Ex Parte PRADEEP et al

Patent Trial and Appeal Board

Sep 17, 2018

12234372 (P.T.A.B. Sep. 17, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/234,372 09/19/2008
81905 7590 09/19/2018
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.
NFCSP018 3946
EXAMINER
BOSWELL, BETH V
ART UNIT PAPER NUMBER
3623
NOTIFICATION DATE DELIVERY MODE
09/19/2018 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
Appeal 2017-004118
Application 12/234,372
Technology Center 3600
Before MURRIEL E. CRAWFORD, BIBHU R. MOHANTY, and
NINA L. MEDLOCK, Administrative Patent Judges.
MOHANTY, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellants seek our review under 35 U.S.C. § 134 of the final
rejection of claims 1--4, 6-13, and 15-23 which are all the claims pending in
the application. We have jurisdiction under 35 U.S.C. § 6(b ).
SUMMARY OF THE DECISION
We AFFIRM.
Appeal 2017-004118
Application 12/234,372
THE INVENTION
The Appellants' claimed invention is directed to personalized content
delivery using neuro-response measurements (Spec., para. 1 ). Claim 1,
reproduced below, is representative of the subject matter on appeal.
1. A method, comprising:
analyzing, using a processor, neuro-response data collected
from a user exposed to a source material to determine a user
resonance;
determining, based on the user resonance, one or more priming
characteristics associated with the source material;
obtaining one or more preference characteristics associated with
a user;
performing an analysis, using the processor, of the one or more
priming characteristics associated with the source material with the
one or more preference characteristics associated with the user;
selecting an advertisement for introduction into the source
material based on the analysis of the one or more priming
characteristics and the one or more preference characteristics; and
dynamically inserting the advertisement into the source material
for presentation to the user.
THE REJECTION
The following rejection is before us for review:
Claims 1--4, 6-13, and 15-23 are rejected under 35 U.S.C. § 101 as
being directed to non-statutory subject matter.
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Application 12/234,372
FINDINGS OF FACT
We have determined that the findings of fact in the Analysis section
below are supported at least by a preponderance of the evidence. 1
ANALYSIS
Rejection under 35 USC§ 101
The Appellants argue that the rejection of claim 1 is improper because
the claim is not directed to an abstract idea (Appeal Br. 11-25, Reply Br. 2-
5). The Appellants also argue that the claim is "significantly more" than the
alleged abstract idea (Appeal Br. 26-28, Reply Br. 5-7).
In contrast the Examiner has determined that the rejection is proper
(Final Rej. 5-7, Ans. 3---6).
We agree with the Examiner. Under 35 U.S.C. § 101, an invention is
patent-eligible if it claims a "new and useful process, machine, manufacture,
or composition of matter." 35 U.S.C. § 101. The Supreme Court, however,
has long interpreted § 101 to include an implicit exception: "laws of nature,
natural phenomena, and abstract ideas" are not patentable. See, e.g., Alice
Corp. Pty Ltd. v. CLS Bank Int'!, 134 S. Ct. 2347, 2354 (2014).
In judging whether claim 1 falls within the excluded category of
abstract ideas, we are guided in our analysis by the Supreme Court's two-
step framework, described in Mayo and Alice. Id. at 2355 (citing Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1296-97
(2012)). In accordance with that framework, we first determine whether the
1 See Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988)
( explaining the general evidentiary standard for proceedings before the
Patent Office).
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Application 12/234,372
claim is "directed to" a patent-ineligible abstract idea. If so, we then
consider the elements of the claim both individually and as "an ordered
combination" to determine whether the additional elements "transform the
nature of the claim" into a patent-eligible application of the abstract idea. Id.
This is a search for an "inventive concept" an element or combination of
elements sufficient to ensure that the claim amounts to "significantly more"
than the abstract idea itself. Id. The Court also stated that "the mere
recitation of a generic computer cannot transform a patent-ineligible abstract
idea into a patent-eligible invention." Id. at 2358.
Here, we determine that the claim is directed to the concept of
analyzing data to select an advertisement for a user. This is a method of
organizing human activities or a fundamental economic practice long
prevalent in our system of commerce, and is an abstract idea beyond the
scope of§ 101. In Electric Power Group, LLC v. Alstom S.A., 830 F.3d
1350 (Fed. Cir. 2016), collecting information, analyzing it, and displaying
the results of the collection and analysis was held to be an abstract idea. The
claim at issue here similarly collects information, analyzes it, and displays
certain results and is considered an abstract idea as well. The concept of
selecting an advertisement based on the user is also a fundamental economic
practice long prevalent in our system of commerce and considered an
abstract idea in this regard as well.
We next consider whether additional elements of the claim, both
individually and as an ordered combination, transform the nature of the
claim into a patent-eligible application of the abstract idea, e.g., whether the
claim does more than simply instruct the practitioner to implement the
abstract idea using generic computer components. We conclude that it does
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Application 12/234,372
not. The Specification at paragraph 96 describes using generic computer
components such as hard disks, optical media, ROM, and RAM, in a manner
known for their known functions.
Considering each of the claim elements in tum, the function
performed by the computer system at each step of the process is purely
conventional. Each step of the claimed method does no more than require a
generic computer to perform a generic computer function.
We note the point about pre-emption (Appeal Br. 21-25). Although
pre-emption "might tend to impede innovation more than it would tend to
promote it, 'thereby thwarting the primary object of the patent laws'" (Alice,
134 S. Ct. at 2354 (quoting Mayo, 132 S. Ct. at 1293), "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 e-commerce setting do not make
them any less abstract.").
For these above reasons the rejection of claim 1, and its dependent
claims which were not separately argued, is sustained. Claim 21 is drawn to
similar subject matter and the rejection of this claim and its dependent
claims is sustained as well.
We reach the same conclusion as to independent system claims 10 and
19 and their dependent claims for which the same or similar arguments have
been provided. Here, as in Alice, "the system claims are no different in
substance from the method claims. The method claims recite the abstract
idea implemented on a generic computer; the system claims recite a handful
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Application 12/234,372
of generic computer components configured to implement the same idea."
Alice 134 S. Ct. at 2351. "[T]he mere recitation of a generic computer
cannot transform a patent-ineligible abstract idea into a patent-eligible
invention. Stating an abstract idea 'while adding the words 'apply it' is not
enough for patent eligibility." Id. at 2358 (quoting Mayo, 132 S. Ct.
at 1294).
The Appellants have specifically argued that the limitation in claim 7
requiring "wherein the resonance is measured by target and distracter event
related potential (ERP) measurements to determine differential
measurements of ERP time domain components at multiple regions of the
brain (DERP)" renders the claim not an abstract idea because the cited user
resonance is a "new metric" (Appeal Br. 31, 32). The Appellants make
similar arguments for claim 16, which contains a similar limitation.
The Appellants also similarly specifically argue that the limitation in
claim 8 requiring "wherein the resonance is further measured by an event
related time-frequency analysis of differential response to assess the
attention, emotion and memory retention (DERPSPs) across multiple
frequency bands" renders the claim not an abstract idea because the cited
user resonance is a "new metric". The Appellants make a similar argument
for claim 17 which contains a similar limitation.
In claims 7, 8, 16, and 17 the arguments that each specific claim
limitation cited above is a "new metric" are not deemed persuasive to render
the respective claims not being directed to an abstract idea. Here, the argued
claimed citations are still directed to mere data for measurements and
frequency for the "user resonance" and as used in the claim are data and do
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not change the abstract nature of the claim. For this reason the arguments
for claims 7, 8, 16, and 17 are not deemed persuasive.
CONCLUSIONS OF LAW
We conclude that Appellants have not shown that the Examiner erred
in rejecting claims 1--4, 6-13, and 15-23 under 35 U.S.C. § 101.
DECISION
The Examiner's rejection of claims 1--4, 6-13, and 15-23 is sustained.
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)(l )(iv).
AFFIRMED
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