Ex Parte NICE et al

Patent Trial and Appeal Board

Aug 30, 2018

12683618 (P.T.A.B. Aug. 30, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/683,618 01/07/2010
45809 7590 09/04/2018
SHOOK, HARDY & BACON L.L.P.
(MICROSOFT TECHNOLOGY LICENSING, LLC)
INTELLECTUAL PROPERTY DEPARTMENT
2555 GRAND BOULEVARD
KANSAS CITY, MO 64108-2613
NIRNICE
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.
328438.01/MFCP.152635 3512
EXAMINER
DEGA, MURALI K
ART UNIT PAPER NUMBER
3696
NOTIFICATION DATE DELIVERY MODE
09/04/2018 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):
IPDOCKET@SHB.COM
IPRCDKT@SHB.COM
usdocket@microsoft.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte NIR NICE, EHUD WIEDER, and ARIE FRIEDMAN
Appeal2017-002091
Application 12/683,618
Technology Center 3600
Before JEREMY J. CURCURI, BARBARA A. BENOIT, and
SHARON PENICK, Administrative Patent Judges.
CURCURI, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
rejection of claims 1--4 and 6-21. See Final Act. 1. We have jurisdiction
under 35 U.S.C. § 6(b).
Claims 1--4 and 6-21 are rejected under 35 U.S.C. § 101 as directed to
a judicial exception without significantly more. Final Act. 2--4.
Claims 1--4 and 6-21 are rejected underpre-AIA 35 U.S.C. § 103(a)
as obvious over Cochran (US 2005/0010536 Al; Jan. 13, 2005),
Hatakeyama (US 2007/0180249 Al; Aug. 2, 2007), Sitrick (US
Appeal2017-002091
Application 12/ 683,618
2008/0148067 Al; Jun. 19, 2008), and Hoffberg (US 2007/0016476 Al; Jan.
18, 2007). Final Act. 5-12.
We reverse.
STATEMENT OF THE CASE
Appellants' invention relates to "maintaining privacy while delivering
content, such as advertisements, based on encrypted user profile identifiers."
Spec. ,r 1. Claim 1 is illustrative and reproduced below:
1. A system for delivering content to a user based on
encrypted user profile identifiers, the system comprising:
one or more processors;
one or more computer storage media storing computer-
executable instructions that, when executed by the one or more
processors, cause the one or more processors to:
receive, from a first device, one or more encrypted
user profile identifiers comprising user profile identifiers that
were encrypted by the first device using a public key provided
to the first device by a second device, wherein the first device is
different from the second device, and wherein the user profile
identifiers comprise terms corresponding to one or more of user
preferences or user activities that are associated with the user;
receive, from the second device, one or more
trapdoors comprising encrypted defined profile identifiers, the
encrypted defined profile identifiers comprising defined profile
identifiers that were encrypted by the second device using a
private key, wherein the defined profile identifiers comprise
generic content topics, and wherein one or more content rules
are associated with each of the one or more trapdoors and the
one or more content rules include a description of content to
provide to the user;
match the one or more encrypted user profile
identifiers with at least one of the one or more trapdoors;
determine an identification of content to deliver to
the user based on the associated one or more content rules and
the matching of the one or more encrypted user profile
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identifiers with the at least one of the one or more trapdoors;
and
deliver content to the user based on the
identification of content.
PRINCIPLES OF LAW
We review the appealed rejections for error based upon the issues
identified by Appellants, and in light of the arguments and evidence
produced thereon. Ex parte Frye, 94 USPQ2d 1072, 107 5 (BP AI 2010)
(precedential).
ANALYSIS
THE 35 U.S.C. § 101 REJECTION OF CLAIMS 1--4 AND 6-21
Contentions
The Examiner concludes claims 1--4 and 6-21 are directed to a
judicial exception without significantly more. Final Act. 2--4; see also Ans.
5-7. The Examiner concludes
The claims merely amount to the application or
instructions to apply the abstract idea (i.e. delivering content
based on certain rules) using computers such as collecting and
comparing known information (Classen) and data recognition
and storage (Content Extraction), and is considered to amount
to nothing more than requiring generic computer systems ( e.g. a
computer system comprising a generic database; a generic
element for providing a network based communications; a
generic element for receiving and transmitting information; and
a generic element to deliver content to users) to merely carry
out the abstract idea itself. As such, the claims, when
considered as a whole, are nothing more than the instruction to
implement the abstract idea (i.e. delivering content to users
based on certain rules) in a particular, albeit well-understood,
routine and conventional technological environment.
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Final Act. 4.
