Ex Parte Mason

Patent Trials and Appeals Board

Jul 3, 2019

11371267 - (D) (P.T.A.B. Jul. 3, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
11/371,267 03/08/2006
72058 7590 07/08/2019
Kilpatrick Townsend & Stockton LLP
Adobe Systems, Inc. 58083
Mailstop: IP Docketing - 22
1100 Peachtree Street, Suite 2800
Atlanta, GA 30309-4530
FIRST NAMED INVENTOR
Zachary Mason
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.
058083-0857869
(2365US02)
2582
EXAMINER
RETTA, YEHDEGA
ART UNIT PAPER NUMBER
3688
NOTIFICATION DATE DELIVERY MODE
07/08/2019 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):
ipefiling@kilpatricktownsend.com
KTSDocketing2@kilpatrick.foundationip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Exparte ZACHARY MASON1
Appeal 2018-001821
Application 11/371,267
Technology Center 3600
Before LARRY J. HUME, MELISSA A. HAAPALA, and
JULIET MITCHELL DIRBA, Administrative Patent Judges.
HUME, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) of the Final
Rejection of claims 47-49, 52-58, and 60-69, which are all claims pending
in the application. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
1 According to Appellant, the real party in interest is Adobe Systems, Inc.
App. Br. 4.
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Application 11/371,267
STATEMENT OF THE CASE2
The Invention
Appellant's disclosed embodiments and claimed "invention relate[] to
the field of data processing, in particular, to methods and apparatus[] for
keyword effectiveness prediction and/or keyword generation, having
particular application to advertising with search engines." Spec. ,-J 2.
Exemplary Claim
Claim 47, reproduced below, is representative of the subject matter on
appeal ( emphases added to contested prior-art limitations):
4 7. A method comprising:
receiving, by a keyword generator from a marketer
device of a marketer, input identifying items of interest to the
marketer and a respective relevance value for each of the items
of interest, wherein the keyword generator is configured to
automatically provide keyword suggestions to the marketer
device and to a bidding system in response to the input;
accessing, by the keyword generator from a data store,
historical information about items and about bids for keywords
in association with the items, the items comprising the items of
interest;
generating, by the keyword generator, a data structure
having nodes and segments connecting the nodes based upon
the historical information, wherein the nodes represent the
items and the segments represent the keywords, and wherein a
node representing an item is connected to a segment
2 Our decision relies upon Appellant's Appeal Brief ("App. Br.," filed
June 21, 2017); Reply Brief ("Reply Br.," filed Dec. 12, 2017); Examiner's
Answer ("Ans.," mailed Oct. 16, 2017); Final Office Action ("Final Act.,"
mailed Jan. 25, 2017); and the original Specification ("Spec.," filed
Mar. 8, 2006) (claiming benefit of US Provisional Applications 60/660,580
and 60/660,581, both filed Mar. 10, 2005).
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representing a segment based upon[3J a bid for the keyword in
association with the item;
assigning, by the keyword generator and based upon the
respective relevance value for each of the items of interest,
degrees of activation to nodes of the data structure
corresponding to the items of interest, wherein a degree of
activation assigned to a node indicates a relevance of a keyword
to a corresponding item of interest;
assigning, by the keyword generator, additional degrees
of activation to additional nodes of the data structure by
propagating the assigned degrees of activation away from each
node having an assigned degree of activation until a finishing
criterion has been met;
identifying, by the keyword generator, the keyword
suggestions for the items of interest based upon the degrees of
activation assigned to the nodes and the additional degrees of
activation assigned to the additional nodes;
providing, by the keyword generator, the keyword
suggestions to the[4J advertiser device and to the bidding
system, the providing causing a bid from the advertiser device
at the bidding system based upon predictive measures from the
bidding system for the keyword suggestions.
3 It appears that "a segment representing" and "a segment based upon" are
redundant phrases. We determine the claim limitation requires "a segment"
to represent a bid for the keyword.
4 It appears that "the advertiser device" lacks antecedent basis.
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Application 11/371,267
Prior Art
The Examiner relies upon the following prior art as evidence in
rejecting the claims on appeal:
Koningstein et al. US 2005/0114198 Al May 26, 2005
("Koningstein")
Agarwal et al. US 2005/0222901 A 1 Oct. 6, 2005
("Agarwal")
Chi et al. US 7,017,110 Bl Mar. 21, 2006
("Chi")
Ceusters et al. US 7,493,253 Bl Feb. 17,2009
("Ceusters")
Pi saris-Henderson et al. US 8,626,576 Bl Jan. 7,2014
("Pisaris-Henderson")
Rejections on Appel
Rl. Claims 47-49, 52-58, and 60-69 stand rejected under 35
U.S.C. § 101 as being directed to patent-ineligible subject matter. Final
Act. 3.
R2. Claims 47-49, 52-54, 57, 58, and 60-69 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over the combination of
Koningstein, Pisaris-Henderson, Ceusters, and Chi. Final Act. 9.
R3. Claims 55 and 56 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over the combination of Koningstein, Pisaris-Henderson,
Ceusters, Chi, and Agarwal. Final Act. 16-1 7.
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CLAIM GROUPING
Based on Appellant's arguments (App. Br. 9-35) and our discretion
under 37 C.F.R. § 41.37(c)(l)(iv), we decide the appeal of patent-ineligible
subject matter Rejection Rl of claims 47-49, 52-58, and 60-69 on the basis
of representative claim 4 7; and we decide the appeal of obviousness
Rejection R2 of claims 47-49, 52-54, 57, 58, and 60-69 on the basis of
representative claim 4 7.
Remaining claims 55 and 56 in Rejection R3, not argued separately,
stand or fall with the respective independent claim from which they depend. 5
ISSUES AND ANALYSIS
In reaching this decision, we consider all evidence presented and all
arguments actually made by Appellant. To the extent Appellant has not
advanced separate, substantive arguments for particular claims, or other
issues, such arguments are waived. 37 C.F.R. § 41.37(c)(l)(iv).
Based upon our de nova review and our Revised Guidance, we
conclude claims 47-49, 52-58, and 60-69 are directed to patent eligible
subject matter under § 101.
Based upon our review of the record and Appellant's arguments, we
are persuaded by particular arguments advanced by the Appellant with
5 "Notwithstanding any other provision of this paragraph, the failure of
appellant to separately argue claims which appellant has grouped together
shall constitute a waiver of any argument that the Board must consider the
patentability of any grouped claim separately." 37 C.F.R. § 41.37( c )(1 )(iv).
In addition, when appellant does not separately argue the patentability of
dependent claims, the claims stand or fall with the claims from which they
depend. In re King, 801 F.2d 1324, 1325 (Fed. Cir. 1986).
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respect to obviousness rejections R2 and R3 of claims 47-49, 52-58, and
60-69 for the specific reasons discussed below.
We highlight and address specific findings and arguments regarding
claim 4 7 for emphasis as follows.
1. § 101 Rejection Rl of Claims 47-49, 52-58, and 60-69
Issue 1
Appellant argues (App. Br. 26-35; Reply Br. 1-10) the Examiner's
rejection of claim 47 under 35 U.S.C. § 101 as being directed to patent-
ineligible subject matter is in error. These contentions present us with the
following issue:
Under the USPTO's Revised Guidance, informed by our governing
case law concerning 35 U.S.C. § 101, is claim 47 patent-ineligible under
§ 101?
Principles of Law
A. 35 U.S.C. § 101
"Eligibility under 35 U.S.C. § 101 is a question of law, based on
underlying facts." SAP Am., Inc. v. InvestPic, LLC, 898 F.3d 1161, 1166
(Fed. Cir. 2018).
An invention is patent-eligible if it claims a "new and useful process,
machine, manufacture, or composition of matter." 35 U.S.C. § 101.6
6 This threshold analysis of whether a claim is directed to one of the four
statutory categories of invention, i.e., a process, machine, manufacture, or
composition of matter, is referred to as "Step l" in the USPTO's patent-
eligibility analysis under § 101. MPEP § 2106.
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However, the Supreme Court has long interpreted 35 U.S.C. § 101 to include
implicit exceptions: "[l]aws of nature, natural phenomena, and abstract
ideas" are not patentable. Mayo Collaborative Servs. v. Prometheus Labs.,
Inc., 566 U.S. 66, 70 (2012) (brackets in original) (citing Diamond v. Diehr,
450 U.S. 175, 185 (1981)).
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court's two-step framework, described in Mayo
and Alice. Alice Corp. v. CLS Banklnt'l, 573 U.S. 208, 217-18 (2014)
( citing Mayo, 566 U.S. at 75-77). In accordance with that framework, we
first determine what concept the claim is "directed to." See Alice, 573 U.S.
at 219 ("On their face, the claims before us are drawn to the concept of
intermediated settlement, i.e., the use of a third party to mitigate settlement
risk."); see also Bilski v. Kappas, 561 U.S. 593, 611 (2010) ("Claims 1 and 4
in petitioners' application explain the basic concept of hedging, or protecting
against risk .... ").
Concepts determined to be abstract ideas, and thus patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219-20; Bilski, 561 U.S. at 611);
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594-95 (1978)); and
mental processes (Gottschalkv. Benson, 409 U.S. 63, 67 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as "molding rubber products" (Diehr, 450 U.S. at 191); "tanning,
dyeing, making water-proof cloth, vulcanizing India rubber, smelting ores"
(id. at 182 n.7 (quoting Corning v. Burden, 56 U.S. 252, 267-68 (1853)));
and manufacturing flour (Benson, 409 U.S. at 69 ( citing Cochrane v.
