Ex Parte MurgaiDownload PDFPatent Trial and Appeal BoardJan 31, 201813705719 (P.T.A.B. Jan. 31, 2018) Copy Citation 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. 13/705,719 12/05/2012 Nikhil Murgai 05793.3291-00000 7248 121629 7590 Finnegan/Capital One 901 New York Ave., NW Washington, DC 20001 EXAMINER LILLEMO, SHAWN D ART UNIT PAPER NUMBER 3682 NOTIFICATION DATE DELIVERY MODE 02/02/2018 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): CapOne_USPTO@finnegan.com regional-desk @ finnegan. com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte NIKHIL MURGAI Appeal 2016-005692 Application 13/705,719 Technology Center 3600 Before CARL W. WHITEHEAD JR., ERIC B. CHEN, and NABEEL U. KHAN, Administrative Patent Judges. CHEN, Administrative Patent Judge. DECISION ON APPEAL Appeal 2016-005692 Application 13/705,719 This is an appeal under 35 U.S.C. § 134(a) from the final rejection of claims 1—20, all the claims pending in the application. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. STATEMENT OF THE CASE Appellant’s invention relates to dynamically providing content to a user, including a recommendation matrix based on event data received from a client. (Abstract.) Claim 1 is exemplary, with disputed limitations in italics: 1. A mobile device for dynamically providing content to a user, comprising: a memory storing instructions; and a processor configured to execute the instructions to perform operations including: receiving, at the mobile device, a recommendation matrix from a remote computer, the recommendation matrix based on consumer data for the user provided by a third party, receiving, at the mobile device, a trigger event associated with a geographical location determined from a travel graph generated using location information provided by the mobile device', generating feature data based on the received trigger event, generating an offer score matrix based on the recommendation matrix and the feature data, the offer score matrix including score values associated with a set of offers to be provided to the user, determining a first offer from among the set of offers based on the score values associated with the set of offers, providing an identification of the first offer, and 2 Appeal 2016-005692 Application 13/705,719 receiving content associated with the first offer for display on the mobile device. Claims 1—20 stand rejected under 35 U.S.C. § 101 as directed to non- statutory subject matter. Claims 1—8 and 10—18 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Sista (US 2012/0123876 Al; May 17, 2012) and Song (US 2004/0153373 Al; Aug. 5, 2004). Claim 9 stands rejected under 35 U.S.C. § 103(a) as unpatentable over Sista, Song, and McReaken (US 8,942,991 B2; Jan. 27, 2015). Claims 19 and 20 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Sista, Song, and Nath (US 2012/0316956 Al; Dec. 13, 2012). §101 Rejection We are persuaded by Appellant’s arguments (App. Br. 7—8, 12—13; see also Reply Br. 2—3) that independent claims 1,11, and 19 comply with 35 U.S.C. § 101 as statutory subject matter. The Examiner found that claim 11 “is directed to delivering the highest scoring ad, using matrix mathematics to do the scoring” and “amounts to little more than saying ‘apply matrix mathematics’ to ad scoring.” (Final Act. 3.) The Examiner further found that “[considered as a whole, the limitations of these claims do not do significantly more than recite the abstract idea implemented using generic computer technology.” {Id. at 4.) Similarly, with respect to independent claims 1 and 19, the Examiner found that “the limitations in the ‘system’ and ‘device’ claim add a ‘mobile device’ having ‘memory storing instructions’ and ‘a processor 3 Appeal 2016-005692 Application 13/705,719 configured to execute the instructions’—collectively generic computer components that are well-understood, routine, and conventional” and accordingly, the claims “amount to nothing more than placing the abstract idea in a particular technological context.” {Id. at 5.) We do not agree. 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 contains an important implicit exception: laws of nature, natural phenomena, and abstract ideas are not patentable. Alice Corp. Pty. Ltd. v. CLS Bank Inti, 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. 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 those 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 4 Appeal 2016-005692 Application 13/705,719 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 upon the [ineligible concept] itself.’” Id. (alteration 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 (alteration 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 postsolution activity.’” Bilski v. Kappos, 561 U.S. 593, 610—11 (2010) (citation 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 11 is a computer-implemented method claim, which includes the instructional steps of: (i) “receiving ... a recommendation matrix”; (ii) “generating ... an offer score matrix”; and (iii) “determining ... a first offer from among the set of offers.” These are concepts related to matrix algebra. In particular, the instructional steps of claim 1 embrace the concept of multiplying a matrix (i.e., the claimed “recommendation matrix”) by a 5 Appeal 2016-005692 Application 13/705,719 vector (i.e., the claimed “feature data”) to generate a product vector (i.e., the claimed “offer score matrix”). Because the instructional steps of claim 11 are concepts relating to a mathematical relationship or formula, claim 11 is directed to a patent- ineligible abstract idea. See Parker v. Flook, 437 U.S. 584, 585 (1978) (holding that “a novel and useful mathematical formula” is ineligible for patent protection). Step two: Is there something else in the claims that ensures that they are directed to significantly more than a patent-ineligible concept? Because claim 11 is directed to an abstract idea, the question to be settled next, according to Alice, is whether claim 