Ex Parte Uribe et al

Patent Trials and Appeals Board

Apr 9, 2019

13590071 - (D) (P.T.A.B. Apr. 9, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/590,071 08/20/2012
108911 7590 04/11/2019
Artegis Law Group, LLP / Netflix
7710 Cherry Park Drive Suite T #104
Houston, TX 77095
FIRST NAMED INVENTOR
Carlos Alberto Gomez Uribe
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.
NETF/0049.Pl 1070
EXAMINER
ANDERSON,FOLASHADE
ART UNIT PAPER NUMBER
3623
NOTIFICATION DATE DELIVERY MODE
04/11/2019 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):
algdocketing@artegislaw.com
kcruz@artegislaw.com
j matthews @artegislaw.com
PTOL-90A (Rev. 04/07)
UNITED ST ATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CARLOS ALBERTO GOMEZ URIBE and
VIJAYBHARADWAJ
Appeal 2017-011280
Application 13/590,071 1
Technology Center 3600
Before JOHNNY A. KUMAR, LARRY J. HUME, and
CATHERINE SHIANG, Administrative Patent Judges.
HUME, Administrative Pa tent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) of the Final
Rejection of claims 1-23, which are all claims pending in the application.
We have jurisdiction under35 U.S.C. § 6(b).
We AFFIRM.
1 According to Appellants, the real party in interest is Netflix, Inc. App.
Br. 3.
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Application 13/590,071
STATEMENT OF THE CASE2
The Invention
Appellants' disclosed embodiments and claimed "invention relate[]
generally to online content distribution and, more specifically, to identifying
similar items based on global interaction history." Spec. ,r 2.
Exemplary Claim
Claim 1, reproduced below, is representative of the subject matter on
appeal:
1. A computer-implemented method for identifying
two or more similar items within a local catalogue, the method
compnsmg:
determining, at a web server, a set of global counts based
on interaction data associated with a global group of users,
wherein a frrst global count in the set of global counts indicates
a number of times the global group of users has interacted with
a frrst digital content item in a global catalogue, and a second
global count in the set of global counts indicates a number of
times the global group of users has interacted with a second
digital content item in the global catalogue after interacting
with the frrst digital content item, the global group of users
interacting with the frrst and second digital content items via
web content browsers interacting with the web server through a
network, wherein the set of global counts is stored to a frrst
section of an interaction history database;
determining, at the web server, a set of local counts based
on interaction data associated with a local group of users,
2 Our decision relies upon Appellants' Appeal Brief ("App. Br.," filed
June 14, 2017); Reply Brief ("Reply Br.," filed Aug. 29, 2017); Examiner's
Answer ("Ans.,"mailed June 29, 2017); Final Office Action ("Final Act.,"
mailed Feb. 14, 2017; and the original Specification ("Spec.," filed
Aug. 20, 2012).
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wherein a frrst local count in the set of local counts indicates a
number of times the local group of users has interacted with a
third digital content item in a local catalogue, and a second
local count in the set of local counts indicates a number of
times the local group of users has interacted with a fourth
digital content item in the local catalogue after interacting with
the third digital content item, and wherein the third digital
content item corresponds to the frrst digital content item and the
fourth digital content item corresponds to the second digital
content item, the local group of users interacting with the third
and fourth digital content items via web content browsers
interacting with the web server through the network, wherein
the set of local counts is stored to a second section of the
interaction history database;
combining the set of global counts and the set of local
counts to compute an interaction probability that indicates the
likelihood of a particular user within the local group of users
interacting with the fourth digital content item after interacting
with the third digital content item;
computing a similarity score that indicates the similarity
between the third digital content item and the fourth digital
content item based on the interaction probability and a
popularity score associated with the fourth digital content item;
and
transmitting a recommendation for the fourth digital
content item, via a web content browser, to a user that has
interacted with the third digital content item, via the web
content browser, based on the similarity score between the third
digital content item and the fourth digital content item.
Cited Art
Although not prior art per se, the Examiner relies upon the following
related art as evidence in rejecting the claims on appeal:
Gomez Uribe et al. US 2013/0013372 Al Jan. 10, 2013
("Gomez '392")
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Rejecti ans on Appea/3
RI. Claims 1-23 stand rejected under 35 U.S.C. § 101 as being
directed to patent-ineligible subject matter. Final Act. 7.
R2. Claims 1, 10, and 19 are provisionally rejected under the
judicially-created doctrine of obviousness-type double patenting (OTDP)
over claims 1, 11, and 20 of the copending Gomez '392 application. 4 Final
Act. 13.
CLAIM GROUPING
Based on Appellants' arguments (App. Br. 13-18) and our discretion
under 37 C.F.R. § 41.37(c)(l)(iv), we decide the appeal of patent-ineligible
subjectmatterRejectionRl of claims 1-23 on the basis of representative
claim 1. We address the OTDP RejectionR2 of claims 1, 10, and 19, not
separately argued, infra. 5
3 We note Appellants present no arguments against OTDP RejectionR2 in
either the Appeal or Reply Briefs.
4 From the USPTO's records, the Gomez '392 application file history has a
Notice of Allowance mailed Jan. 23, 2019, with the Issue Fee payable on or
before Apr. 23, 2019.
