Affectomatics Ltd.

Patent Trials and Appeals Board

Jul 20, 2021

2020001585 (P.T.A.B. Jul. 20, 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.
15/184,401 06/16/2016 Ari M. Frank AF_Crowd2_2 2051
16759 7590 07/20/2021
Active Knowledge Ltd.
P.O. Box 294
Kiryat Tivon, 36011
ISRAEL
EXAMINER
MOSER, BRUCE M
ART UNIT PAPER NUMBER
2154
NOTIFICATION DATE DELIVERY MODE
07/20/2021 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):
ari@activekn.com
gil@activekn.com
tal@activekn.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ARI M. FRANK and GIL THIEBERGER
Appeal 2020-001585
Application 15/184,401
Technology Center 2100
Before DEBRA K. STEPHENS, ADAM J. PYONIN, and
DAVID J. CUTITTA II, Administrative Patent Judges.
PYONIN, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s rejection. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM IN PART.

1 Herein, “Appellant” refers to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies the real party in interest as Affectomatics
Ltd. Appeal Br. 3.
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Application 15/184,401

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STATEMENT OF THE CASE
Introduction
The Application is directed to providing a recommendation for
experiences based on measurements of affective response that are backed by
assurances. Spec., Title.2 “Measurements of affective response typically
involve values representing physiological signals and/or behavioral cues.”
Spec. ¶ 2. Claims 1, 3, 4, 8, 9, 12, 14–16, 18, 21, and 23–26 are pending and
rejected3; of these, claims 1, 9, and 15 are independent. Appeal Br. 21–26.
Claim 1 is reproduced below for reference (emphasis and limitation
numbering added):
1. A system configured to compute a score for an experience
while providing privacy-related assurances, comprising:
[a] a computer configured to:
[b] receive measurements of affective response of
users to the experience;
[c] wherein each measurement is associated
with an assurance that assures at least one of the
following when the measurement is used to compute
a score for the experience:
[c-1] (i) the score is computed based
on measurements of at least a certain number of the
users, which is at least three, and
[c-2] (ii) the score is computed based
on measurements that have a variance that reaches
a certain threshold;
[d] select a subset of the measurements and compute
the score based on the subset;
[e] wherein the subset comprises
measurements of at least three of the users, the
assurance associated with each of the measurements

2 See Amendment filed March 9, 2018.
3 Claims 6, 11, 17, and 22 are indicated as containing allowable subject
matter. See Final Act. 2.
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in the subset is not violated, and the subset does not
include a certain measurement, from among the
measurements, whose inclusion in the subset would
violate the assurance associated with the certain
measurement; and
[f] recommend the experience, responsive to the
score reaching a predetermined threshold.
References and Rejections4
Claims 1, 3, 4, 9, 12, 15, 16, 18, 21, and 23 are rejected under 35
U.S.C. § 101 for being patent ineligible. Final Act. 3.
Claims 1, 9, 15, and 24–26 are rejected under 35 U.S.C. § 102(a)(2) as
being anticipated by Aimone (US 2016/0077547 A1; Mar. 17, 2016). Final
Act. 5.
Claims 4, 8, and 14 are rejected under 35 U.S.C. § 103 as being
unpatentable over Aimone in view of McCall (US 2002/0188522 A1; Dec.
12, 2002). Final Act. 8.

ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellant’s
arguments. Arguments Appellant could have made but chose not to make
are deemed to be waived. See 37 C.F.R. § 41.37(c)(1)(iv). We discuss the
patent eligibility and patentability rejections in turn, below.

4 The Examiner has withdrawn a rejection of the claims as being indefinite.
See Advisory Act. 2; Final Act. 3.
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Eligibility
In January 2019, the U.S. Patent and Trademark Office (USPTO)
promulgated revised guidance on the application of § 101 (“Guidance”).5
The Manual of Patent Examining Procedure (“MPEP”) now incorporates
this revised guidance and subsequent updates at § 2106 (9th ed. Rev.
10.2019, rev. June 2020).6
Under MPEP § 2106, we first look to 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) (“Step 2A, Prong One”); and
(2) additional elements that integrate the judicial exception into a
practical application (“Step 2A, Prong Two”).
MPEP § 2106.04(a), (d).
Only if a claim (1) recites a judicial exception and (2) does not
integrate that exception into a practical application, do we then look, under
Step 2B, to whether the claim:
(3) adds a specific limitation beyond the judicial exception that is not
“well-understood, routine, conventional activity” in the field; or

