Ex Parte Ramkumar et al

Patent Trial and Appeal Board

Dec 14, 2017

13761420 (P.T.A.B. Dec. 14, 2017)

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.
13/761,420 02/07/2013 Gurumurthy D. Ramkumar P24741US1
(119-0836US1)
4473
61947 7590 12/18/2017
Ar>r>le - Rlank Rome.
EXAMINER
c/o Blank Rome LLP
717 Texas Avenue, Suite 1400
LE, MICHAEL
HOUSTON, TX 77002 ART UNIT PAPER NUMBER
2163
NOTIFICATION DATE DELIVERY MODE
12/18/2017 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):
mbrininger @ blankrome. com
hou stonpatents @ blankrome .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GURUMUTHY D. RAMKUMAR, DOMINIC HUGHES,
KESHAV MENON, JOSEPH HUANG, and GEORGIOS SOFIANATOS
Appeal 2017-006167
Application 13/761,420
Technology Center 2100
Before ROBERT E. NAPPI, THU A. DANG, and ERIC S. FRAHM,
Administrative Patent Judges.
NAPPI, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) from the Final
Rejection of claims 21 through 40. We have jurisdiction over the pending
claims under 35 U.S.C. § 6(b).
We affirm.
1 According to Appellants, the real party in interest is Apple Inc. See App.
Br. 3
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INVENTION
Appellants’ disclosed invention relates to a method for suggesting
social media by identifying topics from social media and generating a
playlist of media using the topics. See Appellants’ Specification, paras. 3—5.
Claim 21 is illustrative of the invention and reproduced below:
21. A method for suggesting media content, comprising:
identifying, from a social media feed, a plurality of
topics;
determining a weighted topic value for each of the
plurality of topics;
obtaining a first metadata of a first media content episode
and a second metadata of a second media content episode;
calculating a judgment score for each of the first media
content episode and the second media content episode using
weighted topic values of one or more of the plurality of topics;
and
generating a media content playlist comprising the first
metadata and the second metadata sorted by the calculated
judgment scores for the first media content episode and the
second media content episode.
REJECTIONS AT ISSUE
The Examiner has rejected claims 21 and 28 under 35U.S.C. § 101 as
directed to non-statutory subject matter. Answer 2—3.2
2 Throughout this opinion we refer to the Appeal Brief filed October 25,
2016, Reply Brief filed February 28, 2017, the Final Office Action mailed
February 24, 2016, and the Examiner’s Answer mailed on December 30,
2016.
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The Examiner has rejected claims 21 through 40 under 35 U.S.C.
§ 103(a) as unpatentable over Thrall (US 2009/0216741 Al; Aug. 27, 2009)
and Mclntire (US 2009/0248672 Al; Oct. 1, 2009). Final Act. MS.
REJECTION UNDER 35 U.S.C. § 101
Patent-eligible subject matter is defined in § 101 of the Patent Act,
which recites:
Whoever invents or discovers any new and useful process,
machine, manufacture, or composition of matter, or any new
and useful improvement thereof, may obtain a patent therefor,
subject to the conditions and requirements of this title.
There are, however, three judicially created exceptions to the broad
categories of patent-eligible subject matter in § 101: laws of nature, natural
phenomena, and abstract ideas. Alice Corp. Pty. Ltd. v. CLS Bank Int 7, 134
S. Ct. 2347, 2354 (2014); Mayo Collaborative Servs. v. Prometheus Labs.,
Inc., 566 U.S. 66, 70 (2012). Although an abstract idea, itself, is patent-
ineligible, an application of the abstract idea may be patent-eligible. Alice,
134 S. Ct. at 2355. Thus, we must 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. (citing Mayo, 566 U.S. at 78—80). The claim must contain
elements or a combination of elements that are ‘“sufficient to ensure that the
patent in practice amounts to significantly more than a patent upon the
[abstract idea] itself.’” Id. (citing Mayo, 566 U.S. at 72—73).
The Supreme Court sets forth a two-part “framework for
distinguishing patents that claim laws of nature, natural phenomena, and
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abstract ideas from those that claim patent-eligible applications of those
concepts.” Id. at 2355.
