Anantha Pradeep et al.

Patent Trials and Appeals Board

Sep 24, 2019

12413297 - (D) (P.T.A.B. Sep. 24, 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.
12/413,297 03/27/2009 Anantha Pradeep 20225/032 8765
81905 7590 09/24/2019
Hanley, Flight & Zimmerman, LLC (Nielsen)
150 S. Wacker Dr. Suite 2200
Chicago, IL 60606
EXAMINER
RETTA, YEHDEGA
ART UNIT PAPER NUMBER
3688
NOTIFICATION DATE DELIVERY MODE
09/24/2019 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@hfzlaw.com
jflight@hfzlaw.com
mhanley@hfzlaw.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte ANANTHA PRADEEP, ROBERT T. KNIGHT, and
RAMACHANDRAN GURUMOORTHY
____________

Appeal 2018-002219
Application 12/413,297
Technology Center 3600
____________

Before MURRIEL E. CRAWFORD, JOSEPH A. FISCHETTI, and
TARA L. HUTCHINGS, Administrative Patent Judges.

CRAWFORD, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant1 seeks our review under 35 U.S.C. § 134 of the Examiner’s
final rejection of claims 1–18 and 21–23. We have jurisdiction under 35
U.S.C. § 6(b).
SUMMARY OF 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 THE
NIELSEN COMPANY (US). Appeal Br. 2.
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THE INVENTION
Appellant claims a system for placing stimulus material in video
games. (Spec. ¶ 3, Title).
Claim 1 is representative of the subject matter on appeal.
1. A method for insertion of an advertisement or
entertainment into a video game, comprising:
obtaining first neuro-response data from a player playing
the video game prior to the insertion of the advertisement or
entertainment;
identifying a plurality of candidate locations in the video
game for insertion of the advertisement or entertainment based
on the first neuro-response data;
selecting one of the locations based on one or more
location characteristics and one or more attributes of the
advertisement or entertainment;
inserting the advertisement or entertainment into the
selected location;
obtaining second neuro-response data from a player
playing the video game after the insertion of the advertisement
or entertainment; and
determining an effectiveness of the advertisement or
entertainment based on the second neuro-response data.

THE REJECTION
Claims 1–18 and 21–24 are rejected under 35 U.S.C. § 101 as directed
to a judicial exception without significantly more.

