CBS INTERACTIVE INC.Download PDFPatent Trials and Appeals BoardJun 30, 20212021000606 (P.T.A.B. Jun. 30, 2021) 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. 15/864,034 01/08/2018 Cristen Carvis 10-403-US-C 1018 128144 7590 06/30/2021 Rimon PC 420 West Main Street Suite 101B Boise, ID 83702-7358 EXAMINER REINHARDT, RICHARD G ART UNIT PAPER NUMBER 3682 NOTIFICATION DATE DELIVERY MODE 06/30/2021 ELECTRONIC Please find below and/or attached an Office communication concerning this application or proceeding. The time period for reply, if any, is set in the attached communication. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address(es): docketing.rimonlaw@clarivate.com eofficeaction@appcoll.com patentdocketing@rimonlaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte CRISTEN CARVIS and CLIFFORD LYON Appeal 2021-000606 Application 15/864,034 Technology Center 3600 Before JOHN A. EVANS, JOYCE CRAIG, AND AARON W. MOORE, Administrative Patent Judges. CRAIG, 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 21–38. See Final Act. 1. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as CBS Interactive Inc. Appeal Br. 2. Appeal 2021-000606 Application 15/864,034 2 CLAIMED SUBJECT MATTER According to Appellant, the claims are directed to “heuristically addressing interest in a set of assets by evaluating the assets in turn and determining a ‘guide’ asset for recommendation.” Spec. ¶ 12. Claim 21, reproduced below, is illustrative of the claimed subject matter: 21. A method providing recommendations to a user by one or more recommending computing devices based on user activity in a distributed network environment, the method comprising: receiving, from multiple distributed computing devices connected to the distributed network environment, multiple sets of user page view information, each set of page view information including an identification of the user viewing a page and an identification of the page viewed by the user; storing sets of user page information for each user in association with that user; in response to a request from a user device for information from a distributed computing device, the information relating to an asset, determining, by at least one of the one or more recommending computing devices, a set of recently viewed assets based on one of the sets of user page information corresponding to the user; determining, by at least on[e] of the one or more recommending computing devices, a set of neighbor assets associated with the recently viewed assets, wherein each neighbor asset is an asset which is associated with a corresponding recently viewed asset; generating, by at least one of the one or more recommending computing devices, a plurality of subsets from the set recently viewed assets, wherein each subset in the plurality of subsets includes a plurality of recently viewed assets and has a corresponding neighbor subset comprising a plurality of neighbor assets associated with the plurality of recently viewed assets in the subset; determining, by at least one of the one or more recommending computing devices, a score for each subset in the plurality of subsets to generate a plurality of scores, wherein the score for each subset is based on a strength of the association Appeal 2021-000606 Application 15/864,034 3 between the plurality of recently viewed assets in that subset and the plurality of neighbor assets in the corresponding neighbor subset; determining, by at least one of the one or more recommending computing devices, the subset with the highest score; generating, by at least one of the one or more recommending computing devices, one or more asset recommendations from the plurality of neighbor assets in the corresponding neighbor subset of the subset with the highest score; and transmitting, by at least one of the one or more recommending computing devices, the one or more asset recommendations to the user device. Appeal Br. 20–21 (Claims App.). REJECTION Claims 21–38 stand rejected under 35 U.S.C. § 101 because the claimed invention is directed to a judicial exception without significantly more. Final Act. 2. ANALYSIS Appellant argues the Examiner’s rejection of claim 21 under 35 U.S.C. § 101 as directed to patent-ineligible subject matter is in error. To the extent Appellant has not advanced separate, substantive arguments for particular claims, or other issues, such arguments are waived. 37 C.F.R. § 41.37(c)(1)(iv) (2020). Appellant argues claims 21–38 as a group. Appeal Br. 6. Given our discretion under 37 C.F.R. § 41.37(c)(1)(iv), we decide the § 101 rejection of claims 21–38 based on representative claim 21. Principles of Law An invention is patent-eligible if it claims a “new and useful process, machine, manufacture, or composition of matter.” 