Ex Parte Wagner

Patent Trial and Appeal Board

Jun 19, 2017

14559084 (P.T.A.B. Jun. 19, 2017)

United States Patent and Trademark Office
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
14/559,084 12/03/2014 John G. Wagner 20004/76249U S 02 3155
81905 7590 06/21/2017
Hanley, Flight & Zimmerman, LLC (Nielsen)
150 S. Wacker Dr. Suite 2200
Chicago, IL 60606
EXAMINER
GURSKI, AMANDA KAREN
ART UNIT PAPER NUMBER
3623
NOTIFICATION DATE DELIVERY MODE
06/21/2017 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):
j flight @ hfzlaw. com
mhanley@hfzlaw.com
docketing@hfzlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOHN G. WAGNER1
Appeal 2016-006890
Application 14/559,084
Technology Center 3600
Before ROBERT E. NAPPI, SCOTT E. BAIN, and
ALEX S. YAP, Administrative Patent Judges.
NAPPI, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) from the
Examiner’s Final Rejection of claims 1, 3 through 6, 8 through 10, 12
through 18, 20 through 22, and 24. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM.
1 Applicant is Nielsen Company.
Appeal 2016-006890
Application 14/559,084
INVENTION
Appellant’s disclosed and claimed invention is directed to a method to
model consumer choices. Abstract. Claim 1 is representative of the
invention and reproduced below.
1. A computer implemented method to calculate a choice
probability, comprising:
adding, with a processor, a set of products having
respondent choice data to a base multinomial logit
(MNL) model, the base MNL model including an item
utility parameter and a price utility parameter
associated with corresponding ones of products in the
set of products;
generating, with the processor, a number of copies
of the base MNL model to form an aggregate model
based on a number of the corresponding ones of
products in the set of products, each one of the number
of copies of the base MNL model exhibiting an effect
of an independence of irrelevant alternatives (HA)
property;
proportionally affecting interrelationships, with the
processor, between dissimilar ones of the number of
products in the set to reduce the effect of the IIA
property by inserting sourcing effect values in the
aggregate model to be subtracted from respective ones
of the item utility parameters, the inserting of the
sourcing effect values generates a product offset value
for respective ones of products in the set of products;
estimating, with the processor, the item utility
parameters of the aggregate model based on the
number of copies of the base MNL model and the
respondent choice data; and
calculating, with the processor, the choice
probability for the corresponding ones of the products
in the set of products based on the estimated item utility
parameters and the price utility parameters.
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Appeal 2016-006890
Application 14/559,084
REJECTION AT ISSUE2
The Examiner has rejected claims 1, 3 through 6, 8 through 10, 12
through 18, 20 through 22, and 24 under 35 U.S.C. § 101 for being directed
to non-statutory subject matter. Final Action 2—3.
ANALYSIS
We have reviewed Appellant’s arguments in the Briefs, the
Examiner’s rejections, and the Examiner’s response to Appellant’s
arguments. Appellant’s arguments have not persuaded us of error in the
Examiner’s determination that the claims recite non-statutory subject matter.
The Supreme Court reiterated the framework set out in Mayo
Collaborative Services, v. Prometheus Labs., Inc., 132 S. Ct. 1289 (2012),
for “distinguishing patents that claim . . . abstract ideas from those that claim
patent-eligible applications of those concepts.” Alice Corp. Pty. Ltd., v. CLS
Bank International, 134 S. Ct. 2347, 2355 (2014). 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
is to determine if the claim is directed to a law of nature, a natural
phenomenon, or an abstract idea (judicial exceptions). If so, the second step
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.
2 Throughout this Decision we refer to the Appeal Brief filed November 16,
2015 (“App. Br.”), Reply Brief filed June 30, 2016 (“Reply Br.”), Final
Office Action mailed July 17, 2015 (“Office Action”), and the Examiner’s
Answer mailed May 3, 2016 (“Answer”).
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Appeal 2016-006890
Application 14/559,084
Claim 1
With respect to the first step of the Alice analysis Appellant does not
argue that independent claim ldoes not encompass an abstract idea. Rather
Appellant argues that “claim 1 does not seek to tie up the alleged abstract
idea of calculating choice probability based on parameters.” App. Br. 11.
Appellant restates the limitations of the claim and concludes there is no
preemption of the abstract idea. App. Br. 12. Reply Br. 2—3.
The Examiner responds to Appellant’s arguments finding that the
claims describe receiving inputs performing a mathematical calculation and
as such are directed to an abstract idea. Answer 3. Further the Examiner
states:
This type of mathematical modeling is an abstract idea that does
not require computer technology because a version of these steps
can exist outside of the computer technology currently claimed
to implement these steps. A user can process mathematical
calculations with only pen to paper actions and/or mental
calculation.
Answer 3. We concur with the Examiner.
We are not persuaded by Appellant’s arguments. The limitations of
the claims, argued by Appellant, when interpreted in light of Appellant’s
Specification are merely restating a mathematical algorithm, and as such the
claim is preempting the use of the mathematical algorithm. Specifically, the
claim recites adding a set of products to a multinomial logit (MNL) model,
which is a step of entering data into a mathematical formula. Appellant’s
Specification Paragraph 29 identifies the Equation 1 as the MNL model.
The step of generating a number of copies to form aggregate model, is the
combination of several of these models into a matrix, where each model is
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Appeal 2016-006890
Application 14/559,084
assigned a weighting set by another mathematical equation. The aggregate
model is shown as Equation 3 in paragraph 32 of Appellant’s Specification
(see also Appellant’s Specification Figure 4, and paragraph 31). The
limitation directed to proportionality affecting interrelationships, is just
adding another term to the mathematical algorithm. See Appellant’s Fig. 5
and Paragraphs 34—39. The steps of estimating and calculating with the
processor are merely steps of performing the calculations using the
mathematical algorithms. Thus, we construe claim 1 as reciting the use of a
mathematical algorithm, and abstract concept.
With respect to the second step of the Alice analysis Appellant argues:
claim 1 recites proportionally affecting interrelationships, with a
processor, between dissimilar ones of a number of products in a
set to reduce an effect of an independence of irrelevant
alternatives property by inserting sourcing effect values in an
aggregate model to be subtracted from respective ones of item
utility parameters, the inserting of the sourcing effect values
generates a product offset value for respective ones of products
in the set of products.
App. Br. 15 (emphasis omitted). Further, Appellant asserts:
This limitation of the MNF model, referred to as an
independence of irrelevant alternatives (IIA) property, prevents
the analyst from conducting a study that reflects real-world
product selection combinations that consumers experience. In
other words, claim 1 solves a problem and improves modeling
technology.
Id. Appellant asserts that the claim limitations directed to the combination
of generating a number of copies of the base model and proportionally
affecting interrelationships are “not routine, well-understood or
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Appeal 2016-006890
Application 14/559,084
conventional.” App. Br. 16. Appellant asserts that “claim 1 improves upon
previous choice modeling techniques by allowing the MNL model to be used
in circumstances where real-world product sets may be considered for
choice probability calculations.” App. Br. 17.
The Examiner finds that claim 1 does not recite significantly more
than the abstract concept as the system merely recites a generic computer
which performs the abstract concept. Answer 3.
We concur with the Examiner. As discussed above, these claims,
when interpreted in light of the Specification, are merely reciting a
mathematical algorithm performed on a computer. Further, we are not
persuaded by Appellant’s argument that the claims are directed to an
“inherently technical problem,” which is tied to computer technology and
improves the computational efficiency of the computing resources is not
persuasive. Reply Br. 3^4. As our reviewing court has recently held, adding
a limitation that the algorithm is performed on a computer, without more
does not render a claim patent eligible. See Dealertrack, Inc. v. Huber, 674
F.3d 1315, 1333 (Fed. Cir. 2012). “To salvage an otherwise patent-
ineligible process, a computer must be integral to the claimed invention,
facilitating the process in a way that a person making the calculations or
computations could not.” Bancorp Services v. Sun Life Assurance Co. of
Canada, 687 F.3d 1266, 1278 (Fed. Cir. 2012). Here, Appellant’s
arguments merely recite limitations of the claim which, when interpreted in
light of the Specification, discuss the mathematical algorithm and not
features, which require a computer to perform the calculations (i.e.,
computational efficiencies would apply to any application of the
mathematical algorithm).
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Appeal 2016-006890
Application 14/559,084
Similarly, Appellant’s arguments that rely upon Enfish v. Microsoft
Corp., 822 F.3d 1327 (Fed. Cir. 2016) on page 7 of the Reply Brief are not
persuasive. The Examiner is not “substituting high level abstraction of her
own making for the language of the claim” as asserted by Appellant. Id.
Rather as discussed above when interpreted in light of Appellant’s
Specification, it is apparent the claim recites a mathematical algorithm and
we do not see claims as directed to a specific improvement to the way the
computer operates (as in Enfish), but rather, the claim recites performing the
mathematical algorithm on a generic computer. Accordingly, Appellant has
not persuaded us that the claim passes the second part of the Alice analysis,
and we sustain the Examiner’s rejection of independent claim 1 and
dependent claims 3 through 6, 8 through 10, grouped with claim 1.
Independent claims 10 and 18
With respect to claims 10 and 18, Appellant states the rejections of
these claims parallels the rejection of claim 1 and as such the rejection fails
the first and second prong of the Alice test for the same reasons as claim 1.
App. Br. 18. As Appellant’s arguments have not persuaded us of error in the
Examiner’s rejection of claim 1, we similarly sustain the Examiner’s
rejection of claims 10, and 12 through 18, 20 through 22, and 24.
DECISION
We affirm the Examiner’s rejection of claims 1, 3 through 6, 8
through 10, 12 through 18, 20 through 22, and 24.
AFFIRMED
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