Rajat Bhattacharjee et al.

Patent Trials and Appeals Board

Sep 17, 2019

14038634 - (D) (P.T.A.B. Sep. 17, 2019)

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.
14/038,634 09/26/2013 Rajat Bhattacharjee 16113-2398002 6207
26192 7590 09/17/2019
FISH & RICHARDSON P.C.
PO BOX 1022
MINNEAPOLIS, MN 55440-1022
EXAMINER
YEN, SYLING
ART UNIT PAPER NUMBER
2166
NOTIFICATION DATE DELIVERY MODE
09/17/2019 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):
PATDOCTC@fr.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte RAJAT BHATTACHARJEE, ARANYAK MEHTA,
BENYU ZHANG, and VIVEK RAGHUNATHAN
____________________

Appeal 2019-000570
Application 14/038,634
Technology Center 2100
____________________

Before DENISE M. POTHIER, CARL L. SILVERMAN, and
JAMES W. DEJMEK, Administrative Patent Judges.

DEJMEK, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from a Final Rejection of
claims 21, 23–28, 30–35, and 37–40. Appellant has canceled claims 1–20,
22, 29, and 36. See Amend. 2–7 (filed Mar. 2, 2018). We have jurisdiction
over the remaining pending claims under 35 U.S.C. § 6(b).
We affirm.

1 Throughout this Decision, we use the word “Appellant” to refer to
“applicant” as defined in 37 C.F.R. § 1.42 (2018). Appellant identifies
Google LLC as the real party in interest. App. Br. 1.
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STATEMENT OF THE CASE
Introduction
Appellant’s disclosed and claimed invention generally relates to
selecting and providing content items that are relevant to a user. Spec. ¶ 29.
In particular, the content items are advertisements that are “targeted to an
initial query that the user has submitted, as well as candidate advertisements
that are targeted to one or more additional queries that are automatically
derived from the initial query.” Spec. ¶ 29. In a disclosed embodiment,
when a second instance of the initial query is received, presentation of the
content block (i.e., advertisements) associated with the additional query may
be determined based the historical amount of user interactions with the
particular content block. See Spec. ¶ 116–124, Fig. 7.
Claim 21 is representative of the subject matter on appeal and is
reproduced below:
21. A computer-implemented method comprising:
receiving an initial query from a user;
determining an additional query that is derived from the
initial query, wherein the additional query is related to the initial
query and generated using one or more terms of the initial query
and a term specifying a context of the initial query;
identifying, from on a historical performance log, an
amount of user interactions with a particular content block that
presented the additional query;
determining whether the amount of interactions with the
particular content block that presented the additional query
satisfies a threshold;
in response to determining that the threshold is not
satisfied by the amount of user interactions with the particular
content block that presented the additional query, filtering out the
particular content block from presentation in a search results
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page presented in response to the initial query when a second
instance of the initial query is received; and
in response to determining that the threshold is satisfied by
the amount of user interactions with the particular content block
that presented the additional query, including the particular
content block in the search results page presented when the
second instance of the initial query is received.

The Examiner’s Rejection
Claims 21, 23–28, 30–35, and 37–40 stand rejected under 35 U.S.C.
§ 101 as being directed to patent-ineligible subject matter. Final Act. 2–9. 2

ANALYSIS
Appellant disputes the Examiner’s conclusion that the pending claims
are directed to patent-ineligible subject matter. App. Br. 4–12; Reply Br. 1–
3. In particular, Appellant argues the pending claims differ from the patent-
ineligible claims at issue in Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d
1350 (Fed. Cir. 2016) because “the present claims generate new data in the
form of the additional query, and then selectively present or filter that new
data in order to improve the results of Internet search and retrieval
technologies.” App. Br. 5. By selectively presenting content items,
Appellant argues computing resources to display content not of interest to
the user may be preserved, thereby providing “an improvement in the
technical field of Internet search and retrieval functionality.” App. Br. 5–10;

2 Throughout this Decision, we have considered the Appeal Brief, filed
August 30, 2018 (“App. Br.”); the Reply Brief, filed October 18, 2018
(“Reply Br.”); the Examiner’s Answer, mailed October 9, 2018 (“Ans.”);
and the Final Office Action, mailed May 4, 2018 (“Final Act.”), from which
this Appeal is taken.
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Reply Br. 3. In addition, by directing the user to relevant additional queries
rather than reviewing every related query, Appellant asserts the pending
claims are more like the patent-eligible claims in Core Wireless Licensing
S.A.R.L. v. LG Elec., Inc., 880 F.3d 1356 (Fed. Cir. 2018).
The Supreme Court’s two-step framework guides our analysis of
patent eligibility under 35 U.S.C. § 101. Alice Corp. v. CLS Bank Int’l, 573
U.S. 208, 217 (2014). In addition, the Office recently published revised
guidance for evaluating subject matter eligibility under 35 U.S.C. § 101,
specifically with respect to applying the Alice framework. USPTO, 2019
Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7,
2019) (“Office Guidance”). If a claim falls within one of the statutory
categories of patent eligibility (i.e., a process, machine, manufacture, or
composition of matter) then the first inquiry is whether the claim is directed
to one of the judicially recognized exceptions (i.e., a law of nature, a natural
phenomenon, or an abstract idea). Alice, 573 U.S. at 217. As part of this
inquiry, we must “look at the ‘focus of the claimed advance over the prior
art’ to determine if the claim’s ‘character as a whole’ is directed to excluded
subject matter.” Affinity Labs of Tex., LLC v. DirecTV, LLC, 838 F.3d 1253,
1257–58 (Fed. Cir. 2016) (internal citations omitted). Per Office Guidance,
this first inquiry has two prongs of analysis: (i) does the claim recite a
judicial exception (e.g., an abstract idea), and (ii) if so, is the judicial
exception integrated into a practical application. 84 Fed. Reg. at 54. Under
the Office Guidance, if the judicial exception is integrated into a practical
application, see infra, the claim passes muster under § 101. 84 Fed. Reg. at
54–55. If the claim is directed to a judicial exception (i.e., recites a judicial
exception and does not integrate the exception into a practical application),
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the next step is to determine whether any element, or combination of
elements, amounts to significantly more than the judicial exception. Alice,
573 U.S. at 217; 84 Fed. Reg. at 56.
Here, we conclude Appellant’s claims recite an abstract idea.
Appellant’s claims are generally directed to conditionally presenting content
items (i.e., advertisements) targeted to a related search query based on
historical performance (i.e., user interaction) of the content items. This is
consistent with how Appellant describes the claimed embodiment of the
invention. See, e.g., Spec. ¶¶ 29 (describing the system as providing one or
more content items (e.g. advertisements) targeted to an initial query as well
as targeted to additional, related queries derived from the initial query), 39
(describing selecting targeted advertisements), 71 (describing the targeted
advertisements may be presented based on historical click through rates).
“[T]argeted advertising is [a well-known] concept, insofar as matching
consumers with a given product or service ‘has been practiced as long as
markets have been in operation.’” Morsa v. Facebook, Inc., 77 F. Supp. 3d
1007, 1013 (C.D. Cal. 2014), aff’d, 622 F. App’x 915 (Fed. Cir. 2015)
(quoting Tuxis Techs., LLC v. Amazon.com, Inc., No. CV 13-1771-RGA,
2014 WL 4382446, at *5 (D. Del. Sept. 3, 2014)). In other words, “[t]he
concept of gathering information about one’s intended market and
attempting to customize the information then provided is as old as the
saying, ‘know your audience.’” Morsa, 77 F. Supp. 3d at 1013 (quoting
OpenTV, Inc. v. Netflix Inc., 76 F. Supp. 3d 886, 893 (N.D. Cal. 2014)).
Consistent with our Office Guidance and case law, we conclude that
conditionally presenting content items (i.e., advertisements) targeted to a
related search query based on historical performance (i.e., user interaction)
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of the content items is a certain method of organizing human activity (e.g., a
commercial interaction, such as marketing or sales activity)—i.e., an abstract
idea. See 84 Fed. Reg. at 52; see also Intellectual Ventures I LLC v. Capital
One Bank (USA), 792 F.3d 1363, 1369 (Fed. Cir. 2015) (holding that
“tailoring content based on the viewer’s location” (i.e., a function of the
user’s personal characteristics) is the type of information tailoring that is a
fundamental practice long prevalent in our system and is an abstract idea);
Affinity Labs of Tex., LLC v. Amazon.com Inc., 838 F.3d 1266, 1271 (Fed.
Cir. 2016) (concluding “[l]ike the basic concept of tailoring content to a
user, as in Intellectual Ventures I, the basic concept of customizing a user
interface is an abstract idea”).
Claim 21 is reproduced below and includes the following claim
limitations that recite conditionally presenting content items (i.e.,
advertisements) targeted to a related search query based on historical
performance (i.e., user interaction) of the content items, emphasized in
italics:
21. A computer-implemented method comprising:
receiving an initial query from a user;
