Ex Parte Yan et al

Patent Trial and Appeal Board

Oct 25, 2018

14177385 (P.T.A.B. Oct. 25, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/177,385 02/11/2014
108982 7590 10/29/2018
Wolfe-SBMC
116 W. Pacific A venue
Suite 200
Spokane, WA 99201
FIRST NAMED INVENTOR
Zhenyu Yan
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.
3854US01 1157
EXAMINER
CIRNU, ALEXANDRU
ART UNIT PAPER NUMBER
3681
NOTIFICATION DATE DELIVERY MODE
10/29/2018 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):
docket@sbmc-law.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ZHENYU YAN, PRA VEEN KRISHNAKUMAR,
ABHISHEK PANI, ANIL KAMATH, SUMAN BASETTY,
and KUNAL KUMAR JAIN
Appeal2017-007105
Application 14/1 77,385 1
Technology Center 3600
Before JOHN A. EVANS, LARRY J. HUME, and
JENNIFER L. MCKEOWN, Administrative Patent Judges.
HUME, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) of the
Examiner's Final Rejection of claims 1--4, 7, 8, 10-18 and 20, which are all
claims pending in the application. Appellants have canceled claims 5, 9,
and 19. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 According to Appellants, the real party in interest is Adobe Systems Inc.
App. Br. 3.
Appeal2017-007105
Application 14/1 77,385
STATEMENT OF THE CASE2
The Invention
Appellants' disclosed embodiments and claimed invention relate to
" [ a ]n ensemble model ... that predicts revenue metrics for one or more
keywords [ and which] is formed using both a historical model and a user
behavior model." Spec. ,r 4.
Exemplary Claim
Claim 1, reproduced below, is representative of the subject matter on
appeal (emphases added to contested prior-art limitations):
1. A method implemented by a computing device, the
method comprising:
generating, by the computing device, a historical model
that models historical data associated with performance of one
or more keywords regarding revenue generated based on online
advertising instances associated with the one or more
keywords;
generating, by the computing device, a user behavior
model separate and distinct from the historical model that
models online user behavior associated with the one or more
keywords;
estimating a first revenue prediction for the one or more
keywords using the historical model;
estimating a second revenue prediction for the one or
more keywords using the behavior model;
2 Our decision relies upon Appellants' Appeal Brief ("App. Br.," filed
Oct. 27, 2016); Reply Brief ("Reply Br.," filed Mar. 30, 2017); Examiner's
Answer ("Ans.," mailed Feb. 10, 2017); Final Office Action ("Final Act.,"
mailed Apr. 28, 2016); and the original Specification ("Spec.," filed
Feb. 11, 2014).
2
Appeal2017-007105
Application 14/1 77,385
assigning a weight to the first revenue prediction based,
at least in part, on a sparsity value indicating usefulness of the
historical model to predict the performance of the one or more
keywords;
assigning a weight to the second revenue prediction, the
assigned weight of the second revenue prediction being, at least
in part, related to the assigned weight of the first revenue
prediction model;
forming, by the computing device, an ensemble model
using the assigned weight of the first revenue prediction from
the historical model and the assigned weight of the second
revenue prediction from the user behavior model;
predicting, by the computing device, revenue metrics for
the one or more keywords based at least in part on the ensemble
model;
communicating, by the computing device and over a
computer network, the predicted revenue metrics to an
advertiser; and
causing the predicted revenue metrics for the one or more
keywords to be presented to the advertiser.
Prior Art
The Examiner relies upon the following prior art as evidence in
rejecting the claims on appeal:
Rifkin et al. ("Rifkin") US 2008/0162386 Al July 3, 2008
Parekh et al. ("Parekh") US 2010/0076850 Al Mar. 25, 2010
Agarwal et al. ("Agarwal") US 7,734,503 B2 June 8, 2010
Bilenko et al. ("Bilenko") US 2011/0295687 Al Dec. 1, 2011
Tomak US 8,260,680 B2 Sept.4, 2012
Synett et al. ("Synett") US 2013/0204700 Al Aug. 8, 2013
Anand et al. ("Anand") US 2014/0129536 Al May 8, 2014
3
Appeal2017-007105
Application 14/1 77,385
Rejections on Appea/3
RI. Claims 1--4, 7, 8, 10-18 and 20-24 stand rejected under 35
U.S.C. § 101 as being directed to patent-ineligible subject matter. Final
Act. 2; Ans. 1.
R3. Claims 1--4, 7, 21, and 22 stand rejected under 35 U.S.C. § 103
as being unpatentable over the combination of Synett, Agarwal, and Parekh.
Final Act. 5.
R4. Claims 8, 11-13, and 23 stand rejected under 35 U.S.C. § 103
as being unpatentable over the combination of Synett, Agarwal, and Parekh.
Final Act. 9.
R5. Claim 10 stands rejected under 35 U.S.C. § 103 as being
unpatentable over the combination of Synett, Agarwal, and Rifkin. Final
Act. 11.
R6. Claims 14, 15, 17, 20, and 24 stand rejected under 35 U.S.C.
