Ex Parte Rupp et al

Patent Trial and Appeal Board

Jun 8, 2018

13464591 (P.T.A.B. Jun. 8, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/464,591 05/04/2012
81905 7590 06/12/2018
Hanley, Flight & Zimmerman, LLC (Nielsen)
150 S. Wacker Dr. Suite 2200
Chicago, IL 60606
FIRST NAMED INVENTOR
Heather Rupp
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/EM039040 2642
EXAMINER
BOYCE, ANDRE D
ART UNIT PAPER NUMBER
3623
NOTIFICATION DATE DELIVERY MODE
06/12/2018 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 HEATHER RUPP and W. BRYAN SMITH
Appeal2017-001949
Application 13/464,591 1
Technology Center 3600
Before DEBRA K. STEPHENS, DANIEL J. GALLIGAN, and
DAVID J. CUTITTA II, Administrative Patent Judges.
STEPHENS, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1-3, 5-7, 14--18, 20, 23, 35, 39, 45, 47, and 55-60, which are all of
the claims pending in the application. We have jurisdiction under 35 U.S.C.
§ 6(b). Claims 4, 8-13, 19, 21, 22, 24--34, 36-38, 40-44, 46, and 48-54
have been cancelled.
We AFFIRM.
1 According to Appellants, the real party in interest is The Nielsen Company
(US), LLC (App. Br. 2).
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CLAIMED SUBJECT MATTER
According to Appellants, the claims are directed to determining the
effect that a test subject has on a panelist (Spec. i-f 21, Abstract). Claim 1,
reproduced below, is illustrative of the claimed subject matter:
1. A method, comprising:
using a first data collection device to obtain first implicit
response data from a panelist at a first time period before an
interaction during which the panelist is exposed to a test subject;
using a second data collection device to obtain first neuro-
response data from the panelist at the first time period, the first
implicit response data different than the first neuro-response
data;
using the first data collection device to obtain second
implicit response data from the panelist at a second time period
after the interaction;
using the second data collection device to obtain second
neuro-response data from the panelist at the second time period,
the second implicit response data different than the second
neuro-response data;
determining, with a processor, a first impact of the test
subject on the panelist based on the first and second implicit
response data;
determining, with the processor, a second impact of the
test subject on the panelist based on the first neuro-response data
and the second neuro-response data; and
determining an effectiveness of the test subject based on
the first impact and the second impact.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Pradeep US 8,635,105 B2
2
Jan. 21, 2014
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Application 13/464,591
Pradeep II US 8,762,202 B2
REJECTIONS
June 24, 2014
Claims 1-3, 5-7, 14--18, 20, 23, 35, 39, 45, 47, and 55-60 stand
rejected under 35 U.S.C. § 101 as being directed to patent-ineligible subject
matter (Final Act. 3--4).
Claims 1-3, 7, 14--18, 20, 23, 35, 39, 45, and 55---60 stand rejected
under 35 U.S.C. § 102(e) as being anticipated by Pradeep (id. at 5-16.).
Claims 5, 6, and 47 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Pradeep and Pradeep II (id. at 16-18).
Our review in this appeal is limited only to the above rejections and
the issues raised by Appellants. Arguments not made are waived. See
MPEP § 1205.02; 37 C.F.R. §§ 41.37(c)(l)(iv) and 41.39(a)(l).
ISSUE 1
35 US.C. § 101: Claims 1-3. 5-7. 14-18. 20. 23. 35. 39. 45. 47. and 55-60
Appellants argue their invention as recited in claims 1-3, 5-7, 14--18,
20, 23, 35, 39, 45, 47, and 55---60 is directed to patent-eligible subject matter
(App. Br. 16-38). The issue presented by Appellants' arguments is:
Issue 1: Has the Examiner erred in concluding the invention as
recited is directed to patent-ineligible subject matter?
