Ex Parte Rezaei et al

Patent Trials and Appeals Board

Mar 21, 2019

12476205 - (D) (P.T.A.B. Mar. 21, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/476,205 06/01/2009
67208 7590
Proactive Patents LLC
955 Garden Park Drive
Ste 230
ALLEN, TX 75013
03/25/2019
FIRST NAMED INVENTOR
Behnam A. Rezaei
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.
050759-008000 4944
EXAMINER
SORKOWITZ, DANIEL M
ART UNIT PAPER NUMBER
3681
NOTIFICATION DATE DELIVERY MODE
03/25/2019 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):
eofficeaction@appcoll.com
mzarinelli@proactivepatents.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BEHNAM A. REZAEI, RICCARDO BOSCOLO,
NIMA KHAJEHNOURI, VWANI P. ROYCHOWDHURY,
and RIMA WAN GUN AD HI
Appeal 2018-000110
Application 12/476,205
Technology Center 3600
Before JOSEPH L. DIXON, JAMES W. DEJMEK, and
STEPHEN E. BELISLE, Administrative Patent Judges.
DIXON, Administrative Patent Judge.
DECISION ON APPEAL
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Application 12/476,205
STATEMENT OF THE CASE
Appellants 1 appeal under 35 U.S.C. § 134(a) from a rejection of
claims 1-21, 24, and 25. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
The claims are directed to a behavioral targeting for tracking,
aggregating, and predicting online behavior. Claim 1, reproduced below, is
illustrative of the claimed subject matter: 2
1. A computer implemented method comprising:
correlating, by a computer system, one or more online
events of a user with one or more features of a pre-computed
concept map representing a plurality of concepts, concept
metadata, and relationships between the plurality of
concepts, wherein the relationships are represented by an
edge, and wherein correlating the one or more online events
of a user with one or more features of a pre-computed concept
map comprises determining a list of features matching the
one or more online events and mapping the list of features to
nodes and information in the concept map;
aggregating, by the computer system, a concept map
history of the user to obtain online behavior of the user over
time based on the correlating;
aggregating, by the computer system, the online
behavior of the user with online behavior of the one or more
other users to obtain aggregated online user behavior;
updating the pre-computed concept map based on the
[ sic, the] aggregated online user behavior, wherein the
1 Appellants indicate Netseer Acquisition, Inc. is the real party in interest.
(App. Br. 3).
2 We note that Appellants attempt to amend the "updating" limitation in
independent claim 1, but claim amendments are inappropriate in the
Appendix to the Appeal Brief. Appellants should request amendment in any
further prosecution on the merits. See 37 CPR 4I.37(c)(2); MPEP § 1206.
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updating includes modifying an edge between two of the
plurality of concepts in the pre-computed concept map;
tagging at least one edge in the pre-computed concept
map with a user intention or action category based on the
aggregated online user behavior; and
predicting, by the computer system, future online
behavior of the user using the concept map and based at least
in part on the online behavior of the user over time and the
aggregated online user behavior.
App. Br. 26 (Claims Appendix).
REJECTION
The Examiner made the following rejection:
Claims 1-21, 24, and 25 stand rejected under 35 U.S.C. § 101 because
the claimed invention is directed to patent-ineligible subject matter
ANALYSIS
PRINCIPLES OF LAW
An invention is patent eligible if it claims a "new and useful process,
machine, manufacture, or composition of matter." 35 U.S.C. § 101.
However, the Supreme Court has long interpreted 35 U.S.C. § 101 to include
implicit exceptions: "[l]aws of nature, natural phenomena, and abstract
ideas" are not patentable. E.g., Alice Corp. Pty. Ltd. v. CLS Bank Int 'l, 573
U.S. 208,216 (2014).
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court's two-step framework, described in Mayo
and Alice. Id. at 217-18 ( citing Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 566 U.S. 66, 75-77 (2012)). In accordance with that framework,
we first determine what concept the claim is "directed to." See Alice, 573
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U.S. at 219 ("On their face, the claims before us are drawn to the concept of
intermediated settlement, i.e., the use of a third party to mitigate settlement
risk."); see also Bilski v. Kappas, 561 U.S. 593, 611 (2010) ("Claims 1 and 4
in [P]etitioners' application explain the basic concept of hedging, or
protecting against risk.").
