Ex Parte Pradeep et al

Patent Trial and Appeal Board

Mar 29, 2017

12122253 (P.T.A.B. Mar. 29, 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.
12/122,253 05/16/2008 Anantha Pradeep 20225/008 8455
81905 7590 03/31/2017
Hanley, Flight & Zimmerman, LLC (Nielsen)
150 S. Wacker Dr. Suite 2200
Chicago, IL 60606
EXAMINER
WEIDNER, ADAM M
ART UNIT PAPER NUMBER
1649
NOTIFICATION DATE DELIVERY MODE
03/31/2017 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 GURUMOORTHY1
Appeal 2016-000519
Application 12/122,253
Technology Center 1600
Before ULRIKE W. JENKS, SHERIDAN K. SNEDDEN, and
RACHEL H. TOWNSEND, Administrative Patent Judges.
TOWNSEND, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35U.S.C. § 134 involving claims to a system
to generate audience measurement data, which have been rejected as being
directed to patent-ineligible subject matter, containing subject matter that is
not supported by the application as originally filed, and as being obvious.
We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 Appellants identify the Real Party in Interest as The Nielsen Company
(US), LLC. (Appeal Br. 1.)
Appeal 2016-000519
Application 12/122,253
STATEMENT OF THE CASE
According to Appellants’ Specification, “[conventional audience
response measurement and tracking mechanisms merely track stimulus
being viewed and rely on behavior and survey based data collected from
subjects exposed to marketing materials.” (Spec. 119.) “[Sjurvey responses
are analyzed to determine possible patterns.” (Id.) Appellants’
Specification notes that “[ajnalysis of multiple survey responses and
correlation of the responses to stimulus material is . . . limited,” as is the
integration of survey results with audience response information. (Id.) The
shortcomings of analysis of the effects of advertising on the subjects include
problems based on built in bias with survey questions, and the possibility
that “[ajrticulate subjects may be given more weight than non-expressive
ones,” as well as the fact that subjects “may be unable or unwilling to
express their true thoughts and feelings about a topic.” (Id.) Appellants’
invention is directed at improving audience response measurement and
tracking by analyzing and integrating neuro-response measurements to
determine audience response data. (Spec. 117.)
Claims 2-4, 6—11, and 22-42 are on appeal. Claims 4 and 27 are
representative and reads as follows:
4. A system to generate audience measurement data, the system
comprising:
a data analyzer to:
analyze neuro-response data gathered from a
subject exposed to an advertisement or entertainment, the
neuro-response data including electroencephalographic
data, electrooculographic data, and facial emotion
encoding data;
2
Appeal 2016-000519
Application 12/122,253
generate attentiveness data indicative of a level of
attention of the subject based on the
electroencephalographic data and the electrooculographic
data;
generate emotion data indicative of an emotional
state of the subject based on the electroencephalographic
data and the facial emotion encoding data; and
generate memory retention data indicative of a
level of memory activity of the subject based on the
electroencephalographic data; and
a response integrator to combine the attentiveness
data, the emotion data and the memory retention data
with at least one of advertisement identification data or
entertainment identification data to generate audience
measurement data, at least one of the data analyzer or the
response integrator comprising a processor.
27. A system to generate audience measurement data, the
system comprising:
a human brain wave detector to obtain first human brain
wave data for a first frequency band indicative of cerebral
activity from a first region of a human brain and to obtain
second human brain wave data for a second frequency band
indicative of cerebral activity from a second region of the
human brain from a person exposed to an advertisement or
entertainment; and
an analyzer to evaluate the first brain wave data and the
second brain wave data to determine a level of effectiveness of
the advertisement or entertainment based on a degree of
asymmetry between the brain wave data in the first frequency
band and the brain wave data in the second frequency band
different from the first frequency band, the analyzer to generate
audience measurement data based on the level of effectiveness
of the advertisement or entertainment.
(Appeal Br. 49-50, 53 (Claims App’x).)
3
Appeal 2016-000519
Application 12/122,253
The following grounds of rejection by the Examiner are before us on
review:
1. Claims 2—4, 6—11, and 22^42 under 35 U.S.C. § 101 as
claiming an abstract idea. (Ans. 11—15.)
2. Claims 2—4, 6—8, 11, 22—24, 26, 32—35, and 37—39 under
35 U.S.C. § 103(a) as unpatentable over Rothschild,2 Hazlett,3
Coan,4 and Heo.5 (Final Rejection 3—13.)
3. Claims 2^1, 6-11, 22-24, 26, and 32-AO under 35 U.S.C.
§ 103(a) as unpatentable over Rothschild, Hazlett, Coan, Heo,
and Makeig.6 (Final Rejection 11—12.)
4. Claims 2^1, 6-11, 22-26, and 32-AO under 35 U.S.C. §
103(a) as unpatentable over Rothschild, Hazlett, Coan, Heo,
Makeig, and Fowe.7 (Final Rejection 12—13.)
5. Claims 27—31, 41, and 42 under 35 U.S.C. § 112, first
paragraph as failing to comply with the written description
requirement. (Final Rejection 18—19.)
6. Claims 2—4, 6—11, 22—26, 34, and 35 on the ground of
non-statutory obviousness-type double patenting as being
2 Michael F. Rothschild et al., Predicting Memory for Components of TV
Commercials from EEC, 16(4) J. Consumer Research, 472—78 (1990).
3 Richard F. Hazlett et al., Emotional Response to Television Commercials:
Facial EMC vs. Self-Report, March-April, J. Advertising Research, 7—23
(1999).
4 James A. Coan et al., Voluntary Facial Expression and Hemispheric
Asymmetry over the Frontal Cortex, 38 Psychophysiology 912—25 (2001)
5 Nokon Heo et al., Wait! Why Is It Not Moving? Attractive and Distractive
Ocular Responses to Web Ads, Media Effects Research Fab @ Penn State
University,
http//www.psu.edu/dept/medialab/researchpage/newabstracts/wait.html (last
visited 11/25/2013).
6 S. Makeig et al., Dynamic Brain Sources of Visual Evoked Responses, 295
Science, 690-694 (2002).
7 Kenneth Fowe, US 2005/0079474 Al, published Apr. 14, 2005.
4
Appeal 2016-000519
Application 12/122,253
unpatentable over claims 1—30 of US 13/249,525. (Final
Rejection 14—15.)
7. Claims 27—31 on the ground of non-statutory
obviousness-type double patenting as being unpatentable over
claims 1, 3, 7, 8, and 10 of US 8,494,610. (Final Rejection 15—
16.)