ANALYSIS
As an initial matter, the Examiner states the "previously pending
rejection to claims 45 and 47, under 35 U.S.C. 101, has been withdrawn"
(Ans. 2); however, taken in context, it appears that the Examiner intended to
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withdraw one of the Examiner's two bases for rejecting claims 45 and 47
under 35 U.S.C. § 101, rather than completely withdraw the 35 U.S.C. § 101
rejection of claims 45 and 47. In the Examiner's Final Office Action, the
Examiner rejected claims 45 and 47 under 35 U.S.C. § 101 for two reasons:
1) as being directed to non-statutory subject matter and 2) as being directed
to patent-ineligible subject matter. (Final Act. 3-5). The Examiner's
Answer withdraws the specific rejection of claims 45 and 47 and does not
address that basis for the specific rejection of claims 45 and 47, i.e., that the
claims are directed to a signal per se (Ans. 2). In addressing patent
eligibility, the Examiner's Answer groups claims 45 and 47 with all the
claims (Ans. 8) and concludes the claims are directed to patent ineligible
subject matter (see Ans. 6-11). Appellants appear to understand this as
Appellants address claims 45 and 47 in the rejection under 35 U.S.C. § 101
(Reply Br. 2-8). Accordingly, we determine claims 45 and 47 remain
rejected under 35 U.S.C. § 101 as directed to patent-ineligible subject
matter.
Turning to subject matter eligibility, in Alice, the Supreme Court sets
forth an analytical "framework for distinguishing patents that claim laws of
nature, natural phenomena, and abstract ideas from those that claim patent-
eligible applications of those concepts" (Alice Corp. Pty. v. CLS Bank Int 'l,
134 S. Ct. 2347, 2355 (2014) (citing Mayo Collaborative Servs. v.
Prometheus Labs., Inc., 132 S. Ct. 1289, 1296-97 (2012))). 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 so, the second step is to
consider the elements of the claims "individually and 'as an ordered
combination' to determine whether the additional elements 'transform the
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nature of the claim' into a patent-eligible application" (id. (quoting Mayo,
132 S. Ct. at 1297-98)). 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. (brackets in original)
(quoting Mayo, 132 S. Ct. at 1294)).
Independent Claims 1, 23, and 45
We agree with the Examiner's conclusion that independent claims 1,
23, and 45 are directed to patent-ineligible subject matter. We first observe
that independent claim 1 is a method claim, independent claim 23 is a
system claim, and independent claim 45 recites a "tangible computer
readable storage medium." As such, claims 1, 23, and 45 are each directed
to statutory subject matter within the meaning of 35 U.S.C. § 101.
Next, we analyze the claims to determine whether they are directed to
any judicial exception, e.g., an abstract idea. Even assuming it is an
overgeneralization to characterize the claims as directed to "determining an
effectiveness of a test subject" (App. Br. 16-17, 22), we nonetheless agree
with the Examiner that the claims, considered in their entirety "including the
obtaining and determining steps" (Ans. 8), are directed to an abstract idea.
Our reviewing court has treated "collecting information, including when
limited to particular content (which does not change its character as
information), as within the realm of abstract ideas" and further that
"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" (Elec. Power Grp., LLC v. Alstom S.A.,
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830 F.3d 1350, 1353 (Fed. Cir. 2016) (citations omitted)). Similar to the
claims in Electric Power Group, the claims here recite abstract data
collection operations. Specifically, the claims similarly recite "using a first
data collection device to obtain first implicit response data" and "to obtain
second implicit response data" and further "using a second data collection
device to obtain first neuro-response data" and "to obtain second neuro-
response data." The claims limit the data to a particular content, i.e., neuro-
and implicit response data at particular time periods, but limiting the type of
data being collected does not make the collection of data non-abstract (id.).
Further, the claims recite analyses based on that collected data, but
those analyses remain "within the abstract-idea category" (id. at 1354).
