Ex Parte VILLARS

Patent Trials and Appeals Board

May 22, 2019

13438346 - (D) (P.T.A.B. May. 22, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/438,346 04/03/2012
21839 7590 05/24/2019
BUCHANAN, INGERSOLL & ROONEY PC
POST OFFICE BOX 1404
ALEXANDRIA, VA 22313-1404
FIRST NAMED INVENTOR
Curtis VILLARS
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.
0076412-000056 6130
EXAMINER
YOUNG, ASHLEY YA-SHEH
ART UNIT PAPER NUMBER
3683
NOTIFICATION DATE DELIVERY MODE
05/24/2019 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):
ADIPDOC 1@BIPC.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CUR TIS VILLARS
Appeal2018-003014
Application 13/438,3461
Technology Center 3600
Before JOSEPH L. DIXON, HUNG H. BUI, and JON M. JURGOV AN,
Administrative Patent Judges.
BUI, Administrative Patent Judge.
DECISION ON APPEAL
Appellant seeks our review under 35 U.S.C. § 134(a) from the
Examiner's Final Rejection of claims 1-3, 5-13, and 15-20, which are all
the claims pending in the application. We have jurisdiction under 35 U.S.C.
§ 6(b ).
WeAFFIRM. 2
1 According to Appellant, the real party in interest is MasterCard
International Incorporated. App. Br. 1.
2 Our Decision refers to Appellant's Appeal Brief ("App. Br.") filed August
8, 2017; Reply Brief ("Reply Br.") filed January 30, 2018; Examiner's
Answer ("Ans.") mailed November 30, 2017; Final Office Action ("Final
Act.") mailed March 9, 2017; and original Specification ("Spec.") filed April
3, 2012.
Appeal2018-003014
Application 13/438,346
STATEMENT OF THE CASE
Appellant's invention relates to a method and system for "measuring
advertisement effectiveness by using microsegments as applied to exposed
and unexposed consumers," the microsegments being "generat[ ed] ...
without the use of personally identifiable information." Spec. ,-J,-J 2, 11.
Claims 1 and 11 are independent. Representative claim 1 is
reproduced below:
1. A method of analyzing advertising effectiveness,
compnsmg:
electronically storing, in an encrypted database of a
processing server that does not store personally identifiable
information (PII), entity information from a demographic
tracking agency associated with a plurality of entities, wherein
the entity information is non-personally identifiable and includes
activity information and characteristic information associated
with the corresponding entity;
without using PII, generating, by a processor of the
processing server, a plurality of microsegments, each
microsegment including a subset of the plurality of entities based
on the associated characteristic information stored in the
encrypted database, wherein no two subsets of the plurality of
entities contains a common entity at the same time;
determining, by the processor of the processing server,
without the use of PII, a test audience including a plurality of first
microsegments that has been exposed to an advertisement
associated with a merchant and a control audience including a
plurality of second microsegments that has not deliberately been
exposed to the advertisement, wherein (i) entities included in the
plurality of first microsegments of the test audience and entities
included in the plurality of second microsegments of the control
audience cannot be uniquely identified by the processor, (ii)
entities included in the test audience are exposed to the
advertisement during a predetermined period of time and (iii)
entities included in the control audience are not deliberately
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exposed to the advertisement during the predetermined period of
time, wherein the advertisement included in the test audience and
the advertisement included in the control audience is the same
advertisement;
analyzing, by the processor of the processing server, the
activity information for the entities in the plurality of first
microsegments included in the test audience and the entities in
the plurality of second microsegments included in the control
audience to determine spending behaviors for the associated
entities during the predetermined period of time, wherein the
spending behavior comprises financial transaction data;
comparing, by the processor of the processing server, the
spending behaviors determined for the entities in the plurality of
first microsegments of the test audience with the spending
behaviors determined for the entities in the plurality of second
microsegments of the control audience to determine the
effectiveness of the exposure to the advertisement; and
reporting, by a communication component of the
processing server, the effectiveness of the exposure to the
advertisement to the merchant.
App. Br. 15-21 (Claims App.).
