Ex Parte Shimizu et al

Patent Trial and Appeal Board

Nov 13, 2018

13672384 (P.T.A.B. Nov. 13, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/672,384 11/08/2012
29989 7590 11/15/2018
HICKMAN PALERMO BECKER BINGHAM LLP
1 ALMADEN BOULEVARD
FLOOR 12
SAN JOSE, CA 95113
Jerome Shimizu
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.
50442-0552 4302
EXAMINER
SCHMUCKER, MICHAEL W
ART UNIT PAPER NUMBER
3681
NOTIFICATION DATE DELIVERY MODE
11/15/2018 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):
usdocket@h35g.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JEROME SHIMIZU and MARC RYAN
Appeal2017-002126
Application 13/672,384
Technology Center 3600
Before JEAN R. HOMERE, BRADLEY W. BAUMEISTER,
and PHILLIP A. BENNETT, Administrative Patent Judges.
HOMERE, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1-27, which constitute all claims pending in this application. 1 App.
Br. 2. We have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM.
1 Appellants identify InsightExpress, LLC, as the real party in interest.
App. Br. 1.
Appeal2017-002126
Application 13/672,384
Introduction
According to Appellants, the claimed subject matter relates to a
method and system for assessing the effectiveness of a marketing effort by
comparing its effects on a group of individuals exposed to the marketing
effort versus a non-exposed group. Spec. ,r,r 2, 13, and Fig. 1. In particular,
a computer maps to an N-dimensional space relevant attributes of each
group member of a population including a "twin mapping" identifying non-
exposed candidates along with associated candidates exposed to the
marketing effort for which testing is being performed. Id. ,r 14. Upon
finding an unexposed twin, which is the closest in characteristics to an
exposed candidate, the post exposure behavior of the two candidates is
compared to determine the effectiveness of the marketing effort. Id.
Representative Claim
Independent claim 1 is representative and reads as follows:
Claim 1. A method comprising:
generating space-location data that indicates a space-
location for each member of a population, the population
including a plurality of members, in an N-Dimensional Space
defined by attributes of the plurality of members;
after the space-location data has been generated,
performing the steps of
detecting that a first member of a population has
been exposed to marketing efforts whose effectiveness is
subject to a test;
in response to detecting that the first member has
been exposed to the marketing efforts, performing the
steps of
adding the first member to a test group of
the test;
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Application 13/672,384
adding an unexposed twin of the first
member to a control group for the test; and
comparing post-exposure behavior
information of the test group with behavior
information of the control group;
wherein the unexposed twin of the first member is a
second member of the population that (a) was not exposed to
the marketing efforts, and (b) is selected as the unexposed twin
of the first member based on how close the space-location of
the second member is to the space-location of the first member;
wherein the method is performed by one or more
computing devices.
Lazarus et al.
("Lazarus")
Briggs
Sattley et al.
("Sattley")
Prior Art Relied Upon
US 2005/0159996 Al
US 2006/0041480 Al
US 2007/0260519 Al
Rejections on Appeal
July 21, 2005
Feb.23,2006
Nov. 8, 2007
Claims 1-27 stand rejected under 35 U.S.C. § 101 as being directed to
patent ineligible material. Final Act. 3-5.
Claims 1-8, 10-21, and 23-27 stand rejected under 35 U.S.C.
§ I03(a) as being unpatentable over the combination of Briggs and Lazarus.
Id. at 6-16.
Claims 9 and 22 stand rejected under 35 U.S.C. § I03(a) as being
unpatentable over the combination of Briggs, Lazarus, and Sattley. Id. at
17-18.
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Application 13/672,384
ANALYSIS 2
Patent Ineligibility Rejection
The U.S. Supreme Court provides a two-step test for determining
whether a claim is directed to patent-eligible subject matter under 35 U.S.C.
§ 101. Alice Corp. v. CLS Bankint'l, 134 S.Ct. 2347, 2354 (2014). In the
first step, we determine whether the claims are directed to one or more
judicial exceptions (i.e., law of nature, natural phenomenon, and abstract
ideas) to the four statutory categories of invention (i.e., process, machine,
manufacture, and composition of matter). Id. at 2355 ( citing Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 566 US 66, 76-78 (2012))
("Mayo"). In the second step, we "consider the elements of each 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." Id. (citing Mayo, 566 US 80). 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.
(citing Mayo, 566 US at 72-73).
