Ex Parte Etchegoyen

Patent Trial and Appeal Board

Mar 21, 2017

13707840 (P.T.A.B. Mar. 21, 2017)

United States Patent and Trademark Office
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/707,840 12/07/2012 Craig S. ETCHEGOYEN UN-NP-IM-077 9079
96051 7590 03/23/2017
T Tnilnr T TS» A Tnr EXAMINER
Legacy Town Center
7160 Dallas Parkway
GARCIA-GUERRA, DARLENE
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rlano, IX /jUZ4 3683
NOTIFICATION DATE DELIVERY MODE
03/23/2017 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):
sean.burdick@unilocusa.com
tkiatkulpiboone@unilocusa.com
kris.pangan@unilocusa.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CRAIG S. ETCHEGOYEN
Appeal 2016-000737
Application 13/707,840
Technology Center 3600
Before JOSEPH L. DIXON, CATHERINE SHIANG, and
LINZY T. McCARTNEY, Administrative Patent Judges.
DIXON, Administrative Patent Judge.
DECISION ON APPEAL
Appeal 2016-000737
Application 13/707,840
STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1—18. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
The claims are directed to inferring user demographics through
network activity records. Claim 1, reproduced below, is illustrative of the
claimed subject matter:
1. A method for characterizing a user of a remotely-located
computer, the method comprising:
receiving, at a server, personal information from the
remotely-located computer, wherein the personal information
includes one or more items of data representing prior user-
initiated network activity of the remotely-located computer;
for each of the items of data of the personal information:
determining that one or more predetermined demographic
characteristic inference rules apply to the item of data; and
adjusting one or more demographic characteristic
inferences according to the applicable predetermined
demographic characteristic inference rules; and
inferring one or more characteristics of the user from the
demographic characteristic inferences.
1 Appellant indicates that Uniloc Luxembourg S.A. is the real party in
interest.
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Application 13/707,840
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Lajoie US 2009/0187939 A1
Wang et al. US 2010/0235241 A1
Priyadarshan et al. US 2012/0041969 Al
Black etal. US 8,255,948 B1
July 23, 2009
Sept. 16,2010
Feb. 16, 2012
Aug. 28, 2012
REJECTIONS
The Examiner made the following rejections in the Final Action:
Claims 1, 2, 4—7, 9-12, 14, and 15 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Wang view of Black.
Claims 3,8, and 13 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Wang and Black in further view of Lajoie.
Claims 15—18 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Wang and Black, in further view of Priyadarshan.
NEW GROUND OF REJECTION
The Examiner made a new ground of rejection in the Examiner’s
Answer:
Claims 1—18 stand rejected under 35 U.S.C. § 101 as directed to non-
statutory subject matter.2 (Ans. 3—8).
ANALYSIS
We concur with the conclusions reached by the Examiner, and adopt
as our own (1) the findings and reasons set forth by the Examiner in the
action from which this appeal is taken (Final Act. 7—34; Ans. 3—36), and
2 Appellant did not request that the Examiner reopen the prosecution on the
merits, and Appellant addresses the § 101 rejection in the Reply Brief.
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(2) the reasons set forth by the Examiner in the Examiner’s Answer in
response to Appellant’s Appeal Brief (Ans. 37—42). We highlight and
amplify certain teachings and suggestions of the references, as well as
certain ones of Appellant’s arguments as follows.
35 U.S.C. § 101
With respect to independent claims 1, 6, and 11, the Examiner
contends, “Claims 1—18 are rejected under 35 U.S.C. 101 because the
claimed invention is directed to non-statutory subject matter.” (Ans. 4). The
Examiner further finds, “After considering all claim elements, both
individually and in combination, it has been determined that the claim does
not amount to significantly more than the abstract idea itself or more than a
mere instruction to apply the abstract idea.” (Ans. 5). We agree with the
Examiner.
Appellant generally contends the claims are directed to statutory
subject matter. (Reply Br. 4—9).
Applicant respectfully submits that when considered in its
entirety, each independent claim provides sufficient structure
and description to clearly render the claim patent eligible.