Evidence Considered
Klein et al. ("Klein") US 2010/0114668 Al May 6, 2010
Sattley et al. ("Sattley") US 2007/0260519 Al Nov. 8, 2007
Examiner's Rejection
Claims 1-3, 5-13, and 15-20 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Klein and Sattley. Final Act. 6-22.
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ANALYSIS
With respect to independent claim 1, and similarly independent claim
11, the Examiner finds Klein's method and system for determining
effectiveness of advertisements with respect to a group of panelists, teach a
method and system for analyzing advertising effectiveness by (i)
electronically storing, in an encrypted database of a processing server that
does not store personally identifiable information (PII), entity information
associated with a plurality of entities, the entity information being non-
personally identifiable, and (ii) without using PII, generating microsegments
each including a subset of the entities, wherein no two subsets contain a
common entity at the same time, as claimed. Final Act. 6-9 ( citing Klein
,-J,-J 16, 18, 26-31, 47, 51). In particular, the Examiner finds Klein stores
characteristic information of panelists/entities to define groups, "where the
characteristic information is drawn to demographic, psychographic,
geographic characteristics" that are non-personally identifiable, as required
by claim 1. Ans. 3-4.
The Examiner further finds Klein discloses "panelist grouping is
based on shared characteristics of panelists, and does not utilize personal
information (i.e. name, address, etc.) to form such groupings," thereby
teaching that "stored information that is not personally identifiable ... is
used to generate microsegments," as claimed. Ans. 4. The Examiner also
finds Klein teaches the claimed microsegments whose subsets do not contain
a common entity at the same time, because Klein teaches microsegments
may be demographic groups relating to gender or age "in which the
individual may only be associated with one grouping (i.e. either male OR
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female and/or falling within only one age bracket: age 0-13 OR age 14-25,
for example)." Ans. 6.
The Examiner further finds Klein teaches (iii) analyzing activity
information for entities in the microsegments to determine spending
behaviors, (iv) comparing the spending behaviors in microsegments to
determine effectiveness of the exposure to an ad, and (v) reporting the
effectiveness of the ad exposure to a merchant, as required by claims 1 and
11. Final Act. 9-11 ( citing Klein ,i,i 12, 17-18, 36-40, 45, 53, Abstract).
To support the conclusion of obviousness, the Examiner relies on
Sattley for teaching the claimed "determining ... a test audience [ whose
entities are exposed to the ad during a predetermined time period] ... and a
control audience [ whose entities are not deliberately exposed to the ad
during the predetermined period]," and analyzing activity information for
entities in the test and control audiences to compare entities' behaviors, as
recited in claims 1 and 11. Final Act. 11-13 (citing Sattley ,i,i 6-7, 19, 40-
41, 47, 49, 56-57, 59, 69, 73, 83-88).
Appellant disputes the Examiner's factual findings regarding Klein.
In particular, Appellant argues "Klein is devoid of disclosure that teaches or
suggests that ( 1) an encrypted database of a processing server does not store
PII and (2) entity information (stored in the encrypted database) is non-
personally identifiable." Reply Br. l; see also App. Br. 8-10. Appellant
asserts Klein "does not specify that the stored characteristics and stored
consumer data, are non-personally identifiable" and does not "restrict[] a
processing server such that it does not store any PII, as in Appellant's [claim
1 ]." App. Br. 8. Appellant also argues Klein does not teach or suggest
"without using PII, generating a plurality of microsegments, wherein each
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microsegment includes a subset of the plurality of entities and wherein no
two subsets of the plurality of entities contains a common entity at the
same" as recited in claim 1. App. Br. 12-13; see also Reply Br. 3-4.
We do not find Appellant's arguments persuasive. Rather, we find the
Examiner has provided a comprehensive response to Appellant's arguments
supported by a preponderance of evidence. Ans. 3-6. Therefore, we adopt
the Examiner's findings and explanations provided therein. Id. At the
outset, we note claim terms are given their broadest reasonable interpretation
consistent with the Specification. In re Am. Acad. of Sci. Tech. Ctr., 367
F.3d 1359, 1364 (Fed. Cir. 2004). Under the broadest reasonable
interpretation, claim terms are given their ordinary and customary meaning,
as would be understood by one of ordinary skill in the art in the context of
the entire disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257
(Fed. Cir. 2007).
