Ex Parte Luff

Patent Trial and Appeal Board

Mar 27, 2018

12263079 (P.T.A.B. Mar. 27, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/263,079 10/31/2008
81905 7590 03/29/2018
Hanley, Flight & Zimmerman, LLC (Nielsen)
150 S. Wacker Dr. Suite 2200
Chicago, IL 60606
FIRST NAMED INVENTOR
Robert A. Luff
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.
20004/385US 7441
EXAMINER
CHOY, PANG
ART UNIT PAPER NUMBER
3624
NOTIFICATION DATE DELIVERY MODE
03/29/2018 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):
jflight@hfzlaw.com
mhanley@hfzlaw.com
docketing@hfzlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ROBERT A. LUFF
Appeal 2016-008739
Application 12/263,079
Technology Center 3600
Before ELENI MANTIS MERCADER, JOHNNY A. KUMAR, and
CARLL. SILVERMAN, Administrative Patent Judges.
MANTIS MERCADER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from a rejection of claims
1-12, 23-34, and 37--49, which constitute all the claims pending in this
application. Claims 13-22, 35, and 36 have been cancelled. We have
jurisdiction under 35 U.S.C. § 6(b ).
We affirm.
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Application 12/263,079
CLAIMED SUBJECT MATTER
The claimed invention is directed to performing consumer surveys
while the person is exposed to an advertisement regarding a product.
Abstract.
Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A method to automatically conduct surveys, comprising:
counting, using a processor, a first number of exposures a person
has to at least one of a first advertisement, a first product or a first
location based on activity data collected by a portable device;
comparing, with the processor, the first number of
exposures to a first threshold value;
when the first number of exposures exceeds the first
threshold value, automatically offering a survey question related
to the first advertisement, the first product or the first location to
the person via the portable device substantially while the person
is exposed to at least one of the first advertisement, the first
product or the first location, wherein the first threshold value is
at least one; and
storing a response received from the person.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Granik et al. ("Granik") Willner et
al. ("Willner")
Westberg
De Wind et al. ("De Wind")
Levkovitz et al. ("Levkovitz")
Albertson et al. ("Albertson")
US 2002/0010757 Al
US 2002/0196275 Al
US 2005/0102696 Al
US 2006/0164230 Al
US 2007/0088801 Al
US 2008/0172261 Al
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Jan. 24, 2002
Dec. 26, 2002
May 12, 2005
July 27, 2006
Apr. 19, 2007
July 1 7, 2008
Appeal2016-008739
Application 12/263,079
REJECTIONS
Claims 1-12, 23-34, and 37--49 stand rejected
under 35 U.S.C. § 101 as being directed to an abstract idea.
Claims 37--48 were rejected under 35 U.S.C. § 101 as allegedly
covering transitory propagating signals per se.
Claims 1--4, 6, 8-12, and 38 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Willner in view of Granik and further in view of
Albertson.
Claims 5 and 7 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Willner in view of Granik and further in view of
Albertson and further in view of Olavarrieta.
Claims 23, 26, and 28-32 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Westberg in view of Willner in view of Granik and
further in view of Albertson.
Claims 27 and 30 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Westberg in view of Willner and Albertson and further in
view of Olavarrieta.
Claim 24 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Westberg in view of Granik and further in view of Willner
and Albertson.
Claim 25 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Westberg in view of Granik and further in view of
Levkovitz.
Claims 33, 34, and 47--49 were rejected under 35 U.S.C. § 103(a) as
allegedly unpatentable over Albertson in view of De Wind.
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Application 12/263,079
Claims 37, 40, 42, and 44--46 were rejected under 35 U.S.C. § 103(a)
as allegedly unpatentable over Albertson in view of Willner.
Claim 39 was rejected under 35 U.S.C. § 103(a) as allegedly
unpatentable over Willner, Granik, and Albertson in view of Levkovitz.