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ANALYSIS
35 U.S.C. § 101 REJECTION
We will sustain the rejection of claims 1–16, 18, 19, and 22 under 35
U.S.C. § 101.
The Supreme Court
set forth a framework for distinguishing patents that claim laws
of nature, natural phenomena, and abstract ideas from those that
claim patent-eligible applications of those concepts. First, . . .
determine whether the claims at issue are directed to one of
those patent-ineligible concepts. If so, . . . then ask, “[w]hat else
is there in the claims before us?” To answer that question, . . .
consider the elements of each claim both individually and “as
an ordered combination” to determine whether the additional
elements “transform the nature of the claim” into a patent-
eligible application. [The Court] described step two of this
analysis 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 Corp. Pty. Ltd. v. CLS Bank Int’l, 573 U.S. 208, 217–218 (2014)
(citing Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66,
72–73 (2012)) (citations omitted).
To perform this test, we must first determine whether the claims at
issue are directed to a patent-ineligible concept. The Federal Circuit has
explained that “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.’” See Enfish, LLC v.
Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016) (quoting Internet
Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1346 (Fed. Cir.
2015)). It asks whether the focus of the claims is on a specific improvement
in relevant technology or on a process that itself qualifies as an “abstract
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idea” for which computers are invoked merely as a tool. See id. at 1335–36.
In so doing we apply a “directed to” two prong test: 1) evaluate
whether the claim recites a judicial exception, and 2) if the claim recites a
judicial exception, evaluate whether the judicial exception is integrated into
a practical application. 2019 Revised Patent Subject Matter Eligibility
Guidance, 84 Fed. Reg. 50–57 (Jan. 7, 2019).
The Examiner determines that the steps of claim 1 of obtaining neuro-
response data, identifying locations, and selecting one of the locations are
abstract ideas similar to concepts identified by the courts. (Final Act. 2).
The Examiner also determined that the claims are also directed to
advertising, marketing and sales activities or behaviors that have been found
to be abstract as it is a certain method of organizing humans. The Examiner
finds that the additional elements claimed are generic computers performing
generic computer functions, without an inventive concept and do not amount
to significantly more than the abstract idea. (Final Act. 3).
The Specification discloses that conventional placement systems, such
as for product placement, often rely on demographic information, statistical
information, and survey-based response collection to determine optimal
locations to place stimulus material, such as a new product, brand image,
video clip, or sound files, etc. (Spec. ¶ 19). The present invention uses
neuro-response measurements to select stimulus locations and stimulus
personalization in video games. (Spec. ¶ 20). Many types of stimulus
material may be placed into video games such as brand images, personalized
messages, advertisements or a purchase offer. (Spec. ¶¶ 22–23). Therefore,
the Specification supports the determinations of the Examiner that the claims
are directed to obtaining neuro-response data, identifying locations, and
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selecting one of the locations and that these steps are similar to concepts
identified by the courts as abstract and that the claims are directed to
advertising, marketing and sales activity.
The claims also support this determination by reciting “obtaining first
neuro-response data,” “identifying a plurality of candidate locations . . .
based on the first neuro-response data,” “selecting one of the locations,”
“inserting the advertisement,” “obtaining second neuro-response data,” and
“determining an effectiveness of the advertisement.” These recitations relate
to obtaining data (first and second neuro-response data), processing data
(identifying a plurality of locations, selecting one of the locations, and
determining the effectiveness of advertisement), and displaying data
(inserting the advertisement). These steps also relate to advertising,
marketing and sales activities or behaviors.
We agree with the Examiner that Appellant’s claim 1 (and the other
pending claims) are directed to patent-ineligible abstract ideas or concepts.
In view of the Guidance, 84 Fed. Reg. 50–57, we clarify and expand the
Examiner's reasoning as follows.
We agree with the Examiner’s findings that the claims recite a
method of organizing human activity, i.e., a fundamental economic practice.
It follows from prior Supreme Court cases, and Gottschalk v. Benson, 409
U.S. 63 (1972), in particular, that the claims at issue here are directed to a
judicial exception. Controlling the behavior of persons concerning
placement of advertisements in a video game is a method of organizing
human behavior, which is not eligible subject matter. See Alice, 573 U.S. at
217–20. Certain methods of organizing human activity such as fundamental
economic practices are judicial exceptions. A method, such as what is
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recited in claim 1, which relate to advertising, marketing or sales activities
or behaviors are related to a fundamental economic practice. Guidance, 84
Fed. Reg. 52.
Also, we find the steps of detailed above related to transmitting,
receiving, processing, and displaying of data constitute “analyzing
information by steps people go through in their minds, or by mathematical
algorithms, without more, as essentially mental processes within the
abstract-idea category.” Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d
1350, 1354 (Fed. Cir. 2016); see also buySAFE, Inc. v. Google, Inc., 765
F.3d 1350, 1355 (Fed. Cir. 2014) (claims directed to certain arrangements
involving contractual relations are directed to abstract ideas).
Thus, we find that the claims recite a judicial exception.
Turning to the second prong of the “directed to test,” claim 1 merely
requires a “video game.” The recitation of the word “video game,” does not
impose “a meaningful limit on the judicial exception, such that the claim is
more than a drafting effort designed to monopolize the judicial exception.”
Guidance, 84 Fed. Reg. 53. We find no indication in the Specification, nor
do Appellant directs us to any indication, that the operations recited in
independent claim 1 invoke any inventive programming, require any
