Ex Parte Jalali et al

Patent Trials and Appeals Board

May 15, 2019

14060862 - (D) (P.T.A.B. May. 15, 2019)

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.
14/060,862 10/23/2013 Ali Jalali AMOBP502 1014
19694 7590 05/17/2019
Kwan & Olynick LLP
2000 Hearst Avenue, Suite 305
Berkeley, CA 94709
EXAMINER
ROBINSON, KYLE G
ART UNIT PAPER NUMBER
3681
NOTIFICATION DATE DELIVERY MODE
05/17/2019 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 @ kwanip. com
lsmith@kwanip.com
eofficeaction @ appcoll.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ALI JALALI, ALI DASDAN, and KUANG-CHIH LEE
Appeal 2018-005381
Application 14/060,8621
Technology Center 3600
Before: JOHN PINKERTON, BETH Z. SHAW, AND NORMAN
BEAMER, Administrative Patent Judges.
SHAW, Administrative Patent Judge.
DECISION ON APPEAL
1 According to Appellants, the real party in interest is Amobee, Inc. App. Br.
3.
Appeal 2018-005381
Application 14/060,862
Appellants appeal under 35 U.S.C. § 134 from a rejection of claims
1-8 and 10-20. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
The invention is for efficient pacing of budgets for online advertising
campaigns. Spec. 11. Claim 1, reproduced below, is illustrative of the
claimed subject matter:
1. A method comprising:
receiving, at a communications interface, a plurality of
advertising requests from a real-time bidding exchange during a
time interval, the time interval divided into a plurality of time
periods, the plurality of time periods including a designated time
period and one or more preceding time periods, each of the
advertising requests capable of being purchased to present a
respective online advertisement;
determining, via a processor, a target budget for the
designated time period;
analyzing, via the processor, historical data for the one or
more preceding time periods to generate a previous win rate that
corresponds to a ratio of the number of bid requests placed and
won on an advertising request to the total number of bid requests
placed;
for the designated time period, predicting via the processor
a win ratio indicating a ratio of a first win rate for the designated
time period to a second win rate for the one or more preceding
time periods;
analyzing, via the processor, historical data for one or
more preceding time periods to predict a request ratio that
corresponds to a ratio of the number of requests received for the
one or more preceding time periods and the estimated number of
requests to be received during the designated time period;
determining, via the processor, a pacing rate for the
designated time period, the pacing rate designating a portion of
the advertising requests received during the designated time
period on which to bid, wherein determining the pacing rate for
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Application 14/060,862
the designated time period is based on the predicted win ratio,
the predicted request ratio, and the target budget; and
placing a plurality of bids on selected ones of the
advertising requests received during the designated time period
in accordance with the pacing rate by transmitting such bids via
the communications interface to the real-time bidding exchange
for presenting on-line advertisements to targeted users.
REJECTION
Claims 1-8, and 10-20 are rejected under 35 U.S.C. § 101.
OPINION
Appellants argue the pending claims as a group. As permitted by
37 C.F.R. § 41.37, we decide the appeal based on claim 1. See 37 C.F.R.
§ 41.37(c)(l)(iv) (2016).
Section 101 of the Patent Act provides that “any new and useful
process, machine, manufacture, or composition of matter, or any new and
useful improvement thereof’ is patent eligible. 35 U.S.C. § 101. But the
Supreme Court has long recognized an implicit exception to this section:
“Laws of nature, natural phenomena, and abstract ideas are not patentable.”
Alice Corp. v. CLSBankInt’l, 573 U.S. 208, 216 (2014) (quoting Ass’nfor
Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 589 (2013)).
To determine whether a claim falls within one of these excluded categories,
the Court has set out a two-part framework. The framework requires us first
to consider whether the claim is “directed to one of those patent-ineligible
concepts.” Alice, 573 U.S. at 217. If so, we then examine “the elements of
each claim both individually and ‘as an ordered combination’ to determine
whether the additional elements ‘transform the nature of the claim’ into a
patent-eligible application.” A lice, 573 U.S. at 217 (quoting Mayo
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Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 78, 79 (2012)).
That is, we examine the claims for an “inventive concept,” “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.’” Alice, 573 U.S. at 217—18 (alteration in original) (quoting
Mayo, 566 U.S. at 72-73).
The Patent Office recently issued guidance about this framework. See
2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50
(Jan. 7, 2019) (“2019 Eligibility Guidance”). Under the guidance, to decide
whether a claim is “directed to” an abstract idea, we evaluate whether the
claim (1) recites an abstract idea grouping listed in the guidance and (2) fails
to integrate the recited abstract idea into a practical application. See 2019
Eligibility Guidance, 84 Fed. Reg. at 51. If the claim is “directed to” an
abstract idea, as noted above, we then determine whether the claim recites an
inventive concept. The 2019 Eligibility Guidance explains that when making
this determination, we should consider whether the additional claim
elements add “a specific limitation or combination of limitations that are not
well-understood, routine, conventional activity in the field” or “simply
append[] well-understood, routine, conventional activities previously known
to the industry.” 2019 Eligibility Guidance, 84 Fed. Reg. at 56.
