Ex Parte Pradeep et alDownload PDFPatent Trial and Appeal BoardDec 4, 201713730541 (P.T.A.B. Dec. 4, 2017) Copy Citation 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. 13/730,541 12/28/2012 Anantha Pradeep 20225/014US03 8331 81905 7590 12/06/2017 Hanley, Flight & Zimmerman, LLC (Nielsen) 150 S. Wacker Dr. Suite 2200 Chicago, IL 60606 EXAMINER TROTTER, SCOTT S ART UNIT PAPER NUMBER 3696 NOTIFICATION DATE DELIVERY MODE 12/06/2017 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 ANANTHA PRADEEP, ROBERT T. KNIGHT, and RAMACHANDRAN GURUMOORTHY Appeal 2016-003364 Application 13/730,5411 Technology Center 3600 Before ANTON W. FETTING, JOSEPH A. FISCHETTI, and BRUCE T. WIEDER, Administrative Patent Judges. WIEDER, Administrative Patent Judge. DECISION ON APPEAL This is a decision on appeal under 35U.S.C. § 134 from the Examiner’s final rejection of claims 3—10, 12—17, and 19—21. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 According to Appellants, the real party in interest is The Nielsen Company (US), LLC. (Appeal Br. 1.) Appeal 2016-003364 Application 13/730,541 CLAIMED SUBJECT MATTER Appellants’ claimed invention “relates to placing stimulus material using subject neuro-response measurements.” (Spec. 12.) In particular, Appellants’ invention relates to collecting data “in order to assess neuro response significance for source material with stimulus material introduced at various temporal and spatial locations.” {Id. 125.) Claims 3, 5, 9, 12, 13, 16, and 19-21 are the independent claims on appeal. Claim 3 is illustrative. It recites: 3. A method comprising: analyzing first neuro-response data from a first subject exposed to source material, the first neuro-response data comprising first electroencephalographic data from a first frequency band and second electroencephalographic data from a second frequency band, the second frequency band being different than the first frequency band; identifying, using a processor, a candidate location in the source material for introduction of an advertisement or entertainment based on an interaction between the first frequency band and the second frequency band; analyzing second neuro-response data from at least one of the first subject and a second subject exposed to a combination of the source material and the advertisement or entertainment inserted in the candidate location; and determining an effectiveness of the advertisement or entertainment based on the second neuro-response data. REJECTIONS Claims 3—10, 12—17, and 19—21 are rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1—20 of Pradeep (U.S. 8,386,313 B2, iss. Feb. 26, 2013). Claims 3—10, 12—17, and 19—21 are rejected under 35 U.S.C. § 101 as directed to non-statutory subject matter. 2 Appeal 2016-003364 Application 13/730,541 ANALYSIS The Nonstatutorv Obviousness-type Double Patenting Rejection The Examiner rejects claims 3—10, 12—17, and 19—21 on the grounds of nonstatutory obviousness-type double patenting over claims 1—20 of Pradeep. (Final Action 3.) Appellants provide no argument against this rejection. (See Appeal Br. 2.) Therefore, we summarily affirm the rejection of claims 3—10, 12—17, and 19-21 on the grounds of nonstatutory obviousness-type double patenting. The §101 rejection In 2014, the Supreme Court decided Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 134 S. Ct. 2347 (2014). Alice applies a two-part framework, earlier set out in Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66 (2012), “for distinguishing patents that claim laws of nature, natural phenomena, and abstract ideas from those that claim patent-eligible applications of those concepts.” Alice, 134 S. Ct. at 2355. Under the two-part framework, it must first be determined if “the claims at issue are directed to a patent-ineligible concept.” Id. If the claims are determined to be directed to a patent-ineligible concept, then the second part of the framework is applied to determine if “the elements of the claim . . . contain[] an ‘inventive concept’ sufficient to ‘transform’ the claimed abstract idea into a patent-eligible application.” Id. at 2357 (citing Mayo, 566 U.S. at 72-73, 79). With regard to part one of the Alice framework, the Examiner determines that “[t]he claim(s) is/are directed to the abstract idea of where to 3 Appeal 2016-003364 Application 13/730,541 place an advertisement for maximum impact based on neuro-response data.” (Final Action 4.) Appellants disagree and argue that “[cjlaim 3 as a whole is not directed to the alleged abstract idea of ‘where to place an advertisement for maximum impact based on neuro-response data’ as inaccurately alleged by the Examiner.” (Appeal Br. 25.) Nonetheless, Appellants admit that “[t]he present application discloses systems and method to determine locations for