specialized computer hardware or other inventive computer components,
i.e., a particular machine, or that the claimed invention is implemented using
other than generic computer components to perform generic computer
functions. See DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245,
1256 (Fed. Cir. 2014) (“[A]fter Alice, there can remain no doubt: recitation
of generic computer limitations does not make an otherwise ineligible claim
patent-eligible.”). In fact, the Specification discloses that generic
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components are used to play the video game. Spec. ¶26.
We also find no 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, short of attorney
argument, that attributes any improvement in computer technology and/or
functionality to the claimed invention or that otherwise indicates that the
claimed invention integrates the abstract idea into a “practical application,”
as that phrase is used in the revised Guidance. See Guidance, 84 Fed. Reg.
at 55.
In this regard, the recitation does not affect an improvement in the
functioning of a video game or other technology, does not recite a particular
machine or manufacture that is integral to the claims, and does not transform
or reduce a particular article to a different state or thing. Id. Thus, claim 1
is directed to a judicial exception.
Turning to the second step of the Alice analysis, because we find that
claim 1 is directed to judicial exceptions, the claims must include an
“inventive concept” in order to be patent-eligible, i.e., there must be an
element or combination of elements that is sufficient to ensure that the claim
in practice amounts to significantly more than the abstract idea itself. See
Alice, 573 U.S. at 217–18 (alteration in original) (quoting Mayo, 566 U.S. at
72–73).
The introduction of a computer (video game) into the claims does not
alter the analysis at Alice step two.
[T]he mere recitation of a generic computer cannot transform a
patent-ineligible abstract idea into a patent-eligible invention.
Stating an abstract idea “while adding the words ‘apply it’” is
not enough for patent eligibility. Nor is limiting the use of an
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abstract idea “‘to a particular technological environment.’”
Stating an abstract idea while adding the words “apply it with a
computer” simply combines those two steps, with the same
deficient result. Thus, if a patent’s recitation of a computer
amounts to a mere instruction to “implemen[t]” an abstract idea
“on . . . a computer,” that addition cannot impart patent
eligibility. This conclusion accords with the preemption
concern that undergirds our § 101 jurisprudence. Given the
ubiquity of computers, wholly generic computer
implementation is not generally the sort of “additional
featur[e]” that provides any “practical assurance that the
process is more than a drafting effort designed to monopolize
the [abstract idea] itself.”
Alice, 573 U.S. at 223 (alterations in original) (citations omitted).
Instead, “the relevant question is whether the claims here do more
than simply instruct the practitioner to implement the abstract idea . . . on a
generic computer.” Id. at 225. They do not.
Taking the claim elements separately, the function performed by the
computer at each step of the process is purely conventional. Using a
computer to retrieve, select, and apply decision criteria to data and modify
the data as a result amounts to electronic data query and retrieval—one of
the most basic functions of a computer. All of these computer functions are
well-understood, routine, conventional activities previously known to the
trading industry. See Elec. Power Grp., 830 F.3d at 1354; see also In re
Katz Interactive Call Processing Patent Litig., 639 F.3d 1303, 1316 (Fed.
Cir. 2011) (“Absent a possible narrower construction of the terms
‘processing,’ ‘receiving,’ and ‘storing,’ . . . those functions can be achieved
by any general purpose computer without special programming”). In short,
each step does no more than require a generic computer to perform generic
computer functions.
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Considered as an ordered combination, the computer components of
Appellant’s claims add nothing that is not already present when the steps are
considered separately.
The claims do not, for example, purport to improve the functioning of
the computer itself. As we stated above, the claims do not affect an
improvement in any other technology or technical field. The Specification
spells out different generic equipment and parameters that might be applied
using this concept (See, e.g., Spec. ¶¶ 26, 42). Thus, the claims at issue
amount to nothing significantly more than instructions to apply the abstract
idea of information access using some unspecified, generic computer.
Under our precedents, that is not enough to transform an abstract idea into a
patent-eligible invention. See Alice, 573 U.S. at 226.
We have reviewed all the arguments (Appeal Br. 13–33; Reply Br. 1–
4) Appellant has submitted concerning the patent eligibility of the claims
before us that stand rejected under 35 U.S.C. § 101. We find that our
analysis above substantially covers the substance of all the arguments, which
have been made. But, for purposes of completeness, we will address various
arguments in order to make individual rebuttals of same.
We are not persuaded of error on the part of the Examiner by
Appellant’s argument that claim 1 is not similar to the claims in the cases
cited by the Examiner. In particular, Appellant argues that the claims do not
recite mere collection and comparison of known information like Classen
Immunotherapies, Inc. v. Biogen IDEC, 659 F.3d 1057 (Fed. Cir. 2011);
include inserting advertisement into selected locations which is not done in
CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1373 (Fed. Cir.
2011); does not involve a well-known concept as in Content Extraction &
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Transmission LLC v. Wells Fargo Bank, N.A. Ass’n, 776 F.3d 1343 (Fed.
Cir. 2014); and does not involve the same type of data as the claims in
Ultramercial. We agree with the Examiner’s response to this argument
found on pages 3–4 of the Answer where the Examiner details how the
recitations in claim 1 correlate with the recitations in the claims in each of
the cases cited above. In any case, even if the claims were not similar to the
cases in the above referenced cases, the claims are clearly directed to
advertisement which is a judicial exception and because this judicial
exception is not integrated into a practical application the claims are directed
to an abstract idea on this basis.
We disagree with the Appellant’s contention that the claim is
