Ex Parte Seetharama et al

Patent Trials and Appeals Board

Jun 11, 2019

14788600 - (D) (P.T.A.B. Jun. 11, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/788,600 06/30/2015 Gururaj Seetharama
45839 7590 06/13/2019
Schwegman Lundberg & Woessner/ Linkedln/Microsoft
POBOX2938
MINNEAPOLIS, MN 55402
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.
3080.D78US 1 4760
EXAMINER
KIM, PATRICK
ART UNIT PAPER NUMBER
3621
NOTIFICATION DATE DELIVERY MODE
06/13/2019 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):
USPTO@slwip.com
slw@blackhillsip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GURURAJ SEETHARAMA, APURVA RAJIV MEHTA,
DMYTRO ANDRIYOVICH IVCHENKO, SRIRAM SANKAR,
SWETHA NAGABHUSHAN KARTHIK,
and CHRISTOS KOUFOGIANNAKIS
Appeal 2018-000984
Application 14/788,6001
Technology Center 3600
Before CARL W. WHITEHEAD JR., NABEEL U. KHAN,
and DAVID J. CUTITTA II, Administrative Patent Judges.
CUTITTA, Administrative Patent Judge.
DECISION ON APPEAL
Appellant seeks our review under 35 U.S.C. § 134(a) of the
Examiner's decision rejecting claims 1-21, all the claims pending in the
application. We have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM.
1 Linkedin Corporation ("Appellant") is the Applicant, as provided for
under 37 C.F.R. § 1.46, and is also identified in the Brief as the real party in
interest. See Appeal Br. 2.
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Application 14/788,600
STATEMENT OF THE CASE
Invention
Appellant's invention relates to providing "fast and efficient
advertisement campaign selection using one or more search indices."
Spec. ,-i 14.2
Exemplary Claim
Claims 1, 8, and 15 are independent. Claim 1 is exemplary and is
reproduced below with bracketed material added.
1. A method comprising:
[a] using one or more computer processors to perform the
operations of:
[b] creating a respective plurality of documents by
processing targeting criteria corresponding to each of a plurality
of advertising campaigns using a schema;
[ c] creating an inverted index from the plurality of
documents;
[ d] determining that an advertisement is to be delivered to
a member of a social networking service;
[ e] creating a search query using a member profile of the
member and the schema, the search query comprising a set of
respective query terms corresponding to respective member
profile attributes of the member, each query term in the set of
respective query terms connected by logical OR operators;
[ fJ determining, using the inverted index, a result set of
documents from the plurality of documents using a search
2 Our Decision refers to: (1) Appellant's Specification filed June 30, 2015
("Spec."); (2) the Final Rejection mailed September 9, 2016 ("Final Act.");
(3) the Appeal Brief filed March 9, 2017 ("Appeal Br."); (4) the Examiner's
Answer mailed September 8, 2017 ("Ans."); and ( 5) the Reply Brief filed
November 8, 2017 ("Reply Br.").
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engine, each document in the result set containing a term that
matches at least one of the set of respective query terms of the
search query, the search engine calculating a number of matching
terms between terms in each document in the result set and terms
in the search query;
[g] determining a particular document from the result set
of documents in which the corresponding number of matching
terms for the particular document is equal to the number of
targeting criteria in the particular document; and
[h] delivering an advertisement that corresponds to the
particular document from the result set for delivery to the
member.
REFERENCES AND REJECTIONS
Claims 1-21 stand rejected under 35 U.S.C. § 101 as directed to
patent-ineligible subject matter. See Final Act. 5-7; Ans. 3-14.
Claims 1-21 stand rejected under 35 U.S.C. § 103 as being
unpatentable over the combination of Shahshahani (US 2010/0030647 Al,
pub. Feb. 4, 2010) ("Shahshahani"), Bohannon et al. (US 2008/0071747 Al,
pub. Mar. 20, 2008) ("Bohannon") and Dogl et al. (US 2004/0103090 Al,
pub. May 27, 2004) ("Dogl"). See Final Act. 7-19; Ans. 14-16.
