Ex Parte Bruich et alDownload PDFPatent Trial and Appeal BoardAug 22, 201814194394 (P.T.A.B. Aug. 22, 2018) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 14/194,394 02/28/2014 Sean Michael Bruich 91230 7590 08/24/2018 Baker Botts L.L.P./Facebook Inc. 2001 ROSS A VENUE SUITE 900 Dallas, TX 75201 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. 079894.0298 6455 EXAMINER KIM, WILLIAM JW ART UNIT PAPER NUMBER 2421 NOTIFICATION DATE DELIVERY MODE 08/24/2018 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): ptomaill@bakerbotts.com ptomail2@bakerbotts.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte SEAN MICHAEL BRUICH and BRADLEY HOPKINS SMALL WOOD Appeal2018-001930 Application 14/194,394 Technology Center 2400 Before ALLEN R. MacDONALD, JOSEPH P. LENTIVECH, and PHILLIP A. BENNETT, Administrative Patent Judges. MacDONALD, Administrative Patent Judge. DECISION ON APPEAL 1 1 Appellants indicate the real party in interest is Facebook Inc. App. Br. 3. Appeal2018-001930 Application 14/194,394 STATEMENT OF THE CASE2 Appellants appeal under 35 U.S.C. § 134(a) from a Non-Final Rejection of claims 1-20. We have jurisdiction under 35 U.S.C. § 6(b ). We AFFIRM. Illustrative Claim Illustrative claim 1 under appeal reads as follows ( emphasis and bracketed material added): 1. A method, comprising: [A.] retrieving user input received at a social-networking system, the user input comprising a time stamp, a user location, and a user activity; [B.] determining, by one or more computing devices, viewing behavior of a set of users, the viewing behavior for each user indicating a number of past exposures of the user to a television advertisement representing a concept, wherein the viewing behavior is determined based on the time stamp, the user location, and user activity; [C.] accessing, by the one or more computing devices, attitudinal data of one or more of the set of users toward the concept represented by the television advertisement; and [D.] determining, by the one or more computing devices, effectiveness of the television advertisement by evaluating the attitudinal data toward the concept against the number of past exposures to the television advertisement. 2 All citations to the "Non-Final Action" are to the Non-Final Action mailed on April 3, 2017. 2 Appeal2018-001930 Application 14/194,394 Rejections A. The Examiner rejected claims 1-20 under 35 U.S.C. § 101 "because the claimed invention is directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more," i.e., because the claimed invention is directed to patent-ineligible subject matter. Non-Final Act. 8. We select claim 1 as representative. Appellants do not separately argue claims 2-20. Except for our ultimate decision, we do not discuss the § 101 rejection of claims 2-20 further herein. B. The Examiner rejected claims 1, 5-8, 12-15, 19, and 20 under 35 U.S.C. § I03(a) as being unpatentable over the combination of Cannon (US 6,286,005 Bl; iss. Sept. 4, 2001), Briggs (US 2006/0041480 Al; pub. Feb. 23, 2006), Setty et al. (US 2012/0109737 Al; pub. May 3, 2012), and King et al. (US 2010/0250727 Al; pub. Sept. 30, 2010). Non-Final Act. 11-28. We select claim 1 as representative. Appellants do not separately argue claims 5-8, 12-15, 19, and 20. Except for our ultimate decision, we do not discuss the§ 103 rejection of claims 5-8, 12-15, 19, and 20 further herein. C. The Examiner rejected claims 2--4, 9-11, and 16-18 under 35 U.S.C. § I03(a) as being unpatentable over Cannon, Briggs, Setty, and King in various combinations with other references. Non-Final Act. 28-34. 3 Appeal2018-001930 Application 14/194,394 Appellants do not present arguments for claims 2--4, 9-11, and 16-18. Thus, the rejections of these claims tum on our decision as to claim 1. Except for our ultimate decision, we do not discuss the § 103 rejections of claims 2--4, 9-11, and 16-18 further herein. Issues on Appeal Did the Examiner err in rejecting claim 1 as being directed to patent- ineligible subject matter? Did the Examiner err in rejecting claim 1 as being obvious? ANALYSIS We have reviewed the Examiner's rejections in light of Appellants' Appeal Brief arguments that the Examiner has erred. A. Section 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 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 Bankint'l, 134 S. Ct. 2347, 2354 (2014) (quotingAss'nfor 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 Services v. Prometheus