Concepts determined to be abstract ideas, and thus patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219-20; Bilski, 561 U.S. at 611 );
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594--95 (1978)); and
mental processes (Gottschalkv. Benson, 409 U.S. 63, 67 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as "molding rubber products" (Diamond v. Diehr, 450 U.S. 175, 192
(1981) ); "tanning, dyeing, making water-proof cloth, vulcanizing India
rubber, smelting ores" (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S.
252, 267---68 (1854))); and manufacturing flour (Benson, 409 U.S. at 69
(citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
In Diehr, the claim at issue recited a mathematical formula, but the
Supreme Court held that "[a] claim drawn to subject matter otherwise
statutory does not become nonstatutory simply because it uses a
mathematical formula." Diehr, 450 U.S. at 176, 191 ("We view
respondents' claims as nothing more than a process for molding rubber
products and not as an attempt to patent a mathematical formula."). Having
said that, the Supreme Court also indicated that a claim "seeking patent
protection for that formula in the abstract ... is not accorded the protection
of our patent laws, ... and this principle cannot be circumvented by
attempting to limit the use of the formula to a particular technological
environment." Id. ( citing Benson and Flook), and id. at 187 ("It is now
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commonplace that an application of a law of nature or mathematical formula
to a known structure or process may well be deserving of patent
protection.").
If the claim is "directed to" an abstract idea, we tum to the second
step of the Alice and Mayo framework, where "we must examine the
elements of the claim to determine whether it contains an 'inventive
concept' sufficient to 'transform' the claimed abstract idea into a patent
eligible application." Alice, 573 U.S. at 221 ( quotation omitted). "A claim
that recites an abstract idea must include 'additional features' to ensure 'that
the [claim] is more than a drafting effort designed to monopolize the
[abstract idea]."' Id. (alteration in original) ( quoting Mayo, 566 U.S. at 77).
"[M]erely requir[ing] generic computer implementation[] fail[ s] to transform
that abstract idea into a patent-eligible invention." Id.
USPTO Guidance
The PTO recently published revised guidance in the Federal Register
concerning the application of§ 101. 2019 Revised Patent Subject Matter
Eligibility Guidance, 84 Fed. Reg. 50 (January 7, 2019) (hereinafter
"Guidance") (https://www.govinfo.gov/content/pkg/FR-2019-01-07 /pdf/
2018-28282.pdf).
Under that Guidance, we first look to whether the claim recites:
( 1) any judicial exceptions, including certain groupings of abstract
ideas (i.e., mathematical concepts, certain methods of organizing human
activity such as a fundamental economic practice, or mental processes); 3 and
3 Referred to as "Revised Step 2A, Prong l" in the Guidance (hereinafter
"Step 2A(i)").
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(2) additional elements that integrate the judicial exception into a
practical application (see MPEP § 2106.0S(a}-(c), (e}-(h)). 4
Only if a claim (1) recites a judicial exception and (2) does not
integrate that exception into a practical application, do we then look to
whether the claim:
(3) adds a specific limitation beyond the judicial exception that are not
"well-understood, routine, conventional" in the field (see MPEP
§ 2106.0S(d)); or
( 4) simply appends well-understood, routine, conventional activities
previously known to the industry, specified at a high level of generality, to
the judicial exception. 5
See Guidance.
Step 2A(i) ~ Abstract Idea
Informed by our judicial precedent, the recent Guidance extracts and
synthesizes key concepts identified by the courts as abstract ideas to explain
that the abstract idea exception includes the following groupings of subject
matter, when recited as such in a claim limitation:
(a) Mathematical concepts-mathematical relationships, mathematical
formulas or equations, mathematical calculations;
(b) Certain methods of organizing human activity - fundamental
economic principles or practices (including hedging, insurance, mitigating
risk); commercial or legal interactions (including agreements in the form of
contracts; legal obligations; advertising, marketing or sales activities or
4 Referred to as "Revised Step 2A, Prong 2" in the Guidance (hereinafter
"Step 2A(ii)").
5 Items (3) and (4) continue to be collectively referred to as "Step 2B" of the
Supreme Court's two-step framework, described in Mayo and Alice.
