Hueter, Geoffrey J. et al.

Patent Trials and Appeals Board

Oct 9, 2019

12416083 - (D) (P.T.A.B. Oct. 9, 2019)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
12/416,083 03/31/2009 Geoffrey J. Hueter CTONA.002A 3756
20995 7590 10/09/2019
KNOBBE MARTENS OLSON & BEAR LLP
2040 MAIN STREET
FOURTEENTH FLOOR
IRVINE, CA 92614
EXAMINER
GARCIA-GUERRA, DARLENE
ART UNIT PAPER NUMBER
3683
NOTIFICATION DATE DELIVERY MODE
10/09/2019 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):
efiling@knobbe.com
jayna.cartee@knobbe.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte GEOFFREY J. HUETER, STEVEN C. QUANDT, and
CHRISTOPERH J. BRYANT1
____________________

Appeal 2018-007627
Application 12/416,803
Technology Center 3600
____________________

Before ROBERT E. NAPPI, SCOTT E. BAIN, and MICHAEL T. CYGAN,
Administrative Patent Judges.

NAPPI, Administrative Patent Judge.

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1, 3 through 11, 13 through 20, and 22. We have
jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). According to Appellant, Certona Corporation is the real party in
interest. App. Br. 3.
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INVENTION
The invention is directed to a system for tracking subject behavior and
making object recommendations for content to be in a web page. Spec.
¶¶ 11, 12, Abstract. Claim 1 is illustrative of the invention and is
reproduced below.
1. An electronic system for generating personalized content
for a website, the electronic system comprising:
a data collection unit coupled to a website, the data
collection unit executing software instructions to collect
from the website behavioral data during an online
session, wherein the behavioral data comprises
information associated with a user, an item identifier, and
a type of a webpage of the website;
a service engine configured to generate the
personalized content for a recommendation box of the
website, service engine comprising:
a profiling unit configured to:
receive behavioral data from the data
collection unit; and
extract subject and object
characteristics, represented m vector form as
subject vectors and object vectors,
respectively, from the behavioral data,
represented as actual affinities of subjects to
objects;

a recommendation unit configured to
provide the personalized content based at least in
part on said subject and object characteristics, the
recommendation unit generating the personalized
content by:
generating a list of recommendations
based at least in part on predicted affinities
generated by matching one or more subject
vectors to one or more object vectors to
generate numerical affinity scores;
determining a different numerical bias
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for at least some different ones of the
numerical affinity scores of the list of
recommendations based at least in part on
attributes or metadata defined in an
application content catalog and a first set of
business objectives;
adding the determined numerical
biases to the associated numerical affinity
scores;
generating a ranked list of
recommendations based at least in part on
the sums of the numerical biases and the
numerical affinity scores;
accessing business rules comprising a
set of strategies, wherein the set of strategies
corresponds to one or more
recommendations in the recommendation
box, and wherein the set of strategies is
chosen based at least in part on the user's
response to the personalized content in the
recommendation box and a second set of
business objectives; and
generating a filtered ranked list of
recommendations by eliminating some
members of the ranked list of
recommendations based at least in part on
one or more of the business rules, wherein
the filtered ranked list comprises one or
more recommendations that meet the
business rules;

a targeted content generator configured to:
access the filtered ranked list and
display information from a catalog;
and generate the personalized content
in a data format using the filtered ranked list
and display information, wherein the
personalized content is configured to be
communicated to the recommendation box;
a display transformation unit configured to:
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Application 12/416,803
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receive the personalized content in the
data format from the target content
generator;
determine a display format associated
with the recommendation box;
in response to determining the display
format is different from the data format,
convert the data format to the display format
and communicate to the recommendation
box the personalized content in the
converted data format;
in response to determining the display
format is same as the data format,
communicate to the recommendation box
the personalized content in the data format;

a sampling unit configured to:
receive a conversion response of the
user to the personalized content of the
recommendation box;
update the set of strategies based on
one or more sampling frequencies wherein
each sampling frequency corresponds to one
or more strategies within the set of
strategies, and wherein the sampling
frequencies are determined based at least in
part on the conversion response of the user;
and
an attribution unit configured to:
measure the conversion response of
the user to the personalized content of the
recommendation box;
update the sampling frequency of a
strategy based at least in part on the
conversion response, wherein a sampling
frequency of a strategy associated with a
content is increased where the personalized
content receives greater conversion, and the
sampling frequency is decreased where the
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personalized content receives a lesser
conversion;

wherein said profiling unit is further configured to:
generate the subject vectors and the object vectors
by producing initial subject vectors and initial object
vectors having respective initial dimensions;
determine the predicted affinities based on the
initial subject vectors, initial object vectors, and the
actual affinities;
calculate a cost function; and
iteratively increase the dimensions of the generated
subject vectors and object vectors, and recalculate the
cost function based at least in part on differences between
the predicted affinities and actual affinities, until the cost
function decreases to a predetermined value.

