Benjamin Donald. Dyer

Patent Trials and Appeals Board

Aug 20, 2019

12171387 - (D) (P.T.A.B. Aug. 20, 2019)

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.
12/171,387 07/11/2008 Benjamin Donald DYER 336021-2000 2845
20999 7590 08/20/2019
HAUG PARTNERS LLP
745 FIFTH AVENUE - 10th FLOOR
NEW YORK, NY 10151
EXAMINER
STERRETT, JONATHAN G
ART UNIT PAPER NUMBER
3623
NOTIFICATION DATE DELIVERY MODE
08/20/2019 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):
docket@haugpartners.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte BENJAMIN DONALD DYER
____________

Appeal 2017-010949
Application 12/171,3871
Technology Center 3600
____________

Before MURRIEL E. CRAWFORD, BIBHU R. MOHANTY, 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 1–19. We have jurisdiction under
35 U.S.C. § 6(b). An oral hearing was held July 26, 2019.
We AFFIRM.

CLAIMED SUBJECT MATTER
Appellant’s “invention relates generally to computerised information
systems. In particular, the invention concerns a method and system for

1 According to Appellant, the real party in interest is TaguchiMarketing Pty
Ltd. (Appeal Br. 1.)
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improving response rate [sic] to online content, based upon candidate
response data and content parameters.” (Spec. 1.)
Claims 1, 12, 13, and 19 are the independent claims on appeal.
Claim 1 is illustrative. It recites:
1. A method for improving recipient response rates to
message content transmitted via a data communications network
to a plurality of recipients, the method comprising the steps of:
a) storing in one or more computer-readable data storage
media content comprising a plurality of content levels[;]
b) storing in the one or more computer-readable data
storage media a weighting value for each of the content levels;
c) generating by at least one computer a plurality of
message content samples by forming combinations of content
levels for a plurality of content factors, the message content
samples being configured for inducing a recipient to generate an
event representing a response;
d) for each message content sample of the plurality of
message content samples, the at least one computer calculating a
combination weighting value from the stored weighting values
corresponding with the content levels comprising the message
content sample;
e) selecting, by the at least one computer, a subset of the
plurality of recipients and transmitting, by the at least one
computer, to each member of the subset only one of the plurality
of message content samples, the one message content sample
being selected according to the combination weighting values;
f) receiving, by the at least one computer, one or more
recipient responses via the data communications network from
one or more recipients of the subset;
g) analyzing, by the at least one computer, the one or more
recipient responses by computing for each message content
sample a response rate, wherein each response rate is a ratio
between a number of recipients of the corresponding message
content sample and a number of recipient responses to the
corresponding content sample to identify one or more
combinations of content levels resulting in high recipient
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response rates relative to other combinations in accordance with
predetermined statistical criteria;
h) adjusting, by the at least one computer, the weighting
values in the one or more data storage media such that the, or
each, combination of content levels resulting in high recipient
response rate has an increased probability of subsequent
selection, and storing the adjusted weighting values within the
one or more data storage media; and
i) repeating at least steps d) and e) utilizing the adjusted
weighting values.

REJECTIONS
Claims 1–19 are rejected under 35 U.S.C. § 101 as directed to a
judicial exception without significantly more.
Claims 1–19 are rejected under 35 U.S.C § 103(a) as unpatentable
over Hsin-Hsi Lai et al., A robust design approach for enhancing the feeling
quality of a product: a car profile study, 35 Int’l J. of Indus. Ergonomics
445 (2005) (hereinafter “Lai”); R.A. Wysk, et al., Manufacturing Processes:
Integrated Product and Process Design (2000) (hereinafter “Wysk”); and
Paul D. Berger & Thomas L. Magliozzi, Experimental design in direct mail
and the application of Taguchi methods, 7 J. of Direct Mktg. 44 (1993)
(hereinafter “Berger”).

