Ex Parte Pradeep et al

Patent Trial and Appeal Board

Jan 31, 2018

13730564 (P.T.A.B. Jan. 31, 2018)

United States Patent and Trademark Office
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/730,564 12/28/2012 Anantha Pradeep 20225/017US03 3602
81905 7590 02/02/2018
Hanley, Flight & Zimmerman, LLC (Nielsen)
150 S. Wacker Dr. Suite 2200
Chicago, IL 60606
EXAMINER
TROTTER, SCOTT S
ART UNIT PAPER NUMBER
3696
NOTIFICATION DATE DELIVERY MODE
02/02/2018 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):
j flight @ 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 2016-006360
Application 13/730,564
Technology Center 3600
Before CARLA M. KRIVAK, HUNG H. BUI, and
DAVID J. CUTITTA II, Administrative Patent Judges.
KRIVAK, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 2-7, 9-20, and 22. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Appeal 2016-006360
Application 13/730,564
STATEMENT OF THE CASE
Appellants’ invention is directed to “selection and meta-tagging of
advertisement breaks” (Spec. ^ 2).
Independent claim 2, reproduced below, is exemplary of the subject
matter on appeal.
2. A method comprising:
analyzing first neuro-response data gathered from a first
subject exposed to source material to determine a first
resonance of the first subject to a first portion of the source
material and a second resonance of the first subject to a second
portion of the source material, the first neuro-response data
including two frequency bands of electroencephalographic data
and the first resonance based on a coherence between the two
frequency bands;
identifying, using a processor, a first priming level of the
first portion of the source material based on a first attribute of
the source material and the first resonance; and
identifying, using the processor, a second priming level
of the second portion of the source material based on a second
attribute of the source material and the second resonance; and
selecting (a) the first portion of the source material or (b)
the second portion of the source material for inclusion of an
advertisement based on the first priming level and the second
priming level.
REFERENCES and REJECTIONS
The Examiner rejected claims 2-7, 9-20, and 22 under a non-statutory
obviousness-type double patenting over claims 1-21 of US 8,392,2557
1 The Examiner rejected claims 1-21 under the double patenting rejection
(Final Act. 3; Ans. 3). However, as Appellants correctly set forth in their
Appeal Brief, it is claims 2-7, 9-20, and 22, that are rejected as claims 1, 8,
and 21 were cancelled (App. Br. 2). We consider the Examiner’s recitation
of incorrect claims as harmless error.
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The Examiner rejected claims 2-7, 9-20, and 22 under 35 U.S.C.
§ 101 as directed to non-statutory subject matter.
ANALYSIS
With respect to the non-statutory obviousness-type double patenting
rejection, we summarily sustain this rejection as no arguments have been
submitted nor has a terminal disclaimer been filed.
35 U.S.C. §101
Under 35 U.S.C. § 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.” The Supreme Court has “long held that
this provision contains an important implicit exception: Laws of nature,
natural phenomena, and abstract ideas are not patentable.” Alice Corp. v.
CLS Bank Int’l, 134 S. Ct. 2347, 2354 (2014) (quoting Ass’n for Molecular
Pathology v. Myriad Genetics, Inc., 133 S. Ct. 2107, 2116 (2013)). The
Supreme Court in Alice reiterated the two-step framework previously set
forth in Mayo Collaborative Services v. Prometheus Laboratories, Inc., 132
S. Ct. 1289, 1300 (2012), “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 that analysis is to “determine whether the claims at issue are directed
to one of those patent-ineligible applications of those concepts,” such as an
abstract idea. The Court acknowledged in Mayo that “all inventions at some
level embody, use, reflect, rest upon, or apply laws of nature, natural
phenomena, or abstract ideas.” Mayo, 132 S. Ct. at 1293. We, therefore,
look to whether the claims focus on a specific means or method that
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improves the relevant technology or are instead directed to a result or effect
that itself is the abstract idea and merely invoke generic processes and
machinery. See Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1336 (Fed.