Our review in this appeal is limited to the above rejections and the
issues raised by Appellant. Arguments not made in the Appeal Brief are
waived. See 37 C.F.R. § 41.37(c)(l)(iv)(2016).
ANALYSIS
I. 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.
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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. v. CLS Bank Int'!, 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 id. 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 petitioners' 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, 67-68 (1972)).
Concepts determined to be patent eligible include physical and chemical
processes, such as "molding rubber products" (Diamond v. Diehr, 450 U.S.
175, 191 (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 (1853))); and manufacturing flour (Benson, 409 U.S. at 69
(citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
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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; see also id. at 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); see, e.g., id. at 187 ("It is now
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. "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.
(alterations 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.
The PTO recently published revised guidance on the application of
§ 101. See 2019 Revised Patent Subject Matter Eligibility Guidance, 84
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Fed. Reg. 50 (USPTO Jan. 7, 2019) ("Guidance"). 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 activities such as a fundamental economic practice, or mental
processes); and
(2) additional elements that integrate the judicial exception into a
practical application (see MPEP §§ 2106.05(a)-(c), (e)-(h) (9th ed.
Rev. 08.2017, Jan. 2018)).
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 is not
"well-understood, routine, conventional" in the field (see MPEP
§ 2106.05(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.
See Guidance, 84 Fed. Reg. at 56.
II. The Examiner's§ 1 OJ Rejection
The Examiner determines that representative3 claim 1 is directed to a
judicial exception: an abstract idea. See Final Act. 5-7; Ans. 3.
3 Appellant argues claims 1-21 as a group. See Appeal Br. 8 ("The claims
recite statutory subject matter under 35 U.S.C. § 101" ( emphases omitted)).
We, thus, select independent claim 1 as representative of claims 1-21. See
37 C.F.R. § 41.37(c)(l)(iv).
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According to the Examiner, claim 1 is "directed to the collection,
organization, storage, and transmission of data" and "also directed to
providing targeted content items to a user, which are all abstract ideas."
Final Act. 5. The Examiner also states claim 1 is similar to claims the
Federal Circuit has determined to be directed to a mental process. See
Final Act. 6 (citing Content Extraction & Transmission LLC v. Wells Fargo
Bank, National Ass 'n, 776 F.3d 1343, 1347 (Fed. Cir. 2014) ("collecting
data, ... recognizing certain data within the collected data set, and ...
storing that recognized data in a memory."); SmartGene, Inc. v. Advanced
Biological Labs., SA, 555 F. App'x 950 (Fed. Cir. 2014) (non-precedential)).
In concluding that claim 1 is ineligible, the Examiner finds that the
additional elements "are routine, conventional, and well-known."
Final Act. 6.
III. Does the claim recite ajudicial exception?
Analyzing the Examiner's rejection in view of the Guidance, we first
consider whether the claim recites a judicial exception. Guidance, 84 Fed.
Reg. at 51. The PTO has synthesized the key concepts identified by the
courts as abstract ideas into three primary subject-matter groupings:
mathematical concepts, certain methods of organizing human activities (e.g.,
a fundamental economic practice), and mental processes. Id. at 52. For the
reasons discussed in section III below, claim 1 recites an abstract idea that
falls within the Guidance's mental-processes grouping. 4
4 The Examiner analogizes claim 1 to other types of abstract ideas such as
"'certain methods of organizing human activity."' See Ans. 3. However,
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A. Overview of Claim 1
Claim 1 recites a method, "which allow[ s] for fast and efficient
advertisement campaign selection," i.e., a method that enhances efficiency in
providing targeted advertising. Spec. ,i 14. We agree with the Examiner
that claim 1, under the broadest reasonable interpretation, recites limitations
that can be practically performed in the mind. See Ans. 3 ("an idea of
itself') (internal quotations marks omitted). In this way, claim 1 recites a
judicial exception: an abstract idea within the Guidance's mental-processes
groupmg.
