Ex Parte Gross

Patent Trials and Appeals Board

Apr 11, 2019

14103729 - (D) (P.T.A.B. Apr. 11, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/103,729 12/11/2013
23694 7590 04/15/2019
Law Office of J. Nicholas Gross, Prof. Corp.
POBOX9489
BERKELEY, CA 94709
FIRST NAMED INVENTOR
John Nicholas Gross
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
JNG.2004_08D2 1006
EXAMINER
DAGNEW, SABA
ART UNIT PAPER NUMBER
3682
NOTIFICATION DATE DELIVERY MODE
04/15/2019 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):
eofficeaction@appcoll.com
j ngross@pac bell. net
anthonygreek@gmail.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOHN NICHOLAS GROSS
Appeal2017---006447
Application 14/103,729
Technology Center 3600
Before ANTON W. PETTING, MEREDITH C. PETRA VICK, and
TARA L. HUTCHINGS, Administrative Patent Judges.
PETTING, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE 1
John Nicholas Gross (Appellant) seeks review under 35 U.S.C. § 134 of
a final rejection of claims 26-49, the only claims pending in the application
on appeal. We have jurisdiction over the appeal pursuant to
35 U.S.C. § 6(b).
1 Our decision will make reference to the Appellant's Appeal Brief ("Appeal
Br.," filed August 23, 2016) and Reply Brief ("Reply Br.," filed February
13, 2017), and the Examiner's Answer ("Ans.," mailed December 13, 2016),
and Final Action ("Final Act.," mailed July 13, 2016).
Appeal2017-006447
Application 14/103,729
The Appellant invented a way of testing, evaluating and measuring
performance of electronic recommendation systems. Specification 1: 10-12.
An understanding of the invention can be derived from a reading of
exemplary claim 39, which is reproduced below (some paragraphing added).
39. An automated method of
evaluating recommendations made by a recommender
system, which recommender includes one or more
programs executing on a computing machine and is used
for recommending items of interest to online users,
the method comprising the steps of:
(a) setting up a policy on the recommender system, which
policy is a programmed bias to be given to a set of preference
items when responding to a user request for items of a first type
from the recommender system;
(b) with a client computing device reviewing data logs
including an actual set of recommendations of items of said
first type made by the recommender system in response to a
plurality of item requests;
( c) with the client computing device, automatically comparing
said actual set of recommendations for items of said first type
made in response to said plurality of item requests to determine
an overlap with an expected set of recommendations of items of
said first type that is based on said policy favoring said set of
preference items; and
( d) automatically generating a report with the client computing
device measuring a compliance level of the recommender
system with said policy for items of said first type based on
results of step ( c ).
2
Appeal2017-006447
Application 14/103,729
The Examiner relies upon the following prior art:
Shaya US 7,809,601 B2 Oct. 5, 2010
Cho, A Personalized Recommender System Based on Web Usage
Mining and Decision Tree Induction, 23 EXPERT SYS. WITH
APPLICATIONS 329 (2002)
Huang, A Graph-Based Recommender System for Digital Library,
ACM/IEEE Joint Conference on Digital Libraries 65-73 (2002).2002.
Claims 26-49 stand rejected under the judicially created doctrine of
obviousness type double patenting as claiming patentably indistinguishable
subject matter as another U.S. Patent.
Claims 26-38 stand rejected under 35 U.S.C. § 112(a) as lacking a
supporting written description within the original disclosure.
Claims 26-49 stand rejected under 35 U.S.C. § 101 as directed to a
judicial exception without significantly more.
Claims 39 and 43--48 stand rejected under 35 U.S.C. § 102(e) as
anticipated by Cho.
Claims 26 and 31-37 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Cho and Shaya.
Claims 27-30 and 38 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Cho, Shaya, and Huang.
Claims 40--42 and 49 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Cho and Huang.
3
Appeal2017-006447
Application 14/103,729
ISSUES
The issues of obviousness type double patenting tum primarily on
whether the instant claims are patentably distinct from those in an issued
patent.
The issues of written description matter tum primarily on whether the
Specification describes the recited programmed deviation.
The issues of eligible subject matter tum primarily on whether the
claims recite more than abstract conceptual advice of results desired.
The issues of anticipation and obviousness tum primarily on whether
Cho describes the recited comparison.
