon the location
of the individual-is an abstract idea.
Intellectual Ventures I LLC v. Capital One Bank (USA), 792 F.3d 1363,
1369 (Fed. Cir. 2015).
As the Specification discloses, "[t]he present systems and methods
relate generally to analyzing trends and patterns in video consumption, and
more particularly to identifying trends in video viewer activity as a function
of embedded video metadata for purposes of optimizing content associated
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with video media." Spec. 1, 11. 12-15. 6 We find this type of activity, i.e.,
tailoring content based on information about the user, for example, includes
longstanding conduct that existed well before the advent of computers and
the Internet and, outside the recitation of "one or more computing devices,"
could be carried out by a human with pen and paper. See CyberSource
Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1375 (Fed. Cir. 2011) ("That
purely mental processes can be unpatentable, even when performed by a
6 See also Spec. 20 ("Abstract") ( emphasis added):
Systems and methods are described for analyzing video
content in conjunction with historical video consumption data,
and identifying and generating relationships, rules, and
correlations between the video content and viewer behavior.
According to one aspect, a system receives video consumption
data associated with one or more output states for one or more
videos. The output states generally comprise tracked and
recorded viewer behaviors during videos such as pausing,
rewinding, fast-forwarding, clicking on an advertisement (for
Internet videos), and other similar actions. Next, the system
receives metadata associated with the content of one or more
videos. The metadata is associated with video content such as
actors, places, objects, dialogue, etc. The system then analyzes
the received video consumption data and metadata via a
multivariate analysis engine to generate an output analysis of
the data. The output may be a scatter plot, chart, list, or other
similar type of output that is used to identify patterns associated
with the metadata and the one or more output states. Finally, the
system generates one or more rules incorporating the identified
patterns, wherein the one or more rules define relationships
between the video content (i.e. metadata) and viewer behavior
(i.e. output states).
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computer, was precisely the holding of the Supreme Court in Gottschalk v.
Benson."). 7
Our reviewing court has previously held other patent claims ineligible
for reciting similar abstract concepts. For example, while the Supreme
Court has enhanced the § 101 analysis since CyberSource in cases like Mayo
and Alice, the Federal Circuit continues to "treat[] analyzing information by
steps people go through in their minds, or by mathematical algorithms,
without more, as essentially mental processes within the abstract-idea
category." Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1146-
47 (Fed. Cir. 2016) (alteration in original) (quoting Elec. Power Grp., 830
F.3d at 1354).
In addition, our reviewing court has concluded that abstract ideas
include the concepts of collecting data, recognizing certain data within the
collected data set, and storing the data in memory. Content Extraction &
Transmission LLC v. Wells Fargo Bank, N.A., 776 F.3d 1343, 1347 (Fed.
Cir. 2014). Additionally, the collection of information and analysis of
information ( e.g., recognizing certain data within the dataset) are also
abstract ideas. Elec. Power Grp., 830 F.3d at 1353-54 (collecting
information and "analyzing information by steps people go through in their
minds, or by mathematical algorithms, without more, [are] essentially
mental processes within the abstract-idea category"). Similarly, "collecting,
displaying, and manipulating data" is an abstract idea. Intellectual Ventures
I LLC v. Capital One Fin. Corp., 850 F.3d 1332, 1340 (Fed. Cir. 2017).
7 CyberSource further guides that "a method that can be performed by
human thought alone is merely an abstract idea and is not patent-eligible
under§ 101." CyberSource, 654 F.3d at 1373.
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Also, collecting and comparing known information has been determined to
be an abstract idea. Classen Immunotherapies, Inc. v. Biogen IDEC, 659
F.3d 1057, 1067 (Fed. Cir. 2011) ("Claim 1 of the '283 patent states the idea
of collecting and comparing known information"). Further, a process that
employs mathematical algorithms to manipulate existing information to
generate additional information is abstract. Digitech Image Techs., LLC v.
Elec.for Imaging, Inc., 758 F.3d 1344, 1351 (Fed. Cir. 2014). More
recently, our reviewing court has also concluded that acts of parsing,
comparing, storing, and editing data are abstract ideas. Berkheimer v. HP
Inc., 881 F.3d 1360, 1367 (Fed. Cir. 2018).