Specifically, the claims similarly recite "determining ... a first impact ...
based on the first and second implicit response data," "determining ... a
second impact ... based on the first neuro-response data and the second
neuro-response data," and "determining an effectiveness of the test subject
based on the first impact and the second impact." The claims determine
impacts and effectiveness "based on" certain data but do not otherwise limit
how such determinations are provided, and so, broadly recite any way to
make such determinations. Further, Appellants' Specification supports that
such determinations can be the result of mental processes; for example, the
Specification teaches "a pre-exposure bias and a post-exposure bias may be
compared to determine a change in the implicit attitude" (Spec. i-f 21 ). Data
comparison is a process that can be performed mentally. Although the
claims nominally recite that a processor performs the determination, the
recited analyses are "essentially mental processes within the abstract-idea
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category" because the claims do not specify how that determination is made
(Elec. Power Grp., 830 F.3d at 1354).
Additionally, contrary to Appellants' arguments that the claims are a
"technological improvement" (App. Br. 26; see App. Br. 23, 36) and are
"directed to an invention inherently embodied in computer technology"
(App. Br. 28; see App. Br. 37), we determine the "improvement" is at best
an improvement to an abstract idea and neither the problem nor the solution
here are rooted in computer technology. Appellants' Specification teaches
the invention is directed to improvements in "the market research industry"
which has "implemented psychological methodologies to measure and/or
predict consumer behavior and/or responses based on both explicit and
implicit cognitive measures" (Spec. i-fi-f 14, 69). The purported
improvements Appellants' Specification describes are improvements to
market research using psychology, not to any particular computer
technology (see Spec. i121 ). Furthermore, contradicting Appellants'
assertion that the invention is "inherently embodied in computer technology"
(App. Br. 28), Appellants' Specification teaches "implicit response data
collector(s) 112 may be paper or booklets with questionnaires and/or space
for panelist(s) to write in responses" (Spec. i177). Even further, although
claim 23 is directed to a system (App. Br. 36), the system is not the focus of
the claims and instead the "advance [the claims] purport to make is a process
of gathering and analyzing information of a specified content ... and not
any particular assertedly inventive technology for performing those
functions." Elec. Power Grp., 830 F.3d at 1354. Accordingly, the
improvements recited in the claims are not improvements to any particular
technology but are, at best, improvements to abstract idea processes.
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Because the claims are directed to an abstract idea, we next consider
whether the additional elements recited by the claims transform the claims
into a patent-eligible application of the claimed subject matter. We agree
with the Examiner that the claims do not (Ans. 10-11 ). Here, the "claims at
issue do not require any nonconventional computer" components or
functions and instead "merely call for performance of the claimed
information collection [and] analysis ... 'on a set of generic computer
components"' (Elec. Power Grp., 830 F.3d at 1355 (citing Bascom Glob.
Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341, 1350 (Fed. Cir.
2016))). Although Appellants argue the claims "build[] a completely new
physical system" (App. Br. 38) and "do[] not involve routine or familiar
actions" (Reply Br. 7), the actions recited by the claims, viewed both
individually and as a combination, are at most generic computer operations
for collecting and analyzing data. In particular, the claims similarly recite
using "data collection device[ s ]" or "input interface[ s ]" to collect certain
data, but the claims do not specify any particular non-generic manner in
which the device collects that data. Further, the claims similarly recite
"determining ... impact" and "determining an effectiveness" "based on"
that collected data but do not specify any particular non-generic manner to
make those determinations. Instead, the claims "specify what information"
in the market research industry is "desirable to gather [and] analyze" and,
moreover, "do not include any requirement for performing the claimed
functions of gathering [and] analyzing ... by use of anything but entirely
conventional, generic technology. The claims therefore do not state an
arguably inventive concept in the realm of application of the information-
based abstract ideas" (Elec. Power Grp., 830 F.3d at 1356).