5 "Notwithstanding any other provision of this paragraph, the failure of
appellant to separately argue claims which appellant has grouped together
shall constitute a waiver of any argument that the Board must consider the
patentability of any grouped claim separately." 37 C.F.R. § 41.37(c)(l)(iv).
In addition, when Appellants do not separately argue the patentability of
dependent claims, the claims stand or fall with the claims from which they
depend. In re King, 801 F.2d 1324, 1325 (Fed. Cir. 1986).
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ISSUES AND ANALYSIS
In reaching this decision, we consider all evidence presented and all
arguments actually made by Appellants. To the extent Appellants have not
advanced separate, substantive arguments for particular claims, or other
issues, such arguments are waived. 37 C.F.R. § 41.37( c )(1 )(iv).
We disagree with Appellants' arguments with respect to RejectionRl
of claims 1-23 and, unless otherwise noted, we incorporate by reference
herein and adopt as our own: ( 1) the fmdings and reasons set forth by the
Examiner in the action from which this appeal is taken, and (2) the reasons
and rebuttals set forth in the Examiner's Answer in response to Appellants'
arguments. We highlight and address specific fmdings and arguments
regarding claim 1 for emphasis as follows.
1. § 101 RejectionRl of Claims 1-23
Issue 1
Appellants argue (App. Br. 13-18; Reply Br. 3---6)the Examiner's
rejection of claim 1 under 35 U.S.C. § 101 as being directed to patent-
ineligible subject matter is in error. These contentions present us with the
following issue:
Under the USP TO' s Revised Guidance, informed by our governing
case law concerning 35 U.S.C. § 101, is claim 1 patent-ineligible under
§ 101?
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A. 35 U.S.C. § 101
PRINCIPLES OF LAW
"Whether a claim is drawn to patent-eligible subject matter is an issue
of law that we review de novo." Si RF Tech., Inc. v. Int 'l Trade Comm 'n,
601 F.3d 1319, 1331 (Fed. Cir. 2010).
An invention is patent-eligible if it claims a "new and useful process,
machine, manufacture, or composition of matter." 35 U.S. C. § 101. 6
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. Mayo Collaborative Servs. v. Prometheus Labs.,
Inc., 566 U.S. 66, 70 (2012) (brackets in original) (citing Diamondv. Diehr,
450U.S.175, 185(1981)).
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. Alice Corp. v. CLSBankint'l, 573 U.S. 208, 217-18 (2014)
( citing Mayo, 566 U.S. at 75-77). In accordance with that framework, we
frrst determinewhatconceptthe 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
6 This threshold analysis of whether a claim is directed to one of the four
statutory categories of invention, i.e., a process, machine, manufacture, or
composition of matter, is referred to as "Step 1" in the patent-eligibility
inquiry under § 101.
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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 (Parkerv. Flook, 437 U.S. 584, 594--95 (1978)); and
mental processes (Gottschalkv. Benson, 409 U.S. 63, 69 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as "molding rubber products" (Diehr, 450 U.S. at 191); "tanning,
dyeing, making water-proof cloth, vulcanizing India rubber, smelting ores"
(id. at 182 n.7 (quoting Corningv. Burden, 56U.S. (15 How.)252, 267---68
(1854))); and manufacturing flour (Benson, 409 U.S. at 69 (citing Cochrane
v. Deener, 94 U.S. 780, 785 (1876))).
In Di ehr, the claim at issue recited a mathematical formula, but the
Supreme Court held "a claim drawn to subject matter otherwise statutory
does not become nonstatutory simply because it uses a mathematical
formula." Di ehr, 450 U.S. at 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 environment."
Id. ( citation omitted) ( citing Benson and Flook); see, e.g., id. at 187 ("It is
now commonplace that an application of a law of nature or mathematical
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formula to a known structure or process may well be deserving of patent
protection.").
Abstract ideas may include, but are not limited to, fundamental
economic practices, methods of organizing human activities, and
mathematical formulas or relationships. Alice, 573 U.S. at 217-21. Under
this guidance, we must therefore ensure at step one that we articulate what
the claims are directed to with enough specificity to ensure the step one
inquiry is meaningful. Id. at 217 ("[W]e tread carefully in construing this
exclusionary principle lest it swallow all of patent law.").
If the claim is "directed to" an abstract idea, we tum to the second
step oftheAlice andMayo 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 ( citation 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.
B. USP TO Revised Guidance
The PTO recently published revised guidance in the Federal Register
concerning the application of§ 101. 2019 Revised Patent Subject Matter
Eligibility Guidance, 84 Fed. Reg. 50 (January 7, 2019) (hereinafter
"Revised Guidance") (https://www.govinfo.gov/content/pkg/FR-2019-01-
07 /pdf/2018-28282.pdf).
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Under the Revised Guidance, we frrst 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); 7 and
(2) additional elements that integrate the judicial
exception into a practical application (see Manual for Patent
Examining Procedure ("MPEP") §§ 2106.05(a}-( c), ( e}-(h)). 8
Only if a claim (1) recites a judicial exception and (2) does not
integrate that exception into a practical application, do we then look to
whether the claim:
(3) adds a specific limitation beyond the judicial
exception that are not "well-understood, routine, conventional"
in the field (see MPEP § 2106.05(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. 9
See Revised Guidance.
