NICE LTD.

Patent Trials and Appeals Board

Oct 14, 2021

2021002766 (P.T.A.B. Oct. 14, 2021)

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.
15/294,866 10/17/2016 Tomer RAM P-80391-US 2757
49443 7590 10/14/2021
Pearl Cohen Zedek Latzer Baratz LLP
7 Times Square, 19th Floor
New York, NY 10036
EXAMINER
NETZLOFF, ERIC R
ART UNIT PAPER NUMBER
3688
NOTIFICATION DATE DELIVERY MODE
10/14/2021 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):
Arch-USPTO@PearlCohen.com
USPTO@PearlCohen.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte TOMER RAM, MOSHE HADAD, and OFIR VENTURA
____________

Appeal 2021-002766
Application 15/294,8661
Technology Center 3600
____________

Before JAMES P. CALVE, NINA L. MEDLOCK, and
BRUCE T. WIEDER, Administrative Patent Judges.

WIEDER, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from the
Examiner’s rejection of claims 1, 3–7, 10, 11, and 13–20. We have
jurisdiction under 35 U.S.C. § 6(b). An oral hearing was held
September 30, 2021.
We REVERSE.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies the real party in interest as NICE
LTD. (Appeal Br. 1.)
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CLAIMED SUBJECT MATTER
Appellant’s invention relates to “serving offers to individuals, for
example via the internet to users of web browsers.” (Spec. ¶ 1.)
Claims 1, 10, and 16 are the independent claims on appeal. Claim 1 is
illustrative. It recites:
1. A method of selecting one or more offers to be served to a
respondent from a set of offers having multiple characteristics,
wherein each characteristic has more than one possible value, at
least one characteristic corresponding to a location, the method
being performed using one or more processors in a computing
system, wherein the method of selecting comprises:
at a hardware-based website host server operating at least
one processor of the processors serving one or more offers to a
respondent device operating a processor;
collecting response data relating to the offers at the
website host server and transmitting the response data to a
hardware-based decision server operating at least one processor
of the processors;
receiving at the decision server, from the website host
server, a request to score some or all of the offers against a set of
criteria;
in response to the request:
performing in real time a series of at least three successive
scoring operations, wherein:
each scoring operation of the series of successive
scoring operations is performed by a decision engine
executed by the decision server and comprises
determining respective scores for different possible values
of one of the multiple characteristics, three or more
decision engines forming a linked decision engine;
each of the at least three scoring operations is
carried out according to a respective reinforcement
machine learning model including one or more variables
and modified by response data, wherein each scoring
operation comprises selecting the value for one of the
multiple characteristics having the highest score and
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wherein the selected value is said result of at least one
previous scoring operation used as a variable in one or
more subsequent scoring operations; the location
characteristic determining a location on a computer for the
offer;
the one or more variables of the reinforcement
machine learning model for at least a second scoring
operation and any scoring operations subsequent to the
second operation include scores for all characteristics
scored in previous scoring operations; and
a machine learning model for at least a second
scoring operation and any scoring operations subsequent
to the second operation scoring an additional characteristic
not scored in previous scoring operations;
using the determined scores to select in real time one or
more offers from the set of offers, the one or more offers being
in the form of a web banner in a web page or a web page; and
serving the selected one or more offers to the respondent device.

REJECTION
Claims 1, 3–7, 10, 11, and 13–20 are rejected under 35 U.S.C. § 101
as directed to a judicial exception without significantly more.