Appellant also alleges claim 1 is patent-eligible because its practice
does not preempt practice by others. App. Br. 13-14. "Claim 1, viewed as a
whole, clearly does not seek to tie up [preempt] the entire idea of 'predicting
viewer behavior toward a new video based on identified consumption
patterns in video consumption data with one or more existing videos."' App.
Br. 13.
Regarding preemption, " [ w Jhile preemption may signal patent
ineligible subject matter, the absence of complete preemption does not
demonstrate patent eligibility .... Where a patent's claims are deemed only
to disclose patent ineligible subject matter under the 1Vfayo framework, as
they are in this case, preemption concerns are fully addressed and made
moot." Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379
(Fed. Cir. 2015); see also OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d
13 59, 13 62---63 (Fed. Cir. 2015) ("that the claims do not preempt aU price
optimization or may be limited to price optimization in the e-commerce
setting do not make them any less abstract"). We agree with the Examiner's
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response in this Appeal, which we incorporate herein by reference.
Ans. 13-14.
Therefore, in agreement with the Examiner, we conclude claim 1
involves nothing more than identifying, collecting, storing, comparing, and
generating data, without any particular inventive technology- an abstract
idea. See Elec. Power Grp., 830 F.3d at 1354. 8
Accordingly, on this record, and under step one of Alice, we agree
with the Examiner's conclusion the claims are directed to an abstract idea.
Alice Step 2 -Inventive Concept
If the claims are directed to a patent-ineligible concept, as we
conclude above, we proceed to the "inventive concept" step. For that step
we must "look with more specificity at what the claim elements add, in order
to determine 'whether they identify an "inventive concept" in the application
of the ineligible subject matter' to which the claim is directed." Affinity
Labs, 838 F.3d at 1258 (quoting Elec. Power Grp., 830 F.3d at 1353).
In applying step two of the Alice analysis, our reviewing court guides
we must "determine whether the claims do significantly more than simply
describe [the] abstract method" and thus transform the abstract idea into
patentable subject matter. Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709,
715 (Fed. Cir. 2014). We look to see whether there are any "additional
features" in the claims that constitute an "inventive concept," thereby
rendering the claims eligible for patenting even if they are directed to an
abstract idea. Alice, 134 S. Ct. at 2357. Those "additional features" must be
8 Merely automating previously manual processing by using computers does
not qualify as an eligibility-rejection-defeating improvement. Credit
Acceptance Corp. v. Westlake Servs., 859 F.3d 1044, 1055 (Fed. Cir. 2017).
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more than "well-understood, routine, conventional activity." Mayo, 566
U.S. at 79.
Evaluating representative claim 1 under step 2 of the Alice analysis,
we agree with the Examiner that it lacks an inventive concept that
transforms the abstract idea of "predicting viewer behavior toward a new
video based on identified patterns in video consumption data associated with
one or more existing videos" by receiving and analyzing data using "one or
more computing devices" ( claim 1 ); or the abstract idea of "identifying
trends in video viewing behavior across a plurality of existing videos" by
receiving and analyzing data using "one or more computing devices"
( claim 8) into a patent-eligible application of that abstract idea. See Ans.
17-18. 9
The Examiner further concludes,
[ t ]he additional elements are each functional generic
computer components that perform the generic functions of
processing, communicating and displaying, all common to
electronics and computer systems. Generic computer
implementation does not provide significantly more than that
9 For example, the Examiner concludes:
The claim recites the additional limitations of "a tracking
system", "one or more computing devices" and "a multivariate
analysis engine" (and similarly in claim 8). The additional
elements are recited at a high level of generality and are recited
as performing generic computer functions routinely used in
computer applications. As such, the additional elements of the
claim do not add a meaningful limitation to the abstract idea
because they would be generic computer functions in any
computer implementation.
Ans. 17.
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abstract idea. The multiple receiving steps are merely extra-
solution activity and does not meaningfully limit the claim.
Ans. 18.
We note the patent eligibility inquiry may contain underlying issues of
fact. Mortg. Grader, Inc. v. First Choice Loan Servs. Inc., 811 F.3d 1314,
1325 (Fed. Cir. 2016). In particular, "[t]he question of whether a claim
element or combination of elements is well-understood, routine and
conventional to a skilled artisan in the relevant field is a question of fact."
Berkheimer, 881 F.3d at 1368.