Mayo Analysis, step I (Abstract Idea)
We consider Appellants' arguments seriatim, as they are presented in
the Appeal Brief, pages 6-28, and the Reply Brief, pages 2-17.
2 Rather than reiterate all the arguments of Appellants and all the
Examiner's findings and conclusions, we refer to the Appeal Brief (filed
March 24, 2016) ("App. Br."); the Reply Brief (filed November 18, 2016)
("Reply Br."); and the Answer ( mailed September 22, 2016) ("Ans."); and
the Final Office Action (mailed November 19, 2015) ("Final Act.") for the
respective details.
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Appellants argue the Examiner erred in rejecting claims 1-27 as being
directed to the abstract idea of "optimizing targeted advertising on websites"
because the claims recite no such optimization. Reply Br. 3; see also App.
Br. 6-8. According to Appellants, although this erroneous characterization
of the claimed subject matter may pertain to a particular use of the invention,
it does not constitute the central theme of the claimed subject matter. App.
Br. 7-8. Likewise, Appellants argue that the Examiner's alternative
characterization of the claimed subject matter as being directed to
"measuring marketing efforts" is also improper because the claims recite no
measurement of marketing efforts. Id. at 8-9. Further, Appellants argue
that because the alternative characterization of the claims is newly made,
Appellants have not been given a fair opportunity to respond. Id. at 9.
Furthermore, Appellants argue that because the Examiner has failed to
explain why the asserted alternative characterization of the claim constitutes
an abstract idea, the Examiner's rejection is not supported by any court
decision where a court has found "measuring marketing efforts" to be an
abstract idea. Id. at 9-10.
These arguments are not persuasive. At the outset, we note the
Examiner initially concluded that the claims are directed to the abstract idea
of "optimizing targeted advertising on websites," a fundamental economic
practice. Final Act. 3. Then, following Appellants' after-final response, the
Examiner asserted that irrespective of whether the claims are directed to
"measuring marketing efforts" ( as alleged by Appellants) or "optimizing
targeted advertisements on websites" (as alleged by the Examiner), either
characterization of the claimed subject matter pertains to the fundamental
economic practice of marketing/advertising. Advisory Act. 1.
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We further note Appellants' summary of the claimed subject matter
indicates that the claims are directed to "determining the effectiveness of
marketing efforts." App. Br. 2. Although Appellants' characterization of the
claim language differs somewhat from Examiner's, one is a subset of the
other, as acknowledged by Appellants. Id. at 7-8. More importantly,
Appellants do not dispute the Examiner's conclusion that either
characterization of the claimed subject matter pertains to the fundamental
economic practice of marketing of which Appellants have been informed. 3
As noted by Appellants, the claimed subject matter as whole is
directed a method and system for assessing the effectiveness of marketing
efforts. App. Br. 2. Our reviewing court has consistently held that such
marketing enhancement methods are mere characterizations of human
activities within the stream of commerce, which are not patent eligible. See,
e.g., Elec. Power Grp. v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016)
(Claims directed to collection, manipulation, and display of data.);
Intellectual Ventures I LLC v. Capital One Bank (USA), 792 F.3d 1363,
1370 (Fed. Cir. 2015) (Customizing information and presenting it to users
based on particular characteristics.). That these claims are directed to an
abstract idea is confirmed by the fact that the claimed comparison of the
behavior of surveyed individuals exposed to the marketing effort versus the
behavior of non-exposed individuals is of the type that could be performed
3 Appellants' concern about whether the Examiner has newly characterized
the claimed invention as being directed to an alternative abstract idea of
"measuring marketing efforts" is not an appealable matter under our
jurisdiction. Appellants should have raised this concern in a petition to the
Director of the Technology Center to which the Examiner is assigned. See
37 C.F.R. § 1.181.
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manually. See CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366,
1373 (Fed. Cir. 2011) ("[A] method that can be performed by human
thought alone is merely an abstract idea and is not patent-eligible under
[section] 101."). Prior to the Internet, such activities were widely practiced,
and became computerized with the assistance of human administrators to
facilitate marketing optimization. See OIP Technologies, Inc. v.
Amazon.com, Inc., 788 F.3d 1359, 1364 (Fed. Cir. 2015).
Mayo Analysis, step II (Significantly more than Abstract Idea)
Next, Appellants argue that the Examiner has not considered whether
all elements of the claims amount to significantly more than the alleged
abstract idea. App. Br. 10-11. According to Appellants, the Examiner's
assertion that the claims merely recite activities of "normal computer
operation ... is not an interpretation supported by any applicable authority."
