Ex Parte Amento et alDownload PDFPatent Trial and Appeal BoardAug 8, 201813751722 (P.T.A.B. Aug. 8, 2018) Copy Citation 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. 2 Appeal2017-004547 Application 13/751,722 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 3 Appeal2017-004547 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 4 Appeal2017-004547 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). 5 Appeal2017-004547 Application 13/751,722 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. 6 Appeal2017-004547 Application 13/751,722 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 7 Appeal2017-004547 Application 13/751,722 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. 8 Appeal2017-004547 Application 13/751,722 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. 9 Appeal2017-004547 Application 13/751,722 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. 10 Appeal2017-004547 Application 13/751,722 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 11 Copy with citationCopy as parenthetical citation