Ex Parte Greene et al

Patent Trial and Appeal Board

Apr 18, 2018

12062698 (P.T.A.B. Apr. 18, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/062,698 04/04/2008 Daniel H. Greene
35699 7590 04/20/2018
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-20071058-US-NP 1790
EXAMINER
POLLOCK, GREGORY A
ART UNIT PAPER NUMBER
3695
NOTIFICATION DATE DELIVERY MODE
04/20/2018 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
Exparte DANIEL H. GREENE, KURT E. PARTRIDGE,
and JAMES M. A. BEGOLE
Appeal2016-007319
Application 12/062,698
Technology Center 3600
Before MURRIEL E. CRAWFORD, AMEE A. SHAH, and
ROBERT J. SILVERMAN, Administrative Patent Judges.
SHAH, Administrative Patent Judge.
DECISION ON APPEAL 1
The Appellants2 appeal under 35 U.S.C. § 134(a) from the Examiner's
final decision rejecting claims 1-21. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM.
1 Throughout this Decision, we refer to the Appellants' Appeal Brief
("Appeal Br.," filed Nov. 12, 2015), Reply Brief ("Reply Br.," filed July 19,
2016), and Specification ("Spec.," filed Apr. 4, 2008, amended Jan, 28,
2011), and to the Examiner's Answer ("Ans.," mailed May 23, 2016) and
Final Office Action ("Final Act.," mailed June 12, 2015).
2 According to the Appellants, the real party in interest is "Palo Alto
Research Center Incorporated." Appeal Br. 1.
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Application 12/062,698
STATEMENT OF THE CASE
The Appellants' invention "generally relates to advertising systems"
and particularly "to an activity-based advertising system that facilitates
identification of customer indeterminacy." Spec. i-f 3.
Claims 1, 8, and 15 are the independent claims on appeal. Claim 1 is
illustrative of the subject matter on appeal and is reproduced below (with
added lettered bracketing for reference):
1. A method comprising:
[(a)] obtaining, by a computer from a mobile computing
device comprising one or more sensors, activity data generated
by the one or more sensors for a customer including location and
time data associated with the consumer's current activity;
[(b )] obtaining historical activity information associated
with the customer's current activity;
[ ( c)] constructing a set of historical trajectories for the
customer from the historical activity information associated with
the customer's current activity, wherein a respective historical
trajectory includes a sequence of two or more venues along a
location-time trace that represents an activity pattern of the
customer;
[ ( d)] identifying, by the computer, an indeterminacy point
among the historical trajectories, wherein the historical
trajectories share a common activity pattern before the
indeterminacy point, and diverge after the indeterminacy point;
[ ( e)] determining, by the computer, one or more receptive
opportunities based on the indeterminacy point;
[ ( t)] selecting an advertisement for the customer based on
the indeterminacy point and the receptive opportunities; and
[ (g)] presenting the advertisement to the customer during
a respective receptive opportunity prior to the customer reaching
the indeterminacy point.
Appeal Br. 45 (Claims App.).
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REJECTIONS
Claims 1-21 stand rejected under 35 U.S.C. § 101 as being
directed to non-statutory subject matter. Final Act. 2.
Claims 1-21 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Anupam (US 7,756,534 B2, iss. July 13, 2010) and
Fitzpatrick (US 2008/0200153 Al, pub. Aug. 21, 2008). Id. at 4.
ANALYSIS
Non-Statutory Subject Matter - 3 5 U.S. C. § 101
The Appellants argue claims 1-21 as a group. See Appeal Br. 12. We
select claim 1 as representative of the group; claims 2-21 stand or fall with
claim 1. See 37 C.F.R. § 41.37(c)(l)(iv).
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. CLS Bankint'l, 134 S. Ct. 2347, 2354 (2014) (quotingAss'nfor
Molecular Pathology v. Myriad Genetics, Inc., 133 S. Ct. 2107, 2116
(2013)).
The Supreme Court in Alice reiterated the two-step framework, set
forth previously in Mayo Collaborative Services v. Prometheus
Laboratories, Inc., 566 U.S. 66, 78-79 (2012), "for distinguishing patents
that claim laws of nature, natural phenomena, and abstract ideas from those
that claim patent-eligible applications of those concepts." Alice Corp., 134
S. Ct. at 2355. The first step in that analysis is to "determine whether the
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claims at issue are directed to one of those patent-ineligible concepts." Id.