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behaviors; business relations); managing personal behavior or relationships
or interactions between people (including social activities, teaching, and
following rules or instructions); and
( c) Mental processes----concepts performed in the human mind
(including an observation, evaluation, judgment, opinion).
Under the Guidance, if the claim does not recite a judicial exception
(a law of nature, natural phenomenon, or subject matter within the
enumerated groupings of abstract ideas above), then the claim is patent
eligible at Step 2A(i). This determination concludes the eligibility analysis,
except in situations identified in the Guidance.
However, if the claim recites a judicial exception (i.e., an abstract idea
enumerated above, a law of nature, or a natural phenomenon), the claim
requires further analysis for a practical application of the judicial exception
in Step 2A(ii).
Step 2A(ii) ~ Practical Application
If a claim recites a judicial exception in Step 2A (i), we determine
whether the recited judicial exception is integrated into a practical
application of that exception in Step 2A(ii) by: (a) identifying whether there
are any additional elements recited in the claim beyond the judicial
exception( s ); and (b) evaluating those additional elements individually and
in combination to determine whether they integrate the exception into a
practical application.
The seven identified "practical application" sections of the MPEP,
cited in the Guidance under Step 2A(ii), are:
(1) MPEP § 2106.0S(a) Improvements to the Functioning of a
Computer or To Any Other Technology or Technical Field
(2) MPEP § 2106.05(b) Particular Machine
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(3) MPEP § 2106.05( c) Particular Transformation
(4) MPEP § 2106.05(e) Other Meaningful Limitations
(5) MPEP § 2106.05(±) Mere Instructions To Apply An Exception
( 6) MPEP § 2106.05(g) Insignificant Extra-Solution Activity
(7) MPEP § 2106.05(h) Field of Use and Technological
Environment
See MPEP § 2106.05(a}-(c), (e}-(h). Citations to the MPEP herein
refer to revision [R-08.2017].
If the recited judicial exception is integrated into a practical
application as determined under one or more of the MPEP sections cited
above, then the claim is not directed to the judicial exception, and the patent-
eligibility inquiry ends. If not, then analysis proceeds to Step 2B.
Step 2B - "Inventive Concept" or "Significantly More"
Under our precedent, it is possible that a claim that does not
"integrate" a recited judicial exception under Step 2A(ii) is nonetheless
patent eligible. For example, the claim may recite additional elements that
render the claim patent eligible even though a judicial exception is recited in
a separate claim element. 6 The Federal Circuit has held claims eligible at
the second step of the Alice/Mayo test (US PTO Step 2B) because the
additional elements recited in the claims provided "significantly more" than
the recited judicial exception ( e.g., because the additional elements were
unconventional in combination). 7 Therefore, if a claim has been determined
6 See, e.g., Diehr, 450 U.S. at 187.
7 See, e.g., Amdocs (Israel), Ltd. v. Openet Telecom, Inc., 841 F.3d 1288,
1300, 1304 (Fed. Cir. 2016); BASCOM Global Internet Services, Inc. v.
AT&T Mobility LLC, 827 F.3d 1341, 1349-52 (Fed. Cir. 2016); DDR
Holdings v. Hotels.com, 773 F.3d 1245, 1257-59 (Fed. Cir. 2014).
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to be directed to a judicial exception under Revised Step 2A, we must
evaluate the additional elements individually and in combination under Step
2B to determine whether they provide an inventive concept (i.e., whether the
additional elements amount to significantly more than the exception itself). 8
Under the Guidance, we must consider in Step 2B whether an
additional element or combination of elements: (1) "Adds a specific
limitation or combination of limitations that are not well-understood,
routine, conventional activity in the field, which is indicative that an
inventive concept may be present;" or (2) "simply appends well-understood,
routine, conventional activities previously known to the industry, specified
at a high level of generality, to the judicial exception, which is indicative
that an inventive concept may not be present." See Guidance, III.B. 9
In the Step 2B analysis, an additional element ( or combination of
elements) is not well-understood, routine, or conventional unless the
8 We note the patent eligibility inquiry may contain underlying issues of
fact. Mortg. Grader, Inc. v. First Choice Loan Servs. Inc., 811 F.3d 1314,
1325 (Fed. Cir. 2016). In particular, "[t]he question of whether a claim
element or combination of elements is well-understood, routine and
conventional to a skilled artisan in the relevant field is a question of fact."
