Ex Parte Bruich et al

Patent Trial and Appeal Board

Sep 20, 2018

13693470 (P.T.A.B. Sep. 20, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/693,470 12/04/2012
87851 7590
Facebook/Fenwick
Silicon Valley Center
801 California Street
Mountain View, CA 94041
09/24/2018
FIRST NAMED INVENTOR
Sean Michael Bruich
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.
26295-21197/US 6142
EXAMINER
REFAI,SAMM
ART UNIT PAPER NUMBER
3681
NOTIFICATION DATE DELIVERY MODE
09/24/2018 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):
ptoc@fenwick.com
fwfacebookpatents@fenwick.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
FREDERICK ROSS LEACH
Appeal2017-004181 1
Application 13/693,470
Technology Center 3600
Before MURRIEL E. CRAWFORD, MICHAEL W. KIM, and
PHILIP J. HOFFMANN, Administrative Patent Judges.
KIM, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is an appeal from the final rejection of claims 1-7, 10, 21,
and 22. We have jurisdiction to review the case under 35 U.S.C. §§ 134
and 6.
The invention relates generally to generating advertising metrics using
location information. Spec. ,r 1.
Claim 1 is illustrative:
1 The Appellants identify Facebook, Inc. as the real party in interest. Appeal
Br. 1.
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Application 13/693,470
1. A computer-implemented method comprising:
selecting, from a plurality of users of a social networking
system, a holdout group of users associated with an
advertisement of an advertiser, wherein users from the plurality
not in the holdout group are presented with the advertisement and
users from the plurality in the holdout group are not presented
with the advertisement;
receiving location information of one or more physical
sites associated with the advertiser;
obtaining location information from a mobile device of
one or more users from the plurality of users for a time interval
after presentation of the advertisement,
wherein the location information is obtained by:
receiving an identification code from the mobile
device of one of the plurality of users, the identification
code assigned to a wireless access point device located at
one of the physical sites and transmitted to the mobile
device from the wireless access point device, and
matching the received identification code of the
wireless access point device to a geographic location;
determining a percentage of users in the holdout group that
visited at least one of the physical sites based on the location
information of the physical sites and the location information for
the one or more users;
determining a percentage of users not in the holdout group
that visited at least one of the physical sites based on the location
information of the one or more physical sites and the location
information of the one or more users;
generating a conversion metric for the advertisement
based on a calculated difference between the percentage of users
in the holdout group that visited at least one of the physical sites
and the percentage of users not in the holdout group that visited
at least one of the physical sites; and
providing the generated conversion metric to a client
device associated with the advertiser.
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The Examiner rejected claims 1-7, 10, 21, and 22 under
35 U.S.C. § 101 as directed to ineligible subject matter in the form of
abstract ideas.
The Examiner rejected claims 1, 2, 4, 6, 7, 10, and 21 under
35 U.S.C. § I03(a) as unpatentable over Vengroff et al.
(US 2007/0185768 Al, pub. Aug. 9, 2007) (hereinafter "Vengroff'),
Krishnamoorthy et al. (US 2012/0010939 Al, pub. Jan. 12, 2012)
(hereinafter "Krishnamoorthy"), Bax et al. (US 2011/0191191 Al, pub.
Aug. 4, 2011) (hereinafter "Bax"), Wichrowska et al. (US 8,914,235 Bl,
issued Dec. 16, 2014) (hereinafter "Wichrowska"), DeBusk et al.
(US 2002/0072971 Al, pub. June 13, 2002) (hereinafter "DeBusk"), and
Park et al. (US 2011/0119126 Al, pub. May 19, 2011) (hereinafter "Park").
The Examiner rejected claims 3 and 5 under 35 U.S.C. § I03(a) as
unpatentable over Vengroff, Krishnamoorthy, Bax, Wichrowska, DeBusk,
Park, and Official Notice.
