Ex Parte Bruich et al

Patent Trial and Appeal Board

Oct 22, 2018

13658480 (P.T.A.B. Oct. 22, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/658,480 10/23/2012
87851 7590
Facebook/Fenwick
Silicon Valley Center
801 California Street
Mountain View, CA 94041
10/24/2018
FIRST NAMED INVENTOR
Sean Michael Bruich
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.
26295-19886 2715
EXAMINER
REFAI,SAMM
ART UNIT PAPER NUMBER
3681
NOTIFICATION DATE DELIVERY MODE
10/24/2018 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):
ptoc@fenwick.com
fwfacebookpatents@fenwick.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
Appeal2017---001718
Application 13/658,480
Technology Center 3600
Before ANTON W. PETTING, BRUCE T. WIEDER, and
TARA L. HUTCHINGS, Administrative Patent Judges.
PETTING, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE 1
Sean Michael Broich and Bradley Hopkins Smallwood (Appellants) seek
review under 35 U.S.C. § 134 of a non-final rejection of claims 1--4, 6, 7, 9-
17, and 20-22, the only claims pending in the application on appeal. We
have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b ).
1 Our decision will make reference to the Appellants' Appeal Brief ("App.
Br.," filed June 14, 2016) and Reply Brief ("Reply Br.," filed November 7,
2016), and the Examiner's Answer ("Ans.," mailed October 4, 2016), and
Non-Final Action ("Non-Final Act.," mailed March 21, 2016).
Appeal2017-001718
Application 13/658,480
The Appellants invented a way of determining advertising effectiveness
based on the observed actions of users in a social networking system.
Specification para. 1.
An understanding of the invention can be derived from a reading of
exemplary claim 1, which is reproduced below (bracketed matter and some
paragraphing added).
1. A computer-implemented method comprising:
using a computer processor to perform steps comprising:
[1] randomly selecting a plurality of users to be included in at
least one of holdout subset and a sample subset from a plurality
of users of a social networking system;
[2] selecting a pseudo-control group of users from the users in
the sample subset, the users in the pseudo-control group not
having met targeting criteria for being shown advertisements;
[3] selecting an advertisement from the one or more
advertisements;
[ 4] preventing the users in the holdout subset and the users in
the pseudo-control group from being presented with the
selected advertisement;
[5] presenting the selected advertisement to the remaining users
in the sample subset;
[ 6] determining one or more actions performed by the users in
the holdout subset;
[7] determining one or more actions performed by the users in
the pseudo-control group;
[8] determining one or more actions performed by the users
presented with the selected advertisement in the sample subset;
[9] calculating a drift metric representing differences between
the actions performed by the users in the holdout subset and the
actions performed by the users in the pseudo-control group, the
calculated drift metric indicating whether the pseudo-control
group is validated to act as a suitable control with which the
2
Appeal2017-001718
Application 13/658,480
sample subset is compared to measure effectiveness of the
selected advertisement;
[10] responsive to the drift metric being within a predefined
similarity range, calculating a measure of effectiveness for the
selected advertisement based at least in part on the determined
actions performed by the one or more users presented with the
selected advertisement in the sample subset and the determined
actions performed by the users in the pseudo-----control group.
Claims 1--4, 6, 7, 9-17, and 20-22 stand rejected under 35 U.S.C. § 101
as directed to non-statutory subject matter.
ISSUES
The issues of eligible subject matter tum primarily on whether the claims
recite more than abstract conceptual advice of what a computer is to provide
without implementation details.
ANALYSIS
Method claim 1 recites selecting users and an advertisement, presenting
the advertisement to some and preventing display to other users, determining
actions, and computing a drift metric and a measure of effectiveness. Thus,
claim 1 recites retrieving data, displaying data, and analyzing and computing
data. None of the limitations recite implementation details for any of these
steps, but instead recite functional results to be achieved by any and all
possible means. Data reception, analysis and modification, and display are
all generic, conventional data processing operations to the point they are
themselves concepts awaiting implementation details. The sequence of data
3
Appeal2017-001718
Application 13/658,480
reception-display-analysis is equally generic and conventional. The
ordering of the steps is therefore ordinary and conventional. Independent
method claim 13 recites similar steps in a slightly different sequence, but
retains the data reception-display-analysis sequence. The remaining claims
merely describe data and parameters for the advertising, selections, and
computations, with no implementation details.
The Supreme Court
set forth a framework for distinguishing patents that claim laws
of nature, natural phenomena, and abstract ideas from those that
claim patent-eligible applications of those concepts. First, []
determine whether the claims at issue are directed to one of
those patent-ineligible concepts. [] If so, we then ask, "[ w ]hat
else is there in the claims before us? [] To answer that question,
[] 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. [The Court] described step two of this
analysis as a 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."
Alice Corp., Pty. Ltd. v. CLS Bank Intl, 134 S.Ct. 2347, 2355 (2014)
(citing Mayo Collaborative Services v. Prometheus Laboratories, Inc.,
566 U.S. 66 (2012)).
To perform this test, we must first determine whether the claims at issue
are directed to a patent-ineligible concept. The Examiner finds the claims
directed to a mathematical algorithm defined by the steps, which is merely
an idea 'of itself, mathematical relationships/formulas and a fundamental
economic practice. Non-Final Act. 3--4.
4
Appeal2017-001718
Application 13/658,480
Although the Court in Alice made a determination as to what the claims
were directed to, we find that this case's claims themselves and the
Specification provide enough information to inform one as to what they are
directed to.
The preamble to claim 1 does not recite what it is directed to, but the
steps in claim 1 result in calculating a drift metric and a measure of
effectiveness based on data from actions performed by the users presented
with a selected advertisement in a sample subset. The Specification at
paragraph 1 recites that the invention relates to determining advertising
effectiveness based on the observed actions of users in a social networking
system. Thus, all this evidence shows that claim 1 is directed to using a
mathematical algorithm to compute statistical measures, i.e. a mathematical
algorithm. This is consistent with the Examiner's finding.
It follows from prior Supreme Court cases, and Bilski (Bilski v. Kappas,
561 U.S. 593 (2010)) in particular, that the claims at issue here are directed
to an abstract idea. Like the risk hedging in Bilski, the concept of market
research is a fundamental business practice long prevalent in our system of
commerce. The use of market research is also a building block of ingenuity
in marketing. Thus, market research, like hedging, is an "abstract idea"
beyond the scope of §101. See Alice Corp. Pty. Ltd. at 2356. Beyond that,
mathematical algorithms are abstract ideas.
As in Alice Corp. Pty. Ltd., we need not labor to delimit the precise
contours of the "abstract ideas" category in this case. It is enough to
recognize that there is no meaningful distinction in the level of abstraction
between the concept of risk hedging in Bilski and the concept of market
5
Appeal2017-001718
Application 13/658,480
research at issue here. Both are squarely within the realm of "abstract ideas"
as the Court has used that term. See Alice Corp. Pty. Ltd. at 2357.
Further, claims involving data collection, analysis, and display are
directed to an abstract idea. Elec. Power Grp. v. Alstom S.A., 830 F.3d 1350,
1353 (Fed. Cir. 2016) (holding that "collecting information, analyzing it, and
displaying certain results of the collection and analysis" are "a familiar class
of claims 'directed to' a patent ineligible concept"); see also In re TL!
Commc'ns LLC Patent Litig., 823 F.3d 607,611 (Fed. Cir. 2016);
FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1093-94 (Fed. Cir.
2016). Claim 1, unlike the claims found non-abstract in prior cases, uses
generic computer technology to perform data retrieval, analysis, and display
and does not recite an improvement to a particular computer technology.
See, e.g., McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299,
1314--15 (Fed. Cir. 2016) (finding claims not abstract because they "focused
on a specific asserted improvement in computer animation"). As such,
claim 1 is directed to the abstract idea of receiving, analyzing, and
displaying data.
The remaining claims merely describe data and parameters for the
advertising, selections, and computations. We conclude that the claims at
issue are directed to a patent-ineligible concept.
The introduction of a computer into the claims does not alter the analysis
at Mayo step two.
the mere recitation of a generic computer cannot transform a
patent-ineligible abstract idea into a patent-eligible invention.
