Robert H. Burcham et al.

Patent Trials and Appeals Board

Sep 30, 2019

14532969 - (D) (P.T.A.B. Sep. 30, 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.
14/532,969 11/04/2014 Robert H. Burcham IDF 10298 (4300-49700) 5026
28003 7590 09/30/2019
SPRINT
6391 SPRINT PARKWAY
KSOPHT0101-Z2100
OVERLAND PARK, KS 66251-2100
EXAMINER
SUMMERS, KIERSTEN V
ART UNIT PAPER NUMBER
3688
NOTIFICATION DATE DELIVERY MODE
09/30/2019 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):
6450patdocs@sprint.com
SprintMail@dfw.conleyrose.com
steven.j.funk@sprint.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte ROBERT H. BURCHAM, GEOFFREY A. HOLMES,
and KENNETH LEE JONES
____________

Appeal 2019-000017
Application 14/532,9691
Technology Center 3600
____________

Before JASON J. CHUNG, 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 1–16, 19, and 20, which constitute all claims
pending in the application. Claims 17 and 18 have been canceled. We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm.

1 Appellants identify Sprint Communications Company L.P. as the real party
in interest. App. Br. 3.
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BACKGROUND
The Claimed Invention
The invention relates to targeted advertising, i.e., “choosing targets for
an advertis[ing] campaign” based upon particular characteristics such as
“age” or other “demographic or behavioral information.” Spec. ¶¶ 4–5.
Claims 1, 8, and 12 are independent. Claim 12 is illustrative of the invention
and the subject matter in dispute, and reads as follows:
1. A method for choosing targets for an advertisement
campaign from a plurality of profiles with unknown data
performed by an application stored in a non-transitory memory
and executed by a processor, the method comprising:
determining correlations between different variables of a
plurality of variables in a first set of profiles based on known
data for each of the plurality of variables, wherein a second set
of profiles comprises unknown data for one or more of the
plurality of variables;
imputing a first set of values for the unknown data in the
second set of profiles using a first imputation method based on
the correlations between the different variables of the first set of
profiles, wherein the first imputation method comprises a
statistical scattering technique;
imputing a second set of values for the unknown data in
the second set of profiles using a second imputation method
based on the correlations between the different variables of the
first set of profiles, wherein the second imputation method
comprises a most likely outcome technique, and wherein
multiple values including a first value of the first set of values
and a second value of the second set of values are imputed to
each variable of the one or more of the plurality of variables
comprising the unknown data in the second set of profiles;
storing, in a database, the multiple values imputed to
each variable of the one or more of the plurality of variables in
the second set of profiles;
determining statistical segment boundaries for the
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unknown data in the second set of profiles based on the first
imputation method;
accessing from each of the second set of profiles, one
value of the multiple values imputed to at least one of the one
or more of the plurality of variables in the second set of
profiles, wherein the one value corresponds to the second
imputation method;
selecting a group of targets from at least the second set of
profiles for an advertisement campaign based on the accessed
value corresponding to the second imputation method from
each of the second set of profiles;
determining a confidence factor for each imputed value
of the first and second sets of values;
determining a cost associated with the selected group of
targets based on the confidence factor; and
sending an advertisement of the advertisement campaign
to the selected group of targets.
App. Br. 26–27 (Claims Appendix) (emphases added).
The Rejections on Appeal
Claims 1–16, 19, and 20 are rejected under 35 U.S.C. § 101 as being
directed to patent-ineligible subject matter. Final Act. 9–11.
DISCUSSION
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)(1)(iv). On the record before us, Appellants have not
persuaded us of error.
Rejection Under 35 U.S.C. § 101
The Examiner determined that the claims are directed to “provid[ing]
targeted ads to users,” which is a fundamental economic practice and,
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accordingly, constitutes an abstract idea. Final Act. 5–6; Ans. 6–7; Alice
Corp. v. CLS Bank Int’l, 573 U.S. 208, 217 (2014) (describing two-step
framework “for distinguishing patents that claim laws of nature, natural
phenomena, and abstract ideas from those that claim patent-eligible
applications of those concepts”). Further, the Examiner found that
additional elements in the claims merely constituted conventional steps
performed on a generic computer, and therefore did not include additional
elements sufficient to amount to significantly more than the abstract idea.
Final Act. 7–8; Ans. 12–14. Accordingly, the Examiner concluded that the
claims constitute ineligible subject matter.
Appellants argue that the Examiner has reduced the claims to an
overly “high level of abstraction” and that none of the claims cited by the
Examiner are applicable. App. Br. 17–20; Reply Br. 4–5. Additionally, as
discussed further below, Appellants argue the claims include “significantly
more” than the alleged abstract idea, and that the Examiner failed to support
a finding that additional elements are well-understood, routine, and
conventional. App. Br. 21–24.
After the Briefs were filed and Answer mailed in this case, the
USPTO published “Revised Subject Matter Eligibility Guidance”
synthesizing case law and providing agency instruction on the application of
§ 101. See USPTO, 2019 Revised Patent Subject Matter Eligibility
Guidance 84 Fed. Reg. 50 (Jan. 7, 2019) (“Guidance”). Under the
Guidance, we must look to whether a claim recites:
(1) any judicial exceptions, including certain groupings of
abstract ideas (i.e., mathematical concepts, certain methods of
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organizing human activity such as a fundamental economic
practice, or mental processes) (“Step 2A, Prong One”); and
(2) additional elements that integrate the judicial exception into
a practical application (see MPEP §§ 2106.05(a)–(c), (e)–(h))
(“Step 2A, Prong Two”).
See Guidance, 84 Fed. Reg. at 54–55.
Only if a claim recites a judicial exception and does not integrate that
exception into a practical application, do we then look to whether the claim:
(3) adds a specific limitation beyond the judicial exception that
is not “well-understood, routine, conventional” in the field (see
MPEP § 2106.05(d)); or
(4) simply appends well-understood, routine, conventional
activities previously known to the industry, specified at a high
level of generality, to the judicial exception.
See id. at 56 (collectively “Step 2B”).
We begin our de novo review with Step 2A, Prong One of the
Guidance, as applied to Appellants’ claim 1.2 Claim 1 recites “a method for
choosing targets for an advertisement campaign.” App. Br. 26 (Claims
Appendix). Our review of the claim discerns the following particular steps:
(1) “determining correlations” between “variables” (i.e., data); (2)
“imputing” (i.e., assigning) “values” for “data;” (3) “imputing” (i.e.,
assigning) a second set of “values” for “data;” (4) “storing . . . values” in a

2 The Guidance refers to “Step One” as determining whether the claimed
subject matter falls within the four statutory categories identified by
35 U.S.C. § 101: process, machine, manufacture, or composition of matter.
This step is not at issue in this case.
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“database;” (5) “determining statistical segment boundaries” (i.e., data
boundaries); (6) “accessing” one “value” (data); (7) “selecting” targets based
on the foregoing; (8) “determining” a “confidence factor; (9) “determining”
a “cost;” and (10) “sending an advertisement.” App. Br. 26–27 (Claims
Appendix). We agree with the Examiner’s determination that the foregoing
steps merely constitute the idea of targeted advertising, which is a
fundamental economic practice. Each of the steps either recites collecting
data regarding a user for targeted advertising, processing that data according
to rules (not specifically recited) for the targeted advertising program, and/or
determining and sending a targeted advertisement to send to a user.
Accordingly, we determine that, like the claims to targeted advertising
in Affinity Labs, the claims to hedging in Bilski, and the claims to mitigating
settlement risk in Alice, claim 1 recites a fundamental economic practice,
which is one of the certain methods of organizing human activity deemed to
be an abstract idea under the Guidance. See Affinity Labs of Texas, LLC v.
Amazon.com Inc., 838 F.3d 1266, 1267–69 (Fed. Cir. 2016) (“[T]he patent
[is] directed to a ‘method for targeted advertising’ in which an advertisement
is selected for delivery to the user of a portable device based on at least one
piece of demographic information about the user.”); Bilski v. Kappos, 561
U.S. 593 (2010); Alice, 573 U.S. 208.
We next proceed to Step 2A, Prong 2 of the Guidance. Under this
step, if the claim “as a whole” integrates the abstract idea into a “practical
application,” it is patent eligible. Appellants argue that claim 1 recites a
“specific computer implementation” that is similar to the claims held patent-
eligible in DDR and Bascom. Reply Br. 6–8; DDR Holdings, LLC v.
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Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014); Bascom Glob. Internet
Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341 (Fed. Cir. 2016).
Improving the functioning of a computer can reflect integration of an
idea into a “practical application.” Guidance, Sect. III. Appellants,
however, do not explain, and we do not discern, any improvement in
technology from the claimed invention. Compare Bascom, 827 F.3d at 1350
(“[H]arness[ing a] technical feature of network technology in a filtering
system” to customize content filtering); DDR, 773 F.3d at 1258 (“[T]he
claims at issue here specify how interactions with the Internet are
manipulated to yield a desired result––a result that overrides the routine and
conventional sequence of events ordinarily triggered by the click of a
hyperlink.”) (emphasis added). The claims in Bascom and DDR, for
example, were “necessarily rooted in computer technology in order to
overcome a problem specifically arising in the realm of computer networks”
(see, e.g., DDR, 773 F.3d at 1257), but Appellants’ claim 1 recites a targeted
advertising method that merely uses generic computing elements. See, e.g.,
Spec. ¶¶ 18, 34–38. The Specification describes the invention as being
implemented on a standard “computer system” including a “processor,”
“memory,” “input/output devices,” and “network connectivity devices,” and
further states that “by well-known design rules” any of the functionality
performed by software can be “converted to a hardware implementation.”
Id. ¶¶ 34–35 (emphasis added); see also id. ¶¶ 36–38 (describing generic
memory, input/output devices, and network devices).
Appellants also do not direct us to any evidence that claim 1 recites
any unconventional rules, transforms or reduces an element to a different
state or thing, or otherwise integrates the idea into a practical application.
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Rather, claim 1 recites targeted advertising by collecting profile data and
“determining” correlations and “statistical segment boundaries.” App. Br.
26–27 (Claims App’x.). Reciting a result-oriented solution that lacks any
details as to how the computer performed the modifications is the equivalent
of the words “apply it.” Intellectual Ventures I LLC v. Capital One Fin.
Corp., 850 F.3d 1332, 1341–42 (Fed. Cir. 2017) (citing Elec. Power Grp.,
LLC v. Alstom S.A., 830 F.3d 1350, 1356 (Fed. Cir. 2016) (cautioning
against claims “so result focused, so functional, as to effectively cover any
solution to an identified problem”)); see also CyberSource v. Retail
Decisions, Inc., 654 F.3d 1366, 1375 (Fed. Cir. 2011) (mere data gathering
does not make a claim patent-eligible). The data gathering and processing
steps in claim 1 do not add meaningfully to the recited fundamental
economic practice.
Finally, under Step 2B of the Guidance, we must look to whether the
claims include any “additional limitation that is not well-understood, routine
[or] conventional.” The “question of whether a claim element or
combination of elements is well-understood, routine and conventional to a
skilled artisan in the relevant field is a question of fact.” Berkheimer v. HP
Inc., 881 F.3d 1360, 1368 (Fed. Cir. 2018); see also Mortg. Grader, Inc. v.
First Choice Loan Servs. Inc., 811 F.3d. 1314, 1325 (Fed. Cir. 2016)
(holding that patent eligibility inquiry may contain underlying issues of
fact).
Claim 1 recites a targeted advertising method facilitated by various
data gathering and data processing steps. See supra. We agree with the
Examiner’s finding that simply using standard computer elements (as
described in the Specification, see supra) to implement rules for targeted
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advertising is well understood, routine, and conventional. Ans. 12–13. As
discussed above, the Specification explains at length that the invention is
implemented on standard, conventional computing elements. Spec. ¶¶ 18,
34–39. Although Appellants assert that the claims recite an “ordered
combination” that is “more than just ‘software running on a computer and
storing information in a database’” (Reply Br. 8), Appellants do not rebut
the Examiner’s findings or identify any unconventional elements, and we
discern none. See supra. To the extent Appellants imply that it is a
particular algorithm, not the hardware elements, that constitutes something
“significantly more” in claim 1, the algorithm is not recited in the claim.
Accordingly, we conclude that the Examiner did not err in concluding
that claim 1 constitutes ineligible subject matter. Appellants do not argue
any of the remaining claims separately from claim 1. See 37 C.F.R.
§ 41.37(c)(1)(iv). We, therefore, sustain the rejection of claims 1–16, 19,
and 20 under 35 U.S.C. § 101.
DECISION
We affirm the Examiner’s decision rejecting claims 1–16, 19, and 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)(iv). See
37 C.F.R. § 41.50(f).
AFFIRMED