Ex Parte Mason

Patent Trial and Appeal Board

Nov 30, 2017

11370679 (P.T.A.B. Nov. 30, 2017)

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.
11/370,679 03/08/2006 Zachary Mason 58083-857868 (2353US02) 3838
72058 7590 12/04/2017
Kilpatrick Townsend & Stockton LLP
Adobe Systems, Inc. 58083
Mailstop: IP Docketing - 22
1100 Peachtree Street, Suite 2800
Atlanta, GA 30309-4530
EXAMINER
RETTA, YEHDEGA
ART UNIT PAPER NUMBER
3688
NOTIFICATION DATE DELIVERY MODE
12/04/2017 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
KT S Docketing2 @ kilpatrick. foundationip .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ZACHARY MASON1
Appeal 2016-004127
Application 11/370,679
Technology Center 2600
Before CARL W. WHITEHEAD JR, MICHAEL J. STRAUSS and
JON M. JURGOVAN, Administrative Patent Judges.
WHITEHEAD JR., Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant is appealing the Final Rejection of claims 28^44 under
35 U.S.C. § 134(a). Appeal Brief 3. We have jurisdiction under 35 U.S.C.
§ 6(b) (2012).
We affirm.
Introduction
The invention is directed to “computing a predictive measure for an
advertising effectiveness metric for the one or more advertising keywords
based at least in part on one or more feature values of the keywords
employing a prediction function of the effectiveness metric.” Abstract.
1 According to Appellant, the real party in interest is Adobe Systems
Incorporated.
Appeal 2016/004127
Application 11/370,679
Illustrative Claim (disputed limitations emphasized)
28. A method comprising:
computing, by a computing device, metrics of one or more
keywords based on empirically-gathered data for the one or more
keywords',
adding the metrics to feature-specific metrics for at least two
features of a keyword, each of the features comprising a different
attribute or aspect descriptive of the keyword or usage of the keyword,
the keyword being different from the one or more keywords;
computing, by a computing device, a predictive measure for an
advertising effectiveness for the keyword based at least in part on the
feature-specific metrics; and
providing the keyword as an advertising keyword suggestion
based on the predictive measure for the advertising effectiveness
metric.
Rejections on Appeal
Claims 28^44 stand rejected under 35 U.S.C. § 101 because the
claimed invention is directed to non-statutory subject matter (abstract idea).
Final Rejection 2.
Claims 28-31 and 33-38 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Flake (U.S. Patent Application Publication
2005/0021441 Al; published January 27, 2005) and Veach (U.S. Patent
7,818,207 Bl; issued October 19, 2010). Final Rejection 3-5.
Claims 39^14 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Flake, Veach and Turney (U.S. Patent 6,470,307 Bl;
issued October 22, 2002). Final Rejection 5-6.
Claim 32 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Flake, Veach and Calabria (U.S. Patent Application
Publication 2005/0137939 Al; published June 23, 2005). Final Rejection 6-
7.
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Application 11/370,679
ANALYSIS
Rather than reiterate the arguments of Appellant and the Examiner,
we refer to the Appeal Brief (filed September 11, 2015), the Reply Brief
(filed March 16, 2016), the Answer (mailed February 12, 2016) and the
Final Rejection (mailed May 4, 2015) for the respective details.
35 U.S.C. § 101 Rejection
Appellant argues the 35 U.S.C. § 101 rejection of claims 28^44 is
erroneous because “(1) the Office Action fails to establish a prima facie of
subject matter ineligibility; (2) the claims are not directed to an abstract idea;
and (3) even if we assume arguendo that the claims are directed to an
abstract idea, the claims amount to significantly more than the abstract idea.”
Appeal Brief 5.
The U. S. Supreme Court provides a two-step test for determining
whether a claim is directed to patent-eligible subject matter under 35 U.S.C.
§ 101.2 3In the first step, we determine whether the claims are directed to one
or more judicial exceptions (i.e., law of nature, natural phenomenon, and
abstract ideas) to the four statutory categories of invention (i.e., process,
machine, manufacture, and composition of matter). EL (citations omitted)
(citing Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct.
