Ex Parte Amini et alDownload PDFPatent Trial and Appeal BoardNov 21, 201714077021 (P.T.A.B. Nov. 21, 2017) Copy Citation 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. 14/077,021 11/11/2013 Ali Nasiri AMINI 08011.3032-02000 6590 100692 7590 Oath Inc./Finnegan 901 New York Ave., NW Washington, DC 20001 EXAMINER CAO, VINCENT M ART UNIT PAPER NUMBER 3688 NOTIFICATION DATE DELIVERY MODE 11/24/2017 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): regional-desk @ finnegan. com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte ALINASIRI AMINI, MICHAEL JAN GREBECK, AARON E. FLORES, ALIREZA DARVISH, HANS MARIUS HOLTAN, and ROBERT ALDEN LUENBERGER Appeal 2016-001991 Application 14/077,021 Technology Center 3600 Before JOSEPH A. FISCHETTI, TARA L. HUTCHINGS, and AMEE A. SHAH, Administrative Patent Judges SHAH, Administrative Patent Judge. DECISION ON APPEAL1 The Appellants2 appeal under 35 U.S.C. § 134(a) from the Examiner’s final decision rejecting claims 35, 37, 39-45, 47, and 49-58 under 35 U.S.C. § 101 as being directed to non-statutory subject matter. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 Throughout this Opinion, we refer to the Appellants’ Appeal Brief (“Appeal Br.,” filed June 30, 2015), Reply Brief (“Reply Br.,” filed Nov. 25, 2015), and Specification (“Spec.,” filed Nov. 11, 2013), and to the Examiner’s Answer (“Ans.,” mailed Sept. 25, 2015) and Final Office Action (“Final Act.,” mailed Dec. 31, 2014). 2 According to the Appellants, the real party in interest is AOL Advertising Inc. Appeal Br. 3. Appeal 2016-001991 Application 14/077,021 STATEMENT OF THE CASE The Appellants’ invention relates generally to “placement of media on advertising space inventory on an electronic medium, and more specifically, to estimating media performance on the advertising space inventory.” Spec. 12. Claims 35, 45, and 54 are the independent claims on appeal. Claim 35 (Claims App.) is illustrative of the subject matter on appeal, and is reproduced below: 35. A computer-implemented method, comprising: obtaining, from a plurality of communications devices, information specifying a number of impressions associated with a first media cell, the first media cell corresponding to a first advertisement presented by the communications devices on a first portion of advertising space inventory; computing, using at least one processor, an approximation of an error associated with a mean revenue per impression of the first media cell based on the number of impressions; determining, using the at least one processor, whether the error approximation exceeds a threshold value associated with a revenue model of the first media cell; when the error approximation does not exceed the threshold value, calculating, using the at least one processor, a mean revenue per impression of the first media cell based on a distribution of revenue per impression for the first media cell; predicting, using the at least one processor, a revenue per impression of a second media cell based on the calculated mean revenue per impression of the first media cell, the second media cell corresponding to a disposition of the first advertisement on a second portion of the advertising space inventory; and based on the predicted revenue per impression, generating, using the at least one processor, an instruction to transmit data associated with the second media cell to the communications devices, the data instructing the communications devices to 2 Appeal 2016-001991 Application 14/077,021 present the first advertisement to the corresponding users on the second portion of the advertising space inventory. ANALYSIS The Appellants argue claims 35, 37, 39-45, 47, and 49-58 as a group. Appeal Br. 13. We select claim 35 as representative with claims 37, 39-45, 47, and 49—58 standing or falling therewith. See 37 C.F.R. § 41.37(c)(l)(iv). Under 35 U.S.C. § 101, a patent may be obtained for “any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof.” The Supreme Court has “long held that this provision contains an important implicit exception: Laws of nature, natural phenomena, and abstract ideas are not patentable.” Alice Corp. Pty. Ltd. v. CLS Bank Inti, 134 S. Ct. 2347, 2354 (2014) (quoting Ass ’n for Molecular Pathology v. Myriad Genetics, Inc., 133 S. Ct. 2107, 2116 (2013)). The Supreme Court in Alice reiterated the two-step framework, set forth previously in Mayo Collaborative Services v. Prometheus Laboratories, Inc., 566 U.S. 66, 78—79 (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, 134 S. Ct. at 2355. The first step in that analysis is to “determine whether the claims at issue are directed to one of those patent-ineligible concepts.” Id. (citing Mayo, 566 U.S. at 79) (emphasis added). If so, the second step is to consider the elements of the claims “individually and ‘as an ordered combination”’ to determine whether the additional elements “‘transform the nature of the claim’ into a patent-eligible application.” Id. (quoting Mayo, 566 U.S. at 79, 78). In other words, the second step is to “search for an 3 Appeal 2016-001991 Application 14/077,021 ‘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.’” Id. (alteration in original) (quoting Mayo, 566 U.S. at 72—73). The Court acknowledged in Mayo, that “all inventions at some level embody, use, reflect, rest