The Nielsen Company (US), LLC

Patent Trials and Appeals Board

Aug 4, 2020

2019003689 (P.T.A.B. Aug. 4, 2020)

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.
14/980,821 12/28/2015 Michael Sheppard 20004/124336US01 1022
81905 7590 08/04/2020
Hanley, Flight & Zimmerman, LLC (Nielsen)
150 S. Wacker Dr. Suite 2200
Chicago, IL 60606
EXAMINER
GARTLAND, SCOTT D
ART UNIT PAPER NUMBER
3622
NOTIFICATION DATE DELIVERY MODE
08/04/2020 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):
docketing@hfzlaw.com
jflight@hfzlaw.com
mhanley@hfzlaw.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte MICHAEL SHEPPARD, JONATHAN SULLIVAN,
MATTHEW B. REID, and ALEJANDRO TERRAZAS
____________

Appeal 2019-003689
Application 14/980,821
Technology Center 3600
____________

Before CARL W. WHITEHEAD JR., DAVID M. KOHUT, and
IRVIN E. BRANCH, Administrative Patent Judges.

KOHUT, Administrative Patent Judge.
DECISION ON REQUEST FOR REHEARING
Appellant1 has filed a Request for Rehearing, under 37 C.F.R.
§ 41.52, of our Decision affirming the Examiner’s final rejection of
claims 1–20 under 35 U.S.C. § 101. Having considered the Request for
Rehearing,2 we remain unpersuaded of error in the rejection. We add the
following for emphasis.

1 We use “Appellant” to reference the applicant as defined in 37 C.F.R.
§ 1.42. Appellant identifies the real party in interest as “The Nielsen
Company (US), LLC.” Appeal Br. 2.
2 We inadvertently overlooked the Reply Brief. See Req. Reh. 2. We now
consider the Reply Brief and the Request for Rehearing.
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Appellant contends:
The Decision on Appeal alleges that claim 1 constitutes
long-standing marketing and sale activities, mathematical
concepts, and can be performed in the human mind using pen
and paper. Decision on Appeal, pp. 9-10. However, as
described in detail in the Reply Brief, claim 1 is not directed to
one of the above-listed abstract ideas under the 2019 Eligibility
Guidance. For example, pp. 7-8 of the Reply Brief describe
why claim 1 cannot be performed in a human mind, and pp. 8-9
of the Reply Brief describe why claim 1 is not directed to
mathematical concepts.

Req. Reh. 2. Appellant’s arguments, in both the above contention and cited
Reply Brief pages, do not rebut the Decision’s holdings.
The Decision does not hold that all claimed activities constitute
judicially-excepted (JE) activities—e.g., does not hold that the claimed
“executing an instruction with a processor” can be performed via pen and
paper. Rather, the Decision identifies claim portions reciting JE activities
(marketing and sales activities, mathematical calculations, and mental
processes). Dec. 11. The Decision then holds that claim 1 is directed to the
recited JE activities (i.e., the identified claim portions) because the recited
additional elements do not integrate the JE activities into a practical
application. Id. at 7, 10.
Appellant next contends:
The Decision on Appeal further alleges that claim 1 “merely
limits the invention’s field of use” and “is directed to the recited
judicial exceptions—not to a practical application thereof.”
Decision on Appeal, p. 12. However, the Reply Brief addressed
these allegations in pages 5-6, by describing the technical
problem and the practical application of the technology that
provides a meaningful limit on any judicial exception.
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Req. Reh. 3. We do not find Appellant’s arguments persuade us that the
Decision’s holdings were erroneous.
The Decision does not hold that claim 1 recites only JE activities and
field-of-use limitations. The Decision holds that particular claim limitations
limit the invention’s field of use and accordingly do not integrate the recited
JE activities into a practical application. Dec. 12 (“claim 1 merely limits the
invention’s field of use . . . by describing . . .” (emphasis added)).
Appellant contends in the Reply Brief that other claim features confer
a practical application; e.g., “claim 1 accomplishes this by . . . .”
(Reply Br. 5–6). The Decision explains that each of these features either
constitutes one of the recited JE activities or is not shown to be sufficiently
specific to prevent preemption of the activities. See e.g., Dec. 11, 14–16.
Appellant next contends:
The Decision on Appeal further agrees with the Examiner that
there are allegedly no technical features the claim may be
grounded in. Decision on Appeal, p. 11. However, the
Reply Brief addressed these allegations on pp. 10-14, which
described the technical features and structural elements set forth
in claim 1 and the technical improvements provided by claim 1.

