Ex Parte Zhang et al

Patent Trial and Appeal Board

Aug 29, 2018

12548429 (P.T.A.B. Aug. 29, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO.
12/548,429
146568 7590
Entit Software LLC
500 Westover Drive
#12603
Sanford, NC 27330
FILING DATE FIRST NAMED INVENTOR
08/27/2009 XinZhang
08/31/2018
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.
82257839 7112
EXAMINER
ALVAREZ, RAQUEL
ART UNIT PAPER NUMBER
3688
NOTIFICATION DATE DELIVERY MODE
08/31/2018 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):
software.ip.mail@microfocus.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Exparte XIN ZHANG, HSIU-KHUEM TANG,
ZAINAB JAMAL, and KRISHNA VENKATRAMAN 1
Appeal2017-003615
Application 12/548,429
Technology Center 3600
Before JEAN R. HOMERE, CARL W. WHITEHEAD JR., and
JON M. JURGOV AN, Administrative Patent Judges.
JURGOV AN, Administrative Patent Judge.
DECISION ON APPEAL
Appellants seek review under 35 U.S.C. § 134(a) from the Examiner's
Final Rejection of claims 1-20, constituting the only claims pending in this
application. We have jurisdiction under 35 U.S.C. § 6(b ).
We affirm. 2
1 Appellants identify the real party in interest as Hewlett Packard Enterprise
Development LP. App. Br. 3.
2 Our Decision refers to the Specification ("Spec.") filed August 27, 2009,
the Final Office Action ("Final Act.") mailed August 6, 2015, the Appeal
Brief ("Br.") filed January 6, 2016, and the Examiner's Answer ("Ans.")
mailed November 17, 2016.
Appeal2017-003615
Application 12/548,429
CLAIMED INVENTION
The claims are directed to a computer system executing an on-line
marketing campaign in which data from a first email campaign is applied to
different models to identify attributes predictive of users responding to a
second email campaign. Spec. Abstract. Claim 1, which is representative of
the claimed invention, is reproduced below:
1. A method executed by a computer system in executing an
on-line marketing campaign, the method comprising:
obtaining campaign data that includes campaign
attributes describing content of emails sent in a first email
campaign to users;
obtaining user transaction data that includes user
behavioral attributes describing behavior of the users occurring
prior to the first email campaign;
filtering, by the computer system, the campaign attributes
and the behavioral attributes with a logistic regression model to
generate first predictive attributes;
filtering, by the computer system, the campaign attributes
and the behavioral attributes with a decision tree model to
generate second predictive attributes;
comparing, by the computer system, the first and the
second predictive attributes from the logistic regression model
and the decision tree model, respectively;
identifying, in response to the comparing, a set of
predictive attributes comprising predictive attributes from the
first predictive attributes and the second predictive attributes
that are most accurate in determining which users will respond
to a second email campaign;
selecting, by the computer system, a best model of the
logistic regression model and the decision tree model based on
accuracy of the logistic regression model and the decision tree
model;
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applying, by the computer system, the identified set of
predictive attributes based upon the user behavioral attributes
and the first email campaign to the best model to predict a
probability of users responding to the second email campaign;
and
sending, by the computer system, emails during the
second email campaign to users based upon the predicted
probability of the users responding to the second email
campaign.
App. Br. 28 ("Claims App'x").
REJECTIONS
Claims 1-20 stand rejected under 35 U.S.C. § 101 as directed to non-
statutory subject matter. Final Act. 2-8.
Claims 1 and 3-20 stand rejected under 35 U.S.C. § I03(a) based on
Gutierrez (US 2007/0288298 Al, published December 13, 2007) and Cui
(Geng Cui et al., Model selection for direct marketing: peiformance criteria
and validation methods Vol. 26, No. 3 MARKETING INTELLIGENCE &
PLANNING 275-392 (2008), Emerald Group Publishing Ltd.). Final Act. 8-
14.
ANALYSIS
§ 101 Rejection
Patent eligibility is a question of law that is reviewable de nova.
Dealertrack, Inc. v. Huber, 674 F.3d 1315, 1333 (Fed. Cir. 2012).
Patentable subject matter is defined by 35 U.S.C. § 101, as follows:
[ w ]hoever invents or discovers any new and useful process,
machine, manufacture, or composition of matter, or any new and
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useful improvement thereof, may obtain a patent therefor, subject
to the conditions and requirements of this title.
In interpreting this statute, the Supreme Court emphasizes that patent
protection should not preempt "the basic tools of scientific and technological
work." Gottschalk v. Benson, 409 U.S. 63, 67 (1972); Mayo Collaborative
Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 71 (2012); Alice Corp. Pty.
Ltd. v. CLS Bankint'l, 134 S. Ct. 2347, 2354 (2014). The rationale is that
patents directed to basic building blocks of technology, as opposed to
integrating those building blocks into something more, would not "promote
the progress of science" under the U.S. Constitution, Article I, Section 8,
Clause 8, but instead would impede it. Accordingly, laws of nature, natural
phenomena, and abstract ideas, are not patent-eligible subject matter. Thales
Visionix Inc. v. US., 850 F.3d 1343, 1346 (Fed. Cir. 2017) (citing Alice, 134
S. Ct. at 2354).
The Supreme Court set forth a two-part test for subject matter
eligibility in Alice. 134 S. Ct. at 2355. The first step is to determine
whether the claim is directed to a patent-ineligible concept. Id. (citing
Mayo, 566 U.S. at 76-77). If so, then the eligibility analysis proceeds to the
second step of the Alice/ Mayo test in which we "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, 134 S. Ct. at 2357 (quoting Mayo, 566 U.S. at 72, 79). The "inventive
concept" may be embodied in one or more of the individual claim
limitations or in the ordered combination of the limitations. Alice, 134 S. Ct.
at 2355. The "inventive concept" must be significantly more than the
abstract idea itself, and cannot be simply an instruction to implement or
apply the abstract idea on a computer. Alice, 134 S. Ct. at 2358. "'[W]ell-
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understood, routine, [and] conventional activit[ies]' previously known to the
industry" are insufficient to transform an abstract idea into patent-eligible
subject matter." Alice, 134 S. Ct. at 2359 (citing Mayo, 566 U.S. at 73).
Independent Claims 1, 9, and 15
Turning to the present case, the claims recite methods, computer
readable storage media, and computer systems, and thus ostensibly fall
within the statutory categories of "process," "machine," and "manufacture"
under 35 U.S.C. § 101. We apply the Alice/Mayo test to determine whether
the claims are patent eligible.
In the first step of the Alice/Mayo test, we determine the independent
claims 1, 9, and 15 are directed to the idea of identifying, among
alternatives, the best predictive attributes and model for determining which
users will respond to a marketing campaign.
In analyzing whether such an idea is abstract, our reviewing court has
held that "the decisional mechanism courts now apply is to examine earlier
cases in which a similar or parallel descriptive nature can be seen-what the
cases were about, and which way they were decided .... This is the classic
common law methodology for creating law when a single governing
definitional context is not available." Amdocs (Israel) Ltd. v. Openet
Telecom, Inc., 841 F.3d 1288 (Fed. Cir. 2016).
The case law overwhelmingly establishes the independent claims in
this case are directed to abstract ideas. In OIP Technologies, Inc. v.
Amazon.com, Inc., 788 F.3d 1359 (Fed. Cir. 2015) ("OIP"), the court
determined the claims at issue were directed to the abstract idea of price
optimization in an e-commerce environment. The claims in OIP are similar
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to appealed claims before us because both relate to optimizing or
determining the best attributes to use in an e-commerce environment.
Many other cases decided by our reviewing court also bear similarities
to this case, such as Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709 (Fed. Cir.
2014) (" Ultramercial"), where claims were directed to the abstract idea of
using advertising as an exchange or currency. Ultramericial is similar to
this case in that it involved advertising on the Internet. buySAFE, Inc. v.
Google, Inc., 765 F.3d 1350 (Fed. Cir. 2014) involved claims directed to the
abstract idea of creating familiar commercial arrangements by use of
computers and networks, which is again similar to the present case in finding
commercial relationships in an e-commerce environment. Bascom Global
Internet Services, Inc. v. AT&T Mobility LLC, 827 F.3d 1341 (Fed. Cir.
2016) involved claims directed to abstract idea of filtering content on the
Internet. Similarly, the claims in this case recite filtering of campaign
attributes for email marketing. Intellectual Ventures I LLC v. Symantec
Corp., 838 F.3d 1307 (Fed. Cir. 2016) was directed to the abstract idea of
filtering email, and the filtering in this case likewise pertains to attributes
related to marketing campaign emails. From these precedents, comparing
the facts of these cases with the present one, we conclude the independent
claims in this case are solidly on the side of reciting abstract ideas.