upon, or apply laws of nature, natural phenomena, or abstract ideas.” Mayo, 566 U.S. at 71. We, therefore, look to whether the claims focus on a specific means or method that improves the relevant technology or are instead directed to a result or effect that itself is the abstract idea, and merely invoke generic processes and machinery. See Enfish, LLCv. Microsoft Corp., 822 F.3d 1327, 1336 (Fed. Cir. 2016). Initially, we find unpersuasive the Appellants’ argument that the Examiner’s rejection is in error because “[cjontrary to the Examiner’s assertions, a prima facie case of unpatentability under § 101 has not been established with respect to any of Appellant’s [sic] claims.” Appeal Br. 13. In rejecting the pending claims under § 101, the Examiner analyzes the claims using the Mayo/Alice two-step framework. Specifically, the Examiner takes claim 35 as representative of all the claims (see Final Act. 5), looks to the language of the claim (id. at 4), and finds that claims 35, 37, 39-45, 47, 49-58 are directed to the abstract idea of “determining if information should be presented to users based on performance,” a fundamental economic practice and “utilizing mathematical formulations by analyzing performance data to determine presentation of information” (id. at 3). See also Ans. 6—7. The Examiner further finds that the additional elements of the claims, taken alone and as an ordered combination, do not transform the abstract idea into a patent eligible invention, because they 4 Appeal 2016-001991 Application 14/077,021 “each execute in a manner routinely and conventionally expected of these elements,” and are “merely the combined and coordinated execution of generic computer functionalities which are well-understood, routine and conventional activities previously known to the industry.” Final Act. 4. The Examiner applied the analysis of claim 35 to all of the claims. See Final Act. 5. We are aware of no controlling authority that requires the Office to provide factual evidence to support a finding that a claim is directed to an abstract idea. See para. IV of the July 2015 Update: Subject Matter Eligibility (“Update”) to 2014 Interim Guidance on patent Subject Matter Eligibility (“2014 IEG”), 79 Fed. Reg. 74618 (Dec. 16, 2014). The courts consider the determination of whether a claim is eligible (which involves identifying whether an exception such as an abstract idea is being claimed) to be a question of lawf Accordingly, courts do not rely on evidence that a claimed concept is a judicial exception, and in most cases resolve the ultimate legal conclusion on eligibility without making any factual findings. Update 6 (emphases added). There is also no specific requirement that requires that each claim be examined individually by the Examiner (Reply Br. 7—8) in determining that the claims are directed to an abstract idea.3 See Alice, 134 S. Ct. at 2355-57. 3 We note that the guidelines are not legal requirements. Intellectual Ventures ILLC v. Erie Indemnity Co., No. 2017-1147, 2017 WL 5041460, at *4 (Fed. Cir. Nov. 3, 2017); In re Fisher, 421 F.3d 1365, 1372 (Fed. Cir. 2005) (“The MPEP and Guidelines ‘are not binding on this court’”) (internal citations omitted); MPEP, Foreword (“The Manual does not have the force of law or the force of the rules in Title 37 of the Code of Federal Regulations”); and 2014 IEG at 74619 (“This Interim Eligibility Guidance 5 Appeal 2016-001991 Application 14/077,021 Here we find that the Examiner has set forth the statutory basis of the rejection in a sufficiently articulate and informative manner as to meet the notice requirement of § 132 as to why the claims are patent-ineligible. Id.', see also Chester v. Miller, 906 F.2d 1574, 1578 (Fed. Cir. 1990) (Section 132 “is violated when a rejection is so uninformative that it prevents the applicant from recognizing and seeking to counter the grounds for rejection”). The Appellants do not contend that the Examiner’s § 101 rejection was not understood or that the Examiner’s rejection, otherwise, fails to satisfy the notice requirements of § 132. Instead, the Appellants’ understanding of the rejection is clearly manifested by the Appellants’ responses as set forth in the briefs. Turning to the first step of the Alice framework, we find supported and adopt the Examiner’s determination that the claims are directed to “utilizing mathematical relationships to analyze historical data to provide/advertise an ad space to advertisers.” Final Act. 6; see also Appeal Br. 14—15. The Specification describes that the invention relates “more specifically[] to estimating media performance on the advertising space inventory.” Spec. 12. The Appellants cite to Figures 1, 3, 6, and 8 for support of the claimed method of claim 35. Appeal Br. 5. These figures depict steps for “an exemplary method for predicting media performance on advertising space inventory” (Spec. 111, Fig. 1), a “method for estimating a mean review per impression (RPI)” {id. 113, Fig. 3), a “method for predicting a RPI of a target media cell” {id. 116, Fig. 6), and a computer does not constitute substantive rulemaking and does not have the force and effect of law . . . and is not intended to create any right or benefit, substantive or procedural, enforceable by any party against the Office”). 