Further, the claimed solution is rooted in computer technology to
overcome a problem specifically created in the realm of
computer networks. The claimed embodiments address the
problem of identifying and characterizing a user of a remote
computer solely through analyzing that user’s usage habits as
gleaned through the network interactions of that user through the
remotely-located computer. The problem would not have arisen
absent creation and use of computer and data networks. The
claimed embodiments may also be considered as an
improvement to the function of a data network. Thus, the solution
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is necessarily rooted in the same computer network technology
from which the problem arises.
(Reply Br. 7—8). With regards to Appellant’s argument that the problem is
“rooted in computer technology,” we find Appellant’s claimed invention
only nominally claims a computer implemented invention, which does not
amount to significantly more than the abstract idea itself.
Appellant further contends “the claim as a whole amounts to
significantly more than the abstract idea of comparing new and stored
information and using rules to identify options. Indeed, the claims define
new paths for gathering and organizing data and provide a means of
inferring and identifying user characteristics.” (Reply Br. 9). We disagree
and find that Appellant’s arguments generally rely upon the disclosed
invention and unclaimed subject matter. Consequently, Appellant’s
argument does not show error in the Examiner’s factual findings and
conclusion that independent claims 1, 6, and 11 are directed to non-statutory
subject matter under 35U.S.C. § 101.
Appellant does not set forth separate arguments for patentability of
any of the dependent claims, and we group these claims as falling with their
respective parent independent claims.
Appellant does not set forth separate arguments for patentability of
independent claims 1, 6, and 11, and their respective dependent claims. We
select independent claim 1 as the representative claim for the group.
37C.F.R. §41.37(c)(l)(iv).
Additionally, we agree with the Examiner and find representative
independent claim 1 to be directed to non-statutory subject matter under 35
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U.S.C. § 101 under the guidance set forth in Alice Corp. Pty. Ltd. v. CLS
BankInt7, 134 S. Ct. 2347 (2014). (Ans. 3-7).
Following the two-part Alice analysis, claim 1 is first examined to
determine if it is directed toward an abstract idea Claim 1 is drawn to an
abstract idea of inferring demographic characteristics of the user using
application of predetermined demographics inference rules stored by the
server to the personal information provided by the client. (Spec. 20,
Abstract).
Claim 1 describes a method for “characterizing a user of a remotely-
located computer.” Specifically, claim 1 recites “receiving, at a server,
personal information from the remotely-located computer, wherein the
personal information includes one or more items of data representing prior
user-initiated network activity of the remotely-located computer,” “for
each of the items of data of the personal information,” “determining that
one or more predetermined demographic characteristic inference rules
apply to the item of data,” “adjusting one or more demographic
characteristic inferences according to the applicable predetermined
demographic characteristic inference rules,” and “inferring one or more
characteristics of the user from the demographic characteristic inferences.”
App. Br. 16 (Claims App’x).
In other words, claim 1 recites a method in which:
demographic characteristics, and therefore interests and some
broad personality characteristics, of a user of a networked
computer are inferred by a remotely-located server from data
representing network activity of the user. Personal information
relating to network activity by the user's computer is
accumulated from the use of one or more browsers used on the
networked client computer and sent to a server. The server uses
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the network activity data to infer a demographic profile of the
user. This demographic profile allows the server to add
customized network content to pages sent at the request of the
client computer as well as to anticipate changes in the interests
of the user of the client networked computer.
(Spec. 2, | 6). As our reviewing court recently reiterated, “organizing and
accessing records through the creation of an index-searchable database,
includes longstanding conduct that existed well before the advent of
computers and the Internet,” and patent claims have been held ineligible for
reciting similar abstract concepts that merely collect, classify, or otherwise
filter data. Intellectual Ventures ILLC v. Erie Indemnity Co., Nos. 2016-
1128, 2016-1132, 2017 WL 900018, at *7 (Fed. Cir. March 7, 2017).
Moreover, the Federal Circuit has held “[wjithout additional limitations, a
process that employs mathematical algorithms to manipulate existing
information to generate additional information is not patent eligible.”
Digitech Image Techs., LLC v. Elecs. for Imaging, Inc., 758 F.3d 1344, 1351
(Fed. Cir. 2014). Thus, claim 1 is directed to an abstract concept of inferring
data from prior inferences or rules and is, therefore, directed to an abstract
idea.
The second part of the Alice analysis requires an examination of the
claim elements individually and as a whole to determine whether they
provide an “inventive concept” that is enough to transform the claim into
something significantly more than the abstract idea itself. See Alice, 134 S.
Ct. at 2355. With regard to claim 1, in addition to “receiving, at a server,
personal information from the remotely-located computer, wherein the
personal information includes one or more items of data representing prior
user-initiated network activity of the remotely-located computer,” the claim
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merely sets forth a generic server and data (personal information) received
from a remotely-located computer. The received data is then used for
“determining that one or more predetermined demographic characteristic
inference rules apply to the item of data,” “adjusting one or more
demographic characteristic inferences according to the applicable
predetermined demographic characteristic inference rules,” and “inferring
one or more characteristics of the user from the demographic characteristic
inferences.”
Taken individually, the remaining limitations recite broad routine
computer functions and amount to no more than the performance of well-
understood, routine, and conventional activities known to the data
processing industry. Thus, while the claims limit the idea of “determining
predetermined demographic characteristic inference rules” and “inferring
characteristics of a user,” the claimed computer functionality is merely
generic or conventional steps. Thus, evaluating these claimed elements
either individually or as a whole, claim 1 recites no more than routine
activities involving generic computer components and conventional
computer data processing activities to accomplish the well-known concept of
inferring demographic characteristics. As such, the remaining limitations
are abstract and fail to transform the claim into something sufficiently more
than an abstract idea.
Consequently, representative independent claim 1, and independent
claims 6, and 11, not separately argued, are directed to non-statutory subject
matter under 35 U.S.C. § 101.
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35 U.S.C. § 103
With respect to independent claims 1, 6, and 11, Appellant present
arguments to the claims together. (App. Br. 10). Therefore, we select
independent claim 1 as the representative claim for the group and will
address Appellant’s arguments thereto. 37 C.F.R. § 41.37(c)(l)(iv).
The Examiner finds the Wang reference teaches a majority of the
claimed invention, but not the claimed “adjusting one or more demographic
characteristic inferences according to the applicable predetermined
demographic characteristic inference rules” and that the Black reference
remedies the deficiency in the Wang reference. (Final Act. 7—13).
Appellant presents arguments to the Black reference. Appellant
contends:
However, Black does not disclose or suggest adjusting user
demographic characteristics, much less adjusting user
demographic characteristics according to predetermined
inference rules. At best, Black discloses classifying media
content and inferring or identifying demographic information
based on that media content. Black does not, however, make any
inferences on the users themselves or using demographic
information based on media content to infer or adjust a specific
user’s demographic characteristic profile.
(App. Br. 12—13). Appellant further contends:
However, none of these features - - even if allegedly disclosed in
Black — is directed to classifying demographic characteristics of
a specific user or making adjustments to user profiles based on
predetermined demographic rules. Rather, Black is directed to
classifying the content itself to identify a target audience in
general. Indeed, the usage information that users and advertisers
provide in Black is directed user behaviors related to ads
themselves, not to adjust a user’s demographic characteristics,
much less making any such adjustments according to any
predetermined demographic rules.
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(App. Br. 13).
The Examiner explains the correlation of the prior art teachings of the
Black reference to meet the claimed limitation. (Ans. 39-40). The
Examiner further maintains:
Since the criteria used to generate the learning model to infer
demographic information are essentially guidelines to aid the
system in inferring the demographic information, it is determined
that the criteria is the predetermined rules. Thus, contrary to
Appellant’s assertion, Black does indeed adjust one or more
demographic inferences according to the applicable
predetermined demographic characteristic inference rules.
(Ans. 40). The Examiner further explains the broadest reasonable
interpretation of the claim limitation.