Appellant's claim 1 recites, inter alia, "electronically storing, in an
encrypted database of a processing server that does not store personally
identifiable information (PII), entity information from a demographic
tracking agency associated with a plurality of entities," wherein "the entity
information is non-personally identifiable." Appellant's Specification
provides that "[p Jersonally identifiable information (PII) may be information
that may be used, alone or in conjunction with other sources, to uniquely
identify a single individual (e.g., the customer 102)." See Spec. ,-J 23
(emphasis added). The Specification further provides "[i]nformation that
may be considered personally identifiable may be defined by a third party,
such as a governmental agency ... , a non-governmental organization ( e.g.,
the Electronic Frontier Foundation), industry custom, consumers ( e.g.,
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through consumer surveys, contracts, etc.), codified laws, regulations, or
statutes, etc." See Spec. ,i 26. The description of PII in Appellant's
Specification does not provide an explicit and exclusive definition of PII;
rather, Appellant's Specification provides a broad description of what may
qualify as PII, indicating that what qualifies as PII may depend on "other
sources." See Spec. ,i 23. For example, the Specification explains that age
and income may or may not qualify as PII. See Spec. ,i,i 25, 46-47, 49, 52.
When an age and income combination does not uniquely identify an
individual, that age and income are not PII; however, when an age and
income combination is "unique in a particular circumstance to ... [a]
consumer," that age and income qualify as PII. See Spec. ,i 25.
Based on Appellant's Specification, the Examiner has broadly
interpreted claim l's information that is not "personally identifiable
information (PII)" and "information [that] is non-personally identifiable" as
encompassing Klein's consumer characteristics. Final Act. 6-7 (citing Klein
,i,i 16, 18, 47, 51); Ans. 3-4. We find the Examiner's interpretation
reasonable and consistent with Appellant's Specification. Particularly,
Klein's consumer characteristics are "any characteristic or combination of
characteristics, including for example demographic, psychographic, and/or
geographic characteristics," such as "age, gender," "income levels,
geographic location, interest in particular topics, and/or the like." See Klein
,i,i 16 (emphasis added), 18, 51. That is, Klein's consumer characteristics
may be any one of the mentioned characteristics, such as gender-that is not
PII because gender does not uniquely identify an individual in Klein's
groups. See Klein ,i,i 24 ( describing groups of randomly selected
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individuals), 45 ( describing groups of males and females), 51 ( describing
groups including "older females, younger males").
The Examiner further finds that Klein's storing "demographic,
psychographic, and/or geographic characteristics" using an event collection
server (105) teaches the claimed storing information in a database of a
"server that does not store ... PII," because Klein's stored characteristics are
not personally identifiable information such as name, address, and social
security numbers (SSNs). Final Act. 3-4, 7, 10 (citing Klein ,i,i 16, 36-39,
45); Ans. 3-4. Appellant argues the Examiner is in error because "Klein
provides no disclosure that suggests restriction on the storage of data such
that no PII is stored therein (i.e., such that only non-PII is stored)." App.
Br. 8.
Appellant's argument is not persuasive because Appellant has not
shown error in the Examiner's finding that Klein's stored characteristics do
not include PII. When, as here, a reference is silent regarding the presence
of a feature (PII storage) excluded from the claim via a negative limitation, it
is reasonable to interpret the reference's silence as to the excluded feature as
teaching that the reference does not include that feature absent persuasive
technical reasoning or evidentiary showing otherwise. Therefore, given
Klein's silence as to the presence of PII (in the stored "demographic,
psychographic, and/or geographic [panelist] characteristics," see Klein ,i 16)
which Appellant's claim 1 substantially excludes via negative limitation, it is
reasonable to shift the burden to Appellant to establish that Klein's stored
characteristics, though silent with regard to the presence of PII, nonetheless
include PII. "[W]hen the PTO shows sound basis for believing that the
products of the applicant and the prior art are the same, the applicant has the
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burden of showing that they are not." In re Spada, 911 F.2d 705, 708 (Fed.
Cir. 1990) ( citation omitted).
We, thus, tum to Appellant's citation of paragraph 48 in Klein which
Appellant relies on to establish that "in Klein, PII must be stored." Reply
Br. 2-3 ( citing Klein ,-J 48). Particularly, Appellant argues an "individual is
identified (PII) for transmission of the selected advertisement [in Klein]"
and "PII must be used for this end result in order for transmission to occur."