Appellant argues that the Examiner "has violated the Federal Circuit's
prohibition on overgeneralization of the claims." Appeal Br. 10. This
argument does not persuade us of error in the Examiner's determination that
the claims are directed to a mental process. Next, we explain how claim 1
recites limitations that can practically be performed in the mind or with the
assistance of pen and paper. See Guidance, 84 Fed. Reg. at 52 n. 14
( collecting cases).
B. "creating . .. documents by processing targeting criteria"
Claim 1 recites, in part, "creating a respective plurality of documents
by processing targeting criteria corresponding to each of a plurality of
advertising campaigns using a schema." Appellant refers to paragraphs 17,
18, and 19 of the Specification to explain the subject matter of this
limitation. See Appeal Br. 4. These paragraphs describe creating documents
by organizing targeting criteria such as "age, gender, location, job title,
employment history, educational history" for Campaigns 1, 2, and 3. See
this reasoning is cumulative and in the alternative. See id. It is sufficient to
say that claim 1 at least recites a mental process.
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Spec. ,i,i 16-18. "In some examples, the documents produced are textual
documents that are formatted according to a predetermined schema." Spec.
,i 17. For example, "[t]he schema may specify that each member targeting
criteria be placed next preceded by the identifier 'targets."' Spec. ,i 19. The
example in the Specification demonstrates only a small amount of data needs
to be analyzed to create the recited documents for a mere three advertising
campaigns. See Spec. ,i 19. Thus, this limitation can practically be
performed in the mind or with the assistance of pen and paper.
C. "creating an inverted index from the plurality of documents"
Claim 1 recites "creating an inverted index from the plurality of
documents." Appellant refers to paragraph 22 of the Specification to explain
the subject matter of this limitation. See Appeal Br. 4. This paragraph
describes that an index may be created and the "index may be an inverted
index which is a data structure that maps the terms of the entire set of
campaign documents to which campaign documents those terms reside in."
Spec. ,i 22. That is, the inversion only requires mapping a small quantity of
context criteria and targeting criteria to three advertising campaigns, which
is also an evaluation that can practically be performed in the mind or with
the assistance of pen and paper. See id.
D. "determining that an advertisement is to be delivered"
Claim 1 recites "determining that an advertisement is to be delivered
to a member of a social networking service." Appellant refers to paragraph
23 of the Specification to explain the subject matter of this limitation. See
Appeal Br. 4. This paragraph describes as an example, wherein "the social
networking service may determine that it is an appropriate time to send an
email, or some other type of advertisement, to the member." Spec. ,i 23.
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Limitation (d), thus, recites a decision-making processes that determines it is
an appropriate time to send an advertisement. But that decision-making
process "is untethered to any specific or concrete way of implementing it."
Affinity Labs of Texas, LLC v. DIRECTV, LLC, 838 F.3d 1253, 1258 (Fed.
Cir. 2016). For example, claim 1 fails to recite a specific algorithm for
"determining that an advertisement is to be delivered." Thus, the broadly
recited determining can be interpreted as being accomplished merely using a
subjective judgement by a person, rather than with specific technological
implementation details. Therefore, this limitation recites a determination
that can practically be performed in the mind.
E. "creating a search query"
Claim 1 recites "creating a search query using a member profile of the
member and the schema, the search query comprising a set of respective
query terms corresponding to respective member profile attributes of the
member, each query term in the set of respective query terms connected by
logical OR operators." Appellant refers to paragraphs 24 and 30 of the
Specification to provide support for the subject matter of this limitation. See
Appeal Br. 4. Paragraph 24 describes creating "a search query using the
member profile attributes" and paragraph 30 describes that the search query
"combine[s] the targeting criteria according to a logical 'OR' operator."
Spec. ,i,i 24, 30. Basing a search on a few query terms linked disjunctively
can be practically be performed in the mind or with the assistance of pen and
paper and is therefore within the Guidance's mental-process grouping. See
Spec. ,i 30.
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F. "determining , using the inverted index, a result set of documents"
Aside from the search engine, which is discussed in section IV. B
below, claim 1, recites "determining, using the inverted index, a result set of
documents from the plurality of documents ... each document in the result
set containing a term that matches at least one of the set of respective query
terms of the search query" and "calculating a number of matching terms
between terms in each document in the result set and terms in the search
query." Appellant refers to paragraphs 31 and 32 of the Specification to
provide support for the subject matter of this limitation. See Appeal Br. 4-5.
Paragraph 31 discloses "utilizing the index to determine matching
campaigns ... 1 and 2." Spec. ,i 31. The Specification further discloses
"[i]fthe number of matching targeting query terms is equal to the number of
targeted attributes in the corresponding campaign document, the advertising
campaign is considered a match and is included in the final result set."
Spec. ,i 32.
To perform the recited determination, only a small amount of data
needs to be analyzed. In fact, the example provided in the Specification uses
only a handful of context criteria and targeting criteria to determine the
initial result set of two campaigns. See Spec. ,i,i 22-32. This determination,
therefore, can practically be performed in the mind or with the assistance of
pen and paper and is, therefore, within the Guidance's mental-process
groupmg.
G. "determining a particular document from the result set of
documents"
Claim 1 recites "determining a particular document from the result set
of documents in which the corresponding number of matching terms for the
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particular document is equal to the number of targeting criteria in the
particular document." Appellant refers to paragraph 32 of the Specification
to support the subject matter of this limitation. See Appeal Br. 5. Paragraph
32 discloses that "a final set of results is determined based upon a count of
the number of matching query terms for each result." Spec. ,i 32. The
Specification further discloses "[fJor campaign 2 there would be two
matching targeted criteria (geographical region=Califomia; title=software
engineer) out of a total of two targeted criteria (geographical
region=Califomia; title=software engineer). Thus, because campaign 2
matched all targeted criteria, it is included in the final result set." Spec.
iJ 33.
To perform the recited determination, only a small amount of data
needs to be analyzed. In fact, the example provided in the Specification
merely determines one campaign document from a result set of two
campaign documents. Id. This determination, therefore, can practically be
performed in the mind and is therefore within the Guidance's mental-process
groupmg.
In view of our discussion in section III, we agree with the Examiner
that claim 1 recites an abstract idea, namely, a mental process.
IV. Is the claim "directed to" the recited judicial exception?
Because claim 1 recites an abstract idea, we now proceed to determine
whether the recited judicial exception is integrated into a practical
application. Guidance, 84 Fed. Reg. at 51. When a claim recites a judicial
exception and fails to integrate the exception into a practical application, the
claim is "directed to" the judicial exception. Id.
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The claim may integrate the judicial exception when, for example, it
reflects an improvement to technology or a technical field. Id. at 55. Here,
the described improvement is for providing targeted advertising on a social
media platform. To solve this non-technical problem, claim 1 recites an
abstract idea including limitations [b] - [g] as discussed in Section III above.
Appellant argues claim 1 is not directed to an abstract idea but instead
is directed to specific improvements to the computer and "address[ es] the
problem of increasing computational time ( and attendant diminished user
experience) of social networking service computing resources when
delivering ads." Appeal Br. 13.
We are unpersuaded because the solution offered by Appellant's
claim 1 is not rooted in any new computer technology. Rather, providing
targeted advertising, even if done so efficiently with a computer, is not a
"technological process" to be improved because, as claimed, the
determinations of the targeted advertisement could be made by a human
using pen and paper. Appellant fails to provide persuasive evidence that
claim 1 is not merely an example of implementing an abstract concept faster
and more efficiently on a computer. See Appeal Br. 13 ("Aspects of the
present inventive subject matter ... allow for fast and efficient
advertisement campaign selection."). And, "the fact that the required
calculations could be performed more efficiently via a computer does not
materially alter the patent eligibility of the claimed subject matter."
