The Nielsen Company (US), LLCDownload PDFPatent Trials and Appeals BoardAug 4, 202014980821 - (R) (P.T.A.B. Aug. 4, 2020) 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. 14/980,821 12/28/2015 Michael Sheppard 20004/124336US01 1022 81905 7590 08/04/2020 Hanley, Flight & Zimmerman, LLC (Nielsen) 150 S. Wacker Dr. Suite 2200 Chicago, IL 60606 EXAMINER GARTLAND, SCOTT D ART UNIT PAPER NUMBER 3622 NOTIFICATION DATE DELIVERY MODE 08/04/2020 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): docketing@hfzlaw.com jflight@hfzlaw.com mhanley@hfzlaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte MICHAEL SHEPPARD, JONATHAN SULLIVAN, MATTHEW B. REID, and ALEJANDRO TERRAZAS ____________ Appeal 2019-003689 Application 14/980,821 Technology Center 3600 ____________ Before CARL W. WHITEHEAD JR., DAVID M. KOHUT, and IRVIN E. BRANCH, Administrative Patent Judges. KOHUT, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING Appellant1 has filed a Request for Rehearing, under 37 C.F.R. § 41.52, of our Decision affirming the Examiner’s final rejection of claims 1–20 under 35 U.S.C. § 101. Having considered the Request for Rehearing,2 we remain unpersuaded of error in the rejection. We add the following for emphasis. 1 We use “Appellant” to reference the applicant as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as “The Nielsen Company (US), LLC.” Appeal Br. 2. 2 We inadvertently overlooked the Reply Brief. See Req. Reh. 2. We now consider the Reply Brief and the Request for Rehearing. Appeal 2019-003689 Application 14/980,821 2 Appellant contends: The Decision on Appeal alleges that claim 1 constitutes long-standing marketing and sale activities, mathematical concepts, and can be performed in the human mind using pen and paper. Decision on Appeal, pp. 9-10. However, as described in detail in the Reply Brief, claim 1 is not directed to one of the above-listed abstract ideas under the 2019 Eligibility Guidance. For example, pp. 7-8 of the Reply Brief describe why claim 1 cannot be performed in a human mind, and pp. 8-9 of the Reply Brief describe why claim 1 is not directed to mathematical concepts. Req. Reh. 2. Appellant’s arguments, in both the above contention and cited Reply Brief pages, do not rebut the Decision’s holdings. The Decision does not hold that all claimed activities constitute judicially-excepted (JE) activities—e.g., does not hold that the claimed “executing an instruction with a processor” can be performed via pen and paper. Rather, the Decision identifies claim portions reciting JE activities (marketing and sales activities, mathematical calculations, and mental processes). Dec. 11. The Decision then holds that claim 1 is directed to the recited JE activities (i.e., the identified claim portions) because the recited additional elements do not integrate the JE activities into a practical application. Id. at 7, 10. Appellant next contends: The Decision on Appeal further alleges that claim 1 “merely limits the invention’s field of use” and “is directed to the recited judicial exceptions—not to a practical application thereof.” Decision on Appeal, p. 12. However, the Reply Brief addressed these allegations in pages 5-6, by describing the technical problem and the practical application of the technology that provides a meaningful limit on any judicial exception. Appeal 2019-003689 Application 14/980,821 3 Req. Reh. 3. We do not find Appellant’s arguments persuade us that the Decision’s holdings were erroneous. The Decision does not hold that claim 1 recites only JE activities and field-of-use limitations. The Decision holds that particular claim limitations limit the invention’s field of use and accordingly do not integrate the recited JE activities into a practical application. Dec. 12 (“claim 1 merely limits the invention’s field of use . . . by describing . . .” (emphasis added)). Appellant contends in the Reply Brief that other claim features confer a practical application; e.g., “claim 1 accomplishes this by . . . .” (Reply Br. 5–6). The Decision explains that each of these features either constitutes one of the recited JE activities or is not shown to be sufficiently specific to prevent preemption of the activities. See e.g., Dec. 11, 14–16. Appellant next contends: The Decision on Appeal further agrees with the Examiner that there are allegedly no technical features the claim may be grounded in. Decision on Appeal, p. 11. However, the Reply Brief addressed these allegations on pp. 10-14, which described the technical features and structural elements set forth in