Targeted advertising claims survive Alice step two

Takeaway: Improvement arguments succeeded in overturning § 101 subject-matter eligibility rejections of claims relating to Internet-based directed-advertising under circumstances involving broadcast TV and simultaneous chat room participation.  The arguments had failed to persuade at step one of the Alice framework but worked at step two.

Details:

Ex parte Relyea
Appeal No. 2017-001443; Application No. 12/410,588; Tech. Center 3600
Decided: Apr. 18, 2018

Inventors for Verizon filed a patent application including the following representative claim for targeted advertising:

1.      A method comprising:
        providing, by one or more devices, broadcast programming to a plurality of user devices, associated with a plurality of users, via a television network;
        hosting, by the one or more devices, at least one chat group associated with the broadcast programming provided via the television network,
             hosting the at least one chat group including hosting a virtual chat room for the chat group that provides interaction via at least one of text-based discussion or a video client,
             the at least one chat group being displayed with the broadcast programming;
        determining, by the one or more devices and based on hosting the at least one chat group, information identifying a group of users, of the plurality of users, currently in a same chat group, of the at least one chat group, associated with the broadcast programming provided via the television network;
        defining, by the one or more devices, a micro-group to include user accounts associated with the group of users in the same chat group, the user accounts being added to the microgroup based on the group of users joining and currently being in the same chat group associated with the broadcast programmmg;
        creating, by the one or more devices, a profile associated with the micro-group based on user information associated with the user accounts;
        monitoring, by the one or more devices and based on hosting the at least one chat group, real time behavior of the group of users in the same chat group to detect one or more actions taken by one or more users of the group of users, the one or more actions being associated with content of the chat group;
        modifying, by the one or more devices, the profile associated with the micro-group based on the one or more actions;
        retrieving, by the one or more devices, advertising content targeted to the group of users in the same chat group based on the profile that is created based on the user information associated with the user accounts of the group of users in the same chat group and that is modified based on the one or more actions taken by the one or more users of the group of users in the same chat group; and
        providing, by the one or more devices, the advertising content to user devices, of the plurality of user devices, associated with users currently in the chat group, the advertising content being displayed in a same view as the chat group and being integrated into a television program included in the broadcast programming provided to the group of users in the same chat group. 

As explained in the specification, 

Target advertising typically seeks to generate improved customer response rates by directing particular advertisements to consumers based on observed behavior.  Television service providers that can simultaneously direct a variety of advertisements to smaller similarly-interested groups may be poised to generate more revenue than those using a single advertisement to all viewers watching the same program. . . . Implementations . . . may allow a subscription television service provider to define micro-groups of users and identify micro-group tendencies to provide targeted advertising to members of the micro-group . . . of subscribers to the subscription television service that are associated by an expressed interest.  The micro-group may be created based on a variety of techniques, including social networking (e.g., chat group participation, accepting an invitation as a group member, etc.), past viewing histories, and/or real-time viewing behavior.  In some implementations, the micro-group tendencies may change dynamically as different users join or leave the micro-group.  Implementations described herein may be incorporated using a television display and video client (e.g., a set-top box), a personal computer, a mobile telecommunications device, and/or combinations thereof.

The examiner identified the abstract idea to which the claims were allegedly directed as "targeting of advertisements to a micro-group of users based on profile data and chat group content."  The examiner found that such a concept was similar to the decision SmartGene, Inc. v. Advanced Biological Labs., SA, 555 F. App'x 950 (Fed. Cir. 2014), in which new and stored information was compared and analyzed using rules to identify options.  While acknowledging the more recent Enfish decision, the examiner nevertheless found that the claims merely used conventional computers to implement abstract ideas, unlike the self-referential table of Enfish which improved the computing technology itself.

Appealing the examiner's Alice rejections, the appellants argued that the claims were not abstract because they provided an improvement in a computer-related technology and addressed a problem "necessarily rooted in computer technology at least because the claims do not recite a process that can be performed in the human mind, or by a human using a pen and paper."

The Board did not credit appellants' arguments relating to step one of the Alice framework. The Board found that the claims did not attempt to solve a challenge particular to the Internet, and thus DDR Holdings was of no particular help.  The Board also found the advertising claims not to be analogous to the rule-based automated computer animation claims found eligible in McRO.

However, the Board appeared to be persuaded by the appellants' arguments relating to step two of the framework, the "search for an inventive concept" step, i.e., that the claims "improve[d] the technical field of broadcasting television programs by dynamically integrating targeted advertising content into the television programs that are broadcast to users of the chat group," and thus provided "a detailed level of targeted advertising [that] was not technologically achievable for television broadcasting in the past"; further that the claims included limitations "not widely prevalent in the field" that "leverage[d] [the] real-time behavior of users in the chat groups to integrate targeted advertising content into broadcast programming"; and still further that the claims were confined to the particular useful application of integrating targeted advertising content "into a television program included in the broadcast programming provided to the group of users in the same chat group."  The Board appeared to credit the appellants' assertion that "[t]he ability to integrate the claimed level of detailed targeted advertising was not achievable for television broadcasting in the past" and noted, as the examiner had, that the particular combination of circumstances recited in the claims appeared to be somewhat unique.  Thus, the Board reversed the Alice rejections.

My two cents:

Claims for innovations in targeted advertising on the Internet have been prime targets for Alice rejection or invalidation.  See, e.g., Affinity Labs of Tex., LLC v. DIRECTV, LLC, 838 F.3d 1253, 1271 (Fed. Cir. 2016); Intellectual Ventures I LLC v. Capital One Bank (USA), 792 F.3d 1363, 1369-70 (Fed. Cir. 2015) Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709 (Fed. Cir. 2014); Ex parte Greene, No. 2016-007319 (P.T.A.B Apr. 18, 2018) (claims directed to "identifying indeterminacy for activity-based advertising" deemed an unpatentably abstract "method of organizing human activity"); Ex parte Ferber, No. 2016-008650 (P.T.A.B. Jan. 9, 2018) (claims directed to targeted advertising deemed an unpatentably abstract fundamental economic practice); Ex parte Malden, No. 2016-004867 (P.T.A.B. Jul. 24, 2017) (claims directed to targeted advertising and brokerage of ads held an unpatentably abstract comparison of new and stored information and using rules to identity options); Ex parte Kendall, No. 2015-008182 (P.T.A.B. Apr. 19, 2017) (claims directed to communicating actions within a social network for the purpose of advertising a product and/or selling advertising held an unpatentably abstract fundamental economic practice and method of organizing human activities), reh'g denied, Kendall (P.T.A.B. Aug. 23, 2017); Ex parte Kendall, No. 2015-008149 (P.T.A.B. Apr. 19, 2017) (same).  An overarching reason for this may be because the benefits provided by such claims are characterized not as technical or technological improvements, but instead as business benefits in better targeting a customer's needs or dynamically adjusting to a customer's activity.  So it is remarkable that the Internet advertising claims in Relyea passed muster at the Board.  Why were they able to get past Alice?

