13730550 (P.T.A.B. Mar. 23, 2018)

Ex Parte Pradeep et al

Patent Trial and Appeal BoardMar 23, 2018

13730550 (P.T.A.B. Mar. 23, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/730,550 12/28/2012 81905 7590 03/27/2018 Hanley, Flight & Zimmerman, LLC (Nielsen) 150 S. Wacker Dr. Suite 2200 Chicago, IL 60606 FIRST NAMED INVENTOR Anantha Pradeep 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. 20225/009US03 9492 EXAMINER TROTTER, SCOTTS ART UNIT PAPER NUMBER 3696 NOTIFICATION DATE DELIVERY MODE 03/27/2018 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): jflight@hfzlaw.com mhanley@hfzlaw.com docketing@hfzlaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte ANANTHA PRADEEP, ROBERT T. KNIGHT, and RAMACHANDRAN GURUMOORTHY 1 Appeal2017-000094 Application 13/730,550 Technology Center 3600 Before CAROLYN D. THOMAS, AARON W. MOORE, and MICHAEL J. ENGLE, Administrative Patent Judges. THOMAS, Administrative Patent Judge. DECISION ON APPEAL Appellants seek our review under 35 U.S.C. Â§ 134(a) of the Examiner's final rejection of claims 2-24, all the pending claims in the present application. Claim 1 is canceled (see Claims Appendix). We have jurisdiction over the appeal under 35 U.S.C. Â§ 6(b ). We AFFIRM. The present invention relates generally to analyzing response data from subjects exposed to media (see Spec., Abstract). 1 Appellants name The Nielsen Company as the real party in interest (App. Br. 2). Appeal2017-000094 Application 13/730,550 Claim 2 is illustrative: 2. A method comprising: determining, using a processor, a first distance between ( 1) a first peak in a first frequency band of first neuro-response data gathered from a subject while exposed to media and (2) a second peak in the first frequency band; determining, with the processor, a second distance between (1) a third peak in the first frequency band and either (2) the second peak in the first frequency band or (3) a fourth peak in the first frequency band; and determining, with the processor, a first difference between the first distance and the second distance; and selecting, with the processor, a first advertisement or entertainment to present to the subject based on the first difference. Appellants appeal the following rejection: Claims 2-24 are rejected under 35 U.S.C. Â§ 101 because the claimed invention is directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more (Final Act. 2- 3). We review the appealed rejection for error based upon the issues identified by Appellants, and in light of the arguments and evidence produced thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential). ANALYSIS Re} ection under Â§ 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." 35 U.S.C. Â§ 101. The Supreme Court has held that this provision contains an important implicit exception: Laws of nature, natural 2 Appeal2017-000094 Application 13/730,550 phenomena, and abstract ideas are not patentable. Alice Corp. v. CLS Bank Int'!, 134 S. Ct. 2347, 2354 (2014); Gottschalkv. Benson, 409 U.S. 63, 67 (1972) ("Phenomena of nature, though just discovered, mental processes, and abstract intellectual concepts are not patentable, as they are the basic tools of scientific and technological work."). Notwithstanding that a law of nature or an abstract idea, by itself, is not patentable, the application of these concepts may be deserving of patent protection. Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1293-94 (2012). In Mayo, the Court stated that "to transform an unpatentable law of nature into a patent eligible application of such a law, one must do more than simply state the law of nature while adding the words 'apply it."' Id. at 1294. In Alice, the Court reaffirmed the framework set forth previously in Mayo "for distinguishing patents that claim laws of nature, natural phenomena, and abstract ideas from those that claim patent-eligible applications of these concepts." Alice, 134 S. Ct. 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." Id. If the claims are directed to a patent-ineligible concept, then 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." Id. (quoting Mayo, 132 S. Ct. at 1298, 1297). 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 3 Appeal2017-000094 Application 13/730,550 Mayo, 132 S. Ct. at 1294). The prohibition against patenting an abstract idea "cannot be circumvented by attempting to limit the use of the formula to a particular technological environment or adding insignificant post-solution activity." Bilski v. Kappas, 561 U.S. 593, 610-11 (2010) (citation and internal quotation marks omitted). The Court in Alice noted that "' [ s ]imply appending conventional steps, specified at a high level of generality,' was not 'enough' [in Mayo] to supply an 'inventive concept."' Alice, 134 S. Ct. at 2357 (quoting Mayo, 132 S. Ct. at 1300, 1297, 1294). Step one: Are the claims at issue directed to a patent-ineligible concept? With respect to independent method claim 2, and, similarly, system claim 17 and machine readable storage device claim 21, the Examiner determines these claims are directed to an abstract idea of "both 'comparing a patient's gene with the wild-type gene, and identifying any differences that arise' and 'comparing new and stored information and using rules to identify options"' (Final Act. 3). In addition, the Examiner determines that the claims are directed to the abstract concept of "organizing information through mathematical correlations" (Ans. 4, citing CET vs. Wells Fargo). Appellants contend that "[t]his alleged abstract idea is not similar to any of the concepts the courts have identified as abstract ideas" (App. Br. 14) and that "the Examiner provides no evidence or line of reasoning to support this allegation" (id. at 15), "[a ]s there is no similarity between the concept alleged to be abstract by the Examiner and any patent ineligible abstract idea identified by the courts" (id. at 15-16). Appellants further contend that "the claim as a whole is directed to a technical improvement in which selection of an advertisement or entertainment to present to a subject 4 Appeal2017-000094 Application 13/730,550 is more accurately determined based on a specific metric" (App. Br. 30-31 ), which "cannot be done in the human mind ... [and] can only be identified through psychologically based tests to identify the data" (id. at 31) that is "inherently embodied in computer technology" (id. at 32, citing DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1257 (Fed. Cir. 2014)). We disagree with Appellants' contentions. Instead, we refer to, rely on, and adopt the Examiner's findings and conclusions set forth in the Final Office Action and the Answer. Our discussions here will be limited to the following points of emphasis. Claim 2 recites four steps: (a) determining a first distance; (b) determining a second distance; ( c) determining a first difference between the first and second distances; and ( d) selecting a first advertisement based on the first difference. In essence, claim 2 is directed to determining a first data, determining a second data, identifying the difference between the first and second data, and then making a selection based on the determinations and identifications, i.e., collecting data, organizing information through mathematical correlations, and making a selection based thereon. Regarding Appellants' contention that "the Examiner provides no evidence or line of reasoning to support this allegation" (App. Br. 15), we note that the determination of whether a claim is directed to an abstract idea is a legal issue (see, e.g., para. IV "July 2015 Update: Subject Matter Eligibility" to 2014 Interim Guidance on Subject Matter Eligibility (2014 IEG), 79 Fed. Reg. 74618 (Dec. 16, 2014) ("The courts consider the determination of whether a claim is eligible (which involves identifying whether an exception such as an abstract idea is being claimed) to be a question of law.")). 5 Appeal2017-000094 Application 13/730,550 In any case, we highlight that a number of Federal Circuit cases have found claims that simply manipulate data, like those at issue here, ineligible. See, e.g., FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1097-98 (Fed. Cir. 2016) ("the practices of collecting, analyzing, and displaying data, with nothing more, are practices 'whose implicit exclusion from Â§ 101 undergirds the information-based category of abstract ideas"'); Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1146 (Fed. Cir. 2016) ("we continue to treat[] analyzing information by steps people go through in their minds, or by mathematical algorithms, without more, as essentially mental processes within the abstract-idea category" (alteration in original) (internal quotation omitted)); Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1355 (Fed. Cir. 2016) ("[m]erely requiring the selection and manipulation of information-to provide a 'humanly comprehensible' amount of information useful for users-by itself does not transform the otherwise-abstract processes of information collection and analysis" (citation omitted)). Although Appellants argue that "it is clear that the claim as a whole is much narrower than the Examiner contends in his strawman analysis" (App. Br. 27), Appellants have not persuasively argued why any allegedly ignored features would change the Examiner's determination that the claims are directed to an abstract idea. Similarly, Appellants have not persuasively argued why any of the narrower features in the argued dependent claims (App. Br. 34--43) would change the Examiner's determination that the claims are directed to an abstract idea, as they merely add conventional and "insignificant post-solution activity." See Bilski, 561 U.S. at 611. Appellants further contend that "even in the case where a claim may recite a judicial exception, the 2014 Interim Guidelines provide a 6 Appeal2017-000094 Application 13/730,550 streamlined analysis for claims 'directed to inventions that clearly do not seek to tie up the judicial exception"' (App. Br. 19). We are not persuaded of error on the part of the Examiner by Appellants' argument that the claims do not tie up or preempt the abstract idea. "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); see also OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1362---63 (Fed. Cir. 2015) ("[T]hat the claims do not preempt all price optimization or may be limited to price optimization in the ecommerce setting do not make them any less abstract."). And, "[ w ]here a patent's claims are deemed only to disclose patent ineligible subject matter under the Mayo framework, as they are in this case, preemption concerns are fully addressed and made moot." Ariosa, 788 F.3d at 1379. In regard to Appellants' argument that the streamlined eligibility analysis should have been applied to the present claim, Appellants mischaracterize the 2014 Interim Guidance on Patent Subject Matter Eligibility guidelines and the 2015 Update as placing a requirement on the Examiner (App. Br. 19-21). Contrary to Appellants' argument, use of the streamlined Â§ 101 Alice/Mayo analysis is discretionary. Specifically, section I(B)(3) of the 2014 Interim Guidance is explicit that "ifthere is doubt as to whether the applicant is effectively seeking coverage for a judicial exception itself, the full analysis should be conducted" (emphasis added). The Examiner choosing to perform a full Â§ 101 Alice/Mayo analysis is not an error. 7 Appeal2017-000094 Application 13/730,550 Because the claims are directed to organizing information through mathematical correlations and making a selection based thereon-an abstract idea----the claims at issue are directed to patent-ineligible subject matter. Step two: Is there something else in the claims that ensure that they are directed to significantly more than a patent-ineligible concept? The Examiner determines that "[ t ]he claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because they are just details of the analysis which is itself an abstract idea" (Final Act. 3) and "[t]he neuro-response data is being gathered in an ordinary way for such data by an EEG ... like the scanner in CET vs. Wells Fargo" (Ans. 4). We agree with the Examiner. "A claim 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]."' Alice, 134 S. Ct. at 2357 (alteration in original) (quoting Mayo, 132 S. Ct. at 1297). The prohibition against patenting an abstract idea "cannot be circumvented by attempting to limit the use of the formula to a particular technological environment or adding insignificant post-solution activity." Bilski v. Kappas, 561 U.S. at 610-11 (citation and internal quotation marks omitted). The recitations in claim 2 pertaining to "a processor" are analogous to the recitation of a conventional "computer" discussed in Alice. Additionally, as recognized by the Federal Circuit in Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 716 (Fed. Cir. 2014), Bilski's "machine-or- transformation" (MoT) test can also provide a "useful clue" in the second 8 Appeal2017-000094 Application 13/730,550 step of the Alice framework. See Bilski, 561 U.S. at 611. Under Bilski 's MoT test, a claimed process can be considered patent-eligible underÂ§ 101 if: (1) "it is tied to a particular machine or apparatus"; or (2) "it transforms a particular article into a different state or thing." Bilski, 545 F.3d at 954 (citing Benson, 409 U.S. at 70, 93). Appellants contend that "the claim as a whole is directed to a technical improvement" (App. Br. 30) that is "inherently embodied in computer technology" (id. at 32, citing DDR Holdings, 773 F.3d at 1257) and "[t]he Examiner did not reject [in]dependent claim 2 based on any art" (id. at 33). In essence, Appellants merely contend that method claim 2 and its corresponding system and medium claims 1 7 and 21 are tied to a computer and offer improvements to computer technology, but do not argue that the claims are involved in any type of transformation of any particular article. 2 Claim 2 merely recites that each step is performed "using a processor" (see claim 2). We agree with the Examiner that claim 2 simply incorporates a generic component into the method to perform the data gathering, i.e., the abstract concept of organizing information through mathematical correlations and making a selection based thereon. As recognized by the Supreme Court, "the mere recitation of a generic computer cannot transform a patent-ineligible abstract idea into a patent- eligible invention." Alice, 134 S. Ct. at 2359 (concluding claims "simply instruct[ing] the practitioner to implement the abstract idea of intermediated 2 Alice also confirmed that if a patent's systems claims are no different in substance from its method claims, they will rise and fall together. 134 S. Ct. at 2360. The same was true of the Alice patent's media claims. Id. 9 Appeal2017-000094 Application 13/730,550 settlement on a generic computer" not patent eligible); see also Ultramercial, 772 F .3d at 715-16 (claims merely reciting abstract idea of using advertising as currency as applied to particular technological environment of the Internet not patent eligible); Accenture Global Servs., GmbH v. Guidewire Software, Inc., 728 F.3d 1336, 1344--45 (Fed. Cir. 2013) (claims reciting "generalized software components arranged to implement an abstract concept [of generating insurance-policy-related tasks based on rules to be completed upon the occurrence of an event] on a computer" not patent eligible); Dealertrack, Inc. v. Huber, 674 F.3d 1315, 1333-34 (Fed. Cir. 2012) ("[s]imply adding a 'computer aided' limitation to a claim covering an abstract concept, without more, is insufficient to render [a] claim patent eligible"). Limiting such an abstract concept of "organizing information through mathematical correlations and making a selection based thereon" to generic components, such as a processor, does not make the abstract concept patent-eligible under 35 U.S.C. Â§ 101. In addition, we note Appellants' claims are not rooted in computer technology as outlined in DDR Holdings. Instead, Appellants' claims simply recite an abstract concept of "organizing information through mathematical correlations and making a selection based thereon," i.e., collecting and analyzing information. Appellants fail to provide any evidence as to how their invention is "a technological improvement" (see App. Br. 25). Appellants likewise have not adequately explained how the dependent claims constitute a technical improvement that is significantly more than the abstract idea (App. Br. 34--45). Finally, addressing Appellants' argument regarding the absence of a prior art rejection, although "novelty in implementation of the idea is a 10 Appeal2017-000094 Application 13/730,550 factor to be considered ... in the second step of the Alice analysis" ( Ultramercial, 772 F .3 d at 715 (emphasis added)), "the addition of merely novel or non-routine components to the claimed idea [does not] necessarily tum[] an abstraction into something concrete" (id.). "Groundbreaking, innovative, or even brilliant discovery does not by itself satisfy the Â§ 101 inquiry." Ass 'nfor Molecular Pathology v. Myriad Genetics, Inc., 133 S. Ct. 2107, 2117 (2013). "[P]atent-eligibility does not tum on ease of execution or obviousness of application. Those are questions that are examined under separate provisions of the Patent Act." Rapid Litig. Mgmt. Ltd. v. CellzDirect, Inc., 827 F.3d 1042, 1052 (Fed. Cir. 2016) (citing Mayo, 132 S. Ct. at 1304). Thus, the mere fact that the Examiner has not presented a prior art rejection underÂ§Â§ 102 and 103 does not overcome aÂ§ 101 rejection. Because Appellants' claims are directed to a patent-ineligible abstract concept and do not recite something "significantly more" under the second prong of the Alice analysis, we sustain the Examiner's rejection of claims 2- 24 under 35 U.S.C. Â§ 101 as being directed to non-statutory subject matter in light of Alice and its progeny. For the foregoing reasons, Appellants' contentions are unpersuasive as to error in the rejection under 35 U.S.C. Â§ 101. 11 Appeal2017-000094 Application 13/730,550 DECISION We affirm the Examiner'sÂ§ 101 rejection. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a)(l )(iv). AFFIRMED 12