Ex Parte Pronk et al

Patent Trial and Appeal Board

May 18, 2018

13382963 (P.T.A.B. May. 18, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/382,963 01/09/2012 Serverius Petrus Paulus Pronk
4955 7590 05/22/2018
WARE, FRESSOLA, MAGUIRE & BARBER LLP
BRADFORD GREEN, BUILDING 5
755 MAIN STREET
MONROE, CT 06468
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.
536-044.006 5605
EXAMINER
YESILDAG, MEHMET
ART UNIT PAPER NUMBER
3624
NOTIFICATION DATE DELIVERY MODE
05/22/2018 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):
mail@warefressola.com
uspatents@warefressola.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SERVERIUS PETRUS PAUL US PRONK
and MAURO BARBIERI
Appeal 2016-006191
Application 13/382,963
Technology Center 3600
Before BIBHU R. MOHANTY, NINA L. MEDLOCK, and
BRADLEY B. BAY AT, Administrative Patent Judges.
MOHANTY, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellants seek our review under 35 U.S.C. § 134 of the final
rejection of claims 1---6 and 8-13, which are all the claims pending in the
application. We have jurisdiction under 35 U.S.C. § 6(b).
SUMMARY OF THE DECISION
We AFFIRM.
Appeal2016-006191
Application 13/382,963
THE INVENTION
The Appellants' claimed invention is directed to a method and
apparatus for the selection of ancillary information to be inserted into
content (Spec., page 3, lines 20-23). Claim 10, reproduced below, is
representative of the subject matter on appeal.
10. A method of selecting an ancillary information stored in an
ancillary information data base to be inserted to a content accessed by
a user, said method comprising:
- providing user-specific information regarding user ratings
inputs via a user interface;
- calculating by a computing device, based on the provided
user-specific information, a degree of involvement of said user
in each product category of ancillary information out of a
number of product categories of ancillary information;
- classifying said calculated degree of involvement, wherein
said classifying comprises determining an estimate of the
degree of the user's involvement for said number of product
categories, in that said classifying comprises:
- determining the number of times ancillary information from
each of said number of product categories has been rated
positive and to determine the number of times ancillary
information from each of said number of product categories has
been rated negative, respectively, according to user rating
inputs via the user interface,
- determining the total positive and negative counts summed
over all of said number of product categories,
- estimating for each of said number of product categories
(i) a first conditional probability that said user likes the
product category by dividing said number of times an
ancillary information from each of said number of
product categories has been rated positive by said total
positive counts summed over all of said number of
product categories, and
(ii) a second conditional probability that said user
dislikes the product category by dividing said number of
times an ancillary information from each of said number
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of product categories has been rated negative by said
total negative counts summed over all of said number of
product categories, and
- classifying said degree of involvement of said user in said
product category based on a required difference between said
first and second conditional probabilities; and
- selecting said ancillary information stored in said ancillary
information data base based on the result of the classification.
THE REJECTIONS
The following rejections are before us for review:
1. Claims 1---6 and 8-13 are rejected under 35 U.S.C. § 101 as
being directed to non-statutory subject matter.
2. Claims 1---6, 8, 9, and 13 are rejected under 35 U.S.C. § 112,
second paragraph, as being indefinite.
3. Claims 1---6 and 8-13 are rejected under 35 U.S.C. § I03(a) as
unpatentable over Raghunandan (US 2008/0300964 Al; pub. Dec. 4, 2008),
Graham (US 6,804,659 Bl; iss. Oct. 12, 2004), Dunk
(US 2011/0060649 Al; pub. Mar. 10, 2011), and Amento
(US 2008/0306807 Al; pub. Dec. 11, 2008).
FINDINGS OF FACT
We have determined that the findings of fact in the Analysis section
below are supported at least by a preponderance of the evidence. 1
1 See Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988)
( explaining the general evidentiary standard for proceedings before the
Patent Office).
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Application 13/382,963
ANALYSIS
Rejection under 35 USC§ 101
The Appellants argue that the rejection of claim 10 is improper
because it is not directed to an abstract idea (App. Br. 8-12, Reply Br. 2--4).
The Appellants also argue that the claim is "significantly more" than the
alleged abstract idea (App. Br. 10-12, Reply Br. 2--4).
In contrast, the Examiner has determined that the rejection is proper
(Final Act. 2, 3, Ans. 6-8).
We agree with the Examiner. 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." 35 U.S.C. § 101. The Supreme Court, however,
has long interpreted § 101 to include an implicit exception: "laws of nature,
natural phenomena, and abstract ideas" are not patentable. See, e.g., Alice
Corp. Pty Ltd. v. CLS Bank Int'!, 134 S. Ct. 2347, 2354 (2014).
In judging whether claim 10 falls within the excluded category of
abstract ideas, we are guided in our analysis by the Supreme Court's two-
step framework, described in Mayo and Alice. Id. at 2355 ( citing Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66 (2012)). In
accordance with that framework, we first determine whether the claim is
"directed to" a patent-ineligible abstract idea. If so, we then consider the
elements of the 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 of the abstract idea. Id. This is a
search for an "inventive concept" an element or combination of elements
sufficient to ensure that the claim amounts to "significantly more" than the
abstract idea itself. Id. The Court also stated that "the mere recitation of a
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Application 13/382,963
generic computer cannot transform a patent-ineligible abstract idea into a
patent-eligible invention." Id at 2358.
Here, we determine that the claim is directed to the concept of
