Ex Parte Skolicki

Patent Trial and Appeal Board

Aug 29, 2018

13830866 (P.T.A.B. Aug. 29, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/830,866 03/14/2013
82750 7590 08/31/2018
Morgan, Lewis & Bockius LLP / Google
1400 Page Mill Road
Palo Alto, CA 94304-1124
FIRST NAMED INVENTOR
Zbignew Skolicki
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.
060963-5913-US 1092
EXAMINER
KASSA, ELIZABETH
ART UNIT PAPER NUMBER
2457
NOTIFICATION DATE DELIVERY MODE
08/31/2018 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):
padocketingdepartment@morganlewis.com
vskliba@morganlewis.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ZBIGNEW SKOLICKI
Appeal 2018-002037
Application 13/830866 1
Technology Center 2400
Before ST. JOHN COURTENAY III, LARRY J. HUME, and
JOYCE CRAIG, Administrative Patent Judges.
CRAIG, Administrative Patent Judge.
DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner's
Final Rejection of claims 7-9, 16-18, 25-37, and 39-42, which are all of the
claims pending in this application. Claims 1-6, 10-15, 19-24, and 38 are
cancelled. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 According to Appellant, the real party in interest is Google, Inc. App. Br.
4.
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Application 13/830,866
INVENTION
Appellant's application relates to estimating user interest in media
content. Abstract. Claim 7 is illustrative of the appealed subject matter and
reads as follows:
7. A method for estimating user interest m media content,
compnsmg:
at a client system having an audio sensor, one or more
processors, and memory storing one or more programs for
execution by the one or more processors:
detecting, via the audio sensor, a volume change event for
media content presented in the vicinity of the client system, the
volume change event comprising a change in outputted media
volume for the media content;
obtaining identification of the media content;
based on the identification of the media content, obtaining
from a media database a list of one or more expected volume
change events within the media content;
based on the list of one or more expected volume change
events, obtaining a determination as to whether the detected
volume change event comprises a volume change event from a
user of the client system;
in accordance with a determination that the detected
volume change event comprises a volume change event from a
user of the client system:
analyzing the detected volume change event to determine
user interest in the presented media content; and
sending the determined level of interest to a server system;
and
in accordance with a determination that the detected
volume change event does not comprise a volume change event
from a user of the client system, forgoing analyzing the volume
change event to determine user interest.
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REJECTIONS
Claims 7-9, 16-18, 25-37, and 39-42 stand rejected under 35 U.S.C.
§ 101 because the claimed invention is directed to patent-ineligible subject
matter. Final Act. 4--5.
Claims 7, 16, 25, 29, 30, 34, 35, 39, and 40 stand rejected under
35 U.S.C. § I03(a) as unpatentable over the combination ofKamdar (US
2014/0075463 Al; published Mar. 13, 2014), Berkowitz et al. (US
2013/0070152 Al; published Mar. 21, 2013) ("Berkowitz") and Lee (US
2011/0088053 Al; published April 14, 2011). Final Act. 5-12.
Claims 8, 9, 17, 18, 26, 27, 31, 32, 36, 37, 41 and 42 stand rejected
under 35 U.S.C. § I03(a) as unpatentable over the combination of Kamdar,
Berkowitz, Lee and Campbell et al. (US 2012/0278330 Al; published Nov.
1, 2012) ("Campbell"). Final Act. 12-16.
Claims 28 and 33 stand rejected under 35 U.S.C. § I03(a) as
unpatentable over the combination of Kamdar, Berkowitz, Lee, and Wetzer
et al. (US 2012/0144416 Al; published June 7, 2012) ("Wetzer"). Final
Act. 16-17.
ANALYSIS
Rejection of Claims 7-9, 16-18, 25-37, and 39-42 under 35 USC§ 101
We have reviewed the rejections of claims 7-9, 16-18, 25-37, and
39-42 in light of Appellant's arguments that the Examiner erred. We have
considered in this decision only those arguments Appellant actually raised in
the Briefs. Any other arguments Appellant could have made, but chose not
to make, in the Briefs are waived. See 37 C.F.R. § 4I.37(c)(l)(iv).