The Board compared the claims to the dynamic-display electronic securities trading claims in Trading Technologies International, Inc. v. CQG, Inc., 675 F. App'x 1001 (Fed. Cir. 2017), pointing out that the claims in this case "provide a detailed level of targeted advertising that changes dynamically based on the real-time behavior of users in a chat group."

It may be that such dynamic functioning inventively amounts to "significantly more" than the identified abstract idea itself, but on the other hand, it is not clear why such is "more" than "using rules to identify options," the previously held abstract concept.  The extension of the Trading Technologies holding to apply to dynamic advertising claims may just be yet another example of the subject-matter eligibility pendulum swinging back.

Improvement arguments and recitation of "time cell" win IBM reversal of Alice rejections at PTAB

Takeaway: The Patent Board reversed § 101 Alice rejections of commercial transaction processing claims when the claims relied on a "time cell" and thus presented an improvement of the "relevant technology."

Details:

Ex parte Berstis
Appeal No. 2016-007050; Application No. 12/366,951; Tech. Center 3600
Decided: Mar. 12, 2018

The application is a continuation-in-part with priority to a line of applications related to a "time cell," basically a charge storage element with a known electrostatic discharge profile by which an amount of time elapsed since the initial charge can be determined, and the use of said time cell in what essentially amount to self-expiring coupons.  A representative claim on appeal read:

16.   A method for processing a commercial transaction using data processing devices, the method comprising:
        determining a state of a time cell that is associated with a commercial transaction that has been at least partially performed on a first data processing device at a time prior to a current time;
        generating, at a second data processing device, a first time value that represents when the time cell was programmed at the time prior to the current time, based on the determined state of the time cell; and
        processing information about the commercial transaction using the first time value to represent when the commercial transaction occurred at the time prior to the current time,
wherein:
        the time cell is an electrical device having an insulating medium and an electrostatic charge storage element that is programmed by giving the electrostatic charge storage element a desired electrical potential,
        the time cell discharges electrostatic charge from the electrostatic charge storage element through the insulating medium at a predetermined rate of discharge, and
        determining the state of the time cell comprises detecting a current electrostatic charge stored in the electrostatic charge storage element.

(Emphasis added.)

The examiner rejected the claims as

directed to the abstract idea of processing information about a commercial transaction based on the timing of the commercial transaction.  Analyzing a commercial transaction is a certain method of organization human activity related to commercial activity, an example of an abstract idea referenced in Alice Corp.

Under the second step of the Alice framework, the examiner still found the claims to be subject matter ineligible:

The additional element(s) or combination of elements in the claim(s) other than the abstract idea per se amount(s) to no more than a mere instruction to apply the abstract idea to a time cell that uses electrostatic physics.  Viewed as a whole, these additional claim element(s) do not provide meaningful limitation(s) to transform the abstract idea into a patent eligible application of the abstract idea such that the claim(s) amounts to significantly more than the abstract idea itself.

In the appeal brief, the appellants complained that the examiner had overgeneralized the subject matter, and submitted that the claims were

directed to mechanisms . . . for processing information about a commercial transaction that was at least partially performed on a first data processing device at a prior time based on a time value, generated at a second data processing device, that represents when an electrical device (time cell) was programmed at the prior time of the commercial transaction, based on a determined state of the time cell, where the state of the time cell is determined by detecting a current electrostatic charge stored in an electrostatic charge storage element of the time cell, and where the time cell has the physical configuration set forth in the claims. . . . [T]he claims are not directed to only [the identified] abstract idea and are not attempting to preempt every possible way of processing information about a commercial transaction based on the timing of the commercial transaction.  To the contrary, the very recitation of the operation of processing information about a commercial transaction, at least partially performed on a first data processing device, is tied to the generation of the first time value, at a second data processing device, which is generated based on the determined state of the electrical device (time cell) which is determined at least by detecting a current electrostatic charge stored in the electrostatic charge storage element.  Thus, the claims are clearly directed to a specific application and implementation of the concept of processing information about a commercial transaction with regard to a specific type of electrical device, referred to as a time cell, and specifically directed to mechanisms that detect the electrostatic state of the time cell as a mechanism for processing the commercial transaction.

The appellants further argued that the claims involved "a synergistic interplay between tangible, material elements", that the claims had not been properly examined as a whole, and that they did not relate to fundamental economic practices, methods of organizing human activities, abstract ideas of themselves, or mathematical relationships/formulas.

If the method claim recites operations that can only be performed within technology, then the method claim does not recite an abstract idea. That is, "inventions with specific applications or improvements to technologies in the marketplace are not likely to be so abstract that they override the statutory language and framework of the Patent Act" (see Research Corp. Techs., Inc. v. Microsoft Corp., 627 F.3d 869 (Fed. Cir. 2010)).  In other words, if the claims recite specific applications or improvements to technologies, as in the present case, then the abstract concepts are not being preempted or "tied up" but rather, the claims are directed to a specific application of the abstract concepts which is statutory.

(Emphasis added.)  Reviewing the specific time cell-related claim features, the claims were

clearly directed to an improvement to technology and [are] clearly not attempting to "tie up" or preempt the alleged abstract idea of "processing information about a commercial transaction based on the timing of the commercial transaction" but rather a specific mechanism for processing information about a commercial transaction that involves the programming of a time cell at the time the commercial transaction was at least partially performed, and detecting the state of the time cell at a second data processing device to thereby process information about the commercial transaction.

(Emphasis altered.)

