Ex Parte Goyal et al

Patent Trial and Appeal Board

Nov 27, 2018

11828789 (P.T.A.B. Nov. 27, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO.
11/828,789
149109 7590
EGL/Excalibur
P.O. Box 10395
Chicago, IL 60610
FILING DATE FIRST NAMED INVENTOR
07/26/2007 Prabhakar Goyal
11/27/2018
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.
12729/301 (Y02349USOO) 9953
EXAMINER
BRANDENBURG, WILLIAM A
ART UNIT PAPER NUMBER
3681
MAIL DATE DELIVERY MODE
11/27/2018 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PRABHAKAR GOYAL and JATIN PATEL
Appeal2017-007297
Application 11/828,789 1
Technology Center 3600
Before ERIC B. CHEN, MATTHEW R. CLEMENTS, and
SCOTT E. BAIN, Administrative Patent Judges.
CLEMENTS, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
Final Rejection of claims 1, 4--12, 14--20, and 22. Claims 2, 3, 13, and 21
are canceled. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 Appellants identify the real party in interest as "Yahoo! Inc." App. Br. 3.
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STATEMENT OF THE CASE
Appellants' invention scores the effectiveness of rich media
advertising. Spec. ,r,r 1-2. A rich media advertisement (RMA) tracks
interactions with the online viewer, e.g., printing of a gift card or
playing/pausing of a video. Id. at ,r 31. The invention tracks and scores
RMA interactions for an advertising campaign. Id. Each RMA earns a
weighted score Wj*Nj*Dj for its detected interactions: the product of a
weight Wj for the interaction, the amount Nj of interaction, and a weight Dj
for the brand. Id. at ,r,r 31, 34, 36.
The RMAs are organized into buckets, e.g., by types of interaction.
Id. at ,r,r 32, 34, 36. Each bucket earns a bucket brand index (BBI) of
rWj*N/Dr the sum of the weighted scores for included RMAs. Id. Each
bucket also has a weight Wi ( separate from the weighted scores) and
weighted bucket value Wi*BBL. Id. at ,r 54. An advertising campaign earns
an overall brand index (OBI) of rWi*BBL: the sum of all weighted bucket
values. Id. at ,r 32.
Claims 1, 6, 10, and 17 are independent. Claim 1 is reproduced below
and is the representative claim for the sole rejection on appeal (listed infra).
See 37 C.F.R. 4I.37(c)(l)(iv) (representative claims).
1. A method for identifying the effectiveness of rich media
advertising campaign using a brand index (BI), the method
executable by an electronic device having a processor and
memory, the method comprising:
for each of a plurality of rich media advertisements associated
with a common interactive rich media advertising campaign:
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categorizing, with the processor, advertising exposure of
a rich media advertisement and an associated user
interaction into at least one category, wherein each
category has a corresponding category bucket stored in
the memory;
assigning, with the processor, a score to the
advertisement exposure and associated user interaction
and saving the score into a category bucket associated
with a category of the advertisement and associated user
interaction;
assigning, with the processor, a bucket weight to each category
bucket;
calculating, with the processor, a bucket brand index (BBi) for
each category bucket, by tracking a frequency of occurrence of
the rich media advertisements associated with a bucket and
calculating the BBi for the bucket as a product of the bucket
score and the tracked frequency of each advertisement exposure
and associated user interaction associated with the bucket;
calculating, with the processor, a weighted sum of the plurality
of BB Is to generate an overall brand index (BI) for the
advertising campaign by summing the bucket weight of each
bucket times the BBi of each respective bucket; and
communicating the BI of the advertising campaign to an
advertiser or publisher as an indication of monetization value of
the rich media advertisement campaign.
App. Br. 12 (Claims Appendix).
THE REJECTION
Claims 1, 4--12, 14--20, and 22 stand rejected under 35 U.S.C. § 101
as directed to patent ineligible subject matter. Final Act. 3---6.
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PRINCIPLES OF LAW
The Supreme Court has long held that "[l]aws of nature, natural
phenomena, and abstract ideas are not patentable." Alice Corp. Pty. Ltd. v.
CLS Bankint'l, 134 S. Ct. 2347, 2354 (2014) (quoting Assoc.for Molecular
Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 589-90 (2013)). The
"abstract ideas" category embodies the longstanding rule that an idea, by
itself, is not patentable. Alice Corp., 134 S. Ct. at 2354--55 (quoting
Gottschalkv. Benson, 409 U.S. 63, 67 (1972)).
In Alice, the Supreme Court set forth an analytical "framework for
distinguishing patents that claim laws of nature, natural phenomena, and
abstract ideas from those that claim patent-eligible applications of those
concepts." Id. at 2355. The first step in the analysis is to "determine
whether the claims at issue are directed to one of those patent-ineligible
concepts," such as an abstract idea. Id. There is no definitive rule to
determine what constitutes an "abstract idea." Rather, the Federal Circuit
has explained that "both [it] and the Supreme Court have found it sufficient
to compare claims at issue to those claims already found to be directed to an
abstract idea in previous cases." Enfish, LLC v. Microsoft Corp., 822 F.3d
1327, 1334 (Fed. Cir. 2016); see also Amdocs (Israel) Ltd. v. Openet
Telecom, Inc., 841 F.3d 1288, 1294 (Fed. Cir. 2016) (explaining that, in
determining whether claims are patent-eligible under § 101, "the decisional
mechanism courts now apply is to examine earlier cases in which a similar
or parallel descriptive nature can be seen-what prior cases were about, and
which way they were decided"). The Federal Circuit also noted that
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"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." Amdocs, 841 F.3d at 1294 n.2 (internal citation omitted).
If the claims are directed to a patent-ineligible concept, the second
step in the analysis is to consider the elements of the claims "individually
and 'as an ordered combination' to determine whether [there are] additional
elements [that] 'transform the nature of the claim' into a patent-eligible
application." Alice, 134 S. Ct. at 2355 (quoting Mayo Collaborative Servs.
v. Prometheus Labs., Inc., 566 U.S. 66, 79, 78 (2012)). In other words, the
second step is to "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. (quoting Mayo, 566 U.S. at 73). Mere use of
computers, even in conjunction with other hardware, does not alone
transform an abstract idea to significantly more. See, e.g., Content
Extraction & Transmission LLC v. Wells Fargo Bank, 776 F.3d 1343, 1347
(Fed. Cir. 2014) (patent-ineligible claims requiring a computer and scanner);
CLS Bank Int'! v. Alice Corp. Pty., 717 F.3d 1269, 1286 (Fed. Cir. 2013)
("[S]imply appending generic computer functionality to lend speed or
efficiency ... does not meaningfully limit claim scope for purposes of patent
eligibility."), aff'd by Alice.
EXAMINER'S FINDINGS
The Examiner finds claim 1 is "directed to a system and method for
calculating advertising scores and optimizing ad campaigns, which is
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considered an abstract idea using a fundamental economic practice and
simply a series of mathematical formulations and/ or relationships." Final
Act. 4. As to the claim elements, the Examiner adds: "the brand index (BI)
amounts to nothing more than mere mathematical relationships and/or
formulations calculated as part of routine and conventional operations" (id.
at 6); and "the use of a generically recited data processor for implementing
the allocation and communication links ... is considered generic/routing
computer technology" (id. at 5). The Answer summarizes: "[W]hat the
[claim] is describing is merely the resultant of a mathematical
operation/calculation performed to calculate a brand index (BI) .... "The
'communicating' is ... extrasolution activity, and everything prior ... is
considered abstract." Ans. 5.
STEP ONE (ABSTRACT IDEA)
Appellants argue claim 1 recites more than a fundamental economic
practice and mathematical formulations because "the method includes a
concrete communication to an advertiser in the form of a brand index. This
is not mere post solution activity, as the purpose of the claimed method is to
communicate the effectiveness of the rich media campaign to an advertiser
or publisher." Id. at 8. We are not persuaded of error.
As an initial matter, we do not agree that the brand index or the
communication of a brand index is "concrete." The brand index is merely a
number intended to represent the effectiveness of an ad. We agree with the
Examiner that
[r]egardless of what type of ads are being displayed or
monitored, how valuable those ads may or may not be to the
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advertisers and/or publishers, and whether a different user
activity is monitored to determine effectiveness, the claimed
subject matter is still simply directed to calculating advertising
scores that represent effectiveness values, and at best the
purported solutions idea/business method itself.
Ans. 3. The claimed communicating merely collects and presents
information. See Elec. Power Grp. LLC v. Alstom S.A., 830 F.3d 1350, 1353
(Fed. Cir. 2016) ("collecting information, analyzing it, and displaying
certain results of the collection and analysis"); Affinity Labs of Tex., LLC v.
DIRECTV, LLC, 838 F.3d 1253, 1258 (Fed. Cir. 2016) ("communicating
regional broadcast content to an out-of-region recipient"); In re Salwan, 681
F. App'x 938, 941 (Fed. Cir. 2017) (nonprecedential) ("storing,
communicating, transferring, and reporting patient health information");
Cyberfone Sys., LLC v. CNN Interactive Grp., Inc., 558 F. App'x 988, 992
(Fed. Cir. 2014) (nonprecedential) ("using categories to organize, store, and
transmit information").