Deener, 94 U.S. 780, 785 (1876))).
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In Diehr, the claim at issue recited a mathematical formula, but the
Supreme Court held "[a] claim drawn to subject matter otherwise statutory
does not become nonstatutory simply because it uses a mathematical
formula." Diehr, 450 U.S. at 187; see also id. at 191 ("We view
respondents' claims as nothing more than a process for molding rubber
products and not as an attempt to patent a mathematical formula."). Having
said that, the Supreme Court also indicated that a claim "seeking patent
protection for that formula in the abstract ... is not accorded the protection
of our patent laws, and this principle cannot be circumvented by attempting
to limit the use of the formula to a particular technological environment."
Id. ( citation omitted) ( citing Benson and Flook); see, e.g., id. at 187 ("It is
now commonplace that an application of a law of nature or mathematical
formula to a known structure or process may well be deserving of patent
protection.").
Abstract ideas may include, but are not limited to, fundamental
economic practices, methods of organizing human activities, and
mathematical formulas or relationships. Alice, 573 U.S. at 217-21. Under
this guidance, we must therefore ensure at step one that we articulate what
the claims are directed to with enough specificity to ensure the step one
inquiry is meaningful. Id. at 217 ("[W]e tread carefully in construing this
exclusionary principle lest it swallow all of patent law.").
If the claim is "directed to" an abstract idea, we tum to the second
step of the Alice and Mayo framework, where "we must 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." Alice, 573 U.S. at 221 ( citation omitted). "A claim
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that recites an abstract idea must include 'additional features' to ensure 'that
the [claim] is more than a drafting effort designed to monopolize the
[abstract idea]."' Id. (alterations in original) (quoting Mayo, 566 U.S. at 77).
"[M]erely requir[ing] generic computer implementation[] fail[ s] to transform
that abstract idea into a patent-eligible invention." Id.
B. USPTO Revised Guidance
The USPTO recently published revised guidance in the Federal
Register concerning the application of§ 101. 2019 Revised Patent Subject
Matter Eligibility Guidance, 84 Fed. Reg. 50 (January 7, 2019) (hereinafter
"Revised Guidance") (https ://www. govinfo. gov/ content/pkg/FR-2019-01-
07/pdf/2018-28282.pdf).
Under the Revised Guidance, we first look to whether the claim
recites:
(1) any judicial exceptions, including certain groupings
of abstract ideas (i.e., mathematical concepts, certain methods
of organizing human activity such as a fundamental economic
practice, or mental processes); 7 and
(2) additional elements that integrate the judicial
exception into a practical application (see Manual for Patent
Examining Procedure ("MPEP") §§ 2106.05(a)-(c), (e)-(h)). 8
See Revised Guidance 52-53.
7 Referred to as "Revised Step 2A, Prong l" in the Revised Guidance
(hereinafter "Step 2A(i)").
8 Referred to as "Revised Step 2A, Prong 2" in the Revised Guidance
(hereinafter "Step 2A(ii)").
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Only if a claim (1) recites a judicial exception and (2) does not
integrate that exception into a practical application, do we then look to
whether the claim:
(3) adds a specific limitation beyond the judicial
exception that is not "well-understood, routine, conventional"
in the field (see MPEP § 2106.0S(d)); or
(4) simply appends well-understood, routine,
conventional activities previously known to the industry,
specified at a high level of generality, to the judicial exception. 9
See Revised Guidance 56.
Step 2A(i) ~ Abstract Idea
Informed by our judicial precedent, the Revised Guidance extracts and
synthesizes key concepts identified by the courts as abstract ideas to explain
that the abstract idea exception includes the following groupings of subject
matter, when recited as such in a claim limitation:
(a) Mathematical concepts-mathematical relationships,
mathematical formulas or equations, mathematical calculations;
(b) Certain methods of organizing human activity-
fundamental economic principles or practices (including
hedging, insurance, mitigating risk); commercial or legal
interactions (including agreements in the form of contracts;
legal obligations; advertising, marketing or sales activities or
behaviors; business relations); managing personal behavior or
relationships or interactions between people (including social
activities, teaching, and following rules or instructions); and
( c) Mental processes-concepts performed in the human
mind (including an observation, evaluation, judgment, opinion).
9 Items (3) and (4) continue to be collectively referred to as "Step 2B" of the
Supreme Court's two-step framework, described in Mayo and Alice.
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Under the Revised Guidance, if the claim does not recite a judicial
exception (a law of nature, natural phenomenon, or subject matter within the
enumerated groupings of abstract ideas above), then the claim is patent-
eligible at Step 2A(i). This determination concludes the eligibility analysis,
except in situations identified in the Revised Guidance. 10
However, if the claim recites a judicial exception (i.e., an abstract idea
enumerated above, a law of nature, or a natural phenomenon), the claim
requires further analysis for a practical application of the judicial exception
in Step 2A(ii).