claim 1 and the technical improvements provided by claim 1. Req. Reh. 3. Appellant’s arguments, in both the above contention and cited Reply Brief pages, do not rebut the Decision’s holdings. The Decision does not hold that claim 1 recites no technical features, e.g., no hardware. Instead, the Decision agrees with the Examiner that claim 1 is not “grounded in” in any technical features. Dec. 11. We add that, for example, claim 1 does not recite a “particular machine” (Manual of Patent Examining Procedure (MPEP) § 2106.05(b)) or other technical feature recognized as a practical application by MPEP § 2106.05(a)–(c) and Appeal 2019-003689 Application 14/980,821 4 (e)–(h). See Dec. 7 (citing theMPEP as guidance for the issue of practical applications); Guidance 84 Fed. Reg. at 55, nn.25, 27–32. Appellant contends in the Reply Brief that the claims contain features that are “more than just sending and receiving data over a network, repetitive calculations, and using the result.” Reply Br. 11–12. The Decision holds that each of these claim features either constitutes one of the recited JE activities or is not shown to be sufficiently specific to prevent preemption of the JE activities. See e.g., Dec. 11, 14–16. In the Reply Brief, Appellant contends the invention creates the following technical improvements: “conservation of computer resources as a result of not needing to generate a new probability density function [(PDF)]” (id. at 13); “augmentation of the intelligence of a server to correct errors in that server without compr[om]ising the privacy of an audience and without requiring follow-up network communications to the audience member” (id. at 13–14); and “time, processing power, bandwidth, and memory use reduction” (id. at 14). The Decision holds that the invention’s alleged improvements are not shown to result from non-JE activities. Dec. 15. We add the Specification indicates the above improvements are achieved by the recited JE activity of probabilistically aging a predicted age of the prediction model (see e.g., Spec. ¶¶ 29–31)—e.g., in lieu of re-calibrating the model (see id. ¶ 28) or directly contacting audience members to reacquire their ages (see id. ¶ 25). Appellant next contends: The Decision on Appeal alleges that the Examiner provided requisite clear and convincing evidence showing how the claims are well-understood, routine, or conventional. Decision on Appeal, p. 17. However, as addressed on page 14 of the Reply Brief, the Examiner addresses a summarization of Appeal 2019-003689 Application 14/980,821 5 the claimed elements rather than proving that the actual elements are well-understood, routine, and conventional. Req. Reh. 3. Appellant’s arguments, in both the above contention and cited Reply Brief pages, do not rebut the Decision’s holdings. The Decision holds that the Examiner provided evidence comporting with the USPTO Berkheimer Memorandum’s guidance for findings of WURC activity. Dec. 17 (citing Berkheimer Memorandum § III.A.2); see also Berkheimer Memorandum at 3 (“This memorandum clarifies that such a conclusion must be based upon a factual determination that is supported as discussed in section III below.”).3 Appellant next contends: The Decision on Appeal further alleges that the “Appellant’s contentions do not indicate (much less show) claim l’s features prevent preemption of the judicial exceptions.” Decision on Appeal, p. 16. However, pp. 14-15 of the Appellant’s Reply Brief describe why claim 1 does not preclude others from using other techniques to increase accuracy of impression-based rating information. 3 Generally speaking, clear and convincing evidence is required to invalidate a patent on a litigated issue of factual dispute. See e.g., In re Cyclobenzaprine Hydrochloride Extended-Release Capsule Patent Litig., 676 F.3d 1063, 1068–69, n.7 (Fed. Cir. 2012) (obviousness). The Berkheimer Memorandum requires: “[A]n examiner should conclude that an element . . . represents [WURC] activity only when the examiner can readily conclude that the element(s) is widely prevalent or in common use in the relevant industry.” Berkheimer Memorandum at 3. We recognize the Memorandum’s requirement to “readily conclude that the element(s) is widely prevalent or in common use” and a requirement for “clear and convincing evidence” of WURC activity may be a distinction without a difference. See Colorado v. New Mexico, 467 U.S. 310, 316 (1984) (equating “clear and convincing” with “highly probable”). Appeal 2019-003689 Application 14/980,821 6 Req. Reh. 3–4. Appellant’s arguments, in both the above contention and cited Reply Brief pages, do not rebut the Decision’s holdings. Appellant contends, “Claim 1 does not attempt ‘to preempt others from using the commonly available mathematical techniques or manipulations on age data indicating impressions so as to update the respective ages,’ as alleged in Examiner’s Answer, p. 30.” Reply Br. 15. Appellant argues that instead, “Claim 1 sets for a specific technique to increase the accuracy of impression-based ratings information.” Id. The Reply Brief fails to identify the alleged specific technique and, as a result, we are not persuaded of error in the Decision. 