Ex Parte Carvis et al

Patent Trial and Appeal Board

Dec 1, 2017

12982403 (P.T.A.B. Dec. 1, 2017)

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.
12/982,403 12/30/2010 Cristen Carvis 10-403-US 8302
128144 7590
Rimon, P.C.
One Embarcadero Center
Suite 400
San Francisco, CA 94111
12/05/2017 EXAMINER
REINHARDT, RICHARD G
ART UNIT PAPER NUMBER
3682
NOTIFICATION DATE DELIVERY MODE
12/05/2017 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):
u spto @ rimonlaw .com
eofficeaction @ appcoll.com
docketing.rimonlaw@clarivate.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CRISTEN CARVIS and CLIFFORD LYON
Appeal 2016-005620
Application 12/982,403
Technology Center 3600
Before JOHN A. EVANS, JOYCE CRAIG, and AARON W. MOORE,
Administrative Patent Judges.
CRAIG, Administrative Patent Judge.
DECISION ON APPEAL
Appellants1 appeal under 35 U.S.C. § 134(a) from a Non-Final
Rejection of claims 1—8, 10-13, 15, 17, 18, and 20—24, which are all of the
claims pending in this application. We have jurisdiction under 35 U.S.C.
§ 6(b).
We affirm.
1 According to Appellants, the real party in interest is CBS Interactive Inc.
App. Br. 1.
Appeal 2016-005620
Application 12/982,403
INVENTION
Appellants’ invention relates to recommending assets based on
recently viewed assets. Abstract. Claim 1 reads as follows:
1. A method providing recommendations to a user by one
or more computing devices, the method comprising:
determining, by at least one of the one or more computing
devices, a set of recently viewed assets having a set of neighbor
assets associated with it, wherein each neighbor asset is an asset
which is associated with a corresponding recently viewed asset;
generating, by at least one of the one or more computing
devices, a plurality of subsets from the set recently viewed assets,
wherein each subset in the plurality of subsets includes a plurality
of recently viewed assets and has a corresponding neighbor
subset comprising a plurality of neighbor assets associated with
the plurality of recently viewed assets in the subset;
determining, by at least one of the one or more computing
devices, a score for each subset in the plurality of subsets to
generate a plurality of scores, wherein the score for each subset
is based on a strength of the association between the plurality of
recently viewed assets in that subset and the plurality of neighbor
assets in the corresponding neighbor subset;
determining, by at least one of the one or more computing
devices, the subset with the highest score;
generating, by at least one of the one or more computing
devices, one or more asset recommendations from the plurality
of neighbor assets in the corresponding neighbor subset of the
subset with the highest score; and
transmitting, by at least one of the one or more computing
devices, the one or more asset recommendations.
REJECTION
Claims 1—8, 10-13, 15, 17, 18, and 20-24 stand rejected under
35U.S.C. § 101.
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ANALYSIS
We have reviewed the rejection of claims 1—8, 10-13, 15, 17, 18, and
20—24 in light of Appellants’ arguments that the Examiner erred. We have
considered in this decision only those arguments Appellants actually raised
in the Briefs. Any other arguments which Appellants could have made but
chose not to make in the Briefs are deemed to be waived. See 37 C.F.R.
§ 41.37(c)(l)(iv).
In concluding the pending claims are directed to patent ineligible
subject matter under 35 U.S.C. § 101, the Examiner found independent
claim 1 is directed to an abstract idea because “determining a set of recently
viewed assets, scoring related assets, and determining which related assets to
recommend is a fundamental economic practice and a method of organizing
human activities.” Non-Final Act. 3. The Examiner further found there is
no improvement to another technology or technical field, no improvements
to the functioning of the computer itself, and no meaningful limitations
beyond generally linking the use of an abstract idea to a particular technical
environment. Id. at 4.
Appellants contend the Examiner erred because the claims are not
directed to the alleged abstract idea. App. Br. 4—8. Appellants further
contend that, even if the claims are deemed to be directed to the alleged
abstract idea, the claims include elements and combinations of elements
such that the claims are directed to “significantly more” than the alleged
abstract idea itself. Id. at 4, 8—13.
We do not find Appellants’ arguments persuasive. Instead, we find
the Examiner has provided a comprehensive response to Appellants’
arguments supported by a preponderance of evidence. Ans. 4—13. As such,
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Application 12/982,403
we adopt the Examiner’s findings and explanations provided in the Final
Action and Answer. At the outset, we note the Supreme Court has long held
that “[l]aws of nature, natural phenomena, and abstract ideas are not
patentable.” Alice Corp. Pty. Ltd. v. CLSBankInt’l, 134 S. Ct. 2347, 2354
(2014) (quoting Assoc, for Molecular Pathology v. Myriad Genetics, Inc.,
133 S. Ct. 2107, 2116 (2013)). The “abstract ideas” category embodies the
longstanding rule that an idea, by itself, is not patentable. Alice, 134 S. Ct.
at 2355 (quoting Gottschalkv. Benson, 409 U.S. 63, 67 (1972)).
In Alice, the Supreme Court sets forth an analytical “framework for
distinguishing patents that claim laws of nature, natural phenomena, and
abstract ideas from those that claim patent-eligible applications of those
concepts.” Id. at 2355 (citing Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 132 S. Ct. 1289, 1296—97 (2012)). The first step in the analysis
is to “determine whether the claims at issue are directed to one of those
patent-ineligible concepts,” such as an abstract idea. Id. If the claims are
directed to a patent-ineligible concept, the second step in the analysis is to
consider the elements of the claims “individually and ‘as an ordered
combination”’ to determine whether there are additional elements that
“‘transform the nature of the claim’ into a patent-eligible application.” Id.
(quoting Mayo, 132 S. Ct. at 1298, 1297). In other words, the second step is
to “search for an ‘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.
(brackets in original) (quoting Mayo, 132 S. Ct. at 1294).
Turning to the first step of the Alice inquiry, we agree with the
Examiner that Appellants’ method claim 1 is directed generally to
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Appeal 2016-005620
Application 12/982,403
determining a set of recently viewed assets, scoring related assets, and
determining which assets to recommend, which is an abstract idea of
organizing human activities. See Non-Final Act. 3. All the steps recited in
claim 1, including, for example: (i) “determining ... a set of recently viewed
assets . . .,” (ii) “generating a plurality of subsets from the set. . .,” (iii)
“determining ... a score for each subset. . .,” (iv) “determining . . . the
subset with the highest score,” (v) “generating . . . one or more asset
recommendations . . . .,” and (vi) “transmitting . . . the one or more asset
recommendations” are directed to presenting personalized information, a
fundamental economic and conventional business practice. Further, the
steps recited in claim 1 involve nothing more than collecting, normalizing,
analyzing, and presenting data. In this regard, the claims are similar to the
claims that the Federal Circuit determined were patent ineligible in Electric
Power Grp. LLC v. Alstom, 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”), OIP Tech.,
Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1362—63 (Fed. Cir. 2015) (offer-
based price optimization), and Intellectual Ventures I LLC v. Capital One
Bank (USA), 792 F.3d 1363, 1370 (Fed. Cir. 2015) (tailoring information
presented to a user based on particular information). Here, claim 1 involves
nothing more than determining which assets to recommend by obtaining and
analyzing information, without any particular inventive technology—an
abstract idea. See Elec. Power Grp., 830 F.3d at 1354.
Appellants argue that “generally determining a set of recently viewed
assets, scoring related assets, and determining which related assets to
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Application 12/982,403
recommend” is not a fundamental economic practice.2 App. Br. 6.
Appellants, however, offer insufficient persuasive argument or objective
evidence to persuade us the Examiner erred.
We are also unpersuaded by Appellants’ argument that the claims do
not preempt every application of some abstract idea and are, therefore,
patentable. See App. Br. 6; Reply Br. 6. Lack of preemption does not make
the claims any less abstract. See buySAFE, Inc. v. Google, Inc., 765 F.3d
1350, 1355 (Fed. Cir. 2014) (collecting cases); Accenture Glob. Servs.,
GmbHv. Guidewire Software, Inc., 728 F.3d 1336, 1345 (Fed. Cir. 2013);
Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir.
2015) (“While preemption may signal patent ineligible subject matter, the
absence of complete preemption does not demonstrate patent eligibility”).
Appellants’ argument that the claims recite concrete steps is similarly
unpersuasive. See App. Br. 7—8. We agree with the Examiner that claim 1
is not concrete. See Ans. 8—9. Even ignoring the advertising-related
features recited in the claims, the cited limitations themselves constitute an
abstract idea, as they are nothing more than the gathering and analyzing of
information. See Elec. Power Grp., 830 F.3d at 1354.
Turning to the second step of the Alice inquiry, we find nothing in
claim 1 that adds anything “significantly more” to transform the abstract
concept of determining which recently viewed assets to recommend into a
patent-eligible application. Alice, 134 S. Ct. at 2357.
2 Nowhere did Appellants argue that the Examiner erred in finding that
“generally determining a set of recently viewed assets, scoring related assets,
and determining which related assets to recommend” is directed to “a
method of organizing human activities.” See Non-Final Act. 3. Arguments
not made are waived. See 37 C.F.R. §§ 41.37(c)(l)(iv), 41.39(a)(1).
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Appellants argue that the “determining” and “generating” steps recited
in claim 1 are individually inventive. App. Br. 9. In particular, Appellants
argue that “given multiple subsets of assets, each subset having a
corresponding neighbor subset of assets, the present claims recite generating
a score for each subset which quantifies the strength of association between
each subset and its neighbor subset,” which is not well-understood, routine
and conventional in the field. Id. The identified steps, however, do not
claim a particular way of programming or designing software to create the
recited asset recommendation. Essentially, claim 1 is directed to certain
functionality—the ability to recommend an asset from certain data. The
claims are not directed to a specific improvement in the way computers
operate. See id. None of Appellants’ arguments contend that some
inventive concept arises from the ordered combination of these steps, and
any such contention would be unpersuasive given that they are ordinary
steps in data analysis and are recited in an ordinary order. Thus, we do not
agree with Appellants that the recited claim elements improve the
functioning of the computer itself. See id. Claim 1 recites conventional
computer operation, whether by a single computer or multiple computers.
For these reasons, we agree with the Examiner that the invention of
claim 1 is unlike that in DDR Holdings. See Ans. 12. No technological
advance is evident in the present invention. Unlike the situation in DDR
Holdings, Appellants do not identity any problem particular to computer
networks and/or the Internet that claim 1 allegedly overcomes. To the
contrary, rather than addressing a technical problem, the method of claim 1
is used to solve the business problem of “determin[ing] which assets in the
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previously viewed assets have the strongest association with related assets,”
and providing a “guide” asset for recommendation. See App. Br. 11.
For these reasons, we are not persuaded the Examiner erred in finding
that claim 1 is directed to patent-ineligible subject matter under 35 U.S.C.
§ 101. Accordingly, we sustain the Examiner’s 35 U.S.C. § 101 rejection of
representative claim 1, as well as the 35 U.S.C. § 101 rejection of grouped
claims 2, 5—8, 10—13, 15, 17, 18, and 20, not argued separately. See
37C.F.R. §41.37(c)(l)(iv).
With regard to dependent claims 3, 4, and 21—24, Appellants argue
that the claims effect a transformation of a particular article to a different
state or thing, which adds “significantly more” to the claims. App. Br. 12—
13. We disagree. As the Examiner pointed out, the mere manipulation or
reorganization of data is insufficient to transform an abstract idea into a
patent eligible application. See Alice, 134 S. Ct. at 2357; see also
CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1375 (Fed. Cir.
2011) (“[t]he mere manipulation or reorganization of data . . . does not
satisfy the transformation prong”).
For these reasons, we are not persuaded the Examiner erred in finding
that claims 3, 4, and 21—24 are directed to patent-ineligible subject matter
under 35 U.S.C. § 101. Accordingly, we sustain the Examiner’s 35 U.S.C.
§101 rejection of claims 3, 4, and 21—24.
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DECISION
The decision of the Examiner to reject claims 1—8, 10-13, 15, 17, 18,
and 20—24 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). See
37 C.F.R. § 41.50(f).
AFFIRMED
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