Ex Parte Pradeep et al

Patent Trial and Appeal Board

Dec 26, 2018

12410372 (P.T.A.B. Dec. 26, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/410,372 03/24/2009
81905 7590 12/28/2018
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.
20225/031 3076
EXAMINER
BOSWELL, BETH V
ART UNIT PAPER NUMBER
3600
NOTIFICATION DATE DELIVERY MODE
12/28/2018 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
Appeal2017-010154
Application 12/410,372
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 22--43, 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.
1 The real party in interest is The Nielsen Company (US), LLC. App Br. 2.
Appeal2017-010154
Application 12/410,372
THE INVENTION
The Appellants' claimed invention is directed to determining
presentation measures using neurographics (Spec., para. 1 ). Claim 22,
reproduced below, is representative of the subject matter on appeal.
22. A method, comprising:
analyzing, via a processor, neuro-response data and
physiological response data collected from a subject presented with
source material;
determining, via the processor, a neurographic signature for the
subject based on the neuro-response data and the physiological
response data;
comparing, via the processor, the neurographic signature to a
first reference neurographic signature, the first reference neurographic
signature based on first reference neuro-response data and first
reference physiological response data;
comparing, via the processor, the neurographic signature to a
second reference neurographic signature, the second reference
neurographic signature based on second reference neuro-response data
and second reference physiological response data, the first reference
neurographic signature and the second reference neurographic
signature belonging to a first neurographic aggregate representing a
first population of persons having a first demographic attribute in
common;
comparing, via the processor, the neurographic signature to a
third reference neurographic signature, the third reference
neurographic signature based on third reference neuro-response data
and third reference physiological response data;
comparing, via the processor, the neurographic signature to a
fourth reference neurographic signature, the fourth reference
neurographic signature based on fourth reference neuro-response data
and fourth reference physiological response data, the third reference
neurographic signature and the fourth reference neurographic
signature belonging to a second neurographic aggregate representing a
second population of persons having a second demographic attribute
m common;
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Application 12/410,372
identifying, via the processor, as a match to the neurographic
signature one or more of the first reference neurographic signature,
the second reference neurographic signature, the third reference
neurographic signature or the fourth reference neurographic signature;
identifying, via the processor, an emotional expression based on the
match;
selecting, via the processor, an advertisement or entertainment
based on the emotional expression; and
improving an effectiveness of the source material by
dynamically inserting the advertisement or entertainment into the
source material for presentation to the subject.
App. Br. 40-41 (Claims Appendix).
THE REJECTION
The following rejection is before us for review:
Claims 22--43 are rejected under 35 U.S.C. § 101 as being directed to
non-statutory subject matter.
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. 2
ANALYSIS
Rejection under 35 USC§ 101
The Appellants argue that the rejection of claim 22 is improper
because the claim is not directed to an abstract idea (App. Br. 12-29, Reply
2 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 12/410,372
Br. 2-5). The Appellants also argue the claim is "significantly more" than
the alleged abstract idea (App. Br. 30-35, Reply Br. 5, 6).
In contrast, the Examiner has determined that the rejection of record is
proper (Final Rej. 4--7, Ans. 3-9).
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 22 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
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
selecting material, such as an advertisement or entertainment, based on
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Application 12/410,372
neurographics. 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. See Electric Power
Group, LLC v. Alstom S.A., 830 F.3d 1350 (Fed. Cir. 2016) (collecting
information, analyzing it, and displaying results from certain results of the
collection and analysis was held to be an abstract idea); Intellectual Ventures
I LLC v. Capital One Bank (USA) 792 F. 3d 1363, 1369 (Fed. Cir. 2015)
(tailoring content on a website based on a user's location and time of day
was held to be a fundamental economic practice and an abstract idea).
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
not. The Specification at paragraphs 21 and 85, for example, describes using
conventional computer components such as cameras, computers, webcams,
DVD's, RAM, and ROM in a conventional manner.
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 (App. Br. 26-30) 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 Collaborative Servs. v. Prometheus Labs.,
Inc., 132 S. Ct. 1289, 1293 (2012)), "the absence of complete preemption
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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 22 is sustained.
Claim 39 is directed to similar subject matter and the rejection of this claim
is sustained as well for which the same arguments have been presented.
We reach the same conclusion as to independent system claim 31 and
its dependent claims for which similar arguments have been submitted.
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 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 same or similar arguments have been presented for the dependent
claims and the rejection of these claims is sustained as well for the same
reasons given above.
CONCLUSIONS OF LAW
We conclude that Appellants have not shown that the Examiner erred
in rejecting claims 22--43 under 35 U.S.C. § 101.
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DECISION
The Examiner's rejection of claims 22--43 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)(l)(iv). See
37 C.F.R. § 41.50(±).
AFFIRMED
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