During examination, the Examiner provided evidence
showing that the applied art (Black) disclosed predetermined
demographic characteristic inference rules. The term “rules” is
typically applied to mean “a principle or guideline governing
conduct, action, procedure, arrangement, etc.” in everyday
language. When given the broadest reasonable interpretation the
term predetermined demographic characteristic inference rules
reasonably comprises any guide, guideline, criteria, test, basis
used to infer demographic characteristics. The Examiner relied
on the broadest reasonable interpretation when rejecting the
claims in the previous office action. Thus, given the broadest
reasonable interpretation consistent with the specification in
construing the claimed invention, it is Examiner’s position that
the disclosure of Black teaches and at least suggests the disputed
limitation. For the reasons detailed above, the Examiner is not
persuaded that the independent claim is patentably
distinguishable over Wang in view of Black.
(Ans. 40-41).
Appellant does not respond to the Examiner’s further clarifications
regarding the teachings of the Black reference in the Reply Brief.
Consequently, Appellant has not shown error in the Examiner’s position
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regarding the Black reference as relied upon in the obviousness rejection of
representative independent claim 1.
Hindsight
Finally, Appellant contends that the Examiner’s rejection is based
upon hindsight reconstruction and information gleaned from Appellant’s
specification. We disagree with Appellant and find the Examiner has
provided a reasoned statement of motivation for the combination.
While we are fully aware that hindsight bias often plagues
determinations of obviousness, Graham v. John Deere Co. of Kansas City,
383 U.S. 1, 36 (1966), we are also mindful that the Supreme Court has
clearly stated that the “combination of familiar elements according to known
methods is likely to be obvious when it does no more than yield predictable
results.” KSRInt’l Co. v. Teleflex, Inc., 550 U.S. 398, 416 (2007).
This reasoning is applicable here. We agree with the Examiner that
[i]t would have been obvious to one of ordinary skill in the art at
the time of the invention to modify Wang to include the teachings
of Black, since the claimed invention is merely a combination of
old elements, and in the combination each element merely would
have performed the same functions as it did separately, and one
of ordinary skill in the art would have recognized that the results
of the combination were predictable.
(Final Act. 13). Thus, we find unavailing Appellant’s contention that the
Examiner has relied on impermissible hindsight reconstruction. That is,
given the breadth of Appellant’s claims, we are not persuaded that
combining the respective familiar elements of the cited references in the
manner proffered by the Examiner was “uniquely challenging or difficult for
one of ordinary skill in the art.” Leapfrog Enters., Inc. v. Fisher-Price, Inc.,
485 F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR, 550 U.S. at 418).
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Therefore, we find the Examiner’s proffered combination of familiar prior
art elements according to their established functions would have conveyed a
reasonable expectation of success to a person of ordinary skill having
common sense at the time of the invention.
Appellant relies upon the argument that neither the Wang nor the
Black reference teaches or discloses the claimed “adjusting one or more
demographic characteristic inferences according to the applicable
predetermined demographic characteristic inference rules” and that the
Examiner has relied upon paragraph 42 of Appellant’s Specification to
reconstruct the claimed invention. (App. Br. 14).
Thus, on this record, we are not persuaded of error regarding the
Examiner’s proffered reason for combining the cited references.
We disagree with Appellant and find the Examiner has explained the
reliance upon each of the individual references and the motivation for the
combination (Ans. 9-15), and Appellant has not presented persuasive
argument to the contrary. As a result, we find Appellant’s argument to be
unpersuasive of error in the Examiner’s factual findings or reasoned
conclusion of obviousness of representative independent claim 1 and its
respective dependent claims.
Because Appellant has not set forth separate arguments for
patentability of independent claims 6 and 11 and their respective dependent
claims, we group these claims as falling with representative independent
claim 1.
With respect to dependent claims 3,8, and 13, Appellant does not set
forth separate arguments for patentability of these claims. (App. Br. 14—15).
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Therefore, we group these claims as falling with representative independent
claim 1.
With respect to claims 15—18, Appellant relies upon the arguments
advanced with respect to independent claim 1. (App. Br. 15). Therefore, we
group these claims as falling with representative independent claim 1.
CONCLUSIONS
The Examiner did not err in rejecting claims 1—18 as directed to
non-statutory subject matter under 35 U.S.C. § 101, and the Examiner did
not err in rejecting claims 1—18 as obvious under 35 U.S.C. § 103.
DECISION
For the above reasons, we sustain the Examiner’s rejections of claims
1-18 under 35 U.S.C. §§ 101 and 103.
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
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