Ex Parte Sandoval et alDownload PDFPatent Trial and Appeal BoardNov 8, 201713560214 (P.T.A.B. Nov. 8, 2017) Copy Citation 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. 120175.551D1 7498 EXAMINER ANDERSON, SCOTT C ART UNIT PAPER NUMBER 3688 MAIL DATE DELIVERY MODE 13/560,214 07/27/2012 Michael Sandoval 500 7590 11/08/2017 SEED INTELLECTUAL PROPERTY LAW GROUP LLP 701 FIFTH AVE SUITE 5400 SEATTLE, WA 98104 11/08/2017 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte MICHAEL SANDOVAL, DAVID BRADLEY BOARDMAN, and OLIVER BRUCE DOWNS Appeal 2015-002309 Application 13/560,2141 Technology Center 3600 Before JOSEPH A. FISCHETTI, JAMES A. WORTH, and MATTHEW S. MEYERS, Administrative Patent Judges. FISCHETTI, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants seek our review under 35 U.S.C. § 134 of the Examiner’s final rejection of claims 31—54. We have jurisdiction under 35 U.S.C. § 6(b). 1 Appellants identify Atigeo LLC as the real party in interest. Appeal Br. 1. Appeal 2015-002309 Application 13/560,214 SUMMARY OF DECISION We AFFIRM. THE INVENTION Appellants’ claims are directed to “computing systems and software for the collection, development, analysis, and use of profile information.” (Spec. 12). Claim 31 reproduced below, is representative of the subject matter on appeal. 31. A method for electronic profile management by a profiling system configured to serve as a trusted intermediary between an entity and a provider, the method comprising: storing a plurality of electronic profiles in an electronic storage medium, each electronic profile from the plurality of electronic profiles associated with a respective entity from a plurality of entities, and each electronic profile from the plurality of electronic profiles including at least one preference of the respective entity and permissions configurable by the respective entity for access to the electronic profile; receiving, at a profiling system in communication with the electronic storage medium, a request from an electronic device associated with a provider to evaluate a plurality of content items of the provider for a first entity, wherein the provider is different from the first entity; if permissions associated with an electronic profile of the first entity are configured to allow access to the electronic profile of the first entity for evaluating content items of the provider, accessing, by the profiling system, the electronic profile associated with the first entity, the electronic profile associated with the first entity being inaccessible directly by the provider; and computing a degree of relevance of each content item from the plurality of content items to the electronic profile of the first entity based in part on information retrieved from the electronic profile of the first entity including a preference of the first entity. 2 Appeal 2015-002309 Application 13/560,214 THE REJECTION The Examiner relies upon the following as evidence of unpatentability: Barr et al. US 5,873,076 Feb. 16, 1999 (“Barr”) Papineni, Why Inverse Document Frequency? (Proceedings of the second meeting of the North American Chapter of the Assn, for Computational Linguistics on Language Technologies, Assn, for Computational Linguistics, 2001). Rouse, Relational Database, SearchSQLServer http://sea.rehsqlserver.techtarRet.coni/defmition/relational-database (April 2006). The following rejections are before us for review. Claims 31, 32, 34, 35, 40-46, 50-52, and 54 are rejected under 35 U.S.C. § 102(b) as anticipated by Barr. Claims 33 and 47-49 are rejected under 35 U.S.C. § 103(a) over Ban in view of Rouse. Claims 36—39 and 53 are rejected under 35 U.S.C. §103(a) as being unpatentable over Barr et al. in view of Papineni Claims 31—54 are rejected under 35 U.S.C. § 101. ANALYSIS 35 U.S.C. § 102 (b) REJECTION Each of independent claims 31 and 45 recites, in pertinent part, 3 Appeal 2015-002309 Application 13/560,214 storing a plurality of electronic profiles in an electronic storage medium, each electronic profile from the plurality of electronic profiles associated with a respective entity from a plurality of entities, and each electronic profile from the plurality of electronic profiles including at least one preference of the respective entity and permissions configurable by the respective entity for access to the electronic profile. Appellants argue, Barr does not teach permissions configurable by the respective entity for access to the electronic profile as recited in the claim element above. Barr states only that “More particularly, based on information input by the user, authentication means 122 determines whether the user is authentic, i.e., whether the user is authorized to access data center 110” (Barr, Col. 11, lines 49- 50). Barr merely describes the authentication of a user. Specifically, the authentication operation verifies the identity of the user using identification information such as a username and password. The Examiner’s remarks confuse the authentication process with the permission-management process. Those familiar with computer