Berkheimer v. HP Inc., 881 F.3d 1360, 1368 (Fed. Cir. 2018).
9 In accordance with existing Step 2B Guidance, an Examiner's conclusion
that an additional element ( or combination of elements) is well understood,
routine, conventional activity must be supported with a factual
determination. For more information concerning evaluation of well-
understood, routine, conventional activity, see MPEP § 2106.05( d), as
modified by the USPTO Berkheimer Memorandum (USPTO Commissioner
for Patents Memorandum dated Apr. 9, 2018, "Changes in Examination
Procedure Pertaining to Subject Matter Eligibility, Recent Subject Matter
Eligibility Decision (Berkheimer v. HP, Inc.)" (hereinafter "Berkheimer
Memo").
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examiner finds an evidentiary basis, and expressly supports a rejection in
writing with, one or more of the following:
1. A citation to an express statement in the specification or to a
statement made by an applicant during prosecution that demonstrates the
well-understood, routine, conventional nature of the additional element(s).
2. A citation to one or more of the court decisions discussed in
MPEP § 2106.0S(d)(II) as noting the well-understood, routine, conventional
nature of the additional element(s).
3. A citation to a publication that demonstrates the well-
understood, routine, conventional nature of the additional element(s).
4. A statement that the examiner is taking official notice of the
well-understood, routine, conventional nature of the additional element(s).
See Berkheimer Memo.
The analysis in Step 2B further determines whether an additional
element or combination of elements:
(a) Adds a specific limitation or combination of limitations that are
not well-understood, routine, conventional activity in the field, which is
indicative that an inventive concept may be present; or
(b) simply appends well-understood, routine, conventional activities
previously known to the industry, specified at a high level of generality, to
the judicial exception, which is indicative that an inventive concept may not
be present.
Guidance, and see Berkheimer Memo.
If the Examiner or the Board determines under Step 2B that the
element ( or combination of elements) amounts to significantly more than the
exception itself, the claim is eligible, thereby concluding the eligibility
analysis.
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However, if a determination is made that the element and combination
of elements does not amount to significantly more than the exception itself,
the claim is ineligible under Step 2B, and the claim should be rejected for
lack of subject matter eligibility.
35 U.S.C. § 101
With respect to claims 1--4, 7-12, and 22, Appellants do not set forth
separate arguments and argue the claims together. (App. Br. 8-20).
Therefore, we select independent claim 1 as the representative claim for the
group and will address Appellants' arguments thereto. 37 C.F.R.
§ 4I.37(c)(l)(iv). Arguments which Appellants could have made but did not
make in the Briefs are deemed to be waived. See 37 C.F.R.
§ 4I.37(c)(l)(iv).
Step 1
Claim 1, as a method claim, recites one of the enumerated categories
of statutory subject matter in 35 U.S.C. § 101. Therefore, the issue before us
is whether it is directed to a judicial exception without significantly more.
Step 2A(i): Does the Claim Recite a Judicial Exception?
The Examiner determines the claims are patent ineligible under
35 U.S.C. § 101, because
Claims 1-21 and 24--25 are directed to targeted advertising
comprising, establishing data sets of online user behavior and
using the data sets for targeting advertisements, which is
considered an idea in and of itself. The courts have indicated that
comparing new and stored information and using rules to identify
options (SmartGene ); using categories to organize, store and
transmit information (Cyberfone ); organizing information
through mathematical correlations (Digitech); and ideas in and
of themselves (Bilski and Alice) are all examples of judicial
exceptions, particularly abstract ideas. Because all of the
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functional aspects of the claims reflect these same procedures,
the claims are directed to abstract[] ideas.
Further the claims as a whole disclose only the abstract
idea of providing targeted advertising (i.e. a fundamental
economic practice) using the conventional technology available
to and relying on information generally available to such
conventional technology (web click advertising systems).
(Final Act. 3).
Based upon the 2019 Guidance, we refine the Examiner's statement of
the abstract idea to characterize the abstract idea as the "predicting ... future
online behavior of the user using the concept map and based at least in part
on the online behavior of the user over time and the aggregated online user
behavior" step of independent claim 1, which is a mental process that can be
performed in the human mind and/or by pen and paper. We find this type of
activity, i.e., "predicting ... future online behavior of the user," from prior
behavior and aggregated behavior history for example, includes
longstanding conduct that existed well before the advent of computers and
the Internet, and could be carried out by a human with pen and paper. See
CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1375 (Fed. Cir.
