Nant Holdings IP, LLC

Patent Trials and Appeals Board

Jul 31, 2020

2019006979 (P.T.A.B. Jul. 31, 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.
14/449,848 08/01/2014 Patrick Soon-Shiong 10077-2004500 1040
157772 7590 07/31/2020
Mauriel Kapouytian Woods LLP
15 W. 26TH STREET
Floor 7
New York, NY 10010
EXAMINER
SHORTER, RASHIDA R
ART UNIT PAPER NUMBER
3681
NOTIFICATION DATE DELIVERY MODE
07/31/2020 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):
docket@mkwllp.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte PATRICK SOON-SHIONG
____________

Appeal 2019-006979
Application 14/449,848
Technology Center 3600
____________

Before BIBHU R. MOHANTY, AMEE A. SHAH, and
ROBERT J. SILVERMAN, 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 1–21. 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 Nant Holdings IP,
LLC. (Appeal Br. 2).
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CLAIMED SUBJECT MATTER
The Appellant’s claimed invention relates to managing a consumer’s
engagement points to provide personalized content to the consumer as the
consumer flows through an expected behavior pattern (Spec., para. 10).
Independent claim 20, reproduced below with the italics added, is
representative of the subject matter on appeal.

20. A method for providing a personalized consumer
engagement experience comprising the steps of:
providing access to an engagement point database,
wherein the engagement point database is configured to store a
plurality of engagement points, the plurality of engagement
points in the engagement point database indexed by one or
more context properties of a context by an indexing schema and
each dimension of the indexing schema represented by at least
one of hash tables, hash values, addresses, or nearest neighbors;
configuring a computing device to operate as an
engagement engine coupled with the engagement point
database;
obtaining, by the engagement engine, consumer behavior
data;
deriving, by the engagement engine, the context from the
consumer behavior data;
acquiring, by the engagement engine, a set of
engagement points from the engagement point database as a
function of the context;
instantiating, by the engagement engine, an expected
behavior pattern by linking engagement points in the set of
engagement points according to a behavior rules set, each
linked engagement point assigned a contextual engagement
point signature;
configuring, by the engagement engine, at least some of
the linked engagement points in the expected behavior pattern
with at least one user interaction interface; and
configuring, by the engagement engine, a content server
to present content via at least one user interaction interface
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upon satisfaction of the contextual engagement point signature
of a corresponding linked engagement point and ranking the
content against a second content based on a determination of at
least one of a Support Vector Machine (SVM) classification or
a Hamming distance.

THE REJECTIONS
The following rejections are before us for review:
1. Claims 1–21 are rejected under 35 U.S.C. § 101 as being
directed to non-statutory subject matter.
2. Claims 1–21 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Ofek (US 2010/0245361 A1, published Sept. 30, 2010)
and Iwamura (US 2014/0086492 A1, published Mar. 27, 2014).

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 20 is improper
because the claim is not directed to an abstract idea (Appeal Br. 11–13;
Reply Br. 5–7). The Appellant argues further that the claim integrates any
alleged abstract idea into a practical application (Appeal Br. 13–15, Reply
Br. 7, 8).

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 contrast, the Examiner has determined that the rejection of record is
proper (Final Action 3–6, 20; Ans. 7–11).
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. 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, 69 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as “molding rubber products” (Diamond v. Diehr, 450 U.S. 175, 192
(1981)); “tanning, dyeing, making waterproof cloth, vulcanizing India
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rubber, smelting ores” (id. at 182 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
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.”).
In January 2019, the 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
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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
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 10 states that the invention generally
relates to managing a consumer’s engagement points to provide personalized
content to the consumer as the consumer flows through an expected behavior
pattern. Here, the Examiner has determined that the claim sets forth a
method of organizing human activity in a human manually determining a
pattern of behavior for a consumer based on received behavior data (Ans. 7).
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We substantially agree with the Examiner. We determine that the claim sets
forth the subject matter in italics above which describes the concept of: [1]
“providing access to an engagement point database”; [2] “configuring a
computing device to operate as an engagement engine coupled with the
engagement point database”; [3] “obtaining . . . consumer behavior data”;
[4] “deriving . . . the context from the consumer behavior data”; [5]
“acquiring . . . a set of engagement points from the engagement point
database as a function of the context”; [6] “instantiating . . . an expected
behavior pattern by linking engagement points in the set of engagement
points according to a behavior rules set”; [7] “configuring . . . at least some
of the linked engagement points in the expected behavior pattern”; and [8]
“configuring, . . . a content server to present content via at least one user
interaction interface upon satisfaction of the contextual engagement point
signature of a corresponding linked engagement point and ranking the
content against a second content based on a determination of at least one of a
Support Vector Machine (SVM) classification or a Hamming distance,”
which is drawn to a method of using consumer behavior data and expected
behavior patterns to configure engagement points which is a certain method
of organizing human activity and fundamental economic practice, or mental
process, i.e. a judicial exception. Courts have 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 Bank, National Association, 776 F.3d 1343 (Fed. Cir. 2014).
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.
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“[A] process that employs mathematical algorithms to manipulate existing
information to generate additional information is not patent eligible.” See
Digitech Image Techs., LLC v. Elecs. for Imaging, Inc., 758 F.3d 1344, 1351
(Fed. Cir. 2014).
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 20, the additional elements beyond the abstract
idea are the recited computing device and content server. These are
described in the Specification as generic computer components (see
Specification at page 21 for example). The claimed functional limitations of
the computing device and content server do not “purport[] to improve the
functioning of the computer itself,” do not improve the technology of the
technical field, and do not require a “particular machine.”
Rather, the limitations are performed using generic computer
components. Further, the claim as a whole fails to effect any particular
transformation of an article to a different state. The recited steps in the
claim fail to provide meaningful limitations to limit the judicial exception.
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In this case, the claim merely uses the claimed computer elements as a tool
to perform the abstract idea.
Considering the elements of claim 20 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.
Considering the limitations of claim 20 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 are recited at a high level of generality. The Specification at
paragraphs 21 and 23 for example describes using conventional computer
components such as computing devices, servers, databases, engines, and
controllers 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. Here, the claimed generic computer components
which are used to implement the claimed method are well understood,
routine, or conventional in the field. The Specification at paragraph 21 for
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instance describes general purpose computer components known to perform
similar functions in a well-understood manner. Here, the claim has not been
shown to be “significantly more” than the abstract idea.
For these above reasons the rejection of claim 20 is sustained. The
Appellant has provided the same arguments for the remaining claims which
are drawn to similar subject matter and the rejection of these claims is
sustained for the same reasons given above.

Rejection under 35 U.S.C. § 103
The Appellant argues that the rejection of independent claim 1 is
improper because the prior art fails to disclose the claim limitation to
“instantiate an expected behavior pattern by linking
engagement points in the set of engagement points according to
a behavior rules set, each linked engagement point assigned a
contextual engagement point signature”
(Appeal Br. 8).
In contrast, the Examiner has determined that the cited claim
limitation is shown by Ofek at paragraph 41 (Ans. 4).
We agree with the Appellant. Here, the cited claim limitation requires
not only to “instantiate an expected behavior pattern by linking engagement
points in the set of engagement points according to a behavior rules set,” but
also that “each linked engagement point [is] assigned a contextual
engagement point signature.” Here, the cited claim limitation that “each
linked engagement point [is] assigned a contextual engagement point
signature” has not been shown by Ofek at paragraph 41. Accordingly, this
rejection is not sustained. The remaining claims contain a similar limitation
and the rejection of these claims is not sustained as well.
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CONCLUSIONS OF LAW
We conclude that Appellant has not shown that the Examiner erred in
rejecting claims 1–21 under 35 U.S.C. § 101.
We conclude that Appellant has shown that the Examiner erred in
rejecting claims 1–21 under 35 U.S.C. § 103(a) as unpatentable over Ofek
and Iwamura.

DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–21 101 Eligibility 1–21
1–21 103 Ofek, Iwamura 1–21
Overall
Outcome
1–21

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