Ex Parte Hook et al

Patent Trials and Appeals Board

Apr 30, 2019

12700728 - (D) (P.T.A.B. Apr. 30, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/700,728 02/05/2010
58249 7590 05/02/2019
COOLEYLLP
ATTN: IP Docketing Department
1299 Pennsylvania Avenue, NW
Suite 700
Washington, DC 20004
FIRST NAMED INVENTOR
Rodney Hook
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.
MED6-002/02US
318298-2002
CONFIRMATION NO.
8494
EXAMINER
MUNSON, PATRICIA H
ART UNIT PAPER NUMBER
3622
NOTIFICATION DATE DELIVERY MODE
05/02/2019 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):
zIPPatentDocketingMailbox US @cooley.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RODNEY HOOK, FOSTER JOHN PROVOST, BRIAN MAY,
and BRIAN DALESSANDRO
Appeal2017-004636
Application 12/700,728
Technology Center 3600
Before MURRIEL E. CRAWFORD, ANTON W. PETTING, and
MATTHEWS. MEYERS, Administrative Patent Judges.
CRAWFORD, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 of the Examiner's
final rejection of claims 1-9, 11-28, 30-33, 35, 36, and 38. We have
jurisdiction under 35 U.S.C. § 6(b ). Appellants appeared for oral hearing on
March 26, 2019.
SUMMARY OF DECISION
We AFFIRM.
THE INVENTION
Appellants claim methods, systems, and media for targeting online
advertisements to users using brand affinity modeling. (Spec. ,r 2, Title).
Appeal2017-004636
Application 12/700,728
Claim 1 with emphasis added is representative of the subject matter
on appeal.
1. A method, comprising:
receiving, by a processor, visitation data, the visitation
data including indications that a plurality of user devices has
accessed a plurality of websites;
associating a browser identifier with each user device
from the plurality of user devices, each browser identifier being
anonymous with respect to a user associated with each user
device;
creating, by the processor, a plurality of browser nodes,
each browser node from the plurality of browser nodes
representing a single browser identifier;
associating a content identifier with each website from
the plurality of websites, each content identifier being
anonymous with respect to and excluding content of each
website from the plurality of websites;
creating, by the processor, a plurality of website nodes,
each website node from the plurality of website nodes
representing a single content identifier
creating, by the processor, a plurality of links, each link
from the plurality of links being between one browser node
from the plurality of browser nodes and one website node from
the plurality of website nodes and representing a user device
from the plurality of user devices visiting a website from the
plurality of websites, the plurality of browser nodes, the
plurality of website nodes, and the plurality of links,
collectively, being a quasi-social network;
selecting, by the processor, a plurality of seed nodes from
the plurality of browser nodes, each seed node from the
plurality of seed nodes representing a user device from the
plurality of user devices that has performed a brand action
relating to a website that is not associated with a content
identifier, the brand action being indicative of brand affinity;
determining, by the processor, a plurality of candidate
nodes from the plurality of browser nodes based at least in part
on a distance from at least one seed node in the quasi-social
network;
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calculating, by the processor, a brand proximity measure
for each candidate node from the plurality of candidate nodes;
generating a ranking of the plurality of candidate nodes
based on the brand proximity measure for each candidate node
from the plurality of candidate nodes; and
selecting a brand audience for serving an advertisement
based on the ranking.
THE REJECTION
Claims 1-9, 11-28, 30-33, 35, 36, and 38 are rejected under
35 U.S.C. § 101 as directed to a judicial exception without significantly
more.
ANALYSIS
35 U.S.C. § 101 REJECTION
We will sustain the rejection of claims 1-9, 11-28, 30-33, 35, 36, and
38 under 35 U.S.C. § 101.
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, ... 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."
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Alice Corp. v. CLSBankint'l, 573 U.S. 208, 217-218 (2014) (citing Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 72-73 (2012))
( citations omitted).
To perform this test, we must first determine whether the claims at
issue are directed to a patent-ineligible concept. The Federal Circuit has
explained that "the 'directed to' inquiry applies a stage-one filter to claims,
considered in light of the specification, based on whether 'their character as
a whole is directed to excluded subject matter."' See Enfzsh, LLC v.
Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016) (quoting Internet
Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1346 (Fed. Cir.
2015)). It asks whether the focus of the claims is on a specific improvement
in relevant technology or on a process that itself qualifies as an "abstract
idea" for which computers are invoked merely as a tool. See id. at 1335-36.
