Ex Parte Roytman et al

Patent Trial and Appeal Board

Jun 30, 2017

12762012 (P.T.A.B. Jun. 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.
12/762,012 04/16/2010 Anatoly ROYTMAN 02334-00-US 2454
79340 7590
MANNAVA & KANG, P.C.
3201 Jermantown Road
SUITE 525
FAIRFAX, VA 22030
07/05/2017 EXAMINER
VIG, NARESH
ART UNIT PAPER NUMBER
3622
NOTIFICATION DATE DELIVERY MODE
07/05/2017 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):
ASHOKM@MANNAVAKANG.COM
docketing @ mannavakang. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ANATOLY ROYTMAN and MATTHEW SYMONS
Appeal 2016-004458
Application 12/762,0121
Technology Center 3600
Before THU A. DANG, SCOTT B. HOWARD, and SCOTT E. BAIN,
Administrative Patent Judges.
BAIN, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1, 3—10, 12—16, and 18—20, which constitute all
claims pending in the application. Claims 2, 11, and 17 have been cancelled.
We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 Appellants identify the real party in interest as Accenture Global Services
Limited. App. Br. 2.
Appeal 2016-004458
Application 12/762,012
STATEMENT OF THE CASE
The Claimed Invention
The claimed invention relates to providing “customized” content to a
user in a media environment based upon the user’s previous interactions or
“touchpoints.” Spec. Tflf 12—13. Claims 1,10, and 16 are independent.
Claim 1 is illustrative of the invention and the subject matter of the appeal,
and reads as follows (with the disputed limitations emphasized):
1. A system for touchpoint content action customization at a
current touchpoint to achieve a business objective, the
touchpoint comprising at least a portion of a webpage, the
system comprising:
a user touchpoint data capture unit to receive user data,
said user data including user attributes for a user interacting
with the current touchpoint of a plurality of touchpoints in a
channel comprising the Internet, and to determine a user group
to which the user belongs based on the user attributes of the
user; and
a content action optimization engine to:
determine a previous touchpoint of the plurality of
touchpoints accessed by the user via the Internet and a
customized content action provided to the user at the
previous touchpoint;
determine a plurality of business objectives
operable to be achieved by customizing the current
touchpoint;
generate a tree structure of a plurality of candidate
content actions from a content action repository for each
of the business objectives and based on the user
attributes, wherein the tree structure includes a plurality
branches stemming from the current touchpoint, wherein
each branch corresponds to a different one of the
plurality of business objectives and each branch includes
candidate content actions for the business objective of the
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branch and for a user group determined from the user
attributes, wherein the candidate content actions each
include an observed user behavior that is operable to
result from administering the candidate content action at
the current touch point to achieve the respective business
objective and a prediction value predicting whether the
observed user behavior will be performed as a result of
administering the candidate content action at the current
touch point based on previous actions of the user group;
determine a selection of one of the plurality of
business objectives;
identify the candidate content actions from the
branch corresponding to the selected business objective;
select one of the candidate content actions in the
identified branch based on the observed user behavior
and the prediction value for the selected candidate
content action;
customize the current touchpoint with the selected
candidate content action, the selected candidate content
action having a highest observed percentage of success
based on its prediction value, of the candidate content
actions in the identified branch, in achieving the selected
business objective; and
present the customized current touchpoint to the
user as part of the webpage via the Internet.
App. Br. 28—29 (Claims App.).
The Rejections on Appeal
Claims 1, 3—10, 12—16, and 18—20 stand rejected under
35U.S.C. § 101 as directed to ineligible subject matter. Final Act. 2—5.
Claims 1, 3—10, 12—16, and 18—20 stand rejected under pre-AIA 35
U.S.C. § 103(a) as being unpatentable Murphy (US 6,615,247 Bl; Sept. 2,
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Application 12/762,012
2003) and Romano et al. (US 2008/0046267 Al; Feb. 21, 2008)
(“Romano”). Final Act. 5—10.
ANALYSIS
We have reviewed the Examiner’s rejection in light of Appellants’
arguments presented in this appeal. Arguments which Appellants could
have made but did not make in the Briefs are deemed to be waived. See
37 C.F.R. § 41.37(c)(l)(iv). On the record before us, we are unpersuaded
the Examiner has erred. We adopt as our own the findings and reasons set
forth in the rejections from which the appeal is taken and in the Examiner’s
Answer, and provide the following for highlighting and emphasis.
