Ex Parte Amento et al

Patent Trial and Appeal Board

Aug 8, 2018

13751722 (P.T.A.B. Aug. 8, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/751,722 01/28/2013
84326 7590 08/08/2018
AT & T LEGAL DEPARTMENT-Toler
ATTN: PA TENT DOCKETING
ROOM2A-207
ONEAT&TWAY
BEDMINSTER, NJ 07921
FIRST NAMED INVENTOR
Brian Amento
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
2006-Al372 Conl 1047
EXAMINER
MILLER, ALAN S
ART UNIT PAPER NUMBER
3683
MAIL DATE DELIVERY MODE
08/08/2018 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BRIAN AMENTO, CHRISTOPHER HARRISON,
and LARRY STEAD
Appeal2017-004547
Application 13/7 51,722 1
Technology Center 3600
Before JAMES R. HUGHES, ERIC S. FRAHM, and
JASON J. CHUNG, Administrative Patent Judges.
CHUNG, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) of the Final
Rejection of claims 1, 2, 4, 5, 8, 9, and 11-24.2 We have jurisdiction under
35 U.S.C. § 6(b ).
We affirm.
INVENTION
The invention is directed to recommending content items to users in a
media distribution system. Spec. ,r 3. Claim 1 is illustrative of the invention
and is reproduced below:
1 According to Appellants, the real party in interest is AT&T Intellectual
Property I, L.P. App. Br. 1.
2 Claims 3, 6, 7, and 10 have been cancelled. App. Br. 16-22.
Appeal2017-004547
Application 13/751,722
1. A method comprising:
sending, from a processor, a recommendation for a first
streaming media item to a device associated with a first user;
determining, at the processor, a difference between a first
interest profile for the first streaming media item provided by a
second user and a second interest profile for the first streaming
media item provided by a third user, the difference associated
with a portion of the first streaming media item;
comparing, at the processor, the difference to a threshold
value; and
when the difference is greater than the threshold value and
after sending the recommendation, transmitting, from the
processor, a first indication associated with the first streaming
media item based on the difference to the device, wherein the
first user, the second user, and the third user are distinct users.
App. Br., Claims Appendix, 16.
REJECTION
Claims 1, 2, 4, 5, 8, 9, and 11-24 stand rejected under 35 U.S.C. § 101
as being directed to a judicial exception to patentable subject matter. Final
Act. 8-11. 3
We have only considered those arguments that Appellants actually
raised in the Briefs. Arguments Appellants could have made, but chose not
to make, in the Briefs have not been considered and are deemed to be
waived. See 37 C.F.R. § 41.37(c)(l)(iv).
ANALYSIS
35 U.S.C. § 101: Claims 1, 2, 4, 5, 8, 9, and 11-24
3 We herein refer to the Specification filed Jan. 28, 2013 ("Spec."); Final
Office Action mailed Jan. 29, 2016 ("Final Act."); Appeal Brief filed Jul. 29,
2016 ("App. Br."); and the Examiner's Answer, mailed Nov. 22, 2016
("Ans."). It is noted a Reply Brief was filed on Jan. 19, 2017.
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The Examiner concludes the concept of "comparing information
stored in two profiles and transmitting data based on the comparison of the
data and the comparison to a threshold" is "an idea 'of itself'." Final Act. 9.
The Examiner also concludes the limitations in the claims map to concepts
identified as abstract ideas by the courts "such as obtaining and comparing
intangible data" (CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366
(Fed. Cir. 2011) ), "using categories to organize, store and transmit
information" (Cyberfone Systems, LLC v. CNN Interactive Group, Inc., 558
F. App'x 988 (Fed. Cir. 2014) (non-precedential)), and "comparing new and
stored information using rules to identify options" (SmartGene, Inc. v
Advanced Biological Labs., 555 F. App'x 950 (Fed. Cir. 2014) (non-
precedential)). Id. The Examiner further concludes that the claims recite
"the steps of receiving, analyzing, and transmitting data" which is identified
as an abstract idea in Elec. Power Gp., LLC v. Alstom, 830 F.3d 1350 (Fed.
Cir. 2016). Ans. 2.