Appellants contend the claims are similar to those in DDR Holdings,
LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014) ("DDR"). App. Br.
17-18. We disagree. The claims in DDR concerned retention of visitors
interested in third-party merchant advertisements on a host website. Upon
click of a third-party advertisement on a host web page, the visitor was
directed to an "outsource provider" incorporating the look and feel of the
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host but providing the visitor an opportunity to purchase products from the
third-party merchant without actually entering the third-party merchant's
website so the host could retain visitor traffic. Id. at 1247--48. In
determining the DDR claims not abstract, the court noted:
these claims stand apart because they do not merely recite the
performance of some business practice known from the pre-
Internet world along with the requirement to perform it on the
Internet. Instead, the claimed solution is necessarily rooted in
computer technology in order to overcome a problem specifically
arising in the realm of computer networks.
Id. at 1247.
The independent claims on appeal do not limit the claimed attributes
or model to anything specifically tied to computer systems configured to
carry out email marketing campaigns, such as attributes like tracking
opening of email, clicking on advertisements in email, etc. (See Spec. 3--4
for examples of email-related attributes.) For example, the claims are
sufficiently broad to encompass activity similar to distribution of direct
mailings or mail order catalogs, instead using emails to distribute the
advertisement content rather than a mail service. (See Spec. 3--4 for
examples of attributes not tied to email marketing such as gender or
previously-purchased products or services.) This is exactly the kind of
"business practice known from the pre-Internet world" that DDR
distinguishes.
Moreover, the claimed attributes and models are not necessarily
linked to a computer system or network for carrying out an email marketing
campaign. Thus, the independent claims are not "rooted in computer [ or
email marketing] technology in order to overcome a problem specifically
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arising in the realm of [ email marketing] computer [ systems or] networks"
per DDR.
Further, marketing through whatever media is a "fundamental
economic practice" identified as abstract in Alice, as the Examiner observes.
Final Act. 4 ( citing Andrew H. Hirschfeld, Preliminary Examination
Instructions in view of the Supreme Court Decision in Alice Corporation
Pty. Ltd. v. CLS Banklnt'l, et al. (June 25, 2014), available at
http://www. uspto. gov /patents/ announce/interim _alice_guidance.j sp ).
Moreover, the claimed "logistic regression model" and "decision tree
model" are mathematical algorithms specifically identified as abstract in
Alice. Spec. 11-13; Alice at 2350.
For all of the foregoing reasons, we determine the independent claims
are directed to the abstract idea of identifying, among alternatives, the best
predictive attributes and model for determining which users will respond to a
marketing campaign.
Turning to step two of Alice/Mayo, we now consider whether the
independent claims recite an "inventive concept" sufficient to transform the
abstract idea into patentable subject matter. We agree with the Examiner
(Ans. 2), as recited, the claims amount to a mere instruction to use email with
known marketing regimes, such as direct mailings or mail order catalogs. The
attributes and models are not defined to include things specific to the context
of email marketing, such as attributes like tracking whether a user opens an
email or responds to the email advertisement or how the recited models are
specifically configured in the email context. Even if such limitations were
present in the claims, "[ s ]imply appending conventional steps, specified at a
high level of generality," to a method already "well known in the art" is not
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"enough " to supply the " 'inventive concept' " needed to make this
transformation. Mayo, supra, at 72, 77, 82. The introduction of a computer
into the claims does not alter the analysis. Neither stating an abstract idea
"while adding the words 'apply it,' "Mayo, supra, at 72, nor limiting the use
of an abstract idea " 'to a particular technological environment,' " Bilski,
supra, at 610-611, is enough for patent eligibility. Stating an abstract idea
while adding the words "apply it with a computer" simply combines those two
steps, with the same deficient result. Wholly generic computer
implementation is not generally the sort of "additional featur[ e ]" that provides
any "practical assurance that the process is more than a drafting effort
designed to monopolize the [abstract idea] itself." Mayo, supra, at 77.
Moreover, as the Examiner observes (Ans. 3), the Specification
describes the computer system to include memory, algorithms, display, and
processing unit (such as a CPU, microprocessor, application-specific
integrated circuit (ASIC), etc.). Spec. 18. As recited, the claims involve
merely generic computer components performing generic functions that do
not in themselves amount to significantly more than the abstract idea as
claimed. See Intellectual Ventures I LLC v. Capital One Financial Corp.,
850 F.3d 1332 (Fed. Cir. 2017) (claims involving processor determined
ineligible); Content Extraction and Transmission LLC v. Wells Fargo Bank,
National Ass'n, 776 F.3d 1343 (Fed. Cir. 2014) (claims reciting memory
determined ineligible); Electric Power Group, LLC v. Alstom S.A., 830 F.3d
1350 (Fed. Cir. 2016) (claims reciting generic computer components and
display devices found ineligible).
We further note that the steps or functions recited in the independent
claims can be carried out manually, as the examples of direct mailings or
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mail order catalogs illustrate. Again, the claims can be viewed as merely
automating what had previously done by hand with the speed advantages
computers are well-known to provide. Automation of manual processes
where the purported improvements come solely from the capabilities of a
general-purpose computer are not sufficient to show an improvement in
computer functionality. Fairwarning IP, LLC v. Iatric Sys., 839 F.3d 1089,
1095 (Fed. Cir. 2016); Credit Acceptance Corp. v. Westlake Services, 859
F.3d 1044, 1055 (Fed. Cir. 2017).
Considering all of the foregoing, and the claims as a whole, we
determine independent claims 1, 9, and 15 are not patent-eligible.
Remaining Claims
No separate arguments are provided for the remaining claims, which
fall with claims 1, 9, and 15. 37 C.F.R. § 4I.37(c)(l)(v).
Claim 1 recites
§ 103 Rejection
Independent Claims 1, 9, and 15
comparing, by the computer system, the first and the
second predictive attributes from the logistic regression model
and the decision tree model, respectively;
identifying, in response to the comparing, a set of predictive
attributes comprising predictive attributes from the first predictive
attributes and the second predictive attributes that are most accurate in
determining which users will respond to a second email campaign.
App. Br. 28 - Claims App'x. Claims 9 and 15 recite similar limitations.
App. Br. 31, 33-34.
Appellants contend these features are not taught by Gutierrez and Cui.
App. Br. 20-25. Specifically, Appellants contend:
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Cui selects a set of attributes derived from only the forward
selection method in logistic regression and uses this same set of
attributes to test the other methods. As such, Cui does not
"generate first predictive attributes," using a logistic regression
model, and "generate second predictive attributes" using any
other method.
App. Br. 23. However, as the Examiner notes, Gutierrez teaches using
"responses" such as "clicked," "opened," and a non-responsive "send" for
multiple campaigns to predict how a user will respond to a campaign given
the responses or non-responses to a previous one, as shown below in
Gutierrez's Figure 5A. Final Act. 9 (citing Gutierrez ,r 61).
C
T A
A M
R p
G A
l
E G
T N
A
CLICK
OPEN
SEND
PREDICTOR
CAMPAIGN B
CLICK OPEN
a b
d e
g h
FIG.5A
SEND
C
f
I
Gutierrez's Figure 5A shows "click," "open," and "send" statuses that are
used to determine probabilities for user response to campaign A given the
user response to campaign B.
Cui teaches use of "competing methods and model selection" including
logistic regression and tree analysis, to classify consumers based on their
probability to purchase from a specific promotion. Cui pp. 275-276. Cui
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uses the term "variable" similarly to the term "status" in Gutierrez or
"predictive attributes" in the claimed invention. Cui p. 285. Putting these
teachings together, we agree with the Examiner the claimed limitations are
taught by the combination of Gutierrez and Cui.
Appellants also argue "Cui cannot reasonably be relied upon to teach
or suggest combining attributes from multiples methods to generate test
attributes." App. Br. 23. The claims do not recite that the first and second
predictive attributes are different from one another. Thus, the claims do not
distinguish over Cui's teaching of using the same ten variables in different
models or methods. See Cui p. 285.
Appellants further argue:
Cui appears to select the attributes generated from the forward
selection method in logistic regression without any
determination of accuracy prior to applying these attributes to the
other methods. As such, Cui likewise falls to teach or suggest
identifying attributes "that are most accurate in determining
which users will respond to a second email campaign," as
presented above.