First, we determine whether the claims at issue are directed to
one of those patent-ineligible concepts. [Mayo, 566 U.S. at 76—
77]. If so, we then ask, “[w]hat else is there in the claims
before us?” Id., at [77—78]. To answer that question, we
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., at [77—78]. We have described step
two of this analysis as a search for an “‘inventive concept’”—
i.e., an element or combination of elements that is “sufficient to
ensure that the patent in practice amounts to significantly more
than a patent upon the [ineligible concept] itself.” Id., at [71—
73],
Id.
ANALYSIS
We have reviewed Appellants’ arguments in the Briefs, the
Examiner’s rejections, and the Examiner’s response to Appellants’
arguments. Appellants’ arguments have not persuaded us of error in the
Examiner’s determination that the claims are unpatentable.
Appellants argue on pages 4 through 6 of the Reply Brief, that claim
21 is not directed to an abstract idea. Specifically, Appellants argue the
Examiner has not shown that the idea is abstract by showing the present
claims are “similar to” those in Alice or any other court decision. Reply Br.
5. Appellants further argue that the current claims are drawn to “an
improvement in computer-related technology, pertaining to a solution for
generating a media content playlist based, in part, on topics from a social
media feed.” Id. at 6.
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These arguments have not persuaded us the Examiner erred in
determining representative claim 21 recites an abstract idea.
The Federal Circuit has explained that, in determining whether claims
are patent-eligible under Section 101, “the decisional mechanism courts now
apply is to examine earlier cases in which a similar or parallel descriptive
nature can be seen—what prior cases were about, and which way they were
decided.” Amdocs (Israel) Ltd. v. Openet Telecom, Inc., 841 F.3d 1288,
1294 (Fed. Cir. 2016). The Federal Circuit also noted in that decision that
“examiners are to continue to determine if the claim recites (i.e., sets forth or
describes) a concept that is similar to concepts previously found abstract by
the courts.” Id. at 1294 n.2 (citation omitted).
Initially we note that, contrary to Appellants’ arguments, the
Examiner has compared the concept claimed with a claimed concept the
courts have held to recite an abstract idea. See Answer 2 (citing Elec. Power
Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1354 (Fed. Cir. 2016). We concur
with the Examiner that the claims recite an abstract idea.
In the instant case, representative claim 21 recites identifying topics
from social media feed (gathering data), determine a weighted value
(processing the data), obtaining metadata from media content (gathering
data), calculating a judgement score (processing data) and generating a
content playlist (ordering the data). Further, contrary to Appellants’
arguments, representative claim 21 is not limited to a computer-related
technology as the method is not recited as being performed on a computer.
Thus, representative claim 21 is directed to the abstract concept of
gathering data, and analyzing the data, which is similar to the claims at issue
in Elec. Power Grp. (830 F.3d 1350, 1354 (Fed. Cir. 2016) (holding that
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claims directed to a process of gathering and analyzing information of a
specific content are directed to an abstract idea)). Claim 21 is also similar to
those at issue in Content Extraction and Transmission LLC. v. Wells Fargo
Bank, Natl Ass n, 776 F.3d 1343, 1347 (Fed. Cir. 2014) (holding that the
claims were “drawn to the abstract idea of 1) collecting data, 2) recognizing
certain data within the collected data set, and 3) storing that recognized data
in a memory.”) and in SmartGene Inc. v. Advanced Biological Labs., 555
Fed. App’x 950, 954 (Fed. Cir. 2014) (non-precedential), (holding that a
method for guiding selection of a therapeutic treatment using knowledge
bases, generating ranked lists of treatment routines and generating advisory
information for treatment “does no more than call on a ‘computing device,’
with basic functionality for comparing stored and input data and rules, to do
what doctors do routinely”).
On pages 7 and 8 of the Reply Brief, Appellants address the second
part of the Alice analysis and argue the claims are directed to “the generation
of a digital playlist by applying weighted topic values based on a social
media feed.” Reply Br. 7. Further, Appellants argue that the claims do not
pre-empt the alleged abstract idea and that the claims are similar to those
held to be statutory in McRO, Inc. v. Bandai Namco Games Am. Inc., 837
F.3d 1299 (Fed. Cir. 2016.) Specifically, Appellants argue “generating topic
values clearly goes above and beyond merely collecting information,
analyzing, and displaying results.” Reply Br. 8.
We are not persuaded of error in the Examiner’s rejection by these
arguments. Initially, we note that Appellants’ arguments are not
commensurate with the scope of representative claim 21 as there are no
limitations directed to a “digital playlist” or “displaying results.” Further,
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while the claim generically recites generating a content playlist using the
calculated judgement scores, the claim lacks the specificity present in the
claims of McRO where the court found “[t]he claimed process uses a
combined order of specific rules that renders information into a specific
format that is then used and applied to create desired results.” McRO, 837
F.3d at 1315.
With respect to the pre-emption concern, “[w]hat matters is whether a
claim threatens to subsume the full scope of a fundamental concept, and
when those concerns arise, we must look for meaningful limitations that
prevent the claim as a whole from covering the concept’s every practical
application.” CLSBanklnt’l v. Alice Corp. Pty. Ltd., Ill F.3d 1269, 1281
(Fed. Cir. 2013) (Lourie, J., concurring). Pre-emption is not a separate test.
To be clear, the proper focus is not preemption per se, for some
measure of preemption is intrinsic in the statutory right granted with
every patent to exclude competitors, for a limited time, from
practicing the claimed invention. See 35 U.S.C. § 154. Rather, the
animating concern is that claims should not be coextensive with a
natural law, natural phenomenon, or abstract idea; a patent-eligible
claim must include one or more substantive limitations that, in the
words of the Supreme Court, add “significantly more” to the basic
principle, with the result that the claim covers significantly less. See
Mayo[, 566 U.S. at 71]. Thus, broad claims do not necessarily raise
§ 101 preemption concerns, and seemingly narrower claims are not
necessarily exempt.
Id.; see also Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371,
1379 (Fed. Cir. 2015) (“[w]hile preemption may signal patent ineligible
subject matter, the absence of complete preemption does not demonstrate
patent eligibility.”). Because we find the claimed subject matter covers
patent-ineligible subject matter, the pre-emption concern is necessarily
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addressed. “Where a patent’s claims are deemed only to disclose patent
ineligible subject matter under the Mayo framework, . . . preemption
concerns are fully addressed and made moot.” Id. Thus, Appellants’
arguments have not persuaded us that representative claim 21 recites
significantly more than the abstract idea and, therefore, we sustain the
Examiner’s 35 U.S.C. § 101 rejection of claim 21 and claim 28 grouped with
claim 21.
REJECTION UNDER 35 U.S.C. § 103
ISSUES
Appellants argue, on pages 7 and 8 of the Appeal Brief and pages 8
and 9 of the Reply Brief, that the Examiner’s rejection of independent claims
21,28, and 35 is in error. Appellants’ arguments present us with the
following issues:
1) Did the Examiner err in finding the combination of Thrall and
Mclntire teaches identifying a plurality of topics from a social
media feed as recited in representative claim 21?
2) Did the Examiner err in finding the combination of Thrall and
Mclntire teaches generating a media content playlist as recited in
representative claim 21?
Appellants present additional arguments with respect to dependent
claims 23, 30, and 37 on pages 9 and 10 of the Appeal Brief, and page 9 of
the Reply Brief. These arguments present us with the additional issue:
3) Did the Examiner err in finding the combination of Thrall and
Mclntire teaches receiving skip/consume behavior information and
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using it in the calculating a judgment score as recited in
representative claim 23?
ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellants’
contentions the Examiner has erred. Further, we have reviewed the
Examiner’s response to Appellants’ arguments. We disagree with
Appellants’ arguments that the Examiner erred in rejecting claims 21
through 40.
Appellants’ arguments directed to the first issue assert the rejection of
independent claim 21 is in error as:
Thrall discloses “media assets in repository” as being drawn
from a historical search engine query log. A historical search
engine query log is not synonymous with a social media feed.
In fact, a historical search engine query log, as described in
paragraph [0035] is actually directed to “a population of users.”
That is, Thrall is directed to identifying topics as aggregated by
a search engine across a population of users. Thus, Thrall
clearly does not disclose a social media feed.
App. Br. 7. Further, Appellants argue Mclntire merely generically
discusses social media sites as a venue on which media may be posted
and does not teach generating topics of interest from a social media
site. Reply Br. 8.
The Examiner, in response to Appellants’ arguments with respect to
the first issue finds that Thrall teaches that current interests in a plurality of
topics are identified from actions of users. Answer 4 (citing Thrall, paras.
16, 21); Final Act. 4 (citing Thrall, paras. 37, 41, Fig. 1). Further, the
Examiner finds that Mclntire teaches that media may be posted to a social
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media site. Answer 4 (citing Mclntire, para. 50). Based upon these findings
the Examiner considers the references to teach identifying a plurality of
topics from a social media feed.
We have reviewed the Examiner’s response and the cited teachings of
Thrall and Mclntire and concur with the Examiner. Thrall teaches interest
data, topics, are generated from dynamic data representing actions of users
as determined from online activity of a user population. Thrall, paras. 15,
16, 25. Mclntire teaches that one venue of user online activity includes
social media. Appellants have not identified a definition of what constitutes
social media, nor does Appellants’ Specification provide a definition.
Appellants’ Specification merely identifies Twitter and Facebook as
examples of social media content feed. As such we do not find that the
claimed social media feed is different from the online activity of a user
population as discussed in Thrall. Further, Mclntire’s discussion of social
media as a venue for user activity (positing and viewing content), suggests
that social media is one venue from which actions of users can be evaluated
to generate topics of interest. Thus, Appellants’ arguments directed to the
first issue, have not persuaded us of error in the Examiner’s rejection of
claim 21.
Appellants’ arguments directed to the second issue assert the rejection
of independent claim 21 is in error:
At no point does Mclntire describe a step akin to “generating.”
“Ordering metadata” as described by Mclntire, is distinct from
“generating a media content playlist” as claimed. “Generating a
media content playlist” utilizes metadata, however the media content
play list is generated utilizing a calculated judgment score for each
content episode to indicate order, not the metadata itself. Moreover,
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Mclntire does not disclose any content episodes nor a media content
playlist.
App. Br. 8.
The Examiner, in response to Appellants’ arguments with respect to
the second issue, finds that Mclntire teaches generating a top ten list of
media that is to be displayed in the on a media player. Answer 5 (citing
Mclntire, paras. 32, 90). Based upon this finding, the Examiner considers
Mclntire to teach generating the claimed playlist.
We have reviewed the Examiner’s response and the cited teachings of
Mclntire and concur with the Examiner. Mclntire teaches content can be
ranked based on performance of user interaction into a top ten list. See
Mclntire, para. 90. Appellants’ have not identified a definition of what
constitutes social media, nor does Appellants’ Specification provide a
definition. We consider a playlist to be merely a list of media to be played,
which Mclntire’s top ten list of media meets. Further, the list is based upon
performance of user interaction which is a calculated judgement score.
Thus, Appellants’ arguments directed to the second issue, have not
persuaded us of error in the Examiner’s rejection of claim 21. As these are
the only two issues presented with respect to claim 21 we sustain the
Examiner’s obviousness rejection of claim 21 and claims 22, 24 through 29,
31 through 36, 38, and 40 which are grouped with claim 21.
Appellants’ arguments directed to the third issue assert the rejection of
dependent claim 23 is in error as:
Mclntire is concerned with notifying a user of a media when it
has been consumed a certain number of times. Mclntire does
not disclose receiving the consume or skip behavior
information of a media content episode because the notification
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isn't the “skip/consume behavior,” but rather is the fact that the
media has been viewed a certain number of times. Said another
way, the claims are directed to receiving skip/consume behavior
for a particular episode, whereas Mclntire is only directed to
alerting a user to a media item when the media item has a
certain number of views.
App. Br. 9.
The Examiner finds that Mclntire uses user behavior and other
information about the user when selecting content. Answer 5 (citing
Mclntire, para. 40). Thus, the Examiner finds that Mclntire teaches
receiving user skip/consume behavior. We have reviewed the Examiner’s
response and the cited teachings of Mclntire and concur with the Examiner.
We further note that Mclntire states that user behavior data may show that
users have abandoned viewing the media after an average time, which we
consider to also teach skip/consume behavior. Mclntire, para. 79. Thus,
Appellants’ arguments have not persuaded us of error in the Examiner’s
rejection of dependent claim 23 and we sustain the Examiner’s obviousness
rejection of claim 23, and claims 30 and 37 grouped with claim 23.
DECISION
We sustain the Examiner’s rejections of claims 21 through 40.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1). See 37 C.F.R.
§ 1.136(a)(l)(iv).
AFFIRMED
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