Rejection Under 35 U.S.C. §101
Appellants argue the Examiner erred in concluding the claims are
directed to an abstract idea and therefore, constitute ineligible subject matter.
App. Br. 10-21.2 Specifically, Appellants argue the Examiner fails to make
a prima facie case under step one of the Alice framework, and that the
claimed “process of customizing a touchpoint content based on user data of
the user visiting the current touchpoint” is not an abstract idea. App. Br. 13.
Appellants further argue that even if the Examiner satisfies step one of Alice,
the claims include something “significantly more” under step two of Alice so
as to constitute eligible subject matter, because they include technical
features and do not preempt the entire field of “customizing web content.”
App. Br. 14—21. Based on the record before us, we are not persuaded of
Examiner error.
2 Appellants argue all claims as a group for purposes of the ineligible subject
matter rejection, and we choose claim 1 as representative of the group.
37 C.F.R. §41.37(c)(l)(iv).
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Application 12/762,012
Under 35 U.S.C. § 101, an invention is patent-eligible if it claims a
“new and useful process, machine, manufacture, or composition of matter.”
35 U.S.C. § 101. There is no dispute that Appellants’ claims are directed to
a process or machine. The Supreme Court, however, has long interpreted
§ 101 to include an implicit exception: “[l]aws of nature, natural phenomena,
and abstract ideas” are not patentable. See, e.g., Alice Corp. PtyLtd. v. CLS
Banklnt’l, 134 S. Ct. 2347, 2354 (2014). The Supreme Court, in Alice,
reiterated the two-step framework previously set forth in Mayo
Collaborative Services v. Prometheus Laboratories, Inc., 132 S. Ct. 1289,
1300 (2012), “for distinguishing patents that claim laws of nature, natural
phenomena, and abstract ideas from those that claim patent-eligible
applications of these concepts.” Alice, 134 S. Ct. at 2355. The first step is
to “determine whether the claims at issue are directed to one of those patent-
ineligible concepts,” such as an abstract idea, as the Examiner concludes in
this case. If the claims are not directed to an abstract idea, the inquiry ends.
Otherwise, the inquiry proceeds to the second step where the elements of the
claims are considered “individually and ‘as an ordered combination”’ to
determine whether there are additional elements that “‘transform the nature
of the claim’ into a patent-eligible application.” Alice, 134 S. Ct. at 2355
(quoting Mayo, 132 S. Ct. at 1297).
The Examiner concludes the claims are directed to customizing a web
page (touchpoint content) based on user data such as browsing history (path
the user took) and business objective (such as advertising and promotion).
Ans. 2. In the Final Action, the Examiner steps through each element of
claim 1 and explains why each element adds nothing more to the abstract
idea of customizing a web page. Final Act. 3—5. We agree. “Collecting
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information, including when limited to particular content” is an abstract
idea. Elec. Power Grp., LLC v. Alstrom S.A., 830 F.3d 1350, 1353 (Fed. Cir.
2016). Further, “merely presenting the results of abstract processes of
collecting and analyzing information, without more ... is abstract as an
ancillary part of such collection and analysis.” Elec. Power, 830 F.3d at
1354. Accordingly, on this record, we are satisfied Examiner has
established a prima facie case as to step one of Alice. See In re Jung, 637
F.3d 1356, 1362 (Fed. Cir. 2011) (Office carries its procedural burden when
its rejection satisfies the requirements of 35 U.S.C. § 132 by notifying the
applicant of the reasons for rejection “together with such information and
references as may be useful in judging of the propriety of continuing the
prosecution of [the] application.”). Appellants present no argument
demonstrating specific error in the Examiner’s conclusion as to step one, and
we fine none.