The examiner answered that the claims' "limitations that describe the electrostatic physics behind the use of a time cell . . . merely link the use of an abstract idea to a particular technological environment: the field of time cells" and that "the aforementioned limitations do not improve the technical field of time cells."  In the examiner's view, the claims also failed to improve a technical field, because "[d]ispensing an article of manufacture by a first data processing device is akin to dispensing a coupon through a vending machine".  Finally, the examiner cited the old and discredited case of Ex parte Pfeiffer, 135 USPQ 31 (B.P.A.I. 1961), for the proposition that structural limitations (in this case, the structure of the time cell) carry no patentable weight in method claims.

In their reply brief, the appellants cited USPTO guidance issued in the wake of Enfish decision and argued that the claims were directed not to an abstract idea but to

an improvement to computer based processing of commercial transactions which is rooted in computer technology and directed to solving a problem in the computer arts by providing a new and non-obvious (as indicated by the fact that there is no prior art rejection against the present claims) mechanism that operates in conjunction with a time cell.  Moreover, the present specification clearly sets forth numerous improvements made by the claimed invention with regard to processing commercial transactions using mechanisms that operate on and with time cells.

(Emphasis added.)

The Board found that "using a non-volatile memory cell . . . which does not require a battery to measure time is an inventive concept that provides a specific means or method that improves the relevant technology" and that the recited time cell was a particular machine, "not a generic machine, because, unlike a generic computer, which can perform many different functions when programmed, the recited 'time cell' can only be used for a single, dedicated purpose (measuring a predetermined passage of time as a function of the decay over time of an electrical charge)."  Moreover, the provided time measurement could not be done as a mental step.  The Board thus found the time cell features to lend the claims "significantly more" than the identified abstract idea and reversed the § 101 rejections.

My two cents:

This post is the sixth in a series about improvement arguments beating Alice rejections at the Patent Board.  "Coupon" would seem to be patent profanity if one wants to avoid an Alice rejection.  See, e.g., Ex parte MacNeille, No. 2016-004411 (P.T.A.B. Mar. 28, 2018).  Here, although the claims do not use the word "coupon," the examiner likened the claims to coupon-related technologies, leading the applicants to protest that the USPTO had issued coupon-related patents in the past and thus presumably found them to be statutory ("see U.S. Patent Nos. 5,039,848; 6,648,761; 9,361,606, etc.").  "But it worked in the past" is not an argument that carries much weight at the Board given the directive to consider each case on its own merits.  See, e.g., Ex parte Heinrich, No. 2016-002486 (P.T.A.B. Feb. 27, 2018), citing In re Gyurik, 596 F.2d 1012, 1016 n.15 (C.C.P.A. 1979).  It seems instead that the Board engaged in a much more variegated analysis, looking at the machine-or-transformation test and crediting or modifying the Enfish-based improvement arguments made by the appellant.

Although the application and its parents take great pains not to say so, the "time cell" of the invention sounds like it reads on a leaky capacitor, which is to say, any practical capacitor, of known discharge profile, that can be periodically sampled to determine remaining charge.  If so, it is not something new; see, e.g., U.S. patent No. 5,760,644, "Integrated circuit timer function using natural decay of charge stored in a dielectric" (priority date 1995, approximately a decade before the priority dates involved in this application).  If a time cell is old, one can understand why an examiner would take the position that it could not offer "significantly" more under the second step of the Alice framework, but even so, the Board found such novelty or lack thereof irrelevant in the § 101 consideration:

[E]ven if time measurement devices are notoriously well known in the art, this has no bearing upon our analysis under § 101.  The Supreme Court guides: "[t]he 'novelty' of any element or steps in a process, or even of the process itself, is of no relevance in determining whether the subject matter of a claim falls within the § 101 categories of possibly patentable subject matter." Diamond v. Diehr, 450 U.S. 175, 188–89 (1981) (emphasis added).  Our reviewing court further emphasizes: "[e]ligibility and novelty are separate inquiries." Two-Way Media Ltd. v. Comcast Cable Commc’ns, LLC, 874 F.3d 1329, 1340 (Fed. Cir. 2017) (emphasis added).

Citing a Board decision that briefly appeared in an old revision of the MPEP (see § 2117), the examiner argued that structural elements carry no patentable weight in method claims, but if the Board declined even to address that argument, it may have been because they discarded it many times in the past.  See, e.g., Ex parte Sigler, No. 2016-001256 (P.T.A.B. Sep. 19, 2017); Ex parte Paul, No. 2011-006827 (P.T.A.B. Mar. 7, 2013); Ex parte Lind, No. 2010-005289 (B.P.A.I. Aug. 29, 2012); Ex parte Tuma, No. 2006-002308 (B.P.A.I. Sep. 26, 2006); Ex parte Holderness, No. 1998-000553 (B.P.A.I. Mar. 13, 2001); Ex parte Zeigler, No. 1996-002718 (B.P.A.I. May 18, 2000); Ex parte Kirkland, No. 1997-000172 (B.P.A.I. Aug. 25, 1998).  However, the Board did drop a footnote instructing the examiner to consider whether the claims were indefinite under § 112 and MPEP § 2173.05(p)(II) as hybrid claims reciting an apparatus and method steps.  I don't think mere recital of structure renders a method claim a hybrid claim, since, at bottom, the issue is whether the claim language creates confusion is as to when direct infringement occurs, and that would not seem to be the case here or in most method claims that describe what structural materials and tools are involved in the performance of the method.

The Board did not specify in their decision what "relevant technology" the claimed invention improves, but presumably the relevant technology is that of electronic couponing, or commercial transactions more generally.  As noted in a previous post with practice tips for defeating Alice rejections, it can be important in making improvement arguments to state what the previous state of the technology field and how the claims at issue offer both a clear difference and a significant improvement over the state of the art.  Defining the previous state of the technology field may not have been particularly important in this case because the cited prior art, and the claims' overcoming rejections in view of that art, inferentially defined the previous state of the technology field.

IBM's improvement arguments overcome Alice rejections, win random number generation claims at the PTAB

Takeaway: The PTAB reversed Alice rejections of pure-software random digital generation claims, crediting the appellants' improvement argument in the face of examiner criticism of that argument and even in the absence of a reply brief addressing that criticism.