DISCUSSION
I. Patentable Ineligible Subject Matter
A. Claims 4, 8, and27
The Examiner finds that the systems claims are drawn to the abstract
idea of organizing human behavior linked to a technological environment
and nothing more. (Ans. 13.) In particular, the Examiner explains that
“accessing data, analyzing data, comparing data, aligning data, combining
data, blending data, determining patterns, and determining effectiveness of
advertisements are methods of organizing human activities.” (Id.) The
Examiner then analyzes whether “the abstract idea has been applied in an
eligible manner.” (Id.) The Examiner determined that the systems recited in
the claims are
no more than highly generalized instructions to take well-
known, conventional data, blend this data, and make some form
of determination regarding the implications of that blended data
using no more than a generic computer performing generic,
well-understood steps.
(Ans. 15.) In particular, the Examiner finds that the system claims 4 and 8
recite a “data analyzer” and a “response integrator” that analyze gathered
“neuro-response” data from subjects and generates “enhanced neuro­
response data” and then combines the data with additional data to generate
“audience measurement data,” and that these elements “require no more than
a generic computer” to perform their functions. (Ans. 13—14.) Moreover,
5
Appeal 2016-000519
Application 12/122,253
the Examiner finds “[t]he claimed system encompasses analyzing the
collected data in any way by any means to arrive at any conclusion ‘based
on’ that data.” (Ans. 14.)
The Examiner further finds that “[t]he art of record demonstrates that
gathering the individual ‘neuro-response data’ was well-known and already
being gathered prior to the invention.” (Ans. 14.) The Examiner determines
in light of the foregoing that “[bjeyond what was already practiced in the art,
the claims do no more than recite at a high level of generality that the data
should be combined in some manner to generate other data, and that at least
some portion of this should be performed by computer.” (Id.) The
Examiner concludes that “because none of the hardware or structures recited
by the system claims offers a meaningful limitation beyond generally linking
the data to a particular technological environment, Claims 4 and 8 are not
patent eligible.” (Id.)
Regarding claim 27, the Examiner finds “the system includes a brain
wave detector to obtain brain wave data” and a generic analyzer to
“‘evaluate’ the data,” i.e., “make some form of determination about the data”
“using a computer.” (Ans. 15.) The Examiner finds that the data gathering
claimed was “well-known and conventional in the art.” (Id.) And the
Examiner concludes, like claims 4 and 8, claim 27 does not add significantly
more to the abstract idea being implemented on a computer and is, thus,
patent ineligible. (Id.) In sum, the Examiner notes that the claimed systems
are “not an improvement to another technology, do[] not improve the
functioning of the computer itself, and provide[] no meaningful limitations
beyond generally linking abstract ideas to a particular technological
environment.” (Id.)
6
Appeal 2016-000519
Application 12/122,253
We agree with the Examiner’s factual findings and conclusion that
claims 4, 8, and 27 and their dependent claims are directed to patent
ineligible subject matter.
Abstract Idea
“The Supreme Court has not ‘delimited] the precise contours of the
‘abstract ideas’ category.’” Content Extraction & Transmission LLC v.
Wells Fargo Bank, Nat’l Ass’n, 776 F.3d 1343, 1346 (Fed. Cir.
2014) (quoting A lice Corp. v. CLS Bank Inti, 134 S. Ct. 2347, 2357 (2014)).
Our reviewing Court has held “information as such is an intangible” and
thus, 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.” Elec. Power Grp., LLC v. Alstom S.A.,
830 F.3d 1350, 1353 (Fed. Cir. 2016) (collecting cases). Fikewise it 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 (collecting cases). And, it
has “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.” Id. (collecting cases). Whether claims 4, 8, and 27
are delineated as abstract ideas, because they reflect methods of organizing
human activities linked to a technological environment as stated by the
Examiner or are systems that collect information and analyze it and do
nothing to change its character as information, is immaterial. The claims are
nothing more than an abstract idea.
7
Appeal 2016-000519
Application 12/122,253
Each of claims 4, 8, and 27 recite “a system to generate audience
measurement data” from neuro-response data collected from subjects
exposed to an advertisement of entertainment. The system of claims 4 and 8
requires a “data analyzer” that is generically required to “analyze” certain
collected “neuro-response” data and generically “generate” more data from
certain combinations of the collected “neuro-response” data. Those claims
also require a “response integrator” that is required to combine the generated
data and “combine” it with identification data of the advertisement or
entertainment and to again generically “generate” more data that is
delineated “audience measurement data.” In claim 4, either or both of the
analyzer and response integrator can “compris[e] a processor,” whereas in
claim 8, either or both can “compris[e] a logic circuit.”
Claim 27 requires “a human brain wave detector” to collect human
brain wave data from a subject exposed to an advertisement or entertainment
and, like claims 4 and 8, requires an analyzer. The analyzer of claim 27 is
required to generically “evaluate” the brain wave data “based on a degree of
asymmetry” of the collected brain wave data “to determine a level of
effectiveness of the advertisement or entertainment” and to generically
“generate” more data that is delineated “audience measurement data” “based
on the level of effectiveness of the advertisement or entertainment.”
In light of the foregoing, in each system, the audience measurement
data is just an organization of the human behavior from the subject viewing
or hearing an advertisement or entertainment. The behavior is measured by
conventional devices, and the data corresponding to that behavior is
manipulated in some unspecified manner (whether by mathematical
algorithm on a computer or by human manipulation) to generate a new form
8
Appeal 2016-000519
Application 12/122,253
of that data that is said to be “audience measurement data.” The character of
the collected information as information has not been changed. Appellants’
Specification confirms the foregoing, noting the “system” simply “performs
audience response measurement and tracking [audience response to the
stimulus material] using neuro-response data.” (Spec. 117.)
We agree with the Examiner that such activity falls into the category
of abstract idea. See, e.g., Electric Power Group, LLC v. Alstom S.A., 830
F.3d 1350, 1353—54 (Fed. Cir. 2016) (explaining that an invention directed
to collection, manipulation, and display of data was an abstract process);
Content Extraction, 776 F.3d at 1346-47 (finding with respect to method
claims that 1) collecting data, 2) recognizing certain data within the
collected data set, and 3) storing that recognized data in a memory” is an
abstract idea and explaining that is because “[t]he concept of data collection,
recognition, and storage is undisputedly well-known. Indeed, humans have
always performed these functions.”). Moreover, we note that the July 2015
Update: Subject Matter Eligibility published by the USPTO on July 30,
2015, at 80 Fed. Reg. 45,429, cited by Appellants, states that “certain
methods of organizing human activity” that are abstract ideas include
“describing] concepts relating to” “advertising, marketing, and sales
activities or behaviors.” (2015 Update at 4.) We interpret the foregoing to
include managing information relating to marketing or advertising, which is
precisely what is at issue in Appellants’ claims.
Appellants’ argument that the Examiner’s rejection should be reversed
because it “does not follow USPTO policy” in that “there is no similarity
between the concept alleged to be abstract in the Office action and any
patent ineligible abstract idea identified by the courts” is not found
9
Appeal 2016-000519
Application 12/122,253
persuasive. Just because the Examiner did not identify a specific case that
the present claims were analogous to, does not mean the rejection is in error.
