Viacom International Inc.

Patent Trials and Appeals Board

Dec 8, 2020

2020003361 (P.T.A.B. Dec. 8, 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.
15/235,446 08/12/2016 Fabio LUZZI 40205/08301 (MTV-083) 2781
30636 7590 12/08/2020
FAY KAPLUN & MARCIN, LLP
150 BROADWAY, SUITE 702
NEW YORK, NY 10038
EXAMINER
WHITE, DYLAN C
ART UNIT PAPER NUMBER
3683
NOTIFICATION DATE DELIVERY MODE
12/08/2020 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):
mmarcin@fkmiplaw.com
okaplun@fkmiplaw.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte FABIO LUZZI, DIMITRY SLAVIN, and
CAROLINE EPSTEIN
Appeal 2020-003361
Application 15/235,446
Technology Center 3600
Before JILL D. HILL, LEE L. STEPINA, and
ARTHUR M. PESLAK, Administrative Patent Judges.
HILL, 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. See Final Act. 1. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

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 Viacom
International Inc. Appeal Br. 2.
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Application 15/235,446

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BACKGROUND
Appellant’s invention relates to a device, system, and method for
temporal matching survey respondents. Claims 1, 11, and 20 are
independent. Claim 1, reproduced below with emphasis added, is illustrative
of the claimed subject matter:
1. A method, comprising:
in an analysis server:
determining a first respondent included in a first sample
pool for a first timeframe who is absent from a second sample
pool including a plurality of second respondents for a second,
later timeframe;
determining a similarity value between the first respondent
and each of the second respondents; and
generating a link between the first respondent and one of
the second respondents where the similarity value is indicative
of a match.

REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Lee US 2009/0131764 A1 May 21, 2009
Ray US 2017/0034592 A1 Feb. 2, 2017