analogous to those of Diamond v. Diehr, 450 U.S. 175, 191 (1981). (Appeal
Br. 16–20). The claims in Diehr were directed to a process for curing
synthetic rubber, and recited a series of steps (e.g., installing rubber in a
press, closing the mold, constantly determining the temperature of the mold,
constantly recalculating the appropriate cure time through the use of the
Arrhenius equation and a digital computer, and automatically opening the
press at the proper time) that together provided a significant and novel
practical application of the well-known Arrhenius equation and transformed
uncured synthetic rubber into a new state or thing. See Diehr, 450 U.S. at
184–87. The Court determined that although the invention employed a well-
known equation, it used that equation in a process designed to solve a
technological problem in conventional industry practice. Alice, 573 U.S. at
223 (citing Diehr, 450 U.S. at 177). The claims in Diehr were, thus, patent-
eligible because they improved an existing technological process. Id. The
Appellant contends that the claim here improve a technical field (similar to
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Diehr) specifically the technical field of advertisement insertion into video
games and solves the problem of inserting more effective advertisement or
entertainment into a video game. (Appeal Br. 17). However, merely taking
a manual, mental, or computer-implemented action of insertion of an
advertisement based on neuro-response data does not transform a product
from one form to another, such as a molded product, and is not patent
eligible, as the Supreme Court made clear in Benson, 409 U.S. at 71–72. In
contrast to the situation in Diehr, inserting advertisements into a video game
does not result in any analogous transformation of matter from one state
(i.e., raw rubber) to another (i.e., a molded product). And the claim does not
provide details on the technological processes for selecting locations for
insertion or for the insertion process. Rather, any change or improvement
lies in the abstract idea of using neuro-responsive data rather than the
demographic information, statistical data, and survey data that was used in
the past. (Spec. ¶ 2). But, at best, this improvement is an improvement to
the abstract idea. And “[n]o matter how much of an advance in the . . . field
of advertisement placement the claims recite, the advance lies entirely in the
realm of abstract ideas, with no plausibly alleged innovation in the non-
abstract application realm.” SAP Am., Inc. v. InvestPic, LLC, 898 F.3d 1161,
1163 (Fed. Cir. 2018).
Appellant’s argument that the Examiner did not address the
combination of the additional elements is not persuasive because the
Examiner did address the additional limitations and found that they were
generic computers performing generic computer functions that do not
amount to significantly more that the abstract idea (Final Act. 3; Ans. 4).
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Appellant argues that the Examiner has overgeneralized the claims
and describes the claim at a high level of abstraction ignoring the actual
language of the claim. (Appeal Br. 20-23). Appellant’s argument is not
persuasive because there is no requirement that the Examiner’s formulation
of the abstract idea copy the claim language. The Examiner’s
characterization here, moreover, is fully consistent with the Specification
and the claim limitations, as discussed above. That independent claim 1
includes more words than the phrase the Examiner used to articulate the
abstract idea to which the claim is directed is an insufficient basis to
persuasively argue that the claim language has been mischaracterized or that
the Examiner has otherwise failed to consider all of the limitations of the
claim. See Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1240 (Fed. Cir.
2016). An abstract idea can generally be described at different levels of
abstraction. The claimed abstract idea could be described as the Examiner
has done or in other ways.
Appellant argues that the claimed concept does not give rise to
preemption. (Appeal Br. 24). “While preemption may signal patent
ineligible subject matter, the absence of complete preemption does not
demonstrate patent eligibility.” Ariosa Diagnostics, Inc. v. Sequenom, Inc.,
788 F.3d 1371, 1379 (Fed. Cir. 2015); see also OIP Techs., Inc. v.
Amazon.com, Inc., 788 F.3d 1359, 1362–63 (Fed. Cir. 2015), cert. denied,
136 S. Ct. 701 (2015) (“[T]hat the claims do not preempt all price
optimization or may be limited to price optimization in the e-commerce
setting do not make them any less abstract.”). And, “[w]here a patent’s
claims are deemed only to disclose patent ineligible subject matter under the
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Mayo framework, as they are in this case, preemption concerns are fully
addressed and made moot.” Ariosa, 788 F.3d at 1379.
In view of the foregoing, we will sustain the Examiner’s rejection of
claim 1. We will also sustain the rejection as it is directed to dependent
claims 2–9, 23, and 24 because the Appellant has not argued the separate
eligibility of these claims.
We will also sustain the rejection of claim 10 and dependent claims
11–18 because the Appellant make the same arguments we found
unpersuasive in regard to the rejection of claim 1 in response to the rejection
of claim 10.
We will also sustain the rejection of claims 21 and dependent claim
22. Appellant made similar arguments to those we found unpersuasive in
regard to the rejection of claim 1 in response to the rejection of claim 21.
In addition, we are not persuaded of error on the part of the Examiner
by Appellant’s argument that claim 21 includes an inventive concept
because the recitations of claim 21 are not found in the prior art. To the
extent Appellant maintains that the limitations of claim 1 necessarily amount
to “significantly more” than an abstract idea because the claimed apparatus
is allegedly patentable over the prior art, Appellant misapprehends the
controlling precedent. Although the second step in the Alice/Mayo
framework is termed a search for an “inventive concept,” the analysis is not
an evaluation of novelty or non-obviousness, but rather, a search for “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. A novel and
nonobvious claim directed to a purely abstract idea is, nonetheless, patent-
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ineligible. See Mayo, 566 U.S. at 90.
CONCLUSIONS OF LAW
We conclude the Examiner did not err in rejecting appealed claims
under 35 U.S.C. § 101.

DECISION
The decision of the Examiner is affirmed.
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