Viacom International Inc.

Patent Trials and Appeals Board

Jan 1, 2021

2020004827 (P.T.A.B. Jan. 1, 2021)

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.
15/604,430 05/24/2017 Sashi MARELLA 40205/09201 (MTV-092) 1084
30636 7590 01/01/2021
FAY KAPLUN & MARCIN, LLP
150 BROADWAY, SUITE 702
NEW YORK, NY 10038
EXAMINER
FRUNZI, VICTORIA E.
ART UNIT PAPER NUMBER
3688
NOTIFICATION DATE DELIVERY MODE
01/01/2021 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):
mmarcin@fkmiplaw.com
okaplun@fkmiplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte SASHI MARELLA, TANMAY MANOHAR, and
DAVID BERZIN
____________

Appeal 2020-004827
Application 15/604,430
Technology Center 3600
____________

Before JOSEPH A. FISCHETTI, CYNTHIA L. MURPHY, and
TARA L. HUTCHINGS, Administrative Patent Judges.

HUTCHINGS, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE

Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
final rejection of claims 1–21. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Our decision references the Specification (“Spec.,” filed May 24,
2017, Final Office Action (“Final Act.,” mailed Sept. 16, 2019), Appeal
Brief (“Appeal Br.,” filed Feb. 18, 2020), Answer (“Ans.,” mailed Apr. 16,
2020), and Reply Brief (“Reply Br.,” filed June 11, 2020). Appellant
identifies Viacom International Inc., which is a subsidiary of ViacomCBS
Inc., as the real party in interest. Appeal Br. 2.
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CLAIMED INVENTION
Claims 1, 13, and 20 are the independent claims on appeal. Claim 1,
reproduced below with bracketed notations added, is illustrative of the
claimed subject matter:
1. A method comprising:
[(a)] in a fit server:
[(b)] receiving a request including an identity of a first
entity and an identity of a second entity, the first and second
entities cooperatively involved in a collaborative campaign;
[(c)] generating a first profile for the first entity and a
second profile for the second entity, the first and second profiles
being generated based on characteristic types of a first audience
associated with the first entity and a second audience associated
with the second entity, respectively;
[(d)] determining a plurality of third entities to be
considered for potential involvement in the collaborative
campaign;
[(e)] generating a respective third profile for each of the
third entities, each third profile being generated based on the
characteristic types of a third audience associated with the
corresponding third entity;
[(f)] determining a respective similarity index for each of
the third entities with the first and second entities based on the
first, second, and third profiles; and
[(g)] identifying one of the third entities to be involved in
the collaborative campaign based on the similarity index.

REJECTIONS
Claims 1–21 are rejected under 35 U.S.C. § 101 as directed to a
judicial exception without significantly more.
Claims 1–5 and 7–21 are rejected under 35 U.S.C. § 103 as
unpatentable over Ho (US 2011/0313781, pub. Dec. 22, 2011) and Hamedi
(US 2016/0080485 A1, pub. Mar. 17, 2016).
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Claim 6 is rejected under 35 U.S.C. § 103 as unpatentable over Ho,
Hamedi, and Turpin (US 2009/0112701 A1, pub. Apr. 30, 2009).
ANALYSIS
Patent-Ineligible Subject Matter
Under 35 U.S.C. § 101, a claim is patent eligible if it claims a “new
and useful process, machine, manufacture, or composition of matter.”
35 U.S.C. § 101. The Supreme Court, however, has long interpreted § 101
to include an implicit exception: “[l]aws of nature, natural phenomena, and
abstract ideas” are not patentable. Alice Corp. v. CLS Bank Int’l, 573 U.S.
208, 216 (2014).
The Supreme Court, in Alice, reiterated the two-step framework
previously set forth 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 Corp., 573 U.S. at 217.
The first step in that analysis is to “determine whether the claims at issue are
directed to one of those patent-ineligible concepts.” Id. If the claims are not
directed to a patent-ineligible concept, e.g., an abstract idea, the inquiry
ends. Otherwise, the inquiry proceeds to the second step where the elements
of the claims are considered “individually and ‘as an ordered combination’”
to determine whether there are additional elements that “‘transform the
nature of the claim’ into a patent-eligible application.” Id. (quoting Mayo,
566 U.S. at 79, 78). This is “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.’” Id. at 217–18 (alteration in original).
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The U.S. Patent and Trademark Office (the “USPTO”) published
revised guidance on January 7, 2019 for use by USPTO personnel in
evaluating subject matter eligibility under 35 U.S.C. § 101. 2019 REVISED
PATENT SUBJECT MATTER ELIGIBILITY GUIDANCE, 84 Fed. Reg. 50, 57
(Jan. 7, 2019) (the “Guidance”).2 The Guidance revised the USPTO’s
examination procedure with respect to the first step of the Mayo/Alice
framework by (1) “[p]roviding groupings of subject matter that [are]
considered an abstract idea”; and (2) clarifying that a claim is not “directed
to” a judicial exception if the judicial exception is integrated into a practical
application of that exception. Id. at 50.
The first step, as set forth in the Guidance (i.e., Step 2A), is, thus, a
two-prong test. In Step 2A, Prong One, we look to whether the claim recites
a judicial exception, e.g., one of the following three groupings of abstract
ideas: (1) mathematical concepts; (2) certain methods of organizing human
activity, e.g., fundamental economic principles or practices, commercial or
legal interactions; and (3) mental processes. Id. at 54. If so, we next
determine, in Step 2A, Prong Two, whether the claim as a whole integrates
the recited judicial exception into a practical application, i.e., whether the
additional elements recited in the claim beyond the judicial exception, 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. Id. at 54–55. Only if
the claim (1) recites a judicial exception and (2) does not integrate that

2 The USPTO issued an update on October 17, 2019 (the “October 2019
Update: Subject Matter Eligibility,” available at https://www.uspto.gov/sites/
default/files/documents/peg_oct_2019_update.pdf) clarifying the Guidance
in response to public comments.
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exception into a practical application do we conclude that the claim is
“directed to” the judicial exception, e.g., an abstract idea. Id.
If the claim is determined to be directed to a judicial exception under
revised Step 2A, we next evaluate the additional elements, individually and
in combination, in Step 2B, to determine whether they provide an inventive
concept, i.e., whether the additional elements or combination of elements
amounts to significantly more than the judicial exception itself; only then, is
the claim patent eligible. Id. at 56.
Here, in rejecting the pending claims under § 101, the Examiner
determined that independent claims 1, 9, and 15 recite “determining a
similarity index for the entities and determining which of the entities to be
involved in a collaborative campaign” that falls within the “managing
personal behavior or relationships or interactions between people (including
social activities, teaching, and following rules or instructions)” and
“commercial interactions (including agreements in the form of contracts;
legal obligations; advertising, marketing or sales activities or behaviors;
business relations)” subgroupings of the “certain methods of organizing
human activity” abstract idea grouping. Final Act. 2–3. The Examiner
further determined that the claims do not include additional elements that
integrate the abstract idea into a practical application or that are sufficient to
amount to significantly more than the abstract idea itself. Id. at 3–4.
Finally, the Examiner determined that the dependent claims are patent
ineligible for substantially similar reasons. Id. at 4.
Step One of the Mayo/Alice Framework (Guidance, Step 2A)
We are not persuaded by Appellant’s argument that the Examiner
erred in determining that claim 1 is directed to an abstract idea. Appeal
Br. 7–9. The Federal Circuit has explained that “the ‘directed to’ inquiry
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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.’” Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir.
2016) (quoting Internet Patents Corp. v. Active Network, Inc., 790 F.3d
1343, 1346 (Fed. Cir. 2015)). It asks whether the focus of the claims is on a
specific improvement in relevant technology or on a process that itself
qualifies as an “abstract idea” for which computers are invoked merely as a
tool. See id. at 1335–36. Here, it clear from the Specification (including the
claim language) that claim 1 focuses on an abstract idea and not on any
improvement to technology or a technical field.
The Specification is titled “DEVICE, SYSTEM, AND METHOD
FOR A SOCIAL FIT ASSESSMENT,” and describes, in the Background
section, that media content creation and distribution involves a variety of
entities, such as a producer/distributor and advertiser. Spec. ¶ 1. To
optimize benefits for the producer/distributor and the advertiser, an affinity
model is used to determine whether a collaboration between these entities
results in desired effects by analyzing audiences of the entities. Id. ¶ 2. This
affinity model provides invaluable information for two entities. Id. ¶ 3.
However, the model is not capable of being used when there are three or
more entities. Id. ¶¶ 3–4. In this case, a symmetric metric must be
determined to define distances between entities that also take into account all
the various dimensions that the entities use to consider a certain entity. Id.
¶ 3. Social network data may be required to determine the symmetric
metric. Id. ¶ 4. However, this data may be proprietary, costly, or
unavailable, making it impossible to determine affinity with multiple
entities. Id.

