Ex Parte Kamath

Patent Trial and Appeal Board

Feb 1, 2019

13905412 (P.T.A.B. Feb. 1, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/905,412 05/30/2013
72058 7590 02/05/2019
Kilpatrick Townsend & Stockton LLP
Adobe Systems, Inc. 58083
Mailstop: IP Docketing - 22
1100 Peachtree Street, Suite 2800
Atlanta, GA 30309-4530
FIRST NAMED INVENTOR
AnilKamath
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.
0508083-0876789-2307US05 3408
EXAMINER
MANSFIELD, THOMAS L
ART UNIT PAPER NUMBER
3623
NOTIFICATION DATE DELIVERY MODE
02/05/2019 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):
ipefiling@kilpatricktownsend.com
KTSDocketing2@kilpatrick.foundationip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ANIL KAMA TH
Appeal2018-000030
Application 13/905,412
Technology Center 3600
Before HUNG H. BUI, JON M. JURGOV AN, and
JOSEPH P. LENTIVECH, Administrative Patent Judges.
LENTIVECH, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner's decision to reject claims 1-17, 19, 20, and 22. Claims 18 and 21
have been canceled. See App. Br. 22 (Claims Appendix). We have
jurisdiction over the pending claims under 35 U.S.C. § 6(b).
We reverse.
1 According to Appellant, the real party in interest is Adobe Systems
Incorporated. App. Br. 1.
Appeal2018-000030
Application 13/905,412
STATEMENT OF THE CASE
Appellant's Invention
Appellant's claimed invention generally relates to "contextual
advertisement position bidding." Spec. ,r 2. Claim 1, which is illustrative,
reads as follows:
1. A method for determining a bidding strategy for placing a
plurality of bids for a plurality of marketing options, the method
compnsmg:
performing, by one or more computing devices:
determining empirical data associated with
marketing options based on performance metrics of the
marketing options and based on observation of web site
traffic from user devices to computing resources that
expose the user devices to the marketing options;
generating a predictive model that comprises one or
more statistical models, wherein the predictive model is
generated based on the empirical data;
determining at least one modeling parameter for the
predictive model, wherein the at least one parameter is
variable and is associated with at least one of a user
characteristic or a marketing option characteristic;
determining at least one objective for the predictive
model to optimize;
receiving a trigger event to optimize the predictive
model, the trigger event associated with web site traffic to
a set of web sites;
optimizing the predictive model by solving an
objective function based in part on the at least one
modeling parameter, and the at least one objective, and at
least one constraint; and
determining, in real time relative to the trigger
event, the bidding strategy based on the optimization of
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Application 13/905,412
the predictive model, wherein the bidding strategy
comprises a set of the marketing options that results in the
optimization in accordance with the at least one modeling
parameter, the at least one objective, and the at least one
constraint, the set of marketing options used in connection
with subsequent web site traffic to the set of web sites.
Rejection
Claims 1-17, 19, 20, and 22 stand rejected under 35 U.S.C. § 101
because the claimed subject matter is judicially-excepted from patent
eligibility under § 101. Final Act. 5-7.
ANALYSIS
Rejection under 35 USC§ 101
PRINCIPLES OF LAW
An invention is patent-eligible if it claims a "new and useful process,
machine, manufacture, or composition of matter." 35 U.S.C. § 101.
However, the Supreme Court has long interpreted 35 U.S.C. § 101 to include
implicit exceptions: "[l]aws of nature, natural phenomena, and abstract
ideas" are not patentable. E.g., Alice Corp. Pty. Ltd. v. CLS Bank Int 'l, 573
U.S. 208,216 (2014) (citation omitted).
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court's two-step framework, described in Mayo
and Alice. Id. at 217-18 ( citing Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 566 U.S. 66, 75-77 (2012)). In accordance with that framework,
we first determine what concept the claim is "directed to." See Alice, 573
U.S. at 219 ("On their face, the claims before us are drawn to the concept of
intermediated settlement, i.e., the use of a third party to mitigate settlement
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risk."); see also Bilski v. Kappas, 561 U.S. 593, 611 (2010) ("Claims 1 and 4
in petitioners' application explain the basic concept of hedging, or protecting
against risk.").
Concepts determined to be abstract ideas, and, thus, patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219--20; Bilski, 561 U.S. at 611);
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594--95 (1978)); and
mental processes ( Gottschalk v. Benson, 409 U.S. 63, 69 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as "molding rubber products" (Diamond v. Diehr, 450 U.S. 175, 191
(1981) ); "tanning, dyeing, making water-proof cloth, vulcanizing India
rubber, smelting ores" (id. at 184 n.7 (quoting Corning v. Burden, 56 U.S.
252, 267---68 (1853))); and manufacturing flour (Benson, 409 U.S. at 69
(citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
In Diehr, the claim at issue recited a mathematical formula, but the