1289, 1296-97 (2012)) (“Mayo”). Prior cases are replete with decisions
finding software that organizes and manipulates data, similar to that recited
by the present claims, to be directed to ineligible abstract ideas. See, e.g.,
Intellectual Ventures ILLC v. Erie Indem. Co., 850 F.3d 1315, 1327 (Fed.
Cir. 2017) (“creating an index and using that index to search for and retrieve
2 Alice Corp. Pty. Ltd. v. CLS Bank Inti, 124 S. Ct. 2347, 2354 (2014).
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Application 11/370,679
data”); Elec. Power Grp. v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir.
2016) (collection, manipulation, and display of data); Intellectual Ventures I
LLCv. Capital One Bank (USA), 792 F.3d 1363, 1370 (Fed. Cir. 2015)
(customizing information and presenting it to users based on particular
characteristics); Content Extraction and Transmission LLC v. Wells Fargo
Bank, National Ass'n, 776 F.3d 1343, 1347 (Fed. Cir. 2014) (“collecting
data,. . . recognizing certain data within the collected data set, and . . .
storing that recognized data in a memory”). In the second step, we “consider
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.” Id. (citing Mayo, 132
S. Ct. at 1297-98). 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 upon the [ineligible concept] itself.’” Id. (citing Mayo, 132 S.
Ct. at 1294).
Appellant contends the Examiner failed to establish a prima facie case
of subject matter ineligibility because “the Examiner fails to provide any
reasoned rationale identifying why ‘[sjtoring keyword features (attributes),
predicting advertising effectiveness’ are considered fundamental economic
practices.” Appeal Brief 6. We disagree. We agree with the Examiner’s
conclusion that “Storing keyword features (attributes), predicting advertising
effectiveness are fundamental economic practices and thus, the claims
include an abstract idea.” Final Rejection 2. One of the fundamental
purposes of advertising is to bring notice or attention to one’s product or
service in order in obtain financial gains when the attention results in a
demand for the product/service by the consumer. Determining the
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Application 11/370,679
effectiveness of advertising allows modification of advertising to maximize
product/service exposure while controlling advertising expenditures and
determination of a pricing point that results in profitability. Consequently,
we find the Examiner established aprima facie case of subject matter
ineligibility and that the claims are directed to an abstract idea.
Appellant contends the claims recite additional features that are
significantly more that an abstract idea because the claimed “features are
related to computing metrics from empirically-gathered data, adding the
metrics to feature-specific metrics, computing a predictive measure, using a
machine learning tool to generate a prediction function, etc., According to
Appellant, these features are directed to more than simply applying the
abstract idea of ‘keyword suggestion’ to a computer.” Appeal Brief 9.
Appellant further contends:
Like DDR Holdings and Klaustech, the claimed invention of the
present application involves a technology centric problem and
solution. The claimed solution is necessarily rooted in computer
technology (e.g., using metrics from other keywords) in order to
overcome a problem specifically arising in the realm of computer
networks (a keyword not having sufficient metrics associated
with it). The problem solved solely arises in the computing
context in which the keywords and associated metrics are found.
The claimed solution also improves the operations of a search
engine (e.g., an Internet-based search engine) by using known
metrics of keywords to predict an effectiveness measure of a
keyword for which such metrics are not known, and using this
effectiveness measure as one of the filters of the search engine to
suggest keywords.
Appeal Brief 10-11.
We disagree with Appellant’s contentions and agree with the
Examiner’s finding that:
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The claims 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. Note, that
the limitations, in the instant claims, are done by the generically
recited computing device. The limitations 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.
Final Rejection 2.
We find that the DDR Holdings and Klaustech precedent is not
applicable here because the claimed subject matter is the performance of a
business practice known from the pre-Internet era, and it is not necessarily
rooted in computer technology. The claimed subject matter pertains to the
well-known practice of determining the effectiveness of advertising by
gathering data and predicting the effectiveness of future advertising based
upon the gathered data. This case has greater similarity to Ultramercial, Inc.
v. Hulu, LLC, 772 F.3d 709 (Fed. Cir. 2014). The claims there were directed
to the abstract idea of showing an advertisement before delivering free
content. Id. at 715. Our reviewing court determined that the claims at issue
were devoid of a concrete or tangible application, and lacking particularity.