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The claimed invention ostensibly is intended to improve on these
existing practices. For example, the Specification describes that the claimed
invention determines a combination of entities across a social universe based
on audiences associated with the entities and affinities of the audiences to
one another. Spec. ¶ 11. The claimed invention provides a discovery
mechanism for an entity to determine at least one further entity, such as a
social influencer, to reach a greatest size audience. Id.
Claim 1, thus, recites a method comprising: (1) “receiving a request
including an identity of a first entity and an identity of a second entity, the
first and second entities cooperatively involved in a collaborative campaign”
(step (b)); (2) “generating a first profile for the first entity and a second
profile for the second entity, the first and second profiles being generated
based on characteristic types of a first audience associated with the first
entity and a second audience associated with the second entity, respectively”
(step (c)); “determining a plurality of third entities to be considered for
potential involvement in the collaborative campaign” (step (d)); “generating
a respective third profile for each of the third entities, each third profile
being generated based on the characteristic types of a third audience
associated with the corresponding third entity” (step (e)); “determining a
respective similarity index for each of the third entities with the first and
second entities based on the first, second, and third profiles” (step (f)); and
“identifying one of the third entities to be involved in the collaborative
campaign based on the similarity index” (step (g)).
Broadly construed, steps (b) through (g) of claim 1 recite a method for
determining third entities to be involved in a collaborative campaign. The
Examiner determined (Final Act. 2–3), and we agree, that this concept
relates to a commercial interaction (including business relations) and
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managing relationships or interactions between people (including social
activities and following rules or instructions), which are subgroupings within
the “certain methods of organizing human activity” grouping of abstract
ideas. See Guidance, 84 Fed. Reg. at 52. Moreover, Appellant does not
contest the Examiner’s determination of the abstract idea at Step 2A, Prong
One and, thus, it remains undisputed that claim 1 recites an abstract idea.
See Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential) (“If
an appellant fails to present arguments on a particular issue — or, more
broadly, on a particular rejection — the Board will not, as a general matter,
unilaterally review those uncontested aspects of the rejection.”).
Having concluded that claim 1 recites a judicial exception, i.e., an
abstract idea (Step 2A, Prong One), we next consider whether the claims
recite additional elements that integrate the judicial exception into a practical
application (Step 2A, Prong Two). See Guidance, 84 Fed. Reg. at 54.
Appellant argues that claim 1 integrates the recited abstract idea into a
practical application. In particular, Appellant contends that claim 1
“solve[s] a difficult practical problem and allows users to choose three or
more parties for a collaborative campaign to . . . reach a greatest sized or
most desirable audience.” Appeal Br. 8 (citing Spec. ¶ 11). Appellant
further asserts that “the ‘similarity index’ enables a server to analyze
objectively various combinations of three or more parties to select a
combination of parties for a collaborative campaign providing enhanced
results.” Id.
Yet, the relevant inquiry under Step 2A, Prong 2 is not whether the
claimed invention itself is a practical application; instead, the question is
whether the claim includes additional elements beyond the judicial exception
that integrate the judicial exception into a practical application. The
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Examiner determined here, and we agree, that the only additional element
recited in claim 1 beyond the abstract idea is a “fit server,” which the
Examiner properly observes is recited at a high level of generality. Final
Act. 3. The Specification also describes this additional element at a high
level of generality. See, e.g., Spec. ¶ 23. We find no indication in the
Specification, nor does Appellant direct us to any indication, that the
operations recited in claim 1 require any specialized computer hardware or
other inventive computer components, i.e., a particular machine, invoke any
allegedly inventive programming, or that the claimed invention is
implemented using other than generic computer components to perform
generic computer functions. See DDR Holdings, LLC v. Hotels.com, L.P.,
773 F.3d 1245, 1256 (Fed. Cir. 2014) (“[A]fter Alice, there can remain no
doubt: recitation of generic computer limitations does not make an otherwise
ineligible claim patent-eligible.”).
We also find no 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, short of attorney
argument, that attributes an improvement in technology and/or a technical
field to the claimed invention or that otherwise indicates that the additional