As evidence of the conventional nature of the claimed network
components and processes, we note the disclosure of Appellant's
Specification. For example:
Referring now to the drawings, FIG. 1 illustrates one
embodiment of the system architecture for a system 100 for
analyzing and identifying trends between video content and
viewer behavior. In the embodiment shown, the system 100
includes a server 105, a video database 110, a metadata
database 115, and a viewing metrics database 120. The system
100 further includes a multivariate analysis (MVA) engine 125
that receives limiting parameters from a parameter generator
130, and generates an output 400. Although the embodiment of
system 100 shown in FIG. 1 includes only one of each of these
components, one having ordinary skill in the art will understand
that further embodiments may include a plurality of each or any
of these components.
In the embodiment shown, the server 105 provides
processing functionality for the system 100, including receiving
instructions from an operator 102, retrieving videos and
viewing metric data, extracting embedded metadata from videos
( or obtaining metadata otherwise associated with the videos),
providing information to the MV A engine 125, and a host of
other operations that will be or become apparent to one of
ordinary skill in the art. Additionally, while only one server 105
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is shown, it will be understood that a plurality of servers may be
incorporated within embodiments of a computerized system
100. It will also be understood that such server(s) 105 include
suitable hardware and software components for performing the
functions and/or steps and taking the actions described herein.
Spec. 6, 11. 8-25.
We agree with the Examiner that the claim limitations may be broadly
but reasonably construed as reciting conventional computer components and
techniques, particularly in light of Appellant's Specification, as quoted
above. 10
With respect to the Step 2 analysis, we agree with the Examiner
because, as in Alice, the recitation of either a "method for predicting viewer
behavior toward a new video based on identified patterns in video
consumption data associated with one or more existing videos" using "one or
more computing devices" ( claim 1); or a "method of identifying trends in
video viewing behavior across a plurality of existing videos" using "one or
more computing devices" (claim 8) is simply not enough to transform the
patent-ineligible abstract idea here into a patent-eligible invention. See
Alice, 134 S. Ct. at 2357 ("[C]laims, which merely require generic computer
10 During prosecution, claims must be given their broadest reasonable
interpretation when reading claim language in light of the specification as it
would be interpreted by one of ordinary skill in the art. In re Am. Acad. of
Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). Under this standard,
we interpret claim terms using "the broadest reasonable meaning of the
words in their ordinary usage as they would be understood by one of
ordinary skill in the art, taking into account whatever enlightenment by way
of definitions or otherwise that may be afforded by the written description
contained in the applicant's specification." In re Morris, 127 F.3d 1048,
1054 (Fed. Cir. 1997).
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implementation, fail to transform [an] abstract idea into a patent-eligible
invention."). 11
Accordingly, based upon the findings above, on this record, we are
not persuaded of error in the Examiner's conclusion that the appealed claims
are directed to patent-ineligible subject matter. Therefore, we sustain the
Examiner's § 101 rejection of independent claim 1, and grouped
claims 2-20, not argued separately, and which fall therewith. See Claim
Grouping, supra.
Therefore, based upon the findings above, on this record, we are not
persuaded of error in the Examiner's factual findings in support of the legal
conclusion that independent claim 1 and grouped claims 2-20 are directed to
patent-ineligible subject matter. See Claim Grouping, supra.
2. § 102(e) Rejection R2 of Claims 1--4, 8, 9, and 13-20
Issue 2
Appellant argues (App. Br. 16-24; Reply Br. 13-22) the Examiner's
rejection of claim 1 under 35 U.S.C. § 102(e) as being anticipated by
Andrade is in error. These contentions present us with the following issue:
11 Appellant essentially alleges the Examiner failed to properly carry out the
Alice analysis. Reply Br. 13.
This belated two-part analysis in the Examiner's Answer is a
constructive admission on the part of the Examiner that the
Final Office Action has failed to perform properly the two-part
analysis, and in particular, fails to properly perform the second
step of the subject matter eligibility test, as argued in the
Appeal Brief.
Reply Br. 12.
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Did the Examiner err in finding the cited prior art discloses " [a]
method for predicting viewer behavior toward a new video based on
identified patterns in video consumption data associated with one or more
existing videos," that includes, inter alia, limitation L 1, "receiving video
consumption data comprising one or more output states;" limitation L2,
"receiving time-based metadata associated with content of the one or more
existing video;" limitation L3, "analyzing, by one or more computing
devices, the video consumption data and metadata via a multivariate analysis
engine to identify patterns associated with the metadata associated with the
one or more output states;" limitation L4, "generating, by the one or more
computing devices, one or more rules based on multiple metadata variables
linking combinations of metadata to the one or more output states to identify
and target likely output states at time points within the new video based on
time-based metadata for the new video and based on the identified patterns;"
and limitation L5, "editing, by the one or more computing devices, content
in the new video at time points within the new video to incorporate
additional content into the new video," as recited in claim 1?