35 U.S.C § 112(b) REJECTION Appellant lastly contends: [A]s described on pages 15-16 of the Reply Brief, the record is clear that the Examiner withdrew the § 112 rejections. Accordingly, the Appellant believes that there is no pending § 112 rejection for this application. However, even if the Examiner did not withdraw the § 112(b) rejection, the Appellant traversed the rejection on pages 15-17 of the Reply Brief. Req. Reh. 4. As indicated in the Decision, the Examiner explicitly withdrew the 35 U.S.C. § 112(a) rejection. See Ans. 3. The Examiner did not explicitly withdraw the 35 U.S.C. § 112(b) rejection and addressed the rejection in the Answer indicating that Appellant failed to provide arguments against the rejection. Ans. 33–35. In the Reply Brief, Appellant argued that Appellant understood that the rejection was withdrawn based upon the Advisory Action dated August 15, 2018 and argued that even if it was not Appeal 2019-003689 Application 14/980,821 7 withdrawn, it should have been withdrawn. Reply Br. 15−17. We agree with Appellant. The Examiner rejected claims 1−20 under 35 U.S.C. § 112(b) based on indefiniteness of “increasing an accuracy” of ratings by applying of . . . information that is based on the unverifiable demographic information,” because it is not possible to increase the accuracy of correct information and the unverifiable information can be correct. Id. at 5–6 (emphasis added). However, in response to a claim amendment (filed July 16, 2018) entered per a post-Final Action interview (conducted August 8, 2019) and replacing the above “unverifiable” claim terms with “inaccurate,” the Examiner issued an Advisory Action (mailed August 15, 2018) and accompanying Interview Summary that describes “the general nature of what was agreed” with Appellant. We view the Advisory Action as withdrawing both § 112 rejections via the following statement: “Since the amendment [changes] the claims to [recite] ‘inaccurate’ data (instead of “unverifiable”) . . . , the rejections under [§] 112 would be withdrawn[. However,] the Examiner notes that ‘the demographic information being inaccurate’ is interpreted as intended use or results. Adv. Act., Cont’n Sheet (first page); see also 37 C.F.R. § 41.39(a)(1)(“An examiner’s answer . . . incorporate[s] all of the grounds of rejection . . . as modified by any advisory action.”). Even assuming (arguendo) that the 35 U.S.C. § 112(b) rejection was not withdrawn, we would not sustain the § 112(b) rejection because the above claim amendment and Appellant’s arguments address the alleged deficiency. See Reply Br. 15–17. Namely, by changing “unverifiable” to “inaccurate,” the amendment results in an assured increase of accuracy for “inaccurate” information—as opposed to an unassured increase of accuracy Appeal 2019-003689 Application 14/980,821 8 for “unverifiable” information (which was the Examiner’s above pre-amendment concern). And, though a claim’s intended-use language is subject to a broad construction (which was the Examiner’s above post-amendment concern), breadth is not indefiniteness. See In re Miller, 441 F.2d 689, 693 (CCPA 1971) (“[B]readth is not to be equated with indefiniteness.”). CONCLUSION We have reconsidered our Decision in light of the Request for Rehearing. We are not persuaded of error in the Decision and accordingly maintain the Examiner’s § 101 rejection of all claims. Additionally, we find that the 35 U.S.C. § 112 rejections were previously withdrawn and if the 35 U.S.C. § 112(b) rejection was not effectively withdrawn we cannot sustain the rejection. Accordingly, the outcome of this Decision on Rehearing is the same as the Decisision addressed above and as follows: Claims Rejected 35 U.S.C. Reference/s Affirmed Reversed 1–20 § 101 Eligibility 1– 20 TIME PERIOD FOR RESPONSE No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). REHEARING DENIED Copy with citationCopy as parenthetical citation