§ 103 as being unpatentable over the combination of Synett and Tomak.
Final Act. 12.
R7. Claim 16 stands rejected under 35 U.S.C. § 103 as being
unpatentable over the combination of Synett, Tomak, and Bilenko. Final
Act. 14.
R8. Claim 18 stands rejected under 35 U.S.C. § 103 as being
unpatentable over the combination of Synett, Tomak, and Anand. Id.
3 We note the Examiner has withdrawn Rejection R2 (Final Act. 4) of
claims 1, 8, 10, 14, and 21 under 35 U.S.C. § 112(b) as being indefinite. See
Ans. 2.
4
Appeal2017-007105
Application 14/1 77,385
CLAIM GROUPING
Based on Appellants' arguments (App. Br. 14--34), we decide the
appeal of patent-ineligible subject matter Rejection RI of claims 1--4, 7, 8,
10-18 and 20 on the basis of representative claim 1; we decide the appeal of
obviousness Rejection R3 of claims 1--4, 7, 21, and 22 on the basis of
representative claim 1; we decide the appeal of obviousness Rejection R4 of
claims 8, 11-13, and 23 on the basis of representative claim 8; and we
decide the appeal of obviousness Rejection R6 of claims 14, 15, 17, 20,
and 24 on the basis of representative claim 14.
Remaining claims 10, 16, and 18 in Rejections R5, R7, and R8, not
argued separately, stand or fall with the respective independent claim from
which they depend. 4
ISSUES AND ANALYSIS
In reaching this decision, we consider all evidence presented and all
arguments actually made by Appellants. To the extent Appellants have not
advanced separate, substantive arguments for particular claims, or other
issues, such arguments are waived. 37 C.F.R. § 4I.37(c)(l)(iv).
We disagree with Appellants' arguments with respect to claims 1--4, 7,
8, 10-18 and 20 and, unless otherwise noted, we incorporate by reference
herein and adopt as our own: ( 1) the findings and reasons set forth by the
4 "Notwithstanding any other provision of this paragraph, the failure of
appellant to separately argue claims which appellant has grouped together
shall constitute a waiver of any argument that the Board must consider the
patentability of any grouped claim separately." 37 C.F.R. § 4I.37(c)(l)(iv).
In addition, when Appellants do not separately argue the patentability of
dependent claims, the claims stand or fall with the claims from which they
depend. In re King, 801 F.2d 1324, 1325 (Fed. Cir. 1986).
5
Appeal2017-007105
Application 14/1 77,385
Examiner in the action from which this appeal is taken, and (2) the reasons
and rebuttals set forth in the Examiner's Answer in response to Appellants'
arguments. We highlight and address specific findings and arguments
regarding claims 1, 8, and 14 for emphasis as follows.
1. § 101 Rejection RI of Claims 1--4, 7, 8, 10-18 and 20
Issue 1
Appellants argue (App. Br. 15-24; Reply Br. 2-7) the Examiner's
rejection of claim 1 under 35 U.S.C. § 101 as being directed to patent-
ineligible subject matter is in error. These contentions present us with the
following issue:
Under our governing case law concerning 35 U.S.C. § 101, did the
Examiner err in concluding claim 1 is directed to a judicial exception, i.e., an
abstract idea, without significantly more, and thus is patent-ineligible under
§ 101?
Analysis
Alice Framework
Section 101 provides that anyone who "invents or discovers any new
and useful process, machine, manufacture, or composition of matter, or any
new and useful improvement thereof' may obtain a patent. 35 U.S.C. § 101.
The Supreme Court has repeatedly emphasized that patent protection should
not extend to claims that monopolize "the basic tools of scientific and
technological work." Gottschalk v. Benson, 409 U.S. 63, 67 (1972); Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 71 (2012);
Alice Corp. Pty. Ltd. v. CLS Bankint'l, 134 S.Ct. 2347, 2354 (2014).
6
Appeal2017-007105
Application 14/1 77,385
Accordingly, laws of nature, natural phenomena, and abstract ideas are not
patent-eligible subject matter. Alice Corp., 134 S.Ct. at 2354.
The Supreme Court's two-part Alice framework guides us in
distinguishing between patent claims that impermissibly claim the "building
blocks of human ingenuity" and those that "integrate the building blocks into
something more." Alice Corp., 134 S.Ct. at 2354 (citation and bracketing
omitted). First, we "determine whether the claims at issue are directed to [a]
patent-ineligible concept[]." Id. at 2355. If so, we "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." Id. at
2357 (quoting Mayo, 566 U.S. at 72, 79). Although the two steps of the
Alice framework are related, the "Supreme Court's formulation makes clear
that the first-stage filter is a meaningful one, sometimes ending the § 101
inquiry." Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed.
Cir. 2016). We note the Supreme Court "has not established a definitive rule
to determine what constitutes an 'abstract idea"' for the purposes of step one.
Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1334 (Fed. Cir. 2016) (citing
Alice, 134 S. Ct at 2357).