Step 2A(i)-Abstractldea
Informed by our judicial precedent, the Revised Guidance extracts and
synthesizes key concepts identified by the courts as abstract ideas to explain
7 Referred to as "Revised Step 2A, Prong 1" in the Revised Guidance
(hereinafter "Step 2A(i)").
8 Referred to as "Revised Step 2A, Prong 2" in the Revised Guidance
(hereinafter "Step 2A(ii)").
9 Items (3) and ( 4) continue to be collectively referred to as "Step 2B" of the
Supreme Court's two-step framework, described in Mayo and Alice.
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that the abstract idea exception includes the following groupings of subject
matter, when recited as such in a claim limitation:
(a) Mathematical concepts-mathematical relationships,
mathematical formulas or equations, mathematical calculations;
(b) Certain methods of organizing human activity -
fundamental economic principles or practices (including
hedging, insurance, mitigating risk); commercial or legal
interactions (including agreements in the form of contracts;
legal obligations; advertising, marketing or sales activities or
behaviors; business relations); managing personal behavior or
relationships or interactions between people (including social
activities, teaching, and following rules or instructions); and
( c) Mental processes----concepts performed in the human
mind (including an observation, evaluation, judgment, opinion).
Under the Revised Guidance, if the claim does not recite a judicial
exception ( a law of nature, natural phenomenon, or subject matter within the
enumerated groupings of abstract ideas above), then the claim is patent-
eligible at Step 2A(i). This determination concludes the eligibility analysis,
except in situations identified in the Revised Guidance. 10
However, if the claim recites a judicial exception (i.e., an abstract idea
enumerated above, a law of nature, or a natural phenomenon), the claim
requires further analysis for a practical application of the judicial exception
in Step 2A(ii).
10 In the rare circumstance in which an Examiner believes a claim limitation
that does not fall within the enumerated groupings of abstract ideas should
nonetheless be treated as reciting an abstract idea, the procedure described in
of the Guidance for analyzing the claim should be followed. See Guidance,
Section III. C.
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Step 2A (ii)-Practical Application
If a claim recites a judicial exception in Step 2A (i), we determine
whether the recited judicial exception is integrated into a practical
application of that exception in Step 2A (ii) by: (a) identifying whether there
are any additional elements recited in the claim beyond the judicial
exception( s ); and (b) evaluating those additional elements individually and
in combination to determine whether they integrate the exception into a
practical application.
The seven identified "practical application" sections of the MPEP, 11
cited in the Revised Guidance under Step 2A(ii), are:
(1) MPEP § 2106.05(a) Improvements to the Functioning of
a Computer or To Any Other Technology or Technical
Field
(2) MPEP §2106.05(b)ParticularMachine
(3) MPEP §2106.05(c)ParticularTransformation
(4) MPEP §2106.05(e)OtherMeaningfulLimitations
(5) MPEP §2106.05(f)Mereinstructions To Apply An
Exception
(6) MPEP § 2106.05(g) Insignificant Extra-Solution Activity
(7) MPEP § 2106.05(h) Field of Use and Technological
Environment
If the recited judicial exception is integrated into a practical
application as determined under one or more of the MPEP sections cited
11 See MPEP § 2106.05(a}-(c), (e}-(h). Citations to the MPEP herein refer
to revision [R-08.2017].
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above, then the claim is not directed to the judicial exception, and the patent-
eligibility inquiry ends. If not, then analysis proceeds to Step 2B.
Step 2B- "Inventive Concept" or "Significantly More"
Under our precedent, it is possible that a claim that does not
"integrate" a recited judicial exception under Step 2A(ii) is nonetheless
patent eligible. For example, the claim may recite additional elements that
render the claim patent eligible even though a judicial exception is recited in
a separate claim element. 12 The Federal Circuit has held claims eligible at
the second step of the Alice/Mayo test (US PTO Step 2B) because the
additional elements recited in the claims provided "significantly more" than
the recited judicial exception (e.g., because the additional elements were
unconventional in combination). 13 Therefore, if a claim has been
determined to be directed to a judicial exception under Revised Step 2A, we
must evaluate the additional elements individually and in combination under
Step 2B to determine whether they provide an inventive concept (i.e.,
whether the additional elements amount to significantly more than the
exception itself). 14
12 See, e.g., Di ehr, 450 U.S. at 187.
13 See, e.g., Amdocs (Israel), Ltd. v. Openet Telecom, Inc., 841 F .3d 1288,
1300, 1304(Fed. Cir. 20l6);BASCOMGlobalinternetServs.,Inc. v.AT&T
MobilityLLC, 827 F.3d 1341, 1349-52 (Fed. Cir. 2016); DDR Holdings,
LLC v. Hotels.com, L.P., 773 F.3d 1245, 1257-59 (Fed. Cir. 2014).
14 The patent eligibility inquiry may contain underlying issues of fact.
Mortg. Grader, Inc. v. FirstChoiceLoan Servs. Inc., 811 F.3d 1314, 1325
(Fed. Cir. 2016). In particular, "[t]he question of whether a claim element or
combination of elements is well-understood, routine and conventional to a
skilled artisan in the relevant field is a question of fact." Berkheimerv. HP
Inc., 881 F.3d 1360, 1368 (Fed. Cir. 2018).