Stating an abstract idea "while adding the words 'apply it"' is
6
Appeal2017-001718
Application 13/658,480
not enough for patent eligibility. Nor is limiting the use of an
abstract idea "'to a particular technological environment.'"
Stating an abstract idea while adding the words "apply it with a
computer" simply combines those two steps, with the same
deficient result. Thus, if a patent's recitation of a computer
amounts to a mere instruction to "implemen[t]" an abstract idea
"on ... a computer," that addition cannot impart patent
eligibility. This conclusion accords with the preemption
concern that undergirds our § 101 jurisprudence. Given the
ubiquity of computers, wholly generic computer
implementation is not generally the sort of "additional
featur[ e ]" that provides any "practical assurance that the
process is more than a drafting effort designed to monopolize
the [ abstract idea] itself."
Alice Corp. Pty. Ltd., 134 S.Ct. at 2358 ( citations omitted).
"[T]he relevant question is whether the claims here do more than simply
instruct the practitioner to implement the abstract idea [] on a generic
computer." Alice Corp. Pty. Ltd., 134 S.Ct. at 2359. They do not.
Taking the claim elements separately, the function performed by the
computer at each step of the process is purely conventional. Using a
computer to retrieve, analyze, and display data amounts to electronic data
query and retrieval----one of the most basic functions of a computer. All of
these computer functions are well-understood, routine, conventional
activities previously known to the industry. See Elec. Power Grp. v. Alstom
S.A., supra. Also see In re Katz Interactive Call Processing Patent
Litigation, 639 F.3d 1303, 1316 (Fed. Cir. 2011)("Absent a possible
narrower construction of the terms 'processing,' 'receiving,' and 'storing,'
... those functions can be achieved by any general purpose computer
without special programming"). In short, each step does no more than
7
Appeal2017-001718
Application 13/658,480
require a generic computer to perform generic computer functions. As to the
data operated upon, "even if a process of collecting and analyzing
information is 'limited to particular content' or a particular 'source,' that
limitation does not make the collection and analysis other than abstract."
SAP America Inc. v. InvestPic LLC, 898 F.3d 1161, 1168 (Fed. Cir. 2018)
Considered as an ordered combination, the computer components of
Appellants' method add nothing that is not already present when the steps
are considered separately. The sequence of data reception-display-analysis
is equally generic and conventional or otherwise held to be abstract. See
Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed. Cir. 2014)
(sequence of receiving, selecting, offering for exchange, display, allowing
access, and receiving payment recited an abstraction), Inventor Holdings,
LLC v. Bed Bath & Beyond, Inc., 876 F.3d 1372, 1378 (Fed. Cir. 2017)
(sequence of data retrieval, analysis, modification, generation, display, and
transmission), Two-Way Media Ltd. v. Comcast Cable Communications,
LLC, 874 F.3d 1329, 1339 (Fed. Cir. 2017) (sequence of processing, routing,
controlling, and monitoring). The ordering of the steps is therefore ordinary
and conventional.
Viewed as a whole, Appellants' method claims simply recite the concept
of market research as performed by a generic computer. To be sure, the
claims recite doing so by advising one to divide a test group and only
present an ad to some of the groups for the purpose of collecting statistics.
But this is no more than abstract conceptual advice on the parameters for
such market research and the generic computer processes necessary to
process those parameters, and do not recite any particular implementation.
8
Appeal2017-001718
Application 13/658,480
The method claims do not, for example, purport to improve the
functioning of the computer itself. Nor do they effect an improvement in
any other technology or technical field. The pages of specification spell out
different generic equipment2 and parameters that might be applied using this
concept and the particular steps such conventional processing would entail
based on the concept of market research under different scenarios. They do
not describe any particular improvement in the manner a computer
functions. Instead, the claims at issue amount to nothing significantly more
than an instruction to apply the abstract idea of market research using some
unspecified, generic computer. Under our precedents, that is not enough to
transform an abstract idea into a patent-eligible invention. See Alice Corp.
Pty. Ltd. at 2360.
As to the structural claims, they
are no different from the method claims in substance. The
method claims recite the abstract idea implemented on a generic
computer; the system claims recite a handful of generic
computer components configured to implement the same idea.
This Court has long "warn[ ed] ... against" interpreting § 101 "in
ways that make patent eligibility 'depend simply on the
draftsman's art.'