Cir. 2016). If the claims are not directed to an abstract idea, the inquiry
ends. Otherwise, the inquiry proceeds to the second step where the elements
of the claims are considered “individually and ‘as an ordered combination’
to determine whether the additional elements ‘transform the nature of the
claim’ into a patent-eligible application.” Alice, 134 S. Ct. at 2355 (quoting
Mayo, 132 S. Ct. at 1298, 1297).
Alice/Mayo—Step 1
Turning to the first part of the Alice!Mayo analysis, the Examiner
concludes claim 2 is directed to “the abstract idea of analyzing neuro­
response data to select source material for inclusion as part of an
advertisement” (Final Act. 4). The Examiner also concludes the steps of
identifying and selecting in conjunction with the analyzing results in “1)
collecting data, 2) analyzing data within the collected data set, and 3)
providing the analysis based on that data,” which can all be performed by
humans, and are thus, abstract. (Ans. 5).
Appellants contend the Examiner erred in rejecting claims 2-7, 9-20,
and 22 under 35 U.S.C. §101 as directed to non-statutory subject matter
because the claims amount to more than an abstract idea (App. Br. 13) and
the Examiner uses overbroad reasoning (App. Br. 15).2 However, the
2 Appellants argue independent claims 11 and 16 separately (App. Br. 36-
39; note page 36 recites claim 16, however, claim 11 is argued on pages 36-
38). As claim 11 provides no new arguments and claim 16 was argued for
the same reasons as claim 2, our analysis is directed to claim 2.
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Examiner concludes, and we agree, the claims are “functionally ‘organizing
information through mathematical correlations,’” and are, thus, abstract.
(Ans. 5).
Appellants argue the claims are not directed to an abstract idea
because the alleged abstract idea of “analyzing neuro-response data ... is
not similar to any of the concepts the courts have identified as abstract
ideas” (App. Br. 14). We note, however, that the examples set forth in the
Interim Guidance are just that, examples. Further, the claims are directed to
collecting and analyzing data, which is an abstract idea. We observe that a
number of Federal Circuit cases have found claims that simply manipulate
data ineligible, like those at issue here, see, e.g., Fair Warning 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 § 101 undergirds the information-based
category of abstract ideas’”) (quotation omitted); 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”) (quotation omitted); Elec. Power Grp.,
LLCv. Alstom S.A., 830 F.3d 1350, 1355 (Fed. Cir. 2016) (“Merely
requiring the selection and manipulation of information—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).
Appellants further contend the Examiner’s analysis is based on an
abstract idea and not the claims as a whole. However, as noted above, we
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agree claim 2 is directed to analyzing, identifying, and then making a
selection based on the analysis and identification. Appellants’ claims do not
demonstrate how the data was obtained beyond merely using generic
computer technology to perform routine calculations, or what the
improvement is in their analysis, identification, and selection steps.
Appellants also require “actual evidence” of the abstract idea, which
they state the Examiner has not provided (App. Br. 32) and assert the
Examiner failed to establish a prima-facie case (App. Br. 33). Actual
evidence, however, is not required in a §101 rejection (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. Accordingly, courts do not rely on
evidence that a claimed concept is a judicial exception, and in most cases
resolve the ultimate legal conclusion on eligibility without making any
factual findings”)). Evidence may be helpful in certain situations where, for
instance, facts are in dispute. As no facts are in dispute in the present case,
evidence is not necessary.
To the extent Appellants suggest that the July 2015 Update (or the
May 2016 Memorandum) requires particular steps performed in specific
ways to establish that a claim is directed to an abstract idea, i.e., a “prima
facie” case, Appellants are mistaken (App. Br. 33). Rather, 35 U.S.C. § 132
sets forth a more general notice requirement whereby the applicant is
notified of the reasons for a rejection together with such information as may
be useful in judging the propriety of continuing with prosecution of the
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application (see, e.g., In re Jung, 637 F.3d 1356, 1362 (Fed. Cir. 2011); see
also July 2015 Update 6 (setting forth a general notice requirement whereby
the Examiner should “clearly articulat[e] the reason(s) why the claimed
invention is not eligible” when rejecting on under 35 U.S.C. § 101); May
2016 Memorandum 2 (“the rejection . . . must provide an explanation . . .
which [is] sufficiently clear and specific to provide applicant sufficient
notice of the reasons for ineligibility”) (emphasis added)). In the instant
case, we find the Examiner has provided an adequate explanation to meet
said notice requirement. Additionally, we find the Examiner does “focus on
the claims as a whole” contrary to Appellants’ contentions (App. Br. 17;
Ans. 5-6).