In Enfzsh, our reviewing court held claims directed to a self-referential
logical model for a computer database patent-eligible under step one of
Alice. Enfzsh, 822 F.3d at 1330. The disclosed technique enabled faster
searching and more effective storage of data than previous methods. Id. at
1333. The court found the claims directed to "a specific improvement to the
way computers operate, embodied in the self-referential table" (id. at 1336),
and explained that the claims are "not simply directed to any form of storing
tabular data, but instead are specifically directed to a self-referential table
7
Appeal2017-007105
Application 14/1 77,385
for a computer database" that functions differently than conventional
databases. Id. at 1337.
In McRO, the claims were not held to be abstract because they recited
a "specific ... improvement in computer animation" using "unconventional
rules that relate[ d] sub-sequences of phonemes, timings, and morph weight
sets." McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299, 1302-
03, 1307---08, and 1314--15 (Fed. Cir. 2016). InMcRO, "the incorporation of
the claimed rules, not the use of the computer," improved an existing
technological process. Id. at 1314.
However, our reviewing court has held claims ineligible as directed to
an abstract idea when they merely collect electronic information, display
information, or embody mental processes that could be performed by
humans. Elec. Power Grp., 830 F.3d at 1353-54 (collecting cases). At the
same time, "all inventions at some level embody, use, reflect, rest upon, or
apply laws of nature, natural phenomena, or abstract ideas." Mayo, 566 U.S.
at 71. Abstract ideas may include, but are not limited to, fundamental
economic practices, methods of organizing human activities, an idea of
itself, and mathematical formulas or relationships. Alice 134 S.Ct. at 2355-
57. Under this guidance, we must therefore ensure at step one that we
articulate what the claims are directed to with enough specificity to ensure
the step one inquiry is meaningful. Id. at 2354 ("[W]e tread carefully in
construing this exclusionary principle lest it swallow all of patent law.").
Under the "abstract idea" step we must evaluate "the 'focus of the
claimed advance over the prior art' to determine if the claim's 'character as a
whole' is directed to excluded subject matter." Affinity Labs of Tex., LLC v.
DIRECTV, LLC, 838 F.3d 1253, 1257 (Fed. Cir. 2016) (citation omitted). If
8
Appeal2017-007105
Application 14/1 77,385
the claims are not directed to a patent-ineligible concept, the inquiry ends.
See Visual Memory LLC v. NVIDIA Corp., 867 F.3d 1253, 1262 (Fed.
Cir. 2017). If the concept is directed to a patent-ineligible concept, we
proceed to the "inventive concept" step. For that second step we must "look
with more specificity at what the claim elements add, in order to determine
'whether they identify an "inventive concept" in the application of the
ineligible subject matter' to which the claim is directed." Affinity Labs, 838
F.3d at 1258 (quoting Elec. Power Grp., 830 F.3d at 1353).
Alice Step I -Abstract Idea
The Examiner concludes the claims are directed to the abstract idea of
"estimating keyword revenue using historical/behavior data." Final Act. 2.
Similarly, the appealed claims "are directed towards predicting revenue
metrics based on prediction modeling." Ans. 2.
Appellants generally contend, "the Office has failed to establish that
the claims are patent-ineligible under § 101 using the applicable framework
adopted by the Supreme Court." App. Br. 15. "Further, the claims are not
directed to an abstract idea, and include elements sufficient to ensure that the
claims amount to significantly more than what the Office alleges is the
abstract idea itself." Id.
Appellants specifically argue, "[t]he Office's conclusory statement
fails to meet the first prong of the Mayo test because the Office fails to
analyze the entire claim and instead simply attempts to summarize the
claimed subject matter." App. Br. 16. Appellants continue by alleging,
"[t]he Office Action does not even cite actual claim language in its
conclusion that the claims are directed to an abstract idea, but rather, relies
9
Appeal2017-007105
Application 14/1 77,385
on a conclusory summary of the claimed subject matter. Thus, the Office
has failed to sufficiently establish under the first prong of Mayo that
Applicant's claims are directed to an abstract idea." App. Br. 17.
Under the "abstract idea" step we must evaluate "the 'focus of the
claimed advance over the prior art' to determine if the claim's 'character as a
whole' is directed to excluded subject matter." Affinity Labs, 838 F.3d
at 1257 ( citation omitted).
Turning to the claimed invention, claim 1 recites: " [a] method
implemented by a computing device." Claim 1 (preamble). The limitations
of method claim 1 also require the steps of:
(a) generating ... a historical model that models
historical data;
(b) generating ... a user behavior model ... that models
online user behavior;
( c) estimating a first revenue prediction ... using the
historical model;
( d) estimating a second revenue prediction ... using the
behavior model;
( e) assigning a weight to the first revenue prediction;
(f) assigning a weight to the second revenue prediction;
(g) forming ... an ensemble model using the assigned
weight of the first revenue prediction from the historical model
and the assigned weight of the second revenue prediction from
the user behavior mode";
(h) "predicting ... revenue metrics ... based at least in
part on the ensemble model;
(i) communicating ... the predicted revenue; and
(j) causing the predicted revenue metrics for the one or
more keywords to be presented.
