Ex Parte Thompson et alDownload PDFPatent Trial and Appeal BoardMay 26, 201612700069 (P.T.A.B. May. 26, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 121700,069 02/04/2010 27752 7590 05/31/2016 THE PROCTER & GAMBLE COMPANY Global Patent Services - Legal IP Central Building, CS One Procter and Gamble Plaza CINCINNATI, OH 45202 FIRST NAMED INVENTOR Michael L. Thompson 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. 11605 7130 EXAMINER BOYCE, ANDRE D ART UNIT PAPER NUMBER 3623 NOTIFICATION DATE DELIVERY MODE 05/31/2016 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): centraldocket.im @pg.com pair_pg@firsttofile.com mayer.jk@pg.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte MICHAEL L. THOMPSON and DIANE D. FARRIS Appeal2104-002207 Application 12/700,069 Technology Center 3600 Before BIBHU R. MOHANTY, NINA L. MEDLOCK, and ROBERT J. SILVERMAN, Administrative Patent Judges. MOHANTY, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE The Appellants seek our review under 35 U.S.C. § 134 of the final rejection of claims 1 and 2, which are all the claims pending in the application. We have jurisdiction under 35 U.S.C. § 6(b ). SUMMARY OF THE DECISION We AFFIRM. Appeal2104-002207 Application 12/700,069 THE INVENTION The Appellants' claimed invention is directed to conducting consumer research by analyzing survey data using Bayesian statistics (Spec., 1 :4---6). Claim 1, reproduced below, is representative of the subject matter on appeal. 1. A method for conducting consumer research, the method comprising steps of: a) designing efficient consumer studies to collect consumer survey responses suitable for reliable mathematical modeling of consumer behavior in a consumer product category; b) building reliable Bayesian (belief) network models (BBN) based upon direct consumer responses to the survey, upon unmeasured factor variables derived from the consumer survey responses, and upon expert knowledge about the product category and consumer behavior within the category; c) using the BBN to identify and quantify the primary drivers of key responses within the consumer survey responses (such as, but not limited to, rating, satisfaction, purchase intent; and d) using the BBN to identify and quantify the impact of changes to the product concept marketing message and/ or product design on consumer behavior. THE REJECTIONS The following rejections are before us for review: 1. Claims 1 and 2 are rejected under 35 U.S.C. § 101 as being directed to non-statutory subject matter. 2. Claims 1 and 2 are rejected under 35 U.S.C. § 102(b) as being anticipated by Murakami (US 207/0233632 Al, pub. Oct. 4, 2007). 2 Appeal2104-002207 Application 12/700,069 FINDil-.JGS OF FACT We have determined that the findings of fact in the Analysis section below are supported at least by a preponderance of the evidence. 1 ANALYSIS Rejection under 35 USC§ 101 The Examiner has rejected claims 1 and 2 under 35 U.S.C. § 101 as being directed to non-statutory subject matter on the ground that the claims are directed to an abstract idea and could be performed mentally (Ans. 3). The Examiner has also applied the machine-or-transformation test in making this determination (id.). The Appellants argue that the rejection of claim 1 is improper because the alteration of the first state to the second state in the method is not an abstraction but rather a transformation in the claim (App. Br. 3). The Appellants provide similar arguments in this regard to claim 2 at pages 3 and 4 of the Appeal Brief. We agree with the Examiner. Under 35 U.S.C. § 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). The Supreme Court, however, has long interpreted § 101 to include an implicit exception: "laws of nature, natural phenomena, and abstract ideas" are not patentable (See, e.g., Alice Corp. Pty Ltd. v. CLS Banklnt'l, 134 S. Ct. 2347, 2354 (2014)). 1 See Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988) (explaining the general evidentiary standard for proceedings before the Patent Office). 3 Appeal2104-002207 Application 12/700,069 In judging whether claim l falls within the excluded category of abstract ideas, we are guided in our analysis by the Supreme Court's two- step framework, described in Mayo and Alice (id. at 2355 (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1296-97 (2012))). In accordance with that framework, we first determine whether the claim is "directed to" a patent-ineligible abstract idea. If so, we then consider the elements of the 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 of the abstract idea (id.). This is a search for an "inventive concept" an element or combination of elements sufficient to ensure that the claim amounts to "significantly more" than the abstract idea itself (id.). The Court also stated that "the mere recitation of a generic computer cannot transform a patent-ineligible abstract idea into a patent-eligible invention" (id. at 2358). Here, the cited claim limitations could be carried out in a series of mental steps and are directed as an abstract idea. Further, there is nothing in claim 1 that "transforms" the abstract idea into patent eligible subject matter. For these reasons the rejection of claim 1 is sustained. Claim 2 is similarly directed to the same concept and abstract idea and the rejection of this claim is sustained as well. Rejection under 35 USC§ 102(b) Claim 1 The Appellants first argue that the rejection of claim 1 is improper because the cited prior art fails to disclose the claim limitations for using 4 Appeal2104-002207 Application 12/700,069 "unmeasured factor variables derived from the consumer survey responses'' and "expert knowledge about the consumer product category" (App. Br. 4). In contrast, the Examiner has determined that the cited limitations are found in Murakami at paras. 25 and 28 (Ans. 3, 4). We agree with the Examiner. Here, Murakami at para. 25 discloses an analysis model that takes into account questionnaire response data "collected in a survey on consumers' purchase intentions," which serve to meet the first argued claim limitation for "unmeasured factor variables derived from the consumer survey responses." Murakami at para. 28 discloses using a decision-making model projected in advance "by a professional or the like" meeting the argued claim limitation for "expert knowledge about the consumer product category." For these reasons, this rejection is sustained. Claim 2 The Appellants argue that the rejection of claim 2 is improper because the cited prior art fails to disclose the claim limitations for using the BBN (Bayesian Belief Network models) to specifically: "predict consumer responses and infer their behavior to hypothetical product changes," "select product-consumer attribute combinations that help maximize predicted consumer responses," and "optimiz[ e] product concept message" based on optimal product-consumer attribute combinations (App. Br. 4). In contrast, the Examiner has determined that the cited limitations are found in Murakami at paras. 10, 25, 26, 28, 30, 40, 41, 49 and Figs. 5-10 (Ans. 3, 4). We agree with the Appellants. Murakami at para. 10 does disclose that one aspect of the invention is to use an analysis model in which causal 5 Appeal2104-002207 Application 12/700,069 relationships between variables can be expressed using a Bayesian network. However, none of the citations to Murakami specifically discloses that the Bayesian network is applied to the four specific features argued by the Appellants and listed above, for example to "predict consumer responses." Here, for the example, the method could predict this using other methods instead of a BBN, and how the method predicts these responses requires delving into probabilities and possibilities as it has not been specifically shown. For these reasons, this rejection is not sustained. CONCLUSIONS OF LAW We conclude that Appellants have not shown that the Examiner erred in rejecting claims 1 and 2 under 3 5 U.S. C. § 101 and claim 1 under 3 5 U.S.C. § 102(b). We conclude that Appellants have shown that the Examiner erred in rejecting claim 2 under 35 U.S.C. § 102(b). DECISION The Examiner's rejection of claims 1 and 2 is sustained. AFFIRMED 6 Copy with citationCopy as parenthetical citation