Ex Parte Hangartner

Patent Trial and Appeal Board

Aug 7, 2017

12347958 (P.T.A.B. Aug. 7, 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.
4860P12253 2012
EXAMINER
OUELLETTE, JONATHAN P
ART UNIT PAPER NUMBER
3629
MAIL DATE DELIVERY MODE
12/347,958 12/31/2008 Rick Hangartner
45217 7590 08/08/2017
APPLE INC./BSTZ
BLAKELY SOKOLOFF TAYLOR & ZAFMAN LLP
1279 OAKMEAD PARKWAY
SUNNYVALE, CA 94085-4040
08/08/2017 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 RICK HANGARTNER
Appeal 2016-004427
Application 12/347,958
Technology Center 3600
Before LARRY J. HUME, JUSTIN BUSCH, and
STEVEN M. AMUNDSON, Administrative Patent Judges.
AMUNDSON, Administrative Patent Judge.
DECISION ON APPEAL
Appellant1 seeks our review under 35 U.S.C. § 134(a) from a final
rejection of claims 1—40, i.e., all pending claims. We have jurisdiction under
35 U.S.C. § 6(b).
We affirm.
STATEMENT OF THE CASE
The Invention
According to the Specification, the invention concerns “systems and
methods for making recommendations using model-based collaborative
1 Appellant identifies the real party in interest as Apple, Inc. App. Br. 1.
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Application 12/347,958
filtering with user communities and items collections.” Spec, 2, 5.2 The
Specification explains that, “[f]or example, a recommender engine may
recommend books to a user based on books purchased by other users having
similar book purchasing histories.” Id. 114.
Exemplary Claim
Independent claim 1 exemplifies the subject matter of the claims
under consideration and reads as follows:
1. A computer-implemented method, comprising:
programming one or more processors to:
access a list of users stored in one or more user
databases and a list of items stored in one or more item
databases;
construct user communities of two or more users
having an association between pairs of users, each user
having a conditional probability calculated for each user
community using an adaptive expectation maximization
(EM) algorithm, the conditional probability for the user
representing a probability that the corresponding user
community is representative of the user;
construct item collections of two or more items
having an association between pairs of items, each item
having a conditional probability calculated for each item
collection using the adaptive EM algorithm, the
conditional probability for the item representing a
probability that the item is a member of the
corresponding item collection;
estimate associations between the user
communities and the item collections using the adaptive
2 This decision uses the following abbreviations: “Spec.” for the
Specification, filed December 31, 2008; “Final Act.” for the Final Office
Action, mailed April 17, 2015; “App. Br.” for the Appeal Brief, filed
September 21, 2015; “Ans.” for the Examiner’s Answer, mailed January 15,
2016; and “Reply Br.” for the Reply Brief, filed March 15, 2016.
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EM algorithm to calculate association distributions
between users in a user community and items in an item
collection based on the conditional probability for each
user in a user community, the conditional probability for
each item in an item collection, and user-item triples
comprising a user, an item, and a seed value, wherein
each association distribution represents a probability that
the items in a particular item collection are of interest to
the users in a particular user community, and wherein the
adaptive EM algorithm extends a basic two step EM
algorithm with two initial steps to perform multiple
concurrent calculations of the conditional probabilities
and association distributions;
provide one or more recommendations responsive
to estimating the associations; and
displaying the one or more recommendations on a
display.
App. Br. 11 (Claims App.).
The Rejection on Appeal
Claims 1—40 stand rejected under 35 U.S.C. § 101 as directed to
non-statutory subject matter. Final Act. 2—3; Ans. 3.
ANALYSIS
We have reviewed the rejection of claims 1—40 in light of Appellant’s
arguments the Examiner erred. For the reasons explained below, we
disagree with Appellant’s assertions regarding error by the Examiner. We
concur with the Examiner’s conclusion that the claims recite patent-
ineligible subject matter under § 101. We adopt the Examiner’s findings
and reasoning in the Final Office Action (Final Act. 2—3) and Answer (Ans.
3—4). We add the following to address and emphasize specific findings and
arguments.
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The §101 Rejection of Claims 1—40
Introduction
The Patent Act defines patent-eligible subject matter broadly:
“Whoever invents or discovers any new and useful process, machine,
manufacture, or composition of matter, or any new and useful improvement
thereof, may obtain a patent therefor, subject to the conditions and
requirements of this title.” 35 U.S.C. § 101. In Mayo Collaborative
Services v. Prometheus Laboratories, Inc., 566 U.S. 66, 70 (2012), and Alice
Corp. v. CLS Bank International, 134 S. Ct. 2347, 2354 (2014), the Supreme
Court explained that § 101 “contains an important implicit exception” for
laws of nature, natural phenomena, and abstract ideas. See Diamond v.
Diehr, 450 U.S. 175, 185 (1981). In Mayo and Alice, the Court set forth a
two-step analytical framework for evaluating patent-eligible subject matter:
First, “determine whether the claims at issue are directed to” a patent-
ineligible concept, such as an abstract idea. Alice, 134 S. Ct. at 2355. If so,
“consider the elements of each claim both individually and ‘as an ordered
combination’ to determine whether the additional elements” add enough to
transform the “nature of the claim” into “significantly more” than a patent-
ineligible concept. Id. (quoting Mayo, 566 U.S. at 79); see Affinity Labs of
Tex., LLCv. DIRECTV, LLC, 838 F.3d 1253, 1257 (Fed. Cir. 2016).
Step one in the Mayo!Alice framework involves looking at the “focus”
of the claims at issue and their “character as a whole.” Elec. Power Grp.,
LLC v. Alstrom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016). Step two
involves the search for an “inventive concept.” Alice, 134 S. Ct. at 2355;
Elec. Power Grp., 830 F.3d at 1353. For an “inventive concept,” “more is
required than ‘well-understood, routine, conventional activity already
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engaged in’” by the relevant community. Rapid Litig. Mgmt. Ltd. v.
CellzDirect, Inc., 827 F.3d 1042, 1047 (Fed. Cir. 2016) (quoting Mayo,
566 U.S. at 79-80).
A Prima Facie Case of Unpatentability
Appellant argues the Examiner erred in rejecting independent claim 1
under § 101 because the Examiner has not satisfied “the burden of
establishing a prima facie case by clearly articulating the reasoning behind
the rejection.” App. Br. 3. In particular, Appellant contends “[t]he
Examiner has failed to clearly articulate how the two-part [Mayo/Alice] test
has been applied to claim 1.” Id. at 5. In addition, Appellant contends “the
Examiner has provided no evidence of record supporting the conclusion that
the stated idea is ‘abstract.’” Id. Also, Appellant asserts “[t]he Examiner
has failed to properly construe claim 1 ” before analyzing it under the
Mayo!Alice framework because the Examiner accorded no weight to the
limitation “the adaptive EM algorithm extends a basic two step EM
algorithm with two initial steps to perform multiple concurrent calculations
of the conditional probabilities and association distributions.” Id.
Appellant’s arguments do not persuade us of Examiner error. The
Federal Circuit has repeatedly explained that “the prima facie case is merely
a procedural device that enables an appropriate shift of the burden of
production.” Hyatt v. Dudas, 492 F.3d 1365, 1369 (Fed. Cir. 2007) (citing
In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992)). The “PTO carries its
procedural burden of establishing a prima facie case when its rejection
satisfies 35 U.S.C. § 132, in ‘notifying] the applicant. . . [by] stating the
reasons for [its] rejection, or objection or requirement, together with such
information and references as may be useful in judging of the propriety of
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continuing the prosecution of [the] application.’” In re Jung, 637 F.3d 1356,
1362 (Fed. Cir. 2011) (quoting 35 U.S.C. § 132) (alterations in original).
The PTO violates § 132 “when a rejection is so uninformative that it
prevents the applicant from recognizing and seeking to counter the grounds
for rejection.” Chester v. Miller, 906 F.2d 1574, 1578 (Fed. Cir. 1990). But
if the PTO “adequately explain[s] the shortcomings it perceives . . . the
burden shifts to the applicant to rebut the prima facie case with evidence
and/or argument.” Hyatt, 492 F.3d at 1370.
We conclude the Final Office Action adequately explains the § 101
rejection. The Examiner determined “the claims are directed towards the
concept of associating items/products with users.” Final Act. 2. The
Examiner reasoned that “[pjroduct association is considered a fundamental
business practice and is simply a series of mathematical formulations,
therefore the claims are drawn to an abstract idea.” Id. The Examiner then
determined:
The claims do not recite limitations that are “significantly
more” than the abstract idea because the claims do not recite an
improvement to another technology or technical field, an
improvement to the functioning of the computer itself, or
meaningful limitations beyond generally linking the use of an
abstract idea to a particular technological environment. The
limitations are merely instructions to implement the abstract
idea on a computer and require no more than a generic
computer to perform generic computer functions that are well-
understood, routine and conventional activities previously
known to the industry.
Final Act. 2—3. The Examiner’s statements satisfy § 132 because they apply
the Mayo!Alice two-step analytical framework and apprise Appellant of the
reasons for the § 101 rejection under that analysis. As discussed in more
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detail below, Appellant recognizes the Examiner’s MayolAlice analysis and
presents arguments regarding each step. See App. Br. 6—8. Appellant does
not respond by alleging a failure to understand the rejection. Id. at 3—8.
Appellant’s contention concerning the absence of evidence supporting
the § 101 rejection does not persuade us of Examiner error. “Patent
eligibility under § 101 presents an issue of law.” Accenture Glob. Servs.,
GmbHv. Guidewire Software, Inc., 728 F.3d 1336, 1340 (Fed. Cir. 2013).
There is no requirement that an examiner cite evidentiary support to
conclude that a claim is directed to a patent-ineligible concept, such as an
abstract idea. Appellant cites the “2014 Interim Guidance on Patent Subject
Matter Eligibility,” 79 Fed. Reg. 74618 (Dec. 16, 2014) (“2014 Guidance”)
and the “July 2015 Update: Subject Matter Eligibility” (“2015 Update”).
App. Br. 3^4. The 2015 Update notes that “courts do not rely on evidence
that a claimed concept is a judicial exception, and in most cases resolve the
ultimate legal conclusion on eligibility without making any factual
findings.” 2015 Update 6. Further, it instructs that a § 101 rejection may
rest on “the knowledge generally available to those in the art, on the case
law precedent, on applicant’s own disclosure, or on evidence.” Id.
Appellant’s assertion that “[t]he Examiner has failed to properly
construe claim 1” before analyzing it under the Mayol Alice framework does
not persuade us of Examiner error. The Examiner’s determination that “the
claims are directed towards the concept of associating items/products with
users” encompasses the limitation “the adaptive EM algorithm extends a
basic two step EM algorithm with two initial steps to perform multiple
concurrent calculations of the conditional probabilities and association
distributions.” Final Act. 2. That limitation works with the “access,”
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“construct,” and “calculate” limitations to “estimate associations between
the user communities and the item collections.” App. Br. 11 (claim 1).
Appellant also argues the Examiner erred in rejecting claim 1 under
§101 because “Examiners [sic] rejections are limited to the examples
provided in” the 2014 Guidance and the 2015 Update and “the Examiner has
failed to show that claim 1 is similar to any of’ those examples. App. Br. 4,
6—7. We disagree. The 2014 Guidance explains that the examples of
“concepts courts have found to be” laws of nature, natural phenomena, and
abstract ideas “are intended to be illustrative and not limiting.” 79 Fed. Reg.
at 74622. The 2015 Update provides additional “illustrative” examples to
“assist examiners and the public in applying the principles” in the
2014 Guidance. 2015 Update 1.
Mayo/Alice Step One
Appellant asserts the Examiner erred in rejecting claim 1 under § 101
because “the Examiner’s characterization of claim 1 as directed to the
abstract idea of product association improperly strips claim 1 of its tangible
limitations and fails to read the claim as a whole.” App. Br. 8. We disagree.
Claim 1 is directed to the abstract idea of collecting, manipulating, and
displaying data to associate items with users. See Ans. 3^4. A method
according to claim 1 collects item data and user data, manipulates that data
“using an adaptive expectation maximization (EM) algorithm,” and displays
a recommendation based on associations derived from the item data and the
user data. App. Br. 11 (claim 1). For example, the method “may
recommend books to a user based on books purchased by other users having
similar book purchasing histories.” Spec. 114. The Federal Circuit has
ruled that claims covering the collection, manipulation, and display of data
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were directed to abstract ideas. See, e.g., Credit Acceptance Corp. v.
Westlake Servs., 859 F.3d 1044, 1047, 105A-56 & n.6 (Fed. Cir. 2017);
Intellectual Ventures ILLC v. Capital One Fin. Corp., 850 F.3d 1332,
1339-40 (Fed. Cir. 2017); Elec. Power Grp., 830 F.3d at 1351-54. The
Federal Circuit has similarly ruled that claims covering the transformation of
information in one form (“a functional description of a logic circuit”) into
another form (“a hardware component description of the logic circuit”) were
directed to abstract ideas. Synopsys, Inc. v. Mentor Graphics Corp.,
839 F.3d 1138, 1139, 1150-51 (Fed. Cir. 2016).
Mayo!Alice Step Two
Appellant asserts the Examiner erred in rejecting claim 1 under § 101
because “the Examiner has improperly determined that claim 1 fails to
contain ‘significantly more.’” App. Br. 8. Based on the limitation “the
adaptive EM algorithm extends a basic two step EM algorithm with two
initial steps to perform multiple concurrent calculations of the conditional
probabilities and association distributions,” Appellant contends claim 1 “is
directed toward improving numerical computation and is not a conventional
use of a computer for a routine function, nor the use of a computer in a
generic manner.” Id. at 8—9. In addition, Appellant contends “the claimed
adaptive EM algorithm as multiple concurrent calculations . . . improves
existing computer technology” by “allowing] for more efficient use of
processing resources and also reducing] the overall amount of processing
time.” Id. at 9; Reply Br. 2.
Appellant’s arguments do not persuade us of Examiner error. As
additional elements, claim 1 recites generic computer components: (1) “one
or more processors,” (2) “one or more user databases,” (3) “one or more
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item databases,” and (4) “a display.” App. Br. 11 (claim 1). Claim 1 uses
those generic computer components in a customary manner, i.e., to store,
retrieve, manipulate, and display data. Id.', see Spec. Tflf 123, 125, 127, 129.
“[T]he mere recitation of a generic computer cannot transform a patent-
ineligible abstract idea into a patent-eligible invention.” Alice, 134 S. Ct.
at 2358. Considered individually and as an ordered combination, the
additional elements in claim 1 do not transform the “nature of the claim”
into “significantly more” than a patent-ineligible abstract idea. Ans. 4.
Without sufficient additional elements, “a process that employs
mathematical algorithms to manipulate existing information to generate
additional information is not patent eligible.” Digitech Image Techs., LLC v.
Elecs. for Imaging, Inc., 758 F.3d 1344, 1351 (Fed. Cir. 2014).
Although Appellant alleges claim 1 “improves existing computer
technology” by using “the claimed adaptive EM algorithm” in a particular
manner, Appellant does not cite any portion of the Specification as support.
App. Br. 9; Reply Br. 2. Instead of improving how a computer operates
when running all kinds of software, the alleged improvement relates to
“estimat[ing] associations between the user communities and the item
collections” in a recommender engine. App. Br. 9, 11 (claim 1); Reply
Br. 2 ; see Spec. ]Hf 2—5, 14, Abstract. Thus, the alleged improvement relates
to the speed of the estimation process in a recommender engine. Appellant
does not explain how the alleged improvement increases efficiency or
decreases processing time outside that specific context. App. Br. 8—9; Reply
Br. 2. “[Limiting an abstract idea to one field of use” does not impart
patent eligibility. See Bilski v. Kappos, 561 U.S. 593, 612 (2010); see also
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Parker v. Flook, 437 U.S. 584, 589—90 (1978); Affinity Labs of Tex., LLC v.
DIRECTV, LLC, 838 F.3d 1253, 1259 (Fed. Cir. 2016).
Based on the absence of anticipation and obviousness rejections,
Appellant asserts “claim 1 recites an inventive concept and thus must be
found to provide ‘significantly more’ than the abstract idea.” Reply Br. 1—2.
But “under the Mayo!Alice framework, a claim directed to a newly
discovered law of nature (or natural phenomenon or abstract idea) cannot
rely on the novelty of that discovery for the inventive concept necessary for
patent eligibility.” Genetic Techs. Ltd. v. MerialL.L.C., 818 F.3d 1369,
1376 (Fed. Cir. 2016); see Synopsys, 839 F.3d at 1151 (noting “a claim for a
new abstract idea is still an abstract idea”). Further, the Federal Circuit has
expressly rejected the notion that “abstract ideas remain patent-eligible
under § 101 as long as they are new ideas not previously well known, and
not routine activity.” Ultramercial, Inc. v. Hulu LLC, 772 F.3d. 709, 714—16
(Fed. Cir. 2014).
Appellant argues claim 1 is “patentable for the same reasons the
claims in examples 3 and 4 [in the 2014 Guidance] were found patentable.”
Reply. Br. 2. Example 3 concerns representative claim 1 from Diamond v.
Diehr. 79 Fed. Reg. at 74626; see Diamond, 450 U.S. at 179 n.5. The 2014
Guidance notes that “in addition to the mathematical formula” included in
the claim, the “claimed steps act[ed] in concert to transform raw, uncured
rubber to cured molded rubber.” 79 Fed. Reg. at 74626; see Diamond,
450 U.S. at 184 (explaining the “claims involve the transformation of an
article, in this case raw, uncured synthetic rubber, into a different state or
thing”). In contrast, claim 1 here does not include steps producing an
analogous change in a physical object. App. Br. 11 (claim 1). Example 4
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concerns representative claim 1 from Parker v. Flook. 79 Fed. Reg.
at 74627; see Parker, 437 U.S. at 596—97. The 2014 Guidance notes that
“the claim as a whole does not provide significantly more than a generic
computer upon which the claimed formula is calculated” and is not patent
eligible. 79 Fed. Reg. at 74627; see Parker, 437 U.S. at 595—96.
Summary for Independent Claim 1
For the reasons discussed above, Appellant’s arguments have not
persuaded us the Examiner erred in rejecting claim 1 under § 101. Hence,
we sustain the rejection of claim 1.
Dependent Claims 2-40
Appellant does not make any separate substantive patentability
arguments for dependent claims 2 40. App. Br. 3—9; Reply Br. 1—2.
Because Appellant does not argue the claims separately, we sustain the
§101 rejection of claims 2^40 for the same reasons as claim 1. See
37C.F.R. §41.37(c)(l)(iv).
DECISION
We affirm the Examiner’s decision to reject claims 1—40.
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). See
37 C.F.R. §41.50(f).
AFFIRMED
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