Ex Parte MacGregor et al

Patent Trial and Appeal Board

Jan 13, 2017

13316788 (P.T.A.B. Jan. 13, 2017)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/316,788 12/12/2011 Malcolm MacGregor 150117.404 1116
500 7590 01/13/2017
SEED INTELLECTUAL PROPERTY LAW GROUP LLP
701 FIFTH AVE
SUITE 5400
SEATTLE, WA 98104
EXAMINER
ROSS, SCOTT M
ART UNIT PAPER NUMBER
3623
MAIL DATE DELIVERY MODE
01/13/2017 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 MALCOLM MACGREGOR, RANDY BROWNING,
JOSEPH MOUHANNA, and JOHN KOTTCAMP
____________

Appeal 2015-0008111
Application 13/316,7882
Technology Center 3600
____________

Before ANTON W. FETTING, NINA L. MEDLOCK, and
BRADLEY B. BAYAT, Administrative Patent Judges.

MEDLOCK, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 2–21. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 Our decision references Appellants’ Appeal Brief (“App. Br.,” filed
April 25, 2014) and Reply Brief (“Reply Br.,” filed October 13, 2014), and
the Examiner’s Answer (“Ans.,” mailed August 14, 2014) and Final Office
Action (“Final Act.,” mailed November 25, 2013).
2 Appellants identify Blab, Inc. as the real party in interest. App. Br. 2.
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CLAIMED INVENTION
Appellants’ claimed invention relates to “to the creation of real time
as well as predictive marketing campaigns, in particular, through the
identification of contextually relevant data channels and sources, harvesting
data and media from channels and sources, categorizing the data, classifying
the data authorship type and influence levels, ranking by the data based on
context, and using the data to produce, disseminate, monitor/track, and
quantify results for real-time as well as predictive marketing campaigns”
(Spec. ¶ 16).
Claim 2, reproduced below with added bracketed notations, is the sole
independent claim on appeal and representative of the claimed subject
matter:
2. A computer-implemented method comprising:
[(A)] obtaining, by one or more configured computers, a
plurality of comments supplied to a plurality of social media
sources by a plurality of human users during a period of time;
[(B)] analyzing, by the one or more configured
computers, contents of the plurality of comments to determine a
category to which at least some of the plurality of comments
correspond;
[(C)] generating, by the one or more configured
computers and based at least in part on the analyzed contents,
information about one or more trends identified in the at least
some comments for the category during the period of time;
[(D)] for each of the identified one or more trends,
determining power of the trend across the plurality of social
media sources based on comments associated with the trend; and
[(E)] providing, by the one or more configured
computers, information about the identified one or more trends
for the category during the period of time and about the
determined power of each of the identified one or more trends.

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REJECTIONS
Claims 2–21 are rejected under 35 U.S.C. § 101 as directed to non-
statutory subject matter.
Claims 2, 5, 6, 9, 10, and 21 are rejected under 35 U.S.C. § 102(e) as
unpatentable over Passmore (US 2012/0030018 A1, pub. Feb. 2, 2012).
Claims 11–13, 19, and 20 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Passmore.
Claims 3, 4, 7, 8, and 14–18 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Passmore and Goeldi (US 2010/0121707 A1, pub.
May 13, 2010).

