Ex Parte Shepherd

Patent Trials and Appeals Board

Jun 3, 2019

14048622 - (D) (P.T.A.B. Jun. 3, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/048,622 10/08/2013 Michael David Shepherd
75313 7590 06/05/2019
XEROX CORPORATION C/0 FOX ROTHSCHILD LLP
Princeton Pike Corporate Center
997 Lenox Drive, Building 3
Princeton, NJ 08648-2311
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.
20120639USNP/106681.39501 6297
EXAMINER
TSUI, ALFRED H
ART UNIT PAPER NUMBER
3621
NOTIFICATION DATE DELIVERY MODE
06/05/2019 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):
ipdocket@foxrothschild.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MICHAEL DAVID SHEPHERD
Appeal 2018-0053 80
Application 14/048,622
Technology Center 3600
Before: JOHN P. PINKERTON, BETH Z. SHAW, and
NORMAN H. BEAMER, Administrative Patent Judges.
SHAW, Administrative Patent Judge.
DECISION ON APPEAL
Appeal 2018-0053 80
Application 14/048,622
Appellant appeals under 35 U.S.C. § 134(a) from a rejection of claims
1-20. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
The claims are directed to using semantic analysis to enhance
personalized documents in a variable data marketing campaign. Claim 1,
reproduced below, is representative of the claimed subject matter:
1. A method of generating a web page, the method
comprising, by one or more processing devices:
identifying a variable data document template so that the
variable data document template comprises one or more static
element fields and one or more dynamic element fields;
for one or more of the dynamic element fields, receiving
an automated personalization task, wherein the automated
personalization task corresponds to one or more semantic queries
for associating dynamic data with the dynamic element field, and
associating the semantic queries to the dynamic element field;
identifying a set of recipients;
for each recipient, generating a personalized document
template by:
adding static data to at least one of the static element fields,
identifying a set of candidate data to be populated in one or more
of the dynamic element fields, and associating a personalized
reference locator at which the recipient may retrieve a
personalized web page in accordance with the recipient's
personalized template so that the personalized reference locator
links to the web page; and
receiving a request that includes the personalized
reference locator from any one of the recipients; and
generating the personalized web page in accordance with
the recipient's personalized document template by:
including, in at least one of the dynamic element fields,
personalized data corresponding to that recipient,
for at least one of the dynamic element fields,
implementing the one or more semantic queries for that field to
select dynamic data from the set of candidate data for that
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recipient, and including indicia of the selected dynamic data in
the dynamic element field.
REJECTIONS
The Examiner made the following rejections:
Claims 1-20 are rejected under 35 U.S.C. § 101.
Claims 1, 2, 3, 4, 5, 9, 10, 11, 12, 16, 17, and 18 are rejected under 35
U.S.C. § 103 as being unpatentable over Farmer (US 2011/0126121 Al;
May 26, 2011) and Hahn (US 2010/0185496 Al; July 22, 2010).
Claims 8 and 15 are rejected under 35 U.S.C. § 103 as being
unpatentable over Farmer, Han, and Cowan (US 2007/0208751 Al; Sept. 6,
2007).
Claim 20 is rejected under 35 U.S.C. § 103 as being unpatentable over
Farmer, Hahn, and Sweeney (US 2011/0314006 Al; Dec. 22, 2011).
OPINION
Section 101
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. 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,
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we first determine what concept the claim is "directed to." See Alice, 573
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 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 (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 (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, 187; 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
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environment." Id. (citing Benson and Flook); see, e.g., Diehr, 450 U.S. 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 ( quotation marks 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. (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 U.S. Patent and Trademark Office ("USPTO") recently published
revised guidance on the application of§ 101. USPTO's 2019 Revised Patent
Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019)
("Revised Guidance"). Under that Revised 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); and
(2) additional elements that integrate the judicial exception into a
practical application (see Manual of Patent Examining Procedure
("MPEP") § 2106.05(a)-(c), (e)-(h) (Rev. 08.2017 2018)).
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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 Revised Guidance.
Abstract Idea
For the following reasons, we conclude the claims recite a
fundamental economic practice, which is one of certain methods of
organizing human activity identified in the Revised Guidance, and thus an
abstract idea. See Revised Guidance, 84 Fed. Reg. at 52, 53 (listing
"[ c Jertain methods of organizing human activity-fundamental economic
principles or practices" as one of the "enumerated groupings of abstract
ideas").