Bancorp Servs. v. Sun Life Assurance Co. of Can. (U.S.), 687 F.3d 1266,
1278 (Fed. Cir. 2012). In this way, claim 1 is unlike the technology-based
integrations cited by Appellant. See Enfzsh, LLC v. Microsoft Corp., 822
F.3d 1327, 1337 (Fed. Cir. 2016) (holding that the patent-eligible claim was
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directed to a self-referential table to improve computer databases), cited in
Appeal Br. 11; McRO, Inc. v. Bandai Namco Games Am., 837 F.3d 1299
(Fed. Cir. 2016) (explaining that the patent-eligible claim focused on a
specific asserted improvement in computer animation), cited in Appeal
Br. 13.
Considering the claim as a whole, Appellant's invention lacks a
technical solution to a technical problem. The mere presence of a processor
here does not necessarily indicate a technical solution. Essentially,
Appellant argues that, because the claim uses a processor, it is not directed
to a mental process. See Appeal Br. 13-16. For example, in response to
"the Examiner's determination that Appellant's claims are not patentable as
they do not 'describe a new type of computer processor or computer
system'," Appellant argues that"[ n Jowhere does the Examiner cite to any
authority that supports the Examiner's conclusion that an applicant must
recite a new type of computer processor or computer system to be patent
eligible." Appeal Br. 19. We are unpersuaded because "[c]ourts have
examined claims that required the use of a computer and still found that the
underlying, patent-ineligible invention could be performed via pen and paper
or in a person's mind." Versata Dev. Grp. v. SAP Am., Inc., 793 F.3d 1306,
1335 (Fed. Cir. 2015), quoted in Guidance, 84 Fed. Reg. at 52 n.14. So,
although claim 1 recites a processor, this does not preclude the claim from
being directed to the recited mental process.
Here, the processor, recited in the "using one or more computer
processors" limitation, is an additional element. We use the term "additional
elements" for "claim features, limitations, and/or steps that are recited in the
claim beyond the identified judicial exception." See Guidance, 84
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Fed. Reg. at 55 n.24 (emphasis omitted). Claim l's additional elements also
include the search engine and the step of "delivering an advertisement that
corresponds to the particular document from the result set for delivery to the
member." In the analysis below, we consider these additional elements-
individually and in combination-and conclude that claim 1 as a whole does
not integrate the recited judicial exception into a practical application. See
Guidance, 84 Fed. Reg. at 55 nn.25 & 27-32 (citing MPEP §§ 2106.05(a)-
(c), (e)-(h)).
A. "using one or more computer processors"
An additional element may integrate a judicial exception into a
practical application when, for example, the "additional element implements
a judicial exception with, or uses a judicial exception in conjunction with, a
particular machine or manufacture that is integral to the claim." Id. at 55. In
this case, claim 1 lacks such a machine. Instead, the claimed "one or more
computer processors" simply executes the mental process recited in
limitations [b] - [g]. Notably, the claimed processor can be a "general-
purpose hardware [computer]." Spec. ,-J 50. But a general-purpose processor
that merely executes the judicial exception is not a particular machine.
Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 716-17 (Fed. Cir. 2014),
cited in MPEP § 2106.05(b)(I).
Considering the processor in combination with the other recited
limitations, the processor is merely a token addition. To be sure, the recited
processor may perform the calculations faster than a human could mentally.
Yet, as previously noted, using a computer to achieve a solution more
quickly may not be sufficient to show an improvement to computer
technology. See Versata, 793 F.3d at 1335; see also MPEP § 2106.05(a)(II)
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(instructing examiners that a "commonplace business method being applied
on a general purpose computer" may not be sufficient to show an
improvement). Here, claim 1 broadly recites delivering an advertisement
without any particular technical improvement to how the processor carries
out these operations. In this way, the recited processor is merely used to
perform calculations that, for the reasons discussed above, can practically be
performed in the mind.
For these reasons, the claimed method does not use the processor in a
way that indicates that the judicial exception has been integrated into a
practical application.
B. "search engine"
Claim 1 recites "determining ... a result set of documents ... using a
search engine. Appellant does not provide persuasive evidence that the
technology of the search engine, itself, has been altered or improved. See
generally Appeal Br. Rather, the claim is directed towards determining a
result set of documents more efficiently by automating these tasks through
the use of a "general-purpose" computer. Spec. ,i 50. Furthermore,
Appellant's Specification indicates that the search engine used to implement
the claimed abstract idea is conventional. See Spec. ,i,i 14, 31.
C. "delivering an advertisement"
Claim 1 recites "delivering an advertisement that corresponds to the
particular document from the result set for delivery to the member." Such
broadly recited outputting of data is insignificant post-solution activity.
Flook, 437 U.S. at 590 ("[t]he notion that post-solution activity, no matter
how conventional or obvious in itself, can transform an unpatentable
principle into a patentable process exalts form over substance.).
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Claim 1, therefore, is not directed to a specific asserted improvement
in computer technological implementation or otherwise integrated into a
practical application.
D. Other Indicia of Integration
The Guidance lists other indicia of integration. Guidance, 84 Fed.
Reg. at 55. None are present in claim 1.
For example, "[t]ransformation and reduction of an article 'to a
different state or thing' is the clue to the patentability of a process claim that
does not include particular machines." Bilski, 561 U.S. at 604 (emphasis
added), quoted in MPEP § 2106.05(c). Yet "not all transformations ...
infuse an otherwise ineligible claim with an 'inventive concept."' DDR
Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1256 (Fed. Cir. 2014).
Claim l's method does not transform a physical object or substance.
In this way, the claim is unlike the transformations found in some eligible
claims. See, e.g., Diehr, 450 U.S. at 184 (a process that transforms rubber).
Accordingly, on this record, claim 1 is directed to the identified
abstract idea. See Ans. 4-5.
V. Does the claim provide an inventive concept?
To determine whether a claim provides an inventive concept, the
additional elements are considered-individually and in combination-to
determine whether they ( 1) add a specific limitation beyond the judicial
exception that is not "well-understood, routine, conventional" in the field or
(2) simply append well-understood, routine, conventional activities
previously known to the industry, specified at a high level of generality, to
the judicial exception. Guidance, 84 Fed. Reg. at 56. Also, we reevaluate
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our conclusions about the additional elements discussed in the previous step.
Id.
A. "by a processor"
Using a computer "only for its most basic function, the performance
of repetitive calculations," may not impose meaningful limits on the claim's
scope. Bancorp, 687 F.3d at 1278. Similarly, the MPEP instructs examiners
that courts recognize that using a computer for performing repetitive
calculations may be well-understood, routine, and conventional when
claimed generically. MPEP § 2106.05(d)(II)(ii) (citing Flook, 437 U.S. at
594; Bancorp, 687 F.3d at 1278).
Claim l's method uses the processor for implementing the abstract
idea. The Examiner finds claim 1 "recite[ s] only common computer
elements" and thus "taken alone, the additional elements do not amount to
significantly more than the above-identified judicial exception (the abstract
idea)." Ans. 6-7. We agree with the Examiner's findings, which are
adequately supported by this record. Specifically, as discussed, limitations
[b] - [g] recite operations that can be performed mentally, which suggests
that the method only requires a computer with basic functions. In fact, the
Specification discloses that the processor itself may be a general-purpose
hardware computer. Spec. ,-J 50. Thus, the claim uses a general-purpose
processor to execute the abstract idea. For these reasons, the recited
processor adds nothing more than well-understood, routine, conventional
activities, specified at a high level of generality, to the abstract mental
process. See MPEP § 2106.05(d)(II)(ii).
We also reevaluate our conclusions about whether the recited
processor integrates the abstract idea into a practical application. See supra
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§ IV.A. Because the recited processor adds nothing more than well-
understood, routine, conventional activities, those conclusions stand.