Appellants present the following principal arguments:
1. The claims are not directed to an abstract idea. See App. Br.
18-20; see also Reply Br. 4--7. "In particular, the claims do not merely
recite 'delivering content to users based on certain rules.' Instead, claim 1,
includes a system for delivering content to a user based on encrypted user
profile identifiers." App. Br. 18; see also App. Br. 18-19 (discussing
specific claim elements). "Th[ e] characterization [ of the claims by the
Examiner] ignores specific elements included in the claims, such as those
discussed above." App. Br. 19.
11. Even if the claims are directed to an abstract idea, the claims
amount to significantly more than the abstract idea. See App. Br. 20-24; see
also Reply Br. 9-11.
Our Review
In Alice Corp. Pty. Ltd. v. CLS Bankint'l, 134 S. Ct. 2347 (2014), the
Supreme Court applied the framework as set forth in Mayo Collaborative
Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289 (2012) for determining
whether the claims are directed to patent-eligible subject matter. 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 [the judicially-recognized] patent-
ineligible concepts." Id. If the claims are directed to a patent-ineligible
concept, then the second step in the analysis is to consider the elements of
the claims "individually and 'as an ordered combination' to determine
whether the additional elements 'transform the nature of the claim' into a
patent-eligible application." Id. (quoting Mayo, 132 S. Ct. at 1298, 1297).
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However, the Federal Circuit has articulated that "the first step in the Alice
inquiry ... asks whether the focus of the claims is on the specific asserted
improvement in computer capabilities ... or, instead, on a process that
qualifies as an 'abstract idea' for which computers are invoked merely as a
tool." Enfzsh, LLC v. Microsoft Corp., 822 F.3d 1327, 1335-36 (Fed. Cir.
2016). Accordingly, the Federal Circuit determined, if "the claims are
directed to a specific implementation of a solution to a problem in the
software arts," then "the claims at issue are not directed to an abstract idea."
Id. at 1339. The Federal Circuit also determined claims directed to "limited
rules in a process specifically designed to achieve an improved technical
result in conventional industry practice" are not directed to an abstract idea.
McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299, 1316 (Fed.
Cir. 2016).
We agree with Appellants that the claims are directed to delivering
content to a user based on encrypted user profile identifiers, and we
conclude the claims focus on a specific improvement in computer-related
technology and are analogous to McRO. See App. Br. 18-20. In McRO, the
court found that a claim reciting a system of automated facial animation
through the use of rules, rather than by artists setting weights, to automate
tasks that humans perform is directed to patent-eligible subject matter.
McRO, 837 F.3d at 1313. The court found that the process performed by
human animators is not the same as the rules-based process recited in the
claimed automation, as the human process is driven by subjective
determinations. McRO, 837 F.3d at 1314. Thus, the court in McRO held
that it was the use of rules that improved the technological process, and by
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incorporating the specific rules, the claim is limited to a specific process for
animation that is not an abstract idea. McRO, 837 F.3d at 1315-16.
Additionally, on the basis of this record, we are persuaded by
Appellants that the claims present an analogous situation to that in BASCOM
Global Internet Services, Inc. v. AT&T Mobility LLC, 827 F.3d 1341 (Fed.
Cir. 2016). Reply Br. 8-10. In BASCOM, the claim was directed to the
concept of "the installation of a filtering tool at a specific location, remote
from the end-users, with customizable filtering features specific to each end
user." Id. at 1350. The Federal Circuit explained that "an inventive concept
can be found in the non-conventional and non-generic arrangement of
known, conventional pieces." Id. The court in BASCOM ultimately
concluded the particular arrangement of elements to be a technical
improvement over prior art ways of filtering such content, and read the
claims as improving an existing technological process. Id. at 13 51.
We conclude the instant claim limitations are similar to the claim
limitations at issue in McRO and BASCOM. The claims do not merely
deliver content to a user based on user profile identifiers and content rules;
rather, the claim limitations recite a specific technique that "provide[ s]
methods for minimizing the exposure of user information to a delivery
engine while preserving the ability of the delivery engine to provide
personalized content to the user." Spec. ,r 15. As such, the claim limitations
are directed to improving a technological process. Accordingly, we do not
sustain the Examiner's rejection of independent claim 1.
Independent claims 8 and 14 each recite, in essence, the same claim
limitations directed to delivering content to a user based on encrypted user
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profile identifiers. We, therefore, also do not sustain the Examiner's
rejection of independent claims 8 and 14 for the same reasons.
Claims 2-7 and 21 depend from claim 1; claims 9-13 depend from
claim 8; and claims 15-20 depend from claim 14. We, therefore, also do not
sustain the Examiner's rejection of dependent claims 2-7, 9-13, and 15-21
for the same reasons.