security systems understand that the user authentication process is a different process from the management of user rights, involving different types of information and operations and producing different types of results. Appeal Br. 13—14. The Examiner however found, storing a plurality of electronic profiles in an electronic storage medium, [Col. 11, lines 6-11] each electronic profile from the plurality of electronic profiles associated with a respective entity from a plurality of entities, and each electronic profile from the plurality of electronic profiles including at least one preference of the respective entity [Col. 11, lines 56-65; such 4 Appeal 2015-002309 Application 13/560,214 things as type of computer used by the user and the identity of the communications link read on a user preference; a user is an entity associated with a user profile] and permissions configurable by the respective entity for access to the electronic profile; [Col. 11, lines 49-50] .... (Final Act. 2—3) (emphasis omitted). We agree with Appellants. We begin by construing the scope of the claims. The Specification refers to the term “preference” as “subjective associations between the entity and various words that may represent things, people, or groups.” Specification 134. The Specification also describes, “[t]he permissions may specify when, how, how often, or where the profiling system may access the entity’s profile responsive to a request from a specific entity, or type of entity.” Specification 142. Based on this meaning, we do not agree with the Examiner that Barr anticipates, one preference of the respective entity and permissions configurable by the respective entity for access to the electronic profile. This is because our review of Barr at column 11 lines 56—65 reveals that Barr’s states: the enrollment means 120 requests the user to provide personal “enrollment information” about him/herself such as, for example, the user’s full name, address, grade level, gender, occupation, the occupations of the user’s parents, the numbers of brothers and/or sisters of the user, the type of computer used by the user, the user’s modem speed, the display capabilities of the user's display, the size of the memory of the user’s PC, and the identity of the communications link (e.g., the Internet, the Prodigy® network, the CompuServe® network, or the Microsoft® network) used for accessing the system. 5 Appeal 2015-002309 Application 13/560,214 And, our review of Barr at Col. 11, lines 48—55, reveals that Barr states: based on information input by the user, authentication means 122 determines whether the user is authentic, i.e[.], whether the user is authorized to access data center 110. If the user is authentic, but has not used accessed data center 110 previously, processing proceeds to step 315, where enrollment means 120 optionally downloads a copy of software system 106 onto PC 104, and optionally executes software 106. We do not find the sections of Barr cited by the Examiner to correspond to the claimed “permissions”, to be data that are the same as the claimed “permissions”. The data discussed in these sections of Barr (enrollment data) are merely descriptive information describing, e.g., “the user’s full name, address, grade level, gender, occupation, the occupations of the user’s parents,... the type of computer used by the user and/or the identity of the communications link... .” Barr, Column 11 lines 55—56. Moreover, according to Barr, these data are provided by the user in reply to a request by the enrollment means 120. Id. These data are simply raw data and they are not configurable.2 It serves no relational connectively to generate subjective associations between the entity and various words that may represent things, people, or groups. Thus, we will not sustain the anticipation rejection of independent claims 31 and 45. 2 Cf. The system enrollment means 120 in Barr is configurable because it is part of the computer, but it does not meet the claim requirements because the claims require that the permissions be configurable by the entity/user and not the system. 6 Appeal 2015-002309 Application 13/560,214 Since claims 32, 34, 35, 40-44, 46, 50—52, and 54 depend from one of claims 31 and 45, and since we cannot sustain the rejection of claims 31 and 45, the rejection of the dependent claims likewise cannot be sustained. The rejections of claims 33, 36—39, 47-49, and 53 under 35 U.S.C. § 103(a) are also reversed because the analysis under this section does not remedy the deficiency discussed above with the anticipation rejection. 35 U.S.C. § 101 REJECTION Claims 31—54 are rejected under 35 U.S.C. § 101 as directed to non- statutory subject matter. Representative independent claim 31 recites in pertinent part: storing a plurality of... profiles ..., each electronic profile from the plurality of electronic profiles associated with a respective entity from a plurality of entities, and each electronic profile from the plurality of electronic profiles including at least one preference of the respective entity and permissions configurable by the respective entity for access to the electronic profile; receiving, at a profiling system in communication with the electronic storage medium, a request from an electronic device associated with a provider to evaluate a plurality of content items of the provider for a first entity, wherein the provider is different from the first entity; if permissions associated with an electronic profile of the first entity are configured to allow access to the electronic profile of the first entity for evaluating content items of the provider, accessing, by the profiling system, the electronic profile associated with the first entity, 7 Appeal 2015-002309 Application 13/560,214 the electronic profile associated with the first entity being inaccessible directly by the provider; and computing a degree of relevance of each content item from the plurality of content items to the electronic profile of the first entity based in part on information retrieved from the electronic profile of the first entity including a preference of the first entity. Appeal Br. 11—12. The Supreme Court set forth a framework for distinguishing patents that claim laws of nature, natural phenomena, and abstract ideas from those that claim patent-eligible applications of those concepts. First, . . . determine whether the claims at issue are directed to one of those patent-ineligible concepts. If so, we then ask, “[w]hat else is there in the claims before us?” To answer that question, . . . 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. [The Court] 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.” Alice Corp. Pty. Ltd. v. CLS Bank Inti, 134 S. Ct. 2347, 2355 (2014) (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 72—73 (2012)). To perform this test, we must first determine whether the claims at issue are directed to a patent-ineligible concept. 8 Appeal 2015-002309 Application 13/560,214 Although the Court in Alice made a direct finding as to what the claims were directed to, we find that this case’s claims themselves and the Specification provide enough information to inform one as to what they are directed to. The preamble of claim 31 states that it is for a system configured to serve as a trusted intermediary between an entity and a provider. The steps in claim 31 result in computing a degree of relevance of each content item from the plurality of content items to the electronic profile of the first entity based in part on information retrieved from the electronic profile of the first entity including a preference of the first entity. The Specification at paragraph 4 recites: location based services receive location information from a user’s mobile device and identify nearby businesses, gas stations, or ATMs. Other location-relevant information may be provided as well, such as local weather reports. However, the information is selected based only on the user’s location. The system has no way of knowing if any of the identified businesses or facts are more relevant for the particular user than any other. The Specification at paragraph 5 further states, For example, contextual advertising systems may provide an advertisement for a web page based in part on a target word in the web page. These systems have no way of knowing if the advertisement is actually relevant to the user viewing the web page — the advertisement is chosen simply because it matches a target word on the web page. Some systems decide what products may be desirable for a user based on ratings of other similar products provided by the user. For example, some 9 Appeal 2015-002309 Application 13/560,214 recommendation services receive limited user ratings, or implicit ratings based on views or purchases, of a certain kind of product - books or movies for example - and recommend other books or movies that the user may like based on similarity to items favorably rated, such as authors, themes, actors, directors, genres, and the like. Thus, all this evidence shows that claim 1 is directed to targeted advertising by computing a degree of relevance. It follows from prior Supreme Court cases, and Gottschalk v. Benson, 409 U.S. 63 (1972) in particular, that the claims at issue here are directed to an abstract idea. Targeted advertising of products to potential customers is a fundamental economic practice because product knowledge and interest are key ingredients to effect customer purchasing. The patent-ineligible end of the 35 U.S.C. § 101 spectrum includes fundamental economic practices. See Alice Corp. Pty. Ltd., 134 S. Ct. at 2355—2357. Thus, targeted advertising is an “abstract idea” beyond the scope of § 101. As in Alice Corp. Pty. Ltd., we need not labor to delimit the precise contours of the “abstract ideas” category in this case. It is enough to recognize that there is no meaningful distinction in the level of abstraction between the concept of an intermediated settlement in Alice and the concept of targeted advertising of products to potential customers, at issue here. Both are squarely within the realm of “abstract ideas” as the Court has