EXAMINER’S REJECTION2
The Examiner rejected claims 1, 3 through 11, 13 through 20, and 22
under 35 U.S.C. § 101 for being directed to patent-ineligible subject matter.
Final Act. 2–6.

ANALYSIS
We have reviewed Appellant’s arguments in the Briefs, the
Examiner’s rejections, and the Examiner’s response to Appellant’s
arguments. Appellant’s arguments have persuaded us of error in the
Examiner’s rejection of all of the disputed claims under 35 U.S.C. § 101.

2 Throughout this Decision we refer to the Appeal Brief filed January 22,
2018 (“App. Br.”); Final Office Action mailed July 24, 2017 (“Final Act.”);
and the Examiner’s Answer mailed May 3, 2018 (“Ans.”)
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PRINCIPLES OF LAW
Patent-eligible subject matter is defined in 35 U.S.C. § 101 of the
Patent Act, which recites:
Whoever 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
therefor, subject to the conditions and requirements of this title.
There are, however, three judicially created exceptions to the broad
categories of patent-eligible subject matter in 35 U.S.C. § 101: “[l]aws of
nature, natural phenomena, and abstract ideas.” Alice Corp. v. CLS Bank
Int’l, 573 U.S. 208, 216 (2014); Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 566 U.S. 66, 70 (2012).
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. Alice, 573 U.S. at 217–18 (citing Mayo, 566 U.S. at 75–77). 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. Kappos, 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, 191
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(1981)); “tanning, dyeing, making water-proof cloth, vulcanizing India
rubber, smelting ores” (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S.
252, 267–68 (1853))); 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
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. (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 turn 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. (quoting Mayo, 566 U.S. at 77).
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“[M]erely requir[ing] generic computer implementation[] fail[s] to transform
that abstract idea into a patent-eligible invention.” Id.
The United States Patent and Trademark Office “USPTO” recently
published revised guidance on the application of § 101. USPTO’s 2019
Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50
(Jan. 7, 2019) (“Memorandum”). Under that guidance, we first determine
whether the claim recites:
(1) any judicial exceptions, including certain groupings of abstract
ideas (i.e., mathematical concepts, certain methods of organizing
human activity such as a fundamental economic practice, or mental
processes); and
(2) additional elements that integrate the judicial exception into a
practical application (see MANUAL OF PATENT EXAMINING PROCEDURE
(“MPEP”) § 2106.05(a)–(c), (e)–(h) (9th Ed., Rev. 08.2017, Jan.
2018)).
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.
DISCUSSION
The Examiner determines the claims are not patent eligible because
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they are directed to a judicial exception without reciting significantly more.
Final Act. 16–22. Specifically, the Examiner determines the claims are
directed to an abstract idea stating that the claims recite a method of
organizing human activities and that they recite limitations directed to
organizing information through mathematical correlations. Final Act. 3–4,
16–18. Further, the Examiner finds that the claims do not recite an
improvement to the function of a computer or another technology. Final
Act. 20.
Appellant argues the Examiner erred, because the claims are directed
to an improvement to a computer related technology. App. Br. 12–14 (citing
McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299 (Fed. Cir.
2016)). Specifically Appellant states:
Similar to McRO, the pending claims here are also
directed to a specific set of rules for improving a computer-
related technology (e.g., web content generation). The pending
claims describe a specific modeling technique for generating
recommended content for a web page. As part of this modeling
technique, the claims require the generation of subject and
object vectors in a specific subject-object data structure as well
as a specific technique for determining predicted affinities
(which may be used to determine the recommended content)
using the subject-object data structure. “A key aspect of the
invention is that, unlike other methods, it does not in fact
require knowledge of the specific parameters of the rules,
weighting factors for promotional biases, or specific knowledge
of which rules will produce the best results for a particular
application as these will be determined by the system itself in
the course of measuring and optimizing each strategy.” Spec.,
para. [0054].
App Br. 13.
Appellant’s arguments have persuaded us of error in the Examiner’s
rejection of independent claims 1 and 11 under 35 U.S.C. § 101. As
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discussed above, the USPTO has published recently revised guidance for the
application of § 101 and under that guidance we first determine whether the
claims recite a judicial exception including certain abstract ideas. Here the
Examiner has found that the claims recite two groupings of abstract ideas,
organizing human activity and organizing information through mathematical
correlations. The revised guidance identifies as abstract certain methods of
organizing human activity, specifically: fundamental economic principles or
practices (including hedging, insurance, mitigating risk), commercial or
legal interactions (including contracts, legal obligations, advertising,
marketing or sales activities or behaviors, business relations), and managing
personal behavior or relationships or interactions between people. The
revised guidance does not identify organizing information through
mathematical correlations as one of the categories of abstract ideas, but
rather discusses mathematical concepts. Although Appellant argues that the
claims are not, as a whole, directed to mathematical concepts, Appellant
admits that the claims include “calculating and recalculating cost functions,”
which the Examiner characterizes as using mathematical formulas. Br. 19;
Ans. 9–10.
We disagree with the Examiner’s determination that the claims do not
recite an improvement in a computer related technology. Each of the
independent claims recite accessing business rules comprising a set of
strategies chosen based upon business objects (which relate to an economic
principle) and adding a numerical basis to an numerical affinity score (which
relates to a mathematical process), and thus recite an abstract idea The
remainder of the independent claims recites a series of steps for improving
the generation of content, such as collecting behavioral data, extracting
subject and object characteristic in vector form from the behavioral data,
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providing content based upon the characteristics using predicted affinities by
matching vectors to generate affinity scores, generating ranking lists
eliminating some recommendations based upon business rules and
generating content. As such the claims are directed to an improvement in a
computer-related technology. The Examiner did not directly address
Appellant’s McRO argument in the Answer but in the Final Action the
Examiner states:

