Ex Parte Glass et al

Patent Trials and Appeals Board

Jul 8, 2019

13836218 - (D) (P.T.A.B. Jul. 8, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/836,218 03/15/2013
150035 7590 07/10/2019
Pillsbury Winthrop Shaw Pittman, LLP - Oath Inc.
P.O. Box 10500
McLean, VA 22102
Alyssa Glass
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.
046836-0426749 3416
EXAMINER
ZAND, DA VOUD AMAN
ART UNIT PAPER NUMBER
2443
NOTIFICATION DATE DELIVERY MODE
07/10/2019 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):
docket_ip@pillsburylaw.com
patent-docs@oath.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ALYSSA GLASS and JEAN-MARC LANGLOIS 1
Appeal2018-004198
Application 13/83 6,218
Technology Center 2400
Before KAL YANK. DESHPANDE, CHARLES J. BOUDREAU, and
SHARON PENICK, Administrative Patent Judges.
DESHPANDE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF CASE2
This is an appeal from the Examiner's Non-Final Rejection of claims 1, 4, 6,
9, 11, 12, 14, 17, 19,20,and22. 3 Wehavejurisdictionunder35U.S.C.§6(b)(l).
We AFFIRM.
1 Appellants identify Yahoo Holdings, Inc. as the real party in interest. App. Br. 2.
2 Our Decision makes reference to Appellants' Reply Brief ("Reply Br.," filed
Mar. 12, 2018) and Appeal Brief ("App. Br.," filed Nov. 1, 2017), as well as the
Examiner's Answer ("Ans.," mailed Jan. 12, 2018) and Non-Final Office Action
("Non-Final Act.," mailed June 2, 2017).
3 Claims 2, 3, 5, 7, 8, 10, 13, 15, 16, 18, and 21 have been cancelled. App. Br. 2,
13-16 (Claims App'x).
Appeal2018-004198
Application 13/83 6,218
INVENTION
Appellants' invention relates to providing online content, specifically
personalizing online content recommendations to a user and measuring user
engagement. Spec. ,r,r 2, 12, 44.
Claims 1, 11, and 19 are independent. An understanding of the invention
can be derived from a reading of exemplary claim 1, reproduced below:
1. A method implemented on at least one machine, each of which
has at least one processor, storage, and a communication platform
connected to a network for measuring user engagement, comprising
the steps of:
detecting activities of a user with respect to a plurality pieces of
content in a content stream;
obtaining a stream depth measure of the content stream based
on the detected user activities, wherein the stream depth measure is
the maximum of:
a number of pieces of content that are presented in one
display screen to the user;
a first depth of a piece of content in the content stream,
relative to a beginning of the content stream, at which the user
explicitly interacts with the piece of content; and
a second depth of a piece of content in the content
stream, relative to the beginning of the content stream, at which the
user abandons the content stream;
generating a depth-dependent function based on the stream
depth measure and a tipping point dynamically determined based on
an intent inferred from the detected user activities including a speed
and/or an acceleration of scrolling the content stream; and
calculating a user engagement score for each of the plurality
pieces of content in the content stream based on the depth-dependent
function and a respective depth of the piece of content in the content
stream.
App. Br. 13 (Claims App'x).
2
Appeal2018-004198
Application 13/83 6,218
REJECTION ON APPEAL
The Examiner rejects claims 1, 4, 6, 9, 11, 12, 14, 17, 19, 20, and 22 under
35 U.S.C. § 101 as being directed to patent-ineligible subject matter. Non-Final
Act. 2--4.
ANALYSIS
An invention is patent-eligible if it claims a "new and useful process,
machine, manufacture, or composition of matter, or [a] new and useful
improvement thereof." 35 U.S.C. § 101. However, the Supreme Court has long
interpreted 35 U.S.C. § 101 to "contain[] an important implicit exception: Laws of
nature, natural phenomena, and abstract ideas are not patentable." Alice Corp. v.
CLS Bankint'l, 573 U.S. 208,216 (2014) (quotingAss'nfor Molecular Pathology
v. Myriad Genetics, Inc., 569 U.S. 576, 589 (2013)).