elements recited in claim 1 integrate the recited abstract idea into a
“practical application,” as that phrase is used in the Guidance.
Appellant argues that claim 1 relates to “providing an automated
system for improving the selection of parties to a collaborative campaign.”
Appeal Br. 9. However, we are not persuaded that this is a technological
improvement, as opposed to an improvement to the abstract idea of
“determining third entities to be involved in a collaborative campaign.” See
SAP Am., Inc. v. InvestPic, LLC, 898 F.3d 1161, 1170 (Fed. Cir. 2018)
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(“[P]atent law does not protect such claims [i.e., claims to an asserted
advance in the realm of abstract ideas], without more, no matter how
groundbreaking the advance.”).
We conclude, for the reasons outlined above, that claim 1 recites a
method of organizing human activity, i.e., an abstract idea, and that the
additional element recited in the claim beyond the abstract idea (i.e., the fit
server) is no more than a generic computer component used as a tool to
perform the recited abstract idea. As such, it does not integrate the abstract
idea into a practical application. See Alice Corp., 573 U.S. at 223–24
(“[W]holly generic computer implementation is not generally the sort of
‘additional featur[e]’ that provides any ‘practical assurance that the process
is more than a drafting effort designed to monopolize the [abstract idea]
itself.’” (quoting Mayo, 566 U.S. at 77)). Accordingly, we agree with the
Examiner that claim 1 is directed to an abstract idea.
Step Two of the Mayo/Alice Framework (Guidance, Step 2B)
Having determined under step one of the Mayo/Alice framework that
claim 1 is directed to an abstract idea, we next consider under Step 2B of the
Guidance, the second step of the Mayo/Alice framework, whether claim 1
includes additional elements or a combination of elements that provides an
“inventive concept,” i.e., whether an additional element or combination of
elements adds specific limitations beyond the judicial exception that are not
“well-understood, routine, conventional activity” in the field (which is
indicative that an inventive concept is present) or simply appends well-
understood, routine, conventional activities previously known to the industry
to the judicial exception. Guidance, 84 Fed. Reg. at 56; see also Berkheimer
v. HP Inc., 881 F.3d 1360, 1367 (Fed. Cir. 2018).
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Under step two of the Mayo/Alice framework, the elements of each
claim are considered both individually and “as an ordered combination” to
determine whether the additional elements, i.e., the elements other than the
abstract idea itself, “transform the nature of the claim” into a patent-eligible
application. Alice Corp., 573 U.S. at 217 (citation omitted); see Mayo,
566 U.S. at 72–73 (requiring that “a process that focuses upon the use of a
natural law also contain other elements or a combination of elements,
sometimes referred to as an ‘inventive concept,’ sufficient to ensure that the
patent in practice amounts to significantly more than a patent upon the
natural law itself” (emphasis added) (citation omitted)).
Here, the Examiner determined and we agree, that the only additional
element recited in claim 1 beyond the abstract idea is a “fit server,” i.e.,
generic computer component. See Alice, 573 U.S. at 223 (“[T]he mere
recitation of a generic computer cannot transform a patent-ineligible abstract
idea into a patent-eligible invention.”). Considering the additional element
individually and as an ordered combination, we agree with the Examiner that
claim 1 lacks additional elements sufficient to amount to significantly more
than the judicial exception. Final Act. 3. Further, Appellant presents no
arguments to the contrary, i.e., that claim 1 is patent eligible under Step 2B
of the Guidance.
Appellant argues that claims 9–11 depend from claim 1 further
exemplify the additional functionality provided to the server by the
similarity index. Appeal Br. 9. However, that argument is not persuasive
for the same reasons set forth above. Appellant does not make any
additional arguments with respect to dependent claims 2–8. See id.
Appellant argues that independent claims 13 and 20 are substantially
similar to independent claim 1, and submits that the rejection of these claims
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and their dependent claims should not be sustained for reasons similar to
those provided with respect to claim 1. Id. We find these arguments
unpersuasive for the same reasons set forth above with respect to claim 1.
We are not persuaded, on the present record, that the Examiner erred
in rejecting claims 1–21 under 35 U.S.C. § 101. Therefore, we sustain the
rejection of claims 1–21.
Obviousness
Independent Claims 1, 13, and 20, and Dependent Claims 2–5, 7–12, 14–19,
and 21
Appellant argues claims 1–5 and 7–21 as a group. Appeal Br. 10–12.
We select independent claim 1 as representative. The remaining claims
stand or fall with claim 1. See 37 C.F.R. §41.37(c)(1)(iv).
We are persuaded by Appellant’s argument that the Examiner erred in
rejecting claim 1, because the combination of Ho and Hamedi does not teach