As to Alice step two, Appellants argue the “prediction value” and
“selected candidate content action” of claim 1 are “necessarily rooted in
computer technology” and therefore are similar to the invention deemed
statutory subject matter in DDR Holdings, LLC v. Hotels.com, LP, 773 F.3d
1245 (Fed. Cir. 2014). App. Br. 14—15. In DDR Holdings, however, the
Federal Circuit concluded the claimed invention “overrides the routine and
conventional sequence of events ordinarily triggered by the click of a
hyperlink” rather than employing mere ordinary use of a computer or the
Internet. DDR Holdings, 773 F.3d at 1258. Here, in contrast, the Examiner
finds, and we agree, claim 1 simply recites “generic computer
functionalities.” Ans. 2; Final Act. 3—5. In the Final Action, the Examiner
explained the claim “elements together execute in routinely and
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conventionally accepted[,] coordinated manners” and “achieve an overall
outcome which, similarly, is . . . well-understood, routine and conventional
activities previously known to the [computer] industry.” Ans. 4—5.
Appellants have demonstrated no error in this conclusion, on the record
before us.
Similarly, we are unpersuaded by Appellants’ argument that the
claims “do not preempt the entire field of customizing web content.” App.
Br. 20. Although “preemption may signal patent ineligible subject matter,
the absence of complete preemption does not demonstrate patent eligibility.”
FairWarning IP, 839 F.3d 1089, 1098 (Fed. Cir. 2016) (quoting Ariosa
Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015);
see also OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1362—63
(Fed. Cir. 2015), cert, denied, 136 S. Ct. 701, 193 (2015) (“[TJhatthe claims
do not preempt all price optimization or may be limited to price optimization
in the e-commerce setting do not make them any less abstract.”). Where, as
here, “a patent’s claims are deemed only to disclose patent ineligible subject
matter under the Mayo framework . . . preemption concerns are fully
addressed and made moot.” Ariosa, 788 F.3d at 1379.
For the foregoing reasons, we sustain the ineligible subject matter
rejection of claims 1, 3—10, 12—16, and 18—20.
Rejection Under Pre-AIA 35 U.S.C. § 103(a)
Appellants argue the Examiner erred in finding the prior art teaches or
suggests “content candidate actions [including] prediction value” based on
prior actions of a user, and “selecting” an action based on observed user
behavior and the “prediction value,” as recited in claim 1. App. Br. 22—25.
Specifically, Appellants contend Murphy’s list of “[d]ata base entries
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. . . cannot reasonably be relied upon to teach or suggest” a prediction value,
and that Murphy “does not disclose selecting an entry based on anything
other than the referring URL.” App. Br. 25. We disagree.
As the Examiner finds, Murphy teaches “customizing” a web page
“based on a customer’s previous location or terms used in a search by the
customer.” Murphy col. 2,11. 39-41; Final Act. 7—8, (emphasis added). The
customization (which may include various features such as coupons or
promotional offers) “increases the chances of retaining the customer in the
web site and induc[es] the customer to make a purchase.” Murphy col. 2,11.
52—58. We discern no error in the Examiner’s finding that one of ordinary
skill in the art would understand the customization in Murphy includes
various alternatives depending upon a user’s prior location or search terms,
and therefore, would understand the teaching to include “content candidate
actions” and a prediction value based upon the foregoing data. Final Act. 7—
8; Ans. 3. Furthermore, as the Examiner finds, Murphy teaches the claimed
“selection]” of an action in that a particular customized web site results
from processing the foregoing information related to prior location and
search terms. Id.3 * * * * 8Accordingly, we are unpersuaded of error in the
Examiner’s rejection of claim 1.
Appellants argue independent claims 10 and 16 recite limitations
commensurate in scope with claim 1, and are patentable for the same
3 Appellants’ arguments to the contrary, App. Br. 23—24 consist largely of
quoting the claim limitations, quoting the prior art, and concluding the prior
art lacks the limitations. App. Br. 23—24; see, e.g., In re Jung, 637 F.3d at
1365; In reLovin, 652 F.3d 1349, 1357 (“mere recitation of the claim
elements and a naked assertion that the corresponding elements were not
found in the prior art” does not demonstrate error).
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reasons. For the reasons set forth above, we are not persuaded of error. Nor
are we persuaded of error regarding any of the remaining claims, all of
which are dependent and which Appellants do not argue separately.
Accordingly, we sustain the rejection of claims 1, 3—10, 12—16, and
18—20 as being unpatentable over Murphy and Romano.
DECISION
We affirm the Examiner’s rejections of claims 1, 3—10, 12—16, and
18-20.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1). See 37 C.F.R.
§ 41.50(f).
AFFIRMED
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