FACTS PERTINENT TO THE ISSUES
The following enumerated Findings of Fact (FF) are believed to be
supported by a preponderance of the evidence.
Facts Related to the Prior Art
Cho
01. Cho is directed to a personalized recommender system based on
web usage mining and decision tree induction. Cho Title.
02. Web usage mining is the process of applying data mining
techniques to the discovery of behavior patterns based on web
data, for various applications. Cho 330:col.2, first full paragraph.
03. Cho describes its mining policy as a methodology that
recommends products based on web usage data as well as product
4
Appeal2017-006447
Application 14/103,729
purchase data and customer- related data. Cho 330:col.2, second
full paragraph.
04. Cho describes a problem definition that may result in a top N
list. Cho 333 :col. I, second full paragraph.
ANALYSIS
Claims 26--49 rejected under the judicially created doctrine of obviousness
type double patenting as claiming the patentably indistinguishable subject
matter as another U.S. Patent
We are persuaded by Appellant's argument that "claim 26 here recites
comparing actual recommendations given to users to a target set of
recommendations, which is not present in claim 1 of the '960 patent." Reply
Br. 2. As Appellant contends, the Examiner does not discuss the differences
such as this.
Claims 26--38 rejected under 35 U.S. C. § l l 2(a) as lacking a supporting
written description within the original disclosure
The Examiner determined that the limitation "the policy being associated
with a programmed deviation to be given to a content neutral
recommendation made by the recommender system" was new matter. Final
Act. 6. We are persuaded by Appellant's argument that this limitation was
supported by Specification 4: 12-14 and 22-26, and 11:2---6. The Examiner
responds that he disagrees without further analysis. These portions of the
Specification appear to describe the limitation at issue.
5
Appeal2017-006447
Application 14/103,729
Claims 26--49 rejected under 35 U.S.C. § 101 as directed to ajudicial
exception without significantly more
STEP 1i
Claim 39, as a method claim, nominally recites one of the enumerated
categories of eligible subject matter in 35 U.S.C. § 101. The issue before us
is whether it is directed to a judicial exception without significantly more.
STEP2
The Supreme Court
set forth a framework for distinguishing patents that claim laws
of nature, natural phenomena, and abstract ideas from those that
claim patent-eligible applications of those concepts. First, ...
determine whether the claims at issue are directed to one of
those patent-ineligible concepts. If so, we then ask, "[w]hat else
is there in the claims before us? To answer that question, ...
consider the elements of each claim both individually and "as
an ordered combination" to determine whether the additional
elements "transform the nature of the claim" into a patent-
eligible application. [The Court] described step two of this
analysis as a search for an "'inventive concept'"-i.e., an
element or combination of elements that is "sufficient to ensure
that the patent in practice amounts to significantly more than a
patent upon the [ineligible concept] itself."
Alice Corp., Pty. Ltd. v CLS Bank Intl, 573 U.S. 208, 217-18 (2014)
( citations omitted) ( citing Mayo Collaborative Services v. Prometheus
Laboratories, Inc., 566 U.S. 66 (2012)). To perform this test, we must first
determine what the claims are directed to. This begins by determining
2 For continuity of analysis, we adopt the steps nomenclature from 2019
Revised Patent Subject Matter Eligibility Guidance, 84 FR 50 (Jan. 7, 2019).
6
Appeal2017-006447
Application 14/103,729
whether the claims recite one of the judicial exceptions ( a law of nature, a
natural phenomenon, or an abstract idea). Then, if claims recite a judicial
exception, determining whether the claims at issue are directed to the recited
judicial exception, or whether the recited judicial exception is integrated into
a practical application of that exception, i.e., that the claims "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." 2019 Guidance at 54. If the
claims are directed to a judicial exception, then finally determining whether
the claims provide an inventive concept because the additional elements
recited in the claims provide significantly more than the recited judicial
exception.
STEP 2A Prong 1
Method claim 39 recites setting up a programmed bias, reviewing data
logs, comparing expected and actual recommendation data, and generating a
report based on the comparison. Thus, claim 39 recites generating, reading,
analyzing, modifying, and displaying data. None of the limitations recite
technological implementation details for any of these steps, but instead recite
only results desired by any and all possible means.
From this we see that claim 39 does not recite the judicial exceptions of
either natural phenomena or laws of nature.
Under Supreme Court precedent, claims directed purely to an abstract
idea are patent in-eligible. As set forth in the Revised Guidance, which
extracts and synthesizes key concepts identified by the courts, abstract ideas
7
Appeal2017-006447
Application 14/103,729
include (1) mathematical concepts3, (2) certain methods of organizing
human activity4, and (3) mental processes 5. Among those certain methods of
organizing human activity listed in the Revised Guidance are managing
personal behavior or relationships or interactions between people. Like those
concepts claim 39 recites a way of managing relationships by evaluating
them. Specifically, claim 39 recites operations that would ordinarily take
place in obtaining recommendations by setting some process bias and then
calibrating compliance of recommendations based on actual data and target
recommendations. The advice to obtain recommendations by setting some
process bias and then calibrate compliance of recommendations based on
actual data and target recommendations involves obtaining
recommendations, which is a social act, and calibrating the process, which is
a practice ordinarily performed in judging the reliability of
recommendations. For example, claim 39 recites "setting up a policy,"
which is an activity that would take place whenever one is deciding how to
3 See, e.g., Gottschalkv. Benson, 409 U.S. 63, 71-72 (1972); Bilski v.
Kappas, 561 U.S. 593, 611 (2010); Mackay Radio & Telegraph Co. v. Radio
Corp. of Am., 306 U.S. 86, 94 (1939); SAP Am., Inc. v. InvestPic, LLC, 898
F.3d 1161, 1163 (Fed. Cir. 2018).
4 See, e.g., Bilski, 561 U.S. at 628; Alice, 573 U.S. at 219-20; Ultramercial,
Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed Cir. 2014); Smart Sys.
Innovations, LLC v. Chicago Transit Auth., 873 F.3d 1364, 1383 (Fed. Cir.
2017); In re Marco Guldenaar Holding B. V., 911 F.3d 1157, 1160-61 (Fed.
Cir. 2018).
5 See, e.g., Benson, 409 U.S. at 67; CyberSource Corp. v. Retail Decisions,
Inc., 654 F.3d 1366, 1371-72 (Fed. Cir. 2011); Intellectual Ventures I LLC
v. Symantec Corp., 838 F.3d 1307, 1318 (Fed. Cir. 2016).
8
Appeal2017-006447
Application 14/103,729
do something generic, such as elicit recommendations. Similarly, claim 1
recites "reviewing data logs including an actual set of recommendations of
items" and "comparing said actual set of recommendations," which are also
characteristics of judging the reliability of recommendations.
The Examiner determines the claims to be directed to testing, evaluating,
and measuring performance of recommendation systems. Final Act. 7.
The preamble to claim 39 recites that it is a method of evaluating
recommendations made by a recommender system. The steps in claim 39
result in generating a report measuring a compliance level of a recommender
system with a policy absent any technological mechanism other than a
conventional computer for doing so.
As to the specific limitations, limitations a, b, and d recite insignificant
setting up, analyzing, modifying, and reporting of recommendation data,
which advise one to apply generic functions to get to these results.
Limitation c is the only step associated with performing what the claim
produces and recites comparing a set of recommendations against another
set, which is simply data comparison. The limitations thus recite advice for
setting some process bias and then calibrating compliance of
recommendations based on actual data and target recommendations. To
advocate setting some process bias and then calibrating compliance of
recommendations based on actual data and target recommendations is
conceptual advice for results desired and not technological operations.
The Specification at 1: 10-12 recites that the invention relates to testing,
evaluating and measuring performance of electronic recommendation
systems. Thus, all this intrinsic evidence shows that claim 39 is directed to
9
Appeal2017-006447
Application 14/103,729
testing, evaluating and measuring performance of electronic
recommendation systems, i.e. obtaining recommendations by setting some
process bias and then calibrating compliance of recommendations based on
actual data and target recommendations. This is consistent with the
Examiner's determination.
This in tum is an example of managing personal behavior or relationships
or interactions between people as a certain method of organizing human
activity because obtaining recommendations is a significant social activity.
The concept of obtaining recommendations by setting some process bias and
then calibrating compliance of recommendations based on actual data and
target recommendations is a way of evaluating the efficacy of such
interactions. The steps recited in claim 39 are part of a way of calibrating
the quality of recommendations brought about by such interactions.