Alice Corp. Pty. Ltd. at 2360.
As to Appellants' Appeal Brief arguments, we adopt Examiner's
determinations and analysis from Non-Final Action 2-7 and Answer 3-15
and reach similar legal conclusions. We now tum to the Reply Brief.
2 For example, a general-purpose computing device. Spec. para. 67.
9
Appeal2017-001718
Application 13/658,480
We are not persuaded by Appellants' argument that
the claims are directed towards solving a specific problem
through the particular implementation of a holdout subset, a
sample subset, and a pseudo-----control group that "reduces the
number of wasted advertising opportunities. Because holdout
subsets primarily serve as checks for whether pseudo-----control
groups can be suitably compared to sample subsets, holdout
subsets may be kept relatively small in size.
Reply Br. 3. What Appellants refer to as the particular implementation
of a holdout subset, a sample subset, and a pseudo-----control group is not a
technological, but rather a conceptual implementation. It is no more than
advice to use such subsets.
The patent in this case is not directed to the solution of a
"technological problem," nor is it directed to an improvement
in computer or network functionality. Instead, it claims the
general concept of out-of-region delivery of broadcast content
through the use of conventional devices, without offering any
technological means of effecting that concept.
Affinity Labs of Texas, LLC v. DIRECTV, LLC, 838 F.3d 1253, 1262 (Fed.
Cir. 2016).
We are not persuaded by Appellants' argument that the claims are unlike
those in the cases the Examiner cites. Reply Br. 4--6. Every case presents
different facts. The issue is whether the instant claims are directed to some
idea in the form of some practice that is so fundamental that its invocation is
itself an abstraction. These claims are directed to computing statistics
regarding the market for an ad, which is a form of market research. Market
research has been a staple of industry for over a century. To the extent
Appellants contend the claims are directed to making the specific
computations recited, such computations are not technological, but are
10
Appeal2017-001718
Application 13/658,480
themselves abstractions. Using one abstract idea in pursuit of another does
not remove claims from the realm of abstract ideas. "Adding one abstract
idea ... to another abstract idea ... does not render the claim nonabstract."
RecogniCorp, LLC v. Nintendo Co., Ltd., 855 F.3d 1322, 1327 (2017)
Appellants also attempt to analogize the claims to those involved in
McRO, Inc. v. Bandai Namco Games America Inc., 837 F.3d 1299 (Fed.
Cir. 2016). Reply Br. 6-9. In McRO, the court held that, although the
processes were previously performed by humans, "the traditional process
and newly claimed method ... produced ... results in fundamentally
different ways." FairWarning v. Iatric Systems, 839 F.3d at 1094
( differentiating the claims at issue from those in McRO). In McRO, "it
was the incorporation of the claimed rules not the use of the computer,
that improved the existing technology process," because the prior process
performed by humans "was driven by subjective determinations rather
than specific, limited mathematical rules." 837 F.3d at 1314 (internal
quotation marks, citation, and alterations omitted). In contrast, the claims
of the instant application merely implement an old practice of using
decision criteria in making sales decisions in a new environment. Appellants
have not argued that the claimed processes of selecting ads do so in a
manner technologically different from those which humans used, albeit
with less efficiency, before the invention was claimed. Merely using
particular subsets for research and computing statistics for the objects of
decision making to aid decision making is both old and itself abstract.
The claims in McRO were not directed to "a specific asserted
improvement in computer animation, i.e., the automatic use of
rules of a particular type." We explained that "the claimed
improvement [was] allowing computers to produce 'accurate
11
Appeal2017-001718
Application 13/658,480
and realistic lip synchronization and facial expressions in
animated characters' that previously could only be produced by
human animators." The claimed rules in McRO transformed a
traditionally subjective process performed by human artists into
a mathematically automated process executed on computers.
FairWarning, 839 F.3d 1089, 1094 (Fed. Cir, 2016).
We are not persuaded by Appellants' argument that the claims contain
an inventive concept that is also found in the specific ordered combination
of the limitations, similar to the Federal Circuit's findings in Bascom
(Bascom Global Internet v. AT&T Mobility LLC, 827 F.3d 1341, 1350 (Fed.
