Ex Parte Gnanamani et alDownload PDFPatent Trial and Appeal BoardNov 30, 201812979769 (P.T.A.B. Nov. 30, 2018) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. 12/979,769 149109 7590 EGL/Excalibur P.O. Box 10395 Chicago, IL 60610 FILING DATE FIRST NAMED INVENTOR 12/28/2010 Arun Kumar Gnanamani 12/03/2018 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. 12729-886 (Y06914USOO) 3587 EXAMINER VAN BRAMER, JOHN W ART UNIT PAPER NUMBER 3621 MAIL DATE DELIVERY MODE 12/03/2018 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte ARUN KUMAR GNANAMANI and ANKUR K. GUPTA Appeal2017-002395 Application 12/979,769 1 Technology Center 3600 Before BRUCE T. WIEDER, AMEE A. SHAH, and ROBERT J. SILVERMAN, Administrative Patent Judges. SILVERMAN, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE The Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's decision rejecting claims 10-29. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 The Appellants identify YAHOO! INC. as the real party in interest. Appeal Br. 2. Appeal2017-002395 Application 12/979,769 ILLUSTRATIVE CLAIM 10. A search system for determining a query threshold value, the search system comprising: a non-transitory computer-readable storage medium storing a set of instructions for determining the query threshold value; a processor, in communication with the non-transitory computer-readable storage medium, the processor configured to execute the set of instructions stored in the non-transitory computer-readable storage medium and configured to: receive a query; determine a query attribute value for each of two or more query attributes for the query, wherein the two or more query attributes include a query navigationability attribute; generate a map of previous query attribute values to previous quality score threshold values for each of the two or more query attributes wherein the previous query attribute values are derived from previously submitted quenes; update the map with the query attribute value for each of the two or more query attributes; and calculate the query threshold value for the query based on the updated map, wherein the query threshold value specifies a minimum quality score for an advertisement to be selected in response to the receiving of the query. REJECTION Claims 10-29 are rejected under 35 U.S.C. § 101 as ineligible subject matter. 2 Appeal2017-002395 Application 12/979,769 ANALYSIS Under 35 U.S.C. § 101, an invention is patent-eligible if it claims a "new and useful process, machine, manufacture, or composition of matter." 35 U.S.C. § 101. Yet, subject matter belonging to anyofthe statutory categories may, nevertheless, be ineligible for patenting. The Supreme Court has interpreted § 101 to exclude laws of nature, natural phenomena, and abstract ideas, because they are regarded as the basic tools of scientific and technological work, such that including them within the domain of patent protection would risk inhibiting future innovation premised upon them. Ass 'nfor Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 589 (2013). Of course, "[a]t some level, 'all inventions ... embody, use, reflect, rest upon, or apply"' these basic tools of scientific and technological work. Alice Corp. v. CLS Bank Int 'l, 134 S. Ct. 2347, 2354 (2014) (internal citation omitted). Accordingly, evaluating ineligible subject matter, under this judicial exclusion, involves a two-step framework for "distinguish[ing] between patents that claim the buildin[g] block[ s] of human ingenuity and those that integrate the building blocks into something more, thereby transform[ing] them into a patent-eligible invention." Id. (internal quotation marks and citation omitted). The first step determines whether the claim is directed to judicially excluded subject matter (such as a so-called "abstract idea"); the second step determines whether there are any "additional elements" recited in the claim that ( either individually or as an "ordered combination") amount to "significantly more" than the identified judicially excepted subject matter itself. Id. at 2355. 3 Appeal2017-002395 Application 12/979,769 According to the Examiner, the claims in the present Appeal fall into the judicial exclusion, because - as to the first step of the Alice framework - these claims are directed to the abstract idea of "using search queries to select advertisements." Answer 4. As to the second Alice step, the Examiner states: Considered as a whole, the recited steps merely organize the abstract idea into a stepwise description of a process used to perform the abstract idea and amount to no more than using search queries to select advertisements. The claim merely instructs the practitioner to implement the concept of using search queries to select advertisements with routine, conventional activity specified at a high level of generality in a particular technological environment. When view[ ed] either individual[ly] or as an order[ ed] combination, the claim as a whole does not add significantly more to the abstract idea of using search queries to select advertisements. Id. at 11. In addition to disputing the Examiner's determination that the claims are directed to an abstract idea under the first Alice step (see Appeal Br. 5- 10, Reply Br. 3-8), the Appellants argue that the following limitations of independent claim 10, for example, amount to significantly more than the identified abstract idea: determine a query attribute value for each of two or more query attributes for the query, wherein the two or more query attributes include a query navigationability attribute; generate a map of previous query attribute values to previous quality score threshold values for each of the two or more query attributes wherein the previous query attribute values are derived from previously submitted quenes; 4 Appeal2017-002395 Application 12/979,769 update the map with the query attribute value for each of the two or more query attributes; and calculate the query threshold value for the query based on the updated map, wherein the query threshold value specifies a minimum quality score for an advertisement to be selected in response to the receiving of the query. See Appeal Br. 11. The second Alice step considers whether the claim limitations "involve more than performance of 'well-understood, routine, [and] conventional activities previously known to the industry."' Content Extraction & Transmission LLC v. Wells Fargo Bank, Nat'! Ass 'n, 776 F.3d 1343, 1347--48 (Fed. Cir. 2014) (quoting Alice, 134 S. Ct. at 2359). Notably, "[t]he question of whether a claim element or combination of elements is well-understood, routine and conventional to a skilled artisan in the relevant field is a question of fact." Berkheimer v. HP Inc., 881 F.3d 1360, 1368 (Fed. Cir. 2018). Yet, the Examiner does not adequately articulate the basis for determining why the claimed implementation of at least the "query navigationability attribute," as set forth in exemplary claim 10, should be regarded as well-understood, routine, and conventional. See Answer 11, 14. Although the Examiner generally addresses the functions of determining, generating, and updating, the Examiner does not address the Appellants' contention (see Appeal Br. 11) that the implementation of the query navigationability attribute in these steps is not well-understood, routine, and conventional (see Answer 4--14). Therefore, we are persuaded that the Examiner has not adequately explained why claim 10 fails to recite any 5 Appeal2017-002395 Application 12/979,769 limitation( s) amounting to "significantly more" than the identified abstract idea itself. The foregoing analysis applies equally to the other independent claims in this Appeal ( claims 19 and 21 ). Accordingly, we do not sustain the rejection of claims 10-29 under 35 U.S.C. § 101. DECISION We REVERSE the Examiner's decision rejecting claims 10-29 under 35 U.S.C. § 101. REVERSED 6 Copy with citationCopy as parenthetical citation