selecting information to be inserted into content accessed by a user. This is
directed to a method of organizing human activities, or an idea in itself, and
is an abstract idea beyond the scope of§ 101. See Electric Power Group,
LLC v. Alstom S.A., 830 F.3d 1350, 1354 (Fed. Cir. 2016) (in which
"collecting information, analyzing it, and displaying certain results of the
collection and analysis" was held to be an abstract idea). See also In re TL!
Comm. LLC Patent Litig., 823 F.3d 607, 612 (Fed. Cir. 2016) (in which
"classifying and storing digital images in an organized manner" was held to
be an abstract concept). The Specification at page 1, lines 2-5 states that the
"present invention relates to ... selecting ... ancillary information, e. g. an
advertisement ... to be placed or inserted in a medium." The preamble of
claim 10 states that the claim is a method of "selecting an ancillary
information stored in an ancillary information data base to be inserted to a
content accessed by a user." Although the Appellants in their Reply Brief at
pages 2--4 make reference to Enfish, LLC v. Microsoft Corp., 822 F.3d 1327,
1335-36 (Fed. Cir. 2016) that decision dealt with a self-referential data
table. In contrast, claim 10 here is directed to the concept of selecting
information to be inserted into content accessed by a user.
We next consider whether additional elements of the claim, both
individually and as an ordered combination, transform the nature of the
claim into a patent-eligible application of the abstract idea, e.g., whether the
claim does more than simply instruct the practitioner to implement the
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abstract idea over using generic computer components. We conclude that it
does not.
Considering each of the claim elements in tum and as an ordered
combination, the function performed by the computing device at each step of
the process is purely conventional. Each step of the claimed method does no
more than require a generic computer to perform a generic computer
function. For example, the Specification at page 6, lines 7-22, discloses
using generic components in a conventional manner for their known
functions.
For these above reasons the rejection of claim 10 is sustained.
Claims 11-13 are drawn to similar subject matter and not argued separately,
thus, the rejection of these claims is sustained as well.
We reach the same conclusion as to apparatus claims 1---6, 8, and 9.
These claims do not specifically require a computer or processor.
Regardless, even considering the "classifier" to be a computer or processor
does not change what claim 1 is directed to. Here, the apparatus claims are
directed to the same subject matter as claim 10 discussed above. In Alice,
the Court noted that despite their format, "the system claims are no different
in substance from the method claims. The method claims recite the abstract
idea implemented on a generic computer; the system claims recite a handful
of generic computer components configured to implement the same idea."
Alice 134 S. Ct. at 2351. "[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 it' is not
enough for patent eligibility." Id. at 2358 (quoting Mayo, 566 U.S. at 73).
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Rejection under 35 USC§ 112, second paragraph
The Examiner has rejected claims 1-6, 8, 9, and 13 asserting that the
claim limitations for "a classifier. ... for calculating ... " invoke 35 U.S.C.
§ 112, sixth paragraph, and fail to provide support for specific structure to
support the limitations (Final Act. 4, 27, Ans. 9).
In contrast, the Appellants argue that the rejection is improper and cite
to the Specification at for instance pages 7: 11-8: 13 as providing support in
an algorithm (App. Br. 14, 15, Reply Br. 4---6).
We agree with the Appellants. Here, the Examiner in the rejection has
failed to establish that the Specification does not provide sufficient subject
matter to support the claim language. For this reason, this rejection of
record is not sustained.
Rejection under 35 USC§ 103(a)
The Appellants argue at page 17 of the Appeal Brief that the rejection
of claim 1 is improper because the cited prior art fails to disclose the claim
limitation for estimating for each of said number of product categories:
(i) a first conditional probability that said user likes the product
category by dividing said number of times an ancillary information
from each of said number of product categories has been rated
positive by said total positive counts summed over all of said number
of product categories, and
(ii) a second conditional probability that said user dislikes the product
category by dividing said number of times an ancillary information
from each of said number of product categories has been rated
negative by said total negative counts summed over all of said number
of product categories.
(Claim 1 ).
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In contrast, the Examiner has determined that the cited claim
limitations are shown by Dunk at paragraphs 115-121,126-128, and Amento
at paragraphs 15 and 19 (Ans. 3-8).
We agree with the Appellants. Dunk at paragraphs 115-121, for
instance, discloses using a relevance engine but not with the conditional
probabilities in the claimed specific manner to include the "positive counts
summed over all of said number of product categories." For this reason, the
rejection of claim 1 and its dependent claims is not sustained. The
remaining claims contain a similar limitation and the rejection of these
claims is not sustained as well.
CONCLUSIONS OF LAW
We conclude that Appellants have not shown that the Examiner erred
in rejecting claims 1---6 and 8-13 under 3 5 U.S. C. § 1 01 as being directed to
non-statutory subject matter.
We conclude that Appellants have shown that the Examiner erred in
rejecting 1---6, 8-9, and 13 under 35 U.S.C. § 112, second paragraph, and
35 U.S.C. § 103(a) as listed in the Rejections section above.
DECISION
The Examiner's rejection of claims 1---6 and 8-13 is sustained.
No time period for taking any subsequent action in connection with this
appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 41.50(±).
AFFIRMED
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