5 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50
(Jan. 7, 2019) (“2019 RPSMEG”). In response to received public
comments, the USPTO issued further guidance on October 17, 2019,
clarifying the Guidance. USPTO, October 2019 Update: Subject Matter
Eligibility (the “October 2019 Update”). “All USPTO personnel are, as a
matter of internal agency management, expected to follow the guidance.” 84
Fed. Reg. at 51; see also October 2019 Update at 1.
6 All references to the MPEP are to the Ninth Edition, Revision 10.2019
(Last Revised June 2020), unless otherwise indicated.
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(4) simply appends well-understood, routine, conventional activities
previously known to the industry, specified at a high level of generality,
to the judicial exception.
MPEP § 2106.05(d).
The Examiner determines the claims are patent ineligible under 35
U.S.C. § 101, because “the claims do not include additional elements that
are sufficient to amount to significantly more than the [recited] judicial
exception.” Final Act. 4 (emphasis omitted); see also Alice Corp. v. CLS
Bank Int’l, 573 U.S. 208, 217 (2014) (describing the two-step framework
“for distinguishing patents that claim laws of nature, natural phenomena, and
abstract ideas from those that claim patent-eligible applications of those
concepts.”).
We agree with, and adopt as our own, the Examiner’s eligibility
analysis. We add the following primarily for emphasis and clarification with
respect to the Guidance.

A. Step 2A, Prong One
We agree with the Examiner that the claims “recite abstract ideas,
namely mental processes.” Final Act. 9. Limitation [b] recites receiving
measurement data, and thus recites a step of “observation.” 2019 RPSMEG,
84 Fed. Reg. at 52; see also October Update at 7–9. Limitations [d] and [f]
recite steps of selecting, computing, and recommending, and thus recite
steps of “evaluation, judgment, [and] opinion.” 2019 RPSMEG, 84 Fed.
Reg. at 52. Limitations [c] (including [c-1] and [c-2])7 and [e] recite features

7 Additionally, the recited “an assurance that assures” refers to a contractual
relationship, and is thus a recitation of “agreements in the form of contracts;
legal obligations; advertising, marketing or sales activities or behaviors;
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of the data received, selected, computed, and recommended, and thus recite
steps of “evaluation.” 2019 RPSMEG, 84 Fed. Reg. at 52. These
limitations recite examples of “mental processes” pursuant to our Guidance.
Id.
Accordingly, independent claim 1 recites a judicial exception under
Prong One of the Guidance. See 2019 RPSMEG, 84 Fed. Reg. at 54; cf.
VeriPath, Inc. v. Didomi, 842 F. App’x 640, 644 (Fed. Cir. 2021) (“the
abstract idea of exchanging privacy for functionality.”).

B. Step 2A, Prong Two
Appellant argues “the claimed invention is definitely a practical
application and is described in detail as such in the specification,” because
the “system is very useful for maintaining a balance between contribution of
data (which is useful for generating recommendations), and the risk posed
by the disclosure of such data.” Appeal Br. 9. According to Appellant, “the
assurances of the claimed invention can contribute to preserving the privacy
of users who contribute measurements used to calculate a score,” by
“offering users who contribute measurements of affective response to
computation of crowd-based scores for experiences additional guarantees for
privacy that do not currently exist (which improves the operation and/or data
sources used by recommender systems).” Id. at 11; see also Reply Br. 3.

business relations,” which are examples of “commercial or legal
interactions.” 2019 RPSMEG, 84 Fed. Reg. at 54; see Spec. ¶ 866 (“[T]here
may be no mechanism that enforces the assurance,” as there may merely be
“an agreement that states of a term of service (e.g., a contract).”); see also
Spec. ¶¶ 691, 1198. Claim 1 therefore further recites the abstract concept of
certain methods of organizing human activity.
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We are not persuaded the Examiner errs in determining the claims are
directed to an abstract idea pursuant to Step 2A, Prong Two of the Guidance.
See Final Act. 4. The features Appellant argues regarding integration into a
practical application—such as the claimed assurances—are part of the
recited abstract concept discussed above. Appellant cannot rely solely on
improvements recited by the abstract idea as providing the basis to conclude
the judicial exception is integrated into a practical application. See
RPSMEG, 84 Fed. Reg. at 55 n. 24; Trading Techs. Int’l., Inc. v. IBG LLC,
921 F.3d 1084, 1093 (Fed. Cir. 2019) (“The abstract idea itself cannot
supply the inventive concept, no matter how groundbreaking the advance.”).
Here, Appellant has not identified additional elements, individually or
in combination, that integrate the exception into a practical application. See
RPSMEG, 84 Fed. Reg. at 54, 55. Claim 1 includes limitation [a] as an
additional element, and we agree with the Examiner that “[a]long with the
computer recited in claim 1 and the non-transitory computer readable
medium having instructions stored thereon which are generic components of
a computer, these claims are not directed to a practical application.” Final
Act. 4; RPSMEG, 84 Fed. Reg. at 55. Rather, the additional element of
claim 1 “amounts to mere instructions to implement the abstract idea on a
computer.” October Update at 12.
Moreover, to the extent claim 1 recites improvements to user privacy
or otherwise provides incentives for users, we disagree with Appellant’s
contentions that such limitations remove the claims from the realm of
ineligible subject matter. See Appeal Br. 10, 11. Any such features would
improve the contractual nature of the claim, not the underlying computer or
other technology. See Ans. 10 (“nothing is claimed regarding assessing
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risk to privacy but, even if the claim[] did recite making such an assessment,
doing so is not necessarily an improvement to any technology”). Claim 1
broadly recites technology used to collect user data; the broad, preemptive
nature of the claim further signals patent ineligibility.8 See, e.g., Spec.
¶ 1463 (“embodiments described herein may employ . . . . other approaches,
tools, and/or resources that may have been known at the time this disclosure
was written, and possibly approaches, tools, and/or resources that have been
yet to be invented and/or publically disclosed at that time.”). We are
similarly unpersuaded by Appellant’s arguments that claim 1 is eligible for
specifically claiming certain implementations (see, e.g. Reply Br. 3),
because we determine the specificity of the present claim is insufficient to
establish patent eligibility. Cf. Alice, 573 U.S. at 222 (alterations in original)
(quoting Parker v. Flook, 437 U.S. 584, 593 (1978)) (“In holding that the
process was patent ineligible, we rejected the argument that ‘implement[ing]
a principle in some specific fashion’ will ‘automatically fal[l] within the
patentable subject matter of § 101.’”).
Accordingly, claim 1 does not integrate the judicial exception into a
practical application. See RPSMEG, 84 Fed. Reg. at 54. As the claim
recites a judicial exception and fails to integrate the exception into a
practical application, the claim is “directed to the . . . judicial exception.” Id.
at 54.

8 In any event, the question of preemption in the instant case has been
resolved by the rejection itself. See Final Act. 6–10; see also Two-Way
Media Ltd. v. Comcast Cable Commc’ns, LLC, 874 F.3d 1329, 1339 (Fed.
Cir. 2017) (“[W]here a patent’s claims are deemed only to disclose patent
ineligible subject matter under the Alice framework, as they are in this case,
preemption concerns are fully addressed and made moot.”).
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C. Step 2B
Appellant argues “the prior art does not disclose the very specific
components of the claimed invention, and thus the Examiner is wrong to
assert that they are all well known in the art.” Reply Br. 2, 3.
We are not persuaded the Examiner errs in determining “the claims do
not include additional elements that are sufficient to amount to significantly
more than the judicial exception.” Final Act. 4. Outside of the identified
judicial exception, the claim recites hardware limitation [a], which the
Examiner determines is “reciting generic and non-particular components of a
computer and said receiving step is routine and conventional in the art.”
Final Act. 4. We find no error in the Examiner’s determination, in view of
the record before us. See Spec. ¶¶ 930, 1146, 1224, 1359, 1462, 1465,
1749–1764, and 1775–1778; see also Alice, 573 U.S. at 226 (“Nearly every
computer will include a ‘communications controller’ and ‘data storage unit’
capable of performing the basic calculation, storage, and transmission
functions required by the method claims.”). Thus, we find independent
claim 1’s claim elements, individually and as an ordered combination, do not
provide significantly more than the recited judicial exception.
We agree with the Examiner that claim 1 is patent ineligible.
Appellant does not present additional substantive arguments for the
remaining claims. See Appeal Br. 8–14. Accordingly, we sustain the
Examiner’s 35 U.S.C. § 101 rejection of claims 1, 3, 4, 9, 12, 15, 16, 18, 21,
and 23.9

9 Pending claims 6, 8, 11, 14, 17, 22, and 24–26 do not stand rejected under
35 U.S.C. § 101. See Final Act. 2, 3. The Examiner may wish to review the
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Patentability
The Examiner finds Aimone anticipates limitation [c] of independent
claim 1, because “Aimone teaches in paragraph 0178 an agreement
(assurance) made with a user to take measurements and teaches taking
measurements for groups of users in paragraph 0060.” Final Act. 11.
Appellant argues the Examiner’s rejection is in error, because the
cited paragraphs “do not describe an assurance related to a measurement of
affective response used to calculate a score for the experience (based on
measurements of multiple users).” Appeal Br. 15 (emphasis added).
We are persuaded the Examiner’s anticipation rejection is in error.
Limitation [c] (including [c-1], and [c-2]) of claim 1 recites an assurance that
a measurement score use at least one of a certain number of users or a
variance threshold. See Appeal Br. 21. As cited by the Examiner, Aimone
discloses an assurance that the user, Tom, can access the data. See Aimone
¶ 178 (“Tom enters into an agreement with the party that the metrics
collected from his EEG be used for whatever purposes they desire in

patent eligibility of these claims, in light of our discussion herein and recent
case law. See MPEP § 1213.02 (“While the Board is authorized to reject
allowed claims, this authorization is not intended as an instruction to the
Board to examine every allowed claim in every appealed application,” and
“no inference should be drawn from a failure to exercise that discretion.”);
see also Elec. Commc’n Techs., LLC v. ShoppersChoice.com, LLC, 958 F.3d
1178, 1183 (Fed. Cir. 2020) (“Moreover, the purported uniqueness of claim
11—i.e., how the claims purportedly increase security—is itself abstract.”);
In re Morsa, 809 F. App’x 913, 917 (Fed. Cir.) (“We have explained that
claims related to ‘customizing information based on (1) information known
about the user and (2) [specific] data’ are directed to abstract ideas.”);
Veripath, 842 F. App’x at 643 (“at most, claim 1 is directed to no more than
an improvement to the abstract notion of exchanging privacy for
functionality that utilizes an API to achieve the desired result”).
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exchange for his ability to access the data stream.”). We agree with
Appellant that Aimone’s assurance (the agreement with Tom) does not
disclose the specific parameters of the assurance required by claim 1.
Accordingly, we find the claim is not anticipated by the cited reference. Net
MoneyIn, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008)
(“[U]nless a reference discloses within the four corners of the document not
only all of the limitations claimed but also all of the limitations arranged or
combined in the same way as recited in the claim, it cannot be said to prove
prior invention of the thing claimed.”).
We do not sustain the Examiner’s anticipation rejection of claim 1, or
the anticipation rejection of independent claims 9 and 15, which recite
similar limitations, or the rejection of the claims dependent thereon.
With respect to the obviousness rejection of dependent claims 4, 8,
and 14, the Examiner has not shown the combination of Aimone and McCall
render claims 4, 8, and 14 obvious. Final Act. 8. We are, therefore,
constrained by the record to find the Examiner errs in rejecting claims 4, 8,
and 14 for similar reasons. Accordingly, we do not sustain the obviousness
rejection of claims 4, 8, and 14.
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DECISION SUMMARY
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 3, 4, 9,
12, 15, 16,
18, 21, 23
101 Eligibility,
Eligibility
1, 3, 4, 9,
12, 15, 16,
18, 21, 23

1, 7, 9, 15,
24–26
102(a)(2) Aimone 1, 9, 15, 24–26
4, 8, 14 103 Aimone, Mccall 4, 8, 14
Overall
Outcome
1, 3, 4, 9,
12, 15, 16,
18, 21, 23
8, 14, 24–26

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 IN PART