6 Appeal 2016-001991 Application 14/077,021 system that implements the embodiments (id. 118, Fig. 8). Claim 35 recites steps of obtaining information regarding a number of impressions associated with an advertisement presented on a first portion of space inventory, computing an approximation of an error, determining whether the approximation exceeds a threshold, when it does not, calculating a mean revenue, predicting a revenue, and generating an instruction to transmit data instructing the device to present the advertisement on a second portion of space inventory. Claims App. As such, claim 35 involves nothing more than obtaining, calculating, determining, and predicting data, steps that can be performed manually, to be used to determine whether an advertisement may be presented.4 See CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1373 (Fed. Cir. 2011) (“[A] method that can be performed by human thought alone is merely an abstract idea and is not patent-eligible under § 101”). In this regard, the claims are similar to the claims that our reviewing courts have found patent ineligible in Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353—54 (Fed. Cir. 2016) (collecting information and “analyzing information by steps people go through in their minds, or by mathematical algorithms, without more, [are] essentially mental processes within the abstract-idea category”), In re Maucorps, 609 F.2d 481, 482 (CCPA 1979) (using equations and data to optimize the organization of sales representatives in a business), Parker v. Flook, 437 U.S. 584 (1978) (mathematical algorithm used for adjusting an alarm limit), and Bilski v. 4 We note the dependent claims further elaborate on the abstract idea in adding further calculating, predicting, assigning, and generating steps. Cf. Appeal Br. 19. 7 Appeal 2016-001991 Application 14/077,021 Kappos, 561 U.S. 593, 611 (2010) (using a mathematical formula for the concept of hedging). Here, claim 35 involves nothing more than calculating, predicting, and evaluating data to determine whether to present an advertisement, without any particular inventive technology — an abstract idea. See Elec. Power Grp., 830 F.3d at 1354. The Appellants’ arguments to the contrary (see Appeal Br. 15—16, Reply Br. 3 4) are not persuasive. We are also not persuaded by the Appellants’ argument that the pending claims are not an abstract idea because the claims do not “attempt to preempt every application of the alleged abstract idea.” Appeal Br. 16; see also id. at 17. Although the Supreme Court has described “the concern that drives this exclusionary principle [i.e., the exclusion of abstract ideas from patent eligible subject matter,] as one of pre-emption” {see Alice, 134 S. Ct. at 2354), characterizing pre-emption as a driving concern for patent eligibility is not the same as characterizing pre-emption as the sole test for patent eligibility. “The Supreme Court has made clear that the principle of preemption is the basis for the judicial exceptions to patentability” and “[f]or this reason, questions on preemption are inherent in and resolved by the § 101 analysis.” Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015) (citing Alice, 134 S. Ct. at 2354). Although “preemption may signal patent ineligible subject matter, the absence of complete preemption does not demonstrate patent eligibility.” Id. The aforementioned concept is not sufficiently limiting so as to fall clearly on the side of patent-eligibility To the extent the Appellants argue that the claims are not directed to an abstract idea because they are not taught by the prior art (Appeal Br. 17), an abstract idea does not transform into an inventive concept just because 8 Appeal 2016-001991 Application 14/077,021 the prior art does not disclose or suggest it. See Mayo, 566 U.S. at 91. “Groundbreaking, innovative, or even brilliant discovery does not by itself satisfy the § 101 inquiry.” Myriad, 133 S. Ct. at 2117. Indeed, “[t]he ‘novelty’ of any element or steps in a process, or even of the process itself, is of no relevance in determining whether the subject matter of a claim falls within the § 101 categories of possibly patentable subject matter.” Diamond v. Diehr, 450 U.S. 175, 188—89 (1981); see also Mayo, 566 U.S. at 91 (rejecting “the Government’s invitation to substitute §§ 102, 103, and 112 inquiries for the better established inquiry under § 101”). We also disagree with the Appellants’ contention that the claims are not directed to an abstract idea because they are “inextricably tied to computer networks rather than ethereal ideas or mental processes” because “one of the problems solved by the claimed combination of elements is necessarily rooted in computer networks.” Appeal Br. 17 (citing DDR Holdings, LLCv. Hotels.com, LP, 773 F.3d 1245, 1256-57 (Fed. Cir. 2014)). In DDR Holdings, the Federal Circuit determined that the claims addressed the problem of retaining website visitors who, if adhering to the routine, conventional functioning of Internet hyperlink protocol, would be transported instantly away from a host’s website after clicking on an advertisement and activating a hyperlink. DDR Holdings, 773 F.3d at 1257. The Federal Circuit, thus, held that the claims were directed to statutory subject matter because they claim a solution “necessarily rooted in computer technology in order to overcome a problem specifically arising in the realm of computer networks.” Id. The court cautioned that “not all claims purporting to address Internet-centric challenges are eligible for patent,” and 9 Appeal 2016-001991 Application 14/077,021 noted that in the claims at issue in DDR, the computer network was not “operating in its normal, expected manner.” Id. at 1258. In contrast, here, no such technological advance is evidence. Unlike the situation in DDR Holdings, there is no indication here that the claimed invention claims a solution “necessarily rooted in computer technology in order to overcome a problem specifically arising in the realm of computer networks.” The Specification provides that advertisers “desire accurate estimates of the performance of advertisements, such as the performance of a particular advertisement associated with a specific location on a website, in order to ensure effective ad placement.” Spec. 13. These accurate estimates have relied on historical performance data that are “alone insufficient to estimate the performance of an advertisement or website that lack[s] historical performance data.” Id. 14; see also Appeal Br. 16—17. The invention provides “an improved approach is needed to compute a measure of media performance for data sharing applications.” Spec. 1 6. Obtaining more accurate estimates of advertisement performance is not a technological problem, but rather a business problem. Further, the claimed improved approach using predictions of revenue and instructions to transmit data is not a technological or technical solution, but a mathematical/analytical one. The claims do not address problems specifically arising from computer network technology, but rather generally and broadly recite limitations using a processor operating in its normal capacities of obtaining, computing, determining, and predicting data. See DDR Holdings, 773 F.3d at 1258—59 (citing Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 714 (Fed. Cir. 2014)); see also Fair Warning IP, LLC v. Iatric Systems, Inc., 839 F.3d 1089, 1094—95 (Fed. Cir. 2016) (claims directed to 10 Appeal 2016-001991 Application 14/077,021 collecting and analyzing information to detect misuse merely implement an old practice in a new environment). Although the advertisements are presented on webpages online, i.e., the field of the invention is the Internet (see Appeal Br. 17), the problem is not one unique to the Internet or computers, but rather is a commercial/marketing issue that existed prior to the Internet. Turning to the second step of the Alice framework, we disagree with the Appellants’ contention that the claims are directed to patent-eligible subject matter because the claims include elements that, “when taken alone or more combination, offer ‘substantially more’ than the alleged abstract idea of ‘utilizing mathematical relationships to analyze historical data to provide/advertise an ad space to advertisers.’” Appeal Br. 20. We find supported the Examiner’s findings that the steps and functions of the claims, considered individually and as an ordered combination, are routine, conventional, well-understood functions of a generic computer, do not improve another technology or technical field, and do not improve the computer itself. See Final Act. 4, Ans. 6—9. The Specification supports this view. See Spec. Fig. 8, 142-46 (discussing a generic computer system with generic components of a processor, network, storage devices, and interfaces). The Appellants do not provide adequate evidence that the functions are not routine, well-understood, and conventional to a generic computer, or that the processor itself is technologically improved (as opposed to being programmed to perform the claimed functions). There is no further specification of particular technology for performing the steps. See Affinity Labs of Texas, LLC v. DIRECTV, LLC, 838 F.3d 1253, 1263 (Fed. Cir. 2016); see also Enfish, 822 11 Appeal 2016-001991 Application 14/077,021 F.3d. at 1336 (focusing on whether the claim is “an improvement to [the] computer functionality itself, not on economic or other tasks for which a computer is used in its ordinary capacity”). The computer implementation here is purely conventional and performs basic functions. See Alice, 134 S. Ct. at 2359-60 (applying an abstract idea, such as an algorithm, on a general purpose computer is not enough to transform a patent-ineligible abstract idea into a patent-eligible invention). We find unpersuasive the Appellants’ argument that because the Examiner finds the claims “novel over the prior art of record,” the claims “involve an ‘incentive concept.’” Appeal Br. 21 (quoting Final Act. 7). As discussed above, an abstract idea does not transform into an inventive concept just because the prior art does not disclose or suggest it. See Mayo, 566 U.S. at 91. Thus, we are not persuaded of Examiner error in rejecting claim 35 under 35 U.S.C. § 101, and we sustain the Examiner’s rejection of claims 35, 37, 39-45, 47, and 49-58. DECISION The Examiner’s rejection of claims 35, 37, 39-45, 47, and 49—58 under 35 U.S.C. § 101 is AFFIRMED. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv). AFFIRMED 12 Copy with citationCopy as parenthetical citation