Analysis
Anticipation of a claim under 35 U.S.C. § 102 occurs when each
claimed element and the claimed arrangement or combination of those
elements is disclosed, inherently or expressly, by a single prior art reference.
Therasense, Inc. v. Becton, Dickinson & Co., 593 F.3d 1325, 1332 (Fed.
Cir. 2010).
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Limitation LI -Receiving video consumption data
During prosecution, claims must be given their broadest reasonable
interpretation when reading claim language in light of the specification as it
would be interpreted by one of ordinary skill in the art. In re Am. Acad., 367
F.3d at 1364. Under this standard, we interpret claim terms using "the
broadest reasonable meaning of the words in their ordinary usage as they
would be understood by one of ordinary skill in the art, taking into account
whatever enlightenment by way of definitions or otherwise that may be
afforded by the written description contained in the applicant's
specification." In re Morris, 127 F.3d at 1054.
Appellant contends Andrade does not anticipate because " [ c ]laim 1
does not claim the general concept of 'video consumption data,' but rather
recites 'video consumption data' with features specific to the claimed
invention." App. Br. 16. Specifically, claim 1 "comprises one or more
output states at particular time points within each of the one or more
existing videos." App. Br. 17. Further, Appellant alleges the Examiner
"fails to identify which elements in Andrade correspond to 'output states' and
'particular time points' as featured in Claim 1. This omission is material, as
the Final Office Action fails to identify an element in the cited art that
corresponds to the omitted claim limitation." Id.
In response, as a preliminary matter, the Examiner cites Appellant's
Specification:
[V]ideo consumption data is data related to viewer behavior in
the form of various "output states", which describe viewer
interactions with a video, such as fast-forwarding, rewinding,
pausing, playing, exiting the video, interacting with an
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advertisement, changing the channel, etc. As will be
understood, virtually any user behavior may be tracked, and
video consumption data is not limited to the specific output
states mentioned.
Ans. 19 ( citing Spec. 8, 11. 16-20).
The Examiner reiterates Andrade's disclosure in paragraphs 5-9, 19,
21-3 8, and 41---63 discloses the disputed limitation under the broadest
reasonable interpretation consistent with the Specification. Ans. 19-20.
Clearly, this disclosure of Andrade is in accordance with
Appellant's specification, as the system of Andrade tracks the
specific time-code locations (i.e. "time-based metadata
associated with the content" as claimed) of which content is
actually watched, or skipped, fast-forwarded, paused etc. (i.e.
tracked viewer behavior that satisfies the "output states"
limitations in accordance with page 8 of Appellant's
specification).
Ans. 20-21 ( emphasis omitted).
We agree with the Examiner's finding above that Andrade discloses
"receiving video consumption data comprising one or more output states at
particular time points within each of the one or more existing videos," as
recited in claim 1. We agree with the Examiner because, under the broadest
reasonable interpretation, we find Andrade's disclosed "technique for
tailoring television advertisements ( or other multimedia content) at a more
specific level, such as at the level of the household or individual user"
(Andrade ,r 5), discloses the contested "receiving" limitation.
Limitation L2 - Receiving associated time-based video content metadata
Appellant contends, "the metadata tags in Andrade are text based, not
time-based. There is no disclosure in Andrade that a metadata tag there
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includes a time-code or range of time-codes indicating a point or points in a
video in which the metadata associated content occurs, as featured in
Claim 1." App. Br. 18.
In response, the Examiner finds:
Andrade is clear that actions of the user are monitored, and as
the user views or skips certain content, the metadata database is
updated. Furthermore, [0027] clearly discloses that "the specific
point in a content item where a user initiated a skip operation is
noted, as well as the specific point where the user resumed
watching the content. Data records for metadata tags ... are
stored for example at database." And as per [0029], the
metadata database includes records representing metadata tags
associated with the viewed content.