10
Appeal2017-007105
Application 14/1 77,385
Our reviewing courts have often identified abstract ideas by referring
to earlier precedent, e.g., by comparing a claimed concept to the concepts
previously identified as abstract ideas by the courts. Amdocs (Israel), Ltd. v.
Openet Telecom, Inc., 841 F.3d 1288, 1294 (Fed. Cir. 2016); Enfish, 822
F.3d. at 1334. For example, in Alice, the Supreme Court identified the
claimed systems and methods as describing the concept of intermediated
settlement, and then compared this concept to the risk hedging concept
identified as an abstract idea in Bilski. Because this comparison revealed
"no meaningful distinction between the concept of risk hedging in Bilski and
the concept of intermediated settlement at issue here," the Court concluded
that the concept of intermediated settlement was an abstract idea. Alice, 134
S.Ct. at 2356-57. Similarly, the Federal Circuit in Amdocs compared the
claims at issue with "eligible and ineligible claims of a similar nature from
past cases" as part of its eligibility analysis. Amdocs, 841 F.3d at 1295-
1300.
Under step one, we agree with the Examiner that the invention
claimed in independent claim 1 is directed to an abstract idea, i.e., estimating
revenue using historical and behavior data, which we also conclude is a
method of organizing human activity, specifically, concepts relating to
advertising, marketing, and sales activities or behaviors. See Ans. 3.
We conclude claim 1 is directed to an abstract idea because it is
analogous in key respects to In re Maucorps, 609 F.2d 481 (CCPA 1979), in
which a computer-implemented model of a sales organization was
determined to be directed to an abstract idea because it was implemented by
using algorithms and data described in the specification to determine the
11
Appeal2017-007105
Application 14/1 77,385
optimum number of times a sales representative for a business should visit
each customer over a period of time, as well as the optimum organization of
sales representatives. Maucorps, 609 F.2d at 486.
As the Specification discloses:
An ensemble model is described that predicts revenue
metrics for one or more keywords. In one or more
implementations, an ensemble model is formed using both a
historical model and a user behavior model. The historical
model may include historical data indicative of revenue
generated from previous advertising instances associated with a
keyword whereas the user behavior model may include data
describing online user behavior associated with the keyword. In
one or more implementations, weights are assigned to the
historical model and/ or the user behavior model based on
sparsity of the historical data used to form the historical model.
For example, if the historical data is rich (e.g., represents a high
likelihood of accurately predicting revenues for the keyword),
then a higher weight is assigned to the historical model relative
to the weight assigned to the user behavior model.
Spec. ,r 4.
We find this type of activity, i.e., estimating revenue using historical
and behavior data, for example, includes longstanding conduct that existed
well before the advent of computers and the Internet, and could be carried
out by a human with pen and paper. See CyberSource Corp. v. Retail
Decisions, Inc., 654 F.3d 1366, 1375 (Fed. Cir. 2011) ("That purely mental
processes can be unpatentable, even when performed by a computer, was
precisely the holding of the Supreme Court in Gottschalk v. Benson."). 5
5 CyberSource further guides that "a method that can be performed by
human thought alone is merely an abstract idea and is not patent-eligible
under§ 101." CyberSource, 654 F.3d at 1373.
12
Appeal2017-007105
Application 14/1 77,385
Our reviewing court has previously held other patent claims ineligible
for reciting similar abstract concepts. For example, while the Supreme
Court has enhanced the § 101 analysis since CyberSource in cases like Mayo
and Alice, the Federal Circuit continues to "treat[] 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." Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1146-
47 (Fed. Cir. 2016) (quoting Elec. Power Grp., 830 F.3d at 1354).
In addition, the Federal Circuit has concluded that abstract ideas
include the concepts of collecting data, recognizing certain data within the
collected data set, and storing the data in memory. Content Extraction &
Transmission LLC v. Wells Fargo Bank, N.A., 776 F.3d 1343, 1347 (Fed.
Cir. 2014). Additionally, the collection of information and analysis of
information ( e.g., recognizing certain data within the dataset) are also
abstract ideas. Elec. Power Grp., 830 F.3d at 1353-54 (Collecting
information and "analyzing information by steps people go through in their
minds, or by mathematical algorithms, without more, [are] essentially
mental processes within the abstract-idea category."). Similarly, "collecting,
displaying, and manipulating data" is an abstract idea. Intellectual Ventures
I LLC v. Capital One Fin. Corp., 850 F.3d 1332, 1340 (Fed. Cir. 2017).
Also, collecting and comparing known information has been determined to
be an abstract idea. Classen Immunotherapies, Inc. v. Biogen IDEC, 659
F.3d 1057, 1067 (Fed. Cir. 2011) ("Claim 1 of the '283 patent states the idea
of collecting and comparing known information."). Further, a process that
employs mathematical algorithms to manipulate existing information to
generate additional information is abstract. Digitech Image Techs., LLC v.
13
Appeal2017-007105
Application 14/1 77,385
Elec.for Imaging, Inc., 758 F.3d 1344, 1351 (Fed. Cir. 2014). Also, more
recently, our reviewing court has also concluded that acts of parsing,
comparing, storing, and editing data are abstract ideas. Berkheimer v. HP
Inc., 881 F.3d 1360, 1367 (Fed. Cir. 2018).