2011) ("That purely mental processes can be unpatentable, even when
performed by a computer, was precisely the holding of the Supreme Court in
Gottschalk v. Benson."). 10
Additionally, we find the Specification discloses the pre-computed
"concept map" "represents concepts, concept metadata, and relationships
between the plurality of concepts." (Spec. ,r 11) ( emphasis added). We find
the concept map, under its broadest reasonable interpretation, recites merely
1° CyberSource further guides that "a method that can be performed by
human thought alone is merely an abstract idea and is not patent-eligible
under§ 101." CyberSource, 654 F.3d at 1373.
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"concepts" which are mental processes that can be performed in the human
mind and/or by pen and paper.
Moreover, we find the additional elements of independent claim 1 ,
under their broadest reasonable interpretation, recite the additional
elements/steps of "correlating," "aggregating," "updating," and "tagging"
are steps used in analysis for determining targeted advertising as indicated
by the Examiner and evidenced by dependent claim 2 ("further comprising
targeting one or more ads to the user based at least in part on the predicted
future online behavior of the user.") These additional steps are certain
methods of organizing human activity and are also mental processes that can
be performed in the human mind and/or by pen and paper. Accordingly, we
conclude the claims recite a mental process which is one of the certain sub-
groupings of abstract ideas identified by the Revised Guidance and is thus
"directed to" an abstract idea.
Our reviewing court has previously held other patent claims ineligible
for reciting similar abstract concepts. For example, although the Supreme
Court has enhanced the § 101 analysis since Cy her Source in cases like Mayo
and Alice, the Federal Circuit continues to "treat[] analyzing information by
steps people go through in their minds, ... without more, as essentially
mental processes within the abstract-idea category." Synopsys, Inc. v.
Mentor Graphics Corp., 839 F.3d 1138, 1146-47 (Fed. Cir. 2016) (quoting
Elec. Power Grp. v. Alstom S.A., 830 F.3d 1350, 1354 (Fed. Cir. 2016)).
Step 2A(ii): Judicial Exception Integrated
into a Practical Application?
If the claims recite a judicial exception, as we conclude above, we
proceed to the "practical application" Step 2A(ii) in which we determine
whether the recited judicial exception is integrated into a practical
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application of that exception by: (a) identifying whether there are any
additional elements recited in the claim beyond the judicial exception(s); and
(b) evaluating those additional elements individually and in combination to
determine whether they integrate the exception into a practical application.
In addition to the abstract idea of "predicting ... future online
behavior of the user ... " identified in Step 2A(i), supra, claim 1 recites the
additional elements/steps of "correlating," "aggregating," "updating," and
"tagging."
As to these specific limitations, we find these limitations broadly
recite additional abstract ideas relating to organizing human activity and
fundamental economic principles or practices in advertising (based upon
dependent claim 2 "targeting one or more ads") along with additional
abstract ideas of mental process that can be performed in the human mind
and/or by pen and paper and insignificant data gathering. See MPEP
§ 2106.05(g). In addition, data gathering, as performed by the steps or
function in Appellants' claims, is a classic example of insignificant extra-
solution activity. See, e.g., In re Bilski, 545 F.3d 943, 963 (Fed. Cir. 2008)
(en bane), ajf'd sub nom, Bilski v. Kappas, 561 U.S. 593 (2010).
On this record, we are of the view that Appellants' claims do not
operate the recited generic computer components in an unconventional
manner to achieve an improvement in computer functionality. See MPEP
§ 2106.05(a). Appellants' Specification identifies Figure 12 "a computer
system suitable for implementing aspects of the present invention" (Spec.
,r 13) and corresponding description in paragraphs 64--82 which describes
only generic well-known components. (App. Br. 3---6 citing Spec. ,r,r 23, 66,
67, 84, 89, 90, 107 (but we note that the originally filed Specification, filed
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June 1, 2009, ends at ,r 82 and it appears that Appellants reference the
published application, dated December 3, 2009)).
