Ex Parte Bruich et al

Patent Trial and Appeal Board

Aug 22, 2018

14194394 (P.T.A.B. Aug. 22, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/194,394 02/28/2014 Sean Michael Bruich
91230 7590 08/24/2018
Baker Botts L.L.P./Facebook Inc.
2001 ROSS A VENUE
SUITE 900
Dallas, TX 75201
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.
079894.0298 6455
EXAMINER
KIM, WILLIAM JW
ART UNIT PAPER NUMBER
2421
NOTIFICATION DATE DELIVERY MODE
08/24/2018 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):
ptomaill@bakerbotts.com
ptomail2@bakerbotts.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SEAN MICHAEL BRUICH and
BRADLEY HOPKINS SMALL WOOD
Appeal2018-001930
Application 14/194,394
Technology Center 2400
Before ALLEN R. MacDONALD, JOSEPH P. LENTIVECH, and
PHILLIP A. BENNETT, Administrative Patent Judges.
MacDONALD, Administrative Patent Judge.
DECISION ON APPEAL 1
1 Appellants indicate the real party in interest is Facebook Inc. App. Br. 3.
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Application 14/194,394
STATEMENT OF THE CASE2
Appellants appeal under 35 U.S.C. § 134(a) from a Non-Final
Rejection of claims 1-20. We have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM.
Illustrative Claim
Illustrative claim 1 under appeal reads as follows ( emphasis and
bracketed material added):
1. A method, comprising:
[A.] retrieving user input received at a social-networking
system, the user input comprising a time stamp, a user location,
and a user activity;
[B.] determining, by one or more computing devices,
viewing behavior of a set of users, the viewing behavior for each
user indicating a number of past exposures of the user to a
television advertisement representing a concept, wherein the
viewing behavior is determined based on the time stamp, the user
location, and user activity;
[C.] accessing, by the one or more computing devices,
attitudinal data of one or more of the set of users toward the
concept represented by the television advertisement; and
[D.] determining, by the one or more computing devices,
effectiveness of the television advertisement by evaluating the
attitudinal data toward the concept against the number of past
exposures to the television advertisement.
2 All citations to the "Non-Final Action" are to the Non-Final Action mailed
on April 3, 2017.
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Rejections
A.
The Examiner rejected claims 1-20 under 35 U.S.C. § 101 "because
the claimed invention is directed to a judicial exception (i.e., a law of nature,
a natural phenomenon, or an abstract idea) without significantly more," i.e.,
because the claimed invention is directed to patent-ineligible subject matter.
Non-Final Act. 8.
We select claim 1 as representative. Appellants do not separately
argue claims 2-20. Except for our ultimate decision, we do not discuss the
§ 101 rejection of claims 2-20 further herein.
B.
The Examiner rejected claims 1, 5-8, 12-15, 19, and 20 under
35 U.S.C. § I03(a) as being unpatentable over the combination of Cannon
(US 6,286,005 Bl; iss. Sept. 4, 2001), Briggs (US 2006/0041480 Al; pub.
Feb. 23, 2006), Setty et al. (US 2012/0109737 Al; pub. May 3, 2012),
and King et al. (US 2010/0250727 Al; pub. Sept. 30, 2010). Non-Final Act.
11-28.
We select claim 1 as representative. Appellants do not separately
argue claims 5-8, 12-15, 19, and 20. Except for our ultimate decision,
we do not discuss the§ 103 rejection of claims 5-8, 12-15, 19, and 20
further herein.
C.
The Examiner rejected claims 2--4, 9-11, and 16-18 under 35 U.S.C.
§ I03(a) as being unpatentable over Cannon, Briggs, Setty, and King in
various combinations with other references. Non-Final Act. 28-34.
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Appellants do not present arguments for claims 2--4, 9-11, and 16-18.
Thus, the rejections of these claims tum on our decision as to claim 1.
Except for our ultimate decision, we do not discuss the § 103 rejections of
claims 2--4, 9-11, and 16-18 further herein.