ANALYSIS
Non-Statutory Subject Matter
Appellants argue claims 2–11 and 13–21 as a group (Reply Br. 2–8).
We select claim 2 as representative. The remaining claims stand or fall with
claim 2. See 37 C.F.R. §41.37(c)(1)(iv).
Under 35 U.S.C. § 101, an invention is patent-eligible if it claims a
“new and useful process, machine, manufacture, or composition of matter.”
35 U.S.C. § 101. The Supreme Court, however, has long interpreted § 101
to include an implicit exception: “[l]aws of nature, natural phenomena, and
abstract ideas” are not patentable. See, e.g., Alice Corp. Pty Ltd. v. CLS Bank
Int’l, 134 S. Ct. 2347, 2354 (2014).
In judging whether claim 2 falls within the excluded category of
abstract ideas, we are guided in our analysis by the Supreme Court’s two-
step framework, described in Mayo and Alice. Id. at 2355 (citing Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1296–97
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(2012)). In accordance with that framework, we first determine whether the
claim is “directed to” a patent-ineligible abstract idea. If so, we then
consider the elements of the 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 of the abstract idea. Id.
This is a search for an “inventive concept” – an element or combination of
elements sufficient to ensure that the claim amounts to “significantly more”
than the abstract idea itself. Id.
Appellants maintain here that the Office has failed to satisfy its
burden of establishing that the pending claims are directed to an abstract
idea and also failed to satisfy its burden of establishing that the claims fail to
recite significantly more than an abstract idea (Reply Br. 4). Appellants,
thus, charge that the Office has failed to establish a prima facie case of
unpatentability (id. at 5). We disagree.
The Federal Circuit has held that the USPTO carries its procedural
burden of establishing a prima facie case when its rejection satisfies the
requirements of 35 U.S.C. § 132 by notifying the applicant of the reasons for
rejection, “together with such information and references as may be useful in
judging of the propriety of continuing the prosecution of [the] application.”
See In re Jung, 637 F.3d 1356, 1362 (Fed. Cir. 2011).
In rejecting the pending claims under § 101, the Examiner notified
Appellants that the claims are directed to the abstract idea of “‘analyzing
trends,’ which is a ‘method of organizing human activities,’” and that the
additional claim elements or combination of elements in the claims amount
to no more than “recitation of generic computer structure that serves to
perform generic computer functions that are well-understood, routine, and
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conventional activities previously known to the pertinent industry” (Ans. 3–
4). The Examiner, thus, notified Appellants of the reasons for the rejection
“together with such information and references as may be useful in judging
of the propriety of continuing the prosecution of [the] application.”
35 U.S.C. § 132. And, in doing so, the Examiner set forth a prima facie case
of unpatentability.
Appellants do not contend that they did not understand the Examiner’s
new ground of rejection. To the contrary, Appellants’ understanding of the
rejection is clearly manifested by their substantive response to the rejection,
as set forth in their Reply Brief (Reply Br. 4–7).
Applying the framework set forth in Alice, and as the first step of that
analysis, we agree with the Examiner that claim 2 is directed to collecting
data and analyzing the data to identify trends, i.e., to an abstract idea
(Ans. 3). The steps recited in claim 2 involve nothing more than collecting
data, i.e., a plurality of comments; analyzing the data to determine a
category to which at least some of the data corresponds; and identifying one
or more trends based on the analyzed data. In this regard, the steps of
claim 2 are similar to the steps that the Federal Circuit determined were
patent ineligible in Content Extraction & Transmission v. Wells Fargo Bank,
776 F.3d 1343 (Fed. Cir. 2014) and Cyberfone Systems, LLC v.
CNN Interactive Group, Inc., 558 F. App’x 988 (Fed.Cir.2014) (non-
precedential).
In Content Extraction, the Federal Circuit considered the patent
eligibility of a method claim for “processing information from a diversity of
types of hard copy documents.” Id. at 1345. Applying step one of the Alice
framework, the Federal Circuit determined that the claim was “drawn to the
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abstract idea of 1) collecting data, 2) recognizing certain data within the
collected data set, and 3) storing that recognized data in a memory” —
concepts that the court noted were “undisputedly well-known.” Id. at 1347.
In Cyberfone, the court evaluated a method claim reciting steps that
required “obtaining data, ‘exploding’ the data, i.e., separating it into
component parts, and sending those parts to different destinations.”
Cyberfone, 558 F. App’x at 990. The Federal Circuit held that this claim
involved an abstract idea, explaining that “using categories to organize,