Our reviewing court has found claims to be directed to abstract ideas
when they recited similar subject matter. Content Extraction and
Transmission LLC v. Wells Fargo Bank, 776 F.3d 1343, 1347 (2014)
(recognizing data within a collection); CyberSource Corp. v. Retail
Decisions, Inc., 654 F.3d 1366, 1375 (Fed. Cir. 2011) (claims linked only to
a general purpose computer of detecting fraud based on past transactions).
Alternately, this is an example of concepts performed in the human mind
as mental processes because the steps of generating, reading, analyzing,
modifying, and displaying data mimic human thought processes of
observation, evaluation, judgment, and opinion, perhaps with paper and
pencil, where the data interpretation is perceptible only in the human mind.
See In re TL! Commc 'ns LLC Patent Litig., 823 F.3d 607, 611 (Fed. Cir.
10
Appeal2017-006447
Application 14/103,729
2016); FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1093-94
(Fed. Cir. 2016). Claim 39, unlike the claims found non-abstract in prior
cases, uses generic computer technology to perform data generation,
reading, analysis, modification, and display and does not recite an
improvement to a particular computer technology. See, e.g., McRO, Inc. v.
Bandai Namco Games Am. Inc., 837 F.3d 1299, 1314--15 (Fed. Cir. 2016)
( finding claims not abstract because they "focused on a specific asserted
improvement in computer animation"). As such, claim 39 is directed to
generating, reading, analyzing, modifying, and displaying data, and not a
technological implementation or application of that idea.
From this we conclude that at least to this degree, claim 39 is directed to
obtaining recommendations by setting some process bias and then
calibrating compliance of recommendations based on actual data and target
recommendations.
STEP 2A Prong 2
The next issue is whether claim 39 not only recites, but is more precisely
directed to this concept itself or whether it is instead directed to some
technological implementation or application of, or improvement to, this
concept i.e. integrated into a practical application. 6
At the same time, we tread carefully in construing this
exclusionary principle lest it swallow all of patent law. At some
level, "all inventions ... embody, use, reflect, rest upon, or apply
laws of nature, natural phenomena, or abstract ideas." Thus, an
6 See, e.g., Alice, 573 U.S. at 223, discussing Diamond v. Diehr, 450 U.S.
175 (1981).
11
Appeal2017-006447
Application 14/103,729
invention is not rendered ineligible for patent simply because it
involves an abstract concept. "[ A ]pplication[ s ]" of such
concepts " 'to a new and useful end,' " we have said, remain
eligible for patent protection. Accordingly, in applying the§
101 exception, we must distinguish between patents that claim
the " 'buildin[g] block[ s]' " of human ingenuity and those that
integrate the building blocks into something more.
Alice, 573 U.S. at 217 ( citations omitted).
Taking the claim elements separately, the operation performed by the
computer at each step of the process is expressed purely in terms of results,
devoid of implementation details. Steps a and b are pure data gathering
steps. Limitations describing the nature of the data do not alter this. Step d
is insignificant post solution activity, such as storing, transmitting, or
displaying the results. Step c recites generic computer processing expressed
in functional terms to be performed by any and all possible means and so
presents no more than conceptual advice. All purported inventive aspects
reside in how the data is interpreted and the results desired, and not in how
the process physically enforces such a data interpretation or in how the
processing technologically achieves those results.
Viewed as a whole, Appellants' claim 39 simply recites the concept of
obtaining recommendations by setting some process bias and then
calibrating compliance of recommendations based on actual data and target
recommendations as performed by a generic computer. This is no more than
conceptual advice on the parameters for this concept and the generic
computer processes necessary to process those parameters, and do not recite
any particular implementation.
12
Appeal2017-006447
Application 14/103,729
Claim 39 does not, for example, purport to improve the functioning of the
computer itself. Nor does it effect an improvement in any other technology
or technical field. The 24 pages of specification spell out different generic
equipment 7 and parameters that might be applied using this concept and the
particular steps such conventional processing would entail based on the
concept of obtaining recommendations by setting some process bias and
then calibrating compliance of recommendations based on actual data and
target recommendations under different scenarios. They do not describe any
particular improvement in the manner a computer functions. Instead, claim
39 at issue amounts to nothing significantly more than an instruction to
apply obtaining recommendations by setting some process bias and then
calibrating compliance of recommendations based on actual data and target
recommendations using some unspecified, generic computer. Under our
precedents, that is not enough to transform an abstract idea into a patent-
eligible invention. See Alice, 573 U.S. at 225-26.