Req. Reh. 3. Appellant’s arguments, in both the above contention and cited
Reply Brief pages, do not rebut the Decision’s holdings.
The Decision does not hold that claim 1 recites no technical features,
e.g., no hardware. Instead, the Decision agrees with the Examiner that
claim 1 is not “grounded in” in any technical features. Dec. 11. We add
that, for example, claim 1 does not recite a “particular machine” (Manual of
Patent Examining Procedure (MPEP) § 2106.05(b)) or other technical
feature recognized as a practical application by MPEP § 2106.05(a)–(c) and
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(e)–(h). See Dec. 7 (citing theMPEP as guidance for the issue of practical
applications); Guidance 84 Fed. Reg. at 55, nn.25, 27–32.
Appellant contends in the Reply Brief that the claims contain features
that are “more than just sending and receiving data over a network, repetitive
calculations, and using the result.” Reply Br. 11–12. The Decision holds
that each of these claim features either constitutes one of the recited JE
activities or is not shown to be sufficiently specific to prevent preemption of
the JE activities. See e.g., Dec. 11, 14–16.
In the Reply Brief, Appellant contends the invention creates the
following technical improvements: “conservation of computer resources as a
result of not needing to generate a new probability density function [(PDF)]”
(id. at 13); “augmentation of the intelligence of a server to correct errors in
that server without compr[om]ising the privacy of an audience and without
requiring follow-up network communications to the audience member” (id.
at 13–14); and “time, processing power, bandwidth, and memory use
reduction” (id. at 14). The Decision holds that the invention’s alleged
improvements are not shown to result from non-JE activities. Dec. 15. We
add the Specification indicates the above improvements are achieved by the
recited JE activity of probabilistically aging a predicted age of the prediction
model (see e.g., Spec. ¶¶ 29–31)—e.g., in lieu of re-calibrating the model
(see id. ¶ 28) or directly contacting audience members to reacquire their ages
(see id. ¶ 25).
Appellant next contends:
The Decision on Appeal alleges that the Examiner provided
requisite clear and convincing evidence showing how the
claims are well-understood, routine, or conventional.
Decision on Appeal, p. 17. However, as addressed on page 14
of the Reply Brief, the Examiner addresses a summarization of
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the claimed elements rather than proving that the actual
elements are well-understood, routine, and conventional.

Req. Reh. 3. Appellant’s arguments, in both the above contention and cited
Reply Brief pages, do not rebut the Decision’s holdings.
The Decision holds that the Examiner provided evidence comporting
with the USPTO Berkheimer Memorandum’s guidance for findings of
WURC activity. Dec. 17 (citing Berkheimer Memorandum § III.A.2); see
also Berkheimer Memorandum at 3 (“This memorandum clarifies that such a
conclusion must be based upon a factual determination that is supported as
discussed in section III below.”).3
Appellant next contends:
The Decision on Appeal further alleges that the “Appellant’s
contentions do not indicate (much less show) claim l’s features
prevent preemption of the judicial exceptions.” Decision on
Appeal, p. 16. However, pp. 14-15 of the Appellant’s
Reply Brief describe why claim 1 does not preclude others from
using other techniques to increase accuracy of impression-based
rating information.

