Ex Parte Priyadarshan et al

Patent Trial and Appeal Board

Mar 30, 2017

12790486 (P.T.A.B. Mar. 30, 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.
12/790,486 05/28/2010 Eswar Priyadarshan 9705.018.NPUS00[P9041US1] 1660
77970 7590 04/03/2017
Polsinelli — Apple Inc.
c/o Polsinelli PC
Three Embarcadero Center, Suite 1350
San Francisco, CA 94111
EXAMINER
CHEIN, ALLEN C
ART UNIT PAPER NUMBER
3627
NOTIFICATION DATE DELIVERY MODE
04/03/2017 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):
Apple @ Polsinelli. com
cadocket @ Polsinelli. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ESWAR PRIYADARSHAN, DAN MARIUS GRIGOROVICI,
RAVIKIRAN CHITTARI, OMAR ABDALA, and HAO DUONG
Appeal 2015-001966
Application 12/790,4861
Technology Center 3600
Before BIBHU R. MOHANTY, NINA L. MEDLOCK, and
ROBERT J. SILVERMAN, Administrative Patent Judges.
SILVERMAN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’
decision rejecting claims 1—7 and 17—21. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.
1 The Appellants identify Apple, Inc. as the real party in interest. Appeal
Br. 3.
Appeal 2015-001966
Application 12/790,486
ILLUSTRATIVE CLAIM
The Specification “relates to advertisement inventory and more
specifically relates to systems and methods for managing advertisement
inventory.” Spec. 11. Independent claim 1 illustrates the claimed subject
matter:
1. A method, comprising:
receiving a request comprising a target inventory slot in
an inventory space and a target objective;
identifying inventory atoms in an atom inventory
database associated with the target inventory slot based on a
hashing process to yield identified inventory atoms, a status of
the identified inventory atoms, and an atom cost for the
identified inventory atoms, the hashing process reducing a
computational complexity for performing the identifying, the
identifying comprising:
filtering the inventory space based at least on the
target objective to yield potential inventory atoms,
mapping the potential inventory atoms, using the
hashing process, to create super atoms in a topological
space preserving isomorphic properties of the inventory
space, the super atoms having a dimensionality less than
the potential inventory atoms, wherein the number of
super atoms created by the hashing process is less than
the number of the potential inventory atoms,
generating forecast information estimating an
inventory for the super atoms in the topological space
based on a design matrix modeling availability of
impressions over a time period,
projecting the forecast information from the super
atoms in the topological space back to the potential
inventory atoms in the inventory space, and
based on the forecast information, selecting the
identified inventory atoms from the potential inventory
atoms;
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assembling a proposed inventory slot comprising at least
a portion of the identified inventory atoms selected to meet the
target objective;
responsive to at least one of the inventory atoms in the
proposed slot having a status of unavailable resulting from
being associated with at least one booked inventory slot,
determining whether to adjust the inventory atoms for at least
one of the proposed inventory slot or a previously booked
inventory slot in the inventory space associated with the at least
one unavailable inventory atom; and
generating a response to the request, the response
comprising the proposed inventory slot.
CITED REFERENCES
The Examiner relies upon the following references:
Rao et al.
(hereinafter “Rao”)
Lin et al.
(hereinafter “Lin”)
Yang
Cosman
US 2003/0171990
US 2010/0100407
US 2010/0114696
US 2011/0251875
Al Sept. 11,2003
Al Apr. 22,2010
Al May 6, 2010
Al Oct. 13,2011
Kristin P. Bennett et al., Density-Based Indexing for Nearest-
Neighbor Queries, Microsoft Research Technical Report MSR-TR-
98-58 (Oct. 28, 1998) (hereinafter “Bennett”)
REJECTIONS
I. Claims 1—7 and 17—21 are rejected under 35 U.S.C. § 101 as
directed to non-statutory subject matter.2
2 The Final Office Action rejected claims 1—7 under 35 U.S.C. § 101 as
directed to non-statutory subject matter. Final Action 2^4. As a new ground
of rejection, the Answer presented a revised rejection, of claims 1—7 and 17—
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II. Claims 1—7 and 17—21 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Yang, Cosman, Rao, Lin, and Bennett.
FINDINGS OF FACT
We rely upon and adopt the Examiner’s findings stated in the Final
Office Action at pages 4—25 and the Answer at pages 4—11, except as stated
otherwise herein. Additional findings of fact may appear in the Analysis
below.
ANALYSIS
Rejection Under 35 U.S.C. § 101
According to the Examiner, applying the two-part analytical
framework of Alice Corp. Pty. Ltd. v. CIS Bank International, 134 S. Ct.
2347, 2355 (2014), claims 1—7 and 17—21 are “directed to the abstract idea
of managing an inventory of advertising impressions, a fundamental
economic activity,” and the claims otherwise recite “additional element(s) or
combination of elements” that “amount(s) to no more than: application of
the idea on a general purpose computing system.” Answer 3^4.
In response, the Appellants argue that, in regard to the first part of the
Alice analysis, “the abstract idea has not been identified with particularity
and the claim has not been analyzed as a whole,” noting that “it appears as
though the Examiner is ignoring particular claim elements that provide
meaningful limitations.” Reply Br. 3. Further, the Appellants contend:
“Unlike the cases where the Supreme Court has held claims to be abstract,
the current claims are not exclusively related to the execution of a financial
21, under 35 U.S.C. § 101 as directed to non-statutory subject matter.
Answer 3^4.
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transaction. In fact, the independent claims do not require any type of
financial exchange at all.” Id. The Appellants also liken the claims to those
in PNC Bank v. Secure Axcess, LLC, CBM2014-00100 (PTAB Sept. 9,
2014), arguing that the present claims “require a fundamental change to the
data; a change that cannot be performed in the human mind.” Id. at 4.
In regard to the second step of the Alice analysis for claim 1, the
Appellants argue:
The claimed steps provide a technical advantage because they
facilitate the identification of inventory atoms for filling a
request for a target inventory slot. As the claim itself recites,
the claimed hashing process is used for “reducing a
computational complexity for performing the identifying.”
Reply Br. 5. Consequently, the Appellants continue, unlike the situation
addressed in Alice, “the granting of a patent would not preempt use in all
fields or result in a monopoly over a fundamental practice.” Id.
The second step of the Alice framework is “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 (quoting
Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1294
(2012)). This prong of the analysis may be satisfied by a “non-conventional
and non-generic arrangement of known, conventional pieces.” Bascom
Global Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341, 1350
(Fed. Cir. 2016).
Although the rejection states that the claimed elements merely
implement the abstract idea “on a general purpose computing system”
(Answer 4), the Examiner’s findings and analysis do not sufficiently address
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the significance of the ordered combination of features of the claimed
invention (Reply Br. 5). Such a “particular arrangement of elements” that
creates “a technical improvement” might satisfy Alice's second step.
Bascom, 827 F.3d at 1350. Accordingly, the Appellants’ arguments are
persuasive of error in the rejection of independent claim 1 and, for the same
or similar reasons, independent claim 17.
In view of the foregoing, the rejection of claims 1—7 and 17—21 under
35U.S.C. § 101 is not sustained.
Rejection Under 35 U.S.C. § 103(a)
The Appellants offer five arguments for error in the rejection of
independent claim 1 as obvious over the cited references. See Appeal Br. 7—
17. As set forth below, each of these arguments is unpersuasive. The
Appellants rely upon these same arguments, in regard to independent
claim 17 and dependent claims 2—7 and 18—21. Id. at 15—16. Accordingly,
the rejection of claims 1—7 and 17—21 under 35 U.S.C. § 103(a) is sustained.
1. Whether Lin Teaches or Suggests “mapping the potential
inventory atoms... to create super atoms in a topological space
preserving isomorphic properties of the inventory space”
The Appellants (Appeal Br. 7—9) argue that Lin does not teach or
suggest the following features of claim 1:
mapping the potential inventory atoms ... to create super
atoms in a topological space preserving isomorphic properties
of the inventory space.
Yet, although the Appellants contend that the rejection provides “absolutely
no discussion of mapping to a topological space or of maintaining
isomorphic properties of the inventory space” (Reply Br. 7), the Appellants
do not point to any error in what the Examiner calls “a simple hypothetical
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example of manipulation of a set of data could satisfy the topology and
isomorphic properties recited by Appellant” (Answer 6). Rather, the crux of
Appellants’ argument is that the Examiner’s example is an improper attempt
to take Official Notice of features not shown in Lin. See Reply Br. 6—7.
The Examiner’s example is a set of impressions (the claimed “atoms”)
— “#1 male 30 years old”; “#2 male 20 years old”; and “#3 female 20 years
old” — and various groupings/requests thereof (the claimed “super atoms”)
that satisfy the features of the claimed “mapping”:
A request for persons older than 50 on the hypothetical set
would yield an empty set. A request for males, would yield a
union of 1, 2. A request for 20 year olds would yield a union of
2, 3. A request of male 20 year olds would yield only 2.
