Ex Parte Smallwood et al

Patent Trial and Appeal Board

Feb 15, 2019

13705625 (P.T.A.B. Feb. 15, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/705,625 12/05/2012
87851 7590
Facebook/Fenwick
Silicon Valley Center
801 California Street
Mountain View, CA 94041
02/20/2019
FIRST NAMED INVENTOR
Brad Hopkins Smallwood
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.
26295-20772 8527
EXAMINER
REFAI,SAMM
ART UNIT PAPER NUMBER
3681
NOTIFICATION DATE DELIVERY MODE
02/20/2019 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):
ptoc@fenwick.com
fwfacebookpatents@fenwick.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BRAD HOPKINS SMALL WOOD
and SEAN BRUICH
Appeal 2017-011788
Application 13/705,625
Technology Center 3600
Before ALLEN R. MacDONALD, IRVINE. BRANCH, and
NABEEL U. KHAN, Administrative Patent Judges.
MacDONALD, Administrative Patent Judge.
DECISION ON APPEAL 1
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1-10, 13-23, and 26-28. Appellants have cancelled claims 11, 12,
24, and 25. App. Br. 23, 26. We have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM.
1 Appellants indicate the real party in interest is Facebook, Inc. App. Br. 2.
Appeal 2017-011788
Application 13/705,625
Illustrative Claims
Illustrative claims 1 and 10 under appeal read as follows ( emphasis,
formatting, and bracketed material added):
1. A computer-implemented method comprising:
[A.] determining, by a processor, identities of a plurality
of recipients of an advertisement, each of the identities
associated with a recipient profile including market segment
information associated with a recipient of the plurality of
recipients describing the recipient individually, and the market
segment information including at least one of[:]
[i] demographic information and
[ii] psychographic information
associated with the recipient;
[B.] determining, by the processor, a first market segment
profile of the plurality of recipients using market segment
information in the recipient profiles;
[C.] selecting, by the processor, a subset of recipients
from the plurality of recipients, the subset having a second
market segment profile, the second market segment profile
being derived from the first market segment profile and being
the same as the first market segment profile;
[D.] providing, by the processor, each of the recipients in
the subset with a recall question, wherein the recall question
comprises a request for information associated with each
recipient's recollection of receiving the advertisement, the
responses to the recall questions from the recipients in the
subset representing responses of the plurality of recipients of
the advertisement;
[E.] receiving, by the processor, a response to the recall
question from at least one of the recipients in the subset;
[F.] determining, by the processor, a recollection rate that
is a/unction of a number of received responses and an inverse
function of a number of recipients in the plurality of
recipients;
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[G.] analyzing, by the processor, the response to the
recall question to determine whether sub-market segments
within the subset have different recollections of the
advertisement based on the determined recollection rate
associated with the sub-market segments within the subset;
[H.] receiving, by the processor, a target audience of a
defined demographic for the advertisement from an advertiser,
the target audience having profiles that include market segment
information corresponding to one or more targeting criteria; and
[I.] refining, by the processor, the target audience for the
advertisement based at least in part on the analysis of the
responses to the recall question.
10. The method of claim 1, further comprising using a
social networking system to provide the advertisement for
display.
Eldering
D 'Angelo et al.
Mallon et al.
Joseph et al.
References2
US 7,062,510 Bl
US 2009/0070219 Al
US 2013/0091019 Al
US 2013/0091142 Al
Rejections3
A.
June 13, 2006
Mar. 12, 2009
Apr. 11, 2013
Apr. 11, 2013
The Examiner rejected claims 1-10, 13-23, and 26-28 under
35 U.S.C. § 101 "because the claimed invention is directed to a judicial
2 All citations herein to these references are by reference to the first named
inventor only.
3 All citations to the "Final Action" are to the Final Action mailed on
November 23, 2016.
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exception (i.e., a law of nature, a natural phenomenon, or an abstract idea)
without significantly more," i.e., because the claimed invention is directed to
patent-ineligible subject matter. Final Act. 5-9.