ANALYSIS
The § 101 rejection
Appellant does not separately argue the claims. We select claim 1 as
representative. Claims 2–19 will stand or fall with claim 1. See 37 C.F.R.
§ 41.37(c)(1)(iv).
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“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. Pty. Ltd. v.
CLS Bank Int’l, 573 U.S. 208, 216 (2014) (quoting Assoc. for Molecular
Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 589 (2013)).
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
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exception.” See USPTO, 2019 Revised Patent Subject Matter Eligibility
Guidance, 84 Fed. Reg. 50, 54 (Jan. 7, 2019) (hereinafter “2019 Guidance”).
Here, the Examiner determines that “[t]he steps in the claimed method
are clearly directed to an abstract idea of improving recipient response rates
by performing the claimed abstract idea steps.” (Answer 8.) The Examiner
also finds that the claims are “directed to the abstract idea of applying the
Taguchi method (or a variant thereof) . . . to evaluating the design of
advertisements in emails.” (Non-final Action 6.) In short, the Examiner
determines that claim 1 is directed to advertising.
Appellant argues that “[t]he claimed invention relates to a method and
system for improving recipient response rates to message content transmitted
via a data communications network to a plurality of recipients.” (Appeal
Br. 9.) Appellant further argues that this “is not the Taguchi method.” (Id.
at 10.)
We are not persuaded of reversible error. 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).
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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
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 computerised information systems” and “improving response rate [sic] to
online content, based upon candidate response data and content parameters.”
(Spec. 1.) Further, the Specification indicates that the invention relates to
“[t]he performance of online marketing campaigns.” (Id.) Claim 1 provides
further evidence. Claim 1 recites “[a] method for improving recipient
response rates . . . comprising the steps of: storing . . . a plurality of content
levels,” “storing . . . a weighting value for each of the content levels,”
“generating . . . message content samples,” “for each message content
sample . . . calculating a combination weighting value,” “selecting . . .
recipients and transmitting . . . one of the . . . message content samples,”
“receiving . . . recipient responses,” “analyzing . . . the . . . responses,”
“adjusting the weighting values,” and “repeating . . . using the adjusted
weighting values.”
Claim 1 is directed to advertising, marketing or sales activities or
behaviors; that is, the abstract idea of certain methods of organizing human
activity. This is accomplished by storing information, generating content
samples, calculating values, selecting and transmitting content samples,
receiving responses, analyzing the responses, calculating/adjusting and
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storing values, and repeating. See, e.g., Content Extraction and
Transmission LLC v. Wells Fargo Bank, Nat’l Ass’n, 776 F.3d 1343, 1347
(Fed. Cir. 2014) (“[T]he claims of the asserted patents are drawn to the
abstract idea of 1) collecting data, 2) recognizing certain data within the
collected data set, and 3) storing that recognized data in a memory.”); see
also 2019 Guidance at 52. This may be performed using generic processors
in a generic computer system. (See, e.g., Spec. 10.) In short, “the
innovative aspect of the claimed invention is an entrepreneurial rather than a
technological one.” See Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 722
(Fed. Cir. 2014).
“[W]e have treated collecting information, including when limited to
particular content (which does not change its character as information), as
within the realm of abstract ideas.” Elec. Power Grp., 830 F.3d at 1353. “In
a similar vein, we have treated analyzing information by steps people go
through in their minds, or by mathematical algorithms, without more, as
essentially mental processes within the abstract-idea category.” Id. at 1354.
Additionally, the Federal Circuit has “recognized that merely presenting the
results of abstract processes of collecting and analyzing information, without
more (such as identifying a particular tool for presentation), is abstract as an
ancillary part of such collection and analysis.” Id.
Although we and the Examiner describe, at different levels of
abstraction, to what the claims are directed, it is recognized that “[a]n
abstract idea can generally be described at different levels of abstraction.”
Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1240 (Fed. Cir. 2016). That
need not and, in this case does not, “impact the patentability analysis.” See
id. at 1241.
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Here, the limitations of claim 1 do not recite implementation details.
They only recite functional results to be achieved by any possible means. In
other words, claim 1 does not recite “a particular way of programming or
designing the software . . . , but instead merely claim[s] the resulting
[method].” Apple, Inc., 842 F.3d at 1241. “Indeed, the claim language here
provides only a result-oriented solution, with insufficient detail for how a
computer accomplishes it. Our law demands more.” Intellectual Ventures I
LLC v. Capital One Fin. Corp., 850 F.3d 1332, 1342 (Fed. Cir. 2017).
“[T]he recited physical components merely provide a generic environment in
which to carry out the abstract idea.” In re TLI Commc’ns LLC Patent
Litig., 823 F.3d 607, 611 (Fed. Cir. 2016).
We do not see how the recitation of a generic “data communications
network,” “computer-readable data storage media,” and “computer,” even in
conjunction with the recited functions, “ensure[s] ‘that the [claim] is more
than a drafting effort designed to monopolize the [abstract idea].” See Alice,
573 U.S. at 221 (brackets in original) (quoting Mayo, 566 U.S. at 77.)
Regardless, Appellant argues that the Examiner erred in finding that
the claimed invention is the Taguchi method. (See, e.g., Appeal Br. 9–10.)
We do not find this argument persuasive of reversible error. As an initial
matter, the Examiner found, in relevant part, that the claims are “directed to
the abstract idea of applying the Taguchi method (or a variant thereof) . . .
to evaluating the design of advertisements in emails.” (Non-final Action 6
(emphasis added).) Moreover, as is apparent from the above discussion, the
determination that claim 1 is directed to the abstract idea of certain methods
of organizing human activities does not depend on whether the claimed
method is the Taguchi method. (See Answer 8.)
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Also, Appellant seeks to analogize the present claims to the claims in
McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299, 1313 (Fed.
Cir. 2016). (Appeal Br. 16.) Appellant argues that, like the claims in
McRO, “[i]n the present case, the claims recite specific steps of a method
that automatically adjusts the nature of distributed content based on rates of
responses to previously distributed content.” (Id.)
We do not find this argument persuasive. Claim 1 recites “adjusting
. . . the weighting values . . . such that the, or each, combination of content
levels resulting in high recipient response rate has an increased probability
of subsequent selection,” i.e., Appellant’s reference to “automatically
adjusts” refers to content selection. In McRO, however, “[t]he claimed
improvement was to how the physical display operated (to produce better
quality images), unlike (what is present here) a claimed improvement in a
mathematical technique with no improved display mechanism.” SAP Am.,
Inc. v. InvestPic, LLC, 898 F.3d 1161, 1167 (Fed. Cir. 2018). In other
words, in McRO, data was used to improve the technology, i.e., the display
mechanism. Appellant does not sufficiently explain how the referenced step
improves the technology.
Appellant also argues that “the claimed method for improving
recipients’ response rates for content is no less technological than the
method for filtering content that the Federal Circuit upheld in BASCOM
Global Internet Servs. V. AT&T Mobility, 827 F.3d 1341 . . . (Fed. Cir.
2016).” (Reply Br. 6.) We disagree.
In BASCOM, the court determined that “an inventive concept can be
found in the non-conventional and non-generic arrangement of known,
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conventional pieces.” BASCOM, 827 F.3d at 1350.2 Specifically, “[t]he
inventive concept described and claimed in the ’606 patent is the installation
of a filtering tool at a specific location, remote from the end-users, with
customizable filtering features specific to each end user.” Id. at 1350. The
Federal Circuit determined that this “particular arrangement of elements is a
technical improvement over prior art ways of filtering.” Id. Here, Appellant
does not contend, and claim 1 does not specify, that the recited data
communications network, computer-readable data storage media, and
computer, must be arranged in a non-conventional manner. Nor does
Appellant explain how the claimed method allegedly improves the function
of the data communications network, computer-readable data storage media,
or computer. See, e.g., BSG Tech LLC v. BuySeasons, Inc., 899 F.3d 1281,
1288 (Fed. Cir. 2018) (“[A[n] improvement to the information stored by a
database is not equivalent to an improvement in the database’s
functionality.”). Moreover, the asserted technical improvement, i.e.,
“improving recipients’ response rates for content” (Reply Br. 6), is, at best,
an improvement to the abstract idea. But “[n]o matter how much of an
advance in the . . . field the claims recite, the advance lies entirely in the
realm of abstract ideas, with no plausibly alleged innovation in the non-
abstract application realm.” SAP Am., Inc., 898 F.3d at 1163.
In view of the above, we agree with the Examiner that claim 1 is
directed to an abstract idea.

