Ex Parte Pradeep et al

Patent Trial and Appeal Board

Jan 25, 2018

12608685 (P.T.A.B. Jan. 25, 2018)

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.
12/608,685 10/29/2009 Anantha Pradeep 20225/035 6934
81905 7590 01/29/2018
Hanley, Flight & Zimmerman, LLC (Nielsen)
150 S. Wacker Dr. Suite 2200
Chicago, IL 60606
EXAMINER
SKIBINSKY, ANNA
ART UNIT PAPER NUMBER
1631
NOTIFICATION DATE DELIVERY MODE
01/29/2018 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):
j flight @ 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 ANANTHA PRADEEP, ROBERT T. KNIGHT, and
RAMACHANDRAN GURUMOORTHY
Appeal 2017-004109
Application 12/608,6851
Technology Center 1600
Before DEMETRA J. MILLS, FRANCISCO C. PRATS, and
ELIZABETH A. LaVIER, Administrative Patent Judges.
MILLS, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134. The Examiner has rejected
the claims as directed to non-statutory subject matter. We have jurisdiction
under 35 U.S.C. § 6(b). We affirm.
1 According to Appellants, the real party in interest is The Nielsen Company
(US), LLC. App. Br. 2.
Appeal 2017-004109
Application 12/608,685
NATURE OF THE INVENTION
According to the Specification, p. 1, the “present disclosure relates to
using neuro-response data to generate ratings predictions.” “The present
application discloses that ratings for previously presented media are used to
predict ratings for other media based on the neuro-response data. See id.
[M[0079], [0082].” App. Br. 11.
Conventional systems for performing ratings predictions of
media materials such as programming and advertising are limited.
Some ratings predictions can be made based on survey and focus group
based feedback. However, conventional systems for predicting ratings
are subject to syntactic, metaphorical, cultural, and interpretive errors
that prevent accurate and repeatable predictions. . . . Consequently, it
is desirable to provide improved methods and apparatus for generating
ratings predictions by using neuro-response data such as central
nervous system, autonomic nervous system, and effector system
measurements.
Spec. [0002]-[0003].
The following claim is representative.
21. A method of transforming neuro-response data into ratings
predictions, the method comprising:
identifying, by executing an instruction with a processor, first
neuro-response data including multiple simultaneously occurring
neurological activities collected from a first subject exposed to first
media via multiple channels, the first neuro-response data exhibiting a
first neuro-response pattern;
identifying, by executing an instruction with the processor,
second neuro-response data based on a threshold of similarity of the
first neuro-response pattern to a second neuro-response pattern
associated with the second neuro-response data, the second neuro­
response data including multiple simultaneously occurring
neurological activities collected from a second subject exposed to
second media, the second media having been broadcast before a time
of broadcast of the first media;
identifying, by executing an instruction with the processor, a
first rating associated with the second media; and
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predicting, by executing an instruction with the processor, a
second rating for the first media based on the first rating.
Cited References
Burton
Viirre
Grounds of Rejection
Claims 21^44 are rejected under 35 U.S.C. § 101 because the claimed
invention is directed to non-statutory subject matter.
FINDINGS OF FACT
The Examiner’s findings of fact are set forth in the Final Action at
pages 3-8.
US 2004/0193068 A1 Sept. 30, 2004
US 2005/0043646 A1 Feb. 24. 2005
PRINCIPLES OF LAW
“[T]he examiner bears the initial burden, on review of the prior art or
on any other ground, of presenting a prima facie case of unpatentability. If
that burden is met, the burden of coming forward with evidence or argument
shifts to the applicant.” In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992)
(emphasis added); see also Hyatt v. Dudas, 492 F.3d 1365, 1369-71 (Fed.
Cir. 2007) (once the examiner presents a prima facie case for
unpatentability, e.g., under § 112, the burden is properly shifted to
applicant).
‘“Phenomena of nature, though just discovered, mental processes, and
abstract intellectual concepts are not patentable, as they are the basic tools of
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scientific and technological work.’” Mayo Collaborative Servs. v.
Prometheus Labs., Inc., 566 U.S. 66, 71 (2012) (quoting Gottschalkv.
Benson, 409 U.S. 63, 67 (1972)). Claims directed to nothing more than
abstract ideas (such as mathematical algorithms), natural phenomena, and
laws of nature are not eligible for patent protection. Diamond v. Diehr, 450
U.S. 175, 185 (1981); accord Manual of Patent Examining Procedure
(MPEP) § 2106 (II) (discussing Diehr); see also Parker v. Flook, 437 U.S.