Issues on Appeal
Did the Examiner err in rejecting claim 1 as being directed to patent-
ineligible subject matter?
Did the Examiner err in rejecting claim 1 as being obvious?
ANALYSIS
We have reviewed the Examiner's rejections in light of Appellants'
Appeal Brief arguments that the Examiner has erred.
A. Section 101
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 Bankint'l, 134 S. Ct. 2347, 2354 (2014) (quotingAss'nfor
Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 589 (2013)).
The Supreme Court in Alice reiterated the two-step framework previously
set forth in Mayo Collaborative Services v. Prometheus Laboratories, Inc.,
566 U.S. 66, 82-83 (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
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step in that analysis is to "determine whether the claims at issue are directed
to one of those patent-ineligible concepts," such as an abstract idea. For
example, a fundamental economic practice is an abstract idea:
[In Bilski v. Kappas, 561 U.S. 593 (2010)], the Court grounded
its conclusion that all of the claims at issue were abstract ideas in
the understanding that risk hedging was a "'fundamental
economic practice."' 561 U.S., at 611.
Alice, 134 S. Ct. at 2357.
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
Enfzsh, LLC v. Microsoft Corp., 822 F.3d 1327, 1336 (Fed. Cir. 2016). If
the claims are not directed to an abstract idea, the inquiry ends. Otherwise,
the inquiry proceeds to the second step where the elements of the claims are
considered "individually and 'as an ordered combination' to determine
whether the additional elements 'transform the nature of the claim' into a
patent-eligible application." Alice, 134 S. Ct. at 2355 ( quoting Mayo, 566
U.S. at 79, 78).
B. Examiner's§ 101 Rejection -Alice/Mayo - Steps 1 and 2
Applying step 1 of the Alice/Mayo analysis, the Examiner concludes
claim 1 is directed to an abstract idea because:
[The claim 1] steps describe the concept of receiving user ad
exposure and response data to determine the effectiveness of an
ad ( e.g., a focus group), which corresponds to concepts identified
as abstract ideas, such as obtaining and comparing intangible
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data in Cybersource v Retail Decisions, or collecting
information, analyzing it, and displaying certain results of the
collection and analysis in Electric Power Group. The concept of
claim 1 is not meaningfully different than those concepts found
by the courts to be abstract ideas. As such, the concept of Claim
1 of determining effectiveness of ads based on user exposure and
attitudinal data is an abstract idea.
Non-Final Act. 9.
Applying step 2 of the Alice/Mayo analysis, the Examiner concludes:
The claim does not include additional elements that are
sufficient to amount to significantly more than the judicial
exception because the additional elements when considered
individually and as an ordered combination do not amount to
significantly more than the abstract idea. Claim 1 additionally
recites where in the determining/accessing steps are performed
by one or more computing devices.
Non-Final Act. 9.
C. Appellants ' § 101 Arguments
1.
Appellants first raise the following argument in contending that the
Examiner erred in rejecting claim 1 as directed to patent-ineligible subject
matter.
Like the unconventional patent eligible claims in Amdocs,
Claim 1 provides an unconventional technical solution ( e.g.,
using input at a social-networking system to determine exposure
to a television advertisement) to a technological problem.
App. Br. 11.
We are unpersuaded by Appellants' argument. Contrary to
Appellants' argument that the invention sets forth a "technical solution" to a
"technological problem," we agree with the Examiner's determination "that
the claims are directed not toward a 'technical problem', but rather toward
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an 'abstract problem' of modeling advertisement exposure of viewers."
Ans. 4. More particularly, we conclude the underlying problem is a non-
technical problem of collecting sufficient data during human-to-human data
gathering (i.e., polling (Spec. ,r 22)). Although partially solved in the prior
art by using a recording device to record the needed data for later use (Spec.
,r 22; App. Br. 11 ), we conclude this does not convert the "non-technical
problem" into a "technical problem."
2.
Appellants also raise the following arguments in contending that the
Examiner erred in rejecting claim 1 as directed to patent-ineligible subject
matter.