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Under the Revised Guidance, we must consider in Step 2B whether an
additional element or combination of elements: (1) "Adds a specific
limitation or combination of limitations that are not well-understood,
routine, conventional activity in the field, which is indicative that an
inventive concept may be present;" or (2) "simply appends well-understood,
routine, conventional activities previously known to the industry, specified
at a high level of generality, to the judicial exception, which is indicative
that an inventive concept may not be present." See Revised Guidance,
III.B. 15
In the Step 2B analysis, an additional element ( or combination of
elements) is not well-understood, routine or conventional unless the
examiner fmds an evidentiary basis, and expressly supports a rejection in
writing with, one or more of the following:
1. A citation to an express statement in the
specification or to a statement made by an applicant during
prosecution that demonstrates the well-understood, routine,
conventional nature of the additional element( s ) ....
2. A citation to one or more of the court decisions
discussed in MPEP § 2106. 05( d)(II) as noting the well-
15 In accordance with existing Step 2B guidance, an Examiner's fmding that
an additional element ( or combination of elements) is well understood,
routine, conventional activity must be supported with at least one of the four
specific types of evidence required by the USP TO Berkheimer
Memorandum, as shown above. For more information concerning evaluation
of well-understood, routine, conventional activity, see MPEP § 2106. 05( d),
as modified by the USP TO Berkheimer Memorandum (US PTO
Commissioner for Patents Memorandum dated Apr. 19, 2018, "Changes in
Examination Procedure Pertaining to Subject Matter Eligibility, Recent
Subject Matter Eligibility Decision (Berkheimer v. HP, Inc.)" (hereinafter
"Berkheimer Memo").
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understood, routine, conventional nature of the additional
element(s).
3. A citation to a publication that demonstrates the
well-understood, routine, conventional nature of the additional
element(s) ....
4. A statement that the examiner is taking official
notice of the well-understood, routine, conventional nature of
the additional element(s) ....
See Berkheimer Memo.
The analysis in Step 2B further determines whether an additional
element or combination of elements:
(a) Adds a specific limitation or combination of
limitations that are not well-understood, routine, conventional
activity in the field, which is indicative that an inventive
concept may be present; or
(b) simply appends well-understood, routine,
conventional activities previously known to the industry,
specified at a high level of generality, to the judicial exception,
which is indicative that an inventive concept may not be
present.
Revised Guidance, and see Berkheimer Memo.
If the Examiner or the Board determines under Step 2B that the
element ( or combination of elements) amounts to significantly more than the
exception itself, the claim is eligible, thereby concluding the eligibility
analysis.
However, if a determination is made that the element and combination
of elements does not amount to significantly more than the exception itself,
the claim is ineligible under Step 2B, and the claim should be rejected for
lack of subject matter eligibility.
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ANALYSIS
Step 1
Claim 1, as a method (process) claim, recites one of the enumerated
categories of eligible subject matter in 3 5 U.S. C. § 101. Therefore, the issue
before us is whether it is directed to a judicial exception without
significantly more.
Step 2A (i): Does the Claim Recite a Judicial Exception?
The Examiner determined:
Applicant's steps of "determining a set of global counts
... determining a set of local counts ... combining the set of
global counts and the set of local counts to compute an
interaction probability ... computing a similarity score" when
interpreted in the broadest reasonable light of the specification
are found to be an indication of a mathematical formula[], i.e.
an expression of a scientific truth, thereby an abstract idea
under step 2A of the two-step test.
The Office fmds that the instant claimed invention uses
the claimed counting and scoring (math) to make
recommendation, i.e. organizing human activity.
Final Act. 9.
We conclude claim 1 does not recite the judicial exceptions of either
natural phenomena or laws of nature. We evaluate whether claim 1 recites
an abstract idea based upon the Revised Guidance. We conduct our review
for abstractness de nova.
Claim 1 recites, in pertinent part, "[a] computer-implemented method
for identifying two or more similar items within a local catalogue," that
includes the steps of:
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(1) "determining ... a set of global counts ... wherein a
frrst global count ... indicates a number of times the global
group of users has interacted with a frrst digital content item in
a global catalogue, and a second global count ... indicates a
number of times the global group of users has interacted with a
second digital content item in the global catalogue after
interacting with the frrst digital content item."
(2) "determining ... a set of local counts ... wherein a
frrst local count ... indicates a number of times the local group
of users has interacted with a third digital content item in a
local catalogue, and a second local count in the set of local
counts indicates a number of times the local group of users has
interacted with a fourth digital content item in the local
catalogue after interacting with the third digital content item,
and wherein the third digital content item corresponds to the
frrst digital content item and the fourth digital content item
corresponds to the second digital content item."
(3) "combining the set of global counts and the set of
local counts to compute an interaction probability that indicates
the likelihood of a particular user within the local group of
users interacting with the fourth digital content item after
interacting with the third digital content item."
( 4) "computing a similarity score that indicates the
similarity between the third digital content item and the fourth
digital content item based on the interaction probability and a
popularity score associated with the fourth digital content
item."