3 Generally speaking, clear and convincing evidence is required to invalidate
a patent on a litigated issue of factual dispute. See e.g., In re
Cyclobenzaprine Hydrochloride Extended-Release Capsule Patent Litig.,
676 F.3d 1063, 1068–69, n.7 (Fed. Cir. 2012) (obviousness). The
Berkheimer Memorandum requires: “[A]n examiner should conclude that an
element . . . represents [WURC] activity only when the examiner can readily
conclude that the element(s) is widely prevalent or in common use in the
relevant industry.” Berkheimer Memorandum at 3. We recognize the
Memorandum’s requirement to “readily conclude that the element(s) is
widely prevalent or in common use” and a requirement for “clear and
convincing evidence” of WURC activity may be a distinction without a
difference. See Colorado v. New Mexico, 467 U.S. 310, 316 (1984)
(equating “clear and convincing” with “highly probable”).
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Req. Reh. 3–4. Appellant’s arguments, in both the above contention and
cited Reply Brief pages, do not rebut the Decision’s holdings.
Appellant contends, “Claim 1 does not attempt ‘to preempt others
from using the commonly available mathematical techniques or
manipulations on age data indicating impressions so as to update the
respective ages,’ as alleged in Examiner’s Answer, p. 30.” Reply Br. 15.
Appellant argues that instead, “Claim 1 sets for a specific technique to
increase the accuracy of impression-based ratings information.” Id. The
Reply Brief fails to identify the alleged specific technique and, as a result,
we are not persuaded of error in the Decision.
35 U.S.C § 112(b) REJECTION
Appellant lastly contends:
[A]s described on pages 15-16 of the Reply Brief, the
record is clear that the Examiner withdrew the § 112 rejections.
Accordingly, the Appellant believes that there is no pending
§ 112 rejection for this application. However, even if the
Examiner did not withdraw the § 112(b) rejection, the
Appellant traversed the rejection on pages 15-17 of the
Reply Brief.

Req. Reh. 4. As indicated in the Decision, the Examiner explicitly withdrew
the 35 U.S.C. § 112(a) rejection. See Ans. 3. The Examiner did not
explicitly withdraw the 35 U.S.C. § 112(b) rejection and addressed the
rejection in the Answer indicating that Appellant failed to provide arguments
against the rejection. Ans. 33–35. In the Reply Brief, Appellant argued that
Appellant understood that the rejection was withdrawn based upon the
Advisory Action dated August 15, 2018 and argued that even if it was not
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withdrawn, it should have been withdrawn. Reply Br. 15−17. We agree
with Appellant.
The Examiner rejected claims 1−20 under 35 U.S.C. § 112(b) based
on indefiniteness of “increasing an accuracy” of ratings by applying of . . .
information that is based on the unverifiable demographic information,”
because it is not possible to increase the accuracy of correct information and
the unverifiable information can be correct. Id. at 5–6 (emphasis added).
However, in response to a claim amendment (filed July 16, 2018) entered
per a post-Final Action interview (conducted August 8, 2019) and replacing
the above “unverifiable” claim terms with “inaccurate,” the Examiner issued
an Advisory Action (mailed August 15, 2018) and accompanying Interview
Summary that describes “the general nature of what was agreed” with
Appellant. We view the Advisory Action as withdrawing both § 112
rejections via the following statement: “Since the amendment [changes] the
claims to [recite] ‘inaccurate’ data (instead of “unverifiable”) . . . , the
rejections under [§] 112 would be withdrawn[. However,] the Examiner
notes that ‘the demographic information being inaccurate’ is interpreted as
intended use or results. Adv. Act., Cont’n Sheet (first page); see also
37 C.F.R. § 41.39(a)(1)(“An examiner’s answer . . . incorporate[s] all of the
grounds of rejection . . . as modified by any advisory action.”).
Even assuming (arguendo) that the 35 U.S.C. § 112(b) rejection was
not withdrawn, we would not sustain the § 112(b) rejection because the
above claim amendment and Appellant’s arguments address the alleged
deficiency. See Reply Br. 15–17. Namely, by changing “unverifiable” to
“inaccurate,” the amendment results in an assured increase of accuracy for
“inaccurate” information—as opposed to an unassured increase of accuracy
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for “unverifiable” information (which was the Examiner’s above
pre-amendment concern). And, though a claim’s intended-use language is
subject to a broad construction (which was the Examiner’s above
post-amendment concern), breadth is not indefiniteness. See In re Miller,
441 F.2d 689, 693 (CCPA 1971) (“[B]readth is not to be equated with
indefiniteness.”).
CONCLUSION
We have reconsidered our Decision in light of the Request for
Rehearing. We are not persuaded of error in the Decision and accordingly
maintain the Examiner’s § 101 rejection of all claims.
Additionally, we find that the 35 U.S.C. § 112 rejections were
previously withdrawn and if the 35 U.S.C. § 112(b) rejection was not
effectively withdrawn we cannot sustain the rejection.
Accordingly, the outcome of this Decision on Rehearing is the same
as the Decisision addressed above and as follows:
Claims
Rejected 35 U.S.C. Reference/s Affirmed Reversed
1–20 § 101 Eligibility 1– 20
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)(1)(iv).
REHEARING DENIED