Ex Parte Chow et al

Patent Trials and Appeals Board

Dec 27, 2018

12194920 - (D) (P.T.A.B. Dec. 27, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/194,920 08/20/2008 Richard Chow
35699 7590 12/31/2018
PVF--PARC
c/o PARK, VAUGHAN, FLEMING & DOWLER LLP
2820 FIFTH STREET
DAVIS, CA 95618-7759
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.
PARC-20071342-US-NP 7516
EXAMINER
SORKOWITZ, DANIEL M
ART UNIT PAPER NUMBER
3681
NOTIFICATION DATE DELIVERY MODE
12/31/2018 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):
sy _incoming@parklegal.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RICHARD CHOW, PHILIPPE JEAN-PAUL GOLLE,
and JESSICA N. STADDON 1
Appeal2017-009242
Application 12/194,920
Technology Center 3600
Before JAMES R. HUGHES, BETH Z. SHAW, and
STEVEN M. AMUNDSON, Administrative Patent Judges.
HUGHES, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134(a) of the
Examiner's decision rejecting claims 1-22 and 24--28. Claim 23 has been
canceled. See Appeal Br. 3. 2 We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
1 According to Appellants, the real party in interest is Palo Alto Research
Center Incorporated. Appeal Br. 1.
2 We refer to Appellants' Specification filed Aug. 20, 2008 ("Spec.");
Appeal Brief filed Feb. 3, 2017 ("Appeal Br."); and Reply Brief filed June
13, 2017 ("Reply Br."). We also refer to the Examiner's Final Office Action
mailed Nov. 4, 2016 ("Final Act."), and Answer mailed Apr. 17, 2017
("Ans.").
Appeal2017-009242
Application 12/194,920
Appellants' Invention
The invention relates generally "to techniques for detecting similar
objects. More specifically, the present invention relates to a
method," computer-readable storage medium, "and apparatus for performing
inference detection based on web advertisements." Spec. ,r 1. The process
(method) for inference detection receives a query (a set of words) from a
user, performs a search query (for each word in the received set) using an
Internet search engine, and receives search results from the Internet search
engine corresponding to at least a first word and a second word in the set of
words. The process identifies a first set of sponsored Uniform Resource
Locators (URLs) from a search result corresponding to the first word and a
second set of sponsored URLs from a search result corresponding to the
second word, and generates a bipartite graph based on the words and the
sponsored URLs identified from the search results of the words. A first set
of vertices of the bipartite graph is associated with one or more of the words
and a second set of vertices is associated with one or more of the sponsored
URLs. A respective edge of the bipartite graph maps a sponsored URL to a
word. The process generates a first collapsed graph from the bipartite graph
by collapsing the vertices associated with the sponsored URLs into a set of
edges between words, such that an edge is created between two words in the
first collapsed graph for a pair of words that are coupled to a common
sponsored URL through corresponding edges of the bipartite graph. The
process indicates in a result that the first word and the second word are
related based on a determination that a number of edges coupling the first
word and the second word in the first collapsed graph exceeds a
predetermined threshold. See Spec. ,r,r 5-16; Abstract.
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Application 12/194,920
Representative Claim
Independent claim 1, reproduced below, further illustrates the
invention:
1. A computer-executed method, comprising:
receiving, by a computing device, a set of words from an
end-user;
for each word in the received set, performing a search
query on the word over a computer network using an Internet
search engine;
receiving, by the computing device and from the Internet
search engine over the computer network, search results
corresponding to at least a first word and a second word in the
set of words;
identifying a first set of sponsored Uniform Resource
Locators (URLs) from a search result corresponding to the first
word;
identifying a second set of sponsored URLs from a search
result corresponding to the second word;
generating a bipartite graph based on the words and the
sponsored URLs identified from the search results of the words,
wherein a first set of vertices of the bipartite graph is associated
with one or more of the words, wherein a second set of vertices
of the bipartite graph is associated with one or more of the
sponsored URLs, and wherein a respective edge of the bipartite
graph maps a sponsored URL to a word;
generating a first collapsed graph from the bipartite graph
by collapsing the vertices associated with the sponsored URLs
into a set of edges between words, wherein there exists an edge
between two words in the first collapsed graph for a pair of words
that are coupled to a common sponsored URL through
corresponding edges of the bipartite graph; and
responsive to determining that a number of edges coupling
the first word and the second word in the first collapsed graph
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Application 12/194,920
exceeds a predetermined plural threshold, indicating in a result
that the first word and the second word are related.
Appeal Br. 28 (Claims App.).
Rejection on Appeal3
The Examiner rejects claims 1-22 and 24--28 under 35 U.S.C. § 101
as being directed to patent-ineligible subject matter.
ISSUE
Based upon our review of the record, Appellants' contentions, and the
Examiner's findings and conclusions, the issue before us follows:
Did the Examiner err in finding Appellants' claims were directed to
patent-ineligible subject matter under 35 U.S.C. § 101?