or suggest “determining a respective similarity index for each of the third
entities with the first and second entities based on the first, second, and third
profiles,” as recited in limitation (f) of claim 1. The Examiner relies on Ho’s
simple weighting adder 1601 as disclosing the argued limitation. Final
Act. 5.
Ho relates to creating and managing award-based cross promotions
(ABCP). Ho Abstract. A joint funded ABCP campaign creates a larger
award for a selected winner, and the participation of a pool of sponsor
allows each sponsor to leverage a wider marketing reach of the pool,
creating more marketing buzz. Id. Ho describes matching sponsors, such as
merchants, for a campaign based on the merchants’ respective attributes,
such as industry sector, geographic location, and budget. Id. ¶¶ 97–110,
Figs. 12–14. Simple weighting adder 1601 accounts for the relative
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importance of different merchant attributes in order to determine a potential
partnership match between merchant partners. Id. ¶ 116, Fig. 16. For
example, the attribute of geographical location could be more important than
budget for a particular ABCP campaign; whereas, budget could be more
important than industry sector. Id. ¶ 116. Thus, to determine a potential
partnership, the matching results of attributes are assigned a value, and the
values are weighted and summed together by a simple weighting adder
1601. Id. ¶ 117, Fig. 16.
The Examiner correctly acknowledges that Ho does not teach or
suggest matching merchants based upon audiences associated with each of
the respective merchants. Final Act. 5. As such, Ho does not teach a first
profile based on characteristic types of a first audience associated with a first
entity; a second profile based on characteristic types of a second audience
associated with a second entity, and a third profile based on characteristic
types of a third audience associated with a third entity, as required by
limitations (c) and (e) of claim 1. Id. at 5. The Examiner finds that Ho’s
simple weighting adder teaches “determining a respective similarity index
for each of the third entities with the first and second entities based on the
first, second, and third profiles,” as recited in limitation (f) of claim 1. Final
Act. 5. But Ho does not teach the claimed first, second, and third profiles,
much less determine a respective similarity index based on these profiles, as
required by limitation (f).
The Examiner relies on Hamedi to teach the claimed first, second, and
third profiles. Id. at 5–6 (citing Hamedi ¶¶ 6, 59, Fig. 5). Hamedi teaches a
system and method for allowing an advertiser to review the effectiveness of
a campaign that has been launched. Hamedi ¶¶ 25–26. Figure 5 of Hamedi,
for example, shows a process in which an author crowd is established, an
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advertising campaign is executed, the crowd is monitored, and metrics
regarding how the community changes based on the advertising campaign
are monitored. See also id. ¶¶ 58–59 (describing that target segments or
crowds of Internet authors are defined by identifying custom-groupings of
authors that represent a desired target market and are refined on a
dashboard).
The Examiner determines that it would have been obvious to modify
Ho to match a plurality of profiles for a collaborative campaign to include
first, second, and third profiles generated based on characteristic types of a
first audience associated with a first entity, a second audience associated
with the second entity, and a third audience associated with the third entity,
respectively in order “to recommend future content.” However, the
Examiner does not adequately explain why Hamedi’s disclosure of tracking
the effectiveness of advertising campaigns to particular author groups would
motivate one of ordinary skill in the art to modify Ho’s matching algorithm
to match merchants based on audiences associated with the respective
merchants, instead of merchant attributes. For example, even if Hamedi
teaches audience analysis for measuring the effectiveness of an advertising
campaign, the Examiner does not adequately explain why one of ordinary
skill in the art would be motivated to modify Ho’s selection of parties for a
multi-party collaborative campaign based on an audience analysis of the
merchants (i.e., characteristic types of a first audience associated with a first
entity, etc.).
Therefore, we do not sustain the Examiner’s rejection under 35 U.S.C.
§ 103 of claim 1. We also do not sustain the rejection of claims 2–21, which
fall with claim 1.

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Dependent Claim 6
The Examiner’s rejection of claim 6 does not cure the deficiencies
described above with respect to the rejection under 35 U.S.C. § 103 of
independent claim 1. Therefore, we do not sustain the rejection of claim 6
under 35 U.S.C. § 103 for the same reasons set forth above with respect to
claim 1.

CONCLUSION
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–21 101 Eligibility 1–21
1–5, 7–21 103 Ho, Hamedi 1–5, 7–21
6 103 Ho, Hamedi,
Turpin
6
Overall
Result
1–21
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED