Ex Parte Pradeep et al

Patent Trial and Appeal Board

Feb 27, 2018

13730511 (P.T.A.B. Feb. 27, 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.
13/730,511 12/28/2012 Anantha Pradeep 20225/001US03 4368
81905 7590 03/01/2018
Hanley, Flight & Zimmerman, LLC (Nielsen)
150 S. Wacker Dr. Suite 2200
Chicago, IL 60606
EXAMINER
TROTTER, SCOTT S
ART UNIT PAPER NUMBER
3696
NOTIFICATION DATE DELIVERY MODE
03/01/2018 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 2016-0050791
Application 13/730,5112
Technology Center 3600
Before JOSEPH A. FISCHETTI, NINA L. MEDLOCK, and
BRADLEY B. BAYAT, Administrative Patent Judges.
BAYAT, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the decision
rejecting claims 2—20 under 35 U.S.C. § 101 as directed to non-statutory
subject matter. Final Act. 2—3. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 Our Decision references Appellants’ Appeal Brief (“Appeal Br.,” filed
Oct. 6, 2015), and Reply Brief (“Reply Br.,” filed Apr. 18, 2016), the
Examiner’s Answer (“Ans.,” mailed Feb. 18, 2016), and Final Office Action
(“Final Act.,” mailed May 6, 2015).
2 Appellants identify “The Nielson Company (US), LLC” as the real party
in interest. Appeal Br. 2.
Appeal 2016-005079
Application 13/730,511
STATEMENT OF THE CASE
Claimed Subject Matter
Appellants’ claimed invention “relates to the analysis of the
effectiveness of marketing and entertainment using central nervous system,
autonomic nervous system, and effector measurement mechanisms.” Spec.
12.
Method claim 2, system claim 9, and computer readable medium
claim 16 are the independent claims on appeal and recite substantially
similar subject matter. Appeal Br. 34—38, Claims App. Independent
claim 2, reproduced below with added formatting and bracketed notations, is
illustrative of the claimed subject matter:
2. A method comprising:
[(a)] analyzing electroencephalographic data gathered
from a subject while exposed to an advertisement or
entertainment, the electroencephalographic data comprising a
first frequency band and a second frequency band;
[(b)] identifying, using a processor, a degree of phase
synchrony between a first pattern of oscillation in the first
frequency band and a second pattern of oscillation in the second
frequency band; and
[(c)] determining an effectiveness of the advertisement
or entertainment based on the degree of phase synchrony.
Id. at 34, Claims App.
ANALYSIS
Non-Statutory Subject Matter
Under 35 U.S.C. § 101, an invention is patent-eligible if it claims a
“new and useful process, machine, manufacture, or composition of matter.”
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35U.S.C. § 101. The Supreme Court, however, has long interpreted § 101
to include an implicit exception: “‘[l]aws of nature, natural phenomena, and
abstract ideas’” are not patentable. See, e.g., Alice Corp. Pty. Ltd. v. CLS
Banklnt’l, 134 S. Ct. 2347, 2354 (2014) (citation omitted).
The Supreme Court, in Alice, reiterated the two-step framework
previously set forth in Mayo Collaborative Services v. Prometheus
Laboratories, Inc., 132 S. Ct. 1289, 1300 (2012), “for distinguishing patents
that claim laws of nature, natural phenomena, and abstract ideas from those
that claim patent-eligible applications of those concepts.” Alice Corp.,
134 S. Ct. at 2355. The first step in that analysis is to “determine whether
the claims at issue are directed to one of those patent-ineligible concepts.”
Id. If the claims are not directed to a patent-ineligible concept, e.g., an
abstract idea, the inquiry ends. Otherwise, the inquiry proceeds to the
second step where the elements of the claims are considered “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, 132 S. Ct. at 1297).
Applying the framework in Alice, and as the first step of that analysis,
the Examiner determined that the claims are “directed to the abstract idea of
determining the effectiveness of an advertisement based on the reaction of
an observer to the advertisement. . . similar to comparing new and stored
information and using rules to identity options.” Final Act. 2. Furthermore,
the Examiner determined that the proffered abstract idea is similar to
“‘organizing information through mathematical correlations’” and
“1) collecting data, 2) analyzing data within the collected data set, and
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3) providing the analysis based on that data.” Ans. 4. Under Alice step two,
the Examiner found that
[t]he additional element(s) or combination of elements in the
claim(s) other than the abstract idea per se amount(s) to no more
than: the technological environment of using EEG data to discern
the observer’s reaction. 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.
Final Act. 3.
We agree with the Examiner’s conclusion that claims 2—20 are
directed to patent ineligible subject matter.