( 5) "transmitting a recommendation for the fourth digital
content item ... to a user that has interacted with the third
digital content item ... based on the similarity score between
the third digital content item and the fourth digital content
item."
Claims App'x.
The Specification provides context as to what the claimed invention is
directed to. In this case, the Specification discloses that " [ t ]he present
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invention relates generally to online content distribution and, more
specifically, to identifying similar items based on global interaction history."
Spec. ,r 2.
Appellants' Abstract describes the invention as:
[A] technique for computing a similarity score between
two digital items [ ] computed based on interaction histories
associated with global users and interaction histories associated
with local users. Global counts indicating the number of
interactions associated with each unique pair of digital items are
weighted based on a mixing rate. The weighted global counts
are then combined with local counts to compute total counts.
An effective interaction probability indicating the likelihood of
a user interacting with one digital item in the pair of digital
items after interacting with the other digital item in the pair is
computed based on the total counts. The effective interaction
probability is then corrected for noise, resulting in a similarity
score indicating the similarity between the pair of digital items.
Spec. 21.
While the Examiner determined claim 1 includes multiple abstract
ideas, i.e., "an indication of a mathematical formula[]" and "organizing
human activity" (Final Act. 9), we determine that claim 1, as a whole, recites
a method of organizing human activity, i.e., a commercial interaction in the
form of marketing or sales activities or behaviors.
Under the broadest reasonable interpretation standard, 16 we conclude
this type of recited activity in limitations ( 1) through ( 5) would occur
16 During prosecution, claims must be given their broadest reasonable
interpretation when reading claim language in light of the specification as it
would be interpreted by one of ordinary skill in the art. In re Am. Acad. of
Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). Under this standard,
we interpret claim terms using "the broadest reasonable meaning of the
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whenever it is desired to analyze user interactions with various content items
and determine a similarity score for a different item. See Final Act. 9. Such
analysis would generally be carried out whenever it is desired to provide a
recommendation to a user for a content item based upon previous interaction
with a similar item, as determined by a similarity score. We further
conclude the steps in each of limitations ( 1) through ( 5), aside from the
recitation of a "web server" and a "web content browser" includes
longstanding conduct that existed well before the advent of computers and
the Internet, and could be carried out by a human with pen and paper. See
CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1375 (Fed.
Cir. 2011). 17
words in their ordinary usage as they would be understood by one of
ordinary skill in the art, taking into account whatever enlightenment by way
of defmitions or otherwise that may be afforded by the written description
contained in the applicant's specification." In re Morris, 127F.3d 1048,
1054 (Fed. Cir. 1997).
17 Our reviewing court recognizes that "[ a ]n abstract idea can generally be
described at different levels of abstraction." Apple, Inc. v. Ameranth, Inc.,
842 F.3d 1229, 1240(Fed. Cir. 2016). That need not and, in this case does
not, "impact the patentability analysis." Id. at 1241. Further, "An abstract
idea can generally be described at different levels of abstraction .... The
Board's slight revision of its abstract idea analysis does not impact the
patentability analysis." Id. Moreover, merely combining several abstract
ideas does not render the combination any less abstract. Recogni Corp, LLC
v. Nintendo Co., 855 F.3d 1322, 1327 (Fed. Cir. 2017) ("Adding one
abstract idea (math) to another abstract idea ... does not render the claim
non-abstract."); see also Fair Warning IP, LLCv. Iatric Sys., Inc., 839 F.3d
1089, 1093-94 (Fed. Cir. 2016) (determining the pending claims were
directed to a combination of abstract ideas). Thus, the patentability analysis
in this Appeal does not tum on exactly how various limitations are
characterized as being abstract, i.e., as either an abstract "mathematical
concept," "mental process," or "certain methods of organizing human
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Appellants argue:
First, under McRO, the claimed approach focuses on a
specific means or method that improves the relevant
technology, rather than on a result or effect that itself is the
abstract idea. In particular, the claims focus on a technique to
identify similar digital content items and transmit
recommendations for digital content items via a web content
browser. The steps of the claim achieve this result by
determining counts for users interacting with digital content
items via web content browsers, computing a similarity score
based on the determined counts, and transmitting a
recommendation for a digital content item via a web content
browser based on the similarity score. The determined counts
and similarity scores consider the temporal ordering of digital
content item interactions by users via the web content browsers.
In this manner, more accurate recommendations of digital
content items are determined relative to prior approaches.
App. Br. 14. We disagree, as discussed below.
In M cR O, the claims were not held to be abstract because they recited
a "specific ... improvement in computer animation" using "unconventional
rules that relate[ d] sub-sequences of phonemes, timings, and morph weight
sets." McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299, 1302-
03, 1307---08, 1314--15 (Fed. Cir. 2016). InMcRO, "the incorporation of the
claimed rules, not the use of the computer," improved an existing
technological process. Id. at 1314.
Here, we do not find the claims in McROto be sufficiently analogous
to claim 1 on appeal. Claim 1 recites counting "a number of times the global
activity." For example, limitations (3) and(4) can alternatively be
characterized as mathematical concepts, and limitations ( 1) and (2) can be
characterized as reciting mental processes. The end result remains the same
in this Appeal. The claim recites an abstract idea.