Appellant's arguments are not persuasive of error. We agree with and adopt
as our own the Examiner's findings of facts and conclusions as set forth in
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the Answer and in the Action from which this appeal was taken. We provide
the following explanation for emphasis.
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. Ltd. v. CLS Bank Int 'l, 134 S. Ct. 2347, 2355
(2014) (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566
U.S. 66 (2012)). The first step in the analysis is to "determine whether the
claims at issue are directed to one of those patent-ineligible concepts," such
as an abstract idea. Id. (citing Mayo, 566 U.S. at 77-78). If the claims are
directed to a patent-ineligible concept, the second step in the analysis is to
consider the elements of the claims "individually and 'as an ordered
combination"' to determine whether there are additional elements that
"'transform the nature of the claim' into a patent-eligible application." Id.
( quoting Mayo, 566 U.S. at 79, 78). 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, 566 U.S. at 72-73). The prohibition
against patenting an abstract idea "'cannot be circumvented by attempting to
limit the use of the formula to a particular technological environment' or
adding 'insignificant postsolution activity."' Bilski v. Kappas, 561 U.S. 593,
610-11 (2010) ( internal citation omitted).
In rejecting independent claim 7 under § 101, the Examiner concluded
the claim is directed to the abstract idea of comparing new and stored
information and using rules to identify options and sending data over a
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network (Final Act. 4--5) and does not recite additional limitations that are
"significantly more" than this abstract idea because the additional elements
or combination of elements in the claims amount to no more than the
abstract idea itself (id. at 5).
Each of independent claims 7, 16, and 25 requires, in one form or
another: ( 1) detecting a volume change; (2) based on the identification of
the media content, obtaining from a media database a list of one or more
expected volume change events within the media content; (3) obtaining a
determination as to whether the detected volume change event comprises a
volume change event from a user of the client system; and ( 4) "analyzing the
detected volume change event to determine user interest in the presented
media content ... [in accordance with a determination that the detected
volume change event comprises a volume change event from a user of the
client system]." App. Br. 25 ( citing claim 7).
Applying the framework set forth in Alice, we agree with the
Examiner that claim 72 is directed to an abstract idea. Specifically, we agree
the claim simply describes the concept of gathering and combining data by
reciting steps of comparing new and stored information, such as "obtaining
identification of the media content" and using rules to identify options, such
as the limitation
based on the identification of the media content, obtaining ... a
list of one or more expected volume change events ... [for] the
media content[, and,] based on the list of one or more expected
volume change events, obtaining a determination as to whether
2 Appellant argues claims 7-9 and 28-31 as a group. App. Br. 14. We
choose claim 7 as representative of the group. See 37 C.F.R.
§ 4I.37(c)(l)(iv).
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the detected volume change event comprises a volume change
event from a user of the client system.
Final Act. 4--5 (quoting claim 7) (citing SmartGene, Inc. v. Adv. Bio. Labs.,
SA, 555 F. App'x 950 (Fed. Cir. 2014) (non-precedential)).
In SmartGene, the Federal Circuit concluded claims were patent
ineligible because they did "no more than call on a 'computing device,' with
basic functionality for comparing stored and input data and rules, to do what
doctors do routinely." SmartGene, 555 F. App'x at 954. In the instant case,
the recited "volume change events," "identification of the media content,"
and "expected volume change events," are nothing more than data used in an
algorithm process that uses a central system (i.e., "processors" and
"database") to adjust the data using comparisons and rule-based processes.
See Ans. 7. The claims at issue in SmartGene relied upon "'expert rules
... "'for"' ... evaluating and selecting' from a stored 'plurality of different
therapeutic treatment regimens."' SmartGene, 555 F. App'x at 955 (internal
citation omitted). The "'expert rules ... "' in SmartGene are analogous to
the recited limitation "based on the list of one or more expected volume
change events, obtaining a determination as to whether the detected volume
change event comprises a volume change event from a user of the client
system" and, in accordance with the determination that the detected volume
change event either is or is not a volume change event from a user,
"analyzing the detected volume change event to determine user interest in
the presented media content[ s ]" or forgoing such analysis.
For these reasons, we are not persuaded the Examiner erred in
concluding claim 7 is directed to an abstract idea.