We treat claim 1 as representative. The claim is directed to an abstract
idea because it is directed to a fundamental economic practice, which is one
of certain methods of organizing human activity, as discussed below. The
steps of claim 1, including, with italics added:
identifying a variable data document template so that the
variable data document template comprises one or more static
element fields and one or more dynamic element fields;
for one or more of the dynamic element fields, receiving
an automated personalization task, wherein the automated
personalization task corresponds to one or more semantic
queries for associating dynamic data with the dynamic element
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Application 14/048,622
field, and associating the semantic queries to the dynamic
element field;
identifying a set of recipients;
for each recipient, generating a personalized document
template by:
adding static data to at least one of the static element
fields, identifying a set of candidate data to be populated in one
or more of the dynamic element fields, and associating a
personalized reference locator at which the recipient may
retrieve a personalized web page in accordance with the
recipient's personalized template so that the personalized
reference locator links to the web page; and
receiving a request that includes the personalized
reference locator from any one of the recipients; and
generating the personalized web page in accordance with
the recipient's personalized document template by:
including, in at least one of the dynamic element fields,
personalized data corresponding to that recipient,
for at least one of the dynamic element fields,
implementing the one or more semantic queries for that field to
select dynamic data from the set of candidate data for that
recipient, and including indicia of the selected dynamic data in
the dynamic element field
recite steps of personalizing a web page for a user based on candidate data
for that user.
Under Supreme Court precedent, claims directed purely to an abstract
idea are patent ineligible. As set forth in the Revised Guidance, which
extracts and synthesizes key concepts identified by the courts, abstract ideas
include ( 1) mathematical concepts, (2) certain methods of organizing human
activity, and (3) mental processes. Among those certain methods of
organizing human activity listed in the Revised Guidance are fundamental
economic practices, such as the concept of intermediated settlement in Alice,
and the concept of hedging in Bilski. Like those concepts, claim 1 also
recites a fundamental economic practice. Specifically, the italicized steps
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fall under the umbrella of economic practices, including managing
transactions or sales activities, because these steps would ordinarily take
place in customizing or targeting an advertisement, which occurs in our
system of commerce. See Spec. ,i,i 1-3 ("Advertisers increasingly seek to
target advertisements that are customized to the individual consumer .... ").
In Intellectual Ventures I LLC v. Cap ital One Bank, 792 F.3 d 13 63,
1369 (Fed. Cir. 2015), an advertisement taking into account the time of day
and tailoring the infonnation presented to the user using dynamic website
navigation data was considered another ""fundamental ... practice long
prevalent in our system." Like the claims at issue in Intellectual Ventures I,
the personalized website generation of claim 1 is "a fundamental econornic
practice long prevalent in our system of commerce." Thus, we conclude
claim 1 is directed to a fundamental economic practice, which is one of
certain methods of organizing human activity identified in the Revised
Guidance, and thus is an abstract idea.
In accordance with the Revised Guidance, and looking to MPEP
§§ 2106.05(a)-(c) and (e)-(h), we determine that the additional elements of
claim 1, both individually and as an ordered combination, do not integrate a
judicial exception, in this case the abstract idea of a fundamental economic
practice, into a practical application. Claim 1 is directed to little more than
the implementation of the abstract idea on generic computer servers and
devices. The claim, as a whole, describes how to generally apply or execute
the concept by generating a personalized web page in a computer
environment. The claimed computer components are recited at a high level
of generality and are merely invoked as tools to perform an existing process.
See, e.g., Spec. ,i 46-50 ("CPU 305, alone or in conjunction with one or
more of the other elements disclosed in FIG. 3, is a processing device,
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computing device or processor as such terms are used within this
disclosure."); Fig. 3. Simply implementing the abstract idea on generic
computer components is not a practical application of the abstract idea.
Accordingly, the claim, as a whole, does not integrate the abstract idea
into a practical application because the claim limitations do not impose any
meaningful limits on practicing the abstract idea. Stated differently, the
claims do not (1) improve the functioning of a computer or other technology,
(2) are not applied with any particular machine (except for generic computer
components), (3) do not effect a transformation of a particular article to a
different state, and (4) are not applied in any meaningful way beyond
generally linking the use of the judicial exception to a particular
technological environment, such that the claim, as a whole, is more than a
drafting effort designed to monopolize the exception. See MPEP
§§ 2106.05(a)-(c), (e)-(h).
Inventive Concept
Because we determine that claim 1 is "directed to" an abstract idea,
we next consider whether claim 1 recites an "inventive concept." The
Examiner determined that claim 1 does not recite an inventive concept
because the additional elements in the claim do not amount to "significantly
more" than an abstract idea. See Final Act. 7, 8; Ans. 7-9.
We agree with the Examiner's determination in this regard. The
additional elements recited in claim 1 include "one or more processing
devices." The claim recites these elements at a high level of generality, and
the written description indicates that these elements are generic computer
components. See, e.g., Spec. ,-J 46-50 ("CPU 305, alone or in conjunction
with one or more of the other elements disclosed in FIG. 3, is a processing
device, computing device or processor as such terms are used within this
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disclosure."); Fig. 3. Using generic computer components to perform
abstract ideas does not provide the necessary inventive concept. See Alice,
573 U.S. at 223 ("[T]he mere recitation of a generic computer cannot
transform a patent-ineligible abstract idea into a patent-eligible invention.").