In so doing we apply a "directed to" two prong test: 1) evaluate
whether the claim recites a judicial exception, and 2) if the claim recites a
judicial exception, evaluate whether the judicial exception is integrated into
a practical application. 2019 Revised Patent Subject Matter Eligibility
Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) ("Guidance").
The Examiner determines that the claims are directed to comparing
new and stored information and using rules to identify options. (Final Act.
2). The Examiner also determines that the claims are directed to targeting
advertising, and targeting advertising is a fundamental economic practice.
(Id. at 3). The Examiner finds the limitations other than the abstract idea are
"merely instructions to implement the abstract idea on a computer and
require no more than a generic computer to perform generic computer
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functions that are well-understood, routine and conventional activities
previously known to the industry." (Id.)
The Specification discloses that advertisers have been challenged in
the past to discern which advertisements can most profitably be shown to
which consumers since consumers spend an increasing percentage of their
time on Internet accessing social networking websites that defy easy
categorization. (Spec. ,r,r 3-5). The Specification also discloses that the
problem of matching advertisements and consumers has become more acute
as the exploding popularity of social networking sites has increased the
number of advertisement impressions seen at these sites. (id. ,r 6). As such,
the claimed invention is primarily directed toward identifying advertising
audiences. (Id. ,r 33).
Claim 1 recites several data gathering steps such as "receiving ...
visitation data, the visitation data including indications that a plurality of
user devices has accessed a plurality of websites," and "associating a
browser identifier with each user device from the plurality of user devices,
each browser identifier being anonymous with respect to a user associated
with each user device." The data is gathered in furtherance of identifying
advertising audiences. (Id.)
Claim 1 also recites several steps that are used to identify which
websites are visited by which users. These steps include "creating, by the
processor, a plurality of browser nodes, each browser node from the plurality
of browser nodes representing a single browser identifier;" "associating a
content identifier with each website from the plurality of websites;" and
"creating ... a plurality of website nodes, each website node from the
plurality of website nodes representing a single content identifier." Claim 1
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also recites steps of identifying those people who exhibit brand affinity i.e.
identifying seed nodes. These steps include "selecting ... a plurality of seed
nodes from the plurality of browser nodes, each seed node from the plurality
of seed nodes representing a user device from the plurality of user devices."
Lastly claim 1 recites steps of selecting candidates or targets to
receive the advertisement. These steps include "determining, ... a plurality
of candidate nodes from the plurality of browser nodes based at least in part
on a distance from at least one seed node in the quasi-social network;"
"calculating ... a brand proximity measure for each candidate node from the
plurality of candidate nodes;" "generating a ranking of the plurality of
candidate nodes based on the brand proximity measure for each candidate
node from the plurality of candidate nodes;" and "selecting a brand audience
for serving an advertisement based on the ranking."
As such, claim 1 essentially recites the steps of identifying websites
visited, identifying seed nodes or users that have brand loyalty and selecting
an audience for the advertisement based on the proximity of the user node to
the seed node. Therefore, in accordance with the disclosure in the
Specification, claim 1 recites a method in which data are gathered in
furtherance of identifying advertisement audiences.
We agree with the Examiner that the claims recite a method of
targeting advertisement. Targeting advertisement is a fundamental
economic practice. Guidance 54.
In addition, the steps of claim 1 constitute "analyzing information by
steps people go through in their minds, or by mathematical algorithms,
without more, as essentially mental processes within the abstract-idea
category." Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1354
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(Fed. Cir. 2016); see also buySAFE, Inc. v. Google, Inc., 765 F.3d 1350,
13 5 5 (Fed. Cir. 2014) ( claims directed to certain arrangements involving
contractual relations are directed to abstract ideas). Thus, we find that the
claims recite a mental process.
Turning to the second prong of the "directed to test," claim 1 merely
requires a "processor" and a "user device." The recitation of the words
"processor" and "user device" does not impose "a meaningful limit on the
judicial exception, such that the claim is more than a drafting effort designed
to monopolize the judicial exception." Guidance at 53. In this regard, the
recitation does not affect an improvement in the functioning of a processor
or user device or other technology. We note that_the introduction of a
computer into the claims does not alter the analysis in Alice.
[T]he 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 "implemen[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
featur[ 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 (alterations in original) (citations omitted).