Details:

Ex parte Sherwood
Appeal No. 2017-006552; Application No. 13/906,056; Tech. Center 2100
Decided: Sep. 28, 2017

The application on appeal, titled "Balancing Consumption of Random Data", described improved operation of an apparatus for generating random data in a computer system, and in particular, to the improved operation of obtaining entropy data for seeding the random data generation.  A representative claim on appeal read:

21.  A digital data apparatus for producing random digital data, comprising:
       at least one physical processor;
       a physical system memory;
       a plurality of entropy sources each generating respective random source digital data having a corresponding level of entropy, including a first entropy source generating random source digital data having a first level of entropy, and a second entropy source generating random source digital data having a second level of entropy lower than said first level of entropy, said second entropy source being independent of said first entropy source;
       a random number generator embodied as computer program code storable in said physical system memory and executable on said at least one physical processor, said random number generator receiving input from each said plurality of entropy sources, said random number generator generating a random digital data output by a deterministic algorithm using input from a selective one of said plurality of entropy sources as a seed for said deterministic algorithm;
       an entropy manager embodied as computer program code storable in said physical system memory and executable on said at least one physical processor, wherein said entropy manager automatically selects one entropy source among said plurality of entropy sources as input for the seed for said deterministic algorithm used by said random number generator, said entropy manager automatically selecting one entropy source among said plurality of entropy sources by determining a minimum level of entropy required by a consuming entity from among multiple possible minimum levels of entropy required, wherein the consuming entity consumes random digital data output by said random number generator to perform at least one data processing function, wherein the minimum level of entropy required by the consuming entity is a minimum level required as input for the seed for said random number generator to produce the random digital data output consumed by the consuming entity, said entropy manager further automatically selecting an entropy source from among said plurality of entropy sources having the lowest corresponding level of entropy which meets said minimum level of entropy required by the consuming entity.

(Emphasis added.)

The final rejection held that the claims were directed to the abstract idea of "performing mathematical steps drawn to generating random data, receiving inputs, selecting entropy sources, determining levels of entropy, consuming random data, monitoring/analyzing events, accessing rules, determining levels of entropy, preventing flipping of entropy selection states, and performing cryptographic operations."  The rejection stated that

[t]hese steps merely employ basic concepts drawn to manipulating information using mathematical and logical concepts which is similar to the basic concept of manipulating information using mathematical relationships found to be an abstract idea by the courts. The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the claims do not add a meaningful limitation to the abstract steps as they would be routinely used by those having ordinary skill in the art on a general purpose computer.

With regard to the second step of the Alice framework, the examiner found that the recitation of processor and memory in the claims did not amount to significantly more, and likewise,

the recitation of elements such as "entropy sources", "random number generator", "entropy manager", and "cryptographic apparatus" are also generic because there is no evidence in the specification that these elements must be specific hardware elements. For example, the claimed random number generator and entropy manager are embodied as code and the claimed cryptographic functionality is defined in the specification as software. A general purpose computer can be programmed to execute code and software.

The examiner also addressed the applicant's argument that the claims were directed to an improvement in computer technology:

[T]he invention as claimed is not drawn to an improved encryption engine for a computer system that improves efficiency. . . . [T]he applicant has failed to point to evidence that using "relatively lower entropy data for certain less essential purposes" improves efficiency of the claimed invention.  The applicant's arguments cannot take the place of evidence.

(Emphasis in original.)

The appeal brief is worth quoting at length:

[The] invention relates to "improved operation of an apparatus for generating random data in a computer system, and in particular, to the improved operation of obtaining entropy data for seeding the random data generation" . . . Although improved performance is the primary motivation, Appellant's technique . . . may, by using highest quality random data only when necessary, permit a higher quality of randomness to be used in those circumstances which require it.
A computer-implemented cryptographic engine or random data generator necessarily receives input in the form of data, i.e., strings of '1's and '0's, and performs a series of mathematical steps and takes branches based on determinations made using data, to produce a final result, which is again data, i.e., strings of '1's and '0's.  . . . [A]ny computer-implemented process can ultimately be reduced to receiving data as input, performing a series of mathematical steps and branches based on determinations made using the data, and producing a result in the form of data.  That is the very essence of a deterministic sequential state machine.  No computer, no matter how fast, sophisticated or advanced over other computers, can do anything beyond these basic steps.
If any machine or process which is limited to receiving data input, performing mathematical manipulations of the data, making decisions based on results, and outputting data, is deemed an "abstract idea", the Patent Office might as well give up patenting computer implemented inventions, for all such inventions, no matter how complex or sophisticated, ultimately can be broken down into simple mathematical steps and branches.  This is clearly not what the law is and not what was intended by the recent Supreme Court decision in Alice Corp. v. CLS Bank. . . . [T]t is true that in a very general sense Applicant's invention does [manipulate information using mathematical relationships].  As does each and every computer-implemented invention that has been patented by the Patent Office. . . . The Examiner's reasoning appears to be exactly the type of overly broad application of the "abstract idea" doctrine which was disapproved by the Federal Circuit in Enfish. . . .  Appellant's invention does not come close to pre-empting the field of "manipulating information using mathematical relationships".

(Emphasis in original.)

The examiner answered that:

[P]reemption is not the test for judging subject matter eligibility under the Alice analysis.  Rather, the test consists of (in summary) determining whether the claimed invention is drawn to a judicially recognized exception.  If so, then the claimed invention is further analyzed to determine whether there is additional subject matter recited that amounts to significantly more than the judicial exception.
The claims are drawn to apparatuses, methods, and computer program products which perform mathematical steps. These steps manipulate information using mathematical and logical concepts. Ideas such as this have been found by the courts to be abstract. See Parker v. Flook, 437 U.S. 584 (1978); Gottschalk v. Benson, 409 U.S. 63 (1972).  In Flook, the claimed invention was drawn to the abstract idea of gathering numerical information and manipulating it mathematically.  In the instant case, entropy information is gathered in the form of binary numbers and is manipulated mathematically to generate random data, which is also represented in binary.

The examiner called the appellants' improvement argument "flawed":

Appellant's only explanation that the claimed invention is an improvement is that computer system efficiency is improved "by using relatively lower entropy data for certain less essential purposes." . . . However, Appellant never defines what these "purposes" are.  More importantly, the entropy data is used for random number generation, this being the only "purpose" that can be inferred from Appellant's argument.  How this improves computer system efficiency is not explained in Appellant's argument. Appellant merely asserts that these purposes exist without citing any evidence as to what they are.