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group of users has interacted with a frrst digital content item in a global
catalogue" and counting "a number of times the local group of users has
interacted with a third digital content item in a local catalogue, and a second
local count in the set of local counts indicates a number of times the local
group of users has interacted with a fourth digital content item in the local
catalogue after interacting with the third digital content item." Claim 1.
These counts are then used to determine a conditional probability, i.e., "an
interaction probability that indicates the likelihood of a particular user within
the local group of users interacting with the fourth digital content item after
interacting with the third digital content item." Id. We conclude counting
interactions and determining a conditional interaction probability is not
equivalent to using "unconventional rules" as in McROto improve a
technological process.
Appellants further allege, "the claims pose no danger of preempting
an abstract idea." App. Br. 16. The Examiner responds by noting "pre-
emption is not the current test for determining if claims are patent eligible
under35 USC§ 101." Ans. 24; and see buySAFE, Inc. v. Google, Inc., 765
F.3d 1350, 1355 (Fed. Cir. 2014) (collecting cases);Accenture Global
Servs., GmbHv. GuidewireSoftware,Inc., 728F.3d 1336, 1345 (Fed. Cir.
20l3);AriosaDiagnostics,Inc. v. Sequenom,Inc., 788F.3d 1371, 1379
(Fed. Cir. 2015) ("While preemption may signal patent ineligible subject
matter, the absence of complete preemption does not demonstrate patent
eligibility"). Further regarding preemption, "[ w ]here a patent's claims are
deemed only to disclose patent ineligible subject niatter under the }vl ayo
frmnework, as they are in this case, pree1nption concerns are fully addressed
and made moot" Ariosa, 788 F.3d at 1379; see also GIP Techs., Inc. v.
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Amazon.com, Inc., 788 F.3d 1359, 1362---63 (Fed. Cir. 2015) ("thatthe
claims do not preempt all price optimization or may be limited to price
optimization in the e-commerce setting do not make them any less
abstract").
Thus, under Step 2A(i), we agree with the Examiner that claim 1 's
"method for identifying two or more similar items within a local catalogue"
recites an abstract idea. (Emphasis added). We conclude claim 1, as a
whole, under our Revised Guidance, recites a judicial exception of certain
methods of organizing human activity, i.e., a commercial interaction in the
form of marketing or sales activities, and thus is an abstract idea.
Step 2A (ii): Judicial Exception Integrated into a Practical Application?
If the claims are directed to a patent-ineligible concept, as we
conclude above, we proceed to the "practical application" Step 2A(ii) in
which we determine whether the recited judicial exception is integrated into
a practical application of that exception by: (a) identifying whether there are
any additional elements recited in the claim beyond the judicial exception( s );
and (b) evaluating those additional elements individually and in combination
to determine whether they integrate the exception into a practical
application.
We find claim 1, as a whole, recites an abstract idea as identified in
Step 2A(i), supra, and none of the limitations integrate the certain methods
of organizing human activity of a commercial interaction in the form of
marketing or sales activities into a practical application as determined under
one or more of the MPEP sections cited above. The claim as a whole merely
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uses instructions to implement the abstract idea on a web server or,
alternatively, merely uses a web server as a tool to perform the abstract idea.
Appellants argue, however,
the claimed approach provides a technical solution for a
technical problem arising in the field of Internet technology-
the claimed approach provides more accurate identification and
recommendation of similar digital content items for users
interacting with digital content items via web content browsers.
Accordingly, the claimed approach cannot be considered
abstract under the standards set forth in ... DDR Holdings.
App. Br. 15. 18
Appellants further contend:
[U]ser interactions with digital content items via web browsers
is necessarily rooted in computer technology, as these
interactions cannot occur without use of the underlying
computer technology. Accordingly, the claimed approach is
rooted in computer technology and provides a technical
solution for a technical problem arising in the field of computer
and Internet technology, and cannot be considered abstract
under DDR Holdings.
Reply Br. 4--5.
Appellants' reliance on DDR (App. Br. 14--15) is misplaced as the
recited claims do not improve the computer. InDDR, the claims at issue
involved, inter ali a, "web pages displays [with] at least one active link
associated with a commerce object associated with a buying opportunity of a
selected one of a plurality of merchants" (claim 1 of US 7,818,399). The
Federal Circuit found the claims in DDR to be patent-eligible under step two
of the Alice test because "the claimed solution is necessarily rooted in
18 Citing DDRHoldingsv. Hotels.com, 773 F.3d 1245 (Fed. Cir. 2014).
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computer technology in order to overcome a problem specifically arising in
the realm of computer networks." DDRHoldings, 773 F.3dat 1257.
Specifically, the Federal Circuit found the claims addressed the "challenge
of retaining control over the attention of the customer in the context of the
Internet." Id. at 1258. We fmd the rejected claims are dissimilar to DDR's
web page with an active link, and the Specification does not support the
view that the computer related claim elements are unconventional. See
Spec. ,r,r 13-17.
Thus, on this record, Appellants have not shown under the guidance
of Manual of Pa tent Examining Procedure section 2106. 05 (a)
("Improvements to the Functioning of a Computer or to Any Other
Technology or Technical Field") or section 2106. 05( e )("Other Meaningful
Limitations") that the recited abstract ideas are integrated into a practical
application. Nor do Appellants advance any arguments in the Brief( s) that
are directed to the Bilski machine-or-transformation test, which would only
be applicable to the method (process) claims on appeal. See MPEP
§§ 2106.05(b) (Particular Machine) and2106.05(c) (Particular
Transformation).
