Ex Parte Zenor

Patent Trial and Appeal Board

Nov 16, 2017

12964481 (P.T.A.B. Nov. 16, 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.
12/964,481 12/09/2010 Michael Zenor 20187/461US02 4849
81905 7590 11/20/2017
Hanley, Flight & Zimmerman, LLC (Nielsen)
150 S. Wacker Dr. Suite 2200
Chicago, IL 60606
EXAMINER
CASTRO, ALFONSO
ART UNIT PAPER NUMBER
2421
NOTIFICATION DATE DELIVERY MODE
11/20/2017 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 MICHAEL ZENOR
Appeal 2017-001116
Application 12/964,481
Technology Center 2400
Before JEAN R. HOMERE, ERIC B. CHEN, and KARA L.
SZPONDOWSKI, Administrative Patent Judges.
HOMERE, Administrative Patent Judge.
DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1, 3, 6—9, 12—15, 17, 20-23, 25, and 26, which
constitute all claims pending in this application.1 Claims 2, 4, 5, 10, 16, 18,
19, and 24 have been canceled. Claims App. Br. 2. We have jurisdiction
under 35 U.S.C. § 6(b).
We reverse.
1 Appellant identifies the real party in interest as The Nielsen Company (US)
LLC. App. Br. 2.
Appeal 2017-001116
Application 12/964,481
Introduction
According to Appellant, the claimed subject matter relates to a
method and system for providing targeted advertising to selected consumers.
Spec. 12. In particular, an opportunity calculator (118) utilizing a
collaborative filter analyzes purchase trends (expected consumption vs.
actual consumption, 120, 122) and geodemographic characteristics of a
household (102, 104) to generate an opportunity metric, which is forwarded
to the content provider (106) to select the most appropriate advertisements to
deliver to the household (102, 104) via an advertisement selector (202)
within a head-end system (200). Id. H 19, 25—29, 41—47, Fig. 1. The
advertisement selector (202) evaluates products for which the opportunity
metric is provided to determine a saturation metric for the advertisement
such that the difference between the saturation metric and the opportunity
metric produce a net effectiveness metric indicating that it is cost effective to
provide the advertisement to the household when the effectiveness metric
satisfies a threshold. Id. Tffl 26, 37, Fig. 2.
Representative Claim
Independent claim 1 is representative, and reads as follows:
1. A method to select targeted advertising, comprising:
identifying an advertisement corresponding to a first product;
identifying a saturation metric for the advertisement;
placing a household into a consumer segment based on
geodemographic characteristics of the household and based on
characteristics of the consumer segment;
determining, with a processor, a relationship between purchases of the
first product and purchases of a second product for the consumer
segment;
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Application 12/964,481
determining, with the processor, an expected consumption of the first
product by the household based on the relationship;
determining, with the processor, an opportunity metric by executing a
collaborative filter and based on a quantity difference between the
expected consumption of the first product by the household and actual
consumption of the first product by the household;
determining, with the processor, a net effectiveness metric based on
the saturation metric and the opportunity metric; and
delivering, with the processor, the advertisement to a device
associated with the household via a media transmission when the net
effectiveness metric satisfies a threshold.
Rejection on Appeal
Claims 1, 3, 6—9, 12—15, 17, 20-23, 25, and 26 stand rejected under
35 U.S.C. § 101 as being directed to nonstatutory subject matter. Final Act.
1-16.
ANALYSIS
Appellant argues the Examiner erred in concluding that independent
claim 1 is directed to an abstract idea. App. Br. 7. In particular, Appellant
argues that the Examiner improperly picked isolated phrases taken out of
context from the claim to mischaracterize the claim as being allegedly
directed to a calculation using a mathematical formula. Id. Instead,
Appellant submits that the claim as a whole is directed to a specific technical
improvement to deliver an advertisement to a household via a media
transmission that employs a collaborative filter for determining an
opportunity metric, which is compared to a saturation metric of the
advertisement to determine a net effectiveness metric for the advertisement.
Id. at 12—15. According to Appellant, the claimed invention solves the
problem of delivering the advertisement to the household only when it is
cost effective to do so. Id. at 16. These arguments are persuasive.
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Application 12/964,481
The U.S. Supreme Court provides a two-step test for determining
whether a claim is directed to patent-eligible subject matter under 35 U.S.C.
§ 101. Alice Corp. Pty. Ltd. v. CLS Bank Inti, 134 S. Ct. 2347, 2355 (2014).
In the first step, we determine whether the claims are directed to one or more
judicial exceptions (i.e., law of nature, natural phenomenon, and abstract
ideas) to the four statutory categories of invention. Id. (citations omitted)
(citing Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct.
1289, 1296—97 (2012)) (“Mayo”). In the second step, we “consider the
elements of each claim both individually and ‘as an ordered combination’ to
determine whether the additional elements ‘transform the nature of the
claim’ into a patent-eligible application.” Id. (citing Mayo, 132 S. Ct. at
1297—98). In other words, the second step is to “search for an ‘inventive
concept’—i.e., an element or combination of elements that is ‘sufficient to
ensure that the patent in practice amounts to significantly more than a patent
upon the [ineligible concept] itself.’” Id. (citing Mayo, 132 S. Ct. at 1294).
Appellant’s claimed subject matter pertains to selecting targeted
advertisement for a particular household by utilizing a collaborative filter for
determining whether it is cost effective to deliver the targeted advertisement
to the household. Although the claimed collaborative filter performs certain
mathematical calculations to determine the cost effectiveness, we do not
agree with the Examiner that the claim can be reduced to merely a series of
steps in a mathematical formula for optimizing presentation of
advertisements based on user activity. Ans. 4—5. See Affinity Labs, of
Texas, LLCv. DirectTV, LLC, 838 F.3d 1253, 1257 (Fed. Cir. 2017) (“The
‘abstract idea’ step of the inquiry calls upon us to look at the ‘focus of the
claimed advance over the prior art’ to determine if the claim’s ‘character as a
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Application 12/964,481
whole’ is directed to excluded subject matter.”) Rather, we agree with
Appellant’s argument that the Examiner has too broadly characterized the
claims. SeeEnfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1337 (Fed. Cir.
2016) (“describing the claims at such a high level of abstraction and
untethered from the language of the claims all but ensures that the
exceptions to § 101 swallow the rule.”) As noted in Appellant’s
Specification, unlike conventional collaborative filters, the claimed
collaborative filter is adaptive as it continuously updates the historical
purchase trends of the household to determine the opportunity metric, as
well as the net effectiveness metric. Spec. 45—47. Merely because the
claims include mathematical formulas does not render them abstract. See
Diamond v. Diehr, 450 U.S. 175, 192 (1981) (explaining that claims are
patent eligible “when a claim containing a mathematical formula implements
or applies that formula in a structure or process which when considered as a
whole, is performing a function which the patent laws were designed to
protect.”) We therefore agree with Appellant that albeit the collaborative
filter performs a mathematical computation to determine the opportunity
metric and the effectiveness metric, the disclosed computation is not directed
to a mathematical algorithm per se. App. Br. 12. Rather, the disclosed
computation is an integral part of the assessment made by the collaborative
filter in determining whether the advertisement should be delivered to the
household. Id.
Because Appellant has shown at least one reversible error in the
Examiner’s rejection, we need not reach the merits of Appellant’s remaining
arguments. Accordingly, we do not sustain the Examiner’s non-statutory
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subject matter rejection of claim 1, as well as claims 3—8, 10—15, and 17—21,
which were rejected on the same basis.
DECISION
For the above reasons, we reverse the Examiner’s nonstatutory subject
matter rejection of claims 1, 3, 6—9, 12—15, 17, 20—23, 25, and 26 as set forth
above.
REVERSED
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