The appellants did not file a reply brief to address this rebuttal.  Nevertheless, the Board "agree[d] with Appellants that the Examiner has overgeneralized the claimed invention by summarizing it as the mere performance of mathematical steps, or as information gathered in the form of binary numbers that is manipulated mathematically to generate random data", and took it upon themselves to scour the specification for the inventive concept:

[The] invention is directed to generating random digital data for use by a consuming entity.  For certain purposes, e.g., strong encryption, random data having higher entropy is required; for other purposes, lower entropy (and thus quicker to gather) random data will suffice. . . . In the invention, an entropy manager determines the minimum level of entropy required by a consuming entity, and selects the random data (i.e., entropy) source that supplies random data having a requisite level of entropy for the consuming entity’s purposes.
We do agree generally with the Examiner’s conclusion that Appellants’ claimed invention is drawn to an abstract idea. The claims under appeal are drawn to method and apparatus for producing random digital data, including a random number generator for generating said random digital data by following a deterministic algorithm using input from one of a plurality of entropy sources as a seed.
Appellants persuade us, however, that the claims are, nonetheless, statutory under the second prong of the Alice analysis.  Representative claim 21 recites, inter alia, an entropy manager that “automatically selects one entropy source” from among a plurality, as the seed for the deterministic algorithm. The entropy manager makes this selection “by determining a minimum level of entropy required by a consuming entity . . . the minimum level of entropy required by the consuming entity is a minimum level required as input for the seed for said random number generator . . . said entropy manager further automatically selecting an entropy source from among said plurality of entropy sources having the lowest corresponding level of entropy which meets said minimum level of entropy required by the consuming entity.”
In support, Appellants’ Specification discloses that “[h]igh-entropy data is difficult for a computer to generate,” and even if one resorts to techniques such as monitoring network traffic, “it takes time in order to gather such random data.” . . . Appellants’ invention, thus, sets forth a system that automatically balances the tradeoff between (a) high entropy, hard to predict (and thus hard to attack) data that is scarce, time-consuming to produce, or both, and (b) lower entropy, less difficult to predict (but less secure) data that is easier to gather, less computationally intensive to produce, or both. See Spec. 9-10.
We conclude that the function of the entropy manager in the claimed invention results in claims drawn to significantly more than an abstract idea.  See Alice, 134 S. Ct. at 2355.  Like the animation method in McRO Inc. v. Bandai Namco Games America Inc., 837 F.3d 1299 (Fed. Cir. 2016), we conclude that the claims under appeal are limited to rules with specific characteristics.  McRO, 837 F.3d at 1314—15.  Like the self-referential logical table in Enfish, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016), we conclude that the appealed claims focus on a specific means or method that improves the relevant technology.  See Enfish, 822 F.3d at 1335.  Here, Appellants’ invention focuses on a specific method of providing an entropy manager to make a decision concerning the appropriate entropy level to be employed, in order to supply random digital data of sufficient entropy while conserving computer processing power and/or time.

(Emphasis added.)  Thus, the Board reversed the subject-matter eligibility rejections, and the appellants were issued their patent (No. 9,934,000).


My two cents:

This post in the fifth in a series examining improvement arguments and their rapidly mounting significance in winning reversals of Alice rejections at the Board.  The first post in the series provided a set of practice tips.  This case is an example of an improvement argument winning at step two of the Alice framework, and illustrates the examiner demanding evidence in support of the improvement argument (see practice tip #7) but the appellants not needing it to win.

The abstract idea to which the examiner alleged the claims were directed ("performing mathematical steps drawn to generating random data, receiving inputs, selecting entropy sources, determining levels of entropy, consuming random data, monitoring/analyzing events, accessing rules, determining levels of entropy, preventing flipping of entropy selection states, and performing cryptographic operations") is a mouthful, but the Board nonetheless agreed that the claims were drawn to an abstract idea, albeit one of a different description: "producing random digital data, including a random number generator for generating said random digital data by following a deterministic algorithm using input from one of a plurality of entropy sources as a seed."

The Board gave no credit to the examiner's argument that additional evidence was required to show that using "relatively lower entropy data for certain less essential purposes" resulted in an efficiency improvement.  Instead, the Board found the description in the specification to be self-evident of the cause and effect reasoning necessary to support the improvement argument.

Only about six months elapsed between the docketing of the appeal and the handing down of the Board's decision.  This seems unusual, as most practitioners are more accustomed to appeal pendency on the order of years rather than months.  According to contemporary PTAB statistics, average appeal pendency for cases originating from technology center 2100 at the time of this decision was 13.2 months, down a spectacular 11.1 months from the same time the previous year.  Although appeal pendency has been dealt with very effectively and continues to fall (it's down to 13.0 months in 2100 at last count), this appeal was still delivered in less than half the average time.  One can only speculate whether this case was hastened by a PTO directive to build Alice guidance by expediting appeals deciding § 101 controversies, or because of the particular Board section to which the appeal was assigned and the workload thereof, or because of the identity of the real party in interest (IBM) and the volume of applications filed by that particular assignee.  Whatever the reason for the favoritism (if any), the appellants got a good deal with this appeal, only waiting about twice as long as they would have for another Office action.

We're not done yet with looking at improvement argument cases, so stay tuned for more.

Radar-based target determination method claims saved from Alice by improvement arguments at the PTAB

Takeaway: Viewing the claims as representing an improvement upon technology that uses synthetic aperture radar imaging to determine the position of a target at great distances, the PTAB reversed Alice rejections that had found claims to be directed to patent-ineligible subject matter.  The broadest claim was what could be called a "pure software" claim, consisting solely of "determining" steps taking place inside a computer processor.

Details:

Ex parte Benninghofen
Appeal No. 2016-002156; Application No. 13/380,397; Tech. Center 3600
Decided: Oct. 16, 2017

The application on appeal described a method for determining the geographic coordinates of pixels in synthetic-aperture radar images.  A representative claim on appeal read:

5.     A method, comprising:
        determining, by a processor of an airborne device, geographic coordinates of corresponding pixels of a target from first and second digital synthetic aperture radar (SAR) images by capturing, by the processor of the airborne device, the first and second SAR images in a form of slant range images;
        determining, by the processor of the airborne device, a recording position of the respective first and second SAR images;
        determining, by the processor of the airborne device, a distance between a corresponding resolution cell on a ground and the respective recording position of the respective first and second SAR images using coordinates of the corresponding pixels of the target in the first and second SAR images and corresponding range gates; and
        determining, by the processor of the airborne device using the determined distances and associated recording positions of the first and second SAR images, the geographic coordinates of the corresponding pixels of the target in the first and second SAR images by producing, by the processor of the airborne device, a first and second sphere for the first and second SAR images using the determined distances and associated recording positions of the first and second SAR images; and
        determining, by the processor of the airborne device, the geographic coordinates of the corresponding pixels of the target as a common intersection of the first and second spheres with the WGS84 ellipsoid.

SAR is a form of radar used to acquire high-resolution landscape data from aircraft or spacecraft using comparatively small physical antennas.  Range gates appear to refer to the distances away from the SAR antenna at which are located resolution cells on the ground that correspond to the center of the SAR slant range images.  WGS 84, the 1984 World Geodetic System standard, is the reference coordinate system used by the Global Positioning System (GPS), and its reference ellipsoid is a mathematically defined surface that approximates the geoid, i.e., the truer figure of the Earth.  Thus, in essence, the application provides a way of matching SAR-sourced image pixels to geographic coordinates.  The eight-page written description contains several of what appear to be basic Euclidean distance formulas, and is accompanied by seven drawings of basic geometric diagrams.

In a § 101 rejection, the examiner alleged the claims to be abstract since they "employ mathematical relationships/formulas to determine the geographic coordinates of the corresponding pixels of the target."  The examiner found that the claims did not supply "significantly more" under the second step of the Alice framework because they required no more than a generic computer, in the form of the recited airborne device, "to perform generic computer functions that are well-understood, routine and conventional activities previously known to the industry."

The applicants conducted several examiner interviews and filed an after-final response, arguing that "the claims recite significantly more than mere computer implementation of an abstract idea and the ordered combination of steps improves the functioning of a processor itself."  The claim 5 method, applicants asserted, "determines SAR image recording positions and distances based on the determined recording positions, and then uses this information to transform SAR images into first and second spheres, which are then used with a WGS84 ellipsoid to determine geographic coordinates of pixels in an image. Thus, the claims go beyond merely retrieving and combining data."  The applicants further posited that the sole independent claim

improves the overall functioning of a processor because it is able to determine geographic coordinates in an image in a much less processor intensive manner than other techniques. Specifically, . . . the prior art cited to reject the claims [in other art-based rejections] determines geographic coordinates using interferomic SAR (InSAR or IFSAR), which determines phase differences between of master and slave SAR images to generate an interferogram characterizing topographic information.  Obtaining the master and slave images requires the use of a diplexer because obtaining the images requires one transmission antenna and two receiving antennas, which significantly increases the required processing power. Further, the present invention avoids the additional processing required to generate the interferogram and thus improves the overall operation of the processor used for determining geographic coordinates of pixels of a target.

(Emphasis added.)  When the examiner maintained the § 101 rejection, the applicants filed a pre-appeal conference request, arguing that, under the first step of the Alice framework, their claimed method

involves capturing images in which the target is located, which is not an algorithm and is not abstract. The method also involves determining a recording position of the images, which reflects real-world geographic coordinates, and is not an algorithm and is not abstract.  The method further involves determining a distance between a resolution cell on the ground and the recording positions, which is not abstract.

The conference request also repeated the "significantly more" argument from the after-final response.  The conference panel was not persuaded.

In their appeal brief, the appellants argued, among the many unavailing arguments presented, that the data gathering steps of the claim could not be performed by the human mind.  However, they also repeated their inchoate improvement argument, asserting that the claimed method "is able to determine geographic coordinates in an image in a much less processor intensive manner, and with less error."  The appellants were also able to point to support in their specification for a new assertion that the rejected independent claim "improves upon the technical field of position determination with SAR images by reducing error in the known techniques".

Answering the argument that the conventional pre-solution steps could not be performed in the human mind, the examiner cited CyberSource Corp. v. Retail Decisions Inc., 654 F.3d 1366, 1370 (Fed. Cir. 2011), for the proposition that mere data-gathering steps cannot make an otherwise nonstatutory claim statutory.  The examiner found the processor in the airborne device not to qualify for "significantly more."  The examiner did not address the improvement arguments in the answer brief, perhaps unsurprisingly, since Enfish and McRO were yet to be decided.  The appellants filed a reply brief, but without anything in the way of new or expanded argument, so the case went to the Board, where the panel opined:

With respect to computer-enabled claimed subject matter, it is helpful to determine whether the claims at issue may readily be understood as simply adding conventional computer components to well-known business practices or not.  The question is whether the claims as a whole “focus on a specific means or method that improves the relevant technology” or [by contrast] are “directed to a result or effect that itself is the abstract idea and merely invoke generic processes and machinery.”

(Citations omitted.)  The Board noted that in Enfish, the Federal Circuit "found that the 'plain focus of the claims' there was on 'an improvement to computer functionality itself, not on economic or other tasks for which a computer is used in its ordinary capacity.'"  The Board thus held the claimed invention to be patent-eligible subject matter as "'an improvement upon technology that uses SAR image to determine the position of a target at great distances,' thus providing a specific improvement in computer capabilities".  Quoting the appellants' arguments, the Board noted that "it does not appear that [the] claims simply add conventional computer components to an otherwise known practice, or invoke computer components merely as a tool to implement an otherwise abstract idea", and reversed the § 101 rejection.

My two cents:

This post is fourth in a series discussing how improvement arguments have saved the day for appellants facing Alice rejections.  The original post predicted that such arguments will soon be on the ascendant as the weapon of choice in combating rejections alleging that claims are directed to abstract ideas, and gave a few relevant practice tips.  Cases like this one make it look easy.  Although the examiner was obstinate that the claims, which, at their broadest, were limited solely to data analysis steps, fell squarely within the abstract-idea judicial exception carved out of 35 U.S.C. § 101, the Board was easily persuaded that the claims did not tie up an abstract idea and reversed the rejection.  The Board did not, for example, require the appellants to prove with quantitative data that the claimed method reduced processor effort and resulted in less error, as asserted in their arguments.  Nor even did the Board require the appellants to provide detailed reasoning showing why such improvements were inherent to the method.  The appellants' arguments look conclusory, but they were enough here, in part, probably, because the examiner did nothing to address them, despite full opportunity (unlike in the case discussed last week, in which the arguments were fleshed out only in the reply brief).