In Alice, the Supreme Court reiterated the two-step framework previously set
forth in Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 75-77
(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, 573 U.S. at 217. The first step in this analysis is to "determine
whether the claims at issue are directed to one of those patent-ineligible concepts,"
e.g., to an abstract idea. Id. Concepts determined to be abstract ideas include
certain methods of organizing human activity, such as fundamental economic
practices (id. at 219-20; Bilski v. Kappas, 561 U.S. 593, 611 (2010)); mathematical
formulas (Parker v. Flook, 437 U.S. 584, 594--95 (1978)); and mental processes
(Gottschalkv. Benson, 409 U.S. 63, 67 (1972)). Ifit is determined that the claims
are directed to a patent-ineligible concept, the second step of the analysis requires
consideration of the elements of the claims "individually and 'as an ordered
combination"' to determine whether there are additional elements that "'transform
3
Appeal2018-004198
Application 13/83 6,218
the nature of the claim' into a patent-eligible application." Alice, 573 U.S. at 217
( quoting Mayo, 566 U.S. at 78, 79). In other words, the claims must contain an
"inventive concept," or some element or combination of elements "sufficient to
ensure that the patent in practice amounts to significantly more than a patent upon
the [abstract idea] itself." Id. at 217-18 (quoting Mayo, 566 U.S. at 72-73).
The USPTO recently published revised guidance on the application of 35
U.S.C. § 101. USPTO, 2019 Revised Patent Subject Matter Eligibility Guidance,
84 Fed. Reg. 50 (January 7, 2019) ("Memorandum"). Under that guidance, we
first look to whether the claim recites:
( 1) any judicial exceptions, including certain groupings of abstract ideas
(i.e., mathematical concepts, certain methods of organizing human activity,
or mental processes) ("US PTO Step 2A, Prong 1 "); and
(2) additional elements that integrate the judicial exception into a practical
application (see MPEP § 2106.05(a}-(c), (e}-(h)) ("USPTO Step 2A, Prong
2").
Only if a claim (1) recites a judicial exception and (2) does not integrate that
exception into a practical application, do we then look to whether the claim:
(3) adds a specific limitation beyond the judicial exception that is not "well-
understood, routine, and conventional" in the field (see MPEP § 2106.05(d))
("USPTO Step 2B"); or
( 4) simply appends well-understood, routine, conventional activities
previously known to the industry, specified at a high level of generality, to
the judicial exception ("USPTO Step 2B").
See Memorandum.
Alice/Mayo Step 1 - USPTO Step 2A, Prong 1
The Examiner determines that the claims are directed to an abstract idea of
"calculating user engagement" with content in a content stream. Non-Final Act. 2,
4. According to the Examiner, all of the recited steps "may be performed
completely mentally" and "[ t ]he information required for the mental acts may be
4
Appeal2018-004198
Application 13/83 6,218
obtained via visual observation, or [by] being provided with the statistics via
reading a paper report." Id. at 3; see also Ans. 4 ("Examiner has treated analyzing
information by steps people go through in their minds, or by mathematical
algorithms, without more, as essentially mental processes within the abstract-idea
category."). The Examiner likens the claims to those found to be patent-ineligible
in Electric Power Group, LLC v. Alstom S.A., 830 F.3d 1350 (Fed. Cir. 2016),
"which," the Examiner writes, "involved receiving and analyzing data streams and
drawing conclusions from the analysis." Non-Final Act. 3; Ans. 3--4, 6.
Appellants argue that the claims are not directed to an abstract idea because
they include a physical measurement -measurement of a user's physical
interactions with a computer such as swiping or scrolling. App. Br. 6, 8; Reply Br.
2. According to Appellants, their claims are similar to those found to be patent-
eligible in Diamond v. Diehr, 450 U.S. 175 (1981) and Thales Visionix Inc. v.
United States, 850 F.3d 1343 (Fed. Cir. 2017). App. Br. 8-9; Reply Br. 4--5.