Based on these findings of fact, Andrade is clear that the
specific point in time a content item receives a skip operation
(i.e. consumption data comprising one or more output states) is
associated and stored as the metadata tag. So the metadata tag is
not limited to just be text-based, or associated with a keyword
as purported by Appellant, but actually vitally connected to a
time within the video.
Ans. 22 ( emphasis omitted).
We agree with the Examiner's finding above that Andrade discloses
"receiving time-based metadata associated with content of the one or more
existing videos," as recited in claim 1. We agree with the Examiner because
Andrade discloses that a specific point in a video where a user initiates an
operation, e.g., a skip operation, is recorded as metadata, and thus stores
time-based metadata.
Limitation L3 -Analyzing data to identify patterns
Appellant contends "Andrade teaches a completely different approach
from that of Claim 1. Andrade's system does not identify and target likely
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output states at time points within the new video based on time-based
metadata for the new video and based on the identified patterns." App.
Br. 19.
Andrade's system calculates a chance or probability that
an item having a metadata tag containing a word ( e.g.,
"bicycle") would be of interest based on a percentage of the
metadata tag appearing in the metadata of all content items
( e.g., commercials), a percentage of all commercials that the
user watches, and a percentage of all commercials that user
watches without skipping.
App. Br. 21 ( emphasis omitted).
The Examiner finds Andrade paragraphs 26 through 29 disclose that
user actions are monitored and the metadata database is updated as the user
views or skips various content. Ans. 22. "Furthermore, [0027] clearly
discloses that 'the specific point in a content item where a user initiated a
skip operation is noted, as well as the specific point where the user resumed
watching the content. ... "' Ans. 22 (citing Andrade ,r 27).
In agreement with the Examiner, we find this discussion in Andrade
discloses analyzing data to identify patterns. We agree with the Examiner
because, as further disclosed by Andrade:
According to the present invention, such actions by the user are
monitored 103; these actions are collectively referred to herein
as "user behavior". As the user views and/or skips certain
content, the metadata database 303 is updated 104 to include a
user exposure score indicating how many times the user was
exposed to, and did not skip, the content. In one embodiment,
additional details regarding the user's behavior with respect to
the content are stored.
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Andrade ,r 26 ( cited by the Examiner, see Final Act. 7). Under the broadest
reasonable interpretation, we find at least this portion of Andrade discloses
analyzing data to identify patterns.
Limitation L4 - Generating rules to identify output states
Appellant contends Andrade teaches a different approach from
claim 1. "[U]nder the approach of Andrade, a filter similar to one that filters
spam emails may be used to compute probability values for metadata tags
associated with content items for the purpose of ranking and selecting
content items." App. Br. 20-21. Appellant further contends "Andrade's
system takes into account a specific time at which a skip event occurs ... so
as to isolate specific elements of the content that the user finds objectionable
or of less interest." App. Br. 21 ( emphasis omitted).
The Examiner cites Andrade paragraphs 5-9, 21-38, and 41---63 as
disclosing the "generating rules" limitation. Final Act. 7-8. For example:
Metadata tags associated with non-skipped viewings of content
are stored and tracked. In this manner, the user's behavior with
respect to content associated with the various metadata tags is
stored. Subsequently, candidate content items are scored
according to their metadata tags, giving higher scores to
candidate content items associated with higher occurrences of
non-skipped viewings. The higher-scoring candidate content
items are then favored over other candidate content items.
Thus, based on the choices the user makes with respect to
skipping or not skipping particular content items, inferences are
made as to the user's level of interest in various subjects, and
subsequent content items are delivered in a personalized
manner to the user.
Andrade ,r 6 (emphasis added). We find favoring higher-scoring candidates
broadly but reasonably discloses generating a rule. Further,
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In one aspect, the present invention uses a Bayesian filter
analysis to make determinations as to the likelihood that a
particular content item will be of interest to a particular user,
given the user's past behavior with respect to content items. The
results of the Bayesian analysis are a set of probabilities that
can be ranked so that appropriate content items can be selected
for display to the user.
Andrade ,r 9. We also find ranking probabilities and selecting an item for
display broadly but reasonably discloses generating a rule.
Thus, under the broadest reasonable interpretation, we find Andrade
discloses generating a rule to identify output states.
Limitation L5 - Editing content in the new video
With respect to the "editing" limitation, Appellant contends:
The Final Office Action mischaracterizes the Andrade
reference. Andrade does not disclose or in any way teach that
T_3 and T_ 4 that was presented to the user as part of
T_entire had been "added" or "inserted" based on tracked
information, as argued by the Final Office Action.