We select claim 1 as representative. Appellants do not separately
argue claims 2-10, 13-23, and 26-28. Except for our ultimate decision, we
do not discuss the§ 101 rejection of claims 2-10, 13-23, and 26-28
further herein.
B.
The Examiner rejected claims 1---6, 8, 9, 14--18, 20-23, 27, and 28
under 35 U.S.C. § 103 as being unpatentable over the combination of Mallon
and Eldering. Final Act. 9-19.
We select claim 1 as representative. Appellants do not present
separately arguments for claims 2---6, 8, 9, 14--18, 20-23, 27, and 28. Except
for our ultimate decision, we do not discuss the § 103 rejection of claims
2---6, 8, 9, 14--18, 20-23, 27, and 28 further herein.
C.
The Examiner rejects claims 7 and 19 under 35 U.S.C. § 103 as being
unpatentable over the combination of Mallon, Eldering, and Joseph. Final
Act. 19-20.
Appellants do not present arguments for claims 7 and 19. Thus, the
rejection of these claims turns on our decision as to claim 1. Except for our
ultimate decision, we do not address the § 103 rejection of claims 7 and 19
further herein.
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D.
The Examiner rejects claims 10, 13, and 26 under 35 U.S.C. § 103
as being unpatentable over the combination of Mallon, Eldering, and
D'Angelo. Final Act. 20-21.
We select claim 10 as representative. Appellants' Appeal Brief does
not present separate arguments for claims 13 and 26. Except for our
ultimate decision, we do not address the § 103 rejection of claims 13 and 26
further herein.
Issues on Appeal
Did the Examiner err in rejecting claim 1 as being directed to
patent-ineligible subject matter?
Did the Examiner err in rejecting claims 1 and 10 as being obvious?
ANALYSIS
We have reviewed the Examiner's rejections in light of Appellants'
arguments (Appeal Brief and Reply Brief) that the Examiner has erred. We
disagree with Appellants. Except as noted below, we adopt as our own
( 1) the findings and reasons set forth by the Examiner in the action from
which this appeal is taken and (2) the reasons set forth by the Examiner in
the Examiner's Answer in response to Appellants' Appeal Brief arguments.
We concur with the conclusions reached by the Examiner. We highlight the
following points.
A. Section 101
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
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implicit exceptions: "[l]aws of nature, natural phenomena, and abstract
ideas" are not patentable. E.g., Alice Corp. v. CLS Bank Int 'l, 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, 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 ( Gottschalk v. 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 (1854))); 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
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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."
Id. ( 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.").
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
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.
B. USPTO Section 101 Guidance
The United States Patent and Trademark Office (USPTO) recently
published revised guidance on the application of§ 101. US PTO' s January
7, 2019 Memorandum, 2019 Revised Patent Subject Matter Eligibility
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Guidance, 84 Fed. Reg. 50 ("Memorandum" or "Office Guidance"). Under
that guidance, we first look to whether the claim recites:
(1) (see Memorandum Step 2A - Prong One) any judicial exceptions,
including certain groupings of abstract ideas (i.e., mathematical
concepts, certain methods of organizing human interactions such as a
fundamental economic practice, or mental processes); and
(2) (see Memorandum Step 2A-Prong Two) additional elements that
integrate the judicial exception into a practical application (see MPEP
§ 2106.05(a}-(c), (e}-(h)). 4
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 Memorandum Step 2B.
4 We acknowledge that some of these considerations may be properly
evaluated under Step 2 of Alice (Step 2B of Office Guidance). Solely for
purposes of maintaining consistent treatment within the Office, we evaluate
it under Step 1 of Alice (Step 2A of Office Guidance). See USPTO' s
January 7, 2019 Memorandum, "2019 Revised Patent Subject Matter
Eligibility Guidance."
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C. Examiner's §101 Rejection -Alice/Mayo - Steps 1 and 2
C.1. USPTO Memorandum Step 2A - Prong One
Applying step 1 of the Alice/Mayo analysis, the Examiner concludes
claim 1 is directed to an abstract idea.