determining an additional query that is derived from the
initial query, wherein the additional query is related to the initial
query and generated using one or more terms of the initial query
and a term specifying a context of the initial query;
identifying, from on a historical performance log, an
amount of user interactions with a particular content block that
presented the additional query;
determining whether the amount of interactions with the
particular content block that presented the additional query
satisfies a threshold;
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in response to determining that the threshold is not
satisfied by the amount of user interactions with the particular
content block that presented the additional query, filtering out the
particular content block from presentation in a search results
page presented in response to the initial query when a second
instance of the initial query is received; and
in response to determining that the threshold is satisfied
by the amount of user interactions with the particular content
block that presented the additional query, including the
particular content block in the search results page presented
when the second instance of the initial query is received.
More particularly, conditionally presenting content items (i.e.,
advertisements) targeted to a related search query based on historical
performance (i.e., user interaction) of the content items comprises
(i) determining a related search query to an initial search query term (i.e., the
claimed step of determining an additional query); (ii) determining whether
the user interactions with content items (i.e., advertisements) targeted to the
related search query meet a desired threshold (i.e., the claimed step of
determining whether the amount of interactions with the particular content
block that presented the additional query satisfies a threshold); and (iii)
presenting (or not) the content items targeted to the related search query if
the determined user interactions meet (or do not meet) the desired threshold
(i.e., the claimed steps of either presenting or not presenting the content
block based on whether the user interactions with a particular content block
satisfies a threshold).
Because the claim recites an abstract idea, we next determine whether
the claim integrates the abstract idea into a practical application. 84 Fed.
Reg. at 54. To determine whether the judicial exception is integrated into a
practical application, we identify whether there are “any additional elements
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recited in the claim beyond the judicial exception(s)” and evaluate those
elements to determine whether they integrate the judicial exception into a
recognized practical application. 84 Fed. Reg. at 54–55 (emphasis added);
see also Manual of Patent Examining Procedure (“MPEP”) § 2106.05(a)–
(c), (e)–(h) (9th ed., Rev. 08.2017, Jan. 2018).
Here, we find the additional limitation(s) do not integrate the judicial
exception into a practical application. More particularly, the claims do not
recite (i) an improvement to the functionality of a computer or other
technology or technical field (see MPEP § 2106.05(a)); (ii) use a “particular
machine” to apply or use the judicial exception (see MPEP § 2106.05(b));
(iii) a particular transformation of an article to a different thing or state (see
MPEP § 2106.05(c)); or (iv) any other meaningful limitation (see MPEP
§ 2106.05(e)). See also 84 Fed. Reg. at 55.
Rather, the additional elements recite that a query is received and user
interactions with a particular content block are identified from a historical
performance log. Moreover, presenting content items if a threshold has been
met (or not presenting the content items if the threshold has not been met)
are the types of extra-solution activities (i.e., in addition to the judicial
exception) the courts have determined insufficient to transform judicially
excepted subject matter into a patent-eligible application. See MPEP
§ 2106.05(g); see also Parker v. Flook, 437 U.S. 584, 590 (1978)
(explaining “[t]he notion that post-solution activity, no matter how
conventional or obvious in itself, can transform an unpatentable principle
into a patentable process exalts form over substance”); Bilski v. Kappos,
561 U.S. 593, 612 (2010) (holding the use of well-known techniques to
establish inputs to the abstract idea as extra-solution activity that fails to
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make the underlying concept patent eligible); Elec. Power, 830 F.3d at 1354
(recognizing “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”); Bancorp Servs. LLC v. Sun Life Assurance Co.,
771 F. Supp. 2d 1054, 1065 (E.D. Mo. 2011) (explaining that “[S]toring,
retrieving, and providing data . . . are inconsequential data gathering and
insignificant post solution activity”) (quoting from Ex Parte Cherkas, 2010
WL 4219765, at *3 (BPAI Oct. 25, 2010)). Moreover, additional elements
in the limitations (e.g., determining whether an additional query is
sufficiently related to the initial query) merely refine elements of the abstract
idea and do not otherwise confer patent eligibility to the claims.
Additionally, contrary to Appellant’s assertions (see, e.g., App. Br. 6,
11–12), the claims do not recite an improvement to the functionality of a
computer or other technology or technical field. As the court in Core
Wireless noted in identifying from the specification multiple different
improvements to the user interface, it was clear that the “claims are directed
to an improvement in the functioning of computers, particularly those with
small screens.” Core Wireless, 880 F.3d at 1363. In contrast, in the instant
Specification, Appellant states that embodiments of the disclosed invention
“may be implemented to realize none, one or more of the following
advantages” such as (i) as user may view only advertisements likely to be of
interest; (ii) fewer squandered advertising opportunities; (iii) increased sales
opportunities for the advertiser; and (iv) additional revenue for the search
engine provider. Spec. ¶ 17 (emphasis added). Here, the computer function
is unchanged—i.e., receiving, processing, and presenting information.
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Appellant’s assertion that the claimed invention improves the field of
Internet search and retrieval, however, relates to the abstract idea, and does
not improve a computer, technology, or a technical field but is instead a
result of the abstract idea. See McRO, Inc. v. Bandai Namco Games
America, Inc., 837 F.3d 1299, 1314 (Fed. Cir. 2016) (“We . . . look to
whether the claims in these patents focus on a specific means or method that
improves the relevant technology or are instead directed to a result or effect
that itself is the abstract idea and merely invoke generic processes and
machinery.”) (citing Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1336
(Fed. Cir. 2016)). In addition, the additional elements do no more than
generally link the use of a judicial exception to a particular technological
environment (e.g., the Internet) or field of use (Internet search and retrieval).
See Bilski, 561 U.S. at 612 (quoting Diamond v. Diehr, 450 U.S. 175, 191–
92 (1981)) (noting “the prohibition against patenting abstract ideas ‘cannot
be circumvented by attempting to limit the use of the formula to a particular
technological environment’”); see also MPEP § 2106.05(h).
For at least the foregoing reasons, the claims do not integrate the
judicial exception into a practical application.
Because we determine the claims are directed to an abstract idea or
combination of abstract ideas, we analyze the claims under step two of Alice
to determine if there are additional limitations that individually, or as an
ordered combination, ensure the claims amount to “significantly more” than
the abstract idea. Alice, 573 U.S. at 217–18 (citing Mayo Collaborative
Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 72–73, 77–79 (2012)). As
stated in the Office Guidance, many of the considerations to determine
whether the claims amount to “significantly more” under step two of the
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Alice framework are already considered as part of determining whether the
judicial exception has been integrated into a practical application. 84 Fed.
Reg. at 56. Thus, at this point of our analysis, we determine if the claims
add a specific limitation, or combination of limitations, that is not well-
understood, routine, conventional activity in the field, or simply appends
well-understood, routine, conventional activities at a high level of generality.
84 Fed. Reg. at 56.
Here, Appellant’s claims do not recite specific limitations (or a
combination of limitations) that are not well-understood, routine, and
conventional. As discussed above, presenting or receiving information
(including retrieving information from a log) merely requires the well
understood function of a computer/computer network. See buySAFE, Inc. v.
Google, Inc., 765 F.3d 1350, 1355 (Fed. Cir. 2014) (“That a computer
receives and sends the information over a network—with no further
specification—is not even arguably inventive.”). In addition, the claims
(see, e.g., claim 28) recite generic computer components at a high level of
generality (“one or more computers and one or more storage devices”).
Generic computer components fail to provide an inventive concept to an
otherwise abstract idea. See Alice, 573 U.S. at 226 at 2360 (“Nearly every
computer will include a ‘communications controller’ and a ‘data storage
unit’ capable of performing the basic calculation, storage, and transmission
functions required by the method claims.”); Mortgage Grader, Inc. v. First
Choice Loan Servs. Inc., 811 F.3d 1314, 1324–25 (Fed. Cir. 2016) (generic
computer components, such as an “interface,” “network,” and “database,”
fail to satisfy the inventive concept requirement); see also I/P Engine, Inc. v.
AOL Inc., 576 F. App’x 982, 986 (Fed. Cir. 2014) (“search engines, content-
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based filtering, and collaborative filtering were all well-known in the art
. . . .”). Moreover, we note Appellant describes the various components at a
generic, high level. See Spec. ¶¶ 33, 140–147.
For the reasons discussed supra, we are unpersuaded of Examiner
error. Accordingly, we sustain the Examiner’s rejection under 35 U.S.C.
§ 101 of claims 21, 23–28, 30–35, and 37–40. See 37 C.F.R.
§ 41.37(c)(1)(iv).
DECISION
Claims Rejected Basis Affirmed Reversed
21, 23–28, 30–35,
and 37–40
35 U.S.C. § 101 21, 23–28,
30–35, and
37–40

Overall Outcome 21, 23–28,
30–35, and
37–40

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136a).

AFFIRMED