FIG. 7 and paragraphs [0058-63] in Andrade describe
that Andrade 's system takes into account a specific time at
which a skip event occurs so as to so as to [sic] isolate specific
elements of the content that the user finds objectionable or
of less interest. For example, "[l]ine 701 indicates skip
operations on a time axis 703. As shown in FIG. 7, in this
example the user presses the skip button after the portion of the
content item associated with metadata tag T2 is shown, and
releases the skip button after the portion of the content item
associated with metadata tag T4 is shown. Thus, the portions of
the content item associated with metadata tags T3 and T 4 were
not seen."
Thus, the portions of the content item associated with
metadata tags T3 and T 4 were originally a part of the content
item, not "added" or "inserted" based on tracked
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information, as argued by the Final Office Action. The very
word "skipped" inherently means that the portion skipped is
already there in the content item.
App. Br. 22-23.
In response, the Examiner finds Andrade's paragraph 6 "clearly
discloses new video content by Andrade's 'subsequent content items', and
even under a broadest reasonable interpretation, a new video can reasonably
construed as a previous content program with replacement content." Ans. 26
( citing Andrade ,r 6). Specifically, the Examiner finds:
The Examiner understands that based on the entirety of
Andrade's disclosure, particularly [0006], [0026-29], [0035-36]
... it is reasonable to construe that based on T 3 and T 4 being
"skipped" previously, that the "subsequent content items" (i.e.
an edited new video) that are "delivered in a personalized
manner to the user" ([0006] in Andrade) would be presented to
the user as T entire, but with new content items being "added"
or "inserted" as the new, more relevant T 3 and T 4 segments,
based on the tracked information. Therefore, the content in the
new video T entire would indeed be "edited" by "incorporating
additional content ... using the generated rules" (i.e. based on
probability values for the specific metadata content tags of
Andrade).
Ans. 26-27 ( emphasis added).
We agree with the Examiner's determination that Andrade's disclosure
of adding content items broadly but reasonably discloses editing content in a
new video.
Therefore, based upon the findings above, on this record, we are not
persuaded of error in the Examiner's reliance on the cited prior art to
disclose the disputed limitation of claim 1, nor do we find error in the
Examiner's resulting finding of anticipation. Therefore, we sustain the
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Examiner's anticipation rejection of independent claim 1, and grouped
claims 2--4, 8, 9, and 13-20 which fall therewith. See Claim Grouping,
supra.
3. § 103(a) Rejection R3 of Claims 5-7 and 10-12
In view of the lack of any substantive or separate arguments directed
to obviousness Rejection R3 of claims 5-7 and 10-12 under§ 103 (see App.
Br. 24), we sustain the Examiner's rejection of these claims. Arguments not
made are waived. 12
REPLY BRIEF
To the extent Appellant may advance new arguments in the Reply
Brief (Reply Br. 1-23) not in response to a shift in the Examiner's position
in the Answer, we note arguments raised in a Reply Brief that were not
raised in the Appeal Brief or are not responsive to arguments raised in the
Examiner's Answer will not be considered except for good cause (see 37
C.F.R. § 4I.41(b)(2)), which Appellant has not shown.
12 Appellant merely argues, 11 [ e Jach of Claims 5-7 and 10-12 depends from
Claim 1 or 8. Eriksson fails to disclose the features of Claim 1 or 8 as
discussed above that are missing in Andrade. Moreover, the remaining
pending claims include additional elements that the cited references also do
not teach or suggest. 11 App. Br. 24.
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CONCLUSIONS
(1) The Examiner did not err with respect to patent-ineligible
subject matter Rejection RI of claims 1-20 under 35 U.S.C. § 101, and we
sustain the rejection.
(2) The Examiner did not err with respect to anticipation Rejection
R2 of claims 1--4, 8, 9, and 13-20 under 35 U.S.C. § I02(e) over the cited
prior art of record, and we sustain the rejection.
(3) The Examiner did not err with respect to obviousness Rejection
R3 of claims 5-7 and 10-12 under 35 U.S.C. § I03(a) over the cited prior art
combination of record, and we sustain the rejection.
DECISION
We affirm the Examiner's decision rejecting claims 1-20.
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). See 37
C.F.R. § 41.50(±).
AFFIRMED
30