NICE LTD.Download PDFPatent Trials and Appeals BoardOct 14, 20212021002766 (P.T.A.B. Oct. 14, 2021) Copy Citation 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. 15/294,866 10/17/2016 Tomer RAM P-80391-US 2757 49443 7590 10/14/2021 Pearl Cohen Zedek Latzer Baratz LLP 7 Times Square, 19th Floor New York, NY 10036 EXAMINER NETZLOFF, ERIC R ART UNIT PAPER NUMBER 3688 NOTIFICATION DATE DELIVERY MODE 10/14/2021 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): Arch-USPTO@PearlCohen.com USPTO@PearlCohen.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte TOMER RAM, MOSHE HADAD, and OFIR VENTURA ____________ Appeal 2021-002766 Application 15/294,8661 Technology Center 3600 ____________ Before JAMES P. CALVE, NINA L. MEDLOCK, and BRUCE T. WIEDER, Administrative Patent Judges. WIEDER, Administrative Patent Judge. DECISION ON APPEAL This is a decision on appeal under 35 U.S.C. § 134 from the Examiner’s rejection of claims 1, 3–7, 10, 11, and 13–20. We have jurisdiction under 35 U.S.C. § 6(b). An oral hearing was held September 30, 2021. We REVERSE. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as NICE LTD. (Appeal Br. 1.) Appeal 2021-002766 Application 15/294,866 2 CLAIMED SUBJECT MATTER Appellant’s invention relates to “serving offers to individuals, for example via the internet to users of web browsers.” (Spec. ¶ 1.) Claims 1, 10, and 16 are the independent claims on appeal. Claim 1 is illustrative. It recites: 1. A method of selecting one or more offers to be served to a respondent from a set of offers having multiple characteristics, wherein each characteristic has more than one possible value, at least one characteristic corresponding to a location, the method being performed using one or more processors in a computing system, wherein the method of selecting comprises: at a hardware-based website host server operating at least one processor of the processors serving one or more offers to a respondent device operating a processor; collecting response data relating to the offers at the website host server and transmitting the response data to a hardware-based decision server operating at least one processor of the processors; receiving at the decision server, from the website host server, a request to score some or all of the offers against a set of criteria; in response to the request: performing in real time a series of at least three successive scoring operations, wherein: each scoring operation of the series of successive scoring operations is performed by a decision engine executed by the decision server and comprises determining respective scores for different possible values of one of the multiple characteristics, three or more decision engines forming a linked decision engine; each of the at least three scoring operations is carried out according to a respective reinforcement machine learning model including one or more variables and modified by response data, wherein each scoring operation comprises selecting the value for one of the multiple characteristics having the highest score and Appeal 2021-002766 Application 15/294,866 3 wherein the selected value is said result of at least one previous scoring operation used as a variable in one or more subsequent scoring operations; the location characteristic determining a location on a computer for the offer; the one or more variables of the reinforcement machine learning model for at least a second scoring operation and any scoring operations subsequent to the second operation include scores for all characteristics scored in previous scoring operations; and a machine learning model for at least a second scoring operation and any scoring operations subsequent to the second operation scoring an additional characteristic not scored in previous scoring operations; using the determined scores to select in real time one or more offers from the set of offers, the one or more offers being in the form of a web banner in a web page or a web page; and serving the selected one or more offers to the respondent device. REJECTION Claims 1, 3–7, 10, 11, and 13–20 are rejected under 35 U.S.C. § 101 as directed to a judicial exception without significantly more. ANALYSIS “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.” 35 U.S.C. § 101. Section 101, however, “contains an important implicit exception: Laws of nature, natural phenomena, and abstract ideas are not patentable.” Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 216 (2014) (quoting Ass’n for Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 589 (2013)). Appeal 2021-002766 Application 15/294,866 4 Alice applies a two-step framework, earlier set out in Mayo Collaborative Services v. Prometheus Laboratories, Inc., 566 U.S. 66 (2012), “for distinguishing patents that claim laws of nature, natural phenomena, and abstract ideas from those that claim patent-eligible applications of those concepts.” Alice, 573 U.S. at 217. Under the two-step framework, it must first be determined if “the claims at issue are directed to a patent-ineligible concept.” Id. at 218. If the claims are determined to be directed to a patent-ineligible concept, e.g., an abstract idea, then the second step of the framework is applied to determine if “the elements of the claim . . . contain[] an ‘ “inventive concept” ’ sufficient to ‘transform’ the claimed abstract idea into a patent-eligible application.” Id. at 221 (citing Mayo, 566 U.S. at 72–73, 79). With regard to step one of the Alice framework, we apply a “directed to” two-prong test to: 1) evaluate whether the claim recites a judicial exception, and 2) if the claim recites a judicial exception, evaluate whether the claim “appl[ies], rel[ies] on, or use[s] the judicial exception in a manner that imposes a meaningful limit on the judicial exception, such that the claim is more than a drafting effort designed to monopolize the judicial exception.” See USPTO, 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50, 54 (Jan. 7, 2019) (hereinafter “2019 Guidance”). The Examiner determines that claim 1 “describe[s] selecting offers using scoring operations or models based at least partially on collected prior response data, which is clearly a business relationship that organizes activity between an offer provider and a user that receives the offer, such as the relationship between an advertiser and potential customer.” (Non-Final Action 9.) Therefore, the Examiner determines that claim 1 recites the Appeal 2021-002766 Application 15/294,866 5 abstract idea of certain methods of organizing human activity. (Id.) The Examiner also determines that the claim steps of “selecting the highest score and using the determined scores to select one or more offers” recite the abstract idea of mental processes, and that “the scoring operations describe mathematical concepts that include mathematical relationships.” (Answer 10.) Appellant argues that “claim 1 includes a method of selecting offers, to be served to a respondent . . . from a set of offers having multiple characteristics.” (Appeal Br. 1 (citing Spec. ¶ 32).) Appellant argues that “claim 1 relies on an improved machine learning tool, and improves the technology of reinforcement machine learning by using this technology in a new manner. Claim 1 creates a new machine learning tool by combining other machine learning tools.” (Id. at 4.) Under step one of the Alice framework, we “look at 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 Texas, LLC v. DIRECTV, LLC, 838 F.3d 1253, 1257 (Fed. Cir. 2016) (quoting Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016)). The “directed to” inquiry . . . cannot simply ask whether the claims involve a patent-ineligible concept, because essentially every routinely patent-eligible claim involving physical products and actions involves a law of nature and/or natural phenomenon . . . . Rather, the “directed to” inquiry applies a stage-one filter to claims, considered in light of the specification, based on whether “their character as a whole is directed to excluded subject matter.” Internet Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1346 (Fed. Cir. 2015). Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016). In other words, the first step of the Alice framework “asks whether the focus of Appeal 2021-002766 Application 15/294,866 6 the claims is on the specific asserted improvement in [the relevant technology] or, instead, on a process that qualifies as an ‘abstract idea’ for which computers are invoked merely as a tool.” Id. at 1335–36; see also 2019 Guidance at 54–55. The Specification provides evidence as to what the claimed invention is directed. In this case, the Specification discloses that the invention relates to “serving offers to individuals, for example via the internet to users of web browsers.” (Spec. ¶ 1.) Claim 1 provides further evidence. Claim 1 recites “[a] method of selecting one or more offers to be served to a respondent . . . the method of selecting comprises:” “collecting response data relating to the offers at the website host server and transmitting the response data to a . . . decision server,” “receiving at the decision server . . . a request to score some or all of the offers,” “in response to the request: performing . . . at least three successive scoring operations,” “using the determined scores to select . . . one or more offers,” “and serving the selected one or more offers to the respondent device.” In short, the claim limitations recite collecting data, transmitting data, receiving data, analyzing/selecting data, and serving/presenting data. Collecting data, transmitting data, receiving data, analyzing data, and presenting data have been determined to be directed to an abstract idea. See, e.g., FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1093–94 (Fed. Cir. 2016) (determining “that the ‘realm of abstract ideas’ includes ‘collecting information, including when limited to particular content’” as well as analyzing and presenting information), Content Extraction and Transmission LLC v. Wells Fargo Bank, Nat’l Ass’n, 776 F.3d 1343, 1347 (Fed. Cir. 2014) (treating as an abstract idea “1) collecting data, Appeal 2021-002766 Application 15/294,866 7 2) recognizing certain data within the collected data set, and 3) storing that recognized data”), Cyberfone Sys., L.L.C. v. CNN Interactive Grp., Inc., 558 F. App’x 988, 992 (Fed. Cir. 2014) (claims directed to organizing, storing, and transmitting information determined to be directed to an abstract idea). Claim 1 recites “the method being performed using one or more processors in a computing system,” a “website host server operating at least one processor of the processors,” “a respondent device,”2 and a “decision server operating at least one processor of the processors.” Claim 1 does not, however, recite how the website host server collects response