With these principles in mind, we turn to the Examiner’s § 101
rejection.
Abstract idea
Turning to Step 2A, Prong 1, the claimed method is for efficient
pacing of budgets for online advertising campaigns. Spec. 11. Claim 1
includes the following calculations: “determining” “a target budget for a
designated time period;” “analyzing” “historical data for the one or more
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preceding time periods to generate a previous win rate that corresponds to a
ratio of the number of bid requests placed and won on an advertising request
to the total number of bid requests placed;” “for the designated time period,”
“predicting a win ratio;” “analyzing” “historical data for one or more
preceding time periods to predict a request ratio that corresponds to a ratio of
the number of requests received for the one or more preceding time periods
and the estimated number of requests to be received during the designated
time period;” and “determining” “a pacing rate for the designated time
period, the pacing rate designating a portion of the advertising requests
received during the designated time period on which to bid, wherein
determining the pacing rate for the designated time period is based on the
predicted win ratio, the predicted request ratio, and the target budget.” Thus,
the system calculates an optimal amount of bids based on a predetermined
pacing rate.
Claim 1 recites an abstract idea grouping listed in the 2019 Eligibility
Guidance: “mental processes.” See 2019 Eligibility Guidance, 84 Fed. Reg.
at 52, 53 (listing “[mjental processes—concepts performed in the human
mind (including an observation, evaluation, judgment, opinion)” as one of
the “enumerated groupings of abstract ideas” (footnote omitted)). The
guidance explains that “mental processes” include acts that people can
perform in their minds or using pen and paper, even if the claim recites that
a generic computer component performs the acts. See 2019 Eligibility
Guidance, 84 Fed. Reg. at 52 n.14 (“If a claim, under its broadest reasonable
interpretation, covers performance in the mind but for the recitation of
generic computer components, then it is still in the mental processes
category unless the claim cannot practically be performed in the mind.”); see
also Intellectual Ventures ILLC v. Symantec Corp., 838 F.3d 1307, 1318
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Application 14/060,862
(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.”), quoted in
2019 Eligibility Guidance, 84 Fed. Reg. at 52 n.14; Mortg. Grader, Inc. v.
First Choice Loan Servs. Inc., 811 F.3d. 1314, 1324 (Fed. Cir. 2016)
(holding that computer-implemented method for ‘“anonymous loan
shopping’” was an abstract idea because it could be “‘performed by humans
without a computer’”); quoted in 2019 Eligibility Guidance, 84 Fed. Reg. at
52 n.14.
The method recited in claim 1 executes steps that people can perform
in their minds or using pen and paper. A person can perform the
“determining” and “analyzing” steps of claim 1 by using his or her mind (or
pen and paper) in the claimed manner. For example, a person can determine
a target budget for a designated time period using his or her mind or pen and
paper. A person can analyze historical data for the one or more preceding
time periods to generate a previous win rate that corresponds to a ratio of the
number of bid requests placed and won on an advertising request to the total
number of bid requests placed, using pen and paper. A person can predict a
win ratio for the designated time period using his or her mind or pen and
paper. A person can analyze historical data for one or more preceding time
periods to predict a request ratio that corresponds to a ratio of the number of
requests received for the one or more preceding time periods and the
estimated number of requests to be received during the designated time
period. A person can, using pen and paper, determine a pacing rate for the
designated time period, the pacing rate designating a portion of the
advertising requests received during the designated time period on which to
bid, wherein determining the pacing rate for the designated time period is
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based on the predicted win ratio, the predicted request ratio, and the target
budget.
Accordingly, claim 1 recites a mental process, and thus an abstract
idea.
Turning to Step 2 A, Prong 2, the remaining elements recited in claim
1 do not integrate the abstract idea into a practical application. In addition to
the steps discussed above, claim 1 recites “receiving, at a communications
interface, a plurality of advertising requests,” performing certain steps or
calculations by “a processor,” and “placing a plurality of bids” “via the
communications interface.” The written description discloses that the recited
computers encompass generic components. See, e.g., Spec. Fig. 4,1110
(listing simply “a processor 401”). Simply programming a general-purpose
computer “processor” to perform abstract ideas does not integrate those
ideas into a practical application. See 2019 Eligibility Guidance, 84 Fed.
Reg. at 55 (identifying “merely including] instructions to implement an
abstract idea on a computer” as an example of when an abstract idea has not
been integrated into a practical application).