[C]laim(s) 1-10, 13-23 and 26-28 recite the abstract idea
of [ 1] A method comprising:
[2] determining, identities of a plurality of recipients of an
advertisement, each of the identities associated with a recipient
profile including market segment information associated with a
recipient of the plurality of recipients describing the recipient
individually, and the market segment information including at
least one of demographic information and psychographic
information associated with the recipient;
[3] determining, a first market segment profile of the plurality of
recipients using market segment information in the recipient
profiles;
[ 4] selecting, a subset of recipients from the plurality of
recipients, the subset having a second market segment profile,
the second market segment profile being derived from the first
market segment profile and being the same as the first market
segment profile;
[5] providing, each of the recipients in the subset with a recall
question, wherein the recall question comprises a request for
information associated with each recipient's recollection of
receiving the advertisement, the responses to the recall questions
from the recipients in the subset representing responses of the
plurality of recipients of the advertisement;
[ 6] receiving, a response to the recall question from at least one
of the recipients in the subset;
[7] determining, a recollection rate that is a function of a number
of received responses and an inverse function of a number of
recipients in the plurality of recipients;
[8] analyzing, the responses to the recall question to determine
whether sub-market segments within the subset have different
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recollections of the advertisement based on the determined
recollection rate associated with the sub-market segments within
the subset;
[8] receiving, a target audience of a defined demographic for the
advertisement from an advertiser, the target audience having
profiles that include market segment information corresponding
to one or more targeting criteria; and
[9] refining, the target audience for the advertisement based at
least in part on the analysis of the responses to the recall question
which is merely an idea 'of itself, a method of organizing human
activity and mathematical relationships/formulas.
Final Act. 5-6 ( emphasis modified and formatting added).
[S]uch as in SmartGenePJ the claimed invention compares the
target audience of a defined demographic for an advertisement
to sub-market segments and using rules to refine the target
audience for the advertisement based at least in part on the
analysis of the responses to the recall questions.
Final Act. 6 ( emphasis added).
Also, the claimed invention is similar to Affinity Labs of
Texas LLC, v. Amazon.com Inc.[, 838 F.3d 1266] (Fed. Cir.
2016) which is directed towards the abstract idea of targeting
advertisements based on at least one piece of demographic
information about the user, the claimed invention uses
demographic data to determine a target audience for an
advertisement.
Final Act. 7 ( emphasis modified).
C.2. USPTO Memorandum Step 2A - Prong Two
Applying step 2 of the Alice/Mayo analysis, the Examiner concludes:
This concept [ ( the claimed invention)] is not "necessarily rooted
in computer technology in order to overcome a problem
specifically arising in the realm of computer networks" (see DDR
5 SmartGene, Inc. v. Advanced Biological Labs., SA, 555 F. App'x 950 (Fed.
Cir. 2014) (nonprecedential).
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Holdings, LLC vs Hotels.com et al[, 773 F.3d 1245] (Fed. Cir.
2014)).
Final Act. 6 ( emphasis modified).
Additionally, the claimed functions of the generic computer
represent insignificant data-gathering steps and thus add
nothing of practice significance to the abstract idea. The
additional element limitations are simply a field of use that
attempt to limit the abstract idea to a particular technological
environment. The type of information being manipulated does
not impose meaningful limitations or render the idea less
abstract. Further the courts have found that simply limiting the
use of the abstract idea to a particular environment does not add
significant more.
Final Act. 8-9 ( emphasis modified).
C.3. USPTO Memorandum Step 2B
Further applying step 2 of the Alice/Mayo analysis, the Examiner
concludes:
When considered as an ordered combination, the claims are
nothing more than a purely conventional computerized
implementation of applicant's formula. Therefore, the claim as a
whole does not provide significantly more than a generic
computer upon which the claimed formula is calculated.
Final Act. 7 ( emphasis added).
The claim(s) does/do not include additional elements that
are sufficient to amount to significantly more than the judicial
exception because the additional elements when considered
individually and in combination do not amount to significantly
more than the abstract idea.
Claim(s) 1-10, 13-23 and 26-28 recite the additional
elements of "computer-implemented", "by a processor"
[repeatedly] ....