The Examiner has provided a reasoned rationale that identifies the judicial
exception recited in the claims, i.e., abstract idea (Ans. 13) and why it is
considered an exception, as well as identifying the additional elements in the
claim and explaining why they do not amount to significantly more than the
exception taken individually or as a combination. Similar to what our
reviewing Court found in Electric Power, the “advance [Appellants] purport
to make is of gathering and analyzing information of a specified content. . .
and not any particular assertedly inventive technology for performing those
functions.” Electric Power, 830 F.3d at 1354. Thus, just as in Electric
Power, and for the reasons discussed, we agree with the Examiner that the
claimed activity falls into the category of abstract idea.
We also do not find persuasive Appellants’ argument that the
Examiner’s rejection is in error because he has “overgeneraliz[ed] the
claims” rather than “addressing the actual language of the claims at issue”
(Reply Br. 28—33, 49-50, 53). The Examiner specifically addressed the
“data analyzer” and the “response integrator,” the only two structural
limitations of the system claims 4 and 8, and the “brain wave detector” and
“analyzer to ‘evaluate’” the data, the only two structural limitations of the
system claim 27. (Ans. 13—15.) The Examiner noted regarding claims 4 and
8:
The analyzer generically analyzes “neuro-response” data
gathered from a plurality of subjects and generates “enhanced
neuro-response data”. The response integrator combines the
data with additional data to generate “audience measurement
data”. . . . The art of record demonstrates that gathering the
individual “neuro-response data” was well-known and already
10
Appeal 2016-000519
Application 12/122,253
being gathered prior to the invention. . . . The claimed system
encompasses analyzing the collected data in any way by any
means to arrive at any conclusion “based on” that data.
(Ans. 13—14.) Regarding claim 27, the Examiner noted:
The system of claim 27 does no more than gather . . .
conventional data [regarding brain wave frequencies] and
require that a generic “analyzer” make some form of
determination about the data.
(Ans. 15.) The claims fail to recite a specific non-conventional data
collection technique or analytical technique or generation of data
methodology based on the collected date. Rather, as the Examiner noted
these functions are recited at a high level of generality. (Ans. 14.) The
Examiner’s patent-eligibility analysis, thus, did not suffer from
“overgeneralization[s]” not engendered by the claim language. And we
agree with the Examiner that the claim limitations when reviewed
individually, and as a whole do not transform the abstract idea of collecting,
analyzing information, and integrating the data to generate “audience
measurement data” using a “processor” or “logic circuit” into a patent-
eligible application of the abstract idea.
Appellants’ argument that claim 4 “unmistakably describes the
operation of a machine,” and, thus, is not a method “of organizing human
activity raising] ineligibility concerns” (Reply Br. 28) is not persuasive.
Appellants do not explain how the limitations of claim 4, which is a system
claim, not a method of operating a system, are directed to a patent-eligible
operation of a machine. We do not find claim 4 to be so directed. The
system, which is two components, recites that the analyzer’s function is to
analyze initial data and generate additional data based on the initial data and
the integrator’s function is to combine the additional data with a third set of
11
Appeal 2016-000519
Application 12/122,253
data to generate a fourth set of data, and that at least one of the data analyzer
or the response integrator comprises “a processor.” None of those
limitations are directed to operation of a machine. But even if the claim
could be considered to somehow recite the operation of a machine, that is
not decisive on the question of patent eligibility under 35 U.S.C. § 101. See
e.g., Digitech Image Tech., LLC v. Electronics for Imaging, Inc., 758 F.3d
1344 (Fed. Cir. 2014) (finding patent-ineligible claims to a method of
generating data using mathematical techniques and combining the data);
Planet Bingo, LLCv. VKGS LLC, 576 Fed. Appx. 1005 (Fed. Cir. 2014)
(finding patent-ineligible claims to a computer system for managing a game
of bingo including a program that enabled certain computer functions
including combining identification data with other data).
As our reviewing court recently noted, “[precedent has recognized
that specific technologic modifications to solve a problem or improve the
functioning of a known system generally produce patent-eligible subject
matter.” Trading Techs. Int’l, Inc. v. CQG, Inc., Appeal No. 2016-1616, slip
op. 7, (Jan. 18, 2017) (non-precedential). Thus, for example “[abstraction is
avoided or overcome when a proposed new application or computer-
implemented function is not simply the generalized use of a computer as a
tool to conduct a known or obvious process, but instead is an improvement
to the capability of the system as a whole.” Id. at 8 (citing Enfish, LLC v.
Microsoft Corp., 822 F.3d 1327, 1336 (Fed. Cir. 2016)). On the other hand,
“ineligible claims generally lack steps or limitations specific to solution of a
problem, or improvement in the functioning of technology.” Id.
The specific claim limitations individually and as a whole
We agree with the Examiner that “none of the hardware or structures
12
Appeal 2016-000519
Application 12/122,253
recited by the system claims offers a meaningful limitation beyond generally
linking the data to a particular technological environment. (Ans. 14.) And,
“the three systems claimed are no more than highly generalized instructions
to take well-known, conventional data, blend this data, and make some form
of determination regarding the implications of that blended data using no
more than a generic computer performing generic, well-understood steps.”
(Ans. 15.)
“[W]hen a claim directed to an abstract idea ‘contains no restriction
on how the result is accomplished ... [and] [t]he mechanism ... is not
described, although this is stated to be the essential innovation[,]” [Internet
Patents Corp., 790 F.3d 1343] 1348 [(Fed. Cir. 2015)], then the claim is not
patent-eligible.” Intellectual Ventures ILLC v. Symantec Corp., 838 F.3d
1307, 1316 (Fed. Cir. 2016). We do not understand Appellants to argue that
a particular mechanism is essential to the innovation, but simply that claim 4
is directed to “a specific physical structure” and that this structure as whole
is “unconventional and not well understood” and it “achieves a technological
improvement, namely audience measurement data generated based on a
combination of attentiveness data, emotion data and memory retention data
with at least one of advertisement identification data or entertainment
identification data.” (Reply Br. 35, 37-40.)
However, the Examiner cited evidence, discussed below with respect
to obviousness, that the devices by which the initial data set is collected are
conventional and it was already known in the art that the data from these
device are indicative of attentiveness, emotion, and memory. (Ans. 19—22.)
