Bradley Hopkins. Smallwood et al.Download PDFPatent Trials and Appeals BoardAug 21, 201913677889 - (D) (P.T.A.B. Aug. 21, 2019) Copy Citation 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. Appeal 2018-007330 Application 13/677,889 2 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: Appeal 2018-007330 Application 13/677,889 3 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 Appeal 2018-007330 Application 13/677,889 4 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 Appeal 2018-007330 Application 13/677,889 5 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: Appeal 2018-007330 Application 13/677,889 6 (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 Appeal 2018-007330 Application 13/677,889 7 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 Appeal 2018-007330 Application 13/677,889 8 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 Appeal 2018-007330 Application 13/677,889 9 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. Appeal 2018-007330 Application 13/677,889 10 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 Appeal 2018-007330 Application 13/677,889 11 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 Appeal 2018-007330 Application 13/677,889 12 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 Appeal 2018-007330 Application 13/677,889 13 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 Appeal 2018-007330 Application 13/677,889 14 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 Appeal 2018-007330 Application 13/677,889 15 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. Appeal 2018-007330 Application 13/677,889 16 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). Appeal 2018-007330 Application 13/677,889 17 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 Copy with citationCopy as parenthetical citation