Ex Parte GOLDBAND et al

Patent Trial and Appeal Board

May 21, 2018

13153376 (P.T.A.B. May. 21, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/153,376 06/03/2011
128144 7590
Rimon, P.C.
One Embarcadero Center
Suite 400
San Francisco, CA 94111
05/23/2018
FIRST NAMED INVENTOR
Adam GOLDBAND
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.
17-50009-US 8880
EXAMINER
SWEARINGEN, JEFFREY R
ART UNIT PAPER NUMBER
2445
NOTIFICATION DATE DELIVERY MODE
05/23/2018 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):
uspto@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 ADAM GOLDBAND, ANDREW SHIREY,
and ADAM HIATT
Appeal2018-000382
Application 13/153,376 1
Technology Center 2400
Before JASON V. MORGAN, ERIC B. CHEN, and JON M. JURGOV AN,
Administrative Patent Judges.
CHEN, Administrative Patent Judge.
DECISION ON APPEAL
1 The real party in interest is CBS Interactive, Inc. (App. Br. 2.)
Appeal2018-000382
Application 13/153,376
This is an appeal under 35 U.S.C. § I34(a) from the final rejection of
claims 1, 2, 4--8, 10-14, and 16-18. Claims 3, 9, and 15 have been
cancelled. We have jurisdiction under 35 U.S.C. § 6(b ). We affirm.
STATEMENT OF THE CASE
Appellants' invention relates to receiving connections between assets
from external sources and using such connections for connecting assets from
external sources in an internal graph. (Spec. ,r 12.)
Claim 1 is exemplary:
1. A system for organizing asset data, the system
compnsmg:
a database storing asset data items in an ontological index
defining relationships between individual asset data items, wherein
the relationships are defined based on metadata associated with each
asset data item, and
wherein each asset data item represents an item comprising a
product, a service, an article, video content, a website, user generated
content, or an advertisement; and
one or more processors to:
analyze one or more social media platforms to identify a
user review corresponding to an individual item not represented
by an asset data item in the ontological index;
determine, based on the user review of the individual
item, one or more correlative relationships between the
individual item and the asset data items in the ontological
index; and
generate a new asset data item representing the individual
item to be integrated into the ontological index, wherein
generating the new asset data item includes incorporating
metadata for the new asset item based on the determined
correlative relationships.
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Application 13/153,376
Claims 1, 2, 4--8, 10-14, and 16-18 stand rejected under 35 U.S.C.
§ 101 as directed to non-statutory subject matter.
RELATED APPEAL
This appeal is related to Appeal No. 2015-003770, entered July 19,
2016, in which we reversed the Examiner's decision to reject claims 1, 2, 4--
8, 10-14, and 16-18 under 35 U.S.C. § 112 and 35 U.S.C. § 103(a).
ANALYSIS
We are unpersuaded by Appellants' arguments (App. Br. 4--6) that
independent claims 1, 9, and 17 comply with 35 U.S.C. § 101 as statutory
subject matter.
The Examiner found that "the claims are directed towards the creation
of data items" which "is an idea in and of itself, and thus, the claims include
an abstract idea." (Final Act. 4.) In particular, the Examiner found that
"[t]hese steps are analogous to ... 'organizing information through
mathematical correlations' (Digitech Image Techs. LLC ... )." (Id. at 6.)
Moreover, the Examiner found that
[ t ]he claim( s) do not include limitations that are "significantly
more" than the abstract idea because the claims do not include an
improvement to another technology or technical field, an
improvement to the functioning of the computer itself, or
meaningful limitations beyond generally linking the use of an
abstract idea to a particular technological environment.
(Id. at 4.) We agree with the Examiner.
A patent may be obtained for "any new and useful process, machine,
manufacture, or composition of matter, or any new and useful improvement
thereof." 35 U.S.C. § 101. The Supreme Court has held that this "provision
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contains an important implicit exception: [l]aws of nature, natural
phenomena, and abstract ideas are not patentable." Alice Corp. Pty. Ltd. v.
CLS Bankint'l, 134 S. Ct. 2347, 2354 (2014); Gottschalkv. Benson, 409
U.S. 63, 67 (1972) ("Phenomena of nature, though just discovered, mental
processes, and abstract intellectual concepts are not patentable, as they are
the basic tools of scientific and technological work"). Notwithstanding that
a law of nature or an abstract idea, by itself, is not patentable, the application
of these concepts may be deserving of patent protection. Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 71-72 (2012).
In Mayo, the Court stated that "to transform an unpatentable law of nature
into a patent-eligible application of such a law, one must do more than
simply state the law of nature while adding the words 'apply it."' Mayo, 566
U.S. at 72 (internal citation omitted).