The Examiner rejected claim 22 under 35 U.S.C. § I03(a) as
unpatentable over Vengroff, Krishnamoorthy, Bax, Wichrowska, DeBusk,
Park, and Parish (US 2013/0040654 Al, pub. Feb. 14, 2013).
We AFFIRM.
ANALYSIS
Re;ection under 35 U.S.C. § 1 OJ
Principles of Law
An invention is patent-eligible if it claims a "new and useful process,
machine, manufacture, or composition of matter." 35 U.S.C. § 101. The
Supreme Court, however, has long interpreted § 101 to include implicit
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exceptions: "[l]aws of nature, natural phenomena, and abstract ideas" are
not patentable. Alice Corp. v. CLS Bankint'l, 134 S. Ct. 2347, 2354 (2014).
In determining whether a claim falls within the excluded category of
abstract ideas, we are guided in our analysis by the Supreme Court's two-
step framework, described in Mayo and Alice. Id. at 2355 ( citing Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 75-78 (2012)).
In accordance with that framework, we first determine whether the claim is
"directed to" a patent-ineligible abstract idea. See Alice, 134 S. Ct. at 2356
("On their face, the claims before us are drawn to the concept of
intermediated settlement, i.e., the use of a third party to mitigate settlement
risk."); Bilski v. Kappas, 561 U.S. 593, 611 (2010) ("Claims 1 and 4 in
petitioners' application explain the basic concept of hedging, or protecting
against risk."); Diamond v. Diehr, 450 U.S. 175, 184 (1981) ("Analyzing
respondents' claims according to the above statements from our cases, we
think that a physical and chemical process for molding precision synthetic
rubber products falls within the § 101 categories of possibly patentable
subject matter."); Parker v. Flook, 437 U.S. 584, 594--95 (1978)
("Respondent's application simply provides a new and presumably better
method for calculating alarm limit values."); Gottschalk v. Benson, 409 U.S.
63, 64 (1972) ("They claimed a method for converting binary-coded decimal
(BCD) numerals into pure binary numerals.").
The following method is then used to determine whether what the
claim is "directed to" is an abstract idea:
[T]he decisional mechanism courts now apply is to examine
earlier cases in which a similar or parallel descriptive nature can
be seen-what prior cases were about, and which way they were
decided. See, e.g., Elec. Power Grp., 830 F.3d at 1353-54.[]
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That is the classic common law methodology for creating law
when a single governing definitional context is not available. See
generally Karl N. Llewellyn, The Common Law Tradition:
Deciding Appeals (1960). This more flexible approach is also
the approach employed by the Supreme Court. See Alice, 134
S.Ct. at 2355-57. We shall follow that approach here.
Amdocs (Isr.) Ltd. v. Openet Telecom, Inc., 841 F.3d 1288, 1294 (Fed. Cir.
2016).
The patent-ineligible end of the spectrum includes fundamental
economic practices (Alice, 134 S. Ct. at 2357; Bilski, 561 U.S. at 611);
mathematical formulas (Flook, 437 U.S. at 594--95); and basic tools of
scientific and technological work (Benson, 409 U.S. at 69). On the patent-
eligible side of the spectrum are physical and chemical processes, such as
curing rubber (Diehr, 450 U.S. at 184 n.7), "'tanning, dyeing, making
waterproof cloth, vulcanizing India rubber, smelting ores,'" and a process
for manufacturing flour (Benson, 409 U.S. at 69).
If the claim is "directed to" a patent-ineligible abstract idea, we then
consider the elements of the claim-both individually and as an ordered
combination-to assess whether the additional elements transform the nature
of the claim into a patent-eligible application of the abstract idea. Alice,
134 S. Ct. at 2355. This is a search for an "inventive concept"-an element
or combination of elements sufficient to ensure that the claim amounts to
"significantly more" than the abstract idea itself. Id.
