Bradley Hopkins. Smallwood et al.

Patent Trials and Appeals Board

Aug 21, 2019

13677889 - (D) (P.T.A.B. Aug. 21, 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.
13/677,889 11/15/2012 Bradley Hopkins Smallwood 26295-21862 1830
87851 7590 08/21/2019
Facebook/Fenwick
Silicon Valley Center
801 California Street
Mountain View, CA 94041
EXAMINER
REFAI, SAM M
ART UNIT PAPER NUMBER
3681
NOTIFICATION DATE DELIVERY MODE
08/21/2019 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):
fwfacebookpatents@fenwick.com
ptoc@fenwick.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte BRADLEY HOPKINS SMALLWOOD,
and SEAN MICHAEL BRUICH
___________

Appeal 2018–007330
Application 13/677,889
Technology Center 3600
____________

Before CARL W. WHITEHEAD JR., ADAM J. PYONIN and
PHILLIP A. BENNETT, Administrative Patent Judges.

WHITEHEAD JR., Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellants are appealing the Examiner’s Final rejection of claims 1–5,
7–11, 13–15, 18, 22 and 27–31 under 35 U.S.C. § 134(a).1 Appeal Brief 5.2
We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 Appellants identify Facebook, Inc. as the real party in interest. Appeal
Brief 1.

2 We refer to the Appeal Brief filed on March 19, 2018, which does not
contain page numbering. Throughout this opinion, page number references
to the Appeal Brief refer to the brief as if numbered consecutively starting
on the first page.
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Introduction
The present invention generally relates to the field of
computer data storage and retrieval, and more
specifically, to predicting consumer behavior data sets
using panel data.

Disseminators of digital content via the Internet
are often interested in predicting consumer behavior. For
example, advertisers that provide digital products for
display on web sites are interested in estimating the
number of impressions (total separate displays) that a
particular product produced with respect to different
demographic attributes of interest, such as different age
groups, males or females, those with particular interests
(e.g., tennis), and the like.

Some web sites, such as social networking sites,
have a very large user base and thus have access to a
wealth of demographic and statistical data. For example,
user data on social networking sites typically includes
information such as age, sex, and interests, as well as
users’ historical reactions to products previously
presented. However, the user base of these social
networking sites typically does not perfectly represent,
demographically, the population in general or that of
another web site on which products might be placed. For
example, the user demographics of a given social
networking site are unlikely to perfectly match that of an
online news web site. Thus, although the user data on a
social networking site could be directly used to predict
consumer behavior, such as purchasing a product at a
local retailer, the accuracy of the prediction could be
enhanced.
Specification ¶¶ 3, 4 and 6.
Representative Claim
1. A computer-implemented method comprising:
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accessing panel data comprising:
a first set of product purchases associated with a panel, the
panel representative of the set of product purchases
performed by a plurality of individuals, each individual
assigned to a household;
accessing online social networking data comprising a second
set of product purchases performed by users of an online social
networking system;
accessing purchasing data comprising a third set of product purchases
across a large group of consumers;
combining the first, second, and third sets of product purchases from
the panel data, the online social networking data, and the
purchasing data to generate a consumer purchase behavior
dataset;
training a prediction model using the generated consumer behavior
dataset to predict a total number of product purchases for each
of a plurality of demographic attributes, wherein the panel
representative of the first set of product purchases performed by
the plurality of individuals assigned to households is used to
correct for a lack of representativeness of the online social
networking data comprising the second set of product
purchases, the training comprising:
for each of one or more users of the online social networking
system that
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performed a product purchase in the second set,
identifying an individual in a household that is also the
user;
identifying an individual assigned to a household that performed a
product purchase in the first set and not matched to a user of the
online social networking system that performed a product
purchase in the second set;
correcting the predicted total number of product purchases predicted
by the prediction model to account for the purchase performed
by the identified individual, wherein the correction improves an
accuracy of a prediction made by the prediction model;
receiving, as input into the prediction model, a panel dataset for a consumer
product, an online social networking dataset for the consumer
product, and a purchasing dataset for the consumer product; and
generating, for one or more of the plurality of demographic attributes, a
plurality of predicted consumer actions for the consumer product by a
representative audience as output from the prediction model.

Rejection on Appeal
Claims 1–5, 7–11, 13–15, 18, 22 and 27–31 stand rejected under 35
U.S.C. § 101 because the claimed invention is directed to patent ineligible
subject matter. Final Action 2–11.

ANALYSIS
Rather than reiterate the arguments of Appellants and the Examiner,
we refer to the Appeal Brief (filed March 19, 2018), the Reply Brief (filed
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June 21, 2018), the Final Action (mailed September 27, 2017) and the
Answer (mailed May 14, 2018), for the respective details.

35 U.S.C. § 101 rejection
The Examiner determines the claims are patent ineligible under
35 U.S.C. § 101 because the claims are directed to an abstract idea and do
not include additional elements that are sufficient to amount to significantly
more than the abstract idea. Final Action 2–11; see also Alice Corp. Pty.
Ltd. v. CLS Bank Int’l, 573 U.S. 208, 217 (2014) (Describing the two-step
framework “for distinguishing patents that claim laws of nature, natural
phenomena, and abstract ideas from those that claim patent-eligible
applications of those concepts.”).
After the mailing of the Answer and the filing of the Briefs in this
case, the USPTO published revised guidance on the application of 35 U.S.C.
§ 101. See 2019 Revised Patent Subject Matter Eligibility Guidance, 84
Fed. Reg. 50 (Jan. 7, 2019) (hereinafter “Memorandum”). Under the
Memorandum, the Office first looks 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 (see MPEP § 2106.05(a)–(c),
(e)–(h) (9th ed. 2018)).
Only if a claim (1) recites a judicial exception and (2) does not
integrate that exception into a practical application, does the Office then
look to whether the claim:
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(3) adds a specific limitation beyond the judicial exception that
are 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 generally Memorandum.
We are not persuaded the Examiner’s rejection is in error. Unless
otherwise indicated, we adopt the Examiner’s findings and conclusions as
our own and we add the following primarily for emphasis and clarification
with respect to the Memorandum.

Alice/Mayo—Step 1 (Abstract Idea)
Step 2A–Prongs 1 and 2 identified in the Revised Guidance

Step 2A, Prong One
Appellants argue “[i]ndependent claim 1 should be deemed patent
eligible at Step 2A of the Alice test for not being directed to a judicial
exception.” Appeal Brief 5. We agree with the Examiner’s determination
that the claims recite an abstract idea. See Final Action 2.
Claim 1 recites a “computer-implemented method” wherein:

1. a first set of product purchases associated with a panel, the panel
representative of the set of product purchases performed by a plurality
of individuals, each individual assigned to a household

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2. accessing online social networking data comprising a second set of
product purchases performed by users of an online social networking
system

3. accessing purchasing data comprising a third set of product purchases
across a large group of consumers

4. combining the first, second, and third sets of product purchases from
the panel data, the online social networking data, and the purchasing
data to generate a consumer purchase behavior dataset

5. training a prediction model using the generated consumer behavior
dataset to predict a total number of product purchases for each of a
plurality of demographic attributes, wherein the panel representative
of the first set of product purchases performed by the plurality of
individuals assigned to households is used to correct for a lack of
representativeness of the online social networking data comprising the
second set of product purchases, the training comprising: for each of
one or more users of the online social networking system that
performed a product purchase in the second set, identifying an
individual in a household that is also the user

6. identifying an individual assigned to a household that performed a
product purchase in the first set and not matched to a user of the
online social networking system that performed a product purchase in
the second set
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7. correcting the predicted total number of product purchases predicted
by the prediction model to account for the purchase performed by the
identified individual, wherein the correction improves an accuracy of
a prediction made by the prediction model

8. receiving, as input into the prediction model, a panel dataset for a
consumer product, an online social networking dataset for the
consumer product, and a purchasing dataset for the consumer product

9. generating, for one or more of the plurality of demographic attributes,
a plurality of predicted consumer actions for the consumer product by
a representative audience as output from the prediction model.
These steps comprise fundamental economic principles or practices
and commercial interactions; thus, the claim recites the abstract idea of
marketing/advertising, which fall under the category of judicial exception
identified as “certain methods of organizing human activity.” See
Memorandum, Section I, Groupings of Abstract Ideas (“[I]ncluding
agreements in the form of contracts; legal obligations; advertising,
marketing or sales activities or behaviors; business relations.”); see also
Specification ¶¶ 9–13 (“[A] particular model might output predicted total
sales and frequency values of a given product for each of a set of age ranges,
for males, for females, for each of a set of education levels ( e.g., high
school, college, or graduate degrees), and for each of a set of interests, as
well as aggregate total sales and frequency values.”). Our reviewing court
has found claims to be directed to abstract ideas when they recited similar
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subject matter. See Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715
(Fed. Cir. 2014) (sequence of receiving, selecting, offering for exchange,
display, allowing access, and receiving payment recited an abstraction); see
also Inventor Holdings, LLC v. Bed Bath & Beyond, Inc., 876 F.3d 1372,
1378 (Fed. Cir. 2017) (holding that sequence of data retrieval, analysis,
modification, generation, display, and transmission was abstract).
Therefore, we conclude the claims recite an abstract idea pursuant to Step
2A, Prong One of the guidance. See Memorandum, Section III(A)(1) (Prong
One: Evaluate Whether the Claim Recites a Judicial Exception).

Step 2A, Prong Two
Under Prong Two of the Revised Guidance, we must determine
“whether the claim as a whole integrates the recited judicial exception
into a practical application of the exception” it is noted that a “claim that
integrates a judicial exception into a practical application will 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.” Memorandum, Section
III(A)(2).
Appellants contend:
[C]laim 1 is directed towards an improvement to a computer-
related technology (e.g., a trained prediction model) that outputs
more accurate predictions of consumer actions in relation to a
consumer product. Additionally, claim 1 recites particular
details as to how the prediction model is trained to more
accurately predict consumer actions.

Appeal Brief 5–6.
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First, Appellants’ claims are distinguishable from those claims that
our reviewing court has found to be patent eligible by virtue of reciting
technological improvements to a computer system, as unlike those cases, the
alleged improvement is to the underlying abstract idea (advertising) rather
than any technology. Compare SAP Am., Inc. v. InvestPic, LLC, 898 F.3d
1161, 1168 (Fed. Cir. May 15, 2018) (“[w]hat is needed is an inventive
concept in the non-abstract realm”) with, e.g., DDR Holdings, 773 F.3d at
1249, 1257 (Holding that claims reciting computer processor for serving
“composite web page” were patent eligible because “the claimed solution is
necessarily rooted in computer technology in order to overcome a problem
specifically arising in the realm of computer networks.”) and Visual Memory
LLC v. NVIDIA Corp., 867 F.3d 1253, 1259 (Fed. Cir. 2017) (Holding that
claims directed to “an improved computer memory system” having many
benefits were patent eligible.).
Second, we do not find Appellants’ arguments persuasive because the
claims utilize components that are currently employed in the industry
without any improvement to the functionality of the components (server
device, rating data-vendor devices and network). See Specification ¶¶ 21,
24; see also Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335–36 (Fed.
Cir. 2016) (“[W]e find it relevant to ask whether the claims are directed to an
improvement to computer functionality versus being directed to an abstract
idea . . . . the . . . focus of the claims is on the specific asserted improvement
in computer capabilities (i.e., the self-referential table for a computer
database) or, instead, on a process that qualifies as an ‘abstract idea’ for
which computers are invoked merely as a tool.”). The claims do not recite
an additional element or elements that reflect an improvement in the
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functioning of a computer, or an improvement to other technology or
technical field. See Final Action 5 (“These additional elements are recited at
a high level of generality and are recited as performing generic computer
functions routinely used in computer applications.”); also also Alice, 573
U.S. at 222 (“In holding that the process was patent ineligible, we rejected
the argument that ‘implement[ing] a principle in some specific fashion’ will
‘automatically fal[l] within the patentable subject matter of [section] 101.’”)
(quoting Parker v. Flook, 437 U.S. 584, 593 (1978)).
Appellants contend:
Here, the claims are directed to an improvement to a prediction
model (e.g., computer-related technology) and are, therefore,
patent eligible for at least the same reasons that rendered the
claims in McRO [McRO, Inc. v. Bandai Namco Games America
Inc., 837 F.3d 1299 (Fed. Cir. 2016)] patent eligible.

Appeal Brief 6.
Therefore, the prediction model is trained to more accurately
predict consumer actions. Similar to the particular
implementation of the rules in the patent eligible claims of
McRO, the panel data is implemented in a manner that directly
enables the improvement (e.g., an improved prediction model).

Appeal Brief 9.
In McRO, the Federal Circuit concluded that the claim, when
considered as a whole, was directed to a “technological improvement over
the existing, manual 3-D animation techniques” through the “use [of] limited
rules . . . specifically designed to achieve an improved technological result in
conventional industry practice.” McRO, 837 F.3d at 1316.
Specifically, the Federal Circuit found that the claimed rules allow
computers to produce accurate and realistic lip synchronization and facial
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expressions in animated characters that previously could only be produced
by human animators; and the rules are limiting because they define morph
weight sets as a function of phoneme sub-sequences. Id. at 1313 (citations
omitted).
We find no evidence of record here that the present situation is like the
one in McRO where computers were unable to make certain subjective
determinations, i.e., regarding morph weight and phoneme timings, which
could only be made prior to the claimed invention by human animators. The
Background section of the McRO ‘576 patent includes a description of the
admitted prior art method and the shortcomings associated with that prior
method. See McRO, 837 F.3d at 1303–06. There is no comparable
discussion in Appellants’ Specification or elsewhere of record. Further, As
the Federal Circuit has explained, a “claim for a new abstract idea is still an
abstract idea.” Synopsis, Inc. v. Mentor Graphics Corp., 839 F.3d 1138,
1151 (Fed. Cir. 2016). Even assuming the technique claimed was
“[g]roundbreaking, innovative, or even brilliant,” that would not be enough
for the claimed abstract idea to be patent eligible. See Association for
Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 591 (2013).
Subsequently, we detect no additional element (or combination of
elements) recited in Appellants’ representative claim 1 that integrates the
judicial exception into a practical application. See Memorandum, Section
III(A)(2). For example, Appellants’ claimed additional element (e.g., online
social networking system) does not: (1) improve the functioning of a
computer or other technology; (2) is not applied with any particular machine
(except for a generic computer); (3) does not effect a transformation of a
particular article to a different state; and (4) is not applied in any meaningful
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way beyond generally linking the use of the judicial exception to a particular
technological environment, such that the claim as a whole is more than a
drafting effort designed to monopolize the exception. See MPEP
§§ 2106.05(a)–(c), (e)–(h).
Accordingly, we determine the claims do not integrate the judicial
exception into a practical application. See Memorandum, Section III(A)(2)
(Prong Two: If the Claim Recites a Judicial Exception, Evaluate Whether the
Judicial Exception Is Integrated Into a Practical Application).

Alice/Mayo—Step 2 (Inventive Concept)
Step 2B identified in the Revised Guidance
Step 2B
Next, we determine whether the claim includes additional elements
that provide significantly more than the recited judicial exception, thereby
providing an inventive concept. Alice, 573 U.S. at 217–18 (quoting Mayo,
566 U.S. at 72–73).
Appellants contend:
The recent Federal Circuit decision in Berkheimer v. HP Inc.,
(Fed. Circ. 2018), No. 2017-1437 (hereafter referred to as
Berkheimer) further underscores this point and establishes that
“whether something is well-understood, routine, and
conventional to a skilled artisan at the time of the patent is a
factual determination . . . [and] goes beyond what was simply
known in the prior art. The mere fact that something is disclosed
in a piece of prior art, for example, does not mean it was well-
understood, routine, and conventional.” See Id, p. 14. Therefore,
in view of both the May Memo and the Federal Circuit’s
reasoning in Berkheimer, a factual determination is needed to
demonstrate that a certain activity is well-understood, routine,
and conventional. In the Office Action, the examiner has not
alleged the existence of prior art that teaches the steps of the
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claimed invention. Given the lack of prior art, the steps recited in
the claimed invention cannot rise to the level of being well-
understood, routine, and conventional.

Appeal Brief 13–14 (emphasis added).
The Berkheimer Memorandum states, “the Federal Circuit drew a
distinction between what is well-understood, routine, conventional, and what
is simply known in the prior art, cautioning that the mere fact that something
is disclosed in a piece of prior art does not mean it was a well-understood,
routine, conventional activity or element. Id. at 1369.” Berkheimer
Memorandum 2 (emphasis added). Accordingly, we disagree with
Appellants’ interpretation that the lack of any prior art rejection is an
indication that “the steps recited in the claimed invention cannot rise to the
level of being well-understood, routine, and conventional.” See Appeal
Brief 13, 14 (emphasis added).
Memorandum, Section III (B) (fn. 36) states:
In accordance with existing guidance, an examiner’s
conclusion that an additional element (or combination of
elements) is well understood, routine, conventional activity must
be supported with a factual determination. For more information
concerning evaluation of well-understood, routine, conventional
activity, see MPEP 2106.05(d), as modified by the USPTO
Berkheimer Memorandum.

The Examiner determines, “Generic computer components recited as
performing generic computer functions that are well-understood, routine and
conventional activities amount to no more than implementing the abstract
idea with a computerized system (see page 7 of the July 2015 Update:
Subject Matter Eligibility for list of computer functions that the courts have
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recognized as well-understood, routine, and conventional).”3 Answer 5; see
also Final Action 5.
The Examiner further determines:
Additionally, ¶¶ 40-41 of Appellant’s specification provides
further evidence that the additional elements are merely general-
purpose computing devices. ¶¶ 6-8 of Appellants specification
provide further evidence that online social networks are well-
understood, routine and conventional activity previously known
to industry. The use of generic computer components to transmit
information through an unspecified interface does not impose
any meaningful limit on the computer implementation of the
abstract idea.

Answer 5.
We agree with the Examiner’s findings that the additional claim
elements are well-understood, routine, and conventional are properly based
upon a factual determination as specified in the Berkheimer Memorandum,

3 “Courts have held computer‐implemented processes not to be significantly
more than an abstract idea (and thus ineligible) where the claim as a whole
amounts to nothing more than generic computer functions merely used to
implement an abstract idea, such as an idea that could be done by a human
analog (i.e., by hand or by merely thinking).” Subject Matter Eligibility,
Update July 2015, page 7.

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Section III (A)(1) (2). 4 5 The Examiner’s determination is not challenged
with any specificity by Appellants. See Reply Brief 5 (“[T]he Examiner has
not performed the necessary examining procedures to establish a prima facie
case that the additional elements are well-understood, routine, and
conventional activities.”).
Accordingly, we conclude claims 1–5, 7–11, 13–15, 18, 22 and 27–31
are directed to a fundamental economic practice, which is one of certain
methods of organizing human activity identified in the Memorandum and
thus an abstract idea, and the claims do not recite limitations that amount to
significantly more than the abstract idea itself. We sustain the Examiner’s
35 U.S.C. § 101 rejection of claims 1–5, 7–11, 13–15, 18, 22 and 27–31.

DECISION
The Examiner’s patent ineligible subject matter rejection of claims
11–5, 7–11, 13–15, 18, 22 and 27–31 is affirmed.

4 “A [S]pecification demonstrates the well-understood, routine,
conventional nature of additional elements when it describes the additional
elements as well-understood or routine or conventional (or an equivalent
term), as a commercially available product, or in a manner that indicates that
the additional elements are sufficiently well-known that the [S]pecification
does not need to describe the particulars of such additional elements to
satisfy 35 U.S.C. § 112(a).” Berkheimer Memorandum, Section III (A)(1).

5 “A citation to one or more of the court decisions discussed in MPEP
§ 2106.05(d)(II) as noting the well-understood, routine, conventional nature
of the additional element(s).” Berkheimer Memorandum, Section III (A)(2).

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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1). See 37 C.F.R.
§ 1.136(a)(1)(v).

AFFIRMED