Ex Parte Farahat et al

Patent Trial and Appeal Board

Oct 16, 2017

13185969 (P.T.A.B. Oct. 16, 2017)

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.
13/185,969 07/19/2011 Ayman Farahat 12729/742 (Y07058US00) 3373
56020 7590
BGL/Yahoo Holdings
P.O. BOX 10395
CHICAGO, IL 60610
10/16/2017 EXAMINER
MUNSON, PATRICIA H
ART UNIT PAPER NUMBER
3622
MAIL DATE DELIVERY MODE
10/16/2017 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte AYMAN FARAHAT and AMIR CORY
Appeal 2016-0008811
Application 13/185,9692
Technology Center 3600
Before NINA L. MEDLOCK, CYNTHIA L. MURPHY, and
AMEE A. SHAH, Administrative Patent Judges.
MEDLOCK, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1—5 and 7—22. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM.
1 Our decision references Appellants’ Appeal Brief (“App. Br.,” filed
February 4, 2015) and Reply Br. (“Reply Br.,” filed October 27, 2015), and
the Examiner’s Answer (“Ans.,” mailed August 27, 2015) and Final Office
Action (“Final Act.,” mailed June 4, 2014).
2 Appellants identify YAHOO! Inc. as the real party in interest. App. Br. 2.
Appeal 2016-000881
Application 13/185,969
CLAIMED INVENTION
Appellants’ claimed invention relates to evaluating third party
targeting data (Spec. Title).
Claims 1,12, and 19 are the independent claims on appeal. Claim 1,
reproduced below, is illustrative of the claimed subject matter:
1. A computerized method for compensating a third
party based on third party targeting data, the method comprising:
receiving the third party targeting data and local targeting
data;
identifying a variable to analyze, wherein the variable to
analyze indicates one or more events;
identifying one or more independent variables that impact
the presence of the one or more events;
generating, with at least one processor, a model for
analyzing the third party targeting data and for analyzing the
local targeting data that includes the variable to analyze and the
independent variables as inputs to the generated model;
analyzing, with the at least one processor, the generated
model to determine an impact of the third party targeting data on
the variable to analyze and to determine an impact of the local
targeting data on the variable to analyze;
comparing, based on the analyzing, the impact from the
third party targeting data as compared with the impact from the
local targeting data; and
determining a compensation amount for the third party
based on the comparison, wherein a greater impact from the third
party targeting data corresponds with a greater compensation to
the third party.
REJECTIONS
Claims 1—5 and 7—22 are rejected under 35U.S.C. § 112, first
paragraph, as failing to comply with the written description requirement.
Claims 1—5 and 7—22 are rejected under 35 U.S.C. § 101 as directed to
non-statutory subject matter.
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Appeal 2016-000881
Application 13/185,969
Claims 19, 20, and 22 are rejected under 35 U.S.C. § 102(e) as
anticipated by Ramer et al. (US 2011/0258049 Al, pub. Oct. 20, 2011)
(hereinafter “Ramer”).
Claims 1—5, 7—18, and 21 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Ramer and Flake et al. (US 2009/0327150 Al, pub.
Dec. 31, 2009) (hereinafter “Flake”).
ANALYSIS
Written Description
Whether a specification complies with the written description
requirement of 35 U.S.C. § 112, first paragraph, is a question of fact and is
assessed on a case-by-case basis. See, e.g., Purdue Pharma L.P. v.
Faulding, Inc., 230 F.3d 1320, 1323 (Fed. Cir. 2000) (citing Vas-Cath, Inc.
v. Mahurkar, 935 F.2d 1555, 1561 (Fed. Cir. 1991)). The disclosure, as
originally filed, need not literally describe the claimed subject matter (i.e.,
using the same terms or in haec verba) in order to satisfy the written
description requirement. But the Specification must convey with reasonable
clarity to those skilled in the art that, as of the filing date, Appellants were in
possession of the claimed invention. See id.
The Examiner notes that independent claim 1 recites “comparing . . .
the impact from the third party targeting data as compared with the impact
from the local targeting data,” and that dependent claim 17 and independent
claim 19 include substantially similar language (Final Act. 3). And the
Examiner finds that the Specification, when examined as a whole, fails to
disclose any comparison, let alone a comparison of the impact from external
or third party targeting data with the impact from local or internal targeting
data (id. ).
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Appeal 2016-000881
Application 13/185,969
Appellants maintain that the Specification provides the requisite
written description support in paragraphs 41 and 42 (App. Br. 5—6).