Analysis
For the reasons that follow, we agree with the Examiner that the
claims are directed to abstract ideas, but also agree with the Appellants that
the Examiner has failed to demonstrate adequately that the claims fail to
recite features that transform the claims into patent-eligible subject matter.
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With respect to the first issue, the Appellants assert the Examiner has
erred "by selectively looking at a specific step of the independent claims
while ignoring the rest of the claim[s]." Appeal Br. 14--15. Specifically, the
Appellants assert "the [E]xaminer indicates that the 'generating' limitation is
directed to an abstract idea because it employs mathematical algorithms to
manipulate information." Reply Br. 6. We disagree.
The Examiner finds claims 1 and 10 are:
directed to the abstract idea of generating a conversion metric for
the advertisement based on a calculated difference between the
percentage/number of users in the holdout group that visited at
least one of the physical sites and the percentage/number of not
in the holdout group that visit at least one of the physical sites.
Final Act. 2. The Examiner, thus, examines each claim as a whole and finds
it is directed to an idea that happens to contain a word also recited in one
limitation of the claim. Then, rather than asserting the claims are abstract
because they merely employ mathematical algorithms, the Examiner finds
instead that the claims are abstract because they are similar to those "[ s ]uch
as in Digitech which employ[ ] mathematical algorithms to manipulate
existing information to generate additional information." Id. at 2-3.
As an example, independent claim 1 recites that the method selects a
"holdout" ( control) group, gathers data from the experimental and holdout
groups, calculates a percentage for each group, calculates a metric from the
comparison of the percentages, and then provides the calculated metric. The
gathering of data and providing of results are insignificant extra-solution
activity, and the selection of a control group is presumed because two sets of
data are needed in order to compare information being measured. See In re
Bilski, 545 F.3d 943, 963 (Fed. Cir. 2008) (en bane), aff'd sub nom Bilski v.
Kappas, 561 U.S. 593 (2010) (characterizing data gathering steps as
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insignificant extra-solution activity). We, thus, interpret that the steps of
selecting a control group, gathering information, and presenting information,
as claimed, are considered by the Examiner to be encompassed by the
concept to which the claim is directed, even though this is substantially
similar to the one stated limitation of generating a metric.
We are not persuaded by the Appellants' argument that "the claimed
invention does not preempt all ways of achieving a result," because the
"claims recite a specific process for determining the effectiveness of an
advertisement." Appeal Br. 15. "While 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); see also OIP Techs., Inc. v.
Amazon.com, Inc., 788 F.3d 1359, 1362---63 (Fed. Cir. 2015) ("[T]hat the
claims do not preempt all price optimization or may be limited to price
optimization in the e-commerce setting do not make them any less
abstract."). And, "[w]here a patent's claims are deemed only to disclose
patent ineligible subject matter under the Mayo framework, as they are in
this case, preemption concerns are fully addressed and made moot." Ariosa,
788 F.3d at 1379.
The Examiner finds the claims are similar to those found to be
directed to abstract ideas "in Digitech which employs mathematical
algorithms to manipulate existing information to generate additional
information." Final Act. 2-3. The Examiner also finds the claims are
similar to claims "such as in Parker v. Flook in which the claimed formula is
limited by the steps of gathering the input variables and carrying out the
calculations to update the number describing the alarm limit," and citing the
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July 2015 Update: Subject Matter Eligibility, finds the claims are similar to
"comparing information regarding a sample or test subject to a control or
target data." Answer 8-9. The Appellants have not addressed these findings
directly, instead advancing other arguments, such as that the Examiner is
improperly "applying the second step of the Alice test in attempt to analyze
the claims as whole under the first step." Reply Br. 6.
We, therefore, are unpersuaded that the Appellants have shown that
the Examiner erred in asserting that the claims are directed to abstract ideas.
Turning to the second step of the Alice/Mayo analysis, we examine the
claim limitations individually, and as an ordered combination, looking for an
"inventive concept" or "significantly more" that may transform the abstract
idea into patent-eligible subject matter.