(Rothschild teaches EEG (electroencephalographic) data is a measure of
attentiveness and memory retention; Heo teaches EOG (elcetrooculographic)
13
Appeal 2016-000519
Application 12/122,253
data is a measure of attentiveness; Hazlett teaches using facial
electromyography (EMG) in measuring emotional response and Coan
“explicitly teaches emotion data should be produced by combining EEG
with facial expression analysis because of possible artifacts”). The
Examiner explained that in light of the fact that it was known to use various
neurological measures collected from subjects when those subjects are
presented with advertising, one of ordinary skill in the art would have found
it obvious to combine the methods in a predictable matter to generate a more
complete database with improved data. (Ans. 20-22.) Thus, the Examiner
has adduced evidence that the particular initial data collected and the use of
the data to determine attentiveness, emotion, and memory data is not
“unconventional” nor is it “not well understood.”
Moreover, regardless of the fact that the data analyzer is to generate
certain additional data from the collected data, we do not find the analyzer is
an unconventional structure. The claim does not require any particular
manner in which that data must be generated other than it must be based on
certain initial data that was collected, and, the claim indicates that a general
purpose computer, i.e., “processor,” can perform that function. The same is
true for the response integrator. That is, the claim does not require any
particular manner in which the information is combined and indicates that a
general purpose computer, i.e. “processor” can perform that function. Thus,
there is simply no factual evidence provided by Appellants on this record to
support the contention that claimed structure is “unconventional and not well
understood.” (Reply Br. 35.)
We also do not find that Appellants have shown that the claimed
invention is a “specific improvement to a technological device for
14
Appeal 2016-000519
Application 12/122,253
generating audience measurement data” (Reply Br. 39). (See also Reply Br.
54 (“Claim 27 recites a technical improvement” and setting forth the claim
limitations with certain information bolded).) Appellants’ contention that
“the disclosed physical structure provides valuable and comprehensive
information to, for example, brand managers, with respect to an interest of
the audience member the advertisement or the entertainment” (Reply Br. 39—
40) does not establish that the system claim requires an inventive device or
inventive technique for analyzing information, in organizing the data
collected. Nor does Appellants’ bolding of specific words of claim 27.
(Reply Br. 54.) The system claims at issue do not improve an existing
technological system or solve an existing technological problem, simply
because they recite, for example, a
structure that collects neuro-response data from a subject in the
real world and [it] achieves a real world effect, namely,
audience measurement data generated based on a combination
of attentiveness data, emotion data and memory retention data
with at least one of advertisement identification data or
entertainment identification data.
(Reply Br. 39; see also Reply Br. 52 (“claim 8 recites a detailed apparatus
constructed of multiple structures that cooperate to achieve a non-
con ventional real world impact;” see also Reply Br. 56 (“the
structures [of claim 27] collectively perform a non-conventional function”).)
There are no meaningful limitations placed upon whatever operation is
applied to the collected data to generate the attentiveness data, emotion data,
and memory retention data or whatever operation is applied to combine that
data with at least one of advertisement identification data or entertainment
identification data, or whatever operation is applied to the collected brain
wave data to determine a level of effectiveness of an advertisement based on
15
Appeal 2016-000519
Application 12/122,253
asymmetry observations or whatever operation is applied to generate
audience measurement data based on the determined level of effectiveness.
For example, the system to generate audience measurement data is not
limited to a device with specific structural elements where the processor that
performs the data manipulations of the data analyzer and/or the response
integrator acts in concert with those structural elements to do anything in
particular with the determined audience measurement data. The system
claims here are unlike those in DDR Holdings, LLC v. Hotels.com, L.P., 773
F.3d 1245, 1257 (Fed. Cir. 2014), where the Court found the claims which
included a computer process programmed in a particular way to carry out a
particular function included an inventive concept in modification of
conventional mechanics behind website display to produce dual-source
integrated hybrid display. And the claims here are unlike the “data storage
and retrieval system” claims in Enfish, LLC v. Microsoft Corp., 822 F.3d
1327, 1339 (Fed. Cir. 2016) where the Court found the claims that included
“means for” executing certain things included an inventive concept in
improving “the way a computer stores and retrieves data in memory.” And
the claims are unlike the system claims in Bascom Global Internet Servs.,
Inc. v. AT&T Mobility LLC, 827 F.3d 1341, 1350 (Fed. Cir. 2016), where the
Court found the claims included an inventive concept in the ordered
combination of system components including a local client computer and a
remote ISP server connected to the client computer and Internet computer
network providing for “the installation of a filtering tool at a specific
location, remote from the end-users, with customizable filtering features
specific to each end user.” Nor are the claims, as argued by Appellants
(Reply Br. 40), “similar to the situation presented in Diehr” where a
16
Appeal 2016-000519
Application 12/122,253
technological process was improved by the continuous measurement of
temperature inside the mold cavity and feeding that information to a digital
computer to constantly recalculate cure time and automatically opening the
press at the proper cure time. Diamond v. Diehr, 450 US 175, 187 (1981);
see also Thales Visionix Inc. v. United States, appeal no. 2015-5150, slip op.
at 7—10 (Fed. Cir. March 8, 2017) (discussing Diehr in relationship to a
patent eligible system). There is no recited process at issue in Appellants’
claims on appeal, nor is there a recited combination of unconventional data
measurement or collection or analysis; there is merely a system with generic
structures that generically process types of data to generate additional data.
Appellants’ argument that meaningful limitations are provided by the
claims because the “data generated on different types of neuro-response data
fis combined] with identification information about the advertisement or the
entertainment,” and thus, the claims recite “a new and non-obvious structure
to several technical problems” (Reply Br. 44-45) is not persuasive. Whether
or not the blended data from disparate sources provides a “useful measure”
(Reply Br. 45), of attentiveness, emotional engagement, and memory
attention, the “structure” to carry out the functions can be accomplished with
a general purpose computer and there is no particularly claimed
methodology required to carry out the function of generating the data and
integrating it with information about the advertisement or the entertainment.
While the data analyzer and integrator may have specific functions, there is
no evidence that the claims require the functions be performed in an
improved technological or unconventional way. Moreover, as discussed, the
prior art teaches measuring the data using the same devices recited by the
claims in response to a subject’s review of advertisements and that the
17
Appeal 2016-000519
Application 12/122,253
measured data is reflective of the data the claims require be generated by the
analyzer.
Furthermore, even if it is true that claim 27 “achieves a
nonconventional and novel way to assess an impact of an advertisement or
entertainment on a subject” (Reply Br. 56), that is not decisive. “[A] claim
for a new abstract idea is still an abstract idea. The search for a
§101 inventive concept is thus distinct from demonstrating § 102 novelty.”
Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1151 (Fed. Cir.