It's difficult to make sense of the applicants' "significantly more" argument as presented in their after-final response.  It is not surprising that the examiner was not persuaded by the applicants' citing to a series of data collection and processing steps followed by a conclusory assertion that "the claims go beyond merely retrieving and combining data."  The difficulty of formulating persuasive Alice second-step arguments in claims that more or less amount to pure software is one reason for the appeal of improvement arguments, which can apply even at step one.

Because the analysis is so thin on all sides, it's difficult to pinpoint why this improvement argument won, or if it would have won if challenged by the examiner.  Likely, in absence of more detailed Supreme Court guidance, a lot of § 101 thinking is still "I know it when I see it."  The improvement argument succeeded in this case where traditional "significantly more" arguments would probably not have been persuasive, since all of the recited or implied features outside the abstract idea itself were conventional components: an SAR sensor, a computer processor.

Stay tuned as we continue to look at how improvement arguments can prevail over Alice rejections of software claims.

Slots o' Fun: Reply brief improvement arguments rescue claims on networked casino game presentation control from Alice rejections

Takeaway: Finding improvement arguments set forth in a reply brief to be persuasive, the Patent Board reversed Alice rejections of claims directed to controlling content presentation on banks of networked casino game machines (the better to attract your attention to all those flashing lights and screens when you set foot in the casino).

Details:

Ex parte Greenberg
Appeal No. 2016-006337; Application No. 13/382,783; Tech. Center 3700
Decided: Sep. 29, 2017

A representative claim on appeal read:

1.     A computer-implemented method of operating a gaming system primarily dedicated to providing at least one casino wagering game, the gaming system including a plurality of wagering game machines and one or more controllers, the method comprising:
        selecting, by one or more processors of the one or more controllers, a plurality of content presentation devices for presentation of a gaming effect, wherein the plurality of content presentation devices comprise video, sound production or lighting devices associated with a plurality of wagering game machines, wherein each of the plurality of content presentation devices has an identifier, and wherein a portion of the gaming effect is configured to be synchronized across the plurality of content presentation devices and the plurality of wagering game  machines, and wherein the portion of the gaming effect is presented without interruption via the plurality of content presentation devices during a time interval;
        receiving, into a non-transitory machine-readable medium coupled to the one or more content controllers, presentation status information for at least one of the plurality of content presentation devices, wherein the presentation status indicates a state of availability of the at least one of the video, sound production or lighting devices;
        determining, by the one or more controllers, based on the presentation status information, that the at least one of the plurality of content presentation devices is unavailable to present the portion of the gaming effect during the time interval; and
        utilizing, by the one or more processors of the one or more controllers, the presentation status information and the identifier for each of the plurality of content presentation devices to generate a transmission schedule in the non-transitory machine-readable medium, that synchronizes timing of transmissions of content control data for the gaming effect to the plurality of content presentation devices, wherein the transmission schedule is configured to schedule content control data to be sent to eligible content presentation devices using the identifier for each eligible content presentation device of the eligible content presentation devices, and wherein the transmission schedule omits the at least one of the plurality of content presentation devices that is unavailable to present the portion of the gaming effect based, at least in part, on the presentation status information and the identifier of the at least one of the plurality of content presentation devices that is unavailable to present the portion of the gaming effect.

(Emphasis added.)

The application was filed by inventors for WMS Gaming, a subsidiary of WMS industries, then the third-largest manufacturer of slot machines.  The disclosure explains that since "players are likely to be attracted to the most entertaining and exciting machines . . . there is a continuing need for wagering game machine manufacturers to continuously develop . . . gaming enhancements that will attract frequent play."  To this end, game presentation features such as sound effects, music, voices, and animation in wagering game systems are provided from various sources to banks of networked gambling machines (e.g., slot machines) and need to be controlled in a coordinated way via the casino network.  In particular, the invention strives to provide a way for bank-wide effects to exclude unavailable machines in the bank from coordinated content presentations.

After the applicants submitted amendments and arguments to overcome anticipation and obviousness rejections, a notice of allowance was issued in July 2014, but the application was withdrawn from issue the following month, before the issue fee could be paid, for reconsideration in view of the Supreme Court's decision in Alice Corp. Pty. Ltd. v. CLS Bank Int'l, 134 S. Ct. 2347 (2014).

Upon reopening of prosecution, the examiner found the claims to be directed to the abstract idea of "determining a transmission plan for a plurality of devices based on determining if the devices are available", and so rejected them as subject-matter ineligible as a judicial exception to § 101.  Under step two of the Alice analysis, the examiner held that the additional elements in the claims amounted "to no more than a recitation of a generic gaming machine and generic computer network including a gaming network", and thus did "not provide meaningful limitation(s) to transform the abstract idea into a patent eligible application of the abstract idea such that the claim(s) amounts to significantly more than the abstract idea itself."

In the final rejection, the examiner cited to the Internet video ad case of Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709 (Fed. Cir. 2014), wherein the Federal Circuit found the claims to be directed to an abstract idea, specifically, a method of using advertising as an exchange or currency, on the court's second reconsideration of the case, made with the benefit of the Alice decision.  (The appeals court had twice previously held the claims to be eligible after Supreme Court decisions came down in Bilski v. Kappos, 561 U.S. 593 (2010), see 657 F.3d 1323, and Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66 (2012), see 722 F.3d 1335.)  One of the holdings of Ultramercial was that the mere inclusion of the Internet in a claim would not render an otherwise ineligible claim allowable.  Here, the examiner found that "a network based gaming means is a well-known game concept . . . as much as the use of the Internet within the computer art and therefore would be considered a general purpose computer and not a novel machine or apparatus."  Thus, the examiner found the claims to be "directed to an abstract idea in regards to scheduling machines in a network to carry out a task, if available, which is both well-known and obvious in order to have a task be carried out the machine must be free and available," and, in support of this finding cited to the prior art reference relied upon in the already-overcome anticipation and obviousness rejections.  Even after consideration of the claims' recitations of the changing the communication paths and the inclusion of status identifiers, "applicant's claims are still directed to the abstract idea of determining when to display content on machines based on availability with the only modifications being to which part talks to which part of the system and how the system identifies when a part of the system is busy or how to schedule the transmission.  This does not amount to a significant change over the current gaming network art."

The applicants requested a pre-appeal conference, arguing that, "viewed as a whole, the claims
are not of a scope to broadly pre-empt any of the concepts that the courts have found abstract", such as fundamental economic practices, methods of organizing human activities, idea of themselves, or mathematical relationships or formulas.  The applicants compared and contrasted their claims to claims analyzed in USPTO guidance examples, and concluded that the claims "go far beyond" the alleged abstract idea.  The pre-appeal panel was not persuaded and the applicants appealed.

In the appeal brief, the appellants set forth what has become the standard panoply of typically ineffective arguments: the examiner failed to examine the claims "as a whole"; the claims were lumped into a specious and overbroad category of abstract idea; the rejection did not properly determine what the claims were "directed to".  The appellants again argued that the claims did not tie up any concept that courts have identified as abstract, and that the wagering game machines, gaming network, and other features were not generic and amounted to significantly more.  Finally and most critically, the appeal brief contained the germ of an improvement argument, asserting that the claims were "directed to an improvement in a specific technology or technical field."

The examiner answered that "the method performed is a well-known and well-understood one wherein a check should be made to determine if a machine is available before assigning a task thereby insuring that the assignment is either carried out or not interfered with."  Moreover, "a gaming machine is a broad and generic category of computers and includes many well-known embodiments and therefore is still a generic machine."  Further, "just adding a network or computer to perform the basic abstract idea does not add significantly more since it is well-understood to automate a process using a network to communicate the automation so as to avoid assigning personal [sic] to perform the task which makes the operation more expensive."  The examiner referred in passing to the case of Planet Bingo, LLC v. VKGS LLC, 576 F. App'x 1005 (Fed. Cir. 2014).

In the reply brief, the appellants protested that the claims found to be abstract in Planet Bingo were directed to solving a tampering problem and minimizing security risks during bingo ticket purchases, which the Federal Circuit found similar to the consumer-transaction risk hedging held abstract in Bilski, but which, according to the appellants, were nothing like "determining a transmission plan" (the allegedly abstract idea to which the examiner found the appellants' claims were directed).

More significantly, as happened in the Vortman case discussed last week, by the time of the reply brief, the Federal Circuit had decided Enfish, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016), holding software claims directed to a self-referential table subject-matter eligible under step one of Alice framework.  The appellants seized on the new holding, arguing that the alleged abstract idea was untethered from the claim language, and explicating an improvement argument:

The claimed invention is a specific implementation of an improvement in the functioning of a computer system by allowing a controller to synchronize the presentation of a gaming effect on a plurality of presentation devices spread across a plurality of wagering game machines, where the gaming effect is to be presented without interruption. . . . [It] does not comprise "simply adding conventional computer components to well-known business practices."  . . . [G]ame developers can face the problem that controlling content from multiple different sources can be challenging.  . . . [The claims] recite a solution implemented by a controller that synchronizes the presentation of a gaming effect on a plurality of available presentation devices spread across a plurality of wagering game machines, where the gaming effect is to be presented without interruption. Because the controller implements the solution, the game developer is freed from developing all of the software necessary to control the presentation.  Further, the functioning of the gaming system is improved by providing gaming effects that are presented without interruption by using available presentation devices and omitting unavailable presentation devices.

(Emphasis added.)

With the further benefit of the Federal Circuit's approval of software claims as a patent-eligible improvement in McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299 (Fed. Cir. 2016), the PTAB panel agreed

that the claims on appeal are directed to a technological improvement rather than an abstract idea such as organizing human activity or a fundamental economic practice.  The claims employ status information and identifiers for content presentation devices to generate a transmission schedule to send to a plurality of content presentation devices in order to synchronize a gaming effect across a plurality of content presentation devices in a specific time interval.  Although the process claimed for synchronizing the gaming effect is perhaps simple and logical, the Examiner does not provide evidence that the claimed process is merely the automation of the same process previously performed by a human.

(Emphasis added.)  The Board thus reversed the § 101 rejections.

My two cents:

The examiner's final rejection and answer brief provided a judicial exception analysis of the type upheld by the Board in countless other cases.  The appellants won in this case thanks to the improvement arguments introduced in their reply brief.  This blog's recent post forecasting the growing importance of improvement arguments in overcoming Alice rejections set out some practice tips on when and how best to use such arguments.  This appeal win illustrates some of those tips in action.

The appellants made it explicit that they were arguing an asserted improvement (practice tip #3) and had the prescience or good luck to include at least the beginnings of an improvement argument in the appeal brief.  (It is not clear that the timing of the decision in Enfish would have been good enough cause to skirt the general rule that arguments not presented in the appeal brief are waived.  See Ex parte Borden, No. 2008-004312 (B.P.A.I. Jan. 7, 2010) (informative); Ex parte Nakashima, 93 USPQ2d 1834, 1840-41 (B.P.A.I. Jan. 7, 2010) (informative).)  They appropriately rebutted examiner efforts to characterize the claims as ineligibly directed to solving "an entrepreneurial rather than a technological" problem, to use the language of the Ultramercial case cited by the examiner (practice tip #2).  They explained the problem and were able to point to description in their specification as evidence of the problem, its substantiality, the intent to solve it, and thus the specific improvement rendered (practice tips #2, #4, #5, and #7).  Finally, the appellants had the examiner on record as to the closest prior art and were able to show a difference over that art, having already overcome art-based rejections that relied upon the reference (practice tip #8).

The appellants might also have had a bit of an upper hand over the examiner in this case, given that Enfish was decided between the time of the appeal brief and the reply brief and the examiner did not have the ability to respond to the improvement arguments.  In the time of the old MPEP § 1208.02, the examiner could have withdrawn the case to prosecution to address the improvement argument, but that appears to no longer be the case.  See MPEP § 1208(II) (jurisdiction passes to the Board after filing of a reply brief and the examiner will not "normally" have an opportunity for further argument without a Board remand with instructions to furnish a substitute examiner’s answer).

Next time we'll look at another software case in which the appellants managed to retrieve claims from the jaws of Alice rejections thanks to Board recognition of improvement arguments.