Appellant also alleges claim 1 is patent-eligible because its practice
does not preempt practice by others. App. Br. 23-24. We agree with the
Examiner's response, which we incorporate herein by reference. Ans. 6.
Regarding preemption, "[w]hile preemption may signal patent ineligible
subject matter, the absence of complete preemption does not demonstrate
patent eligibility .... \Vhere a patent's clairns are deemed only to disclose
patent ineligible subject matter under the lvfayo frarnework, as they are in
this case, preemption concen1s are fully addressed and made moot." Ariosa
Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015);
see also OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1362---63
(Fed. Cir. 2015) ("[T]hat the claims do not preempt all price optimization or
may be limited to price optimization in the e-commerce setting do not make
them any less abstract.").
Therefore, in agreement with the Examiner, we conclude claim 1
involves nothing more than identifying, collecting, storing, comparing, and
generating data, without any particular inventive technology- an abstract
idea. See Elec. Power Grp., 830 F.3d at 1354. 6
Accordingly, on this record, and under step one of Alice, we agree
with the Examiner's conclusion the claims are directed to an abstract idea.
6 Merely automating previously manual processing by using computers does
not qualify as an eligibility-rejection-defeating improvement. Credit
Acceptance Corp. v. Westlake Servs., 859 F.3d 1044, 1055 (Fed. Cir. 2017).
14
Appeal2017-007105
Application 14/1 77,385
Alice Step 2 -Inventive Concept
If the claims are directed to a patent-ineligible concept, as we
conclude above, we proceed to the "inventive concept" step of the Alice
analysis. For that step we must "look with more specificity at what the
claim elements add, in order to determine 'whether they identify an
"inventive concept" in the application of the ineligible subject matter' to
which the claim is directed." Affinity Labs, 838 F.3d at 1258 (quoting Elec.
Power Grp., 830 F.3d at 1353).
In applying step two of the Alice analysis, our reviewing court guides
we must "determine whether the claims do significantly more than simply
describe [the] abstract method" and thus transform the abstract idea into
patentable subject matter. Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709,
715 (Fed. Cir. 2014). We look to see whether there are any "additional
features" in the claims that constitute an "inventive concept," thereby
rendering the claims eligible for patenting even if they are directed to an
abstract idea. Alice, 134 S.Ct. at 2357. Those "additional features" must be
more than "well-understood, routine, conventional activity." Mayo, 566
U.S. at 79.
Evaluating representative claim 1 under step 2 of the Alice analysis,
we agree with the Examiner that it lacks an inventive concept that
transforms the abstract idea of estimating revenue using historical and
behavior data into a patent-eligible application of that abstract idea. See
Ans. 3-5.
15
Appeal2017-007105
Application 14/1 77,385
For example, the Examiner concludes:
The claims as a whole, do not amount to significantly
more than the abstract idea itself. This is because the claims do
not effect an improvement to another technology or technical
field; the claims do not amount to an improvement to the
functioning of a computer itself; and the claims do not move
beyond a general link of the use of an abstract idea to a
particular technological environment.
The claims merely amounts to the application or
instructions to apply the abstract idea (i.e. estimating keyword
revenue using historical/behavior data) on a computer, and is
considered to amount to nothing more than requiring a generic
computer system ( e.g. a computer system comprising generic
elements such as a computer network, and hardware/software
modules) to merely carry out the abstract idea itself. As such,
the claims, when considered as a whole, are nothing more than
the instruction to implement the abstract idea (i.e. estimating
keyword revenue using historical/behavior data) in a particular,
albeit well-understood, routine and conventional technological
environment.
Final Act. 3--4 ( emphasis omitted). 7
7 The Examiner further concludes:
Claim 1 does not include additional elements that are
sufficient to amount to significantly more than the judicial
exception because the additional elements when considered
both individually and as combination do not amount to
significantly more than the abstract idea. The claim recites the
additional elements of a computing device and a computer
network, which represent generic computing elements.
These computing elements are recited at a high level of
generality and only perform generic functions of receiving,
manipulating and transmitting information. Generic computers
performing generic functions, do not amount to significantly
more than the abstract idea.
16
Appeal2017-007105
Application 14/1 77,385
Additionally, Appellant's reliance on DDR (Reply Br. 5) is misplaced
as the recited claims do not improve the computer. In DDR, the claims at
issue involved, inter alia, "web pages displays [with] at least one active link
associated with a commerce object associated with a buying opportunity of a
selected one of a plurality of merchants" (claim 1 of US 7,818,399). The
Federal Circuit found the claims in DDR to be patent-eligible under the
Mayo/Alice test because "the claimed solution is necessarily rooted in
computer technology in order to overcome a problem specifically arising in
the realm of computer networks." DDR Holdings, LLC v. Hotels.com, L.P.,
773 F.3d 1245, 1257 (Fed. Cir. 2014). Specifically, the Federal Circuit
found the claims addressed the "challenge of retaining control over the
attention of the customer in the context of the Internet." Id. at 1258.
We find the rejected claims are dissimilar to DDR's web page with an
active link, and the Specification does not support the view that the
computer related claim elements are unconventional. See Spec. ,r,r 25-26
and 67-71. 8
Looking at the elements as combination does not add
anything more than the elements analyzed individually.
Therefore, Claim 1 does not amount to significantly more than
the abstract idea itself. The claim is not patent eligible.
Ans. 3--4.
8 Appellants belatedly and unpersuasively argue:
[T]his case is analogous to DDR Holdings .... [because] the
claimed subject matter utilizes a set of rules that enable users to
apply an ensemble model with weighting to both historical and
behavior models to predict keyword revenue, as reflected by the
features of claim 1 noted above. It follows that the claimed
solution is very much an "an improvement in computer-related
technology" by "allowing computer performance of a function
17
Appeal2017-007105
Application 14/1 77,385
In the Reply Brief, Appellants also belatedly argue the claims are
similar to those held patent-eligible in McRO. Reply Br. 2 ( citing McRO,
837 F.3d at 1299. The claims in McRO recited a "specific ... improvement
in computer animation" using "unconventional rules that relate[ d] sub
sequences of phonemes, timings, and morph weight sets." McRO, 837 F.3d
at 1302---03, 1307---08, and 1314--15. In McRO, "the incorporation of the
claimed rules, not the use of the computer," improved an existing
technological process. Id. at 1314. Appellants do not, however, identify
how claim 1 improves an existing technological process. See Alice, 134
S.Ct. at 2358 (Explaining that "the claims in Diehr were patent eligible
because they improved an existing technological process."). Rather, claim 1
concerns a "method implemented by a computing device" that "caus[es] the
predicted revenue metrics for the one or more keywords to be presented to
the advertiser." App. Br. 36-37 (Claims App.). In addition, Appellants do
not direct us to any evidence that the claimed generation of user and
historical behavior models and revenue estimations correspond to
unconventional rules.
not previously performable by a computer." Again, "[fJor
example, if the historical data is rich (e.g., represents a high
likelihood of accurately predicting revenues for the keyword),
then a higher weight is assigned to the historical model relative
to the weight assigned to the user behavior model"
(Specification, [0003]). Thus, the claims solve a specific
problem not addressed in the current art or previously
performed by a computer. Applicant respectfully submits that
the claims include features that amount to significantly more
than an abstract idea and is therefore patent eligible for these
additional reasons.
Reply Br. 6.
18
Appeal2017-007105
Application 14/1 77,385
We also note the patent eligibility inquiry may contain underlying
issues of fact. Mortg. Grader, Inc. v. First Choice Loan Servs. Inc., 811
F.3d 1314, 1325 (Fed. Cir. 2016). In particular, "[t]he question of whether a
claim element or combination of elements is well-understood, routine and
conventional to a skilled artisan in the relevant field is a question of fact."
Berkheimer, 881 F.3d at 1368.
As evidence of the conventional nature of the claimed network
components and processes, we note Appellant's Specification description of
the computer system architecture in paragraphs 25-26 and 67-71. For
example:
[0026] The computing device 102, for instance, may be
configured as a desktop computer, a laptop computer, a mobile
device (e.g., assuming a handheld configuration such as a tablet
or mobile phone), and so forth. Thus, the computing device 102
may range from full resource devices with substantial memory
and processor resources (e.g., personal computers, game
consoles) to a low-resource device with limited memory and/or
processing resources, e.g., mobile devices. Additionally,
although a single computing device 102 is shown, the
computing device 102 may be representative of a plurality of
different devices, such as multiple servers utilized by a business
to perform operations "over the cloud" as further described in
relation to FIG. 6.
* * *
[0069] The processing system 604 is representative of
functionality to perform one or more operations using
hardware. Accordingly, the processing system 604 is illustrated
as including hardware element 610 that may be configured as
processors, functional blocks, and so forth. This may include
implementation in hardware as an application specific
integrated circuit or other logic device formed using one or
19
Appeal2017-007105
Application 14/1 77,385
more semiconductors. The hardware elements 610 are not
limited by the materials from which they are formed or the
processing mechanisms employed therein. For example,
processors may be comprised of semiconductor( s) and/ or
transistors, e.g., electronic integrated circuits (I Cs). In such a
context, processor-executable instructions may be
electronically-executable instructions.
[0070] The computer-readable storage media 606 is
illustrated as including memory/storage 612. The
memory/storage 612 represents memory/storage capacity
associated with one or more computer-readable media. The
memory/storage component 612 may include volatile media
(such as random access memory (RAM)) and/or nonvolatile
media (such as read only memory (ROM), Flash memory,
optical disks, magnetic disks, and so forth). The
memory/storage component 612 may include fixed media (e.g.,
RAM, ROM, a fixed hard drive, and so on) as well as
removable media, e.g., Flash memory, a removable hard drive,
an optical disc, and so forth. The computer-readable media 606
may be configured in a variety of other ways as further
described below.
Spec. ,r,r 26, 69, and 70.