THE OBVIOUSNESS REJECTION OF CLAIMS 1--4 AND 6-21 OVER COCHRAN,
HATAKEYAMA, SITRICK, AND HOFFBERG
Contentions
The Examiner finds Cochran, Hatakeyama, Sitrick, and Hoffberg
teach all limitations of claim 1. Final Act. 5-9; see also Ans. 2--4.
In particular, the Examiner maps Cochran's encrypted credentials (a
password, a user identifier) to the "one or more encrypted user profile
identifiers" of claim 1. Final Act. 5---6 ( citing Cochran ,r 98).
In particular, the Examiner maps Cochran's license ( created by the
content provider) that includes encrypted information identifying the
requested content, identifying information concerning the service provider,
and a unique watermark to the "one of the one or more trapdoors" of claim
1. Final Act. 6 (citing Cochran ,r 12).
The Examiner finds Cochran teaches "match[ ing] the one or more
encrypted user profile identifiers with at least one of the one or more
trapdoors" as recited in claim 1. Final Act. 8 (citing Cochran ,r 152).
Appellants present, among other arguments, the following principal
arguments:
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Cochran fails to teach matching the encrypted user credentials
of Cochran with any information included in the license of
Cochran. Thus, Cochran fails to teach matching the items
relied upon by the Office as teaching the encrypted user
profile identifiers and the trapdoors of claim 1. The Office
does not indicate otherwise. Instead, the Office states that
Cochran teaches sending a matching encrypted copy of content
specified by two hash functions ( a hash of a movie and a hash
of a watermark) to a consumer. FOA mailed 9/9/15, at 8 (citing
Cochran, at ,r [O 152]). The Office appears to rely on the mere
use of the word "matching" in Cochran to support a finding that
Cochran teaches the "match" included in claim 1. But the
"matching" that takes place in Cochran pertains to determining
encrypted content that is specified by two hashes. This is
entirely unrelated to the matching feature included in claim 1,
which provides for matching one or more encrypted user profile
identifiers, which "compris[ e] user profile identifiers that were
encrypted ... wherein the user profile identifiers comprise
terms corresponding to one or more of user preferences or user
activities that are associated with the user," with at least one of
the one or more trapdoors, which "compris[ e] encrypted
defined profile identifiers, the encrypted defined profile
identifiers comprising defined profile identifiers that were
encrypted ... wherein the defined profile identifiers comprise
generic content topics." The mere use of the word "matching"
in Cochran is insufficient to teach this particular feature
included in claim 1.
App. Br. 13-14.
Our Review
Cochran discloses encrypted credentials ( a password, a user
identifier). Cochran ,r 98. The Examiner maps Cochran's encrypted
credentials (a password, a user identifier) to the "one or more encrypted user
profile identifiers" of claim 1. Final Act. 5---6 ( citing Cochran ,r 98).
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Cochran discloses a license (created by the content provider) that
includes encrypted information identifying the requested content, identifying
information concerning the service provider, and a unique watermark.
Cochran ,r 12. The Examiner maps Cochran's license (created by the
content provider) that includes encrypted information identifying the
requested content, identifying information concerning the service provider,
and a unique watermark to the "one of the one or more trapdoors" of claim
1. Final Act. 6 ( citing Cochran ,r 12).
Cochran at ,r 152 discloses the following:
The receipt Bob receives from Trent not only informs
Bob that Carol has been authorized as a consumer, but it also
directs Bob to send the matching encrypted copy of the content
specified by the hash H(M) and the hash H(D1) to Carol.
Cochran ,r 152.
We agree with Appellants' arguments that the cited disclosures in
Cochran do not teach "match the one or more encrypted user profile
identifiers with at least one of the one or more trapdoors" as recited in claim
I. See App. Br. 13-14.
In short, we do not see how the disclosure in Cochran at ,r 152 teaches
matching Cochran's encrypted credentials ( a password, a user identifier)
with Cochran's license created by the content provider.
At best, Cochran at ,r 152 describes a matching encrypted copy of the
content specified by the hash H(M) and the hash H(D1). That is, Cochran
determines encrypted content specified by two hashes. See Cochran ,r 152.
For these reasons, we do not sustain the Examiner's rejection of claim
1.
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Independent claim 8 recites "matching of the one or more encrypted
user profile identifiers with the at least one of the one or more trapdoors."
Independent claim 14 recites "matching the one or more encrypted user
profile identifiers with at least one of the one or more trapdoors."
We, therefore, also do not sustain the Examiner's rejection of
independent claims 8 and 14 for the same reasons.
Claims 2-7 and 21 depend from claim 1; claims 9-13 depend from
claim 8; and claims 15-20 depend from claim 14. We, therefore, also do not
sustain the Examiner's rejection of dependent claims 2-7, 9-13, and 15-21
for the same reasons.
ORDER
The Examiner's decision rejecting claims 1--4 and 6-21 is reversed.
REVERSED
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