ANALYSIS
“Whoever invents or discovers any new and useful process, machine,
manufacture, or composition of matter, or any new and useful improvement
thereof, may obtain a patent therefor, subject to the conditions and
requirements of this title.” 35 U.S.C. § 101. Section 101, however,
“contains an important implicit exception: Laws of nature, natural
phenomena, and abstract ideas are not patentable.” Alice Corp. v. CLS Bank
Int’l, 573 U.S. 208, 216 (2014) (quoting Ass’n for Molecular Pathology v.
Myriad Genetics, Inc., 569 U.S. 576, 589 (2013)).
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Alice applies a two-step framework, earlier set out in Mayo
Collaborative Services v. Prometheus Laboratories, Inc., 566 U.S. 66
(2012), “for distinguishing patents that claim laws of nature, natural
phenomena, and abstract ideas from those that claim patent-eligible
applications of those concepts.” Alice, 573 U.S. at 217.
Under the two-step framework, it must first be determined if “the
claims at issue are directed to a patent-ineligible concept.” Id. at 218. If the
claims are determined to be directed to a patent-ineligible concept, e.g., an
abstract idea, then the second step of the framework is applied to determine
if “the elements of the claim . . . contain[] an ‘ “inventive concept” ’
sufficient to ‘transform’ the claimed abstract idea into a patent-eligible
application.” Id. at 221 (citing Mayo, 566 U.S. at 72–73, 79).
With regard to step one of the Alice framework, we apply a “directed
to” two-prong test to: 1) evaluate whether the claim recites a judicial
exception, and 2) if the claim recites a judicial exception, 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 USPTO, 2019 Revised Patent Subject Matter Eligibility
Guidance, 84 Fed. Reg. 50, 54 (Jan. 7, 2019) (hereinafter “2019 Guidance”).
The Examiner determines that claim 1 “describe[s] selecting offers
using scoring operations or models based at least partially on collected prior
response data, which is clearly a business relationship that organizes activity
between an offer provider and a user that receives the offer, such as the
relationship between an advertiser and potential customer.” (Non-Final
Action 9.) Therefore, the Examiner determines that claim 1 recites the
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abstract idea of certain methods of organizing human activity. (Id.) The
Examiner also determines that the claim steps of “selecting the highest score
and using the determined scores to select one or more offers” recite the
abstract idea of mental processes, and that “the scoring operations describe
mathematical concepts that include mathematical relationships.”
(Answer 10.)
Appellant argues that “claim 1 includes a method of selecting offers,
to be served to a respondent . . . from a set of offers having multiple
characteristics.” (Appeal Br. 1 (citing Spec. ¶ 32).) Appellant argues that
“claim 1 relies on an improved machine learning tool, and improves the
technology of reinforcement machine learning by using this technology in a
new manner. Claim 1 creates a new machine learning tool by combining
other machine learning tools.” (Id. at 4.)
Under step one of the Alice framework, we “look at the ‘focus of the
claimed advance over the prior art’ to determine if the claim’s ‘character as a
whole’ is directed to excluded subject matter.” Affinity Labs of Texas, LLC
v. DIRECTV, LLC, 838 F.3d 1253, 1257 (Fed. Cir. 2016) (quoting Elec.
Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016)).
The “directed to” inquiry . . . cannot simply ask whether the
claims involve a patent-ineligible concept, because essentially
every routinely patent-eligible claim involving physical products
and actions involves a law of nature and/or natural phenomenon
. . . . Rather, the “directed to” inquiry applies a stage-one filter
to claims, considered in light of the specification, based on
whether “their character as a whole is directed to excluded
subject matter.” Internet Patents Corp. v. Active Network, Inc.,
790 F.3d 1343, 1346 (Fed. Cir. 2015).
Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016). In
other words, the first step of the Alice framework “asks whether the focus of
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the claims is on the specific asserted improvement in [the relevant
technology] or, instead, on a process that qualifies as an ‘abstract idea’ for
which computers are invoked merely as a tool.” Id. at 1335–36; see also
2019 Guidance at 54–55.
The Specification provides evidence as to what the claimed invention
is directed. In this case, the Specification discloses that the invention relates
to “serving offers to individuals, for example via the internet to users of web
browsers.” (Spec. ¶ 1.) Claim 1 provides further evidence. Claim 1 recites
“[a] method of selecting one or more offers to be served to a respondent . . .
the method of selecting comprises:” “collecting response data relating to the
offers at the website host server and transmitting the response data to a . . .
decision server,” “receiving at the decision server . . . a request to score
some or all of the offers,” “in response to the request: performing . . . at
least three successive scoring operations,” “using the determined scores to
select . . . one or more offers,” “and serving the selected one or more offers
to the respondent device.”
In short, the claim limitations recite collecting data, transmitting data,
receiving data, analyzing/selecting data, and serving/presenting data.
Collecting data, transmitting data, receiving data, analyzing data, and
presenting data have been determined to be directed to an abstract idea. See,
e.g., FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1093–94 (Fed.
Cir. 2016) (determining “that the ‘realm of abstract ideas’ includes
‘collecting information, including when limited to particular content’” as
well as analyzing and presenting information), Content Extraction and
Transmission LLC v. Wells Fargo Bank, Nat’l Ass’n, 776 F.3d 1343, 1347
(Fed. Cir. 2014) (treating as an abstract idea “1) collecting data,
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2) recognizing certain data within the collected data set, and 3) storing that
recognized data”), Cyberfone Sys., L.L.C. v. CNN Interactive Grp., Inc., 558
F. App’x 988, 992 (Fed. Cir. 2014) (claims directed to organizing, storing,
and transmitting information determined to be directed to an abstract idea).
Claim 1 recites “the method being performed using one or more
processors in a computing system,” a “website host server operating at least
one processor of the processors,” “a respondent device,”2 and a “decision
server operating at least one processor of the processors.” Claim 1 does not,
however, recite how the website host server collects response data, how
response data are transmitted to the decision server, how the request is
received at the decision server, or how the offers are served to the
respondent device. These steps describe the functional result of providing
one or more offers by collecting, transmitting, receiving, and serving one or
more offers, “with insufficient detail for how [it is accomplished].”
Intellectual Ventures I LLC v. Capital One Fin. Corp., 850 F.3d 1332, 1342
(Fed. Cir. 2017).
With regard to the step of performing scoring operations, i.e., the
analyzing step, claim 1 recites, in relevant part, that “each scoring operation
of the series of successive scoring operations is performed by a decision
engine,” that each “scoring operation is carried out according to a respective
reinforcement machine learning model,” and that “at least a second scoring
operation . . . include[s] scores for all characteristics scored in previous

2 Claim 1 recites “a respondent device operating a processor.” Applying a
broadest reasonable interpretation, we interpret this reference to “a
processor” as not being one of the “one or more processors in a computing
system.”
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scoring operations.” Appellant argues that this is “a new way of organizing
reinforcement machine learning models and organizing input to these
models is an improvement to the technology of organizing reinforcement
machine learning.” (Appeal Br. 9.) Appellant argues that
the technology of reinforcement machine learning is improved
by the claims which allow the claimed reinforcement machine
learning model to learn even faster (reinforcement machine
learning models operate by learning from the results of their
activity, incorporating the learning to improve future action).
Fig 10 of the Application as filed shows the improvement to such
technology that can be provided by the limitations of
independent claim 1.
(Id.)
The inquiry as to whether the claims are directed to an abstract idea
“often turns on whether the claims focus on ‘the specific asserted
improvement in computer capabilities . . . or, instead, on a process that
qualifies as an “abstract idea” for which computers are invoked merely as a
tool.’” Finjan, Inc. v. Blue Coat Sys., Inc., 879 F.3d 1299, 1303 (Fed.
Cir. 2018) (quoting Enfish, LLC, 822 F.3d at 1335–36). Here, the
computing devices, i.e., the generically recited “one or more processors in a
computing system,” “website host server operating at least one processor of
the processors,” “respondent device,” and “decision server operating at least
one processor of the processors” are invoked merely as tools performing the
generic computer functions of collecting data, transmitting data, receiving
data, analyzing/selecting data, and serving/presenting data.
The collecting and receiving steps are simply data gathering steps.
The transmitting and serving steps are simply data sending steps. And the
performing step simply applies an algorithm to the data. Limitations
describing the nature of the data and source do not alter this. See Intellectual
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Ventures I LLC, 850 F.3d at 1342. The recited steps of claim 1 do not
improve the operation of the computing devices themselves.
“As many cases make clear, even if a process of collecting and
analyzing information is ‘limited to particular content’ or a particular
‘source,’ that limitation does not make the collection and analysis other than
abstract.” SAP Am., Inc. v. InvestPic, LLC, 898 F.3d 1161, 1168 (Fed.
Cir. 2018). The “character of [the] information simply invokes a separate
category of abstract ideas.” Id. Moreover, “[a] claim does not cease to be
abstract for section 101 purposes simply because the claim confines the
abstract idea to a particular technological environment in order to effectuate
a real-world benefit.” In re Mohapatra, 842 F. App’x 635, 638 (Fed.
Cir. 2021).
As discussed above, the Examiner identifies claim 1 as reciting “a
business relationship that organizes activity between an offer provider and a
user that receives the offer,” and thus, the abstract idea of certain methods of
organizing human activity. (Non-Final Action 9.) We agree that collecting
response data related to offers, transmitting that offer-related data, receiving
that offer-related data, analyzing that offer-related data, and serving selected
offers to the respondent device recite relationships between an offer provider
and a user. Whether these are referred to as a business relationship, or
advertising, marketing, or sales activities or behaviors, these fall under the
rubric of commercial or legal interactions, and thus are considered certain
methods of organizing human activity. (See 2019 Guidance at 52; see also
Non-Final Action 9.) We also agree with the Examiner that the performing/
analyzing steps, i.e., performing the series of at least three successive
scoring operations, recite observation, evaluation, and judgment. These are
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concepts performed in the human mind, which are considered mental
processes. (See 2019 Guidance at 52; see also Answer 10.)
We do not find any indication in the Specification that the claimed
invention effects a transformation or reduction of a particular article to a
different state or thing. Nor do we find anything of record that attributes an
improvement in computer technology or functionality to the claimed
invention or that otherwise indicates that the claimed invention “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 2019
Guidance at 54–55.)
In view of the foregoing, under prong one of the two-prong test in the
2019 Guidance, claim 1 recites abstract ideas, i.e., certain methods of
organizing human activity and mental processes; and, under prong two,
additional elements in claim 1 do not “apply, rely on, or use 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 2019 Guidance at 54.) As such,
under step one of the Alice framework, claim 1 is directed to an abstract
idea, and we move to step two.
Step two of the Alice framework has been described “as a 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.’” Alice, 573 U.S.
at 217–18 (alteration in original) (quoting Mayo, 566 U.S. at 72–73). “The
second step of the Alice test is satisfied when the claim limitations ‘involve
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more than performance of ‘well-understood, routine, [and] conventional
activities previously known to the industry.’” Berkheimer v. HP Inc.,
881 F.3d 1360, 1367 (Fed. Cir. 2018) (brackets in original) (quoting Content
Extraction and Transmission LLC, 776 F.3d at 1347–48). The question of
whether a claim limitation or combination of limitations “is well-understood,
routine and conventional to a skilled artisan in the relevant field is a question
of fact.” Id. at 1368.
Appellant argues:
The Examiner on page 12 of the Examiner’s Answer
asserts that “the claims merely offer an ordered combination of
generic devices being arranged in a manner intended by the
system’s design for the basic function of communicating
information between parties over a network, which does not
confer a practical application.”
However, it is these very claim elements (recited above)
that provide the improvements to technology that the examiner
improperly ignores. These limitations represent a novel
machine learning structure, a linked decision engine using
reinforcement machine learning models, which represent a
marked improvement to technology and integrates any alleged
abstract idea into a practical application.
(Reply Br. 5.)
Taking the claim elements separately, the functions performed in
claim 1 by the generic computer components are purely conventional.
Collecting data, transmitting data, receiving data, analyzing data, and
presenting data are well-understood, routine, and conventional functions
previously known to the industry. See Elec. Power Grp., 830 F.3d at 1356
(The claims “do not include any requirement for performing the claimed
functions of gathering, analyzing, and displaying in real time by use of
anything but entirely conventional, generic technology. The claims
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therefore do not state an arguably inventive concept . . . .”); see also
Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d 1307, 1318 (Fed.
Cir. 2016) (determining receiving, processing, and sending data to be well-
known, generic computer-implemented steps), Versata Dev. Grp., Inc. v.
SAP Am., Inc., 793 F.3d 1306, 1335 (Fed. Cir. 2015) (determining claims
requiring “arranging, storing, retrieving, sorting, eliminating, determining”
to “involve the normal, basic functions of a computer” and to be
“conventional, routine, and well-known”).
Considered as an ordered combination, we address whether the recited
arrangement of decision engines carrying out reinforcement machine
learning models was well-understood, routine, and conventional to a skilled
artisan at the time the present application was filed. See Berkheimer,
881 F.3d at 1367–68; see also Content Extraction and Transmission LLC,
776 F.3d at 1347–48, 2019 Guidance at 56. Here, Appellant argues that the
linked decision engine arrangement represents an improvement in machine
learning tools and reinforcement machine learning (Reply Br. 2–3 (citing
Spec. ¶¶ 93–95, Fig. 10); Appeal Br. 9), and that the arrangement was novel
(Reply Br. 5; see also Appeal Br. 5, 7, 14, Spec. ¶ 5).
We do not see a finding by the Examiner that the combination of
limitations recited in claim 1, and specifically, the arrangement of decision
engines carrying out reinforcement machine learning models, was well-
understood, routine, and conventional to a skilled artisan at the time of
filing. (See, e.g., Answer 7.) We decline to undertake this analysis and
make that finding of fact in the first instance.
Therefore, we will reverse this rejection of claim 1. Independent
claims 10 and 16 include similar language and for similar reasons, we will
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also reverse the rejection of claim 10 and 16, and dependent claims 3–7, 11,
13–15, and 17–20.

CONCLUSION
The Examiner’s rejection of claims 1, 3–7, 10, 11, and 13–20 under
35 U.S.C. § 101 is reversed.
Specifically:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1, 3–7,
10, 11,
13–20
101 Eligibility 1, 3–7,
10, 11,
13–20

REVERSED