Step 2A(ii) - Practical Application
If a claim recites a judicial exception in Step 2A (i), we determine
whether the recited judicial exception is integrated into a practical
application of that exception in Step 2A(ii) by: (a) identifying whether there
are any additional elements recited in the claim beyond the judicial
exception( s ); and (b) evaluating those additional elements individually and
in combination to determine whether they integrate the exception into a
practical application.
The seven identified "practical application" sections of the MPEP, 11
cited in the Revised Guidance under Step 2A(ii), are:
10 In the rare circumstance in which an examiner believes a claim limitation
that does not fall within the enumerated groupings of abstract ideas should
nonetheless be treated as reciting an abstract idea, the procedure described in
of the Guidance for analyzing the claim should be followed. See Revised
Guidance, Section III.C.
11 See MPEP §§ 2106.0S(a)-(c), (e)-(h). Citations to the MPEP herein refer
to revision [R-08.2017]. Sections 2106.0S(a), (b), (c), and (e) are indicative
of integration into a practical application, while§§ 2106.05([), (g), and (h)
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(1) MPEP § 2106.05(a) Improvements to the Functioning of
a Computer or To Any Other Technology or Technical
Field
(2) MPEP § 2106.05(b) Particular Machine
(3) MPEP § 2106.05(c) Particular Transformation
(4) MPEP § 2106.05(e) Other Meaningful Limitations
(5) MPEP § 2106.05(±) Mere Instructions To Apply An
Exception
(6) MPEP § 2106.05(g) Insignificant Extra-Solution Activity
(7) MPEP § 2106.05(h) Field of Use and Technological
Environment
See Revised Guidance 55.
If the recited judicial exception is integrated into a practical
application as determined under one or more of the MPEP sections cited
above, then the claim is not directed to the judicial exception, and the patent-
eligibility inquiry ends. See Revised Guidance 54. If not, then analysis
proceeds to Step 2B.
Step 2B ~ "Inventive Concept" or "Significantly More"
Under our reviewing courts' precedent, it is possible that a claim that
does not "integrate" a recited judicial exception under Step 2A(ii) is
nonetheless patent eligible. For example, the claim may recite additional
elements that render the claim patent eligible even though a judicial
exception is recited in a separate claim element. 12 The Federal Circuit has
held claims eligible at the second step of the Alice/Mayo test (US PTO Step
relate to limitations that are not indicative of integration into a practical
application.
12 See, e.g., Diehr, 450 U.S. at 187.
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2B) because the additional elements recited in the claims provided
"significantly more" than the recited judicial exception (e.g., because the
additional elements were unconventional in combination). 13 Therefore, if a
claim has been determined to be directed to a judicial exception under
Revised Step 2A, we must also evaluate the additional elements individually
and in combination under Step 2B to determine whether they provide an
inventive concept (i.e., whether the additional elements amount to
significantly more than the exception itself). 14
Under the Revised Guidance, we must consider in Step 2B whether an
additional element or combination of elements: (1) "Adds a specific
limitation or combination of limitations that are not well-understood,
routine, conventional activity in the field, which is indicative that an
inventive concept may be present;" or (2) "simply appends well-understood,
routine, conventional activities previously known to the industry, specified
at a high level of generality, to the judicial exception, which is indicative
that an inventive concept may not be present." See Revised Guidance,
III.B. 15
13 See, e.g., Amdocs (Israel), Ltd. v. Openet Telecom, Inc., 841 F.3d 1288,
1300, 1304 (Fed. Cir. 2016); BASCOM Global Internet Services, Inc. v.
AT&T Mobility LLC, 827 F.3d 1341, 1349-52 (Fed. Cir. 2016); DDR
Holdings v. Hotels.com, L.P., 773 F.3d 1245, 1257-59 (Fed. Cir. 2014).
14 The patent eligibility inquiry may contain underlying issues of fact.
Mortg. Grader, Inc. v. First Choice Loan Servs. Inc., 811 F.3d 1314, 1325
(Fed. Cir. 2016). In particular, "[t]he question of whether a claim element or
combination of elements is well-understood, routine and conventional to a
skilled artisan in the relevant field is a question of fact." Berkheimer v. HP
Inc., 881 F.3d 1360, 1368 (Fed. Cir. 2018).
15 In accordance with existing Step 2B guidance, an Examiner's finding that
an additional element ( or combination of elements) is well understood,
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In the Step 2B analysis, an additional element ( or combination of
elements) is not well-understood, routine or conventional unless the
examiner finds an evidentiary basis, and expressly supports a rejection in
writing with, one or more of the following:
1. A citation to an express statement in the
specification or to a statement made by an applicant during
prosecution that demonstrates the well-understood, routine,
conventional nature of the additional element(s) ....