Considering both our previous conclusions and the findings about well-
understood, routine, and conventional activity, we determine that the
claimed method does not use the processor in a way that indicates that the
claim provides an inventive concept. See Ans. 6 ("The instant claims do not
require any specialized hardware. The instant claims recite only common
computer elements.").
B. "search engine"
Claim 1 recites "determining ... a result set of documents ... using a
search engine. The claimed invention implements an abstract search
methodology via a conventional search engine implemented with a generic
computer processor. The improvement, therefore, is to the abstract search
methodology, not to the search engine. Appellant's Specification confirms
that the search engine used to implement the claimed abstract idea is
conventional. See Spec. ,i,i 14, 31.
C. "delivering an advertisement"
Claim 1 recites "delivering an advertisement that corresponds to the
particular document from the result set for delivery to the member."
Such broadly recited outputting of data is insignificant post-solution
activity. Flook, 437 U.S. 584 at 590 ("[t]he notion that post-solution
activity, no matter how conventional or obvious in itself, can transform an
unpatentable principle into a patentable process exalts form over substance.).
Claim 1 does not recite any specific technical features for delivering
the advertisement in an unconventional way. In this regard, the claim
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delivers the advertisement generically and the recited limitation is well-
understood, routine, and conventional. See MPEP § 2106.05(d)(II)(iv).
We also reevaluate our conclusions about whether the recited
delivering integrates the abstract idea into a practical application. See supra
§ IV.B. Because the recited limitation adds nothing more than well-
understood, routine, conventional activities, those conclusions stand.
Considering both our previous conclusions and the findings about well-
understood, routine, and conventional activity, we determine that the
claimed method does not deliver the advertisement in a way that indicates
that the claim provides an inventive concept. See Ans. 6-12.
D. The Combination
"[A] new combination of steps in a process may be patentable even
though all the constituents of the combination were well known and in
common use before the combination was made." Diehr, 450 U.S. at 188.
For example, the claims in BASCOM Global Internet Services, Inc. v. AT&T
Mobility LLC involved an inventive distribution of function between a local
computer and a server. See 827 F.3d 1341, 1350-51 (Fed. Cir. 2016). The
Federal Circuit noted "[t]he inventive concept described and claimed in the
'606 patent is the installation of a filtering tool at a specific location, remote
from the end-users, with customizable filtering features specific to each end
user." Id. at 1350. "Because the filtering tool on the ISP server contains
each user's customized filtering mechanism, the filtering tool working in
combination with the ISP server can apply a specific user's filtering
mechanism to the websites requested by that user." Id. at 1345.
Appellant does not identify any inventive concept in the recited
combination of steps here or any specific arrangement of components.
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Indeed, the claim's focus is on delivering a targeted advertisement, not on a
specific configuration of the processor. In the claimed arrangement, the
processor simply performs the recited abstract idea.
Appellant argues claim 1 "solve[ s] a computer based problem with an
improvement to the functioning of the computer by providing targeted
advertisements to members of a social networking service much faster than
current systems using specifically recited solutions." Appeal Br. 16.
Yet the claimed solution is the abstract idea itself. "What is needed is
an inventive concept in the non-abstract application realm." SAP Am., Inc.
v. InvestPic, LLC, 898 F.3d 1161, 1168 (Fed. Cir. 2018). "[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) (emphasis omitted).
Here, the limitations on the mental process itself do not make claim 1 any
less abstract. None of these limitations provide an inventive concept in the
non-abstract application realm. Unlike BASCOM, claim 1 is simply an
"abstract-idea-based solution implemented with generic technical
components in a conventional way." 827 F.3d at 1351. As noted by the
Examiner, other than the abstract idea and the generic hardware, claim 1 is
"directed to the collection, organization, storage, and transmission of data."
Final Act. 5. We agree with the Examiner that the sequence of data
reception-storage-modification, and transmission, when broadly claimed,
is generic and conventional or otherwise held to be abstract. See
Ultramercial, 772 F.3d at 715 (sequence of receiving, selecting, offering for
exchange, display, allowing access, and receiving payment recited an
abstraction).