Turning to the second step of the Alice analysis, we find nothing
sufficient to remove the claims from the class of subject matter ineligible for
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patenting. As the court explained in Electric Power Group, LLC v. Alstom
S.A., 830 F.3d 1350 (Fed. Cir. 2016), "merely selecting information, by
content or source, for collection, analysis, and display does nothing
significant to differentiate a process from ordinary mental processes, whose
implicit exclusion from § 101 undergirds the information-based category of
abstract ideas." Id. at 1354--55.
There is no indication in the record that any specialized computer
hardware or other "inventive" computer components are required in claim 7.
Claim 7 merely employs generic computer components to perform generic
computer functions, i.e., collecting, storing, and processing information,
which is not enough to transform an abstract idea into a patent-eligible
invention.
Appellant argues that "the claimed methods and devices overcome a
problem in the software arts by estimating user interest in media content in
situations where the device does not have direct access to transmitted
volume commands." App. Br. 15 (citing BASCOM Global Internet Servs.,
Inc. v. AT&T Mobility LLC, 827 F.3d 1341 (Fed. Cir. 2016)).
Appellant further argues:
The claimed technology "estimat[ es] user interest in media
content." Pending claim 7. In particular, the claimed client
system "obtain[ s] a determination as to whether the detected
volume change event comprises a volume change event from a
user of the client system" and adjusts a level of interest for the
user in accordance with that determination. Id. Appellant
submits that when properly considered, the instant claims are
"not ones in which general-purpose computer components are
added after the fact to a fundamental economic practice or
mathematical equation, but [are] directed to a specific
implementation of a solution to a problem in the software arts."
Enfish Memo at p.2.
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App. Br. 16.
The Examiner noted the Appeal Brief is silent regarding how the
limitations of the claims specifically demonstrate any technological
improvement over the conventional systems. Ans. 4--5. The Examiner
found no specialized computer functions in the claims beyond instructions to
implement an idea on a computer structure that performs generic computer
functions. The Examiner also concluded the claims are not similar to Enfzsh
"because Enfzsh is relating to the finding of technological improvement in
the computer where a database architecture makes the searching faster, while
Applicant claimed invention show no improvement in the technology in the
claim." Ans. 6 (emphasis added).
The Examiner further distinguished Appellant's claims from those the
court concluded were patent-eligible in Bascom because Bascom's invention
claims a non-conventional arrangement of elements, i.e., the installation of a
filtering tool at a specific location, remote from the end-users, with
customizable filtering features specific to each end user that allows web
access to each end user while maintaining the security and flexibility to the
filter at the client computer. Id. Here, Appellant's claims merely recite a
generic computer to implement the abstract idea of estimating, detecting data
and analyzing the detected volume, which does not show any improvement
in the computer technology. Id.
We agree with the Examiner. Claim 7 does not purport to improve the
functioning of the computer system itself. Nor does it effect an
improvement in any other technology or technical field. Instead, claim 7
amounts to nothing significantly more than an instruction to implement the
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abstract idea of detecting and applying rules to data. This is insufficient to
transform an abstract idea into a patent-eligible invention.
For these reasons, we affirm the Examiner's 35 U.S.C. § 101 rejection
of claim 7, as well as grouped claims 8, 9, and 28-31, not argued separately.
We also affirm the Examiner's§ 101 rejection of claims 16-18, 25-27, 33-
36, and 39-41, not argued separately with particularity. See App. Br. 21.
We also affirm the Examiner's§ 101 rejection of claims 32, 37, and 42, not
argued separately.
Rejections of Claims 7-9, 16-18, 25-37, and 39-42
under 35 US.C. § 103(a)
Appellant contends the Examiner erred because neither Kamdar nor
Lee teaches or suggests expected volume change events within media
content. App. Br. 17-18. In particular, Appellant argues the cited portions
of the prior art do not teach the limitations "obtaining ... a list of one or
more expected volume change events within the media content" and
"obtaining a determination as to whether the detected volume change event
comprises a volume change event from a user of the client system ... [based
on the list of one or more expected volume change events]," as recited in
claim 7. Id.