If so, the second step is to consider the elements of the claims "individually
and 'as an ordered combination'" to determine whether the additional
elements "'transform the nature of the claim' into a patent-eligible
application." Id. (citing Mayo, 566 U.S. 79, 78).
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. (alteration in original) (quoting
Mayo, 566 U.S. at 72-73). The Court acknowledged in Mayo, that "all
inventions at some level embody, use, reflect, rest upon, or apply laws of
nature, natural phenomena, or abstract ideas." Mayo, 566 U.S. at 71. 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 the abstract idea, and merely invoke generic processes and
machinery. See Enfzsh, LLC v. Microsoft Corp., 822 F.3d 1327, 1336 (Fed.
Cir. 2016).
The Appellants first contend that the Examiner's rejection is in error
because the Examiner "failed to meet the burden required to establish a
prima facie case of subject matter ineligibility." Appeal Br. 11, 12.
Specifically, the Appellants point to the 2014 INTERIM GUIDANCE ON PATENT
SUBJECT MATTER ELIGIBILITY, 79 Fed. Reg. 74618 (Dec. 16, 2014)
("Interim Guidance"), the JULY 2015 UPDATE: SUBJECT MATTER ELIGIBILITY
("Update"), issued after the mailing date of the Final Office Action, and the
May 19, 2016 Memorandum entitled "Recent Subject Matter Eligibility
Decisions (Enfzsh, LLC v. Microsoft Corp. and TL! Communications LLC v.
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A. V. Automotive, LLC)" ("Memo"). See id. at 12-14; Reply Br. 12-13. We
disagree.
Here, in rejecting the pending claims under § 101, the Examiner
analyzes the claims using the Mayo/Alice two-step framework. Specifically,
the Examiner looks to the intrinsic evidence of the claims and determines
that the claims are directed to the abstract idea of "identifying indeterminacy
for activity-based advertising." Ans. 3--4; see also Final Act. 2. The
Examiner cites judicial decisions and compares the idea to those found to be
abstract in those decisions. Ans. 4, 6-7; cf Appeal Br. 13, 14 ("the
Examiner does not compare the claims to concepts already found to be
abstract ideas (e.g., fundamental economic practices) in past judicial
decisions"). The Examiner further determines that the additional elements
of the claims, taken alone and as an ordered combination, do not ensure that
the claims amount to significantly more than the abstract idea. Ans. 5-7; see
also Final Act. 3. The Examiner, thus, has clearly followed the guidelines. 3
And, the Examiner has clearly articulated the reasons for the rejection and
has notified Appellants of the reasons for the rejection "together with such
information and references as may be useful in judging of the propriety of
continuing the prosecution of [the] application." 35 U.S.C. § 132. In doing
so, the Examiner set forth a prima facie case of unpatentability. See In re
Jung, 637 F.3d 1356, 1362 (Fed. Cir. 2011); Chester v. Miller, 906 F.2d
1574, 1578 (Fed. Cir. 1990) (Section 132 "is violated when a rejection is so
3 We further note that the MANUAL OF PATENT EXAMINING PROCEDURE
("MPEP") and guidelines are not legal requirements. Cf In re Fisher, 421
F.3d 1365, 1372 (Fed. Cir. 2005) ("The MPEP and Guidelines 'are not
binding on this court'") (internal citations omitted).
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uninformative that it prevents the applicant from recognizing and seeking to
counter the grounds for rejection").
Turning to the first step of the Mayol Alice framework, "the 'directed
to' inquiry applies a stage-one filter to claims, considered in light of the
specification, based on whether 'their character as a whole is directed to
excluded subject matter."' Enfish, 822 F.3d at 1335. Here, the Examiner
looks to the language of the claims and determines that the claims are
directed to "identifying indeterminacy for activity-based advertising."
Ans. 3--4; Final Act. 2.
With respect to computer-enabled claimed subject matter, it can be
helpful to determine whether "the claims at issue ... can readily be
understood as simply adding conventional computer components to well-
known business practices" or not. Enfish, 822 F.3d at 1338. See also
Affinity Labs of Tex., LLC v. DIRECTV, LLC, 838 F.3d 1253, 1257 (Fed.
