Michael Sandoval et al.

Patent Trials and Appeals Board

Feb 3, 2020

12392908 - (D) (P.T.A.B. Feb. 3, 2020)

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.
12/392,908 02/25/2009 Michael Sandoval 121175.551C1 9711
157877 7590 02/03/2020
James A. D. White
VLP Law Group
7683 SE 27th Street #145
Mercer Island, WA 98040
EXAMINER
NG, JONATHAN K
ART UNIT PAPER NUMBER
3686
NOTIFICATION DATE DELIVERY MODE
02/03/2020 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):
AWendel@vlplawgroup.com
JWhite@vlplawgroup.com
patents@vlplawgroup.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte MICHAEL SANDOVAL and OLIVER BRUCE DOWNS
____________

Appeal 2018-008664
Application 12/392,908
Technology Center 3600
____________

Before BIBHU R. MOHANTY, CYNTHIA L. MURPHY, and
AMEE A. SHAH, 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 1–38 and 40–46. 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 Veritone, Inc.
Appeal Br. 2.
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CLAIMED SUBJECT MATTER
The Appellant’s claimed invention relates to computing systems and
software for the collection, development, analysis, and use of profile
attributes (Spec., para. 2). Claim 27, reproduced below with the italics
added, is representative of the subject matter on appeal.

27. A method for providing selected content from a provider to an
entity, the method comprising:
storing electronic profiles in profile storage of a profiling
system, each of the electronic profiles including a plurality of
preferences for each respective entity and at least one profile attribute
for a respective entity;
receiving, at the profiling system, information identifying an
entity and search criteria;
accessing selected ones of the plurality of preferences of the
electronic profile associated with the entity, wherein the selected
preferences are based, at least in part, on a context of the receipt of the
search criteria;
computing a degree of at least one of relevance, irrelevance, or
combinations thereof of provider content stored at a provider system,
different from the profiling system, according to the search criteria
and the selected ones of the plurality of preferences of the entity to
provide scoring results to the provider system, wherein the electronic
profile associated with the entity is not directly accessible to the
provider system;
analyzing the scoring results for the provider content; and
providing, by the provider system, selected content to the entity
in accordance with the scoring results.

THE REJECTION
The following rejection is before us for review:
Claims 1–38 and 40–46 are rejected under 35 U.S.C. § 101 as being
directed to non-statutory subject matter.

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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 evidence.2

ANALYSIS
Rejection under 35 U.S.C. § 101
The Appellant argues that the rejection of claim 27 is improper
because the claim is not directed to an abstract idea (Appeal Br. 20–24, 44–
46; Reply Br. 4–8). The Appellant argues further that the claim is
“significantly more” than the alleged abstract idea (Appeal Br. 24–26, 46;
Reply Br. 8–14).
In contrast, the Examiner has determined that the rejection of record is
proper (Final Action 2–10; Ans. 3–11).
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).
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. Alice, 573 U.S. at 217–18 (citing Mayo Collaborative Servs. v.
Prometheus Labs., Inc., 566 U.S. 66, 75–77 (2012)). In accordance with

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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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, 67 (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 water-proof cloth, vulcanizing India
rubber, smelting ores” (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S.
252, 267–68 (1853))); 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
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
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to limit the use of the formula to a particular technological environment.”
Id. (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
(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
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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 at paragraph 2 states that the invention generally
relates to computing systems and software for the collection, development,
analysis, and use of profile attributes. Here, the Examiner has determined
that the claim sets forth “[c]omparing new user information with stored
content information and user profile information and using rules to identify
the relevance of the stored content information with the user profile
information and provide scoring results for the scored content information”
and is an abstract concept similar to “collecting and comparing known
information” (Final Act. 3) (emphasis omitted). We substantially agree with
the Examiner. We determine that the claim sets forth the subject matter in
italics above which describes the concept of matching profiles with search
criteria to compute scoring results to determine which results to provide a
user which is a certain method of organizing human activities, i.e., a judicial
exception. See Electric Power Group, LLC v. Alstom S.A., 830 F.3d 1350
(Fed. Cir. 2016) where collecting information, analyzing it, and displaying
results from certain results of the collection and analysis was held to be an
abstract idea. Courts have also found claims directed to collecting,
recognizing, and storing data in a computer memory to be directed to an
abstract idea. Content Extraction and Transmission LLC v. Wells Fargo
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Bank, National Association, 776 F.3d 1343 (Fed. Cir. 2014). A system, like
the claimed system, that implements “a process that employs mathematical
algorithms to manipulate existing information to generate additional
information is not patent eligible.” Digitech Image Techs, LLC v. Elecs. for
Imaging, Inc., 758 F.3d 1344, 1351 (Fed. Cir. 2014). In Intellectual
Ventures I LLC v. Capital One Bank (USA), 792 F.3d 1363, 1369 (Fed. Cir.
2015), tailoring content on a website based on a user’s location and time of
day was held to be a fundamental economic practice and directed to an
abstract idea. Thus, we determine that the claim relates to the judicial
exception 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
particular 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 27 the steps of [1] “storing electronic profiles,”
[2] “receiving . . . information identifying an entity and search criteria,”
[3] “accessing selected ones of the plurality of preferences of the electronic
profile associated with the entity,” [4] “computing a degree of at least one of
relevance, irrelevance, or combinations thereof of provider content stored at
a provider system,” [5] “analyzing the scoring results for the provider
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content,” and [6] “providing . . . selected content to the entity in accordance
with the scoring results” are merely steps performed by a generic computer
that do not improve computer functionality. That is, these recited steps [1]–
[6] “do not . . . purport to improve the functioning of the computer itself” but
are merely generic functions performed by a conventional processor. Alice,
573 U.S. at 255. Likewise, these same steps [1]–[6] 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]–[6] 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]–[6] 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).
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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.
Considering the claim both individually and as an ordered combination fails
to add subject matter beyond the judicial exception that is not well-
understood, routine, and conventional in the field. Rather the 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 paragraphs 26–31 for example, describes using conventional computer
components such as a processor, memory, cell phone, and personal computer
in a conventional manner. The claim specifically includes recitations for
computers to implement the method, but these 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. Here, the claim has not
been shown to be “significantly more” than the abstract idea.
The Appellant at page 21 of the Appeal Brief and page 6 of the Reply
Brief has also cited to McRO, Inc. v. Bandai Namco Games America Inc.,
837 F.3d 1299 (Fed. Cir. 2016), but the claims in that case are distinguished
from this case in being directed to rules for lip sync and facial expression
animation.
For these above reasons the rejection of claim 27 is sustained. The
remaining independent claims are directed to similar subject matter for
which similar arguments have been presented and the rejection of these
claims is sustained as well.
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With respect to claims 7, 24, 25, 37, 40–42, 44, 46, the Appellant
argues that specific limitations in each claim improve the operation of the
computing systems (Appeal Br. 27, 33, 35, 39, 42, 44, 46, 47; Reply Br. 15,
16). We have reviewed these arguments but determine that these claims are
substantially similar in scope to claim 27 as addressed above and the
rejection of these claims is sustained. Here, the separately argued claim
limitations are conventional computer operations and fail to transform the
abstract nature of the claim into “significantly more.” For example, in claim
24, providing access to multiple content items in the manner claimed is
considered to be a conventional computer operation and fails to transform
the abstract nature of the claim. Similarly in claim 45, having an interface
configured to communicate with a profiling system is conventional computer
operation and fails to transform the abstract nature of the claim. In claim 46,
the claim limitations drawn to access if “permissions” are met is also
considered a conventional computer operation and fails to transform the
abstract nature of the claim.
The Appellant has provided the same arguments for the remaining
claims which are drawn to similar subject matter as claim 27 addressed
above and the rejection of these claims is sustained for the same reasons
given above.

CONCLUSIONS OF LAW
We conclude that Appellant has not shown that the Examiner erred in
rejecting claims 1–38 and 40–46 under 35 U.S.C. § 101.

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DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–38, 40–
46
101 Eligibility 1–38, 40–46

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