2016); see also Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715—716
(Fed. Cir. 2014) (finding claim directed to a specific method of advertising
and content distribution that was previously unknown and never employed
on the Internet before patent-ineligible because they merely recited
the abstract idea of “offering media content in exchange for viewing an
advertisement,” along with “routine additional steps such as updating an
activity log, requiring a request from the consumer to view the ad,
restrictions on public access, and use of the Internet.”) Appellants’ system
claims do not recite “non-conventional and non-generic arrangement of
known, conventional pieces,” see, e.g., Bascom, 827 F.3d at 1350, or “a
technological solution” that overcomes a specific challenge unique to
assessing advertising effectiveness, see, e.g., DDR Holdings, 773 F.3d at
1259 (finding the claim patent eligible because they transformed the manner
in which a hyperlink typically functions.)
As to Appellants’ argument that the structure provides for
“monitoring and automatically determining a person’s unbiased reaction to
media” (Reply Br. 45), we note the claims are not directed to a process for
automatically determining a person’s unbiased reaction to media, but rather
18
Appeal 2016-000519
Application 12/122,253
a system to generate audience measurement data based on collected neuro­
response data where there is nothing in the claims linking any particular
system element to determining a person’s unbiased reaction to media
whether automatically or not.
Preemption
We also do not find Appellants’ argument that there is no preemption
issue here (Reply Br. 31—42, 55) persuasive. “[T]he absence of complete
preemption does not demonstrate patent eligibility.” Ariosa Diagnostics, Inc.
v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015). “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.” Id.
We agree with Appellants that claim 8 recites different limitations
from claim 4. (Reply Br. 50.) However, the differences are that claim 8
recites the neuro response data obtained at a more generic level. For
example, claim 4 specifies the data is obtained from electroencephalographic
data, electrooculographic data, and facial emotion encoding data, whereas
claim 8 indicates that the first, second, and third neuro-response data is
obtains for a “data collection modality.” (Appeal Br. 49-51.) Appellants’
arguments regarding claim 8 (Reply Br. 49—52) fail for the same reasons
discussed above. The use of more generic language in claim 8 than in claim
4 does not change our analysis.
Claims 3, 6, 7, 9, 11, 22—26, 28, 30—32, 34, 35, 41, and 42 have not
been argued separately, and therefore, fall with claims 4, 8, and 27.
37C.F.R. §41.37(c)(l)(iv).
19
Appeal 2016-000519
Application 12/122,253
B. Claims 10, 29, 33, 36, 37, 38, and 40
Appellants argue that each of 10, 29, 33, 36, 37, 38, and 40, further
narrow the claims and thus, render those claims more than an abstract idea.
(Reply Br. 46-49 (claims 33, 36, 37, and 38), Reply Br. 52—53 (claims 10,
40), Reply Br. 57 (claim 29)). We do not find these arguments persuasive.
The additional limitations narrow the data collection sites, the audience, or
the way the data is correlated. But, there is no evidence that the claims
require the functions of the generic data analyzer or response integrator be
performed in an improved technological or unconventional way, or that
these additional limitations establish a non-conventional and non-generic
arrangement of known, conventional structure, or that a technological
process was improved by new ways of collecting data. Thus, Appellants
have not persuaded us that the Examiner erred in rejecting claims 10, 29, 33,
36, 37, 38, and 40 for being directed to patent ineligible subject matter.
Claim 39 has not been argued separately from claim 37, from which it
depends, and therefore, falls with claim 37. 37 C.F.R. § 41.37(c)(l)(iv).
II. Obviousness: Claims 2—4, 6—11, 22—24, 26, and 32—40s
A. Claim 4
The Examiner finds that Rothschild teaches recording EEG of
multiple subjects exposed to television commercials. (Final Action 3.)
Rothschild teaches that EEG correlated significantly with memory and
recognition. (Id.) The Examiner finds that Rothschild further teaches that
recognition was enhanced when “the subject demonstrated a lateral
8 All of the 35 U.S.C. § 103 rejections of claims 27—31 and 41—42 were
withdrawn by the Examiner in the Examiner’s Answer. (Ans. 11.)
20
Appeal 2016-000519
Application 12/122,253
hemispheric shift to the right during onset of a commercial and then to the
left during the following seconds.” (Id.)
The Examiner also finds that Rothschild teaches EEG is a measure of
attention and that a better memory response is associated with arousal as
measured by Galvanic Skin Response (“GSR”). (Id. at 3 4.)
The Examiner finds that Hazlett teaches that EEG and GSR measure
arousal to an advertisement but do not reflect emotional valence. (Id. at 4.)
Hazlett teaches though that emotions are an important factor to consider
because “emotional response leads to an increase attention and brand recall.”
(Id.) The Examiner finds that Hazlett teaches “facial expressions ‘are by far
the most visible and distinctive of the emotion behaviors’” and further
teaches an apparatus for measuring facial movements and expression by
EMG from multiple subjects exposed to commercials to determine
effectiveness of commercials. (Id.) The Examiner further finds that Hazlett
teaches gathering a form of advertisement identification, namely, data brand,
recall data, exposure and relevance data. (Id.)
The Examiner finds that Coan teaches “that EEG asymmetries
between brain hemispheres are associated with different emotions.” (Id.)
Moreover, the Examiner further finds that Coan teaches that facial
expressions “are capable of eliciting specific responses in the CNS,” and that
“emotion data should be assessed using both EEG and facial expressions
because facial expressions may create artifacts in EEG data that need to be
compensated for.” (Id.)
The Examiner finds that Heo teaches recording eye movements of
subjects who are exposed to marketing advertisements using EOG. (Id.)
21
Appeal 2016-000519
Application 12/122,253
Heo teaches that such is a measure of “visual attention” and is a measure of
advertisement effectiveness. (Id. )
The Examiner concludes that the foregoing prior art teaches that
“EEG, EOG and facial expressions are all useful for gathering advertisement
effectiveness data,” namely EEG (Rothschild, Hazlett), facial expression
data (Hazlett facial electromyography (“EMG”)), and EOG (Heo). (Id. at 5;
Ans. 20—22.) Moreover, the Examiner concludes that “Rothschild and Heo
teach that EEG and EOG are measures of attentiveness. . . Coan teaches that
EEG and facial expressions are a measure of emotions[, and] Rothschild
teaches EEG is a measure of memory retention. (Non-final Action 5.)
According to the Examiner, one of ordinary skill in the art would have found
it obvious to combine these multiple known methods of gathering
effectiveness data, as well as including emotion data based on subjects
reviewing advertisements, which “do not interfere with one another” in order
to improve the analysis of advertising effectiveness. (Id.; Ans. 24 (“it would
have been prima facie obvious to combine multiple individual measures
known to be useful for the same purpose into one system which evaluates
this data in relationship to each other.”).) The Examiner further explained
“if a technique has been used to improve one method (e.g., combining EEG
and facial emotion data), and a person of ordinary skill would recognize that
it would improve similar methods (e.g., combining other data sets known to
be useful metrics of advertisement effectiveness) in the same way, using the
technique is obvious unless its actual application is beyond his or her skill.