Claim 1 uses specific information to improve the way a computer
determines a user's exposure to a television advertisement. The
elements of Claim 1 prevent preemption of all processes for
determining a user's exposure to a television advertisement using
a social-networking system.
App. Br. 12 ( emphasis added).
The particular type of information is used to achieve a specific
asserted improvement: determine a user's exposure to a
television advertisement. ...
When looked at as a whole and not in a cursory manner as
analyzed by the Office Action, Claim 1 focuses on a specific
method that improves the ability for a computer to determine a
user's exposure to a television advertisement and is not merely
directed to an abstract idea. Thus, in contrast to the Office
Action's assertion that the user input is simply "non-functional
descriptive language that also fails to impose a meaningful limit
to the abstract limitation," the specification articulates how the
specific information articulated in the claim is used to make
technical improvements.
App. Br. 13-14 (emphasis added).
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First, as to Appellants' "preemption" argument, this argument is not
persuasive because although "preemption may signal patent ineligible
subject matter, the absence of complete preemption does not demonstrate
patent eligibility." Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d
1371, 1379 (Fed. Cir. 2015). We are instructed that "[w]here a patent's
claims are deemed only to disclose patent ineligible subject matter under the
[Alice/Mayo] framework ... , preemption concerns are fully addressed and
made moot." Id.
Second, as to Appellants' "improve the way a computer [works]"
argument, we disagree. Rather than providing a technical solution that
improves the way a computer works, Appellants' invention merely improves
the abstract idea directed to modeling advertising exposure by improving the
human-to-human data collection. The computer is then applied to this
abstract idea. This is not enough to transform an abstract idea into patent-
eligible subject matter. See, e.g., Alice, 134 S. Ct. at 2360 (explaining that
claims that "amount to 'nothing significantly more' than an instruction to
apply the abstract idea ... using some unspecified, generic computer" "is
not 'enough' to transform an abstract idea into a patent-eligible invention"
(quoting Mayo, 566 U.S. at 77, 79)); Intellectual Ventures I LLC v. Capital
One Fin. Corp., 850 F.3d 1332, 1342 (Fed. Cir. 2017) ("[T]he claim
language here provides only a result-oriented solution, with insufficient
detail for how a computer accomplishes it").
Third, as to Appellants' "non-functional descriptive language"
argument, we disagree. While we agree that the "user input comprising a
time stamp, a user location, and a user activity" is not merely non-functional
descriptive language (e.g., a data label), we disagree with Appellants'
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ultimate point that this "particular type of information" about the advertising
exposure serves to render the claim patent eligible. Rather, we agree with
the Examiner that this is analogous to the patent-ineligible "collecting
information, analyzing it, and displaying certain results of the collection and
analysis in Electric Power Group [830 F.3d 1350, 1351-52 (Fed. Cir.
2016)]." Non-Final Act. 9.
3.
Appellants further raise the following argument in contending that the
Examiner erred in rejecting claim 1 as directed to patent-ineligible subject
matter.
The claims present a solution to this technological
challenge, instead of relying on specialized networked
equipment attached to a user's television, amended Claim 1
recites, "retrieving user input received at a social-networking
system, the user input comprising a time stamp and a user
activity" and "determining, by one or more computing devices,
viewing behavior of a set of users . . . wherein the viewing
behavior is determined based on the time stamp and user
activity." These elements address the previous issue created by
the reliance on networked equipment attached to a user's TV. By
determining viewing behavior "based on the time stamp and user
activity [ received at a social-networking system]," Claim 1
avoids requiring specialized networked equipment, thereby
overcoming a problem specifically arising in the realm of
computer networks.
App. Br. 14 (emphasis added).
The Examiner presents the following response to Appellants' above
argument.
[T]he problem addressed by the Claims are directed toward
modeling advertisement exposure and effectiveness. The
'problems' that are allegedly solved by the Claims are small
sample sizing and measurement of exposed and non-exposed
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users (see Appeal Brief, pg. 5, ,r 3). However, these problems are
not unique to computer network environments. Rather, these
problems are generally applicable to any advertising system,
regardless of the medium chosen to present the advertisements.
Thus, unlike DDR, the instant Claims address a business
challenge ( determining/modeling advertisement exposure and
effectiveness) that is not unique nor particular to the Internet.
Ans. 7 ( emphasis added).
We disagree with Appellants' conclusion that claim 1 is directed to
overcoming a problem specifically arising in the realm of computer
networks. We agree with the Examiner's response, and again, we conclude
the underlying problem is a non-technical problem of collecting sufficient
data during human-to-human data gathering (i.e., polling (Spec. ,r 22)).
D. Section 103 Arguments
1.
Appellants raise the following argument in contending that the
Examiner erred in rejecting claim 1 under 35 U.S.C. § 103(a).
Specifically, none of the four references, either individually or in
combination, disclose the idea of determining a user's past
exposure to a television advertisement by utilizing user input
received at a social-networking system.
App. Br. 15.
The examiner concedes that Cannon and Briggs fail to disclose
retrieving user input received a social networking system and,
instead, the examiner relies on various portions of Setty. (Office
Action, pg. 14.) Yet, the Examiner states that it would have been
obvious to combine Cannon and Briggs with Setty, because Setty
discloses retrieving user input as a social-networking system "to
determine the effectiveness of advertisements provided via a
social network." (Office Action, pgs. 15). However, determining
the effectiveness of advertisements provided "via a social
network" is irrelevant since Claim 1 recites that the
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advertisements are a "television advertisement[ s ]," and not
online advertisements.
App. Br. 16.
The Examiner presents the following response to Appellants' above
argument.
The Examiner notes, one cannot show nonobviousness by
attacking references individually where the rejections are based
on combinations of references. See In re Keller, 642 F.2d 413,
208 USPQ 871 (CCPA 1981); In re Merck& Co., 800 F.2d 1091,
231 USPQ 375 (Fed. Cir. 1986). Furthermore, the test for
obviousness is not whether the features of a secondary reference
may be bodily incorporated into the structure of the primary
reference; nor is it that the claimed invention must be expressly
suggested in any one or all of the references. Rather, the test is
what the combined teachings of the references would have
suggested to those of ordinary skill in the art. See In re Keller,
642 F.2d 413,208 USPQ 871 (CCPA 1981).
In the Non-Final Office Action mailed out on 03 April
2017 (hereinafter the Non-Final), pgs. 12-14, the Examiner cites
Cannon and Briggs as disclosing and teaching retrieval of
viewing behavior of users with respect to television
advertisements, and determining effectiveness of the television
advertisements by evaluating attitudinal data toward the concept
represented by the television advertisement. The Non-Final, pg.
14, final ,r - pg. 15, ,r 3 cites Setty to teach that user inputs
comprising timestamp and user activity information provided via
a social network may be utilized to determine user viewing
behavior with said social network-provided user input.
Specifically, Setty [0005-1 OJ was cited to teach that the tracked
advertisements could comprise video/audio clips. While Setty
does not explicitly state that such video/audio advertisements
were television advertisements, one of ordinary skill in the art
would understand that the teachings of Setty could be applicable
to the television advertisements of Cannon and Briggs to utilize
a user's social-network activities for determining advertisement
effectiveness. As such, the combination of the teachings of
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Cannon, Briggs, Setty, and King disclose and teach each element
of the Claim.
Ans. 8-9.
We agree with the Examiner's articulated reasoning.
CONCLUSIONS
(1) The Examiner has not erred in rejecting claims 1-20 under
35 U.S.C. § 101, as being directed to patent-ineligible subject matter.
(2) The Examiner has not erred in rejecting claims 1-20 as being
unpatentable under 35 U.S.C. § 103(a).
(3) Claims 1-20 are not patentable.
DECISION
The Examiner's rejection of claims 1-20 under 35 U.S.C. § 101, as
being directed to patent-ineligible subject matter, is affirmed.
The Examiner's rejection of claims 1-20 as being unpatentable under
35 U.S.C. § 103(a) 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
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