The additional elements of the claim( s) do not add a
meaningful limitation to the abstract idea because the additional
elements or combination of elements in the claim( s) other than
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the abstract idea per se amount( s) to no more than mere
instructions to implement the abstract idea on a computer, and/or
recitation of generic computer structure that serves to perform
generic computer functions recited at a high level of generality
.... These generic computer functions are similar to what the
courts have recognized as well-understood, routine and
conventional activities ....
Final Act. 8 ( emphasis added).
D. Appellants'§ 101 Arguments
D.1.
As to claim 1, Appellants contend the claim is "not 'directed to' an
abstract idea." App. Br. 9. Appellants particularly contend:
The Examiner states "in particular" what he considers to be the
abstract idea, after which he then recites the entirety of claim 1
and characterizes the claim elements as "merely an idea 'of
itself, a method of organizing human activity and mathematical
relationships/formulas." [Office Action], p. 6.
This analysis is improper first because the examiner has
merely recited the entire claim as the abstract idea, and has
provided no explanation of why this is abstract, other than to
point to various cases, contending that the current claims are
similar to those in SmartGene, Affinity Labs ... and Parker v.
Flook, 437 S.Ct. 584 (1978). See id. at pp. 6-7. Yet these cases
do not recite the entire claim as the abstract idea, but instead
focus on identifying within the claim a concept that might
actually be abstract.
App. Br. 9--10 (emphasis added).
Furthermore, the claim recites specific details that are simply
not abstract, including the determination of the recollection
rate, and the fact that this is a function of the number of received
responses and is also an inverse function of a number of
recipients, the analysis regarding whether the subset has different
recollections of the ad based on the recollection rate, and the
refining of the target audience based on this. For at least these
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reasons, there is clear error in the determination of the alleged
abstract idea.
App. Br. 10 ( emphasis added).
[T]he Examiner's analysis of Affinity Labs is erroneous. The
Examiner states that this case is "directed towards the abstract
idea of targeting advertisements based on at least one piece of
demographic information about the user," while the claimed
invention "uses demographic data to determine a target audience
for an advertisement." Office Action, p. 7. But again the
Examiner appears to misread the case. What the court actually
says is "[despite] the title of the patent and the description in
the abstract, only three sentences in the specification and only
one of the 20 claims deal with targeted advertising. The rest of
the specification and claims are directed to media systems that
deliver content to a handheld wireless electronic device. Stated
more succinctly, claim 14 is directed to a network- based media
system with a customized user interface, in which the system
delivers streaming content from a network-based resource upon
demand to a handheld wireless electronic device having a
graphical user interface." Affinity Labs, [838] F.3d at [1267-
1268]. Thus, the court did not appear to find that the invention
claimed was directed to what the Examiner now asserts it is
directed, and this is also readily apparent from the claim that is
reproduced in the opinion.
App. Br. 11-12 (emphasis added).
The claims herein . . . recite improvements to advertisement
technologies . ... This method of determining a recollection rate
is itself is a non-conventional improvement on traditional
advertising, and thereby provides significantly more than those
computer functions which have been found to be abstract by the
courts.
App. Br. 14--15 (emphasis added).
Appellants' "entirety of claim 1" and "provided no explanation"
arguments are not persuasive because the Examiner does not merely recite
the entirety of claim 1. Rather, the Examiner specifically stated that the
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claimed invention's abstract idea (or as Appellants call it, the claim's
"concept"),
compares the target audience of a defined demographic for an
advertisement to sub-market segments and using rules to refine
the target audience for the advertisement based at least in part on
the analysis of the responses to the recall questions.
Final Act. 6. The Examiner also specifically stated which claim limitations
are part of that abstract idea. In this case, the Examiner determined that the
functions performed in every step of claim 1 was part of the abstract idea.
The Examiner further determined that the limitation of "computer-
implemented" and "by a processor" were not part of the abstract idea.
While Appellants may disagree with Examiner's explanation, contrary to
Appellants' arguments, we conclude that the Examiner has provided a
sufficient explanation of why the claimed invention is deemed abstract.