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Additionally, Appellants' argument that "when considered as a whole,
the actual claim[ s] on appeal raise[] no preemption concerns" (App. Br. 24;
see App. Br. 25-26, 30) does not persuade us that the claims are directed to
patent-eligible subject matter. Although preemption is characterized as a
driving concern for patent eligibility, preemption itself is not the test for
patent eligibility. Rather, "[ w ]hile preemption may signal patent ineligible
subject matter, the absence of complete preemption does not demonstrate
patent eligibility" (Ariosa Diagnostics, Inc. v. Sequenom, 788 F.3d 1371,
1379 (Fed. Cir. 2015)). "Where 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"
(id.). Moreover, we are not persuaded the claims do not preempt any
manner of determining impacts and effectiveness based on certain data. As
discussed supra, the claims do not specify how implicit response and neuro-
response data are gathered or how impact or effectiveness determinations are
made based on that data. Accordingly, the claims encompass and preempt
any manner of gathering implicit response and neuro-response data and
further preempt any manner of using that data to determine impact and
effectiveness.
Accordingly, Appellants have not persuaded us independent claims 1,
23, and 45 are directed to patent-eligible subject matter. Therefore, we
sustain the rejection of claims 1, 23, and 45 under 35 U.S.C. § 101 as being
directed to patent-ineligible subject matter.
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Dependent Claims 2, 3, 5-7, 14-18, 20, 35, 39, 47, and 55-60
Dependent claims 56 and 57 further limit the content of collected data
to "subconscious bias" data or to data collected at a certain "time period,"
but collecting data, "including when limited to particular content," remains
"within the realm of abstract ideas" (Elec. Power Grp., 830 F.3d at 1353).
Contrary to Appellants' argument that collecting subconscious bias data, a
type of implicit response data (Spec. i-f 14 ), is "an inherently technical
process inextricably tied to computer technology" (App. Br. 38), Appellants'
Specification discloses that "implicit response data collector(s) 112 may be
paper or booklets with questionnaires and/ or space for panelist( s) to write in
responses" (Spec. i-f 77). Further, Appellants highlight the purported results
the claims achieve, but discussing the outcome does not persuade us the
claim recites non-generic operations that transform the claims into
"substantially more than the alleged abstract idea" (see App. Br. 39).
Because the claims describe the content of the data in the claimed generic
collection and analysis, but do not recite any non-generic operations to
perform the data collection and analysis operations, the limitations recited by
the claims do not transform the claims into patent-eligible subject matter.
Further, dependent claim 58 recites implicit cognitive tasks, i.e.,
"psychologically based methodologies," in which a panelist can participate,
but those limitations do not transform the claim into "substantially more"
than the abstract idea itself (App. Br. 39--40) because the claim does not
recite any particular manner of implementing those cognitive tasks, let alone
any particular device which provides those cognitive tasks in a particular
manner. Moreover, the claim does not use those cognitive tasks to
determine implicit response data. Claim 5 8 depends on claim 7, which
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recites "implicit response data is gathered while the panelist participates in
implicit cognitive tasks." Based on the language of claim 7, implicit
response data is not necessarily gathered using implicit cognitive tasks;
rather the claim only recites implicit response data is gathered at the time,
i.e., "while," the implicit cognitive tasks are performed. As such, the recited
implicit cognitive tasks do not describe how implicit response data is
gathered and so, do not limit the claim to any particular manner of gathering
implicit response data. Accordingly, the recited implicit cognitive tasks do
not transform the claim into significantly more than the abstract idea itself.
Additionally, Appellants have not proffered sufficient evidence or
argument to persuade us that any of the limitations in remaining dependent
claims 2, 3, 5-7, 14--18, 20, 35, 39, 47, 55, 59, and 60 provide a meaningful
limitation that transforms the claims into a patent-eligible application.
Accordingly, Appellants have not persuaded us claims 2, 3, 5-7, 14--18, 20,
35, 39, 47, and 55---60 are directed to patent-eligible matter. Therefore, we
sustain the rejection of claims 2, 3, 5-7, 14--18, 20, 35, 39, 47, and 55---60
under 35 U.S.C. § 101 as being directed to patent-ineligible subject matter.
ISSUE 2
35 USC § 102(e): Claims 1-3. 7. 14-18. 20. 23. 35. 39. 45. and 55-60
Appellants contend their invention as recited in claims 1, 23, and 45 is
not anticipated by Pradeep (App. Br. 44--48). The issue presented by the
arguments is:
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Issue 2: Has the Examiner shown Pradeep discloses "implicit
response data different than ... neuro-response data," as recited in claim 1
and similarly recited in claims 23 and 45?
ANALYSIS
Appellants contend the Examiner erred in finding Pradeep discloses
"implicit response data different than ... neuro-response data," as recited in
claim 1 and similarly recited in claims 23 and 45. Specifically, Appellants
argue Pradeep "describes different measurement mechanisms to obtain such
neuro-response measurements including EEG, EOG, GSR, EKG, etc.," but
those "are all specifically described as neuro-response measurement
mechanisms" and Pradeep "does not mention separate mechanisms to
measure implicit response data, which, according to [the claims], is different
than neuro-response data" (App. Br. 45; Reply Br. 9--10).
We are persuaded. The Examiner determines, "[ s ]pecifically,
[Pradeep 's] data from the pupillary dilation data collection would be deemed
implicit response data" (Ans. 12; see Pradeep 6: 17-29). However,
Appellants' Specification defines pupillary dilation as neuro-response data:
"autonomic nervous system data ... [is] referred to herein as neuro-response
data" and further teaches "[a]utonomic nervous system measurement
mechanisms ... include ... pupillary dilation" (Spec. i-f 64). The claims
distinguish between implicit response data and neuro-response data and
Appellants' Specification defines pupillary dilation as neuro-response data;
thus, we determine pupillary dilation does not disclose "implicit response
data" within the meaning of the claims. Further, the Examiner does not
clearly rely on, or provide any explanation as to which of, Pradeep' s other
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response measurements disclose "implicit response data" (see Ans. 11-12
(citing Pradeep 6: 17-29, 41--49); see also Final Act. 6-8 (citing Pradeep
4:53---62)).
As such, we are constrained by the record to reverse the Examiner's
anticipation rejection of independent claims 1, 23, and 45 over Pradeep.
Because we agree with at least one of the arguments advanced by
Appellants, we need not reach the merits of Appellants' other arguments
(see App. Br. 47-53; see also Reply Br. 10-17). It follows, we also reverse
the Examiner's anticipation rejection of dependent claims 2, 3, 7, 14--18, 20,
35, 39, and 55---60 over Pradeep and the Examiner's obviousness rejection of
dependent claims 5, 6, and 4 7 over Pradeep and Pradeep II. Our reversal
should not be taken as an indication of allowability or non-obviousness over
other teachings in Pradeep or any other references. 2
DECISION
The Examiner's rejection of claims 1-3, 5-7, 14--18, 20, 23, 35, 39,
45, 47, and 55---60 under 35 U.S.C. § 101 as being directed to patent-
ineligible subject matter is affirmed.
The Examiner's rejection of claims 1-3, 7, 14--18, 20, 23, 35, 39, 45,
and 55---60 under 35 U.S.C. § 102(e) as being anticipated by Pradeep is
reversed.
The Examiner's rejection of claims 5, 6, and 47 under 35 U.S.C.
§ 103(a) as being unpatentable over Pradeep and Pradeep II is reversed.
2 Should there be further prosecution, we note that although Pradeep has a
prior publication qualifying as prior art under 35 U.S.C. § 102(b), the parties
should consider whether Pradeep II is disqualified as an obviousness
reference under 35 U.S.C. § 103(c)(l).
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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.
§ 41.50(±).
AFFIRMED
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