Gupta, Niraj

Patent Trials and Appeals Board

Nov 27, 2019

14048589 - (D) (P.T.A.B. Nov. 27, 2019)

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.
14/048,589 10/08/2013 Niraj Gupta 20030.611 9721
119741 7590 11/27/2019
Keller Jolley Preece / Adobe
1010 North 500 East, Suite 210
North Salt Lake, UT 84054
EXAMINER
JESSEN, DEREK
ART UNIT PAPER NUMBER
3622
NOTIFICATION DATE DELIVERY MODE
11/27/2019 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):
docketing@kjpip.com
gjolley@kjpip.com
ljohnson@kjpip.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte NIRAJ GUPTA
____________

Appeal 2018-008005
Application 14/048,589
Technology Center 3600
____________

Before BIBHU R. MOHANTY, BRUCE T. WIEDER, and
KENNETH G. SCHOPFER, Administrative Patent Judges.

MOHANTY, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–20. We have jurisdiction under
35 U.S.C. § 6(b).

SUMMARY OF THE DECISION
We AFFIRM.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies the real party in interest as Adobe Systems
Incorporated. Appeal Br. 3.
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CLAIMED SUBJECT MATTER
The Appellant’s claimed invention relates to a method and apparatus
for determining brand awareness before dismissing a video advertisement
(Spec., para. 1). Claim 1, reproduced below with emphasis added, is
representative of the subject matter on appeal.

1. A computer implemented method comprising:
accessing brand awareness information files comprising brand
awareness information associated with advertising content for a
viewer, wherein the brand awareness information comprises
indications whether the viewer has correctly answered test questions
associated with brands in the advertising content;
selecting an advertisement for which the viewer has not
previously shown brand awareness based on an accessed brand
awareness information file associated with the advertisement not
including an indication that the viewer has correctly answered one or
more test questions associated with the brand in the selected
advertisement;
receiving video content, the selected advertisement, and a test
question, wherein the test question tests brand awareness of the
selected advertisement;
playing the selected advertisement within a graphical user
interface;
presenting the test question within the graphical user interface;
receiving, via the graphical user interface, a selection of an
answer in association with the presented test question;
stopping the selected advertisement when an input is received
that correctly answers the test question; and
playing the video content within the graphical user interface.

THE REJECTIONS
The following rejections are before us for review:
1. Claims 1–20 are rejected under 35 U.S.C. § 101 as being
directed to non-statutory subject matter.
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2. Claims 1–20 are rejected under 35 U.S.C. § 103 as unpatentable
over Simons (US 2010/0228596 A1, published Sep. 9, 2010) and Nyhan (US
7,010,497 B1, issued Mar. 7, 2006).

FINDINGS OF FACT
We have determined that the findings of fact in the Analysis section
below are supported at least by a preponderance of the evidence2.

ANALYSIS
Rejection under 35 U.S.C. § 101
The Appellant argues that the rejection of claim 1 is improper because
the claim is not directed to an abstract idea (Appeal Br. 8–12; Reply Br. 2,
3). The Appellant argues further that the claim is “significantly more” than
the alleged abstract idea (Appeal Br. 12–14; Reply Br. 3, 4).
In contrast, the Examiner has determined that the rejection of record is
proper (Final Action 2–4, 10, 11; Ans. 3-6).
We agree with the Examiner. An invention is patent eligible if it
claims a “new and useful process, machine, manufacture, or composition of
matter.” 35 U.S.C. § 101. 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. E.g., Alice Corp. v. CLS
Bank Int’l, 573 U.S. 208, 216 (2014).

2 See Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988)
(explaining the general evidentiary standard for proceedings before the
Patent Office).
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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. Id. at 217–18 (citing Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 566 U.S. 66, 75–77 (2012)). In accordance with that framework,
we first determine what concept the 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. Kappos, 561 U.S. 593, 611 (2010)
(“Claims 1 and 4 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 (Parker v. Flook, 437 U.S. 584, 594–95 (1978)); and
mental processes (Gottschalk v. Benson, 409 U.S. 63, 79 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as “molding rubber products” (Diamond v. Diehr, 450 U.S. 175, 191
(1981)); “tanning, dyeing, making waterproof cloth, vulcanizing India
rubber, smelting ores” (id. at 187 n.7 (quoting Corning v. Burden, 56 U.S.
252, 267–68 (1854))); and manufacturing flour (Benson, 409 U.S. at 69
(citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
In Diehr, the claim at issue recited a mathematical formula, but the
Supreme Court held that “[a] claim drawn to subject matter otherwise
statutory does not become nonstatutory simply because it uses a
mathematical formula.” Diehr, 450 U.S. at 187; see also id. at 191 (“We
view respondents’ claims as nothing more than a process for molding rubber
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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. (internal 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 formula to a known structure or process may well be
deserving of patent protection.”).
The PTO recently published revised guidance on the application of
§ 101. 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed.
Reg. 50 (Jan. 7, 2019) (“Guidance”). Under the Guidance, we first 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); and
(2) additional elements that integrate the judicial exception into
a practical application, i.e., evaluate whether the claim
“appl[ies], rel[ies] on, or use[s] 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 judicial exception.” (see Guidance, 84 Fed. Reg.
at 54; see also MPEP §§ 2106.05(a)–(c), (e)–(h)).
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
is not “well-understood, routine, conventional” in the field (see
MPEP § 2106.05(d)); or
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(4) simply appends well-understood, routine, conventional
activities previously known to the industry, specified at a high
level of generality, to the judicial exception.
See Guidance.
If the claim is “directed to” an abstract idea, we turn to the second
step of the Alice and Mayo 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.
The Specification states that the invention relates to a method and
apparatus for determining brand awareness before dismissing a video
advertisement (Spec., para. 1). Here, the Examiner has determined that the
claim sets forth a method of collecting information, analyzing it, and
providing certain results of the collection analysis which is an abstract idea
in and of itself (Final Act. 3). We substantially agree with the Examiner.
We determine that the claim limitations presented in italics above recite the
concept of determining advertising based on a particular user’s data which is
a certain method of organizing human activities and fundamental economic
practice in a method of advertising, or a mental process in determining
whether to run an advertisement i.e. a judicial exception. In Intellectual
Ventures I LLC v. Capital One Bank (USA) 792 F.3d 1363, 1370 (Fed. Cir.
2015) it was determined that an advertisement taking into account the time
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of day and tailoring the information presented to the user based on that
information was a fundamental economic practice and an abstract concept.
Here, the claim tailors advertising based on information about the viewer.
Thus, we consider the claim to be directed to a judicial exception as
identified above.
We next determine whether the claim recites additional elements in
the claim to integrate the judicial exception into a practical application. See
Guidance, 84 Fed. Reg. at 54–55. The Revised Guidance references the
MANUAL OF PATENT EXAMINING PROCEDURE (“MPEP”) §§ 2106.05(a)–(c)
and (e)–(h).
Here, the claims do not improve computer functionality, improve
another field of technology, utilize a particular machine, or effect a physical
transformation. Rather, we determine that nothing in the claims imposes a
meaningful limit on the judicial exception, such that the claims are more
than a drafting effort to monopolize the judicial exception.
For example, in claim 1 the steps of [1] “accessing brand awareness
information files”; [2] “selecting an advertisement for which the viewer has
not previously shown brand awareness based on an accessed brand
awareness information file”; [3] “receiving video content, the selected
advertisement, and a test question, wherein the test question tests brand
awareness of the selected advertisement”; [4] “playing the selected
advertisement; [5] “presenting the test question”; [6] “receiving . . . a
selection of an answer in association with the presented test question”;
[7] “stopping the selected advertisement when an input is received that
correctly answers the test question; and playing the video content” are
merely steps performed by a generic computer that do not improve computer
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functionality. That is, these recited steps [1]–[7] “do not purport to improve
the functioning of the computer itself” but are merely generic functions
performed by a conventional processor. Likewise, these same steps [1]–[7]
listed above do not improve the technology of the technical field and merely
use generic computer components and functions to perform the steps. Also,
the recited method steps [1]–[7] above do not require a “particular machine”
and can be utilized with a general purpose computer, and the steps
performed are purely conventional. In this case the general purpose
computer is merely an object on which the method operates in a
conventional manner. Further, the claim as a whole fails to effect any
particular transformation of an article to a different state. The recited steps
[1]–[7] fail to provide meaningful limitations to limit the judicial exception
and rather are mere instructions to apply the method to a generic computer.
Considering the elements of the claim both individually and as “an
ordered combination” the functions performed by the computer system at
each step of the process are purely conventional. Each step of the claimed
method does no more than require a generic computer to perform a generic
computer function. Thus, the claimed elements have not been shown to
integrate the judicial exception into a practical application as set forth in the
Revised Guidance which references the MANUAL OF PATENT EXAMINING
PROCEDURE (“MPEP”) §§ 2106.05(a)–(c) and (e)–(h).
Turning to the second step of the Alice and Mayo framework, we
determine that the claim does not contain an inventive concept sufficient to
“transform” the abstract nature of the claim into a patent-eligible application.
The claim fails to add a specific limitation beyond the judicial exception that
is not well-understood, routine, and conventional in the field. Rather the
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claim uses well-understood, routine, and conventional activities previously
known in the art and they are recited at a high level of generality. The
Specification at paragraph 14 for example describes using conventional
computer components such as a CPU, memory, cache, and input/output
circuits in a conventional manner. The claimed functions of the computer
components are all used in a manner that is well-understood, routine, and
conventional in the field. The Appellant has not shown these claimed
generic computer components, which are used to implement the claimed
method are not well understood, routine, or conventional in the field. The
Appellant has not demonstrated that the computer components described in
the Specification at paragraph 14 for instance are not general purpose
computer components known to perform similar functions in a well-
understood manner. The Specification at paragraph 13 discloses that the
method can be implemented with general purpose computers. Here, the
claim has not been shown to be “significantly more” than the abstract idea.
The Appellant cites to DDR Holdings, LLC v. Hotels.com, L.P., 773
F. 3d 1245 (Fed. Cir. 2014) and argues that the claim is “rooted in computer
technology” (Appeal Br. 10–12). We disagree, as the Appellant has not
shown how the claimed subject matter is rooted in technology given that the
Specification describes only the use of generic computer equipment used in
routine, conventional, and generic manner.
For these above reasons the rejection of claim 1 is sustained. The
Appellant has provided the same arguments for the remaining claims which
are directed to similar subject matter and the rejection of these claims is
sustained for the same reasons given above.

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Rejection under 35 U.S.C. § 103
The Appellant argues that the rejection of claim 1 is improper because
the prior art has not been shown to specifically disclose the claim limitation
for:
selecting an advertisement for which the viewer has not previously
shown brand awareness based on an accessed brand awareness
information file associated with the advertisement not
including an indication that the viewer has correctly answered one or
more test questions associated with the brand in the selected
advertisement

(Appeal Br. 16 (emphases added)).
In contrast, the Examiner has determined that the rejection of record is
proper in view of Simons at Figure 4, and Nyhan at column 6, lines 42–57
and Nyhan at column 7, lines 21–30 (Ans. 6–10).
Simons at Figure 4 does disclose a consumer providing answers to a
question to show brand awareness as shown by the quiz question about
properties related to “Tom’s of Main Body wash”. Nyhan at column 6,
lines 42–57 does disclose using “cookies” to track if a user has viewed an
advertisement.
In KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398 (2007) the Supreme
Court at 418 noted that in an obviousness analysis that “[R]ejections on
obviousness grounds cannot be sustained by mere conclusory statements;
instead, there must be some articulated reasoning with some rational
underpinning to support the legal conclusion of obviousness.” We agree
with the Examiner that the cited references do show, in disparate locations,
the elements of the claim. However, in Simons the consumer quiz for brand
awareness is not shown to determine what advertisement is to be played next
but rather “to price individual advertisements based on consumers’
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responses” (Simons, para. 1). While Nyhan at column 6, lines 42–57 does
show conventional “cookie tracking” to determine what advertisement has
been played, here the cited rejection lacks articulated reasoning with some
rational underpinning without impermissible hindsight sustain the rejection
of record. Here, the cited claim limitation is also required to be placed in a
particular sequence in the claim and the rejection of record fails to provide
articulated reasoning with rational underpinnings to meet the limitations of
the claim.
For this reason, the rejection of claim 1 and its dependent claims is not
sustained.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–20 101 Eligibility 1–20
1–20 103 Simons,
Nyhan/Obviousness
1–20
Overall
Outcome
1–20

TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED