Ex Parte Raghunandan

Patent Trial and Appeal Board

Sep 27, 2018

11755905 (P.T.A.B. Sep. 27, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
11/755,905 05/31/2007 Hulikunta Prahlad Raghunandan
30449 7590 10/01/2018
SCHMEISER, OLSEN & WATTS
22 CENTURY HILL DRIVE
SUITE 302
LATHAM, NY 12110
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.
END920060258US 1 9920
EXAMINER
TSUI, ALFRED H
ART UNIT PAPER NUMBER
3621
NOTIFICATION DATE DELIVERY MODE
10/01/2018 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):
30449@IPLA WUSA.COM
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HULIKUNTA PRAHLAD RAGHUNANDAN
Appeal2016-005950
Application 11/755,905
Technology Center 3600
Before CHARLES J. BOUDREAU, AARON W. MOORE, and
DAVID J. CUTITTA II, Administrative Patent Judges.
MOORE, Administrative Patent Judge.
DECISION ON APPEAL
Appeal2016-005950
Application 11/755,905
STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1, 2, 4--11, and 15-23, which are all of the pending claims. We have
jurisdiction under 35 U.S.C. § 6(b ).
We affirm.
THE INVENTION
The application is directed to "a method for identifying users for
advertising purposes." (Spec. 1, Abstract.) Claim 1, reproduced below,
exemplifies the subject matter on appeal:
1. A method for identifying users for advertising purposes,
said method comprising:
identifying a plurality of users and a plurality of attributes,
each attribute being a subject, an activity, or a demographic
characteristic;
identifying a first network of first web sites of the Internet
accessed by the plurality of users, said access to the first web
sites provided to the plurality of users by a first at least one
Internet Service Provider (ISP);
receiving, by a processor of a computer system from the first
at least one ISP, first data comprising content of the first web
sites and time data pertaining to when each user of the plurality
of users accessed the first web sites;
said processor analyzing the first data to determine first
attribute values comprising a first value of each attribute of the
plurality of attributes for each user, said first value being
indicative of a level of interest in each attribute by each user, said
analyzing based on an amount of time spent by each user at each
1 Appellant identifies International Business Machines Corporation as the
real party in interest. (See App. Br. 1.)
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website of the first web sites in relation to the content of each
website of the first web sites;
identifying a second network of second web sites of the
Internet accessed by the plurality users, said access to the second
web sites provided to the plurality of users by a second at least
one ISP;
said processor deriving a plurality of keywords from content
of the second web sites that were accessed by the plurality of
users;
after said deriving the plurality of keywords, said processor
mapping the keywords of the plurality of keywords to the
attributes of the plurality of attributes to determine a set of
attributes, wherein each attribute of the set of attributes has been
selected from the plurality of attributes by a keyword of the
plurality of keywords that has been mapped to each attribute via
said mapping, and wherein the plurality of attributes consists of
the set of attributes and at least one attribute of the plurality of
attributes to which no keyword of the plurality of keywords has
been mapped via said mapping;
said processor receiving, from questionnaires completed by
the plurality of users, a second value of each attribute of the set
of attributes for each user, said questionnaires comprising the set
of attributes determined from said mapping the keywords from
content of the second web sites to the attributes of the plurality
of attributes;
said processor assigning for each user a second value to each
attribute of the at least one attribute to which no keyword of the
plurality of keywords has been mapped via said mapping, said
assigned second value consisting of a minimum attribute value
of a range of attribute values, wherein a second attribute value
for each attribute of the plurality of attributes for each user
consists of the second value of each attribute of the set of
attributes for each user and the second value of each attribute of
the at least one attribute for each user;
said processor determining third attribute values that
comprise a third value of each attribute of the plurality of
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attributes for each user, by combining the first attribute values
for each user with the second attribute values for each user;
said processor processing the third attribute values, said
processing comprising determining from the third attribute
values an identification of a subset of the plurality of users to
whom advertising of a product or service may be directed; and
communicating the identification of the subset of the plurality
of users to a provider of the product or service.
THE REJECTION
Claims 1, 2, 4--11, and 15-23 stand 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." (See Final Act. 6-7. 2)
ANALYSIS
We analyze the claims for patent eligibility under the now-familiar
two-step Alice/ Mayo framework, the details of which can be found, for
example, in Interval Licensing LLC v. AOL, Inc., 896 F.3d 1335, 1342--48
(Fed. Cir. 2018). "[T]hose two steps are typically understood as the
'abstract idea' step and the 'inventive concept' step." Id. at 1342.
Abstract Idea
The Examiner finds "[ t ]he claims are, generally speaking, directed to
the abstract idea of determining a subset of users for targeting a particular
advertisement" and that "[ d]etermining advertisements to a set of users is a
2 Claim 24 was canceled after the Final Office Action. See June 8, 2015
Office Action Response ( entered July 2, 2015).
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long standing commercial practice." (Final Act. 6.) Appellant argues that
"the claims are not directed to determining a subset of users for targeting a
particular advertisement as alleged by the Examiner, but rather are directed
to identifying users for advertising purposes as stated in the preamble."
(App. Br. 16.)
We find the claims directed to an abstract idea under either the
Examiner's formulation or Appellant's formulation. Targeting advertising,
or targeted delivery of other types of information-which necessarily
includes identifying the target users or consumers-is both a well-known
economic practice3 and an abstract idea. 4
Finding the claims directed to an abstract idea, we move to the second
step in the analysis.
3 See Morsa v. Facebook, Inc., 77 F. Supp. 3d 1007, 1013-14 (C.D. Cal.
2014), aff'd, 622 F. App'x 915 (Fed. Cir. 2015) ("[T]argeted advertising is