ANALYSIS
Appellants argue independent claims 1, 12, and 19 ( as well as
dependent claims 2-11, 13-18, 20-22, and 24--28) together as a group with
respect to the§ 101 rejection. See Appeal Br. 12-25. We select
independent claim 1 as representative of Appellants' arguments with respect
to claims 1-22 and 24--28. 37 C.F.R. § 4I.37(c)(l)(iv).
The Examiner rejects the claims ( claim 1) as being directed to patent-
ineligible subject matter in that claim 1 is "directed to the abstract idea of ...
3 The Examiner withdrew the rejection under 35 U.S.C. § 112, Second
Paragraph. See Advisory Action mailed Jan. 27, 2017; Appeal Br. 26. The
Examiner includes canceled claim 23 and omits claim 28 from the statement
of the § 101 rejection. See Final Act. 2. Appellants acknowledge this
typographical error. See Appeal Br. 12. Accordingly, we find these
typographical errors harmless and correct the statement of rejection for
clarity and consistency.
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Application 12/194,920
performing inference detection based on advertisements." Final Act. 3
( emphasis omitted). The Examiner further explains that the:
claim does not include additional elements that are sufficient to
amount to significantly more than the judicial exception because
the additional computer elements, recited at a high level of
generality, provide conventional computer functions that do not
add meaningful limits to practicing the abstract idea.
Final Act. 3; see Final Act. 3-5; Ans. 2--4. Additionally, the Examiner
explains that the steps of claim 1:
describe the concept of advertising over communication
networks, which corresponds to concepts identified as abstract
ideas by the courts, [ s ]uch as in Ultramercial, which offers
advertising and payments over communication networks. All of
these concepts relate to economic practices in which monetary
transactions between people are managed. The concept
described in claim 1 is not meaningfully different than those
economic concepts found by the courts to be abstract ideas. As
such, the description in claim 1 method for performing inference
detection based on advertisements is an abstract idea.
Final Act. 4.
Appellants contend the Examiner erred in rejecting the instant claims
as being directed to patent-ineligible subject matter. See Appeal Br. 12-25;
Reply Br. 7-13. Specifically, Appellants summarize the Alice decision
(Alice Corp. Pty. Ltd. v. CLS Banklnt'l, 134 S. Ct. 2347 (2014)), the Enfzsh
decision (Enfzsh, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016)),
and the USPTO's guidance concerning patent-eligible subject matter (see
Appeal Br. 12-16) and contend, inter alia, the claims, "[s]imilar to the
invention of McRo," are not directed to the abstract idea proposed by the
Examiner because the claims
incorporate 'rules' ( e.g., responsive to determining that a number
of edges coupling the first word and the second word in the first
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Application 12/194,920
collapsed graph exceeds a predetermined plural threshold,
indicating that a first word and the second word are related . . . )
that improve the technological processes for both analyzing
human language and making recommendations
Appeal Br. 16; see Appeal Br. 15-17). Appellants also contend
that the claimed invention is not an abstract idea under step one
of the Mayo[ 4J test (as applied under Alice because the claimed
invention is not 1) a fundamental economic practice, 2) a method
of organizing human activities, 3) an idea, in and of itself, or 4)
a mathematical relationship or formula
(Appeal Br. 16-17; see Appeal Br. 16-18), and the Examiner-cited
Ultramercial decision is "clearly distinguishable from the facts of the
present case" (Appeal Br. 19 ( citing Ultramercial, Inc., v. Hulu, LLC, 772
F.3d 7109 (Fed. Cir. 2014)); see Appeal Br. 18-20). Appellants additionally
contend that even if "the claimed invention is an abstract idea, the claimed
invention still satisfies patent eligibility under step two of the Mayo test
under Alice because the claim is directed to significantly more than the
alleged abstract idea" (Appeal Br. 20 (footnote omitted); see Appeal Br. 20-
25).
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. CLSBankint'l, 134 S. Ct. 2347, 2354 (2014) (quotingAss'nfor
Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 589 (2013)).
Under Alice, first, we "determine whether the claims at issue are directed to
4 Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66 (2012)
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Application 12/194,920
a patent-ineligible concept." Alice, 134 S. Ct. 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."' Thales Visionix Inc. v. U.S., 850
F.3d 1343, 1346 (Fed. Cir. 2017) (quoting Elec. Power Grp., LLC v. Alstom
S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016)). Under step one of the
Alice/Mayo analysis, "it is not enough to merely identify a patent-ineligible
concept underlying the claim; we must determine whether that patent-
ineligible concept is what the claim is 'directed to."' Rapid Litig. Mgmt.
Ltd. v. CellzDirect, Inc., 827 F.3d 1042, 1050 (Fed. Cir. 2016).
Alice Step 1 Analysis
Turning to the first step of the eligibility analysis, "the first step in the
Alice inquiry ... asks whether the focus of the claims is on the specific
asserted improvement in computer capabilities ... or, instead, on a process
that qualifies as an 'abstract idea' for which computers are invoked merely
as a tool." Enfish, 822 F.3d at 1335-36. "The abstract idea exception
prevents patenting a result where 'it matters not by what process or
machinery the result is accomplished."' McRO, Inc. v. Bandai Namco
Games Am. Inc., 837 F.3d 1299, 1312 (Fed. Cir. 2016) (quoting O'Reilly v.