Supreme Court held that "[a] claim drawn to subject matter otherwise
statutory does not become nonstatutory simply because it uses a
mathematical formula." Diehr, 450 U.S. at 176; see also id. at 191 ("We
view respondents' claims as nothing more than a process for molding rubber
products and not as an attempt to patent a mathematical formula."). Having
said that, the Supreme Court also indicated that a claim "seeking patent
protection for that formula in the abstract ... is not accorded the protection
of our patent laws, ... and this principle cannot be circumvented by
attempting to limit the use of the formula to a particular technological
environment." Id. ( citing Benson and Flook); see, e.g., id. at 187 ("It is now
commonplace that an application of a law of nature or mathematical formula
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to a known structure or process may well be deserving of patent
protection.").
If the claim is "directed to" an abstract idea, we tum to the second
step of the Alice and Mayo framework, where "we must examine the
elements of the claim to determine whether it contains an 'inventive
concept' sufficient to 'transform' the claimed abstract idea into a patent-
eligible application." Alice, 573 U.S. at 221 ( citation omitted). "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. (quoting Mayo, 566 U.S. at 77). "[M]erely requir[ing]
generic computer implementation, fail[ s] to transform that abstract idea into
a patent-eligible invention." Id.
The PTO recently published revised guidance on the application of
§ 101. USPTO's 2019 Revised Patent Subject Matter Eligibility Guidance,
84 Fed. Reg. 50 (Jan. 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 interactions such as a fundamental economic
practice, or mental processes); and
(2) additional elements that integrate the judicial exception into
a practical application (see MANUAL OF p ATENT EXAMINING
PROCEDURE (MPEP) § 2106.05(a}-(c), (e}-(h) (9th ed. Jan.
2018)).
See Memorandum, 84 Fed. Reg. at 52, 54--55. 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:
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(3) adds a specific limitation beyond the judicial exception that
are not "well-understood, routine, conventional" in the field (see
MPEP § 2106.05(d)); 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.
See Memorandum, 84 Fed. Reg. at 56.
STEP 1: STATUTORY CATEGORY?
Claim 1 recites a series of steps. Claim 1, therefore, claims a process.
STEP 2A - PRONG 1: Is THE CLAIM DIRECTED TO A JUDICIAL EXCEPTION?
Claim 1 is directed to a method for "determining a bidding strategy
for placing a plurality of bids for a plurality of marketing options." App.
Br. 18 (Claims Appendix). Determining a bidding strategy for placing a
plurality of bids for a plurality of marketing options is similar to the concept
of offer-based price optimization to which the claims in OIP Techs., Inc. v.
Amazon.com, Inc. were directed. 788 F.3d 1359, 1362 (Fed. Cir. 2015).
Offer-based price optimization is a fundamental economic practice. Id. As
such, we agree with the Examiner that claim 1 is directed to a method of
organizing human activity and, therefore, an abstract idea. Final Act. 5---6.
STEP 2A- PRONG 2: INTEGRATED INTO A PRACTICAL APPLICATION?
The claim recites the additional elements of "generating a predictive
model that comprises one or more statistical modes, wherein the predictive
model is generated based on empirical data;" "optimizing the predictive
model by solving an objective function based in part on the at least one
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Application 13/905,412
modeling parameter, and the at least one objective, and at least one
constraint;" and:
determining, in real time relative to the trigger event, the bidding
strategy based on the optimization of the predictive model,
wherein the bidding strategy comprises a set of the marketing
options that results in the optimization in accordance with the at
least one modeling parameter, the at least one objective, and the
at least one constraint, the set of marketing options used in
connection with subsequent web site traffic to the set of web
sites.
App. Br. 18 (Claims Appendix). Thus, the claim requires generating,
optimizing, and using a predictive model to determine a set of marketing
options that are applied to web site traffic for a plurality of web sites. These
limitations implement the recited abstract idea with the particular computing
device that is integral to the claim and apply or use the recited abstract idea
in a meaningful way beyond generally linking the use of the abstract idea to
a particular technological environment, such that the claim as a whole is
more than a drafting effort designed to monopolize the exception. See
Memorandum, 84 Fed. Reg. at 55. As such, claim 1 integrates the abstract
idea into a practical application and, therefore, is directed to patent-eligible
subject matter.
Accordingly, we do not sustain the Examiner's rejection of claim 1;
independent claims 10 and 17, which recite corresponding limitations; and
claims 2-9, 11-16, 19, 20, and 22, which depend from claims 1, 10, and 17.
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DECISION
We reverse the Examiner's rejection of claims 1-17, 19, 20, and 22
under 35 U.S.C. § 101.
REVERSED
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