Cir. 2016). In Enfish, for example, the court noted that "[s]oftware can
make non-abstract improvements to computer technology just as hardware
improvements can[.]" Enfish, 822 F.3d at 1335. The court put the question
as being "whether the focus of the claims is on [a] 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." Id. at 1335-36. In Enfish, the court found that the "plain focus of the
claims" there was on "an improvement to computer functionality itself, not
on economic or other tasks for which a computer is used in its ordinary
capacity." Id. at 1336.
In this case, the claims as a whole are focused on presenting targeted
advertisements. The Background section of the Specification discusses the
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problem that Internet advertising "still cannot be closely tailored to human
activities." Spec. i-f 5. The invention addresses this problem in delivering
"[a]ctivity-based advertising [that] can better target a customer's needs and
dynamically adjust to a customer's activity." Id. i-f 6. Claim 1 provides for a
method comprising the steps of obtaining, by a computer, activity data from
a sensor of a device, obtaining historical data, constructing trajectories, i.e.,
data, from the activity and historical data, identifying, by the computer, data
of an indeterminacy point from the trajectory data, determining, by the
computer, data of receptive opportunities based on the indeterminacy data,
selecting advertisement data based on the indeterminacy and opportunity
data, and presenting the historical data at a specific time. See Appeal Br. 45
(Claims App.). The Specification describes "an exemplary computer system
that facilitates an advertising system with customer indeterminacy
identification" (Spec. i-f 62, Fig. 5) as including a processor, a memory, and a
storage device (id. i-f 63), i.e., a generic computer.
In light of Specification's description of the problem and solution, the
purported advance over the prior art by the claimed invention is a way to
present better targeted advertising based on an analysis of specific types of
data, i.e., indeterminacy and opportunity data. This is the heart of the
invention and the "character as a whole" of the claim. See Enfzsh, 822 F.3d
at 1335. The Appellants similarly assert that "the claimed invention is
directed to analyzing a person's behavior and determining an opportune time
for presenting a message to the person." Reply Br. 15. In that context,
claim 1 is directed to selecting and presenting an advertisement based on the
obtaining, constructing, identifying, and determining of data, a method of
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organizing human activity. 4 The claims here are akin to ones our reviewing
court has deemed abstract in Intellectual Ventures I LLC v. Capital One
Bank (USA), 792 F.3d 1363, 1369-70 (Fed. Cir. 2015) (customizing and
tailoring web page content based on navigation history and known user
information), Elec. Power Grp. LLC v. Alstom S.A., 830 F.3d 1350, 1353-54
(Fed. Cir. 2016) (collecting information and "analyzing information by steps
people go through in their minds, or by mathematical algorithms, without
more, ... [are] essentially mental processes within the abstract-idea
category"), and Affinity Labs, 838 F.3d at 1271 (customizing a user interface
to have targeted advertising based on user information). Here, the claim
involves nothing more than obtaining, constructing, and analyzing data of a
specific content and/or from a specific source, and presenting content based
on the analysis, without any particular inventive technology- an abstract
idea. See Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1354 (Fed.
Cir. 2016). As such, we find unpersuasive the Appellants' argument that the
claim is not directed to an abstract idea because it "do[ es] not recite any of
the case law examples." Appeal Br. 14.
We also find unpersuasive the Appellants' argument that the claim is
not directed to an abstract idea because, like Enfzsh, "the focus of the claim[]
is on an improvement to computer functionality, not on economic or other
tasks" and "the claimed invention achieves other benefits over conventional
4 We note that "[a]n abstract idea can generally be described at different
levels of abstraction." Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1240
(Fed. Cir. 2016). The Board's "slight revision of its abstract idea analysis
does not impact the patentability analysis." Id. at 1241.