Accordingly, this hypothetical example could satisfy the
topological constraints suggested by Appellant. (Appellant’s
Brief, p.8). The examiner interprets grouping of impressions to
read on “super atoms”. Furthermore, as the properties of the
impressions do not change as they are grouped (impression #2
is still a 20 year old male, even if the request groups it with a 20
year old female), it is believed that the isomorphic properties of
the items are retained.
Answer 6. Although the Appellants dispute that the Examiner’s example
“preserv[es] isomorphic properties of the inventory space” as opposed to
the claimed “atoms” themselves, the Appellants fail to explain the basis for
the alleged deficit. Reply Br. 7—8.
Even though the Examiner’s example is not set forth in Lin, the
Examiner demonstrates that it is extrapolated from features described in the
reference. Specifically, Lin teaches that impressions/atoms may have
multiple dimensions (per Lin 125, “the page is on Yahoo Finance; the ad
impression is shown in the North position; the visitor is a male, 25 years old,
living in the United States, California, having interests in finance and travel;
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the visit time is 3:00 PM, Jul. 2, 2009 (a time in the future)”) and that an
advertiser may make a request (e.g., by a contract) based upon fewer than
the total number of dimensions that exist for a particular impression/atom
(per Lin 130, requests could call for “Yahoo!finance users who are
California males” and “Yahoo! users who are aged 20-35 and interested in
sports”). See Answer 5—6. Therefore, the Appellants fail to show that Lin
does not suggest the identified features of claim 1.
2. Whether Lin Teaches or Suggests “super atoms having a
dimensionality less than the potential inventory atoms, wherein
the number of super atoms... is less than the number of the
potential inventory atoms”
The Appellants contend that Lin does not teach or suggest the
following features of claim 1:
super atoms having a dimensionality less than the potential
inventory atoms, wherein the number of super atoms ... is less
than the number of the potential inventory atoms.
Appeal Br. 10-11.
According to the Examiner, the claimed arrangement flows directly
from the conditions (derived from Lin) noted above, because one million
impressions (i.e., “potential inventory atoms”) in the inventory may be
allocated to two groups (i.e., two “super atoms”), based upon an advertiser’s
requests. Answer 7.
In response, the Appellants argue that the Examiner’s comparison is
“inapplicable” to the claimed features:
[T]he fact that an advertiser can make a request based on a
smaller set of dimensions does not change the number of
dimensions available. The number of dimensions available for
the impression remains the same and is not reduced simply
because the request made by the advertiser identifies the
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impression based on a fewer number of dimensions than those
available.
Reply Br. 8.
The Appellants’ argument is unpersuasive. The claimed features in
question concern grouping potential future impressions (“atoms”) in various
ways, based upon greater or fewer conditions — precisely as the Examiner
discusses. The Appellants do not present a reason why the Examiner’s
analysis based upon the teachings of Lin are not sufficient.
3. Whether Lin Teaches or Suggests “projecting the forecast
information from the super atoms in the topological space back
to the potential inventory atoms in the inventory space”
The Appellants contend that Lin does not teach or suggest the
following features of claim 1:
projecting the forecast information from the super atoms
in the topological space back to the potential inventory atoms in
the inventory space.
Appeal Br. 11—12.
The Examiner’s position (Answer 8) is that Lin (|| 37, 72, Fig. 4)
teaches the claimed “mapping” of forecasted viewer impressions (“potential
inventory atoms”) to contracts (“super atoms”) — as discussed above, in
Section 1 — and that the delivery of forecasted impressions to the advertiser
constitutes the claimed “projecting the forecast. . . back to . . . inventory
space.” Answer 9; see also Final Action 12—13.
The Appellants argue that “mapping/projecting among topological
spaces is a well-defined mathematical concept that must be interpreted in its
proper context” and that the Examiner “ignored the limitation that requires
projecting from a topological space back to the inventory space.” Reply
Br. 8. Further, the Appellants contend that claim 1 “goes on to utilize the
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information that is projected from the topological space to assemble the
inventory slot and ultimately respond to the request”; the claimed method “is
not simply delivering impressions to the advertiser, but is done to facilitate
selection of appropriate atoms/impressions that may ultimately be used by
an advertiser.” Id. at 9.
The Appellants’ argument is unpersuasive. The issue is whether Lin
teaches or suggests what is claimed, regardless of any lack of mathematical
nomenclature. Moreover, as for the matter of whether Lin facilitates
selection of appropriate “atoms,” this is addressed in other claim limitations:
generating forecast information estimating an inventory
for the super atoms in the topological space based on a design
matrix modeling availability of impressions over a time
period,. . . and
based on the forecast information, selecting the identified
inventory atoms from the potential inventory atoms.
