Ex Parte Jain et al

Board of Patent Appeals and Interferences

Jun 13, 2012

10291169 (B.P.A.I. Jun. 13, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte VIVEK JAIN and RAVI KOTHARI
____________

Appeal 2011-000637
Application 10/291,169
Technology Center 3600
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Before: MURRIEL E. CRAWFORD, JOSEPH A. FISCHETTI, and
MICHAEL W. KIM, Administrative Patent Judges.

KIM, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2011-000637
Application 10/291,169

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STATEMENT OF THE CASE
This is an appeal from the final rejection of claims 1-2, 6-7, 17-20, 31-
32, 36, 39-42, 47, and 57-59. We have jurisdiction to review the case under
35 U.S.C. §§ 134 and 6 (2002).
The claimed invention is directed to the automatic validation of the
results of surveys (Spec. 1:4-6). Claim 1, reproduced below, is further
illustrative of the claimed subject matter.
1. A computer-implemented method, embodying a
computer program of instructions executable by a computer, of
validating results of a first explicit online survey by a validation
experiment administered as a second implicit online survey,
said computer performing a method comprising:
identifying, by a computer, a subset of potential
conclusions from a set of potential conclusions that are derived
from results of the first explicit online survey for validation,
wherein:
said set of potential conclusions is derived from
any of rule induction, pattern recognition, and regression
analysis applied to features of said first explicit online
survey to provide a validation metric, said features
including products and key phrases;
said subset of potential conclusions is determined
by one of an outside agent and predefined rules; and
a participant's awareness of his or her participation
in an online survey defines an explicit online survey;
defining, by said computer, a group of participants for
said second implicit online survey based on user profiles to
validate said subset of potential conclusions from said first
explicit online survey,
wherein a participant's unawareness of his or her
participation in an online survey defines an implicit
online survey;
validating, by said computer, said subset of potential
conclusions by comparing said validation metric for each said
subset of potential conclusions from said first online explicit
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survey to a corresponding validation metric derived from a
corresponding subset of potential conclusions derived from said
second implicit online survey; and
reporting, by said computer, said comparing of said
validation metric for each of said subset of potential
conclusions from said first online explicit survey to a
corresponding validation metric derived from a corresponding
subset of potential conclusions derived from said second
implicit online survey as results of a validation experiment,
wherein results are presented to a user after
aggregation and summarization of said results.

Claims 1, 2, 6, 7, 17-19, 41, 42, 47, and 57-59 stand rejected under 35
U.S.C. § 101 for failing to recite statutory subject matter; and claims 1-2, 6-
7, 17-20, 31-32, 36, 39-42, 47, and 57-59 stand rejected under 35 U.S.C. §
103(a) as unpatentable over Choi (US 6,745,184 B1, iss. Jun. 1, 2004) in
view of Official Notice.
We AFFIRM.

ISSUES
Did the Examiner err in asserting that independent claim 11 fails to
recite statutory subject matter?
Did the Examiner err in asserting that a combination of Choi and
Official Notice renders obvious independent claim 12?

1 We choose independent claim 1 as representative of claims 1, 2, 6, 7, 17-
19, 41, 42, 47, and 57-59. See 37 C.F.R. § 41.37(c)(1)(vii).
2 We choose independent claim 1 as representative of independent claims 1,
20, 32, and 41. See 37 C.F.R. § 41.37(c)(1)(vii).
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ANALYSIS
Statutory Subject Matter
We are not persuaded the Examiner erred in asserting that
independent claim 1 fails to recite statutory subject matter (App. Br. 11-15;
Reply Br. 3-5). We agree with and adopt the Examiner’s findings and
rationales, as set forth on pages 17-18 of the Examiner’s Answer. All of the
steps, including rule induction, pattern recognition, and regression analysis
can be performed in the human mind or with pencil and paper. See
CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1372 (Fed. Cir.
2011) (“[i]t is clear that unpatentable mental processes are the subject matter
of claim 3. All of claim 3’s method steps can be performed in the human
mind, or by a human using a pen and paper”). Simply adding computer
limitations to such mental processes, without more, is insufficient to render
the claim patent eligible. See Dealertrack, Inc. v. Huber, 674 F.3d 1315,
1330-31 (Fed. Cir. 2012).

Obviousness Rejection
We are not persuaded the Examiner erred in asserting that a
combination of Choi and Official Notice renders obvious independent claim
1 (App. Br. 16-20; Reply Br. 6-11). Appellants assert that “the invention
claims two (2) surveys, whereas Choi discloses but a single (1) survey”
(App. Br. 16-18; Reply Br. 8-11). However, Choi discloses “2. Develop
demand-side understanding of a given market by using Bestfit clustering to
segment the data that was collected using the survey refined in Step 1” and
“5. Score a representative sample of the survey panel using a typing tool.
The channel for fielding this survey can be selected in accordance with
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specific objectives and/or constraints” (col. 18, ll. 44-46, 52-55; emphasis
added). Accordingly, Choi does disclose two surveys.
Moreover, the Examiner asserts that it is at least obvious that one of
the surveys is “implicit” and tracks “actual category usage and brand choice
behavior” that is used to validate conclusions of the “explicit” survey, so as
to correct for the problems of “behaviors frequently do not reflect consumer
beliefs” (col. 7, ll. 40-49; col. 17, ll. 44-46, 52-54; Exam’r’s Ans. 9-10, 19).
As Appellants did not contest this rationale, we will sustain this rejection.
See In re Keller, 642 F.2d 413, 425 (CCPA 1981) (“[o]nce a prima facie
case of obviousness [is] established..., the burden shift[s] to appellant to
rebut it”).

DECISION
The decision of the Examiner to reject claims 1-2, 6-7, 17-20, 31-32,
36, 39-42, 47, and 57-59 is AFFIRMED.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED

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