Claim 41 and 43 were rejected under 35 U.S.C. § 103(a) as allegedly
unpatentable over Albertson and Willner in view of Olavarrieta.
ANALYSIS
We adopt the Examiner's findings in the Answer and Final Rejection.
We add the following for emphasis. We note that if Appellant failed to
"present arguments on a particular issue - or, more broadly, on a particular
rejection-the Board will not, as a general matter, unilaterally review those
uncontested aspects of the rejection." See Ex parte Frye, 94 USPQ2d 1072,
1075 (BPAI 2010) (precedential)); Hyatt v. Dudas, 551F.3d1307, 1313-14
(Fed. Cir. 2008) (The Board may treat arguments Appellant failed to make
for a given ground of rejection as waived).
Claims 1-12, 23-34, and 37-49 rejected under 35 USC§ 101
Appellant argues that claim 1 as a whole presents no danger of tying
up the alleged abstract ideas of "conducting surveys" or "organizing a
human activity" (App. Br. 25). Appellant argues in particular that the
Supreme Court was clear that when no preemption concern is present, the
claim remains patentable for the monopoly granted under our patent laws
(App. Br. 26). According to Appellant, claim 1 as a whole enables the
collection of more relevant and meaningful feedback from survey
respondents in a safe and efficacious manner by dynamically asking relevant
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Application 12/263,079
time and activity dependent questions in response to environmental
conditions to capture the respondents' transparent real-time reactions to their
experiences. App. Br. 29.
Appellant argues that a human surveyor cannot practically track
exposures and automatically present a survey question only when a number
of exposures exceeds a threshold value as recited in claim 1 (App. Br. 30).
Therefore, Appellant asserts that claim 1 is not merely automating a
previously known process or doing something that could reasonably be done
in the human mind, but rather, is directed to an invention inherently
embodied in computer technology. App. Br. 30 citing DDR Holdings v.
Hotels.com L. P., 773 F.3d 1245, 1257 (Fed. Cir. 2014) (holding claims
patent eligible because "the claimed solution is necessarily rooted in
computer technology in order to overcome a problem specifically arising in
the realm of computer networks").
We are not persuaded by Appellant's argument. According to Alice
step one, "[ w ]e must first determine whether the claims at issue are directed
to a patent-ineligible concept," such as an abstract idea. Alice Corp. Pty.
Ltd. v. CLS Bank Int 'l, 134 S. Ct. 2347, 2355 (2014). We agree with the
Examiner that the steps of comparing the number of exposures to a threshold
value and offering a survey question when the number of exposures exceeds
the threshold value is similar to the abstract idea of comparing new (i.e.,
number of exposures) and stored (i.e., threshold value) information and
using rules to identify options (Ans. 5---6). These steps are considered
abstract idea because they can be performed mentally or by human using pen
and paper because it is the organization and comparison of data and is
similar to other concepts that have been identified as abstract by the courts,
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Application 12/263,079
such as using categories to organize, store and transmit information or
comparing new and stored information using rules to identify options. See
CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1375 (Fed. Cir.
2011) ("That purely mental processes can be unpatentable, even when
performed by a computer, was precisely the holding of the Supreme Court in
Gottschalk v. Benson"); Cyberfone Systems, LLC v. CNN Interactive Group,
Inc., 558 F. App'x 988 (Fed. Cir. 2014); SmartGene, Inc. v. Advanced
Biological Laboratories, SA, 555 F. App'x 950 (Fed. Cir. 2014)).
"In a similar vein, we have 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."
Electric Power Group, LLC v. Alstom S.A., 830 F.3d at 1350, 1354 (Fed.
Cir. 2016)( emphasis added); see also In re TL! Comm 'ns LLC Patent
Litig., 823 F.3d 607, 613 (Fed. Cir. 2016). That the claim is implemented by
a generic computer is not sufficient to show the claimed concept is patent-
eligible. See FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1094
(Fed. Cir. 2016) (merely implementing an old practice in a new environment
is abstract).