584, 592-94 (1978) (if, once the mathematical algorithm is removed from
consideration, if nothing patentable remains, the claims are not patent-
eligible).
In analyzing patent-eligibility questions under 35 U.S.C. § 101, the
Supreme Court instructs us to “first determine whether the claims at issue
are directed to a patent-ineligible concept.” Alice Corp. Pty. Ltd. v. CIS
Banklnt’l, 134 S. Ct. 2347, 2355 (2014). If the initial threshold is met, we
then move to a second step and “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. (quoting Mayo, 566 U.S. at 97).
Non-statutory subject matter §101
The Examiner argues that
Claims 21-44 are rejected under 35 U.S.C. [§] 101 because the
claimed invention is directed to a judicial exception (i.e. [,] a law of
nature, a natural phenomenon or an abstract idea) without
significantly more. Claims 21-44 are directed to identifying data
which is neuro-response data and identifying or predicting a rating
associated with the media that is associated with neuro-response data,
which is essentially determining more data. As a whole the method
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relies on the abstract ideas of analyzing information by comparing
information, categorizing, organizing and transmitting information
and organizing information through mathematical correlations. The
claims do not include additional elements that are sufficient to amount
of significantly more than the judicial exception because it is routine
and conventional to perform the acts of identifying neuro-response
data from a subject. It is also routine and conventional to collect
neuro[-]response data and simultaneously analyze the data in real­
time, as evidenced in Burton et al. (2004/0193068, par. 0165) and
Viirre et al. (2005/0043646).
Other elements of the method and system include using a data
collection device, a processor and analyzer to run a program for
deriving data based on initial data which is a recitation of generic
computer structure that serves to perform generic computer functions
that are well-understood, routine, and conventional activities
previously known to the pertinent industry. Viewed as a whole, these
additional claim element(s) do not provide meaningful limitation(s) to
transform the abstract idea into a patent eligible application of the
abstract idea such that the claim(s) amounts to significantly more than
the abstract idea itself. Therefore, the claim(s) are rejected under 35
U.S.C. [§] 101 as being directed to non-statutory subject matter.
Ans. 3—4.
Appellants contend that, “the Examiner has misapplied the law by
overgeneralizing the claims and arguing that over-generalization is non-
statutory instead of addressing the actual language of the claims at issue.
This is unmistakable legal error.” App. Br. 14. More particularly,
Appellants argue that
the Examiner has ignored the actual language of claim 21 in favor of a
strawman abstraction to create an alleged abstract idea. In alleging
that claim 21 can be abstracted to the concept of “comparing
information, categorizing, organizing and transmitting information
and organizing information through mathematical correlations,” the
Examiner has clearly oversimplified the claim language. The Federal
Circuit cautioned against such blatant oversimplification of claim
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language in Enfish, LLC v. Microsoft Corp., No. 15-1244, slip op. at
14 (Fed. Cir., May 12, 2016), stating that “describing claims at such a
high level of abstraction and untethered from language of the claims
all but ensures that the exceptions to § 101 swallow the rule.”
(Emphasis added). As noted above, the USPTO recognized the
importance of the Federal Circuit’s guidance in Enfish in the May 19,
2016, Memorandum.
App. Br. 16. Appellants further argue that
[NJeither the 2015 Update nor the 2016 Memorandums ignore
the actual language of the claim in favor of an overgeneralization of
the claim, but looks at the claim as a whole. The 2015 Update drives
this point home further in Example 27 where it is pointed out that
“there is no apparent exception recited in the [following example]
claim”:
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15. A method for loading BIOS into a local computer system
which has a system processor and volatile memory and non-volatile
memory, the method comprising the steps of:
(a) responding to powering up of the local computer system by
requesting from a memory location remote from the local
computer
system the transfer to and storage in the volatile memory if the
local computer system of BIOS configured for effective use of the
local computer system,
(b) transferring and storing such BIOS, and
(c) transferring control of the local computer system to such
BIOS.
Id. (emphasis added). Significantly, the 2015 Update does not
overgeneralize this claim into “requesting, transferring and storing.”
Such an approach would be error as it would ignore the actual
language of the claim as a whole. Instead, it states “there is no
apparent exception recited in the claim,” and that “even if the claim
did recite a judicial exception, the claim is not attempting to tie up any
such exception so that others cannot practice it.”
App. Br. 18-19.
The Examiner responds, arguing that
With regard to the citation of BIOS, Example 27, Examiner
agrees that the claim in the BIOS court decision does not recite a
judicial exception. In contrast, [Appellants’] claims recite data
analysis steps that can be carried out as mental steps while looking at
the collected neuro-response data. These steps at least include
identifying neuro-response data having a pattern, identifying neuro­
response data based on a threshold of similarity, identifying a first
rating associated a media and predicting a second rating. Given the
neuro-response data, the limitations of the claims can be carried out as
mental steps or with the aid of paper/pen.