However, we agree with the Examiner that although the Specification
discloses, in paragraph 41, that a generalized linear model (“GLM”) may be
a function of several variables, including Te and T), where Te corresponds to
the weight or impact of external targeting data on a conversion and T)
corresponds to the weight or impact of internal targeting data on a
conversion, there is nothing in paragraph 41 that describes comparing the
two impact values, as called for in the claims (Ans. 21).
We also find no such written description support in the highlighted
portion of paragraph 42 to which Appellants refer (see App. Br. 5—6).
Rather than disclosing a comparison, that portion of paragraph 42 merely
defines Pbk as corresponding to the weight or impact of the third party data
conversion and describes that the impact of third party data can be
determined by identifying Pbk and determining whether it is significantly
different from zero and whether the contribution is positive or negative {see
Ans. 21).3
3 The Examiner also finds that the Specification lacks adequate written
description support for (1) “wherein the impact comprises a probability that
the data contributed to the click or the conversion, wherein a greater
contribution to the click or the conversion corresponds to a greater impact,”
as recited in dependent claim 5 (Final Act. 4); (2) “wherein the contribution
attributed to the third party increases when the impact from the external
targeting data on the conversion rate increases relative to the impact from
the internal targeting data on the conversion rate,” as recited in independent
claim 19 {id. at 5); and (3) “wherein the contribution comprises a
quantization of whether the internal or external targeting data contributes to
a conversion for increasing the conversion rate,” as recited in claim 20 {id.).
Because we find that the Specification lacks the requisite written description
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Application 13/185,969
Because we find that the Specification lacks written description
support for comparing the impact from external or third party targeting data
with the impact from local or internal targeting data, we agree with the
Examiner that the Specification also lacks written description support for
“determining a compensation amount for the third party based on the
comparison, wherein a greater impact from the third party targeting data
corresponds with a greater compensation to the third party,” as recited in
independent claim 1, and similarly recited in independent claim 12 (Final
Act. 3—4).
We are not persuaded for the reasons set forth above that the
Examiner erred in rejecting claims 1—5 and 7—22 under 35U.S.C. § 112, first
paragraph. Therefore, we sustain the Examiner’s rejection.
Non-Statutory Subject Matter
Under 35 U.S.C. § 101, an invention is patent-eligible if it claims a
“new and useful process, machine, manufacture, or composition of matter.”
35 U.S.C. § 101. The Supreme Court, however, has long interpreted § 101
to include an implicit exception: “[ljaws of nature, natural phenomena, and
abstract ideas” are not patentable. See, e.g., Alice Corp. Pty. Ltd. v. CLS
Banklnt’l, 134 S. Ct. 2347, 2354 (2014).
support for “comparing ... the impact from the third party targeting data as
compared with the impact from the local targeting data” and also for
“determining a compensation amount for the third party based on the
comparison, wherein a greater impact from the third party targeting data
corresponds with a greater compensation to the third party,” as recited in
independent claim 1, and similarly recited in independent claims 12 and 19,
we need not, and do not, consider the merits of these additional bases.
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Application 13/185,969
The Supreme Court, in Alice, reiterated the two-step framework
previously set forth in Mayo Collaborative Services v. Prometheus
Laboratories, Inc., 132 S. Ct. 1289, 1300 (2012), “for distinguishing patents
that claim laws of nature, natural phenomena, and abstract ideas from those
that claim patent-eligible applications of those concepts.” Alice Corp.,
134 S. Ct. at 2355. The first step in that analysis is to “determine whether
the claims at issue are directed to one of those patent-ineligible concepts.”
Id. If the claims are not directed to a patent-ineligible concept, e.g., an
abstract idea, the inquiry ends. Otherwise, the inquiry proceeds to the
second step where the elements of the claims are considered “individually
and ‘as an ordered combination”’ to determine whether there are additional
elements that “‘transform the nature of the claim’ into a patent-eligible
application.” Id. (quoting Mayo, 132 S. Ct. at 1297).
The Court acknowledged in Mayo, that “all inventions at some level
embody, use, reflect, rest upon, or apply laws of nature, natural phenomena,
or abstract ideas.” Mayo, 132 S. Ct. at 1293. We, therefore, look to whether
the claims focus on a specific means or method that improves the relevant
technology or are instead directed to a result or effect that itself is the
abstract idea and merely invoke generic processes and machinery.
See Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1336 (Fed. Cir. 2016).
Here, in rejecting the claims under 35 U.S.C. § 101, the Examiner
finds that the claims are directed to “receiving targeting data, identifying a
variable to analyze, identifying one or more independent variables,
generating a model, analyzing the model, comparing the impact from data,
and determining a compensation amount” i.e., to “a fundamental economic
practice and mathematical relationships or formulations” and, therefore, to a
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Application 13/185,969
“patent ineligible abstract idea”; and that the claims do not include
limitations that are significantly more than the abstract idea itself (Ans. 19—
20). The Examiner also directs Appellants’ attention to a number of cases,
noting that these cases include similar claims that were found by the courts
to be directed to an abstract idea {id. at 20 (citing SmartGene, Inc. v.
Advanced Biological Labs, SA, 555 F. App’x 950 (Fed. Cir. 2014); Digitech
Image Techs., LLC v. Elecs. for Imaging, Inc., 758 F.3d 1344 (Fed. Cir.
2014); Cyberfone Sys., LLC v. CNN Interactive Grp., Inc., 558 F. App’x 988
(Fed. Cir. 2014); Alice Corp. Pty. Ltd. v. CLS Bank Inti, 134 S. Ct. 2347
(2014); Bilski v. Kappos, 561 U.S. 593 (2010); buySAFE, Inc. v. Google,
Inc., 765 F.3d 1350 (Fed. Cir. 2014); Ultramercial, Inc. v. Hulu, LLC,
772 F.3d 709 (Fed. Cir. 2014))).
Appellants charge that the Examiner’s reliance on these cases is
“incorrect because the claims are significantly different” (Reply Br. 4). And
Appellants summarily assert that Example 2 of the USPTO’s 2014 Interim
Guidelines on Patent Subject Matter Eligibility (https://www.uspto.gov/sites
/default/files /documents/abstract_idea_examples.pdf), which is described as
patent-eligible, is closer to the current claims {id. at 4—5). Appellants also
charge that the steps recited in independent claims 1,12, and 19 are
“‘significantly more’ than the alleged abstract idea” {id. at 5), and that the
claims are “akin to the patent eligible claims” in DDR Holdings, LLC v.
Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014). But Appellants offer no
persuasive argument or technical reasoning to support these assertions or to
otherwise demonstrate Examiner error. Indeed, although Appellants assert,
“[t]he presently pending claims overcome technical problems related to
electronic targeting analysis and compensation” (Reply Br. 5), Appellants
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Application 13/185,969
neither identify these “technical problems” nor explain how these problems
are overcome by the pending claims.
Absent further explanation, we are not persuaded that the Examiner
erred in rejecting claims 1—5 and 7—22 under 35 U.S.C. § 101. Therefore,
we sustain the Examiner’s rejection.
Anticipation
We are persuaded by Appellants’ argument that the Examiner erred in
rejecting independent claim 19 under 35 U.S.C. § 102(e) because Ramer
does not disclose “generating a linear model for analyzing an impact of the
internal targeting data and for analyzing an impact of the external targeting
data on a conversion rate” and “comparing the impact from the external
targeting data on the conversion rate with the impact from the internal
targeting data to the conversion rate,” as recited in claim 19 (App. Br. 7—8).
Appellants do not dispute that Ramer discloses modeling targeting data {id.
at 7), and that Ramer also discloses that the targeting data include internal
data and external data provided by a third party (id. at 8). However, we
agree with Appellants that there is nothing in the cited portions of Ramer, on
which the Examiner relies (see Final Act. 21—22 (citing Ramer || 111, 1043,
1073, 1405-1412, 1425-1429, 1431-1439, 1499)), that discloses any
analysis of the external targeting data independent of the internal targeting
data or discloses that the linear regression analysis compares the impact of
external and internal targeting data, as claimed (App. Br. 8).
Therefore, we do not sustain the Examiner’s rejection of claim 19
under 35 U.S.C. § 102(e). For the same reasons, we also do not sustain the
Examiner’s rejection of claims 20 and 22, which depend from claim 19.
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Obviousness
Independent claims 1 and 12 include language substantially similar to
the language of claim 19. The rejection of claims 1 and 12 based on Flake,
in combination with Ramer, does not cure the deficiency described above
with respect to claim 19. Therefore, we do not sustain the rejection under
35 U.S.C. § 103(a) of independent claims 1 and 12, and claims 2—5, 7—11,
and 13—18, which depend therefrom, for substantially the same reasons set
forth above with respect to claim 19. For the same reasons, we also do not
sustain the Examiner’s rejection under § 103(a) of claim 21, which
ultimately depends from independent claim 19.
DECISION
The Examiner’s rejection of claims 1—5 and 7—22 under 35 U.S.C.
§112, first paragraph, is affirmed.
The Examiner’s rejection of claims 1—5 and 7—22 under 35 U.S.C.
§ 101 is affirmed.
The Examiner’s rejection of claims 19, 20, and 22 under 35 U.S.C.
§ 102(e) is reversed.
The Examiner’s rejection of claims 1—5, 7—18, and 21 under 35 U.S.C.
§ 103(a) is reversed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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