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On this record, the limitations-considered individually and in
combination-do not provide an inventive concept. See Ans. 6-12;
Final Act. 5.
VI. Other Arguments
Appellant argues that claim 1 does not "preempt all ways of
collection, organization, storage, and transmission of data; or targeted
advertisement; rather, [the claim recites] a specific, discrete implementation
of selecting advertisement[s]." Appeal Br. 20 (internal quotations omitted).
"While 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).
"[Q]uestions on preemption are inherent in and resolved by the § 101
analysis," which has been applied here. Id.
VII. Conclusion
We sustain the rejection of representative claim 1 under 35 U.S.C.
§ 101. We also sustain the rejection of claims 2-21, which are argued
together with claim 1.
VIII. The Examiner's § 103 Rejection
In support of the 35 U.S.C. § 103 rejection of claim 1, the Examiner
relies on Dogl's claim 17 to teach or suggest "determining a particular
document from the result set of documents in which the corresponding
number of matching terms for the particular document is equal to the
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number of targeting criteria in the particular document." See Final Act. 9;
Ans. 14-15.
Dogl's claim 17 recites "[t]he method of claim 16, wherein the match
properties include the number of matching search terms (concepts), the
frequency of matching search terms, content related properties like a
document title, document URL or links to other documents." Dogl's claim
16, in relevant part, recites, "[a] document search method in a
communication network, comprising the steps of: . . . providing a user
interface for controlling the graphical representation of the search result
dependent on the match properties and/or the result properties."
Appellant argues Dogl's claim 17 "does not select a particular
document based upon the number of matching terms equaling the number of
targeting criteria. All Dogl appears to disclose is ranking results based upon
the strength of [a] match." Appeal Br. 30 (citing Dogl ,i,i 13-15, 59 and
claim 16, 17).
The Examiner responds:
Dogl teaches search results that are determined from matching
properties of the search, including the frequency of search terms
( Claim 1 7, wherein the search results are dependent on match
properties, "targeting criteria," which include the number of
matching search terms, "number of matching terms," results
that have the set number of matching search terms, "equal to the
number of targeting criteria," are displayed). Here, Dogl
teaches that a document that fulfill the requirements of the
search, in this case the number of matching search terms, and
satisfy the properties of the query is selected and provided.
Ans. 14-15.
We find Appellant's arguments persuasive. The Examiner does not,
on the record before us, show that Dogl's discussion of providing a user
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interface for controlling the graphical representation of the search result
dependent on the number of matching search terms teaches or suggests
"determining a particular document from the result set of documents in
which the corresponding number of matching terms for the particular
document is equal to the number of targeting criteria in the particular
document," as recited in claim 1. See Final Act. 7-9; Ans. 14-16. In other
words, Dogl' s claims 16 and 17 discuss providing a user interface that is
varied based on the number of matching search terms, but do not teach
selecting a document based on the number of matching terms. The
Examiner also does not sufficiently explain how Dogl' s claim 1 7
specifically teaches "targeting criteria," as claimed.
Accordingly, the Examiner has not shown how Dogl, alone or in
combination with the other cited references, teaches or suggests the disputed
limitation. Because we agree with at least one of the dispositive arguments
advanced by Appellant for claim 1, we need not reach the merits of
Appellant's other contentions. We, therefore, do not sustain the Examiner's
35 U.S.C. § 103 rejection of claim 1. We also do not sustain the rejection of
independent claims 8 and 15, which recite limitations commensurate in
scope with claim 1. We, likewise, do not sustain the rejections of dependent
claims 2-7, 9-14, and 16-21.
DECISION
We affirm the Examiner's decision to reject claims 1-21 under
35 U.S.C. § 101.
We reverse the Examiner's decision to reject claims 1-21 under
35 U.S.C. § 103.
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Because we affirm at least one ground of rejection with respect to
each claim on appeal, we affirm the Examiner's decision to reject all of the
pending claims.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § l.136(a)(l )(iv).
AFFIRMED
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