As to this step of the analysis, the Appellants argue the "claimed
invention provides a technological improvement to the ineffective industry
practice by ... using technology to determine the locations of users."
Appeal Br. 16. Independent claim 1 recites that the location of users
involves:
obtaining location information from a mobile device of
one or more users from the plurality of users for a time interval
after presentation of the advertisement,
wherein the location information is obtained by:
receiving an identification code from the mobile device of
one of the plurality of users, the identification code assigned to a
wireless access point device located at one of the physical sites
and transmitted to the mobile device from the wireless access
point device, and
matching the received identification code of the wireless
access point device to a geographic location.
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In other words, an identification code, assigned to a wireless access point
device, is received by a computing device via the mobile device.
As to the determination of user location, in the rejection of claim 1,
the Examiner finds:
The claim(s) does/do not include additional elements that are
sufficient to amount to significantly more than the judicial
exception because the steps require no more than a generic
computer. The functions of the computer are no more than that
which the courts have recognized as well-understood, routine
and conventional such as "receiving, processing, and storing
data" and "receiving or transmitting data over a network". The
claim's use of "mobile device" and "wireless access point
device" adds no inventive concept. This concept is not
"necessarily rooted in computer technology in order to overcome
a problem specifically arising in the realm of computer
networks" (see DDR Holdings, LLC vs Hotels.com et al. (Fed.
Cir. 2014)). A computer "that receives and sends information
over a network-with no further specification-is not even arguably
inventive" (see Buysafe Inc. Vs Google Inc. (Fed. Cir. 2014)).
Additionally, the claimed functions of the generic computer
represent insignificant data-gathering steps and thus add nothing
of practical significance to the abstract idea (see Ultramercial
Inc. vs. Hutu LLC (Fed. Cir. 2014)). The additional element(s)
or combination of elements in the claim( s) other than the abstract
idea per se amount( s) to no more than mere instructions to
implement the idea on a computer, and/or recitation of generic
computer structure that serves to perform generic computer
functions that are well-understood, routine, and conventional
activities previously known to the pertinent industry.
Final Act. 3--4. The Examiner also finds the "claimed invention is merely
using received location data," and "fails to recite the performance of a
technological environment or require any computing apparatus. Thus, the
method could be performed in the human mind or using pen and paper."
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Answer 13 (emphasis omitted). Ultimately, we are persuaded that the
Examiner's above analysis is inadequate.
Rather than, on its face, being performed in the human mind, the
claim requires several specific elements related to location: a "mobile
device," an identification code assigned to a "wireless access point" located
at the physical location of interest, and receiving the code from the "mobile
device."
The Specification does not describe a "mobile device" specifically,
but describes "client devices 102 are one or more computing devices that
receive user input, as well as transmit and receive data via the network 104
to the social networking system 100." Spec. ,r 29. Examples of client
devices include "desktop computers, laptop computers, tablet computers
(pads), mobile phones, personal digital assistants (PDAs), gaming devices,
vehicles ( e.g., automobiles, boats, airplanes), or any other device including
computing functionality and data communication capabilities." Id. ,r 30.
The Specification describes the use of a wireless access point in the
following examples:
Alternatively, a user is determined 325 to have visited a physical
site if attributes included in the location information associated
with the user match at least a threshold number of attributes
included in the location information of the physical site. . . . If
location information for a user indicates that a geographic
location of the user includes a wireless access point with the
same SSID, the user is determined 325 to have visited the
physical site.
Id. ,I 56.
Generously extrapolating from the above, we find that during wireless
internet operation, a computing device may receive a number of network
identifiers, i.e., SSIDs, broadcast from wireless access point devices, such as
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WiFi routers, hotspots, printer servers, and wireless access points, and may
use one of those SSIDs to connect to one of those wireless access point
devices through a WiFi protocol. What cannot be reasonably extrapolated
from the above, and what the Examiner fails to explain adequately, however,
is whether the S SID is used, by the computing device, after connection of
the computer device to the wireless access point device associated with that
SSID, for any further communications.
Approached from a different viewpoint, we generously infer, from the
above, that an SSID is transmitted by a WiFi access point, router, or hotspot,
so that a computing device may learn of available wireless access point
devices. We further infer that the SSID would have been used, by the
computing device, to establish a networking connection with the wireless
access point device associated with a particular SSID. But, we are unable to
extrapolate, from the above, a computing device that receives, or knows of, a
wireless access point device, which then transmits the SSID for that wireless
access point device to another computing device, as claimed.
Given that understanding, we are persuaded that it is problematic that
the Examiner finds the method claim "steps require no more than a generic
computer" (Final Act. 3), and each claim "fails to recite the performance of a
technological environment or require any computing apparatus" (Answer 13
(emphasis omitted)). As an initial matter, the Examiner's second finding,
that no computing device is required, is incorrect, because the claim
explicitly recites a "mobile device" that interacts with a "wireless access
point," each of which we are persuaded is a type of computing apparatus.
As to the Examiner's first finding, we are persuaded that although it is
certainly possible the wireless access point may be a generic computer, and
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the transmittal of an SSID to another computing device may be a
conventional step in computing, the Examiner's findings on these issues are
conclusory and unsupported and, therefore, insufficient to show that the
purported facts are well-understood, routine, and conventional. See
Berkheimer v. HP Inc., 881 F.3d 1360, 1369 (Fed. Cir. 2018) ("Whether
something is well-understood, routine, and conventional to a skilled artisan
at the time of the patent is a factual determination.").
Specifically, with respect to transmitting the SSID, one reference used
by the Examiner in the obviousness rejection does describe that "[ c ]lient
device 110a may send the SSID to server 130, and receive the location of
WiFi wireless router 210 (e.g., '27 Main Street') from server 130 in
response." Wichrowska, col. 7, lines 38--40. Although this may establish it
was known that an SSID may be sent to another computing device to
determine a location, this one reference alone is insufficient to establish
whether that operation is well-understood, routine, and conventional in the
computing arts. See Berkheimer, 881 F.3d at 1369 ("Whether a particular
technology is well-understood, routine, and conventional goes beyond what
was simply known in the prior art. The mere fact that something is disclosed
in a piece of prior art, for example, does not mean it was well-understood,
routine, and conventional.").
For this reason, we are unable to sustain the rejection of claims under
35 U.S.C. § 101 as directed to abstract ideas.
Re;ection under 35 U.S.C. § 103(a)
The Appellants argue independent claims 1 and 10 together as a
group. Appeal Br. 11, 13. We select claim 1 as representative. See
37 C.F.R. § 4I.37(c)(l)(iv).
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We are not persuaded by the Appellants' argument that the cited
references fail to disclose generating a conversion metric, as claimed,
because, according to the Appellants:
Bax discloses comparing the behavior of the control group users
to the behavior of the experimental group users as to whether
they visited Store A. However, Bax does not provide any
additional details as to what the comparison comprises. Other
than making a generic statement about comparing the behavior,
Bax does not provide a concrete way of quantifying the behavior
difference between the two groups, such that the advertiser can
use the quantification to improve his advertising campaign. Bax
does not disclose that the comparison of the behavior comprises
calculating a difference between the percentage of control group
users that visited Store A and the percentage of experimental
group users that visited Store A and generating a conversion
metric based on the calculated difference.
Appeal Br. 7 (emphasis omitted); see also id. at 4--9; Reply Br. 2-3.
The Specification generally describes generating metrics, stating that:
to generate the metrics, the advertising module 240 identifies
users in the sample group that visited a physical site of the
advertiser 105 from the determined users. The advertising
module 240 additionally identifies users in the holdout group that
visited a physical site of the advertiser 105 from the determined
users. Thereafter, the number and/or percentage of users in the
sample group visiting a physical site of the advertiser 105 and
the number and/or percentage of users in the holdout group
visiting a physical site of the advertiser 105 are analyzed,
compared, and/ or contrasted.
Spec. ,r 58.
The Specification also only describes a single example of the
conversion metric, where the percentage of users that visited a location, after
receiving an advertisement, are subtracted from the percentage of users to
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visit the location after not receiving an advertisement, to infer the percentage
increase in visits caused by the advertisement, describing that:
after presentation of the advertisements, 55% of the users in the
sample group visited a store associated with an advertiser 105
while 45% of users in the holdout group visited a store of the
advertiser 105. Hence, the advertising module 240 may generate
a metric indicating that the advertisements increased user visits
to stores by 10 percentage points.
Id. ,T 59.
We, thus, broadly construe "generating a conversion metric" as any
calculation that arises from comparing the advertisement-receiving group
with the non-receiving group. We discern that an ordinary artisan,
comparing the results of the advertisement on a group that receives the
advertisement with a group that does not, would have been led to some sort
of numeric metric to represent the comparison, because that is the logical
result of a comparison of two measurements, when the effectiveness of the
experiment is desired. We discern that the ordinary artisan would, for
example, have been likely to compare the absolute number of users in each
group, or calculate a ratio between the groups to ascertain an inferred
effectiveness of the advertisement. See KSR Int'!. Co. v. Teleflex Inc.,
550 U.S. 398, 418 (2007) (In making the obviousness determination one
"can take account of the inferences and creative steps that a person of
ordinary skill in the art would employ.").
We are not persuaded the Examiner has relied only on impermissible
hindsight to arrive at the combination of references, because, according to
the Appellants:
Vengroff provides a complete solution for determining the
effectiveness of the advertisement in this way. However,
V engroff does not suggest tracking whether users that are not
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displayed the advertisement also visit the location. Therefore,
based on V engroff a person of ordinary skill in the art would not
look to take such additional steps of selecting a holdout group,
determining whether users that are not displayed the
advertisement visit the location, and generating a metric based
on the information for purposes of determining the effectiveness
of the advertisement.
Appeal Br. 12; see also Reply Br. 3-5 (asserting the same).
As to the holdout group of users that are not displayed the
advertisement, the Examiner finds, in Krishnamoorthy (Final Act. 5---6), that
using a control group "can lead to inferences and metrics regarding the
effectiveness or performance of the advertisement, such as conversion rate,
etc." Krishnamoorthy ,r 35. Accordingly, the Examiner finds that using
Krishnamoorthy' s control group comparison, in addition to Vengroff s
advertisement-receiving group, "would determine advertisement
effectiveness or performance of the advertisement." Final Act. 6. The
Examiner has, thus, provided an adequate articulated for making the
proffered combination that does not rely on the Appellants' Disclosure.
As to the generation of the metric, the Examiner finds, in Bax,
"comparing the consumer-related behavior of the experimental group to the
consumer-related behavior of the control group." Bax ,r 21. The Examiner
finds a rationale to modify the Vengroff/Krishnamoorthy system to "provide
advertisers with reports of advertisement effectiveness or impacts." Final
Act. 7-8. The Examiner has, thus, provided an adequate articulated reason
for making the proffered combination which does not rely on the Appellants'
Disclosure.
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For these reasons, we sustain the Examiner's rejection of claims 1
and 10 under 35 U.S.C. § 103(a). We also sustain the rejections of
dependent claims 2-7, 21, and 22 that were not argued separately.
DECISION
We REVERSE the rejection of claims 1-7, 10, 21, and 22 under
35 U.S.C. § 101.
We AFFIRM the rejections of claims 1-7, 10, 21, and 22 under
35 U.S.C. § 103(a).
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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