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advertising communication and delivery technology." 5 Reply Br. 9; see also
id. at 10-11. The claims at issue in Enfish were directed to a specific type of
data structure, i.e., a self-referential table for a computer database, designed
to improve the way a computer carries out its basic functions of storing and
retrieving data. Enfish, 822 F.3d. at 1335-36. There, in rejecting a§ 101
challenge, the court held that "the plain focus of the claims is on an
improvement to computer functionality itself, not on economic or other tasks
for which a computer is used in its ordinary capacity." Id. at 1336. The
Appellants have not adequately explained here how the court's holding in
Enfish impacts the present analysis under the Mayo/Alice framework. For
example, the Appellants do not point to anything in the claim that resembles
the inventive self-referential data structure at issue in Enfish. The
Appellants also do not direct our attention to anything in the Specification to
indicate that the invention provides an improvement in the computer's
technical functionality. The Specification provides that constructing
trajectories, identifying a point, and determining opportunities are performed
by a generic computer operating in its ordinary capacity. See Spec. i-fi-162-
66. The technical way the computer performs is not improved; rather, the
claim improves the tasks of constructing, identifying, and determining data
for which the computer is used in its ordinary capacity. The steps of
obtaining historical information, constructing trajectories, selecting an
advertisement, and presenting an advertisement are not claimed as being
performed by a computer. Appeal Br. 45 (Claims App.). The benefits are
not technical or technological improvements, but rather, are business
5 The Appellants may present this new argument based on a recent relevant
decision of the Federal Circuit issued after the Appeal Brief.
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benefits in "better target[ing] a customer's needs and dynamically
adjust[ing] to a customer's activity." Spec. i-f 6.
We further find unpersuasive the Appellants' arguments that claim 1
is not directed to an abstract idea because it is "directed to a specific
implementation of a solution of a problem in the software arts." Reply.
Br. 12. As discussed above, the problem the invention addresses is a
problem of tailoring advertising content to a user's activities (see Spec. i-f 5),
not a technical problem or one "specifically arising in the realm of computer
networks" (DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1257
(Fed. Cir. 2014)). See Intellectual Ventures I, 792 F.3d 1363, 1371
(tailoring content based on user activity did not address problems unique to
the Internet).
Turning to the second step of the Alice analysis, we adopt and find
supported the Examiner's determination that the claim limitations, taken
individually or as an ordered combination, do not recite an inventive
concept. See Final Act. 3; Ans. 5-7. We are unpersuaded by the
Appellants' arguments that the claim limitations recite significantly more
than the abstract idea. See Appeal Br. 15-19; Reply Br. 13-17.
We find unpersuasive the Appellants' argument that "the claimed
invention is directed to patentable subject matter because the claimed
computer system implements a process designed to solve a technological
problem in 'conventional industry practice,' not merely because the claimed
invention is implemented on a computer." Appeal Br. 16. As discussed
above, the claim does not address a technological problem.
Similarly to Intellectual Ventures I (792 F.3d at 1370-71), "here there
is no inventive concept that would support patent eligibility." The steps of
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obtaining, constructing, identifying, and determining data, and selecting and
presenting an advertisement based on the analysis are basic, purely
conventional functions of a computing device. See Alice, 134 S. Ct. at 2359.
The Specification supports this view. As the Examiner notes (Ans. 5), the
Specification discusses sensors only at paragraph 56 and provides that the
sensors that obtain data are generic context sensors used in a conventional
manner. Cf Thales Visionix Inc. v. U.S., 850 F.3d 1343, 1348--49 (Fed. Cir.
201 7) (claims used inertial sensors in a non-conventional manner, as
described in the Specification, specified a particular configuration of
sensors, and used raw data from sensors to more accurately calculate the
position, and thus, were not directed to an abstract idea). The data from the
sensors are not used to perform a mechanical step such as delivering fuel or
adjusting engine parameters (Reply Br. 15), but to determine and present
data using conventional technology. See Elec. Power, 830 F.3d at 1355.
The computer that performs the steps of obtaining activity data, identifying
an indeterminacy point and determining opportunities is a generic computer.
See Spec. i-f 63. The steps of obtaining historical information, constructing
trajectories, selecting an advertisement, and presenting an advertisement are
not claimed as being performed by a computer. Appeal Br. 45. There is no
further specification of particular technology for performing the steps. See
Affinity Labs, 838 F.3d at 1263; see also Enfzsh, 822 F.3d. at 1336.
We further find unpersuasive the Appellants' argument that the claim
"goes beyond the mere concept of simply retrieving and combining data
using a computer" similar to claims that have "been found to recite patent
eligible subject matter." Appeal Br. 17. In Research Corporation
Technologies, Inc. v. Microsoft Corporation, 627 F.3d 859, 868---69 (Fed.
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Cir. 2010), the invention "present[ ed] functional and palpable applications in
the field of computer technology" with "specific applications or
improvements to technologies in the marketplace." There are no such
improvements here.