Therefore, we conclude the abstract idea is not integrated into a
practical application, and thus the claim is directed to the judicial exception.
Step 2B- "Inventive Concept" or "Significantly More"
If the claims are directed to a patent-ineligible concept, as we
conclude above, we proceed to the "inventive concept" step. For Step 2B we
must "look with more specificity at what the claim elements add, in order to
determine 'whether they identify an "inventive concept" in the application of
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the ineligible subject matter' to which the claim is directed." Affinity Labs
of Texas, LLCv. DIRECTV, LLC, 838 F.3d 1253, 1258 (Fed. Cir. 2016)
(quotingElec. Power Grp., 830F.3dat 1353).
In applying step two of the Alice analysis, our reviewing court guides
we must "determine whether the claims do significantly more than simply
describe [the] abstract method" and thus transform the abstract idea into
patentable subject matter. Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709,
715 (Fed. Cir. 2014). We look to see whether there are any "additional
features" in the claims that constitute an "inventive concept," thereby
rendering the claims eligible for patenting even if they are directed to an
abstract idea. Alice, 573 U.S. at 221. Those "additional features" must be
more than "well-understood, routine, conventional activity." Mayo, 5 66
U.S. at 79.
Limitations referenced in Alice that are not enough to qualify as
"significantly more" when recited in a claim with an abstract idea include, as
non-limiting or non-exclusive examples: adding the words "apply it" (or an
equivalent) with an abstract idea 19 ; mere instructions to implement an
abstract idea on a computer20 ; or requiring no more than a generic computer
to perform generic computer functions that are well-understood, routine and
conventional activities previously known to the industry. 21
19 Alice, 573 U.S. at221-23.
20 Alice, 573 U.S. at 221, e.g., simply implementing a mathematical
principle on a physical machine, namely a computer ( citing Mayo, 566 U.S.
at 84--85).
21 Alice, 573 U.S. at 225, e.g., using a computer to obtain data, adjust
account balances, and issue automated instructions.
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Appellants argue,
[T ]he novelty of the claimed invention is evidenced by the fact
that no references are cited for the claimed invention and the
claimed invention is not currently rejected under either 3 5
U.S.C. §102 or §103.
Because Applicants' claims recite at least one limitation
beyond what is well-understood, routine and conventional in
the field, the claims recite significantly more than any alleged
abstract idea itself. Accordingly, the claims meet the second
prong of the two-step Alice test as well.
Reply Br. 5---6. We are not persuaded by Appellants' arguments.
We are not persuaded because the Supreme Court emphasizes, " [ t ]he
'novelty' of any element or steps in a process, or even of the process itself, is
of no relevance in determining whether the subject matter of a claim falls
within the § 101 categories of possibly patentable subject matter." Di ehr,
450 U.S. at 188-89 (emphasis added). Our reviewing court further guides
that "[ e ]ligibility and novelty are separate inquiries." Two-Way Medi a Ltd.
v. Comcast Cable Commc 'ns, LLC, 874 F.3d 1329, 1340 (Fed. Cir. 2017);
see also Affinity Labs, 838 F.3d at 1263 (holding that "[e]ven assuming" that
a particular claimed feature was novel does not "avoid the problem of
abstractness").
Evaluating representative claim 1 under step 2 of the Alice analysis,
we conclude it lacks an inventive concept that transforms the abstract idea
relating to certain methods of organizing human activity, i.e., commercial
interactions in the form of marketing or sales activities or behaviors, into a
patent-eligible application of that abstract idea.
The Manual of Pa tent Examining Procedure, based upon our
precedential guidance, provides additional considerations with respect to
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analysis of the well-understood, routine, and conventional nature of the
claimed computer-related components.
Another consideration when determining whether a claim
recites significantly more than a judicial exception is whether
the additional elements amount to more than a recitation of the
words "apply it" ( or an equivalent) or are more than mere
instructions to implement an abstract idea or other exception on
a computer. As explained by the Supreme Court, in order to
transform a judicial exception into a patent-eligible application,
the additional element or combination of elements must do
'"more than simply stat[ e] the [judicial exception] while adding
the words 'apply it'". Alice Corp. v. CLS Bank, 573 U.S. 134 S.
Ct. 2347, 2357, 110 USPQ2d 1976, 1982-83 (2014) (quoting
Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S.
66, 72, 101 USPQ2d 1961, 1965). Thus, for example, claims
that amount to nothing more than an instruction to apply the
abstract idea using a generic computer do not render an abstract
idea eligible. Alice Corp., 134 S. Ct. at 2358, 110 USPQ2d at
1983. See also 134 S. Ct. at 2389, 110 USPQ2d at 1984
( warning against a § 101 analysis that turns on "the draftsman's
art") ....
In Alice Corp., the claim recited the concept of
intermediated settlement as performed by a generic computer.
The Court found that the recitation of the computer in the claim
amounted to mere instructions to apply the abstract idea on a
generic computer. 134 S. Ct. at 2359-60, 110 USPQ2d at 1984.