11 recites an element, or combination of elements, that is enough to ensure that the claim is directed to significantly more than an abstract idea. Claim 11 further includes the limitations “receiving, by the mobile device, a trigger event associated with a geographical location determined from a travel graph generated using location information provided by the mobile device” and “generating, by a processor included in the mobile device, feature data based on the received trigger event.” Accordingly, because claim 11 recites a “processor” that generates “feature data based on the received trigger event” and such trigger event is “associated with a geographical location determined from a travel graph generated using location information provided by the mobile device,” claim 11 requires more than generic computer elements to perform generic computer functions. In particular, the recitation of “a trigger event associated with a geographical location determined from a travel graph generated using location 6 Appeal 2016-005692 Application 13/705,719 information provided by the mobile device” enables the claimed “offer score matrix” to be generated based on geographical location. Thus, the recitation of a “mobile device” that receives “a trigger event associated with a geographical location determined from a travel graph generated using location information provided by the mobile device” imparts a meaningful limitation placed upon the application of the claimed mathematical relationship and the claim is not directed to performing the mathematical relationship on a computer alone. See SiRF Tech., Inc. v. Int’l Trade Comm’n, 601 F.3d 1319, 1333 (Fed. Cir. 2010) (“In order for the addition of a machine to impose a meaningful limit on the scope of a claim, it must play a significant part in permitting the claimed method to be performed, rather than function solely as an obvious mechanism for permitting a solution to be achieved more quickly, i.e., through the utilization of a computer for performing calculations.”). Accordingly, we are persuaded by Appellant’s argument that “these additional elements [of “receiving, by the mobile device, a trigger event associated with a geographical location determined from a travel graph generated using location information provided by the mobile device” and “generating, by a processor included in the mobile device, feature data based on the received trigger event”] comprise other meaningful limitations beyond generally linking the use of the judicial exception to a particular technological environment” (App. Br. 12) and “[l]ike the mobile device/server combination recited in [SiRF Tech.] these additional elements, considered in combination, quality as ‘significantly more’” (id. at 13). Thus, we do not agree with the Examiner that claim 11 is directed towards non-statutory subject matter. 7 Appeal 2016-005692 Application 13/705,719 Accordingly, we do not sustain the rejection of independent claim 11 under 35 U.S.C. § 101. Claims 12—18 depend from independent claim 11. We do not sustain the rejection of claims 12—18 under 35 U.S.C. § 101 for the same reasons discussed with respect to independent claim 11. Independent claims 1 and 19 recite limitations similar to those discussed with respect to independent claim 11. We do not sustain the rejection of claims 1 and 19, as well as dependent claims 2—10 and 20, for the same reasons discussed with respect to claim 11. §103 Rejection—Sista and Song We are unpersuaded by Appellant’s arguments (App. Br. 14—15; see also Reply Br. 5—7) that the combination of Sista and Song would not have rendered obvious independent claim 1, which includes the limitation “receiving, at the mobile device, a recommendation matrix from a remote computer, the recommendation matrix based on consumer data for the user provided by a third party.” The Examiner found that the Click Through Rate (CTR) matrix of Sista, which receives ads from an ad server, corresponds to the limitation “receiving, at the mobile device, a recommendation matrix from a remote computer.” (Final Act. 7; see also Ans. 5—6.) The Examiner further found that the context-aware recommender system of Song, which populates a dataset based on purchase or browsing history, corresponds to the limitation “based on consumer data for the user provided by a third party.” (Final Act. 8.) We agree with the Examiner’s findings. Sista relates “to recommending and presenting advertisements on display pages over networks of communication devices and computers” 8 Appeal 2016-005692 Application 13/705,719 (12), for example, mobile phones or PDAs (14). Sista explains that “the present invention . . . comprises . . . recommending and presenting advertisements with display pages over networks of communication devices and computers.” (17.) Sista further explains that “[t]he method uses the steps of receiving a display page request from a user, and creating a request vector comprising a set of terms extracted from a URL of the display page request as well as terms from other information associated with the display page request,” which is followed by “matching the request vector to a row in a Click Through Rate (CTR) matrix, and selecting ad vectors from the matched row and retrieving the CTR of the selected ad vectors from the CTR matrix.” (Id.) Because Sista explains that the communication device (e.g., mobile phone or PDA) receives recommendations and presents advertisements through the use of the CTR matrix, Sista teaches the limitation “receiving, at the mobile device, a recommendation matrix from a remote computer.” Appellant argues that “[njothing in Sista discloses or suggests a ‘recommendation matrix based on consumer data for the user provided by a third party.’” (App. Br. 15.) However, the Examiner cited to Song, rather than Sista, for teaching the limitation “based on consumer data for the user provided by a third party.” (Final Act. 8.) Appellant further argues that “[njothing in Sista discloses