Ex Parte Klein et al

Patent Trial and Appeal Board

Jan 23, 2018

12618950 (P.T.A.B. Jan. 23, 2018)

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.
12/618,950 11/16/2009 Mark D. Klein 20271/ARB264US01 7713
81905 7590 01/25/2018
Hanley, Flight & Zimmerman, LLC (Nielsen)
150 S. Wacker Dr. Suite 2200
Chicago, IL 60606
EXAMINER
ABDI, KAMBIZ
ART UNIT PAPER NUMBER
3688
NOTIFICATION DATE DELIVERY MODE
01/25/2018 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):
j flight @ hfzlaw. com
mhanley@hfzlaw.com
docketing@hfzlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MARK D. KLEIN, JASON BROWNE, and
CRAIG DOUGAL PATERSON
Appeal 2016-005940
Application 12/618,950
Technology Center 3600
Before ELENI MANTIS MERCADER, LARRY J. HUME, and
CATHERINE SHIANG, Administrative Patent Judges.
SHIANG, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1-6, 8-10, 12-15, 17-28, 30, 31, 33-36, and 38, which
are all the claims pending and rejected in the application. We have
jurisdiction under 35 U.S.C. § 6(b). We affirm.
STATEMENT OF THE CASE
Introduction
According to the Specification, the present invention relates to content
delivery. See generally Spec. 1. Claim 1 is exemplary:
Appeal 2016-005940
Application 12/618,950
1. A method comprising:
associating corresponding panelists of a plurality of panelists with
corresponding groups based on one or more characteristics of the panelists;
generating first signatures or collecting first human-inaudible codes to
identify first media exposed to a first panelist of the plurality of panelists;
accessing, with a computing device, notifications of first Internet
actions performed by the first panelist;
correlating, with the computing device, the first Internet actions with
exposure to the first media;
determining a first effectiveness score of the first media in affecting
behavior of a first one of the groups of panelists based on the correlation of
the first Internet actions with the exposure to the first media;
generating second signatures or collecting second human-inaudible
codes to identify second media exposed to the first panelist or to a second
panelist of the plurality of panelists, the second panelist and the first panelist
belonging to a same one of the groups;
accessing, with the computing device, notifications of second Internet
actions performed by the first panelist or the second panelist;
correlating, with the computing device, the second Internet actions
with exposure to the second media;
determining a second effectiveness score of the second media in
affecting behavior for the first group based on the correlation of the second
Internet actions with the exposure to the second media;
performing a comparison of the first effectiveness score and the
second effectiveness score to determine a higher effectiveness score for
affecting the first group;
accessing data indicative of a characteristic of a user who is not a
panelist;
associating the user with the first group based on the characteristic of
the user;
selecting, with the computing device, the first media or the second
media for presentation to the user based on the higher effectiveness score
and the first group with which the user is associated; and
electronically transmitting the selected one of the first media or the
second media from the computing device for presentation to the user.
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Appeal 2016-005940
Application 12/618,950
Rejection
Claims 1-6, 8-10, 12-15, 17-28, 30, 31, 33-36, and 38 stand rejected
under 35 U.S.C. § 101 as being directed to patent-ineligible subject matter.
ANALYSIS
We disagree with Appellants’ arguments, and agree with and adopt
the Examiner’s findings and conclusions in (i) the action from which this
appeal is taken and (ii) the Answer to the extent they are consistent with our
analysis below.1
The Examiner rejects the claims under 35 U.S.C. § 101 because they
are directed to patent-ineligible subject matter. See Final Act. 3-9; Ans. 2-
19. In particular, the Examiner finds the claims are direct to the abstract
idea of collecting, analyzing, accessing, and transmitting information. See
Ans. 6; see also Final Act. 3-9; Ans. 2-19. The Examiner further finds the
claims use generic computer components to perform generic computer
functions. See Ans. 6; see also Final Act. 3-9; Ans. 2-19. Appellants argue
the Examiner erred. See App. Br. 18-50; Reply Br. 2-15.