Accordingly, we conclude the recited judicial exception is not
integrated into a practical application as determined under one or more of
the MPEP sections cited above, such that the claim is directed to the judicial
exception.
Step 2B ~ "Inventive Concept" or "Significantly More"
If the claims are "directed to" a patent-ineligible concept, as we
conclude above, we proceed to the "inventive concept" step. For Step 2B,
we must "look with more specificity at what the claim elements add, in order
to determine 'whether they identify an "inventive concept" in the application
of the ineligible subject matter' to which the claim is directed."' Affinity
Labs of Tex., LLC v. DIRECTV, LLC, 838 F.3d 1253, 1258 (Fed. Cir. 2016)
(quoting Elec. Power Grp., 830 F.3d at 1353).
In applying step 2 of the Alice analysis, our reviewing court guides we
must "determine whether the claims do significantly more than simply
describe [the] abstract method" and thus transform the abstract idea into
patentable subject matter. Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709,
715 (Fed. Cir. 2014). We look to see whether there are any "additional
features" in the claims that constitute an "inventive concept," thereby
rendering the claims eligible for patenting even if they are directed to an
abstract idea. Alice, 573 U.S. at 221. Those "additional features" must be
more than "well-understood, routine, conventional activity." Mayo, 566
U.S. at 79.
Limitations referenced in Alice that are not enough to qualify as
"significantly more" when recited in a claim with an abstract idea include, as
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non-limiting or non-exclusive examples: adding the words "apply it" ( or an
equivalent) with an abstract idea 11; mere instructions to implement an
abstract idea on a computer12; or requiring no more than a generic computer
to perform generic computer functions that are well-understood, routine and
conventional activities previously known to the industry. 13
Evaluating representative claim 1 under step 2 of the Alice analysis,
we agree with the Examiner that claim 1 lacks an inventive concept that
transforms the abstract idea of "predicting ... future online behavior of the
user ... 'into a patent-eligible application of that abstract idea."' See Final
Act. 3--4.
We note the patent eligibility inquiry may contain underlying issues of
fact. Mortg. Grader, 811 F.3d at 1325. In particular, "[t]he question of
whether a claim element or combination of elements is well-understood,
routine and conventional to a skilled artisan in the relevant field is a question
of fact." Berkheimer, 881 F.3d at 1368.
As evidence of the conventional nature of the computing device,
processor, display, system interface and storage, we note the Examiner's
citation to Spec. ,r,r 23, 66, 67, 84, 89, 90, 107 of Appellants' published
application identifies a block diagram system in Figure 1. (Ans. 5---6; citing
,r 23 of the published application). We further find the published application
discloses "[f]inally, it should be understood that processes and techniques
11 Alice, 573 U.S. at 221-23.
12 Alice, 573 U.S. at 221, e.g., simply implementing a mathematical
principle on a physical machine, namely a computer (citing Mayo, 566 U.S.
at 84--85).
13 Alice, 573 U.S. at 225, e.g., using a computer to obtain data, adjust
account balances, and issue automated instructions.
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described herein are not inherently related to any particular apparatus and
may be implemented by any suitable combination of components. Further,
various types of general purpose devices may be used in accordance with the
teachings described herein." (Spec. ,r 131 of the published application).
We agree with the Examiner that the claim limitations may be broadly
but reasonably construed as reciting conventional computer components and
techniques, particularly in light of Appellants' Specification, as quoted
above. 14
With respect to the Step 2B analysis, we agree with the Examiner
because, as in Alice, the recitation of a "computing device comprising a
processor, a display, a system interface, and accessible storage having
instructions stored thereon" ( claim 1) is simply not enough to transform the
patent-ineligible abstract idea here into a patent-eligible invention. See
Alice, 573 U.S. at 221 ("[C]laims, which merely require generic computer
implementation, fail to transform [an] abstract idea into a patent-eligible
invention.").
Accordingly, based upon the findings above, on this record, we are
not persuaded of error in the Examiner's conclusion that the appealed claims
are directed to patent-ineligible subject matter. Therefore, we sustain the
14 During prosecution, claims must be given their broadest reasonable
interpretation when reading claim language in light of the specification as it
would be interpreted by one of ordinary skill in the art. In re Am. Acad. of
Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). Under this standard,
we interpret claim terms using "the broadest reasonable meaning of the
words in their ordinary usage as they would be understood by one of
ordinary skill in the art, taking into account whatever enlightenment by way
of definitions or otherwise that may be afforded by the written description
contained in the applicant's specification." In re Morris, 127 F.3d 1048,
1054 (Fed. Cir. 1997).
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Examiner's § 101 rejection of representative independent claim 1, and
grouped claims 2-21, 24, and 25, not argued separately, and which fall
therewith.
Response to Appellants 'Arguments
We address Appellants' arguments as they apply to the Guidance and
add the following primarily for emphasis and clarification with respect to the
Guidance.
Appellants argue that the claimed invention is "not directed to an
abstract idea" in independent claim 1 and there is "no need to make an
analysis of the second step of Mayo." (App. Br. 17-18).
Appellants provide a general comparison of the claims to "Speed
Track; Synchronoss Technologies; IO ENGINE; and Alice, all of which
unequivocally support the position that the pending claims are directed to
patent-eligible subject matter." (App. Br. 19). Appellants present similar
conclusory arguments:
similar to the claims in Speed Track, the present claims are
directed to a specific improvement that existed in the art; namely,
predicting a user's online behavior based on a correlation
process, aggregated data, updating a concept map, tagging an
edge of the concept map and using that information to predict the
online actions of a user.
(App. Br. 19-20; see also App. Br. 21-23).
Appellants argue that the claimed invention is similar to Enfzsh where
the claimed invention improves search engine operation. (Reply Br. 3--4 ).
We find Appellants' argument to not be commensurate in scope with the
express language of representative independent claim 1 which does not
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recite a search engine and, consequently, cannot improve the operation
thereof. 15
Appellants further argue that the Examiner's finding of an abstract
idea directed to advertising is in error and the claimed invention is
"distinguished from an abstract method of using advertising as an exchange
or currency, as claimed in Ultramercial." (App. Br. 16-17; see also Reply
Br. 2).
We note that dependent claim 2 further limits the claimed invention to
targeting ads. As a result, the scope of independent claim 1 includes
targeting advertisement and is broad enough to cover other claim usages.
Appellants additionally argue:
the independent claims do not recite only "conventional
technology". Rather, they recite novel limitations including
essentially every limitation of every independent claim,
evidenced by the fact that there are no pending prior art
rejections. Further, there is no authority to support the position
that "conventional technology" encompasses, for example, "a
pre-computed concept map representing a plurality of concepts,
concept metadata, and relationships between the plurality of
concepts, wherein the relationships are represented by an edge,
and wherein correlating the one or more online events of a user
with one or more features of a pre-computed concept map
comprises determining a list of features matching the one or more
online events and mapping the list of features to nodes and
information in the concept map" as recited in claim 1. Nor, for
that matter, can conventional technology be reasonably deemed
to encompass any other limitation of claim 1. This is especially
true when considered in the context of predicting future online
15 Additionally, we note that dependent claims 4 and 14 add a limitation of
"searching for a keyword," but this is 1 of 4 limitations in the alternative
(which does not necessarily limit independent claim 1 ).
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Application 12/476,205
behavior of a user, which itself cannot reasonably be deemed to
fall within the scope of conventional technology.
(Reply Br. 6). We disagree with Appellants and find the claim merely sets
forth a generic "computer system."
With regards to Appellants' arguments regarding the McRO case,
Appellants contend that "[s]ubstituting the relevant subject of the instant
claims 'search engine' for the subject 'animation' in the foregoing, the
entirety of the underlined portion of McRO cited above is directly applicable
to the instant claims." (Reply Br. 7-10).
We disagree with Appellants because claim 1 does not expressly
recite a "search engine" and Appellants' comparison based thereon is
unpersuasive.
CONCLUSION
The Examiner did not err in rejecting claims 1-21, 24, and 25 based
upon a lack of subject matter eligibility under 35 U.S.C. § 101.
DECISION
For the above reasons, we affirm the Examiner's subject matter
eligibility rejection of claims 1-21, 24, and 25 under 35 U.S.C. § 101.
No time period for taking any subsequent action in connection with
this appeal maybe extended under 37 C.F.R. § 1.136(a)(l)(iv) (2017).
AFFIRMED
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