Even assuming the claimed communicating of the brand index was
"concrete," it embodies the Supreme Court's following caution as to
post-solution activity:
The notion that post-solution activity, no matter how
conventional or obvious in itself, can transform an unpatentable
principle into a patentable process exalts form over substance. A
competent draftsman could attach some form of post-solution
activity to almost any mathematical formula; [ e.g.,] a final step
indicating that the formula, when solved, could be usefully
applied[.]
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Parker v. Flook, 437 U.S. 584, 590 (1978). Here, like in Parker, the
claimed communicating is a final step performed after solving the equations
that generate the index numbers (BBis and OBI).
Appellants also argue the Examiner has, in characterizing the claimed
method, assessed claim 1 at a "level of abstraction ... untethered from the
language of the claims." App. Br. 9. Specifically, Appellants argue that
"[t]he claims are not directed to all forms of calculating a score or all forms
of optimizing advertisement campaigns, but instead are specifically directed
to a particular way of identifying the effectiveness of the campaign." Id.
To the extent Appellants are arguing that the Examiner over-
generalized the claims, we are not persuaded because the Examiner maps the
claimed calculations and input/output data-i.e., maps all claim elements
prior to the post-solution communicating-respectively to the abstract idea
and its field of use. See supra, "Examiner's Findings" section. The
Examiner thus "articulate[ s] what the claims are directed to with enough
specificity to ensure the step one inquiry is meaningful." Thales Visionix
Inc. v. United States, 850 F.3d 1343, 1347 (Fed. Cir. 2017).
To the extent Appellants are arguing preemption, this argument is not
persuasive. "While 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). Importantly, the preemption concern is addressed by the two-part test
considered above. See id. After all, every patent "forecloses ... future
invention" to some extent, Mayo, 566 U.S. 79-78, and, conversely, every
claim limitation beyond those that recite the abstract idea limits the scope of
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the preemption. See Ariosa, 788 F.3d at 1379 ("The Supreme Court has
made clear that the principle of preemption is the basis for the judicial
exception to patentability .... For this reason, questions on preemption are
inherent in and resolved by the§ 101 analysis.").
For the foregoing reasons, we are not persuaded the Examiner erred in
step one of Alice.
STEP TWO (INVENTIVE CONCEPT)
Turning to the second step of the Alice inquiry, Appellants argue the
claims are directed to a specific improvement to computer functionality,
specifically "translat[ing] rich media exposure and user interaction into [a]
brand effectiveness [score]." App. Br. 9. We are not persuaded. As the
Examiner finds, converting "rich media exposure" (product of the
interaction weight Wj, interaction amount Nj, and brand weight Dj) into a
"brand effectiveness score" (BBI and OBI) is merely a field-of-use context
of the abstract idea. Ans. 3, 5, 10. That is, these claim elements specify the
RMA attributes and observations (field of use) that are weighted and then
converted to index numbers (abstract idea). See Amdocs, 841 F.3d at 1311
("The Pythagorean Theorem cannot be made eligible by confining its use to
existing surveying techniques[.] Flook, 437 U.S. at 590[.]"). We agree with
the Examiner that "the claimed subject matter has provided no actual
improvement to the machine or technology itself, but at best [] might result
in greater revenue-based opportunities and thus, [is] merely a non-technical
improvement to the abstract idea itself." Ans. 3--4.
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Appellants further argue "the process of computing a brand index is
wholly novel and unconventional, as the PTO has conceded by not rejecting
the claims in view of the prior art." App. Br. 9; see also id. at 7 ("[U]ser
interaction with a rich media advertisement ... is not captured in any current
monetization model."). This argument is not persuasive because Appellants
have not identified a novel claim feature separate from the abstract idea. See
Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1151 (Fed. Cir.
2016) ("[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.").
Appellants also argue the Examiner improperly distills the issue of
inventive concept to a question of whether claim 1 recites an "improvement
to the computer itself." Reply Br. 3. In particular, citing McRO, Inc. v.
Bandai Namco Games Am. Inc., 837 F.3d 1299 (Fed. Cir. 2016), Appellants
contend an inventive concept "can be an improvement in the function
implemented by the computer." Id. We are not persuaded because McRO 's
holding does not extend to all improvements of a computer-implemented
function. As the court explains at length, McRO 's invention is
patent-eligible because it unconventionally automates a function. 837 F.3d
at 1313-15. In Alice's terminology, McRO 's invention thus improved the
"technological process" of automating a function-not (merely) the
function. Alice, 134 S. Ct. at 2358. Appellants' claim 1, in contrast, at best
adds a new function-i.e., calculation ofRMA effectiveness-to the field of
the invention, as opposed to unconventionally automating the calculation of
that function.
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DECISION
For the foregoing reasons, we affirm the Examiner's decision
rejecting claims 1, 4--12, 14--20, and 22.
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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