[KSR Intern. Co. v. Teleflex Inc.], 127 S. Ct. at 1740.” (Ans. 25.) The
Examiner explains that the prior art knowledge “would . . . have allowed
one of ordinary skill in the art to combine the methods in a predictable
22
Appeal 2016-000519
Application 12/122,253
manner to generate a more complete database, which one of ordinary skill in
the art would have recognized as a better tool to determine ad effectiveness.”
(Ans. 20.)
The Examiner finds that in light of the fact that (1) Heo teaches EOG
recordings “to indicate participants’ levels of attention” (Ans. 20) and (2)
Rothschild teaches EEG to measure of attentiveness and combining
measures “with other forms of attentiveness/memory data (the post­
commercial recognition test)” (Ans. 20), it would have been obvious to
combine the “different forms of attentiveness data, each individually taught
to be useful when evaluating advertisements, to create a system which
analyzes both sets of data to create improved data” (Ans. 21). The Examiner
concludes that “[t]he instant combination is no more than a predictable
combination of prior art systems.” (Id.)
The Examiner finds that in light of the fact that (1) Coan “explicitly
teaches emotion data should be produced by combining EEG with facial
expression analysis because of possible artifacts,” (2) Coan “measures EEG
while subjects produce facial expressions related to emotions,” and that (3)
Hazlett “teaches measuring emotional responses to a series of television
commercials of both females and males using self-report and facial
electromyography (EMG),” it would have been obvious to combine the data
sets of EEG and EMG (facial emotion encoding data) for generating emotion
data. (Ans. 21.)
The Examiner also finds that it would have been obvious from
Rothschild to use “EEG to generate memory retention data indicative of a
level of memory activity of the subject.” (Ans. 22.)
23
Appeal 2016-000519
Application 12/122,253
The Examiner further finds that in light of the fact that “Hazlett and
Rothschild both teach incorporating advertisement identification data into
the analysis,” “one of ordinary skill in the art would have continued to
include [doing so] to gain the benefits of associating advertisement
effectiveness data with a specific advertisement.” (Non-final Action 5.) The
Examiner further concludes that “it would have been obvious to gather
complicated data and perform complex statistical analysis using computers
or similar machines, which inherently have processors.” (Id.) As the
Examiner notes, “the references include integrating two data sets into a third
data set (such as by combining EEG data and recognition tests in Rothschild
to generate a data set correlating the two)” (Ans. 23.)
We agree with the Examiner’s factual findings and conclusion of
obviousness. We first note, as discussed above with respect to the
Examiner’s § 101 rejection, claim 4 is written at a very generic level. The
data analyzer is required to “analyze” collected neuro-response data, without
any particular indication as to how the data is analyzed. The analyzer is also
required to “generate” another type of data based on certain combinations of
collected neuro-response data or on a single form of collected neuro­
response data without any particular indication as to how the additional type
of data is generated. Similarly, the “response integrator” is required to
“combine” the data generated from the originally collected neuro-response
data with “identification data” of an advertisement or entertainment to
“generate” audience measurement data, without any particular indication as
to how this data is combined or how the new set of data is generated.
We agree with the Examiner that the prior art teaches collecting
neuro-response data from subjects responses to advertising material from all
24
Appeal 2016-000519
Application 12/122,253
of the modalities claimed (EEG, EOG, and facial emotion encoding data).
Moreover, we agree with the Examiner that the prior art teaches EEG and
EOG are reflective of attentiveness (Rothschild 474; Heo 1—2), EEG and
facial emotion encoding data are relevant to emotion data (Hazlett 10), and
EEG is reflective of memory retention (Rothschild 474). Furthermore, we
agree with the Examiner that the prior art teaches it would be useful to
combine data to assess advertising effects. (Heo 3.) What is more, Hazlett
teaches that EEG is insufficient to measure emotional valence (Hazlett 10)
and Coan teaches both EEG and facial expressions are relevant neuro­
responses in assessing emotion data and that facial expression may create
artifacts in EEG (Coan 918, 921—23). Furthermore, Hazlett suggest using
neuro-response data (EMG) over self-reporting data because the neuro­
response data was “a more sensitive discriminator” and “offers ... an
opportunity to get beyond the limitations and biases that often plague self-
report.” (Hazlett 19—20.) Consequently, we agree with the Examiner that
one of ordinary skill in the art would have found it obvious in light of the
prior art teachings to combine the multiple known modalities of neurological
measures to generate attentiveness data by combining EEG and EOG data,
emotion data by combining EEG and EMG data, and memory retention data
based on EEG data in order to create an better data set to determine ad
effectiveness than where only a subset of such data is collected.
Furthermore, Hazlett teaches incorporating advertisement
identification data into the analysis. (Hazlett 11.) Rothschild also appear to
teach incorporating advertisement identification data into the analysis as
EEG patterns at the time of viewing commercials was compared to changes
in later memory. (Rothschild 475.) Without knowing what commercials
25
Appeal 2016-000519
Application 12/122,253
were viewed, one could not make such a comparison. Thus, we agree with
the Examiner that one of ordinary skill in the art would have found it
obvious to continue to include collection of advertising identification data
and integration with the neuro-response data generated from a particular
advertisement with a system that collects multiple neuro-responses, in order
to gain the benefits of associating advertisement effectiveness data with a
specific advertisement.
Appellants argue
one of the technological advancements of the present disclosure
is the analysis of neuro-response data to develop a more
comprehensive understanding of a subject’s response to
stimulus and the effectiveness thereof. See Specification, ||
[0045]—[0049]. Each piece of cited art is missing this
advantage and any related claimed structure.
(Appeal Br. 21.) We do not find this argument persuasive. “Non­
obviousness cannot be established by attacking references individually
where the rejection is based upon the teachings of a combination of
references. . . . [The reference] must be read, not in isolation, but for what it
fairly teaches in combination with the prior art as a whole.” In re Merck &
Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986). Thus, as the Examiner
explained, that Rothschild does not teach collecting EOG (Appeal Br. 22), or
that neither Coan nor Hazlett teach generating attentiveness data based on
EEG and EOG data (Appeal Br. 22—23), or that Heo does not mention EEG
(Appeal Br. 23) is not decisive. (Ans. 19—21.) As the Examiner explains,
and Appellants do not dispute, Rothschild teaches EEG is a measure of
attentiveness in the context of viewing advertisements and Heo teaches EOG
is a measure of attentiveness in the context of viewing advertisements.
(Ans. 20, Appeal Br. 22—23.) As the Examiner noted (Ans. 20—21),
26
Appeal 2016-000519
Application 12/122,253
combining different forms of attentiveness data, each individually taught to
be useful when evaluating advertisements, to create a system which analyzes
both sets of data would have been obvious to create improved data. Accord,
In re Kerkhoven, 626 F.2d 846, 850 (CCPA 1980) (“It is prima facie obvious
to combine two compositions each of which is taught by the prior art to be
useful for the same purpose, in order to form a third composition which is to
be used for the very same purpose. . . . [T]he idea of combining them flows
logically from their having been individually taught in the prior art.”)
Moreover, as the Examiner further explained
there is no particular structure required by the [claimed] data
analyzer and the only capability required is the ability to
generate “attentiveness data” based on EEG and EOG data. As
the data analyzer of Rothschild can clearly generate
attentiveness data (memory is a measure of attentiveness), the
analyzer of Rothschild is considered capable of
correlating/evaluating EOG data in the same way.
(Ans. 20.)
Appellants further argument that “none of Rothschild, Coan, Hazlett,
or Heo teaches or suggests a response integrator to combine the attentiveness
data, emotion data, and memory retention data with at least one of
advertisement identification data or entertainment identification data to
generate audience measurement data” because “none of the art combines
EEG data and EOG data to form attentiveness data” (Appeal Br. 25) is also
unpersuasive. As with the analyzer, there is no particular structure required
by the response integrator. As noted above, the Examiner articulated how
the prior art describes that each measurement modality was known and
taught combining data to arrive at conclusions regarding the relevance of
these modalities to advertisement effectiveness. Moreover, we agree with
27
Appeal 2016-000519
Application 12/122,253
the Examiner that Rothschild and Heo render obvious the combination of
EEG and EOG as a measure of attentiveness data, in order to create a system
which analyzes both sets of data to create an improved attentiveness data set
as a measure of advertisement effectiveness.
We also find unpersuasive, Appellants’ argument that the Examiner’s
rejection is based on impermissible hindsight and “naked conjecture used to
mask hindsight” (Appeal. Br. 26—30). “Any judgment on obviousness is in a
sense necessarily a reconstruction based upon hindsight reasoning, but so
long as it takes into account only knowledge which was within the level of
ordinary skill at the time the claimed invention was made and does not
include knowledge gleaned only from applicant’s disclosure, such a
reconstruction is proper.” In re McLaughlin, 443 F.2d 1392, 1395 (CCPA
1971).
Appellants argue that the instant Specification noted a problem with
EEG in relation to bone and skin layers, (Appeal Br. 29-30), and, thus,
presumably it is the Appellants’ position that it is only the instant
Specification that suggests combining neuro-response measures. However,
Coan explicitly identifies this problem: “because these were within-subjects
comparisons, there was no need to correct for individual differences in skull
thickness or volume conduction, as might be necessary in research
concerned with individual differences or between-subjects comparisons.”
(Coan 917-918).
As the Examiner noted, “it is clear that others in the same field were
using neurological data combined with other forms of data[, e.g., self-
reporting,] to improve conclusions regarding advertisement effectiveness.”
(Ans. 25; Hazlett 10 (collecting facial expression data and self-report
28
Appeal 2016-000519
Application 12/122,253
measures); Rothschild 474-476.) And “[ojthers were also cognizant of
combining one neurological measure with another neurological measure to
improve data quality.” (Ans. 25; Heo 3: (“A useful recommendation is that
a multi-measure approach to investigating animation effects can present a
fuller picture.”); Coan 918 (teaching emotion data should be assessed using
both EEG and facial expressions because facial expressions may create
artifacts in EEG data (i.e., alpha asymmetry) that need to be compensated
for).) And Hazlett even teaches the benefit of neuro-response data over
self-report data. (Hazlett 19—20.) Moreover, Coan recognized deficiencies
in neurological data in isolation and combines two neurological modalities.
(Coan 918, 921-23.)
While the prior art does not specifically state that one ought to
combine all of the claimed neuro-response measures as specifically claims,
that does not negate obviousness. “[T]he analysis need not seek out precise
teachings directed to the specific subject matter of the challenged claim, for
a court can take account of the inferences and creative steps that a person of
ordinary skill in the art would employ.” KSR, 550 U.S. at 418. As the
Examiner explained (Ans. 25) “if a technique has been used to improve one
method (e.g., combining EEG and facial emotion data), and a person of
ordinary skill would recognize that it would improve similar methods (e.g.,
combining other data sets known to be useful metrics of advertisement
effectiveness) in the same way, using the technique is obvious unless its
actual application is beyond his or her skill. KSR, 127 S. Ct. at 1740.”
Appellants provide no evidence that such is beyond the skill of one of
ordinary skill in the art, just that “it is often the case in scientific inquiry that
disparate methodologies result in conflicting data.” (Appeal Br. 28.)
29
Appeal 2016-000519
Application 12/122,253
However, as Coan indicates, one of ordinary skill in the art has the skill to
assess different neuro-response data and resolve any apparent conflicts.
(Coan 918—920: (“Assessing the Contribution of Muscle Artifact” and
“Assessing the Contribution of Other Factors to the Observed EEG
Effects”).) Thus, for the foregoing reasons, we disagree with Appellants’
that the Examiner has improperly relied on hindsight in the obviousness
determination of claim 4.
For the foregoing reasons, Appellants do no persuade us that the
Examiner erred in rejecting claim 4 for obviousness over Rothschild, Coan,
Hazlett, and Heo.
B. Claims 10, 36, and 40
Claim 36 adds another function to the response integrator that is
recited in claim 4, i.e., “correlate one or more of time components or phase
components” of EEG, EOG or facial emotion encoding data to generate
blended data. Claim 40, which depends from claims 34 and independent
claim 8, includes a similar correlate function but to the data analyzer, and
does not require the generation of blended data. Claim 10, which also
depends from independent claim 8, requires the data analyzer to “time shift
or phase shift” one or more of the neuro-response data.
The Examiner finds that “Makeig teaches performing time and phase
shifting transformations when using EEG readings to improve consistency
(p.691, columns 1-3). Further, Makeig teaches analyzing peak frequencies
(p.691, column 2).” (Final Action 12.) The Examiner concludes that one of
ordinary skill in the art would be “motivated to analyze the [EEG] data
[collected by Rothschild on subjects reviewing advertising] using time and
phase shifts as taught by Makeig for the reasons discussed by Makeig.”