REJECTIONS
I. Claims 1–20 stand rejected under 35 U.S.C. § 101 as being
directed to an abstract idea without significantly more.
II. Claims 1–6, 9–16, 19, and 20 stand rejected under 35 U.S.C.
§ 102(a)(1) as being anticipated by Lee.
III. Claims 7, 8, 17, and 18 stand rejected under 35 U.S.C. § 103 as
unpatentable over Lee and Ray.
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ANALYSIS
Rejection I; Patent Eligibility
Appellant argues all of the claims together in contesting the rejection
under 35 U.S.C. § 101. Appeal Br. 3–6. We decide the appeal of this
rejection on the basis of claim 1, with claims 2–20 standing or falling with
claim 1. See 37 C.F.R. § 41.37(c)(1)(iv) (permitting the Board to select a
single claim to decide the appeal as to a single ground of rejection of a group
of claims argued together).
Under 35 U.S.C. § 101, an invention is patent-eligible if it claims a
“new and useful process, machine, manufacture, or composition of matter.”
35 U.S.C. § 101. The Supreme Court, however, has long interpreted § 101
to include an implicit exception: “[l]aws of nature, natural phenomena, and
abstract ideas” are not patentable. Alice Corp. v. CLS Bank Int'l, 573 U.S.
208, 216 (2014).
The Supreme Court, in Alice, reiterated the two-step framework
previously set forth 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. The
first step in that analysis is to “determine whether the claims at issue are
directed to one of those patent-ineligible concepts.” Id. If the claims are not
directed to a patent-ineligible concept, e.g., an abstract idea, the inquiry
ends. Otherwise, the inquiry proceeds to the second step where the elements
of the claims are considered “individually and ‘as an ordered combination’
to determine whether there are additional elements [that] ‘transform the
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nature of the claim’ into a patent-eligible application.” Id. (quoting Mayo,
566 U.S. at 79, 78).
In the Final Office Action, the Examiner determined that the claims,
considering all elements both individually and in combination, are directed
to a “commercial interaction,” which “falls within the ‘Certain Methods of
Organizing Human Activity’ grouping of abstract ideas.” Final Act. 3. The
Examiner further determined that any additional elements, or combinations
thereof, amount to no more than a recitation of “computer hardware . . .
recited at a high-level of generality (i.e., as a generic processor performing a
generic computer function)” that “do not integrate the abstract idea into a
practical application because they do not impose any meaningful limits on
practicing the abstract idea.” Id.
Appellant argues that, even if the claims are found to encompass a
commercial interaction, “the claims clearly recite elements that integrate the
purported abstract idea into a practical application of that exception.”
Appeal Br. 4. Specifically, Appellant asserts that “generating a link between
the first respondent and one of the second respondents” is “significantly
more than the purported abstract idea,” and integrates the claimed subject
matter “into a practical application.” Id. at 5.
The Examiner disagrees with Appellant and asserts that the limitation
of “generating a link between the first respondent and one of the second
respondents where the similarity value is indicative of a match” is
“[g]rouping respondents based on [collected] data[, which] is adding
insignificant extra-solution activity to the judicial exception.” Ans. 4 (citing
MPEP § 2106.05(g) (9th ed. rev. 10.2019 June 2020).
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Appellant replies that claim 1 integrates the abstract idea into a
practical application because it solves “a technical [problem] -- i.e., a
reduction in the granularity of viewing behavior data.” Reply Br. 3.
Specifically, Appellant contends that the analysis server of claim 1
“preserves data granularity via the recited link generation between
respondents, which is an inherently practical application and is patentable
subject matter under 35 U.S.C. § 101.” Id. According to Appellant, its
Specification describes a problem with tracking data over time, and like the
claims in Enfish, recites an improved data structure that “enables the
generation of relevant data over a desired time frame,” which according to
Appellant, “is a technical benefit whether or not the hardware executing the
improvement is generic.” Id. at 3–4 (citing Spec. ¶¶ 3, 13–16; see also
Enfish LLC v. Microsoft Corp., 822 F. 3d 1327, 1336 (Fed. Cir. 2016)). In
particular, Appellant contends that claim 1 integrates the abstract idea into a
practical application because it “recites a mechanism to match each of a
plurality of respondents removed from a group to a corresponding most
similar existing respondent to provide a more reliable estimate of
respondent-level changes in viewing behavior over any time interval,
regardless of sample turnover.” Id. at 4 (citing Spec. ¶ 17).
We have reviewed the eligibility of the pending claims through the
lens of the 2019 Subject Matter Guidance, and we are not persuaded that the
Examiner erred in concluding that the pending claims are directed to a
judicial exception without significantly more.
Under that guidance, in conducting step one of the Alice framework,
we first look to whether the claim recites:
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(1) any judicial exceptions, including certain groupings of abstract
ideas (i.e., mathematical concepts, certain methods of organizing human
interactions such as a fundamental economic practice, or mental processes);
and
(2) additional elements that integrate the judicial exception into a
practical application (see MPEP § 2106.05(a)-(c), (e)(h)).
Step 1 -- Statutory Category
Claim 1 recites a method and, therefore, is a process. See Appeal Br.
8 (Claims App.).
Step 2A, Prong 1
The 2019 Subject Matter Guidance identifies three key concepts
identified as abstract ideas: (a) mathematical concepts including
“mathematical relationships, mathematical formulas or equations,
mathematical calculations”; (b) certain methods of organizing human
activity, such as “fundamental economic principles or practices,”
“commercial or legal interactions,” and “managing personal behavior or
relationships or interactions between”; and (c) mental processes including
“observation, evaluation, judgment, [and] opinion.”
Here, Appellant’s Specification discloses that various systems may
track viewing behavior of individuals or households, and the information
generated is used to determine general viewing behavior that is used for
advertising. Spec. ¶ 2. The Specification further discloses that “a problem
with this tracking data is that the respondent sample changes over time and it
is not possible to correlate current respondents with future respondents.” Id.
¶ 3. To address this problem, “the exemplary embodiments provide a
mechanism in which viewing behavior of respondents [is] utilized to prevent
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information loss due to a respondent being removed from a sample pool.”
Id. ¶ 12.
Claim 1 recites, inter alia, an analysis server 1) determining a
similarity value for first and second respondents; and 2) generating a link
between the respondents where the similarity value is indicative of a match.
According to the Specification, claim 1 recites an improved method for
matching survey respondents, because “the viewing behavior of [a] removed
respondent may still be used to provide [marketing] information to the
distributors and/or producers.” Spec. ¶ 12.
An improved method for advertising to survey respondents, as recited
in claim 1, amounts to “commercial or legal interactions (including
agreements in the form of contracts; legal obligations; advertising,
marketing or sales activities or behaviors),” which is one of certain methods
of organizing human activity. See 2019 Subject Matter Guidance at 52.
Such methods of organizing human activity are abstract ideas. Id. Thus,
claim 1 recites an abstract idea, one of the judicial exceptions. See Alice,
573 U.S. at 216. Accordingly, the outcome of our analysis under Step 2A,
Prong 1, requires us to proceed to Step 2A, Prong 2. See 2019 Subject
Matter Guidance.
Step 2A, Prong 2
We next consider whether the claimed method includes additional
elements that integrate the judicial exception into a practical application.
The Examiner finds that the claimed analysis server is computer hardware
that is recited “with a high level of generality,” and “do not integrate the
abstract idea into a practical application because they do not impose any
meaningful limits on practicing the abstract idea.” Ans. 3.
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We agree with the Examiner that the analysis server is recited in a
generic manner. Indeed, we find no indication in Appellant’s Specification,
nor does Appellant direct us to any indication, that the claimed invention is
implemented using other than generic devices. The Specification discloses
that “analysis server 135 may include a processor 205, a memory
arrangement 210, a display device 215, an input/output (I/0) device 220, a
transceiver 225, and other components 230.” Spec. ¶ 24. The other
components include “an audio input device, an audio output device, a
battery, a data acquisition device, ports to electrically connect the media
player 150 to other electronic devices, etc.” Id. The operations (determining
a first respondent, determining a similarity value between the first
respondent and a second respondents; and generating a link between the first
and second respondents) performed by the analysis server are generic
computer functions of generating and identifying data. Thus, the claimed
invention does not improve the functioning of the computer (processor) or
memory . “[A]n improvement to the information stored by a database is not
equivalent to an improvement in the database's functionality.” BSG Tech
LLC v. Buyseasons, Inc., 899 F.3d 1281, 1287-88 (Fed. Cir. 2018). Nor
does the claimed invention use a particular, or special, machine. In other
words, the claims “are not tied to any particular novel machine or apparatus”
capable of rescuing them from the realm of an abstract idea. See
Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 716 (Fed. Cir. 2014). In
addition, we do not see a significant similarity to Enfish because, whereas
Enfish describes a specific improvement to the way computers operate,
claim 1 is based on an improved algorithm for updating respondent
information in which a computer is used in its ordinary capacity. See Spec.
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¶ 25 (“[T]he processor 205 may execute … a chain application 240,”
wherein a link is part of the chain. Spec. ¶ 25, Fig. 5.
In summary, we do not find anything of record, short of attorney
argument, that attributes any improvement in computer technology and/or
functionality to the claimed invention, or otherwise indicates that the
claimed invention integrates the abstract idea into a “practical application,”
as that phrase is used in the USPTO’s “2019 Revised Patent Subject Matter
Eligibility Guidance,” 84 Fed. Reg. 50, 55 (January 7, 2019).
Step 2B
In Step 2B, we determine whether the claim adds a specific limitation,
beyond the judicial exception, that is not “well-understood, routine,
conventional” in the field. See 2019 Subject Matter Guidance. The portion
of claim 1 that is directed to additional elements (e.g. analysis server 135
including a processor, memory etc.) (see Spec. ¶ 24) are generic devices that
do not perform other than well-known, routine, and conventional activity, as
discussed above.
Although claim 1 may limit the recited link between respondents, and,
therefore, would seem to exclude certain other methods of identifying
respondents, we do not agree that claim 1 recites anything significantly more
than the abstract ideas discussed above in Step 2A. In particular, the various
actions recited in claim 1 that differentiate the recited method from other
marketing methods relate to the abstract idea, not to an innovation of the
kind that benefits the claimed subject matter under a Step 2B analysis.
For the above reasons, the recited elements of claim 1, considered
individually and as an ordered combination, do not constitute an “inventive
concept” that transforms independent claim 1 into patent-eligible subject
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matter. See Alice, 573 U.S. at 217. On this record, we affirm the
Examiner’s § 101 rejection of claim 1. Claims 2–20 fall with claim 1.

Rejection II; 35 U.S.C. § 102(a)(1)
In determining that the claims are anticipated by Lee, the Examiner
finds, inter alia, that “the first and second respondents can be in the same
pool [e.g. watching the same programming], or absent from the pool [e.g.
one viewing group has changed to different programming or is no longer
paying attention].” Final Act. 5 (citing Lee ¶ 47).
Appellant argues that Lee analyzes data where users “are all watching
the same media together” and does not analyze “data over time as the
composition of a pool of respondent[’]s changes.” Appeal Br. 7.
Specifically, Appellant argues that Lee measures viewer “reaction to the
media while the media is being viewed and has no relevance to the
monitoring of a pool of viewers over time.” Id.
The Examiner responds that Lee’s “respondents are not limited to
being in a single venue as argued by the Appellant,” and Lee analyzes data
over time. Ans. 5. The Examiner notes that Lee’s “viewers can be viewing
the media instance at the same time or different times.” Id. (citing Lee
¶ 107). According to the Examiner, “[o]ne of skill in the art would
understand the storage of reactions as having the information of former
members and current members as stored reactions of viewers and the basis
of different viewing times is monitoring the pool of viewers over time.” Id.
The Examiner notes that omitting or adjusting data for viewers that are “no
longer watching (e.g. not paying attention, par. 0069-0070)” teaches that “a
first viewer is watching during a first timeframe and the viewer is [not]
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watching during a second later [timeframe] and is therefore not in the group
included in the collected reactions.” Id.
In reply, Appellant argues “there is no process in Lee where a first
sample pool is compared to a second sample pool, with a viewer identified
as having been present in the first pool and not present in the second pool”
as required by claim 1. Reply Br. 6. Appellant asserts that “Lee never
identifies any specific member of a pool that was present in one group and
that is not present in a second group much less identifying any specific
member of the second group that bears any similarity to the missing
member.” Id. at 6–7. According to Appellant, the portions of Lee relied on
by the Examiner relate to data gathered at different times, and then analyzed
and categorized, but “[n]o viewer (respondent) in Lee is determined, e.g.
identified, as being present in a first sample pool and absent from a second
sample pool.” Id. at 7.
Appellant has the better position. The Examiner relies on paragraphs
47, 69, 70, and 107 of Lee. In these paragraphs, Lee discloses that a “set of
viewers 103 hosted at any venue 102 can include a single viewer such that
each of a plurality of viewers 103 may watch the same media instance 101
individually and separately at a venue 102 of his/her own choosing.” Lee
¶ 47. Lee also discloses that because “certain viewer(s) may not be paying
attention to the media instance for its entire duration, … data collected from
a viewer during the time he/she was not looking or focusing on the
screen/monitor displaying the media instance is irrelevant and should be
removed.” Id. ¶ 69. Lee removes non-pertinent data “so that only
statistically pertinent moments and/or moments related to events in the
media instance are transmitted” to the processing module. Id. ¶ 70. Lee
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further discloses that “viewers can be viewing the media instance and the
reactions collected at the same time, or at different times (e.g., viewer 1 is
viewing the media instance at 9 AM while viewer 2 is viewing the media
instance at 3 PM).” Id. ¶ 107.
Although Lee discloses viewers that are watching “individually and
separately” (Lee ¶ 47), the viewers are watching “the same media instance
101” and thus are part of the same “sample pool.” Similarly, viewers
watching at different times are in the same sample pool because they are still
“viewing the [same] media instance,” albeit at different times. Lee ¶ 107.
We understand a “sample pool” to include respondents for “which the data
corresponding to the viewing behavior [is] derived,” for particular shows or
instances. Spec. ¶ 15; see also id. ¶¶ 34, 52. As to Lee’s removal of data,
Lee is only removing part of the data of one viewer, which would leave that
viewer in the sample pool. Alternatively, if all the data from the viewer is
removed, the viewer is not included in the first sample pool, as required by
the claims. Moreover, if the first viewer (respondent) is removed, the
Examiner does not explain adequately how Lee “determin[es] a similarity
value between the first [removed] respondent [from which no data is
transmitted] and each of the second respondents,” as further required by
claim 1. In Lee, “reactions to a [same] media instance from a plurality of
viewers are collected, stored[,] . . . managed[,] . . . analyzed and categorized
into various categories.” Lee ¶ 143. As such, Lee uses data from a single
sample pool, not first and second sample pools, and does not distinguish
between respondents of the pools.
Thus, because the Examiner's finding that Lee “determin[es] a first
respondent included in a first sample pool for a first timeframe who is absent
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from a second sample pool including a plurality of second respondents for a
second, later timeframe” is in error, we do not sustain the anticipation
rejection of claim 1. Independent claims 11 and 20 include a similar
limitation, and we do not sustain the rejection of these claims for the same
reasons. Claims 2–6, 9, 10, 12–16, and 19 depend directly or indirectly from
claim 1 or claim 11, containing all of the limitations thereof. We do not
sustain the rejection of these dependent claims for the same reasons.

Rejection III: Obviousness of Claims 7, 8, 17, and 18
The Examiner's findings regarding Lee are discussed above. The
Examiner does not find that Ray discloses “determining a first respondent
included in a first sample pool for a first timeframe who is absent from a
second sample pool including a plurality of second respondents for a second,
later timeframe.” Thus, for the reasons set forth above, we do not sustain the
pending obviousness rejection.
CONCLUSION
The Examiner’s rejections are affirmed as to patent eligibility, and
reversed as to anticipation and obviousness.
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DECISION SUMMARY
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–20 101 Eligibility 1–20
1–6, 9–16,
19, 20
102(a)(1) Lee 1–6, 9–16,
19, 20
7, 8, 17, 18 103 Lee, Ray 7, 8, 17, 18
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