Ex Parte Pradeep et al

Patent Trials and Appeals Board

Jul 3, 2019

12410380 - (D) (P.T.A.B. Jul. 3, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/410,380 03/24/2009
81905 7590 07/08/2019
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.
20225/030US 3091
EXAMINER
BOSWELL, BETH V
ART UNIT PAPER NUMBER
3600
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):
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
Exparte ANATHA PRADEEP, ROBERT T. KNIGHT, and
RAMACHANDRAN GURUMOORTHY 1
Appeal 2018-000455
Application 12/410,380
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 2-8, 10, 12-18, and 20-23, 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.
1 According to the Appellants, the real party in interest is The Nielsen
Company (US), LLC. (App. Br. 2).
Appeal 2018-000455
Application 12/410,380
THE INVENTION
The Appellants' claimed invention is directed to matching
advertisements to particular neurological profiles (Spec., para 1, 22, and 30).
Claim 3, reproduced below, is representative of the subject matter on appeal.
3. A method comprising:
generating, by executing an instruction with a processor, a
profile associated with a user based on user information, the user
information including neuro-response data obtained using
Electroencephalography (EEG), the profile including a simultaneous
visual element processing capability, the simultaneous visual element
processing capability associated with the ability of the user to process
simultaneously presented visual elements, the simultaneous visual
element processing capability determined by:
analyzing, by executing an instruction with the processor, the
neuro-response data to identify a user response;
determining, by executing an instruction with the processor, a
number of visual elements in a stimulus to invoke the user response to
the stimulus based on the analysis; and
assigning, by executing an instruction with the processor, the
simultaneous visual element processing capability to the user based
on the determination;
based on the profile, executing an instruction with the
processor to automatically select an advertisement having or modify
an advertisement to have a number of simultaneous visual elements
corresponding to the simultaneous visual element processing
capability of the user; and
outputting, by executing an instruction with the processor, the
selected advertisement or the modified advertisement for exposure to
the user.
THE REJECTION
The following rejection is before us for review:
Claims 2-8, 10, 12-18, and 20-23 are rejected under 35 U.S.C. § 101
as being directed to non-statutory subject matter.
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Application 12/410,380
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
Re} ection under 3 5 U.S. C. § 101
The Appellants argue that the rejection of claim 3 is improper because
the claim is not directed to an abstract idea (App. Br. 13-22; Reply Br. 2-5).
The Appellants argue further that the claim is "significantly more" than the
alleged abstract idea (App. Br. 23-25; Reply Br. 5-7).
In contrast, the Examiner has determined that the rejection of record is
proper (Final Action 2-8; Ans. 6-10).
We agree with the Examiner. An invention is patent eligible if it
claims a "new and useful process, machine, manufacture, or composition of
matter." 35 U.S.C. § 101. 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. E.g., Alice Corp. v. CLS
Bank Int'!, 573 U.S. 208,216 (2014).
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. Id. at 217-18 ( citing Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 566 U.S. 66, 75-77 (2012)). In accordance with that framework,
we first determine what concept the claim is "directed to." See Alice,
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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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, 69 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as "molding rubber products" (Diamond v. Diehr, 450 U.S. 175, 192
(1981 )); "tanning, dyeing, making waterproof 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))).
In Diehr, the claim at issue recited a mathematical formula, but the
Supreme Court held that "[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."
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Id. (internal 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.").
The PTO recently published revised guidance on the application of
§ 101. 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed.
Reg. 50 (Jan. 7, 2019) ("Guidance"). Under the 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); and
(2) additional elements that integrate the judicial exception into
a practical application (see MPEP § 2106.05(a)-(c), (e)-(h)).
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 § 2106.05(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.
See Guidance.
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
that recites an abstract idea must include 'additional features' to ensure 'that
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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.
Here, the Examiner has determined that claim 3 is directed to the
concept of "gathering neuro-graphical/visual data for selecting an
advertisement tied to 'comparing new and stored information using rules to
identify option and organizing, storing, and transmitting information/data'
which is an idea of itself' and, therefore, an abstract idea (Final Act. 6; see
also Ans. 6). We substantially agree with the Examiner in this regard as the
steps of claim 3 (italicized in the claim above) are directed to using user
response data to select an advertisement, which is a fundamental economic
practice and abstract concept. See Elec. Power Grp., 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). In 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.
Thus, we consider claim 3 to be directed to an abstract idea as
identified above.
Turning to the second step of the Alice and Mayo framework, we
determine that claim 3 does not contain an inventive concept sufficient to
"transform" the abstract nature of the claim into a patent-eligible application.
The claim does not improve computer functionality, improve another field or
technology, utilize a particular machine, or effect a physical transformation.
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Rather, we determine that nothing in the claim imposes a meaningful limit
on the judicial exception, such that the claim is more than a drafting effort to
monopolize the judicial exception.
For example, in claim 3 the steps of [l] "generating ... a profile
associated with a user based on user information"; [2] "analyzing, by
executing an instruction with the processor"; [3] "determining ... a number of
visual elements in a stimulus to invoke the user response to the stimulus
based on the analysis"; [4] "assigning ... the simultaneous visual element
processing capability to the user based on the determination"; [5] "based on
the profile, executing an instruction with the processor to automatically
select an advertisement"; [6] "outputting ... the selected advertisement or the
modified advertisement for exposure to the user" are merely conventional
steps performed by a generic computer that do not improve computer
functionality. That is, these recited steps [ 1 ]-[ 6] "do not purport to improve
the functioning of the computer itself' but are merely generic functions
performed by a conventional processor. Likewise, these same steps [ 1 ]-[ 6]
listed above do not improve technology or a technical field and merely use
generic computer components and functions to perform the steps. Also, the
recited method steps [l]-[6] above do not require a "particular machine" and
can be utilized with a general purpose computer, and the steps performed are
purely conventional. In this case, the general purpose computer is merely an
object on which the method operates in a conventional manner and does not
provide "significantly more" to the claim beyond a nominal or insignificant
execution of the method. Further, the claim as a whole fails to effect any
particular transformation of an article to a different state in a manner that
would render the claim "significantly more" than the abstract idea. The
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recited steps [ 1 ]-[ 6] fail to provide meaningful limitations to limit the
judicial exception and rather are mere instructions to apply the method to a
generic computer. Considering the elements of the claim both individually
and as "an ordered combination" the functions performed by the computer
system at each step of the process are purely conventional. Each step of the
claimed method does no more than require a generic computer to perform a
generic computer function.
Further the claim fails to add a specific limitation beyond the judicial
exception that is not well-understood, routine, and conventional in the field.
Rather the claim uses well-understood, routine, and conventional activities
previously known in the art at a high level of generality to the judicial
exception. The Specification at paragraphs 77 and 79, for example,
describes using conventional computer components such as processors, and
ROM and RAM devices in a conventional manner. The claim specifically
includes recitations for a processor to implement the method but these
computer components are all used in a manner that is well-understood,
routine, and conventional in the field. The Appellants have not shown these
claimed generic computer components, which are used to implement the
claimed method, are not well understood, routine, or conventional in the
field. The Appellants have not demonstrated that the processor described in
the Specification at page 77 is not a general purpose computer component
beyond those known to be routine and conventional known to perform
similar functions in a well-understood manner.
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,
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134 S.Ct. at 2354 (quoting Mayo, 132 S.Ct. 1289, 1293 (2012)), "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.").
The Appellants in the Appeal Brief at page 16 have also cited
to Enfzsh, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016) to show
that the claim is not abstract but the claims in that case were not similar in
scope to the claim here and in contrast were directed to a self-referential data
table.
The Appellants have also cited to McRO, Inc. v. Bandai Namco
Games Am. Inc., 837 F.3d 1299 (Fed. Cir. 2016) but the claims in that case
are distinguished from this case in being directed to rules for lip sync and
facial expression animation.
For these reasons the rejection of claim 3 is sustained.
With respect to dependent claims 5 and 6, the Appellants argue that
the base claim 3 does not contain an abstract concept but fail to address any
step in either of claims 5 and 6. Regardless, a review of these claims has
determined that they are similar in scope to claim 3 and the rejection of these
claims is sustained as well.
With respect to independent claim 10, the Appellants argue that the
claim contains limitations completely different than those in claim 3 which
have not been addressed (App. Br. 37). However, in making these
arguments the Appellants fail to point out what those differences in the
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limitations between the claims are. Regardless, our review of claim 10 has
determined that it is similar in scope to clam 3 and the rejection of this claim
is sustained as well.
With regard to claims 13 and 20, the Appellants, at pages 39-41 of the
Appeal Brief, do provide, in bold text, language that is separately recited in
each of claims 13 and 20. Our review of claims 13 and 20 has determined
that both are similar in scope to clam 3 despite the slight difference in
language and the rejection of these claims is sustained as well.
With regard to claim 22, the Appellants argue that the claim sets forth
that the "profile template is associated with a second advertisement and the
processor is to further automatically select the advertisement bases on the
second advertisement" (id. at 35). With regard to claim 23 the Appellants
argue that the claim provides a specific way to modify the advertisement by
"placing a first visual element in a first placement in the advertisement and
by placing a second visual element in a second placement in the
advertisement" (id. at 36). Our review of claims 22 and 23 has determined
that both are similar in scope to clam 3 despite the slight difference in
language and the rejection of these claims is sustained as well.
The Appellants have provided the same arguments for the remaining
claims and the rejection of these claims is sustained as well.
CONCLUSIONS OF LAW
We conclude that Appellants have not shown that the Examiner erred
in rejecting claims 2-8, 10, 12-18, and 20-23 under 35 U.S.C. § 101.
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Application 12/410,380
DECISION
The Examiner's rejection of claims 2-8, 10, 12-18, and 20-23 is
sustained.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § l.136(a)(l)(iv). See
37 C.F.R. § 41.50(±).
AFFIRMED
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