Also, Appellants' "specific details are simply not abstract" argument
is not persuasive because we agree with the Examiner's determination that
the argued limitations of:
determination of the recollection rate, and the fact that this is a
function of the number of received responses and is also an
inverse function of a number of recipients, the analysis regarding
whether the subset has different recollections of the ad based on
the recollection rate, and the refining of the target audience based
on this
are each part of the abstract idea. Contrary to Appellants' argument, we do
not find before us a non-abstract improvement to technology. The focus of
claim 1 is not on an improvement in computer-functionality, as in Enfzsh, 6
but on an abstract idea that uses a computer as a tool for "compar[ing] the
6 Enfzsh, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016).
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target audience of a defined demographic for an advertisement to sub-market
segments and using rules to refine the target audience for the advertisement
based at least in part on the analysis of the responses to the recall questions."
Final Act. 6. In Trading Technologies, the Federal Circuit agreed with the
district court explanation that
[t]he claims require a specific, structured graphical user interface
paired with a prescribed functionality directly related to the
graphical user interface's structure that is addressed to and
resolves a specifically identified problem in the prior state of the
art.
Trading Techs. Int'!, Inc. v. CQG, INC, 675 F. App'x 1001, 1004 (Fed. Cir.
2017). In contrast, in Appellants' claim 1, we find only abstract
improvements to refining the target audience for the advertisement based at
least in part on the analysis of the responses to the recall questions. A claim
directed to a unique and advantageous method of targeting advertising is
nonetheless directed to an abstract idea. 7 "[U]nder the Mayol Alice
framework, a claim directed to a newly discovered law of nature ( or natural
phenomenon or abstract idea) cannot rely on the novelty of that discovery
for the inventive concept necessary for patent eligibility .... " Genetic
7 See Ultramercial, Inc. v. Hulu LLC, 772 F.3d 709 (Fed. Cir. 2014). In
that case, the patentee argued that its financial arrangement ( a method of
using advertising as an exchange or currency) was distinguishable from the
"routine," "long prevalent," or "conventional" abstract idea in Alice
because it was "directed to a specific method of advertising and content
distribution that was previously unknown." Id. at 714. The court rejected
the patentee's position that "abstract ideas remain patent-eligible under
§ 101 as long as they are new ideas, not previously well known, and not
routine activity." Id.
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Techs. Ltd. v. Merial L.L.C., 818 F.3d 1369, 1376 (Fed. Cir. 2016)
(emphasis added); see Diehr, 450 U.S. at 188-89.
Further, Appellants' "Affinity Labs" and "advertisement technologies"
arguments are not persuasive. While we agree with Appellants that the
Examiner has read too much into the Affinity Labs decision, as the court did
not explicitly speak to whether the one specific targeting advertising claim
of Affinity Labs was a certain method of organizing human activity directed
to an abstract idea, Appellants overlook that the court in Affinity Labs was
explicit that
in Ultramercial, we found the process of allowing a consumer to
receive copyrighted media in exchange for watching a selected
advertisement was an abstract idea.
Affinity Labs, 838 F.3d at 1269 (citation omitted); Ultramercial, 772 F.3d
709. Contrary to Appellants' argument that advertising is a technology, we
conclude that the claimed targeting advertising is directed to an abstract
idea.
We agree with the Examiner. We determine that the refining of a
target advertising audience of claim 1 recites a judicial exception in the form
of a method of organizing human activity comprising commercial or legal
interactions (including advertising, marketing or sales activities or
behaviors).
D.2.
Also as to claim 1, Appellants contend "[ t ]he claims herein ... recite
improvements to advertisement technologies." App. Br. 14. Appellants
particularly contend:
The Office Action alleges "the claims(s) do not include
additional elements that are sufficient to amount to significantly
more," and points to the processor and the computer-
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implemented language as being the additional elements. Office
Action, p. 8. Because the Examiner erroneously stated the
entire claim as the abstract idea, these are the only remaining
elements to consider in the Examiner's significantly more
analysis. Yet, if the abstract idea were the first point that the
Examiner raised of "analyzing, the response to the recall question
to determine whether sub-market segments within the subset
have different recollection of the advertisement," then the steps
of determining the identities of the recipients, determining the
first market segment profile, selecting a subset, providing each
with a recall question, receiving responses, determining the
recollection rate, and receiving and refining the target audience
are all additional limitations. Considered as a whole, these
additional limitations recite much more than the alleged abstract
idea.
App. Br. 13 (emphasis added).
Contrary to Appellants' argument that all the above argued functions
of claim 1 are "additional limitations" (i.e., technology limitations rather
than part of the abstract idea), the Examiner correctly identifies that these
functions are part of the abstract idea. Final Act. 5---6. As we discuss above,
we do not find before us a non-abstract improvement to technology. Again,
we conclude, the focus of claim 1 is not on an improvement in computer-
functionality.
We agree with the Examiner that as to claim 1, "viewed individually
and in combination, these additional claim element( s) do not provide
meaningful limitation( s) to transform the abstract idea into a patent eligible
application of the abstract idea." Final Act. 9. In view of Appellants'
Specification (i1i155-56), and consistent with the Examiner's determinations,
we conclude that claim 1 does not integrate the judicial exception into a
practical application. We determine claim 1 does not recite:
(i) an improvement to the functioning of a computer;
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(ii) an improvement to another technology or technical field;
(iii) an application of the abstract idea with, or by use of, a
particular machine;
(iv) a transformation or reduction of a particular article to a
different state or thing; or
(v) other meaningful limitations beyond generally linking the
use of the abstract idea to a particular technological
environment.
See MPEP §§ 2106.05(a}-(c), (e}-(h). We agree with the Examiner that
claim 1 is directed to a judicial exception.
D.3.
As noted above, the Examiner determined the additional elements of
"computer-implemented" and "by a processor" are generic computer
limitations similar to what the courts have recognized as well-understood,
routine, and conventional.
Although claim 1 recites "more" under step two of the Alice/Mayo
analysis, we conclude the "more" is not patentably significant. Rather, the
case law shows this "more" to be the epitome of a well-understood, routine,
conventional element/combination previously known in the industry. See
Alice, 573 U.S. at 227 ("[P]etitioner's ... media claims add nothing of
substance to the underlying abstract idea .... "); F airwarning IP, Inc. v.
Iatric Sys., Inc., 839 F.3d 1089, 1096 (Fed. Cir. 2016) ("Claims 15-17 ...
add nothing more than similar nominal recitations of basic computer
hardware, such as 'a non-transitory computer-readable medium with
computer-executable instructions' and a microprocessor.").
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Because claim 1, in addition to the judicial exception, recites only a
well-understood, routine, conventional element/combination previously
known in the industry, we conclude the case law shows there is no genuine
issue of material fact regarding step two of the Examiner's Alice/Mayo
analysis. Therefore, in view of Appellants' Specification, and consistent
with the Examiner's determinations, we determine the claims do not recite:
(vi) a specific limitation other than what is well-understood,
routine, conventional activity m the field or
unconventional steps that confine the claim to a particular
useful application.
See MPEP § 2106.05(d).
D.4.
As to claim 1, Appellants further contend:
[T]he court in McRo Inc. v. Bandai Namco Games America[SJ
made clear that a key concern was one of preemption, which
"arises when the claims are not directed to a specific invention
and instead improperly monopolize 'the basic tools of scientific
and technological work.' No. 15-1080 (Fed. Cir. 2016) at p. 23
(citing Alice, 134 S. Ct. at 2354 (quoting Myriad,[9J 133 S. Ct. at
2116)), But the claimed invention here is not preempting all
advertising, nor is it even preempting use of recall questions for
advertisements, or analyzing responses to recall questions, or
even providing a refined target audience. Instead, it recites a
particular solution to a problem or a particular way to achieve a
desired outcome, as opposed to merely claiming the idea of a
solution or outcome. The claim describes a detailed set of steps
including recall questions and responses, determining a
8 McRO, Inc. v. Bandai Namco Games America Inc., 837 F.3d 1299 (Fed.
Cir. 2016).
9 Ass 'nfor Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576
(2013).
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recollection rate in a particular way, analyzing the result in a
particular way, and ultimately refining a target audience. This is
a particular way to achieve data on recall of users and to get at
better target audience for the advertiser based on the data
collected and analyzed.
App. Br. 15-16 (emphasis added).
Appellants' "preemption" argument is not persuasive because
although "preemption may signal patent ineligible subject matter, the
absence of complete preemption does not demonstrate patent eligibility."
Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir.
2015). We are instructed that "[ w ]here a patent's claims are deemed only to
disclose patent ineligible subject matter under the [Alice/Mayo] framework
... , preemption concerns are fully addressed and made moot." Id.
E. Appellants '§ 103 Arguments
E.1.
Appellants contend that the Examiner erred in rejecting claim 1 under
35 U.S.C. § 103(a) because:
[T]he suggested combination of Mallon and Eldering fails to
disclose or suggest all of the limitations of the rejected claims, at
least because these references do not describe methods for
determining a recall rate that is a function of a number of
received responses and an inverse function of a number of
recipients in the plurality of recipients.
Mallon is generally about a computer implemented
method that serves advertisements to audiences. See Mallon,
Abstract. The method disclosed by Mallon includes identifying
a first advertisement opportunity, and determining a threshold
length of time for advertisement exposure, wherein the exposure
length may be determined by recall rates. . .. That is, Mallon' s
recall rate is a measure of how well a user remembers an
advertisement as a function of how long the user was exposed to
the advertisement.
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App. Br. 16-17 (emphasis added).
In the Answer with regard to claim 1, the Examiner relies
on Mallon on paragraphs [0106] and [0121]. ... by the
Examiner's own admission, Mallon teaches a recall rate that is
simply dependent on the number of responses and reducing the
initial sample size by subtracting outliers. Accordingly, the
recall rate of Mallon is a direct function of the number of
responses rather than a recollection rate that is an inverse
function of the number of responses.
Reply Br. 9-10 (emphasis added).
As to Appellants' arguments, we disagree. First, we construe the
critical term "rate" of claim 1. Reviewing the Specification, we find the
Appellants describe a "recollection rate" as "a function of the number of
responses and an inverse function of the number of recipients in the plurality
of recipients." Spec. ,r 39. Alternatively, Appellants refer to this as a "recall
rate." Spec. ,r 46. Appellants' use of the term "rate" is consistent with
Dictionary.com, 10 which states that the term "rate" means:
noun. a quantity or amount considered in relation to or measured
against another quantity or amount.
We conclude that an artisan would understand the term "rate" to require a
relationship in the form a/b where "a" is a first value as a direct function and
"b" is a second value as an inverse function. As Appellants acknowledge,
Mallon includes a recall rate and we conclude that implicitly includes a first
value as a direct function and a second value as an inverse function.
10 Based on the Collins English Dictionary-Complete & Unabridged 2012
Digital Edition(© William Collins Sons & Co. Ltd. 1979, 1986
© HarperCollins Publishers 1998, 2000, 2003, 2005, 2006, 2007, 2009,
2012), https://www.dictionary.com/browse/rate (Accessed February 2,
2019).
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Second, we determine whether an artisan would understand Mallon's
first value as a direct function is to a number of responses. Appellants
acknowledge Mallon includes a recall rate that is a direct function of the
number of responses. Reply Br. 9. Also, we note Appellants argue the
claimed recollection rate is "a recollection rate that is an inverse function of
the number of responses." Reply Br. 9-10 (emphasis added). However,
Appellants are mistaken. Claim 1 recites "a recollection rate that is a
function of a number of received responses." Claim 1 does not require an
inverse function of the number of the received responses.
Third, we determine whether an artisan would understand Mallon' s
second value as an inverse function is to a number of recipients. We
conclude that an artisan reading Mallon at paragraph 121, cited by the
Examiner, would understand the sample of participants to correspond to
Appellants' claimed number of recipients. Further, an artisan would
understand Mallon's figure 7, at the left axis, to show a recall rate as a
function of the number of responses and an inverse function of the number
of participants. We note that Appellants argue Mellon's recall rate includes
exposure times as an additional factor. App. Br. 17. However, that Mallon
includes another level of complexity (the Exposure Time axis) in addition to
the basic recall rate, is immaterial. We find no limitation in Appellants'
claim 1 that precludes such additional factors.