35 U.S.C. § 101. Appeal 2021-000606 Application 15/864,034 4 However, the U.S. Supreme Court has long interpreted 35 U.S.C. § 101 to include implicit exceptions: “[l]aws of nature, natural phenomena, and abstract ideas” are not patentable. E.g., Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 216 (2014). In determining whether a claim falls within an excluded category, we are guided by the Court’s two-part framework, described in Mayo and Alice. Id. at 217–18 (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 75–77 (2012)). In accordance with that framework, we first determine what concept the claim is “directed to.” See Alice, 573 U.S. at 219 (“On their face, the claims before us are drawn to the concept of intermediated settlement, i.e., the use of a third party to mitigate settlement risk.”); see also Bilski v. Kappos, 561 U.S. 593, 611 (2010) (“Claims 1 and 4 in petitioners’ application explain the basic concept of hedging, or protecting against risk.”). If the claim is “directed to” an abstract idea, we turn to the second part of the Alice and Mayo framework, where “we must examine the elements of the claim to determine whether it contains an ‘inventive concept’ sufficient to ‘transform’ the claimed abstract idea into a patent-eligible application.” Alice, 573 U.S. at 221 (quotation marks omitted). “A claim that recites an abstract idea must include ‘additional features’ to ensure ‘that the [claim] is more than a drafting effort designed to monopolize the [abstract idea].’” Id. (alterations in original) (quoting Mayo, 566 U.S. at 77). “[M]erely requir[ing] generic computer implementation[] fail[s] to transform that abstract idea into a patent-eligible invention.” Id. Appeal 2021-000606 Application 15/864,034 5 In January 2019, the U.S. Patent and Trademark Office (“USPTO”) published revised guidance on the application of § 101.2, 3 Under MPEP § 2106, we first look 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) (“Step 2A, Prong One”); and (2) additional elements that integrate the judicial exception into a practical application (“Step 2A, Prong Two”).4 MPEP § 2106.04(a) and (d). 2 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (“2019 Revised Guidance”). In response to received public comments, the Office issued further guidance on October 17, 2019, clarifying the 2019 Revised Guidance. USPTO, October 2019 Update: Subject Matter Eligibility (the “October 2019 Update”). “All USPTO personnel are, as a matter of internal agency management, expected to follow the guidance.” 84 Fed. Reg. at 51; see also October 2019 Update at 1. 3 The Manual of Patent Examining Procedure (“MPEP”) now incorporates this revised guidance and subsequent updates at Section 2106 (9th ed., Rev. 10.2019, rev. June 2020). All references to the MPEP are to the Ninth Edition, Revision 10.2019 (Last Revised June 2020), unless otherwise indicated. 4 “Examiners evaluate integration into a practical application by: (1) identifying whether there are any additional elements recited in the claim beyond the judicial exception(s); and (2) evaluating those additional elements individually and in combination to determine whether” the claim as a whole “integrate[s] the exception into a practical application.” MPEP § 2106.04(d)(II). Appeal 2021-000606 Application 15/864,034 6 Only if a claim (1) recites a judicial exception and (2) does not integrate that exception into a practical application,5 do we then look, under Step 2B, to whether the claim: (3) adds a specific limitation beyond the judicial exception that is not “well-understood, routine, conventional activity” in the field; 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.6 MPEP § 2106.05(d). Step 1 Claim 21, as a method claim, falls within the process category of § 101. See MPEP §§ 2106.03, 2106.06. Step 2A(i): Does the Claim Recite a Judicial Exception? The Examiner determined that claim 21 recites abstract mental processes. Final Act. 3. The Examiner identified all of the recited steps as part of the recited abstract idea. Id. Consistent with Appellant’s description of the claims, we find that the following limitations describe steps that can be performed in the human mind or practicably with pen and paper, and which are fairly characterized as mental processes, a category of abstract ideas: 5 This corresponds to Alice part one where it is determined whether the claim is “directed to” an abstract idea. See Alice, 573 U.S. at 219. If a claim is “not directed to an abstract idea under step one of the Alice framework, we do not need to proceed to step two.” Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1339 (Fed. Cir. 2016). 6 This corresponds to Alice part two where it is determined whether the claim contains an “‘inventive concept’ sufficient to ‘transform’ the claimed abstract idea into a patent-eligible application.” Alice, 573 U.S. at 221. Appeal 2021-000606 Application 15/864,034 7 in response to a request from a user device for information from a distributed computing device, the information relating to an asset, determining . . . a set of recently viewed assets based on one of the sets of user page information corresponding to the user; determining . . . a set of neighbor assets associated with the recently viewed assets, wherein each neighbor asset is an asset which is associated with a corresponding recently viewed asset; generating . . . a plurality of subsets from the set recently viewed assets, wherein each subset in the plurality of subsets includes a plurality of recently viewed assets and has a corresponding neighbor subset comprising a plurality of neighbor assets associated with the plurality of recently viewed assets in the subset; determining . . . a score for each subset in the plurality of subsets to generate a plurality of scores, wherein the score for each subset is based on a strength of the association between the plurality of recently viewed assets in that subset and the plurality of neighbor assets in the corresponding neighbor subset; determining . . . the subset with the highest score; generating . . . one or more asset recommendations from the plurality of neighbor assets in the corresponding neighbor subset of the subset with the highest score. Each of the above tasks can be performed by the human mind or with pen and paper. The 2019 Revised Guidance explains that “mental processes” include acts that people can perform in their minds or using pen and paper, even if the claim recites that a generic computer component performs the acts. See MPEP § 2106.04(a)(2)(III)(C); see also Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d 1307, 1318 (Fed. Cir. 2016) (“[W]ith the exception of generic computer-implemented steps, there is nothing in the claims themselves that foreclose them from being performed by a human, mentally or with pen and paper.”), quoted in MPEP § 2106.04(a)(2)(III). Appeal 2021-000606 Application 15/864,034 8 Appellant argues7 “the claims require the manipulation of computer data structures and the output of a modified computer data structure, and thus are not accomplished in the human mind.” Appeal Br. 7 (citing Apple, Inc. v. Mirror World Techs., LLC, CBM2016-0019 (PTAB May 26, 2016) and Research Corp. Techs. v. Microsoft Corp., 627 F.3d 859, 868 (Fed. Cir. 2010)). Appellant further argues in a conclusory manner that “[t]he claims are performed by a computer processor(s) and are not observations, evaluation, judgement or opinion.” Id. at 8. We are not persuaded by Appellant’s arguments. Appellant has not adequately explained how claim 21 requires “the manipulation of computer data structures and the output of a modified computer data structure.” See Appeal Br. 7. Claim 21 recites determining sets and subsets of recently viewed and neighbor assets, determining a score for each subset, determining the subset with the highest score, and generating an asset recommendation based on the subset with the highest score. Neither the Apple case nor the Microsoft case, relied on by Appellant, was decided under the 2019 Revised Guidance, which sets forth an approach to identifying abstract ideas that distills the relevant case law into groupings of abstract ideas, and no longer requires comparing claims to those in previous cases. See MPEP § 2106.04(a). With regard to Appellant’s argument that the 7 Appellant also argues that the Examiner erred in determining that the claims are directed to “certain methods of organizing human activity.” See Appeal Br. 6–8. The analysis in the Final Office Action, however, pertains specifically to “mental processes,” and does not address or identify “certain methods of organizing activity.” See Final Act. 3. Thus, we decline at this time to address Appellant’s arguments directed to the Examiner’s alleged analysis regarding “certain methods of organizing human activity,” as that was not the basis for the Examiner’s rejection of claims 21–38, before us on appeal. Appeal 2021-000606 Application 15/864,034 9 identified steps in claim 21 cannot be performed in the human mind (Appeal Br. 3), the Apple court found that the Patent Owner demonstrated that the steps of the claims at issue specifically call for operations that must be performed by a computer. Appellant has made no such showing here. Moreover, the Apple decision, as well as the other Board decisions Appellant cites (see Appeal Br. 13–14), are non-precedential decisions of the Board and, thus, are not binding on the USPTO, including both the PTAB and examiners. Routine PTAB decisions are fact-specific to the case being decided and thus are non-precedential. See PTAB Standard Operating Procedure 2, Rev. 10. Accordingly, the cited Board decisions are not binding on the Examiner or this panel in this case. Because we agree with the Examiner that claim 21 recites an abstract idea, we proceed to Prong Two of Step 2A to determine if the idea is integrated into a practical application, in which case the claim as a whole would not be “directed to” merely an abstract idea. Step 2A(ii): Judicial Exception Integrated into a Practical Application? We next determine whether the recited judicial exception is integrated into a practical application of that exception by: (a) identifying whether there are any additional elements recited in the claim beyond the judicial exception(s); and (b) evaluating those additional elements individually and in combination to determine whether they integrate the exception into a practical application. We use the term “additional elements” for claim features, limitations, or steps that the claim recites beyond the identified judicial exception. In claim 21, the additional elements include the limitations “computing devices,” “recommending computing devices,” a “distributed network environment,” and a “user device.” See Final Act. 4. We also identify the Appeal 2021-000606 Application 15/864,034 10 “receiving,” “storing,” and “transmitting” steps