The claims at issue are far different from the claims in
McRO. The claims of the present case involve a method for
generating personalized content. The claims of the instant
application does not recite techniques for automatically
generating three-dimensional facial expressions matching a
prerecorded track of speech. Second, it is noted that the claims
in McRO recited a specific asserted improvement in computer
animation. In contrast, the claim here is not directed to any
improvement in computer functionalities/capabilities - only to
calculate a cost function.
Final Act. 7.
We concur with the Appellant that the claims at issue are like those at
issue in McRO in that they are directed to a specific set of rules for
improving a computer related technology. In McRO the court reviewed
claims which use “a combined order of specific rules that renders
information into a specific format that is then used and applied to create
desired results: a sequence of synchronized, animated characters” McRO,
837 F.3d at 1315. The court found that the claims did not “simply use a
computer as a tool to automate conventional activity,” but instead used the
computer to “perform a distinct process” that is carried out in a different way
than the prior non-computer method to improve the technology of (3-D
animation techniques). See McRO, 837 F.3d at 1314–16. Here the claim
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recites a particular ordered set of instructions including the application of
rules to collect behavioral data of a user of a website to generate personalize
content by extracting subject and object characteristic represented in vectors,
using the vectors to generate recommendations based upon numerical scores
generated based upon the vectors, where the scores are adjusted based upon
data in an application content catalog, and used to create a ranking list that is
further adjusted based upon business rules and displayed in the proper
display format for the user. Appellants disclose this activity as a type of
neural network, in which the data-sorting rules are themselves optimized
based on their success as measured by a conversion response. Spec. ¶¶ 30–
32, 52–53; Br. 26. Further, similar to McRO, there is no indication that this
is merely the automation of a conventional activity in the same manner as
would be performed absent the computer involvement. The Examiner’s
response to the McRO arguments, discussed above, do not persuade us the
Appellant is incorrect in asserting the claims are directed to an improvement
in a computer related technology. We do not read McRO as applying only to
the specific technology in that case, i.e., generating three dimensional facial
expressions. Rather, we find the claims in McRO analogous to Appellant’s
claimed set of rules to generate content and are directed to an improvement
in a computer-related technology.
Thus, we determine that the Examiner has not shown the independent
claims do not do not recite an improvement in a computer-related
technology and accordingly, do not sustain the Examiner’s rejection of
claims 1, 11 and the claims which depend thereupon under 35 U.S.C. § 101
for being directed to patent-ineligible subject matter.

DECISION
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We reverse the Examiner’s rejection of claims 1, 3 through 11, 13
through 20, and 22 under 35 U.S.C. § 101.

Claims
Rejected
Basis  Affirmed Reversed
1, 3–11, 13–20, and 22 § 101   1, 3–11, 13–20, and 22

REVERSED