Ex Parte Pradeep et al

Patent Trial and Appeal Board

Dec 4, 2017

13730541 (P.T.A.B. Dec. 4, 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.
13/730,541 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.
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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
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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.”
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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
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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.
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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,
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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
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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
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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
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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
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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.
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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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