Ex Parte Bruich et al

Patent Trial and Appeal Board

Oct 24, 2018

14153025 (P.T.A.B. Oct. 24, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/153,025 01/11/2014
87851 7590
Facebook/Fenwick
Silicon Valley Center
801 California Street
Mountain View, CA 94041
10/26/2018
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.
26295-25895/US 2742
EXAMINER
REFAI,SAMM
ART UNIT PAPER NUMBER
3681
NOTIFICATION DATE DELIVERY MODE
10/26/2018 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 BRUNCH and BRADLEY HOPKINS 1
Appeal2017-008495
Application 14/153,025
Technology Center 3600
Before ROBERT E. NAPPI, JENNIFER L. McKEOWN and
JAMES W. DEJMEK, Administrative Patent Judges.
NAPPI, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's final
rejection of claims 1 through 20. We have jurisdiction under 35 U.S.C.
§ 6(b).
We affirm.
INVENTION
The invention is directed to a method for combining information from
different data sets, such as social networks, advertising networks, and/ or
panels, each data set comprising statistics about past viewership of
1 According to Appellants, Facebook, Inc. is the real party in interest. App.
Br. 2.
Appeal2017-008495
Application 14/153,025
advertisements. Abstract. Claim 1 is illustrative of the invention and are
reproduced below.
1. A computer-implemented method comprising:
accessing panel data obtained from a surveying panel and
comprising numerical statistics corresponding to households of
viewers chosen to be statistically representative of an overall
audience and having had viewer survey answers confirmed
before inclusion within the surveying panel, the statistics
comprising numbers of clicks on advertisements;
accessing social networking data obtained from a social
networking system and comprising numerical statistics
corresponding to individual users of the social networking
system and obtained via client device usage by the individual
users after validation of identities of the individual users
through social networking system logins, the statistics
comprising numbers of clicks of the individual users on
advertisements while using the social networking system, the
social networking data further comprising personal information
about the individual users that is manually entered by the
individual users;
computing an estimation model using both the panel data
and the social networking data by application of at least one of
supervised machine learning, Bayesian techniques, and
weighting segments;
accessing first statistics for an advertisement from the
surveying panel and second statistics for the advertisement
from the social networking system; and
computing estimated viewing statistics for the
advertisement with respect to an audience comprising a
plurality of people, at least in part by providing the first
statistics and the second statistics as input to the estimation
model.
2
Appeal2017-008495
Application 14/153,025
EXAMINER'S REJECTIONS 2
The Examiner has rejected claims 1 through 20 under 35 U.S.C. § 101
for being directed to patent-ineligible subject matter. Final Act. 2.
The Examiner has rejected claims 1 through 5, 8 through 12, and 15
through 19 under 35 U.S.C. § 103 as being unpatentable over Fordyce (US
2011/0087550 Al; Apr. 14, 2011), Doyle (US 2009/0320101 Al; Dec. 24,
2009), and Leggetter (US 2009/0187465 Al; July 23, 2009)). Final Act. 6.
The Examiner has rejected claims 6 and 13 under 35 U.S.C. § 103 as
being unpatentable over Fordyce, Doyle, Leggetter, and Chien (US
2010/0082360 Al; Apr. 1, 2010). Final Act. 12.
The Examiner has rejected claims 7, 14 and 20 under 35 U.S.C. § 103
as being unpatentable over Fordyce, Doyle, Leggetter, and Chandler-
Pepelnjak (US 2003/0074252 Al; Apr. 17, 2003). Final Act. 13.
PRINCIPLES OF LAW
Patent-eligible subject matter is defined in 35 U.S.C. § 101 of the
Patent Act, which recites:
Whoever 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 therefor, subject
to the conditions and requirements of this title.
There are, however, three judicially created exceptions to the broad
categories of patent-eligible subject matter in 35 U.S.C. § 101: "[l]aws of
2 Throughout this Decision we refer to the Appeal Brief ("App. Br.") filed
January 18, 2017, the Reply Brief ("Reply Br.") filed May 22, 2017, Final
Office Action ("Final Act.") mailed March 18, 2016, and the Examiner's
Answer ("Ans.") mailed March 23, 2017.
3
Appeal2017-008495
Application 14/153,025
nature, natural phenomena, and abstract ideas." Alice Corp. Pty. Ltd. v. CLS
Bank Int'!, 134 S. Ct. 2347, 2354 (2014); Mayo Collaborative Servs. v.
Prometheus Labs., Inc., 566 U.S. 66, 70 (2012). The Supreme Court sets
forth a two-part "framework 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.
Id.
First, we determine whether the claims at issue are directed to
one of those patent-ineligible concepts .... [Mayo, 566 U.S. at
76-77]. If so, we then ask, "[w]hat else is there in the claims
before us?" Id., at [77-78]. To answer that question, we consider
the elements of each claim both individually and "as an ordered
combination" to determine whether the additional elements
"transform the nature of the claim" into a patent-eligible
application. Id., at [78-79]. We have 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." Id., at [71-73].
Although an abstract idea itself is patent ineligible, an application of
the abstract idea may be patent eligible. Alice, 134 S. Ct. at 2355. Thus, we
must 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." Id.
(quoting Mayo, 566 U.S. at 79, 78). The claim must contain elements or a
combination of elements that are "sufficient to ensure that the patent in
practice amounts to significantly more than a patent upon the [ abstract idea]
itself." Id. (quoting Mayo, 566 U.S. at 72-73). The Federal Circuit has
explained that, in determining whether claims are patent-eligible under
Section 101, "the decisional mechanism courts now apply is to examine
4
Appeal2017-008495
Application 14/153,025
earlier cases in which a similar or parallel descriptive nature can be seen-
what prior cases were about, and which way they were decided." Amdocs
(Israel) Ltd. v. Openet Telecom, Inc., 841 F.3d 1288, 1294 (Fed. Cir. 2016).
The Federal Circuit also noted in that decision that "examiners are to
continue to determine if the claim recites (i.e., sets forth or describes) a
concept that is similar to concepts previously found abstract by the courts."
Id. at 1294 n.2.
ANALYSIS
We have reviewed Appellants' arguments in the Briefs, the
Examiner's rejections, and the Examiner's response to Appellants'
arguments. Appellants' arguments have persuaded us of error in the
Examiner's rejection under 35 U.S.C. § 103. However, Appellants'
arguments have not persuaded us of error in the Examiner's conclusion that
the claims are directed to patent-ineligible subject matter.
Rejection under 35 U.S.C. § 1 OJ
Appellants argue that the Examiner's rejection of claim 1 under 35
U.S.C. § 101 is in error as a) the Examiner has not provided a reasoned
rationale, citing court decisions to show that the claim is directed to an
abstract idea; b) when viewed in light of the decision in McRO, Inc. v.
Bandai Namco Games America Inc., 837 F.3d 1299 (Fed. Cir. 2016), the
claims do not recite an abstract concept; and c) the claims recite significantly
more and are similar to those at issue in DDR Holdings, LLC v. Hotels.com,
L.P., 773 F.3d 1245 (Fed. Cir. 2014). App. Br. 8-17; Reply Br. 2-8.
Specifically, Appellants argue" [l]ike the claims in McRO, these claims do
5
Appeal2017-008495
Application 14/153,025
not generically recite an abstract result, or automate an existing human
process. Instead the claims at issue incorporate features that limit the claims
to a specific process of improving estimation of viewing statistics." App.
Br. 14. Further, Appellants state:
Rather, the features recited in the accessing of the social
networking data-such as validation of identities of the
individual users through social networking system logins-are
inherently specific to computer networks and address the
technical problem of tying the social networking statistics to
individual users, which allows the social networking data to
complement and correct the panel data, thereby ultimately
resulting in a more useful estimation model. .... Thus, claim 1
and the other claims "do not merely recite the performance of
some business practice known from the pre-Internet world
along with the requirement to perform it on the Internet.
Instead, the claimed solution is necessarily rooted in computer
technology in order to overcome a problem specifically arising
in the realm of computer networks." DDR, p. 20
App. Br. 17.
The Examiner has provided a detailed and comprehensive response to
Appellants' arguments on pages 3 through 19 of the Answer. In this
Answer, the Examiner provides a detailed response comparing the claims at
issue to claims found to be abstract by the courts. Answer 3-9 ( citing:
Electric Power Group, LLC v. Alstom S.A., 830 F.3d 1350, 1354 (Fed. Cir.
2016), FairWarningIP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1094 (Fed.
Cir. 2016), Classen Immunotherapies, Inc. v. Biogen IDEC, 659 F.3d 1057,
1064 (Fed. Cir. 2011), CyberSource Corp. v. Retail Decisions Inc., 654 F.3d
1366, 1371 (Fed. Cir. 2011), In re TL! Commc'ns LLC Patent Litig., 823
F.3d 607, 613 (Fed. Cir. 2016), Parker v. Flook, 437 U.S. 584 (1978), and
buySAFE, Inc. v. Google, Inc., 765 F.3d 1350 (Fed. Cir. 2014). Further,
6
Appeal2017-008495
Application 14/153,025
with respect to Appellants' arguments that when the claim does not recite an
abstract concept when considered in light of the decision in McRO, the
Examiner finds that the claimed concept of combining data from different
sources into a single set has been held to be well-known and abstract.
Answer 10 ( citing Digitech Image Techs., LLC v. Elecs. for Imaging, Inc.
758 F.3d 1344 (Fed Cir. 2014)). Further, the Examiner finds that the claims
are not directed to overcome a problem specifically arising in the realm of
computer networks and is thus unlike the claims at issue McRO. Answer 10-
12 ( citing DDR and McRO). Finally, with respect to Appellants' argument
that the claims recite significantly more than the abstract idea, the Examiner
concludes that claims use of the Internet to gather data is merely reciting the
use of generic computer functions to implement the abstract idea and as
such are not drawn to significantly more. Additionally, the Examiner states
that the use of a social networking system to gather data is merely an
insignificant data-gathering step and does not transform the abstract idea to
recite significantly more. Answer 13-16.
We have reviewed and concur with the Examiner's rationale, findings
and conclusions. We add the following for emphasis, as found by the
Examiner the claim steps of accessing panel data, social networking data and
accessing statistics are merely steps of gathering or collecting data which the
similar to limitations held to be abstract by the court in Electric Power, 830
F.3d at 1354 (holding that claims directed to a process of gathering and
analyzing information of a specific content are directed to an abstract idea);
and Smart Sys. Innovations LLC v. Chi Transit Authority, 873 F.3d 1364,
1372 (Fed. Cir. 2017) (holding that claims directed to data collection and a
financial transaction in a particular file, are directed to an abstract idea).
7
Appeal2017-008495
Application 14/153,025
Further, the steps of computing an estimation model and viewing statistics
are merely steps directed to performing mathematical operations ( an
analysis) on the gathered data, which are similarly abstract.
We are not persuaded by Appellants' argument that the claim recites
use of social media data to improve estimating view statistics and, as such, is
technical improvement. Reply Br. 3--4. Similar to the claims at issue in
Electric Power, the claims are focused "on a process of gathering and
analyzing information of a specific content ... and not any particular
assertedly inventive technology for performing those functions" and, as
such, are directed to an abstract idea. Electric Power, at 1354. We note
Appellants' Specification identifies that web sites such as social networking
sites are known sources of data and, as such, we do not consider the use of
data from a social network site to be an inventive technology. See
Specification ,r 5.
Further, we are similarly not persuaded by Appellants' argument that
the claims that compute estimated viewing statistics are drawn to something
more than the abstract concept. Selecting information for collection and
analysis, which do not recite a new source or type of information, does not
transform an otherwise abstract process of information collection and
analysis. Electric Power, at 1354--55. Additionally, we are not persuaded
by Appellants' argument that the use of a social media network squarely
roots the claims in a computer technology and, as such, solves an "Intemet-
centric problem" App. Br. 16-17 (relying on DDR to show significantly
more). The claims are not solving a problem related to a social media
network or a computer-centric problem, rather, as discussed above, the
8
Appeal2017-008495
Application 14/153,025
recitation of the social media network is just a source of data. As
Appellants' arguments are unpersuasive of error, we sustain the Examiner's
rejection of claim 1 under 35 U.S.C. § 101 for being directed to patent-
ineligible subject matter.
Appellants' arguments directed to the Examiner's rejection under 35
U.S.C. § 101, group claims 1 through 20 together. App. Br. 6. Thus, we
also sustain the Examiner's rejection of claims 2 through 20 under 35 U.S.C.
§ 101.
Rejection under 35 U.S.C. § 103
Appellants' arguments directed to the obviousness rejection of
independent claims 1, 8, and 15 present us with several issues. The
dispositive issue is, whether the Examiner erred in finding the combination
of Fordyce, Doyle, and Leggetter teaches or suggests the claimed feature of
computing an estimation model using both the panel data and the social
networking data as recited in each of independent claims 1, 8 and 15. App.
Br. 20-22, Reply Br. 11-12. Specifically, Appellants assert that Fordyce
describes "computing values of parameters of transaction profiles by
building a statistically-based model" but does not suggest that the social
networking data can be used to build the statically based model. Reply Br.
12.
The Examiner responds to these arguments finding that Fordyce
teaches transaction profiles include values for building statistically based
model that weighs values to optimize predictions. Answer 24 ( citing
Fordyce ,r,r 53, 318). Further, in the Final Action the Examiner cites
numerous additional paragraphs to support the finding that Fordyce teaches
9
Appeal2017-008495
Application 14/153,025
the disputed limitation. See Final Act. 8 (citing ,r,r 25-26, 45, 47, 51, 93,
127, and 136-137).
We have reviewed the paragraphs of Fordyce cited by the Examiner.
The cited paragraphs do discuss the use of social media in conjunction with
transaction data. See Fordyce ,r,r 13 6-13 7. The cited paragraphs also
discuss transaction data being used in a transaction profile, which includes a
model. See Fordyce ,r 0053. However, we do not find that the cited
paragraphs discuss, nor does the Examiner provide an explanation of how
Fordyce is applied to teach, using the social media data in conjunction in
with the estimation model as claimed. Accordingly, we do not sustain the
Examiner's rejection of independent claims 1, 8 and 15, and the rejection of
claims 2 through 5, 9 through 12 and 16 through 19 which are similarly
rejected.
The Examiner's rejection of dependent claims 6, 7, 13, 14, and 20 rely
upon the same rationale for the limitations of the independent claims. Final
Act. 12-14. Accordingly, we similarly do not sustain the Examiner's
obviousness rejection of 6, 7, 13, 14, and 20.
DECISION
We reverse the Examiner's rejections of claims 1 through 20 under
35 U.S.C. § 103.
We affirm the Examiner's rejections of claims 1 through 20 under
35 U.S.C. § 101.
Because we affirm at least one ground of rejection with respect to
each claim on appeal, the Examiner's decision rejecting claims 1 through 20
is affirmed. See 37 C.F.R. § 41.50(a)(l ).
10
Appeal2017-008495
Application 14/153,025
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) (2016).
AFFIRMED
11