2. A citation to one or more of the court decisions
discussed in MPEP § 2106.0S(d)(II) as noting the well-
understood, routine, conventional nature of the additional
element( s ).
3. A citation to a publication that demonstrates the
well-understood, routine, conventional nature of the additional
element( s ) ....
4. A statement that the examiner is taking official
notice of the well-understood, routine, conventional nature of
the additional element(s) ....
See Berkheimer Memo.
The analysis in Step 2B further determines whether an additional
element or combination of elements:
(a) Adds a specific limitation or combination of
limitations that are not well-understood, routine, conventional
routine, conventional activity must be supported with at least one of the four
specific types of evidence required by the USPTO Berkheimer
Memorandum, as shown above. For more information concerning evaluation
of well-understood, routine, conventional activity, see MPEP § 2106.0S(d),
as modified by the USPTO Berkheimer Memorandum (USPTO
Commissioner for Patents Memorandum dated Apr. 19, 2018, "Changes in
Examination Procedure Pertaining to Subject Matter Eligibility, Recent
Subject Matter Eligibility Decision (Berkheimer v. HP, Inc.)" (hereinafter
"Berkheimer Memo").
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activity in the field, which is indicative that an inventive
concept may be present; or
(b) simply appends well-understood, routine,
conventional activities previously known to the industry,
specified at a high level of generality, to the judicial exception,
which is indicative that an inventive concept may not be
present.
Revised Guidance, and see Berkheimer Memo.
If the Examiner or the Board determines under Step 2B that the
element ( or combination of elements) amounts to significantly more than the
exception itself, the claim is eligible, thereby concluding the eligibility
analysis.
However, if a determination is made that the element and combination
of elements does not amount to significantly more than the exception itself,
the claim is ineligible under Step 2B, and the claim should be rejected for
lack of subject matter eligibility.
Analysis
Based upon our de nova review of the record in light of recent
Director Policy Guidance with respect to patent-eligible subject matter
rejections under 35 U.S.C. § 101, we reverse the rejection of claims 47-49,
52-58, and 60-69 for the specific reasons discussed below. We highlight
and address specific findings and arguments regarding claim 4 7 for
emphasis as follows.
Step 1 - Statutory Category
Claim 4 7, as a method (process) claim, recites one of the enumerated
categories of eligible subject matter in 35 U.S.C. § 101. Therefore, the issue
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before us is whether the claim is directed to a judicial exception without
significantly more.
Step 2A(i): Does the Claim Recite a Judicial Exception?
The Examiner determined claim 47 is directed to "an idea of itself as
well as a mental process that can be performed in the human mind or by a
human using a pen and paper." Final Act. 19. The Examiner further
concluded claim 4 7 recites concepts similar to "concepts relating to
advertising, marketing and sales activities or behaviors [which] have been
found to be abstract ... [ and] shown to be "Certain Methods of Organizing
Human Activity")." Id. at 3.
We find claim 47 does not recite the judicial exceptions of either
natural phenomena or laws of nature. We evaluate, de nova, whether
claim 4 7 recites an abstract idea based upon the Revised Guidance.
Claim 47 recites "[a] method," wherein the method includes the steps
of:
( 1) "[R Jeceiving ... input identifying items of interest to
the marketer and a respective relevance value for each of the
items of interest ... [ and] automatically provid[ing] keyword
suggestions ... in response to the input."
(2) "[A]ccessing ... historical information about items
and about bids for keywords in association with the items, the
items comprising the items of interest."
(3) "[G]enerating ... a data structure having nodes and
segments connecting the nodes based upon the historical
information, wherein the nodes represent the items and the
segments represent the keywords, and wherein a node
representing an item is connected to a segment representing a
segment based upon a bid for the keyword in association with
the item."
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( 4) " [A] ssigning ... based upon the respective relevance
value for each of the items of interest, degrees of activation to
nodes of the data structure corresponding to the items of
interest, wherein a degree of activation assigned to a node
indicates a relevance of a keyword to a corresponding item of
interest."
( 5) "[ A Jssigning ... additional degrees of activation to
additional nodes of the data structure by propagating the
assigned degrees of activation away from each node having an
assigned degree of activation until a finishing criterion has been
met."
( 6) "[I]dentifying ... the keyword suggestions for the
items of interest based upon the degrees of activation assigned
to the nodes and the additional degrees of activation assigned to
the additional nodes."
(7) "[P]roviding ... the keyword suggestions ... causing
a bid ... based upon predictive measures ... for the keyword
suggestions."
Claims App 'x.
The Specification provides context as to what the claimed invention is
directed to. In this case, the Specification discloses the invention "relates to
the field of data processing, in particular, to methods and apparatuses for
keyword effectiveness prediction and/or keyword generation, having
particular application to advertising with search engines." Spec. ,i 2.
Appellant's Abstract provides additional description of the invention:
Methods, apparatuses, and articles for receiving one or more
indicators indicating one or more degrees of relevance or
irrelevance of one or more items or entities to advertising
keywords of interest, generating one or more advertising
keyword suggestions suggesting one or more advertising
keywords based at least in part on whether there are
predetermined relationships among the suggested one or more
advertising keywords, and between some of the suggested one
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or more advertising keywords and the one or more items or
entities, are described herein.
Spec. 43 (Abstract).
Under the broadest reasonable interpretation standard, 16 we conclude,
other than the claimed computer-related aspects, i.e., "keyword generator,"
claim 47 recites steps that would ordinarily occur when analyzing items of
interest with respect to historical information about such items in order to
generate and provide keyword suggestions for bidding by an advertiser in
connection with marketing of those items. See Final Act. 3; Ans. 5.
For example, we conclude steps (3) through (5) are abstract and would
be common steps in any keyword generation operation, i.e., "generating ...
a data structure having nodes and segments ... wherein ... the nodes
represent the items and the segments represent the keywords," "assigning
... degrees of activation to nodes of the data structure," and "assigning ...
additional degrees of activation to additional nodes of the data structure."
Thus, under Step 2A(i), we generally agree with the Examiner that
claim 47 recites an abstract idea, and we particularly conclude claim 47
recites certain method of organizing human activity. Specifically, claim 47
16 During prosecution, claims must be given their broadest reasonable
interpretation when reading claim language in light of the specification as it
would be interpreted by one of ordinary skill in the art. In re Am. Acad. of
Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). Under this standard,
we interpret claim terms using "the broadest reasonable meaning of the
words in their ordinary usage as they would be understood by one of
ordinary skill in the art, taking into account whatever enlightenment by way
of definitions or otherwise that may be afforded by the written description
contained in the applicant's specification." In re Morris, 127 F.3d 1048,
1054 (Fed. Cir. 1997).
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recites commercial interactions, i.e., advertising, marketing or sales activities
or behaviors, which we further note may be performed without a computer
using pen and paper. This type of activity, i.e., providing keyword
suggestions, includes longstanding conduct that existed well before the
advent of computers and the Internet, and could be carried out by a human
with pen and paper. See Cy her Source Corp. v. Retail Decisions, Inc., 654
F.3d 1366, 1375 (Fed. Cir. 2011 ). 17
We conclude claim 4 7, under our Revised Guidance, recites a judicial
exception of certain methods of organizing human activity in the form of
commercial interactions, i.e., advertising, marketing or sales activities or
behaviors, and thus an abstract idea.
Step 2A(ii): Judicial Exception Integrated into a Practical Application?
If the claims recite a patent-ineligible concept, as we conclude above,
we proceed to the "practical application" Step 2A(ii) in which we determine
whether the recited judicial exception is integrated into a practical
application of that exception by: (a) identifying whether there are any
17 Our reviewing court recognizes 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). That need not and, in this case does
not, "impact the patentability analysis." Id. at 1241. Further, "[t]he Board's
slight revision of its abstract idea analysis does not impact the patentability
analysis." Id. Moreover, merely combining several abstract ideas does not
render the combination any less abstract. RecogniCorp, LLC v. Nintendo
Co., 855 F.3d 1322, 1327 (Fed. Cir. 2017) ("Adding one abstract idea (math)
to another abstract idea ... does not render the claim non-abstract."); see
also FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1093-94 (Fed.
Cir. 2016) ( determining the pending claims were directed to a combination
of abstract ideas).
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additional elements recited in the claim beyond the judicial exception(s); and
(b) evaluating those additional elements individually and in combination to
determine whether they integrate the exception into a practical application.
In addition to the abstract steps recited in steps (3) through (5)
identified in Step 2A(i), supra, claim 47 further recites:
(1) "[R Jeceiving ... input identifying items of interest to
the marketer and a respective relevance value for each of the
items of interest ... [ and] automatically provid[ing] keyword
suggestions ... in response to the input."
(2) "[A]ccessing ... historical information about items
and about bids for keywords in association with the items, the
items comprising the items of interest."
(7) "[P]roviding ... the keyword suggestions ... causing
a bid ... based upon predictive measures ... for the keyword
suggestions."
As to the specific limitations, we find step (1) ("receiving") and step
(2) ("accessing") recite insignificant data gathering. See MPEP
§ 2106.05(g). Data gathering, as performed by the steps or function in
Appellant's claims, is a classic example of insignificant extra-solution
activity. See, e.g., In re Bilski, 545 F.3d 943, 963 (Fed. Cir. 2008) (en bane),
aff'd sub nom, Bilski v. Kappas, 561 U.S. 593 (2010).
We also find step (7) ("providing") recites insignificant post solution
activity. 18 The Supreme Court guides that the "prohibition against patenting
abstract ideas 'cannot be circumvented' [by] adding 'insignificant
postsolution activity."' Bilski, 561 U.S. at 610-11 (quoting Diehr, 450 U.S.
18 We also note the "providing" step can alternatively be considered as
abstract because it can be carried out by a human in the mind or by use of
pen and paper. See CyberSource, 654 F.3d at 1375.
20
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at 191-92). On this record, we are of the view that Appellant's claims do
not operate the recited generic computer component(, i.e., keyword
generator) in an unconventional manner to achieve an improvement in
computer functionality. See MPEP § 2106.0S(a).
However, for the reasons discussed below, we conclude step (6)
("identifying ... the keyword suggestions for the items of interest based
upon the degrees of activation assigned to the nodes and the additional
degrees of activation assigned to the additional nodes" integrates the abstract
idea into a practical application as determined under at least one of the
MPEP sections cited above. 19
Appellant's Specification discloses:
The display of advertisements ("ads") is often mediated
by a bidding system - an advertiser bids on a keyword, and the
placement of his ad on the search result page for that keyword
depends on, possibly among other factors, his bid. Often, the
clickthrough rate on the ad is a function of its placement.
It is in an advertiser's interest to know about as many
relevant keywords as possible. Manually generating keywords
for a domain is a difficult, labor intensive task - for a given
topic there can be many keywords .... Accordingly, an
automated method for generating search keywords for a
merchant ( or for a domain, or an industry, or a vertical, or a
product, etc.) is valuable. It is also valuable to know how well a
keyword will serve its purpose in order to bid optimally, both
for merchants manually compiling a bidding strategy and for
those using mathematical optimization techniques.
Spec. ,-i,-i 3-4.
19 See, e.g., MPEP § 2106.0S(a) "Improvements to the Functioning of a
Computer or To Any Other Technology or Technical Field," and
§ 2106.05( e) "Other Meaningful Limitations."
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Appellant argues:
Appellant points to ... the specification describing
technical problems associated with generating keywords for
suggestion: prior art processes are manual and difficult. [ J The
desired outcome is automating the process of keyword
evaluation and keyword suggestion. [ J The specification
describes a particular way to solve this problem and achieve the
desired outcome. [ J This particular way includes the use of a
particular data structure, where degrees of activation are
assigned and propagated to nodes of the data structure, and
where keywords are evaluated and suggested given these
degrees of activation. [ J
App. Br. 30 (emphasis added and footnotes omitted).
We find Appellant's argument persuasive that carrying out step ( 6),
for example, "identifying, by the keyword generator, the keyword
suggestions for the items of interest based upon the degrees of activation
assigned to the nodes and the additional degrees of activation assigned to
the additional nodes," provides improvements to the underlying technology
or technical field, namely, keyword evaluation and keyword suggestion
systems. See MPEP § 2106.05(a) or, alternatively,§ 2106.05(e) "Other
Meaningful Limitations."
With respect to this other meaningful limitation, we find guidance in
MPEP § 2106.05( e ), which summarizes and relies upon our reviewing
court's holdings in Diehr, cited supra, and Classen Immunotherapies, Inc. v.
Biogen IDEC, 659 F.3d 1057 (Fed. Cir. 2011) (decision on remand from the
Supreme Court, which had vacated the lower court's prior holding of
ineligibility in view of Bilski v. Kappas).
In Diehr, the Court evaluated the additional non-abstract limitations,
and found them to be meaningful, because they sufficiently limited the use
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of the (abstract idea) mathematical equation to the practical application of
molding rubber products. MPEP § 2106.05(e) (citing Diehr, 450 U.S. at
184, 187).
In Classen, the Court held that, although the analysis step was an
abstract mental process that collected and compared known information, the
(practical application) immunization step was meaningful because it
integrated the results of the analysis into a specific and tangible method that
resulted in the method "moving from abstract scientific principle to specific
application." MPEP § 2106.05(e) (citing Classen, 659 F.3d at 1066-68).
We find these other meaningful limitations identified above provide a
technological improvement to keyword evaluation and keyword suggestion
systems. See App. Br. 30. Accordingly, we conclude, when the claim is
considered as a whole, the recited judicial exception is integrated into a
practical application as determined under either MPEP sections 2106.06(a)
or 2106.05(e) cited above, such that the claim is patent-eligible.
Because the claims are directed to a patent-eligible concept, this
concludes the patent-eligibility inquiry.
Therefore, based upon the findings and legal conclusions above, on
this record and in consideration of the Revised Guidance, we are persuaded
the claims are directed to patent-eligible subject matter, such that we do not
sustain the§ 101 rejection of claim 47, and grouped claims 48, 49, 52-58,
and 60-69 which stand therewith. See Claim Grouping, supra.
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2. § 103 Rejection R2 of Claims 47-49, 52-54, 57, 58, and 60-69
Issue 2
Appellant argues (App. Br. 13-21) the Examiner's rejection of
claim 47 under 35 U.S.C. § 103(a) as being obvious over the combination of
Koningstein, Pisaris-Henderson, Ceusters, and Chi is in error. These
contentions present us with the following issue:
Did the Examiner err in finding the cited prior art combination teaches
or suggests "[a] method" that includes, inter alia, the step of "[(3)]
generating, by the keyword generator, a data structure having nodes and
segments connecting the nodes based upon the historical information,
wherein the nodes represent the items and the segments represent the
keywords, and wherein a node representing an item is connected to a
segment representing ... a bid for the keyword in association with the item,"
as recited in claim 47?
Analysis
Appellant contends:
Koningstein and [Ceusters], individually or in
combination, fail to disclose [ the "generating" step] of the
independent claims. Instead, the combination of Koningstein
and [ Ceusters] at most discloses a structure that includes nodes
representing keyword concepts ... [but] fails to disclose
segments that represent keywords, let alone that a connection
between a segment and a node is based upon a bid for a key in
association with an item ....
Koningstein describes a structure where keyword
concepts (e.g., "recreation" in FIG. lOA) occupy nodes and are
connected to other concepts. In comparison, [Ceusters]
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describes a hierarchical structure of ontology concepts ( e.g.,
"cities" in FIG. 2).
It is clear ... that Koningstein and [Ceusters] do not set
a keyword as a segment between two nodes.
App. Br. 14-16 (emphasis added). 20
The Examiner concludes:
K[ on ]ingstein teaches generating, by a processor, a data
structure having nodes and segments connecting the nodes,
wherein the nodes and segments are occupied by the keywords
and the plurality of items (keywords), wherein connections
between the nodes and segments of the data structure represent
relationships between the keywords and the plurality of items.
Ans. 2-3.
We disagree with the Examiner that the cited sections of Koningstein
disclose "nodes represent the items" and "segments represent the keywords,"
as required by claim 47. Rather, we agree with Appellant (App. Br. 15-16)
that Koningstein describes a structure where keyword concepts occupy
nodes and are connected to other concepts. See Koningstein, Figs. 10-12,
,-J 103. Thus, the data structure taught by Koningstein is not the same as the
data structure recited in claim 4 7.
Further, the cited prior art combination of Koningstein, Pisaris-
Henderson, Ceusters, and Chi do not teach or suggest either individually or
in combination the claimed data structure in the "generating" step ("wherein
the nodes represent the items and the segments represent the keywords, and
wherein a node representing an item is connected to a segment representing
a bid for the keyword in association with the item") of claim 4 7. While both
20 Appellant incorrectly cites to "Ceusterts" instead of "Ceusters."
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Koningstein and Ceusters disclose data structures composed of nodes and
segments (Koningstein in Figures 10-12, and Ceusters in Figure 2), each of
these data structures are hierarchical in nature unlike the structure recited in
claim 4 7. As argued by Appellant, supra, the data structures of Koningstein
and Ceusters are different from the data structure of claim 4 7 at least
because they do not teach or suggest that the segments represent the
keywords.
Accordingly, we reverse the Examiner's rejection of independent
claim 47, and also the rejection of independent claims 60-62 which recite
the disputed limitation in commensurate form. For the same reasons, we
also reverse the rejections of grouped claims 48, 49, 52-54, 57, 58, and 63-
69, that stand therewith See Claim Grouping, supra. 21
3. Rejection R3 of Claims 55 and 56
Issue 3
In light of our reversal of the rejections of independent claim 47,
supra, we also reverse obviousness Rejection R3 under§ 103 of claims 55
and 56, which depend from independent claim 47. On this record, the
Examiner has not shown how the additionally cited Agarwal reference
overcomes the aforementioned deficiencies of Koningstein, Pisaris-
Henderson, Ceusters, and Chi as discussed above regarding claim 4 7.
21 Because we agree with at least one of the dispositive arguments advanced
by Appellant, we need not reach the merits of Appellant's other arguments.
See Beloit Corp. v. Valmet Oy, 742 F.2d 1421, 1423 (Fed. Cir. 1984)
(finding an administrative agency is at liberty to reach a decision based on "a
single dispositive issue").
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CONCLUSIONS
(1) Under our Revised Guidance, governed by relevant case law,
claims 47-49, 52-58, and 60-69 are patent-eligible under 35 U.S.C. § 101,
and we do not sustain Rejection Rl.
(2) The Examiner erred with respect to obviousness Rejections R2
and R3 of claims 47-49, 52-58, and 60-69 under 35 U.S.C. § 103(a) over
the cited prior art combinations of record, and we do not sustain the
rejections.
DECISION
We reverse the Examiner's decision rejecting claims 47-49, 52-58,
and 60-69.
REVERSED
27