Reply Br. 3. We remain unpersuaded by Appellant's arguments because the
addressable consumer information in Klein's paragraph 48 is not the same as
the Examiner's cited non-PII information (i.e., the "demographic,
psychographic, and/or geographic [panelist] characteristics," see Klein ,-J 16).
Klein discloses that non-PII characteristics of panelists 103 (such as
panelists' gender) are collected by event collection server 105 and "a storage
device" for panelist data 106 (see Klein, ,-J,-J 38, 40, 55, and Fig. 1), while
addressable consumer information for end consumers 111 is in "data store
109" (see Klein, ,-J 47 and Fig. 1). Appellant has not established that Klein's
server and database 105, 106 storing panelists' non-PI! characteristics also
store "PII[] for transmission of the selected advertisement [ to end
consumers]." See Reply Br. 3.
Accordingly, we agree with the Examiner that Klein teaches and
suggests electronically storing, in a database of a processing server that does
not store PII, entity information that is non-personally identifiable, as recited
in claim 1.
We are also unpersuaded by Appellant's argument that "[t]here is
nothing in Klein to suggest that the database is encrypted'' as recited in claim
1. App. Br. 10 ( emphasis added). As recognized by the Examiner, "the
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claim language is very broad in merely describing the database to be an
encrypted database, with no additional detail regarding how the encryption
affects the overall invention." Ans. 4. That is, claim 1 broadly requires
storing the information "in an encrypted database," and we agree with the
Examiner that Klein teaches or at least suggests that the database storing
entity information could be encrypted. Ans. 3-4; Final Act. 7-8. For
example, Klein teaches that "[ a ]n electronic device for implementing the
present invention may use an operating system such as, for example,
Microsoft Windows Vista"-which is known, to the ordinary skilled artisan,
to be using encrypted databases. See Klein ,-J 72 ( emphasis added). 3
Appellant further argues Klein does not teach or suggest "without
using PII, generating a plurality of microsegments, wherein each
microsegment includes a subset of the plurality of entities and wherein no
two subsets of the plurality of entities contains a common entity at the
same" as recited in claim 1. App. Br. 12-13; see also Reply Br. 3-4.
However, Appellant's argument has not rebutted the Examiner's specific
findings that Klein generates groups of panelists (microsegments) "based on
any characteristic" such as "demographics[,] age, gender, geography, and the
like." Final Act. 8 (citing Klein ,-J,-J 16, 18, 30-31, 47, 51); Ans. 6. Klein's
panelist groups based on gender (for example) are generated "without using
PII," as claimed. As the Examiner further finds, Klein's panelist groups
based on gender are disjoint because "if an individual is part of a
3 For example, some versions of Windows Vista use "full disk encryption"
and support an "Encrypted File System." See
https://www.cnet.com/news/windows-vista-and-the-secret-of-full-disk-
encryption/ (last accessed April 22, 2019).
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demographic group relating to gender or age ... the individual may only be
associated with one grouping (i.e. either male OR female and/or falling
within only one age bracket: age 0-13 OR age 14-25, for example)." Ans.
6. We agree with the Examiner's findings. Klein's microsegments of older
females and younger males teach the claimed "no two [ microsegments ']
subsets of the plurality of entities contains a common entity at the same
time." See Klein ,-J,-J 45 ( describing "group 10 IA may include panelists 103
having certain characteristics (e.g., older females), while group 101B may
include panelists 103 having different characteristics ( e.g. younger males)"),
51 ( describing groups of "older females, younger males, homeowners,
students, people living in rural areas, or the like").
We therefore agree with the Examiner that Klein teaches and suggests
"without using PII, generating ... a plurality of microsegments, each
microsegment including a subset of the plurality of entities ... wherein no
two subsets of the plurality of entities contains a common entity at the same
time" as recited in claim 1. Final Act. 7-9; Ans. 5-6.
For these reasons, Appellant has not persuaded us of error in the
Examiner's rejection of claim 1. As such, we sustain the Examiner's
obviousness rejection of claim 1, and dependent claims 2, 3, and 5-10,
argued for their dependency. App. Br. 14.