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Instead, "the relevant question is whether the claims here do more
than simply instruct the practitioner to implement the abstract idea ... on a
generic computer." Id. at 225. They do not.
In addition, the Specification discloses that server 810 or processor
and workstation 802 or user device can be any general purpose device with
any suitable components. (Spec. ,r 104). As such, claim 1 does not recite a
particular machine or manufacture that is integral to the claims. And claim 1
does not recite a transformation of a particular article to a different state or
thing. Id. Thus, claim 1 is directed to a judicial exception and thus an
"abstract idea."
Turning to the second step of the Alice analysis, because we find that
the claims are directed to abstract ideas/judicial exceptions, the claims must
include an "inventive concept" in order to be patent-eligible, i.e., there must
be an element or combination of elements that is sufficient to ensure that the
claim in practice amounts to significantly more than the abstract idea itself.
See Alice, 573 U.S. at217-218 (alteration in original) (quoting Mayo, 566
U.S. at 72-73).
Taking the claim elements separately, the function performed by the
computer at each step of the process is purely conventional. Using a
computer to retrieve, select, and apply decision criteria to data and modify
the data as a result amounts to electronic data query and retrieval----one of
the most basic functions of a computer. All of these computer functions are
well-understood, routine, conventional activities previously known to the
trading industry. See Elec. Power Grp., 830 F.3d at 1354; see also In re
Katz Interactive Call Processing Patent Litig., 639 F.3d 1303, 1316 (Fed.
Cir. 2011) ("Absent a possible narrower construction of the terms
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'processing,' 'receiving,' and 'storing,' ... those functions can be achieved
by any general purpose computer without special programming"). 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
other than abstract." SAP Am. Inc. v. InvestPic, LLC, 890 F.3d 1016, 1022
(Fed. Cir. 2018).
Considered as an ordered combination, the computer components of
Appellants' claims add nothing that is not already present when the steps are
considered separately. The sequence of data reception-analysis-
access/display is equally generic and conventional or otherwise held to be
abstract. 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) (holding that sequence of data retrieval, analysis, modification,
generation, display, and transmission was abstract), Two-Way Media Ltd. v.
Comcast Cable Commc 'ns, LLC, 874 F.3d 1329, 1339 (Fed. Cir. 2017)
(holding sequence of processing, routing, controlling, and monitoring was
abstract). The ordering of the steps is, therefore, ordinary and conventional.
The claims do not, for example, purport to improve the functioning of
the computer itself. The claims do not affect an improvement in any other
technology or technical field. The Specification spells out different generic
equipment and parameters that might be applied using this concept and the
particular steps such conventional processing would entail based on the
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concept of information access under different scenarios. (See, e.g., Spec. ,r
104 ). Thus, claim 1 amounts to nothing significantly more than instructions
to apply the abstract idea of information access 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 2360.
\Ve have reviewed all the arguments (Appeal Br. 7----19) Appe11ants
have submitted concerning the patent eligibility of the claims before us that
stand rejected under 35 U.S.C. § 101. \Ve find that our analysis above
substantially covers the substance of all the arguments, which have been
made. But, for purposes of cornpleteness, we will address various
arguments in order to make individual rebuttals of same.
Appellants argue that claim 1 recites an innovative logical model for
selecting a brand audience not found in typical audience targeting methods
which represents a technical improvement and is similar to the claims in
Enfish. (Appeal Br. 10). Specifically, Appellants argue that the use of a
quasi-social network, as recited in claim 1, represents a logical model that
constitutes an improvement of existing technology. (Appeal Br. 11 ). \Ve
note that there is a fundamental difference between computer functionality
improvements, on the one hand, and uses of existing computers as tools to
perform a particular task, on the other. \Vhile the Appellants may be c01Tect
that the claim recites a logical model, there is no recitation of an
improvement in the way that the processor or user device operates.
\Ve are not persuaded of error on the part of the Exarniner by
Appellants' argument that the clairns on appeal are similar to the claims in
DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014).
In DDR, the court stated that "the [] patent's claims address the problem of
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retaining website visitors that, if adhering to the routine, conventional
functioning of Internet hyper link protocol, would be instantly transported
awav from a host's website after 'clicking' on an advertisement and
~ ~
activating a hyperlink." DDR Holdings, 773 F.3d at 1257. This was done in
the claim by serving a composite page with content based on the link that
was activated to serve the page.
In contrast, claim 1 performs a process that identifies candidates for
receiving advertisements. While the processor and user device is used to
perform the steps of claim 1, there is no improvement of the processor or
user device recited in claim 1. And, unlike the situation in DDR, we find no
indication in the record, nor do Appellants point us to any indication, that a
computer network, or the Internet, in particular, is used other than in its
normal, expected, and routine manner, e.g., for receiving and transmitting
information.
We are not persuaded of error on the part of the Examiner by
Appellants' argument that the claims are analogous to the claims in.
HASCOlvf Global Internet Servs. v. AT&T Mobility LLC, 827 F.3d 1341
(Fed. Cir. 2016). (Appeal Br. 15). l\1ore particularly, Appellants contend
that claim l recites "a technical improvement over prior known systems by
allowing an appropriate audience to be identified without the content of the
webpages being analyzed." (Appeal Br. 16).
As such, Appellants assert that, like the claims in BASCOlvi, the
present claims pmiicufar arrangement of elements then properly viewed as
an ordered combination represent at least two improvements of prior art
ways of identifying an audience. (Appeal Br. 16). Appellants specifically
argue that prior known techniques for identifying audiences are inadequate
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for identifying an appropriate audience when a user's interests cannot be
inferred from the content of a webpage and also that in the invention of
clairn 1, nodes are anonymous to both the content of websites and the users
who's browsers are used to visit the website.
In BASCOlv1, the Federal Circuit followed the Supreme Court's
guidance for dete1mining whether the claims recite an inventive concept set
forth in Alice, 573 U.S. at 220-26.
In Alice, the Supreme Court explained that, under the second step of
the patent-eligibility analysis, "the relevant question is whether the claims
here do more than simply instruct the practitioner to implement the abstract
idea of intermediated settlement on a generic computer." Id. at 225. The
Supreme Court also provided examples of claims that represent more than
instructions to implement an abstract idea on a generic computer, such as
claims that purport to improve the functioning of the computer itself and
claims that effect an improvement in any other technology or technical field.
Id. at 220-26.
Turning to BASCOM, the Federal Circuit held "[t]he inventive
concept described and claimed in the '606 patent is the installation of a
filtering tool at a specific location, remote from end-users, with
customizable filtering features specific to each end user." 827 F.3d at 1350.
In determining this feature to be an inventive concept, the Federal Circuit
explained that the remote location of a filtering tool having custornizable
user-specific filtering features provides the filtering tool both the benefits of
a filter on a local computer and the benefits of a filter on the ISP server and
is a technical improvement over prior art ways of filtering content. Id. at
1350-51. Notably, the Federal Circuit specifically determined that "the
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claims may be read to 'improve[] an existing technological process."' Id. at
1351 (citing Alice, 573 U.S. at 223).
Here, Appellants have not demonstrated any particular arrangement in
the claim as providing an inventive concept parallel to BASCOAf's
technology-based solution.
\Ve are also not persuaded that claim l includes a nonconventional
process because of the creation of browser and website nodes that are
anonymous. This argument of Appellants fails because Appellants conflate
the conventionality of the steps being performed by a processor and the
conventionality of the computer functions required to implement the steps.
In this regard, the processor and user device perform the functions of the
abstract idea in a conventional and well-known manner. We agree with the
Examiner that claim 1 does not recite a new type of computer system
comprising a processor and medium but rather the use of conventional and
generic technology in a nascent but well-known environment without
reflecting an inventive solution to any problem presented much like the
claims in In re TL! Commc 'ns LLC Patent Litig., 823 F.3d 607 (Fed. Cir.
2016). (Ans. 4).
In view of the foregoing, we will sustain the Examiner's rejection of
claim 1. We will also sustain the Examiner's rejection of claims 2----9, 11,
and 12 because the Appellants have not argued the separate eligibility of
these claims. \Ve will also sustain the rejection as it is directed to the
remaining claims because the Appellants make sirnilar arguments regarding
eligibility for independent claims 13 and 25 from whkh the remaining
claims depend.
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CONCLUSIONS OF LAW
We conclude the Examiner did not err in rejecting claims on appeal
under 35 U.S.C. § 101.
DECISION
The decision of the Examiner to reject claims 1-9, 11-28, 30-33, 35,
36, and 38 is affirmed.
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).
AFFIRMED
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