Alice Step One
Subsequent to the filing of briefs in this appeal, the Federal Circuit
held that claims involving data collection, analysis, and display are directed
to abstract ideas. Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350,
1353 (Fed. Cir. 2016) (holding that “collecting information, analyzing it, and
displaying certain results of the collection and analysis” are “a familiar class
of claims ‘directed to’ a patent-ineligible concept”); see also In re TLI
Commc ’ns LLC Patent Litig., 823 F.3d 607, 611 (Fed. Cir. 2016);
FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1093—94 (Fed. Cir.
2016). Independent claim 2 calls for “[a] method comprising” three steps:
(a) “analyzing electroencephalographic data gathered from a subject while
exposed to an advertisement . . . comprising a first frequency band and a
second frequency band;” (b) “identifying, using a processor, a degree of
phase synchrony between ... the first frequency band and . . . second
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frequency band; and” (c) “determining an effectiveness of the
advertisement or entertainment based on the degree of phase synchrony.”
As in Electric Power, step (a) in claim 2 entails analyzing
information—the nature of the particular content, using
electroencephalographic (EEG) data,3 does not change its character as
information. Such a process falls within the realm of abstract ideas. Step
(b) involves identifying, by a conventional device or processor, a degree of
phase synchrony between an oscillatory pattern in the first and second
frequency bands; and (c) determining an effectiveness of the advertisement
based on the result of the identification in step (b). See Spec. 1 57 (“a
coupling index corresponding to the measure of specific band activity in
synchrony with the phase of other band activity is determined to ascertain
the significance of the marketing and advertising stimulus.”). Even though
the manner of identification in step (b) is unspecified in the claim, the
process of “identifying” per se is an abstract idea. See In re Brown, 645 F.
App’x. 1014 (Fed. Cir. 2016) (“Identifying head shape and applying hair
designs accordingly is an abstract idea capable, as the Board notes, of being
performed entirely in one’s mind.”) and Blue Spike, LLC v. Google Inc.,
No. 14-CV-01650-YGR, 2015 WL 5260506 (N.D. Cal. Sept. 8, 2015), affd,
No. 2016-1054, 2016 WL 5956746 (Mem) (Fed. Cir. 2016) (“comparing one
thing to another” is an abstract idea.). And using an index to search and
3 “EEG data can be classified in various bands. According to various
examples, brainwave frequencies includes delta, theta, alpha, beta, and gamma
frequency ranges. Delta waves are classified as those less than 4 Hz and are
prominent during deep sleep. Theta waves have frequencies between 3.5 to 7.5
Hz and are associated with memories, attention, emotions, and sensations.
Theta waves are typically prominent during states of internal focus.” Spec.
151.
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retrieve data is also an abstract concept. Intellectual Ventures ILLCv. Erie
Indemnity Company, 850 F.3d 1315, 1328 (Fed. Cir. 2017). We find that the
focus of the claim here is on managing EEG data to determine advertising
effectiveness, wherein the character of the analyzed information has not
changed. We note that the July 2015 Update: Subject Matter Eligibility
published by the USPTO on July 30, 2015, at 80 Fed. Reg. 45429, cited by
Appellants, states that “certain methods of organizing human activity” that
are abstract ideas include “describing concepts relating to” “advertising,
marketing, and sales activities or behaviors.” 2015 Update at 4. We
interpret the foregoing to include managing information (i.e., EEG data)
relating to marketing or advertising, which is precisely the subject matter in
claim 2.
Appellants’ argument that the Examiner’s rejection should be reversed
because it “does not follow USPTO policy” in that there is no similarity
between the concept alleged to be abstract by the Examiner and any patent
ineligible abstract idea identified by the courts is not found persuasive. See
Appeal Br. 10-11. Just because the Examiner did not identify a specific
case that the present claims were analogous to, does not mean the rejection
is in error. The Examiner has provided a reasoned rationale that identifies
the judicial exception recited in the claims, i.e., abstract idea, and why it is
considered an exception, as well as identifying the additional elements in the
claim and explaining why they do not amount to significantly more than the
exception taken individually or as a combination. Similar to what our
reviewing court found in Electric Power, the “advance [Appellants] purport
to make is a process of gathering and analyzing information of a specified
content. . . and not any particular assertedly inventive technology for
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performing those functions.” Electric Power, 830 F.3d at 1354. Thus, just as
in Electric Power, and for the foregoing reasons, we agree with the
Examiner that the claimed activity is a combination of abstract ideas. And,
merely combining abstract ideas (e.g., “analyzing” and “identifying”) does
not render the combination any less abstract. Cf. Shortridge v. Found.
Constr. Payroll Serv., LLC, No. 14-CV-04850-JCS, 2015 WL 1739256
(N.D. Cal. Apr. 14, 2015), affd, No. 2015-1898, 2016 WL 3742816
(Fed. Cir. July 13, 2016).