store, and transmit information is well-established” and that “the well-
known concept of categorical data storage, i.e., the idea of collecting
information in classified form, then separating and transmitting that
information according to its classification, is an abstract idea that is not
patent-eligible.” Id. at 992.
Similarly here, we find that claim 2 involves nothing more than
collecting data, analyzing and categorizing the data, and identifying one or
more trends based on the analyzed data — activities squarely within the
realm of abstract ideas. See, e.g., Electric Power Group, LLC v. Alstom S.A.,
830 F.3d 1350, 1353–54 (Fed. Cir. 2016) (characterizing collecting
information, analyzing information by steps people go through in their
minds, or by mathematical algorithms, and presenting the results of
collecting and analyzing information, without more, as matters within the
realm of abstract ideas).
Turning to the second step of the Alice analysis, Appellants argue that
even if the pending claims are directed to the abstract idea of “analyzing
trends,” the claims recite significantly more than the abstract idea itself
(Reply Br. 6–7). Challenging the Examiner’s finding that the claims amount
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to no more than the recitation of generic computer structure to perform
generic computer functions, Appellants first note that claim 2 recites
automated operations for configured computers to perform the activities set
forth in limitations (A) through (D) of the claim (id. at 6–7). Appellants
assert that they are “unaware of any . . . general purpose computer whose
generic computer functions include such functionality” (id. at 7). Yet there
is no indication in the record that any specialized computer hardware or
other “inventive” computer components are required. In fact, claim 2 offers
no detail about the computers at all. Considered as an ordered combination,
the computer components of Appellants’ method add nothing that is not
already present when the steps are considered separately. Claim 2 simply
recites a method for analyzing trends performed on a generic computer.
See Alice, 134 S. Ct. at 2359 (noting, in carrying out the second step, that the
“the relevant question is whether the claims here do more than simply
instruct the practitioner to implement the abstract idea . . . on a generic
computer”).
Appellants next argue that the rejection is improper because the Office
has failed to show that the pending claims recite the only possible method of
analyzing trends and would “provide a monopoly that preempts use of such
an alleged abstract idea in all possible fields” (Reply Br. 7). That argument
is similarly unpersuasive.
There is no dispute that the Supreme Court has described “the concern
that drives this exclusionary principle [i.e., the exclusion of abstract ideas
from patent eligible subject matter] as one of pre-emption.” Alice, 134 S. Ct.
at 2354. But characterizing pre-emption as a driving concern for patent
eligibility is not the same as characterizing pre-emption as the sole test for
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patent eligibility. “The Supreme Court has made clear that the principle of
preemption is the basis for the judicial exceptions to patentability” and “[f]or
this reason, questions on preemption are inherent in and resolved by the
§ 101 analysis.” Arioso Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371,
1379 (Fed.Cir.2015) (citing Alice, 134 S. Ct. at 2354). Yet although
“preemption may signal patent ineligible subject matter, the absence of
complete preemption does not demonstrate patent eligibility.” Id.
Finally, Appellants argue that the claims recite significantly more than
an abstract idea because the claims improve the functioning of the computer
itself (Reply Br. 7). Appellants maintain that by performing operations to
generate and provide information about identified trends during a period of
time and about the determined power of each of the trends across multiple
data sources, the speed of subsequent computer operations to search,
categorize, and otherwise use the corresponding comments, and the amount
of computer memory and processor cycles needed to perform these
subsequent operations, may be greatly reduced, thereby improving the
functioning of the computers (id.). Even accepting Appellants’ argument,
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. Indeed, the Federal Circuit applied
this distinction in Enfish, LLC v. Microsoft Corp., 822 F.3d. 1327 (Fed. Cir.
2016) in rejecting a § 101 challenge at the step one stage in the Alice
analysis because the claims at issue focused not on asserted advances in uses
to which existing computer capabilities could be put, but on a specific type
of data structure, i.e., a self-referential table for a computer database,
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designed to improve the way a computer carries out its basic functions of
storing and retrieving data. Id. at 1335–36.
We find no parallel here between claim 2 and the claims in Enfish nor
any comparable aspect in claim 2 that represents “an improvement to