Cir. 2016)). Reply Br. 11-15. Initially, we remind Appellants that Bascom
did not find claims eligible on the substance, but rather that the Appellees
did not provide sufficient evidence to support a 12(b)(6) motion to dismiss
in which facts are presumed in the non-movant's favor.
The key fact in Bascom was the presence of a structural change in
"installation of a filtering tool at a specific location, remote from the end-
users, with customizable filtering features specific to each end user. This
design gives the filtering tool both the benefits of a filter on a local computer
and the benefits of a filter on the ISP server." Bascom, 827 F.3d at 1350.
The instant claims have no analogous structural benefit.
Appellants contend that their steps for selecting research subject subsets
are inventive because they are novel and useful. But a novel abstract idea
remains an abstract idea. "A claim for a new abstract idea is still an abstract
idea. The search for a § 101 inventive concept is thus distinct from
demonstrating§ 102 novelty." Synopsys, Inc. v. Mentor Graphics
Corporation, 839 F.3d 1138, 1151 (Fed. Cir. 2016). And many abstract
ideas are highly useful, as for example, "a stitch in time saves nine" and "an
12
Appeal2017-001718
Application 13/658,480
ounce of prevention is worth a pound of cure" are the basis for the highly
useful billion dollar preventative maintenance industry. Novelty and utility
are not determinative. At bottom, there is nothing structural or technological
in the recited manner of selecting test subjects. Such a manner remains
abstract conceptual advice for how to do so.
Appellants further argue that the asserted claims are akin to the
claims found patent-eligible in DDR Holdings, LLC v. Hotels.com, L.P.,
773 F.3d 1245 (Fed. Cir. 2014). Reply Br. 16-17. In DDR Holdings, the
Court evaluated the eligibility of claims "address[ing] the problem of
retaining website visitors that, if adhering to the routine, conventional
functioning of Internet hyperlink protocol, would be instantly
transported away from a host's website after 'clicking' on an
advertisement and activating a hyperlink." Id. at 1257. There, the Court
found that the claims were patent eligible because they transformed the
manner in which a hyperlink typically functions to resolve a problem
that had no "pre-Internet analog." Id. at 1258. The Court cautioned,
however, "that not all claims purporting to address Internet-centric
challenges are eligible for patent." Id. For example, in DDR Holdings the
Court distinguished the patent-eligible claims at issue from claims found
patent-ineligible in Ultramercial. See id. at 1258-59 (citing Ultramercial,
772 F.3d 709, 715-16 (Fed. Cir. 2014)). As noted there, the Ultramercial
claims were "directed to a specific method of advertising and content
distribution that was previously unknown and never employed on the
Internet before." Id. at 1258 (quoting Ultramercial, 772 F.3d at 715-16).
Nevertheless, those claims were patent ineligible because they "merely
recite[d] the abstract idea of 'offering media content in exchange for
13
Appeal2017-001718
Application 13/658,480
viewing an advertisement,' along with 'routine additional steps such as
updating an activity log, requiring a request from the consumer to view the
ad, restrictions on public access, and use of the Internet."' Id.
Appellants' asserted claims are analogous to claims found ineligible in
Ultramercial and distinct from claims found eligible in DDR Holdings.
The ineligible claims in Ultramercial recited "providing [a] media product
for sale at an Internet website;" "restricting general public access to said
media product;" "receiving from the consumer a request to view [a]
sponsor message;" and "if the sponsor message is an interactive message,
presenting at least one query to the consumer and allowing said consumer
access to said media product after receiving a response to said at least one
query." 772 F.3d at 712. Similarly, Appellants' asserted claims recite
retrieving data, displaying data, and analyzing and computing data. This is
precisely the type of Internet activity found ineligible in Ultramercial.
CONCLUSIONS OF LAW
The rejection of claims 1--4, 6, 7, 9-17, and 20-22 under 35 U.S.C.
§ 101 as directed to non-statutory subject matter is proper.
DECISION
The rejection of claims 1--4, 6, 7, 9-17, and 20-22 is affirmed.
14
Appeal2017-001718
Application 13/658,480
No time period for taking any subsequent action in connection with this
appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l)(iv) (2011).
AFFIRMED
15