Laboratories, Inc., 566 U.S. 66, 82-83 (2012), "for distinguishing patents that claim laws of nature, natural phenomena, and abstract ideas from those that claim patent- eligible applications of those concepts." Alice, 134 S. Ct. at 2355. The first 4 Appeal2018-001930 Application 14/194,394 step in that analysis is to "determine whether the claims at issue are directed to one of those patent-ineligible concepts," such as an abstract idea. For example, a fundamental economic practice is an abstract idea: [In Bilski v. Kappas, 561 U.S. 593 (2010)], the Court grounded its conclusion that all of the claims at issue were abstract ideas in the understanding that risk hedging was a "'fundamental economic practice."' 561 U.S., at 611. Alice, 134 S. Ct. at 2357. The Court acknowledged in Mayo that "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. We, therefore, look to whether the claims focus on a specific means or method that improves the relevant technology or are instead directed to a result or effect that itself is the abstract idea and merely invoke generic processes and machinery. See Enfzsh, LLC v. Microsoft Corp., 822 F.3d 1327, 1336 (Fed. Cir. 2016). If the claims are not directed to an abstract idea, the inquiry ends. Otherwise, the inquiry proceeds to the second step where the elements of the claims are considered "individually and 'as an ordered combination' to determine whether the additional elements 'transform the nature of the claim' into a patent-eligible application." Alice, 134 S. Ct. at 2355 ( quoting Mayo, 566 U.S. at 79, 78). B. Examiner's§ 101 Rejection -Alice/Mayo - Steps 1 and 2 Applying step 1 of the Alice/Mayo analysis, the Examiner concludes claim 1 is directed to an abstract idea because: [The claim 1] steps describe the concept of receiving user ad exposure and response data to determine the effectiveness of an ad ( e.g., a focus group), which corresponds to concepts identified as abstract ideas, such as obtaining and comparing intangible 5 Appeal2018-001930 Application 14/194,394 data in Cybersource v Retail Decisions, or collecting information, analyzing it, and displaying certain results of the collection and analysis in Electric Power Group. The concept of claim 1 is not meaningfully different than those concepts found by the courts to be abstract ideas. As such, the concept of Claim 1 of determining effectiveness of ads based on user exposure and attitudinal data is an abstract idea. Non-Final Act. 9. Applying step 2 of the Alice/Mayo analysis, the Examiner concludes: The claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception because the additional elements when considered individually and as an ordered combination do not amount to significantly more than the abstract idea. Claim 1 additionally recites where in the determining/accessing steps are performed by one or more computing devices. Non-Final Act. 9. C. Appellants ' § 101 Arguments 1. Appellants first raise the following argument in contending that the Examiner erred in rejecting claim 1 as directed to patent-ineligible subject matter. Like the unconventional patent eligible claims in Amdocs, Claim 1 provides an unconventional technical solution ( e.g., using input at a social-networking system to determine exposure to a television advertisement) to a technological problem. App. Br. 11. We are unpersuaded by Appellants' argument. Contrary to Appellants' argument that the invention sets forth a "technical solution" to a "technological problem," we agree with the Examiner's determination "that the claims are directed not toward a 'technical problem', but rather toward 6 Appeal2018-001930 Application 14/194,394 an 'abstract problem' of modeling advertisement exposure of viewers." Ans. 4. More particularly, we conclude the underlying problem is a non- technical problem of collecting sufficient data during human-to-human data gathering (i.e., polling (Spec. ,r 22)). Although partially solved in the prior art by using a recording device to record the needed data for later use (Spec. ,r 22; App. Br. 11 ), we conclude this does not convert the "non-technical problem" into a "technical problem." 