inserting stimulus material (e.g., an advertisement or entertainment) in a source material. . . based on neuro-response data collected from subjects.” (Id. at 13.) Under part one of the Alice framework, we “look at the ‘focus of the claimed advance over the prior art’ to determine if the claim’s ‘character as a whole’ is directed to excluded subject matter.” Affinity Labs of Texas, LLC v. DIRECTV, LLC, 838 F.3d 1253, 1257 (Fed. Cir. 2016) (quoting Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016)). Thus, although we consider the claim as a whole, the “directed to” inquiry focuses on the claim’s “character as a whole.” The Specification provides evidence as to what the invention is directed. In this case, the Specification discloses that the invention is directed to collecting data “in order to assess neuro-response significance for source material with stimulus material introduced at various temporal and spatial locations.” (Spec. 125.) Claim 3 recites “analyzing first neuro response data,” “identifying ... a candidate location in the source material for introduction of an advertisement,” analyzing second neuro-response data,” and “determining an effectiveness of the advertisement. . . based on the second neuro-response data.” 4 Appeal 2016-003364 Application 13/730,541 In Electric Power Group, “[t]he focus of the asserted claims ... is on collecting information, analyzing it, and displaying certain results of the collection and analysis.” Elec. Power Grp., 830 F.3d at 1353. “[W]e have treated collecting information, including when limited to particular content (which does not change its character as information), as within the realm of abstract ideas.” Id. Additionally, the Federal Circuit has “treated 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.” Id. at 1354. Thus, a method, like the claimed method here, that recites “analyzing . . . data,” “identifying ... a candidate location,” “analyzing . . . data,” “and determining an effectiveness . . . based on . . . data,” is directed to an abstract idea. Regardless, Appellants argue “that there is no fundamental scientific truth or abstract idea that is preempted by claim 3.” (Appeal Br. 28.) Preemption, however, is not a separate test. To be clear, the proper focus is not preemption per se, for some measure of preemption is intrinsic in the statutory right granted with every patent to exclude competitors, for a limited time, from practicing the claimed invention. See 35 U.S.C. § 154. Rather, the animating concern is that claims should not be coextensive with a natural law, natural phenomenon, or abstract idea; a patent-eligible claim must include one or more substantive limitations that, in the words of the Supreme Court, add “significantly more” to the basic principle, with the result that the claim covers significantly less. See Mayo 132 S. Ct. at 1294 [566 U.S. at 72-73], CLS Bank Inti v. Alice Corp. Pty. Ltd., 717 F.3d 1269, 1281 (Fed. Cir. 2013), affd, 134 S. Ct. 2347 (2014) (Lourie, J., concurring). Moreover, “[w]here a patent’s claims are deemed only to disclose patent ineligible 5 Appeal 2016-003364 Application 13/730,541 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). In other words, “preemption may signal patent ineligible subject matter, [but] the absence of complete preemption does not demonstrate patent eligibility.” Id. Appellants further argue that “claim 3 recites identifying, using a processor, a candidate location in source material for introduction of an advertisement or entertainment based on an interaction between a first frequency band and a second frequency band of EEG data,” and, thus, that the claim does not recite an abstract idea. (Appeal Br. 30, emphasis omitted.) We disagree. This step of claim 3 merely recites the abstract idea of identifying, in an unspecified manner, a location, based on a nonspecific interaction between a first and a second frequency band of data. Appellants further argue that the Examiner has not presented “actual evidence” that the claims are directed to a fundamental economic practice. (Appeal Br. 32.) We do not find this argument persuasive of reversible error. There is no requirement that examiners provide evidentiary support in every case before a conclusion can be made that a claim is directed to an abstract idea. The courts consider the determination of whether a claim is eligible (which involves identifying whether an exception such as an abstract idea is being claimed) to be a question of law. Accordingly, 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. 