Based on the foregoing, we sustain the Examiner's rejection under
35 U.S.C. § 101ofclaim1 and of claims 2-21, which fall with claim I.
Obviousness - 3 5 U.S. C. § 103 (a)
The Appellants contend that the Examiner's rejection of independent
claims 1, 8, and 15 is in error because, in relevant part, the prior art does not
teach "identifying an indeterminacy point among historical trajectories and
presenting an advertisement to a customer during a respective receptive
opportunity prior to the customer reaching the indeterminacy point," as
recited in limitations ( d) and (g) of claim 1 and similarly recited in claims 8
and 15. Appeal Br. 24; Reply Br. 17. We agree.
The Examiner finds, in relevant part, that although "Anupam does not
use the same terminology as the present application and specifically does not
teach the use of the term 'indeterminacy point'" (Final Act. 5), Anupam
teaches identifying an indeterminacy point at column 20, line 51 through
column 22, line 43 and claim 1 (id. at 4). The Examiner acknowledges that
the Specification defines "indeterminacy" as "a branching or diverging point
in a customer's activity pattern, where he is undecided about the next
activity" (id. at 5) and broadly interprets this definition as "any location
where the user can make a choice as to what activity is available from which
to choose from" (id.). Based on this interpretation, the Examiner finds that
"the terminology of the claims do not distinguish themselves from the prior
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art presented." Id. The Examiner further finds that Fitzpatrick also teaches
identifying an indeterminacy point at paragraph 56 and Figure 3. Id.
We agree with the Appellants that "[t]he Examiner's interpretation of
the claimed 'indeterminacy point' is incorrect" because "the claims are
explicit that the indeterminacy point is a point within the historical
trajectories being analyzed ... [and] is a point in which these historical
trajectories 'diverge."' Appeal Br. 28. As noted above, the Specification
provides a specific definition for "indeterminacy" as "a branching or
diverging point in a customer's activity pattern, where he is undecided about
the next activity." Spec. i-f 34. The claims further define that this branching
or diverging point occurs among the historical trajectories constructed for
the customer. Appeal Br. 45, 47, 49 (Claims App.). As such, the claims
require more than identifying "any location" where the user can make a
choice; rather, they require identifying a specific point where the trajectories
diverge from a common activity pattern.
Anupam discloses an invention for providing location-based services.
Anupam, Abstract, claim 1. The relied on portions of columns 20 and 21 of
Anupam disclose a trajectory method based on the availability of velocity
information of speed and direction of motion obtained from consecutive
location measurements. Id. at col. 20, 11. 51-55. The velocity is estimated
based on a conventional forward lookup approach (FL) or from the
measurement result of consecutive look-ups. Id. at col. 20, 11. 55---64. The
center of a user's location at the present time can be estimated based on the
measurement coordinate at a specific time and the velocity between two
times. Id. at col. 21, 11. 1-12. Anupam's claim 1 provides for a method
whereby delivery of a message to a given one of a user's mobile devices is
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controlled based on user movement statistics generated based on location
and profile information.
Fitzpatrick discloses an invention "for code triggered information
querying and serving on mobile devices based on profiles." Fitzpatrick,
Abstract. Paragraph 56, relied on by the Examiner, discloses determining
space-time trajectories for various trips. Based on the trajectories and the
user's profile, an advertisement can be supplied for a particular location on
the route. Id. i-f 56.
However, the Examiner has not adequately explained, to make it clear
to one of ordinary skill in the art, how Anupam's determination of a center
of the user's location at a present time meets the claimed identification of a
point in which the trajectories diverge from a common pattern. See Appeal
Br. 27-28; Reply Br. 18-23. Further, the Examiner has not adequately
explained how Fitzpatrick identifies a point where the determined
trajectories diverge. As such, we agree with the Appellants that the
Examiner has not adequately shown how the combination of Anupam and
Fitzpatrick teaches identifying an indeterminacy point among the historical
trajectories, as required by the claims. See Appeal Br. 24.
Thus, we do not sustain the Examiner's rejection under 35 U.S.C.
§ 103(a) of independent claims 1, 8, and 15, and of dependent claims 2-7,
9-14, and 16-21.
DECISION
The Examiner's rejection of claims 1-21under35 U.S.C. § 101 is
AFFIRMED.
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The Examiner's rejection of claims 1-21 under 35 U.S.C. § 103(a) is
REVERSED.
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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