2 We acknowledge that some of these considerations could be evaluated
under step two of the Alice framework. However, for purposes of
maintaining consistent treatment within the USPTO, we evaluate it under
step one. See 2019 Guidance.
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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 (citing Mayo, 566 U.S. at 72–73).
Taking the claim elements separately, the functions performed by the
data communications network, computer-readable data storage media, and
computer at each step are purely conventional. Storing information,
generating information, calculating values, selecting and transmitting
information, receiving responses, analyzing the responses,
calculating/adjusting and storing values, and repeating are basic computer
functions, i.e., they 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
therefore do not state an arguably inventive concept . . . .”); see also In re
Katz Interactive Call Processing Patent Litig., 639 F.3d 1303, 1316 (Fed.
Cir. 2011) (“Absent a possible narrower construction of the terms
‘processing,’ ‘receiving,’ and ‘storing,’ . . . those functions can be achieved
by any general purpose computer without special programming.”).
Considered as an ordered combination, the generic data
communications network, computer-readable data storage media, and
computer of Appellant’s method add nothing that is not already present
when the steps are considered separately. For example, claim 1 does not
purport to improve the functioning of the network, the media, or the
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computer. Nor does it effect an improvement in any other technology or
technical field. Instead, claim 1 amounts to nothing significantly more than
an instruction to apply the abstract idea using a generic processor. That is
not enough to transform an abstract idea into a patent-eligible invention. See
Alice, 573 U.S. at 225–26.
In view of the above, we are not persuaded that the Examiner erred in
rejecting claim 1 under § 101. Claims 2–19 fall with claim 1. See 37 C.F.R.
§ 41.37(c)(1)(iv).

The § 103 rejection
Claim 1 recites “e) . . . transmitting . . . to each member of the subset
only one of the plurality of message content samples,” “f) receiving . . . one
or more recipient responses,” and “g) analyzing . . . the one or more
recipient responses by computing for each message content sample a
response rate, wherein each response rate is a ratio between a number of
recipients of the corresponding message content sample and a number of
recipient responses to the corresponding content sample.”
The Examiner finds that Lai discloses a signal-to-noise ratio and “that
the ratio being claimed is what is understood in the art with respect to the
Taguchi method to be merely the signal to noise ratio for responses (see
page 447 column 1 - here it references the signal to noise ratio very well
known in the art regarding the Taguchi method).” (Non-final Action 17; see
also id. at 18 (citing Wysk 5, Equation 32.5 (showing an equation similar to
that disclosed in Lai)).)
The Examiner explains that “[i]n Lai each one of the persons being
survey [sic] is shown the profiles of Figure 6. Those which are chosen have
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the response rates as shown in Figure 7. Figure 7 illustrates the ratio as
claimed.” (Answer 9.) In other words, the Examiner considers each signal-
to-noise ratio to be a measure of a response.
Appellant argues that
[a]ccording to Lai, every car design is presented to each of the
27 “estimators”, (i.e., human participants in the design
evaluation process) and the estimators evaluate every car design
according to a “feeling” measure (see Section 4.2.4). Every
estimator is required to respond fully. The response rates from
Lai are 100%.
It is therefore the content of the responses, not the number
of responses (in particular the response rate), which is analyzed
in Lai. Unlike the present invention, the response rate is not at
all a factor in the analysis in Lai.

(Appeal Br. 20.)
We are persuaded of error. Lai discloses “a method to concretize the
feeling effects of products, to enhance the feeling quality of products, and to
minimize the influence of highly individualized characteristics.” (Lai 446.)
Lai discloses that “this method can be used to determine the feeling
discrepancy between the planned feeling (i.e. the target feeling) of a product
and the actual consumer’s feeling (i.e. the output feeling) for that product.”
(Id. at 447.) Lai further discloses that “[t]he feeling quality of each
combinative sample is measured using the ‘smaller-the-better’ S/N ratio
since the ideal affective design is the design which yields the minimum
feeling discrepancy.” (Id. at 449.) The experiment in Lai involved
estimators each shown “(1) three initial designs and (2) 27 combinative
designs. . . . Each estimator evaluated their feeling for the initial and
combinative car profile samples using the three nine-point semantic scales.”
(Id. at 452.)
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Thus, in relevant part, each estimator/recipient in Lai receives 27
combinative design samples to evaluate. The signal-to-noise ratio measures
the feeling quality for each combinative sample. In other words, each
estimator responds to each of the 27 combinative designs. And in the
Examiner’s analogy to the claimed invention, a combinative design is
analogous to a message content sample, i.e., the signal-to-noise ratio for
each design is analogous to the response rate ratio for each message content
sample. Claim 1, however, recites “transmitting . . . to each member [of the
subset of the plurality of recipients] . . . only one of the plurality of message
content samples,” not 27. (Emphasis added.)
In view of the above, we are persuaded that the Examiner erred in
finding that Lai (and Wysk) disclose limitation g) in claim 1, and in rejecting
claim 1 under § 103. Independent claims 12, 13, and 19 contain similar
language and the Examiner relies on similar arguments in rejecting those
claims. (See Non-final Action 30.) Therefore, for similar reasons, we are
persuaded that the Examiner erred in rejecting claims 12, 13, and 19, and
dependent claims 2–11 and 14–18, under §103.

DECISION
The Examiner’s rejection of claims 1–19 under 35 U.S.C. § 101 is
affirmed.
The Examiner’s rejection of claims 1–19 under 35 U.S.C. § 103(a) is
reversed.

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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