Thus, implementing a mathematical calculation on a computer for
determining whether the number of exposures exceeds a threshold value to
provide the option of taking a survey constitutes an abstract idea.
Because we conclude all claims on appeal are directed to an abstract
idea, we proceed to the second part of the Mayo/Alice analysis. We further
analyze the claims to determine if there are additional limitations that
individually, or as an ordered combination, ensure the claims amount to
"significantly more" than the abstract idea. Alice, 134 S. Ct. at 2357.
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We agree with the Examiner that the claims recite the additional
elements including a processor, a portable device, a database and a
communication interface performing generic computer functions, such as
receiving, storing, manipulating and transmitting information (Ans. 6). We
agree with the Examiner's findings that as described in the claims, the steps
of "counting, using a processor, a first number of exposures," "comparing,
with the processor, the first number of exposures to a first threshold value,"
"automatically offering a survey question ... via a portable device," and
"storing a response received" are merely applying an abstract idea to a
technology field or automating mental tasks by implementing the abstract
idea onto a computer (see Ans. 6). More broadly, on this record, it is our
view that Appellant has not established that the claims attempt to provide a
solution "necessarily rooted in computer technology in order to overcome a
problem specifically arising in the realm of computer networks." DDR, 773
F.3d at 1257. The claims are similar to the claims of Electric Power,
because they do not require any nonconventional computer or network
components, or even a "non-conventional and non-generic arrangement of
known, conventional pieces," but merely call for performance of the claimed
information collection, analysis, and display functions on generic computer
components and display devices. See Elec. Power Grp., LLC v. Alstom S.A.,
830 F.3d 1350, 1355 (Fed. Cir. 2016).
Appellant further argues that the claims do not raise any preemption
concerns (see App. Br. 26-27). Appellant's assertion regarding pre-emption
is unpersuasive, because "[w]hi1e preemption may signal patent ineligible
subject matter, the absence of complete preemption does not demonstrate
patent eligibiHty .... \Vl1ere a patent's claims are deerned only to disclose
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patent ineligible subject matter under the lvf(~yo framework, as they are in
this case, preemption concerns are fully addressed and made moot" Ariosa
Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015);
see also OIP, 788 F.3d at 1362---63 ("that the claims do not preempt all price
optimization or may be limited to price optimization in the e-commerce
setting do not rnake them any less abstract").
Accordingly, for at least the reasons discussed above, we sustain the
Examiner's rejection under 35 U.S.C. § 101 of claim 1 and for similar
reasons the rejections of claims 2-12, 23-34, and 37--49, as being directed to
patent-ineligible subject matter.
Claims 37-48 were rejected under 35 US.C. § 101
Appellant argues, with respect to claims 37--48, that the "machine
accessible storage device" covers forms of non-transitory media and
transitory propagating signals per se (App. Br. 45).
We do not agree. We agree with Examiner's finding that
Appellant's Specification does not explicitly exclude such signal or
communications media from the scope of "machine accessible storage
device" recited in independent claims 37, 38 and 47 (Ans. 27). Given the
lack of definition in Appellant's Specification, we agree with the Examiner's
finding giving the term "machine accessible storage device" its broadest
reasonable interpretation to cover transitory propagating signals per se (Ans.
27).
Accordingly, we affirm the Examiner's rejection of independent
claims 37, 38 and 47 and their respective dependent claims. Thus, we affirm
the Examiner's rejection of claims 37--48.
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Application 12/263,079
Claims 2-12, 23-27, 28-32, and 38 rejected under 35 US.C § 103(a)
Appellant argues that the combination of Willner, Granik and
Albertson do not teach the limitation of "when the first number of exposures
exceeds the first threshold value, automatically offering a survey question
related to the first advertisement ... while the person is exposed to at least
one of the first advertisement" as recited in claim 1 (see App. Br. 48-52).
Appellant argues with respect to claim 1 that even though paragraph
58 in Willner describes actively asking a user one or more questions as part
of or following an advertisement to obtain feedback, seeking such feedback
is in no way tied to the number of exposures to the advertisement (App. Br.
49). Appellant asserts that apart from actively asking questions, paragraph
5 8 in Willner further describes an alternative passive method to obtain
feedback (i.e., obtaining feedback without actively asking the user
questions) that involves monitoring viewing behavior that may be based on
the number of times a user is exposed to an advertisement (App. Br. 49).
According to Appellant Willner describes ( 1) actively asking questions as
part of or following an advertisement and (2) monitoring a number of
displays of an advertisement as two separate alternative ways to obtain
feedback (App. Br. 49). Appellant argues that nothing in Willner teaches or
suggests that asking of questions is to occur after a number of displays of an
advertisement exceeds a threshold as recited in claim 1 (App. Br. 49).
Appellant further argues that although Willner mentions asking
questions following the display of a single advertisement, nothing in Willner
teaches or suggests asking questions following the display of multiple
instances of the same advertisement. (App. Br. 49-50). Appellant further
argues that while paragraph 45 in Granik may suggest comparing a number
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of exposures to a threshold, there is nothing in Granik that teaches or
suggests automatically offering a survey question when such a threshold is
exceeded (App. Br. 51 ).
We are not persuaded by Appellant's argument. In essence,
Appellant's arguments do not take into account what the collective teachings
of the prior art would have suggested to one of ordinary skill in the art and is
therefore ineffective to rebut the Examiner's prima facie case of
obviousness. See In re Keller, 642 F.2d 413, 425 (CCPA 1981) ("The test
for obviousness is not whether the features of a secondary reference may be
bodily incorporated into the structure of the primary reference; nor is it that
the claimed invention must be expressly suggested in any one or all of the
references. Rather, the test is what the combined teachings of the references
would have suggested to those of ordinary skill in the art.") (citations
omitted).
We agree with the Examiner's finding that Willner teaches "obtaining
feedback from a user by asking one or more questions, which may be
included as part of an advertisement or follow the display of an
advertisement . . . . An evaluation of viewing behavior may be based, at
least in part, on the user's duration of exposure to an advertisement, or the
number of times a user is exposed to an advertisement" (see Ans. 27-28
citing para. 58). The Examiner concludes, and we agree, that Willner
teaches at least offering a survey question based on the number of times a
user is exposed to an advertisement and the evaluation in Willner is
necessary to compare the number of exposures of the user with a predefined
value before asking the question (Ans. 28). We further agree with the
Examiner that the claim does not require multiple instances of the same
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advertisement as argued by Appellant (Ans. 29). Willner's teaching of a
user being exposed to an advertisement a number of times (para. 58) meets
the claim limitation of "at least one of a first advertisement" as recited in
claim 1 (Ans. 29).
The Examiner then relies on Granik for the explicit teaching of a
threshold value (Ans. 28). Granik teaches determining when a
predetermined threshold has been exceeded and taking appropriate action
(Ans. 28 citing paras. 45--46). Thus, we agree with the Examiner that
Granik teaches at least comparing the number of exposures to a predefined
value before taking appropriate action (i.e., asking question) (Ans. 28).
Accordingly, we agree with the Examiner that the combination of the
teachings of at least Willner and Granik teaches the disputed limitation of
"when the first number of exposures exceeds the first threshold value,
automatically offering a survey question related to the first advertisement ...
while the person is exposed to at least one of the first advertisement," as
recited in claim 1.
Thus, we sustain the Examiner's rejection of claim 1 and for at least
the same reasons the rejections of claims 2-12, 23-27, 28-32, and 38.
DECISION
The Examiner's rejection of claims 1-12, 23-34, and 37--49 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). See 37 C.F.R.
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§ 1.136(a)(l )(iv).
AFFIRMED
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