The Examiner concludes that the
claims do not include additional elements that are sufficient to
amount to significantly more than the judicial exception
because the additional elements or combination of elements in
the claims other than the abstract idea per se [ e.g. a processor,
a device, a display on the device, a memory, a portion of the
media] amount to no more than [ ... ] a recitation of generic
computer structure that serves to perform generic computer
functions.
Final Act. 2-3. Moreover, the Examiner concludes that the additional
limitations do not "amount to significantly more" or "improve another
technology or technical fields." Ans. 5.
Appellants argue the Examiner's conclusion that the present claims
are directed to an abstract idea is incorrect because the Examiner's
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Application 13/751,722
"characterization of the currently pending claims is an attempt to describe
the claims at a high level of abstraction untethered from the language of the
claims, and is therefore improper." (emphasis removed) App. Br. 7-8.
Appellants argue that the Office fails to show "that the claims contain
similarities to all elements of the referenced case that led to the holding that
the referenced case is directed to an abstract idea." Id. at 8-9.
Appellants further argue the claims do not recite an abstract idea; but,
even if the claims were directed to an abstract idea, the combination of steps
amount to significantly more than the abstract idea because
claim 1 recites "when the difference is greater than the threshold
value and after sending the recommendation, transmitting a first
indication associated with the first streaming media item based
on the difference to the device." The above-quoted feature is
unconventional since the first indication does not indicate a
particular portion that is rated highly by viewers, but instead
indicates a specific portion of content that generates conflicting
opinions for viewers.
Id. at 11-13. Appellants still further argue that "[c]omputer technology is
improved" by the features found in the claimed invention. Id. at 14--15.
Moreover, Appellants argue that
each of the independent claims recite features that do not seek to
tie up every process for the Office's stated abstract idea of
obtaining and comparing intangible data; using categories to
organize, store, and transmit information; and comparing new
and stored information and using rules to identify options.
Id. at 13-14.
Following the decision in Alice Corp. Pty. Ltd. v. CLS Bank Int 'l, 134
S. Ct. 2347 (2014), (citing Mayo Collaborative Services v. Prometheus
Laboratories, Inc., 566 U.S. 66, 82-84 (2012)), we analyze claims where the
abstract idea judicial exception to the categories of statutory subject matter is
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Application 13/751,722
at issue using the following two-part analysis set forth in Mayo: 1)
Determine whether the claim is directed to an abstract idea; and 2) if an
abstract idea is present in the claim, determine whether any element, or
combination of elements, in the claim is sufficient to ensure that the claim
amounts to significantly more than the abstract idea itself. See Alice, 134 S.
Ct. at 2350.
As to the first part of the analysis, examples of abstract ideas
referenced in Alice include: fundamental economic practices4; certain
methods of organizing human activities 5; "[a]n idea of itself' 6; and,
mathematical relationships or formulas. 7 Claims that include abstract ideas
like these are examined under the second part of the analysis to determine
whether the abstract idea has been applied in an eligible manner.
As to the second part of the analysis, we consider the claim as a whole
by considering all claim elements, both individually and in combination. Id.
at 2355. Limitations referenced in Alice that may be enough to qualify as
"significantly more" when recited in a claim with an abstract idea include, as
non-limiting or non-exclusive examples: Improvements to another
4 Alice Corp., 134 S. Ct. at 2350: e.g., intermediated settlement, i.e., the use
of a third party intermediary to mitigate settlement risk.
5 Id. at 2356: e.g., a series of steps instructing how to hedge risk ( citing
Bilski, 561 U.S. at 599).
6 Id. at 2355: e.g., a principle, an original cause, a motive (citing Gottschalk
v. Benson, 409 U.S. 63, 67 (1972) and Le Roy v. Tatham, 14 How. 156, 175
(1852)).
7 Id. at 2350: e.g., a mathematical formula for computing alarm limits in a
catalytic conversion process (Parker v. Flook, 437 U.S. 584, 594--95
(1978)), or a formula for converting binary-coded decimal numerals into
pure binary form (Benson, 409 U.S. at 71-72).
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technology or technical field 8; improvements to the functioning of the
computer itsel:f9; and meaningful limitations beyond generally linking the
use of an abstract idea to a particular technological environment. 10
Limitations referenced in Alice that are not enough to qualify as
"significantly more" when recited in a claim with an abstract idea include, as
non-limiting or non-exclusive examples: adding the words "apply it" ( or an
equivalent) with an abstract idea 11; mere instructions to implement an
abstract idea on a computer12; or requiring no more than a generic computer
to perform generic computer functions that are well-understood, routine and
conventional activities previously known to the industry. 13
If there are no meaningful limitations in the claim that transform the
abstract idea into a patent eligible application such that the claim amounts to
significantly more than the abstract idea itself, the claim is directed to non-
statutory subject matter under 35 U.S.C. § 101.
The Federal Circuit held "merely selecting information, by content or
source, for collection, analysis, and display does nothing significant to
differentiate a process from ordinary mental processes, whose implicit
8 Id. at 2358: e.g., a mathematical formula applied in a specific rubber
molding process (citing Diamond v. Diehr, 450 U.S. 175, 177-78 (1981)).
9 Id. at 2359.
10 Id. at 2360: noting that none of the hardware recited "offers a meaningful
limitation beyond generally linking 'the use of the [ method] to a particular
technological environment,' that is, implementation via computers" ( citing
Bilski, 561 U.S. at 610-11).
11 Id. at 2357-58.
12 Id.: e.g., simply implementing a mathematical principle on a physical
machine, namely a computer (citing Mayo, 566 U.S. at 84--85).
13 Id. at 2359: e.g., using a computer to obtain data, adjust account balances,
and issue automated instructions.
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exclusion from § 101 undergirds the information-based category of abstract
ideas." Elec. Power, 830 F.3d at 1355. In addition, "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. at 1354. The Federal
Circuit further stated:
[t]he claims in this case do not even require a new source or type
of information, or new techniques for analyzing it. ... As a result,
they do not require an arguably inventive set of components or
methods, such as measurement devices or techniques, that would
generate new data. They do not invoke any assertedly inventive
programming. Merely requiring the selection and manipulation
of information-to provide a "humanly comprehensible" amount
of information useful for users ... by itself does not transform
the otherwise-abstract processes of information collection and
analysis.
Id. at 1355 (internal citations omitted).
Alice Step 1
On this record, we see no error in the Examiner's analysis and
conclusion that claims 1, 2, 4, 5, 8, 9, and 11-24 are directed to an abstract
idea. Final Act. 4, Ans. 2. That is, we agree with the Examiner that the
concept of "comparing information stored in two profiles and transmitting
data based on the comparison of the data and the comparison to a threshold"
is "an idea 'of itself". Final Act. 9.
Moreover, we note the Examiner's conclusion that the claims are
directed to abstract ideas similar to those identified previously by the courts
such as "obtaining and comparing intangible data" from Cybersource,
"using categories to organize, store and transmit information" from
Cyberfone, and "comparing new and stored information and using rules to
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identify options" from SmartGene. Final Act. 9. And the Examiner's
conclusion that the claims amount to "of receiving, analyzing, and
transmitting data," which is identified as an abstract idea in Electric Power.
Ans. 2.
Similar to the claims in Electric Power, claims 1, 2, 4, 5, 8, 9, and 11-
24 of the present case are directed to collecting data and analyzing that data,
which does nothing significant to differentiate a process from ordinary
mental processes, whose implicit exclusion from § 101 undergirds the
information-based category of abstract ideas. And also similar to Electric
Power, claims 1, 2, 4, 5, 8, 9, and 11-24 of the present case are directed to
presenting the results of abstract processes of collecting and analyzing
information, without more (such as identifying a particular recommendation
for presentation), is abstract as an ancillary part of such collection and
analysis. Additionally, like Electric Power, claims 1, 2, 4, 5, 8, 9, and 11-24
of the present case merely require the selection and manipulation of
information to provide a "recommendation" and "after sending the
recommendation [ ... ] an indication" for users, which by itself does not
transform the otherwise-abstract processes of information collection and
analysis. Claim 1.
We are unpersuaded by Appellants' argument that the Examiner fails
to show how the claim language directly relates to abstract ideas previously
identified by the courts. App. Br. 7-9. Because claims 1, 2, 4, 5, 8, 9, and
11-24 are directed to an abstract idea, we proceed to step (2) of the Alice,
two-part test.
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Alice Step 2
Regarding second step of the Alice two-part test, claims 1, 2, 4, 5, 8,
9, and 11-24 do not amount to significantly more than an abstract idea. In
the present case, claims 1, 2, 4, 5, 8, 9, and 11-24 describe the concept of
sending a recommendation, calculating a difference, analyzing the difference
using a threshold, and transmitting data based on the analysis, which is not
significantly more than an abstract idea.
With regard to Appellants' argument that the pending claims are
patent eligible because they have "unconventional" limitations, such as
"indicat[ing] a specific portion of content that generates conflicting opinions
for viewers" (see App. Br. 11-13), the standard for step (2B) of the Alice
two-part test is whether the additional limitations amount to significantly
more than an abstract idea. In Electric Power, the Federal Circuit
distinguished DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed.
Cir. 2014), stating "[t]he claims at issue here do not require an arguably
inventive device or technique for displaying information." Electric Power,
830 F.3d at 1355. Unlike the inventive concept found in DDR
("modification of conventional mechanics behind website display to produce
dual-source integrated hybrid display"), the claims at issue merely required
"off-the-shelf, conventional, computer, network, and display technology."
Id. Here, we are unpersuaded that the "unconventional" limitations amount
to significantly more, because using the existing technological structures to
make an indication based on the data analysis step of the abstract idea
simply links the abstract idea to the particular technological environment,
which does not amount to significantly more.
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Regarding Appellants' argument that "[c]omputer technology is
improved by enabling a device to notify a viewer when recommended media
content includes a contention point" and therefore, the claims are "are
directed to an improvement in existing computer technology" (see App. Br.
14--15), we disagree for the following reasons. Even if claims 1, 2, 4, 5, 8,
9, and 11-24 cannot be divorced from technology as Appellants contend
(App. Br. 14--15), this does not mean claims 1, 2, 4, 5, 8, 9, and 11-24 recite
patent eligible subject matter because there still needs to be an improvement
to the underlying technology according to the Federal Circuit decision in
Enfish, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016). 14 In this
case, claims 1, 2, 4, 5, 8, 9, and 11-24 recite an improvement to an
abstraction, not an improvement to the underlying technology. Stated
differently, just because an improved abstract idea functions with technology
does not mean that the abstract idea is an improvement to the underlying
technology.
Here, the claims are directed to a media distribution system, which is
implemented through the generic components described as "processor" and
"device." There is neither a modification to the underlying conventional
technology, nor is there a new technique claimed. Instead, we agree with the
Examiner that Appellants' claims are directed to generic components,
claimed at a high level of generality, and lacking in implementation details.
Ans. 7. Claims 1, 2, 4, 5, 8, 9, and 11-24, therefore, do not amount to
14 We note that Appellants' argument relying on Enfish in step (2B) is
misplaced because Enfish pertains to step (2A) rather than step (2B).
Nonetheless, we conclude the present claims recite an abstract idea for the
reasons stated supra and the present claims do not amount to significantly
more for the reasons stated supra and infra.
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significantly more than an abstract idea. Credit Acceptance Corp. v.
Westlake Servs., 859 F.3d 1044, 1056 (Fed. Cir. 2017) (generic computer
elements did not represent improvement in computer technology but rather
were invoked merely as tools, and did not transform the claims into
significantly more than claims to abstract idea itself).
As for the Appellants' preemption argument (App. Br. 13-14), while
preemption may denote patent ineligibility, its absence does not demonstrate
patent eligibility. See FairWarning, IP, LLC v. Iatric Sys., Inc., 839 F.3d
1089, 1098 (Fed. Cir. 2016). For claims covering a patent-ineligible
concept, preemption concerns "are fully addressed and made moot" by an
analysis under the Mayo/Alice framework. Ariosa Diagnostics, Inc. v.
Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015).
Accordingly, for the reasons stated supra, we sustain the Examiner's
rejection of: (1) independent claims 1, 13, and 18; and (2) dependent claims
2, 4, 5, 8, 9, 11, 12, 14--17, 19-24.
DECISION
We affirm the Examiner's decision rejecting claims 1, 2, 4, 5, 8, 9,
and 11-24 under 35 U.S.C. § 101.
No time period for taking any subsequent action in connection with
this appeal may be extended under 3 7 C.F .R. § 1.13 6( a )(1 )(iv).
AFFIRMED
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