None of the limitations reflect an improvement in the functioning of a
computer, or an improvement to other technology or technical field, applies
or uses a judicial exception to effect a particular treatment or prophylaxis for
a disease or medical condition, implements a judicial exception with, or uses
a judicial exception in conjunction with, a particular machine or manufacture
that is integral to the claim, effects a transformation or reduction of a
particular article to a different state or thing, or applies or uses the judicial
7 The Specification broadly describes using client systems and large scale
computing systems. Spec. 24: 19-23.
13
Appeal2017-006447
Application 14/103,729
exception in some other meaningful 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.
We conclude that claim 39 is directed to achieving the result of obtaining
recommendations by setting some process bias and then calibrating
compliance of recommendations based on actual data and target
recommendations as distinguished from a technological improvement for
achieving or applying that result. The claim does not integrate the judicial
exception into a practical application.
STEP 2B
The next issue is whether claim 39 provides an inventive concept
because the additional elements recited in the claim provide significantly
more than the recited judicial exception.
The introduction of a computer into the claims does not generally alter
the analysis at Mayo step two.
the mere recitation of a generic computer cannot transform a
patent-ineligible abstract idea into a patent-eligible invention.
Stating an abstract idea "while adding the words 'apply it'" is
not enough for patent eligibility. Nor is limiting the use of an
abstract idea "'to a particular technological environment."'
Stating an abstract idea while adding the words "apply it with a
computer" simply combines those two steps, with the same
deficient result. Thus, if a patent's recitation of a computer
amounts to a mere instruction to "implement[t]" an abstract
idea "on ... a computer," that addition cannot impart patent
eligibility. This conclusion accords with the preemption
concern that undergirds our § 101 jurisprudence. Given the
ubiquity of computers, wholly generic computer
implementation is not generally the sort of "additional
14
Appeal2017-006447
Application 14/103,729
feature[ e ]" that provides any "practical assurance that the
process is more than a drafting effort designed to monopolize
the [ abstract idea] itself."
Alice, 573 U.S. at 223-24 (citations omitted).
"[T]he relevant question is whether the claims here do more than simply
instruct the practitioner to implement the abstract idea [] on a generic
computer." Alice, 573 U.S. at 225. They do not.
Taking the claim elements separately, the function performed by the
computer at each step of the process is purely conventional. Using a
computer for generating, reading, analyzing, modifying, and displaying data
amounts to electronic data query and retrieval----one of the most basic
functions of a computer. All of these computer functions are generic,
routine, conventional computer activities that are performed only for their
conventional uses. See Elec. Power Grp. v. Alstom S.A., 830 F.3d 1350,
1353 (Fed. Cir. 2016). Also see In re Katz Interactive Call Processing
Patent Litigation, 639 F.3d 1303, 1316 (Fed. Cir. 2011) ("Absent a possible
narrower construction of the terms 'processing,' 'receiving,' and 'storing,' ..
. those functions can be achieved by any general purpose computer without
special programming"). None of these activities are used in some
unconventional manner nor do any produce some unexpected result.
Appellants do not contend they invented any of these activities. In short,
each step does no more than require a generic computer to perform generic
computer functions. As to the data operated upon, "even if a process of
collecting and analyzing information is 'limited to particular content' or a
particular 'source,' that limitation does not make the collection and analysis
15
Appeal2017-006447
Application 14/103,729
other than abstract." SAP America, Inc. v. InvestPic LLC, 898 F.3d 1161,
1168 (Fed. Cir. 2018).
Considered as an ordered combination, the computer components of
Appellants' claim 39 add nothing that is not already present when the steps
are considered separately. The sequence of data generation-reading-
analysis-modification-display is equally generic and conventional. 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), Inventor Holdings,
LLC v. Bed Bath & Beyond, Inc., 876 F.3d 1372, 1378 (Fed. Cir. 2017)
(sequence of data retrieval, analysis, modification, generation, display, and
transmission), Two-Way Media Ltd. v. Comcast Cable Communications,
LLC, 874 F.3d 1329, 1339 (Fed. Cir. 2017) (sequence of processing, routing,
controlling, and monitoring). The ordering of the steps is therefore ordinary
and conventional.
We conclude that claim 39 does not provide an inventive concept
because the additional elements recited in the claim do not provide
significantly more than the recited judicial exception.
REMAINING CLAIMS
Claim 39 is representative. The other independent method claim 26 is
substantially similar at least as regards this analysis. The remaining method
claims merely describe process parameters. We conclude that the method
claims at issue are directed to a patent-ineligible concept itself, and not to
the practical application of that concept.
As to the structural claims, they
16
Appeal2017-006447
Application 14/103,729
are no different from the method claims in substance. The
method claims recite the abstract idea implemented on a generic
computer; the system claims recite a handful of generic
computer components configured to implement the same idea.
This Court has long "warn[ ed] ... against" interpreting § 101 "in
ways that make patent eligibility 'depend simply on the
draftsman's art. '
Alice, 573 U.S. at 226. As a corollary, the claims are not directed to any
particular machine.
LEGAL CONCLUSION
From these determinations we further determine that the claims do not
recite an improvement to the functioning of the computer itself or to any
other technology or technical field, a particular machine, a particular
transformation, or other meaningful limitations. From this we conclude the
claims are directed to the judicial exception of the abstract idea of certain
methods of organizing human activity as exemplified by obtaining
recommendations by setting some process bias and then calibrating
compliance of recommendations based on actual data and target
recommendations, without significantly more.
APPELLANTS' ARGUMENTS
As to Appellant's Appeal Brief arguments, we adopt the Examiner's
determinations and analysis from Final Action 7-8 and Answer 4--7 and
reach similar legal conclusions. We now tum to the Reply Brief.
We are not persuaded by Appellant's argument that
the Examiner presents no hint let alone a rational explanation or
argument of how a claim directed to an "automated method of
evaluating recommendations made by a recommender system"
is any shape or form related to "organizing human activity."
17
Appeal2017-006447
Application 14/103,729
There is no "human" activity described in the claim, except in
the context that it is humans who receive the recommendations
output by the recommender system being analyzed.
Reply Br. 4. The Examiner determines that the claim does no more than
automate the known manual activity of evaluating some system parameter,
in this case system bias. Systems existed far prior to the advent of
computers and their evaluation even then was necessary for proof of
concept. Appellant's contention is that because the claim recites doing so in
a computer context, it is not a human activity. But simply automating an
abstract idea does not make it less abstract. "Relying on a computer to
perform routine tasks more quickly or more accurately is insufficient to
render a claim patent eligible." OIP Technologies, Inc. v. Amazon.com,
Inc., 788 F.3d 1359, 1363 (2015).
We are not persuaded by Appellant's argument that "the Office has not
and cannot properly identify a judicially impermissible abstract idea in the
claims." Reply Br., id. As we determine supra, the claims are directed to
testing, evaluating and measuring performance of electronic
recommendation systems, i.e. system evaluation. "Without additional
limitations, a process that employs mathematical algorithms to manipulate
existing information to generate additional information is not patent
eligible." Digitech Image Technologies, LLC v. Electronics for Imaging,
Inc., 758 F.3d 1344, 1351 (2014).
Appellant further argues that the asserted claims are akin to the
claims found patent-eligible in DDR Holdings, LLC v. Hotels.com, L.P.
773 F.3d 1245 (Fed. Cir. 2014). Reply Br. 4-5. In DDR Holdings, the
Court evaluated the eligibility of claims "address[ing] the problem of
18
Appeal2017-006447
Application 14/103,729
retaining website visitors that, if adhering to the routine, conventional
functioning of Internet hyperlink protocol, would be instantly
transported away from a host's website after 'clicking' on an
advertisement and activating a hyperlink." Id. at 1257. There, the Court
found that the claims were patent eligible because they transformed the
manner in which a hyperlink typically functions to resolve a problem
that had no "pre-Internet analog." Id. at 1258. The Court cautioned,
however, "that not all claims purporting to address Internet-centric
challenges are eligible for patent." Id. For example, in DDR Holdings
the Court distinguished the patent-eligible claims at issue from claims
found patent-ineligible in Ultramercial. See id. at 1258-59 (citing
Ultramercial, 772 F.3d 709, 715-16 (Fed. Cir. 2014)). As noted there,
the Ultramercial claims were "directed to a specific method of advertising
and content distribution that was previously unknown and never
employed on the Internet before." Id. at 1258 (quoting Ultramercial, 772
F.3d at 715-16). Nevertheless, those claims were patent ineligible
because they "merely recite[d] 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."' Id.
Appellant's asserted claims are analogous to claims found ineligible in
Ultramercial and distinct from claims found eligible in DDR Holdings.
The ineligible claims in Ultramercial recited "providing [a] media product
for sale at an Internet website;" "restricting general public access to said
19
Appeal2017-006447
Application 14/103,729
media product;" "receiving from the consumer a request to view [a]
sponsor message;" and "if the sponsor message is an interactive message,
presenting at least one query to the consumer and allowing said consumer
access to said media product after receiving a response to said at least one
query." 772 F.3d at 712. Similarly, Appellant's asserted claims recite
generating, reading, analyzing, modifying, and displaying data. This is
precisely the type of activity found ineligible in Ultramercial.
We are not persuaded by Appellant's argument that the claims contain
an inventive concept that is also found in the specific ordered combination
of the limitations, similar to the Federal Circuit's findings in BASCOM
(Bascom Global Internet v. AT&T Mobility LLC, 827 F.3d 1341 (Fed. Cir.
2016)). Reply Br. 5. Initially, we remind Appellant that Bascom did not
find claims eligible on the substance, but rather that the Appellees did not
provide sufficient evidence to support a 12(b )( 6) motion to dismiss in which
facts are presumed in the non-movant's favor.
The key fact in Bascom was the presence of a structural change in
"installation of a filtering tool at a specific location, remote from the end-
users, with customizable filtering features specific to each end user. This
design gives the filtering tool both the benefits of a filter on a local computer
and the benefits of a filter on the ISP server." Bascom, 827 F.3d at 1350.
The instant claims have no analogous structural benefit.
Claims 39 and 43--48 rejected under 35 U.S.C. § 102(e) as anticipated by
Cho
20
Appeal2017-006447
Application 14/103,729
We are persuaded by Appellant's argument that Cho fails to describe
"automatically comparing said actual set of recommendations for items of
said first type made in response to said plurality of item requests to
determine an overlap with an expected set of recommendations of items."
Claim 39; Reply Br. 7-8.
The Examiner cites Cho 333 as describing the creation of a top N list
and then comparing that to some other list. Ans. 9. The problem for the
Examiner is that this portion of Cho describes a process that results in, rather
than begins with, such a top N list. What the Examiner refers to as a
comparison, Cho describes as defining the very problem itself prior to
creating a top N list. Cho 333.
Claims 26 and 31-37 rejected under 35 U.S.C. § 103(a) as unpatentable
over Cho and Shaya
We are persuaded by Appellant's argument that the Examiner makes the
same erroneous determination here as in the anticipation rejection. The
Examiner applies Shaya only for a programmed deviation, and not for the
comparison we discussed in the anticipation rejection that is claimed, but not
described by Cho.
Claims 27-30 and 38 rejected under 35 U.S.C. § 103(a) as unpatentable
over Cho, Shaya, and Huang
These are dependent claims, and so the arguments apply here as well.
21
Appeal2017-006447
Application 14/103,729
Claims 40---42 and 49 rejected under 35 U.S.C. § 103(a) as unpatentable
over Cho and Huang
These are dependent claims, and so the arguments apply here as well.
CONCLUSIONS OF LAW
The rejection of claims 26-49 under the judicially created doctrine of
obviousness type double patenting as claiming the patentably
indistinguishable subject matter as another U.S. Patent is improper.
The rejection of claims 26-38 under 35 U.S.C. § 112(a) as lacking a
supporting written description within the original disclosure is improper.
The rejection of claims 26-49 under 35 U.S.C. § 101 as directed to a
judicial exception without significantly more is proper.
The rejection of claims 39 and 43--48 under 35 U.S.C. § 102(e) as
anticipated by Cho is improper.
The rejection of claims 26 and 31-37 under 35 U.S.C. § 103(a) as
unpatentable over Cho and Shaya is improper.
The rejection of claims 27-30 and 38 under 35 U.S.C. § 103(a) as
unpatentable over Cho, Shaya, and Huang is improper.
The rejection of claims 40--42 and 49 under 35 U.S.C. § 103(a) as
unpatentable over Cho and Huang is improper.
DECISION
The rejection of claims 26-49 is affirmed.
22
Appeal2017-006447
Application 14/103,729
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)(l)(iv) (2011).
AFFIRMED
23