Alice/Mayo—Step 2
Appellants also allege the claims “do not seek to tie up the judicial
exception” of monopolizing a fundamental building block of science or
technology (App. Br. 18, 17). We do not agree. The claim recites
“analyzing first neuro-response data” which is just that—data. Appellants
cite Alice’s cite to Diamond v. Diehr, 450 US 175, stating “claim 2 is similar
to the situation presented in Diehr in that it improves a technological
process” and the words of the claims have been ignored (App. Br. 25-26).
As Appellants point out, Diehr used a well-known equation in a novel
manner “in a process designed to solve a technological problem” (emphasis
omitted) (App. Br. 25). In the instant case, Appellants have not presented
what technological problem is being solved; the claim merely recites
selecting a portion of source material to be included in an advertisement
based on priming levels.
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Appellants argue the claim “provides valuable and comprehensive
information to, for example, advertisers with respect to selecting a location
in a source material for insertion of an advertisement to maximize the
effectiveness of the advertisement in view of the source material and the
subject’s neurological responses to the source material” (App. Br. 25).
Appellants, however, do not appear to claim how the analyzing, identifying,
and selecting steps include “comprehensive information” given that first and
second priming levels are identified and then one of either the first portion or
second portion is selected for inclusion, with no indication of how or why
the particular portion is selected. Appellants also provide no evidence as to
how their invention is “an important technological improvement” (App.
Br. 27-31). We note using neuro-response data for influencing
advertisements is known, and thus, is not new (see WO 2011062795 Al,
Advertisement Exchange Using Neuro-Response Data, having a priority date
of Nov. 9, 2009). We also agree with the Examiner the
“electroencephalographic data is data being gathered in an ordinary way for
such data so it is not something more” (as the “scanner in CET vs. Wells
Fargo was not something more”) (Ans. 5-6).
Appellants’ argument that their computer implemented process does
more than perform generic functions is also without merit because the
process, as the Examiner correctly finds, merely analyzes, identifies, and
selects. These are well understood, routine, and conventional functions—
nothing more than routine data manipulation (App. Br. 31; Ans. 5).
Because we agree with the Examiner’s analysis and find Appellants’
arguments insufficient to show error, we sustain the rejection of claims 2,
10-20, 21, and 22 under 35 U.S.C. § 101.
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Claims 3-7 and 9
Appellants contend claim 3-7 and 9 recite “substantially more than
the alleged abstract idea” (App. Br. 33-36). We do not agree.
The dependent claims describe various steps of analyzing, appraising,
and separating, which do little to patentably transform the abstract idea (cf.
Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229 (Fed. Cir. 2016) (“These claims
depend from independent claims which were found to be directed to
unpatentable subject matter, as discussed above. Merely appending this
preexisting practice to those independent claims does not make them
patentable. It is an insignificant post-solution activity.”) Further, where all
claims are directed to the same abstract idea, “addressing each claim of the
asserted patents . . . [is] unnecessary” (see, Content Extraction &
Transmission LLC v. Wells Fargo Bank, Nat’l Ass ’n, 776 F.3d 1343, 1348
(Fed. Cir. 2014).
Because we agree with the Examiner’s analysis and find Appellants’
arguments insufficient to show error, we sustain the rejection of claims 3-7
and 9 under 35 U.S.C. § 101.
DECISION
The Examiner’s decision rejecting claims 2-7, 9-20, and 22 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)(l)(iv).
AFFIRMED
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