The Supreme Court also discussed this concept in an earlier
case, Gottschalkv. Benson,409U.S. 63, 70, 175USPQ673,
676 (1972), where the claim recited a process for converting
binary-coded decimal (BCD) numerals into pure binary
numbers. The Court found that the claimed process had no
substantial practical application except in connection with a
computer. Benson, 409U.S. at 71-72, 175 USPQ at 676. The
claim simply stated a judicial exception (e.g., law of nature or
abstract idea) while effectively adding words that "apply it" in a
computer. Id.
MPEP § 2106.05(±) ("Mere Instructions To Apply An Exception").
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The patent eligibility inquiry may contain underlying issues of fact.
Mortg. Grader, 811 F.3d at 1325. In particular, "[t]he question of whether a
claim element or combination of elements is well-understood, routine and
conventional to a skilled artisan in the relevant field is a question of fact."
Berkheimer, 881 F.3dat 1368.
As evidence of the conventional nature of the recited "computer-
implemented method" in claim 1, that includes use of a "web server" and a
"web content browser," (and similarly in medium claim 10); and the
"computer system" in claim 19, that includes a "memory," a "processor," a
"web server," and a "web content server," the Specification discloses:
[ 0013] Figure 1 illustrates a content browsing and
distribution system 100 configured to implement one or more
aspects of the invention. As shown, the content browsing and
distribution system 100 includes a web application server 102, a
communications network 104, a content distribution network
( CON) 106 and a content browser and player 108 ....
[ 0014] The communications network 104 includes a
plurality of network communications systems, such as routers
and switches, configured to facilitate data communication
between the web application server 102, the CDN 106 and the
content browser and player 108. Persons skilled in the art will
recognize that many technically feasible techniques exist for
building the communications network 104, including
technologies practiced in deploying the well-known internet
communications network
[0015] The web application server 102 is a computer
system configured to host a web application that is accessed by
the content browser and player 108. The web application hosted
by the web application server 102 allows a user of content
browser and player 108 to browse through available digital
content, manage account information, receive content
recommendations, etc ....
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[0016] The CDN 106 comprises one or more computer
systems configured to serve download requests for digital
media (referred to "digital content items" herein) from the
content browser and player 108. The digital content items may
reside on a mass storage system accessible to the computer
system. The mass storage system may include, without
limitation, direct attached storage, network attached file storage,
or network attached block-level storage. The digital content
items may be formatted and stored on the mass storage system
using any technically feasible technique. A data transfer
protocol, such as the well-known hyper-text transfer protocol
(HTTP), may be used to download digital content items from
the content server 106 to the content browser and player 108.
[0017] The content browser and player 108 may
comprise a computer system, a set top box, a mobile device
such as a mobile phone, or any other technically feasible
computing platform that has network connectivity and is
coupled to or includes a display device and speaker device for
pres en ting video frames, and generating acoustic output,
respectively. The content browser and player 108 interacts with
the web application server 102 and the CDN 106 to display
available digital content infonnation, gather user preferences
and play digital content items.
Spec. ,r,r 13-17 ( emphasis added).
Thus, because the Specification describes the additional elements in
general terms, without describing the particulars, we conclude the claim
limitations may be broadly but reasonably construed as reciting conventional
computer components and techniques, particularly in light of Appellants'
Specification, as quoted above. 22
22 Claim terms are to be given their broadest reasonable interpretation, as
understood by those of ordinary skill in the art and taking into account
whatever enlightenment may be had from the Specification. In re Morris,
127 F.3d 1048, 1054 (Fed. Cir. 1997).
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We conclude the claims fail the Step 2B analysis because claim 1, in
essence, merely recites a web server and a web content browser along with
no more than mere instructions to implement the identified abstract idea
using the computer-based elements.
Therefore, because the claims fail under both the Step 2A and Step 2B
analyses, we sustain the Examiner's§ 101 rejection of independent claims 1,
10, and 19, and grouped claims 2-9, 11-18, and20-23, not argued
separately, and which fall therewith. See Claim Grouping, supra.
2. OTDP RejectionR2 of Claims 1, 10, and 19
Issue 2
In view of the lack of any substantive or separate arguments directed
to OTDP RejectionR2 of claims 1, 10, and 19, we summarily sustain the
Examiner's rejection of these claims. Arguments not made are waived.
REPLYBRIEF
To the extent Appellants may advance new arguments in the Reply
Brief (Reply Br. 3---6) not in response to a shift in the Examiner's position in
the Answer, we note arguments raised in a Reply Brief that were not raised
in the Appeal Brief or are not responsive to arguments raised in the
Examiner's Answer will not be considered except for good cause (see 37
C.F.R. § 41.41(b)(2)), which Appellants have not shown.
CONCLUSIONS
(1) Claims 1-23inRejectionR1 under35U.S.C. §101 are
directed to patent-ineligible subject matter, and we sustain the rejection.
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(2) The Examiner did not err with respect to OTDP Rejection R2 of
claims 1, 10, and 19, and we sustain the rejection.
DECISION
We affrrm the Examiner's decision rejecting claims 1-23.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv). See 37
C.F.R. § 41.50(±).
AFFIRMED
30