With regard to [Appellants’] arguments that the claims can still
amount to significantly more when considered with the other elements
of the claims and as an ordered combination, it is noted that the
“additional elements” have been considered. Claims 21-27, 35-40 and
41-43 are drawn to information data processing using a generic
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computer while claims 28-34 recite “additional [element]” limitations
performed outside the environment of the computer including “a data
collection device” to obtain neuro-response data. However, Burton et
al. (2004/0193068, par. 0165) and Viirre et al. (2005/0043646) show
evidence that it is routine [and] conventional to collect neuro[-
]response data and even to simultaneously analyze the data in real­
time.
Ans. 6-7.
ANALYSIS
We adopt the Examiner’s findings of fact, reasoning on scope and
content of the claims and prior art (e.g., what was well known, routine,
and/or conventional in the field), and conclusions set out in the Final Action
and Answer. See Final Action 2-4; Ans. 2-8. Only those arguments made
by Appellants in the Appeal Brief and properly presented in the Reply Brief
have been considered in this Decision. Arguments not so presented in the
Briefs are waived. See 37 C.F.R. § 41.37(c)(l)(iv) (2015); see also Ex parte
Borden, 2010 WF 191083 at *2 (BPAI 2010) (informative) (“Any bases for
asserting error, whether factual or legal, that are not raised in the principal
brief are waived.”).
First, we determine whether claim 1 is directed to a patent ineligible
concept. We agree with the Examiner that the claims recite an abstract idea,
without more. Ans. 3. We agree with the Examiner that,
As a whole the method relies on the abstract ideas of analyzing
information by comparing information, categorizing, organizing and
transmitting information and organizing information through
mathematical correlations. The claims do not include additional
elements that are sufficient to amount of significantly more than the
judicial exception because it is routine and conventional to perform
the acts of identifying neuro-response data from a subject. It is also
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routine and conventional to collect neuro-response data and
simultaneously analyze the data in real-time,
as evidenced in Burton and Viirre. Ans. 3—4.
Next we move to the second step delineated in Alice Corp. and
“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. (quoting Mayo,
566 U.S. at 97). We do not find that the elements of claim 21, individually
or ‘as an ordered combination’, transform the nature of the claim into a
patent-eligible application. The claim 21 steps of identifying data, by
executing an instruction with a processor, and manipulating data, are generic
computer implementation steps, which do not transform the nature of the
claim into a patent-eligible application.
We also agree with the Examiner that Example 27 of the Appendix 1
of the .July 2015 Update: Subject Matter Eligibility, 80 Fed. Reg. 45,429
(July 30, 2015) (“2075 Update”), differs from the subject matter presently
claimed for the reasons provided in the Answer at pages 6-7. Nor do we
find that the specific computer function claim steps provide meaningful
limitations to transform the abstract idea into a patent eligible application of
the abstract idea such that the claims amounts to significantly more than the
abstract idea itself. Ans. 4. “The case law has identified several types of
limitations that frequently fail to provide an inventive concept, including
illusory limitations (e.g., generic computer implementation) and contextual
limitations (e.g., field of use, extra-solution activity).” Amdocs (Israel) Ltd.
v. Openet Telecom, Inc., 841 F.3d 1288, 1312 (2016).
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Furthermore, the Examiner finds that it is routine in the art to collect
neuro response data and simultaneously analyze the data in real-time, as
evidenced in Burton and Viirre. Ans. 4. Appellants fail to address either
Burton or Viirre and the conventionality of their teachings regarding
collection and analysis of neuro response data. In addition, Appellants argue
that the Examiner admitted in a paper dated May 5, 2015 that the solution of
the claimed invention is not found in the prior art. App. Br. 26. However, a
careful review of this paper indicates that the Examiner withdrew a prior art
rejection over Heuter in view of Surve and Gordon.2 Appellants do not
address the relevance of Burton and Viirre either in the Brief or Reply Brief.
Appellants’ claims recite data analysis steps that can be carried out as mental
steps when looking at the collected neuro-response data. Ans. 6.
The lack of patentable subject matter rejection is affirmed for the
reasons of record.
CONCLUSION OF LAW
The cited references and facts of record support the Examiner’s lack
of patentable subject matter rejection is affirmed for the reasons of record.
All pending, rejected claims fall.
No more time for taking any subsequent action in connection with this
appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
2 Final Action dated May 5, 2015, p. 5.
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