App. Br. 11 ( emphasis omitted). Appellants submit that patent ineligibility
instead requires showing "the claim must as a whole amount to nothing
more than generic computer functions merely used to implement an abstract
idea." Id. Further, Appellants argue claim 1 recites features such as:
(1) generating space location data; (2) adding members to a test
group/control group; and (3) comparing behavior of members based on the
space location. Id. at 15. Appellants argue that these features are
meaningful and relate to a particular practical application. Id. at 12-15.
According to Appellants, although these features may use a
computer's inherent capabilities, using a computer alone is insufficient to
negate patentability. Id. at 13. Appellants argue that those elements are not
well-understood, routine or conventional in the field as they confine the
claims to a particular application. Id. at 15. Thus, Appellants submit
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although those features make use of a computer's inherent capabilities, they
cannot be characterized as generic computer functions. Id.; see also Reply
Br. 9--12.
These arguments are not persuasive. We agree with the Examiner that
the cited claim elements, as a whole, do not amount to significantly more
than the abstract idea of assessing the effectiveness of a marketing effort by
comparing its effects on exposed individuals versus unexposed individuals.
Ans. 4. In particular, we agree with the Examiner that the functions of
comparing survey results obtained from the behavior of individuals in
test/control groups are conventional, well-understood, and do not go beyond
those of a general purpose computer for merely accessing, manipulating, and
displaying data. Id. Therefore, they do not add any meaningful limitations
beyond generally linking the abstract idea to the particular technological
environment. Id.
Appellants also argue that the Examiner's finding "additional
elements of the claims are 'generic computer structure that serve[] to
perform generic computer functions' that 'are well-understood, routine and
conventional activities previously known to the pertinent industry"' is
antithetical to the conclusion that the claims are not obvious over the prior
art of record. App. Br. 11-12, and 20-21. This argument is unpersuasive.
Appellants are reminded that "the 'inventive concept' [ under step two
of the Mayol Alice test] cannot be the abstract idea itself' and "Berkheimer
... leave[ s] untouched the numerous cases from this court which have held
claims ineligible because the only alleged 'inventive concept' is the abstract
idea." Berkheimer v. HP Inc., 890 F.3d 1369, 1374 (Fed. Cir. 2018) (Moore,
J., concurring). "It has been clear since Alice that a claimed invention's use
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of the ineligible concept to which it is directed cannot supply the inventive
concept that renders the invention 'significantly more' than that ineligible
concept." BSG Tech LLC v. Buyseasons, Inc., 899 F.3d 1281, 1290 (Fed.
Cir. 2018).
We, therefore, agree with the Examiner that the computer functions
recited in the claims were in fact generic, and the Examiner's conclusion is
supported by numerous case law establishing that using a generic computer
to expedite and automate processes traditionally performed manually or that
are otherwise abstract is a well-understood, routine, and conventional use of
such computers. Ans. 4; see also, e.g., Intellectual Ventures I LLC v.
-~v1nantec Corp., 838 F.3d 1307, 1321 (Fed. Cir. 2016) (1Jtilizing an
intermediary cornputer to forward infonnation.); Bancorp Servs., L.LC v.
Sun Life .Assurance Co., 687 F.3d 1266, 1278 (Fed. Cir. 2012) ("T'he
computer required by some of Bancorp's claims is empfoyed only for its
most basic function, the performance of repetitive calculations, and as such
does not impose meaningful limits on the scope of those claims.~}
Appellants are further reminded that "relying on a computer to
perform routine tasks more quickly or more accurately is insufficient to
render a claim patent eligible." OIP Techs., Inc. v. Amazon.com, Inc., 788
F.3d 1359, 1363 (Fed. Cir. 2015) (citing Alice Corp., 134 S. Ct. at 2359
("Use of a computer to create electronic records, track multiple transactions,
and issue simultaneous instructions" is not an inventive concept.)).
Therefore, Appellants have not established that the functions recited in
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claim 1 add any meaningful limitations beyond generally linking the abstract
idea to the particular technological environment. Id. 4
Accordingly, we are not persuaded of error in the Examiner's
conclusion that claim 1 is directed to patent-ineligible subject matter.
Regarding claims 2-27, Appellants reiterate substantially the same
patent-eligibility arguments of claim 1 discussed above. App. Br. 17-20.