We agree with the Examiner that the claim limitations may be broadly
but reasonably construed as reciting conventional computer components and
techniques, particularly in light of Appellant's Specification, as quoted
above. 9
9 During prosecution, claims must be given their broadest reasonable
interpretation when reading claim language in light of the specification as it
would be interpreted by one of ordinary skill in the art. In re Am. Acad. of
Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). Under this standard,
we interpret claim terms using "the broadest reasonable meaning of the
words in their ordinary usage as they would be understood by one of
ordinary skill in the art, taking into account whatever enlightenment by way
of definitions or otherwise that may be afforded by the written description
20
Appeal2017-007105
Application 14/1 77,385
Appellants also allege the claimed steps of method claim 1 "cause a
transformation of the computer to a different state, thereby satisfying the
second prong of the Mayo framework." App. Br. 21. Further,
the computer transforms data associated with the historical
model and the online behavior model to form an ensemble
model, and outputs, using the ensemble model, new data in the
form of a predicted revenue metric. In addition, viewing the
claim elements as an ordered combination, the steps cause
improvements in the technology of revenue estimation
techniques for keywords in the post Internet environment. That
is, an improved revenue prediction metric for keywords is
presented to an advertiser to enable the advertiser to make
better decisions about how to allocate available resources to
keywords.
App. Br. 21-22.
As recognized by the Federal Circuit in Ultramercial, Inc. v. Hulu,
LLC, 772 F.3d 709, 715-16 (Fed. Cir. 2014), the "machine-or-
transformation" (MoT) test, as outlined in In re Bilski, 545 F.3d 943, 954
(Fed. Cir. 2008), can provide a "useful clue" in the second step of the Alice
framework.
Under Bilski's MoT test, a claimed process can be patent-eligible
under§ 101 if:
( 1) it is tied to a particular machine or apparatus; or
(2) the process transforms a particular article into a different state
or thing. Bilski, 545 F.3d at 954 (citing Gottschalk v. Benson, 409 U.S. 63,
70 (1972)).
contained in the applicant's specification." In re Morris, 127 F.3d 1048,
1054 (Fed. Cir. 1997).
21
Appeal2017-007105
Application 14/1 77,385
In this case, we are not persuaded the claimed method is tied to a
particular machine or apparatus. See e.g., Spec. ,r,r 25-26, 67-71. Even
assuming, arguendo, the claimed method satisfies the first prong of the MoT
test, on this record we are not persuaded that the claimed method of
manipulating and processing data is equivalent to changing a particular
article into a different state or thing.
Thus, with respect to the Step 2 analysis, we agree with the Examiner
because, as in Alice, the recitation of a "method implemented by a
computing device" to determine and present predicted revenue metrics is
simply not enough to transform the patent-ineligible abstract idea here into a
patent-eligible invention. See Alice, 134 S. Ct. at 2357 ("[C]laims, which
merely require generic computer implementation, fail to transform [an]
abstract idea into a patent-eligible invention."). 10
10 Appellants allege:
In particular, the claimed subject matter utilizes a set of
rules that enable users to apply an ensemble model with
weighting to both historical and behavior models to predict
keyword revenue, as reflected by the features of claim 1 noted
above. It follows that the claimed solution is very much an "an
improvement in computer-related technology" by "allowing
computer performance of a function not previously performable
by a computer." Again, " [ fJor example, if the historical data is
rich ( e.g., represents a high likelihood of accurately predicting
revenues for the keyword), then a higher weight is assigned to
the historical model relative to the weight assigned to the user
behavior model" (Specification, [0003]). Thus, the claims solve
a specific problem not addressed in the current art or previously
performed by a computer.
Reply Br. 6.
22
Appeal2017-007105
Application 14/1 77,385
Accordingly, based upon the findings above, on this record, we are
not persuaded of error in the Examiner's conclusion that the appealed claims
are directed to patent-ineligible subject matter. Therefore, we sustain the
Examiner's § 101 rejection of independent claim 1, and grouped
claims 2--4, 7, 8, 10-18 and 20, not argued separately, and which fall
therewith. See Claim Grouping, supra.
2. § 103 Rejection R3 of Claims 1--4, 7, 21, and 22
Issue 2
Appellants argue (App. Br. 25-29) the Examiner's rejection of claim 1
under 35 U.S.C. § 103(a) as being obvious over the combination of Synett,
Agarwal, and Parekh is in error. These contentions present us with the
following issue:
Did the Examiner err in finding the cited prior art combination teaches
or suggests a "method implemented by a computing device" that includes,
inter alia, the dispositive limitation of "generating, by the computing device,
a user behavior model separate and distinct from the historical model that
models online user behavior associated with the one or more keywords," as
recited in claim 1?
Analysis
The Examiner cites Synett paragraph 276 as teaching or suggesting
generation of a historical model "that models historical data associated with
performance of one or more keywords regarding revenue generated based on
online advertising instances associated with the one or more keywords."
Final Act. 5. The Examiner then relies upon paragraph 24 of Synett as
teaching or suggesting generation of "a user behavior model separate and
23
Appeal2017-007105
Application 14/1 77,385
distinct from the historical model that models online user behavior
associated with the one or more keywords." Final Act. 6.
Appellants contend, "[i]n those sections [ cited by the Examiner,]
Synett describes a 'computerized prediction method for individual users
based on user interactions history' and 'computing the performance
assessment for the series of interactions associated with the selected user."
App. Br. 26 (citing Synett ,r 24).
Thus, the Examiner is using the "interactions" in Synett
as comprising both the historical model and the user behavior
model. There is only one model described in Synett that relies
on the "interactions" to associate revenue with keywords.
Applicant can find no mention of two "separate and distinct"
models in Synett. Thus, Synett fails to teach or suggest,
"generating, by the computing device, a user behavior model
separate and distinct from the historical model that models
online user behavior associated with the one or more
keywords," as recited in claim 1.
App. Br. 26.
Based upon our review of the cited prior art and Appellants'
arguments quoted above, we are persuaded that Synett does not teach or
suggest that for it is offered.
Although Appellants make additional arguments with respect to
alleged deficiencies of the cited prior art combination, we find the issue
above to be dispositive to our Decision. 11
11 Because we agree with at least one of the dispositive arguments advanced
by Appellant, we need not reach the merits of Appellant's other arguments.
See Beloit Corp. v. Valmet Oy, 742 F.2d 1421, 1423 (Fed. Cir. 1984)
(finding an administrative agency is at liberty to reach a decision based on "a
single dispositive issue").
24
Appeal2017-007105
Application 14/1 77,385
Therefore, based upon the findings above, on this record, we are
persuaded of at least one error in the Examiner's reliance on the cited prior
art combination to teach or suggest the disputed limitation of claim 1, such
that we find error in the Examiner's resulting legal conclusion of
obviousness. Therefore, we sustain the Examiner's obviousness rejection of
independent claim 1, and grouped claims 2--4, 7, 21, and 22, which fall
therewith. See Claim Grouping, supra.
3. Rejection R4 of Claims 8, 11-13, and 23
For essentially the same reasons argued by Appellants in connection
with Rejection R2 of claim 1 in Issue 2, above, we reverse the Examiner's
rejection of independent claim 8, which recites the disputed limitation in
commensurate form. For the same reasons, we also reverse Rejection R4 of
claims 11-13 and 23 that depend therefrom.
4. Rejections R6 of Claims 14, 15, 17, 20, and 24
For essentially the same reasons argued by Appellants in connection
with Rejection R2 of claim 1 in Issue 2, above, we reverse the Examiner's
rejection of independent claim 14, which recites the disputed limitation in
commensurate form. For the same reasons, we also reverse Rejection R6 of
claims 15, 17, 20, and 24 that depend therefrom.
5. Rejections R5, R7, and R8 of Claims 10, 16, and 18
In light of our reversal of the rejections of independent claims 8 and
14, supra, we also reverse obviousness Rejections R5, R7, and R8 under
§ 103 of claims 10, 16, and 18, which variously and ultimately depend from
claims 8 and 14. On this record, the Examiner has not shown how the
additionally cited secondary Rifkin, Bilenko, and Anand references
25
Appeal2017-007105
Application 14/1 77,385
overcome the aforementioned deficiencies with Synett, as discussed above
regarding claims 8 and 14.
REPLY BRIEF
To the extent Appellants may advance new arguments in the Reply
Brief (Reply Br. 2-7) not in response to a shift in the Examiner's position in
the Answer, 12 we note arguments raised in a Reply Brief that were not raised
in the Appeal Brief or are not responsive to arguments raised in the
Examiner's Answer will not be considered except for good cause (see 37
C.F.R. § 41.4I(b)(2)), which Appellants have not shown.
CONCLUSIONS 13
(1) The Examiner did not err with respect to patent-ineligible
subject matter Rejection RI of claims 1--4, 7, 8, 10-18 and 20 under 35
U.S.C. § 101, and we sustain the rejection.
(2) The Examiner erred with respect to obviousness Rejection R3
through R8 of claims 1--4, 7, 8, 10-18 and 20 under 35 U.S.C. § I03(a) over
the cited prior art combinations of record, and we do not sustain the
rejections.
12 For example, we observe Appellants, for the first time in the Reply Brief,
belatedly argue the patentability of the claims rejected under Rejection RI
based uponMcRO (decided Sept. 13, 2016), Enfzsh (decided May 12, 2016),
and DDR Holdings (decided Dec. 5, 2014), all decided well before the filing
of the Appeal Brief on October 27, 2016. See Reply Br. 2 et seq.
13 We reiterate that Rejection R2 under 35 U.S.C. § 112 has been withdrawn
by the Examiner. Ans. 1.
26
Appeal2017-007105
Application 14/1 77,385
Because we have affirmed at least one ground of rejection with
respect to each claim on appeal, we affirm the Examiner's decision. See 37
C.F.R. § 4I.50(a)(l).
DECISION
We affirm the Examiner's decision rejecting claims 1--4, 7, 8, 10-18
and 20.
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). See 3 7
C.F.R. § 41.50(±).
AFFIRMED
27