or suggests . . . ‘receiving, at the mobile device, a recommendation matrix, ’ as recited in independent claim 1 and similarly recited in independent claim 11” and “[tjhe only teaching of a matrix in Sista is a CTR matrix, and the CTR matrix is only used by a web server to select ads.” (App. Br. 15 (emphases omitted); see also Reply Br. 6—7.) Contrary to Appellant’s arguments, Sista 9 Appeal 2016-005692 Application 13/705,719 explains that “[t]he present disclosure relates generally to networks, and more specifically to recommending and presenting advertisements on display pages over networks of communication devices.” (12.) Thus, we agree with the Examiner that the combination of Sista and Song would have rendered obvious independent claim 1, which includes the limitation “receiving, at the mobile device, a recommendation matrix from a remote computer, the recommendation matrix based on consumer data for the user provided by a third party.” We are further unpersuaded by Appellant’s arguments (App. Br. 16; see also Reply Br. 7—8) that the combination of Sista and Song would not have rendered obvious independent claim 1, which includes the limitation “receiving, at the mobile device, a trigger event associated with a geographical location determined from a travel graph generated using location information provided by the mobile device.” The Examiner found that the smart environment of Song, which includes records of geographic location, corresponds to the limitation “receiving, at the mobile device, a trigger event associated with a geographical location determined from a travel graph generated using location information provided by the mobile device.” (Final Act 8.) We agree with the Examiner’s findings. Song relates to “[a] context-aware service recommender system [that] receives current user context and recommends a list of browser-based services to a user on a mobile devices.” (Abstract.) In particular, Song explains that “[t]he smart environment 202 generally includes a plurality of sensors and a context server” and that “[t]he sensor detects identification information for the mobile device and records other information as well, 10 Appeal 2016-005692 Application 13/705,719 such as the date, time and geographic location.” (| 28.) Because Song explains that a mobile device includes smart environment 202, which includes a sensor that records geographic location, Song teaches the limitation “receiving, at the mobile device, a trigger event associated with a geographical location determined from a travel graph generated using location information provided by the mobile device.” Appellant argues that “Song discloses prediction algorithms based on a matrix of user, context, and service elements” but “[njothing in Song discloses or suggests a ‘travel graph,’ let alone a ‘a travel graph generated using location information provided by the mobile device’ (claims 1 and 11) or ‘generating a travel graph based on location information provided by the mobile device’ (claim 19).” (App. Br. 16 (emphases omitted).) However, Appellant merely provides a conclusory statement (see id.) that the Song does not teach the limitation “receiving, at the mobile device, a trigger event associated with a geographical location determined from a travel graph generated using location information provided by the mobile device” without providing any persuasive arguments or evidence as to why the Examiner’s findings are erroneous. Thus, we agree with the Examiner that the combination of Sista and Song would have rendered obvious independent claim 1, which includes the limitation “receiving, at the mobile device, a trigger event associated with a geographical location determined from a travel graph generated using location information provided by the mobile device.” Accordingly, we sustain the rejection of independent claim 1 under 35 U.S.C. § 103(a). Claims 2—8 and 10 depend from claim 1, and Appellant has not presented any additional substantive arguments with respect to these 11 Appeal 2016-005692 Application 13/705,719 claims. Therefore, we sustain the rejection of claims 2—8 and 10 under 35 U.S.C. § 103(a), for the same reasons discussed with respect to independent claim 1. Independent claim 11 recites limitations similar to those discussed with respect to independent claim 1, and Appellant has not presented any substantive arguments with respect to this claim. We sustain the rejection of claim 11, as well as dependent claims 12—18, for the same reasons discussed with respect to claim 1. §103 Rejection—Sista, Song, andMcReaken Although Appellants nominally argue the rejection of dependent claim 9 separately (App. Br. 16), the arguments presented do not point out with particularity or explain why the limitations of this dependent claim are separately patentable. Instead, Appellants merely argue that claim 9 “depend[s] from one of claims 1,11, and 19, and [is] patentable at least by virtue of this dependence” and “also recite additional elements distinguishing them over the cited references.” (Id.) We are not persuaded by these arguments for the reasons discussed with respect to claim 1, from which claim 9 depends. Accordingly, we sustain this rejection. §103 Rejection—Sista, Song, and Nath With respect to independent claim 19, Appellant merely reiterates arguments previously presented with respect to independent claim 1. (App. Br. 16.) Claim 20 depends from claim 19. We sustain the rejection of claims 19 and 20 under 35 U.S.C. § 103(a), as unpatentable over Sista, Song, 12 Appeal 2016-005692 Application 13/705,719 and Nath for the same reasons discussed with respect to rejection of claim 1 under 35 U.S.C. § 103(a) as unpatentable over Sista and Song. DECISION The Examiner’s decision rejecting claims 1—20 under 35 U.S.C. § 101 is reversed. The Examiner’s decision rejecting claims 1—20 under 35 U.S.C. § 103(a) 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). AFFIRMED 13 Copy with citationCopy as parenthetical citation