We are similarly not persuaded of error in the Examiner's conclusion that
claims 2-27 are directed to patent-ineligible subject matter.
Obviousness Rejections
Appellants argue that the Examiner erred in concluding that the
combination of Briggs and Lazarus renders claims 1-8, 10-21, and 23-27
unpatentable. App. Br. 22. In particular, Appellants argue the cited
references do not teach or suggest "generating space-location data" while "in
a N-Dimensional space" to select "based on how close the space-location of
the second member is to the space-location of the first member." Id.
4 Considerations for determining whether a claim with additional elements
amounts to "significantly more" than the judicial exception itself include
improvements to another technology or technical field (Alice Corp., 134
S.Ct. at 2359---60 ( citing Diehr, 450 U.S. at 177-78)); adding a specific
limitation other than what is well-understood, routine, and conventional in
the field, or adding unconventional steps that confine the claim to a
particular useful application (Mayo, 566 U.S. at 82, 87); or other meaningful
limitations beyond generally linking the use of the judicial exception to a
particular technological environment (Alice Corp., 134 S.Ct. at 2360). See,
e.g., Intellectual Ventures I LLC, 792 F.3d at 1370 ("[M]erely adding
computer functionality to increase the speed or efficiency of the process
does not confer patent eligibility on an otherwise abstract idea.").
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According to Appellants, Lazarus's disclosure of using matrices to
determine similarity between merchants based on transaction data by
counting the "number of times the merchants co-occur with one another in
the transaction data" does not teach the disputed limitations. Id. at 22-23;
see also Reply Br. 15 (citing Lazarus ,r,r 35, 182). Further, Appellants argue
Briggs's disclosure of "simultaneously determining a control group and an
exposed group, and simultaneously transmitting advertisements to them by
holding them out" does not teach the disputed limitations. Id. at 24 ( citing
Lazarus ,r 5 8).
Appellants' arguments are persuasive. Briggs discloses a system for
determining advertising effectiveness of cross media campaigns on an
exposed group/non-exposed group. Briggs ,r 51. Briggs discloses using a
large online campaign and holds out a control group, which receives control
advertising so as to measure reported sales and the impact of the advertising
in comparison to sale results with no market activity. Briggs ,r,r 13, 55, and
58. Further, Lazarus discloses a predictive modeling of a consumer or
merchant financial behavior by monitoring merchant vectors in a vector
space thereby tracking the frequency of occurrence of the merchant's
activities logged in the vector space of transactions. Lazarus ,r,r 35, 90, and
91. Although we agree with the Examiner that the cited portions of Briggs
teach comparing the effects of a marketing effort on an exposed group
versus an unexposed group, Lazarus's teachings do not cure the admitted
deficiencies of Briggs. As persuasively argued by Appellants, Lazarus's
teachings relate to tracking the financial activities of a merchant/customer in
a vector space based on transaction data by matching unit vectors for each
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defined vector name string corresponding to a controlled entity. App.
Br. 23.
Although Lazarus's disclosure of matching merchant/ customer names
teaches identifying identical strings in the vector space thereby determining
that the vector strings for two particular merchants are syntactically close,
Lazarus does not teach the required physical closeness between the
candidates. In other words, Lazarus teaches determining whether the names
of two merchants are the same ( syntactically close), as opposed to whether
the two merchants are physically close to each other. At best, the proposed
combination would result in comparing the effectiveness of a marketing
effort on an exposed group versus a non-exposed group in a vector space by
determining the frequency of activities of each group in relation to the
marketed product. However, the proposed combination of references is
silent as to whether candidates in the exposed/non-exposed groups are close
in space location to one another.
Because Appellants have shown at least one reversible error in the
Examiner's rejection, we need not reach Appellants' remaining arguments.
Accordingly, we are persuaded or error in the Examiner's anticipation
rejection of claim 1.
Because claims 2-27 recite the disputed limitations of claim 1
discussed above, and Sattley relied upon by the Examiner does not cure the
noted deficiencies in Briggs and Lazarus, we do not sustain the Examiner's
obviousness of the cited claims for the same reason set forth above.
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DECISION
For the above reasons, affirm the patent ineligibility rejection of
claims 1-27. However, we reverse the obviousness rejections of claims 1-
27 as set forth above.
Because we have affirmed at least one ground of rejection with
respect to each claim on appeal, the Examiner's decision is affirmed. See 37
C.F.R. § 4I.50(a)(l).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
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