We also are not persuaded by Appellants’ argument that the rejection
is in error because the Examiner has “overgeneraliz[ed] the claims . . .
instead of addressing the actual language of the claims at issue.” Appeal
Br. 12; see also Reply Br. 2. The Examiner’s patent-eligibility analysis does
not suffer from “overgeneralization[s]” because the claim language is recited
at a high level of generality. And we agree with the Examiner that the claim
steps when evaluated individually, and as a whole, are directed to patent-
ineligible concepts.
Appellants assert that the pending claims cannot be directed to an
abstract idea because the claim does not tie up the alleged abstract idea and
raises no preemption concerns. Appeal Br. 17—20. Although the Supreme
Court has described “the concern that drives this exclusionary principle [i.e.,
the exclusion of abstract ideas from patent eligible subject matter] as one of
pre-emption,” see Alice Corp., 134 S. Ct. at 2354, characterizing pre­
emption as a driving concern for patent eligibility is not the same as
characterizing pre-emption as the sole test for patent eligibility. “The
Supreme Court has made clear that the principle of preemption is the basis
for the judicial exceptions to patentability” and “[f]or this reason, questions
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on preemption are inherent in and resolved by the § 101 analysis.” Ariosa
Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015)
(citing Alice Corp., 134 S. Ct. at 2354). Yet, although “preemption may
signal patent ineligible subject matter, the absence of complete preemption
does not demonstrate patent eligibility.” Id.', see also OIP Techs., Inc. v.
Amazon.com, Inc., 788 F.3d 1359, 1362—63 (Fed. Cir. 2015), cert, denied,
136 S. Ct. 701 (2015) (“[T]hat the claims do not preempt all price
optimization or may be limited to price optimization in the e-commerce
setting do not make them any less abstract.”).
Appellants contend that claim 2 recites a technological improvement
wherein an effectiveness of advertisements is determined based on a degree
of phase synchrony, which is a specific improvement to a technological
process. Appeal Br. 21. According to Appellants, “[cjlaim 2 is similar to
the situation presented in Diehr in that it improves a technological process.”
Id. at 22. We disagree.
The claimed process in Diehr required “installing rubber in a press,
closing the mold, constantly determining the temperature of the mold,
constantly recalculating the appropriate cure time through the use of the
formula and a digital computer, and automatically opening the press at the
proper time.” Diamond v. Diehr, 450 U.S. 175, 187 (1981). The Court held:
[W]e think that a physical and chemical process for molding
precision synthetic rubber products falls within the § 101
categories of possibly patentable subject matter. That
respondents’ claims involve the transformation of an article, in
this case raw, uncured synthetic rubber, into a different state or
thing cannot be disputed. The respondents’ claims describe in
detail a step-by-step method for accomplishing such, beginning
with the loading of a mold with raw, uncured rubber and ending
with the eventual opening of the press at the conclusion of the
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cure. Industrial processes such as this are the types which have
historically been eligible to receive the protection of our patent
laws.
Id. at 184.
Here, we do not see how any of the claim steps, particularly
“identifying, using a processor, a degree of phase synchrony between a first
pattern of oscillation in the first frequency band and a second pattern of
oscillation in the second frequency band,” is similar to controlling a
physical process like the process in Diehr. The Appellants’ claims do not
involve any “industrial” or “physical and chemical process” and do not
involve the “transformation of an article . . . into a different state or thing.”
Although a “processor” necessarily exists in the physical world, identifying
a degree of phase synchrony merely involves the transmission of data and is
not a physical, chemical, or industrial process. See Alice, 134 S. Ct. at 2358
(“The fact that a computer ‘necessarily exist[s] in the physical, rather than
purely conceptual, realm’ ... is beside the point.”).
Alice Step Two
Turning to the second step in Alice, we agree with the Examiner and
conclude that claim 2 does not contain an inventive concept sufficient to
“‘transform the nature of the claim’ into a patent-eligible application.”
Alice, 134 S. Ct. at 2355 (citation omitted). The introduction of a computer
into the claim does not alter the analysis here.4 The claim here does no more
4 [T]he mere recitation of a generic computer cannot transform a
patent-ineligible abstract idea into a patent-eligible invention.
Stating an abstract idea “while adding the words ‘apply if” is
not enough for patent eligibility. Nor is limiting the use of an
abstract idea “‘to a particular technological environment.’”