The Appellants did not address these limitations in the Appeal Brief and,
thus, may not raise them for the first time in the Reply Brief. See 37 C-.F.R.
§ 41.41(b)(2) (“Any argument raised in the reply brief which was not raised
in the appeal brief. . . will not be considered by the Board for purposes of
the present appeal, unless good cause is shown.”)
4. Whether Combining Bennett with the Other References
Constitutes Impermissible Hindsight
The Appellants contend that the rejection of claim 1 is erroneous
because combining Bennett (which is relied upon for the “hashing” features
of the claim) with the other references constitutes an impermissible
hindsight reconstruction. Appeal Br. 12—14; Reply Br. 9. In support of this
contention, the Appellants point out: Bennett mentions advertising only
once; Bennett does not address claim l’s use of “hashing” to “map[]” among
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“topological space[s]”; Bennett criticizes “hashing”; and Bennett is a
“scholarly article” from a “different field of endeavor.” Appeal Br. 13—14;
Reply Br. 9.
The Appellants’ arguments are not persuasive of error. As the
Examiner explains, Bennett does not discuss mapping among topological
spaces, but does explicitly state that its technology is applicable in the field
of “advertising (especially online)” — the very field of the Appellants’
purported invention — and also that hashing “provides a general scheme for
mapping data into a lower dimensional space,” which is one of the problems
that the Appellants seek to address through the use of hashing in claim 1.
Answer 9—10 (citing Bennett, pp. 1, 4—5). The Examiner notes that Lin also
discloses the need for algorithms to search high-dimension data sets (id.
at 10 (citing Lin 139)), which creates an additional reason why a person of
ordinary skill in the art might have been drawn to Bennett. In addition,
although the Appellants contend that Bennett is from a different field of
endeavor, the Appellants do not establish Bennett as non-analogous art. On
the contrary, because Bennett states that its teachings apply to the field of
online advertising, Bennett is in the same field of endeavor as the claimed
invention and, in any event, is at least reasonably pertinent to the problem
that the Appellants address in the claimed subject matter.
5. Whether Bennett “Teaches Away” from the Claimed Invention
The Appellants allege that Bennett teaches away from the purported
invention of claim 1, because Bennett depicts Locality Sensitive Hashing
(“LSH”) as inferior to the new algorithmic approach that Bennett introduces
— Density-Based Indexing (“DBIN”). Appeal Br. 14—15 (citing Bennett,
pp. 4—5, 7); Reply Br. 9. The referenced portion of Bennett states:
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Locality-Sensitive Hashing provides a general scheme for
mapping data into a lower-dimensional space and finding
nearest neighbors in the reduced space. The results correspond
to an approximate nearest neighbor query in the original space.
Locality-Sensitive Hashing also provides an approximate
answer but, unlike the proposed [DBIN] algorithm, it does not
provide a probabilistic guarantee of good performance.
Bennett, pp. 4—5 (footnote omitted).
The Appellants’ argument is not persuasive. “A reference does not
teach away ... if it merely expresses a general preference for an alternative
invention but does not ‘criticize, discredit, or otherwise discourage’
investigation into the invention claimed.” DePuy Spine, Inc. v. Medtronic
Sofamor Danek, Inc., 567 F.3d 1314, 1327 (Fed. Cir. 2009) (quotingIn re
Fulton, 391 F.3d 1195, 1201 (Fed Cir. 2004)). Such is precisely what the
Appellants recognize: “Bennett describes LSH as a weaker alternative to
the DBIN approach that it discloses and discourages the use of hashing in
favor of the DBIN method.” Appeal Br. 15. Indeed, the Examiner explains
that a person of ordinary skill in the art would have had sound reasons for
adopting the hashing technique, in view of Bennett’s disclosure:
That Bennett explicitly mentions LSH as background art
would support that the notion that the technique would have
been well known to one of ordinary skill in the art at the time.
Furthermore, in context, Bennett is a research paper. Merely
publishing an improvement to existing algorithms would not
guarantee that one of ordinary skill in the art would
immediately abandon previous proven algorithms. Indeed,
existing proven algorithms could continue to be used for many
reasons. They could be well understood, less costly to use or
the newly published algorithm, though promising better
performance, remains unproven in real world practice.
Answer 11.
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DECISION
We REVERSE the Examiner’s decision rejecting claims 1—7 and 17—
21 under 35 U.S.C. § 101.
We AFFIRM the Examiner’s decision rejecting claims 1—7 and 17—21
under 35 U.S.C. § 103(a).
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
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