used that term. That the claims do not preempt all forms of the abstraction or may be limited to content items, does not make them any less abstract. See 10 Appeal 2015-002309 Application 13/560,214 OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1362—63 (Fed. Cir. 2015). The introduction of a computer into the claims does not alter the analysis at Mayo step two. the 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. Nor is limiting the use of an abstract idea “‘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 “implement[t]” an abstract idea “on ... a computer,” that addition cannot impart patent eligibility. This conclusion accords with the preemption concern that undergirds our § 101 jurisprudence. Given the ubiquity of computers, wholly generic computer implementation is not generally the sort of “additional feature[e]” that provides any “practical assurance that the process is more than a drafting effort designed to monopolize the [abstract idea] itself.” Alice Corp. Pty. Ltd., 134 S. Ct. at 2358 (alterations in original) (citations omitted). “[T]he relevant question is whether the claims here do more than simply instruct the practitioner to implement the abstract idea ... on a generic computer.” Alice Corp. Pty. Ltd., 134 S. Ct. at 2359. They do not. Taking the claim elements separately, the function performed by the computer at each step of the process is purely conventional. Using a computer to take in data, compute a result, and return the result to a user 11 Appeal 2015-002309 Application 13/560,214 amounts to electronic data query and retrieval—some of the most basic functions of a computer. All of these computer functions are well- understood, routine, conventional activities previously known to the industry. In short, each step does no more than require a generic computer to perform generic computer functions. Considered as an ordered combination, the computer components of Appellants’ method add nothing that is not already present when the steps are considered separately. Viewed as a whole, Appellants’ claims simply recite the concept of targeting advertising for products to potential customers. The claims do not, for example, purport to improve the functioning of the computer itself. Nor do they effect an improvement in any other technology or technical field. Instead, the claims at issue amount to nothing significantly more than instructions to target advertising for products to potential customers, on a generic computer. Under our precedents, that is not enough to transform an abstract idea into a patent- eligible invention. See Alice Corp. Pty. Ltd., 134 S. Ct. at 2360. As to the structural claims, they are no different from the method claims in substance. 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. This Court has long “wam[ed] ... against” interpreting § 101 “in ways that make patent eligibility ‘depend simply on the draftsman’s art.’” Alice Corp. Pty. Ltd., 134 S. Ct._at 2360 (alterations in original). 12 Appeal 2015-002309 Application 13/560,214 Thus, we find unpersuasive Appellants’ argument, that analysis of a claimed invention is required to determine whether or not a claim that includes or refers to a mathematical formula represents an attempt to patent discovery of a novel and useful mathematical formula or whether, instead, a claim represents an attempt to patent application of the mathematical formula to a new and useful end[,] (Reply Br. 3) because, as found supra, we have completed an analysis of the claims and have determined, as did the Examiner, that the claims are directed to an abstract idea, e.g., targeted location based advertising.3 That claim 31 recites accessing data through electronic profiles (Reply Br. 4-5) does not make the claim patent eligible because claim 31 does not recite any specific means constituting an improvement in a technical field or in the technology of electronic profiles. See McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299, 1314 (Fed. Cir. 2016). As to Appellants’ remaining arguments, we find them unpersuasive for the reasons set forth in our analysis above. 3 Although the Examiner found that the abstract ideas was “calculating a relevance score” (Answer 3), we find no error with this terminology over that which we use in this Decision because the claimed degree of relevance is ultimately used to effect targeted advertising. An abstract idea can generally be described at different levels of abstraction. See Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1240 (Fed. Cir. 2016). 13 Appeal 2015-002309 Application 13/560,214 CONCLUSIONS OF LAW We conclude the Examiner did err in rejecting claims 31, 32, 34, 35, 40-46, 50—52, and 54 under 35 U.S.C. § 102(b) and claims 33, 36—39, 47— 49, and 53 under 35 U.S.C. § 103(a). We conclude the Examiner did not err in rejecting claims 31—54 under 35 U.S.C. § 101. DECISION The decision of the Examiner to reject claims 31—54 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). See 37 C.F.R. § 1.136(a)(l)(iv). AFFIRMED. 14 Copy with citationCopy as parenthetical citation