App. Br. 23. While we agree Cui does not expressly mention determination
of accuracy of attributes prior to application in methods, we also determine a
person of ordinary skill would find it implausible that the ten variables
mentioned in Cui were selected on the basis of their being inaccurate or less
accurate in determining which users will respond to a marketing campaign.
Cui's ten variables3 were selected on some basis, and most likely because
3 Cui's variables include response, recency, frequency of purchase in the last
3 6 months, money spent in the last 3 6 months, cash payment, telephone
order, use of house credit card, average order size, lifetime contacts, and
lifetime orders. Cui p. 285.
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they were determined, at least initially, to be accurate indicators of which
users will respond to a marketing campaign. Thus, we find Appellants'
argument unpersuasive.
Appellants next argue:
Cui still further fails to disclose that results from application of
multiple models or methods are combined and applied to another
model and thus clearly fails to disclose "applying, by the
computer system, the identified set of predictive attributes based
upon the user behavioral attributes and the first email campaign
to the best model to predict a probability of users responding to
the second email campaign" as recited in independent claim 1.
Again, the claims do not recite that the "first" and "second predictive
attributes" are different, or that the "identified set of predictive attributes"
includes members of both the "first" and "second predictive attributes."
Accordingly, the claims do not distinguish over Cui's use of the same ten
variables in different models. Cui pp. 276, 285. Thus, we find Appellants'
argument unpersuasive.
Claims 4 and 20
Claim 4 recites "extracting, by the computer system, at least one of
data relating to a frequency of users visiting a website, and data relating to
money spent by users to purchase a product." App. Br. 29 (Claims App'x).
Claim 20 recites similar features. App. Br. 35 (Claims App'x).
With respect to claims 4 and 20, Appellants argue:
Although Gutierrez, in paragraph [0006], states that, "a person
who responds to an advertisement for a gym, may also be
receptive to advertisements for organic foods," the cited portion
does not suggest determining a "frequency of users purchasing
products, and data relating to money spent by users to purchase
a product." Furthermore, Official Notice that it is "old and well
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known to predict the amount the users will spend or the
frequency that they will visit a website to better target the ads,"
is irrelevant to extracting such data "to predict a probability of
users responding to the second email campaign".
More specifically, predicting an amount users will spend, is not
the same as extracting data to predict a probability of users
responding to an action. As such, claim 4 does not recite that
which the Examiner takes Official Notice.
Contrary to Appellants' argument, the claims do not recite that extracted
data is used to predict a probability of users responding to an action, or,
more generally, what the extracted data is used for. In any case, as the
Examiner finds, Gutierrez teaches an activated status in which the recipient
has opened an e-mail and the browser associated with the recipient has been
directed to a target web site associated with the opened email. Final Act.
11-12 ( citing Gutierrez ,r 17). In other words, Gutierrez teaches recipient
visits to a web site. Cui teaches the ten variables are selected ( extracted)
from 361 possibilities. Cui p. 285. These variables include frequency of
purchase in the last 36 months, and money spent in the last 36 months. Id.
However, the Examiner has not established the combined references
teach or suggest "data relating to a frequency of users visiting a website."
We read the claimed limitation in the conjunctive to require extraction of
"data relating to a frequency of users visiting a website, and data relating to
money spent by users to purchase a product." (Emphasis added.)
Appellants have traversed the Examiner's taking of Official Notice (App.
Br. 26) and the Examiner has not produced a reference that teaches the
claimed limitation (see Final Act. 11-12, Ans. 5). Accordingly, we do not
sustain the rejection of claims 4 and 20. See MPEP § 2144.03 ("If applicant
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adequately traverses the examiner's assertion of official notice, the examiner
must provide documentary evidence in the next Office action if the rejection
is to be maintained. See 37 CPR 1.104(c)(2).").
Remaining Claims
No separate arguments are presented for the remaining claims, which
fall for the reasons stated with respect to the claims from which they depend.
37 C.F.R. § 4I.37(c)(l)(iv).
DECISION
We affirm the Examiner's rejection of claims 1-20 under 35 U.S.C.
§ 101 as directed to non-statutory subject matter.
We affirm the Examiner's rejection of claims 1 and 3, and 5-19 under
35 U.S.C. § 103(a), but reverse the rejection of claims 4 and 20.
Because we have affirmed at least one ground of rejection with
respect to each claim on appeal, the Examiner's decision is affirmed. See
37 C.F.R. § 4I.50(a)(l).
AFFIRMED
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