E.2.
Appellants contend that the Examiner erred in rejecting claim 10
under 35 U.S.C. § 103(a) because:
D 'Angelo is generally about a social networking website
that "uses information it obtains about its members'
characteristics, actions and their connections to other members
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of the social network. The social network allows advertisers to
provide advertisements that are personalized to the individual
interests or characteristics of various social network members."
D' Angelo, ,r 6. However, nowhere does D'Angelo recite
"determining ... a recollection rate ... " as recited by claim 1.
Therefore, D 'Angelo in combination with Mallon and Eldering
still fails to teach this element.
App. Br. 19 (emphasis added).
First, the Examiner does not cite D 'Angelo for the argued
"determining ... a recollection rate" limitation. Rather, the Examiner cites
Mallon. Final Act. 11.
Thus, Appellants do not address the actual reasoning of the
Examiner's rejection. Instead, Appellants attack the D' Angelo reference
singly for lacking a teaching that the Examiner relied on a combination of
references to show. It is well-established that one cannot show non-
obviousness by attacking references individually where the rejections are
based on combinations of references. See In re Keller, 642 F.2d 413, 425
(CCPA 1981); In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986).
References must be read, not in isolation, but for what they fairly teach in
combination with the prior art as a whole. Merck, 800 F .2d at 1097.
E.3.
In the Reply Brief, Appellants contend that the Examiner erred in
rejecting claims 13 and 26 under 35 U.S.C. § 103(a). We do not reproduce
these contentions herein. These arguments were not previously argued in
the Appeal Brief, or newly raised by the Examiner in the Answer. In the
absence of a showing of good cause by Appellants, we decline to consider
an argument raised for the first time in the Reply Brief, as the Examiner has
not been provided a chance to respond. See 37 C.F.R. § 41.41(b)(2) (2012);
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In re Hyatt, 211 F.3d 1367, 1373 (Fed. Cir. 2000) (noting that an argument
not first raised in the brief to the Board is waived on appeal); Ex parte
Nakashima, 93 USPQ2d 1834, 1837 (BPAI 2010) (explaining that
arguments and evidence not timely presented in the principal brief will not
be considered when filed in a reply brief, absent a showing of good cause
explaining why the argument could not have been presented in the principal
brief); Ex parte Borden, 93 USPQ2d 14 73, 14 77 (BP AI 2010) (informative)
("Properly interpreted, the Rules do not require the Board to take up a
belated argument that has not been addressed by the Examiner, absent a
showing of good cause."). Appellants have provided no showing of good
cause. 11
CONCLUSIONS
(1) The Examiner has not erred in rejecting claims 1-10, 13-23, and
26-28 under 35 U.S.C. § 101, as being directed to patent-ineligible subject
matter.
(2) The Examiner has not erred in rejecting claims 1-10, 13-23, and
26-28 as being unpatentable under 35 U.S.C. § 103.
(3) Claims 1-10, 13-23, and 26-28 are not patentable.
11 Further, even if we were to consider Appellants' contentions, Appellants
merely recite the particular language of claims 13 and 26, and assert the
cited prior art references do not disclose ( or teach or suggest) the claim
limitations. Without more, this fails to constitute an argument on the merits.
See 37 C.F.R. § 4I.37(c)(l)(iv); In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir.
2011 ). Appellants do no present arguments addressing the issue before us,
i.e., whether claims 13 and 26 are "rendered obvious" by the references.
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DECISION
The Examiner's rejection of claims 1-10, 13-23, and 26-28 under
35 U.S.C. § 101, as being directed to patent-ineligible subject matter, is
affirmed.
The Examiner's rejections of claims 1-10, 13-23, and 26-28 as being
unpatentable under 35 U.S.C. § 103 are affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 3 7 C.F .R. § 1.13 6( a )(1 )(iv).
AFFIRMED
25