[a well-known] concept, insofar as matching consumers with a given product
or service 'has been practiced as long as markets have been in operation."'
(quoting Tuxis Techs., LLC v. Amazon.com, Inc., No. CV 13-1771-RGA,
2014 WL 4382446, at *5 (D. Del. 2014)); OpenTV, Inc. v. Neiflix Inc., 76 F.
Supp. 3d 886, 893 (N.D. Cal. 2014) ("The concept of gathering information
about one's intended market and attempting to customize the information
then provided is as old as the saying, 'know your audience."'); see also
Affinity Labs of Texas, LLC v. Amazon.com Inc., 838 F.3d 1266, 1271 (Fed.
Cir. 2016) ("[T]ailoring of content based on information about the user ... is
an abstract idea that is as old as providing different newspaper inserts for
different neighborhoods.") (citing Intellectual Ventures I LLC v. Capital One
Bank (USA), 792 F.3d 1363, 1369 (Fed. Cir. 2015)).
4 See, e.g., Morsa, 77 F. Supp. 3d at 1014 (concluding that claims directed to
"targeting advertisements to certain consumers" were no more than an
abstract idea); OpenTV, 76 F. Supp. 3d at 893 ("Netflix's characterization of
this patent as embodying only an 'abstract idea' is accurate.").
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Inventive Step
Regarding the presence of an inventive step, Appellant offers five
arguments, which we address in tum.
First, citing DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245
(Fed. Cir. 2014), Appellant argues the instant claims are eligible because
they "are Internet-centric, since processing of data pertaining to prior
Internet website visitations by users (i.e., duration of website visits by users
correlated with content of the websites visited), as well as processing of
keywords appearing in Internet websites), is the subject matter actually
being claimed" and "it is impossible to perform the essence of claims 1 and
18-20 without processing data pertaining to Internet website visitations."
(App. Br. 20.) We do not agree that processing data pertaining to website
visitations by users, and/or processing of keywords appearing in websites,
makes the claims analogous to those considered in DDR. The DDR claims
were directed to a fundamentally different type of website that presented a
virtual store within a virtual store. In Appellant's claims, by contrast, the
websites are conventional and merely a source of data, and eligibility will
not lie in the type or content of data being collected. See Electric Power
Group, LLC v. Alstom S.A., 830 F.3d 1350, 1354 (Fed. Cir. 2016) (finding
claims ineligible where "[t]he advance they purport to make is a process of
gathering and analyzing information of a specified content, then displaying
the results, and not any particular assertedly inventive technology for
performing those functions").
Appellant's argument based on DDR continues that "the claimed
solution is necessarily rooted in computer technology in order to overcome a
problem specifically arising in the realm of computer networks." (App.
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Br. 20.) We do not agree. The claims seek to solve a business problem-
identifying the most relevant targets for advertising-using the Internet as
one source of data. These claims do not solve a technical problem unique to
the Internet or other computer network.
Second, Appellant asserts that the limitations of claims 1 and 18-20
"are significantly more so as to sufficiently narrow the scope of the claims to
ensure that the claims do not preempt inventive activity in the field of
identifying users for advertising purposes." (App. Br. 29.) We are not
persuaded because, although "preemption may signal patent ineligible
subject matter, the absence of complete preemption does not demonstrate
patent eligibility." Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d
1371, 1379 (Fed. Cir. 2015). We are instructed that "[w]here a patent's
claims are deemed only to disclose patent ineligible subject matter" under
the Alice/ Mayo framework, "preemption concerns are fully addressed and
made moot." Id.
Third, Appellant contends that "the following specific limitations ...
are not well-understood, routine and conventional in the field of identifying
users for advertising purposes" and then proceeds to quote what appears to
be the entire body of claim 1. (See App. Br. 30-32.) This also is not a
persuasive argument, at least because it is evident that much of the quoted
material-such as identifying users and attributes, identifying websites,
receiving data, analyzing data, etc.-is conventional activity. Appellant
does not direct us to specific limitations, or specific combinations of
limitations, that are unconventional, and we decline to plumb the claims for
such material ourselves. Appellant also "notes that the preceding specific
limitations"----evidently all of claim 1-"are also sufficiently novel and
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unobvious to overcome the prior art." (App. Br. 33.) This is not persuasive
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). Even
though the Section 101 inquiry and the Section 102/103 inquiry might
sometimes overlap, a novel and nonobvious claim directed to a purely
abstract idea is, nonetheless, ineligible for patenting. See Amdocs (Israel)
Ltd. v. Openet Telecom, Inc., 841 F.3d 1288, 1311 (Fed. Cir. 2016)
(Reyna, J., dissenting) ("The inventiveness inquiry of§ 101 should ... not
be confused with the separate novelty inquiry of§ 102 or the obviousness
inquiry of§ 103.").
Because we find Appellant's arguments concerning the independent
claims insufficient to establish Examiner error, we sustain the rejection of
claims 1 and 18-20 under Section 101. Dependent claims 2, 4--11, and 15-
1 7 are not argued separately and thus fall with their independent claims.
Appellant also argues that claims 21-23 are patent eligible because
they "recite utilizing a special purpose machine comprising a read-only
memory (ROM) which, as is well known in the art, is hardwired into the
computer apparatus" and "[t]he apparatus is a special purpose machine
specific to the method due to the ROM being hard wired into the apparatus."
(App. Br. 34--35.) We do not agree. ROM is simply one conventional
method for storing information in a computer, and "recitation of generic
computer limitations," such as ROM, "does not make an otherwise ineligible
claim patent-eligible." DDR Holdings, 773 F.3d at 1256. We thus sustain
the rejection of claims 21-23 under Section 101.
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DECISION
The rejection of claims 1, 2, 4--11, and 15-23 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 3 7 C.F .R. § 1.13 6( a )(1 )(iv).
AFFIRMED
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