Appellants have not persuaded us of error. Section 101 of the Patent
Act provides “[wjhoever 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. That provision‘“contains
an important implicit exception: Laws of nature, natural phenomena, and
1 To the extent Appellants advance new arguments in the Reply Brief
without showing good cause, Appellants have waived such arguments. See
37 C.F.R. § 41.41(b)(2).
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Appeal 2016-005940
Application 12/618,950
abstract ideas are not patentable.’” Alice Corp. Pty. Ltd. v. CLSBanklnt’l,
134 S. Ct. 2347, 2354 (2014) (quoting Ass ’n for Molecular Pathology v.
Myriad Genetics, Inc., 133 S. Ct. 2107, 2116 (2013)). According to the
Supreme Court:
[W]e 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, we 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, we 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. . . . We have
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., 134 S. Ct. at 2355.
The Federal Circuit has described the Alice step-one inquiry as
looking at the “focus” of the claims, their “character as a whole,” and the
Alice step-two inquiry as looking more precisely at what the claim elements
add—whether they identify an “inventive concept” in the application of the
ineligible matter to which the claim is directed. See Elec. Power Grp., LLC
v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016); Enfish, LLCv.
Microsoft Corp., 822 F.3d 1327, 1335-36 (Fed. Cir. 2016); Internet Patents
Corp. v. Active Network, Inc., 790 F.3d 1343, 1346 (Fed. Cir. 2015).
Regarding Alice step one, the Federal Circuit has “treated collecting
information, including when limited to particular content (which does not
change its character as information), as within the realm of abstract ideas.”
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Application 12/618,950
Elec. Power, 830 F.3d at 1353 (emphasis added); see also Internet Patents,
790 F.3d at 1348^19; OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359,
1363 (Fed. Cir. 2015); Content Extraction & Transmission LLC v. Wells
Fargo Bank, Natl Ass n, 776 F.3d 1343, 1347 (Fed. Cir. 2014). “In a
similar vein, we have treated analyzing information [including manipulating
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, 830 F.3d at 1354 (emphasis added);
see also In re TLI Commc’ns. LLC Patent Litig., 823 F.3d 607, 613 (Fed.
Cir. 2016). “And we have recognized that merely presenting the results of
abstract processes of collecting and analyzing information, without more
(such as identifying a particular tool for presentation), is abstract as an
ancillary part of such collection and analysis.” Elec. Power, 830 F.3d at
1354 (emphasis added); see also Ultramercial, Inc. v. Hulu, LLC, 772 F.3d
709, 714-15 (Fed. Cir. 2014).
The rejected claims “fall into a familiar class of claims ‘directed to’ a
patent-ineligible concept.” Elec. Power, 830 F.3d at 1353. Contrary to
Appellants’ arguments (App. Br. 18-50; Reply Br. 2-15), the claims are
similar to the claims of Electric Power, and are focused on the combination
of abstract-idea processes or functions. See Elec. Power, 830 F.3d at 1354.2
For example, claim 1 is directed to collecting and accessing information
(“collecting first [and second] human-inaudible codes . . .; accessing . . .”),
analyzing and generating information (“associating. . .; generating first [and
2 As acknowledged by Appellants (Appeal Br. 25), PNC Bank v. Secure
Axcess, LLC, Case No. CBM2014-00100 (PTAB Sept. 9, 2014) is not
precedential and not controlling.
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Appeal 2016-005940
Application 12/618,950
second] signatures . . correlating ... the first [and the second] Internet
actions . . .; determining a first [and second] effectiveness score . . .;
performing a comparison . . .; selecting . . .”), and transmitting information
(“transmitting the selected one of the first media . . . .”). See Elec. Power,
830 F.3d at 1353.
Similarly, independent claim 28 is directed to collecting and accessing
information, analyzing and generating information, and transmitting
information. See claim 28. Likewise, independent claim 33 is directed to
collecting and accessing information, analyzing (including monitoring)
information, and generating information. See claim 33.
The dependent claims are directed to similar abstract functions or
processes, and Appellants have not shown such claims are directed to other
non-abstract functions or processes. See claims 2-6, 8-10, 12-15, 17-27,
30, 31, 34-36, and 38. In particular, contrary to Appellants’ arguments, the
following dependent claims are directed to similar abstract functions or
processes. Dependent claim 5 recites additional limitations that are directed
to collecting information (“receiving . . .”), analyzing (including monitoring)
information (“monitoring ...” and “correlating . . .”), and presenting
information (“presenting . . .”). See claim 5. Dependent claim 17 recites
“wherein transmitting the selected media includes: obtaining . . .; inserting . .
.; and transmitting . . . .”), and the additional limitations are directed to
collecting, analyzing (including inserting), and transmitting information.
See claim 17. Dependent claim 19 further includes limitations that are
directed to analyzing and modifying information (“modifying . . .”), and
transmitting information (“transmitting . . . .”). Dependent claim 26 further
includes limitations that are directed to analyzing information (“generating .
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Application 12/618,950
. performing a comparison . and . . . identifying . . . Dependent claim
38 further includes limitations that are directed to collecting information
(“acquiring . . and analyzing information (“detecting . . dynamically
adjusting”).
Further, Appellants’ assertion regarding pre-emption (App. Br. 33-34,
39; Reply Br. 3-4) is unpersuasive, because “[w jhile preemption may signal
patent ineligible subject matter, the absence of complete preemption does
not demonstrate patent eligibility. . . . Where a patent’s claims are deemed
only to disclose patent ineligible subject matter under the Mayo framework,
as they are in this case, preemption concerns are fully addressed and made
moot.” Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379
(Fed. Cir. 2015): see also OIP, 788 F.3d at 1362-63 (“that the claims do not
preempt all price optimization or may be limited to price optimization in the
e-commerce setting do not make them any less abstract”).
Regarding Alice step two, contrary to Appellants’ assertion (App. Br.
34-50; Reply Br. 8-15), Appellants have not shown the claims in this case
require an arguably inventive set of components or methods, or invoke any
assertedly inventive programming. See Elec. Power, 830 F.3d at 1355.
Further, contrary to Appellants’ arguments (App. Br. 34-50; Reply
Br. 8-15), the claims are similar to the claims of Electric Power, because
they do not require any nonconventional computer, network, or display
components, or even a “‘non-conventional and non-generic arrangement of
known, conventional pieces,”’ but merely call for performance of the
claimed information collection, analysis, transmission, and presentation
functions on generic computer components and display devices. See Elec.
Power, 830F.3dat 1355; see also Claim 1 (reciting “a computer device . . .
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Appeal 2016-005940
Application 12/618,950
Claim 28 (reciting “a processor ... the computing device . . . .”); Claim
33 (reciting “monitoring devices ... a processor . . . .”). The dependent
claims call for similar generic components and devices, and Appellants have
not shown such claims require any non-conventional components or devices.
See claims 2-6, 8-10, 12-15, 17-27, 30, 31, 34-36, and 38.
In short, Appellants have not shown the claims, read in light of the
Specification, require anything other than conventional computer, network,
and display technology for collecting, analyzing, and presenting the desired
information. See Elec. Power, 830 F.3d at 1354. Such invocations of
computers and networks are ‘“insufficient to pass the test of an inventive
concept in the application’” of an abstract idea. See Elec. Power, 830 F.3d
at 1355.
Finally, Appellants’ citing Research Corp. Technologies Inc. v.
Microsoft Corp., 627 F.3d 859 (Fed. Cir. 2010) (Reply Br. 4)—a case
predated the Alice decision and does not employ the Alice steps—is
unhelpful. As discussed above, Appellants have not shown the claims are
patent eligible under the Alice steps. Further, as discussed above, the claims
here recite inventions that are merely the routine or conventional use of the
technology—the opposite of what the claims of Research Corp.
Technologies represent. See Research Corp. Technologies Inc., 627 F.3d. at
868-69. Likewise, Appellants’ assertion that the present claims are
distinguishable from the claims of Digitech Image Technologies, LLC v.
Electronics for Imaging, Inc., 758 F.3d 1344 (Fed. Cir. 2014), Ultramercial,
Inc. v. Hulu, LLC, 772 F.3d 709 (Fed. Cir. 2014), and Classen
Immunotherapies, Inc. v. Biogen IDEC, 659 F.3d 1057 (Fed. Cir. 2011)
(Reply Br. 5-7) regardless of whether they are true are unpersuasive: as
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Application 12/618,950
discussed above, the claims are similar to the claims of Electric Power and
are patent ineligible.
Because Appellants have not persuaded us the Examiner erred, we
sustain the Examiner’s rejection of claims 1-6, 8-10, 12-15, 17-28, 30, 31,
33-36, and 38 under 35 U.S.C. § 101.
DECISION
We affirm the Examiner’s decision rejecting claims 1-6, 8-10, 12-15,
17-28, 30, 31,33-36, and 38.
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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