30
Appeal 2016-000519
Application 12/122,253
Appellants do not dispute that Makeig describes “replacing a phase
distribution of EEG data before and during presentation of a stimulus with a
“phase distribution weighted toward a dominant phase” and refers to the
replacement as a partial “phase resetting.” (Appeal Br. 32—33.) Appellants
argue that the rejection is in error because “none of Rothschild, Coan,
Hazlett, or Heo ‘discuss[es] time-shifting or phase-shifting data’,” required
by the foregoing claims, and it does not teach or suggest blending EEG data,
EOG data, and facial emotion encoding data to generate the claimed blended
data. (Appeal Br. 32—33, 35, and 37—38.) Appellants further argue that
none of Rothschild, Coan, Hazlett, or Heo teach or suggest analyzing
blended data and Makeig “does not teach or suggest analyzing a peak in the
blended data” because it does not include EEG, EOG, and facial emotion
encoding data. (Appeal Br. 34, 35, and 37—38.) We do not find these
argument persuasive. As discussed above, attacking references individually
is insufficient to establish non-obviousness when the rejection is based upon
a combination of references. Merck, 800 F.2d at 1097. As the Examiner
explained, Makeig teaches the benefits of time/phase-shifting data and
therefore would have rendered obvious performing the same data corrections
on the EEG data collected in the system which combines EEG, EOG, and
facial emotion encoding data rendered obvious by Rothschild, Coan, Hazlett,
and Heo. (Final Rejection 12; Ans. 27.) And, Appellants have not argued
any reason why this would not be the case when the references are read, not
in isolation, but for what they fairly teach in combination.
For the foregoing reasons, Appellants do no persuade us that the
Examiner erred in rejecting claims 10, 36, and 40 for obviousness over
Rothschild, Coan, Hazlett, Heo, and Makeig.
31
Appeal 2016-000519
Application 12/122,253
C. Claim 35
Claim 35, like claim 4, requires that attentiveness data is based on
electroencephalographic data and electrooculographic data. Claim 35,
however, depends from independent claim 8 and not independent claim 4.
Appellants’ argument for patentability of this claim simply relies on what
was already argued with respect to claim 4. (Appeal Br. 37.) For the
reasons discussed above, we do not find this argument persuasive.
Claims 2, 3, 6—9, 11, 22—24, 26, 32—34, and 37—39 have not been
argued separately, and therefore, fall with claim 4. 37 C.F.R.
§ 41.37(c)(l)(iv).
Appellants’ do not respond separately to the Examiner’s rejection of
claims 2—4, 6—11, 22—26, and 32-40 under 35 U.S.C. § 103(a) as being
unpatentable over Rothschild, Hazlett, Coan, Heo, Makeig, and Lowe, which
rejection was focused on the limitations of claim 25. Thus, because claim 25
has not been argued separately, it too falls with claim 4. 37 C.F.R.
§ 41.37(c)(l)(iv).
III. New Matter: Claims 27—31, 41, and 42
The Examiner finds that the while the Specification supports
measuring two frequency bands, it does not support determining asymmetry
between two different frequency bands or how asymmetry between two
different bands (rather than two subbands of the same frequency) “is
informative with respect to the level of effectiveness of an advertisement or
entertainment.” (Final Action 18.) The Examiner finds that the
Specification describes that “EEG may make frequency measures in
different bands but provides no indication that any band data was compared
directly to a second band data to determine an asymmetry.” (Final Action
32
Appeal 2016-000519
Application 12/122,253
18—19.) Instead, the Specification at paragraph 72, indicates that evaluation
of asymmetry in a second band can be used to enhance another band’s
asymmetry measurement. (Id. at 19)
The Examiner further finds that while the prior art supports evaluating
inter-hemispherical asymmetries in a single frequency, and the Specification
at paragraph 77 supports “evaluation of inter-hemispherical asymmetries in a
single band . . . , there is no guidance or examples that support comparing
asymmetries between two different frequency bands.” (Id. )
We agree with the Examiner’s findings and conclusion that claims
27—31, 41, and 42 are not supported by the original disclosure.
Appellants argue that paragraph 77 of the Specification supports claim
27 because it “discloses that asymmetries can be evaluated in frequency
bands between brain hemispheres, without any restriction that the ‘specific
frequency bands’ are the same band” and provides for measuring
“interactions between frequency bands.” (Appeal Br. 17—18.) We do not
find this argument persuasive. Paragraph 77 discloses enhancing facial
emotion encoding measurements “by evaluating inter-hemispherical
asymmetries in EEG responses in specific frequency bands and measuring
frequency band interactions.” Appellants’ interpretation ignores the word
“responses” in which the asymmetries are measured and grafts asymmetry
onto the measurement of frequency band interactions. The more natural
reading of this sentence is the Examiner’s interpretation: that asymmetries in
an EEG response in a specific frequency band is compared at an inter-
hemispherical level. This inter-hemispherical comparative analysis can be
made at more than one frequency and separate and apart from that
comparison, frequency band interactions can be measured. We find that one
33
Appeal 2016-000519
Application 12/122,253
of ordinary skill in the art would not understand the use of the word
“different” in paragraph 72, or the discussions in paragraphs 68 (concerning
that analyzing measurements in a number of bands “enhances neurological
attention, emotional engagement and retention component estimates”) and
71 (concerning the fact that “any number of [synthesis] mechanisms can be
applied”) referenced by Appellants (Appeal Br. 18—19), to have any bearing
on the interpretation of paragraph 77 and the use of asymmetry analysis.
Thus, Appellants do not persuade us that the Examiner erred in
maintaining the rejection of claim 27 for containing new matter.
Claims 28—31, 41, and 42 have not been argued separately, and
therefore, fall with claim 27. 37 C.F.R. § 41.37(c)(l)(iv).
IV Non-Statutory Double Patenting
We note that US 13/249,525 has been abandoned. Thus, the
obviousness-type double patenting rejection premised on that application is
moot.
Appellants do not respond to the Examiner’s rejection of claims 27—
31 on the ground of non-statutory obviousness-type double patenting as
being unpatentable over claims 1, 3, 7, 8, and 10 of US 8,494,610. Thus, we
summarily affirm the Examiner’s rejection.
SUMMARY
We affirm the rejection of claims 2—4, 6—11, and 22-42 under
35 U.S.C. § 101 as claiming an abstract idea.
We affirm the rejection of claims 2—4, 6—8, 11, 22—24, 26, 32—35, and
37—39 under 35 U.S.C. § 103(a) as unpatentable over Rothschild, Hazlett,
Coan, and Heo.
34
Appeal 2016-000519
Application 12/122,253
We affirm the rejection of claims 2—4, 6—11, 22—24, 26, and 32-40
under 35 U.S.C. § 103(a) as unpatentable over Rothschild, Hazlett, Coan,
Heo, and Makeig.
We affirm the rejection of claims 2—4, 6—11, 22—26, and 32-40 under
35 U.S.C. § 103(a) as unpatentable over Rothschild, Hazlett, Coan, Heo,
Makeig, and Lowe.
We affirm the rejection of claims 27—31, 41, and 42 under 35 U.S.C.
§112, first paragraph as failing to comply with the written description
requirement.
We note that US 13/249,525 has been abandoned. Thus, the
obviousness-type double patenting rejection premised on that application is
moot.
We affirm the rejection of claims 27—31 on the ground of non-
statutory obviousness-type double patenting as being unpatentable over
claims 1, 3, 7, 8, and 10 of US 8,494,610.
TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
35