data, how response data are transmitted to the decision server, how the request is received at the decision server, or how the offers are served to the respondent device. These steps describe the functional result of providing one or more offers by collecting, transmitting, receiving, and serving one or more offers, “with insufficient detail for how [it is accomplished].” Intellectual Ventures I LLC v. Capital One Fin. Corp., 850 F.3d 1332, 1342 (Fed. Cir. 2017). With regard to the step of performing scoring operations, i.e., the analyzing step, claim 1 recites, in relevant part, that “each scoring operation of the series of successive scoring operations is performed by a decision engine,” that each “scoring operation is carried out according to a respective reinforcement machine learning model,” and that “at least a second scoring operation . . . include[s] scores for all characteristics scored in previous 2 Claim 1 recites “a respondent device operating a processor.” Applying a broadest reasonable interpretation, we interpret this reference to “a processor” as not being one of the “one or more processors in a computing system.” Appeal 2021-002766 Application 15/294,866 8 scoring operations.” Appellant argues that this is “a new way of organizing reinforcement machine learning models and organizing input to these models is an improvement to the technology of organizing reinforcement machine learning.” (Appeal Br. 9.) Appellant argues that the technology of reinforcement machine learning is improved by the claims which allow the claimed reinforcement machine learning model to learn even faster (reinforcement machine learning models operate by learning from the results of their activity, incorporating the learning to improve future action). Fig 10 of the Application as filed shows the improvement to such technology that can be provided by the limitations of independent claim 1. (Id.) The inquiry as to whether the claims are directed to an abstract idea “often turns on whether the claims focus on ‘the specific asserted improvement in computer capabilities . . . or, instead, on a process that qualifies as an “abstract idea” for which computers are invoked merely as a tool.’” Finjan, Inc. v. Blue Coat Sys., Inc., 879 F.3d 1299, 1303 (Fed. Cir. 2018) (quoting Enfish, LLC, 822 F.3d at 1335–36). Here, the computing devices, i.e., the generically recited “one or more processors in a computing system,” “website host server operating at least one processor of the processors,” “respondent device,” and “decision server operating at least one processor of the processors” are invoked merely as tools performing the generic computer functions of collecting data, transmitting data, receiving data, analyzing/selecting data, and serving/presenting data. The collecting and receiving steps are simply data gathering steps. The transmitting and serving steps are simply data sending steps. And the performing step simply applies an algorithm to the data. Limitations describing the nature of the data and source do not alter this. See Intellectual Appeal 2021-002766 Application 15/294,866 9 Ventures I LLC, 850 F.3d at 1342. The recited steps of claim 1 do not improve the operation of the computing devices themselves. “As many cases make clear, even if a process of collecting and analyzing information is ‘limited to particular content’ or a particular ‘source,’ that limitation does not make the collection and analysis other than abstract.” SAP Am., Inc. v. InvestPic, LLC, 898 F.3d 1161, 1168 (Fed. Cir. 2018). The “character of [the] information simply invokes a separate category of abstract ideas.” Id. Moreover, “[a] claim does not cease to be abstract for section 101 purposes simply because the claim confines the abstract idea to a particular technological environment in order to effectuate a real-world benefit.” In re Mohapatra, 842 F. App’x 635, 638 (Fed. Cir. 2021). As discussed above, the Examiner identifies claim 1 as reciting “a business relationship that organizes activity between an offer provider and a user that receives the offer,” and thus, the abstract idea of certain methods of organizing human activity. (Non-Final Action 9.) We agree that collecting response data related to offers, transmitting that offer-related data, receiving that offer-related data, analyzing that offer-related data, and serving selected offers to the respondent device recite relationships between an offer provider and a user. Whether these are referred to as a business relationship, or advertising, marketing, or sales activities or behaviors, these fall under the rubric of commercial or legal interactions, and thus are considered certain methods of organizing human activity. (See 2019 Guidance at 52; see also Non-Final Action 9.) We also agree with the Examiner that the performing/ analyzing steps, i.e., performing the series of at least three successive scoring operations, recite observation, evaluation, and judgment. These are Appeal 2021-002766 Application 15/294,866 10 concepts performed in the human mind, which are considered mental processes. (See 2019 Guidance at 52; see also Answer 10.) We do not find any indication in the Specification that the claimed invention effects a transformation or reduction of a particular article to a different state or thing. Nor do we find anything of record that attributes an improvement in computer technology or functionality to the claimed invention or that otherwise indicates that the claimed invention “appl[ies], rel[ies] on, or use[s] the judicial exception in a manner that imposes a meaningful limit on the judicial exception, such that the claim is more than a drafting effort designed to monopolize the judicial exception.” (See 2019 Guidance at 54–55.) In view of the foregoing, under prong one of the two-prong test in the 2019 Guidance, claim 1 recites abstract ideas, i.e., certain methods of organizing human activity and mental processes; and, under prong two, additional elements in claim 1 do not “apply, rely on, or use the judicial exception in a manner that imposes a meaningful limit on the judicial exception, such that the claim is more than a drafting effort designed to monopolize the judicial exception.” (See 2019 Guidance at 54.) As such, under step one of the Alice framework, claim 1 is directed to an abstract idea, and we move to step two. Step two of the Alice framework has been described “as a search for an ‘ “inventive concept” ’ –i.e., an element or combination of elements that is ‘sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the [ineligible concept] itself.’” Alice, 573 U.S. at 217–18 (alteration in original) (quoting Mayo, 566 U.S. at 72–73). “The second step of the Alice test is satisfied when the claim limitations ‘involve Appeal 2021-002766 Application 15/294,866 11 more than performance of ‘well-understood, routine, [and] conventional activities previously known to the industry.’” Berkheimer v. HP Inc., 881 F.3d 1360, 1367 (Fed. Cir. 2018) (brackets in original) (quoting Content Extraction and Transmission LLC, 776 F.3d at 1347–48). The question of whether a claim limitation or combination of limitations “is well-understood, routine and conventional to a skilled artisan in the relevant field is a question of fact.” Id. at 1368. Appellant argues: The Examiner on page 12 of the Examiner’s Answer asserts that “the claims merely offer an ordered combination of generic devices being arranged in a manner intended by the system’s design for the basic function of communicating information between parties over a network, which does not confer a practical application.” However, it is these very claim elements (recited above) that provide the improvements to technology that the examiner improperly ignores. These limitations represent a novel machine learning structure, a linked decision engine using reinforcement machine learning models, which represent a marked improvement to technology and integrates any alleged abstract idea into a practical application. (Reply Br. 5.) Taking the claim elements separately, the functions performed in claim 1 by the generic computer components are purely conventional. Collecting data, transmitting data, receiving data, analyzing data, and presenting data are well-understood, routine, and conventional functions previously known to the industry. See Elec. Power Grp., 830 F.3d at 1356 (The claims “do not include any requirement for performing the claimed functions of gathering, analyzing, and displaying in real time by use of anything but entirely conventional, generic technology. The claims Appeal 2021-002766 Application 15/294,866 12 therefore do not state an arguably inventive concept . . . .”); see also Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d 1307, 1318 (Fed. Cir. 2016) (determining receiving, processing, and sending data to be well- known, generic computer-implemented steps), Versata Dev. Grp., Inc. v. SAP Am., Inc., 793 F.3d 1306, 1335 (Fed. Cir. 2015) (determining claims requiring “arranging, storing, retrieving, sorting, eliminating, determining” to “involve the normal, basic functions of a computer” and to be “conventional, routine, and well-known”). Considered as an ordered combination, we address whether the recited arrangement of decision engines carrying out reinforcement machine learning models was well-understood, routine, and conventional to a skilled artisan at the time the present application was filed. See Berkheimer, 881 F.3d at 1367–68; see also Content Extraction and Transmission LLC, 776 F.3d at 1347–48, 2019 Guidance at 56. Here, Appellant argues that the linked decision engine arrangement represents an improvement in machine learning tools and reinforcement machine learning (Reply Br. 2–3 (citing Spec. ¶¶ 93–95, Fig. 10); Appeal Br. 9), and that the arrangement was novel (Reply Br. 5; see also Appeal Br. 5, 7, 14, Spec. ¶ 5). We do not see a finding by the Examiner that the combination of limitations recited in claim 1, and specifically, the arrangement of decision engines carrying out reinforcement machine learning models, was well- understood, routine, and conventional to a skilled artisan at the time of filing. (See, e.g., Answer 7.) We decline to undertake this analysis and make that finding of fact in the first instance. Therefore, we will reverse this rejection of claim 1. Independent claims 10 and 16 include similar language and for similar reasons, we will Appeal 2021-002766 Application 15/294,866 13 also reverse the rejection of claim 10 and 16, and dependent claims 3–7, 11, 13–15, and 17–20. CONCLUSION The Examiner’s rejection of claims 1, 3–7, 10, 11, and 13–20 under 35 U.S.C. § 101 is reversed. Specifically: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 3–7, 10, 11, 13–20 101 Eligibility 1, 3–7, 10, 11, 13–20 REVERSED Copy with citationCopy as parenthetical citation