2. Appellants also raise the following arguments in contending that the Examiner erred in rejecting claim 1 as directed to patent-ineligible subject matter. Claim 1 uses specific information to improve the way a computer determines a user's exposure to a television advertisement. The elements of Claim 1 prevent preemption of all processes for determining a user's exposure to a television advertisement using a social-networking system. App. Br. 12 ( emphasis added). The particular type of information is used to achieve a specific asserted improvement: determine a user's exposure to a television advertisement. ... When looked at as a whole and not in a cursory manner as analyzed by the Office Action, Claim 1 focuses on a specific method that improves the ability for a computer to determine a user's exposure to a television advertisement and is not merely directed to an abstract idea. Thus, in contrast to the Office Action's assertion that the user input is simply "non-functional descriptive language that also fails to impose a meaningful limit to the abstract limitation," the specification articulates how the specific information articulated in the claim is used to make technical improvements. App. Br. 13-14 (emphasis added). 7 Appeal2018-001930 Application 14/194,394 First, as to Appellants' "preemption" argument, this argument is not persuasive because although "preemption may signal patent ineligible subject matter, the absence of complete preemption does not demonstrate patent eligibility." Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015). We are instructed that "[w]here a patent's claims are deemed only to disclose patent ineligible subject matter under the [Alice/Mayo] framework ... , preemption concerns are fully addressed and made moot." Id. Second, as to Appellants' "improve the way a computer [works]" argument, we disagree. Rather than providing a technical solution that improves the way a computer works, Appellants' invention merely improves the abstract idea directed to modeling advertising exposure by improving the human-to-human data collection. The computer is then applied to this abstract idea. This is not enough to transform an abstract idea into patent- eligible subject matter. See, e.g., Alice, 134 S. Ct. at 2360 (explaining that claims that "amount to 'nothing significantly more' than an instruction to apply the abstract idea ... using some unspecified, generic computer" "is not 'enough' to transform an abstract idea into a patent-eligible invention" (quoting Mayo, 566 U.S. at 77, 79)); Intellectual Ventures I LLC v. Capital One Fin. Corp., 850 F.3d 1332, 1342 (Fed. Cir. 2017) ("[T]he claim language here provides only a result-oriented solution, with insufficient detail for how a computer accomplishes it"). Third, as to Appellants' "non-functional descriptive language" argument, we disagree. While we agree that the "user input comprising a time stamp, a user location, and a user activity" is not merely non-functional descriptive language (e.g., a data label), we disagree with Appellants' 8 Appeal2018-001930 Application 14/194,394 ultimate point that this "particular type of information" about the advertising exposure serves to render the claim patent eligible. Rather, we agree with the Examiner that this is analogous to the patent-ineligible "collecting information, analyzing it, and displaying certain results of the collection and analysis in Electric Power Group [830 F.3d 1350, 1351-52 (Fed. Cir. 2016)]." Non-Final Act. 9. 3. Appellants further raise the following argument in contending that the Examiner erred in rejecting claim 1 as directed to patent-ineligible subject matter. The claims present a solution to this technological challenge, instead of relying on specialized networked equipment attached to a user's television, amended Claim 1 recites, "retrieving user input received at a social-networking system, the user input comprising a time stamp and a user activity" and "determining, by one or more computing devices, viewing behavior of a set of users . . . wherein the viewing behavior is determined based on the time stamp and user activity." These elements address the previous issue created by the reliance on networked equipment attached to a user's TV. By determining viewing behavior "based on the time stamp and user activity [ received at a social-networking system]," Claim 1 avoids requiring specialized networked equipment, thereby overcoming a problem specifically arising in the realm of computer networks. App. Br. 14 (emphasis added). The Examiner presents the following response to Appellants' above argument. [T]he problem addressed by the Claims are directed toward modeling advertisement exposure and effectiveness. The 