Id. The claims on appeal here have similar issues. As mentioned, several of
the recited steps do not recite any technological element that performs them.
Like Ultramercial, many of the steps of the recited claims are lacking a
concrete and tangible application recited with particularity. Consequently,
we sustain the 35 U.S.C. § 101 rejection of claims 28^14.
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Application 11/370,679
35 U.S.C. § 103 Rejection
Appellant argues the obviousness rejection of independent claims 28,
36 and 37 is erroneous because Veach fails to address the deficiency of
Flake. Appeal Brief 11. The Examiner finds:
Veach teaches predicting value when no historical information
or limited historical information of an ad of interest or keyword
is available (see col. 6 line 53-65)... if click per impression of
similar ads (ads with same or similar keywords) is available. It
would have been obvious to one of ordinary skill in the art at the
time of the invention to implement Veach’s prediction using
similar ad or keyword in the ad, in Flakes keyword suggestion
based on predictive measure if no data is available for the
keyword, as taught in Veach.
Final Rejection 4.
Appellant contends:
Veach discloses estimating a cost for an ad based on metrics of
keywords (e.g., clicks per impression). The keywords could be
of other ads. However, Veach does not disclose combining
metrics of the other keywords to create metrics of a different
keyword. Instead, Veach discloses using metrics of keywords of
another ad to estimate the cost for a particular ad. Thus, Veach
does not cure the deficiency of Flake.
Appeal Brief 12.
We do not find Appellant’s arguments persuasive because they are not
commensurate with the scope of the claims. The claimed metrics or
quantifiable measures are based upon empirically-gathered data and Veach
discloses determining metrics based upon empirically-gathered data. See
Veach column 6, lines 53-65. It is immaterial if Veach gathers data based
upon other ads as Appellant argues because the claims do not limit the data
gathering to a particular parameter or ad. Subsequently, we agree with the
Examiner’s findings and sustain the obviousness rejection of independent
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Application 11/370,679
claims 28, 36 and 37. Appellant argues the obviousness rejections of
dependent claims 29-35 and 38, 40, 43 and 44 are erroneous because neither
Turney and/or Calabria address the deficiency of the Flake/Veach
combination. Appeal Brief 13. We do not find Appellant’s argument
persuasive because we did not find the Flake/Veach combination to be
deficient.
Appellant contends:
Beyond using a machine learning algorithm to extract words
from a document, Turney does not describe using the machine
learning algorithm to compute metrics of features of keywords.
Thus, Turney fails to at least disclose “generating a prediction
function by employing a machine learning tool configured to
process the training set of keywords and the metrics,” “inputting
features of the keyword to the prediction function,” and “storing
an output of the prediction function based on the inputted
features as the feature-specific metrics” as recited in claim 41.
Appeal Brief 13.
Appellant further argues “the combination merely discloses using
machine learning to select concepts (as in Flake) or keywords that can make
up a concept (as in the combination of Flake and Turney). The combination
does not disclose a training set that includes metrics of keywords.” Reply
Brief 13. The Examiner’s findings do not address claim 41 with any
specificity instead the Examiner provides generic statements about the
combination of Flake and Turney in regard to claims 39—41. See Final
Rejection 5. We find Appellant’s arguments persuasive and reverse the
Examiner’s obviousness rejection of both dependent claim 41, as well as,
dependent claim 42 that is dependent upon claim 41.
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DECISION
The Examiner’s non-statutory rejection of claims 28 44 is affirmed.
The Examiner’s obviousness rejections of claims 28^40, 43 and 44
are affirmed.
The Examiner’s obviousness rejection of claims 41 and 42 is reversed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1). See 37 C.F.R.
§ 1.136(a)(l)(v).
AFFIRMED
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