6 Appeal 2016-003364 Application 13/730,541 Para. IV “July 2015 Update: Subject Matter Eligibility” to 2014 Interim Guidance on Subject Matter Eligibility (2014 IEG), 79 Fed. Reg. 74618 (Dec. 16, 2014) (footnote omitted). Part two of the Alice framework has been described “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, 134 S. Ct. at 2355 (citing Mayo, 566 U.S. at 72—73). The introduction of a computer into the claim does not alter the analysis at step two. [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 if ” 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]” 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.” Id. at 2358 (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.” Id. at 2359. They do not. Claim 3 relates to a method for analyzing data (“first neuro-response data”), identifying a location, 7 Appeal 2016-003364 Application 13/730,541 analyzing additional data, and “determining an effectiveness” based on the additional data. Taking the claim elements separately, the function performed by the computer at each step is purely conventional. Analyzing data, identifying data, and determining data values are basic computer functions. Moreover, the Specification discloses that the invention can be implemented using generic computer components. (See, e.g., Spec. 197.) In short, each step does no more than require a generic computer to perform generic computer functions. Considered as an ordered combination, the computer components of Appellants’ method add nothing that is not already present when the steps are considered separately. The claims do not, for example, purport to improve the functioning of the computer itself. Nor do they effect an improvement in any other technology or technical field. Instead, the claims at issue amount to nothing significantly more than an instruction to apply the abstract idea of analyzing data, identifying data, and determining data values, using an unspecified, generic computer. That is not enough to transform an abstract idea into a patent-eligible invention. Alice, 134 S. Ct. at 2360. Nonetheless, Appellants attempt to analogize claim 3 to the claims at issue in DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014). (See Appeal Br. 9-10.) We are not persuaded of error. The claims in DDR Holdings “specify how interactions with the Internet are manipulated to yield a desired result — a result that overrides the routine and conventional sequence of events ordinarily triggered by the click of a hyperlink.” DDR Holdings, 773 F.3d at 1258. Appellants do not 8 Appeal 2016-003364 Application 13/730,541 persuasively argue that the present claims override or vary some routine and conventional sequence of events. Dependent claim 4 recites: “The method of claim 3, wherein the interaction comprises a degree of coherence between a first change in amplitude of the first frequency and a second change in amplitude of the second frequency band.” Appellants argue that “[cjlaim 4 narrows base claim 3 further by claiming a specific degree of coherence between a first change in amplitude of the first frequency band and a second change in amplitude of the second frequency band.” (Appeal Br. 33.) Appellants’ argument is not commensurate with the scope of the claim. Claim 4 does not recite “a specific degree of coherence” but rather merely refers to an unspecified degree of coherence. Therefore, we do not find Appellants’ argument persuasive of reversible error. Independent claim 5 is similar to claim 3. However, claim 5 recites, in relevant part, “analyzing first neuro-response data from a first subject exposed to source material, the first neuro-response data comprising first electroencephalographic data from a first region of a brain of the first subject and second electroencephalographic data from a second region of the brain.” In short, claim 5 differs from claim 3, in relevant part, in the nature of the data analyzed. But this does not change its character as data. See Electric Power Grp., 830 F.3d at 1353—54. Nor does it change our determination that analyzing such data is within the realm of abstract ideas. Id. With regard to step 2 of the Alice framework, Appellants argue that “[cjlaim 5 solves the problem of identifying a location in source material for an advertisement or entertainment based on an interaction between two different sets of electroencephalographic data and, thus, provides a technical 9 Appeal 2016-003364 Application 13/730,541 improvement with respect to media placement.” (Appeal Br. 35—36.) We disagree. This claim is “directed to nothing more than the performance of an abstract business practice . . . using a conventional computer. Such [a claim is] not patent-eligible.” See DDR Holdings, 773 F.3d at 1256. Dependent claim 6 contains language similar to that of claim 4 and Appellants make similar arguments. (See Appeal Br. 36—37.) For similar reasons to those set forth above with regard to claim 4, we are not persuaded of reversible error. Claim 9 recites: 9. A method