Thus, these elements, taken individually or together, do not amount to
"significantly more" than the abstract idea itself.
Appellant contends the Examiner erred in rejecting the claims under
35 U.S.C. § 101 because claim 1 does "not preempt all methods of creating
personalized documents." App. Br. 17. We are not persuaded of Examiner
error by this argument.
Preemption is a driving concern when determining patent eligibility.
See Alice, 5 73 U.S. at 216-17. Patent law cannot inhibit further discovery
by improperly tying up the future use of the building blocks of human
ingenuity. See id. ( citing Mayo, 566 U.S. at 85-86). Although preemption
is characterized as a driving concern for patent eligibility, preemption itself
is not the test for patent eligibility. "Where a patent's claims are deemed
only to disclose patent ineligible subject matter under the Mayo framework,
as they are in this case, preemption concerns are fully addressed and made
moot." Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379
(Fed. Cir. 2015). "While preemption may signal patent ineligible subject
matter, the absence of complete preemption does not demonstrate patent
eligibility." Id.
Moreover, we are not persuaded that the claimed invention improves
the computer or its components' functionality or efficiency, or otherwise
changes the way those devices function, at least in the sense contemplated
by the Federal Circuit in Enfish LLC v. Microsoft Corporation, 822 F.3d
1327 (Fed. Cir. 2016), despite Appellant's arguments to the contrary (App.
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Br. 14-15). The claimed self-referential table in Enfish was a specific type
of data structure designed to improve the way a computer stores and
retrieves data in memory. Enfish, 822 F.3d at 1339. To the extent Appellant
contends that the claimed invention uses such a data structure to improve a
computer's functionality or efficiency, or otherwise change the way that
device functions, there is no persuasive evidence on this record to
substantiate such a contention.
To the extent Appellant contends that the claimed invention is rooted
in technology because it is ostensibly directed to a technical solution, we
disagree. This is not a case involving eligible subject matter as in DDR
Holdings, LLC v. Hotels.Com, L.P., 773 F.3d 1245 (Fed. Cir. 2014) despite
Appellant's arguments to the contrary (App. Br. 14). There, instead of a
computer network operating in its normal, expected manner by sending a
website visitor to a third-party website apparently connected with a clicked
advertisement, the claimed invention in DDR generated and directed the
visitor to a hybrid page that presented (1) product information from the third
party, and (2) visual "look and feel" elements from the host website. DDR,
773 F.3d at 1258-59. Given this particular Internet-based solution, the court
held that the claimed invention did not merely use the Internet to perform a
business practice known from the pre-Internet world, but rather was
necessarily rooted in computer technology to overcome a problem
specifically arising in computer networks. Id. at 1257.
That is not the case here. As noted previously, Appellant's claimed
invention, in essence, is directed to targeted advertisements by generating a
personalized web page-albeit using computer-based components to achieve
that end. The claimed invention here is not necessarily rooted in computer
technology in the sense contemplated by DDR where the claimed invention
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solved a challenge particular to the Internet. Although Appellant's invention
uses various computer-based components noted previously, the claimed
invention does not solve a challenge particular to the computing components
used to implement this functionality.
Nor is this invention analogous to that which the court held eligible in
McRO, Inc. v. Bandai Namco Games America, Inc., 837 F.3d 1299 (Fed.
Cir. 2016) despite Appellant's arguments to the contrary (App. Br. 16-17).
There, the claimed process used a combined order of specific rules that
rendered information in a specific format that was applied to create a
sequence of synchronized, animated characters. McRO, 837 F.3d at 1315.
Notably, the recited process automatically animated characters using
particular information and techniques-an improvement over manual three-
dimensional animation techniques that was not directed to an abstract idea.
Id. at 1316.
But unlike the claimed invention in McRO that improved how the
physical display operated to produce better quality images, the claimed
invention here merely uses generic computing components to generate a
personalized web page. This generic computer implementation is not only
directed to a fundamental economic practice, but also does not improve a
display mechanism as was the case in McRO. See SAP Am. v. InvestPic,
LLC, 898 F.3d 1161, 1167 (Fed. Cir. 2018) (distinguishing McRO).
Appellant's reliance on BASCOM Global Internet Services, Inc. v.
AT&T Mobility LLC, 827 F.3d 1341 (Fed. Cir. 2016) (App. Br. 16-17) is
likewise unavailing. There, the court held eligible claims directed to a
technology-based solution to filter Internet content that overcame existing
problems with other Internet filtering systems by making a known filtering
solution-namely a "one-size-fits-all" filter at an Internet Service Provider
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(ISP)-more dynamic and efficient via individualized filtering at the ISP.