In Alice, the Supreme Court reaffirmed the framework set forth
previously in Mayo "for distinguishing patents that claim laws of nature,
natural phenomena, and abstract ideas from those that claim patent-eligible
applications of these concepts." Alice, 134 S. Ct. at 2355. The first step in
the analysis is to "determine whether the claims at issue are directed to one
of those patent-ineligible concepts." Id. If the claims are directed to a
patent-ineligible concept, then 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, 566 U.S.
at 79, 78). 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
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upon the [ineligible concept] itself."' Id. (brackets in original) ( quoting
Mayo, 566 U.S. at 72-73). "A claim that recites an abstract idea must
include 'additional features' to ensure 'that the [claim] is more than a
drafting effort designed to monopolize the [abstract idea]."' Id. at 2357
(brackets in original) (quoting Mayo, 566 U.S. at 77-78). The prohibition
against patenting an abstract idea "cannot be circumvented by attempting to
limit the use of the formula to a particular technological environment or
adding insignificant post-solution activity." Bilski v. Kappas, 561 U.S. 593,
610-11 (2010) (internal citation and quotation marks omitted). The Court in
Alice noted that "' [ s ]imply appending conventional steps, specified at a high
level of generality,' was not 'enough' [in Mayo] to supply an 'inventive
concept."' Alice, 134 S. Ct. at 2357 (quoting Mayo, 566 U.S. at 82-83, 77-
78, 72-73).
Step one: Are the claims at issue
directed to a patent-ineligible concept?
Claim 1 is a system claim, which includes "one or more processors
to:" (i) "analyze one or more social media platforms to identify a user
review corresponding to an individual item not represented by an asset data
item in the ontological index" and (iii) "generate a new asset data item
representing the individual item to be integrated into the ontological index,
wherein generating the new asset data item includes incorporating metadata
for the new asset item based on the determined correlative relationships,"
which incorporates by reference the limitation (ii) "determine, based on the
user review of the individual item, one or more correlative relationships
between the individual item and the asset data items in the ontological
index."
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Each of the above steps in claim 1 falls within the patent-ineligible
"process that employs mathematical algorithms to manipulate existing
information to generate additional information." Digitech Image Techs.,
LLC v. Electronics for Imaging, Inc., 758 F.3d 1344, 1351 (Fed. Cir. 2014).
In particular, the limitation (iii) "generate a new asset data item representing
the individual item to be integrated into the ontological index, wherein
generating the new asset data item includes incorporating metadata for the
new asset item based on the determined correlative relationships" is a
process in which a mathematical algorithm is used to generate additional
information from existing information-the result of: (i) "analyze one or
more social media platforms to identify a user review corresponding to an
individual item not represented by an asset data item in the ontological
index," as recited in claim 1.
Additionally, the step of: (iii) "generate a new asset data item
representing the individual item to be integrated into the ontological index,
wherein generating the new asset data item includes incorporating metadata
for the new asset item based on the determined correlative relationships"
falls within the patent ineligible process of creating "an index used to search
and retrieve information stored in a database." Intellectual Ventures I LLC
v. Erie Indem. Co., 850 F.3d 1315, 1327 (Fed. Cir. 2017).
Claim 7, a corresponding computer-implemented method claim, and
claim 13, a non-transitory computer-readable medium claim, recite
limitations similar to those discussed with respect to claim 1. Thus, claims 7
and 13 are also directed to a patent-ineligible abstract idea.
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Step two: Is there something else in the claims
that ensures that they are directed to significantly
more than a patent-ineligible concept?
Because claims 1, 7, and 13 are directed to an abstract idea, the
question to be settled next, according to Alice, is whether these claims recite
an element, or combination of elements, that is enough to ensure that the
claim is directed to significantly more than an abstract idea.
Claim 1 is a system claim, which recites "a database" and "one or
more processors." Claim 9, a computer-implemented method claim, and
claim 13, a non-transitory computer-readable medium claim, recite similar
limitations. The claimed hardware components, including the "database"
and "one or more processors" are generic, purely conventional computer
elements. Thus, the claims do no more than require generic computer
elements to perform generic computer functions, rather than improve
computer capabilities.
Accordingly, appending a conventional "database" and "one or more
processors" to an abstract idea is not enough to transform an abstract idea
into a patent-eligible invention. See Alice, 134 S. Ct. at 2358 ("[T]he mere
recitation of a generic computer cannot transform a patent-ineligible abstract
idea into a patent-eligible invention").
First, Appellants argue that "claim 1 is patent-eligible because claim 1
is not directed wholly to an abstract idea." (App. Br. 4 (emphasis omitted).)
In particular, Appellants argue that:
[ w ]ith the "analyz[ing]" and "determin[ing]" processes as filters
for the ontological index, "a new asset data item" is not simply
generated, but rather "generated [to] represent[] the individual
item to be integrated into the ontological index, wherein
generating the new asset data item includes incorporating
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metadata for the new asset item based on the one or more
correlative relationships."
(Id. (emphasis omitted).) Accordingly, Appellants argue, "the progression
of the analysis and determining steps in generating the 'new asset data item,'
as well as the added limitations of 'integrat[ing]' the new asset data item into
the ontological index, at the very least place the claims outside the bounds of
being wholly directed to the alleged abstract idea of 'the creation of data
items."' (Id. (emphases omitted).) However, contrary to Appellants'
arguments, the creation of a "new asset data item," as recited in claim 1, is a
patent ineligible "process that employs mathematical algorithms to
manipulate existing information to generate additional information."
Digitech, 758 F.3d at 1351. Likewise, the step of "a new asset data item ...
to be integrated into the ontological index," as recited in claim 1, falls within
the patent ineligible process of "creation of an index used to search and
retrieve information stored in a database." Intellectual Ventures, 850 F.3d at
1327.
Second, Appellants argue that "the present application has succeeded
through appeal on the merits of novelty and non-obviousness, ... no
substantive prior art has been cited in the Final Office Action alleging that
the pending claims lack novelty or non-obviousness" and
the allegation that the claims "are merely instructions to
implement the abstract idea on a computer and require no more
than a generic computer to perform generic computer functions
that are well understood, routine and conventional activities
previously known to the industry," is clearly controverted by the
absence of any prior art cited in the instant Office Action.
(App. Br. 5.) However, Appellants improperly conflate the requirements for
eligible subject matter with the independent requirements of novelty and
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non-obviousness. "The 'novelty' of any element or steps in a process, or
even of the process itself, is of no relevance in determining whether the
subject matter of a claim falls within the § 101 categories of possibly
patentable subject matter." Diamond v. Diehr, 450 U.S. 175, 188-89
(1981).
Third, Appellants argue that "[ m ]ultiple data sources are used in a
novel manner to create a new asset data item in a catalog, thereby enhancing
the ontological index" and "[ w ]hile the claims do include creation of data
items, the claims recite a specific series of technical steps the result in a data
item that improves a stored asset catalog." (App. Br. 6.) However
Appellants have not adequately explained why the claim "purport(s) to
improve the functioning of the computer itself' or "any other technology or
technical field." Alice, 134 S. Ct. at 2359. In particular, Appellants have not
explained why cataloging of data into an ontological index, improves the
function of a computer or other technology.
Fourth, Appellants argue that "[i]n Amdocs [(Israel) Ltd. v. Openet
Telecom, Inc., 841 F.3d 1288 (Fed. Cir. 2016)], the Federal Circuit held that
claims directed to a series of operations enhancing data in a computer
database to solve an accounting problem were patent eligible" and "that
Amdocs [, which claims 'computer code for accounting information to
enhance the first network accounting record,'] provides a very strong
analogy to the claims at issue." (App. Br. 6.) However, Appellants'
arguments are not commensurate in scope with claim 1 because the claim
does not recite a computer code for enhancing data in a computer database.
Last, Appellants argue that "[i]t is improper for the Examiner to
reduce the claims to merely 'creation of data items' while ignoring the
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expressly recited claim limitations and the resulting advantages of those
limitations" and "[ t ]he record does not contain any analysis of the claimed
invention as a series of steps." (App. Br. 7 (emphasis omitted).)
Accordingly, Appellants argue, "[t]his type of treatment by the Examiner
ignores recent clarifying precedential case law which requires that the claims
be considered in their entirety, as a series of ordered steps, for the purposes
of a § 101 analysis." (Id.) However, the Examiner has identified the
appropriate judicial exception as "an 'idea of itself" and has persuasively
compared the claimed concepts of independent claim 1 to a prior Federal
Circuit decision, Digitech. (Final Act. 6.) Appellants are improperly
conflating part one of the Alice test with part two of the Alice test, which
includes consideration of an element or combination of elements to
determine if the claim recites "additional features."
Thus, we agree with the Examiner that claims 1, 7, and 13 are directed
towards non-statutory subject matter.
Accordingly, we sustain the rejection of independent claims 1, 7, and
13 under 35 U.S.C. § 101. Claims 2, 4---6, 8, 10-12, 14, and 16-18 depend
from independent claims 1, 7, and 13. We sustain the rejection of claims 2,
4---6, 8, 10-12, 14, and 16-18 under 35 U.S.C. § 101 for the same reasons
discussed with respect to independent claims 1, 7, and 13.
DECISION
The Examiner's decision rejecting claims 1, 2, 4--8, 10-14, and 16-18
is affirmed.
No time period for taking any subsequent action in connection with
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this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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