Thus, the claims do not integrate the judicial exception into a practical
application. The claims do not (1) improve the functioning of a computer or
other technology, (2) are not applied with any particular machine (except for
a generic computer), (3) do not effect a transformation of a particular article
to a different state, and (4) are not applied in any meaningful way beyond
generally linking the use of the judicial exception to a particular
technological environment, such that the claim as a whole is more than a
drafting effort designed to monopolize the exception. See MPEP
§§ 2106.05(aHc), (e)-(h).
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Inventive Concept
Because we determine claim 1 is “directed to” an abstract idea, we
consider whether claim 1 recites an “inventive concept.” The Examiner
determined claim 1 does not recite an inventive concept because the
additional elements in the claim do not amount to “significantly more” than
an abstract idea. See Final Act. 4.
We agree. The additional elements recited in the claim include the
“processor” and “a communications interface.” The claim recites these
elements at a high level of generality, and the written description indicates
that these elements are generic computer components. See, e.g., Fig. 4, Spec.
1110. Using generic computer components to perform abstract ideas does
not provide the necessary inventive concept. See Alice, 573 U.S. at 223
(“[T]he mere recitation of a generic computer cannot transform a patent-
ineligible abstract idea into a patent-eligible invention.”). Thus, these
elements, taken individually or together, do not amount to “significantly
more” than the abstract ideas themselves.
Appellants contend various elements recited in the claim provide the
necessary “inventive concept.” App. Br. 16. But these elements form part of
the recited abstract ideas and thus are not “additional elements” that
“‘transform the nature of the claim’ into a patent-eligible application.” Alice,
573 U.S. at 217 (quoting Mayo, 566 U.S. at 78); see also 2019 Eligibility
Guidance, 84 Fed. Reg. at 55 n.24 (“USPTO guidance uses the term
‘additional elements’ to refer to claim features, limitations, and/or steps that
are recited in the claim beyond the identified judicial exception.” (emphasis
added)).
Rather, the recited (1) processor, and (2) communications interface
are the additional recited elements whose generic computing functionality is
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Application 14/060,862
well-understood, routine, and conventional. See Intellectual Ventures, 792
F.3d at 1368 (noting that a recited user profile (i.e., a profile keyed to a user
identity), database, and communication medium are generic computer
elements); Mortgage Grader, Inc. v. First Choice Loan Servs. Inc., 811 F.3d
1314, 1324—25 (Fed. Cir. 2016) (noting that components such an “interface,”
“network,” and “database” are generic computer components that do not
satisfy the inventive concept requirement); buySAFE, Inc. v. Google, Inc.,
765 F.3d 1350, 1355 (Fed. Cir. 2014) (“That a computer receives and sends
the information over a network—with no further specification—is not even
arguably inventive.”). Accord Final Act. 3 (Concluding that the claims’
additional generic computer components do not add significantly more than
the abstract idea.); see also Spec. Figs. 2, 3, 48—50, 78—82 (“program
instructions may be provided to a processor of a general purpose information
handling device”). Appellants’ arguments do not persuade us claim 1 is
“directed to” a patent-eligible concept.
To the extent Appellants contend that the claimed invention is rooted
in technology because it is ostensibly directed to a technical solution (see
App. Br. 10-12), we disagree. Even assuming, without deciding, that the
claimed invention can place bids on advertising requests based on certain
criteria faster than doing so manually, any speed increase comes from the
capabilities of the generic computer components—not the recited process
itself. See FairWarningIP, LLC v. Iatric Systems, Inc., 839 F.3d 1089, 1095
(Fed. Cir. 2016) (citing Bancorp Services, LLC v. Sun Life Assurance Co.,
687 F.3d 1266, 1278 (Fed. Cir. 2012) (“[T]he fact that the required
calculations could be performed more efficiently via a computer does not
materially alter the patent eligibility of the claimed subject matter.”)); see
also Intellectual Ventures I LLC v. Erie Indemnity Co., 711 F. App’x 1012,
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1017 (Fed. Cir. 2017) (unpublished) (“Though the claims purport to
accelerate the process of finding errant files and to reduce error, we have
held that speed and accuracy increases stemming from the ordinary
capabilities of a general-purpose computer ‘do[ ] not materially alter the
patent eligibility of the claimed subject matter.’”). Like the claims in
FairWarning, the focus of claim 1 is not on an improvement in computer
processors as tools, but on certain independently abstract ideas that use
generic computing components as tools. See FairWarning, 839 F.3d at 1095
(citations and quotation marks omitted).
Conclusion
For at least the above reasons, we agree with the Examiner that claim
1 is “directed to” an abstract idea and does not recite an “inventive concept.”
Accordingly, we sustain the Examiner’s rejection of claims 1—8 and 10—20
under 35 U.S.C. § 101.
DECISION
For the above reasons, the Examiner’s rejection of claims 1-8 and
10-20 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) (2009).
AFFIRMED
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