We agree with Appellant that the Examiner's findings do not establish
a teaching or suggestion for the limitation "obtaining from a media database
a list of one or more expected volume change events within the media
content." In particular, the Examiner's reliance on Lee's determination of
one or more environmental characteristics of the environment in which the
monitored media device is presenting its media content is insufficient to
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teach the recited "list of ... expected volume changes within the media
content."
To accept the Examiner's position would require us to read the
disputed limitation out of the claim, which would be counter to existing
claim construction principles. Bicon, Inc. v. Straumann Co., 441 F.3d 945,
950 (Fed. Cir. 2006) ( claims are interpreted with an eye toward giving effect
to all terms in the claim); see Texas Instruments Inc. v. US. Int 'l Trade
Comm 'n, 988 F.2d 1165, 1171 (Fed. Cir. 1993) (explaining claim language
cannot be mere surplusage, an express limitation cannot be read out of the
claim).
The Examiner's interpretation reads "obtaining from a media database
a list of one or more expected volume change events within the media
content" out of claim 7 because, according to the Examiner, the scope of this
limitation covers a recording of volume changes of the media content as it is
played. See Ans. 9-10. As the Federal Circuit recently emphasized in
Smith:
Even when g1vmg claim terms their broadest reasonable
interpretation, the Board cannot construe the claims "so broadly
that its constructions are unreasonable under general claim
construction principles." Microsoft Corp. v. Proxyconn, Inc., 789
F.3d 1292, 1298 (Fed. Cir. 2015) ....
The correct inquiry in giving a claim term its broadest
reasonable interpretation in light of the specification is not
whether the specification proscribes or precludes some broad
reading of the claim term adopted by the examiner. And it is not
simply an interpretation that is not inconsistent with the
specification. It is an interpretation that corresponds with what
and how the inventor describes his invention in the specification,
i.e., an interpretation that is "consistent with the specification."
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In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997) (citation and
internal quotation marks omitted); see also In re Suitco Surface,
603 F.3d 1255, 1259-60 (Fed. Cir. 2010).
In re Smith Int 'l, Inc., 871 F.3d 1375, 1382-83 (Fed. Cir. 2017).
Applying Smith's guidance here, the Examiner's claim interpretation
of "obtaining from a media database a list of one or more expected volume
change events within the media content," as similarly recited in each
independent claim on appeal, is overly broad, unreasonable, and inconsistent
with the Specification. The Specification describes a chronologically
ordered list of expected volume changes (i.e., volume changes that exist in
the media content itself). See, e.g., Spec. ,r 23. Thus, the Examiner's
interpretation is not consistent with what and how the inventor describes the
invention in the Specification. See Smith, 871 F.3d at 1382-83.
Consequently, the Examiner has not demonstrated that the cited combination
of references teaches or suggests every element of claim 7.
For these reasons, we are persuaded that the Examiner erred in finding
that the combination of Kamdar, Berkowitz, and Lee teaches or suggests the
disputed limitations of claim 7.
Accordingly, on the record before us, we reverse the Examiner's
§ 103(a) rejection of representative, independent claim 7, as well as the
Examiner's§ 103(a) rejection of independent claims 16 and 25, which
Appellant argues are patentable for similar reasons. App. Br. 19. We also
reverse the Examiner's § 103(a) rejection of dependent claims 29, 30, 34,
35, 39, and 40, which stand with the independent claims from which they
depend.
We also reverse the§ 103(a) rejection of dependent claims 8, 9, 17,
18, 26, 27, 31, 32, 36, 37, 41 and 42, and the separate§ 103(a) rejection of
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dependent claims 28 and 33, as they also stand with the independent claims
from which they depend.
DECISION
We affirm the decision of the Examiner rejecting claims 7-9, 16-18,
25-37, and 39-42 as directed to patent-ineligible subject matter.
We reverse the decision of the Examiner rejecting claims 7-9, 16-18,
25-37, and 39-42 for obviousness.
Because we affirm at least one ground of rejection with respect to
each claim on appeal, the Examiner's decision rejecting claims 7-9, 16-18,
25-37, and 39-42 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)(l )(iv). See
37 C.F.R. § 4I.50(f).
AFFIRMED
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