'problems' that are allegedly solved by the Claims are small sample sizing and measurement of exposed and non-exposed 9 Appeal2018-001930 Application 14/194,394 users (see Appeal Brief, pg. 5, ,r 3). However, these problems are not unique to computer network environments. Rather, these problems are generally applicable to any advertising system, regardless of the medium chosen to present the advertisements. Thus, unlike DDR, the instant Claims address a business challenge ( determining/modeling advertisement exposure and effectiveness) that is not unique nor particular to the Internet. Ans. 7 ( emphasis added). We disagree with Appellants' conclusion that claim 1 is directed to overcoming a problem specifically arising in the realm of computer networks. We agree with the Examiner's response, and again, we conclude the underlying problem is a non-technical problem of collecting sufficient data during human-to-human data gathering (i.e., polling (Spec. ,r 22)). D. Section 103 Arguments 1. Appellants raise the following argument in contending that the Examiner erred in rejecting claim 1 under 35 U.S.C. § 103(a). Specifically, none of the four references, either individually or in combination, disclose the idea of determining a user's past exposure to a television advertisement by utilizing user input received at a social-networking system. App. Br. 15. The examiner concedes that Cannon and Briggs fail to disclose retrieving user input received a social networking system and, instead, the examiner relies on various portions of Setty. (Office Action, pg. 14.) Yet, the Examiner states that it would have been obvious to combine Cannon and Briggs with Setty, because Setty discloses retrieving user input as a social-networking system "to determine the effectiveness of advertisements provided via a social network." (Office Action, pgs. 15). However, determining the effectiveness of advertisements provided "via a social network" is irrelevant since Claim 1 recites that the 10 Appeal2018-001930 Application 14/194,394 advertisements are a "television advertisement[ s ]," and not online advertisements. App. Br. 16. The Examiner presents the following response to Appellants' above argument. The Examiner notes, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck& Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). Furthermore, the test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413,208 USPQ 871 (CCPA 1981). In the Non-Final Office Action mailed out on 03 April 2017 (hereinafter the Non-Final), pgs. 12-14, the Examiner cites Cannon and Briggs as disclosing and teaching retrieval of viewing behavior of users with respect to television advertisements, and determining effectiveness of the television advertisements by evaluating attitudinal data toward the concept represented by the television advertisement. The Non-Final, pg. 14, final ,r - pg. 15, ,r 3 cites Setty to teach that user inputs comprising timestamp and user activity information provided via a social network may be utilized to determine user viewing behavior with said social network-provided user input. Specifically, Setty [0005-1 OJ was cited to teach that the tracked advertisements could comprise video/audio clips. While Setty does not explicitly state that such video/audio advertisements were television advertisements, one of ordinary skill in the art would understand that the teachings of Setty could be applicable to the television advertisements of Cannon and Briggs to utilize a user's social-network activities for determining advertisement effectiveness. As such, the combination of the teachings of 11 Appeal2018-001930 Application 14/194,394 Cannon, Briggs, Setty, and King disclose and teach each element of the Claim. Ans. 8-9. We agree with the Examiner's articulated reasoning. CONCLUSIONS (1) The Examiner has not erred in rejecting claims 1-20 under 35 U.S.C. § 101, as being directed to patent-ineligible subject matter. (2) The Examiner has not erred in rejecting claims 1-20 as being unpatentable under 35 U.S.C. § 103(a). (3) Claims 1-20 are not patentable. DECISION The Examiner's rejection of claims 1-20 under 35 U.S.C. § 101, as being directed to patent-ineligible subject matter, is affirmed. The Examiner's rejection of claims 1-20 as being unpatentable under 35 U.S.C. § 103(a) is affirmed. 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 12 Copy with citationCopy as parenthetical citation