BASCOM, 827 F.3d at 1351. Notably, this customizable filtering solution
improved the computer system's performance and, therefore, was patent-
eligible. See id. But unlike the filtering system improvements in BASCOM
that added significantly more to the abstract idea in that case, the claimed
invention here uses generic computing components to implement an abstract
idea as noted previously.
Appellant also argues the Examiner provided no support for the
assertion that certain claim elements are well understood, routine, or
conventional. Reply Br. 6, 7. Regarding a determination that "additional"
claim elements are merely routine and conventional, the Federal Circuit has
explained that:
Whether something is well-understood, routine, and
conventional to a skilled artisan at the time of the patent is a
factual determination. Whether a particular technology is
well-understood, routine, and conventional goes beyond what
was simply known in the prior art. The mere fact that
something is disclosed in a piece of prior art, for example, does
not mean it was well-understood, routine, and conventional.
Berkheimer v. HP Inc., 881 F.3d 1360, 1369 (Fed. Cir. 2018).
To find an element to be well understood, routine, or conventional, the
Examiner must support the rejection with one 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 § 2106.05(d)(II) as noting the well-understood, routine,
conventional nature of the additional element( s ).
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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 ).
Berkheimer Memo. 1
The Examiner, contrary to Appellant's arguments, did provide a
citation to one or more of the court decisions discussed in MPEP
§ 2106.05(d)(II) as noting the well-understood, routine, conventional nature
of the additional element(s). In particular, the Examiner cited to Bancorp
Services, L.L.C. v. Sun Life Assurance Co. of Can., 687 F.3d 1266, 1278
(Fed. Cir. 2012) ("The computer required by some of Bancorp's claims is
employed only for its most basic function, the performance of repetitive
calculations, and as such does not impose meaningful limits on the scope of
those claims."). Ans. 8.
In conclusion, the additional recited elements-considered
individually and as an ordered combination-do not add significantly more
than the abstract idea to provide an inventive concept under Alice/Mayo step
two. See Alice, 573 U.S. at 221; see also Guidance, 84 Fed. Reg. at 56.
Accordingly, we sustain the Examiner's rejection of claims 1-20
under 35 U.S.C. § 101 as directed to patent-ineligible subject matter.
1 Memorandum on Changes in Examination Procedure Pertaining to Subject
Matter Eligibility, Recent Subject Matter Eligibility Decision (Berkheimer v.
HP, Inc.) (Apr. 19, 2018) available at:
https: //www. uspto. gov/sites/default/ files/ do cum en ts/ memo-berkheimer-
20180419. PDF
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Section 103
Claim 1 recites, in part, generating a personalized web page by
"receiving an automated personalization task, wherein the automated
personalization task corresponds to one or more semantic queries for
associating dynamic data with the dynamic element field, and associating the
semantic queries to the dynamic element field." Appellant argues that as
defined in the Specification, "an automated personalization task is a
specified action (such as a hotlink) that causes the system to automatically
perform a task (such as adding hotlinked HTML) to the dynamic data field,
or by implementing semantic queries that select data from a set of candidate
data to include in the dynamic element field." App. Br. 26-27. "In this
way, the dynamic element field is truly dynamic, as it can change based on
the automated personalization task and the data retrieved when the task is
performed." Id. "In contrast, the pre-defined fields for customization" of
Farmer, Appellant argues, "are neither dynamic nor populated with
automated tasks." Id. Rather, Appellant argues, "Farmer explains that a
user customizes the fields using a pre-existing template. After the user fills
in the blanks of the fields, the system sends the personalized document to the
recipient." Id.
"The field simply presents the data that a user provided, and it
is not dynamic but rather remains static once the user fills in the
field. In contrast, by using an automated personalization task
with a dynamic field, the method of claim 1 can create a
document that includes up-to-the minute, and even variable,
content." Id.
In the Answer, the Examiner concludes the Specification merely states
that an automated personalized task requires that the dynamic element be hot
linked. Ans. 11. The Examiner finds that Farmer teaches a dynamic
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template with fields that are dynamic for personalization. Id. The Examiner
points out that Hahn is relied on to teach semantic queries. Id. at 12.
Absent persuasive technical reasoning or evidence to the contrary, we
are not persuaded of error in the Examiner's response. Farmer teaches the
disputed limitations of claim 1 because Farmer teaches dynamic data is
associated through a dynamic element field. Farmer, ,i,i 9-15 ( describing
"generating a dynamic website").
Accordingly, we sustain the Section 103 rejection of claim 1, and
claims 2-8, which depend, directly or indirectly, from claim 1. For the same
reasons, and because Appellant makes the same or essentially the same
arguments with respect to independent claims 9 and 16 as for claim 1, we
sustain the Section 103 rejection of claims 9-20.
DECISION
For the above reasons, the Examiner's rejections of claims 1-20 are
affirmed.
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) (2009).
AFFIRMED
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