Appellants further argue that "the 'speed and/or acceleration of scrolling' recited in
the claim[ s] could not be measured and computed by a human without the aid of a
machine." Reply Br. 3; see also App. Br. 8-9.
The Examiner responds that the measurements for calculating user
engagement are "akin to market research done by companies to determine the
effectiveness of ad placement in such things as magazines, newspapers, tv
commercials, etc." and that the claims "merely apply the well-known idea of
measuring user engagement of content in a content stream (tv, magazine, etc.) to
the particular technological environment of the Internet." Ans. 3, 8.
Under USPTO Step 2A, Prong 1, we agree with the Examiner that the claims
recite a judicial exception, i.e., an abstract idea. In particular, we agree with the
Examiner that the claims recite mental processes of calculating user engagement
5
Appeal2018-004198
Application 13/83 6,218
with content in a content stream. See Non-Final Act. 2--4.
For example, claim 1 recites "detecting activities of a user with respect to a
plurality of pieces of content in a content stream." Under its broadest reasonable
interpretation, this "detecting" limitation covers performance of the limitation in
the mind, but for the recitation of generic components. That is, other than
recitation of a "machine" having "at least one processor, storage, and a
communication platform connected to a network for measuring user engagement"
on which the recited steps are performed, nothing in the claim precludes the
"detecting" step from practically being performed in the human mind. For
example, apart from the "machine," "processor," "storage," and "communication
platform" language, the claim encompasses mentally observing or detecting user
behavior, e.g., observing as the user interacts with content, abandons the content
stream, or scrolls the content stream. See Spec. ,r 7 6. Thus, this limitation recites a
mental process.
Claim 1 further recites:
obtaining a stream depth measure of the content stream based on
the detected user activities, wherein the stream depth measure is the
maximum of:
a number of pieces of content that are presented in one
display screen to the user;
a first depth of a piece of content in the content stream,
relative to a beginning of the content stream, at which the user
explicitly interacts with the piece of content; and
a second depth of a piece of content in the content
stream, relative to the beginning of the content stream, at which the
user abandons the content stream[.]
These limitations on "obtaining a stream depth measure of the content
stream," under their broadest reasonable interpretation, cover performance of the
6
Appeal2018-004198
Application 13/83 6,218
limitations in the mind, but for the recitation of generic components. For example,
aside from the recitation of a "machine," "processor," "storage," and
"communication platform," the claim encompasses mentally obtaining a stream
depth measure by mentally observing and determining the maximum of the
following: 1) the number of content items presented on one display screen, 2) the
depth or position of a content item with which the user interacts, and 3) the depth
or position of a content item at which the user abandons the content stream. See
Spec. ,r,r 122-123. Thus, viewed together, these limitations recite a mental
process.
Claim 1 further recites "generating a depth-dependent function based on the
stream depth measure and a tipping point dynamically determined based on an
intent inferred from the detected user activities including a speed and/or an
acceleration of scrolling the content stream." This limitation on "generating a
depth-dependent function," under its broadest reasonable interpretation, covers
performance of the limitation in the mind, but for the recitation of generic
components. For example, apart from the recitation of a "machine," "processor,"
"storage," and "communication platform," the claim encompasses mentally
inferring the user's intent from the observed user activities including a speed
and/or acceleration of the user's scrolling, mentally determining a "tipping point"
based on the user's intent inferred from the user activities, and mentally and/or
manually considering the stream depth measure and tipping point to generate or
calculate a depth-dependent function. See Spec. ,r,r 124, 127-128. Thus, this
limitation recites a mental process. We disagree with Appellants' argument that
activities of the user, such as the speed or acceleration of scrolling, cannot be
detected mentally, without a machine. See App. Br. 8-9; Reply Br. 3. One could
mentally observe or detect user behavior by seeing and observing as the user
7
Appeal2018-004198
Application 13/83 6,218
interacts with content (e.g., clicking, sharing, hovering, etc.), abandons the content
stream, or scrolls (e.g., slowly or quickly) the content stream. See Spec. ,r 76
Finally, claim 1 recites "calculating a user engagement score for each of the
plurality of pieces of content in the content stream based on the depth-dependent
function and a respective depth of the piece of content in the content stream."
Under its broadest reasonable interpretation, the "calculating" limitation covers
performance of the limitation in the mind, but for the recitation of generic
components. For example, apart from the recitation of a "machine," "processor,"
"storage," and "communication platform," the claim encompasses mentally or
manually calculating a user engagement score for each piece of content in the
manner claimed. Thus, this limitation recites a mental process.
Appellants argue that the claims are not directed to an abstract idea because,
"[l]ike the claims in Diehr and Thales Visionix, the claims at issue here are directed
to a method and system for measuring a physical thing." App. Br. 8; see also id. at
9; Reply Br. 4--5. We are not persuaded that the claims become patent-eligible
merely by reciting a physical measurement, if in fact the claims were read to
require such a measurement. The claims in Diehr were found to be patent-eligible,
despite containing a mathematical formula, because they involved physical
transformation of uncured synthetic rubber into a different state and solved an
industry problem of "undercuring" and "overcuring," not because they were
directed to a physical measurement of rubber temperature. See 450 U.S. at 1052,
1060-61; see also Memorandum at 55; MPEP § 2106.05(c). And in Thales
Visionix, our reviewing court held that the claims were not directed to an abstract
idea because, like the claims in Diehr, they improved upon difficulties in making
accurate calculations in the prior art and "result[ ed] in a system that reduces
8
Appeal2018-004198
Application 13/83 6,218
errors"-not because they were directed to measuring a physical object's motion.
Thales Visionix Inc. v. United States, 850 F.3d at 1348.
Thus, each step in claim 1 recites a mental process and, thus, an abstract
idea.
Alice/Mayo Step 1 - USPTO Step 2A, Prong 2
Under USPTO Step 2A, Prong 2, we determine that the claims do not
integrate the abstract idea into a practical application. For example, claim 1 recites
that the claimed method is "implemented on at least one machine, each of which
has at least one processor, storage, and a communication platform connected to a
network for measuring user engagement." The additional "machine," "processor,"
"storage," and "communication platform" elements are recited at a high level of
generality, i.e., as generic components that perform generic computer functions of
processing data ( e.g., detecting, measuring, generating a function, and calculating).
Thus, they are generic limitations that merely apply the abstract idea using generic
components. See Memorandum at 55; MPEP § 2106.05(±). They do not reflect an
improvement in the functioning of a computer, or to any other technology or
technical field, nor do they include any particular machine that is integral to the
claim. See Memorandum at 55; MPEP § 2106.05(a}-(b). Accordingly, these
additional limitations do not integrate the abstract idea into a practical application
because they do not impose any meaningful limits on practicing the abstract idea.
We are also not persuaded by Appellant's argument that the claims require a
"user activity detection module" (App. Br. 9; see independent claim 11) because
the recited "user activity detection module" is merely "implemented on the at least
one processor." As discussed above, the recited "processor" is a generic computer
component. The mere nominal recitation of generic computer components does
not take the claim limitation out of the mental processes category of abstract ideas.
9
Appeal2018-004198
Application 13/83 6,218
See, e.g., Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d 1307, 1318
(Fed. Cir. 2016) ("[W]ith the exception of generic computer-implemented steps,
there is nothing in the claims themselves that foreclose them from being performed
by a human, mentally or with pen and paper."); see also Memorandum at 52 n.14.
Appellants characterize the claims as "recit[ing] specific operations that
describe how the improvement i.e., a technical solution to a problem of
determining user engagement in a piece of content is achieved." Reply Br. 5. We
disagree that the claims reflect an improvement in a technical field. See
Memorandum at 55; MPEP § 2106.05(a). Rather, we agree with the Examiner that
gauging user engagement with content in a content stream is a well-established
abstract idea not limited to the context of computers or the Internet ( e.g., it has
long been applicable to magazines, newspapers, TV, etc.). See Ans. 3, 8.
Moreover, while the claims result in the calculation of a "user engagement score,"
they do not recite that it is applied in any meaningful way so as to integrate the
abstract idea into a practical application. See Memorandum at 55; MPEP
§ 2106.05(e).
Accordingly, we agree with the Examiner that the claims are directed to an
abstract idea that is not integrated into a practical application.
Alice/Mayo Step 2
The Examiner finds the claims to contain "no additional elements beyond
the abstract idea, and therefore nothing even potentially significantly more." Non-
Final Act. 3.
Appellants argue that the Examiner errs in failing to consider any inventive
concepts within those claim limitations deemed to be abstract. App. Br. 6, 10.
According to Appellants, the "stream depth measure" limitations and
corresponding "stream depth calculation unit" limitations (see independent claim
10
Appeal2018-004198
Application 13/83 6,218
11) present an inventive concept, transforming the claims into patent-eligible
subject matter because they describe an "unconventional way of tracking user
engagement." Id. at 6; see also Reply Br. 3--4. Specifically, Appellants argue that
"[t]he details of how the 'stream depth measure' is calculated," along with "the
tipping and abandonment points," are an unconventional way of "measuring how
much a person like[ s] a given piece of content" and that "the Office has recognized
the claims as both novel and unobvious, even in view of a five reference
combination of prior art." App. Br. 10 (citing Non-Final Act. 4).
The Examiner replies that the "stream depth measure" limitations are not
significantly more than the abstract idea because they are "a necessary part of the
abstract idea of collecting content stream information, analyzing it, and displaying
certain results of the collection and analysis." Ans. 7. The Examiner further
replies that novelty is irrelevant in determining subject matter eligibility under 35
U.S.C. § 101. Id. at 5, 7 (citing Diehr, 450 U.S. at 188-89).
Under USPTO Step 2B, we discern no specific limitation beyond the judicial
exception, i.e., the abstract idea, that is not well-understood, routine, and
conventional in the field. Although Appellants argue that the manner in which the
"stream depth measure" is calculated is unconventional (see App. Br. 6, 10), we
already determined supra under USPTO Step 2A, Prong 1 that those limitations on
how to "obtain[] a stream depth measure of the content stream," and how to
"calculate[e] a user engagement score," recite mental processes. Mental processes,
as well as "new and presumably better method[s] of calculating," themselves are
not patentable inventions. Benson, 409 U.S. at 67; Flook, 437 U.S. at 594. As the
Examiner points out (Ans. 5, 7), the novelty of the claimed steps does not affect
our determination that they encompass a patent-ineligible abstract idea. See, e.g.,
Diehr, 450 U.S. at 176, 188-89.
11
Appeal2018-004198
Application 13/83 6,218
Appellants further argue that the Examiner failed to consider the "at least
one machine," "user activity detection module," and "user engagement score
calculation unit" limitations as additional elements representing inventive concepts
beyond the abstract idea. App. Br. 10-11.
As discussed supra under USPTO Step 2A, Prong 2, the recited "machine"
is a generic limitation that merely applies the abstract idea using a generic
component. Similarly, the recited "user activity detection module" and "user
engagement score calculation unit" (see independent claim 11) are generic
limitations that do not impose any meaningful limits on practicing the abstract
idea. See Spec. ,r,r 152 ( disclosing that "hardware elements, operating systems, and
programming languages ... conventional in nature" may be used to "implement
the processing essentially as described herein"), 153 ( disclosing that either a
general-purpose or special-purpose "computer 3000 can be used to implement any
components of the user engagement measurement architecture as described
herein").
Accordingly, considering the claim elements individually and as an ordered
combination, we agree with the Examiner that there are no additional elements
significantly more than the abstract idea to transform the nature of the claims into
patent-eligible subject matter.
For the foregoing reasons, we are not persuaded the Examiner erred in
rejecting claims 1, 4, 6, 9, 11, 12, 14, 17, 19, 20, and 22 under 35 U.S.C. § 101.
12
Appeal2018-004198
Application 13/83 6,218
DECISION
We affirm the Examiner's rejection of claims 1, 4, 6, 9, 11, 12, 14, 17, 19,
20, and 22 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
13