With respect to independent claim 11, Appellant reiterates the same
arguments presented against claim 1. App. Br. 13-14. For the same reasons
discussed, we also sustain the Examiner's obviousness rejection of claim 11,
and dependent claims 12, 13, and 15-20, argued for their dependency. App.
Br. 14.
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OTHER ISSUE
In the event of further prosecution of this application, the Examiner
should evaluate claims 1 and 11 for compliance under 35 U.S.C. § 101 in
light of Alice Corp. v. CLS Bank International, 573 U.S. 208 (2014), and the
USPTO's new Section 101 Memorandum that governs all patent-eligibility
analysis under Alice and section 101 effective as of January 7, 2019. See
2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50,
52, Jan. 7, 2019 ("PTO§ 101 Memorandum").
In Alice, the Supreme Court reiterated the framework set out in Mayo
Collaborative Services v. Prometheus Labs., Inc., 566 U.S. 66 (2012), for
"distinguishing patents that claim ... abstract ideas from those that claim
patent-eligible applications of those concepts." Alice, 573 U.S. at 218.
Assuming that a claim nominally falls within one of the statutory categories
of machine, manufacture, process, or composition of matter, the first step in
the analysis according to Alice is to determine if the claim is directed to a
law of nature, a natural phenomenon, or an abstract idea Uudicial
exceptions). If so, the second step in the Alice analysis is to determine
whether any element or combination of elements in the claim is sufficient to
transform the nature of the claim into a patent eligible application, that is, to
ensure that the claim amounts to significantly more than the judicial
exception.
In the PTO § 101 Memorandum, the PTO has synthesized, for
purposes of clarity, predictability, and consistency, key concepts identified
by the courts as abstract ideas to explain that the "abstract idea" exception
includes the following three groupings:
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( 1) Mathematical
mathematical
calculations;
concepts-mathematical
formulas or equations,
relationships,
mathematical
(2) Mental processes-concepts performed in the human
mind (including an observation, evaluation, judgment,
opinion); and
(3) Certain methods of orgamzmg 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).
PTO§ 101 Memorandum, 84 Fed. Reg. 52. According to the PTO§ 101
Memorandum, "[ c ]laims that do not recite [subject] matter that falls within
these enumerated groupings of abstract ideas should not be treated as
reciting abstract ideas," except in rare circumstances. Even if the claims
recite any one of these three groupings of abstract ideas, these claims are
still not "directed to" a judicial exception (abstract idea), and thus are patent-
eligible, if "the claim as a whole integrates the recited judicial exception into
a practical application of that uudicial] exception." See PTO§ 101
Memorandum, 84 Fed. Reg. 53. "[I]ntegration into a practical application"
requires an additional element or a combination of additional elements in the
claim to apply, rely on, or use the judicial exception in a manner that
imposes a meaningful limit on the judicial exception, such that the claim is
more than a drafting effort designed to monopolize the exception. See PTO
§ 101 Memorandum, 84 Fed. Reg. 53-55.
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For example, limitations that are indicative of "integration into a
practical application" include:
1) Improvements to the functioning of a computer, or to
any other technology or technical field - see MPEP
§ 2106.05(a);
2) Applying the judicial exception with, or by use of, a
particular machine - see MPEP § 2106.05(b);
3) Effecting a transformation or reduction of a particular
article to a different state or thing - see MPEP
§ 2106.05(c); and
4) Applying or using the judicial exception in some other
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(e).
See PTO§ 101 Memorandum, 84 Fed. Reg. 53-55.
In contrast, limitations that are not indicative of "integration into a
practical application" include:
1) Adding the words "apply it" ( or an equivalent) with the
judicial exception, or mere instructions to implement an
abstract idea on a computer, or merely uses a computer
as a tool to perform an abstract idea - see MPEP
§ 2106.05(±);
2) Adding insignificant extra-solution activity to the
judicial exception - see MPEP § 2106.05(g); and
3) Generally linking the use of the judicial exception to a
particular technological environment or field of use -
see MPEP § 2106.05(h).
See PTO§ 101 Memorandum, 84 Fed. Reg. 54-55 ("Prong Two").