computer functionality.” The alleged advantages that Appellants tout do not
concern an improvement to computer capabilities but instead relate to an
alleged improvement in analyzing trends for which a computer is used as a
tool in its ordinary capacity.
In view of the foregoing, we sustain the Examiner’s rejection under
35 U.S.C. § 101 of claim 2, and claims 3–11 and 13–21, which fall with
claim 2.
Anticipation
Independent Claim 2 and Dependent Claims 5, 6, 9, 10, and 21
Appellants argue that the Examiner erred in rejecting claim 2 under
35 U.S.C. § 102(e) because Passmore does not disclose “generating . . .
based at least in part on the analyzed contents [of the plurality of comments],
information about one or more trends identified in the at least some
comments for the category during the period of time” and “for each of the
identified one or more trends, determining power of the trend across the
plurality of social media sources based on comments associated with the
trend,” i.e., limitations (C) and (D), as recited in claim 2 (App. Br. 7–10).
In this regard, Appellants assert that Passmore generally discloses that a
trend may be identified using the comments from a single social media
source but Appellants maintain that Passmore lacks any disclosure of
tracking a trend across multiple social media sources (id. at 8). Appellants
also maintain that Passmore’s calculated trend scores, which the Examiner
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compares to the claimed “power of the trend,” merely reflect a count of the
number of occurrences of a trend over a specified period of time, without
any indication that the count “corresponds to comments received from a
plurality of social media sources, let alone that such a count represents a
power of that trend across those plurality of social media sources” (id. at 10).
Responding to Appellants’ arguments, the Examiner cites
paragraph 90 of Passmore as disclosing that received raw log data may
originate from a plurality of social media sources (Ans. 5). The Examiner
notes that Passmore discloses that trends are calculated based on aggregated
raw data (id. at 6). And the Examiner reasons that because raw log data may
include data from a plurality of social media sources, the calculated trends
based on the raw data may be considered trends across the plurality of social
media sources (id.).
There is no dispute that Passmore discloses that raw log data may be
received for analysis from any of a plurality of sources (see Passmore ¶ 90).
However, we agree with Appellants that Passmore does not expressly
disclose in paragraph 90 or in any of the other portions of Passmore, on
which the Examiner relies, that log data from a plurality of different sources
is aggregated and used to calculate a trend score across the multiple different
sources (Reply Br. 10–16).
Passmore discloses that the log data is filtered (e.g., to remove data
relating to adult material, personally identifiable information) to improve or
otherwise generate more useful trend results (Passmore ¶ 91), and further
discloses that the filtered data is aggregated before being used to calculate a
trend score (id. at ¶ 92). However, Passmore explicitly discloses that this
aggregation of the filtered data is by time and/or date, e.g., to compile data
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into groups based on one or more predetermined periods of time, such as
hourly, daily, or weekly ranges (id.). Passmore does not disclose that log
data from multiple different sources is aggregated.
To the extent that the Examiner’s anticipation rejection is based on a
finding that Passmore inherently discloses aggregating data from a plurality
of social media sources and calculating a trend score based on the
aggregated data, more than speculation is required. In particular, the
Examiner must provide evidence and/or technical reasoning that makes
“clear that the missing descriptive matter is necessarily present in the thing
described in the reference, and that it would be so recognized by persons of
ordinary skill.” Continental Can Co. USA, Inc. v. Monsanto Co., 948 F.2d
1264, 1268 (Fed.Cir.1991). The Examiner has provided no such evidence
and/or technical reasoning here.
Therefore, we do not sustain the Examiner’s rejection of claim 2
under 35 U.S.C. § 102(e). For the same reasons, we also do not sustain the
Examiner’s rejection of dependent claims 5, 6, 9, 10, and 21.
Obviousness
Dependent Claims 3, 4, 7, 8, and 11–20
The Examiner’s rejections of claims 3, 4, 7, 8, and 11–20 are based on
the same erroneous interpretation of Passmore applied with respect to
claim 2. Therefore, we do not sustain the Examiner’s rejections of claims 3,
4, 7, 8, and 11–20 under 35 U.S.C. § 103(a).

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DECISION
The Examiner’s rejection of claims 2–21 under 35 U.S.C. § 101 is
affirmed.
The Examiner’s rejection of claims 2, 5, 6, 9, 10, and 21 under
35 U.S.C. § 102(e) is reversed.
The Examiner’s rejections of claims 3, 4, 7, 8, and 11–20 under
35 U.S.C. § 103(a) are reversed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED