Viacom International Inc.Download PDFPatent Trials and Appeals BoardJun 14, 20212021001009 (P.T.A.B. Jun. 14, 2021) Copy Citation 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. 15/703,622 09/13/2017 David BERZIN 40205/09101 (MTV-091) 1314 30636 7590 06/14/2021 FAY KAPLUN & MARCIN, LLP 150 BROADWAY, SUITE 702 NEW YORK, NY 10038 EXAMINER LONG, MEREDITH A ART UNIT PAPER NUMBER 3688 NOTIFICATION DATE DELIVERY MODE 06/14/2021 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): mmarcin@fkmiplaw.com okaplun@fkmiplaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte DAVID BERZIN, SASHI MARELLA, and TANMAY MANOHAR Appeal 2021-001009 Application 15/703,622 Technology Center 3600 Before MURRIEL E. CRAWFORD, MICHAEL L. WOODS, and MATTHEW S. MEYERS, Administrative Patent Judges. MEYERS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1–9 and 11–19. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as Viacom International Inc. Appeal Br. 2. Appeal 2021-001009 Application 15/703,622 2 CLAIMED INVENTION The claims are “related to a device, system, and method for determining a post benchmark based on previously used posts and utilizing the post benchmark as a basis to determine a projection for a proposed post.” Spec. ¶ 11. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A method, comprising: at a comparison server: receiving data of a past post, the past post having been used for a media content, the past post having known results of reaching an audience; determining at least one first characteristic of the past post based on at least one entity involved in the past post and the media content; determining a first similarity index of the at least one first characteristic to at least one second characteristic of a post benchmark, the post benchmark having aggregated results associated therewith; when the similarity index is above a first threshold, incorporating the past post with the post benchmark, the known results being aggregated with the aggregated results; identifying one of the at least one first characteristic different from any one of the at least one second characteristic; and incorporating the identified one of the at least one first characteristic into the post benchmark. Appeal Br. 10 (Claims App.). REJECTION Claims 1–9 and 11–19 are rejected under 35 U.S.C. § 101 as directed to a judicial exception without significantly more. Appeal 2021-001009 Application 15/703,622 3 ANALYSIS Claims 1–9 and 11–17 Appellant argues claims 1–9 and 11–17 as a group. Appeal Br. 5–8; Reply Br. 2–5. We select independent claim 1 as representative. The remaining claims stand or fall with claim 1. See 37 C.F.R. § 41.37(c)(1)(iv). 35 U.S.C. § 101 Framework Section 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. However, the U.S. Supreme Court has long interpreted 35 U.S.C. § 101 to include implicit exceptions: “[l]aws of nature, natural phenomena, and abstract ideas” are not patentable. E.g., Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 216 (2014). In determining whether a claim falls within an excluded category, we are guided by the Court’s two-part framework, described in Mayo and Alice. Alice, 573 U.S. at 217–18 (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 75–77 (2012)). In accordance with that framework, we first determine what concept the claim is “directed to.” See Alice, 573 U.S. at 219 (“On their face, the claims before us are drawn to the concept of intermediated settlement, i.e., the use of a third party to mitigate settlement risk.”); see also Bilski v. Kappos, 561 U.S. 593, 611 (2010) (“Claims 1 and 4 in petitioners’ application explain the basic concept of hedging, or protecting against risk.”). Concepts determined to be abstract ideas, and thus patent ineligible, include certain methods of organizing human activity, such as fundamental economic practices (Alice, 573 U.S. at 219–20; Bilski, 561 U.S. at 611); mathematical formulas (Parker v. Flook, 437 U.S. 584, 594–95 (1978)); and Appeal 2021-001009 Application 15/703,622 4 mental processes (Gottschalk v. Benson, 409 U.S. 63, 67 (1972)). Concepts determined to be patent eligible include physical and chemical processes, such as “molding rubber products” (Diamond v. Diehr, 450 U.S. 175, 191 (1981)); “tanning, dyeing, making water-proof cloth, vulcanizing India rubber, smelting ores” (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S. 252, 267–68 (1853))); and manufacturing flour (Benson, 409 U.S. at 69 (citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))). In Diehr, the claim at issue recited a mathematical formula, but the Court held that “a claim drawn to subject matter otherwise statutory does not become nonstatutory simply because it uses a mathematical formula.” Diehr, 450 U.S. at 187; see also id. at 191 (“We view respondents’ claims as nothing more than a process for molding rubber products and not as an attempt to patent a mathematical formula.”). Having said that, the Court also indicated that a claim “seeking patent protection for that formula in the abstract . . . is not accorded the protection of our patent laws, and this principle cannot be circumvented by attempting to limit the use of the formula to a particular technological environment.” Id. (citing Benson and Flook); see, e.g., id. at 187 (“It is now commonplace that an application of a law of nature or mathematical formula to a known structure or process may well be deserving of patent protection.”). If the claim is “directed to” an abstract idea, we turn to the second step of the Alice and Mayo framework, where “we must examine the elements of the claim to determine whether it contains an ‘inventive concept’ sufficient to ‘transform’ the claimed abstract idea into a patent- eligible application.” Alice, 573 U.S. at 221 (quotation marks omitted). “A claim that recites an abstract idea must include ‘additional features’ to ensure ‘that the [claim] is more than a drafting effort designed to Appeal 2021-001009 Application 15/703,622 5 monopolize the [abstract idea].’” Id. (quoting Mayo, 566 U.S. at 77). “[M]erely requir[ing] generic computer implementation[] fail[s] to transform that abstract idea into a patent-eligible invention.” Id. USPTO Section 101 Guidance We are also guided by U.S. Patent and Trademark Office (“USPTO”) Guidance, as set forth in the 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (“Guidance”), incorporated into the MANUAL OF PATENT EXAMINING PROCEDURE §§ 2104–06, Rev. 10.2019 (“MPEP”) in June 2020. “The guidance sets out agency policy with respect to the USPTO’s interpretation of the subject matter eligibility requirements of 35 U.S.C. [§] 101 in view of decisions by the Supreme Court and the Federal Circuit.” Guidance, 84 Fed. Reg. at 51.2 Although “[a]ll USPTO personnel are, as a matter of internal agency management, expected to follow the guidance,” the Guidance “does not create any right or benefit, substantive or procedural, enforceable by any party against the USPTO.” Id. The Guidance, by its terms, applies to all applications, and to all patents resulting from applications, filed before, on, or after January 7, 2019. Id. at 50. Under USPTO Guidance, we first look to whether the claim recites: (1) any judicial exceptions, including laws of nature, natural phenomena, and products of nature (see MPEP §§ 2106.04(II)(A)(1), 2106.04(b)) (“Step 2A, Prong One”); and (2) additional elements that integrate the 2 In response to received public comments, the Office issued further guidance on October 17, 2019, clarifying the 2019 Revised Guidance, 84 Fed. Reg. USPTO, October 2019 Update: Subject Matter Eligibility (the “October 2019 Update”) (available at https://www.uspto.gov/sites/default/ files/documents/peg_oct_update.pdf). Appeal 2021-001009 Application 15/703,622 6 judicial exception into a practical application (see id. §§ 2106.04(II)(A)(2), 2106.04(d)) (“Step 2A, Prong Two”).3 Only if a claim (1) recites a judicial exception and (2) does not integrate that exception into a practical application, do we then look, under Step 2B, to whether the additional elements, individually or in combination, provide an inventive concept. See MPEP §§ 2106(III), 2106.05. “An inventive concept ‘cannot be furnished by the unpatentable law of nature (or natural phenomenon or abstract idea) itself.’” Id. § 2106.05 (quoting Genetic Techs. v. Merial LLC, 818 F.3d 1369, 1376 (Fed. Cir. 2016)). Among the considerations in determining whether the additional elements, individually or in combination, amount to significantly more than the exception itself, we look to whether they add a specific limitation beyond the judicial exception that is not “well-understood, routine, conventional” in the field or simply append well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception. MPEP § 2106.05(II); Guidance, 84 Fed. Reg. at 56. Step One of the Mayo/Alice Framework Under the first step of the Mayo/Alice framework and Step 2A, Prong One of USPTO Guidance, the Examiner determines that exemplary independent claim 1 recites a series of steps for “determining,” “identifying,” and “incorporating” that include actions that can be performed “in the mind[,] but for the recitation of generic computer components.” 3 This evaluation is performed by (a) identifying whether there are any additional elements recited in the claim beyond the judicial exception, and (b) evaluating those additional elements individually and in combination to determine whether the claim as a whole integrates the exception into a practical application. See Guidance - Section III(A)(2), 84 Fed. Reg. at 54–55; MPEP § 2106.04(d). Appeal 2021-001009 Application 15/703,622 7 Final Act. 4. More particularly, the Examiner determines that each of the limitations of claim 1 includes steps that a user may manually perform, and as such, characterizes claim 1 as being directed to “the mental processes grouping of abstract ideas.” Id. Under Prong Two of USPTO Guidance, the Examiner determines that the identified judicial exception is not integrated into a practical application because the additional elements “include[] no more than mere instructions to apply the exception using a generic computer component,” i.e., a “comparison server,” which “does not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea.” Id. at 8. The Examiner also finds that the “receiving” limitation “is mere data gathering and is considered insignificant extra-solution activity which does not integrate the abstract idea into a practical application.” Id. In response, Appellant asserts that the claims “are not directed to an abstract idea because an improved data structure, specifically an improved metadata taxonomy is recited in the claims.” Appeal Br. 5. Appellant further asserts the claims “create deep metadata taxonomies,” “enrich the posts with metadata,” “utilize a more granular approach relative to existing methods,” and thus, represent a “technical improvement” because of the identified “improved data structure.” Id. at 6. Under the first step of the Mayo/Alice framework and Step 2A of the USPTO Guidance, we first determine to what claim 1 is directed, i.e., whether claim 1 recites an abstract idea and if so, whether claim 1 is directed to that abstract idea. The Federal Circuit has explained that “the ‘directed to’ inquiry applies a stage-one filter to claims, considered in light of the specification, based on whether ‘their character as a whole is directed to Appeal 2021-001009 Application 15/703,622 8 excluded subject matter.’” Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016) (quoting Internet Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1346 (Fed. Cir. 2015)). It asks whether the focus of the claim is on a specific improvement in relevant technology or on a process that itself qualifies as an “abstract idea” for which computers are invoked merely as a tool. See Enfish, 822 F.3d at 1335–36. Here, it is clear from the Specification, including the claim language, that claim 1 focuses on an abstract idea, and not on any improvement to technology and/or a technical field. Reciting a Judicial Exception In making this determination, we note that the Specification is titled “Device, System, and Method for a Post Benchmark and Projection,” and is related generally to comparing “social media posts and/or campaigns against other social media posts and/or campaigns with similar characteristics with the goal of benchmarking post performance against historic averages of similar social media posts, as well as predicting future performance of social media posts with a given set of characteristics.” Spec. ¶ 4. According to the Specification, “a social media post may be given a score (such as a benchmark) against similar social media posts based on a business need (e.g., a first post may have over performed when compared to a similar, comedic, short form, branded content, video posts for the auto industry containing grade A social influencers).” Id. ¶ 5. The Specification further describes that: a previously used or past post having a known result may have information associated therewith such that the known result may be averaged with other known results of other previously used posts having similar information. Thus, in a first aspect, the exemplary embodiments provide a first mechanism in which the Appeal 2021-001009 Application 15/703,622 9 post benchmark is generated and maintained for previously used posts. In a second aspect, the exemplary embodiments provide a second mechanism in which the post benchmarks are used to generate the projection for the proposed post. Id. ¶ 11. Consistent with this disclosure, independent claim 1 recites “determining at least one first characteristic of the past post based on at least one entity involved in the past post and the media content,” “determining a first similarity index of the at least one first characteristic to at least one second characteristic of a post benchmark, the post benchmark having aggregated results associated therewith,” “when the similarity index is above a first threshold, incorporating the past post with the post benchmark, the known results being aggregated with the aggregated results,” “identifying one of the at least one first characteristic different from any one of the at least one second characteristic,” “and incorporating the identified one of the at least one first characteristic into the post benchmark.” Appeal Br. 10 (Claim App.). When considered collectively and under the broadest reasonable interpretation, independent claim 1, as summarized above, recites identifying characteristics and determining scores.4 This is an abstract idea which may be characterized as a “[m]ental process[]—[a] concept performed in the human mind (including an observation, evaluation, judgement, opinion).” Guidance, 84 Fed. Reg. at 52; MPEP § 2106.04(a)(2)(III). This is consistent with the Examiner’s characterization. Final Act. 4. 4 We note that “[a]n abstract idea can generally be described at different levels of abstraction.” Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1240 (Fed. Cir. 2016). The Board’s “slight revision of its abstract idea analysis does not impact the patentability analysis.” Id. at 1241. Appeal 2021-001009 Application 15/703,622 10 The courts have held similar concepts to be abstract. For example, the Federal Circuit has held abstract the concepts of “selecting certain information, analyzing it using mathematical techniques, and reporting or displaying the results of the analysis” in SAP America, Inc. v. InvestPic, LLC, 898 F.3d 1161, 1167 (Fed. Cir. 2018), “considering historical usage information while inputting data” in BSG Tech LLC v. Buyseasons, Inc., 899 F.3d 1281, 1287, 1289 (Fed. Cir. 2018) (“‘[S]ummary comparison usage information’ covers any information concerning the relative frequency at which different parameters and values have been used”), and Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1351–54 (Fed. Cir. 2016) (Claim for detecting events by receiving, detecting, analyzing, displaying, accumulating, and updating data, and deriving a composite indicator from that data was directed to the abstract idea of “collecting information, analyzing it, and displaying certain results of the collection and analysis.”). Appellant argues that claim 1 is “not directed to an abstract idea because an improved data structure, specifically an improved metadata taxonomy, is recited.” Appeal Br. 5; see also Reply Br. 3 (“Although the term ‘taxonomy’ is not explicitly recited, the claims are clearly directed to a system of classification, i.e. a taxonomy.”). However, Appellant has not persuaded us of error with these arguments, because even if the claims recite a method of classification, Appellant does not persuasively show that the identifying and determining steps cannot be performed entirely in the mind, using observation, evaluation, judgement, and opinion. Appellant also argues, similarly, that various embodiments “create deep metadata taxonomies,” “ingest posts and enrich the posts with metadata,” “utilize a more granular approach relative to existing methods,” and achieve “an incorporation of new characteristics into a post benchmark,” Appeal 2021-001009 Application 15/703,622 11 resulting in an “improved data structure.” Appeal Br. 5–6. However, Appellant’s argument does not persuade us that the recited steps cannot be performed entirely in the mind. Having concluded that claim 1 recites a judicial exception, i.e., an abstract idea, in determining whether the claim is directed to this abstract idea, we next consider whether the claim recites additional elements that integrate the judicial exception into a practical application. Integration into a Practical Application We look to whether the claim “appl[ies], rel[ies] on, or use[s] the judicial exception in a manner that imposes a meaningful limit on the judicial exception, such that the claim is more than a drafting effort designed to monopolize the judicial exception,” i.e., “integrates a judicial exception into a practical application.” Guidance, 84 Fed. Reg. at 54; MPEP § 2106.04(d). Here, the Examiner identifies that, in claim 1, “the additional element of a comparison server . . . includes no more than mere instructions to apply the exception using a generic computer component.” Final Act. 8; see also Spec. ¶ 26 (“The comparison server 125 may include a processor 205, a memory arrangement 210, a display device 215, an input/output (I/O) device 220, a transceiver 225, and other components 230.”); ¶ 68 (“Those skilled in the art will understand that the above-described exemplary embodiments may be implemented in any suitable software or hardware configuration or combination thereof.”). We agree with the Examiner. As is clear from the Specification, there is no indication that the processes recited in claim 1 require any specialized computer hardware or other inventive computer components, i.e., a particular machine, invoke any asserted inventive programming, or that the claimed invention is implemented using other than generic computer components to perform Appeal 2021-001009 Application 15/703,622 12 generic computer functions. See DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1256 (Fed. Cir. 2014) (“[A]fter Alice, there can remain no doubt: recitation of generic computer limitations does not make an otherwise ineligible claim patent-eligible.”); see also Spec. ¶¶ 14–21. Independent claim 1, unlike the claims found non-abstract in prior cases, uses generic computer technology to receive and analyze information for the purpose of “evaluation of identified trends” Spec. ¶ 4, and does not recite an improvement to a particular computer technology. Cf. McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299, 1314–15 (Fed. Cir. 2016) (Finding claims not abstract because they “focused on a specific asserted improvement in computer animation.”). Appellant argues that claim 1 recites “an improved server” that “includes an improved metadata taxonomy,” and therefore the claims “incorporate the alleged abstract idea into a practical application.” Appeal Br. 8; see also Reply Br. 5. We are not persuaded that an “improved metadata taxonomy” integrates the abstract mental process into a “practical application.” For example, there is no such improvement to the functioning of a computer, another technology, or technical field. Instead, the claims reflect the proposed improvement to the abstract idea, not in the functioning of the computer, technological environment, or technical field, in that the identifying and determining steps may result in an “improved metadata taxonomy,” but this does not improve the general purpose computer’s operations. Cf. OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1363 (Fed. Cir. 2015) (Holding that claims are directed to “the abstract idea of offer-based price optimization.”); Enfish, 822 F.3d at 1336 (Focusing on whether the claim is “an improvement to [the] computer functionality itself, Appeal 2021-001009 Application 15/703,622 13 not on economic or other tasks for which a computer is used in its ordinary capacity.”). See also Bridge & Post, Inc. v. Verizon Commc’ns, Inc., 778 F. App’x 882, 893 (Fed. Cir. 2019) (“The ability to run a more efficient advertising campaign, even if novel, and even if aided by conventional computers, is an advance ‘entirely in the realm of abstract ideas,’ which we have repeatedly held to be ineligible.”). Thus, we are not persuaded of error in the Examiner’s determination that the additional elements of claim 1 do not integrate the judicial exception into a practical application, as the term is used in USPTO Guidance, just as that we are not persuaded of error in the Examiner’s determination that claim 1 is directed to an abstract idea. Step Two of the Mayo/Alice Framework Under the second step in the Alice framework and USTPO Guidance Step 2B, we “[e]valuat[e] additional elements to determine whether they amount to an inventive concept [which] requires considering them both individually and in combination to ensure that they amount to significantly more than the judicial exception itself.” MPEP § 2106.05(I). Here, the Examiner determines that “the additional element [of the server] in the claim amounts to no more than mere instructions to apply the exception using a generic computer component,” and the additional elements of the “‘receiving data’ steps . . . are considered routine, conventional, and well- understood.” Final Act. 9. See also Elec. Power, 830 F.3d at 1355 (gathering, sending, monitoring, analyzing, selecting, and presenting information does not transform the abstract process into a patent-eligible invention); OIP Techs, 788 F.3d at 1363 (Claims reciting, inter alia, sending messages over a network, gathering statistics, using a computerized system to automatically determine an estimated outcome, and presenting offers to Appeal 2021-001009 Application 15/703,622 14 potential customers found to merely recite “‘well-understood, routine conventional activit[ies],’ either by requiring conventional computer activities or routine data-gathering steps.”) (alteration in original); SAP Am., 898 F.3d at 1167–68 (“[S]electing certain information, analyzing it using mathematical techniques, and reporting or displaying the results of the analysis” were “basic functions” of a computer.). Appellant advances no arguments relative to Step 2B. See Appeal Br. 8–9. Thus, we are not persuaded that the “additional elements” of the server and receiving steps recite an “inventive concept” that amounts to “significantly more” than the abstract idea. See Elec. Power, 830 F.3d at 1355 (gathering, sending, monitoring, analyzing, selecting, and presenting information does not transform the abstract process into a patent-eligible invention); Trading Techs. Int’l, Inc. v. IBG LLC, 921 F.3d 1084, 1093 (Fed. Cir. 2019) (data gathering and displaying are well-understood, routine, and conventional activities); OIP Techs, 788 F.3d at 1363 (claims reciting, inter alia, sending messages over a network, gathering statistics, using a computerized system to automatically determine an estimated outcome, and presenting offers to potential customers found to merely recite “‘well- understood, routine conventional activit[ies],’ either by requiring conventional computer activities or routine data-gathering steps” (alteration in original)). Viewed as a whole, independent claim 1 recites a series of steps for receiving data, determining characteristics and scores from the data, and creating an output that is inserted into the score and data. The steps of the method are performed by a conventional computer that merely includes instructions to implement an abstract idea on a computer (or merely uses a computer as a tool to perform an abstract idea). Instead of improving the Appeal 2021-001009 Application 15/703,622 15 computer or technology or technical field, independent claim 1 amounts to nothing significantly more than an instruction to apply the abstract idea using generic computing elements, which, under our precedents, is not enough to transform an abstract idea into a patent-eligible invention. See Alice, 573 U.S. at 226. We are not persuaded, on the present record, that the Examiner erred in rejecting independent claim 1 under 35 U.S.C. § 101. Therefore, we sustain the Examiner’s rejection of independent claims 1 and 17, and claims 2–9, and 11–16, which fall with independent claim 1. Claims 18 and 19 Appellant argues, without evidence, that “claim 18 further recites a method for improving a currently proposed post in view of post benchmarks and is not directed to an abstract idea,” and thus the “determination of an improvement to the proposed post . . . is a technical improvement and is not an abstract idea.” Appeal Br. 7. We are unpersuaded, because the Examiner finds the argued steps recite actions that can be performed mentally, as part of the abstract mental process recited in the claim (Final Act. 7–8), and Appellant has not shown any error in the Examiner’s finding. If there is any “improvement,” Appellant has not shown that it is not within the abstract mental process. Thus, we are not persuaded, on the present record, that the Examiner erred in rejecting independent claim 18 under 35 U.S.C. § 101. Therefore, we sustain the Examiner’s rejection of independent claim 18, and claim 19, which depends from claim 18, because Appellant has not argued the separate patentability of this claim. Appeal 2021-001009 Application 15/703,622 16 CONCLUSION Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1–9, 11–19 101 Eligibility 1–9, 11–19 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED Copy with citationCopy as parenthetical citation