Under Step 2A, Prong 1 of the PTO§ 101 Memorandum, we
determine claim 1, and similarly, claim 11, recite a commercial interaction
and fundamental economic practice of performing advertising research,
which is one of certain methods of organizing human activity identified in
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the PTO § 101 Memorandum, and thus an abstract idea. See PTO § 101
Memorandum, 84 Fed. Reg. at 52 (describing an abstract idea category of
"[ c Jertain methods of organizing human activity-fundamental economic
principles or practices (including hedging, insurance, mitigating risk);
commercial or legal interactions (including ... advertising, marketing or
sales activities or behaviors; business relations)").
Particularly, claim 1 ( and similarly, claim 11) recites a method of
analyzing advertising effectiveness, which includes limitations directed to: i)
storing activity information and characteristic information about entities, ii)
generating, without using PII, microsegments including disjoint subsets of
entities, iii) determining test and control audiences including microsegments,
the test audience being exposed to an advertisement of a merchant, and the
control audience not deliberately exposed to the advertisement, iv) analyze
and compare spending behaviors of entities in the test and control audiences,
to determine the effectiveness of the exposure to the advertisement, and v)
report the effectiveness of the exposure to the advertisement to the merchant.
These limitations, under their broadest reasonable interpretation, recite
conducting advertising research to determine impact of ads on consumers'
spending behavior.
As Appellant's Specification states, Appellant's invention relates to
"methods for measuring the effectiveness of advertisements, specifically
measuring advertisement effectiveness by using microsegments as applied to
exposed and unexposed consumers." Spec. ,-J 2. Appellant's invention
"improv[ es] measurement of advertising effectiveness by analyzing actual
financial transaction information for exposed and unexposed consumers,
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while still maintaining the privacy and security of consumer information."
Spec. ,i 5.
The Examiner should evaluate whether Appellant's method for
performing advertising research is a known business activity and a
fundamental economic practice in our system of commerce, similar to other
concepts identified by the courts as abstract ideas. For example, like the risk
hedging in Bilski, the intermediated settlement in Alice, and the delivery of
free content in exchange for viewing ads in Ultramercial, the concept of ad
research for increasing product sales is a fundamental business practice long
prevalent in our system of commerce. See Bilski v. Kappas, 561 U.S. 593,
612 (2010); Alice, 573 U.S. at 215-19; Ultramercial, Inc. v. Hulu, LLC,
772 F.3d 709, 715-16 (Fed. Cir. 2014). Performing advertising research to
determine consumers' interests and improve product sales is also a building
block of a market economy and, like risk hedging and intermediated
settlement, is an "abstract idea" beyond the scope of§ 101. See Alice, 573
U.S. at 219.
In addition, the Examiner should evaluate whether the steps recited in
Appellant's claim 1 are merely receiving, processing, comparing, and
outputting data of a specific content, e.g., activity information of entities and
resulting spending behaviors including entities' financial transaction data.
Information, as such, is intangible, and data analysis and comparisons,
without more, are abstract ideas. See, e.g., Microsoft Corp. v. AT & T Corp.,
550 U.S. 437, 451 n.12 (2007); Alice, 573 U.S. at 217-18; Gottschalk v.
Benson, 409 U.S. 63, 71-72 (1972). "[C]ollecting information, including
when limited to particular content (which does not change its character as
information)," is "within the realm of abstract ideas." Elec. Power Grp.
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LLC v. Alstom S.A., 830 F.3d 1350, 1353-54 (Fed. Cir. 2016); see also
Internet Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1349 (Fed.
Cir. 2015); Digitech Image Techs., LLC v. Elecs.for Imaging, Inc., 758 F.3d
1344, 1351 (Fed. Cir. 2014); CyberSource Corp. v. Retail Decisions, Inc.,
654 F.3d 1366, 1370 (Fed. Cir. 2011).
Under Step 2A, Prong 2 of the PTO§ 101 Memorandum, the
Examiner should evaluate whether claim 1 ( and similarly, claim 11) does not
include additional element(s) that integrate the judicial exception (abstract
idea) into a practical application. See PTO§ 101 Memorandum, 84 Fed.
Reg. at 54-55 ("Prong Two"). For example, Appellant's claimed additional
elements (e.g., processing server, encrypted database, processor, and
communication component) do not: (1) improve the functioning of a
computer or other technology; (2) are not applied with any particular
machine ( except for a generic computer); (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).