as beyond the abstract mental processes. To integrate the exception into a practical application, the additional claim elements must, for example, improve the functioning of a computer or any other technology or technical field (see MPEP § 2106.05(a)), apply the judicial exception with a particular machine (see MPEP § 2106.05(b)), affect a transformation or reduction of a particular article to a different state or thing (see MPEP § 2106.05(c)), or apply or use the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment (see MPEP § 2106.05(e)). The Examiner determined that none of the additional limitations is sufficient to integrate the judicial exception into a practical application because the additional computer elements “do no more than just generally link the user of a judicial exception to a particular technological environment or field of use.” Final Act. 4. Moreover, the “receiving” and “storing” steps amount to mere data gathering, which is insignificant extra-solution activity that is insufficient to integrate the abstract idea into a practical application. See MPEP § 2106.05(g). Similarly, the “transmitting” step is insignificant extra-solution activity. See id. Appellant argues “the claims address a pragmatic and technical issue and are integrated into the practical application of providing access to content in a more flexible manner.” Appeal Br. 8. In particular, Appellant argues that “the rejected claims enhance a database to solve a problem.” Id. at 10 (citing Amdocs (Israel) Lid. v. Openet Telecom, Inc., 841 F.3d 1288 (Fed. Cir. 2016)). Appellant submits that “[i]n Amdocs, the Federal Circuit held that claims directed to a series of operations enhancing data in a Appeal 2021-000606 Application 15/864,034 11 computer database to solve an accounting problem were patent eligible.” Id. Appellant further argues that claim 21 is like the claims in Amdocs because the determining and generating steps, as recited in claim 21, “enhance data in a manner that necessarily requires that these generic components operate in an unconventional manner to achieve an improvement in computer functionality.” Id. at 11. Appellant’s arguments that analogize claim 21 on appeal to the claims considered by the court in Amdocs are unpersuasive. See Appeal Br. 10. Appellant does not establish that the current claims recite an improvement to any technology. Rather, Appellant asserts that the invention solves the problem of producing the best possible recommendation(s) at any given time. Appeal Br. 9; Spec. ¶ 12. This is not a technology problem akin to the problem in Amdocs of “network bottlenecks” and “stored information in one location, which made it difficult to keep up with massive record flows from the network devices and which required huge databases.” Amdocs, 841 F.3d at 1292. Rather, the problem identified by Appellant relates to the analysis of data to provide a recommendation to a user. Nothing in Appellant’s claim provides benefits based upon a “distributed, remote enhancement that produce[s] an unconventional result—reduced data flows and the possibility of smaller databases,” as was found by the court in Amdocs. Id. at 1302. Appellant next compares claim 21 to the claims in DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1257 (Fed. Cir. 2014). Appeal Br. 11. Appellant argues “[t]he present system is directed to overcoming inefficiencies associated with making product recommendations based on user activity on a computer network” and “[t]he claims are necessarily rooted in computer technology in order to overcome these inefficiencies.” Id. at 11–12. Appeal 2021-000606 Application 15/864,034 12 We are not persuaded by Appellant’s arguments. The Federal Circuit found DDR’s claims are patent-eligible under section 101 because the claims: (1) do not merely recite “the performance of some business practice known from the pre-Internet world” previously disclosed in Bilski and Alice; but instead (2) provide a technical solution to a technical problem unique to the Internet, i.e., a “solution . . . necessarily rooted in computer technology in order to overcome a problem specifically arising in the realm of computer networks.” DDR Holdings, 773 F.3d at 1257. We note that, although the Federal Circuit in DDR Holdings held claims “necessarily rooted in computer technology” to be patent eligible, the court issued a relevant warning: We caution, however, that not all claims purporting to address Internet-centric challenges are eligible for patent. For example, in our recently-decided Ultramercial opinion, the patentee argued that its claims were “directed to a specific method of advertising and content distribution that was previously unknown and never employed on the Internet before.” But this alone could not render its claims patent-eligible. In particular, we found the claims to merely recite the abstract idea of “offering media content in exchange for viewing an advertisement,” along with “routine additional steps such as updating an activity log, requiring a request from the consumer to view the ad, restrictions on public access, and use of the Internet.” DDR Holdings, 773 F.3d at 1258 (citations omitted). The claims here do not recite an improvement for computers or any other technology. Using generic computer components to determine which information to recommend to a user, as in claim 21, does not improve the functioning of the computer or network, make it operate more efficiently, or solve any technological problem. See Ans. 10. Any improvement is to the abstract idea itself, as the claim simply includes instructions to implement an Appeal 2021-000606 Application 15/864,034 13 abstract idea on a computer and does no more than generally link the use of that abstract idea to a particular technological environment or field of use. See id. at 10, 12. Considering claim 21 as a whole, then, Appellant’s invention lacks a technical solution to a technical problem like the claims in Amdocs and DDR Holdings. Claim 21 as a whole merely uses instructions to implement the abstract idea on a computer or, alternatively, merely uses a computer as a tool to perform the abstract idea. Here, the additional limitation(s) do not integrate the judicial exception into a practical application. More particularly, the claims do not recite (i) an improvement to the functionality of a computer or other technology or technical field; (ii) a “particular machine” to apply or use the judicial exception; (iii) a particular transformation of an article to a different thing or state; or (iv) any other meaningful limitation. See MPEP § 2106.04(d)(I). Rather, claim 21 recites an abstract idea as identified in Step 2A(i), supra, and none of the additional limitations integrates the judicial exception into a practical application. Therefore, because the abstract idea is not integrated into a practical application, we conclude that the claim is directed to the judicial exception. Step 2B — “Inventive Concept” or “Significantly More” If the claims are directed to a patent-ineligible concept, as we conclude above, we proceed to the “inventive concept” step. In Step 2B we must “look with more specificity at what the claim elements add, in order to determine ‘whether they identify an “inventive concept” in the application of the ineligible subject matter’ to which the claim is directed.” Affinity Labs of Texas, LLC v. DIRECTV, LLC, 838 F.3d 1253, 1258 (Fed. Cir. 2016) (quoting Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016)). We look to see whether there are any “additional features” in the Appeal 2021-000606 Application 15/864,034 14 claims that constitute an “inventive concept,” thereby rendering the claims eligible for patenting even if they are directed to an abstract idea. Alice, 573 U.S. at 221. Those “additional features” must be more than “well- understood, routine, conventional activity.” Mayo, 566 U.S. at 79. The Examiner determined that the additional elements in claim 21 are insufficient to amount to significantly more than the judicial exception. Ans. 6; Final Act. 8. Appellant does not present arguments directed to whether claim 21 includes an inventive concept or amounts to significantly more than the abstract idea. Appellant does not direct our attention to anything in the Specification that indicates the computer components perform anything other than well-understood, routine, and conventional functions, such as receiving data, storing data, processing data, and transmitting data. See buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355 (Fed. Cir. 2014) (“That a computer receives and sends the information over a network—with no further specification—is not even arguably inventive.”); In re TLI Commc’ns LLC Patent Litig., 823 F.3d 607, 614 (Fed. Cir. 2016) (server that receives data, extracts classification information from the received data, and stores the digital images insufficient to add an inventive concept); Alice, 573 U.S. at 225–26 (receiving, storing, sending information over networks insufficient to add an inventive concept). Because the Specification describes the additional elements in general terms, without describing the particulars, we conclude the claim limitations may be broadly but reasonably construed as reciting conventional computer components and techniques. See MPEP § 2106.07(a)(III)(D) (explaining that a specification that describes additional elements in a manner that indicates that the additional elements are so well-known that they do not need to be Appeal 2021-000606 Application 15/864,034 15 described in detail to satisfy 35 U.S.C. § 112(a) can show that the elements are well-understood, routine, and conventional); Spec. ¶¶ 35–44. We conclude claim 21 does not have an inventive concept because the claim, in essence, merely recites various computer-based elements along with no more than mere instructions to implement the identified abstract idea using the computer-based elements. Because the claims are directed to a judicial exception, without significantly more, we sustain the Examiner’s § 101 rejection of independent claim 21 and grouped claims 22–38, not argued separately with particularity. CONCLUSION The Examiner’s decision rejecting claims 21–38 is affirmed. DECISION SUMMARY Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 21–38 101 Eligibility 21–38 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 Copy with citationCopy as parenthetical citation