Morse, 56 U.S. (15 How.) 62, 113 (1853)). "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
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the abstract idea and merely invoke generic processes and machinery."
McRO, 837 F.3d at 1314.
The Federal Circuit recently explained that claimed subject matter is
patent eligible where the claim limitations have "the specificity required to
transform a claim from one claiming only a result to one claiming a way of
achieving it." SAP Am., Inc. v. InvestPic, LLC, 898 F.3d 1161, 1167 (Fed.
Cir. 2018) ( citations omitted). Similarly, in McRO, the court held patent
eligible claims limited to rules with specific characteristics for producing
accurate and realistic lip synchronization and facial expression in animated
characters. See McRO, 837 F.3d at 1314. In the recent Finjan decision, the
court held claims patent eligible because they recited specific steps for
generating a security profile that identifies suspicious code and linking the
profile to a downloadable ( downloadable executable application program),
which accomplished the desired result. See Finjan, Inc. v. Blue Coat Sys.,
Inc., 879 F.3d 1299, 1305---06 (Fed. Cir. 2018).
By contrast, the Federal Circuit has consistently held that claims
reciting only the desired result without the particular way of achieving the
result are directed to an abstract idea. For example, in Apple, the court
invalidated claims related to a computer system that can generate a second
menu from a first menu based on a selection of items on the first menu
because the claims "d[id] not claim a particular way of programming or
designing the software ... but instead merely claim the resulting systems."
Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1241 (Fed. Cir. 2016) (citation
omitted). Similarly, in Affinity Labs, the court held that a claim related to
wirelessly communicating regional broadcast content to an out-of-region
recipient was abstract and patent ineligible because there was nothing in the
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Application 12/194,920
claim "directed to how to implement [the idea]. Rather, the claim is drawn
to the idea itself." Affinity Labs of Tex., LLC v. DIRECTV, LLC, 838 F.3d
1253, 1258, 1265 (Fed. Cir. 2016). See Two-Way Media, Ltd. v. Comcast
Cable Commc 'ns, LLC, 874 F.3d 1329, 1337 (Fed. Cir. 2017); Secured Mail
Solutions LLC v. Universal Wilde, Inc., 873 F.3d 905, 910 (Fed. Cir. 2017);
RecogniCorp, LLC. v. Nintendo Co., 855 F.3d 1322, 1326 (Fed. Cir. 2017);
Intellectual Ventures I LLCv. Symantec Corp., 838 F.3d 1307, 1316 (Fed.
Cir. 2016).
The court in SAP America also contrasted the claims before it with the
claims at issue in Thales, explaining that the claims in Thales were directed
to an improvement in a physical tracking system. SAP Am., 898 F.3d at
1168. The court explained that the claims at issue before it were directed to
performing statistical analyses of investment information, and were focused
not on a physical-realm improvement, but on improvement in wholly
abstract ideas-the selection and mathematical analysis of information,
followed by reporting or display of the results. See id.
The line of reasoning discussed in McRO, SAP America, and Finjan is
applicable in our analysis of the instant claims. In the present case, the
desired result----detecting similar objects by performing inference detection
based on web advertisements (Spec. ,r 1 }-is recited in the "determining"
step----"determining that a number of edges coupling the first word and the
second word in the first collapsed graph exceeds a predetermined plural
threshold" and "indicating in a result that the first word and the second word
are related" ( claim 1 ). Claim 1, however, is not limited to ( or "directed to")
this desired result. Rather, the claim recites multiple specific steps for
identifying URLs corresponding to query words, generating a bipartite graph
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Application 12/194,920
utilizing the data ( query words and corresponding URLs ), and generating a
collapsed graph from the bipartite graph, all of which are utilized in the
"determining" step. Thus, the claims are not directed to generic processes
and machinery or a particular desired result or effect. Rather, the claims are
directed to a specific method having specific steps for achieving the result.
Similar to the claims in McRO and Finjan, the claims here are directed to a
specific method that improves the relevant technology.
Appellants also contend (supra) that the claims, even if directed to an
abstract idea, recite significantly more than the abstract idea and, therefore,
satisfy patent eligibility under step two of the Alice/Mayo test. See Appeal
Br. 20-25. Because we decide that the claims are not directed to an abstract
idea, we need not proceed to step two of the Alice/Mayo analysis. See Alice,
134 S. Ct. at 2355.
For at least the reasons above, we are persuaded of Examiner error in
the rejection of claim 1 under 35 U.S.C. § 101, and we disagree with the
Examiner's determination that the claims are directed to an abstract idea.
Thus, we do not sustain the rejection of independent claims 1, 12, and 19,
and their dependent claims 2-11, 13-18, 20-22, and 24--28, under 35 U.S.C.
§ 101 as being directed to patent-ineligible subject matter.
CONCLUSION
Appellants have shown that the Examiner erred in rejecting claims 1-
22 and 24--28 under 35 U.S.C. § 101.
DECISION
We reverse the Examiner's rejection of claims 1-22 and 24--28.
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Application 12/194,920
REVERSED
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