For business-centric inventions such as Appellant's invention
involving advertising research, the "integration into a practical application"
prong of the PTO § 101 Memorandum further requires consideration of
whether the claims purport to provide "a technical solution to a technical
problem" as required by the Federal Circuit's precedential decisions in (1)
DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1257 (Fed. Cir.
2014) and (2) Amdocs (Isr.) Ltd. v. Openet Telecom, Inc., 841 F.3d 1288
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(Fed. Cir. 2016). See MPEP § 2106.05(a). Appellant's analysis of
advertising effectiveness, however, does not appear to provide any
"technical solution to a technical problem" as contemplated by the Federal
Circuit inDDR and Amdocs. See MPEP § 2106.05(a).
Thus, the Examiner should evaluate whether claims 1 and 11 are
directed to the abstract idea of performing advertising research.
Further, under Step 2B identified in the PTO§ 1 OJ Memorandum, the
Examiner should evaluate whether claims 1 and 11 do not recite an inventive
concept which transforms the abstract idea into a patent eligible invention.
Under current Federal Circuit precedent, an "inventive concept" under Alice
step 2 can be established by showing, for example, that the patent claims:
(1) provide a technical solution to a technical problem unique
to the Internet, e.g., a "solution ... necessarily rooted in
computer technology in order to overcome a problem
specifically arising in the realm of computer networks"
(see DDR Holdings, 773 F.3d at 1257);
(2) transform the abstract idea into "a particular, practical
application of that abstract idea," e.g., "installation of a
filtering tool at a specific location, remote from the end-
users, with customizable filtering features specific to each
end user" (see BASCOM Glob. Internet Servs., Inc. v.
AT&T Mobility LLC, 827 F.3d 1341, 1352, 1350
(Fed. Cir. 2016)); or
(3) "entail[] an unconventional technological solution ([ e.g.,]
enhancing data in a distributed fashion) to a technological
problem ([ e.g.,] massive record flows [that] previously
required massive databases)" and "improve the
performance of the system itself' (see Amdocs, 841 F .3d
at 1300, 1302).
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Application 13/438,346
Similarly, as recognized by the PTO § 101 Memorandum, an
"inventive concept" under Alice step 2 can also be evaluated based on
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 PTO§ 101 Memorandum, 84 Fed. Reg. at 56.
The Examiner should evaluate whether Appellant's abstract idea of
performing advertising research is not rooted in computer technology, as the
claims in DDR Holdings. Nor does it appear to (1) provide any technical
solution to a technical problem unique to the Internet as required by DDR
Holdings; (2) provide any particular practical application as required by
BASCOM; or (3) entail an unconventional technological solution to a
technological problem as required by Amdocs. Instead, Appellant's claims 1
and 11 recite computer-implemented processing, shown, for example, in
Figures 1-9, to perform the abstract idea, and the claimed generic computer
functions (e.g., input of data/entity information, processing data pertaining to
the entities, and output data including compared spending behaviors). The
Examiner should evaluate whether this is insufficient to transform the nature
of the claims into a patent-eligible application. The use of generic computer
elements such as a processing server, encrypted database, processor, and
communication component do not transform an otherwise abstract idea into
patent-eligible subject matter. As our reviewing court has observed, "after
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Application 13/438,346
Alice, there can remain no doubt: recitation of generic computer limitations
does not make an otherwise ineligible claim patent-eligible." DDR, 773
F.3d at 1256 ( citing Alice, 573 U.S. at 222-23).
We therefore recommend the Examiner evaluate each element of
claims 1 and 11, and of dependent claims 2, 3, 5-10, 12, 13, and 15-20, to
determine whether claims 1-3, 5-13, and 15-20 satisfy both steps outlined
in the PTO§ 101 Memorandum.
CONCLUSION
On the record before us, we conclude Appellant has not demonstrated
the Examiner erred in rejecting claims 1-3, 5-13, and 15-20 under
35 U.S.C. § 103(a).
DECISION
As such, we AFFIRM the Examiner's Final Rejection of claims 1-3,
5-13, and 15-20 under 35 U.S.C. § 103(a).
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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