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than simply instruct the practitioner to implement the abstract idea on a
generic computer. In fact, the only portion of claim 2 that could be
considered “technological” is process step (b) of identifying a degree of
phase synchrony using a generic “processor” (see, e.g., Spec. 175) used to
implement the claimed invention, which is inadequate to confer subject
matter eligibility. See Elec. Power Grp., 830 F.3d at 1355 (“Nothing in the
claims, understood in light of the specification, requires anything other than
off-the-shelf, conventional computer, network, and display technology for
gathering, sending, and presenting the desired information”); see also
Dealertrack, Inc. v. Huber, 61A F.3d 1315, 1333 (Fed. Cir. 2012) (“Simply
adding a ‘computer aided’ limitation to a claim covering an abstract concept,
without more, is insufficient to render [a] claim patent eligible”) (citation
omitted).
Appellants argue that even assuming an abstract idea is present in
claim 2, the recited steps provide meaningful limitations beyond generally
linking the judicial exception to a particular technological environment.
Stating an abstract idea while adding the words “apply it with a
computer” simply combines those two steps, with the same
deficient result. Thus, if a patent’s recitation of a computer
amounts to a mere instruction to “implemen[t]” an abstract idea
“on ... a computer,” that addition cannot impart patent
eligibility. This conclusion accords with the pre-emption
concern that undergirds our § 101 jurisprudence. Given the
ubiquity of computers, wholly generic computer
implementation is not generally the sort of “additional
featur[e]” that provides any “practical assurance that the
process is more than a drafting effort designed to monopolize
the [abstract idea] itself.”
Alice, 134 S. Ct. at 2358 (citations omitted).
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Appeal Br. 24. In support of this argument, Appellants reproduce the claim
language in bold, and argue that the claim “recites a new and non-obvious
solution” developed by the inventors. Id. at 26; see also id. at 28 (“the
Examiner did not reject claim 2 based on any art. . . [and] indicated these
recitations cannot be found in the art.”). But repeating the claim language
fails to advance Appellants’ position by apprising us of Examiner error.
Moreover, a finding that the claims are novel and nonobvious in light of an
absence of evidence does not conflict with the Examiner’s conclusion under
§101, because “a claim for a new abstract idea is still an abstract idea.”
Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1151 (Fed. Cir.
2016) (citing Mayo, 566 U.S. at 90). The question in step two of the Alice
framework is not whether an additional feature is novel, but whether the
implementation of the abstract idea involves “more than performance of
‘well-understood, routine, [and] conventional activities previously known to
the industry.’” Content Extraction and Transmission LLC v. Wells Fargo
Bank, Nat. Assn, 776 F.3d 1343, 1347-48 (Fed. Cir. 2014) (alteration in
original) (quoting Alice, 134 S. Ct. at 2359). Thus, an abstract idea does not
transform into an inventive concept just because the Examiner has not found
prior art that discloses or suggests it. Indeed, “[t]he ‘novelty’ of any element
or steps in a process, or even of the process itself, is of no relevance in
determining whether the subject matter of a claim falls within the § 101
categories of possibly patentable subject matter.” Diehr, 450 U.S. at 188—
189. “[W]hen a claim directed to an abstract idea ‘contains no restriction on
how the result is accomplished . . . [and] [t]he mechanism ... is not
described, although this is stated to be the essential innovation[,]” [Internet
Patents Corp., 790 F.3d 1343] 1348 [(Fed. Cir. 2015)], then the claim is not
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patent-eligible.” Intellectual Ventures ILLC v. Symantec Corp., 838 F.3d
1307, 1316 (Fed. Cir. 2016).
Accordingly, we sustain the rejection of independent claim 2, and
independent claim 16, which is not argued separately. See Appeal Br. 29.
We sustain the rejection of independent claim 9 for the same reasons
because Appellants rely on similar arguments presented with respect to
claim 2. See Appeal Br. 31—33.
Appellants argue that each of dependent claims 3, 5, 6, and 8, further
narrows the base claim from which it depends and thus, recites substantially
more than an abstract idea. Appeal Br. 29-31; Reply Br. 14—16. We are not
persuaded that these claims add anything significantly more to transform the
abstract idea. For example, claim 3 provides that the frequency bands are
generated in a certain region of the brain, which merely defines the origin of
the EEG data. In other words, the dependent claims limit the scope of the
abstract idea to which independent claim 2 is directed but its character
remains unchanged, especially given that these dependent claims provide no
insight to improvements in computer functionality beyond what one would
expect from using a generic computer as a tool in performing the scheme as
claimed. Thus, Appellants have not persuaded us that the Examiner erred in
rejecting claims 3, 5, 6, and 8 for being directed to patent ineligible subject
matter.
We have considered Appellants’ remaining arguments, but we are not
persuaded for the reasons set forth above that the Examiner erred in rejecting
claims 2—20 under 35 U.S.C. § 101. Therefore, we sustain the Examiner’s
non-statutory subject matter rejection.
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DECISION
The Examiner’s rejection of claims 2—20 under 35 U.S.C. § 101 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
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