comprising: analyzing first neuro-response data from a first subject exposed to source material; assigning a first numerical value to a first portion of the first neuro-response data gathered from a first portion of the source material, the first neuro-response data comprising first electroencephalographic data having a first frequency, the first numerical value based on at least one of a first amplitude of the first frequency or a first change in the first amplitude of the first frequency; assigning a second numerical value to a second portion of the first neuro-response data gathered from a second portion of the source material, the first neuro-response data comprising second electroencephalographic data having a second frequency, the second numerical value based on at least one of a second amplitude of the second frequency or a second change in the second amplitude of the second frequency; determining which of the first numerical value or the second number value is a lower numerical value; identifying, using a processor, which of the first portion of the first neuro-response data or the second portion of the first neuro-response data corresponds to the lower numerical value; identifying the first portion of the source material as a candidate location in the source material for introduction of an 10 Appeal 2016-003364 Application 13/730,541 advertisement or entertainment if the first portion of the first neuro-response data has the lower numerical value; identifying the second portion of the source material as the candidate location in the source material for introduction of the advertisement or entertainment if the second portion of the first neuro-response data has the lower numerical value; analyzing second neuro-response data from at least one of the first subject and a second subject exposed to a combination of the source material and the advertisement or entertainment inserted in the candidate location; and determining an effectiveness of the advertisement or entertainment based on the second neuro-response data. In relevant part, claim 9 recites “analyzing first neuro-response data,” “assigning a first numerical value to a first portion of the first neuro response data,” “assigning a second numerical value to a second portion of the first neuro-response data,” “determining which of the first numerical value or the second number [sic] value is . . . lower,” “identifying . . . which . . . data corresponds to the lower numerical value,” “identifying the first portion of the source material as a candidate location ... for introduction of an advertisement... if the first portion of the first neuro-response data has the lower numerical value,” “identifying the second portion of the source material as the candidate location ... for introduction of the advertisement ... if the second portion of the first neuro-response data has the lower numerical value,” “analyzing second neuro-response data,” “and determining an effectiveness of the advertisement. . . based on the second neuro-response data.” Like claim 3, “[t]he focus of the asserted claim[]. . . is on collecting information, analyzing it, and displaying certain results of the collection and analysis.” Elec. Power Grp., 830 F.3d at 1353. Therefore, for the reasons discussed above with regard to claim 3, we are not 11 Appeal 2016-003364 Application 13/730,541 persuaded that the Examiner erred in determining that claim 9 is directed to an abstract idea. Appellants argue, with regard to part 2 of the Alice framework, that “[cjlaim 9 recites a technical improvement wherein a candidate location in source material for introduction of an advertisement or entertainment is identified by definite and practical steps . . . (Appeal Br. 38.) We are not persuaded of error. As discussed above, this claim is “directed to nothing more than the performance of an abstract business practice . . . using a conventional computer. Such [a claim is] not patent-eligible.” DDR Holdings, 773 F.3d at 1256. Appellants present arguments similar to those discussed above with regard to independent claims 12, 13, 16, and 19-21. (See Appeal Br. 41—50; see also Reply Br. 11—15.) And for similar reasons to those discussed above, we are not persuaded of reversible error. Dependent claims 7, 8, 10, 14, 15, and 17 are not separately argued. Therefore, they fall with their respective independent claims. See 37 C.F.R. § 41.37(c)(l)(iv). DECISION The Examiner’s rejection of claims 3—10, 12—17, and 19—21 for nonstatutory obviousness-type double patenting is affirmed. The Examiner’s rejection of claims 3—10, 12—17, and 19—21 under 35 U.S.C. § 101 is affirmed. 12 Appeal 2016-003364 Application 13/730,541 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 13 Copy with citationCopy as parenthetical citation