Adobe Inc.

Patent Trials and Appeals Board

Dec 15, 2020

2020003429 (P.T.A.B. Dec. 15, 2020)

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.
14/508,141 10/07/2014 Ritwik Sinha AD01.4429US01 8824
111003 7590 12/15/2020
Adobe / Finch & Maloney PLLC
50 Commercial Street
Manchester, NH 03101
EXAMINER
WALKER III, GEORGE H
ART UNIT PAPER NUMBER
3683
NOTIFICATION DATE DELIVERY MODE
12/15/2020 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@finchmaloney.com
nmaloney@finchmaloney.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RITWIK SINHA, SHIV KUMAR SAINI, and
ANANDHAVELU N
Appeal 2020-003429
Application 14/508,141
Technology Center 3600
Before CHARLES N. GREENHUT, JEREMY M. PLENZLER, and
LEE L. STEPINA, Administrative Patent Judges.
PLENZLER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–3, 5, 7, 22–24, 26, 27, and 30–37.
We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies the real party in interest as Adobe Inc.
Appeal Br. 3.
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Application 14/508,141

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CLAIMED SUBJECT MATTER
The claims are directed to a method for evaluating a way in which a
marketer can interact and/or communicate with a consumer. Claim 1,
reproduced below, is illustrative of the claimed subject matter:
1. A method for evaluating the incremental effect of a
marketing channel, the method comprising:
receiving consumer touch data that characterizes
interactions between at least one marketer and a plurality of
consumers, wherein each of the interactions is associated with at
least one of a plurality of marketing channels, wherein each of
the consumers belongs to at least one of a plurality of market
segments, and wherein the plurality of market segments are
collectively defined by a market segment variable;
receiving consumer response data that characterizes an
outcome of each of the interactions in terms of a conversion
parameter and a revenue value;
generating a statistical model that is configured to
determine (a) a conversion probability as a conversion function
of a vector of a subset of the interactions, and (b) an expected
revenue as a revenue function of the vector, wherein the
statistical model is based on the consumer touch data and the
consumer response data;
for a particular one of the plurality of marketing channels,
determining an attribution parameter based on a first conversion
probability predicated on inclusion of the particular marketing
channel in the vector and a second conversion probability
predicated on exclusion of the particular marketing channel from
the vector, wherein the first and second conversion probabilities
are calculated based on the statistical model;
for the particular marketing channel, determining a
revenue attribution parameter based on a difference between a
first expected revenue predicated on inclusion of the particular
marketing channel in the vector and a second expected revenue
predicated on exclusion of the particular marketing channel from
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the vector, wherein the first and second expected revenues are
calculated based on the statistical model;
determining a collection of attribution parameters for each
of the market segments; and
determining an Akaike information criterion coefficient
that quantifies an extent to which the collection of attribution
parameters varies between market segments defined by the
market segment variable.
REJECTION2
Claims 1–3, 5, 7, 22–24, 26, 27, and 30–37 are rejected under 35
U.S.C. § 101 as being patent-ineligible.
OPINION
The Examiner determines that the claims are patent-ineligible under
35 U.S.C. § 101. Final Act. 6–8. Appellant’s contentions focus on claim 1.
Appeal Br. 6 (“For the purposes of the arguments presented with respect to
the rejections under § 101, independent Claim 1 is considered representative
of Claims 1–3, 5, 7, 22–24, 26, 27, and 30–37.”). Claims 2, 3, 5, 7, 22–24,
26, 27, and 30–37 stand or fall with claim 1. See 37 C.F.R.
§ 41.37(c)(1)(iv).
Section 101 of the Patent Act provides that “any new and useful
process, machine, manufacture, or composition of matter, or any new and
useful improvement thereof” is patent eligible. 35 U.S.C. § 101. Claim 1
falls within the literal scope of this provision because it recites a process.
The Supreme Court, however, has long recognized an implicit
exception to this section: “Laws of nature, natural phenomena, and abstract

2 The Examiner’s rejection under 35 U.S.C. § 103 has been withdrawn. See
Ans. 3.
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ideas are not patentable.” Alice Corp. v. CLS Bank lnt’l, 573 U.S. 208, 216
(2014) (quoting Ass’n for Molecular Pathology v. Myriad Genetics, Inc.,
569 U.S. 576, 589 (2013)). To determine whether a claim falls within one of
these excluded categories, the Court has set out a two-part framework. The
framework requires us first to consider whether the claim is “directed to one
of those patent-ineligible concepts.” Alice, 573 U.S. at 217. If so, we then
examine “the elements of each claim both individually and ‘as an ordered
combination’ to determine whether the additional elements ‘transform the
nature of the claim’ into a patent-eligible application.” Alice, 573 U.S. at
217 (quoting Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S.
66, 78, 79 (2012)). That is, we examine the claims for an “inventive
concept,” “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).
Under the 2019 Eligibility Guidance, to decide whether a claim is
“directed to” an abstract idea, we evaluate whether the claim (1) recites an
abstract idea grouping listed in the guidance and (2) fails to integrate the
recited abstract idea into a practical application. See 2019 Revised Patent
Subject Matter Eligibility Guidance, 84 Fed. Reg. 50, 51 (Jan. 7, 2019)
(“2019 Eligibility Guidance”).3 The groupings of abstract ideas listed in the
guidance include, for example: “Certain methods of organizing human
activity . . . including . . . advertising, marketing or sales activities or

3 An update to the 2019 Revised Patent Subject Matter Eligibility Guidance
issued in October 2019 (“October 2019 Update,” available at https://
www.uspto.gov/sites/default/files/documents/peg_oct_2019_update.pdf).
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behaviors.” 2019 Eligibility Guidance, 84 Fed. Reg. at 52. If the claim is
“directed to” an abstract idea, as noted above, we then determine whether
the claim recites an inventive concept. The guidance explains that, when
making this determination, we should consider whether the additional claim
elements add “a specific limitation or combination of limitations that are not
well-understood, routine, conventional activity in the field” or “simply
append[] well-understood, routine, conventional activities previously known
to the industry.” 2019 Eligibility Guidance, 84 Fed. Reg. at 56.
Step 2(A), Prong 1
The Examiner explains that “[t]he[] steps, as drafted, are processes
that, under their broadest reasonable interpretations, evaluate the variability
of attribution parameters between marketing channels and market segments,
a marketing activity,” which “falls within the ‘Certain Methods of
Organizing Human Activity’ grouping of abstract ideas.” Final Act. 7.
Appellant responds that “[n]one of the features recited in Claim 1 can
be understood as ‘advertising, marketing or sales activities or behaviors’ as
that term is used in the Revised Guidance.” Appeal Br. 11. Specifically,
Appellant contends that “simply receiving [consumer touch and consumer
response] data cannot be characterized as ‘advertising, marketing or sales
activities or behaviors.’” Id. Appellant contends that “the Examiner has
erred in conflating the concepts of activities or behaviors with simply
receiving data that relates to interactions between a marketer and
consumers” because “[m]erely receiving data about marketing is not a
marketing activity or behavior.” Id. Appellant’s contentions are not
persuasive.
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Receiving the marketing data as recited in the steps noted above is the
initial step in the “advertising, marketing or sales activities.” See Ans. 4
(“[R]eceiving data, in and of itself, is not a marketing activity. However,
receiving data is a necessary beginning point for any market research.”).
That is, receiving this marketing data is insignificant pre-solution activity.
As for “generating a statistical model,” “determining . . . parameter[s]
. . . based on the statistical model,” and “determining an Akaike information
criterion coefficient,” the Examiner explains that the “generating” and
“determining” steps are market research, which is included in the abstract
idea. Ans. 4.
Appellant again disputes the Examiner’s determination that these
steps recite an abstract idea. Appeal Br. 11–12. Appellant contends that
“such data processing functionality does not involve marketing goods or
services to potential consumers,” and “[t]he fact that the processed data
characterizes marketer-consumer interactions does not transform such data
processing into an ‘advertising, marketing, or sales’ activity or behavior.”
Id. at 12. Appellant contends that its “conclusion is supported by the
example advertising, marketing or sales activities or behaviors that are
provided in the October 2019 PEG Update” because “[a]ll of these examples
describe specific activity or behaviors that are undertaken in the course of
advertising, marketing, or selling,” which “include using advertising as an
exchange or currency, offer-based price optimization, and structuring of a
sales force or marketing company.” Id. citing (October 2019 Update, 6).
Again, Appellant’s contentions are not persuasive.
As noted above, Appellant acknowledges that the “data processing
functionality” is used to characterize marketing activities. The fact that data
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processing is employed does not mean that data processing is not also part of
the recited abstract idea. That the examples cited in the October 2019
Update do not recite the exact same language as Appellant’s claims does not
mean they do not apply to Appellant’s claims. For example, Appellant
contends that the “offer-based price optimization” example is not like its
recited “generating” and “determining” steps. Appeal Br. 12 (citing
(October 2019 Update, 6). The cited portion of the October 2019 Update, as
well as the 2019 Eligibility Guidance, cites OIP Techs., Inc. v. Amazon.com,
Inc., 788 F.3d 1359, 1362–63 (Fed. Cir. 2015). See, 2019 Eligibility
Guidance, 84 Fed. Reg. at 52 n13; October 2019 Update, 6. In OIP, the
court characterized the claim at issue as including limitations such as
“gathering statistics” and “using that data to estimate outcomes.” OIP, 788
F.3d at 1361. Like Appellant’s claims, the “offer-based price optimization”
in OIP is based on data processing.
Moreover, we note that the “generating” and “determining” steps
could alternatively be characterized as mathematical concepts. See October
2019 Update, 2 (“A claim can recite more than one judicial exception.”).
The 2019 Eligibility Guidance characterizes another abstract idea as
“Mathematical concepts—mathematical relationships, mathematical
formulas or equations, mathematical calculations.” 2019 Eligibility
Guidance, 84 Fed. Reg. at 52. As made clear in Appellant’s Specification,
“generating a statistical model” and “determining an Akaike information
criterion coefficient” are mathematical formulas or equations. See, e.g.,
Spec. ¶¶ 34, 42. The steps involving “determining . . . parameter[s]” involve
mathematical calculations based on the formulas noted above.
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Consistent with the Examiner’s determinations, every step in claim 1
recites an abstract idea.
Step 2(A), Prong 2
The Examiner determines that “Claim 1 does not recite any additional
elements which might integrate the abstract ideas into a practical
application.” Final Act. 7.
Appellant contends that “determining an Akaike information criterion
coefficient” is a practical application. Appeal Br. 13–14.
Because, as explained above, we agree with the Examiner that claim 1
recites only abstract ideas, it does not include any practical application.
Accordingly, claim 1 is directed to an abstract idea.
Step 2(B)
Because we agree with the Examiner that claim 1 is directed to an
abstract idea, we next determine whether the claim provides an inventive
concept. See 2019 Eligibility Guidance, 84 Fed. Reg. at 56. This requires us
to evaluate whether the additional claim elements add “a specific limitation
or combination of limitations that are not well-understood, routine,
conventional activity in the field” or “simply append[] well-understood,
routine, conventional activities previously known to the industry, specified
at a high level of generality.” Id. The Examiner determines that “[t]he
claims do not include additional elements that are sufficient to amount to
significantly more than the judicial exception.” Appeal Br. 7.
Appellant contends that “[o]ne example of such an ‘additional
element’ is ‘generating a statistical model . . . based on the consumer touch
data and the consumer response data’” and “[a]nother example of such an
‘additional element’ is ‘determining an Akaike information criterion
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coefficient . . . that quantifies an extent to which the collection of attribution
parameters varies between market segments defined by the market segment
variable.’” Appeal Br. 15. Appellant’s contentions are not persuasive.
As noted above, there is nothing in claim 1 other than abstract ideas.
The steps Appellant identifies as providing an inventive concept form part of
the recited abstract ideas, and the Examiner is not required to show that the
abstract ideas are well-understood, routine, and conventional. See, e.g.,
Bridge & Post, Inc. v. Verizon Commc’ns, Inc., 778 F. App’x 882, 892 (Fed.
Cir. 2019) (“At Alice step two we assess ‘whether the claim limitations other
than the invention’s use of the ineligible concept to which it was directed
were well-understood, routine, and conventional.’” (quoting BSG Tech LLC
v. BuySeasons, Inc., 899 F.3d 1281, 1290 (Fed. Cir. 2018))); BSG Tech, 899
F.3d at 1290 (“[T]he relevant inquiry is not whether the claimed invention as
a whole is unconventional or non-routine. . . . It has been clear since Alice
that a claimed invention’s use of the ineligible concept to which it is directed
cannot supply the inventive concept that renders the invention ‘significantly
more’ than that ineligible concept.” (first emphasis added)).
Accordingly, claim 1 does not add any inventive concept.
Conclusion
For the reasons set forth above, after applying the 2019 Eligibility
Guidance, we sustain the Examiner’s decision to reject claims 1–3, 5, 7, 22–
24, 26, 27, and 30–37 under 35 U.S.C. § 101.
CONCLUSION
The Examiner’s rejection is affirmed.
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DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–3, 5, 7,
22–24, 26,
27, 30–37
101 Patent Eligibility 1–3, 5, 7,
22–24, 26,
27, 30–37

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). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED